Overview

Lisa Pearson is an experienced, versatile and creative litigator specializing in copyright, trademark, unfair competition and Internet-related disputes. She represents creators and brand owners across a broad spectrum of industries including fashion and luxury goods, publishing, the arts and entertainment, consumer products, travel and many others.

Ms. Pearson began her legal career at one of New York's top litigation firms, where she enjoyed a diverse complex litigation practice, handling contract, tort, securities, First Amendment, white collar, International Trade Commission and even death penalty cases, in addition to intellectual property. Since 1991, she has focused on intellectual property litigation, obtaining excellent results for her clients in federal and state courts across the United States, in UDRP proceedings to recover domain names, and in cancellation and opposition proceedings in the U.S. Patent and Trademark Office. She has designed and implemented comprehensive policing, enforcement and anti-counterfeiting programs for many well-known rights owners. Ms. Pearson also advises clients on a wide array of issues including, by way of example, creative strategies for protecting intellectual property, formulating sane strategies for tackling infringements on the Internet and other social media, copyright and trademark rights in characters, idea submission procedures, and the popular parody and fair use defenses in infringement cases.

A trained mediator and member of the International Trademark Association (INTA) Trademark Mediators Network, Ms. Pearson has a keen interest in alternative dispute resolution. She has successfully resolved numerous disputes through mediation, arbitration and favorable settlements. Because she endeavors to find sensible business solutions to legal problems, she has also assisted clients in negotiating and drafting asset purchase agreements, intellectual property licenses and transfers, coexistence agreements and other commercial agreements.

Ms. Pearson was singled out by the National Law Journal in 2015 as one of its Outstanding Women Lawyers and was named one of the Top 20 Most Influential Women in IP by Law 360 in 2014. She received Lexology's 2015 and 2013 Client Choice Guide Award in the Intellectual Property: Trademarks category for New York. World Trademark Review 1000 – The World’s Leading Trademark Professionals rated Lisa as one of the top trademark litigators in New York (2011-2018), describing her as "a formidable trial lawyer with profound knowledge of the law and an eye to the bigger picture" and "one of the greats in the industry." She is ranked as a New York "Super Lawyer" in Intellectual Property and Intellectual Property Litigation (2007-2017) and a "Top 50 Women New York Super Lawyer" (2013-2015, 2017) by Super Lawyers magazine, and an IP Star (2013-2017) and one of the Top 250 Women in IP (2013 - 2014, 2016) by Managing Intellectual Property magazine.

Ms. Pearson has also been recognized as a leading copyright and trademark litigator by The Best Lawyers in America® (2018); Legal 500 US (2007-2016); The International Who's Who of Trademark Lawyers (2011-2015); Legal Media Group's Expert Guide to the World's Leading Women in Business Law (2010-2017) and Expert Guides: Trademark (2014). In 2009, Ms. Pearson received a prestigious Burton Award for excellence in legal writing for her article “How Fluid Trademarks Can Enhance Your Brand” and in 2016 for her article “The Universal Language of Non-Verbal Design Marks.” Ms. Pearson is AV® Preeminent rated by Martindale-Hubbell.*

*CV, BV, and AV are registered certification marks of Reed Elsevier Properties Inc., used in accordance with the Martindale-Hubbell certification procedure's standards and policies.

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Experience

Represented Victorinox Swiss Army in action for trademark infringement, trademark dilution and unfair competition against three sellers of decoded Swiss Army fragrances. Decoded fragrances lack the quality control and anti-counterfeiting devices that Victorinox includes in its products at the time of manufacture. The firm obtained consent judgments including injunctive and monetary relief. Women's Wear Daily, a leading industry publication, featured this victory for Victorinox Swiss Army and pointed out the importance of this issue to our client and our client’s efforts to protect the Swiss Army brand from counterfeiters: "Already, counterfeit imitations of our fragrances with an estimated retail value of more than $1 million have been seized by the alert action of the U.S. Customs and Border Protection with our cooperation," said Veronika Elsener, Victorinox Chair.

Obtained preliminary injunction in action brought by exclusive authorized U.S. distributor of Citizen Watches against wholesale and retail distributors of gray market products. Citizen Watch Co. v. BJ's Wholesale Club, 99 Civ. 0810 (DB) (S.D.N.Y. July 15, 1999).

The firm defeated a motion for a preliminary injunction brought by True Fit against our client True & Co., an e-commerce lingerie retailer that offers bra-fitting services to its customers. On the basis of its alleged family of TRUE marks, including TRUE FIT, TRUE TO YOU, and TRUING UP, True Fit, which offers e-commerce fitting services, sought an injunction barring True & Co. from using any marks containing the word “true.” The Court denied preliminary injunctive relief and accepted our argument that, “in the Twenty-First Century . . . [t]hat the goods or services of the parties are both found on the Internet proves little, if anything, about the likelihood that consumers will confuse similar marks used on such goods or services,” diverging from many decisions holding the opposite. Following the preliminary injunction ruling, the case recently settled without further litigation on terms favorable to True & Co. True Fit Corp. v. True & Co., No. 12-cv-11006 (D. Mass. March 4, 2013).

We represented youth fashion retailer American Eagle Outfitters (AEO) in a trademark infringement and unfair competition matter. We filed suit in 2010 on behalf of AEO against a number of defendants who opened retail stores under the name AMERICAN EAGLE FURNITURE. The defendants asserted that there was no likelihood of confusion due to the obvious differences in the parties’ goods, customers and price points. Not only had AEO previously sold a variety of home furnishings, but we were also able to collect more than 100 instances of actual confusion. In December 2013, the court ruled in our favor on virtually every likelihood-of-confusion factor and every issue. It found that the defendants had infringed AEO’s mark; it cancelled defendants’ registration; and it rejected their defenses. The court further offered a number of findings that will prove helpful to AEO beyond this case—such as there is “evidence amply supporting the strength and fame of AE Outfitters’ mark.” Am. Eagle Outfitters, Inc. v. Am. Eagle Furniture, Inc., 11 C 02242, 2013 WL6839815 (N.D. Ill. Dec. 27, 2013).

Defended widow of artist Patrick Nagel in copyright infringement trial brought by publisher of Playboy magazine and succeeded in establishing her copyright ownership of a majority of the commercially valuable works in dispute. Playboy Enterprises v. Dumas, 831 F. Supp. 295 (S.D.N.Y. 1993), modified on reh'g, 840 F. Supp. 256 (S.D.N.Y. 1993), remanded, 53 F.3d 549, (2d Cir. N.Y. 1995), cert. denied, 516 U.S. 1010, (1995), on remand, 960 F. Supp. 710 (S.D.N.Y. 1997), aff'd, 1998 U.S. App. LEXIS 15225 (2d Cir. N.Y. June 8, 1998).

Obtained ruling effectively reversing UDRP decision by National Arbitration Forum that GMCI, publisher of Penthouse magazine, had engaged in reverse domain name highjacking in seeking transfer of domain name penthouseboutique.com to GMCI. General Media Communications, Inc. v. Heu, 2007 WL 102988 (S.D.N.Y. 2007).

Obtained an ex parte seizure order and preliminary injunction resulting in the seizure of counterfeit Lacoste merchandise in raids conducted at 21 locations across Puerto Rico during the Christmas shopping season. Lacoste Alligator S.A. v. Sugar Shack Inc., No. 04-2367 (D.P.R. filed Dec. 13, 2004).

Obtained summary adjudication and an award of attorneys' fees and costs for Sears and Circle of Beauty in an unfair competition case involving the parties' competing claims of ownership of the mark in TIME OUT for bath and body products. Moss et al., v. Grypyon Dev., Inc., et al., No. 8:00-347 (C.D. Cal. filed Apr. 10, 2000).

Established PepsiCo's ownership of world famous STOLICHNAYA mark for vodka following dissolution of former U.S.S.R. and obtained preliminary injunction against infringer. Financial Matters v. PepsiCo, Inc., 92 Civ. 7497 (RO), 1993 U.S. Dist. LEXIS 13294; 1994 Trade Cas. (CCH) P70521 (S.D.N.Y. Sept. 23, 1993).

Defeated motion for a preliminary injunction in trademark infringement action against Jennifer Lopez and Coty Inc. based on alleged likelihood of reverse confusion between plaintiff's GLOW mark and defendants' GLOW BY J LO mark. Glow Indus., Inc. v. Jennifer Lopez, Coty Inc., et. al., 252 F. Supp. 2d 962 (C.D. Cal. 2002).

Defeated motion for temporary restraining order and forced plaintiff to withdraw preliminary injunction motion and pay our clients’ associated attorneys’ fees in case claiming copyright, trademark and design patent infringement in connection with plaintiff’s PED EGG foot file.

We then succeeded in obtaining a ruling dismissing four of the six counts of the amended complaint. The case settled on favorable terms in late 2011. Telebrands Corp. v. Del Labs. Inc., 814 F. Supp. 2d 286 (S.D.N.Y. 2011).

The firm represented Joh. A. Benckiser (Benckiser) and Coty, Inc. (Coty) in a breach of trademark license agreement for Stetson fragrance products. Stetson sought a declaratory judgment that it had the right to terminate the license, along with unspecified monetary damages, on the ground, among others, that Benckiser and Coty failed to commercialize Stetson fragrance in every country and jurisdiction of the world. The firm successfully moved the N.Y. Supreme Court, Commercial Division, to dismiss Stetson's primary claim concerning the obligation to commercialize world-wide, and then defeated Stetson's appeal to and motion for reargument in the Appellate Division, First Department. John B. Stetson Co. v. Joh. A. Benckiser GmbH, 81 A.D.3d 559, 917 N.Y.S.2d 189 (1st Dep't 2011), rearg. denied Ind. No. 600074/10, slip op. at 1 (1st Dep't June 14, 2011).

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Education

Columbia Law School, J.D. (1980) Harlan Fiske Stone Scholar, ASCAP Nathan Burton Award, Columbia Human Rights Law Review Associate Editor

Yale University, B.A. (1977) summa cum laude, Phi Beta Kappa, distinction in the English Major

Admissions

New York

Court Admissions

U.S. Supreme Court

U.S. Court of Appeals for the Second, Ninth and Eleventh Circuits

U.S. Court of Appeals for the Federal Circuit

U.S. District Court for the Southern District of New York

U.S. District Court for the Eastern District of New York

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Professional & Community Activities

Association of the Bar of the City of New York, Citibar Women in the Profession Committee

Copyright Society of the U.S.A., Member

International Anti-Counterfeiting Coalition (IACC), Customs Committee

International Trademark Association (INTA), Trademark Mediators Network

Marques, Chair, Outer Borders of Trademarks Committee

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