David Brezina is a strong believer in the value of cross-disciplinary work within the intellectual property law sphere. With appearances in more than 100 lawsuits over his career, he has also written applications for and had issued numerous patents and trademark registrations. As part of learning familiarity with business and competitive practices, he has also counseled in business decision making and negotiated many contracts. Publications and speaking engagements have included both focused topics and multidisciplinary topics. Talks and articles have focused on topics such as electronic discovery, trademark surveys, numerals as trademarks. Cross-disciplinary talks and articles have included “A Multidisciplinary Approach to Trade Secret Law” urging greater use of copyright remedies, “Dicta Rising to Doctrine: Independent Ink Resolving The Presumption Of Market Power from Patents Used in Antitrust Tie-ins”, addressing the patent-antitrust interface and “Trade Dress Decision, The Supreme Court Reverses Based on Expired Utility Patent and Ducks Constitutional Issue” discussing the impact of a utility patent on a trade dress claim.
Published case discussions are representative, not exhaustive.
DBA Products Co. v. Salamon, 1981 U.S. Dist. LEXIS 10802, (ND Ill 1981) was a trademark infringement case in which summary judgment for the client was obtained on a counterclaim under the Illinois trademark dilution act. The industry involved sports products, specifically bowling accessories.
In Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 1 USPQ2d 1196 (Fed. Cir. 1986), after winning this patent infringement for the defense in a one-day trial on the merits, the Federal Circuit remanded for further proceedings. This case involved cross-town rivals in automotive aftermarket accessories.
Mucha v. King 792 F.2d 602 (7th Cir, 1986) involved a 'long lost' painting was not really 'lost', the heirs of the artist recovering a painting placed in a bailment 70 years before. Because of the cultural importance of the artist, Mr. Brezina has also discussed this case before an Art Law class and bar association groups.
In Plastiques Anchor v. Quinn David, 1992 U.S. Dist. LEXIS 12536, (ND Ill 1992) a preliminary injunction motion was soundly defeated in this trademark and trade dress case involving plastic bicycle racks, the judge remarking that it appeared that the trademark might not be owned by plaintiff, instead being owned by his client, the US distributor.
After prove-up of damages, a half-million dollar judgment was entered in favor of the client, a Nicaraguan brewery, in this trademark infringement case Compania Cervecera De Nicaragua v. Cervezas Victoria y Tona Beers Inc. 28 USPQ 2d 1870 (MD Fla 1993). Ultimately a compromised amount was collected from the co-defendant private label brewer.
Rasmussen v. The West, Inc. 28 USPQ 2d 1958 (N.D.Ill, 1993) was a copyright infringement case in which the client, plaintiff, defeated a motion to dismiss on personal jurisdiction grounds, interpreting the Illinois Long Arm statute to be satisfied when defendant made two mail order purchases from plaintiff and then infringed the work obtained.
In Carbonara v. Olmos 1994 WL 370031 March 4, 1994. (CD Cal 1994) the published decision dealt with a novel procedural point in a deceptive trade practices and false advertising case arising out of bogus celebrity endorsements. After removal to, and transfer from the Northern District of Illinois, the case was remanded back from the Central District of California to state court in Cook County, Illinois, an unprecedented procedure at the time. Settlement was obtained for the clients after oral argument of Plaintiffs' motion for summary judgment.
Storck USA, L.P. v. Farley Candy Co., Inc., 14 F.3d 311, 29 USPQ 2d 1431 (7th Cir. 1994) was decided after replacing counsel who lost two preliminary injunctions based on trademark and trade dress claims. A third preliminary injunction was defeated and affirmed on appeal, in part because of the survey evidence offered for the defense.
In Respect Inc. v. Fremgen 897 F. Supp. 361; 889 F. Supp. 340; 1995 U.S. Dist. LEXIS 8864; 36 U.S.P.Q.2d 1278, (ND Ill 1995), a copyright infringement case, summary judgment successfully limited damage exposure to the point where the case settled.
Microsoft Corp. v. Logical Choice Computers, Inc., 42 UCC Rep.Serv.2d 727, 2000 U.S. Dist. LEXIS 10972, 2000 WL 1038143 (ND Ill 2000) was a trademark and copyright infringement case, in which the defendant client, a software distributor, was dismissed from the third-party case.
In Trek Bicycle Corp. v. Alyx Fier, 56 U.S.P.Q. 2d 1527 (TTAB 2000) summary judgment in favor of our client was obtained in a trademark opposition in which fame of our client's mark was established. The industry involved was sports products, specifically bicycles
Holland Co. v. Zeftek, Inc., 2001 U.S. Dist. LEXIS 13015 (ND Ill 2001) was a case in which our client, the plaintiff successfully defeated defendant's motion for summary judgment in this patent infringement case, leading to prompt settlement.
In Thane Int'l, Inc. v. Trek Bicycle Corp., No. 00-55293, 00-55599, 305 F.3d 894, 64 USPQ2d 1564, 2002 U.S. App. LEXIS 18344 (9th Cir. 2002) a successful appeal overturned summary judgment in this trademark infringement case. This was obtained after joining the team from the firm that was originally unsuccessful.
Home Raters, Inc. v. Blumenthal, 2005 Copy. L. Rep. (CCH) P29,038; 2005 U.S. Dist. LEXIS 24206 (ND Ill 2005) was a copyright infringement case that established that under copyright, distinguishing other areas of the law, there is a right to attorneys fees as costs after acceptance of an unconditional offer of judgment.
Waterloo Furniture Components, Ltd. v. Haworth, Inc., 467 F.3d 641; 80 U.S.P.Q.2d 1675 (7th Cir. 2006) summary judgment for our client, a defendant in a breach of contract case, was obtained based on the expiration of the license agreement and the subject patent, despite the presence of a most-favored-nations clause.
In Through the Country Door v. J.C. Penney Co., 83 USPQ2d 1538, 2007 U.S. Dist. LEXIS 23975, (WD Wis 2007), a trademark, trade dress and copyright infringement case, a motion to dismiss was defeated. The trade dress count and state law unfair trade practices count, joined with a copyright infringement count for imitation and copying of retail catalogs survived the motion to dismiss. The case was settled on terms maintained confidentially.
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