Ethan Horwitz

In a case in the Western District of Texas, Ethan obtained two writs of mandamus in less than a month. He first obtained a writ of mandamus compelling the district court to stay the case and rule on his client's venue motion — a decision that was followed by a change in the district court's procedure regarding venue motions. When the district court issued its decision and refused to move the venue of the case, he then obtained a second writ of mandamus reversing the district court's decision. This rare feat moved the case from the Western District of Texas, the top patent litigation venue in the United States, known not to transfer cases.

Ethan has also tried numerous trademark, trade dress, and dilution lawsuits. These include representing Pepperidge Farm in a landmark case that resulted in a preliminary injunction based on Pepperidge Farm's rights to the shape of its Goldfish cracker. This case was among the first to issue a preliminary injunction based solely on a dilution claim.

In other trademark and trade dress cases, he defended Lotus' mark "Notes" against an attack by Borland; Kraft's trade dress for its Singles product against infringement by Borden; and Kraft's trade dress and trademark for its Philadelphia Cream Cheese product from infringement by Bongrain. He also defended Cosmair (L'Oreal) and Ralph Lauren in an action brought by Calvin Klein to enjoin their new fragrance, Ralph Lauren Romance.

He defended JPMorgan Chase's adoption of its name after its merger against a claim of infringement by the owner of the mark Morgan Chase. Additionally, he defended JPMorgan Chase's use of Freedom Card from a claim of infringement by former executives of the Freedom National Bank of Harlem; the judgment was affirmed by the Third Circuit.

In false advertising cases, Ethan represented Kraft's Jell-O gelatin and stopped Del Monte from calling its product "Gelatin Snacks." The snacks were actually made of carrageenan, which is commonly described as gelatin though it fails to meet the technical definition. In addition to many court actions involving false advertising, he has brought and defended cases before the National Advertising Division of the Better Business Bureau and its Canadian and German equivalents.

In copyright cases, he represented Joe Simon, a co-author of the comic character Captain America, against Marvel Comics and won a landmark Second Circuit case holding that Mr. Simon could sue to recover his copyright from Marvel. In another case, his client, Colgate, was accused of copying Procter & Gamble's advertising for Crest toothpaste. The respective ads were used by both companies in many countries around the world. Ethan argued the case before the National Copyright Administration in Beijing, and then tried to a verdict for Colgate, which was affirmed by the Second Circuit.

In another copyright case, J. Walter Thompson and Northwest Mutual Life were accused of copying Chase Manhattan's advertising. He resisted a preliminary injunction and created new law that a preliminary injunction could be refused based on the movant's delay alone.

In addition, he has extensive experience handling the unique issues related to computer programs protection, including litigating the related copyright and patent issues, and helping to develop compatible programs that do not infringe the basic program. He has advised clients on establishing worldwide protection for their intellectual property, and has set up and implemented anti-counterfeiting programs for clients, including Timberland and David Yurman. Ethan has also advised clients regarding the launch of products and advertisements to ensure that they do not violate the intellectual property rights of others and to ensure that all claims are substantiated.

Ethan has also acted as an expert in a variety of settings. He has testified before Congress on legislative issues, has spoken before the Japan Patent Office on its proposed legislation, has testified before the courts in China regarding U.S. law, and has been an expert witness on IP issues.

Ethan has extensive experience in appellate work as well. He has argued appeals in such courts as the Federal Circuit, the Second Circuit, and the New York Court of Appeals, and in administrative settings, including the Patent Trial and Appeal Board. Some of his appeals involved landmark decisions relating to reversionary rights under the Copyright Act, the status of well-known marks, and issues of attorney-client privilege in patent cases.

Ethan is the author of Horwitz on Patent Litigation (Vols. 1–3) and Horwitz on World Trademark Law (Vols. 1–5), editor of Intellectual Property Counseling and Litigation (Vols. 1–7), and co-author of Patent Office Rules and Practice (Vols. 1–13), all published by LexisNexis Matthew Bender.

He has also authored Patent Litigation: Client Handbook and Trademark Law and Practice in the United States (translated into Japanese) (Yoshodo Press 2004). He is the author of numerous intellectual property articles in such publications as The National Law Journal, New York Law Journal, Managing Intellectual Property, and Metropolitan Corporate Counsel, and is an attorney author for Lexis Practice Advisor. He has served on the boards of editors of The Trademark Reporter, Commercial Damages Reporter, and Managing Intellectual Property and on Law360's intellectual property editorial advisory board.

Ethan has lectured around the world on intellectual property matters and has co-chaired the Practising Law Institute's annual Patent and High Technology Licensing program and its annual Advanced Licensing Seminar.

The owners of the Freedom credit card originally issued by Jackie Robinson's Freedom National Bank of Harlem sued Chase for issuance of the Freedom credit card. Summary judgment of non-infringement was affirmed. Trial on contempt; plaintiff held in contempt. Chase Manhattan Bank USA, N.A. v. Freedom Card, Inc., 333 F. Supp. 2d 239 (D. Del. 2004), aff'd, 432 F.3d 463 (3d Cir. 2005).

After an evidentiary hearing on trademark infringement, preliminary injunction denied. Steak n Shake Co. v. Burger King Corp., 323 F. Supp. 2d 983 (E.D. Mo. 2004). 

Ralph children's clothing licensee sued Polo Ralph Lauren based on its cancellation of license. After trial, the case was settled before decision. J. Schwab Co. v. Polo Ralph Lauren, American Arbitration Association (2003 trial).

Patent infringement action on the technology to insert material into a video (used for example to put the first down line into the field during a football game). Case settled favorably — Princeton bought Scidel — after trial but before verdict. Princeton Video v. Scidel USA Ltd., No. 1:99-cv-00386 (D. Del. 1999).

Trial resulting in landmark decision enjoining Nabisco from using a fish-shaped cheese cracker based on dilution of Pepperidge Farm's famous Goldfish crackers. Affirmed on appeal. As a result of this case, Ethan testified before Congress regarding amending the dilution laws. Nabisco, Inc. v. PF Brands, Inc., 50 F. Supp. 2d 188 (S.D.N.Y. 1999), aff'd, 191 F.3d 208 (2d Cir. 1999).

Unilever and Calvin Klein brought this preliminary injunction against L'Oreal and Ralph Lauren to prevent Polo from launching ROMANCE perfume claiming it infringed the trade dress of Calvin Klein's ETERNITY. After a multiweek trial, preliminary injunction was denied. ROMANCE went on to replace ETERNITY as the world's best-selling perfume. Conopco, Inc., v. Cosmair, Inc., 49 F. Supp. 2d 242 (S.D.N.Y. 1999).

Arbitration trial involving false advertising on claims relating to dishwashing liquid. Benckiser N.V. v. Colgate-Palmolive Co., No. 1:98-cv-00275 (S.D.N.Y. 1998).

Two-week trial on copyright and Lanham Act case resulting in a decision for defendants, affirmed on appeal. Ethan also argued a related case in China. Procter & Gamble Co. v. Colgate-Palmolive Co., No. 1:96-cv-09123, 1998 WL 788802 (S.D.N.Y. Nov. 9, 1998), aff'd, 199 F.3d 74 (2d Cir. 1999).

After an evidentiary hearing on a trademark claim, the court issued a preliminary injunction. Kraft General Foods, Inc. v. Allied Old English, Inc., 831 F. Supp. 123 (S.D.N.Y. 1993).

After an evidentiary hearing, the court used its extraterritorial power to preliminarily enjoin the use of "Philadelphia" on cream cheese sold in Brazil and Argentina. Kraft General Foods, Inc. v. BC-USA, Inc., 840 F. Supp. 344 (E.D. Pa. 1993).

After an evidentiary hearing, a preliminary injunction issued preventing the use of "gelatin" to describe carrageenan, which dictionaries define as "gelatin" although it lacks the characteristics of traditional gelatin. Kraft General Foods, Inc. v. Del Monte Corp., No. 1:93-cv-04413, 1993 WL 557864 (S.D.N.Y. Sept. 22, 1993).

Preliminary injunction issued after evidentiary hearing against Sara Lee copying packaging of LUNCHABLES, the best-selling new food product in industry history — first preliminary injunction ever issued on a design patent. Oscar Mayer Foods Corp. v. Sara Lee Corp., 1990 WL 114745 (W.D. Wis. 1990).

After trial on the merits of trademark infringement, the case settled — defendant agreed to drop the product in issue — after trial but before verdict. General Foods, Inc. v. Beatrice Hunt Wesson, No. 88-cv-8757 (S.D.N.Y.).

Playboy Enterprises. Various evidentiary hearings in New York, California, Florida, New Jersey, and Utah as to the sufficiency of the evidence to support an ex parte TRO and seizure of counterfeit Playboy goods. These actions were prior to the Anti-Counterfeiting Act.

Other Trials and Significant Evidentiary Hearings

Shortly before trial, lead counsel took ill and could not try the case. Ethan was asked to "coach" the second chair who stepped up to take the trial. In re Certain Nitrile Gloves, ITC Inv. Nos. 337-TA-608, 337-TA-612 (2008).

Freixenet, S.A. v. Admiral Wine & Liquor Co., 731 F.2d 148 (3d Cir. 1984).

Olay Co. v. Cococare Products, Inc., No. 81-cv-4102, 1983 WL 44369 (S.D.N.Y. Apr. 19, 1983).

Playboy Enterprises v. P. K. Sorren Export Co., No. 81-cv-1264, 1983 WL 178 (S.D. Fla. Jan. 5, 1983).

Landmark case using the "hot news" doctrine to prevent the Commodity Exchange from basing a trading vehicle on the S&P 500. Standard & Poor's Corp. v. Commodity Exchange, Inc., 538 F. Supp. 1063 (S.D.N.Y. 1982), aff'd, 683 F.2d 704 (2d Cir. 1982).

Trial and appeal of a landmark case leading to passage of the anti-counterfeiting section of the Lanham Act. Playboy Enterprises, Inc. v. Baccarat Clothing Co., 692 F.2d 1272 (9th Cir. 1982).

Playboy Enterprises, Inc. v. Chuckleberry Publishing, Inc., 511 F. Supp. 486 (S.D.N.Y. 1981), aff'd, 687 F.2d 563 (2d Cir. 1982).

Trial for patent infringement requesting an injunction against the use of BIC Windsurfers in the LA Olympics. Directed verdict for client after defendant's case in chief. Windsurfing v. BIC (S.D.N.Y.).

Other Important Decisions – Lead Counsel

Decision by the New York Court of Appeals on a question of rights of a famous mark referred to it by the Second Circuit. ITC Ltd. v. Punchgini, Inc., 880 N.E.2d 852 (N.Y. 2007).

Decision on protection of a well-known mark not used in the United States. ITC Ltd. v. Punchgini, Inc., 373 F. Supp. 2d 275 (S.D.N.Y. 2005), aff'd, 482 F.3d 135 (2d Cir. 2005).

Landmark decision on author's reversion rights under the 1976 Copyright Act. Marvel Characters, Inc. v. Simon, 310 F.3d 280 (2d Cir. 2002).

Often-cited decision involving attorney-client privilege. Dorf & Stanton Communications, Inc. v. Molson Breweries, 100 F.3d 919 (Fed. Cir. 1996).

Landmark decision involving the jurisdiction of the Federal Circuit. Dorf & Stanton Communications, Inc. v. Molson Breweries, 56 F.3d 13 (2d Cir. 1995).

Decision denying preliminary injunction due solely to delay without the need to address the merits of the case. The case created an informal rule regarding the timing of motions for preliminary injunctions in the Second Circuit. Chase Manhattan Corp. v. Northwest Mutual Life, No. 1:92-cv-04978, 1993 WL 60602 (S.D.N.Y. Mar. 1, 1993).

When JP Morgan and Chase merged, it adopted the name JP Morgan Chase. Morgan Chase, a 20-year-old national financial company, sued for trademark infringement. Despite demands in the hundreds of millions of dollars, the case settled the morning of the pretrial conference for less than $2 million. Morgan Chase v. JP Morgan Chase, U.S. District Court in Michigan.