David C. Brezina

David C. Brezina is of Counsel in the Chicago office of Ladas & Parry LLP. As an Intellectual Property law practitioner he has developed well-balanced experience handling patent, trademark and copyright matters. His litigation experience includes multifaceted cases having issues of patent, trademark, trade dress, copyright, trade secret, advertising and competition, especially where those issues intersect and overlap. He has appeared in more than 100 lawsuits, and settled others without appearing. He has also taught graduate and undergraduate law courses and delivered continuing education presentations covering these topics. With this experience in prosecuting and litigating intellectual property matters as well as negotiating and strategic counseling, Dave enjoys helping clients solve problems at whatever level the solution is needed.

For more than 20 years, Dave has taught law courses. This includes, “Entrepreneurship: Basic Business Principles,” “Entertainment Law,” and “Legal Aspects of Entertainment, Publishing and the Arts,” which were taught at Columbia College of Chicago. Dave also has been an adjunct professor in the Center for Intellectual Property Law of The John Marshall Law School in Chicago for more than 10 years, where he currently teaches “Trademark Law” and has taught “Antitrust and Misuse Aspects of Intellectual Property Law.”

Dave has lectured frequently and published numerous articles on law and litigation, with the subject matter usually focusing on patents, trademarks, trade dress and copyrights. The articles have been published in both legal and trade publications, including The Trademark Reporter, Landslide and the Chicago Bar Record, with one scheduled to appear in the Spring 2018 Review of Intellectual Property Law.

Dave received his B.S.S. in political science from Cornell College with undergraduate scientific training concentrated in oceanography. Dave earned his J.D. with honors from the Illinois Institute of Technology – Chicago Kent College of Law in 1978, and an LL.M. in intellectual property law from The John Marshall Law School in 1988. The thesis, co-authored with partner Burt Ehrlich, was entitled “Antitrust and Misuse Aspects of Intellectual Property Law” and was used as Dave’s textbook for his LLM class of the same name.

Dave has been active in the Chicago, Illinois and American Bar Associations, as well as the Intellectual Property Law Association of Chicago including chairmanship of several committee. He has been active in the Bohemian Lawyers Association of Chicago (BLAC) where he is a Past President. He has been ranked on various lawyer listings including Superlawyers, The Best Lawyers in America, and Illinois Leading Lawyer by the Leading Lawyers Network and has a Martindale-Hubbell AV rating.

Executive and Board of Directors experience has included, in addition to the BLAC, above, Managing Partner at Lee, Mann, Smith, McWilliams, Sweeney & Ohlson; Commodore of the Chicago Corinthian Yacht Club and Board service for Project LEAP (Legal Elections in All Precincts), Lincoln Park Advisory Council and the Chicago Harbor Safety Committee. Dave was issued Merchant Mariner Credentials on July 9, 2020 as a Master Mariner, including sail endorsement, by the United States Coast Guard.

Dave is admitted to practice in Illinois, before the U.S. Supreme Court the Federal, Seventh and Ninth Circuits and a number of U.S. District Courts. He is registered before the U.S. Patent and Trademark Office.

REPRESENTATIVE CASES

In Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 1 USPQ2d 1196 (Fed. Cir. 1985), after winning this patent infringement for the defense in a one-day trial on the merits, the Federal Circuit remanded for further proceedings. This case involved cross-town rivals in automotive aftermarket accessories.

Mucha v. King 792 F.2d 502 (7th Cir, 1986) involved a ‘long lost’ painting was not really ‘lost’, the heirs of the artist recovering a painting placed in a bailment 70 years before. Because of the cultural importance of the artist, Dave has also discussed this case before an Art Law class and bar association groups.

In Plastiques Anchor v. Quinn David, 1992 U.S. Dist. LEXIS 12535, (ND Ill 1992) a preliminary injunction motion was soundly defeated in this trademark and trade dress case involving plastic bicycle racks. The judge remarked that it appeared that the trademark might not be owned by plaintiff, instead being owned by Dave’s client, the US distributor.

After prove-up of damages, a half-million dollar judgment was entered in favor of the client, a Nicaraguan brewery, in this trademark infringement case Compania Cervecera De Nicaragua v. Cervezas Victoria y Tona Beers Inc. 28 USPQ 2d 1870 (MD Fla 1993). Ultimately a compromised amount was collected from the co-defendant private label brewer.

Rasmussen v. The West, Inc. 28 USPQ 2d 1958 (N.D.Ill, 1993) was a copyright infringement case in which the client, plaintiff, defeated a motion to dismiss on personal jurisdiction grounds, interpreting the Illinois Long Arm statute to be satisfied when defendant made two mail order purchases from plaintiff and then infringed the work obtained.

In Carbonara v. Olmos 1994 WL 370031 March 4, 1994. (CD Cal 1994) the published decision dealt with a novel procedural point in a deceptive trade practices and false advertising case arising out of bogus celebrity endorsements. After removal to, and transfer from the Northern District of Illinois, the case was remanded back from the Central District of California to state court in Cook County, Illinois, an unprecedented procedure at the time. Settlement was obtained for the clients after oral argument of Plaintiffs’ motion for summary judgment.

Storck USA, L.P. v. Farley Candy Co., Inc., 14 F.3d 311, 29 USPQ 2d 1431 (7th Cir. 1994) was decided after replacing counsel who lost two preliminary injunctions based on trademark and trade dress claims. An attempt at a third preliminary injunction was defeated and affirmed on appeal, in part because of the survey evidence offered for the defense.

In Respect Inc. v. Fremgen 897 F. Supp. 361; 889 F. Supp. 340; 1995 U.S. Dist. LEXIS 8864; 35 U.S.P.Q.2d 1278, (ND Ill 1995), a copyright infringement case, summary judgment successfully limited damage exposure to the point where the case settled.

Microsoft Corp. v. Logical Choice Computers, Inc., 42 UCC 727, 2000 U.S. Dist. LEXIS 10972, 2000 WL 1038143 (ND Ill 2000) was a trademark and copyright infringement case, in which the defendant client, a software distributor, was dismissed from the third-party case.

In Trek Bicycle Corp. v. Alyx Fier, 56 U.S.P.Q. 2d 1527 (TTAB 2000) summary judgment in favor of the client was obtained in a trademark opposition in which fame of our client’s mark was established. The industry involved was sports products, specifically bicycles.

Holland Co. v. Zeftek, Inc., 2001 U.S. Dist. LEXIS 13015 (ND Ill 2001) was a case in which Dave’s client, the plaintiff, successfully defeated defendant’s motion for summary judgment in this patent infringement case. This lead to prompt settlement.

In Thane Int’I, Inc. v. Trek Bicycle Corp., No. 00-55293, 00-55599, 305 F.3d 894, 64 USPQ2d 1564, 2002 U.S. App. LEXIS 18344 (9th Cir. 2002) a successful appeal overturned summary judgment in this trademark infringement case. This was obtained after joining the team from the firm that was originally unsuccessful.

Home Raters, Inc. v. Blumenthal, 2005 Copy. L. Rep. (CCH) P29,038; 2005 U.S. Dist. LEXIS 24206 (ND Ill 2005) was a copyright infringement case that established that under copyright, distinguishing other areas of the law, there is a right to attorneys’ fees as costs after acceptance of an unconditional offer of judgment.

Waterloo Furniture Components, Ltd. v. Haworth, Inc., 467 F.3d 641; 80 U.S.P.Q.2d 1675 (7th Cir. 2006) summary judgment for Dave’s client, a defendant in a breach of contract case, was obtained based on the expiration of the license agreement and the subject patent, despite the presence of a most- favored-nations clause.

In Through the Country Door v. J.C. Penney Co., 83 USPQ2d 1538, 2007 U.S. Dist. LEXIS 23975, (WD Wis 2007), a trademark, trade dress and copyright infringement case, a motion to dismiss was defeated. The trade dress count and state law unfair trade practices count, joined with a copyright infringement count for imitation and copying of retail catalogs survived the motion to dismiss. The case was settled on terms maintained confidentially.

AFFCO New Zealand v American Fine Foods 913 F. 1331 (S.D. Fla., 2012) denied the Defense motion for summary judgment on two counts seeking to enforce a breach of a contract settling a trademark opposition.