Louis Ederer is a partner in the firm's intellectual property group. Mr. Ederer's practice focuses on intellectual property law, covering the areas of trademark, patent, and copyright litigation, prosecution, and counseling. He has developed particular experience in the area of brand protection and enforcement, including anticounterfeiting matters, for prominent luxury goods and apparel companies. Mr. Ederer is an experienced trial lawyer. During his nearly 30 years of practice, he has been involved in precedent-setting cases expanding protection for trade dress and design marks, and the law governing recoveries of damages and profits in counterfeiting cases. Many of Mr. Ederer's counterfeiting litigations have resulted in multimillion dollar judgments and settlements for his clients.
In addition to his litigation experience, Mr. Ederer has managed the international trademark portfolios of many well-known brands in such diverse fields as alcoholic beverages, apparel, cosmetics, and financial services. In this capacity, Mr. Ederer has assisted clients in selecting and clearing marks and creating and implementing trademark prosecution programs in the United States and around the world. Mr. Ederer has also conducted and managed anticounterfeiting enforcement programs.
In the copyright area, Mr. Ederer has been involved in all aspects of protection and enforcement, including antipiracy matters, assisting clients in registering original works of authorship, drafting licenses, assignments and publishing agreements, assisting clients with the acquisition and sale of copyrighted software programs, and litigating infringement cases in the entertainment industry and matters relating to breaches of license agreements.
Mr. Ederer has also been involved in all aspects of patent protection and enforcement, including assisting clients in clearing inventions for patent prosecution, conducting and maintaining worldwide patent filing programs, negotiating and drafting patent license agreements, and prosecuting and litigating patent infringement actions. Among others, Mr. Ederer has assisted in the protection and enforcement of many patents involving computer software.
In conjunction with his intellectual property practice, Mr. Ederer has developed extensive experience in liquor and food and beverage law. He has managed distributor relations programs for prominent suppliers of beverage alcohol products, and has handled complex supplier-distributor termination litigations. He has also actively handled legal aspects of his clients' distribution, compliance, and advertising programs.
Mr. Ederer also regularly advises on intellectual property issues as they relate to corporate and commercial transactions, and on licensing, distribution, fair trade, and competition issues. He has represented clients before state and government agencies, including numerous state liquor authorities, the US Alcohol and Tobacco Tax and Trade Bureau (TTB), the US Consumer Product Safety Commission, the US Food and Drug Administration, the US Federal Trade Commission, and US Customs and Border Protection.
Mr. Ederer also has extensive experience in sports and entertainment law, having negotiated agreements with entertainers and professional athletes, venue leases, sponsorship agreements, management/operation agreements, and franchise agreements.
Mr. Ederer's litigation accomplishments have been recognized by The National Law Journal, The Wall Street Journal, The New York Law Journal, and Business Week. He has lectured on intellectual property issues before numerous bar and industry associations, and is often quoted in the media on intellectual property issues, including developments in anticounterfeiting law.
Intellectual Property Representative Matters
- Represented famous luxury brand owner in action against former family member, obtaining permanent injunction against use of the family name in virtually any kind of commercial enterprise (Gucci America, Inc. v. Gucci, 2009 WL 440463 (S.D.N.Y. 2009)).
- Represented luxury brand owner in action against major retailer and supplier in counterfeiting and trade dress infringement action involving sale of unauthorized fragrance products; obtaining preliminary and permanent injunction against the sale of counterfeit goods (Yves Saint Laurent Parfums, S.A. v. Costco Wholesale Corp., 07 Civ. 3214 (LBS) (HBP).
- Represented world famous fashion and jewelry design houses in trademark, copyright, and trade dress infringement action against websites, resulting in entry of permanent injunction against use by defendants of clients' names, marks, and designs (Yurman Studio, Inc. v. Elena Castaneda and Ejewler LLC d/b/a Overstockjeweler.com, Defendants, and Cartier, a division of Richemont North America, Inc., Cartier International, N.V., Cartier Creation Studio, S.A., Van Cleef & Arpels S.A., Van Cleef & Arpels, Inc., Van Cleef & Arpels Distribution Inc., Gucci America Inc., and Bulgari S.p.A., Plaintiffs, v. Elena Castaneda and Ejeweler LLC d/b/a Overstockjeweler.com, Defendants. Nos. 07 Civ. 1241 (SAS), 07 Civ. 7862 (SAS).
- Represented prominent beverage alcohol supplier before the Trademark Trial and Appeal Board, successfully opposing registration of mark in precedent-setting decision finding "association confusion" between applicant's mark "Wild Geese" and one of client's most important brands, "Wild Turkey". Decision unanimously affirmed by the Federal Circuit. Austin, Nichols & Co., Inc. v.Stichting Lodestar, Opposition No. 91155165.
Louis S. Ederer
"NAFTA: The First Trade Treaty to Protect IP Rights
" co-author, IP Value
Louis S. Ederer
"How to Stop Grey Goods
" co-author, Brand Management Focus
Marcus A. Asner
, Louis S. Ederer
and Daniel A. Kracov
"Brand Integrity, Security and Anti-Counterfeiting for the Pharmaceutical Industry How to Deal With the Bad Guys and Work with the Feds
" Arnold & Porter LLP, New York, NY, June 3, 2010
Louis S. Ederer
, Cheryl Solomon and Anne Gilson Lalonde "Design Protection and the Fashion Industry: Fashion Week or Fashion Weak?
" Presentation in conjunction with Lexis-Nexis, February 17, 2010
Louis S. Ederer
and Julianne Saitz "Making Trademark and Copyright Infringement litigation Pay For Itself
" Presentation in conjunction with New York State Bar Association Intellectual Property Law Section, October 27, 2009
Louis S. Ederer
"Protecting the Supply Chain: Solutions and Strategies for Fighting Counterfeiting and Piracy
" National Chamber Foundation, Anticounterfeiting and Piracy Summit, September 2007