Mark J. Rosenberg

Partner

P 212.216.1127   F 212.216.8001

 
P 212.216.1127   F 212.216.8001   mrosenberg@tarterkrinsky.com

Mark J. Rosenberg is a partner in the Intellectual Property Group and a co-chair of the firm’s Reputation Management practice. Mark assists his clients in protecting their rights, reputations and businesses in the fields of intellectual property, defamation, privacy, right of publicity and Internet marketing. His varied client base includes high net worth individuals, early-stage technology companies, established Internet marketers, large apparel companies and national retail and restaurant chains. Mark strives to employ creative and cost-effective strategies in order to achieve the most beneficial results.

Mark collaborates with his clients to acquire, protect, enforce and license their intellectual property rights. He has represented clients in courts throughout the country involving patent, trademark, copyright, trade dress, trade secrets and advertising law. Among many others, the cases have concerned:

• patents covering power tools;
• trade dress covering hand tools and product packaging; 
• use of trademarks in advertising and business names;
• copyrights in advertising copy and sculptures; and
• trade secrets underlying software programs.

Mark has developed a specialty in representing clients in cases involving trade dress rights relating to the interior designs of retail stores and restaurants. He works with clients to enforce their trade dress rights and assists clients accused of infringing another’s trade dress rights. Mark also counsels clients in negotiating and structuring a wide variety of licenses, and co-branding, distribution, development, hosting, affiliate, procurement and services agreements.

He understands that the reputation of a person or a business can be easily damaged and works with his clients to protect their reputations in the face of defamatory statements made in online and print publications, YouTube videos, online reviews and in letters and emails sent by competitors to businesses’ partners and customers. He also assists clients when they are the victims of surreptitious videos and revenge porn, and when their photographs are used in advertising without permission.

For over twenty years, a significant part of Mark’s practice has been dedicated to e-commerce and Internet marketing law. He has counseled clients on DMCA, CAN-SPAM and Communications Decency Act compliance, and has litigated cases brought by and against Internet marketers for CAN-SPAM and trademark violations as well as actions involving the Computer Fraud and Abuse Act. Mark has drafted numerous SaaS, website development, affiliate, co-branding and hosting agreements, privacy policies and website terms of use.

Recent representative matters include:

  • Adscend Media LLC v. DoGood Media LLC et al., No. 3:18-cv-00141 (D. Conn.) Representing Internet marketing company which was the subject of a defamatory YouTube video that was forwarded to the company’s business partners.
  • Cree, Inc. v. ILMG Corporation et al., 2:16-cv-06820 (C.D. Cal.) Obtained settlement for an affiliate marketer and its principals accused of counterfeiting and false advertising.
  • Huizenga v. NYP Holdings, Inc., d/b/a The New York Post, et al., No. 17-CV-2113 (S.D.N.Y.) Representing celebrity doctor who was the subject to defamatory articles concerning his medical practices.
  • Preslar v. Kaminski, et al., No. 3:16-cv-03423 (N.D. Tex.) Obtained settlement for advertising copyrighter whose ad copy was used without consent and who was also the subject of defamatory statements.
  • The Fashion Exchange LLC v. Hybrid Promotions LLC et al., No. 1:14-cv-01254 (S.D.N.Y.) Representing large apparel manufacture and over thirty major national and regional retailers accused of trademark infringement.
  • Applied Business Software, Inc. v, FCI Lender Services, Inc., et al. (No. BC568911) (Cal. Super.) Obtained settlement for a mortgage loan processing company accused of stealing trade secrets relating to mortgage loan processing software.
  • Greenland v. Harbor Freight Tools USA, Inc., No. 2:14-cv-5867-RGK (C.D. Cal.) Obtained summary judgment of non-infringement for retailer accused of infringing patent in power tool accessory. Argued appeal to the Federal Circuit which affirmed summary judgment.
  • It’Sugar LLC v. I Love Sugar, No. 4:13-cv-01644 (D. S.C.). Defeated motion for a temporary restraining order brought against retailer accused of infringing competitor’s store design.
  • Facebook, Inc. v. Adscend Media, LLC, No. 5:12-cv-00414 (N.D. Cal.); State of Washington, v. Adscend Media, LLC, No. 2:12-cv-00139 (W.D. Wa.) Favorably settled action brought against Internet marketing company for CAN-SPAM and state law email violations and trademark infringement.
Education
  • Duke University School of Law, J.D. 1989
  • Cornell University College of Arts and Sciences, B.A 1986
Admissions
  • New York
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, Ninth Circuit
  • U.S. District Court, District of Connecticut
  • U.S. District Court, Eastern District of New York
  • U.S. District Court, Southern District of New York
Articles
  • “The DOs and DON’Ts of User-generated Reviews,” Website Magazine, April 2012
  • “Video Marketing and the Law,” FeedFront Magazine, January 2010
Speaking Engagements
  • “Internet Marketing and the Law," Marketer's Blackbook, September 2012
  •  “Mobile Media and the Law: Legal Do’s and Don’ts,” Mobile Marketing and Media 2010 Conference, June 2010

Last Read
The Last Lion Vol. III

Favorite Sports Team
New York Mets

Favorite Movie/TV Character
Steve McGarrett

  • I Love Sugar

    I LOVE SUGAR is much more than a candy store. The high-end retailer takes the candy we all love and delivers a magical experience. State of the art design, including custom fixtures and attention to details, is what the experiential retailer believes makes shoppers often refer to I LOVE SUGAR as "the Apple store of candy". In a trade dress and trademark infringement case brought by their competitor, It’Sugar claimed that I LOVE SUGAR infringed their trademark and the overall look and feel of It’Sugar retail stores.

News

Events

Education
  • Duke University School of Law, J.D. 1989
  • Cornell University College of Arts and Sciences, B.A 1986
Admissions
  • New York
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, Ninth Circuit
  • U.S. District Court, District of Connecticut
  • U.S. District Court, Eastern District of New York
  • U.S. District Court, Southern District of New York
Articles
  • “The DOs and DON’Ts of User-generated Reviews,” Website Magazine, April 2012
  • “Video Marketing and the Law,” FeedFront Magazine, January 2010
Speaking Engagements
  • “Internet Marketing and the Law," Marketer's Blackbook, September 2012
  •  “Mobile Media and the Law: Legal Do’s and Don’ts,” Mobile Marketing and Media 2010 Conference, June 2010