White & Case
 
Stefan M. Mentzer
Partner
New York

T: + 1 212 819 8705
F: + 1 212 354 8113
E:
Practice Experience
Stefan Mentzer is a partner in White & Case's Competition section. He litigates complex civil matters and specializes in copyright, trademark, and intellectual property litigation and advising clients on strategies for managing IP-related risks. Mr. Mentzer has practiced in federal and state trial and appellate courts and in proceedings before the United States Copyright Office and Patent and Trademark Office. He has extensive experience in bench and jury trials, appeals, and counseling clients on a variety of copyright and IP issues.

Mr. Mentzer has spoken on numerous occasions before national associations and professional groups and has been quoted in Corporate Counsel, The National Law Journal, The New York Law Journal, The New York Observer, Fortune, Wired, Law360, Reuters, and The Associated Press.

Significant experience includes:

Complex civil litigation
  • Representation of a leading pharmaceutical manufacturer in false claims act, common law fraud, and consumer protection lawsuits brought by state attorneys general and a qui tam relator for the reporting of Average Wholesale Price (AWP) and Wholesale Acquisition Cost (WAC) benchmarks used in Medicaid reimbursements. Part of the team that secured reversal of a US$78 million verdict in Sandoz Inc. v. Alabama, 100 So.3d 514 (Ala. 2012) and a US$28 million judgment in Sandoz Inc. v. Kentucky, 405 S.W.3d 506 (Ky. Ct. App. 2012).

Intellectual property litigation and counseling
  • Successfully defended Deutsche Bank against copyright infringement claims in a Second Circuit case that established a leading precedent on fair use, Blanch v. Koons, 467 F. 3d 244 (2d Cir. 2006).
  • Counsel of record for the Association of Art Museum Directors and twenty-eight museums of art including the Solomon R. Guggenheim Foundation, the Art Institute of Chicago, the J. Paul Getty Trust, the Los Angeles County Museum of Art, the San Francisco Museum of Modern Art, and the Whitney Museum of American Art in Kirtsaeng v. John Wiley & Sons. The US Supreme Court cited the museum amici's arguments as support for its landmark decision that the "first sale" doctrine applies to foreign-manufactured goods. The National Law Journal featured the brief as its "brief of the week" on July 25, 2012.
  • Counsel of record for three national library associations in The Authors Guild v. Google, opposing certification of a class of potentially millions of plaintiffs in the long-running Google Books litigation.
  • Counseling pharmaceutical manufacturer Pfizer Inc. on copyright licensing and rights clearance issues and risks.
  • Counseling a leading automobile manufacturer in copyright disputes.
  • Advising corporate and private equity clients on merger and acquisition IP issues.
  • Advised the Association of Art Museum Directors in connection with the US Copyright Office review of art resale royalties, 77 Fed. Reg. 58,175 (Sept. 19, 2012).
  • Submitted amicus briefs with the US Supreme Court on behalf of songwriter and music publishing entities in MGM v. Grokster.

Rate court litigation
  • Trial and appellate representation of a leading performing rights licensing organization to determine reasonable fees for the public performance of copyrighted musical works by a commercial music service.
  • Trial and appellate representation of a performing rights organization to determine reasonable fees for the public performance of copyrighted musical works by AOL, RealNetworks, and Yahoo! internet services.
  • Representation of a performing rights organization resulting in significant rulings construing the ASCAP consent decree with the Department of Justice, reported at 309 F. Supp. 2d 566 (SDNY 2004), 323 F. Supp. 2d 588 (SDNY 2004), and 333 F. Supp. 2d 215 (SDNY 2004).
  • Multiparty arbitration before the US Copyright Office Copyright Arbitration Royalty Panel involving the distribution of cable retransmission royalties.
  • Trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board on behalf of a leading bank and a major manufacturer of cocoa and chocolate products.

Pro bono
  • Representation in criminal appeal before the New York State Court of Appeals, New York v. Gonzalez, 99 NY2d 76 (NY 2002).

Bars and Courts
US Supreme Court
US Court of Appeals for the Second Circuit
US District Court for the Eastern District of New York
US District Court for the Southern District of New York
New York State Bar

Education
JD, Georgetown University Law Center, cum laude, 2001
BA, Yale University, cum laude, Distinction in the Major (History), 1998

Professional Associations and Memberships
American Intellectual Property Law Association (AIPLA): Chair, Copyright Law Committee (2013-present); Special Committee on Legislation (2011-2012)
The Copyright Society of the USA: Trustee (2005-2008); New York Chapter Program Committee (2006-present); Annual Meeting Planning Committee (2004)

Awards and Recognition
New York Super Lawyers (2013)
New York Super Lawyers Rising Star (2011, 2012)
First Prize, Nathan Burkan Memorial Competition (2001)

Publications
"9th Circ. Made 3 Errors In 'Innocence Of Muslims' Ruling," Law360, Mar. 19, 2014 (co-author).
"The Fifth Amendment Versus Compelled Production of Encrypted Data," ABA Section of Litigation Pretrial Practice & Discovery, Nov. 15, 2012 (co-author)
"What You Need to Know Before You File a Copyright Infringement Lawsuit," Intellectual Property & Technology Law Journal, Mar. 2012
"DMCA Safe Harbour Protects 'Internet Television Network'," World Media Law Report, Oct. 16, 2008 (co-author)
"Federal Appeals Court Considers Challenge to Copyright Royalty Board," World Media Law Report, July 24, 2008 (co-author)
"Film Studios Win Infringement Case against TorrentSpy," World Copyright Law Report, Jan. 24, 2008 (co-author)
"WTO Panel to Review China's Protection and Enforcement of IP Rights," World Copyright Law Report, Oct. 25, 2007 (co-author)
"New Webcast Rates Provoke Controversy," World Copyright Law Report, Apr. 26, 2007 (co-author)
"United States and Russia Reach Agreement on IP Trade Issues," World Copyright Law Report, Feb. 1, 2007 (co-author)
"District Court Makes an Example of Florida Software Pirate," World Copyright Law Report, Sept. 28, 2006 (co-author)
"ISP Required to Identify P2P User, Despite Jurisdictional Confusion," World Copyright Law Report, June 29, 2006 (co-author)
"US Copyright Office Issues Orphan Works Report," World Copyright Law Report, Mar. 23, 2006 (co-author)
"Eighth Circuit Finds DMCA Bars Unauthorized Online Gaming Service," World Copyright Law Report, Oct. 6, 2005 (co-author)
"Recording and Film Industries Sue for i2hub Infringements," World Copyright Law Report, June 9, 2005 (co-author)
"Movie Industry Prevails over BitTorrent Server Operator," World Copyright Law Report, Apr. 21, 2005 (co-author)
"Copyright Act Does Not Pre-empt State Claim for Conversion of an Idea," World Copyright Law Report, Oct. 26, 2004 (co-author)
"Ninth Circuit will Reconsider Standing to Sue for Infringement," World Copyright Law Report, Oct. 26, 2004 (co-author)
"The Importance of Eldred: Then and Now," World Copyright Law Report, June 23, 2004 (co-author)
"International Operation Throws Wide Net over Online Pirates," World Copyright Law Report, June 14, 2004 (co-author)
"Copyright Term Extension and the United States Constitution," Journal of the Japanese Group of the International Association for the Protection of Intellectual Property, May 2003 (co-author)
"Eldred v. Ashcroft: A US Copyright Case of 'Supreme' Significance," Asian IP Magazine, Nov. 2002 (co-author)
"Music, the Internet, and the Music Industry," in 1 PLI's Seventh Annual Institute for Intellectual Property Law (David Bender & Robert P. Taylor, co-chairs, 2001), reprinted in The John Marshall Law School Center for Intellectual Property News Source, Winter 2001 (co-author)
"Sound Recordings and Unintended Consequences of the Anticybersquatting Consumer Protection Act," The Computer & Internet Lawyer, July 2001

Speaking Engagements
Panelist, "What Entrepreneurs Need to Know about Intellectual Property," Cardozo Annual Intellectual Property Law Forum, Mar. 4, 2014
Speaker, "Patent Prosecution and Copyright Protections Collide – Use of Non-Patent Literature During Patent Examination," AIPLA Spring Meeting, May 1, 2013
Moderator, "History and Purposes of Formalities," Berkeley Center For Law and Technology Symposium, Reform(aliz)ing Copyright for the Internet Age, Apr. 18, 2013
Moderator, "Is Copyright Infringement a Necessary Step for Patent Prosecution?" ABA Intellectual Property Roundtable, Dec. 12, 2012
Guest lecturer, "Copyright Issues in the Law Library Environment," St. John's University, June 3, 2010, June 9, 2011, June 7, 2012
Speaker, "Copyright Claims for Disclosing Non-Patent Literature to the USPTO," AIPLA Spring Meeting, May 11, 2012
Moderator, "Who Is Concerned about Broader Access to Orphan Works and Why," Berkeley Center For Law and Technology Symposium on Orphan Works and Mass Digitization, Apr. 12, 2012
Panelist, "Copyright Lawsuits from the Get Go: Initial Challenges for Registrants, Plaintiffs, and Defendants," AIPLA Annual Meeting, Oct. 21, 2011
Moderator, "Back to Basics: Copyright As Property or Monopoly," The Copyright Society of the USA, New York Chapter, Jan. 24, 2008

Languages
English
German

Citizenship
United States