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Scott Douglass
Shareholder at Baker, Donelson, Bearman, Caldwell & Berkowitz, PC
Scott M. Douglass is a shareholder in Baker Donelson's Memphis office and a member of the firm's Intellectual Property Group.1 He represents clients across the country in matters involving trademarks, trade dress, copyrights, software, design patents, and other intellectual property.1
Douglass focuses his practice on:
- Litigation: He litigates trademark, trade dress, copyright, and design patent claims in federal courts nationwide.1
- Licensing: He advises companies on trademark, copyright, and patent licensing agreements.1
- Intellectual property prosecution: He assists clients with brand protection and registration at the U.S. Patent and Trademark Office (USPTO).1
Some of his notable achievements include:
- Defeating a motion for a temporary restraining order and preliminary injunction against a music festival client.1
- Achieving favorable settlements in federal trademark infringement cases.1
- Successfully pursuing a motion for sanctions against a defendant in a federal trademark infringement case.1
- Registering more than 100 trademarks with the USPTO.1
Before his legal career, Douglass worked as a legislative aide to two United States Senators and studied Arabic in the Middle East.1 He joined Baker Donelson as a shareholder in the intellectual property group in Memphis in 2022.23
Douglass holds a JD from Wake Forest University, which he received in 2012.2
Highlights
What do Bette Midler, Vanna White, and Marylin Monroe have in common? Each of these pop culture icons were involved in litigation that has shaped the legal world’s understanding of an individual’s right of publicity, and that right is under new scrutiny with the rise of generative artificial intelligence. "As GenAI continues to evolve, there is a growing consensus that the framework for publicity rights must be updated to address the unique challenges this technology brings." It was fun to work with Dominic Rota and Rebecca Villanueva on this article, and even more fun to see it get published by IPWatchdog, Inc.
If you're going to license a patent, make sure the patent exists.....Last week a federal judge issued an injunction to prohibit a patent owner from "making bad-faith, objectively false assertions of infringement" to potential customers and licensees. While the main takeaway is that a patent owner should not over-state its patent rights when soliciting licensees or asserting infringement, there is another practice pointer for any business considering whether to license a patent for a key product: Make sure the patent you are licensing is valid and discloses the invention that you think you are licensing. In this instance, the asserted patent had not even issued yet, and when it did issue, it did not cover the goods the licensee thought were covered. The business paid $240,000 in royalties before finally receiving a legal opinion that the license was not even necessary. Better late than never, but I bet they'd like that quarter of a million dollars back! https://lnkd.in/eXkFTpuq
