The small Laguna Beach intellectual-property law firm of Levin & Hawes recently won a $143 million trademark-infringement verdict against healthcare giant Pfizer Inc., the maker of Viagra and other pharmaceuticals.
But the eight-attorney firm, working two blocks from the beach, still spends a lot of its time working on Internet domain names, a ripe area of trademark law, and representing clients like the Hard Rock Caf & #233; (in a logo-infringement case), American Airlines (in trademarking its apple-juice bottles) and LAPD (as in Los Angeles Party Design,the LA Police Department is objecting to the company’s use of the initials).
Still, its most high-profile case, and certainly the largest judgment it has won, was the Pfizer suit.
“We’re going to do very well,” said Bill Levin, a partner with the firm.
It all started in 1997 when the British firm Trovan Ltd., a maker of biomedical tracking devices, learned that Pfizer was going to introduce a new antibiotic using the name Trovan. The company had registered its trademark in the U.S. in 1989, and registered an Internet domain name in its name in 1996. Trovan, whose exclusive North American distributor is Electronic Identification Devices, a Santa Barbara-based company, protested and eventually filed suit.
Levin & Hawes took over in the middle of discovery when Trovan fired its first law firm in 1998. The firm signed on the day before Thanksgiving and had less than one week to get familiar with the case. It received 44 bankers’ boxes full of information, Levin said. “We had our work cut out for us.”
Six of its staff members were dedicated to the case, which was fought against four law firms representing the defendants. Levin said the case was won with hard work, experience and rapport with the jury. And very good witnesses, he added.
One of Trovan’s witnesses was a woman who thought Pfizer’s Trovan,which was in the news for causing liver problems in humans,was the same product she had implanted in her cats to track them in case they were lost. This allowed the plaintiffs to argue not only was Pfizer using Trovan’s trademarked name, but also was defaming it.
In October, the jury agreed.
Pfizer will have to stop using the Trovan name if the judge issues a permanent injunction, which should be decided shortly, Levin said. The $143 million jury award could be increased by the judge by $50 million to $60 million,Pfizer’s profits from its sales of Trovan,or it could be reduced, he said, although he considers that less likely.
Pfizer will appeal the case, said Mariann Caprino, spokeswoman for Pfizer. In addition, the Trovan drug is not being promoted and is being used in “extremely limited circumstances,” she said. But that’s due to the adverse reaction the drug has caused in some patients, not the lawsuit, Caprino said.
Now that work on the Trovan case is winding down, the firm is moving into Y2K solution licensing.
“That’s really hot right now,” Levin said.
The firm has set up a licensing program for Bruce Dickens, an Irvine inventor who is attempting to collect licensing fees from Fortune 1000 companies that he said used his patented Y2K fix. Dickens, a computer programmer, said he invented a Y2K solution called “windowing” but the companies have argued the fix has been used for years and wasn’t invented by Dickens.
Levin said a lot of the companies are resisting but “most aren’t refusing, just delaying.” And Dickens has collected money from a few of the companies without filing any suits, Levin said. Dickens has also formed a new company with other Y2K-solution inventors called Dickens Soeder Co. Now Levin & Hawes is representing the company.
Another hot area is domain-name patenting.
“It’s exploding. It’s just crazy,” Levin said. And there’s no place better to be than Orange County, he said. “I think Orange County is an up-and-coming Silicon Valley.”
With all the new work and the growth of OC’s technology base, Levin said his firm intends to expand over the next two years to a staff of 15 or 20.
But Levin maintains that a small, efficient staff with good skills can take on any case: “With a computer and a good writer, we can compete with a large law firm no matter how many people they have.” n
