Richard M. Assmus

Clients look to Richard for his distinguished track record in dispute resolution, which includes trademark litigation in federal courts and before the US Trademark Trial and Appeal Board, software and data audit and licensing disputes, copyright litigation in federal courts and before the Copyright Royalty Board, and domain name litigation under the federal anticybersquatting act and the UDRP. He also has significant experience advising clients regarding trademark availability; procurement and protection; trademark watch services including Internet enforcement strategies; copyright protection, registration and enforcement; and negotiating the purchase of domain names. Richard is proactive in his legal representation, helping clients anticipate contractual risks, protect trade secrets through confidentiality agreements, evaluate advertisements for potential liability for false or misleading representations, and prepare effective licensing and other technology transfer agreements.

Litigation Experience

Represented:

• Beam Suntory in the successful opposition to the trademark BOWMAKERS, which was alleged to infringe the iconic Maker’s Mark bourbon brand.
• Spotify in a proceeding to determine the royalty rates for streaming of musical compositions. This proceeding determined the royalty rate to be paid by all interactive music services, including Spotify, for the mechanical license fees to be paid to music publishers. Determination of Rates and Terms for Making and Distributing Phonorecords. Docket No. 16-CRB-0003-PR (2018-2022) (CRB).
• Modern Luxury Media in an action for trademark infringement, trademark dilution and unfair competition against Celebrity Cruises. Modern Luxury alleged infringement of its MODERN LUXURY trademark based on Celebrity Cruises’ use of an identical mark in advertising and marketing, as well as Celebrity Cruises’ application to register a trademark in THAT’S MODERN LUXURY. After extensive litigation, the case settled on terms favorable to Modern Luxury. (DM Luxury, LLC v. Celebrity Cruises, Inc. (USDC NDIL)).
• Nestlé and Kellogg's in a patent case involving a university patent for a fat composition allegedly suitable for promoting cholesterol health. Won a series of Daubert motions to exclude Plaintiffs' expert testimony on damages and liability. (Brandeis Univ. v. Keebler Co. (N.D. Ill.)) (2013).
• Nestlé in a patent infringement matter involving a fat composition allegedly suitable for promoting cholesterol health. Obtained a favorable claim construction ruling from Judge Richard Posner (sitting by designation), which led to a stipulation of non-infringement. (Brandeis Univ. v. Nestlé USA (N.D. Ill.) (2012).
• Pet food manufacturer in the dismissal of a patent infringement claim. (Reported at 767 F. Supp. 2d 806 (E.D. Mich. 2011))
• Tool manufacturer in the successful defense and settlement of a false marking case brought under Section 292 of the Patent Act. (E.D. Texas 2010).
• Trade association in the design and implementation of a nationwide licensing program. (2008 - present).
• Infrastructure fund in the global settlement of a trademark opposition matter. (2010).
• The United States Golf Association in a trademark infringement and unfair competition case. The court entered a default judgment and issued a permanent injunction. (Reported at 2010 WL 323203 (D.N.J. 2010)).
• Consumer electronic reseller is seeking indemnity from suppliers in connection with patent infringement action brought by an Acacia subsidiary. (N.D. Georgia 2009). 
• Hotel proprietor in a trademark infringement and cyberpiracy action against a provider of hotel management services. (N.D. Cal. 2009).
• Publisher of Spanish-language Yellow Pages directories against claims of copyright infringement, false advertising, monopolization and unfair competition. (N.D. Cal. 2009). 
• Tool manufacturer in declaratory judgment action seeking relief from demands from software provider related to use of legacy manufacturing management software (N.D. Ill. 2009).
• Leading collegiate athletic conference in the defense of a lawsuit alleging fraudulent procurement of a trademark registration. (Reported at 2008 WL 5070321 (N.D. Ill. Nov. 21, 2008)).
• Music publisher in rate-setting proceeding for the compulsory license under Section 115 of the Copyright Act. (Copyright Royalty Board 2008).
• Chemical company in trade secrets action related to purloined customer sales data. (Ill. Circuit Court 2007).
• Leading collegiate athletic conference in the defense of a breach of contract matter, including counterclaims for trademark infringement and dilution. (S.D. Ohio 2005). 
• Getty Images in copyright infringement litigation and breach of contract case brought by an individual photographer. Getty won summary judgment and was awarded fees. (Reported at 255 F. Supp. 2d 838 (N.D. Ill. 2003) (summary judgment) and 2003 WL 22048059 (N.D. Ill.) (fee award)).
• Internet travel company in the defense of a trade secrets action related to an allegedly poached employee. (Ill. Circuit Court 2003).
• Study-abroad program in the successful recovery of domain name under the UDRP. (National Arbitration Forum 2000).