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)

Mr. Hough is the head of the Tokyo office Litigation Department. Mr. Hough’s practice focuses on complex commercial litigation and arbitration, with an emphasis on intellectual property disputes. His matters have included breach-of-contract claims, joint venture dissolutions, trade secret misappropriation claims and distribution agreement disputes, among other subjects. Mr. Hough has also conducted internal investigations and represented witnesses and subjects of government investigations. Mr. Hough is licensed as a Gaikokuho Jimu Bengoshi and is a member of the Daini Tokyo Bar Association.

Mr. Hough’s patent litigation experience spans a variety of technical fields, including biotechnology, semiconductors, medical devices and business methods. His copyright experience includes matters involving 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 was selected as an “IP Star” for the 2017 edition 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.

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 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. Mr. Hough was the head of Litigation Department in the New York office from 2007–2011.

Representative Commercial Litigation Matters

  • JPMorgan Chase Bank, N.A. v. KB Home (District of Nevada). 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.
  • Goldman Sachs Mortgage Company v. Colony Resorts LVH Acquisitions, LLC (Nevada District Court, Clark County). 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.
  • Pacnet Network Ltd. v. KDDI Corp. (New York Supreme Court, New York County). 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 Dept. 2010).

Representative IP Litigation Matters

  • White v. West Publishing, Inc. and Reed Elsevier Inc. d/b/a LexisNexis (Southern District of New York). Lead counsel for LexisNexis in a class action regarding copyright infringement. Obtained summary judgment dismissing complaint.
  • Coleman Company v. Avon Products Inc. and Avon v. Cosmetics Plus (District of South Dakota). Lead counsel for Avon Products in a copyright infringement and trademark case. Settled favorably after motion for summary judgment filed.
  • Chapman Roberts v. Atlantic Recording Corp. and L&S Broadway Co. (Southern District of New York). Lead counsel for L&S Broadway Company in copyright case. Obtained dismissal of complaint.
  • Rose v. Public Technologies (Southern District of New York) and Korszun v. Public Technologies (District of Connecticut). Lead counsel for Public Technologies Multimedia in business methods patent case and software patent case. Rose was settled favorably after expedited discovery and opposition briefing regarding plaintiff’s motion for a preliminary injunction.  Korszun was dismissed on summary judgment, which was affirmed by the Federal Circuit.
  • Iwasaki v. Golden and Random House (Southern District of New York). Lead counsel for Random House and Arthur Golden in copyright infringement and defamation arising from publication of Memoirs of a Geisha. Settled favorably after motion to dismiss filed, seeking sanctions.
  • Patents LLC v. Deutsche Telekom AG, et al. (District of Maryland). 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.
  • Hitachi Plasma Patent Licensing Co., Ltd. v. LG Electronics (Eastern District of Texas). Counsel for plaintiff Hitachi Plasma Patent Licensing Co., Ltd., in a patent infringement lawsuit against LG Electronics regarding plasma display patents. Settled favorably on eve of trial.
  • Eldred v. Ashcroft (U.S. Supreme Court). Counsel for National Music Publishers Association in amicus brief and copyright term extension case.
  • InLine Software Corporation v. Tendril Software, Inc. (District of Delaware). Counsel for Tendril Software Corporation in copyright and theft of trade secrets case. Settled favorably after answer with counterclaims filed.

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 the 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 JAMS rules in San Francisco for a Japanese investor in a Korean joint venture with an American software company.  

 Representative Investigations

  • Investigation of Japanese subsidiary of global pharmaceutical company regarding allegations of employee involvement with independent post-marketing clinical studies.
  • Representation of multiple executives of British bank as witnesses in investigations conducted by U.S. and UK authorities into Libor-setting practices. 
  • Investigation of Japanese chemical company, requested by the board of directors and triggered by the receipt of a grand jury subpoena regarding possible antitrust violations. Investigation included EU and U.S. subsidiaries.
  • Investigation of U.S. software company’s Japanese subsidiary, requested by audit committee after receipt of whistleblower complaint about revenue manipulation.
  • Investigation of U.S. company, requested by compliance director, after receipt of whistleblower complaint alleging 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.
  • Investigation of U.S. company in investigation of Taiwanese subsidiary focused on possible FCPA violations.
  • Investigation of U.S. company in investigation of Philippine subsidiary focused on possible FCPA violations.
  • Investigation of Chinese NASDAQ-listed company in investigation, requested by special committee of the board, focused on possible FCPA violations.
  • Investigation 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 edition 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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