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Keith
Medansky
Partner
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Keith W. Medansky concentrates his practice in the area of intellectual property, including a full range of transactional and litigation matters pertaining to trademarks, copyrights, software, anti-counterfeiting and technology. He is rated "AV," the highest rating attainable, by Martindale-Hubbell Law Directory. Mr. Medansky has been named a Leading Lawyer in Intellectual Property Law by the Leading Lawyers Network and designated an Illinois Super Lawyer, as the result of research projects conducted jointly by Law & Politics and Chicago magazines. He has also been recognized as one of the world's leading trademark practitioners in Who's Who Legal USA: Trademarks, Who's Who Legal Illinois: Trademarks, and the Guide to the World's Leading Trade Mark Law Practitioners.
Mr. Medansky’s practice is international in scope. He has handled trademark matters in the United States and in over 100 other countries. Mr. Medansky has extensive experience managing large intellectual property portfolios for all kinds of businesses, from small start-up companies to large multinationals. He has particular experience in counseling clients in matters involving the protection of Web site content and domain names and in developing cyberspace and copyright policies. Mr. Medansky also has broad experience in assisting clients in addressing complex intellectual property issues relating to licensing, intellectual property holding companies and arising out of mergers, acquisitions, divestitures and bankruptcy.
Mr. Medansky handles litigation matters before the Trademark Trial and Appeal Board and various federal and state courts. He litigates on behalf of computer component companies in connection with counterfeiting matters and the protection and enforcement of copyright, trademark and other intellectual property rights in software and other products. He also represents manufacturers, retailers, educational institutions, distributors, franchisors and other clients in prosecuting and defending infringement and unfair competition claims pertaining to copyrights, trademarks, domain names and trade secrets.
Representative Cases include:
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Nike, Inc. v. Nikepal, 84 U.S.P.Q.2d 1820 (E.D. Cal. 2007). Successfully represented Nike at trial in one of the first trial decisions under the Trademark Dilution Revision Act. The case involved the famous NIKE mark and a rare appeal of a Trademark Office opposition decision to a district court and claims seeking injunctive relief.
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Contessa Foods v. Lockpur, 123 Fed. Appx. 747 (9th Cir. Cal. 2005), cert den., 546 US 957 (2005). Successfully defended copyright and trade dress infringement dispute invalidating the plaintiff’s copyright and dismissing plaintiff’s other claims on summary judgment. Also represented our client on appeal and in resisting the plaintiff’s petition for certiorari.
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MB Financial Bank v. MB Real Estate, (N.D. Ill 2003). Successfully defended preliminary injunction in trademark infringement case.
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Chattanoga Mfg. v. Nike, Inc. and Michael Jordan, 140 F. Supp. 2d 917 (N.D. Ill. 2001), aff'd, 301 F. 3d 789 (7th Cir. 2002). Obtained summary judgment defending Nike, Inc. who was sued for trademark infringement and unfair competition by a blouse manufacturer who had obtained a federally registered trademark for and claimed exclusive rights to the name JORDAN. Mr. Medansky also represented Nike in the successful appeal before the Seventh Circuit.
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Microsoft Corp. v. Logical Choice Computers, 2001 US Dist LEXIS 479, 2001 WL 58950 (N.D.Ill. January 22, 2001). Obtained $1.54 million judgment against defendant in a computer software counterfeiting case. Mr. Medansky has also successfully handled dozens of other software counterfeiting cases on behalf of Microsoft.
Admissions
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Illinois
- United States Supreme Court
- United States Court of Appeals for the Federal Circuit
- United States Court of Appeals for the Seventh Circuit
- United States Court of Appeals for the Ninth Circuit
- United States Court of Appeals for the Tenth Circuit
- United States District Court for the Northern District of Illinois
- United States District Court for the Central District of Illinois
- United States District Court for the Southern District of Illinois
- United States District Court for the District of Arizona
- United States District Court for the Eastern District of Wisconsin
- United States District Court for the Western District of Wisconsin
Memberships
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Lawyer’s for the Creative Arts, Board of Directors
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International Trademark Association, Internet Committee
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American Bar Association
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Intellectual Property Law Association of Chicago
Publications
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"Considering Intellectual Property Securitisation, IP Value 2005 - An international guide for the boardroom," published by Globe White Page (January 2005)
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"United States May Join Ranks of Madrid Protocol," The National Law Journal (April 2001)
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"Trademark Trouble: Major Loophole in the Federal Dilution Act," The Intellectual Property Strategist (April 1999)
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"US Courts Split on Scope of Dilution Law," I.P. Worldwide (November 1998)
Seminars
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Organizer, International Trademark Association's 2009 Trademark Administrators Conference; Presenter, "Searching the Attic - Proving Secondary Meaning and Fame in Trademark Cases”; Moderator, "Trademark Ethics," Chicago (September 20-22, 2009)
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Speaker, “Dot ASIA Sunrise - Overview, Strategies & Best Practices,” International Trademark Association
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Speaker, “Software Licenses in Bankruptcy Proceedings,” Association of Corporate Counsel
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Speaker, “Recent Trends in Trademark Infringement and Dilution Litigation Law,” Seminars International presentation
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Speaker, “Recent Trends in Trademark Litigation,” Law Seminars International and the Intellectual Property Association of Chicago
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Speaker, “Intellectual Property Issues in Real Estate,” International Association of Attorneys and Executives in Corporate Real Estate (AECRE), New Orleans
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Panelist, “Alternative Dispute Resolution in Intellectual Property Cases,” Central American Secretariat for Harmonization of Laws Intellectual Property Program, sponsored by United States Agency for International Development (USAID), San Jose, Costa Rica
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Panelist, “Prosecuting and Defending Trademark Dilution Claims,” Seminar for Advanced Trademark Practitioners, International Trademark Association, New York City
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Speaker, “Trademark Licensing.” Seminar for Advanced Trademark Practitioners, International Trademark Association, San Francisco
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Presenter, “Exploring E-Legal Issues with a Legal Eagle,” Association for High Technology Distribution Annual Meeting, Memphis, Tennessee
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Speaker, “Fair Use and Copyright Issues in Education,” Chicago Public Schools Principal's Association program
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Speaker, “Piracy on the High (C)'s: Software Piracy and Counterfeiting,” Chicago Bar Association Young Lawyer's Division presentation, Chicago
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Speaker,” Nuts and Bolts of Filing a Copyright Infringement Complaint,” Chicago Bar Association presentation, Chicago
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Speaker, “Software Piracy and the Internal Auditor,” Institute of Internal Auditors, Dearborn, Michigan
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Presenter, “Software Piracy ... It's No Laughing Matter,” Chief Information Officers meeting, Des Moines, Iowa
EDUCATION
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J.D., University of Illinois at Urbana-Champaign 1987
magna cum laude
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B.A., Northwestern University 1984
 The Martindale-Hubbell Peer Review icon is a service mark of Reed Elsevier Properties Inc., used under permission from Reed Elsevier Properties Inc. in accord with the terms and conditions established by Martindale-Hubbell.
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EDUCATION
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J.D.,
University of Illinois at Urbana-Champaign
1987
magna cum laude
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B.A.,
Northwestern University
1984
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