Intellectual Property Litigation

Novo Nordisk A/S et al v. Indian Lake Medical Weight Loss & Wellness Inc., No 3:2023cv00650 (M.D. Tenn 2024) -- Represented Tennessee-based health clinic Indian Lake Medical Weight Loss & Wellness in a lawsuit filed by pharmaceutical giant Novo Nordisk alleging trademark infringement. Novo Nordisk claimed that our client had used its Ozempic and Wegovy trademarks to sell a different product, namely compounded semaglutide. We were able to settle the matter favorably for our client, without an injunction. Novo Nordisk has filed over two dozen similar lawsuits, and this was the first to be settled without an injunction attached.

Novo Nordisk Inc. v. DCA Pharmacy, No. 3:2023cv00668 (M.D. Tenn 2024) -- Represented DCA Pharmacy (a Tennessee-based compounding pharmacy) against a claim from pharmaceutical giant Novo Nordisk. Novo Nordisk alleged that our client’s production of compounded semaglutide violated the Tennessee Drug Control Act. Barton achieved a favorable outcome for our client, with Novo Nordisk ultimately agreeing to dismiss the case.

Collaborated with the National Music Publishers’ Association on anti-piracy efforts aimed at removing copyrighted lyrics from unlicensed websites and negotiating licenses for these lyrics’ use. These efforts created a new stream of royalty income which has generated hundreds of millions of dollars in additional revenue for music publishers and their songwriters over the past 20 years.

Provided counsel on copyright terminations and copyright law in general. On behalf of disparate clients—The Rolling Stones, Joe Simon (creator of Captain America), Jessye Norman (international opera star), etc.—won several critical copyright cases that benefit creators in general and have helped bring clarity to the concept of Work For Hire.

Successfully represented Joe Simon, the creator of Captain America, in winning Simon’s case against Marvel to recapture copyright in the famed superhero.

Represented New Jersey-based financial advisory firm against Missouri-based advisory company for trademark infringement of the term “Financial Quarterback,” alleging that the Missouri firm unlawfully used the term in its advertising, along with similarly related terms such as “Retirement Coach.” (Jalinski Advisory Group, Inc. v. JBL Financial Services, Inc. (E.D. Mo., No. 4:19-cv-01914))

Represented an Italian housewares distributor in multiple intellectual property matters. Successfully shut down widespread distribution of counterfeit products via online marketplace websites, resolved multiple infringement claims against the client with minimal exposures, and counseled the client with regard to ongoing trademark and copyright issues.

Represented Jenny Yoo Collection Inc., a bridal dress designer, in the District of Kansas in a matter upholding the viability of trade dress claims relating to fashion designs. (Jenny Yoo Collection, Inc. v. Essence of Australia, Inc. Case No. 17-CV-2666-JAR-GEB)

Represented various Italian fashion companies in trademark and copyright infringement and contract disputes in the United States. Obtained favorable settlement of our client’s trademark infringement claims against a U.S. competitor and negotiated a co-existence agreement regarding ongoing use of the companies’ respective trademarks and trade dress. Successfully defended a high-profile Italian designer fashion company against contract claims by a former U.S. distributor, obtaining stay of the distributor’s lawsuit in favor of arbitration, and then obtaining dismissal of the distributor’s claims in arbitration. Successfully sued on behalf of an Italian lingerie company for payments owed by a U.S. distributor; won summary judgment awarding damages, without a trial.

Successfully resolved claim by fashion designer against clothing manufacturer who wrongfully trademarked and misappropriated the designer’s last name without the designer’s consent.

Successfully resolved trademark and contract dispute between leading boutique retailer and supplier during deposition of supplier’s (opposing parties) owner.

Obtained emergency (ex parte) seizure order in federal court trademark infringement action on behalf of a leading food manufacturer.

Successfully defeated preliminary injunction and seizure order that threatened to destroy client’s business in federal court trademark, copyright infringement, and counterfeiting action brought by the world’s largest software company against a major independent computer distributor whose offices were raided by law enforcement at the request of the plaintiff. Obtained insurance defense leading to an insurer funded, confidential settlement.

Represented a well-known celebrity branding company in compelling the rejection of a trademark license agreement of a retail debtor, thus freeing up the mark from the debtor’s estate and allowing the branding company to pursue other opportunities with it, while also preserving the company’s claims against the debtor.

Represented an internationally-known designer as the only creditor to successfully challenge a retail debtor’s broadly proposed releases, claim waivers, and plan injunction in advance of the debtor’s confirmation of its plan, which allowed our creditor-designer client to continue to pursue multi-million-dollar IP-related claims against the debtor and other insider third parties.