Stefan Mentzer | White & Case LLP International Law Firm, Global Law Practice
Stefan Mentzer
Stefan Mentzer

Stefan Mentzer

Partner, New York

T +1 212 819 8705

T +1 212 819 8200

E smentzer@whitecase.com

in LinkedIn profile

Stefan Mentzer was named a 2015 New York Super Lawyer. The Legal 500 recognized his “extensive experience” in the area of copyright.

Overview

Stefan litigates complex civil and intellectual property matters for a wide range of clients, including technology, media, ecommerce, retail, automobile, pharmaceutical, consumer products, manufacturing and financial services companies.

His areas of focus include copyright, trademark, unfair competition, trade secrets, and music licensing, and he regularly advises clients on strategies for managing IP-related risks. Stefan has extensive experience in bench and jury trials and appeals. He has practiced in federal and state courts and in administrative proceedings before the US International Trade Commission, the Copyright Office, and the Patent and Trademark Office.

Stefan's clients have included Avon, Deutsche Bank, the Gore Vidal Revocable Trust, Honda, Pfizer, Sandoz, Sears, the Solomon R. Guggenheim Foundation, Sony, Walmart, and the Whitney Museum of American Art.

Stefan has served as Chair of the Copyright Law Committee of AIPLA, a 15,000-member national bar association. He regularly speaks at conferences and before professional groups and has been quoted by Corporate Counsel, The National Law Journal, The New York Law Journal, The New York Observer, The Washington Post, Fortune, Wired, Law360, Reuters, and The Associated Press.

Bars and Courts

  • US Supreme Court
  • US Court of Appeals for the Federal Circuit
  • 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
  • US District Court for the District of New Mexico
  • New York State Bar

Education

  • JD, Georgetown University Law Center
  • BA, History, Yale University

Languages

  • English
  • German

Experience

Certain Stainless Steel Products

Represents a leading stainless steel manufacturer in Section 337 proceeding before the US International Trade Commission. The Commission found that the respondent, one of the world's largest stainless steel producers, misappropriated our client's trade secrets, and it issued orders prohibiting the respondent's importation and sale of stainless steel products for more than sixteen years.

Deckers Outdoor Corporation v. Wal-Mart Stores and Sears, Roebuck and Co.

Represented national U.S. retailers in lawsuits brought by the manufacturer of Ugg footwear alleging design patent infringement, trademark and trade dress infringement, trademark dilution and unfair competition.

Blanch v. Koons

Successfully defended Deutsche Bank against copyright infringement claims in a case that established a leading precedent on fair use, 'Blanch v. Koons,' 467 F. 3d 244 (2d Cir. 2006).

Southfield Music v. Keefe

Lead counsel for a pharmaceutical company in a copyright infringement lawsuit alleging infringement of a song used in television advertising campaign.

Average Wholesale Price Pharmaceutical Litigation

Represented a leading pharmaceutical manufacturer in a 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) data used in Medicaid reimbursements. Helped to secure 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).

Kirtsaeng v. John Wiley & Sons

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.

Google Books Litigation

Counsel of record for three national library associations in 'The Authors Guild v. Google,' opposing certification of a class of potentially millions of plaintiffs.

Mad Dogg Athletics v. Wal-Mart Stores and Sam's West

Represented Walmart and Sam's Club in a lawsuit brought by a manufacturer of stationary exercise bicycles alleging trademark infringement and unfair competition.

Yesh Music v. LINE Corporation

Lead counsel for LINE Corporation in a copyright infringement action brought by Yesh Music for the alleged infringement of musical compositions on an online streaming music service.

Music Royalty Rate-Setting and Distribution Proceedings

Represented a leading performing rights licensing organization in federal court cases to determine reasonable fees for the public performance of copyrighted musical works by internet and commercial music services, and in US Copyright Office proceedings for the distribution of cable retransmission royalties.

Speaking Engagements

"Cranes, Trains, and Digital Goods: Trade Secret and Copyright Developments at the International Trade Commission", January 28, 2016: AIPLA Mid-Winter Institute, (speaker)

"Coming to an Auction House Near You? The Revived Debate Over Art Resale Royalties", January 15, 2015: Copyright Society of the U.S.A., (speaker)

"What Entrepreneurs Need to Know about Intellectual Property", March 4, 2014: Cardozo Annual Intellectual Property Law Forum, (panelist)

"Patent Prosecution and Copyright Protections Collide – Use of Non-Patent Literature During Patent Examination", May 1, 2013: AIPLA Spring Meeting, (speaker)

"History and Purposes of Formalities", April 18, 2013: Berkeley Center For Law and Technology Symposium, Reform(aliz)ing Copyright for the Internet Age, (moderator)

"Is Copyright Infringement a Necessary Step for Patent Prosecution?", December 12, 2012: ABA Intellectual Property Roundtable, (moderator)

"Copyright Issues in the Law Library Environment", June 3, 2010, June 9, 2011, June 7, 2012: St. John's University, (guest lecturer)

"Copyright Claims for Disclosing Non-Patent Literature to the USPTO", May 11, 2012: AIPLA Spring Meeting, (speaker)

"Who Is Concerned about Broader Access to Orphan Works and Why", April 12, 2012: Berkeley Center For Law and Technology Symposium on Orphan Works and Mass Digitization, (moderator)

"Copyright Lawsuits from the Get Go: Initial Challenges for Registrants, Plaintiffs, and Defendants", October 21, 2011: AIPLA Annual Meeting, (speaker)

Publications

  • Joinder and Early Discovery in Bittorrent Copyright Infringement Lawsuits, Cardozo Arts & Entertainment Law Journal, 2015, (co-author)
  • 9th Circ. Made 3 Errors In 'Innocence Of Muslims' Ruling, Law360, March 19, 2014, (co-author)
  • The Fifth Amendment Versus Compelled Production of Encrypted Data, ABA Section of Litigation Pretrial Practice & Discovery, November 15, 2012, (co-author)
  • What You Need to Know Before You File a Copyright Infringement Lawsuit, Intellectual Property & Technology Law Journal, March 2012
  • DMCA Safe Harbour Protects 'Internet Television Network', World Media Law Report, October 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, January 24, 2008, (co-author)
  • WTO Panel to Review China's Protection and Enforcement of IP Rights, World Copyright Law Report, October 25, 2007, (co-author)
  • New Webcast Rates Provoke Controversy, World Copyright Law Report, April 26, 2007, (co-author)
  • United States and Russia Reach Agreement on IP Trade Issues, World Copyright Law Report, February 1, 2007, (co-author)
  • District Court Makes an Example of Florida Software Pirate, World Copyright Law Report, Sept. 28, 2006, (co-author)

Awards & Recognition

New York Super Lawyers, 2013-2015

Rising Star, New York Super Lawyers, 2011, 2012

Burton Award, Distinguished Legal Writing, 2015

First Prize, Nathan Burkan Memorial Competition, 2001