Oren Gelber practices in the areas of trademark, copyright, and patent litigation before the Federal Courts and the Trademark Trial and Appeal Board. Ms. Gelber counsels domestic and international clients regarding copyright filings and registrations, trademark prosecution, intellectual property transactions, intellectual property portfolio management and protection, and litigation strategy. Ms. Gelber works with clients from a broad range of industries, including apparel, software, construction, hospitality and entertainment. Before joining the firm, Ms. Gelber practiced in the areas of federal securities regulation and commercial litigation. Ms. Gelber also previously worked in pharmaceutical research.
Costco Wholesale Corp. v. Omega S.A.
(U.S. Supreme Court; U.S. Court of Appeals, Ninth Circuit; U.S. District Court, Central District of California)
- Member of team representing firm client, the watch company Omega S.A., sued the retail chain Costco for copyright infringement arising from Costco’s unauthorized sale of gray market OMEGA watches. The Ninth Circuit agreed with our position that the Copyright Act’s “first sale” doctrine, 17 U.S.C. § 109(a), applies only to copyrighted items that are made and distributed in the United States. An equally divided U.S. Supreme Court affirmed.
The Swatch Group Management Services Ltd. v. Bloomberg L.P.
(Southern District of New York)
- Member of team representing Swiss public company as plaintiff in copyright infringement action arising from defendant media organization’s distribution of an unauthorized recording of our client’s conference call with financial analysts. The District Court upheld our complaint and denied defendant’s motion to dismiss. The Second Circuit eventually reversed on other grounds.
Balenciaga Corporation v. Steve Madden, Ltd.
(Eastern District of New York)
- Member of team representing French fashion house Balenciaga in lawsuit for copyright infringement, unfair competition and deceptive trade practices filed against competitor. Case arose from defendant’s advertisement and distribution of shoes whose design infringed our client’s rights. Case settled on terms favorable to client.
The Swatch Group (U.S.) Inc. v. Stürhling Original LLC
(Eastern District of New York)
- Member of team representing owner of the HAMILTON watch brand in trade dress litigation brought against competitor. We argued that the HAMILTON Ventura watch’s distinctive face and design attributes was protectable trade dress, and that defendant’s STÜRHLING Ricochet watch infringed client’s rights. Case settled on terms favorable to client.
Swatch S.A. v. Tick Tock, Inc.
(Southern District of Florida)
- Member of team that successfully represented the Swiss watchmaker Swatch S.A. in lawsuit involving unauthorized gray market sales SWATCH brand watches.
Omega, S.A. v. Susan Eisen, Inc.
(Western District of Texas)
- Member of team that successfully represented owner of trademark OMEGA for watches in action challenging retailer’s use of the OMEGA trademark so as to suggest — incorrectly — that defendant was a part of plaintiff’s network of authorized dealers of OMEGA watches.
Archie Comic Publications, Inc. v. Betty Rides, Inc.
- Represented our client, publisher of the Archie comic book series, in successfully opposing applicant’s attempt to register the mark BETTY RIDES for apparel and accessories.
Luxury Goods Int’l (LGI) SA v. Shenzhen Shenchuang Electrical Appliance Co., Ltd.
- Represented our client, owner of the famous YSL trademark, in successfully opposing application to register trademark YSC.
Honors, Articles, and Speaking Engagements
- “Trademark Infringement on Social Networking Sites,” article published in Consulegis IP Newsletter (October 2009)
- “Virtual Worlds, Current and Impending IP Issues,” article published in The Intellectual Property Strategist (August 2009)
- “Trademark, Copyright, Cybersquatting, Privacy Policies and User Agreements Applied to Business Conducted Over the Internet – Website and Domain Disputes,” presentation made at Pace University School of Law Continuing Legal Education Center (May 2009)
- “Pro-IP Act Amends Copyright and Trademark Laws,” article published in Consulegis Newsletter (October 2008)
- New York State
- United States District Court, Southern District of New York
- United States District Court, Eastern District of New York
Ms. Gelber is a graduate of New York University (B.A. magna cum laude) and Benjamin N. Cardozo School of Law (J.D.).