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Advanced Copyright Law 2019: Current Issues


Speaker(s): Jessica R. Friedman, Joshua L. Simmons, Lateef Mtima, Linda Steinman, Nancy J. Mertzel, Richard Dannay, Theodore K. Cheng
Recorded on: Mar. 14, 2019
PLI Program #: 251344

Jessica R. Friedman (Yale Law School 1984, Princeton University 1981) has practiced copyright, trademark, literary property/media and licensing law in New York City for 30 years. Among the matters Ms. Friedman handles are content, data and software development and licensing agreements, publishing agreements for authors and publishers, collaboration agreements, literary agency agreements, media agency agreements, MSA’s and other commercial contracts, as well as online and mobile app privacy policies and terms of use. She also conducts fair use and work-for-hire analyses, domestic and international trademark clearance/prosecution/licensing/policing, and prepublication reviews of manuscripts for libel and other legal issues, and she handles other matters related to the rights of privacy and publicity. In an earlier life as a litigation associate, she represented clients in copyright infringement litigation, and for 14 years, she served as part-time general counsel to a healthcare communications company.

Ms. Friedman has written many articles about intellectual property, publishing and media issues, and she has lectured about and chaired panels on those subjects in various venues, including PLI, the New York City Bar Association, and the New York Technology Council (formerly the New York Software Industry Association). Currently, she is a member of the Copyright and Literary Property Committee of the New York City Bar Association, having already served several terms on that committee and on the Trademark Committee.

Ms. Friedman has an AV® Preeminent™  Martindale-Hubbell® Peer Review Rating (5.0 out of 5), which means that she has been acknowledged by her peers as having  the highest ethical standards and legal ability. She also has been selected as a New York Super Lawyer™ every year since 2010.

More information about Ms. Friedman’s practice is available at www.literarypropertylaw.com.


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. 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 international law firm of Coudert Brothers. Currently a member of the Advisory Council for the United States Court of Federal Claims and the BNA Patent, Trademark & Copyright Journal Advisory Board, Professor Mtima has held the post of Distinguished Libra Visiting Scholar in Residence at the University of Maine School of Law, is a past President of the Giles S. Rich Inn of Court for the United States Court of Appeals for the Federal Circuit, and was a member of the founding Editorial Board for the American Bar Association intellectual property periodical Landslide. Professor Mtima is the Founder and Director of the Institute for Intellectual Property and Social Justice, an accredited Non-governmental Organization Member of the World Intellectual Property Organization (WIPO).


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.


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).


Theo Cheng is an independent, full-time arbitrator and mediator, focusing on commercial, intellectual property (IP), technology, entertainment, and labor/employment disputes. He has conducted over 500 arbitrations and mediations and has been appointed to the rosters of the American Arbitration Association (AAA), the CPR Institute, Resolute Systems, and the Silicon Valley Arbitration & Mediation Center’s List of the World’s Leading Technology Neutrals. He serves on the AAA’s Council and the Board of the New Jersey State Bar Association Dispute Resolute Section. He is also the President of the Justice Marie L. Garibaldi American Inn of Court for ADR, the Chair-Elect of the New York State Bar Association (NYSBA) Dispute Resolution Section, and the Secretary of the Copyright Society of the U.S.A. The National Law Journal named him a 2017 ADR Champion, and he was recently inducted into the National Academy of Distinguished Neutrals.

Mr. Cheng has over 20 years of experience as an IP and general commercial litigator with a focus on trademarks, copyrights, patents, and trade secrets. He has handled a broad array of business disputes and counseled high net-worth individuals and small to middle-market business entities in industries as varied as high-tech, telecommunications, entertainment, consumer products, fashion, food and hospitality, retail, and financial services. In 2007, the National Asian Pacific American Bar Association named him one of the Best Lawyers Under 40.

Mr. Cheng received his A.B. cum laude in Chemistry and Physics from Harvard University and his J.D. from New York University School of Law, where he served as the editor-in-chief of the Moot Court Board. He was a senior litigator at several prominent national law firms, including Paul, Weiss, Rifkind, Wharton & Garrison LLP, Proskauer Rose LLP, and Loeb & Loeb LLP. He was also a marketing consultant in the brokerage operations of MetLife Insurance Company, where he held Chartered Life Underwriter and Chartered Financial Consultant designations and a Series 7 General Securities Representative registration. Mr. Cheng began his legal career serving as a law clerk to the Honorable Julio M. Fuentes of the U.S. Court of Appeals for the Third Circuit and the Honorable Ronald L. Buckwalter of the U.S. District Court for the Eastern District of Pennsylvania.

Mr. Cheng frequently writes and speaks on ADR and intellectual property issues. He has a regular column called Resolution Alley in the NYSBA Entertainment, Arts and Sports Law Journal, which addresses the use of ADR in those industries.

 


Recognized as a “Next Generation Lawyer” (Legal 500), Joshua Simmons focuses his practice on intellectual property litigation and counseling, as well as regulatory and legislative policy.  This “Top Attorney” (Law360) litigates copyright, patent, trademark, and trade secret cases—particularly complex cases and those of first impression—along with contract, licensing, and domain name disputes.  He also advises on IP matters that intersect with antitrust, computer and Internet fraud, false advertising, publicity right, privacy, and social media issues.

Josh routinely is recognized for his appellate and trial court representations in intellectual property, media, and entertainment cases.  Law360 named Josh a “Rising Star” for his media and entertainment matters.  The Legal 500 recognized Josh for his copyright, trademark litigation, trade secrets, and media and entertainment practices.  Super Lawyers repeatedly has named Josh a “Rising Star” for his intellectual property litigation practice.  And Josh was part of the Kirkland team Managing Intellectual Property magazine honored for its work on “Milestone Case of the Year” Oracle America v. Google.

Josh’s high-profile matters involve computer software and services, consumer and leisure products, financial services, health care and pharmaceuticals, media and entertainment—such as electronic games, film, news, publishing, sports, television and theatre—and telecom.  They have been featured in the mainstream media, legal periodicals, and trade press.

In addition to maintaining a full-time litigation practice, Josh is a frequent speaker and has authored numerous articles on emerging trends in intellectual property.  He also is an active member of the intellectual property bar:

• At the ABA Intellectual Property Law Section, he chairs its Copyright Law Reform Task Force, serves on its governing Council, and is a Council Liaison to its Copyright Division.

• He is Vice Chair of the Intellectual Property Owners Association’s Software Related Inventions Committee, and its liaison to the American Law Institute’s Restatement of the Law, Copyright project.

• He chairs the Copyright Society’s Media Library Committee. 

• He is a member of the Board of Advisors to Columbia Law School’s Kernochan Center for Law, Media and the Arts.

Josh’s pro bono includes representing asylum seekers before the Department of Homeland Security and the American Theatre Wing, Comic Book Legal Defense Fund, Fashion Law Institute, and others in IP-related matters.

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.