Erik C. Kane

Overview

With 20 years of intellectual property experience, Erik advises clients on litigation, licensing, and counseling in trademark, trade dress, copyright, patent, and trade secret matters. World Trademark Review 1000 has noted he is “most at home in the courtroom” (2024) and his litigation experience includes a full range of pre-suit diligence, discovery, depositions, motions practice, oral argument, trial, and appellate work before federal courts, state courts, the US International Trade Commission (ITC), Trademark Trial and Appeal Board (TTAB), and the US Supreme Court. He has served as first or second chair in a number of matters.

Erik also prosecutes trademarks, copyrights, and software patents. He prepares infringement and invalidity analyses and opinions in the fields of computer science, telecommunications, and Internet-based standards and services. And he works closely with clients to draft, structure, and negotiate complex IP and technology contracts. He handles joint development agreements, patent and technology license agreements, software and data licenses, trademark license agreements, open source software compliance agreements, SaaS agreements, and IP and technology transfer agreements – often within the context of M&A transactions.

In addition to securing, protecting, and enforcing clients’ rights, Erik routinely counsels clients on other IP related matters including e-commerce, artificial intelligence (AI), non-fungible tokens (NFTs), smart contracts, digital certificate technologies, token-based and biometric authentication, ICANN domain name Uniform Dispute Resolution Policy (UDRP) disputes, digital rights management, web services and end user license agreements (EULA), compliance with the Children’s Online Privacy Protection Act (COPPA), website privacy policies, Consumer Product Safety Commission compliance, Federal Trade Commission (FTC) compliance, website disclaimers, and Digital Millennium Copyright Act (DMCA) compliance.

In addition to his recognition in the World Trademark Review 1000 (2023-2024), Erik has been named a Rising Star in the IP Stars Handbook by Managing Intellectual Property (2020-2023).

Early in his career, Erik served as a law clerk in the United States Court of Federal Claims and served in the DC office of US Senator Arlen Specter of Pennsylvania.

Experience

Obtained dismissal of declaratory judgment action against the US Olympic Committee regarding trademarks, social media, and First Amendment issues. HSK LLC v. The United States Olympic Committee (D. Minn.)
Represented travel website Pintrips in a trademark infringement suit filed by social media and tech giant Pinterest. After a bench trial, the court found the terms “pin,” “pinning,” and a “pin” button were fair use for Pintrips, and not exclusive to Pinterest.
Represented Home Shopping Network, Daystar Productions, and musician and on-air personality Stephen Paul (aka Esteban) in litigation in which a jury found they did not willfully infringe the FISHMAN mark in a $25 million trademark suit brought by Fishman Transducers in the District of Massachusetts. Convinced the First Circuit to uphold the lower court’s decision. Fishman Transducers, Inc. v. Stephan Paul, et al.
Represented Maker’s Mark in a high-stakes battle for the red dripping wax seal atop its bottles, in which the Sixth Circuit ruled that Maker’s Mark holds an “extremely strong” and enforceable trademark in the seal. The court affirmed an injunction prohibiting defendant Cuervo and its distributor from using a similar dripping red wax seal on its tequila products. Maker’s Mark Distillery v. Diageo, et al.
Negotiated NFT license for major children’s book and cartoon character.
Counseled client on and developed legal framework for professional sports related NFT offering.
Created NFT legal framework and offering for major charitable organization.
Represented CVS in a copyright infringement litigation in the Northern District of Alabama. Rob Fleming, a professional photographer, alleged CVS willfully infringed his copyrights by allowing customers to duplicate his work. The court granted our motion for summary judgment and dismissed the case with prejudice. Rob Fleming v. Alabama CVS Pharmacy, L.L.C.
Represented Datassurant in a trademark infringement litigation in the Northern District of Georgia and TTAB for which we negotiated a favorable settlement. Assurant, Inc. v. Datassurant, Inc.
Represented defendant Constellation Brands and its subsidiary, Spirits Marque One (Svedka vodka), in a copyright infringement and breach of contract case in the Central District of California. This case involved copyright claims pertaining to a photograph taken by a well-known Hollywood photographer. The court denied plaintiff's motion for a preliminary injunction. Secured dismissal of the motion, which allowed the client to proceed with a multi-million-dollar advertising campaign. Charles White v. Constellation Brands, Inc., et al.

Accolades

Honors & Recognitions

Recognized as a Leading Trademark Professional in Enforcement & Litigation in Washington, DC (2023-2024), World Trademark Review 1000
Recommended for Trademarks: Litigation (2023), Legal 500 United States
Recognized as a Rising Star in the IP Stars Handbook (2020-2023), Managing Intellectual Property
Recognized as a Commission Pro Bono Service Honor Roll Member (2023), Virginia Access to Justice Commission, published in Virginia Lawyer magazine
Recognized as Rising Star for Intellectual Property (2014-2019), Washington, DC Super Lawyers