Erik C. Kane

Erik focuses his practice on litigation, licensing, and counseling in the trademark, copyright, and computer arts spaces.

Erik advises clients on patent, copyright, trademark, trade dress, and trade secret litigation before federal courts, state courts, the International Trade Commission (ITC), and the Trademark Trial and Appeal Board (TTAB). His litigation experience includes a full range of pre-suit diligence, discovery, depositions, motions practice, oral argument, trial, and appellate work, including at the US Supreme Court. He has served as first or second chair in a number of matters.

Erik also prosecutes copyrights and trademarks, as well as software patents, and prepares infringement and invalidity analyses and opinions in the fields of computer science, telecommunications, and Internet-based standards and services.

Erik works closely with clients to draft, structure, and negotiate intellectual property and technology contracts. He handles complex contracts such as joint development agreements, patent and technology license agreements, software and data licensing, SaaS agreements, trademark license agreements, open source software compliance, and IP and technology transfer agreements – often within the context of M&A transactions.

In addition to securing, protecting, and enforcing clients’ rights, Erik routinely counsels clients on other IP related matters including e-commerce, non-fungible tokens (NFT or NFTs), smart contracts, digital certificate technologies, token-based and biometric authentication, ICANN domain name Uniform Dispute Resolution Policy (UDRP) disputes, digital rights management, web services and end user license agreements (EULA), software licensing, compliance with the Children’s Online Privacy Protection Act (COPPA), website privacy policies, Consumer Product Safety Commission compliance, Federal Trade Commission (FTC) compliance, website disclaimers, and Digital Millennium Copyright Act (DMCA) compliance.

He is recognized for trademark enforcement and litigation by World Trademark Review 1000 (2023), and was named a Rising Star in the IP Stars Handbook by Managing Intellectual Property (2020-2022), as well as a Rising Star in IP in Washington, DC by Super Lawyers (2014-2019).

Early in his career, Erik served as a law clerk in the United States Court of Federal Claims and served in the DC office of United States Senator Arlen Specter of Pennsylvania.

Representative Experience

• Obtained dismissal of declaratory judgment action against the US Olympic Committee regarding trademarks, social media, and First Amendment issues. HSK LLC v.The United States Olympic Committee (D.Minn.)
• Pintrips Inc. in a major trademark infringement suit filed by social media and tech giant Pinterest. The Court ruled, after a bench trial, that the terms “pin,” “pinning,” and a “pin” button were fair use for travel website Pintrips, and not exclusive to Pinterest.
• Home Shopping Network, broadcaster of the well-known HSN television channel, Daystar Productions, and musician and on-air personality Stephen Paul (aka “Esteban”) in a trial jury were found not to willfully infringe the FISHMAN mark in a $25 million trademark suit brought by Fishman Transducers, Inc. in the District of Massachusetts. Helped convince the U.S. Court of Appeals for the First Circuit to uphold the lower court’s decision. Fishman Transducers, Inc. v. Stephan Paul, et al.
• Maker’s Mark in a high-stakes battle for the red dripping wax seal. In a case which has been closely followed by companies and trademark practitioners, the US Sixth Circuit Court of Appeals ruled that Maker’s Mark holds an “extremely strong” and enforceable trademark in the well known dripping red wax seal atop its bottles. The court affirmed an injunction prohibiting defendant Cuervo and its distributor from using a similar dripping red wax seal on its tequila products. Maker’s Mark Distillery v. Diageo, et al.