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Advanced Copyright Law Annual Review 2014


Speaker(s): Ed McCoyd, Jessica R. Friedman, Kim J. Landsman, Lateef Mtima, Lisa T. Simpson, Nancy J. Mertzel, Richard Dannay
Recorded on: Apr. 4, 2014
PLI Program #: 51389

Kim Landsman has more than 30 years of experience in civil litigation.  He is best known for his work in intellectual property, where he has handled cases involving trademark, false advertising, copyright, patent, and trade secret issues, as well as licensing and other contractual disputes.  He has also litigated in employment and trusts/estates.

Mr. Landsman has, over the past ten years or so, expanded his practice into mediation and United States and international arbitration.  He is a member of the Roster of Neutrals of the American Arbitration Association and the Panel of Neutrals of the International Trademark Association and has served as a mediator in the United States District Courts for the Southern and Eastern Districts of New York.  He has served as an arbitrator and mediator in trademark, copyright, trade secret, patent, employment, and general commercial disputes.

He began his legal career as a law clerk to Judge Arlin M. Adams, U.S. Court of Appeals for the Third Circuit.  He was an associate and partner of Parker Auspitz Neesemann & Delehanty P.C., which merged into Morrison & Foerster in 1987, and was then a partner of that firm until joining Patterson Belknap Webb & Tyler LLP in February 1995.  He joined Golenbock Eiseman Assor Bell & Peskoe LLP as a partner in November 2011.

EDUCATION

J.D., 1979, Yale Law School, Article & Book Review Editor, The Yale Law Journal
M.A., 1976, Oxford University, Politics and Economics
A.B., 1974, Vassar College, Honors, Phi Beta Kappa

PROFESSIONAL ACTIVITIES

Named in Super Lawyers in the area of Intellectual Property Litigation;

Arbitrator, American Arbitration Association
Mediator in the United States District Courts for the Southern and Eastern Districts of New York

Memberships
Association of the Bar of the City of New York (current member of the International Commercial Disputes Committee and past member of the Federal Courts, Copyright and Literary Property, and Trademark and Unfair Competition Committees)
International Trademark Association (member of its Panel of Neutrals, former editor of the Trademark Reporter)
The Copyright Society
Federal Bar Council
Charter member of the International Arbitration Club of New York.

PUBLICATIONS

Author, Does Cariou v. Prince Represent the Apogee or Burn-Out  of Transformativeness in Fair Use Jurisprudence? A Plea for a Neo-Traditional Approach, Fordham Intellectual Property, Media & Entertainment Law Journal (forthcoming)

Author, Cariou v. Prince Confirms Importance of Transformativeness, Law 360 (May 1, 2013)

Author, Two Decisions in Battle Between Old and New Media Leave Little Resolved, New York Law Journal: Outside Counsel (May 24, 2012)

Co-Author with Eric Rasmussen, Special Feature -- The Second Circuit Finally Acknowledges the Impact of the Supreme Court’s eBay Decision on Preliminary Injunction Standards in Intellectual Property Cases, in IP Today (May 5, 2010)

Author, Cross-Examining a Technical or Scientific Expert, in Take The Witness:  Cross-Examination In International Arbitration (Lawrence W. Newman and Ben H. Sheppard, Jr., eds. 2010)

Author, Holding Arbitrators to Higher Standards of Impartiality After Scandinavian Reinsurance, New York Law Journal:  Outside Counsel (May 21, 2010)

Co-Author with Daniel Glazer and Irene Treloar, Standing and Joinder Considerations in
Trademark Litigations and Licenses," Trademark Law Reporter, Vol. 99 No. 6 (November –December 2009)

Author, Arbitration Fee-Splitting Agreement Invalidated in Employment Dispute, New York Law Journal:  Outside Counsel (July 31, 2009)

Author, The Future of Trademark Litigation over Keyword Searches after the Second Circuit’s Rescuecom Decision, Bloomberg Law Reports: Intellectual Property, Vol. 3, No. 22 (June 2009)


Edward McCoyd is an attorney and Executive Director for Digital, Environmental & Accessibility Affairs at the Association of American Publishers (AAP).  He works with and advocates on behalf of educational, trade, and professional and scholarly publishing companies on issues involving digital technologies and publications, prevention of electronic piracy of publishers’ products, provision of accessible formats of books and other materials to individuals with disabilities, and environmental impacts associated with book paper and manufacturing.  Ed has lectured at CLE seminars including for the Copyright Society of the USA, the Practising Law Institute, and the Suffolk County Bar Association.  Ed previously served as Director of Legal Services at the Authors Guild, providing licensing and copyright advice to published writers. 


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.


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).


Orrick Partner Lisa T. Simpson represents retail, entertainment, technology and pharmaceutical companies in intellectual property matters, focusing on copyright, trademark, false advertising, right of publicity and licensing disputes.

Representative Engagements

Oracle America, Inc.  Lisa represented Oracle in its recent copyright fair use jury trial against Google over the use of Oracle's Java source code in Google's Android operating system.

Coorstek Medical LLC.  Lisa served as trial counsel, securing judgment in favor of Coorstek, in this trial concerning trade dress rights in the color pink for ceramic hip ball replacements.

Kirtsaeng v. John Wiley & Sons, Inc. Lisa obtained a victory in the U.S. Supreme Court on behalf of Petitioner Kirtsaeng concerning the application of the Copyright Act's first sale doctrine to foreign-manufactured goods.

DISH Network, LLC.  Lisa represented DISH in its highly publicized copyright and breach of contract disputes with FOX, NBC, ABC and CBS in NY and California concerning DISH's Hopper DVR. She defeated Fox’s and ABC’s three separate motions for a preliminary injunction on DISH's PrimeTime Anytime, AutoHop and Sling features. Lisa and the DISH team also defeated Fox’s two separate appeals in the Ninth Circuit and obtained a favorable summary judgment decision which considered Aereo as it relates to DISH’s Sling feature.

MGA Entertainment, Inc. Lisa represented MGA in its Ninth Circuit appeal regarding its copyright and trade secret dispute with Mattel over the Bratz dolls, obtaining a complete reversal of the District Court's order in MGA's favor. On retrial to a California District jury, Lisa and the team obtained a complete victory for MGA. The jury held that MGA owned the Bratz dolls and Mattel was liable to MGA for $309m on its counterclaims.

Honors

  • IP Department of the Year 2016, American Lawyer
  • IP Group of the Year, Law360, 2014, 2016
  • "Top 250 Women in IP," Managing Intellectual Property, 2014
  • "Future Star," Benchmark Litigation,2015-2016
  • List of Top Women Attorneys in the NY Metro Area, New York Times Magazine, 2012-2016
  • "IP Star," Managing Intellectual Property, 2014
  • U.S. Copyright Firm of the Year 2014, Managing Intellectual Property
  • Named as New York Super Lawyer - Metro, 2012-2016
  • Editor, Duke Journal of Law & Contemporary Problems
  • Member, Moot Court Board, Duke Law School

Education


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, 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, a member of the BNA Patent, Trademark & Copyright Journal Advisory Board, and 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).

Professor Mtima is the editor/contributing author of Intellectual Property, Social Justice, and Entrepreneurship: From Swords to Ploughshares (Edward Elgar 2015) and the co-author of Transnational Intellectual Property Law (Xuan-Thao Nguyen and Danielle Conway, co-authors; West Academic 2016). Some of his other publications include 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); The Promise of Information Justice, in Censoring Cyberspace: Regulating Communication on the Internet (Hannibal Travis, Editor, Routledge Publishing 2013); A Social Justice Perspective on IP, Innovation, Entrepreneurship, Innovation and Entrepreneurship, in Entrepreneurship and Innovation in Evolving Economies: The Role of Law (Megan Carpenter, Editor, 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)).