AV Peer Review Rated by Martindale-Hubbell

Board Certifed in Intellectual Property Law, The Florida Bar

James M. Matulis is currently one of only 80 attorneys to be certified by The Florida Bar as an Expert in Intellectual Property Law.  He is a Registered Patent Attorney with the United States Patent and Trademark Office, and has been awarded the highest Attorney Peer Review Rating (AV) by Martindale- Hubbell for legal ability and ethics.  He has extensive experience in counseling clients in all areas of intellectual property law and business disputes, including breach of contract cases, patent litigation, trademark litigation, copyright litigation, unfair competition, deceptive trade practices, false advertising, and internet domain name registration disputes. Jim pursues infringers and defends clients against charges of patent infringement, trademark and trade dress infringement, copyright infringement and represents clients in disputes involving the internet, domain name registrations, website content, and technology.  Jim's experience and knowledge allows him to effectively and efficiently represent his clients' interests, from preparing and responding to cease and desist letters through trial and appeal in all Florida state and federal courts.  He also assists his clients by negotiating licensing agreements or assignments covering all forms of intellectual property.

Representative Experience

Lead counsel on numerous cases in state and federal courts and before arbitration panels in disputes involving alleged infringement of patents, trademarks, copyrights, unfair competition and wrongful registration of internet domain names.  In addition, Mr. Matulis has successfully resolved numerous matters prior to either party filing a lawsuit.  A sample of recent lawsuits includes the following:

• International Institute for Learning, Inc. v. J. Ross Publishing, Inc. et al, (S.D.Fla 2007)(Judge Marra in Unpublished Opinion) -- Defeated motion brought by Microsoft’s partner to have court enter preliminary injunction against publisher client based on alleged copyright infringement and breach of contract, and to prohibit client from publishing software user’s textbook;  case settled shortly after hearing with client to publish textbook.
• Genesis Healthcare Corp. v. McHugh Fuller Law Group, (S.D. W.Va. 2007) – Defended efforts brought by national nursing home against law firm client seeking to have court enter preliminary injunction that would prohibit client from using website to solicit business where website domain name included nursing home’s federally registered trademark and website content discussed nursing home -- case settled shortly after hearing with client retaining domain name.
• Holcomb Facial Plastic Surgery v. SignatureWeb Medical Inc. et al, (Sarasota Cir. Ct 2006) – Trial counsel for surgeon in case against Internet advertising company in case alleging cybersquatting, trademark infringement and breach of contract, where advertising company registered client’s trademark in domain name used to solicit customers for surgeon’s competitors– case settled with company recovering domain name and other relief.
• Fourstar Group USA, Inc. v. The Schawbel Corporation et al, (M.D. Fla. 2007) – Co-counsel for defendant accused of copyright infringement involving artistic designs.
• Pump & Brush Finland Oy v. Philips Oral Healthcare et al, (M.D.Fla. 2006) –Trial counsel for patent owner in suit to enforce U.S. Patent No. 5,918,995.  Case settled after filing Complaint on mutually agreeable terms.
• Anodyne Therapy, LLC v. Bertwell, (Hills. Cir. Ct.  2006) – Represented agent of patent licensor accused of cybersquatting due to licensor having registered domain name containing licensee’s corporate name. 
• Clever Covers, Inc. v. Florida Storm Safe Panels, Inc. et al, (M.D. Fla. 2006) – Defended storm shutter manufacturer and distributor accused of copyright infringement, trademark infringement, and unfair competition; case settled on mutually agreeable terms.
• Pods, Inc. v. PortaStor, Inc., (M.D. Fla. 2005) – Served as arbitrator on panel in court-ordered arbitration in case involving claims of patent and copyright infringement.
• Education Experiences Inc. v. Pattison, (WIPO Arbitration and Mediation Center 2006) – Defended individual who registered domain name in Uniform Dispute Resolution Proceedings before World Intellectual Property Organization.
• CIT Group, Inc. v. Logiology, Inc., (TTAB 2007) – Represented trademark Applicant in administrative proceeding pending before the United States Patent Office’s Trademark Trial and Appeal Board concerning Applicant’s pending trademark application.
• Sun Microsystems, Inc. v. Sunbelt Software Distribution, Inc., (TTAB 2005)  – Represented trademark Applicant in administrative proceeding pending before the United States Patent Office’s Trademark Trial and Appeal Board concerning Applicant’s pending trademark application.

Publications

• "The Journal," Contributing Author, The Florida Bar Association Business Law Section, 2008
• "A Step-by-Step Look at the Patent Litigation Process," Author, Inside the Minds Series of Books for C-level Professionals, published by Aspatore Books, 2007
• "Annual Trademark Law Update," Contributing Author, American Intellectual Property Law Association, 2005
• "Pre-Grant Publications of Patent Applications," Author, Lawyer, 2003
• "Intellectual Property Alert-New Domain Name Registration Opportunities Are Coming," Author, 2001
• "Having Your Cake and Eating It Too," Author, 16 Trial Advocate Quarterly Winter 1997, Best Article, 1996-1997