Professional Profile

John Macaluso is a partner in Gibney's Intellectual Property Practice Group.  He focuses primarily in trademark and copyright protection and enforcement.  He also practices in the areas of computers & new media, corporate and sports law.     

Mr. Macaluso has successfully litigated scores of trademark counterfeiting and copyright infringement cases, as well as civil and administrative proceedings under the UDRP, DMCA and ACPA. Mr. Macaluso also counsels clients in the luxury goods, fashion, sports and entertainment industries in developing nationwide programs to protect and enforce intellectual property rights. In furthering that goal, he advises federal, state and local law enforcement agencies on procedures to combat the counterfeiting of trademarked goods, as well as training members of these agencies as an expert in the identification of counterfeit merchandise.

Mr. Macaluso is the co-founder of Gibney’s Online Brand Protection Group and supervises a staff devoted exclusively to protecting and enforcing clients’ rights on the World Wide Web.  He also has extensive experience drafting and negotiating Website Development and Hosting Agreements and advises clients on matters relating to new technology, computers and the Internet. He is also experienced in business planning and financing, and has negotiated licensing and distribution agreements with teams in several professional sports. 

Representative Matters

Louis Vuitton Malletier and Oakley, Inc. v. Veit, 211 F.Supp.2d 567, E.D.Pa., Jun 26, 2002

Rolex Watch U.S.A., Inc. v. Jones, 2002 WL 596354, S.D.N.Y., Apr 17, 2002

Time Warner Entertainment Co., L.P. v. Does Nos. 1-2, 876 F.Supp. 407, E.D.N.Y., Dec 19, 1994

Microsoft Corp. v. CMOS Technologies, Inc., 872 F.Supp. 1329, D.N.J., Oct 24, 1994

Saban Entertainment v. 222 World Corp. 865 F.Supp 1047, S.D.N.Y. Oct 19,1994

Polo Ralph Lauren Corp. v. Chinatown Gift Shop, 855 F.Supp. 648, S.D.N.Y., Jun 21, 1994

Memberships and Affiliations

American Bar Association
International Anticounterfeiting Coalition (IACC), Co-Chair - Internet Committee
International Trademark Association (INTA) – Internet Committee
New York Bar Association, Entertainment, Arts & Sports Law Society

Articles, Publications and Lectures

International Anticounterfeiting Coalition – Moderator:  “Turmoil and Evolution – Internet Liability Issues in the US and Europe” – Atlanta, GA, October 14, 2009

International Anticounterfeiting Coalition – Chair, Internet Committee – Annual Report, Atlanta, GA October 13, 2009

International Anticounterfeiting Coalition – Chair, Internet Committee – Annual Report, Seattle, WA May 14, 2009

International Anticounterfeiting Coalition – Chair, Internet Committee – B2C Working Group – Semi-Annual Report, Santa Monica, CA October 22, 2008

International Anticounterfeiting Coalition Annual Conference –  “State of the Net:  A Cyberview of internet Enforcement” – Washington, DC, October 18, 2007

International Anticounterfeiting Coalition – Chair, Internet Committee – B2C Working Group – Semi-Annual Report, Washington, D.C. October 17, 2007

International Anticounterfeiting Coalition – Chair, Internet Committee – B2C Working Group – Annual Report, Chicago, IL April 25, 2007

International Anticounterfeiting Coalition – Moderator:  “Recent Federal Prosecutions in Trademark Counterfeiting/Internet Cases, the Link Between Counterfeiting and Terrorism and Aspects of Civil  Anticounterfeiting Enforcement in New York” - New York, NY, April 30, 2003

Unites States Patent & Trademark Office:  “A Trademark Law Overview:  Trends in Litigation and Anticybersquatting Procedures “- Crystal City, VA January 31, 2002

United States Patent & Trademark Office:  “Domain Name Protection and Enforcement “ – Crystal City, VA – February 1, 2001

International Anticounterfeiting Coalition – Moderator:  “Legal Survey of Decisions Related to Anticounterfeiting” - Chicago, IL October 15, 1999

Florida Department of Law Enforcement Annual Conference – “Federal and State Civil and Criminal Trademark and Anticounterfeiting Laws” Key West, FL – October 3, 1998

Florida Department of Law Enforcement Annual Conference – “Federal and State Civil and Criminal Trademark and Anticounterfeiting Laws” Tallahassee, FL November 6, 1997

Western States Investigators Coalition Annual Conference – “Protection of Intellectual property Rights and Enforcement of Civil Trademark Laws” – Las Vegas, NV May, 1994

United States Customs and Border Protection – Trademark Protection and Enforcement and Product Identification Training at the following ports: Detroit, MI; Houston, TX; JFK Airport, NY; Newark, NJ; Philadelphia, PA; Salt Lake City, UT; St. Louis, MO

Professional and Community Involvement

Eastchester Blue Devils Football Association, Head Coach
Eastchester Little League, Head Coach

Education

J.D., St. John's University School of Law, May 1990
B.S., Fordham University, College of Business Administration, May 1986

Bar Admissions

New York
Washington, D.C.

Court Admissions

United States Supreme Court – June 1, 2004
United States Court of Appeals for the Armed Forces – June 1, 2004
United States Court of Federal Claims – June 1, 2004
United States Court of Appeals for the Federal Circuit – June 1, 2004
United States District Court, Southern District of New York – July 30, 1991
United States District Court, Eastern District of New York – July 30, 1991

Pro Hac Vice Admissions:

United States District Court for the:
Central District of California
Northern District of California
Southern District of Florida
Eastern District of Illinois
District of Massachusetts
District of Nebraska
District of New Jersey
Northern District of New York
Eastern District of Pennsylvania
District of Puerto Rico