James E. Hough

James E. Hough

Education

Hampshire College (B.A., 1981)
New York University School of Law (J.D., 1986)

Bar Admissions

New York
Japan (Gaikokuho-Jimu-Bengoshi)

Clerkships

Hon. Charles S. Haight, Jr., U.S. District Court, S.D. New York (1986-1988)

James E. Hough focuses his practice on complex commercial litigation and arbitration, with an emphasis on intellectual property disputes and securities litigation. His matters have included breach of contract claims, joint venture dissolutions, trade secret misappropriation claims, and distribution agreement disputes, among others. He has also conducted internal investigations, and represented witnesses and subjects of government investigations.

Mr. Hough is also a seasoned patent litigator. His experience includes a variety of technical fields, including biotechnology, semiconductors, medical devices, and “business methods.” His copyright experience includes software, jewelry and toy designs, and rights to musical compositions. In a high-profile case, he represented the author and publisher of the best-selling book, Memoirs of a Geisha.

Mr. Hough joined Morrison & Foerster in 1991. From 2007 to 2011, he was the Head of the Litigation Department in the New York office, and from 2012 to 2018, he was the Head of the Litigation Department in the Tokyo office. While residing in Tokyo, Mr. Hough was licensed as a Gaikokuho Jimu Bengoshi and was a member of the Daini Tokyo Bar Association. Currently, Mr. Hough is a member of the American Bar Association, the New York State Bar Association (for which he served as vice chair of the Intellectual Property Committee of the Commercial & Federal Litigation Section), and the Association of the Bar of the City of New York (for which he served as Secretary of the Arbitration Committee).

Mr. Hough obtained his law degree (J.D., 1986), cum laude, from the New York University School of Law, where he was a Root-Tilden-Snow scholar, a member of the Order of the Coif, and a recipient of the John Norton Pomeroy and the Maurice Goodman Memorial Prizes.

Representative Commercial and securities Litigation Matters

  • Counsel for SoftBank Corporation in shareholder litigation regarding SoftBank’s acquisition of a controlling interest in Sprint Nextel Corporation. Plaintiffs ultimately withdrew their request for a preliminary injunction and voluntarily dismissed their claims after the transaction closed. The dispute is described in ACP Master, Ltd., et al. v. Sprint Corporation et al., C.A. No. 8508–VCL (Del. Ch., July 21, 2017).
  • Counsel for SoftBank Corporation in breach of fiduciary duty and appraisal litigation arising from Sprint’s cash merger with Clearwire Corporation in Delaware Court of Chancery. The trial court held the merger was entirely fair, and thus rejected both the breach of fiduciary duty claim against Sprint and the aiding and abetting claim against SoftBank.  The trial court further found that the fair value of Clearwire shares was $2.13, far below the $5 deal price. The dispute is described in ACP Master, Ltd., et al v. Clearwire Corporation, C.A. No. 9042–VCL (Del. Ch., July 21, 2017). The trial court decision is currently on appeal.
  • Lead counsel for plaintiff JPMorgan Chase in multiple litigations concerning a large real estate development in Henderson, Nevada. The dispute is described in several published decisions, including JPMorgan Chase Bank, N.A. v. KB Home, 740 F. Supp. 2d 1192, 1207 (D. Nev. 2010) (denying defendants’ request to file counterclaims) and JPMorgan Chase Bank, N.A. v. KB Home, 632 F. Supp. 2d 1013, 1029 (D. Nev. 2009) (largely denying defendants’ motion to dismiss). After these favorable decisions, and a victory after a four day trial in bankruptcy court, the disputes settled on favorable terms.
  • Lead counsel for plaintiff Goldman Sachs Mortgage Company in a dispute concerning a loan for the Las Vegas Hilton & Casino (“LVH”). After expedited discovery and a bench trial, the district court of Clark County, Nevada ordered the appointment of a receiver for the hotel and gaming operations at LVH, as requested by our client. The dispute is described in Goldman Sachs Mortgage Company, vs. Colony Resorts LVH Acquisitions LLC, No. A-11-648281-B (Nevada Dist. Ct., Clark County, July 1, 2013).
  • Lead counsel for defendant KDDI Corporation in a contract dispute with Pacnet Network, Ltd. arising from failures of certain components used in a submarine fiber optic cable system after a major earthquake off the coast of Taiwan. Obtained dismissal of tort claims and claim for punitive damages, and prevailed on appeal in a decision reported in Pacnet Network Ltd. v KDDI Corp., 78 A.D. 3d 478 (1st Dep’t 2010).

Representative IP Litigation Matters

  • Lead Counsel for Reed Elsevier Inc. in White v. West Publishing, Inc. and Reed Elsevier Inc. d/b/a LexisNexis (S.D.N.Y., copyright infringement)
  • Lead counsel for Avon Products in Coleman Company v. Avon Products Inc. (copyright infringement and trademark) and Avon v. Cosmetics Plus (D.S.D., trademark infringement).
  • Lead counsel for L&S Broadway Company in Chapman Roberts v. Atlantic Recording Corp. and L&S Broadway Co. (S.D.N.Y., copyright infringement).
  • Lead counsel for Public Technologies Multimedia in Rose v. Public Technologies (S.D.N.Y., business methods patent) and Korszun v. Public Technologies (D. Ct., software patent).
  • Lead counsel for Random House and Arthur Golden in Iwasaki v. Golden and Random House (S.D.N.Y., copyright infringement and defamation arising from publication of Memoirs of a Geisha).
  • Lead counsel for defendants SoftBank Mobile and NTT DoCoMo in a patent infringement case brought in the United States district court for the District of Maryland. Obtained dismissal for lack of personal jurisdiction on behalf of both clients in a decision reported at Tech. Patents LLC v. Deutsche Telekon AG, et al., 573 F. Supp. 2d 903 (D. Md. 2008).
  • Counsel for plaintiff Hitachi Plasma Patent Licensing Co., Ltd. in a patent infringement lawsuit against LG Electronics in the Eastern District of Texas (plasma display patents).
  • Counsel for National Music Publishers Association in Eldred v. Ashcroft (Sup. Ct. amicus brief, copyright term extension).
  • Counsel for National Music Publishers Association in The Football Association Premier League et. al., v. YouTube, Inc. et. al. (class action regarding copyright infringement).
  • Counsel for Tendril Software Corporation in InLine Software Corporation v. Tendril Software, Inc. (D. Del., copyright and theft of trade secrets).

Representative Arbitration Matters

  • ICDR arbitration in New York for an Israeli company seeking to enforce an exclusive distribution agreement against an American health care equipment distributor.
  • ICDR arbitration in New York for a Japanese company against an American customer.
  • ICC arbitration in Japan for a Japanese telecom company against English and American telecom companies concerning operation and maintenance of an undersea fiber optic communications cable.
  • ICDR arbitration in San Francisco for a Japanese investor in a Japanese joint venture with an American software company.
  • Arbitration under J.A.M.S. Rules in San Francisco for a Japanese investor in a Korean joint venture with an American software company.

Representative Investigations

  • Representation of multiple executives of British bank as witnesses in investigations conducted by U.S. and U.K. authorities into LIBOR setting practices.
  • Representation of Japanese chemical company in investigation requested by the board of directors triggered by receipt of grand jury subpoena regarding possible antitrust violations. Investigation included EU and US subsidiaries.
  • Investigation of U.S. software company in investigation of Japanese subsidiary requested by audit committee after receipt of whistleblower complaint about revenue manipulation.
  • Representation of U.S. company in investigation with internal audit committee, after receipt of whistleblower complaint about self-dealing and FCPA violations. Investigation extended to operations in China and other parts of Asia.
  • Representation of chief legal officer of U.S. hedge fund in investigation conducted by the New York Attorney General.
  • Representation of several members of executive committee of large U.K.–based bank in investigation conducted by FSA in the U.K. and the DOJ, SEC, and CFTC in the U.S.
  • Representation of U.S. company in investigation of Taiwanese subsidiary focused on possible FCPA violations.
  • Representation of U.S. company in investigation of Philippine subsidiary focused on possible FCPA violations.
  • Representation of Chinese NASDAQ-listed company in investigation requested by special committee of the board focused on possible FCPA violations.
  • Representation of U.S. company in investigation of Chinese representative office requested by audit committee after receipt of whistleblower complaint alleging self-dealing by senior management and cover-up of product safety issues.

Mr. Hough was selected as an “IP Star” for the 2017–2019 editions of Managing Intellectual Property’s World IP Survey. He is recommended in the 2018 edition of The Legal 500 Asia Pacific in the areas of Intellectual Property and Dispute Resolution. He is also recommended in the 2016 edition of Intellectual Asset Management’s IAM Patent 1000.

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