Overview

Lisa Pearson is an experienced, versatile and creative litigator specializing in copyright, trademark, unfair competition and Internet-related disputes. She represents creators and brand owners across a broad spectrum of industries including fashion and luxury goods, publishing, the arts and entertainment, consumer products, travel and many others.

Ms. Pearson began her legal career at one of New York's top litigation firms, where she enjoyed a diverse complex litigation practice, handling contract, tort, securities, First Amendment, white collar, International Trade Commission and even death penalty cases, in addition to intellectual property. Since 1991, she has focused on intellectual property litigation, obtaining excellent results for her clients in federal and state courts across the United States, in UDRP proceedings to recover domain names, and in cancellation and opposition proceedings in the U.S. Patent and Trademark Office. She has designed and implemented comprehensive policing, enforcement and anti-counterfeiting programs for many well-known rights owners, and counsels clients in a wide array of issues.

A trained mediator and member of the International Trademark Association (INTA) Trademark Mediators Network, Ms. Pearson has a keen interest in alternative dispute resolution. She has successfully resolved numerous disputes through mediation, arbitration and favorable settlements. Because she endeavors to find sensible business solutions to legal problems, she has also assisted clients in negotiating and drafting asset purchase agreements, intellectual property licenses and transfers, coexistence agreements and other commercial agreements.

Ms. Pearson was singled out by the National Law Journal in 2015 as one of its Outstanding Women Lawyers and was named one of the Top 20 Most Influential Women in IP by Law 360 in 2014. She received Lexology's 2015 and 2013 Client Choice Guide Award in the Intellectual Property: Trademarks category for New York. World Trademark Review 1000 – The World’s Leading Trademark Professionals rated Lisa as one of the top trademark litigators in New York (2011-2018), describing her as "a formidable trial lawyer with profound knowledge of the law and an eye to the bigger picture" and "one of the greats in the industry." She is ranked as a New York "Super Lawyer" in Intellectual Property and Intellectual Property Litigation (2007-2017) and a "Top 50 Women New York Super Lawyer" (2013-2018) by Super Lawyers magazine, and an IP Star (2013-2018) and one of the Top 250 Women in IP (2013 - 2014, 2016) by Managing Intellectual Property magazine.

Ms. Pearson has also been recognized as a leading copyright and trademark litigator by The Best Lawyers in America® (2018-2019); Legal 500 US (2007-2018); The International Who's Who of Trademark Lawyers (2011-2018); Legal Media Group's Expert Guide to the World's Leading Women in Business Law (2010-2017) and Expert Guides: Trademark (2014-2018). In 2009, Ms. Pearson received a prestigious Burton Award for excellence in legal writing for her article “How Fluid Trademarks Can Enhance Your Brand” and in 2016 for her article “The Universal Language of Non-Verbal Design Marks.” Ms. Pearson is AV® Preeminent rated by Martindale-Hubbell.*

*CV, BV, and AV are registered certification marks of Reed Elsevier Properties Inc., used in accordance with the Martindale-Hubbell certification procedure's standards and policies.

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Experience

Coty, along with its licensors Calvin Klein, Vera Wang, and Lady Gaga, filed this trademark infringement, unfair competition, false advertising and dilution case against Excell Brands, LLC, a manufacturer of so-called “alternative fragrances” marketed as “versions” of genuine Coty fragrances. Following a bench trial, the Court issued a lengthy opinion finding Excell liable on each of Plaintiffs’ claims and awarding Plaintiffs both permanent injunctive relief as well as Excell’s gross revenue on its sales of the relevant fragrances, totaling more than $6.5 million. The court’s decision includes numerous findings and conclusions that help to clarify and advance the law in this area, and provides brand owners with new ammunition to rein in the alternative fragrance and similar parasitic industries going forward. Coty Inc. v. Excell Brands, LLC, 277 F. Supp. 3d 425 (S.D.N.Y. 2017) (Sept. 18, 2017).

Obtained after filing this infringement action in the U.S. District Court for the District of New Jersey against numerous entities using variants of the F1 mark in connection with kart racing facilities, air travel, and hospitality businesses, we reached early settlements with a number of the defendants, but those using the marks for kart racing in Massachusetts filed a motion to dismiss for lack of personal jurisdiction. We defeated that motion and then negotiated a consent judgment and confidential settlement under which the kart racing facilities will rebrand and cease use of the F1 marks. Formula One Licensing BV and Formula One World Championship Ltd. v. F1 New Jersey, LLC et al., Case 1:14-cv-05812-JBS-AMD (D.N.J.).

Defeated preliminary injunction to prevent client Clif Bar from launching its new premium CLIF MOJO healthy snack bars in see-through packaging that allegedly infringed Kind’s trade dress. Following a multi-day preliminary injunction hearing, Judge Kimba Wood issued a 25-page opinion denying Kind’s motion in full. The judge found that Kind’s alleged trade dress was not distinctive (and thus not protectable), that there was no likelihood of consumer confusion between the parties’ packaging, and that Kind had not demonstrated irreparable injury or a balance of hardships tipping in its favor. Kind, LLC v. Clif Bar & Co., 2014 WL 2619817 (S.D.N.Y. June 12, 2014).

Represented youth fashion retailer American Eagle Outfitters in a trademark infringement and unfair competition matters. We filed suit in 2010 on behalf of AEO against a number of defendants who opened retail stores under the name AMERICAN EAGLE FURNITURE. The defendants asserted that there was no likelihood of confusion due to the obvious differences in the parties’ goods, customers and price points. The court ruled in our favor on virtually every likelihood-of-confusion factor and every issue. It found that the defendants had infringed AEO’s mark; it cancelled defendants’ registration; and it rejected their defenses. The court further offered a number of findings that will prove helpful to AEO beyond this case—such as there is “evidence amply supporting the strength and fame of AE Outfitters’ mark.” Am. Eagle Outfitters, Inc. v. Am. Eagle Furniture, Inc., 11 C 02242, 2013 WL6839815 (N.D. Ill. Dec. 27, 2013).

Defeated a motion for a preliminary injunction brought by True Fit against our client True & Co., an e-commerce lingerie retailer that offers bra-fitting services to its customers. On the basis of its alleged family of TRUE marks, including TRUE FIT, TRUE TO YOU, and TRUING UP, True Fit, which offers e-commerce fitting services, sought an injunction barring True & Co. from using any marks containing the word “true.” The Court denied preliminary injunctive relief and accepted our argument that, “in the Twenty-First Century . . . [t]hat the goods or services of the parties are both found on the Internet proves little, if anything, about the likelihood that consumers will confuse similar marks used on such goods or services,” diverging from many decisions holding the opposite. Following the preliminary injunction ruling, the case recently settled without further litigation on terms favorable to True & Co. True Fit Corp. v. True & Co., No. 12-cv-11006 (D. Mass. March 4, 2013).

Represented the Romare Bearden Foundation in resolving issues concerning ownership of the copyrights of the late artist's work.

Represented Joh. A. Benckiser and Coty, Inc. in a breach of trademark license agreement for Stetson fragrance products. Stetson sought a declaratory judgment that it had the right to terminate the license, along with unspecified monetary damages, on the ground, among others, that Benckiser and Coty failed to commercialize Stetson fragrance in every country and jurisdiction of the world. The firm successfully moved the N.Y. Supreme Court, Commercial Division, to dismiss Stetson's primary claim concerning the obligation to commercialize world-wide, and then defeated Stetson's appeal to and motion for reargument in the Appellate Division, First Department. John B. Stetson Co. v. Joh. A. Benckiser GmbH, 81 A.D.3d 559, 917 N.Y.S.2d 189 (1st Dep't 2011), rearg. denied Ind. No. 600074/10, slip op. at 1 (1st Dep't June 14, 2011).

Defeated motion for temporary restraining order and forced plaintiff to withdraw preliminary injunction motion and pay our clients’ associated attorneys’ fees in case claiming copyright, trademark and design patent infringement in connection with plaintiff’s PED EGG foot file. We then succeeded in obtaining a ruling dismissing four of the six counts of the amended complaint. The case settled on favorable terms in late 2011. Telebrands Corp. v. Del Labs. Inc., 814 F. Supp. 2d 286 (S.D.N.Y. 2011).

Represented Victorinox Swiss Army in action for trademark infringement, trademark dilution and unfair competition against three sellers of decoded Swiss Army fragrances. Decoded fragrances lack the quality control and anti-counterfeiting devices that Victorinox includes in its products at the time of manufacture. The firm obtained consent judgments ;including injunctive and monetary relief. Women's Wear Daily, a leading industry publication, featured this victory for Victorinox Swiss Army and pointed out the importance of this issue to our client and our client’s efforts to protect the Swiss Army brand from counterfeiters: "Already, counterfeit imitations of our fragrances with an estimated retail value of more than $1 million have been seized by the alert action of the U.S. Customs and Border Protection with our cooperation," said Veronika Elsener, Victorinox Chair.

Obtained a $500,000 consent judgment and permanent injunction against C Lenu, Inc. and its principals. C Lenu operated a decoding facility that used tools, chemicals and other methods to remove codes and other quality-control and anti-counterfeiting measures from DAVIDOFF, CALVIN KLEIN and other Coty fragrance products. Under the injunction, C Lenu, as well as its customers and suppliers, are prohibited from trafficking in infringing Coty fragrances of any kind, including decoded Coty fragrances. Coty Inc., et al. v. C Lenu, Inc., et al., No. 10-21812 (S.D. Fla. filed June 3, 2010).

Represented American Eagle Outfitters in a trademark infringement, unfair competitive and false advertising action involving advertising and sale of AMERICAN EAGLE footwear by Payless. The firm obtained a preliminary injunction prohibiting objectionable practices and requiring a prominent disclaimer of any affiliation with American Eagle Outfitters. Ultimately, the case was favorably settled. American Eagle Outfitters v. Payless Shoe Source, Inc., No. 071675 (E.D.N.Y. Nov. 10, 2008).

Obtained ruling effectively reversing UDRP decision by National Arbitration Forum that GMCI, publisher of Penthouse magazine, had engaged in reverse domain name highjacking in seeking transfer of domain name penthouseboutique.com to GMCI. General Media Communications, Inc. v. Heu, 2007 WL 102988 (S.D.N.Y. 2007).

Defeated a motion for a preliminary injunction brought by Pan American World Airways against our clients Flight 001, Inc. and Flight 001 Holdings, Inc., which operate travel boutiques under the FLIGHT 001 mark. Flight 001 named its enterprise after an historic around-the-world flight flown by the now bankrupt Pan American World Airways; plaintiffs acquired certain marks from the original Pan Am airline. Pan American World Airways, Inc. v. Flight 001, Inc., No. 06-14442 (S.D.N.Y. filed Dec. 13, 2006).

Obtained an ex parte seizure order and preliminary injunction resulting in the seizure of counterfeit Lacoste merchandise in raids conducted at 21 locations across Puerto Rico during the Christmas shopping season. Lacoste Alligator S.A. v. Sugar Shack Inc., No. 04-2367 (D.P.R. filed Dec. 13, 2004).

Won summary adjudication on behalf of defendants The Jim Henson Company, Simon & Schuster, Inc. and Viacom Inc. in an idea submission case on the grounds that plaintiff's contract-based claims on certain works in issue were barred by the statute of limitations and that the material defendants allegedly misappropriated in other works was too general a theme to be protected. Cavalier v. Jim Henson Co., Inc., Case No. BC 251828 (Cal. Super. Ct. Jan. 5, 2004).

Defeated preliminary injunction motion brought by an accessories manufacturer to prevent the U.S. launch of ECHO DAVIDOFF, a new fragrance line notwithstanding Scarves by Vera v. Todo Importa Ltd., Inc., 544 F.d 1167 (2d Cir. 1976), in which the Second Circuit held that the plaintiff fashion designer had the right to prevent use of the VERA mark on fragrances, which were "intrinsically related commercially." Echo Design Group, Inc. v. Zino Davidoff S.A., 283 F. Supp. 2d 963 (S.D.N.Y. 2003).

Defeated motion for a preliminary injunction in trademark infringement action against Jennifer Lopez and Coty Inc. based on alleged likelihood of reverse confusion between plaintiff's GLOW mark and defendants' GLOW BY J LO mark. Glow Indus., Inc. v. Jennifer Lopez, Coty Inc., et. al., 252 F. Supp. 2d 962 (C.D. Cal. 2002).

Obtained summary adjudication and an award of attorneys' fees and costs for Sears and Circle of Beauty in an unfair competition case involving the parties' competing claims of ownership of the mark in TIME OUT for bath and body products. Moss et al., v. Grypyon Dev., Inc., et al., No. 8:00-347 (C.D. Cal. filed Apr. 10, 2000).

Obtained preliminary injunction in action brought by exclusive authorized U.S. distributor of Citizen Watches against wholesale and retail distributors of gray market products. Citizen Watch Co. v. BJ's Wholesale Club, 99 Civ. 0810 (DB) (S.D.N.Y. July 15, 1999).

Defeating the defendant's claim to own copyright and trademark rights in two early characters created by Jim Henson at trial, notwithstanding the existence of a signed document purporting to assign away Henson's rights. Jim Henson Productions, Inc. v. John T. Brady & Associates, 867 F. Supp. 175 (S.D.N.Y. 1994), later opinion, 16 F. Supp. 2d 259 (S.D.N.Y. 1997).

Defended widow of artist Patrick Nagel in copyright infringement trial brought by publisher of Playboy magazine and succeeded in establishing her copyright ownership of a majority of the commercially valuable works in dispute. Playboy Enterprises v. Dumas, 831 F. Supp. 295 (S.D.N.Y. 1993), modified on reh'g, 840 F. Supp. 256 (S.D.N.Y. 1993), remanded, 53 F.3d 549, (2d Cir. N.Y. 1995), cert. denied, 516 U.S. 1010, (1995), on remand, 960 F. Supp. 710 (S.D.N.Y. 1997), aff'd, 1998 U.S. App. LEXIS 15225 (2d Cir. N.Y. June 8, 1998).

Established PepsiCo's ownership of world famous STOLICHNAYA mark for vodka following dissolution of former U.S.S.R. and obtained preliminary injunction against infringer. Financial Matters v. PepsiCo, Inc., 92 Civ. 7497 (RO), 1993 U.S. Dist. LEXIS 13294; 1994 Trade Cas. (CCH) P70521 (S.D.N.Y. Sept. 23, 1993).

Obtained summary judgment on behalf of NBC in idea submission case brought by former employee who allegedly originated idea for The Cosby Show. Murray v. National Broadcasting Co., 671 F. Supp. 236 (S.D.N.Y. 1987), 844 F.2d 988 (2d Cir. 1988), cert. denied, 488 U.S. 955 (1988), later proceeding, 718 F. Supp. 249 (S.D.N.Y. 1989).

Successfully tried copyright infringement case brought by NBC against a videotape distributor selling unauthorized copies of an acclaimed 1950s television special “Peter Pan” starring Mary Martin. National Broadcasting Co. v. Sonnabend, 630 F. Supp. 524 (D. Ct. 1985).

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Education

Columbia Law School, J.D. (1980) Harlan Fiske Stone Scholar, ASCAP Nathan Burton Award, Columbia Human Rights Law Review Associate Editor

Yale University, B.A. (1977) summa cum laude, Phi Beta Kappa, distinction in the English Major

Admissions

New York

Court Admissions

U.S. Supreme Court

U.S. Courts of Appeals for the Federal, Second, Ninth and Eleventh Circuits

U.S. District Courts for the Southern and Eastern District of New York

Professional & Community Activities

Association of the Bar of the City of New York, Citibar Women in the Profession Committee

Copyright Society of the U.S.A., Member

International Trademark Association (INTA), Trademark Mediators Network, Emerging Issues Committee

Marques, Chair, Copyright Committee, former Chair, IP Outer Borders Team

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