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Hunton Andrews Kurth LLP

Edward T. Colbert

Edward T. Colbert

Special Counsel

Expertise

  • Advertising and Marketing Compliance and Regulatory Counseling
  • Advertising and Marketing Litigation
  • Advertising Compliance and Counseling
  • Advertising Litigation

WSG Practice Industries

Activity

Profile

Edward 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.

Edward’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. 

Edward is recognized as a leading lawyer in World Trademark Review 1000, 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 (2016-2018). In addition, he has been selected as a Washington DC Super Lawyer (2016-2018) for intellectual property law and was named a Washington, DC “IP Star” by Managing Intellectual Property. Managing Intellectual Property also recognizes him as a veteran trademark lawyer, whom clients describe as a “top quality litigator.” Edward was named by SmartCEO magazine as a 2013 Washington “Power Player” in Intellectual Property law.

Edward 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 United States 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 and Modelo beer.
  • He provides pro bono representation to the Special Olympics in connection with maintenance and management of its worldwide trademark and licensing rights portfolio.

Edward 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).
  • Edward 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,” Edward 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 won a major victory for start-up client Pintrips, protecting the company against a trademark infringement suit filed by social-media giant Pinterest Inc. In the judgment and decision issued after a 7 day trial, U.S. District Judge Haywood Gilliam Jr. ruled that Pinterest did not own or control the use of the word "pin" in the Internet space despite the registrations for “PIN” owned by Pinterest. Pintrips use of “pin” was held to be a fair use under the Lanham Act based on the term's origin and broad use in electronic communication. The Court also held that trademark PINTRIPS did not infringe on the trademark PINTEREST. Pinterest did not appeal.
  • He represented Maker’s Mark Distillery Inc. in a high-stakes battle for protection if its red wax neck coating trademark. The U.S. Sixth Circuit Court of Appeals held that a three dimensional physical attribute of packaging (the irregular red wax coating on the neck of the Maker's Mark bottle) was capable of being a trademark, and did in fact function as a trademark, even though not a traditional work of two dimensional design. (3:09-cv-718 and 3:03-cv-00093, W.D.Ky.)  
  • 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).

Edward is active in bar association work, particularly the International Trademark Association where he serves as a mediator on the CPR Panel of Distinguished Neutrals. He is also a member of AIPLA, and the American Bar Association Sections on Intellectual Property and on Antitrust, and has also 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. 

Edward 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.

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

Representative Experience

  • Melva Leona Vallery v. American Girl, LLC, 2:13cv05066 (E.D. LA 2015 ), aff’d 15-30472 (5th Circuit 2017)

  • Pinterest Inc. v. Pintrips Inc., 313cv04608 (N.D. CA 2015)
  • Fishman Transducers, Inc. v. Stephen Paul D/B/A Esteban, Daystar Productions, and HSN Interactive LLC, 07cv10071 (D. MA 2011), aff’d 11-1663 (1stCircuit 2012)
  • Jim Beam Brands Co. v. Tequila Cuervo La Rojeña S.A. de C.V., 08cv600122 (NY Supreme 2011)
  • Brennan v. Brennan, 2:00cv2413 ( E.D. LA  2002  ), aff’d 03-30470 (5th Circuit 2004)
  • Maker's Mark v. Diageo, 03cv93 (W.D. KY 2010), aff’d 10-5508/5586/5819 (6thCircuit 2012)
  • Fleming v. CVS Caremark Corporation, 7:09cv2462 (N.D. AL 2012), aff’d 13-11954 (11thCircuit 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 (2ndCircuit 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) 

Education

AB, University of Maryland, 1970
Areas of Practice

Advertising and Marketing Compliance and Regulatory Counseling | Advertising and Marketing Litigation | Advertising Compliance and Counseling | Advertising Litigation | Arbitration and Mediation | Class Action, Multidistrict Litigation | Copyright Counseling and Litigation | Corporate Governance and Board Advisory | Hospitality (Real Estate Version) | Intellectual Property | Intellectual Property and Technology Transactions | International Arbitration and Transnational Litigation | Issues and Appeals | Licensing, Technology Transfer and Monetization | Litigation | Mergers and Acquisitions | North America | Patent Litigation | Retail and Consumer Products Litigation | Rocket Docket Practice (US District Court for the Eastern District of Virginia) | Trade Secrets Counseling and Litigation | Trademark – Non-Contentious | Trademark Counseling and Litigation | Trademark Proceedings

Articles

  • Copyright Office Promulgates New Regulations for Designation of Registered Agent Under the Digital Millennium Copyright Act
  • Give Me a ©!: Supreme Court Holds that Copyright Protects Decorative Elements of Useful Articles
  • Supreme Court Rules TTAB Findings May Have Preclusive Effect on Article III Court Decisions

WSG's members are independent firms and are not affiliated in the joint practice of professional services. Each member exercises its own individual judgments on all client matters.

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