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Eugene M. Pak  


Of Counsel

eugene.pak@dlapiper.com

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555 Mission Street, Suite 2400
San Francisco, California 94105-2933
United States
T: +1 415 615 6024   F: +1 415 659 7324

Eugene Pak focuses his practice on intellectual property disputes and counseling. He represents a wide range of companies and organizations in matters involving complex copyright, trademark, and other intellectual-property related issues.

His litigation experience includes representing companies in anti-counterfeiting, trademark and trade dress, domain name, copyright, DMCA, patent, advertising and trade secret matters. He has represented clients in proceedings before federal and state courts, arbitration panels, WIPO and NAB (UDRP actions), and the Trademark Trial and Appeal Board. He has also handled employment and commercial litigation matters.

In addition to his litigation practice, Mr. Pak regularly advises on trademark, copyright, advertising and sweepstakes matters. He works with clients in selecting, registering and maintaining their trademarks domestically and abroad, and implementing anti-counterfeiting programs; assists companies in obtaining copyright protection and avoiding copyright infringement liability; and advises on advertising and promotions issues. Mr. Pak also advises on issues regarding the rights of publicity and privacy. He has worked with large publicly traded companies as well as smaller, emerging companies, among them many technology and online companies. Mr. Pak also negotiates and drafts a wide variety of licensing agreements including software licenses, OEM licenses and trademark licenses and co-existence agreements.

In 2005, the National Asian Pacific American Bar Association (NAPABA) named him one of the Best Lawyers Under 40, recognizing the prominence and distinction he achieved and his strong commitment to civic affairs and pro bono matters. He also received the Distinguished Service Award from the Asian American Bar Association of the Greater Bay Area in 2005 and the Unity Award from the Minority Bar Coalition and Korean American Bar Association in 2003, in recognition of his contributions to the community and these organizations and his frequent pro bono work. Mr. Pak is an active member and former treasurer of the International Association of Korean Lawyers (IAKL).

Representative Matters

  • Represents a large manufacturer of networking hardware and software products in anti-counterfeiting disputes and enforcement efforts.
  • Advises and represents a leading Korean-owned ATM company in dispute with Korean manufacturer over ownership of trademark (ICDR arbitration in Korea).
  • Serves as intellectual property counsel for a Korean-owned leading manufacturer and distributor of motorcycle parts, clothing and accessories, including handling trademark prosecution and enforcement actions worldwide.
  • Advises and represents a leading Korean apparel company in trademark matters in the United States.
  • Advises and represents companies in the technology, computer game, entertainment, food and beverage, and consumer retail products fields in trademark prosecution and enforcement efforts and copyright matters; manages worldwide trademark portfolios.
  • Represented a well-known nonprofit organization in trademark and trade dress infringement and dilution action involving its wristbands in the Eastern District of Texas, and in a design patent infringement countersuit in Oklahoma.
  • Served as lead counsel for a website developer in litigation involving the use of copyrighted text and images.
  • Trial counsel for a jewelry designer in a trade dress infringement action in the Southern District of New York.
  • Represented a major software developer in anti-counterfeiting cases involving well-known software products.
  • Represented non-profit organization in copyright dispute regarding use of a painting in advertisements.
  • Counsel for a newswire service in trade secret litigation; obtained a preliminary injunction requiring former employee to cease working for competitor and from using customer lists.
  • Represented a well-known Napa Valley winery in Lanham Act litigation against a Canadian wine kit manufacturer.
  • Represented an online document-sharing company in a DMCA dispute regarding copyrighted documents posted by customers.
  • Represented a leading content management software firm in copyright litigation involving the scope of a software license agreement.
  • Represented an online document delivery service in class action copyright infringement litigation involving indexing and delivery of copies of print articles.
  • Advised a leading computer game publisher on worldwide sweepstakes promotion in connection with the FIFA World Cup.
  • Negotiated a trademark license agreement relating to distribution and publication of music used in computer games.
  • Advised client on privacy issues and policies for website and customers' websites; negotiated licensing agreement regarding use of large business information database.
  • Counsel for a leading investment brokerage firm in an employment discrimination action before the NYSE Arbitration Board and related breach of duty of loyalty counterclaim; prevailed on defense of discrimination claim, and obtained damages award on firm’s breach of duty of loyalty claim.
  • Represented state food and agriculture department in litigation regarding milk nutritional standards and milk pooling regulations.
  • Represented Korean American organization in quiet title and real estate fraud litigation regarding Korea Town retail shopping plaza.

Admissions

  • California
  • United States Court of Appeals for the Ninth Circuit
  • United States District Court for the Northern District of California
  • United States District Court for the Eastern District of California
  • United States District Court for the Central District of California
  • United States District Court for the Southern District of California

Memberships

  • American Bar Association
  • Asian American Bar Association of the Greater Bay Area (AABA)
    • Board of Directors (current)
    • Co-chair, Community Services Committee and Newsletter/Website Committee
  • Copyright Society of Northern California
  • International Association of Korean Lawyers (IAKL)
    • Annual Conference Organizing Committee (2004)
    • Treasurer (1998-1999)
  • International Trademark Association (INTA)
    • Member, Information Resources Committee (2004-2005)
    • Member, Trademark Dilution Committee (2004-2005)
    • Member, Trademark Reporter Editorial Board (1999-2000)
  • Korean American Bar Association of Northern California (KABANC)
    • President (2001-2002)
    • Treasurer (1998)
  • National Asian Pacific American Bar Association (NAPABA)
    • Best Lawyers Under 40 (2005)
    • California Regional Conference Organizing Committee (2005)

Publications

  • "Is the TTAB's Reluctance To Issue Citable Decisions Set To Change?," World Trademark Law Report (2006)
  • "Superman Fights Off KRIPTONIA Registration," World Trademark Law Report (2005)
  • Co-author, "Trademark Filing Online: The Korean Intellectual Property Office," INTA Bulletin (May 2005)
  • Co-author, "Monetary Relief Under Lanham Act Section 35," Trademark Litigation, Practising Law Institute

Seminars

  • Speaker, "Doing Business Between US and Korea," Association of Corporate Counsel (Northern California) Program, 2010
  • Speaker and Moderator, "Soft IP Issues on the Internet," IAKL Conference in Seoul, Korea, 2009
  • Speaker, "International IP Issues in Entertainment & Media: New Paradigms for Global Deal Making Panel," NAPABA Regional Conference, 2009
  • Speaker, "Playing Hardball with Soft IP," American Corporate Counsel Regional Conference, 2008
  • Speaker, "Protecting Your Brand on the Internet," INTA, 2006
  • Speaker, "Update on US Intellectual Property Law," IAKL Conference, 2006
  • Speaker, "Winning Strategies for IP Compliance," Federal Publications, 2005
  • Speaker, "US Trademark Prosecution," Trademark and Copyright Practice for Paralegals, Half Moon Seminars, 2003
  • Speaker, "Issues in Preparing Copyright Legal Opinions," Trademark and Copyright Legal Opinions, Practising Law Institute, 2001

Civic and Charitable

  • Korean Community Center of the East Bay, Board Member
  • Legal Aid Society/Employment Law Center, Felix Velarde-Munoz Fellow (1993-1994)


EDUCATION

  • J.D., University of California at Berkeley, Boalt Hall School of Law
      Associate Editor, California Law Review
  • B.A., University of Michigan

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