Michelle Hon Donovan

Partner

  • Michelle Hon Donovan
  • Phone: +1 619 744 2219

    Michelle Hon Donovan - LinkedIn Import to Address Book

  • Duane Morris LLP
    750 B Street, Suite 2900
    San Diego, CA 92101-4681
    USA
  • Duane Morris LLP
    Spear Tower
    One Market Plaza, Suite 2200
    San Francisco, CA 94105-1127
    USA

Michelle Hon Donovan is a commercial lawyer, specializing in intellectual property, privacy, data protection, artificial intelligence, technology transactions and other commercial contracts. Ms. Donovan's clients represent a wide range of industries, including pharmaceutical and biotechnology, high-end consumer electronics, software, artificial intelligence, automotive, music, cosmetics and personal care products, real estate development, education, staffing, food and beverage, cannabis, and social networking.

Intellectual Property

Ms. Donovan's intellectual property matters include:

  • Trademark
  • Copyright
  • Domain Names
  • Social Media
  • Advertising
  • Unfair Competition
  • Licensing

Ms. Donovan handles both prosecution and enforcement of trademarks and copyrights.  This includes assisting brand owners in developing global brand protection strategies, domestic and international filing, and international opposition and enforcement strategies.  She also advises clients on transactional and compliance matters specific to advertising and digital marketing.  Recognizing the value of achieving prompt resolutions to disputes and avoiding costly litigation, Ms. Donovan has often used her skills, judgment, and creativity to negotiate favorable outcomes for clients and frequently obtains complete relief without filing a lawsuit. When settlement is not desired or practical, Ms. Donovan tirelessly fights for her clients' rights to summary judgment and trial. 

Ms. Donovan is listed in the 2021-2023 editions of World Trademark Review 1000 list of the World's Leading Trademark Professionals as one of the top trademark lawyers in California: Prosecution and Strategy and Enforcement and Litigation. The publication noted that Ms. Donovan is an "intelligent, astute attorney with a no-nonsense approach, by which she gets to the heart of matters quickly and deals with them pragmatically and cost-efficiently." The publication also notes high praise from clients: “Michelle is a fantastic IP lawyer who assimilates complex information quickly and is extremely efficient in her approach. She’s unflappable and a fierce litigator who delivers quality advice and a timely service across the full range of IP services – and does so at reasonable rates.” Another source adds: “For many years I have relied on Michelle to establish and defend our trademarks and identity, both domestically and internationally. She’s an amazing lawyer who misses nothing. She explains things clearly, is very cost conscious and has an excellent foreign network. Thanks to her, our trademarks are some of our strongest assets.”

Privacy / Data Security

  • GLBA / Safeguards Rule
  • CCPA
  • FERPA
  • GDPR
  • Cybersecurity
  • Breach Notifications
  • Regulatory investigations

Ms. Donovan regularly counsels clients in the complex areas of privacy and cybersecurity, including cybersecurity preparedness, regulatory compliance and investigations, and data breach response.  She also counsels clients on the rapidly changing field of data privacy, including the California Consumer Privacy Act (CCPA).  She has developed a particular area of expertise in the privacy and cybersecurity issues specific to higher education.  

Artificial Intelligence

In the emerging area of artificial intelligence (AI), Ms. Donovan has extensive knowledge on the use of data in machine learning, including considerations related to sources of training data, usage permissions and conditions, and compliance with privacy laws. She also advises on the use of AI in business operations and intellectual property considerations for the same.

Technology Transactions, Licensing and Commercial Contracts

Ms. Donovan also negotiates and drafts various technology transactions, licensing and other commercial contracts, including contracts relating to intellectual property, software, SaaS, and API licenses, software and website development, manufacturing and distribution, digital marketing, SEO, PPC, PPL, website terms, and consulting/independent contractor agreements.

Representative Matters

    Trademark Prosecution

  • Represented a variety of clients in the biotechnology, pharmaceutical, high tech, and software industries to prepare and prosecute domestic and international applications

  • Represented clients in the prosecution and defense of oppositions and cancellation actions filed before the Trademark Trial and Appeal Board.

  • Represented clients in the prosecution and defense of international oppositions, non-use cancellations and removal actions throughout the world.

  • Filed appeal of refusal of registration before the Trademark Trial and Appeal Board

    • Cybersecurity and Privacy

  • Represented school with breach incident involving consumer and attorney general breach notifications covering 43 states, remedial action, and developing compliant cybersecurity and incident response plans.

  • Represented large multi-campus college with data breach incident, involving multi-state breach notifications, remedial action and developing security breach incident response plans.

  • Represented college with data breach incident in California, including breach notification, remedial action, and developing security breach incident response plans.

  • Obtained a decision in the Central District of California defeating a highly contentious bid for preliminary injunction over the alleged violation of California wiretap and privacy laws, affirmed by the Ninth Circuit on appeal.

  • Prepared comprehensive Information Security Programs for clients, compliant with GLBA, Safeguards Rule, FERPA, Red Flags Rule, and PCI data security standards.

  • Advise companies of all sizes on complex privacy issues.

  • Advise companies of all sizes on cybersecurity issues and privacy.

    • Technology Transactions, Licensing and Commercial Contracts

  • Represent manufacturers in the biotech / pharmaceutical space with manufacturing and supply agreements.

  • Represented an operator of premier vacation home properties in a $10 million acquisition of a Missouri tourism center and accompanying intellectual property.

  • Represented various manufacturers with domestic and international distribution agreements.

  • Represented California college in licensing curriculum and trademarks to third-party schools.

  • Represented franchisor with software development and licensing agreements.

  • Represented numerous companies with online advertising and marketing agreements.

  • Non-disclosure agreements.

    • Intellectual Property Litigation

  • Represented biotechnology imaging company sued for patent infringement of imaging method patents. Obtained favorable settlement after obtaining partial summary judgment on all but one claim.

  • Represented a California college in a trademark infringement action. A direct competitor was using the client's trademarks in the meta data of its webpage. We obtained consent judgment of infringement and payment of damages.

  • Represented a designer in bringing a copyright infringement suit against an infringing competitor. Obtained favorable settlement for the client.

  • Represented cloud-based music storage service in a copyright infringement case brought by a group of major record labels and publishers. Won a favorable summary judgment decision involving issues of first impression related to storing and playing music from the cloud.

  • Represented nationwide staffing corporation in a trademark infringement action. Assisted client in bringing an action to protect its registered trademark; obtained settlement where defendant agreed to change its name and pay damages.

  • Represented Las Vegas casino and resort sued by lighting designer for copyright infringement. We obtained summary judgment of non-infringement.

  • Represented a pharmaceutical research institute sued for patent infringement of imaging method patents. Obtained summary judgment of non-infringement.

  • Represented multiple educational institutions in connection with the misappropriation of the schools' name in connection with internet scam websites and degree mills. We assisted the clients in obtaining registered trademarks and pursuing those who misappropriated our clients' trademarks through arbitration under the Uniform Domain-Name Dispute Resolution Policy.

Areas of Practice

  • Intellectual Property
  • Internet Marketing/Lead Generation
  • Privacy
  • Cybersecurity and Data Breaches

  • Cyber Law

  • Software
  • E-commerce
  • Artificial Intelligence
  • Licensing
  • Litigation

Admissions

  • California
  • U.S. Patent and Trademark Office (USPTO)
  • U.S. District Court for the Central District of California
  • U.S. District Court for the Northern District of California
  • U.S. District Court for the Southern District of California
  • U.S. District Court for the Eastern District of California
  • U.S. District Court for the Central District of Illinois
  • U.S. Court of Appeals for the Ninth Circuit
  • U.S. Court of Appeals for the Federal Circuit

Education

  • University of San Diego School of Law, J.D., cum laude, 2004
    Order of the Coif
    Comments Editor, San Diego International Law Journal
  • University of Minnesota, B.S., Genetics and Cell Biology, 1999

Experience

  • Duane Morris LLP
    - Partner, 2014-present
    - Associate, 2005-2013
  • Buchanan Ingersoll
    - Associate, 2004-2005
    - Summer Associate, 2003
  • The Honorable Ruben B. Brooks, Federal District Court, Southern District of California
    - Extern, 2004
  • The Salk Institute, Ron Evans Gene Expression Laboratory
    - Research Assistant, 1999-2001

Professional Activities

  • Lavin Entrepreneurship Center, Advisory Board

  • The Comfort Cub Program, Advisory Board

  • International Trademark Association

  • Lawyers Club
  • State Bar of California
  • San Diego Bar Association

Honors and Awards

  • Listed in the 2021-2024 editions of the World Trademark Review 1000 list of the World's Leading Trademark Professionals as one of the top trademark lawyers in Prosecution and Strategy and Enforcement and Litigation

Civic and Charitable Activities

  • Co-founder of Lavin Entrepreneurship Advocacy Program (LEAP), a legal advocacy programoffered in partnership with San Diego State University and the University of San Diego School of Law to pair SDSU student entrepreneurs with USD law students and Duane Morris attorneys to offer legal assistance for start-up businesses (2017-present)

  • Mama's Kitchen, San Diego, California. Board of Directors (2009-2012; Volunteer (2007-present): Non-profit organization, providing hot meals to persons suffering from HIV and cancer
  • Lilith's Hands, San Diego, California. Founder & President (2001-2002): Organized and promoted charity concert to benefit women in the community, including sexual assault and domestic violence programs

Selected Publications

Selected Speaking Engagements

  • Speaker, "Understanding Data Licensing in the World of AI," Duane Morris Webinar, December 18, 2024
  • Speaker, "Update on FCC’s Rule to Close the Lead Generator “Loophole”," CECU Webinar, May 16, 2024
  • Speaker, "Best Practices for AI in Education," Career Education Colleges and Universities 2024 Convention, June 11, 2024
  • Speaker, “Get Smart with AI: Strategic Contracting to Reduce Risk,” Duane Morris Webinar, November 15, 2023
  • Speaker, "New FTC Cybersecurity Requirements--What Will Your Auditor Be Looking For?" CAPPS 39th Annual Conference, October 2, 2023
  • Presenter, "The Data Privacy and Security Landscape: Privacy Issues in AI," Duane Morris Webinar, September 14, 2023
  • Speaker, “Top 5 Privacy and Data Security Risks Most Likely to Trigger Significant Liability for Your School” Career Education Colleges and Universities (CECU) Annual Conference, June 20, 2023
  • Speaker, “The Data Privacy and Security Landscape - Legal Developments in U.S. Consumer Data Protection Regulations,” Duane Morris Webinar, June 1, 2023
  • Speaker, “The New FTC Data Security Requirements for Institutions of Higher Education” Career Education Colleges and Universities (CECU) Webinar, March 15, 2023
  • Speaker, "What Employers Need to Know About the California Privacy Law Changes Effective January 1, 2023," Duane Morris Institute (DMi), Webinar, December 8, 2022
  • Speaker, "What Your Institution Needs to Know in the Rapidly Changing Privacy and Data Security Regulatory Landscape," Career Education Colleges and Universities (CECU) 2022 Career Education Convention, June 1, 2022
  • Speaker, "The New FTC Data Security Requirements for Institutions of Higher Education," Duane Morris LLP, Webinar, December 15, 2021
  • Speaker, "The California Employment Law Landscape Has Changed (Again!)," Association of Corporate Counsel, Webinar, November 4, 2021
  • Speaker, "Everything Schools Need to Know About Protecting Records in the Cloud and Negotiating Technology Agreements," Duane Morris LLP, Webinar, June 29, 2021
  • Presenter, "Understanding Virginia's Consumer Data Protection Act," Duane Morris Data Privacy and Security Landscape: Legal Developments in the United States and Beyond Webinar Series, May 25, 2021
  • Presenter, "Cyber Risks: Learning from Months of Remote Work and Preparing for the Next Wave," Duane Morris COVID-19: Navigating Forward Webinar Series, February 11, 2021
  • Speaker, "Understanding the CCPA 2.0: The California Privacy Rights Act," Duane Morris Webinar, December 10, 2020
  • Presenter, "What to Worry About for California Contracts," Duane Morris Commercial Contracts Checkup Series, Webinar, November 19, 2020

  • Speaker, "Brave New (Socially Distanced) World:  Privacy and Data Security Challenges for Distance Education and Update from The Department of Education on Data Security Obligations," CAPPS Annual Conference, November 12, 2020

  • Presenter, "Privacy, Data Protection and Intellectual Property Considerations for EdTech Start-ups," ASU+GSU 2020 Virtual Summit, October 8, 2020
  • Presenter, "Schools Not Tools," ASU+GSU 2020 Virtual Summit, September 30, 2020
  • Presenter, "Telephone Consumer Protection Act: What Cannabis Companies Need to Know," Duane Morris LLP, Webinar, September 29, 2020
  • Speaker, "Data Privacy: Where are We Now? Plus, CCPA Updates and Impacts," LexisNexis, Webinar, July 22, 2020

  • Speaker, "Washington Update: Is Your School Doing Enough to Protect Student Data?" CECU Annual Conference, June 17, 2020

  • Speaker, "Bracing for the Wild Ride in Data Privacy Regulation," LexisNexis, Webinar, February 27, 2020

  • Speaker, "2020: A New Era of Data Privacy and Security," CAPPS 35th Annual Conference, Long Beach, California, October 10, 2019 

  • Co-presenter, "Preparing for the CCPA: Lessons Learned from the GDPR," The California Consumer Privacy Act of 2018 Webinar Series, September 16, 2019

  • Presenter, "How the CCPA Impacts the Higher Education Industry," The California Consumer Privacy Act of 2018 Webinar Series, Duane Morris LLP, September 5, 2019

  • Presenter, "Preparing for the CCPA: Reviewing and Updating Privacy Policies and Agreements for Compliance," The California Consumer Privacy Act of 2018 Webinar Series, Duane Morris LLP, June 20, 2019

  • Presenter, "Understanding the New California Consumer Privacy Act: Why the CCPA Applies to You and Practical Steps You Can Take Now to Comply," The California Consumer Privacy Act of 2018 Webinar Series, Duane Morris LLP, May 23, 2019

  • Presenter, “E-Signed, Sealed, Delivered,” Duane Morris Commercial Contracts Checkup Series, Webinar, January 24, 2019

  • Presenter, "Learn to Be Legally Compliant and Outperform Your Competition in the Ever-Changing Marketing Landscape. The Latest in Misrepresentation & New Marketing Strategies that Drive Major Results for School," CAPPS 34th Annual Conference, Westin Mission Hills Golf Resort & Spa, Rancho Mirage, California, October 11, 2018

  • Speaker, "Legal Updates and Trends for 2018," Duane Morris and BB&T Breakfast Briefing, January 2018

  • Presenter, “Are You Up-to-Date on Key Provisions and Confidential Information Protections in Term Sheets, MOUs and Letter Agreements?” Duane Morris Commercial Contracts Checkup Series, Webinar, June 21, 2018

  • Speaker, "Legal Update: Cybersecurity for Schools" AACS 2017 Annual Conference, November 2017

  • Speaker, "Leveraging the Present and Future of Social Media to Connect and Engage Future Graduates," 31st Annual Conference "Strong Student, Proud Graduates," California Association of Private Postsecondary Schools (CAPPS), October 8, 2015
  • "Cybersecurity: Addressing the Risks to Schools and Student Records," APSCU webinar, May 2015
  • Speaker, "Cyber Crime: Beware of Multi-Dimensional Attacks," San Francisco Treasury Symposium, May 1, 2015
  • Speaker, "Cybersecurity: Managing Risks and Protecting Your Organization," 2015 Accounting & Financial Women's Alliance
  • Speaker, "Cybercrime and Protecting Your Organization," 2015 Webinar co-presented with FBI Internet Crime Complaint Center (IC3)
  • Speaker, "Text Talk (Compliance for Telemarketing Texts), 2014 AACS Spring Management Conference
  • Speaker, "Protecting Educational Records at School and in the Cloud," 2014 AACS Legal Seminar
  • Speaker, "Cybercrime and Your Legal Liabilities," 2014 Webinar
  • Speaker, "New Telemarketing Consent Rules under the TCPA," AACS 2013 Annual Conference, November 2013
  • Speaker, "The Business Cyber Liability Luncheon" Nov. 2013 German American Chamber of Commerce Luncheon
  • Speaker, "Protecting Your Rights in a Digital Age" 2013 AACS Spring Management Conference
  • Speaker, "Cyber, Privacy and Social Media Risks: How to Survive in the Digital Age" Sept. 2013 Duane Morris and BB&T Breakfast Briefing
  • Speaker, "Social Media: Dancing on the Edge of a Volcano" Nov. 2012 Duane Morris and BB&T Breakfast Briefing
  • Speaker, "Share on the Inside, Protect on the Outside: Best Practices for IP Protection in the Age of Social Networking" 2011 LES Annual Meeting
  • Speaker, "Misrepresentation Rule and Third Party Vendors" 2011 APSCU Webinar
  • Speaker, "Internet Highway Robbery: Protect Your Domain, Trademarks, & Copyrights from Cyberthieves," 2008 CCA Annual Convention
  • Speaker, "Katie Bar The Door! Protecting Yourself From Privacy Problems & Internet Scoundrels," 2008 AACS Spring Management Conference
  • Speaker, "Proprietary Information, Idea Ownership, and Copyrights," International Special Events Society San Diego Chapter meeting, San Diego, California, November 20, 2008