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Camille M. Miller

Co-Chair, Intellectual Property Group
P (215) 665-7273

Martin B. Pavane

Vice Chair, Intellectual Property Group
P (212) 883-4994

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      Trademark & Copyright

      Globalization and technological advancement have opened new markets for everything from pop music to prescription drugs. Along with great benefits, these changes have ushered in new challenges as well. Namely, it is less difficult and more profitable for unscrupulous actors to infringe on privately held intellectual property rights. Near-perfect reproductions of protected works can be made quickly and cheaply, and disseminated instantly to markets worldwide. Officials estimate that counterfeit goods now make up 5 to 7 percent of trade worldwide. Companies that expect to reap the rewards of exclusive ownership must be prepared to aggressively protect their trademarks and copyrights.

      Cozen O’Connor represents a wide range of companies, from small start-ups to multinational blue chips, that operate in diverse industry sectors, including pharmaceuticals, biotechnology, computer software, luxury goods, industrial science, engineering, finance, education, manufacturing, telecommunications, managed services, retail, arts, and sports. We advise clients on clearance, registration, ownership, renewal, and termination rights; secure valuable brands and copyrights; develop acquisition, sales, and licensing strategies; and enforce and defend clients’ IP rights. Our attorneys enjoy close working relationships with U.S. Customs and Border Protection officers around the world. Through these ties, we are able to facilitate prompt seizure of counterfeit materials, a notably effective and inexpensive solution for our clients.

      The trademark and copyright practice is no place for uninspired lawyering. The law, technology, and economic dynamics governing trademarks and copyrights are in constant flux, so this is an area where clients need their most tenacious and vigilant counsel. As leaders in the copyright and trademark arena, Cozen O’Connor lawyers are aware of critical developments as soon as they happen. More importantly, we bring a competitive zeal to the defense of intellectual property that drives our tireless supervision of regulators, peer companies, and would-be infringers.

      Much of our practice revolves around developing tailored protection and enforcement schemes that allow clients to both leverage their intellectual property assets and maintain full control over their marks and copyrights. There are numerous components to a successful anti-counterfeiting and anti-infringement strategy—proper registration, custom enforcement, third party assistance, trade monitoring—and no two clients should employ the exact same approach. We bring all of our legal, business, and technical knowledge to bear on the task of designing the best enforcement protocol for each client.

       

      SERVICE AREAS

      • Research trademark and copyright availability and registrability
      • Handle trademark and copyright clearance, prosecution, and maintenance
      • Conduct trademark and copyright enforcement
      • Negotiate IP agreements and conduct due diligence
      • Register IP with U.S. Customs and Border Protection and serve as liaison to CBP offices around the world on counterfeiting enforcement and seizures
      • Negotiate trademark, trade dress, and copyright licensing and franchising
      • Defend entertainment rights
      • Design online enforcement strategies
      • Represent clients in domain name registration and disputes
      • Develop website privacy policies, and user and membership agreements
      • Handle trademark and copyright litigation

      Experience

      Served as lead trial counsel for Arora Board Review and various doctors in defense of claims of copyright infringement and breach of contract filed by the American Board of Internal Medicine.


      Served as lead trial counsel for Triumbari Corporation in a motion to intervene and a motion to set aside a consent decree filed by Bug Juice concerning product trade dress on a plastic bottle.


      Served as lead trial counsel for Oasys Mobile, Verizon Wireless, AT&T and Thumbplay in defense of a trademark infringement claim filed by Mantra Entertainment.


      Served as lead trial counsel for Beachbody, LLC in prosecuting a copyright and counterfeiting case adverse to Costco Wholesale Corporation.


      Served as lead trial counsel representing Jon Bon Jovi and the Philadelphia Soul Arena Football Team in prosecuting a trademark and copyright dispute.


      Assisted in the IP due diligence of the $2.9 billion Altria Group, Inc. acquisition of John Middleton.


      Served as lead trial counsel for the estate of the author of the song “Disco Inferno,” where we succeeded in negotiating a settlement which confirmed the author's estate was the copyright owner in the renewal rights, could appoint their own administrator of such rights, and could collect licensing fees relating to such rights.


      Served as co-counsel representing National Association for Stock Car and Auto Racing, Inc., where NASCAR won a summary judgment leading to a ruling that NASCAR owns the worldwide copyrights to the NASCAR NEXTEL Cup Series Trophy. This ruling was upheld by the Third Circuit.


      Served as lead counsel for a cigar manufacturer, now owned by Altria, where we won a summary judgment motion on product trade dress protection for the appearance of a cigar which led to a favorable settlement in which the opposing cigar manufacturer agreed to phase out all use of the trade dress in question.


      Served as lead trial counsel for Celgene Corporation, a global biotechnology and pharmaceutical company, where we succeeded in obtaining a favorable settlement whereby a pharmaceutical company agreed to phase out all use of the term IMID.


      Defended our client in a preliminary injunction motion to its right to its name in a $10 million trademark infringement claim and convincing a judge that not enough evidence existed to create a trademark challenge when our client, a top video adventure game manufacturer, was sued by another top producer of video games.


      Represented Fame Jeans Inc. in a trademark matter stemming from a TTAB action relating to mark for clothing. After heated discovery, prevailed on motion to dismiss one count from complaint. Subsequently negotiated multimillion-dollar settlement for Fame Jeans relating to mark.


      Represented Clark Capital Management Group, Inc. in filing dozens of federal lawsuits defending against unauthorized use of its NAVIGATOR marks. This is trademark infringement.


      Represented Cumberland (Sweet'n Low) against Monsanto (Nutrsweet) in a trade dress case for the use of the color blue on sweetener packets . Lower court ruling in our favor was affirmed by the seventh circuit.


      Attorneys

      David M. Albert Associate Philadelphia (215) 665-7277
      Ian R. Blum Member New York (212) 297-2679
      Alphonso A. Collins Member New York (212) 297-2673
      Amy F. Divino Member New York (212) 883-4909
      Elizabeth Lai Featherman Member Philadelphia (215) 665-4603
      Lisa A. Ferrari Member New York (212) 297-2699
      Robert W. Hayes Member Philadelphia (215) 665-2094
      Louis M. Heidelberger Member New York (212) 883.2221
      Erik L. Jackson Member Los Angeles (213) 892-7961
      Julia S. Kim Member New York (212) 883-4998
      Philip Y. Kouyoumdjian Member New York (212) 883-4900
      Thomas Langer Member New York (212) 297-2662
      Lance J. Lieberman Member New York (212) 297-2697
      Camille M. Miller Co-Chair, Intellectual Property Group Philadelphia (215) 665-7273
      Melanie A. Miller Member Philadelphia (215) 665-2714
      Darren S. Mogil Associate New York (212) 883-4976
      Marilyn Neiman Member New York (212) 883-4985
      Andrew P. Nemiroff Member New York (212) 883-4906
      Martin B. Pavane Vice Chair, Intellectual Property Group New York (212) 883-4994
      Thomas C. Pontani Ph.D. Member New York (212) 883-4989
      Martin G. Raskin Member New York (212) 883-4908
      Steven T. Shelton Member New York (212) 297-2674
      Brandon N. Sklar Of Counsel New York (212) 883-2220
      Michael C. Stuart Member New York (212) 883-4992
      David B. Sunshine Member New York (212) 883-4911
      Kyle Vos Strache Associate Philadelphia (215) 665-2747
      Edward M. Weisz Member New York (212) 297-2660
      Justin B. Wineburgh Member Philadelphia (215) 665-2733
      Carl B. Wischhusen Of Counsel New York (212) 883-4967

      Publications


      Facebook v. Typosquatters: Statutory Damages Under Anticybersquatting Consumer

      May 14, 2013

      MORE


      IP: Supreme Court Holds That the “First Sale” Doctrine Applies to Copies of a Copyrighted Work Lawfully Made Abroad [InsideCounsel]

      April 16, 2013

      MORE


      IP: Protecting your brands against online counterfeit sellers [Inside Counsel]

      March 05, 2013

      MORE


      Threats to Brands From Social Media [New York Law Journal]

      May 14, 2012

      MORE


      New Facts in Megaupload Case May Complicate Prosecution [Westlaw Journal Computer & Internet]

      February 22, 2012

      MORE

      Events & Seminars

      There are no UPCOMING EVENTS at this time. Please try back at a later time.

      In The News


      Cozen O’Connor Trademark Group Number One in Pennsylvania

      November 04, 2011

      MORE


      Scott Schwartz on Fox29 news

      March 07, 2011

      MORE

      Related Practice Areas

      Biologics/Biosimilars

      Domains

      e-commerce

      Entertainment Law

      Franchising

      Hatch-Waxman Litigation

      Intellectual Property

      Intellectual Property Litigation

      Licensing & Transfer

      Patents

      Right of Privacy & Right of Publicity

      Trade Secrets & Unfair Competition

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