Joshua Paul

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Joshua Paul, a partner in the firm, is an experienced litigator and trial lawyer. He represents clients before trial and appellate courts in disputes involving trademarks, copyrights, advertising, trade secrets, patents and general business matters. He also counsels clients in these areas.

In 2007, the American Bar Foundation honored Joshua by electing him a Fellow of the American Bar Foundation. This distinction is extended to fewer than one-third of one percent of all attorneys who practice in a given State. Election recognizes a lawyer’s leadership and contribution to the legal profession.

For each of the last seven years (2006 – 2012), Mr. Paul has been included in the annual listing of “New York Super Lawyers” published as a supplement in the New York Times Magazine.

Joshua presently serves on the editorial board of Intellectual Property Strategist published by American Law Media. In the past, he has served on the editorial board of the International Trademark Association’s publication The Trademark Reporter. He has chaired numerous committees and subcommittees of the American Bar Association’s Litigation Section.

Mr. Paul is a cum laude graduate of Yale University (B.A. with Distinction in History) and of Northwestern University School of Law (J.D.).

Recent litigation representations include:

- The Velvet Underground v. The Andy Warhol Foundation for the Visual Arts, Inc., U.S. District Court, Southern District of New York (2012) (case remains pending). Representing not-for-profit foundation in lawsuit concerning ownership of Warhol’s “banana design,” which adorned the front cover of The Velvet Underground’s debut album Velvet Underground and Nico. On our motion, the court dismissed that portion of the case relating to plaintiff’s copyright-related claims for lack of federal subject matter jurisdiction. Velvet Underground v. Warhol Foundation, 12 Civ. 00201 (AJN), 2012 U.S. Dist. LEXIS 127823 (S.D.N.Y. Sept. 7, 2012).

- The Swatch Group Management Services Ltd. v. Bloomberg L.P., case presently on appeal to the U.S. Court of Appeals for the Second Circuit. Representing plaintiff in copyright infringement action arising from defendant/media company’s unauthorized recording of private analyst’s earnings call.

- BC-USA, Inc. v. Bel Brands USA, Inc., U.S. District Court, Northern District of Illinois (2011). Represented Bel Brands USA, manufacturer of BOURSIN brand spreadable cheese in a preliminary injunction matter concerning Boursin’s national product launch of BOURSIN Gourmet Spreadable Cheese product line. After period of expedited discovery, plaintiff withdrew its motion for preliminary injunctive relief.

- Elizabeth Arden, Inc. v. Abelman Frayne & Schwab (2010). Represented global fragrance and cosmetic company in action regarding patent portfolio maintenance.

- Smouha Fabrics Pty Limited v. General Brewing Co., U.S. Trademark Trial and Appeal Board (2009). Represented respondent, owner of trademarks LUCKY LAGER and LUCKY for beer, in cancellation proceeding initiated by owner of trademark LUCKY BEER.

- The Stephan Co. v. Elizabeth Arden, Inc., U.S. District Court, Southern District of New York (2007). Represented defendant, owner of trademark PROVOCATIVE INTERLUDE for fragrances, in trademark infringement action initiated by owner of mark INTERLUDE, also for fragrances. After evidentiary hearing, the court denied plaintiff’s motion for preliminary injunction and resolved all likelihood-of-confusion factors in client’s favor. The Stephan Co. v. Elizabeth Arden, Inc., Case No. 06 Cv. 3871 (LTS) (S.D.N.Y. Jan. 6, 2006).

- Warner-Lambert Company and Pfizer Inc. v. Internet Domain Name PARKEDAVIS.COM, U.S. District Court, Eastern District of Virginia (2006). Represented plaintiff pharmaceutical companies in lawsuit brought under federal anti-cybersquatting statute against persons who registered corporate name Parke Davis as Internet domain name and then linked domain name to website containing offensive material.

- Planalytics, Inc. v. Kirk, U.S. District Court, Eastern District of Pennsylvania (2006). Represented employer as plaintiff in lawsuit against former employees and their current employers complaining about defendants’ breach of no n-competition clause of employment agreements and theft of trade secrets relating to methodologies of long-range weather forecasting.

- Societe des Hotels Meridian v. LaSalle Hotel Operating Partnership, U.S. District Court, Southern District of New York (2005). Represented defendant hotel property owner against claims of false advertising and trademark infringement, brought by owner of Le Meridian hotel chain.

- Clinique, Inc. v. Excite@Home, U.S. District Court, Southern District of New York (2004). Represented leading marketer and distributor of prestige fragrances as plaintiffs in leading-edge case involving a competitors’ use of each other’s trademarks in online advertising.