Johanna Schmitt
Partner
Norton Rose Fulbright US LLP
Related services and key industries
Key industry sectors
Biography
Johanna Schmitt focuses on intellectual property law, specifically trademark, trade dress, copyright, domain name, false advertising, licensing and contract issues. She advises clients across many industries, including retail, consumer goods, apparel, hospitality, travel, financial, entertainment and healthcare. She guides clients through the process of planning and launching new brands on a global basis, and she offers strategic advice about a wide range of trademark prosecution and trademark clearance matters.
In addition, Johanna helps clients enforce and protect their intellectual property rights and litigates disputes related to such rights in federal court and before the Trademark Trial and Appeal Board (TTAB) of the US Patent and Trademark Office (USPTO).
Professional experience
Collapse allJD, summa cum laude, Brooklyn Law School, 1999
BA, Columbia University, 1992
- New York State Bar
- Represented a social media company in a copyright infringement and trade secret misappropriation lawsuit brought based on alleged use of the plaintiff’s scene recognition dataset for machine learning. Won motion to dismiss the claims on the basis that the plaintiff failed to allege a valid copyright registration over the original subject matter and that its information was nonpublic such that it could constitute a trade secret.
- Represented American omnichannel sports goods retailer in multiple trademark litigations in federal court and opposition proceedings before the TTAB.
- Successfully represented producer of popular children’s programming in royalty dispute against intellectual property licensee.
- Represented a social media company and its affiliates in multiple trademark matters involving its businesses, including successfully defending it in an infringement case regarding its “portal” device and defending a virtual reality technology company against a software company that alleged infringement of its marks.
- Represented a major airline in asserting claims against a major hotel chain for infringement and dilution based on the hotel company’s sub-brand of hotels.
- Defeated preliminary injunction motion against an American luxury fitness company in a trademark infringement lawsuit brought by a hotel management group over plans to extend its lifestyle brand into line of luxury hotels.
- Obtained dismissal of copyright infringement claims against an American athletic footwear and apparel corporation regarding its photograph of sports celebrity and logo, which was affirmed by the Ninth Circuit.
- Won TTAB trial for a leading computer, mobile device and media player company and obtained dismissal of oppositions to two of its trademark applications based on priority and likelihood of confusion; obtained affirmation of TTAB decision in an appeal to the district court on summary judgment. Also won summary judgment for the client on its counterclaims for trademark infringement and successfully moved for a permanent injunction. District court's decision was affirmed by Fourth Circuit.
- Obtained injunction for a leading computer, mobile device and media player company to enjoin infringement of famous mark.
- Successfully represented an American multinational telecommunications company in a trademark infringement lawsuit brought by an investment bank and financial services corporation related to a loyalty program. After defeating a motion for preliminary injunction, the financial services company voluntarily dismissed its complaint with prejudice.
- Successfully represented a cruise ship company in a high-profile trade secret lawsuit seeking damages of US$300m. After the completion of discovery and filing of summary judgment briefs, the case was settled on confidential terms.
- Representing a footwear brand in a US International Trade Commission (ITC) proceeding, seeking to bar a group of defendants from importing into the United States footwear that infringes and dilutes the brand’s famous midsole trade dress for its Chuck Taylor All-Star shoes.
- Represented a hotel brand management company in connection with the enforcement of two of its hotel brands, including successfully overturning an adverse TTAB decision in district court.
- Won summary judgment for a video game manager and licensor (the company) in a copyright and trade dress case filed against a start-up company (the start-up) that had released a knock-off. After the start-up contested the company’s Digital Millennium Copyright Act (DMCA) take-down notice, the company sued the start-up for infringing its copyrights and trade dress rights in the visual expression and “look and feel” of its game. The case involved novel and complex issues of copyright and trade dress law — namely, what constitutes the protectable visual expression of a video game, as opposed to unprotectable “rules” and functional elements.
- Won summary judgment for a major news network in a copyright infringement suit against a media monitoring company that “delivers real-time TV and radio content on an international platform for a flat fee,” affirmed by Second Circuit.
- Successfully defended patent law firm against scientific publishers alleging that law firm infringed copyrights by making copies of journal articles as part of disclosure to the USPTO in patent prosecution.
- Successfully defended a subsidiary of an American multinational consumer products company in a trademark infringement suit regarding its brand of pet food.
- Represented the owner of a supermarket chain in a lawsuit, asserting claims of breach of contract and fraud in the inducement against licensor of warehouse procurement software.
- Represented the author of a series of fantasy novels in copyright and trademark matters regarding the books.
- Successfully defended a lingerie, clothing and beauty retailer in a trademark infringement claim regarding its new collection of personal care products.
- Successfully defended a lingerie, clothing and beauty retailer in a copyright infringement suit regarding its advertising, including winning a motion to dismiss copyright infringement claims based on lack of substantial similarity.
- Represented an American multinational consumer products company in trademark litigation involving its oral care products brand against two distributors of the brand’s mouthwash.
- Represented an American publicly traded, multinational conglomerate corporation in class actions premised on fraud on the trademark office involving the trademark for thermostats.
- Successfully obtained a temporary restraining order on behalf of a grocery store chain barring another supermarket chain from opening a new store in New York City under a similar name. The case settled on favorable terms shortly thereafter.
- Represented an anti-money laundering consultant company as a plaintiff in a multi-defendant case involving the alleged copyright infringement and theft of trade secrets relating to software used to monitor bank transactions for fraud and abuse.
- Defended a social networking website its parent company in a high-profile copyright infringement lawsuit brought by a Dutch–American multinational music corporation.
- Successfully defended a lingerie, clothing and beauty retailer in its suit against a clothing wholesale distributor and a department store company seeking injunctive relief and damages based on infringement of its PINKISH brand.
- Successfully defended a major news network’s famous “Fair & Balanced” trademark in a cancellation proceeding before the Trademark Trial and Appeal Board.
- Successfully represented the publisher of an American conservative daily tabloid newspaper published in New York City to protect its famous “Page Six” trademarks against trademark infringers and cybersquatters.
- Successfully defended a video game developer in a copyright infringement case brought by EMI.
- Successfully represented movie studio in a high-profile copyright, false advertising and breach of contract lawsuit against an American comic book publisher and two media companies concerning Marvel comic book franchise.
- Won summary judgment in a high-profile copyright and trademark action that accused the author of a fantasy novel series of plagiarism; as well as US$50,000 in sanctions and an award of attorney fees because of claimants’ fabricated evidence.
- Represented the Recording Industry Association of America in an action under the DMCA to enjoin access to an infringing website.
- Chambers USA, New York, IP: Trademark, Copyright and Trade Secrets, Chambers and Partners, 2024
- WTR 1000: Litigation (New York, Tier 3) and Prosecution (New York, Tier 3), World Trademark Review, 2021–2023
- Legal 500 US, Trademarks: Non-Contentious, The Legal 500, 2023
- Legal 500 US, Trademarks: Litigation, The Legal 500, 2013, 2018
- Legal 500, Copyright, The Legal 500, 2015–2018
- Legal 500, Media and Entertainment, The Legal 500, 2017–2018, 2022–2023
- Member of INTA Right of Publicity Committee, 2022-2023
- Member of INTA Emerging Issues Committee, 2020–2021
- Member of Communications & Media Law Committee, New York City Bar Association, Current
- Member of the Non-Traditional Marks Committee (NTM), International Trademark Association, 2012–2015
- Member of the Trademark Administrators Committee — Outreach Project Team, International Trademark Association, 2010–2011
- Member of Entertainment Law Committee, New York City Bar Association, 2009
- Trademark and Unfair Competition Committee, New York City Bar Association, Secretary 2003–2005; Member 2006–2009