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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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)
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)
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.
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.)
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.
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.
Costume Jewelry Manufacturer – Copyright Infringement
Represented a major costume jewelry manufacturer in defending claims for copyright infringement and misappropriation of trade secrets (SDNY).
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.)
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.