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Fundamentals of Copyright Law in the Data Era 2013


Speaker(s): Dale Nelson, David L. Rein, Deirdre Merrill, E. Leonard Rubin, J. Michael Keyes, Katherine C. Spelman, Kathryn J. Fritz, Kenneth D. Crews, Nancy E. Wolff, Sophie Cohen
Recorded on: Jul. 8, 2013
PLI Program #: 41861

E. Leonard Rubin is the principal attorney at the law firm LRubinLaw. a firm that represents individuals and business clients worldwide.  Mr. Rubin, who concentrates his practice in copyright, trademark, defamation, trade secret, privacy and entertainment law, resigned his position a number of years ago as Vice President, General Counsel and Corporate Secretary for Playboy Enterprises, Inc., where he had been for 13 years, to return to private practice.  He is an arbitrator and certified mediator and has extensive experience handling negotiations, internet implications and complex litigation in the copyright, trademark, communications, publishing, computer, music, television, theatrical and motion picture areas, among others.

Mr. Rubin is a past Trustee and immediate past president of the Midwest Chapter, and has sat on the Executive Committee, of the Copyright Society of the United States.  He has written numerous articles and spoken both in this country and abroad on copyright, trademark, defamation, entertainment and data protection issues. He is a member of the Chicago, Illinois, New York State and American Bar Associations, and is admitted to practice before the Illinois and New York state courts as well as the U.S. Supreme Court and the Fifth and Seventh U.S. Circuit Courts of Appeal.

Mr. Rubin is an Adjunct Professor at John Marshall Law School, teaching Entertainment Law.  He is a former Adjunct Professor at Northwestern University School of Law (Copyright Law), the University of Illinois College of Law (Entertainment Law, Copyright and New Technologies Law), and  Loyola University Law School (Advanced Copyright Law).  He is a former Trustee and Executive Committee member of the Copyright Society of the U.S.A.  Mr. Rubin is a past president and Board member of Lawyers for the Creative Arts (which provides free legal help to indigent artists, authors and composers), was a Director of CBA-TV Inc., and for 35 years was the director and co-author of “Christmas Spirits,” the annual social and political musical satire show produced by the Chicago Bar Association.


Areas of Practice

Kate Spelman has more than 30 years of experience providing strategic advice, design and implementation counsel for large, mid-sized and startup companies on copyright, trademark, trade secret and patent matters, both nationally and internationally, and has a special focus on media, licensing and mass digitization issues. Kate advises and counsels clients on the development, production, sale and defense of work related to emerging content distribution strategies and challenges, special issues in news reporting including repurposing content, and firewall and paywall configuration in light of changes in the fair use defense.

Kate is a frequent speaker on the progress of emerging copyright and digital publishing issues, and has advised authors, nonprofit and for-profit publishers, and internet service providers on the new language and provisions of the changed, global distribution environment. She has represented large digital publishing companies in international distribution agreements as well as represented developers and designers who are building and launching tools for online transmissions, storytelling, expression and art.

Additionally, Kate has experience assisting clients with Open Source licensing issues, including Open Source integrated licenses, audits, mergers and acquisitions due diligence, and compliance negotiations. Kate also helps clients design independent holding companies in the U.S. and in offshore intellectual property asset management. She has experience with intellectual property asset audits, and has assisted companies in proactive and reactive Sarbanes-Oxley compliance reporting requirements.

Academics

•           Pepperdine University (Certificate in Dispute Resolution, 1990)

•           University of Wisconsin Law School (J.D., 1980)

•           University of Michigan (B.A., Classics and Latin, 1976)


Dale Nelson is Vice President and Senior Intellectual Property Counsel for Warner Bros. Dale is a veteran of the studio's legal department, having worked in its intellectual property group for over twenty years. Dale handles matters involving issues relating to copyright, trademark, right of publicity and related laws, arising domestically and abroad.  The Warner Bros. intellectual property legal department regularly interacts with the various business units of the studio, including theatrical and television production, consumer products, games, music, anti-piracy, and  all arms of domestic and international distribution of film content, in both  traditional media and in emerging technologies . Some of the studio properties that Dale works with regularly include Harry Potter, Looney Tunes, Lord of the Rings, and DC Comics properties such as Superman and Batman. Prior to joining Warner Bros., Dale practiced intellectual property litigation with Lyon & Lyon in Los Angeles. Dale received her undergraduate degree from the University of Wisconsin - Madison and her law degree from the University of San Francisco School Of Law. Dale is a frequent speaker on topics of intellectual property law and is currently a member of the Board of Directors of the Los Angeles Copyright Society.




David Rein litigated commercial and intellectual property disputes for sixteen years at an AmLaw100 law firm and its predecessor before joining some of his former partners at the Bruce Campbell Law Firm LLP f/k/a Finch & Campbell LLP.  Prior to that, he clerked for United States District Judge Dean Whipple of the Western District of Missouri.

David continues to focuses his practice on intellectual property litigation. He advises and represents both businesses and individual authors, artists and other creatives in copyright, trademark & trade secret litigation.

In addition, he has an extensive commercial litigation background involving complex contract disputes and business torts with particular knowledge of manufacturing practices, food processing and the energy industry.  

 
Representative Experience

  • Cancelled & opposed trademark registrations before the Trademark Trial and Appeal Board. Successfully trial before the TTAB which cancelled the mark of a client's competitor who had used the mark for many years. A full panel upheld the decision.
  • Served as lead counsel in defeating and pursing injunctions for alleged trademark violations. Defeated a preliminary injunction filed by a competitor during the national launch of my client's product line. After further litigation, the case was dismissed without any compensation from my client.
  • Lead counsel in advising & litigating copyright claims. Recovered damages on behalf of architect that exceeded client's or opposing party's profits because I was able to build a case that placed a substantial amount of defendant's revenues in jeopardy.
  • Successfully defended against patent lawsuits involving products ranging from audio speakers to food ingredients.

 

Admissions

  • Missouri, 1992
  • Kansas, 1993
  • U.S. District Court, Western District of Missouri, 1993
  • U.S. District Court, District of Kansas, 1994
  • Federal Circuit 2012
  • U.S. Tax Court, 2009

 

Professional Associations & Civic Involvement

  • Adjunct Professor, University of Missouri in Kansas City, Intellectual Property
  • City of Kansas City Municipal Art Commission, board member
  • American Bar Association, Intellectual Property Section, Vice-Chair of the Copyright Division
  • Ronald McDonald House Charities of Kansas City, operations & Red Shoe committees
  • Kansas City Volunteer Lawyers & Accountants for the Arts, founding board member
  • Kansas City Tomorrow Alumni Association, board member
  • International Right of Way Association, facilitator & chapter president

 

Clerkships

  • Law Clerk, The Hon. Dean Whipple, U.S. District Court, Western District of Missouri, 1992-1994

 

Education

  • J.D., University of Iowa College of Law, with high distinction, 1992; Iowa Law Review, Book Review Editor
  • B.S.B., University of Minnesota, with high distinction, 1989


Deirdre Merrill is the Director of Contracts at Chronicle Books LLC in San Francisco, California.  One of the most admired and respected independent publishing companies in the U.S., Chronicle Books was founded in 1967 and over the years has developed a reputation for award-winning, innovative books.  The company continues to challenge conventional publishing wisdom, setting trends in both subject and format, maintaining a list that includes much admired illustrated books and gift products in design, art, architecture, photography, food, lifestyle, pop culture, and acclaimed children’s titles. Chronicle Books’ objective is to create and distribute exceptional publishing that’s instantly recognizable for its spirit, creativity, and value.

In her work at Chronicle Books over the last 17 years, Ms. Merrill’s primary focus has been drafting, negotiating, and maintaining copyright license agreements between the publishing house and authors, photographers, illustrators, and licensors, along with their respective agents and attorneys.  Her role includes negotiating and securing of digital rights for both backlist and front list titles published by Chronicle Books.  In addition she supervises the contracts and permissions department, helps to maintain the company’s trademark portfolio, advises the subsidiary rights licensing division and custom publishing departments, and supervises copyright registration for all titles published by Chronicle Books.

Education:

  • J.D., University of San Francisco School of Law, 1999
  • B.A, Santa Clara University, 1995

Affiliations:

  • Member, California State Bar Association, 2000-present
  • Member, The Intellectual Property Law Section of the State Bar of California


Kathryn J. Fritz is a partner in the Litigation, Intellectual Property and Privacy Groups and serves as Managing Partner of Fenwick & West, a law firm specializing in technology and life sciences matters. Ms. Fritz is resident in the firm’s San Francisco office.

Ms. Fritz’s practice concentrates on business and intellectual property litigation, with an emphasis on trademark, right of publicity and copyright, especially as applied to new technology areas. She has represented and advised software publishers, computer hardware manufacturers, gaming and digital media companies, entertainment companies, traditional media publishers and consumer products companies on commercial and intellectual property issues.

Ms. Fritz received her B.A., magna cum laude, from the University of California at Santa Barbara, where she was a member of Phi Beta Kappa and a University of California Regents’ Scholar. She received her J.D., cum laude, from Georgetown University Law Center, where she was Research Editor of the American Criminal Law Review.

PROFESSIONAL ACTIVITES AND RECOGNITION

Ms. Fritz writes and speaks regularly on intellectual property issues to groups that include the Federal Judicial Center and Practicing Law Institute, and since 1999 has taught an advanced trademark law seminar at UC Berkeley School of Law, Boalt Hall.

She was named to The National Law Journal’s 75 Outstanding Women Lawyers in 2015; has been named to The Recorder’s list of Top 50 Women Leaders in Tech Law and, in 2015, was additionally designated as one of 10 “Power Players.”

Ms. Fritz has been a member of the Board of Trustees of the Santa Clara County Bar Association and the Board of Directors of the Bar Association of San Francisco.  She is an active speaker on issues relating to law firm management and change, and is active in diversity initiatives in the profession.

 PRO BONO INVOLEMENT

Ms. Fritz has been actively involved on behalf of pro bono clients.  She has represented documentary filmmakers in intellectual property matters, for many years was on the capital defense team for a client on California’s death row, ultimately achieving a reversal of his death sentence, and has assisted clients in obtaining political asylum.

Ms. Fritz is also active in the greater pro bono community.  She is a member of the Board of Directors of Equal Justice Works, has co-chaired the Bar Association of San Francisco’s Pro Bono Committee, is a member of the Pro Bono Institute’s Law Firm Advisory Board, and was a member of the Legal Service Corporation’s Pro Bono Task Force and co-chair of the Subcommittee on Technology Best Practices. She was recently honored by OneJustice for her pro bono leadership.

Emphasis:

Commercial Litigation

Copyright

Trademark

Trade Secrets

Unfair Competition


Kenneth D. Crews is the founding director of the Copyright Advisory Office at Columbia University. For more than twenty years, his research, policymaking, and teaching have centered on copyright issues of importance to education and research. He is an attorney, author, professor, business manager, and international copyright consultant.  Crews previously established and directed the nation's first university-based copyright office, at Indiana University, where he also held a tenured professorship in the McKinney School of Law in Indianapolis. Crews studied history at Northwestern University and law at Washington University in St. Louis, then practiced law in Los Angeles, primarily for the entertainment industry. Crews earned M.L.S. and Ph.D. degrees from UCLA's School of Library and Information Science. His first copyright book, Copyright, Fair Use, and the Challenge for Universities, reevaluated understandings of copyright and policymaking at universities; a subsequent book, Copyright Law for Librarians and Educators (Third Edition, 2012), has been widely received as an insightful source for understanding copyright law. The World Intellectual Property Organization (a U.N. agency) commissioned him to analyze library copyright statutes from more than 150 countries, and that study is informing current discussions in Geneva regarding possible treaty language. Dr. Crews has been an invited speaker on college and university campuses and at conferences in 42 U.S. states and on five continents. He is on the faculty of the Columbia Law School and has been a visiting professor in Paris, Munich, Bayreuth, and Cairo. Kenneth Crews was the first recipient of the Patterson Copyright Award from the American Library Association and is listed in Who's Who in America.


Nancy E. Wolff is a member of the intellectual property, media and entertainment law firm of Cowan, DeBaets, Abrahams & Sheppard, LLC located in New York, New York.  She represents a wide range of creative individuals and companies in all areas of digital media, licensing and publishing. She acts as counsel to the Digital Media Licensing Association and the PLUS Coalition, Inc. a non-profit dedicated to creating standards in image licensing. Other representative clients include stock film and image libraries, publishers and digital media companies, as well as individual photographers, authors, visual artists, jewelry and fashion designers, and website and app developers. She counsels clients in copyright, trademarks, licensing, branding, and negotiates a broad range of contracts and performs fair use and libel vets. In addition to transactional work, she represents clients in state and federal court civil actions as well as arbitration and mediation.

A frequent speaker throughout the United States and Europe on copyright, digital media, and licensing for many organizations, and she is also frequent guest speaker at Columbia Law School. She is President-elect of the Copyright Society of the USA, Chair of the ABA IP Section Committee 301 on Copyright Legislation, and the ABA IP CLE Committee. Her achievements have earned her recognition as a Super Lawyer in Intellectual Property.


Sophie Cohen is IP & Marketing Counsel at the San Francisco office of the company LifeLock, Inc.

Prior to joining LifeLock, Ms. Cohen was a partner at the intellectual property law firm Cobalt LLP in Berkeley, where she advised clients on all aspects of trademark clearance, prosecution and enforcement, domain name disputes, advertising law, licensing and co-branding, as well as software and technology agreements. She also worked with clients on cutting edge copyright matters, such as thorny copyright registrations, source code protection, emerging technologies, innovative business models, fair use, user generated content, fan communities, scraping, DMCA, and work-made-for-hire issues.

Additionally, Ms. Cohen has extensive experience in promotions law, including sweepstakes, contests and raffles, with a special expertise in the fields of commercial co-venturing and cause marketing. 

Ms. Cohen is a member of the California and New York State Bars. She graduated from the Sorbonne (Paris) and the U.C. Davis School of Law.  

She currently serves as the Immediate Past Chair of the State Bar of California Intellectual Property Law Section, and the Vice-Chair of the Computer Software and New Technologies Committee of the ABA-IPL Copyright Division.  She is a member of the Copyright Society of the USA.

Ms. Cohen’s interests include wine and cooking, museums, pop culture, and classic films. She’s also a proud sci-fi geek.


Mike Keyes is a partner with a national litigation and trial practice where he represents a wide array of firm clients in cases involving patents, copyrights, trademarks, unfair competition, and false advertising. Mr. Keyes has litigated numerous cases throughout the country including in the U.S. District Courts of California, Washington, Oregon, Idaho, Florida, Tennessee, Illinois, Alaska, Delaware, New York, Massachusetts, and New Jersey.

Recently, Mr. Keyes was trial counsel for Kraft Foods in a highly-publicized false advertising case that was featured on ABC’s Good Morning America and also covered by the likes of The Chicago Tribune and The New York Times. Mr. Keyes was also trial counsel for Abercrombie & Fitch in a high-profile case in California federal court brought by Levi Strauss & Co. involving claims of unfair competition, trademark infringement, and dilution. The jury returned a unanimous verdict in favor of Abercrombie & Fitch on all claims. The case was profiled in the Daily Journal—California’s largest legal publication—as one of the Top 10 “Defense Wins” in California that year.

Mr. Keyes’ intellectual property clients also include the likes of Rovio Entertainment, Ltd (of Angry Birds® fame), Hall of Fame Major League Slugger George Brett, Helly Hansen, The North Face, Nestle, Del Monte Fresh Produce, Novatel Wireless, Esprit, Quest Diagnostics, Red Lion Hotels, and Cervecería Modelo (the manufacturer of Corona® Beer).

In addition to his trial and counseling experience, Mr. Keyes is also an active member of the copyright and trademark litigation bar. He is the past chair of the American Bar Association Copyright Litigation Committee, the past chair of the Washington State Bar Association Intellectual Property Section, and the co-editor of, and contributing author to, the forthcoming American Bar Association Copyright Litigation Deskbook. He is frequently invited to present on issues involving copyright and trademark law at national conferences and was once again one of the lawyer panelists featured at the American Bar Association’s Spring Intellectual Property Conference in Washington, D.C.

Mr. Keyes is an Adjunct Professor of Law at Gonzaga University where he has taught and lectured on trademark law, false advertising, and other intellectual property topics. He has published several articles and papers on intellectual property law including: The Expanded Scope of Declaratory Judgment Jurisdiction in Trademark Cases After MedImmune v. Genentech, ABA IP Litigation Newsletter, Winter 2008; Musical Musings: The Case For Rethinking Music Copyright Protection (published in the University of Michigan Technology Law Review), The Law of Copyright Damages (presented at a conference sponsored by the American Intellectual Property Law Association), and The Annual Review of Copyright Law Developments (published by the American Bar Association, 2009) (contributing author).

PROFESSIONAL BACKGROUND


Prior to joining K&L Gates, Mike served as a law clerk for Hon. Chief Justice Gerry L. Alexander of the Washington State Supreme Court from 1999-2000.

SPEAKING ENGAGEMENTS

  • Presenter, Washington State Bar Association IP Institute, “Design and Use of Consumer Surveys in Lanham Act Case--Recent Developments”, Seattle, WA March 2014
  • Presenter, Practicing Law Institute, “Fundamentals of Copyright Law in the Data Era”, San Francisco, CA, July 2013
  • Presenter, American Intellectual Property Law Association 2013 Spring Meeting, “Use of Non-Patent Literature During Patent Examination—Fair or Infringing?”, Seattle, WA, May 2013
  • Presenter, Practicing Law Institute, “Understanding Copyright in the Data Era”, San Francisco, CA, July 2012.
  • Presenter, Practicing Law Institute, University of Chicago, “Copyright Enforcement in the Data Era”, Chicago, IL, June 2012.
  • Panelist, American Bar Association Intellectual Property Spring Conference, “Trollings, Take Downs, and Transfers: An Audiovisual Odyssey Through The World of Copyright,”, Arlington, VA, March 2012.
  • Presenter, Practicing Law Institute, Understanding Copyright in the Data Era, San Francisco, California July, 2011.
  • Presenter, Practicing Law Institute, Copyright Litigation, San Francisco, California, July 2010.
  • Panelist, American Bar Association Intellectual Property Law Spring Conference, “Of Courts and Copyists: The Year in Review,” Arlington, Virginia, April 2010.
  • Panelist, American Bar Association Intellectual Property Law Spring Conference, “The Year in Copyright,” Arlington, Virginia, April 2009.
  • Presenter, American Intellectual Property Law Association, "Recoveries in IP Litigation: Hotspots and Trends in Copyright, Trademark, and Patent Damages, Online CLE, April 2009.
  • CLE Co-Chair, Intellectual Property Institute, Washington State Bar Association, Spokane, WA, October 2008—Institute featured United States Court of Appeals for the 9th Circuit Chief Judge, The Hon. Alex Kozinski
  • Presenter, American Bar Association Intellectual Property Law Spring Conference, “An Audiovisual Tour Through The Year in Copyright,” Arlington, Virginia, April 2008
  • Panelist, American Intellectual Property Law Association 2008 Mid-Winter Institute, “A Survey of Licensing Strategies One Year After MedImmune”, Phoenix, AZ, January 2008
  • Presenter, Washington State Bar Association Corporate Counsel Institute, “Trademark Law For General Counsel,” Seattle, WA, October 2007
  • Panelist, American Bar Association Intellectual Property Law Spring Conference, “Copyright in the Courts: Issues of First Impression,” Arlington, Virginia, April 2007
  • CLE Co-Chair, Intellectual Property Institute, Washington State Bar Association, Seattle, WA, March 2007
  • Presenter, “Copyright Law For The IP Attorney,” Idaho State Bar Association Intellectual Property Section, Boise, ID, November 2006
  • CLE Chair, Intellectual Property Developments: Litigation, Machination & Reformation, Washington State Bar Association, Spokane, WA, September 2006
  • Co-Presenter, “Architecture & Engineering in the Digital Age,” Preston Gates & Ellis, Spokane, WA, April 2006
  • Presenter, “Spyware Resolution Debate,” ABA Intellectual Property Annual Meeting, Boston, MA, 2006
  • Presenter, “Copyright & The World of Music,” Washington State Music Teachers Association Leadership Conference, Snoqualmie, WA, September 2005
  • Presenter, “Top Ten Trademark Tips,” Coeur d’ Alene Chamber of Commerce, Coeur d’ Alene, ID, June 2005
  • Co-Presenter, “Protecting Your Artistic Creations in the Digital Age,” Northwest Museum of Arts & Culture, Spokane, WA 2005
  • Co-Presenter, “Pitfalls for the Unwary: Recognition, Protection & Enforcement of IP Rights,” Emerald Education Group, Seattle, WA 2004
  • Presenter, “Copyright Law & The World of Advertising,” Great Falls Advertising Federation, Great Falls, MT, April 2004
PUBLICATIONS
  • Clicking Carefully In Legal Sphere of Social Media, Spokane Journal of Business, Volume 29, Issue 7, March 27, 2014.
  • Minimize Risks When Marketing Through Social Media, Spokane Journal of Business, Volume 28, Issue 7, March 28, 2013.
  • Featured in Spokane Journal of Business Article entitled “It’s true: False Advertising Claims Grow”, September 8, 2011.
  • Contributing Author, American Bar Association’s Annual Review of Intellectual Property Law Developments, 2009.
  • The Expanded Scope of Declaratory Judgment Jurisdiction in Trademark Cases After MedImmune v. Genentech, ABA IP Litigation Newsletter, Winter 2008.
  • Register Your Architectural Works Early and Often, Spokane Journal of Business, 2007.
  • Musical Musings: The Case For Rethinking Music Copyright Protection, 10 Mich. Telecomm. Tech. L. Rev. 407 (2004).
  • Has The Duration of Copyright Turned Wrong?, Washington State Bar News, 2003.
  • Whatever Happens To Works Deferred? Reflections On The Ill–Given Deferments Of The Copyright Term Extension Act, 26 Sea. L. Rev. 97 (2002).
  • State v. Rose: The Re–emergence of Colonial Writs?, 32 Gonz. L. Rev. 177 (1996).
PROFESSIONAL/CIVIC ACTIVITIES
  • Board Member, Holy Names Music Center
  • Co-Chair, 2006-2008, ABA Copyright Litigation Committee
  • Past Chair, 2007, Washington State Bar Association IP Section
  • Chair, 2006, Washington State Bar Association IP Section
  • Chair-elect, 2005, Washington State Bar Association IP Section
  • Sec-Treasurer, 2004, Washington State Bar Association IP Section
  • Co-founder, Spokane County Bar Association IP Section, 2003
  • Coach of National Appellate Advocacy Competition Team, Gonzaga University School of Law, 2002-present
  • Adjunct professor of law, “Internet and the Law,” “Trademark Law,” and “Legal Research & Writing,” Gonzaga University School of Law, 2002-present
  • Member, Copyright Society of the USA
  • Member, Supreme Court Historical Society
ADMISSIONS
  • California
  • Idaho
  • Washington
  • New York
  • U.S. Court of Appeals for the Ninth Circuit
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Eastern District of Washington
  • U.S. District Court for the Western District of Washington
  • U.S. District Court for the Central District of California
  • U.S. District Court for the Northern District of California
  • U.S. District Court for the Northern District of Illinois
  • U.S. District Court for the District of Idaho
EDUCATION

LL.M., Columbia University School of Law, 1999 (Harlan Fiske Stone Scholar)

J.D., Gonzaga University, 1998 (magna cum laude; “Best Oralist,” National Moot Court Competition, Regional Finals 1997; Associate Editor, Law Review, 1997-1998)

B.M., piano performance, Loyola University of New Orleans, 1993

Graduate piano student, Tbilisi State Conservatoire, Former Soviet Republic of Georgia, 1993-1994

ACHIEVEMENTS
  • Named to Best Lawyers® in America
  • Named a “Rising Star” by Washington Law & Politics since 2005.