I. Before the US International Trade Commission (ITC)
1. Certain TV Programs, Literary Works for TV Production and Episode Guides; Investigation Number 337-886
Represented Respondents Thunderbird Films, and Mindset Television. Copyright infringement of television script that was broadcast on the Disney Channel. (The Walt Disney Company was a co-respondent in this investigation.)
Result: Respondents prevailed on our motion for Summary Determination for lack of “substantial similarity.”
2. Certain LED Photographic Lighting Devices and Components Thereof; Investigation No. 337-TA-804
Represented Respondents Fuzhou F&V Photographic Equipment Co. LTD and NanGuang Photographic Equipment Co. Patent infringement of LED photographic lighting equipment.
Result: Settled amicably on the eve of trial.
II. Before the US District Courts
1. AEROGROUP INTERNATIONAL, INC., Plaintiff v. MARLBORO FOOTWORKS, LTD., Laurence D. Koplan, Steven Goldberg, Gredico Footwear Ltd., Town Shoes Ltd., Bata Industries Ltd., Goldport Enterprises, Inc., Marlboro Footworks Ltd. (Taiwan), Masateru Uehara, Frederick Atkins, Inc., Weiss & Neuman Shoe Co., Melville Corporation, Shoe Carnival, Inc., and National Independent Retailers, Inc., Defendants. USDC Southern District of New York; 96 Civ. 2717(DLC).
Represented lead defendants Laurence D. Koplan, Steven Goldberg, Goldport Enterprises, Inc., Marlboro Footworks Ltd. (Taiwan), Masateru Uehara. Trademark Infringement; Unfair Competition; Design Patent Infringement relating to Ladies’ comfort fashion footwear.
Result: After initial fact discovery and a combined preliminary injunction hearing and trial on the merits, the court found that none of Marlboro Footworks’ accused shoes sold in the US infringed Aerogroup’s trademarks or common law rights; found one of Marlboro’s sales in Canada infringed Aerogroup’s Trademark rights; found by summary judgment motion that none of Marlboro Footworks’ accused shoes infringe Aerogroup’s Design Patents; and found by Summary Judgment that Aerogroup’s Waffle Sole Design Trademark Registration is invalid and unenforceable. The District Court’s determination was upheld on appeal and remanded. The case settled amicably on remand.
2. THE GAP, INC., GAP (APPAREL) LLC. v. G.A.P. ADVENTURES INC; UNITED STATES DISTRICT COURT, SOUTHERN DISTRICT OF NEW YORK; 07 CV 09614 (AKH).
Represented G.A.P Adventures Inc., a Canadian adventure travel provider. Trademark Infringement, Unfair Competition, Dilution. Represented client through fact and expert discovery, settlement mediation and motion practice.
Result: Withdrew from representation due to a subsequently emerging conflict – Case settled globally following trial.
3. Quesos La Ricura Ltd. v. Ricura Foods LLC; Florida Southern District Court; 1:2013cv23770 (PAS).
Represented Quesos La Ricura Ltd., a manufacturer and distributor of foods in the Latin American market in the Florida District Court and in related Trademark Opposition actions before the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office.
Result: The case was dismissed and default judgment granted, Quesos La Ricura’s oppositions were sustained, and a favorable settlement was reached thereafter.
III. Before the Trademark Trial and Appeal Board (TTAB) in the US Patent and Trademark Office
1. Nora Elizabeth Pineda Saca and Vanessa Faggiolly v. Quesos La Ricura, Ltd.; TTAB Cancellation No. 92057343.
Represented respondent Quesos La Ricura Ltd., a manufacturer and distributor of foods in the Latin American market in defending a Cancellation Action of client’s registered trademark.
Result: Prevailed on a motion to dismiss and summary judgment upon which the TTAB granted summary judgment in favor of Quesos La Ricura.
2. Jean Michel Cazabat Int’l Ltd. v. Eyal Balle – Opposition No. 91212654.
Represented Opposer, Jean Michel Cazabat Int’l Ltd. For opposition to Eyal Balle’s application for trademark registration.
Result: The Opposition was settled amicably during the initial discovery phase.