Milton Springut, Partner
Practice Areas: Patent Litigation, Trademark and Copyright Litigation, Trade Secret Litigation, Trade Dress, Anti-Counterfeiting, Licensing & Technology Transactions, Patent Prosecution, Trademark Prosecution
Industries: Fashion & Luxury Goods, Computer Software and Hardware, Electrical and Electronic Arts
P: (212) 813-1600
F: (212) 813-9600
Milton is the founding partner of Springut Law where he specializes in intellectual property litigation and counseling and is one of the country’s few experts in fashion and luxury goods IP. Milton also litigates and prosecutes patents in the scientific disciplines, including electrical and electronic systems, computer hardware and software, and business systems, drawing on his experience at Bell Telephone Laboratories, where he developed computer hardware and software systems.
Fashion & Luxury Goods Practice
Over 25 years of practice, Milton has earned a reputation as one of the country’s most skilled litigators of trademark, counterfeiting, and gray goods cases, representing the world’s top luxury brands and international fashion houses. He has served as the full-service outside advisor to Richemont (Cartier, Montblanc, Van Cleef & Arpels, Chloe), Gucci, Guess?, and others, in their patent, design patent, copyright, trademark, and trade dress strategies, and in defending their premium IP rights through litigation. In doing so, Milton successfully implemented procedures to combat the proliferation of counterfeit and gray goods, directing both investigations and legal proceedings.
Milton’s fashion-related litigation accomplishments include:
- Chloe v. Queen Bee, in which the Second Circuit made a ground-breaking decision on internet personal jurisdiction, allowing trademark owners to bring suit in a more convenient location, and not only where a counterfeiter resides;
- Guess? v. Gold Center Jewelry, the first U.S. case to impose statutory damages for counterfeit goods under the Anti-Counterfeiting Act of 1996;
- Gucci America v. Hall & Associates, which established that Internet Service Providers are not immune from secondary liability for trademark infringement for infringing content posted on internet websites;
- Cartier v. Four Star Jewelry Creations, where Milton established an effective means and method for plaintiffs to secure valid trade dress rights;
- Act II Jewelry, LLC v. Zhu, in which a $1 Million judgment was obtained and collected against an on-line counterfeiting operation. The jury found the principal’s husband to be her partner in the counterfeiting business, rendering him liable for treble damages;
- Van Cleef & Arpels v. Heidi Klum GmbH, where a “family of trade dress” theory in the client’s line of highly successful jewelry designs was asserted against a similar line marketed by the famous fashion designer Heidi Klum, resulting in a highly favorable settlement;
- McAfee, Inc. v. Cao, a counterfeiting case, in which a TRO was obtained against the New York City Police Department enjoining the return of funds seized in a raid after the criminal fine was paid by the counterfeiter. The counterfeiter soon settled the case, with the bulk of the frozen funds paid out to McAfee in settlement;
- Gucci America, Inc. v. Costco, Inc., where after several incidents of infringement by the national warehouse chain, a settlement was negotiated that included entry of a permanent injunction barring sales of any goods, genuine or counterfeit, bearing the GUCCI mark for fifteen (15) years.
Patent Litigation Practice
During Milton’s professional experience, he has been counsel in numerous patent, trade secret, and computer law litigations. Milton’s experience encompasses a broad range of technologies including computer processors and related hardware and software, mobile payments, electronic commerce, telephony, security systems, video systems, medical devices, and financial services systems. Milton’s clients in this area include both Fortune 500 companies and internet start-ups.
These actions include:
- Leviton Manufacturing Co. v. Greenberg Traurig, in a patent malpractice lawsuit against one of the largest U.S. law firms, working with malpractice counsel, Milton obtained a highly favorable and sizable settlement. Persuasively jumping the multitude of hurdles for proving a “case-within-a-case,” against an aggressive defense by another leading trial firm, on complex allegations of misconduct over an extended period of time relating to both patent litigation and prosecution laid the foundation for settlement;
- Several internet media clients sued for infringement by Mobile Transformation LLC, a patent troll, relating to infringing a patented system and method for displaying advertisements along with video, photo and text content. The plaintiff had previously brought some twenty suits against various media companies, many of which settled for undisclosed sums. Milton directed the research and analysis of the prior art, and presented arguments that the patent was not valid, resulting in a dismissal and settlement where the client did not pay the troll a dime;
- E. I. DuPont de Nemours & Co. v. Millenium Chemicals Inc., negotiated a favorable settlement for defendant in patent litigation involving titanium oxide formulations;
- General Electric Co. v. Prince, negotiated a favorable settlement for the inventor declaratory judgment-defendant in patent litigation involving MRI technology;
- Honeywell International Inc. v. Electrolux Home Products, Inc., negotiated a favorable settlement for the plaintiff-patent owner in litigation regarding turbidity sensor technology used in home appliances;
- Honeywell International Inc. v. Gollomp, negotiated a favorable settlement for the plaintiff-patent owner in litigation regarding ownership of intellectual property rights in air filter technology;
- In re Relafen; In re Ciprofloxacin; In re Augmentin; In re K-Dur; In re Paxil; In re Wellbutrin; In re Tamoxifin; In re Plavix; In re Tricor, where in multiple antitrust litigations, as patent counsel reviewed and analyzed the work of prior patent prosecution attorneys and patent litigators in the context of allegations of fraud on the Patent Office and sham litigation;
- Vetrerie Bruni SpA v. Shonfeld’s (USA), Inc., where in a case involving a design patent for a decorative bottle, the patent marking statute was used to force a substantial cut in plaintiff’s settlement demand, resulting in a much more favorable settlement for our client;
- Datastrip International Ltd. v. Symbol Technologies; Datastrip International Ltd. v. Intacta Technologies, where the plaintiff-patent owner was represented in patent litigation involving two-dimensional bar-code technology.
Milton has been selected as a Super Lawyer in the field of intellectual property litigation and rated by Martindale-Hubbell as an AV Preeminent® lawyer, its highest rating. He holds a B.S., Electrical Engineering from the City College of New York, an M.S., Electrical Engineering and Computer Science from Columbia University and a J.D. from Seton Hall University. He is admitted to practice before the U.S. Patent and Trademark Office, is a member of the Association of the Bar of the City of New York, and the New York Patent, Trademark and Copyright Law Association, and frequently lectures on intellectual property matters before professional associations including the American Bankruptcy Institute (CoChair IP Asset Presentation Panel), the International Anti-Counterfeiting Coalition (Co-Chair – Attorney/ Investigator Task Force), the American Intellectual Property Law Association, the Alliance for Gray Market and Counterfeit Abatement, the World Trade Institute, the Software Publishers Association (Chair – Software Piracy Panel) and the United States Customs Service.
New York Law Journal Articles
- 2018 "Court Extends Non-Compete Law to IP Licensing Agreements"
- 2018 "Are You a Trademark Bully? How to Avoid Being and Being Labelled as One"
- 2017 "Decisions Highlight Need to Rethink IP Protection Strategies for Product . . ."
- 2017 "Fastener Case Gives SCOTUS Opportunity to Resolve Trademark . . ."
- 2017 "Federal Circuit Decision Highlights Traps in Provisional Application Practice"
- 2016 "Second Circuit Strengthens Grey Goods Enforcement Law"
- 2016 "Thanks but no Thanks: 'Citigroup' and Lessons on Trademark Litigation"
- 2016 "Analyzing Potential Conflicts in Patent Prosecution"
- 2016 "Maling Decision Highlights Ethical Booby Traps in Patent Prosecution"
- 2015 "Unusual Cases Sharpen Copyright Law Principles"
- 2015 “Heightened Cybersecurity Concerns Impact IP Strategies and Assessments”
- 2015 “Macy’s Department Store Case Highlights Issues of Trademark . . .”
- 2015 “High on IP: Marijuana-Related Intellectual Property Law”
- 2014 “Insurance Decision Sheds Light on Coverage in Trademark Disputes”
- 2014 “Is ‘Bait and Switch’ Advertising Actionable Under the Lanham Act?”
- 2014 “Decision Shows What Can Go Wrong in Trying to Protect A Trade Secret”
- 2013 “‘Winfrey’ Decision Addresses Advertising Slogans as Trademarks”
- 2013 “New Strategies for Grey Market Protection in Wake of ‘Kirtsaeng’”
- 2012 “Second Circuit Hold Clauses Not to Challenge Patents Unenforceable”
- 2012 “Federal Circuit Clarifies Pleading Standards for Patent Infringement”
- 2012 “Cases Make Evidentiary Use of Copyrighted Materials Easier”
- 2011 “Impact of Second Circuit’s Preliminary Injunction Standard After ‘Salinger’“
- 2011 “Innovation in the 21st Century: Patent Standards for Non-Obviousness”
- 2011 “Patent Infringements and Systems Claims in the Information Age”
- 2010 “‘Aspex Eyewear:’ Warning on Dismissal of Patent Cases on Estoppel . . .”
- 2010 “Missed Opportunities to Clarify Analyses for Design Patents”
- 2010 “Assessing Impact of Bose on Fraud Standard in Trademark Practice”
- 2009 “Moving Forward on Patentable Subject Matter After ‘Bilski’”
- 2009 “Fraud Doctrine on Trademark Applications Remains Minefield”
- 2009 “Court Reemphasizes Importance of Written Description for Patents”
- 2008 “Distinct Points-of-Novelty Test for Design Patents Ends”
- 2008 “California Slows Usage of Fiduciary Duties in Licensing”
- 2007 “The Independence of the Patent Office and the Courts”
- 2007 “How Much Is That Patent Worth?”
- 2007 “Trade Dress, Trademark Distinction Meaningful Again?”
- 2006 “Early Is Better Than Late for Strategizing Your Patents”
- 2006 “Broadest Scope of ‘Inequitable-Conduct’ Materiality Is Endorsed”
- 2005 “It’s Time to Pay Closer Attention to Digital Millennium Copyright”
- 2005 “Integra: a Fatal Blow to Biotechnology?”
- 2005 “Awarding Profits in Trademark Infringement Cases Made Easier”
- 2005 “The Increasingly Long Arm of U.S. Patent Law”
- 2005 “Federal Circuit Makes Enforcing Intellectual Property Rights Harder”
- 2005 “Noncompliance With Bayh-Dole Leads to Army Getting Patent Title”
- 2005 “Embracing the Arm’s-Length Licensor: Closer Than You Think”
- 2004 “Design Patents Take Center Stage in the Federal Circuit”
Recent Law Review and Other Articles
- 2018 "Steve Madden Copyright Tiff with Cult Gaia over Handbag Design has Luxury Ramifications", Luxury Daily
- 2018 "Are You a Trademark Bully? How to Avoid Being and Being Labelled as One", Luxury Daily
- 2017 "Knockoffs: Creating an Effective Strategy on a Tight Budget, part 4 - Designing an Enforcement Strategy", Luxury Daily
- 2017 "Knockoffs: Creating an Effective Strategy on a Tight Budget, part 3 - Securing the IP Foundation on Trademarks, Trade Dress, Copyright and Design Patents", Luxury Daily
- 2017 "Knockoffs: Creating an Effective Strategy on a Tight Budget, part 2 - Prioritizing Among the Problems", Luxury Daily
- 2017 "Knockoffs: Creating an Effective Strategy on a Tight Budget", Luxury Daily
- 2017 "US Supreme Court Offers Expanded Copyright Protection Opportunities to Luxury Goods Firms", Luxury Daily
- 2014 “Does Reckless Indifference Suffice for a Cancellation Proceeding Predicated on Fraud?” 14 J. Marshall Rev. Intell. Prop. L. 50
- 2012 “Covenant Not to Sue: A Super Sack or Just A Wet Paper Bag?”, 102 The Trademark Reporter 1213
- 2003 “Proving Willfulness in Trademark Counterfeiting Cases”, The Columbia Journal of Law & the Arts, 27 Colum.
- 2003 “Defensive Measures Against Counterfeiting”, Chapter 2 of the Matthew Bender series Intellectual Property Counseling
- UNIFAB Paris Meeting; Speaker, Commission Marque Tridimensionnelle: l’enregistrer et la défendre,” 2015
- AGMA Paris Quarterly Meeting; Speaker, “Trade Dress Protection: Why Should I Want It? How Do I Get It?,” 2015
- INTA Round Table; Moderator, “Strategizing . . . Left and Right of the Dot,” 2015
- AGMA Quarterly Meeting; Speaker, “Trade Dress Protection: Why Should I Want It? How Do I Get It?,” 2014
- AGMA Quarterly Meeting; Speaker, “Top Ten Things NOT to do in an IP Investigation,” 2013
- AGMA Quarterly Meeting; Speaker, “Proper Conduct of IP Investigations,” 2011
- CALCE-SMTA Symposium on Counterfeit Electronic Parts and Electronic Supply Chain; Speaker, “Setting Up Cost Effective Anti-Counterfeiting Technologies That Stand Up In Court,” 2011
- AGMA Quarterly Meeting; Speaker, “Omega v. Costco, Impact on Grey Market Protection And Comparison To Other IP Laws,” 2011
- AGMA Quarterly Meeting; Speaker, “Hot Issues In Counterfeiting Law And Their Impact On Your Enforcement Efforts,” 2010
- INTA Annual Meeting; Speaker, “Trademarks, Patents and Copyrights: Understanding the Interplay,” 2008
- AIPLA Annual Meeting; Speaker, “Product Seizures and Asset Freezes,” 2008
- INTA Meeting; IP Rights Enforcement: Protecting Product Configuration; Speaker, “U.S. Protection of Product Design,” 2006
- Federation of the Swiss Watch Industry FH, Anticounterfeiting Group; Speaker, “Recent Trends in U.S. Anti-Counterfeiting and Other IP Enforcement,” 2006
- Beijing Intellectual Property Bureau, Beijing, China; Seminar: “Trade-Show Attacks, Defense, and Using U.S. Law to Increase Profits of Chinese Companies”, 2005