The firm successfully defended Marshall Strabala from a federal lawsuit filed by his former employer, Skidmore, Owings, and Merrill (“SOM”). Marshall specializes in the design of super-tall skyrises. He worked as a studio head under Adrian Smith on the designs of the Burj Khalifa in Dubai and the  Nanjing Greenland Financial Center in Nanjing, China. He left SOM to work for Gensler. There, he worked on the design of the Shanghai Tower. He eventually left Gensler to start his own firm, 2DEFINE Architecture, where he continues to work on the Shanghai Tower at the behest of the client.

SOM and Gensler were not happy that Marshall started his own architectural firm, so they filed coordinated lawsuits in different states to harass him. SOM sued him in New York on June 8, 2011, and Gensler sued him in Chicago on June 9. We represented Marshall in New York, and moved to dismiss the action because he had nothing to do with New York—in fact, he has not been here since 2007.

The Court in Chicago dismissed Gensler’s lawsuit against Marshall, so we had a tough act to follow. The New York Court allowed SOM to take discovery into Marshall’s ties to New York. After discovery turned up no new evidence tying Marshall to New York, Judge Miriam Goldman Cedarbaum issued an order transferring the case to Chicago, Illinois.

The case was captioned Skidmore, Owings & Merrill LLP v. Strabala, 11-cv-3906 (MGC). William Chuang was lead counsel for Marshall Strabala.

Last year, the Second Avenue Deli received a letter from the Heart Attack Grill demanding that it stop selling the Instant Heart Attack Sandwich, which is a double-deck sandwich made with latkes—potato pancakes. The Grill claimed that the name of the Sandwich was too similar to their trademarks. The Grill threatened to sue. Rather than to submit to this bullying, the Deli retained our firm to protect its trademark rights. We filed a lawsuit in the Southern District of New York seeking a declaration that the Deli was not infringing the Grill’s trademarks.

Today, Judge Paul A. Engelmayer issued an Opinion and Order that allowed the Deli to continue using the “Instant Heart Attack Sandwich” in Manhattan. The Court also expressly left the door open for the Deli to seek further rights before the United States Patent and Trademark Office. Additionally, the Deli was allowed to start serving the “Triple Bypass Sandwich,” which is a triple-decker also made with potato latkes. Last, but not least, the Court found that the Deli was a “longstanding New York institution” that serves “iconic dishes and food items”—certainly you’re doing something right when a federal court recognizes that your restaurant is special.

William Chuang was lead counsel for the Second Avenue Deli in this case, Lebewohl et al. v. Heart Attack Grill, et al., 11-cv-3153 (PAE)(JCF).

People often claim one thing or another must surely be protected by “fair use.” It is used quite lightly in casual speech. This phrase, however, has a specific legal meaning and context. So let’s define it a little more specifically before moving on. Read the rest of this entry »