Jonathan D. Goins

Partner

  • location icon Atlanta, GA
    1180 Peachtree Street NE
    Atlanta, GA 30309

AV-peer rated by Martindale-Hubbell® for Intellectual Property, Jonathan Goins is a partner in the Atlanta office of Lewis Brisbois and a member of the firm’s Intellectual Property & Technology and Entertainment, Media & Sports Practices. With over ten years of experience, Mr. Goins has helped establish and enforce intellectual property rights for a wide range of clients, from Fortune 500 companies to entrepreneurial start-ups, in a variety of industries including technology, new media, entertainment, consumer goods, fashion apparel and sports. With an “A to Z” transactional to litigation skill-set, Mr. Goins provides strategic advice in negotiating IP-related rights in multi-million dollar corporate deals; manages large-scale trademark and copyright portfolio registrations; advises on social media and Internet issues; and litigates cases involving trademarks, copyrights and trade secrets. Mr. Goins has been recognized as a Georgia Super Lawyer “Rising Star” for Intellectual Property in 2013 through 2017, Georgia Trend’s Legal Elite in 2013, the National Bar Association’s top “40 Lawyers Under 40” in 2012 and the Atlanta Business Chronicle’s top “40 Under 40 Up & Comers” in 2010.

As a litigator, Mr. Goins has served as lead counsel in federal litigation nationally involving copyright infringement, trademark infringement, false advertising, unfair competition, cybersquatting, Internet libel and gripe sites, misappropriation of trade secrets, rights of publicity and related tortious claims. He has emphasized early resolution in dispositive motion practice and resolved contentious disputes involving multi-million dollar demands via arbitrations and mediations, often resulting in favorable negotiated settlement agreements.

As a counselor, and in efforts to mitigate litigious risk, Mr. Goins regularly advises clients in avoiding a multitude of potential pitfalls regarding IP issues in corporate transactions. He has prepared agreements with regard to ownership, indemnification, warranties, use and licensing of IP rights involving employees and consultants, joint ventures, technology, online services, research and development, advertising sponsorships and promotional rights, music, tv and film, global marketing campaigns, and major entertainment and sporting events. He has conducted IP audits, including due diligence in mergers and acquisitions. Mr. Goins has drafted and enforced confidential non-disclosure agreements, non-solicitation and non-compete agreements; trade secrets’ policies; and copyright “works made for hire” agreements. He has negotiated licenses for distribution content (including digital media and related technology) as an additional means of brand value monetization and advertising expansion. Mr. Goins has also advised on ambush marketing tactics and FTC advertising compliance.

Mr. Goins’ trademark matters in particular have covered all aspects of large-scale portfolio management (including global brand marketing strategy, search opinions, advertising clearance, prosecution and maintenance) and enforcement via franchise brand use and distribution compliance, cease and desist letters, negotiated licenses and settlements, and proceedings before the U.S. Trademark Trial & Appeal Board. His Internet-related IP matters have involved advising on website IP notices and disclaimers, preparing or responding to DMCA take-down notices, investigating anonymous libel postings, and resolving domain name/cybersquatting disputes via the ACPA and the World Intellectual Property Organization’s Arbitration & Mediation/UDRP Center. And specific to entertainment and sports, Mr. Goins has represented high-profile talent and production management agencies, sports agencies, professional athletes and entertainers involving endorsement deals; IP clearance and registration; business ventures; a variety of music, tv and film-related agreements; disputed royalties and commission of fees; and arbitrations over violations of regulations with major professional sports leagues and college athletic associations.

Mr. Goins is a frequent speaker and author on various topics regarding intellectual property, and lectures on copyright and trademark law as an Adjunct Professor at Atlanta’s John Marshall Law School. He was a Judicial Law Clerk to the Honorable Inez Smith Reid of the District of Columbia Court of Appeals.

Publications

  • Co-Author, The Air Jordan Rules: Image Advertising Adds New Dimension To Right Of Publicity-First Amendment Tension, 26 Fordham Intell. Prop. Media & Ent. L.J. 945 (Summer 2016)
  • Author, Intellectual Property Design Rights in Fashion, Navigating Fashion Law: Leading Lawyers on Developing Client Brands in a Changing Market and Monitoring Key Legal Developments (Aspatore/Thomson Reuters "Inside the Minds" Series), January 2016
  • Author, Intellectual Property Rights in Image Advertising, Understanding Sports Law (Aspatore/Thomson Reuters "Inside the Minds" Series), July 2014
  • Author, YMCA Reshapes Copyright Law, Copywrite Newsletter, State Bar of Georgia Entertainment & Sports Section, Fall 2013
  • Author, Emerging New Media Issues, The Computer & Internet Lawyer, Vol. 30, Jan 2013
  • Author, Jordan v Jewel Foods: Do the Shoes Make the Man?, Sports Marketing Quarterly Journal, Vol. 21, December 2012
  • Contributor, Sports Stars Seek Profit in Catchphrases, The New York Times, Thomas, K., December 9, 2010
  • Author, TTAB Re-examines Confusion Criteria for Spanish Word-Marks, World Trademark Review Daily, June 18, 2009
  • Author, Popular Toymaker Mattel Receives Augmented Profits In Trademark Case, World Trademark Review Daily, April 24, 2009
  • Author, The Trademark Dilution Revision Act of 2006 -- A Purported Win For Owners Of Famous Trademarks, National Bar Association Commercial Law Section Newsletter, Vol. 4, Winter 2007

Professional Presentations

  • The Mystery of Image Advertising and Monetizing of Persona Rights, Intellectual Property Law Institute CLE Seminar, March 2017
  • Preparing UDRP Complaints: Determining Registrant Rights, Providing Evidentiary Support of Bad Faith Registration and Use, Strafford Webinar Series, November 2016
  • Defending Intellectual Property & Advertising Injury Claims, Lewis Brisbois LLP’s Webinar Series, September 2016
  • IP Rights in the Fashion Industry, International Trademark Association (“INTA”) Annual Meeting, May 2016
  • Anti(trust) of Persona Rights, Intellectual Property Law Institute CLE Seminar, March 2016
  • Assessing and Protecting IP Rights in the Entertainment Industry, The New Global Paradigm for Entertainment, Arts and Sports Symposium, September 2015
  • Image Advertising and Rights of Publicity in Corporate Sponsorships & Promotional Marketing, Intellectual Property Law Institute CLE Seminar, March 2015
  • Important Court Decisions Impacting the Entertainment Industry, Black Entertainment & Sports Lawyers Association 34th Annual Conference, October 2014
  • Balancing Creativity with Caution: IP Considerations in Emerging Media and Promotions, National Bar Association’s 89th Annual Convention, July 2014
  • IP Boot Camp CLE, State Bar of Georgia’s Intellectual Property Section, October 2013
  • The (Dys)Functionality Defense in Trademark Law, Intellectual Property Law Institute CLE Seminar, March 2013
  • Trademark Litigation Update, The Knowledge Group CLE Webinar, March 2013
  • Exploiting Intellectual Property (Without Being Exploited) in the New Digital Age, National Bar Association 26th Annual Corporate Counsel Conference, February 2013
  • Distribution Rights in TV and Film, BronzeLens Film Festival, November 2012
  • Intellectual Property Issues in Amateur Athletics, Black Entertainment & Sports Lawyers Association 32nd Annual Conference, October 2012
  • Emerging Trends in IP & Technology, Association of Corporate Counsel-Georgia Chapter CLE Luncheon, June 2012
  • The Business of the Entertainment Industry, National Black MBA Association Entrepreneur’s Conference, May 2012
  • Avoiding Intellectual Property Pitfalls in Corporate Transactions, Institute for Intellectual Property & Social Justice 8th Annual CLE Seminar, March 2012
  • New Media & Technology: Intellectual Property In The 21st Century & Beyond, National Bar Association 23rd Annual Corporate Counsel Conference, February 2010
  • Alternative Fee Arrangements, State Bar of Georgia’s 17th Annual Diversity Program CLE Luncheon, September 2009

Admissions

Georgia

District of Columbia

U.S. Court of Appeals (Federal Circuit)

Southern District of New York (pro hac)

Northern District of Texas (pro hac)

District of Connecticut (pro hac)

Awards & Honors

  • AV Preeminent Rating, Martindale-Hubbell (2015-2017)
  • Georgia Super Lawyer Rising Star for Intellectual Property (2013-2017)
  • Law360 “Minority Powerbroker” (2015)
  • American Lawyer Media-Daily Report’s On the Rise (2014)
  • Georgia Trend Magazine's Legal Elite (2013)
  • National Bar Association's Top 40 Under 40 (2012)
  • Atlanta Business Chronicle’s Top 40 Under 40 Up & Comers (2010)
  • Outstanding Atlanta (2008)
  • Intellectual Property American Inn of Court, Barrister (2013-present)
  • Council on Litigation Management Alliance, Corporate Counsel Invitation Only (2013-present)
  • International Trademark Association, Internet Committee Member (2012-present)
  • National Bar Association's Commercial Law Section, Executive Board Member (2015-present)

Education

Howard University School of Law

Juris Doctor

University of Louisville

Bachelor of Arts

Legal Experience

  • Granted summary judgment on RICO conspiracy and trademark counterfeiting claims on behalf of a Florida-based marketing agency facing $24 million in damages' exposure, see Delta Airlines, Inc. v. John Wunder et al., No. 1:13-cv-3388 (N.D. Ga 2015)
  • Obtained over $616,000 award (including attorneys' fees) on summary judgment on behalf of a major luxury handbag designer involving trademark infringement claims, see Coach Inc. v. Chaos of Muncie, No. 1:11-cv-0505 (S.D. Ind. 2012)
  • Prepared pre-trial and post-trial motions involving Lanham Act claims for one of the world’s largest sports apparel company against a major retail store, which resulted in the largest verdict in any trademark case ($305 million), see Adidas v. Payless, No. 01-1655 (D. Ore. 2008)
  • Obtained precedential ruling in adopting the US Supreme Court’s eBay decision and holding that plaintiffs seeking preliminary injunction on trademark infringement claims can no longer presume irreparable harm, see Sturgis Motorcycle Rally, Inc. v. Mortimer et al., Case No. 2:14-cv-00175 (N.D. Ga 2015)
  • Resolved Internet-related infringement and cybersquatting activity for the likes of a Fortune 100 paper product company and the NCAA’s exclusive licensing agency via demand letters and UDRP proceedings, see, e.g., University of Arizona v. Gee Whiz et al., No. D2008-1543 (WIPO, Jan 2009)
  • Co-defended major sports agency and reputable agent in representation of notable NBA players of the Miami Heat in breach of contract claims involving over 20 million dollars, which after a three-day JAMS arbitration trial hearing resulted in an interim award of zero dollars and denial of all claims
  • Represented leading cloud-based technology software provider in successful settlement structured as a high six-figure licensing deal after asserting claims of copyright infringement, misappropriation of trade secrets, and breach of confidential non-disclosure agreement, see Stratis Business Systems Inc. v. Always Best Care Senior Services, Inc. et al, No. 9:13-cv-81049-KLR (S.D. Fla. 2014)
  • Obtained dismissal of Complaint regarding trademark infringement claims based on lack of personal jurisdiction and Rule 12(b)(6) grounds in representation of the world’s leading decorative paint expert, see Websters Chalk Paint Powder, LLC v. Annie Sloan Interiors, Ltd., No. 1:13-cv-2040 (N.D. Ga 2014)
  • Resolved favorably copyright infringement claims by popular wedding favors’ brand, Kate Aspen, against a reputable website seller, see The Aspen Brands Holding Company et al v. Wish Rocket, LLC, Case 1:16-cv-01208-AT (N.D. Ga. filed Apr. 2016)
  • Resolved favorably trademark infringement claims involving two restaurants, see Henry's Louisiana Grill, Inc. v. Henry's Midtown LLC, Case 1:15-cv-04423-RWS (N.D. Ga. filed Jan. 2016)
  • Successfully settled a breach of contract dispute (involving restrictive covenants and disputed commission fees) with a reputable sports agency involving over $3 million in contracts for several NFL professional players with the Philadelphia Eagles and Tampa Bay Buccaneers
  • Established protection of IP and persona rights, and negotiated various talent-related consulting and employment agreements, for celebrities, best-selling authors and commentators featured on ABC, BET, CNN, ESPN, FOX, HARPO, HBO, HLN, NBC and Netflix
  • Advised on corporate structure formation and brand protection of intellectual property assets, including establishing trademarks, for REVOLT TV, a new music cable television network launched by Sean “P Diddy” Combs
  • Negotiated favorable settlement for major international air-conditioning supplier accused of copyright infringement of certain photos of Beijing’s official site of the 2008 Olympics
  • Negotiated and revised multi-million dollar advertising and promotional sponsorship agreements for two Fortune 500 companies involving a global digital media marketing agency, the world’s leading mixed martial arts event holder, a major college athletic association, and a popular Hispanic magazine publisher
  • Negotiated and prepared promotional marketing campaign-related agreements, releases for user-generated videos, licenses for use of IP, and terms of use for website and mobile app for major international hotel brand with locations in New York, London, Australia, Malaysia and the Philippines
  • Managed and enforced global trademark portfolios for some of the world's most famous brands, including preparing large-scale search clearance opinions and applications, and resolving challenges in U.S. Trademark Trial & Appeal Board proceedings, see, e.g., Chrysler LLC v. Pimpo, Opposition No. 91171962 (TTAB July 2008) (upholding prior use of the RAMBLER® mark for automobiles)
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