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 (2010-2013), Legal 500 (2011-2013) and SuperLawyers (2011-2012 (Rising Star), 2013) 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.
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.
Member, Discovery Practices & Procedures Subcommittee of the Enforcement Committee, International Trademark Association (INTA) (2012-13 term, 2008-2009 term); American Bar Association, Intellectual Property Law Section; New York State Bar Association, Intellectual Property Law Section; Associate Member, Pharmaceutical Trade Marks Group (PTMG); 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).
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.
James has participated with other Fross Zelnick attorneys in the following notable matters, among many others:
Fooey v. Gap, No. 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.'"
Web-adviso v. Trump, 927 F. Supp. 2d 32 (E.D.N.Y. 2013). On behalf of Donald J. Trump, obtained summary judgment on claim under the Anti Cybersquatting Piracy Act in the U.S. District Court for the Eastern District of New York in an action involving trumpbeijing.com, trumpindia.com, trumpmumbai.com and trumpabudhabi.com.
McNeil-PPC, Inc. v. Walgreen Co., Opposition No. 91184978, 2013 WL 223400 (T.T.A.B. Jan. 22, 2013). On behalf of McNeil-PPC, Inc., a subsidiary of Johnson & Johnson and the exclusive licensee of the ZYRTEC mark for allergy products in the United States, successfully opposed Walgreen Co.’s attempt to register the mark WAL-ZYR in connection with an allergy product containing the identical active ingredient to ZYRTEC before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office.
Athleta, Inc. v. Pitbull Clothing Co., CV 12-10499 CAS (FMOx), 2013 WL 142877 (C.D. Cal. Jan. 7, 2013). On behalf of women's apparel company Athleta, Inc., successfully obtained a prelimninary injunction in the U.S. District Court for the Central District of California based on its rigths in the ATHLETA trademark and other indicia against the operator of an online clothing store located at athletica.net. On a progressive encroachment theory, the Court enjoined defendants' sale of ATHLETICA-branded clothing as well as the sale of any women's fitness clothing from the athletica.net store.
Jumbo Bright Trading Limited v. The Gap, Inc., 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 The Gap, Inc., defeated motions for temporary restraining order and preliminary injunction brought by Jumbo Bright Trading Limited and Charles Pozzi seeking to stop the client's sale of women's loafers in the U.S. District Court for the Central District of California.
Frank Sinatra Enterprises, LLC v. Loizon, Opp. No. 91198282 (T.T.A.B. Sept. 12, 2012). On behalf of Frank Sinatra Enterprises, LLC, successlly opposed applicant Bill Loizon's attempt to register FRANKS ANATRA in connection with catering services on grounds of false assoication under Lanham Act Section 2(a) and likelihood of confusion under Lanham Act Section 2(d) before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office.
Lopez v. Gap, Inc., 883 F. Supp. 2d 400 (S.D.N.Y. 2012). Successfully defended our clients The Gap, Inc., Gap International Sourcing, Inc., Old Navy, LLC and Old Navy (Apparel), LLC against a trademark infringement and unfair competition action brought by Robert Lopez, who claimed to own trademark rights in LES, LES NYC and LOWER EAST SIDE. On our motion for summary judgment, the U.S. District Court for the Southern District of New York dismissed all of the plaintiffs' claims.
Jackson v. Booker, 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). On behalf of several clients, including Sundance Channel, Mayor Cory A. Booker and the documentary producers Marc Benjamin and Marc Levin, on summary judgment successfully defeated a copyright infringement action brought by author E. Adam Jackson in which Jackson alleged that the Sundance Channel’s Emmy Award-winning documentary series Brick City infringed Jackson’s novel of the same name. This decision was affirmed by the U.S. Court of Appeals for the Third Circuit.
Superman Copyright Termination Litigation: Siegel v. Warner Bros. Entertainment Inc., 690 F.Supp.2d 1048 (C.D. Cal. 2009); 658 F. Supp. 2d 1036 (C.D. Cal. 2009); Case No. 2:04-CV-8400, 2009 WL 2014164 (C.D. Cal. Jul. 9, 2009); 581 F.Supp.2d 1067 (C.D. Cal. 2008), Case No. 2:04-CV-8400, 2008 WL 4414682 (C.D. Cal. Sept. 26, 2008); 542 F. Supp. 2d 1098 (C.D. Cal. 2008). Siegel v. Time Warner Inc., 496 F. Supp. 2d 1111 (C.D. Cal. 2007). Represented DC Comics, Warner Bros. Entertainment Inc. and related entities in a long-running dispute 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 cases have resulted in a number of significant decisions in the complex area of copyright termination and in other areas, including res judicata, jury trial rights, the fair market value of copyright rights in the entertainment arena, among others.
Nippon Menard Cosmetic Co. Ltd. v. Colgate-Palmolive Co., 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.
Payne v. Anvil Knitwear, Inc., 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, as well as awarded a substantial amount of attorneys' fees. The U.S. Court of Appeals for the Ninth Circuit affirmed the decision in its entirety.
Echo Design Group, Inc. v. Zino Davidoff S.A., 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.
M&G Elecs. Sales Corp. v. Sony Kabushiki Kaishi, 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.
Glow Indus., Inc. v. Lopez, 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.