Overview
Jodi Benassi focuses her practice on litigation and investigations. Jodi has experience in federal court district actions in California, Texas, Florida and Michigan and actions before the US Trademark Trial and Appeal Board (TTAB) of the US Patent and Trademark Office (USPTO). She has also conducted internal investigations on behalf of audit committees from high profile Fortune 500 organizations to Silicon Valley start-ups.
Jodi counsels private and public clients across a variety of industries on the commercialization, registration, protection and enforcement of intellectual property, as well as alternative dispute resolution. She has experience drafting and negotiating intellectual property provisions in complex commercial transactions, strategic alliance agreements, source code agreements, joint development agreements and has managed software audits. She has advised clients on copyright matters related to works of authorship and international trademark protection. Jodi also has a considerable pro bono practice and is active in her community.
While in law school, Jodi was a business editor and associate for the Journal of International Law and Senior Fellow at the California Broadband Institute. Additionally, she received a certificate in High Technology Law, with honors, earned the High Tech Excellence Award. Prior to joining the practice of law, Jodi held several executive positions in the technology sector where she participated in a corporate acquisition, managed prominent corporate expansions into the Latin America and European cable and telecommunication markets, and helped close an initial public offering.
Results
- Thelonious Monk, Jr. v. North Coast Brewing Co. (2018, N.D. Cal.). Represented North Coast Brewing Co. in a trademark infringement and rights of publicity action concerning the image and likeness of Thelonious Monk Sr., resulting in settlement
- Counsel in audit committee investigations of potential corporate misconduct and related advice on remediation and enhancements to corporate compliance programs for Fortune 500 software and hardware technology companies
- Network-1 v. Hewlett Packard Enterprise (2017, E.D. Tex.). Achieved a complete defense verdict for Hewlett Packard Enterprises in the Eastern District of Texas. The jury rejected the infringement claims for a patent alleged to be standard-essential and licensed throughout the networking industry for more than a hundred million dollars. The jury found the asserted claims not infringed and invalid. The invalidity finding followed two reexaminations and full review by the PTAB during an inter partes review
- Dave Brock v. Nicolas Turner (TTAB 2017). Prevailed in a trademark opposition oral argument before the Trademark Trial and Appeal Board of the US Patent Office, securing exclusive rights to the use of a musical group’s name for the founder of the band over former members of the group
- Wang v. Golf Tailor, LLC (2017, N.D. Cal.). Represented Wang, a golf club designer, in a trade secret and intellectual property infringement action. Obtained a motion to dismiss the trade secret claim
- Represented trademark applicant in trademark infringement litigation, securing applicant’s right to register the mark.
- Prevailed on behalf of a technology company in an international arbitration, winning an arbitral award against a patent licensee for breach of contract
- Negotiated settlement agreement on behalf of a playwright against a production company for breach of contract.
- Represented a pro bono client before the Domestic Violence division of the Superior Court of California, County of San Mateo, attaining a restraining order on behalf of her and her child
Recognitions
- California State Bar, Wiley W. Manuel Certificate for Pro Bono Legal Services
Community
- Lawyers for the Creative Arts, pro bono attorney
- California Lawyers for the Arts, pro bono attorney
- Legal Aid Society of San Mateo County and CLSEPA, pro bono attorney
- American Bar Association, member
- Santa Clara County Bar Association, member
- Los Angeles County Bar Association, member
- International Bird Rescue, board member
Credentials
Education
Santa Clara University School of Law, JD, 2015
San Jose State University, BS, 2003
Admissions
California
Courts / Agencies
US District Court for the Northern District of California
US District Court for the Eastern District of California
US District Court for the Central District of California
US District Court for the Eastern District of Texas
US District Court for the Eastern District of Michigan
US District Court for the Middle District of Florida
US District Court for the Southern District of Florida
US Patent and Trademark Office
