Nancy J. Mertzel

Summary of Experience

Nancy Mertzel has more than 25 years of experience protecting brand names, products, content and technology.

Nancy's broad litigation experience includes numerous copyright, trademark, trade dress, unfair competition and trade secret disputes. She regularly litigates matters involving source code and technology, and has successfully handled cutting edge cases involving the scope of copyright protection in source code and data. For example, on behalf of a leading bank and big box retailer, she successfully defeated a claim of copyright in numbers. She also handles trademark infringement cases, "failed systems" disputes between developers and licensees, trade secret cases involving software, entertainment industry disputes, and recovery of domain names.

On the transactional side, Nancy handles trademark clearance, prosecution and portfolio management, and drafts a wide variety of agreements including copyright and trademark licenses, software licenses and software development agreements. She also advises clients on copyright issues including the scope of protection in data, fair use and infringement.

Congressional Testimony

On February 26, 2015, Nancy testified before the House Judiciary Committee at a hearing on “The U.S. Copyright Office: Its Functions and Resources” as a representative of the American Intellectual Property Law Association (AIPLA). Nancy emphasized the importance of copyright in today’s digital economy, and urged legislators to support a well-functioning Copyright Office.

To listen to the full testimony or access the transcript, please click here

Image of Nancy Mertzel testifying before Congress.
Technology, Copyright, Trademark and Related Litigation Experience

Nancy Mertzel has substantial experience handling technology, copyright, trademark. trade secret, unfair competition and related forms of intellectual property infringement. She has handled numerous cases involving source code and data and is experienced at deposing computer programmers. She is an effective advocate with a proven track record of success. Highlights of her litigation experience include:

  • Successfully defended Viacom in federal litigation arising out of the participation of a singer-songwriter in VH1’s Love & Hip Hop: New York reality television series.  After moving to dismiss, secured a voluntary dismissal of action seeking millions of dollars in damages for alleged violations of the Copyright Act and Lanham Act. Scrilla Hill Entertainment Inc. v. Viacom Media Network, Inc., Case No. 16 Civ. 00490 (S.D.N.Y 2016).

  • Successfully defended Capital One Financial and Costco Wholesale in dispute arising from the use of plaintiff’s financial averages to promote co-branded banking services to the retailer’s customers. After obtaining early dismissal of numerous claims, won summary judgment dismissing copyright infringement. In a significant reported decision, the court found that the plaintiff’s financial averages were not protectable under copyright. BanxCorp v. Costco Wholesale Corp., 978 F.Supp.2d 280 (2013).

  • Represented Honeywell subsidiary in litigation alleging that extraction of data infringed copyright in vendor’s database schema. Q-CIM, Inc. v. Allied-Signal Inc., No. 99-2776 (D.N.J. 1999).

  • Defended software developer who left broker dealer to develop competing source code product. Tradescape.com v. Shivaram, 77 F. Supp. 2d 408 (S.D.N.Y. 1999)

  • Obtained several preliminary injunctions on behalf of “dongle” manufacturer in litigation against distributor of circumventing software; deposed computer programmer regarding software "patch" written in Assembly. Rainbow Technologies, Inc. v. Montoro, No. 93-3247 (D.N.J. 1993).​​

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Amicus Briefs

Nancy was the primary author of three amicus curiae (friend of the court) briefs filed with the U.S. Supreme Court on behalf of the American Intellectual Property Law Association:

 

Accolades

In 2016 and 2017, World Trademark Review named Nancy a leading lawyer for enforcement and litigation, calling her a “well-spoken and zealous advocate” who “handles the whole nine yards of brand development and enforcement.”  Since 2009, Nancy has been named one of Thomson Reuters' New York Super Lawyers for Intellectual Property Litigation, as well as one of the publication's top 50 NY women attorneys (2013-2018). She also obtained an AV Preeminent Rating from Martindale-Hubbell. 

Memberships & Associations

Nancy is an active member of the bar, and a frequent speaker and author. She currently serves on the Board of Women Owned Law, a new organization to promote women legal entrepreneurs. She recently completed a three-year term on the board of the American Intellectual Property Law Association, one of the largest associations of IP lawyers in the world. Following is a summary of her primary memberships and associations:

  • American Intellectual Property Law Association

    • Legislation Committee Appointed Member (2018-2020)

    • Fellows, Elected Member (2018-present)

    • Amicus Committee Appointed Member (2013-2014, 2017-2018)

    • Board of Directors (2014-2017)

    • Copyright Law Committee Chair (2011-2013)

    • Co-Chair LGBT Sub-Committee of Diversity Committee (2010-2016)

  • Association of the Bar of the City of New York

    • Copyright Law Committee (2018-2021)

    • Small Law Firms Committee (2018-2020)

    • Trademarks and Unfair Competition Committee (2008-2010)

  • Copyright Society of the USA

    • Advisory Committee to the Executive Committee (2012-2013)

    • Treasurer (2008-2010)

    • Trustee (2006-2009)

    • Volunteer of the Year Award Recipient (2007)​

  • International Trademark Association

    • Legislation and Regulation Committee (2018-2019)​

  • National Association of Women Lawyers

  • National Gay & Lesbian Chamber of Commerce, New York Chapter

  • New York Intellectual Property Law Association

    • Women in Intellectual Property Law Committee​

  • Women Owned Law

    • Vice President (2018-present)

    • Board of Directors (2018-2021)

    • Chair, New York Regional Steering Committee (2018-present)

Education

  • American University, Washington College of Law (J.D.)

  • University of Rochester (B.A.)

Mertzel Law PLLC

845 Third Avenue, 6th Floor

New York, NY 10022

info@mertzel-law.com

(646) 965-6900

© 2017-2019 Mertzel Law PLLC

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