Eleanor M. Lackman is a Partner in the Litigation, Copyright and Trademark practices, where she handles contentious matters and provides strategic counseling on behalf of well-known and up-and-coming clients in the media, entertainment, e-commerce, fashion, sports, technology and consumer products industries.
Eleanor’s litigation practice focuses on intellectual property, entertainment and media disputes in federal and state courts at trial and appellate levels, as well as before arbitral and administrative bodies including the AAA and the USPTO Trademark Trial and Appeal Board. She has particularly deep experience in media and entertainment defense; copyright, trademark, and publicity rights enforcement; and litigation in matters at the intersection of copyright and trademark law and new technology. Eleanor is admitted to practice law in New York and California, which allows her to provide legal services in the key locations for those in the media, entertainment and technology industries.
Prior litigation experience includes serving as lead trial counsel in a dispute for the prevailing party arising in the apparel industry; arguing and winning a closely watched copyright case at the Second Circuit Court of Appeals; drafting an amicus brief for the winning party in the U.S. Supreme Court; defeating trademark claims asserted against a professional sports team and copyright claims brought against a famous rap artist; and procuring a multimillion-dollar settlement before trial. Eleanor also routinely works with in-house counsel to provide guidance and second opinions on day-to-day matters ranging from risk management issues to strategy in pending litigation.
Described by the client-focused Chambers USA as “a trademark and copyright law expert,” Eleanor’s copyright and trademark practice is comprehensive, covering not just litigation, but enforcement, global trademark clearance and prosecution, counseling, licensing, brand strategy, anti-counterfeiting, and internet domain disputes in a variety of industries. She brings a holistic approach to legal services in the copyright and trademark areas, looking at strategic decisions from all sides to help support the client’s legal goals and provide business-aware advice.
Eleanor’s work has garnered consistently strong recognition from clients and peers. In 2016 alone, she was named by Variety as one of “Hollywood’s New Leaders” (the only litigator to be so named), by Chambers USA as a “Leading Individual” in the fields of copyright and trademark, by Law360 as one of five “Rising Stars” in media and entertainment law, and by Super Lawyers as a New York “Super Lawyer” for intellectual property litigation.
Prior to joining CDAS as a partner in 2011, Eleanor was associated with some of the largest and most well-recognized law firms in the world, where she took integral roles on high-profile IP, media and entertainment matters. While in law school, Eleanor served as Associate Editor of the Fordham Intellectual Property, Media & Entertainment Law Journal, and she was selected by the Chief Judge of the United States District Court for the Southern District of New York to receive the Milton Pollack Fellowship, which supported her work on a project designated and overseen by the Chief Judge.
- Cowan, DeBaets, Abrahams & Sheppard LLP (2011-Present)
- Hogan Lovells US LLP (2009-2011)
- Arnold & Porter LLP (2005-2009)
- Loeb & Loeb LLP (2003-2005)
- U.S. District Courts for the Southern, Eastern and Northern Districts of New York
- U.S. District Court for the Central District of California
- U.S. Court of Appeals for the Second, Fourth, Ninth, D.C. and Federal Circuits
- Supreme Court of the United States
- Fordham University School of Law, J.D.
- Rollins College, A.B. Hon., magna cum laude
In addition to serving as a regular contributor to the CDAS IP, Entertainment and Media Law Blog, Eleanor often writes on cutting-edge topics for outside publications. Recent publications include:
- Give Me A “C” (in a Circle): Cheerleader Uniforms at High Court, Law360, May 10, 2016
- Shifting Injunction Standards in Copyright, Trademark Cases, Law360, December 17, 2014
- Co-Author, Practice Note: Trademark Litigation: Injunctive Relief, Practical Law Company, October 2014 (annually updated)
- Symposium: Supreme Court Finds That Aereo Runs Afoul of the Purposes of the Copyright Act, SCOTUSblog, June 26, 2014
- How and Why Aereo Got to the Supreme Court, Law360, February 3, 2014
- Co-Author, The Role of Volition in Evaluating Direct Copyright Infringement Claims Against Technology Providers, Bright Ideas (published by the New York State Bar Association’s IP Section), Lead Article, Winter 2013
- Expert Q&A on Time-Based Defenses in Copyright Litigation, Practical Law Intellectual Property & Technology, November 19, 2013
- Co-Author, Practice Note: Copyright Litigation: Injunctive Relief, Practical Law Company, April 2013 (to be annually updated)
- Co-Author, Update to MLRC “Discovery Roadmap” (includes revisions for handling litigation in era of e-discovery), February 2013
Eleanor has been quoted on trademark and copyright matters in publications including Forbes, Variety and Law 360. She also is frequently asked to speak on advanced intellectual property, media and technology issues.
Recent and upcoming speaking engagements include:
- “Copyright Cacciatore: Advanced Topics in a No-Fuss Format,” AIPLA Mid-Winter Meeting, February 1, 2017
- “Circumventing the Future: The Fate of Section 1201,” Copyright & Technology NYC, January 24, 2017
- “Hollywood and the Web: An Internet Update,” MLRC Media & Entertainment Law Conference, January 19, 2017
- “IP Licensing Issues,” at the “IP in Business Transactions 2017” seminar at the Practising Law Institute, January 9, 2017 (annual engagement since 2006)
- “Intellectual Property and Public Values,” Fordham 10th Law and Information Society Symposium, May 13, 2016
- “Using Experts in Copyright Cases,” American Bar Association, 31st Annual Intellectual Property Law Conference, April 8, 2016
- “Standing to Sue and Evolving Case Law” at the “Advanced Copyright Law Annual Review 2016” seminar at the Practising Law Institute, March 23, 2016
- “Termination and Transfers,” New York City Bar Association, March 15, 2016
- “The Ownership of Copyrightable Contributions in the Wake of Garcia v. Google and 16 Casa Duse v. Merkin,” Copyright Society of the U.S.A. Mid-Winter Meeting, February 12, 2016
- “Is It Time To Protect Fashion Under Copyright Law?” Copyright Society of the U.S.A. (Philadelphia Chapter) December 7, 2015
- “Let’s (Not) Go Crazy: Lessons on Enforcement Strategy and Fair Use from the ‘Dancing Baby’ Decision,” Association of American Publishers Lawyers Committee, September 30, 2015
- “Sea Change or Business as Usual? Trends and Strategies for Winning Injunctions Post eBay v. MercExchange,” Roundtable Moderator, INTA Annual Meeting, May 5, 2015
- “Anti-Cybersquatting Strategies in the Era of New gTLDs,” Roundtable Moderator, INTA Annual Meeting, May 12, 2014
- “The Supreme Court on Aereo and the Future of TV,” On Point (NPR – National Public Radio), April 23, 2014
- “So You Want to Be a Star: Law and the Music Business,” Federal Bar Council Winter Meeting, February 13, 2014
- “Copyright/Entertainment Litigation Update,” 25th Annual North American Entertainment, Sports and IP Law Conference, November 9, 2013
- “Copyright 2013,” CMJ Music Marathon, 2013 Entertainment Business Law Seminar, October 18, 2013
- “Please Excuse the Following Disruption: The Past, Present and Possible Future of Television and Radio Copyright Litigation,” Copyright Society of the U.S.A. Annual Meeting, June 11, 2013
- “Evaluating Risk When Using Trademarks in Motion Pictures and On Television,” Roundtable Moderator, INTA Annual Meeting, May 5, 2013
- “Music, Tickets & Other New Top-Level Domains: Will New Top-Level Internet Domains Generate More Reward of More Litigation for Entertainment Industry Stakeholders?,” NARM Entertainment & Technology Conference, February 28, 2013
Associations and Activities
- Copyright Society of the USA: Co-National Chapters Coordinator; Past Officer, Past Trustee, Co-Chair, New York Chapter (2014-2016); Chair of Membership Committee (2009-2014)
- International Trademark Association (INTA): International Amicus Committee; Internet Committee (2012-2015)
- Media Law Resource Center (MLRC), Litigation and Copyright & Trademark Committees
- Copyright Alliance, Amicus Committee
- Fordham Center on Law and Information Policy (CLIP), Board of Advisors
- National Academy of Recording Arts & Sciences, Entertainment Law Initiative Judge
- New York City Bar Association, Trademarks and Unfair Competition Committee (2006-2009)
- New York University Polytechnic Institute, Adjunct Professor
Media & Entertainment Defense
- Argued, briefed, and won appeal at Second Circuit in 16 Casa Duse v. Merkin, a landmark case involving rights in collaborative works.
- Defeated trademark infringement claim and TTAB appeal in federal court over name of professional basketball team.
- Defended analytics company against claims of breach of contract and trademark infringement, resulting in favorable settlement.
- Defeated copyright and contract claims asserted against famous rap artist concerning record label logo.
- Defended book-writer in copyright infringement lawsuit involving hit Broadway musical, Spider-Man: Turn Off The Dark.
- Defending traditional and Internet-based media companies against patent infringement and defamation claims.
- Favorably resolved several IP claims asserted against major social media news outlets.
- Defeated motion for preliminary injunction brought by former employer against talent agent.
- Ongoing defense against numerous publicity, trademark and copyright claims brought against clients in industries including news media, photography, fashion, publishing, and entertainment.
- Successfully defeated an action, based on alleged trademark infringement, for a temporary restraining order and preliminary injunction that threatened U.S. distribution of Oscar®-nominated film.*
- Won motion to dismiss copyright and trademark infringement claims brought by pinball machine manufacturer against major motion picture studio over set dressing in film.*
Trademark & Copyright Enforcement and Defense
- For top-selling card game company, obtained significant settlement and public confession of liability from U.S. and internationally based counterfeiters of card game.
- Obtained settlement on behalf of major record label for underpayment of royalties on music samples.
- Won injunctive relief on behalf of software company against financial institution over unlicensed use of client’s software.
- Obtained preliminary injunction on behalf of estate of famous illustrator against unauthorized reproductions of works.
- Successfully resolved claims of copyright infringement asserted against prominent fashion brands.
- Litigating multiple cases on behalf of applicants and opposers before the Trademark Trial and Appeal Board.
- Procured favorable settlement following partial summary judgment win and jury selection in infringement case on behalf of fashion brand against manufacturer and online retailer of knock-off apparel.
- Secured dozens of domain names from cybersquatters via UDRP, URS and other domain mechanisms.
- On behalf of several clients in music, publishing, entertainment and fashion, successfully enforced trademark and publicity rights against competitors, affiliate marketers, online businesses, impersonators and developers of infringing apps.
- As lead trial counsel, won full defense of contract and other claims brought by apparel supplier against catalog company after trial.*
- Represented famous fashion brand in trademark and counterfeiting lawsuit against online retailer; nearly $2 million plus attorneys’ fees awarded.*
IP & New Technology
- Represented music company in conjunction with subpoena and deposition in Flo & Eddie v. SiriusXM litigation.
- Drafted amicus briefs in WNET v. Aereo (broadcast television retransmission, U.S. Supreme Court), Fox Television Stations v. FilmOn X (broadcast television retransmission, 9th Circuit), WNET v. FilmOn (D.C. Circuit); Windows to the World v. FilmOn (7th Circuit); Viacom v. YouTube (secondary liability on the Internet, 2d Circuit), Authors Guild v. HathiTrust (digital book scanning, 2d Circuit), and Cambridge University Press v. Becker (digital course packs, 11th Circuit).
- Advised broadband company on statutory licensing provisions.
- Advised media client on rights issues pertaining to “over-the-top” television offerings.
- Represented litigants in cutting-edge copyright and trademark cases, including Cartoon Network LP v. CSC Holdings, Inc. (“Cablevision”) (copyright issues arising from offering of “remote-storage DVR,” 2d Circuit, S.D.N.Y.); Tiffany (NJ) Inc. v. eBay Inc. (secondary liability relating to counterfeiting on websites, 2d Circuit, S.D.N.Y.); U.S. v. ASCAP (In re MobiTV) (copyright fees for mobile streaming, 2d Circuit); and Diarama Trading Co. v. J. Walter Thompson (tacking of trademark rights, 2d Circuit).*
- Represented amicus parties in appeals involving complex copyright issues, including U.S. v. ASCAP (In re Yahoo!) (copyright rights arising from downloads, U.S. Supreme Court, 2d Circuit); Capitol Records, Inc. v. Thomas (“making available” right in context of digital downloading, D. Minn.); and Capitol Records, Inc. v. Naxos of America, Inc. (common law copyright for music, N.Y. Court of Appeals).*
IP Counseling & Strategy
- Led global trademark clearance, prosecution and re-branding project for spin-off of division of leading hotel and resort company.
- Conducted trademark due diligence and counseling for new tagline for major international alcoholic beverage company.
- Acting as outside intellectual property counsel for highly successful e-commerce start-up companies, including developing global brand strategy, clearing trademarks, advising on licenses and other IP contracts, due diligence, and enforcing trademark rights.
- Acting as general counsel for author regarding trademark and copyright rights in highly successful young adult books and related motion pictures.
- Handling trademark portfolios and counseling on international brand expansion for prominent e-commerce companies, celebrities and fashion brands.
- Advised developer regarding trademark clearance, social media and online branding, and brand strategy for new hotel and restaurant in Times Square.
- Counseling on global brand strategy and trademark prosecution for international accounting standards organization.
- Advising major international fashion design and retail companies on trademark prosecution and brand strategy.
- Provided advice to publisher regarding copyright rights, music licensing, and clearance for multimedia-based textbook.
- Negotiated domestic and international coexistence agreements for many clients in the fashion and consumer goods industries.
- “Leading Individual,” Intellectual Property: Trade Mark and Copyright, Chambers USA, 2014-2016
- “Hollywood’s New Leaders,” Law & Finance, Variety, 2016
- “Rising Star, Media & Entertainment,” Law360, 2016
- “Super Lawyer, Intellectual Property Litigation,” New York, Super Lawyers, 2013-2016
- “Rising Star, Intellectual Property Litigation,” New York, Super Lawyers, 2012
*Denotes matters handled prior to joining CDAS.