Overview

Thomas Dover provides cutting-edge legal strategies focused in all areas of intellectual property, corporate transactions and advertising. His experience in the US and internationally includes complex system and software transactions, public and government entity IT, financial and operational system procurement and negotiations, consumer product (development, branding, manufacture and distribution), and representing entertainment and media interests. Thomas is the Chair of Nossaman's Intellectual Property Group and co-leads the Privacy/Data Security Group.

Thomas represents a wide range of clients including small mobile app developers, busy yoga instructors, North America’s largest utility, one of the largest energy and communications infrastructure entities in the US, and many transportation agencies and toll system operators. His intellectual property experience includes all aspects of prosecution, transactions and claims or litigation. He represents clients in state, federal and some international courts, the US Patent & Trademark Office (USPTO), Trademark Trial and Appeal Board (TTAB), the US International Trade Commission (ITC), the World Intellectual Property Organization (WIPO), ICANN and more.

Thomas’ early approach to new and emerging technologies continues as he works with e-commerce and digital distribution entities to conform the privacy efforts to an ever-changing landscape, including the EU GDPR, the California Consumer Privacy Act and the California Privacy Rights Act. His work in privacy and data security compliance mirrors his support of government and public agencies as they adopt innovative transportation solutions, large-scale IT systems, and interactive communications with the public.

Thomas regularly discusses and presents on new technologies, privacy and data security development, and related topics with industry leaders and academics.

Experience

Experience

SOFTWARE, SYSTEM & INFRASTRUCTURE

  • Represents a wide variety of government agencies, public concerns and public-private partnerships (P3) for procurements, contract negotiations, licensing and IP prosecution concerns regarding software, hardware and firmware issues generated by toll roads, automated toll collection, pension administration systems, security systems and related data collection/security measures. Representative experience includes:
    • Los Angeles Department of Water and Power, enterprise IT system and software
    • County of Los Angeles, Treasurer and Tax Collector, large-scale replacement tax system
    • California High-Speed Rail Authority
    • Transportation Corridor Agencies (TCA, tollroads.com), toll system, interoperability and privacy
    • Los Angeles County Metropolitan Transportation Authority (“Metro”), MicroTransit Pilot Project
    • Riverside County Transportation Commission, toll system compliance and software licensing
    • Texas Dept of Transportation, toll system integration and back office system
    • Houston Metro, digital signage system and fare collection system
    • City of Los Angeles, Los Angeles World Airports – Automated People Mover and Consolidated Rent-A-Car Facility
    • Santa Clara Valley Transportation Authority, all-digital automated parking structures
    • Marin County Employees’ Retirement System, pension administration system
    • San Joaquin County Employees’ Retirement Association, pension administration system
  • Served as General Counsel and COO for a start-up online video gaming operation with a proprietary gaming controller. Negotiated hundreds of international software and video game licenses during the pre-launch phase. Orchestrated the launch of the online operation and product offerings in China.

PRIVACY, DATA SECURITY & COMPUTER FRAUD

  • Represents public and private entities navigate the shifting landscape of privacy and data security regulations including application of the CA Consumer Privacy Act of 2018, CA data breach notice statutes and related regulations, CA Song-Beverly Credit Card Act, CA Shine The Light Law, the EU General Data Protection Regulation and a variety of related state and federal regulations. Representative experience includes:
    • Successfully secured a restraining order for a large CA oil and gas producer against a vendor over the control of oil field computer system control and ownership of access control information and related system software (Vaquero Energy, Inc. v. Jeff Herda, et. al., USDC, Central Dist. 1:15‐CV‐00967‐JLT)
    • Represented a significant German video game developer during the termination and litigation of a publishing agreement and compliance with the then-current Directive 94/46/EC and proposed General Data Protection Regulation
    • Advised multi-media content producers with focused distribution for internet, digital, mobile, and so-called “outdoor display”-specific mediums including all variety of software and website development and licensing agreements, consumer data collection, cookies and anonymized geographical trackers.
    • Assisted the largest court-ordered ignition control product/service provider regarding compliance with CA Consumer Privacy Act of 2018 along with an operations and internet review for compliance on a state-by-state basis.
  • Served as General Counsel for an internet media/marketing company during the pre-Anti-SPAM and privacy regulation era. Successfully directed the legal and business efforts to adapt to industry changes while enhancing technology and consumer offerings.

INTELLECTUAL PROPERTY PROTECTION & LITIGATION

  • Trade secret misappropriation, fraud, and breach of contract dispute between high‐end lighting manufacturer, former executives and related international entities. (Tivoli, LLC vs. Targetti Sankey, S.p.A., USDC, Central Dist. 8:14‐CV‐01285‐DOC‐JCG)
  • Successfully defended LA DWP in litigation arising out of its e-commerce supply chain management system and alleged copyright infringement (Office Future Systems v. LADWP; Sierra Systems, et al, LASC BC 589967)
  • Unfair Competition, Fraud, Trademark Infringement (complex coordination of claims and prosecution in US, EU and Switzerland) (Treehouse California Almonds, LLC v. Migros Collective; HG160161‐O, Switzerland, Commercial Court of the Canton of Zurich (companion actions consolidated in EU and US))

TRADEMARK & BRANDING

  • Leads all trademark prosecution efforts firm-wide and manages a portfolio of several hundred active trademarks including furniture manufacturers and retailers, internet media and marketing companies, dozens of consumer product entities, one of the country’s largest energy and communications infrastructure entities, and premier wine manufactures.

  • Represents the trademark portfolios of a variety of public agency or government entities for all purposes including prosecution, licensing and opposition/cancellation or related litigation. Notably, Nossaman represents the famous “FasTrak” portfolio of toll system trademarks.

  • Represents significant fashion apparel and accessory brands in IP protection, finance, structure, manufacture, and distribution. Responsible for many celebrity or “supermodel” brands distributed through mass market and/or electronic retailers.

  • Served as General Counsel for a multi-national consumer product/toy manufacturer managing significant litigation along with a portfolio of hundreds of patents. Prosecuted, maintained, and protected several branded product lines. Negotiated and maintained prominent and substantial entertainment/character brand licenses for manufacture. Special awareness of China-based finance and manufacture issues, import/export, and counterfeiting issues.

ENTERTAINMENT REPRESENTATION

  • Represents a long list of talent including actors, musicians, authors, athletes, supermodels, designers, and personalities. Thomas is a specialist in endorsement, advertising, and licensing agreements.

  • Represents significant producers with projects ranging from traditional film and television, to multi-media (internet, digital, mobile, etc.), to new technologies (3D, motion capture, AI, etc.).

  • Represents significant “celebrity”-branded consumer product companies for intellectual property production, finance, structure, manufacture, and distribution.

Insights

Speaking Engagements

Organizations

Community & Professional

Los Angeles County Bar Association

International Trademark Association, Famous and Well-Known Marks Subcommittee, US, 2014-2016, 2016-2018

Intellectual Property Owners Association, US Trademark Committee, 2014-2015

International Association of Privacy Professionals

American Intellectual Property Law Association

National LGBT Bar Association

Education

Admissions

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