Skip to main content

Michael R. Graif

Member

[email protected]

+1.212.692.6287

Share:

Michael is an intellectual property attorney whose practice encompasses trademark and copyright enforcement, technology and licensing transactions, patent and trademark portfolio management, and counseling clients on intellectual property issues that arise in business deals. He also has extensive experience in cybersecurity, privacy, and social media law, and is a Certified Information Privacy Professional/US. His clients range from start-ups to Fortune 500 companies in a broad range of industries, including technology, manufacturing, sports & entertainment, and digital & social media.

The rights enforcement side of Michael’s practice includes trademark, copyright, and patent matters, domain name proceedings, and advising clients on publicity and privacy rights.

Michael’s IP transactional work includes drafting licensing, joint venture, and other agreements involving trademarks and technology. He also frequently conducts due diligence on intellectual property issues related to mergers and acquisitions, securitizations, loans, securities offerings, and other transactions.

A national expert, Michael has been interviewed on television and quoted in national media outlets on file-sharing and copyright issues. According to World Trademark Review, Mr. Graif, “epitomizes the term ‘IP expert’,” and has “a breadth of experience in trademark work and can clearly explain legal concepts and strategies to people who may not be well versed in law.” Along with appearing on Bloomberg Television and Reuters Television, he has been quoted in the Washington Post, San Francisco Chronicle, Above the Law, The Guardian of London and The Daily Deal, and other news outlets. He teaches social media law as a Lecturer in Law at the University of Pennsylvania Law School and an Adjunct Professor at Benjamin N. Cardozo School of Law.

Prior to joining Mintz, Michael was chair of the intellectual property group at a New York-based international law firm, where he was a partner for a decade. Earlier, he was a partner at a Washington, DC-based national law firm; a counsel and associate at another New York-based global law firm; and an associate at a New York-based intellectual property law firm.

Education

  • University of Toronto (LLB)
  • University of Pennsylvania (BS, Electrical Engineering, magna cum laude)

Experience

  • Counseled boutique tax company G2 FinTech on intellectual property issues related to the sale of its technology and intellectual property assets to KPMG LLP.
  • Counseled MSC Industrial Direct Co., Inc. on intellectual property issues in its $550 Million Acquisition of the North American distribution business of Barnes Group Inc.
  • Acted as trademark expert for Kraft/Heinz in trade dress dispute in Australia with Bega Cheese.
  • Defeated a motion for a temporary restraining order and preliminary injunction for copyright infringement, trade dress infringement, and unfair competition brought against Casabella Holdings.

Recognition & Awards

  • World Trademark Review: WTR 1000 Leading Trademark Practitioners (2013 – 2021)
  • Pro Bono Award, Legal Aid Society (2005)
  • Included on the New York Super Lawyers list (2013 – 2019)

Involvement

  • Member, New York State Bar Association
  • Member, New York Intellectual Property Law Association
  • Member, Law Society of Upper Canada
  • Member, International Trademark Association

Languages

- French

Recent Insights

News & Press

Events

Viewpoints

Privacy & Thumbnail Viewpoints Thumbnail

NYC Businesses: Do you have your “biometric identifier collection” notice up?

July 12, 2021 | Blog | By Cynthia Larose, Michael Graif

As previewed in Mintz’s earlier post, New York City’s Biometric Identifier Information Law the “NYC Law”) is now in force, effective Friday, July 9th.  The NYC Law requires that places of entertainment, retail stores and food and drink establishments that collect biometric identifying information, including from customers and employees, post a “clear and conspicuous” notice to that effect near customer entrances. 
Read more
Privacy & Thumbnail Viewpoints Thumbnail

Get Ready for New York City’s New Biometric Identifier Information Law

June 22, 2021 | Blog | By Cynthia Larose, Michael Graif, Allen Loayza

2021 could be another record year for new and pending privacy legislation, including laws either banning outright or placing limits on the use of technology involving biometric information.  Just this year, Portland, Oregon implemented a ban on facial recognition technology beginning January 1.  Although the New York State Legislature failed to pass a broad biometric privacy law for the third session in a row, New York City recently adopted its own biometrics privacy legislation that is set to take effect on July 9, 2021.
Read more
Trademark Copyright Viewpoints Thumbnail
After five years of litigation, the battle between Unicolors, a California-based fabric design company, and H&M is still going strong. Now the United States Supreme Court has agreed to decide whether an inaccuracy in Unicolors’ copyright registration invalidates its registration and thus a jury’s $1 million damages award in Unicolors’ favor.
Read more
Podcast Viewpoint Image
Does Google’s Android API infringe Oracle’s copyright in its Java API? That’s the question the Supreme Court was asked to deal with in Google v. Oracle recently.
Read more
Trademark Copyright Viewpoints Thumbnail

United States Supreme Court Rules for Google in a Landmark Fair Use Decision

April 6, 2021 | Blog | By Michael Graif, Matthew Hurley, Geoffrey Friedman

On April 5, 2021, the United States Supreme Court issued a significant fair use decision, holding six to two that Google’s copying of 11,500 lines of code from Oracle’s Java SE API in Google’s Android platform was a fair and transformative use. 
Read more
Privacy & Thumbnail Viewpoints Thumbnail

It’s Not Such a Breeze: Assessing Your Service Providers after SolarWinds

March 2, 2021 | Blog | By Michael Graif, Cynthia Larose

In the recent SolarWinds hack, the routine task of downloading a software update turned into a cybersecurity nightmare for over 18,000 organizations including the Treasury Department, AT&T and up to 85% of Fortune 500 companies. New York has the SHIELD Act, a statute that requires that organizations select third party service providers “capable of maintaining appropriate cybersecurity safeguards”.
Read more
Trademark Copyright Viewpoints Thumbnail

The Trademark Modernization Act Establishes New Trademark Cancellation Procedures

January 12, 2021 | Blog | By Michael Graif, Williams Dixon

On December 27, 2020, the Trademark Modernization Act of 2020 (“the Act”) became law as part of the Consolidated Appropriations Act, 2021. 
Read more
Trademark Copyright Viewpoints Thumbnail
The United States Supreme Court unanimously held this week that Lucky Brand was not precluded from mounting a new defense in its litigation with Marcel Fashions Group — despite having chosen not to bring up the same defense in a prior litigation.  This ruling clarifies the circumstances under which a defense can be precluded from a lawsuit.
Read more
Trademark Copyright Viewpoints Thumbnail

Supreme Court Holds that States Cannot Copyright Annotated Versions of Their Statutes

April 29, 2020 | Blog | By Michael Graif, Meena Seralathan

On April 27, 2020, the Supreme Court held that annotations to legislative text, even if created by a private contracted party, are not copyrightable materials under 17 U.S.C. §101. Invoking the government edicts doctrine, the Court made explicit the notion that all members of government involved in lawmaking, including state legislators, are barred from being “authors” for purposes of copyright protection.
Read more
Trademark Copyright Viewpoints Thumbnail
In a unanimous decision, the US Supreme Court held that a trademark owner need not prove willful infringement in order to seek lost profits from a trademark infringer. The case, Romag Fasteners Inc. v. Fossil Inc. et al., case number 18-1233, involved a long running trademark infringement dispute between the parties.
Read more

News & Press

News Thumbnail
Mintz Member Michael Graif authored an article published by World Intellectual Property Review that examined the U.S. Supreme Court’s recent landmark decision in Google v. Oracle, which held that Google’s limited copying of code from Oracle’s Java SE Application Programming Interface constituted a fair and transformative use of that material under copyright law. Specifically, in his article, Mr. Graif unpacked a blistering 18-page dissent written by Supreme Court Justices Clarence Thomas and Samuel Alito.
News Thumbnail
In an article by World Intellectual Property Review, Mintz Member Michael Graif was among several IP professionals to discuss key takeaways from the Google v. Oracle judgment, specifically its impact on fair use.
News Thumbnail
In light of the recent SolarWinds hack, Mintz Member Michael R. Graif and Member and Chair of the firm’s Privacy & Cybersecurity Practice Cynthia J. Larose co-authored an article published by the New York Law Journal examining diligence activities businesses can and should take when selecting third-party service providers, including ensuring compliance with the New York Stop Hacks and Improve Electronic Data Security (SHIELD) Act.
News Thumbnail
In an article published by ESPN, Mintz Member Michael Graif discussed trademark issues the Washington Redskins will need to consider as they move forward with a probable name change.
An article published by Super Lawyers shared domestic legal advice for those looking abroad for their intellectual property. In the article, Mintz Member Michael Graif commented on key considerations for protecting a trademark or copyright in a foreign country.
Amazon has a new idea for settling patent disputes — one that doesn’t involve courtrooms, judges or expensive trials. Here, Michael Graif comments on the pilot program that allows patent owners to confront merchants they believe are selling infringing products on the platform.
This article discusses a trademark battle between Washington D.C.’s International Spy Museum and New York’s KGB Spy Museum. Mintz Member Michael Graif, who is not involved in the matter, is quoted providing third-party commentary.
This New York Law Journal feature article highlights the arrival of experience trademark strategist, Michael Graif. Michael, who previously led the intellectual property practice at Curtis, Mallet-Prevost, Colt & Mosle, joins the Mintz New York office as a Member.

Events

Moderator
Feb
1
2021

Cybersecurity Best Practices for Lawyers 2021

Practising Law Institute

Webinar

Webinar Reference Image
Speaker
Mar
4
2020

Trademark Essentials for In-House Counsel

In-House Connect

Mintz, 666 Third Avenue, New York, NY 10017

Panelist
Feb
28
2020

AI, Robotics, and Championship Prospects to Harness the Power behind Algorithms

UPenn's Asian Law Review 2020 Symposium

Levy Conference Center, University of Pennsylvania Carey Law School

Panelist
Feb
3
2020

Cybersecurity Best Practices for Lawyers 2020

Practising Law Institute

Practising Law Institute, 1177 Avenue Of The Americas, Second Floor, New York, NY

Speaker
Feb
4
2019

Cybersecurity Best Practices for Legal Services Providers 2019

Practising Law Institute

PLI New York Center, 1177 Avenue of the Americas, (2nd floor), entrance on 45th Street, New York, New York

Moderator
Nov
7
2018

Free Speech and Online Platforms

Cardozo Arts and Entertainment Law Journal and Cardozo's Philosophy and Law Society

Benjamin N. Cardozo School of Law, 55 Fifth Avenue, New York

Moderator
Feb
10
2017

Fake News and the New Administration

University of Pennsylvania Journal of Constitutional Law Volume 19 Symposium Hate Crime v. Hate Speech: Exploring the First Amendment

Philadelphia, PA

Panelist
Apr
14
2016

Digital Creativity: Culture Reimagined

World IP Day 2016

Benjamin N. Cardozo School of Law, New York, NY

Speaker
Jan
22
2016

Selected Ethics Issues in IP Rights Enforcement and Defense

Practicing Law Institute Intellectual Property Rights Enforcement 2016 Seminar

New York, NY

Panelist
Oct
16
2015

Monetizing and Marketing Musicians Through Social Media (and avoiding missteps along the way)

Entertainment Business Law Seminar, CMJ Music Marathon

New York, NY

Panelist
Jul
15
2015

Attorney Advertising and Social Media and Ethical Implications

Hot Topics in Intellectual Property Law, New York Intellectual Property Law Association

New York, NY

Speaker
Jun
16
2015

EU Digital Single Market/Safe Harbor

Europe Team Meeting of U.S. Trade Commissioners stationed in Europe

New York, NY

Panelist
Mar
13
2015

Athletes’ Rights in Evolving Sports Media

Third Annual Cardozo Sports Law Symposium

Benjamin N. Cardozo School of Law, New York, NY

Speaker
May
19
2014
Moderator
Mar
28
2014
Panelist
Nov
7
2013

Protecting Licensing Income Streams - Negotiating a Good Deal is no Guarantee!

Licensing Executives Society New York Chapter Fall Meeting

New York, NY

Panelist
May
6
2013

Ethics and Social Media - Why Can't We Be Friends?

New York State Bar Association's Entertainment, Arts and Sports Law Section's 25th Anniversary Celebration

New York, NY