Intellectual Property Litigation - Copyright & Trademark

Depth of experience and renowned trial skills: Paul, Weiss has what it takes to command the full range of complex, high-stakes copyright and trademark issues. Our practice is far-reaching and diverse, and we have served clients ranging from entrepreneurs to major corporations, from playwrights to media giants, and from individual songwriters to the country’s largest performing rights organization.

Jump to:  Why Paul, Weiss? | Our Practice | Clients | Industries | Recognitions | Representative Engagements

Why Paul, Weiss?

We have long been recognized as one of the world’s leading copyright and trademark litigation practices. We have litigated landmark copyright and trademark cases that have played a major role in shaping IP law. As technology transformed the distribution and use of intellectual property, we were on the front lines protecting copyright and trademark owners, winning significant victories, achieving substantial settlements and securing critical value for their content in the Internet age.

Our litigators combine a tenacious approach with deep knowledge of copyright and trademark issues, enabling us to protect the value of intellectual property rights in all media. We are widely known for our prowess in litigation, mastering both soft and hard intellectual property matters, and we are versatile, experienced practitioners who understand the interplay of business objectives, practical pressures and time. We leverage the creative vision of our Intellectual Property Transactional Practice Group to transform challenges into opportunities and to defend and protect our clients’ interests.

Our knowledge and experience extend to all areas of intellectual property law, including copyright, trademark, trade dress, false advertising, unfair competition and trade secrets. We literally wrote the book on “Settling Copyright and Trademark Disputes” in the leading treatise on the law of settlement agreements, Settlement Agreements in Commercial Disputes: Negotiating, Drafting and Enforcement, published by Aspen Law and Business. In addition, our lawyers regularly report on significant developments in the field for the National Law Journal, New York Law Journal and other leading publications and teach courses focused on all areas of substantive IP law and the skills necessary to be a successful IP litigator.
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Our Practice

Copyright

Our litigators have substantial experience in a wide variety of copyright cases, including copyright royalty rate-setting proceedings, copyright class actions and copyright cases involving new media, representing clients across a broad diversity of industries, including film, music, television, publishing, fine art and new media.

Paul, Weiss has built a distinguished reputation in the copyright field, starting with our representation of Cole Porter more than 60 years ago in the case (Arnstein v. Porter) that established the standards of proof for copyright infringement. Since then, we have argued in the Supreme Court in Campbell v. Acuff-Rose, the seminal case in which the Court first addressed the treatment of parody under copyright law and clarified the scope of fair use.  More recently we represented songwriters and music publisher plaintiffs in the Napster and Grokster cases that redefined the law of secondary liability and represented the same plaintiffs in a class action against Bertelsmann AG, securing the largest copyright settlement at the time. We also represented songwriters, music publishers and performing rights organizations as amici curiae in support of the government’s successful position in Eldred v. Ashcroft to uphold Congress’s extension of the maximum term on copyrights. We have decades of experience representing the National Music Publishers’ Association and The American Society of Composers, Authors and Publishers in royalty rate-setting proceedings across every segment of media. 

Trademarks, Trade Dress and Unfair Competition

Clients have relied on Paul, Weiss intellectual property lawyers to protect their trademarks for many years.

We routinely represent major brands such as Calvin Klein, HBO, Liz Claiborne, Polo Ralph Lauren and Weight Watchers International in trademark and license disputes. We have extensive experience handling trade dress infringement claims, both as stand-alone matters and as companion claims to trademark and copyright infringement cases, and we have represented major fashion companies and consumer product companies in various trade dress claims involving, among other things, articles of clothing, fabrics and bottle shapes.

False Advertising

Paul, Weiss has been involved in some of the most significant false advertising cases of the past 20 years, having litigated and advised on a broad range of Lanham Act and related matters. We regularly counsel, represent and defend clients in actions involving the U.S. Federal Trade Commission, state attorneys general, industry competitors and consumer classes, under federal and state laws. Our experience includes representing Castrol, a major marketer of motor oil, in five advertising litigations, winning federal court injunctions against the continued broadcast of its competitors’ nationwide advertising campaigns, and securing a speedy victory on behalf of Weight Watchers International in a high profile dispute with Jenny Craig.

Trade Secrets

We regularly provide advice on trade secret protection and have successfully litigated numerous trade secret claims. Our lawyers have also successfully prosecuted and defended many actions to enforce confidentiality agreements and restrictive covenants in the merger and acquisition and employment contexts, often on an expedited basis.

Clients

Our clients have included:

Ann Taylor ASCAP Bagdasarian Productions Calvin Klein Castrol General Atlantic HBO Liz Claiborne Michael Kors MTV Networks National Football League Nielsen	National Music Publishers’ Association Paramount Payless ShoeSource Polo Ralph Lauren Sony Music Time Warner Cable Unilever Versace Viacom Warner Music Weight Watchers International

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Industries

Our diverse practice has served clients in the following industries:

Broadcast and cable television Computer software Consumer products Film

Music Retail and apparel Sports Telecommunications

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Recognitions

Paul, Weiss has repeatedly been recognized as one of the leading intellectual property firms. Some of our recent achievements have included: 

• Legal 500
  
  • Ranked nationwide and noted for "a service that is a cut above others." (2011).
• Benchmark Litigation 
  • Leading firm – "Intellectual Property." (2010).
• Chambers USA
  • Leading firm – "Intellectual Property: Trademark & Copyright." (2011)
  • Recognized practitioner – "Intellectual Property: Trademark & Copyright." (2011)
• U.S. News & World Report/Best Lawyers 
  • Leading firm – "Litigation - Intellectual Property." (2010)

• The American Society of Composers, Authors and Publishers
  We represent ASCAP in multiple licensing negotiations and rate court litigations in the radio, television and cable industries, among others.
  
  
• Ann Taylor
  We represented Ann Taylor in a trademark dispute against wedding dress retailer Kleinfeld Bridal over the rights to and use of the trademark LOFT; our lawsuit achieved an immediate and very favorable settlement for our client.
  
  
• Bagdasarian Productions
  We represent Bagdasarian Productions in a high-profile copyright action against a major motion picture studio regarding the film Alvin and the Chipmunks: The Squeakquel.
  
  
• Baidu
  We represented Baidu, a NASDAQ-listed Chinese company, in a successful suit against a New York-based domain name registrar on hot-button issues concerning the security of online businesses.
  
  
• Calvin Klein
  We represented Calvin Klein in trademark and license disputes domestically and internationally.
  
  
• Castrol
  We represented Castrol in connection with obtaining injunctions halting national advertising campaigns of Quaker State and Pennzoil on the grounds that they were false and misleading.
  
  
• DVD Format/Logo Licensing Corporation
  We represented DVD FLLC in licensing of the “DVD” logos and formats worldwide, including litigation in federal court in New York against disc replicators for breach of the DVD FLLC logo/format license relating to the manufacture and sale of non-compliant “thin” discs and defense of a petition before the U.S. Patent and Trademark Office’s Trademark Trial and Appeals Board to cancel certain trademark registrations.
  
  
• The Evercare Company
  We represented The Evercare Company in a false advertising and trade dress infringement case against 3M.
  
  
• HBO
  We represented HBO in several important trademark cases, including HBO v. Showtime (in which the U.S. Court of Appeals for the Second Circuit established limits on the use of disclaimers).
  
  
• Liz Claiborne
  We represented Liz Claiborne in the successful dismissal with prejudice of all licensing claims brought by The Levy Group against Liz Claiborne and LC Licensing.
  
  
• MTV Networks
  We represent MTV Networks in a lawsuit filed by the Trustee of the bankruptcy estate of Trans Continental Television Productions, as the joint holder of copyrights and trademarks related to MTV’s series Making the Band.
  
  
• National Music Publishers’ Association
  We represented NMPA in several litigations, including copyright infringement actions and in rate-setting proceedings for the reproduction and distribution royalties. In June 2010, the D.C. Circuit affirmed the rates and terms we achieved before the Copyright Royalty Judges in October 2008, in the first contested mechanical rate proceeding in almost three decades.
  
  
• Nora Beverages, Inc.
  We represented Nora Beverages, doing business as Naya, in its appeal of a summary judgment ruling against it before the Second Circuit in a trade dress and breach of contract case brought against The Perrier Group, over the distinctive water bottle shape for its Poland Spring water bottle, obtaining a reversal of summary judgment.
  
  
• Polo Ralph Lauren
  We represented Polo Ralph Lauren in an international arbitration related to its trademark disputes with the United States Polo Association and in enjoining the unauthorized use of the title Polo for a lifestyle magazine
  
  
• Songwriters and Music Publishers
  We secured a $130 million settlement from Bertelsmann on behalf of our clients, a class of songwriters and music publishers, after more than four years of litigation over Bertelsmann’s investment in Napster, the music file-sharing service.
  
  We represented a class of songwriters and music publishers in copyright infringement litigation against Napster and other Internet services, including MP3.com, Aimster, Audiogalaxy, Grokster, KaZaA and Morpheus.
  
  We represented a group of songwriters, music publishers and performing-rights organizations as amici curiae in the D.C. Circuit and Supreme Court in Eldred v. Ashcroft in support of Congress’ extension of the copyright term.
  
  
• Weight Watchers International
  We represented Weight Watchers International in trademark infringement actions against Nestlé and Campbell Soup over their use of Weight Watchers International’s trademarks on their packages. We also represented Weight Watchers International in a false advertising suit against Jenny Craig. Following our successful motion for a temporary restraining order, Jenny Craig agreed permanently to cease its false advertising campaign.