Robert A. Weikert

My focus

My practice, which covers both defense and enforcement work, is primarily devoted to trademark, trade dress and copyright infringement matters as well as misappropriation of trade secrets and unfair competition disputes. I also handle complex commercial suits, including general business disputes, licensing and technology transfer conflicts, and Internet-related issues.

Trademark and Trade Dress

On the trademark front, I have represented parties in a wide range of industries, from toy manufacturers to hardware and software companies to consumer and corporate goods retailers. Apart from the typical infringement counts, many of these matters have involved complex and technical areas of trademark law, including Tariff Act and gray market issues as well as trademark abandonment claims.

Trade Secrets

I have evaluated and handled a variety of trade secret theft cases, a number of which arose in connection with employment agreements and noncompetition provisions. Recent matters include the representation of an inventor in an idea theft/inventorship dispute, and customer list misappropriation matters for a major online wine retailer, a manufacturer of scientific testing equipment, and several software companies.

Copyrights

With respect to copyrights, I provide strategic advice on scope, registration and enforcement matters, and also handle infringement litigation. Current clients include an international upholstery manufacturer, restaurant franchisors and software developers, and several mobile/video game developers.

Internet, Website and Social Media Matters

I advise clients on a host of Internet and website issues, including with respect to domain name and social media-related conflicts as well as website development, appearance and operation disputes.   

Representative experience

• Represented video game developers and publishers Stardock Entertainment and Valve Corporation in a trademark and copyright infringement dispute involving Star Control: Origins, an action-adventure video game. The matter settled. Stardock Systems, Inc. v. Paul Reiche III, et al. (N.D. Calif.)
• Defense of trademark abandonment action involving major U.S. grocery store chains; reported decision: Grocery Outlet Inc. v. Albertson’s Inc., 497 F.3d 949 (9th Cir. 2007) and 2008 U.S. Dist. LEXIS 101999 (N.D. Cal. 2008) (affirming preliminary injunction order).
• Prosecution of trademark infringement action involving Internet domain name; preliminary injunction affirmed on appeal.
• Defense of trademark infringement and unfair competition action involving sales representation services.
• Defense of major aggregate producer in Sherman and Cartwright Act class action antitrust litigation (i.e., price fixing, monopolization, bid rigging, market allocation).
• Representation of clients in a number of government antitrust investigations (civil and criminal).
• Prosecution of trademark infringement and Tariff Act suit against seller of gray market semiconductors; defense of antitrust counterclaim.
• Defense of start-up network software company in declaratory relief action; prosecution of counterclaim and cross-claim for misappropriation of trade secrets and copyright infringement.
• Defense of Canadian-based owner of drug store chain in action for unfair competition.
• Prosecution, on behalf of major publisher of science-related periodicals, of copyright infringement action against information gathering service.
• Assist in prosecution of patent infringement action involving token ring technology.
• Assist in defense of major pharmaceutical company charged in a number of actions with patent infringement, breach of contract, antitrust claims, etc., involving recombinant DNA technology used in the production of insulin and human growth hormones.
• Prosecution, on behalf of major international hotel company, of suits for trademark infringement, unfair competition, etc.
• Defense of international toy manufacturers charged with trade dress infringement, unfair competition, etc.
• Defense of major outdoor equipment manufacturer in suit for unfair competition.
• Prosecution of patent infringement suit involving manufacture of silicon wafers; defense of counterclaim for unfair competition.

Looking ahead

Advances in technology are continuing to create new forms of intellectual property, as well as changing the landscape for “traditional IP.” Effective practitioners need to stay in front of these developments to understand how existing law applies and where new law needs to be made.

Insights

• “The Ninth Circuit Clarifies the Murky Law of Copyright Preemption,” BNA Patent, Trademark & Copyright Journal, August 26, 2011 (Co-authored with John A. Chatowski)
• “Ninth Circuit Clarifies Jurisdiction Rules in Intellectual Property Cases Brought Against Out-of-state Companies Operating on the Internet,” Nixon Peabody Intellectual Property Alert,  August 16, 2011 (Co-authored with John A. Chatowski)
• “Case Study: Starbucks v. Wolfe’s Borough Coffee,” Law 360, December 2009 (Co-authored with John A. Chatowski)