Cease & Desist Letters and Declaratory Judgment Actions: What Copyright, Trademark and Patent Practitioners Need to Know (Presented by The Federal Bar Association Intellectual Property Law Section)

Raymond J. Dowd | Dunnington Bartholow & Miller LLP

Raymond J. Dowd is a managing partner of the law firm Dunnington Bartholow & Miller LLP in New York City. He acts as problem-solver for businesses, not-for-profits and individuals confronting potential investigations, litigation, arbitration and mediation. He serves as lead counsel in high-stakes litigation in state and federal trial and appellate courts in disputes often centered on foreign law issues. He has obtained multimillion-dollar intellectual property judgments, recovered Nazi-looted art, and scored landmark trusts and estates decisions from Surrogate’s Court to the New York Court of Appeals (including removing the butler from the Estate of Doris Duke and representing the Republic of Germany in recovering an ancient Assyrian tablet for Berlin’s Pergamon Museum).

Ray authored Copyright Litigation Handbook in 2006 and updates it annually with decisions focusing on the Federal Rules of Civil Procedure. He has testified as a New York law expert before London’s High Court. He teaches trial advocacy through use of statistics, data and charts and use of expert witnesses at his alma mater Fordham Law School. In 2019 he received the Roger J. Goebel International Alumni Award. Current scholarship focuses on the 1907 Hague Convention on Land Warfare and its impact on art restitution claims.

Ray’s past volunteer service includes National Arts Club, Board of Governors and Chair, Audit Committee, Federal Bar Association, General Counsel and Board of Directors, Southern District of New York President, Network of Bar Leaders President, American Foreign Law Association President. He is a Fellow of the New York Bar and the Federal Bar Foundations. He serves on the Board of Directors of the Fordham Law Alumni Association, the Westhampton Beach Performing Arts Center and the Fondation des États-Unis in Paris, France.

He is conversant in French and Italian.

Olivera Medenica | Dunnington Bartholow & Miller LLP

Olivera Medenica CIPP/CIPM is an equity partner at Dunnington Bartholow & Miller LLP, and is a member of its intellectual property, privacy, advertising, art and fashion law, international, and litigation and arbitration practice groups. Olivera is also a member of Dunnington’s Executive Committee, chairs its Trademark Practice Group, Privacy Practice Group as well as its Diversity Committee.

Olivera’s intellectual property practice consists of “soft IP”: copyright, trademark and trade secrets. In addition to her litigation practice, she prosecutes trademarks before the United States Patent and Trademark Office and first chairs contentious opposition and cancellation proceedings before the Trademark Trial and Appeals Board. She has co-authored five books in the field of intellectual property: Navigating Fashion Law, Aspatore’s Inside the Minds Series, Thomson Reuters (2015 Edition); the American Bar Association’s Legal Guide to Fashion Design (2013); The Business and Law of Fashion and Retail, Carolina Academic Press (2020); The Routledge Companion to Copyright and Creativity in the 21st Century, Taylor & Francis Group (2020); The Fashion Designer Survival Guide (chapter covering IP) (2020). Olivera has also served as an arbitrator in intellectual property disputes.

Olivera is an adjunct professor of law at Brooklyn Law School where she teaches Fashion Law and an adjunct professor of law at Cardozo Law School where she teaches Advertising Law. She is also a visiting professor at Paris 1 Panthéon-Sorbonne on the topic of Fashion Law. Olivera has lectured widely on issues dealing with intellectual property, ecommerce, social media and wearable technology. Lecture engagements have included Lawline.com, the Federal Bar Association, New York County Lawyers’ Association, the New York City Bar, the New York State Bar Association, Harvard Law School, Brooklyn Law School, New York Law School, South by Southwest Interactive, Cardozo Law School, the School of Visual Arts, Manhattan School of Music, Direct Marketing Association Conference (Geek-End), and the New York Foundation for the Arts.

She has also written articles for a variety of publications including the New York Law Journal, National Law Journal, Ecommerce Law and Strategy, Brooklyn Journal of International Law, Cardozo Arts and Entertainment Law Journal, Loyola of Los Angeles International and Comparative Law Review and the Internet Law Journal. Olivera is an Advisory Board Member of the New York Law School Innovation Center for Law and Technology, Fashion Law Initiative. She is also the founder of an annual Fashion Law Conference hosted by the Federal Bar Association’s IP Section, in New York and Paris. Both conferences were featured in the Huffington Post, Forbes and Intellectual Property Watch.

Padmaja Chinta | Dunnington, Bartholow & Miller LLP

Padmaja Chinta is a partner at Dunnington where she chairs the patent practice. She is an experienced intellectual property attorney and trial lawyer. She has counseled clients on all aspects of intellectual property and various business agreements with an emphasis on litigation.

Padmaja has extensively litigated cases in federal courts across the country. Her cases span a broad spectrum of products with a particular focus on the technology field, pharmaceutical field and consumer products. She has obtained significant victories in claim constructions, summary judgment, pre-trial, and §101 motions to dismiss for her clients. She has successfully defended patents in IPR proceedings before the Patent Board. She has also represented clients in trade secret, trademark, copyright, arbitration and contract litigation.

Padmaja regularly speaks at various bar and IP conferences and has guest lectured at the Brooklyn Law School. She is a Fellow of the Litigation Counsel of America and a NY Super Lawyer. She is the immediate past president of the Federal Bar Association’s SDNY Chapter and is the national Chair of the IP Section.

Padmaja graduated from the University of Pennsylvania Law School.

I. How C&D letters can trigger DJ actions (Copyright focus) | 2:00pm – 2:20pm

• C&D basics & synopsis of DJ jurisdiction
• Case examples and strategies to minimize risk

II. How C&D letters can trigger DJ actions (Trademark focus) | 2:20pm – 2:40pm

• What matters in trademark context
• Case examples and strategies

III. How C&D letters can trigger DJ actions (Patent focus) | 2:40pm – 3:00pm

• What matters in trademark context
• Case examples and strategies