Johanna Schmitt - Partner

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Johanna Schmitt

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New York
Phone: +1 212-446-4841
Fax: +1 212-446-6460
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Professional Profile

Johanna Schmitt is an intellectual property partner in Kirkland’s New York office. Her practice focuses on intellectual property law, specifically copyright, trademark, trade dress, domain name, false advertising, licensing and contract issues. She counsels clients regarding the acquisition and retention of intellectual property rights (including Internet issues) and also litigates disputes related to such rights. She has extensive experience with managing trademark portfolios, trademark prosecution and proceedings before the U.S. Patent and Trademark Office. In 2013, Johanna was recognized in the category of Trademarks: Litigation in The Legal 500 U.S. She has served on multiple INTA committees, including most recently on the committee for non-traditional marks.


Representative Matters

  • Successfully represented AT&T in trademark infringement lawsuit brought by Citigroup related to loyalty program. After defeating a motion for preliminary injunction, Citigroup voluntarily dismissed its complaint with prejudice.

  • Successfully represented Virgin Cruises in high profile trade secret lawsuit seeking damages of $300 million. After completion of discovery and filing of summary judgment briefs, case settled on confidential terms.

  • Representing Converse in an ITC proceeding, including at trial, seeking to bar a group of defendants from importing into the United States footwear that infringes and dilutes Converse’s famous midsole trade dress for its Chuck Taylor All Star shoes.

  • Representing Facebook and its affiliates in multiple trademark matters involving its businesses, including successfully defending Oculus VR, a virtual reality technology company, against a software company that alleged infringement of its “Oculus” marks.

  • Representing SH Group in connection with enforcement of its 1 HOTEL and BACCARAT hotel brands, including successfully overturning an adverse TTAB decision in district court.

  • Won summary judgment for Tetris Holding, LLC and The Tetris Company, LLC in a copyright and trade dress case filed against Xio Interactive, Inc., a start-up company that had released a knock-off Tetris game for the iPhone called Mino. After Xio contested Tetris’ Digital Millennium Copyright Act (DMCA) take-down notice, Tetris sued Xio for infringing its copyrights and trade dress rights in the visual expression and “look and feel” of its Tetris game. The case involved novel and complex issues of copyright and trade dress law — namely, what constitutes the protectable visual expression of a video game, as opposed to unprotectable “rules” and functional elements.

  • Currently representing Fox News Network in a copyright infringement and hot news misappropriation suit against TVEyes, which describes itself as a “media monitoring company” that “delivers real-time TV and radio content on an international platform for a flat fee.”

  • Successfully defended patent law firm against scientific publishers alleging that law firm infringed copyrights by making copies of journal articles as part of disclosure to U.S. Patent and Trademark Office in patent prosecution.

  • Successfully defended Hill’s Pet Nutrition, Inc. (a subsidiary of Colgate-Palmolive Company) in a trademark infringement suit regarding its IDEAL BALANCE pet food.

  • Represented Golub Corporation (owner of PriceChopper supermarket chain) in lawsuit, asserting claims of breach of contract and fraud in the inducement against licensor of warehouse procurement software.

  • Currently representing J.K. Rowling in copyright and trademark matters regarding the “Harry Potter” books.

  • Successfully defended Victoria’s Secret in a trademark infringement claim regarding its new VS FANTASIES collection of personal care products.

  • Successfully defended Victoria’s Secret in a copyright infringement suit regarding its DESIRE advertising, including winning motion to dismiss copyright infringement claims based on lack of substantial similarity.

  • Represented Colgate-Palmolive Company in trademark litigations involving its famous TOTAL brand for oral care products against Johnson & Johnson and Chattem, distributors of Total Care-branded mouthwash.

  • Represented Honeywell in class actions premised on fraud on the trademark office involving the famous Honeywell Round trademark for thermostats.

  • Successfully obtained temporary restraining order on behalf of Trader Joe’s barring Gristede’s supermarket chain from opening a new store in New York City under the name “Gristede’s Trader John’s”; the case settled on favorable terms shortly thereafter.

  • Represented Vitale AML Consultants, Inc. as plaintiff in a multi-defendant case involving the alleged copyright infringement and theft of trade secrets relating to software used to monitor bank transactions for fraud and abuse.

  • Defended a social networking website, MySpace, Inc., and its parent, News Corporation, in high-profile copyright infringement lawsuit brought by UMG Recordings, Inc.

  • Successfully defended Victoria’s Secret Stores Brand Management in its suit against Intertext Apparel and Macy’s Inc. seeking injunctive relief and damages based on infringement of its PINKISH brand.

  • Successfully defended Fox News Network’s famous “Fair & Balanced” trademark in cancellation proceeding before Trademark Trial and Appeal Board.

  • Successfully represented publisher of New York Post daily newspaper to protect its famous “Page Six” trademarks against trademark infringer and cybersquatter.

  • Successfully defended video game developer Electronic Arts (EA) in copyright infringement case brought by EMI.

  • Successfully represented Twentieth Century Fox in a high-profile copyright, false advertising, and breach of contract lawsuit against Marvel Comics, Tribune, and Fireworks concerning the movie X-Men and television show Mutant X.

  • Won summary judgment in a high-profile copyright and trademark action that accused J.K. Rowling, the author of the Harry Potter books, of plagiarism; as well as $50,000 in sanctions and an award of attorney fees because of claimants’ fabricated evidence.

  • Represented the Recording Industry Association of America in an action under the Digital Millennium Copyright Act to enjoin access to an infringing Web site.


Memberships & Affiliations

International Trademark Association, Member of the Non-Traditional Marks Committee (NTM) (2012–2013)

International Trademark Association, Member of the Trademark Administrators Committee -- Outreach Project Team (2010–2011)

Entertainment Law Committee, New York City Bar Association (Member, 2009–present)

Trademark and Unfair Competition Committee, New York City Bar Association (Secretary 2003–2005; Member 2006–2009)


Other Distinctions

Recognized in The Legal 500 U.S. for Trademarks: Litigation (2013) and Copyright (2015–2016)


Publications

Co-Author, “Recent Developments: Copyright Law, Trademark Law, Right of Publicity and Parallel Imports,” CLE Presentation, December 10, 2003

Co-Author, “Stopping Spam: Federal and International Initiatives,” Internet Law Journal, November 2003

Co-Author, “Recent Developments in IP Law Affecting Media Companies,” CLE Presentation, January 14, 2003


Seminars

INTA Conference Topic Moderator, "When to Use Copyright or Trademark Protection for Fashion Designs and the Like in the United States," May 2009

New York City Bar Association Topic Presenter, "Litigating A Trademark Infringement Dispute," May 2009


Courts

U.S. District Court

Southern District of New York

U.S. Court of Appeals

Third Circuit

Ninth Circuit

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