Thomas T. Chan

Thomas Chan, chairman and founder of Chan Law Group, has been an internationally acclaimed lawyer and mediator for more than thirty years. His practice focuses on: mediation, complex litigation, legal strategy, negotiation, and strategic business transactions, particularly involving intellectual property, technology, entertainment and China trade.

His precedent-setting work in intellectual property law, China trade, encryption software decontrol, and litigating against Microsoft (more than twenty cases in all) has been widely reported in all major news media around the world and in Bill Gates' biographies. He was lead counsel for the first Sino-US PC software joint venture which was reported on the front page of the Chinese People's Daily. He was named Top Fifty Intellectual Property Litigator of California by Daily Journal.

He has successfully represented the banker in a secured transaction funding the production of American Gun (2005) and represented the executive producer in the successful production of The Mars Underground (2005).

A frequent lecturer and commentator, Mr. Chan has been widely quoted in the Los Angeles Times, the New York Times, Wall Street Journal and other national newspapers and magazines, and has made frequent guest appearances on television and radio broadcasts. He has been a speaker at Boalt Hall (UC Berkeley), UCLA School of Law and Anderson School of Management, Finnish Institute for International Trade, SPA, Comdex, MacWorld International Summit, and the Computer Law Association. He has testified in U.S. Congressional and Administrative hearings on reducing trade barriers and protecting intellectual property.

Prior to founding Chan Law Group, Mr. Chan was in-house counsel with various corporations, including general counsel of Lee Data Corporation (one of the largest 10 publicly held corporations in Minnesota then.) Mr. Chan holds a Doctor of Law and Bachelor of Arts (magna cum laude) degree from the University of Wisconsin. During law school, he was a student intern with the Honorable Shirley Abrahamson, current Chief Justice of the Wisconsin Supreme Court. He was trained as a mediator at the renowed California Academy of Mediation Professional and selected to serve on the Neutrals Panel of INTA and Los Angeles County Superior Courts.

Areas of Practice:

Complex Litigation

Intellectual Property

Strategic Business Transactions

Negotiation

Entertainment

International Trade

China Trade

Mediation and Arbitration

Bar Admissions:

California 1987

Education:

University of Wisconsin, Madison, Wisconsin, J.D., (1979).

University of Wisconsin, Whitewater, Wisconsin, B.A., magna cum laude. Psychology and Mathematics (1973).

Representative Matters:

Represented Z-Nix, a tiny computer mouse manufacturer, in successfully filing the first antitrust lawsuit against Microsoft. This case was widely reported in all major media around the world, and is mentioned in most of Bill Gates' biographies. Since then, litigated against Microsoft in 20 separate cases, probably more than any other law firm. Microsoft, Inc. v. Z-Nix, United States District Court for the Central District of California, Case No CV 92-3711 KN(GHKx).

Successfully invalidated all three lighter utility patents on the basis of a precedent setting summary judgment motion. Tokai Corp, et. al. v. Easton Enterprises, Inc., United States District Court for the Central District of California, Case No. EDCV 07-883-VAP. Affirmed on appeal by the United States Court of Appeals for the Federal Circuit, Case Nos. 2010-1057 and 2010-1116.

Prosecuted copyright and trademark claims on behalf of the leading educational publisher, School Zone Interactive against Spanish and Arabic localization company and won summary judgment motion and an award in excess of $2.3 million, plus attorney’s fees. Multimedia Zone Inc. et al. v. Star E Media, et al., United States District Court for the Central District of California, Case No. SA CV 03-1151 JVS (ANx).

Defended a software distributor accused of selling gray market software in violation of the copyright laws. Successfully moved for summary adjudication of the copyright claims, establishing that the first sale doctrine applied to the sale of software products. Novell v. Cableware Technologies, Inc., United States District Court for the Central District of California, Case No. 99-05019 MRP (Mcx).

Defended an infrasonic massager importer accused of million dollar trademark infringement and unfair competition. Client switched over after losing the preliminary injunction motion. Won on summary judgment motion and forced plaintiff to pay our client instead in settlement. China Healthways v. East Health Development, Inc., et al., United States District Court for the Central District of California, Case No. CV 02-3137 LGB (JWJx).

Prosecuted counterfeit tea ring on behalf of one of the largest fine tea merchant: secured a seizure order, permanent injunction and judgment in the amount of about $850,000, including attorney’s fees and costs. Eastrise v. Kim Seng, United States District Court for the Central District of California, Case No. CV 97 9313 DT (RNBx).

Successfully led the defense of a bank and loan officer accused of half a million dollar misappropriation of trade secret by winning a bench trial. Preferred Bank v. East West Bank, et al. Los Angeles Superior Court, Case No. BC 253382.

Successfully prosecuted AST Computers on behalf of GVC Corp for breach of computer contract for the entire claims: in excess of $5,000,000. G-Tech U.S.A., Inc. v. AST Computers, Los Angeles Superior Court, Case No. BC 225807.

Defended GVC, the world's largest modem manufacturer then, in a patent litigation. Client was so satisfied with the settlement, I was appointed the client's exclusive outside counsel. Xircom v. Chenel, United States District Court for the Central District of California, Case No. 95-0967 HLH. Opposing counsel: Baker & Hostetler.

Successfully opposed the apparel trademark application for “OTTO KERN” by one of the world’s largest fashion conglomerates. Otto International, Inc. v. Otto Kern GmbH, Opposition No. 91170126 (TTAB 2009). Opposing Counsel: Alston & Bird.

Defended a shoe importer on counterfeiting claims after its inventory was seized without notice by FILA. After filing of the opposition to the order to show cause re preliminary injunction, the action settled with all of the shoes returned to the client, and no payment of money and no injunction. Tact Sane adv. Fila, United States District Court for the Central District of California, Case No. CV 98 56187 R (RNBx).

Represented East West Bank in a successful secured transaction funding the production of American Gun (2005)

Represented Executive Producer Randy Wooten and Orange Dot Entertainment in the production and distribution of the documentary, The Mars Underground (2005), a Scot J. Gill film

Represented UCLA Vice Chancellor Chi Ming Ho and Professor C. J. Kim in a multimillion dollar micro machine patent transaction with one of the ten largest computer companies.

Lead negotiator and counsel in the first PC software joint venture in PRC. This transaction was so important to China that it was reported on the front page of the China People's Daily, China’s official newspaper.

Represented GAT, a financial software and consulting company, and its principal, Professor Tom Ho, in a multimillion dollar merger with publicly-held Barra.

Represented PIC in a software development agreement with IBM funded by IBM and secured by copyright in the source code of the software.

Counseled a regional bank in successfully hiring the entire sales department of a competing bank in lieu of having to acquire the competing bank, saving client about twenty-five million dollars in merge cost.

Classes, Seminars Taught:

Annual Intellectual Property Update, SCCLA, 2000 – 2002

Speaker at Boalt Hall (UC Berkeley), UCLA School of Law and Anderson School of Management, Finnish Institute for International Trade, SPA, Comdex, MacWorld International Summit, and the Computer Law Association on international trade and intellectual property.

Professional & Community Services & Recognitions:

Appointed by the U.S. Secretary of Commerce and the U.S. Trade Representative to serve on the Industry Sector Advisory Committee, he advised the U.S. on trade policies in the Reagan and senior Bush administrations.

Past Board member of the Asian Pacific American Legal Center, Chinese American Lawyers Association of Southern California, Export Managers Association of California, Big Brothers and Sisters of Wausau, Wisconsin, South Bay Chinese Cultural Center (South Bay Chinese School). Torrance Memorial Medical Center Foundation.

Founder Business Software Alliance

Founder and past Chairman, CAUSE

Member and Board of Directors, NAMWOLF

Founder and Past Board of Governor, Asian Pacific American Lawyers Association of Los Angeles

Keynote speaker, U.S. Department of Commerce’s Annual Executive Conference

Listed in Marquis Who’s Who in the World and Who’s Who in American Law

INTA Panel of Neutrals

Los Angeles County Superior Court Panel of Mediators and Arbitrators

Go-To Lawyer, Corporate Counsel Magazine

AV rated, Martindale Hubbell

Top Intellectual Property Attorney of California, Daily Journal

Languages:

English

Mandarin

Cantonese

Shanghainese