MARC J. RACHMAN
Partner, Litigation

As a Partner in the Litigation Department of Davis & Gilbert LLP, Marc Rachman has represented clients in a wide variety of complex commercial litigations. His litigation practice specializes in trademark and copyright infringement, false advertising, entertainment, domain name disputes, and real estate.  Mr. Rachman has also handled disputes concerning the enforcement of advertising agency-client agreements, employment contracts and restrictive covenants.  Mr. Rachman’s expertise extends to First Amendment matters as well.  He represented several advertising industry trade associations in the submission of an amicus brief to the U.S. Supreme Court in Nike v. Kasky, which addressed the protection of commercial speech under the First Amendment.  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 argued appeals before the U.S. Court of Appeals for the Second Circuit and the Appellate Division of the New York State Supreme Court.

REPRESENTATIVE LITIGATED CASES:

• Goetz v. American Express Company, 05-CV-1555 (LAK) (S.D.N.Y. Feb. 23, 2006) (unpublished) –aff’d 2008 U.S. App. LEXIS 2421 (2d Cir. Feb. 4, 2008) – On behalf of American Express, obtained summary judgment in defense of a trademark infringement action that claimed that American Express’ “MY LIFE. MY CARD.” advertising campaign developed by Ogilvy & Mather infringed on the plaintiff’s Goetz’s purported trademark rights, with the Court finding that American Express had not infringed any purported trademark rights of plaintiff. Successfully opposed plaintiff’s appeal to the Second Circuit Court of Appeals.

• Thompson v. Coty, Civ. 15336 (PAC)(S.D.N.Y. June, 5 2007) (unpublished) -Successfully defended Coty, Inc., one of the world’s largest perfume manufacturers, and its advertising agency, Laird & Partners, in the defense of claims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 an advertising campaign for Vera Wang Princess perfume. The claims concerned photos containing images of crowns made by the plaintiff Mary Buck Thompson in some of the advertising and marketing materials for the Princess perfume. We successfully defended after an evidentiary hearing plaintiff’s application for a preliminary injunction, which sought, among other things, pulling all advertising and marketing materials containing the allegedly infringing photos. The parties shortly thereafter settled the matter on amicable terms.

• Leider v. De Beers, et al., Civ. 3137 (HB) (S.D.N.Y. January, 25 2005) (unpublished) – On behalf of our client J. Walter Thompson, one of the first advertising agencies, we successfully filed an amicus brief in a class action suit against DeBeers diamonds. The plaintiffs’ claims against DeBeers included false advertising claims that advertising stating that diamonds are rare and a symbol of love was false and misleading. The plaintiffs were seeking, among other things, an injunction that would have severely restricted DeBeers' advertising in the U.S. Even though there had been a default judgment entered against DeBeers, in response to our amicus brief, the plaintiffs voluntarily dismissed their Federal law false advertising claims and the Court dismissed the plaintiffs’ State law false advertising claims.

• Stehrenberger v. R.J. Reynolds Tobacco Company, et al., 335 F. Supp. 2d 466 (S.D.N.Y. 2004) – On behalf of R.J. Reynolds Tobacco Co. and its marketing firm, Kevin Berg & Associates, obtained partial summary judgment in defense of a copyright infringement action, with the Court finding that the plaintiff could not use a multiplier to enhance her actual damages calculation for unauthorized use of her copyrighted image.

• Covington Indus. Inc. v. Nichols, 02 Civ. 8037 (KTD), 2004 U.S. Dist. LEXIS 6210 LEXIS 6210 (S.D.N.Y. April 12, 2004) – On behalf of our client Covington Industries, Inc., a textile manufacturer, we obtained partial summary judgment in prosecution of a copyright infringement action, with the Court finding that Covington’s copyright in a complex plaid fabric design used in home furnishings was sufficiently original to warrant copyright protection.

• Laramie Springtree Corp. v. Equity Residential Properties Trust, et al.,303 A.D.2d 464 (2d Dep’t 2003) – On behalf of our client Equity Residential, one of the country’s largest publicly traded REITS, we successfully opposed an appeal that affirmed the trial court’s finding, in a commercial real estate dispute action, that a contractual right of first refusal that required plaintiff to match any offer by a third party on the same terms and conditions was not breached.

PUBLICATIONS/SPEECHES
Panelist on Trademark Basics and Beyond CLE program for the New York City Bar, November 2007
Panelist on the Top 10 Entertainment Litigation Pitfalls at the 2006 BESLA Annual Conference, October 2006
Presented Fundamentals of Federal Trademark Law to law clerks of the U.S. District Court for the Southern District of New York, October 2005
Co-author, “Second Circuit Provides Clearer Picture on its False Advertising Doctrine,” November 16, 2007, Vol. 22 No. 46, Washington Legal Foundation
Co-author, “Online Advertising Challenges Tradition,” October 10, 2005, New York Law Journal
Co-author, “Wait, the Copyright Act Allows Punitive Damages?,” January 24, 2005, New York Law Journal
Co-author, “How Courts Interpret Ambiguous Contracts,” January 2004, Metropolitan Corporate Counsel
Co-author, “Musical Parody and the Fair Use Defense,” September 12, 2003, New York Law Journal
Co-author, “Finding Originality in Plaid Fabric Designs,” October 20, 2003, New York Law Journal

EDUCATION
Boston University, J.D., cum laude, 1993
Cornell University, B.S., with honors, 1986

PROFESSIONAL ACTIVITIES AND AFFILIATIONS
Member of the New York City and New York County Bar Associations; Member of the Trademark Committee of the New York City Bar Association and the Entertainment & Media, Intellectual Property & Sports Section of the New York County Bar Association.

CONTACT
212-468-4890
mrachman@dglaw.com