Eric J. Shimanoff

Partner

• 1133 Avenue of the Americas, NY 10036-6799 Ph: 212.790.9226Fax: 212.575.0671

Eric is a litigator with a broad range of experience, focusing primarily on intellectual property matters, including copyright, trademark, unfair competition, patent, right of publicity and Internet-related issues. Eric has counseled and litigated on behalf of clients in a wide range of industries, including music, fashion, sports, pharmaceutical, cosmetics, hair and personal care, product development, financial and insurance services, healthcare, software, retail, video game, publishing, entertainment, candy and confections, apparel, automotive, scientific research, art and various consumer products.

Eric has extensive experience in both state and federal courts, in contested proceedings before the Trademark Trial and Appeal Board and in UDRP domain name dispute proceedings before the World Intellectual Property Organization and the National Arbitration Forum. Eric also conducts clearances and prosecutes applications for trademarks and copyrights worldwide.

Eric has worked on several matters seeking to provide rights for gays and lesbians, including: assisting in drafting a Supreme Court amicus brief for petitioners in Lawrence v. Texas; represented five same-sex couples seeking marriage rights in New York in Hernandez v. Robles; represented the same-sex domestic partner of a 9/11 victim in a suit seeking determination of the proper distribution of an award disbursed by the Federal Victim Compensation Fund in Cruz v. McAneney.

Cases

• Representative recent opinions include the following:
• The Hershey Company v. Promotion in Motion, Inc., No. 07 Civ. 1601 (SDW) (D.N.J. Jan. 18, 2013) - after trial, obtained judgment that defendant candy and confectionery company’s SWISSKISS chocolate candy did not infringe or dilute Hershey’s KISSES trademark. Any similarities flowing from the shared use of the term “kiss” in both parties’ marks were overcome by distinguishing elements in how the marks were presented, as confirmed by defendant’s survey experts.
• Quirky, Inc. v. Davison Design & Development, Inc., No. 12 Civ. 262 (JFC) (W.D. Pa. Sept. 25,2012) - defeated motion to dismiss claims for, inter alia, trademark infringement, unfair competition, false endorsement and invasion of right to publicity brought by a product development company and its founder/CEO based on competitor's purchase and use of the company's and founder's names and trademarks as keywords that triggered competitor's sponsored ads in various search engines, such as Google, AOL, Bing and Yahoo!, even where company's and founder's names and trademarks did not appear in text of competitor's ad or on competitor's website.
• Malloy v. EMI Christian Music Group, Inc., No. 11 Civ. 6075 (RJS) (S.D.N.Y. May 16, 2012) - obtained dismissal of copyright infringement claim against record labels based on purported unlicensed recording, copying and distribution of song Nobody Greater performed by gospel singer VaShawn Mitchell.  At best, plaintiff alleged he was a co-author of Nobody Greater and that the song was a joint work under copyright law.  No claim thus could lie against record labels who had a license from the other co-author to record, copy and distribute the song.
• Poindexter v. EMI Record Group, 2012 U.S. Dist. LEXIS 42174 (S.D.N.Y. Mar. 27, 2012) - obtained dismissal of copyright infringement claims against record label based on purported unlicensed digital sampling of single note of musical composition and sound recording of Thin Line Between Love and Hate in Arrested Development's 1992 recording Washed Away.  Plaintiff lacked standing to sue based on infringement of the sound recording, whose copyrights admittedly had always been owned by a third party record label.  Moreover, Plaintiff's infringement claim based on musical composition failed for lack of substantial similarity; the Thin Line musical composition and the accused sound recording were "wholly dissimilar" apart from a single note, and any alleged copying was merely de minimis and insufficient to support a claim of infringement.
• Dessert Beauty, Inc. v. Fox, 568 F. Supp. 2d 416 (S.D.N.Y. 2008) - obtained summary judgment for declaratory judgment plaintiffs cosmetics and fragrance manufacturer Dessert Beauty, Inc. and retailer Sephora USA, Inc. dismissing federal and state trademark claims finding plaintiffs' use of the term "love potion" on and in connection with two of Dessert Beauty's DESSERT beauty products constituted descriptive fair use under the Lanham Act. (Affirmed, 2009 U.S. App. LEXIS 16639 (2d Cir. July 29, 2009)
• Cruz v. McAneney, 31 A.D.3d 54, 816 N.Y.S.2d 486 (2d Dep't 2006) - obtained affirmation of lower court's denial of defendant's motion to dismiss claim brought by surviving domestic partner of a victim of the September 11, 2001 terrorist attacks on the World Trade Center against personal representative of decedent to recover her share of a half-million dollar award granted by September 11th Victim Compensation Fund. Appellate Division held that New York State legislature specifically intended "that domestic partners should be compensated from the Fund for the loss of their loved ones."

Prior Experience

• Kramer Levin Naftalis & Frankel LLP - Associate (2002-2005)
• BMG Entertainment - Legal Intern (1999)
• Prior to becoming an attorney, Eric taught music and musical theatre at a performing arts high school in Manhattan and directed and musical directed several musicals in New York and Boston.

Articles & Speeches

• Speeches
• Top Trademark Cases of 2011, presentation at Toronto Intellectual Property Group (January 31, 2012)
• "Trademark Basics" -  CLE Program entitled Bridge-the-Gap for Newly Admitted New York Attorneys, Practicing Law Institute (January 9, 2012)
• "Recent Fashion Industry Cases" - CLL Fashion Seminar entitled Hot Topics - Selected Issues for the Fashion Industry (June 15, 2011)
• 'Chloe v. Queen Bee: An Important New Decision on Counterfeit Infringement over the Internet' - CLE Program, Law Seminars International (October 6, 2010)
• Articles
• 'Reflections on the Use of Trademarks in Social Networking Website Vanity URLs.'  NYSBA’s Bright Ideas, Spring/Summer 2011 (Reprinted with Permission)
  
  Client Alert: 'Protect Your Brand from Appearing in a New .XXX Adult Entertainment Domain Name' (April 2011)
• 'The Odd Couple: Postmodern Culture and Copyright Law.' Media Law and Policy, Fall 2002
  
  Contributor to Copyright Annual Review (2006-2010)
• Other Activities
• Commentator in the documentary 9/11 Millionaire Widows (2008)

Affiliations

• New York State Bar Association - Member
• New York Intellectual Property Law Association - Member
• American Intellectual Property Law Association - Member