Béatrice Martinet’s practice focuses primarily on intellectual property litigation, arbitration and transactional work for clients in a wide range of industries, including technology, software, publishing, pharmaceutical, entertainment, cosmetics, fashion, and the food and beverage sector.
Ms. Martinet manages major trademark portfolios for entities of all sizes, from startups to Fortune 500 companies, and represents clients before the Trademark Trials and Appeals Board, and the United States Patent and Trademark Office. In addition, she drafts and negotiates trademark, copyright and e-commerce assignments in the entertainment, cosmetics, and food and beverage industries. She advises U.S. and European companies on gray market strategies and brand enforcement generally, and specifically develops tailored enforcement plans for clients, filing EU and US customs applications and assisting government agencies in the enforcement of client trademarks based on those applications.
Ms. Martinet has particular expertise in assisting trademark owners and online platforms in connection with e-commerce, Internet intermediary liability issues, privacy issues, and related intellectual property and information technology matters.
Ms. Martinet graduated with honors from the University of Paris II (France) and Libera Università Degli Studi Sociali (Rome, Italy) and continues to collaborate with Stanford University as a Transatlantic Technology Law Forum (TTLF) Fellow. Her TTLF thesis, “Internet Intermediaries’ Liability for Copyright and Trademark Infringement: Reconciling the US and EU approaches” is posted at the Stanford Law School site.
Prior to joining Sideman & Bancroft, Ms. Martinet practiced for ten years in France, notably in the Paris intellectual property departments of two large international law firms, Salans (now Dentons) and Bird & Bird.
Ms. Martinet’s native languages are French and Italian; she is fluent in English, and conversant in Spanish as well.
Intellectual Property Counseling
- Advised various ISPs, social media and other Internet intermediaries with liability issues (copyright and trademark infringement, defamation, privacy, etc.) relating to third party content in Europe and in the US
- Filed several trademarks in France, Europe (CTM) and the US for different start-ups and larger companies in the tech and media industry, and assisted with the enforcement of these trademarks
- Advised a major US-based company in the sportswear industry in relation to the sale of infringing products on major French and US-based online auction websites
- Advised an Italian telecom company in relation to their planned advertising campaign (false advertising and privacy)
Intellectual Property Enforcement
- Advised several US- and EU-based companies on the enforcement of their rights at the borders. Set up various IP infringement and gray market cross-border strategies, and filed various domestic and EU-wide requests for intervention with French customs
- Assisted a US-based company in the catering industry with a DMCA claim; obtained a TRO and favorable settlement
- Represented a large French company in the cosmetic industry against a large US-based online auction website before the Paris Court regarding the sale of infringing products on the website
- Represented a US pharmaceutical company and its French subsidiary before the International Chamber of Commerce and obtained a favorable settlement in a patent infringement matter involving the interpretation of a patent licensing agreement
- Represented a US-based company in the computer technology industry before several courts in France and obtained favorable judgments in various copyright, design and trademark infringement matters
- Represented a French haute couture company and obtained several favorable judgments relating to the infringement of their copyrights, trademarks and designs
- Obtained several favorable judgments for a well-known Italian designer in relation to the infringement of his designs
- Obtained a favorable judgment for a well-known Italian soccer player against a major French newspaper in a defamation matter
Ms. Martinet is an active member of the intellectual property community and is a frequent speaker at IP-related conferences. She is a member of the International Trademark Association (INTA), the Intellectual Property section of the American Bar Association, and the San Francisco Intellectual Property Law Association. Ms. Martinet is currently Trademark Chair on the 2018-2019 Advisory Board of the San Francisco Intellectual Property Law Association.
Admitted to the Paris Bar in 2003, and to the California State Bar in 2013.
Listed in Northern California Rising Stars: 2018
- "Expert Interview Q&A: IP expert Béatrice Martinet on Louboutin’s red sole trademark issues," Westlaw Journal Intellectual Property, 2018
- Contributor, “ICT Policy Review: National E-Commerce Strategy For Egypt” UN Conference on Trade and Development, 2017
- "What You Need to Know About the New EU Trademark Package," The Recorder, 2016
- Co-author, "Controlling the Grey Market in the U.S. and E.U.," InsideCounsel, 2015
- Co-author, "Liability of E-Commerce Platforms for Copyright and Trademark Infringement," Landslide, ABA, 2015
- "Fox Broadcasting v. Dish Network: California Court dismiss copyright claim against time and place-shifting Dish’s streaming service," Transatlantic Antitrust and IPR Developments, 2015
- "Bending Law to Control Yoga," The San Francisco Daily Journal, 2015
- "UK Court orders 6 main UK ISPs to take down infringing websites based on trademark infringement"; French Court holds ISP liable for not promptly taking down infringing content";"French Court issues blocking orders against Pirate Bay," Transatlantic Antitrust and IPR Developments, 2014
- "FOX v. TVEyes: a new US decision widening further the legal doctrine of fair use"; "Amazon is not vicariously liable for copyright infringement based on the conduct of its associate vendors"; CJEU in TU Darmstadt v. Eugen Ulmer: Books’ digitization by public libraries is fine but printing and storing can be restricted," Transatlantic Antitrust and IPR Developments, 2014
- "European Regulation Strengthens IP Protection," Risk Management, 2014
- Contributor, World Intermediary Liability Map Project at The Center for Internet and Society at Stanford Law School, 2014
- "US Supreme Court Rules that Aero's Online Television Streaming Service IS Illegal"; "Meltwater: CJEU Confirms that Online Browsing Does Not Require a License," Transatlantic Antitrust and IPR Developments, 2014
- "ISP liability in France," Stanford’s Center for Internet and Society: The World Intermediary Liability Map Project
- "U.S. District Court declines to hold CafePress an online service provider entitled to protection under the DMCA safe harbor"; "ECJ confirms validity of blocking orders to be enforced by ISP," Transatlantic Antitrust and IPR Developments, 2014
- "ECJ states that linking to freely available content is not copyright infringement" ; "New EU Regulation offers better protection to IPR holders against the importation of infringing goods into EU territory" ; "Lush obtains a judicial victory against Amazon in keyword advertising matter, " Transatlantic Antitrust and IPR Developments, 2014