Barry Felder is a partner at Foley & Lardner LLP and a member of the Business Litigation & Dispute Resolution, IP Litigation, and Privacy, Security & Information Management Practices.
In his 30 years of practice, he has successfully worked on a diverse range of matters ranging from his role as co-trial counsel in People v. Sihpol, the first "late-trading" case brought to trial by Eliot Spitzer's office (after a six week trial, the jury acquitted Mr. Sihpol of 29 felony counts) to representing Playboy Enterprises in cutting edge litigation challenging as trademark infringement and dilution the sale of the term "playboy" as a keyword by an Internet search engine. Mr. Felder has extensive experience in the real estate workout and foreclosure arena, having foreclosed on hundreds of multi-family, hotel, shopping center and office building properties for leading financial institutions throughout the country in both federal and state courts.
Mr. Felder has been Peer Review Rated as AV® Preeminent™, the highest performance rating in Martindale-Hubbell's peer review rating system and was selected for inclusion in the 2006-2012 New York Super Lawyers® lists. He has also co-authored a book entitled "Information Technology Litigation: Law and Analysis," published by ALM/Law Journal Press.
Mr. Felder is a graduate of Fordham Law School (J.D., cum laude, 1977) where he served as commentary editor of the Fordham Law Review. He earned his bachelor’s degree from Hofstra University (B.A., magna cum laude, 1974) and graduated Phi Beta Kappa.
Mr. Felder is admitted to practice in California, New Jersey and New York and before the Supreme Court of the United States, U.S. Court of Appeals for the Second and Ninth Circuits and various Federal District Courts.
Reported Decisions
- Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020,69 U.S.P.Q. 2d1417 (9th Cir. 2004) (in reversing the District Court's grant of summary judgment the Ninth Circuit became the first Circuit Court to hold that use of trademarks in buried code for purposes of prompting contextual advertisements constitutes "trademark use").
- MAG Portfolio Consultant, GMBH v. Merlin Biomed Group LLC, 268 F.3d 58 (2d Cir. 2001) (vacating order compelling arbitration; the Circuit changed its position as a result of the oral argument).
- MT Property, Inc. v. IRA Weinstein and Larry Weinstein, LLC, 50 A.D.3d 751, 855 N.Y.S.2d 627 (2d Dep't 2008) (Appellate Division reversed the lower court and granted summary judgment dismissing plaintiffs' unjust enrichment claim based on an alleged implied agreement where a written agreement between the parties expressly covered the subject matter).
- Robert Plan Corp. v. Perot Systems Corp., 278 A.D.2d 119, 718 N.Y.S.2d 50 (1st Dep't 2000) (upholding lower court's dismissal of punitive damages claims and all claims against Ross Perot individually).
- Wells Fargo Bank Minnesota, N.A. v. Mark F. Cohn, 4 A.D.3d 189, 771 N.Y.S.2d 649 (1st Dep't 2004) (New York's one action rule does not apply where property securing the loan is out of New York State).
Trademarks and Unfair Competition
- Lead counsel to a well-known publishing and entertainment company in cutting-edge litigation challenging as trademark infringement and dilution the sale of the term "playboy" as a keyword by an Internet search engine.
- Represented manufacturer of bio-medical devices, including vascular pumps, in its trade dress claim against competitor and obtained a preliminary injunction.
- Prosecuted, on behalf of a sportswear manufacturer and distributor, one of the first ICANN domain name arbitrations.
- Represented a national automobile rental company against its major competitor in an action involving Lanham Act claims arising from certain advertising claims made by the client's competitor.
Copyright
- Represented well-known manufacturing company in litigation against software vendor seeking to enjoin extraction of client data based on novel theory of database protection.
- Represented a well-known entertainment company in litigation relating to the licensing in Europe of a classic film library.
- Represented a software company in a copyright infringement suit in obtaining injunctive relief against the maker of devices that enable the unauthorized reproduction of copyrighted software.
Privacy
- Represented a leading Internet privacy services provider in a federal litigation in which the plaintiff claimed that the client had an obligation to and failed to resolve certain privacy issues between plaintiff and Microsoft and Comcast, among other defendants. Arguing that the plaintiff lacked standing to bring claims against our client, Mr. Felder obtained a complete dismissal for the client from litigation.
Trade Secrets
- Represented medical laboratory in defense of trade secret misappropriation claim.
- Representing various executives in the financial and consulting areas in defense of unfair competition/theft of trade secrets allegations.
- Represented Internet start-up venture and its founder-president in litigation involving claims of trade secret misappropriation and novel question as to whether a B2B multi-vendor web site for distributors of medical and dental supplies competes with a leading healthcare products distributor.
Technology
- Represented one of the nation's largest companies in a dispute against a former provider of computer maintenance and related services.
- Represented that company in a lawsuit brought against its major software licensor to ensure the continued operation of enterprise essential software.
Real Estate Litigations, Workouts and Foreclosures
- Represented a major real estate owner in a three week trial over the proceeds of escrow monies from a $1.9 billion portfolio sale and obtained a complete victory, including the award of the over $25 million in escrow plus attorney’s fees.
- Represented major financial institutions in federal and state court in successfully foreclosing on multifamily and commercial properties and obtaining orders, mostly ex parte, appointing receivers for those properties.
Speeches
- Speaker, ACC-GNY CLE Program, "Litigation Tactics Boot Camp: Beyond the Fundamentals," April 27, 2011.
- Panelist and Presenter, Foley Bankruptcy and Real Estate presentation with FTI Consulting, New York, "Capitalizing on Real-Estate Driven Workouts and Liquidations," February 9, 2011.
- International Trademark Association, 128th Annual Meeting, Toronto, "MAXXXIMUM EXPOSURE -- Moonshine, Major League, and Preliminary Injunction Madness"; represented the "defendant" in a moot court preliminary injunction argument, May 9, 2006.
- Speaker, PLI 25th Annual Institute on Computer & Internet Law -- "Search Engines Spawning Trademark Litigation," March 10, 2005.
- Participant, "The Main Event -- Moot Court: Trademark Protection on Trial -- Trademark v. Search," Search Engines Strategies Conference, San Jose, CA, August 27, 2004.
- Speaker, Search Engine Strategies NYC Brand Summit, "Life After Geico-Google," March 2, 2005.
- Panelist, NYSBA Intellectual Property Law Section Fall Meeting at Lake George, 2004 & 2006.
- Speaker, AIPLA Trademark Committees Meeting -- Dallas, May 14, 2004, "Playboy v. Excite: Trademarks and On-line Advertising," May 14, 2004.
Media Articles Quoting Mr. Felder
- WSJ.com, "Sihpol Headed Back to Court," July 7, 2005.
- ZDNet.10.UK, "Case Threatens Search Engines' Use of Trademarks," Jan. 16, 2004.
- Business Week (online edition), "John, Paul, George, Ringo ... and Steve?," Sept. 30, 2004 (re trademark issues between Apple Computer and the Beatles' Apple mark).
- CNN Money.com, "Ebbers gets 25 Years," Sept. 23, 2005.
- Managing Intellectual Property, "MAXXXIMUM Victory," May 10, 2006 (re above-referenced INTA moot court argument).