Turkish apparel company- trademark infringement and counterfeiting

Defended successful Turkish-American apparel company against federal court claims of trademark infringement and counterfeiting brought by a US hanger company involving garment hangers that the client’s factory had switched and imprinted with the plaintiff’s trademarks without the client’s knowledge. We were able to settle the claims confidentially at the pleading stage of the case, with a significant and creative part of the settlement tied to creating new business between our client and the plaintiff.

International Diamond Grading Network – All Claims Dismissed in Trademark/Unfair Competition Dispute

Following a 7-day trial in New York federal court, Herrick obtained a ruling dismissing all claims against our clients, an international diamond grading network and related individuals, in a hotly-contested trademark and unfair competition dispute in which the opposing party sought damages totaling nearly $140 million, as well as draconian and sweeping permanent injunctive relief, under the Lanham Act. Herrick delivered a ruling to our clients that removed the threat of a devastating damages award and judicial injunction, as well as any liability for the opposing party's attorneys' fees.

NY-based high end retailer-copyright infringement

Defended a famous NY-based high end retailer in a federal copyright infringement action involving a fabric design on a garment. Case was settled at the pleading stage for a modest sum paid by our client who had sold the garments to the retailer.

Toy Manufacturer – Trade Dress Infringement Claims

Acted as co-defense counsel for a major toy manufacturer in a Southern District of New York trade dress infringement case involving toy packaging claims. Following expedited discovery, the case was settled at the preliminary injunction stage on confidential terms, which had no meaningful economic impact on the client’s business.

Metropolitan National Bank – Intellectual Property Counsel

Represented Metropolitan National Bank in all its intellectual property needs. We help the bank register and protect all of its trademarks and service marks, oversee outside trademark litigation counsel when necessary, and negotiate service provider license agreements for banking software and technology solutions.

Google Inc. – NJ Appellate Division Affirms Summary Judgment

Represented Google Inc. before the NJ Appellate Division, which affirmed summary judgment granted by the New Jersey Superior Court in favor of Google, dismissing claims by an online merchant for breach of contract and the covenant of good faith and fair dealing. The appellate court upheld the terms and enforceability of Google’s online merchant "click-wrap" agreement, including its liability limitations, while rejecting plaintiff’s claim that it was an unenforceable contract of adhesion. D’Agostino v. Appliances by Phone, Inc., et al., 2016 N.J. Super. Unpub. LEXIS 504 (Mar. 8, 2016).

Arts Foundation – Joint Venture

Represented The European Fine Arts Foundation (TEFAF) in the creation of a joint venture entity with Spring Show NYC LLC. The joint venture will own and operate a Fall and Spring art fair to be held annually at the Park Avenue Armory. TEFAF currently owns and operates the premier art fair in Europe (TEFAF Maastricht) and will be rebranded under the TEFAF brand through a license arrangement we also negotiated. This is a significant matter in the art fair/collector world as TEFAF is the gold standard among art fairs and plans to hold numerous large-scale events in New York in the future.

New Yankee Stadium Wireless Lease Agreements

Represented the New York Yankees in their lease agreements with wireless carriers in the new Yankee stadium.

eBrandValue – Licensing

Represented eBrandValue, a company that monitors and catalogs content from social media networks to evaluate and analyze the efficacy of a business' brand marketing strategy, in the licensing of its IP assets and in related employment matters.

Legends Hospitality – One World Observatory IP Rights

Represented Legends Hospitality in the review, assessment and protection of intellectual property rights in various unique One World Observatory visitor installations, including the Sky Pod elevators with wrap around video displays, the See Forever Theater and the City Pulse interactive display.

Bounce Media Group – Yacht Charter Agreement

Represented Bounce Media Group, an operator of one of the largest private event yachts in the northeast, in securing its charter for the 2015 season, in executing a contract for its first cruise this year – the June 5 birthday party of famous hip hop artist, Jadakiss, and filing for trademark protection for the BOUNCE BOAT name.

Doyle New York – Asset Acquisition

Represented Doyle New York in its acquisition of selected assets of Summerfield's of Beverly Hills. We continue to advise Doyle in connection with local licensing and regulatory requirements.

Asset Management Company – IP Matters

Representation of an asset management company in connection with its IP matters.

International Businesses – U.S. IP Rights

Represented various non-U.S. businesses in protecting their IP rights in the U.S., including a well-known UK apparel designer, a famous British artist, French technology companies, a Scandinavian media company, a French filmmaker, and a public Canadian technology company.

Planet Hollywood Affiliate – Trademark Enforcement

Herrick successfully represented Buca, Inc., an affiliate of client Planet Hollywood, which operates the well-known "Buca di Beppo" chain of Italian restaurants and owns federal trademark registrations for BUCA, in compelling an Italian restaurant in Manhattan using the name "Buca Brick Oven" to change its name or face a trademark infringement action.

S. Rothschild & Co. – Counterfeit Apparel

Herrick represented long-time client S. Rothschild & Co., a leading brand manufacturer of women's outerwear, in shutting down sales of counterfeit apparel being sold at various supermarkets under its LARRY LEVINE registered trademark.

Distribution and Trademark License Agreement – JACHS NY, LLC

Represented JACHS NY, LLC (formerly, Shirt by Shirt USA LLC) in negotiating an exclusive distribution and trademark license agreement, covering mainland China and Chinese retail website markets, with Zhejiang Bestall E-commerce Co. Ltd., a major Chinese distributor and licensee.

1960’s Singing Group – Trademark Infringement

Kelly v. Duprees MJA, LLC, 2012 U.S. Dist. LEXIS 40597 (D. N.J. March 23, 2012). Represented the Estate of Michael Arnone, a co-founder of the famous 1960's vocal harmony group The Duprees, and its assignee, Duprees MJA, in obtaining summary judgment dismissing all claims alleging fraud on the USPTO, common law trademark infringement and violation of the New Jersey "Truth in Music" Act. The case was brought by a former singer who had joined the Duprees group in 1964, two years after they already had their first major hits, and left the group in the late 1970s, never to perform again. The dismissal on the merits brings to a close a six-year battle over the rights to the DUPREES name and rejects the notion that early members of a performing group can claim rights in the group's name if they abandon the group without securing a partnership agreement to the contrary or a license.

Dismissal of Claims – International Council of Museums

Representation of the International Council of Museums in successfully obtaining the dismissal of claims brought in the US District Court (Southern District of NY), by a Canadian art verification expert for allegedly defamatory content re-posted on the Council's online public blog site that was operated out of France.

Maharam Fabric Corporation and Paul Smith v. Valley Forge Fabrics – Copyright Infringement

Represented Maharam Fabric Corp. and two corporate affiliates of UK designer Paul Smith in a copyright infringement action against a major textiles manufacturer for having knowingly copied a proprietary fabric design called "Modulating Stripes" owned by Paul Smith that was exclusively developed for, and licensed globally to, Maharam. Soon after an answer was filed, we negotiated a favorable settlement, which included defendant's destruction of remaining inventory and an agreement to never again copy any original Maharam or Paul Smith designs.

Documentary Film – Copyright Infringement

Representation of the producers and director of a documentary film in an action for copyright infringement tied to the use of certain pre and post 1972 sound recordings as background music under public television compulsory license provisions of the Copyright Act. We negotiated an early settlement that was satisfactory to our clients with no economic impact.

NFL Player’s Hollywood Restaurant Joint Venture

Represented SFF Investments LLC, which is wholly owned by a current All-Pro NFL player, in a joint venture to create a Rolling Stone-branded restaurant and bar in Hollywood, CA.

S. Rothschild & Co. – License Agreement

Representation of S. Rothschild & Co. in the negotiation of a three-year, renewable and exclusive trademark license agreement for the VIA SPIGA brand for use on women's and girl's leather, fabric and fur trim outerwear. S. Rothschild will be manufacture, market and sell the product in major retailers throughout the U.S., Canada and Mexico.

Fashionware – Intellectual Property Matters

Represented Fashionware Technologies Corp., a boutique technology solutions developer specializing in the fashion industry, in connection with intellectual property, marketing and corporate matters related to its proprietary Fashionware PLM software suite designed to manage the life cycle of products for apparel, footwear and soft goods companies.

New York Yankees – License

Representation of the New York Yankees in negotiating an agreement with the Daily News to license the Daily News' historic photo archive of Yankees players and stadium imagery and for the Daily News to be the exclusive provider of historical photos for prominent display in the new stadium.

New Media Company – Formation & IP Filings

Represented a new media company that provides dynamic digital content and advertising through kiosks in high traffic areas, such as the airports, that can also charge electronics and download digital content. We helped the company with its initial round of financing, its formation strategy and IP filings as well as its strategic alliance agreement with one of the largest airport retailers.

Amano USA Holdings Inc. – Stock Purchase

Represented Amano USA Holdings, Inc., a subsidiary of a Japanese public company, in its acquisition of the outstanding capital stock of Accu-Time Systems, Inc. Accu-Time designs, manufactures, markets and distributes time and data collection terminals for the time and attendance, payroll clock, shop floor and controlled access marketplace.

Yankee Stadium Technology Agreement

Represented the New York Yankees on their agreement with a technology developer that developed software to essentially run Yankee Stadium.

Costume Jewelry Manufacturer – Copyright Infringement

Represented a major costume jewelry manufacturer in defending claims for copyright infringement and misappropriation of trade secrets (SDNY).

Sponsored Research Agreements

Representation of medical device companies and neutraceutical venture in negotiating sponsored research agreements with major research universities and hospitals in the US and Canada.

Joint Venture Formation of Legends Hospitality

Represented Legends Hospitality LLC—a joint venture among the Yankees, Dallas Cowboys and two private equity firms—in setting up business operations (which include running concession services at stadiums, arenas and other large venues), obtaining necessary permits and authorizations in New York, New Jersey, Pennsylvania, Texas and Florida, and protecting the company's intellectual property rights.

ProImmune – Ingredient License

Representation of The ProImmune Company, LLC in its license of a food ingredient that boosts immune systems to a consortium of 18 medical schools. The schools will research the ingredient's ability to prevent and/or mitigate diseases, such as HIV/AIDS, heart disease, diabetes, and kidney disease that disproportionately affect minority populations.

Fashion Industry Software Litigation

Represented Fashionware Solutions Inc., in defeating the plaintiff-developer’s motion for a preliminary injunction to enjoin our client’s use and exploitation of its own custom developed fashion industry software under South African copyright law. (S.D.N.Y.)

Computer Screen Interface Copyright Litigation

Represented Digital Dispatch Systems, Inc. in defeating the plaintiff’s motion for a preliminary injunction in a copyright action involving a computer screen interface. (Wireless TV Studios, Inc. v. Digital Dispatch Systems, Inc., E.D.N.Y.)

Canadian Hydroelectric Utility – Swap Rate Agreements

Representation of a Canadian hydroelectric utility on the enforceability and possible breaches of interest rate swap agreements it had entered into with one of the largest US insurance companies, which eventually became subject to the US financial bailout program.

Yankee Stadium – Exclusive Telecom Provider

Representation of the Yankee’s affiliate in its agreements with AT&T to provide and support the new stadium’s telecommunications services and network system. AT&T will provide telephone, Internet and Wi-Fi services, provide all the necessary equipment, and build and maintain a custom network. The deal will also drive revenues to the company through end-user usage fees and by enhancing fans’ experience.

Internet Company – Website Development and Contracts

Representation of a prominent website design/development and interactive marketing company in all of its development and marketing contract work, and related counseling and advice. Our work includes revising the company's standard form development agreements, and assessing their insurance coverages.

British Artist – Digital Copyright Infringement

Representation of a major British contemporary artist in shutting down websites hosted from within the US, including through issuance of DMCA "take down" notices, that display unauthorized copyrighted images and offer to make unauthorized reproductions of his works.

S. Rothschild & Co., Inc. – Cybersquatter Eviction

Represented S. Rothschild & Co. in its successful UDRP arbitration against a cybersquatter to recover a domain containing our client's registered trademark. S. Rothschild & Co., Inc. v. Bao Shui Chen, NAF Decision (Dec. 29, 2007)

Luxury Candy Retailer – Co-Branding and Supply Agreement

Represented a well-known New York City candy retailer in negotiating an exclusive co-branding and supply agreement with a famous contemporary clothing company.

NHL Real Time Scoring and Video Systems

Represented the National Hockey League in negotiating new real time scoring and video delivery systems. Herrick helped craft a series of creative technology deals that enabled the league to pull live video and real-time game video, audio, and statistical data and feed it back to a central hub for distribution in real time to other arenas, broadcasters, websites, cell phones, and wherever else the league pushes that content.

Hedge Fund – Music Acquisition Financing

Represented a Connecticut-based hedge fund and a Wall Street investment bank in a joint acquisition financing and restructuring of a secured multi-draw term loan facility. A portion of the proceeds were used by the borrower, a global music publisher, to acquire an interest in the song catalogs of Kurt Cobain, John Lennon, Daryl Hall & John Oates; Holly Knight, an accomplished musician and songwriter who has written hits for Tina Turner, Pat Benatar and Aerosmith; Six Degrees; Blue October; The Matrix; and Daniel Johnston, among others.

Recording Artist and Music Publisher – Digital Copyright Infringement

Representation of a recording artist and an international music publishing company in a federal court action for copyright infringement involving digital sampling of a sound recording.

Major Comic Book Company – Library Acquisition

Represented purchaser of a significant comic book library from a prominent video game company's Chapter 7 Bankruptcy Trustee.

New York Yankees – Online Sweepstakes

Represented the New York Yankees in two online sweepstakes in conjunction with a major electronics corporation, including drafting the sweepstakes official rules and winners' affidavits and assisting with the bonding/security requirements.

New York City Union – Healthcare Software License

Representation of a major New York City union and its benefits fund in negotiating software license and maintenance agreements and an ASP agreement with a large, publicly traded health care technology provider.

Kaufman & Fisher Wish Company, Ltd., v. F.A.O. Schwarz

Successful defense of trade dress claims involving plush dolls. Kaufman & Fisher Wish Company, Ltd., v. F.A.O. Schwarz, 184 F.Supp.2d 311 (S.D.N.Y. 2002), aff`d, (2d Cir. order, Oct. 31, 2002)