[ZAG/S&W] [Biography]
 
 

MITCHELL C. STEIN
mstein@zag-sw.com

AREAS OF PRACTICE

Mitchell C. Stein is a partner in the Intellectual Property Group and Litigation Department of our New York office. Mr. Stein focuses his practice on litigation and licensing related to trademarks, copyrights, rights of publicity, and other intellectual property rights. He has worked on nationwide intellectual property enforcement programs on behalf of sports leagues, celebrities and entertainment concerns, and has participated in pioneering licensing programs for municipal entities that own commercially valuable intellectual property. In recent years, Mr. Stein has also developed his practice in the areas of legal issues related to direct marketing and assisting authors in negotiations with publishers, literary agents, and film companies.

REPRESENTATIVE CLIENT WORK
·Successfully represented a leading manufacturer of natural enzyme and phosphate removal products for use in pools, Jacuzzis and spas in settling a patent infringement action against a competitor. The competitor agreed to cease sales of the product at issue, change all labeling of future products, make a settlement payment, and issue a press release regarding the settlement
·Represented leading designer of premium jeans in connection with nationwide intellectual property enforcement campaign
·Defended apparel distributor and various national and regional department store chains in connection with trademark and copyright infringement suit brought by belt designer
·Represented jewelry designers in connection with the protection of their intellectual property rights and in negotiations with leading home shopping network
·Conducted nationwide intellectual property protection and enforcement programs, and handled related litigation, on behalf of, among others, Tiger Woods, Arnold Palmer, Jack Nicklaus, and their licensing entities, as well as Comedy Partners (South Park), and NCP Marketing Group, Inc. (Tae Bo)
·Served as outside general counsel to direct marketing companies, with responsibilities including day to day handling of all licensing, distribution and telemarketing-related agreements, and principal responsibility for handling all litigation and arbitrations, including defense of class action lawsuit
·Participated in developing municipal licensing programs for the benefit of the New York City Police and Fire Departments
·Handled trademark opposition proceedings before the Trademark Trial and Appeal Board on behalf of a leading footwear manufacturer
·Represented American marine mutual indemnity and protection insurance club in complex declaratory judgment action against former club members regarding club's obligations to indemnify former members for asbestos and other occupational disease claims
·Other firm clients for which Mr. Stein has provided services include the University of Notre Dame, the Tournament of Roses, Pearl Jam, the Spice Girls, Incubus, the U.S. Polo Association, and USC

BAR & COURT ADMISSIONS
·New Jersey, 1988
·New York, 1989
·U.S. District Court, District of New Jersey
·U.S. District Court, Eastern District of New York
·U.S. District Court, Southern District of New York

PUBLICATIONS
·"Rhode Island’s Twin River Racino Looks For Online Rescue," GamblingCompliance (quoted) (February 1, 2010)
·"Will Fantasy Sports Always Be Exempted From Gambling Laws? Don't Bet On It," Sports Litigation Alert (August 28, 2009)
·"Online Gambling Ban: Regulations in Search of a Definition," E-Commerce Times (November 17, 2008)
·"Kentucky’s Legal Bet: A Case of Pushing the States' Rights Envelope," (quoted) MacNewsWorld (November 11, 2008)
·"Down But Not Out: Working Around the U.S. Government’s Crackdown," (quoted) Gaming Law Review (2007)

AWARDS & HONORS
·AV Rated, Martindale-Hubbell Law Directory

SPEAKING ENGAGEMENTS
·"Pirates and Protocols: Trademark Use and Enforcement on the Internet," Association of the Bar of the City of New York (March 18, 2009)

PROFESSIONAL & CIVIC ACTIVITIES
·Federal Bar Council
·Bar of the City of New York, member of the IT Law Committee

EDUCATION
·J.D., magna cum laude, Boston University School of Law, 1988
·B.A., magna cum laude, Tufts University, 1984


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