Litigation

Litigation can be costly, unpredictable and time-consuming, so we try to resolve disputes whenever possible. In fact, we successfully settle 90+ percent of our cases out of court. But if a case advances, our impressive track record shows we know how to win. We have more than 30 years’ experience handling disputes involving trademarks, trade secrets, trade dress, copyrights, unfair competition, domain names, entertainment, false advertising, publishing, personality rights, privacy, publicity, software technology and development, internet, licensing, breach of contract and a range of other business/commercial disputes. Some representative cases handled by our litigators include:

// Won two landmark trademark cases, one an opposition on appeal to the CAFC involving the PLAY-DOH mark (and re-establishing the famous marks doctrine in the US), and the other rescuing the SOFTSOAP mark from the pubic domain // Obtained sweeping preliminary injunction preventing use of our clients’ trade secrets by former employees who had joined a competitor, and then won motions for contempt of the injunction and to dismiss all 12 counterclaims // Successful enforcement of intellectual property rights, including litigation and Trademark Office administrative proceedings for celebrities and other professional creative talent as well as major brand owners, including FremantleMedia (producers of American Idol® and America’s Got Talent®), E. & J. Gallo Winery, and many other brands, and overseeing client IP enforcement programs in the US and worldwide // Obtained judgment in federal court against use of EL GALLO for an energy drink on behalf of the owner of the GALLO trademark // Won many domain name infringement arbitrations for celebrities (such as Mick Jagger, Sheryl Crow, Pamela Anderson, Hulk Hogan, and Michelle Phillips), and for major companies (such as Citigroup, E. & J. Gallo Winery, Anheuser-Busch, and Kraft Foods) // In a breach of agency agreement by agency, successfully represented well-known fashion photographer plaintiff; settled by mediation // Representing Brown-Forman in a trade dress and trademark infringement action against a larger wines & spirits competitor. When, after a bench trial, the judge indicated her judgment would include a national recall of the infringing product, a finding of willful infringement and enhanced damages, the case promptly settled on very favorable terms for our client, including the defendant’s changing its trade dress // Defended against and defeated two motions for preliminary injunction and motion for summary judgment in a federal trade dress case involving alcoholic beverages // Co-represented a children’s educational content company in trademark infringement litigation against a major toy company that resulted in desired settlement through mediation // Won a preliminary injunction and a partial summary judgment against the former distributors of a dietary supplement company involving claims of copyright infringement, trade secret misappropriation, and intentional interference with contractual relations. After additional litigation and mediation, the case settled favorably // Successfully represented established band in a trademark infringement action against new band with similar name and its major music label, resulting in a settlement in which new band changed its name // After defeating a motion for preliminary injunction, negotiated a favorable settlement in a federal copyright lawsuit brought by software developers against a software development company // In a false advertising and trademark infringement case represented Endless Pools against a competitor in federal court. The case was favorably settled following mediation // Representing a jewelry designer in a copyright case, won summary judgment against creator of bejeweled baby shoes

// Successfully represented a celebrity photographer in a breach of contract dispute with his former syndication agency // Successfully represented partner in a television production company in a breach of contract and seeking damages and judicial dissolution of the partnership; the matter was resolved through a favorable out of court settlement that included dissolution of the partnership // Represented an internet company in a lawsuit it filed against a judgment creditor and successfully recovered several million dollars that had been fraudulently transferred out of the country through a series of complex transactions // In an action brought by client manufacturing company against former officers of the company alleging claims for breach of fiduciary duty and fraud based on the officers’ systematic self-dealing and looting of the company, the dispute was resolved through a favorable out of court settlement
Dispute Resolution

// Substantial experience in mediations and arbitrations // Hillary Bibicoff is an IFTA arbitrator // Steven Weinberg has mediated trademark disputes as a member of the INTA neutrals panel, has been a UDRP arbitrator and has both mediated business disputes and represented parties in mediations and arbitrations