Intellectual Property

The Firm has an active and often precedent-setting intellectual property practice, primarily in the areas of trademark and copyright law.

Trademark and Related Rights

The Firm has an active general trademark practice, with a specialty in the protection of foreign trademarks in the United States. Its practice includes strategic planning; the prosecution and maintenance of trademark registrations; and litigation in the courts and before the Trademark Office’s Trademark Trial and Appeal Board.

The Firm represents the two Cuban cigar companies, Cubatabaco and Habanos, S.A., in the protection of the renowned Cuban cigar brands in the United States. In litigation over the world-famous COHIBA trademark for cigars, the Firm established important judicial precedent recognizing the “well-known marks” doctrine, which protects foreign companies against attempts by United States competitors to establish priority in well-known foreign marks through first registration or use in the United States.

The Firm has protected its clients’ interests in using indications of geographic origin against misuse and dilution by competitors. This is a critical concern for products from regions that enjoy particular cachet in the market.

Copyrights

The Firm regularly advises its clients on copyright issues; negotiates and reviews copyrights licenses; monitors and administers royalty payments to licensees; and represents clients in extra-judicial copyright disputes.

The Firm’s litigation practice in this field has included several precedent-setting cases, including:

In New Era Publications v. Henry Holt Publishing Co., the United States Court of Appeals for the Second Circuit adopted the Firm’s argument that unpublished works enjoy especially extensive protections against claims of fair use.

The Firm litigated one of the early cases involving copyright infringement on the Internet. In Religious Technology Center v. NETCOM On-Line Communications, Inc., the court accepted the Firm’s argument that Internet Service Providers should be liable for copyright infringement if they fail to take corrective action after being informed of a copyright violation. The Netcom ruling subsequently was adopted by Congress when it enacted the Digital Millenium Copyright Act (DMCA).

The Firm represented a coalition of writers and artists as amicus curiae before the United States Supreme Court in defense of amendments to the Copyright Act that extend copyright terms and restore copyright protection to certain works. The Court agreed that such amendments were within Congress’s constitutional powers under the Copyright Clause.

Internet and Domain Names

The Firm successfully represented the Republic of South Africa in connection with a domain name dispute over the use of “South Africa,” Virtual Countries, Inc. v. Republic of South Africa, and assisted that government in making presentations to the World Intellectual Property Organization (WIPO) and the Internet Corporation for Assigned Names and Numbers (ICANN). The Firm advises and assists other clients with respect to domain name disputes.

Trade Secrets

The Firm has engaged in complex trade secret litigation, including cases raising novel and important questions.

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