Overview

Marc's practice focuses on intellectual property licensing and franchising in the retail/consumer goods and services areas, fashion/apparel and accessories, and commercial/industrial design, including the drafting, negotiation and enforcement of license and franchise documents and agreements, as well as implementation of branding and commercialization objectives for clients via licensing and franchising. In conjunction with the services above, he counsels clients on creating effective strategies for procuring, protecting and enforcing their global intellectual property assets. Marc also provides intellectual property litigation services involving patents, trademarks and copyrights, including related e-commerce, domain name, trade secret and unfair competition. He has also participated in and used alternative dispute resolution forums such as arbitration and mediation to enforce intellectual property rights. Marc frequently lectures and writes on intellectual property issues for a variety of intellectual property organizations and publications, including International Trademark Association (INTA), New York State Bar Association (NYSBA) Intellectual Property Section, American Bar Association Forum on Franchising, Wharton Business Law Association at the University of Pennsylvania, New York University, Association of the Bar of the City of New York Fashion Law Committee, Licensing Industry Merchandisers’ Association (LIMA), National Law Journal, IP Strategist and The New York Law Journal, Practical Law, The Licensing Journal.

Marc is listed in the 2017 and the six years immediately preceding editions of World Trademark Review 1000 – The World's Leading Trademark Professionals. He was recognized as a New York “Super Lawyer” in Intellectual Property by Super Lawyers magazine in 2017 and the seven years immediately preceding, and, for the last six years, he was named a Top 100 New York Metro "Super Lawyer" in Intellectual Property. Marc has been recognized as an "IP Star" in 2017 and the four years immediately preceding by Managing Intellectual Property magazine. In 2017, he was recognized by Who's Who Legal for Franchising. Marc was also recommended by Legal 500 US in 2015 and 2016 for Copyright. In 2013, he received the Lexology Client Choice Guide - International 2013 Award and is the sole winner in the Intellectual Property: Copyright category for New York. Marc was also listed in the 2012 and the four years immediately preceding editions of Chambers USA: America’s Leading Lawyers for Business for Intellectual Property: Trademark & Copyright. Chambers noted that Marc has "tremendous business savvy and is tenacious in his work ethic," according to his clients (2012).

The International Trademark Association (INTA) honored Marc with the Volunteer Service Award (VSA) in the Advancement of Committee or Subcommittee Objectives category. The VSAs recognized Marc in 2015 for providing exemplary volunteer service to INTA. As a member of INTA’s Alternative Dispute Resolution Committee’s Neutral Standards & Measurement Subcommittee, Marc made a tremendous impact by volunteering both his time and expertise to support the Association’s goals and objectives. Marc is a recipient of the 2015 Commitment to Justice Award presented by Her Justice recognizing his pro bono work in representing a client who sought help in terminating her arranged marriage. Through skillful negotiation, without any court intervention, Marc secured for the client a divorce on terms very favorable to her and to her children. He is a recipient of the Kilpatrick Townsend 2014 Pro Bono Justice Award. Marc is also a recipient of the 2015 Cardozo Law School Alumni of the Year Award recognizing Marc's leadership and dedication to Cardozo Alums and students.

Since 2004, Marc provided high-level brand licensing counsel to JOSEPH ABBOUD, and played a key role in:

  • Drafting and negotiating brand license agreements that generated $88 million in royalties from 2005-2013, increased annual licensing revenue from $1 million to over $15 million, and secured additional licensing revenue from 2013 onward of $55 million. 
  • Providing advice and counsel in the creation of a strong retail brand focus resulting in the growth of annual retail sales from $20 million to over $400 million. 
  • Implementing a newly structured licensing program to generate $77 million in guaranteed licensing revenue with industry leading partners in the apparel area, including deals with PVH, Peerless, Onward Kashiyama, VF and direct-to-retail licenses such as JCPenney and Men’s Wearhouse. 
  • Expanding the Joseph Abboud brand internationally from 3 countries to over 50 countries.

Other Representative Clients: MOMOFUKU, FIG & OLIVE, S’WELL BOTTLE, JOE FRESH, PATTY MADDEN, BILLY REID, ENERGIZER, Georgia-Pacific, Osram Sylvania and UPS.

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Experience

Successfully represented defendant, Andin International Inc., owned by Aya Azrialant, a jewelry designer accused of copyright infringement of a mother child pendant design copyrighted by the plaintiff. After a full trial on the merits, the court found no substantial similarity and ruled in favor of the defendant.

Sandberg and Sikorski Corp. v. Andin International, Inc.
, 51 U.S.P.Q.2d 1574 (S.D.N.Y. 1999).

Advice and counsel provided in areas of patent, trademark and copyright to Custom Design WallCovering, a designer and supplier of wallcovering products, including trademark and copyright licensing, registration and clearance.

Represented Chromally Gas Turbine Corp. in connection with an appeal of a district court ruling that the employee owned the invention. On appeal, the Federal Circuit reversed and found in favor of the employer because the employee was "employed to invent." Chromalloy Gas Turbine Corp., the largest business unit of Sequa, provides the airline industry with a broad range of aftermarket services and ranks as the leading independent supplier of advanced repairs for jet engine parts. Teets v. Chromalloy Gas Turbine Corp., 83 F.3d 403 (Fed. Cir. 1996).

Advice and counsel in areas of patent, trademark and copyright to Economic Development Resource Guide, a provider of state-of-the-art consulting services and software products, for measuring economic development performance, impact and opportunity for transportation and infrastructure projects, energy programs and projects, and commercial and industrial development.

Successfully represented Design Tex Group, Inc., copyright owner and designer of wallcovering patterns, against infringer manufacturer. The matter was quickly resolved with a settlement agreement that procured a monetary settlement and a permanent injunction. Design Tex Grp., Inc. et al. v. Fidelity Indus. et al., No. 1:05-cv-00008 (S.D.N.Y. filed Jan. 3, 2005).

Successfully represented Colour & Design, Inc., copyright owner and designer of wallcovering patterns, against infringer manufacturer. After extensive discovery, the matter was resolved with a monetary settlement agreement, a permanent injunction on several designs, and a business arrangement for other designs. Colour & Design, Inc. v. U.S. Vinyl Mfg Corp et al., No. 04-8332 (S.D.N.Y. filed Oct. 21, 2004).

Brand licensing and counsel to Osram Sylvania, one of the largest lighting and materials companies in the world with a long­standing reputation of providing solutions in homes, businesses, institutions, and automobiles, to provide advice on brand licensing programs, audit and update license agreement terms, as well as brand licensing and protection strategy.

Brand licensing and counsel to one of the world's leading manufacturers and marketers of tissue, packaging, paper, pulp, building products and related chemicals, to provide advice on brand and technology licensing program, audit and update license agreement terms, as well as licensing and brand protection strategy.

Represented PayFlex Systems USA, Inc. in trademark infringement litigation against Sensei Inc., a health care technology company. PayFlex had previously hired Sensei as a software development consultant for PayFlex’s new product, “HealthHub,” a healthcare benefits planning and management mobile tool. A year later, PayFlex discovered that Sensei had launched its own nearly identical benefits management product, coincidentally named “Health Hub.” Once we filed a complaint Sensei immediately agreed to stop use of the Health Hub mark and signed a consent judgment, including a permanent injunction. Case settled.

PayFlex Systems USA, Inc. v. Sensei, Inc. et al., No. 8:11-cv-00265 (D. Neb. filed Aug. 2, 2011).

Successfully represented Design Tex Inc. and designer Patty Madden in a copyright infringement action. The District Court granted summary judgment finding not only copyright infringement, but also finding the corporation and its president jointly and severally liable. Damages included not only the maximum $150,000 statutory award allowed, but also attorney fees under the Copyright Act. Design Tex Group, Inc. v. U.S. Vinyl Manufacturing Corp., 76 U.S.P.Q.2d 1946, 1949 (S.D.N.Y. 2005).

Successfully represented Laminating Services, Inc., copyright owner and designer of wallcovering patterns, against infringer manufacturer. After extensive discovery, the matter was resolved with a monetary settlement and a permanent injunction.

Laminating Serv. Inc. v. U.S. Vinyl Mfg. Corp. et al., No. 1:04-cv-07728 (S.D.N.Y. filed Sept. 29, 2004).

Provide advice and counsel to Patty Madden Inc., leading designer of wallcovering patterns, including trademark and copyright counsel, licensing and clearance.

Retained to defend independent software developer on a pro bono basis against former law firm employer that alleged copyright infringement, fraud, breach of fiduciary duty and trade secret theft. Negotiated a favorable settlement for the software developer that resulted in a dismissal of all claims, as well as permitting the software developer to sell the accused software product. Esbin & Alter, LLP v. Zappier et al., No. 1:08-cv-00313 (S.D.N.Y. filed Jan. 14, 2008).

Provide patent, trademark and copyright advice and counsel to Comverse Technology Inc., a leading mobile telecommunications software provider, including matters related to Open Source software.

Served as co-lead counsel for defendant, a manufacturer of textile products and fasteners for major retailers, and successfully obtained summary judgment finding no copyright infringement between the parties' respective works (instruction sheets for a hanger product design).

Provide advice and counsel in areas of copyright to Design Tex Inc., a global manufacturer and supplier of wallcovering products, in connection with copyright infringement, registration and clearance matters.

Provide advice and counsel in areas of trademark and copyright to global manufacturer, designer and supplier of wallcovering products, including trademark and copyright licensing, registration and clearance.

Successfully represented copyright owner and designer of wallcovering patterns against infringer manufacturer. After discovery, the matter was resolved with a monetary settlement agreement and a permanent injunction.

RJF Int’l Corp., et al. v. U.S. Vinyl Mfg Corp., et al., No. 1:06-cv-04021 (S.D.N.Y. filed May 25, 2006).

The firm serves as global trademark and licensing counsel to JA Apparel Corp., a $400 million worldwide lifestyle apparel, home furnishings and accessories company and owner of the Joseph Abboud brand.

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Education

Benjamin N. Cardozo School of Law, J.D. (1992)

State University of New York, University at Albany, B.A., History, Minor in Business (1989) cum laude

Admissions

Connecticut (1992)

New York (1993)

Colorado (2005)

Court Admissions

U.S. Court of Appeals for the Federal Circuit (1995)

U.S. Court of Appeals for the Second Circuit (2000)

U.S. District Court for the Eastern District of New York (1992)

U.S. District Court for the Southern District of New York (1992)

U.S. Supreme Court (2005)

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Professional & Community Activities

Benjamin N. Cardozo School of Law, Alumni Association Pro Bono Committee, Chair (2010-present); Alumni Association, Former Chairperson (2006-2010); Career Development Committee, Former Chair

International Trademark Association (INTA), ADR Committee (2013-present); Neutrals Standards and Measurements Sub-Committee, Chair (2014); Amicus Committee, Member (2012-2013); Law Firm Committee, Chair (2010-2011); Programs Committee, Member (2005-2010); Programs and Standards Subcommittee, Chair (2007-2010); E-Learning Committee, Member (2004); INTA Annual Meeting Project Team, Member (2003 and 2005)

New York State Bar Association, Intellectual Property Law Section, Honorary Member and Former Section Chair (2002-2004); Litigation Committee, Co-Chair (2006-present); Trademark Law Committee, Former Co-Chairperson (1998-2002); Business Law Section, Franchise, Distribution and Licensing Law Committee, Member (2014-present)

American Bar Association, Intellectual Property Section, ABA Forum on Franchising, Member

Association of the Bar of the City of New York, Fashion Law Committee, Member (2012-present), Chair (2014-2017); Intellectual Property Council Representative (2013) 

Hebrew Academy of Nassau County (HANC), Board of Directors (2010-2012)

Young Israel of Plainview, Board of Trustees (2010-present); Former Vice President of Fundraising (2007-2008); Little League Director (2004-present)

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