Diserio Martin O'Connor & Castiglioni LLP

Matthew C. Wagner

Partner
Stamford, Connecticut
P: 
(203) 569-1195
F: 
(203) 348-2321

Matthew (Matt) C. Wagner is a partner at DMOC and Chair of the Intellectual Property Department.  Matt serves as lead counsel in intellectual property litigation and the procurement, defense and enforcement of intellectual property rights.  Matt’s primary practice areas are copyright, trademark, patent litigation, trade secrets, unfair competition, domain names and false advertising.  He regularly handles all forms of intellectual property litigation in federal courts throughout the United States (including trials and appeals), licensing and transactional matters.  Matt counsels clients on branding and trademark registration worldwide, including portfolio management and all aspects of trademark prosecution, oppositions and cancellations at the United States Patent and Trademark Office (PTO), its Trademark Trial and Appeal Board (TTAB), and the World Intellectual Property Organization (WIPO).  Matt has also acted as an expert in trademark litigation.

Matt’s expertise spans a broad range of intellectual property disputes, related counseling and litigation, including:

    • e-commerce
    • technology
    • consumer products
    • luxury goods
    • cosmetics
    • publishing
    • advertising
    • food and beverage
    • computer software and hardware
    • cable television, telecommunications and satellite

Prior to joining DMOC, Matt was a partner in charge of litigation at Collen IP, a leading specialized intellectual property law firm in New York (2000-2010).  Matt began his practice in Washington, D.C., where he developed a background in cable television and telecommunications, primarily in the areas of customer premises equipment (CPE) provisioning, utilization and regulation, including navigation devices for cable television systems and other multichannel video programming technologies.

Matt has extensive experience handling trademark matters.  He advises clients on branding strategy, and the procurement, enforcement and defense of trademarks, including trademark applications, registrations, portfolio management, and oppositions and cancellations before the Patent and Trademark Office, and its Trademark Trial and Appeal Board. On behalf of brand owners, Matt regularly pursues trademark infringement claims.  Matt has broad experience securing temporary restraining orders and preliminary and permanent injunctions (including ex parte relief) for seizure and impoundment of a wide array of different types of counterfeit and grey market goods.  As an expert, Matt has provided formal opinions in litigation on trademark damages, jury instructions and verdict forms.

As lead counsel in patent infringement cases, Matt has considerable experience with diverse technology and subject matter, including eyewear, electronic transaction processing and pre-paid gift card technology, industrial lasers, cable television and navigation devices, and computer software. He has consulted in cases involving genetic testing protocols. Matt has won summary judgment on numerous occasions, for both plaintiffs and defendants. He has handled a multitude of Markman claim construction proceedings. 

Matt enforces copyright claims across all forms of media, including print and on the internet, and to protect against unlawful importation. For example, Matt secured summary judgment against an importer of grey market watches, for infringement of the watch maker’s copyrighted designs. Under the Digital Millennium Copyright Act (DMCA), Matt obtains immediate shut down of infringing websites.

Matt is very active in e-commerce and regularly investigates and enforces trademark and copyright claims against infringers on the internet. He has recovered valuable domain names and other intellectual property for clients, and prevailed in cybersquatting cases. Matt counsels clients on website privacy policies, terms and conditions, licensing and interactive services, and advertising and marketing.

Matt also represents companies in the enforcement of non-compete, restrictive covenants, and fiduciary duties against former employees for misappropriation of trade secrets, and interference with business relationships. Matt has obtained injunctions against former employees prohibiting them from using misappropriated information and trade secrets in a competing business to the detriment of their former employers. 

Matt regularly takes and defends appeals. From briefing to oral argument, he has handled appeals involving trademark, patent, copyright, unfair competition, and related matters. Among other accomplishments, Matt won a full reversal before the Seventh Circuit of all counts of conviction in a white collar criminal case concerning conspiracy and fraud.

Matt also counsels clients on transactional and corporate matters relating to intellectual property, including licensing, strategic alliances, joint ventures, reseller and OEM relationships, technology development, privacy and data security, e-commerce and information technology, business entities and corporate organizations, stock and asset transactions, venture capital, trade secrets, consulting and employment contracts, due diligence, acquisitions, and portfolio development.

Matt represents a wide range of clients, including independent inventors, entrepreneurs, emerging businesses, middle market and mature companies, and global enterprises. His depth of experience and years of practice enable Matt to provide legal representation to some of the world’s leading companies and best known brands. 

Lectures, Moot Court and Publications:

Matt is a frequent lecturer of accredited continuing legal education programs in intellectual property, such as at Pace University, Pace Law School, Center for Continuing Legal Education, where Matt is also active each year as a Judge in the Moot Court Trial Competition, and for the New York City Bar Association Center for CLE.

Recent lectures include: Copyright in Computer APIs—Does Oracle v. Google Presage a Bleak Future?, AIPLA Annual Meeting, October 25, 2013; Copyrights: A Primer & Guide to Practice & Procedures -Enforcement & Licensing Strategies Online, Offline, & in Social Media (Bridge the Gap CLE) (May 2013); Protection, Enforcement, Licensing and Exploitation, with Preservation of Evidence (March 2012); Online Reputation Management (March 2011); Social Networking (December 2010); Trademark, Copyright, Cybersquatting, Website and Domain Disputes, Legal Issues in Online Social Networks and Virtual Worlds (September 2010); Trademark, Copyright, Cybersquatting and Conducting Business on the Internet (May 2010); Trademarks, Trade Secrets, Non-Compete and Non-Disclosure Agreements, False Advertising and Patents (July 2008); Intellectual Property Basics and Trends (Bridge the Gap CLE) (October 2007); Counterfeit Seizures and Trademark Enforcement Litigation (January 2007); Counterfeit Goods and the Internet (October 2004); Infringement and the Internet: Jurisdictional Issues, Cyber Piracy, Digital Millennium Copyright Act, and Trademark Infringement (January 2003). Matt has also lectured for the Westchester County Bar Association, including a seminar entitled The Corporate and Intellectual Property Perspective on Agreements Relating to Employment (2006).

Publications include:

Lead Editor and Contributing Author, “Application Programming Interfaces (“APIs”)- A Primer and Discussion of Oracle America v. Google,” American Intellectual Property Law Association (AIPLA), August 30, 2013.

“Copyright Infringement and Remedies,” NEW Chapter 231E, Business Organizations with Tax Planning, Lexis-Nexis, 2002, which becomes a part of revision to 16 volume treatise first published in 1963.

Co-author, Virtual Worlds, 34 New Matter 1, 27-34 (2009).

Co-author, Virtual Worlds Current and Impending IP Issues, 15 The Intellectual Property Strategist 11, 1-2, 6 (Aug. 2009).

Contributory Liability Possible for ISP’s Failure to Stop Future Acts of Copyright Infringementwww.dmoc.com, June 17, 2011

Co-Author, White Paper in Support of Resolutions Supporting Proposed Legislation To Amend Lanham Act Remedies Sections Relating To Monetary Awards For Actual Damages And Accountings Of Infringer’s Unjust Enrichment Profits, AIPLA, 2012

Professional Associations:

American Intellectual Property Law Association

     Copyright Law Committee (April 2012 – present)

          Chair (October 2015 - present)

          Vice Chair (October 2013 - October 2015)

          Chair of the Legislative and Regulatory Affairs Sub-committee (October 2012 - October 2013)

     Trademark Law Committee (April 2012 - present)

Advertising Club of Westchester (Board of Directors, 2009 to 2015)

American Bar Association

New York State Bar Association

International Intellectual Property Society

 

Elected Positions:

Town Plan & Zoning Commission, Fairfield, CT, Commissioner (2009 – present)

Chairman (2013 – present)

 

Appointed Positions:

Greater Bridgeport Regional Council (GBRC) (2010-2013), Agency Member and Representative for Town of Fairfield, CT

Vice Chairman 2013

Secretary 2012