Kalow & Springut LLP / Creativity Law

Milton Springut

Partner

• P: 212 813-1600
• F: 212 813-9600
• E: ms@creativity-law.com

Practice Areas

Patent, trademark, copyright and trade secrets, trade dress, anti-counterfeiting, litigation, licensing, prosecution and deals

Science and Technology Expertise

Computer Software and Hardware, Electrical and Electronic Arts

Milton is a founding partner of Kalow & Springut where he specializes in intellectual property litigation and is one of our country’s few experts in counterfeiting and gray goods litigation. He has developed a particular strength in the litigation of patent, trademark and copyright cases and has litigated seminal decisions in modern IP law:

• In Chloe v. Queen Bee, Milton argued a ground-breaking decision on internet personal jurisdiction that allows trademark owners to bring suit not only where the counterfeiter resides, but in more convenient locations, such as where the trademark owner operates its business

• In Gucci America v. Hall & Associates, Milton established that Internet Service Providers are not immune from secondary liability for trademark infringement on content posted on websites on the World Wide Web

• In Cartier v. Four Star Jewelry Creations, Milton established an effective means and method for plaintiffs to secure valid trade dress rights

• Milton also successfully litigated the first U.S. case to impose statutory damages for counterfeit goods under the Anti-Counterfeiting Act of 1984.

Drawing on his experience at Bell Telephone Laboratories, where he worked on computer hardware and software systems, Milton has spent his legal career extensively involved in the areas of electrical and electronic systems and computer hardware and software. Milton has also created and implemented procedures to combat the proliferation of counterfeit and gray goods, directing both investigations and legal proceedings on behalf of clients that range from hi-tech entrepreneurs to national consumer goods and service organizations to international fashion houses.  He also counsels clients on freedom to operate issues, internet law and cost-effective trademark strategies.

Milton holds a B.S., Electrical Engineering from the City College of New York, an M.S., Electrical Engineering and Computer Science from Columbia University and a J.D. from Seton Hall University. He is admitted to practice before the U.S. Patent and Trademark Office, is a member of the Association of the Bar of the City of New York and the New York Patent, Trademark and Copyright Law Association, and frequently lectures on intellectual property matters before professional associations including the American Bankruptcy Institute (Co-Chair IP Asset Presentation Panel), the International Anti-Counterfeiting Coalition (Co-Chair – Attorney/Investigator Task Force), the American Intellectual Property Law Association, the Alliance for Gray Market and Counterfeit Abatement, the World Trade Institute, the Software Publishers Association (Chair – Software Piracy Panel) and the United States Customs Service.

New York Law Journal Articles (David A. Kalow and Milton Springut)

• 2012             “Cases Make Evidentiary Use of Copyrighted Materials Easier”“
• 2011             “Impact of Second Circuit’s Preliminary Injunction Standard After ‘Salinger’“
• 2011             “Innovation in the 21st Century: Patent Standards for Non-Obviousness”
• 2011             “Patent Infringements and Systems Claims in the Information Age”
• 2010            “‘Aspex Eyewear:’ Warning on Dismissal of Patent Cases on Estoppel Grounds”
• 2010            “Missed Opportunities to Clarify Analyses for Design Patents”
• 2010            “Assessing Impact of Bose on Fraud Standard in Trademark Practice”
• 2009            “Moving Forward on Patentable Subject Matter After ‘Bilski’”
• 2009            “Fraud Doctrine on Trademark Applications Remains Minefield”
• 2009            “Court Reemphasizes Importance of Written Description for Patents”
• 2008            “Distinct Points-of-Novelty Test for Design Patents End”
• 2008            “California Slows Usage of Fiduciary Duties in Licensing”
• 2007            “The Independence of the Patent Office and the Courts”
• 2007            “How Much Is That Patent Worth?”
• 2007            “Trade Dress, Trademark Distinction Meaningful Again?”
• 2006            “Early Is Better Than Late for Strategizing Your Patents”
• 2006            “Broadest Scope of ‘Inequitable-Conduct’ Materiality Is Endorsed”
• 2005            “It’s Time to Pay Closer Attention to Digital Millennium Copyright”
• 2005            “Integra: a Fatal Blow to Biotechnology?”
• 2005            “Awarding Profits in Trademark Infringement Cases Made Easier”
• 2005            “The Increasingly Long Arm of U.S. Patent Law”
• 2005            “Federal Circuit Makes Enforcing Intellectual Property Rights Harder”
• 2005            “Noncompliance With Bayh-Dole Leads to Army Getting Patent Title”
• 2005            “Embracing the Arm’s-Length Licensor: Closer Than You Think”
• 2004            “Design Patents Take Center Stage in the Federal Circuit”

Recent Law Review and Other Articles

• 2003     “Proving Willfulness in Trademark Counterfeiting Cases”, The Columbia Journal of Law & the Arts, 27 Colum.

Milton has also lectured on intellectual property issues that include:

• AGMA Quarterly Meeting; Speaker, “Proper Conduct of IP Investigations“, 2011
• CALCE-SMTA Symposium on Counterfeit Electronic Parts and Electronic Supply Chain; Speaker, “Setting Up Cost Effective Anti-Counterfeiting Technologies That Stand Up In Court”, 2011
• AGMA Quarterly Meeting; Speaker, “Omega v. Costco, Impact on Grey Market Protection And Comparison To Other IP Laws”, 2011
• AGMA Quarterly Meeting; Speaker, “Hot Issues In Counterfeiting Law And Their Impact On Your Enforcement Efforts”, 2010
• INTA Annual Meeting; Speaker, “Trademarks, Patents and Copyrights:  Understanding the Interplay”, 2008
• AIPLA Annual Meeting; Speaker, “Product Seizures and Asset Freezes”, 2008
• INTA Meeting; IP Rights Enforcement: Protecting Product Configuration; Speaker, “U.S. Protection of Product Design”, 2006
• Federation of the Swiss Watch Industry FH, Anticounterfeiting Group; Speaker, “Recent Trends in U.S. Anti Ð Counterfeiting and Other IP Enforcement”, 2006
• Beijing Intellectual Property Bureau, Beijing, China; Seminar: “Trade-Show Attacks, Defense, and Using U.S. Law to Increase Profits of Chinese Companies”, 2005