Commercial and Intellectual Property Litigation

 

312-527-1450

ktottis@tottislaw.com

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Admissions

  • Illinois
  • United States Supreme Court
  • U. S. Court of Appeals for the Sixth Circuit, Seventh Circuit, Federal Circuit
  • United States District Court for the Northern District of Illinois, Central District of Illinois, Southern District of Illinois, Eastern District of Michigan
  • Northern District of Illinois Trial Bar

 

Degrees

  • University of Michigan, J.D. 1986
  • University of Michigan, A.B. with Distinction and Honors in English, 1983

 

Languages

  • German
  • French

 

KEVIN TOTTIS

Managing Partner

Kevin opened TottisLaw in 1996 after several years as a partner in a national law firm. He has over 25 years of litigation experience, first-chairing dozens of matters for clients across the country. Along with his substantial background in commercial cases, Kevin has extensive experience in all areas of intellectual property litigation and is a frequent speaker and writer on IP issues. He is on the faculty of the Practising Law Institute, is a Martindale Hubbell AV Preeminent-rated attorney and has been named an Illinois Super Lawyer since 2010. Kevin has been elected by his peers to leadership positions in several professional associations including seats on the boards of the American Intellectual Property Law Association and Lawyers Club of Chicago and secretary of the U.S. group of the Association Internationale pour la Protection de la Propriètè Intellectuelle. He also is an arbitrator with the American Arbitration Association. He received both his undergraduate and law degrees from The University of Michigan (A.B. 1983, with Distinction and Honors in English; J.D. 1986).

Representative Cases
Presentations & Publications
Professional Leadership
Commercial
  • Lead counsel at trial on behalf of textile manufacturer in action against former customer under theories of alter ego, successor corporation liability and fraudulent transfer. Affirmed by Seventh Circuit.
  • Led team that obtained directed finding in clients' favor on Deceptive Business Practices Act claim at trial for real estate development company and its owner. Following trial, court not only ruled in clients' favor on all remaining counts, but also awarded attorneys' fees.
  • Following two-week hearing, obtained ruling in favor of automobile manufacturer in action brought by largest auto dealers in Milwaukee market to block establishment of new dealership under Wisconsin Motor Vehicle Dealer Statute.
More
  • Represented Italian manufacturer in action for breach of $27-million handshake distribution deal. Following three-week trial, jury returned verdict in favor of client for all lost profits. On earlier appeal from summary judgment, obtained reversal resulting in leading Seventh Circuit opinion on statute of frauds.
  • Led team that obtained preliminary injunction on one day's notice for temporary health care provider against local distributor in action for breach of fiduciary duty, fraud and violations of representative agreement. Successfully defended subsequent challenges to injunction and obtained favorable settlement for client.
  • As lead counsel, obtained directed finding on behalf of defendant wholesale grocery distributor in action by dairy supplier for breach of contract, quantum meruit and vexatious delay.
  • Defended bank in action by plaintiff seeking over $30 million for alleged mismanagement of trust funds. At trial, successfully barred in limine plaintiff's experts and subsequently obtained judgment in favor of bank following trial on the merits.
  • Led team that enforced oral settlement agreement and obtained summary judgment for U.S. subsidiaries of Chinese manufacturing company in action for fraud and breach of contract.
  • After filing suit and following significant negotiations, as lead counsel obtained multi-million dollar settlement in favor of client in minority shareholder oppression action after company offered only $75,000 for buyout.
  • Headed up defense for investment bank in class action seeking several million dollars for alleged violation of Telephone Consumer Protection Act. After filing and briefing motions to dismiss raising issues unaddressed by numerous other defendants in related actions, case settled for $7500.
  • Led defense against respondent warranty liability insurance agents in arbitration brought by purchasing group seeking over $1 million in damages for fraud and breach of contract. After arbitration, panel awarded claimant $48,000.

Copyright
  • Counsel of record before the United States Supreme Court on behalf of the American Intellectual Property Law Association in amicus filing addressing extraterritorial application of first-sale doctrine.
  • Lead counsel on behalf of professional examination board in action for copyright infringement and numerous state law claims arising out of unauthorized copying of test questions. Negotiated settlement providing for entry of consent judgment in client's favor awarding monetary and permanent injunctive relief, assignment of infringing website domain name as well as associated emails and business accounts.
  • Sole arbitrator in million-dollar dispute involving copyrighted software, breach of fiduciary duty and work-made-for-hire issues. Rendered detailed decision after four-day hearing.
  • Led team on behalf of plaintiff publisher in suit for over 14,000 counts of copyright infringement. Sought and obtained ex parte order permitting seizure and impounding of infringing illustrations from defendant/competitor's computer system, CD-ROMs and printed publications resulting in favorable settlement for client.
  • Lead counsel in defense of web-based client and its corporate officers in action for, inter alia, copyright infringement, RICO and tortious interference. Avoided takedown of website under Digital Millennium Copyright Act. Following filing of motion to dismiss and counterclaim, case settled including assignment of all copyrights in dispute to client.
More
  • Led defense of university press and author in action for copyright infringement arising out of use of photographs in award-winning book. Obtained voluntary dismissal by plaintiff.
  • Led team on behalf of consumer products company in action against competitor for copyright infringement of text and illustrations in instructions for use. Obtained preliminary injunction and, ultimately, settlement with a stipulated permanent injunction.
  • Represented performing rights organization in numerous actions for copyright infringement resulting in favorable judgments and settlements.

Trademark / Trade Dress
  • Retained after district court preliminarily enjoined opening of client's restaurant under what plaintiff claimed was a confusingly similar mark. Replaced prior counsel and, as lead counsel, obtained expedited appeal and, ultimately, complete reversal by Seventh Circuit resulting in frequently-cited opinion on likelihood of confusion.
  • Lead counsel for consumer products company in action for trademark infringement against competitor who entered market with a phonetically identical mark and federal registration which pre-dated client's. Despite eight-year registration of defendant's mark and laches defense, following preliminary injunction hearing, obtained settlement with both distributor and manufacturer including a permanent injunction barring use of mark in client's market.
  • Led representation of consumer products company in trade dress infringement action against competitor for sale and distribution to major U.S. retailers of confusingly similar packaging of generic products. Ultimately obtained settlement with monetary payment and permanent injunction.

Patent / Trade Secrets
  • In true “bet-the-company” case, led team that defended against five counts of patent infringement and two counts of unfair competition. Following favorable motion in limine ruling significantly limiting damages, settled case with business solution and no money exchanging hands.
  • In multi-million dollar patent infringement and trade secret misappropriation case, part of team that successfully defeated plaintiff’s motion for preliminary injunction and obtained dismissal of patent claims based on ineligible subject matter.
  • Lead counsel on behalf of defendant distributor in action for trade secret misappropriation, trademark infringement, breach of fiduciary duty and breach of contract. Obtained dismissal of breach of fiduciary duty and breach of contract claims. Won summary judgment on liability on counterclaims for breach of contract and violation of Illinois Sales Representative Act, resulting in a seven-figure settlement in favor of client and dismissal of all of plaintiff's claims.
  • Represented Fortune 500 consumer products company in action against competitor for trade secret misappropriation, including misappropriation under inevitable disclosure doctrine. Case favorably settled on eve of trial.
More
  • Led team that represented interests of non-party inventor and large not-for-profit medical research institute in several actions relating to autoimmune disease and immunotherapy patents, most recently resulting in favorable settlement.
  • Defended web-based client against claims for patent infringement arising out of use of online software. Favorably settled.
  • Defended manufacturer and its subsidiary in five-week trial against claims for patent infringement, trade secret misappropriation, and unfair competition.
Speeches
  • “The Lanham Act’s Bar on Registration of Immoral, Scandalous, and Disparaging Marks: A Debate,” Practising Law Institute Advanced Trademark Law Annual Review, New York, March 2016
  • “Copyright Year in Review,” 53rd Annual Conference on Intellectual Property Law, Center for American and International Law, November 2015
  • "Copyright Hot Topics," Tenth Annual Door County Intellectual Property Academy, State Bar of Wisconsin, July 16, 2015
  • "Copyright Year in Review," AIPLA 2014 Annual Meeting
  • "Intellectual Property Essentials for Business Leaders: The Story on Copyright," AIPLA 2013 Mid-Winter Institute
  • "Trademark Litigation Strategies," Iowa Intellectual Property Law Association Annual Meeting, October 2012
  • "Is Copyright Infringement a Necessary Step for Patent Prosecution?" October 2012 ABA Litigation Section, IP Committee Roundtable
More
  • "Understanding Copyright Law in the Data Era 2012," Practising Law Institute, Chicago, June 2012
  • Commentator on the Anti-Counterfeiting Trade Agreement for China Radio International's public affairs program, Beyond Beijing, March 2012
  • "Costco Redux: Why Both Sides Got It Wrong," AIPLA Spring Meeting, May 2011
  • "The U.S. Supreme Court Takes on the Secret Handshake," Malaysian Bar Council/ASEAN-IPA Conference on "Emerging Trends in the IP Landscape," October 2007
  • "Waiver of Attorney-Client Privilege After EchoStar and Seagate," AIPLA Annual Meeting, October 2007
  • "How to Avoid Drafting Trade Secrets Away," AIPLA Annual Meeting, October 2006
  • "The Year in Copyright Law," AIPLA Advanced Copyright/Trademark Seminar," June 2003
  • "Litigating Under the Anti-Trafficking Sections of the DMCA," AIPLA Annual Meeting, October 2002

Moderator/Panelist
  • "When the World Didn't Come to an End," Copyright Society of the United States 2015 Annual Meeting
  • "Copyright and Gray Market Goods: John Wiley & Sons v. Kirtsaeng," DePaul University College of Law Journal of Art, Technology, and Intellectual Property symposium, April 2013
  • "SOPA/PIPA Without the Shouting," AIPLA Mid-Winter Institute, January 2012
  • "Global IP Developments," AIPPI-US 2011 Annual Meeting
More
  • "Digital Media & Broadband Entertainment Forum," SUPERCOMM 2009
  • "E-Discovery Unplugged," AIPLA Spring 2005 Meeting
  • "Beyond the Preliminary Injunction: Trying the Trademark Infringement Case," AIPLA Annual Meeting, October 2003

Articles
  • "SCOTUS Adopts International Copyright Exhaustion in Kirtsaeng," IP Watchdog, www.ipwatchdog.com, March 2013
  • "Refocusing Kirtsaeng Analysis on Extra-Territoriality Principles," IP Watchdog, www.ipwatchdog.com, February 14, 2013
  • "Unscrambling the Anti-Unscrambling Law: The Digital Millennium Copyright Act in Light of Eldred v. Ashcroft," IP Litigator, January/February 2004
  • American Intellectual Property Law Association
    • Fellow, 2015-present
    • Board of Directors, 2011-2014
    • Chair, Copyright Law Committee, 2009-2011
    • Chair, 2011 Mid-Winter Institute Planning Committee
  • Association Internationale pour la Protection de la Propriété Intellectuelle
    • Member, Standing Committee on Copyright and Related Rights, 2015 - present
    • Secretary, U.S. Group, 2013-2014
    • Executive Committee, U.S. Group, 2010-2013
    • Chair, Copyright Exhaustion Working Question, 2014 International Congress, Toronto, Canada
    • Delegate, 2014 International Congress, Toronto, Canada
    • Delegate, 2012 International Congress, Seoul, Korea
  • Lawyers Club of Chicago
    • Board of Directors, 2014 – present
  • American Bar Association
    • Intellectual Property Law Section
      • YLS Board, 2010-2011
      • Vice-Chair, JIOP Committee, 2009-2010
    • Litigation Section
  • Copyright Society of the United States
    • Co-Chair, 2015 Annual Meeting
  • Richard Linn American Inn of Court (selected by peers), 2013- present
  • University of Michigan Board for Student Publications, 2015-present
    Appointed by president of university to board charged with providing legal and financial oversight to financially- and ditorially-independent student publications.

 

Commercial and Intellectual Property Litigation