Experience 

John Mancini's practice focuses on the following areas of intellectual property law:  (i) intellectual property litigation; (ii) acquisition, transfer, and securitization of intellectual property assets; (iii) portfolio evaluations and strategic assessments; and (iv) security and privacy counseling.  Particular areas of industry experience include: information technology, telecoms, consumer electronics, and media and entertainment.

Intellectual Property Litigation.  John has extensive experience in litigating trademark, copyright, trade secret, unfair competition, domain name, distributorship, licensing, and franchising disputes, as well as other disputes involving intellectual property rights, including patent cases.  John has regularly represented Internet, information technology, entertainment, media, and consumer electronics clients on intellectual property disputes involving their core inventions. Representative clients include: Google, YouTube, Virgin Media, Coby Electronics, Future Electronics, and Convergia Networks.

Intellectual Property Counseling/Transactional.  John regularly advises clients in connection with the licensing, purchase, sale, and securitization of intellectual property assets, including copyright, patent, trademark, trade secret, and information technology assets.  He has extensive experience in performing due diligence on the transfer of intellectual property and information technology assets in connection with mergers, acquisitions, and other dispositions.  Representative clients include: EMI, Neiman Marcus, London Metal Exchange, and Neste Oil.

Privacy and Security Counseling.  John regularly advises clients, particularly in the financial institution industry, on compliance with security and privacy obligations relating to the storage, maintenance, and transfer of personal information, and on minimizing liability for unauthorized access to non-public personal information by third parties, including identity theft. Representative clients include: investment banks, mutual fund companies, insurance companies, mortgage companies, and retail banks.

Proficient in Italian and French.

John Mancini is a Firm Practice Leader for the Intellectual Property Group.

Notable Engagements 

• Represents Google and YouTube in defense of related cases brought by various media content holders for alleged copyright infringement relating to videos posted by users on the YouTube online service.  (Viacom v. YouTube, Inc. (USDC SDNY)).
• Represented Sit-Up, Limited, a division of Virgin Media, in the prosecution of trade secret misappropriation and breach of contract claims involving the alleged theft of its “secret sauce” for a new and innovative approach to a home shopping television entertainment channel.  (Sit-Up, Limited v. IAC Corp and Home Shopping Network (USDC SDNY)).
• Represents Faiveley Transport in the prosecution of a trade secret misappropriation and breach of license claims against Wabtec Corporation that relate to Faiveley’s invention of tread brakes for railway, transit, and subway cars.  (Faiveley Transport Malmo v. Wabtec Corporation (USDC SDNY and ICC Arbitration)).
• Represents Entertainment One in defense of claims for trademark infringement, trademark dilution, and unfair competition, arising out of a recent re-branding effort to adopt "E1 Entertainment" as its new trade name.  (E! Entertainment Television, Inc. v. Entertainment One GP Limited d/b/a E1 Entertainment, et al. (USDC CDCA)).
• Represents Coby Electronics in defense of patent infringement claims brought by Guardian Media and relating to parental blocking technology for DVD Players.  (Guardian Media v. Coby Electronics (USC CDCA)).
• Represents Pinnacle Development in prosecution of claims for trade secret misappropriation and breach of contract relating to proprietary transaction documnets developed by Pinnacle for the financial services industry.  (Pinnacle Development LLC v. Olive Tree holdings LLC, (USDC SDNY)).
• Represents Modern Luxury, Inc. in several TTAB Cancellation/Opposition proceedings over the use of the mark “CONFIDENTIAL” in connection with luxury lifestyle magazines.  (Niche Media LLC v. Modern Luxury, Inc., TTAB Opposition (US Trademark Office)).
• Represents Design Ideas in defense of claims brought for trademark infringement, trade secret misappropriation, and unfair competition relating to the use of the “GEL GEMS” trademark for decorative window clings.  (Geliman, S.A. v. Design Ideas, Limited (USDC SDNY)).
• Represented Coby Electronics in defense of patent infringement claims brought by Aerielle Technologies, Inc., and relating to wireless transmitters for portable audio devices.  (Aerielle Technologies, Inc. v. Coby Electronics (USDC EDTX)).
• Represented Convergia Networks and Future Electronics in a dispute against Huawei Technologies for breach of contract and fraudulent inducement relating to the development of a next-generation data telecoms network for 17 countries in North and South America.  (Convergia Networks, Inc. and Future Electronics, Inc. v. Huawei Technologies Co. Ltd and Futurewei Technologies, Inc. (USDC, SDNY and ICDR Arbitration)).
• Represented Ion Media Networks, a division of Paxson Communications, in defence of claims for trademark infringement brought by Positive Ions, Inc. over use of the mark ION.(Positive Ions, Inc. v. Ion Media Networks, Inc., Paxson Communications Corp., and Does 1-10 (USDC CDCA)).
• Represented Coby Electronics as a defendant in a multi-party patent infringement litigation brought by Digital Choice of Texas and relating to parental blocking technology for DVD Players. (Digital Choice of Texas v. Sichuan Electronics Co., et al. (USDC EDTX)).
• Represented Modern Luxury in defense of claims for trademark infringement brought by the owner of the “HAWAII” mark over Modern Luxury’s use of “MODERN LUXURY HAWAII” in connection with its luxury lifestyle line of publications. (BowTie, Inc. v. Modern Luxury, LLC (USDC CDCA)).
• Represented Modern Luxury in defense of claims brought for trademark infringement by the Greater Dallas Chamber of Commerce over Modern Luxury's use of the mark "DALLAS."   (Greater Dallas Chamber of Commerce v. Modern Luxury, Inc. (134^th DC, Dallas, TX)).
• Represented Winstar Communications, a multi-billion dollar end-to-end telecommunications and Internet service provider, in a dispute regarding the acquisition of a local area network telecommunications provider, known as LANSystems, Inc., from a division of Bowne, Inc.  (Winstar Communications, LLC v. Bowne, Inc. (AAA)).
• Represented Winstar in a dispute regarding claims relating to the equipment financing for the first generation telecommunications network built by Winstar throughout North America.  (LMS Investments LLC v. Winstar Communications, LLC (NY Supreme Court)).
• Represented Nicebid.com in dispute over software development agreement and Internet hosting agreement relating to the development and launch of one of the first internet auction web sites (Nicebid.com v. International Telegraph (AAA)).
• Represented Adelphia Communications Inc in the defense of claims brought for trademark infringement relating to the on-air use of "THE SPORTS AUTHORITY" mark by one of Adelphia's regional radio broadcasting stations (The Sports Authority, Inc. v. Adelphia Communications (USDC WDNY)).
• Represented Deutsche Bank in a domain name cybersquatting complaint against an infringer who misspelled Deutsche Bank's famous house mark in order to drive consumers to its web site (Deutsche Bank v. duetschebank.com (WIPO)).

Education 

Georgetown University Law Center, JD, 1989; Editor in Chief, The Tax Lawyer  • Fairfield University, BA, 1986; Headmaster Scholar; Alpha Sigma Nu

Admitted

• United States Supreme Court
• United States Court of Appeals for the Federal Circuit
• United States Court of Appeals for the Second Circuit
• United States District Court for the Southern District of New York
• United States District Court for the Eastern District of New York
• United States District Court for the District of Connecticut
• United States District Court for the Eastern District of Wisconsin
• United States Tax Court
• New York, 1990
• Connecticut, 1989