Jason Koransky
Jason Koransky's practice focuses on trademark, copyright, advertising, data privacy, and Internet law. His experience ranges from litigating in federal court and before the Trademark Trial and Appeal Board, to trademark clearance, UDRP and URS domain name disputes, prosecuting domestic and foreign trademark applications, and drafting and negotiating license agreements. He brings a market-conscious approach to litigation and other contentious matters, which helps to achieve successful, practical, and cost-effective solutions for clients. Jason's privacy work focuses on advising clients on compliance with federal, state, and international laws and regulations, as well as due diligence for mergers and acquisitions.
Before transitioning into a career as an attorney, Jason worked as a journalist in the Chicago area for more than a decade. For 10 years he served as the editor of DownBeat magazine, an international music magazine devoted to jazz and blues. At DownBeat he gained a deep understanding of the issues affecting musicians, record labels, music publishers, venues, and the other entities in the music industry, as well as the myriad issues confronting journalists and publishers. He also interviewed the likes of Dave Brubeck, Wayne Shorter, Wynton Marsalis, Herbie Hancock, and Joni Mitchell. He carries his experience in the music and publishing industries into his law practice.
Prior to joining Pattishall in September 2014, Jason worked as an IP Associate at two firms in Chicago. In addition, he served for a year as a law clerk for the Honorable Harry D. Leinenweber in the Northern District of Illinois. He earned his J.D. from The John Marshall Law School, and his B.S. in journalism from Northwestern University.
Industry
Expertise
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Apparel
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Media
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Music & Entertainment
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Pharmaceuticals
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Publishing
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Software & Cloud Computing
Honors & Awards
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2017
Children and Families Practice Group of the Legal Assistance Foundation
:
Volunteer of the Year
Representative Trials, Appeals & Litigation
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Jemie B.V. v. LevoGen Biosystems Ltd., Opposition No. 91243786 (TTAB 2019) (Obtained judgment in favor of client, and therefore preventing registration of infringing BIOCANA mark)
(Trademark)
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Sandoz Inc. v. Glaxo Group Limited, Opposition No. 91229470 (TTAB 2018) (Opposed trademark applications for the color purple in connection with asthma and COPD inhalers)
(Trademark)
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TauRx Therapeutics Ltd. v. TaiRx, Inc., Opposition No. 91221124 (TTAB 2015)
(Trademark)
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Priority Fulfillment Services, Inc. v. Pivotal Software, Inc., Opposition No. 91239387 (TTAB 2018)
(Trademark)
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American Massage Therapy Association v. Implus Footcare, Opposition No. 91234785) (TTAB 2017)
(Trademark)
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Jiffy, Inc. v. Futran Solutions, Opposition No. 91236157 (TTAB 2017) (Obtained favorable settlement for client, in which the applicant assigned the opposed marks to the client)
(Trademark)
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Cleveland Indians Baseball Company, LLC v. Gerald Campagna Jr., Opposition No. 91233563 (TTAB 2017)
(Trademark)
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Jemie B.V. v. Cannaplex Compliance Management LLC, Opposition No. 91237770 (TTAB 2018)
(Trademark)
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Jemie B.V. v. urban-gro LLC, Opposition No. 91235258 (TTAB 2017)
(Trademark)
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Jemie B.V. v. Strategic Capital Investment Partners Inc., Opposition No. 91237122 (TTAB 2018)
(Trademark)
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Jemie B.V. v. The Canna Nurse LLC, Opposition No. 91233070 (TTAB 2018)
(Trademark)
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Robert Bosch GmbH and Robert Bosch LLC v. SIC Autoparts, LLC, Case No. 2:17-cv-14030, (S.D. Fl 2017)
(Counterfeiting, Trademark Infringement, Unfair Competition)
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Eli Lilly and Company and Novartis Tiergesundheit AG v. Scott Martin, d/b/a Best Value Pet Supplies, and DOES 1-10, Case No. 1:16-cv-01787-RLY-DML (S.D. Indiana, Judge Young)
(Trademark, Unfair Competition)
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Robert Bosch GmbH and Robert Bosch LLC v. North Shore Imports, L.L.C., Case No. 8:16-cv-00942-T-24-MAP (M.D. Fla. 2016) (permanent injunction granted)
(Counterfeiting, Trademark Infringement, Unfair Competition)
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CDVI Americas Ltd. v. Amin Corp., Cancellation No. 92063450 (TTAB 2016) (Petitioned to cancel the registrant's RADIUM trademark, alleging a fraudulent specimen of use; defeated the registrant's motion to dismiss)
(Trademark)
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Lenovo (Singapore) Pte. Ltd. v. Robert Bosch GmbH, TTAB Opposition No. 91225204 (TTAB 2016) (Obtained withdrawal with prejudice of opposition)
(Trademark)
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Navistar International Corporation v. HARIS MAMOUN, NAF Case No. FA1605001673819 (NAF 2016) (Navistar won the UDRP proceeding against HARIS MAMOUN and has been awarded the domain name navistar.international)
(Domain Name, UDRP Proceeding)
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Navistar International Corporation v. EIJI TAKAHASHI, NAF Case No. FA1604001672359 (NAF 2016) (Navistar won the UDRP proceeding against EIJI TAKAHASHI and has been awarded the domain name navistar.xyz)
(Domain Name, UDRP Proceeding)
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ATI Technologies ULC v. Entegra Technologies, Inc., TTAB Opposition No. 91222680 (TTAB 2016) (CROSSFIRE and ENTEGRA CROSSFIRE marks) (Settled, obtained withdrawal of opposed trademark application and agreement to halt use phase out of all use of offending CROSSFIRE mark alone)
(Trademark)
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Jemie B.V. v. CannaVest Corporation, Opposition No. 91225887 (TTAB 2016)
(Trademark)
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Jemie B.V. v. Gavin Kogan, Opposition No. 91223905 (TTAB 2016) (opposition sustained)
(Trademark)
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Mars, Incorporated v. Biscuits Leclerc Ltée, Opposition No. 91222447 (TTAB 2016)
(Trademark)
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Robert Bosch GmbH and Robert Bosch LLC v. Euro-Star Industries, 3:14-cv-01611-JBA (D. Conn. 2015, Judge Arterton) (permanent injunction granted)
(Unfair Competition, False Advertising)
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Robert Bosch GmbH and Robert Bosch LLC v. Deeds Performance and Joshua Deeds, 2:14-cv-08517-BRO-AJW (C.D. Ca. 2015, Judge O'Connell) (permanent injunction and award of $200,000 plus attorneys' fees granted)
(Counterfeiting, Trademark Infringement, False Advertising)
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Jemie B.V. v. ElementC6, Inc., Case No. 1:15-cv-07678 (N.D. Ill. 2015, Judge St. Eve) (Defendant abandoned its application for and ceased all use of the mark CANNACHAR for a soil conditioner, which infringed Jemie B.V.'s family of CANNA marks for fertilizers, nutrients, stimulators, fungicides, herbicides, and related horticulture products. )
(Trademark Infringement, Unfair Competition, Deceptive Trade Practices)
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Navistar International Corporation v. N Rahmany, Case No. FA1505001620789 (NAF 2015) (Obtained transfer of an infringing domain name from a cybersquatter through efficient UDRP proceedings on behalf of client Navistar International Corp.)
(Domain Name, UDRP Proceeding)
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Emergency Essentials v. Felix Castro & Bluehost, 13-cv-881 (D. Utah, 2014, Judge Benson)
(Trademark)
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Schütz Container Systems, Inc. v. Mauser Corp., 9-cv-3609 (N.D. Ga., 2014, Judge Story)
(False Advertising)
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John Wiley & Sons, Ltd. v. McDonnell Boehnen Hulbert & Berghoff LLP, 12-cv-1446 (N.D. Ill., 2014, Judge Norgle, Sr.)
(Copyright)
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Kubota Corp. v. Global Development Int'l, 12-cv-6065 (N.D. Ill., 2014, Judge St. Eve)
(Trademark, False Advertising, Copyright)
Professional
Activities
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International Association of Privacy Professionals
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Member
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International Trademark Association
:
Member
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Chicago Bar Association
:
Member
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The Copyright Society of the U.S.A.
:
Member
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Jazz Institute of Chicago
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Board Member
Representative Publications
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"NOW WHAT, AFTER GDPR? CALIFORNIA! New State Privacy Law Set to Impact Businesses Across the U.S.," Pattishall Insights (July 2018)
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Buzz Kill: TTAB Reaffirms Prohibition on Medical Marijuana Registrations, Pattishall Blog (July 2017)
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Drake Copied Jimmy Smith's Rap. But Court Says it's not Copyright Infringement, it's Transformative Fair Use, Pattishall Blog (June 2017)
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11th Circuit Requires Copyright Registration Certificate in Hand to File Infringement Action, Deepening Circuit Split, Pattishall Blog (May 2017)
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Quoted in the article "Biometrics Have Arrived--And So Have the Class Actions," Corporate Counsel Magazine (April 2016)
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"BIO HAZARD: Biometric Privacy Class Actions Over Digital Images and Fingerprints," Pattishall Insights (January 2016)
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"Digital Dilemmas: The Music Industry Confronts Licensing for On-Demand Streaming Services," Landslide Magazine (January/February 2016)
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New Year's Resolution - Review and Update Website Privacy Policy and Terms of Use, Pattishall IP News (January 2016)
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"NOT SAVED BY SCIENCE - Fifth Circuit Rules False Advertising Claims Based on Debated Science Subject to Lanham Act Liability, Not Protected First Amendment Speech," Pattishall Insights (January 2015)
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Supreme Court Finds Tacking to Be an Issue of Fact, Pattishall IP News (January 2015)
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2015 Resolution: Privacy Compliance, Pattishall IP News (January 2015)
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Not Quite "Happy Together" - Recording Industry Scores Significant Victory in First Major Pre-1972 Sound Recordings Performance Rights Decision, Pattishall IP News (October 2014)
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Co-author, Band Law for Bands, a legal primer for musicians that is part of the Law Guides series published by Lawyers for the Creative Arts in celebration of the organization's 40th Anniversary
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"Common Sense Copyright: The Expansion of Fair Use to Protect First Amendment Speech Rights in the Digital Age"; winning regional submission in the 2010 ASCAP Nathan Burkan Memorial Competition
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"Magazine Publishers Exhale: Exploiting Collective Works After Greenberg"; John Marshall Review of Intellectual Property Law (Fall 2009)
Representative Presentations
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"Book Contracts 102," American Bar Association Webinar (November 2018)
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"Writer's Rights: A Legal Clinic," FLOW (For Love Of Writing) Creative Writer's Workshop Series and Open House," Chicago, IL (September 2018)
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"Writers! Know Your Legal Rights: Everything you need to know, but were afraid to ask!" Lawyers for the Creative Arts, Chicago, IL (June 2017)
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"Book Contracts 101," American Bar Association Webinar (April 2017)
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"Spotify and Beyond: Confronting Licensing for On-Demand Streaming Services (and a Summary of the Pre-1972 Sound Recording Litigation)," Chicago Bar Association, Chicago, IL (December 2015)