Eric J. Shimanoff

Eric advises on and litigates complex intellectual property matters concerning trademarks, copyrights, unfair competition, counterfeiting, domain names, false advertising, trade secrets, publicity rights, patents, the Internet, websites, social media platforms, mobile apps, content clearance, licensing and other agreements.

Eric prides himself on his ability to provide pragmatic and cost‐effective solutions to clients across broad range of industries, including fashion, entertainment, financial services, food, cosmetics and real estate.

On any given day, Eric may be:

• litigating before state and federal courts, the Trademark Trial and Appeal Board or UDRP panels.
• prosecuting, managing and enforcing trademark, copyright and domain name portfolios worldwide.
• negotiating, reviewing and drafting intellectual property licenses and other agreements.
• reviewing and clearing advertising and exhibition content.
• providing general advice on a wide range of intellectual property and related issues.

Eric is a "a self-professed musical theatre geek."

Honors & Recognitions

"Eric Shimanoff is lauded for his 'creative and practical solutions' to complex cyber-related trademark issues involving domain names, licensing and litigious matters." 2024 Who’s Who Legal: IP

“Eric Shimanoff, a veteran copyright lawyer with extensive experience at the federal and state levels, handles matters concerning web sites, social media, and NFTs.” 2024 The Legal 500

“[Eric] Shimanoff sits on the firm’s executive committee and has nearly 20 years’ experience in the trademark profession. His practice covers all bases, but he is particularly adroit going to bat at the TTAB, where he routinely enforces the rights of the Empire State Building, Barclays Capital and Columbia University. In district court, he takes on Meta Platforms for New Ventures Services.” 2024 WTR 1000 – The World’s Leading Trademark Professionals

"Eric Shimanoff draws high praise for skillfully advising clients on trademark litigation, domain names and licensing issues." 2022 Who’s Who Legal: IP

“The team of Richard Mandel, Jonathan King and Eric Shimanoff is deadly. Each of them are very smart, business savvy and know practice and procedure in not only New York but even other jurisdictions.”  2022 The Legal 500.

"One of the top litigators on deck, Eric Shimanoff is a 'high-calibre oral advocate and a determined and smart lawyer who always makes for a worthy adversary.'" 2022 WTR 1000 – The World’s Leading Trademark Professionals 

“Eric Shimanoff, an online and offline enforcement maven whose iconic followers include the Empire State Building.” 2020 WTR 1000 – The World’s Leading Trademark Professionals

"Many of the lawyers here earn vociferous praise from the market: chair Jonathan King and litigator Eric Shimanoff, for example, are 'first-rate attorneys who demonstrate mastery of their subject'. Recently, these 'zealous advocates' litigated against Crocs on behalf of Car-Freshener." 2019 WTR 1000 – The World’s Leading Trademark Professionals

Eric Shimanoff and William Borchard  "are creative, responsive, diplomatic, methodical and effective – they meet and exceed the highest standards." 2018 WTR 1000 - The World's Leading Trademark Professionals

Expert Guides (Euromoney Institutional Investor PLC) for Trademarks  (2021)

WTR 1000 - The World's Leading Trademark Professionals, Enforcement and Litigation (2018 to present)

The Legal 500 (trademark litigation and copyright)

IP Stars (“Trademark Star” and “Copyright Star” - Managing IP 2022) 

Who’s Who Legal, IP – Trademarks (Law Business Research Ltd.) (2023 to present)

Community & Professional Activities

New York State Bar Association 

New York Intellectual Property Law Association 

American Intellectual Property Law Association 

INTA

Experience

Eric represents some of the most famous brands in the financial services and entertainment industries.

Eric has extensive experience:

• in state and federal courts.
• in contested proceedings before the Trademark Trial and Appeal Board.
• in UDRP domain name dispute proceedings before the World Intellectual Property Organization and the National Arbitration Forum.
• clearing, prosecuting and enforcing trademarks, copyrights and domain names.
• negotiating, reviewing and drafting intellectual property licenses and other agreements.
• reviewing and clearing content for advertising and exhibition.

Some memorable achievements are:

• Persuading the Trademark Trial & Appeal Board that the Empire State Building’s image is a famous mark worthy of protection against dilution.
• Obtaining nearly 200 favorable domain name dispute decisions.
• Advising one of the largest and most well-known financial institutions on thousands of domain name registration and enforcement issues.
• Speaking at law schools, continuing legal education providers and legal and professional organizations on a wide variety of intellectual property topics.
• Reviewing myriad content and hundreds of related agreements for the upgraded observatory experience at one of the most famous buildings and tourist attractions in the world.
• Working on several matters seeking to provide rights for gays and lesbians, including: assisting in drafting a Supreme Court amicus brief for petitioners in Lawrence v. Texas; representing five same-sex couples seeking marriage rights in New York in Hernandez v. Robles; representing the same-sex domestic partner of a 9/11 victim in a suit seeking determination of the proper distribution of an award disbursed by the Federal Victim Compensation Fund in Cruz v. McAneney.

Prior Employment

Kramer Levin Naftalis & Frankel LLP - Associate (2002-2005)

Prior to becoming an attorney, Eric taught music and musical theatre at a performing arts high school in Manhattan and directed several musicals in New York and Boston.

Blog Posts

Cases

Trademark

Barclays v. Sklarov, 20-cv-8437 (S.D.N.Y. 2021) – represented financial institution in trademark infringement suit against company that purported to offer financial services under the mark SHEARSON LEHMAN, a LEHMAN BROTHERS Company

Barclays v. Tiger Lily, Opp. No. 91219477 (TTAB) – represent financial institution in trademark opposition against third party seeking to register LEHMAN BROTHERS mark for whiskey (Applicant’s appeal pending)

The Estate of Massimo and Elena Vignelli v. Rizzoli International Publications, 19-cv-1584 (S.D.N.Y.) – represented publisher in defense of trademark and copyright infringement claims

Miller v. Participatory Safety, 19-cv-6994 (S.D.N.Y.) – represented promoters of SANTACON events in trademark dispute

Lopez v. True Religion Sales, 18-cv-10595 (S.D.N.Y.) – represented internet service provider in defense of trademark infringement claims based on web client’s use of LOWER EAST SIDE in connection with t-shirts

Fong On v. Fong On NYC, 18-cv-2300 (S.D.N.Y.) - represented landlord in defense of trademark infringement claims by former tenant

Weight Watchers International v. Golo, 18-cv-8928 (S.D.N.Y.) – represented weight management services company in assertion of trademark infringement claims concerning use and registration of FIT POINTS mark

United of Omaha Life Insurance Company v. PHL Variable Insurance Company, 18-cv-315 (D. Neb.) – represented insurance company in defense of trademark infringement claims

Control 3 v. Felix Storch, 18-cv-2319 (S.D. Cal.) – represented manufacturer of commercial appliances in trademark dispute

Varsity Spirit v. Cheerobics, 17-cv-585 (W.D. Tex.) – represented cheerleading and spirit company in assertion of trademark infringement claims

Kohler v. Bold International, 17-cv-4233 (E.D.N.Y.) – represented bathroom fixture company in assertion of trademark infringement claims (obtained judgment finding likely confusion)

Elf Cocoon v. Philip Stein Holding, 16-cv-23024 (S.D. Fla.) – represented luxury watch manufacturer in defense of trademark infringement and breach of contract claims

Car-Freshner Corporation v. Crocs, 16-cv-68 (N.D.N.Y.) – represented manufacturer of ubiquitous LITTLE TREES air fresheners in assertion of trademark infringement and dilution claims

ESRT Empire State Building v. Liang, Opposition No. 91204122 (TTAB 2016) - obtained judgement after trial that applicant’s logo for beer diluted distinctive quality of Empire State Building image mark

Kibler v. Hall, 15-cv-2516 (6th Cir. Dec 09, 2015), cert. denied - Obtained affirmation of summary judgment that record label’s use of rap artist’s LOGIC name did not infringe turn-tablist’s rights in DJ LOGIC name

Car-Freshner Corporation v. Sun Cedar, 15-cv-1463 (N.D.N.Y.) - represented manufacturer of ubiquitous LITTLE TREES air fresheners in assertion of trademark infringement and dilution claims against seller of tree-shaped air fresheners; defeated motion to dismiss claiming fair use

JaM Cellars v. Cult of 8, 13-cv-05680 (N.D. Cal.) – represented wine producer in defense of claims of trademark infringement

JR Caterers v. New York City Center, 12-cv-07073 (S.D.N.Y.) - defeated motion for preliminary injunction in defending claims that use of COTTON CLUB name in music about the historic music venue infringed plaintiff’s trademark rights

Quirky v. Davison Design & Development, 12-cv-262 (W.D. Pa.) - represented product development company in trademark and right of publicity claims against competitor purchasing names and marks as keywords

Moroccanoil v. Vogue International, 10-cv-10048 (C.D. Cal.) – represented manufacturer of hair and body products in defense of claims of trademark infringement and false advertising based on use of phrase “Moroccan Argan Oil” and ORGANIX mark

Hershey v. Promotion in Motion, 07-cv-1601 (D.N.J.) - obtained trial judgment that confectioner’s SWISSKISS chocolate mark did not infringe or dilute Hershey’s KISSES mark 

Dessert Beauty v. Fox, 05-3872 (S.D.N.Y.), aff’d 08-4779 (2d Cir.) - obtained summary judgment that use of term “love potion” on beauty products constituted statutory fair use under Lanham Act

Copyright

The Estate of Massimo and Elena Vignelli v. Rizzoli International Publications, 19-cv-1584 (S.D.N.Y.) – represent publisher in defense of trademark and copyright infringement claims

Candi Staton Productions v. Warner Bros. Records, 18-cv-11989 (S.D.N.Y.) – represented record label in defense of copyright infringement, termination and ownership claims

Barnett v. Starr Indemnity & Liability Company et al., 18-cv-418 (D. Or.), aff’d, No. 20-35299 (9th Cir. Oct. 28, 2021) – obtained dismissal of copyright claims filed against insurance company; plaintiff appealed to Ninth Circuit, which affirmed the dismissal.

Theraplant v. Makarechi, 16-cv-00646 (S.D.N.Y.) – represented licensed medical cannabis producer and distributor in assertion of copyright ownership claims

Cipriani v. Kendrick Lamar Duckworth, 15-cv-4078 (E.D.N.Y.) – represented record label and recording artist in defense of copyright infringement claims based on use of photograph in music video

Dream Collective v. Madewell, 15-cv-07871 (C.D. Cal.) – represented fashion brand in defense of copyright claims concerning jewelry design

Calmese v. Live Nation Worldwide, 14-cv-00334 (S.D.N.Y.) – represented record label merchandising arm in defense of copyright claims concerning use of artist’s image on t-shirt

Capitol Records v. 4MM Games, 12-cv-2080 (S.D.N.Y.) - obtained judgment that video game developer infringed music company’s compositions and sound recordings

Capitol Records v. Harrison Greenwich, Index No. 652249/2012 (Sup. Ct. N.Y. Cty.) - obtained summary judgment that restaurant infringed record label’s common law rights in pre-1972 sound recordings

Malloy v. EMI Christian Music Group, 11-cv-06075 (S.D.N.Y.) – obtained dismissal of copyright infringement claims against music publisher

Poindexter v. EMI Record Group, 11-cv-559 (S.D.N.Y.) - obtained dismissal of copyright claims against record label

Marimar Textiles v. Manhattan Beachwear, 06-cv-3054 (S.D.N.Y.) - represented textile producer in copyright infringement action against bathing suit manufacturer and retailer


Patent

Express Mobile v. Code and Theory, 18-cv-4679 (N.D. Cal.) – represented website developer in defense of patent infringement claims

Wine Enthusiast v. Vinotemp International, 17-cv-6782 (S.D.N.Y.) – represented wine refrigerator manufacturer in defense of trade dress and patent infringement claims; obtained dismissal of design patent claims on merits

Pioneer Pet Products v. Felinicity, 13-cv-01260 (E.D. Wis.) – represented manufacturer of pet water fountain in defense of utility patent infringement claims

Other

Warner Music and WEA International v. ROK Mobile; Sony Music Entertainment v. ROK Mobile; Orchard Enterprises NY v. ROK Mobile - Index Nos. 651155/2018; 652138/2018; 652139/2018 (Sup. Ct. N.Y. Cty.) - represent record labels in breach of digital distribution agreement claims against mobile service provider

Fullwood v. Wolfgang's Steakhouse, 13-cv-07174 (S.D.N.Y. Oct 10, 2013) – obtained dismissal of credit card receipt FACTA class action claims

Golloher v. Todd Christopher International, 12-cv-06002 (N.D. Cal.) -  represented manufacturer of hair and body care products in defense of class action false advertising claims

WB Music Corp. v. The Leonore S. Gershwin 1987 Trust, 10-cv-02496 (S.D.N.Y.) – represented certain heirs of George Gershwin in connection with royalty dispute

Atlantis Information Technology v. Computer Associates, 06-cv-3921 (E.D.N.Y.) - represented software developer in claim of breach of software licensing agreement