Kimberly A. Warshawsky

Partner

warshawskyk@ballardspahr.com
Tel 602.798.5419
Fax 602.798.5595
Phoenix

Kimberly A. Warshawsky is the Practice Leader of the Trademarks and Copyrights Groups, and a member of the Intellectual Property Litigation Group. Ms. Warshawsky represents clients on transactional matters, particularly with respect to trademark counseling and prosecution, licensing intellectual property and software, and conducting pre-merger and pre-acquisition IP due diligence. She represents trademark and copyright owners for claims of infringement of federal and common-law trademarks and copyrights. She has filed and defended against cybersquatting claims and Uniform Domain-Name Dispute-Resolution Policy complaints.

Ms. Warshawsky also represents clients in IP litigation matters involving mechanical patents, design patents, internet and computer-related patents, and biochemical patents.

Regarding commercial litigation, Ms. Warshawsky has represented privately and publicly held companies across the country in disputes involving breach of contract, franchise issues including termination, unfair competition, misappropriation of trade secrets, covenants not to compete, false advertising, shareholder derivative actions, and securities fraud claims. She also has assisted companies with pre-litigation and internal investigations, and has provided pre-litigation support and advice to companies in the hope of avoiding litigation.

Representative Intellectual Property Litigation Matters

  • Represented manufacturer of home goods in copyright infringement action; obtained favorable settlement prior before filing an Answer
  • Represented 501(c)(3) organization as a plaintiff in a trademark infringement suit; obtained settlement of all claims immediately upon the filing of a motion for preliminary injunction against defendant
  • Represented multinational manufacturer and distributor of breakfast and other food products in trademark litigation; obtained temporary restraining order against defendant’s use of an infringing domain name
  • Represented the estate of a musician with respect to royalty and intellectual property disputes
  • Represented multinational shipping company in patent infringement action; patents generally directed to devices, systems, and methods for capturing and transmitting data by using forms created for individual user applications; obtained full and voluntary release of claims following claim construction
  • Represented a surgical device company as plaintiff in a patent infringement action for patents directed toward electrosurgical devices; obtained a voluntary permanent injunction and full settlement of all claims, including an acknowledgement of the patent-in-suit’s validity and enforceability
  • Represented hotel chain in multiple patent infringement actions directed to the chain’s reservation system; obtained favorable settlement
  • Represented manufacturing company as plaintiff in patent infringement action; patents directed to beverage and livewell pumps and pump brackets; obtained favorable settlement midway through jury trial
  • Represented manufacturer of small kitchen appliances in patent infringement action; patent directed toward a slow cooker with a clip mechanism; defeated a request for preliminary injunction and obtained summary judgment of patent invalidity and no-infringement; patent invalidity upheld on appeal
  • Represented national domain name registrar in patent infringement action; patent directed toward an automatic reminder system
  • Represented individual inventor in an inventorship dispute with former employer; case is ongoing
  • Represented a health care informatics company in patent infringement action; multiple computer software patents directed to encryption and de-identification methods, as well as methods for determining marketing success of a product; case is ongoing
  • Represented a large clothing manufacturer in a design patent litigation case; obtained full and voluntary dismissal of plaintiff's claims before filing an Answer

Representative Commercial and Business Litigation Matters:

  • Represented a franchisor against its franchisee in a breach of franchise agreement and covenant not to compete case; filed and obtain a temporary restraining order against the franchisee; case settled thereafter
  • Represented a member organization and its members against claims of patent infringement relating to technology used by the members and supported by the member organization
  • Represented estate and personal representative in a will contest premised upon the personal representative’s alleged misconduct; obtained full judgment in favor of the personal representative after trial
  • Represented a multinational shipping company in a software licensing dispute; reduced $5 million claim against client to $60,000 following a favorable summary judgment ruling
  • Represented owner and manufacturer of family and children’s games against former distributor in a breach of contract, unfair competition, and trademark infringement action; obtained a stipulated temporary restraining order and preliminary injunction
  • Represented as plaintiff an investor in a business litigation dispute involving securities fraud claims; obtained favorable settlement on the eve of trial, following favorable summary judgment rulings
  • Represented plaintiff in an anti-trust case against national trade organization; obtained settlement and reinstatement of membership
  • Represented as plaintiff an investor in a business litigation and shareholder dispute related to patented technology

Judicial Externships

Hon. Lloyd D. George, U.S. District Court for the District of Nevada, Summer 2000

Professional Activities

State Bar of Arizona, Intellectual Property and Litigation Sections

Arizona Women Lawyers Association

Recognition & Accomplishments

Named among Arizona's Top Lawyers – Intellectual Property, Arizona Business Magazine, 2013

Named as a Southwest Super Lawyers "Rising Star," Super Lawyers magazine, 2012-2017

Publications

"New IP Protection for Fashion Industry," Today's General Counsel, August/September, 2017 

"Proposed Bill Could Politicize the U.S. Copyright Office," LA Daily Journal, April 13, 2017 

Co-author, "U.S. Supreme Court Rules That Designs Are Copyrightable Under 17 U.S.C. § 101," Ballard Spahr alert, March 22, 2017

Co-author, "Ninth Circuit Vastly Expands Scope of Criminal, Civil Liability for Computer Fraud," Ballard Spahr alert, July 15, 2016

Interviewed in "US Perspective: US High Court To Consider IP Protection For Clothing Design," Intellectual Property Watch, May 24, 2016

Co-author, "The Defend Trade Secrets Act Signed into Law," Ballard Spahr Alert, May 11, 2016

Co-author, "President Obama Signs Defend Trade Secrets Act into Law," Ballard Spahr Alert, May 11, 2016

Co-author, "Give Me an S-C-O-T-U-S! Supreme Court to Decide Apparel Copyright Case," Ballard Spahr alert, May 2, 2016

Co-author, "Tips for Facing Patent Infringement Lawsuits," HotelsMag.com, January 13, 2014

Mentioned in "Q&A Baker & Daniel's Brenda Robinson," IPLaw360, September 15, 2011

Author, "Bringing Your DNA to Work: Employers' Use of Genetic Testing Under the Americans with Disabilities Act," 43 Ariz. L. Rev. 965, 2001

Speaking Engagements

Panelist for the CISO Network, Phoenix Chapter; responsible for providing legal updates in chapter meetings; October and December 2016

Panelist, "A Perfect Fit: Copyrights and Fashion," 22nd Annual Intellectual Property Law Institute, IP Law Section of the State Bar of Georgia, September 15-17, 2016

Panelist, "The Practice of Fashion Law," Fashion Forward: Lessons in Law and Business for Fashion Entrepreneurs, Villanova University School of Law's Second Annual Fashion Law Symposium, March 11, 2016

"License Me, License You: Top Contract Drafting Tips for Licensing Technology," National Contract Management Association, Thunderbird and Saguaro Chapters, February 2014

"Are You Covered? Negotiating and Drafting Indemnification Provisions Depends upon Your Perspective," National Contract Management Association, Thunderbird Chapter, October 2012

Panelist, Legally Green Panel Discussion, 2012 Green Chambers Great Green Business Search, Phoenix, May 10, 2012

"I Have an Idea – Now What? Your Top Tips for Starting Your Business," Business Professionals Breakfast Social, May 10, 2012

"Technical Data Rights in U.S. Government Contracting," National Contract Management Association, Thunderbird Chapter, November 2010

Community Activities

Volunteer, Junior Achievement of Arizona

Volunteer, The Volunteer Lawyer's Program

Board Memberships

Amenzone Foundation

Casa Center for Prevention of Abuse and Violence

YWCA of Maricopa County

University of Arizona James E. Rogers College of Law (J.D. 2002, magna cum laude)
Member, Order of the Coif; Staff Writer and Managing Editor, Arizona Law Review; Awardee, Outstanding Appellate Brief, Moot Court Competition

University of Colorado at Boulder Honors College (B.A. 1999, with distinction)
Member, Phi Beta Kappa; Member, Golden Key Honor Societies

Arizona

Nevada

U.S. District Court for the District of Arizona

U.S. District Court for the District of Nevada

U.S. District Court for the Eastern District of Texas

U.S. Court of Appeals for the Federal Circuit

U.S. Court of Appeals for the Ninth Circuit