Brett M. Schuman

Schuman has a diverse IP litigation practice in which he represents clients such as Assessment Technologies Institute LLP, Keysight Technologies Inc., 2Wire Inc. (now CommScope Inc.), Datavant Inc. and Anthony Levandowski, the engineer at the heart of the Google-Uber Technologies litigation.

And he is the founder and co-lead of Goodwin’s cannabis practice, which allows him to explore an area of law that is not well-developed and is vexed by unresolved tensions between federal cannabis prohibition and states’ accelerating move toward legalization.

“I have a large tech-side practice, and in the cannabis space I can work at the intersection of IP and an area where there are many more opportunities to shape the law,” Schuman said. “I really do love this work.”

Judges are intrigued too.

When Schuman first appeared for client Kiva Brands Inc., a leading California maker of cannabis infused edibles, before U.S. District Judge Charles R. Breyer of San Francisco, in a trademark infringement suit filed by a Hawaiian company with a similar name, the judge smiled, Schuman said.

“There are many, many complicated political, jurisprudential, factual issues,” Breyer said, in Schuman’s paraphrase. Kiva Health Brands LLC v. Kiva Brands Inc., 19-CV03459 (N.D. Cal., filed June 19, 2019).

KHB has a federal trademark registration of the Kiva mark, but it came some three years after Schuman’s client began making cannabis products under the Kiva name.

“Judge Breyer pointed out that Kiva’s prior use of the name doesn’t count in the eyes of federal trademark law, so he said he had to put blinders on when considering prior use,” Schuman said. “In any other case, we may have gotten summary judgment.”

The case raises questions of how the illegality doctrine, which generally bans causes of action arising from a wrongful act, should apply.

“In federal law, with cannabis, you generally can’t bank profits, you can’t insure it and you can’t deduct business expenses for tax purposes,” Schuman said.

Even so, he obtained early wins for Kiva, including defeating the plaintiff’s preliminary injunction and summary judgment motions. A trial is scheduled for October.

Schuman also leads Goodwin’s defense of Raw Garden, a California cannabis farm, in trademark infringement litigation with a plaintiff that makes, distributes and sells organic rolling papers under the “Raw” mark. BBK Tobacco & Foods LLP v. Central Coast Agriculture Inc., 19-CV05216 (D. Az., filed Sept. 18, 2019).

In this case, Schuman wielded the illegality doctrine to oppose disclosure of his client’s profits, contending the plaintiff could never get a disgorgement order because the profits are from a business that remains illegal under federal law.

The judge said it was an interesting question that he’d decide later, Schuman said.

“I was trying for a creative argument that is supported by a developing body of law,” he added.

In pro bono work, Schuman won the compassionate release from a life sentence of a man convicted of running a commercial marijuana grow in Georgia. U.S. v. Cox, 05-CR00002 (D. Ga., release granted Jan. 5, 2021).

“All Mr. Cox did was cultivate and distribute cannabis—what many of our clients do today,” Schuman said.

— John Roemer