Nicole Rizzo Smith

Nicole is an associate at SUNSTEIN and concentrates on trademark and copyright prosecution and enforcement, as well as complex intellectual property and business litigation. She has experience in all aspects of trademark prosecution and enforcement, and regularly provides trademark advice and manages portfolios of consumer products companies, colleges and universities, technology companies, governmental entities, financial institutions and other clients in a wide variety of industries. Nicole also has extensive experience drafting and negotiating trademark and copyright settlement and license agreements. Nicole’s litigation experience includes enforcing patents in the telecommunications field and defending a leading pharmaceutical company against allegations of patent infringement, including representation on appeal before the Federal Circuit.

Experience

• Has represented clients in copyright and trademark enforcement matters before U.S. federal courts, including obtaining a permanent injunction and nationwide seizure order of bootleg concert merchandise on behalf of world-famous musical act.
• Has counseled clients in alternative dispute resolution, including obtaining a favorable resolution through mediation in a copyright dispute involving electronic media and fair use issues.
• Manages the trademark portfolio of one of the world’s most prestigious universities and a large consumer-products company.
• Has brought and defended numerous trademark oppositions before the Trademark Trial and Appeal Board.
• Advises clients on international trademark matters including trademark prosecution and enforcement through a network of foreign associates.
• Routinely conducts clearance searching and advise clients of strategies for use and registration of potential trademarks.

Publications

• “Please Refrain From Using My Refrain! Musicians Again Confront Politicians For Unauthorized Use of Songs,” Intellectual Property Update, February 2012.
• “Bringing Copyright Protection for Fashion Design Into the Fold,” The Federal Lawyer, Vol. 58, No. 8, September 2011.
• Co-author of practice guide, “Protecting and Enforcing Copyright,” (3rd Edition, MCLE, Inc. 2008).
• “Jingle All the Way…To the Tune of $1.3 Billion: Oracle Wins Largest-Ever Copyright Infringement Award,” Intellectual Property Update, December 2010.
• “Copyright Protection for Fashion Design: A Narrowly Tailored Proposal,” Intellectual Property Update, August 2010.
• “Federal Circuit Stamps Out Feud Between Postal Service and Sculptor,” Intellectual Property Update, March 2010.
• “Copyright Protection for Fashion Design: Examining the Contours of the Design Piracy Prohibition Act,” The IPC Legal Browser, Vol. 5 No. 2, Winter 2010.
• “A Dubious Decision: First Sale Doctrine Does Not Extend to Copyrighted Works Made Overseas,” Intellectual Property Update, October 2009

Honors/Activities

• Nicole was named to the Rising Stars list, 2010-2011, by the publishers of Super Lawyers magazine (only the top 2.5 percent of MA attorneys who are under the age of 40 or who have been practicing for 10 or fewer years are named Rising Stars through independent research and upon recommendation of their peers).
• Faculty of MCLE seminar on secondary copyright liability for user-generated content (2011).
• Chair of INTA Roundtable on trademark and fashion law (2011).
• Speaker on panels sponsored by the Boston Patent Law Association and New England School of Law (2008-2009); presenter at Boston Bar Association’s Brown Bag Lunch series (2010).
• Member: Boston Bar Association; Boston Patent Law Association; Intellectual Property Trademark Association.
• Appointed to Law Firm Committee of International Trademark Association.