Eric von Vorys helps clients develop strategies that protect their brands and proactively minimize their competitors’ ability to challenge their intellectual property rights in court.
Eric specializes in trademark and unfair competition law, copyrights, domain names and related litigation. His practice also includes a counseling component covering 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 drafting of intellectual property agreements and licenses.
He prefers to seek amicable resolutions to intellectual property disputes by negotiating settlements, but, Eric litigates trademark infringement and unfair competition cases when necessary. He 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.
In addition to trademark matters, Eric also helps both purchasers and suppliers of technology and technology-related services with matters including 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 also has extensive experience in traditional entertainment law and 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 and modeling agreements.
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.
Results
Trademark Litigation
- 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
Technology-related Matters
- 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
Alcohol and Liquor Licensing
- Assisted national hotel developer in getting its Maryland liquor license at its new location in Montgomery County. Due to a family conflict, the developer requested that he be allowed to testify at the license hearing remotely using Facetime. While the Montgomery County Liquor Board typically did not allow remote testimony, we petitioned for such, the request was granted and our client testified at the hearing from New York.
- Secured the liquor license for national restaurant chain’s franchise in Leesburg, VA. With no online application process, the original paper applications had to be filed in person, and then approved by both Loudon County and the City of Leesburg. We exceeded the client’s expectations by meeting their tight deadline and they were able to open the restaurant on schedule
- Assisted Maryland brewery in getting its federal and state liquor licenses.
