We Have a New Team Member. Meet Jim O’Brien, Lawyer in Business/Corporate, IP, Estates and Trusts Matters

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Jim O'Brien - Business/Corporate, IP, Estates and Trusts Lawyer - Baltimore, MD

Jim O’Brien

We are pleased to welcome a new colleague. James Patrick O’Brien has joined Goodell DeVries as an associate. Jim practices in our Business and Corporate Law, Intellectual Property, and Commercial and Business Tort Litigation groups.

He represents clients involving corporate governance, business transactions, intellectual property protection and management, and commercial disputes. Jim also handles estates and trusts matters, creating personalized estate plans for individuals and families as well as guiding fiduciaries through the estate administration process after a loved one passes away. Continue reading →

Intellectual Property Lawyer Kaitlin Corey Scores Win in WIPO Trademark Proceeding

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Kaitlin Corey - Business and intellectual property lawyer at Goodell DeVries

Kaitlin Corey – Business and intellectual property lawyer at Goodell DeVries

Intellectual property lawyer Kaitlin Corey recently secured a win for her client, a process serving company, in an administrative panel decision in the WIPO (World Intellectual Property Organization) Arbitration and Mediation Center. The complaint, which was filed by a competing process serving company, alleged that the client’s use of a particular domain name for its website infringed the complainant’s federally registered trademark.

In her WIPO response, Kaitlin established that the complainant’s federally registered trademark is merely descriptive, and the complainant failed to prove secondary meaning to establish a protectable mark. The Panelist also found that the complainant brought its WIPO complaint in bad faith, finding that its attempt to transfer the domain name was an attempt at “Reverse Domain Name Hijacking.”

This case serves as a worthwhile lesson to business owners to choose protectable trademarks and steer clear of descriptive marks.

Jim Astrachan Named Baltimore Lawyer of the Year for Intellectual Property Litigation

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Jim Astrachan - Intellectual Property Lawyer

Jim Astrachan

Congratulations to our partner, Jim Astrachan, on being named the 2025 Baltimore Lawyer of the Year in Intellectual Property Litigation by Best Lawyers.

The Best Lawyers Lawyer of the Year honors are awarded to only one lawyer per practice area in each region with extremely high overall feedback from their peers, making it an exceptional distinction. Continue reading →

Should I Register My Mark? Yes!

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Should I Register My Trademark? YesA pal and I walked across the parking lot at the Maryland State Bar Association conference last month looking for a lunch joint; the topic of our conversation was whether and why copyright and trademark registrations are necessary and beneficial.

My bud correctly pointed out that a trademark acquires common law rights as soon as it is used on goods or services, and a copyright exists as soon as the work is fixed in a tangible medium of expression. The bulb over my head lit up; my June column was born. I offered to buy him an adult beverage, or two, for the idea.

“You’re correct,” I said. “Both copyrights and trademarks exist without registration, but registration of both confers substantial and valuable rights.”

Continue reading →

Intellectual Property Lawyers Jim Astrachan and Donna Thomas Recognized in Chambers 2024

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Congratulations to Jim Astrachan and Donna Thomas, who were recognized in the 2024 edition of Chambers, a leading ranking of the world’s top lawyers. Both were selected for the Maryland Intellectual Property category.

Jim and Donna are ranked in Chambers every year, which is a testament to the stellar reputation their IP practice has earned (and held) for decades.

Jim Astrachan - Intellectual Property Lawyer

Jim Astrachan

Donna Thomas - Baltimore Intellectual Property Lawyer

Donna Thomas

 

US Supreme Court Opens Door for Once-barred Copyright Claims

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US Supreme Court Opens Door for Once-barred Copyright ClaimsEarlier this month the U.S. Supreme Court answered the question of when a copyright plaintiff must file an infringement claim or be barred from suing by statute of limitations. The case was Warner Chappell v. Nealy Music, Inc.

The controversy arose because the U.S. Circuit Courts of Appeal were in disagreement whether limitations under 17 U.S.C. Section 507(b) required that suit be filed within three years of the infringing event or whether a plaintiff could sue when it discovered, or should have discovered, the infringement even though beyond the three-year limit for suit. Continue reading →

Your Voice is Your Identity

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In 1992, a jury awarded the singer Tom Waits the equivalent of $6 million in today’s dollars because Frito-Lay used a voice-alike in its Doritos ad and misappropriated his right to publicity. Bette Midler, Shirley Booth, and Bert Lahr also sued advertisers who used their voice-alikes in ads.

The reason for the lawsuits is that a distinctive voice is a recognizable component of a person’s identity, and the use of a person’s identity without consent to sell goods violates their right of publicity. With new technology, there will be many new incidents.

Continue reading →

A Company’s Website and Copyright Issues

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It happens way too often. A website owner or employee innocently downloads to their website a photograph or some other work to illustrate or explain some aspect of the owner’s business. Or, its use may be intended to draw more viewers to the website.

The work may be a news photo, an illustration or an article. Use may be as innocent as finding and downloading a photo of the city’s skyline just to emphasize the business is local. One picture, they say, is worth a thousand words.

Then a letter arrives, demanding that a work must be immediately taken down from the website. The letter further demands that the user pay compensation to the owner of the work for unauthorized use, claiming that use on the website is copyright infringement. The compensation demanded may be in low five figures per work infringed, sometimes more. Continue reading →