Bobby A. Ghajar

As a leading enforcer and litigator in the trademark and copyright fields, Cooley LLP partner Bobby A. Ghajar represents industry leaders and billion-dollar brands such as Abercrombie & Fitch Co., Anheuser-Busch Cos. LLC, Apple Inc., Bath & Body Works LLC, Ernst & Young Global Ltd., Facebook, Mattel Inc., Newmark Group Inc., Spin Master Corp., Upwork Global Inc. and Victoria’s Secret & Co.

He’s among a few California attorneys to take trademark and copyright claims to jury trials and to argue trademark cases to appellate courts and the U.S. Patent and Trademark Office.

In one current trademark case, the issue was the word “freelancer.” Ghajar was retained to take over a competitor v. competitor matter regarding job marketplace client Upwork’s use of “freelancer” on its website and in an app name.

“The plaintiff was able to get a USPTO registration for ‘freelancer,’ and it didn’t like our use of the word,” Ghajar said. “It turned out what it really was griping about was that when you downloaded the Upwork app to your phone, it would display ‘client’ or ‘freelancer,’ and it took issue with that.” The plaintiff, claiming to hold incontestable rights to the term, sought a temporary restraining order and an injunction to force Upwork to shut down its Upwork for Freelancers app. Freelancer.com v. Upwork Global Inc., 3:20-cv-06132 (N.D. Cal., filed Aug. 31, 2020).

In his response, Ghajar put forward a relatively novel application of the fair use doctrine to the descriptive name of an app as it appears on a personal device. Ghajar further argued that Freelancer.com had failed to prove irreparable injury. The court denied the plaintiff’s motion and stayed the case while Freelancer.com appealed unsuccessfully to the 9th U.S. Circuit Court of Appeals both at the panel and en banc levels and to the U.S. Supreme Court.

“It’s an unusual case to see a plaintiff litigate so vigorously over a term so generic,” Ghajar said. He said the plaintiff’s website contains an article tracing the origin of the term freelancer back centuries. “But you can’t use it in connection with an app?” Trial is now set for 2023.

Ghajar is lead counsel defending a data center provider and host in a suit by plaintiffs accusing it of knowingly providing hosting services to VPN services that allegedly share copyrighted movies using BitTorrent software. His client allegedly failed to heed hundreds of thousands of take down notices. Millennium Funding, Inc. v. Quadranet Inc., 1:21-cv-20862 (S.D. Fla., filed March 3, 2021).

His successful motion to dismiss pointed out that the defendant had no relationship with the copyright-infringing individuals. Though other similar defendants settled, Ghajar’s client prevailed as the court found that Quadranet could not be contributorily or vicariously liable.

“The CEO of Quadranet is someone I know personally,” Ghajar said. “I love to fight for all my clients, but this win was even more rewarding.”

– John Roemer