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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, and licensing law in New York City for 27 years.  Her clients include publishing, e-commerce and entertainment companies and individual authors. Among the matters Ms. Friedman handles are agreements concerning copyright ownership, use and transfer, such as software development and licensing agreements, content licenses in all media, publishing agreements for authors and publishers and collaboration agreements for co-authors. She also helps clients with literary agency agreements, media agency agreements, website development agreements, collaboration agreements, website and mobile app privacy policies and terms of use, fair use and work-for-hire analyses, domestic and international trademark clearance/prosecution/ licensing/policing, domain name disputes, pre-publication reviews of manuscripts for libel and other legal issues, and 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.

Ms. Friedman has lectured about and chaired panels on intellectual property, publishing and new media issues in various venues, including PLI, the New York City Bar Association, and the New York Technology Council (formerly the New York Software Industry Association). She has written many articles on copyright, trademark and other intellectual property matters, and she has served several terms on the Copyright and Literary Property Committee of the New York City Bar Association, where she currently is a member of 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. (Only five percent of the lawyers in the state are selected.)

 More information about Ms. Friedman and her 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).

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 2015). Some of his other publications include 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)).


Lisa T. Simpson is a partner in the New York office and a member of the Litigation and Intellectual Property Groups.  Her practice is focused on the representation of retail, entertainment and technology companies.  Ms. Simpson has handled a variety of matters in state and federal court of importance to such clients, ranging from intellectual property matters involving copyright, trademark, trade name, false advertising, rights of publicity, libel and defamation; to product liability and consumer class action litigation; to domain name, contract and licensing disputes.    

Some of Ms. Simpson's notable cases include the following: 

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

MGA Entertainment, Inc. Ms. Simpson represented MGA in its appeal to the Ninth Circuit with respect to its copyright and ownership dispute with Mattel over the Bratz® dolls and obtained a complete reversal of the District Court's Order in MGA's favor.  On retrial to a jury in the California district court, Ms. Simpson was a member of the trial team that obtained a complete victory for MGA.  The jury held that MGA was the owner of the Bratz® dolls and found that Mattel was liable to MGA on its counterclaims.

DISH Network, LLC.  Ms. Simpson currently represents DISH in its highly publicized copyright and breach of contract disputes with FOX, NBC, ABC and CBS in New York and California concerning DISH's Hopper DVR and successfully defeated Fox's motion for a preliminary injunction on DISH's PrimeTime Anytime and AutoHop features. 


Sanei International Co., Ltd.  Ms. Simpson successfully defeated two applications for preliminary injunction filed by designer JILL STUART against Japanese retailer Sanei, and obtained dismissal of trademark, copyright and contract claims in litigations pending in SDNY.  Ms. Simpson also represented Sanei in a separate trademark dispute over the fashion designer's trademark and name CHARLOTTE RONSON.

NYC Triathlon. Ms. Simpson obtained a preliminary injunction for NYC Triathlon in a trademark dispute over the use of its name, which included a judicial finding of secondary meaning in the NYC TRIATHLON service mark.

Microsoft.  Ms. Simpson argued and won an appeal in New York's Appellate Division affirming the dismissal of a breach of contract action against Microsoft.

Facebook, Inc. Ms. Simpson represented Facebook in a variety of matters, including New York-focused litigation relating to the Winklevoss twins' claims of ownership of Facebook and matters implicating the Communications Decency Act (CDA) and the Electronic Communications Protection Act.  In a matter of first impression in New York, she obtained a dismissal of all claims against Facebook based on CDA immunity.

Wyeth.  Ms. Simpson represented Wyeth in a variety of matters, including:

  • Advil®:  the representation of Wyeth in connection with several product liability litigations involving the labeling and advertising of its over-the-counter analgesic, Advil®;
  • Caltrate®:  the dismissal of a consumer class action prior to class certification in a matter concerning the calcium supplement Caltrate® pending in New York state court; and
  • Thimerosal-containing vaccines:  the representation of Wyeth in hundreds of product liability litigations throughout the United States concerning injuries allegedly associated with the use of the preservative thimerosal in childhood vaccines.

Dow AgroSciences.  In D.C. federal court, Ms. Simpson obtained the dismissal of state law claims brought by more than 300 residents of Ecuador alleging personal injuries from exposure to a commercial fungicide used on banana crops.

iVillage/NBC.  Ms. Simpson represented iVillage (which was acquired by NBC in 2006) in several significant lawsuits dealing with, among other issues:

  • the protection of the company's iBABY trademark;
  • the value of certain disputed employee stock options;
  • the unauthorized use of one of the company's Internet bulletin boards to anonymously post vulgar, obscene, derogatory and defamatory messages;
  • the defense and prosecution of claims involving a licensing dispute over trademarks and rights of publicity; and
  • the complete dismissal of all federal claims, namely trademark infringement, false advertising, dilution and cybersquatting, asserted against iVillage in the U.S. District Court for the Northern District of California based on iVillage's use of certain trademarks on its astrology Web site.

MP3.com.  Ms. Simpson represented Internet music provider MP3.com in numerous litigations in which various record companies, including all the major records labels, asserted copyright claims arising from the launch of MP3.com's online music service.  Ms. Simpson also represented MP3.com in litigation brought by several recording artists, as a purported class, who asserted various copyright claims against MP3.com and the major record labels.

Ms. Simpson currently serves as Hiring Partner for the New York Office.  Ms. Simpson is also a member of the Professional Development Committee (PDC).  Prior to joining the firm, Ms. Simpson was an associate at Donovan Leisure Newton & Irvine LLP, from 1994 to 1998.

Admitted in: New York

Court Admissions

Supreme Court of the United States

United States Courts of Appeals

  • Second Circuit
  • Ninth Circuit

United States District Court

  • Southern District of New York
  • Eastern District of New York
  • Western District of New York

Memberships

New York Intellectual Property Law Association (NYIPLA)

Publications

  • "Food Litigation: An Evolving Landscape," New York Law Journal, co-author, May 10, 2012
  • "Confidentiality: What It Means," New York Law Journal Magazine, Summer Associate ed., Vol. 2, No. 3, June 2003

Speeches & Programs

  • 2006-present:  Guest Lecturer on Copyright and Trademark at Columbia Law School, Small Business Clinic.
  • "Kirtsaeng v. John Wiley & Sons. Inc.: Statutory and Policy Perspectives," Current Developments in Copyright Law 2013, New York City Bar, June 4, 2013 
  • "A Matter of Import: Supreme Court's Kirtsaeng Decision Revisits First Sale Doctrine and Tackles Geographic Limitations on Exhaustion," The Copyright Society of the U.S.A., New York Chapter, April 30, 2013
  • Addressed new developments under the Communications Decency Act ("CDA") and the Digital Millennium Copyright Act ("DMCA") for "New Social Media: Trademark, Copyright, Privacy and Patent Perspectives," New York City Bar, Women in IP, February 28, 2012
  • Trade Dress Protection and Store Brand/Private Labels," IP Trademark and Copyright Counsel Forum -- How to Protect Your Intellectual Property in a Changing World, November 10, 2009

Related Practice Areas

  • Intellectual Property
  • Copyright, Trademark & False Advertising Litigation & Counseling
  • Commercial Litigation
  • Life Sciences

Education

  • J.D., with high honors, Duke Law School, 1994
  • A.B., cum laude, English, Duke University, 1991

Honors

  • Named as 2012 New York Super Lawyer - Metro
  • Identified in The New York Times Magazine on List of Top Women Attorneys in the New York Metro Area, December 30, 2012
  • Editor, Duke Journal of Law & Contemporary Problems
  • Member, Moot Court Board, Duke Law School


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, as well as libel, privacy, publicity, and related matters.

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) (statutory termination of transfer denied; publisher’s new agreement for John Steinbeck works held valid and 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 program 1991 – 2016.

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


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

Nancy's litigation experience includes numerous disputes involving the scope of copyright protection in source code and data. For example, on behalf of a leading bank and big box retailer, she recently defeated a claim of copyright in the individual numbers comprising an index of average financial rates. She has also handled trademark infringement cases, "failed systems" disputes between developers and licensees, trade secret cases involving software, and recovered dozens of domain names from cyber squatters.

On the transactional side, Nancy oversees trademark clearance, prosecution and portfolio management, and drafts a wide variety of agreements including copyright and trademark licenses, software licenses and software development agreements.

Nancy is an active member of the bar, and a frequent speaker and author. She currently serves as a board member of the American Intellectual Property Law Association (AIPLA), one of the largest associations of IP lawyers in the world. In that role, she recently testified before Congress on the need for the U.S. Copyright Office to have greater autonomy over its information technology and funding. In addition, she authored two amicus curiae briefs filed with the U.S. Supreme Court—in Petrella v. Metro-Goldwyn-Mayer, which involved the defense of laches in copyright infringement 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.

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 women attorneys (2013-2014).

Education

American University, Washington College of Law, J.D.; University of Rochester, B.A.

Memberships and Associations

American Intellectual Property Law Association – Board of Directors (2014-2017), Amicus Committee Appointed Member (2013-2014), Copyright Law Committee Chair (2011-2013), Co-Chair LGBT Sub-Committee of Diversity Committee (2010-present)

Copyright Society of the USA - Advisory Committee to the Executive Committee (2012-2013), Treasurer (2008-2010), Trustee (2006-2009), Web Committee Co-Chair (2003-2007), Volunteer of the Year Award Recipient (2007)

Association of the Bar of the City of New York - Member Trademarks and Unfair Competition Committee (2008-2010)

International Trademark Association, Member

National Association of Women Lawyers, Member