Focusing her practice on intellectual property (IP) and advertising issues, Sharon R. Smith has represented clients in numerous complex matters. Sharon counsels clients on matters involving trademarks, privacy, trade dress, trade secrets, domain names, copyrights, advertising, unfair competition, and rights of publicity as well as focusing her practice on trademark and copyright prosecution and strategy. She also advises clients regarding advertising and promotional programs including comparative advertising, contests, and sweepstakes. Sharon’s practice involves strategic IP advice including global prosecution, brand strategies, transactions, enforcement programs, Trademark Trial and Appeal Board cases, and domain name proceedings.
Her practice also involves complex trials, and business and IP litigation including trademark infringement, copyright infringement, false advertising, unfair business practices, business torts, trade secrets, fraud, defamation, and breach of contract. In the biotechnology, medical device, and technology industries, Sharon represents clients in high-stakes contested matters including 21 trials and arbitrations to verdict or result. She also represents clients in these industries in prosecuting, enforcing, and minimizing risk related to IP and trade secret matters.
As a key part of the Morgan Lewis team during a three-month jury trial, Sharon helped obtain a $577 million jury verdict for Asahi Kasei Pharma Corp. At the time, it was the second-largest jury verdict in the United States for that year.
Counseling and advice regarding advertising and privacy law including to consumer-focused gaming company;
Counseling and advice to several top-tier non-profits running competitions, providing grants and awards including the Bill and Melinda Gates Foundation;
Global trademark portfolio management for numerous clients including in the technology, pharmaceutical, and biotechnology fields;
Successful defense of fraud claims following trial before the Trademark Trial and Appeal Board for PayPal, Inc.;
Successful grant of contempt in copyright infringement case following contempt trial for Oracle;
Successful defense of trade dress claims involving fashion product following trial;
Successful resolution of right to publicity litigation involving celebrity plaintiff;
Successful defense of claims for more than $50M against a medical device maker following arbitration;
Successful defense of artists by LiveNation Merchandise, Inc., in claim for breach of a license agreement including a pursuit of counterclaims for copyright and trademark infringement;
Successful defense of claim by Business Software Alliance (BSA) against a major technology client;
Successful prosecution of claims for pharmaceutical company in an arbitration, in favor of our client for $91 million;
Successful defense verdict motion for dismissal during trial for client in case involving a $450 million claim for misappropriation of corporate opportunity, among other claims;
Successful defense of leading direct marketing company in multi-million dollar case alleging copyright infringement, trade dress infringement, and false advertising claims;
Successful jury verdict in trade dress infringement claim;
Successful grant of summary judgment in favor of client against trademark infringement claim;
Successful grant of motion to dismiss in favor of client against Digital Millennium Copyright Act (DMCA), fraud, unfair business practices, and tortious interference claims;
Successful defense of a defamation claim based on a novel Communications Decency Act defense; and
Successful prosecution of numerous ICANN proceedings on behalf of major technology clients for transfers of domain names.
University of California, Davis School of Law, 2002, J.D.
University of California, Berkeley, 1997, B.A.
Awards and Affiliations
Recommended, Intellectual property: Copyright, The Legal 500 US (2022)
Member, Practice Group of the Year, Intellectual Property, Law360 (2019)
Member, Litigation Department of the Year–Intellectual Property, The American Lawyer (2019)
Leading Trademark Practitioner, Enforcement & Litigation, California, WTR 1000, World Trademark Review (2020–2022)
Committee Member, International Trademark Association (INTA)
Member, American Bar Association
Member, Order of the Coif
Witkin Award for Academic Excellence, Civil Procedure