Lawyer Detail

James D. Weinberger
Partner
212-813-5952
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Practice Description
James Weinberger is a Partner in Fross Zelnick's litigation practice, focusing on litigation, mediation and arbitration in the areas of copyright, trademark and trade dress infringement, unfair competition, false advertising, trademark dilution, right of publicity, First Amendment and Internet-related matters. Recognized by Chambers USA (2010-2014), Legal 500 (2011-2014), Managing Intellectual Property IP Stars (2014), New York SuperLawyers Rising Stars (2011-2012), New York SuperLawyers (2013-2014) and the 2014 Guide to the World's Leading Trade Mark Lawyers in the areas of copyright and trademark law, James regularly counsels and advises clients across a broad range of industries, including apparel, beverages, chemicals, cosmetics, film, finance, music, pharmaceuticals, publishing and software on matters relating to intellectual property rights. In addition to federal and state court litigation, James's expertise includes copyright and trademark clearance, enforcement strategy and execution, portfolio management, as well as negotiating and drafting trademark and copyright licenses, coexistence and settlement agreements. James also litigates opposition proceedings in the Trademark Trial and Appeal Board and Uniform Domain Name Dispute Resolution Policy proceedings in the World Intellectual Property Organization.

Education
Wesleyan University (B.A., 1996, with honors); Columbia University School of Law (J.D., 1999). Harlan Fiske Stone Scholar. Recipient, Carroll G. Harper Prize. Editor-in-Chief, Columbia-VLA Journal of Law & the Arts.

Professional Activities
Member, Judicial Administration and Trademark Litigation Subcommittee, International Trademark Association ("INTA") (2014-15 term); Member, Discovery Practices & Procedures Subcommittee of the Enforcement Committee, INTA (2012-13 term, 2008-2009 term); Associate Member, Pharmaceutical Trade Marks Group (PTMG); Member, American Bar Association, Intellectual Property Law Section; Member, New York State Bar Association, Intellectual Property Law Section; Speaker: Product Trade Dress and Non-Traditional Trade Marks - Update from the US, PTMG Spring Conference (Barcelona, Spain 2012); Panelist: Understanding the Use-Based Trademark System in the US, Managing Intellectual Property China-International IP Forum (Beijing, PRC 2011); Panelist: A Conversation Between Brand Owners, Retailers and Manufacturers About Private Label in the United States, INTA Annual Meeting (San Francisco, CA 2011). Speaker: Discovery Practice, Procedure and Strategy, Navigating Trademark Practice Before the PTO 2007: From Filing Through the TTAB Hearing, Practicing Law Institute (New York, NY). Guest Instructor: Columbia-VLA Clinical Seminar in Law and the Arts, Columbia Law School (2006-2012); Director, Columbia Law School Association, (2010-2014 term).

Admissions
U.S. Supreme Court
New York, Court of Appeals, Appellate Division, 1st Dep't
U.S. Court of Appeals, Second Circuit, Third Circuit, Ninth Circuit, Eleventh Circuit
United States District Court, S.D.N.Y, E.D.N.Y., N.D. Ill.

Selected Cases

1:14-cv-01163-GBD (S.D.N.Y.)

Represented defendant restaurant in a trademark infringement action brought by a technology education company involving the name GENERAL ASSEMBLY.

1:13-cv-06255-LLS (S.D.N.Y.)

Represented defendant medical practice in trademark infringement action brought by plaintiff Laser Spine Institutte, L.L.C.

927 F. Supp. 2d 32 (E.D.N.Y. 2013) (summary judgment); 2014 WL 819417, 2014 WL 1267761, No. 11-CV-1413 (DLI) (VVP) (Mar. 26, 2014) (damages)

The Firm obtained summary judgment in favor of client Donald J. Trump on a cybersquatting claim brought against J. Taikwok Yung in the U.S. District Court for the Eastern District of New York.  The Court subsequently awarded our client $32,000 in damages.

No. 13 Civ. 02175 PAE (S.D.N.Y.)

Represented artist David Datuna in copyright infringement action brought by photographer Albert Watson in connection with Datuna's alleged infringement of Watson's portrait of Steve Jobs in Datuna's visual installation Steve Jobs-Ayn Rand.

No. 12 C 5713, 2013 WL 2237515 (N.D. Ill. May 17, 2013)

On behalf of Gap, Inc., successfully obtained dismissal of a copyright action brought by clothing retailer Fooey Inc. in the U.S. District Court for the Northern District of Illinois.  On Gap's motion to dismiss under Fed. R. Civ. P. 12(b)(6), the Court determined that "no ordinary observer . . . could reasonably conclude that defendant misappropriated plaintiff's protectable expression," and that the works in quesiton “each . . . impresses upon the ordinary observer its own distinct 'total concept and feel.'" 

No. 1:10-cv-02661-WMN

Represented Defendants in an action alleging that sales training manuals created by a former employee of Plaintiff subsequently hired by Defendants constituted copyright and trademark infringement.

Opposition No. 91184978, 2013 WL 223400 (T.T.A.B. Jan. 22, 2013)

The Firm successfully represented our client, McNeil-PPC, Inc. (“McNeil”), a subsidiary of Johnson & Johnson and the exclusive licensee of the ZYRTEC mark for allergy products in the United States, in a five-year challenge before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office (the “Board”) to Walgreen Co.’s (“Walgreens”) attempt to register the mark WAL-ZYR in connection with an allergy product containing the identical active ingredient to ZYRTEC.

No. CV 12–10499–CAS (FMOx). 2013 WL 142877 (C.D. Cal. Jan. 7, 2013)

The Firm was successful in obtaining a preliminary injunction for our client, Athleta, Inc., a subsidiary of Gap Inc., against Pitbull Clothing Co. and Cory Peck, operators of the website athletica.net.

CV 12-08932 DDP (MANx), 2012 WL 5289784 (C.D. Cal. Oct. 25, 2012), 2012 WL 6721082 (C.D. Cal. Dec. 27, 2012)

On behalf of our client The Gap, Inc. ("Gap"), the Firm successfully defeated an emergency motion for a temporary restraining order and a second motion for a preliminary injunction brought by plaintiffs Jumbo Bright Trading Limited and Charles Pozzi ("Plaintiffs") against Gap's offering and sale of certain women's loafers.

Opp. No. 91198282 (T.T.A.B. Sept. 12, 2012)

The Firm successfully represented our client, Frank Sinatra Enterprises, LLC (“FSEN”), which holds the exclusive right to commercially exploit Mr. Sinatra’s name and likeness, in its challenge before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office (the “Board”) to Michigan-based caterer Bill Loizon’s attempt to register the mark FRANKS ANATRA in connection with his catering business.

No. 2:10-cv-05371-JLL-CCC, 2011 WL 3236062 (D.N.J. July 27, 2011), aff'd, 465 Fed.Appx. 163 (3d Cir. 2012)

The firm successfully defended our clients, who include Sundance Channel, Mayor Cory A. Booker and the documentary producers, Marc Benjamin and Marc Levin, against a copyright infringement action brought by author, E. Adam Jackson. Jackson’s October 2010 lawsuit alleged that the Sundance Channel’s Emmy Award-winning documentary series Brick City infringed Jackson’s novel of the same name.

883 F. Supp. 2d 400 (S.D.N.Y. 2012)

The firm successfully defended our clients, The Gap, Inc., Gap International Sourcing, Inc., Old Navy, LLC and Old Navy (Apparel), LLC ("Gap") against a trademark infringement and unfair competition action brought by Robert Lopez, who prints and sells t-shirts and other apparel promoting his neighborhood, the Lower East Side of New York City.

No. 11 Civ. 0229 LTS (S.D.N.Y.)

Represented defendant and impartial sublicensee Independent Film Channel in a breach of contract and copyright infringement suit between plaintiff licensor and co-defendant licensee over broadcast rights to certain films on client's television network.

No. 1:11-cv-01364 (N.D. Ill.)

Represented defendant Banana Republic in copyright infringement action involving store window display designs.

No. 10 Civ. 03568 JSR (S.D.N.Y.)

Represented defendant Banana Republic in copyright infringement action involving jewelry designs.

3:10-cv-04354-EDL (N.D. Cal.)

Represented plaintiff Gap in trademark infringement action against proprietor of GAPNOTE website and social media network.

2:09-cv-09439-DSF-PLA (C.D. Cal.)

Represented plaintiff The Gap in trademark infringement action involving jeans.

No. 05 Civ. 10529 LTS (S.D.N.Y.)

Represented plaintiff Kensington Publishing Corp. in trademark infringement action against author involving the BAD BOYS series of romance novels.

view case history

The firm was part of the defense team for clients Time Warner Inc., Warner Communications, Inc., Warner Bros. Entertainment Inc., Warner Bros. Television Production Inc. and DC Comics in the ongoing litigation in the U.S. District Court for the Central District of California over the copyright termination interest in certain works featuring the Superman and Superboy characters allegedly owned by the heirs of co-creator, Jerry Siegel. The decisions in which the firm was involved resulted in a number of significant decisions in the complex area of copyright termination and in other areas, relating to, inter alia, defenses to termination claims of work made for hire, co-ownership, derivative work exception, limitation of copyright termination recapture to U.S. rights under copyright and inapplicability of copyright termination to trademark rights; res judicata; jury trial rights and the fair market value of copyright rights in the entertainment arena, among others. Summaries of decisions and links can be found by clicking through "view case history" above.

Case No. 2:2008cv04908 (D.N.J.)

Represented Colgate-Palmolive Co. in a declaratory judgment action seeking to invalidate a 1983 settlement agreement and consent judgment resolving a prior trademark dispute between the parties. Obtained favorable settlement. 

No. CV 06-8100 SVW SSX, 2007 WL 1953438 (C.D. Cal. June 27, 2007), aff'd, 293 Fed. Appx. 475 (9th Cir. 2008) 

Represented Anvil Knitwear, Inc. in a successful motion for summary judgment dismissing claims for copyright infringement in the U.S. District Court for the Central District of California. The Court granted Anvil's motion in its entirety and dismissed the case and awarded a substantial amount of attorneys' fees. The U.S. Court of Appeals for the Ninth Circuit affirmed the decision in its entirety. 

8:03-cv-01548-DOC-AN (C.D. Cal.)

Represented defendants Quick Sports International, a well-known Dutch soccer brand, along with its principals, in connection with a trademark infringement lawsuit brought by plaintiff Quiksilver.

2:03-cv-08357-GPS-SS (C.D. Cal.)

Represented defendants in trademark infringement action involving plaintiff Alberto-Culver's VO5 mark.

132 Fed.Appx. 267 (11th Cir. 2005)

Obtained summary judgment on collateral estoppel grounds for defendants Kensington Publishing Corp. and author and former DEA agent Jerry Speziale on claims broguht by Paul Lir Alexander for invasion of privacy and violation of right of publicity by Speziale's inclusion of information about Alexander's role as a DEA informant in his book Without a Badge.  The U.S. Court of Appeals for the Eleventh Circuit affirmed.

283 F. Supp. 2d 963 (S.D.N.Y. 2003)

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.

250 F. Supp. 2d 91 (E.D.N.Y. 2003)

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. 

252 F. Supp. 2d 962 (C.D. Cal. 2002), 273 F. Supp. 2d 1095 (C.D. Cal. 2003)

On behalf of Jennifer Lopez and Coty Inc., 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. Subsequently defeated motion for summary judgment in which Glow Industries sought to invalidate acquisition of GLOW KIT mark and declaration of non-infringement. 

Published Works

Look Before You Leap Into Naming Rights Agreements Managing Intellectual Property, October 2009
Download
The Arbitrary Nature of Reverse Confusion Claims

Litigation and Enforcement Focus 2004, Managing Intellectual Property

Download
Baseball Trademark Licensing and the Antitrust Exemption: An Analysis of New York Yankees Partnership v. Major League Baseball Enterprises, Inc.

23 Colum. - VLA J. of L. & Arts 75 (1999)