Copyright &
Trademark Litigation
As digital technology and the online environment transform the distribution and use of intellectual property, our Copyright & Trademark group is on the front lines in protecting and enforcing our clients’ most important creative assets. Our trial-tested team represents a wide range of clients, from entrepreneurs to major corporations, from playwrights to media giants, and from individual songwriters to the country’s largest performing rights organizations.
Paul, Weiss has long been recognized as one of the world’s leading copyright and trademark litigation practices. For decades, we have litigated our clients’ most complex, high-stakes copyright and trademark issues in district and appellate courts across the nation, including cases that have played a major role in shaping IP law. Our lawyers have won countless court victories and have successfully defended and obtained temporary restraining orders and preliminary injunctions.
Copyright
Our litigators have substantial, cutting-edge experience in a spectrum of copyright cases, including royalty rate-setting proceedings, copyright class actions and digital media copyright controversies.
Paul, Weiss has built a distinguished reputation in the copyright field, particularly in the music and performing arts areas. We have argued in the Supreme Court in Campbell v. Acuff-Rose and also represented Cole Porter in the case (Arnstein v. Porter) that more than 60 years ago established the standards for proof of purchase for copyright infringement. We have decades of experience representing the National Music Publishers’ Association and The American Society of Composers, Authors and Publishers (ASCAP) in a broad array of copyright and royalty rate-setting proceedings across every segment of media.
Trademarks, Trade Dress and Unfair Competition
Clients rely on Paul, Weiss to protect their trademarked assets. We have represented some of the world’s best-known brands, including ASCAP, Calvin Klein, Harlequin Enterprises and WME IMG Holdings, LLC (now Endeavor), in their most significant trademark and licensing disputes. We have extensive experience handling trademark, trade name and trade dress infringement actions, and have successfully represented a wide range of apparel and consumer product companies in trade dress claims involving articles of clothing, fabrics and bottle shapes, among many others.
False Advertising
Paul, Weiss has been involved in some of the most significant false advertising cases of the past 20 years. We have litigated and advised on a broad range of Lanham Act and related matters, and 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.
Trade Secrets
We 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. We are adept at conducting forensic investigation.
Recognition
Benchmark Litigation: Top Ranked in Intellectual Property
- Best Lawyers: Tier 1 Litigation firm for Intellectual Property in New York, DC, and Nationally
- Legal 500 US: Recognized among the Top Firms in Intellectual Property: Copyright law
- U.S. News: Five practitioners named for Intellectual Property Litigation in the “Best Lawyers in America”
Recent Engagements
Our recent IP litigation representations have included:
Copyright
- The American Society of Composers, Authors and Publishers (ASCAP) in ongoing copyright disputes and related advice.
- Gianni Versace S.r.l., one of the most recognized fashion brands in the world, in a copyright, trademark and trade dress dispute with Fashion Nova, a “fast-fashion” e-commerce company.
Trademark & Trade Dress
- Calvin Klein in trademark and license disputes domestically and internationally.
- Lucky Brand Dungarees, Inc., Liz Claiborne, Inc. and Lucky Brand Dungarees Stores, Inc. in a trademark infringement lawsuit concerning the use of its “Lucky Brand” trademarks.
- WME IMG Holdings LLC (now Endeavor):
- in connection with two related lawsuits brought by Dov Seidman, a client of WME’s literary department. The original lawsuit, filed in federal district court in New York against WME affiliate Droga5, an advertising firm, and Chobani, a Greek yogurt manufacturer, alleged violation of Seidman’s purported rights in an advertising campaign Droga5 created and launched for Chobani; and
- in a contract dispute with a prominent university regarding the licensing and marketing of its athletic programs.
False Advertising and Idea Misappropriation
- Duracell, the household battery manufacturer, in defense of a false advertising action brought by its main competitor, Energizer, in New York federal court alleging that certain claims made in the advertising and packaging for Duracell’s premium Duracell Optimum batteries are false and misleading.
- The Huffington Post in an idea misappropriation claim brought by two individuals who claimed the site was their idea.
- Michael Kors, a global luxury apparel company, in:
- a false advertising lawsuit against Costco. Michael Kors filed the suit after Costco, which is not an authorized Michael Kors retailer, published a nationwide advertisement suggesting that Michael Kors handbags could be purchased at Costco for as low as $99; and
- a putative class action involving the use of Manufacturer’s Suggested Retail Price on the price tags of certain products sold at Michael Kors’ outlet stores.
- The RealReal, Inc. (TRR), an authenticated luxury consignment company, in a dispute brought by Chanel, Inc., a luxury fashion brand, asserting trademark infringement and false advertisement claims arising out of TRR’s sale of allegedly counterfeit Chanel handbags and advertisements regarding the authenticity of its products.
- Weight Watchers International, Inc. in a false advertising dispute with a U.K.-based competitor, Slimming World, expanding into the U.S. market. We obtained dismissal of the initial complaint and the matter was ultimately settled.
Royalty and Licensing Disputes
- Altice USA and Charter Communications in litigation with cable television networks arising out of change of control transactions.
- The American Society of Composers, Authors and Publishers (ASCAP):
- proceedings and negotiations to set the royalty rate for public performances of musical compositions by the cable television, network television, local television and radio industries, as well as by numerous new media companies, including a rate proceeding with Pandora about the appropriate public performance rate for online radio; and
- in a significant and closely watched trial in the United States District Court for the Southern District of New York to determine a reasonable license fee for the use of musical works in the ASCAP repertory by music service Pandora.
- Bloomberg in the successful trial of an international broadcast licensing dispute in which Bloomberg faced more than $70 million in potential damages.
- National Music Publishers’ Association (NMPA), The Songwriters Guild of America (SGA) and The Nashville Songwriters Association International (NSAI) in:
- a settlement that sets mechanical royalty rates and terms for the reproduction and distribution of musical works by record companies and digital music companies; and
- a trial before the Copyright Royalty Board resulting in the setting of advantageous new rates and terms for the mechanical license under Section 115 of the Copyright Act – the first contested rate proceeding in the music industry in almost three decades.
