Erica J. Van Loon

/My focus

I have successfully litigated complex cases in both state and federal courts and on appeal. My experience extends across a wide range of industries, including entertainment and media, apparel and footwear, toys and video games, beauty and personal care, food and beverage, consumer electronics, software applications, hardware, semiconductors, and wireless and telecommunications, among others.

In addition, I counsel public and private companies and individuals on IP protection, enforcement, and defense strategy.

I enjoy working with clients to understand the ins and outs of their business in order to tailor a winning legal strategy that also makes business sense.

/Representative experience

• Won a bench trial for Reuben Klamer, the author of the iconic board game, The Game of Life, on the issue of copyright ownership, which was affirmed unanimously on appeal by the First Circuit. The court was persuaded that plaintiff’s late husband’s work on the prototype of the game was a work for hire for Mr. Klamer. The court held unequivocally that Mr. Klamer was the author of the game and the owner of the copyright on it.
• Represented Correlated Magnetics Research, LLC v. Logitech in a patent infringement matter concerning magnet technology used for iPad cases. The case settled favorably on the eve of discovery. Correlated Magnetic Research, LLC v. Logitech, Inc. (N.D. Cal.)
• Represented Defendant Target Corporation and its manufacturers in a patent infringement matter concerning exercise equipment. The matter settled favorably.
• Represented Vanessa Hudgens, an American actress, entrepreneur, and singer, in a suit filed against SBLA Beauty relating to violations of rights of publicity, unfair competition, and false advertising. Achieved amicable early settlement. Vanessa Hudgens v. SBLA Inc. et al. (C.D. Cal.)
• Won summary judgment for British Broadcasting Corporation and affiliated entities in two lawsuits involving trademark infringement and dilution of the famous Dancing with The Stars trademarks and breach of and interference with BBC’s contracts with its professional dancers by defendants’ competing live dance shows. Won partial summary judgment for plaintiffs, including a complete dismissal of defendants’ contract interference and trademark cancellation counterclaims and dismissal of defendants’ affirmative defenses of trademark genericism and abandonment. Gutting of defendants’ claims and defenses on summary judgment led to the matter being resolved with a Consent Judgment and Permanent Injunction against defendants.
• Defended DECA International Corp. and GolfzonDECA in a patent suit filed by SkyHawke Technologies, LLC, involving 11 patents related to golf GPS devices. Obtained a complete dismissal with prejudice after winning favorable claim construction rulings finding 9 patents invalid or non-infringed. SkyHawke Technologies, LLC et al v. GolfzonDeca, Inc. et al. (CDCA)
• Defended DECA International Corp. and GolfzonDECA, in a false advertising suit filed by SkyHawke Technologies, LLC, related to golf GPS devices. Won motion to dismiss, dismissing 15 of 21 claims pleaded. The case settled on favorable terms on the eve of trial. SkyHawke Technologies, LLC et al v. GolfzonDeca, Inc. et al (CDCA)
• Won partial summary judgment for Conan O’Brien, his production company, head writer, and the TBS network, finding no copyright infringement as to certain monologue jokes used on the Conan O’Brien show.
• Won summary judgment for Roche invalidating three Stanford HIV test patents for obviousness, ending Stanford’s multimillion dollar patent infringement suit. Won the case on appeal to the Federal Circuit and before the en banc court on rehearing, and won decisive victory in favor of Roche in the U.S. Supreme Court.
• Won a targeted summary judgment of non-willfulness for VIZIO against Razor USA, LLC in a trademark infringement and dilution matter. The summary judgment victory propelled the case to settle on the eve of trial, with plaintiff dropping its damages claim and agreeing to buy VIZIO’s trademarks.
• Won summary judgment for Nero against JVC Kenwood, finding nine JVC optical disc patents noninfringed due to patent exhaustion and express release. The Federal Circuit affirmed the summary judgment in Nero’s favor.
• Won summary judgment for plaintiff authors against executives of the Los Angeles Unified School District for copyright infringement and contributory copyright infringement.
• Achieved complete dismissal for Lionsgate and Morgan Creek and its producers and writers in a copyright and trademark infringement matter concerning the Tupac Shakur biopic film, All Eyez On Me. Plaintiff dismissed the suit after receiving a Rule 11 Motion for sanctions for filing and continuing to litigate a frivolous suit.
• Won TTAB Appeal for Tropicana Las Vegas reversing examiner’s refusal to register mark BACIO for restaurant services on the ground that it was confusingly similar to the registered mark KISS for the iconic band’s restaurant.
• Achieved multiple consent judgments and permanent injunctions for SHFL Entertainment, Inc. against competitors in the casino and online gaming industries who infringed SHFL’s copyrights, trademarks, and patents.
• Achieved injunction and substantial compensation on the eve of trial against competitor in the plush toy industry for violating the trade dress of client’s core product line.
• Won defense victory for Nike in its landmark trademark case against Adidas over Nike’s right to use two stripes on athletic apparel; Adidas filed a broad “covenant not to sue” releasing Nike from all alleged past and present trademark claims, and committing not to sue Nike over any two-striped athletic apparel or shoes throughout the United States.
• Achieved no-money settlement for car parts retailer in hard-fought suit brought by famous car maker involving numerous design patents and trademarks.
• Successfully enforced Harley-Davidson’s famous Bar & Shield trademarks against competitors in the insurance industry.

/Looking ahead

As generative AI offerings continue to evolve, I am ready to help clients successfully handle IP counseling, infringement, misappropriation of trade secrets and publicity rights, and privacy matters in this developing landscape.

/Insights

Presentations

• “Overcoming New Trademark Challenges,” WIPR Trademarks North America Conference, September 6, 2024 (Panelist)
• “Keynote Presentation: The State of the Entertainment Industry—Fireside Chat with Tania Kricfalusi and Erica Van Loon,” LAIPLA Spring Seminar Retreat May 4, 2024 (Moderator)
• “Digital Content: IP And Music Rights: Compensation, Valuation And Division Issues,” Los Angeles County Bar Association Family Law Symposium, May 13, 2023
• “Navigating Fair Use: A Survey of Today’s Legal Landscape,” Nixon Peabody 2023 California MCLE Virtual Seminar, January 19, 2023 (Panelist)
• “Causation Pitfalls for Experts in Intellectual Property Matters,” LAIPLA Spring Seminar Retreat, May 22, 2022 (Panelist)
• “Intellectual Property Rights in the Metaverse,” Spring Copyright and Trademark Program—Intellectual Property Rights in the Metaverse, April 26, 2022 (Moderator)
• “Best Practices for Creators and Sharers of IP Protected Works on Social Media,” Korea Trade-Investment Promotion Agency (KOTRA), Webinar, March 18, 2022 (Speaker)
• “Trademark Law Basics,” Bet Tzedek Legal Services and SIPA Entrepreneur Training Program, January 11, 2022 (Speaker)
• “Fun, Games & Legal Claims: Exploring the Intersection of Copyright in Video Games,” The Copyright Society of the USA Midwinter Meeting, Feb. 15, 2020 (Panelist)
• “Best Practices on Trademark Consumer Survey Admissibility,” For the Defense, DRI, August 2019 (Speaker)
• “State of Intellectual Property,” Lathrop GPM Webinar, June 3, 2020 (Speaker)
• “COVID-19’s Impact on Hollywood Deal-Making,” 2020 Association of Media and Entertainment Counsel Webinar, April 21, 2020 (Moderator/Speaker)
• “Keynote Fireside Chat with Regan Smith, General Counsel and Associate Register of Copyrights for the U.S. Copyright Office,” LAIPLA Spring Seminar, April 27, 2019 (Moderator)
• “Emerging Trends in Trademark Remedies,” 2019 USC Intellectual Property Institute (Moderator)
• “Wait, Can I Post That?! Navigating the Use of IP Protected Works Online,” Korea Trade-Investment Promotion Agency (KOTRA) and Korean Intellectual Property Office (KIPO) Intellectual Property Strategies Seminar, November 7, 2018 (Speaker)
• “Common Pitfalls of Trademark Expert Reports and Survey Evidence,” LAIPLA Spring Seminar, May 5, 2018 (Moderator)
• “Moderator, Decide and Conquer: A Closer Look at the ITC versus Federal Court,” 2018 USC Intellectual Property Institute (Moderator)
• “Different Ways to Think About Differences: Understanding and Interrupting Implicit Bias in the 21st Century,” USC Intellectual Property Institute’s Women in IP, March 21, 2017 (Moderator)
• “Fashion Forward: A Look at the Legal Issues Found in the Fashion Industry,” Association of Media and Entertainment Counsel’s Women Who Lead (Panelist)
• “Digital Media Joint Ventures: The Tug of War,” University of Tennessee Law School’s Entertainment Law Conference (Speaker)
• “When the Follower Becomes the Leader—The Expanding and Innovative Roles of Games, Toys, Songs, and Merchandising as Originators of Filmed Expression,” University of Tennessee Law School’s Entertainment Law Conference (Speaker)
• “Avoiding IP Pitfalls in Corporate Transactions,” National Association of Minority and Women Owned Law Firm’s Annual Conference (Moderator)

Publications

• “Supreme Court rules that copyright infringement damages can be recovered beyond three years,” NP Client Alert, May 20, 2024 (co-author)
• “Best practices for using AI in design, artwork, and illustration,” NP Client Alert, Sep 25, 2023 (co-author)
• “SCOTUS clarifies recovery of extraterritorial damages under Lanham Act,” NP Client Alert, July 7, 2023 (co-author)
• “SCOTUS clarifies use of the First Amendment defense in Jack Daniels Properties v. VIP Products LLC,” NP Client Alert, June 13, 2023 (co-author)
• “SCOTUS reins in the fair-use defense in the commercial context,” NP Client Alert, May 22, 2023 (co-author)
• “Jury sides with Hermès in MetaBirkins trademark infringement lawsuit,” NP Client Alert, Feb 10, 2023 (co-author)
• “NFT Litigation Raises Novel Copyright Questions,” BloombergLaw.com, September 27, 2022 (co-author)
• “Insurance Tips for Employers,” Attorney At Law Magazine, Vol. 7, No. 2, April 2021 (co-author)
• “Rebranding Culturally Insensitive Marks,” The Korea Times, September 18, 2020 (published in Korean)
• “Upcoming U.S. Supreme Court Intellectual Property Cases in Fall 2020,” The Korea Times, September 4, 2020 (published in Korean)
• “SCOTUS Opens the Door for ‘.com’ Trademark Protection in USPTO v. Booking.com,” Attorney At Law, July 6, 2020 (co-author)
• “Best Practices on Trademark Consumer Survey Admissibility,” For the Defense, DRI, August, 2019
• “Game of Life Copyright Dispute Meets ‘Day of Reckoning,’” Law.com, January 2019 (Featured)
• “Getting the Right Fit: Tailoring Off-the-Rack Insurance to Cover IP Disputes,” Landslide magazine, ABA section of Intellectual Property Law, 2018
• “Copyright Terminations in Full Swing,” M/E Insights, 2013
• “Case Closed on Open Sources,” Los Angeles Daily Journal, 2008
• “The Signs of Our... Users? Considering Contributory and Vicarious Liability for Trademark and Copyright Infringement,” Trademark World, 2008
• “Trader of Development Rights Turns 40,” Journal of Planning and Environmental Law, 2007
• “Protecting Car Design Internationally: A Comparison of British and American Design Laws,” 24 Loy. L.A. Int’l & Comp. L. Rev. 475 (2002)