Michael is an intellectual property attorney whose practice encompasses trademark and copyright enforcement, technology transactions and licensing, patent and trademark portfolio management, and online protection and enforcement. He is a Certified Information Privacy Professional/US, and is active in advising clients on fair use, generative AI, social media, and branding in the metaverse. His clients range from start-ups to Fortune 500 companies in a broad range of industries, including software, sports, toys, housewares, entertainment, and digital & social media.
The rights enforcement side of Michael’s practice includes trademark, trade dress, copyright and design patent matters, in addition to domain name proceedings, and advising clients on publicity and privacy rights.
A national expert, Michael has been interviewed on television and quoted in national media outlets. 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 an Adjunct Professor at the University of Pennsylvania Law School and 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.
Experience
- Represented SILAC f/k/a Equitable Life Insurance Company in obtaining preliminary injunction for trademark infringement against AXA Equitable.
- Appointed as expert witness for Kraft/Heinz in trade dress dispute in Australia with Bega Cheese.
- Represented Umbra, LLC in successful design patent infringement case against Oxo International, Ltd. over housewares
- Represented Wood One Co. Ltd. in successful defense of a TTAB opposition by CCA Global Partners, Inc.
- Represented Kostopoulos Investment Holdings, Inc. in defeating preliminary injunction motion for trademark infringement brought by ATL Pain Management, Inc.
- Counseled MSC Industrial Direct Co., Inc. on intellectual property in its $550 Million Acquisition of the North American distribution business of Barnes Group Inc.
viewpoints
Supreme Court: Parody Not a Shield from Trademark Infringement
June 9, 2023 | Blog | By Michael Graif
EXCLUSIVE RIGHTS: Intellectual Property — The Vulnerable Icon: Prince, Warhol, and the Supreme Court’s Latest on Copyright Law
June 6, 2023 | Podcast | By Andrew DeVoogd, Michael Graif
In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, Drew DeVoogd and Michael Graif discuss the recent Supreme Court decision in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, which held that Warhol’s Orange Prince silkscreen portrait did not constitute fair use of a copyrighted photograph of the music legend.
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Lensa: Are AI Art Generators Copyright Infringers?
February 15, 2023 | Blog | By Frank Gerratana, Michael Graif, Sebastian Navarro
New York Attorney General: Data Breaches Will Cost You
August 1, 2022 | Blog | By Michael Graif
Amazon’s Utility Patent Neutral Evaluation Proceeding: Let the Seller Beware
March 22, 2022 | Blog | By Michael Graif, Matthew Hurley
The Trademark Modernization Act’s New Cancellation Procedures are Now Effective
December 28, 2021 | Blog | By Michael Graif
Is an unused registered trademark preventing you from clearing or registering your mark? Or was the blocking registration filed for goods or services that were not in use when the registrant declared that they were? The Trademark Modernization Act’s (“TMA”) new procedures for cancelling unused registrations, or registrations with goods and services that were not in use at the time of declaration, are now effective.
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Quentin Tarantino’s Secret NFTs
December 8, 2021 | Blog | By Michael Graif, Frank Gerratana
Quentin Tarantino recently announced plans to auction off seven scenes from the 1994 motion picture Pulp Fiction as non-fungible tokens or NFTs. These “Tarantino NFTs” will include a collection of high-resolution digital scans of the original handwritten Pulp Fiction screenplay. The NFTs each contain scans of the uncut screenplay pages themselves that form a single scene from the movie. They will be auctioned on the NFT marketplace OpenSea and are built on the blockchain platform Secret Network, which launched in February 2020.
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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.
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Get Ready for New York City’s New Biometric Identifier Information Law
June 22, 2021 | Blog | By Cynthia Larose, Michael Graif
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.
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Supreme Court to Consider When Inaccurate Information in a Copyright Registration Affects its Validity in Unicolors v. H&M
June 9, 2021 | Blog | By Michael Graif
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.
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News & Press
Member Michael Graif spoke to Bloomberg Law about the unanswered questions following the Supreme Court's unanimous ruling on the "bad spaniels" chew toy's copyright infringement of Jack Daniel's whiskey label.
Mintz’s Trademark Practice Recognized in 2023 WTR 1000 Rankings
February 14, 2023
NEW YORK, SAN DIEGO, and WASHINGTON, D.C. – Mintz has been recognized in the 2023 edition of “WTR 1000: The World’s Leading Trademark Professionals”—a unique guide that identifies the top trademark professionals in key jurisdictions around the globe.
Justices Bolster Copyrights With Decision Curbing Challenges
February 25, 2022
NYC’s Scary Biometric Data Law
August 1, 2021
Mintz Member Michael Graif was interviewed by Legal Talk Today to discuss New York City’s Biometric Identifier Law, which will significantly impact many businesses in the City. The law bans the sale of biometric data but permits the use of biometric identifying technologies with posted notice to customers in "simple language" to be prescribed by forthcoming rules.
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 & Speaking
Speaker
Oct
20
2023
Transformative Fair Use After Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith
AIPLA Annual Meeting
National Harbor, MD
Moderator
Speaker
Panelist
Speaker
Mar
6
2022
Is Your Microwave Listening? Privacy and other Legal Issues in the Smart Home
The Inspired Home Show
Chicago, Illinois
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
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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
Publications
Co-author, Copyright Trends: Substantial Similarity in the Age of Electronic Music, New York Law Journal, (January 2014)
Read lessRecognition & Awards
- World Trademark Review: WTR 1000 Leading Trademark Practitioners (2013 – 2023)
- 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
Recent Insights
Member Michael Graif spoke to Bloomberg Law about the unanswered questions following the Supreme Court's unanimous ruling on the "bad spaniels" chew toy's copyright infringement of Jack Daniel's whiskey label.
