Lauren Sabol's War Story

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Leason Ellis successfully defended an art storage client in a declaratory judgment action brought by its licensee.  The dispute arose when our client, whose trademark and family name has been associated with high-end art storage since the 1800s, suspected a breach of its trademark license by its exclusive licensee.  Shortly after the client engaged Leason Ellis to investigate the breach, we discovered that the licensee had registered a nearly identical mark in its own name, which was prohibited by the license agreement.

During the course of the parties’ settlement negotiations, the licensee filed a declaratory judgment action seeking ownership of our client’s trademarks based on a theory of naked licensing.  Within days of filing the complaint, the licensee obtained a temporary restraining order and sought preliminary injunctive relief against our client.  Extensive briefing ensued, where we concurrently opposed the licensee’s motion for preliminary relief and filed a motion to dismiss on the basis of licensee estoppel.

I argued the preliminary injunction motion on behalf of our client.  Our SDNY judge kept a hot bench and asked many substantive questions about the cases cited in the briefing and the differences in the application of licensee estoppel for patents and trademarks.  Using my knowledge of intellectual property and review of the case law in preparation for the hearing, I was able to answer the Judge’s questions with the facts and law that supported our argument.  The hearing began at 2:15 p.m. and lasted about an hour.  By 5:00 p.m., the Court issued an order in our favor, which vacated the temporary restraining order and denied the licensee’s request for a preliminary injunction.

Discovery then commenced.  We devised an aggressive discovery plan, which included numerous discovery requests, subpoenas, deposition notices, and electronic discovery requirements.  After multiple meet-and-confers, it was clear that the licensee lacked an understanding of the requirements for electronic discovery.  With our motion to dismiss still pending and a motion to compel forthcoming, the licensee filed a notice of voluntary dismissal, which ended the case.  The licensee is no longer using our client’s trademarks.