Law Firm News

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Law Firm News

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Snell & Wilmer, L.L.P.

PHOENIX - American College of Trial Lawyers Names Vaughn Crawford a Fellow
Vaughn Crawford, a partner in Snell & Wilmer’s Phoenix office, has become a Fellow of the American College of Trial Lawyers, one of the premier legal associations in America. The induction ceremony took place before an audience of 810 persons during the recent 2007 Spring Meeting of the College in La Quinta, California.

Founded in 1950, the College is composed of the best of the trial bar from the United States and Canada. Fellowship in the College is extended by invitation only after careful investigation, to those experienced trial lawyers who have mastered the art of advocacy and whose professional careers have been marked by the highest standards of ethical conduct, professionalism, civility and collegiality.

Membership in the college cannot exceed one per cent of the total lawyer population of any state or province. There are currently approximately 5,610 members. Lawyers must have a minimum of fifteen years trial experience before they can be considered for Fellowship. Other Fellows from Snell & Wilmer include John Bouma, Paul Giancola, and Warren Platt.

Crawford has practiced law in Arizona for 27 years. His practice focuses product liability defense, employment /discrimination actions and complex commercial litigation. Crawford received his juris doctor from Brigham Young University, J. Reuben Clark Law School in 1980 and his bachelors’ degree in English from Brigham Young University in 1974. Crawford has been admitted to the Supreme Court of Arizona and the Supreme Court of Nevada

03-30-2007

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Kenyon & Kenyon, LLP

Second Circuit Rejects ‘Famous Marks Doctrine’ For Foreign Trademark Owners – New York Restaurant Chain Prevails On All Federal Claims In Closely Watched Trademark Case
The intellectual property law firm Kenyon and Kenyon LLP announced today that its client, Punchgini, Inc., the proprietor of the BUKHARA GRILL restaurant chain, had prevailed on all federal claims at the United States Court of Appeals for the Second Circuit in a major decision regarding the “Famous Marks Doctrine” for owners of foreign trademarks. The Firm’s Managing Partner, Rich Gresalfi, said “this is a wonderful victory and adds to the long line of landmark decisions the Firm has obtained for its clients in the trademark area, going back to cases such as AOL v. AT&T (where the Firm defended its client AT&T in connection with the marks “You Have Mail,” “IM” and “Buddy List”) and Mead Data v. Toyota (where the Firm secured the right of its client Toyota to sell cars under the “LEXUS” name).

In a 65-page decision, which came down on March 28, 2007, the Second Circuit affirmed that Plaintiffs ITC Limited and ITC Hotels Limited (collectively “ITC”), the owners of a restaurant in India, had abandoned any rights they had to the name Bukhara in the United States, and rejected their argument that the decision should be overturned because it owned a foreign mark that it alleged to be “famous” in the United States. Plaintiffs ITC sued Kenyon & Kenyon clients’ Punchgini, Inc., Bukhara Grill II, Inc., and certain additionally named individuals associated with the businesses, in the United States District Court for the Southern District of New York in 2005, asserting that defendants’ use of the Bukhara mark and related trade dress constituted trademark infringement, unfair competition, and false advertising in violation of federal and state law. The Court of Appeals affirmed the dismissal of all federal claims by the District Court. Notably, the Court’s rejection of the “famous marks” doctrine as a basis for federal unfair competition claims by foreign trademark owners under the Lanham Act creates a split between the Second and Ninth Circuit Court of Appeals on the same issue of law.

“We are obviously thrilled for our clients that the Second Circuit saw the merits of our arguments and dismissed all federal claims against them,” said Michelle Mancino Marsh, the Kenyon & Kenyon partner who argued the case before the district court and the 2nd Circuit.

The Circuit Court found that “as a matter of law, ITC abandoned its United States rights in its registered “Bukhara” mark for restaurant services and, therefore, cannot assert a successful claim for trademark infringement under section 32(1)(a) of the Lanham Act or state common law; nor can it continue to maintain the registered mark, which the district court correctly ordered cancelled.”

The decision also concluded that “plaintiff cannot assert a successful federal claim for unfair competition because Congress has not incorporated the substantive protections of the famous marks doctrine set forth in Paris Convention Article 6bis and TRIPs Article 16(2) into the relevant federal law, and this court cannot recognize the doctrine simply as a matter of sound policy.”

Additionally, the Court also ruled that ITC “lacked standing to assert a claim for false advertising under section 43(a)(1)(B) of the Lanham Act against the defendants.”

The case may continue on one final claim for state unfair competition, as the Circuit Court deferred two questions of law for the New York State Court of Appeals.

03-30-2007

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Morris, Manning & Martin, LLP

Association of Corporate Counsel Program Explores Legal Project Management
Ways to better manage outside counsel is the topic for the April meeting of the Georgia Chapter of the Association of Corporate Counsel, or ACC. A team from Morris, Manning & Martin, LLP, will present a program titled “Legal Project Management: A Better Way to Manage Legal Projects and Outside Counsel Costs.” The program has been approved for Professionalism and general CLE credit.

Surveys by well-known legal consulting groups show corporate counsel are deeply dissatisfied with their outside law firms:

• BTI Consulting Group Inc. found that only 25 percent of respondents considered their primary law firm best at client service, and only 32 percent would recommend the firms to others.

• Another BTI survey found that 54 percent of corporate law departments replaced their primary outside law firms in the previous 18 months. Overall client satisfaction was below 31 percent.

• Altman Weil Inc. found that 30 percent of companies surveyed had recently fired, or planned to fire, one of their outside law firms. Legal Project Management is a patent pending system designed to alleviate frustration with outside counsel by improving the delivery, transparency and efficiency of legal services.

Morris, Manning & Martin partners Grant Collingsworth, Don Loft, and John Harris together with Legal Project Management Director Linda Klausing will share their experiences in developing the firm’s system. They will also shed light on how it makes client projects run on time and on budget.

The event will be held Tuesday, April 10 at Maggiano's Buckhead from 11:45 a.m. to 1:30 p.m. Attendance is limited to ACC members and their invited guests, as well as prospective ACC members.

03-30-2007

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Collier, Shannon & Scott, P.L.L.C.

Director of International Trade and Services Interviewed by Bloomberg News
Bob Cassidy, Kelley Drye's Director of International Trade and Services, was interviewed by Bloomberg News on the Department of Commerce's preliminary decision to impose countervailing duties on imports of glossy paper from China. The decision ends the U.S. government's 23-year-old policy not to levy countervailing duties on imports from non-market economies. In his interview with Bloomberg, Mr. Cassidy discussed the likely impact that the new duties would have on U.S.-China economic relations. The interview appeared on Bloomberg's radio and television news channels.

03-30-2007

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Collier, Shannon & Scott, P.L.L.C.

Kelley Drye Represents Sandoz Inc. in Arbitration
Kelley Drye represented Sandoz Inc. in an arbitration brought by Quality King Healthcare, Inc. (QK), a pharmaceutical wholesaler/distributor. QK sought reimbursement for its return to Sandoz of a substantial volume of expired prescription pharmaceutical products manufactured by Sandoz but purchased by QK from another wholesaler. Sandoz refused the reimbursement based on its contracts and its published Returns Policy. QK claimed these documents were "ambiguous" and asserted, among other things, that Sandoz was in breach of contract or was equitably estopped from refusing the reimbursement due to the prior erroneous issuance of a credit by Sandoz to QK. After a full hearing, the sole Arbitrator rendered a decision in favor of Sandoz, rejecting all of QK's claims, upholding Sandoz's contract language and Policy, and awarding Sandoz's attorneys fees and costs.

03-30-2007

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Clark Hill PLC

Clark Hill Attorney Scott G. Smith Speaks at Michigan Municipal League Eminent Domain Strategy Conference on April 3
Attorney Scott G. Smith will serve as one of seven panelists at the Michigan Municipal League’s “Eminent Domain: A Strategy Conference” on April 3, 2007 at the Kellogg Center in East Lansing. The panel will examine what should be done in response to the 2006 passage of the eminent domain constitutional amendment and related legislation. The seminar begins at 10:00 a.m. and will conclude by 3:00 p.m.

Scott Smith is the leader of Clark Hill PLC’s Municipal Group, has been practicing law for more than 25 years, and concentrates his practice in the areas of municipal law, municipal finance law, real estate law, environmental law, and condemnation law.

Smith serves as general legal counsel for the communities of Allegan, Cedar Springs, Grand Haven, Otsego, Plainwell, South Haven, and Sparta, and as special legal counsel for Grand Rapids and a number of other communities.

Smith has extensive experience in all aspects of municipalities and municipal endeavors, representing cities, townships, villages, counties, and myriad authorities and intergovernmental entities, such as brownfield redevelopment authorities, downtown development authorities, tax increment finance authorities, economic development corporations, utility boards, joint fire and other emergency services boards, parks boards, planning commissions, zoning and construction boards of appeals, and other municipal bodies and entities. He has spoken at numerous conferences and seminars on such topics as property acquisition and condemnation, environmental considerations in municipal property transactions, blight enforcement, open meetings and freedom of information issues, zoning, planning and land use, relationships between municipalities and non-profit entities, intergovernmental contracts, annexation and act 425 agreements, and the redevelopment of blighted and contaminated property. In addition, he is the co-author of “Understanding Township Franchises & Right-of-Way Consents,” Michigan Township News, June, 2003.

Smith earned his B.A. from Wheaton College and his J.D. from the University of Michigan Law School.

03-30-2007

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