The Legal 500

New York advertising, marketing and media boutique Davis & Gilbert LLP advises on the creation, production and dissemination of advertising across all media, focusing on interactive technology and consumer generated content. Clients rely on the ‘top-notch’ firm for ‘complex risk assessments and navigating difficult situations’. Lawyers are commended as ‘responsive and timely with sound, pragmatic advice, but tough when necessary’. The 19-partner group focuses primarily on transactions and counseling. Contentious work includes false advertising cases and cases of first impression involving unsolicited advertising, internet advertising and pre-sale promotional trade mark use. The practice advises industry trade associations, notably the American Association of Advertising Agencies (AAAA) and the American Advertising Federation (AAF) in filing formal comments to the FTC regarding proposed changes to its environmental marketing guidance and negotiating the new standard terms and conditions for internet advertising, which were facilitated and endorsed by the major trade associations for the advertising industry and digital web publishers. Clients include leading advertising agencies BBDO Worldwide, J Walter Thompson, Ogilvy & Mather and TBWA Chiat Day and global brands MTV Networks, Apple, Affinion and Nissan. In 2010, the litigation team successfully defended helmet manufacturer Cascade Sports before the NAD in an advertising challenge brought by Bauer Hockey. Marc Rachman represented Harpo, owner of the Oprah trade marks, and Dr Oz against over 40 manufacturers and marketers of products containing unauthorized use of Oprah and Dr Oz’s names, images or likenesses. The case settled in September 2010. Clients recommend practice head Ronald Urbach as ‘best in the field – responsive, knowledgeable, practical – and a pleasure to work with’. James Johnston’s ‘entertainment background and calming approach’, Joseph Lewczak’s ‘broad knowledge base’, Howard Weingrad’s ‘astute business approach’, and ‘strong all-rounder’ Richard Eisert are also praised.

Frankfurt Kurnit Klein & Selz is considered ‘top of the line’ with ‘smart and practical lawyers who respond quickly and aggressively,’ with advice on all aspects of advertising, ranging from agency formation and M&A to helping advertisers and agencies adapt their agreements and business models to new media and emerging technologies. It clears creative work and advises on cutting-edge marketing communications which avoid infringement claims and regulatory problems. Combining ‘terrific skills and a great spirit for new paradigms’ with intellectual property expertise, the practice provides a valuable perspective on the convergence between marketing and entertainment, product placements, sponsorship, celebrity endorsements, and interactive and behavioral advertising. Clients include over 100 advertising agencies, notably AKQA, RGA, Digitas, Anomaly, Droga 5, evb, Firstborn and Crispin Porter & Bogusky; top brands including Nike; and agency bodies AAAA, ANA and the Society of Digital Agencies. Rick Kurnit is respected by peers and clients for his experience and industry expertise. Candice Kersh is ‘incredibly smart and experienced with great people skills.’ Brian Murphy advises on complex promotions, user-generated content, social networking, and interactive, mobile, and emerging content platforms. Jeffrey Greenbaum is commended for his ‘deep knowledge of regulatory issues’. Gavin McElroy is praised for his ‘negotiation skills’. Leading entertainment partner Richard Hofstetter advises on the marketing and promotion aspects of unscripted TV. In 2010, the team was bolstered by Terri Seligman from Manatt, Phelps & Phillips, LLP. IP litigator and copyright expert Edward Rosenthal is also recommended.

Kramer Levin Naftalis & Frankel LLP’s eight New York partners provide ‘pragmatic advice, coupled with deep knowledge of advertising law,’ to leading pharmaceutical and consumer products companies, retailers and software firms on claim substantiation and advertising clearance, and handle high-profile litigation. Practice head Harold Weinberger, an ‘extremely intelligent and responsive’ litigator, is respected for upholding the ‘highest ethical standards’ and ‘quickly penetrating technical detail’. His team won a landmark victory for PBM Products in a rare jury trial of a Lanham Act false advertising case. The court found Mead Johnson liable for falsely claiming that store brand infant formula manufactured by PBM Products was nutritionally inferior to Mead Johnson’s products. PBM was awarded $13.5m in damages, and Mead Johnson’s $40m counterclaim was completely dismissed (the case has since gone to appeal). It represented Neutrogena in a litigation battle against Schering-Plough, maker of Coppertone, regarding the ingredients of Neutrogena’s sunscreen products. Donald Rhoads and Christopher Colvin won a major false advertising victory for Bracco Diagnostics against GE Healthcare regarding the purported superior safety of GE’s x-ray contrast agent Visipaque over Bracco’s competing Isovue product. The practice successfully defended Procter & Gamble’s Tampax Pearl tampons against ongoing advertising challenges by Playtex Products. Weinberger and Norman Simon successfully represented advertisers, notably McNeil-PPC and The Dannon Company, in challenges before the NAD and the National Advertising Review Board (NARB). Other key clients include Johnson & Johnson, and AstraZeneca. Jennifer Rochon and Kerri Ann Law are also recommended.

Patterson, Belknap, Webb & Tyler’s experienced team, led by litigation chair Steven Zalesin and supported by the firm’s wider IP strength, represents consumer products companies in Lanham Act disputes and before the NAD and FTC. Of counsel Christine Miller, who heads the firm’s advertising counseling and NAD practice, also advises on advertising substantiation and network clearance. In 2010, Zalesin and his team successfully represented Coca-Cola in a false advertising suit brought by the makers of the pomegranate juice POM Wonderful. The practice successfully defended Burt’s Bees’ claim that its natural toothpaste is clinically proven to improve oral health against a challenge before the NAD, which also upheld Burt’s Bees’ dentist endorsement claim. Other clients include The Dial Corporation, L’Oreal/Maybelline, Priceline.com, Spectrum Brands, Johnson & Johnson and Ethicon Endo-Surgery.

Proskauer Rose LLP’s 18-partner advertising litigation practice works out of New York, Boston, Washington DC and Los Angeles. Led by ‘superb, experienced practitioners and excellent trial lawyers’ Lawrence Weinstein and Brendan O’Rourke, the group handles competitor claims under the Lanham Act, consumer class actions governed by state laws, proceedings before the NAD and FTC challenges. Patents and technology are particular areas of strength. The group successfully represented longstanding client Church & Dwight in a state law consumer class action false advertising suit in the Northern District of California, and is representing Dyson in a Lanham Act false advertising suit against Garry Vacuums and Envion. The team’s representation of the US Green Building Council, the developer and administrator of the LEED environmental certification rating program, points to its green advertising law expertise. Other clients include Bausch & Lomb, T-Mobile USA, PepsiCo, Georgia-Pacific, Playtex Products, Diageo, PPL, Merix Pharmaceuticals and new client Time Inc. Lawrence Weinstein, Brendan O’Rourke, Michael Mervis and Baldassare Vinti are recommended. According to one client, ‘the level of service is superb. It goes out of its way to help its clients fully understand how the law applies to marketing/advertising’.

Reed Smith LLP’s multidisciplinary advertising, technology and media group has over 60 lawyers in offices across the US and internationally. The team’s bandwidth is reflected in its ability to handle a diverse range of regulatory, transactional and litigation work for advertising agencies and global brands, including Publicis Groupe, Reebok, Viacom, Sony, Nickelodeon, Fox Television and MTV Networks. Practice head Douglas Wood in New York is described as ‘practically a brand name in the industry’ and recommended for his ‘astounding acumen and insight into negotiations and legal theory ‘, alongside ‘online advertising expert’ Joseph Rosenbaum. Wood is general counsel to industry bodies the Association of National Advertisers, the Advertising Research Foundation and The Advertising Council, and Rosenbaum is general counsel to the Interactive Advertising Bureau. Wood is also the advertising industry’s lead negotiator for the collective bargaining agreements with the Screen Actors Guild (SAG), the American Federation of Television and Radio Artists (AFTRA) and the American Federation of Musicians (AFM). The practice is recognized for its expertise in internet, copyright and intellectual property law. It handles celebrity endorsements, notably for Lancôme and Prestige, as well as advertising clearance, licensing and multi-platform promotions, focusing on digital, online and social media, particularly online gaming, e-commerce and behavioral advertising. Rosenbaum advises on integrated advertising involving product placements in games and virtual worlds for clients including Electronic Arts, Viacom, MTV Games and Clash Media. Regulatory work for the firm has increased, notably in the pharmaceutical and financial services sectors. John Feldman and his team in Washington DC represented CVS Caremark in negotiations with the FTC and compliance with consumer privacy regulations.

Venable LLP’s 34-partner advertising practice in Washington DC, New York and Los Angeles handles regulatory, transactional and litigation work. Lawyers win plaudits for ‘business acumen, industry knowledge and terrific response times’. Practice head Jeffrey Knowles, who ‘attacks matters with a combination of thoughtful strategy, raw aggression and limitless energy’, is recognized for his expertise in direct response advertising and advertising compliance, reviewing television and radio scripts, internet and direct mail advertisements. The group in Washington DC is recognized for its ‘deep domain expertise and an excellent reputation with government policymakers’, and represents nearly every marketing industry association, as well as coalitions lobbying for industry self-regulation of online marketing and seeking to shape the FTC’s revised endorsements and testimonial guidelines. Internet advertising and behavioral marketing are particular focus areas, with clients including Verizon Communications and Google. Stuart Ingis played a key role in DMA’s formulation of an industry self-regulatory program for behavioral marketing on the internet. Litigation head Roger Colaizzi is commended for his ‘ability to handle complex litigation, separate law from business points and find strategic ways to settle disputes’. Contentious work includes IP disputes, Sherman Act claims and litigation involving the FTC and FDA. The group represented chicken producer Perdue Farms in an NAD false advertising challenge brought by the Animal Welfare Institute. Other areas of expertise include over-the-counter drug and dietary supplement advertising and financial services advertising, with Lanham Act litigator Thomas Gilbertsen, who joined from Kelley Drye & Warren LLP representing Bank of America. Also recommended is Melissa Landau Steinman, who advises on sweepstakes in the social media space. Other key clients include Amazon, American Express, Clorox, Guthy-Renker, Kerzner International, Marriott, New Look, NBC Universal, Reed Elsevier, The Sugar Association and Sony Ericsson.

Kelley Drye & Warren LLP’s national advertising practice handles transactional work, NAD hearings, class action defense and false advertising litigation. It is particularly well regarded for its regulatory prowess, with core strength in FTC matters and proceedings before NAD and NARB. Key clients include Burger King, Dell, Electrolux, Expedia, Nestlé HealthCare Nutrition and The Sherwin-Williams Company. Nine partners and ten associates work out of Washington DC, supported by special counsel August Horvath in New York. Regulatory work includes representing Pre-Paid Legal Services in negotiations with the FTC investigation regarding its advertising and privacy business practices. John Villafranco, who represents Sprint Nextel, wins plaudits from clients and peers. Dana Rosenfeld represented national pharmacy chain Walgreens in a settlement with the FTC regarding advertisements for “Wal-Born” dietary supplements. Practice head Lewis Rose and Food and Drug Administration (FDA) specialist Sarah Roller are defending Ocean Spray against claims by POM Wonderful alleging that labeling and advertising for Ocean Spray’s pomegranate and cranberry juice blend products violated the Lanham Act and California consumer protection laws. Gonzalo Mon, who has particular expertise advising on new media ad campaigns and promotions, and ‘rising star’ Alysa Hutnik, who focuses on consumer protection issues, were elected partner.

Loeb & Loeb LLP’s advanced media and technology group is ‘best in class on all fronts’. Providing expertise on marketing and advertising/regulatory, consumer protection defense and unfair competition, it combines litigation and regulatory strength with transactional prowess. Nineteen partners in New York, Chicago, Los Angeles and Washington DC focus on technology and emerging media, regulatory matters, Lanham Act false advertising cases and related litigation and are commended for their ‘business-centered approach’. Michael Mallow in Los Angeles heads the recently established consumer protection defense and unfair competition group of experienced litigators who defend government enforcement actions and investigations and private class-action lawsuits that allege violations of consumer protection and unfair competition laws. Recent highlights include advising SC Johnson on social media and emerging media initiatives as well as brand integrations into traditional and online programming, and assisting Amazon.com and Facebook with international promotions. The practice continues to advise Canoe Ventures – a collaborative platform for the distribution of targeted advertising – on regulatory compliance, privacy safeguards, promotional strategies, IP exploitation and protection, and technology agreements for the launch of this interactive service provided by several cable companies. It is advising longstanding client Comcast on numerous social media promotions and mobile marketing initiatives. Contentious work included representing the National Pork Producers Council before the US Trademark Trial and Appeal Board (TTAB) in successfully challenging an application to register “The Other Red Meat” based upon a claim that the mark would dilute the distinctiveness of the mark “The Other White Meat”. This was the first TTAB decision upholding a trademark dilution claim in seven years. The team successfully defended Toyota Motor Sales USA in two class actions. Other clients include IPG Companies, Saatchi & Saatchi, Digitas, Dell, Canon, T-Mobile, Seagate Technology and Visa. Clients recommend New York-based practice co-chair Kenneth Florin as ‘extremely smart, timely, client-friendly and cost effective’. Practice co-head James Taylor ‘can always find a reasonable solution that works for all parties’. Rob Andalman in Chicago is ‘creative, exceptionally smart, strategic and responsive’. Clients have ‘absolute confidence’ in trademark litigator Tamara Carmichael. Daniel Offner, who heads the interactive entertainment practice, joined from Nixon Peabody LLP.

Manatt, Phelps & Phillips, LLP’s team includes New York-based advertising lawyers, a strong West Coast entertainment and media presence and an advertising litigation and regulatory practice in Washington DC. Instructions cover traditional and new media, mobile marketing, branded entertainment, and interactive and social media. The group handles compliance, transactions and litigation arising from false advertising claims, with litigators undertaking both plaintiff and defense work. Although the practice is best known for representing major brands, it also acts for advertising agencies, with Jeffrey Edelstein in New York providing ongoing advice to The Martin Agency, most recently on AOL’s “Safe Social” program. In addition to transactional and compliance work, the group advised on sponsorship, event marketing, brand integration, celebrity endorsements, alternative advertising and user-generated content, social media policies, sweepstakes and competitions. The proliferation of false advertising cases continues, and in 2010 the group handled over 20 NAD challenges. New York-based practice head Linda Goldstein and Christopher Cole in Washington DC ‘have excellent knowledge of marketing and advertising laws, are very responsive and understand the need to provide value in a cost effective manner’. Highlights included handling NAD actions for Kimberly-Clark Corporation (KCC), notably successfully challenging advertising claims by Procter & Gamble concerning its Dry Max diapers. Edelstein and Angela Hurdle successfully defended Schick safety razors against an NAD action brought by Gillette. Goldstein led a team providing legal and regulatory guidance to Sales Portal on the launch of its novel lead generation product. Transactional highlights included acting for Diageo negotiating financing, production and distribution deals for a new reality show. The practice successfully defended General Mills in a putative class action lawsuit claiming that an on-pack game can fall within the purview of the gambling laws. Other key clients include AT&T, Best Buy, Coca-Cola, DIRECTV, Electrolux, Expedia, Live Nation and MillerCoors. In 2010, Thomas Morrison, from Patterson, Belknap, Webb & Tyler, and Marc Roth, from Time Warner subsidiary Synapse Group, joined the team. Terri Seligman left to join Frankfurt Kurnit Klein & Selz.

Clients commend Morrison & Foerster LLP’s 20-strong team as ‘outstanding value, highly responsive and knowledgeable’. The California contingent handles false advertising cases on Lanham Act issues and California Business & Professions Code §17200 and §17500 disputes. D Reed Freeman and Julie O’Neill in Washington DC ‘render relevant and cost conscious advice’ on national advertising and FTC matters. Clients appreciate Freeman’s ‘unique expertise’ on internet and behavioral advertising. Freeman and O’Neill counsel clients including Dotomi, Experian Digital Advertising Services, 33 Across and Adchemy on online advertising regulation. William Stern and his team in California handle cases brought by the Surgeon-General in relation to health claims made in advertising. The practice successfully defended Unilever in two long-running class actions filed in the Northern and Central Districts of California regarding Unilever’s advertising of its vegetable oil spreads “I Can’t Believe It’s Not Butter!”, Imperial and Country Crock. The team is representing virgin olive oil importers in class actions pending in California, Florida and Wisconsin claiming that importers market and sell inferior products labeled as “extra virgin” olive oil. David McDowell successfully defended Target against claims regarding sales tax and a proposed class action regarding “Made in the USA” labels Other clients include Netflix, Expedia, LensCrafters, Fujitsu America, Palm and Arbitron. Penny Preovolos in San Francisco is ‘extremely knowledgeable about consumer class action cases, false advertising claims’.

Sheppard, Mullin, Richter & Hampton LLP’s marketing and advertising practice is recommended for its ‘short turnaround times and business acumen’, advising brand manufacturers, web operators and agencies on sports, entertainment and interactive marketing. Practice head Robert Darwell and partners Shaun Clark, in Los Angeles, and Benjamin Mulcahy, in New York, are supported by the firm’s media and entertainment prowess. The practice advises major motion picture studios and brand manufacturers on joint promotion campaigns across all media platforms as well as handling sports-related advertising and promotional work. Highlights included advising Summit Entertainment on major promotional initiatives for the movie The Twilight Saga: New Moon, Lions Gate Films on promotional campaigns for the DVD release of Mad Men and the theatrical release of motion picture titles, including Daybreakers, The Warrior and Kick Ass, and Paramount Pictures’ on promotional initiatives for movies Up in the Air, Transformers: Revenge of the Fallen and The Last Airbender. Deals with promotional partners included General Motors, American Airlines, LG, M&M Mars, Burger King, 7-Eleven and McDonald’s. Sports marketing expert Benjamin Mulcahy is recommended for his ‘amazing insight and thorough knowledge’. He represents MillerCoors on numerous initiatives, including deals with the New York Jets, New York Giants, San Francisco 49ers and the San Francisco Giants, and negotiated advertising agreements on behalf of the Rose Bowl to pay for the stadium’s renovations. Work at the cutting edge of marketing and technology has focused on online and mobile content and data privacy. The group successfully represented Williams-Sonoma Stores in an advertising/data privacy class action that is currently pending before the California Supreme Court. Other clients include Ogilvy & Mather, CBS Films, Auditude, Coty and Liz Claiborne.

Winston & Strawn LLP provides ‘stellar service’, advising advertising agencies, promotional companies and major consumer product manufacturers on advertising substantiation, FTC review and counseling, sweepstakes and promotions, NAD and network concerns, talent and sponsorship contracts, privacy law issues, and trade mark and copyright review and litigation. In 2010 the ‘supremely knowledgeable’ Brian Heidelberger became chair of the advertising, marketing and entertainment practice. Commended for his ‘insightful, prompt, cost effective advice’, he successfully represented Office Depot in two false advertising cases before the NAD. Heidelberger won a major victory for NBA all-star Chris Bosh in a domain name infringement claim against a cybersquatter, winning a substantial monetary judgment, the return of his domain name and almost 800 domain names of other athletes. Transactional work included representing the promotional agency that designed and administered LG National Texting Championships. Other clients include Taco Bell, QIP Holders, Toyota, Motorola, Pepsi, McDonald’s, Wrigley, Nestlé and Spin Master. Liisa Thomas specializes in copy clearance, trademarks and youth marketing. Ronald Rothstein handles major false advertising cases. Brian Fergemann is recommended ‘for network clearance of advertising materials’.

Covington & Burling LLP advises on the interface between marketing and privacy issues, focusing on FTC self-regulatory guidelines, and CAN-SPAM and rules around e-mail and mobile marketing. Commended for its ‘fast response and industry knowledge’, the group is underpinned by the firm’s strong practices in data protection and privacy and transactional prowess in technology and telecoms. It frequently represents clients in appearing before Congress, state attorneys general and regulatory agencies. The firm advises advertisers, internet service providers and software vendors on technology-driven marketing activities, notably online behavioral advertising, text message advertising, and the use of alternative distribution platforms for data collection and transmission as well as reviewing advertising copy. Erin Egan and Yaron Dori in Washington DC advised Ann Taylor and Hulu on delivering marketing initiatives via third-party social media platforms. The firm’s international footprint supports its work for global corporates, notably advising Procter & Gamble on privacy issues, including cloud computing, online advertising, call interception and recording laws affecting its call center operations in US and non-US jurisdictions. A prestigious client list includes Microsoft, GlaxoSmithKline and King Pharmaceuticals.

Dewey & LeBoeuf LLP’s ‘responsive, thorough and savvy’ media and entertainment practice and intellectual property transactions group bring together expertise in trademark, copyright, advertising and privacy, advising one of the world’s largest consumer products companies on its diverse portfolio. Clients commend its lawyers’ ‘top-notch litigation skills’. The practice focuses on integrated marketing campaigns designed to communicate a consistent multimedia message across traditional and new platforms with a particular focus on targeted advertising, mobile devices, including tablets and interactive advertising including new developments such as click-over TV. Doron Goldstein and practice co-head Stanton Lovenworth advised on contracts relating to a variety of campaigns notably for Sun Products. As well as representing banks, insurance companies and power companies, the practice undertakes pro bono work for Seven Bar Foundation. Jeffrey Kessler and David Feher are ‘smart, detail oriented and responsive both on substance and timeliness’, and commended for their ‘strong industry knowledge’.

Foley & Lardner LLP is a leading IP firm, which provides advice to advertisers on trademark and brand issues. A ‘knowledgeable, competent and professional’ team led by Craig Fochler in Chicago continues to represent Alberto-Culver in global a TRESemmé hair care false advertising claim brought by Procter & Gamble in South Africa, Spain and Mexico. Fohler has handled numerous foreign trademark litigation cases for 7-Eleven. In New York, practice head Jeffrey Green advises Citigroup on trademark and related issues in over 100 countries worldwide, while Jonathan Moskin represents QVC. Other clients include Calvin Klein, Colgate-Palmolive, Mattel, Motion Picture Association of America, Priceline, QVC and Yahoo!.

At Kirkland & Ellis LLP, practice head Ross Weisman’s 15-strong team in Chicago, Washington DC, New York and Los Angeles is supported by the firm’s national footprint and core strength in IP, technology and science. Work undertaken includes investigating, prosecuting and defending advertising, marketing and unfair competition claims. The group is commended for its ‘exceptional knowledge and expertise’ and has an impressive track record of handling litigation and NAD work for high-profile advertisers. In 2010, Weisman and David Callahan secured a substantial victory in a federal district court action for Dyson, maker of the Airblade hand dryer. Tom Monagan focuses on Lanham Act litigation.