Sue Progoff has handled numerous litigated trademark, copyright and unfair competition matters, including acting as lead counsel in litigation for such clients as Carter's, Lever Brothers Company, Snapple Beverage Corp., Toy Manufacturers of America, Inc., The Coca-Cola Company, Ford Motor Company, and Huntsman Gay Capital Partners. She has designed and implemented anti-counterfeiting programs for clients in such diverse fields as fashion and accessories, and automotive parts. In addition, Sue has also handled the trademark and copyright aspects of complex corporate transactions and advised clients on designing and implementing trademark and copyright licensing programs and strategies for building and protecting brands.
Representative Work
H.I.G. Capital Management, Inc. v. Huntsman Gay Capital Partners LLC (d/b/a/ H&G Capital Partners) (M.D. Fla. 2008): Lead counsel in successfully defending against temporary restraining order that would have required client to change its name on the eve of an important industry conference.
Ford Motor Company v. Black & Yellow Major Auto Parts, Inc. and Mordecai Levy (E.D.N.Y. 2004): Lead counsel in representing Ford in a series of counterfeiting matters involving the sale of counterfeit automobile parts, including civil litigation. Also worked closely with law enforcement agencies and prosecutors to prepare parallel criminal case for District Attorney, which resulted in conviction after trial of the largest distributor of generic automobile parts in Queens County, New York, on two felony counts of trademark counterfeiting, and guilty please resulting in significant settlements from other major auto parts distributors.
Ariel (UK) Limited v. Silver Lake Partners, L.P., Instinet Inc., Instinet Holdings Inc., Instinet LLC, et al (S.D.N.Y. 2005), affirmed (2d Cir. 2006). Represented Silver Lake Partners and its portfolio companies in obtaining the dismissal, and subsequent affirmance on appeal, of a complaint seeking $50 million in damages for copyright infringement due to an alleged breach of a 30-year-old license for software used for the automated trading of securities.
Purdue Pharma L.P. v. Ethex Corporation (D. Conn. 2003): Lead counsel in representing Purdue in trademark infringement action against manufacturer of branded generic oxycodone product. Obtained favorable settlement for Purdue.
- Toy Manufacturers of America, Inc. v. Helmsley-Spear, Inc., 960 F.Supp. 673 (S.D.N.Y. 1997); Lead counsel in obtaining a preliminary injunction on a trade dress theory prohibiting defendant's use of its own building lobby as a site for registering attendees at a trade show.
- S.C. Johnson & Son, Inc. v. Lever Brothers Co., 19 U.S.P.Q.2d 1027 (E.D.Wis. 1991); Lead counsel in obtaining summary judgment of non-infringement based on a finding of no likelihood of confusion where both parties used the same mark for the same goods.
- Designed and implemented a registration and enforcement program for a designer clothing company that significantly strengthened the client's ability to enforce its mark against infringers, thereby increasing the value of the brand.
- Advised several global companies on structuring the trademark aspects of transactions involving the splitting of ownership and/or use of trademarks in different lines of business.
Professional Activities
- International Trademark Association
- Copyright Society of the United States
- American Bar Association
- American Intellectual Property Law Association
- Association of the Bar of the City of New York (Past Chair and member, Committee on Trademarks and Unfair Competition; current member, Committee on Copyrights and Literary Property)
- New York Intellectual Property Law Association
- Practicing Law Institute (Co-Chair, Understanding the Intellectual Property License, 1997-present)
Civic & Community Activities
- Member, Board of the New York Intellectual Property Law Association
- Member, INTA/CPR Panel of Neutrals
- Co-Chair, PLI's Annual Program on Understanding the Intellectual Property License, 1997-present
- Frequent speaker at International Trademark Association, Association of the Bar of the City of New York, Practicing Law Institute, American Bar Association, Copyright Society of the United States of America, New York State Bar Association, International Licensing and Merchandising Association and American Arbitration Associationm Contributor, World Trademark Law Report Contributor, World Copyright Law Report