A Representative Selection of Matters that Codispoti & Mancinelli, LLP Has Successfully Concluded for Clients

Selected Business Successes:

Success in business also requires businesses to be pro-active about their legal concerns.  But trying to avoid initial legal expenses for proper analysis and legal strategizing of matters too often result in businesses later paying ten times that legal expense to sort out the legal problems they could have avoided with proper counseling.  Codispoti & Mancinelli work with businesses to help structure prospective solutions and strategies to avoid expensive legal conflicts. 

Many partners or shareholders in small or closely owned businesses are under the mistaken belief that a majority vote always rules, even if that vote would result in damaging to one of the partners.   Such actions by the majority might well be considered oppressive to that one partner.  The law has remedies available where the majority of members in a business oppress another member.  In one case, the client, who was one of three founding owners in digital printing company, was locked out of the company by the other two shareholders who secretly conspired to expel him.  We filed an oppressive shareholder lawsuit.  Because of the lawsuit, the two majority shareholders were forced to buyout the client’s interests or face dissolution of the company by the court.  The conflict and the lawsuit could have been avoided, however, if the three shareholders had a properly drafted shareholders agreement in place when they first formed the company.

Sometimes, however, no amount of early preparation can prevent a lawsuit, especially where a lawsuit is the only remaining option for a business to protect its rights.   The following are examples of other successful business litigation:

       ● A national insurance was having problems with one of its insureds, a construction and demolition company that had run up the deductibles on its commercial liability policy because of numerous personal injury claims made against the company, claims which the insurance company settled and paid.   But the construction company refused to pay the deductibles it owed.  Won summary judgment (a type of procedure in a lawsuit where the court can grant a judgment without having a trial) for insurance company against insured construction company in the amount of $750,000.

       ● An ethic radio station based in Los Angeles, California, had a license agreement with a New York City radio station.  However, after the license terminated the New York station continued to download the satellite radio signal of the California station in violation of the Federal Communications Act.  We sued the New York station and were success in negotiating a beneficial settlement for the California station.

Selected Successful Intellectual Property Matters:

Intellectual property lawsuits are enormously expensive.  Success in these matters for many clients, especially small and medium size businesses, often depend on the ability to finesse an acceptable settlement.  The following two cases are examples of creative solutions that avoided further expensive litigation and brought a good settlement for the client:

       ● An international hotel chain began using a trademark to promote its New Age health spas and specialized yoga retreats, primarily in Asia.  However, our client, an international religious organization, had already established of the same trademark use throughout North America and Europe for its meditation retreats and religious services.  To avoid the enormous cost of litigation involving international trademark rights, we successfully worked out a coexistence agreement between the two parties that separated the global territories where each may use the trademark without conflict.

       ● A children’s clothing company, which sells wholesale to major retail outlets and national department stores, was promised a license from a major international corporation to manufacture and sell a recognized brand of children’s clothing, but the licensor then reneged on the deal.  On behalf of the clothing company, we brought a lawsuit for breach of license agreement.  We were successful in convincing the defendant that it was in everyone’s best interest to negotiate rather than litigate.  Instead of bare-knuckle litigating, we worked out a settlement that secured a seven year, worldwide exclusive trademark license deal for the client potentially worth in excess of $50 million.

Securing trademark protection for a company’s products is tremendously important.  The value of product branding − or trademarks − can well exceed the value of the products themselves.  We have a very active trademark registration practice for both U.S. and foreign clients.  One such client, a designer and manufacturer of custom t-shirt and hip-hop paraphernalia, came to us with one trademark.  We since secured for the company numerous trademarks registered with the U.S. Patent & Trademark Office and actively police its trademarks throughout the U.S. and have stopped infringements and secured beneficial settlements from California to Florida.

Complimenting trademark registration is trademark licensing.   As the two stories above show, we have experience in negotiating complex, worldwide trademark license agreements.  We also have successfully negotiated publishing contracts for authors and publishing distribution agreements for specialty products with publishing houses such as Warner Books, St. Martin Press and HarperCollins.  

Another aspect of trademark and copyright protection is border enforcement.   Clients involved with importing and overseas manufacturing may need to pay closer attention to the products being delivered from factories abroad.  Certain places around the world are known for product piracy, which affects U.S. commerce when those factories slip in illegal knock-offs among the containers being shipped.  U.S. Customs seized the shipments of two clients, wholesale importers of clothing and hand bags.  Customs claimed the shipments contained goods that counterfeited certain famous registered trademarks.  The clients were hit with fines for violation of U.S. Customs regulations and trademark laws in the amounts of $375,000 and $518,000 respectively.  We filed petitions with Customs contesting the fines.   Customs granted both petitions and completely dismissed the fines.

Sometimes, however, a lawsuit is the only way to stop an infringer.  One client, a marketing company, developed, wrote and licensed sweepstakes packages to various publishing companies for their marketing use.  One of the licensees, a major national publisher, cut and pasted the client’s sweepstakes sections to make new sweepstakes packages.  We sued on behalf of the marketing company for copyright infringement and obtained a successful and early settlement against the publisher. 

Call Codispoti & Mancinelli, LLP for a consultation at (212) 962-6525.

Codispoti & Mancinelli, LLP
111 John Street, Suite 800
New York, NY 10038-3002

Appointments also available in Brooklyn, NY and Rockland County, NY.

Phone Number: 212-962-6525
Steven Mancinelli, Esq.  x 125
Bruno F. Codispoti, Esq. x 135
Tiffany Lienhart, Paralegal x 133
Fax Number: 212-962-6791

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Of Counsel:
Richard L. Strauss, Esq., Registered Patent Attorney
Robert M. Steckman, Esq.
Lisa A. Iulo, Esq