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Marc J. Rachman is a partner in the Litigation and Intellectual Property Practice Groups of Davis & Gilbert.  Mr. Rachman has represented clients in a wide variety of complex commercial litigations. His litigation practice focuses on intellectual property matters, including trademark, copyright and patent infringement, false advertising, entertainment, domain name disputes, and trade secrets.  Mr. Rachman has also handled disputes concerning complex commercial matters, the enforcement of advertising agency-client agreements, employment contracts and restrictive covenants and real estate disputes.

In counseling clients to avoid litigation, he has developed document retention policies and electronic media retention protocols in accordance with the Sarbanes-Oxley Act and other federal and state laws.  Mr. Rachman has been lead and second chair trial counsel in both jury and bench trials and has argued appeals before the U.S. Court of Appeals for the Second Circuit, the Ninth Circuit and the Appellate Division of the New York State Supreme Court.

Mr. Rachman has been recognized as a leading lawyer for intellectual property: trademark & copyright law for four consecutive years by Chambers USA: America’s Leading Lawyers for Business (2014-2017). He has also been recognized by The Legal 500 United States (2012-2014, 2016-2017) in the area of intellectual property: copyright, where his IP litigation strength was highlighted. He was also selected as a Super Lawyer by New York Metro Super Lawyers (2012-2017).

REPRESENTATIVE ENGAGEMENTS

  • Successfully defended Gold Eagle, maker of a line of fuel additives, against a false advertising claim brought in federal court in Florida by its competitor Star-Brite Distributing concerning a comparison ad that Gold Eagle had run. After significantly limiting Star-Brite’s damages claim, a jury trial was held with the jury returning a verdict finding that Gold Eagle’s comparison ad did not violate the Lanham Act or any of Florida’s false advertising statutes or laws.
  • Represented the heirs of the comedy duo Bud Abbott and Lou Costello in a copyright infringement action for the use of Abbott & Costello’s iconic “Who’s On First?” comedy routine in a Broadway play and in a video promoting the play.
  • Represented Harpo Inc., the owner of the Oprah family of trademarks, and Dr. Oz in the prosecution of right of publicity, false endorsement, trademark infringement and other claims against numerous Internet marketers of dietary supplements that used Oprah Winfrey’s and Dr. Oz’s names and likenesses without their consent.
  • Represented Kickstarter, the global funding platform for creative projects, in a UDRP domain name proceeding against an entity that registered the domain name kickstarter.nyc, along with other domain names using the trademarks of other third parties. The arbitration was decided in Kickstarter’s favor, with the domain name being assigned to Kickstarter.
  • Obtained summary judgment on behalf of a Fortune 100 financial services firm and its advertising agency in an action concerning a nationwide advertising campaign and tagline that the plaintiff claimed infringed his copyright and trademark rights. Successfully opposed plaintiff's appeal to the Second Circuit.

SPEAKING ENGAGEMENTS

Roundtable Presenter, "Challenges in Contemporary Hospitality Branding," Cornell University's The Center for Hospitality Research, July 2013

"Cornell University 2013 Brand Management Roundtable," The Center for Hospitality Research, April 1-2, 2013

"Cornell University 2012 Brand Management Roundtable," The Center for Hospitality Research, April 2-3, 2012

"Policing Your Brand on the Internet: How to Protect & Defend What Is Yours," New York State Bar Association Roundtable, November 7, 2011

"Litigating Internet-Based IP Claims: How to Protect and Defend What is Yours," Davis & Gilbert Intellectual Property Litigation Seminar, May 4, 2011

PUBLICATIONS

"Battling the Real "Fake News": FTC Reaches Multi-Million Dollar Settlement with Internet Marketers for False Celebrity Endorsements," D&G Litigation Alert, November 2017

Co-Author, "First Circuit Requires Identifiable Injury for Claims Asserting Deceptive Retailer "Compare At" Prices," D&G Advertising, Marketing & Promotions Alert, September 2017

Co-Author, "Trouble in Patent Troll Paradise?" Intellectual Property Magazine, August 2017

Co-Author, "The Enemy Within," Intellectual Property Magazine, June 2017

Co-Author, "When Is a "Firm Offer" Really Firm When Negotiating Talent Agreements? When the Term Sheet Says So," D&G Litigation Alert, June 2017

Co-Author, "The Days of Patent Plaintiff Forum Shopping May be Over," D&G Intellectual Property Litigation Alert, May 2017

Co-Author, "Breach Of Contract Claims Allowed For Alleged Open Source License Violations," D&G Intellectual Property Litigation Alert, May 2017

Co-Author, "Patent Troll Cases Unlikely To Drop Significantly," 2017 Trends in Marketing Communications Law

Co-Author, "$500 Million Oculus Verdict Highlights Litigation Risks for Emerging Tech Companies," D&G Intellectual Property Alert, February 2017

Co-Author, "U.S. Supreme Court Sets the Bar Higher for Obtaining Damages for Design Patent Infringement," D&G Intellectual Property Litigation Alert, December 2016

Co-Author, "Second Circuit Narrows 'Red Flag Knowledge' Exception to DMCA’s Safe Harbor Protections for ISPs," D&G Intellectual Property Litigation Alert, August 2016

Co-Author, "All Together Now: 'Block'," Trademarks & Brands Online, April 6, 2016

Author, "Expanding Reach of the Copyright Fair Use Defense," Davis & Gilbert 2016 Mitigating Risk: Key Litigation Developments

Co-Author, "Our Best Offer: Rule 68 and TCPA Class Actions," Davis & Gilbert 2016 Mitigating Risk: Key Litigation Developments

Co-Author, "Wyndham Settles FTC's Data Breach Case After Ruling Reinforced FTC's Authority," D&G Digital Media, Technology & Privacy Alert, December 2015

Co-Author, "Failure to Prove Probability of Harm from Alleged Data Breaches Dooms FTC’s Complaint," D&G Digital Media, Technology & Privacy Alert, December 2015

Co-Author, "Upcoming FCC Rulings Will Create New Challenges for TCPA Compliance," D&G Advertising, Marketing & Promotions Alert, July 2015

Co-Author, "The Power Of A Poor Review," Trademarks & Brands Online, April 2015

Co-Author, "The Supreme Court Comes Out Swinging in 2015 With Important Trademark Decision," D&G Intellectual Property Litigation Alert, March 2015

Co-Author, "The Telephone Consumer Protection Act: Privacy Legislation Gone Awry?Intellectual Property & Technology Law Journal, October 2014

Co-Author, "Recent Developments in the Fight Against Patent Trolls," D&G Intellectual Property Litigation Alert, July 2014

Co-Author, "Supreme Court Clarifies Who Can Asset a Federal Claim for False Advertising," D&G Intellectual Property Litigation Alert, April 2014

Co-Author, "Has the Transformative Use Test Replaced the Second Circuit's Rogers Test in Balancing the Right of Publicity Against First Amendment Rights?" Bright Ideas, Winter 2013

Co-Author, “Trademark Laws: New York,” Practical Law Company, July 2013

PRESS

Quoted, Trademarks & Brands Online, "UDRP Roundup: Wins for Brand Owners Against Bogus Domain Names," August 10, 2016

Mentioned, Law360.com, "TiVo's 'Holy Grail' Ad Patent, Two Others Ruled Invalid," February 23, 2016

Quoted, World Intellectual Property Review, "Five Things We Learned This Week: PTAB Changes, 'Dismaland' and More," August 28, 2015 

Quoted, Bloomberg BNA Privacy & Security Law Report, "Future Supreme Court Ruling in TCPA Action May Affect Case Strategies, Not Compliance," July 6, 2015 

Quoted, Law360, "Abbott and Costello Heirs Sue Play Over 'Who's on First'," June 5, 2015

Quoted, New York Post, "Abbott & Costello Heirs Sue Play Over 'Who's on First?' Routing," June 5, 2015

Quoted, The New York Times, "'Hand To God' Play Sued by Abbott and Costello Heirs Over Use of 'Who's on First?'," June 4, 2015

Quoted, World Intellectual Property Review, "SCOTUS’s Ruling in B&B Could Shift More Resources to TTAB Cases, Lawyers Say," March 25, 2015

Quoted, Law360.com, "Attorneys React to Supreme Court's TTAB Preclusion Ruling," March 24, 2015

Quoted, World Intellectual Property Review, "Top Ten Developments for 2015: Spider-Man, SEPs and Shoes," February 16, 2015

Quoted, Trademarks & Brands Online, "'Tis the Season to be Careful," by Jay Ondreicka, December 16, 2014

Mentioned, Law360.com, "Law360's Weekly Verdict: Legal Lions & Lambs," by Ryan Davis, November 6, 2014

Quoted, Law360.com, "Lawyers Weigh In On Supreme Court's Lexmark Ruling," by Julia Revzin, March 25, 2014

PROFESSIONAL MEMBERSHIPS/AFFILIATIONS

New York City Bar Association, Technology Committee
New York City Bar Association, E-Discovery Sub-Committee

BAR ADMISSIONS

New Jersey
New York
U.S. District Courts, Southern and Eastern Districts of New York
U.S. District Court, New Jersey
U.S. District Court, Northern District of California

EDUCATION

Boston University, J.D., cum laude, 1993
Cornell University, B.S., with honors, 1986


    The Legal 500 - The Clients Guide to Law Firms

REPRESENTATIVE ENGAGEMENTS

  • Successfully defended Gold Eagle, maker of a line of fuel additives, against a false advertising claim brought in federal court in Florida by its competitor Star-Brite Distributing concerning a comparison ad that Gold Eagle had run. After significantly limiting Star-Brite’s damages claim, a jury trial was held with the jury returning a verdict finding that Gold Eagle’s comparison ad did not violate the Lanham Act or any of Florida’s false advertising statutes or laws.
  • Represented the heirs of the comedy duo Bud Abbott and Lou Costello in a copyright infringement action for the use of Abbott & Costello’s iconic “Who’s On First?” comedy routine in a Broadway play and in a video promoting the play.
  • Represented Harpo Inc., the owner of the Oprah family of trademarks, and Dr. Oz in the prosecution of right of publicity, false endorsement, trademark infringement and other claims against numerous Internet marketers of dietary supplements that used Oprah Winfrey’s and Dr. Oz’s names and likenesses without their consent.
  • Represented Kickstarter, the global funding platform for creative projects, in a UDRP domain name proceeding against an entity that registered the domain name kickstarter.nyc, along with other domain names using the trademarks of other third parties. The arbitration was decided in Kickstarter’s favor, with the domain name being assigned to Kickstarter.
  • Obtained summary judgment on behalf of a Fortune 100 financial services firm and its advertising agency in an action concerning a nationwide advertising campaign and tagline that the plaintiff claimed infringed his copyright and trademark rights. Successfully opposed plaintiff's appeal to the Second Circuit.

SPEAKING ENGAGEMENTS

Roundtable Presenter, "Challenges in Contemporary Hospitality Branding," Cornell University's The Center for Hospitality Research, July 2013

"Cornell University 2013 Brand Management Roundtable," The Center for Hospitality Research, April 1-2, 2013

"Cornell University 2012 Brand Management Roundtable," The Center for Hospitality Research, April 2-3, 2012

"Policing Your Brand on the Internet: How to Protect & Defend What Is Yours," New York State Bar Association Roundtable, November 7, 2011

"Litigating Internet-Based IP Claims: How to Protect and Defend What is Yours," Davis & Gilbert Intellectual Property Litigation Seminar, May 4, 2011

PUBLICATIONS

"Battling the Real "Fake News": FTC Reaches Multi-Million Dollar Settlement with Internet Marketers for False Celebrity Endorsements," D&G Litigation Alert, November 2017

Co-Author, "First Circuit Requires Identifiable Injury for Claims Asserting Deceptive Retailer "Compare At" Prices," D&G Advertising, Marketing & Promotions Alert, September 2017

Co-Author, "Trouble in Patent Troll Paradise?" Intellectual Property Magazine, August 2017

Co-Author, "The Enemy Within," Intellectual Property Magazine, June 2017

Co-Author, "When Is a "Firm Offer" Really Firm When Negotiating Talent Agreements? When the Term Sheet Says So," D&G Litigation Alert, June 2017

Co-Author, "The Days of Patent Plaintiff Forum Shopping May be Over," D&G Intellectual Property Litigation Alert, May 2017

Co-Author, "Breach Of Contract Claims Allowed For Alleged Open Source License Violations," D&G Intellectual Property Litigation Alert, May 2017

Co-Author, "Patent Troll Cases Unlikely To Drop Significantly," 2017 Trends in Marketing Communications Law

Co-Author, "$500 Million Oculus Verdict Highlights Litigation Risks for Emerging Tech Companies," D&G Intellectual Property Alert, February 2017

Co-Author, "U.S. Supreme Court Sets the Bar Higher for Obtaining Damages for Design Patent Infringement," D&G Intellectual Property Litigation Alert, December 2016

Co-Author, "Second Circuit Narrows 'Red Flag Knowledge' Exception to DMCA’s Safe Harbor Protections for ISPs," D&G Intellectual Property Litigation Alert, August 2016

Co-Author, "All Together Now: 'Block'," Trademarks & Brands Online, April 6, 2016

Author, "Expanding Reach of the Copyright Fair Use Defense," Davis & Gilbert 2016 Mitigating Risk: Key Litigation Developments

Co-Author, "Our Best Offer: Rule 68 and TCPA Class Actions," Davis & Gilbert 2016 Mitigating Risk: Key Litigation Developments

Co-Author, "Wyndham Settles FTC's Data Breach Case After Ruling Reinforced FTC's Authority," D&G Digital Media, Technology & Privacy Alert, December 2015

Co-Author, "Failure to Prove Probability of Harm from Alleged Data Breaches Dooms FTC’s Complaint," D&G Digital Media, Technology & Privacy Alert, December 2015

Co-Author, "Upcoming FCC Rulings Will Create New Challenges for TCPA Compliance," D&G Advertising, Marketing & Promotions Alert, July 2015

Co-Author, "The Power Of A Poor Review," Trademarks & Brands Online, April 2015

Co-Author, "The Supreme Court Comes Out Swinging in 2015 With Important Trademark Decision," D&G Intellectual Property Litigation Alert, March 2015

Co-Author, "The Telephone Consumer Protection Act: Privacy Legislation Gone Awry?Intellectual Property & Technology Law Journal, October 2014

Co-Author, "Recent Developments in the Fight Against Patent Trolls," D&G Intellectual Property Litigation Alert, July 2014

Co-Author, "Supreme Court Clarifies Who Can Asset a Federal Claim for False Advertising," D&G Intellectual Property Litigation Alert, April 2014

Co-Author, "Has the Transformative Use Test Replaced the Second Circuit's Rogers Test in Balancing the Right of Publicity Against First Amendment Rights?" Bright Ideas, Winter 2013

Co-Author, “Trademark Laws: New York,” Practical Law Company, July 2013

PRESS

Quoted, Trademarks & Brands Online, "UDRP Roundup: Wins for Brand Owners Against Bogus Domain Names," August 10, 2016

Mentioned, Law360.com, "TiVo's 'Holy Grail' Ad Patent, Two Others Ruled Invalid," February 23, 2016

Quoted, World Intellectual Property Review, "Five Things We Learned This Week: PTAB Changes, 'Dismaland' and More," August 28, 2015 

Quoted, Bloomberg BNA Privacy & Security Law Report, "Future Supreme Court Ruling in TCPA Action May Affect Case Strategies, Not Compliance," July 6, 2015 

Quoted, Law360, "Abbott and Costello Heirs Sue Play Over 'Who's on First'," June 5, 2015

Quoted, New York Post, "Abbott & Costello Heirs Sue Play Over 'Who's on First?' Routing," June 5, 2015

Quoted, The New York Times, "'Hand To God' Play Sued by Abbott and Costello Heirs Over Use of 'Who's on First?'," June 4, 2015

Quoted, World Intellectual Property Review, "SCOTUS’s Ruling in B&B Could Shift More Resources to TTAB Cases, Lawyers Say," March 25, 2015

Quoted, Law360.com, "Attorneys React to Supreme Court's TTAB Preclusion Ruling," March 24, 2015

Quoted, World Intellectual Property Review, "Top Ten Developments for 2015: Spider-Man, SEPs and Shoes," February 16, 2015

Quoted, Trademarks & Brands Online, "'Tis the Season to be Careful," by Jay Ondreicka, December 16, 2014

Mentioned, Law360.com, "Law360's Weekly Verdict: Legal Lions & Lambs," by Ryan Davis, November 6, 2014

Quoted, Law360.com, "Lawyers Weigh In On Supreme Court's Lexmark Ruling," by Julia Revzin, March 25, 2014

PROFESSIONAL MEMBERSHIPS/AFFILIATIONS

New York City Bar Association, Technology Committee
New York City Bar Association, E-Discovery Sub-Committee

BAR ADMISSIONS

New Jersey
New York
U.S. District Courts, Southern and Eastern Districts of New York
U.S. District Court, New Jersey
U.S. District Court, Northern District of California

EDUCATION

Boston University, J.D., cum laude, 1993
Cornell University, B.S., with honors, 1986


    The Legal 500 - The Clients Guide to Law Firms