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Paul D. Supnik

 

Paul D. Supnik

Attorney at Law
9401 Wilshire Boulevard, Suite 1250
Beverly Hills, CA 90212
310-859-0100

Personal service is offered in selected legal areas. This office is suitable for matters where a large firm is not required, yet where problem solving can best be handled by one having a developed knowledge in specific areas of intellectual property and media. The practice incorporates a seasoned understanding of both domestic and international copyright and trademark matters that covers many industries. A network of lawyer contacts cultivated over years crosses national boundaries to help the corporate client and the business lawyer liaise with international colleagues abroad. A commitment to the legal profession and its institutions is an integral part of the practice.

Representation has included businesses and individuals in the entertainment, art, publishing, merchandising, Internet, e-commerce and new media, advertising, computer software, information services, financial, clothing, consumer products, consumer electronics, food, restaurant, medical products, eyewear, jewelry, sporting goods, furniture, leather goods and other industries, primarily limited to the specific practice areas identified below.

Practice Areas

Domestic and International Copyright and Trademark Law;
Motion Picture, Television, Publishing, Media and General Entertainment Law; Internet Law; Licensing;
Related Litigation

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Copyright

• Registration of copyright
• Assignments and recordation
• Copyright searches
• Interpretation of domestic and foreign rights
• Termination of transfers
• Licensing and contract negotiation
• Preliminary injunction and seizure proceedings
• Anti-piracy enforcement/defense
• Litigation and trials of infringement and license disputes

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Trademark

• Preliminary injunction and seizure proceedings
• Anti-counterfeit enforcement/defense
• Litigation and trials of trademark infringement and unfair competition matters.
• Trademark/service mark selection and development
• Trademark searches and interpretation
• Federal registration
• Foreign registration
• Customs recordation
• Opposition and cancellation proceedings
• Counseling on appropriate trademark usage in advertising and commercials and on packaging
• Internet domain name disputes
• Assignments and recordation
• Licensing of trademarks and service marks

Supnik at Court of Appeals for the Federal Circuit
Federal Court Litigation

• Representing clients in connection with the proseuction and defense of trademark and copyright matters in federal court proceedings;
• Acting as local counsel for out of town attorneys with copyright and trademark disputes in Los Angeles

Please click the button on the right for basic trademark information.

Background

Experience

• Attorney of record in over 100 cases in Federal Courts involving intellectual property issues.
• Attorney of record in over 1,000 trademark filings in the U.S. Patent and Trademark Office.
• Attorney of record in over 50 Trademark Trial and Appeal Board matters involving opposition, cancellation and appeal proceedings.
• Obtained trademark protection for clients in association with foreign counsel in territories including China, Hong Kong, Singapore, Taiwan, South Korea, Japan, Switzerland, U.K., European Union, India, Canada, Mexico, Australia, New Zealand, Brazil, Guatemala, Honduras, Russian Federation, South Africa and United Arab Emirates.

Representative Matters
• Successfully represented company through jury trial against lawsuit by multinational company for claim of trademark infringement which resulted in defense verdict.
• Obtained seizure order against manufacture of infringing clothing articles and conducted seizure.
• Successfully obtained reversal by Ninth Circuit Court of Appeals of summary judgment in copyright infringement claim.
• Litigated idea submission claims in connection with television series against its producer.
• Successfully tried copyright infringement action to jury on behalf of plaintiff. After trial, judgment was sustained on appeal to the Ninth Circuit Court of Appeals.
• Testified in federal court as expert witness in trademark infringement lawsuit.
• Successfully litigated and settled trademark infringement dispute involving travel agency name.
• Litigated copyright infringement lawsuit against major software manufacturer resulting in a satisfactory settlement following mediation.
• Represented marketing professional against multinational company in connection with concept used in connection with major marketing campaign. Mediation resulted in a satisfactory settlement.
• Represented prominent photographer in suit for copyright infringement against calendar publisher.
• Successfully litigated trademark infringement dispute involving a restaurant name. Mediation resulted in a satisfactory settlement.
• Pursued newspaper publisher in copyright infringement claim resulting in stipulated injunction.
• Successfully forced change of mark by service provider without the necessity of filing a lawsuit.
• Successfully settled lawsuit involving claimed copyright infringement of motion picture video in DVD.
• Represented film rights holder against foreign sales agent in IFTA arbitration and obtained favorable arbitration award.
• Local counsel in connection with copyright infringement lawsuit involving popular song.
• Litigated as associate counsel copyright infringement claims involving writer and obtained satisfactory settlement.
• Satisfactorily resolved dispute involving motion picture title representing motion picture producer against book publisher’s use of confusingly similar title.
• Litigated and satisfactorily resolved claims of copyright infringement of jewelry designs.
• Litigated contractual dispute by game creator against distributor.
• Successfully litigated through settlement a copyright infringement dispute between an artist and a major retail chain involving sale of arguably infringing ceramic products.
• Litigated trademark infringement lawsuit against school resulting in a satisfactory settlement involving a name change.
• Successfully litigated through settlement copyright infringement dispute between an artist and a merchandising outfit involving a variety of consumer products.
• Successfully tried lawsuit involving failure to pay royalties in connection with the domestic distribution of a theatrical motion picture.
• Appealed decision from the Trademark Trial and Appeal Board through hearing before the Federal Circuit Court of Appeals.
• Arbitrator of numerous disputes involving international motion picture distribution rights through the IFTA International Arbitration panel.
• Successfully litigated breach of contract dispute in the toy game business resulting in a mediated settlement.
• Defended active sports product company in copyright and trademark infringement suit by major studio.
• Successfully defended through settlement product distributor against claims by major studio of infringement over dispute as to whether distributor had obtained a license.

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The foregoing examples should not be taken to imply that a same or similar result will be achieved in other matters. For more background information, see listings on SuperLawyers and Martindale-Hubbell. 

Professional Affiliations 

• State Bar of California (admitted 1972)
• Los Angeles Lawyer Magazine, Los Angeles County Bar Association, Chair, Editorial Board (1997-98)
Entertainment Law and Intellectual Property Section, Los Angeles County Bar Association, Chair (1979-80)
• International Law Section , Los Angeles County Bar Association, Chair (2002-03)
• International Law Section, State Bar of California, Executive Committee (2005-08)(now California Lawyers Association International Law and Immigration Section) 
Los Angeles Copyright Society, President (2001-02)
UC Hastings Alumni Association, Greater Los Angeles Area Chapter, President (1984-85)
Association Internationale des Jeunes Avocats , National Vice President, United States (1990-92), Honorary Vice President (1993-)
Union Internationale des Avocats, Vice President, Entertainment Law Commission (1997-2001)
International Visitors Council of Los Angeles, Vice President (2001-06)
• United States District Courts, Central, Southern and Northern Districts of California; Ninth Circuit Court of Appeals ; Court of Appeals for the Federal Circuit
Beverly Hills Bar Association (President's Award, 2006; Beverly Hillls Bar Foundation Board of Governors, 2006-12)
American Bar Association
• Arbitrator, IFTA International Arbitration Tribunal
British American Business Council Los Angeles, Member, Board of Directors (2001-06)
International Trademark Association
• Adjunct Associate Professor, Southwestern Law School (2008-11)
• Of Counsel, Rufus-Isaacs, Acland & Grantham, LLP
• United States District Court, Central District of California ADR Panel Mediator 

Publications 

The Essential Guide to Entertainment Law: Intellectual Property, Co-Author, Juris Publishing (July 2018).
• Financial Elements of Contracts, book review, Los Angeles Lawyer Magazine (July/August 2010)
• "Protecting Trademarks Under the Madrid Protocol" Los Angeles Lawyer Magazine (April 2004).
• "Check Marks--A trademark audit is a useful tool for determining the cost-effectiveness of maintaining a client's trademark portfolio" Los Angeles LawyerMagazine (May 2000).
• "Mark of Distinction--A New Federal Law Protects Distinctive Trademarks Against Dilution Through Unauthorized Use" Los Angeles Lawyer Magazine (May 1997).
• "Copyright Infringement" in Proof in Competitive Business Litigation, California Continuing Education of the Bar (1993).
• "How to Stop Counterfeiting--A Practical Approach to the Industry's Biggest Problem" Licensing Today International (June/July/August 1993); "Exploiting Entertainment Marks Internationally in a Downturned Economy" Licensing Today International (June/July 1992).
• "Arbitration of Entertainment Industry Contingent Compensation Claims" in The Back End: A Look at Gross and Net Participations in the Wake of Buchwald v. Paramount, sponsored by the Los Angeles County Bar Association Intellectual Property and Entertainment Law Section (1990).
• "Designations of Source--Are they Necessary to Support Entertainment Industry Merchandising Rights?", Cardozo Arts & Entertainment Law Journal (1986).
• Merchandising and Licensing  syllabus co-editor, sponsored by the Intellectual Property and Entertainment Law Section, Los Angeles County Bar Association (1985).
• "Diluting the Counterfeiters: New Trademark Rights and Remedies in Dealing with Entertainment and Merchandising Properties," The Entertainment and Sports Lawyer, ABA (Fall, 1985).
Copyright: Selected Practical Aspects of Enforcement and Protection, Editor, sponsored by the Intellectual Property and Entertainment Law Section, Los Angeles County Bar Association (1984).
• "The Bell and Howell: Mamiya Case--Where Now Parallel Imports," The Trademark Reporter (January-February, 1984).
• "Unions and Guilds" (coauthor) in Producing for Motion Pictures and Television , sponsored by the Intellectual Property and Entertainment Law Section, Los Angeles County Bar Association (1983).
• "Works Made for Hire" in The Visual Artist's Business and Legal Guide, Beverly Hills Bar Association Barristers Committee for the Arts, (1981, 1995), reprinted by Jerome Headlands Press, Prentice-Hall.
The Actors Manual: A Practical Guide to Your Career, Beverly Hills Bar Association Barristers Committee for the Arts, co-editor (1978), reprinted by Elsevier-Dutton (1980).
• "First Amendment and Freedom of the Press", Los Angeles County Bar Journal, Los Angeles County Bar Association , Co-Editor, symposium issue (May 1976). 

Presentations

• "Copyright -- Canada and the United States: 10 Top Differences" Co-Presenter, The Bar of Montreal International Relations Committee and Los Angeles County Bar Association International Law Section (2017).
• "Nuts and Bolts of Discovery for Litigators: The Art of Written Discovery" Co-Presenter, Beverly Hills Bar Association (2017).
• "Trademarks 101: Selection and Protection Basics for the Business Lawyer," Beverly Hills Bar Association Business Law Section (2015).
• "Cross Border Due Dilligence," panelist on Intellectual Property Issues, State Bar of California sponsored by the International Law Section, Monterey, California (2006).
• "The Legal Business of the Film Industry," California Volunteer Lawyers for the Arts (2006).
• "Fair Use as a Cherished Copyright Defense," Ventura County Bar Association Intellectual Property Section (2006).
• "International Copyright Basics," HalfMoon Seminars, (2006).
• “Combating Counterfeiting and Piracy,” Program Chair, State Bar of California International Law Section (2005).
• "Intellectual Property Rights Abroad -- How to Obtain, Maintain and Defend Them," State Bar of California sponsored by the International Law Section and the Intellectual Property Section, moderator and speaker on international trademark and copyright, Monterey, California (2004).
• “Damages in Copyright Infringement Litigation,” Association of Independent Music Publishers (2004).
• "Protecting Your Client's Intellectual Property and Trade Secrets 101," State Bar of California Solo and Small Firm Section (2002).
• "Music on the Internet--The United States Perspective" Union Internationale des Avocats, Buenos Aires, Argentina (2000).
• "What the Business Lawyer Should Know About Intellectual Property, Assignments and Licenses", American Bar Association Section of Taxation, Small Law Firms Committee, Fall Meeting (2000).
• "Fundamentals of Business Practices Litigation," panelist on copyright law, California Continuing Education of the Bar (2000).
• "Anatomy of an AFMA Arbitration," panelist, IFTA (formerly AFMA) and Los Angeles County Bar Association Intellectual Property and Unfair Competition Section (2000).
• "Enforcement of Trademarks Abroad", panelist, Association Internationale des Jeunes Avocats , Brussels, Belgium (1999).
• "Entertainment Industry Arbitration: Domestic and International," The Media District Intellectual Property Bar Association (1997).
• "Multimedia Production Agreements and Rights Clearances," Union Internationale des Avocats , Marrakech, Morocco (1994).
• "Discovery Issues and Trial Proof in Competitive Business Litigation: Handling Intellectual Property Issues", panelist, California Continuing Education of the Bar (1994).
• "Enforcement of Copyright and Related Rights Affecting the Music Industry", editor and moderator, Cannes, France, International Association of Entertainment Lawyers (1993).
• "Production and Distribution of Motion Pictures", chair and moderator, London, England, Association Internationale des Jeunes Avocats (1991).
• "Resolving Contractual Disputes in the Entertainment Industry", UCLA Extension, program coordinator and moderator (1983).

Education

B.S. Engr. UCLA , 1968
J.D. UC Hastings College of Law , 1971

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Copyright, Trademark and Entertainment Law -- Paul D. Supnik Law Office