James S. Blackburn | People

James Blackburn is an intellectual property litigator whose practice focuses on patent, copyright and trademark litigation, and counseling for technology and entertainment and media companies. His experience includes:

Lead counsel in patent litigations nationwide involving software, database, and Internet technology.
Lead counsel in copyright litigation regarding public performance liability for retransmission of over-the-air broadcasts, and the availability of a compulsory license under Section 111 of the Copyright Act for those retransmissions.
Lead counsel in trademark, false advertising, and unfair competition actions.
Noninfringement and invalidity analysis and due diligence.

Focus Areas

Experience

Cloud Satchel v. Barnes & Noble. Lead counsel for Barnes & Noble in patent infringement case relating to document database and retrieval technology and Nook e-readers. Won judgment of invalidity under Section 101 on a Rule 12 motion. Judgement affirmed on appeal.
B.E. Technology v. Barnes & Noble. Lead counsel for Barnes & Noble in patent infringement case relating to information delivery and transmission and Nook e-readers. Case pending.
GeoTag. Lead counsel for multiple defendants in one of the largest patent troll litigations in the Eastern District of Texas relating to database and retrieval technology. Case settled favorably on behalf of all defendants.
Pedersen v. Google. Representing Google in patent infringement action in the Western District of Texas relating to Google’s Gmail service.
Lucent v. Dell. Represented Dell Inc. in defending against charges of infringement of 12 different patents in numerous technologies such as communications protocols, modems, computer graphics, and video compression. Favorable judgment for Dell following jury trial.

Amado v. Microsoft. Represented Microsoft in a patent infringement action relating to database and spreadsheet technology. Favorable judgment for Microsoft following jury trial, including substantial reduction of jury award due to successful laches defense.

NBC Universal et al. v. FilmOnX. Representing ABC, NBC, and CBS in actions in the Central District of California and the District of Columbia against FilmOnX for copyright infringement by retransmitting over-the-air broadcasts without authorization. Secured preliminary injunctions in both actions enjoining FilmOnX’s retransmissions as unauthorized public performances of Plaintiffs’ copyrighted works. Currently litigating FilmOnX’s alleged entitlement to a compulsory license under Section 111 of the Copyright Act and copyright damages issues. Cases pending.
Sweet People Apparel Inc. v. LA Idol. Trial counsel for Sweet People in copyright and trademark infringement action based on stitching and design elements of designer jeanswear. Obtained preliminary injunction and jury verdict of willful infringement on all claims. Favorable settlement for Sweet People following jury trial.
Mattel v. Bburago. Represented former Italian licensee in trademark and design patent infringement action brought by Mattel and Ferrari. Obtained summary judgment limiting claim to sales of allegedly infringing products within the United States. Favorable settlement for defendant following summary judgment.
Valentino v. Mario Valentino. Representing Italian fashion house in trademark, false advertising, unfair competition, and design patent infringement action brought concerning the sale and advertising of handbags.
Jamdat v. Jamster et al. Represented VeriSign Inc. and its subsidiary Jamster in trademark infringement action alleging infringement of the “Jamdat” mark by the “Jamster” mark. Obtained withdrawal of registered mark claims following motion to amend to seek cancellation of registered marks based on fraudulent statement of use in obtaining registration. Favorable settlement for defendants.

Syncalot v. VeriSign Inc. Represented VeriSign in action alleging violation of California Business & Professions Code §17200 with respect to a new service introduced by VeriSign, and asserting false advertising, trademark, and quasi-antitrust claims under Section 17200. Case voluntarily dismissed after filing of motion to dismiss.

Afilias Domains No. 3 Limited v. ICANN. Representing VeriSign Inc. in connection with proceedings before the Internet Corporation for Assigned Names and Numbers concerning the award and delegation of the new generic top-level domain .WEB.
Sify Limited v. Yahoo! Inc. Represented Sify, an Indian Internet services provider, in trade secrets misappropriation action against Yahoo! Inc. and its wholly-owned subsidiary, Yahoo! India. Favorable settlement for plaintiff.
CFIT v. VeriSign Inc. Represented VeriSign, Inc. in an antitrust action alleging violations of the Sherman Act and California’s Cartwright Act arising out of VeriSign’s entry into a new agreement for operation of the .com registry with Internet Corporation for Assigned Names and Numbers. Following repeated dismissals of claims, plaintiff dismissed claims with prejudice without consideration.
Seven Words LLC v. Network Solutions Inc. Represented Network Solutions Inc. in action claiming violation of federal and state constitutional rights of free speech in connection with the registration of Internet domain names containing George Carlin’s “seven dirty words.” Obtained dismissal of action in the district court with prejudice, and dismissal of the appeal on mootness grounds.

Perspectives

July 31, 2019

Copyright and Trademark Mid-Year Update

Arnold & Porter Webinar

Recognition

The Legal 500 US

Intellectual Property: Copyright (2012, 2017)
Intellectual Property: Litigation (2012)

Los Angeles Daily Journal

"50 Leading IP Litigators in California" (2008)

Credentials

Education

J.D., University of California, Berkeley, School of Law, 1993, Order of the Coif
A.B., Political Science, University of California, Berkeley, 1990, with highest distinction

Admissions

California
U.S. Tax Court
U.S. District Court, Northern District of California
U.S. District Court, Southern District of California
U.S. District Court, Central District of California
U.S. District Court, Eastern District of Texas
U.S. Court of Appeals for the Ninth Circuit
U.S. Court of Appeals for the Federal Circuit

Activities

Planning Committee, Intellectual Property Institute, University of Southern California