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Simon Frankel specializes in complex civil disputes and copyright and trademark litigation, with an emphasis on the technology and consumer products sectors. He is co-chair of Covington’s Copyright and Trademark practice group and Managing Partner of the firm’s San Francisco office.
Mr. Frankel has led defense of numerous consumer class actions, including unfair competition and false advertising claims under California Business and Professions Code Section 17200. He has served as lead counsel to numerous Internet service providers in putative class actions asserting privacy claims where we obtained dismissals at the pleading stage.
Notably, Mr. Frankel led a Covington team that won a landmark trial victory for John Deere’s green and yellow color brand, obtaining the first ruling ever that a color trademark was famous for trademark dilution purposes and securing a broad permanent injunction.
In addition to his litigation practice, Mr. Frankel assists clients on a range of digital copyright and computer access issues, anti-counterfeiting efforts, and policy work before the U.S. Copyright Office.
He is also a recognized authority in the field of art law, where he has handled disputes involving cultural property claims, title issues, moral rights claims, and resale royalties and also advised on a range of fine art transactions. He teaches a class on Art and the Law at Stanford Law School. Mr. Frankel is recognized by Chambers as a leading lawyer in their Art and Cultural Law category.
- Lead counsel for John Deere in one-week bench trial enforcing rights in green and yellow color trademark on agricultural equipment, resulting in judgment for Deere on both infringement and dilution claims and entry of a broad injunction. The ruling was recognized by Law360 as one of the "Top 10 Trademark Rulings" of 2017.
- Represented chip manufacturer in arbitrated license dispute with software development partner.
- Counseled numerous clients on copyright issues related to intermediary liability, software development, and clean room issues.
- On behalf of numerous Internet service providers, obtained dismissals of putative class actions asserting privacy claims under Computer Fraud and Abuse Act, Electronic Communications Privacy Act, and Video Privacy Protection Act.
- Represented Microsoft in defeating numerous copyright infringement and intermediary liability claims concerning Bing search engine.
- Represented Samsung in defeating copyright and trademark claims concerning printer software.
- On behalf of the Museum of Fine Arts, Boston, defeated claims by parties seeking to attach Persian antiquities in efforts to enforce a judgment against Iran, Rubin v. Museum of Fine Arts, Boston (1st Cir. 2013), and claim to Austrian expressionist painting, Museum of Fine Arts, Boston v. Seger-Thomschitz (1st Cir. 2010).
- Obtained dismissal with prejudice at pleading stage of two cases against pharmaceutical companies alleging false advertising, unfair competition, and fraud claims. Jarrett v. InterMune (9th Cir. 2011); Ostergard v. Adams Respiratory Therapeutics, Inc. (C.D. Cal. 2008).
- Represented Corbis Corporation in numerous copyright enforcement matters concerning unauthorized use of visual images.
Pro Bono
- Filed numerous amicus briefs on behalf of Law Center to Prevent Gun Violence in support of constitutionality of restrictions on concealed carry of loaded firearms.
- Represented artist sued by Mattel for copyright and trademark infringement for using Barbie doll in artistic photographs—defeated preliminary injunction motion, prevailed on summary judgment (affirmed by the Ninth Circuit), and ultimately recovered over $2 million in fees and costs. Mattel v. Walking Mountain Productions, 353 F.3d 792 (9th Cir. 2003).
- State of California v. L.T. Represented defendant in criminal misdemeanor trial; acquitted on all charges.
- Represented historical society in copyright action concerning enforceability of contractual restrictions on public domain works; case settled favorably for society.
- Advised traditional letter press on copyright and trademark issues.
- Represented non-profit in obtaining temporary restraining order preventing use of confusingly similar trademark in political campaign.
Memberships and Affiliations
- Stanford Law School, Lecturer-in-Law (teaching Art and the Law) (2012-present)
- Giffords Law Center to Prevent Gun Violence, Board of Directors (2010-present)
- Berkeley Law School, Lecturer-in-Law (teaching Privacy Litigation (2017)
- San Francisco Arts Commission, Commissioner (2013-2019)
- American Law Institute (Member 2007-present) ; Advisory Group for Restatement of the Law of Copyright (2015-present)
- Copyright Society of USA, Member (Trustee, 2012-2015; Chair, Northern California Chapter, 2009-2012)
- American Bar Association
- State Bar of California
January 13, 2021, Covington Alert
There were several notable developments in the fourth quarter of 2020 affecting class actions. The Supreme Court is poised to decide whether a damages class can be certified when a large portion of the class lacks Article III standing. Multiple cases were decided relating to the interpretation and impact of arbitration provisions on class actions and other types ...
January 4, 2021, Covington Alert
On December 27, 2020, the Consolidated Appropriations Act of 2021 was signed into law.[1] Nestled among the much-publicized $2.3 trillion package for COVID-19 relief and appropriations are three significant reforms to copyright and trademark law. Here is what you need to know. 1. Trademark Modernization Act (“TMA”): Codified Presumption of Irreparable Harm, ...
October 6, 2020, Covington Alert
Covington's Class Action Litigation Group has assembled an update that highlights and discusses several notable developments in the third quarter of 2020 affecting class actions.
October 2020, Privacy Laws & Business
July 7, 2020, Covington Alert
There were several notable developments in the second quarter of 2020 affecting class actions. The Judicial Panel of Multidistrict Litigation will hold a hearing at the end of July on several requests to consolidate lawsuits related to the COVID-19 pandemic on an industry-wide basis. Courts issued important decisions addressing Article III standing and the ...
May 4, 2020, Covington Alert
As we continue to socially distance ourselves in light of the COVID-19 pandemic, we’re sharing copyrighted works in new ways and with increasing frequency. And while copyright probably isn’t the first thing on people’s minds as we navigate this “new normal,” these rapid changes in how we interact can raise a number of concerns about how copyrighted materials are ...
May 1, 2020, Covington Alert
There were several notable developments in the first quarter of 2020 affecting class actions. Courts issued important decisions addressing whether defendants could raise Article III standing or personal jurisdiction defenses to defeat the claims of putative class members. A federal court in California called one company’s efforts to avoid its arbitration ...
April 8, 2020, Covington Alert
As the world moves online during the COVID-19 pandemic, companies’ privacy and security practices are coming under increased scrutiny. Because class actions often follow such scrutiny, as demonstrated by lawsuits recently filed against Google and Zoom, companies should keep the following six developments on their radar as they rush to meet the demands of our new ...
March 25, 2020, Covington Alert
Piracy has long been a problem in America, although modern day pirates of intellectual property bear little resemblance to their old-school counterparts sailing along the Caribbean and the American coast. Yet in a ruling on Monday, March 23, the Supreme Court tied together the legacies of those two very different types of pirates: modern-day state governments ...
2020, The North Carolina Journal of International Law and Commercial Regulation
September 10, 2019, The Recorder
Iancu v Brunetti - ruling trademark community has its say on implications of momentous US Supreme Court decision
June 25, 2019, World Trademark Review
Simon Frankel is quoted in World Trade Review regarding the Supreme Court’s decision in Iancu v Brunetti, holding that the Lanham Act’s prohibition on the registration of “immoral” or “scandalous” trademarks violates the First Amendment. Mr. Frankel says, “registration of ‘disparaging’ trademarks – today's decision is not very surprising. The Court extended its ...
Spring 2019, The NYU Journal of Intellectual Property and Entertainment Law
Navigating the Ambiguities and Uncertainties of the Holocaust Expropriated Art Recovery Act of 2016
2019, Columbia Journal of Law & the Arts
Attorneys address the disputed future of Nazi-looted art
September 28, 2018, San Francisco Daily Journal
Simon Frankel participated in a conference called “Righting a Wrong: The Future of Nazi Looted Art” and is quoted in the San Francisco Daily Journal. Mr. Frankel says, “A museum faced with a restitution claim to a daily accessioned work cannot restitute the work unless it determines that the claim is well-founded.” He adds, “The institution must reasonably ...
Protecting Marks in the Modern World: Challenges and Practical Tips
September 25, 2018, Intellectual Property Owners Association's 46th Annual Meeting
February 2018, Data Protection Leader
January 10, 2018, San Francisco Business Times
Simon Frankel is quoted in a San Francisco Business Times article regarding the opening of Salesforce Tower, the new location of Covington's San Francisco office. "We are delighted to become one of the anchor tenants of the new Salesforce Tower, which is at the center of a flourishing area of downtown San Francisco," Frankel says. "This new building will allow ...
October 23, 2017
SAN FRANCISCO—Following a weeklong bench trial, the U.S. District Court for the Western District of Kentucky ruled in favor of Covington client Deere & Company in a trademark lawsuit involving the company’s iconic green and yellow colors. Since the early 20th century, Deere's agricultural equipment has almost all been painted in Deere's distinctive and ...
John Deere Wins TM Suit Against Green And Yellow Rival
October 17, 2017, Law360
Law360 highlights Covington's successful representation of John Deere in a trademark lawsuit involving the company's green-and-yellow color scheme. "Color trademarks are uncommon, and we are not aware of any color trademark case going through trial before this one," says Simon Frankel. "But John Deere has one of the strongest and most widely recognized color ...
June 20, 2017, Covington Alert
In a case that has drawn significant media attention for its potential effect on the Washington Redskins organization, the U.S. Supreme Court held on Monday, June 19, that the United States Patent and Trademark Office (“PTO”) cannot deny a trademark registration on the basis that the proposed mark may “disparage” “persons, living or dead, institutions, beliefs, ...
April 20, 2017, Law360
Earlier this month, in Maloney v. T3Media Inc.,[1] the Ninth Circuit held that former college athletes could not assert a right of publicity to prevent the NCAA and its licensee, T3Media, from distributing images of the players. The court ruled that the players’ right of publicity was preempted by Section 301 of the Copyright Act because photographs of the ...
March 30, 2017, Daily Journal
Simon Frankel and Peter Chen are quoted in a Daily Journal article regarding the arrival of Chen and Scott Kamholz to the firm’s Patent Office Trials Practice. According to Frankel, while the firm’s patent litigation activity spans the coasts, most of its patent office practice has been based in Washington D.C. Chen’s addition will help expand the firm’s patent ...
March 24, 2017, Covington Alert
In a highly anticipated copyright decision issued on March 22, the Supreme Court held that the designs on Varsity Brands’ cheerleading uniforms are eligible for copyright protection. In reaching that ruling, the Court set out a standard that aims to harmonize a multitude of tests across the country.
December 6, 2016, Covington Alert
On December 2, 2016, the English High Court ruled that the members of the band Duran Duran would be in breach of the contracts under which they assigned their publishing copyrights if they exercised their U.S. statutory right to terminate the transfer of the U.S. copyrights under section 203 of the Copyright Act. The case, Gloucester Place Music Limited v Simon ...
May 16, 2016, Covington Alert
In a decision closely watched by businesses that are the targets of consumer class action lawsuits, the U.S. Supreme Court confirmed that a plaintiff asserting a statutory claim must make a showing of particularized and concrete harm sufficient to establish Article III standing, even if the underlying statute provides for statutory damages without a separate ...
May 2016, MLRC Bulletin - Legal Frontiers in Digital Media
April 14, 2016, BNA’s Patent, Trademark & Copyright Journal
September 2015, Bloomberg BNA Class Action Litigation Report
March 10, 2015, Cov Africa
The economy in Sub-Saharan Africa continues to grow. A handful of the 10 fastest growing economies in the world are in Africa, it has the world’s greatest population of young people and the number of middle class consumers – estimated to be 350 million – is booming. With such a growing, promising market, comes great...… Continue Reading
December 12, 2014, Bloomberg BNA’s Patent, Trademark & Copyright Journal
Spring 2013, 23 DePaul Journal of Art, Technology & Intellectual Property Law 279
February 10, 2012, Stanford Law Review Online
Intellectual Property Rights, Moral Rights, and Resale Royalties for Artists
October 2007, Artists Legacy Foundation
Can Contract Expand the Protections of Copyright?
June 2007, Copyright Society, Northern California Chapter
Declaratory Judgments: A Field Guide for Navigating Infringement Accusations
May 2007, Rocky Mountain Intellectual Property & Technology Institute
Artistic License: A Look at Copyright and Contemporary Art
March 2007, Intellectual Property Law Section of the State Bar of California Conference, The Copyright Office Comes to California
Can a Museum Control Use of its Public Domain Collection Objects? Copyright, Licensing, and Reproduction Policies?
March 2007, ALI-ABA Legal Issues in Museum Administration Course
Covington Advises Barclays on Naming Rights Deal
January 19, 2007
WASHINGTON, DC, January 19, 2007 — Barclays has announced that it will pay an undisclosed amount for naming rights to the new Barclays Center located in Brooklyn, New York for a term of 20 years. Covington & Burling LLP advised Barclays on the transaction.The new Barclays Center is the core feature of the Frank Gehry designed $4 billion Atlantic Yards ...
- Chambers USA, Recognized as a leading lawyer in the Art and Cultural Law category (2020)
- Managing Intellectual Property "IP Stars," Trade mark - CA (2019)
- Best Lawyers in America, Recognized for Litigation - Intellectual Property (2012-2020)
- Legal 500 US, Recognized for Intellectual Property: Copyright; Trademarks: Litigation (2013-2017); Media, Technology & Telecoms: Marketing & Advertising and Technology: Data Protection & Privacy (2013)
- Burton Award for Distinguished Legal Writing (2015)
Practices
Education
Yale Law School, J.D., 1991
- Yale Law Journal, Book Review Editor
- Coker Fellow, Constitutional Law
Cambridge University, M.Phil., 1988
- History and Philosophy of Science, National Science Foundation Fellowship
Harvard University, B.A., 1986
- summa cum laude