When disputes cannot be resolved through
negotiation, our lawyers are able advocates before administrative
agencies and in the courtroom. These cases frequently involve
novel legal issues presented by the intersection of new technology
and intellectual property law, and cordination with experts in fields
such as consumer surveys, Internet and digital technologies,
business marketing, and with economists and linguists.
- Developing, in conjunction with another law firm, the
strategy that successfully defended a client's delivery
of Internet "pop-up" ads as part of its innovative contextual
marketing program. Since novel issues necessitate novel
approaches, part of the litigation plan consisted of identifying
and working with a Harvard Business School professor to
develop expert testimony on how "pop-up" ads benefit consumers
and enhance competition in the marketplace. We also retained
a nationally-recognized survey expert to identify flaws
in plaintiff's survey evidence. When the U.S. District
Court for the Eastern District of Virginia ruled in favor
of our client, the judge's opinion adopted much of the
reasoning of our brief.
Filing numerous amicus briefs for national library and educational associations in the U.S. Supreme
Court and courts of appeal cases. Briefs were filed in the following
cases: The New York
Times Company, Inc. v. Tasini , 533 U.S. 483 (2001) ( brief
in support of authors when their articles are republished in electronic databases without prior approval or compensation); National Geographic Society v. Greenberg , 534 U.S. 951 (2001) , Faulkner v. National Geographic Society , 409 F.3d 26 (2d Cir. 2005), Greenberg v. National Geographic Society , 244 F.3d 1267 (11th Cir. 2001), and Greenberg v. National Geographic, No. 05-16964-JJ (11 th Cir. filed June 6, 2006) ( Supreme Court 2001 brief , Supreme Court 2005 brief , Second Circuit 2004 brief and Eleventh Circuit 2006 brief , in support of National Geographic Society's right to create a CD-Rom version of 100 years of magazine publications in the face of a copyright challenge by freelance photographers); and Eldred v. Ashcroft , 537 U.S. 186 (2003) ( brief supporting the challenge to the constitutionality of the 1998 Copyright Term Extension Act). The firm also filed an amicus brief on behalf of two noted economists concerning peer-to-peer file sharing in the landmark case of Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd . , 125 S. Ct. 2764 (2005).
- Representing a software company defending its innovative
DVD backup and restoration software and the public's fair
use rights. The company fought in the courts to establish
the principle that it may lawfully distribute its software
to make digital backup copies for personal use by consumers.
The firm submitted comments and prepared public testimony
in the Copyright Office's triennial DMCA rulemaking proceeding
considering exemptions to the Copyright Act's Section
1201 prohibition against circumvention of technological
measures that control access to copyright works.
- As part of a team of litigators, representing a mobile
telephone company in a registration proceeding before
the U.S. Patent and Trademark Office and in a civil trademark
action in Delaware federal court against claims that its
trademark is generic and therefore not entitled to protection.
- Handling, on behalf of television producers and distributors, complex royalty claim proceedings before the Library of Congress
(Copyright Arbitration Royalty Panel) and the Copyright Royalty Board, in which millions of dollars
in cable and satellite royalties are at stake each year.
- Instituting and settling a lawsuit against an art and
antiques distributor selling sculptures from a Southeast
Asian foundry that were substantially similar to and dramatically
less expensive than the life-sized works of a noted sculptor.
- Litigating and ultimately obtaining a settlement on
behalf of a doctor whose name was used without his permission
in advertising by a dating service franchise.
- Supervising litigation in Italy over the claim of an
heir to legendary filmmaker Fred Zinnemann (director of
High Noon, The Seventh Cross, From Here to Eternity,
Man for All Seasons, Oklahoma) that his father's
films were materially altered in violation of the author's
moral rights and working with Sydney Pollack and the heirs
of John Huston on similar issues in Denmark and France. The litigation has resulted in an injunction and an award of 100,000 Euros in favor of the director's heir.
- Representing a U.S. importer of a top brand of Greek
ouzo over trade dress infringement. Paddington Corp.
v. Attiki Importers & Distributors, Inc., 996 F.
2d 577 (2d Cir. 1993).
- Representing a satellite resale carrier in landmark
litigation that established the cable industry's right
to deliver superstation programming to millions of cable
subscribers. Eastern Microwave, Inc. v. Doubleday
Sports, Inc., 691 F. 2d 125 (2d Cir. 1982).
- Protecting the flavored rum brand of a major alcoholic
beverage company against infringement by an ice cream
manufacturer.
- Filing a declaratory judgment and injunctive action to ensure that a client’s new business
(Advanced LipoDissolve Centers) can use the descriptive word Lipodissolve claimed as a trademark
by a third party defendant (prevailed against motion to quash service or dismiss).
- Defending a client’s trademark application for IVY LEAGRO (www.ivyleagro.com) in an opposition proceeding before
the Trademark Trial and Appeal Board filed by the Council of Presidents of the Ivy League. (brief)
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