IP Litigation

One of Mandell Menkes’ greatest assets is the depth of our experience in handling complex intellectual property litigation. Whether we are engaged on a copyright, patent, trademark or trade secret matter, we apply the knowledge and experience that we have garnered by having handled similar cases and by closely following recent developments in the law. As an example, we recently helped a domestic broadcaster defend infringement claims brought under Polish copyright law, yet seeking substantial statutory damages under U.S. law. Our understanding of the rubric under which foreign copyrights may be asserted in U.S. federal courts — both in terms of liability and damages — and our knowledge of the often esoteric registration requirements under the Copyright Act enabled us to win summary judgment on the plaintiff’s claim for statutory damages. By limiting the plaintiff’s potential recovery to nominal damages, we were able to extricate our client from the lawsuit entirely.

The plaintiff, a foreign news correspondent, alleged that a radio broadcaster infringed his copyrights by rebroadcasting in the United States a series of news dispatches that he had originally published in Europe.  Following a series of motions, the Court rejected plaintiff’s argument that §411(b) of the Copyright Act entitled him to statutory damages.  The Court ruled that although foreign claimants are permitted to file copyright infringement suits in American courts without first registering their copyrights, statutory damages are not recoverable under the Act unless, subject to one exception, the claimant registers his copyright in the U.S. before the alleged infringement occurs.  Because the plaintiff could not show that he qualified for the exception — e.g., that his reports were transmitted “live” overseas or that he provided the pre-broadcast notice required by the Act — the Court found that he could not claim statutory damages. Moreover, in entering summary judgment for our client, the Court ruled that the plaintiff lacked standing to assert the copyright claims because the alleged oral assignment of copyrights to the plaintiff by his employer had not been reduced to writing as required by Polish copyright law.

Through its representation of clients in the entertainment, media and computer industries, Mandell Menkes has developed a sophisticated intellectual property law practice. Mandell Menkes provides a wide array of legal services relating to intellectual property rights, including:

Trademarks: counseling and guidance regarding the selection and policing of trademarks, clearance and prosecution of trademarks, trade names and service marks before the United States Patent and Trademark Office; dispute resolution and litigation of infringement and dilution claims in state and federal courts, inter partes proceedings before the Trademark Trial and Appeal Board, negotiation, review and drafting of license and assignment contracts.

Copyrights: counseling and guidance regarding copyright clearance and registration with the Copyright Office, evaluation, litigation and dispute resolution of copyright infringement claims, negotiation, review and drafting of license and assignment contracts.

Patents: litigation of patent infringement claims in trial and appellate courts.

Trade Secrets: evaluation of and counseling and guidance relating to trade secrets, development of programs to preserve trade secrets, negotiation and drafting of non-disclosure and confidentiality agreements and non-compete agreements, litigation and dispute resolution of trade secret claims, negotiation, review and drafting of license and assignment contracts.

Internet and e-Commerce: domain name acquisition, registration and dispute resolution, review, negotiation and drafting of Internet and e-mail use, privacy and document retention policies, web development and hosting agreements.