Claudia Ray

Representative Adversarial Matters

Copyrights

• Representing a client in a copyright rate-setting proceeding before the Library of Congress’ Copyright Royalty Board relating to online music distribution.
• Represented client in several suits alleging copyright infringement based on its distribution and sale of allegedly infringing sound recordings and related works created by co-defendants.
• Obtained dismissal of putative class action alleging that client failed to pay royalties for the use of pre-1972 sound recordings.
• Represented Toys ‘R’ Us in its Chapter 11 proceeding in connection with dispute regarding ownership of, and alleged license to use, custom software for enterprise-wide management functions.
• Advised international apparel brand on claim that its marketing campaign infringed artist’s copyrighted work.
• Obtained a permanent injunction on behalf of J.K. Rowling, author of the “Harry Potter” novels, following a highly publicized trial in the Southern District of New York involving claims of copyright infringement against the publisher of a proposed unauthorized “lexicon,” who argued that its book was a “fair use.”
• Defended 8 Legged Productions, the producer of the Broadway musical Spider-Man: Turn Off the Dark, against copyright infringement, breach of contract, and related claims brought by the show’s former director, Julie Taymor.
• Obtained summary judgment on behalf of J.K. Rowling and Warner Bros. dismissing claims that the “Harry Potter” books and films infringed the plaintiff’s alleged trademarks and copyrights in her books, as well as sanctions against the plaintiff for submitting falsified documents.
• Obtained pre-discovery dismissal of all claims on behalf of Scholastic Inc. in a copyright infringement suit claiming that J.K. Rowling’s fourth Harry Potter book, Harry Potter and the Goblet of Fire, was copied from “The Adventures of Willy the Wizard: No.1 Livid Land,” a 16-page book written by Adrian Jacobs in 1987. The court concluded, on a motion to dismiss, that the two works were not substantially similar. Jacobs’ estate had sought profits from the sale of Goblet in the United States.
• Represented a client in a copyright rate-setting proceeding brought by performing rights organization.
• Represented Rain Corp., the creator of “Rain: A Tribute to the Beatles,” in a copyright infringement and breach of contract suit against the producers of the show’s London and New York productions.
• Advised Crye Precision regarding copyright and trademark issues in connection with its dispute with the U.S. Army relating to Crye’s camouflage textile designs.
• Obtained dismissal of a copyright infringement suit alleging that IBM infringed the plaintiff’s copyrighted printer software by using and selling software following termination of a license agreement.
• Represented The Associated Press in a declaratory judgment suit brought by Shepard Fairey, in which the AP asserted copyright infringement claims, among others, arising out of Mr. Fairey’s unauthorized use of the AP’s photo of President Barack Obama to make the Obama “Hope” image used on posters and related commercial merchandise, including t-shirts, sweatshirts and tote bags, during the 2008 presidential campaign. As a result of the AP’s discovery efforts, Fairey was eventually forced to admit attempting to destroy documents, and fabricating other documents, in an effort to conceal the true source photo for the “Hope” poster image, leading to a criminal investigation by the U.S. Attorney’s Office. Fairey and the AP later settled their respective claims, agreeing to share the rights to make posters and merchandise using the “Obama Hope” image, to collaborate on a series of images based on AP photos, and to undisclosed financial terms. After the AP won summary judgment dismissing the fair use defense asserted by Obey Clothing, Fairey’s exclusive licensee for apparel using the “Hope” image, the AP and Obey Clothing resolved their claims on the eve of trial, agreeing to collaborate to make and sell apparel using Shepard Fairey graphics based on AP photographs as well as to confidential financial terms.
• Defended Victoria’s Secret in copyright litigation brought by Malibu Textiles, alleging infringement of a copyrighted lace textile design.
• Represented the New York Post in a dispute with a German film director and several of his affiliated entities, including his U.S. distributor, arising out of the director’s unauthorized use of the Post’s distinctive “Page Six” Web page design for a website promoting the director’s new film.
• Represented Time Inc. in policing its rights in certain celebrity baby photos against leaks by unauthorized publishers.
• Obtained favorable resolution of action brought by a clothing manufacturer against Crosstown Traders Inc., a catalog clothing company, alleging copyright and trademark infringement claims, after securing dismissal of co-defendant JP Morgan Partners.

Trademarks, Unfair Competition

• Representing Delta Air Lines in litigation involving claims that Marriott’s Delta Hotels chain infringes Delta’s trademark rights in its famous DELTA mark. 
• Defending Delta Air Lines against claims by American Airlines alleging infringement of American’s FLAGSHIP trademark.
• Representing Converse in an ITC trademark case seeking to bar a group of defendants from importing into the United States footwear that infringes and dilutes Converse’s famous mid-sole trademark for its Chuck Taylor All-Star shoes.
• Defended BB&T and Sun Trust Bank, which merged to create Truist Bank, against motion by Truliant Federal Credit Union to enjoin prevent the merged entity from using its name.
• Defending a client against federal trademark infringement and dilution claims in a federal litigation and related ITC proceeding relating to consumer electronic products.
• Defending Lucky Brand Dungarees, Inc. against claims that it infringed Marcel Fashion Group’s alleged trademark rights in the term “Lucky” and related marks.
• Defended Colson Group Holdings against claims that its sale of orange caster wheels infringed competitor Caster Connection Inc.’s alleged trademark in the color orange for wheels. Settled on favorable terms after defeating Caster Connection’s motion for preliminary injunction and motion to dismiss Colson’s counterclaim for cancellation of Caster Connection’s trademark registration.
• Defeated StarCycle’s motion for preliminary injunction against CycleBar in the latter’s appeal from ruling by Trademark Trial and Appeal Board.
• Represented Drybar Holdings in trademark infringement action against PetSmart, alleging that its Barbar line of pet grooming products infringed Drybar’s trademarks and trade dress. 
• Represented Alight Solutions in declaratory judgment action against Alight, Inc. and defended against Alight, Inc.’s motion for a preliminary injunction.
• Defended Droga5, LLC in federal and state court litigation involving trademark infringement, unfair competition, and other claims arising out of the “How Matters” advertising campaign that Droga5 created for co-defendant Chobani, LLC’s Greek Yogurt products.
• Represented ManpowerGroup in trademark litigation arising out of the unauthorized use of its 70-year-old MANPOWER mark for similar employment staffing services.
• Obtained pre-discovery summary judgment dismissing trademark infringement claims against Manpower Group and Right Management brought by Humanly Possible, Inc. Plaintiff had alleged that advertisements for their services using the descriptive tag line “is humanly possible” infringed its HUMANLY POSSIBLE mark. After denying plaintiff’s motion for a preliminary injunction, the Court denied plaintiff’s motion for summary judgment and granted the cross-motion of Manpower and Right Management, finding that there was no likelihood of confusion and dismissing the action.
• Defended DIRECTV in a trademark infringement suit arising out of its use of a pine tree-shaped air freshener in a promotional campaign.
• Represented Travelers Indemnity Company in federal lawsuit against Legal & General Group PLC and its affiliates, in which Travelers asserted that L&G’s use of its multi-colored umbrella logo infringed Traveler’s rights in its famous red umbrella logo and L&G asserted various contractual defenses.
• Represented Star Television Network and DIRECTV in a trademark dispute with Starz! Encore that cleared the way for Star to launch its Asian television programming in the United States.
• Successfully pursued trademark and copyright infringement claims on behalf of Time Warner Entertainment Company, L.P. against manufacturers and book publishers for violations of its rights in connection with the “Harry Potter” film series.
• Obtained judgment in favor of the Martha Graham Center of Contemporary Dance and Martha Graham School of Contemporary Dance following expedited discovery and trial, dismissing trademark infringement and conversion claims asserted by Graham’s sole heir that had threatened to shut down both the Center and the School.
• Defended The TJX Companies, Inc. against trademark claims brought by Burberry Limited, which alleged that TJX sold merchandise bearing a confusingly similar plaid design.
• Obtained preliminary injunction for Le Tigre LLC in a breach of contract and trademark infringement suit against the exclusive licensee for its LE TIGRE-brand apparel and accessories, after monitoring pursuant to temporary restraining order revealed that licensee was violating distribution restrictions under license agreement.
• Represented Mastro’s Restaurants in a federal lawsuit against The Dominic Group and various affiliated entities and individuals, alleging trademark infringement, breach of contract and related claims arising out of the 2007 acquisition of the Mastro’s Steakhouse business.
• Obtained preliminary injunction on behalf of Trader Joe’s barring the Gristede’s supermarket chain from proceeding with its planned opening of a new store under the name “Trader John’s” and using trade dress that copied the distinctive Trader Joes’ style.
• Defeated motion for preliminary injunction against Time Inc. in trademark infringement suit brought by O-Cedar, alleging that Time Inc.’s use of the tag line “Life Made Easier” for its “Real Simple” line of line of household cleaning tools infringed O-Cedar’s “Makes Your Life Easier” tag line for its cleaning tools.
• Defended E. & J. Gallo Winery against false advertising claims asserted by Heublein, Inc. in connection with its margarita-flavored BARTLES & JAYMES-brand wine coolers.

Trade Secrets, Unfair Competition and Related Claims

• Representing Medidata Solutions, Inc. in litigation against Veeva Systems, Inc. arising out of Veeva’s misappropriation of trade secrets relating to Medidata’s SaaS products for clinical drug trials.
• Representing Kraft Heinz in international arbitration involving claims for declaratory judgment, breach of contract, theft of trade secrets and unfair competition arising out of agreements relating to the Capri Sun brand of packaged beverages.
• Represented Colson Group Holdings against competitor Blickle U.S.A. in connection with claims arising out of the unauthorized use of Colson’s intellectual property assets and confidential information, as well as defending against Blickle U.S.A.’s claims of tortious interference with its business relationships.
• Represented TechForward in a federal lawsuit against Best Buy Co., alleging theft of trade secrets, including confidential data compilations, and breach of confidentiality and non-disclosure agreements in connection with product buyback plan that TechForward developed for Best Buy. Jury returned verdict in favor of TechForward, finding that Best Buy had misappropriated TechForward’s trade secrets in violation of the parties’ written agreements.
• Advised national retailer regarding tortious interference and unfair competition claims arising out of its e-commerce business.
• Advised major financial services company regarding potential trade secret misappropriation claims against competitor that obtained confidential information in violation of contractual obligations between financial services company and its customers
• Represented Vitale AML Consultants, Inc., in its suit against a former employee and his new employer for copyright infringement and theft of trade secrets based on defendants’ misappropriation of Vitale’s software for use in anti-money laundering monitoring.
• Represented ACE, Westchester Fire Ins. Co. and their affiliates in federal court proceeding against Wachovia and its affiliates, seeking injunction in aid of ad hoc arbitration involving claims for breach of contract, breach of fiduciary duty, tortious interference, misappropriation of trade secrets, and false advertising where competitor insurance company induced exclusive agent to breach its contractual and fiduciary obligations.
• Obtained and enforced award in favor of Westchester Fire Ins. Co. and its affiliates in ad hoc arbitration against a former managing general agent, involving claims for breach of contract and misappropriation of confidential data compilations.
• Assisted Lionel LLC in securing the reversal of a $40 million adverse judgment on trade secret claims that threatened it with bankruptcy, including representing the company in the related bankruptcy proceeding.
• Represented pharmaceutical company executive in action brought by his former employer, alleging breach of employment agreement, breach of fiduciary duty, tortious interference with contract, and unjust enrichment.
• Represented Catholic Health Services in connection with unfair competition and false advertising claims against North Shore Hospital and its affiliates.
• Obtained awards in favor of Marriott International in parallel ICC and ad hoc arbitrations in Panama arising out of Marriott’s construction of a hotel in Panama City, involving breach of contract and related issues under Bermuda, Panama and U.S. law.
• Obtained summary judgment in favor of Sony Music Entertainment and a Sony Music executive, dismissing claims for slander and tortious interference with contract and prospective economic advantage.
• Defended Time Warner Entertainment Company, L.P. in litigation and an AAA arbitration brought by overseas franchisees of its retail stores alleging breach of contract, breach of fiduciary duty, and related business tort claims.
• Defended Avant! against trade secret misappropriation and copyright infringement claims by Cadence, arising out of theft by former Cadence employees of trade secrets, confidential information and copyrighted materials that Avant! then used in its competing business.
• Defended Grundy Television in an AAA arbitration involving the worldwide contractual distribution and production rights to various copyrighted television game show formats.
• Defended 8 Legged Productions, the producer of the Broadway musical Spider-Man: Turn Off the Dark, in an arbitration involving breach of contract and related claims brought by the show’s former director, Julie Taymor.
• Represented Telecom Italia in ICC arbitration of shareholder claims with respect to South American joint venture, involving breach of contract and related issues arising under Brazilian law.
• Represented The Upper Deck Company in a federal suit brought by its licensor, a European toy company, involving claims of breach of contract and trademark infringement and counterclaims of breach of contract and fraudulent inducement.
• Represented various record companies in suit brought by recording artists alleging claims for breach of fiduciary duty, accounting, RICO violations, and fraud.
• Represented Google and Google Japan in New York State court action against DoubleClick Japan in connection with ICC arbitration involving claims for breach of contract.
• Represented United Cerebral Palsy of New York in New York State court action brought by United Cerebral Palsy Associations, asserting claims for breach of affiliation agreement.
• Represented Telecom Italia in ICC arbitration of investor claims with respect to project in South America, involving claims under Venezuelan law for breach of shareholder agreement.
• Defended Time Warner Entertainment Company, L.P. in AAA arbitration brought by overseas franchisees of the Warner Bros. Studio Stores alleging breach of contract and tort claims arising under franchise agreements.

Representative Transactional and Counseling Matters

• Advising The TJX Companies, Inc. regarding copyright and trademark clearance and strategic trademark registration issues.
• Advising ManpowerGroup Inc. regarding its global trademark prosecution and enforcement strategy.
• Conducting prepublication reviews for media companies, including advising on copyright, trademark, defamation and right of publicity issues.
• Advising New Silk Route on the maintenance and policing of its global trademark portfolio.
• Advising financial services companies on trademark protection strategies.
• Advised client on negotiation of license agreement for Asia joint venture entity.
• Advised client on strategy regarding online sale of counterfeit products.
• Advised Blackstone in its acquisition of SESAC Holdings, a leading music rights organization, from Rizvi Traverse Management.
• Advised on licensing and assignment issues in connection with celebrity’s publicity and intellectual property rights.
• Advised pet food manufacturer on licensing and arbitration issues in connection with celebrity endorsement agreement.
• Advised on licensing issues in connection with joint venture between celebrity and consumer products company.
• Advised major pharmaceutical company on licensing issues in connection with joint venture for development of new product offering.
• Advised executive on copyright and trademark issues in connection with licensing and employment agreements with financial services company.
• Advised London Group, maker of NUVO sparkling liqueur, regarding the maintenance and policing of its global trademark portfolio.
• Advised The Jean Coutu Group (PJC) Inc. on intellectual property matters in connection with its $3.4 billion sale of its Brooks and Eckerd drugstores in the United States to Rite Aid Corporation.
• Advised J.P. Morgan Partners, LLC on intellectual property matters during its acquisition of a significant ownership interest in QCE Holdings, LLC, the parent company of the “Quiznos” restaurant chain.
• Advised Apollo Management and its portfolio company, Hexion Specialty Chemicals, Inc., on intellectual property matters in connection with a $10.6 billion acquisition.
• Advised Apollo Management on intellectual property matters in connection with the $1.2 billion acquisition of Regent Seven Seas Cruises.
• Advised Apollo Global Management on intellectual property matters in connection with its acquisition of all of the outstanding stock of Jacuzzi Brands.
• Advised IAC/InterActive Corp. and its subsidiary Ticketmaster in connection with the acquisition of Insider Pages, Inc.
• Provided trademark advice in connection with the sale of the Betsey Johnson fashion company to Castanea Partners.
• Represented SeamlessWeb on intellectual property issues in connection with its sale to a subsidiary of ARAMARK Corp.