Gregory W. Herbert

Gregory W. Herbert

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For over 25 years, Gregory Herbert has litigated and counseled clients in the areas of intellectual property law (i.e., copyright, trademark, trade dress, patent, trade secrets, and right of publicity), media/First Amendment law, Internet-related law, entertainment law and complex commercial litigation. Greg has been board certified as a specialist in Intellectual Property Law by the Florida Bar since 2009, a distinction held by fewer than 1% of Florida attorneys. Greg has broad trial experience, jury and non-jury, in state and federal court, having tried multimillion-dollar cases to verdict as lead trial counsel. Greg was voted by his peers as "Lawyer of the Year" in the Intellectual Property Litigation practice area in the Orlando market for 2014 and in the Patent practice area for 2016, as noted in The Best Lawyers in America annual votes.

Prior to joining Greenberg Traurig's Orlando office in 1996, Greg worked with a media and IP litigation firm in New York. Greg frequently lectures on IP and media law issues, has published several articles on those topics, and has taught Internet law as an Adjunct Professor at Barry University Law School. Several of Greg’s high-profile cases have been prominently featured in national business and legal media publications.

Concentrations

  • Intellectual Property Litigation (Copyright, Trademark, Trade Dress, Patent, Right of Publicity, Trade Secrets)
  • Media Law, Defamation and First Amendment Litigation
  • Complex Commercial Litigation
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Capabilities

Experience

  • O-Line v. NBC/Universal (C.D.Ca. 2016)(trademark): Defending NBC/Universal in high-profile trademark suit filed by NFL player over The Biggest Loser show. Obtained transfer to CA, dismissal with prejudice of trademark dilution count, and dismissal of related claim.
  • LaTele v. Telemundo (S.D.Fla. 2015): Defended NBC/Telemundo in high-profile, international copyright claim over telenovela. Obtained stay of litigation and fee awards against Plaintiff totaling over $535,000 for discovery misconduct. See 2014 WL 5816585 (S.D.Fla., Nov. 10, 2014) (awarding fees) (affirmed on appeal).
  • Fitzgerald v. Universal Pictures (M.D.Fla. 2016)(TCPA): Defended Universal Pictures against putative class action over text marketing for film Warcraft.
  • Tile World Corp. v. Miavana, 2016 WL 370540 (M.D.Fla. 2016)(Antoon, J.): Defeated Motion for Preliminary Injunction in trademark infringement case for sugar wholesaler.
  • D’Amato v. Orlando Solar Bears (M.D.Fla. 2015)(Byron, J.): Obtained complete dismissal and $220,000 attorneys’ fees award against Plaintiff in high-profile trademark and copyright case based on pro sports team’s name/logo. See "Judge Ices TM Suit Against Hockey Team, Penalizes Accuser," Law360, Dec. 15, 2015.
  • Island Stone N. Am. v. Stout (M.D.Fla. 2015): Obtained permanent injunction against infringement of client’s copyrights and trademarks.
  • Woodstock Ventures v. GateHouse Media (S.D.N.Y. 2014): Defended New York media company on trademark claims.
  • Celorio v. Google, Inc. (N.D. Fla. 2013)(patent): Obtained summary judgment for Google, dismissing patent infringement claims relating to on-demand publishing technology, and Protective Order blocking deposition of Google's founders. See 2013 WL 4536527 (N.D.Fla. 2013).
  • XOS/In re NCAA Litigation (M.D.Fla. 2012): Represented sports media company in connection with defense of student athlete class action involving cutting-edge right of publicity claims.
  • Revere v. SeaWorld Parks & Entertainment, LLC (M.D.Fla. 2011): Defeated  purported $350 million, high-profile copyright and trade secrets claims, alleging appropriation of concepts, ideas, and plans for parks, attractions and rides.
  • Copyright Infringement Defense: (M.D.Fla. 2010) (copyright/music): Defended high-profile copyright infringement claims against major international theme park  arising from use of song in musical performances at park.
  • WrestleReunion, LLC v. Live Nation (M.D.Fla. 2009) (Tampa) : Acted as co-lead trial counsel in two-week, federal court jury trial. Defeated $22 million claim against  publicly-traded concert promoter, Live Nation. Dismissed fraud-based claims prior to trial: WrestleReunion, LLC v. Live Nation, 2008 WL 3048859 (M.D.Fla. 2008). Trial defense verdict affirmed on appeal: 2010 WL 3623171 (11th Cir. 2010).
  • Moore v. Fox Network (Orange Co. Cir. Ct., 2009): Defeated high-profile motion for temporary restraining order filed by college football fans seeking to compel Fox to renew re-broadcast agreement with cable network to air Sugar Bowl on New Year's Day.
  • Goswami v. Lennox Industries, Inc. (Alachua Co. Cir. Ct., 2008) (patent): Lead trial counsel. Obtained defense verdict on multimillion-dollar claim for patent royalties by inventor of air purification system on behalf of publicly traded HVAC manufacturer (NYSE:LII). Claims raised novel patent royalty assignment issues, with only two reported cases on point since 1947.
  • Pinnacle Loudspeakers v. Ingram Micro/DBL Distribution, LLC (AAA Arbitration, S.D.N.Y. 2011): Second-chaired trial, obtained award of more than $1 million in damages, plus attorneys' fees, on copyright, trademark and contract claims, against world's largest distributor of consumer electronics, Ingram Micro.
  • Ecolab Inc., et al. v. International Chemical Corporation (M.D.Fla. 2012) (Conway, J.): Resolved patent,  trademark infringement claims, after extensive litigation and discovery involving claims of false marking, inequitable conduct and indefiniteness, in "bet the company litigation" over method claims for lubrication in beverage conveyor industry.
  • Grimsdale v. Sweetbay Supermarket 2011 Fla. App. LEXIS 18703 (Fla. 2nd DCA 2011): Assisted in obtaining dismissal of all counts of consumer class action complaint against Sweetbay arising from data security breach; affirmed on appeal.
  • Land Rover v. E2 Services (M.D.Fla. 2011) (Sharp, J.): Obtained permanent injunction against infringement of auto manufacturer's famous trademarks and domain names, and against manipulation of Google and Yahoo! Local business listings.
  • Skyventure Orlando, LLC v. Skyventure Management, LLC (M.D.Fla. 2009): Represented owners of indoor skydiving facilities on federal trademark, domain name and franchise law claims.
  • Freid v. eBay (Ninth Circuit, Florida 2008): Obtained dismissal of consumer fraud claim against eBay, based on §230 of the Communication Decency Act.
  • Corporate Search America, Inc. v. Dorsett (M.D.Fla. 2008) (Conway, J.): Obtained permanent injunction and attorneys' fees against former employee.
  • Goforit Entertainment, LLC v. DigiMedia.com, L.P. 513 F. Supp. 2d 1325 (M.D.Fla. 2007) (Antoon, J.): Defeated cutting-edge cybersquatting, trademark claims for one of the world's largest domain name businesses. Case of first impression alleging use of Wildcard DNS search was cybersquatting. Obtained dismissal of all claims on jurisdictional grounds.
  • Reusser v. Susan Seidelman & Snowbird Films (S.D.Fla. 2007) (Ryskamp, J.): Defended film and television director Susan Seidelman (Desperately Seeking Susan, She-Devil, Sex & the City) against trademark infringement claims based film Boynton Beach Club.
  • mVisible Technologies, Inc. v. Mixxer, Inc. 2007 WL 809677 (S.D.Fla. 2007) (Cohn, J.): Defended Mixxer, web-based provider of cell phone media downloads and other services, against federal trademark infringement  claims.
  • Instabook Corp. v. InstantPublisher.com 469 F.Supp.2d 1120, (M.D.Fla. 2006) (Antoon, J.): Defeated patent infringement claim against Internet-based book publisher. Court's ruling is one of first within the Eleventh Circuit to dismiss a case based on consideration of a website's "Terms of Use" containing an exclusive jurisdiction clause.
  • The Tribune Company Holdings, Inc. v. Times Publishing Co. (M.D.Fla. 2006): Defended The St. Petersburg Times, against trademark and cybersquatting litigation filed by The Tampa Tribune, concerning use of term tbt* Tampa Bay Times for tabloid-style newspaper.
  • Alu, Inc. v. Kupo Co., Ltd. (M.D.Fla. 2006) (Antoon, J.): Obtained preliminary injunction and seizure order preventing display and sale of knock-off products at Orange County Convention Center.
  • Fenton v. Gray (M.D.Fla. 2006): Defended hit songwriter Mark Gray from copyright infringement claims arising from script and soundtrack for children's film.
  • Aerosphere, Inc. v. Esprit Model, Inc. (M.D.Fla. 2006) (Conway, J.): Obtained permanent injunction under Lanham Act, Copyright Act, and Florida Deceptive and Unfair Trade Practices Act against infringer of trademarks, trade dress and copyrights for high-end, radio-controlled airplanes.
  • Sun Protection Factory, Inc. v. Tender Corp. 2005 WL 2484710 (M.D.Fla. 2005) (Fawsett, J.): Resolved trademark infringement lawsuit filed against client for use of previously owned federally registered trademark for consumer sunscreen product.
  • Gibson Guitar Corp. v. Piano Expo, Inc. 2005 WL 1676811 (M.D.Fla. 2005) (Antoon, J.): Obtained preliminary injunction for Gibson Guitar/Baldwin Piano, blocking publication of damaging and false advertisement by competitor.
  • Hedy Lamarr v. E. & J. Gallo Winery (M.D.Fla. 2000), aff'd, (11th Cir. 2001): Obtained summary judgment and attorney fee award against estate of Hollywood film legend Hedy Lamarr in her $17.5 million, high-profile, right of publicity suit arising from the alleged use of her image in nationally televised wine commercial.
  • Plastic Tubing Industries, Inc. v. Atchley (Orange Co. Circuit Ct. 1999): Lead trial counsel in trial of patent ownership/fiduciary duty dispute between manufacturer and former corporate officer. Obtained verdict against former officer.
  • Kraselsky v. Sanstar Productions, Inc. (M.D.Fla. 1999): Obtained permanent injunction against further infringement of design patent and utility patent by former licensee.
  • GMT Productions, L.P. v. Cablevision of New York City 816 F. Supp. 207 (S.D.N.Y. 1993): Defeated federal trademark infringement action against Cablevision arising from broadcast of "Arabic Channel" program.
  • HTE, Inc. v. Blumfield (Orange Co. Circuit Ct. 1999): Lead trial counsel; obtained injunction for publicly-traded software company against former corporate officer enjoining use of trade secrets and customer lists.
  • Ritter v. Sarasota Herald-Tribune (Sarasota Circuit Ct.)(2016): Defending Pulitzer-prize winning journalists in high-profile defamation case by former head of charity.
  • Enigma Software v. Bleeping Computer (S.D.N.Y. 2016): Defending computer security website against defamation and Lanham Act claims based on consumer reviews of Plaintiff’s product.
  • Olsson v. Simon & Schuster, Inc. (M.D.Fla. 2014)(libel): Defeated defamation claims against Simon & Schuster related to bestseller The Expected One.
  • SeaWorld Parks & Entertainment, LLC v. OSHA (M.D.Fla. 2012): Represented SeaWorld in action against federal agencies, seeking to enjoin dissemination of graphic video depicting death of orca trainer.
  • SeaWorld Parks & Entertainment, LLC v. Orange County Sheriff's Office (Orange Co. Cir. Ct. 2010) (public records/copyright): Obtained temporary and permanent injunctions prohibiting media publication of graphic videos and photos depicting death of orca trainer.
  • Palm Coast Travel v. Chris Elliott (Palm Beach Co. Cir. Ct. 2010) (media law): Defended nationally syndicated travel columnist/blogger/consumer advocate Chris Elliott (Miami Herald, Washington Post, National Geographic) against defamation and tortious interference claims brought by travel company based on journalism concerning state investigation into trip insurance practices.
  • Warren Kremer Paino, LLP v. Dutson 34 Med. L. Rptr. 3 (D. Maine 2006): Represented blogger in defense of highly publicized lawsuit alleging copyright infringement and defamation based on ad parody.
  • Represented Martha Beck, New York Times best-selling author of Expecting Adam, Leaving the Saints, and The Joy Diet, and columnist for Oprah Winfrey's O Magazine, in connection with media law issues concerning the publication of her work. 
  • Larchmont Professional Firefighters Ass'n v. Gannett, 615 N.Y.S. 2d 73 (2d Dept. 1994): Defeated defamation claim by firefighters union against Gannett Suburban Newspapers arising from newspaper article critical of union policies.
  • Viad Corp. v. McAvoy (Orange Co. Circuit Ct. 2001): Resolved alleged "cybersmearing" internet defamation action arising from alleged defamatory postings on Internet message board.
  • Defeated numerous libel/slander/defamation actions against newspapers, radio stations, magazine and book publishers.
  • Performed pre-publication/pre-broadcast review and "libel reads" of content for major television network and national publishing house.
  • Noonan v. R.J. Reynolds Tobacco Co. 902 F. Supp. 298 (D. Mass. 1995): Defeated multimillion-dollar, high-profile, defamation/invasion of privacy/right of publicity/Lanham Act claims brought against RJR, and its international advertising agencies, Lintas Worldwide and Interpublic Group of Companies, brought by alleged "Anti-Smoking Czar" of the Boston public school system, arising from publication of his photograph in internationally circulated RJR magazine advertisement.
  • Adjunct Professor, Barry University School of Law, Internet Law, 2008-2009
  • Board Certified, The Florida Bar, Intellectual Property Law, Board of Legal Specialization and Education
 

Recognition & Leadership

  • Listed, The Best Lawyers in America, Litigation - Intellectual Property; Litigation - Patent, 2010-2017
    • "Lawyer of the Year," Litigation - Patent, Orlando, 2016
    • "Lawyer of the Year," Litigation - Intellectual Property, Orlando, 2014
  • Listed, Orlando magazine, "The Best Lawyers in Orlando," 2010, 2013, 2016-2017
  • Listed, Super Lawyers magazine, Florida Super Lawyers, 2013-2017
  • Listed, Florida Trend magazine, "Legal Elite," 2014
  • Team Member, a Law360 "Employment Practice Group of the Year," 2011 & 2013
  • Listed, The Legal 500 United States, Intellectual Property Litigation - Copyright: National, 2007
  • Rated, AV Preeminent® 4.9 out of 5

AV®, AV Preeminent®, Martindale-Hubbell DistinguishedSM and Martindale-Hubbell NotableSM are certification marks used under license in accordance with the Martindale-Hubbell® certification procedures, standards and policies.

  • Member, Florida Bar Association, Media Law Committee
  • Member, Habitat for Humanity of Greater Orlando, Family Selection Committee
  • Member, Orange County Bar Association, Intellectual Property Law Committee
  • Member, Orange County Bar Ass’n Guardian Ad Litem Program (at least two cases per year)

Credentials

Education
  • J.D., Harvard Law School, 1990
    • Editor, Harvard Environmental Law Review
    • Co-Editor-in-Chief, Harvard Law Record
  • B.A., Business, English, with honors, Florida State University, 1986
Admissions
  • Florida
  • New York