Marc J. Rachman is a partner in the Litigation and Intellectual Property Practice Groups of Davis & Gilbert. Mr. Rachman has represented clients in a wide variety of complex commercial litigations. His litigation practice focuses on intellectual property matters, including trademark and copyright infringement, false advertising, entertainment, domain name disputes, and trade secrets. Mr. Rachman has also handled disputes concerning complex commercial matters, the enforcement of advertising agency-client agreements, employment contracts and restrictive covenants and real estate disputes.
In counseling clients to avoid litigation, he has developed document retention policies and electronic media retention protocols in accordance with the Sarbanes-Oxley Act and other federal and state laws. Mr. Rachman has been lead and second chair trial counsel in both jury and bench trials and has argued appeals before the U.S. Court of Appeals for the Second Circuit, the Ninth Circuit and the Appellate Division of the New York State Supreme Court.
Mr. Rachman has been recognized by The Legal 500 U.S. (2012) for his knowledge in the areas of advertising, marketing and IP litigation. He was also selected as a Super Lawyer by New York Metro Super Lawyers in 2012.
REPRESENTATIVE ENGAGEMENTS
- Represented Harpo Inc., the owner of the Oprah family of trademarks, and Dr. Mehmet Oz, who hosts the Dr. Oz television show, in the prosecution of an action for right of publicity, false endorsement, trademark infringement and other claims against numerous internet marketers of dietary supplements and other products that used Oprah Winfrey's and Dr. Oz's names and likenesses without their consent.
- Defended a group of advertising agencies against trade secret misappropriation and patent infringement claims relating to advertising that incorporated the characters and plot from a television show into the ads to advance the plot of the show.
- Represented Alpha Media Group and Alpha Media Publishing, the publisher of Maxim magazine, in a trademark infringement, dilution and breach of license action against a former licensee that owned and operated resorts in the Dominican Republic. Obtained a favorable ruling from the court that the license agreement did not fall within the scope of the New York State Franchise Act.
- Defended Coty, Inc., one of the world's largest perfume manufacturers, and its advertising agency, Laird & Partners, in the defense of claims for copyright and trademark infringement and false advertising in connection with the use of images of plaintiff's jewelry in an advertising campaign for Vera Wang Princess perfume. Successfully defeated plaintiff's application for a preliminary injunction, which sought, among other things, pulling all advertising and marketing materials containing the allegedly infringing photos.
- Obtained summary judgment on behalf of a Fortune 100 financial services firm and its advertising agency in an action concerning a nationwide advertising campaign and tagline that the plaintiff claimed infringed his copyright and trademark rights. Successfully opposed plaintiff's appeal to the 2d Circuit.
SPEAKING ENGAGEMENTS
"Cornell University 2013 Brand Management Roundtable," The Center for Hospitality Research, April 1-2, 2013
"Cornell University 2012 Brand Management Roundtable," The Center for Hospitality Research, April 2-3, 2012
"Policing Your Brand on the Internet: How to Protect & Defend What Is Yours," New York State Bar Association Roundtable, November 7, 2011
"Litigating Internet-Based IP Claims: How to Protect and Defend What is Yours," Davis & Gilbert Intellectual Property Litigation Seminar, May 4, 2011
PUBLICATIONS
Co-Author, "Recent Cases Demonstrate the Effectiveness of First Amendment Defenses to Claims of Intellectual Property Infringement," New York County Lawyer, March 2013
Co-Author, "Olympians’ Right of Publicity Claims Over a Facebook App Trumped by First Amendment," D&G Intellectual Property Litigation Alert, January 2013
Co-Author, "Court Flags Historical Use of NFL Team’s Former Logo in Video Game as Infringing," D&G Intellectual Property Litigation Alert, December 2012
Co-Author, "Use of “Artistic Relevance” Test is Expanding," IP Law 360, November 14, 2012
Co-Author, "Rosetta Stone: Still No “Key” To Cracking Google’s Adwords Program," D&G Litigation Newsletter, Summer 2012
Co-Author, "Case Study: Forest Park Pictures V. Universal Television," IP Law360, July 9, 2012
Co-Author, "Case Study: Viacom v. YouTube," IP Law360, April 19, 2012
Co-Author, "NBA Player’s Broad Publicity Rights Claim over a Reality TV Show 'Rejected,'" D&G Litigation Newsletter, Winter 2012
Co-Author, "Beware the Patent Trolls," WebsiteMagazine.com - Enterprise Ready, January 2012
Author, "Ninth Circuit Fashions Confusion Standard for Keyword Advertising Cases," New York State Bar Association - State Bar News, July/August 2011
Co-Author, "Montz V. Pilgrim Films Revisited," IP Law360, June 9, 2011
Co-Author, "Ninth Circuit Emphasizes Flexibility in Assessing Likelihood of Confusion in Keyword Advertising Cases," New York State Bar Association - Bright Ideas, Spring/Summer 2011
Co-Author, "Government Seizes Websites On Suspicion Of Copyright Infringement," D&G Intellectual Property Litigation Alert, February 2011
Co-Author, "The IP You See, And The IP You Don't," Law360, September 2, 2010
Co-Author, "From Preservation to Production: The Dos and Don'ts of e-Discovery in Litigation," a chapter in Inside the Minds: Electronic Records Management and e-Discovery, published by Aspatore Books, 2010
Co-Author, "Trademarks Protect More Than Names," D&G Litigation Newsletter, Spring 2010
Co-Author, "Trademark Licenses and the Accidental Franchise," D&G Litigation Newsletter, Fall 2009
Co-Author, "Advertising Agencies: Creators, Not Users - Or Infringers - Of Trademarks," D&G Litigation Newsletter, Winter 2009
Co-Author, "Second Circuit Provides Clearer Picture on its False Advertising Doctrine," Vol. 22 No. 46, Washington Legal Foundation, November 16, 2007
PRESS
Quoted, Law360.com, "YouTube Set For Copyright Rematch As Judge Defies 2nd Circ.," by Ryan Davis, April 19, 2013
Quoted, Law360.com, "9th Circ. Ruling Brings Consensus on DMCA Safe Harbor," by Ryan Davis, March 15, 2013
Quoted, Law360.com, "2nd Circ. Ruling May Be A Royal Pain For Movie, TV Studios," by Ryan Davis, June 27, 2012
Quoted, NYPost.com, "Bad Characters - Media Firms Ignore Brand Street Walkers," by Christine Busciglio, June 19, 2011
Mentioned, The 2010 Legal 500 United States for Media, Technology and Telecoms: Marketing and Advertising
Quoted, Forbes.com, "Oprah vs. The Supplement Sellers," by Dirk Smillie, August 20, 2009
Quoted, The AM Law Daily, "Oprah Sues Over False Endorsements," by Irene Plagianos, August 20, 2009
PROFESSIONAL MEMBERSHIPS/AFFILIATIONS
New York City Bar Association, Technology Committee
New York City Bar Association, E-Discovery Sub-Committee
BAR ADMISSIONS
New Jersey
New York
U.S. District Court, Southern and Eastern Districts of New York
U.S. District Court, New Jersey
U.S. District Court, Northern District of California
EDUCATION
Boston University, J.D., cum laude, 1993
Cornell University, B.S., with honors, 1986
REPRESENTATIVE ENGAGEMENTS
- Represented Harpo Inc., the owner of the Oprah family of trademarks, and Dr. Mehmet Oz, who hosts the Dr. Oz television show, in the prosecution of an action for right of publicity, false endorsement, trademark infringement and other claims against numerous internet marketers of dietary supplements and other products that used Oprah Winfrey's and Dr. Oz's names and likenesses without their consent.
- Defended a group of advertising agencies against trade secret misappropriation and patent infringement claims relating to advertising that incorporated the characters and plot from a television show into the ads to advance the plot of the show.
- Represented Alpha Media Group and Alpha Media Publishing, the publisher of Maxim magazine, in a trademark infringement, dilution and breach of license action against a former licensee that owned and operated resorts in the Dominican Republic. Obtained a favorable ruling from the court that the license agreement did not fall within the scope of the New York State Franchise Act.
- Defended Coty, Inc., one of the world's largest perfume manufacturers, and its advertising agency, Laird & Partners, in the defense of claims for copyright and trademark infringement and false advertising in connection with the use of images of plaintiff's jewelry in an advertising campaign for Vera Wang Princess perfume. Successfully defeated plaintiff's application for a preliminary injunction, which sought, among other things, pulling all advertising and marketing materials containing the allegedly infringing photos.
- Obtained summary judgment on behalf of a Fortune 100 financial services firm and its advertising agency in an action concerning a nationwide advertising campaign and tagline that the plaintiff claimed infringed his copyright and trademark rights. Successfully opposed plaintiff's appeal to the 2d Circuit.
SPEAKING ENGAGEMENTS
"Cornell University 2013 Brand Management Roundtable," The Center for Hospitality Research, April 1-2, 2013
"Cornell University 2012 Brand Management Roundtable," The Center for Hospitality Research, April 2-3, 2012
"Policing Your Brand on the Internet: How to Protect & Defend What Is Yours," New York State Bar Association Roundtable, November 7, 2011
"Litigating Internet-Based IP Claims: How to Protect and Defend What is Yours," Davis & Gilbert Intellectual Property Litigation Seminar, May 4, 2011
PUBLICATIONS
Co-Author, "Recent Cases Demonstrate the Effectiveness of First Amendment Defenses to Claims of Intellectual Property Infringement," New York County Lawyer, March 2013
Co-Author, "Olympians’ Right of Publicity Claims Over a Facebook App Trumped by First Amendment," D&G Intellectual Property Litigation Alert, January 2013
Co-Author, "Court Flags Historical Use of NFL Team’s Former Logo in Video Game as Infringing," D&G Intellectual Property Litigation Alert, December 2012
Co-Author, "Use of “Artistic Relevance” Test is Expanding," IP Law 360, November 14, 2012
Co-Author, "Rosetta Stone: Still No “Key” To Cracking Google’s Adwords Program," D&G Litigation Newsletter, Summer 2012
Co-Author, "Case Study: Forest Park Pictures V. Universal Television," IP Law360, July 9, 2012
Co-Author, "Case Study: Viacom v. YouTube," IP Law360, April 19, 2012
Co-Author, "NBA Player’s Broad Publicity Rights Claim over a Reality TV Show 'Rejected,'" D&G Litigation Newsletter, Winter 2012
Co-Author, "Beware the Patent Trolls," WebsiteMagazine.com - Enterprise Ready, January 2012
Author, "Ninth Circuit Fashions Confusion Standard for Keyword Advertising Cases," New York State Bar Association - State Bar News, July/August 2011
Co-Author, "Montz V. Pilgrim Films Revisited," IP Law360, June 9, 2011
Co-Author, "Ninth Circuit Emphasizes Flexibility in Assessing Likelihood of Confusion in Keyword Advertising Cases," New York State Bar Association - Bright Ideas, Spring/Summer 2011
Co-Author, "Government Seizes Websites On Suspicion Of Copyright Infringement," D&G Intellectual Property Litigation Alert, February 2011
Co-Author, "The IP You See, And The IP You Don't," Law360, September 2, 2010
Co-Author, "From Preservation to Production: The Dos and Don'ts of e-Discovery in Litigation," a chapter in Inside the Minds: Electronic Records Management and e-Discovery, published by Aspatore Books, 2010
Co-Author, "Trademarks Protect More Than Names," D&G Litigation Newsletter, Spring 2010
Co-Author, "Trademark Licenses and the Accidental Franchise," D&G Litigation Newsletter, Fall 2009
Co-Author, "Advertising Agencies: Creators, Not Users - Or Infringers - Of Trademarks," D&G Litigation Newsletter, Winter 2009
Co-Author, "Second Circuit Provides Clearer Picture on its False Advertising Doctrine," Vol. 22 No. 46, Washington Legal Foundation, November 16, 2007
PRESS
Quoted, Law360.com, "YouTube Set For Copyright Rematch As Judge Defies 2nd Circ.," by Ryan Davis, April 19, 2013
Quoted, Law360.com, "9th Circ. Ruling Brings Consensus on DMCA Safe Harbor," by Ryan Davis, March 15, 2013
Quoted, Law360.com, "2nd Circ. Ruling May Be A Royal Pain For Movie, TV Studios," by Ryan Davis, June 27, 2012
Quoted, NYPost.com, "Bad Characters - Media Firms Ignore Brand Street Walkers," by Christine Busciglio, June 19, 2011
Mentioned, The 2010 Legal 500 United States for Media, Technology and Telecoms: Marketing and Advertising
Quoted, Forbes.com, "Oprah vs. The Supplement Sellers," by Dirk Smillie, August 20, 2009
Quoted, The AM Law Daily, "Oprah Sues Over False Endorsements," by Irene Plagianos, August 20, 2009
PROFESSIONAL MEMBERSHIPS/AFFILIATIONS
New York City Bar Association, Technology Committee
New York City Bar Association, E-Discovery Sub-Committee
BAR ADMISSIONS
New Jersey
New York
U.S. District Court, Southern and Eastern Districts of New York
U.S. District Court, New Jersey
U.S. District Court, Northern District of California
EDUCATION
Boston University, J.D., cum laude, 1993
Cornell University, B.S., with honors, 1986
