Jedediah Wakefield

Chair, Trademark Litigation at Fenwick & West LLP

Jedediah Wakefield

Jedediah Wakefield

Chair, Trademark Litigation at Fenwick & West LLP

Biography

Jedediah Wakefield focuses his practice on intellectual property litigation, with an emphasis on trademark, copyright, trade secret and right of publicity matters, as well as licensing, technology transfers, and other complex commercial disputes. Jed also represents technology companies in advertising, privacy, unfair competition and other consumer related issues, and he has successfully defended his clients in state and federal class action lawsuits.

Jed has litigated cases across the country. He has served as trial counsel in state and federal courts, and has extensive experience in mediation and arbitration. Jed has been named an IP Star by Managing Intellectual Property and as among the top trademark lawyers in California by World Trademark Review 1000. He has also been named as one of the top 100 attorneys in Northern California by Super Lawyers.

Jed received his B.A. in English in 1992 with highest honors from the University of California, Santa Barbara, where he was elected Phi Beta Kappa. He received his J.D. cum laude from Santa Clara University in 1995. In law school, Jed served as a Judicial Extern to the Honorable Judge James Ware, in the United States District Court for the Northern District of California.

Representative Engagements

Trademark Litigation

Jed has handled all variety of trademark disputes—from routine trademark enforcement matters to hard-fought litigation in federal court—for well-known brand owners such as Symantec, Google and Twitter.

* Defended wearable technology company Fitbit in trademark infringement suit brought by Fitbug Limited in the U.S. District Court for the Northern District of California. Won summary judgment on all of plaintiff’s claims on laches grounds.
* Defended GoPro against trade dress infringement claims in the U.S. District Court for the District of Colorado. Won motion to dismiss on the grounds that plaintiff had failed to show protectable trade dress rights.
* Represented AIEn USA and Industrias AIEn, one of Mexico’s leading household products companies and its U.S. subsidiary, in significant trademark dispute brought by Clorox in district court and the International Trade Commission. Matter settled favorably.
* Represented Google before the Trademark Trial and Appeal Board in an opposition to a tour company’s application to register the mark SOOGLE. Won summary judgment in Google’s favor.
* Def?ended Groupon in trademark infringement lawsuit brought by Groupion, LLC. Defeated preliminary injunction motion and ultimately won summary judgment of non-infringement on all of plaintiff’s claims.
* Represented Symantec in trademark infringement suit against Comodo concerning logos used for security and authentication services. Comodo dropped its use of the disputed logo and withdrew its trademark application.
* Represented Twitter in trademark lawsuit over third party trademark registration that infringed Twitter’s TWEET mark.
* Represented Google before the Trademark Trial and Appeal Board. Obtained summary judgment refusing registration of the applicant’s “FUNTOOGLE” mark.
* Represented online shopping site in trademark infringement lawsuit against competitor, securing a settlement in which the competitor changed its name, withdrew its trademark applications and transferred its domain names to our client.
* Represented international publisher Harlequin Enterprises in a trademark infringement, dilution and false advertising claim against a film production company in federal court in Los Angeles. After Mr. Wakefield filed a motion for a preliminary injunction, the defendant agreed to change its name.
* Represented defendant Critical Path, a provider of email outsourcing technology, in trademark infringement suit brought by Critical Path Solutions. Defeated all of plaintiff’s claims on summary judgment.

Copyright Litigation

Jed has represented plaintiffs and defendants in copyright litigation across the country.

* Represented Chordiant Software, Inc. (now part of Pegasystems Inc.), Chordiant’s CEO, and its general counsel in a copyright infringement lawsuit in federal court in San Jose, California. Chordiant had admitted that it owed plaintiffs damages for use and distribution of plaintiffs’ software products, but disputed plaintiffs’ claim to tens of millions of dollars in damages and profits. Following a two week trial, the jury returned a verdict of approximately 5% of what plaintiffs had requested. Prior to trial, we secured a voluntary dismissal for the CEO, and won summary judgment in favor of Chordiant’s former general counsel. Also defeated plaintiffs’ claims for statutory damages and attorneys’ fees.
* Defended mobile game publisher ngmoco against claims of copyright infringement over a leading game for the iPhone. We quickly convinced the other side to drop its claims and acknowledge our client’s rights to continue distributing its game.
* Defeated copyright infringement claims brought by IBM against Compuware Corporation in a lawsuit in the Eastern District of Michigan. The Court agreed with Compuware that IBM's claims were barred by the doctrine of laches, and granted summary judgment in Compuware's favor.
* Represented Symantec Corporation, BindView Development Company, and BindView's former CEO in a copyright infringement case in federal court in San Francisco. Obtained summary judgment in favor of all defendants and defeated plaintiff's claims for fraud and breach of contract.
* Defended Sun Microsystems and Storage Technology Corporation in a software copyright lawsuit. The court granted summary judgment for all defendants, finding that their use of the allegedly infringed software was licensed. The Court also awarded our clients attorneys’ fees after we defeated plaintiffs’ effort to revive the copyright claims in a second lawsuit.
* Represented Brøderbund in the successful defense of a claim that an educational video game infringed plaintiff’s copyright in a children's educational television program.

Trade Secret Litigation

* Represented Symantec in a trade secret misappropriation case against a former Symantec employee and his new employer. Secured a permanent injunction requiring the return of Symantec confidential information and barring defendants’ use or disclosure of that information.

* Successfully defended Wyse Technology, Inc. in claim for breach of a nondisclosure agreement relating to “thin client” technology. After moving for summary judgment on the grounds that Plaintiff itself had publicly disclosed the allegedly confidential information, Plaintiff dismissed its case.
* Served as trial counsel for Compuware Corporation in a case involving copyright, trade secret and antitrust claims. After a 5-week jury trial, the case settled in Compuware's favor for $400 million.
* Represented plaintiff Flextronics in a trade secrets and breach of contract case involving fiber optic technology.
* Successfully defended a risk modeling technology company in a trade secrets case involving wildfire risk assessment technology.

Class Action Defense

* Represented social networking service in consumer class action over alleged privacy violations.
* Successfully defended a major “daily deal” company in purported class action involving online advertising practices.
* Represented Internet travel site in a consumer class action involving booking and cancellation fee disclosures.
* Defended digital stock photography company against purported right of publicity violations.

Complex Commercial Disputes

* Represented GPS navigation technology company TomTom in multi-million dollar breach of warranty case against chip maker Broadcom.
* Represented a global IT and business consultancy company in a claim for fraud and breach of the duty of loyalty against a medical technology company and its founder. Obtained a permanent injunction barring the defendants from using any of the disputed technology.
* Represented plaintiff Telos, a manuf

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Partner at Fenwick & West LLP

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Chair, Antitrust & Unfair Competition at Fenwick & West LLP

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Co-Chair, Mergers & Acquisitions at Fenwick & West LLP

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Co-Chair, Employment Practices Group at Fenwick & West LLP

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Partner at Fenwick & West LLP

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Jedediah Wakefield
Chair, Trademark Litigation at Fenwick & West LLP
Education
JD, cum laude, the Order of Barristers
Class of 1995

Santa Clara University School of Law will educate its students to meet the challenges of a legal profession and society that are increasingly global, technologically sophisticated, and diverse. In fulfilling this vision, the Law School will educate its students to become lawyers of competence, conscience, and compassion. The Law School will also advance knowledge and justice through scholarship and service.

BA in English with Highest Honors, Phi Beta Kappa
Class of 1992

The University of California, Santa Barbara (commonly referred to as UC Santa Barbara or UCSB) is a public research university and one of the 10 general campuses of the University of California system. The main campus is located on a 1,022-acre (414 ha) site near Goleta, California, United States, 8 miles (13 km) from Santa Barbara and 100 miles (160 km) northwest of Los Angeles. Tracing its roots back to 1891 as an independent teachers' college, UCSB joined the University of California system in 1944 and is the third-oldest general-education campus in the system. UCSB traces its origins back to the Anna Blake School which was founded in 1891 and offered training in home economics and industrial arts. The Anna Blake School was taken over by the state in 1909 and became the Santa Barbara State Normal School. Intense lobbying by an interest group in the City of Santa Barbara, led by Thomas Storke and Pearl Chase, persuaded the State Legislature, Governor Earl Warren, and the Regents of the University of California to move the State College over to the more research-oriented University of California system in 1944. The State College system sued to stop the takeover, but the Governor did not support the suit. A state initiative was passed, however, to stop subsequent conversions of State Colleges to University of California campuses. From 1944 to 1958 the school was known as Santa Barbara College of the University of California, before taking on its current name. When the vacated Marine Corps training station in Goleta was purchased for the rapidly-growing college, Santa Barbara City College moved into the vacated State College buildings.

Career History
Chair, Trademark Litigation
Current

Fenwick & West LLP is a national law firm that provides comprehensive legal services to technology and life sciences clients of national and international prominence. The company's practice areas include antitrust and unfair competition, appellate, complex business litigation, copyright, corporate and securities, employment & labor, executive compensation & benefits, intellectual property and IP litigation. It offers legal advisory services in areas such as mergers and acquisitions, patent prosecution, privacy and information security. Fenwick & West was founded in 1972 and is headquartered in Mountain View, CA.

Political Donations
$450
2012

Former President of United States

$200
2011

Former President of United States

$250
2008

Former President of United States

Transactions
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Symantec Corporation purchases LifeLock, Inc.

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