Gregory P. Gulia

Partner

  • Gregory P. Gulia
  • Phone: +1 212 692 1027
    Fax: +1 212 202 6014

    Gregory P. Gulia - LinkedIn Import to Address Book

  • Duane Morris LLP
    1540 Broadway
    New York, NY 10036-4086
    USA

Gregory P. Gulia is co-chair of the Entertainment and New Media Practice Group. Mr. Gulia practices in the areas of copyright and trademark law.

Mr. Gulia has counseled clients concerning a broad range of intellectual property issues, negotiated trademark licenses, purchases and consent agreements, and litigated numerous trademark, copyright, anti-counterfeiting, domain name, unfair competition, trade secrets, rights of publicity and privacy, and First Amendment cases for various major media corporations, entertainers, luxury goods makers, fashion companies, international store chains and consumer products companies.

Mr. Gulia is a 1992 cum laude graduate of the University of Michigan Law School and a graduate of the United States Military Academy, West Point, New York.

Representative Matters

  • Obtained dismissal on behalf of Conopco, Inc. d/b/a Unilever of all claims brought by manufacturer and supplier American Accessories International, LLC, which had alleged breach of contract, promissory estoppel, promissory fraud, negligent misrepresentation and fraudulent concealment.
  • Obtained partial summary judgment in Digital Millennium Copyright Act case, holding that cloud storage of music files does not constitute copyright infringement and that the DMCA applies to pre-1972 works -- both cases of first impression and of enormous impact for the music industry.
  • Represented Sherwood 48 Associates in a trade dress infringement, dilution, electronic trespass and unfair competition case against Sony Corporation of America.
  • Counsel to the Lipton unit of Unilever in a trade dress and trademark infringement case against Foodtech International Inc. regarding the famous trademark "I Can't Believe It's Not Butter!"™. Foodtech, a maker of soy-based foods, was selling its product under the name "I Can't Believe It's Not Beef!" As a result of the firm's efforts, Foodtech ceased all use of the infringing mark and trade dress.
  • Counsel to DC Comics, Inc. in a First Amendment case. The court granted client's motion for summary judgment holding that DC Comics' use of a Charles Atlas advertisement was a form of expression, protected by the First Amendment. The court held that the likelihood of confusion was slim, and was outweighed by the public interest in parodic expression.
  • Counsel to the popular singer and entertainer Janet Jackson in a successful in rem action to recover the domain name Janet Jackson.com.
  • Counsel to Primetime 24 Joint Venture as plaintiff in a dispute with DirecTV regarding the Satellite Home Viewer Act and copyright licenses to distribute content to satellite television subscribers. The cases settled on terms very favorable to the client.
  • Counsel to Sears, Roebuck & Co. in its defense of a trade dress infringement claim. The court dismissed plaintiff Henri Bendel Inc.'s claim of infringement holding that the plaintiff could not claim exclusive rights to the use of vertically striped, plastic coated fabric and gold zipper pulls on cosmetic bags.
  • Counsel to American Express Travel Related Services Co. in its affirmation of a grant of summary judgment holding that the mark 1-900-WEATHER belongs to American Express.
  • Counsel to the popular singer Jimmy Buffett in a trademark rights case. The court granted a motion for partial summary judgment and canceled Cheeseburger in Paradise's federal trademark registration for the mark, CHEESEBURGER IN PARADISE. This was a very significant decision because there are no reported decisions construing trademark rights to song titles.

  • Non-Litigation Matters

  • Represented a leading consumer products company in series of negotiations to purchase trademarks and arrange for consent to use trademarks in order to clear $300 million dollar U.S. product launch
  • Negotiated and drafted license agreement between two major consumer products companies for $100 million dollar license deal.
  • Represented author in successful negotiations with publishing company to publish leading textbook.
  • Coordinated international filing program for major U.S. company to register trademarks throughout the world
  • Represented major international company in successfully recovering over one thousand domain names from cybersquatters.
  • Represented popular musician in negotiating series of recording agreements and production agreements.
  • Represented consumer products company in negotiations to sponsor production of compilation music CD used as gift with purchase for $100 million product launch.
  • Represented major international company in review of all advertising materials, celebrity appearance contracts and television and radio commercials to clear the materials so that no copyright, trademark or rights of publicity or privacy arise.
  • Vetted series of crime novels for major publisher to advise of potential liability.

Admissions

  • New York

Education

  • University of Michigan Law School, J.D., cum laude, 1992

Experience

  • Duane Morris LLP
    - Partner, 2001-present
  • Fross Zelnick Lehrman & Zissu, P.C., New York, New York
    - 1996-2001
  • Loeb and Loeb, LLP, New York, New York
    - 1995-1996
  • Winston & Strawn, New York, New York
    - 1992-1995
  • United States Army
    - Captain
    - Branch Chief, Patriot Department
    - Commander, B Team, 42nd Detachment

Professional Activities

  • Adjunct Lecturer, Urban Sociology, German, Philosophy, Consumer Economics and National Government, City Colleges of Chicago, Soegel, Germany, 1985-1987

Honors and Awards

  • Listed as a "Trademark and Copyright Star" in Managing Intellectual Property's IP Stars, 2013, 2015-2020

  • Listed in the 2012-2020 editions of the World Trademark Review 1000 list of the World's Leading Trademark Professionals as one of the top trademark lawyers in Enforcement and Litigation

  • Listed in 2012-2018 editions of World Trademark Review 1000 list of the World's Leading Trademark Professionals as one of the top trademark lawyers in Prosecution and Strategy.

Selected Publications

Selected Speaking Engagements

  • Panelist, "The DMCA Safe Harbor: Anchored or Adrift?" New York State Bar Association, New York City, March 2, 2011
  • Speaker, "Mediation of Trademark Disputes," International Trademark Association Annual Meeting, Berlin, Germany May 19, 2008
  • Panelist, "Trademark Litigation: A View From Inside Counsel and Outside Counsel," Stamford, Connecticut, November 21, 2003
  • Speaker, "Insurance Coverage for Copyright Litigation," The Copyright Society of the USA, New York, New York, March 22, 2002