The firm obtained partial summary judgment dismissing the plaintiff's entire $5.6 million claim for damages against our client Universal Music Corp. d/b/a Universal Music Publishing Group ("UMPG") in a license dispute concerning a celebrity fragrance for Prince, the famous recording artist. UMPG had licensed to plaintiff Revelations Perfume & Cosmetics, Inc. ("Revelations") the right to use Prince's name, likeness, and 3121 album title and mark in connection with fragrance products. The products failed in the marketplace, and Revelations sued UMPG in the Commercial Division of New York State Supreme Court, alleging that UMPG breached the parties' contract by failing to "instruct and use reasonable efforts to cause" Prince to promote the products. (Revelations also alleged fraud and tortious interference against Prince and his entertainment company, both of whom are represented in the lawsuit by other counsel.) As its sole claim for damages against UMPG, Revelations sought $5.6 million in alleged "lost profits." UMPG, without admitting liability, moved for partial summary judgment on the damages claim, arguing that Revelations failed to raise an issue for trial on any of the three elements it must prove to obtain lost profits for breach of contract under New York State law: that the parties contemplated lost profits liability when they entered into the contract; that the lost profits are directly traceable to UMPG's alleged breach; and that the lost profits are capable of proof with reasonable certainty (i.e., not speculative). In an August 3, 2011 opinion, Justice Bernard J. Fried granted UMPG's motion, finding that Revelations failed to raise a triable issue as to any of the elements, much less all three as the law requires.

The firm obtained summary judgment in favor of client People for the Ethical Treatment of Animals (“PETA”) on a copyright infringement claim brought against PETA in the U.S. District Court for the Southern District of New York. In its 2008 complaint, plaintiff The Institute for the Development of Earth Awareness (“IDEA”) alleged that PETA’s Animal Liberation Project Campaign (“ALP”) infringed a book written by IDEA’s principal, Marjorie Spiegel, titled The Dreaded Comparison: Human and Animal Slavery. The Court concluded that: (i) IDEA was impermissibly trying to copyright “unprotectable ideas based largely on facts, many of a historical nature”; (ii) the idea of comparing human and animal oppression in these time frames was not even original to Ms. Spiegel or IDEA, as the ideas had been discussed before in numerous other works; (iii) there was “nothing original” about the book’s use of third-party quotations from well-known thinkers; (iv) IDEA’s claims alleging that PETA copied the book because both the ALP and the book allegedly use juxtaposed images should be rejected, holding that “it is commonplace for a work comparing or contrasting seemingly disparate events to contain side-by-side illustrations”; and (v) after a comparison of the works, IDEA’s claim that the book and the ALP had a similar “total concept and feel” as the result of combining allegedly similar elements should be rejected. In sum, the Court concluded that “no reasonable jury . . . could find that PETA engaged in unauthorized copying of original components of [plaintiff’s] work.”

The Firm successfully defended our clients The Estee Lauder Companies Inc. and Clinique Laboratories LLC against a motion for preliminary injunction filed by Rodan & Fields, LLC. The lawsuit, commenced in June 2010, alleges that Clinique, a subsidiary of Estee Lauder, infringed the design of Rodan & Fields’ packaging for its dermatological regimen kits. Rodan & Fields’ packaging consists of a white pharmacy-style cardboard bag with a wide color‑coded stripe in the top portion, whereas Clinique packages its dermatological solutions kits in a transparent cellophane bag with a two-tone cardboard insert, also having a stripe of contrasting color at the top. Estee Lauder and Clinique were able to successfully show to Judge Lucy H. Koh of the Northern District of California that “far from being ‘strikingly similar,’ the parties’ bags are substantially different in terms of overall appearance,” thereby eliminating any likelihood that consumers would confuse the two, and that the overall look of Rodan & Fields’ bags is both commonplace and functional – and, as such, not protectable.

We successfully represented Edgar Rice Burroughs, Inc. (ERB)--successor to the famous author of the Tarzan and John Carter of Mars stories--in overcoming an opposition to its application to register the mark JOHN CARTER OF MARS for a variety of toys and games. The opposer alleged that when ERB's application should be denied because ERB (i) lacked a bona fide intention to use the mark, and (ii) committed fraud on the USPTO by misrepresenting such intention to use. According to the opposer, ERB acted in bad faith by filing the subject application while ERB's prior application for the same mark for identical goods was still pending. The opposer pointed to language in the legislative history of the Trademark Law Revision Act of 1988 suggesting that the filing of successive applications to register the same mark for identical goods can be evidence that the applicant lacks a bona fide intention to use the mark and is instead merely seeking to reserve a valuable mark to the exclusion of others. The TTAB granted our motion for summary judgment on ERB's behalf, finding that there was ample evidence of ERB's bona fide intent, notably including ERB's entry into a major motion picture deal with Disney for the John Carter of Mars property two weeks before filing the application. We subsequently defeated the opposer's motion for reconsideration.

The firm was part of the defense team for clients Time Warner Inc., Warner Communications, Inc., Warner Bros. Entertainment Inc., Warner Bros. Television Production Inc. and DC Comics in the ongoing litigation in the U.S. District Court for the Central District of California over the copyright termination interest in certain works featuring the Superman and Superboy characters allegedly owned by the heirs of co-creator Jerry Siegel. The decisions in which the firm was involved resulted in a number of significant decisions in the complex area of copyright termination and in other areas, including res judicata, jury trial rights, the fair market value of copyright rights in the entertainment arena, among others. Summaries of decisions and links can be found by clicking through "view case history" above.

Following a trial, the court held that the defendant infringed the copyrights in our client's popular Spin Trophy, by selling a trophy that court found "strikingly similar" to the Spin Trophy. The judgment permanently enjoins the defendant from selling the infringing trophy and orders it to pay Crown its profits from the infringement. In July, 2008, the Court granted our motion to recover attorneys' fees. The Court said that Crown and the Firm "prevailed in every stage of the litigation" and that Crown was entitled to recover its legal fees in full. The Court went on to write that "Fross Zelnick hourly rates for legal services have repeatedly been found to be fair by courts evaluating them," and that "as a result of Fross Zelnick's expertise in the field of copyright law, it does not expend extra time to understand the issues involved in a copyright case, and therefore spends only a reasonable number of hours to litigate the case." On April 21, 2009, the U.S. Court of Appeals for the Second Circuit affirmed the district court ruling on infringement and damages, as well as the award of Crown's attorneys' fees.

In trademark case concerning the ENTREPRENEUR OF THE YEAR mark, the Firm won a motion to dismiss declaratory judgment action against one Ernst & Young ("E&Y") party for lack of personal jurisdiction, and won motion to transfer the action against the remaining E&Y parties and consolidate with E&Y's infringement action in New York, ultimately leading to a favorable settlement for our clients.