Jami A. Gekas is a partner and intellectual property litigation lawyer with Foley & Lardner LLP, where she focuses on an array of advertising, marketing, copyright and trademark issues. A key focus of her practice is brand enforcement and she represents clients in adversary proceedings involving false advertising, unfair competition and trademark, copyright and patent infringement. Jami is a member of the Northern District of Illinois’ Trial Bar and has obtained favorable results in numerous federal district and appellate courts; she recently served as lead trial counsel in a trademark infringement matter, which resulted in a jury verdict in her client’s favor. Jami is also experienced in the clearance of brand names, trade identities and advertising copy; obtaining federal registration for copyrights and trademarks; drafting and negotiating a multitude of licensing and promotional agreements; and helping clients implement promotions and new media campaigns. She is a member of the firm’s IP Litigation and Trademark, Copyright & Advertising Practices.
Jami’s practice includes:
- Litigating intellectual property disputes involving trademarks, trade dress, false advertising, cybersquatting/domain names, unfair competition, patents and copyrights in a variety of federal district and appellate courts
- Intellectual property and brand enforcement matters in the nature of domain name recovery; takedown notices; drafting and responding to pre-litigation “cease and desist” letters; and negotiating licenses and settlement agreements
- Managing domestic and foreign trademark portfolios for clients in a variety of industries (including consumer products, financial services, e-commerce, travel services, design, managed care, consulting and not-for-profit organizations); overseeing trademark clearance, prosecution, licensing and policing; and representing clients in connection with ex parte and inter partes Trademark Trial & Appeal Board proceedings
- Advising clients on advertising/marketing clearance, substantiation and compliance with laws related to trademarks, copyrights, defamation, disparagement, rights of publicity, telemarketing, rebates/incentives, internet marketing, green marketing claims, unsolicited email, privacy and other consumer protection laws
- Drafting and negotiating a variety of agreements (e.g., co-promotion, strategic alliance, work-for-hire, e-commerce, agency and licensing of characters, trademarks, music, software, photos, images and artwork)
- Counseling advertisers on compliance with NAD and CARU guidelines and findings and assisting in NAD/NARB proceedings
- Advising clients on all aspects of legal compliance for sweepstakes, skill contests and other promotions (including drafting official rules, reviewing ad copy, attending to applicable state registrations and drafting affidavits and participant releases)
- Reviewing new media campaigns and counseling clients on branded social networking, text message/mobile campaigns, SEO and keyword advertising and user-generated content issues
- Coordinating client internal software audits and responding to copyright licensing inquiries from software industry organizations (BSA, SIIA)
Prior to joining Foley, Jami was an intellectual property partner at a global law firm.
Representative Experience*
- Buccellati Holding Italia SpA v. Laura Buccellati, LLC et al (S.D. Fla. 2013). Lead trial counsel representing Italian luxury brand in trademark matter; secured jury verdict of infringement.
- Top Tobacco, L.P. v. Compuzone, Inc. (N.D. Ill. 2015). Lead defense counsel in Lanham Act case; negotiated favorable confidential settlement.
- Fasoli v. Voltage Pictures, et al (C.D. Cal. 2015). Lead plaintiffs’ counsel in copyright infringement matter by artists against film production company and director for unauthorized copy of famous street mural; case settled on favorable terms.
- Chicago Bldg. Design v. The Italian Job Miami, LLC (S.D. Fla. 2014). Lead defense counsel in architectural copyright case arising from restaurant design; case settled on favorable terms.
- Citigroup Inc. v. Various Parties (T.T.A.B. 2014-present). Representing global financial services company in various inter partes trademark enforcement disputes before the Trademark Trial & Appeal Board.
- Gary’s Auto Ins. Agency, LLC v. Insurancestep.com, et al (D.N.J. 2014). Represented national insurers Allstate and Esurance in defense of Lanham Act keyword advertising case; all claims against clients dismissed.
- Arlington Specialties, Inc. v. GMA Accessories, Inc., et al (N.D. Ill. 2013). Lead plaintiff’s counsel in Lanham Act trade dress infringement matter for emerging beauty/fashion brand; case settled on favorable terms.
- National Van Lines, Inc. v. National Vans Lines, Inc. (D. SC 2012). Lead plaintiff’s counsel in trademark infringement case for leading moving services company; obtained TRO and judgment in favor of client on all counts of the Complaint.
- Orbitz Worldwide, LLC v. Fareportal, Inc. (N.D. Ill. 2012). Represented online travel services provider in state/federal unfair competition matter arising from improper “keyword” advertising practices; case settled on favorable terms.
- Vienna Beef, Ltd. v. Red Hot Chicago, Inc. (N.D. Ill. 2011). Lead defense counsel in Lanham Act false advertising/trademark infringement case; defeated motion for temporary restraining order brought by plaintiff in June, 2011 (see 2011 WL 2516515).
- Checkpoint Systems, Inc. v. Checkpoints Mobile, LLC (N.D. Ill. 2011). Lead defense counsel in trademark infringement matter; negotiated favorable confidential settlement.
- Toys “R” Us Inc., et al. v. Smokes R Us of PA Corp. (M.D. Pa. 2011). Obtained judgment for plaintiff in trademark dilution case, including specific finding that client’s trademarks had achieved such “widespread fame” as to represent, collectively, a “global super brand” (see 2011 WL 2582899).
- Solutions From Science, Inc. v. Emergency Seeds, Inc. (N.D. Ill. 2010). Argued and obtained temporary restraining order, followed by consent judgment in favor of client, in trademark infringement/cybersquatting action.
- Starcom Mediavest Group, Inc. v. Mediavestw.com (N.D. Cal. 2010). Drafted cybersquatting complaint and obtained an ex parte temporary restraining order (TRO) based solely on moving papers, without need for oral argument (see 2010 WL 3564845).
- Unilever Canada, Inc. v. Wells Import, Inc. (N.D. Ill. 2010). Represented plaintiff in trademark/breach of contract case; obtained injunctive relief and judgment for client, plus a finding that the case is “exceptional,” entitling client to fees.
- Threshold Entm’t, Inc. v. Midway, Inc. (Bkrtcy D. Del. 2009). Represented Hollywood producer as plaintiff in adversary proceeding seeking declaration of client’s copyrights and Lanham Act rights in popular video game franchise.
- Better Gov’t. Ass’n, Inc. v. Better Gov’t Ass’n (N.D. Ill. 2009). Represented plaintiff in trademark infringement case, resulting in a favorable settlement and permanent injunctive relief against the defendant.
*Matters handled prior to joining Foley.
Awards and Recognition
- Recognized in trademark law by World Trademark Review in its “WTR 1000 – The World’s Leading Trademark Professionals”
- The Legal 500, Intellectual Property — Trademarks: Non-contentious, 2015
- The Legal 500, Media, Technology and Telecoms — Marketing and advertising, 2015-2016
- Super Lawyers, Illinois Rising Star, 2010-2023
Affiliations
- Member, Internet Committee, International Trademark Association (INTA)
- Member, American Bar Association
- Advertising and Marketing Law Committee
- Trademark Litigation Committee
- Copyright and Social Media Committee
- Member, Women in IP Law Committee, American Intellectual Property Law Association
- Member, Association of National Advertisers (formerly known as the Brand Activation Association)
- Served as REGGIE Award judge
- Member, Trial Bar, Northern District of Illinois
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