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Partner Litigation & Intellectual Property Practice
Richmond (804) 788-8331 Phone (804) 788-8218 Fax
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Practices |
Advertising & Consumer Law Copyright Intellectual Property Internet & E-Commerce Litigation Trademarks
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Partner in Hunton & Williams' Litigation & Intellectual Property Practice. Practice focuses on intellectual property and technology litigation, counseling, and prosecution, with emphasis on trademark, trade dress, copyright, domain name, and technology litigation and dispute resolution; intellectual property audits and policies; clearance, registration and management of intellectual property assets; and intellectual property and technology licenses, transfers, and agreements.
Relevant Experience
- Represented numerous plaintiffs and defendants successfully in litigation, alternative dispute resolution, and administrative proceedings relating to trademarks, trade dress, copyrights, and technology licenses and agreements.
- Represented Fortune 100 company in multiple federal lawsuits to enforce its trademark, trade dress, copyright, and design patent rights, obtaining preliminary injunctions and favorable settlements.
- Defended Fortune 100 consumer products company against federal and state trademark infringement and dilution claims asserted by competitor, obtaining summary judgment on all claims.
- Represented national lawn care products company in federal lawsuits in various jurisdictions to protect its trademark, trade dress, and copyright rights, and to protect against deceptive competitor advertising, obtaining preliminary injunctions and favorable settlements.
- Represented software developers, consumer products retailers, and other companies in intellectual property, domain name, and advertising disputes in federal courts, state courts, alternative dispute resolution, mediation, and ICANN proceedings.
- Conducted intellectual property and Web site audits and developed intellectual property policies for numerous companies.
- Assisted numerous companies in the clearance, registration and maintenance of trademarks in the United States and worldwide.
- Assisted Fortune 250 financial services company in clearing and registering new corporate name and service mark in the United States and worldwide.
- Assisted large energy company in trademark maintenance, disputes, and name change.
- Assisted international charity in global name change, including worldwide clearance, registration, and licensing.
- Developed and negotiated intellectual property and technology licenses and agreements for numerous owners and users of intellectual property and technology, including software licenses, outsourcing agreements, employee and independent contractor agreements, e-commerce agreements, Web site development and linking agreements, and other Internet agreements.
- Reviewed proposed advertising, promotional, and sweepstakes materials for consumer products companies, Internet companies, advertising agencies, and professional sports leagues.
Selected Reported Cases - Circuit City Stores, Inc. v. Speedy Car-X, Inc., 35 U.S.P.Q.2d 1703 (E.D. Va. 1995). After bench trial, obtained dismissal of Circuit City's action for declaratory judgment that its CARMAX mark did not infringe Speedy's CAR-X mark on ground that Circuit City failed to establish case or controversy.
- Playtex Products, Inc. v. Georgia-Pacific Corp., 67 U.S.P.Q.2d 1923 (S.D.N.Y. 2003), aff'd, 390 F.3d 158 (2d Cir. 2004). Obtained summary judgment for Georgia-Pacific on all of Playtex's federal and state claims - Georgia-Pacific's QUILTED NORTHERN MOIST-ONES mark did not infringe or dilute Playtex's WET ONES mark.
- Takeall v. Pepsico, Inc., 809 F. Supp. 19 (D. Md. 1992), aff'd, 14 F.3d 596 (4th Cir. 1993), cert. denied, 512 U.S. 1236 (1994). Obtained summary judgment for Pepsico on plaintiff's copyright claims related to Diet Pepsi commercials featuring Ray Charles and "You got the right one, Baby, uh-huh!" slogan.
- Westvaco Corp. v. International Paper Co., 31 U.S.P.Q.2d 1798 (E.D. Va. 1994). On remand from court of appeals, defeated International Paper's motion for attorney's fees in patent infringement case.
Background
- Judicial Clerkship, Hon. James R. Spencer, U.S. District Court, Eastern District of Virginia, 1989–90
- Teacher, English and Religion, Benedictine High School, Richmond, Virginia, 1985–86
Membership
- Member, Virginia State Bar
- Member, American, Virginia and Richmond Bar Associations
- ABA Intellectual Property Law Section
- Permanent Member, Fourth Circuit Judicial Conference
- Member, International Trademark Association
- Various INTA committee memberships
- Past Member, Board of Directors, Virginia State Bar Intellectual Property Law Section
- President, Harvard Law School Association of Virginia
- Member, Merit Selection Panel, U.S. District Court, Eastern District of Virginia
Awards and Professional Recognition
Virginia’s Legal Elite, Intellectual Property Law, 2004, 2006, 2010 The Best Lawyers in America, Intellectual Property Law, 2007, 2008 Chambers USA’s America’s Leading Lawyers for Business, Intellectual Property Law, 2008
Education  - J.D., Harvard Law School, cum laude, 1989
- B.A., University of Virginia, Phi Beta Kappa, magna cum laude, English, 1985
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Stephen Demm
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