Jennifer L. Barry

  • Partner
  • Ejennifer.barry@lw.com
  • 12670 High Bluff Drive
  • San Diego, CA 92130
  • USA
  • T +1.858.523.3912
  •  
 

Profile

Jennifer Barry, Deputy Office Managing Partner of the San Diego office and a Global Vice Chair of Latham & Watkins’ Intellectual Property Litigation Practice, represents clients in all aspects of general commercial litigation with a particular focus on intellectual property, including:

  • Trademark and trade dress infringement litigation, counseling, prosecution, and worldwide trademark portfolio management
  • Trademark licensing counseling and litigation
  • False advertising and unfair competition counseling and litigation
  • Copyright counseling and litigation
  • Trade secrets counseling and litigation
  • Defamation and right of publicity counseling and litigation

Ms. Barry offers clients extensive expertise in both procedural and substantive law, as she has successfully litigated before numerous federal and state courts as well as the Patent and Trademark Office's Trademark Trial and Appeal Board.

Ms. Barry regularly tackles internet law matters, and has successfully handled domain name portfolio management and recovery of domain names before the World Intellectual Property Organization, the National Arbitration Forum, and the ADR.EU Center of the Czech Arbitration Court.

She has also worked extensively on social networking and website/e-commerce issues and has been invited to speak on several panels in this area.

Ms. Barry’s renowned recognition includes:

  • The Legal 500 US 2012-2020 Recommended Attorney for Trade Secrets and Trademarks: Litigation
  • Profiles in Diversity Journal 2020 Women Worth Watching Award
  • San Diego Daily Transcript 2020 Influential Women of San Diego
  • WTR 1000 2020 Top Trademark Professional in California
  • Daily Journal 2018 Top Cyber/Artificial Intelligence Lawyer in California
  • The Recorder 2016 Women Leaders in Tech Law
  • Euromoney’s Expert Guide 2016 Expert Work in Trademarks

Ms. Barry actively participates in the International Trademark Association (INTA), and has served on the Internet Committee/Online Trademark Use Subcommittee, including the Keywords and Web 2.0 Working Groups.

Experience

Ms. Barry's representative client matters include:

  • Serving in a leading role for craigslist in a suit against website scrapers alleging violations of the Computer Fraud and Abuse Act, trespass, trademark infringement, copyright infringement, violations of the CAN-SPAM Act, and unfair competition. In its annual Top Verdicts of 2015 feature, the Daily Journal selected this case as a Top Plaintiffs’ Verdicts by Impact in California.
  • Serving in a leading role for America Chung Nam, Inc., the largest exporter of recycled paper in the US, as plaintiff in a three-week trade secret jury trial in Los Angeles, resulting in a judgment of US$18.1 million, including US$5 million in punitive damages. In its annual Top Verdicts of 2013 feature, the Daily Journal selected this case as a Top Plaintiffs' Verdicts by Impact in California.
  • Successfully represented LogMeIn, Inc. in a trademark infringement matter in Indiana
  • Safeway Inc. and its subsidiary Dominick’s Finer Foods in post-trial motions and the appeal of a jury verdict in a publicity dispute with Michael Jordan
  • Represented Yucaipa Companies in a trademark infringement and abandonment action involving Aloha Airlines
  • Behr in a trademark infringement lawsuit in federal court in California
  • City of Hope in a trademark infringement lawsuit in federal court in Kentucky
  • Symantec Corporation in a counterfeiting and trademark infringement case in federal court in California
  • Successfully representing the Ansel Adams Trust, in a trademark, copyright, and false advertising case in California
  • Successfully representing Paul Frank in a multi-country trademark infringement and counterfeiting lawsuit
  • Successfully defending Skullcandy in a trade secret lawsuit in Utah, as well as representing the company in several trademark cases
  • Prevailing on summary judgment on trademark and trade dress infringement claims in New York for Bare Escentuals
  • Successfully handling a multi-country trademark infringement lawsuit and related Trademark Office proceedings for Jurlique
  • First-chaired a seven-day state court jury trial involving professional negligence and successfully argued the appeal in front of the California Court of Appeal
  • Second-chaired a federal bench trial in July 2004 involving Title VII racial discrimination
  • Extensive experience in TTAB and domain name arbitration proceedings

Ms. Barry frequently writes, presents, and comments on IP-related topics. Her recent presentations include:

  • “Trademarks, Competitive Advertising, and AdWords – An Added Value, Liability, or Unnecessary Complexity?” Association of Corporate Counsel, 2017
  • “Fair Use and Infringement: Pinterest and Other Social Media,” Strafford Publications, 2016, 2014 & 2013 
  • “Don’t Defame Me Bro! Combating Anonymous Online Defamation Via Legal Action in California,” Association of Corporate Counsel, 2015
  • "Data Security Risks and Ethical and Fiduciary Obligations: Hot Topics and Latest Developments," Latham & Watkins Seminar, 2015
  • “You Lie! False Advertising Trends and Recent Supreme Court Cases,” Association of Corporate Counsel – San Diego, 2014
  • "Emerging Trademark Threat @ Twitter, Facebook, MySpace," Strafford Publications, 2012-2009
  • “Pin This: Copyright and Other IP Issues with Pinterest and Similar Social Media,” Association of Corporate Counsel – San Diego, 2013
  • "Introduction to Domain Names and Cybersquatting," Association of Corporate Counsel – San Diego, 2012
  • “Trademark Tips for Adopting and Using New Brands (a.k.a. How to Keep the Peace With Your Marketing Department),” WBT Innovation Marketplace, 2012 and Association of Corporate Counsel – San Diego, 2012
  • “Watch What You Tweet: Perils of Using Social Networking Sites,” Association of Corporate Counsel – San Diego, 2009
  • Mentioned in the April 02, 2015 Law360 article "Craigslist Submits $2.1M Judgment Deal In Site Scraping Suit"
  • Quoted in the August 15, 2014 San Diego Business Journal article "You Can't Take it With You"
  • Quoted in the October 14, 2013 Daily Journal article "Godfather Director Sues a Coppola Wine Seller"
  • Quoted in the July 9, 2013 Daily Journal article “Alcohol Industry’s Use of Social Media”
  • Quoted in the April 30, 2013 San Diego Daily Transcript article “Social Media Use Can Lead to Ethical Dilemmas”
  • Quoted in the February 2010 Daily Journal article “Social Media Creates New Challenges”

Thought Leadership

  • Supreme Court: “Generic.com” Trademarks May Be Registered if Consumers Do Not Perceive Them as Generic -  July 29, 2020
  • Supreme Court: Willfulness Not Required for Profits Awards in Trademark Infringement Actions -  May 06, 2020
  • 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
  • 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
  • 5 Lessons Learned as the Defend Trade Secrets Act Turns One -  May 17, 2017
  • 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
  • One Link Too Many: Trademark Office Rejects Advertising Brochure as Point-of-Sale Display -  January 01, 2015
  • Reading Between the Lines: Navigating the Native Advertising Landscape -  January 01, 2015
  • Ruling Gives IP Fee-Shifting Provision More Teeth -  December 08, 2014
  • California Supreme Court Defines Scope of Advertising Injury Coverage -  August 21, 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
  • 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
  • Pinning Down Pinterest: Addressing Copyright and Other IP Issues -  October 22, 2013
  • Protecting Against Trademark Infringement on Social Media -  September 06, 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
  • 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
  • Recent Developments in Trademark Law - Fall 2011 -  September 01, 2011
  • Recent Developments in Trademark Law -  April 29, 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
  • Was That a Yes or a No?: Depositions in the YouTube Era -  November 1, 2010
  • Was That a Yes or a No?: Depositions in the YouTube Era -  June 2, 2010
  • When Consumers Get Confused -  April 1, 2010
  • Protecting Your Rights in 140 Characters or Less: Trademark Protection on Twitter -  June 16, 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
  • Credit Security Statute Spins Off Class Actions -  April 16, 2007
Ms. Barry is recognized as a leading Trademark Litigation and Trade Secrets lawyer by The Legal 500 US, which describes her as a "significant figure in the market" and an “expert in domain name matters.” Clients appreciate her "creative thinking, broad knowledge" and "dedication," as well as her “level of service, attention to detail, quality of writing and sound business advice.”The Legal 500 US
Bar Qualification
  • California
Education
  • JD, Duke University School of Law, 2003
  • MBA, University of Texas at San Antonio, 1996
  • BA, Duke University, 1993
Industries
  • Technology
Practices
  • Intellectual Property Litigation
  • Litigation & Trial Practice