Barbara Solomon

Practice Areas

Transactions

Copyright

Litigation

Publicity & Privacy

Social Media & Domain Names

Trademark

Career

Barbara A. Solomon works with iconic brands across diverse industries to protect and enforce their valuable IP assets. Her pragmatic and business-focused approach, coupled with a clear understanding of her clients’ business and their ultimate goal, is what keeps clients coming back – they appreciate her deft ability to achieve desired results through strategic negotiation. When litigation is necessary, clients know that Barbara has achieved many successes in trial and appellate courts across the country, in opposition and cancellation proceedings before the USTPTO’s Trademark Trial and Appeal Board, and in UDRP cases.

With clients in industries ranging from luxury goods, beauty, and fashion to entertainment, consumer products, and financial services, Barbara has deep experience in issues relating to trademarks, trade dress, copyright, false advertising, unfair competition, rights of privacy, rights of publicity, parody, counterfeiting, and the internet. In addition to advising on searches for trademark clearance and registration, she also negotiates and drafts agreements, including co-existence agreements, assignments, distribution agreements, licenses, and representation agreements.

Professional Memberships

The Association of the Bar of the City of New York (Secretary, 1990-1992; Committee on Copyright and Literary Property)

World Intellectual Property Organization (WIPO) (panelist for cases brought under the UDRP)

Brooklyn Law School (Adjunct Professor, trademark law) 2004

Work Highlights

MacDonald et al v. WGBH Educational Foundation, 1:18-cv-10773 (D. Mass.). Representing WGBH, PBS Distribution and The Taunton Press Inc. in a trademark infringement and preliminary injunction action over the title of a television series.

Big Storm Brewery, LLC v. Due South Brewing Co. Inc., 8:16-cv-02405 (M.D. Fla.). Represented local brewery in declaratory judgment action concerning beer names.

Tiffany Inc. v. eBay, Inc., 131 S. Ct. 647 (2010). Submitted amicus brief in support of Tiffany for its appeal to the Supreme Court seeking to hold eBay responsible for its alleged direct and contributory trademark infringement, trademark dilution, and false advertising since it facilitated and advertised counterfeit jewelry on its online market.

Viacom Int'l Inc. v. Fanzine, Inc., 98 Civ. 7448 (S.D.N.Y. 2000). In a copyright case of first impression, the court held that Viacom's distribution of publicity materials featuring its television characters did not allow a recipient under the guise of media coverage or a fair use defense to commercially reproduce these materials as posters that were folded up to look like a magazine without the authorization of the copyright owner.

MTV Networks, a division of Viacom International Inc. v. Adam Curry (S.D.N.Y. 1994). This was the first case ever filed alleging that a domain name infringed on a trademark and that sought to apply Lanham Act principals to the registration and use of a domain name.

• Acted as trademark counsel in several high profile corporate transactions conducting due diligence and drafting and negotiating applicable agreements, including licenses.

• Negotiate license and distribution agreements in cosmetics, beauty, fashion, luxury goods, and consumer product areas.

Education

Awards