Marcia B. Paul

Representing defendants in a music copyright infringement action brought by the owners of all rights in the musical composition "Howling Wolf," written and performed by The Black Keys, alleging infringement by use of a song entitled "The Howler" in a television commercial for Pinnacle-owned casinos. (S.D.N.Y. Ongoing)

Represented Playtex in false advertising jury trial involving advertising superiority claims as to the odor control capabilities of the parties' respective diaper pails. Jury verdict vacated; new trial pending. (C.D. Cal. Ongoing)

Representing MTVN in breach of contract and fraud action arising from use of plaintiffs’ address and other personal indicia in an episode of the television series "Chubby Chaser." (Sup. Ct. N.Y. Co., Ongoing)

Represented artist Sarah Morris in copyright infringement action alleging certain paintings she created infringed the copyrights in allegedly original origami patterns created by plaintiffs. Case settled. (S.D.N.Y. 2013)

Defended suit brought by owners of all copyright interests in "Gold on the Ceiling," written and performed by The Black Keys, alleging copyright infringement of their music by reason of use of allegedly substantially similar music in audio background of television commercial for Pizza Hut Cheezy Bites. Case settled. (C.D. Cal. 2012)

Defended Getty Images in a trade dress infringement action alleging photographic images in the company's database depicting plaintiff's tree-shaped car freshener products constituted infringement of its product configuration trademark. After Court granted Getty Images’ motion to dismiss, in part, successfully resolved the matter without any finding of liability. (N.D.N.Y. 2012)

Defended NBBJ, a Seattle based architectural firm, in a copyright action brought by a Dutch architect alleging that NBBJ’s architectural design for a multi-use residential and commercial skyscraper complex in Moscow, infringed the Dutch architect’s earlier design for that project. Plaintiff claimed copyright infringement under both United States and Russian copyright law and unfair competition under the Lanham Act. NBBJ was retained by the Russian developer, The Capital Group, and furnished with some preliminary plans, apparently prepared by the Dutch architectural firm. NBBJ made very substantial changes to the plans and the building was thereafter built in Russia. Plaintiff's predecessor–in–interest (who thereafter filed for bankruptcy in a Dutch receivership proceeding) brought an arbitration proceeding in Stockholm, Sweden against the Russian developer of the building and prevailed on a claim under Russian law for copyright infringement. The U.S. case then settled. (S.D.N.Y. 2012)

Represented Playtex in an action brought by Munchkin, a direct competitor of Playtex with respect to sippy cups, involving Munchkin's claim that Playtex's advertising superiority claim "#1 Sippy Cup" is false and misleading advertising under both the Lanham Act and California state law. The case settled. (C.D. Cal. 2012) 

Defended MTV and Viacom in a trademark infringement action brought by plaintiff, a disc jockey who claims to have done business for many years under the name and mark DJ Paulie, in connection with the character DJ Pauly D. in the program "Jersey Shore," aired on MTV Networks. Case settled. (D. Conn. 2012)

Represented Paramount Pictures in action for breach of contract concerning the rights to exploit 17 motion pictures in certain geographic markets. Summary judgment granted on appeal. (1st Dept. 2012) 

Represented a series of Indian film production and distribution companies in an action for copyright infringement involving a Hindi language motion picture entitled "Singh is Kiing" instituted by the purported owner of copyright interests in several prior works. Case settled. (S.D.N.Y. 2011)

Defended the BBC and BBC Worldwide America in a copyright infringement and theft of ideas action brought by an individual alleging that the TV series "The Great American Road Trip" infringed his format for a reality television program allegedly submitted to the Travel Channel and retransmitted to the BBC. Motion to dismiss granted. 2010 U.S. Dist. LEXIS 103153 (E.D.N.Y. 2010)

Represented NBC in a copyright action brought by plaintiffs claiming that the television program 'Heroes' infringed their copyright in a documentary and manuscript about their lives as divination artists. Summary judgment granted for defendants; affirmed by the 2nd Circuit; certiorari petition denied. 2009 WL 1532494 (2d Cir. 2010) Read more

Represented Dish Network in a false advertising action by DirecTV involving commercials for competing satellite television services; temporary restraining order against Dish denied and case thereafter settled. (S.D.N.Y. 2010)

Represented The Hershey Company in a copyright, false advertising, and trade dress infringement action by Mars against Hershey in connection with television commercial for and packaging of Hershey's BLISS chocolate. Case settled. (E.D. Va. 2010)

Represented 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 was vacated and remanded. Permanent injunction entered; case settled. 641 F. Supp. 2d 250 (S.D.N.Y., 2d Cir. 2010)

Defended Draft FCB in an action for defamation and violation of sections of the New York Civil Rights Law. Action brought by two professional models alleging that use of their photographs in an advertisement for agencies involved in counseling addicts defamed them by implying that they were former meth addicts. (S.D.N.Y. 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 website from which it was selling branded merchandise. The case was settled on the eve of trial. (C.D. Cal. 2009)

Represented defendant publishers in an action for copyright infringement arising from the licensing of a passage from a copyrighted work for inclusion in standardized tests. Case settled. (S.D.N.Y. 2009)

Defended the Australian Broadcasting Corporation against claims of defamation and copyright infringement allegedly arising from a television program about plaintiff's credentials as a media expert on counter-terrorism in Afghanistan and related Web postings. Motion to dismiss granted; appeal to 2nd Circuit dismissed. 91 U.S.P.Q.2d 1281 (S.D.N.Y. 2009)

Represented BBC Worldwide 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. (D. Me. 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." Secured summary judgment for defendants. 518 F. Supp. 2d 526 (S.D.N.Y. 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. 299 F.3d 134 (2d Cir. 2002), 65 F. App'x 361 (2d Cir. 2003) (2d Cir., 9th Cir. 2008)

Obtained summary judgment in favor of 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; 9th Circuit affirmed. 2008 WL 2050964 (N.D. Cal, May 13, 2008), 2010 WL 236758 (9th Cir. 2008)

Represented Echostar Satellite Corporation Grp. in 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. (S.D.N.Y., C.D. Cal. 2007)

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. 382 F. Supp. 2d 602 (S.D.N.Y. 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. Settled during pendency of motion for judgment on the pleadings. (S.D.N.Y. 2006)

Defended Atari on T.R.O. and preliminary injunction regarding termination of copyright and trademark licenses for video games. (N.Y. Sup. Ct. Comm. Div. 2005)

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. (2004)

Represented Atari in an action for breach of distributorship agreement and fraud regarding license to manufacture and distribute video games; judgment for plaintiff. (D. Mass. 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. (W.D. Wash. 2003)

Represented Miramax in contract dispute with international film producer over remake rights and options in certain films. (S.D.N.Y. 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. 136 F. Supp.2d 276 (S.D.N.Y. 2000) (copyright action); 2002 U.S. Dist. LEXIS 17413 (S.D.N.Y. 2002) (contract action)

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. (2d Cir. 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. (4th Cir. 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. (E.D. Pa. 2001)

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, reversed in part on appeal. (2d Cir. 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 that 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. (2d Cir. 2000)

Represented PolyGram Records in a breach of contract action brought by the Ohio Players with regard to PolyGram's right to license certain master recordings produced under an exclusive recording agreement for use in connection with television advertisements. (S.D.N.Y. 2000)

Action for trade dress infringement based upon distinctive cover for Penguin's Classics series; preliminary injunction granted. (2000)

Represented Grey Advertising and Darden Restaurants in defense of an action for violation of the right of publicity of the deceased performer Louis Prima and false advertising by reason of use of an alleged Prima sound-alike in a commercial for the Olive Garden Restaurants. (D.N.J. 2000)

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. WL 172777 (9th Cir. 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. (S.D.N.Y. 1999)

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. Judgment for plaintiff, affirmed on appeal. (2d Cir. 1998)

Represented Parfums de Coeur in an action for false advertising based on competitor's comparative advertisements for alternative designer fragrances and defended antitrust counter-claim. (S.D.N.Y. 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. (2d Cir. 1997)

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. (2d Cir. 1995)