Andrew S. MacKay Managing Partner (510) 451-3300 email@example.com Download vCard LinkedInDownload Bio
Andrew S. MacKay focuses his practice on Intellectual Property enforcement and complex commercial litigation. He has extensive experience representing clients at all stages of litigation, including at trials, appeals, arbitration, and mediation. He serves as the firm’s Managing Partner, is the past Co-Chair of the firm’s Litigation Practice Group, and is a core member of the firm’s Intellectual Property Practice.
He is a leader the firm’s IP Enforcement Practice in fields such as:
- Music (such as the internationally renowned “Happy Birthday To You” class action lawsuit, which recovered $14 million in licensing fees and placed the world’s most famous song in the public domain, and the prominent Wixen Music Publishing, Inc. Spotify lawsuit on behalf of one of the largest independent music publishing administrators representing over 500 world renowned musical acts, including numerous members of the Rock & Roll Hall of Fame);
- Television and movies (including representing the largest Chinese content producer of online content including television shows and movies);
- Software (including Autodesk, Inc., Adobe Inc., the SIIA, and BSA) and videogames (including Maximum Games, one of the fastest growing woman-owned videogame companies);
- Technology products (such as Dyson, with its revolutionary products such as bladeless fans and hair dryers); and
- Food Products (such as Néstle Dryer’s Ice Cream Co., including the Dryer’s, Hӓagen Dazs, and Drumstick).
He is also a leader in the firm’s Complex Litigation and Commercial Litigation Groups, representing clients in cases with complicated claims involving corporate issues, such as mergers and acquisitions and shareholder disputes, antitrust, and class actions. These cases involve fields such as:
- Consumer products (including successful representation of Fortune 500 global manufacturer and marketer of consumer and professional products in breach of warranty claims from major acquisition of vitamin manufacturer);
- Public works contracting and engineering (representing one of the largest woman-owned Bay Area public works contractor, engineering firm & supply shop);
- Aftermarket auto glass (representing one of the largest independent wholesalers of aftermarket auto glass); and
- Clothing (representing Fortune 500 national off-price department store retailer).
- Good Morning to You Productions Corp. et al. v. Warner/Chappell Music, Inc., C.D. Cal. Case No. CV 13-04460 (co-counsel) – The “Happy Birthday” class action lawsuit was described by the New York Times as “a lawsuit for the ages.” A leader in Donahue Fitzgerald’s successful prosecution of plaintiffs’ case, which resulted in the Court granting summary judgment on liability in his clients’ favor. The Court ruled that Warner/Chappel Music, Inc., one of the world’s top music publishers, had no rights to the song after it had collected millions of dollars in royalties from the song for decades. Shortly thereafter, Warner/Chappel Music, Inc. agreed to a settlement that repaid $14 million in royalties and placed the song “Happy Birthday to You,” the world’s most popular song, in the public domain.
- Autodesk, Inc. – As litigation and IP enforcement co-counsel managed a program combatting online unauthorized distribution of software products in over fifty successful UDRPs, including:
- Autodesk, Inc. v. Domain Admin/Hulmiho Ukolen Poste resante, Case No. D2015-2014 (WIPO) (autocadd.com domain ordered transferred to complainant)
- Autodesk, Inc. v. Marek Jakubczak, The Blue Solutions Corp., Case No. D2015-1791 (WIPO) (iautocad.com domain ordered transferred to complainant)
- Autodesk, Inc. v. Web Admin, Ebills Online Services, Case No. D2015-1358 (WIPO) (autocadzone.com domain ordered transferred to complainant)
- Dyson Technology Ltd. – As co-lead U.S. intellectual property enforcement counsel to cease online distribution of thousands of infringing bladeless fans and enforce Dyson’s design and utility patents, trademarks, trade dress, and copyrights. Counsel for plaintiffs in Dyson Limited, Dyson Research Limited, and Dyson Technology Limited v. BHN Intl LLC dba Lava Heat Italia et al., Case No. C13-4694 (JSC) (Northern District of CA), in which defendants agreed to cease all distribution of bladeless fans that infringe plaintiffs’ trademarks and patents, destroy all inventory, and pay damages.
- Maximum Games, LLC – Lead intellectual property counsel. Matters include IP clearance and protection of video games. Lead counsel for defendant in CMG Worldwide v. Maximum Games et al., Case No. 3:14-cv-05124-JST (Northern District of California), in which plaintiff alleged right of publicity and trademark claims on behalf of General Patton’s heirs related to video game; parties entered into confidential settlement after defendant filed anti-SLAPP motion and motion to dismiss.
- Software & Information Industry Association (SIIA) – Co-lead intellectual property enforcement counsel for the principal trade association for the software and digital content industry. Work involves enforcement of SIIA members’ copyrights in business software products.
- Monster, Inc. – Intellectual property counsel on trademark matters.
- Nestlé Dryer’s Ice Cream Company – Nestlé Dryer’s Ice Cream Company v. Sareen Incorporated, dba Melodee Ice Cream, C.D. Cal., Case No. 8:19-CV-02411, represented ice cream company in action for infringement of trademarks and trade dress. Resulted in permanent injunction in favor of plaintiff.
Professional & Community Affiliations
- Member, Intellectual Property, Litigation, and Employment Law Sections, Marin County Bar Association
- Member, Alameda County Bar Association
- WTR1000: , The World's Leading Trademark Professionals 2020 and 2021
- Recipient, American Jurisprudence Award for Civil Litigation Trial Practice
- Donahue Fitzgerald Recognized in the World Trademark Review’s 2020 WTR 1000 Ranking, February 13, 2020
- Spotify Settles $1.6B IP Suit Brought By Tom Petty’s Publisher, Law360, December 20, 2018
- Chinese Broadcaster Alleges Massive Copyright Theft – in the U.S., Variety, May 3, 2017
- ‘Happy birthday’ Case May Change Content Licensing Practices, Daily Journal, Daily Journal, Vol. 67, Iss. 6, July 14, 2016
- The Most Famous Song in the World Set Free: Impacts of the Happy Birthday to You Settlement, IPWatchdog.com®, July 28, 2016
- Oh, Happy Day: Happy Birthday Enters the Public Domain, Franchise Times, July 2016
- ‘Happy Birthday’ Suit Resolved: The Most-Sung Song Is Free for All
- Donahue Fitzgerald Attorneys Wrap Up $14 Million Settlement in “Happy Birthday to You” Class Action Lawsuit
- Domain Name Enforcement
Recent Speaking Engagements
July 07, 2021 | Live Webcast
Fundamentals of Trademark Law in the Global Marketplace 2021
Practising Law Institute (PLI)
June 30, 2020 | Live Webcast
Fundamentals of Trademark Law in the Global Marketplace 2020
Practising Law Institute (PLI)
July 09, 2019 | San Francisco, CA
Fundamentals of Trademark Law in the Global Marketplace 2019
Practising Law Institute (PLI)