Stefan Naumann leads the intellectual property practice of Hughes Hubbard & Reed in Paris. He is admitted to practice in France and California, and is an independent neutral for the World Intellectual Property Organization (WIPO), particularly for domain names. Stefan acts for well-known entertainment, medical device, advertising, new media, publishing, personal care and manufacturing companies. His patent litigation practice covers additional industries.
In the Paris office, Stefan and his team handle litigation, arbitration, advisory and transactional work with respect to patents, trademarks, copyrights, designs, neighboring rights, image rights, trade dress and data protection. The team's media work includes French media regulations, motion picture production, distribution and merchandising, talent contract negotiation and collective bargaining, anti-piracy and enforcement for a number of studios. Stefan regularly teaches courses on French and European intellectual property litigation at the University of Strasbourg, and, until 2010, at the Swiss Federal Institute of Technology in Zurich (ETHZ). In addition, Stefan is a regular contributor to trade magazines, and he frequently speaks at a number of conferences on French trademark law, exhaustion of rights in the European Union, employee inventions and remuneration, technology transfer contracts and punitive damages in patent litigation. Stefan clerked with the Secretariat of the ICC International Court of Arbitration.
Areas of Concentration
Trademark and Copyright
Anti-Piracy and Customs
Patent litigation
Biotech & Pharmaceuticals
Entertainment
Media
Internet
Data Protection
Professional Activities
Member of the board, French national group of the International Association for the Protection of Intellectual Property (AIPPI)
Member of the board, French Association for the Protection of Industrial Property (AFPPI)
Association of Lawyers for Industrial Property (AAPI)
International Trademark Association (INTA)
President, Harvard Club de France, 2000 – 2002
TechLaw, 2000 – 2011
Arbitrator, World Intellectual Property Organization (WIPO)
Recognitions
Stefan's practice has been repeatedly cited by the European Legal 500 guide, Chambers, IP Stars, IAM Patent 1000, WTR Trademark 1000 and the French Décideurs Juridiques.
Legal 500 comments:
"Head of department Stefan Naumann has been commended for his excellent communication skills and ability to work easily in English"
"The 'excellent' Stefan Naumann leads a strong IP practice…, offering excellent service in patent litigation as well as expertise in French and US copyright and trademark-related matters"
"The responsive, sensitive and knowledgeable Stefan Naumann is a pleasure to work with"
Chambers notes:
"Lauded for his outstanding negotiation and litigation skills, Stefan Naumann… is the go-to lawyer for anti-piracy matters. He is particularly active in the fields of pharmaceuticals, advertising, and motion picture production, distribution and merchandising"
Highlighted Publications
“La réforme du droit d’auteur” on the Copyright in the Digital Single Market EU Directive, editorial, Les Echos, June 2019, Docaufutur, June 2019; Le Monde du Droit, June 2019, EcoRéseau, July 2019, and Presse Editions, July 2019
International Design Protection: A Global Handbook, Country Section France, Globe Law and Business, 2012, 2017
Co-author Comparative Law section, France, Basler Kommentar – Datenschutzgesetz Öffentlichkeitsgesetz, edited by Urs Mauref Lambrou. Basel: Helbing & Lichtenahn, June 2014
"Dénicher et Exploiter les Brevets," Réseaux et Télécoms, July 2007
"Trademark Anti-counterfeiting in Asia and the Pacific Rim," contributing author, country section France, February 2001
"La Brevetabilité des Méthodes Commerciales en Europe: Règles et Risques," La Semaine Juridique Entreprises et Affaires, November 2000
"Les Limites de la Protection des Marques Figuratives," La Semaine Juridique, January 1999
"La Protection Limitée des Marques Figuratives en Droit Français," Les Echos, February 1998 "Forclusion par Tolérance," Lamy Droit Commercial, December 1996
"La Marque Communautaire, un Nouveau Signe Distinctif," Les Echos, March 1996
"Issues in Computer-Assisted Contracting, a Review of Il Contratto Concluso Mediante Computer," High Technology Law Journal, Autumn, 1989
Presentations
Presentation on Copyright in the Digital Single Market EU Directive, joint meeting AIPPI France, APEB, ASPI and CNCPI, Paris, June 2019
Presentation on Copyright in the Digital Single Market EU Directive, AIPPI Trilateral Seminar France-Germany-Poland, Paris, April 2019
Speaker, workshop on Hyperlinks (AIPPI), Cancun, September 2018
Presentation on data privacy case studies, Berkeley Law Compliance Academy, Paris, July 2018
"2018 Compliance Breakfast Series: Cross-Border Data Protection EU-Asia Pacific " Hughes Hubbard & Reed LLP, Paris, April, 2018
“2017 Compliance Breakfast Series: Whistleblowing procedures and Data Protection Regulations,” Hughes Hubbard & Reed LLP, Paris Office, September, 2017
Presentation on Data protection and compliance, Hughes Hubbard & Reed LLP Seminar, Paris, February 2017
Moderator, Workshop on the EU Single Digital Market (AIPPI), Milan, Italy, 2016
Chair, French group of the International Association for the Protection of Intellectual Property (AIPPI), Question 246 on Exceptions and limitations to Copyright Protection for Research and educational Institutions, Rio de Janeiro, Brasil 2015
Moderator, workshop on Copyright Issues raised by Embedding, Framing and Hyperlinking (AIPPI), Toronto, Canada, 2014
Reporter, French group of the International Association for the Protection of Intellectual Property (AIPPI), Question 236 on Relief in Intellectual Property proceedings other than injunctions or damages, 2013
Presentations on Interplay between Designs, Copyrights and Trademarks and on Look-Alikes and Trade Dress Protection, INTA Design Protection Conference, Copenhagen, Denmark, 2012
Presentation on Trademark Issues in Transactions from due diligence to ink, Intellectual Property Owners (IPO) annual meeting, Los Angeles, California, 2011
Joint-reporter, French group of the International Association for the Protection of Intellectual Property (AIPPI), Question 216 A on Exceptions to Copyright Protection and Permitted Uses of Copyrighted Works in the High-tech and Digital Sectors, 2010
Presentation on litigating intellectual property rights in France, TechLaw conference on international sales and sourcing, Dallas, Texas, 2010
Presentation on patent and plant variety protection in French and EU law, TechLaw conference on food & agriculture, Minneapolis, Minnesota, 2009
Presentation on French Hadopi Internet anti-piracy law, TechLaw conference on the reform of the EU electronic communications market, Rome, Italy 2009
Presentation on punitive damages in the United-States, Paris Bar conference on the effectiveness of anti-counterfeiting measures, Paris, France, December 2005
Reporter, French Group of the International Association for the Protection of Intellectual Property, Question 188 on Freedom of Expression and Trademarks Rights, 2005
Presentation on the drafting of know how transfer contracts, European inter-university conferences, 2004-2005
Presentation on employee inventors in France, England and Germany, TechLaw conference, Toronto, Canada, 2004
Assessor, Online Dispute Resolution Competition, Center for Information Technology and Dispute Resolution, University of Massachusetts, 2003
Presentations on trademark rights in France, exhaustion of intellectual property rights in the European Union and defense of renowned trademark holders, 1996, 1999, 2002 (TechLaw)
Teaching Experience
Course on trademark and design litigation in the European Union, University of Strasbourg CEIPI, Strasbourg, 2016 - present
CLE course for European patent attorneys on rules of procedure in patent litigation in France, Institute of Professional Representatives before the European Patent Office ("epi"), Munich and Strasbourg, 2004 – 2016
Course on trademark litigation in France, Swiss Federal Institute of Technology, Zurich, Switzerland, 2000 – 2010
“Lauded for his outstanding negotiation and litigation skills, Stefan Naumann… is the go-to lawyer for anti-piracy matters. He is particularly active in the fields of pharmaceuticals, advertising, and motion picture production, distribution and merchandising” Chambers