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DLA Piper

World IP Survey Coverage: Print-friendly version

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Editorial coverage

China

DLA Piper has offices in Beijing and Shanghai with 17 lawyers and five partners on its hybrid Hong Kong and China team. The team has taken steps in the past two years to strengthen its practice. Yan Zhao arrived in late 2011 as a patent partner based in Shanghai and is expected to beef up the team's patent practice. New clients this past year include Vodafone, Philip Morris and Avon.

Matthew Glynn has been appointed as Asia's head of IP & technology this year. Li Bing is a new associate to the team who will focus on patent prosecution and enforcement work.

China is a notoriously known to be difficult location for a foreign company's trade mark to gain well-known status but firm had notable success in this regard. It acted on behalf of HSBC this year before the Hangzhou High Court relating to a trade mark infringement dispute. The court rendered a favourable judgment, granting HSBC's Chinese language trade mark well-known status. HSBC entrusts all of its trade mark opposition and litigation work to this team in China and Hong Kong.

Partner Edward Chatterton often advises Gap when it launches new brands in the region. Chatterton leads the team to strategise IP aspects for this brand in order to minimise the threat of trade mark infringement proceedings against Gap.


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Hong Kong

DLA Piper has 17 lawyers and five partners on its hybrid Hong Kong and China team. The team has taken steps in the past two years to strengthen its practice, and will be a firm to look out for as it increases its presence. Scott Thiel joined this year to enhance the trade mark portfolio management practice with 14 years of experience. Mai Lin is also a new addition to the team and is well versed in US law. Clients include Denny's, HSBC, Vodafone and Gap.

Edward Chatterton leads the team in handling all of HSBC's trade mark opposition and litigation work in Hong Kong. The team continuously helps to protect the brands, trade mark and its corporate logo against brands looking to benefit from its established image. The firm also advises Avon on a range of Hong Kong and PRC trade mark prosecutions, opposition and cancellation actions.


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Italy

DLA Piper continues to expand its practice in Italy, after the bedding-in period that came with the firm's acquisition of Gualtiero Dragotti's litigation team. The firm has two offices, in Milan and Rome, with the IP team of nine (including three partners) located in the former. The aforementioned Dragotti and Robert Valenti serve as co-heads of the IP practice, with Giangiacomo Olivi the overall head of the IP and technology department.

Clients include Dyson, Ugo Di Stefano and Volker Mansfeld, with a big case involving representing the BBC in a landmark copyright infringement case against Endemol and RTI (Mediaset) over the TV format of Strictly Come Dancing in front of the IP court in Rome. It achieved an injunction for the BBC in February 2012 and then a settlement followed. This gives more scope to the copyright protection of TV formats in Europe.

"DLA Piper has Dragotti now. He is a very good guy," comments one competitor. The firm did lose three professionals this year, namely partner Italo de Feo and associates Marco Leone and Matia Campo. They joined CMS Adonnino Ascoli & Cavasola Scamoni in October 2012.

disputes in Italy relating to the company's memory cards and other brands.


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Japan

The Japan office of DLA Piper consists of a small team focusing on US litigation for Japanese clients. Senior counsel Henry Koda and senior associate Chris Mizumoto are both bilingual US patent lawyers with substantial experience of international IP. Mizumoto in particular has been noted for his extensive US patent prosecution and litigation experience having represented major electronics and pharmaceutical companies in litigation cases. The Japan office is now establishing a trade mark practice to help bolster its presence in Japan.


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Thailand

International law firm DLA Piper has a modest-sized IP practice that focuses heavily on selective trade mark prosecution work. IP veteran Chanvitaya Suvarnapunya leads the team and also sits on the Trademark Board of Appeal of the Thai Ministry of Commerce. The team comprises 10 lawyers working out of the office in Bangkok. Clients of the firm include At Bangkok, Hyatt, Siam Tewa and ECC.

The team often advises clients on their IP strategy. Typical advice involves how best to leverage a client's IP assets into revenue streams through licensing agreements, royalty structures or other alternatives.

Suvarnapunya, Mitsuru Nishiuwatoko and Pattama Jarupunphol have been advising the Ministry of Foreign Affairs in Japan on the interpretation and research of Thai IP laws in relation to the Anti-Counterfeiting Trade Agreement (ACTA). The team is exploring whether Thailand has legal schemes consistent with ACTA and whether Thailand is under the process of enacting or revising legal schemes that will be compatible with ACTA's provisions.

Hyatt has engaged the team's expertise in its trade mark licensing and brand management in Thailand.


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United Kingdom

DLA Piper is an international law firm with an IP team in the UK consisting of 80 professionals. It has eight offices and can boast clients such as Football DataCo, Virgin Atlantic and the FA Premier League. The team is also recognised by peers for its copyright work, as one says: "DLA is very good here. It has the football data case which is very big."

This is being led by partners Simon Levine, Ruth Hoy and John Wilks, who are acting for Football DataCo, the FA Premier League, the Football League, the Scottish Premier League, the Scottish Football League and PA Sport (UK) in litigation regarding the copyright and database rights inherent in football fixture lists and live football data. This set of disputes is still being resolved, with aspects being referred to the CJEU.

Elsewhere, partners George Godar and Claire Bennett represented Virgin Atlantic Airways in its set of patent disputes over flatbed seats in its aircraft. With a variety of different actions against four defendants, this case is still pending completion.

Lastly, the firm boosted its numbers by recruiting partner Adam Cooke from Hogan Lovells in September 2012.


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California

With 77 offices across the globe and more than 4,000 attorneys, DLA Piper is one of the largest international law firms in the world. In the U.S. the firm employs upwards of 150 IP lawyers across more than 20 offices. Locations in New York, California and Washington, D.C. are particularly important centers of intellectual property expertise. Peers say the strength of DLA Piper stems from its broad-based capabilities across a full range of legal practices.

The firm's reputation for handling patent litigation, trademark prosecution and copyright matters is especially strong. The firm recently obtained a win on behalf of client Effie Film, the producer of the movie Effie, in a copyright infringement case against a New York playwright. The playwright had accused actress Emma Thompson, author of the Effie screenplay, of infringement. The ruling in the Southern District of New York determined the movie did not infringe the playwright's copyright and more generally, upheld fiction writers' ability to re-interpret history and figures through their creative works.


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Maryland

DLA Piper employs approximately 4,200 attorneys worldwide – 115 of whom are located between two Baltimore offices. With respect to intellectual property, the firm is active in a host of contentious and non-contentious matters. One area of emphasis is strategic counseling services for clients on how best to leverage IP assets into revenue streams through licensing agreements and other methods. Focusing on all aspects of technology law, the firm provides advice on matters that include advertising and promotion, data security, digital media content, e-commerce and privacy protection. Hugh Marbury garners mentions for his business and intellectual property litigation practice. The work he oversees frequently involves financial transactions and commercial disputes related to the pharmaceutical, software and defense industries.


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Firm contact

This firm does not have a profile in the 2013 Handbook