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January 9, 2012

UMG v. Veoh Makes the DMCA Safe Harbor Even Safer. What Will the 2d Circuit Do in Viacom?

By Andrew Berger

The safe harbor created by Section 512(c) of the Digital Millennium Copyright Act (DMCA) may now be an Internet service provider's Bali Hai.

That's because on December 20, 2011, the Ninth Circuit held in UMG v. Veoh (www.ipinbrief.com/wp-content/uploads/2011/12/DecisionUMGvVeoh-ninth-circuit.pdf) that a webhost will only lose its safe harbor immunity under this section if it has specific knowledge of infringing content on its site and fails to take down that content. Because UMG failed to demonstrate that Veoh had specific knowledge, the Ninth Circuit affirmed the district court's grant of summary judgment dismissing the action against Veoh. (http://www.ipinbrief.com/wp-content/uploads/2011/12/veoh-district-court-pdf.txt)

Is this opinion a death knell for Viacom's pending appeal in the 2d Circuit? I don't think so. But first here is some background and analysis of Veoh.

The Safe Harbor at Issue in Veoh and Viacom

Section § 512 of the DMCA creates four statutory "safe harbors" to help Internet service providers ("ISPs") predict and manage their legal exposure to copyright infringement. The safe harbor at issue in Veoh and Viacom is at § 512(c), dealing with storage of content initiated by a user.

The section shields ISPs from monetary liability for hosting copyright infringing material on their sites if they either:
(a) have no "actual knowledge that the material or an activity using the material is infringing" and (b) have no "aware[ness] of facts or circumstances from which infringing activity is apparent" (17 U.S.C. § 512(c)(1)(A)(i) & (ii)) or
(c) expeditiously remove infringing material which they know or are aware of upon receipt of a DMCA-compliant take-down notice (17 U.S.C. § 512(c)(1)(A)(iii)).
Courts refer to the two knowledge standards as actual and red-flag knowledge. The Ninth Circuit held that Veoh lacked either actual or red-flag knowledge.

UMG Fails To Demonstrate that Veoh Had Actual Knowledge

UMG inexplicably chose to forgo what the Ninth Circuit labeled "as the most powerful evidence of a service provider's [actual] knowledge"--take down notices. UMG never advised Veoh of a single infringement before it filed its action and then failed to identify any infringing videos until Veoh moved to compel that information on the eve of the close of discovery. Veoh's motion is available at http://www.ipinbrief.com/wp-content/uploads/2011/12/veoh-motion-compel-list-infr4ing.pdf. UMG chose to rely on takedown notices sent by the Recording Industry Association of America ("RIAA"); but the notices referred only to the names of the songs and never mentioned UMG.

UMG instead argued before the Ninth Circuit that Veoh knew the music videos it hosted were infringing because Veoh never licensed any of them from the 4 major music companies. But the district court found, and the circuit court agreed, that Veoh had "arrangements" "with major copyright holders, such as Sony/BMG" to display their music videos.

UMG also argued that Veoh must have had actual knowledge of the presence of infringing videos on its system given its general knowledge that its service could be used to share unauthorized content. The Ninth Circuit again disagreed stating that, if merely hosting material that falls within a category of content capable of copyright protection, with the general knowledge that one's services could be used to share unauthorized copies of copyrighted material, was sufficient to impute knowledge to service providers, the § 512(c) safe harbor would be "a dead letter."

UMG Also Fails to Show that Veoh Had Red Flag Knowledge

UMG fared no better in its argument that Veoh had red flag knowledge. The circuit court rejected UMG's assertion that Veoh's purchase of Google adwords containing the names of some of UMG's artists demonstrated Veoh's knowledge of infringing activity. The Ninth Circuit stated that artists are not always in exclusive relationships with recording companies and "so just because UMG owns the copyright to some of Brittany Spears songs does not mean it owns the copyright for all" of them.

UMG also argued that Veoh should have used search and indexing tools to locate and remove any other content by the artists identified in the RIAA notices. But the Ninth Circuit stated that § 512(m) of the DMCA did not impose investigative obligations on ISP. UMG finally pointed to news articles exposing the availability of copyrighted materials on Veoh. The appellate court was not persuaded stating that, if Veoh's awareness of these news reports "was enough to remove a service provides from DMCA safe harbor eligibility, the notice and takedown procedures would make little sense and the safe harbors would be effectively nullified."

The Ninth Circuit did suggest that Veoh might have gained red flag knowledge if third party users had notified it of "specific particular infringing material" on the Veoh site. In that instance Veoh would then lose its safe harbor immunity if it failed to expeditiously take down the infringing material.

Webhosts May Remain Passive But Still Avoid Liability

The Ninth Circuit's opinion thus places the burden of policing copyright infringement on the owners of the copyrighted material. Content owners must constantly monitor the entire and ever-changing repertoire of every webhosting site on the Internet, in every file format, to locate infringing content. That is a burden that many individual authors cannot sustain.

Although webhosts are better able with advances in filtering technology to automatically identify and block materials as they are loaded, Veoh allows webhosts to remain passive and abstain from taking any affirmative measures to protect against infringement.

This result seems counter intuitive. If a mall owner knows from press and police reports of criminal activity on its property, would the owner still be immune from liability if it failed to investigate and at least attempted to work with law enforcement to end that criminal activity? Yet Veoh holds that ISPs need only quickly respond to takedown notices to avoid liability.

Should the Interests of Copyright Holders Be Policed by Third Parties?

Equally problematic is the Ninth Circuit's suggestion that a third party user's notice of infringement could act as a red flag under §512 (c)(1)(A)(ii). How will a third party user who clicks onto a webhost know that the music video she is enjoying contains infringing content? License agreements between webhosts and music companies are not public information. Even absent a license, the music may be protected by fair use. Will Veoh create a regime where the interests of copyright holders on websites are policed by third party trolls? The potential for third-party abuse (whether intentional or not) is substantial.


Now let's turn to Viacom's pending appeal in the 2d Circuit raising identical issues of actual and red flag knowledge.

YouTube was quick to advise the 2d Circuit of Veoh's victory in the Ninth Circuit. YouTube's post-argument letter re Veoh is available at http://www.ipinbrief.com/wp-content/uploads/2011/12/youtube-post-argument-letter-re-Veoh-decision.pdf.

Some Reasons Why the 2d Circuit May Reverse

Nevertheless, I think there is a reasonable chance that Judge Stanton's thinly-reason decision in favor of YouTube will be reversed. First, Judge Cabranes during the oral argument in Viacom raised five questions of material fact that could have possibly defeated summary judgment. See the New York Law Journal's account of the oral argument at http://www.newyorklawjournal.com/PubArticleNY.jsp?id=1202519347558&slreturn=1.

Second, the appellate court following oral argument was apparently troubled by YouTube's argument that specific knowledge of infringement is all that is required for actual and red flag knowledge. The appellate court therefore ordered the parties to provide supplemental briefs on the issue "whether and how the red-flag knowledge provision would apply" if only specific knowledge of infringement triggers a red flag. (http://www.ipinbrief.com/wp-content/uploads/2011/12/viacom-order-from-2d-circuit-directing-letter-briefs-on-red-flag.pdf) The responses from YouTube and Viacom are located at http://www.ipinbrief.com/wp-content/uploads/2011/12/youtube-post-argument-letter-re-Veoh-decision1.pdf and http://www.ipinbrief.com/wp-content/uploads/2011/12/viacom-post-argument-letter-brief.pdf.

Here is what Viacom said:
Because awareness of "infringing activity" requires less specificity than "actual knowledge" of "infringing material," a website operator who "welcome[s]" and is aware of infringing activity on its site - here in the range of 75-80% of views according to YouTube's own analyses - clearly satisfies § 512(c)(1)(A)(ii) even if it avoids knowing most of the specifics. And though operators do not have an independent obligation to monitor their sites for infringement, once they have this kind of awareness of infringing activity they have a duty to act to address the problem under § 512(c)(1)(A)(iii).

I side here with Viacom. The district court, by holding that knowledge of specific infringing clips satisfies the actual and red flag standards, effectively jettisoned the red flag standard. When Congress enacted the two standards of knowledge it must have intended they be different and that the red flag standard be a separate basis for imposing liability on a service provider. Why else have two standards? Further, the legislative history and the face of § 512 (c)(1) indicate that the red flag standard requires something less than actual knowledge of infringement. But the district court in Viacom held both standards require the same specificity. Therefore, if a service provider has red flag knowledge, it also must have actual knowledge. As a result, Judge Stanton read the red flag standard out of the DMCA. The Second Circuit may not do the same.

A third reason why the Second Circuit may reverse is that the district court had determined that YouTube was "not only generally aware of, but welcomed copyright-infringing material being placed on their website," which "enhanced defendants' income."(http://www.ipinbrief.com/wp-content/uploads/2011/12/viacom-youtube-opinion-district-court.pdf) Isn't that enough to at least raise a triable question regarding red flag knowledge? In other words, as I told the Wall Street Journal in its fine article about the pending appeal (http://online.wsj.com/article/SB10001424052748703741004575651041817080912.html? - subscription required), "When you welcome a thief in your house, you probably know he's there."

The copyright industry now awaits the 2nd Circuit; your predictions on what may happen are welcome. My earlier posts on Viacom are on the Viacom litigation home page, located at http://news.viacom.com/.


This post was originally published on www.ipinbrief.com, an IP blog written by Andrew Berger. Links to the cases referred to above may be found at http://www.ipinbrief.com/umg-v-veoh-makes-the-dmca-safe-harbor-even-safer-what-will-the-2d-circuit-do-in-viacom/.

January 14, 2012

Message from Chair Judith B. Prowda

I am pleased to announce the appointment of Jennette Wiser as an EASL Law Student Liaison for the Spring 2012 Semester. Jennette is a third year at Pace University School of Law and Law Clerk at Cowan, DeBaets, Abrahams & Sheppard LLP. She serves as Editor-in-Chief and Co-Founder of the Pace IP, Sports & Entertainment Law Forum and Student Bar Association Secretary. This past summer, Jennette clerked in the Office of the General Counsel at the U.S. Copyright Office in the Library of Congress. She has previously interned in Business and Legal Affairs at Sony Music Entertainment, the Dance Division at IMG Artists, service organization Dance/USA and the Isadora Duncan Dance Foundation. Jennette has also served as Pace's Intellectual Property Student Organization President, the Sports, Entertainment and Arts Law Society Secretary, and Pace's Peer-to-Patent Team Leader. She graduated from the University of North Carolina at Chapel Hill with a B.A., double majoring in Political Science and International Studies. Jennette grew up dancing and hopes to continue to dance throughout her legal career.


By Kim Swidler

The House of Versace has joined with charitybuzz.com to auction off an internship at its New York City offices during the summer or fall semester of 2012 (http://www.charitybuzz.com/categories/55/catalog_items/2919122).

The internship provides no compensation, and neither travel costs nor accommodations are included. However, the fashion house says that the winner can earn college credit and values this experience at $10,000.00.

What will the recipient of this prize be doing? Charitybuzz.com states that "the winner will help organize and execute any NYC-based events (usually one per season) all while gaining internship experience in the high-energy and exciting world of fashion at one of the world's most dynamic and creative fashion houses."

The auction ends on January 19, 2012 at 3:40m EST and, as of this writing, the bid is presently at $3,250.00 plus "shipping/handling costs" and sales tax for New York and California residents.

Proceeds of the auction are to benefit Oceana (http://na.oceana.org).

Kim Swidler invites your comments on this and other future fashion blogs. Please share your thoughts.

January 15, 2012

Official White House Response to SOPA

Combating Online Piracy while Protecting an Open and Innovative Internet

By Victoria Espinel, Aneesh Chopra, and Howard Schmidt

Thanks for taking the time to sign this petition. Both your words and actions illustrate the importance of maintaining an open and democratic Internet.

Right now, Congress is debating a few pieces of legislation concerning the very real issue of online piracy, including the Stop Online Piracy Act (SOPA), the PROTECT IP Act and the Online Protection and Digital ENforcement Act (OPEN). We want to take this opportunity to tell you what the Administration will support--and what we will not support. Any effective legislation should reflect a wide range of stakeholders, including everyone from content creators to the engineers that build and maintain the infrastructure of the Internet.

While we believe that online piracy by foreign websites is a serious problem that requires a serious legislative response, we will not support legislation that reduces freedom of expression, increases cybersecurity risk, or undermines the dynamic, innovative global Internet.

Any effort to combat online piracy must guard against the risk of online censorship of lawful activity and must not inhibit innovation by our dynamic businesses large and small. Across the globe, the openness of the Internet is increasingly central to innovation in business, government, and society and it must be protected. To minimize this risk, new legislation must be narrowly targeted only at sites beyond the reach of current U.S. law, cover activity clearly prohibited under existing U.S. laws, and be effectively tailored, with strong due process and focused on criminal activity. Any provision covering Internet intermediaries such as online advertising networks, payment processors, or search engines must be transparent and designed to prevent overly broad private rights of action that could encourage unjustified litigation that could discourage startup businesses and innovative firms from growing.

We must avoid creating new cybersecurity risks or disrupting the underlying architecture of the Internet. Proposed laws must not tamper with the technical architecture of the Internet through manipulation of the Domain Name System (DNS), a foundation of Internet security. Our analysis of the DNS filtering provisions in some proposed legislation suggests that they pose a real risk to cybersecurity and yet leave contraband goods and services accessible online. We must avoid legislation that drives users to dangerous, unreliable DNS servers and puts next-generation security policies, such as the deployment of DNSSEC, at risk.

Let us be clear--online piracy is a real problem that harms the American economy, and threatens jobs for significant numbers of middle class workers and hurts some of our nation's most creative and innovative companies and entrepreneurs. It harms everyone from struggling artists to production crews, and from startup social media companies to large movie studios. While we are strongly committed to the vigorous enforcement of intellectual property rights, existing tools are not strong enough to root out the worst online pirates beyond our borders. That is why the Administration calls on all sides to work together to pass sound legislation this year that provides prosecutors and rights holders new legal tools to combat online piracy originating beyond U.S. borders while staying true to the principles outlined above in this response. We should never let criminals hide behind a hollow embrace of legitimate American values.

This is not just a matter for legislation. We expect and encourage all private parties, including both content creators and Internet platform providers working together, to adopt voluntary measures and best practices to reduce online piracy.

So, rather than just look at how legislation can be stopped, ask yourself: Where do we go from here? Don't limit your opinion to what's the wrong thing to do, ask yourself what's right. Already, many of members of Congress are asking for public input around the issue. We are paying close attention to those opportunities, as well as to public input to the Administration. The organizer of this petition and a random sample of the signers will be invited to a conference call to discuss this issue further with Administration officials and soon after that, we will host an online event to get more input and answer your questions. Details on that will follow in the coming days.

Washington needs to hear your best ideas about how to clamp down on rogue websites and other criminals who make money off the creative efforts of American artists and rights holders. We should all be committed to working with all interested constituencies to develop new legal tools to protect global intellectual property rights without jeopardizing the openness of the Internet. Our hope is that you will bring enthusiasm and know-how to this important challenge.

Moving forward, we will continue to work with Congress on a bipartisan basis on legislation that provides new tools needed in the global fight against piracy and counterfeiting, while vigorously defending an open Internet based on the values of free expression, privacy, security and innovation. Again, thank you for taking the time to participate in this important process. We hope you'll continue to be part of it.

Victoria Espinel is Intellectual Property Enforcement Coordinator at Office of Management and Budget

Aneesh Chopra is the U.S. Chief Technology Officer and Assistant to the President and Associate Director for Technology at the Office of Science and Technology Policy

Howard Schmidt is Special Assistant to the President and Cybersecurity Coordinator for National Security Staff

January 20, 2012

New Essential Reading by Lincoln Center's General Counsel

Good Counsel: Meeting the Legal Needs of Nonprofits

by Lesley Rosenthal
General Counsel, Lincoln Center for the Performing Arts, New York

"A treasure trove for nonprofit executives, attorneys, and board members. It's everything they would want to know, embellished with real-life stories, checklists, forms, and available resources."

--Hon. Judith S. Kaye, Chief Judge Emerita, State of New York

"Lesley Rosenthal has composed a score for nonprofit leaders and their legal advisors. Lively, comprehensive, and easy to understand."

--Wynton Marsalis

"Attorneys who want to make a difference by helping arts organizations pro bono must use this book as a cornerstone of their practices."

-Elissa D. Hecker, Former Chair, EASL Section, Co-Chair, EASL Pro Bono Committee

Buy Now From:
· Amazon.com - Discounted off the list price
· Barnes & Noble - Discounted off the list price
· Wiley & Sons

Good Counsel distills the unique legal needs of the more than 1.8 million tax-exempt organizations in the United States into a compact, personable playbook.

This is a must-read for nonprofit professionals and board members, as well as lawyers and law students. With focus questions, practice pointers, actionable checklists, work plans, and sample documents, the book and its companion website invite readers to:

· Energize the boardroom with role clarity and trustee engagement

· Boost fundraising activities

· Negotiate contracts that serve the organization's best interests

· Support a committed workforce with sound employment policies

· Strengthen the organization's name and protect its good works

· Understand the business model and applicable regulations

· Find the sweet spot for entrepreneurial initiatives

· Lobby effectively -- without crossing the line

· Start up or step up a network of legal supporters

Weekly Issues in the News

By Geisa Balla

On January 18, 2012, more than 10,000 of the world's favorite websites, including then English Wikipedia, Reddit and Google, made their opposition to the Stop Online Piracy Act ("SOPA") and the Protect Intellectual Property Act ("PIPA"). The English Wikipedia blacked out entirely on January 18, 2012, in protest of SOPA and PIPA. As one of the largest and best-coordinated online protests, this media blackout had a lot of people talking, and did in fact seem to change the minds of some of the bill's sponsors. "Earlier this year, [the Protect IP Act] passed the Senate Judiciary Committee unanimously and without controversy," wrote Republican senator Marco Rubio of Florida, a co-sponsor of the bill, on his Facebook page. "Since then, we've heard legitimate concerns about the impact the bill could have on access to the Internet and about a potentially unreasonable expansion of the federal government's power to impact the Internet. Congress should listen and avoid rushing through a bill that could have many unintended consequences."

On January 19, 2012, the United States Department of Justice shut down Megaupload.com, one of the most popular file-sharing services on the web. The Department of Justice charged seven individuals and two corporations, Megaupload Limited and Vestor Limited, with running an international organized criminal enterprise, and generating more than $175 million in criminal proceeds and causing more than half a billion dollars in damages to copyright owners. In its press release, the Department of Justice states "This action is among the largest criminal copyright cases ever brought by the United States and directly targets the misuse of a public content storage and distribution site to commit and facilitate intellectual property crime."


Five employees filed a class action lawsuit against Forever 21 in the San Francisco Superior Court on January 18, 2012. The employees allege that Forever 21 systematically failed to pay them for hours worked, and denied them meal breaks. Forever 21's loss prevention policy mandates bag searches before employees clock out, and plaintiffs here allege that Forever 21 routinely searched their bags after they clocked out, and failed to pay them for that time.


Mike Sorrentino, Jersey Shore's "The Situation", has been sued by an apparel company, Serious Pimp, for breach of contract. Serious Pimp and Mr. Sorrentino entered into an agreement whereby Mr. Sorrentino would promote Serious Pimp's line of t-shirts in exchange for a $25,000 advance payment. Serious Pimp now claims that Mr. Sorrentino took the money and failed to comply with his contractual obligations.


Kim Kardashian filed a lawsuit against The Gap in July of 2011, alleging that The Gap created confusion in the marketplace and violated her rights to her name and likeness when it used model Melissa Molinaro in a TV commercial. Ms. Kardashian claimed that The Gap violated her legal rights by using this particular model that looked strikingly similar to Ms. Kardashian. The Gap's defense strategy in its litigation against Kim Kardashian seems to hinge on the value of Ms. Kardashian's reputation and value to her various endorsement deals. The case is now in the discovery stage, and it appears that The Gap is seeking to unveil financial records to reveal Ms. Kardashian's true financial value from her various endorsement deals.


Golan v Holder Supreme Court Decision

Held: Section 514 does not exceed Congress' authority under the Copyright Clause. (a) The text of the Copyright Clause does not exclude application of copyright protection to works in the public domain.

The Supreme Court opinion in Golan v Holder can be found at:


January 21, 2012

Is It Just Me? Federal Magistrate Invalidates Federal Registration for "We Not Me" Trademark

By Gordon M. Daniell

Giving designers and practitioners alike an example of the phrase "say what you mean, and mean what you say," a Federal Magistrate in the Southern District of Oregon granted summary judgment for the Defendants (Adidas, The NBA, The Boston Celtics Basketball Team and Kevin Garnet); voiding an attorney's registered trademark for the phrase "We Not Me" for use on clothing, because the attorney failed to demonstrate a bona fide intent to use the phrase on the all of the goods listed on his application for federal trademark registration. Yet all was not lost for the Plaintiff, as Judge Paul Papak found that the Plaintiff had used the phrase in a trademark sense on hats and t-shirts, and could proceed on this ground.

For those in the Fashion, Apparel and Trademark worlds, the case is useful for two reasons: 1)It serves as a reminder to Trademark practitioners to ask clients about what their intentions are with the marks, and 2) to make clients aware of the dangers of failing to properly account for intended uses. For designers, it gives an excellent guide for claiming rights through use of a company's trademark outside of the garment's label or hang tag.

For Practitioners, a Cautionary Tale

As initially reported in the New York Law Journal (http://www.law.com/jsp/nlj/PubArticleNLJ.jsp?id=1202537395046), the case revolves around "Naperville's Idea Man" W. Brand Bobsky, an attorney, real estate broker, and philanthropist in Naperville, IL. (http://www.brandrealtyco.com/about.cfm) Bobsky first developed the phrase "We Not Me" in 2000, and throughout the next several years, took steps to bring the concept to a wide audience. He printed the phrase on lapel pins, key chains, beer cups, and encouraged its use by celebrities, including Regis Philbin and Oprah Winfrey. Bobsky filed for Federal Trademark registration in 2004, under the "INTENT TO USE" ("ITU") section of the Lanham Act, which allows applicants with a bona fide intent to use the mark in commerce on goods or services to file for protection based on that intent. The application claimed an ITU on several types of products initially, but was amended after Bobsky, seeking to enforce his rights in "WE NOT ME", was threatened with a fraud claim by Adidas' Inhouse Counsel. Amended, the claim extended only to hats. He filed a second ITU application, this time including "hats, clothing namely shirts and sandals." He continued to use the mark on hats, as well as on the sleeve of shirts and on sandals.

Judge Papak voided Bobsky's claims to the first application, ab initio because Bobsky could not provide or show through testimony that he intended to use the mark in commerce on all of the goods listed in either of the applications. Citing case-law as well as McCarthy on Trademarks, the court noted that proving intent to use a mark in commerce commonly requires a written "plan of action", and that statements of subjective intent are not sufficient in themselves to prove intent. The court noted further that, without that documentation, the burden shifts to the applicant to show why those documents do not exist. Bobsky could not produce a plan of action, and testified that he thought the list of goods in the first application "came with the territory." The court found further that even though Bobsky had used the mark on hats in the second registration, he could not show that he had intended to use the mark on all of the goods listed. Again turning to Bobsky's testimony, Judge Papak ruled that because the applicant must have a bona fide intent to use the goods on all of the goods or services listed in the application, and Bobsky could not show that he did (and testified even that he did not), the second application was also ruled void ab initio.

This creates a red flag for practitioners filing trademarks on behalf of their clients. Taking the time to consult with qualified Trademark counsel regarding the client's marks and mark strategy will pay dividends should the mark come to litigation. Practitioners should ask the hard questions about whether, how, and on what the client intends to use the mark, and should make sure to counsel the client that he/she/it should retain all business plans, minutes of meetings, and emails, which could later be used to prove intent.

For Designers, the Gift that Keeps on Giving

Clearly, Judge Papak meant his December 29th opinion to be a holiday gift to those in the world of Design and Apparel. The second half of his opinion provides an easy to understand discussion of how a designer may use its logo on clothing as a mark, without its becoming a merely "ornamental design."

Despite the registrations for "We Not Me" having been found void ab initio, the phrase does appear on hats as well as shirts and sandals. Thus, assuming the phrase is used as a trademark on those goods, Bobsky would be able to continue in his claim against Adidas et. al. under the Lanham Act.

The court turned its analysis to whether Bobsky had engaged in "trademark use." Unfortunately, not everything that appears on a label may receive trademark protection. Those rights come from its use to identify the product, as something exclusive of all other products in the market. This type of use must exist in order to find trademark infringement. To make things more complicated, designs may serve as ornamentation, but also as a trademark. Putting a mark or logo on garments that someone else produces can constitute trademark use; and the question of whether or not the mark/logo/design is used as a trademark will be one of fact. There is no specific place where one must put one's logo, and even putting the logo across the front of the garment (see NFL, NCAA, NASCAR, or the U.S. Army, for example) can still create trademark use as long as it identifies the logo's owner. Citing the Trademark Manual of Examining Procedure, Judge Papak noted that "the size, location, dominance and significance of the alleged mark as applied to the goods are all factors which figure prominently in the determination of whether it also serves as an indication of origin".

Bobsky used the phrase in one small spot on the sleeve of his shirts bearing the ® symbol of a registered trademark, and another medium sized logo over the breast. His use on hats was a similar, slightly larger logo relative to the overall size on the rear of the hat, with the logo on the front. Judge Papak found an issue of fact existed as to whether the use in question was enough to constitute "trademark use." The sandals found less success, as the logo was the only ornamentation, and was much larger relative to the size of the sandals, and possessed no ® symbol.

For Designers, this case offers some guidelines of using a logo outside of its common place on a tag buried at the back of a garment. Trademark rights may be had, even if the logo serves a decoration, as long as it also serves to identify the designer's brand. To suggest source, rather than be a nice design, the mark must be kept relatively small, should have an ® or "TM" symbol, and should not be intertwined with a design, or included in a pattern that covers the entire garment. Think of it as putting the tag on the outside or using it like a corporate polo-style shirt. The logo is there, but isn't there for its design qualities.

The case number is CV IO-630-PK.

January 25, 2012


As part of NYSBA's Diversity Initiative, the EASL Section has initiated a Mentoring Program, and is looking for members who are interested in either volunteering to be mentors or mentees. Mentors should have at least five years of practical experience in an EASL-related field, and mentees should be lawyers in transition, junior attorneys, law students, or members who feel they can benefit from a more senior attorney. Mentors and mentees must be EASL members.

The time commitment is a minimum of one hour per month for one year.

Attached are copies of the forms that you will be able to complete at:

(for Mentors), and

(for Mentees).

If you have any questions, please feel free to contact Cheryl Davis at cdavis@mhjur or Elissa Hecker at eheckeresq@yahoo.com.

Please complete this form online:
EASL Diversity Mentor Questionnaire
EASL recognizes the need for forming mentor/mentee relationships to grow the field and to exchange experiences. The Diversity Initiative aims to bring together seasoned practitioners and young attorneys to learn from each other.

Last Name *

First Name *

Address *

Phone Number *

Email Address *

Personal Statement * Please provide additional information about your experiences, such as the number of years in your current position and skill sets, that may assist in matching mentors and mentees.

Affiliation *
• In-House Counsel
• Law Firm
• Law School
• Of Counsel
• Solo Practitioner

Category *

Practice Area/Specialization *
• Alternative Dispute Resolution
• Art
• Bankruptcy
• Contracts
• Copyright
• Corporate
• Defamation
• Digital Media
• Ethics
• Entertainment
• Fashion Law
• Litigation
• Motion Pictures
• Music and Recording Industry
• Nonprofit
• Performing Arts
• Publicity, Privacy and Media
• Sports
• Television and Radio
• Theatre and Performing Arts
• Trademark
• Wills and Trusts

Meeting Location Preferences *

Meeting Times Preferences *
• Morning
• Afternoon
• Evening

Preferred Means of Communication * Initial voice communication is required to start building a meaningful relationship.

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Please complete this form online:

EASL Diversity Mentee Questionnaire

Last Name *

First Name *

Address *

Phone Number *

Email Address *

Affiliation *
• Law Student (JD)
• Law Student (LLM)
• Recent Graduate
• Lawyer in Transition
• Other:

Category of Interest EASL section of the New York State Bar Association is made up of attorneys and law students dedicated to Entertainment Law, Sports Law and law and the Arts. Please indicate which general area(s) of this section fit your interests.

Experience * Please provide some information about your current work experience (clerkships, internships, etc)

Practice Area/Specialization *
• Alternative Dispute Resolution
• Art
• Bankruptcy
• Contracts
• Copyright
• Corporate
• Defamation
• Digital Media
• Ethics
• Entertainment
• Fashion Law
• Litigation
• Motion Pictures
• Music and Recording Industry
• Nonprofit
• Performing Arts
• Publicity, Privacy and Media
• Sports
• Television and Radio
• Theatre and Performing Arts
• Trademark
• Wills and Trusts

Meeting Location Preferences *

Meeting Times Preferences *
• Morning
• Afternoon
• Evening
• Other:

Preferred Means of Communication * Some voice communication is required to create a meaningful mentor/mentee relationship.

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January 26, 2012

Weekly Issues in the News

By Geisa Balla

Macy's Inc. filed a lawsuit under seal against Martha Steward Living Omnimedia Inc., on January 23, 2012, in New York State Supreme Court. This lawsuit seeks an injunction to block a deal between Martha Stewart Living and J.C. Penney. J.C. Penney acquired a 16.6 percent stake in Martha Stewart Living, and announced plans to open Martha Stewart shops inside its stores. Macy's Inc. argues that the deal with J.C. Penney violates the exclusivity terms between Martha Stewart Living and Macy's Inc.


PBS, the TV network that airs the widely popular show Downton Abbey, was forced to rename its Downton Abbey jewelry collection on its website. PBS's Downton Abbey collection featured a number of jewelry items from third-party vendors, describing and associating each item with the characters of the show, such as "Lady Mary knotted pearl necklace and earring set" ($159). Yet the profits were not shared with creator Julian Fellows or Carnival Films, the show's producers, who own the copyright to the series. The attorneys for Carnival Films stepped in and PBS complied immediately by removing any direct references to the show or its characters in the item descriptions.


"Late Night with Jimmy Fallon" former employee Paul Tarascio filed a gender discrimination lawsuit against Jimmy Fallon, claiming that Tarascio was dropped from his position as stage manager at the show in 2010, and replaced by a "totally incompetent woman." The lawsuit alleges that the show's director David Diomedi told Tarascio that "Jimmy just prefers to take direction from a woman," and that Diomedi "knowingly fabricated alleged performance issues" against the plaintiff to have him terminated. Tarascio is suing for punitive damages and lost wages.


Jay Leno was sued by a California man for a joke he made on January 19, 2012, on the "Tonight Show." The punch line of Leno's joke is that Mitt Romney is so rich that his vacation home is India's Harmandir Sahib, better known as the Golden Temple of Amritsar. The Golden Temple of Amritsar is one of the most sacred buildings in the world to the Sikh people. The lawsuit claims general and punitive damages, arising from a joke that "falsely portrays the holiest place in the Sikh religion as a vacation resort owned by a non-Sikh."


January 27, 2012

Golan v. Holder: A Victory for Copyright

By Christine A. Pepe

On the heels of Congress' shelving of the Stop Online Piracy Act (SOPA) and Protect IP Act (PIPA), the Supreme Court's January 18, 2012 Golan v. Holder decision represents a glimmer of hope that protection of copyright is not dead and can co-exist with the First Amendment.

In Golan v. Holder, the petitioners (conductors, musicians, publishers and others who exploited certain works that entered the public domain), challenged the constitutionality of Section 514 of the Uruguay Round Agreements Act (URAA) , which is now codified in the Copyright Act as 17 U.S.C. §§104A, 109. Section 514 offered restored copyright protection to certain categories of works that are protected in their countries of origin but lack protection in the U.S. Many of such works fell into the U.S. public domain due largely to a failure to comply with certain arcane formalities unique to American copyright law as it existed at the time. Section 514 contains some built-in protections to cushion the impact of the restoration on certain reliance parties, e.g., the parties that exploited the works thought to be in the public domain. In broad terms, these protections include a notice requirement, removing liability for use of foreign works prior to the notice of restoration, and allowing reliance parties to continue to use the restored works for one year following notice.

Importantly, Section 514 was enacted in response to a mandate by the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) that the U.S. fully comply with its obligations as a member of the Berne Convention. Initially, when the U.S. first became a member of Berne in 1989, Congress adopted a minimalist approach to compliance. For example, despite Berne's instruction that member countries protect foreign works under copyright in the country of origin, U.S. law provided no protection for foreign works that fell into the public domain in the U.S. but remained protected in their countries of origin. Beginning in 1994, however, TRIPS required compliance with Berne under penalty of World Trade Organization (WTO) enforcement. At this time, it became clear that many Berne member countries were outraged at the United States' refusal to grant protection to foreign works that remained protected in their countries of origin. On top of this, several countries balked at protecting U.S. works that remained under copyright in the U.S. but not abroad--until the U.S. reciprocated. It was against this backdrop that Congress passed Section 514.

The Supreme Court rejected petitioners' argument that in removing certain works from the public domain, Congress violated the Copyright Clause's confinement of copyright to a "limited time." Notably, the Court stated: "In aligning the United States with other nations bound by the Berne Convention and thereby according equitable treatment to once disfavored foreign authors, Congress can hardly be charged with a design to move stealthily toward a regime of perpetual copyrights." The Court relied heavily on its decision in Eldred v. Ashcroft, 537 U.S. 186 (2003), where it rejected a similar argument that the Copyright Term Extension Act (CTEA) was unconstitutional. The Court also dismissed petitioners' argument that the public domain was "inviolate," citing several historical examples where Congress protected works once freely available.

The Court also cast aside petitioners' claim that Section 514 fails to "promote the Progress of Science" as required by the Copyright Clause. Petitioners, and Justice Breyer in his dissent, urged that production of new works must always be a precondition to any grant of copyright; because Section 514, they argued, simply restricts the dissemination of old works, it does not promote the progress of science. As it did in Eldred, the Court refused to adopt such a singularly utilitarian view of copyright. The Court emphasized that Section 514 would expand the foreign markets available to U.S. authors, invigorate protection against piracy of U.S. works abroad, and as a result, ensure profitable international dissemination of existing and future U.S. works.

Finally, the Court declined to find that the restoration provisions of Section 514 trampled on the First Amendment. A content neutral statute, Section 514 must be upheld if "narrowly tailored to serve a significant government interest." Drawing again in large part from Eldred, the Court concluded that because copyright's built-in First Amendment protections, specifically the idea/expression dichotomy and the fair use doctrine, remained unscathed, there was no need for heightened review. Section 514's stated purposes of ensuring compliance with international treaty obligations, securing greater protection for U.S. authors abroad and remedying unequal treatment of foreign authors, clearly satisfied First Amendment scrutiny. Moreover, given the various protections to reliance parties discussed above, Section 514 implemented a calibrated transition from a national scheme to an international copyright regime. The Court also responded to Justice Breyer's concern over the potential difficulty in identifying or locating copyright owners, especially with regard to orphan works. The Court concluded that the orphan works issue is not peculiar to works restored under Section 514 and should be addressed through legislative not judicial methods.

In the end, the Court reiterated its powerful words from Harper & Row, 471 U.S. 539 (1985), that copyright protection is not simply a "limit on the manner in which expressive works may be used"--it is also "an engine of free expression: By establishing a marketable right to the use of one's expression, copyright supplies the economic incentive to create and disseminate ideas." Overall, this decision represents a significant victory for creators and one that hopefully will resonate with Americans as they continue to be bombarded with uninformed messages that any copyright law impinges on their First Amendment rights.

January 30, 2012

Arts Day in Albany - February 14th

On Tuesday, February 14, New York arts groups statewide will join together for Arts Day in Albany.

This is an important opportunity for artists, managers, and counsel to meet NYS representatives and help make the case for State funding. The 2012-2013 executive budget released last week recommends $37.7 million in total funding for the New York State Council on the Arts (NYSCA), a $1.2 million decrease from the budget for 2011-2012.

For more information, including registration, please visit http://www.dancenyc.org/advocacy/id=108.

Kernochan Center Intellectual Property Fellowship

The Kernochan Center for Law, Media and the Arts at Columbia Law School (CLS) is accepting applications for a two-year fellowship opportunity for a future legal academic interested in researching and writing on intellectual property issues, particularly in the area of third-party liability and internet governance.

The fellowship will begin in September, 2012 and end in August, 2014. The fellow will have the opportunity to conduct his or her own research in the field of liability of internet intermediaries. The fellow will also be responsible for planning and implementing a conference, with the assistance of CLS faculty and staff of the Law School, on the topic of intellectual property and third-party liability, to take place at CLS in Fall 2013. The goal of the conference will be a discussion of current policy in the U.S. and abroad with an eye to proposing potential legislative solutions to current legal issues.

The fellow will receive a salary of $65,000 per year, and benefits, space to work in the law school, research facilities, and opportunities to interact with CLS faculty, staff and students.
Applicants should be 2-5 years out of law school and have a background in economics, technology, sociology or other, similar discipline which lends itself to a study of internet issues. To apply, applicants should send a cover letter, resume, writing sample, proposal for scholarly research on the topic of secondary liability (5-8 pages), two letters of recommendation, law school transcript and a list of additional references by April 15 to the address listed below.

June M. Besek
Executive Director
Kernochan Center for Law, Media and the Arts
Columbia Law School
435 West 116 th Street, Box A-17
New York , NY 10027

Columbia is an equal opportunity and affirmative action employer.

January 31, 2012

Announcement of Not-for-Profit Committee and its Chair

In my final hours as EASL Chair, which ends at midnight tonight, I am delighted to announce the formation of a Not-for-Profit Committee and the appointment of Karen Kolodny as its Chair.

Karen holds two law degrees from McGill University (one in Civil Law and one in Common Law) and a Masters of Law (LLM) (First Class Honours) from Cambridge University. She is a member of the Bars of New York, Quebec and Ontario and she has practiced law in Canada, the United States, Belgium and the Czech Republic.

Karen founded and runs the legal department at New York's preeminent cultural center, the 92nd Street Y, www.92y.org where she is also the Claire B. and Lawrence A. Benenson Director of the Milstein/Rosenthal Center for Media & Technology. At the Milstein/Rosenthal Center, Karen develops and oversees new-media projects. As Director of Legal Affairs, a position she has held since 2005, Karen is responsible for all legal aspects of 92nd Street Y, which has over 30 different business units.

Karen was the youngest member of the Canadian negotiating team for the Canada-U.S. Free Trade Negotiations (NAFTA 1990) and a clerk to a Justice of the Supreme Court of Canada. She has certificates in Arts Administration and Business Technology, both from New York University. Karen currently sits on three not-for-profit boards, two in New York and one in Pennsylvania.

Welcome aboard Karen! EASL looks forward to your inspired leadership.

About January 2012

This page contains all entries posted to The Entertainment, Arts and Sports Law Blog in January 2012. They are listed from oldest to newest.

December 2011 is the previous archive.

February 2012 is the next archive.

Many more can be found on the main index page or by looking through the archives.