Thomas T. Chan

Partner

Los Angeles, CA - Downtown Office

Tel: 213.955.0220

View Thomas T. Chan's Biography in Chinese (pdf)

Thomas is a versatile, well-respected and internationally known lawyer and mediator. For more than 30 years, he has represented clients in complex litigation, patent, trademark, copyright, trade secret, licensing, merger and acquisition involving intellectual property, mediation, entertainment and China trade, and as outside general counsel for small to medium size firms. He has represented entrepreneurs and multi-nationals in industries such as computer, software, aerospace, consumer electronic, communication, e-commerce, automotive, sporting good, toy, healthcare, nutritional supplement, food and beverage, home and garden, beauty & fragrance, jewelry, fashion, financial service, real estate, entertainment, publishing, and education. He was trained as a mediator at the California Academy of Mediation Professionals and was selected to serve on the Panel of Neutrals of the International Trademark Association (INTA) and the Panel of Mediators and Arbitrators of the Los Angeles County Superior Courts.

Thomas has engaged in precedent-setting work in intellectual property law and China trade. His representative matters include:

Represented Z-Nix, a tiny computer mouse manufacturer, in successfully filing the first antitrust lawsuit against Microsoft. This case was widely reported in major media around the world and is mentioned in many biographies of Bill Gates. Since then, Thomas has litigated against Microsoft in 20 separate cases. Microsoft, Inc. v. Z-Nix, U.S. District Court for the Central District of California, Case No CV 92-3711 KN(GHKx).
Successfully invalidated all three lighter utility patents on the basis of a precedent-setting summary judgment motion. Tokai Corp, et. al. v. Easton Enterprises, Inc., U.S. District Court for the Central District of California, Case No. EDCV 07-883-VAP. Affirmed on appeal by the U.S. Court of Appeals for the Federal Circuit, Case Nos. 2010-1057 and 2010-1116.
Prosecuted copyright and trademark claims on behalf of a leading educational publisher, School Zone Interactive, against a Spanish and Arabic localization company and won summary judgment motion and an award in excess of $2.3 million, plus attorney’s fees. Multimedia Zone Inc. et al. v. Star E Media, et al., U.S. District Court for the Central District of California, Case No. SA CV 03-1151 JVS (ANx).
Represented MMC Consumables, Inc., and Zhuhai Gree Magneto - Electronic Co. Ltd. before the International Trade Commission (ITC) in a Section 337 Investigation and met clients' objectives. Investigation No. 337-TA-565, In the Matter of Certain Ink Cartridges and Components Thereof.
Defended a software distributor accused of selling gray market software in violation of the copyright laws. Successfully moved for summary adjudication of the copyright claims, establishing that the first sale doctrine applied to the sale of software products. Novell v. Cableware Technologies, Inc., U.S. District Court for the Central District of California, Case No. 99-05019 MRP (Mcx).
Defended an infrasonic massager importer accused of million-dollar trademark infringement and unfair competition. The client turned to Thomas for representation after losing the preliminary injunction motion. Won on summary judgment motion and forced the plaintiff to pay the client instead in settlement. China Healthways v. East Health Development, Inc., et al., U.S. District Court for the Central District of California, Case No. CV 02-3137 LGB (JWJx).
Prosecuted a counterfeit tea ring on behalf of one of the largest fine tea merchants. Secured a seizure order, permanent injunction and judgment in the amount of approximately $850,000, including attorney’s fees and costs. Eastrise v. Kim Seng, U.S. District Court for the Central District of California, Case No. CV 97 9313 DT (RNBx).
Successfully led the defense of a bank and loan officer accused of half a million dollar misappropriation of trade secret by winning a bench trial. Preferred Bank v. East West Bank, et al. Los Angeles Superior Court, Case No. BC 253382.
Successfully prosecuted AST Computers on behalf of GVC Corp for breach of computer contract in excess of $5 million. G-Tech U.S.A., Inc. v. AST Computers, Los Angeles Superior Court, Case No. BC 225807.
Defended GVC, at the time the world's largest modem manufacturer, in a patent litigation. As a result of the favorable settlement, Thomas was appointed the client's exclusive outside counsel. Xircom v. Chenel, U.S. District Court for the Central District of California, Case No. 95-0967 HLH.
Successfully opposed the apparel trademark application for “OTTO KERN” by one of the world’s largest fashion conglomerates. Otto International, Inc. v. Otto Kern GmbH, Opposition No. 91170126 (TTAB 2009).
Defended a shoe importer on counterfeiting claims after its inventory was seized without notice by FILA. After filing of the opposition to the order to show cause re the preliminary injunction, the action settled with all of the shoes returned to the client, and no payment of money and no injunction. Tact Sane adv. Fila, U.S. District Court for the Central District of California, Case No. CV 98 56187 R (RNBx).
Represented East West Bank in a successful secured transaction funding the production of “American Gun” (2005).
Represented Executive Producer Randy Wooten and Orange Dot Entertainment in the production and distribution of the documentary, “The Mars Underground” (2005), a Scot J. Gill film.
Represented UCLA Vice Chancellor Chi Ming Ho and Professor C. J. Kim in a multimillion-dollar micro machine patent transaction with one of the 10 largest computer companies.
Served as lead negotiator and counsel in the first PC software joint venture in the People’s Republic of China. This transaction was so important to China it was reported in the China People's Daily, China’s official newspaper.
Represented GAT, a financial software and consulting company, and its principal, Professor Tom Ho, in a multimillion-dollar merger with publicly held Barra.
Represented PIC in a software development agreement with IBM funded by IBM and secured by copyright in the source code of the software.
Counseled a regional bank in successfully hiring the entire sales department of a competing bank in lieu of having to acquire the competing bank, saving the client about $25 million in merger expenses.

Before Fox Rothschild

Thomas was the chair and founder of his own law firm, the Chan Law Group LLP. He also previously served as in-house counsel with various corporations, including as general counsel of Lee Data Corporation (one of the largest 10 publicly held corporations in Minnesota at the time.)

During law school, Thomas was a student intern with the Honorable Shirley Abrahamson, current Chief Justice of the Wisconsin Supreme Court.

Beyond Fox Rothschild

A frequent lecturer and commentator, Thomas has been widely quoted in the Los Angeles Times, The New York Times, Wall Street Journal and other national newspapers and magazines and has made frequent guest appearances on television and radio broadcasts. He has been a speaker at Boalt Hall (University of California, Berkeley), University of California Los Angeles School of Law and Anderson School of Management, Finnish Institute for International Trade, SPA, Comdex, MacWorld International Summit and the Computer Law Association. Thomas also presented the annual Intellectual Property Update for the Southern California Chinese Lawyers Association (SCCLA) from 2000 to 2002.

Thomas has testified at U.S. Congressional and administrative hearings on reducing trade barriers and protecting intellectual property and has been a keynote speaker at the U.S. Department of Commerce’s Annual Executive Conference.

Thomas was appointed by the U.S. Secretary of Commerce and the U.S. Trade Representative to serve on the Industry Sector Advisory Committee, where he advised the United States on trade policies during the Reagan and senior Bush administrations.

Honors and Awards

• Named one of the Top 50 Intellectual Property Litigators in California by the Daily Journal
• Listed as a "Go-To Lawyer" by Corporate Counsel Magazine
• Listed in Marquis Who’s Who in the World and Who’s Who in American Law
• Martindale-Hubbell "AV" rated
• Included in a list of "Southern California Super Lawyers" for 2012 in the area of Intellectual Property

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