Overview

Jonny has handled intellectual property litigations in a wide range of industries, including music, fashion, sports, pharmaceuticals and healthcare, software, advertising, licensing, publishing and various consumer products. His practice encompasses the full gamut of intellectual property subjects, including trademarks, copyright, trade secrets and the licensing of intellectual property. He regularly tries copyright and trademark infringement cases in the federal courts and handles opposition and cancellation actions before the Trademark Trial and Appeal Board.

Jonny’s engagements have included a number of landmark intellectual property matters, including some of the first cases involving the use of trademarks as internet keywords, and the application of copyright law to the “resale” of digital  files.  He also has extensive experience in the use of consumer surveys in Lanham Act litigation.  Among others, he has represented The Donna Karan Company, the Recording Industry Association of America, Universal Music Group, Sanofi-Aventis Pharmaceuticals, Major League Baseball Properties, and the National Audubon Society. 

“If you have to ask what jazz is, you'll never know.” - Louis Armstrong

Honors & Recognitions

"Many of the lawyers here earn vociferous praise from the market: chair Jonathan King and litigator Eric Shimanoff, for example, are 'first-rate attorneys who demonstrate mastery of their subject'. Recently, these 'zealous advocates' litigated against Crocs on behalf of Car-Freshener. 2019 WTR 1000 – The World’s Leading Trademark Professionals

“Cowan is by far the best firm we’ve worked with and Jonathan Z. King is the principal reason. . . .In [one] case . . . the company threw a ton of money and resources against us, with a large trial team . . . but Jonny simply ripped them apart with his courtroom abilities and his sharp analysis of trademark law supporting our case.  He’s so smart and really understands our business, but is also incredibly unpretentious and down-to-earth.”  2018 Law.com

"Jonathan King with Richard Mandel 'when teaming up they are the best of the best and achieve exceptional results, time and time again'."  2018 WTR 1000 - The World's Leading Trademark Professionals

  • Recognized by The Legal 500 in Trademark Litigation and Copyright Litigation (2013 - present)
  • New York "Super Lawyers" in Intellectual Property Litigation (2007 - present)

Community & Professional Activities

  • Member, Copyright Society of the United States
  • New York State Bar Association
  • Professional jazz pianist with three CDs to his credit

Experience

Experience

  • Chairman of the firm.
  • More than twenty-five years of experience as an intellectual property litigator handling trademark disputes in a wide range of industries, including music, fashion, sports, pharmaceuticals and healthcare, software, advertising, licensing, publishing, food and hospitality, and various consumer products.
  • Practices regularly in the federal courts, where he has tried numerous trademark cases, and handles many opposition and cancellation proceedings before the Trademark Trial & Appeal Board with extensive experience in the use of consumer surveys.
  • His landmark intellectual property matters, included some of the first cases involving the use of trademarks as internet keywords.
  • Clients have included Warner Music Group, Universal Music Group, the owner of the DKNY and Donna Karan marks, the Recording Industry Association of America, Sanofi-Aventis Pharmaceuticals, Car-Freshner Corporation and the National Audubon Society.
  • Recent trademark cases involved WELCH’S and SOUR JACKS fruit snacks, generic designations for cigarette rolling papers and various infringements of the well-known LITTLE TREES air freshener.
Prior Employment
  • Goodwin Procter & Hoar, Associate (1991- 93)
  • U.S. District Court, District of Massachusetts, Honorable Douglas P. Woodlock, Law Clerk (1992)

Newsroom

Speaking Engagements

Publications

  • 11.19.2015
  • Misappropriation of Trade Secrets in Commercial Litigation in New York State Courts
    (West Publishing, 2005
  • What Jazz Is
    Walker Publishing, 1997
  • 'The Anatomy of a Jazz Recording: Copyrighting America's Classical Music,' ASCAP Copyright Law Symposium (1992)

Cases

Cases

Representative opinions include the following:

  • Capitol Records, LLC v. ReDigi Inc., 910 F.3d 649 (2d Cir. 2018). Represented plaintiff record company in obtaining summary judgment and on appeal affirming such judgment.  In case of first impression, district court rejected start-up technology company’s attempt to establish digital first sale doctrine for lawful owners of digital music seeking to re-sell their music files.  940 F. Supp.2d 640 (S.D.N.Y. 2013).  On appeal, Second Circuit affirmed the judgment below, holding that defendant’s engaged in unauthorized reproductions of plaintiff’s copyrighted sound recordings that were not justified by the fair use doctrine and thus constituted copyright infringement.
  • North Atlantic Operating Company, Inc. et al. v. DRL Enterprises, Inc., 2016 TTAB LEXIS 282 (T.T.A.B. 2016). On behalf of petitioners-opposers, prevailed at trial in establishing that Applicant’s number designations were unregistrable as generic and, alternatively, descriptive without secondary meaning. Board’s 98-page opinion contained extensive discussion of flaws in Applicant-Registrant’s survey based upon cross-examination of expert. 
  • CAR-FRESHNER v. D & J Distributing and Manufacturing, Inc., 1:14-cv-00391-PKC (S.D.N.Y. 2016). On behalf of plaintiffs, manufacturers of the famous Little Trees air fresheners, obtained jury verdict finding defendant liable for trade dress infringement and dilution and awarding plaintiff defendant’s profits from sales of infringing air fresheners.  Court entered permanent injunction requiring defendant to change its trade dress.  Also obtained earlier summary judgment ruling dismissing defendant’s trade dress counterclaims on grounds of functionality, lack of distinctiveness and abandonment.  See CAR-FRESHNER Corp. v. D & J Distributing and Manufacturing, Inc., 2015 U.S. Dist. LEXIS 67961 (S.D.N.Y. May 26, 2015).
  • The Hershey Company v. Promotion In Motion, Inc., 07-CV-1601 (D.N.J. 2013). Represented defendant at trial and defeated plaintiff Hershey’s claims that defendant’s SWISSKISS chocolate infringed and diluted Hershey’s KISSES trademarks.  Examined four survey experts and discredited Hershey’s confusion and dilution surveys.
  • Sanofi-Aventis v. Advancis Corp., 453 F. Supp.2d 834 (D. Del. 2006). Trial counsel for the world's third largest pharmaceutical company in successful trademark infringement and dilution action.  Obtained permanent injunction after trial requiring publicly traded pharmaceutical company to change its company name and house mark.
  • Malaco Leaf, AB v. Promotion In Motion, Inc, 287 F. Supp.2d 355 (S.D.N.Y. 2003). Obtained summary judgment for defendant dismissing trade dress, trademark infringement, trademark dilution and false advertising claims and finding the product configuration of plaintiff's 'Swedish Fish' gummy candy to be generic.

Education

Harvard University Law School (JD 1991, cum laude)

Princeton University (BA 1987, summa cum laude; Phi Beta Kappa)

Admissions

  • New York
  • Massachusetts
  • United States District Court for the Eastern District of New York
  • United States District Court for the Southern District of New York
  • United States District Courts for the Northern District of New York
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