Overview

Joe Petersen focuses his practice on litigating copyright and trademark cases involving new technologies and business models. In addition to his broad copyright and trademark litigation experience, Mr. Petersen possesses substantial experience in representing clients before the Trademark Trial and Appeal Board. Mr. Petersen also routinely counsels clients on the protection, enforcement and licensing of their intellectual property assets.

Mr. Petersen represented the library defendants in the suit brought by The Authors Guild and other plaintiffs against the HathiTrust Digital Library, a collaboration of more than 60 colleges, universities, and other nonprofit institutions that have pooled their collections of digitized books for the limited purposes of search, preservation and access for the print-disabled. Mr. Petersen also represents a leading wireless telecommunications company and recently helped secure a victory from the Ninth Circuit which held, among other things, that the carrier defendants had no duty to implement a Digital Rights Management system to filter allegedly infringing content exchanged over their networks. See Luvdarts, LLC et al. v. AT&T Mobility, LLC, 710 F.3d 1068 (9th Cir. 2013). Previously, Mr. Petersen defended independent music label Naxos of America from unfair competition claims and common law copyright claims asserted by Capital Records. That matter was ultimately certified by the Second Circuit to the New York Court of Appeals regarding questions of the reach and scope of common law copyright under New York state law.

Mr. Petersen is listed in the 2017 and the four immediately preceding editions of Chambers USA: America’s Leading Lawyers for Business for Intellectual Property: Trademark & Copyright. Chambers noted that Joe Petersen “is rapidly gaining an enviable reputation as a “terrific copyright lawyer” and “has a strong practice in the protection and enforcement of trademarks” (2013). Mr. Petersen served as co-chair of the New York Chapter of the Copyright Society and regularly publishes on copyright related issues. Mr. Petersen was recommended for his copyright expertise in the prestigious 2011, 2012, 2013, 2014, 2015 and 2016 Legal 500 US and in 2011, Mr. Petersen was praised as “well regarded” for his knowledge of “cutting edge” copyright issues. Mr. Petersen was similarly praised in the 2008 Chambers USA: America's Leading Lawyers for Business for IP Trademark Copyright as being "well versed in copyright and trademark infringement claims, trade secret litigation and domain disputes." Mr. Petersen was recognized as an "IP Star" in 2017 and the four years immediately preceding by Managing Intellectual Property magazine. Mr. Petersen was recognized in 2017 and each of the four years immediately preceding as a New York "Super Lawyer" in the area of Intellectual Property by Super Lawyers magazine. He is listed in the 2018 edition of World Trademark Review 1000 – The World's Leading Trademark Professionals. Mr. Petersen is AV® rated by Martindale-Hubbell.*

In order to best serve his clients, Mr. Petersen divides his time between Kilpatrick’s Menlo Park and New York offices. Mr. Petersen can be reached in Kilpatrick’s Menlo Park office (650.614.6427) or in our New York office (212.775.8715).

*CV, BV, and AV are registered certification marks of Reed Elsevier Properties Inc., used in accordance with the Martindale-Hubbell certification procedure's standards and policies.

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Experience

Defended a global mobility company in copyright infringement litigation alleging that mobile network carriers were liable for unauthorized sharing of plaintiffs' greeting card style MMS messages over their networks. The Ninth Circuit held, among other things, that the carrier defendants had no duty to implement a Digital Rights Management system to filter infringing content exchanged over their networks.

Undeterred, the plaintiffs reformulated their case as an antitrust class action against defendants. The antitrust team with support from the copyright team again successfully defended client against the reformulated claims.

See Luvdarts, LLC v. AT&T Mobility LLC, 710 F.3d 1068 (9th Cir. 2013).

Represents a Fortune 100 financial services company in trademark license negotiations and copyright issues. 

Represented a leading jewelry design firm in connection with copyright litigations filed against numerous infringers of client's valuable copyrights.

Represented leading independent music label with litigation and mediation in connection with claims brought by music label relating to pre-1972 music recordings.

The firm served as co-lead counsel for AT&T Mobility in connection with a rate court proceeding commenced by the American Society of Composers, Authors and Publishers in connection with performance of music on wireless devices and the Internet. Case was resolved by settlement.

Represented Hachette Filipacchi Media US Inc., a leading publisher of fashion magazines, in connection with lawsuit arising from termination of license agreement in New York.

Represents leading manufacturer of waterproof, breathable fabric in connection with the enforcement of the company's trademarks.

Represents a California-based Fortune 500 multinational corporation that designs and manufactures consumer electronics and computer software products in trademark enforcement work, including lead counsel representation of client in multiple proceedings before the Trademark Trial and Appeal Board.

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Education

Vanderbilt University, J.D. (1996)

State University of New York, University at Albany, B.S. (1991) summa cum laude

Admissions

California

New York

Court Admissions

U.S. Court of Appeals for the First Circuit

U.S. Court of Appeals for the Second Circuit

U.S. District Court for the Eastern District of New York

U.S. District Court for the Southern District of New York

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

U.S. District Court for the Central District of California

U.S. District Court for the Southern District of California

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Professional & Community Activities

Copyright Society of the USA, Trustee

Copyright Society of the USA, Northern California Chapter, Co-Chair

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