While there are currently only about two dozen generic top-level domains (gTLDs), such as .com, .net, and .info, numerous public and private organizations recently filed applications for over 1800 new gTLDs. When clothing company Ralph Lauren Corporation applied for the exclusive right to operate the .POLO gTLD, a battle ensued with the U.S. Polo Association, Inc. (USPA), the national governing body for the sport of polo in America and Canada. This month, an expert panel at the International Center for Expertise of the International Chamber of Commerce upheld USPA’s so-called “Community Objection” against the .POLO application and denied Ralph Lauren’s application. See U.S. Polo Association Inc. v. Ralph Lauren Corp., ICE, No. EXP/452/ICANN/69, 10/10/13.
James R. Davis
Jim Davis focuses his practice on the protection of clients’ intellectual property from infringement on the Internet and in the international marketplace. Jim has extensive experience with legal issues related to anti-counterfeiting and Internet law, and he actively monitors current legislative developments in those areas. He also spends a significant amount of time prosecuting international trademark portfolios and protecting and policing his clients' marks.
Jim represents leading domestic and international companies in such fields as manufacturing, tools, entertainment, publishing, Internet services, telecommunications, hotel services, and software. He has represented clients in hundreds of adversarial proceedings, including federal lawsuits, T.T.A.B. disputes and ICANN’s Uniform Domain Name Dispute Resolution Policy ("UDRP"). Particular cases of note are America Online, Inc. v. AOL.org, 259 F. Supp.2d 449 (E.D. Va. 2003); America Online Latino v. America Online, Inc., 250 F. Supp.2d 351 (S.D.N.Y. 2003); and Miguel Torres, S.A. v. Bodegas Muga, S.A., 176 Fed. Appx. 124 (Fed. Cir. 2006). Jim also drafts intellectual property licensing agreements and assists clients in selecting, registering, and protecting marks. In addition, he counsels clients in various areas of trademark, copyright, advertising, and unfair competition law.
Prior to joining Arent Fox, Jim received his MBA and worked as a financial analyst with NVR, Inc.
Jim is the ABA Intellectual Property Law Section’s Chair for Division II – Trademarks and Unfair Competition. He also is the ABA-IPL Section’s Liaison to ICANN’s Intellectual Property Constituency. He previously served as Division Vice Chair, and has chaired the ABA IPL Section’s Committee on Trademarks and the Internet. He also serves on the Intellectual Property Owners Association’s Counterfeiting and Piracy Committee. As an adjunct professor of law, Jim has taught intellectual property classes at George Mason University School of Law and lectured at American University.
Publications, Presentations and Recognitions
Jim was recognized as one of the leading intellectual property litigation attorneys in the 2012, 2013, 2014, and 2015 editions of The Best Lawyers in America, and included in the 2015 edition of the World Trademark Review 1000 – The World’s Leading Trademark Professionals.
Jim’s speaking engagements include:
- Moderator: “What’s Going On? A Summary of Hot IP Topics: From Case Law Summaries to the New gTLDs to Google Adwords Litigation and Everything In Between,” ABA IPL Section’s Spring Conference, March 2012 (Arlington, VA).
- “Protecting Your Brand on the Web and in Social Media — The New Generic Top Level Domains and Their Implementation.” The Osgoode Hall Law School, York University. September 2011 (Toronto, Canada).
- Moderator: “The New gTLDs: What Trademark Owners and Their Attorneys Need to Know,” ABA IPL Section’s Spring Conference. April 2011 (Arlington, VA).
- “Arbitration and Mediation for International Intellectual Property Disputes — An Emphasis on Domain Names and the UDRP.” Presented by WIPO, the ABA Section of Intellectual Property Law, and the International Intellectual Property Society. March 2010 (New York, NY).
- “Google AdWords: The Current State of the Law in the U.S. and Internationally.” ABA IPL Section’s Spring Conference. April 2010 (Arlington, VA).
Jim is frequently quoted and published on recent developments in trademark and Internet law. His cases and work have been profiled in The Washington Post, Bisnow, LexisNexis and other publications. His recent articles include “Tenth Circuit Rules on Keyword Advertising in 1-800-Contacts Case,” “Courts Still Sorting Out Issues on Keyword-Triggered Search Engine Advertising,” and “Proposed Amendments to the National Arbitration Forum’s Supplemental Rules Governing Domain Name Disputes.”
Blog Posts by James R. Davis
ABOUT ARENT FOX LLP
Arent Fox LLP, founded in 1942, is internationally recognized in core practice areas where business and government intersect. With more than 350 lawyers, the firm provides strategic legal counsel and multidisciplinary solutions to clients that range from Fortune 500 corporations to trade associations. The firm has offices in Los Angeles, New York, San Francisco, and Washington, DC.