Eric J. von Vorys is a Shareholder and Chair of the firm’s Intellectual Property practice group. He specializes in trademark and unfair competition law, copyrights, domain names and related litigation. Clients hire Mr. von Vorys because he helps them protect their brands by developing strategies that proactively minimize their competitors' ability to challenge their trademarks in court.
Mr. von Vorys' clients also benefit from his unique experience. In addition to serving clients for more than a decade, he has also served as an in-house lawyer in the private sector and worked within the federal court system. Based on this diverse background, his passion for IP law, and his experience successfully negotiating nearly a thousand trademark applications, Mr. von Vorys knows how to design highly-creative and effective approaches to trademark disputes.
His practice also includes a counseling component which covers the full range of IP-related issues, including transaction-related evaluation of intellectual property portfolios, clearance of marks, domain name dispute resolution, and negotiating and crafting of intellectual property agreements and licenses.
When necessary, he litigates trademark infringement and unfair competition cases. He has negotiated countless settlement agreements including many in U.S. District Court, as well as administrative proceedings before the U.S. Trademark Trial and Appeal Board and Domain Name Arbitration Panels.
In addition to trademark matters, Mr. von Vorys also represents both purchasers and suppliers of technology and technology-related services. For example, he has represented technology clients ranging from start-ups to established companies in the areas of computer software and services, e-commerce and the Internet-related issues. In this area, his practice includes preparation and review of software license agreements and end user licensing agreements; software development agreements; source code escrow agreements; and Internet-related agreements including website development and hosting agreements, website terms and conditions of use, privacy policies, web-linking and revenue sharing agreements.
Mr. von Vorys routinely represents direct marketers, advertisers, media and Internet companies in all aspects of their advertising and promotional marketing business. He assists clients in their marketing endeavors, including clearance of advertising and marketing materials, sweepstakes, games of skill, and other contests, direct marketing campaigns, Internet marketing, and privacy issues.
Prior to joining Shulman Rogers, Mr. von Vorys was counsel for an on-line legal resource provider and interned for Judge Charles R. Weiner at the U.S. District Court, Eastern District of Pennsylvania.
- Defended and successfully negotiated settlement of alleged copyright infringement claims in Masson v. The Niagara Artcraft Woodwork Co., Ltd., Civil Action No.: 1:13-cv-03824-GLR (D. Md. 2013)
- Successfully represented client whose company name was infringed by direct competitor in Planet Technologies, Inc. v. Planit Technology Group L.L.C., Case No. AW-10-149 (D. Md. 2010)
- Orchestrated settlement with Apple over its trademark infringement in Man & Machine, Inc. v. Apple, Inc., Civil Action No. 8:08-cv-2453 (D. Md. 2008)
- Won dismissal with prejudice for lack of jurisdiction on behalf of defendant in Florida Patrol Investigators, Inc., v. Mgmt. Info. Tech. Corp., Civil No. 08-15709 CC 05 (Miami Dade County Circuit Court 2008)
- Successfully defended local trademark owner against infringement action brought by nationwide storage company in Extra Space Storage, LLC v. Maisel-Hollins Dev. Co., Case No. RDB-07-cv-2531 (D. Md. 2007)
- Successfully defended small local business against lawsuit for trademark dilution brought by famous French nightclub) in Moulin Rouge S.A. v. Moulin Rouge Caterers, Inc., Case No.: 8:2007-cv-02482 (D. Md. 2007)
- Won copyright infringement case against Delaware home builder for building homes identical to our client’s copyrighted plans in Anderson Homes, LLC, v. Delta Acquisitions And Dev., LLC, Case No. 1:2005cv00864 (D. Del. 2005)
- Successfully represented trademark owner in federal court action against accused trademark infringer in Lievan v. Dryclean Direct, LLC, Case No. RDB03-cv-1623 (D. Md. 2003)
- Won federal lawsuit against recalcitrant trademark infringer in Craftmark Homes, Inc. v. Craftmark Homes Corporation, Case No. CIV-02-1578-HE (W.D. Okla. 2002)
IP-related Transactional Matters
- Managed intellectual property portfolio for multi-national corporation
- Oversaw trademarks, copyrights and domain names being transferred as part of $22 million asset purchase involving publishing company
- Reviewed and revised master software services agreement covering $1.8 million SaaS services
Advertising & Marketing Matters
- Drafted rules and associated releases in connection with nationwide online sweepstakes
- Counseled clients respecting Federal Trade Commission’s rules and regulations respecting truth in advertising
Professional & Community Affiliations
- American Bar Association, Member
- Bar Association of Montgomery County, Member, Intellectual Property and Technology Law Section