Randy Lipsitz represents clients in all aspects of intellectual property litigation, transactional work and counseling. Over the course of a career spanning more than three decades, Mr. Lipsitz has handled litigation and transactional matters involving patents, trademarks, copyrights, trade secrets and other forms of intellectual property, across a broad spectrum of industries, including software, hardware, Internet, automotive, financial services, advertising, fashion, entertainment and publishing. He has enforced numerous design and utility patents for clients, and has defended other clients against charges of infringement. Mr. Lipsitz represents clients in state and federal courts in bench and jury trials, in arbitration matters and in cases before the International Trade Commission.
Some of Mr. Lipsitz’s most notable work includes successfully representing Condé Nast and Vogue magazine in a multifaceted litigation involving all aspects of intellectual property including both patents and trademarks; obtaining a reversal by the Second Circuit Court of Appeals of a lower court decision that had banned world-famous men’s fashion designer Joseph Abboud from using his name commercially; obtaining for Paolo Gucci the right to use his name as a high-fashion designer in a hotly contested trial against his family’s Gucci business; and representing the Princess Diana Memorial Fund shortly after her tragic death in connection with rights of privacy and publicity, and trademark enforcement matters.
— Kramer Levin obtained dismissal with prejudice of all patent infringement claims asserted against WABCO and five of its customers by Elen IP, a non-practicing entity patent owner. WABCO, a global leader in commercial vehicle braking, stability, suspension and transmission control systems, was sued last year in the Western District of Washington (Seattle), which is emerging as a popular venue for plaintiffs to commence patent infringement suits. Elen IP asserted that WABCO's RSSplus and RSS truck and bus rollover warning and prevention products, designed to prevent vehicle rollover accidents, infringed the claims of its patent. Based on WABCO’s compelling non-infringement defenses, initially presented in a motion to dismiss for failure to state a plausible cause of action, Kramer Levin convinced Judge Ricardo Martinez to issue an unusual Order which stayed general discovery and limited discovery to the threshold issue of infringement. This allowed Kramer Levin to establish in a cost effective manner that there was no basis for Elen IP to continue to pursue its patent infringement claims, leading to a stipulated dismissal of WABCO and its customers.
— Website vendor Active8, hired by Vogue to prepare a website for its September 2004 Fall Fashion Issue, sued Condé Nast in Atlanta seeking millions of dollars in damages after Vogue changed to a different website vendor for subsequent magazine issues, even though there has never been a dispute that Vogue was free to do so. Over the life of the six year case, Active8 asserted a number of charges against Condé Nast. The next phase involved removal of the patent infringement claims from the case by successfully arguing for a favorable patent claim term constructions that forced Active8 to jettison its patent claims as untenable. During this time, Vogue’s replacement website vendor, RichFX, was unable to bear the strain of the litigation and filed for bankruptcy. The next successful phase included the dismissal of Active8’s numerous remaining claims on summary judgment by establishing they had no affirmative evidence to prove their case. After lengthy briefing and oral argument in October 2010, Judge Hellerstein dismissed all of Active8’s remaining claims against Condé Nast. However, he also gave Active8 an opportunity to replead. Condé Nast then filed a new motion for summary judgment on Active8’s repled claim. That motion was argued on June 22nd and Judge Hellerstein granted Condé Nast’s motion for summary judgment.
— On June 10, 2009, the U.S. Second Circuit Court of Appeals vacated an injunction prohibiting Kramer Levin client and well-known fashion designer Joseph Abboud from using his name “commercially”, particularly, in connection with his new “JAZ” collection of high-end men’s clothing, and remanded the case for further proceedings before the U.S. District Court for the Southern District of New York. This is a huge victory for our client, though the case is now back in the hands of the District Court. The Second Circuit’s decision arises out of a hotly-contested dispute between Mr. Abboud and JA Apparel Corp. as to whether Mr. Abboud’s sale of his eponymous trademarks to JA Apparel Corp. included the use of his signature name to identify himself professionally in connection with his commercial activities; and, if not, whether federal trademark law afforded him “fair use” of his “individual name in his own business”, notwithstanding his sale of such trademarks.