Marc Lieberstein

Marc A. Lieberstein is the co-chair of the Retail & Consumer Goods industry team. His practice focuses on intellectual property licensing and franchising in the retail/consumer goods and services areas, fashion/apparel and accessories, food and beverage, and commercial/industrial design, including the drafting, negotiation and enforcement of license and franchise documents and agreements, as well as implementation of branding and commercialization objectives for clients via licensing and franchising. In conjunction with the services above, he counsels clients on creating effective strategies for procuring, protecting and enforcing their global intellectual property assets.

Marc has also participated in and used alternative dispute resolution forums such as arbitration and mediation to enforce intellectual property rights. Marc frequently lectures and writes on intellectual property issues for a variety of intellectual property organizations and publications, including International Trademark Association (INTA), New York State Bar Association (NYSBA) Intellectual Property Section, American Bar Association Forum on Franchising, Wharton Business Law Association at the University of Pennsylvania, New York University, Association of the Bar of the City of New York Fashion Law Committee, Licensing Industry Merchandisers’ Association (LIMA), National Law Journal, IP Strategist and The New York Law Journal, Practical Law, The Licensing Journal.

Marc is listed in the 2019 and the eight years immediately preceding editions of World Trademark Review 1000 – The World’s Leading Trademark Professionals. He was recognized as a New York “Super Lawyer” in Intellectual Property by Super Lawyers magazine in 2018 and the eight years immediately preceding, and, for the last seven years, he was named a Top 100 New York Metro “Super Lawyer” in Intellectual Property.

Marc has been recognized as an “IP Star” in 2018 and the five years immediately preceding by Managing Intellectual Property magazine. In 2017, he was recognized by Who’s Who Legal for Franchising. Marc was named a 2018 Legal Eagle by Franchise Times. He was also recommended by Legal 500 US in 2015, 2016, 2017 and 2018 for Copyright.

In 2013, Marc received the Lexology Client Choice Guide – International 2013 Award and is the sole winner in the Intellectual Property: Copyright category for New York. He was also listed in the 2012 and the four years immediately preceding editions of Chambers USA: America’s Leading Lawyers for Business for Intellectual Property: Trademark & Copyright. Chambers noted that Marc has “tremendous business savvy and is tenacious in his work ethic,” according to his clients (2012).

The International Trademark Association (INTA) honored Marc with the Volunteer Service Award (VSA) in the Advancement of Committee or Subcommittee Objectives category. The VSAs recognized Marc in 2015 for providing exemplary volunteer service to INTA. As a member of INTA’s Alternative Dispute Resolution Committee’s Neutral Standards & Measurement Subcommittee, Marc made a tremendous impact by volunteering both his time and expertise to support the Association’s goals and objectives.

Marc is a recipient of the 2015 Commitment to Justice Award presented by Her Justice recognizing his pro bono work in representing a client who sought help in terminating her arranged marriage. Through skillful negotiation, without any court intervention, Marc secured for the client a divorce on terms very favorable to her and to her children. He is a recipient of the Kilpatrick Townsend 2014 Pro Bono Justice Award. Marc is also a recipient of the 2015 Cardozo Law School Alumni of the Year Award recognizing Marc’s leadership and dedication to Cardozo Alums and students.

Representative Clients: MOMOFUKU, FIG & OLIVE, S’WELL BOTTLE, STETSON, JOE FRESH, TAILORED BRANDS, PATTY MADDEN, BILLY REID, ENERGIZER, Georgia-Pacific, Osram Sylvania and UPS.

Experience:

• Provide franchise advice and counsel, including preparation of Franchise Disclosure Document, Franchise Agreement, as well as related developer and other agreements, along with franchise registration, renewal and update services to numerous clients in the food beverage and consumer services areas. Representative clients include: THE JUICY CRAB; ZIPPY’S RESTAURANTS; FUKU; RIVER STREET SWEETS – SAVANNAH’S CANDY KITCHEN; MAXIMIZED LIVING, PUTT-PUTT.
• Provide advice and counsel concerning licensing and related brand transactions, such as manufacturing, supply and distribution agreements, as well as provide global trademark, copyright and patent portfolio and enforcement services to S’well Bottle Company.
• Provide advice and counsel concerning licensing and related brand transactions, such as manufacturing, supply and distribution agreements, as well as provide global trademark, copyright and patent portfolio and enforcement services to Hudson’s Bay Companies.
• Provide advice and counsel to a North American clothing manufacturer, designer, and retailer, including draft, revise and audit for international Retail and eCommerce Agreement templates, as well as provide counsel concerning disputes with licensees around the world, and draft and negotiate product supply and services agreements, social media influencer agreements, and trademark merchandise and co-branding license agreements.
• Served as co-lead counsel in an international arbitration proceeding for plaintiff licensor JA Apparel Corp. against a Chinese licensee. After conducting a full trial on liability, we successfully obtained an arbitral award confirming the termination of the licensee, finding that the licensee materially breached the license agreement, enjoining the licensee’s activities in China and dismissing the China licensee’s counterclaim. We also obtained a damages award in the amount of $1.2 million, a permanent injunction including an order to return or destroy all remaining inventory, and an award of attorneys’ fees and costs. The arbitration award was later formally recognized by the Shanghai Number One Intermediate People’s Court.
• Provide advice and counsel in areas of trademark and copyright to global manufacturer, designer and supplier of wallcovering products, including trademark and copyright licensing, registration and clearance.
• The firm serves as global trademark and licensing counsel to JA Apparel Corp., a $400 million worldwide lifestyle apparel, home furnishings and accessories company and owner of the Joseph Abboud brand.
• Advice and counsel provided in areas of patent, trademark and copyright to Custom Design WallCovering, a designer and supplier of wallcovering products, including trademark and copyright licensing, registration and clearance.
• Advice and counsel in areas of patent, trademark and copyright to Economic Development Resource Guide, a provider of state-of-the-art consulting services and software products, for measuring economic development performance, impact and opportunity for transportation and infrastructure projects, energy programs and projects, and commercial and industrial development.
• Brand licensing and counsel to Osram Sylvania, one of the largest lighting and materials companies in the world with a long-standing reputation of providing solutions in homes, businesses, institutions, and automobiles, to provide advice on brand licensing programs, audit and update license agreement terms, as well as brand licensing and protection strategy.
• Brand licensing and counsel to one of the world’s leading manufacturers and marketers of tissue, packaging, paper, pulp, building products and related chemicals, to provide advice on brand and technology licensing program, audit and update license agreement terms, as well as licensing and brand protection strategy.
• Represented PayFlex Systems USA, Inc. in trademark infringement litigation against Sensei Inc., a health care technology company. PayFlex had previously hired Sensei as a software development consultant for PayFlex’s new product, “HealthHub,” a healthcare benefits planning and management mobile tool. A year later, PayFlex discovered that Sensei had launched its own nearly identical benefits management product, coincidentally named “Health Hub.” Once we filed a complaint Sensei immediately agreed to stop use of the Health Hub mark and signed a consent judgment, including a permanent injunction. Case settled. PayFlex Systems USA, Inc. v. Sensei, Inc. et al., No. 8:11-cv-00265 (D. Neb. filed Aug. 2, 2011).
• Retained to defend independent software developer on a pro bono basis against former law firm employer that alleged copyright infringement, fraud, breach of fiduciary duty and trade secret theft. Negotiated a favorable settlement for the software developer that resulted in a dismissal of all claims, as well as permitting the software developer to sell the accused software product. Esbin & Alter, LLP v. Zappier et al., No. 1:08-cv-00313 (S.D.N.Y. filed Jan. 14, 2008).
• Successfully represented copyright owner and designer of wallcovering patterns against infringer manufacturer. After discovery, the matter was resolved with a monetary settlement agreement and a permanent injunction. RJF Int’l Corp., et al. v. U.S. Vinyl Mfg Corp., et al., No. 1:06-cv-04021 (S.D.N.Y. filed May 25, 2006).
• Successfully represented Design Tex Group, Inc., copyright owner and designer of wallcovering patterns, against infringer manufacturer. The matter was quickly resolved with a settlement agreement that procured a monetary settlement and a permanent injunction. Design Tex Grp., Inc. et al. v. Fidelity Indus. et al., No. 1:05-cv-00008 (S.D.N.Y. filed Jan. 3, 2005).
• Successfully represented Design Tex Inc. and designer Patty Madden in a copyright infringement action. The District Court granted summary judgment finding not only copyright infringement, but also finding the corporation and its president jointly and severally liable. Damages included not only the maximum $150,000 statutory award allowed, but also attorney fees under the Copyright Act. Design Tex Group, Inc. v. U.S. Vinyl Manufacturing Corp., 76 U.S.P.Q.2d 1946, 1949 (S.D.N.Y. 2005). Laminating Serv. Inc. v. U.S. Vinyl Mfg. Corp. et al., No. 1:04-cv-07728 (S.D.N.Y. filed Sept. 29, 2004).

Education:

• Benjamin N. Cardozo School of Law, J.D. (1992)
• State University of New York, University at Albany, B.A., History, Minor in Business (1989)cum laude

Admissions:

• Connecticut (1992)
• New York (1993)

Court Admissions:

• U.S. Court of Appeals for the Federal Circuit (1995)
• U.S. Court of Appeals for the Second Circuit (2000)
• U.S. District Court for the Eastern District of New York (1992)
• U.S. District Court for the Southern District of New York (1992)