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Intellectual Property

Breach of contract regarding statutory royalties for national cable service provider

Representing client in prosecution of breach of contract claim to recover, statutory copyright royalty fees paid in relation to carriage of broadcast television station. Obtained summary judgment and now proceeding in bankruptcy court. (Ongoing)

Domain name services

Represents and advises a range of clients on domain name issues including representation in UDRP proceedings. (Ongoing)

Estate Planning for multiple ceators of intellectual property

Estate planning for creator of intellectual property, including authors, playwrights, composers, artists, photographers and similar creative talent. (Ongoing)

Intellectual property claims for McGraw-Hill (Educational Publishing Division)

Represents McGraw-Hill in a variety of intellectual property claims arising out of its publications of educational material for children. (Ongoing)

Intellectual property counsel for Artnet Worldwide Corp.

Provide intellectual property and website advice to this online auction house, magazine, and network of international art galleries. (Ongoing)

Intellectual property counsel for TheStreet.com

Advice to financial website regarding domain names, copyright, trademark, and related issues. (Ongoing)

Investment-related IP Due Diligence for Revalesio, Corp.

Coordinate IP due diligence responses to Investor's IP due diligence team for three private investment rounds and coordinate strategic IP due diligence investigations. (Ongoing)

IP counseling for Laird Norton Company LLC

Provide IP counseling and management of the trademark portfolio for a wealth management company. (Ongoing)

IP Due Diligence for Sloan Capital Companies, LLC

Conducting two rounds of IP due diligence for investment into medical device startup. (Ongoing)

Narkiewicz-Laine v. Doyle, et al.

Representing artist in action alleging violations of Visual Arts Rights Act, conversion and wrongful eviction. (Ongoing)

Routt v. Amazon

Representing Amazon in copyright infringement action concerning material posted on third-party associate websites. Obtained dismissal with prejudice of all claims. 2013 WL 695922 (W.D. Wash. 2013). Plaintiff’s appeal to the 9th Circuit Court of Appeals is pending. (2014)

Technology development agreements and services for national software developer

Assistance with a national software developer in procuring technologies and services for anti-piracy program and advised on associated intellectual property rights issues. (Ongoing)

The North Face Apparel Corp. and PRL USA, Inc. v. Fujian Sharing Import and Export

Represented plaintiffs in first ever standing Order to shut down rogue websites and seize counterfeiters’ profits from the sale of counterfeit goods. Also obtained an order establishing that a top level-domain registry (such as Public Interest Registry) could be found in contempt of a court order if it has notice of a counterfeiting website and does not take action to disable that website. Since the initial Order in 2010, which awarded plaintiffs $78 million in damages, plaintiffs have continued to bring contempt style motions to curtail counterfeiting on the Internet and have shut down over 10,000 websites. The success of the action has greatly decreased the number of new websites created by defendants. Additionally, plaintiffs have recovered from defendants in excess of $2 million. (S.D.N.Y. Ongoing)

Toysmith v. Poof-Slinky

Representing 4M and Toysmith in copyright infringement and tortious interference suit against competitor distributor and retailer concerning children’s science kits. (W.D. Wash. Ongoing)

Zhongyi v. Microsoft

Representing Microsoft in copyright infringement action involving Chinese fonts. Obtained transfer to W.D. of Washington and then dismissal with prejudice of all claims. 2013 WL 6979555 (W.D. Wash.,2013). Plaintiff’s appeal to the 9th Circuit Court of Appeals is pending. (2014)

CarFreshner v. Getty Images

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)

Erick Van Egeraat v. NBBJ LLC et al.

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)

Levi Strauss & Co. v. Ding Shidun*

Obtained an injunction and asset restraint order against rogue websites selling counterfeit LEVI brand apparel. (2012)

Morse & Castorina v. Spike Television, et al.

Represented Spike TV and obtained dismissal of copyright infringement action arising out of the popular reality television show "Pros vs. Joes." (E.D.N.Y. 2011). Previously obtained dismissal of similar infringement claims brought against "Pros v. Joes" in Pino v. Spike. (D.N.J. 2009) WL 1118429

Wrangler Apparel Corp. v. Conway Stores*

Shut down an international counterfeiting ring that had been operating for at least five years and selling hundreds of thousands of counterfeit jeans.  Obtained a permanent injunction, seized tens of thousands of counterfeit jeans and obtained a multiple-million dollar settlement. (2011)

AAA arbitration involving dispute concerning license to contact lens patents*

As lead counsel, prevailed on all issues, including grant of attorney’s fees and costs on behalf of client. (A.A.A. 2010)

AAA arbitration involving MMS software*

Obtained early settlement on favorable terms after successful mediation in case involving licensing dispute relating to MMS infrastructure software. (A.A.A. 2010)

Anderson v. Pearson plc et al.

Defended the U.K., Canadian, and U.S. publishers of Penguin Books, and their corporate parent, against a copyright infringement claim in Alaska arising from use of photo on the cover of a book that had not been published or sold in the U.S. The case settled satisfactorily after extensive jurisdictional discovery and filing and arguing a motion to dismiss for lack of personal jurisdiction. (D. Alaska 2010)

Counseling for South Asian Parent, C.I.C.*

Advised the South Asian Parent, C.I.C. (an online parenting magazine) regarding trademark protection and incorporation. (2010)

Ed Darack v. Random House

Copyright infringement action; dispute over use of photograph on cover of book. (S.D.N.Y. 2010)

Mars Incorporated v. The Hershey Company

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)

Negotiation of intellectual property development agreement for consortium of large West Coast strawberry growers*

Represented Driscoll Strawberries, Inc. in technology development undertaking with Carnegie Mellon University. (2010)

Royalties dispute for Lex Records

Represented record company in dispute over calculation of royalties. (2010)

Scott v. Hachette Publishing

Represented Little, Brown and author Stephenie Meyer. Obtained pre-discovery dismissal of copyright claims arising out of author's last book in her famed "Twilight" series. Attorney fees awarded to defendants. (C.D. Cal. 2010)

Vampire Vineyards v. Martha Stewart, et al.

Defended Martha Stewart, Martha Stewart Living Omnimedia, Inc., and national retailers in a trademark infringement action brought in the Central District of California by a company that sells wine under the trademark Vampire Vineyards challenging the use of 'Vampire Vineyards' as the name of a fictitious winery on Halloween novelty coasters and wine bottle labels. Action successfully settled. (C.D. Cal. 2010)

Attachmate Corporation v. Sentry Insurance

Defense of claims for copyright infringement and breach of license agreement arising out of alleged copying of software. Obtained dismissal of breach of license claim as preempted by Copyright Act; case successfully settled shortly thereafter. 90 U.S.P.Q.2d 1648 (W.D. Wash. 2009)

Counseling for ImagineEasy, Solutions LLC*

Advised ImagineEasy Solutions, LLC (the makers of online bibliography tool, EasyBib) regarding intellectual property issues. (2009)

Sale of musical theater portfolio and partnership interests for The Rodgers and Hammerstein Organization and entities owned by the Hammerstein family

Negotiated the sale of the extensive Rodgers and Hammerstein musical theater portfolio and the Rodgers and Hammerstein Organization to the Imagem Music Group. (2009) Read more

Health care device sales and distribution

We represented a medical device manufacturer in the licensing and distribution of products to distributors and purchasers. (2008)

SwordPen.com v. Henry Holt and Company

Successfully defended publisher and co-author of novel against claims of fraudulent inducement, conversion and tortious interference by plaintiff who alleged that novel plagiarized plaintiff's manuscript. Case was dismissed. 2010 WL 1932322 (S.D.N.Y. 2008)

Animale Group Inc. v. Sunny’s Perfume, Inc.*

Obtained permanent injunction and restrained over $2 million in assets from defendants’ sale of counterfeit fragrances. (2007)

Nautica & Timberland v. TC Fashions*

Obtained a permanent injunction and seized over 35,000 goods bearing counterfeits of Nautica and Timberland trademarks. (2007)

The North Face Apparel Corp. and PRL USA v. TC Fashions*

Obtained a permanent injunction and seized tens of thousands of goods  against a counterfeiter who, according to documents, was generating $8 million revenue per year from manufacturing, importing and selling counterfeit, inter alia, The North Face and Polo Ralph Lauren apparel. Plaintiffs received over $2 million from defendants’ sales profits. (2007)

Wong v. Simon & Schuster

Defeated injunction against book publisher Simon & Schuster in copyright infringement action. (E.D. Va. 2007)

Research ownership agreement for nonprofit educational organization

Negotiated ownership of intellectual property with university conducting research funded by the client, a nonprofit organization. (2005)

The North Face Apparel Corp. v. Michael Chu*

Awarded $7 million dollar judgment and broke up a multi-year multiple million dollar counterfeiting ring that manufactured, imported and sold counterfeit The North Face jackets. (2005)

The North Face Apparel Corp. v. Saleh*

Seized over 7,000 counterfeit goods from a U.S. warehouse.  Recovered $500,000 in profits and identified ultimate source of counterfeit goods. (2005)

Cartier International v. Liu*

Multi-district litigation for multiple watch brands, seizing over one million watches and over $1 million in cash, breaking four global organizations. Obtained a $4.5 million contempt judgment and additional judgment of $594 million against a ring of New York Chinatown counterfeiters and money launderers—this is the highest U.S. judgment in history for this kind of matter. (2003)

Starter Corp. v. Converse*

Represented Converse in a jury trial where Starter’s use of an S and star design mark on footwear was found to infringe Converse’s five-pointed star trademark. The jury also found for Converse on issues of breach of contract and equitable estoppel based on a prior agreement between the parties. (1997) Affirmed on appeal. (1999)

Liz Claiborne v. Mademoiselle*

Won two-year fight against factory shipping product made during time of authority but shipped without authority. (1998)

Reebok v. Marnatech*

Obtained precedent-setting decision allowing for the ex parte restraint of assets under the Lanham Act.  This decision also allowed extra-territorial jurisdiction over the defendants who were selling counterfeit sneakers into Mexico. (1995)

Fila USA Inc, Fila Sport SpA and Guess Inc v. Mira Sportswear*

Obtained the seizure order that forever shut 1165 Broadway, known as an epicenter for counterfeit wholesalers. According to media reports at the time and testimony before a Senate judiciary committee in 1995, the Federal Bureau of Investigation had compiled strong evidence that the terrorists who bombed the World Trade Center in 1993 had financed their activities with the sales from 1165 Broadway. Prior to the raid and ensuing action in 1995, trademark owners and the police alike were doubtful that anything would stop the notorious counterfeiting operations in this building. (1994)

Polymer Technology Corp. v. Mimran *

Represented subsidiary of Bausch & Lomb in a decision to vacate and remand the lower court’s denial of a preliminary injunction against defendants who purchased packaged contact solution kits from doctors’ offices and broke them down into individual units, selling them using counterfeit packaging. (1992)

Hospital technology transaction for major hospital

Advised major hospital facility in negotiations for purchase of $4 million patient management, billing and accounting hardware and software system; advice and assistance with negotiation of major human resources software contract.

IP and entertainment counsel for Bodog

Manages global trademark portfolio for the Bodog online gaming brand and organization. Previously handled legal work related to Bodog television programs, record label, creation of mixed martial arts sports league, and other creative ventures.

IP transactions – patent license and joint product development

Advised on intellectual property aspects and assisted in negotiation of a long-term licensing partnership between an early-stage client and a major multinational company, in which the two multinationals will develop functional foods and nutraceuticals for treatment and prevention of adverse human health conditions in developing countries. Addressed and resolved IP diligence issues raised by counsel for licensee. Deal terms included $5 million in milestone payments, ongoing patent royalties and other mutual benefits.

IP transactions – patent portfolio acquisition from university licensor

Conducted negotiations and concluded transaction in connection with an initial public offering of shares in a client company, in which patent portfolio had been licensed to client by a major U.S. university. Despite traditional resistance by university to assignment of patent rights, successfully negotiated mutually beneficial terms with appropriate assurances and fallbacks to permit licensor university to break new ground in institutional culture regarding handling of IP rights. Conversion of IP rights from license to assignment added value in IPO.

Leiber, et al. v. Grokster, Ltd.

Represented a class of songwriters and music publishers in Grokster copyright infringement action against peer-to-peer file-sharing services. Plaintiffs obtained unanimous decision from the U.S. Supreme Court ruling that defendants could be held liable for inducing copyright infringement. (C.D. Cal., 9th Cir., U.S.)

Software licensure for telemedicine network

Represented developer of state-of-the-art telemedicine network in preparation of software licensing, hardware sales agreements and in negotiation and documentation of third-party software licensing and distribution agreements.
* Denotes experience completed at a prior firm