December 2015

News & Press

WE ARE PLEASED TO REPORT THAT JANET HOFFMAN was honored with the International Trademark Association 2015 President’s Award at the recent INTA Leadership Meeting in Panama City, Panama. The President’s Award is designed to recognize individuals who, throughout their career, have made a lasting impact on INTA and the Association’s mission. Janet was chosen by her peers for, among other things, being a “global thinker” dedicated to INTA’s goal of international expansion since the 1990s, and especially commended for bringing members from Eastern Europe and independent countries of the former Soviet Union into the Association. Janet served on INTA’s Board of Directors from 1998-2000; as Chair of the Subcommittee on Eastern Europe and CIS from 2000-2002; as Vice Chair of the Trade Dress Committee from 2003-2005; as Member of the Dilution and Well-Known Marks Committee (2005-2013); and is currently serving on the Trademark Reporter Committee. Janet is the fourth President’s Award winner from our firm, following Alvin Fross, Marie Driscoll, and Ron Lehrman.

RICHARD LEHV and ROBERT BECKER won a rare decision in which the Federal Circuit reversed the Trademark Trial and Appeal Board. The case, Jack Wolfskin v. New Millennium Sports, involves an appeal of the Board’s finding of likelihood of confusion in a case in which our client, Jack Wolfskin, applied to register a paw print as a mark for clothing. LEO KITTAY and EMILY WEISS also worked on the case. Details of the decision can be viewed here.

Following JAMES WEINBERGER’s February 2015 oral argument (see prior article here), on behalf of client DC Comics, ROGER ZISSU, James and LEO KITTAY prevailed in a published decision by the U.S. Court of Appeals for the Ninth Circuit holding that the Batmobile, Batman’s famous car, was subject to copyright protection as a character. In reaching its decision, the Court set forth a new, three-part test for determining protection of a character appearing in comic books, television programs, or films under the 1976 Copyright Act, independent of any specific work in which it has appeared and irrespective of whether it “lacks sentient attributes and does not speak.” The decision received broad media coverage from Variety, The Hollywood Reporter, The Associated Press, The Wall Street Journal, CNN, Fox Business News and others. Click here for more detail or here for a copy of the full decision.

Following an evidentiary hearing, on behalf of client The Gap, Inc. and its Old Navy brand, LAURA POPP-ROSENBERG, JAMES WEINBERGER, and JASON JONES succeeded in defeating a motion for a preliminary injunction brought by plaintiff Hoop Culture, Inc. over its alleged EAT...SLEEP...BALL. trademark. The U.S. District Court for the Middle District of Florida held that the plaintiff did not show a substantial likelihood of success on the merits of its claims on either ownership of a valid mark—despite the fact that it had a federal registration—or likelihood of confusion. The Court also held that plaintiff failed to establish the requisite irreparable injury. Click here for a copy of the full decision.

WE ARE PLEASED TO REPORT THAT 19 of our attorneys were selected to the Super Lawyers New York Metro 2015 list of “Top Attorneys in the New York Metro area.” Noted for Intellectual Property were Partners LAWRENCE APOLZON, SUSAN DOUGLASS, DAVID EHRLICH, MARK ENGELMANN, JANET HOFFMAN, NADINE JACOBSON, and JOHN MARGIOTTA. Partners DAVID DONAHUE, RICHARD LEHV, CRAIG MENDE, BARBARA SOLOMON, JAMES WEINBERGER, and ROGER ZISSU, were listed for Intellectual Property Litigation. Featured as “Rising Stars” in Intellectual Property were Partner KAREN LIM, and Associates HINDY DYM and STACY WU, with Associates JENNIFER INSLEY-PRUITT, LEO KITTAY, and JASON JONES, listed under Intellectual Property Litigation. View original listing here.

WE ARE ALSO PLEASED TO REPORT THAT Best Lawyers® selection of 2016 “Best Law Firms” ranked Fross Zelnick in National Tier 1 for Copyright and Trademark Law in the U.S., and Metropolitan Tier 1 for Copyright and Trademark Law as well as Litigation—Intellectual Property in New York City.

FROSS ZELNICK was recognized as “IP Law Firm of the Year—New York” and “Best in Unfair Competition Law—New York” by The Corporate America M&A Awards 2015.

FROSS ZELNICK was named an IICJ Preferred Law Firm 2016 by the International In-house Counsel Journal. Only 140 law firms out of over 4,000 were selected to the list.

FROSS ZELNICK was selected to the list of “50 Intellectual Property Law Firms to Keep in Mind,” which appeared in the November 2015 issue of Wired magazine.

SUSAN DOUGLASS was a featured speaker in October 2015 at the ABA Forum on Franchising annual program. Susan spoke at the “intensive” program on International Intellectual Property Protection, and also led two roundtables on this topic.

RICHARD LEHV’s comments on the Happy Birthday decision appeared in the story “What Shall We Do About ‘Orphan Works?’” in the September 30, 2015 issue of Law360 Intellectual Property.

We welcome FELICITY KOHN who has joined the firm as an associate in our Litigation Group. She comes to us from Kirkland & Ellis, where she was an associate. She was also a Judicial Intern with the Hon. Roslynn R. Mauskoff of the Eastern District of New York. Felicity received her J.D. with Cum Laude distinction from New York University School of Law in 2012 where she was recognized as a Robert McKay Scholar, her Master of Arts in Humanities from the University of Chicago with a concentration in English Literature in 2008, and her Bachelor of Arts in Philosophy from Wesleyan University.