“Pro Bono Work Is Valuable In IP And Continued Learning.” Law360 Pulse, February 1, 2023
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Lisa Holubar is the Head of Trademark and Advertising Litigation at Irwin IP. Lisa’s practice encompasses litigation and counseling matters concerning trademarks, trade dress, unfair competition, counterfeiting, and false advertising. Lisa has successfully represented clients in expedited trademark and unfair competition actions nationwide, both as plaintiff and defendant. Lisa has argued for and obtained injunctive relief and has examined witnesses in both federal court and disputed mediation proceedings. Lisa has considerable experience working with survey experts in trademark and false advertising disputes. Lisa also has represented clients engaged in administrative proceedings with U.S. Customs and Border Protection and in arbitration under the Uniform Domain Name Dispute Resolution Policy (UDRP). Lisa has counseled clients on brand protection strategies and has presented on a number of issues regarding trademark and advertising law.
50BC Ventures LLC, Aruze Gaming America, Inc., Avid Identification Systems, Bulk Tainer Logistics, Exide Technologies, IGT Corporation, Katun Corporation, Kraft Pizza Company, Label Daddy, Lightspeed Systems, LKQ Corporation, Motorola, Inc., North Atlantic Operating Co., Oasis Legal Finance Operating Company, Physicians Formula Cosmetics, Inc., Rand McNally & Company, Shuffle Master Inc., World Kitchen, Inc., Wowza Media Systems, Zotos International, Inc.
Lisa is a member of ChiWIP (Chicago Women in Intellectual Property), and a Board member on the Coalition of Women’s Initiatives in Law, and a member of The Professional Women’s Club of Chicago.
Lisa sits on the Board for Women for Evanston Youth. Lisa services as a founding member of the Athletic Committee of the Academy at St. Joan of Arc and chairs the Service Week community outreach program for the Academy at St. Joan of Arc.
N.D. Illinois
W.D. Wisconsin
Seventh Circuit
Beginning in 1998 as a summer associate, Lisa worked in the intellectual property department at Kirkland & Ellis LLP. Lisa remained at Kirkland, eventually becoming a non-equity partner.
During law school, Lisa worked as an intellectual property law clerk at the Tribune Company and as a judicial extern for then-chief Justice of the Northern District of Illinois, Marvin E. Aspen.
Prior to law school, Lisa worked as an intern for the Fox Affiliate Station in Cincinnati, Ohio and at WMUB AM radio in Oxford, Ohio as a student reporter.
DePaul Univ. College of Law,
J.D. 1999, Order of the Coif
Moot Court (Semi-Finalist First Amendment Center 9th Annual Moot Court Competition)
DePaul-LCA Journal of Art & Entertainment Law (Legislative Editor)
CALI Award, Federal Courts (1999)
Miami University
B.S. Mass Comm., 1996
(magna cum laude)
“Best Lawyers” (2023)
“Pro Bono Work Is Valuable In IP And Continued Learning.” Law360 Pulse, February 1, 2023
“So You’ve Got a Cybersquatter, Now What?” Best Lawyers, November 2022
“A Proposal to Update Customs’ Trademark Seizure Process to Prevent Misuse.” ABA Landslide, September/October 2022
“Is It Functional or Is It Functional? Trade Dress vs. Design Patent ‘Functionality.’” ABA Landslide, January/February 2021
Illini Win to Fight Another Day for Disavowed Chief Illiniwek , The Board of Trustees of the University of Illinois v. Vintage Brand LLC and Sportswear Inc. d/b/a Prep Sport
Not Just One Size Fits All in Brandy Melville Decision: Ninth Circuit Opines on a Trio of Trademark First Impressions, Y.Y.G.M. SA v. Redbubble, Inc. (July 24, 2023)
Malicious, Threats, and Malware: Objective Facts, Not Subjective Opinions , Enigma Software Grp. USA, LLC v. Malwarebytes, Inc., 21-16466 (9th Cir. June 2, 2023)
Automating Without Innovating: Patents Held Invalid, People.ai, Inc. v. Clari Inc., 2022-1364, (Fed. Cir. April. 7, 2023)
String ‘Em Up: Light Patentee OK to Notify Others of Patent Suit, Lite-Netics, LLC, v. Nu Tsai Cap. LLC, d/b/a Holiday Bright Lights, 2023 WL 2054370 (Fed. Cir. Feb. 17, 2023)
RICO Requires Transfer of Title to Forfeit Trademarks, USA v. Mongol Nation, No. 19-50176 and 19-50190 (9th Cir. Jan. 6, 2023)
Party’s Financial Resources Can Significantly Impact Attorney’s Fees Award, Whyte Monkee Prods., LLC v. Netflix, Inc., No. CIV-20-933-D, 2022 WL 4775905 (W.D. Okla. Sept. 30, 2022)
End Users’ Utilization of Copyrighted Work Largely Irrelevant for Fair Use, Vincent De Fontbrune, et al. v. Alan Wofsy, et al., No. 19-17024 (9th Cir. 2022)
Court Slashes Punitive Damages Stemming from Third-Party Infringement Accusations, Leaves Compensatory Damages Untouched, Atturo Tire Corp. v. Toyo Tire Corp., No. 14-cv-0206 (N.D. Ill. May 10, 2022)
10th Circuit Rejects Bimbo: Trade Dress and Trade Secret Too Broad and “Local” Too Subjective, Bimbo Bakeries USA, Inc. v. Sycamore, 2022 WL 816679 (10th Cir. Mar. 18, 2022)
Dilution by Blurring: Potify Application Goes Up in Smoke, Spotify AB v. U.S. Software Inc., 2022 WL 110251 (T.T.A.B. Jan. 10, 2022)
Section 101: Unconventional Arrangements, Certain Movable Barrier Operator Systems and Components Thereof, Inv. No. 337-TA-1209 (Oct. 13, 2021) (EDIS Doc. No. 754096)
Spotlight on the Right of Publicity: Immunity and Preemption, Moran v. Edie Parker, LLC et al, No. 2:20-cv-12717 (E.D. Mich. Sept. 27, 2021); and Hepp v. Facebook, 2021 WL 4314426 (3d Cir. Sept. 23, 2021)
Covid-19 Instagram Account Crude But Not Confusing, Arizona Bd. of Regents, v. John Doe, 2021 WL 3631269 (D. Ariz. Aug. 17, 2021)
Camera on a Chip: PTAB Invalidates Imaging Sensor Patent, Samsung Elecs. Co., Ltd. v. Cellect, LLC, IPR2020-00476 (P.T.A.B. June 30, 2021)
Cookinpellets.com and Pretzel Crisps Make Bids for Acquired Distinctiveness, Judges Find Facts Undercooked, Snyders Lance, Inc. v. Frito-Lay, Inc., 2021 WL 2322931 (W.D.N.C. June 7, 2021) In re GJ & AM, Serial No. 86858003 (TTAB June 8, 2021)
Uncorroborated Testimony by Creator of Prior Art System Fails To Demonstrate Date of Availability, Network-1 Sec. Sols., Inc. v. Hewlett-Packard Co., 6-13-cv-00072 (E.D. Tex. May 7, 2021)
Apple Tacks on Win for its Trademark Portfolio at TTAB, Charles Bertini v. Apple, Inc., Opposition No. 91229891 (TTAB April 16, 2021)
Context-Sensitivity Outweighs Transformative Use, Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 2021 WL 1148826 (2d Cir. Mar. 26, 2021)
Copyright and Trademark Owner Obtains Biting Injunctive Relief, Versah LLC, et al. v. UL Amin Indus., et al., (E.D. Mich. Dec. 9, 2020)
Gorilla Glue Back in a Sticky Trade Dress Situation, J-B Weld Company, LLC v. The Gorilla Glue Company, Case No. 18-14975 (11th Cir. 2020)
Celebrity Photos, Social Media, Standing, and a Strip Club, Carmen Electra, et al. v. Idaho Business Holdings LLC, et al., (D. AZ Sep. 24, 2020)
The Internet Short-Circuits the Narrative, Shure Incorporated v. ClearOne, Inc., Case No. 17-cv-03078 (N.D. Ill. Sep. 1, 2020)
Heads Up Royalties Up: Notice Required Before Copyright Royalty Board Adopts Divergent Rate Structure, Johnson v. Copyright Royalty Bd., No. 19-1028, 2020 WL 4596810 (D.C. Cir. Aug. 7, 2020)
Lanham Act Section 2(c) is Viewpoint Neutral, Prevents “Trump Too Small” Trademark Registration to Third Party, In re Steve Elster, Serial No. 87749230 (T.T.A.B. July 2, 2020)
Is Skin a Tangible Medium? The Second Circuit Won’t Touch, Mourabit v. Klein, No. 19-2142-CV, 2020 WL 3042131 (2d Cir. June 8, 2020)
No One Can Own the Copyright to Annotated State Statutes, Georgia, et al., Petitioners v. Public.Resource.Org, Inc., 590 U.S. __ (2020)
Multi-Color Product Packaging Can Be Inherently Distinctive, In re Forney Indus., Inc., Case No. 19-1073 (fed. Cir. Apr. 8, 2020)
Supreme Court Says: States Maintain Sovereign Immunity for “Piracy”, Allen v. Cooper, No. 18-877, 2020 WL 1325815 (U.S. Mar. 23, 2020)
CleanTech’s “Dirty” Prosecution = Inequitable Conduct, GS Cleantech Corp. v. Adkins Energy LLC, 2020 WL 989523 (Fed. Cir. 2020)
The Long-Arm of the Law: Infringing Internet Sales Opens up Suit in Customers’ Home States, Curry v. Revolution Labs., LLC, Case No. 17-2900 (7th Cir. 2020)
Rock, Paper, Statutory Damages: Fifth Circuit Holds Statutory Damages Beat Mitigation Defenses, Energy Intelligence Grp., Inc. v. Kayne Anderson Capital Advisors, L.P., No. 18-20350, 2020 WL 219008 (5th Cir. Jan. 15, 2020)
PTAB Finds RPX Member Google is not Real Party in Interest or Privy, RPX Corporation v. Publishing Technologies, LLC, IPR2018-01131, Paper 44 (PTAB Jan. 7, 2020)
Three Patent Cases, Two Defendants, and One Consistent View Regarding Convenience in Marshall, Texas, Quest NetTech Corp. v. Apple, Inc., No. 2:19-CV-00118-JRG ; Rembrandt Wireless Tech. v. Apple, Inc., No. 219CV00025JRG; Vocalife LLC v. Amazon.com, Inc., No. 219CV00123JRG (E.D. Tex. Nov. 27, 2019)
Airbus Snuffs Out Fire Prevention Patent, Airbus S.A.S. v. Firepass Corp., Case No. 2019-1803, ___ F.3d ___, 2019 WL 5849523 (Fed. Cir. Nov. 8, 2019)
The Space and Marketplace Between: SmartSync Not Confusingly Similar to Smart Sync, Ironhawk Techs., Inc. v. Dropbox, Inc., No. CV1801481DDPJEMX, 2019 WL 5538831 (C.D. Cal. Oct. 24, 2019)
Driveshaft Patent Only Natural After All, Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 939 F.3d 1355 (Fed. Cir. 2019)
When A Picture Isn’t Worth A Thousand Words:, Curver Luxembourg, SARL v. Home Expressions, Inc., 938 F.3d 1334 (Fed. Cir. 2019)
A Tale of Two Copyright Laws: Second Circuit Holds that Italian Law Permits Termination of U.S. Copyrights, Ennio Morricone Music Inc. v. Bixio Music Grp. Ltd., 936 F.3d 69 (2d Cir. 2019)
Schrodinger’s Case, “Midwest Sports Athletic Alliance, Inc. v. Ricoh USA, Inc., Case No. 19-cv-00514, Dkt. 115 (E.D. Penn. Jul. 25, 2019); and Fall Line Patents, Inc. v. Zoe’s Kitchen, Case No. 18-cv-00407, Dkt. 106 (E.D. Tex. Jul. 26, 2019)”
Money Can’t Buy the Federal Circuit: Luxury Brand Louis Vuitton Refused Trademark Registration for APOGÉE, In re Louis Vuitton Malletier, 777 F. App’x 984 (Fed. Cir. 2019)
When is a Patent Challenge Undeliverable?, Return Mail, Inc. v. United States Postal Serv., 139 S. Ct. 1853 (2019)
Bad Breakup Trademark Wakeup, Mission Prod. Holdings, Inc. v. Tempnology, LLC, 139 S. Ct. 1652, (2019)
“Good Faith Still Isn’t Fair: Fourth Circuit Holds No Fair Use for Violent Hues”, Brammer v. Violent Hues Prods., LLC, 922 F.3d 255 (4th Cir. 2019)
Keeping Up with the Standing of Licensees in Trademark Infringement Cases, Kroma Makeup EU, LLC v. Boldface Licensing + Branding, Inc., 920 F.3d 704 (11th Cir. 2019), cert. denied sub nom. Kroma Makeup EU, LLC v. Kardashian, No. 19-310, 2019 WL 5150533 (U.S. Oct. 15, 2019)
“Registration or Bust: Supreme Court Resolves Copyright Circuit Split “, Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881 (2019)
Book that Domain Name Quickly: 4th Circuit Affirms Booking.com as a Protectable Trademark, Booking.com B.V. v. United States Patent & Trademark Office, 915 F.3d 171 (4th Cir. 2019), as amended (Feb. 27, 2019), cert. granted sub nom. Patent & Trademark v. Booking.com B.V., No. 19-46, 2019 WL 5850636 (U.S. Nov. 8, 2019)
Screenwriter “Kills” Jason: Victor Miller Allows To Terminate His Grant Of Rights In Friday The 13th Screenplay, Horror Inc. v. Miller, 335 F. Supp. 3d 273 (D. Conn. 2018)
Monster Energy Awarded Monster Punitive Damages, Monster Energy Company v. Integrated Supply Network, LLC, Case No. 5:17-CV-00548-CBM-RAO (C.D. Cal. 2018)
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