Admitted to Practice | New York, 1973 | | District of Columbia, 1985 | | U.S. Supreme Court, 1980 | | U.S. Court of Appeals 2nd Circuit, 1975 | | U.S. Court of Appeals 10th Circuit, 1981 | | U.S. Court of Appeals D.C. Circuit, 1985 | | U.S. Court of Appeals 9th Circuit, 1989 | | U.S. Court of Appeals 8th Circuit, 1997 | | U.S. Court of Appeals 4th Circuit, 2000 | | U.S. District Court Southern District of New York, 1973 | | U.S. District Court Eastern District of New York, 1973 | | U.S. District Court D.C., 1985 | | U.S. District Court Northern District of New York, 1998 |
| Marcia Paul concentrates on media and intellectual property litigation and counseling, representing clients on copyright, trademark, libel and advertising matters with many of the world's major media companies, as well as general commercial litigation. In the 37 years that she has practiced law, Marcia has tried more than 50 cases in various state and federal courts around the country and before various arbitral tribunals, including jury trials, on a wide range of legal issues and in many industries. She has tried complex litigation, frequently involving multinational and cross-border issues. Selected Experience BBCWA, British Broadcasting Corporation Ongoing Representing the BBC and BBCWA in a copyright infringement and theft of ideas action brought by an individual alleging that the TV series “The Great American Road Trip” infringes his format for a reality television program allegedly submitted to the Travel Channel and retransmitted to the BBC. Motion to dismiss pending. NBC Universal Ongoing Representing NBC in a copyright action brought by plaintiffs claiming that the television program "Heroes" infringes their copyright in a documentary and manuscript about their lives as divination artists. Summary judgment granted for defendants; affirmed to the 2nd Circuit; certiorari petition pending. The Australian Broadcasting Corporation Ongoing Defending the Australian Broadcasting Corporation against claims of defamation and copyright infringement allegedly arising from television program about plaintiff's credentials as a media expert concerning counter-terrorism in Afghanistan and related Web postings. Motion to dismiss granted; appeal to 2nd Circuit dismissed. J.D. Salinger Ongoing Representing J.D. Salinger in a copyright infringement action against the author, publisher and distributor of a self-proclaimed sequel to "The Catcher in the Rye." Motion for preliminary injunction was granted and appealed to the 2nd Circuit where the matter is sub judice. Viacom, Inc. Ongoing Obtained summary judgment in favor of defendants' creator, animation studio, distributor and licensor of franchised animated cartoon character SpongeBob Squarepants and television series in copyright infringement case involving claims of stand-alone character protection and story line infringement; on appeal to 9th Circuit. Friendly Family Productions 2009 Represented Friendly Family Productions, the owner of the trademark and merchandising rights in the famed book and television series each titled “Little House On The Prairie” against a corporation operating a small museum and gift shop on what is alleged to be the historic site of a venue described in the book and television series, which had launched a Web site from which it was selling branded merchandise. The case was settled on the eve of trial. British Broadcasting Corporation Worldwide 2008 Represented BBCWorldwide in an action alleging, inter alia, breach of contract involving the right to distribute music from the BBC pop and rock archives. BBCW prevailed after trial. 2008 Defended author Mary Higgins Clark and publisher Simon & Schuster, among others, in a copyright infringement action arising out of Ms. Clark's novel "The Second Time Around." Summary judgment for defendants. Lions Gate Entertainment 2008 Represented Lions Gate and other defendants in an action instituted by Jonesfilm for alleged infringement of its claimed trademark in the title of the motion picture "9 1/2 Weeks"; involved prequel rights; tried before IFTA after two 2nd Circuit appeals; confirmed and affirmed on appeal to 9th Circuit. Echostar Satellite Corporation Grp. 2007 Declaratory judgment actions raising issue of whether use of competitor's trademark as a search term is a trademark use and/or trademark infringement; defeated motion to dismiss; thereafter settled. David M. Childs and Skidmore, Owings & Merrill 2006 Represented architectural firm that designed original Freedom Tower in action involving alleged copyright infringement of architectural design of Yale architecture student. Settled after motion to dismiss granted in part. NBC Universal 2006 Represented NBC in a copyright infringement action brought by plaintiff freelance photographer who filmed the Taliban burning incident in Afghanistan; NBC asserted fair use defense. Successfully settled, during pendency of motion for judgment on the pleadings. Atari Incorporated 2005 Defended Atari on T.R.O. and preliminary injunction regarding termination of copyright and trademark licenses for video games. Liberation Publications 2004 Obtained dismissal on appeal of libel and right of publicity claims arising out of use of plaintiff's photograph on cover of novel allegedly falsely implying he was homosexual. Atari Incorporated 2003 Represented Atari in an action for breach of distributorship agreement and fraud regarding license to manufacture and distribute video games; judgment for plaintiff. Estate of J.R.R. Tolkien 2003 Represented the Estate of J.R.R. Tolkien as plaintiff in a copyright infringement action against Inkling Books based on chronology of "Lord of the Rings." Preliminary injunction granted; settled thereafter. Simon & Schuster 2003 Represented Simon & Schuster, Inc., the author and other defendants in two actions, one alleging copyright infringement by use of printouts allegedly generated from plaintiff's computer software programs in the book "The Bible Code," and the second for breach of an alleged agreement to credit the programmer in the book. Won summary judgment for defendants in copyright action and partial summary judgment on contract action and later prevailed on remaining claims in contract action. British Broadcasting Corporation (BBC) 2001 Defended the BBC against copyright infringement, defamation, and Lanham Act moral rights claims arising from BBC documentary regarding gun running in Florida for the IRA. Song used by New York Irish radio station as theme song plays in documentary without synch license. Defamation claim dismissed; thereafter settled. Paramount Pictures 2001 Defense of trademark action brought by heirs of science fiction writer who authored a story called "First Contact," which plaintiffs claimed was infringed by Paramount's release of "Star Trek: First Contact." Summary judgment for defendants, affirmed on appeal. Topps, Inc. 2001 Represented Topps, Inc. as co-plaintiff, together with other trading card companies, in a declaratory judgment action against Upper Deck Trading Cards involving Upper Deck's claim of trade dress exclusivity with respect to the use of an aperture to display memorabilia in trading cards. Case settled. Boosey & Hawkes Music Publishers Ltd. 2000 Represented music publishers in a case alleging foreign copyright and Lanham Act moral rights violations arising from the videocassette release of "Fantasia," which incorporated the copyrighted musical work "The Rite of Spring" by Igor Stravinsky. Summary judgment for plaintiff; affirmed in part, received in part on appeal. Hill Holliday, Connors Cosmopulos Inc., Spalding, Inc. 2000 Represented Hill Holliday, Connors Cosmopulos and Spalding in an action for unfair competition instituted by EMI Music Publishing in connection with a television commercial for Spalding golf clubs which used music that allegedly sounded like a musical composition for which EMI owned the copyright. The 2nd Circuit reversed the grant of summary judgment to defendants, but held that in a case of first impression, a song could not function as a trademark. Blockbuster Videos, Inc. 1999 Successful constitutional challenge to zoning ordinances on grounds that they were pre-empted by a section of the Lanham Act prohibiting state statutes or regulations that cause the alteration of trademarks used in interstate commerce. Affirmed on appeal. Music Sales Corp. 1999 Represented Music Sales Corporation as plaintiff in a declaratory judgment action against the heirs of Billy Strayhorn and the former executor of his estate regarding the validity of certain purported terminations of transfers of renewal copyrights in some of Strayhorn's musical compositions. Case settled. NY Magazine 1998 Represented New York Magazine in an action against the Metropolitan Transit Authority for civil rights violations because of the MTA's decision to remove a series of advertisements from the outside of New York City buses on the complaint of then-Mayor Rudy Giuliani that they violated his right of publicity. Judgement for plaintiff, affirmed on appeal. Parfums De Coeur, Ltd. 1997 Represented Parfums in an action for false advertising based on competitor's comparative advertisements for alternative designer fragrances and defended antitrust counter-claim. Simon & Schuster, Inc. 1997 Represented Simon & Schuster and Dr. William Bennett in a suit against Dove Audio for trademark infringement and unfair competition, in connection with the trademark of "The Book of Virtues." Prevailed after trial. James Lipton 1995 False advertising and copyright infringement based on taking Lipton's compilation of animal terms of venery for use on merchandise. Summary judgment for plaintiff; affirmed in relevant part on appeal. Additional Qualifications Professional and Community Activities
- The Copyright Society of the United States
- Planning Committee, Second Circuit Judicial Conference, 2007-present
- Member; Former Trustee; The Federal Courts Committee – The Federal Bar Council
- Former Member, Copyright Committee; Former Member, Communications Committee; Former Member, State Courts of Superior Jurisdiction Committee – Association of the Bar of the City of New York
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Professional Recognition
- First annual recipient, American Inns of Court Professionalism Award for the Second Circuit, 2002
- Named as one of "America’s Leading Lawyers" in Media and Entertainment (New York) by Chambers USA, 2004-present
- Named as one of the “Best Lawyers in America” in Commercial Litigation, in Intellectual Property Law, and in Media Law by Woodward/White, 2007-present; named in Bet-the-Company Litigation and in Entertainment Law, 2010
- Selected to "New York Super Lawyers," Law & Politics, 2006-present
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Education J.D., Columbia University School of Law, 1972 B.A., Barnard College, 1969 * Denotes experience completed at a prior firm | |