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
Viewpoints
United States Supreme Court Rules for Google in a Landmark Fair Use Decision
April 6, 2021 |Blog
It’s Not Such a Breeze: Assessing Your Service Providers after SolarWinds
March 2, 2021 |Blog
The Trademark Modernization Act Establishes New Trademark Cancellation Procedures
January 12, 2021 |Blog
News & Press
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.
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.
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.
Events
In this program, PLI’s experts explore the legal, technological, and ethics issues lawyers should know about, and discuss best practices for guarding against cybersecurity attacks and handling the aftermath when a cyber breach occurs.
No business or product line can survive without a strong brand, and no brand can survive without strong trademark protection. Michael Graif and Karen Won will cover what every in-house counsel needs to know about trademarks.
Michael Graif will be speaking on two panels at UPenn's Asian Law Review 2020 Symposium.
Brochures
Viewpoints
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
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
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
Defense in Trademark Action Not Precluded by Failure to Raise Same Defense in Earlier Action
May 15, 2020 | Blog | By Michael Graif, Meena Seralathan
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
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
US Supreme Court Holds That Trademark Owners Need Not Prove Willful Infringement To Seek An Infringer’s Profits
April 23, 2020 | Blog | By Susan Neuberger Weller, Michael Graif
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
Significant 2018 Trademark Decisions
January 9, 2019 | Blog | By Michael Graif, Rithika Kulathila
This year the Supreme Court, United States Court of Appeals for the Federal Circuit, and the Circuit Courts penned a number of opinions impacting trademark law. Here are some key takeaways from the past year:
Read more
Brewery Defeats Trademark Opposition by Conservative Public Figure Phyllis Schlafly
December 18, 2018 | Blog | By Michael Graif
Relatives of the late conservative political activist, Phyllis Schlafly, lost their appeal to prevent the Saint Louis Brewery, LLC (“the Brewery”) from trademarking the Schlafly name in connection with various beer products on November 26, 2018.
Read more
News & Press
Google v Oracle: A Closer Look at the Dissent
April 16, 2021
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.
SCOTUS ‘Scares’ Copyright Owners with Fair Use Expansion
April 9, 2021
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.
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.
Mintz, Practitioner Ranked in 2021 World Trademark Review 1000
February 23, 2021
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.
How to Protect a Trademark or Copyright Internationally
July 30, 2019
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.
DC Spy Museum in New Cold War With New York’s KGB Museum
January 23, 2019
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.
Joining IP Hiring Wave, Mintz Adds Ex-Practice Chair at Curtis
October 3, 2018
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
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
Intellectual Property Fundamentals: What Every Attorney Needs to Know
Brooklyn Bar Association
Brooklyn, NY
Moderator
Mar
28
2014
The Rise of Fantasy Sports and Sports Gambling: The Legal Issues Surrounding The Rising Popularity of Fantasy Sports Gambling
Cardozo Sports Law Symposium
Benjamin N. Cardozo School of Law, New York, NY
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