Joel G. MacMull, Member
Joel G. MacMull
Member
3 Becker Farm Road, Suite 105
Roseland, NJ 07068
570 Lexington Avenue, 21st Floor
New York, New York 10022
Tel: 973-736-4600 x343
Direct Dial: 973.295.3652
Fax: 973-325-7467
Joel G. MacMull is a Partner and Chair of the Firm’s Intellectual Property & Brand Management and Commercial and Corporate Litigation Practice Groups. Joel’s practice focuses on high-stakes complex commercial litigation and intellectual property disputes, including copyright and trademark infringement, trade secret misappropriation, false advertising, “cybersquatting,” rights of publicity, as well as general contract and business tort disputes. Joel has tried and argued cases in state and federal courts, as well as before the Trademark Trial and Appeal Board.
Joel also has significant appellate experience. He was intimately involved in the U.S. Supreme Court’s recent landmark decision in Matal v. Tam (formerly Lee v. Tam), in which the Supreme Court by a unanimous vote of 8-to-0 (Justice Neil Gorsuch did not participate in the consideration or decision of the case) affirmed the Court of Appeals for the Federal Circuit ruling in late 2015. The High Court held that § 2(a) of the federal trademark statute violates the free speech clause of the First Amendment because the government discriminates based on viewpoint and targets offensive expression with an intent to discourage its use.
Joel has also briefed and argued multiple cases before the Second Circuit, and the New York Appellate Division.
Representative Clients include:
- America Online, Inc.
- The Princeton Club of New York
- Mul-T-Lock USA, Inc.
- Symphony Publishing NY, LLC
- Rensselaer Polytechnic Institute
- PlentyofFish.com
Federal Bar Association
Federal Bar Council
Association of the Bar of the City of New York
New York Intellectual Property Law Association
International Trademark Association
American Intellectual Property Law Association
Volunteer Arbitrator, New York City Small Claims Court
• Matal v. Tam (the Supreme Court of the United States). Representing trademark applicant, Simon Shiao Tam, in his appeal of the Trademark Trial and Appeal Board’s refusal to grant him registration of his trademark, THE SLANTS, on grounds it is disparaging toward Asian Americans.
• Roca Labs, Inc. v. Consumer Opinion Corp. et al., (United States District Court for the Middle District of Florida). Represented interactive computer service provider against nutraceutical weight loss manufacturer’s claims of, among other things, tortuous interference because defendants knowingly maintained negative posts on their website in violation of a “gag clause” appearing in plaintiff’s sales contracts with its customers. In response, the Court recently issued a resounding dismissal of each of plaintiff’s twelve claims, finding that all of them were barred under section 230 of the Communications Decency Act of 1996, 47 U.S.C. § 230.
• Whitestone Construction Corp. v. Nova Casualty Co., et al., (Supreme Court of the State of New York, Appellate Division). Represented general contractor in connection with a breach of contract claim against a sub-contractor and its various alter egos. After obtaining a finding of liability before the lower court, the order was thereafter affirmed by the Appellate Division. Following success on appeal and a resulting trial on damages, judgment was entered against defendants in the amount of $1.7 million dollars.
• Meyer Corp. U.S. v. Alfay Designs, Inc., et al., (United States District Court for the Eastern District of New York). Represented licensor and its principal against a competing licensor alleging claims for tortuous interference with contract, fraudulent inducement, negligent misrepresentation and contribution, among other claims. After several years of substantial discovery and contentious motion practice the court dismissed all of plaintiff’s claims demanding monetary relief which were well in excess of two million dollars.
• Consol. Energy Design Inc. v. The Princeton Club of New York, (United States District Court for the Southern District of New York). Obtained complete dismissal of plaintiff’s complaint, including causes of action for breach of contract, unjust enrichment, promissory estoppel and account stated. Plaintiff appealed part the decision to the Court of Appeals for the Second Circuit, which affirmed in part and reversed in part the District Court’s order, leaving only a single remaining claim.
• Heritage of Pride, Inc. v. Matinee NYC, Inc., (United States District Court for the Southern District of New York). Successfully opposed plaintiff’s motion for civil contempt arising from defendants’ alleged failure to comply with the Court’s preliminary injunction order barring the use of plaintiff’s trademarks.
• Modern Empire, Inc. v. Continental Casualty Company, (Supreme Court of New York, Bronx County). Successfully opposed insurer’s motion for summary dismissal on each of plaintiff’s claims for declaratory judgment, breach of contract, unjust enrichment, negligence and bad faith denial of coverage. The case then settled very favorably in favor of Modern.
- Recipient, Mark T. Banner Award for Impact on Intellectual Property Law awarded by American Bar Association Intellectual Property Law Section (April 2018)
- Recipient, International Trademark Association’s (INTA) 2017 Volunteer Service Award for Pro Bono Services Provided by an Organization for services provided in connection with Matal v. Tam
Recent Seminars
- Panelist/Moderator “THE REDSKINS and THE SLANTS: A Review of the Causes, the Cases, and How the First Amendment Is Likely to Impact Trademark Registrations Going Forward,” International Trademark Association Annual Meeting, Seattle, Washington (May 21, 2018)
- Presenter, “In re Tam in Review,” CLE in the Garden, State Bar of Arizona Intellectual Property Law Section, Phoenix, Arizona (April 6, 2018)
- Panelist, “Who’s Offended? — A Review of the Laws on Obscene, Scandalous and Immoral Marks in Canada, the US and the EU”, Intellectual Property Institute of Canada (IPIC) 91st Annual Meeting, Niagara Falls, Ontario, Canada (October 11-13, 2017)
- Panelist, “Hitting the Jackpot in Entertainment and Sports Law, ABA Forum on the Entertainment and Sports Industries 2017 Annual Meeting, Cosmopolitan of Las Vegas Hotel, Las Vegas, Nevada (October 5-8, 2017)
- Panelist, “When the Supreme Court Got it RIGHT and Got it WRONG”, New Jersey State Bar Association, New Jersey Law Center, New Brunswick, New Jersey (September 23, 2017)
- Guest, “Bloomberg Law” on Bloomberg Radio, Discussing the U.S. Supreme Court’s decision in Matal v. Lee (June 20, 2017)
- Panelist, “Redskins, Slants, and Other Disparaging Trademarks: The Supreme Court Decision on the Intersection of Trademark Law and the First Amendment,” 79th Annual Meeting of the Virginia State Bar, Virginia Beach, VA (June 15-18, 2017)
- Moderator, “What’s the Use? Exploring Recent Challenges and Changes to Common Law Unfair Competition and Trademark Use Requirements in the U.S. and Canada,” 139th Annual Meeting of the International Trademark Association, Fira Gran Via, Barcelona, Spain (May 20-24, 2017)
- Panelist, “Lee v. Tam: Disparaging Trademarks and the First Amendment”, University of Pennsylvania Law School, Silverman Hall Levy Conference Center, Philadelphia, PA. (April 18, 2017)
- Panelist, “Supreme Court Series: Lee v. Tam – Post Argument Discussion,” American University, Washington College of Law, Washington, D.C. (January 18, 2017)
- Presenter, “The Untold Story of In re Tam: For Trademark Professionals Only”, International Trademark Association Annual Meeting, Orlando, Florida (May 24, 2016)
- Presenter, “Thou shall not offend … the continuing saga over registration of immoral and scandalous marks at the USPTO,” American Intellectual Property Law Association Spring Meeting, Minneapolis, Minnesota (May 18, 2016)
- Presenter, National Asian Pacific Bar Association 2014 Annual Meeting, Scottsdale, Arizona
Overview
Joel G. MacMull is a Partner and Chair of the Firm’s Intellectual Property & Brand Management and Commercial and Corporate Litigation Practice Groups. Joel’s practice focuses on high-stakes complex commercial litigation and intellectual property disputes, including copyright and trademark infringement, trade secret misappropriation, false advertising, “cybersquatting,” rights of publicity, as well as general contract and business tort disputes. Joel has tried and argued cases in state and federal courts, as well as before the Trademark Trial and Appeal Board.
Joel also has significant appellate experience. He was intimately involved in the U.S. Supreme Court’s recent landmark decision in Matal v. Tam (formerly Lee v. Tam), in which the Supreme Court by a unanimous vote of 8-to-0 (Justice Neil Gorsuch did not participate in the consideration or decision of the case) affirmed the Court of Appeals for the Federal Circuit ruling in late 2015. The High Court held that § 2(a) of the federal trademark statute violates the free speech clause of the First Amendment because the government discriminates based on viewpoint and targets offensive expression with an intent to discourage its use.
Joel has also briefed and argued multiple cases before the Second Circuit, and the New York Appellate Division.
Representative Clients include:
- America Online, Inc.
- The Princeton Club of New York
- Mul-T-Lock USA, Inc.
- Symphony Publishing NY, LLC
- Rensselaer Polytechnic Institute
- PlentyofFish.com
Professional Affiliations
Federal Bar Association
Federal Bar Council
Association of the Bar of the City of New York
New York Intellectual Property Law Association
International Trademark Association
American Intellectual Property Law Association
Volunteer Arbitrator, New York City Small Claims Court
Noteworthy Cases
• Matal v. Tam (the Supreme Court of the United States). Representing trademark applicant, Simon Shiao Tam, in his appeal of the Trademark Trial and Appeal Board’s refusal to grant him registration of his trademark, THE SLANTS, on grounds it is disparaging toward Asian Americans.
• Roca Labs, Inc. v. Consumer Opinion Corp. et al., (United States District Court for the Middle District of Florida). Represented interactive computer service provider against nutraceutical weight loss manufacturer’s claims of, among other things, tortuous interference because defendants knowingly maintained negative posts on their website in violation of a “gag clause” appearing in plaintiff’s sales contracts with its customers. In response, the Court recently issued a resounding dismissal of each of plaintiff’s twelve claims, finding that all of them were barred under section 230 of the Communications Decency Act of 1996, 47 U.S.C. § 230.
• Whitestone Construction Corp. v. Nova Casualty Co., et al., (Supreme Court of the State of New York, Appellate Division). Represented general contractor in connection with a breach of contract claim against a sub-contractor and its various alter egos. After obtaining a finding of liability before the lower court, the order was thereafter affirmed by the Appellate Division. Following success on appeal and a resulting trial on damages, judgment was entered against defendants in the amount of $1.7 million dollars.
• Meyer Corp. U.S. v. Alfay Designs, Inc., et al., (United States District Court for the Eastern District of New York). Represented licensor and its principal against a competing licensor alleging claims for tortuous interference with contract, fraudulent inducement, negligent misrepresentation and contribution, among other claims. After several years of substantial discovery and contentious motion practice the court dismissed all of plaintiff’s claims demanding monetary relief which were well in excess of two million dollars.
• Consol. Energy Design Inc. v. The Princeton Club of New York, (United States District Court for the Southern District of New York). Obtained complete dismissal of plaintiff’s complaint, including causes of action for breach of contract, unjust enrichment, promissory estoppel and account stated. Plaintiff appealed part the decision to the Court of Appeals for the Second Circuit, which affirmed in part and reversed in part the District Court’s order, leaving only a single remaining claim.
• Heritage of Pride, Inc. v. Matinee NYC, Inc., (United States District Court for the Southern District of New York). Successfully opposed plaintiff’s motion for civil contempt arising from defendants’ alleged failure to comply with the Court’s preliminary injunction order barring the use of plaintiff’s trademarks.
• Modern Empire, Inc. v. Continental Casualty Company, (Supreme Court of New York, Bronx County). Successfully opposed insurer’s motion for summary dismissal on each of plaintiff’s claims for declaratory judgment, breach of contract, unjust enrichment, negligence and bad faith denial of coverage. The case then settled very favorably in favor of Modern.
Awards
- Recipient, Mark T. Banner Award for Impact on Intellectual Property Law awarded by American Bar Association Intellectual Property Law Section (April 2018)
- Recipient, International Trademark Association’s (INTA) 2017 Volunteer Service Award for Pro Bono Services Provided by an Organization for services provided in connection with Matal v. Tam
Publications/Seminars
Recent Seminars
- Panelist/Moderator “THE REDSKINS and THE SLANTS: A Review of the Causes, the Cases, and How the First Amendment Is Likely to Impact Trademark Registrations Going Forward,” International Trademark Association Annual Meeting, Seattle, Washington (May 21, 2018)
- Presenter, “In re Tam in Review,” CLE in the Garden, State Bar of Arizona Intellectual Property Law Section, Phoenix, Arizona (April 6, 2018)
- Panelist, “Who’s Offended? — A Review of the Laws on Obscene, Scandalous and Immoral Marks in Canada, the US and the EU”, Intellectual Property Institute of Canada (IPIC) 91st Annual Meeting, Niagara Falls, Ontario, Canada (October 11-13, 2017)
- Panelist, “Hitting the Jackpot in Entertainment and Sports Law, ABA Forum on the Entertainment and Sports Industries 2017 Annual Meeting, Cosmopolitan of Las Vegas Hotel, Las Vegas, Nevada (October 5-8, 2017)
- Panelist, “When the Supreme Court Got it RIGHT and Got it WRONG”, New Jersey State Bar Association, New Jersey Law Center, New Brunswick, New Jersey (September 23, 2017)
- Guest, “Bloomberg Law” on Bloomberg Radio, Discussing the U.S. Supreme Court’s decision in Matal v. Lee (June 20, 2017)
- Panelist, “Redskins, Slants, and Other Disparaging Trademarks: The Supreme Court Decision on the Intersection of Trademark Law and the First Amendment,” 79th Annual Meeting of the Virginia State Bar, Virginia Beach, VA (June 15-18, 2017)
- Moderator, “What’s the Use? Exploring Recent Challenges and Changes to Common Law Unfair Competition and Trademark Use Requirements in the U.S. and Canada,” 139th Annual Meeting of the International Trademark Association, Fira Gran Via, Barcelona, Spain (May 20-24, 2017)
- Panelist, “Lee v. Tam: Disparaging Trademarks and the First Amendment”, University of Pennsylvania Law School, Silverman Hall Levy Conference Center, Philadelphia, PA. (April 18, 2017)
- Panelist, “Supreme Court Series: Lee v. Tam – Post Argument Discussion,” American University, Washington College of Law, Washington, D.C. (January 18, 2017)
- Presenter, “The Untold Story of In re Tam: For Trademark Professionals Only”, International Trademark Association Annual Meeting, Orlando, Florida (May 24, 2016)
- Presenter, “Thou shall not offend … the continuing saga over registration of immoral and scandalous marks at the USPTO,” American Intellectual Property Law Association Spring Meeting, Minneapolis, Minnesota (May 18, 2016)
- Presenter, National Asian Pacific Bar Association 2014 Annual Meeting, Scottsdale, Arizona
Admissions
New York
Supreme Court of the United States
United States Court of Appeals for the Federal Circuit
United States Court of Appeals for the Second Circuit
United States Court of Appeals for the Fourth Circuit
United States District Courts for the Eastern and Southern Districts of New York
Education
The University of British Columbia, LL.M.
New England School of Law, J.D.