Anthony Malutta is Co-Leader of the firm’s Trademark & Copyright Team. Mr. Malutta advises leading brand owners regarding the acquisition, use and enforcement of rights under U.S. and international trademark and copyright laws. Mr. Malutta has a focused specialization in the management of large global trademark portfolios. Complementing Mr. Malutta’s brand counseling is his significant experience litigating intellectual property disputes in federal and state courts, as well as before the Trademark Trial and Appeal Board.
Mr. Malutta also maintains an active practice counseling clients on issues related to the Internet, including the development of comprehensive on-line brand protection plans, resolving domain name disputes, and advising clients regarding DMCA issues.
During law school Mr. Malutta spent a summer studying international commercial law at the University of Hong Kong. While studying in Hong Kong, he also gained broad exposure to Hong Kong's legal system through an internship with a local law firm.
In 2012, Mr. Malutta was recommended by Legal 500 US in the area of Trademark Litigation. Mr. Malutta was described as a "leading light" at Kilpatrick Townsend by World Trademark Review 1000 – The World's Leading Trademark Professionals in 2012, and he was again listed in its 2013 edition. Mr. Malutta was recognized as a 2013 "IP Star" by Managing Intellectual Property magazine.
Perfect 10, Inc. v. Google, Inc., Amazon.com, Inc., and A9.com, Inc., 416 F.Supp.2d 828 (C.D. Cal. 2006); aff'd in part 487 F.3d 701 (9th Cir. 2007). Defense of a suit alleging direct and secondary copyright liability and raising complex DMCA issues.
Mattel, Inc. v. Zappos.com, Inc., (C.D. Cal. 2006). Represented Zappos.com in a suit alleging infringement of the BARBIE trademark.
Flotsam of California v. Huntington Beach Conference and Visitor's Bureau, (N.D. Cal. 2006). Pro Bono representation of a small Santa Cruz retailer in defense of its right to use the geographically descriptive SURF CITY name.
Qwest Communications International Inc. v. Sonny Corporation, (W.D. Wash. 2006). Represented Qwest in a suit alleging trademark dilution caused by Defendant's use of the QWESTY trademark. Defendant's Motion to Dismiss for lack of personal jurisdiction denied. Qwest v. Sonny, 2006 U.S. Dist. LEXIS 29832 (W.D. Wash. 2006) (finding that a handful of sales of the product at issue into the jurisdiction sustained personal jurisdiction of an out of state defendant).
Dreyer's Grand Ice Cream, Inc. v. Unilever, (N.D. Cal. 2005) (T.T.A.B. 2005). Represented Dreyer's in co-pending District Court and TTAB proceedings regarding its SLOW CHURNED trademark.
Qwest Communications International Inc. v. Various Domain Name Infringers, (National Arbitration Forum 2003-2005). Successfully prosecuted over fifteen separate domain name arbitrations for Qwest.
Alstyle Apparel v. American Activewear, Inc., (C.D. Cal. 2005). Represented clothing manufacturer Alstyle in a trademark infringement action regarding a competitor's use of a similar mark.
Perfect 10, Inc. v. Visa International Service Association, MasterCard International, et al., 2004 U.S. Dist. LEXIS 27477 (N.D. Cal. 2004); aff'd 494 F.3d 788 (9th Cir. 2007), cert. denied, 128 S. Ct. 2871 (2008). Defended Visa in a suit alleging vicarious and contributory trademark and copyright liability for providing financial services to operators of websites that infringed plaintiff's copyrighted images. Motion to dismiss granted. Judgment affirmed on appeal.
Monster Cable Products, Inc. v. Ultralink, Inc., (N.D. Cal. 2003). Defended Ultralink in a trade dress and design patent case regarding audio/video cabling and related packaging.
Professional & Community Activities
American Intellectual Property Law Association (AIPLA)
Bar Association of San Francisco
California Lawyers for the Arts
International Anti-Counterfeiting Coalition
International Trademark Association (INTA)
INTA Anti-Counterfeiting Committee, 2010-present; Member, China Subcommittee
INTA Saul Lefkowitz Moot Court Committee: Member, Western Competition Sub-Committee, 2000-2006; Chair, Western Competition Sub-Committee, 2002-2003; Member, National Problem Sub-Committee, 2006-2009
San Francisco Intellectual Property Association