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.
Represented the shareholders of Michel Design Works Ltd, a leading omni-channel lifestyle brand, in connection with its stock sale to Stonewall Kitchen, a premier specialty food and home goods platform in North America. Stonewall Kitchen is a portfolio company of Audax Private Equity, which has invested over $7 billion in more than 140 platforms and over 1,000 add-on companies.
Represented Legends Hospitality Holding Company, LLC (“Legends Hospitality”) in majority investment by private equity firm Sixth Street in the global premium experiences company, co-founded by the New York Yankees and the Dallas Cowboys. As reported by Legends, “[t]he new investment from Sixth Street will support the long-term growth of the Company’s global client relationships and further enhancements to its innovative 360-degree platform of premium experience offerings for the most iconic global brands in sports, entertainment, and attractions.”
Herrick has represented Legends since its inception in 2008, when our Sports Law Group worked with the Cowboys and the Yankees, along with two private equity firms, to form this ground-breaking joint venture. Initially, Legends focused on delivering enhanced concessions and premium experiences. Since its formation, Legends’ range of services has grown to include six worldwide divisions and it has partnered with many iconic international sports, entertainment and attractions brands.
Represented long-standing client Legends Hospitality in its entry into a share purchase agreement with the private equity firm Sixth Street. Under the share purchase agreement, Sixth Street acquired a controlling interest in Legends Hospitality. This investment will support Legends continued growth as a premium experiences company that specializes in delivering holistic solutions for sports, entertainment and attractions clients.
In connection with the acquisition, Legends Hospitality (i) issued senior secured long-term notes and (ii) entered into a revolving credit facility and PIK facility. The net proceeds were used to redeem certain outstanding equity securities of Legends Hospitality and for working capital and general corporate purposes.
In order to preserve Legends Hospitality’s liquidity and support its continued investment in accretive, long-term capital projects, affiliates of Sixth Street and other third parties will provide Legends Hospitality with access to funding provided by an investment vehicle. The funding will be used for capital expenditures, pre-opening costs and other disbursements contemplated by contracts entered into by Legends Hospitality.
Represented investment vehicle in its structuring and developing of a CBD line of products to be marketed at big box stores and kiosks and counseled on accompanying intellectual property issues.
Represented fantasy sports platform, Fulltime Fantasy Sports LLC, in a New York federal court action against a subsidiary of a large U.S. media conglomerate, which included claims of trademark infringement, false advertising, unfair competition and breach of an online publishing contract in a matter involving fantasy sports production and promotions. Counterclaims were also filed, but all claims were ultimately settled favorably for our client.
Represent a well-known sports and pop culture blog and website as lead counsel in a copyright infringement action filed in U.S. District Court in New York regarding a design created and sold by plaintiffs to client.
Represent owner and operator of a professional NBA basketball team in a licensing and production agreement with a wholly-owned media subsidiary to produce broadcast-ready video and multi-media content for its own and other basketball teams.
Represented Coblentz Patch Duff & Bass LLP in review of California entity’s employment award agreements for New York employees.
Represented Legends Hospitality Management, LLC in its equity interest acquisition in MainGate, Inc., a leading event retail and merchandise company. The acquisition will create a robust multi-channel retail and e-commerce platform to facilitate the connection between brands and fans.
Represented client in helping form, organize and establish Wifflis, a privately held e-commerce business that designs and produces premium pet supplies.
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.
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.
Representing New York Racing Association in a joint venture with Churchill Downs and Pinnacle.
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.
Represented longtime client in the purchase of an online concrete fastener company that involved complex tax issues. Advised on intellectual property matters involving proprietary business systems and software.
Represent ultra-premium U.K. vodka company for U.S. intellectual property and marketing matters, distributor and importation agreements, employment matters, and other significant commercial matters including servicing and e-commerce agreements.
Represented Avenue Sports Fund in its investment in Cosm, a leading immersive technology, media, and entertainment company. The funding will drive long-term growth of Cosm's "shared reality" venues as well as its technology and media business units.
Achieved a complete victory on behalf of its clients Inokim, an Israeli company that manufactures electric scooters, and Best Buy against certain Inokim shareholders who sued both companies for breaches of a licensing agreement and tortious interference arising from the distribution of Inokim electric scooters. The New York Supreme Court granted motions to dismiss all of the plaintiffs' claims on each of the alternative grounds offered—including improper service, lack of personal jurisdiction over our Israeli clients and lack of standing.
Represented Maryland Thoroughbred Racetrack Operating Authority in the transfer of ownership of Pimlico Race Course from The Stronach Group to the State of Maryland. "The historic agreement guarantees the home of the Preakness Stakes in Baltimore, establishes Pimlico as the year-round home of thoroughbred racing in Maryland, and creates a year-round hub of economic activity in Baltimore’s Park Heights community."
Terms under the master agreement include the transfer of ownership of Pimlico and ensures full renovation of Pimlico facilities, including the racetrack and hotel and event space construction. The agreement also includes the transfer of rights to the Preakness Stakes to the Maryland Thoroughbred Racetrack Operating Authority through a long-term licensing agreement.
Assisted LIV Golf, Inc. in negotiating a key master services agreement and associate statements of work with a digital marketing services provider, for the creation of a wide range of promotional content, including film and video content production, for the 2024 LIV professional golf season and beyond.
Represented Cohere Cyber Secure, a provider of cyber security and risk assessment services, in the sale of substantially all of its assets to Dataprise, a provider of managed IT, cybersecurity and cloud solutions.
Represented a leading internet horse racing account wagering operator in formation of joint venture with major European gambling software engineering firm to develop technology and software that facilitates the operation of computerized advance deposit wagering (“ADW”) for horse racing. ADW is a form of pari-mutuel wagering on horse racing whereby a person establishes an account with an ADW operator and subsequently communicates (typically via the internet) instructions concerning the wagering of funds in such person’s account to the ADW operator.
Represented the Center for Safe Internet Pharmacies (CSIP), a non-profit organization that addresses the global problem of consumer access to illegitimate pharmaceuticals from illegal online pharmacies and other sources. CSIP was named as a co-defendant in a case brought by PharmacyChecker.com in the Southern District of New York, alleging Sherman Act antitrust violations against CSIP and several organizations that promote safe online pharmaceutical purchases and alert the public to the risks and illegality of purchasing prescription drugs from foreign online pharmacies. The Court granted summary judgement in favor of all defendants, dismissing claims that alleged the defendants had conspired to put the plaintiff out of business and had entered into a group boycott by allegedly implementing a “black list,” which included the plaintiff and allegedly blocked or limited Internet search results for the plaintiff. The Court found that because substantially all of PharmacyChecker.com’s business was intended to promote and facilitate illegal online prescription drug purchases, it lacked antitrust standing to pursue its alleged claims.
Representing foreign NFT art/photo marketplace doing business in the U.S. on various issues including U.S. copyright and trademark matters and issues involving contracting, consignments and terms of sale.
Represented Sun Mountain Sports, Inc. ("Sun Mountain"), a leading producer of golf equipment and apparel, in a sale of business transaction to a private investment firm, Solace Capital Partners.
Founded in 1981, Sun Mountain is a pioneer in the golf industry known for its best-in-class brand and many innovations in golf bags, push carts, and outerwear. Sun Mountain’s products are sold in national retail stores, specialty golf stores, and pro shops, as well as online and internationally. The sale did not include Sun Mountain Motor Sports, which produces motorized golf cars under the Finn Scooters brand.
Three Ocean Partners served as financial advisor to Sun Mountain.
Represented owners of a high-end retail clothing company in the successful transfer of the assets and brand to a competitor.
Represented Legends in its acquisition of 4Front, a global data and analytics, innovation and digital media agency. 4FRONT will retain its company name and operate as part of Legends Global Technology Solutions division, building on Legends’ expertise in data consulting and digital activation. Legends Global Technology Solutions is an industry leading sports and entertainment digital, technology and experiential advisory with the deepest experience in some of the largest, most complex projects in the world of sports and entertainment.
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.
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).
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.
Represented the New York Yankees in their lease agreements with wireless carriers in the new Yankee stadium.
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.
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, the See Forever Theater and the City Pulse interactive display.
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.
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.
Represented an asset management company in connection with its IP matters.
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.
Represented Nolining, a new high-end fashion house, in its formation and organization.
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.
Represented a client in the acquisition of a residence and 33-acre operating vineyard in Long Island's North Fork area.
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.
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.
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.
Representing 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.
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.
Represented 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.
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.
Represented 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.
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.
