Matters

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.

Legends Hospitality – Joint Venture Formation

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

Represented 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

Represented 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

Represented 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

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.

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

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

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

Represented 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)

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

Successfully represented 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)

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)

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

Represented 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)

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)

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)

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).