Samuel Fifer, Partner

Mr. Fifer has extensive experience in the fields of intellectual property, entertainment and media law, including litigation and counseling.

He is the former chair of Sonnenschein’s Intellectual Property & Technology Practice.

In the area of intellectual property law, Mr. Fifer has advised a wide variety of clients in the areas of trademark selection, registration, protection and enforcement.  He has advised clients in creating and maintaining programs for identifying, protecting and promoting intellectual property within companies, including creating and promulgating incentive programs.  He has counseled clients in negotiating, developing, drafting and implementing licensing and other contractual agreements and has counseled clients in connection with creating and implementing worldwide trademark registration and protection programs.  He also has broad experience in litigating trademark matters, including ex parte and inter partes proceedings in the United States Patent and Trademark Office, as well as prosecuting and defending trademark infringement, anti‑dilution and unfair competition claims in state and federal courts and in connection with Internet and domain name disputes, including WIPO UDRP actions.  Mr. Fifer has advised clients concerning the creation, maintenance and protection of copyright interests.  He also has wide experience in litigating copyright matters, including prosecuting and defending copyright infringement litigation claims in federal courts.

Mr. Fifer has advised clients, including developers of computer software, in the area of protection of rights in technology and has drafted and negotiated agreements for the licensing and transfer of rights in technology.  He has also advised clients in the area of trade secret protection and in connection with the drafting and negotiation of employment agreements, including covenants not to compete.

Mr. Fifer has worked with clients in numerous corporate transactions involving the transfer of rights in intellectual property and technology, and has advised clients with regard to the creation and maintenance of security interests in such rights.

In the field of entertainment law, Mr. Fifer has advised clients in the areas of motion picture, theatrical and television production and distribution, music, newspaper, magazine and book publishing and syndication and talent and employment agreements and advertising compliance and promotion law.

In the area of media law, Mr. Fifer has advised clients and handled precedent‑setting litigation in the areas of defamation, rights of privacy and publicity, access to courts, reporters’ rights, subpoena defense and freedom of information.  He also advises clients in the areas of pre‑broadcast and pre‑publication review.  For the last eight years, Mr. Fifer has been identified as among a select group of lawyers in The Best Lawyers in America in the field of First Amendment Law.  For five years running, Mr. Fifer has been recognized by Chambers USA: America’s Leading Lawyers for Business as a leading lawyer (Band 1) in Illinois in the field of Media and Entertainment Litigation and also in the field of Intellectual Property, and is the only Illinois lawyer to achieve rankings in both categories.

Mr. Fifer also advises clients and other lawyers in the area of legal ethics and professional responsibility and is the chair of Sonnenschein’s Ethics Committee.

Client/Peer Testimonials

Since 2006, Mr. Fifer has been named each year as a leading media and entertainment lawyer in Illinois, based on peer and client evaluations, by Chambers USA: America’s Leading Lawyers for Business, the highly respected independent attorney rating organization.

2009: “Sam Fifer has “great interpersonal skills” and is especially good at gauging judges to determine the best approach to litigation. He handles media work with an IP slant, working with clients with valuable brands on creating and implementing strategies to protect and enforce their rights. Fifer represents clients in a variety of fields, including broadcasting and publishing, with NBC Universal and Yahoo! being among the most recognizable names.”

2008:  “Sam Fifer is hailed as ‘an exceptionally strong lawyer’ in the field and market authorities are full of praise for his ‘remarkable pragmatism’ and ‘excellent business instincts.’  While Fifer is considered a specialist in IP issues, his expertise extends to cover defamation, rights of privacy and publicity, access to courts, reporters' rights, subpoena defense and Freedom of Information Act issues.”

2007: “Sam Fifer ‘is an expert in the field and his work is indicative of that.’  A ‘damn good attorney,’ he ‘has courtroom skills in spades.’  He remains popular with clients, who like his ‘friendly and amiable’ demeanor, saying ‘he puts people at ease.’  Recently he has represented Yahoo! in several transactions involving technology licensing and online privacy.”

2006:  “The ‘spectacular’ Sam Fifer is ‘a personable, likable kind of guy.’  He handles broadcasting-related matters such as defamation and content liability issues.  Lately, he has acted for the Better Government Association in a lawsuit regarding a reporter's privilege to protect the anonymity of sources.”

Representative Experience

Notable recent representations include:

• People of the State of Illinois v. James Degorski and Juan Luna, Circuit Court of Cook County, Illinois (represented the Better Government Association in reporter’s subpoena litigation in “Brown’s Chicken” Murder prosecution)
• Chinn Enterprises, Inc. v. Fresh Island Juice Co., Inc. (N.D. Ill.) (obtained preliminary injunction, summary judgment on liability and damage award in trademark dispute)
• Fusion Capital Fund II, LLC v. Bioprogress Technology Int’l, Inc. (Circuit Court of Cook County, Illinois) (defeated plaintiff’s motion for summary judgment and obtain dismissal on defense motion of commercial dispute)
• Tartan Software, Inc. v. DRS Sensors & Targeting, Inc. (W.D.Pa.) (represented defense contractor in software dispute)
• IP Innovation LLC, et al. v. Funai Electric Co., Ltd., et al. (N.D. Ill.) (represented manufacturer of video circuitry chip-sets in patent infringement action brought by non-practicing entity; case settled)
• Fruit of the Loom, Inc. v. Kellogg North America Co. (T.T.A.B.) (represented applicant in trademark opposition; case settled)
• Montage Hotels & Resorts, LLC v. California Cove Communities (C.D. Cal.) (obtained injunction in trademark infringement action)
• Kristin Biondich v. NBC Subsidiary (WMAQ-TV), Inc.), et al., Circuit Court of Cook County, Illinois (representing NBC owned station in defense of defamation claims)
• Richard Sendejas v. Telemundo of Chicago, Inc., et al., Circuit Court of Cook County, Illinois (representing local broadcaster in defense of defamation claims)
• The Auto Saver Systems, Inc. v. ECP Incorporated, et al., (N.D. Ill.) (representing manufacturer of rust protection products in marketing dispute with competitor)

• Adjunct Professor of Law at Northwestern University School of Law, Entertainment Law
• Member, Panel of Neutrals for the Alternative Dispute Resolution Program sponsored jointly by the International Trademark Association (INTA) and the International Institute for Conflict Prevention & Resolution
• Member, American Bar Association’s Forum Committee on Communications Law
• Member, International Trademark Association, and member, Publications Committee; Editorial Board, The Trademark Reporter
• Member, Copyright Society of the United States
• Member and past co-chair of Media Law Resource Center's (MLRC) Defense Counsel Section's Pre-Publication/Pre-Broadcast Committee; Member, Ethics Committee
• Chicago Theological Seminary:  Member, Past-Chair, Visiting Committee; Board of Trustees; Former Board Secretary
• Better Government Association, Board Member
• The Chicago Convergence, Board Member

Mr. Fifer has frequently published in the areas of intellectual property and First Amendment law.  Notable publications include:

• Media Law Legislative Record of President Barack Obama (co-author), MLRC Special Report, January 2009
• "Alternative Dispute Resolution: An Essential Competency for Lawyers" (book review), The Trademark Reporter, July-August 2009
• “Twombly and Iqbal: New Tools For Early Disposition of Defamation Claims in Federal Court” MLRC Media Law Letter, August 2009 (co-author)
• Contributor to State Trademark and Unfair Competition Law, published by the International Trademark Association (INTA)
• “Joint Defense Agreements in Defamation Litigation – A Primer,” MLRC Media Law Letter, September 2008
• “The Accidental Libel Tourist,” MLRC Media Law Letter, November 2008
• “Google’s Library Project: Copyright and Fair Use,” E-Commerce Law and Policy, December 2008 (co-author)
• “I Feel Good! – James Brown’s Right of Publicity Claim Survives in Illinois,” MLRC Media Law Letter, September 2007 (co-author)
• “Lateral Hiring, Imputed Disqualification and Screening – Finding the Way Out of the Maze,” MLRC Media Law Letter, October 2006 (co-author)
• “En Banc Eighth Circuit Holds Code of Judicial Conduct’s Limitations on Campaign Activity Violate First Amendment,” MLRC Media Law Letter, September 2005 (co-author)
• “Seventh Circuit Rethinks Right of Publicity Pre-emption,” MLRC Media Law Letter, Fall 2005 (co-author)
• “Communications Decency Act May Protect ListServ Operators,” LDRC Media Law Letter, July 2003
• “Prior Restraint and Copyright Injunctions: Striking the Balance,” LDRC Media Law Letter, Spring 2002
• “Seventh Circuit Opines on Fair Use in ‘Beanie Babies’ Case,” LDRC Media Law Letter, June 2002 (co-author)
• “Illinois Court Says Father May Be Liable for Son’s Allegedly Tortious Website,” LDRC Media Law Letter, Summer 2002
• “Changing Horses in Mid-Stream: The Copyright Office's New Rule Makes Broadcasters Pay for Streaming Their Signals Over the Internet,” Vanderbilt Journal of Entertainment Law and Practice, 2001
• “Defamation on the Internet: Nothing to Fear But New Ideas,” presented to the American Bar Association, 1997
• “The Price of International Free Speech: Nations Deal with Defamation on the Internet” DePaul Journal of Arts & Entertainment Law, 1997
• Contributor to The New Role of Intellectual Property in Commercial Transactions, published by John Wiley & Sons, Inc. of New York, 1994