Overview

Charlie Henn concentrates his practice in the area of intellectual property litigation, regularly representing companies and universities in cases involving trademark, trade dress, and unfair competition claims. An experienced trial lawyer, he was co-lead trial counsel in the adidas v. Payless case, which resulted in the largest verdict ever in a trademark case ($305 million).

Mr. Henn has received numerous national and local honors recognizing his professional accomplishments, including being named by LawyersUSA as one of six “Lawyers of the Year” in 2008. He is annually listed as a leading intellectual property litigator by Chambers USA: America's Leading Lawyers for Business, The Best Lawyers in America®, Legal 500, World Trademark Review 1000, Super Lawyers and Georgia Trend. Recognizing his industry focus on protecting sports brands, Chambers USA also lists Mr. Henn as one of the nation’s top sports lawyers.

In 2010, he was the sole US winner of the International Law Office (ILO) Client Choice Award for Intellectual Property, which recognizes the top provider of client service on intellectual property matters. Mr. Henn also has been featured as a "Rising Star" by Law360 as one of five national intellectual property lawyers under 40 to watch; by Georgia Trend as one of the state’s “40 Under 40 Best and Brightest”; by the Atlanta Business Chronicle as one of the city’s “40 Under 40”; and by the Daily Report as one of the “Ten Lawyers Under 40 ‘On the Rise’” in Atlanta.

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Experience

Represented Major League Baseball Properties and the Chicago Cubs Baseball Club, LLC in a widely publicized lawsuit in federal court in Illinois claiming the defendants, vendors, were producing and planning to sell merchandise that infringed and counterfeited the trademarks of MLB and the Cubs. The Court granted both a temporary restraining order, authorizing the seizure and impoundment of the knock-off products, and a preliminary injunction prohibiting such sales.

Major League Baseball Properties, Inc. & Chicago Cubs Baseball Club, LLC v. Stevens et al., No. 1:16-cv-09140 (N.D. Ill. 2016).

Represented Sofa Express Inc. in a copyright infringement case.  In response to the firm's motion to dismiss order, the court rejected the plaintiff’s claim for punitive damages for copyright infringement.  Thereafter, the dispute was successfully resolved. 

Calio v. Sofa Express, Inc., 368 F. Supp. 2d 1290 (M.D. Fla. 2005).

Represented adidas-Salomon AG in a trademark litigation matter against Target Corp. involving athletic footwear. The court denied the defendant’s motion for summary judgment, upholding the strength of adidas’s Three-Stripe Mark and Superstar Trade Dress. Adidas-Salomon AG v. Target Corp., 228 F. Supp. 2d 1192 (D. Or. 2002).

Represented fourteen universities in trademark counterfeiting and infringement litigation against a company that sold counterfeit cheerleading uniforms and other unlicensed items bearing university trademarks. The court granted a temporary restraining order and authorized immediate seizure of the counterfeit merchandise, manufacturing supplies, financial records, and computer hardware from the defendants. The case subsequently settled on favorable terms, including entry of a permanent injunction and final judgment in favor of the universities. The University of Georgia Athletic Association, Inc. et al. v. Signature Diversified, Inc. et al., No. 4:12-CV-107 (N.D. Ga. filed May 8, 2012).

Successfully represented University of Kansas in a trial against JoeCollege.com, a retailer selling various apparel using colors and other indicia of the University. Obtained award of attorneys' fees. University of Kansas v. Larry Sinks, et al., 2008 U.S. Dist. LEXIS 23765 (D. Kan. 2008).

Represented the declaratory judgment defendant, adidas-Salomon AG, in an action denying motion to dismiss trademark counterclaims. ACI International Inc. v. Adidas-Salomon AG, 359 F. Supp. 2d 918 (C.D. Cal. 2005).

Represented adidas-Salomon AG in a trademark litigation matter. The court granted adidas's motion for summary judgment. Mad Hops, Inc. v. adidas-Salomon AG, No. C2-00-1445 (S.D. Ohio filed Dec. 26, 2000).

Served as lead counsel on behalf of Jan Voda, M.D., a cardiologist, in a patent infringement suit related to angioplasty catheters against Medtronic, Inc. and Medtronic Vascular, Inc., in the Western District of Oklahoma. After a two-week trial in January 2012, a jury found Dr. Voda’s patents to be valid and Medtronic willfully infringed. The jury awarded Dr. Voda a royalty rate of over 14 percent. Voda v. Medtronic, Inc. et al., No. 09-cv-95 (W.D. Okla filed Jan. 22, 2009).

Trial counsel for Jan Voda, M.D., a cardiologist, in a patent infringement suit related to angioplasty catheters against Cordis, a division of Johnson & Johnson, in the Western District of Oklahoma. After a two-week trial, a jury found Dr. Voda’s patents to be valid and Cordis willfully infringed. In August 2006, the court awarded Dr. Voda damages at a 7.5 percent royalty rate, double compensatory damages and attorneys’ fees. Voda v. Cordis Corp., 536 F.3d 1311 (Fed. Cir. 2008).

Represented four major universities and The Collegiate Licensing Company (CLC) in a trade dress infringement case. In an attempt to avoid the provisions of a prior settlement agreement, the defendant, a clothing provider, sold t-shirts and other merchandise bearing university colors that did not include any of the colleges’ registered marks. The firm secured a ruling rejecting the theory that school colors were aesthetically functional and that the defendant's use was "fair." After prevailing on summary judgment on the issue of liability for trademark infringement and unfair competition, we conducted a two-day jury trial on monetary relief. The plaintiffs recovered damages in the form of a reasonable royalty and an accounting of defendants’ profits. The defendants later appealed, and the Fifth Circuit unanimously affirmed. Louisiana State University v. Smack Apparel Co., 438 F. Supp. 2d 653 (E.D. La. 2006), aff'd, 550 F.3d 465 (5th Cir. 2008).

Represented adidas America Inc. and adidas-Salomon AG in trademark infringement litigation against Payless Shoesource involving the defendant’s infringing use of the well-known and distinctive adidas Three-Stripe Mark. Following a 14-day trial and two days of deliberation, the jury found unanimously in adidas' favor on all seven claims, including trademark infringement, trade-dress infringement, unfair competition and unlawful and deceptive trade practices. The jury awarded $305 million in monetary relief, including $137 million in punitive damages. This verdict was the largest in history for a trademark infringement case. Following entry of final judgment in excess of $60 million, the parties later settled for an undisclosed amount. adidas America Inc. v. Payless Shoesource Inc., No. CV01-1655 (D. Or. Nov. 11, 2008).

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Education

University of North Carolina School of Law, J.D. (1998) cum laude

Emory University, B.A., Political Science and French Literature (1995) summa cum laude

Admissions

Georgia (1998)

New York (2016)

Court Admissions

Supreme Court of Georgia

Georgia Court of Appeals

U.S. District Court for the Northern District of Georgia

U.S. District Court for the Middle District of Georgia

U.S. District Court for the District of Colorado

U.S. Court of Appeals for the Fourth Circuit

U.S. Court of Appeals for the Fifth Circuit

U.S. Court of Appeals for the Seventh Circuit

U.S. Court of Appeals for the Ninth Circuit

U.S. Court of Appeals for the Tenth Circuit

U.S. Court of Appeals for the Eleventh Circuit

U.S. Supreme Court

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Professional & Community Activities

Leadership Georgia, Class of 2013

Leadership Atlanta, Class of 2011

Marshall Memorial Fellow, Class of 2009

Coverdell Leadership Institute, Class of 2008

International Trademark Association

National Association of College and University Attorneys (NACUA)

Georgia Bar, Entertainment & Sports Law Section, Vice Chair (2007-2012)

The Federalist Society, President of the Atlanta Lawyers Chapter (2001-2006)

Emory University, Board of Visitors (2013-2016)

Theatrical Outfit, Board of Trustees (2008-2015) & Advisory Board (2015- Present)

ArtsATL.com, Board Member (2009-Present)

Flying Carpet Theater, Board Member (2003-Present)

Boys & Girls Clubs of Metro Atlanta, Board Member (2014-Present)

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