Practice Areas & Industries: Loeb & Loeb LLP

Practice/Industry Group Overview

Practice Capabilities

Loeb & Loeb's Intellectual Property Group provides strategic counseling on trademarks, service marks, trade names, Internet domain names, and trade dress, and we manage our clients' trademark portfolios. We advise on all types of copyright-related issues, from the development of copyright identification and registration programs to the examination of chain-of-title issues.

The particular strength of our Trademarks and Copyrights team is our ability to counsel clients on their consumer branding and marketing efforts. We do so by combining our experience in the substantive areas of trademark and copyright law; our knowledge of the entertainment and advertising industries; and our skill as advisers, deal makers, and litigators - all of which provide our clients with insight and innovative strategies and solutions. Our ability to provide sound advice on technology issues such as software, Internet and Web site copyright issues is strengthened by our extensive digital media experience.

Services Available

Loeb and Loeb's trademark and copyright capabilities include:

• Client counseling
• Trademark availability clearance
• Due diligence with respect to acquisition of trademark portfolios and copyright libraries
• Domestic registrations acquisition and maintenance
• Foreign registrations acquisition and maintenance
• License agreements and assignments preparation
• Domain name issues
• Informal conflict resolution, both domestic and foreign
• Foreign litigation, both administrative and legal
• Domestic litigation before the U.S. Patent and Trademark Office and the courts

Our group's litigation practice encompasses all types of claims, including trademark, trade dress, unfair competition, copyright, false advertising and domain name disputes. We litigate claims in federal and state courts and before administrative bodies such as the U.S. Trademark Trial and Appeal Board. Whenever appropriate, we work toward resolution through mediation and arbitration hearings.

Service Approach

Whether you are a celebrity, Fortune 100 company, or small business, if you are marketing to consumers, you are building a brand that needs to be protected. Our clients benefit from the combined synergy of our experience in the advertising, entertainment, and technology industries, and we understand the importance of your intellectual property to your livelihood.

We offer sophisticated and strategic portfolio management services, including negotiation and implementation of merchandise and other licensing agreements. We also assist clients with the sale and transfer of intellectual property as part of corporate transactions. For example,

• In the $2.6 billion acquisition of Warner Music Group, we represented the investors Edgar Bronfman, Jr.; Thomas H. Lee Partners; Bain Capital and Providence Equity Partners group, and served as IP and trademark counsel and adviser with regard to recording-industry matters.

More and more frequently, our clients are encountering issues online. Examples of our successes in this area include:

• Counseling Dell in various trademark infringement and domain name disputes concerning the use of "Dellsoft," "Data Dell" and "Dell Land."
• Recovering the marchmadness.com domain name from a Dallas sports marketing company for March Madness Athletic Association, after a six-day bench trial.

In addition to developing and managing large global portfolios, when necessary we draw on our litigation strengths, as demonstrated in a number of high profile cases such as:

• Defending the Franklin Mint in a dispute concerning the marketing of Princess Diana collectibles. The U.S. Court of Appeals for the Ninth Circuit unanimously affirmed a trial court's ruling that Franklin had not engaged in false advertising or trademark dilution. The appeals court also affirmed an award of $2.3 million in legal fees, believed to be the largest such award in the history of the Lanham Act.
• Representing eight major Hollywood studios in copyright and trademark infringement litigation against CleanFlicks and 11 other businesses concerning unauthorized edited versions of the studios' films.

Our experience also extends to copyright protection and exploitation, and we are particularly well-versed on issues surrounding the development of cutting-edge technologies in the technology arena. We have worked with clients such as Motorola, Media Flow and Media Master on their copyright issues and won summary judgment for Anheuser-Busch, DDB Worldwide Communications Group and DDB Chicago in a copyright and trade dress infringement action brought on by BattleBots, arising out of a television ad aired during the Super Bowl.

Clients and Industries

We work with Fortune 500 companies in a host of industries including manufacturing, financial services, advertising and promotions, entertainment, and media, as well as with music and motion picture trade associations and with entertainment personalities to establish, acquire, protect, and exploit intellectual property rights.

Some of our clients include:

Leadership in Law

Our Trademarks and Copyrights group has received high praise in the 2008 edition of the Chambers USA Guide to America's Leading Business Lawyers. The Chambers Guide ranks lawyers and law practices through interviews with clients and competitors. As quoted by Chambers, "This firm has a healthy concentration of copyright lawyers and key players in the area of licensing contractual disputes."

The Legal 500 United States, a law firm referral guide, ranked our copyright litigation practice in the top band of U.S. law firms. They noted "the firm represents market leaders" with "clients trusting its 'reputation in copyright expertise.'"

We are active members of various industry organizations such as the International Trademark Association (INTA), the Copyright Society of the U.S.A., and the American Intellectual Property Law Association (AIPLA); frequent lecturers for the Practicing Law Institute and other industry groups; and authors of articles in publications such as Journal of the Copyright Society of the U.S.A. and The Trademark Reporter.

Practice Contacts

David W. Grace
Partner
310.282.2108
dgrace@loeb.com


Douglas N. Masters
Partner
312.464.3144
dmasters@loeb.com


Barry I. Slotnick
Partner
212.407.4162
bslotnick@loeb.com