Mark has over 27 years of experience litigating, arbitrating, mediating and resolving intellectual property disputes involving trademarks, trade dress, copyrights, counterfeiting, false advertising, franchise rights, the Internet and electronic commerce, domain names, technology, trade secrets, covenants not to compete, product disparagement and unfair competition claims; and commercial and business disputes including claims such as breach of contract, tortious interference, fraud, defamation, RICO and challenges to government contract awards. Mark also regularly counsels clients in the franchise industry on issues relating to franchise disclosure, regulation, contracts and system start up and modification.
Practice Team Leader - Franchise and Distribution Law
Chair - Pro Bono Committee
Representative Experience
Lone Star Steaks v. Lone Star Steakhouse & Saloon. Obtained preliminary and permanent injunctions and award of damages, profits, and attorneys fees in trademark infringement case for local restaurant chain against national restaurant chain.
PharmaNetics v. Aventis Pharmaceutical. Successfully defended Aventis against preliminary injunction motion on claims of false advertising of prescription drug product and disparagement of drug monitoring product; defended and obtained summary judgment on those claims and on additional claims of breach of contract, fraud, tortious interference, and unfair competition; affirmed on appeal to 4th Circuit.
Market Street Press v. Google. Defending Google against trademark infringement claims alleging that Google advertising tagline is cousing "reverse confusion" of the public.
Experienced in representing franchisors (including Shoney’s, Atlanta Bread Company, Wyndham, Ramada, Days Inn, Century 21 and Coldwell Banker) in litigating and resolving franchise, contract and business disputes, including suits to enforce termination of franchise, enjoin trademark and trade dress infringement, enforce restrictive covenants and trade secret rights, and recover damages, and defending against claims of fraud, wrongful termination, franchise disclosure violations and vicarious liability claims; and in counseling on franchising issues including those relating to disclosure, regulations, contracts, and developing and modifying frachise systems.
SunAmerica v. Sun Life Assurance Company of Canada. Led three-firm legal team representing SunAmerica in successful appeal of trademark infringement case involving cutting edge issues of acquiescence and “inevitable” confusion, and in successfully defending second trademark infringement suit between same parties involving multiple issues and 14 expert witnesses.
Fox SportSouth v. Turner Broadcasting System. Successfully defended TBS against lawsuit and preliminary injunction motion seeking to enjoin launch of new cable network as a breach of a contractual restrictive covenant.
Represented software designer and major shareholder in lawsuit for copyright infringement and breaches of contract and fiduciary duties arising from dispute over ownership and licensing of software program and business divorce, resulting in favorable settlement. Copyright claims presented complex issues involving ownership of copyrights for jointly designed software and scope of implied licenses.
Won trials for Georgia Lottery Corporation and for Hitachi Data Systems that successfully defended challenges by disappointed bidders to state government awards of multi-million dollar computer contracts.
Kyle v. Georgia Lottery and Scientific Games. Successfully defended Georgia Lottery and its ticket printer against trademark infringement claims challenging marks used on lottery tickets; obtained summary judgment on merits of claims and dismissal of Georgia Lottery on sovereign immunity grounds; affirmed by Georgia Court of Appeals and Supreme Court.
Homecare CRM v. PlayMaker. Repersenting software company in lawsuit against competitor involving competing claims of unfair competition, including trademark infringement (invovling keyword advertising), false advertising, misappropriation of trade secrets, defamation and tortious interference.
Bake One v. Greig Mare et. al. Representing manufacturer in lawsuit alleging RICO, Fraud, conspiracy, and related claims against former employees and vendors involved in bribery and kickback scheme.
Chick-fil-A v. Burger King; Chick-fil-A v. Team IP Sportswear. Obtained temporary restraining order, permanent injunctions, and award of damages and attorney fees in cases of copyright and trademark infringement and trademark dilution of “cow” advertising spokes-animals and “Eat Mor Chiken” marks.
U.S. Micro v. Atlantix. Represented computer reseller in trial of defamation, tortious interference, and RICO claims against competitor for false and misleading statements about reseller and computer equipment relating to 9/11 terrorist attack.
Represented Porsche Cars North America in litigation of trademark, trade dress and false advertising claims, including lawsuit against major U.S. auto manufacturer for unauthorized and disparaging use of Porsche 911 trade dress in television advertisement.
Reggie v. Star Editorial. Defended against copyright infringement claim for tabloid’s publication of Senator Ted Kennedy wedding photo, resulting in favorable settlement.
BellSouth v. Lambert Publishing. Successfully defended telephone directory publisher against competitor’s claims of false advertising, tortious interference, and trademark infringement, including successful defense of preliminary injunction motion.
Successfully represented numerous companies, including Southern Company, Mohawk Industries, CompuCredit, PGA TOUR, Georgia Pacific, Porsche and Randstad, in obtaining transfers of domain names, injunctions, and awards of damages and attorneys' fees through federal anticybersquatting claims and ICANN administrative dispute resolution procedures, or in otherwise successfully resolving claims and lawsuits involving Internet issues.
Presentations and Speaking Engagements
Generating Revenue: Advertising, Branding and Buzz, Media Law in the Digital Age Seminar (2011).
Termination and Alternatives to Termination, ICLE Franchise Law Seminar (2011).
Maintaining Trade Secrets and Enforcing Non-Competes After Termination, Southeast Franchise Forum (2010).
Building Your Brand at the Grassroots Level, International Franchise Association Webinar (2010).
Protecting and Enforcing Trade Dress, ABA Forum on Franchising (2009).
Developments in Technology and Internet Law, Atlanta Bar Association SpringPosium (2008, 2009).
Trademark and Intellectual Property Issues in Franchises, ICLE Seminar on Nuts and Bolts of Franchise Law (2007).
Fundamentals of U.S. Trademark Dilution Claims, International Trademark Association Annual Meeting (2004).
ABC’s of Trademark Infringement and Related Claims, PLI Seminar (2003).
Internet Policing and Enforcement, International Trademark Association Seminar (2000).
Building and Protecting Brand Identity on the Internet, Law Seminars International Seminar (2000).
Publications
"Law on Covenants Against Competition Shifts Towards Greater Enforceability," American Bar Association Franchise Law Journal (2011).
"Internet Trademark Issues Continue to Proliferate," The Atlanta Lawyer (2009).
"Copyright Protection: The Forgotten Stepchild of a Franchise Intellectual Property Portfolio," American Bar Association's Franchise Law Journal (2008).
“Protecting and Enforcing Franchise Trade Secrets,” American Bar Association’s Franchise Law Journal (2006).
IP Basics for Web Site Operation, published in World E-Commerce Report (2000).