Charles Courtenay is a cross-border IP and technology disputes specialist… a solicitor advocate with substantial experience in patent, trade mark, copyright and trade secrets litigation…[and]an expert in IT disputes, particularly from a cross-border perspective."
Legal 500 2021
Charles Courtenay is a Partner in the Commercial & Regulatory Disputes team.
Charles' practice focuses upon intellectual property and other complex disputes, with particular emphasis on cross border, technology and finance matters. He has litigated and advised in many major IP matters (including patent, trademark, copyright and trade secret cases) along with a number of important contract disputes in software and other technology and finance industries. He has taken key matters to trial and arbitration both in England and the United States, winning a number of important and valuable decisions. Charles is recommended in The Legal 500.
Before joining Michelmores, Charles led the European Intellectual Property Disputes team at Latham & Watkins. He spent eight years with the firm in Los Angeles, before moving to its London office.
Holding dual qualification, Charles was called to the bar in England and Wales in 1999 and joined the California bar in 2004. His hands-on experience across both jurisdictions allows him to represent and advise clients facing the most challenging legal issues, and makes him well-placed to support local, national and international clients.
Charles previously practiced as a Chancery barrister in Lincoln’s Inn, London. After completing an Art History Masters at St. John’s College, Cambridge, he completed his legal studies at the Inns of Court. In 1999 he was called to the Bar by the Inner Temple, before practicing from 9 Old Square, Chambers of Michael Driscoll, QC (now Maitland Chambers) where he is a door tenant.
Charles is also the Earl of Devon and independent of his work at Michelmores he owns and operates the Powderham Estate, near Exeter in Devon, with focus upon sustainable heritage and land management. Charles was also elected to the House of Lords as a Crossbench Hereditary Peer in 2018. In that role, Charles champions the interests of Devon, and has contributed extensively on Technology, Heritage, Agriculture and the Environment.
Software and Technology
- Defended a world-leading American consumer electronics and software company in major licensing and trade secrets dispute with its UK graphics technology supplier.
- Successfully mediated resolution to a software development dispute between a leading UK taxi and delivery company and the overseas developer of its core industry-leading software platform
- Complete defense of a leading international live music promotions and ticketing company in a near-$1 billion dollar breach of contract arbitration relating to ticketing software, conducted before the ICC in London
- Complete defense verdict in JAMS arbitration for a large Canadian software firm in a US$50 million development dispute with the second largest US school district
- Summary judgment on behalf of a major enterprise software company and three of its executive officers in a US$3 billion securities fraud class action arising from a missed earnings forecast
- Successfully represented a leading internet security and anti-virus software company in curtailing anti-competitive conduct of a leading industry rival in Europe and the US.
- Assist European private equity firm in dispute over its IP interests in the North American arm of a leading Nordic food and restaurant business.
- Represented a global software company in prosecuting patent and false advertising claims against a competitor in the media server industry in the Northern District of California
- Assisted UK maker of children's toys defend allegations of trademark infringement by iconic US guitar maker.
- Successful prosecution of a trade secret misappropriation case in California Supreme Court, resulting in a US$18 million jury verdict
- Complete defense verdict for a major global consultancy firm and leading economists in trade secret misappropriation arbitration before JAMS over software for electronic auctions
- Defense of a manufacturer of infrared detectors in a multi-million dollar trade secret misappropriation and patent infringement claim in the eastern District of Texas
- Trade secret misappropriation claim on behalf of a healthcare software company against a former employee who had moved to a major competitor
- Representation of one of the world's largest automobile manufacturers in a global trademark infringement dispute relating to motor cars
- Representation of a leading Chinese video games manufacturer in an international copyright dispute
- Representation of an international group of companies in patent infringement litigation in the Eastern District of Texas focused upon massively-multiplayer computer gaming technology
Banking, Finance and Commercial
- Representation of a leading investment bank in response to an investigation by the UK Takeover Panel
- Advised investment bank in dispute with major pension fund regarding foreign-denominated bonds following allegations of government currency manipulation
- Representation of a global investment company in relation to financial database ownership dispute in a major private equity transaction
- Represent US pharmaceutical company against shareholder allegations of misconduct in relation to management of an application for Orphan Drug Designation by the European Medicines Agency.
- Defended a Japanese engineering company in response to bribery investigations by DOJ, SFO and others in relation to a Nigerian LNG deal
- Complete defense verdict for a leading international marketing and advertising company in an arbitration before JAMS involving breach of contract claims arising from the marketing of a health product