Joseph C. Gioconda

Current

• Partner at DLA Piper (formerly DLA Piper Rudnick Gray Cary)

Past

• Partner at Kirkland & Ellis LLP
• Associate at Kirkland & Ellis LLP
• Clinical Intern at U.S. Department of Justice

• Clinical Intern at United States Senate Judiciary Committee

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Education

• Yale Law School
• State University of New York at Stony Brook
• Cathedral Preparatory Seminary, New York

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Recommended

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Connections

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Industry

Law Practice

Joseph C. Gioconda’s Summary

Joseph Gioconda is a partner in the global law firm DLA Piper LLP (US). He is responsible for the Trademark Litigation practice in that Firm's New York office. He focuses his practice on litigating and counseling in the areas of anticounterfeiting, trademarks and trade dress, domain name protection, copyrights, design patents, and false advertising.

Mr. Gioconda represents a wide range of leading multinational clients and has protected some of the most famous and valuable brands in the world. He has expertise in diverse business sectors including fashion and luxury goods, apparel, footwear, personal electronics and computers, pharmaceuticals, household consumer products, art, entertainment, media and e-commerce.

He has successfully litigated cases in many federal and state courts throughout the U.S. His cases have involved temporary restraining orders, preliminary injunction hearings, jury trials and appeals.

Mr. Gioconda has lectured at Yale Law School on a variety of intellectual property topics and has been widely quoted in the legal, business, and general press on intellectual property issues. He is a frequent commentator on CNN, NBC and MSNBC. Journalist Tim Phillips profiled him in the recent book "Knockoff: The Deadly Trade in Counterfeit Goods."

Mr. Gioconda's experience drafting legislation for the Senate Judiciary Committee has given him valuable insight into this area of law. Moreover, his experience at the U.S. Attorney's Office in New York has given him exposure to working closely with federal and local government officials and law enforcement agencies to achieve the seizure of articles that infringe his clients' rights. Mr. Gioconda has trained hundreds of U.S. Customs agents to strengthen the nation’s borders against the tide of illegal imports.

To serve his community, Mr. Gioconda acted as Special Counsel to the King's County District Attorney's office in successfully defending a jury's verdict of armed robbery on appeal.

Joseph C. Gioconda’s Specialties:

Anticounterfeiting, Trademark Litigation and Enforcement, Copyright Litigation, Trade Dress Litigation, Unfair Competition, Entertainment and Media Law and Counseling. With more than 3,600 lawyers located in 25 countries and 64 offices throughout Asia, Europe, the Middle East and the U.S., DLA Piper is now the largest law firm in the world. These vast resources enable Mr. Gioconda to assist clients with their legal needs around the globe.

Joseph C. Gioconda’s Experience

• Partner

  DLA Piper (formerly DLA Piper Rudnick Gray Cary)

  (Partnership; 1001-5000 employees; Law Practice industry)

  November 2006 — Present (3 years 1 month)

  • Litigate many high-profile trademark, trade dress and copyright cases involving Fortune 500 companies.
  
  • Argue motions for Temporary Restraining Orders and Preliminary Injunctions.
  
  • Advise clients on anticounterfeiting and brand protection legal strategies.
  
  Representative cases:
  
  • XY Skin Care & Cosmetics v. Hugo Boss USA, Inc., trademark case relating to cologne and perfume, currently pending in federal court in Arizona.
  
  • Bodum USA, Inc. v. LaCafetiere, Inc., trade dress case relating to "french press" style coffee makers currently pending in federal court in Chicago.
  
  • Chicago Board Options Exchange, et al. v. International Securities Exchange LLC, unfair competition case currently pending in the Circuit Court of Cook County, Illinois (and adjunct copyright case currently pending in the U.S. Court of Appeals for the Second Circuit).
  
  • Computer Sciences Corporation v. MMC 20/20 Software, Inc., trade secret litigation in New York Supreme Court.

• Partner

  Kirkland & Ellis LLP

  (Law Practice industry)

  2003 — 2006 (3 years )

  • Litigated many high-profile trademark, trade dress and copyright cases.
  
  • Conducted direct and cross-examinations of witnesses at jury trials, bench trials and hearings.
  
  • Argued numerous motions for Temporary Restraining Orders and Preliminary Injunctions.
  
  Representative cases:
  
  • Playboy Enterprises v. On-Line Entertainment, trademark jury trial in the Eastern District of New York, and successful appeal in the U.S. Court of Appeals for the Second Circuit.
  
  • Hermès of Paris v. Lederer, successful trademark jury trial in the Southern District of New York, and successful appeal in the U.S. Court of Appeals for the Second Circuit.
  
  • Hermès of Paris v. Pelle via Roma, successful trademark jury trial in the Southern District of New York.
  
  • Hermès of Paris, Inc. v. Steven Stolman, preliminary injunction granted by the Eastern District of New York.
  
  • Abert Trading v. Kipling, favorable summary judgment ruling granted by the Southern District of New York.

• Associate

  Kirkland & Ellis LLP

  (Partnership; 1001-5000 employees; Law Practice industry)

  September 1997 — October 2003 (6 years 2 months)

  • Designed and implemented aggressive global trademark enforcement strategies for clients.
  
  • Argued numerous motions for Temporary Restraining Orders and Preliminary Injunctions.
  
  • Deposed and defended fact and expert witnesses; managed and conducted document discovery.
  
  • Handled Opposition and Cancellation proceedings before the Trademark Trial and Appeal Board.
  
  • Pro Bono: Successfully briefed and argued appeal of armed robbery conviction on behalf of King’s County District Attorney’s Office.
  
  Representative Cases:
  
  • Hermès of Paris v. Brueton, preliminary injunction granted by the Eastern District of New York.
  
  • Hermès of Paris v. Susan Sutherland, preliminary injunction granted by the District of Illinois.
  
  • Hermès of Paris v. RKR Bags/Knockoff Shop, preliminary injunction granted by the Southern District of California.
  
  • Norelco v. Remington, preliminary injunction hearing, Southern District of New York.

• Clinical Intern

  U.S. Department of Justice

  (Government Agency; 10,001 or more employees; Government Administration industry)

  September 1996 — May 1997 (9 months)

  • Assisted federal prosecutors in the coordination of criminal investigations and indictments.
  
  • Researched and drafted pretrial motions and pleadings.
  
  • Drafted federal appeal on a downward departure issue applying sentencing guidelines.
  
  • Met with defendants and prosecutors during plea bargaining sessions.

• Clinical Intern

  United States Senate Judiciary Committee

  (Government Agency; 11-50 employees; Legislative Office industry)

  May 1995 — September 1995 (5 months)

  • Composed federal legislation on emerging intellectual property issues.
  
  • Analyzed and advised on the legality and constitutionality of actions taken by the U.S. Senate.
  
  • Worked closely with U.S. Senators and witnesses to prepare for Senate Judiciary Committee hearings on various topics including intellectual property.
  
  • Met with House Representatives and constituents to coordinate legislation.

Joseph C. Gioconda’s Education

• Yale Law School

  J.D. , Law , 1994 — 1997

  Activities and Societies:

  Yale Law Federalist Society (President), Yale Journal on Regulation (Senior Editor), Yale Journal of Law and the Humanities (Development Editor), Harvard Journal of Law and Public Policy (Visiting Editor), Temporary Restraining Orders for Battered Women Project, Yale Law Crew Team (Co-Captain and Co-Founder).

• State University of New York at Stony Brook

  B.A. , Political Science , 1991 — 1994

  Graduated Magna Cum Laude, Phi Beta Kappa, Dean's List (4.0 GPA) for 9 semesters.

  Activities and Societies:

  Instructor and Teaching Assistant for numerous advanced courses in Political Science and Social Psychology.

• Cathedral Preparatory Seminary, New York

  General 1986 — 1990

  National Forensic League (National Finalist in Debate and Extemp), Brooklyn-Queens Catholic Forensic League (New York State Finalist in Debate and Extemp).

  Activities and Societies:

  Currently a member of St. Matthew's Society, an alumni association of Cathedral graduates working in the finance and legal fields.

Additional Information

Joseph C. Gioconda’s Interests:

Recently Authored: Joseph C. Gioconda, "Can Intellectual Property Laws Stem the Rising Tide of Art Forgeries?" 31 Hastings Comm. & Ent. L.J. 47 (2008). Mentor-in-Residence, Yale Law School.

Joseph C. Gioconda’s Groups:

Admitted to United States Supreme Court, United States Court of Appeals for the Federal Circuit, United States Court of Appeals for the Second Circuit, United States Court of Appeals for the Third Circuit, United States Court of Appeals for the Ninth Circuit, United States Court of Appeals for the Eleventh Circuit, District Court for the Southern District of New York, District Court for the Eastern District of New York, District Court for the Eastern District of Michigan, Bar of the State of New York. Member of: International Bar Association (IBA), International Trademark Association (INTA), International Press Association, Harper's Bazaar Anticounterfeiting Summit (Speaker), Art Law Conference 2007 in Milan, Italy (Speaker), Yale Mock Trial Association 2008 (Judge).

•    Institute for Int'l Film Financing (IIFF)
•    Executive Suite
•    American Red Cross
•    LION™ Worn with Pride! [Choose wisely ... ] < BEWARE OF COUNTERFEITS >
•    U.S. Government Relations & Public Affairs
•    Patent Law Group
•    Visual Artists and their Advocates
•    Historia
•    Yale Law School Alumni
•    TopLinked.com (Open Networkers)
•    LAW-in
•    Speakers and Panelists
•    Avvo Lawyers
•    China Trade Group
•    Generation X
•    Starbucks' Enthusiasts
•    ThoseInFilm (Motion Pictures & Film Industry)
•    Stony Brook Political Science Alumni
•    Global Intellectual Property & Business Lawyers
•    TAO - the key to success
•    Legal Marketing
•    Electronic Trading Group
•    Stony Brook University
•    Patent and Intellectual Property Practitioners
•    International Trademark Association (INTA)
•    New York Yankees Fan Club
•    IP Lawyers
•    Linked 2 Leadership
•    Music and Entertainment Professionals
•    Music Industry Forum
•    Entertainment Lawyers
•    Hooray for Hollyworld!
•    InLinked Cyber Crimes Group
•    Anti-Counterfeiting
•    Music Publishing And Licensing
•    Media & Entertainment Professionals
•    Leadership for Lawyers
•    Trial Lawyer Network for Lawyers and Attorneys
•    Trade Mark Law
•    Intellectual Property Attorneys Group
•    Art Professionals Worldwide
•    Information Technology & Intellectual Property Law Group
•    Global Keynote Speakers Association
•    Artists and Sculptors
•    U.S. Department of Justice Alumni Association
•    The Federalist Society for Law & Public Policy Studies [OFFICIAL GROUP]
•    Legal NYC
•    Friends of LinkedIn
•    Trademark World
•    U.S. Department of Justice

Joseph C. Gioconda’s Honors:

Rated an "Excellent" Attorney by peer ratings on AVVO.com.

Interviewed in:

• ABC TV Is Sued Over Plan for Show, The New York Times

• A 'Satire' of a Classic Fails to Amuse The August House of Hermès, The New York Times

• Counterfeiter, Imitators: Fine Line, Wall Street Journal

• Fashion Industry Copes With Designer Knockoffs, National Public Radio

• Special Report: Accessories -- or a Crime? NBC News

• Suit Sends Message to Bootleg Sellers: Knock It Off, Los Angeles Times

• Designers Add Muscle in Battle Against Knockoffs, National Jeweler

• Big Business in Counterfeiting Products, Voice of America

• Bag the Knockoffs! New York Newsday

• Handbag Wars, Vogue

• The Fighters of the Fake Get Real, New York Newsday

• Duped By Designer Doubles; Are Knockoffs Worth the Price? Black Enterprise

• Vuitton Sues Rival Dooney, New York Post

• Playboy Set to Turn Page in Web Trial, New York Daily News

Joseph C. Gioconda’s Contact Settings

Interested In:

• career opportunities
• consulting offers
• new ventures
• job inquiries
• expertise requests
• business deals
• reference requests
• getting back in touch