Marc S. Whitfield is a partner at Taylor Porter and works primarily with the Firm's Commercial Litigation Section and its Intellectual Property Law Group.
Mr. Whitfield has practiced since 1988 in the areas of intellectual property law, commercial litigation and commercial transactions, including contract negotiations and litigation, intellectual property law licensing and litigation, including copyright, trademark and trade secrets, information technology contract negotiations and litigation, health care issues involving electronic health records, HIPAA and data licensing, and non-compete disputes.
Mr. Whitfield is admitted to practice in all Louisiana and Texas state courts and admitted to practice in all Louisiana federal district courts, the United States Fifth Circuit Court of Appeals, and the United States Patent and Trademark Office. Mr. Whitfield has previously served on the Louisiana Committee on Bar Admissions as chief bar examiner for the Business Entities and Negotiable Instruments section of the Louisiana State Bar Examination.
Mr. Whitfield is a graduate of Louisiana State University (J.D., 1987) and received his LL.M in taxation from Southern Methodist University in 1988. He is a member of both the Louisiana and the Texas State Bar Associations.
Recent Litigation and Transactional Work:
- Louisiana local counsel for trademark litigation pending in the Middle District and Western District Courts
- Lead counsel for Board of Supervisors of Louisiana State University and its Health Care Services Division relating to information technology and intellectual property law issues associated with the transition of Louisiana’s multiple public hospitals and health care services to private parties
- Served with team of Taylor Porter attorneys that restructured the operations of the statewide public hospital system into a public-private hospital model
- Representation of both employers’ and employees’ various non-compete litigation and arbitration proceedings
- Defense and prosecution of various unfair trade practice claims, trademark disputes and trade secrets litigation
- Representation of various hospitals and health care providers in information technology and software licensing negotiations
- Representation of Louisiana Health Care Quality Forum in information technology and intellectual property law issues associated with establishment and licensing of Louisiana Health Information Exchange (LAHIE)
- Lead counsel for State of Louisiana in trademark opposition proceedings before the Trademark Trial and Appellate Board
- Lead counsel for Louisiana State University in trademark opposition proceedings before the Trademark Trial and Appellate Board
- Representation of both licensors and licensees in various software license agreements
- Drafting and negotiation of documentary film rights and screenplay distribution rights
- Obtained early dismissal of unfair trade practices claims in Blanchard v. Bayou Apparel, LLC, 2008 WL 2080756, (E.D., LA. 2008)
- Lead counsel in trademark/cybersquatting case widely reported in the New York Times, Washington Post, MSNBC, The National Law Journal, and various Internet media
- Lead counsel in copyright infringement case reported in Forbes magazine
- Lead counsel for Louisiana State University in trademark infringement litigation and licensing of intellectual property
- Litigation counsel for Penn National Gaming in successful defense of unfair trade practice litigation and breach of contract claims exceeding $750,000,000
- Lead counsel in mergers and acquisitions involving both domestic and international companies
- Registration of federal trademarks with the United States Patent & Trademark Office and copyright registrations with the United States Copyright Office for various works including computer source codes and user manuals, music and sound recordings, books, newspapers, screenplays and architectural works
- Drafting and negotiation of research grants, sponsorship agreements, license agreements, and joint development agreements in representation of Pennington Biomedical Research Center, Louisiana State University, and the Louisiana State University Health Sciences Center