Early Dispute Resolution

Acting as Neutral

Members of the firm have acted as mediators and arbitrators in cases for the U.S. District Court for the Southern and Eastern Districts of New York, the National Association of Securities Dealers (NASD), the CPR International Institute for Conflict Prevention & Resolution (CPR) and The International Trademark Association (INTA). These proceedings have involved the following neutrals and the following issues:

Mediator

1. Arthur J. Greenbaum

   • The scope of a trademark license and the damages caused by the licensee operating in product and geographic areas which were beyond the scope of the license.
   • The trademark rights owned by a local retailer/distributor in a mark which conflicted with a national distributor's registered mark. There was no problem so long as the local user remained local. The difficulty arose when the local company started to sell on the internet.
   • There were a number of mediations which involved similarities in (a) two dimensional logos or (b) product design marks. In the product design cases the word marks used in conjunction with the designs were completely different.
   • A defendant retailer purchased and sold at retail counterfeit trademarked merchandise mixed in with genuine gray market merchandise bearing the same trademark. The plaintiff, a manufacturer, prohibited its authorized retailer and distributors from selling to unauthorized retailers.
   • A manufacturer objected to ratings which its products received from an independent rating agency. The dispute also degenerated into other issues.
   • A restaurant developed a local reputation for one of the items on its menu. A customer of the restaurant was in the wholesale trade for that type of item. He and the restaurant owner formed a corporation to sell the item. Years later that item, which bear the trademark of the local restaurant (which still operates as a single restaurant), has become a huge national success. There never was a written agreement dealing with the trademark rights and the question was who owns what rights in the trademark.
   • Plaintiff owned ships which transported bulk agricultural and military cargo to ports worldwide. Plaintiff's customers were primarily the U.S. and other governments. Defendant did not own ships, but assisted commercial shippers to efficiently transport cargo of all kinds by sea containers. The parties were identified by marks which consisted of the same first word (a common suggestive term) followed by a different generic term. Plaintiff was the first user, but its mark was unregistered. Defendant's mark was registered.
   • Plaintiff owned a world famous mark and several famous and well known trade dresses for a variety of high priced consumer goods. Plaintiff's mark and trade dresses were registered. Defendant is a multi-billion dollar off-price retailer who was accused of pervasive infringements and the sale of some counterfeited merchandise.

1. Richard Mandel

   • Dispute involving copyright and trademark claims regarding ownership of rights in characters
   • Dispute involving copyright derivative work and music publishing rights in songs
   • Dispute involving allegations of civil rights violations and discrimination
   • Dispute involving personal injury claim

Arbitrator

1. William M. Borchard

   • Dispute between two magazines as to whether initially infringing logo was changed enough.

1. Arthur J. Greenbaum

   • A large corporation accused an equally big competitor of misappropriating part of its trade dress for use in a television commercial.
   • A licensor licensed its world famous trademark for use on a product which it did not make or sell. The license provided for substantial minimum yearly royalties. The licensee abandoned the license while it still had several years to run. The licensor sued for the minimum unpaid royalties and the licensee defended on the ground that because of changes in the licensor's business it was impossible to continue to manufacture the licensed product.

1. J. Christopher Jensen

   • Public arbitrator for the NASD in various disputes between brokers and customers.
   • CPR arbitrator in dispute between two major telecommunications companies over a most favored nations clause in a patent license.
   • Member of the panel of arbitrators for the United States District Court for the Eastern District of New York.

1. Richard Mandel

   • Breach of contract dispute between co-producers of a theatrical production as to appropriate division of royalties.
   • Breach of contract and copyright infringement dispute between television station and writer/producer regarding the publication rights to a television show.
   • Breach of contract dispute between artist and manager regarding payment of management fees.
   • Breach of contract dispute involving radio programming fees.

Representing a Party in Mediation

1. Cheerleader Uniforms -- Copyright Infringement Claim.

   Represented clothing manufacturer seeking relief against alleged design infringement by competitor.

2. Electrical Appliance -- Contract Claim.

   Represented home care produced manufacturer seeking alleged distribution agreement remedies. Mediation took place after fact discovery had closed but before expert discovery had commenced.

3. Fabric Design -- Copyright Infringement Defense.

   Represented holiday decorations manufacturer in defending against copyright infringement claim.

4. Jewelry Design -- Copyright Infringement Claim.

   Represented jewelry company seeking relief against alleged design infringement by competitor.

5. Model Car -- Infringement Claim.

   Represented car manufacturer seeking alleged trademark, trade dress and design patent infringement remedies against former licensee for model cars.

6. Nutritional Supplement -- Claim.

   Represented manufacturer seeking injunctive relief against a competitor using similar mark. Mediation took place after denial of motion for preliminary injunction.

7. Newsletter -- Copyright Infringement Claim.

   Represented newsletter publisher seeking relief against alleged plagiarism by competitor.

8. Religious Book -- Copyright and Trademark Infringement Claim.

   Represented publisher seeking relief against unauthorized translation.

9. Software -- Copyright Infringement Claim.

   Represented software trade association seeking denial of declaratory relief by unauthorized user of business software.

10. Toy -- Copyright Infringement Claim.

    Represented toy bear manufacturer seeking relief against alleged copyright infringer.

11. TV/Music -- Copyright Infringement Claim.

    Represented broadcast TV network in dispute over use of production music in soundtrack of TV series.

1. Representing a Party in Arbitration

   • Alcoholic Beverages -- Trademark Claim.

     Represented French cognac bottler claiming breach of agreement and trademark license by U.S. distributor.

   • Construction -- Contract Claim.

     Represented customer claiming breach of construction contract for renovation of New York City headquarters.

   • Home Video -- Contract Claim.

     Represented joint venturer claiming breach of agreement to create home videos.

   • Pharmaceutical -- Contract Claim.

     Represented party claiming breach of generic pharmaceutical drug manufacturing and distribution agreement.

   • Software -- Contract Claim.

     Represented automobile restore company claiming breach of implementation agreement concerning software for a claims adjustment workflow system.

 

Prior results do not guarantee a similar outcome.