John is an intellectual property attorney and partner at Merchant & Gould's Knoxville office. His practice centers on patent, trademark, trade secret, and copyright litigation, but also includes IP licensing issues and trademark, patent, and copyright counseling and prosecution. He has represented clients in a broad range of industries, from electrical switches and electronic pet products, to hosiery manufacturers and home builders. He has secured favorable trial and pre-trial results and significant settlement wins in disputes in federal courts. He also has extensive experience with commercial litigation, alternative dispute resolution, and appeals in state and federal courts. His ability to understand and articulate complex concepts in a way that decision-makers can understand helps him to proactively and effectively assist his clients in protecting their intellectual property assets.
Prior to becoming a lawyer, John received an M.A. and Ph.D. in music history and theory from the University of Chicago, where he taught before joining the faculty of the State University of New York at Stony Brook. John's academic research focused on the nexus between the creative process and eighteenth-century conceptions of intellectual property. His fascination with the theory of ownership of ideas led him to law school and, ultimately, to Merchant & Gould. Before entering private practice, he clerked for federal judges on the Fifth Circuit Court of Appeals and the Eastern District of Tennessee.
John serves on the diversity committee at the firm, and serves as the marketing coordinator for the Knoxville office. He is a member of the Board of Commissioners for Knoxville’s Community Development Corporation, a post to which he was appointed by Knoxville’s mayor, Madeline Rogero, in 2014. He is also a member of the boards of directors for the Knoxville Symphony Orchestra and the Knoxville Jazz Orchestra. He represents individuals, arts groups, civil rights groups, and disability advocacy groups pro bono, and is a sought-after writer, speaker, and teacher on intellectual property, civil procedure, and litigation matters. In his spare time, John enjoys reading, historic preservation, music performance, cooking, exercise, and travel.
Obtained judgment as a matter of law following jury trial in patent infringement lawsuit involving electronic pet containment and training systems. Radio Systems Corporation and Innotek, Inc. v Tom Lalor and Bumper Boy, Inc., U.S. District Court, Western District of Washington, Case No. 2:10-cv-00828.
Obtained no-payment multi-case settlement following close of plaintiff’s proof in bench trial in trademark infringement lawsuit involving electronic containment fences for dogs. Invisible Fence, Inc. v Fido’s Fences, Inc., U.S. District Court, Eastern District of Tennessee, Case No. 3:09-cv-00025.
Represented advertising agency in copyright infringement action, positioning case for favorable settlement.
Served as a court-appointed special master in a contentious lawsuit involving a local utilities district and its CEO's retirement-benefits package.
Obtained the dismissal of a $1.5 million economic damages claim in a product liability action against a Fortune 100 manufacturer, resulting in a quick settlement on favorable terms.
Represented a Fortune 250 environmental services provider in million-dollar municipal contract dispute and a national engineering services firm in a million-dollar construction fee dispute. His efforts positioned both cases for settlement on favorable terms. Also in 2009, John was part of a trial team that obtained a directed verdict for a financial services company sued for fraud and violation of the consumer protection act.
Represented an internet retailer in defense of a Lanham Act suit involving alleged cybersquatting. He obtained a partial dismissal, which positioned the case for settlement on favorable terms. Kaiya Eve Couture LLC v. My Trendy Girl, Inc., Case No. CV 07-6294 (C.D. Cal., dismissed June 19, 2008).
Obtained summary judgment for a Fortune 250 insurance broker in a multimillion-dollar coverage dispute. Anderson Tully Co. v. Federal Ins. Co., Aon Risk Servs., Inc. of Missouri and Aon Fin. Servs. Group, Inc., Case No. 05-cv-02627 (W.D. Tenn., judgment entered Sept. 24, 2007). The decision was upheld on appeal. Anderson-Tully Co. v. Aon Risk Servs. of Missouri, Inc., Aon Fin. Servs. Group, Inc., No. 08-5524 (6th Cir. Sept. 23, 2009). Also in 2007, John obtained judgment on the pleadings in a personal injury action against a Fortune 25 pharmaceutical company. McCandless v. Pfizer, Inc. et al., Case No. 06-cv-051 (Tenn. Cir. Ct., dismissed Feb. 5, 2007).
Obtained a favorable jury verdict for a nationwide book wholesaler in a contract dispute. American Book Co. v. Fortner, Case No. 163506-2 (Tenn. Ch. Ct., judgment entered June 2, 2006).
Obtained summary judgment for a Fortune Global 500 company in a million-dollar contract dispute. Triple H Distributing, Inc. v. Henkel Corp. et al., No. 2:04-cv-02108 (W.D. Tenn., judgment entered Mar. 18, 2005).
Represented an internet company in the prosecution of a Lanham Act claim against a cyber squatter. The court's order granting his jurisdictional motion established precedent in the Sixth Circuit for service of process via email against cyber squatters. See Popular Enterprises v. Webcom Media Group, Inc., 225 F.R.D. 560 (E.D. Tenn. 2004).
Adjunct professor, University of Tennessee College of Law
Civil procedure
Pretrial litigation
Member, Board of Commissioners for Knoxville’s Community Development Corporation
Board member, Knoxville Symphony Orchestra
Board member, Knoxville Jazz Orchestra
Steering Committee Member, The Performing Arts & Lecture Series (past)
Board Member, The Actors Co-op, Inc. (past)
Law clerk, the Honorable James L. Dennis, Judge of the United States Court of Appeals for the Fifth Circuit, 2002-2003
Law clerk, the Honorable Curtis L. Collier, Chief Judge of the United States District Court for the Eastern District of Tennessee, 2000-2002