The question whether and under what circumstances the Lanham Act and the Copyright Act will be applied to conduct occurring at least partially outside the United States grows increasingly important as the world economy continues to globalize and many manufacturers seek to extend their franchises across borders. Two recent federal court decisions have addressed this issue, underscoring the somewhat anomalous differences in extraterritorial enforcement of trade dress and copyright laws, as well as the ability of plaintiffs to obtain injunctive relief with extraterritorial effect. READ MORE
As a veteran first chair litigator, Peter is undaunted by complex facts, precarious circumstances, or cases without legal precedent. No matter the parties or scenario, he uses his experience, creativity and persistence to safely guide clients towards a resolution. He has handled cases before state and federal courts throughout the U.S., inter partes matters before the Trademark Trial and Appeal Board, as well as challenges before the National Advertising Division of the Better Business Bureau.
In addition to his legal experience, Peter’s success derives from his ability to connect with juries. While growing up, he and his family lived throughout Europe and the United States, working jobs ranging from automotive factory worker to caring for the elderly. This breadth of experience enables Peter to relate to people from every background. Peter has handled trademark matters for former Vice President Al Gore, former actress Elizabeth Taylor and charity Kars 4 Kids.
Peter is a member of the New York Intellectual Property Law Association, the International Trademark Association where he serves on the Association's Anti-Counterfeiting Committee, the American Council on Germany, and the American Intellectual Property Law Association.
Peter's experience includes the following.
- C5 Medical Werks/CoorsTek Medical v. CeramTec GmbH: When manufacturer CeramTec tried to block CoorsTek Medical from using the color pink for its ceramic hip replacement products, we rose to CoorsTek’s defense. Claiming trade dress rights in the color pink, a byproduct of the chromium oxide used in CoorsTek’s manufacturing process, CeramTec sued C5 in France and Germany and threatened to file actions in other jurisdictions including the United States. Rather than wait until CeramTec filed its lawsuit in the U.S., Peter counseled C5 to take the initiative to file a complaint seeking a declaratory judgment of non-infringement in Federal District Court in Denver. Following a 13-day bench trial in district court, Peter and his team won CoorsTek the right to make, offer and sell its pink ceramic hip components in the United States. Moreover, this precedential ruling confirmed that a color that is the natural result of a functional attribute described in an expired patent cannot serve as trade dress.
- Successfully represented RBS Citizens at a preliminary injunction hearing and subsequent bench trial in a trademark infringement case.
- Prosecuted and settled a declaratory judgment action on behalf of plaintiff Bombardier Aerospace Corporation for claims of unfair competition and trademark infringement arising from advertisements for corporate jet cards.
- Represented NanoString Technologies in a case involving allegations of false advertising and unfair competition.
- Represented defendants OAO Lukoil, a Russian conglomerate, and its various U.S. subsidiaries, including Getty Petroleum Marketing, Inc., in a case resulting in the dismissal of claims of trademark infringement and unfair competition brought by plaintiff.
- Brought a trademark opposition for OAO Lukoil against four (4) multi-class trademark applications broadly covering goods and services offered at automotive service stations.
- Represented defendants Alfa Bank and Alfa Capital Markets in a case involving trademark infringement and unfair competition claims.
- Advised The Procter & Gamble Company in its acquisition of HDS Cosmetics Lab, Inc., the company that manufactures and markets Doctor’s Dermatologic Formula skin care, from North Castle Partners.
- Advised Hachette Livre S.A., a subsidiary of Lagardère SCA, in its $537.5 million acquisition of Time Warner Book Group from Time Warner Inc.
- Represented Current Media then owned by former Vice President Al Gore, in a trademark infringement case where plaintiff sought to enjoin the use of the mark “Current” by client media company.
- Represented plaintiff Acushnet Company in a case involving counterfeiting, unfair competition and trade dress infringement claims under the Lanham Act.
- Represented Acushnet Company as plaintiff in a case involving trademark infringement, false advertising (including an NAD challenge) and unfair competition claims under the Lanham Act.
- Acted on behalf of plaintiff Acushnet Company in a case involving trademark infringement, trade dress infringement, counterfeiting and unfair competition claims under the Lanham Act.
- Represented plaintiff Acushnet Company in a case involving alleged Lanham Act claims for trademark infringement, false designation of origin and unfair competition.
- Represented Acushnet Company as defendants in a case involving unfair competition and false advertising claims (including challenges before the NAD).
- Acted for plaintiff Acushnet Company in a case involving trademark infringement, dilution, unfair competition, false advertising and deceptive acts and practices claims under the Lanham Act.
- Assisted Bacardi & Company Limited as the plaintiff in a case involving Lanham Act trademark infringement, false advertising claims and violations of FDA labeling requirements.
- Represented BIC Corporation in a trademark infringement and unfair competition case involving private label razors.
- Acted for plaintiff BIC Corporation in a trademark infringement case involving an ex parte seizure of counterfeit BIC lighters with the Beaumont, Texas-based U.S. Marshal Service.
- Represented Breakdown Services, Ltd. as plaintiff in a case involving copyright infringement, misappropriation of trade secrets and Lanham Act unfair competition claims.
- Acted for the declaratory judgment plaintiff The Pharmacy Fund in a case involving trade secret, breach of contract, unfair competition and conversion claims.
- Prosecuted a case involving service mark infringement and unfair competition claims under the Lanham Act on behalf of plaintiff Central Moving & Storage.
- Represented Cobra Golf as plaintiff in a case involving counterfeiting, unfair competition and trade dress infringement claims under the Lanham Act.