Presents
ACC-GNY Retail Practice Group Seminar
Best Practices for
Retail Counsel
Presented by:
Daniel Brown, Partner, Sheppard Mullin
Theodore Max, Partner, Sheppard Mullin
Bryony Cain, Associate, Bird & Bird
Wednesday, April 29, 2015
Sheppard Mullin New York
Table of Contents
TAB 1
Agenda
TAB 2
PowerPoint Presentations
TAB 3
Lindsey, Michael A. “Overview of State RPM,” The Antitrust Source,
Minneapolis: American Bar Association, 2014.
TAB 4
Retail Industry Brochure
TAB 5
Speaker Biographical Information
AGENDA
Welcome and Program Overview
Presented by Theodore Max,
Partner, Sheppard Mullin (New York)
4:30 – 4:40 PM
An Antitrust Primer and Best Practices to Avoid Liability
Presented by Daniel Brown,
Partner, Sheppard Mullin (New York)
4:40 – 5:30 PM
Maintaining The Privilege:
Best Practices For In-House Counsel, Including Cross-Border
Privilege and Discovery Issues
Presented by Daniel Brown, Theodore Max,
and Bryony Cain,
Partners, Sheppard Mullin (New York) and Associate, Bird &
Bird (London)
5:30 – 6:30 PM
ANTITRUST
A PRIMER AND SOME GUIDANCE
Agenda
 Civil and Criminal Antitrust Enforcement
 Price Fixing and Other Violations
 Competitor Contacts: Warnings and Guidance
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U.S. Antitrust Laws – Overview
U.S. antitrust laws prohibit:
– Agreements that unreasonably restrain trade
(Sherman Act §1)
– Monopolization and attempts to monopolize
(Sherman Act §2)
– Exclusive dealing and mergers (Clayton Act)
– Selling the same product at different prices (price
discrimination) (Robinson-Patman Act)
– “Baby” Antitrust Acts (i.e., State Laws)
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Why Do We Have Antitrust Laws?
 To promote competition
 To protect consumers
U.S. Department of Justice:
“The goal of the antitrust laws is to
protect economic freedom and
opportunity by promoting free and fair
competition in the marketplace.”
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GOVERNMENT AND CIVIL
ANTITRUST ENFORCEMENT
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Aggressive Antitrust Enforcers
 Antitrust Division of the Department of Justice
(“DOJ”)
 Federal Trade Commission
 Private Parties/Class Action Lawyers
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The DOJ’s Investigative Tools
 Federal grand jury subpoenas
 Search warrants
 Surprise “drop by” interviews
 Monitoring/wire-tapping (informants, hidden
cameras, microphones)
 The “Dawn Raid”
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U.S. Cartel Enforcement
Significant Jail Time and Fines
– Corporations
• Statutory corporate fine of $100 million, OR twice the
gain derived, or loss caused, by the cartel in U.S.
commerce.
– Individuals
• Fines up to $1 million.
• Jail terms up to 10 Years
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U.S. Cartel Enforcement
“The $100 Million Club”
AU Optronics Corporation of Taiwan (2012)
Liquid Crystal Display (LCD)
Panels
$500 million
F. Hoffmann-La Roche, Ltd. (1999)
Vitamins
$500 million
LG Display Co., Ltd.
LG Display America (2009)
Liquid Crystal Display
(LCD) Panels
$400 million
Société Air France and
Koninkijke Luchtvaart Maatschappij, N.V.
(2008)
Air Transportation
(Cargo)
$350 million
Korean Air Lines Co., Ltd.
(2007)
Air Transportation
(Cargo & Passenger)
$300 million
British Airways PLC (2007)
Air Transportation
$300 million
Samsung Electronics Company, Ltd;
Samsung Semiconductor, Inc. (2006)
DRAM
$300 million
BASF AG (1999)
Vitamins
$225 million
Hynix Semiconductor, Inc. (2005)
DRAM
$185 million
Infineon Technologies AG (2004)
DRAM
$160 million
SGL Carbon AG (1999)
Graphite Electrodes
$135 million
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U.S. Cartel Enforcement
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U.S. Cartel Enforcement
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Amnesty Program (ACPERA)
 DOJ’s “amnesty program” provides immunity to
the first corporation involved in a conspiracy that
comes forward and cooperates with DOJ
against the other conspirators.
 Time is of the essence . . . The race has begun.
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If The Government Contacts You
(Search Warrant)
A. Notify Antitrust counsel Immediately
B.Comply With Government Instructions
C.You Need Not Volunteer Substantive Information
D.Do not Destroy Information
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U.S. Cartel Enforcement – Civil Lawsuits
“No sooner does the Antitrust Division
bring a case [than it is] followed at a
distance by the antitrust plaintiffs’
class-action bar.”
Richard A. Posner, Antitrust in the New Economy,
68 Antitrust L.J. 925, 940 (2001).
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U.S. Cartel Enforcement – Civil Lawsuits
– Actual damages sustained;
– Treble Damages; and
– Costs and reasonable attorneys’ fees
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U.S. Antitrust Laws – Overview
U.S. antitrust laws prohibit:
– Agreements that unreasonably restrain trade
(Sherman Act §1)
– Monopolization and attempts to monopolize
(Sherman Act §2)
– Exclusive dealing and mergers that substantially
lessen competition or tend to create a monopoly
(Clayton Act)
– Selling the same product at different prices (price
discrimination) (Robinson-Patman Act)
– “Baby” Antitrust Acts (i.e., State Laws)
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Sherman Act §1
– “Agreements in Restraint of Trade”
– Horizontal and Vertical
– Market Power
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Conduct judged by two standards
• Some conduct is illegal per se — i.e., prohibited
regardless of effect on competition
• Most conduct is subject to rule of reason — i.e.,
permitted if it enhances competition
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Per Se Violations
 Intent and Effect Won’t Matter
 Activity may be unlawful regardless of intent or motive.
 Activity may be unlawful even if it doesn’t work.
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Per Se Unlawful Agreements
– Price Fixing (includes agreement on anything
that affects the ultimate price or terms of sale
for a product or service also includes royalties)
– Horizontal Allocation of Markets, Territories or
Customers
– Group Boycotts and Big Rigging
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Price Fixing Takes Many Forms
– Minimum and maximum price, future price, price plans
– Discount terms, rebates
– Terms and conditions of sale including credit terms
– Output, volume, productivity
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The Rule of Reason
• Vertical non-price restrictions.
• Vertical customer and territorial restrictions.
• Exclusive dealing arrangements.
• Intellectual property licensing agreements
• Joint Ventures.
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Resale Price Maintenance (RPM)
 Resale price restraints are now judged under
Rule of Reason. Leegin (2007).
 But, still risky because of state laws
 It is NOT unlawful to suggest retail prices to
resellers, or to have a MAP policy, as long as you
do not enter into an agreement or use coercion.
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Refusals to Deal with Distributors,
Competitors or Customers
 Colgate permits unilateral refusals to deal
 Need to Demonstrate Legitimate Criteria for
Distributor Selection and Termination
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Sherman Act §2 (Monopolization)
 A company is a monopolist if it has the power to
restrict output and raise price above the level that
would prevail in a competitive marketplace
without losing customers.
 In the US, it is not unlawful to be a monopolist if
the monopoly is gained and maintained through
lawful means.
 However, a monopolist may not engage in
predatory conduct that excludes competitors or
potential competitors from the market.
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Sherman Act §2 (Monopolization)
Don’t use words in your communications that suggest the
unlawful maintenance or abuse of monopoly power, such as:
 monopolize
 dominate
 conquer
 destroy
 squeeze
 crush
 Kill
 eradicate
 wipe out
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Price Discrimination
(Robinson-Patman Act)
 Prohibits a seller from discriminating in price
between similarly situated purchasers.
 The product sold must be the same – same
characteristics, cost, value, quantity, quality, etc.
 Cost justification and meeting competition
defenses are available.
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THE DANGERS OF
COMPETITOR CONTACTS
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Relations with Competitors
What Is An “Agreement”?
A “conscious commitment to a common scheme to achieve
an unlawful objective.”
An agreement can be shown by direct or circumstantial
evidence.
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Situations That Could Lead to
Allegations of Price Fixing
-A call from a competitor stating “Boy, things sure
are tough out there with our customers, don’t you
think? Can't we do something to improve the
situation?”
-Terminating one distributor after a complaint from
another distributor
-High-risk events, such as trade association
meetings
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Trade Associations
Do’s And Don'ts
Do not discuss
Prices
Profits
Discounts
Terms and conditions
Allocation of
customers or markets
Refusals to deal with
others
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


OK to discuss
Standards
Lobbying
Codes of Ethics
Member benefits
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Case Study
Mr. Able is berated by his competitor, Mr. Evil, for not getting with the
program and increasing price and eliminating discounts. Mr. Able
responds that he does not discuss prices in any way with competitors
and he is leaving.
Mr. Evil becomes conciliatory -- he says he didn't mean to pick on
him. He understood Mr. Able’s high ethical standards and would not
think of proposing that they agree to raise price.
Mr. Evil later sends Mr. Able the following email : “Don't worry about
today. I’ll just let you know when we are going up.” Mr. Able does not
respond.
Mr. Evil sends his announcement (before he sends it to his
customers). Mr. Able sees it, assumes it's public and decides
internally to meet the increase.
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A Word About . . . E-mails
 Consider how other people will describe what
you say in their internal emails
Tom casually says to his competitor “Boy, things
sure are tough out there, don’t you think? Can't
we do something to improve the situation?”
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A Word About . . . E-mails
 Consider how other people will describe what
you say in their internal emails
Tom casually says to his competitor “Boy, things
sure are tough out there, don’t you think? Can't
we do something to improve the situation?”
Tom’s competitor’s internal trip report: “I ran into
Tom; I think he'll support a price increase if we go
first.”
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Relations with Competitors
Dangerous Words
Alliance
Harmonize
Support
Stabilize
Organize
Cooperate
Share
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Defensive Measures
 THE BEST ADVICE: Don’t Talk to Them!
 Never Discuss Prices with Competitors
 Never Discuss Confidential Information
 Make a loud exit if prices are discussed at a trade
meeting, or dinner.
 Avoid the dangerous words of antitrust
 ANTITRUST TRAINING / COMPLIANCE POLICY
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THANK YOU, AND BE CAREFUL!
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RETAIL INDUSTRY
Sheppard Mullin’s Retail team has firsthand knowledge of the retail industry and deep experience working with a wide
variety of industry leaders. Our clients range from large department stores to specialty product chains who sell everything
from high fashion to bargain footwear, from hi-tech electronics to low-tech sporting goods.
Retail is the second-largest industry in the United States measured both in numbers of establishments and employees. The
U.S. retail industry generates $3.8 trillion in retail sales annually, or approximately $11,993 per capita. The retail sector is
also one of the largest worldwide with a multitude of facets, including contract manufacturing of private labels, land
acquisition, real estate development, finance and leasing, human resource management, logistics and transportation to
name a few. Moreover, technology and global markets have rapidly changed how retailers sell their goods. Although the
vast majority of retail goods are sold in the most affluent nations, such as the United States and the European Union, they
are often manufactured in foreign lands—China in particular. Thus, expertise in international outsourcing and
import/export trade issues is critical to today’s retailers and their counsel.
To ensure your company is on the cutting edge, you need a law firm that understands your business and can assist you in
expanding into new markets and developing new business strategies that can capitalize on the global market, while
protecting your products and brands along the way.
Our team can assist your company in virtually every area that affects the retail industry:
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Advertising and Promotions
Anti-piracy and Counterfeit Goods
Antitrust
Corporate Finance and Secured Transactions
Creditors’ Rights & Bankruptcy
E-Commerce
Employee Benefits
Factoring and Financing
Franchise Protection
Import, Export and Customs Matters
Intellectual Property
• Joint Ventures and other Strategic Business
Relationships, Transactions and Alliances
• Labor and Employment
• Land Use
• Litigation and Dispute Resolution
• Licensing and Distribution
• Merchandising
• Mergers and Acquisitions
• Real Estate Development and Leasing
• Stock and Equity transactions
• Tax
ADVERTISING AND PROMOTIONS
Word of mouth and a few billboards just don’t cut it any longer. Retailers are utilizing new and sophisticated advertising
and promotion methods to increase market share and brand awareness — from online search optimization, to gift cards,
to sweepstakes and contests, product placement, etc. Advertising law necessarily touches on a wide variety of legal
disciplines, including entertainment, intellectual property, unfair competition, privacy and publicity rights, constitutional
rights, e-commerce and antitrust and government trade regulation, among others. Our advertising lawyers specialize in
these issues from both counseling and litigation perspectives.
Sheppard Mullin is experienced in preparing endorsement, sponsorship,
sports and entertainment marketing and licensing agreements, clearing
online, print, television and radio advertising copy, complying with privacy
concerns, and preparing advertising agency and media agreements. We also
advise clients in complying with state and federal regulations governing
some of the highest profile contest and sweepstakes promotions in the
country. Our work generally covers the full range of advertising, marketing
and promotional endeavors. Our attorneys represent clients in private
litigation involving false advertising, libel, trademark infringement, copyright
infringement, right of privacy and right of publicity issues in federal and state
courts. We also handle the investigation of false and deceptive advertising
claims by the Federal Trade Commission and the various state attorneys
general and self enforcement proceedings by trade groups, including the National Advertising Division of the Council of
Better Business Bureaus. We also conduct in-house compliance programs designed to educate and train employees in these
areas.
Beyond providing superior technical legal analysis, our attorneys consistently complement and support our client’s unique
objectives by devising and executing tactics and strategies that are innovative, aggressive and practical. Our proven ability
to provide “big picture” service on time and on budget is enhanced by firmwide access to the skill, knowledge and
relationships of Sheppard Mullin’s full institutional depth. This depth, combined with our unique expertise in advertising
law and litigation, puts us at the top of our field. Our advertising expertise spans the full spectrum of advertising,
marketing and promotions issues, including:
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Clearance of third party rights including copyrights in text, music and art
Photographs, graphics, design, logos, slogans and colors
Trademark and trade dress rights
Use of consumer, celebrity and expert testimonials and endorsements to make
Product claims, and protection of privacy and publicity rights
Claim substantiation issues including use of clinical studies and tests to support
Use of comparative advertising
Use of pricing claims including comparative pricing, “sale” pricing, “free” offers, and “no sales tax” promotions
Use of rebates
Use of “Made in U.S.A.” claims
Use of “green” claims
Text of product claims, warranties, warnings and disclaimers
Branded entertainment and promotional tie-in transactions
Clearance review covering copyright, trademark, privacy, publicity and First Amendment rights, defamation and
related issues
ANTI-PIRACY AND COUNTERFEIT GOODS
Piracy is not a legal theory, it is a business problem that costs the global economy trillions of dollars per year. Piracy can
attack your lifeblood: your own private label retail brands. Private label brands are outstripping branded sales two-to-one
over the past seven years. Meanwhile, newer and cheaper manufacturing technologies have given pirates new tools, as
have illicit online distribution methods.
We can also work with retailers to help prevent the receipt and distribution of pirated branded goods. We partner with
our clients to develop cost-effective anti-piracy programs to meet their specific needs. Our attorneys have been trusted by
the U.S. and Japanese governments to advise them on domestic and international anti-piracy concerns. We also have
decades of experience representing fashion and apparel and electronics manufacturers in anti-piracy matters. Our
attorneys have planned and executed domestic and international seizures. We have made the law (on behalf of a
footwear company) that most retailers and manufacturers now rely on for extraterritorial application of the U.S.
Trademark laws. We coordinate with investigators and make criminal referrals. We are experts at addressing and taking
down unauthorized Internet sales and auctions.
Whether it be a brand, a logo, a pattern or a design on a knockoff, we recognize that is the heart of your business.
Piracy will not disappear, but Sheppard Mullin can provide your business with the tools and a plan to fight back that is right
for you.
ANTITRUST
For decades, Sheppard Mullin has been a leader in the antitrust bar. Gordon Hampton, one of the firm’s name partners,
was a founder of the Antitrust Section of the American Bar Association. That tradition continues today with a dynamic
Antitrust and Trade Regulation practice spanning every aspect of antitrust law. Our practice currently encompasses
matters involving mergers and structural issues, criminal grand jury proceedings, international antitrust enforcement,
pricing practices, product distribution, joint ventures, class actions based on federal statutes and state unfair competition
laws, among many other areas
CORPORATE FINANCE AND SECURED TRANSACTIONS
Whether your corporate finance needs involve public offerings, private placements, including venture capital and angel
financing, Sheppard Mullin attorneys are experienced and ready to assist. We have served as counsel to a variety of issuers,
underwriting firms and investment banking firms in connection with initial and other public and private offerings of
securities. Our attorneys have participated in the private placement of securities, representing issuers, private placement
agents, equity funds, institutional investors and venture capital firms. We have been on the vanguard of every type of
private financing transaction, including seed financing angel investments, venture capital financing, later stage equity or
mezzanine financing, PIPES and private debt financing. The hands-on experience of our attorneys in a variety of offerings
gives us the ability to develop creative solutions to problems encountered in the course of any corporate financing.
CREDITORS’ RIGHTS AND BANKRUPTCY
While your business may flourish, those of your customers, vendors and suppliers may not always be so fortunate.
Sheppard Mullin is a leader in creditor/lender rights counseling. Our attorneys work to develop solutions for creditors that
create and preserve value, requiring an in-depth understanding of litigation strategies and commercial, bankruptcy and
real estate law. Provisional remedies are time sensitive and offer tactical advantages in resolving a creditor/debtor dispute.
These include:
• Writs of attachment
• Writs of possession over personal property
• Judicial foreclosure actions
• Appointment of receivers
E-COMMERCE
Sheppard Mullin created the Internet – just checking to see if you are paying attention. Companies and designers are
creating their own internet presence. We assist and partner in development, including: software agreements, contracts
with internet designers and providers, disclaimers and copyright notices, copyright protection, consent agreements, proper
use of photos, sponsorship agreements. In addition, assistance is needed to monitor, enforce and protect against
unauthorized sale of products, defamation, domain infringements, and false advertising.
Online commercial endeavors also yield a variety of new and complex challenges stretching conventional law far beyond
its original scope. Whether a company uses the Internet as an active and dynamic medium for transacting business or as a
more passive advertising forum, legal disputes with competitors and other intellectual property owners are inescapable.
Sheppard Mullin attorneys provide guidance and representation in both transactions and litigation in a variety of
e-commerce areas, including:
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Domain name ownership
Meta tag copyright infringement
Unlawful framing or linking
E-commerce transaction disputes
Protection and policing of proprietary content
Privacy concerns
• Libel and defamation
• Jurisdictional effects of website ownership
• Online patent, copyright, trademark and trade
secret disputes
• Authority of the Internet Corporation for
Assigned Names and Numbers (“ICANN”)
Our attorneys have helped draft and are familiar with some of the newer regulations developed specifically to address ecommerce. We have expertise in drafting protective user agreements and privacy and e-signature policies. Sheppard
Mullin’s experienced attorneys are familiar with the laws and regulations governing Internet business, making us effective
advocates for our clients’ interests. Among other laws, Sheppard Mullin has assisted clients in interpreting and litigating
issues arising out of the:
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Anti-Cybersquatting Consumer Protection Act
Federal Electronic Communications Privacy Act
Federal Computer Fraud and Abuse Act
California Computer Data Access and Fraud Act
ICANN’s Uniform Domain Name Dispute Resolution Policy
Our track record of resolving Internet disputes with a phone call, cease and desist demand letter, arbitration demand or
by bringing and defending litigation in state and federal courts makes our firm a regular choice to solve Internet related
problems.
EMPLOYEE BENEFITS
Sheppard Mullin offers a premier benefits law practice. Our attorneys have represented employers, plan sponsors,
investment managers, plan fiduciaries, plan trustees and syndicators of investment vehicles in connection with all aspects
of qualified and nonqualified retirement plans and employee benefit matters under the Employee Retirement Income
Security Act of 1974 (“ERISA”) and the Internal Revenue Code of 1986. As a result, we have had the opportunity to analyze
issues, provide advice, draft documents and negotiate positions from many different perspectives. Our well rounded
expertise in this highly complex area of the law has benefited our clients for the last several decades. Our experience
includes:
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Defined contribution and defined benefit plans
Profit sharing and 401(k) plans
Supplemental executive retirement plans (“SERPs”)
Employee Stock Ownership Plans (“ESOPs”)
Rabbi trusts
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Deferred compensation plans
Split dollar life-insurance plans
403(b) tax sheltered annuities
Self-funded and insured health and welfare benefit plans
HIPPA related challenges
Our advice spans the design, implementation and administration of all such plans. It also includes all work associated with
the defense of employee benefit disputes, the evaluation of benefit claims and securing determinations from the Internal
Revenue Service and, where necessary, the Department of Labor.
FACTORING AND FINANCING
Our team is experienced in all variations of industry
related financing transactions, including:
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Financing and distribution arrangements
Rights acquisition financings
Revolving credit finance facilities
Complex secured distribution arrangements
License financing and securitization facilities
Working capital revolving lines of credit
Merger and acquisition financings, including both
public senior debt and senior bank debt
• Complex intercreditor and inter-party arrangements
• Foreign export/import transactions
FRANCHISE PROTECTION
Franchising has become an important and frequently used business
form in the specialty retail industry. Approximately 20% of the U.S.
gross national product results from franchise operations, which
employ a combined 8 million people. Historically, over 40% of all
retail sales were made by franchise establishments, with new goods
and services being added to franchising’s repertoire on a daily basis.
As franchise systems mature into billion dollar enterprises and as
franchises and potential franchises seek increased participation and
profit, franchise related legal disputes are inevitable. Franchising’s
legal structure requires an interdisciplinary approach to franchising
transactions and disputes. While common law contract and tort principles are applicable to every franchise relationship,
the field is increasingly dominated by statutory law, including specialized state and federal franchising statues, antitrust,
trademark, copyright and patent law. The franchise relationship goes hand-in-hand with brand protection and
intellectual property, as the franchisee is often the brand’s largest exposure to the consumer.
Sheppard Mullin clients rely on the firm’s experience and specialized knowledge in the areas of franchise litigation, substantive
franchise law, intellectual property, bankruptcy and creditors’ rights, labor and employment and antitrust and trade regulation
to provide an integrated, one-stop resource for clients presented with the unique challenges facing the franchise industry.
I M P O R T, E X P O R T A N D C U S T O M S M A T T E R S
The movement of goods and information across borders – whether as finished products, components, demonstration
models, or selling aids – is a fact of life. Another fact of life is the intricate web of governmental regulations that oversee,
control, and sometimes prohibit the movement of such products and information outside across and within borders.
Sheppard Mullin advises and represents U.S. and foreign clients in connection with the wide range of compliance and
enforcement issues relating to the import, export and re-export of products, Customs, Departments of Commerce and
State regulations, as well as the economic sanctions rules of the Treasury Department.
IMPORTING OF GOODS
We assist clients with:
• Representation of foreign and domestic companies and trade associations in antidumping and countervailing duty
investigations before U.S. Department of Commerce and International Trade Commission. Admissibility determinations
– including the US Department. of Transportation, the Environmental Protection Administration, the FDA, and the US
Department of Agriculture
• Drafting of compliance manuals, preparation of prior disclosures and compliance audits
• Petitions for relief from fines, penalties, merchandise seizures, and merchandise forfeitures
• Cancellation or mitigation of penalties and expediting of the release of goods
• Guidance on country of origin marking and labeling requirements
• Advice on binding rulings, protests and judicial proceedings
• Guidance on special compliance programs, including the Customs-Trade Partnership Against Terrorism (C-TPAT),
Focused Assessments and the Importer Self-Assessment Program
• Defending customs fraud allegations in litigation before the Court of International Trade
• Representation of customs brokers and brokerages in all phases of customs laws and regulations, including
applications, licenses, permits, investigations, and record-keeping requirements
• Counseling regarding customs classification and valuation issues, and regarding export documentation and licensing and
international sanctions regulations; obtained export licenses from State Department Office of Defense Trade Controls,
Commerce Department Bureau of Export Administration and Treasury Department Office of Foreign Assets Control
• Representation of freight forwarders on security clearance matters
• Represent importers and carriers investigated by Federal Maritime Commission for alleged mis-description of goods
EXPORTING OF GOODS
We assist clients with:
• Commodity classifications and commodity jurisdiction requests
• Export license-related counseling under the International Traffic in Arms
• Regulations (“ITAR”) and Export Administration Regulations (“EAR”)
• Manufacturing License Agreements
• Technical Assistance Agreements
• Distribution Agreements
• Planning and implementing export compliance programs
• Export compliance audits and internal investigations
• U.S. anti-boycott laws
• Trade embargoes
• Limitations on foreign agent fees
• Foreign Ownership Control or Influence (“FOCI”)
• The Foreign Corrupt Practices Act
• Bribery
• Allowability of and the ability to allocate foreign selling costs under federal contracts
INTELLECTUAL PROPERT Y PROTECTION
Protecting your intellectual property is a key element in maintaining your competitive advantage. Our team of intellectual
property attorneys will work side-by-side with you to register and protect your rights through:
• Patent and trademark and ownership searches
• Preparation of and filing foreign and domestic patent (including design
patent), trademark and copyright applications
• Monitoring and maintaining an extensive and thorough in-house database
and docketing system
• Drafting, negotiating, implementing and administering all types of
agreements that license, transfer or grant rights in your intellectual property
• Protecting your rights and helping you to avoid the infringement of other’s
rights through extensive searches and investigations, preparation of notice
letters, and recordation of IP rights with U.S. Customs
We offer a complete international trademark practice, including worldwide
trademark portfolio management and brand development services, international
trademark, service mark and trade name clearances, trademark prosecution on a
national, regional (e.g., European Union) and international basis, as well as
international licensing and distribution agreements, supplier, manufacturer and
vendor agreements.
Our attorneys have handled transactions ranging from Fortune 500 international intellectual property and brand
acquisitions to international title searches, due diligence and worldwide intellectual property assignments. With our
network of associated attorneys throughout the world, we handle trademark registration matters in practically every
country. Our experience extends to creation and management of large portfolios exceeding 500 registrations worldwide.
We also perform brand watching services, render international infringement opinions, engage in anti-counterfeiting
actions and enforcement activities, and in-use investigations, conduct due diligence, and analyze the proper brand
protection and enforcement activities.
We routinely counsel clients regarding Copyright Act protection and obtain copyright registrations, including those specific
to the retail industry, such as private label designs, web sites and marketing communications, music and audiovisual works,
and fine art. Once a copyright is registered, we work with clients to preserve exclusive rights under both U.S. law and
international treaties.
In addition to protecting our clients’ rights, we ensure they do not run afoul of the rights of others. We counsel to avoid
infringing third party copyrights and obtain licenses to use third party copyrighted works.
JOINT VENTURES AND OTHER STRATEGIC BUSINESS
REL ATIONSHIPS, TRANSACTIONS AND ALLIANCES
Sheppard Mullin advises clients in transactions involving various types of “corporate partnering” arrangements. We have
in-depth expertise in structuring and negotiating joint ventures and strategic alliances (whether a start-up company,
privately held business, public corporation or other form of joint enterprise) for resource and product acquisition,
distribution, development, infrastructure development, market penetration and risk sharing. We advise on all ancillary
agreements, such as marketing, distribution, license and supply agreements. Structuring and negotiating these very
complicated transactions requires, in addition to legal guidance and counseling, substantial business acumen and
experience, all of which we have acquired through the depth and breadth of our transactional experience. Our expertise
ranges from start to finish, including the formation, operation, dispute resolution and potential liquidation of the
enterprise. Our proven track record in advising clients to select the right joint ownership structure and negotiate all related
agreements has allowed us to close these transactions quickly and efficiently.
L ABOR AND EMPLOYMENT
Sheppard Mullin has one of the largest and most experienced Labor and Employment law practices in the country. In
addition to representing employers of all sizes—ranging from Fortune 100 companies to start-ups—Sheppard Mullin
provides labor and employment advice to retail companies, including department and clothing stores; wholesalers and
distributors; and retailers of apparel, consumer goods and housewares.
Sheppard Mullin attorneys provide labor law counseling to employers on a broad range of issues, including:
• Employee discipline, termination and other
employee relations issues
• Employee benefits, employee leaves and wage and
hour issues
• Employment contracts and executive compensation
• Handbooks and personnel manuals
• Reductions in force
• Harassment and discrimination
• Management and employee training programs
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OSHA
Workplace privacy and workplace violence
Internet and e-mail usage policies
Affirmative action and OFCCP audits
Disability access and accommodation
Employee arbitration agreements
Drug and alcohol testing
Immigration issues
Our attorneys have also litigated and resolved virtually every type of dispute that can arise in the day-to-day operations of
a retail company, such as:
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Wage and hour class actions
Harassment and discrimination claims
Defamation claims arising from the workplace
ERISA claims
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Stock option disputes
Unfair competition, trade secret and privacy matters
Qui Tam False Claims Act and whistle blower actions
Wrongful termination claims
Sheppard Mullin has unique expertise in the wage and hour area and regularly works with employers to ensure that their
compensation and classification practices comport with state and federal law. The firm is regularly called upon to defend
complex wage and hour class action litigation. Our attorneys are known for the ability to resolve disputes without
resorting to litigation or trial.
We also represent clients in traditional labor law matters pertaining to unions and the National Labor Relations Act.
• Collective bargaining
• Prevailing wage compliance and disputes
• Strikes, picketing and boycotts
• Unfair labor practice charges
• Union organizing drives and the de-unionizing process
• Labor arbitrations
In addition, Sheppard Mullin offers expertise in the negotiation and documentation of senior executive employment
agreements. This expertise includes devising performance and stock oriented compensations plans, as well as other
deferred or incentive based plans, preparing confidentiality, trade secret and non-interference agreements and advising
on tax and employee benefit matters.
L AND USE
Our land use attorneys have frequently been the leaders of permitting and land acquisition efforts for large, multifaceted
development projects throughout California, including retail stores and regional shopping centers. We regularly litigate
issues relating to the California Environmental Quality Act (“CEQA”) and the National Environmental Policy Act (“NEPA”).
We have handled many important cases through the California Courts of Appeal and the federal appellate courts. Our
familiarity with CEQA and NEPA enables us to provide efficient, focused counseling in the preparation of environmental
impact reports and in the creation of a defensible record in anticipation of CEQA or NEPA litigation.
LICENSING AND DISTRIBUTION
Since you can’t do it all yourself, licensing and distribution relationships have become a crucial part of the retail industry.
These can be some of the best and most profitable relationships your company has, or some of the worst. The strength
and quality of your license and distribution agreements has much to do with whether your relationships are the former or
the latter. Sheppard Mullin attorneys handle everything from single party licenses, to multi-party multi-level distribution
and license agreements, both domestically and internationally.
LITIGATION AND DISPUTE RESOLUTION
Sheppard Mullin’s Business Trial Practice has more than 200 litigators with significant trial experience in jury and court
trials, and arbitration. This is something most law firms cannot claim. Other law firms may have an army of litigators, but
they don’t have an army of trial lawyers. Our lawyers promote the use of mediation and other dispute resolution
mechanisms as alternatives to trial – alternatives that can sometimes save substantial costs and time to our clients in
appropriate cases. We also pride ourselves on our ability to resolve matters quickly and efficiently through pre-trial
motions. But when these alternatives to trial don’t work, you want a lawyer who is not afraid to go to trial and who has
exceptional trial skills.
The firm’s practice involves virtually all aspects of business and commercial litigation, and our litigators represent clients
from a broad spectrum of industries including retail.
Our work for the retail sector in particular has run the gamut from complex commercial, to tax, to consumer class action
defense. We have litigated numerous large ticket matters, often class actions, including:
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Deceptive and false advertising claims
Consumer fraud actions
Securities fraud and shareholder actions
Wage and hour
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Song-Beverly Credit Card Act Claims
17200 – California Unfair Competition Law
Unfair Trade Practices Act
Privacy and consumer information claims
Sheppard Mullin is a leading class action defense firm. Our lawyers have successfully defended class actions of all shapes
and sizes. We have the knowledge and practical know-how to address all stages of class and representative cases, from
pleading and class certification through summary judgment and trial where settlement is not appropriate.
In recent years, many retailers with operations in California have faced class action lawsuits brought under California's
Song-Beverly Credit Card Act related to requests to consumers for personal information. Sheppard Mullin has defended
retailers throughout the state in such actions and has attorneys experienced in the defense of such cases throughout our
California offices. Our attorneys have also counseled retailers on compliance with California consumer privacy laws.
Our litigators counsel clients in multifaceted controversies that extend outside the courtroom and involve sensitive issues
of legislation, regulation, and reputation, often in more than one jurisdiction. Our class action team has handled
nationwide and statewide class actions in federal and state courts across the country, and Sheppard Mullin has served as
coordinating counsel in a number of Multi-District litigation proceedings.
The depth and breadth of our class action defense practice is demonstrated by the fact that our lawyers were involved in
the first common law consumer fraud class action in California, and we worked directly with the Judicial Council of
California and the Los Angeles Superior Court to draft key rules governing California class actions. We pride ourselves on
providing our clients with the most efficient and productive resolution to their matters early through our aggressive and
innovative law and motion practice.
Our lawyers keep on top of key developments that could lead to
litigation for our clients, and we keep them informed on how to
be prepared to prevent litigation. As a value added service, we
provide continuing education seminars to our clients on topics
related to class actions, unfair competition, false advertising, and
wage and hour issues.
MERGERS AND ACQUISITIONS
When it is time to go shopping or be shopped, Sheppard Mullin
offers its clients a savvy and talented group of M&A attorneys that
“do deals” throughout the United States and overseas. We advise individuals and small privately held businesses, private
equity firms and multinational public corporations on all types of M&A transactions, including mergers, purchases and sales
of stock and assets, management buyouts, recapitalizations and other corporate restructurings. Our attorneys have been
involved in transactions that have been both friendly and hostile, have advised both foreign and domestic participants on
cross border transactions and have utilized a myriad of acquisition structures and forms of consideration to help accomplish
our clients’ goals. Our attorneys represent bidders, target companies, investment bankers, financial advisors and many
others that participate in M&A transactions. We have also been engaged on numerous occasions to serve as special counsel
to boards of directors and to independent director committees.
REAL ESTATE DEVELOPMENT AND LEASING OF RETAIL FACILITIES
Whether clients want to purchase real estate to develop their own facilities or lease facilities from other commercial
developers, our Real Estate attorneys represent retailers in real property ownership and development.
Sheppard Mullin has vast experience in commercial leasing transactions. Our experience includes the unique issues of
urban and suburban office space, industrial parks, shopping centers, mixed use retail, distribution centers and build-tosuits.
We negotiate and prepare numerous special purpose high rise ground leases for urban high rise buildings, corporate
headquarters, campuses and free standing retail and commercial facilities. The lease forms we prepare are tailored to the
requirements of specific markets so that the lease becomes more of a marketing tool and less of an impediment to the
documentation of a transaction. We have also developed forms for those transactions that are typically ancillary to leases
such as tenant improvement agreements, parking agreements and guarantees. Our attorneys have far reaching experience
counseling tenants in connection with lease disputes, workouts and buyouts, including resolution of issues involving the
exercise of options, assignment and subletting, tenant improvements and defaults.
TAX
Just as you expect to pay taxes, you should expect your law firm to provide sophisticated tax counsel. Sheppard Mullin’s
tax attorneys advise on all areas of corporate tax law, as well as provide clients with sophisticated expertise in employee
benefits law, executive compensation, estate/wealth planning and tax-exempt or tax-advantaged finance. Our
understanding of evolving tax law allows us to consistently design transactions and solve seemingly insurmountable tax
problems in the most advantageous way possible for our clients.
Because tax issues are integrated into the firm’s entire practice, our tax attorneys are known for their ability to collaborate.
Our tax attorneys regularly work with members of the Corporate and Securities, Real Estate and Banking and Finance
practices to advise our clients in structuring transactions that comply with federal, state and international tax laws. We
can assist clients in structuring transactions and planning business affairs in order to reduce income, sales, transfer, property
and other taxes.
A sampling of the matters we handle includes:
• Taxable and tax-free mergers, acquisitions and sales
• Venture capital financing and business formation
• Choice of entity and combinations of entities, including C corporations, S corporations, limited liability companies,
general and limited partnerships, REITs and cooperatives
• Joint ventures and strategic alliances
• Foreign investment in the U.S.
• Expansion of U.S. businesses abroad
Our goal is to help our clients achieve their business objectives with practical and effective tax reduction planning.
STOCK AND EQUIT Y TRANSACTIONS
The past decade has seen executive compensation plans become increasingly technical and complex. Employers have
learned that to effectively grow their business, they must find ways to compensate executives who contribute to the overall
success of the company. Incentive stock options have helped many employers motivate employees not only to contribute
to the overall success of the company, but also to stay with the company and acquire more of a vested interest. Tailored
commission plans have helped employers keep their sales forces focused on more specific growth goals. To lure the best
recruits, employers have also established attractive benefit plans such as bonus plans and stock appreciation rights plans,
phantom stock and deferred compensation plans and supplemental executive retirement, employee stock ownership and
pension plans. Those employers who have not critically evaluated their compensation packages have found themselves
losing valuable employees and recruits to their competitors.
Sheppard Mullin assists employers in establishing tailored, attractive incentive and compensation plans to win and keep the
employees its competition wants most. We advise on establishing compensation plans designed to advance an
organization’s interests, while at the same time rewarding employees for productive contributions. Our attorneys draft stock
option plans, assist employers in establishing procedures for administering stock option plans and advise employers
regarding stock option plan compliance. We assist employers in developing tailored bonus and commission plans that
reward employees for contributing to the growth and increased revenue of an organization, as well as assist employers on
how to establish and administer welfare and benefit plans that comply with the Employee Retirement Income Security Act
of 1974 (“ERISA”).
We also defend clients in disputes arising from compensation agreements and benefit plans. Our litigators have defended
employers in compensation disputes ranging in complexity from simple claims for unpaid wages, to informal and court
litigated stock option disputes, to claims for breach of commission or bonus agreement, to ERISA claims for employee
benefits.
Beijing
Brussels
Century City
Chicago
Del Mar
London
Los Angeles
New York
Orange County
Palo Alto
San Diego
San Francisco
Seoul
Shanghai
Washington, D.C.
www.sheppardmullin.com
www.fashionapparellawblog.com
Daniel L. Brown
Partner
30 Rockefeller Plaza
New York, NY 10112
Practices
T: 212.634.3095
F: 212.655.1768
[email protected]
Antitrust and
Trade Regulation
Daniel Brown is a partner in the Business Trial Practice Group in the
firm's New York office. Mr. Brown is also the Chair of the firm's Pro
Bono Committee.
International Practice
Areas of Practice
Litigation
Class Action Defense
International Arbitration
Securities Litigation
Industries
Hospitality
Self-Storage
Education
J.D., Fordham University
School of Law, 1998
B.A. The University of
Michigan, 1993
Mr. Brown specializes in high stakes, complex, commercial
litigations and arbitrations, including consumer class actions. He has
particular experience litigating “bet the business” disputes among
business owners and by consumers and competitors alleging claims
arising from many state and federal statutes, including claims under
the antitrust, securities, trademark, copyright, and consumer
protection laws.
A significant part of Mr. Brown’s litigation practice has always
involved the representation of large and independent/boutique hotel
brand managers, franchisors and owners in various disputes arising
from the hotel owner-manager relationship, including litigating
breach of contract and breach of fiduciary duty disputes arising from
terminations of hotel management and other agreements, and
serving as trial counsel in cases that have set the standards for
determining damages in the context of hotel management related
disputes.
Mr. Brown also represents in litigation and counsels clients in the
self-storage industry and is the co-chair of the Firm’s self-storage
industry team.
Mr. Brown is the recipient of Disability Rights Advocates’ 2014 New
York Impact Litigation Award, given in recognition of his life
changing litigation on behalf of hundreds of thousands of people
with disabilities.
Clerkships
Intern, the Honorable Michael B. Mukasey, United States District
Court for the Southern District of New York
Admissions
New York
U.S. Court of Appeals for the First and Second Circuits
U.S. District Courts for the Southern and Eastern Districts of New York
Honors
Recipient, New York Impact Litigation Award, in recognition of life changing litigation on behalf of
people with disabilities, Disability Rights Advocates, 2014
Mr. Brown was a member of the pro bono team at Sheppard Mullin receiving the 2011 Frankel
Award from Human Rights First for their successful representation of Abdalmageed Haroun, a
prominent human rights activist and former Sudanese prisoner. In the Sudan, Mr. Haroun's work
focused on women's rights, the plight of internally displaced refugees, and the victims of the
conflict in Darfur. As a result of his selfless and heroic efforts, Mr. Haroun was detained for months,
persecuted, tortured, and threatened with death by the Sudanese government, forcing him to flee
the country. The firm represented Mr. Haroun in connection with his application for asylum in the
United States.
New York Super Lawyer, Super Lawyers, 2014
New York Rising Star, Super Lawyers, 2011
Experience
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Avalos v. IAC/Interactivecorp. et al., 13-cv-08351 (S.D.N.Y). Obtained pre-answer dismissal of
complaint concerning internet dating profiles and asserting claims under the Lanham Act,
Copyright Act, RICO statute, and state laws.
Taxis for All Campaign v. Taxi & Limousine Commission, 11-cv-00237 (S.D.N.Y.). Achieved a
historic settlement with New York City In this case challenging the New York City taxicab fleet
as not wheelchair accessible, in which the City has agreed to have the New York taxi fleet,
which is currently only 1.8% accessible, become 50% accessible over six years.
BCID v. Bloomberg, 11-cv-6690 (S.D.N.Y.). Successfully represented and tried a case on
behalf of a class of all persons with disabilities in New York City alleging that New York City
has failed to adequately plan for people with disabilities in emergencies.
In re MSR Resort Golf Course, LLC, 11-10372 (Bankr. S.D.N.Y.) and In re M Waikiki (D. HI.).
Successfully represented Marriott in two high profile litigations arising from termination of
hotel management agreements.
Cohen vs. T Mobile USA, Inc. et. al, 10cv02913 (E.D.N.Y.). Obtained a pre-answer and premotion dismissal on behalf of T-Mobile USA, Inc. in a case alleging violations of New York
General Business Law § 349.
Kalimantano GmbH, et. al v. WatchNetwork.com, Twitter Inc., et. al, 13 -560 (S.D.N.Y.).
Successfully represented WatchNetwork.com in case alleging violations of the
Anticybersquatting Consumer Protection Act, defamation, damage to business reputation,
and invasion of privacy in connection with information on the defendants’ websites.
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Respira Health LLC v. Med Biogene, Inc., 650365/2011 (Sup. Ct. NY. Co.). Successfully
defended biotech company against lost profits claims arising from alleged breaches of a letter
of intent.
Banxcorp v. Bankrate Inc., 2:07-cv-03398 (D.N.J). Successfully represented LendingTree
against antitrust claims.
Member of litigation and trial team for Samsung Electronics in the largest ever civil antitrust
case.
In re SRAM Antitrust Litig., MDL No. 1819 (2006-present): National counsel defending civil
price-fixing class actions regarding computer memory chips.
Camofi Master LDC, et al. v. Advanced Cell Technology, Inc., Index No. 652816-2011 (N.Y .
Sup. Ct. 2013); Cranshire Capital Master Fund, Ltd., 11 Civ. 8755 (DLC)(JCF)(S.D.N.Y. 2012);
Black Mountain Equities, Inc. v. Advanced Cell Technology, Inc., 11 Civ. 7305 (PAE) (S.D.N.Y.
2012); Alpha Capital Anstalt v. Advanced Cell Technology, Inc., 09 Civ. 670 (LAK) (S.D.N.Y.
2012). Defended biotechnology company in lawsuits alleging failure to honor convertible note
and warrant obligations. Obtained favorable settlement of each lawsuit.
Blue Tree Hotels Investment (Canada) Ltd. v. Starwood Hotels & Resorts Worldwide, Inc., 369
F.3d 212 (2d Cir. 2004). Successfully argued the appeal before the Second Circuit Court of
Appeals, which resulted in the dismissal of alleged antitrust violations against the defendants
arising from purported violations of the Robinson-Patman Act.
Lead litigator for the indenture trustee for $1.7 billion in notes in the Adelphia bankruptcy
proceedings.
Represented hotel managers and owners in litigations and arbitrations concerning the
termination of hotel management agreements.
Successfully defeated an action seeking injunctive relief and the attachment of the assets of
an apparel company.
Represented an inventor of computer software and business owner in an arbitration arising
from the purchase of his business and software.
Represented a multinational conglomerate corporation in an international arbitration
concerning a distribution and licensing agreement.
Represented an appliance manufacturer in an international arbitration concerning the
termination of an exclusive distributorship.
Represented a cell phone manufacturer concerning its rights under a joint-venture
agreement.
In Hall v. New York Roadrunners Club, 99-Civ.-4122 (E.D.N.Y.): Lead counsel for Plaintiffs, a
lawsuit brought under the Americans With Disabilities Act in connection with the running of
the New York City Marathon. The historic settlement of that lawsuit included equal treatment
for wheelchair athletes in the largest spectator event in the world.
Mr. Brown has made significant contributions to cases that have been reported in the New
York Law Journal, New York Times and Wall Street Journal. Mr. Brown has also appeared on
CNN, NBC and Court TV.
Mr. Brown has been a featured speaker at hospitality, antitrust, electronic discovery and other
Continuing Legal Education programs.
Articles
Litigating in Bankruptcy Court: Do You Know Where You Are?
New York Law Journal, September 24, 2012
Two First Department Decisions Adopt 'Zubulake'
New York Law Journal, April 16, 2012
Using Prior Expert Testimony Requires Extra Effort
New York Law Journal, July 18, 2011
Former Student Athletes’ Right of Publicity and Antitrust Claims Will Proceed Against the NCAA
and Electronic Arts
Sports Litigation Alert, June 3, 2011
“UNITED STATES,” International and Comparative Litigation
Kluwer Law International, 2011
In re NCAA Student-Athlete Name and Likeness Licensing Litigation
Former Athletes Seek A Share of NCAA Licensing Profit
Sports Litigation Alert, March 12, 2010
Savvy Use of Social Networking Sites
Understanding the potential uses of social networking sites should be considered when preparing
for litigation
New York Law Journal, September 8, 2009
Judgment Secured: Now What?
‘Koehler’ provides greater New York state access to banks for collection.
New York Law Journal, July 20, 2009
Can Gender Discrimination or Provocative Dress Requirements Ever be Appropriate for Your
Employees?
HotelExecutive.com, June 1, 2009
New Hotel Projects May Have No Choice But to Go Green
Hotel Executive, April 1, 2009
Common Legal Issues that Confront Hotel Operators
HotelExecutive.com, December 1, 2008
Condo Hotels As Securities
Has the Litigation Boom Begun
HotelExecutive.com, July 1, 2008
Arbitrating Hotel Management Agreement Disputes: Beware of "Arbigation"
Hotel Executive.com, March 1, 2008
Condo Hotel Explosion Raises New Issues
November 28, 2005
Books
Cloud Computing Legal Deskbook, 2013 Edition, Thomson Reuters Westlaw (Author of Chapter on
Electronic Discovery)
Author of a comprehensive chapter on U.S. antitrust and federal civil procedure in International and
Comparative Competition Litigation, a treatise comparing the competition laws in over 20
jurisdictions world-wide.
Sheppard Mullin Blog Posts
"Monetary Threshold For Commencing Cases In Manhattan’s Commercial Division Raised to
$500,000," February 7, 2014
"Second Circuit Holds that Federal Common Law Prohibits Trading By Insiders of a Cayman
Islands Corporation While In Possession of Material Nonpublic Information," February 4, 2014
"Subpoena of AOL Senior Executive Under the "Apex Rule" Disallowed Absent Special
Knowledge," March 6, 2013
"Court Provides Guidance for Seeking Damages Arising From Trades of Distressed Claims,"
August 13, 2012
"Second Circuit Rejects $2 Billion Class Action Award Against The Republic of Argentina," June 8,
2010
"Plaintiffs' Failure To Satisfy FTAIA's "Two-Step Dance" Results In Dismissal Of Foreign Purchase
Claims," June 3, 2010
"The United States Supreme Court Rules That Class Arbitration Is Improper When Parties To An
Arbitration Agreement Have Not Explicitly Authorized Class Arbitration," May 11, 2010
"eBay Auction Sellers' Bid For Class Certification Rejected," April 28, 2010
"Second Circuit Court of Appeals Rules That Antitrust Complaint Satisfies Twombly Pleading
Standards," February 17, 2010
"Air Cargo Class Action to Proceed -- District Court Overrules Twombly Dismissal
Recommendation," October 12, 2009
"The Third Circuit Clarifies the "Rigorous Analysis" Courts Must Apply In Class Certification,"
February 10, 2009
"California Court of Appeal Drops The Other Shoe: Pass-on Defense Viable," August 15, 2008
"Hospital Lacks Antitrust Standing to Pursue Claims Against Johnson & Johnson Where, Pursuant
to an Agreement with J&J, Hospital Purchased Products from a Distributor," June 9, 2008
"Antitrust Class Action Monopolization Claims Against eBay Will Proceed; Tying Arrangement
Claims Dismissed," April 7, 2008
"The Fourth Circuit Court of Appeals Upholds Most of the State of Washington's Regulations on the
Sales of Alcoholic Beverages," March 12, 2008
"Multimillion Dollar Class Action Settlements Approved In Insurance Brokerage Litigations,"
October 5, 2009
Media Mentions
EY Says Omnicare May Doom Lehman Fraud Claims
Law360, April 3, 2015
Rye Brook Attorney Files Lawsuit to Compel P.C. Station Accessibility
Westmore News, January 2, 2015
Hospitality Cases To Watch In 2015
Law360, January 2, 2015
City Settles Litigation Over Disaster Preparedness
New York Law Journal, October 2, 2014
New York City to Alter Preparations for Disabled in Disasters
New York Times, September 30, 2014
Judge OKs 'Historic' Deal for Accessible Taxis
New York Law Journal, September 18, 2014
Sheppard Mullin Litigator a Fighter for the Disabled
The American Lawyer Daily, January 6, 2014
Sheppard Mullin Litigator a Fighter for the Disabled
The American Lawyer, January 6, 2014
NYC Ends Disabilities Suit With Deal To Make Cabs Accessible
Law360, December 6, 2013
Advocates for the Disabled Seek Outside Expert to Examine NYC Disaster-Response Procedures
New York Law Journal, March 12, 2013
Taxi Drivers Celebrate Legal Triumph
New York Taxi Workers Alliance, December 5, 2012
MSR Truce With Marriott Removes Ch. 11 Roadblock
Law360, February 12, 2012
Sheppard Mullin Assists Sudanese Activist Win Asylum
New York Law Journal, February 10, 2012
Facebook E-Discovery Ruling Only Tip Of The Iceberg
Law360, June 8, 2010
Apple Is Said to Face Inquiry About Online Music
New York Times, May 25, 2010
Speaking Engagements
Maintaining the Attorney-Client Privilege (CLE for private parties)
Antitrust Compliance (CLE for private parties)
Managing a Cartel Investigation (CLE for private parties)
"Back to the Future: Revisiting Class Certification in In Re: Visa Check/MasterMoney Antitrust
Litigation Under the Standards Enunciated in In Re: Initial Public Offering Securities Litigation,"
New York State Bar Association Antitrust Law Section Annual Meeting, January 26, 2012
Events
ACC-GNY Seminar & Cocktail Reception
Retail Practice Group CLE: Best Practices for Retail Counsel
April 29, 2015
Facing a Blizzard of Legal Challenges as In-House Counsel
Spring 2015 New York Fashion Week
February 17, 2015
Who You Calling An Amateur? Legal Perspectives on the NCAA's Amateurism Rules
Seton Hall University School of Law -- Room 373; One Newark Center; Newark, New Jersey, April
20, 2011
Labor & Employment Law Update: 2010 Year in Review
W New York, November 10, 2010
Litigating in the Social Networking Era
Teleconference 1:00 - 2:30pm, June 15, 2010
Social Networking Websites: The Emerging Litigation Tool
Strafford Publications, Inc., November 11, 2009
Memberships
Member, President's Committee on Access to Justice, New York State Bar Association
Hotel Business Review, Editorial Board Member 2009 and 2010
Member, Antitrust Law Section, New York State Bar Association
Member, Class Action Committee of the Antitrust Law Section, New York State Bar Association
American Bar Association, Section of Antitrust
New York State Bar Association
Theodore C. Max
Partner
30 Rockefeller Plaza
New York, NY 10112
Practices
Entertainment, Technology,
and Advertising
Intellectual Property
Litigation
Industries
Emerging Growth/Venture
Capital
Fashion, Apparel and
Beauty
Education
J.D., New York University
School of Law, 1983, Editorin-Chief, New York
University Review of Law
and Social Change, Won
NYU Moot Court
Competition, Mendes
Herschmann Prize
B.A., Hobart College, 1980,
summa cum laude, high
honors, Rhodes Scholar
Finalist, Student Trustee
T: 212.653.8702
F: 212.655.1712
[email protected]
Theodore C. Max is a member of the Entertainment, Technology
and Advertising and Intellectual Property Practice Groups in the
New York office, where he focuses on counseling clients on
intellectual property issues and litigation. He is co-leader of the
firm's Fashion and Apparel team. Mr. Max combines his skill and
experience as a trial attorney with his knowledge of copyright,
trademark and intellectual property law in servicing the firm's
diverse clientele.
Mr. Max has counseled clients on and litigated numerous cases
involving issues on the cutting edge of copyright and trademark law.
He has assisted clients in identifying, protecting and preserving their
intellectual property assets, including seeking registration of rights
in the United States and internationally and taking action against
infringements of copyrights, trademarks and trade dress. He also
has experience developing and implementing anti-counterfeiting
programs and pursuing civil and criminal enforcement remedies. Mr.
Max has actively litigated intellectual property issues, as well as
licensing and franchise disputes, and the rights of publicity and
privacy. He successfully has represented clients in all types of civil
litigation, including alternate dispute resolution proceedings and
mediation, trials and appeals.
Honors
Leading Trademark Professional, World Trademark Review, 2015
Intellectual Property, Legal 500, 2013, 2014
New York Super Lawyer - Intellectual Property Litigation, Super
Lawyers, 2008-2014
Named as one of the "Legal Elite Litigation List," Avenue Magazine,
2011
Experience
He has counseled representatives of some of the world's finest designers of fashion apparel and
accessories with respect to their intellectual property concerns and problems, including Louis
Vuitton Malletier, Emilio Pucci, Celine, Donna Karan, Kooba, Tarina Tarantino and Daryl K. In
addition, he has assisted such rising stars in the fashion world as Peter Som and Rafe. He also has
extensive experience in litigating commercial disputes in New York state and federal courts.
Articles
Mr. Max has lectured widely and authored numerous publications.
Authored a chapter in the book, Fashion Law: A Guide for Designers, Fashion Executives &
Attorneys, which is entitled "Celebrities and Fashion Models: Endorsement and Promotion
Agreements."
"Coloring Outside the Lines in the Names of Aesthetic Functionality: Qualitex, Louboutin, and How
the Second Circuit Saved Color Marks for Fashion," The Trademark Reporter, September/October
2012
"Litigating Trademark And Copyright Cases In The Metaverse," The Metropolitan Corporate
Counsel, January 25, 2012
"Tweet Me! - The Southern District of New York Answers Copyright Questions Raised by Twitter and
Twitpuc Use," Terralex's Intellectual Property Newsletter, September 2011
"Congress Has Designs For Piracy Prevention Legislation," Daily Journal, August 9, 2011
"Charting A Safe Course In The Perfect Storm Of Consumer Privacy Laws," The Metropolitan
Corporate Counsel, June 2011
Authored a chapter in the book, "Inside the Minds: New Developments in Evidentiary Law in New
York, 2011 ed.", Aspatore Publishing, April 2011.
"Trademarks in the Veldt: Do Virtual Lawyers Dream of Electric Trademarks?" The Trademark
Reporter: The Law Journal of the International Trademark Association, Vol. 101, No. 1, JanuaryFebruary, 2011.
Project Runway: The Am Law Daily Edition, The AmLaw Daily, February 19, 2009
House Okays Watered Down PRO IP Act, World Law Media, June 1, 2008
Designer Hotels Are In Fashion: But Care Should Be Taken To Avoid A Major Faux Pas, Hotel
Executive.Com, May 1, 2008
When Copyright and Trademark Infringement Goes Online, New York Law Journal, October 29,
2007
When Keywords Trigger Sponsored Links, Be Mindful of WhenU and the Split in the Circuits Before
Choosing Your Forum Court, Bloomberg Law Reports, September 10, 2007
Authored a chapter in the book, Intellectual Property Assets in Mergers and Acquisitions, which is
entitled "Acquisitions and Licensing of Famous Name Trademarks and Rights of Publicity in the
United States."
Authored a chapter in the book, Handbook of Fashion Rights, which is entitled "Intellectual
Property Protection and Fashion in the United States."
"Total Recall: A Primer on a Drastic Form of Equitable Relief," published in The Trademark
Reporter®, in May-June 1994
"Dilution Act May Limit Commercial Parodies," published in The National Law Journal
Contributed a chapter in the book, The New Role of Intellectual Property in Commercial
Transactions, entitled "Available Remedies For Dispute Resolution in International and Domestic
Trademark Licenses."
Fashion & Apparel Law Blog Posts
"Trending Information: The Connection Between Data Brokers and the Fashion Industry," July 24,
2014
"International Safe Harbor Privacy Compliance: What You Need to Know," July 14, 2014
"Too Good To Be True: FTC’s Crackdown On L’Occitane’s Body Slimming Almond Extracts," July
11, 2014
"Fur Flies and West Hollywood (“WeHo”) Fur Ban Is Upheld By Federal Court," July 3, 2014
"New Updated FTC Care Labeling Rules: 'Do’s and Don’ts,'" June 26, 2014
"Second Circuit Digs Its Heels Into Louboutin Dispute; Finds "Red Sole" Trademark Protectable,
But Limited in Scope," September 19, 2012
Intellectual Property Law Blog Posts
"The Innovative Design Protection and Privacy Prevention Act: Will Design Protection Be In Vogue
in Congress?" September 1, 2010
"What Is the Jurisdictional Pre-Requisite for Copyright Litigation?" July 14, 2009
"Joseph Abboud Is Back: Personal Name Trademark Controversy Continues," July 13, 2009
"Second Circuit Resolves Split Between the Circuits Regarding Sale of Keywords to Trigger
Sponsored Links and "Use in Commerce" Under the Lanham Act," April 10, 2009
"Gibson's Patent Action Against Activision Hits Wrong Chord With Court In "Guitar Hero" Dispute:
Summary Judgment Granted," April 10, 2009
"S.D.N.Y Holds eBay Not Liable in Closely Watched Trademark Case," July 14, 2008
Social Media Law Update Blog Posts
"How to Legally Protect Your Brand in the New Millennium," November 16, 2010
Speaking Engagements
"Designing a Greater System of Protection for Fashion: The Future of Fashion Law," New York
University School of Law, February 19, 2015
"Hot Topics for 2013: What You Need to Know to Avoid Fashion Jeopardy?" New York, February 13,
2013
“IP Enforcement and Litigation 2011: Civil and Criminal Update” Practising Law Institute, March 30,
2011
Events
ACC-GNY Seminar & Cocktail Reception
Retail Practice Group CLE: Best Practices for Retail Counsel
April 29, 2015
Facing a Blizzard of Legal Challenges as In-House Counsel
Spring 2015 New York Fashion Week
February 17, 2015
How to Protect Your Brand
Third Thursday Emerging Company Webinar Series
via WebEx, August 21, 2014
Crisis Management in the Fashion and Retail Industry
Sheppard Mullin's Fashion Week Seminar
February 18, 2014
It's All About the Brand!
New York Fashion Week Seminar - Fall 2013
September 12, 2013
Branding Your Company in the World of Social Media, Instant Celebrity and Virtual Reality
Third Thursday Emerging Company Webinar Series
via WebEx, July 18, 2013
Breakfast With Your Finance and Bankruptcy Lawyers
Intellectual Property Issues in Bankruptcy: Assumption and Assignment, Distinctions Between
Patents, Copyrights and Trademarks, Distressed Acquisitions and How to Protect Your IP
Sheppard Mullin New York, June 11, 2013
How to Legally Protect Your Brand
Third Thursday Emerging Company Webinar
WebEx, November 17, 2011
Got GOTS?
Sheppard Mullin, New York, June 28, 2011
How to Legally Protect Your Brand in the New Millennium
Third Thursday Emerging Company Webinars
WebEx, October 21, 2010
Digital Media Law Forum: Building Brands In a Digital World
Silicon Valley Bank, 3005 Tasman Dr, Santa Clara, CA 95054, September 22, 2010
Memberships
Chair, Publications Committee, International Trademark Association
Past Editor-in-Chief, The Trademark Reporter®, 1999-2001
Previous United States Original Articles Editor
Previous International Original Articles Editor
SubCommittee Chair, "International Annual Review of Developments in Trademark Law and
Practice," The Trademark Reporter®
Member, Copyright and Trademark Committee of the Entertainment and Sports Law Committee of
the New York State Bar Association and the Federal Bar Council
Member, Copyright and Trademark Committee of the Entertainment and Sports Law Committee,
New York State Bar Association and the Federal Bar Council
Bryony brings in-depth knowledge of the media,
technology and communications industries to clients facing
UK or international commercial litigation.
Bryony is an associate in our Dispute Resolution Group, based in London,
specialising in commercial litigation and technology and media law.
Bryony Cain
Associate
Direct: +44 (0)20 7982 6533
Tel: +44 (0)20 7415 6000
Fax: +44 (0)20 7415 6111
[email protected]
She advises our clients on complex, fact-heavy commercial disputes, with a
primary focus on disputes relating to the technology, media and fashion sectors.
She acts for both corporate clients (including IT and telecommunications
providers, major film and broadcasting organisations, and internet corporations)
and individuals on disputes spanning the commercial spectrum.
Her experience includes advising on contractual disputes, warranty and fraud
claims, agency issues, minority shareholder actions, partnership and joint
venture disputes, judicial review proceedings and defamation and privacy actions.
She is also experienced in advising on pre-action steps such as freezing
injunctions, search orders and third party disclosure orders, and has advised
clients in relation to cyber-security breach responses and internal investigations.
Bryony has a particular focus on international disputes so can offer valuable
insights into questions of jurisdiction and the management of cross-border
evidence-gathering.
She holds a B.A. Hons (Law) from Cambridge University and the LPC
qualification from the Oxford Institute of Legal Practice.