John F. Hornick

Partner

John Hornick is an IP litigator and counselor of broad experience. During his 31 years with Finnegan, Mr. Hornick has litigated more than 75 IP cases in over 30 U.S. federal courts in 18 states (7 in E.D. Virginia's Rocket Docket and 4 in E.D. Texas); 5 U.S. circuit courts of appeals; the U.S. Supreme Court; the U.S. International Trade Commission; the National Arbitration Forum; the World Intellectual Property Organization (WIPO); the American Arbitration Association; and the Trademark Trial and Appeal Board. He has appeared before more than 100 judges and arbitrators. He has successfully avoided litigation for clients in hundreds of other disputes.

Mr. Hornick founded the Trade Secret Committee of the D.C. Bar IP Section, served as its first chair, and also chaired its Copyright and Trademark Committees. He is a frequent lecturer and writer, having presented over 125 speeches and written nearly 150 articles on a broad range of IP topics. He is a principal editor and author of the U.S. section of International Intellectual Property Litigation (FT Law & Tax); a principal editor of Country Guides: Basic Information on Trademark Registration Worldwide (International Trademark Association); author-editor of the U.S. section of Copyright: World Law & Practice; and former author of Foreign Trademark Law Update. He also writes a column on software licensing for The Licensing Journal, is a contributor to World Copyright Law Report, and is a long-time member of the International Trademark Association (INTA) Publications Committee.

Highlights

• In two trade secret cases, established new law on the burden of production for trade secret owners. His articles on this subject have been repeatedly quoted by counsel in court papers.
• Served as lead counsel for plaintiff in a closely watched trade secret case against the Facebook social networking website.
• Litigated trade secret cases for a leading provider of scientific and engineering services to the U.S. government and for the developer of wireless LAN technology.
• Litigated many trademark infringement and domain name disputes for one of the world's ten most valuable brands, and in one such case obtained the fourth highest attorneys' fees award in a trademark infringement case.
• Handled global trademark registration, enforcement and defense, and portfolio management, for one of the world’s largest car rental companies, a leading manufacturer of business jets, and a major sports organization.
• Handled one of the early cases establishing new law on personal jurisdiction over a defendant based on the use of an infringing trademark on a website.
• Handled one of the first copyright cases involving the enforceability of the GNU General Public License and one of the early cases on copyright misuse.
• Prepared software licensing and development programs for many clients, including a major railroad, steel manufacturer, defense contractor, and retailer.
• Handled the copyright side of the financing deals for several motion pictures.
• Defended one of the world's leading manufacturers of optics-related equipment, and obtained a favorable settlement.
• Established new law of personal jurisdiction over a patent infringement defendant.
• Litigated breach of patent license agreements for a leading developer of entertainment media.

Professional Recognition

• AV® rated by Martindale-Hubbell.
• Recognized as a leading trade secret and copyright litigator by The Legal 500 U.S., 2011.

Professional Activities

• District of Columbia Bar (chair, Trade Secret Committee, 1998-1999; Steering Committee, 1997-1998; chair, Trademark Committee, 1996-1997; chair, Copyright Committee, Intellectual Property Section, 1993-1996)
• Bar Association of the District of Columbia
• American Bar Association
• Copyright Society of the U.S.A.
• American Intellectual Property Law Association
• International Trademark Association

Select Publications

• Coauthor. "Taking Steps Toward Trade Secret Reform," Law360, Jan. 18, 2012.
• "Trade Secrets: What Chinese Companies Need to Know to Do Business in the U.S.," China IP News, June 2010.
• Coauthor. "Implied Licenses in Software Licensing," The Licensing Journal, May 2010.
• Coauthor, "Trade Secret Identification: The Importance of Timing in Discovery," Feb. 2005.
• "Trade Secrets: What Your Company Needs to Know," IP Litigator, July/Aug. 2004.
• "Copyright Law for Business People: A Handy Guide," Nov. 2003.
• "Security Interests in Intellectual Property," Oct. 2003.