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. 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 – 2020)
- 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
News & Press
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.
Events
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.
This program is geared toward attorneys and related professionals working in law firms, legal services providers and in-house who are interested or responsible for maintaining client privacy and securing client data.
Brochures
Viewpoints
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
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
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