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Intellectual Property

Intellectual Property Acquisition & Counseling: Luxury Goods

Represented various divisions of LVMH Moët Hennessy Louis Vuitton, S.A. in the intellectual property aspects of their acquisitions of Bliss, Fresh, Benefit, Urban Decay, Hard Candy, Donna Karan, Belvedere Vodka, including overseeing the intellectual property-related due diligence activity and negotiating the intellectual property-related provisions of the transaction documents.

Intellectual Property Acquisition & Counseling: Alcoholic Beverages

Represented a division of LVMH in the intellectual property aspects of its acquisition of Millennium Imports, LLC, which held the worldwide rights to Belvedere and Chopin brand vodkas, including overseeing all due diligence activity, and negotiating all intellectual property provisions of the transaction documents.

Trade Dress Infringement

Represented GIBC, Inc., a well-known micro-brewery (Goose Island Beer), in a trademark infringement action, successfully enjoining a competitor’s use of a beer tap handle that infringed upon GIBC’s trademarked “Goose Head” beer tap handle.

Trademark Infringement: Appellate

Represented Louis Vuitton Malletier, a division of LVMH, in successful appeal to U.S. Court of Appeals for the Second Circuit, obtaining a reversal of the district court’s denial of Louis Vuitton Malletier’s motion for preliminary injunction in a trademark infringement action.

Trademark Infringement: Counterfeiting

Represented Fendi in a trademark infringement action against a major discount retailer, arising out of the defendant retailer’s sale of allegedly counterfeit Fendi handbags, wallets, and other accessories in its warehouse stores.

AA Capital Inc. v. Orecchio

AA Capital Inc. v. Orecchio. Represented the receiver of a failed investment advisor in all litigation to recover assets and insurance proceeds; we recovered significant assets, including the proceeds of directors and officers liability policies and the advisor’s fidelity bond.

Cintas Corp. v. America West Airlines, Inc.

Cintas Corp. v. America West Airlines, Inc. Defended America West Airlines in a case alleging misappropriation of trade secrets.

DeBoulle Diamond & Jewelry Inc. v. De Beers Diamond Jewellers, Ltd.

DeBoulle Diamond & Jewelry Inc. v. De Beers Diamond Jewellers, Ltd. Defended De Beers Diamond Jewellers Ltd. in a trademark infringement action.

GoSmile, Inc. v. CVS Caremark Corporation

GoSmile, Inc. v. CVS Caremark Corporation. Represented GoSmile, Inc. in a trademark and trade dress infringement action.

Hertzberg Ernst & Sons v. Louis Vuitton Malletier S.A.

Hertzberg Ernst & Sons v. Louis Vuitton Malletier S.A. Represented Louis Vuitton in a trademark infringement action; we obtained a consent injunction and the plaintiff’s agreement to pay the legal fees our client incurred in the action.

In re Kmart Corporation: Global Property Services, Inc. v. Kmart Corporation

Global Property Services, Inc. v. Kmart Corporation. Defended Kmart on a breach of contract claim seeking approximately $20 million; we obtained dismissal of the claimant’s damage claim in full.

Louis Vuitton Malletier S.A. v. Dooney & Bourke, Inc.

Louis Vuitton Malletier S.A v. Dooney Bourke. Represented Louis Vuitton Malletier in a successful appeal to U.S. Court of Appeals for the Second Circuit; we obtained a reversal of the District Court’s denial of Louis Vuitton Malletier’s motion for preliminary injunction in a trademark infringement action.

Louis Vuitton Malletier S.A. v. Hyundai Motor Co.

Louis Vuitton Malletier, S.A. v. Hyundai Motor America. Represented Louis Vuitton in a trademark infringement and dilution action; we obtained summary judgment in Louis Vuitton’s favor on its federal dilution claim.

Smith as Plan Trustee for and on behalf of the Estates of Boston Chicken v. Arthur Andersen LLP; Beck v. Bank of America

Smith as Plan Trustee for and on behalf of the Estates of Boston Chicken v. Arthur Andersen LLP; Beck v. Bank of America. Represented Bank of America in third-party actions seeking recovery of more than $1 billion in damages allegedly arising out of national restaurant chain's insolvency; we successfully obtained a summary judgment dismissing the third-party complaints.

T 7 Group, LLC v. Sutton Civil Action

T 7 Group, LLC v. Sutton Civil Action. Represented T 7 Group, a local streetwear company in a trademark infringement action. We obtained an award of our client’s damages and injunctive relief, rejecting the defendant's federal trademark application and transferring the defendant’s infringing domain name to our client.

Zodiac Spirits, Inc. v. Moet Hennessy U.S.A.

Zodiac Spirits, Inc. v. Moet Hennessy U.S.A. Defended Moët Hennessy in a trademark infringement action.

Copyright Infringement: Literary Works

Represented an author in successfully resolving a copyright infringement claim, without the need for litigation.

Copyright Infringement: Textiles

Represented a quilt manufacturer in successfully defending a copyright infringement claim concerning the fabric patterns used for quilts, without the need for litigation.

Dilution

Represented Louis Vuitton in a trademark dilution action against Hyundai Motors America, obtaining summary judgment in our client's favor on its dilution claim.

Entrepreneur Trademark Dispute

Scott represented a local entrepreneur in a heated trademark dispute that had raged for nearly a decade before his involvement. Scott suggested and conducted court-aided mediation in an effort to finally resolve the matter. The court found in favor of Scott's client, awarding damages and injunctive relief, rejecting the defendant's trademark application and transferring its domain name to Scott's client.

Intellectual Property Acquisition & Counseling: Travel Agency Services

Represented Accor S.A. in the intellectual property aspects of its sale of an interest in Carlson Wagonlit Travel, including overseeing all due diligence activity, and negotiating all intellectual property provisions of the transaction documents.

Intellectual Property Audits

Scott has conducted intellectual property audits for more than 25 corporate clients. In the process, he has created social networking policies, web site terms and conditions, and bring-your-own-device policies; conducted on-site inspections leading to the discovery of a number of trade secrets and copyrights; and drafted restrictive covenants and non-disclosure agreements. Scott's tireless attention to detail during these audits has uncovered and protected millions of dollars in corporate assets.

Trademark Infringement

Represented GoSmile, Inc., in a trademark infringement action filed against CVS, alleging that CVS's USMILE product infringed GoSmile's trademark rights.

Trademark Prosecution, Policing & Licensing: Cosmetics

Ongoing representation of several cosmetic companies in connection with the prosecution, maintenance, and licensing of their worldwide trademark portfolios, of which work has involved preparing cease-and-desist letters to infringing entities and initiating litigation to the extent necessary to protect the client’s intellectual property rights.

Trademark Prosecution, Policing & Licensing: Wine & Spirits

Ongoing representation of a prominent wine and spirits manufacturer and distributor in connection with the prosecution, maintenance, and licensing of its worldwide trademark portfolio, of which work has involved preparing cease-and-desist letters to infringing entities and initiating litigation to the extent necessary to protect the client’s intellectual property rights.

Trademark Registration

In a coordinated effort with over 70 foreign associates, Scott cleared and applied to register a multi-national corporate client's new trademark in over 75 countries on the same day. Scott devised the difficult international filing strategy to stave off potential infringers from around the world.