As we head toward a new year, we are delighted to share with you some of the exciting news, events, awards, wins and client successes we and our clients experienced during 2016.
We begin with our brand-new website!
www.holmesweinberg.com. Designed in collaboration with our client Pop2Life (www.pop2life.com), our new website displays our new branding. With clients ranging from under-25 entrepreneurs and creative professionals in entertainment, social media and digital tech to global corporations, our updated website and branding reflect our desire and ability to successfully represent and advise our wide range of clients. If you’re not familiar with our full set of services, please visit https://holmesweinberg.com/what-we-do/.
Michael Leventhal joined the firm as a partner
Michael is a veteran technology, business and IP transactional lawyer who most recently served as chief legal officer and Vice President at Magic Leap, Inc., the well-known augmented/mixed reality venture. He has represented dozens of startups as well as Fortune 500 companies, and has been on the forefront of the legal and business aspects of nearly every major technological innovation in digital media. Michael is outside general counsel for several tech companies, assisting them with corporate and IP/tech agreements and issues and is very involved in augmented reality tech law.
Recognition for the Firm and Its Lawyers
For the fifth year in a row, our Firm has been named to Best Law Firms in America by US News and World Report, and Partner Steve Weinberg was named to the list of Best Lawyers in America for the eleventh consecutive year, an honor which is awarded to only 4% of all practicing lawyers in the US. Partners Henry Holmes, Hillary Bibicoff and Steve Weinberg were once again named as Southern California Super Lawyers Hillary and Henry (both for entertainment law) for the 10th year and Steve for the 5th year (intellectual property and IP litigation). Henry and Steve also were recognized by Who’s Who Legal, Henry for Sports and Entertainment and Steve for Telecommunications Media & Technology and Information Technology. Henry and Hillary received the “highest possible rating” by Martindale-Hubbell “AV Premier,” and Steve again was named as one of the top trademark law litigators in California and nationally by World Trademark Review (the WTR 1000).
Client Successes // Transactions
You all know of client George Foreman’s incredible success with the “George Foreman Grill,” a deal put together by HW partner Henry Holmes. During this last year, Henry negotiated George’s deal with the highly successful NBC show “Better Late Than Never” and for a feature film about George’s life, and Henry and Steve negotiated a licensing deal for George involving walking shoes (and if you haven’t tried George’s online food company, the George Foreman Butcher Shop, you’re missing out: www.gfbutchershop.com)
After successfully representing writer/director Alfonso Cuaron in the highly awarded (including 7 Academy Awards® and BAFTA®) and acclaimed film Gravity, Henry and the team at HW is representing Mr. Cuaron in a new feature film entitled “Roma,” which he is producing, writing, directing and editing. We also are representing his son Jonas Cuaron in connection with his writing a new “Zorro” film and in other projects.
HW’s Hillary Bibicoff represented Rob Long as showrunner for “Kevin Can Wait,” starring Kevin James, which has received a full season order, and represented Pam Fryman in her deals for directing episodes of “Odd Couple” and “Man With A Plan.” Hillary also represented Jen McGowan who is in pre-production to direct her next feature, “Rust Creek,” which is scheduled to commence principal photography at the end of this month, as well as the showrunner of the hit series “The Blacklist,” John Eisendrath, in connection with the upcoming “The Blacklist” spinoff (both Mr. Eisendrath and HW client Dan Knauf continue to serve as executive producers on “The Blacklist”). Hillary also served as production counsel for the Super Bowl Pre-Game and Halftime Shows, as well as the NFL Kickoff Celebration for the third year in a row, and also provided production legal services in connection with the Democratic National Convention, and HW client and nationally syndicated “Jump Start” cartoonist Robb Armstrong’s book, “Fearless: A Cartoonist¹s Guide to Life” was recently published.
HW client and Snapstar Tristan deBurgh aka Tristan Tales, represented by Mike Salvatore, did Snapchat takeovers and promotions for Coca Cola, Just Dance 2017 (video game), Beyond (TV series), Dead of Summer (TV series) and Alice Through the Looking Glass (film).
HW also served again as production counsel for The Teen Choice Awards on FOX and represented a number of its producer clients in film, television and social media channel options.
Outside of the entertainment and social media worlds, Steve Weinberg, who serves as outside general counsel for LanguageLine Solutions, the world¹s largest language services company, assisted with the sale of LanguageLine Solutions to Teleperfomance, a worldwide leader in outsourced multichannel customer experience (LanguageLine Solutions continues as an operating company within the Teleperformance group of companies). Steve also represented the owner of the LA based Depot Fitness health and fitness group in deals relating to the expansion of the group, a major consumer product company in negotiations regarding the filming of a documentary about the company and its well-known founder, as well as a number of licensing deals for clients in the digital media, mobile app and consumer brand spaces.
Client Successes // Litigation
2016 was an active year for litigation. In addition to the many Trademark Office opposition and cancellation proceedings and civil lawsuits still being litigated by HW for its clients, and the literally dozens of trademark and copyright enforcements we handled and are handling for our clients, we won the following important cases (we didn’t lose any!):
The Ninth Circuit Court of Appeals affirmed the summary judgment decision we obtained on behalf of our client E. & J. Gallo Winery that the trademark EL GALLO for an energy drink infringes the Winery’s exclusive rights in the GALLO trademark.
The Trademark Trial and Appeal Board of the US Patent and Trademark Office ruled that KARAOKE’S GOT TALENT for talent contests could not be federally registered as a service mark in light of our client FremantleMedia’s prior ownership of the AMERICA’S GOT TALENT mark. In ruling in our client’s favor following an accelerated trial, the Board held that AMERICA’S GOT TALENT is a “famous” mark, a particularly great part of the overall result. The Board rarely holds marks to be “famous” — a finding that extends the broadest possible protection to a trademark or service mark.
HW obtained summary judgment for client KidTribe against the attempt by two former employees to register HOOP IT UP as a service mark for providing educational athletic services to school kids. KidTribe has been providing athletic/empowerment programs for school kids nationally, including at the White House. Unfortunately, the owner had not entered into written agreements with two of its instructors, who decided to abruptly leave the company to start a competitive business, using and seeking to register KidTribe’s popular trademark HOOP IT UP. The Trademark Trial and Appeal Board agreed with our client that the former employees could not succeed with their plan.
Last but not least, with co-counsel Meylan Davitt, HW obtained summary judgment in our client McKeon Products’ favor in the Northern District of California, in which the court held that plaintiff Moldex-Metric’s green colored earplug used in industrial settings was not a protectable trademark under the Supreme Court¹s Qualitex Co. v. Jacobson Products Co. and the Ninth Circuit’s Disc Golf standards for determining functionality. Moldex touted that its neon green colored earplugs were the best for compliance checks in industrial settings and dominated that market segment. The court held that under these facts, the color green was functional as a matter of law and therefore not protectable. Moldex has filed an appeal of the decision with the Ninth Circuit, which has been fully briefed.
Thanks for letting us share our news with you, and thanks to our wonderful clients for trusting in us!