Gregory Gulia is a full-spectrum IP litigator and practitioner who counsels clients on a broad range of intellectual property issues, negotiates all forms of IP agreements, manages large trademark portfolios, and litigates IP cases. In addition to deep experience negotiating trademark and copyright licenses, purchases, and consent agreements, he has litigated trademark, copyright, false advertising, anti-counterfeiting, domain name, unfair competition, trade secrets, rights of publicity and privacy, and First Amendment cases for leading consumer products companies, major media corporations, entertainers, luxury goods makers, fashion companies, and international store chains throughout the U.S. and in international arbitrations.

Greg has represented many of the world’s leading companies and artists in finding creative ways to create, develop, and monetize IP assets for them and protect their brands. He is equally adept at negotiating license agreements, brand sponsorship and integration agreements, publishing agreements, entertainment, and advertising and media agreements as he is in mediating, arbitrating, and litigating IP issues.  

Greg has prevailed in many important cases at the U.S. District Court level throughout the country, including significant first-chair trial experience, and he has successfully handled appeals before the U.S. Courts of Appeals for the Second, Ninth, and Eleventh Circuits. He has also handled arbitration with favorable outcomes in various forums, including AAA arbitrations.

Clients consider Greg a true business partner who develops pragmatic, cost-effective solutions to their IP issues. He sees IP as a continuum between clearance, risk management, deals, and protection through to litigating when necessary to assert or defend rights.

Prior to joining the firm, Greg was the co-chair of the Trademark, Copyright, Entertainment, and Advertising group of an Am Law 100 international law firm. He has repeatedly been recognized by IP publications such as Managing IP and World Trademark Review.

Representative Experience

Any result the lawyer or law firm may have achieved on behalf of clients in other matters does not necessarily indicate similar results can be obtained for other clients.

Litigation

  • Represented Unilever in coordinating with the FBI and local law enforcement agencies to seize millions of dollars in counterfeit consumer goods in what is considered one of the largest counterfeiting operations in U.S. history. 
  • Obtained partial summary judgment in Digital Millennium Copyright Act case, holding that cloud storage and streaming of music files does not constitute copyright infringement and that the DMCA applies to pre-1972 – both cases of first impression and with enormous, incalculable economic impact on the music industry and consumers in general.
  • On behalf of Conopco, Inc. d/b/a Unilever, obtained summary judgment dismissal of all claims brought by manufacturer and supplier American Accessories International, LLC, alleging breach of contract, promissory estoppel, promissory fraud, negligent misrepresentation, and fraudulent concealment.
  • Counsel to American Express Travel Related Services Co. in Second Circuit affirmation of a grant of summary judgment holding that the trademark 1-900-WEATHER belongs to American Express.
  • Represented the famous singer Jimmy Buffett in a trademark rights case, obtaining a court order granting motion for partial summary judgment canceling Cheeseburger in Paradise's federal trademark registration for the mark CHEESEBURGER IN PARADISE, the first reported decision construing trademark rights to song titles.
  • On behalf of Unilever, both defeated and obtained motions for Temporary Restraining Orders and Preliminary Injunctions in trademark and trade dress cases in the S.D.N.Y., E.D.N.Y., C.D. Cal. and N.D. Cal with a 100 percent success rate.
  • Represented plaintiff Anthropologie, Inc. in copyright infringement case against Forever 21 regarding dress designs and obtained sanctions against defendant’s principals.
  • Represented Ben & Jerry’s Homemade, Inc. in litigation enjoining trademark infringement and tarnishment of Ben & Jerry’s trademarks, trade dress, and ice cream flavor names by an adult film company.
  • Represented Sherwood 48 Associates in a trade dress infringement, dilution, electronic trespass, and unfair competition case against Sony Corporation of America.
  • Counsel to the Lipton Unit of Unilever in a trade dress and trademark infringement case against Foodtech International Inc. regarding the famous trademark “I Can’t Believe It’s Not Butter!™” Foodtech, a maker of soy-based foods, was selling its product under the name “I Can’t Believe It’s Not Beef!” As a result of the firm’s efforts, Foodtech ceased all use of the infringing mark and trade dress.
  • Counsel to DC Comics, Inc. in a First Amendment case in which the court granted client’s motion for summary judgment, holding that DC Comics’ use of a Charles Atlas advertisement was a form of expression protected by the First Amendment. The court held that the likelihood of confusion was slim and outweighed by the public interest in parodic expression.
  • Counsel to the famous singer and entertainer Janet Jackson in a successful in rem action to recover the domain name JanetJackson.com.
  • Counsel to Primetime 24 Joint Venture as plaintiff in a dispute with DirecTV regarding the Satellite Home Viewer Act and copyright licenses to distribute content to satellite television subscribers. The cases settled on terms very favorable to the client.
  • Counsel to Sears, Roebuck & Co. in its defense of a trade dress infringement claim. The court dismissed plaintiff Henri Bendel Inc.’s claim of infringement, holding that the plaintiff could not claim exclusive rights to the use of vertically striped, plastic-coated fabric and gold zipper pulls on cosmetic bags.

Non-Contentious Matters

  • Handled all IP due diligence and drafting agreement terms in multiple billion-dollar corporate deals.
  • Represented a leading consumer products company in series of negotiations to purchase trademarks and arrange for consent to use trademarks to clear $300 million U.S. product launch.
  • Negotiated and drafted license agreement between two major consumer products companies for $100 million license deal.
  • Negotiated all agreements for reverse product placement deal for television show, which became the most popular television show in Argentina.
  • Represented author in successful negotiations with a publishing company to publish a leading textbook.
  • Coordinated international filing programs for major U.S. companies to register trademarks worldwide.
  • Represented major international company in successfully recovering over 1,000 domain names from cybersquatters.
  • Represented popular musicians in negotiating series of touring, recording, and production agreements.
  • Represented consumer products company in negotiations to sponsor production of compilation music CD used as gift with purchase for $100 million product launch.
  • Represented major international company in review of all advertising materials, celebrity appearance contracts, and television and radio commercials to clear the materials so that no copyright, trademark, or rights of publicity or privacy issues arise.
  • Vetted series of crime novels for major publisher to advise of potential liability.
     

Thought Leadership

Selected Publications

  • Lead Author, Practice Note, “Trademark Infringement and Dilution Claims, Remedies, and Defenses,” Practical Law The Journal, March 1, 2023 (Prior versions published since 2018)
  • Co-Author, “USA Yearbook," World Trademark Review, 2009-2014
  • Quote, "As Houston's Song Plays, Dolly Parton Benefits," American Public Media Marketplace, February 17, 2012
  • Quote, "Duane Morris Convinces Court to Slice Potential Damages Against MP3tunes," AmLaw Daily, August 24, 2011
  • Interview, "Protecting Brands from Trademark Infringement," LegalMindsTV.com, December 16, 2009
  • Co-Author, "Third Circuit Decision Clarifies Proper Use of Lapp Factors in Trade Dress Infringement Actions," Intellectual Property Today, March 2008

Selected Speaking Engagements

  • Panelist, "The DMCA Safe Harbor: Anchored or Adrift?" New York State Bar Association, New York, March 2, 2011
  • Speaker, "Mediation of Trademark Disputes," International Trademark Association Annual Meeting, Berlin, May 19, 2008
  • Panelist, "Trademark Litigation: A View From Inside Counsel and Outside Counsel," Stamford, Connecticut, November 21, 2003
  • Speaker, "Insurance Coverage for Copyright Litigation," The Copyright Society of the USA, New York, March 22, 2002

Honors & Awards

  • Named to World Trademark Review 1000 – The World’s Leading Trademark Professionals, 2012-2024
  • Named to the Managing Intellectual Property IP Stars List for Trademark and Copyright, 2013-2023

Professional Engagement

  • International Trademark Association (INTA), Appointed to Right of Publicity Committee, 2022-2023