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.
Medical Practice – Equipment License
Represented a professional medical practice in connection with the license and turnkey delivery of nuclear cardiology imaging equipment and operation.
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 House Formation
Represented Nolining, a new high-end fashion house, in its formation and organization.
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
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)
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)
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
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.
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)
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.
Represented Leading Producer of Golf Equipment and Apparel in Sale of Business Transaction
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.
Acquisition of Online Concrete Fastener Company
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.
Professional Basketball – License Agreement
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.
Legends Hospitality – South Florida Development
Represented Legends Hospitality Management LLC in connection with a major new development in southern Florida.
Technology Company – Licensing Dispute
Represented the developer of an innovative insurance product in New York State court litigation 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.
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 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.
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.
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.
S. Rothschild & Co. – License Agreement
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.
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
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.
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.
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.)
New York Yankees – License
Represented 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 Technologies Corp. – 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.
JACHS NY, LLC – Distribution and Trademark License Agreement
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
Represented 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
Represented a global medical research company seeking declaratory relief and claiming breach of contract for software license fees.
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, the See Forever Theater and the City Pulse interactive display.
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.)
Yankee Stadium Technology Agreement
Represented the New York Yankees on their agreement with a technology developer that developed software to essentially run Yankee Stadium.
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.
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.
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.
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.
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)
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)
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.