Lisa Pearson
Partner

3 TIMES SQUARE, New York, NY USA 10036

Overview

Lisa Pearson is an experienced, versatile and creative litigator who counsels and represents creators and brand owners across a broad spectrum of industries in copyright, trademark, unfair competition and Internet-related disputes. Clients describe her as “one of the best and most creative lawyers in the country” who has “put in amazing performances in some landmark cases” and “a big-picture thinker whose often leftfield ideas work wonderfully in resolving seemingly insurmountable challenges.”

Ms. Pearson began her legal career at one of New York's top litigation firms, where she enjoyed a diverse complex litigation practice. Since 1991, she has focused on intellectual property litigation, obtaining excellent results in federal and state courts across the United States, in UDRP proceedings to recover domain names, and in cancellation and opposition proceedings in the U.S. Patent and Trademark Office. She has designed and implemented comprehensive policing, enforcement and anti-counterfeiting programs for many well-known rights owners.

A trained mediator and member of the International Trademark Association (INTA) Trademark Mediators Network, Ms. Pearson has a keen interest in alternative dispute resolution. She has successfully resolved hundreds of disputes through mediation, arbitration and favorable settlements.

For over a decade, World Trademark Review 1000 – The World’s Leading Trademark Professionals has consistently rated Ms. Pearson as one of the top litigators in her field. In 2023, it stated: “Lisa is unquestionably one of the leading trademark litigators in the US. Her many precedent-setting wins are a remarkable achievement. Those wins do not just happen because of the fact pattern. Rather, Lisa thinks through every aspect of the case to discern a winning strategy and then builds up the ammunition to support that strategy through comprehensive legal research, surveys, key angles in discovery, and persuasive arguments and advocacy.” Ms. Pearson is one of a handful of U.S. attorneys to be honored as a "Global Elite Trademark Thought Leader" by Who’s Who Legal (2022-23). The National Law Journal named her as one of its "Outstanding Women Lawyers" in 2015 and Law 360 singled her out as one of the Top 20 Most Influential Women in IP in 2014. She has twice received Lexology's Client Choice Award in the Intellectual Property: Trademarks category for New York (2013, 2015).

In addition, Ms. Pearson has been recognized as a leading copyright and trademark litigator by The Best Lawyers in America® (2018-2025); Chambers USA: America's Leading Lawyers for Business (2022-2024); Legal 500 US (2007-2024); The International Who's Who of Trademark Lawyers (2011-2022); Legal Media Group's Expert Guide to the World's Leading Women in Business Law (2010-2022); Expert Guides: Trademark (2014-2022); and World IP Review (2023-2024). She is rated a New York "Super Lawyer" in Intellectual Property and Intellectual Property Litigation (2007-2024), a "Top 50 Women New York Super Lawyer" (2013-2024), and a "Top 100 New York Super Lawyer" (2021-2022) by Super Lawyers magazine, and a Copyright Star and Trademark Star (2013-2023) by Managing Intellectual Property magazine.

Ms. Pearson regularly speaks and writes on cutting edge issues, and received prestigious Burton Awards for excellence in legal writing for her articles “The Universal Language of Non-Verbal Design Marks” (2016) and “How Fluid Trademarks Can Enhance Your Brand" (2009).

Ms. Pearson is AV® Preeminent rated by Martindale-Hubbell.*

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Experience

Obtained judgment, permanent injunction, and maximum permissible award of $450,000 in statutory damages against parties engaged in the unauthorized use of photographs from the ZARA website to sell re-labelled products, passing them off as an independent designer’s original designs. This dispute involved an interesting reverse passing off claim and also complex strategic copyright registration issues surrounding group registration of published photographs. Industria de Diseño Textil, S.A. et al. v. Thiliko, LLC et al., No. 23-cv-00047 (S.D.N.Y. 2023).

Obtained multi-million dollar judgment and injunctive relief against seller of "our version of" fragrances following trial. On behalf of Coty, along with its licensors Calvin Klein, Vera Wang, and Lady Gaga, we filed this trademark infringement, unfair competition, false advertising and dilution case against Excell Brands, LLC, a manufacturer of so-called “alternative fragrances” marketed as “versions” of genuine Coty fragrances. Following a bench trial, the Court found Excell liable on each of Plaintiffs’ claims and awarded Plaintiffs both permanent injunctive relief and Excell’s gross revenue, totaling more than $6.5 million. The court’s decision includes numerous findings and conclusions that help to clarify and advance the law in this area, and provides brand owners with new ammunition to rein in the alternative fragrance and similar parasitic industries going forward. Coty Inc. v. Excell Brands, LLC, 277 F. Supp. 3d 425 (S.D.N.Y. 2017).

Stopped infringement of F1 mark. After filing this infringement action on behalf of Formula 1 against numerous entities using variants of the F1 mark in connection with kart racing facilities, air travel, and hospitality businesses, we reached early settlements with several defendants, but those using the marks for kart racing in Massachusetts filed a motion to dismiss for lack of personal jurisdiction. We defeated that motion and then negotiated a consent judgment and confidential settlement under which the kart racing facilities rebranded and ceased use of the F1 marks. Formula One Licensing BV and Formula One World Championship Ltd. v. F1 New Jersey, LLC et al., Case 1:14-cv-05812-JBS-AMD (D.N.J.).

Defeated preliminary injunction preventing our client Clif Bar from launching its new premium CLIF MOJO healthy snack bars in see-through packaging that allegedly infringed Kind’s trade dress. Following a multi-day hearing, Judge Kimba Wood issued a 25-page opinion denying Kind’s motion in full. The judge found that Kind’s alleged trade dress was not distinctive (and thus not protectable), that there was no likelihood of consumer confusion between the parties’ packaging, and that Kind had not demonstrated irreparable injury or a balance of hardships tipping in its favor. Kind, LLC v. Clif Bar & Co., 2014 WL 2619817 (S.D.N.Y. June 12, 2014).

Successful policing and enforcement program for youth fashion retailer American Eagle Outfitters. Among our successes in the courts and U.S. Trademark Office is the lawsuit we filed suit in 2010 against a number of defendants who opened retail stores under the name AMERICAN EAGLE FURNITURE. The defendants asserted that there was no likelihood of confusion due to the obvious differences in the parties’ goods, customers and price points. The court ruled in our favor on virtually every likelihood-of-confusion factor and every issue. It found that the defendants had infringed AEO’s mark; it cancelled defendants’ registration; and it rejected their defenses. The court further offered a number of findings that will prove helpful to AEO beyond this case—such as there is “evidence amply supporting the strength and fame of AE Outfitters’ mark.” Am. Eagle Outfitters, Inc. v. Am. Eagle Furniture, Inc., 11 C 02242, 2013 WL6839815 (N.D. Ill. Dec. 27, 2013).

Defeated a motion for a preliminary injunction brought by True Fit against our client True & Co., an e-commerce lingerie retailer that offers bra-fitting services to its customers. On the basis of its alleged family of TRUE marks, including TRUE FIT, TRUE TO YOU, and TRUING UP, True Fit, which offers e-commerce fitting services, sought an injunction barring True & Co. from using any marks containing the word “true.” The Court denied preliminary injunctive relief and accepted our argument that, “in the Twenty-First Century . . . [t]hat the goods or services of the parties are both found on the Internet proves little, if anything, about the likelihood that consumers will confuse similar marks used on such goods or services,” diverging from many decisions holding the opposite. Following the preliminary injunction ruling, the case recently settled without further litigation on terms favorable to True & Co. True Fit Corp. v. True & Co., No. 12-cv-11006 (D. Mass. March 4, 2013).

Represented the Romare Bearden Foundation in resolving issues concerning ownership of the copyrights of the late artist's work.

Represented Joh. A. Benckiser and Coty, Inc. in a breach of trademark license agreement for Stetson fragrance products. Stetson sought a declaratory judgment that it had the right to terminate the license, along with unspecified monetary damages, on the ground, among others, that Benckiser and Coty failed to commercialize Stetson fragrance in every country and jurisdiction of the world. The firm successfully moved the N.Y. Supreme Court, Commercial Division, to dismiss Stetson's primary claim concerning the obligation to commercialize world-wide, and then defeated Stetson's appeal to and motion for reargument in the Appellate Division, First Department. John B. Stetson Co. v. Joh. A. Benckiser GmbH, 81 A.D.3d 559, 917 N.Y.S.2d 189 (1st Dep't 2011), rearg. denied Ind. No. 600074/10, slip op. at 1 (1st Dep't June 14, 2011).

Defeated motion for temporary restraining order and forced plaintiff to withdraw preliminary injunction motion and pay our clients’ associated attorneys’ fees in case claiming copyright, trademark and design patent infringement in connection with plaintiff’s PED EGG foot file. We then succeeded in obtaining a ruling dismissing four of the six counts of the amended complaint. The case settled on favorable terms in late 2011. Telebrands Corp. v. Del Labs. Inc., 814 F. Supp. 2d 286 (S.D.N.Y. 2011).

Represented Victorinox Swiss Army in action for trademark infringement, trademark dilution and unfair competition against three sellers of decoded Swiss Army fragrances and obtained consent judgments including injunctive and monetary relief. Decoded fragrances lack the quality control and anti-counterfeiting devices that Victorinox includes in its products at the time of manufacture. Women's Wear Daily featured this victory for Victorinox Swiss Army and pointed out the importance of this issue to our client: "Already, counterfeit imitations of our fragrances with an estimated retail value of more than $1 million have been seized by the alert action of the U.S. Customs and Border Protection with our cooperation," said Veronika Elsener, Victorinox Chair.

Obtained a $500,000 consent judgment and permanent injunction against C Lenu, Inc. and its principals. C Lenu operated a decoding facility that used tools, chemicals and other methods to remove codes and other quality-control and anti-counterfeiting measures from DAVIDOFF, CALVIN KLEIN and other Coty fragrance products. Under the injunction, C Lenu, as well as its customers and suppliers, are prohibited from trafficking in infringing Coty fragrances of any kind, including decoded Coty fragrances. Coty Inc., et al. v. C Lenu, Inc., et al., No. 10-21812 (S.D. Fla. filed June 3, 2010).

Obtained a preliminary injunction, which was affirmed on appeal, enjoining CVS's sale of decoded gray market DAVIDOFF COOL WATER fragrances, as well as counterfeits, based upon a holding that the removal of a serial number used for anti-counterfeiting and quality control purposes from gray market products was a "material difference" under the trademark laws even though consumers have no appreciation of the importance of the code. The decision is an important one to brand owners who seek to control counterfeiting by employing anti-counterfeiting devices and policing their channels of distribution. Zino Davidoff S.A. v. CVS Corp., No. 06 CV 15332 (KMK), 2007 WL 1933932 (S.D.N.Y. July 2, 2007), aff'd, 571 F.3d 238 (2d Cir. June 19, 2009).

Represented American Eagle Outfitters in a trademark infringement, unfair competitive and false advertising action involving advertising and sale of AMERICAN EAGLE footwear by Payless. The firm obtained a preliminary injunction prohibiting objectionable practices and requiring a prominent disclaimer of any affiliation with American Eagle Outfitters. Ultimately, the case was favorably settled. American Eagle Outfitters v. Payless Shoe Source, Inc., No. 071675 (E.D.N.Y. Nov. 10, 2008).

Obtained ruling effectively reversing UDRP decision by National Arbitration Forum that GMCI, publisher of Penthouse magazine, had engaged in reverse domain name highjacking in seeking transfer of domain name penthouseboutique.com to GMCI. General Media Communications, Inc. v. Heu, 2007 WL 102988 (S.D.N.Y. 2007).

Defeated a motion for a preliminary injunction brought by Pan American World Airways against our clients Flight 001, Inc. and Flight 001 Holdings, Inc., which operate travel boutiques under the FLIGHT 001 mark. Flight 001 named its enterprise after an historic around-the-world flight flown by the now bankrupt Pan American World Airways; plaintiffs acquired certain marks from the original Pan Am airline. Pan American World Airways, Inc. v. Flight 001, Inc., No. 06-14442 (S.D.N.Y. filed Dec. 13, 2006).

Obtained an ex parte seizure order and preliminary injunction resulting in the seizure of counterfeit Lacoste merchandise in raids conducted at 21 locations across Puerto Rico during the Christmas shopping season. Lacoste Alligator S.A. v. Sugar Shack Inc., No. 04-2367 (D.P.R. filed Dec. 13, 2004).

Won summary adjudication on behalf of defendants The Jim Henson Company, Simon & Schuster, Inc. and Viacom Inc. in an idea submission case on the grounds that plaintiff's contract-based claims on certain works in issue were barred by the statute of limitations and that the material defendants allegedly misappropriated in other works was too general a theme to be protected. Cavalier v. Jim Henson Co., Inc., Case No. BC 251828 (Cal. Super. Ct. Jan. 5, 2004).

Defeated preliminary injunction motion brought by an accessories manufacturer to prevent the U.S. launch of ECHO DAVIDOFF, a new fragrance line notwithstanding Scarves by Vera v. Todo Importa Ltd., Inc., 544 F.d 1167 (2d Cir. 1976), in which the Second Circuit held that the plaintiff fashion designer had the right to prevent use of the VERA mark on fragrances, which were "intrinsically related commercially." Echo Design Group, Inc. v. Zino Davidoff S.A., 283 F. Supp. 2d 963 (S.D.N.Y. 2003).

Defeated motion for a preliminary injunction in trademark infringement action against Jennifer Lopez and Coty Inc. based on alleged likelihood of reverse confusion between plaintiff's GLOW mark and defendants' GLOW BY J LO mark. Glow Indus., Inc. v. Jennifer Lopez, Coty Inc., et. al., 252 F. Supp. 2d 962 (C.D. Cal. 2002).

Obtained summary adjudication and an award of attorneys' fees and costs for Sears and Circle of Beauty in an unfair competition case involving the parties' competing claims of ownership of the mark in TIME OUT for bath and body products. Moss et al., v. Grypyon Dev., Inc., et al., No. 8:00-347 (C.D. Cal. filed Apr. 10, 2000).

Obtained preliminary injunction in action brought by exclusive authorized U.S. distributor of Citizen Watches against wholesale and retail distributors of gray market products. Citizen Watch Co. v. BJ's Wholesale Club, 99 Civ. 0810 (DB) (S.D.N.Y. July 15, 1999).

Defeating the defendant's claim to own copyright and trademark rights in two early characters created by Jim Henson at trial, notwithstanding the existence of a signed document purporting to assign away Henson's rights. Jim Henson Productions, Inc. v. John T. Brady & Associates, 867 F. Supp. 175 (S.D.N.Y. 1994), later opinion, 16 F. Supp. 2d 259 (S.D.N.Y. 1997).

Defended widow of artist Patrick Nagel in copyright infringement trial brought by publisher of Playboy magazine and succeeded in establishing her copyright ownership of a majority of the commercially valuable works in dispute. Playboy Enterprises v. Dumas, 831 F. Supp. 295 (S.D.N.Y. 1993), modified on reh'g, 840 F. Supp. 256 (S.D.N.Y. 1993), remanded, 53 F.3d 549, (2d Cir. N.Y. 1995), cert. denied, 516 U.S. 1010, (1995), on remand, 960 F. Supp. 710 (S.D.N.Y. 1997), aff'd, 1998 U.S. App. LEXIS 15225 (2d Cir. N.Y. June 8, 1998).

Established PepsiCo's ownership of world famous STOLICHNAYA mark for vodka following dissolution of former U.S.S.R. and obtained preliminary injunction against infringer. Financial Matters v. PepsiCo, Inc., 92 Civ. 7497 (RO), 1993 U.S. Dist. LEXIS 13294; 1994 Trade Cas. (CCH) P70521 (S.D.N.Y. Sept. 23, 1993).

Obtained summary judgment on behalf of NBC in idea submission case brought by former employee who allegedly originated idea for The Cosby Show. Murray v. National Broadcasting Co., 671 F. Supp. 236 (S.D.N.Y. 1987), 844 F.2d 988 (2d Cir. 1988), cert. denied, 488 U.S. 955 (1988), later proceeding, 718 F. Supp. 249 (S.D.N.Y. 1989).

Successfully tried copyright infringement case brought by NBC against a videotape distributor selling unauthorized copies of an acclaimed 1950s television special “Peter Pan” starring Mary Martin. National Broadcasting Co. v. Sonnabend, 630 F. Supp. 524 (D. Ct. 1985).

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Insights
Education

Columbia Law School J.D. (1980) Harlan Fiske Stone Scholar, ASCAP Nathan Burton Award, Columbia Human Rights Law Review Associate Editor

Yale University B.A. (1977) English, summa cum laude, Phi Beta Kappa, distinction in the English Major

Admissions

New York

Court Admissions

U.S. Courts of Appeals for the Federal, Second, Ninth and Eleventh Circuits

U.S. District Courts for the Southern and Eastern District of New York

U.S. Supreme Court

Professional & Community Activities

Association of the Bar of the City of New York

Copyright Society of the U.S.A.

International Trademark Association (INTA), Trademark Mediators Network

Marques, Member, Dispute Resolution Team, former Chair, IP Outer Borders Team

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