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Advanced Copyright Law Annual Review 2012

Speaker(s): Eric J. Schwartz, Gloria C. Phares, Lori E. Lesser, Nancy J. Mertzel, Richard Dannay, Robert J. Bernstein, Stanley Pierre-Louis
Recorded on: Apr. 30, 2012
PLI Program #: 34231

Gloria C. Phares is a partner at Patterson Belknap Webb & Tyler LLP, in the firm's IP practice (transactional and litigation). She practices in all aspects of intellectual property, privacy and issues related to the Internet, computer software development and licensing, database licensing, and publicity rights, providing advice, licensing, and litigation to for-profit companies and not-for-profit institutions, including museums, libraries, and colleges and universities.

Gloria is a trustee and past officer of The Copyright Society of the U.S.A. and a past Chair of its New York Chapter. During 1995-98, she was the Chair of the Committee on Copyright and Literary Property of the Association of the Bar of the City of New York. During 1995-2004, she was a member of the Board of Directors of Volunteer Lawyers for the Arts. She was on the Legal Advisory Boards of the 2005 Documentary Filmmakers' Statement of Best Practices in Fair Use and the 2011 Code of Best Practices in Fair Use for Poetry (both sponsored by American University's Center for Social Media).

She lectures for continuing legal education programs on copyright developments and licensing. She's the author of Chapter 2 (Legal Issues in Scholarly Publishing) in the MLA Style Manual and Guide to Scholarly Publishing (3rd edit. 2008); Assigning Exclusive Copyright Licenses: Conflicting Rulings Over Transfer of Rights Highlight Uncertainty in Corporate Acquisitions (with Stephanie B. Glaser), New York Law Journal (May 12, 2003); Extraterritoriality and Copyright Law, Copyright Law '99 and Beyond, (Glasser LegalWorks Seminars, January 1999); Appropriation Art and Copyright, 1 Encyclopedia of Aesthetics 70 (Oxford University Press, 1998 (soon to be updated); Copyright and the U.S. Border: Obtaining Redress in the United States for Extraterritorial Acts of Infringement, Proceedings of the ABA Section of Intellectual Property Law (Summer Conference, Asheville, N.C. June 27, 1996); and Retroactive Protection of Foreign Copyrights:  What Has Congress Be-GATT?, 7 The Journal of Proprietary Rights 2 (April 1995).

From 1980-87, Gloria was an attorney with the Appellate Section of the Criminal Division of the U.S. Department of Justice. She taught Appellate Advocacy for five years at Fordham University's Law school, and she is a Fellow of the American Academy of Appellate Lawyers.

She is a graduate of The College and The Law School of the University of Chicago.

Eric J. Schwartz is a partner in the Intellectual Property and Technology Practice at the Washington, D.C. office of Mitchell Silberberg & Knupp LLP.  He specializes in copyright law, counseling clients from the motion picture, recording, book publishing, music publishing and business and entertainment software industries, as well as individual authors and creators. He assists with traditional copyright and emerging electronic information and delivery issues, commercial transactions, domestic and international legal and policy matters, litigation strategy and Copyright Office practices.  He is a former Acting General Counsel of the United States Copyright Office and a senior legal and policy advisor to the Register of Copyrights (1988-1994). 

Mr. Schwartz is an Adjunct Professor of Copyright Law at Georgetown University Law Center and American University Washington College of Law, and a former trustee of the Copyright Society of the USA. He is the author of the U.S. Copyright Law Chapter in the Geller & Nimmer Treatise "International Copyright Law and Practice." He has also been featured for his pro bono work on film and music preservation issues. See Washington Post (Aug. 13, 2011, p. 1, Style)

Robert Bernstein

Litigation and intellectual property lawyer for 35 years, specializing in copyright and trademark litigation and counseling. Extensive experience in conducting and managing complex litigation and advising corporate clients in a wide range of industries, including publishing, motion pictures, television, music, advertising, photography, hotels and restaurants, toys and games, software, textiles, cosmetics and perfumes, and diverse manufacturing. Mediator and Member, Panel of Neutrals, International Trademark Association. Recognized leader in the Intellectual Property Law Bar, including a two-year term as President of the Copyright Society of the U.S.A. and a three-year term on the Board of Directors of the American Intellectual Property Law Association. Frequent lecturer before professional associations, corporate law departments, and other CLE providers. Co-author of the New York Law Journal Copyright Law Column for 25 years, encompassing 130 articles on copyright law and litigation.

The Law Office of Robert J. Bernstein   May 2004 to Present, New York, NY

Cowan, Liebowitz & Latman, P.C.   1980 - April 2004, New York, NY
Partner 1982-2004; Associate 1980-82

Fried, Frank, Harris, Shriver & Jacobson 1976-80,  New York, NY
Associate, Litigation Department

Law Clerk to the Honorable Richard P. Matsch  1975-76
United States District Court, District of Colorado

University of Michigan Law School (J.D., cum laude, 1975)
Princeton University (B.A., cum laude, 1970) (with degree in Public and International Affairs from the Woodrow Wilson School)

The Copyright Society of the U.S.A., President, 2000-02; Honorary Trustee, 2002 to Present; Member, Executive Committee, 1988-92, 1994 to Present; Chairman, New York Chapter, 1997-98
American Intellectual Property Law Association, Secretary/Member, Board of Directors, 1990-93; Chairman, Copyright Law Committee, 1988-90
Association of the Bar of the City of New York, Member, Copyright Law Committee (2004-07, 2011-13); and Entertainment Law Committee (2007-11)
International Trademark Association, Member, Panel of Neutrals (2010 - to date), and ADR Committee (2010 - 2011)

Listed in The Best Lawyers in America, 1993 to 2008; New York Super Lawyers, 2006 to present; Martindale Hubbell, Rated AV Preeminent, 1991 to present

Over the past 35 years, my clients have included the Estate of Charlie Parker, General Electric, Hilton International, Columbia Pictures, Warner Bros., Bertelsmann Music Group (BMG), Sony Music Entertainment, Warner Chappell Music, National Federation for the Blind, The Dr. Huey P. Newton Foundation, Starz Encore, HBO, Macmillan Publishing Co., Topps, Playtex, Seagram, Estee Lauder, Clinique, Lin Broadcasting, Cellular One, Pressman Toy Corporation, Kurt S. Adler, Inc., Scanbuy, Inc., Car-Freshner Corp., Grey House Publishing, The Energy Project, songwriters D.L. Byron ("Shadows of the Night"), John Durrill ("Dark Lady") and  Christine Dominguez ("Airplanes"), and JP Morgan Chase (as Trustee for Woolrich Scholarship Fund).

Lead counsel in numerous litigations, including preliminary injunction and pre-trial proceedings, trials and appeals in federal and state courts.  Reported cases include: Niss v. Columbia Pictures Industries, Inc., 57 U.S.P.Q. 2d 1346 (S.D.N.Y. 2000), aff'd per curiam (2d Cir. 2001); Clinique Laboratories, Inc. v. DEP Corporation, 945 F. Supp. 547 (S.D.N.Y. 1996); Kurt S. Adler, Inc. v. World Bazaars, Inc., 897 F. Supp. 92 (S.D.N.Y. 1995); Hilton International Co., Inc. v. Hilton Hotels Corp., 888 F. Supp. 520 (S.D.N.Y. 1995); Levine v. McDonald's Corporation, 735 F. Supp. 92 (S.D.N.Y. 1990); Horgan v. MacMillan, 789 F.2d 157 (2d Cir. 1986); and Warner Bros., Inc. v. Gay Toys, Inc., 598 F. Supp. 424 (S.D.N.Y. 1984).

Stanley Pierre-Louis is Vice President and Associate General Counsel for Intellectual Property and Content Protection at Viacom Inc. He is responsible for developing strategies to protect digital content, managing major intellectual property litigation and leading other IP-related legal initiatives for Viacom and its brands, which include MTV, VH1, Nickelodeon, Comedy Central, Country Music Television, Spike TV, TV Land, LOGO, BET, and Paramount Pictures.

Prior to joining Viacom, Mr. Pierre-Louis served as Co-Chair of the Entertainment and Media Law Group at Kaye Scholer LLP, concentrating on intellectual property counseling and litigation. Mr. Pierre-Louis previously served as Senior Vice President for Legal Affairs at the Recording Industry Association of America, where he led several strategic copyright litigations, including the entertainment industry's litigations against, Napster and Aimster as well as the landmark U.S. Supreme Court case MGM Studios v. Grokster, which resulted in a unanimous decision in favor of the film and music industries. Before joining the RIAA, Mr. Pierre-Louis clerked for Judge David A. Nelson of the U.S. Court of Appeals for the Sixth Circuit, and was an associate at Shea & Gardener.

Mr. Pierre-Louis is a Phi Beta Kappa graduate of Clark University and earned his J.D. from the University of Chicago Law School, where he served on the Board of Editors of the University of Chicago Law Review. He currently serves on the several boards and legal committees, including on the Board of Directors of the Lincoln Center Institute for the Arts in Education and on the Visiting Committee of the University of Chicago Department of Music.

Lori Lesser is a Partner at Simpson Thacher & Bartlett LLP, where she practices in the Litigation Department and is Head of the Intellectual Property Transactions Practice and Co-Chair of the Privacy and Cybersecurity Practice. Lori advises on all aspects of intellectual property, technology and privacy law, including corporate transactions, litigation, licensing, outsourcing, strategic agreements and counseling.

Her IP transactional experience includes mergers and acquisitions, securities offerings and secured financings, bankruptcy and restructurings, joint ventures, licensing, outsourcing, counseling and other strategic agreements. Her IP litigation practice comprises trial and appellate work and WIPO arbitrations.

Ms. Lesser is also consistently recognized by Chambers USA, The Legal 500 and The Best Lawyers in America, for which she has been named the “Information Technology Lawyer of the Year” for New York City. She has been listed in the “Top 50 Under 45” U.S. IP Lawyers (IP Law & Business magazine), the “Top 45 Under 45” U.S. women lawyers (The American Lawyer), and “The 20 Most Influential Women in IP Law” (Law360). She has been ranked in New York City’s top 100 lawyers and top 50 women lawyers by Super Lawyers. She has received the Burton Award for legal writing and the Award of Excellence from Volunteer Lawyers for the Arts. Her IP work in private equity deals has been featured on the cover of IP Law & Business.

Ms. Lesser has served as a David Rockefeller Fellow for New York City and corporate partner for GreaterNY and serves on the boards of the Partnership Fund for New York City and the Citizens Budget Commission. She is President of the Harvard Law School Association of NYC and serves on the Executive Committee of the Harvard Class of 1988. She is on the Advisory Board of ChIPs (chief IP counsel), the Business Advisory Council of ProPublica, the Leadership Council of Barnard’s Athena Center for Leadership Studies, and the Hunter College Pre-Law Advisory Board. She is a Fellow of the Foreign Policy Association.

Ms. Lesser graduated from Harvard University (A.B., magna cum laude and Phi Beta Kappa, 1988) and Harvard Law School (J.D., cum laude, 1993).

Nancy Mertzel has more than 25 years of experience protecting brand names, products, content and technology.

She has litigated numerous copyright, trademark, trade dress, unfair competition and trade secret disputes. She has an affinity for matters involving source code and technology, and has successfully handled cutting edge cases involving the scope of copyright protection in source code and data.  For example, she successfully defended a claim of copyright in numbers in BanxCorp v. Costco Wholesale Corp., 978 F.Supp.2d 280 (2013).  She also handles trademark infringement cases, disputes between developers and licensees, trade secret cases involving software, entertainment industry disputes, Trademark Trial and Appeal Board disputes, and recovery of domain names.

On the transactional side, Nancy handles trademark clearance, prosecution and portfolio management, and drafts a wide variety of agreements including copyright and trademark licenses, software licenses and software development agreements and end user license agreements. She also advises clients on copyright issues including the scope of protection in data, fair use and infringement.

Nancy is an active member of the bar and a frequent speaker and author.   She recently completed a term as a board member of the American Intellectual Property Law Association (AIPLA) and has served as an officer of the Copyright Society of the USA. 

As part of her bar work for AIPLA, on February 26, 2015, Nancy testified before the House Judiciary Committee at a hearing on “The U.S. Copyright Office: Its Functions and Resources.”  Nancy also wrote AIPLA’s U.S. Supreme Court amicus curiae briefs in Petrella v. Metro-Goldwyn-Mayer, which involved laches in copyright infringement cases, SCA Hygiene Products A.G. v. First Quality Baby Products, LLC, which involved laches in patent cases, and B&B Hardware, Inc. v. Hargis Industries, Inc., which involved the preclusive effect of decisions by the Trademark Trial and Appeal Board on subsequent litigation.

In 2016 and 2017, World Trademark Review named Nancy a leading lawyer for enforcement and litigation, calling her a “well-spoken and zealous advocate” who “handles the whole nine yards of brand development and enforcement.”  Since 2009, Nancy has been named one of Thompson Reuters' New York Super Lawyers for Intellectual Property Litigation, as well as one of the publication's top 50 NY women attorneys (2013-2017).

Nancy is a graduate of American University’s Washington College of Law (J.D.) and the University of Rochester (B.A.)

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).