With more than 35 years’ experience handling litigation and counseling matters concerning all aspects of intellectual property, James is co-lead of the firm’s intellectual property practice group, and focuses his practice on patent, trademark, copyright and unfair competition law.

He also handles related advertising, entertainment, publishing, music, computer, internet, domain name and right of publicity issues. His sophisticated approach to counseling intellectual property owners on the scope and validity of their properties has earned him praise from sources such as Managing Intellectual Property, which nominated him as one of the top five intellectual property lawyers in the country and selected his practice group as the best group of its kind in the United States. In 2017, The Legal 500 United States named James as one of the top seven trademark litigators and an elite “leading lawyer,” and in 2019 he was placed in The Legal 500 attorneys Hall of Fame.

Over the course of his career, James has accumulated a client roster that includes the world’s largest retailer, the world’s most well-known investment bank, software companies, hard copy and online publishers, the world’s largest insurance company, the world’s most successful shoe design and distribution conglomerate, the largest company in Africa, the author of the world’s best-selling novel, the most famous environmental and ocean conservation society in the world, the world’s largest advertising company, the world’s largest luxury car manufacturer, well-known hedge funds, one of the world’s largest financial institutions, a Major League Baseball team, the best-selling liquor brand in the country, the largest distributor of vitamins and supplements in the world, as well as manufacturers and distributors of everything from coffee to toys to amusement park rides.

James’ practice spans several areas of the law and he has proven himself an accomplished litigator and transactional lawyer. He has worked on trademark litigations that have defended his clients’ invaluable brands from infringers, and notably, worked on a litigation for AT&T in which the iconic phrases “you have mail” and “instant message/IM” were held generic for the world to use freely.

James handles trademark litigations for his clients, including toy manufacturers, the largest Satellite TV company in the world, a famous sculptor, a brand of Vodka, and against LucasFilms over an alleged Star Wars property. He also provides ongoing trademark portfolio maintenance to a number of the world’s largest companies. These clients include Olympus, a Japanese-based manufacturer of optics and medical products, Goldman Sachs and its new MARCUS subsidiary, as well as the entire group of STEVEN MADDEN companies.

In recent years, James has added a third major element to his practice—emergency rebranding—a skill he is called upon to use when a company is in need of a complete branding overhaul. This work can require that his team conduct a trademark clearance and filing campaigns for companies in over 180 jurisdictions around the world.

James is routinely ranked as one of the most well regarded trademark lawyers in the country by the leading legal publications. The World Trademark Review has for years recognized James as one of the top trademark lawyers in New York and the United States, and in 2016 they noted that he was the “brainchild” of the firm’s emergency rebranding practice. They also published that he “is widely regarded, by clients and peers, as being a leader in his field,” and in their 2017 and 2018 rankings listed him in the gold band (top tier) for “Individuals: Prosecution and Strategy.”

James’ sophisticated approach to counseling intellectual property owners on the scope and validity of their properties has earned him praise from sources such as Managing Intellectual Property, which nominated him as one of the top five intellectual property attorneys in the country and selected his practice group as the best group of its kind in the United States. He has received recognition from New York Super Lawyers, Who’s Who in American Law, and The Guide to the World’s Leading Trademark Law Practitioners. He is also a winner of the 2016 Global Award for Copyright Law by Corporate Livewire. For the past 15 years, James has received an AV Preeminent® rating from Martindale-Hubbell, the highest professional rating awarded by the publication, and was selected as a 2013 Top Rated Lawyer in Intellectual Property Law, a special report published by ALM Media Properties and Fortune magazine. James was also nominated by in-house counsel and his peers to appear in Trademark Expert Guides year after year as one of the leading trademark practitioners in the United States.

James has authored and co-authored many articles in the intellectual property field covering such topics as halting trademark and copyright piracy, European trademark law, copyright protection for computer software, trends in US trademark law and international intellectual property treaties for publications including the New York Law Journal and the Licensing Journal. He is also a frequent speaker on trademark, copyright, the internet and branding issues. James previously appeared as both a moderator and speaker for the New York New Media Association's Intellectual Property Seminar Series for Information Technology Companies. As an adjunct professor at New York Law School, he taught courses and seminars on different aspects of intellectual property law.

Representative Experience

Emergency Rebranding Matters

  • Representing AIG with the rebranding of its insurance division to Chartis Insurance.
  • Representing Citibank and Citifinancial with the rebranding of its One Main division.
  • Representing General Motors with the rebranding of GMAC Financial to Ally Bank.
  • Representing Abbott Labs in the Abbvie spin-off.

Trademark Matters

  • Representing The Jewelry Channel, Inc. USA d/b/a Shop LC—a global leader in direct sales of jewelry, accessories, luxury goods, and lifestyle products—in connection with domestic and international patent, trademark, and copyright counseling, prosecution and enforcement as well as in Federal litigations.
  • Counseling and representing Tito’s Handmade Vodka on their trademark portfolio worldwide, as well as several US and foreign litigations.
  • Counseling the Tampa Bay Rays, in all aspects of their IP and Branding work, including clearing the change of name from The Devil Rays to The Rays in virtually every trademark classification.
  • Representing Omnicom on a variety of intellectual property matters including branding, marketing, advertising, litigation, trademark and domain name matters.

Memberships

  • Member, American Bar Association
  • Member,International Association for the Protection of Intellectual Property
  • Member,International Bar Association
  • Member,International Trademark Association
  • Member,New York Intellectual Property Law Association
  • Member, US Copyright Society

Awards & Recognition

  • Recognized in World IP Review 2020 Leaders Directory (IP Practitioner)
  • Named ACQ5 US IP Litigation Lawyer of the Year in New York, ACQ (Acquisition Finance) Magazine, 2019. Full voting criteria and methodology can be viewed here.
  • Placed in The Legal 500 attorneys Hall of Fame:  Copyright, Trademarks: Litigation and Trademarks: Non-Contentious, 2019
  • Recipient of the Global Awards 2019 IP Lawyer of the Year, Corporate LiveWire
  • Named among Intellectual Property Trailblazers, National Law Journal, 2019
  • Recipient of a Lifetime Achievement Award for Professional Excellence, New York Legal Awards, New York Law Journal, 2018
  • Recognized in Marquis Who’s Who in the World, 2018, 2019
  • Named ACQ5 US IP Litigation Lawyer of the Year in New York, ACQ (Acquisition Finance) Magazine, 2018. Full voting criteria and methodology can be viewed here.
  • Recognized as a Leading Practitioner in the 12th edition of Trade Mark 2018 published by Expert Guides
  • Recipient of the 2018 Albert Nelson Marquis Lifetime Achievement Award, Marquis Who’s Who
  • Named ACQ5 Global Awards IP Litigation Lawyer of the Year in New York, ACQ (Acquisition Finance) Magazine, 2017
  • Listed as an Elite Leading Lawyer in Trademarks: Litigation and Trademarks: Non-Contentious in the United States, The US Legal 500, 2017
  • Recognized as a 2017 Global Awards Winner of Excellence in IP Litigation Law Services, Corporate LiveWire
  • Recognized in World IP Review 2017 Leaders Directories
  • Recognized as “Best in IP Litigation,” Corporate LiveWire 2017 Global Awards
  • Recognized in the 2017 Client Choice Awards, ILO and Lexology, February 2017
  • Ranked in the Gold Band (Top Tier), WTR 1000—The World's Leading Trademark Professionals, World Trade Review, 2015-2018
  • Named a “WIPR Leader,” World IP Review, 2017, 2018
  • Profiled in The Legal 500 United States as one of the leading lawyers in Trademarks: Litigation and Trademarks: Non-contentious (Full Coverage), 2015, 2016-2019; and Copyright, 2018-2019
  • Named a “Trademark Star” in New York in the IP Stars Handbook published by Managing Intellectual Property, 2016-2019
  • Recognized as a “Top Five Lawyer” in the New York Area for Trademark Prosecution and Strategy, 2016; and as a Leading Trademark Lawyer, 2015, 2018, 2019, World Trademark 1000
  • Recognized as a New York Super Lawyer in Intellectual Property Litigation, Super Lawyers by Thomson Reuters (published in Metro Magazine), 2008-2019
  • Recipient of the 2016 Global Award for Copyright Law, Corporate Livewire 
  • AV Preeminent® rating in Martindale-Hubbell, 2001-2017. A description of the selection methodology can be found on Martindale-Hubbell’s website
  • Recognized as one of the leading trademark practitioners in the United States, Trademark Expert Guides, 2016

Insights