John T. Winemiller, Ph.D.
John is an intellectual property attorney and the managing partner of 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 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. John 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. He serves on the diversity committee at the firm and is a member of diversity organizations. In his spare time, John enjoys reading, historic preservation, music performance, cooking, exercise, and travel.
Obtained settlement in trademark infringement lawsuit in industrial coatings industry. CSL Silicones, Inc. v. Midsun Group, Inc., U.S. District Court, Eastern District of Tennessee, Case No. 3:14-cv-1897.
Obtained settlement in complex lawsuit alleging claims of trademark and patent infringement and misappropriation of trade secrets in textile industry. Yoe Enterprises, Inc. v. Crescent Sock Co., U.S. District Court, Eastern District of Tennessee, Case No. 1:15-cv-3.
Obtained settlement in contract suit in textile industry. Crescent Sock Co. v. Yoe Enterprises, Inc., McMinn County Chancery Court, State of Tennessee, Case No. 2013-cv-297.
Obtained settlement in trademark infringement lawsuit involving insurance services. Applied Underwriters, Inc. v. American Employer Group, Inc., U.S. District Court, Eastern District of Tennessee, Case No. 3:14-cv-379.
Obtained settlement in patent infringement lawsuit involving medical software. PPS Data v. Passport Health Communications, U.S. District Court, District of Utah, Case No. 2:12-cv-438.
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).
University of Tennessee College of Law
J.D., summa cum laude, 2000
Order of the Coif
Editor in Chief, Tennessee Law Review
University of Chicago
Ph.D. Music History and Theory, 1994
M.A. Music History and Theory, 1991
B.A. Music History and Theory, magna cum laude, 1988
Tennessee State Bar
Eastern District of Tennessee
Middle District of Tennessee
Western District of Tennessee
Court of Appeals for the Sixth Circuit
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
American Bar Association
American Bar Foundation
American Intellectual Property Law Assoc.
Tennessee Intellectual Property Law Assoc.
Tennessee Bar Association
Knoxville Bar Association
Knoxville Bar Foundation
The Hamilton Burnett American Inn of Court
Leadership Council on Legal Diversity Fellows Program
Fellow, Class of 2018
Awards & Recognition
Member, Leadership Knoxville, Class of 2019
Selected for inclusion in Mid-South Super Lawyers, 2011-2018
Award of Merit Recipient, National Center for Missing and Exploited Children
Adjunct professor, University of Tennessee College of Law
Leadership & Civic Involvement
Chair, Board of Commissioners for Knoxville’s Community Development Corporation
Board Member, Knoxville Symphony Orchestra
Board Member, Knoxville Jazz Orchestra
Board Member, Positively Living (past)
Steering Committee Member, The Performing Arts & Lecture Series (past)
Board Member, The Actors Co-op, Inc. (past)
Publications & Speaking
Speaker, COVID-19's Lasting Impact on the Practice of Law and the Courts, Knoxville Bar Association, May 19, 2020
Speaker, Introduction to Copyrights, University of Tennessee School of Music, April 2, 2019
Speaker, Vicarious Liability in IP Litigation: What Officers, Directors, and Employees Need to Know, Tennessee Chapter of the Association of Corporate Counsel, March 12, 2019 – co-presenter, Brad Brittian
Speaker and Organizer, Counseling Businesses about the Good, the Bad, and the Ugly of Social Media: A Tool Kit for Attorneys, Knoxville Bar Association, September 28, 2018
Speaker, Cybersecurity: Detect and Prevent Cyber Attacks, Tennessee Chapter of the Association of Corporate Counsel, April 5, 2018
Chair and Speaker, Intellectual Property: CLE Bytes, Tennessee Bar Association, Nashville, April 5, 2017
Chair, A Look at the Executive Order Travel Bans, The Hamilton Burnett American Inn of Court, March 14, 2017
Speaker, Legal and Non-Legal Strategies for Managing Social Media Content, Tennessee Chapter of the Association of Corporate Counsel, June 8, 2016
Panelist, Ethics Panel, 2016 Tennessee Intellectual Property Law Association Annual Meeting, May 6, 2016
Speaker, Access Your Office from Anywhere, Knoxville Bar Association 2016 Law Expo CLE, April 22, 2016
Speaker, Safeguarding Trade Secrets: Tips and Tools for Identifying, Managing, and Protecting Confidential Business Information, Tennessee Chapter of the Association of Corporate Counsel, October 28, 2015
Don't Just Stand There; Do Something! Consequences of Pending Anti-Troll Legislation on Pleading Standards, Rule 11, and the American Rule at Knoxville Bar Association CLE Program Lord of the Bling: Trolls, Treasure and Trends in IP Litigation that May Impact Any Client, February 28, 2014
Guest Columnist, To increase inclusion, start by tracking diversity, Knoxville News Sentinel, December 2019
Fictional Brands, Famous Marks: Recurring characters, places, and elements can serve as source identifiers for creative works in LANDSLIDE (ABA Section of Intellectual Property Law), March/April 2019 – co-author, Ian G. McFarland
FTC regulates ‘influencer advertising’ on social media, in Greater Knoxville Business Journal (knox.biz), August 2018 – co-author, Elizabeth C. Harwood
John Winemiller: Proposed legislation targets patent trolls, Knoxvillebiz.com, April 7, 2014
Avoiding that ‘Cease and Desist’ Letter, KBA The Consigliere, Vol. 7, No. 1, Winter 2012
The Endangered Species Act and the Imprecise Scope of the Substantial Effects Analysis, 18 Tulane Environmental Law Journal 159, 2004
Casenote, United States v. Scheffler, 77 Tennessee Law Review 331, 1998
Recontextualizing Handel's Borrowings, 15 Journal of Musicology 444, 1997
Borrowing, Copyright, and Proprietary Authorship, 8 American Handel Society Newsletter 1, 1993