REPRESENTATIVE MATTERS

COPYRIGHT 

  • Advise author of ground-breaking book about CFS in her efforts to protect her copyright (2015 – present)
  • Advised independent film company whether one script was substantially similar to another script (2016)
  • Advised publisher about whether inclusion of excerpts in book was fair use (2016)
  • Advised developer of mobile app about use of data and images (2015)
  • Advised actress in trying to protect aspects of performance characters (2014-2015)
  • Represented small company in settlement of “copyright troll” infringement claim over posting of photo in online forum (2014)
  • Advised publisher of mobile app about protection of database of images (2014)
  • Represented graphic artist in negotiations with publisher for illustration of graphic novel (2014)
  • Advised publisher of Jewish religious books about whether to assert claim for copyright infringement against another publisher (2013)
  • Advised company about whether filing a supplemental copyright registration for a software program to indicate that the program was a work made for hire would preclude a termination claim by former employee who claimed to have written the program, who had settled litigation over ownership of the program by agreeing that the program was a work made for hire (2013)
  • Advised owner of business publication about obtaining key assignment of copyright from contributor (2013)
  • Advised owner of copyright in book about job search strategies about copyright and trademark issues with respect to co-author of book (2013)
  • Advised authors of book about copyright issues involved in engaging software developer to develop a mobile app based on the book and drafted development agreement (2012-2013)
  • Represented national non-profit agency in successfully challenging employee’s effort to claim copyright in work made for hire (2012)
  • Represented national non-profit agency in negotiating agreement with estate of former member concerning letters left to agency (2011-2012)
  • Represented author of sustainability book in review of contract made previously with e-learning course publisher and negotiations to clarify and correct the scope of author’s rights (2011-2012)
  • Represented authors of non-fiction book in negotiations with artist to create illustrations for app based on the book (2012)
  • Advised romance authors about termination and other copyright issues related to their works (2011-2012)
  • Advised résumé Web site creator about copyright and trademark issues in connection with the sale of his company (as counsel to the Paul Ellis Law Group, www.pelglaw.com)(2011)
  • Represented employee in obtaining from employer the right to publish independently a book that
    she wrote while employed, that employer claimed was work made for hire (2008-2009)
  • Advised national non-profit organization concerning use of images in educational audiovisual
    program (2008)
  • Represented games developer in contracts with CBS for development of ARG and online game and with MTV for development of series of online games (2007-2008) Advised documentary producer concerning fair use of news clips in film
  • Represented scientist in refuting copyright infringement claims by co-founders of company with respect to scientific book authored by client (2005)
  • Advised client about potential liability for two software copyright infringement claims by former employees (2003)
  • Represented distributor of jewelry components in copyright infringement suit by manufacturer (2004)*
  • Registered style guides for copyright to protect rights in characters that appear only as illustrations in books (and not as trademarks on products) (2004)
  • Advised publishing client whether company consisting of former employees was infringing copyright
    in client’s advertising materials (2003)
  • Advised non-profit organization about copyrights in writings of well-known mystic/author (2002)
  • Represented defendants in settlement of file-sharing suits by Recording Industry Association of America (2003 -2004)

TRADEMARK

  • Advising Mexican consumer product company on trademark clearance (2016 – present)
  • Representing major book publisher in various trademark matters (2014 – present)
  • Representing major lifestyle company (www.refinery29.com)  in ongoing trademark clearance and prosecution (2014 – present)
  • Overcame Trademark Office objection to application to register name of mobile app based on mark used for creative photographic services (2014)
  • Represented Café Grumpy (www.cafegrumpy.com) in trademark infringement claim against another coffee house (2013)*
  • Advised publisher of magazine formerly published in print about implications for its trademark registration of its conversion to digital publication (2013)
  • Successfully represented owner of UNGLUE.IT, unique Web site service, in federal trademark application (2012-2013)
  • Conducted due diligence and handled i.p. aspects of asset purchase agreement for purchase of stock of online cosmetics and skin care company (2012)
  • Representing eMusic (http://www.emusic.com) in clearing and registering new trademarks domestically and internationally and in policing infringement and in domain-name disputes (2009 – present)
  • Advised creator of Web site parodying Twitter (2011)
  • Represented national non-profit organization in negotiations for consent agreement with national newspaper (2010-2011)
  • Helped French company obtain federal trademark protection for a geographical name based on acquired distinctiveness (2010)
  • Represented media advisory firm in resolving cancellation proceeding concerning its company
    name (2009-2010)
  • Overcame mere descriptiveness objections against trademark applications for magazine titles filed
    by client by successfully showing that the titles had acquired secondary meaning (2002-2005)
  • Conducted trademark clearance for new record label, sports drink, design magazine title, line of women’s merchandise, series of nostalgia books, continuing medical education services, women’s apparel line, lost item return service, and online auction service (2003-2004)
  • Represented USA Track & Field against trademark infringement claims by global consumer products company and in clearing and registering various trademarks (2003-2009)
  • Conducted trademark clearance and successfully prosecuted applications for trademarks for line
    of children’s books and merchandise (1999-2004)
  • Overcame geographic descriptiveness objection for the mark NANTUCKET CHICKS (1999)Obtained service-mark registrations throughout Latin America for investment advisory firm (1999-2002)

LICENSING

  • Represented developer of mobile app on software development agreements (2014-2015)
  • Represented authors of book for parents of premature babies in negotiations with app developer (2012-2013)
  • Drafted and negotiated data subscription agreements and sublicenses for Media Behavior Institute (www.mediabehavior.com), publisher of media and consumer research (2008-2013)
  • Represented media research firm in software license negotiations with a division of Nielsen (2011-2012)
  • Represented media research start-up in negotiations with established national media research firm for license to use aggregated and respondent-level data from national consumer study in new media research database (2011)
  • Represented American distributor of Japanese food products in negotiations with Japanese licensor
    to modify license (2010-2011)
  • Advised database publisher in negotiations to license data to Bloomberg (2010)
  • Rights clearance for paperback edition of nationally acclaimed trade book (2010)
  • Drafted and negotiated DVD production and distribution agreements for publisher of healthcare programs (2007-2009)
  • Drafted licensing agreements for use of content from client’s U.S. professional publications in
    Latin American, Spanish, Lebanese, Russian, and other international editions, in print and online
    (2003 – ongoing)
  • Represented publisher client in negotiations concerning publication of United States edition of
    UK journal (2002-2003)
  • Drafted license agreement for use of Russian content in American edition of Russian publication (2004)
  • Drafted license for translation of national non-profit content into Arabic for distribution in the
    Middle East (2004-2007)

PUBLISHING

  • Represented author of teaching text in negotiations with publisher over rights to electronic online teaching system based on the books (2015 – 2017)
  • Represent major U.S. publishers in prepublication reviews (2014 – present)
  • Represented a group of writers in collaboration agreement for anthology (2016 – 2017)
  • Advised publisher on issues relating to display of trademarks in book (2016)
  • Draft agency agreement for literary agency (2016)
  • Advising literary agent in negotiations with publisher on behalf of authors (2015)
  • Represented ghostwriter concerning breach of collaboration agreement by subject of book (2014)
  • Advised author concerning failure of author website to provide contact information (2014)
  • Advise and represent UK company in seeking and negotiating rights to out-of-print books of deceased authors (2014)
  • Reviewed and advised various authors about literary agency agreements (2014 – 2015)
  • Represented graphic artist in negotiations with publisher for illustration of graphic novel (2014)
  • Advised author of work about entrepreneurship in negotiation of publishing contract negotiations (2014)
  • Conducted prepublication review of memoir by individual mistreated by professional athletes (2014)
  • Conducted prepublication review of memoir about one woman’s dating experiences in New York (2014)
  • Advised literary agent whether former agency was entitled to a commission under publishing agreement option clause (2013)
  • Conducted prepublication review of memoir of former operations specialist in the financial industry (2013)
  • Conducted prepublication review of memoir of daughter’s estrangement from and reconciliation with family (2013)
  • Conducted prepublication review of autobiographical account of doctor charged with performing surgery without a license (2013)
  • Represented first-time romance author in publishing negotiation (2013)
  • Represented romance author in negotiations to revise existing book publishing contract for publication of sequel (2013)
  • Conducted prepublication review of son’s biography of father (2013)
  • Drafted publishing agreement for new small children’s book publisher (2013)
  • Represented author in negotiation of collaboration agreement to ghostwrite autobiography (2012)
  • Represented author of self-help pain relief book (http://triggerpointbook.com/) in negotiations for third edition (2012)
  • Represented attorney in negotiations with New York Law Journal Books to publish treatise (2012)
  • Represented physician in negotiations with literary agent and review of Scribner publishing agreement (2012)
  • Conducted prepublication review of autobiography of top R&B singer (2011-2012)
  • Representing various romance writers in seeking reversions of rights from Harlequin, Kensington and Dorchester (2011-2012)
  • Conducted prepublication review of book by Christian author and represented author in review
    of publishing agreement (2012)
  • Conducted prepublication review of trade book about the trade deficit (2011-2012)
  • Represented author in negotiations with Algonquin to publish autobiographical work (2011)
  • Advised authors of non-fiction book about whether they had the right, under their book publishing agreement, to produce a mobile app based on the book (2011)
  • Represented well-known children’s book author and illustrator in negotiations with HarperCollins concerning exploitation of electronic multimedia rights (2010-2012)
  • Represented estate of deceased academic author with respect to publication of new volume
    of her works (2011)
  • Represented professor at Culinary Institute of America in negotiations with publisher for second
    edition of textbook (2011)
  • Represented author in dispute with vanity press (2011)
  • Represented author in negotiations with ICM of collaboration agreement with journalist (2011)
  • Conducted prepublication review of autobiography of well-known television talk show host (2011)
  • Represented authors of textbook on computer program management in review and negotiation of publishing agreement for e-learning courses (2011)
  • Represented well-known architecture/design author in negotiations to write biography of interior designer and in negotiations with W.W. Norton to publish the book (2010)
  • Represented author in negotiations for publication of two works by McGraw-Hill (2009-2010)
  • Represented new publishing company whose principal also serves as a co-author in development of publisher and co-author agreements (2009-2010)
  • Represented established romance novelist in securing reversions of rights and in negotiations with E-Reads for exploitation of those rights (2010)
  • Conducted prepublication review of autobiography of television personality (2010)
  • Conducted pre-publication review of manuscript on immigration for non-profit organization (2010)
  • Represented publisher of new legal periodical with respect to various publication contracts, privacy policy, and other matters (2008-2009)
  • Advised literary agent concerning possible ways to mitigate risk where author could not go back and obtain permissions from people mentioned in non-fiction book (2008)
  • Represented author in negotiating buy-out of uncooperative co-author (2008)
  • Drafted and negotiated collaboration agreement between author and subject expert contributor (2007)
  • Represented publisher in dispute with author (2007)
  • Conducted prepublication review of book about relationships between mothers and nannies (2006)
  • Negotiated book publishing agreement and prepared contribution and related agreements for “Smithsonian Baseball: Inside the World’s Private Collections” by Stephen T. Wong (HarperCollins 2005) and children’s edition (2007)
  • Negotiated book publishing agreement and advised on copyright, permissions, and related issues with respect to “The Country Houses of David Adler” (W.W. Norton & Company 2001), “Francis Elkins: Interior Design” (W.W. Norton & Company 2005), and Michael Taylor: Interior Design (W.W. Norton
    & Company 2009) by Stephen M. Salny
  • Negotiated two-book publishing agreement with major trade publisher on behalf of prominent author/illustrator Susan Branch
  • Conducted prepublication review of book about Michael Jackson (2005)
  • Represented attorneys with top NYC law firm in negotiations with treatise publisher (2004)
  • Negotiated settlement of dispute among co-authors of health/nutrition book including resolution of issues in the publishing agreement related to client’s right to sell the book over the Internet (2004)
  • Drafted collaboration agreement between author and ghostwriter of medical book (2005)
  • Conducted prepublication review of book about tough love rehabilitation programs for
    troubled teens (2005)
  • Conducted prepublication review of book about agency that provides household help to
    famous people (2005)
  • Conducted prepublication review of book about green living (2004)
  • Conducted prepublication review of book about autism (2004)
  • Advised publisher about securing reversion of rights in work that it wanted to publish, from the original publisher (2004)
  • Drafted and negotiated joint venture agreement for publication of new design magazine, Array (www.arrayny.com), based on publisher’s original business model (2003-2006)
  • Represented author in dispute with publisher, resulting in rescission of purported termination
    of publishing agreement
  • Prepared author contribution agreements for various publications with different kinds of author arrangements and relationships

ADVERTISING/MARKETING/ENDORSEMENTS

  • Advise media agency in negotiations of media strategy and media buying agreements with its clients (2012 – present)
  • Prepared agreement among two creative agencies and client for development of brand and social strategy and development of collateral materials (2013)
  • Represented physician in negotiations with company to endorse its products and with respect to agreement to appear on the Dr. Oz show (2012)
  • Represented ob-gyn physician in negotiation of agreement to endorse line of Kimberly-Clark
    products (2012)
  • Advise clients about how to comply with junk fax and e-mail laws (ongoing)
  • Advise client how to structure trade show contests to avoid liability (ongoing)
  • Draft sweepstakes rules and review collateral materials for compliance (ongoing)
  • Advised international technology company about use of slogan in new advertising campaign (2007)
  • Advised international technology company concerning false advertising claims (2008)
  • Advised international technology company about disclaimer to put in commercial (2007)
  • Advised manufacturing company concerning application of charitable solicitation statutes to planned advertising campaign (2004)
  • Advised prominent non-profit organization about use of photograph in advertising campaign (2004)

CONTESTS AND SWEEPSTAKES

  • Drafted contest rules for mobile app developer (2015)
  • Reviewed rules for UK entertainment company contests (2014)
  • Draft rules for contests run by theater producer (2011- present)
  • Draft rules for contests by company specializing in data for eyewear manufacturers (2007-present)

WEBSITE/MOBILE APP TERMS

  • Drafted terms of use and privacy policy for flirting mobile app (2014-2015)
  • Drafted terms of use and consumer-facing privacy policy for home schooling sites (2014 -2015)
  • Drafted terms of use and consumer-facing privacy policy for virtual assistant site (2014-2015)
  • Drafted terms of use and consumer-facing privacy policy for mobile app for fashion industry (2014)
  • Drafted consumer-facing privacy policy for major charitable organization (2014)
  • Drafted terms of use and consumer-facing online privacy policies for various divisions and subsidiaries of healthcare communications company (www.jhihealth.com)
  • Represented many clients in licensing of new media rights (see above under copyright and publishing)
  • Drafted Web site terms of use and online privacy policies for other Web sites in various fields (e.g., physician search, jewelry auction, professional networking, job posting, online magazine subscription)

* with litigation counsel