1701 Market St.//Philadelphia, PA 19103-2921//United States
J. Kevin Fee is the co-leader of the Trademark/ Copyright Litigation practice and focuses on high-stakes IP litigation before trial and appellate courts throughout the country. For example, Kevin was lead trial counsel for American Society of Testing Materials in a case that Law360 recognized as one of the “Top 10 Copyright Rulings of 2017,” and Kevin’s successful representation of Cornerstone Therapeutics in a false advertising case before the Second Circuit was featured in the National Law Journal’s 2014 IP Hot List.
In his trademark and false advertising practice, his clients include financial institutions, medical device and pharmaceutical companies, consumer products manufacturers, retailers, Internet companies, and food and beverage companies. He also represents major publishers, standards development organizations, financial institutions, insurance companies, and software developers in copyright litigation.
In patent litigation, Kevin represents medical device companies, financial services providers, computer manufacturers, software developers, and manufacturers of consumer products and chemicals.
Kevin is a member of the Trademark Litigation and Patent Litigation Committees of the Intellectual Property Owners Association and the Copyright Committee of the International Trademark Association.
Trademark and False Advertising Litigation
Strauss v. Angie’s list, Inc., 951 F.3d 1263 (10th Cir. 2020) (affirming district court’s dismissal of a false advertising class action lawsuit on the ground that the challenged statements were not “commercial advertising or promotion” under the Lanham Act).
Safety Equipment Institute v. Signature Lacrosse, LLC, 438 F. Supp. 3d 685 (E.D. Va. 2020) (denying motion to dismiss or transfer trademark infringement action and finding venue was proper in the district where the deceived customer purchased the defendant’s product in the belief that he is buying the plaintiff’s).
Rio Grande Food Products, Inc. v. Cyclone Enterprises, Inc., 2019 WL 3766376 (Aug. 9, 2019) (in gray market importation case, finding that Rio Grande Food Products was an exclusive distributor of Lido-branded products in the U.S. and that the products imported by the defendant were materially different from the Lido-branded products authorized for sale in the U.S.; one defendant settled shortly thereafter; the court entered a permanent injunction, disgorgement of profits, and recovery of attorney’s fees against the other defendant).
Carlin v. Bezos & Amazon.com, Inc. II, 17-1471 (E.D. Pa. Jan. 23, 2018) (granting summary judgment in favor of Bezos and Amazon.com in false advertising case based on res judicata and plaintiff’s lack of standing).
Shenzhen Tange Li’an E-Commerce Co. v. Amazon.com, Inc., 2:17-cv-7320 (E.D.N.Y. Dec. 27, 2017) (denying motion for temporary restraining order based on alleged infringement of plaintiff’s trademark on Amazon’s online marketplace; case voluntarily dismissed shortly thereafter).
Ocusoft, Inc. v. Walgreen Co., 2017 WL 1838106 (S.D. Tex. May 8, 2017) (denying motion for temporary restraining order in false advertising case because “the court agrees with Walgreens that there is no immediate threat of irreparable injury”).
American Society for Testing & Materials d/b/a ASTM International v. Public.Resource.Org Inc., 2017 WL 473822 (D.D.C. Feb. 2, 2017) (granting ASTM’s motion for summary judgment and for a permanent injunction and holding that defendant infringed ASTM’s trademarks when it placed ASTM’s marks on unauthorized electronic copies of ASTM’s standards that defendant posted online).
Corps Group, Inc. v. Afterburner, Inc., 779 S.E.2d 383 (Ga. Ct. App. Nov. 4, 2015) (obtained reversal of final judgment of trademark and trade dress infringement and vacation of permanent injunction that was entered after a trial handled by another law firm), reconsideration denied (Dec. 7, 2015), cert. denied (May 9, 2016).
ONY, Inc. v. Cornerstone Therapeutics, Inc., 720 F.3d 490 (2d Cir. 2013) (affirming dismissal of false advertising, defamation and related claims against pharmaceutical companies based on a peer-reviewed article concluding that the mortality rate associated with the plaintiff's product was 49.6% greater than the defendant's product because the relative effectiveness of the products should be resolved by scientific debate rather than false advertising or defamation litigation).
Diageo North America, Inc. v. Captain Russell Corp., Opp. No. 91203745 (Trademark Tr. & App. Bd. June 12, 2013) (granting Diageo’s motion for summary judgment and sustaining Diageo’s opposition to the applicant’s CAPTAIN RUSSELL mark based on Diageo’s CAPTAIN MORGAN and CAPTAIN marks).
Kraft Foods Global Brands LLC v. Brown, 2009 WL 3809811 (Trademark Tr. & App. Bd. Aug. 20, 2009) (granting Kraft's cross-motion for summary judgment, sustaining Kraft's opposition of applicant's KOOL mark for carbonated beverages basedon Kraft's KOOL-AID marks and finding that the KOOL-AID marks are famous and entitled to a broad scope of protection).
Jim Beam Brands Co. v. Diageo North America, Index 600122/08 (N.Y. Sup. Ct. Nov. 13, 2008) (dismissing case against Diageo North America related to an alleged breach of co-existence agreement in connection with the use of a crow trademark on CUERVO products).
Unilever Supply Chain, Inc. v. Steenmeyer, 2007 WL 4050542 (S.D.N.Y. Nov. 4. 2007) (denying motion to reconsider order granting Unilever's motion for summary judgment related to the POPSICLE trademark).
Diageo Ireland v. ACR Group Inc., 1:05-cv-1266 (E.D. Va. Apr. 12, 2006) (enjoining defendants' importation and sale of grey goods GUINNESS product).
Oak Associates, Ltd. v. Palmer, 2006 WL 293385 (E.D. Pa. Feb. 7, 2006) (granting motion to enjoin declaratory judgment action defendant from pursuing trademark infringement case in the E.D. Tex.; case eventually settled and client continues to use the trademark-at-issue).
Copyright Ownership and Infringement Litigation
Bradford v. Nationwide Ins. Co. of Am., 797 Fed. Appx. 874 (5th Cir. Mar. 12, 2020) (affirming district court’s decision dismissing the plaintiff’s complaint with prejudice and without leave to amend due to inconsistencies in the plaintiff’s own pleadings that undermined the plausibility of his infringement claim).
Eileen Grays, LLC v. Remix Lighting, Inc., 2019 WL 6609834 (N.D.N.Y. Dec. 5, 2019) (after securing a copyright registration for the artistic features of a fan/light fixture via an appeal to the Copyright Office after the Supreme Court’s decision in Star Athletica, the district court permanently enjoined the defendants from selling infringing fixtures and entered an award of attorney’s fees and costs in our client’s favor).
Shenzhen Tange Li’an E-Commerce Co. v. Amazon.com, Inc., 2:17-cv-7320 (E.D.N.Y. Dec. 27, 2017) (denying motion for temporary restraining order based alleged copyright infringement claim related to use of photographs and designs on Amazon’s online marketplace; case voluntarily dismissed shortly thereafter).
In re Petitions for Relief from Forfeiture of Certain TV Boxes, U.S. Customs & Border Protection Port of Cleveland Case Nos. 2017-4196-100325-01 et al. (Dec. 20, 2017) (releasing thousands of seized TV set-top boxes because Customs did not establish that the boxes circumvented a technological measure that controls access to a copyrighted work in violation of the Digital Millennium Copyright Act).
American Society for Testing & Materials d/b/a ASTM International v. Public.Resource.Org Inc., 2017 WL 473822 (D.D.C. Feb. 2, 2017) (granting ASTM’s motion for summary judgment and for a permanent injunction, holding that ASTM’s standards do not lose their copyright protection when they are incorporated by reference by governmental authorities, and rejecting defendant’s argument that its publishing of ASTM’s standards that were incorporated by reference was fair use).
Carlin v. Bezos & Amazon.com, Inc., 649 Fed. Appx. 181, 2016 WL 2957212 (3d Cir. May 23, 2016) (affirming district court’s summary judgment in copyright infringement case related to CreateSpace, an Amazon.com subsidiary that allows authors to self-publish and distribute their works), cert. denied, 137 S. Ct. 168 (2016), pet. for reh’g denied, 137 S. Ct. 543 (2016).
Defending a major textbook publisher in serial copyright infringement litigation brought by stock photographers alleging use of their photographs beyond the scope of the relevant licenses.
ApplicationsOnLine LLC v. ApplyYourself, Inc., 1:07-cv-1207 (E.D. Va. Mar. 13, 2008) (granting ApplyYourself's motion to stay pending arbitration between plaintiff and co-defendant).
The Vanguard Group, Inc. v. Ross, 2:04-cv-4126 (E.D. Pa.) (representing The Vanguard Group, Inc. in copyright infringement counterclaim related to software; case settled).
Monaghan Medical Corp. v. Smiths Medical ASD, Inc., 2018 WL 3323823 (D. Del. July 6, 2018) (adopting 7 of Smiths Medical’s proposed claim construction groupings verbatim and adopting only one of Monaghan’s proposed claim construction groupings verbatim).
Koresko v. Nationwide Life Insurance Co., 16-4707 (6th Cir. Jan. 31, 2018) (affirming judgment declaring that Nationwide did not infringe the asserted patent and that all of the claims of the asserted patent are invalid).
Money Suite Co. v. Citigroup, Inc., 2015 WL 426160 (D. Del. Jan. 27, 2015) (granting Citigroup’s motion for judgment on the pleadings and holding that all 887 claims of the asserted patent covered ineligible subject matter and were invalid), appeal dismissed, No. 15-1340 (Fed. Cir. Mar. 26, 2015).
In re Papst Licensing GmbH & Co. KG Litigation, 250 F.R.D. 55 (D.D.C. 2008) (granting Casio's motion for sanctions and holding that Papst's objections, including attorney-client privilege and work product, are waived), mandamus denied by 314 Fed. Appx. 295 (Fed. Cir. Aug. 5, 2008). Case settled shortly after waiver of privilege was affirmed by the Federal Circuit.
NIBCO, Inc. v. Tyco International (US), Inc., 2005 U.S. Dist. LEXIS 28556 (N.D. Ind. Sept. 30, 2005) (granting Tyco's summary judgment of noninfringement on all asserted claims), aff'd, 219 Fed. Appx. 989, 2007 U.S. App. LEXIS 6305 (Fed. Cir. Mar. 9, 2007).
Koresko v. Nationwide Life Insurance Co., 403 F. Supp. 2d 394 (E.D. Pa. 2005) (granting Nationwide's motion to transfer); Nationwide Life Insurance Co. v. Koresko, 2007 WL 2713783 (S.D. Ohio Sept. 14, 2007) (denying Koresko's motion to dismiss or transfer).
Trade Secret and Breach of Confidentiality Litigation
Koresko v. Nationwide Life Insurance Co., 16-4707 (6th Cir. Jan. 31, 2018) (affirming judgment declaring that the plaintiff’s purported trade secrets and confidential information were not protectable and that Nationwide did not misappropriate any of the plaintiff’s trade secrets or confidential information).
SEI Global Services, Inc. v. Dynamo Software, Inc., 2:17-cv-2212 (E.D. Pa. June 28, 2017) (permanently enjoining defendants from using trade secret and confidential information related to one of SEI’s products and prohibiting Dynamo from launching any new product that includes features that were the subject of SEI’s trade secret claim for a period of 18 months).
General Assurance of America, Inc. v. Overby-Seawell Company, 533 Fed. Appx. 200, 2013 WL 3722347 (4th Cir. July 17, 2013) (affirming summary judgment on breach of confidentiality and related claims brought by a competitor for collateral tracking services provided to banks).
Veolia Transportation Services, Inc. v. Keolis Transit America, Inc., Case No. 24C13000782 (Baltimore Cty. Cir. Ct. 2013) (obtained preliminary injunction and consent order in breach of noncompetition and nonsolicitation agreement protecting trade secret and confidential information).
RDS Group Ltd. v. Davison, 02-cv-8168 (E.D. Pa. 2002) (representing RDS Group in trade secret and copyright infringement case involving STRUCAD software).
Awards and Affiliations
Member, Practice Group of the Year, Intellectual Property, Law360 (2019)
Member, Litigation Department of the Year–Intellectual Property, The American Lawyer (2019)
Recommended, Intellectual property: copyright, The Legal 500 US (2017–2021)
Recommended, Intellectual property: Trademarks: non-contentious (including prosecution, portfolio management and licensing), The Legal 500 US (2018, 2021)
Leading Trademark Practitioner, Enforcement & Litigation, DC Metro Area, WTR 1000, World Trademark Review (2016–2021)
Member, Patent Litigation Committee, Intellectual Property Owners Association
Member, Trademark Litigation Committee, Intellectual Property Owners Association
Member, American Intellectual Property Law Association
Member, Enforcement Committee, International Trademark Association
District of Columbia
Supreme Court of the United States
US Courts of Appeals for the Second, Third, Fourth, Fifth, Sixth, Ninth, Tenth, District of Columbia, and Federal Circuits
US Court of Federal Claims
US District Court for the Northern District of Indiana
US District Courts for the Northern, Southern, Eastern, and Western Districts of New York
US District Court for the District of Columbia
US District Court for the Eastern District of Pennsylvania
US District Courts for the Eastern and Western Districts of Virginia