Joshua Wolkoff

Practice Areas

Josh focuses his practice on copyright, trademark, right of publicity and licensing disputes, as well as brand protection and enforcement matters. He represents clients in state and federal courts throughout the country and in opposition and cancellation proceedings before the Trademark Trial and Appeal Board. In addition, Josh frequently advises on intellectual property issues in the context of corporate transactions, trademark prosecution, portfolio management, and intermediary liability on behalf of online platforms, brands and content owners.

Professional Memberships

Copyright Society of the U.S.A.

International Trademark Association (INTA), Young Practitioners Committee (2015-2019)

New York City Bar Association, Trademark and Unfair Competition Committee (2014-2016)

Media Law Resource Center (MLRC), Copyright & Trademark Committee (2014-2015)

New York City Bar Association, Entertainment Law Committee (2011-2014)

Publications

• Co-author, ""International Copyright Law: A Practical Global Guide,"" Chapter on United States, published by Globe Law & Business, 2021 (forthcoming)

• Author, US Supreme Court Clarifies Test for Copyright ability of Designs of ""Useful Articles,"" Client/Legal Alert, 24 March 2017

• Author, Significant Changes to TTAB Rules Take Effect, Client/Legal Alert, 26 January 2017

• Author, United States - Federal Appellate Court Strikes Down Ban on Disparaging Trademarks as Unconstitutional, Client/Legal Alert, 7 January 2015

• Author, ""DMCA Takedown Notices Require Fair Use Considerations,"" Digital Media Licensing Association's Blog, 30 September 2015

• Author, ""Ninth Circuit Finds Use of Street Art in Green Day Concert Video a Fair Use,"" Picture Archive Counsel of America's Blog, 9 September 2013

• Contributor, United States District Court for the Southern District of New York: A Retrospective 2000-2010, Section on Intellectual Property for the NCYLA Federal Courts Committee, May 2012

• Author, ""Third Circuit Rules Cropping Photo Credits Violates the DMCA,"" MLRC Media Law Letter, June 2011

• Author, ""Transcending Cultural Nationalist and Internationalist Tendencies: The Case for Mutually Beneficial Repatriation Agreements,"" 11 Cardozo J. Conflict Res. 709, 2010

• Co-author, ""United States: Power of the purse - Hermès prevails in NFT trademark trial,” 20 February 2023

Work Highlights

• Representing information technology company in action for copyright infringement and DMCA violations against competitor arising from allegations of unauthorized use of copyrighted maps.

• Advising online platforms and social media networks on DMCA notice and takedown compliance, policies and procedures and related intermediary liability issues.

• Secured early dismissal of copyright infringement claim filed against online intermediary and service provider of web design, content hosting and CRM technologies in the Central District of California arising from allegedly infringing user generated content on platform's servers.

• Secured permanent injunction on behalf of global food and beverage company in copyright and trademark infringement action against a declaratory judgment plaintiff who initially sued for non-infringement and abandonment.

• Obtained first impression ruling concerning a defendant's standing to invalidate a copyright in the absence of an affirmative claim for infringement by the plaintiff.

• Won summary judgment dismissing four trademark infringement claims and prevailing on affirmative breach of contract claim in technology transfer dispute.

• Successfully defended claims of copyright infringement brought by photographer against luxury fashion house, as a result of advertising campaign.

Expert in these Jurisdictions

USA

Languages Spoken

English

Industry Sector Expertise

Brand Enforcement

Brand Management

Copyright

Digital Media & Content

Intellectual Property

Interactive Entertainment

IP Disputes

Education