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“With his wealth of experience in anti-counterfeiting and other trademark issues, Rob Potter and the Kilpatrick team are one of the only firms we trust for our IP enforcement matters. Rob takes the time to get to know our products, business and the issues we face, which are constantly evolving. He is very savvy and has a great sense of what our expectations are for different types of targets. He is a creative problem solver and a great negotiator. While he aggressively pursues our rights, he is cordial and does not engage in unnecessary bluster or grandstanding. We highly value Rob as our trusted counsel.” – World Trademark Review 2023
Rob Potter delivers practical and efficient solutions to complicated issues in trademark/copyright litigation and brand enforcement. He has also become increasingly active in the “metaverse,” providing counseling on enforcement and emerging best practices, and frequently speaking and writing on the topic. In any case, Rob's priority is listening to his clients and learning their industries to develop strategies specific to their business and legal needs.
Rob has achieved successful results for some of the biggest brands and content owners in the world, in sectors including tech, luxury goods and apparel, and entertainment/hospitality.
Rob is particularly experienced in:
- Trademark, counterfeiting, and copyright litigation
- Counseling and enforcement in virtual worlds (the “metaverse”)
- Anti-counterfeiting and gray-market enforcement and strategy
Rob is recognized in Best Lawyers for Intellectual Property Litigation and Copyright Law, in World Trademark Review 1000 – The World's Leading Trademark Professionals, and as a New York “Super Lawyer” for Intellectual Property Litigation by Super Lawyers magazine. Rob is listed in the 2023 edition of Chambers USA: America’s Leading Lawyers for Business in the area of Intellectual Property: Trademark, Copyright & Trade Secrets. He is very active in the Copyright Society, for which he currently serves as a Trustee, and other professional IP organizations. Rob is also committed to pro bono work, and in 2014 was named Volunteer of the Year by the Pro Bono Partnership of Atlanta for his successful representation of Positive Impact, an Atlanta-based non-profit gay men’s health organization, in federal trademark litigation in New York.
In his free time, Rob loves music of all types—playing, listening, discussing, seeing live—and spending time with his family.
Obtained judgement against seller of "our version of" fragrances following trial. On behalf of Coty, along with its licensors Calvin Klein, Vera Wang, and Lady Gaga, we filed this trademark infringement, unfair competition, false advertising and dilution case against Excell Brands, LLC, a manufacturer of so-called “alternative fragrances” marketed as “versions” of genuine Coty fragrances. Following a bench trial, the Court found Excell liable on each of Plaintiffs’ claims and awarded Plaintiffs both permanent injunctive relief and Excell’s gross revenue, totaling more than $6.5 million. The court’s decision includes numerous findings and conclusions that help to clarify and advance the law in this area, and provides brand owners with new ammunition to rein in the alternative fragrance and similar parasitic industries going forward. Coty Inc. v. Excell Brands, LLC, 277 F. Supp. 3d 425 (S.D.N.Y. 2017) (Sept. 18, 2017).
Represents a California-based Fortune 500 multinational corporation that designs and manufactures consumer electronics and computer software products in trademark enforcement work, including lead counsel representation of client in multiple proceedings before the Trademark Trial and Appeal Board.
Successfully represented L'Oréal USA, Inc. in various anti-counterfeiting litigations, including obtaining a judgment for more than $600,000 in L'Oréal USA, Inc. v. Maggy Tsui, et al., 2:16-cv-08673-FMO-FFM (C.D. Cal.).
Represents S'well Bottle in multiple trademark actions in federal court or before the Trademark Trial and Appeal Board, including S'well Bottle v. Closeout Surplus & Salvage, Inc. et al., 2:18-cv-14606-ES-SCM (D.N.J.).
Represents MomoIP, owner of all intellectual property for David Chang's Momofuku restaurant group, in various intellectual property enforcement matters, including before the Trademark Trial and Appeal Board.
Represents adidas America, Inc. in various trademark litigation in the Southern and Eastern Districts of New York.
Obtained a $500,000 consent judgment and permanent injunction against C Lenu, Inc. and its principals. C Lenu operated a decoding facility that used tools, chemicals and other methods to remove codes and other quality-control and anti-counterfeiting measures from DAVIDOFF, CALVIN KLEIN and other Coty fragrance products. Under the injunction, C Lenu, as well as its customers and suppliers, are prohibited from trafficking in infringing Coty fragrances of any kind, including decoded Coty fragrances. Coty Inc., et al. v. C Lenu, Inc., et al., No. 10-21812 (S.D. Fla. filed June 3, 2010).
Represented Sony Pictures Entertainment Inc., actor/writer Adam Sandler and writer Judd Apatow, et al., in a copyright, trademark and unfair competition suit in federal court in New York. The firm successfully obtained summary judgment of copyright and trademark rights on behalf of Sony Pictures Entertainment Inc., rejecting claims of film and advertising infringements and lighting the way for the movie You Don’t Mess With The Zohan. The Court of Appeals for the Second Circuit affirmed the district court's grant of summary judgment to our client. Cabell v. Sony Pictures Entm’t, Inc., 714 F. Supp. 2d 452 (S.D.N.Y. 2010), aff’d, No. 10-2690-CV, 2011 U.S. App. LEXIS 13057 (2d Cir. June 24, 2011).
Successfully represented the heirs of Jaco Pastorius, the celebrated electric bass guitarist, in obtaining the return of the well-known "Bass of Doom" bass guitar twenty years after it was stolen from Jaco Pastorius.
Obtained a $6 million dollar default judgment and permanent injunction against online counterfeiters. Defendants operated a ring of at least 32 websites, many of which prominently featured counterfeits of the federally registered GED® marks, through which they offered sham diplomas from fictitious high schools to consumers throughout the U.S. The defendants’ scam was highly sophisticated and included a bogus Wikipedia entry, promotional YouTube videos, Facebook community pages, and a fraudulent entity that purported to accredit their services. The Court awarded plaintiffs $6 million dollars in damages arising out of defendants’ willful acts of trademark infringement, trademark counterfeiting, and unfair competition and, among other things, ordered that all of the domain names at issue be permanently transferred to plaintiffs, regardless of whether they included the GED® marks. This result was made possible by the extraordinary ex parte injunctive relief plaintiffs’ obtained at the outset, in which the Court allowed plaintiffs to obtain information about defendants’ true identities and to freeze defendants’ financial assets, even prior to serving plaintiffs’ complaint. GED Testing Service LLC et al. v. Amjad Pervaiz et al., 12 Civ. 1157 (JPO) (S.D.N.Y.).
Obtained summary judgment victory for Arista Records and recording artist Outkast against claims for joint authorship and copyright infringement.
Represented The National Academy of the Recording Arts & Sciences, the organization which administers the prestigious GRAMMY award ceremony, in connection with efforts to halt Christie's auction of the GRAMMY awarded to James Brown, the "Godfather of Soul," in 1986 for the song "Living In America." Christie's refused to heed the firm’s demand that it call off the auction, asserting that there were no enforceable restrictions on the sale of the statuette. The firm responded by promptly commencing a lawsuit in New York state court. Faced with the cloud on title resulting from the lawsuit, Christie's ultimately pulled the GRAMMY award from the auction literally minutes before the bidding on the award was set to begin. Christie's subsequently confirmed that it has returned the statuette with no plans to auction it in the future.
Represented Clif Bar in a trade dress case brought by Kind. Kind filed suit and moved for an expedited preliminary injunction to prevent client Clif Bar from launching its new premium CLIF MOJO healthy snack bars in see-through packaging that allegedly infringed Kind’s trade dress. Less than a week after the five-day hearing concluded, Judge Kimba Wood issued a 25-page written opinion denying Kind’s motion in full. The judge found that Kind’s alleged trade dress was not distinctive (and thus not protectable), that there was no likelihood of consumer confusion between the parties’ packaging, and that Kind had not demonstrated irreparable injury or a balance of hardships tipping in its favor. Kind has taken an appeal to the Second Circuit. Kind, LLC v. Clif Bar & Co., 2014 WL 2619817 (S.D.N.Y. June 12, 2014)
Served as IP counsel in a case in the Delaware Chancery Court. Represented fashion design house, Tory Burch, LLC which brought claims against a former director alleging that its former director competed unfairly against the company by launching a knockoff version of the “Tory Burch” brand created with the company’s confidential information and in violation of his fiduciary duties and contractual obligations. Negotiated the settlement agreement which resolved the case. J. Christopher Burch v. Tory Burch LLC, et al., No. 7921-CS (Del. Ch., Nov. 5, 2012).
Represented Hachette Filipacchi Media US Inc., a leading publisher of fashion magazines, in connection with lawsuit arising from termination of license agreement in New York.
Served as lead counsel in representing musician Aliza Hava for copyright infringement and related claims against defendant website asserting ownership over Ms. Hava’s copyrighted recordings and compositions. Obtained favorable settlement agreement including declaration of Ms. Hava’s full ownership in relevant songs.
Represented bar/restaurant owner in connection with numerous trademark and right of publicity issues, along with copyright analysis with regard to publicity and promotion.
Successfully represented Bank of America in a trademark and dilution action involving the use of the name Banc America Auto Sales for a reseller of cars on the Internet and in a brick and mortar business in Florida.
Obtained a temporary restraining order thwarting the misuse of the client's trademark by a loan services company seeking to enter into loan transactions with, inter alia, a world-famous boxing champion.
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University of Pennsylvania Law School J.D. (2005) cum laude
Florida State University B.A. (1997) Communication, summa cum laude
U.S. Court of Appeals for the Second Circuit
U.S. District Court for the Eastern District of Michigan
U.S. District Court for the Eastern District of New York
U.S. District Court for the Southern District of New York
International AntiCounterfeiting Coalition
New York State Bar Association, Intellectual Property Law Section
Bronx School of Law & Finance, Advisory Board
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