Edward Colbert has over 30 years of experience handling litigation, licensing and other adversarial proceedings concerning all aspects of intellectual property, including patents, trademarks and copyrights, false advertising, unfair competition, and trade secrets. Mr. Colbert’s comfort and skill in the courtroom have enabled him to successfully represent banks and financial services companies, electronic/Internet commerce providers and entertainment companies, as well as manufacturers of medical devices and products, basic chemicals, petroleum products, and general consumer merchandise supply companies, including those in the apparel, food and beverage businesses. He is head of Kenyon’s trademark and copyright group in its Washington, DC office.
Mr. Colbert is recognized as a leading lawyer in World Trademark Review 1000 (2015), which says that “he can be trusted to do an ‘outstanding job’ in matters ‘where strategy and results matter,’” and has received recognition from The Legal 500 United States (2014). In addition, he has been selected as a Washington DC Super Lawyer (2014) for intellectual property law and was named a Washington, DC “IP Star” by Managing Intellectual Property (2014). Managing Intellectual Property also recognizes him as a veteran trademark lawyer, whom clients describe as a “top quality litigator” (2014). Mr. Colbert was named by SmartCEO magazine as a 2013 Washington “Power Player” in Intellectual Property law.
Mr. Colbert has significant experience in domestic and international intellectual property licensing and acquisitions, and manages the trademark portfolios of leading retailers, companies and organizations worldwide. For example:
- He helped create and shape the United States Olympic Committee licensing program and was involved in the licensing and enforcement of Olympic marketing rights in the United States and certain related worldwide rights for the five Olympic Games and U.S. Olympic Teams.
- He served as chief trademark advisor in the launch of the Home Shopping Network and Martha Stewart Online and retail catalog operations.
- He has represented clients in due diligence reviews, negotiations and acquisition of numerous diverse properties, from search engine Ask.com to Stolichnaya vodka.
- He provides pro bono representation to the Special Olympics in connection with maintenance and management of its worldwide trademark and licensing rights portfolio.
Mr. Colbert is regularly hired as trademark counsel in actions involving famous brands and marks, and has significant copyright infringement experience. For example:
- When the Russian government brought suit in the United States seeking to obtain ownership of the STOLICHNAYA trademark, he secured a dismissal of the claim on behalf of its owner, Allied Domecq in Federal Treasury Enterprise Sojuzpolodoimport, et al. v. Spirits International, et al., 425 F. Supp. 2d 458 (S.D.N.Y. 2006).
- Mr. Colbert also represented the United States Olympic Committee in developing and enforcing its exclusivity in commercial uses of Olympic terminology, culminating in representation of the Olympic Committee in USOC v. San Francisco Arts & Athletics, which was argued to the Supreme Court and confirmed the control of the USOC over Olympic marketing in the United States. (483 U.S. 522, 1987).
- In one of the first of the “portal wars,” Mr. Colbert represented AT&T Corp. in America Online, Inc. v. AT&T Corp., 64 F. Supp.2d 549 (E.D. Va. 1999), in which he helped AT&T successfully defend against trademark infringement claims by winning a ruling on summary judgment that “you have mail” is generic.
- He recently convinced a Boston jury that his clients Home Shopping Network and its on-air personality Stephen Paul (aka “Esteban”) were the driving force in sales and not the alleged misuse of the plaintiff’s trademark, and avoided any injunctive or monetary relief for his client. (07CIV10071, D. MA).He cleared the way for Constellation Brands and its subsidiary, Spirits Marque One, to proceed with a multi-million dollar advertising campaign for its brand SVEDKA vodka, by defending against the copyright claims brought by a well-known Hollywood photographer, concerning the use of a photograph. (CV 10-07175 ODW, C.D. CA)
- He defended against a claim by a computer program designer that the plaintiff, rather than his employer, owned the hedge fund program used to trade over a hundred million dollars a day. The issue of the validity of the IP ownership provision of the contract was a cutting edge decision that required a stay at the Third Circuit, while the question was reviewed by the Pennsylvania Supreme Court. (3rd Cir. PA, 05-1119)
Mr. Colbert is active in bar association work, particularly the International Trademark Association where he serves as a mediator on the CPR Panel of Distinguished Neutrals, AIPLA, and the American Bar Association Sections on Intellectual Property and on Antitrust, where he served as Chairman of the Sports and Entertainment Industries Committee. He has also been active in the Maryland State Bar Association and participated on the steering committee to create an intellectual property committee for the Business Law Section. He currently serves as an arbitrator on the International Court of Arbitration for Sport in Lausanne, Switzerland and for the American Arbitration Association.
Mr. Colbert regularly presents articles, programs and speeches about a wide variety of topics, including trademark dilution, cybersquatting, extension of copyrights in collective works, copyright parodies, the use of surveys in consumer cases, trademark registration rights under foreign conventions, concerted refusals to deal, and market definitions in a variety of markets including general retail and entertainment industries.
Mr. Colbert began his career as a law clerk to the Honorable Herbert S. Boreman in the United States Court of Appeals for the Fourth Circuit.
- Fishman Transducers, Inc. v. Stephen Paul D/B/A Esteban, Daystar Productions, and HSN Interactive LLC, 07cv10071 (D. MA 2011), aff’d 11-1663 (1st Circuit 2012)
- Jim Beam Brands Co. v. Tequila Cuervo La Rojeña S.A. de C.V., 08cv600122 (NY Supreme 2011)
- Maker's Mark v. Diageo, 03cv93 (W.D. KY 2010), aff’d 10-5508/5586/5819 (6th Circuit 2012)
- Fleming v. CVS Caremark Corporation, 7:09cv2462 (N.D. AL 2012), aff’d 13-11954 (11th Circuit 2013)
- Charles White v. Constellation Brands, Inc. et al., 2:10cv07175 (C.D. CA 2011)
- Tequila Cuervo La Rojeña S.A. de C.V. v. Jim Beam Brands Co., 10cv0203 (S.D. NY 2011)
- Univision Radio, Inc. v. Texas CBS Radio Broadcasting, L.P. v. Educational Media Foundation (PTO 2010)
- Zimmer v. CooperNeff Advisors, Inc., 2:04cv03816RK (E.D. PA 2010)
- The Pilot Corporation of America, Inc. v. Fisher-Price, Inc., 3:04cv00977 (D.CT. 2008)
- Federal Treasury Enterprise Sojuzplodoimport et al. v. Spirits International NV et al. (S.D. NY 2011), aff’d 11-4109 (2nd Circuit 2013); certiorari denied, (2014)
- On-Line Tech Inc. v. Perkin-Elmer Corp., et al., 3:99cv02146 (D. Conn. 2006)
- Frey v. Allied Domecq, 2:2005cv05216 (C.D.CA 2005)
- Simon Systems, Inc. v. LSI Logic, 8:02cv4168 (D. MD 2004)
- Hispanic Broadcasting Corp. et al. v. Educational Media Foundation, 2:02cv07134 (C.D. Cal. 2003)
- Scimed Life Systems and Medinol Ltd. v. Johnson & Johnson, 1:99cv00904 (D. DE 2004)
- America Online, Inc. v. AT&T Corp., 98cv01821 (E.D. VA 2001)