Matters

Menswear Designer and Manufacturer – Licensing Agreement Dispute

Represented a formal menswear designer and manufacturer as defendant and third-party plaintiff in a dispute over alleged material omissions made during negotiations to renew a licensing agreement for several well-known clothing brands.

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.

Galet v. Carolace Embroidery Products Co., Inc.

Successful defense of various corporate clients in computer software copyright infringement actions. Galet v. Carolace Embroidery Products Co., Inc., 32 U.S.P.Q.2d 1830 (S.D.N.Y. 1994), aff'd, 122 F.3d 1056 (2d Cir. 1995).

F.A.O. Schwarz v. Zuccarini, Nat`l Arb. Forum

Successful representation of F.A.O. Schwarz in a domain name arbitration awarding our client ownership of four Internet domain names registered in bad faith by a renowned cybersquatter. F.A.O. Schwarz v. Zuccarini, Nat`l Arb. Forum (Dec. 1, 2000)

Hotel des Artistes, Inc. v. Cafe des Artistes, Inc.

Representation of the Hotel des Artistes in TTAB cancellation proceedings, which resulted in the Hotel des Artistes recovering the famous Cafe des Artistes trademark registrations. Hotel des Artistes, Inc. v. Cafe des Artistes, Inc. (TTAB 1999)

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.

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.

Merck & Co., Inc. v. Vioxx

Representation of the defendant/counterclaimant (an established bio-medical glass manufacturer) in a declaratory judgment action for trademark infringement, based on the Vioxx arthritis drug name. We obtained a very favorable settlement for our client. Merck & Co., Inc. v. Vioxx (ED Pa. 2000)

Judith Ripka Designs, Ltd. v. Penny Preville, Inc.

Successful defense of a high-end jewelry designer at trial against claims of copyright and trade dress infringement. Judith Ripka Designs, Ltd. v. Penny Preville, Inc., 935 F. Supp. 237 (S.D.N.Y. 1996)

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)

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.

Pen Manufacturer – Trade Dress Claim

Successful defense of our client against trade dress claims brought by Montblanc over its "three-ring" pen design. We reached a settlement with no economic impact on our client. Montblanc-Simplo GMBH v. Omas SRL and Marcovici Designs, Inc., No. 97 Civ. 2055 (S.D.N.Y. 1997)

Medical Practice – Equipment License

Represented a professional medical practice in connection with the license and turnkey delivery of nuclear cardiology imaging equipment and operation.

Technology Company – Licensing Dispute

Represented the developer of an innovative insurance product in litigation filed in New York State court arising from the alleged breach of a licensing agreement which gave our client exclusive access to certain data that serves as the foundation for the new product. All claims were voluntarily dismissed under a settlement agreement, and the parties entered into a new, more favorable, licensing agreement.

British Artist – Digital Copyright Infringement

Represented 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.

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.

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.

Formation of E-Commerce Consumer Products Business

Represented client in helping form, organize and establish Wifflis, a privately held e-commerce business that designs and produces premium pet supplies.

Q4 America – Sports Apparel Startup

Representing Q4 America, a Los Angeles-based start-up performance basketball brand, in intellectual property matters related to the development of a new brand of sneakers, sponsorships, athlete endorsements and capital raises.

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.

French Pharma Company – Development Agreement

Representation of a France-based pharmaceutical manufacturer with proprietary drug delivery technology in a collaborative and development agreement of a generic pharmaceutical product to be marketed in the United States.

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)

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.

New York Yankees Affiliate – Joint Venture

Representation of a New York Yankees' affiliate in connection with the creation of a joint venture that would seek to build upon the value associated with the marks and other intellectual property rights of the New York Yankees by seeking licensing arrangements for the branding of products within certain designated consumer product categories.

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.

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.

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.

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.

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.

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.

Asset Management Company – IP Matters

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

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.

Global Medical Research Company – Software Licensing Dispute

Representation of a global medical research company seeking declaratory relief and claiming breach of contract for software license fees.

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.

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.

Real Estate Technology Company – Outside General Counsel

Representing a growing real estate technology company, as outside general counsel, in acquisitions, licensing agreements and employment issues.

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.

Apparel Companies – Licensing

Represented apparel companies in negotiating licensing rights with major fashion brands, such as Kenneth Cole, Tahari, Ralph Lauren and others.

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.

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.

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.

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.

Yankee Stadium Technology Agreement

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

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.)

Costume Jewelry Manufacturer – Copyright Infringement

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