Brad R. Newberg

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Practices
Industries
Education
  • University of Pennsylvania, JD, cum laude, Articles Editor, University of Pennsylvania Law Review, 1997
  • University of Pennsylvania College of Arts and Sciences, BA, Economics, cum laude, with Honors, 1994
  • The Wharton School, University of Pennsylvania, BSE, Legal Studies, cum laude, 1994
Admissions
  • District of Columbia
  • Maryland
  • Virginia
  • U.S. Court of Appeals for the 2nd Circuit
  • U.S. Court of Appeals for the 4th Circuit
  • U.S. Court of Appeals for the 7th Circuit
  • U.S. Court of Appeals for the 9th Circuit
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the District of Columbia
  • U.S. District Court for the District of Maryland
  • U.S. District Court for the Eastern District of Virginia
  • U.S. District Court for the Western District of Virginia
  • U.S. District Court for the Northern District of Florida
  • U.S. District Court for the Northern District of Illinois
  • U.S. District Court for the Southern District of New York
  • U.S. District Court for the Eastern District of Wisconsin

From the beginning of his legal career, Brad has focused on intellectual property litigation and counseling, with a special emphasis on copyrights, trademarks, domain names, trade secrets, dilution, and unfair competition. In 2017, the National Law Journal honored Brad by naming him an Intellectual Property Trailblazer.

As lead counsel on approximately 100 trademark and copyright cases, Brad has managed all aspects of litigation: motions, direct examinations and cross-examinations at trial, large-scale discovery projects, mediations, and depositions. He has represented clients before many different federal trial and appellate courts, the Copyright Royalty Board, the Trademark Trial and Appeal Board, and the Copyright Arbitration Royalty Panel.

With significant experience in the area of social media, Brad regularly speaks on the subject, and he has counseled clients on Internet-related legal matters and on ways they can use social media to interact with their target consumer groups. In addition, he has helped clients protect their brands and domain names by advising them on blocking systems, the Trademark Clearinghouse, Sunrise registrations and domain name enforcement. Brad also has handled various transactional and licensing matters.

Before joining McGuireWoods, Brad worked for other prominent law firms, including as partner, always broadening his experience in IP matters. He has also served as a judicial clerk to Judge Louis L. Stanton of the U.S. District Court for the Southern District of New York.

"Having a business and economics background, my goal is to further the client’s long-term business goals. The question is not only how can we win today, but what can we do to best position the client for the future."

In the News

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Brad Newberg
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T: +1 703 712 5061F: +1 703 712 51871750 Tysons Boulevard
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Tysons, VA 22102-4215

Represented creators of the award-winning PBS show "Word World," as well as their affiliates and partners, defending a $400 million lawsuit of more than 17 claims, including copyright and patent claims. Morris v. Moody (S.D. N.Y. 08 cv. 7683). Obtained dismissal of all claims with prejudice and successfully argued and defended appeal before the Federal Circuit Court of Appeals (201 0-1329, Affirmed Jan. 14, 2011).

Represented defendant record company against copyright claims alleging that sound recordings released by the band "Poison" infringe on Plaintiffs' works. McCarthy v. Johannessen (N.D. Ill. 11 cv. 07422 and C. D. Cal. cv. 12-2099).

In the Northern District of Georgia, represented plaintiff flooring company, which alleged a massive-scale infringement of two different trademarks by the largest carpet company in the United States.  Case settled after defendant’s summary judgment and Daubert motions were denied in full. (case no. 15-cv-0124)

In the Western District of Virginia, represented medical supplies company in case involving complex trademark, trade dress, false advertising, and contract claims and counterclaims. (case no. 15-cv-00006)

In the Eastern District of Virginia, represented various record company and artist defendants in alleged copyright infringement case regarding three well-known hip hop sound recordings.  Filed motion to dismiss and case was voluntarily dismissed the day a response was due. (case no. 16-cv-00383)

Represented defendant payment processing companies against claims alleging copyright infringement of software. Complete summary judgment granted for defendants on three separate grounds. Princeton Payment Solutions, LLC v. ACI Worldwide, Inc. (E. D. Va. 13 cv. 852).

Represented defendants against copyright claims by a plaintiff who alleged the exclusive right to broadcast thousands of foreign television programs in the United States.  Case resulted in favorable settlement.  Intercom Ventures, LLC v. City Media Plus Ex-Yu Streaming (N.D. Ill. 12 cv. 10275).

In the Northern District of Georgia, represented defendant in case alleging copyright infringement of various images after expiration of a license term. (case no. 15-cv-00070)

In the Southern District of Ohio, represent defendant in contractual dispute related to trademark license. (case no. 15-cv-00826)

In the District of Massachusetts, represent defendant in case alleging infringement of purported paw print trademark for pet goods. (case no. 14-cv-13582)

Represented trademark plaintiff in infringement case. Case resulted in strong consent judgment being entered against all defendants. Quoizel, Inc. v. Worldhomecenter.com, Inc. (S.D. N.Y. 12 cv.02032).

Represented plaintiff, owner of the "Total Wine" trademarks, in infringement case. Case resulted in strong consent judgment being entered against defendant. Retail Services & Systems, Inc. v. Total Wine & Spirits. (D.Conn. 12 cv. 00049).

Represented holder of registered trademarks "Wine of the Month" and "Wine of the Month Club" in infringement case. Obtained favorable settlement after defeating defendant's motion for summary judgment on issue of genericness. Wine of the Month Club, Inc. v. Malt of the Earth (C.D. Cal. 06 cv. 11 06).

Represented declaratory judgment defendant and counterclaim plaintiff in trademark infringement case. Case has now settled. ICG America, Inc. v. Wine of the Month Club, Inc. (D. Conn. 09 cv. 0133).

Represented large food manufacturer in trademark dispute over rights to well-known brand for chicken franks. Case resulted in a strong settlement for client and acknowledgement of trademark ownership. Smithfield Packing Co. Inc. v. V. Suarez & Co. (E.D. Va. 11 cv. 294) and Packers Provision Co. v. Smithfield Packing Co. Inc. (D.PR 11-1703).

Represented defendant inkjet printing company in copyright lawsuit over claims that company infringed software. Obtained dismissal of all claims. Harris v. LexJet Corp. (E.D. Va. 09 cv. 00616).

Represented counterclaim/cross-claim plaintiff, a well-known artist, in copyright and trademark claim against major retailer and manufacturer. Obtained judgment on all counts, as well as attorneys' fees and sanctions. O&K, Inc. v. Hansen (C. D. Cal. 06 cv. 5787).

Represented five businesses who filed amicus brief asking the appeals court to overturn a district court decision immunizing Google from claims of trademark infringement and contributory trademark infringement. Appeals court reversed on all counts addressed by amicus brief. Rosetta Stone Ltd. v. Google, Inc. (4th Cir. 1 0-2007).

Trademark case filed in Northern District of Texas. Represented financial services company defendant in trademark dispute. After initial victories, obtained a very favorable and early settlement of trademark claims without requiring defendant to pay any money or change trademark.

Represented defendant manufacturer of medical probes against claims of trademark and trade dress infringement. Obtained dismissal of all trademark and trade dress claims on summary judgment. Dismissal affirmed by Federal Circuit (08-1425). ERBE USA, Inc. v. Canady (W.D. Pa. 07 cv. 01 02).

Represented copyright owners in various rate-setting proceedings before the three-judge panel known as the Copyright Arbitration Royally Panel, and then later, the Copyright Royalty Board. These long and extensive trials determine the royalty rates for statutory licenses under the Copyright Act, including, for example, the amounts that a webcaster pays when it streams a sound recording over the Internet; that a satellite radio company pays when it transmits sound recordings via satellite; or that a "business establishment service" pays for the right to supply retailers with music so that those retailers can perform sound recordings for their customers as they shop.

Represented copyright owner record companies in case to determine whether defendant webcasting service was "interactive" under the Copyright Act and, therefore, infringing because of ineligibility for a statutory license.

Represented various large Yellow Pages publishers in multiple copyright cases brought by graphic design company, which alleged wide-scale copyright infringement in thousands of Yellow Pages advertisements.

Defended Fortune 500 corporation in 2010 against claims that its marketing campaign unlawfully used the song of plaintiff, which constituted copyright infringement. Client won dismissal of all copyright claims on summary judgment and that decision was affirmed by the 11th Circuit.

Represented magazine publisher and obtained preliminary injunction prohibiting sale of competing publication on the basis that client was likely to win on all of its trademark, trade dress, and dilution claims.

Defended Fortune 500 corporation against claims that its new brand name infringed on the mark of another company.

Named an "IP Trailblazer," National Law Journal, 2017

Named to "Virginia Super Lawyers," IP Litigation, Super Lawyers, Thomson Reuters, 2016-2017

Named to "Washington, D.C. Super Lawyers," IP Litigation, Super Lawyers, Thomson Reuters, 2016-2017

Named to “Legal Elite,” Intellectual Property, Business Virginia, 2011-2014

Named to “Virginia Rising Stars,” Intellectual Property Litigation, Super Lawyers, Thomson Reuters, 2012-2013

Quoted, "Why Can't Kesha Just Release A Mixtape?," The Verge, November 4, 2015
Quoted, "7th Circ. Joins Chorus Of Cariou Critics," Law360, September 19, 2014
Author, "Update on the Status of Already-Launched gTLDs: Is Anyone Out There?," Association of National Advertisers, August 14, 2014
Quoted, "Can You Own A Language?," The Verge, August 13, 2014
Quoted, "Monkey Selfie Business," Managing IP, August 10, 2014
Quoted, "Wikimedia Denies Photographer's Claim to a Monkey's Selfie," The Verge, August 6, 2014
Quoted, "Who Owns Copyright On A Selfie Taken By A Monkey?," Gizmodo, August 6, 2014
Quoted, "Lawyers Weigh In On Supreme Court's Aereo Ruling," Law360, June 25, 2014
Quoted, "Lawyers Clash Over Impact Of Redskins Ruling," World Intellectual Property Review, June 19, 2014
Quoted, "End Is In Sight For 'Redskins' After TTAB Ruling," Law360, June 18, 2014
Quoted, "Redskins Name Ruled Out Of Bounds," USA Today, June 18, 2014
Quoted, "What Do ‘Raging Bull’ and ‘Stairway to Heaven’ Have in Common?," Wall Street Cheat Sheet, May 21, 2014
Quoted, "Supreme Court Rules Leaches Cannot be Evoked in Raging Bull Case," Managing Intellectual Property, May 20, 2014
Quoted, "Supreme Court Sends 'Raging Bull' Back in the Ring," The AM Law Litigation Daily, May 19, 2014
Author, "Why the Supreme Court should allow laches as a copyright defense," Managing Intellectual Property, February 26, 2014
Quoted, "What's Past Is Prologue: Snowden Leaks, New Domains, Global Jockeying For Internet Governance Role Still Dominate Cyberlaw Hot Topics in 2014," BNA Electronic Commerce & Law Report, Trademark Clearinghouse, February 3, 2014
Quoted, "On Super Bowl Sunday, Social Media Trademark Risks Abound," Law360, January 30, 2014
Quoted, "Quentin Tarantino Sues ‘Predatory’ Gawker Over Script Leak," Law360, January 27, 2014
Quoted, "Supreme Court Agrees To Take Aereo Streaming TV Case," Law360, January 10, 2014
Quoted, "Of Bandmates and Bad Blood," The National Law Journal, January 6, 2014
Quoted, "Media & Entertainment Cases To Watch In 2014," Law360, January 1, 2014
Quoted, "Spotify Copycat Suits Could Face Long Odds In US Courts," Law360, September 6, 2013
Quoted, "Hollywood Wants Tougher Piracy Laws, But Odds Are Unclear," Law360, August 23, 2013
Quoted, "'Love Potion No. 9' Singer Sues Over Clovers' Name," AP, August 3, 2013
Quoted, "Copyright Overhaul Plan On Track For Less Industry Sniping," Law360, August 1, 2013
Co-author, "Rockefeller Letter Likely Won't Affect ICANN's Plans," Law360, June 28, 2013
Quoted, "Lawyers Urge Sweeping Overhaul Of Copyright Law," Law360, April 30, 2013
Quoted, "Top Court Says Individuals Can Resell Their Textbooks for Profit Without Copyright Infringement," Pittsburgh Post-Gazette, April 29, 2013
Quoted, "New TLDs Trademark Clearinghouse Cost, Admin Burdens Could Reduce Participation," Bloomberg BNA Electronic Commerce & Law Report, Trademark Clearinghouse, March 26, 2013
Quoted, "Publishers Mull Tech Tactics After Legal Defeat Over Imports," Financial Times, March 21, 2013
Quoted, "IP Lawyers Weigh In On High Court's 1st-Sale Ruling," Law360, March 19, 2013
Quoted, "IP Legislation To Watch In 2013," Law360, January 1, 2013
Quoted, "Keeping Up With Domain Name Explosion, Big Data, Social Media, And Online Innovation Are Top-Of-Mind Legal Issues Among Cyberlaw Experts," Electronic Commerce & Law Report (BNA), December 31, 2012
Co-author, "Understanding the Many Challenges Involved in Registering New gTLDs: Navigating ICANN’s New Rules Regarding Generic Top-Level Domain Names," Aspatore Special Report, October 1, 2012
Quoted, "Cablevision Case May Not Help DISH In The Second Circuit," Managing IP, June 7, 2012
Quoted, "Google Adwords v Rosetta Stone Case ‎Comes Into Focus," Northern Voices Online, April 15, 2012
Quoted, "Rosetta Stone’s Lawsuit Against Google Gets The Green Light To Proceed," The Washington Post, April 15, 2012
Quoted, "Rosetta Stone Ruling Could “Stem The Tide” On Functionality," Managing IP, April 10, 2012
Author, "Time to End the Confusion over Copyright Registration," Bloomberg BNA's Patent, Trademark & Copyright Journal, March 30, 2012
Quoted, "Parody Defense Rejected in CrackBerry Trademark Case," Law360, February 29, 2012
Quoted, "The .XXX Factor: Is Internet Domain For Adult Entertainment Worth Buying Up?," Pittsburgh Post-Gazette, October 2, 2011
Quoted, "CoStar Judgment Could Set Precedent," Washington Business Journal, January 14, 2011
Quoted, "Bilski Headlines Influential IP Rulings In 2010," Law360, January 1, 2011
Quoted, "Rosetta Stone, Google in Showdown Over Web Searches," National Law Journal On-Line, December 12, 2010
Speaker, "Third-party Trademarks and Copyrights," The Best Offense Is a Good Defense:; Protect Your Brand and Advance Your Marketing Strategies, February 28, 2018
Speaker, "Intellectual Property Cases Decided by the Supreme Court during the First Half of 2014," Law360 Live Twitter Chat, June 26, 2014
Speaker, "Copyright: The Facts and the Myths," American Society of Picture Professionals, October 18, 2012
Speaker, "Social Media for Marketers: Expanding and Protecting Your Brands," Association of National Advertisers, October 17, 2012
Speaker, "Keyword Advertising: Benefits, Risks, and New Developments," Bloomberg - BNA Webinar Series, September 4, 2012
Speaker, "IP Enforcement and Litigation 2012: Civil and Criminal Update," Practicing Law Institute New York Center, March 28, 2012
Speaker, "Legal Aspects of Social Media: A Comprehensive Look at U.S. and International Risks, Benefits, and Concerns," Stockholm/Copenhagen Social Media Seminar, November 23-24, 2011
Speaker, "Hottest IP Topics for 2011," University of Pennsylvania Engineering School, January 21, 2011
Speaker, "Fair Use: Best Practices and Updates," Corporate Counsel IP Trademark, Copyright & Licensing Counsel Forum, September 14, 2010
Speaker, "Copyright: Protecting Your Images and Creative Work and Why It's So Important," FotoWeek DC, November 6, 2009
What You Need to Know About .Sucks Domain Names, McGuireWoods Consulting LLC, June 17, 2015