Edward T. Colbert

Edward T. Colbert

Edward T. 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. Having begun his career as a law clerk to the Honorable Herbert S. Boreman in the United States Court of Appeals for the Fourth Circuit, 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.

Mr. Colbert has been inducted into the Litigation Counsel of America, a highly selective trial lawyer honorary society composed of less than one-half of one percent of American lawyers. Fellowship is based on effectiveness and accomplishments at the trial and appellate levels, as well as on ethical reputation. Mr. Colbert is also praised by several reputable legal referral guides as being a leading lawyer in intellectual property matters. He is featured as a leader in trademark contentious matters by World Trademark Review 1000 and in trademark litigation and non-contentious matters by Legal 500. In addition, for the last five consecutive years, Mr. Colbert has been selected as a Washington DC Super Lawyer for intellectual property law. Managing Intellectual Property recognizes him as a veteran trademark lawyer, whom clients note as being “extremely insightful in strategy - always one or two steps ahead of the opposition.”

Mr. Colbert has significant experience in domestic and international intellectual property licensing and acquisitions. 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 1976, 1984, 1988, 1992 and 1996 Olympic Games and U.S. Olympic Teams. In addition, Mr. Colbert manages the trademark portfolios of leading retailers, companies and organizations worldwide. 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. Mr. Colbert also provides pro bono representation to the Special Olympics, Inc., 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. 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)

In a recent copyright infringement case, Mr. Colbert 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) In another copyright action, 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 also served as a trial attorney in the Federal Trade Commission’s Bureau of Competition, where he prepared and tried antitrust cases, including In re Ethyl, et al. (101 F.T.C. 425, 1983)

He 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 is as a member of the Firm’s Management Committee and serves as the head of the Trademark and Copyright Practice Group in the DC Office, and has received the highest rating of AV from his peers, as reported in Martindale-Hubbell.

Mr. Colbert has presented articles, programs and speeches in areas of interest to his practice, including the developing concept of trademark dilution, cybersquatting, extension of copyrights in collective works, copyright parodies, the interplay between patents and other intellectual property rights, damages calculations in patent cases, 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.

Representative matters:

• Fishman Transducers, Inc. v. Stephen Paul D/B/A Esteban, Daystar Productions, and HSN Interactive LLC, 07CIV10071 (D. MA Ongoing)
• Jim Beam Brands Co. v. Tequila Cuervo La Rojeña S.A. de C.V., 600122; 08CIV600122 (NY Supreme, Ongoing)
• Maker's Mark v. Diageo, 03CIV93 (W.D. KY Ongoing)
• Fleming v. CVS Caremark Corporation, 7:09CV02462 (N.D. AL Ongoing)
• Assurant, Inc. v. Datassurant, Inc. et al, 11CV438 (N.D. Georgia, 2012)
• Charles White v. Constellation Brands, Inc. et al, CV 10-07175 ODW (C.D. CA, 2011)
• Tequila Cuervo La Rojeña S.A. de C.V. v. Jim Beam Brands Co., 10CIV0203 (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., 425 F. Supp. 2d 458 (S.D. NY 2006)
• On-Line Tech Inc. v. Perkin-Elmer Corp., et al., Case No. 3:99cv02146 (D. Conn. 2006)
• Frey v. Allied Domecq, Case No. CV05-5216 (CAS)(CT) (C.D.Cal. 2005)
• Simon Systems, Inc. v. LSI Logic, 8:02cv4168 (D. MD 2004)
• Hispanic Broadcasting Corp. et al. v. Educational Media Foundation, 69 U.S.P.Q.2D (BNA) 1524 (C.D. Cal. 2003)
• Scimed Life Systems and Medinol Ltd. v. Johnson & Johnson 03APP1155 (Fed Cir. 2003)
• America Online, Inc. v. AT&T Corp., 98cv01821 (E.D. Va. 2001)
• Cordis Corporation v. Boston Scientific, et al., Case No. 98CIV0197 (Dist Ct. DE 1998)
• IBM v. Conner Peripherals, Case No. 3:95-cv-02604 (N.D. CA 1995)
• San Francisco Arts & Athletics v. United States Olympic Committee, No. 86-270, 483 U.S. 522 (1987)