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Advanced Copyright Law 2021: Current Issues


Speaker(s): Joshua Graubart, Joshua L. Simmons, Judith Finell, Lateef Mtima, Linda Steinman, Richard Dannay, Yolanda King
Recorded on: Mar. 11, 2021
PLI Program #: 303920

Joshua Simmons is a well-established and nationally recognized appellate and trial court litigator, who has been lauded as an “exceptional,” “forceful,” and “creative” “brainiac” (Chambers), “Top Attorney” (Law360), and “big-picture thought leader” (WTR). This “Intellectual Property Superhero” (CLS) focuses on copyright, patent, right of publicity, trademark, trade secret, and unfair competition litigations—particularly complex cases and those of first impression—along with contract, licensing, and domain name disputes. As a “Power Lawyer” (THR) and “Trailblazer” (NLJ), he is sought after for his IP counseling; strategic portfolio management; as well as regulatory and legislative policy advice. His eye-catching litigations involve a range of media (film, news, publishing, social media, sports, television, theatre, and video games) and technologies (artificial intelligence, computer software and services, circuitry and semiconductors, Internet-based systems, medical devices, and telecommunications).

Josh routinely is recognized for his high-profile appellate, IP, media, entertainment, and technology representations, including by Chambers & Partners, World Trademark Review, Legal 500, and Benchmark Litigation. Numerous publications also have honored Josh for his ground-breaking achievements, including The Hollywood Reporter, National Law Journal, Columbia Law News, American Lawyer, Managing Intellectual Property, and Law360.

In addition to his full-time litigation practice, Josh hosts PLI’s IP Discussions with Joshua Simmons, has chaired its Fundamentals of Copyright Law in the Data Era, and has spoken at both that program and PLI’s Advanced Copyright Law series. He also is a frequent speaker outside of PLI and the author of numerous articles on emerging IP trends. He is an active member of the IP bar, serving as an officer of the ABA Intellectual Property Law Section and member of it governing Council; chairing various copyright, trademark, Internet, social media, and software committees and task forces; and liaising to other organizations on copyright and right of publicity issues. And he is an advisor to Columbia Law School’s Kernochan Center for Law, Media and the Arts.

He received a J.D. from Columbia Law School, where he was awarded the Carroll G. Harper Prize for achievement in intellectual property, and a B.A. from Brandeis University. 


Joshua Graubart is an experienced counselor and advocate whose practice focuses on the entertainment, media, and technology industries.

Josh advises a wide range of clients in connection with copyright, trademark, entertainment and advertising matters at home and abroad. He has represented a German advertiser in securing the services of a top American recording artist in promoting the client’s consumer products in Europe, a European online music service in connection with its entry in the the U.S. market, and a Fortune 500 biotechnology company in negotiating new advertising and marketing agreements with its media and creative vendors.

In 2012, he represented the buyer of a multinational cosmetics concern in connection with its acquisition, and in 2008 and 2009, he led the lender’s legal team in two multi-billion dollar loan transactions in evaluating and protecting the borrowers’ intellectual property collateral, and oversaw the recording of the lender’s security interests more than twenty countries, including some where such recording had never before been attempted. He regularly advises independent artists, authors, and creative entrepreneurs in connection with protecting and exploiting, and licensing intellectual property, including copyrights, trademarks, patents, and other sources of royalties and residuals.

In addition, Josh is an accomplished litigator who has handled numerous contract and intellectual property disputes on behalf of major international cosmetics makers, industrial products manufacturers, technology companies, venture capital investors, and independent writers, artists, publishers and record labels. In the past few years, he has successfully represented three classes of copyright holders in federal court, achieving settlements totaling almost US$10 million. In 2007 and 2008, he represented a South American energy consortium in international arbitration concerning cross-border natural gas sales and transport agreements valued at more than US$100 million. He regularly appears on behalf of corporate and individual clients in litigation in state and federal court in New York and New Jersey and in arbitration and mediation proceedings concerning intellectual property, rights of privacy and publicity, and general commercial disputes.

Josh has chaired the Information Technology Law Committee at the New York City Bar Association, and served on the City Bar’s Intellectual Property Council. He is currently a member of the City Bar’s Legal History Committee, and is active in the US chapter of the Association Littéraire et Artistique Internationale (ALAI), the leading international organization on cross-border copyright law, and the New York chapter of the Copyright Society of the USA. He has also published articles on intellectual property licensing, the effect of corporate mergers on intellectual property licenses, and the nature and practice of music copyrights.

Prior to founding the Law Offices of Joshua Graubart, P.C., Josh practiced as a litigator with a number of international law firms, including Sonnenschein Nash & Rosenthal (now Dentons) and Thacher Proffitt & Wood. While still a law student, he also clerked in the Tokyo offices of Baker & McKenzie and the Kuroda Law and Patent Office.

Josh received his J.D. from Duke University School of Law and his LL.M. (with merit) in intellectual property law from the University of London. He also holds degrees in history from Duke University and Dartmouth College.

Josh is admitted to practice law in New York, New Jersey and California, in the federal district courts for the Southern and Eastern Districts of New York, and the District of New Jersey, and in the Ninth Circuit Court of Appeals. He is conversant in Japanese.

 


Lateef Mtima is a Professor of Law at the Howard University School of Law. After graduating with honors from Amherst College, Professor Mtima received his J.D. degree from Harvard Law School, where he was the co-founder and later editor-in-chief of the Harvard BlackLetter Journal (today the Harvard Journal on Racial and Ethnic Justice). He is admitted to the New York and Pennsylvania bars and has practiced intellectual property, bankruptcy, and commercial law, including a decade in private practice with the former international law firm of Coudert Brothers. Professor Mtima has served as a member of the Advisory Council for the United States Court of Federal Claims, President of the Giles S. Rich Inn of Court for the United States Court of Appeals for the Federal Circuit, a member of the founding Editorial Board for the American Bar Association intellectual property periodical Landslide, a member of the BNA Patent, Trademark & Copyright Journal Advisory Board and the ALI Practical Lawyer Editorial Board, and a  Distinguished Libra Visiting Scholar in Residence at the University of Maine School of Law. Professor Mtima is the Founder and Director of the Institute for Intellectual Property and Social Justice, an accredited NGO member of the World Intellectual Property Organization (WIPO), and which advocates for core principles of socially equitable access, inclusion, and empowerment in the development and implementation of the IP ecosystem.

Professor Mtima is the editor/contributing author of Intellectual Property, Social Justice, and Entrepreneurship: From Swords to Ploughshares (Edward Elgar 2015) and a co-author of Transnational Intellectual Property Law (West Academic 2016). Some of his other publications include The Idea Exclusions in Intellectual Property Law, 28 Texas Intell. Prop. L. J. 343 (2020); IP Social Justice Theory: Access, Inclusion, and Empowerment, 55 Gonzaga L. Rev. 401 (2019/20); Digital Tools and Copyright Clay: Restoring the Artist/Audience Symbiosis, 38 Whittier Law L. Rev. 104 (2018); Copyright and Social Justice in the Digital Information Society: “Three Steps” Toward Intellectual Property Social Justice, 53 Hous. L. Rev. 459 (2015); A Social Justice Perspective on IP, Innovation, Entrepreneurship, Innovation and Entrepreneurship, in Entrepreneurship and Innovation in Evolving Economies: The Role of Law (Edward Elgar 2012); What’s Mine is Mine but What’s Yours is Ours: IP Imperialism, the Right of Publicity, and Intellectual Property Social Justice in the Digital Information Age, 15 S.M.U. Sci. &Tech. L. Rev. 323 (2012); Fulfilling the Copyright Social Justice Promise: Digitizing Textual Information, 55 N.Y.L. Sch. L. Rev. 77 (2010) (quoted in The Authors Guild v. Google Inc., 770 F. Supp. 2d 666, 679, n. 15, (S.D.N.Y. 2011); Copyright Social Utility and Social Justice Interdependence: A Paradigm for Intellectual Property Empowerment and Digital Entrepreneurship, 112 W. Va. L. Rev. 98 (2009); Whom the Gods Would Destroy; Why Congress Prioritized Copyright Protection Over Internet Free Speech and Privacy in Passing the Digital Millennium Copyright Act, 61 Rutgers L. Rev. 627 (2009); So Dark the CON(TU) of Man: The Quest for a Software Derivative Work Right in Section 117,  70 U. Pitt. L. Rev. 1 (2008); and “Tasini and Its Progeny: The New Exclusive Right or Fair Use on the Electronic Publishing Frontier?” 14 Ford. Intell. Prop., Media & Ent. L. J. 369 (2004) (quoted in Greenberg v. National Geographic Society, 533 F.3d 1244, 1264, 1266 (11th Cir. 2008) (dissenting opinion)).

 


Linda Steinman has more than 30 years of litigation and counseling experience in media and intellectual property law, and First Amendment law.  She represents a wide range of clients in media and the arts, including book publishers, television production companies, networks and new media, including in various different types of copyright matters.

Sample Copyright Experience In Complex “Transformative Use” Cases   

Authors Guild v. Google, Inc.
Submitted amicus curiae briefs on behalf of The Copyright Alliance in the Second Circuit and in support of Petition for Certiorari, addressing proper transformative use analysis for copyright infringement case based on mass digitization of books. 

Fox v. TV Eyes
Submitted amicus curiae briefs in Second Circuit and district court on behalf of several television networks in copyright infringement case against aggregator of television clips.

Associated Press v. Meltwater U.S. Holdings, Inc., et al.
Represented The Associated Press in a copyright infringement action against Meltwater News, leading subscription-based electronic media monitoring service that provides daily excerpts from news articles to its subscribers. In  precedent setting decision, Southern District of New York granted AP’s motion for summary judgment on its copyright claim and rejected Meltwater’s fair use defense, which was premised on its argument that it acted as a search engine. 

Association of American University Presses
Regular outside counsel to trade association for university and scholarly presses, including submission of amicus briefs in Cambridge University Press v. Patton (case against Georgia State University involving e-reserves) and as class member in Google Books litigation.

Other clients: Counselling advice to Getty Images, the Newspaper Association of America, and The New York Times on complex copyright issues. 

Named one of the “Best Lawyers in America” in Copyright Law by Best Lawyers, 2017; named as one of “America’s Leading Lawyers for Business” in First Amendment Litigation by Chambers USA, 2015-18.


Richard Dannay is counsel with Cowan, Liebowitz & Latman, P.C., in New York City. He practices in the areas of copyright, publishing and trademark law, and libel, privacy, and publicity rights.

Past president of The Copyright Society of the U.S.A. and one of its Honorary Trustees. Former chair of the New York City Bar Committee on Copyright and Literary Property.

Presented the 37th Annual Donald C. Brace Memorial Lecture (Nov. 2007): “Copyright Injunctions and Fair Use: Enter eBay -- Four-Factor Fatigue or Four-Factor Freedom?” (Copyright Society of U.S.A.); published at 55 Copyright Society Journal 449 (2008).

Author, “Factorless Fair Use? Was Melville Nimmer Right?” published at 60 Copyright Society Journal 127 (2013) in special issue honoring 50th anniversary of Nimmer on Copyright treatise.

Lead counsel for the prevailing parties in the following reported cases:

  • Bill Graham Archives v. Dorling Kindersley Limited, 448 F.3d 605 (2d Cir. 2006) (affirming summary judgment for defendant publisher that “thumbnail” reproductions of seven concert posters in Grateful Dead biography are transformative fair use).
  • Penguin Group (USA) Inc. v. Steinbeck, 537 F.3d 193 (2d Cir. 2008), cert. denied, 129 S. Ct. 2383 (2009) (John Steinbeck’s son’s Sec. 304(d) termination notice invalidated; Penguin’s agreement for Steinbeck works, including The Grapes of Wrath and Of Mice and Men, held valid, not “agreement to the contrary”).
  • Silverstein v. Penguin Putnam Inc., 368 F.3d 77 (2d Cir. 2004) and 522 F. Supp. 2d 579 (S.D.N.Y. 2007) (compilation copyright for all of Dorothy Parker’s previously uncollected poems unenforceable because no creativity in “selection” of “all”; significant Second Circuit pre-eBay ruling on permanent injunctions).
  • Williams v. Crichton, 84 F.3d 581 (2d Cir. 1996) (successful defense of copyright infringement suit against Jurassic Park novel and movie).
  • Girl Scouts of the U.S.A. and Boy Scouts of America v. Bantam Doubleday Dell Publishing Group, Inc., 996 F.2d 1477 (2d Cir. 1993), aff'g 808 F. Supp. 1112 (S.D.N.Y. 1992) (successful defense of trademark infringement suit against “Pee Wee Scouts” children’s series, involving First Amendment issues).
  • Arica Institute, Inc. v. Palmer and Harper & Row Publishers, 970 F.2d 1067 (2d Cir. 1992) (successful "fact estoppel" and fair use defenses).
  • Adsani v. Miller, 139 F.3d 67 (2d Cir. 1998) (appellate security bond for “costs” includes potential attorney’s fees under Copyright Act; case of first impression).
  • Penguin Group (USA) Inc. v. American Buddha, 609 F.3d 30 (2d Cir. 2010), 16 N.Y. 3d 295 (2011) (on certified question), 640 F. 3d 497 (2d Cir. 2011) (NY long-arm jurisdiction ruling supporting fight of publishers and authors against online digital piracy).
  • Postlewaite v. McGraw-Hill, Inc., 411 F.3d 63 (2d Cir. 2005) (dismissal of law professor’s breach of contract suit against treatise publisher).
  • Hoch and Marble v. MasterCard International and McCann-Erickson, 284 F. Supp. 2d 1217 (D. Minn. 2003) (successful defense of copyright infringement suit against series of baseball-related “priceless” television commercials).
  • Adsani v. Miller, 1996 WL 194326 and 1996 WL 531858 (S.D.N.Y. 1996) (successful defense of copyright infringement suit against author and publishers of “Princess Sultana” books, including recovery of full attorneys’ fees).

Chair of PLI’s annual Advanced Copyright Law program 1991 – 2019.

Harvard Law School (LL.B., 1964). Harvard College (A.B., magna cum laude, Phi Beta Kappa, 1961).


Yolanda M. King is the Interim Assistant Dean for Student Affairs and an Associate Professor of Law at Northern Illinois University College of Law in DeKalb, Illinois.  She teaches Property and various intellectual property law-related courses, such as Copyright Law, Entertainment Law, Intellectual Property Law, and Trademark Law.  Her scholarly interests include the copyrightability of tattoos, the enforcement of tattoo copyrights, right of publicity protection for celebrities’ tattoos, music licensing, and the intersection of religion and copyright law.

Dean King is Of Counsel at Chicago-based intellectual property law firm Advitam IP, where she advises clients on trademark protection and prosecutes federal trademark applications before the U.S. Patent and Trademark Office.  She graduated from Harvard Law School and Indiana University-Purdue University Indianapolis.


Judith Finell is a musicologist and the president of Judith Finell MusicServices Inc., a music consulting firm in New York founded in 1985. She has testified as an expert witness and consulted in various litigations involving copyright infringement over the past 20 years, including most recently as the lead musicologist for the Marvin Gaye family in their dispute over the song “Blurred Lines” with Pharrell Williams and Robin Thicke. She has also testified in disputes for Michael Jackson, Sony/CBS, Warner-Chappell, the estates of Igor Stravinsky and Bob Marley and before the Copyright Royalty Board in Washington on behalf of the National Music Publishers Assn. in a dispute with the RIAA.

Ms. Finell’s firm regularly advises entertainment company clients on licensing and risk avoidance in copyright matters, including HBO, Sony Pictures, Disney, Grey Advertising, Lionsgate, LucasFilms, CBS, and others. 

Ms. Finell holds an M.A. degree in musicology from the University of California at Berkeley and a B.A. from UCLA in piano performance. She has written numerous articles and a book in the area of contemporary music and copyright infringement and has appeared in trials on Court TV and before the American Intellectual Property Law Association. She is on the board of the Copyright Society of the U.S.A., and has appeared as a guest lecturer at the law schools of UCLA, Columbia, Vanderbilt, George Washington, NYU, and Fordham as well as the Beverly Hills Bar Assn., LA Copyright Society, and the American Independent Music Publishers. She may be reached either by e-mail at judi@jfmusicservices.com or by telephone at (914) 779-8881.