BakerHostetler - US Trademark Rankings 2023
Firm Overview:
Prevailing for Hermès International against Mason Rothschild in a first-of-its-kind freedom of artistic expression case applied to NFTs thrusts BakerHostetler into the limelight this year.
The IP division of the full-service firm comprises 130 lawyers across 17 US offices coast to coast. The trademarks team provides comprehensive advice to clients spanning AI, construction, food and beverage and media sectors with the strategic growth of brands while protecting their trademark assets. Non-contentious advice includes trademark portfolio and licensing. Trademark disputes include takedowns with online issues through to jury trials. The team manages an extensive network of foreign counsel to provide clients with international coverage.
Team Overview:
The “excellent” team includes Deborah Wilcox, the head of Baker’s Trademark and Copyright team, a skilled litigator and IP attorney. With over three decades of experience, she is a ‘go-to’ for international matters and has adapted her legal skills to evolving technologies in NFTs, mobile apps and social media.
Rising star Lisa Bollinger receives praise from a client for being “totally committed to the case”, she “worked tirelessly to protect [our] interests, communicated effectively and had a deep knowledge of all the facts and legal issues surrounding the case”. Bollinger’s focus includes managing global portfolios and the expansion and enforcement of trademarks.
Mark Tidman is chair of the IP Group, bringing over 30 years of experience in worldwide portfolio management. Based in Washington, Tidman is an expert in trademark clearance, brand expansion and enforcement for companies of all sizes. The team is bolstered by Heather McDonald, a “stand-out in prosecution”, who is particularly experienced with IP enforcement matters and actively assists with drafting and lobbying for new legislation at federal and state level.
Key Matter:
- Hermès Int'l v Rothschild No. 1:22-cv-00384-JSR, Slip. Op. at 11-12 (S.D.N.Y Feb. 2, 2023).In 2022, Luxury brand Hermès brought a Southern District of New York case against Mason Rothschild, an artist who created and sold “MetaBirkin” non-fungible tokens (NFTs) depicting a digital version of Hermès’ luxury Birkin bag.
- Hermès argued Rothschild benefited from Birkin’s name and consumers were purchasing the NFTs assuming they were affiliated with Hermès.
- Rothschild relied on the First Amendment right, claiming the NFTs fell under the freedom of artistic expression, and the Rogers v Grimaldi legal test, arguing he could use the Birkin mark if artistically relevant and not misleading.
- In February 2023, the jury ruled in favour of Hermès, agreeing the MetaBirkin NFTs constitutes trademark infringement, trademark dilution and that the use of MetaBirkins.com equals cybersquatting. The eagerly awaited decision set a first-of-its-kind precedent for NFT creators and a limit on artistic expression in US trademark law.
- Hermès was represented by BakerHostetler’s Deborah Wilcox, Oren Washavsky, Gerald Ferguson, Kevin Wallace, Lisa Bollinger Gehm, Jason Oliver, Jessica Fernandez, Megan Corrigan, and Francesca Rogo.
Clients:
Aerion, Best Accessory Group, Big Lots Stores, Blackhawk Network, Campos EPC, Cardinal Health and other Cardinal Health entities, Culligan International, Drips, Henny Penny, HSN, IGT and IGT Canada Solutions, Johnson & Johnson, Johnson Matthey, The Hanson Group, Guardian Innovations, The JM Smucker Company, The King Center | The Center for Nonviolent Social Change, Zekelman Industries, Z-Modular and Z-Modular Canada, FKA Vectorbloc.
Copyright © worldipreview.com 2024 | Headless Content Management with Blaze