Firm and Client News

· Firm Leads Anti-Counterfeiting Actions for Altadis U.S.A.

Chuck Grimes has coordinated a major and extraordinarily successful anti-counterfeiting program for firm client Altadis U.S.A. in South Florida. Altadis, which makes the U.S. versions of well-known cigar brands like H. Upmann, Montecristo, and Romeo y Julieta, ranks among the biggest cigar manufacturers in the world. On behalf of Altadis, Chuck has led the fight against the trade of illicit cigars in South Florida for the past several years. The anti-counterfeiting campaign has led to a number of criminal prosecutions, civil judgments for substantial monetary damages and the seizure of thousands of boxes of counterfeit cigars.

 

· Successful Trial Verdict in Toy Inventor Dispute

On February 6, 2006 following a three week trial in the United States District Court for the District of Connecticut, a jury found that toy company Fisher-Price misappropriated a concept developed by firm client Design Innovation for use in the Fisher-Price Rescue Heroes line of products. The verdict was reached in the case of Design Innovation v. Fisher-Price, Inc. The jury awarded Design Innovation damages of $1.7 million and also found Fisher-Price guilty of unfair competition, having acted in bad faith in its misappropriation of the toy concept.

Design Innovation, in association with Victor Reiling, another toy inventor, developed a concept that was designed to be used in Fisher-Price's existing Rescue Heroes product line. The toys included police officers, firefighters and other emergency personnel, all of whom wear backpacks. Design Innovation and Reiling conceived of an idea for incorporating a still or moving image into each of the Rescue Heroes' backpacks. This would allow a child to view the respective characters on rescue missions, thus increasing the play value of the toys.

Design Innovation and Reiling had presented their concept to Fisher-Price in 1998, who informed them that they were genuinely excited by the concept and then paid the inventors two option fees to secure the concept and prevent it from being taken elsewhere. However, Fisher-Price eventually returned the concept.

In 2001, Fisher-Price introduced a line of action figures and related accessories that incorporated images in their backpacks -- similar to the concept presented to them by Design Innovation and Reiling. These lines included Fisher-Price's Voice Tech Video Mission, Voice Tech Mission Command, Mission Select and Telly Photo products.

Fisher-Price argued that they had independently created these products after having seen and optioned the Design Innovation and Reiling concepts. The jury rejected this argument. Reiling's claims were dismissed by the court before trial on legal grounds.

Greg Battersby, Jed Ferdinand, Russ Dize and Susan Schlesinger handled the case on behalf of Design Innovation, along with Peter M. Nolin and Jay H. Sandak of Sandak, Hennesey & Greco, LLP of Stamford, CT.

 

· Firm Helps Archie Comics Celebrate its 65th Anniversary

Archie, Jughead, Betty, Veronica and the entire Riverdale family turn 65 years young this year, and firm managing partner Chuck Grimes is helping Archie Comic Publications, Inc. celebrate with a diverse mix of media and promotional events. Highlighting the Archie Comics 65th Anniversary celebration will be a comprehensive national media outreach featuring Archie Comic Publications Inc. The popular Archie Comic titles and Archie website (www.archiecomics.com) will also provide specially prepared content saluting Archie and friends, and the innumerable contributions they have made to the lives of kids and communities across America throughout the decades. The company will also unveil a number of online cross-promotions, including a promotional campaign with high-profile teen magazine “Girls Life,” that will reintroduce Archie Comic Book character Katy Keene. Readers will be invited to submit their own fashion designs for Katy, Betty and Veronica – and the winning designs will be worn by the characters for a special Archie 65th Anniversary issue.

In addition, Chuck will also continue to assist Archie Comics Entertainment, LLC, the entertainment and licensing affiliate of Archie Comic Publications, Inc., to develop, produce and distribute original projects for television, film and home video, music, live events and the Internet as well as to exploit the licensing and merchandising of Archie’s enduring brands across all global markets.

 

· Firm Develops Major Celebrity Licensing Program

Greg Battersby negotiated a worldwide master license agreement on behalf of Jessica Simpson, one of the most popular entertainers and most recognized people in the world today. Since the release of her highly successful debut album in 1999, Ms. Simpson has risen to international stardom as a recording artist, television personality and movie star. The master license covers a broad range of licensing and merchandising rights with respect to the name, image and likeness of Jessica Simpson. In addition, Jim Coplit is responsible for a worldwide trademark filing program on behalf of Ms. Simpson, and Jed Ferdinand handles her worldwide enforcement and is currently defending her in a $100 million breach of contract action pending in state court in New York.

 

· Successful Trial Verdict for South Beach Beverage Company

Firm client South Beach Beverage Company, Inc., maker of the highly popular SOBE line of herbal teas and juices, secured a trial verdict in its favor in a trademark opposition proceeding against the owner of the mark SOBE SPARKLING WINE. In South Beach Beverage Company, Inc. v. Stephen Schwartz, Opposition No. 91-121457, the Trademark Trial and Appeal Board held that there was a likelihood of confusion between South Beach’s SOBE mark for use in connection with non-alcoholic beverages and the applicant’s SOBE SPARKLING WINE mark for use in connection with alcoholic beverages. Jed Ferdinand handled the case for South Beach.

 

· Firm a Major Presence at 2006 American International Toy Fair and
2006 Licensing Show

Once again, the firm had a major presence at this year's New York Toy Fair and Licensing Show. Jim Coplit moderated a panel discussion on intellectual property and licensing issues at Toy Fair. Greg Battersby moderated a panel discussion on royalty rates at Licensing Show, while Jim Coplit moderated the “Legal 101” seminar and Jed Ferdinand spoke about trademark and copyright basics. Greg, Jim and Jed also participated in “Ask the Experts” consultations at Licensing Show.

 

· G&B Members Address Prominent Associations Regarding Intellectual Property and Licensing

Greg Battersby and Jim Coplit participated in LIMA's Anatomy of a License Agreement program in New York City in March, 2006. Greg also did the Los Angeles version of the program later that month.

Jim Coplit spoke on the legal issues surrounding licensing programs as part of an undergraduate course on licensing given at New York University in March 2006.

Greg Battersby spoke at ToyCon 2006 in Arizona in May, 2006.

Jim Coplit will again participate in Franklin Pierce Law School’s Advanced Licensing Institute in July 2006, speaking on Character Licensing.

· Partners Assume Association Leadership Roles

Greg Battersby continues to serve as counsel to the International Licensing Industry Merchandisers' Association ("LIMA") and as chairman of its education committee.

Jed Ferdinand has been appointed to the Executive Committee of the Intellectual Property Section of the Connecticut State Bar Association.