Andrew Baum

Retired Partner

Overview

A retired partner and intellectual property lawyer with Foley & Lardner LLP, Andrew Baum focused his practice on trademark, unfair competition, false advertising and copyright litigation, counseling, licensing and enforcement work on Internet domain names. Mr. Baum represented a broad cross-section of clients from the publishing, luxury goods, interactive entertainment, personnel staffing and home furnishings industries. He was a member of the firm’s Trademark, Copyright & Advertising and IP Litigation Practices and the Technology Industry Team.

Prior to joining Foley, Mr. Baum was a partner and managing principal with Darby & Darby P.C., where he represented major clients in trademark and copyright litigation, oversaw the management of international trademark portfolios, and supervised the intellectual property aspects of significant corporate transactions.

Representative Experience

Major cases include one in which he helped lead a team which defeated a $150 million damage claim for false advertising in a three-week jury trial, and successfully defended the verdict on appeal to the Eleventh Circuit. In 2013, Mr. Baum secured summary judgment dismissing a trademark infringement case brought against Foley’s client the New York Jets. In 2014, he argued and won the appeal before the Fifth Circuit.

Representative Cases

  • Action Ink, Inc. v. New York Jets, LLC, 2013 U.S. Dist. LEXIS 119926 (E.D. La. 2013), aff’d 2014 U.S. App. LEXIS 14138 (5th Cir. 2014)
  • The Topps Company, Inc. v. Panini America, Inc., 113 USPQ 2d 1808 (TTAB 2015)
  • La Montre Hermes S.A. v. Michael Akkawi, 2012 TTAB LEXIS 376 (TTAB 2012)
  • Allegiance Healthcare Corp. v. London International Group Ltd., et al, 70 USPQ 2d 1286 (11th Cir. 2004)
  • Motion Picture Association of America, Inc. v. Respect Sportswear Inc., 83 USPQ 2d 1555 (TTAB 2007)
  • Merck & Co., Inc. et al v. Mediplan Health Consulting, Inc. et al, 425 F. Supp. 2d 402 (S.D.N.Y. 2006) and 434 F. Supp. 2d 257 (S.D.N.Y. 2006)
  • Shine v. Childs, 382 F. Supp. 2d 602 (S.D.N.Y. 2005)
  • Bruce v. Weekly World News, Inc., 150 F. Supp 2d 313 (D. Mass. 2001), aff’d 310 F. 3d 25(1st Cir. 2002)

Recognition

  • The Best Lawyers in America© in the field of trademark law since 2014 
  • New York Trademark Law “Lawyer of the Year” (2015) by The Best Lawyers in America©
  • The Legal 500 for his work in the area of intellectual property – trademarks: non-contentious (2013 - 2016)
  • Peer Review Rated as AV® Preeminent™, the highest performance rating in Martindale-Hubbell's peer review rating system
  • World Trademark Review's "WTR 1000" directory (2011 and 2012)
  • One of less than 600 lawyers selected for inclusion in The International Who’s Who of Trademark Lawyers (2010-2013)
  • Who’s Who Legal (2013 and 2014)
  • Nominated by in-house counsel and his peers to appear in the eighth edition of the Guide to the World's Leading Trade Mark Law Practitioners

Affiliations

Mr. Baum is a panel member of the INTA Trademark Mediators Network which is an Alternative Dispute Resolution (ADR) program.

Education

Mr. Baum received his J.D. from Georgetown University in 1976, and received his B.A. from the University of Pennsylvania in 1972.

Admissions

Mr. Baum is admitted to practice in New York and before the U.S. Court of Appeals for the First, Second, Fifth, Ninth and Eleventh Circuits.

Recent Publications

  • “Private Affairs/Public Rights: Can Copyright Be Used to Protect Newsworthy Secrets?” Landslide, May/June 2013
  • “Limiting Discovery in TTAB Proceedings,” IP 360, January 20, 2012
  • “Hoax Websites: Even If They Deceive, Are They Trademark Infringement?” New York Law Journal, January 9, 2012
  • “It’s Harder Now to Protect Designs Under Trademark Law,” The National Law Journal, December 13, 2010
  • “Incontestable Trademark Registrations: No Guarantee,” IP 360, November 1, 2010
  • “DMCA Protection for Online Service Providers: The Safe Harbor Gets Safer,” IP 360, March 19, 2009
  • “Protecting Architectural Works: Breaking New Ground With Familiar Tools,” The Construction Lawyer (ABA), October 2007

Recent Presentations

  • Lecturer, “Special Issues in Copyright,” IP Issues in Business Transactions PLI Seminar, January 13, 2014 and January 4, 2013
  • Panel co-chair, “Managing the New Face of IP,” User-Driven IP 4.0: High Stakes. High Rewards (Foley & Lardner’s eighth annual IP conference), October 22, 2012
  • Panel co-chair, "Navigating the New World of Domain Names," The Exponential Speed of Innovation: Is IP Driving Your Business? (Foley & Lardner’s seventh annual IP conference), September 19, 2011
  • In-House lecture, "What Every Lawyer Should Know About False Advertising," June 16, 2009
  • Webinar, "What You Need to Know About The DMCA," March 17, 2009
  • Lecturer, "Overcoming Ethical Challenges in IP Practice," Intellectual Property Law Update sponsored by National Business Institute, Washington, D.C., October 17, 2008
  • Panel chair, "IP Gone Wild," Foley IP Conference "The Great Debate," New York, September 29, 2008
  • Panelist, "IP Defense and Brand Protection," 20th Annual ALM General Counsel Conference, New York, June 9, 2008

Representative Matters

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In a trademark infringement action, Foley obtained summary judgment for defendant New York Jets LLC, (the entity that owns and controls the New York Jets). Specifically, the action involved the New York Jet’s use of the phrase “Ultimate Fan” in a Facebook-based web application and computer game. Action Ink, Inc., a sports marketing firm, filed a complaint against the New York Jets and its games developer, Arkadium Inc., claiming that the defendants' use of "Ultimate Fan" on the teams' social networking applications violates Action Ink's trademark rights in the phrase. Actions Ink, who also provides online contests under the "Ultimate Fan" name, has a federal registration for "Ultimate Fan" and claims that it has been using the registered trademark since 1983 in connection with its contests. Action Ink alleged that the Jets' use of "Ultimate Fan" is likely to confuse consumers as to the source of both the Jets' and Action Ink's contests and as to whether the two entities are associated in some manner. Ultimately, however, the New York Jets LLC scored a win when a Louisiana federal judge ruled that the sports marketing company no longer owned the trademark to “Ultimate Fan,” which it had claimed was nearly identical to the label the team has used in applications on social networking sites including Facebook.
Foley represented the Motion Picture Association of America in the opposition to registration of "PG-13" for an arts magazine. Case has been settled on favorable terms for client including withdrawal of application.
Handled all trademark clearance, registration, maintenance, and enforcement worldwide, and all counseling and enforcement on copyright and unfair competition issues for The Topps Company, a creator and brand marketer of sports cards, entertainment products, and distinctive confectionery.

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