Clients hire Eric von Vorys because he helps them develop strategies that protect their brands and proactively minimize their competitors' ability to challenge their trademarks in court.
Eric specializes in trademark and unfair competition law, copyrights, domain names and related litigation. 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.
In addition to working with clients in the law firm environment for more than a decade, Eric has also served as an in-house lawyer in the private sector and worked within the federal court system. Blending this diverse background, his passion for IP law, and his experience successfully negotiating over a thousand trademark applications, he is adept at designing highly-creative and effective approaches to trademark disputes to the benefit of his clients.
When necessary, Eric litigates trademark infringement and unfair competition cases. Eric has represented clients before the U.S. District Courts, as well as administrative proceedings before the U.S. Trademark Trial and Appeal Board and Domain Name Arbitration Panels. But, he prefers to seek amicable resolutions to intellectual property disputes by negotiating settlements.
In addition to trademark matters, Eric also represents both purchasers and suppliers of technology and technology-related services. Clients range from start-ups to established companies in the areas of computer software and services, e-commerce and Internet-related issues. In this arena, his practice includes preparation and review of software license agreements, software development agreements, source code escrow agreements, and Internet-related agreements including SaaS agreements, website development and hosting agreements, website terms and conditions of use, privacy policies, web-linking and revenue sharing agreements.
Eric 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.
Another aspect of Eric’s practice is assisting clients in securing the necessary licenses to distribute or serve alcoholic beverages. This encompasses basic alcohol permits from the U.S. Alcohol and Tobacco Tax and Trade Bureau (TTB), liquor licenses from Maryland, Virginia and D.C., and where required, certain county licenses. He recently assisted a resort outside Richmond, a new wine importer and hotel in Montgomery County, MD to secure their liquor licenses.
Furthermore, Eric has extensive experience in traditional entertainment law. He has represented both corporations and artists in the negotiation of music recording, publishing, production and licensing agreements, streaming and download agreements, television and film production agreements, as well as modeling agreements.
- 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)
- 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
- Eric von Vorys published in Financier Worldwide: The four most important things to do to protect your intellectual property
- Eric von Vorys weighs in on the Redskin's great name debate.
Professional & Community Affiliations
- American Bar Association, Member
- Bar Association of Montgomery County, Member, Intellectual Property and Technology Law Section