Brad Newberg has extensive experience in all areas of intellectual property litigation with a particular focus on copyright, trademark, trade secret, dilution, and unfair competition matters. Mr. Newberg has been practicing in the intellectual property field since the first day of his career and has been lead counsel on numerous cases, handling all aspects of litigation, including conducting direct examinations and cross-examinations at trial, arguing and drafting motions, supervising large-scale discovery, presenting at mediations, and taking and defending well over one hundred depositions. In addition, he has developed considerable experience in analyzing potential damages awards in trademark and copyright cases, bettering his ability to counsel clients as to the magnitude of recoveries or potential liability exposure. Mr. Newberg has represented clients before various federal courts, the Trademark Trial and Appeal Board, Copyright Arbitration Royalty Panels, the Copyright Royalty Tribunal, and state courts. He has also acted as a copyright expert in a major federal court litigation.
Immediately prior to joining Holland & Knight, Mr. Newberg was at an intellectual property boutique where he was one of the founding partners. In addition to his other legal experience, he has served as a judicial clerk for the Honorable Louis L. Stanton of the United States District Court for the Southern District of New York.
REPRESENTATIVE MATTERS:
Lead counsel: Morris v. Moody (S.D.N.Y. 08 cv. 7683). Represented creators of the award-winning PBS show Word World as well as their affiliates and partners defending $400 million lawsuit over seventeen claims, including copyright and patent claims. Obtained dismissal of all claims with prejudice.
Lead counsel: Wine of the Month Club, Inc. v. Malt of the Earth (C.D. Cal. 06 cv. 1106). Represented holder of registered trademarks "Wine of the Month" and "Wine of the Month Club" in infringement case. Obtained favorable settlement after defeating defendant's motion for summary judgment on issue of genericness.
Lead counsel: ICG America, Inc. v. Wine of the Month Club, Inc. (D. Conn. 09 cv. 0133). Represent Declaratory Judgment Defendant trademark holder in pending case.
Lead counsel: O&K, Inc. v. Hansen (C.D. Cal. 06 cv. 5787). Represented Counterclaim/cross-claim plaintiff, a well-known artist, in copyright and trademark claim against major retailer Forever 21 and manufacturer O&K, Inc. Obtained judgment on all counts, as well as attorneys' fees and sanctions.
Lead Trademark Counsel: ERBE USA, Inc. v. Canady (W.D. Pa. 07 cv. 0102). Represented defendant manufacturer of medical probes against claims of trademark and trade dress infringement. Obtained dismissal of all claims on summary judgment.
Lead counsel: Trademark case filed in Northern District of Texas. Represented financial services company defendant in trademark dispute. After initial victories, obtained a very favorable and early settlement of trademark claims without requiring defendant to pay any money or change trademark.
Copyright counsel: Represented copyright owners in various rate-setting proceedings before the three-judge panel known as the Copyright Arbitration Royalty Panel, and then later, the Copyright Royalty Tribunal. These long and extensive trials determine the royalty rates for statutory licenses under the Copyright Act, including, for example, the amounts that a webcaster pays when it streams a sound recording over the Internet, a satellite radio company pays when it transmits sound recordings via satellite, or a "business establishment service" pays for the right to supply retailers with music so that those retailers can perform sound recordings for their customers as they shop.
Copyright counsel: Represented copyright owner record companies in case to determine whether defendant webcasting service was "interactive" under the Copyright Act and, therefore, infringing due to ineligibility for a statutory license.
Trademark Counsel: Represented magazine publisher and obtained Preliminary Injunction prohibiting sale of competing publication on the basis that client was likely to win on all of its trademark, trade dress, and dilution claims.
Copyright counsel: Represented various large Yellow Pages publishers in multiple copyright cases brought by graphic design company, which alleged wide-scale copyright infringement in thousands of Yellow Pages advertisements.
Trademark counsel: Defense of Fortune 500 corporation against claims that its new brand name infringed on the mark of another company.
Mr. Newberg has also obtained multiple settlements of copyright and trademark disputes for companies and individuals in the early stages of the dispute so that the filing of a Complaint was not necessary.