Perry J. Viscounty

  • Partner
  • Eperry.viscounty@lw.com
  • 650 Town Center Drive
  • 20th Floor
  • Costa Mesa, CA 92626-1925
  • USA
  • T +1.714.755.8288
  •  
  • 505 Montgomery Street
  • Suite 2000
  • San Francisco, CA 94111-6538
  • USA
  • T +1.415.395.8126
  •  
 

Profile

Perry Viscounty is a nationally recognized trial attorney who handles high-stakes cases for companies ranging from Fortune 100 to emerging companies. He handles intellectual property and technology litigation with an emphasis on complex jury trials.

Mr. Viscounty has been recognized as a leading trial lawyer in:

  • Legal 500 as a Recommended Lawyer for Intellectual Property 2018
  • Chambers Global for USA, Intellectual Property: Trademark, Copyright & Trade Secrets 2013, 2015 - 2019
  • Chambers USA for California Intellectual Property: Trademark, Copyright & Trade Secret 2008 - 2019
  • The National Law Journal as an Intellectual Property Trailblazer 2018
  • Daily Journal, ranked among the Top Intellectual Property Lawyers in California (multiple years)
  • World Intellectual Property Review as a Leader 2017
  • The Recorder as Litigation Groundbreaker 2017

Mr. Viscounty is a Fellow of the Litigation Counsel of America, a member of the International Trademark Association, and an arbitrator for the World Intellectual Property Organization. He has been a guest lecturer at USC and UCLA, and has taught numerous seminars regarding effective presentations for jury trials and arbitrations.

Experience

Mr. Viscounty's experience includes representation of: 

  • America Chung Nam, Inc., the largest exporter of recycled paper in the US, in a three-week jury trial in Los Angeles resulting in a judgment of US$18.1 million for his client. In its annual Top Verdicts of 2013 feature, the Daily Journal selected this case as a “Top Plaintiffs’ Verdicts by Impact” in California
  • Tesla in a US$2 billion trade dress case
  • Apple in several trademark cases
  • craigslist in a suit alleging breach of contract, copyright infringement, and violations of the CAN-SPAM Act and the Computer Fraud and Abuse Act, resulting in a permanent injunction and judgment of US$60.5 million in favor of our client craigslist
  • craigslist in a lawsuit alleging breach of contract and violations of the CAN-SPAM Act, resulting in a permanent injunction and judgment of US$31 million in favor of craigslist
  • craigslist in a data protection and privacy lawsuit against numerous defendants in the Northern District of California, SF Division. Obtained judgment of US$3.1 million and a permanent injunction. Named to the Top Verdicts of 2015 by the Daily Journal
  • Buzz Off Insect Shield in a five-week jury trial in North Carolina successfully defending against trademark infringement, false advertising, and unfair trade practices claims (S.C. Johnson & Son, Inc. v. Buzz Off Insect Shield, LLC et.al.)
  • The Waterfront Hilton Hotel in a four-month trial in Orange County, California
  • Adobe against trademark and trade dress infringement, dilution, false designation of origin, copyright infringement, and unfair competition claims
  • Allergan in a trademark infringement, unfair competition, and false advertising case
  • GE in several lawsuits and arbitrations
  • One of the world's largest automobile makers in a global intellectual property dispute 

Additional representative clients include Paula Abdul, Allianz, Bank of America, Boeing, Broadcom, Capital Group Companies, Carlyle Group, Cartier, Chrome Hearts, City of Hope, Cooper Companies, craigslist, Eddie Bauer, Ecko, Entrepreneur Media, FileNet, Frank Gehry, Fred Segal, Gap, Goldman Sachs, Guthy-Renker, Intel, Intuity Medical, JP Morgan, Lyft, Mattel, Mikasa, Mont Blanc, Mossimo, Nestlé, NHR, Nissan, Oakley, Office Depot, Old Navy, Omicom, Paul Frank, Remedy, Robb Report, Rockwell Collins, Saban Brands, Santa Barbara Polo Club, Schiff Nutrition, Sepracor, Skullcandy, Sony, Spectrum Pharmaceuticals, St. John Knits, Symantec, TiVo, Trion Worlds, US Soccer Federation, VeriSign, Veritas, Vizio, Volcom, Wet Seal, Western Digital, and Wikia.

Thought Leadership

  • Supreme Court Blocks Copyright Infringement Claims Until Actual Registration Issues -  April 08, 2019
  • Trademark Renewal Risks: Lessons on Declarations of Continued Use and Fraud Claims -  February 28, 2018
  • Federal Circuit Ruling May Trigger New Wave of Trademark Applications -  January 10, 2018
  • REMINDER: Electronic (Re-)Registration of DMCA Agent Required By December 31 -  November 13, 2017
  • Ownership: Who Owns a Trademark When the Relevant Contract is Silent? -  October 24, 2017
  • Chinese Website Operator Dismissed from Copyright Infringement Suit in United States -  June 01, 2017
  • New DMCA Agent Registration Rules Essential to Section 512 Immunity -  December 06, 2016
  • Ninth Circuit Applies Octane Fitness’ Loosened Fee-Shifting Standard to Trademark Cases -  November 15, 2016
  • New Game Plan: Federal Circuit Decision May Revive "Redskins" Trademarks -  March 07, 2016
  • Combating Online Anonymous Defamation -  August 12, 2015
  • It Isn’t Personal: In California, You Can Assign Your Right of Publicity -  March 30, 2015
  • Trademark Tacking: Supreme Court Decides Who Decides -  February 5, 2015
  • Reading Between the Lines: Navigating the Native Advertising Landscape -  January 01, 2015
  • Ruling Gives IP Fee-Shifting Provision More Teeth -  December 08, 2014
  • 3D Printing: A New Technology Challenges the Existing Intellectual Property Framework -  October 01, 2014
  • How 9th Circ. B&N Case May Impact Website Terms Of Use -  September 29, 2014
  • POM Wonderful Decision: Companies Cannot Rely on FDCA for Protection from False Advertising Liability -  June 30, 2014
  • Ruling Extends Trade Secret Protection to Ideas -  June 26, 2014
  • EU Trademark Office Proclaims Black and White Are No Longer Colors  -  March 18, 2014
  • Fluid Trademarks: All Fun, or Some Risk? -  February 01, 2014
  • Trade Secret Protection Plans: Guarding Against IP Theft -  January 15, 2014
  • Win or Lose, Prepare to Pay the Government’s Attorney’s Fees -  January 14, 2014
  • Watch your mark – navigating the prohibitions on immoral, scandalous and disparaging trademarks -  December 01, 2013
  • 8 Key Revisions To Chinese Trademark Law -  November 25, 2013
  • Can You Own Trademark Rights Without Use? You Can if You're the New York Yankees -  July 01, 2013
  • Washington Redskins Have Time on Their Side in TM Dispute -  June 19, 2013
  • Fine Timing For The Washington Redskins' Trademark -  May 22, 2013
  • Launch of New Generic Top Level Domains – The Trademark Clearing House Offers Two New Services to Trademark Owners to Protect Their Brands -  April 03, 2013
  • Can You Own Trademark Rights Without Use? You Can if You're the Yankees -  April 01, 2013
  • U.S. Supreme Court Rules "First Sale" Doctrine Applies to Foreign-Made Goods -  March 20, 2013
  • When to Limit Preservation of Digital Communication -  October 30, 2012
  • Spiders, Crawlers and Bots, Oh My: The Basics of Website Scraping -  October 18, 2012
  • Recent Developments in Trademark Law - Fall 2012 -  September 01, 2012
  • Intellectual Property Issues in Online Advertising -  May 01, 2012
  • Viacom V. YouTube — DMCA Implications -  May 01, 2012
  • Recent Developments in Trademark Law - Fall 2011 -  September 01, 2011
  • Recent Developments in Trademark Law -  April 29, 2011
  • Recent Developments in Trademark Law - Winter 2011 -  January 01, 2011
  • How Discoverable Is Social Media Content? -  December 10, 2010
  • How Discoverable is that MySpace Message? Recent Ruling on Social Networking Sites and Discovery -  December 7, 2010
  • When Consumers Get Confused -  April 1, 2010
  • Patent Litigation Update: Recent Decisions by the U.S. Supreme Court & the Federal Circuit -  March 1, 2010
  • Copyright Case Analysis: Football Association Premier League Ltd. v Youtube, Inc., 2009 -  August 1, 2009
  • Trademark as Keyword: It’s Use, But Is It Confusing? -  April 17, 2009
  • Copyright and Trademark Reform: Enactment of the Prioritizing Resources and Organization for Intellectual Property Act of 2008 -  March 4, 2009
  • Social Networking and the Law: Virtual Social Communities Are Creating Real Legal Issues -  March 1, 2009
  • A Roadmap for the Wary Advertiser -  August 14, 2007
  • Credit Security Statute Spins Off Class Actions -  April 16, 2007
  • Patent Reform in the 110th Congress -  February 13, 2007
  • Lessons from Paris Hilton v. Bardia Persa et al. -  February 9, 2007
  • New Law Regarding Credit Card Receipts Results in Numerous Class Action Lawsuits -  January 31, 2007
  • Trademark Dilution Revision Act of 2006 -  October 31, 2006
  • Common Sense Can Help File-Sharing Sites Protect Themselves -  October 4, 2006
  • Brand New Game - Burgeoning In-Game Ad Market Raises Interesting Legal Issues -  August 21, 2006
  • Google Thumbnails Finger IP Issues -  June 22, 2006
  • Patent Auctions: Emerging Trend? -  May 3, 2006
Ranked for California Intellectual Property: Trademark, Copyright & Trade Secrets. Quoted sources say "We are extremely impressed; his knowledge of IP law, negotiation skills and experience are all key," adding "he is extremely responsive to all requests."Chambers USA 2018
Bar Qualification
  • California
Education
  • JD, University of Southern California Gould School of Law, 1987
  • BS, University of Southern California, 1984
Industries
  • Communications
  • Hospitality, Gaming & Leisure
  • Information Technology – Systems & Solutions
  • Internet & Digital Media
  • Life Sciences
  • Semiconductors
Practices
  • White Collar Defense & Investigations
  • Intellectual Property Litigation
  • Emerging Companies
  • Litigation & Trial Practice
  • Complex Commercial Litigation
  • False Claims Act
  • Advertising & Marketing Regulation
  • Entertainment, Sports & Media