John Macaluso

Partner

D (212) 705-9837F (212) 688-8315jmacaluso@gibney.com Connect
John Macaluso

John focuses on trademark and copyright protection and enforcement, as well as general litigation and corporate law. He counsels clients in the luxury goods, fashion, consumer electronics, sports and entertainment industries in developing nationwide programs to protect and enforce their intellectual property rights.

John has successfully litigated numerous trademark counterfeiting and copyright infringement cases, obtaining injunctive relief as well as millions of dollars in damages. John has also supervised dozens of civil and administrative proceedings under ICANN’s Uniform Dispute Resolution Procedure (UDRP), the Digital Millennium Copyright Act (DMCA) and the Anti-cybersquatting Consumer Protection Act (ACPA).

Considered an expert on anti-counterfeiting issues, John advises federal, state and local law enforcement agencies on procedures to combat the counterfeiting of trademarked goods. He also provides training to these agencies on the identification of counterfeit merchandise.

As co-founder of Gibney’s Online Brand Protection Group, John supervises a team devoted exclusively to protecting and enforcing brand owners’ rights on the internet.  He is experienced in drafting and negotiating website development and hosting agreements and advises companies and individuals on new technology, computer and internet-related matters.

education

  • St. John’s University School of Law, J.D.
  • Fordham University, Gabelli School of Business, B.S.

bar admissions

  • New York
  • Washington, DC

court admissions

  • U.S. Supreme Court
  • U.S. Court of Appeals, Armed Forces
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Federal Claims
  • U.S. District Court, Eastern District of New York
  • U.S. District Court, Southern District of New York
  • New York State Supreme Court, Appellate Division

Experience

Representative cases include:

  • Coach, Inc. v. Allen, 2012 U.S. Dist. LEXIS 100829 (S.D.N.Y. July 19, 2012)
  • Louis Vuitton Malletier and Oakley, Inc. v. Veit, 211 F.Supp.2d 567
  • Time Warner Entertainment Co., L.P. v. Does Nos. 1-2, 876 F.Supp. 407
  • Microsoft Corp. v. CMOS Technologies, Inc., 872 F.Supp. 1329
  • Saban Entertainment v. 222 World Corp. 865 F.Supp 1047
  • Polo Ralph Lauren Corp. v. Chinatown Gift Shop, 855 F.Supp. 648
  • Chanel, Inc. v. Veronique Idea Corp., 795 F. Supp. 2d 262 UDRP Decisions
  • Adidas America, Inc. and Adidas International marketing B.V., v. Tom Romkey, WIPO Case No. D2011-1633

Community Involvement

  • Eastchester Blue Devils Football Association, Head Coach
  • Eastchester Little League, Head Coach – Boys Baseball, Girls Softball

Articles, Publications & Lectures

Lectures

  • Practicing Law Institute – “Intellectual Property Law Institute 2016 Anticounterfeiting Update” – New York, NY (September 26, 2016).
  • International Anticounterfeiting Coalition – Moderator: “Turmoil and Evolution – Internet Liability Issues in the US and Europe” – Atlanta, GA, October 14, 2009
  • International Anticounterfeiting Coalition Annual Conference – “State of the Net: A Cyberview of internet Enforcement” – Washington, DC, October 18, 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

Publications

  • 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 – 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

education

  • St. John’s University School of Law, J.D.
  • Fordham University, Gabelli School of Business, B.S.

bar admissions

  • New York
  • Washington, DC

court admissions

  • U.S. Supreme Court
  • U.S. Court of Appeals, Armed Forces
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Federal Claims
  • U.S. District Court, Eastern District of New York
  • U.S. District Court, Southern District of New York
  • New York State Supreme Court, Appellate Division