Susan M. Natland

Natland handles all areas of brand protection including trademark selection, procurement, licensing and enforcement. She also deals with copyright and rights of publicity protection as well as emerging data protection and privacy issues. Clients include St. John Knits International Inc., Kate Spade LLC, Infantino Co., Public Storage, L’Oréal Group’s Urban Decay, TLC Communications Technology Holdings Ltd., Arbonne International LLC, Chico’s Brands Investments Inc., Illumina Inc., Comprehensive Educational Services Inc., Prisma Labs Inc. and Broadcom Corp.

She’s even gone along on raids of counterfeit goods factories in China. “We were enforcing the Kate Spade brand,” she said. “I didn’t have to do that, but I wanted to be there to protect the brand. I’m an adventuresome person. I like to go off the beaten path. I substituted my normal lawyer attire and wore all black, including jeans and a cap. We went in with Chinese government enforcement officials.”

For Comprehensive Educational Services, which provides treatment programs for the developmentally disabled under the ACES mark, Natland negotiated a settlement for her client after the New England Center for Children sued for trademark infringement in Massachusetts. She filed a declaratory judgment action in California that led to the deal. CES Inc. v. The New England Center for Children Inc., 16-cv-2463 (S.D. Cal., filed Sept. 30, 2016).

“We went on the offensive,” she said. “When it was over I had a glass of Champagne with opposing counsel because we avoided litigation.”

Natland serves as lead counsel for Prisma Labs in protecting its award-winning photo app that turns photographs into art works using a range of filters. A recent challenge ended this year. “It was a trademark case involving one of the hottest apps of the year,” she said. “The technology behind the app is a game-changer; it’s not just a filter overlay.” The case arose when a third party sued over alleged rights in the mark “Prizmia” for its GoPro camera accessory. Natland and her Knobbe colleagues successfully defended against a motion for preliminary injunction in March; the motion’s failure led the plaintiff to dismiss the case against Prisma Labs. i4software v. Prisma Labs Inc., 16-cv-1307 (D. Del., filed Sept. 29, 2016).

“The opinion from the judge overwhelmingly showed the plaintiff he had very little chance of success,” Natland said. Indeed, citing the huge success of the Prisma Labs filter — it was among the top 10 downloaded apps in any category in 2016 at Apple Inc.’s App Store — Senior U.S. District Judge Sue L. Robinson wrote that consumers are unlikely to mistake Prisma Labs’ product for i4software’s: “The court concludes that, with at least 70 million downloads worldwide and a lack of persuasive evidence of actual confusion, actual confusion is not likely to occur.”

“It was exciting to allow this innovation to thrive,” Natland said.

— John Roemer