Shanti Sadtler Conway

Copyright Litigation

• Ferguson, et al. v. Epic Games & Take-Two Interactive Software, Inc., et al. (C.D. Cal., D. Md., E.D. Pa.): Represented video game makers Epic Games and Take-Two in ten first-impression litigations brought by individuals asserting copyright, right of publicity, and trademark claims relating to the use of dance moves in video games, eight of which plaintiffs voluntarily dismissed after defendants filed their motions to dismiss. Won motions to dismiss claims in the other two suits related to unauthorized use of likeness, misappropriation of publicity and identity, unjust enrichment, unfair competition, false designation of origin, state law trademark infringement and trademark dilution. The cases received extensive media attention, including in connection with Shanti being named a "Rising Star" by Law360, “Sports & Entertainment Trailblazer" by The National Law Journal and "Litigator of the Week" by The Am Law Litigation Daily.
• Rentmeester v. Nike, Inc. (D. Or., 9th Cir., S. Ct.): Won motion to dismiss, and affirmance thereof, for Nike in copyright litigation alleging that Nike’s famous “Jumpman” logo and photograph of Michael Jordan infringed plaintiff photographer’s rights. Also defeated Rentmeester’s motion for rehearing or rehearing en banc to the Ninth Circuit and certiorari petition to the U.S. Supreme Court. The Ninth Circuit’s opinion became the court’s leading decision on substantial similarity and meaningfully clarified issues such as the inverse ratio rule.
• Toys “R” Us, Inc. Bankruptcy (Bankr. E.D. Va.): Represented Toys “R” Us, Inc. and several of its direct and indirect subsidiaries in connection with copyright ownership and licensing issues relating to source code and database in the company’s Chapter 11 bankruptcy proceeding.
• Cengage Learning, Inc. Bankruptcy (Bankr. E.D.N.Y.): Represented Cengage Learning, Inc., a leading educational content, software and services company for the academic, professional and library markets worldwide, in connection with copyright ownership issues of first impression in its prearranged Chapter 11 bankruptcy case.
• Julie Taymor, et al. v. 8 Legged Productions, LLC, et al. (S.D.N.Y.): Defended 8 Legged Productions, the producer of the Broadway musical Spider-Man: Turn Off the Dark against copyright infringement, breach of contract, and related claims brought by the show’s former director and co-book writer, Julie Taymor.
• Taylor v. Victoria's Secret Stores, Inc. (W.D. Tenn.): Defended Victoria's Secret in a copyright infringement suit regarding its DESIRE brand and advertising, including winning a motion to dismiss copyright infringement claims based on lack of substantial similarity.

Trademark Litigation

• Delta Air Lines v. Marriott (N.D. Ga., T.T.A.B., and foreign trademark proceedings): Representing Delta in asserting claims against Marriott for infringement and dilution based on Marriott’s “Delta Hotels” brand of hotels. Won dismissal of Marriott’s counterclaim and vast majority of defenses on summary judgment, as well as won numerous motions to compel during discovery.
• Trademark Litigations Relating to Leading Consumer Electronics Company (I.T.C., W.D.N.Y., and 2d Cir.): Successfully defended leading consumer electronics and technology company in case involving issues of descriptive fair use and likelihood of confusion. Won summary determination on dilution claim before complainant voluntarily terminated investigation in I.T.C. investigation. Won summary judgment on all claims and Daubert motions for same company in related district court litigation, and affirmance thereof before the Second Circuit.
• Trademark Opposition Relating for Leading Consumer Electronics Company (T.T.A.B.): Won trial before the Trademark Trial and Appeal Board on behalf of leading consumer electronics and technology company. After trial and oral argument, the T.T.A.B. found that the opposer did not have prior trademark rights, and thus that our client’s trademark applications could proceed to registration.
• RGN-US IP LLC, et al. v. WeWork Companies Inc. (N.D. Tex. and T.T.A.B.): Represented WeWork in litigation alleging that its use of “HQ by WeWork” infringed plaintiffs’ rights to the alleged mark “HQ,” wherein WeWork counterclaimed that the mark was invalid and sought cancellation before the T.T.A.B. on the grounds of genericness, abandonment, and fraud on the Patent and Trademark Office.
• SoulCycle Inc. v. The Color Run, d/b/a Soul Pose, et al. (S.D. Cal.): Represented SoulCycle in litigation alleging that defendants’ use of SOUL POSE and SOULBAND in connection with yoga events around the country infringe SoulCycle’s rights to its extensive family of SOUL and SOUL-formative marks.
• Certain Footwear Products (I.T.C. and Fed. Cir.): Represented Converse in proceeding seeking to bar a group of defendants from importing into the U.S. footwear that infringes and dilutes Converse’s famous midsole trademark for its Chuck Taylor All Star shoes. Obtained several exclusion orders preventing importation of infringing shoes, and won a remand from the Federal Circuit in a precedential decision relating to issues implicating other shoes, which was recognized in 2019 by Managing Intellectual Property as a Milestone Case in the U.S.
• The Travelers Co. v. Legal & General Group Plc, et al. (D. Conn.): Represented the Travelers Indemnity Company in litigation alleging that Defendants’ use of umbrella logos in connection with insurance and financial services infringed and diluted Travelers’ famous red umbrella trademarks, including winning motion to compel production of communications Defendants alleged were privileged.
• Treefrog Developments, Inc. v. Seal Shield, LLC, et al. (S.D. Cal.): Won preliminary injunction for Treefrog (d/b/a LifeProof) in trademark infringement litigation about the LIFEPROOF mark for protective cases and covers for electronic devices.
• Humanly Possible, Inc. v. Manpower Inc., et al. (N.D. Ill.): Won pre-discovery summary judgment dismissing all claims against Manpower and its affiliate. Plaintiff alleged that Defendants’ advertisements using the descriptive tag line “is humanly possible” infringed its HUMANLY POSSIBLE mark. After denying Plaintiff’s motion for a preliminary injunction the Court denied Plaintiff’s motion for summary judgment and granted Defendants’ cross-motion, finding there was no likelihood of confusion.

False Advertising Litigation

• Euro-Pro Operating LLC v. Dyson, Inc. (D. Mass.): Represented Dyson in false advertising action regarding suction performance and carpet cleaning superiority claims. 
• McNeil-PPC, et al. v. Glaxosmithkline Consumer Healthcare L.P. (S.D.N.Y.): Defended Glaxosmithkline against preliminary injunction regarding advertising of Flonase® Allergy Relief.
• NAD Proceedings: Represented top consumer products companies in various proceedings before the National Advertising Division of the Council of Better Business Bureaus, including proceedings relating to oral care, hand drying technologies, and infant nutrition products.

Transactional, Counseling, and Non-Litigation Enforcement Matters

• Trademark License Agreement: Represented hospitality brand in connection with license agreement governing use of trademarks, trade dress and copyrights for new high-profile hotel.
• J.K. Rowling Copyright and Trademark Advice: Representing J.K. Rowling in copyright and trademark matters regarding the famous Harry Potter series and other works.
• Vista Equity Partners Intellectual Property Advice: Representing Vista Equity Partners in trademark and other intellectual property matters, including worldwide trademark prosecution and enforcement against third parties.
• False Advertising Advice for Product Launch: Advised Fortune 500 pharmaceutical company on potential false advertising issues associated with launch of new OTC product.
• Trademark Coexistence Agreement: Represented start-up in negotiations regarding trademark coexistence agreement, which allowed client to register and use mark.
• Trademark Strategy for Hotel Brand: Advised international hotel brand on global trademark clearance and strategy.