Jonathan Z. King

Jonathan handles intellectual property litigations in a wide range of industries, including recorded music and music publishing, fashion, sports, food and beverages, pharmaceuticals and healthcare, software, advertising, publishing and various consumer products. His practice encompasses the full range of intellectual property subjects, and 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.

Over more than thirty years, Jonathan has participated in a number of landmark engagements that have shaped intellectual property law.  In the area of copyrights, his cases have included some of the music industry’s first file and link-sharing infringement suits; a case of first impression involving application of Copyright Act’s first sale doctrine to the resale of digital files; and a recent Supreme Court case addressing how the discovery rule bears on relief available under the Copyright Act’s statute of limitations.  He is currently co-counsel in the music industry’s three major lawsuits challenging the use of copyrighted music in the development and operation of artificial intelligence models.  Jonathan was a co-author of Universal Music Group’s extensive submissions to the Copyright Office on artificial intelligence and is often called upon to lecture on copyright law and artificial intelligence.

In the area of trademark law, Jonathan has handled some of the first cases challenging the use of brand names as keywords in internet advertising; trial protecting the company name of one of the largest pharmaceutical companies in the world, and recent appellate victories establishing how the burdens of proof affect the application of laches to trademark infringement claims.  He has extensive experience in trade dress disputes and the use of consumer surveys in Lanham Act litigation, about which he is frequently asked to lecture.

Jonathan previously served as Chair of the firm for a decade and was on the firm’s Executive Committee for 16 years.   Among others, he has represented Warner Music Group, Universal Music Group, The Donna Karan Company and G-III, Sanofi-Aventis Pharmaceuticals, Major League Baseball Properties, CAR-FRESHNER Corporation, and the National Audubon Society.

Jonathan is also a professional jazz pianist and composer, with numerous recordings to his credit and many tours throughout the world. He is also an author and professional in the fly fishing industry.

Honors & Recognitions

"Jonathan King has 'outstanding knowledge of IP law'. One respondent notes, 'He is by far my favourite lawyer to work with globally.'" 2024 Who’s Who Legal: IP 

“Jonathan King heads the [firm’s Copyright] practice, representing key music recording and publishing clients, such as Sony Music Entertainment, Warner Music and Atlantic Records.” 2024 The Legal 500

“Of [Jonathan] King, patrons remark, ‘Jonathan is one of the best trademark attorneys I have ever worked with. He is very knowledgeable on legal aspects of trademark litigation. Moreover, he is very sophisticated in the area of surveys, and knows more about proper survey design and common survey errors than, not only most other attorneys, but also many survey experts. It does not hurt that he is very bright and hardworking.’” 2024 WTR 1000 – The World’s Leading Trademark Professionals

“The team of Richard Mandel, Jonathan King and Eric Shimanoff is deadly. Each of them are very smart, business savvy and know practice and procedure in not only New York but even other jurisdictions.”  2022 The Legal 500

“Chair of the firm Jonathan King  – who has been busy recently on trade dress infringement cases for CAR-FRESHENER Corporation – frequently links up with Richard Mandel to form a dynamic strike force for prestigious brands.” 2020 WTR 1000 – The World’s Leading Trademark Professionals

"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

Who's Who Legal

Copyright (Law Business Research Ltd.) (2023 - present)

Managing Intellectual Property

IP Stars - “Trademark Star” (2021 - present)

World Trademark Review 1000

New York Gold Band for Enforcement and Litigation (2018 - present)

WTR Global Leaders (2021)

Expert Guides (Euromoney Institutional Investor PLC)

Trademarks (2015 - present)

The Legal 500

Trademark Litigation and Copyright Litigation (2013 - present)

New York Super Lawyers

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

• More than thirty years of experience as an intellectual property litigator handling copyright and trademark disputes in a wide range of industries, including music, fashion, sports, food and beverages, pharmaceuticals and healthcare, software, advertising, licensing, publishing, food and hospitality, and various consumer products.
• Practices regularly in the federal courts, where he tries trademark and copyright cases, and handles many opposition and cancellation proceedings before the Trademark Trial & Appeal Board.
• Extensive experience in the use of consumer surveys in Lanham Act litigation.
• Clients have included Warner Music Group, Universal Music Group, The Donna Karan Company and G-III, Sanofi-Aventis Pharmaceuticals, CAR-FRESHENER Corporation and the National Audubon Society.

Prior Employment

• Goodwin Procter & Hoar, Associate (1991- 93)
• U.S. District Court, District of Massachusetts, Honorable Douglas P. Woodlock, Law Clerk (1992)

Cases

Representative opinions include the following:

• Warner Chappell Music, Inc. v. Nealy, 601 U.S. 366 (2024). Co-counsel with Paul Weiss and Gray Robinson for petitioner, Warner Chappell Music, Inc., in a case determining the scope of monetary relief available to a plaintiff asserting a timely copyright claim under the discovery rule as applied to the Copyright Act’s statute of limitations.
• Kars 4 Kids Inc. v. Am. Can!, 98 F.4th 436 (3d. Cir. 2024).  Along with co-counsel Orrick Herrington, obtained complete reversal of judgment imposing injunction and $8 million award of profits based on finding that lower court abused its discretion in misapplying the burdens of proof on defendant’s laches defense.
• Kars 4 Kids Inc. v. Am. Can!, 8 F.4th 209 (3d Cir. 2021). Jonathan King brought in as co-counsel on appeal to challenge trial verdict finding car donation charity KARS4KIDS liable for trademark infringement and $10 million in profits and not entitled to laches. In Third Circuit, obtained reversal of District Court’s denial of laches defense, where District Court failed to consider appellee’s constructive knowledge of alleged infringement and failed adequately to address prejudice to Kars4Kids. Also obtained reversal of lower court’s disgorgement of profits award where District Court failed to consider all the equitable factors necessary to justify award of profits.
• Nealy v. Atlantic Recording Corporation, 2021 U.S. Dist. LEXIS 105115 (S.D. Fla. June 4, 2021). Obtained summary judgment dismissing all claims against Atlantic Records on grounds that Plaintiffs could not prove standing and ownership of musical composition allegedly infringed by Atlantic’s recording of Flo Rida’s “In The Ayer,” featuring will.i.am.
• Lawson v. Warner Music Group, et al., 2020 N.Y. Misc. LEXIS 10334 (S. Ct., NY Cty. Nov. 20, 2020). Represented Warner Music Group, Universal Music Group and Capitol Records in obtaining dismissal of complaint brought by representatives of the music group The Persuasions claiming fraud, breach of contract and unjust enrichment relating to the failure to pay royalties.
• 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 and was not entitled to the defenses of the first sale doctrine and fair use.
• North Atlantic Operating Company, 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 Corp. 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., 2013 U.S. Dist. LEXIS 203743 (D.N.J. Jan. 18, 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, ADVANCIS.
• 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 and trademark infringement, trademark dilution and false advertising claims and finding the product configuration of plaintiff's 'Swedish Fish' gummy candy to be generic.