321 North Clark Street
Suite 2300
Chicago, Illinois
60654

312.464.3144

312.577.0828

Douglas N. Masters
Partner and Co-Chair, Intellectual Property Protection Practice Group

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

Author, Legal Issues Associated with Mobile Marketing to Sports Fans, Association of Corporate Counsel (January 1, 2012)
Author, I Know Where You Are: Top Ten Considerations When Using Geo-Location Data or Promotions to Reach Customers and Fans, Association of Corporate Counsel (December 1, 2011)
Speaker, Using New Media to Promote Corporate Image - Understanding the Risks and Rewards (November 2, 2011)
Co-Author, Make Your Brand a Star, Managing IP (July/August 2011)
Speaker, Sports Lawyers Association 2011 Annual Meeting, Washington, DC (May 19-21, 2011)
Speaker, 2011 In-House Practitioners Workshop at the INTA Annual Meeting, San Francisco, California (May 15, 2011)
Speaker, Kansas Bar Association Intellectual Property CLE Program, IP Issues in the Era of Social Media, Overland Park, Kansas (May 6, 2011)
Speaker, Clash of Sports Celebrities’ Publicity Rights in Computer and Fantasy Sports Games, New York, New York (February 23, 2011)

NCAA Trying to Block Globe from Trademarking ‘Munch Madness’ By Mark Shanahan and Meredith Goldstein, The Boston Globe's Names Blog
Per NCAA Lawyers: Don't Mess with March Madness By Stan Silliman, Bleacher Report
Universities Crack Down on Logo Use by High Schools By Jacqueline Sudano, Esq., Sports Litigation Alert
Zippo Interactivity Scale Likely to Persist Despite Recent Criticism, Attorneys Predict By Amy E. Bivins, Electronic Commerce & Law Report
7th Circ. Sends NCAA Lottery Spat to State Court By Megan Stride, Law360
Mattel Bratz Decision Reversal Interview with June Grasso, Bloomberg Law, Bloomberg Radio
The Battle Over Bratz TDmonthly Magazine
NCAA Tournament Perfect Time for a Vasectomy, Urologists Say By Bob Cook, American Medical News

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 "Best Lawyer" in Trademark Law, The Best Lawyers in America, published by Woodward White, Inc. (2010-2012)
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 Media, Technology and Telecoms: Marketing and Advertising, published by Legalease Limited and John Pritchard (2008 and 2009 editions)
Recommended “Top Lawyers in Illinois” in Intellectual Property Law, Leading Lawyers Network, a division of Law Bulletin Publishing Company (2004-2010)
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”

License Agreements 101

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

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Representative Experience

Publications/Speeches

Media Mentions

Affiliations

Distinctions