Intellectual Property

Collaborated with the National Music Publishers’ Association on anti-piracy efforts aimed at removing copyrighted lyrics from unlicensed websites and negotiating licenses for these lyrics’ use. These efforts created a new stream of royalty income which has generated hundreds of millions of dollars in additional revenue for music publishers and their songwriters over the past 20 years.

Routinely negotiates licenses for the use of clients’ valuable IP assets in film, television, advertising, and special projects across mediums including cable television, satellite transmissions, digital services, pay-per-view, and streaming.

Negotiated several book publishing contracts on behalf of novelists, playwrights, cookbook writers, and journalists. For 25 years, has represented the family of author Aldous Huxley in protecting and exploiting his famous works, particularly Brave New World. Negotiated with Random House to keep the novel with the publisher. Also negotiated several film rights options for the grandchildren of the Huxleys.

Provided counsel on copyright terminations and copyright law in general. On behalf of disparate clients—The Rolling Stones, Joe Simon (creator of Captain America), Jessye Norman (international opera star), etc.—won several critical copyright cases that benefit creators in general and have helped bring clarity to the concept of Work For Hire.

Regularly collaborate with clients to find workarounds for transactions that face restrictions on certain transfers set forth in the Copyright Law. We have devised loan structures that permit transfer of assets in sales and purchases alike.

Facilitated purchases of the rights of Mick Fleetwood and John McVie of Fleetwood Mac, Paul Simon, John Legend, Harry Nilsson, and a share of the North American rights to a handful of early Beatles’ hits like “She Loves You,” “I Wanna Hold Your Hand,” and “From Me To You.”

Represented many of the leading writers of the Great American Songbook, such as Harold Arlen and Yip Harburg (The Wizard of Oz), Leroy Anderson (“Sleigh Ride”), and Mitchell Parish (“Stardust”).

Played an instrumental role in persuading the US Copyright Office to enact policy changes to ensure that the Mechanical Licensing Collective paid post-termination royalties to songwriters, resulting in many millions being paid out to songwriters, including Mick Jagger and Keith Richards of The Rolling Stones.

Facilitated the buying and selling of $1.2 billion in musical assets, including the purchase of numerous music publishing companies and legendary music catalogs—e.g., Cherry Lane Music (Peter, Paul and Mary; John Denver.) The purchaser was an Australian bank which could not own the assets. We structured the deal so that the assets would be owned by a U.S. LLC.

Facilitated the sale of iconic works like the original Twist, The Pointer Sisters’ catalog, numerous famous Motown songs, and legendary hip-hop compositions. Many of these transactions have been cross-border.

Successfully negotiated and closed a substantial eight-figure loan with a leading English bank represented in the U.S. and abroad, to support further acquisitions by the client. Ultimately, the deal was valued at $125 million.

Represented the UK-based acquirer of certain mobile communications applications design assets of a distressed seller operating both in Canada and the United States. Much of the transaction was focused on the successful transition of the technology team from the seller to the buyer, as well as the underlying intellectual property assets. We also formed a new U.S. subsidiary of the purchaser and advised regarding various employment and consulting agreements.

Represented Trustbridge in a coexistence agreement for an IP matter involving published works referred to as “Whaleboy” and “Dolphin Girl.”

Represented New Jersey-based financial advisory firm against Missouri-based advisory company for trademark infringement of the term “Financial Quarterback,” alleging that the Missouri firm unlawfully used the term in its advertising, along with similarly related terms such as “Retirement Coach.” (Jalinski Advisory Group, Inc. v. JBL Financial Services, Inc. (E.D. Mo., No. 4:19-cv-01914))

Represented an Italian housewares distributor in multiple intellectual property matters. Successfully shut down widespread distribution of counterfeit products via online marketplace websites, resolved multiple infringement claims against the client with minimal exposures, and counseled the client with regard to ongoing trademark and copyright issues.

Represented Jenny Yoo Collection Inc., a bridal dress designer, in the District of Kansas in a matter upholding the viability of trade dress claims relating to fashion designs. (Jenny Yoo Collection, Inc. v. Essence of Australia, Inc. Case No. 17-CV-2666-JAR-GEB)

Represented various Italian fashion companies in trademark and copyright infringement and contract disputes in the United States. Obtained favorable settlement of our client’s trademark infringement claims against a U.S. competitor and negotiated a co-existence agreement regarding ongoing use of the companies’ respective trademarks and trade dress. Successfully defended a high-profile Italian designer fashion company against contract claims by a former U.S. distributor, obtaining stay of the distributor’s lawsuit in favor of arbitration, and then obtaining dismissal of the distributor’s claims in arbitration. Successfully sued on behalf of an Italian lingerie company for payments owed by a U.S. distributor; won summary judgment awarding damages, without a trial.

Represented Trustbridge Global Media Ltd. in its proposed joint venture with Bayard Presse to form a new Hong Kong corporation operating in China. This matter required the negotiation and draft of a comprehensive cross-border license agreement for a very extensive library of published works. We participated in the structuring of various Hong Kong and Republic of China entities to assure compliance with applicable laws.

Successfully resolved claim by fashion designer against clothing manufacturer who wrongfully trademarked and misappropriated the designer’s last name without the designer’s consent.

Successfully resolved trademark and contract dispute between leading boutique retailer and supplier during deposition of supplier’s (opposing parties) owner.

Obtained emergency (ex parte) seizure order in federal court trademark infringement action on behalf of a leading food manufacturer.

Successfully defeated preliminary injunction and seizure order that threatened to destroy client’s business in federal court trademark, copyright infringement, and counterfeiting action brought by the world’s largest software company against a major independent computer distributor whose offices were raided by law enforcement at the request of the plaintiff. Obtained insurance defense leading to an insurer funded, confidential settlement.

Represented the owners of the intellectual property relating to “Conan the Barbarian” in the sale of this intellectual property first to a public company for stock, and then when the public company went bankrupt, in recovering the intellectual property from the bankruptcy estate and reselling it for cash to a European buyer.