Joshua Wolkoff

Joshua S. Wolkoff

Partner
Baker & McKenzie LLP

Biography

Josh Wolkoff is a partner 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, luxury and fashion 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, brand protection and enforcement, and right of publicity matters. He represents clients in state and federal courts throughout the country and in opposition and cancellation proceedings before the Trademark Trial and Appeal Board. In addition, Josh frequently advises on intellectual property issues in the context of corporate transactions, trademark prosecution, portfolio management, and intermediary liability on behalf of online platforms, brands and content owners.

Representative Legal Matters

  • Representing information technology company in action for copyright infringement and DMCA violations against competitor arising from allegations of unauthorized use of copyrighted maps.

  • Advising online platforms and social media networks on DMCA notice and takedown compliance, policies and procedures and related intermediary liability issues.

  • Secured permanent injunction on behalf of global food and beverage company in copyright and trademark infringement action against a declaratory judgment plaintiff who initially sued for non-infringement and abandonment.

  • Obtained first impression ruling concerning a defendant's standing to invalidate a copyright in the absence of an affirmative claim for infringement by the plaintiff.

  • Won summary judgment dismissing four trademark infringement claims and prevailing on affirmative breach of contract claim in technology transfer dispute.

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

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

  • Defeated preliminary injunction and obtained summary judgment barring claims for defamation against internet service provider and online message board under Section 230 of the Communications Decency Act.

  • Obtained preliminary injunction, summary judgment and subsequent fee award 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.

  • Successfully defended one of the world's largest independent press agencies and wire services against claims of direct and contributory copyright infringement, as well as violations under the DMCA.

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


Professional Associations and Memberships

  • Copyright Society of the U.S.A.
  • International Trademark Association (INTA), Young Practitioners Committee (2015-2019)
  • New York City Bar Association, Trademark and Unfair Competition Committee (2014-2016)
  • 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

  • Author, "DMCA Takedown Notices Require Fair Use Considerations," Digital Media Licensing Association's Blog, 30 September 2015

  • Author, "Ninth Circuit Finds Use of Street Art in Green Day Concert Video a Fair Use," Picture Archive Counsel of America's Blog, 9 September 2013