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David J. Byer

Partner
Boston
+1.617.261.3115
Fax +1.617.261.3175

Primary Practice

Secondary Practices

Education

  • J.D., Stanford Law School
  • M.A., Cornell University, (Phi Kappa Phi)
  • B.A., The Johns Hopkins University, (Phi Beta Kappa)

Admissions

  • Bar of Massachusetts
  • United States Court of Appeals for the Federal Circuit
  • United States Court of Appeals for the First Circuit
  • United States District Court for the District of Massachusetts
  • Overview
  • Additional Background
  • Representative Work
Mr. Byer is a partner in the intellectual property practice group, focusing on trademark, trade dress, copyright, advertising, marketing, distribution, social media, internet, and publicity issues. He manages large, global trademark portfolios and assists clients to create, develop robust intellectual property assets. Mr. Byer also prosecutes and defends trademark, trade dress, copyright, trade secret, unfair competition, and licensing litigations in federal and state courts, and enforces and defends his client’s rights in opposition and cancellation actions in the relevant administrative bodies, including the United States Patent and Trademark Office and the Trademark Trial and Appeal Board. His clients are active participants in a wide-range of industries, including online gaming and esports, high technology, online retail, marketing, publishing, finance, manufacturing, medical devices, pharmaceuticals, entertainment and electronics,, as well as in the world of national and global non-profits. Mr. Byer represents both licensors and licensees of world-famous brands and content across this range of industries, and he counsels those clients on advertising, promotion, and marketing issues. Mr. Byer also advises clients on the complex issues of copyright and internet-based law, including questions concerning content, search, domain names, and fair use, and he counsels investors, underwriters and companies on enforcement and infringement risks.

Professional Background

Prior to joining K&L Gates, Mr. Byer was a partner in the patent and intellectual property practice group of a Boston law firm. Between 1993 and 2006, he was an adjunct faculty member at Boston University School of Law, where he taught Trademark and Unfair Competition Law.

Achievements

  • Listed in The Best Lawyers in America©, 2012-2018
  • Listed as a Massachusetts Super Lawyer, 2006-2018

Professional/Civic Activities

  • International Trademark Association
  • American Bar Association

Speaking Engagements

  • “But It’s My Name: Personal Names and the UDRP (Uniform Dispute Resolution Policy)” Table Talk Moderator, International Trademark Association, Seattle, WA,, May 2018
  • “What You See: Trademark Protection for Publicly Viewable Buildings and Structures.” Table Talk Moderator, International Trademark Association, Barcelona, Spain, May 2017
  • “Irreparable Harm After the Herb Reed (9th Cir.) and Ferring Pharmaceuticals (3d Cir.) Decisions,” Table Talk Moderator, International Trademark Association, Orlando, Florida, May 2016
  • “The Pom Wonderful Decision and its Ramifications,” Table Talk Moderator, International Trademark Association, San Diego, California, May 2015
  • "Interactive Game and Gamification Summit 2012," Legal Moderator, Seattle, Washington, November 2012
  • “Intellectual Property Year in Review 2011—Internet Law,” Boston Bar Association, Boston, Massachusetts, January 2012
  • “Creating and Protecting Global IP Assets,” European Venture Capital Association, Brussels, Belgium, October 2011
  • “User Generated Content and Contributory Liability for Infringement on the Internet,” Table Talk Moderator, International Trademark Association, San Francisco, California, May 2011
  • "Intellectual Property Year in Review 2010—Internet Law," Boston Bar Association, Boston, Massachusetts, January 2011
  • "Creating and Evaluating IP Assets," European Venture Capital Association, Kiev, Ukraine, November 2010
  • "Selling and Buying Keywords: Is It Infringement?" Boston Bar Association, Boston, Massachusetts, September 2010
  • "Creating and Evaluating IP Assets," European Venture Capital Association, Brussels, Belgium, June 2010
  • “Initial Interest Confusion,” Table Talk Moderator, International Trademark Association, Boston, Massachusetts, May 2010
  • "Who owns the Data?" MITX (Massachusetts Innovation & Technology Exchange), Boston, MA, April 2009
  • "Trademark Trial and Appeal Board," Boston Patent Law Association, Boston, MA, October 2008
  • "Venture Capital Securing and Defending IP Rights," European Private Equity and Venture Capital Association, Budapest, Hungary, October 2008
  • "Negotiating Software Licenses," National Association of Public Pension Attorneys (NAPPA), Boston, MA, June 2008
  • "Developing and Protecting Intellectual Property Rights," European Venture Capital Association Institute, Amsterdam, The Netherlands, April 2007
  • "Analysis of a Technology Licensing Agreement," Practising Law Institute (PLI), New York City, New York, March, 2007
  • "Developing and Protecting Intellectual Property Rights," European Venture Capital Association Institute, Budapest, Hungary, October 2006
  • "Analysis of a Technology Licensing Agreement," Practising Law Institute (PLI), New York City, New York, March, 2006
  • "What You Need to Know About Your Intellectual Property Rights," Benefit Advisors Network (BAN) Conference, West Palm Beach, FL, February 2006
  • "The Changing World of Intellectual Property Law," Financial Technology Forum (a division of Institutional Investor, Inc.), Boston, MA, November 2005
  • "Intellectual Property Law for the Business Owner--Who Owns it? How Can It be Protected?" MITX (Massachusetts Innovation & Technology Exchange), Boston, MA, November 2005
  • "Developing and Protecting Intellectual Property Rights," European Venture Capital Association Institute, Budapest, Hungary, October 2005
  • "Developing and Protecting Intellectual Property Rights," European Venture Capital Association Institute, Barcelona, Spain, April 2005
  • "Linux versus Windows versus UNIX: Comparing the Enterprise TCO and ROI," sponsored by The Yankee Group, Boston, Massachusetts, December 2004
  • "Hot Topics in Trademark Law 2004," Boston Patent Law Association, Boston, Massachusetts, November 2004
  • "Developing and Protecting Intellectual Property Rights," European Venture Capital Association Institute, Amsterdam, The Netherlands, November 2004
  • "Open Source Issues in M&A," sponsored by Globespan Capital Partners, Boston, Massachusetts, October 2004

Additional Information

Publications
  • “Dot Anything. Brand Owners Should Plan Now for ICANN’s gLTD Expansion,” Cyberspace Lawyer, Volume 16, Issue 11, December 2011
  • “The Second Remedy – Damages in Copyright and Trademark Cases,” Pursuing Remedies in Intellectual Property Cases, Massachusetts Continuing Legal Education, Inc., May 2002
  • “Product Design Trade Dress,” Protecting Product Designs, Massachusetts Continuing Legal Education, Boston, MA, February 2002
  • “The Protection of Product Designs Under §43A of the Lanham Act: Toward the Salutary Effect,” Advanced Copyright/Trademark Practice Seminar, American Intellectual Property Law Association, Boston, MA, June 2001
  • “Non-traditional Trademarks,” Trademark Laws: A Guide for the Experienced Practitioner, Massachusetts Bar Association, Boston, MA, October 1999
Litigation:
  • Stratus Technologies Bermuda LTD, et Uno v. Regal Maintenance Solutions, LLC, et Uno (U.S. District Court, District of Massachusetts) - Represented plaintiff fault tolerant computer manufacturer in trademark infringement, tortious interference, trade secret, and false advertising action.
  • Crowntyre America, LLC v. Bridgestone Brands, LLC (U.S. District Court, Southern District of Florida) - Represented declaratory judgment plaintiff tire distributor and counterclaim defendant in a trademark infringement action.
  • Sambonet Paderno Industrie, et al. v. Sur La Table, Inc. (U.S. District Court, Central District of California) - Represented defendant national retailer in product design trade dress infringement action.
  • Sur La Table, Inc. v. Sambonet Paderno Industrie, et al. (U.S. District Court, Western District of Washington) - Represented plaintiff national retailer in product design trade dress declaratory judgment action.
  • Shurtape Technologies, LLC and Shurtech Brands, LLC v. 3M Company (U.S. District Court, Western District of North Carolina) - Represented plaintiff tape maker in patent and trademark infringement action.
  • New England Automax, Inc. v. Pride Chrysler-Jeep, Inc. (U.S. District Court, District of Massachusetts) - Represent plaintiff automobile distributor in trademark infringement action.
  • Peter Benke v. Departure Agency, Inc., Expedia, Inc., Hotels.com, L.P. (U.S. District Court, Central District of California) - Represented online travel entities in copyright infringement action.
  • Rick Friedman v. Black Entertainment Television, LLC (U.S. District Court, District of Massachusetts) - Represented defendant television network in copyright case relating to photographs.
  • Stratus Technologies Bermuda, LTD. v. enStratus Networks, LLC (U.S. District Court, District of Massachusetts) - Represented plaintiff computer manufacturer in trademark infringement action.
Counseling:
  • TripAdvisor LLC. - Manage global trademark portfolio for online review and travel site; advise on copyright, trademark, trade dress, and related issues.
  • Valve Corporation. - Manage global trademark portfolio for online gaming and distribution company; manage numerous opposition and cancellation actions globally; advise on trademark and copyright issues; assist in global clearances and new product rollouts.
  • Polartec LLC. - Manage global trademark portfolio for technical fabric manufacturer; manage numerous opposition and cancellation actions globally; advise on trademark, copyright, advertising, promotion issues; manage global licensing portfolio; assist in global clearances and new product rollouts.
  • Stratus Technologies - Manage global trademark portfolio for this fault tolerant computer manufacturer; manage numerous opposition and cancellation actions globally.
  • zulily llc. - Manage global trademark portfolio for online retailer; advise on distribution issues; assist in global clearances and new product rollouts.
  • Sur La Table. - Counsel on trademark, trade dress, copyright, designs, design patent, and distribution.
  • Confidential. - Manage global trademark portfolio for several non-profit organizations in a number of fields, including gender equality, environmental investing, and poverty alleviation.
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