Michael J. Powell

Michael J. Powell, shareholder in the Firm's Atlanta office, concentrates his practice in business matters involving intellectual property. Having practiced intellectual property law since 1991, his extensive experience includes representing businesses in transactional and litigation matters concerning patent, trademark, trade dress, copyright, trade secret, unfair competition, false advertising, false marking, antitrust and related issues.  Mr. Powell is a registered patent attorney and a frequent lecturer on intellectual property issues.

Focus Areas of Practice

Intellectual Property Transactions

• Patents
  • Protecting Design and Utility Inventions; Evaluating Patents and Prior Art; Developing Cost-Effective Strategies for Building and Managing Patent Portfolios.
• Trademarks
  • Protecting Trademarks, Service Marks and Trade Dress (Product Configurations); Brand Acquisition, Development and Management Strategies; Evaluating Secondary Meaning and Likelihood of Confusion.
• Copyrights
  • Protecting creative expression; Evaluating Infringement Allegations, Fair Use Defenses and First Amendment Rights.
• Trade Secrets
  • Identifying and protecting trade secrets; Counseling as to appropriate safe-guards for trade secrets and proprietary information.
• Business Agreements
  • Assignments; Licensing; Distribution; Franchise; Software; Research; Development; Marketing; Advertising; Joint Venture; Investors; Employees; Non-Competition; Non-Disclosure/Confidentiality Agreements (NDA's); Settlements; Releases; Sponsorships; Websites.
• IP Audits and Due Diligence

Intellectual Property Litigation

• Patent, Trademark and Copyright Infringement
• Unfair Competition and False Advertising under the Lanham Act
• Misappropriation of Trade Secrets
• Deceptive Trade Practices
• Antitrust Issues
• Breach of Contract
• Business Disputes  

Representative Business/Transactional  Matters

• Corporate Restructuring – Counsel to several U.S.-based suppliers of overseas products in corporate restructuring to accommodate new partner(s), investors and/or distributors while protecting intellectual property rights.
• Software Development – Counsel to clients engaged in software development including mobile phone and tablet applications.
• Online and Social Media Marketing – Counsel to clients undertaking online advertising and social media marketing.
• International Manufacturing – Counsel to foreign manufacturers introducing products and/or services into the U.S. in view of competitors' patents.
• Financial Services Software – Counsel to U.S. publicly traded financial services company in acquiring foreign-developed software for use in the U.S. and further development of U.S. and foreign versions of the software.
• Pharmaceutical Patents – Advised compounding pharmacy in acquiring rights to make, use and sell certain patented technology and formulations for pharmaceuticals.
• Licensing Agreements – Assisted client in purchase of assets and intellectual property from licensor/distributor and in amending license/distribution agreement to maintain product distribution in U.S. while distributor reorganized to improve cash flow.
• Patent Infringement Advice – Counsel to U.S. publicly traded financial services company to determine risks of infringement of competitor's patents posed by client's proposed product enhancements.
• Intellectual Property Rights – Counsel to Marine Shipyard and Oilfield Contractor with regard to acquiring, enforcing, licensing and selling intellectual property rights.
• Food and Beverage Intellectual Property – Advised food packaging client in protecting intellectual property rights in acquisition by publicly-traded global food and beverage products manufacturer.
• Financial Intellectual Property – Intellectual Property Counsel to dynamic Real Estate Investment Trust (REIT) client operating in North America.
• Retail Apparel Intellectual Property – Protected brand management company in acquiring, defending, registering and licensing trademark portfolios in retail apparel, footwear, furniture, kitchen goods and home accessories. Represented client in transactions and/or litigation through the U.S. Patent & Trademark Office, the Trademark Trial & Appeal Board and U.S. Bankruptcy Courts. 

Representative Litigation Matters

• Patent Trolling Litigation – Counsel to many U.S. and International companies in defense against patent infringement litigation initiated by patent trolling companies.
• Intellectual Property Litigation – Consulting expert for customer relationship management (CRM) software owner in U.S. District Court case for infringement, breach of contract and conversion. Successfully mediated resolution. 
• Patent, Trademark and Trade Dress Litigation – Counsel to international food container manufacturer enforcing patent, trademark and trade dress rights against competitor in U.S. District Court. Obtained court-ordered injunctive relief. 
• Patent Infringement Litigation – Defended subsidiary of publicly-traded company against patent infringement claims concerning wireless thin client technology. Obtained dismissal of claims prior to filing answer or responsive pleadings. 
• Trade Secret Litigation – Defended information technology (IT) consulting firm against claims that client had stolen trade secrets after client replaced competitor on multi-million dollar maintenance and upgrade of utility software and systems. Obtained dismissal. Affirmed by U.S. Court of Appeals. See Southern Nuclear Operating Company, Inc. v. Electronic Data Systems Corporation v. Computer Technology Solutions, Inc., 273 Fed.Appx. 834, 2008 WL 1700204 (11th Cir. 2008).
• Semiconductor Patent Litigation – Defended overseas manufacturer of computer chips (semiconductors and toroid transformers) and U.S. subsidiary against patent infringement allegations. See e.g., Halo Electronics, Inc. v. Bel Fuse, Inc. et al., 2010 WL 2464811 (N.D.Cal. 2010). Obtained dismissal of U.S. District Court case.
• Electronics Patent Litigation – Defended subsidiary of publicly-traded company against patent infringement claims filed by global competitor in U.S. District Court for the Northern District of Georgia concerning flicker compensation systems for flat panel displays. Obtained dismissal of U.S. District Court case.
• Retail Patent Infringement Litigation – Counsel to national retailers (restaurant chain, electronics retail store, office supply retail store) defending against patent infringement claims made by Non-Practicing Entity (NPE or patent troll) concerning financial transaction systems. See Ware et al. v. Circuit City Stores, Inc. et al, 2010 WL 767094 (N.D.Ga. 2010). Obtained dismissals of U.S. District Court case(s).
• Retail Copyright Infringement Litigation – Defended national department store retailer and product supplier against allegations of infringing copyright and engaging in unfair competition. Obtained dismissal of allegations.
• Manufacturing Unfair Competition Litigation – Defended North American vehicle parts manufacturer against competitor's claims of unfair competition (trade dress), theft of trade secrets and unjust enrichment in Ohio state court. Obtained dismissal. 
• Non-Profit Intellectual Property Litigation – Defended 501(c)(3) non-profit organization against conversion and misappropriation of IP claims in trial, appellate and bankruptcy court.  Obtained court-ordered dismissals. See e.g., Fowler v. Our Loving Mother's Children, Inc. et al., 262 Ga. App. 288; 585 S.E.2d 211 (Ga. App. 2003); Little Drummer Boy Productions, Inc. v. OLMC, Inc. et al., 2001 WL 766963 (E.D.La. 2001); In Re Waitz, 567 S.E.2d 87, 255 Ga.App. 841, 2 FCDR 1817 (Ga. App. 2002).
• False Marking/Deceptive Trade Practices Ligation – Counsel to exclusive licensee of patent in U.S. District Court and U.S. Court of Appeals litigation concerning infringement, false marking and deceptive trade practices. Obtained court-ordered injunctive relief and damages award. See Enforcer Products, Inc. v. Robert Birdsong et al., 98 F.3d 1359, 40 U.S.P.Q.2d 1958, 1996 WL 592161 (Fed. Cir. 1996).

Representative Industries/Technologies

Professional Organizations

• American Bar Association (Intellectual Property Law Section, Intellectual Property Litigation Committee) – Member, Roundtable Host and Moderator (2010 – 2012)
• American Intellectual Property Law Association (AIPLA) – Member, Author, Lecturer – Licensing and Management of IP Assets Committee
• Atlanta Bar Association (Intellectual Property Section) – Member, Author, Lecturer, Program Chair
• Georgia State University College of Law – Graduate, Member of Intellectual Property Advisory Board, Author, Lecturer
• Guest Lecturer – Georgia State University, J. Mack Robinson College of Business
• Member, Lecturer – Intellectual Property Owner's Association (IPO)
• Member – International Trademark Association (INTA)
• State Bar of Georgia – Member in good standing since 1991; Chairman – Management Information Systems Committee, 1998 – 2000

Speaking Engagements

• "Strategic Implications of the Patent Reform Act of 2011," sponsored by the Intellectual Property Litigation Committee of the American Bar Association (ABA) Section of Litigation, Roundtable, Atlanta, Georgia, December 2011
• "Ethical Issues Facing Corporate IP Counsel," The Corporate Intellectual Property Institute, sponsored by Georgia State University College of Law, Atlanta, Georgia, November 2011
• "Day of the Trolls: The Pros and Cons of Settling a Patent Case and Taking a License When the Products Do Not Seem to Infringe," sponsored by the American Intellectual Property Law Association (AIPLA), Licensing and Management of IP Assets Committee, Washington, DC, October 2011
• "Use of Competitor's Trademark in Keyword Advertising: Infringement or Not?" sponsored by the Intellectual Property Litigation Committee of the American Bar Association (ABA) Section of Litigation, Roundtable, Atlanta, Georgia, March 2011 
• "Implications of Recent Court Decisions on the Application of the 'Entire Market Value Rule' to Patent Damages Analysis," sponsored by the Intellectual Property Litigation Committee of the American Bar Association (ABA) Section of Litigation, Roundtable, Atlanta, Georgia, December 2010
• "Social Media and Networking - Pretty Cool or Downright Dangerous?" The Corporate Intellectual Property Institute, sponsored by Georgia State University College of Law, Atlanta, GA, November 2010
• "Ethical Considerations in IP Practice," sponsored by the Atlanta Bar Association and Georgia State University College of Law, Sixth Annual SpringPosium Intellectual Property Conference, Barnsley Gardens, Adairsville, Georgia, May 2010
• "Patent Strategies for Competing in a Down Economy," The Corporate Intellectual Property Institute at Georgia State University in Atlanta, November 2009
• "Trademarks In Distress! (How to Buy and Sell Trademarks in Bankruptcy)," sponsored by the Intellectual Property Owners' Association, 37th Annual Meeting, Chicago, Illinois, September 2009
• "Managing Legal Risks and Lawyers," sponsored by the J. Mack Robinson College of Business, Georgia State University, Professional MBA Program, July 2009
• "How to Survive in an Upside Down Economy - Recession-Proofing Tips and Trends from an Intellectual Property Perspective," 4th Annual IP Hot Topics Luncheon, sponsored by Georgia State University College of Law, May 2009 
• "The Impact of Electronic Discovery on Corporations," sponsored by the Atlanta Bar Association and Georgia State University College of Law, Fourth Annual SpringPosium Intellectual Property Conference, Brasstown Valley Resort, Young Harris, Georgia, May 2-4, 2008 
• "Fundamentals of Intellectual Property Law," sponsored by Lorman Seminars, Atlanta, Georgia, and Birmingham, Alabama, May 2006

Publications

• "Yahoo's IP Suit Against Facebook Could Backfire, Attys Say," Law360, March 2012
• "Patent Reform - Practitioners Sound Off On The Merits And Drawbacks Of The Sweeping New Law," The National Law Journal, October 2011
• "Businesses Cheer Patent Reform, Hurdles Still Loom," FoxBusiness, September 2011
• "Patent Reform Elicits Cheers From Business, But USPTO Faces Big Challenges," AOL Government, September 2011 
• "First-To-File Patent System To Favor Big Biz," Law360, September 2011
• "Google Fortifies Patent Portfolio With Motorola Deal," Managing Intellectual Property Magazine, August 2011
• "Technology News - Motor Carriers Being Hit With Lawsuits," Furniture Transporter - International Furniture Transportation and Logistics Council, June 2011
• "Second Circuit Says eBay Is Neither Direct Nor Contributory Infringer of Tiffany Marks," Bureau of National Affairs (BNA)'s Electronic Commerce & Law, April 2010
• "Legal Issues Presented By Social Networking," HR.com, October 2009
• "Changing Trends in IP Disputes," Navigating Intellectual Property Disputes, part of the Inside the Minds series, Aspatore Books (2009)
• "Recession-Proofing: IP Is Key," Law360, March 2009
• "Avoiding Infringement: Minimizing Risks Posed By Intellectual Property Litigation," SmartBusiness Atlanta Magazine, August 2008

Law Firm Leadership

• Baker Donelson – Shareholder (2000 – present); Co-Founder of the Intellectual Property Practice Group (2000); Office Managing Shareholder (Atlanta, 2005 – 2008); Co-chair of Intellectual Property Litigation Practice Group (2003 – 2005); Conflict Committee Member (2005 – present)

Professional Honors

• AV® Preeminent™ Peer Review Rated by Martindale-Hubbell
• Listed in Chambers USA: America's Leading Business Lawyers as a leading intellectual property lawyer in Georgia, 2007 and 2009 – 2012
• Selected as one of the top 100 attorneys in Georgia by Georgia Super Lawyers, 2010 – 2012
• Selected to Georgia Super Lawyers by Law & Politics for Intellectual Property Litigation, Intellectual Property and Antitrust Litigation, 2009 – 2012 
• Named as one of Georgia's Legal Elite by Georgia Trend Magazine, 2007 in Intellectual Property Law, 2009 – 2011 in Business Law
• "Volunteer of the Year" Pro Bono award, Southface Energy Institute, 2010

Admissions

• State Bar of Georgia
• Supreme Court of Georgia
• Georgia Court of Appeals
• United States Court of Appeals for the Eleventh Circuit and for the Federal Circuit
• United States District Courts (Northern and Middle Districts of Georgia; Eastern District of Texas; Eastern District of New York; Northern and Central Districts of California; District of Minnesota; Southern District of Alabama)
• United States International Trade Commission
• United States Patent and Trademark Office

Education

• Georgia State University College of Law, J.D., 1991
  • Moot Court Board
• Loyola University, New Orleans, B.S. Physics, 1988