| Description
|
Download
|
|
Character Rights
|
DC Comics Inc. v. Powers,
482 F.Supp. 494 (S.D.N.Y. 1979).
We began a series of cases in which we expanded protection for entertainment properties under Section 43(a), The U.S. Trademark Act's unfair competition provision. In this decision, the Court prohibited the unauthorized use of the term "Daily Planet," a well known ingredient in plaintiff's "Superman" stories and comic books.
|
|
American First Run Studios v. Edgar Rice Burroughs, Inc.,
No. B153518, 2003 WL 1861585 (Cal. App. 2d Dist. Apr 11, 2003).
We successfully defended an appeal in the California Court of Appeal of Edgar Rice Burroughs, Inc.'s lower court victory dismissing the claims of American First Run Studios. American First Run had claimed that Disney's 1994 animated "Tarzan" movie under license from Edgar Rice Burroughs "the owner of all rights in the Tarzan character" was copied from and substantially similar to American First Run's earlier authorized live-action Tarzan television programs, even though the only similarities were the common presence of the pre-existing appearance of Edgar Rice Burroughs's Tarzan character.
|
|
Warner Bros., Inc. v. Gay Toys, Inc.,
658 F.2d 76 (2d Cir. 1981).
We took the U. S. Trademark Act further to prohibit the unauthorized use of an orange Dodge Charger, an element of Warner Bros.' successful television series "The Dukes of Hazzard."
|
|
Cavalier v. The Jim Henson Co., Inc.,
No. BC 251828 (Cal. Super. Ct. Jan. 5, 2004).
We won summary adjudication on behalf of defendants The Jim Henson Company, Simon & Schuster, Inc. and Viacom Inc. in an idea submission case brought by two individuals in Los Angeles Superior Court.
|
|
DC Comics, Inc. v. Filmation Associates, Inc.,
486 F. Supp. 1273 (S.D.N.Y. 1986).
This decision, involving DC Comics' "Plasticman" and "Aquaman" characters, has gone further than any other in upholding and broadening character protection under the US Trademark Act by holding the ingredients of entertainment characters to function as symbols of origin that can be protected from unauthorized copying. [Roger Zissu]
|
|
Dominic Murray v. British Broadcasting Corporation and BBC Lionheart Television Int'l
81 F. 3d 287 (2nd Cir. 1996).
We represented the BBC in securing dismissal for forum non conveniens of an action for copyright infringement and unfair competition brought in US against the BBC by a British subject with respect to BBC television character "Mr. Blobby."
|
|
|
Copyright Ownership and Infringement
|
Polar Bear Productions, Inc. v. Timex Corp.,
No. 05-35811, 2007 WL 2193541 (9th Cir. July 31, 2007); 384 F.3d 700 (9th Cir. 2004).
The firm successfully concluded its representation of Timex Corporation in its defense against copyright and trademark infringement claims brought against it by Polar Bear Productions, Inc. In 2002, when our firm first became involved in the case, Polar Bear had been awarded a $2.415 million jury verdict for Timex's copyright infringement of a kayaking video entitled "PaddleQuest." We took over the appeal, and, in 2004, the Ninth Circuit vacated the entire $2.1 million award under Section 504(b) of the Copyright Act of Timex's profits allegedly attributable to the copyright infringement as unduly speculative and cut the damage award from $315,000 to $115,000 on the same grounds. The case was then remanded to the district court on Polar Bear's remaining trademark claims. Upon Timex's motion the court dismissed all of Polar Bear's remaining trademark claims, and Polar Bear appealed the dismissal of its claims to the Ninth Circuit. The Ninth Circuit, in an unpublished opinion dated July 21, 2007, affirmed final dismissal of the case.
|
|
Troll Company A/S v. Uneeda Doll Company, Ltd.,
400 F. Supp. 2d 601 (S.D.N.Y. 2005), aff'd, 483 F.3d 150 (2d Cir. 2007).
In a case of first impression, the U.S. Court of Appeals for the Second Circuit affirmed a preliminary injunction we secured on behalf of Troll Company A/S of Denmark, copyright owner of the famous fuzzy-haired Good Luck Troll doll, preventing distribution of "Wish-nik" dolls by Uneeda Doll Co., Ltd. The U.S. copyright for the Good Luck Troll had been invalidated in 1965, but was resuscitated 30 years later by the Uruguay Round Agreements Act ("URAA") (codified in Section 104A of the U.S. Copyright Act), which restored copyrights of foreign authors lost for failure to comply with statutory formalities. The Court ruled that Uneeda, which sold Wish-nik dolls when the Good Luck Troll was in the public domain, was not a "reliance party" entitled to notice and a one-year sell-off period under the URAA because there had been "more than trivial interruption" in its sale of the dolls after Troll Co.'s rights were restored.
|
|
Milne v. Stephen Slesinger, Inc.,
430 F.3d 1036 (9th Cir. 2005), cert. denied, 126 S. Ct. 2969 (2006).
In the first judicial treatment of the new termination right enacted in the U.S. Copyright Term Extension Act of 1998, the U.S. Court of Appeals for the Ninth Circuit affirmed the District Court's decision rejecting an attempt by Disney and Clare Milne to cut off our client Stephen Slesinger, Inc.'s right to receive royalties relating to Winnie the Pooh. The firm also represented Slesinger in successfully opposing Milne's Petition for a Writ of Certiorari filed in the U.S. Supreme Court. In February 2007, we successfully obtained a dismissal for Slesinger of a second termination notice served by the granddaughter of an illustrator of the Pooh works.
|
|
Video-Cinema-Films, Inc. v. The Lloyd E. Rigler-Lawrence E. Deutsch Foundation,
No. 04 CV 5332 (S.D.N.Y., Oct. 6, 2006).
We were brought in after the liability phase to represent the defendant in a rare jury trial on statutory damages for copyright infringement. Before we became involved in the case, our client, a nonprofit charitable foundation, was found liable for copyright infringement based on the defendant's use of a clip from the 1947 movie Carnegie Hall. The plaintiff sought a finding of willful infringement, which would have permitted an award up to $150,000.00. But we persuaded the jury that our client did not act willfully, and the jury awarded only $6,700.00 to the plaintiff. This judgment was cut in half by an award of costs to our client because the judgment did not exceed the Rule 68 Offer of Judgment we made on our client's behalf immediately upon entering the case.
|
|
Hogarth v. Edgar Rice Burroughs, Inc.,
342 F.3d 149 (2d. Cir. 2003), cert denied, 72 U.S.L.W. 3465, 3589, 3598 (2004).
The U.S. Court of Appeals for the Second Circuit affirmed the trial decision in favor of Edgar Rice Burroughs, Inc., owner of all rights in the Tarzan character, that two Tarzan books published in 1972 and 1976 illustrated by artist Burne Hogarth are works for hire owned by Burroughs, notwithstanding erroneous registrations stating that Hogarth was the author of the works. Hogarth's estate also unsuccessfully claimed that Edgar Rice Burroughs had licensed the use of the illustrations from the books to Disney for its 1999 animated movie "Tarzan."
|
|
I.M.S. Inquiry Mgmt. Sys., Ltd v. Berkshire Info. Sys., Inc.,
307 F. Supp. 2d 521 (S.D.N.Y. Feb. 23, 2004).
We argued defendant Berkshire Information Systems, Inc.'s successful motion to dismiss the plaintiff's claims under the Copyright Act and the Digital Millennium Copyright Act (DMCA).
|
|
Weissman v. Freeman,
868 F.2d 1313 (2d Cir.), cert. denied, 493 US 883 (1989).
We established the point that defendant's joint authorship with plaintiff of an underlying medical work did not entitle him to claim copyright ownership of the newly added material to the plaintiff's derivative work based on the underlying work where the defendant had not participated in the updating of the original work. [Roger Zissu]
|
|
Burroughs v. MGM,
98 Civ. 7448 (S.D.N.Y. 2000).
We represented the heirs of Edgar Rice Burroughs in the first case interpreting the 1976 Copyright Act's termination provisions. The decision required editing MGM's 1981 remake of its 1932 film Tarzan, The Apeman, but then held that the edited version did not contravene the provision of a 1931 motion picture license requiring MGM to adhere to the original story in exercising the right granted to it to remake the original production of this film and did not violate the Burroughs' heirs' rights under the copyright laws' newly enacted provisions allowing copyright owners to terminate prior grants. [Roger Zissu
|
|
Viacom Int'l Inc. v. Fanzine, Inc.,
98 Civ. 7448 (S.D.N.Y. 2000).
In a copyright case of first impression, the court held that Viacom's distribution of publicity materials featuring its television characters did not allow a recipient under the guise of media coverage or a fair use defense to commercially reproduce these materials as posters that were folded up to look like a magazine without the authorization of the copyright owner.
|
|
Cordon Art B.V. v. Walker,
40 U.S.P.Q. 2d 1506 (S.D.Cal. 1996).
We successfully brought the first case under the Uruguay Round GATT amendments to the US copyright Act to stop unauthorized copying of the works of Dutch artist M.C. Escher.
|
|
Werbungs & Commerz Union Austalt v. Robert LeShufy, et.al.,
6 U.S.P.Q. 2d 1153 (S.D.N.Y. 1987).
We represented American Express, obtaining a summary judgment of dismissal of plaintiff's copyright claims against that company, but a multi-million dollar jury verdict was ultimately returned against the other remaining defendants.
|
|
|
Trademark Infringement
|
Overbeck Corp. v. Overbeck GmbH,
No. 03-CV-0844 (DRH) (ETB), 2007 WL 1029025 (E.D.N.Y. Mar. 30, 2007).
The firm prevailed a motion to strike a jury verdict against its clients, the German grinding machine company Overbeck GmbH, its parent, the Spanish cooperative Danobat S. Coop., and its U.S. affiliate Danobat Machine Tool Co., Inc., in the U.S. District Court for the Eastern District of New York. After a full trial, in which plaintiff was forced to drop most of its nine causes of action, and defendants successfully moved in limine to dismiss all of plaintiff's claims for monetary damages because of its discovery abuses, the jury nevertheless found for plaintiff, a local company. Prior to the verdict, defendants timely moved to strike plaintiff's jury demand, and they renewed this motion thereafter. The court granted the motion, deeming the jury decision against defendants merely advisory.
|
|
Creative Arts by Calloway, LLC v. Brooks,
82 U.S.P.Q.2d 1319 (S.D.N.Y. 2007); No. 01 Civ. 3192 (CLB) (S.D.N.Y. Dec. 11, 2001), aff'd, 2002 WL 31303241 (2d Cir. Oct. 11, 2002).
Our firm successfully defended Cab Calloway's grandson, Christopher Brooks, against multiple attempts by his step-grandmother, her family, and their company to prevent him from performing his grandfather's music under the name "The Cab Calloway Orchestra." Most recently, we obtained a dismissal on res judicata grounds of the plaintiffs' copyright infringement claims against Mr. Brooks for his use of Cab Calloway's songs. Judge Richard Owen held the claims should have been brought in an action the plaintiffs filed against Mr. Brooks in 2001 concerning use of the CAB CALLOWAY trademark. In the 2001 action, we obtained summary judgment for Mr. Brooks, which was affirmed by the U.S. Court of Appeals for the Second Circuit.
|
|
De Beers LV Trademark Ltd. v. DeBeers Diamond Syndicate, Inc.
440 F. Supp. 2d 249 (S.D.N.Y. 2006)
The firm won a trial before the United States District Court for the Southern District of New York on behalf of plaintiffs De Beers LV Limited and De Beers LV Trademark Limited, owners of rights in the famous DE BEERS mark. Calling the DE BEERS mark "one of the most famous brands in the world," the District Court ruled that the defendants' attempt to use the DE BEERS name to sell diamonds over the Internet was "entirely in bad faith" and accordingly found the defendants liable for trademark infringement, trademark dilution and unfair competition.
|
|
Inwood Laboratories v. Ives Laboratories,
456 U.S. 844 (1982).
The U.S. Supreme Court established standards for contributory infringement and functionality in trademark cases in this case involving the appearance of the prescription drug capsules of Cyclosposmol. [Marie Driscoll]
|
|
Tri-Star Pictures, Inc. v. Unger
88-CV-9129-DNE (July 13, 1998)
We successfully represented the producer of the famous film "Bridge on the River Kwai," in a trademark infringement suit against the producer of "Return from the River Kwai." We asserted that the title "Return from the River Kwai" is likely to cause confusion because it suggests the film is a sequel to "Bridge on the River Kwai," when in fact it is not a sequel. The district court held the defendants guilty of intentional infringement and awarded a permanent injunction and attorneys' fees. The court later ordered defendants to pay our client $400,000 in attorneys' fees. This Second Circuit decision affirms a decision of the district court ordering the defendants to post security for costs on appeal.
|
|
Lane Capital Mgmt. Inc. v. Lane Capital Mgmt. Inc.,
15 F. Supp.2d 389 (S.D.N.Y. 1998), aff'd, 1999 U.S. App. LEXIS 22965 (2d Cir. Sep. 22, 1999).
We successfully represented the plaintiff in a case of first impression in the Second Circuit on the issue of when a trademark, "Lane", is primarily merely a surname. In affirming the District Court's grant of summary judgment enjoining the defendant from using the Lane Capital Management name, the Second Circuit set the standard for determination of the surname issue.
|
|
Nabisco Brands, Inc. v. Conusa Corp.,
892 F.2d 74 (4th Cir. 1989).
The Fourth Circuit protected as trademark a configuration for Lifesavers candy that had once been the subject of a design patent. [Marie Driscoll]
|
|
DC Comics v. Kryptonite Corp.,
336 F. Supp. 2d 324 (S.D.N.Y. 2004).
We defeated a motion for summary judgment filed by the lock manufacturer Kryptonite Corporation. In ruling for DC Comics, the U.S. District Court for the Southern District of New York held that DC Comics owns strong rights in the KRYPTONITE mark, based upon its consistent use with Superman over the past 60+ years.
|
|
Times Mirror Magazines, Inc. v. Field & Stream Licenses Company
103 F. Supp. 2d 711 (SDNY 2000), aff'd, 294 F.3d 383 (2d. Cir. 2002)
Plaintiff owned the trademark Field & Stream for publications, and defendant owned the Field & Stream trademark for clothing and other products. The parties had co-existed for decades and had more recently entered into concurrent use and settlement agreements specifying the products reserved to each. We won summary judgment dismissing plaintiff's claims seeking to invalidate the concurrent use agreements based on allegations of breach of contract and likelihood of public confusion. At a trial on defendant's counterclaim for breach of a covenant not to sue, we won a judgment exceeding $1 million which was affirmed on appeal by the U.S. Court of appeals for the Second Circuit.
|
|
Fruit-Ices Corp. v. Coolbrands Int'l, Inc.,
335 F. Supp. 2d 412 (S.D.N.Y. 2004).
We obtained a preliminary injunction against ice cream company CoolBrands on behalf of the firm's client Frozfruit. The U.S. District Court for the Southern District of New York held that Frozfruit was likely to prevail on the merits of its claim that CoolBrands' re-designed packaging for its frozen fruit bar was an infringement of the Frozfruit trade dress.
|
|
The Novus Group, Inc. v. Dean Witter, Discover & Co.,
93 Civ. 1056A, U.S. District Court, E.D. Va., Alexandira Division (April 1994).
We successfully represented Discover Card defendants in a jury trial in the so-called "Rocket Docket" against claims for alleged trademark infringement and unfair competition. Plaintiff a Washington, D.C. business consulting firm claimed that defendants' adoption of the subsidiary mark "Novus" to identify merchant and ATM locations accepting the Discover Card caused "reverse confusion."
|
|
Financial Matters v. PepsiCo, Inc.,
1993 U.S. Dist. LEXIS 13294; 1994 Trade Cas. (CCH) P70521 (S.D.N.Y. Sept. 23, 1993).
We established PepsiCo, Inc.'s ownership of world famous STOLICHNAYA mark for vodka following dissolution of former U.S.S.R. and obtained preliminary injunction and later a final judgment against an infringer acting under the authority of officials of a former Soviet state.
|
|
Luv N'Care, Ltd. v. Babelito, S.A.,
306 F. Supp. 2d 468 (S.D.N.Y. 2004).
We won a decision in the U.S. District Court for the Southern District of New York dismissing a trade dress infringement claim brought against our firm's client, Babelito, an Argentine manufacturer of products for infants, on the ground that the defendant had not been properly served in the United States.
|
|
Buffett v. Cheeseburger in Paradise, Inc.
97 CV 00214 (3/18/97) 98 CV 01730 (3/11/98) (C.D. Cal.).
In a case of first impression, we successfully argued that in a federal court action seeking to cancel the defendant's trademark registration, the applicable factors to be applied are those established by the Federal Circuit, not the likelihood of confusion factors applied in an infringement analysis.
|
|
Market Corner Realty Assoc's, LLC v. CGM-GH LLC,
317 F.Supp.2d 485 (S.D.N.Y. 2004).
We defeated a preliminary injunction motion on behalf of well-known restaurateur Jeffrey Chodorow and his company. The plaintiffs, who operated a neighboring restaurant featuring the Japanese cuisine of chef Tadashi Ono, sought to prevent Chodorow from opening a Japanese restaurant named ONO in the newly opened Hotel Gansevoort in New York City's meatpacking district.
|
|
Rolls-Royce Motors v. A.&A. Fiberglass, Inc.,
428 F. Supp. 689 (N.D. Ga. 1976)
We established protectability of the ROLLS-ROYCE radiator grill as an identifying symbol of origin.
|
|
Rolls-Royce Motors Ltd. v. Custom Cloud Motors, Inc.,
190 U.S.P.Q. 80 (S.D.N.Y. 1976).
We established protectability of the ROLLS-ROYCE radiator grill as an identifying symbol of origin.
|
|
Echo Design Group, Inc. v. Zino Davidoff S.A.,
283 F. Supp. 2d 963 (S.D.N.Y. 2003).
We successfully defeated a preliminary injunction motion brought by The Echo Design Group, Inc., a fashion and home accessories manufacturer, against Zino Davidoff S.A., Davidoff & Cie S.A., Davidoff of Geneva (NY), Inc., Coty Inc., and Lancaster Group LLC to prevent the US launch of ECHO DAVIDOFF, a new fragrance line.
|
|
Pump, Inc. v. Collins Management,
746 F. Supp. 1159 (D. Mass. 1990).
In one of the only decisions of its kind, the district court ruled in favor of our clients in finding that there was no likelihood of confusion when the identical mark "Pump" was used as the name of an album by our client, the rock band Aerosmith, and as the name of a lesser-known band.
|
|
Swatch Group (U.S.) Inc. v. Movado Corp.,
01 CV 0286(RLC), 2003 WL 1872656 (S.D.N.Y. Apr. 10, 2003).
We won summary judgment on behalf of Movado in the U.S. District Court for the Southern District of New York on April 9. Swatch alleged that its rights in its VENTURA mark, which it uses under its Hamilton line of watches, were infringed by Movado's use of the mark VENTURE, which Movado uses in connection with its ESQ line of watches.
|
|
Edgar Rice Burroughs, Inc. v. High Society Magazine,
7 Media L. Reptr. 1862 (S.D.N.Y. 1981).
We represented the owner of "Tarzan" in enjoining pornographic photo essay purporting to show "Tarzan" and "Jane".
|
|
M&G Elecs. Sales Corp. v. Sony Kabushiki Kaishi,
250 F. Supp. 2d 91 (E.D.N.Y. 2003).
We defeated a motion for a preliminary injunction brought by a Long Island-based electronics company against Sony Electronics in an action involving use of the mark MG in connection with digital copyright management software.
|
|
EFS Marketing, Inc. v. Russ Berrie & Company, Inc. and Russell Berrie,
76 F.3d 487 (2d Cir. 1996)
We successfully represented the Russ Berrie defendants who were sued for violation of plaintiff's alleged "trade dress" rights in a line of troll dolls based upon the original Dam troll doll for which copyright protection was lost in 1965 due to publication without copyright notice. The Second Circuit affirmed dismissal of all of plaintiff's trade dress claims and reversed and then also dismissed plaintiff's false advertising claim arising out of use of Russ Berrie's copyright notice on its new versions of the original troll dolls.
|
|
Glow Indus., Inc. v. Lopez,
252 F. Supp. 2d 962 (C.D. Cal. 2002).
On behalf of Jennifer Lopez and Coty Inc. we defeated a motion for a preliminary injunction brought by Glow Industries in the United States District Court for the Central District of California. The motion sought to block the launch of the GLOW BY J.LO fragrance line.
|
|
Carillon Importers v. Frank Pesce Int'l Group,
913 F. Supp. 1559 (S.D. Fla. 1996), aff'd, 112 F.3d 1125 (11th Cir. 1997) (S.D. Fla. 1997).
We obtained a preliminary injunction in a trade dress infringement case brought by the U.S. importer of STOLICHNAYA CRISTALL vodka.
|
|
Henri Bendel, Inc. v. Sears, Roebuck and Co.,
25 F. Supp. 2d 198, 48 U.S.P.Q.2d 1948 (S.D.N.Y. 1998).
We obtained summary judgment dismissing claims by Henri Bendel that green and white striped cosmetic bags that were otherwise essentially copies of Henri Bendel's signature brown and white striped cosmetic bags infringed plaintiff's trade dress in those bags. The Court adopted defendants' argument that, except for plaintiff's brown and white color scheme, the bag designs were non-distinctive and/or functional.
|
|
Maher & Maher, Inc. v. Unisonic Products Corp.,
719 F. Supp. 161 (S.D.N.Y. 1989).
We obtained a preliminary injunction against defendant's sale of telephones that copied the trade dress of our client's "Fun Phones," unique lucite-cased telephones with brightly colored components.
|
|
Sun Pharmaceuticals v. Tanning Research,
No. 90-CV-06147 (S.D. Fla. June 30, 1992).
We obtained a preliminary injunction on a trade dress claim concerning the design of suntan lotion packages.
|
|
|
Conterfeits and Gray Market Products
|
Citizen Watch Company of America v. BJ's Wholesale Club,
99 Civ.0810 (DB) (S.D.N.Y. July 15, 1999).
We obtained a preliminary injunction in an action brought by the exclusive authorized U.S. distributor of Citizen watches against wholesale and retail distributors of gray market products.
|
|
Movado Corporation v. Global Computer Corp.,
00 Civ. 0495 (LAK) (SDNY 2000).
We obtained permanent injunctive relief against several Internet watch counterfeiters, as well as for other famous brand watches. Although these defendants defaulted, we were able to convince the judge at a damages hearing (based on the purchase of one counterfeit watch from each site, and on one site owner's continuing activities and attempts to avoid being tracked down), to issue the money judgments.
|
|
|
Dilution
|
Estee Lauder, Inc. v. Cinnabar 2000 Haircutters, Inc.,
218 U.S.P.Q. 191 ( S.D.N.Y. 1982).
In the first case to grant preliminary injunctive relief and summary judgement solely on the basis of New York State anti-dilution law, the name CINNABAR 2000 for a hair salon was enjoined as dilutive of Estee Lauder's well-known CINNABAR mark for fragrance products. [David Ehrlich]
|
|
American Express Co. v. Vibra Approved Labs Corp.,
10 U.S.P.Q. 2d 2006 (S.D.N.Y. 1989).
We obtained preliminary injunctive relief to prevent distribution of condoms packaged as American Express cards bearing the phrase NEVER LEAVE HOME WITHOUT IT.
|
|
|
Copyright and Trademark Fair Use
|
Harper & Row Publishers, Inc. v. Nation Enterprises, Inc.,
501 F.Supp. 848 (S.D.N.Y. 1986), aff'd 723 F.2d 195 (2d Cir. 1983), reversed and remanded, 471 US. 539 (1988)
The Nation magazine, without authorization, had copied portions of former President Gerald Ford's unpublished memoirs. In this landmark case involving the fair use doctrine, the U.S. Supreme Court's 1985 decision to reinstate the district court decision for the plaintiffs remains the seminal copyright fair use case under the 1976 Copyright Act. Roger Zissu won the case at trial, establishing that the unpublished status of a work narrows the scope of permissible fair use of a work and that a news reporting purpose alone does not justify excessive copying under the fair use doctrine. [Roger Zissu]
|
|
Anheuser-Busch, Inc. v. Balducci,
28 F.3d 769 (8th Cir. 1994).
In this action by our client Anheuser-Busch over misuse of the MICHELOB trademark in what the defendants claimed was a parody advertisement, the Eighth Circuit reversed a district court decision holding the ad was protected by the First Amendment.
|
|
Twin Peaks Productions, Inc. v. Publications International, Ltd.,
996 F.2d 1366 (2d Cir. 1993).
Our client, the producer of the "Twin Peaks" television series, brought suit for copyright and trademark infringement against the publisher of an unauthorized trivia book about the series. The district court found that the defendant was a willful infringer, and the Second Circuit affirmed.
|
|
Charles Atlas v. DC Comics,
112 F. Supp 2d. 330, 56 U.S. P.Q. 2d 1176 (S.D.N.Y. 2000).
We won summary judgment on First Amendment and other grounds dismissing plaintiff's U.S. Trademark Act claims of likelihood of confusing arising out of the parodic inclusion in DC Comics' "Flex Mentalo" comic books of a copy of the well known and often-mocked Charles Atlas "Hero of the Beach" body building course ad which did not have copyright protection.
|
|
Schieffelin & Co. v. Jack Co. of Boca Inc.,
850 F. Supp. 232 (S.D.N.Y. 1994).
Marie Driscoll protected the DOM PERIGNON trademark against "Dom Popingnon" popcorn. [Marie Driscoll]
|
|
Hormel Foods Corp. v. Jim Henson Productions, Inc.,
36 U.S.P.Q. 2d 1812 (S.D.N.Y. 1995), aff'd., 73 F.3d 497 (2d Cir. 1996).
In one of the more humorous decisions in recent memory, we successfully established the rights of the Muppets to poke fun at "SPAM" luncheon meat by naming a wild boar Muppet character "Spa-am" in the movie "Muppet Treasure Island" and on movie merchandise.
|
|
|
False and Comparative Advertising
|
JR Tobacco of America, Inc. v. Davidoff of Geneva (CT), Inc.,
1997 U.S. Dist. LEXIS 1501 (S.D.N.Y. February 13, 1997).
The court granted the motion for summary judgment we filed on behalf of Davidoff, a maker of premium cigars. JR used Davidoff's trademarks in advertising for "JR Alternative" cigars, which JR claimed duplicated famous brands. Davidoff asserted that the use of its trademarks in JR's ads constituted trademark infringement and that JR's advertising claims were false.
|
|
Coors Brewing Co. v. Anheuser-Busch Companies, Inc.,
802 F. Supp. 965 (S.D.N.Y. 1992).
Coors claimed that television and radio commercials run by our client Anheuser-Busch stating that Coors' beer was shipped in railroad tankers and diluted with local water, disparaged its beer. The court denied Coors's motion for a preliminary injunction and allowed the commercials to continue running because of Coors' failure to show literal or implied falsehood, bad faith, or that the commercials were materially misleading.
|
|
Tyco Industries v. Lego Systems Inc., et. al.,
5 U.S.P.Q. 2d 1023 (D.N.J. 1987).
We obtained broad injunctive relief against false claims of equivalence to the famous Lego brand construction toys.
|
|
|
Hot News Misappropriation
|
National Basketball Association v. Motorola,
939 F. Supp. 1071 (S.D.N.Y. 1996), rev'd, 105 F.3d 841 (2d Cir. 1997).
We successfully tried the NBA's "hot news" misappropriation claim arising out of defendants'unauthorized transmissions on an AOL online site and via a Motorola hand-held beeper product (the "Sports Trax") of game statistics on a real-time basis, i.e., while the games are still in progress. We also served in an of counsel capacity to the NBA in the appeal in which the Second Circuit reversed the district court's ruling.
|
|
Lynch Jones & Ryan v. Standard & Poor's,
1998 N.Y. Misc., 47 U.S.P.Q. 2d 1759 (N.Y. Sup. Ct. 1998).
We established the continuing viability of protection against "hot news" misappropriation of time sensitive financial data and products under New York State law.
|
|
|
International
|
Edgar Rice Burroughs, Inc. v. Video Marc Dorcel
Working with French counsel, we successfully represented Edgar Rice Burroughs, Inc. in reaffirming its continuing copyright rights in the original 1912 Tarzan story "Tarzan of the Apes" TARZAN character in Berne member countries and in obtaining a permanent injunction and substantial damages in a copyright infringement action against an unauthorized video based on the TARZAN character. Favorable decisions were obtained in the Tribunal de Grande Instance and Cour D'Appel.
|
|
Whirlpool Corporation v. Registrar of Trademarks,
Civil Appeal No. 5201 of 1998 (Sup. Ct. India).
Working with Indian counsel, we successfully represented Whirlpool before the Supreme Court of India in an action seeking the removal of a registration for the WHIRLPOOL trademark from the Registry of Trademarks in India.
|
|
|
Internet
|
Rhino Entertainment Co. v. DomainSource.com, Inc. and Rhino Entertainment Co. v. Suk Min Jun,
Case Nos. D2006-0968 (WIPO Oct. 18, 2006); Case No. D2006-0948 (WIPO Oct. 25, 2006).
On behalf of Rhino Entertainment and members of the BeeGees music group, we recovered the BEEGEE.COM and BEEGEES.COM domain names in Uniform Domain Name Dispute Resolution Policy ("UDRP") proceedings, from owners that were using the names for websites linking to BeeGees-related sites (and other sites) of third parties to generate advertising or "click through" revenue for the registrants.
|
|
Janet Jackson v. Janetjackson.com,
No. 00-773-A (E.D. Va 2000)
We successfully recovered the domain name JANETJACKSON.COM in this in rem action under the Anticybersquatting Consumer Protection Act.
|
|
Mariah Carey v. General Web Group, et al.
No. CV-S-00-0167 (D. Nev.) 2000.
We obtained an order transferring the domain name MARIAHCAREY.COM and granting a permanent injunction enjoining defendants' further use of the well known personal name and mark MARIAH CAREY.
|
|
Edgar Rice Burroughs, Inc. v. Jay Schwartz,
WIPO Case No. D2000-0115.
We obtained an order transferring the domain names TARZANONLINE.COM, .ORG and .NET to ERB.
|
|
Veuve Clicquot Ponsardin v. Intercosma SA, et ano.,
WIPO Case No. D2000-0469.
We obtained an order transferring the domain names VEUVECLICQUOT.COM and .NET to our client.
|
|
Yue-Sai Kan, et. Al. V. Gong Gen Yan, et . al.,
WIPO Case No. D2001-0548.
We successfully represented noted Chinese-American entrepreneur and television personality Yue-Sai Kan in obtaining an order transferring to her several domain names consisting of variations of her name from a cybersquatter located in China.
|
|
|
Trademark Trial and Appeal Board Proceedings
|
Tea Board of India v. Republic of Tea, Inc.,
Opp. No. 91118587 (T.T.A.B. 2006).
The firm secured a decision in favor of The Tea Board of India, owner of the DARJEELING geographic certification mark for tea, in its opposition against a trademark application for DARJEELING NOUVEAU, covering tea, of Republic of Tea. In a 61-page decision, the Trademark Trial and Appeal Board upheld the opposition and denied Republic of Tea's counterclaim for cancellation in which it argued that our client's DARJEELING mark was generic.
|
|
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772,
396 F.3d 1369 (Fed. Cir. 2005)
The U.S. Court of Appeals for the Federal Circuit affirmed a successful opposition brought by our client Veuve Clicquot Ponsardin in the Trademark Trial and Appeal Board, in which it claimed that VEUVE ROYALE is confusingly similar to VEUVE CLICQUOT, and held that VEUVE CLICQUOT is a famous mark.
|
|
Interlego AG v. Abrams / Gentile Entertainment, Inc.,
63 U.S.P.Q. 2d 1862 (T.T.A.B. 2002).
We represented Interlego AG, Kirkbi AG and LEGO Systems, Inc. (all part of the famous LEGO toy company), in an opposition against a U.S. trademark application for MEGO for toys. In finding for our clients, the TTAB held confusion likely, especially since "LEGO is one of the most famous toy marks in the United States." The TTAB rejected the applicant's argument that previous co-existence between LEGO and a prior party's MEGO trademark for toys, allegedly without confusion, proved that confusion was not likely today.
|
|
Kenner Parker Toys Inc. v. Rose Art Industries, Inc.,
963 F.2d 350 (Fed. Cir. 1992).
In a frequently cited case that established the proposition that famous marks are entitled to strong protection, we successfully opposed competitor's application to register mark FUNDOUGH due to potential confusion with Parker's mark PLAY-DOH.
|
|
Carvel Corp. v. The Ice Cream Bakery, Inc.,
1999 TTAB LEXIS 217 (T.T.A.B. May 19, 1999).
We represented Carvel Corporation in its successful opposition against a former licensee's attempt to register the mark THE ICE CREAM BAKERY. The applicant argued that Carvel had abandoned THE ICE CREAM BAKERY through naked licensing, because Carvel's licensee's use of the mark was not identical to Carvel's use. The Board held that although the uses were not identical, there was no abandonment where Carvel had the contractual right to inspect its current licensee and had done so numerous times, and where the applicant itself admitted that consumers continued to associate the mark THE ICE CREAM BAKERY with Carvel.
|
|
Wyeth v. Fempro, Inc.,
Opp. No. 91121800 (T.T.A.B. Oct. 20, 2003).
The Trademark Trial and Appeal Board sustained our opposition on behalf of Wyeth to an application to register FEMPRO for use in connection with feminine hygiene products, on the basis that it was confusingly similar to PREMPRO for use in connection with prescription medication to treat symptoms of menopause.
|
|
Buffett v. Chi-Chi's, Inc.,
226 U.S.P.Q. 428 (T.T.A.B. 1985).
In an often-cited case that expanded the boundaries of law prohibiting registration of marks that falsely designate a connection with a person, we persuaded the Board that Jimmy Buffett's famous song title MARGARITAVILLE was equivalent to his nickname and could be a basis to prevent registration of MARGARITAVILLE as a slogan for restaurant services by a third party.
|
|
|
Trade Secrets
|
Jane Ring v. Estee Lauder, Inc.,
874 F.2d 109 (2d Cir. 1989).
We obtained summary judgment for defendant in a decision that clarifies the circumstances under which confidentially disclosed information loses its protectable character.
|
|
Awarded in Intellectual