Photo, Joshua S. Wolkoff

Joshua S. Wolkoff

Associate
Baker & McKenzie LLP

Biography

Josh Wolkoff is an associate in the North American Intellectual Property practice group. He routinely litigates and counsels clients on all aspects of copyright and trademark law, with particular experience representing clients in the media, entertainment, technology, and fashion and apparel, and food and beverage industries. For the past five consecutive years, Josh has been recognized as a "Rising Star" in the area of Intellectual Property Litigation by Super Lawyers Magazine. Prior to joining Baker McKenzie, Josh was a litigation associate at a leading entertainment, digital media and intellectual property boutique in New York.

Practice Focus

Josh focuses his practice on litigating copyright and trademark disputes, global brand protection and enforcement, and right of publicity matters. He represents clients in state and federal court, in opposition and cancellation proceedings before the Trademark Trial and Appeal Board, and in domain name disputes before the World Intellectual Property Organization. In addition, Josh is frequently called upon to advise on various intellectual property issues in the context of corporate transactions, trademark prosecution, and portfolio management.

Representative Legal Matters

  • Represents global food and beverage company in ongoing trademark and copyright litigation.

  • Obtained summary judgment on affirmative breach of contract claim and dismissing counterclaims for trademark infringement in ongoing technology transfer dispute.

  • Represents transnational consumer goods company in US trademark prosecution and disputes before the Trademark Trial and Appeal Board.

  • Represents global retail bank in US trademark prosecution, enforcement, and disputes before the Trademark Trial and Appeal Board.

  • Successfully defended claims of copyright infringement brought by photographer against luxury fashion house, as a result of advertising campaign.

  • Successfully defended claims of copyright infringement in action brought by textile designer against private label lingerie manufacturer and luxury department store.

Prior to joining the Firm, Josh handled the following matters:

  • Obtained preliminary injunction on behalf of film producer against motion picture contributor in declaratory judgment action for non-infringement of copyright and sole authorship. Served as second chair in appeal, later affirmed by the Second Circuit, in important decision involving copyright co-ownership and the rights of collaborators.

  • Defended professional sports league and member team in trademark dispute concerning team name.

  • Defended preliminary injunction and ensuing litigation brought by competitor of leading 3D medical software developer, based on allegations of copyright infringement to enjoin sale of award-winning 3D medical app; settled favorably.

  • Defeated copyright infringement and right of publicity claims brought by model against major stock photography agency on motion to dismiss.


Professional Associations and Memberships

  • International Trademark Association (INTA), Young Practitioners Committee
  • New York City Bar Association, Trademark and Unfair Competition Committee (2014-2016)
  • Copyright Society of the U.S.A.
  • Media Law Resource Center (MLRC), Copyright & Trademark Committee (2014-2015)
  • New York City Bar Association, Entertainment Law Committee (2011-2014)

Admissions

  • New York~United States (2011)
  • New Jersey~United States (2010)
  • U.S. Court of Appeals, Second Circuit~United States (2013)
  • U.S. District Court, Southern District of New York~United States (2011)
  • U.S. District Court, Eastern District of New York~United States (2011)
  • U.S. District Court, District of New Jersey~United States (2012)

Education

  • Benjamin N. Cardozo School of Law (J.D.) (2010)
  • Rutgers University (B.A.) (2007)

Languages

  • English

Publications

Author, US Supreme Court Clarifies Test for Copyright ability of Designs of "Useful Articles," Client/Legal Alert, 24 March 2017

Author, Significant Changes to TTAB Rules Take Effect, Client/Legal Alert, 26 January 2017

Author, United States - Federal Appellate Court Strikes Down Ban on Disparaging Trademarks as Unconstitutional, Client/Legal Alert, 7 January 2015

Presentations

Moderator, "Getting in the Game: IP Protection in Professional Sports," sponsored by the International Trademark Association, 6 March 2019

Speaker, "Behind the Label: IP Insights and Trends in Luxury & Fashion," Global IP Webinar Series, 29 March 2017