© Teresa Comozzi

CopyrightDirection, The Law Office of Roy S. Gordet, was established in 1994 in San Francisco. From its inception, the firm has specialized in litigation and counseling in the fields of artists’ rights, copyrights, trademarks, rights of privacy and advertising law.  The firm has worked with hundreds of clients to safeguard or enforce their intellectual property rights.  More recently, the Firm has developed a specialized niche in the intersection of copyright law with estate planning law, working with estate planning and probate attorneys who have clients with important copyright assets, or clients who are the statutory heirs of authors, musicians and others who have created valuable works protectable under the copyright laws.

Accomplishments on Behalf of Clients

Some of the Firm’s more notable legal accomplishments over the past few years are the following:

• settled a Federal Court litigation for a client for a fraction of the amount of money sought by Corbis Corporation (an affiliate of Microsoft) in a copyright lawsuit involving rights in a photograph of Timothy Leary
• successfully negotiated across from in-house counsel for a major US retailer on behalf of an architecture firm client an intellectual property rights agreement that preserved important copyright rights for the client
• reached a favorable out-of-court settlement on behalf of a client who had been sued in Federal District Court for rights of publicity violations by the owners of merchandising rights for the bands Led Zeppelin and Depeche Mode
• matched against one of California’s largest law firms, obtained a summary judgment in Federal District Court dismissing a trademark lawsuit brought against the Firm’s client by a multi-national corporation claiming to own one of Latin America’s most famous brands-  the litigation eventually resulted in a favorable settlement for the client
• successfully negotiated an out-of-court settlement with AutoDesk on behalf of an     architectural client on the East Coast who had been accused of software piracy
• successfully registered as a certification mark the name of a breed of a dog, which had apparently never before been accomplished at the U.S. Trademark Office, which flowed from a dispute between a dog owners’ association that needed to force a “rogue” breeder from not following the associations’ strict guidelines on the breed’s standard
• a Federal Court lawsuit was settled on terms favorable to the dog owners’ association –  as lead defense counsel, settled a lawsuit that was pending for almost one year without any monetary payment where the plaintiff Shaklee Corporation, represented by one of the West Coast’s largest full service firms, sought to force the client to stop using some nine of its marks
• successfully registered for a well-known restaurant client a term that the Trademark Office had deemed “merely descriptive” and that previous counsel had not been able to register for the client
• won a dismissal on a motion  for summary judgment before the Trademark Trial & Appeal Board in a trademark opposition proceeding brought by Red Hat Software Corporation, a public company based in North Carolina
• on behalf of a client in the music poster industry, obtained a successful decision in an ICAAN domain name arbitration that permitted the client to maintain ownership of a domain name, despite the fact that plaintiffs usually prevail in such ICAAN arbitrations in the vast majority of such cases
• prepared and finalized a software development agreement for a prominent Bay Area marketing incentive company
• succeeded in gaining access for a journalist seeking documents filed under seal in  a copyright class action in the Federal District Court for the Northern District of California on the eve of trial in the Federal District Court in Chicago, by finding a major evidentiary problem with the chain of title related to the ownership of the copyright, persuaded the plaintiff to dismiss the copyright infringement lawsuit with no payment from the Firm’s client, an adult film distributor

Published Cases of Interest

In re Rath, 402 F.3d 1207 (Court of Appeals for Federal Circuit 2005)

Jarritos, Inc. v. Los Jarritos, 2007 WL1302506 (N.D. Cal. May 2, 2007); 2007 U.S. Dist. LEXIS 32245 LEXIS 32245), reversed in part, affirmed in part, and remanded, 345 Fed.   Appx. 215 (9th Cir. 2009)

American Pioneer Tours, Inc. v. Suntrek Tours, Ltd and Suntrek Tours, Inc., 46 U.S.P.Q. 2d 1779 (1998) / 1998 U.S. Dist. LEXIS 1527, Southern District of New York

Red Hat, Inc. v. CMC Magnetics Corp. Ltd., 2000 TTAB LEXIS 767, Trademark Trial and Appeal Board

Jackson v. Sturkie, 255 F. Supp. 2d 1096 (N.D. Cal. 2003)