Vanessa Hew focuses her practice on intellectual property litigation and strategic counseling with an emphasis on trademark and copyright matters. She has counseled intellectual property owners in a wide variety of industries, including personal care and cosmetics, food and beverage, wellness, fashion, home care and design, social media, software, music, and art.
For over 20 years, clients have trusted Vanessa to provide creative and cost-effective solutions to complex intellectual property issues. She helps her clients develop, protect, register, and enforce their intellectual property. Additionally, Vanessa helps clients commercialize their intellectual property assets through license agreements, brand sponsorship and integration agreements, publishing agreements, and entertainment, advertising, and media agreements. Vanessa also helps her clients manage and mitigate risk by conducting reviews and clearance of trademarks, copyrights, and advertising materials.
Vanessa has a distinguished career representing some of the world’s most recognized brands in litigations and other proceedings around the country involving trademark, trade dress, copyrights, trade secret, false advertising, unfair competition, and breach of contract claims. She has successfully moved for the dismissal of actions in their entirety, obtained summary judgment in her clients’ favor, and argued appeals before the U.S. Courts of Appeals for the Second and Ninth Circuits.
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.
- Obtained dismissal on behalf of Conopco, Inc. d/b/a Unilever of all claims brought by manufacturer and supplier American Accessories International, LLC, which had alleged breach of contract, promissory estoppel, promissory fraud, negligent misrepresentation, and fraudulent concealment.
- Obtained partial summary judgment in trademark infringement and dilution case pending in the U.S. District Court for the Southern District of New York on behalf of Kwik Lok Corporation and successfully opposed Schutte Bagclosures Inc.’s motion for summary judgment and dismissal of counterclaims in its entirety.
- Obtained an order from the U.S. Court of Appeals for the Second Circuit affirming the dismissal of a copyright claim brought by Klauber Brothers, Inc. in connection with lace used on women’s undergarments sold by The Bon-Ton Stores, Inc. The District Court dismissed the entire action brought by plaintiff, which alleged copyright infringement, false advertising, and breach of contract; the appeal only concerned the dismissal of the copyright claim.
- Obtained partial summary judgment in Digital Millennium Copyright Act case, holding that cloud storage of music files does not constitute copyright infringement and that the DMCA applies to pre-1972 works -- both cases of first impression and enormous impact on the music industry.
- Obtained dismissal of complaint on all counts on behalf of The Bon-Ton Stores, Inc. in the U.S. District Court for the Southern District of New York in case alleging various claims of copyright infringement, false advertising, and breach of contract claims.
- Successfully opposed motion for a preliminary injunction on the grounds that plaintiff’s alleged trademark and trade dress were descriptive and generic.
- Represented Apollo Group, Inc. and University of Phoenix, Inc. as plaintiffs in litigation in the U.S. District Court for the Southern District of New York concerning allegations of copyright infringement of educational materials on online auction website.
- Represented Ben & Jerry’s Homemade, Inc. in litigation alleging claims of trademark infringement and tarnishment of Ben & Jerry’s trademarks, trade dress, and ice cream flavor names by an adult film company.
- Represented plaintiff Conopco, Inc. in litigation alleging claims of trademark infringement, unfair competition, and counterfeiting in connection with the unauthorized sale of gray market personal care products.
- Represented Accantia Group Holdings and Conopco, Inc. d/b/a Unilever in litigation alleging claims of trademark infringement of SIMPLY trademark in connection with personal care products.
- Represented defendant in case involving trademark infringement and unfair competition claims in connection with Swiss Army and Swiss Military trademarks and logos in connection with watches.
- Represented plaintiff Anthropologie, Inc. in copyright infringement case against Forever 21 regarding dress designs and obtained sanctions against defendant’s principals.
- Represented defendant Anthropologie, Inc. in lawsuit involving various claims of copyright infringement, trademark infringement, and unfair competition claims regarding flatware.
- Represented Lenox, Inc. in copyright infringement case against Target, Inc. involving copyrighted patterns on casual dinnerware.
- Represented plaintiff Conopco, Inc. in lawsuit involving infringement of I CAN’T BELIEVE IT’S NOT BUTTER!® and COUNTRY CROCK® brands in television commercials and on product packaging.
- Represented defendants Consist Software Solutions, Inc. in international copyright, trademark, and false advertising action regarding various international software products with multiple parallel actions in other countries.
- Represented Wal-Mart and its vendor, F.A.F. Inc. in an action for damages based upon claims of copyright infringement, federal and common law unfair competition.
- Represented Wal-Mart and its vendor, Faded Glory Arkansas, Inc. in an action for damages based upon federal claims of trademark infringement, unfair competition and copyright infringement, and California state and common law claims of unfair business practices and unfair competition in connection with jeans.
- Represented major Japanese retail chain in an arbitration proceeding involving claims of et al. breach of a trademark licensing agreement, reverse passing off, trademark dilution and unfair competition and deceptive trade practices.
- Represented Urban Outfitters in trademark infringement and dilution case regarding defendant use of trade name Hype Outfitters in connection with clothing stores.
- Represented plaintiff Anthropologie, Inc. in copyright infringement case involving clothing designs.
- Represented plaintiff Urban Outfitters, Inc. in copyright infringement case against The Wet Seal, Inc. involving clothing designs.
Thought Leadership
Publications
- Co-Author, Practice Note, “Trademark Litigation: Likelihood of Confusion,” Practical Law The Journal, March 1, 2023
- Co-Author, “Fashion and Retail Law,” Commercial Litigation in New York State Courts, Fifth Edition, 2021
- Co-Author, Practice Note, “Trademark Infringement and Dilution Claims, Remedies and Defenses,” The Practical Law Company, 2018
- Co-Author, Practice Note, “Trademark Litigation: Likelihood of Confusion,” The Practical Law Company, 2018
- Author, “Managing Advertising Law in the Modern World,” Inside the Minds: Recent Developments in Advertising Law, 2013
- Co-Author, “Clearer Waters: Rosetta Stone v. Google Continues,” Trademarks Brands and the Internet, Volume 1, Issue 2, 2012
- Quote, “Emergence of Cloud Technology Raises Complex Copyright Issues, Lawyers Say,” Patent, Trademark & Copyright Law Daily, September 28, 2011
- Quote, "Duane Morris Convinces Court to Slice Potential Damages Against MP3tunes," AmLaw Daily, August 24, 2011
- Co-Author, United States Section, World Trademark Review Yearbook, 2009-2014
Presentations
- Panelist, “Women in IP Law,” New York State Bar Association, May 2013
- Panelist, “Careers in Trademark Law,” Panel Discussion for Students at New York Law School, February 2012
- Panelist, “New Music Services Push the Legal Envelope,” Copyright and Technology, November 2011
- Panelist, “Copyright and Content in the Cloud,” Copyright Society of the USA, New York Chapter, September 2011
- Panelist, “Trade Dress and Non-Traditional Marks,” New York City Bar Association, May 2010
- Panelist, “Lions, Tigers, and Friends: Social Media Through the IP Lens!” Georgetown University Law Center, October 2009
