Arent Fox
ATTORNEY BIO
Alec P. Rosenberg

Alec P. Rosenberg
November 11, 2011
  • Partner
  • Washington, DC
202.715.8552
alec.rosenberg@arentfox.com

Alec P. Rosenberg is a partner in the firm's Intellectual Property Group. His practice encompasses the full range of scenarios involving intellectual property (IP), from ownership and infringement disputes to strategic counseling and contract negotiations. Alec was a general litigator before focusing his practice on trademark and copyright-related work, and he has extensive experience litigating trademark and copyright cases in the federal courts and the Trademark Trial and Appeal Board. He clerked on, and regularly appears before, the demanding US District Court for the Eastern District of Virginia (aka the “Rocket Docket”). In addition, Alec advises clients of all types on enforcement techniques and internal best practices to develop, safeguard, and exploit valuable intellectual property. In recent years, a significant part of his practice has involved counseling startup and emerging growth tech companies in connection with such matters.

Client Work

Alec has represented parties in disputes and negotiations concerning Internet and domain name-related IP and conduct (e.g., gripe sites, key-word searching, deep linking, cyber- and typo-squatting, web crawling, etc.), as well as in more traditional markets and media. His diverse copyright experience includes matters involving translations, TV commercials, software, screenplays, educational videos and games, medical texts, architectural designs, digitally created artwork, and maps. Some exemplary matters are as follows:

  • Represented individual in defense of claims involving ownership of trademarks in US District Court for the Eastern District of Virginia – drafted and argued successful motion to dismiss entire case.
  • Represented leading consumer products company asserting copyright and trade dress litigation against major competitor in US District Court for the Eastern District of Virginia – successful opposition to defendant’s motion to dismiss led to favorable settlement.
  • Represented major Internet company asserting infringement and dilution claims involving its famous house mark in US District Court for the Eastern District of Virginia – deposition of defendant’s president led to favorable settlement, including defendant’s adoption of new mark.
  • Developed novel application of traditional Writ of Fieri Facias to persuade US District Court for the Eastern District of Virginia to transfer ownership of patent application from judgment debtor to our judgment creditor client.
  • Represented industry-leading software company in defense of breach of patent license litigation brought by non-practicing entity in Maryland federal court – favorable settlement.
  • Represented same client in patent infringement litigation against competitor in Ohio federal court – case stayed pending conclusion of client-initiated reexamination proceeding in the US Patent and Trademark Office (USPTO).
  • Primary outside counsel to emerging social commerce platform.
  • Represented leading entertainment conglomerate in trademark litigation in US District Court for the Eastern District of Virginia involving hundreds of domain names registered by notorious cybersquatter – settlement included transfer of domain names to client and ongoing supervision of defendant.
  • Represented famous Italian apparel company in investigating and obtaining emergency, ex parte relief from US District Court for the Southern District of New York against provider of counterfeit merchandise – favorable settlement and consent judgment resulted.
  • Negotiated complex trademark licensing arrangement on behalf of leading Internet company in support of significant brand expansion.
  • Negotiated favorable distribution agreement for designer of digitally created wall coverings vis-à-vis major office supply company.
  • Successfully obtained transfer of domain name including client’s house mark from cybersquatter via litigation in California and Texas federal courts.
  • Handled urgent investigations, proceedings seeking preliminary injunctive relief, and litigation involving data security breaches at leading association and major financial institution clients – successful discovery of identity of, and settlements with, perpetrator in each case.

Alec is also deeply involved in pro bono representations. Since 2001, he has represented an inmate at the Louisiana State Penitentiary at Angola in post-conviction proceedings challenging his conviction for first-degree murder. In 2005, Alec and his colleagues secured the dismissal of the client’s death sentence. He also advises a non-profit organization serving the needs of AIDS orphans in Africa on intellectual property and other legal issues.

Previous Work

Alec served as a law clerk for Judge Robert E. Payne on the US District Court for the Eastern District of Virginia. He then worked for four years in the Litigation Group of the Washington, DC office of Covington & Burling.

Recent Speaking Engagements

  • “Enforcement of Famous Trademarks,” USPTO Global IP Academy, August 2011
  • “The Role of Trademarks in Sustainable Economic Development,” USPTO Global IP Academy, June 2011
  • “It’s Not Just For Cyberpunks – Real-World Considerations at the Intersection of Copyright and Virtual Reality,” Copyright Society of the USA, December 2009

Professional Affiliations

  • International Trademark Association
    • Famous and Well Known Marks Committee – Served two consecutive terms from 2008-2011; led task force to track decisions under federal Trademark Dilution Revision Act
    • Non-Traditional Marks Committee – Appointed to serve for 2012-2013 term
  • Copyright Society of the USA
    • Participant on informal steering committee for Washington, DC Chapter

Bar and Court Admissions

  • District of Columbia Bar
  • Virginia Bar
  • US District Court, Eastern District of Virginia
  • US Court of Appeals, 4th Circuit

Education

, JD
  ( with high honors; Order of the Coif )
Northwestern University
, BA

Practices

  • Advertising, Promotions & Data Security
  • Antitrust & Competition Law
  • Commercial Litigation
  • Intellectual Property

Industries

  • Fashion, Luxury Goods & Retail
  • Hospitality
  • Life Sciences

Areas of Focus

  • Copyright
  • E-Commerce
  • Intellectual Property
  • Intellectual Property
  • Intellectual Property
  • Intellectual Property
  • Intellectual Property
  • Patent
  • Publicity Rights
  • Social Media
  • Trademark
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