TottisLaw | Kevin Tottis

Commercial

Lead counsel at trial on behalf of textile manufacturer in action against former customer under theories of alter ego, successor corporation liability and fraudulent transfer. Affirmed by Seventh Circuit.
Led team that obtained directed finding in clients' favor on Deceptive Business Practices Act claim at trial for real estate development company and its owner. Following trial, court not only ruled in clients' favor on all remaining counts, but also awarded attorneys' fees.
Following two-week hearing, obtained ruling in favor of automobile manufacturer in action brought by largest auto dealers in Milwaukee market to block establishment of new dealership under Wisconsin Motor Vehicle Dealer Statute.

Represented Italian manufacturer in action for breach of $27-million handshake distribution deal. Following three-week trial, jury returned verdict in favor of client for all lost profits. On earlier appeal from summary judgment, obtained reversal resulting in leading Seventh Circuit opinion on statute of frauds.
Led team that obtained preliminary injunction on one day's notice for temporary health care provider against local distributor in action for breach of fiduciary duty, fraud and violations of representative agreement. Successfully defended subsequent challenges to injunction and obtained favorable settlement for client.
As lead counsel, obtained directed finding on behalf of defendant wholesale grocery distributor in action by dairy supplier for breach of contract, quantum meruit and vexatious delay.
Defended bank in action by plaintiff seeking over $30 million for alleged mismanagement of trust funds. At trial, successfully barred in limine plaintiff's experts and subsequently obtained judgment in favor of bank following trial on the merits.
Presided over emergency arbitration seeking possession of retail store and enforcement of covenant not to compete.
Led team that enforced oral settlement agreement and obtained summary judgment for U.S. subsidiaries of Chinese manufacturing company in action for fraud and breach of contract.
After filing suit and following significant negotiations, as lead counsel obtained multi-million dollar settlement in favor of client in minority shareholder oppression action after company offered only $75,000 for buyout.
Headed up defense for investment bank in class action seeking several million dollars for alleged violation of Telephone Consumer Protection Act. After filing and briefing motions to dismiss raising issues unaddressed by numerous other defendants in related actions, case settled for $7500.
Led defense against respondent warranty liability insurance agents in arbitration brought by purchasing group seeking over $1 million in damages for fraud and breach of contract. After arbitration, panel awarded claimant $48,000.

Lead counsel for theatrical licensing company in arbitration against author’s estate and literary holding company over non-first-class stage rights in To Kill a Mockingbird. Following five-week hearing, Arbitrator not only found breach of contract and tortious interference, but also: 1) declared client’s exclusive rights in non-first-class theater market survived termination under Section 304(c) of the Copyright Act; 2) issued permanent injunction barring future wrongful acts; 3) ordered accounting and disgorgement of any royalties paid for non-first-class performances; and 4) denied all counterclaims. Arbitrator also awarded $200,000 in damages and over $2.5 million in attorneys’ fees and costs, including reimbursement for all discounts and write offs. District court confirmed entire award, awarded nine percent post-award interest as well as attorneys’ fees incurred in confirmation proceedings.
Counsel of record before the United States Supreme Court on behalf of the American Intellectual Property Law Association in amicus filing addressing extraterritorial application of first-sale doctrine.
Led team that obtained summary judgment in favor of two university professors rejecting former post-doctoral researcher's claim that he was entitled to a joint authorship of a scholarly article.
Led team on behalf of architect in action for copyright infringement and violations of the DMCA against retail chain and competitor architect. Defeated motion for judgment on pleadings on DMCA claims and successfully stymied claims of implied license, ultimately leading to settlement.
Lead counsel on behalf of professional examination board in action for copyright infringement and numerous state law claims arising out of unauthorized copying of test questions. Negotiated settlement providing for entry of consent judgment in client's favor awarding monetary and permanent injunctive relief, assignment of infringing website domain name as well as associated emails and business accounts.
Sole arbitrator in million-dollar dispute involving copyrighted software, breach of fiduciary duty and work-made-for-hire issues. Rendered detailed decision after four-day hearing.
Led team on behalf of plaintiff publisher in suit for over 14,000 counts of copyright infringement. Sought and obtained ex parte order permitting seizure and impounding of infringing illustrations from defendant/competitor's computer system, CD-ROMs and printed publications resulting in favorable settlement for client.
Lead counsel in defense of web-based client and its corporate officers in action for, inter alia, copyright infringement, RICO and tortious interference. Avoided takedown of website under Digital Millennium Copyright Act. Following filing of motion to dismiss and counterclaim, case settled including assignment of all copyrights in dispute to client.

Led defense of university press and author in action for copyright infringement arising out of use of photographs in award-winning book. Obtained voluntary dismissal by plaintiff.
Led team on behalf of consumer products company in action against competitor for copyright infringement of text and illustrations in instructions for use. Obtained preliminary injunction and, ultimately, settlement with a stipulated permanent injunction.
Represented performing rights organization in numerous actions for copyright infringement resulting in favorable judgments and settlements.

Trademark / Trade Dress

In action for trademark infringement involving identical, but geographically distinct, unregistered trademarks, obtained dismissal for lack of personal jurisdiction and award of all fees under Lanham Act’s "exceptional case" provision. (Lead counsel)
Retained after district court preliminarily enjoined opening of client's restaurant under what plaintiff claimed was a confusingly similar mark. Replaced prior counsel and, as lead counsel, obtained expedited appeal and, ultimately, complete reversal by Seventh Circuit resulting in frequently-cited opinion on likelihood of confusion.
Led defense of national pharmacy’s unregistered mark in infringement action by plaintiff with identical registered mark. Obtained summary judgment based on client’s predecessor’s prior use, resulting in cancellation of plaintiff’s registrations. Subsequently negotiated settlement for payment of attorneys’ fees and plaintiff’s agreement to cease use of mark entirely.
Following motion for preliminary injunction obtained settlement enforcing celebrity chef’s trademark. (Lead counsel)
Obtained favorable settlement for Chicago restaurant accused of infringing trade dress of group of New York restaurants. (Lead counsel)
Lead counsel for consumer products company in action for trademark infringement against competitor who entered market with a phonetically identical mark and federal registration which pre-dated client's. Despite eight-year registration of defendant's mark and laches defense, following preliminary injunction hearing, obtained settlement with both distributor and manufacturer including a permanent injunction barring use of mark in client's market.
Led representation of consumer products company in trade dress infringement action against competitor for sale and distribution to major U.S. retailers of confusingly similar packaging of generic products. Ultimately obtained settlement with monetary payment and permanent injunction.

Patent / Trade Secrets

Retained as lead counsel to defend foreign manufacturer in trade secret misappropriation and copyright action following ex parte entry of temporary restraining order. Within a week, obtained dissolution of TRO and defeated preliminary injunction claim on the merits. Ultimately obtained complete dismissal on forum non conveniens grounds.
In true “bet-the-company” case, led team that defended against five counts of patent infringement and two counts of unfair competition. Following favorable motion in limine ruling significantly limiting damages, settled case with business solution and no money exchanging hands.
Lead counsel on behalf of the American Intellectual Property Law Association on amicus brief addressing fee shifting provisions of 35 U.S.C. § 145. Majority adopted AIPLA’s position. Ultimately affirmed by U.S. Supreme Court.
In multi-million dollar patent infringement and trade secret misappropriation case, part of team that successfully defeated plaintiff’s motion for preliminary injunction and obtained dismissal of patent claims based on ineligible subject matter.
As arbitrator, presided over week-long hearing involving seven-figure trade secret misappropriation/breach of fiduciary duty dispute. Rendered decision providing award and injunctive relief.
Lead counsel on behalf of defendant distributor in action for trade secret misappropriation, trademark infringement, breach of fiduciary duty and breach of contract. Obtained dismissal of breach of fiduciary duty and breach of contract claims. Won summary judgment on liability on counterclaims for breach of contract and violation of Illinois Sales Representative Act, resulting in a seven-figure settlement in favor of client and dismissal of all of plaintiff's claims.
Represented Fortune 500 consumer products company in action against competitor for trade secret misappropriation, including misappropriation under inevitable disclosure doctrine. Case favorably settled on eve of trial.

Led team that represented interests of non-party inventor and large not-for-profit medical research institute in several actions relating to autoimmune disease and immunotherapy patents, most recently resulting in favorable settlement.
Defended web-based client against claims for patent infringement arising out of use of online software. Favorably settled.
Defended manufacturer and its subsidiary in five-week trial against claims for patent infringement, trade secret misappropriation, and unfair competition.

Speeches

"CMI and the DMCA: A Deep Dive," AIPLA 2021 Annual Meeting
"Design Law," The Journal of Technology and Intellectual Property Symposium, Northwestern University Pritzker School of Law, April 2018
"Copyright Mid-Year in Review," AIPLA 2017 Spring Meeting
"'Making Available,' Linking and Free Expression," Chicago Bar Association/Copyright Society of the USA, Chicago, September 2016
"Linking and Making Available on the Internet," AIPLA 2016 Spring Meeting
“The Lanham Act’s Bar on Registration of Immoral, Scandalous, and Disparaging Marks: A Debate,” Practising Law Institute Advanced Trademark Law Annual Review, New York, March 2016
“Copyright Year in Review,” 53rd Annual Conference on Intellectual Property Law, Center for American and International Law, November 2015
"Copyright Hot Topics," Tenth Annual Door County Intellectual Property Academy, State Bar of Wisconsin, July 16, 2015
"Copyright Year in Review," AIPLA 2014 Annual Meeting
"Intellectual Property Essentials for Business Leaders: The Story on Copyright," AIPLA 2013 Mid-Winter Institute
"Trademark Litigation Strategies," Iowa Intellectual Property Law Association Annual Meeting, October 2012
"Is Copyright Infringement a Necessary Step for Patent Prosecution?" October 2012 ABA Litigation Section, IP Committee Roundtable

"Understanding Copyright Law in the Data Era 2012," Practising Law Institute, Chicago, June 2012
Commentator on the Anti-Counterfeiting Trade Agreement for China Radio International's public affairs program, Beyond Beijing, March 2012
"Costco Redux: Why Both Sides Got It Wrong," AIPLA Spring Meeting, May 2011
"The U.S. Supreme Court Takes on the Secret Handshake," Malaysian Bar Council/ASEAN-IPA Conference on "Emerging Trends in the IP Landscape," October 2007
"Waiver of Attorney-Client Privilege After EchoStar and Seagate," AIPLA Annual Meeting, October 2007
"How to Avoid Drafting Trade Secrets Away," AIPLA Annual Meeting, October 2006
"The Year in Copyright Law," AIPLA Advanced Copyright/Trademark Seminar," June 2003
"Litigating Under the Anti-Trafficking Sections of the DMCA," AIPLA Annual Meeting, October 2002

Moderator/Panelist

Where Are We Now? The State of Copyright Law on Emerging Issues, AIPLA 2018 Annual Meeting
"When the World Didn't Come to an End," Copyright Society of the United States 2015 Annual Meeting
"Copyright and Gray Market Goods: John Wiley & Sons v. Kirtsaeng," DePaul University College of Law Journal of Art, Technology, and Intellectual Property symposium, April 2013
"SOPA/PIPA Without the Shouting," AIPLA Mid-Winter Institute, January 2012
"Global IP Developments," AIPPI-US 2011 Annual Meeting

"Digital Media & Broadband Entertainment Forum," SUPERCOMM 2009
"E-Discovery Unplugged," AIPLA Spring 2005 Meeting
"Beyond the Preliminary Injunction: Trying the Trademark Infringement Case," AIPLA Annual Meeting, October 2003

Articles

"SCOTUS Adopts International Copyright Exhaustion in Kirtsaeng," IP Watchdog, www.ipwatchdog.com, March 2013
"Refocusing Kirtsaeng Analysis on Extra-Territoriality Principles," IP Watchdog, www.ipwatchdog.com, February 14, 2013
"Unscrambling the Anti-Unscrambling Law: The Digital Millennium Copyright Act in Light of Eldred v. Ashcroft," IP Litigator, January/February 2004

KEVIN TOTTIS