By Sheila Pursglove
Legal News
It was 1921 when the Detroit law firm of Harness Dickey came into being, just three years after a flu pandemic sent shockwaves across the country, eventually claiming hundreds of thousands of lives and causing untold economic havoc in its wake.
Now, a century later, as the world remains caught in the crosshairs of yet another pandemic, the prominent Detroit intellectual property law firm finds itself in an altogether time and place, strengthened by years of growth and decades of serving a blue-ribbon list of clients around the globe.
Founded in Detroit on May 15,1921, by patent attorney J. King Harness, Harness Dickey—headquartered in Troy—now has nearly 100 IP attorneys in four offices across the U.S. and serves clients around the world. Attorneys are chosen for international recognition in the World Trademark Review every year and the firm repeatedly earns a place among the “Top 10 Patent Firms in the U.S.”
“We’re typically on the front-line helping clients at the initial stages of a new product launch, a merger, or a sale of some or all of their IP assets,” says Beth Coakley, an equity principal at Harness Dickey. “We also aggressively enforce our clients’ IP rights around the world, making certain the true value of their IP is recognized and protected properly.”
Coakley notes the pace has increased year after year.
“With everyone on e-mail all of the time, clients are expecting responses quickly and we’ve had to adapt and get better at providing legal advice at a much faster rate, which has pushed us to develop planning strategies and use processes to help us respond promptly and more efficiently,” she says. “We’re on our toes all of the time anticipating challenges clients might face and developing long-term strategies to hit targets that are 10 years in the future.
“I’m pleased to see great strides toward more diversity, specifically with more women and minorities becoming IP attorneys. The pre-conceived notions about IP law are gradually eroding and there is currently more diversity in the field and in schools that feed into IP law, which is very encouraging. Having diverse viewpoints in the room is the best way we can serve clients and it’s good for the practice of IP law in general.”
The firm’s anniversary page features a story of the engineer Coakley worked with who was laid off from a Detroit automaker and subsequently created the Rainbow Loom toy for making friendship bracelets, which received the No. 1 toy award in the U.S. The invention came from entertaining his children and, in the early days, the family washed the bracelet materials in their bathtub.
“They eventually had the materials made and processed in China, but because of the inventor’s ‘hands on’ experience, he knew exactly when infringers began to import defective and low-quality materials into the U.S.—a wake-up call to seek legal expertise in global IP enforcement,” Coakley says. “Our firm successfully stopped the ‘bad guys’ through vigilant and persistent IP enforcement efforts around the world, and the inventor was able to tell his children that, because of their familiarity with their product and those ‘bathtub chores,’ along with the ensuing enforcement efforts to shut down low quality knock-offs and infringers, the sale of genuine, safe toys was growing again and they were able to earn money from their hard work and good ideas.”
Some famous trademarks Coakley has protected included Tony the Tiger, Jeep, Keebler Elves, and Enterprise Rent-A-Car, as well as marks held by a number of “mom & pop” businesses.
She has also procured and litigated matters involving IP assets owned by corporate Fortune 50 companies around the world.
“They’ve all been incredibly interesting and challenging in their own way,” she says.
For example, when a leader in the electrical industry came to Coakley 20 years ago, about to change its brand image after nearly 100 years of use of the same trademark, it was particularly challenging to file, procure, and enforce hundreds of new trademarks around the world.
“We continue work for that same client with great efficiency and success,” Coakley says. “I’m now working with attorneys who are the grandchildren of the original attorneys I started working with in the 1980s.”
Lisa DuRoss, a Harness Dickey attorney for more than two decades, is passionate about trademark law because it is inherently subjective.
“To practice it well, one must be innately expressive,” she says. “The trademarks niche is not a narrow one—I routinely collaborate with trademark practitioners around the globe in securing protection for, and enforcing, clients’ brands.”
Technological advances and shifting markets have changed the traditional law firm model, DuRoss notes.
“Clients’ expectations likewise have changed, necessitating adaptive fee and staffing arrangements and commitments to efficiency. When the firm was founded, the most common communication medium was the newspaper. Today, communication globally is in real time and law firms are expected to deliver comprehensive advice succinctly and at warp speed. Embracing change is now a necessity.”
The firm recently prevailed in a precedent-setting trademark piracy case in China, concluding seven years of civil and administrative actions enforcing a well-known consumer brand.
“Beginning in 2014, the defendants began filing a slew of China trademark applications for our client’s flagship mark for numerous products, most of which are considered unrelated to those of our client under China practice,” DuRoss says. “The court found the defendant company, its head, and the law firm that filed and defended the bad faith applications jointly and severally liable, awarding maximum statutory damages. It also enjoined the defendants and their counsel from filing applications for marks identical or similar to the pirated brand, and ordered the defendants to issue a public apology. Local counsel believes that the decision sends a strong message to the trademark piracy community in China.”
Monte Falcoff, who joined Harness Dickey in 1992, is involved with patent and trademark prosecution, portfolio management, opinions, licensing and litigation, and is constantly dealing with new inventions and new brands.
“I’m fortunate enough to have a very diverse client base, both in different industries and in different types—every day is unique and challenging,” Falcoff says. “It’s rewarding to build up asset value in a company, big or small, when representing a patent or trademark owner, while also trying to block copycats and counterfeiters around the world. When viewing the big picture, the IP world goes well beyond paper shuffling.”
In addition to technological advances, U.S. and foreign laws have changed quite a bit over the three decades Falcoff has been involved with IP.
“It’s challenging to keep up on both aspects,” he says.
Falcoff commented on the Michigan State University patent and a Joe Rocket trademark, both featured on the Harness Dickey anniversary page.
“We filed the MSU blueberry plant patents all over the world, and each country is so different in how they handle such—and it was a licensed technology so you could very tangibly see the ROI back to the client,” Falcoff says. “This was a great example of patents encouraging investments which directly led to worldwide commercialization of the invention.
“The Joe Rocket trademark was owned by the leading textile motorcycle clothing brand in North America. At the time, the trademark owner was based in Idaho, and its designers and marketing staff were located in Windsor, Ontario. We had worked on many trademark and patent projects for the company since it was founded. It was very interesting work to coordinate the private investigator ‘stings’ around the country, obtain and effect the Marshall seizure order from the U.S. District Court in San Diego, and then work with U.S. Customs on subsequent East Coast port impoundments. The counterfeit products from China had cut many corners on the safety features of the motorcycle jackets, so we were removing poor quality and dangerous products from the marketplace.”
A notable patent suit was defending a French company in a lawsuit brought by a Connecticut patent owner in an Oklahoma federal court over a technology for hog slicing machinery.
“After discovery in France and Connecticut, we obtained a very favorable ruling that led to the lawsuit quickly settling,” Falcoff says. “But the foreign discovery issues and the facts were fascinating. The judge was very interested, in a macabre sort of way, in the video of the disputed technology in action, which I showed during a hearing. I’m sure that hearing stood out from the many others he held that week.”
Jason Heist, who started at Harness Dickey as a Technical Specialist in 2001, became an associate in 2006 and a principal in 2014, works on matters in the mechanical arts and electrical arts. One of the major changes he has seen is the switch from filing patent applications in paper form using the U.S. Postal Service to filing electronically.
“It’s a rewarding career from the standpoint that you can see products being sold by our clients in the marketplace that include intellectual property we helped them obtain,” Heist says, and adds that Chrysler—whose patents are showcased on the anniversary page—was likely the firm’s first client.
After clerking at Harness Dickey as a student in 1979 and beginning as an associate in 1980, Paul Keller is now the firm’s longest-serving attorney. He views patent law as a perfect blend of his engineering and law degrees.
“On the one hand, I’m fortunate to work with inventors, scientists, and engineers on cutting edge technologies,” Keller says. “On the other hand, I counsel clients on very strategic, very customized legal strategies that form the basis for how they develop and protect those technologies. It’s gratifying to see both sides and have them working in harmony.”
Keller notes the creation of the U.S. Court of Appeals for the Federal Circuit in 1982 brought uniformity to the various circuit courts of appeal and their treatment of patents, which had a sort of chain reaction across patent law.
“First, the perceived value of patents grew substantially—and practically overnight—because every court was playing by the same rules and could no longer invalidate patents based on inconsistent application of the law. Second, corporations all over the world began to view patents as strategic assets that could protect their investments in technology. Consequently, the practice of patent and IP law exploded in the decades that followed.”
Another big change, starting in the early 2000s, was the digitization of the U.S. and other countries’ patent and trademark offices, enabling IP practitioners to provide substantially more and better services to their clients, he adds.
Referencing the La-Z-Boy trademark on the anniversary page, Keller says Harness Dickey and La-Z-Boy are two Michigan companies with humble beginnings in the 1920s that not only survived but thrived over a long history together.
“We share similar values of treating customers and clients right and taking care of our employees. Our respective brands are recognized around the world as representing quality and value.”
In the late 1980s, when Keller was a young partner, a start-up company came to Harness Dickey because a competitor had sued them for trade secret misappropriation. After a lengthy discovery period, a two-week bench trial took place and the judge eventually handed down a substantial monetary judgment against the client.
“By that time, Don Harness, who had tried the case with me as his second chair, had semi-retired and moved to New Mexico. So there I was as the new ‘first chair’ litigator with a devastated
client,” Keller says. “Over the ensuing weeks, I pored over the record, filed, and argued an in depth motion for reconsideration that pointed out all of the errors I believed had been made. The judge later issued an opinion that wholly reversed his earlier judgment, stating ‘I have, as all humans, made errors in the past—but never have I made so many, nor have they been so grievous as in this case.’ The client was dancing in the street when I gave them news of the new judgment.”
David Suter, a Harness Dickey attorney for more than 20 years, is a self-termed technical “junkie” at heart. A case for Dr. Barry Marshall provided the opportunity to participate in the development of a new technology with a significant impact on treating gastritis and ulcer disease.
“The work required some legal creativity, as well,” Suter says. “The fact that Barry later won the Nobel Prize for his work underscores how notable it was to work on this matter.”
Suter has helped a small start-up company developing technology to sustainably grow algae that can be used in a wide variety of ways, including as a source of nutritionals.
“The work has involved protecting their core technology, as well as transactional work regarding their relationships with development partners,” he says. “It’s energizing to work with people who have passion and an ethical approach to developing technology that has a positive environmental impact.”
Patent law inherently offers the opportunity to learn about cutting edge technologies, Suter adds.
“It also offers the opportunity to contribute to the development of new products and technologies in a very fundamental way, which has been particularly rewarding for work in the medical arena.
“Patent laws keep evolving, sometimes creating challenges for protecting certain types of technologies, requiring patent attorneys to develop new, strategic, and creative ways to protect valuable innovations in highly technical fields like medical diagnostics. Clients are also pushing for more value from their outside counsel than ever before, which also requires some creativity and new tools to deliver that value while continuing to grow our firm.”
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