Ben has been selected as a Benchmark Litigation star and a Southwest Super Lawyer for his commercial and intellectual property litigation results. Ben recently led a team that won a preliminary injunction for Harvard University in a trademark and copyright infringement matter, followed by extensive merits litigation that resulted in judgment as a matter of law in Harvard’s favor. He has recently successfully resolved copyright infringement litigation against Miramax, Roadside Attractions, and others, and secured judgment on the merits in trademark cancellation proceedings before the U.S. Trademark Trial and Appeal Board. Ben led a licensing firm to a multimillion-dollar jury verdict for wrongdoing involving the ALEXANDER GIRARD® brand. Ben also devotes substantial time to literary, media, licensing, motion picture and TV transactions, and has negotiated deals with CBS Television, the BBC, Paramount Pictures, Sony/Columbia Pictures, Hulu Japan, Random House, and many others. Ben also frequently consults on art law matters ranging from handling commissions and placement of major archives to disputes over authenticity, title, and infringement.
Ben is lead counsel for the Conan Doyle Estate Ltd and is a regularly invited nationwide speaker on intellectual property and trial issues. He is a member of the bar in New Mexico and New York, where he was an associate at Dewey Ballantine LLP. He served as a law clerk to the Honorable Paul J. Kelly, Jr. of the U.S. Court of Appeals for the Tenth Circuit. Ben was Editor in Chief of the Notre Dame Law Review, and was also Editor in Chief of his undergraduate student newspaper, the Hillsdale Collegian. In his spare time, Ben enjoys running with his wife and occasionally serving as piano accompanist for their daughters.
Photo: William Clift
Recent work includes Mont St Michel and Shiprock.
Notre Dame Law School, JD magna cum laude 1997
Editor in Chief, Notre Dame Law Review
Hillsdale College, BA summa cum laude 1992
Editor in Chief, Hillsdale Collegian
New Mexico 2001
New York 1998
U.S. Court of Appeals, 10th Circuit
U.S. Court of Appeals, 7th Circuit
U.S. District Court, District of New Mexico
U.S. District Court, Southern District of New York
U.S. District Court, Eastern District of New York
U.S. District Court, Northern District of Illinois
U.S. District Court, District of Maryland
U.S. District Court, District of Colorado
U.S. Supreme Court
Stella Vigil v. Zia Credit Union (filed 2013, tried to jury verdict 2016). Won jury verdict on all counts, including punitive damages and willful violation of the New Mexico Unfair Practices Act.
President and Fellows of Harvard College v. Elmore (D.N.M. 2015). Secured preliminary injunction enforcing museum research contract and university trademarks. A year later won summary judgment awarding liquidated damages for breach of contract, and judgment dismissing all counterclaims.
Tindel v. McGuinness, (N.M. 2015). Ben led a team representing the children of famed painter Margarete Bagshaw in protecting the unique legacy of three generations of Native women painters, including Margarete’s mother Helen Hardin and grandmother Pablita Velarde. Settled favorably after defendant removed as personal representative and court ruled that substantial questions had been raised as to will defendant prepared.
Maximo: Art & Design Research LLC v. Girard Trust, No. D 202 CV 2011-07173 (N.M. 2011) (tried to jury verdict 2013). Ben led a team that secured a $1.8 million jury verdict (before pre- and post-judgment interest and double costs) on behalf of Maximo, the licensing firm that built the international ALEXANDER GIRARD® brand for the family of the famous mid-century designer. After ten years of Maximo's investment and work, the Girard family broke Maximo's contract and dealt unfairly with Maximo. In the ensuing litigation the family asserted numerous counterclaims alleging wrongdoing by Maximo. At trial Ben defeated all counterclaims against Maximo and prevailed on every claim against the Girard family, including securing punitive damages against each defendant. The family filed no appeal.
Harner v. Wong Corp., No. 1:12-cv-00820-JCH-ACT (D.N.M. 2012). Ben defended company accused of copyright infringement over advertising campaign. Secured dismissal before discovery of claims for statutory damages and attorneys’ fees, and discovery secured dismissal of all remaining claims. Recovered full attorneys’ fees for client under Copyright Act.
Glaser v. LeBus, et al., 2012-NMSC-012, 276 P.3d 959 (N.M. Sup. Ct. 2012). Prevailed on behalf of New Mexico Finance Authority in appeal to New Mexico Supreme Court involving public improvement district infrastructure loan.
Hafner v. Lucas, et al., consolidated with Lucas v. Dream-Ezzz Int'l, LLC, et al., No. D-0101-CV-2010-02925 (N.M. 2010). Won key early summary judgment ruling resulting in favorable settlement of corporate control dispute involving company with patented technology.
Turner v. New Century Mortgage Corp., No. 29,319 (N.M. Ct. App., No. 24,598), cert denied, 138 N.M. 328 (2005). Won summary judgment defeating class action before class certification and successfully defended judgment on appeal.
PUBLICATIONS AND PRESENTATIONS
“Copyrights for Characters,” 2014 NM Intellectual Property Law Institute, Dec. 4, 2014
“What I Learned Preparing for Trial with Focus Groups,” Renaissance Symposium VII, Harvard Club of New York City, December 6, 2013 (Litigation Counsel of America).
Referenced in “Doyle Estate Says It’s No Mystery, Sherlock Still Copyrighted,” Law360.com, September 11, 2013
Quoted in “Suit Says Sherlock Belongs to the Ages,“ The New York Times, March 6, 2013
Quoted in “Ex-associate of Girards Awarded $1.8M in Suit,” Albuquerque Journal, July 27, 2013
“Elementary, Said He. Don’t Infringe on Me,” (Letter to the Editor) The New York Times, A22 (February 1, 2011)
“A Person or a Lawyer,” 72 Notre Dame Law Review 1732 (1997)
“Gardening, Rastas, and Rihanna: Another Year in Copyright,” Visual Arts & the Law (12th Annual Conf.), CLE Int’l, August 18-19, 2011, Santa Fe, NM (CLE credit nationwide)
“Copyright: From Basics to Nuances,” Visual Arts & the Law (11th Annual Conf.), CLE Int’l, October 14-15, 2010, Chicago, IL, (CLE credit nationwide)
“Copyright, Google and the Internet,” Santa Fe Writers Conference, June 11-13, 2010
“Where There’s Fair Use There’s HOPE” Copyright in an Age of Copycats,” Visual Arts & the Law (10th Annual Conf.), CLE Int’l, October 1-2, 2009, San Francisco (CLE credit nationwide)
“The Picture, the Thief and the Internet,” Visual Arts & the Law (9th Annual Conf.), CLE Int’l, August 9-10, 2007 (CLE credit nationwide)
“Protecting Art on the Internet and Other Problems,” Visual Arts & the Law (8th Annual Conf.), CLE Int’l, August 10-11, 2006 (CLE credit nationwide)
“Googlarchy: Fair Use and the Digital Library Project,” New Mexico Book Association, Nov. 11, 2005
“Digital Copyright Issues for Art Professionals,” Visual Arts & the Law (7th Annual Conf.), CLE Int’l, August 11-12, 2005 (CLE credit nationwide)
Member, Copyright Society of the USA
Fellow, Litigation Counsel of America
American Bar Association, Section of Intellectual Property; Chair, ABA Subcommittee On Copyright Protection of Useful Articles, 2004–05
First Judicial District Bar Association (President 2006)
President, Board of Directors, Ralph T. Coe Center for the Arts
Volunteer, Interfaith Homeless Shelter