Brent D.Sokol

Partner

(T) + 1.213.243.2396

For more than 25 years Brent Sokol has litigated complex patent, copyright, trademark, and DMCA/piracy claims and is an acknowledged leader and national speaker in the global restructuring of intellectual property assets. He has significant experience in litigating the restructured trademark rights of distressed companies, post-merger/acquisition trademark restructuring, and corporate/tax-related intellectual property reorganization.

Recent engagements include the pioneering representation of J. Crew's secured note holders in New York State Supreme Court in opposition to the $380 million dollar global restructuring of J. Crew's collateralized trademarks; the representation of American Apparel in the tax-efficient $88 million sale of its brands in bankruptcy to Gildan; as lead trial counsel, obtaining the third largest DMCA case judgment on record — a $65 million award and global seizure order on behalf of the subsidiaries of the three largest Korean broadcasters against a 5,000 employee Chinese corporate operator of a global OTT piracy network; Ardian in its medical device patent litigation strategy and $800 million acquisition by Medtronic; and, as lead trial counsel, representation of Korean broadcaster MBC in obtaining a preliminary and permanent injunction against consumer product trademark infringement of its world-famous hit television series title.

Brent is an Associate National Commissioner of the Anti-Defamation League, authored the successful ADL amicus brief to the 9th Circuit in the Boise church-state case, and is Civil Rights Committee co-chair for the Los Angeles Chapter of the ADL.

Experience

  • Gatemore Partners LP acquires Legacy Agency and TLA Worldwide Americas from TLA WorldwideJones Day represented Gatemore Partners LP in connection with the acquisition of the U.S. business of TLA Worldwide PLC, a sports marketing and athlete representation company, by a company owned and managed by Gatemore Partners LP.
  • Milliken defeats Kolay's motion for preliminary injunction in "Free Lay" flooring caseJones Day client Milliken & Company defeated a motion for preliminary injunction filed by competitor Kolay Flooring International, LLC, who alleged trademark infringement of the term "Free Lay" for flooring laid without permanent adhesive.
  • Takeda acquires Ariad Pharmaceuticals for $5.2 billionJones Day advised Takeda Pharmaceuticals U.S.A., Inc. on intellectual property matters relating to its $5.2 billion acquisition of Ariad Pharmaceuticals.
  • American Apparel sells IP rights to Gildan ActivewearJones Day represented American Apparel, LLC ("AA") in its second chapter 11 case, which was filed on November 14, 2016.
  • Mattel and Fisher-Price defeat putative nationwide consumer class action  lawsuitsOn February 2, 2016, Mattel, Inc. and Fisher-Price, Inc. defeated plaintiffs' motion for class certification of dozens of consumer protection claims under the laws of several different states pending in the Northern District of Alabama.
  • Korean broadcasters awarded $66 million in closely watched DMCA digital streaming piracy caseIn one of the largest Digital Millennium Copyright Act ("DMCA") awards on record, Korean broadcasters represented by Jones Day obtained a $66 million judgment plus attorneys fees against a Hong Kong digital transmission device maker, which operated a P4P digital broadcast piracy network, and its local distributor.
  • Korean national broadcast networks win summary judgment of copyright and trademark infringement against Chinese-Hong Kong companyJones Day represents the three Korean national television broadcasting networks whose works are digitally transmitted throughout the U.S. and the rest of the world without a license via a Chinese-Hong Kong company that operates a global P4P broadcast retransmission network.
  • Mag Instrument prevails in opposition against MAGSTUD markJones Day brought a trademark opposition on behalf of Mag Instrument, Inc. against MAGSTUD mark application for magnetic stud finders.
  • Digigraph.me defends digital celebrity autograph patentsJones Day represented Digigraph.me, Inc. in a declaratory judgment action seeking a declaration of invalidity of patents relating to creating and transmitting over communication networks images of celebrities along with personalized messages and their autographs.
  • Mag Instrument successfully challenges use of infringing domain name in UDRP proceedingJones Day successfully represented Mag Instrument, Inc. in a domain name dispute under the UDRP before the WIPO Arbitration and Mediation Center in connection with the infringing domain name maglite.me.
  • Mag Instrument asserts trademark infringement and unfair competition action against tool companyJones Day represents Mag Instrument, Inc. in a trademark infringement and unfair competition action against a tool and equipment supply company. 
  • Motion picture producers defend against claims of tortious interferenceJones Day represented motion picture producers against claims of tortious interference in connection with right of first offer for copyrighted autobiographical work.
  • Mag Instrument asserts trade dress infringement claims against maker of flashlightsJones Day is representing Mag Instrument, Inc. in trade dress infringement action against maker of flashlights.
  • PriceGrabber.com defends patent infringement suit over its PriceAlert featureJones Day represents PriceGrabber.com, Inc. in a patent infringement litigation over a patent directed to the use of updating database information records on a user's system via e-mail.
  • Mag Instrument resolves trademark infringement action related to flashlightsJones Day represented plaintiff Mag Instrument, Inc. in a trademark infringement action against Larson Electronics, LLC involving its use of the mark "Magnalight" for its lighting products.
  • Visa prevails in patent infringement action brought by SmartMetricJones Day obtained a stipulated judgment in favor of patent infringement defendant Visa Inc. following successful motions to dismiss, pre-Markman stay of discovery, and a favorable Markman order.
  • BMW successfully enforces trademark infringement claims against US Auto Parts NetworkJones Day successfully represented BMW of North America, LLC in unauthorized use by US Auto Parts Network, Inc. of the BMW word mark, use of "BMW" in domain name and the use of Internet links to unauthorized BMW parts dealers. 
  • PriceGrabber.com defends patent infringement action over use of PriceAlert feature on its shopping websiteJones Day represents PriceGrabber.com in a patent infringement litigation over a patent directed to use of a product discount notification feature on a website.
  • City of Hope forms City of Hope Medical FoundationJones Day advised the City of Hope in connection with the development and formation of City of Hope Medical Foundation (COHMF) and the purchase by COHMF of California Cancer Specialists Medical Group (CCSMG) and Oncology Specialists of COH (OSCOH).
  • Leading restaurant chain obtains dismissal in unlawful interference with contract actionJones Day successfully represented a leading casual restaurant chain and defeated claims of unlawful interference with a contract related to the operations of its Mexican franchisee.
  • The following represents experience prior to joining Jones Day.

    Calgene, Inc.
    Enzo v. Calgene
    Member of team that represented defendant and counterclaimant, the manufacturer of Flavr-Savr genetically modified tomatoes, in initial patent infringement action and unfair competition claims.

    Catalina Marketing International
    Catalina Marketing International v. Fuel Marketing Solutions.
    Brought patent infringement suit on behalf of leading provider of in-store coupon systems (used by Ralph's and other grocers) against competitor. 

    Cell Genesys, Inc.
    Genpharm v. Cell Genesys
    Represented patentee in ownership and trade secret dispute. 

    Gemological Institute of America, Inc.
    Gemological Institute of America, Inc. v Group Insurance Analysts, Inc.
    Successfully prosecuted a trademark opposition proceeding in the U.S.P.T.O., resulting in a withdrawal with prejudice.

    General Surgical Innovations, Inc.
    Origin Medsystems, Inc. v. General Surgical Innovations, Inc.

    General Surgical Innovations, Inc. v. Origin Medsystems Inc.

    Gen-Probe Incorporated
    U.C. Regents v. Gen-Probe, Inc.
    Patent inventorship dispute brought by University of California claiming ownership of patented technology used in client's genetic probe diagnostic kits.

    Gen-Probe, Inc. v. Center for Neurological Study.
    Patent infringement and related claims on behalf of manufacturer of genetic probe diagnostic kits.

    Levi Strauss & Co.
    Golden Trade, S.R.L. v. Lee Apparel Co. and Levi Strauss & Co.
    Member of team that defended Levi Strauss in patent infringement action regarding process patent for producing faded, acid-washed jeans.

    Mentor Graphics Corporation
    Mentor Graphics Corp. v. U.S.I.T.C., Fed. Cir.
    Represented intervenor, Quickturn Design Systems, the leading manufacturer of computer chip emulators, in support of favorable ITC temporary exclusion order.

    Mycogen Plant Sciences. Inc.
    Mycogen Plant Sciences. Inc. v. Monsanto.
    Part of team that defended patent infringement suit on behalf of patentee of Bt toxin gene used in genetically engineered crops.

    Namezero Inc.
    Namezero Inc. v. Domain Zero, Inc.
    Brought a trademark infringement suit on behalf of Namezero Inc., a leading domain name registrar, resulting in a negotiated settlement.

    Supermarkets Online
    Supermarkets Online v. Coolsavings
    Brought patent infringement suit on behalf of leading online coupon provider against publicly held Internet-based coupon provider.

    Speaking Engagements

    • July 29, 2018
      Inside Tips on Medical Device IP: What Entrepreneurs Need to Know, Fogarty Institute for Innovation
    • January 27, 2017
      Video Scraping and Streaming: Copyright Enforcement in the Internet Age, Jones Day University
    • December 17, 2016
      Cross Border Copyright Enforcement Involving Chinese Companies, Orange County Intellectual Property Law Association
    • March 27, 2015
      Risky Business: Pitfalls in IP Holding Companies, American Bar Association 30th Annual Intellectual Property Law Conference
    • January 22, 2014
      How to In-License, Acquire, and Integrate Intellectual Property Assets to Maximize and Preserve Value, Jones Day University
    • December 11, 2013
      Protecting Intellectual Property Rights by Enforcing Patent Rights Abroad and Understanding the Impact of Judicial Determinations by Foreign Courts, panelist, ACI Advanced Forum on Patent Litigation
    • November 19, 2013
      Developing and Maintaining Healthy Relationships with Practitioner Inventors, panelist, ACI Medical Device Agreements Conference
    • October 24, 2013
      Seeking a Stay of Litigation Pending Inter Partes Review When Dealing with Cost-Sensitive and Skeptical Clients, panelist, Judge Paul R. Michel Intellectual Property American Inn of Court
    • October 24, 2013
      Trademark Bootcamp: Panelist: Recent Developments in 9th Circuit Lanham Act Law, LAIPLA Event
    • November 13, 2012
      Legal Trends and Pitfalls in Medical Device Licenses, ACI Medical Device Licensing Conference
    • February 29, 2012
      Active Inducement and Joint Infringement in Medical Device and Method Cases; Developments in the Law, ACI Medical Device Patent Litigation
    • January 26, 2012
      Maximizing Intellectual Property Value Through Litigation and Licensing Strategies: The Effect of Licensing on Injunctive Relief, Jones Day University
    • June 9, 2011
      Copyright Fundamentals, Intellectual Property Professionals ConnectionSM
    • February 25, 2011
      Judicial Treatment of Non-Practicing Entities and Its Impact on the Secondary Market for Patents, moderator, LAIPLA Event
    • January 31-February 1, 2011
      Positioning Your Case for Success - Early Case Strategies and Tactical Considerations, Faculty Panel, ACI Advanced Medical Device Patent Litigation
    • January 27, 2011
      Recent Developments in Trade Secret Misappropriation Litigation, Jones Day University
    • September 28, 2010
      Medical Diagnostic Method Patents in Light of Bilski v. Kappos -- Challenges and Opportunities, Q1 Pharmaceutical Patent Protection and Enforcement Conference
    • January 29, 2009
      Design Patent and Trade Dress Infringement -- A Litigation Perspective, Jones Day University
    • May 8, 2007
      Secondary Liability for Trademark and Copyright Infringement, Jones Day IP Speakers MCLE Seminar
    • April 30, 2007
      IP Tax Problems and Protection, Annual Meeting of the International Trademark Association (INTA)
    • January 25, 2007
      Intellectual Property Holding Companies: IP and Tax Considerations, Jones Day MCLE University
    • October 2006
      Fox News Broadcast - Pro Bono Recognition for Web Domain Name Dispute
    • March 7, 2006
      Criminal Aspects of IP Violations: When Trademark Infringement is Just the Beginning, Jones Day IP Speakers MCLE Series
    • January 2006
      Patent Reform Act of 2005, Jones Day MCLE University
    • March 21, 2005
      Handling the IP Litigation Emergency, Jones Day IP Speakers MCLE Seminar
    • April 18, 2004
      Intellectual Property and Tax Law: Aspects of International Corporate Restructuring, Jones Day Annual Tax Lawyers Meeting
    • April 6, 2004
      Industrial Design Rights: Protecting Product Configurations Around the World, Jones Day IP Speakers MCLE Series
    • March 15, 2004
      International Anti-Counterfeiting Strategies: A Short Overview, Jones Day IP Speakers MCLE Series
    • March 8, 2004
      Developing a Strategic IP Technology Management Program, Practising Law Institute Faculty Lecture
    • February 25, 2004
      Developing a Strategic IP Technology Management Program, Taiwan Semiconductor Industry Association at the Industrial Technology Research Institute
    • October 3, 2003
      Festo: The Federal Circuit Court of Appeals en banc Decision on Remand, National Taiwan University College of Law IP Seminar
    • October 1, 2003
      Patent Prosecution Strategies for the Taiwanese Company, Taiwan Electrical and Electronic Manufacturer’s Association and Economic Daily Symposium
    • September 30, 2003
      Patent Prosecution Strategies for the Taiwanese Company, Taiwan Electrical and Electronic Manufacturer’s Association and Economic Daily Symposium
    • February 19, 2003
      E- Discovery: What You Need to Know and Do Now to Avoid Costly Surprises, American Corporate Counsel Association (ACCA)
    • March 21, 2002
      Preserving and Protecting Intellectual Property, University of Arkansas Medical Center
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