Michelle Hon Donovan has diverse national practices in the areas of intellectual property law, cyber law, litigation and licensing. Ms. Donovan's clients represent a wide range of industries, including pharmaceutical and biotechnology, high-end consumer electronics, software, music, cosmetics and personal care products, real estate development, education, staffing, food and beverage, and social networking.

Ms. Donovan's intellectual property matters include assisting brand owners in developing global brand protection strategies, including domestic and international filing, opposition and enforcement strategies. She also advises clients concerning social media, copyrights, Internet domain names, trade secrets, unfair competition and the licensing of intellectual property. Ms. Donovan also handles matters concerning acquisition and disputes of domain names, including successfully handling domain name and cybersquatting disputes under ICANN's Uniform Dispute Resolution Policy.

Ms. Donovan also handles a variety of cyber law matters. She has handled security and data breaches and also counsels clients on privacy laws, cybersecurity laws, and social media issues. Ms. Donovan has developed a focused practice in counseling on Internet marketing and lead gen issues.

Ms. Donovan's litigation practice includes cases involving commercial, patent, copyright, trademark and domain name disputes, as well as a wide range of matters involving contracts, torts, privacy, defamation, franchise termination, unfair competition and false advertising. Recognizing the value of settlement to her clients, Ms. Donovan has often used her skills, judgment, and creativity to negotiate favorable settlements for clients and frequently obtains complete relief for her clients without filing a lawsuit. When settlement is not desired or practical, Ms. Donovan tirelessly fights for her clients' rights to summary judgment and trial.

Ms. Donovan also negotiates and drafts various technology and licensing agreements, including but not limited to intellectual property licenses, domain name and intellectual property purchase agreements, software licenses, software development agreements, co-author agreements, ghost author agreements, distribution agreements, nondisclosure agreements, and consulting/independent contractor agreements.

Ms. Donovan is a 2004 cum laude graduate of the University of San Diego School of Law, where she was Student Comment Editor of the San Diego International Law Journal and elected to the Order of the Coif. Ms. Donovan externed with Magistrate Judge Ruben B. Brooks in the United States District Court, Southern District of California. She is a graduate of the University of Minnesota (B.S., Genetics and Cell Biology).

Representative Matters

    Trademark Prosecution

  • Represented a variety of clients in the biotechnology, pharmaceutical, high tech, and software industries to prepare and prosecute domestic and international applications
  • Represented clients in the prosecution and defense of oppositions and cancellation actions filed before the Trademark Trial and Appeal Board
  • Represented clients in the prosecution and defense of international oppositions, non-use cancellations and removal actions throughout the world, including EU, UK, China, Australia, India, Brazil, Canada and Taiwan.
  • Filed appeal of refusal of registration before the Trademark Trial and Appeal Board
  • Cybersecurity and Privacy

  • Represented large multi-campus college with data breach incident, involving multi-state breach notifications, remedial action and developing security breach incident response plans.
  • Represented college with data breach incident in California, including breach notification, remedial action, and developing security breach incident response plans.
  • Advise companies of all sizes on cybersecurity issues and compliance with legal obligations.
  • Obtained a decision in the Central District of California defeating a highly contentious bid for preliminary injunction over the alleged violation of California wiretap and privacy laws, affirmed by the Ninth Circuit on appeal.
  • Advise companies of all sizes on complex privacy issues.
  • Prepare Privacy Policies and Terms of Use for companies across a variety of industries.
  • Licensing and Agreements

  • Represented an operator of premier vacation home properties in a $10 million acquisition of a Missouri tourism center and accompanying intellectual property.
  • Represented manufacturer in licensing its trademarks and copyrights in connection with the resale of its manufactured goods in various retail establishments
  • Represented various manufacturers with domestic and international distribution agreements
  • Represented California college in licensing curriculum and trademarks to third-party schools
  • Represented multiple clients with the purchase of domain names
  • Represented franchisor with software development and licensing agreements
  • Represented numerous companies with online advertising and marketing agreements
  • Non-disclosure agreements
  • Intellectual Property Litigation

  • Represented biotechnology imaging company sued for patent infringement of imaging method patents. Obtained favorable settlement after obtaining partial summary judgment on all but one claim.
  • Represented a California college in a trademark infringement action. A direct competitor was using the client's trademarks in the meta data of its webpage. We obtained consent judgment of infringement and payment of damages.
  • Represented a designer in bringing a copyright infringement suit against an infringing competitor. Obtained favorable settlement for the client.
  • Represented cloud-based music storage service in a copyright infringement case brought by a group of major record labels and publishers. Won a favorable summary judgment decision involving issues of first impression related to storing and playing music from the cloud.
  • Represented nationwide staffing corporation in a trademark infringement action. Assisted client in bringing an action to protect its registered trademark; obtained settlement where defendant agreed to change its name and pay damages.
  • Represented Las Vegas casino and resort sued by lighting designer for copyright infringement. We obtained summary judgment of non-infringement.
  • Represented a pharmaceutical research institute sued for patent infringement of imaging method patents. Obtained summary judgment of non-infringement.
  • Represented multiple educational institutions in connection with the misappropriation of the schools' name in connection with internet scam websites and degree mills. We assisted the clients in obtaining registered trademarks and pursuing those who misappropriated our clients' trademarks through arbitration under the Uniform Domain-Name Dispute Resolution Policy.

Areas of Practice

  • Litigation
  • Intellectual Property
  • Internet Law
  • Internet Marketing/Lead Generation
  • Privacy
  • Cybersecurity and Data Breaches
  • Computer Law
  • Software
  • E-commerce
  • Licensing

Admissions

  • California
  • U.S. Patent and Trademark Office
  • U.S. District Court for the Central District of California
  • U.S. District Court for the Northern District of California
  • U.S. District Court for the Southern District of California
  • U.S. District Court for the Eastern District of California
  • U.S. District Court for the Central District of Illinois
  • U.S. Court of Appeals for the Ninth Circuit
  • U.S. Court of Appeals for the Federal Circuit

Education

  • University of San Diego School of Law, J.D., cum laude, 2004
    Order of the Coif
    Comments Editor, San Diego International Law Journal
  • University of Minnesota, B.S., Genetics and Cell Biology, 1999

Experience

  • Duane Morris LLP
    - Partner, 2014-present
    - Associate, 2005-2013
  • Buchanan Ingersoll
    - Associate, 2004-2005
    - Summer Associate, 2003
  • The Honorable Ruben B. Brooks, Federal District Court, Southern District of California
    - Extern, 2004
  • The Salk Institute, Ron Evans Gene Expression Laboratory
    - Research Assistant, 1999-2001

Professional Activities

  • Lawyers Club
  • San Diego Athena
  • State Bar of California
  • San Diego Bar Association

Civic and Charitable Activities

  • Co-founder of a joint program with San Diego State University and the University of San Diego School of Law to pair SDSU student entrepreneurs with USD law students and Duane Morris attorneys to offer legal assistance for start-up businesses (2017-present)
  • Mama's Kitchen, San Diego, California. Board of Directors (2009-2012; Volunteer (2007-present): Non-profit organization, providing hot meals to persons suffering from HIV and cancer
  • Lilith's Hands, San Diego, California. Founder & President (2001-2002): Organized and promoted charity concert to benefit women in the community, including sexual assault and domestic violence programs

Selected Publications

Selected Speaking Engagements

  • Presenter, “E-Signed, Sealed, Delivered,” Duane Morris Commercial Contracts Checkup Series, Webinar, January 24, 2019

  • Presenter, "Learn to Be Legally Compliant and Outperform Your Competition in the Ever-Changing Marketing Landscape. The Latest in Misrepresentation & New Marketing Strategies that Drive Major Results for School," CAPPS 34th Annual Conference, Westin Mission Hills Golf Resort & Spa, Rancho Mirage, California, October 11, 2018

  • Presenter, “Are You Up-to-Date on Key Provisions and Confidential Information Protections in Term Sheets, MOUs and Letter Agreements?” Duane Morris Commercial Contracts Checkup Series, Webinar, June 21, 2018

  • Speaker, "Leveraging the Present and Future of Social Media to Connect and Engage Future Graduates," 31st Annual Conference "Strong Student, Proud Graduates," California Association of Private Postsecondary Schools (CAPPS), October 8, 2015
  • "Cybersecurity: Addressing the Risks to Schools and Student Records," APSCU webinar, May 2015
  • Speaker, "Cyber Crime: Beware of Multi-Dimensional Attacks," San Francisco Treasury Symposium, May 1, 2015
  • Speaker, "Cybersecurity: Managing Risks and Protecting Your Organization," 2015 Accounting & Financial Women's Alliance
  • Speaker, "Cybercrime and Protecting Your Organization," 2015 Webinar co-presented with FBI Internet Crime Complaint Center (IC3)
  • Speaker, "Text Talk (Compliance for Telemarketing Texts), 2014 AACS Spring Management Conference
  • Speaker, "Protecting Educational Records at School and in the Cloud," 2014 AACS Legal Seminar
  • Speaker, "Cybercrime and Your Legal Liabilities," 2014 Webinar
  • Speaker, "New Telemarketing Consent Rules under the TCPA," AACS 2013 Annual Conference, November 2013
  • Speaker, "The Business Cyber Liability Luncheon" Nov. 2013 German American Chamber of Commerce Luncheon
  • Speaker, "Protecting Your Rights in a Digital Age" 2013 AACS Spring Management Conference
  • Speaker, "Cyber, Privacy and Social Media Risks: How to Survive in the Digital Age" Sept. 2013 Duane Morris and BB&T Breakfast Briefing
  • Speaker, "Social Media: Dancing on the Edge of a Volcano" Nov. 2012 Duane Morris and BB&T Breakfast Briefing
  • Speaker, "Share on the Inside, Protect on the Outside: Best Practices for IP Protection in the Age of Social Networking" 2011 LES Annual Meeting
  • Speaker, "Misrepresentation Rule and Third Party Vendors" 2011 APSCU Webinar
  • Speaker, "Internet Highway Robbery: Protect Your Domain, Trademarks, & Copyrights from Cyberthieves," 2008 CCA Annual Convention
  • Speaker, "Katie Bar The Door! Protecting Yourself From Privacy Problems & Internet Scoundrels," 2008 AACS Spring Management Conference
  • Speaker, "Proprietary Information, Idea Ownership, and Copyrights," International Special Events Society San Diego Chapter meeting, San Diego, California, November 20, 2008