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Experience:
John Mancini's practice focuses on the following areas of intellectual property law:
(i) intellectual property litigation; (ii) acquisition, transfer, and securitization of intellectual property assets; (iii) portfolio evaluations and strategic assessments; and (iv) security and privacy counseling. Particular areas of industry experience on intellectual property matters include: information technology, telecoms, consumer electronics, media and entertainment, and financial institutions.
Intellectual Property Litigation. John has extensive experience in litigating trademark, copyright, trade secret, unfair competition, domain name, distributorship, licensing, and franchising disputes, as well as other disputes involving intellectual property rights, including patent cases. John has regularly represented Internet, information technology, entertainment, media, and consumer electronics clients on intellectual property disputes involving their core inventions. Representative clients include: Google, YouTube, Virgin Media, Coby Electronics, Future Electronics and Convergia Networks.
Intellectual Property Counseling/Transactional. John regularly advises clients in connection with the licensing, purchase, sale, and securitization of intellectual property assets, including copyright, patent, trademark, trade secret, and information technology assets. He has extensive experience in performing due diligence on the transfer of intellectual property and information technology assets in connection with mergers, acquisitions, or other dispositions.He routinely advises clients on maximizing the value of their intellectual property portfolios, both domestically and internationally, by several means, including prosecution, registration, and enforcement of their rights in such portfolios. Representative clients include: EMI, Nieman Marcus, London Metal Exchange, Neste Oil and GfK.
Privacy and Security Counseling. John regularly advises clients, particularly in the financial institution industry, on compliance with security and privacy obligations relating to the storage, maintenance, and transfer of personal information, and on minimizing liability for unauthorized access of non-public personal information by third parties, including identity theft. Representative clients include: investment banks, mutual fund companies, insurance companies, mortgage companies and retail banks.
John is fluent in Italian and proficient in French.
Notable Engagements:
Represents Google and YouTube in defense of related cases brought by various media content holders for alleged copyright infringement relating to videos posted by users on the YouTube online service. (Viacom v. YouTube, Inc. (USDC SDNY)).
Represents Sit-Up, Limited., a division of Virgin Media, in the prosecution of trade secret misappropriation and breach of contract claims involving the alleged theft of its "secret sauce" for a new and innovative approach to a home shopping television entertainment channel that employs a unique "falling price auction." (Sit-Up, Limited. v. IAC Corp and Home Shopping Network (USDC SDNY)).
Represents Faiveley Transport in the prosecution of a trade secret misappropriation and breach of license agreement action against Wabtec Corporation and relating to Faiveley's invention of tread brakes for railway, transit, and subway cars. (Faiveley Transport Malmo v. Wabtec Corporation (USDC SDNY and ICC Arbitration)).
Represents Design Ideas in defense of claims brought for trademark infringement, trade secret misappropriation, and unfair competition relating to the use of the "GEL GEMS" trademark for decorative window clings. (Geliman, S.A. v. Design Ideas, Limited (USDC SDNY)).
Represents Coby Electronics in defense of patent infringement claims brought by Aerielle Technologies, Inc., and relating to wireless transmitters for portable audio devices. (Aerielle Technologies, Inc. v. Coby Electronics (USDC ED Tex.)).
Represents Modern Luxury, Inc. in several TTAB Cancellation/Opposition proceedings over the use of the mark "CONFIDENTIAL" in connection with luxury lifestyle magazines. (Niche Media LLC v. Modern Luxury, Inc., TTAB Opposition (US Trademark Office)).
Represents Convergia Networks and Future Electronics in a dispute against Huawei Technologies for breach of contract and fraudulent inducement relating to the development of a next-generation data telecoms network for 17 countries in North and South America. (Convergia Networks, Inc. and Future Electronics, Inc. v. Huawei Technologies Co. Ltd and Futurewei Technologies, Inc. (USDC, SDNY and ICDR Arbitration)).
Represented Ion Media Networks., a division of Paxson Communications, as a defendant in a trademark infringement action brought by Positive Ions, Inc. over use of the mark "ION" for websites streaming promotional television advertisements and user-generated content. (Positive Ions, Inc., v. Ion Media Networks, Inc., Paxson Communications, Corp., and Does 1-10 (USDC CD Cal.)).
Represented Coby Electronics as a defendant in a multi-party patent infringement litigation brought by Digital Choice of Texas and relating to parental blocking technology for DVD Players. (Digital Choice of Texas v. Sichuan Electronics Co., et al. (USDC ED Tex.)).
Represented Coby Electronics in defense of patent infringement litigation brought by a patent holding company relating to digital imaging technology for DVD Players. (Technology Licensing Co. v. Coby Electronics Corp., (USDC ND Cal.)).
Successfully defended Modern Luxury from trademark infringement claims brought by owner of "HAWAII" mark over Modern Luxury's use of "MODERN LUXURY HAWAII" in connection with its luxury lifestyle line of publications. (BowTie, Inc. v. Modern Luxury, LLC, (USDC, CD Cal.)).
Successfully defended Modern Luxury against claims brought in Texas state court that Modern Luxury's "MODERN LUXURY DALLAS" trademark infringed the Greater Dallas Chamber of Commerce's "DALLAS" mark. (Greater Dallas Chamber of Commerce v. Modern Luxury, Inc. (134th District Court, Dallas Co., Tex.)).
Successfully represented Winstar Communications, a multi-billion dollar "end-to-end" telecommunications and Internet service provider in dispute regarding the acquisition of a "local area network" telecommunications provider, known as LANSystems, Inc., from a division of Bowne, Inc. (Winstar Communications, LLC v. Bowne, Inc. (AAA Arbitration).
Successfully defended Winstar in a multi-million dollar dispute regarding claims asserted in connection with the equipment financing for the first generation telecommunications network built by Winstar throughout North America. (LMS Investments LLC v. Winstar Communications, LLC (NY Sup. Ct, NY Co.).
Successfully defended H&H Midtown Bagels East, in an action brought for alleged trademark infringement relating to the mark "H&H Bagels" (Fourth Toro Limited Partnership, d/b/a H&H Bagels v. P.V. Bakery, Inc., d/b/a H&H Midtown Bagels East (USDC, SDNY)).
Successfully represented Nicebid.com in dispute over software development agreement and Internet hosting agreement relating to the development and launch of one of the first internet auction web sites (Nicebid.com v. International Telegraph (AAA Arbitration).
Represented Adelphia Communications Inc in the defense of claims brought for trademark infringement relating to the on-air use of "THE SPORTS AUTHORITY" mark by one of Adelphia's regional radio broadcasting stations (The Sports Authority, Inc. v. Adelphia Communications (USDC WDNY)).
Successfully represented Deutsche Bank in a domain name cybersquatting complaint against an infringer who misspelled Deutsche Bank's famous house mark in order to drive consumers to its web site (Deutsche Bank v. duetschebank.com (WIPO Proceeding)).
Education:
Georgetown University Law Center, JD, 1989; Editor-in-Chief, The Tax Lawyer, 1988-1989, Fairfield University, BA, 1986; Headmaster Scholar; Alpha Sigma Nu. |
