ERICK C. HOWARD
Mr. Howard is a partner in the Firm’s Litigation Department and head of the Firm’s Trademark Prosecution Practice. Mr. Howard’s primary expertise is in intellectual property litigation (including trademarks, copyrights, trade secrets, patents, computer law and the protection of technology), contract disputes, business torts and other business litigation.
Mr. Howard also has substantial experience related to technology transactions. Mr. Howard has drafted and negotiated licensing, development, strategic alliance, joint venture and other Internet and technology-related agreements. He has helped businesses and individuals secure trademarks and copyrights. In the course of his practice, Mr. Howard has provided strategic counseling to clients with respect to doing business on the Internet and protecting their intellectual property rights.
Before joining the Firm, Mr. Howard was an intellectual property litigation associate at Sidley & Austin (now Sidley, Austin, Brown & Wood) in Chicago from 1996 to 2000. Mr. Howard was a technology transactions associate at Cooley Godward LLP in San Francisco from 2000 to 2002.
- Fair v. Bakhtiari, et al. Mr. Howard successfully represented the defendants in a contract and breach of fiduciary duty case that resulted in the California Supreme Court issuing a decision upholding important aspects of confidential communications in mediation. The Supreme Court voted 7-0 to overturn a unanimous decision in the California Court of Appeal, and return the case to the trial court. The case was tried successfully in 2008, defeating a claim of $14 million and recovering property rights for our clients worth $5 million.
- Nova Wines, Inc. v. Adler Fels Winery, et al. Mr. Howard represented a Napa Valley wine producer in a trademark and trade dress infringement case against a photographer and a Sonoma wine producer attempting to introduce wine products using the image and likeness of Marilyn Monroe in violation of the client’s trade dress rights in such images. Mr. Howard successfully obtained preliminary injunctive relief on behalf of the client in a case-of-first-impression decision by the federal district court holding that images of celebrities may constitute valid and protectable trademarks and trade dress.
- Concrete Washout Systems, Inc. v. Minegar Environmental Systems, Inc. Mr. Howard represented a construction company in a trade secrets misappropriation and patent infringement case concerning inventions related to the disposal of concrete washout waste. Mr. Howard obtained summary judgment in favor of the client, defeating the plaintiff’s claims.
- Rabobank v. National Westminster Bank. Mr. Howard represented NatWest (formerly National Westminster Bank and now owned by Royal Bank of Scotland) in a claim by a major Dutch bank for approximately $200,000,000, involving litigation both in England and California. The case was defended successfully at trial in England, with full “indemnity” fees of approximately $25 million awarded to our client after trial.
- Simpson Strong-Tie Company, Inc. v. Stewart, Estes & Donnell. Mr. Howard represented construction manufacturing client in a case resulting in a first-impression, landmark decision in the Tennessee Supreme Court regarding lawyer advertising and defamation.
- Designer Jeans Trademark Disputes. Mr. Howard has successfully defended manufacturers of high-end denim jeans against claims of trademark infringement asserted by a well-known denim jeans manufacturer.
Mr. Howard is admitted to practice in all state courts in California, the Northern District of California and the Eastern District of Texas. He is a member of the American Bar Association and Vice-Chair of the ABA’s Section of Intellectual Property Law Trademark Litigation Committee. Mr. Howard was previously Co-Chair of the ABA’s Section of Litigation Intellectual Property Litigation (“IPL”) Committee, and currently serves as a co-chair of Trademarks sub-committee of the IPL Committee.
Mr. Howard is a member of the Board of Directors of the Coro Center For Civic Leadership.
PUBLIC SPEAKING ENGAGEMENTS
Mr. Howard has appeared at various speaking engagements which include:
- “Identifying Anonymous and Pseudonymous Speakers in Litigation Through Internet Service Providers,” ABA Annual Meeting, Section of Litigation, July - August 2009
- “Intellectual Property Primer,” California Lawyers for the Arts Seminars, 2007 - 2009
- “Cost Saving Strategies in Electronic Discovery: Working the Problems Before they Become Problems,” PLI Electronic Discovery and Retention Guidance for Corporate Counsel 2005 (Part 2) Seminar, December 2005
- “An E-Discovery Roadmap for You and Your Clients: Reaping the Benefits and Protecting Against the Burdens of Electronic Discovery,” ABA Business Torts Seminar, May 2005
Mr. Howard received his B.S. degree in Political Science from Northwestern University where he was elected to Phi Beta Kappa. He received his J.D. degree from the University of Chicago Law School. While at the University of Chicago, Mr. Howard served on the University of Chicago Legal Forum and is the author of “Debating PBS: Public Broadcasting and the Power to Exclude Political Candidates from Televised Debates.”
AREAS OF EXPERTISE