Experience
Eugene is a partner at Wendel Rosen and heads up the firm’s IP Litigation Subgroup. Eugene’s clients include craft breweries, computer gaming companies, food and beverage companies, technology companies, and many others. Although his expertise is in intellectual property (trademarks, copyright, domain names, advertising), he counsels his clients on a wide variety of matters with the assistance of other firm attorneys. He ‘tweets’ on craft beer related news and legal developments as @beerattorney.
Intellectual Property Litigation
As an experienced intellectual property counselor and litigator, Eugene advises clients on intellectual property and related issues including brand protection, technology licensing, social media issues, advertising, product labeling and privacy. His practice includes representation of large, publicly-traded companies and smaller, emerging companies in industries including hardware and software, apparel, computer gaming, social media, entertainment, food and beverage, and manufacturing. His intellectual property litigation experience includes matters related to trademarks and trade dress, domain names, anti-counterfeiting, copyright, DMCA, trade secrets, patents, unfair competition and false advertising. He has represented clients in proceedings before state and federal courts, arbitration panels including UDRP actions, and the Trademark Trial and Appeal Board.
Brand Development and Protection
In addition to his intellectual property litigation experience, Eugene regularly counsels companies in the selection, registration and maintenance of their trademarks and copyrights both domestically and abroad. He advises companies with large, established, international trademark portfolios, as well as newer companies that are just developing their brands. Eugene also represents clients in related areas such as software licensing, website terms of use, privacy policies, OEM licenses, DMCA policies and compliance, and trademark licenses and co-existence agreements.
Business Litigation
Eugene is also an experienced commercial and employment law litigator. He has represented companies in a wide range of business and commercial litigation and arbitrations including antitrust, broker-dealer disputes, class action cases, investment fraud, bid disputes, real estate, unfair competition, California Business & Professions Code § 17200 claims, and Commerce Clause issues involving state and federal milk laws and regulations. In the employment law field, he has advised and represented clients in matters and litigation involving non-compete agreements, misappropriation of trade secrets, employment discrimination, independent contractor versus employee status, and wage and hours laws. In addition to representing clients in court, he has represented clients in employment disputes before administrative agencies such as the California Labor Commissioner and New York Stock Exchange (arbitration).
Representative Cases
INTELLECTUAL PROPERTY LITIGATION & DISPUTES
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Represented Northern California craft brewery as plaintiff in Lanham Act trademark infringement action in federal district court; obtained consent permanent injunction.
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Represent social gaming company in trademark prosecution and dispute matters.
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Represent leading game publisher in several domain name arbitration proceedings (UDRP).
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Represented building developer in copyright infringement action involving architectural drawings.
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Represented television set-top box manufacturer in copyright infringement action involving BusyBox open source software and GNU General Public License (GPLv2).
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Represented a large manufacture of networking hardware and software products in anti-counterfeiting disputes and enforcement efforts.
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Represented leading ATM company in dispute with Korean manufacturer over ownership of trademark (ICDR arbitration).
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Defended office products company in trade secret litigation involving use of customer lists and information; engaged in expedited discovery and successfully limited scope of TRO and injunction.
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Represented lifestyle apparel company in trademark infringement and TTAB cancellation proceeding involving mark and logo.
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Represented a well-known nonprofit organization in trademark and trade dress infringement and dilution action and related design patent infringement counterclaim.
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Counsel for a newswire service in trade secret litigation; obtained a preliminary injunction requiring former employee to cease working for competitor and from using customer information.
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Trial counsel for a jewelry designer in a trade dress infringement action in the Southern District of New York.
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Represented an online document-sharing company in a DMCA dispute regarding copyrighted documents posted by customers.
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Represented a leading Silicon Valley content management software firm in copyright litigation involving the scope of a software license agreement.
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Represented a well-known Napa Valley winery in Lanham Act litigation against a Canadian wine kit manufacturer.
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Represented an online document delivery service in class action copyright infringement litigation involving indexing and delivery of copies of print articles.
INTELLECTUAL PROPERTY COUNSELING & PROSECUTION
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Advise and represent companies on all aspects of trademark prosecution, protection, enforcement and licensing, including clients in the technology, computer game, entertainment, food and beverage, and consumer retail products fields; handled wide range of trademark issues before the Patent and Trademark Office and Trademark Trial and Appeal Board; manage worldwide trademark portfolios and provide strategic branding advice and counsel.
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Advise and represent clients on copyright issues, including registration and enforcement issues, DMCA issues, and copyright licensing, in wide variety of fields; advise clients on right of publicity and privacy issues.
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Advise social gaming company in various intellectual property matters and disputes including trademark prosecution, TTAB proceedings, and copyright counseling.
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Advise and represent a leading Korean apparel company in trademark matters in the United States.
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Serve as intellectual property counsel for a leading manufacturer and distributor of motorcycle parts, clothing and accessories, including handling trademark prosecution and enforcement actions worldwide.
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Advised a leading computer game publisher on worldwide sweepstakes promotion in connection with the FIFA World Cup.
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Negotiated a trademark license agreement relating to distribution and publication of music used in computer games.
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Draft and negotiate license agreements (SLA, SaaS, ASP) for leading GIS mapping and technology provider.
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Worked as in-house counsel for Silicon Valley CRM software company; drafted and negotiated license and business development agreements.
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Advised client on privacy issues and policies for website and customers' websites; negotiated licensing agreement regarding use of large business information database.
OTHER LITIGATION
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Represented non-profit organization in quiet title and real estate fraud litigation regarding Koreatown retail shopping plaza.
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Counsel for a leading investment brokerage firm in an employment discrimination class action and related breach of duty of loyalty counterclaim; successfully compelled arbitration to avoid class claims, prevailed on defense of discrimination claim, and obtained damages award on firm’s breach of duty of loyalty claim.
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Represented leading pharmaceutical companies in class action antitrust and unfair competition litigation.
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Represented leading cereal maker in class action antitrust and unfair competition litigation; obtained summary judgment.
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Represented state food and agriculture department in litigation regarding milk nutritional labeling and pooling regulations, and successful appeal to Ninth Circuit.
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Defended brokerage firm in NASD arbitration involving claims of breach of fiduciary duty, "churning," and related claims; obtained award in defendant's favor.
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Represented various employee groups in class action claims under Cal. Business & Professions Code § 17200 for violations of wage and hour and other employment claims.
Education
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University of California, Berkeley, Boalt Hall School of Law; J.D. (1993)
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University of Michigan; B.A. (1989)
