March 2014

News & Press

WE ARE PLEASED TO ANNOUNCE THAT KAREN LIM has become a partner of the firm. Karen’s practice focuses on the selection, clearance, prosecution, maintenance and enforcement of trademarks in the U.S. and globally; managing worldwide trademark portfolios; and preparing agreements and licenses pertaining to intellectual property.  Karen has extensive experience in trademark registration practice before the U.S. Patent and Trademark Office and the Trademark Trial and Appeal Board.  Her practice spans a broad range of industries, including consumer and luxury goods, pharmaceutical products, cosmetics and fashion, entertainment, accommodations and leisure, financial services and information technology. She holds an M.A. from Cambridge University, an M.F.A. from the University of Michigan and a J.D. from Fordham University School of Law where she was a Notes and Articles Editor of the Fordham Law Review.   Karen clerked for the Hon. Harold Baer, United States District Court for the Southern District of New York.  She serves on the Board of Directors of the Asian American Bar Association of New York and co-chairs its Intellectual Property Law Committee.  Before becoming an attorney, Karen was a member of United Scenic Artists and designed costumes for theater and opera productions across the U.S.

WE ARE ALSO PLEASED TO REPORT THAT THE WORLD TRADEMARK REVIEW 2014, The World’s Leading Trademark Professionals, ranked Fross Zelnick in the Top Tier (Gold) in both the United States-National and United States-New York categories. Special mention was made of the following partners:

  • For Enforcement and Strategy – RICHARD LEHV (“brilliant” and “widely lauded in his chosen brand-related disputes specialism”), DAVID DONAHUE (“invaluable know-how”), JOHN MARGIOTTA (“contentious skill…widely acknowledged”), CRAIG MENDE (“great guy who takes a meticulous approach to his diverse remit”) and ROGER ZISSU (“esteemed advocate” who “splits his time between copyright, unfair competition and trademark-related cases”);
  • For Prosecution and Strategy – LARRY APOLZON (“singled out by U.S. and overseas contemporaries for his prosecution acumen”), CARA BOYLE (“business-minded”…with “rich experience of managing portfolios numbering thousands of marks” and strength in “[d]ue diligence work on IP transactions and commercial agreements”), CARLOS CUCURELLA (“excellent quality service and consummate pragmatism” with “particular forte” on Latin American issues), SUSAN DOUGLASS (“second to none”), DAVID EHRLICH (“sophisticated, swift and efficient”), MARK ENGLEMANN (“robust guidance”), LYDIA GOBENA (“personable and versatile…chosen counsel of many renowned luxury goods brands”), NADINE JACOBSON (“incredibly detailed understanding of U.S. and international law”), Craig Mende, ALLISON RICKETTS (“fast cementing a name as a sagacious counselor”) and PETER SILVERMAN (“fantastic attorney”).

LAURA POPP-ROSENBERG and JASON JONES defeated a preliminary injunction motion on behalf of client Athleta, Inc., a leading retailer of women’s performance apparel and gear and part of The Gap, Inc.’s portfolio of companies. Plaintiff Body Wisdom Media, Inc. sought a preliminary injunction to stop Athleta’s use of a pinwheel design as a logo, alleging likelihood of confusion with Body Wisdom’s own pinwheel design logo used in connection with fitness DVDs. Athleta had adopted the challenged pinwheel logo seven years ago and had used it across its business since that time. Athleta argued that a preliminary injunction was not warranted because, among other things, Body Wisdom had not submitted sufficient evidence of its claimed common law rights; the marks are dissimilar due to use of accompanying house marks; the parties’ goods – clothing v. fitness DVDs – are different and do not share trade or advertising channels; and there was no actual confusion over seven-years’ coexistence. The U.S. District Court in Maryland denied Body Wisdom’s motion, ruling that Body Wisdom was not likely to succeed on the merits of its infringement claim, because, inter alia, the parties’ goods are different and had coexisted under the respective marks without confusion for a number of years. The court also held that any injunction would harm Athleta, which uses the challenged pinwheel design across its entire business. The case is Body Wisdom Media, Inc. v. Athleta, Inc., No. 8:13-CV-02967 (D. Md.) and the respective marks appear below.

DAVID DONAHUE and JENNIFER INSLEY-PRUITT, on behalf of The Regulatory Fundamentals Group (“RFG”), successfully defeated a motion for summary judgment brought by Governance Risk Management Compliance, LLC (“GRMC”), Manhattan Advisers LLC and Greg Wood (collectively, “Defendants”) in the U.S. District Court for the Southern District of New York. Defendants sought dismissal of RFG’s claims that Defendants had exceeded a license from RFG to GRMC by appropriating RFG’s original copyrighted works for Defendants’ own purposes and by removing RFG’s copyright management information (“CMI”) and replacing it with Defendants’ false CMI. The court ruled that issues of fact as to whether such use was permitted or intended to be permitted under the terms of the license precluded summary judgment. Accordingly, RFG’s claims for copyright infringement under Section 501 of the Copyright Act and for removal and falsification of CMI under Section 1202 of the Copyright Act will proceed toward trial.

DAVID DONAHUE was quoted in a January 29, 2014 Reuters Legal article entitled “EFF Says California Copyright Case Is Political,” regarding a copyright infringement lawsuit filed by the Vice Chairman of the California Republican Party against a blogger who posted her photograph in negative blog posts.  In the article, David commented on the strength of the defendant’s fair use defense given that the case involved the use of copyrighted works to further critical political speech.

DAVID DONAHUE served as co-chairman of the Copyright Society of the USA’s Midwinter Meeting Committee. The Midwinter Meeting was held in Miami, Florida from February 6-8 and featured several panel discussions on hot topics in copyright law, including the impact of the Google Books fair use decision, the Raging Bull laches case pending before the U.S. Supreme Court, copyright misuse, and pre-1972 sound recordings, among other issues. 

We welcome CELADON WHITEHURST, who has joined the firm as an associate in our International Group. Celadon comes to us from a clerkship with the Honorable Carolyn E. Demarest of the Supreme Court’s Commercial Division in Kings County. Previously, Celadon held legal internships with Grand Army Managed Enterprises, LLC, the U.S. Attorney’s Office (Eastern District of New York) and at Deborah A. Nilson, PLLC. While in law school, Celadon served as a Cardozo Magistrate Fellow Legal Intern with The Honorable James L. Cott, United States District Court for the Southern District of New York. Prior to attending law school, she worked at Fross Zelnick as a Legal Assistant in our International Group. Celadon graduated from Emory University with a Bachelor of Arts in International Studies in 2006 where she was on the Dean’s List and a member of Pi Sigma Alpha National Political Science Honorary Society as well as the National Society of Collegiate Scholars.  She received her J.D. from Benjamin N. Cardozo School of Law in 2012, graduating magna cum laude with a concentration in Communications & Intellectual Property law. Celadon received the following additional law school and graduate honors: Order of the Coif, Magistrate Fellow (noted above), a Cardozo Full Tuition Merit Scholar and Dean’s Fellow (post-graduate). She also served as Articles Editor on the Cardozo Arts & Entertainment Law Journal.