With over 40 years of trial experience, Joe represents public and private clients in high stakes commercial litigation predominantly in the federal courts. Joe has tried cases––principally to juries––involving intellectual property rights; director, officer, and professional-liability issues; insolvency claims such as fraudulent transfer; and alter-ego claims, products-liability claims, and simple breach of contract. Joe has tried over 100 cases to verdict before juries and dozens of other cases to decision before judges and arbitrators.
Joe supervises the defense of products-liability claims for manufacturers across diverse industries on both regional and national basis and has managed, on a nationwide basis, the protection of intellectual property rights. Among his seminal work for intellectual property owners, Joe established the right of intellectual-property owners to ex parte injunctive relief; the right of intellectual-property owners to recover damages for violations of injunctions as a matter of right and not judicial discretion; the right of a prospective trademark user to obtain declaratory relief regarding the non-infringement of a mark prior to actual use of the mark in commerce; and the propriety of subjecting recidivist counterfeiters to criminal prosecution in the name of the United States by attorneys specially appointed by district courts.
- Currently representing the Chicago Spire real estate developer in action against a Republic of Ireland agency in federal court in Chicago, seeking the recovery of $1.2 billion for tortious interference with the contract and tortious interference with prospective economic advantage.
- Currently representing a litigation funder in federal court in Philadelphia being sued for $15 million in civil-contempt sanctions for violating a “no actions injunction” by funding Cayman Island litigation against one of the world’s largest insurance companies.
- Currently representing a US Army trademark Licensee in action in the US Federal Court of Claims, seeking recovery well in excess of $150 million for a breach of trademark license licensing US Army trademarks for use on apparel and footwear.
- Defended a public company that reported in its SEC filings potential liabilities in excess of $500 million.
- Represented a bankruptcy trustee that recovered more than $350 million.
- Experienced an adverse judgment in excess of $72 million.
- Won all products-liability trials on behalf of an industrial-equipment manufacturer within the New York City metropolitan area, including Northern New Jersey and Connecticut, over the course of 30 years.
- The US Supreme Court examined the historic practice of a federal court specially appointing the attorney for a party to prosecute a criminal contempt proceeding against a person guilty of willfully violating its order. The court, in the exercise of its supervisory powers, concluded that the criminal prosecution should be conducted by an attorney other than the attorney for the party benefiting from the order being violated, although the court divided as to whether the convictions before it should be vacated (Young ex rel. Vuitton et Fils S.A.).
- Obtained a writ of mandamus from the Second Circuit Court of Appeals directing a district court to issue an ex parte temporary restraining order against a trademark counterfeiter (re Vuitton et Fils S.A.). Subsequently obtained a similar writ of mandamus from the Ninth Circuit Court of Appeals.
- Persuaded the Second Circuit Court of Appeals to reverse a ruling by the district court that the Lanham Act did not prohibit a manufacturer of trademarked goods hired by the trademark owner from selling production overruns and seconds of trademarked goods. In that case, a South American shoe manufacturer failed to deliver shoes in time for the season and the trademark owner canceled its order. The factory then tried to sell the tardily made shoes through discount outlets, which would have diluted the value of the famous mark (El Greco Leather Goods Co., Inc. v. Shoe World, Inc.).
Second Circuit Chief Judge Irving Kaufman established that once a trademark owner proves that a defendant or someone acting in concert of participation with him/her has actual knowledge of an injunction and violates it, a “district court is not free to exercise its discretion and withhold an order in civil contempt award damages, to the extent they are established.” Also, “[s]ince the plaintiff should be made whole for the harm he has suffered, it is appropriate for the court also to award the reasonable costs of prosecuting the contempt, including attorneys’ fees” (Vuitton et Fils S.A. v. Carousel Handbags).
The Seventh Circuit Court of Appeals established that once a trademark owner proves willful infringement, a district court lacks discretion to deny it an award of the infringer’s profits. In reversing the district court, which denied recovery of profits and characterized Vuitton and Gucci as having used “the laws as a sword and their millions as a mace,” Judge Posner wrote, “Equity is not a roving commission to redistribute wealth from large companies to small ones. The Lanham Act was not written by Robin Hood” (Vuitton S.A. v. Lee).
- Reversed a district court holding and established in the Second Circuit that a party need not first “use in commerce” a trademark that it has reason to believe will be challenged as infringing by another party, but may instead file an action for declaratory relief, thereby avoiding the risk of large monetary losses, should its belief about non-infringement be proven wrong (Starter v. Converse).
- Established that the doctrine of “Licensee Estoppel” did not apply to certification mark agreements for the same public-policy reasons that it does not apply to patent licenses and, therefore, certification mark licensees are at liberty to challenge the validity of licensed certification marks (Idaho Potato Commission v. M & M Produce Farm & Sales).
- The bankruptcy court for the District of Massachusetts sustained breach of fiduciary duty claims (among others) by a bankruptcy trustee against directors of a Delaware corporation who voted in favor of a leveraged buyout (LBO) that, while benefiting shareholders (including themselves), left the corporation with unreasonably small capital that resulted in the corporation’s bankruptcy filing two years after the LBO (re Healthco Intern., Inc).
The NY Court of Appeals held that absent evidence of actual collusion, the mere presence of “illusory tenancies” in a building slated for cooperative conversion was an insufficient basis to sustain a fraud charge against the building’s owners under New York’s Martin Act (Badem Bldgs. v. Abrams).
- Rutgers School of Law, J.D.
- Kenyon College, B.A.
- New York
- New York State Appellate Division
- U.S. Supreme Court
- U.S. Court of Appeals, 1st and 2nd Circuits
- U.S. Court of Appeals, 3rd Circuit
- U.S. Court of Appeals, 7th Circuit
- U.S. Court of Appeals, 9th Circuit
- U.S. Court of Appeals, 10th Circuit
- U.S. Court of Appeals, 11th Circuit
- U.S. District Court, District of New Jersey
- U.S. District Court, District of Connecticut
- U.S. District Court, Northern District of Illinois
- American Bar Association
- Bar Association of the City of New York
- Federal Bar Council
- New York State Bar Association
- The Defense Research Institute
- International Trademark Association
- International Star Class Racing Association, Judiciary Board Member
- US Sailing, Race Officer and Judge
- New York Yacht Club, Member
- Sail Newport, Member
- Stamford Yacht Club, Member
- Fellow, Litigation Council of America
- Selected to Super Lawyers New York Metro: Business Litigation, 2010-2018
- Who’s Who in the World, 1992-2018
- Who’s Who in America, 1992-2018
- Martindale-Hubbell AV Peer Review Rated for Very High to Preeminent Ethical Standards and Legal Ability, 1972-2018
- Bainton Law Group, PLLC, Partner
- Smith, Gambrell & Russell, LLP, Partner
- Bainton McCarthy, Partner
- Ross & Hardies, Partner
- Whitman & Ransom, Partner
- Shea & Gould, Partner
- Ropes & Gray, Partner, Associate
- Satterlee Stephens Burke & Burke, Associate