Kim v. Coach, Inc, et al

Filing 39

DECLARATION of John Macaluso in Support of Defendant Coach, Inc.'s Opposition to Special Motion to Strike (REDACTED) filed by Defendant Coach, Inc. re 9 MOTION to Dismiss /Strike Counterclaims and for Sanctions (Keehnel, Stellman)

CERTIFICATE OF SERVICE

1
2

I hereby certify that on April 12, 2011, I electronically filed the foregoing with the

3

Clerk of the Court using the CM/ECF System which will send notification of such filing to all

4

counsel or record.

5

Dated this 12th day of April, 2011.

6
s/ Stellman Keehnel
Stellman Keehnel, WSBA No. 9309

7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
DECLARATION OF MACALUSO IN SUPPORT
OF COACH’S OPPOSITION TO MOTION TO
STRIKE - 9
No. 2:11-cv-00214-RSM
WEST\223337558.1

DLA Piper LLP (US)
701 Fifth Avenue, Suite 7000
Seattle, WA 98104-7044 | Tel: [phone]

10

John Macaluso
665 FIFTH AVENUE, NEW YORK, NY 10022
(212) 688 – 5151 – Phone
[e-mail] – Email

PROFESSIONAL EXPERIENCE
Partner – Intellectual Property Practice Group
Gibney, Anthony & Flaherty, LLP, New York, NY (1999 to Present)
Associate
Gibney, Anthony & Flaherty, LLP, New York, NY (1990 to 1998)

AREAS OF PRACTICE
Trademark and copyright protection and enforcement, computers and new media, corporate and
sports law.
Successfully litigated scores of trademark counterfeiting and copyright infringement cases, as well as
civil and administrative proceedings under the UDRP, DMCA and ACPA.
Counsel clients in the luxury goods, fashion, sports and entertainment industries in developing
nationwide programs to protect and enforce intellectual property rights.
Advise 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.
Co-founder of Gibney’s Online Brand Protection Group, supervising a staff devoted exclusively to
protecting and enforcing brand owner’s rights on the World Wide Web.

11

Page 1 of 4

John Macaluso
665 FIFTH AVENUE, NEW YORK, NY 10022
(212) 688 – 5151 – Phone
[e-mail] – Email 

PRIOR EMPLOYMENT
Law Clerk
United States Department of Justice, United States Attorney, EDNY, Brooklyn, NY (September 1989
– June 1990)
Legal Intern
Commodity Futures Trading Commission, New York, NY (January 1989 – May 1989)
Summer Associate
The Port Authority of New York and New Jersey, New York, NY (May 1988 – August 1988)
Law Clerk
Wingate & Cullen, Brooklyn, NY (September 1986 – August 1987)

REPORTED DECISIONS
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

BAR ADMISSIONS

New York State – March 27, 1991
United States District Court, Eastern District of New York – July 30, 1991
United States District Court, Southern District of New York – July 30, 1991
District of Columbia – February 27, 1992
United States Supreme Court – June 1, 2004
United States Court of Appeals for the Federal Circuit – June 1, 2004
United States Court of Federal Claims – June 1, 2004
United States Court of Appeals for the Armed Forces – June 1, 2004

Page 2 of 4 

12

John Macaluso
665 FIFTH AVENUE, NEW YORK, NY 10022
(212) 688 – 5151 – Phone
[e-mail] – Email

PRO HAC VICE ADMISSIONS

United District Court for the:
Central District of California;
Northern District of California;
Southern District of California;
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
Southern District of Texas
District of Utah
Virgin Islands District Court

PROFESSIONAL MEMBERSHIPS & AFFILIATIONS

International AntiCounterfeiting Coalition
Co-chair, Internet Task Force
International Trademark Association
Internet Committee, Online Trademark Use Subcommittee
American Bar Association
New York State Bar Association

SEMINARS & SPEAKING ENGAGEMENTS
International Anticounterfeiting Coalition Annual Conference – “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 Annual Conference – Moderator: “Recent Federal
Prosecutions in Trademark Counterfeiting/Internet Cases, the Link Between Counterfeiting and

13

Page 3 of 4

John Macaluso
665 FIFTH AVENUE, NEW YORK, NY 10022
(212) 688 – 5151 – Phone
[e-mail] – Email 

Terrorism and Aspects of Civil Anticounterfeiting Enforcement in New York” - New York, NY, April 30,
2003.
United 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 Annual Conference – Moderator:
Decisions Related to Anticounterfeiting” - Chicago, IL October 15, 1999.

“Legal Survey of

United States Customs and Border Protection – Seminars and Product Identification Training
– JFK Airport, NY; Newark, NJ; Houston, TX; Laredo, TX; Chicago, IL; Detroit, MI; Salt Lake City, UT;
San Diego, CA:
Florida Department of Law Enforcement Annual Conference – Speaker, “Federal and State Civil
and Criminal Trademark and Anticounterfeiting Laws” Key West, FL.
Florida Department of Law Enforcement Annual Conference – Speaker, “Federal and State Civil
and Criminal Trademark and Anticounterfeiting Laws” Tallahassee, FL November 6, 1997.
Western States Investigators Coalition Annual Conference – Speaker, “Protection of Intellectual
property Rights and Enforcement of Civil Trademark Laws” – Las Vegas, NV.
United States Customs and Border Protection – Trademark Enforcement and Product
Identification Training at various ports in the US and Commonwealth Territories.

EDUCATION
St. John’s University School of Law, Jamaica, NY
Juris Doctor, May 1990
Honors / Achievements: Moot Court, Junior Bar
Fordham University College of Business Administration, Bronx, NY
Bachelor of Science, Finance, May 1986
Honors / Achievements: Varsity Letters in Baseball (Div I-A) and Football (Div. III-A); Dean’s List;
Regent’s Scholarship; ILA Local 1814 Scholarship; President – Finance Society

Page 4 of 4 

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

29

30