Education

Hamilton College
New York Law School

Practice Areas

Intellectual Property
Corporate
Entertainment
Litigation
Prosecution
Transactions

Tom Canova

Mr. Canova is a seasoned attorney with considerable experience, for many years as a partner at prominent “AmLaw 100” law firms. He has enjoyed a broad-based practice, primarily focused on intellectual property, including litigations, arbitrations, mediations, enforcement and anti-counterfeiting campaigns, availability searches, clearance opinions, applications, prosecution, and portfolio management.

He also has been involved in significant transactional work in the nature of contract negotiation and drafting, due diligence, franchising, licensing, and corporate formation and acquisitions, as well as general counseling.

His practice has spanned across a variety of industries, including high-tech/computer, e-commerce, publishing, pharmaceutical/biotech, telecommunications, hospitality, car rental, cosmetics, financial, foods, music, film, sports, arts, clothing/fashion, and luxury goods.

Representative Litigation Matters

Mr. Canova has been engaged in numerous high-profile litigations, including a substantial number of cases involving patent, trademark, trade dress, and copyright infringement, false advertising, deceptive trade practices, unfair competition, and antitrust violations.

He also was part of the formidable Securities Investor Protection legal team representing the Trustee in the huge Madoff bankruptcy investigations and litigations in this country and around the world, which to date have recovered billions of dollars for defrauded investors.

Representative litigation matters also include:

    • Trademark counterfeiting case on behalf of the Recording Industry Association of America (RIAA) and several member record companies (Capitol, Arista, BMG, Sony) involving a two-site simultaneous seizure of CD inserts and other items, constituting the first reported civil seizure of photocopy machines as “instrumentalities” of manufacturing counterfeit product. (E.D.N.Y., Judge Irizarry)
    • False advertising case on behalf of IDT, the country’s largest pre-paid telephone calling card company, against several competitors using voice prompts, advertisements, and marketing materials, falsely claiming the number of minutes provided at various expense, leading to mediation and a confidential settlement. (D.N.J., Judge Wigenton, Magistrate Judge Arleo)
    • lnternet/e-commerce “business method” patent infringement litigations, successfully defending (i) Barnes & Noble against Amazon.com’s “One Click” patent, and (ii) Microsoft/Expedia against Priceline.com’s “Name Your Price” patent. (D. Wash., Judge Peckman; Fed. Cir., Judges Clevenger, Gajarsa and Linn; D. Conn., Judge Thompson)
    • Copyright infringement and trade secret misappropriation case on behalf of Exact Solutions, a leading performance-monitoring computer software company, against its former Directors of Technology and Marketing, obtaining a Preliminary Injunction in the United States and criminal and civil seizures of infringing source code in India.  (S.D.N.Y., Judge Owens)
    • Trade secret misappropriation case on behalf of PlusFunds, a hedge fund investment management company, against computer software consultant OTC, for theft of proprietary source code, software procedures documentation, client contact information, and marketing materials, leading to a Temporary Restraining Order of substantial scope and duration, resulting in a confidential settlement. (N.Y. Sup. Ct., Judge Acosta)
    • Federal litigation for willful breach of non-compete, non-solicitation, and confidentiality agreements on behalf of LESCO, one of the country’s largest professional turf care companies, against Golf Course Division sales representatives, resulting in a Temporary Restraining Order and Preliminary Injunction. (E.D.N.Y., Judge T. Platt)
    • Trademark injunction contempt litigation on behalf of L’Oreal against the country’s largest “diverter” of salon-only Matrix brand hair care products. (E.D.N.Y., Judge Wexler)
    • Trademark infringement case on behalf of Hy-Tape International, the country’s largest supplier of surgical tape, against former Sales Director, including Mediation Proceeding resulting in a confidential settlement.  (S.D.N.Y., Judge Jones, Magistrate Judge Freeman)
    • Complex 5-year litigation on behalf of Hewlett-Packard against the world’s largest remanufacturer and refiller of inkjet cartridges, culminating in a 3-month trial and jury verdict of willful false advertising, trademark infringement, and infringement of ink formulation chemical patents, a multi-million dollar damages award, and rejection of antitrust counterclaims.   (N.D. Cal., Judge Ware)
    • Seminal computer software copyright case, Apple v. Microsoft and HP, resulting in a federal court determination that Apple’s graphical user interface incorporating overlapping windows, mouse point-and-click, and a desktop metaphor originated with Xerox and IBM, was not within the scope of any of Apple’s protectable copyrights, and was not infringed by Microsoft’s WINDOWS and HP’s NEW WAVE software programs.  (N.D. Cal., Judge Walker)
    • The patent “diaper wars” involving two federal jury trials and foreign (Canadian) counterpart litigation, resulting in the successful defense of Kimberly-Clark (HUGGIES) against Procter & Gamble’s (LUVS and PAMPERS) claims of patent infringement relating to the polymer chemical technology used to elasticize the waist area of diapers and create thinner super­absorbent diapers, with jury verdicts of patent invalidity and non-infringement.  (N.D. Tex.; D.S.C.)
    • American Arbitration Association proceeding and federal litigation on behalf of Relix Records against the former manager of music recording artist Johnny Winter, for willful copyright infringement and breach of multiple contracts involving five albums, and companion U.K. litigation against Magnum, a major London-based label and distributor, obtaining permanent injunctions and damages awards totaling over $2 million. (Arbitrator Tom Arnold; S.D. Tex, Chief Judge Black; 5th Cir.)
    • Trademark infringement litigations, U.S. Trademark Office opposition and cancellation proceedings, and federal appeal, confirming the exclusive right of Lepage Bakeries, a leading regional bakery, to use the federally registered “collective membership” mark COUNTRY KITCHEN in major geographic areas.  (D. Mass.; D.N.H.; T.T.A.B.; Fed. Cir., Judge Rich presiding).
    • Trademark and unfair competition case, successfully defending Jansport at the federal trial and appellate court levels against false claims of infringement and dilution. (S.D.N.Y., Judge Cote; 2d Cir.)
    • Trial and remand proceedings, three appeals, and two Supreme Court petitions, successfully defending BIC against claims of infringement of the federally registered trademark AUDITOR’S for fine point pens.  (C.D. Cal., Judge Hall; 9th Cir; U.S.S.C.)
    • Damages proceedings resulting in a judicial determination that Kraft/Sealtest’s POLAR B’AR ice cream bar packaging willfully infringed Isaly/Ambrit’s KLONDIKE trade dress, leading to a permanent injunction and a cash settlement of $8.5 million. (M.D. Fla.)
    • False advertising class actions involving unauthorized use of professional models’ images (Getty), common law infringement of pre-1972 sound recording copyrights (Spotify, Slacker, iHeart, Sony, Grooveshark, Beats), cosmetics (Revlon, Dr. Brandt, BeachBody), dietary supplements (Wal-Mart, CVS), cereals (Kellogg, Post, General Mills), beverages (Pepsi, Goya), and coconut oil (Nutiva, Costco/Kirkland, Carrington). Recently, Mr. Canova was instrumental in obtaining class certification against Monsanto for falsely advertising the value (number of gallons) of its concentrate versions of Roundup herbicide, leading to a $21.5 million settlement.

Representative IP Enforcement Campaigns

    • Nationwide trademark anti-counterfeiting program on behalf of luxury goods manufacturer Burberry Ltd., involving trade show, marketplace and Internet investigations, “cease and desist” notices, civil enforcement and negotiated settlements, resulting in the destruction of substantial quantities of counterfeit product,  termination of Internet auction and shopping sites, U.S. Customs seizures of imports, criminal law enforcement against domestic manufacturers, wholesalers and retailers (including street peddlers and flea markets), and coordination with international enforcement activities against foreign manufacturers and suppliers.
    • Federal litigations and administrative proceedings on behalf of Hewlett-Packard involving court-ordered ex parte civil seizures with U.S. Marshals throughout the country, coordination of international seizures in South America and Eastern Europe, freezing of assets, and seizure of imports by U.S. Customs, stopping nationwide counterfeiting of Hewlett-Packard trademarks, copyrights, and packaging trade dress, and resulting in substantial settlements.

Sports Industry – Non-Litigation Matters

For many years, Mr. Canova represented NBA Properties for league-wide, sports-related intellectual property matters,  including trademark availability searches; clearance opinions; preparing, filing and prosecuting U.S. trademark and copyright applications; supervising foreign trademark filings and prosecution; domestic and foreign trademark registration maintenance; opposition and cancellation proceedings before the U.S. Trademark Trial and Appeal Board; preparing trademark and copyright assignments, licenses, and other agreements; IP portfolio management; and counseling on press, publicity, advertising, and infringement issues.  Such work was fundamental to expansion of the league (Miami Heat, Orlando Magic, Charlotte Hornets, Toronto Raptors, and Vancouver Grizzlies), and the international expansion of NBA games and merchandising.

Music Industry – Non-Litigation Matters

Representation of independent record label, recording artists, managers, festival owner, and music publishers, for numerous matters, variously including negotiating and drafting record label contracts, artist performance contracts, music publishing contracts, distribution agreements, artist-­manager agreements, work-for-hire  agreements,  licensing agreements, and Internet/e-music  agreements; trademark and copyright filings; corporate mergers and acquisitions; sound recording copyright enforcement campaigns against unlicensed “bootleggers;” and overall general counseling.  Experience also includes representation of music magazines for a variety of trademark, copyright, First Amendment, defamation, work-for-hire, advertising, rights of publicity, and other print and Internet publication-related legal matters, and representation of music-related merchandising entities for IP, contract, and licensing matters.

Pro Bono

Mr. Canova has devoted considerable time pro bono at leading nonprofits including Volunteer Lawyers for the Arts, Riverkeeper, Rock the Earth, and New York Athletic Club, as well as a nonprofit involved in voter protection for Presidential and Congressional elections. He also served pro bono at the New York State Office of Attorney General, providing trial support for a major 5-state federal Clean Air Act (acid rain) litigation.

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Mr. Canova previously was a partner at Pennie & Edmonds LLP and Baker & Hostetler LLP. A graduate of Hamilton College and New York Law School, he is a member of the New York State Bar (not admitted, CA). He is also admitted to practice before numerous federal courts, and the Supreme Court of the United States.