Richard S. Mandel

Partner

• 1133 Avenue of the Americas, NY 10036-6799 Ph: 212.790.9291Fax: 212.575.0671

Richard is a litigator focusing on intellectual property matters, including copyright, trademark, unfair competition and Internet-related issues.

Cases

• Among the cases Richard has successfully handled are the following: 
• Capitol Records, LLC v. ReDigi, Inc., 12 Civ. 95 (RJS) (S.D.N.Y. 2013) – obtained summary judgment on behalf of plaintiff record company on claims for direct and secondary copyright infringement against start-up technology company purporting to provide “the world’s first and only online marketplace for digital used music.”  In case of first impression, Court ruled that the first-sale doctrine did not permit lawful owners of digital music to re-sell music files because such activities involved reproduction of the copyright owner’s sound recordings. To read the decision, click here.
• New York Yankees Partnership v. Evil Enterprises, Inc., 2013 TTAB LEXIS 72 (T.T.A.B. 2013) – represented New York Yankees in successfully opposing clothing company’s application to register mark BASEBALLS EVIL EMPIRE.  The Board held that the Yankees club had established prior rights in EVIL EMPIRE designation based on extensive use of that term by the public, press, fans and media to refer exclusively to the New York Yankees baseball club, and concluded that applicant’s mark would result in a likelihood of confusion among consumers when applied to clothing and would falsely suggest a connection with the Yankees.  To read the decision, click here.
• The Hershey Company v. Promotion In Motion, Inc., No. 07-CV-1601 (SDW) (D. N.J. 2013) – represented defendant candy manufacturer in defeating Hershey’s claims for trademark infringement and dilution. Following bench trial, Court ruled that defendant’s proposed use of SWISSKISS for Swiss chocolates did not infringe or dilute Hershey’s KISSES trademarks.  To read the decision, click here.
• Ferrari S.p.A. v. Exoto, Inc., No. CV 99-10205 (DSF) (C.D. Cal. 2010) - obtained order enforcing settlement agreement on behalf of Ferrari prohibiting use of its trademarks in connection with defendant's sale of miniature replica model cars.  Following Ferrari's successful appeal to the Ninth Circuit reversing the original denial of Ferrari's motion, the District Court held that no valid license had ever been culminated between Ferrari and Exoto overriding the terms of their original settlement agreement, and that the post-settlement negotiations did not otherwise create a valid estoppel or laches defense precluding enforcement of the settlement agreement.  The Court also rejected Exoto's fair use defense, ruling that any such defense had effectively been waived by virtue of the parties' earlier settlement prohibiting use of Ferrari's marks in any context.
• Wolfgang Puck v. W. Steak Corp., No. CV 08-3394 (GAF) (C.D. Cal. 2008) - defeated preliminary injunction motion by chef and restaurateur Wolfgang Puck seeking to prevent opening of restaurant in Beverly Hills, California under the name 'Wolfgang's Steakhouse by Wolfgang Zwiener.' Court held that parties' agreement permitted use of the selected name notwithstanding any evidence of confusion in the marketplace.
• Sanofi-Aventis v. Advancis Corp., 453 F. Supp.2d 834 (D. Del. 2006) - represented multi-national drug manufacturer in successful trademark infringement suit against publicly traded start-up drug company.  After bench trial, Court held that ADVANCIS name was confusingly similar to AVENTIS trademark, and also violated state dilution laws.
• Major League Baseball Properties, Inc. v. Opening Day Productions, Inc.,385 F. Supp.2d 256 (S.D.N.Y. 2005) - obtained summary judgment on behalf of Major League Baseball Properties granting declaratory relief and dismissing counterclaims alleging trademark infringement of the 'Opening Day' trademark and misappropriation of ideas allegedly submitted to Major League Baseball regarding sponsorship program.
• Malaco Leaf, AB v. Promotion In Motion, Inc., 287 F. Supp.2d 355 (S.D.N.Y. 2003) - obtained summary judgment for defendant dismissing case brought by the manufacturer of the popular 'Swedish Fish' gummy candy involving product configuration and packaging trade dress claims, trademark infringement and dilution claims and false advertising claim.
• Prime Media, Inc. v. PRIMEDIA Inc., 33 F. Supp.2d 932 (D. Kan. 1998) - defeated preliminary injunction motion brought against PRIMEDIA magazine publisher. After an evidentiary hearing, the Court ruled that company's newly adopted name did not infringe rights of custom publisher previously using 'Prime Media' as its corporate name and service mark.
• Marcy Playground, Inc. v. Capitol Records Inc., 6 F. Supp.2d 277 (S.D.N.Y. 1998) - defeated preliminary injunction application against Capitol's hit record album 'Marcy Playground' based on alleged claim that record's producer credits were false, in violation of section 43(a) of the Lanham Act. The Court held that plaintiffs failed to establish irreparable harm or a strong likelihood of success on the merits.

Prior Experience

• Weil, Gotshal & Manges, Associate (1985 - 88)

Articles & Speeches

• ABA's 25th Annual Intellectual Property Law Conference - Speaker, Taking and Defending Depositions in Trademark Cases (April 2010)
• Speaker - CLL Food and Hospitality Seminar (2008)
• PLI - Speaker, Understanding Basic Trademark Law (2004 - 2009)
• Fancy Food Show - Speaker, Protecting the Value of Your Brand (June 2003)
• INTA Annual Meeting - Speaker, Discovery Tasks in Litigation (May 2002)
• New York Law Journal - Outside Counsel column on domain name disputes (2002)
• New York Women in Film & Television/AAA - Speaker, Mediation in Entertainment Industry (Feb 1999)
• New York State Bar Association - Speaker, Copyright Developments (1996)
• Jewelry Expo - Speaker, Copyright Basics (1996)
• IP Litigator - Copyright Column (1995 - 1998)
• Copyright Society - Speaker, Expert Witnesses (1995)
• 'Liquor Advertising:  Resolving the Clash Between 1st and 21st Amendment,' Note (New York University Law Review, April 1994)

Honors & Awards

• Named in New York "Super Lawyers" in Intellectual Property Litigation (2007 - 2012)

Affiliations

• New York State Bar Association - Co-Chair, Literary Rights Committee of the Entertainment, Arts & Sports Law Section (2004 - 2006)
• U.S. District Court, Southern District of New York - Volunteer Court Appointed Mediator
• American Arbitration Association - Arbitrator, Commercial Panel
• Cardozo School of Law - Adjunct Professor, Advanced Trademark Law (1995 - 1998)