321 North Clark Street
Suite 2300
Chicago, IL 60654

312.464.3144

312.577.0828

Douglas N. Masters
Partner and Deputy Chair, Advanced Media and Technology; Co-Chair, Intellectual Property Protection

Douglas Masters litigates and counsels clients primarily in the areas of intellectual property, advertising and unfair competition. He helps sports leagues, athletes and advertisers protect and exploit their branding, marketing and other intellectual property assets. Mr. Masters has counseled major corporations and prominent individuals in a variety of matters involving trademark and copyright clearance, registration, policing and enforcement; as well as consumer protection issues, such as allegations of deceptive or unfair advertising and marketing practices, and unfair competition.

Mr. Masters also has extensive experience advising companies in domain name protection and enforcement proceedings, and matters and litigation relating to the unique issues of online marketing and advertising. In addition to representing clients in state and federal court, he practices regularly before the Trademark Trial and Appeals Board and the National Advertising Division.

Representative Experience

Obtained summary judgment for Comcast Corporation rejecting trademark registrant's $70MM reverse confusion claim over name of Comcast's television and movie website

Obtained dismissal of a civil-rights class action against University of California officials and members of the NCAA alleging that the NCAA Division I Bylaw governing eligibility for student-athletes wishing to transfer from two-year colleges to four-year Division I colleges and participate in athletic programs creates arbitrary classifications that discriminate against students attending two-year schools

Successfully defended the NCAA against defamation claims by Rodney Guillory related to NCAA enforcement proceedings involving the University of Southern California and former USC student-athlete O.J. Mayo

Obtained dismissal with prejudice of class action lawsuit against client NCAA claiming ticketing procedure for MARCH MADNESS tournament games constituted an illegal lottery and violated other consumer protection laws. The District Court's judgment was affirmed by the Seventh Circuit Court of Appeals.

Obtained summary judgment ruling allowing content owner to buy out license upon termination of distribution agreement

Successfully prevented registration of rival beer mark after the Trademark Trial and Appeal Board found our client's Michelob mark famous and credited its confusion survey at trial

Obtained judgment on the pleadings establishing immunity for ISP against spammer who sued to force ISP to deliver its bulk emails to ISP's customers

Successful representation of NCAA at trial and on appeal in domain name and infringement suit concerning March Madness

Preliminarily enjoined competitor from advertising using false establishment claims while defending its challenge to client's own advertising

Representation of leading folk artist in licensing dispute raising trademark, copyright, right of publicity, fraudulent inducement and breach of contract claims

Aggressive policing of trademark portfolios through litigation and negotiated agreements

Clearance of marks for major branding initiatives of entertainment, media, financial services and sports-orientated businesses

Publications/Speeches

Ivy League Joins Digital Trend, Chicago Daily Law Bulletin (May 14, 2013)
Foul Play Over US Trademark, Intellectual Property Magazine (May 2013)
Co-author, MWC Capitalizes on March Madness Marketing, Chicago Daily Law Bulletin (April 9, 2013)
Speaker, Association of Corporate Counsel Southern California Chapter Sports and Entertainment Conference (February 13, 2013)
Co-author, NASCAR Drives More Fan Engagement, Chicago Daily Law Bulletin (February 12, 2013)
Co-author, 'D-Will' Tries Cutting Out the Middle Man, Chicago Daily Law Bulletin (January 15, 2013)
Co-author, ICANN's Domains Under Attack, Intellectual Property Magazine (December 2012/January 2013)
Co-author, More Teams Try Out Dynamic Ticket Pricing for Regular Season Games, Chicago Daily Law Bulletin (December 18, 2012)

"Naked License" Questions Develop After Justices' Decision on Nike By Roy Strom, Chicago Daily Law Bulletin
The Tao of Trademarks: Restaurant Denies Nightclub's Claim By Sheri Qualters, The National Law Journal
Masters Becomes Pro with Trips to Trademark Office By Roy Strom, Chicago Daily Law Bulletin
ICANN Stumbles in Antitrust Lawsuit By Roy Strom, Chicago Daily Law Bulletin
Domain Name Suits May Multiply After ".XXX" Antitrust Ruling By Ryan Davis, Law360
Nearly 2,000 Seek to Register Top-level Domains; '.App' Leads the Pack By Sheri Qualters, The National Law Journal
Masters of Their Domain By Michael Miner, Chicago Reader
Intellectual Property Hot List By Lisa Holton, The National Law Journal

Member, Board of Directors, Lawyers for the Creative Arts
Member, Board of Directors, The Museum of Broadcast Communications
Member, Editorial Board, The Trademark Reporter
Member, Editorial Board, Newsletter of ABA Litigation Section, Intellectual Property Committee
Member, Editorial Advisory Board, IP Law360 (2009)

Distinctions

Named an “IP Star” by Managing Intellectual Property magazine (2013)
Named "Best Lawyer" in Trademark Law, The Best Lawyers in America, published by Woodward White, Inc. (2010-2013)
Named "Illinois Super Lawyer" in Intellectual Property, Intellectual Property Litigation and First Amendment/Media/Advertising by Thomson Reuters (2013)
Named in "Guide to the World's Leading Trade Mark Law Practitioners," published by Euromoney's Legal Media Group (2009)
Named in The Legal 500 US in Marketing and Advertising, published by Legalease Limited and John Pritchard (2008-2009 and 2012 editions)
Recommended in World Trademark Review 1000 United States - Illinois (2012), WTR is part of The IP Media Group
Recommended “Top Lawyers in Illinois” in Intellectual Property Law (2004-2012), Advertising & Media Law (2010-2012), and Arts, Entertainment & Sports Law (2010-2012), Leading Lawyers Network, a division of Law Bulletin Publishing Company
Honorable Mention, Hard Work on Intellectual Property Litigation Newsletter, ABA Section of Litigation (2009-2010)
Lecturer, Advanced Topics in Intellectual Property Litigation, University of Chicago Law School
Adjunct Professor of Law, Trial Advocacy, Northwestern University School of Law
Illinois “40 Lawyers Under 40 to Watch”

Harvard Law School, J.D., 1988, cum laude

Editor, Women’s Law Journal

Cornell University, B.A., 1985, With Distinction

Illinois

U.S. District Court for the Southern District of Indiana, 2007
U.S. District Court for the Eastern District of Michigan, 2006
U.S. Court of Appeals, Federal Circuit, 2000
U.S. Court of Appeals, Fifth Circuit, 1999
U.S. Court of Appeals, Eighth Circuit, 1997
U.S. District Court for the Western District of Michigan, 1995
U.S. Court of Appeals, Third Circuit, 1994
U.S. District Court for the Central District of Illinois, 1994
U.S. District Court for the Northern District of Illinois, Trial Bar, 1993
U.S. Court of Appeals, Seventh Circuit, 1993
U.S. District Court for the District of Arizona, 1991
U.S. Court of Appeals, Sixth Circuit, 1991
U.S. District Court for the Eastern District of Wisconsin, 1991
U.S. District Court for the Northern District of Illinois, 1989
Illinois State Supreme Court, 1988

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Representative Experience

Publications/Speeches

Media Mentions

Affiliations

Distinctions