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Joel Karni SchmidtPartnerjks@cll.com212.790.9244 |
Joel advises a diverse group of clients, including leading international apparel companies, technology companies, game publishers, a major sports organization, global charitable organizations and foundations, hotels and restaurants, and prominent artists and designers with respect to all aspects of intellectual property protection and enforcement in the U.S. and throughout the world. Joel also enforces intellectual property rights in the U.S. and abroad, practices before the Trademark Trial and Appeal Board, and advises clients with respect to licensing disputes, anti-counterfeiting and litigation. In the transactional realm, Joel negotiates and drafts license agreements, purchase agreements, assignments, strategic alliances, joint venture agreements, book publishing agreements, and technology agreements. He also has guided clients through the intellectual property aspects of private placements, mergers and acquisitions, joint ventures, financings and reorganizations.
Schulte Roth & Zabel LLP - Associate (1998-2000)
The Supreme Court of Israel, Justice Dorit Beinisch - Law Clerk (1996 - 1998)
U.S. Attorney's Office (E.D.N.Y.) - Intern (1994)
Speeches
Christian Louboutin, S.A. v. Yves St. Laurent, Inc. at New York State Bar Association CLE Program On the Heels of the Week: The Status of Fashion Protection (March, 2012)
The State of Social Media at CLL program Selected Issues for the Restaurant, Food & Hospitality Industries (November 17, 2011)
Negotiating a License Agreement: A Simulated Negotiation and Analysis of Real World Licensing Issues and Strategies at the Practising Law Institute CLE program Understanding the Intellectual Property Licence (October 21, 2011)
Fashion Company Blogs: A Legal Issues Roadmap, at CLL Fashion Industry Seminar entitled Hot Topics - Selected Issues for the Fashion Industry (June 15, 2011)
Protecting your company’s names, marks and reputation, at CLL Restaurant, Food & Hospitality Industry Seminar entitled Eating, Sleeping & Tweeting (November 16, 2010)
Protecting Trademarks on the Internet: Current Legal Issues and Strategies in the wake of Tiffany v. eBay at the United States Patent and Trademark Office Global Intellectual Property Academy Seminar and Study Tour for Latin American Judges meeting with the New York State Bar Association (November 5, 2010)
Negotiating a License Agreement: A Simulated Negotiation and Analysis of Real World Licensing Issues and Strategies, at Practising Law Institute CLE Program entitled Understanding the Intellectual Property License (October 22, 2010)
Social Networking Sites and Virtual Worlds: Trademark Issues and Opportunities, at New York Intellectual Property Association CLE Program entitled Hot Topics in Trademark Law (July 15, 2010)
Recent Fashion Industry Cases, at CLL Fashion Industry Seminar entitled Fashion 2.0: Social Media, Virtual Worlds and the Real World too (June 16, 2010)
What's Cooking? Recent Suits and Settlements, at CLL Restaurant, Food & Hospitality Industry Seminar entitled Eat. Drink. Sleep. Succeed.: Strategies for success in good times and bad. (November 18, 2009)
Fashion Litigation Review, at CLL Fashion Seminar entitled R is for Recession (and Recovery) (June 23, 2009)
The 2006 Stop Counterfeiting in Manufactured Goods Act, at CLL Fashion Seminar (2006)
Articles
Co-author: Advising Companies on Intellectual Property, Practising Law Institute (2009)
Client Alert: Protecting Retail and Wholesale Service Marks in Japan (2007)
Contributor to Copyright Annual Review (2000-2006)
'McDonald's Cries Foul,' Trademark World (2004)
'McDonald's Defeats McDonald in a Battle over the Right of Publicity,' Orech HaDin ('The Lawyer') (2004) (Hebrew article)
Client Alert: 'New Protection for Service Marks in India' (2003)
Co-author: Article and Client Alert: 'Perfecting Security Interests in Unregistered Copyrights: New Developments,' Banking Report (2002)
Co-author: 'Internet Jurisdiction: The Global Issue of Liability for Trademark Infringement on the Web,' Intellectual Property Counselor (2002) and Practising Law Institute Advanced Seminar on Trademark Law (2002)
Client Alert: 'Is Your Electronic Communications Policy Up-to-Date?' (2001)
'The Growing Body of Israeli Law - A Review Essay,' New York International Law Review (1998)
Press
Quoted, Women's Wear Daily, “Supreme Court Backs Ruling on Costco Copyright Case,” by Kristi Ellis, December 14, 2010
The Jewish Daily Forward, 'Magen David Adom May Sever U.S. Ties,' March 15, 2010
Quoted, Women's Wear Daily, “Panel: Think Twice About Litigation,” by Matthew Lynch & Vicki M. Young, July 6, 2009
WWD.com, “Taking Stock: Consumer Confidence Drops in June,” by Matthew Lynch & Vicki M. Young, July 6, 2009
Quoted, FT.Com (Financial Times), “McDonald's loses brand battle over Malaysian curries,” by Kevin Brown and Kenneth Li, September 9, 2009
AllBusiness, “Diane von Furstenberg Studio Settles with Mercy of Canada,” June 11, 2009
Hotel News Resource, “Court Denies Puck's Request for Preliminary Injunction Related to Wolfgang's Steakhouse by Wolfgang Zwiener in Beverly Hills,” June 25, 2008
Nation’s Restaurant News, “Judge denies Puck's push for injunction against steakhouse,” June 23, 2008
Quoted, EuroInvestor.Fr, “Court Denies Puck´s Request for Preliminary Injunction Related to Wolfgang´s Steakhouse by Wolfgang Zwiener in Beverly Hills,” June 23, 2008
Quoted, KNBC TV Los Angeles, “Celebrity Chef Suing Beverly Hills Steakhouse Owners Over Name,” May 23, 2008
Quoted, Puget Sound Business Journal, “McDonald's puckered over McSweet's pickled onions,” by Greg Lamm, April 8, 2008
Other Activities
Crain's New York Business Advisory Panel - Member
Represented the New York City Bar Association at the United Nations Commission on International Trade Law (UNICITRAL) Third International Colloquium on Secured Transactions in Vienna, Austria (March 1-3, 2010)
Judge at Cardozo/BMI Entertainment and Communications Law Moot Court Competition (2003-2005)
Judge at U.S. International Film and Video Festival (2002)
Co-winner, Kukin Negotiation Competition
New York Intellectual Property Law Association - Copyright Law Committee - Chair (2011)
American Intellectual Property Law Association - Special Committee on Israel - Co-Chair (2011)
New York Intellectual Property Law Association - Trademark Law Committee - Member (2008-2011)
New York City Bar - Copyright & Literary Property Committee - Member (2008-2010)
New York Intellectual Property Law Association - Internet Law Committee - Member (2009-2010)
New York Intellectual Property Law Association - Privacy Law Committee - Member (2008-2011)
International Trademark Association - Legislation & Regulation Committee, Middle East, Africa & South Asia Subcommittee - Member (2005-2007)
Benjamin N. Cardozo School of Law (JD 1996)
The London School of Economics and Political Science (MSc (Econs) 1995)
University of Colorado at Boulder (BA 1991)
New York
New Jersey
Israel
United States District Court - Southern District and Eastern District of New York