John maintains a diverse practice that includes intellectual property advice and litigation, business advice and transactions, and commercial litigation and appeals. On each matter, John seeks to deliver creative and cost-effective solutions by providing clear advice backed by careful research.
- Software companies and developers, including mobile app developers
- Creative firms
- Product designers, including clothing, apparel, homewares, and consumer products
- Medical device companies
- Manufacturers, wholesalers, and distributors
- Retail stores
- Business startups
- Government entities, including municipalities, counties, and tribal governments
- Freelancers, Artists, Musicians, and Authors
Litigation and Appellate Highlights
- Represented software company in copyright and trade secrets litigation against competitor, resulting in out-of-court settlement.
- Worked with appellate team to write briefs on behalf of grass seed purchaser in appeal to Oregon Supreme Court on issue of measure of damages and attorney fees due for breach of contract. Peace River Seed Co-op v. Proseeds Marketing, 355 Or 44 (2014).
- Part of the trial team that represented water district in election of contest lawsuit in Clackamas County Circuit Court, successfully defending its position on the legal status of district residents within annexed territory.
- Worked with team that defended political party from takeover and obtained dismissal of all claims at summary judgment stage.
- Drafted amicus brief filed in United States Supreme Court on behalf of Providence Health Plans in CGI Technologies v. Rose, 133 S.Ct. 1995 (2013) (relating to ERISA plan’s ability to obtain reimbursement from plan members).
- Wrote briefs to Oregon Supreme Court on behalf of county in successful appeal of trial court’s ruling that expanded the county’s contractual obligation to provide health insurance benefits to certain command officers. James v. Clackamas County, 353 Or 431 (2013).
- Prevailed in arbitration on breach of contract on behalf of architectural firm and successfully collected portion of judgment via garnishment.
Business and Intellectual Property Counseling Highlights
- Advises business owners on entity selection, liability protection, and key contractual relationships, including owner agreements, operating and management agreements, and agreements with contractors and employees.
- Drafts contracts necessary for new revenue generation, including international product distribution agreements and international sales representative agreements.
- Drafts master service agreements and statement of work agreements.
- Provides general advice about protecting and enhancing rights in branding, business ideas, creative expressions and works, and other investments in intellectual property.
- Performs intellectual property audits and develops intellectual property strategies for capitalizing on IP portfolios.
- Drafts nondisclosure and confidentiality agreements and advises clients on workplace strategies to protect trade secrets.
- Drafts employment policies and agreements related to intellectual property, including work-made-for-hire agreements.
- Performs state and federal trademark searches, clearance, registration, and maintenance to protect company names, logos, product lines, service names, slogans, and distinctive product features.
- Represents clients in trademark office actions in United States Patent and Trademark Office.
- Enforces trademark rights by implementing cost-effective and creative strategies ranging from cease and desist letters to collaboration with industry associations.
- Advises clients on domain name strategy, proactive domain name registration, and combating cybersquatters via Uniform Domain Name Resolution Policy arbitration proceedings and Anticybersquatting Cybersquatting Consumer Protection Act litigation.
- Advises clients on protecting original works by registering, copyrights in valuable expressive works, including books, music, company, literature, catalogs, manuals, handbooks, and software.
- Defends clients targeted in software audits.
John is admitted to practice in Oregon, the U.S. District Court for the District of Oregon, and U.S. Circuit Court of Appeals for the Ninth Circuit. He is a member of the Owen M. Panner Inn of Court, the Oregon State Bar, and the Multnomah Bar Association. John currently is serving on the Executive Committee for the Intellectual Property Section of the Oregon State Bar. He also volunteers for the Domestic Violence Volunteer Lawyers Project, where he helps victims of domestic violence obtain and enforce restraining orders.
John earned a J.D. from Lewis & Clark Law School, graduating magna cum laude. He also earned a B.A. in American Studies from the University of Kansas, graduating with highest distinction.
“Document Library to Protect and Capitalize on Intellectual Property,” HLGR Intellectual Property E-News (April 11, 2014)
“Q&A: When to Publicly Announce A New Business Idea or Product,” HLGR Q&A News (November 22, 2013)
“What is Crowdfunding? And, How Can it Help My Business?” HLGR Business News (August 14, 2013)
“Q&A: Crowdfunding,“ HLGR Q&A News (November 12, 2012)
“District of Oregon Tackles Personal Jurisdiction Involving Trademark Infringement on the Internet (Again) in L&A Designs, LLC v. Xtreme ATVS, Inc.,”Federal Bar Association Newsletter (Fall 2012)
“Q&A: Cloud Computing – Choosing a Vendor,“ HLGR Q&A News (July 12, 2012)
“Trademark Clearance is a Sound Business Decision for New Business Names or Product Lines,” HLGR Intellectual Property E-News (June 28, 2012)
“Nastygrams Can Backfire on Trademark Owners,” HLGR Intellectual Property E-News (May 1, 2012)
“Q&A: Internet Marketing,” HLGR Q&A News (July 8, 2011)
“The Friends of Yosemite Valley Saga: The Challenge of Addressing the Merced River’s User Capacities,” 39 Envtl. L. 833 (2009)
“New legislation limits garnishment of electronically-deposited public and retirement benefits,” Elder Law Section Newsletter (Oregon State Bar), April 2010 (co-authored with Leslie Kay).
“Big Data and the Law,” Oregon State Bar Intellectual Property Section Monthly IP Brown Bag CLE (July 2014)