Alan Behr, Partner, Intellectual Property Practice and Chair, Fashion Practice at Phillips Nizer, participated in a panel discussion titled, “"IP World: Current Issues, Gaining Insights, and Best Practices", on October 17.   

Phillips Nizer LLP is pleased to announce that 13 lawyers have been selected to the 2023 New York Super Lawyers list. No more than five percent of the lawyers in New York are selected by Super Lawyers.

Best Lawyers® recognized Alan Behr, Jan L. Bernstein, Regina E. Faul, Helene M. Freeman, Michael W. Galligan, Donald P. Perry, Evan J. Spelfogel, Martin B. Wasser and Elliot J. Wiener.  

Phillips Nizer is pleased to announce that Alan Behr, Chair of Phillips Nizer’s Fashion Practice, was selected as a top attorney in The World Trademark Review’s 2023 rankings of Top 1000 lawyers for their work.  Mr. Behr was recognized in the categories: Prosecution and Strategy, Silver and Enforcement & Litigation, Bronze.

Phillips Nizer is pleased to announce its selection as a top trademark firm in The World Trademark Review’s 2023 rankings of Top 1000 firms.  The firm was recognized in the categories: Prosecution and Strategy, Bronze Level and Enforcement & Litigation, Bronze Level. 

On May 17, Alan Behr, Partner and Chair, Phillips Nizer IP Fashion Group, hosted a discussion on intellectual property law among an esteemed group of international attorneys who gathered for traditional afternoon tea in the Tiffin Room at the legendary Raffles Singapore.  The event was held during the 2023 Annual Meeting of the International Trademark Association (INTA).  Also in attendance from the firm was Tod M. Melgar, Partner and Chair, Phillips Nizer Patent Practice Group. 

As has been reported, the luxury design house of Hermès has prevailed in its trademark infringement lawsuit against the artist Mason Rothschild over his “MetaBirkins” NFT  project, providing much-needed guidance on how to find a balance between trademark protection under the Lanham Act and artistic freedom of expression guaranteed by the First Amendment.  

Best Lawyers® recognized Alan Behr, Jan L. Bernstein, Regina E. Faul, Helene M. Freeman, Michael W. Galligan, Marc A. Landis, Donald P. Perry, Jeffrey Q. Smith, Evan J. Spelfogel, Martin B. Wasser and Elliot J. Wiener. 

Mr. Behr, a partner in the Corporate & Business Law Department and Intellectual Property Practice, and chairman of the Fashion Practice at Phillips Nizer LLP, co-edited The Law Over Borders, a published work of comparative guides providing essential information on law and legal practice across the world comparing the legal frameworks of different jurisdictions.

Phillips Nizer's Fashion Law practice held its annual Fashion Law Interest Group Meeting in Washington, DC at the Hay Adams Hotel. The group's attendees include outside counsel representing fashion designers, luxury apparel and accessories companies and retailers, in-house counsel and retail executives.

In a major and much-awaited victory for the video game industry, the Federal District Court for the Western District of Washington, in Seattle, dismissed all claims against our client InnoGames, the makers of the online multiplayer hit game Forge of Empires, and other defendants.

A lawsuit involving fashion and NFTs that is now in its early stages may help clarify what the law will consider an NFT to be. The case, Hermès v. Mason Rothschild, 22 cv 983 (S.D.N.Y.), was recently filed by Hermès International and an affiliate to halt the marketing and sale of NFTs of images of the brand’s signature Birkin handbag. 

Alan Behr published a New York Law Journal article on the proposed New York State Legislature's Fashion Sustainability and Social Accountability Act, a bill that stands to have a major impact on fashion companies operating in New York state as well as show hints of what may arise elsewhere.

The International Trademark Association (INTA), a global association of brand owners and professionals dedicated to supporting trademarks and complementary intellectual property (IP) to foster consumer trust, economic growth appointed Mr. Behr Chair of the Enforcement Subcommittee, within the Copyright Committee, for a two-year term beginning January 1, 2022. 

Best Lawyers® recognized Alan Behr, Jan L. Bernstein, Helene M. Freeman (Copyright Lawyer of the Year), Michael W. Galligan, Marc A. Landis, Donald P. Perry, Jeffrey Q. Smith, Evan J. Spelfogel, Martin B. Wasser and Elliot J. Wiener. 

You've heard of fake news, but what about fake invoices?  Beware of bogus notices and invoices from imposters. 

Recently, there has been a proliferation of companies that pose as the U.S. Patent & Trademark Office (USPTO) which try to fool trademark owners into paying to them amounts needed to maintain or renew their trademarks.  These fraudsters mail trademark owners phony notices with names and typefaces so realistic that even sophisticated clients have been fooled.  

U.S. News - BestLawyers® recognized Phillips Nizer LLP as one of the nation's "Best Law Firms" for 2021. The annual rankings are presented in three tiers. A total of eleven areas of the firm's practice were recognized nationally and in the New York City metropolitan area.  The rankings were announced on November 5, 2020.

We are proud to congratulate our selected attorneys.

Best Lawyers® recognized Alan Behr, Jan L. Bernstein, Helene M. Freeman, Michael W. Galligan, Marc A. Landis, Donald P. Perry, Jeffrey Q. Smith, Evan J. Spelfogel, Martin B. Wasser and Elliot J. Wiener. 

This week’s US Supreme Court decision that Booking.com is not generic might lead to a larger use of consumer surveys. 

Alan Behr, partner at law firm Phillips Nizer in New York City, points out that in the oral arguments the attorney for Booking.com said marks like the brand are relatively weak. Weak marks in the fashion industry aren’t a good idea, Behr says.

He notes that someone could theoretically register a domain name like menssocks.com and have a basis for protection. But he says this would still be a weak basis because someone else could register menssocks.info.

“Then you get into a lawsuit involving survey evidence and experts about whether that’s confusingly similar or not.”

Because of this, companies in fashion should be wary of picking a generic name, even if a marketing person really loves it, Behr says.

“When in doubt in fashion, go for a strong mark. It will pay itself back many times over in benefits. The fact that the court had concurring and dissenting opinions shows that when you have a mark that’s just over the line, like Booking.com, you’re going to have questions.”

Most brand owners would undoubtedly prefer not to have to argue in front of the Supreme Court to get a trademark registration in the first place. But those that do have to fight for their marks would be wise to take advantage of any evidence, including consumer surveys, that’s available to them.

“Interestingly, the owner of the mark BOOKING.COM admitted in oral argument before the court that it is a ‘weak mark,’ but  the court found it to be a mark just the same.  In my experience, marketers are rarely daunted by legal evaluations of the relative strength of marks. If a marketer loves a mark, whether it is as strong as titanium or as weak as tissue paper, he or she will usually go for it and let the law follow along as best it knows how. In this case, the law did just that.

What the case likely means is that there can be no automatic rejection of an application to register a mark that is simply a combination of a generic term such as ‘booking’ and a familiar top-level domain extension such as ‘.com.’  It does not, however, mean that any such combination would necessarily be registered as a trademark.  That is, you cannot take any generic term and add “.com” to it and say you definitely have a registrable mark for any goods or services.  Each case would still need to be examined on its own merits.  The Supreme Court noted, for example, that ART.COM is already registered as a trademark but did not make a new rule that all such combinations are automatically registrable.  What the case signifies is that, in the Internet age, top-level domain extensions, when added to generic terms might well create registrable marks.  And that is news—an important clarification from the Supreme Court of how old law applies to the new tricks of electronic commerce.”

“You cannot take any generic term and add ‘.com’ to it and say you definitely have a registrable mark”

What the case likely means is that there can be no automatic rejection of an application to register a mark that is simply a combination of a generic term such as ‘booking’ and a familiar TLD extension such as ‘.com’. It does not, however, mean that any such combination would necessarily be registered as a trademark. That is, you cannot take any generic term and add ‘.com’ to it and say you definitely have a registrable mark for any goods or services. Each case would still need to be examined on its own merits. The Supreme Court noted, for example, that ART.COM is already registered as a trademark but did not make a new rule that all such combinations are automatically registrable. What the case signifies is that, in the internet age, TLD extensions, when added to generic terms might well create registrable marks. And that is news – an important clarification from the Supreme Court of how old law applies to the new tricks of electronic commerce.

The Black Lives Matter movement has placed racial injustice and police violence at the centre of social and political discussion. It has also led to calls for consumers to support local black-owned businesses. The latter provides an opportunity for the IP community to step up and help ensure that SMEs have easy access to IP advice and services – with one legal expert stating: “This is something we absolutely can do.”

Alan Behr, partner in the corporate and business law department at Phillips Nizer LLP and chairman of the firm's fashion practice, said many retailers have been laboring under highly leveraged balance sheets in recent years, and that an overnight elimination of their revenue streams spelled disaster for the most vulnerable companies, including J.Crew.

"When you have an up market, which we had for some time, you can squeeze by," Behr said of overleveraged companies. "But the moment things go bad, it's the companies that have poor cash positions that fall. And something bad happened in the market."

 

NKE, -1.38% are in far better shape and are expected to gain market share in the crisis.

Fashion Practice Chair, Alan Behr is quoted, "Anner wrote: “Many buyers are evoking the force majeure clause in their contracts to justify the breaking of their binding obligation to pay for orders in production. But, for fashion law expert Alan Behr, this appears to be an unjustified use of the force majeure clause since most force majeure clauses do not specify pandemics as a reason for failure to pay. More importantly, according to Article 7.1.1 of the Vienna Convention for International Commercial Contracts, force majeure claims should apply to the party with the most relevant contractual obligation, which in this case would be the Bangladeshi factories producing items, not the buyers that have agreed to pay for them."

Fashion Practice Chair, Alan Behr is quoted in this Penn State report on the COVID-19 effects on the global garment supply chains.

Alan Behr, an attorney specializing in intellectual property at the law firm Phillips Nizer, said the bill’s enactment would be a significant change in how the online companies run their businesses.

“It would be a material increase in their burden in terms of what they would need to do mechanically. It would be making them do something that physical retailers don’t physically have to do at the same level,” he told the Washington Examiner.

Alan Behr fashion industry attorney and Partner at Phillips Nizer, told Retail Dive in an email last week that change in behavior will hurt merchandise sales at those events.

"Luxury retail is still primarily a personal experience," Alan Behr, fashion industry attorney and Partner at Phillips Nizer, wrote in emailed comments. "If your customers are worried about human contact, therefore, your business has a new and unexpected challenge."

The U.S. Supreme Court will resolve a conflict in the Circuits concerning whether the copyright statute's authorization of recovery of “full costs” includes costs, such as expert witness fees, for which recovery is not otherwise authorized under the general statutory provision defining recoverable costs in every federal case. Alan commented on that question and the broader problem of ambiguity and interpretation of a copyright statute dating from 1976—on that he believes is long overdue for overhaul or full replacement.

As seen in the published directory:

Phillips Nizer colleagues Alan Behr and Monica McCabe both receive great feedback from the market: “Alan is hugely efficient in prosecution as well as in contentious matters and is especially effective in fashion and design cases.” “He has strong European ties, is very easy to communicate with and can move matters forward very fast.” “Extremely quick on her feet, Monica can handle a heavy workload with the utmost professionalism and an eye for detail. That she cares deeply about her clients really shows.” Behr chairs the firm’s fashion practice, while McCabe leads the IP group. 

Alan Behr is referenced and quoted heavily in one of December's IPPro The Internet’s features, “A look at Marvel IP: Stan Lee’s passing shook the comic book industry and superhero film industry he inspired, leaving the question: what is the future of Marvel IP?”  The legendary American comic-book writer, editor, and publisher, who was executive vice president and publisher of Marvel Comics, passed away on November 12, 2018.

Seventeen Phillips Nizer attorneys were announced on September 13, 2018 as selected for inclusion on the 2018 New York Metro Super Lawyers and Rising Stars lists. Attorneys represented a cross-section of several practice areas and industry teams.

Best Lawyers® recognized Alan Behr, Helene M. Freeman, Michael W. Galligan, Donald P. Perry, Evan J. Spelfogel,  Martin B. Wasser and Elliot J. Wiener.

In the course of the development of the common law, with its unique dependence on a sometimes unholy alliance between enacted and judge-made law, curiosities will arise. Retailers, auction houses and others with consumer websites that support physical sales facilities have seen this recently, as lawyers around the country have driven in fifth gear to their nearest federal courthouses to file lawsuits on behalf of the visually impaired, claiming that those websites exclude the visually impaired from equal access in violation of federal law.

Online marketplaces with third-party sellers, including Amazon, are not at fault under the law as long as they take counterfeits down when notified of their existence, as reported in the article, according to Alan. However, he continues, "If you are a brand owner, you have to be vigilant…Register copyrights, do your homework, have an investigator doing purchases, troll the web."  Read "Can Amazon and its marketplace rivals fix their counterfeits problem?" published in Retail Dive.

Read "Target, Aldi, Big Lots eyeing Toys R Us real estate" published here in Retail Dive.

The Fox News Network sued TVEyes, a media monitoring service, in the U.S. District Court of New York alleging infringed copyright of copied and re-distributed audiovisual content, enabling TVEyes’ subscribers to access of that content without Fox’s permission.

The Second Circuit ruled in favor of Fox News regarding the sharing of clips by TVEyes saying that their actions were "unlawfully profiting off the work of others by commercially re-distributing all of that work that a viewer wishes to use, without payment or licence.”

Alan's comments regarding the ruling:

“It’s great to see the Second Circuit affirm the limitations of fair use – even in a case where, to use a term it largely helped popularise, it found that the use in question was ‘transformative’ – that is, even though something new or at least perceivably different had been made from the use of content that was owned by someone else.”

He explained, “The key here was the extent of the use. The court noted that news segments are short and that the method of copying and dissemination by TVEyes would, ‘likely provide TVEyes’s users with all of the Fox programming that they seek and the entirety of the message conveyed by Fox to authorised viewers of the original’.”

U.S. News-Best Lawyers® announced on November 1, 2017, Phillips Nizer's recognition as one of the nation's "Best Law Firms" for 2018. The listing is presented in ranking tiers from 1 - 3. We ranked highly, Tier 1, nationally in Copyright Law, Trademark Law and Trusts & Estates Law. We were also ranked in the New York City Metropolitan listings.

With emerging technologies, such as virtual reality (VR), breaking into the mainstream, already antique laws must rise to the occasion.

It was announced on September 20, 2017, that sixteen Phillips Nizer attorneys were selected for inclusion on the 2017 Super Lawyers list. Alternative Dispute Resolution, Banking, Business Litigation, Entertainment, Intellectual Property, and Trusts & Estates practices were represented.  

Alan reflects on the change in retail from the early 1900s at a period of time when stand-alone department stores still existed, including Krauss Company in New Orleans, Louisiana run by his family, but were soon made obsolete over time by the development of malls.

Along with chairing Phillips Nizer's Fashion Law Practice, Alan is also a member of the Art Law and Intellectual Property Law Practices. He is a working photojournalist and art photographer. | YouTube Video Replay

About Adorama: One of the largest retailers of photography, video, electronics and imaging equipment, Adorama events attracts professionals, aspiring professionals and hobbyists.

The band's lead singer, Simon Tam, filed a lawsuit after the USPTO refused to register the band's name citing the Lanham Act, which prohibits any trademark that could be cited as disparaging against "persons living or dead." The band's leader disagreed saying the band was reclaiming the historically disparaging word as a point of pride. With the Supreme Court's unanimous decision agreeing with the band that the trademark registration refusal was unconstitutional, it is speculated that this could impact how the First Amendment is applied in other trademark cases. (On a related note: The NFL Washington Redskins has been involved in a long-running dispute with the USPTO over allegations that the team's nickname is disparaging to Native Americans.)

For more about the ruling, see here: San Diego Tribune; Law360

Alan and his co-presenter, Zach Toczynski, Director, Anti-Counterfeiting at Levi Strauss & Co., will highlight "Knock It Off! Tactics to Combat Counterfeits" on Wednesday, June 7th (1:15 - 1:45 p.m.).  

• Paul McCartney Sues To Win A Battle Duran Duran Lost (Forbes)
• 56 Years Later, Paul McCartney Wants His Beatles Songs Back… (Digital Music News)

• "Duran Duran Case Shouldn't Affect Paul McCartney Contracts" by Helene Freeman (Law360, January 30, 2017)

What impact will a Trump presidency have on the luxury market?

Transport leaders begin meeting with Trump transition team as new era starts

U.S. News-Best Lawyers® announced Phillips Nizer was recognized as one of the "Best Law Firms" in the nation for 2017 ranking highly nationally in Trusts & Estates Law. The firm was also ranked in the New York City Metropolitan area in Trusts & Estates Law, Copyright Law, Family Law, Intellectual Property Litigation and Trademark Law. 

On September 21, 2016 it was announced by Super Lawyers® that twenty-three Phillips Nizer attorney were selected for inclusion on the 2016 Super Lawyers and 'Rising Stars' lists.  This is the second consecutive year the firm has had twenty-three lawyers recognized.

The article highlights the US Supreme Court’s recent decision to review the case of Lee v. Tam (a.k.a. "The Slants" case), to assess the constitutionality of the US Patent and Trademark Office’s refusal to register disparaging marks under the Lanham Act.  

Unfortunately, in an effort not to offend anyone during such a large, global event like the Olympic Games, what is sometimes created by the host nation is a mascot that does not resonate well with others outside the country -- and even sometimes within the country.   

According to Alan, “You have to come up with a character that works everywhere, and it can’t have a name that means the wrong thing in some language...You need a mascot that will work in both North and South Korea—and in Albania, Cuba and the People’s Republic of China.”

In an announcement on November 2nd by U.S. News-Best Lawyers®, Phillips Nizer was recognized as one of the 2016 "Best Law Firms" in the nation ranking highly nationally in Trusts & Estates Law, Copyright Law and Trademark Law. The firm was also ranked in the New York City Metropolitan area in Trusts & Estates Law, Copyright Law, Family Law, Intellectual Property Litigation and Trademark Law. 

Phillips Nizer was honored to announce that twenty-three of its attorneys were recognized as 2015 Super Lawyers® and Rising Stars. Attorneys who were recognized represented over a dozen practice areas. The annual Super Lawyers® lists are a result of confidential peer review and independent research.

In an announcement on September 23, 2014, twenty-six Phillips Nizer attorneys were recognized on the Metro New York 2014 Super Lawyers® and Rising Stars lists. Twenty-two partners, senior counsel and counsel were selected as Super Lawyers.  Four counsel and associates were selected as Rising Stars.  The 2014 selections crossed all major practice groups.  The annual Super Lawyers® lists are a result of confidential peer review and independent research.

Reprinted with permission from: Inside, Winter 2013, Vol. 31, No. 3, published by the New York State Bar Association, One Elk Street, Albany, NY 12207.

Nineteen Phillips Nizer attorneys were selected by Super Lawyers® and recognized in the 2013 New York Super Lawyers - Metro Edition publication.  As was the case in 2012, attorneys selected represented several practice areas. The Firm achieved a significant increase in the number of honorees, including one recognized as a "Rising Star".  Each year, attorneys are nominated across various legal practices and vetted through a process of confidential peer review. Independent research by the publisher is an important component before one can be selected as a "Super Lawyer".

For the second consecutive year, Phillips Nizer was honored as one of the nation's "Best Law Firms".  The Firm received high ranks the areas of Trusts & Estates Law, Trademark Law, Copyright Law and Family Law.

Phillips Nizer was honored with the selection of twelve of its attorneys for the 2012 New York Super Lawyers – Metro edition. The attorneys were recognized across seven practice areas — Alternative Dispute Resolution, Entertainment Law, Environmental Law, Estate Planning & Probate Law, Family Law, General Litigation, and Real Estate Law.