Ronald S. Bienstock - Partner
Chair: Entertainment & Media
Chair: Intellectual Property
Biography
Ronald S. Bienstock, attorney and musician, joined Scarinci Hollenbeck after running his successful boutique entertainment, litigation and intellectual property law firm, Bienstock & Michael, LLC for 30 years.
Mr. Bienstock is a full-service corporate, entertainment, and intellectual property practitioner, he represents both businesses and individuals. He handles all aspects of complex intellectual property and entertainment transactions including drafting, structuring, and negotiating contracts and licenses for a variety of high-profile clients, many of whom are noted musicians, recording artists, producers and well-known corporations. Recognized nationally as one of the most influential lawyers in the music business, among his many landmark trademark wins was an unprecedented victory against Fender Musical Instruments Corporation. Representing 17 guitar manufacturers in the trademark opposition proceeding against Fender, Ron successfully argued that Fender should not be allowed trademark registrations to their most well-known guitar and bass body shapes.
Ron was editor-in-chief and publisher of International Musician & Recording World Magazine and General Counsel to Hoshino, U.S.A. (manufacturer of Ibanez Guitars and Ibanez Electronics, and Tama drums). A recording and performing musician for over 40 years, Ron’s latest project is with ex-Renaissance guitarist, Ryche Chlanda. Ryche Chlanda and Flying Dreams latest LP is available through TransGlobal/Sony/The Orchard.
Representative Matters
- (Trademark Trial and Appeal Board, USPTO) Represented numerous guitar manufacturers in one of the largest United States trademark oppositions to applicant’s registration for product configuration trademarks in three guitar body shapes. Successfully opposed Applicant’s registrations by proving that the body shapes were not distinctive and had become generic. No appeal was made to this precedential TTAB decision.
- (United States District Court, Southern District of New York) Represented client in consolidated cases over federal trademark infringement. Successfully had opponent’s declaratory judgment case transferred from California to New York on grounds that opponent made an improper
anticipatory filing before our client filed a federal trademark infringement lawsuit. During discovery, negotiated a substantial favorable settlement for client. - (United States District Court, District of New Jersey) Represented musical instrument manufacturer in a patent and trademark infringement lawsuit against audio equipment manufacturer. Obtained favorable settlement for Plaintiffs.
- (United States District Court, Central District of California) Represented musical instrument manufacturer against audio accessory manufacturer in federal and common law trademark infringement suit. Obtained favorable settlement for client after start of trial.
- (United States District Court, Western District of North Carolina) Represented Defendants in trademark ownership dispute for marks federally owned by Defendants and passed down to Plaintiff by testamentary instrument. Obtained dismissal for lack of personal jurisdiction, improper venue and insufficient service of process. Decision was not appealed.
- (NJ Superior Court) Represented founding band member and shareholder in a precedential suit against other band members and the corporate entity for breach of shareholder agreement and for failure to distribute profits. Obtained both money damages and attorney’s fees.
- (United States District Court, Middle District of Florida) Represented a US musical instrument distribution company in a precedential lawsuit against a foreign musical instrument manufacturer for breach of distribution contract. Successfully defeated a motion to dismiss for lack of jurisdiction and negotiated favorable settlement for client.
- (United States District Court, Central District of California) Successfully defended toy manufacturer in product configuration trademark infringement lawsuit by prominent doll manufacturer.
- (United States District Court, Eastern District of New York) Successfully obtained dismissal for clients – studio, producer and engineer – in landmark music sampling litigation.
- (United States District Court, Central District of California) Obtained favorable post mediation settlement for plaintiff in suit over unauthorized use of music instrument manufacturer’s federally registered trademarks on clothing.
- (United States District Court, Southern District of New York) Successfully defended clients sued by giant entertainment conglomerate and achieved favorable settlement from Plaintiffs for copyright infringement.
- (Trademark Trail and Appeal Board, USPTO) Successfully fought in the Trademark Trials and Appeals Board to recover and secure federal trademark registration for the name for one of the founding rock bands from the 1950’s.
- (United States District Court, Northern District of New York)Successfully defended foreign custom guitar parts builder in trademark litigation against large guitar manufacturer.
Presentations
| Title | Date | |
|---|---|---|
| Myth v. Reality: IP for the Non-IP Practice at the New Jersey Law Center, New Brunswick Presented by NJICLE, co-sponsored by the Entertainment Arts and Sports Law Section | July 31, 2018 |
Media
| Title | Publisher | Date |
|---|---|---|
| Gibson Declares War | MusicIncMag.com | July 2019 |
| Is the ES-335 trademark fight Gibson’s biggest legal battle yet? Guitar.com July 10, 2019 | Guitar.com | July 10, 2019 |
Articles
Key Takeaways from Led Zeppelin Copyright Decision
March 17, 2020
Taylor Swift Can’t Shake Copyright Suit Over Song Lyrics
January 3, 2020
Suit Against Model Gigi Hadid Pits Right of Publicity Against Copyright Protection
February 26, 2019
How the Music Modernization Act Will Reshape US Copyright Law
September 28, 2018
Music Industry Investors – Making Sense of Your Options
November 2, 2017
Does “Made in USA” Really Mean Made in the USA?
September 14, 2016
Major Sony Music Copyright Infringement Case Re-opened
August 16, 2016
BB King Lawsuit the Latest in Photo Copyright Infringement Cases
August 2, 2016
You'll Need Permits for that Pyrotechnic Guitar Performance
July 22, 2016
Is the Trans-Pacific Partnership Good For Guitar-Makers?
July 21, 2016
Musicians Blurring the Lines Between Trademark and Copyright Protection
May 26, 2016
Which Countries Earned Failing Grades in IP Protection?
May 23, 2016
Jane Getter Premonition’s “On” Profiled by Prog Magazine
April 7, 2016
Notable Facts
Accolades
Ron has appeared in numerous newspapers, magazines, and online publications across the country, including the ABA Journal, Arizona Republic, California Chronicle, SmartMoney, Forbes, Bergen Record, Yahoo! Finance, Entrepreneur.com, Res Ispa Magazine, Music and Sound Retailer, and New Jersey Savvy Living.
In 1991, Ron was voted one of the top 100 “Most Influential People in The Music Business” by BAM Magazine and in 2016 was voted one of the “Most Influential People” by 201 Magazine. Ron is one of the few attorney voting members for the Grammys (NARAS).
Award Methodology
Written Work
Ron has been published in the New York Law Journal, on musicplayer.com, and NYSBA’s Entertainment, Arts, and Sports Law Journal. He has written a monthly column for Guitar Magazine and GetSigned.com and has also written guest editorials for Musical Merchandise Review (MMR) Magazine. Interviews, editorials, and other articles featuring Ron appeared in NJ Biz, Music Inc. Magazine, Performer Magazine, MusicianCoaching.com, Premier Guitar Magazine, Playback Magazine, MusicRadar.com, and The Morning Call.
Award Methodology
Teaching/Lecturing
Ron teaches Entertainment Law as an adjunct professor at New York University and is a frequent guest lecturer for various graduate and undergraduate schools at NYU. Ron has also been a music business commentator for CNN, NPR, Air America Radio, WBAI, Barely Legal Radio, Tech TV and has been a guest lecturer, instructor and panel moderator for BMI, ASCAP, CMJ, NEMO, SXSW, NAMM, PMA, RPMDA, the New Jersey Videographers Association, the Florida Music Conference, Miami Music Conference, Atlantic Records’ A&R University, the On-Line Music Conference, the New York State Bar Association, the New Jersey State Bar Association, the Alaska State Bar Association, Benjamin Cardozo School of Law, St. John’s School of Law, Rutgers School of Law, Seton Hall Law School, Ithaca College, William Paterson University, and many other organizations and universities. Ron has also taught CLE classes for NJ Bar Association as well as for Lawline.
Music
As a performing and recording musician, Ron has appeared with various major recording artists. Ron is co-founder of “The Suits,” whose LPs on Viceroy Records secured them numerous national tours and TV appearances, including Late Night with Conan O’Brien. The Suits were also were the house band for a popular show on CNBC, and over the last twenty years, have played on bills with the Doobie Brothers, Spin Doctors, Blues Traveler, Billy Joel, Blue Oyster Cult, Jim Messina, Nils Lofgren, Taj Mahal, Curtis Mayfield, Gov’t Mule, Ziggy Marley, The Doobie Brothers, Rory Gallagher, Hot Tuna, Foreigner, Leslie West, Robben Ford, Eric Burdon and the Animals, among many others.
Ron also performs and records with “Blue East” and “QT Jazz Collective” (Transglobal Records). One of his latest projects is with Ryche Chlanda & Flying Dreams (Transglobal Records). Their new LP is scheduled to be released by the Orchard in May 2017.
Recent Programs
| Program | Location | Date |
|---|---|---|
| Product Configuration Trademarks; Copyright, Artists and Music Publishing | NAMM Summer Conference | 2016 |
| Intellectual Property Protection and Enforcement | New Jersey State Bar Association | November 16, 2016 |
| Intellectual Property for the General Practitioner | Institute for Continuing Legal Education (“ICLE”) | December 8, 2016 |
| IP Roundtable: Copyright, Artists and Music Publishing | NAMM Summer Conference | 2016 |
| IP Roundtable: Product Configuration Trademark | NAMM Summer Conference | 2016 |
| IP Roundtable: Lawsuit Guitars – Facts vs Myth | NAMM Winter Conference | 2017 |
| IP Roundtable: Music Publishing 101 | NAMM Winter Conference | 2017 |
| IP Roundtable: Mediating IP Disputes | NAMM Winter Conference | 2017 |
| How to Not Get Sued in the Music Business | NAMM Winter Conference | 2017 |
| Music Industry / Income Streams | NYU | January 2017 |
| Ethics for the Entertainment Law Practitioner | Lawline | March 2017 |
| Intellectual Property Protection and Enforcement | NJSBA Annual Meeting | May 2017 |
| Avoiding Legal Pitfalls in Indie Filmmaking | NJSBA Entertainment, Arts and Sports Law Section | March 2018 |
| Myth v. Reality: IP for the Non-IP Practice | Presented by NJICLE, co-sponsored by the Entertainment Arts and Sports Law Section | July 2018 |
Clients
News & Events
Recent Articles
- Member, International Law Journal
- National Association of Recording Arts and Sciences
(Voting Member) - New York State Bar Association
- American Bar Association
- New Jersey State Bar Association
- Washington State Bar Association
- New York
- New Jersey
- U.S. District Court of New Jersey
- Northern Federal District Court of New York
- Southern Federal District Court of New York
- Eastern Federal District of New York
- Washington (inactive)
- California Western School of Law, J.D.
- Hobart College, B.A.
- Also attended Cambridge university (Graduate Program)