“very professional and ready to spend all the time he can give to the case” and “praised for his ‘very deep experience, on both traditional and contemporary copyright issues.’”The Legal 500
John Mancini is a partner in Mayer Brown’s New York office and a member of the global Intellectual Property practice, which was named IP Practice Group of the Year for 2017 and 2020 by Law360. John has served in various firm management roles, including, current global co-chair of the Technology Industry Group, prior tenure as global co-chair of the Intellectual Property practice, and as past member of the firm’s Global Partnership Board. John's practice focuses on litigating copyright, trademark, trade dress, trade secret and patent disputes in courts across the country, as well as before the Copyright Royalty Board (CRB), the United States International Trade Commission (ITC), the United States Patent and Trademark Office (USPTO) and the USPTO Trademark Trial & Appeal Board (TTAB). John has successfully tried numerous complex intellectual property cases to successful bench and jury verdicts, all as lead counsel. In his practice, John has represented both public and private companies in a wide range of industries, with a particular concentration on the representation of technology, media and telecom companies, such as Google, YouTube, LG, Spotify and AT&T.
John has been at the forefront of numerous disputes that have shaped intellectual property law, especially disputes involving the convergence of new media, the Internet and new technologies. John has particular expertise in the digital media space and has represented digital distribution companies in various disputes with content owners, particularly in the music industry. For his various litigation victories for notable clients in these areas, John has received numerous awards and accolades. Notably, in 2021 John was named a Law360 MVP for Media & Entertainment and in 2013, he was named an Intellectual Property MVP by Law360, which recognizes a select few leading IP lawyers in the country. In 2015, he was named an IP Star by Managing Intellectual Property. In 2016 and 2020, he was named an Intellectual Property Trailblazer by The National Law Journal in their award series that recognizes attorneys who are innovative legal practitioners. John was inducted into The Legal 500 Hall of Fame for Trade Secret Litigation in 2020 after being recognized by that publication as a Leading Lawyer in that field for several consecutive years. John has also been recognized in Copyright Litigation by The Legal 500, where he was described as "approachable and experienced" and "an excellent negotiator and advocate." John is also ranked in New York Super Lawyers, Managing Intellectual Property and IAM 1000. In 2018, John was recognized by World Trademark Review 1000 as a "fierce litigator," and was "also praised for his fair and reasonable approach to reaching a good resolution."
Areas of Focus
- Electronic Discovery & Information Governance
- Intellectual Property Counseling & Prosecution
- Trademark Litigation
- IP & Data Monetization
- Cybersecurity & Data Privacy
- Litigation & Dispute Resolution
- Intellectual Property
- ITC Section 337 Actions
- Patent Litigation
- Copyright Litigation
- Trade Secrets
- Trademark Prosecution & Brand Management
- Special Situations
- Public Companies & Corporate Governance
- Represented Google and YouTube in defense of related cases for alleged copyright infringement relating to videos posted by users on YouTube. Won summary judgment in a landmark decision that held the Digital Millennium Copyright Act's "safe harbor" provision protects YouTube against liability for the presence of allegedly infringing videos on the site. Widely-regarded as one of the most important copyright decisions of the digital age, The New York Times noted that the ruling “could have major implications for the scores of Internet sites.” (Viacom v. YouTube, Inc. (USDC SDNY)).
- Represented Spotify and other music streaming services both before the Copyright Royalty Board and the D.C. Circuit to determine the royalty rate to be paid by all interactive music services, including Spotify, for the mechanical license fees to be paid to music publishers for the musical composition streamed on their services. The determinations in this closely-closely watched proceeding and eventual appeal have been cited as some of the most significant rulings in the Board’s history, Determination of Rates and Terms for Making and Distributing Phonorecords. Docket No. 16-CRB-0003-PR (2018-2022) (CRB).
- Represents Spotify in defense of a copyright class action on behalf of a putative class of music composers who allege that Spotify infringes the copyrights of music composers by making their compositions available through their digital music service without proper licenses. (Ferrick v. Spotify USA Inc., (USDC SDNY)).
- Represented Google and its subsidiary, YouTube, in Memphis, Tennessee in the successful defense of copyright and trademark infringement claims, based on the posting of a YouTube video that allegedly infringed the copyrights and trademarks of a rapper. The claims were fully dismissed pursuant to a successful Twombly motion, which decision was affirmed on appeal. (Pamela Moses v. YouTube, Inc. et al. (USDC WD Tenn.)).
- Represents Google in defense of a copyright litigation case that implicates issues relating to Section 115 mechanical licenses and relates to claims that Google (and other online music retailers) infringes the copyrights of music composers by making their compositions available through their online digital media stores without proper authorization. (Blagman v. Google (USDC SDNY)).
- Represented Cablevision in a suit brought by Viacom for alleged breach of its licensing and distribution agreements, copyright infringement, trademark infringement, unfair competition and declaratory judgment concerning Cablevision's application to display cable content on the iPad. (Viacom International Inc., et al. v. Cablevision Systems Corporation and CSC Holdings, LLC (USDC SDNY)).
- Represented YouTube and its CEO, Susan Wojcicki in a a rare dismissal of trademark infringement and false-advertising claims with prejudice at the pleading stage. The court agreed that user-generated content posted on YouTube does not constitute “use in commerce” for purposes of trademark law or “commercial speech” for purposes of false advertising. The court also agreed that, in light of Tiffany v. eBay, YouTube cannot be held liable for indirect trademark infringement based on user-generated content.
- Successfully represented Goya Foods Inc. in an in rem cybersquatting lawsuit. Seeking to trade off the widespread consumer recognition and goodwill enjoyed by the famous GOYA brand, Goya GmbH (which has no affiliation with Goya Foods, Inc.) created numerous domain names that incorporate “Goya” in its entirety, including, for example, , , and . Since Berlin-based Goya GmbH is not subject to personal jurisdiction in the United States, Mayer Brown attorneys utilized a provision of the Lanham Act to establish in rem jurisdiction over the domain names in the Eastern District of Virginia. In a complete victory, the Court agreed with Mayer Brown that “GOYA” is a famous mark, and that the domain names infringe and dilute the mark, and that the Court had in rem jurisdiction over the domain names to decide their ownership. Accordingly, the Court ordered the transfer of the infringing domain names to Goya.
- Secured a preliminary injunction on behalf of 3M Corp. against defendant that violated federal trademark and false advertising law by suggesting an affiliation with 3M while attempting to sell 3M-branded N95 masks at drastically increased prices to New York City officials amid the COVID-19 pandemic. The court held that the defendant’s use of 3M’s trademark in conjunction with price-gouging threatened 3M with irreparable harm to its reputation and goodwill. 3M Company v. Performance Supply, LLC. (USDC SDNY)).
- Represented Capri Sun in a trademark litigation regarding its famous pouch-design trademark. In what the Court described as “novel questions regarding the interplay of contract law and the trademark law defense of functionality,“ the Court found that a “No-Challenge” provision in a settlement and license agreement estopped the defendant from challenging the pouch trademark’s validity on grounds that it was allegedly functional, which led to an order striking defendant’s affirmative defenses concerning functionality and a protective order against discovery on functionality. (Capri Sun v. American Beverage Corp. (USDC SDNY)).
- Represented Nespresso USA in a trademark and trade dress infringement action under the Lanham Act against Libretto, which offered "Nespresso Compatible" capsules for use with Nespresso's machines by designing its capsules and packaging to be nearly identical to Nespresso's famous trade dress and to use "Nespresso" among its website code to direct people to its website. Won a permanent injunction enjoining Libretto from using Nespresso's trademarks and trade dress or any marks that may be calculated to falsely imply sponsorship by or affiliation with Nespresso. (Nespresso USA, Inc. v. Africa America Coffee Trading Co. LLC, (USDC SDNY)).
- Represented Entertainment One in defense of claims for trademark infringement, trademark dilution and unfair competition arising out of a recent rebranding effort to adopt "E1 Entertainment" as its new trade name. Successfully opposed motion for preliminary injunction with finding of no consumer confusion likely, which finding was affirmed on appeal. (E! Entertainment Television, Inc. v. Entertainment One GP Limited d/b/a E1 Entertainment, et al. (USDC CDCA)).
- Represented Modern Luxury Media (a subsidiary of Cumulus Media) in an action for trademark infringement, trademark dilution and unfair competition against Celebrity Cruises. Modern Luxury alleged infringement of its famous MODERN LUXURY trademark based on Celebrity Cruises' use of an identical mark in advertising and marketing, as well as Celebrity Cruises' application to register a trademark in THAT'S MODERN LUXURY. The case settled on terms favorable to Modern Luxury. (DM Luxury, LLC v. Celebrity Cruises, Inc. (USDC NDIL)).
- Represented Ion Media Networks, a division of Paxson Communications, in defense 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 Faiveley USA in the prosecution of trade secret misappropriation, unfair competition and unjust enrichment claims against Wabtec Corporation related to tread brakes for railway cars. Won summary judgment on liability and won jury verdict of approximately $20 million, one of the largest reported in a New York trade secrets case. (Faiveley USA, et al. v. Wabtec Corporation (USDC SDNY)).
- Represented Avago Technologies Limited, Avago Technologies U.S., Inc. and Avago Technologies Wireless in a patent, trade secret misappropriation, copyright infringement and antitrust action pertaining to film bulk acoustic resonators - electronic devices used in cellular telephones. (TriQuint Semiconductor Inc. v. Avago Technologies Limited, Avago Technologies U.S., Inc. and Avago Technologies Wireless, IP (USDC D. Arizona)); (Avago Technologies Limited, et al v. Robert Aigner et al (USDC M.D. Fla)).
- 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)).
- Represented Design Ideas in defense of claims brought for trade secret misappropriation, trademark infringement and unfair competition relating to the use of the "GEL GEMS" trademark for decorative window clings and the allegedly secret formula for manufacturing such products. (Geliman, S.A. v. Design Ideas, Limited (USDC SDNY)).
- Successfully represented Pernod Ricard before the US International Trade Commission (ITC). In the first case under the ITC's new pilot program intended to streamline Section 337 investigations, the ALJ and ITC found that the Complainant, Lamina Packaging, failed to satisfy the domestic industry requirement and terminated the proceeding within the first 100 days. (In the Matter of Certain Products Having Laminated Packaging, Laminated Packaging, and Components Thereof (ITC Investigation No. 337-TA-874)).
- Successfully represented Nestlé in a patent infringement matter involving a fat composition allegedly suitable for causing certain cholesterol benefits in the blood serum. Obtained a favorable claim construction ruling from Judge Richard Posner (sitting by designation), which led to a stipulation of non-infringement. (Brandeis Univ. v. Nestlé USA (N.D. Ill.)).
- Successfully defended Kellogg's in a patent case involving a patent for a fat composition allegedly suitable for causing certain cholesterol benefits in the blood serum. Won a series of case-dispositive Daubert motions to exclude plaintiffs' expert testimony on damages and liability. In particular, the court excluded plaintiffs' damages testimony that relied on a royalty rate that was solely dependent on a license achieved in a litigation settlement and excluded plaintiffs' damages testimony based on a "profits at risk" analysis, finding those analyses to be inferior to the cost of implementing available non-infringing alternatives. (Brandeis Univ. v. Keebler (N.D. Ill.)).
- Successfully defended Google in a patent case involving a patent titled "Safe Transaction Guaranty," which sought patent protection over a method of providing a guaranty service for online transactions. If valid, the patent would prevent third parties from providing performance guarantees for online transactions. Successfully had the patent deemed invalid on Bilski grounds, namely, that the patent claimed patent-ineligible subject matter under Section 101 of the Patent Act. (buySAFE Inc. v. Google Inc. (USDC D. Del.)).
- Represents Google and Motorola Mobility in defense of patent litigation cases relating to patents for allegedly providing demographically targeted advertising on tablets and smartphones. (B.E. Technology L.L.C. v. Google Inc. and B.E. Technology L.L.C. v. Motorola Mobility (W.D. Tenn.)).
- Represented Coby Electronics in an ITC Proceeding involving patent infringement claims for five different patents held by Vizio and relating to "QAM" tuners for use in digital TVs. Served as co-lead trial counsel. (Vizio, Inc. v. Coby Electronics Corp., et al., Case No. 8:11-cv-0783-DOC (C.D. CA), and In the Matter of Certain Digital Televisions and Components Thereof (ITC Investigation No. 337-TA-789)).
Georgetown University Law Center, JD
Editor in Chief, The Tax Lawyer
Fairfield University, BA
Headmaster Scholar; Alpha Sigma Nu
- New York
- US Supreme Court
- US Court of Appeals for the Federal Circuit
- US Court of Appeals for the Second Circuit
- US District Court for the Southern District of New York
- US District Court for the Eastern District of New York
- US District Court for the District of Connecticut
- US District Court for the Eastern District of Wisconsin
- US District Court for the Western District of Wisconsin
- US District Court for the Northern District of Illinois
- US District Court for the Eastern District of Michigan
- US District Court for the Western District of Tennessee
- US Tax Court
- Board Member, New York Intellectual Property Law Association (NYIPLA)
- International Trademark Association (INTA)
- American Intellectual Property Law Association (AIPLA)
- The Sedona Working Group on Best Practices in Patent Litigation
- Executive Committee, New York State Bar Association Intellectual Property Law Section