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Morrison Foerster’s Trademark Group Recognized in WTR 1000 2024

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Morrison Foerster’s Trademark Group has been recognized in the 2024 edition of World Trademark Review’s WTR 1000 guide. MoFo was included in the California rankings in both the Enforcement and Litigation category and the Prosecution and Strategy category. In addition, Morrison Foerster’s lawyers received five individual recognitions in this year’s edition.

We are Morrison Foerster — a global firm of exceptional credentials. Our clients include some of the largest financial institutions, investment banks, and Fortune 100, technology, and life sciences companies. Our lawyers are committed to achieving innovative and business-minded results for our clients, while preserving the differences that make us stronger.Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations. Prior results do not guarantee a similar outcome.

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Morrison Foerster’s Trademark Group has been recognized in the 2024 edition of World Trademark Review’s WTR 1000 guide. MoFo was included in the California rankings in both the Enforcement and Litigation category and the Prosecution and Strategy category. In addition, Morrison Foerster’s lawyers received five individual recognitions in this year’s edition.According to WTR 1000, clients reported that MoFo’s Trademark team is “very experienced and always knows what to do and what strategy to take and how to execute on that strategy effectively. They come with the resources and headcount needed to win. They are collaborative and their team engages in open discussion before deciding on a course of action, which ensures that the best path is identified.” Clients also stated that MoFo has “the best trial team in the world for defending IP infringement claims that an online intermediary may face under US law.”MoFo lawyers achieved individual recognition in the following categories:<ul><li dir="ltr">Joyce Liou, Partner, San Francisco – Prosecution and Strategy; Enforcement and Litigation</li><li dir="ltr">Allyson R. Bennett, Partner, Los Angeles – Enforcement and Litigation</li><li dir="ltr">Joseph C. Gratz, Partner, San Francisco – Enforcement and Litigation</li><li dir="ltr">Steven James, Partner, London – Trademark</li></ul>Morrison Foerster’s Trademark Group is a one-stop practice for guarding valuable business assets. From prosecution and counseling to enforcement and litigation – the team knows trademarks. They offer extensive experience as trademark prosecutors and litigators and are highly skilled in advising clients on strategic trademark protection as well as defending their trademark rights when infringement issues arise.To view the complete editorial of Morrison Foerster’s rankings in the new edition of WTR 1000, please visit the publication’s<a href="https://www.worldtrademarkreview.com/rankings/wtr-1000/profile/firm/morrison-foerster-llp" target="_blank"> website</a>.

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Joyce Liou co-chairs the Trademark Group and is a partner in the firm’s Intellectual Property Group. She engages in a broad intellectual property practice, with an emphasis on both IP counseling and litigation for a diverse roster of clients. Joyce has litigated numerous district court disputes involving trademark, copyright, false advertising, right of publicity, and unfair competition claims, and has secured preliminary injunctions, summary judgment rulings, and trial verdicts for her clients. In addition to federal litigation, she routinely handles proceedings before the Trademark Trial and Appeal Board, and has extensive experience with trademark clearance, prosecution, licensing, and due diligence. Joyce manages IP portfolios and provides global strategies for industry giants and startups alike, from a broad spectrum of fields, including technology, consumer goods, entertainment, pharmaceuticals, food, and agriculture.Joyce’s successes have built her reputation as a recognized leader in trademark law. In 2022 and 2023, she was shortlisted for Trademark Lawyer of the Year by Euromoney Legal Media. Joyce serves on the Legislation and Regulation Committee for the International Trademark Association. Outside of her practice, Joyce is a passionate advocate for diversity and inclusion in the greater community. She serves on the Development Committee for the National Center for Lesbian Rights, and participates in clinics to help individuals seeking U.S. naturalization or asylum on the basis of their sexual orientation or gender identity.Joyce received her J.D. cum laude from the University of Michigan Law School in 2010. While attending law school, she externed for the Honorable William H. Alsup of the U.S. District Court for the Northern District of California. She received her B.A. in economics and political science with distinction from the University of California, Berkeley in 2007.

Joyce Liou

Partner

Clients turn to Joe Gratz to handle trailblazing litigation where copyright and trademark law meet new technologies. An experienced litigator, Joe draws on his strong technical background to distill complex issues into simple, accurate concepts for judges, juries, and clients. Joe’s cases have set key precedents in Internet law, from the Google Books case that laid the groundwork for today’s generative AI innovations to key cases establishing the boundaries of intermediary liability. In addition to representing their interests in the courtroom, Joe helps his clients navigate their thorniest product counseling puzzles to reduce the risk of litigation.His appellate victory in Long v. Facebook set the standard for platforms in carrying out DMCA removals of user-generated content. And Joe’s win in Stevens v. CoreLogic established limitations on DMCA 1202 claims that have since been adopted by numerous other courts. His amicus brief on behalf of independent booksellers was cited by the Supreme Court in its opinion in Wiley v. Kirtsaeng, and he has submitted amicus briefs in other copyright cases on behalf of Center for Democracy & Technology (in Oracle v. Google) and on behalf of art law professors (in Warhol v. Goldsmith).A recognized commentator on copyright and internet law, Joe was selected as an advisor for the American Law Institute’s project to develop a Restatement of Copyright, and serves on the Advisory Board of the Electronic Frontier Foundation. He frequently speaks on emerging issues in Internet law and was called upon by the Senate Judiciary Committee in 2020 to testify about the interaction between the DMCA 512 safe harbor and fair use. Joe was the 2022 recipient of the California Lawyers Association’s IP Vanguard award, presented to one private practitioner each year for achievements at the forefront of emerging issues in intellectual property law.

Joseph Gratz

Steven James is a Partner based in the London office of Morrison Foerster. He specialises in intellectual property disputes, and advises on the protection and exploitation of intellectual property, as well as a wide range of commercial matters.Steven practices in intellectual property, technology, and commercial law, with a focus on new technologies and innovation. His experience includes advising clients on both contentious and transactional intellectual property and commercial matters, predominantly in the tech, financial services, life sciences, retail and luxury goods, food & beverage, and media sectors. He advises on the full spectrum of IP rights, including trade marks, passing off, copyright, designs, patents and confidential information. Steven counsels clients on the development of IP and branding strategies and formulates strategic approaches for the licensing and enforcement of intellectual property rights. He also has experience of advising on commercial disputes, defamation and data protection matters.Steven has been recommended for Intellectual Property law and Technology, Media & Telecommunications Law multiple times over many years in the Legal 500 UK. He is described by clients as “an efficient, effective and an excellent, timely communicator … always on hand to provide confident and practical advice. His deep and technical knowledge of IP is unparalleled”. Steven has also been named a Trade Mark Star by Managing Intellectual Property and as a recommended individual by IAM Patent 1000.He has been awarded a Distinction in Intellectual Property Law from the University of Oxford. Steven has conducted matters before the U.K. Intellectual Property Office, the EU Intellectual Property Office, the Intellectual Property Enterprise Court, the High Court and Court of Appeal, and the Court of Justice of the European Union. Steven is a Solicitor-Advocate with rights of audience in all civil proceedings in the higher courts of England and Wales.<h4>Representative Experience</h4><ul><li>Representing Wirex Limited, one of the world’s leading cryptocurrency platforms, in its successful trade mark infringement claim and damages inquiry against Cryptocarbon Global Ltd & Others (Wirex Limited v. Cryptocarbon Global Ltd & Others ([2021] EWHC 617 (IPEC) and [2022] EWHC 1161).</li><li>Novaerus Patents Limited v Quest International (UK) Limited [2016] EWHC 95 (Ch): Represented medical technology provider Novaerus in a summary judgment claim in a complex contractual dispute about the sale of various patents and subsequent cross-licensing.</li><li>Advising World-Leading COVID Rapid Test Provider Excalibur Healthcare Services on a ground-breaking Licence and Development Agreement with Sensyne Health in respect of the use of Excalibur’s lateral flow diagnostic tests with Sensyne Health’s clinical AI software, ‘MagnifEye’.</li><li>Acting for an electrical wholesaler in relation to a passing off claim against a nationwide chain. </li><li>Acting for a software development company on a High Court Technology & Construction Court dispute with a global retail bank.</li><li>Acting for the acquirers of the iconic Crombie coat brand, and advising on its global IP portfolio.</li><li>Acting for an electrical wholesaler on a passing off action against a listed building merchants’ business.</li><li>Acting for an online fashion retail platform in respect of parallel trade mark infringement proceedings in the U.K. and United States.</li><li>Interflora Inc v Marks & Spencer plc (Case C-323/09): Acting for Interflora on a high profile trade mark infringement case relating to the use of keywords on Google’s AdWords program, which was referred to the Court of Justice of the European Union.</li><li>Orion Publishing Group Ltd v Novel Entertainment Ltd [2012] EWHC 1951 (Ch): Acting for a major commercial publisher in relation to a dispute over a royalty verification clause in a publishing agreement.</li></ul>

Steven James

Trademark