Rose Auslander, Partner - Carter Ledyard & Milburn LLP Attorney

Practice Areas

Intellectual Property, Litigation, Art Law

Practice Description

Intellectual Property, protecting character properties such as the Hulk, the Muppets, and The Supreme Chicken, as well as record label, television, publishing, fashion, computer software, financial service, Internet-related, and consumer product clients; trademark, trade dress, domain name, dilution, unfair competition and copyright litigation; the negotiation and drafting of trademark and copyright assignments, licenses, and co-existence agreements; trademark and domain name clearance; and the prosecution of trademark and copyright applications.

Education

B.A., 1989 The City University of New York (magna cum laude)
J.D., 1992 New York University School of Law (magna cum laude; Articles Editor, New York University Law Review; Order of the Coif; Morton Geller Award; American Jurisprudence Prize for Civil Procedure)

Admissions

1993 New York
1994 U.S. District Courts, Southern and Eastern Districts of New York
1996 U.S. District Court, Eastern District of Michigan
1998 U.S. Court of Appeals, Second Circuit
1999 U.S. Court of Appeals, Sixth Circuit

Affiliations

Copyright Society of the U.S.A. (Co-Chair, New York Chapter)
International Trademark Association (Member, Publishing Committee)
American Bar Association (Member, Intellectual Property Law Section)
The Association of the Bar of the City of New York
Ice Theatre of New York (Board Member)

Awards/Honors

October 2003, Alumni of the Month (ALMO), New York University School of Law

Publications Available on this website...

"Counseling Clients in the Era of Internet IP Wars," Common Issues in IP Law, July 2008

Additional Publications

"Madrid Protocol Opens New Options For Trademark Owners," Client Advisory, December 16, 2003 (co-authored); "What Protection Remains for Color Trademarks?" New York Law Journal, November 12, 2002 (co-authored); "Rethinking Procedures on Domain Name Disputes," The National Law Journal, May 13, 2002 (co-authored); "Can Dilution Apply to Product Design?," New York Law Journal, January 22, 2002; "Small Trademark Owner Face Higher Hurdles," New York Law Journal, October 12, 2001; "Domain Name Deadlines: A Sensible Approach to .info and .biz," Client Advisory, June 25, 2001; "Autopsy of a Dot Com: The Legal Briefs," ComputerWorld, January 19, 2001 (co-authored); "Protecting Trademarks From the Threat Posed by the New Internet Domain Names," Intellectual Property Strategist, December 2000 (co-authored); "New Domain Name Concern for Trademark Owners," ComputerWorld, October 19, 2000, (co-authored); "Urgent Domain Name Advisory for Trademark Owners," Client Advisory, October 24, 2000 (co-authored); "Keeping Sensitive Information Private," New York Law Journal, June 8, 1999; "Is That Design Inherently Distinctive?," New York Law Journal, November 2, 1998 (co-authored); "Trade Dress Protection: Will a Statutorily Unified Standard Result in a Functionally Superior Solution?," 88 Trademark Reporter 472, September/October 1998 (co-authored)

Presentations

International Trademark Association 2007 Annual Meeting: "Keywords, Metatags, and Other Trademark Issues on the Web," May 2, 2007

PLI: Panelist, "Analysis of a Content License Agreement," March 28, 2008, March 30, 2007, March 7, 2006 and March 8, 2005

Center for International Legal Studies:

"Internet Wars: Copyright versus Access," April 27, 2007
"Is There Life After Grokster?," October 22, 2005

International Bar Association (IBA):

Panelist, "Digital Rights Management -- Wishful Thinking or an (Upcoming) Revolution?," September 29, 2005
Panelist, "Global Anti-counterfeiting Campaigns," October 27, 2004

U.S. Copyright Society:

Moderator, “The 10th Anniversary of the DMCA, Part 1: Do We Digg DRM?,” March 26, 2008
Moderator, "Google Book Search: Mere Online Card Catalog, or Book Napster?," April 11, 2006
Moderator, "Technology To the Rescue? Whether DRM and Free Markets Can Tame Illicit File Sharing, Without Compulsory Licensing or Other Legislative Intervention," December 16, 2004
Moderator, "Are You Covered? Insurance Against IP Claims," March 22, 2002
Introduction, "Latest Developments in International Copyright Law," December 8, 2002

United Business Media: "Smart Information Management," December 3, 2002

Surtex: Javits Center, "Protecting Your Art & Design," May 20, 2002

The Woman's Connection: Cable TV, "Domain Name Issues," Fall 2000

Prior Experience

1994-2000 Litigation Associate, Fross Zelnick Lehrman & Zissu
1992-1994 Litigation Associate, Cravath, Swaine & Moore

Illustrative Matters

Handled disputes and transactions concerning marks for services and products ranging from hedge fund management and computer software to boxer shorts; and trade dress and copyright rights for products as diverse as vodka and toy helicopters. She has litigated trade dress, trademark and copyright actions for Fortune 500 companies, as well as clients from around the world:

Represented Marvel Characters, Inc. in achieving amicable resolution of a lawsuit with Terry Bollea over use of the marks HULK HOGAN, HULKAMANIA, HULKSTER, HOLLYWOOD HOGAN and HOLLYWOOD HULK HOGAN.
Represented the plaintiff in TT Sounds Good AB v. Tommy Lee, MCA Records, Inc., and Universal Music & Video Distribution, Inc., a “reverse” trademark infringement and dilution case in the United States District Court for the Southern District of New York concerning the mark METHODS OF MAYHEM, which was amicably resolved.
Represented Cosmos European Travels AG in its successful arbitration for the domain name cosmos.com and won summary judgment in the District Court appeal of that decision.
On behalf of Sun Pharmaceuticals, Inc., required a web site to take down infringing material and post apology for offering an invalid BANANA BOAT promotion.
On behalf of The Beadnicks Group, Inc., successfully required shut down of web site that was infringing the mark BEADNIKS.
Successfully defended Sixty, Inc. and Seize S.A. from claims that their watch design infringed and diluted TechnoMarine’s TechnoDiamond watch.
Successfully challenged the infringement of copyrighted works and obtained a substantial licensing fee for Allison-Fisher International LLC.
Successfully represented Stephen Webster in an appeal in the United States Copyright Office, obtaining copyright registration for its signature CRYSTAL HAZE jewelry line.
Obtained registration of the color “bright green” for super-human action figures on behalf of client Marvel Characters, Inc.
Represented Spectel Group Ltd. in its successful opposition before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office against an application to register SPECTEL LLC and Design, which application is now abandoned.
Negotiated a comprehensive co-existence agreement between a major record label and the Experience Music Project – a museum designed by architect Frank Gehri and backed by Microsoft co-founder Paul Allen – achieving agreement in principle in time for the museum’s nationally-publicized June 2000 opening.
Also in the Spring of 2000, assisted Internet-related client Webfaze, Inc. in its successful acquisition of the domain name webphase.com.
In Lane Capital Management, Inc. (1999), successfully represented the plaintiff in its motion for summary judgment in the United States District Court for the Southern District of New York, and successfully argued the Second Circuit appeal. Central to the Lane case was the test for determining when a mark is “primarily merely a surname” – an issue of first impression in the Second Circuit.
Represented the Carvel Corporation in its victory at trial before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office in 1999, prevailing against a former licensee’s attempt to register the mark The Ice Cream Bakery.
Was a member of the team that successfully defended Jim Henson Productions against Hormel Food Corporation’s well-publicized claims that SPA'AM, a wild boar Muppet in the movie Muppet Treasure Island, tarnished Hormel’s mark SPAM. The team was victorious in the United States District Court for the Southern District of New York (1995) and the Second Circuit (1996) on cutting edge issues of dilution and First Amendment law.
Drafted the successful preliminary injunction briefs in Carillon Importers Ltd. v. The Frank Pesce Group, Inc. (1996), a case brought in the United States District Court for the Southern District of Florida to halt the use of a trade dress that was confusingly similar to that of Stolichnaya Cristall vodka.