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J, Kevin Fee

J. Kevin Fee

Partner
About

J. Kevin Fee focuses on high-stakes IP litigation before trial and appellate courts throughout the country. The World Trademark Review 1000 describes him as "the go for big ticket litigation" and someone who "has a knack for zeroing in on what is most important in a case from a business perspective." Some of his precedent-setting victories have been featured in Law360's "Top 10 Copyright Rulings" and National Law Journal’s "IP Hot List."

Kevin’s practice focuses on trademark, copyright, false advertising and trade secret litigation. He also has substantial experience litigating patent and defamation claims.

He has represented financial institutions, medical device and pharmaceutical companies, consumer products manufacturers, retailers, internet companies, and food and beverage companies through his trademark and false advertising practice. Kevin also represents major publishers, standards development organizations, financial institutions, insurance companies, and software developers in copyright litigation.

Bar admissionsDistrict of ColumbiaMarylandNew YorkPennsylvaniaVirginia
CourtsSupreme Court of the United StatesUnited States Court of Appeals for the Second CircuitUnited States Court of Appeals for the Third CircuitUnited States Court of Appeals for the Fourth CircuitUnited States Court of Appeals for the Fifth CircuitUnited States Court of Appeals for the Sixth CircuitUnited States Court of Appeals for the Ninth CircuitUnited States Court of Appeals for the Tenth CircuitUnited States Court of Appeals for the District of Columbia CircuitUnited States Court of Appeals for the Federal CircuitUnited States District Court for the District of ColumbiaUnited States District Court for the Northern District of IndianaUnited States District Court for the District of MarylandUnited States District Court for the Eastern District of New YorkUnited States District Court for the Northern District of New YorkUnited States District Court for the Southern District of New YorkUnited States District Court for the Western District of New YorkUnited States District Court for the Eastern District of PennsylvaniaUnited States District Court for the Eastern District of VirginiaUnited States District Court for the Western District of VirginiaUnited States Court of Federal Claims

EXPERIENCE

Trademark and False Advertising Litigation

  • International Code Council, Inc.  v. UpCodes, Inc. (2d. Cir.): Obtained unanimous reversal of the district court’s order dismissing ICC’s false advertising claims on the ground that the challenged statements were mere puffery and secured a ruling that ICC had adequately alleged that UpCodes made literally false and materially misleading statements in defendants’ advertising of its products.  
  • American Society for Testing & Materials d/b/a ASTM International v. Public.Resource.Org Inc. (D.D.C.): Won a motion for summary judgment and a permanent injunction based on a finding that the defendant infringed ASTM’s trademarked logo when it placed ASTM’s logo on unauthorized electronic copies of ASTM’s standards that defendant posted online
  • Kanwar v. Walgreen Co. (E.D.N.Y.):  Obtained dismiss with prejudice of a purported false advertising class action based on the alleged failure to disclose the presence of gelatin in a multivitamin because the Food, Drug, and Cosmetic Act does not require the disclosure of gelatin in all circumstances 
  • Strauss v. Angie’s List, Inc. (10th Cir.): Secured affirmance of 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 (E.D. Va.): Obtained denial of motion to dismiss or transfer trademark infringement action and secured finding that venue was proper in the district where deceived customers purchased the defendant’s product in the believing they were buying the plaintiff’s products
  • Rio Grande Food Products, Inc. v. Cyclone Enterprises, Inc.(S.D.Tex) : In gray market importation case won summary judgment finding that Rio Grande Food Products was an exclusive distributor of Lido-branded products in the US obtained and that the products imported by the defendant were materially different from the Lido-branded products authorized for sale in the US and a permanent injunction, disgorgement of profits, and recovery of attorneys' fees
  • Carlin v. Bezos & Amazon.com (E.D. Pa.): Won summary judgment on behalf of Bezos and Amazon.com in a false advertising case based on res judicata and plaintiff’s lack of standing 
  • Shenzhen Tange Li’an E-Commerce Co. v. Amazon.com, Inc. (E.D.N.Y.): Obtained denial of a motion for a temporary restraining order based on alleged infringement of the plaintiff’s trademark on Amazon’s online marketplace; case voluntarily dismissed shortly thereafter
  • Ocusoft, Inc. v. Walgreen Co. (S.D. Tex.): Secured a denial of a motion for temporary restraining order in false advertising case because “the court agrees with Walgreens that there is no immediate threat of irreparable injury”
  • Corps Group, Inc. v. Afterburner, Inc. (Ga. App.): 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
  • ONY, Inc. v. Cornerstone Therapeutics, Inc. (2d Cir.): Secured affirmance of the 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 percent 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. (Trademark Tr. & App. Bd.): Won motion for summary judgment 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 (Trademark Tr. & App. Bd.): Prevailed on Kraft's cross-motion for summary judgment and TTAB, sustain Kraft's opposition of applicant's Kool mark for carbonated beverages based on 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 (N.Y. Sup. Ct.): Obtained dismissal of 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 (S.D.N.Y.): Secured denial of motion to reconsider order granting Unilever's motion for summary judgment related to the Popsicle trademark
  • Diageo Ireland v. ACR Group Inc. (E.D. Va.): Obtained injunction against defendants' importation and sale of grey goods Guinness product.

Copyright Litigation

  • American Society for Testing & Materials d/b/a ASTM International v. Public.Resource.Org Inc. (D.D.C.): Won motion for summary judgment of copyright infringement of 32 works and that secured holding that ASTM’s standards do not lose their copyright protection when they are incorporated by reference by governmental authorities
  • Milice v. Consumer Product Safety Comm’n (D.C. Cir.): Won dismissal of a petition of challenging a CPSC regulation incorporating an ASTM copyright-protected standard and seeking to compel the CPSC to publish the ASTM standard without ASTM’s consent
  • Bradford v. Nationwide Ins. Co. of Am. (5th Cir.): Obtained unanimous affirmance of 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 copyright infringement claim 
  • Eileen Grays, LLC v. Remix Lighting, Inc. (N.D.N.Y.): After securing a copyright registration for the artistic features of a fan/light fixture via an appeal to the Copyright Office in light of the Supreme Court’s decision in Star Athletica, secured permanent injunction prohibiting the defendants from selling infringing fixtures and an award of attorney’s fees plus costs
  • Shenzhen Tange Li’an E-Commerce Co. v. Amazon.com, Inc. (E.D.N.Y.): Obtained denial of motion for temporary restraining order based on allegations of copyright infringement related to use of photographs and designs on Amazon’s online marketplace
  • In re Petitions for Relief from Forfeiture of Certain TV Boxes (U.S. Customs & Border Protection): Secured release of 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
  • Carlin v. Bezos & Amazon.com, Inc. (3d Cir.): Obtained complete affirmance of 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

Patent Litigation

  • Monaghan Medical Corp. v. Smiths Medical ASD, Inc. (D. Del.): Won seven 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. (6th Cir.): Obtained affirmance of 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. (Fed. Cir.): Secured judgment on the pleadings on behalf of Citigroup and a holding that all 887 claims of the asserted patent covered ineligible subject matter and were invalid
  • In re Papst Licensing GmbH & Co. KG Litigation (Fed. Cir.): Obtained denial of a petition for a writ of mandamus challenging the district court's granting of Casio's motion for sanctions and holding that Papst's objections, including attorney-client privilege and work product, are waived
  • NIBCO, Inc. v. Tyco International (US), Inc. (Fed. Cir.): Won affirmance of summary judgment of noninfringement on all asserted claims

Trade Secret and Breach of Confidentiality Litigation

  • Koresko v. Nationwide Life Insurance Co. (6th Cir.):  Obtained affirmance of 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. (E.D. Pa.): Won permanent injunction prohibiting 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 (4th Cir.): Secured affirmance of 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. (Baltimore Cty. Cir.): Obtained preliminary injunction and consent order in breach of non competition and nonsolicitation agreement protecting trade secret and confidential information
Education
  • J.D., University of Pennsylvania Law School
  • B.S.B.A., Villanova University

Awards

  • The Legal 500 US, Recommended, Intellectual Property: Copyright, 2017-2022
  • The Legal 500 US, Recommended, Intellectual Property: Trademarks: Non-contentious (including prosecution, portfolio management and licensing), 2018, 2021-2022
  • WTR 1000, World Trademark Review, Leading Trademark Practitioner, Enforcement & Litigation, DC Metro Area, 2016-2022

Bylines

  • "Copycats Beware: Unintentional Mistake of Law in Copyright Application Does Not Render Registrations Invalid," March 2, 2022
  • "US Supreme Court Allows Trademark Registration for Booking.com," July 1, 2020
  • "Supreme Court: Willfulness Unnecessary for Disgorgement of Infringer's Profits Award in Trademark Cases," April 24, 2020
  • "Federal Circuit: Color Marks for Product Packaging Can Be Inherently Distinctive," April 15, 2020
  • "Draft Revisions to Copyright Registration Practices Reflect Broader Protection of Product Design," March 26, 2019

Seminars

Media Mentions

Prior Experience

Kevin was a partner and co-leader of the Trademark and Copyright Litigation Practice at a major AmLaw 100 firm prior to joining DLA Piper.

Memberships And Affiliations

  • Member, Patent and Trademark Litigation Committees, Intellectual Property Owners Association
  • Member, American Intellectual Property Law Association
  • Member, Enforcement Committee, International Trademark Association

Connect

Phone

+1 202 799 4441
(Work, Washington, DC)