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VOL. 124 | NO. 113 | Thursday, June 11, 2009

Baker Donelson’s Johnson Discusses Variety, Joy of Intellectual Property Practice

By Rebekah Hearn

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Valerie Walsh Johnson
Position: Of Counsel
Firm: Baker, Donelson, Bearman, Caldwell & Berkowitz PC
Basics: Johnson works in the firm’s Intellectual Property Group, which recently was named by Intellectual Property Today as one of the top 100 trademark firms in the country.

Valerie Walsh Johnson

Position: Of Counsel
Firm: Baker, Donelson, Bearman, Caldwell & Berkowitz PC
Basics: Johnson works in the firm’s Intellectual Property Group, which recently was named by Intellectual Property Today as one of the top 100 trademark firms in the country.
“When I first began practicing in this area, it was the Wild, Wild West when it came to the Internet. … We had to explain the Internet to the judges, since most of them had not ever been on it.”
 – Valerie Walsh Johnson

Valerie Walsh Johnson is of counsel at Baker, Donelson, Bearman, Caldwell & Berkowitz PC in the Intellectual Property Group. Her practice includes trademark prosecution and litigation, copyright licensing and enforcement, trade secrets, unfair competition, patent and technology licensing, advertising claims review and warranty advice.

Johnson served as co-chair of the Women in the Profession Committee of the American Bar Association Section of Intellectual Property Law in 2007-2008. In 2004-2005, she served as the chair of the Tennessee Bar Association Intellectual Property Section.

She is a member of the Memphis, Tennessee and American bar associations, the International Trademark Association, the American Intellectual Property Law Association and the Tennessee Lawyers Association for Women, and recently served as a board member of the Coalition for a Better Memphis. She also is a past president of the Association for Women Attorneys.

Q: How did you become involved in intellectual property law?

A: I was fortunate enough to become involved in the area of intellectual property law in the mid-1990s, just before it became a hot specialty. A friend at Baker Donelson practiced in the area and when an opening came up at the firm, he suggested that I interview for it. I had no background in the area, and frankly, knew very little about intellectual property law. So I have to be honest and say that I just fell into it by a happy accident, and I’ve never looked back.

Q: You received a bachelor’s degree in marketing from the University of South Florida, as well as a master’s of business administration from the University of Memphis. How have those degrees helped your practice?

A: I believe that it is helpful in my practice area since, in much of my work related to trademark clearance, I work with marketing folks who are creative and who are expected to “think outside the box” in developing marketing campaigns, trademarks and slogans. I think it helps me to be able to understand a little better about what their companies expect of them as well as understand how the market operates in relation to their goods and services.

Q: Cases that you have won or settled include a wide variety of products, such as medical supplies, drinks, ceiling fans and computer software. How do you keep up with the terms and knowledge necessary to practice in such a variety of areas?

A: That’s what makes my job so interesting and enjoyable. I love figuring out solutions to the varied challenges that my clients face. The products and services of my clients are as disparate and as varied as they can be, from ceiling fans to drinks to chemicals, and it is always an interesting task to understand the products and services, the markets and the particular challenges faced by my clients.

Q: Intellectual Property Today recently named Baker Donelson among the top 100 trademark firms in the country for the third consecutive year. What singles Baker Donelson out in that practice area?

A: We are fortunate in that we have been able to expand our client base in these tough economic times. Of course, we have clients that are working on cutting expenses as much as possible, and we have a few clients that are faring quite well, but we recognize that we need to continually build and expand upon our client base in order to continue to have a healthy law practice. In addition, we have quite a bit of depth and expertise in the area of trademark, and I believe that the market recognizes that as well.

Q: You made a presentation in 2001 to CLE International titled “The Digital Millennium Copyright Act’s Online Copyright Infringement Liability Limitation.” Since the dawn of the Internet, what changes or adjustments have you had to make in your IP practice?

A: When I first began practicing in this area, it was the Wild, Wild West when it came to the Internet. There were no cases on point for many of the issues that were arising at the time during the Internet bubble in the late ’90s; one of our cases was one of the very first domain name disputes ever brought to a federal appeals court where, in the briefs, we had to explain the Internet to the judges, since most of them had not ever been on it. We had to be creative and we had to project how we thought the cases would fall out in the courts when it came to domain names, copyright infringement, metatags in Web sites and a host of other issues. It was a blast, because every day there was something new and there was very little law out there.

Q: What other community organizations are you involved in? What do you like to do in your spare time?

A: I am currently involved in Common Ground, which is a group sponsored by BRIDGES Inc. to encourage open discussions about race in Memphis. I have been trained as a facilitator, and I recently finished with my first group facilitation. My other outside interests include traveling (I am headed to Russia shortly), pottery, gardening and playing the cello. My current new endeavor is learning how to made hand-bound leather books.

RECORD TOTALS DAY WEEK YEAR
PROPERTY SALES 0 291 21,272
MORTGAGES 0 160 16,194
FORECLOSURE NOTICES 0 23 1,487
BUILDING PERMITS 258 692 41,920
BANKRUPTCIES 1 117 6,579
BUSINESS LICENSES 0 23 3,097
UTILITY CONNECTIONS 0 0 0
MARRIAGE LICENSES 0 0 0