Barclay Damon
Barclay Damon

J. Joseph Bainton

J. Joseph Bainton

Partner

p: 212.784.5811

f: 212.704.8330

icon_email jbainton@barclaydamon.com
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New York Office

Suite 600
1270 Avenue of the Americas
New York, New York 10020

For more than 40 years, Joe has represented public and private clients in commercial litigation involving intellectual property rights; director, officer, and professional liability issues; insolvency claims including fraudulent transfer, and alter ego claims in courts between Portland, Maine and San Diego and Seattle and Miami, including the US Supreme Court, the NY Court of Appeals, and the US Courts of Appeal for the First, Second, Third, Seventh, Ninth, Tenth, Eleventh, District of Columbia, and Federal Circuits. He has supervised on a nation-wide or regional basis the defense of product liability claims for manufacturers in diverse industries. Among his seminal work for intellectual property owners, Joe established the right of intellectual property owners to ex parte injunctive relief; the right of intellectual property owners to recover damages for violations of injunctions as a matter of right and not judicial discretion; the right of a prospective trademark user to obtain declaratory relief regarding non-infringement of a mark prior to actual use of the mark in commerce; and the propriety of subjecting recidivist counterfeiters to criminal prosecution in the name of the United States by attorneys specially appointed by district courts. In commercial litigation, he has defended a public company that reported in its SEC filings potential liabilities in excess of $.5 billion and represented a bankruptcy trustee that recovered in excess of $350 million. On behalf of a particular manufacturer of industrial equipment, Joe never lost a products liability trial within the New York City metropolitan area (including Northern New Jersey and Connecticut) in over 30 years. He has tried difficult cases and experienced an adverse judgment in excess of $72 million.

Additionally, Joe has a broad array of commercial litigation experience in many other areas, having tried over 100 cases to verdict before juries and dozens of other cases to decision principally before judges and a handful before arbitrators.

Representative Experience

  • Young ex rel. Vuitton et Fils S.A:. The US Supreme Court examined the historic practice of a federal court specially appointing the attorney for a party to prosecute a criminal contempt proceeding against a person guilty of willfully violating its order. The court, in the exercise of its supervisory powers, concluded that the criminal prosecution should be conducted by an attorney other than the attorney for the party benefiting from the order being violated, although the court divided as to whether the convictions before it should be vacated.
  • In re Vuitton et Fils S.A.: Obtained a writ of mandamus from the Second Circuit Court of Appeals directing a district court to issue an ex parte temporary restraining order against a trademark counterfeiter. Subsequently obtained a similar writ of mandamus from the Ninth Circuit Court of Appeals.
  • El Greco Leather Goods Co., Inc. v. Shoe World, Inc.: Persuaded the Second Circuit Court of Appeals to reverse a ruling by the district court that the Lanham Act did not prohibit a manufacturer of trademarked goods hired by the trademark owner from selling production overruns and seconds of trademarked goods. In that case, a South American shoe manufacturer failed to deliver shoes in time for the season and the trademark owner canceled its order. The factory then tried to sell the tardily made shoes through discount outlets, which would have diluted the value of the famous mark.
  • Vuitton et Fils S.A. v. Carousel Handbags: Second Circuit Chief Judge Irving R. Kaufman established that once a trademark owner proves that a defendant or someone acting in concert of participation with him/her has actual knowledge of an injunction and violates it, a “district court is not free to exercise its discretion and withhold an order in civil contempt award damages, to the extent they are established.” Also, “[s]ince the plaintiff should be made whole for the harm he has suffered, it is appropriate for the court also to award the reasonable costs of prosecuting the contempt, including attorneys’ fees.”
  • Vuitton S.A. v. Lee: The Seventh Circuit Court of Appeals established that once a trademark owner proves willful infringement, a district court lacks discretion to deny it an award of the infringer’s profits. In reversing the district court, which denied recovery of profits and characterized Vuitton and Gucci as having used “the laws as a sword and their millions as a mace,” Judge Posner wrote, “Equity is not a roving commission to redistribute wealth from large companies to small ones. The Lanham Act was not written by Robin Hood.”
  • Starter v. Converse: Reversed a district court holding and established in the Second Circuit that a party need not first “use in commerce” a trademark that it has reason to believe will be challenged as infringing by another party, but may instead file an action for declaratory relief and thereby avoid the risk of large monetary losses, should its belief about non-infringement be proven wrong.
  • Idaho Potato Commission v. M & M Produce Farm & Sales: Established that the doctrine of “Licensee Estoppel” did not apply to certification mark agreements for the same public policy reasons that it does not apply to patent licenses and, therefore, certification mark licensees are at liberty to challenge the validity of licensed certification marks.
  • In re Healthco Intern., Inc: The bankruptcy court for the District of Massachusetts sustained breach of fiduciary duty claims (among others) by a bankruptcy trustee against directors of a Delaware corporation who voted in favor of a leveraged buyout (LBO) that, while benefiting shareholders (including themselves), left the corporation with unreasonably small capital that resulted in the corporation’s bankruptcy filing two years after the LBO.
  • Badem Bldgs. v. Abrams: The NY Court of Appeals held that absent evidence of actual collusion, the mere presence of “illusory tenancies” in a building slated for cooperative conversion was an insufficient basis to sustain a fraud charge against the building’s owners under New York’s Martin Act.

Practice Areas

Education

  • Rutgers School of Law, J.D.

Memberships & Affiliations

  • American Bar Association
  • New York State Bar Association
  • Bar Association of the City of New York
  • The Defense Research Institute
  • Federal Bar Council
  • International Trademark Association

Honors

  • Martindale-Hubbell “AV” Peer Review Rated for Very High to Preeminent Ethical Standards and Legal Ability
  • Litigation Counsel of America Fellow (peer rated top 3% of all trial lawyers in America)
  • Selected to Super Lawyers New York Metro: Business Litigation, 2010-2018
  • Who’s Who in the World, 1992
  • Who’s Who in America, 1992
  • Who’s Who in the Law, 1990
  • Who’s Who in Business and Finance, 1990

Prior Experience

  • Bainton Law Group, PLLC, Partner
  • Smith, Gambrell & Russell, LLP, Partner
  • Bainton McCarthy, Partner
  • Ross & Hardies, Partner
  • Whitman & Ransom, Partner 
  • Shea & Gould, Partner
  • Ropes & Gray, Partner, Associate
  • Satterlee Stephens Burke & Burke, Associate