John Mancini and Carmine Zarlenga
Mayer Brown LLP
John Mancini always wanted to become an IP litigator and thinks he was lucky to work on a trade secret trial in his first year. “I had an inkling as an associate, and my experience at a big firm solidified it.” When Carmine Zarlenga attended law school, litigation became the obvious choice. “Tax, corporate and real estate law didn’t appeal to me, and I just couldn’t see myself in any other role.”
Zarlenga and Mancini represented 3M in a first-of-its-kind suit against price-gougers after Performance Supply LLC, which claimed to be affiliated with the company, raised the price of 3M-branded N95 masks to 500% over the list price to New York City public health procurement officers. “We were the first to file, and the first to get an injunction, which was replicated by numerous other law firms acting on behalf of 3M,” Zarlenga says. The duo relied on a novel approach involving the Lanham Act, which prohibits trademark infringement, trademark dilution and false advertising. “The classic Lanham Act case involves products that confuse consumers as to their source,” explains Mancini. “But in this instance, it was about a false affiliation with 3M, and that’s what got us the injunction.” After the District Court entered the injunction, the CEO of Performance Supply was charged with wire fraud and conspiracy to violate the Defense Production Act. “We are letting the feds lead, as 3M is not being harmed right now, but we’ll come back to it once the criminal case is over,” Zarlenga adds.
Both have seen more than 20 similar cases filed across the U.S. “When we first filed our case, there was some debate in legal circles whether the theory would hold,” says Zarlenga. Adds Mancini, “We continue to use it in other contexts, and the case law we have developed has brought further clarity to the Lanham Act by protecting against this kind of activity.”
Reprinted with permission from the November 2, 2020 edition of National Law Journal © 2020 ALM Properties, Inc. All rights reserved. Further duplication without permission is prohibited.