General Section News Archives

April 14, 2009

Welcome from EASL's Vice Chair

It is profoundly gratifying to be serving as Vice-Chair – and soon to be Chair – at such an exciting time in our Section’s history. The launching of the Section’s Blog by our versatile Journal Editor and former Chair Elissa D. Hecker is the latest of our significant initiatives to serve our members. No doubt, the EASL Blog will set the standard for expert blogging on a diverse range of topics in the entertainment, arts and sports law fields. In no time, you’ll be opening the page with your morning coffee, or en route to court or a meeting, to check on the latest developments. Just another benefit to being an EASL member. I look forward to our venture into the Blogosphere!

Judith B. Prowda

Welcome from EASL's Chair

Welcome to the EASL Blog! I am very excited about the launch of this excellent new resource!

The purpose of this blog is primarily to give a voice to our section and foster communication with both current and prospective EASL members. This blog is an opportunity to promote and reinforce our strong and timely programming, affordable CLE, and pro bono efforts. Previews of upcoming events and programs will help generate even more interest and participation. Post-panel comments and discussion forums will encourage sustained energy and interest in the discussion topics.

Additionally, the blog will offer timely summaries and analysis of legislation, litigation and judicial opinions and be a forum for discussion of current issues in our practice area. I am confident it will quickly become a go-to destination for both EASL members and the wider entertainment law community.

Our practice area probably has the most overlap with the world of blogging than most others, so it is especially meaningful to see our Section join with other NYSBA Sections who utilize Blogs as a tool to communicate with members and participate in discussions of legal issues in our industry. We are fortunate to have a Section that is comprised of diverse practitioners with a wide variety of specialties and I am confident the EASL Blog will reflect this diversity and offer a comprehensive survey of the practice of entertainment, arts and sports-related law with an eye always to the future of the business.

On behalf of the EASL Executive Committee I would like to thank EASL Blog Editor Elissa Hecker for all her hard work and dedication in the development of this new forum. Additional thanks to Barbara Beauchamp, web guru at NYSBA for her assistance on the technical side. All EASL members are invited to contribute to the EASL Blog and I encourage you to share your specialized experience, expertise and insight with your fellow members.

I look forward to seeing you all at EASL’s Spring Meeting on May 15th, 7:45am-11am, at the Yale Club, which will feature Stan Soocher who will discuss recent court rulings impacting transactions and litigation in the entertainment industry.

Ken Swezey is a partner with Cowan, DeBaets, Abrahams and Sheppard LLP

April 15, 2009

Upcoming EASL Section Media Law Handbook

Coming in late 2009: Another EASL Section Handbook

Pre-Broadcast and Pre-Publication and Pre-Broadcast Review
A handbook for the casual practitioner focusing on issues in media law

Kathleen Conkey
Elissa D. Hecker
Pamela Jones

The legal issues in the rapidly increasing field of media law multiply as cable stations, cell phone and internet companies, broadcasters, book publishers and film producers fight over both the need and space for content. As the volume of content grows, the need to review it for possible legal complications grows apace, and lawyers representing content providers in their corporate transactions need timely information in order to best assist their clients.

The Handbook will offer such lawyers a reference guide to help with basic themes and issues that pertain to practitioners in this field. It will also be a current statement of the law, with valuable cites to the most recent cases and a comprehensive index.

The topics to be covered will include:

• Pre-broadcast review
• Defamation
• The Invasion of Privacy Torts
• Hidden Camera and Wiretap Statutes
• Intrusion on Seclusion, including paparazzi statutes
• Publication of Private Facts
• Insurance Issues
• Rights and Clearances
• Other Newsgathering Torts
• Right of Publicity
• Copyright Infringement
• Trademark Infringement
• A Special Note on Minors
• Pranks, Challenges and Other Sensitive Subjects
• The Numerous Other Issues You Need to Be Able to Spot
• Forms and Sample Documents

Welcome to the EASL Section Blog

The goal of this blog is to provide a wonderful opportunity to create forums for debate and discussion relating to entertainment, art and sports law issues.

The blog will be able to communicate a sense of currency and reinforce our strong programming, affordable CLE, and pro bono efforts. It will give a voice to the Section, provide an opportunity to flesh out EASL website postings, and offer previews of and comments after programs, thereby sustaining and continuing the energy of discussions. It will also offer timely summaries and analysis of legislation, litigation and judicial opinions.

The Blog will be a wonderful opportunity to present opinions, articles and conversations that will be seen by countless others who are interested in your expertise and commentary. We look forward to hearing from you!

Elissa D. Hecker
Blog Editor

May 6, 2009

Getting Your Early Stage Venture off the Ground

The Technology and Venture Law Committee invites members of NYSBA to:

Getting Your Early Stage Venture off the Ground

Thursday, May 7, 2009
10:00am – 12:00pm
The Penn Club of New York
30 West 44th Street
New York, NY

Co-Sponsored by
The New York State Bar Association and MasurLaw
The barriers to launching a technology venture are lower than they’ve ever been, and the time to launch is now, while things are cheap. Savvy entrepreneurs are leveraging the power of open source tools, outsourced labor and guerilla marketing techniques to help them build quickly for success. This panel will address the minimum setup needed to build your company on a solid foundation. Topics include LLCs versus S Corps, founder’s agreements, the best tax set up, taking investment, employment and contractor agreements, stock option plans, trademarks, terms of service, privacy policies and more.
Moderator: Jonathan Lutzky, Esq., MasurLaw, Director, Early Stage Services Group
Mark Davis, DFJ Gotham Ventures, Associate
Douglas Sipe, CPA
Frits Abell, Progress Partners, Managing Director
Jeff Stewart, Monitor110, Inc., Founder and Chairman (Former Founder of Mimeo and Angel Investor)
David Friedensohn, BigStar Entertainment, CEO, University of Maryland Baltimore County, Professor of Entrepreneurship (former CEO, Upoc Networks, Former Director VH1)

1.5 CLE credits are anticipated for this program, contingent upon review and approval of meeting materials.

Space is limited: RSVP to Registration is on a first-come-first-served basis, first preference being given to Technology & Venture Law Committee members.

There is no charge for this program for Business Law Section members. Non-Section members will be invoiced at $59 for 1.5 CLE credits.

If you are unable to attend the meeting and would like to participate in the conference call, dial-in information is below:
Conference Call-in: 866.409.4300 (U.S. and Canada)
Participant code: 540628#
If you plan to call in, RSVP to
Steven R. Masur, Esq., Chair
David J. Mazur, Esq., Programming Co-Chair
Technology and Venture Law Committee

May 20, 2009


By Daniel J. Scott

If you were not already aware, the United States Treasury requires all citizens and residents of the United States (including all forms of entities, trusts and estates), and certain nonresident aliens and foreign entities (discussed below), who have a financial interest in or signature authority over foreign financial accounts (including bank accounts, brokerage accounts, mutual funds, debit and prepaid credit cards, or other types of financial accounts) with an aggregate value exceeding $10,000 at any time during the calendar year to report such accounts by filing a Form TD F 90-22.1 – Report of Foreign and Financial Accounts (commonly referred to as an "FBAR") on or before June 30th of the succeeding year.

Failure to file an FBAR can result in civil penalties of up to the greater of $100,000 or 50 percent of the amount in the foreign account at the time of the violation, as well as criminal prosecution resulting in fines of up to $500,000 and 10 years imprisonment. This means that clients with a financial interest in or signature authority over foreign financial accounts exceeding in total more than $10,000 for the 2008 calendar year have just over a month to file an FBAR. Subject to some exceptions, the types of accounts that a person must disclose include any foreign account (i) of which such person is the owner of record or in which a person is acting as an agent, nominee or otherwise on his or her behalf, (ii) over which such person has signature authority or can exercise power comparable to signature authority, (iii) that is owned by a corporation or partnership in which such person owns more than 50 percent of the shares or voting power (in the case of a corporation), or more than 50 percent of the profits or capital (in the case of a partnership), and (iv) that is owned by a trust in which such person has a beneficial interest in more than 50 percent of the assets or receives more than 50 percent of the income.

Due to a recent change in the FBAR instructions, nonresident aliens and foreign entities are now required to file an FBAR disclosing all foreign financial accounts (if the aggregate value of such financial accounts exceeds $10,000 at any time during the calendar year) if they are "in and doing business in" the United States. While the FBAR does not provide a definition of "in an doing business in" the United States, the IRS has recently published guidance on its website. According to the IRS website:

Whether a person is considered, for FBAR purposes, to be in, and doing
business in the United States is determined based on an analysis of the facts
and circumstances of each case. Generally, a person is not considered to be in,
and doing business in the United States unless that person is conducting business
within the United States on a regular and continual basis. Persons who are merely
visiting the United States or who sporadically conduct business in the United States,
are not in, and doing business in, the United States for FBAR reporting purposes.

With respect to entertainers and athletes, the IRS states that "artists, athletes and entertainers who are not citizens or residents of the United States and who only occasionally come to the United States to participate in exhibits, sporting events, or performances, do not have to file FBARs." Therefore, an entertainer or athlete who is neither a citizen nor resident of the United States may nevertheless have to file an FBAR disclosing all of his or her foreign financial accounts if he or she regularly comes to the United States to participate in exhibits, sporting events, or performances.

With the Obama administration cracking down on offshore tax havens and perceived abuses in the international banking arena, the IRS will most certainly closely scrutinize the disclosure of foreign financial accounts. The last thing any entertainer or athlete wants or needs is negative publicity, and even the appearance of an attempt to evade taxes or related reporting can cause an entertainer or athlete to lose favor with the public, which can be detrimental to his or her career. Therefore, it is imperative that entertainers and athletes seek professional tax advice to ensure that all U.S. reporting requirements are met.

Daniel Scott is an associate at Chadbourne & Parke LLP in New York. His practice focuses on domestic and international estate, tax and wealth planning for high net worth individuals, their families and businesses, including issues particular to entertainers and athletes.

May 31, 2009

Copyright Office Improves Processing Time and Service

From the U.S. Copyright Office as of May 29, 2009:

A recent Washington Post article focused on the lengthy processing times the Copyright Office is experiencing in wake of its transition from a paper-based to an electronic processing environment. The Copyright Office is working diligently to improve processing times and service to the public in general. To clarify, current processing times by filing method are as follows:

E-Service with Electronic Deposit: 5 months for 90% to be completed; 33% completed in 2.5 months
E-Service with Physical Deposit: 6.5 months for 90% to be completed; 33% completed in 3 months
Paper Claims: 18 months for 90% to be completed; 33% completed in 12 months
You can save money and time and help us improve our services by filing claims online via eCO. Please visit for more information.

August 31, 2009

Pro Bono Clinic at Actors' Equity Association

Elissa D. Hecker and Phillipa Loengard
EASL Section Pro Bono Steering Committee Members

On Monday, September 14, the EASL and IP Sections will be co-sponsoring a Pro Bono Clinic at Actors' Equity Association. The Clinic will take place between 4:00 and 7:00 p.m. at 165 West 46th Street.

If you would like to volunteer for one or more of the 30 minute time slots, please email Elissa D. Hecker at and specify your contact information (name, firm/company, phone number and email address), which time slot(s), area(s) of expertise, and whether you are an EASL and/or IP Section member.

If you do not have pro bono liability insurance, you may be covered under EASL and IP's policy for this Clinic. Please also notify Elissa if you need such coverage.

September 17, 2009

City Bar Program of Interest


Wednesday, October 7, 2009 at 6:30 p.m.
42 West 44th Street, New York, NY 10036-6689
Committee on Communications and Media Law

How has copyright law's fair use doctrine evolved in an era when news aggregation, social networking, and other technologies combine and transform content from endless sources and media?

How transformative are on-line montages and mash-ups? Is the aggregation of headlines or content from news providers infringement or fair use? Does posting copyrighted content on a user's Facebook or MySpace page undermine the market for that content? When does a blogger's summary of an article appropriate enough content to constitute copyright infringement?

Please join us to hear this esteemed panel offer a broad range of perspectives on these and other issues from the bench, bar, media industry and legal academy.
* * *
HON. LEWIS A. KAPLAN Judge Kaplan has served as a U.S. District Court Judge in the Southern District of New York since 1994. He is a widely respected jurist who has explored copyright issues in many significant decisions such as Bridgeman Art Library v. Corel Corp., Universal City Studios, Inc. v. Reimerdes and Thomson v. Larson.

LAURA MALONE Ms. Malone is the Associate General Counsel, Intellectual Property Governance for The Associated Press. Ms. Malone has led efforts to create polices and procedures, and been involved in recent high-profile litigations, to protect the AP's intellectual property.

WILLIAM W. FISHER. Professor Fisher is the Hale and Dorr Professor of Intellectual Property Law at Harvard Law School and Director of The Berkman Center for Internet and Society. A renowned scholar of intellectual property law and legal history, Professor Fisher recently published Promises to Keep: Technology, Law and the Future of Entertainment (Stanford University Press 2004).

SUSAN KOHLMANN Ms. Kohlmann is a litigation partner at Jenner & Block. Among the numerous cases she has litigated is Viacom's current copyright lawsuit against Youtube and Google, and she has also litigated high-profile cases involving the Steinbeck and Warhol estates.

ANDREW DEUTSCH (Moderator) Mr. Deutsch is a partner in DLA Piper's New York office and a member of its Intellectual Property and Technology practice group. Among other matters, he was lead defense counsel in National Basketball Association et al. v. Motorola, Inc., which interpreted the scope of the "hot-news" misappropriation tort, and has represented options and stock exchanges in important intellectual property cases in that context.

September 29, 2009

Google Fairness Hearing Adjourned

Judge Chin has adjourned the fairness hearing scheduled for October 7th. The Judge agreed with many of the Copyright Office and Department of Justice's comments, in that there are many potential positive aspects to a settlement.

Judge Chin ordered the parties to the settlement to appear on October 7th for a status conference in order "to determine how to proceed with the case as expeditiously as possible".

The link to a PDF copy of Judge Chin's order is: here.">">here.

October 9, 2009

Entertainment Business Law Seminar @ CMJ Music Marathon & Film Festival

Friday, October 23, 2009 8:00am – 4:55 pm

NYU, Kimmel Center , Floor 10, Richard L. Rosenthal Pavilion

60 Washington Square South, New York, NY

As part of the sprawling 5-day CMJ Music Marathon & Film Festival, CMJ's comprehensive CLE program on Friday, October 23, not only energizes the members of the entertainment business legal community, but also provides an invaluable sounding board for all CMJ Music Marathon & Film Festival registrants, no matter their areas of expertise.

This year's event, titled The New Deal: Music and Film in a Brand New Environment is presented along with the Entertainment, Arts and Sports Law Section of the New York State Bar Association. CLE @ CMJ includes panel discussions and networking sessions hosted by speakers at the center of the industry discussing critical legal topics including Internet start-up litigation, online privacy rights, ethical negotiation practices, the basics of independent filmmaking and future trends in the film and music industries. MCLE-accredited.

CMJ is thrilled to highlight this legal forum with a Keynote Address by John Scher, Co-CEO, Metropolitan Talent, Inc. Beginning his journey in live music presentation at the age of 19, Scher has built a diverse and enormously successful live entertainment company that has challenged conventions of live music performance and distribution.

Information & Registration Details:

Three special discounts on registration for as low as $199.
Register SOON and visit for more information.

October 15, 2009


By Joel L. Hecker

On the October 13, 2008 President Bush signed into law the 25 page “Priority Resources Organization for Intellectual Property Act of 2008," which is more commonly known as PROP IP. This law, among other things, created a new bureaucracy headed by an Intellectual Property Enforcement Coordinator (IPEC) to be appointed by the President with the advice and consent of the Senate. The position has informally been referred to as the “Copyright Czar” or “IP Czar.”

On September 28, 2009 President Obama appointed Victoria Espinel to the position, subject to confirmation by the Senate.

Ms. Espinel is an expert on international copyright enforcement. She was the first Assistant United States Trade Representative for Intellectual Property and Innovation at the Office of the U.S. Trade Representative and served as the Chief U.S. Trade Negotiator on IP subjects. She has also served as an advisor on IP issues to various House of Representatives and Senate committees, taught IP law, and is the founder and president of Bridging the Innovation Divide, a not-for-profit entity.

The appointment has been praised by various rights holder groups representing the music, entertainment, photography and other affected industries.

October 19, 2009

Lost and Found: A Practical Look at Orphan Works Program

The Association of the Bar of the City of New York
42 West 44th Street, New York, NY 10036-6689
Lost and Found: A Practical Look at Orphan Works
Tuesday, October 20, 2009
6:00 – 8:00 pm
Meeting Hall, New York City Bar Association, 42 West 44th Street
How should the law treat “orphan works”? Please join us as we discuss proposals that would enable copyrighted works to be used when their owners cannot be located to obtain necessary permissions. What should be the obligations of potential users with respect to searching for copyright owners? How should infringement claims be handled if a copyright owner emerges? Do different types of copyrighted works present unique issues? What roles might registries and
recognition and detection technologies play? Our speakers will address these and related questions, focusing on orphan images.
Brendan M. Connell, Jr., Director and Counsel for Administration, The Solomon R. Guggenheim Foundation
Frederic Haber, Vice President and General Counsel, Copyright Clearance Center, Inc.
Eugene H. Mopsik, Executive Director, American Society of Media Photographers
Maria Pallante, Associate Register for Policy & International Affairs, U.S. Copyright Office
Charles Wright, Vice President and Associate General Counsel, Legal and Business Affairs, A&E Television Networks
June M. Besek, Executive Director, Kernochan Center for Law, Media and the Arts
This program is free and open to the public; registration is not required.
Co-sponsored by the Art Law Committee (Virginia Rutledge, Chair) and the Copyright and Literary Property Committee (Joel L. Hecker, Chair) of the New York City Bar Association, in conjunction with Columbia Law School’s Kernochan Center for Law, Media and the Arts.

November 3, 2009


Monica Pa is an associate with Davis Wright Tremaine LLP who attended the CMJ seminar. Here is a summary of her general report of the panel's discussion, but questions concerning the information provided at the seminar or the accuracy of advice given should be referred to the panel members.

The welcoming remarks were delivered by Ken Swezey, Esq., who is the Chair, of the Entertainment, Arts & Sports Law Section, New York State Bar Association, and a partner at Cowan, DeBaets, Abrahams & Sheppard LLP, New York City.

The program was introduced by Joanne Abbot Green and Rebecca A. Frank, Esq.
“Recession Deal Making”

The moderator was Susan Butler, Esq., Executive Editor of Music Confidential, Butler Business & Media LLC.

The panelists were: Helen Murphy President, International Media Services, Inc.; Jonas Kant, Esq. Senior Vice President, Business and Legal Affairs, Sony/ATV Music Publishing; Michael Poster, Esq., partner at Sonnenschein Nath & Rosenthal

General Discussion Regarding the Publishing Industry During A Recession

Helen spoke about trends in the film and television industry in LA. She observed that publishers are still deriving income from synch licenses in advertising and TV, but generally, the industry is under tremendous pressure. Studios are cutting back on both internal spending and outside talent. For example, terms that were once standard are not being given out anymore. T&E for talent is being cut, which was historically sacrosanct. And these cuts have had a ripple effect throughout the industry.

The panelist observed that publishing is actually doing OK, while the rest of the music industry is suffering. Joel observed that “this is a changed environment, even from last year.” He noted that there has been some increase in performance-side royalties (because of streaming services like Rhapsody and Pandora), and this may increase if, for example, iTunes starts a streaming service. But this increase isn’t sufficient to offset the tremendous loss in CD sales.

Sale of Catalogues

The panel spent a good deal of time discussing this issue. The Rogers and Hammerstein catalogue was sold this year, but this catalogue and its sale was unusual for a variety of reasons. In this economy, many catalogues are not up for sale. There are few buyers, and many sellers are not compelled to sell, so there aren’t many “fire sales” happening. The owner of the catalogue is going to wait for the economy to rebound before going into the market.
Joel Schoenfeld pointed out that, while many catalogues are not formally up for sale, some sellers may be informally testing the waters (e.g., “I’m not for sale, but I’m willing to talk”). So whether a catalogue is up for sale depends on knowing who to ask and what to say.
It’s also unclear how catalogues are being priced. A deal can include bells and whistles that exaggerate the catalogue’s sale price, such as “kickers” or “earn outs”. With respect to “earn outs”, in a perfect world, if certain targets are hit, only then would the total price of the deal be achieved. Michael Poster pointed out that “earn out” provisions are incredibly risky. The buyer has to jump through hoops and meet the seller’s (perhaps inflated) expectations, may also incur high deal costs, and such provisions may likely end up in litigation. With an “earn out”, the seller has some control over the buyer’s future conduct and has a right to audit.

Michael pointed out that a notable exception to the lack of “fire sales” is the case of private equity funds that purchased publishing catalogues during boom times and now have to unload this asset. Accordingly, private equity firms are selling their catalogues for cheap. Jonas pointed out that Sony is happy to see these catalogues go up for sale by these private equity firms, and has been able to buy these catalogues at a discount.

Alterative Income Stream and Advertising

With declining music income, people are looking creatively at ways to attach other non-traditional income streams. Helen pointed out that the agent’s business model has changed. Agents and labels have been aggressively attaching a percent of the talent’s various income streams (e.g., the emergence of 360 deals). In light of all these hands in the artist’s pockets, artists are now trying to do something different, which is facilitated by the fact that digital distribution is possible, and the rights business is becoming more transparent.

On the other hand, while there has been an obvious decline in CD sales, music can be monetized is creative and unpredictable ways. No one expected cell phone ring tones to take off, and now music video games generate a substantial and unexpected source of revenue. There is also the Beatles Cirque de Soleil show, and there will soon be one for Elvis. The biggest growing source of music revenue is digital content. Publishers and traditional music industry have been slow to incorporate these developments. Digital content is now 40% of the market. Maybe the industry will finally be forced to shift when digital content is 70% of the market.

The panel discussed whether, at this point, substantial income can be derived from advertising. This was one question that seemed to really boggle the panel. One panel member noted that it can be done. For example, Google derives almost 90% of its income from advertising. There may be more targeted advertising. For example, Google is best at linking ads with digital content (using an algorithm), but perhaps there will be other ways of linking content with advertisers, or more integration of advertisement with content.

Jonas Kant, speaking from his perspective as the music publisher, noted that publishing is generally an ad based income, and there are fewer ads now. When an advertiser, filmmaker, or television program selects a song to synch, they want to go with “a sure thing”, meaning a song that resonates with the audience. Therefore, well-known songs are more often being selected because this may resonate more with the audience, and accordingly, advertisers are unwilling to go with lesser-known artists.

* * *
“Starting From Zeroes: Start-Ups & Digital Distribution”

The Moderator was Lisa Weiss, Esq., Partner, Sonnenschein Nath & Rosenthal LLP.
Panelists: Aileen Atkins, General Counsel, Napster, Inc.; Mark Eisenberg, Esq. Executive Vice President, Global Digital Business Group, Sony Music Entertainment, Inc.; Drew Lipsher, Esq. Partner, Greycroft LLC.


Lisa gave a background on copyright law and the DMCA. She summarized recent safe harbor decisions, including the summary judgment decision in favor of Vios. In one decision, the court held that failure to use filtering technology (which is widely available) does not undermine the applicability of the DMCA Safe Harbor provision.

Drew, as venture capitalist, discussed what VCs consider when deciding whether to invest in a digital content service. He was asked how important was it that a business have a license before launching. The issue is whether a service should build a business first and then get a license, or get the licenses first and then build business. “Ask forgiveness, not permission?” As an investor, his preference is for the companies to get permission first because the risk of litigation– from a financial return strategy – is unpredictable. But he may be more liberal depending on the service’s proposed business model (i.e., whose behind the service, whether the service has good terms and conditions, whether the company is more established, etc.) A separate business question is whether there is any value in a user generated model, whether advertisers are going to pay the service, and whether the service has any hope of generating a profit.

When asked how a new business can balance the cost of a license versus the cost of an eventual settlement/litigation, Drew characterized this situation as: “death by firing squad or death by hanging.” The service knows that it is going to have to pay; it’s just a matter of ascertaining what will be their greater cost. He observed that this is a return on investment issue, which is largely driven by time. Moreover, services face the problem that the process of obtaining licenses is fraught with defragmented rights in a work, and the lack of transparency.
Aileen observed that, for many start-up services, they will not be able to get a license unless they can convince the content owners they have a viable business model, and then the question becomes the terms and conditions of the license. So for many start-ups, the content companies are actually the ones determining the business model for them.

Marc, who represents Sony, gave the label’s perspective. The general assumption is that everyone wants to make money. What labels look at is the service’s business model and its path to profitability. “We know that music is popular and consumption of music is high – but this isn’t a business model.” While labels do not need the services to prove profitability on day one, there needs to be some way to pay for the license, which is why it’s necessary to look at the overall credibility of the service. “Just because you have an idea doesn’t mean that you can be licensed.”

All business must pay their suppliers. A business rarely asks the landlord to give them space for free. For a restaurant, there can be a great chef, great cuisine, excellent space, but people are at the restaurant for the food. If food is what customers are going to eat, then the restaurant should pay for the food. In this case, the sine qua non of the start-up service is the musical content, so why is there a debate about whether the labels should be getting paid for this.

Aileen pointed out that services want to pay for the music they use, it’s just impossible to wrangle all the different interests (publishers, labels, etc.) prior to launching the service. There is no consistency in the process or terms. This difficulty is exacerbated by the fact that labels are trying to hold onto a business that is in decline, and are unable to shift their business approach to accommodate digital content.

Drew pointed out that the problem with the “restaurant” analogy is that a restaurant only has to negotiate with a single landlord, and there is a standard in pricing, a known market. The difference is that, in the licensing process for music, the terms are constantly shifting. A landlord doesn’t ask to see a business model when renting out space. A music service wants to be legitimate, but the terms and rates are constantly shifting. As such, there are tremendous inefficiencies in music licensing.

Marc responded that there is a difference between frustrations with market inefficiencies and throwing up your hands and acting in blatant disregard of copyright law. When asked whether the terms of a license depend on whether the service comes to Sony before launching, versus launching first and then seeking a license, Marc said that rates depend on how the service operates. An infringer isn’t necessarily going to do better in terms of rates. If someone comes to Sony having launched first, there may be a premium that Sony exacts. On the other hand, if the business is successful, it may have more negotiating leverage.

Aileen was asked whether, if she were now mentoring a young service, what her advice would be. She said that Napster launched in 2001 with only a handful of licenses. At that time, no one knew what they were doing. The environment now is completely different than in 2001. The financial cost for litigation is substantial, which includes both time as well as attorneys fees. On the other hand, the costs associated with obtaining a license from content companies are also high.

Moreover, services may develop and change as it grows. For example, Facebook did not have an obvious path to profitability but it had millions of users and a huge platform. When Facebook launched, it didn’t necessarily realize that there was going to be a huge business for games (which could now generate billions of dollars in revenue). It’s unclear how Twitter is going to make money, but lots of people are using it, so we’ll just have to see.

In terms of music publishing, Drew observed that rights disaggregation is the biggest problem. A licensee can go to a publisher, get rights and rerecord the work. Rights have to come back together because digital content is increasingly sophisticated. For example, all services now include video, so this implicates a host of issues, including synch and publishing rights. With traditional distribution of music, the labels use to take care of publishing. How many different ways are there to divide a pie? There cannot be meaningful negotiations with this many competing interests. If the labels do not want a compulsory licensing system, and do not want arbitrators saying what the rates are, then they need to come up with a way to make licensing more regular, standard and systematic.

* * *
“Footprints In Cyberspace: Following Consumers Online”

Moderator, Marc S. Reisler, Esq., Partner at Holland & Knight.

Panelist: Flora Garcia Privacy Director, Time, Inc.; Laura Stack, Esq. Division of Privacy and Identity Protection, Federal Trade Commission; Shane M. McGee, Esq. CISSP, Partner, Sonnenschein Nath & Rosenthal LLP.

The panel addressed privacy issues by using a hypothetical multimedia entertainment company to discuss various digital projects that this company wanted to launch.

The first hypothetical involves the company’s music division which wanted to launch a website to promote the latest release from their 12 year old pre-teen pop sensation named Rhoda. Rhoda’s website featured a section on “Rhoda Memories” where visitors could share online (including videos or picture format) their memories or personal encounters with Rhoda. The website could also include a section called “Rhoda dress-up” where visitors could post pictures of themselves dressed as Rhoda.

Flora said that, from an in-house perspective, the first question is whether users are going to have to register online, and if so, would they be asking only for their email address and user name, or would they be asked for additional information. Another issue is that, since this website concerns and likely targets younger consumers, the Children’s Online Privacy Act (“COPA”) is implicated. This law prohibits companies from marketing to children 13 or under without parental consent.

If the website is going to market to children under 13, then it needs to obtain verifiable parental consent. Even if the website only collects an email address, the company still needs to send an email to the parent to confirm that their child has permission to register with the site. The email to the parents should also notify them of what type of information was collected, whether information will be shared with third parties, whether there is a way to opt-out of the sharing of information or receipt of emails, and how the company is going to protect and use collected information.

COPA provides a sliding scale of necessary parental verification depending on the type of information collected and how the information is being used. If the website wants to collect additional information from the child, like what school they go to or their favorite mall, and perhaps share this information with third parties, then the company needs to provide additional information when obtaining parental consent. The website may need the parent to sign a form, provide credit card information to confirm their identity and consent, etc.

Laura represented the view of the FTC. She noted that deceptive practices are pretty straightforward: do not create a material deception that will mislead a reasonable consumer. If the website is aimed at children, then the standard is the reasonable child.

COPA generally requires a privacy policy, notice of certain rights (what are you collecting, why are you collecting it, etc.), what do you do to safeguard information, and it provides requirements for verifiable parental consent.

This hypothetical website also involves children disclosing more than just an email address because it permits users to share Rhoda photographs and stories. As such, even though the initial registration does not ask for any information other than an email address, because of this feature, COPA may treat this website as collecting personal information from children, which triggers heightened requirements of verifiable parental consent. Moreover, even if the website does not specifically target children, if the service has reason to know that children are accessing their site, then it needs to comply with COPA. The website should use some filtering technology, and/or hire moderators for the website (which can be outsourced). There is software available to websites to strip personal information from users (with mixed success).
The FTC applies the standard of “what would a kid normally do, what should you be doing to keep kids safe.” In seeking parental consent, there needs to be transparency. Parents need to understand what they are saying yes to. This is especially the case where the website includes posts of children’s photographs given that there is such a problem with child pornography. A practical advice for websites for children is to stay away from all photographs unless the service uses a good moderator.

Aside from COPA, the FTC looks at whether the website has provided full and accurate disclosures. For example, was there a full disclosure that the child’s information would be shared to marketers? Do the parents realize that their child is going to be on marketing list? Where the company’s subsidiaries, divisions or affiliates are marketing to the user, its unclear whether this counts as a “third-party marketer.”

Motion Picture Division

The second hypothetical involves the motion picture division wanting to launch a new website to promote its new PG13 film. The website includes the ability to purchase movie related gear and merchandise, and visitors will be able to register to receive texts from their favorite characters from the film.

Because this film is PG 13, we can assume that its a general purpose site targeting audiences over 13 years old. The website does not necessarily need to comply with COPA, but when users register for the website, the company should utilize an age-screening process that is age neutral (e.g., the website can’t just ask whether the user is “over 13.” The website also needs cookies to prevent “back buttoning” (if the user realizes that he or she will be prohibited from accessing the website because he or she initially truthfully said that they were twelve, this prevents the child from hitting the “back” button and changing their initial selection).
Data security is about avoiding unintentional disclosures of information. Financial information and SS# are the big concerns. So websites that collect financial information need to utilize reasonable security measures. Even if it is not engaged in any financial transaction, if the website requests credit card information (even if only to confirm parental information), it still needs to comply with “PCI standards”, which are industry standards that credit card companies have developed for security on the Internet.

Video Game Division

The third hypothetical involves a video-game division that wants to launch a website where it can have attorneys who represent clients in parking court to sign up. [This hypo didn’t make a lot of sense to me.] The video game division intends to sign up this website as a member of a behavioral advertising network that uses a click-track company (meaning, the browsing behavior of website will be tracked and it will share the data with targeted advertising).

The concern is that this website should not sell information that will permit marketers to identify any user; instead, they should just receive information about anonymous IP addresses that the marketer could pop ads to. Generally, where a third-party advertising network wants to collect information about a user’s web behavior, the privacy policy should disclose the fact that the website is selling information to third parties, and must make clear that there is an opt-out option (although to be safe, the website should use an opt-in option instead).

The FTC has published guidelines on behavior advertising based on browsing behavior, and guidelines have also been promulgated by trade groups. The FTC is in a “wait and see” mode; they are going to give self-regulation a final chance.

* * *

The Luncheon Keynote Address was given by John Scher, co-CEO of Metropolitan Talent Ons
John started his address with the general bleak observations that the concert business is in chaos and record labels are failing. His view is that the labels were counting the merchandiser’s money, counting the promoter’s money, and counting the artist’s money, with their hands out to take a piece of these income stream, but they weren’t trying to make their own money. He talked about how labels historically paid as little as possible (there was a time when labels paid only 2 4% of royalties to artists, or paid with Cadillacs). Artists had to fight to get a decent royalty, and once they get a royalty, they had to force the labels to pay them the full amount due.

The concert promotion business is also struggling, especially since the business of concert promotion has shifted over the past few decades (especially, consolidation of the concert business). Currently, Live Nation is the largest and only public corporation in the concert business, but it has never made a profit. When Clear Channel spun off its concert division into Live Nation, John claims there was about 3 billion debt written off by Clear Channel. “Live Nation was a disaster for Clear Channel; there was no synergy.” The lack of profit by Live Nation seems inconsistent with its monopoly status. It controls the shows, ticketing, the “essence of the business”. The reason why it is not profitable is because Live Nation is a monolithic company, which is only going to get bigger if its attempt to merge with the largest ticketing company (Ticketmaster) is successful.

John spoke about the history of the concert business. He said that in the 60’s the only acts that toured were successful artists pushed by the labels. As the music concert business matured, promoters realized that they needed to get involved in youth culture to know what hot acts were emerging. So concert promoters began working with young artists to develop them.
Historically, the promoters’ deal with the artist was that there would be a guarantee. Once gross ticket sale came in, the promoter would pay its bills, pay the guarantee, the next 15% went to the promoter, and anything left was split between the artist (60%) and the promoter (40%).

As the industry evolved, artists were not making a fair share on the recording side so they needed to make more from concerts. The deals began to change. First, artists received a reasonable guarantee, but started demanding that the split of net profits be increased from 60% to 85%. Then, guarantees started increasing.

John observed that “All graduates from Wharton should go to hell.” Since the artist’s business managers took in 5%, they needed to justify their existence by pressuring promoters because they couldn’t pressure labels (which were large companies with sophisticated lawyers). The guarantees increased substantially, which meant that promoters took on greater risk and “the deals got tighter.”

The concert promotion business was stable those day because of Premiere Talent and its owner, Frank Barcelona. Premiere was the largest talent agency in the music industry. Frank understood that promoters needed to make a fair living so he instituted the idea of paying the artist 85% of the net profits (not gross) but no guarantees (so the promoter would never lose). This idea didn’t last because the business managers insisted on a guarantee.

As a result, John contends that deals in the concert business are extremely one-sided: enormous guarantees (regularly $500K-1 million) plus 90- 95% net. The venue receives income from ancillary sales (concessions and service or ticketing charges). Profit margins are incredibly thin, and there can be no real competition with Live Nation. Its now extremely difficult for any party to make money in the concert business. Superstar acts do well because they receive huge guarantees, but concert promoters are unable to afford any artist development. “The Deal has strangled the industry.”

John then discussed how 360 deals with artists put additional pressure on the concert business. Labels wanted a percentage of the artist’s merchandise and/or touring, but they do not provide any additional service in exchange for this new income stream. John warns that, if this continues, there will not be a live music industry that anyone wants to participate in. Attorneys need to make deals that are fair and reasonable for all parties. Do not try to take advantage; instead, the best deal is one where neither side in 100% satisfied. Record companies need to stop holding their hand out, and the industry needs to be better at protecting intellectual property. The industry needs to realize that, without artists creating content and performing, then there will not be a music industry.

* * *

“Ethical Negotiation Practices”

Panelists: Howard Siegel, Esq., Partner, Pryor Cashman LLP, and Professor John P. Sahl Faculty Director, Miller-Becker Institute for Professional Responsibility, The University of Akron School of Law.

Howard and John opened the discussion by observing that there is a general preconception that entertainment lawyers are unethical. Namely, that the artist’s criminal problems can be attributed to the their lawyers. But this is because the media is focused on celebrities, and entertainment attorneys are in their orbit. There are few news stories about non-celebrities (or their lawyers).

Practical Tips

• Do not “shoot from the hip” when giving advice to individuals about potential legal problems because the standard for finding a lawyer/client relationship is a low one. By giving quick advice, you run the risk of exposing yourself to potential malpractice liability.
• Always Have a Retention Letter. Contingency fee arrangements must be in writing. In New York, an attorney must have a written retention letter even if he or she has a non-contingency relationship if the fees will be in excess of $3000. The letter should also make clear the scope of representation. In taking on new business, keep in mind what is your level of competency and expertise.
• Communicate. The key source of trouble is lawyers who fail to maintain adequate contact with their client.
• If you receive a letter of inquiry from a disciplinary committee, participate fully and promptly. The key is to short circuit a full disciplinary inquiry. Even if you believe the disciplinary complaint is baseless, cooperate with the investigation because you can be reprimanded just for failing to respond.
• Analyze your errors and omissions policy, and be sure you know what is covered. Statistically, law graduates will have 3 to 5 malpractice actions initiated against them, which does not include disciplinary proceedings. Have an office policy about client files, client confidences, how the phone is answered, how you advertise for services, etc.
• Fee Disputes. because a client may elect mandatory fee arbitration (in New York), your retainer agreement should not be inconsistent with this. If there is a fee dispute, don’t take the disputed amount out of the client’s trust account.
• Ethics of Negotiation. You can refer to the law and other considerations in negotiating with third parties. When negotiating contracts, your client needs to agree to the terms of the agreement. If you are given oral authority for a range in negotiations, its best to put this authority in writing.
• Have a Scrubbing System. All drafts of agreements are discoverable in any subsequent litigation and can be used against you. So consider whether you should use oral communications instead of email.
• Be careful about threatening criminal action in communications with opposing counsel. This is not prohibited, but you should have some basis for threatening it rather than using it as negotiating leverage. By contrast, an attorney may not threaten to bring a disciplinary action. Although you can remind opposing counsel that they are crossing the line, you cannot blackmail or threaten a disciplinary action because you are obligated to report all disciplinary violations.

Representing Multiple Parties

In representing multiple parties (e.g., musical group), or in motion picture deal where you represent both the producer and director, bear in mind that groups always get along great in the beginning; “every divorce started out in a mad love affair.”

When representing multiple individuals, there may be differing goals and expectations. Rule 1.7 provides that a group’s lawyer may represent an individual member of the group provided the representation is not inconsistent with the group’s interest. This rule also provides a list of possible conflicts of interest, but try to “listen to your gut.”

You may continue to represent the group and/or stay involved in representing client where there is a potential conflict of interest if you obtain informed consent (and the conflict does not arise in litigation). Informed consent includes a full disclosure of the benefits and risks of continued representation, and a discussion of alternatives.

A multiple representation may require the lawyer to provide the client with a new or revised disclosure statement, retainer agreement and at least a written waiver. Courts are more likely to uphold waivers signed by clients when it provides specific and complete information about all possible conflicts.

Truthfulness with Persons Other than Clients

Aside from the obvious duty of be truthful to your client, you also have an obligation not to make false representations of material fact to third parties on your client’s behalf. And you also may have an affirmative duty to disclose material facts when necessary to avoid assisting clients in a fraudulent action. A “material” fact is broadly defined as any fact that will change a person’s course of conduct. Finally, a misrepresentation can occur if you incorporate or affirm another person’s false statements.

This begs the question of the difference between commercial puffery versus false representation. Statement that may be the “strict truth” may be technically true, but if you suggest a falsity, this may also subject you to a disciplinary violation. In attempting to create a bidding situation, take the high road. Permissible commercial pufferies are statements of opinion. You cannot misrepresent a fact.

* * *

“From Treatments To Royalties: The Basic Lifespan Of An Indie Film”
Moderator: Susan Bodine, Esq., Cowan, DeBaets, Abrahams & Sheppard LLP.
Panelists: Madhu Goel, Esq. Director, Legal & Business Affairs, A&E Television Networks LLC, Dan O’Meara Green Film Company; Marc Simon, Esq. Partner, Cowan, DeBaets, Abrahams & Sheppard LLP.


Madhu first set forth the basic development deals that studios have with a producer. This can range from (a) an exclusive deal (where the producer is tied to the studio, which may be costly but then this gives the studio a lot of freedom) (b) a first-look deal (the studio has right of first refusal on a project); or (c) a housekeeping deal (where the studio provides some support, like an office space and a secretary), which is usually offered to a younger producer.

If there is no overall deal with a studio, an independent producer can pitch an idea, treatment, or screenplay to a studio through a pitch meeting. In order for the producer to protect his or her idea, he or she should try to get the studio to sign an NDA/confidentiality agreement prior to disclosure of the idea, which ensures the confidentiality of the pitched idea. But, if the director/producer is just starting out and doesn’t have any leverage, it may not only be difficult to have studio sign the NDA, the studio may have the director/producer sign a submission release, which is an acknowledgment that the pitch may not be unique, that the studio receives millions of pitches all the time, and even if the studio decides not to do business with that person, there is a chance that it will develop a property that is similar to the one that was pitched, and the producer promises not to sue the studio. Bear in mind that ideas are not protectible under copyright law, only the expression of ideas are protected. So if the expression of the producer or director’s idea is expressed in a “treatment”, then the treatment is protected by copyright law, and any derivate work created based on the treatment may also be barred. The director or producer, however, may have other state law claims, like breach of implied contract, but this may require a showing of novelty, depending on whether you are in New York or in California.

Option Purchase Agreement: Deal Points

Generally, the buyer of option rights wants the longest period of time to exercise the option. The standard option period is 12-18 months, but this can be much shorter. The price for the first option may be a percentage of the purchase price of the property, based on a higher back-end price or a percentage of a the film’s budget. Note that you may want flexibility in determining the option price. If the film development is only at the beginning stages, the parties don’t know the type of studio or the financiers who will support the project, so someone selling the rights does not know whether they are going to be involved in a $20 million or $80 million budget movie.


Two key concepts to keep in mind: (1) the waterfall; and (2) control by investor. All the other deal terms tend to be pretty boilerplate, but these are two issues can be deal-breakers.
“The Waterfall” is shorthand for a provision in a financing agreement that describes how the film’s profit will be allocated. The money is paid out in tiers. Most investors are concerned with where they are located “in the waterfall”, meaning their priority in being repaid their investment. Typically, two interests will be paid first: (1) the film’s sales fees (must hire an attorney and sales agent) and (2) the costs associated with a full theatrical delivery. After all the investors recoup their investment and premium, then the remaining money is divided between the producers, partners, investors, and other interests.

The second issue is the extent of control that an investor can have over what the producer does. The investor may have some general rights. For example, whatever was represented to them about the film’s budget and financing cannot change materially without the investor’s approval. (There may be a “most favored nation’s” clause providing that the producer cannot make any other finance deals on terms that are better than the terms that the producer has with that investor.) An investor may want to have some meaningful approval or consultation concerning the sale or distribution of a film, or some right to have control over key creative decisions. All of these deal terms will depend on how much leverage the respective parties have.

Creation, development, and production are the mechanics of film. The goal is to have the production team moving forward. A producer will want to create an entity (typically an LLC) to own the film, which facilitates accounting, clarity of ownership, and limits liability.
Some production considerations include:

• Location. Many states offer substantial tax credits, and some are transferable credits that can be sold. In New York, film tax credits can be turned into actual cash down the road, a money back credit, which can be substantial. Another issue is that film financing may be a tax deduction, which can be a selling point when trying to raise funds from wealthy individuals. An equity investor may be able to “write off” 100% of his or her capital contribution in the current year of production.

• Chain of Title Issues. Who owns the underlying property rights in the film. All the ownership agreements between producers and investors should explicitly address who owns the film, and there should be no conflicts among the various agreements so the LLC can sell the film without any issues.

• Clearly Defining the Term “Budget”. Many financing terms are based on the budget, such as bonuses.

• “Back End”/Contingent Compensation or Profit Participation (also known as the “producer’s share”). In an actor’s agreement, there may be a provision that the actor may recover 5% of the “producer’s share” as part of the actor’s contingent compensation.

• Writer’s Agreement. One issue may be the writer’s credits, including whether the writer receives shared or sole writing credit. The writer’s compensation and/or bonus may be based on his or her respective credit. There are certain industry standards for agreements with writers.

4) DISTRIBUTION: Susan Bodine

The process for obtaining film distribution is currently going through substantial changes. Its becoming increasingly rare for an independent film to be purchased wholesale by one distribution company who will pay a large advance and distribute the film worldwide on all different platforms. The film industry is reconsidering how films get seen and monetized. Right now, its hard to say “this is how it works” because this is a time of great experimentation. Traditionally, the goal for independent filmmakers was to have the film financed with private equity, then the film debuts at Sundance. The producers hire a great indie sales agent and the day after the film’s debut, it is sold to a distributor and then wins a bunch of Oscars.
Newer and smaller distribution companies have emerged, and they do not necessarily purchase worldwide rights. There are also newer models of distribution (Internet, VOD, TV) or distributors who start investing during the film’s production. Indiewire is a good website which discusses what’s going on in the industry, and covers DIY film distribution and marketing.

* * *

“Destination Unknown: What’s Next For The Industry In 2010”

Moderator: Vejay G. Lalla, Esq., Moderator Associate, Davis & Gilbert LLP
Panelist: Stanley Pierre-Louis, Esq. Vice President, Associate General Counsel, Intellectual Property & Content Protection, Viacom, Inc.; Drew Stein President & COO, IMO; Lance Podell, Esq., CEO, Next New Networks; Peter Drakoulias President, GAF Holdings

The panel addressed a range of issues. Here are just a few of the topics that they touched on.

(1) DRM Free Websites. Consumers apparently prefer MP3s without DRM (“digital rights management”) protection. Is DRM dead or are there different models to choose from? Content creators, however, want DRM and are still testing other ways to protect digital content. Consumers may want to be able to burn CDs, so are there other ways to have the content locked up, and under what terms. There can also be rental models or different uses. ITunes, which represents 80% of the market, does not use DRM.

Stanley talked about Viacom’s approach to DRM protection for audio-visual works. Consumers can view its shows in different ways (either pay by downloading on iTunes or free on Hulu). Mobile is still a growing area, especially since bandwidth constraints are improving. The key is to have the flexibility to test various ways of getting content to consumers by using different models.

Piracy is obviously a big concern (e.g., the Viacom-YouTube litigation). There are ways to create a filter to track unauthorized uploading on peer to peer networks. The content owner can use “watermarking” on blue ray disc. Another way to stem the tide of piracy is to give notice to persons engaged in illegal peer-to-peer downloading without suing them (a three-strike rule for infringement).

(2) How to Make Money from Content. Newer trends include TV on the Internet. There are two types of content. Content that was originally shown on TV and then repurposed for the Internet, and content created FOR the Internet. Content for the Internet is less expensive to create, there is less production and a quicker turnaround time. TV for the Internet is an exploding market. One way to keep cost down is to steer clear of copyrighted music by creating their own music for these programs.

(3) Another Emerging Trend is Branded Entertainment. Content created for the Internet is better able to utilize branded entertainment because of its ability to turn around content so quickly.

Branded entertainment includes more than just product placement. For example, the Gates Foundation has sponsored TV shows where the “product” that was being “placed” was a concept (e.g., encouraging kids to finish high school). The foundation paid the TV program to convey that message, which weaved the “staying in school” theme into that TV program.

(4) Is Music Superstardom Still Possible? What is role of marketing for superstardom? In marketing new content, what is role of the record label? Historically, the label’s main job was to put their muscle behind an emerging and promising musical act. They would distribute the artist’s music, promote the artist, give tour support, give an advance, and then these costs would be recouped through the sales of the musician’s recordings. Now, with mp3 files, the label’s control over the channels of distribution are less relevant, and MySpace and Facebook has usurped a part of the label’s promotion functions.

The question was posed on whether record labels missed the boat on digital content. Labels were slow to come to the party, and now they are trying to innovate. For example, Warner just inked a deal with YouTube where Warner may be involved with the sale of music video on YouTube.

The key to innovation is finding out ways to get consumers to engage with the content on the website, and for that, there needs to be compelling content. For example, games on websites are now huge. Both labels and other content generators need to use new technology to reach people and get them to come to their website. Larger, monolithic companies are not able to innovate the same way that smaller companies can. So now large companies are working with young entrepreneurs companies.

Lightening round predications for 2 years from now: what will be super hot/cold

Stan: As TV become more adapted to the computer, there will be a switch to Internet TV, and more people will be listening and watching content on their mobile devices. Screens hooked up to televisions will be better quality, and there will be more VOD and Netflix instant-movie streaming models.

Liam: prices will start rising for content. On the web, there was initially a culture of “I shouldn’t have to pay for content”. It will become more accepted over time that content/information is no longer free on the Internet (e.g., newspapers charging for membership).

Peter: larger industries are going to be more nimble, and will start looking at smaller channels, which will create new opportunities.

Drakoulias: Consumers are demanding everything on their time and on their channels. In two years, while traditional advertising will still be around (e.g., sponsorship), the general trend will be towards more accountability of advertising dollars. Also, more directed advertising to consumers, so it’ll be a tension between algorithms (e.g., Google and Pandora) and instinct.

February 10, 2010


Judith B. Prowda of New York is the new chair of the Entertainment, Arts and Sports Law Section of the New York State Bar Association.

Prowda, a native Binghamtonian, received her undergraduate degree from Sarah Lawrence College and earned her law degree from Fordham University School of Law. She also received an LL.M. from New York University School of Law, an M.A. in International Relations from Johns Hopkins University School of Advanced International Studies, an M.A. in French Literature from Middlebury College and a Certificate from l’Institut d’Etudes Politiques in Paris. She was the first Research Fellow at the Engelberg Center on Innovation Law and Policy at New York University School of Law.

Prowda is senior lecturer at Sotheby's Institute of Art in New York, where she teaches Art Law and Ethics & Policy in the Art Profession in the graduate level Art Business program. She also is an attorney, mediator and arbitrator in New York, concentrating in copyright, art and entertainment law, as well as a recognized leader in the intellectual property field. She has advised a law firm in Paris on U.S. copyright law, and has consulted at the World Intellectual Property Organization in Geneva. Prior to studying law, she was a reporter in the World Section at Time Magazine and French-English interpreter at the U.S. Department of State.

A member of the State Bar’s House of Delegates, Prowda served as Vice-Chair of the Entertainment, Arts & Sports Law Section and has been a member of its Executive Committee since 2000. She chairs the Fine Arts Committee and co-chairs the Section’s Committee on Alternative Dispute Resolution, which she co-founded. She previously was a member of the Committee on Media Law. In 2005, she was honored by the State Bar’s Committee on Alternative Dispute Resolution for her outstanding contribution to the advancement of alternative dispute resolution in New York. She also is a member of the Dispute Resolution Section as well as the Entertainment, Arts and Sports Law Section’s liaison to the Executive Committee of the Dispute Resolution Section.

A frequent speaker and commentator on art law, copyright, and dispute resolution topics, Prowda has published numerous articles in law journals and won prestigious awards. She is a member of the Art Law Committee of the New York City Bar Association and has served on the Copyright & Literary Property and Entertainment Law Committees. She is on the Roster of Neutrals, New York State Supreme Court Commercial Division and a member of the Commercial Panel of the American Arbitration Association and the Mediation Register, U.S. Bankruptcy Court (Eastern District of New York). She also is a member of the International Literary and Artistic Association and the Editorial Board of the Journal of the Copyright Society of the U.S.A.

February 20, 2010

Remarks from Judith Prowda, EASL Section Chair

Remarks from the Chair

I am honored and privileged to serve as the new EASL Chair for the next two years.

For the benefit of those who do not know me, I divide my professional life among academic, law practice and ADR services. I am Senior Lecturer in Art Law and Ethics & Policy in the Art Profession at Sotheby’s Institute of Art Masters of Art Business Program in New York. In my law practice, I concentrate in intellectual property, art and entertainment law, and represent artists, galleries and other arts organizations (not-for-profit and private), as well as authors and other creative individuals in publishing, as well as business entities in commercial transactions. In the past several years, I have also developed an ADR practice, and serve as mediator for the New York State Commercial Division and Volunteer Lawyers for the Arts, and as arbitrator for the American Arbitration Association.

I have very big shoes to fill, following our Immediate Past Chair Kenneth Swezey, who solidified our Section in the midst of challenging economic times.

During Ken's tenure as Chair he managed to bring the Section's budget out of the red and well into the black. He encouraged a redoubling of pro bono efforts within the New York City arts community. During his term, our Section launched the Entertainment, Arts & Sports Law Blog, which has become an important outlet for members of our practice area to share important legal developments from all corners of the entertainment business. Additionally, Section membership has increased, we have fostered ongoing relationships with important industry players, and we have sponsored, organized and presented many enormously popular CLE programs, including the Annual Entertainment Business Law Seminar in conjunction with CMJ.

Our Annual Meeting, held at the Hilton and co-chaired by our innovative and tireless Program Co-Chairs Tracey P. Greco-Meyer of dELIA*s, Inc. and Rebecca A. Frank of Patina Restaurant Group, was a resounding success, with two outstanding and timely panels. The first panel, titled “From Conception to the Public Domain or Perhaps to Infinity and Beyond: The Life Cycle of Fictional Characters,” was moderated by Jay Kogan, Vice President Business & Legal Affairs and Deputy General Counsel of DC Comics (and Co-Chair of EASL’s Copyright & Trademark Committee), and featured Neil J. Rosini, partner at Franklin, Weinrib, Rudell & Vassallo PC and Co-Chair of EASL’s Copyright & Trademark Committee; Edward H. Rosenthal, partner at Frankfurt Kurnit Klein & Selz PC; Joseph Salvo, Senior Vice President and Global General Counsel of Hit Entertainment; and Eric S. Brown, partner at Franklin, Weinrib, Rudell & Vassallo PC. The panelists engaged in a spirited discussion about character rights, how to license and expand a character’s image, and what happens when the character’s owner’s rights expire.

Our second panel, “Players Off the Field … How Do You Protect Your Client When Negotiating an Athlete-Driven Merchandising, Endorsement, or New/Traditional Media Deal?”, featured leading sports marketing and legal experts. Michael Bracken of Cowan DeBaets Abrahams & Sheppard LLC did a fantastic job moderating a talented panel, including Terry Prince, Director, Legal and Business Affairs, Creative Artist Agency Sports; Ethan Orlinsky, General Counsel, Major League Baseball; Stephanie Vardavas, Assistant General Counsel, Nike; and Peter Welch, Vice-President and Counsel, Take-Two Interactive Software.

In addition to Ken’s hard act to follow, I am also the third woman Chair of EASL, and have two pairs of very high heels to follow.

Our first woman Chair, Judith Bresler (2000-2002), my mentor and dear friend, is truly a leader and role model of excellence and accomplishment in the legal profession. Together Judith Bresler and I co-founded and co-chair the EASL Committee on ADR. Judith also initiated the BMI/Phil Cowan Memorial Scholarship for law students. She never ceases to amaze all of us with her capacity for fresh ideas.

Elissa Hecker, our second woman Chair (2004-06), was the recipient of the Young Lawyers Award in 2005, has been our Journal Editor for 10 years, started our widely read blog last year, and edited two EASL-related legal handbooks published by the Bar Association. Elissa also co-founded and is a member of the Pro Bono Steering Committee and has generated superb programs for EASL lawyers to donate legal services.

I look forward to working with a wonderful group of officers: Vice Chair Rosemarie Tully (and I point out that this is the first time EASL has had both a woman Chair and Vice-Chair), Treasurer Diane Krautz, Secretary Monica Pa; and Assistant Secretary Jason Baruch. I will continue to serve as a Delegate to the House of Delegates, along with Bennett Liebman and with David Faux as Alternate.

My first order of business as Chair-nominee was to nominate a District Representative for each of the 13 Judicial Districts in New York State – for the first time in EASL history! We will now hear voices from all around the State. This list of District Representatives (approved at the Annual Meeting) is as follows:

First Alan J. Hartnick
Second Innes Smolansky
Third Bennett Liebman
Fourth Edward Flink
Fifth Jaime Mavie Previte
Sixth Mark Dodds
Seventh Mark A. Costello
Eighth Leslie Mark Greenbaum
Ninth Alan D. Barson
Tenth Rosemarie Tully
Eleventh David Faux
Twelfth Lauren Fae Silver
Thirteenth Daniel C. Marotta

One of my goals is to focus on current legislation with a committed group of people (similar to our dynamic Pro Bono Steering Committee) and to make recommendations when appropriate. I would like the District Representatives to be involved in this effort. I have appointed Bennett Leibman to serve as Co-Chair with Steven Richman.

I am excited to announce that I have already formed four new Committees within EASL. First, I would like to recognize the outstanding work done by Judith Bresler (as mentioned above) and Gary Roth, who co-founded and co-chair the Phil Cowan Memorial/BMI Scholarship. Since its founding in 2005, the Scholarship has been awarded to student winners of a writing competition. By giving this Scholarship initiative the status of a Committee, we will strengthen our ties with law schools throughout the State and country and continue to find a talented pool of law students to participate in the competition.

In addition, mindful of the difficult job market affecting many of our members, I have formed a new and dynamic EASL Lawyers in Transition Committee and appointed as Co-Chairs Saryn Leibowitz and Leila A. Amineddoleh. As part of its mission, the EASL Lawyers in Transition Committee will hold programs (possible topics will include job search strategies, re-entering the job market, networking, mentoring) and create a job bank to connect job seekers and employers. As part of the mentoring program, the Committee will initiate a "lifeline" system, where a new attorney is matched with a more experienced attorney in order to learn the basics of practice that are not taught in law school. The EASL Lawyers in Transition Committee will also organize a series of informal breakfast panels/lectures, inviting attorneys from different areas of the entertainment, art and sports areas of practice to discuss their experience with our members. Possible topics include "Basics of the USPTO and Trademark Prosecution," "Trademark Docketing Systems," "Filing with the U.S. Copyright Office," and "Beginning an Action -- How to File a Complaint in County, State, and Federal Court."

The third new committee is the Digital Media Committee, co-chaired by Vejay Lalla and Andrew Seiden. The scope of this Committee will include all out-of-home media (i.e., non-traditional advertising venues apart from television, radio and theatrical motion picture).

The fourth new committee is the Ethics Committee, chaired by Pery D. Krinsky, who concentrates his practice on attorney ethics and criminal law. As part of its mission, the EASL Ethics Committee will address ethics issues encountered by attorneys in their day-to-day practice in the diverse fields of entertainment, art and sports law. Indeed, as the legal profession enters a new and more “global” decade, lawyers are facing challenging questions concerning when, where and how the “practice” and the “business” of law are interconnected. Many of these novel questions – having local, national and international dimensions – will need to be considered, some for the first time, in the context of the much anticipated, newly adopted “New York Rules of Professional Conduct” (effective April 1, 2009). In order to further examine some of these “high-impact” ethics issues, the EASL Ethics Committee will organize a series of informal discussions and formal (and always sought after) Continuing Legal Education ethics programs, inviting experts in the fields of entertainment, art, sports, criminal and ethics law to discuss multi-faceted ethics questions such as trans-jurisdictional lawyering, the unauthorized practice of law and multi-disciplinary practices.

I have also appointed Cameron Myler and Ken Swezey as new Co-Chairs of the Committee on Literary Works, and Edward Rosenthal and Barry Werbin to Co-Chair the Committee on Publicity, Privacy & Media.

One of the many strengths of EASL is our wide range of wonderful Committee programs, both CLE and non-CLE, which are usually held in NYC. I hope to make many of those programs available to members who are unable to attend through the creation of DVDs and webcasting. On March 24, 2010, I inaugurated this initiative by having a videographer tape the Committee on Fine Arts program entitled “Egon Schiele's Dead City: Current Issues In Nazi Art Looting and Recovery.” The program featured guest speaker Raymond Dowd, Esq. of Dunnington, Bartholow & Miller LLP.

Three years ago, the NYSBA President challenged each Section to grow by 10 percent by December 31, 2010. In 2008 EASL had 1,592 members. On February 2, 2010 our membership was at 1,689. Doing the math, we need only 58 new members to meet the three year, 10 percent challenge of 1,748 and I believe we can do that and more. I am hoping that we will top 2,000 members by the end of my term as Chair.

I look forward to serving as Chair of EASL, along with the other EASL Officers, members of the Executive Committee, and colleagues in Albany – Doug Guevara, Pam McDevitt, Carolyn Clayton, Lori Nicholl, Barbara Beauchamp – and everyone else.

I would like to hear from EASL members throughout the State and to invigorate the Section by extending its reaches to every corner of the State and beyond, and to work hard to serve not only EASL members, but the New York bar and the public.

March 12, 2010

Lawyers in Transition

The NYSBA EASL Lawyers in Transition Committee will present a breakfast panel on the difficult transition from law school to that first job, particularly in a recession. Thousands of lawyers have been hit by the recession. With so many attorneys seeking work, it is essential to think outside the box to use alternative job-hunting strategies.

Join us for a breakfast panel led by a career strategist and attorneys who have overcome this transition using alternative strategies.

The panel will be held Friday April 9 at 8:30 am - 9:30 am, at Sotheby's Institute of Art located at 570 Lexington Avenue (between 50th and 51st Streets), 6th Floor. The session is free, but registration is required. Please register by contacting Saryn Leibowitz at by April 6.

March 30, 2010

Free Copyright Seminar for Creators

Monica Pa of EASL's Pro Bono Committee, in conjunction with the Brooklyn Arts Council, is hosting a free copyright seminar for artists, musicians, writers, creators, and art organization at the Brooklyn Public Library in Bushwick. The two-hour lecture will cover basic copyright law, including what qualifies as a copyright, how to register a work for copyright protection, what constitutes fair use, copyright licenses and cease and desist letters.

Wednesday, March 31, 5:30-7:30pm
Brooklyn Public Library, DeKalb Branch
790 Bushwick Ave. at DeKalb Ave., Brooklyn

For more information, click on:

Monica Pa represents U.S. and foreign broadcasters, magazines, newspapers, and artists in the areas of libel, privacy, copyright, trademark, and other aspects of First Amendment, publishing, media and entertainment law. Ms. Pa has written and lectured on a range of entertainment law topics, including speaking on panels at the School of Visual Arts, the Volunteer Lawyers for the Arts, and the CMJ Music and Film Festival. Ms. Pa is a member of the steering committee for the New York State Bar, Entertainment and Sports Law Section. She graduated magna cum laude from New York University Law School, where she received the Walter Derenberg Prize for Copyright Law.

Founded in 1966, BAC is the umbrella for Brooklyn’s range of cultural groups and individual artists working in the visual, performing, media and literary arts. BAC helps Brooklyn’s artist population–from the experimental to those preserving and evolving traditions of cultural heritage–create and present their work. BAC ensures that thousands of people throughout Brooklyn have access to a variety of free arts programming each year. The BAC Professional Development Seminars: Making Art Work series is generously sponsored by Brooklyn Community Foundation.

May 20, 2010

EASL Spring Meeting - Popcorn and Ethics Program Summary

By Monica Pa

The Spring Meeting for NYSBA occurred on May 7th at the Concierge Conference Center in New York City. There was a general introduction by Judith Prowda, the Section Chair, and Tracey Meyer, the program Co-Chair. We then launched into the ethics presentation “Popcorn & Ethics”, presented by Mark J. Solomon, The Boardman House, Ithaca.

Mark covered several new developments in the New York Rules of Professional Conduct.

(1) The Biggest New Change to the Rules: Under the new Rule 3.3(b), attorneys have an affirmative obligation to reveal a client misrepresentation to a tribunal

Lawyers are ethically obligated to represent their clients competently and diligently, and to preserve their confidential information. But lawyers, as officers of the court, are also ethically and professionally obligated not to assist their clients in perpetrating fraud on tribunals or testifying falsely. Under the prior Rule 3.3, if an attorney learns that his or her client made a misrepresentation, the attorney was obligated to remonstrate with the client, but he or she could not reveal the misrepresentation if the information was a client confidence (and basically all information between a lawyer and client is confidential).

Effective April 1, 2009, Rule 3.3 forbids a lawyer from offering or using knowingly false evidence before a tribunal, and requires a lawyer to take reasonable remedial measures upon learning that the client provided false testimony. A lawyer who knows that the client will lie/is lying/or HAS lied before a tribunal, shall take “reasonable remedial measures” including, if necessary, disclosure to the tribunal. Note that “tribunal” is broadly defined and includes governmental and administrative agencies, not simply a court. An attorney has an obligation to notify his or her client prior to the client’s appearance before the tribunal if the attorney knows or has reason to suspect that the client intends to provide false testimony.

To make clear that the old rule was repudiated, the current rules state that Rule 3.3 trumps Rule 1.6, which defines “confidentiality”.

QUESTION: Is this a good rule?

According to one attorney in the audience, this makes sense because an attorney should have some “skin in the game”. Attorneys cannot simply aid a litigious client knowing that the client is filing a false complaint. This is akin to Federal Rule 11. An attorney should know that he or she cannot file a false paper without liability.

In response, Mark stated that New York state courts already have a mechanism for this problem (but this is only in court, not “tribunal“ broadly defined). An attorney who filed a paper with the court has to certify that the filing did not contain false information. If the attorney learns that the filing was false, then he or she must withdraw the certification. The withdrawal of a certification effectively notifies every party in the case that there is a problem, but the attorney is not disclosing any specific client confidence. Under the new rule, the attorney now must reveal the specific client misrepresentation if the client does not reveal the misrepresentation him or herself.

QUESTION: What is a reasonable remediation?

Mark explained that there is some commentary on this issue, but not much. There are two recent ethics opinions on this issue included in the materials. Faced with this problem, the attorney’s first reaction should not be to directly and immediately report the client to the tribunal. What is intended by Rule 3.3 is a process, commencing with a conversation with the client similar to what would have happened under the old Rule 3.3, but now this conversation has “some teeth.” Under the prior rules, the attorney could not do anything if the client refused to correct the misrepresentation; under the new Rule 3.3, the attorney can threaten the client by saying that he or she is ethically obligated to disclose the misrepresentation if the client does not.

To remedy the misrepresentation, the attorney should withdraw the specific evidence. So, for example, if a misrepresentation is contained in a single affidavit or an exhibit, just withdraw that document.

According to Mark, this amendment was sought from judges who were sick of being lied to. It is unclear how this new rule will play out, especially in the case of criminal defense attorneys. He said that, basically, “there is a whole new way for lawyers to get into trouble. Lawyers now need to be acutely sensitive to the possibility that their client is lying, and must cope with that in advance.” He closed with the observation that, under the new rule, we’ll treat judges better than we treat each other because we do not have a duty of remediation with conversations with opposing counsel.

(2) Conflicts of Interest

The materials included a helpful check-list to assist one’s thinking about conflicts prior to accepting a new representation.

Mark pointed out an interesting distinction in the perception of conflicts between small and big firms. The big firm’s view is that clients are sophisticated and they know what they need and want. If they are willing to tolerate the conflict, then they should be able to waive it (“waiver” is a misnomer, its more accurate to say “consent”). The small-firm view is that a conflict is never waivable. The ABA’s approach is more consistent with the “big firm” view, but the State Bar is more aligned with the small firm’s view. When the rule on conflict was being proposed, the State chose to use the same definition that had been used in the NY Code of Professional Responsibility (e.g., “differing interests”). So the standard under DR 5-101 remains, but under the new rules, there was an expansion of “permissible” conflicts of interests. An attorney still cannot represent two sides in a litigation, but if the attorney believes that he or she can represent both sides competently, then the conflict is waivable. The attorney must still obtain informed consent; meaning, the client must understand the conflict. This requires the attorney to have a conversation with the client and accurately predict the conflict that may arise down the road. The attorney should then have the client’s waiver confirmed in writing.

Note that an attorney may also owe ethical obligations to prospective clients and even to witnesses (usually expert witnesses), so the firm should include these names in its conflict check.

(3) Advertising Rules

The Second Circuit has recently held that content-based attorney advertising rules are unconstitutional, subject to a few limited exceptions (e.g., cannot advertise a fictitious law firm).

However, ethics rules concerning solicitation remain; so solicitation must be true and not misleading. Historically, solicitation was absolutely prohibited. Bear in mind that written solicitation must be filed with the court, which may include an attorney’s website. If the website is interactive (e.g., asks the viewer to email the attorney for additional information), then this could be construed as a solicitation and a print-out of the website may need to be filed with the court.

(4) Email Communications

Be aware of email communications with an employee. If, for example, the attorney’s client is involved in an employment dispute, and the attorney is communicating with the employee via the employee’s work email address, then the attorney may be jeopardizing the attorney-client privilege because the email server is owned by the employer. All A/C communications require a “confidential setting.” The attorney should be sure that the employer does not have a policy about personal use of email, or rules concerning the employer’s right to inspect and review the employee’s electronic communications.

If the employee uses Yahoo and Gmail for email, but checks those emails at work, the confidentiality of these communications is unclear (but unlikely to be protected). [My personal experience is that an employer may be able to pull up Yahoo or Gmail emails checked at the office. Images of those emails are stored on the computer.]

The Supreme Court is currently considering a case involving whether an employee had a reasonable expectation of privacy in communications made on the employer’s equipment. The police officer received “sexy” text messages on equipment owned by the employer.

Finally, be aware that there are some bad cases saying that a conversation between a lawyer and his or her firm’s in-house ethics counsel may not be privileged. For example, if the attorney commits malpractice and speaks to the firm’s in-house ethics lawyer, the conversation between the attorney and the in-house lawyer may not be privileged if that client brings suit against the law firm. Instead, in order to be fully protected, the attorney should consult with counsel outside of the law firm.

(5) Practice Pointers

- Return all phone calls
- Review your bills
- Talk to your clients about their accounts when they like you, don’t wait for the relationship to sour

Note that most malpractice claims originate as fee disputes or a failure to return telephone calls.

The Movies (courtesy of Chris Robinson, Esq., Davis Wright Tremaine):

After the break, Mark used excerpts from two movies, Class Action by Michael Apted and The Rainmaker by Francis Ford Coppola, to illustrate the ethics rules in practice (or malpractice). In Class Action, which was based loosely on the Ford Pinto gas tank scandal, ethical issues arising from the unlikely fact pattern that counsel for the defendant manufacturer was the daughter of the lead attorney for the class plaintiffs included conflicts of interest, spoliation of evidence, impermissible contact with a party represented by counsel, and deposition conduct. Issues highlighted by The Rainmaker ranged from lawyer solicitation, client confidences and the attorney-client privilege to the inadvisability of representing a murder suspect when the lawyer is himself an accessory to the crime!

June 24, 2010

EASL Lawyers in Transition (LIT) Committee is Happy to Announce the EASL LIT Job Bank

The EASL LIT Committee is happy to announce that the EASL LIT Job Bank is now live! EASL LIT's primary objective is to help new EASL lawyers handle the transition from law school to their first legal jobs. During this difficult economic climate, one of our Committee's goals was to create a Job Bank geared toward EASL LIT members. The EASL LIT Job Bank is accessible via our Linked In Group Page: NYSBA Entertainment Art and Sports Law, Lawyers in Transition Committee. Our Group Page is open only to EASL members. To gain access, go to, search for our Group Page, and request an invitation to join. Upon confirming your membership in EASL, you will be granted access to our Group Page.

We ask that EASL members help make our Job Bank grow. If you would like to create a job post, or if you learn of any opportunities, please forward the posting to EASL LIT Co-Chair, Saryn Leibowitz: We appreciate everyone's support in helping our Job Bank be a success!

July 8, 2010

EASL Legislation in Albany

By Bennett Liebman

With the legislature leaving for the time-being this week, here’s where we are the major pieces of EASL legislation:

1. Dead Celebrities Rights Legislation – S. 6790 was not acted on by either house. No companion bill was even introduced in the Assembly

2. Resale of Tickets – S. 8340- A was passed by both houses. Since this legislation was a program bill of Governor Paterson’s, it is virtually certain to be signed by him. The bill permits the resale of tickets (what used to be known as scalping) until May 15, 2011.

3. The film credit legislation, which was part of the overall revenue bill in the Budget ( A. 9710-D, S. 6610-C), passed only the Assembly. The full revenue package is supposed to be the subject of future negotiation between the Governor and the two houses of the legislature. Again, there is no disagreement among any of the participants in the budget negotiations about the size of the film credit, which is supposed to be $420 million per year for the next five years.

Message from Judith B. Prowda, EASL Chair

I am pleased to announce the appointment of Kimberly Ayers Shariff, Esq. as Chair of EASL's newly formed In-House Counsel Committee. Kim is the Deputy General Counsel of Lincoln Center for the Performing Arts.

The mission of this Committee is to create a forum where members can share information and best practices, as well as address the unique opportunities, challenges and substantive issues that face attorneys practicing in-house in the entertainment, arts and sports law fields. One of the Committee's specific goals is to form an "open source" information bank where in-house attorneys can seek (as well as contribute) advice and substantive guidance akin to the attorney-to-attorney exchange of information that occurs in a law firm environment but less frequently in-house. To facilitate these goals, Kim is already planning programs of great interest to in-house and outside counsel in the entertainment, arts and sports law fields, in both the for-profit and not-for-profit arenas. Stay tuned for exciting events organized for the members of this new dynamic EASL committee!

If you are interested in joining this Committee, please contact Leslie Scully at You must be a member of the New York State Bar Association and the EASL Section in order to join any of the EASL committees. Please visit our website at

Please join me in congratulating Kim and wishing her good luck in her Bar leadership!

July 13, 2010

Message from EASL Chair, Judith B. Prowda

By Judith B. Prowda

I am pleased to announce the appointments of Kathy Kim and Stephanie Vaidya as Co-Chairs of EASL's Young Entertainment Lawyers Committee. Kathy will also continue as Steering Committee Member of the Pro Bono Committee. Kathy, a trained dancer and singer, is an aspiring entertainment lawyer and theatrical producer. Currently, she is working with the producers of a Broadway-bound musical. Stephanie is an Associate at Withers Bergman LLP, where she works on a variety of projects involving art law.

EASL also welcomes two liaisons from the Young Lawyers Section - Jason Aylesworth and Ezgi Kaya. Jason is an Associate at Sendroff & Baruch, LLP, where he practices transactional entertainment and intellectual property law in the areas of theatre, music, film and television. Ezgi is an Assistant Vice President and Counsel in the Legal Department at Deutsche Bank AG. Previously, Ezgi was a Credit Associate at Davis Polk & Wardwell LLP.

Congrats to Kathy, Stephanie, Jason and Ezgi! We look forward to interesting and valuable programs for our members in the months ahead.

July 21, 2010

EASL In-House Committee Breakfast Panel Series

Please join the NYSBA EASL Lawyers in Transition and In-House Committees for a Breakfast Panel

Friday, August 6, 2010
8:30-9:30 a.m.

Frankfurt Kurnit Klein and Selz, PC
488 Madison Avneue--10th FL
Between 51st and 52nd
New York, NY
(518) 487-5583

Continuing the EASL LIT breakfast panel series, the NYSBA EASL Lawyers in Transition (LIT) Committee and the newly-founded NYSBA EASL In-House Committee present a breakfast panel on the transition to in-house careers. In-house jobs are in high demand and, among other topics, this panel will discuss how to get an in-house position, how to best prepare, and what you can expect as in-house counsel.

Join us for a breakfast panel led by EASL In-House Committee Chair, Kimberly Ayers Shariff, Deputy General Counsel at Lincoln Center, along with EASL LIT Co-Chair, Saryn Leibowitz. Panelists will be announced, but will include Tracey Knuckles, General Counsel, New York City, Department of Cultural Affairs and Meg Louis, Director of Legal Affairs/Senior Counsel for NYC Media

The panel will be held Friday August 6, 2010, from 8:30 a.m.—9:30 a.m., at Frankfurt Kurnit Klein and Selz, PC, located at 488 Madison Avenue (between 51st and 52nd Street), 10th Floor. The session is free, but registration is required. Please register by August 5th. This is a non-CLE event.


August 3, 2010

Message from the Chair, Judith B. Prowda

I am pleased to announce the appointments of Kathleen J. Wu, Esq. and Matthew Pace, Esq. as Co-Chairs with Ayala Deutsch, Esq., of EASL's Sports Law Committee.

While Anthony Dreyer has decided to step down as Co-Chair of the Sports Law Committee after 5 years of service, we are fortunate that he will continue his outstanding leadership in the annual Fordham Sports Law Forum, which has been co-sponsored by EASL for the past 5 years. Anthony is a partner at Skadden where his practice concentrates in all aspects of intellectual property and sports law matters.

Ayala is Senior Vice President & Chief Intellectual Property Counsel of NBA Properties, Inc., the marketing and licensing arm of the National Basketball Association.

Kathleen is a partner at Andrews Kurth and practices out of the firm’s Dallas and New York offices. Kathleen’s practice is concentrated in the areas of real estate, finance and general business transactions. She is also the General Counsel to the United States Tennis Association-Texas Section. Kathleen has received numerous awards, and was recently selected as one of only 30 "Extraordinary Women in Texas Law."

Matthew is Counsel at Herrick Feinstein in the firm’s Sports Law practice. He has over 20 years of professional experience working for and representing some of the biggest players in the sports and entertainment industry. Matthew currently represents sports leagues and teams, sponsors and properties, sports technology companies, investors, licensees and licensors and sports marketing and promotions agencies.

With this first-of-a- kind sports triumvirate - Ayala, Kathleen and Matthew - EASL has a winning team!

Judith B. Prowda
Entertainment, Arts & Sports Law Section
New York State Bar Association

August 6, 2010


Law students, take note of this publishing and scholarship opportunity: The EASL Section, in partnership with BMI, the world’s largest music performing rights organization, has established the Phil Cowan Memorial/BMI Scholarship! Created in memory of Cowan, an esteemed entertainment lawyer and a former Chair of EASL, the Phil Cowan Memorial/BMI Scholarship fund offers up to two awards of $2,500 each on an annual basis in Phil Cowan’s memory to a law student who is committed to a practice concentrating in one or more areas of entertainment, art or sports law.

The Phil Cowan Memorial/BMI Scholarship has been in effect since 2005. It is awarded each year at EASL’s Annual Meeting in January in New York City.

The Competition

Each Scholarship candidate must write an original paper on any legal issue of current interest in the area of entertainment, art or sports law.

The paper should be twelve to fifteen pages in length (including Bluebook form footnotes), double-spaced and submitted in Microsoft Word format. PAPERS LONGER THAN 15 PAGES TOTAL WILL NOT BE CONSIDERED. The cover page (not part of the page count) should contain the title of the paper, the student’s name, school, class year, telephone number and email address. The first page of the actual paper should contain only the title at the top, immediately followed by the body of text. The name of the author or any other identifying information must not appear anywhere other than on the cover page. All papers should be submitted to designated faculty members of each respective law school. All law schools will screen the papers and submit the three best to EASL’s Phil Cowan Memorial/BMI Scholarship Committee. The Committee will read the papers submitted and will select the Scholarship recipient(s).


The Competition is open to all students attending eligible law schools. “Eligible” law schools mean all accredited law schools within New York State, along with Rutgers University Law School and Seton Hall Law School in New Jersey, and up to ten other accredited law schools throughout the country to be selected, at the Committee’s discretion, on a rotating basis.

Free Membership to EASL

All students submitting a paper for consideration will immediately and automatically be offered a free membership in EASL (with all the benefits of an EASL member) for a one-year period.

Yearly Deadlines

December 10th: Law School Faculty liaison submits 3 best papers to the EASL/BMI Scholarship Committee

January 15th: EASL/BMI Scholarship Committee will determine the winner(s)

The winner will be announced, and the Scholarship(s) awarded at EASL’s January Annual Meeting.

Prerogatives of EASL/BMI’s Scholarship Committee

The Scholarship Committee is composed of the current Chair of EASL, all former EASL Chairs who are still active in the Section, all Section District Representatives, and any other interested member of the EASL Executive Committee. Each winning paper will be published in the EASL Journal and will be made available to EASL members on the EASL website. BMI reserves the right to post each winning paper on the BMI website, and to distribute copies of each winning paper in all media. The Scholarship Committee is willing to waive the right of first publication so that students may simultaneously submit their papers to law journals or other school publications. In addition, papers previously submitted and published in law journals or other school publications are also eligible for submission to The Scholarship Committee. The Scholarship Committee reserves the right to submit all papers it receives to the EASL Journal for publication and to the EASL Web site. The Scholarship Committee also reserves the right to award only one Scholarship or no Scholarship if it determines, in any given year that, respectively, only one paper, or no paper is sufficiently meritorious. All rights of dissemination of the papers by each of EASL and BMI are non-exclusive.

Payment of Monies

Payment of Scholarship funds will be made by EASL/BMI directly to the law school of the winner, to be credited against the winner’s account.

About BMI

BMI is an American performing rights organization that represents approximately 350,000 songwriters, composers and music publishers in all genres of music. The non-profit-making company, founded in 1940, collects license fees on behalf of those American creators it represents, as well as thousands of creators from around the world who chose BMI for representation in the United States. The license fees BMI collects for the "public performances" of its repertoire of approximately 4.5 million compositions are then distributed as royalties to BMI-member writers, composers and copyrightholders.

About the New York State Bar Association/EASL

The 72,000-member New York State Bar Association is the official statewide organization of lawyers in New York and the largest voluntary state bar association in the nation. Founded in 1976, NYSBA programs and activities have continuously served the public and improved the justice system for more than 125 years.

The more than 1,600 members of the Entertainment, Arts and Sports Law Section of the NYSBA represent varied interests, including headline stories, matters debated in Congress, and issues ruled upon by the courts today. The EASL Section provides substantive case law, forums for discussion, debate and information-sharing, pro bono opportunities, and access to unique resources including its popular quarterly publication, The Journal.

August 10, 2010

From Judith B. Prowda, Chair

I am pleased to announce the appointment of Justice Barbara Jaffe as Co-Chair with Judith Bresler, Esq. and Gary Roth, Esq. of the Phil Cowan Memorial Scholarship Committee. Justice Jaffe is an acting justice of the New York State Supreme Court.  A long time member of the NYSBA, Justice Jaffe recently joined the EASL Section.  She has represented the City Bar as a Delegate to the NYSBA's House of Delegates. She is on the Founding Faculty of the New York County Lawyers (NYCLA) Art Litigation and Dispute Resolution Institute and presently serves on NYCLA's Committee on Lesbians, Gays, Bisexuals, and Transgendered Issues.  Justice Jaffe co-chairs the Professional Ethics and Discipline Committee of the New York Women's Bar and has served on its Board of Directors.  She is also a member of the New York City Bar Association's Art Law Committee.  

Judith Bresler is Of Counsel to Withers Bergman LLP, where her practice focuses on the law and business of art.  She is co-author of the award-winning treatise Art Law: The Guide for Collectors, Investors, Dealers and Artists (First, Second and Third Editions) and Adjunct Professor at New York Law School.  She is also a co-founder and Co-Chair of EASL's Alternative Dispute Resolution Committee. 

Gary Roth is Assistant Vice President, Legal & Business Affairs, Performing Rights, of BMI.  He oversees all matters relating to deceased BMI affiliates, as well as issues concerning levies, claims, divorces, assignments and other topics affecting royalty payments. 

The Phil Cowan Memorial/BMI Scholarship was created by EASL, in partnership with BMI, in memory of Cowan, an esteemed entertainment lawyer and a former Chair of EASL.  The Scholarship fund offers up to two awards of $2,500 each on an annual basis in Phil Cowan's memory to a law student who is committed to a practice concentrating in one or more areas of entertainment, art or sports law.  

This year, for the first time, all students who submit a paper for consideration will automatically receive a free membership in EASL (with all the benefits of an EASL member) for a one year. 

For information about the Scholarship, please visit and 

Please join me in welcoming Justice Jaffe as Co-Chair of the Phil Cowan Memorial Scholarship Committee and look forward to many student submissions!

August 15, 2010

Message from Chair Judith B. Prowda

I am pleased to announce the appointment of Justice Barbara Jaffe as Co-Chair with Judith Bresler, Esq. and Gary Roth, Esq. of the Phil Cowan Memorial Scholarship Committee.

Justice Jaffe is an acting justice of the New York State Supreme Court. A long time member of the NYSBA, Justice Jaffe recently joined the EASL Section. She has represented the City Bar as a Delegate to the NYSBA's House of Delegates. She is on the Founding Faculty of the New York County Lawyers (NYCLA) Art Litigation and Dispute Resolution Institute and presently serves on NYCLA's Committee on Lesbians, Gays, Bisexuals, and Transgendered Issues. Justice Jaffe co-chairs the Professional Ethics and Discipline Committee of the New York Women's Bar and has served on its Board of Directors. She is also a member of the New York City Bar Association's Art Law Committee.

Judith Bresler is Of Counsel to Withers Bergman LLP, where her practice focuses on the law and business of art. She is co-author of the award-winning treatise Art Law: The Guide for Collectors, Investors, Dealers and Artists (First, Second and Third Editions) and Adjunct Professor at New York Law School. She is also a co-founder and Co-Chair of EASL's Alternative Dispute Resolution Committee.

Gary Roth is Assistant Vice President, Legal & Business Affairs, Performing Rights, of BMI. He oversees all matters relating to deceased BMI affiliates, as well as issues concerning levies, claims, divorces, assignments and other topics affecting royalty payments.

The Phil Cowan Memorial/BMI Scholarship was created by EASL, in partnership with BMI, in memory of Cowan, an esteemed entertainment lawyer and a former Chair of EASL. The Scholarship fund offers up to two awards of $2,500 each on an annual basis in Phil Cowan's memory to a law student who is committed to a practice concentrating in one or more areas of entertainment, art or sports law.

This year, for the first time, all students who submit a paper for consideration will automatically receive a free membership in EASL (with all the benefits of an EASL member) for a one year.

For information about the Scholarship, please visit and

Please join me in welcoming Justice Jaffe as Co-Chair of the Phil Cowan Memorial Scholarship Committee and look forward to many student submissions!

August 24, 2010


Reminder: Register online at by September 8th


Wednesday, September 15, 2010 | 6 pm - 8 pm

At the Benjamin N. Cardozo School of Law
55 Fifth Avenue - Jacob Burns Moot Court Room,
(off lobby on the first floor) New York, NY
(between 12th and 13th Streets)

Co-sponsored by the EASL's Pro Bono and Fine Arts Committees along with the Cardozo Intellectual Property Program and Art Law Society

Program Description:
Creative Time is a cutting edge non-profit based in New York City that commissions innovative art in the public realm across all disciplines and across the globe. From the stunning Tribute in Light, the light installation which shines as an "ethereal surrogate for the absent towers," to Self-Roaming,the immersive and interactive cityscape created at Art Basel Miami Beach, Creative Time presents ground-breaking and challenging art that pushes culture into fresh new directions. Katie Hollander, Creative Time's Deputy Director, and Judith Church, Esq. from Debevoise & Plimpton LLP, counsel to Creative Time, will present several of their projects and discuss some of the fascinating legal issues involved in exhibiting public art.

Come hear this exciting program with visuals and join us for refreshments!

$10 for EASL Members and Non-Cardozo Law Students
$20 Non-Members

Free for Cardozo Law Students (must sign up at
Please register at by September 8, 2010

Message from the Chair - Judith B. Prowda

I am pleased to announce the appointments of Elisabeth Conroy, Eva Dickerman and Jenna Bass Levy as EASL’s first Law Student Liaisons for the 2010-2011 academic year. As Law Student Liaisons, they will attend EASL Executive Committee meetings, participate in the lively exchange of ideas with EASL colleagues, assist with EASL programs and serve as the voice for their fellow classmates.

Elisabeth Conroy is currently in her first year of law school at the Syracuse University College of Law. She graduated magna cum laude from Syracuse University (’08) where she majored in Art History. She then completed her Master of Arts in Art Business at Sotheby's Institute of Art - New York (’09) and wrote a Master’s Thesis entitled, “The Evolution of the Chinese Contemporary Art Market.” Elisabeth's interests include traveling, reading historical non-fiction, 18th century French art, and studying Mandarin.

Eva Dickerman is a second year student at Columbia Law School where she has been designated as a Harlan Fiske Stone Scholar and serves on the editorial staff of the Columbia Journal of Law and the Arts. Eva received her B.A. from Harvard University (’08), where she graduated Phi Beta Kappa, and Magna Cum Laude with Highest Honors in History. Before entering law school, Eva worked in the entertainment and film industry. This past summer she was a Summer Associate at Davis Wright Tremaine LLP. Eva has a long-standing interest in the arts and received a Degree with Distinction from the Pre-College Division of the Juilliard School with a focus in violin performance.

Jenna Bass Levy is a second year student at the New York University School of Law where she is a staff editor for the Annual Survey of American Law and Co-Chair of the Intellectual Property Entertainment Law Society Arts Committee. She spent this past summer interning for the legal department at the Solomon R. Guggenheim Foundation. Jenna is a summa cum laude graduate of the University of Pennsylvania ('08) where she studied political science and art history. She enjoys attending art exhibitions, photography and traveling.

Please join me in welcoming Elisabeth, Eva and Jenna as EASL’s first Law Student Liaisons!

EASL Blog for CLE Guidelines

In an exciting opportunity for EASL Section Members, we are offering the ability to Blog for free admission to an EASL Section CLE program.

EASL Section Members may write for the EASL Blog about a particular EASL CLE program and earn admission to that program free of charge in exchange for the blog entry, provided:

a) the Member had a prior blog (not for CLE) published on the EASL Blog within the past three (3) months, or had an article published in the EASL Journal within the past twelve (12) months;

b) the Member makes the request for approval to write for the Blog at least one week prior to the CLE program date; all such requests are made to the Editor of the EASL Blog, Elissa D. Hecker (, who makes the final decision;

c) Members are limited to one blog-for-CLE per year; and

d) Annual Meeting CLE Programs, CMJ Programs, Annual Fall and Spring Meeting Programs are excluded.

e) In the event the blog is not submitted within two weeks of the program date, the blog-for-CLE offer is cancelled and the Member will be billed for the program; there will be no extensions.

We hope that many good writers will be interested in this wonderful program and participate.

Please let me know if you have any questions or would like to volunteer pursuant to the guidelines listed above.

Elissa D. Hecker, EASL Blog Editor

September 6, 2010

Remarks from EASL Chair Judith B. Prowda

My first few months as Chair have been exciting and eventful as we move forward with new initiatives and build on past achievements. In July, I formed an In-House Counsel Committee and appointed Kimberly Ayers Shariff, Esq. as Chair. Kim is the Deputy General Counsel of Lincoln Center for the Performing Arts. The mission of this Committee is to create a forum where members can share information and best practices, as well as address the unique opportunities, challenges and substantive issues that face attorneys practicing in-house in the entertainment, arts and sports law fields. One of the Committee’s specific goals is to form an “open source” information bank where in-house attorneys can seek (as well as contribute) advice and substantive guidance akin to the attorney-to-attorney exchange of information that occurs in a law firm environment but less frequently in-house. To facilitate these goals, Kim is already planning programs of great interest to in-house and outside counsel in the entertainment, arts and sports law fields, in both the for-profit and not-for-profit arenas.

As ever, our committee programs and pro bono activities filled the Winter, Spring and Summer calendars.

In March we co-sponsored the annual Sports Law Forum with Fordham Law School, as we have been doing since 2005. This year, the day-long program featured keynote speaker John P. McEnroe, Sr., Esq., and high level panels addressing some of the most cutting edge legal topics affecting sports, such as licensing, the legality and impact of age restrictions, and salary arbitration. EASL Sports Law Committee Co-Chair Anthony Dreyer and the student organizers at Fordham, especially Cassie Mullman, Managing Editor of the Sports Law Forum, deserve high praise. Also in March, the Fine Arts Committee which I chair, held a very informative program on Holocaust looted art and recovery, focusing on Bakalar v. Vavra, 2008 U.S. Dist. LEXIS 66689 (S.D.N.Y. 2008), the first Holocaust-era art recovery trial in the U.S. In that case, the District Court found that passing the artwork in question through Switzerland gave it clean title. Our guest speaker Raymond Dowd, Esq., partner at Dunnington, Bartholow & Miller, who recently argued the case before the Second Circuit on behalf of the Defendants-Appellants, presented the legal and evidentiary obstacles to litigating Holocaust-era expropriation and provided legal practitioners with basic tools to assemble evidence and prove Nazi property looting. This sold-out program was held at Sotheby’s Institute of Art, where I am a senior faculty member, and was followed by an elegant reception.

Our biennial Popcorn & Ethics Program with Mark Solomon in April proved to be a resounding success, focusing on the recently adopted “New York Rules of Professional Conduct” (effective April 1, 2009). The audience participated in a lively discussion on ethical dilemmas cleverly illustrated in film clips, and enjoyed popcorn at intermission. Many thanks to Program Co-Chair Tracey Greco and everyone who worked on this excellent program worth 4 CLE credits in Ethics. Whether or not you attended this program, I urge you to read Monica Pa’s excellent blog summarizing key points covered, located on the EASL Blog at also co-sponsored the program CopyRight and Risk in Film Practice with the Young Professionals Division of the Copyright Society of the U.S.A. in April. This free program was a bonus to our members and wonderful opportunity to network and hear from some experts in the film industry. Thanks to the generous support of the Cardozo Intellectual Property Society, our members enjoyed an open bar and snacks as well.

If you had any gnawing questions about the intricacies of copyright term issues around the world, you were fortunate to have attended the comprehensive program in April organized by Jay Kogan and Neil Rosini, Co-Chairs of the Copyright & Trademark Committee. Dennis Angel, noted authority on United States and foreign copyright law, gave a thorough overview of this complex subject. The Committees on Motion Pictures (Stephen Rodner and Mary Ann Zimmer) and Television & Radio (Pamela Jones and Barry Skidelsky) co-sponsored two back-to-back programs this spring. An enormously successful luncheon 2 CLE credit program featuring Stan Soocher, Editor-in-chief, Entertainment Law & Finance was held at Pryor Cashman on May 26th. On June 16th, these Committees co-sponsored another program, this time with the Copyright & Literary Property Committee of The City Bar, regarding the use of music in digital media, with speakers David Oxenford and Robert Driscoll of Davis Wright Tremaine LLP. T) The City Bar hosted this long-awaited event, which had been postponed last February due to the blizzard.

Pro bono continues to be one of the highest priorities of the NYSBA and EASL and our Pro Bono Committee is working hard under the guidance of its Steering Committee (comprised of Elissa Hecker, Pippa Loengard, Carol Steinberg, Monica Pa and Kathy Kim) in its Spring programs. Over the course of the Spring, the Pro Bono Committee and the Brooklyn Arts Council co-sponsored a pro bono lecture on copyright and trademark basics for artists and art organizations, at the DeKalb branch of the Brooklyn Public Library, held a Pro Bono Clinic for the Dramatists Guild (co-sponsored by the IP Section and hosted by the Intellectual Property Society at New York Law School), and offered a highly successful non-CLE program focusing on setting up and running an art business, which was held at the School of Visual Arts. More information about these and future EASL Pro Bono Committee programs and Clinics can be found in the Pro Bono Update. Please mark your calendar for future events!

Our summer season has also offered a wide range of programs. In July, EASL’s Music and Recording Industry Committee co-sponsored the New Music Seminar (NMS), held on three days in New York City. The program included several invitation-only summits which provided a high-level forum for dialogue about the challenges the music industry is facing. In one summit, panelists (Tom Silverman, Adam Ritholz, Jim Cooperman and venture capitalist David Pakman) discussed key developing legal and deal-making issues, such as emerging structures of recorded music agreements and emerging economic models. Please see the “New Music Seminar Report” by EASL’s blogger extraordinaire, Monica Pa, for a terrific overview of the event. Kudos to Alan Barson and Christine Pepe, Co-Chairs of the Committee on Music and the Recording Industry, for developing this exciting co-sponsorship opportunity. Look for the Committee’s expanded involvement with NMS in 2011!

On August 6th, the In-House Counsel Committee and Lawyers in Transition Committee held a breakfast panel on the transition to in-house careers. In-house jobs are in high demand and, among other topics, this panel discussed how to get an in-house position, how to best prepare, and what you can expect as in-house counsel. The program was led by In House Counsel Chair Kim Shariff and EASL Lawyers in Transition Co-Chair, Saryn Leibowitz. Panelists included Tracey Knuckles, General Counsel, New York City, Department of Cultural Affairs and Meg Louis, Director of Legal Affairs/Senior Counsel for NYC Media. This program was held at Frankfurt Kurnit Klein and Selz, PC.

Looking forward to the fall, the Pro Bono Committee and Fine Arts Committee are co-sponsoring a joint program with Cardozo’s Intellectual Property Program and Cardozo’s Art Law Society, on legal issues in producing and presenting public art. Our speakers will be Katie Hollander, Deputy Director of Creative Time and Judi Church, Counsel to Creative Time. This non-CLE program and reception will be held at Cardozo on September 15th from 6-8 p.m.

This year, EASL’s ADR Committee, co-chaired by Judith Bresler and myself, is co-sponsoring a full day CLE program with the NYSBA Dispute Resolution Section. The program, which will be held on October 12th at Fordham Law School, will offer six CLE credits, including one Ethics credit. The morning session will be devoted to mediation on an art-related topic, and will feature highly trained mediators in an interactive role play with members of the audience rotating in as the disputing parties. An experienced mediator will serve as a commentator and stop the action in a “freeze frame” fashion at teachable moments throughout the mediation and invite discussion. After lunch, an entertainment law-related program on arbitration will be conducted in a similar teaching format. We hope that this highly interactive, largely unscripted program will provide excellent training for all levels of ADR practitioners.

Our Fall Meeting will be held on October 22nd, our fourth year in conjunction with the CMJ Music Marathon & Film Festival. There will be panels on ethics, right of publicity, copyright termination rights, mobile apps and gaming, international issues in digital licensing overseas and distribution, and agreements with minors. Breakout panels will include the latest developments in mobile tv issues and film deals. Hope to see you there!

As most of you know, it is a priority of mine as Chair to vitalize EASL throughout the State and have appointed a District Representative in each of the 13 Judicial Districts in New York State. To accomplish my goal, I share the good news that I have appointed two District Representative Leaders – Leslie Greenbaum for Upstate and David Faux for Downstate – to serve as points of contact for District Representatives if they have any questions on how to go about organizing a program in their District. Both Les and David have done extraordinary work in creating programs and making connections in their Districts. I would like all District Representatives to be involved in this manner, and I am delighted that Les and David have agreed to help in this effort. Les will be the point of contact for the 3rd, 4th, 5th, 6th, 7th and 8th Districts. David will be the point of contact for the 1st, 2nd, 9th, 10th, 11th, 12th and 13th Districts.

Another wonderful piece of news is that I have appointed Kathy Kim to serve as Co-Chair of the Young Entertainment Lawyers Committee with Stephanie Khalifa. Kathy will also continue as Co-Chair of the Pro Bono Committee. In addition, EASL welcomes two liaisons from the Young Lawyers Section – Jason Aylesworth and Ezgi Kaya. I hope that our Sections will plan interesting and valuable programs for our Members.

Hope you had a wonderful summer!

Message from EASL Chair Judith B. Prowda

I am pleased to announce the appointment of Diane Krausz as a member of the New York State Bar Association Committee on Continuing Legal Education. Diane is the first EASL representative to serve on the NYSBA CLE Committee. During her three-year term, Diane will attend meetings in New York and Saratoga twice a year and make recommendations on CLE programs and policies. The CLE Committee is one of the most important committees within the NYSBA since its members advise and inform the content and direction of NYSBA CLE programs.

Diane is a long-time member of the EASL Executive Committee, and serves as EASL Treasurer as well as Co-Chair of the Theater and Performing Arts Committee. During her more than two decades practicing law, Diane has represented many leading performers, writers, producers, composers, filmmakers, music publishing interests, talent representatives, writers, actors and directors in the theatre, film, television and motion entertainment industry, including emerging media production companies. A Wharton School of Business and Fordham Law graduate, Diane is also trained and qualified as a Certified Public Accountant. In addition to her work with EASL, Diane is a member of the League of Professional Theatre Women, the Finance Committee of the Friars Club, and New York Women in Film and Television.

Congratulations Diane! We look forward to your excellent representation of EASL within the NYSBA CLE Committee.

September 15, 2010

Message from EASL Chair Judith B. Prowda

I am pleased to announce the appointment of Jason Aylesworth as EASL's liaison to the Dispute Resolution Section. Jason also serves as the Young Lawyers Section's liaison to EASL as well.

Jason is an Associate at Sendroff & Baruch, LLP, where he practices transactional entertainment and intellectual property law in the areas of theatre, music, film and television. Jason received his undergraduate degree from Fordham University, and his juris doctorate from Touro Law Center. While in law school, Jason served as President of Touro's Alternative Dispute Resolution Society. As an active participant in numerous American Bar Association ADR competitions, Jason won both the Negotiation Competition and Arbitration Competition at his school and placed second in the Client Counseling Competition. In addition to representing his school in the regional ABA Negotiation Competition in New York and ABA Arbitration Competition in Oklahoma, he competed successfully in two regional ABA Mediation Competitions.

Thank you Jason for serving as the liaison among the Young Lawyers, Dispute Resolution and EASL Sections!

September 19, 2010

EASL Fall Meeting

What: Dispute Resolution Section and EASL Section Joint Fall Meeting


An Illuminating and Engaging Day of Interactive Role Play with Experienced Mediators, Arbitrators and Counsel

When: Tuesday, October 12, 2010

Where: Fordham Law School
McNally Auditorium
140 West 62nd Street
New York City

For more information about the program, please visit EASL's website at:

For a registration form, please visit EASL's website at:

Entertainment Business Law Seminar

CMJ Music Marathon
New York University
Helen and Martin Kimmel Center for University Life
New York City

Friday, October 22, 2010

To view/download the flyer, visit:

To view/download the registration form, visit:

To register online now, visit:

Attorney Rate - $199.00. Fee includes admission to the Music Business Law Seminar only (Friday, October 22, 2010), New York MCLE credits, written course materials, breakfast, and refreshments. This fee DOES NOT include a CMJ Music Marathon 2010 registration.

Note: To receive discount rate of $199, attorney registrations must be received by 5:00 p.m. on Wednesday, October 13th. If you register after this time or on day of event, an additional amount of fifty dollars ($50.00) will be added to registration fee.

Lawyers attending the seminar will receive 6 New York State MCLE (Mandatory Continuing Legal Education) credits, consisting of 4 in Practice Management, 1 in Skills and 1 in Ethics, all of which may also be accepted in other jurisdictions.

Law Student Rate - $100.00. Fee includes one year student membership with NYSBA and EASL, refreshments during the seminar, however, no MCLE materials or MCLE credit. Students will need to fax a copy of their current student ID along with the registration form. Registration under this option will be available in advance through the NYSBA site until Wednesday, October 13th. This fee DOES NOT include a CMJ Music Marathon 2010 registration.

CMJ Registration link:
CLE Program Information:
CLE Schedule:

The last day to pre-register online is October 13, 2010. Register online now

Accommodations for Persons with Disabilities:
NYSBA will make reasonable modifications/accommodations to allow participation in its services, programs, or activities by persons with disabilities. NYSBA will provide auxiliary aids and services upon request. NYSBA will remove architectural barriers and communication barriers that are structural in nature where readily achievable. To request auxiliary aids or services or if you have any questions regarding accessibility, please contact Kathy Heider at 518-487-5500 or

September 22, 2010

Event Recap: Creative Time--Bringing Cutting Edge Art to the Public

By Stephanie Spangler

Held on September 15, 2010 from 6-8pm, this informative event was co-sponsored by EASL's Pro Bono and Fine Arts Committees, Cardozo's Intellectual Property Program, and the Cardozo Art Law Society. The program provided insight into the legal issues faced by non-profit art organizations aimed at producing and displaying public artworks. The panelists included Katie Hollander, Creative Time's Deputy Director, and Judith Church, Esq., from Debevoise & Plimpton LLP and pro bono counsel to Creative Time. The moderators included EASL Chair Judith Prowda and Pro Bono Committee Co-Chair Carol Steinberg.

The evening began with Ms. Hollander's introduction of some of Creative Time's well-known and recent projects, which included Tribute in Light, a temporary 9/11 memorial co-created with the Municipal Art Society, Playing the Building, by Talking Heads artist David Byrne, and The Key to the City Project, by Paul Remirez Jonas, a project recently based out of Times Square. More information on Creative Time's projects can be found at its website ( ). What is most significant about Creative Time's work is that its projects aim to reach a broad array of the public. Hence, the projects have an inherent public artwork identity, and it is this apparent interaction between the artworks and the public that gives rise to potential legal issues.

Ms. Church then spoke on the legal issues about which she has advised Creative Time. She began with the the issue of whether the American Disabilities Act (ADA) applies to sculptures, especially where ADA compliance fundamentally alters the nature of the artwork. One of two examples Ms. Church used was the recreation of Freedom of Expression National Monument, by architect Laurie Hawkinson, performer John Malpede, and visual artist Erika Rothenberg. (See more information about the work at: ). The main feature of this work is the gigantic, operative megaphone attached to a platform six feet above ground. Since access to part of the sculpture was only possible by traversing a twenty-one foot long ramp to the six-foot tall platform, the work was not initially ADA compliant. After negotiations with the City, the solution eventually was to alter the work by adding a pipeline that connected with the megaphone. However, this compromise raises fundamental issues regarding the nature of the artwork, and perhaps serious considerations artists must have if creating public works to meet ADA requirements.

A second legal issue related to the right of publicity. One work entitled It Is What It Is, by Jeremy Diller (, which included a journey across America and engaging the public in conversations about Iraq. As the artist also documented this three and a half week trip, there were concerns regarding the right of publicity relating to the documentation. Ms. Church discussed the common law right of publicity, differences in statutory law in different states, and challenges with utilizing a release form versus release signage.

Ms. Church also discussed representation of third parties in works. As part of Creative Time's Democracy in America: The National Campaign project, one of the commissioned works was Revolutionary Love 1: I am Your Worst Fear, by Sharon Hayes ( This piece required publication participation, and because of the politically charged material recited during a politically charged time, there were concerns about representations of these participants.

Finally, there were comments on determinations of reuse rights between Creative Time and the artist. There was also discussion on the importance of seeking the involvement of the Board of Directors to prevent Board liability when the project occurred in an uninhabited, unmaintained building.

Overall, the evening was an engaging discussion between Ms. Hollander and Ms. Church. The audience could quickly pick up on the collaborative nature between the arts organization and its pro bono counsel. The discussion lent itself to be more of a conversation between the two panelists which allowed the audience a better behind-the-scenes look at how the panelists work together on ensuring the projects come to fruition with as little legal strife as possible.

September 28, 2010

Message from EASL Chair Judith B. Prowda

I am pleased to announce the appointment of Emily Miranda Galindo as an EASL Law Student Liaison for the 2010-2011 academic year. Law Student Liaisons attend EASL Executive Committee meetings, participate in the lively exchange of ideas with EASL colleagues, assist with EASL programs and serve as the voice for their fellow classmates.

Miranda is a second year student at Fordham Law School, where she is studying intellectual property. At Fordham, Miranda co-founded a student group that examines the legal issues within indigenous communities. She is also a Competitor on Fordham’s Jessup Moot Court Team. This past summer she was Professor Sonia Katyal’s Research Assistant on a project examining cultural property issues in the indigenous context. Miranda graduated from Brown University in 2006 with a B.A. in Public Policy and American Institutions. At Brown, she was a member of Mezcla, the Latino performing arts troupe. After Brown she became a Coro Fellow in Public Affairs in New York City. Miranda comes from a family of artists and entertainers and enjoys painting and photography and performing with Teatro Pachuco throughout Mexico and Europe.

Message from EASL Chair Judith B. Prowda

I am pleased to announce the appointment of Jessica Thaler as Co-Chair of EASL’s Membership Committee with Rosemarie Tully (EASL’s Vice-Chair and District Representative from the 10th District). Jessica’s law practice includes counseling clients in connection with corporate and commercial transactions, including mergers and acquisitions, lending and finance, development and cooperation, services, real property and licensing. She is an active member of NYSBA and serves on the NYSBA Membership Committee and the Committee on Lawyers in Transition, and is a member of the Business Law and Corporate Counsel Sections. Jessica graduated cum laude from UCLA and received her J.D. from Fordham University School of Law.

Please join me in welcoming Jessica to the EASL Executive Committee. We look forward to working together to build our membership.

October 7, 2010


Job Title: Media Partnership and Contracts Director, NA
Level: Senior Partner

Reporting to: Direct to Managing Partner, Head of Investment for major Client
Indirect to Client Finance Director

Key relationships with: Client Counsel/Legal team
Agency Counsel and external Counsel working on behalf of Agency CFO
Legal/Business Affairs at networks/vendors

Location: New York City with limited travel

Job Description:

Leading media agency in NA, newly created role, seeking a candidate with solid transactional experience in strategic alliances and media investments/partnerships. The successful candidate will be comfortable in managing transaction risk and being actively involved in client discussions and working closely with various attorneys.

This is an exciting opportunity to work alongside one of the largest and most dynamic client teams in the agency that leverages all media from national broadcast to local to all digital channels. The successful candidate will help to manager our client’s integration and sponsorship agreements in some of today’s premier media properties. This role will focus on many of the national broadcast contract negotiations and administration.

Candidates must possess outstanding communication, negotiation and drafting skills as well as the ability to effectively manage a variety of projects and demanding client groups.

Primary responsibilities will include:

a. working closely with lead managing partner of investments to determine terms and
conditions and expanding on deal points as they relate to media partnerships and

b. capturing all deal points into one comprehensive document for all related parties;

c. structuring, drafting and negotiating contracts;

d. providing counseling and legal advice to executive and non-executive level colleagues;

e. working closely with client counsel and external counsel to ensure that all agreements
comply with standard terms and conditions


Qualified candidates will business affairs/contract administration experience with 4 - 5 years of substantive transactional experience. A J.D. is a definite plus but not required.

Agency, publishing, entertainment or holding company experience is highly desirable.

The candidate will have outstanding negotiation and drafting skills with a keen attention to detail and process. Excellent interpersonal communication skills are required.


Attractive package, including base and benefits.

All inquiries should be sent to Marjory Frummer at O’Hare & Associates:

October 13, 2010


Tuesday, October 26, 2010

6:30pm – 9:00pm

(7:00pm – official start time)

At the Village Pourhouse (Upstairs space)

366 West 46th Street, NY, NY

(between 8th and 9th Avenue)

Sponsored by the EASL’s Young Entertainment Lawyers Committee

Program Description: Our Speed-Networking event provides attendees a chance to meet young entertainment and sports attorneys from a variety of practice areas in a relaxed and friendly atmosphere. We all hate going to an event and never having enough time to speak to everyone in the room. Well, here’s a chance to mingle away while enjoying our open bar and hor d’oeuvres.

Come meet us for a wonderful night of dating . . . we mean . . . NETWORKING! Space is limited so please hurry and register.

Registration: $15 for EASL members

$20 for non-EASL members (NYSBA members)

$25 for non-NYSBA members and tickets at the Door

Please register by calling toll-free at 1-800-582-2452.


For more information, contact

The 5th Annual Entertainment Business Law MCLE Seminar

"How To Take It With You"

One-Day Event Offers 6 MCLE Credits for Attorneys

Presented by the CMJ Music Marathon in Association with the New York State Bar Association Entertainment Arts & Sports Law Section

The 5th Annual Entertainment Business Law Seminar at CMJ Music Marathon & Film Festival 2010 in New York City has announced its complete panel schedule and participants including keynote speaker, President of Lava Records Jason Flom.

The Mandatory Continuing Legal Education (MCLE) accredited one-day event titled “How to Take it With You” will be held on Friday, October 22, 2010 at New York University’s Helen and Martin Kimmel Center, in the Richard L. Rosenthal Pavilion. Leaders at the center of the entertainment industry will discuss how legal practitioners can best protect their clients’ creative property in the digital age. The seminar is presented by CMJ Music Marathon & Film Festival in association with the New York State Bar Association Entertainment Arts & Sports Law Section (EASL).

Program panels for the law seminar include:

Today Manhattan, Tomorrow The World - How U.S. entertainment content providers can succeed in foreign markets.

Compensation is the Sincerest Form of Flattery - Exploring the latest developments in likeness & publicity rights.

The End is Near: What You Need to Know About Copyright Terminations - Discussing key issues in copyright terminations including who is eligible and what is dissolvable as well as termination impacts and gray areas.

How to Avoid the FRPR Blues: Ethical Issues in Music, Film & Entertainment Law - Exploring ethics issues that arise when lawyers assume non-traditional legal roles or take on multiple roles while representing entertainment clients.

Rights, Restrictions & Compatibility: The Challenges of Mobile TV - Addressing issues facing lawyers negotiating distribution deals for mobile content including what is “mobile” versus “Internet.”

The Changing Landscape of Film Distribution: A Digital Vision - Examining new partnerships between film festivals and digital platforms to increase the accessibility and visibility of independent films.

The Kid Stays in the Picture: Agreements with Minors - Investigating the rules and risks of contracting with minors including tips on the best approach to dealing with them.
How to Legally Make an App for That - Looking at dealmaking issues in this new media stream including licensing and content use.

Lawyers attending the seminar will receive six (6) New York State MCLE credits, consisting of four (4) in Practice Management, one (1) in Skills and one (1) in Ethics, plus breakfast, lunch and refreshments.

For registration and complete line-up of panelists please visit or

NOTE: An additional amount of fifty dollars ($50) will be added to the registration fee if you register after 5:00 p.m. on Wednesday, October 13 so REGISTER TODAY!!

October 27, 2010

“Media Masala"

“Media Masala – Current Trends and Issues in
US – India Film, Television and Music Programming, Production and Distribution”

The New York City Bar Association Entertainment Law Committee presents an evening of industry professionals sharing experiences, developments and challenges in the rapidly expanding media markets between India and the U.S.

Date: Monday, November 8, 2010
Time: 6:00-8:00

Location: New York City Bar Association
42 West 44th Street
New York, New York 10036
(212) 382-6600

Admission: Free
RSVP to: Michelle Adams at


Megha Bhouraskar
Founding Partner, Poppe and Bhouraskar LLP

Steve Stander
Vice President & Deputy General Counsel
A&E Television Networks, LLC.

Salil Gandhi
Co-founder, Cry Baby Media

Anadil Hossain
Co Founder, Dillywood Inc.

Mark Merriman
Frankfurt Kurnit Klein & Selz
Production counsel, “Darjeeling Limited,” Wes Anderson, Director

Co-sponsored by Entertainment Law Committee members Joanne Cassidy and
Madhu Goel Southworth

November 1, 2010

Message from EASL Chair Judith B. Prowda

By Judith B. Prowda

I am pleased to announce the appointment of Irina Tarsis as an EASL Law Student Liaison for the 2010-2011 academic year. Law Student Liaisons attend EASL Executive Committee meetings, participate in the lively exchange of ideas with EASL colleagues, assist with EASL programs and serve as the voice for their fellow classmates.

Irina is a third year law student at Benjamin N. Cardozo School of Law Cardozo Law School, where she is Associate Editor of the Cardozo Journal of Conflict Resolution. In 2008, Irina co-founded Cardozo’s Art Law Society and serves as its Co-President. She received her B.S. in International Business from University of Virginia in 2001 and her Master of Liberal Arts in Art History from Harvard University in 2009. Her Master thesis, entitled "Laws and Lithographs: Seeing Imperial Russia through Illustrations of Civil Uniforms in Complete Collection of Russian Laws," was published in Slavic & Eastern European Information Resources. Irina has also published on the subject of book history and provenance of rare Russian books.

Please join me in welcoming Irina as an EASL Law Student Liaison!

November 10, 2010

CMJ Entertainment Business Law Seminar – Afternoon Session

By Eva Dickerman

Rights, Restrictions & Compatibility: The Challenges of Mobile TV
Seth Metsch, Digital Counsel, Business & Legal Affairs, A&E Television Networks (Moderator); Jeffrey D. Neuburger, Partner, Proskauer Rose LLP; Shirin Malkani, Vice President, Legal & Business Affairs, National Basketball Association; Sharon E. Kopp, Assistant General Counsel, Business & Legal Affairs Verizon FiOS TV & V CAST Video; Salil Gandhi, Co-Founder, Crybaby Media

Due to the increasing capabilities of mobile devices, the cell phone has become the primary gadget for Americans. Television content providers are eager to take advantage of the unique opportunity to get their programming quite literally into the pockets of consumers. As they negotiate the deals that make mobile distribution of television programming possible, the panel members are shaping the law in this area. The panel discussed the obstacles and issues they face in making top shows and events available to our fingertips.

How Should Clients Be Advised As They Draw Up New Deals?

One of the primary issues is that it is difficult to define a mobile device. Is it just a device that fits into your pocket? How should the iPad be categorized? If mobile but not Internet rights are granted, can the content be hosted on an iPad? One of the greatest difficulties with mobile video distribution is its very newness – in previously written deals there may not have been mention of mobile distribution.

Neuberger noted that there are no clear definitions of the different kinds of mobile devices. As technology evolves, we have to ask whether those distinctions are even meaningful. Neuberger suggests that licensing should be articulated in terms of functionality. Agreements written in the past defined scope of rights in terms of the device, but now the scope of rights should be defined in terms of functionality. Gandhi, referring to his experience at Joost, noted that the focus should be on branding and functionality rather than screen size.

Going forward, when negotiating deals, distributors will want to secure all rights in all media.

There is also the possibility of longer term contracts to define the license based on external factors that will exist even in spite of technological change (i.e. target demographics.)

The Evolution of the Mobile Platform

Kopp noted that Vcast serves as an aggregator. She described the unique position of Verizon – it seeks to provide content to customers in any format that customers might want – so the company is simultaneously negotiating television, mobile and Internet rights. The goal is to give customers a uniform experience across screens.

Vcast is offered using carrier bandwidth. The service has some streaming and downloadable programs. From the perspective of delivery method, Vcast uses mobile bandwidth, and, vis-à-vis the discussion above, is clearly a mobile service. An app that uses WiFi, however, will be harder to describe as a purely mobile app.

The Sports Context

Malkani discussed some of the idiosyncrasies of delivering sports content on mobile devices. All leagues do not deal with rights in the same way – there are some national rights and some team rights, the latter of which serve internal markets. It is hard to know if the consumer can ever have a single, unified package in light of these different markets.

Malkani also noted that although mobile is a desirable new format, traditional television is still incredibly important for sports because fans want to see the action on the big screen. Furthermore, since sporting events are live, fans want to watch a game when it’s happening. Malkani explained a little bit about NBA’s developing mobile strategy. The app Gametime allows users to get scores, stats, and video highlights. There is also a ‘league pass’ that is offered through the Gametime app. Although previously the NBA had separate apps for the League and the team, now users will get league updates or team versions within Gametime – in other words the strategy shifted to allow for a single streamlined app, rather than a set of disaggregated apps. Verizon also has an NFL app that has been quite successful – Kopp credited the ‘front and center’ branding of the app – when a Verizon user looks through the icons on a phone’s display screen, the NFL symbol is clearly visible.

How Important Is the Screen Size?

Several of the panelists noted that older deals articulated the distinctions between devices in terms of screen size. Neuberger suggested that screen size might not continue to be as relevant.

Indeed, the importance of the labels given to different devices is a shifting one. For example, in the past the terms “TV” or “television” were equivalent to broadcast television, but as time went on, the definitions came to include cable networks.

TV Remains a Driving Force…

However, the screen size issue does still matter to a certain extent. As the big cable networks pay content providers large license fees, the networks want to make sure that these agreements are still valuable to them by ensuring the uniqueness of the content that they are receiving.

Some of the Difficulties of Mobile Deals

As previously mentioned, there is an overarching issue of how to define mobile devices and how to determine the rights required to distribute programming via those devices. Some contracts limit the definition of mobile to ‘cellular technology’ – but what about the increasing reliance upon WiFi networks? What about the phone versus tablet distinction? In general, contracts are also more likely to grant broadband rights rather than mobile rights.

Another important question concerns how to deal with territory restrictions on content. The whole point of a mobile device is that its owner takes it with him or her wherever he or she may go. How can companies ensure that restricted content stays within authorized territories? Do there need to be authentication license-keys?

Malkani explained that when the NBA launched a mobile app, the vendor incorporated a geofiltering device to make sure that the streaming complied with the geographical blackouts mandated by the different cable companies. When Malkani herself used the mobile app, if she were to be in LA in the morning, then the corresponding blackouts in the California market would mean that certain content would be unavailable on her phone. If she were to return to NY later that day, then the corresponding blackouts in the NY market would also be reflected in the content available on her phone.

Several panelists noted that content providers will also want to insure that the video is captive within the device, and cannot easily be acquired within the mobile context but watched on different screens. In other words, providers do not necessarily want to grant users mobile access to content if these users will simply be hooking up their phones to their televisions, and watching the content through the latter rather than their mobile devices.

Talent and Mobile Content

Gandhi noted that talent is now going directly to consumers through apps. He noted that the advantage of straight-to-consumer delivery is the allowance of preserving the rights needed to build a brand. There is also the desire, in the attempts to build a brand, to try to maintain as many revenue streams as possible; one is doing oneself a disservice in the age of television everywhere. Distributors want to make content available to customers in any way, but talent may want to divvy up the rights.

Furthermore, there are important distinctions based on the device, since the expectation will be that consumers will pay for mobile uses but not on the Internet.

There is also the sense that it may be better for talent to use short-form content in the mobile context – consumers want to see new and specially produced content. The NBA too looks strategically for potential other content beyond the games. Vcast however is moving towards long-form programming.

Where Is the Business Model of Mobile Video Going?

Neuberger suggested that as there is increasing pressure on companies to collect revenue from all of their interactive applications, there may be an approaching end to free, meaningful content, and hence, more rigorous pay models will emerge.

The panelists agreed that social networking would make its way into the mobile app context. Since consumer engagement is the ultimate goal, having ‘check-ins’ as a way to make television more social may increase consumers engagement with the content that they are purchasing.

The Changing Landscape of Film Distribution: A Digital Vision
Marc Jacobson, Entertainment Attorney, Marc Jacobson, P.C. (Moderator); Betsy Rodgers, Vice President, Legal and Business Affairs, IFC Entertainment; Jessica Nickelsberg, Director of Legal and Business Affairs, Tribeca Enterprises; John Logigian, Attorney and Independent Film Consultant, Isil Bagdadi, Co-founder and President of Distribution, CAVU Pictures.

The panelists began the discussion by explaining their work within the film distribution industry, with a focus on new and emerging modes of distribution.

Betsy Rodgers explained IFC Entertainment’s "festival stunt” partnership with film festivals. IFC acquires films at festivals (such as Sundance and SXSW), or immediately prior to the festival’s start date. Then IFC releases the film on VoD concurrent with the festival. Since IFC already had an established relationship with the cable companies, this creative turn seemed to be a natural step. These partnerships require IFC to establish a legal relationship with the festivals, and IFC must gain licensing rights to the trademarks, branding and intellectual property of the festival. Rodgers said these partnerships are valuable to IFC as a distributor, because the buzz from the festival can help to get viewers excited about the films. This arrangement allows the distributor to capitalize on the value created at the festival. Furthermore, many of these films would not be able to reach audiences otherwise. It is also a cost-effective process, because prints are incredibly expensive to create.

However there are also some complications with festival stunts.

Time Constraints: In the case of the Sundance Film Festival, IFC might already have acquired some films before the festival has begun. In that case, the delivery materials might have been received from the filmmaker prior. The difficult situation is when IFC wants to license films that have not been acquired before the festival. By the time the IFC team discovers what films are in the festival, the delivery materials might already be due in order to ensure a concurrent release on the VoD platform. In this case, there needs to be an incredibly quick turnaround – in papering the agreement, making sure the films are fully cleared (which can be a challenge since often filmmakers will only have festival rights to music in their films), and in ensuring that the film is fully finished and can be encoded in time to make it onto the VoD platform.

Psychological Hurdles: Filmmakers often dream of having their films get wide releases in theatres. Since most big theatre chains will not take a film that has been previously released on VoD, accepting such a distribution ‘stunt’ for the filmmaker may mean giving up certain expectations. Furthermore, if the primary release of a film occurred on the VoD platform, the film might be disqualified from the big awards races.

Financial Hurdles: Producers need to read their agreements. Low budget films will often contain a provision that allows the use of SAG actors at a low rate. If the film is not given a theatrical release, however, there might be significant penalties.

Jessica Nickelsberg next explained the evolution of the Tribeca brand. From the flagship Tribeca Film Festival, Tribeca Enterprises has recently launched a new initiative, Tribeca Films, a distribution arm which underlying mission is to get independent films out to a wider audience. Tribeca Films distributes on a variety of platforms; in theaters, online, on DVD, and on demand.

Tribeca also has its own version of the festival stunt. During the 2010 festival, Tribeca Enterprises launched “Tribeca Film Festival Virtual,” a digital festival experience. For one week during the festival, viewers could (at the price of $45) go and watch eight feature films online (otherwise only available at the festival), at an encrypted site.

John Logigian focused on broader distribution trends within the industry. Traditionally it has been the ancillary markets (i.e., home distribution) that have been the big money earners. The profit margin is much greater in the home entertainment sphere than it is in the theaters. However, home entertainment is becoming less profitable for the studios. Now that delivery is digital, (whether digital streaming or downloading), there is no longer the ‘packaged goods’ element (i.e. selling of DVD’s at a retailer). Profit margin was much greater in the packaged goods market.

An upside of the digital revolution has been digital projection. Digital projection allows a reduction in the enormous cost of manufacturing and shipping of prints. Certainly there is a cost to convert to digital projection, but it is possible that companies will help theaters underwrite the costs of digital projection. Another notable development has been the spectacular growth of 3D.

Isil Bagdadi focused upon the growth of the DIY (do it yourself) movement in film. Her major concern was that filmmakers are losing ownership rights to their works by entering into certain agreements with distributors. Her concern with the festival relationships described above is that if festivals get into the distribution game, will there be favoritism in programming at the festivals themselves?

Bagdadi championed a ‘services deal’ agreement, in which a distributor gets a fee for providing the services of distribution, but does not get ownership rights. Bagdadi also suggested the possibility of self-distribution.

In response to Bagdadi, Logigian brought up some counterarguments to the benefits of the DIY approach. Although it looks great on paper to retain ownership rights, it is the distributors who have leverage in the ancillary marketplace – and most revenue comes from the ancillary marketplace rather than from the theatrical release.

The panel as a whole engaged in a discussion of the different types of financing arrangements for independent films. Investors will have different expectations and different risks depending on where their money is going. If investors are putting in money for marketing, then they will be the first individuals to be repaid. Investments in production, however, hold a different kind of risk profile.

The panel also discussed the option of bifurcating the investment (i.e., various parties investing money for production and marketing), which might allow the filmmaker to get a better deal. Logigian noted that the foreign pre-sales market (selling a film to distributors overseas before the film is made) has largely dried up except for the biggest-name films. The panel also briefly touched upon the value of getting a high net worth individual to put equity into a film if studio financing is not a possibility. Jacobson also mentioned the option of state tax credits as a means of filling gaps in the financing of a film, and providing early capital for a marketing or festival campaign.

How to (Legally) Make an App for That - Dealmaking in the Mobile Media and Gaming Arena
Kenneth N. Swezey, Esq., Managing Partner, Cowan DeBaets Abrahams & Sheppard, LLP (Moderator); Hayley Geftman, Esq., Vice President, Business and Legal Affairs, MTV Networks; Sam Howard-Spink, Clinical Assistant Professor of Music Business, NYU; Amy Lauren, Esq., Vice President, Digital Legal & Business Affairs, EMI; Stephen Sternschein, Esq., Founder, Heard Games; Artist Manager, Heard Games

Sam Howard-Spink began by discussing some sweeping trends. He noted that in the first half of 2010, between 2.6 and 2.9 billion dollars were spent on content (excluding consoles, controllers and other devices). Spink also noted the importance of the growing phenomenon of “in-app” purchasing; once a consumer is inside the app, the consumer makes a further purchase. Spink suggested that when a consumer has taken the effort to spend a few dollars to buy the app, the consumer is more likely to go spend more money on content within the app itself. Spink also noted the different ways that music can be used within app games: original compositions, the use of existing music licensed into the game, rhythm action games (i.e. Guitar Hero), and generative games (the user creates music in real time by using a set of protocols – although such games might pose greater licensing issues).

What Is the Best Business Model For An App?

Geftman noted that apps have had an increasing presence at MTV for the last few years. MTV has been involved in the apps world in different contexts: distribution of content to third party apps, creation of paid apps, free apps surrounding certain temporal awards, and ad-supported apps.

Sternschein noted that at Heard Games, apps are being built and designed to engage and monetize a particular brand. In other words, each app has a unique and specific approach on a band-by-band basis. Sternschein hopes for the growth of artist-based apps as a means to re-contextualize and repackage music in the digital environment. Apps may play a role in integrated marketing campaigns promoting artists.

Lauren noted that at BMI, apps are still a hybrid form. Certainly many apps are getting traction, and sometimes these apps are tied into the overall strategy of an album release.

Then the audience had some fun as Spink showed a few apps, including the Gorillaz app (BMI), Shinobi Ninja Attacks (Heard Games), and Bloom – a generative game. These apps are just a few examples of a new approach in the music industry. These games create a narrative framework, which is in turn tied to music and lyrics, and reward users for interacting with the content that is being promoted.

Licensing Issues:

a) Costs There are different costs associated with the development of apps depending on the level of involvement – if creating a highly customized app, the process might be quite expensive. There has to be a developer deal in place, in addition to due diligence review on all of the content going into the app. Geftman noted that there must be clear language about merchandising and marketing within app agreements, since apps generally will be tied to MTV’s content.

b) Artist Concerns v. Developer Concerns When working with a developer on an app, the primary concern of the artist will always be: what is the scope of the intellectual property rights being given away? Will use of the song be limited to one app? Developers, on the other hand, are trying to get as many rights as possible.

c) Licensing to Different Devices As previously discussed by the Mobile TV panelists, there is segmentation in the current licensing schemes – different rights are granted for mobile, television and Internet (and apps may be used in any of these contexts). Therefore rights owners must be very specific about the rights they are granting to developers.

It is possible that a ‘new creature’ might come about – that of the music game, in which music and coding is treated as a single creative gesture. Such an evolution of the app might be an alternative to the segmentation of rights.

App Developer Agreements

Geftman stressed that the developer agreement should stipulate that apps are being created as works for hire. The developer will own his or her own source code, but anything being built for the content provider, will remain the provider’s property. In general, the panelists concurred that there should be a flat fee, such that at the point of delivery the process is completed. BMI’s Amy Lauren noted that the app developer agreement has many similarities to a standard software development agreement.

There is also an understanding that terms of use and privacy terms need to be placed on the launch page, otherwise this information may be hard to fit into the app.

The Apple Deal

Although typically when dealing with Apple, content providers will serve as the retailers, in the context of apps, EMI or MTV may serve as the retailer. This arrangement shifts the risk from Apple, and is in some sense new terrain for record labels based on previous relationships with Apple. As a retailer, the content provider will face consumer issues, tax implications, and territorial issues. Although Apple has an end-user license agreement for retailers, this agreement may not address all of the issues relevant to the app. It can be difficult to renegotiate the terms of a developer agreement with Apple. Yet in the case of an independent entity (such as Heard Games), since there is less of a potential financial gain at stake, Apple may be more flexible with the types of marketing it allows.

November 25, 2010

Score: SAP – 0, Oracle – 1.3 Billion

By Andrea Ruth Grace Annechino

“Whatever money is, it's just a method of keeping score now. I mean, I certainly don't need more money.”
– Larry Ellison, CEO of Oracle Corporation

Larry Ellison may not need more money, but more he shall get - - loads more. By awarding Ellison’s Oracle Corporation $1.3 billion in damages from SAP, a federal jury set a new record for copyright infringement cases. The Oracle award easily takes the top spot, beating out the second by a factor of ten - - and the intellectual property in that case involved songs by The Material Girl, The King *and* The Godfather of Soul.

After SAP admitted liability, the only open question was how much it would pay for it. The jury was instructed to award Oracle actual damages in either the amount of the fair market value for the rights infringed or the amount of profits Oracle lost as a result of SAP’s swipe. Oracle fought for the former, claiming damages of up to $3 billion. SAP lobbied for the latter, aiming for $40 million, but the jury would have none of it - - according to the foreman, no jury members considered anything less than $500 million. Another juror explained: “It was the principle of the whole thing. If you take something from someone and use it, you have to pay.”

The view from SAP’s seat is bleak. The billion-topping award dwarfs the $160 million the company set aside for this litigation and constitutes one-third of their cash holding. Probably worse than the financial hit, though, is the potential impact of the reputation stain. SAP is now officially The Bad Guy, as well as the subject of a Department of Justice investigation that could raise the specter of criminal charges. This could make life rather difficult for its sales force when seeking new business or renewing existing contracts. The only glint of a PR bright spot for SAP is the chance that Oracle’s sharp tactics will reap a bit of sympathy for SAP. As for SAP’s legal options, the appeal process is available and the award may be reduced, although probably not by much.

One way or another, Mr. Ellison will be getting more.

December 3, 2010

Application for Masters Program

The Association for Research into Crimes against Art (ARCA) warmly invites applications to its third Masters program in the study of art crime and cultural heritage protection. This program provides in-depth, Masters level instruction in a wide variety of theoretical and practical elements of art and heritage crime: its history, its nature, its impact, and what can be done to curb it. Courses are taught by international experts, in the beautiful setting of Umbria, Italy. This interdisciplinary program offers substantive study for art police and security professionals, lawyers, insurers, curators, conservators, members of the art trade, and post-graduate students of criminology, law, security studies, sociology, art history, archaeology, and history.

For additional information (including a link for the 2011 Masters program application), visit

December 15, 2010

The Zenith of the Omega Case on the Future of the "First Sale Doctrine"

By Lisa Fantino

When is a "supreme" decision not a decision? When the court is split down the middle and the deciding judge recuses herself. Just what we need - more grey area over gray market goods and the First Sale Doctrine but that's exactly what happened this week in Omega S.A. v. Costco Wholsesale Corp., 541 F.3d 982 (9th Cir. 2008).

The Court ruled 4-4, with Justice Kagan sitting back because of her stint as U.S. Solicitor General, thereby upholding the 9th Circuit's decision allowing Omega to control the price of its watches in the aftermarket. The essence of the argument is whether U.S. Copyright protections extend to goods made outside the United States and then sold overseas for U.S. distribution and this "non-decision" states that it does.

In a nutshell, Omega manufactures watches in Switzerland and sells them both overseas and in the United States to authorized distributors and retailers. In the instant action, Omega made and sold the watches overseas to an authorized distributor. An unidentified third-party bought them overseas and sold them to ENE Ltd., a New York company, which in turn sold them to Costco for distribution in California. Although Omega authorized the foreign sale, it claimed it did not authorize the importation of those same watches into the U.S. and claimed copyright infringement of its logo under 17 U.S.C. §§106(3) and §602(a). Costco, on the other hand, cross-moved under 17 U.S.C. §109(a) arguing that it was protected under the first sale doctrine, which allows a purchaser to transfer a lawfully made copy of a copyrighted work without permission from the copyright holder.

This hits home for consumers who don't want to pay nearly $2,000 for an Omega watch when they can purchase it for nearly 35% cheaper at a big box chain like Costco. That is the advantage for buying anything at a store like Costco, because it buys in bulk and passes the savings onto consumers who don't need all the frills and luxury of shopping in high-end stores for the same merchandise.

Since the Court was divided down the middle with no opinion issued, it leaves many questions on the extra-territorial nature of the First Sale Doctrine, especially with this practitioner. The decision seems to fly in the face of the High Court's long-standing precedent in Bobbs-Merrill Co. v. Straus, 210 U.S. 339 (1908), where a publisher sold a novel with a statement on the first page indicating that no dealer could sell the book lower than $1.00. R.H. Macy & Co., ignored that and sold the book at a discount after buying it wholesale from an authorized distributor. The High Court sided with Macy's stating that the Copyright statute protected the rights holder's "right to vend" and multiply the work but it did not afford it greater protection than set forth in the statute by allowing the holder to limit future resales. This case of first impression set forth what was subsequently codified in 17 U.S.C. §109 as the First Sale Doctrine.

17 U.S.C. §109 states that "notwithstanding the provisions of §106(3), the owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord." It is pretty much a bright-line rule except in a gray market, where goods are sold legally but not necessarily in the manner or to the parties intended by the original manufacturer.

Again, nearly 100 years after Bobbs-Merrill, in Quality King Distributors, Inc. v. L'anza Res International, Inc., 523 U.S. 135 (1998) SCOTUS specifically noted an eagerness to preserve goodwill for the United States in the global marketplace and hesitated at the idea that the intent of the statute was limiting. Further, the Quality King decision made it clear that the Court did not appreciate the fact that the manufacturer was using backdoor allegations of copyright infringement to justify its discounted marketing and pricing outside of the United States rather than to look to the statute as a tool to prevent the making of unauthorized copies.

Distribution channels and territories are no longer clearly delineated. More and more licensing and distribution agreements are drafted to encompass the world. More and more cyberpreneurs are purchasing goods in one country and selling them within the United States and vice versa, not to mention U.S.-based dealers who sell to domestic customers but have the orders drop-shipped directly from foreign distributors.

Today's "gray market" has become THE market. This decision does nothing to clarify the vague area between practice and statute. In fact, in my opinion it leaves a gaping hole for manufacturers to dance through and control pricing. They can make good overseas at a considerably reduced cost; slap a U.S.-copyrighted logo onto them; and then and limit their resale anywhere in the world without their permission. This first major decision of the October term did nothing to advance clarity in a growing global grey marketplace.

Lisa Fantino is an award-winning journalist and solo practitioner. She has a general practice firm in Mamaroneck, New York, where she focuses on entertainment as well as general transactional and litigation matters. She can be found at or blogging as

December 20, 2010

Golan v. Holder: The Long Road to Restoration

By Joan McGivern and Christine Pepe

In 1994, Congress amended our copyright laws to allow for the restoration of foreign copyrights, which had lapsed into the public domain, thereby, placing the U.S. in compliance with our foreign treaty obligations under the "Uruguay Round Agreement". (Section 514 of the Uruguay Round Agreements Act (URAA), Pub. L. No. 103-465, 108 Stat. 4809, 4976-80 (1994), codified as 17 U.S.C. §104A, 109. As stated in Golan v. Holder, the Uruguay Round General Agreement on Tariffs and Trade included the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs). The TRIPs agreement required, in part, that its signatories, which included the U.S., comply with Article 18 of the Berne Convention, and thus, extend copyright protection to all works of foreign origin whose term of protection had not expired. See Golan v. Holder, 2010 WL 2473217 at *1-3 (10th Cir. 2010), citing Berne Convention for the Protection of Literary and Artistic Works, Art. 18, Sept. 9, 1886, revised at Paris July 24, 1971.) Foreign copyright owners rejoiced; many had lost valuable rights due to their inability or lack of knowledge of the arcane formality requirements imposed under the U.S.'s pre-1976 Copyright Act. U.S. copyright owners also stood to benefit because their copyrights, due to the U.S.'s failure to comply, were not being similarly protected through restoration abroad.

However, people in the U.S., who had built livelihoods in reliance on these works being in the public domain, were not happy. They alleged that once a work was in the public domain, the work had become part of the common culture and could never be "restored." Some alleged that their First Amendment rights were encroached and that no action by Congress, even to comply with an international treaty obligation, can justify the "unconstitutional" action of trammeling their First Amendment rights. Congress had also enacted detailed provisions to address and balance the concerns of such users of public domain works with the rights of foreign copyright holders of restored works. Nonetheless, the users of these public domain works were not satisfied.

And with these allegations, so began a long challenge, which seemingly came to an end this past summer, with the Tenth Circuit, on its second review of Golan v. Holder, upholding Congress' authority to restore foreign copyrights. (See generally Golan v. Holder, Docket Nos. 09-1234, 09-1261, 2010 WL 2473217 (10th Cir. 2010)).

Nearly a decade of litigation . . .

The statute at issue is Section 514 of the Uruguay Round Agreements Act (URAA) (now codified in the Copyright Act at 17 U.S.C. §§104A, 109), an important copyright provision that restores copyright status to certain foreign works that had fallen into the public domain due to failure to comply with statutory formalities.( Section 514 of the Uruguay Round Agreements Act (URAA), Pub. L. No. 103-465, 108 Stat. 4809, 4976-80 (1994), codified as 17 U.S.C. §104A, 109). Section 514 places the United States in compliance with Article 18 of the Berne Convention, which requires each signatory to provide the same copyright protections to authors in other member countries that it provides to its own members. (Berne Convention for the Protection of Literary and Artistic Works, Art. 18, Sept. 9, 1886, revised at Paris July 24, 1971). The statute contains certain provisions to protect "reliance parties"--that is, people that had been using the formerly public domain work. For instance, in order to enforce the restored copyright, an owner must file a notice with the Copyright Office or otherwise place the reliance party on notice. (17 U.S.C. §104A(d)(2)). Further, a reliance party has a twelve month grace period in which they may continue to sell or exploit the restored work (although they cannot make additional copies of the work). (Id. at §104A(d)(2)(A)(ii), §104A(d)(2)(B)(ii)). And, only after that period had elapsed, would a license fee be due to the copyright holder, or the reliance party had to cease its use of the work.

In 2001, the plaintiffs, consisting of educators, performers, publishers, film archivists, and motion picture distributors, each claiming to rely on the use of public domain works to support themselves, brought suit in the United States District Court for the District of Colorado against the government seeking to enjoin on constitutional grounds the enforcement of Section 514 and the Copyright Term Extension Act (CTEA). (Golan v. Ashcroft, 310 F.Supp.2d 1215 (D. Col. 2004)). Plaintiffs included violinist and conductor Lawrence Golan and the Symphony of the Canyons, who had publicly performed restored works such as Prokofiev's Classical Symphony and Peter and the Wolf and Stravinsky's Petroushka. Plaintiffs also included film distributors, who had invested significant resources identifying and restoring public domain films such as Hitchcock's 1932 film, Number Seventeen, and the 1940 British film, Night Train to Munich. (Golan v. Gonzales, 501 F.3d 1179, 1182 (10th Cir. 2007)). These "reliance parties" claimed that Section 514 not only harmed their free speech, but also their economic interests, having spent time and money restoring or preparing the works on the expectation that the works would remain in the public domain.

The case was stayed briefly because the Supreme Court had agreed to hear the Eldred v. Ashcroft case, discussed below, which similarly involved First Amendment challenges to the Copyright Act. (Eldred v. Ashcroft, 537 U.S. 186 (2003)). Upon the lift of the stay, the district court dismissed plaintiffs' claims, concluding that Congress had the authority under the Copyright Clause of the Constitution to remove works from the public domain and there was a rational basis for enactment of Section 514, i.e., the protection of American authors' copyrights abroad. (Golan v. Gonzales, 2005 U.S. District Lexis 6800 at *42, 43-47 (D. Col. 2005)). The district court did not fully analyze the Plaintiff's First Amendment claims.

Plaintiffs appealed on the basis that the Supreme Court's Eldred v. Ashcroft decision required further First Amendment scrutiny of Section 514. The Tenth Circuit agreed and reversed, holding that although Congress has the authority under the Copyright Clause to enact Section 514 and restore protection to foreign works in compliance with the Berne Convention, the legislation "must still comport with other express limitations in the Constitution," notably the First Amendment. (Golan v. Gonzales, 501 F.3d 1179, 1187 (10th Cir. 2007), citing Eldred v. Ashcroft, 537 U.S. 186 (2003)). The Circuit Court found that copyright works historically followed the same sequence: creation, copyright, then public domain. Because Section 514 presented a departure from this sequence (by restoring copyright to public domain works), the court, relying on Justice Ginsberg's language in Eldred, held that Section 514 "altered the traditional contours of copyright protection" and on this basis, remanded the case to the district court for further First Amendment analysis.( Id).

The district court, finding that Section 514 was content-neutral, applied an intermediate level of scrutiny, as opposed to a heightened scrutiny standard. (Golan v. Holder, 611 F. Supp.2d 1165, 1170 (D. Col. 2009)). Nonetheless and even though the district court recognized that Section 514 advances a significant governmental interest, it concluded that the Berne Convention did not require full restoration of copyrights because the reliance parties could have been completely exempted.( Id. at 1174). In finding a First Amendment violation, the court concluded that Section 514 was substantially broader than necessary to achieve the government's interests.( Id). The government appealed to the Tenth Circuit.

Nine years after the initiation of the lawsuit and three U.S. attorney generals later, on June 21, 2010, the Tenth Circuit reversed the district court, holding that Section 514 did not violate the First Amendment. (Golan v. Holder, 2010 WL 2473217 (10th Cir. June 21, 2010)). In Golan v. Holder, the Court found that the statute satisfied intermediate scrutiny because it (1) advanced important governmental interests unrelated to the suppression of free speech and (2) did not burden substantially more speech than necessary to further those interests (or was "narrowly tailored").( Id. at *4).

As to the first prong, the Circuit Court found important governmental interests on the basis that securing foreign copyrights for American works preserves the authors' economic and expressive interests.( Id. at *5). In assessing the government's asserted harm, the Circuit Court held that substantial deference, particularly in matters of foreign affairs, should be given to Congress in its judgments of potential harm: "Our sole obligation is to assure that, in formulating its judgments, Congress has drawn reasonable inferences based on substantial evidence."( Id). The Court pointed to testimony before Congress at the time of Section 514's passing that the United States' historically lax position on copyright restoration had been harming our citizens' copyright interests abroad. (Id. at *7). The theory adopted by the Court was that if the U.S. was to pass restorative legislation for foreign works, other nations would be more likely to pass similar legislation.( Id).

As to the second prong, the plaintiffs argued that there was a less restrictive way of implementing copyright restoration, specifically urging the adoption of the United Kingdom model where the reliance party is allowed to continue making those uses of the work it had made, or incurred commitments to make, before the copyright is restored, but the reliance party can be bought out by the owner of the restored copyright.( Id. at *12-13). In rejecting this argument, the court held that even if there were other options available to Congress, the less restrictive analysis is never a part of the inquiry into the validity of a content-neutral statute, so long as the means chosen are not substantially broader than necessary to achieve the government's interest.( Id. at *13). Moreover, the court noted that there was no real different between Section 514's protections for the reliance parties and the U.K.'s protections, stating that the difference between the "buy out" and "notice" is only that one is economic protection and the other expressive protection. (Id. at *14).

The Importance of International Treaty Compliance

The Tenth Circuit's decision in Golan represents significant progress in the United States' compliance with international treaties relating to the protection of intellectual property. In upholding Section 514, the Court considered the evidence presented to Congress in support of Section 514's passing, such as evidence that foreign countries were willing to provide, at most, reciprocal copyright protections to American works. (Id. at *7 citing General Agreement on Tariffs and Trade (GATT): Intellectual Property Provisions: Joint Hearing on H.R. 4894 and S. 2368 Before the Subcomm. on Intellectual Property and Judicial Administration of the H. Comm. on the Judiciary and the Subcomm. on Patents, Copyrights, and Trademarks of the S. Comm. on the Judiciary, 103d Cong., 2d Sess. 249 (1994) (hereafter "Joint Hearings") at n.2, statement of Eric Smith, Executive Director and General Counsel of the International Intellectual Property Alliance). Otherwise stated, foreign countries would restore American copyrights only if the U.S. restored copyrights of their citizens. The Court also noted evidence in the legislative history that the U.S. often served as an example to other countries--U.S. restoration to foreign works in our public domain would induce other countries with whom the U.S. recently established copyright relations to follow suit. (Id., citing Joint Hearings at 225, statement of Irwin Karp, Counsel, Committee for Literary Studies).

While at first this appears to be a copyright protection quid pro quo, the facts presented to Congress indicated that the United States would continue to lose billions of dollars each year because foreign countries were not providing copyright protections to American works. (Id. at *6, citing Joint Hearings at 225, statement of Eric Smith). Projections from RIAA Chairman and CEO Jason S. Berman supported this, stating "[t]here are vastly more US works currently unprotected in foreign markets than foreign ones here, and the economic consequences of [granting retroactive copyright protection] are dramatically in favor of U.S. industries." (Id. at *6, citing Joint Hearings at 262, statement of Jason S. Berman, Chairman and CEO of the Recording Industry Association of America). The U.S. has a strong economic incentive to comply with international treaties, particularly given the increasing importance of export revenue from U.S. intellectual property.

While much of the Golan analysis focused on the reliance parties, it is important to remember that a significant number of foreign copyright owners routinely lost their rights because of a failure to comply with U.S. formalities that were in place prior to the 1976 Copyright Act. Under the 1909 Copyright Act, in order to create a valid copyright under U.S. law -even if the work was already in published form--a creator or owner was required to post a notice of copyright on the work, i.e., "©", and register the work with the United States Copyright Office. (Copyright Act of 1909, Pub. L. No. 60-349, 35 Stat. 1075 (March 4, 1909)). The 1909 Act also required a renewal to be filed after the expiration of the first 28-year term of copyright (to extend protection for another 28-year term). (Id).

The 1976 Act abandoned these formalities as a pre-requisite to a valid copyright, and instead, provided that copyright is created when expression is fixed in a tangible form. (Copyright Act of 1976, Pub. L. No. 94-553, 90 Stat. 2541 (October 19, 1976), codified as Title 17 of the United States Code). Now, notice of copyright and registration are only required in order to bring a lawsuit for infringement and obtain statutory damages and attorneys' fees. (17 U.S.C. §§411, 412). Somewhat ironically in view of Golan, a primary goal of the 1976 Act (and its abandonment of formalities) was to harmonize U.S. copyright law with international treaties and practice, where formalities were not a requirement for copyright protection.

Authority over matters relating to international treaty obligations and the consequences of non-compliance lies exclusively with the Executive Branch. And as the Tenth Circuit ultimately acknowledged in its recent decision, when it comes to matters of foreign policy and international affairs, Congress should be afforded significant deference.

Heightened First Amendment Scrutiny of Copyright Legislation

In Eldred v. Ashcroft, the Supreme Court upheld the constitutionality of the Sonny Bono Copyright Term Extension Act and in doing so, refused to apply anything beyond the rational basis review. (Eldred v. Ashcroft, 537 U.S. 186, 205 (2003)). The Court noted that the Copyright Act's "built-in free speech safeguards" are generally adequate to address First Amendment concerns. (Id). Only if Congress altered the "traditional contours of copyright protection," the court stated, would further First Amendment scrutiny be necessary. (Id. at 221). The "traditional contours of copyright protection" referred to by the Eldred Court comprise copyright law's "built-in free speech safeguards" of fair use and the idea/expression dichotomy (i.e., that ideas are not copyrightable).

Given that the Tenth Circuit in Golan ultimately applied intermediate scrutiny (as opposed to rational basis review), it would follow that Section 514 was found to be outside the "traditional contours of copyright protection." In Tenth Circuit's first Golan decision, the court interpreted Eldred quite broadly, finding that the "history of American copyright law" should inform its inquiry. The Circuit Court then performed a detailed analysis of the history of the Copyright Act and its treatment of the public domain (including the Framers' intent) and concluded that there simply was no history or tradition of removing works from the public domain. As such, the Court found that the statute presented a departure from the traditional creation, copyright, and public domain sequence. The Court did not specifically analyze the impact of the statute on fair use or the idea/expression dichotomy--if it did, it would see that those protections remained in tact regardless of whether a work was restored from the public domain.

If such a broad interpretation of Eldred was to persist, Congress' discretion would be hindered. It is important for the Copyright Act to continue to evolve--particularly in view of new media and technology developments as well as the growing international landscape for intellectual property. For instance, the Digital Millennium Copyright Act was a game-changing addition to copyright laws, and certainly in many ways, had no precedent. (Digital Millennium Copyright Act of 1998, Pub. L. No. 105-304, 112 Stat. 2860, 2887, enacted October 28, 1998, codified as Title 17 of the United States Code).

In closing, although Section 514 appears to have survived First Amendment scrutiny, it wouldn't be surprising if further attacks are brought against the Copyright Act on the basis that certain amendments exceed the Act's "traditional contours." Lawrence Lessig (in connection with the Stanford Law School Center for Internet and Society) represented the plaintiffs in both the Eldred and Golan cases, and given the Center's zeal in challenging the Copyright Act, it was somewhat predictable that on October 20, 2010, a petition for writ of certiorari was filed with the Supreme Court seeking review of the Tenth Circuit's Golan decision. It will be interesting to see if the Supreme Court is willing to accept certiorari to clarify what the Court meant in Eldred with regard to the "traditional contours of copyright protection."

January 6, 2011

Job Posting - Media Law Resource Center

Media Law Resource Center (MLRC) is looking for an attorney with no less than four years experience for a full-time position as Staff Attorney. MLRC is seeking someone with in-depth knowledge of digital publishing technologies and of the law and legal issues that relate to content distribution in a digital environment. A key element of the portfolio for this new Staff Attorney will be outreach to digital organizations and entities, as well as proposing and helping to coordinate programs and publications for MLRC on digital issues. The Staff Attorney will have substantial responsibility for the organization and production of at least one annual two-day conference on digital issues. The Staff Attorney will be expected to write for MLRC publications on digital issues on an ongoing and regular basis.

This Staff Attorney also will be responsible for the practical development and maintenance of MLRC's digital and IT operations, and overseeing the MLRC website as well as working with others at MLRC on MLRC's 50-State Surveys, MediaLawDaily, MediaLawLetter, MLRC Bulletin, and other ongoing MLRC conferences, projects and publications.

The overall mix of work for the Staff Attorney will be varied and will cover a range of media law and practice matters.
Salary will be at a modest not-for-profit level, and dependent upon the level of experience of the attorney chosen. Candidates must be in or willing to relocate to the New York City area.

MLRC has a small staff, which offers each lawyer the opportunity for substantial responsibility for many aspects of MLRC programs and member services. MLRC members are interesting and intellectually challenging. MLRC publications are well regarded. New programs, publications and projects are constantly under consideration and development. The MLRC Staff Attorney should have excellent research and writing skills, as well as the ability and desire to work with a wide range of individuals and to manage the demands of a number of on-going projects.
Interested individuals should contact:

Sandra Baron, Executive Director

January 24, 2011

Senior Corporate Attorney Position NYC

A Senior Corporate Attorney Position is available, which key responsibilities include:

• General legal affairs. Direct general legal affairs of the company, including public company compliance, risk management, commercial contracts, lease agreements, IP protections, business entity structure, capital financing, employment issues and other matters as needed. Participate in the definition, development of, and ongoing compliance of corporate policies and procedures.
• Business transactions. Serve as legal advisor on all major business transactions, including acquisitions, divestitures joint ventures, routine and non-routine commercial arrangements.
• Privacy. Serve as the company's Chief Privacy Officer. Develop and oversee privacy-related policies, procedures, compliance and disclosures. Establish and maintain an internal framework to ensure adherence to standards of consumer privacy including regulatory, NAI and other industry requirements. Conduct privacy training, prepare appropriate contractual provisions, develop procedures to vet potential partners, apprise senior management of significant industry developments and requirements, etc.
• Litigation. Manage all litigation matters involving the company. Consult with and direct outside counsel on case strategy and tactics. Judge the merits of claims filed against or on behalf of the company. Review and comment on drafts of pleadings, briefs, and other papers. Work with appropriate personnel to define strategic defenses and facilitate settlements where warranted.

Requirements and Qualifications:

• Accomplished attorney with 7-12+ years of progressively responsible experience relevant to the key responsibilities required for this role.
• Background in privacy law, corporate governance, litigation, and complex business matters a must.
• JD degree from national law school and professional license in good standing.
• Very strong knowledge of digital privacy rules and the current regulatory / self-regulatory environment.

If interested, please email Craig Rumberg, Managing Director, at

January 31, 2011

Seton Hall Journal of Sports & Entertainment Symposium

The Seton Hall Journal of Sports & Entertainment Law will be hosting its annual Symposium on February 15, 2011, to address current sports and entertainment law issues. Specifically, this event will focus on the professional and ethical dilemmas confronting attorneys representing athletes and entertainers.

The 2011 Sports & Entertainment Law Symposium will be held on February 15, 2011, from 4:30 p.m. - 9:00 p.m.

Three (2 General & 1 Ethics) CLE credits will be awarded for full day attendance.

For more information, contact Emily Battersby at

February 3, 2011

EASL Job Bank

The EASL Lawyers in Transition (LIT) Job Bank has been updated! To view the Job Bank, please visit the EASL Lawyers in Transition group page on Linked In (

The EASL LIT Job Bank on Linked In is an exclusive benefit for members of EASL. In order to view the Job Bank, you must request to join the EASL LIT group page on Linked In. To join, visit and search for NYSBA Entertainment Art and Sports Law Lawyers in Transition Committee under "Groups." After submitting your request to join the group, we will confirm that you are a member of EASL and your request will be granted.

February 9, 2011

EASL Job Bank - Updated Jobs Available

The EASL Lawyers in Transition (LIT) Job Bank has been updated! To view the Job Bank, please visit the EASL Lawyers in Transition group page on Linked In (

The EASL LIT Job Bank on Linked In is an exclusive benefit for members of EASL. In order to view the Job Bank, you must request to join the EASL LIT group page on Linked In. To join, visit and search for NYSBA Entertainment Art and Sports Law Lawyers in Transition Committee under "Groups." After submitting your request to join the group, we will confirm that you are a member of EASL and your request will be granted.

February 18, 2011

Pro Bono Update


"Dancing is like water, it floats away" -Merce Cunningham

EASL's Pro Bono Steering Committee Members Elissa Hecker and Carol Steinberg collaborated with the New York Foundation for the Arts (NYFA) to present a day long Saturday program on Legal Issues for Dance Companies in February, which generated unprecedented excitement and appreciation among the attendees and the panelists. The beauty of this program was that high level attorneys and innovators in the dance world donated their precious time to speak to the attendees about pressing legal issues that confront the dance community (see the program below for a list of speakers). Many of the attendees had been learning to enhance their professional development through NYFA's BUILD program, and were ready and eager for the legal advice that was given so creatively and generously. The attendance was terrific, and the feedback showed that the dance companies and choreographers who attended were grateful for the rich program (and want more).

Judith Prowda, joined by the Martha Graham Center's Artistic Director, Janet Eilber, gave the keynote address about the Martha Graham litigation and its lessons for dance companies today. The discussion highlighted the importance of determining ownership of the dance, having appropriate contracts to reflect this key decision, and protecting the legacy of the choreographer. The panels that followed on licensing and trusts and estates issues covered these key issues. The licensing panel, consisting of attorneys and an innovator in digital distribution of dance, provided essential legal information to the attendees in practical language. The next panel focused on protecting the legacy of the choreographer in a casual, yet extremely informative manner. Subsequent panels covered basics of setting up and running a business, with an exciting discussion of the pros and cons of using not-for-profit companies and, in the alternative, for-profit models for dance companies. The day concluded with a panel focused on using social media to maximize fan bases and audience attendance. Each panel found its unique and fascinating way to reach the attendees.

Feedback from those who attended showed that they greatly appreciated the advice they were given, and they want more. Their reaction highlights the need for more pro bono work to continue this wonderful process. For example, one attendee said that she needs pro bono counsel to work with her company on an ongoing basis. Another said that she learned so much and now has more questions (a good sign). More than one panelist said that this was the most enjoyable program they had been on or attended. Lane Harwell, Executive Director of Dance NYC (the service organization for the dance community) said, "It was a pleasure to be a part of this extraordinary event - so valuable to the dance community as it navigates legal hurdles and opportunities. Thank goodness there are lawyers out there who want to help! "

Kathy Kim, another Member of the Pro Bono Steering Committee and Stephanie Spangler, an EASL member, also worked behind the scenes with Caroline Camp of NYFA to make this event a success. NYFA's Peter Cobb, attorney, saxophone player, and Program Officer, provided magnanimous and invaluable support.
The attendees want more. Working with the dance community is an exciting and satisfying way to do pro bono work. Please be on the lookout for opportunities to participate through your email, the EASL Listserv, and/or the EASL Blog.

You will find this work as satisfying and enjoyable as we do.

*Introductory Remarks*
Michael Royce, Executive Director, NYFA
Peter Cobb, Program Officer, NYFA Learning/NYFA Consults, BUILD
Carol J. Steinberg, Esq., Co-Chair, EASL Pro Bono Committee; School of Visual Arts

* The Martha Graham Case: Determining Who Owns a Dance*
Judith B. Prowda, Chair, EASL Section, Senior Lecturer, Sotheby's Institute of Art, Law Office of Judith B. Prowda
Janet Eilber, Artistic Director, Martha Graham Center of Contemporary Dance

* Licensing: Contracting with Collaborators and Other Artists*
Cory Greenberg, Esq., Director of Operations & Special Projects, Alvin Ailey American Dance Theater
Marc Kirschner, Founder and General Manager, TenduTV
Christine A. Pepe, Esq., American Society of Composers, Authors & Publishers (ASCAP), Director of Legal Affairs

* Trusts and Estates: Protecting Your Legacy*
Timothy J. DeBaets, Esq., Cowan, DeBaets, Abrahams and Sheppard
Jean Davidson, Executive Director, New York Live Arts, (Bill T. Jones/Arnie Zane Dance Co. and Dance Theater Workshop Re-imagined.)
Terence Dougherty, Board Director and Corporate Secretary of New York Live Arts (Bill T. Jones/Arnie Zane Dance Company Re-imagined); General Counsel of the American Civil Liberties Union; Commissioner of the Women's Refugee Commission
Daniel Scott, Esq., Chadbourne & Parke LLP

* Business Entities and Accounting: Innovative Solutions*
Innes Smolansky, Esq., Law Office of Innes Smolansky
Lesley F. Rosenthal, Vice President, General Counsel & Secretary, Lincoln Center for the Performing Arts
Lane Harwell, Director, Dance/NYC
Brian S. Perkis, CPA

* How You Can Use Social Media to Build Your Brand and Avoid Some Legal Problems Along the Way*
Elissa D. Hecker, Esq., Co-Chair, EASL Pro Bono Committee; Law Office of Elissa D. Hecker
Erik Gensler, President, Capacity Interactive Inc.
Andrew Berger, Counsel: Tannenbaum Helpern Syracuse & Hirschtritt LLP

The Pro Bono Committee's Speakers Bureau also co-sponsored an event with Local 802, a member of the American Federation of Musicians, for a seminar on Legal Issues for Musicians. Christine Pepe, Director of Legal Affairs of the American Society of Composers, Authors & Publishers (ASCAP) and EASL's Music Committee Co-Chair, provided the attendees with a helpful overview of copyright law and the components involved when musicians are taking steps to protect their own work or properly use the other artists' works. Harvey Mars, in-house counsel from Local 802, complemented this seminar by discussing legal issues commonly encountered by musicians in the union, such as the topic of practicing music in one's residence with unwelcoming neighbors.

February 22, 2011

Blog for CLE Credits!

I want to remind all EASL Section members that we are offering the ability to Blog for free admission to an EASL Section CLE program.

EASL Section Members may write for the EASL Blog about a particular EASL CLE program and earn admission to that program free of charge in exchange for the blog entry, provided:

a) the Member had a prior blog (not for CLE) published on the EASL Blog within the past three (3) months, or had an article published in the EASL Journal within the past twelve (12) months;

b) the Member makes the request for approval to write for the Blog at least one week prior to the CLE program date; all such requests are made to the Editor of the EASL Blog, Elissa D. Hecker (, who makes the final decision;

c) Members are limited to one blog-for-CLE per year; and

d) Annual Meeting CLE Programs, CMJ Programs, Annual Fall and Spring Meeting Programs are excluded.

e) In the event the blog is not submitted within two weeks of the program date, the blog-for-CLE offer is cancelled and the Member will be billed for the program; there will be no extensions.

We hope that many good writers will be interested in this wonderful program and participate.

Please let me know if you have any questions or would like to volunteer pursuant to the guidelines listed above.

Elissa D. Hecker, EASL Blog Editor

February 23, 2011

A Friday Night: Reflections on the Critiques of "Would the Bard have Survived the Web?"

By Mary Rasenberger

The excellent op-ed entitled "Would the Bard have Survived the Web?," written by Scott Turow, Paul Aiken, and James Shapiro (the Authors Guild's President, Executive Director and a member, respectively) and published in the New York Times on February 15th (available at:, generated numerous responses and a great deal of controversy in the blogosphere. The op-ed took a look at the golden age of English theater in the late 16th and early 17th centuries when there was "a wave of brilliant dramatists", and described how the erection of walls around theaters (literal pay-walls) allowed theaters to charge theater-goers, which enabled playwrights and actors to get paid by the public for the first time, rather than only by patrons. When authorities knocked the walls down in the mid-17th century to silence the seditious political ideas they feared were being expressed within, the ability to make a living from playwriting came to an end for a time and so did the "explosion of playwriting talent." The article warned that if we allow the copyright system we currently have in place to crumble under prevailing attitudes and internet piracy, the explosion of creative talent we have today may likewise dwindle. A number of letters to the editor and blogs have criticized the op-ed and used it against copyright law generally. The primary arguments can be summarized as follows: (1) there was no copyright at the time of Shakespeare, so clearly money can be made without copyright, and (2) Shakespeare copied from others, showing that copyright law restricts rather than induces creativity.

The first point does not even merit a response, since the op-ed authors themselves describe how copyright developed a half century later, providing a new, more stable way for authors to make a living. The second point belies a complete over-simplification and misunderstanding of U.S. copyright law. Incorporating elements of a prior work into one's own is not necessarily infringement and has always been part of the creative process. Copyright law, as construed by the courts, has long-since accommodated this process through, among other doctrines, the substantial similarity test, lack of protection for ideas, facts, common expression, and scènes a faire, the fair use doctrine, and for older U.S. works, formalities that put a large number of works into the public domain, as well as the almost 80 pages of exceptions and limitations in the Copyright Act. As a copyright practitioner, rarely a day goes by when I don't tell a client, usually a copyright holder, that it is free to use elements of another's work in some manner or another. While the courts don't always get copyright right, they often do, and through the last two centuries they have demonstrated enormous flexibility in their applications of the copyright law as technologies have shifted, including expanding fair use considerably in a manner that reflects evolving practices and technological advancements.

While the analogy to Shakespearean theater in the op-ed was imperfect, as most analogies are, the point of the article was clear and an excellent one - that "a rich culture", such as we now have requires a large number of creative individuals - "authors and artists", who devote their careers to their art. Indeed, our Founders were wise enough to understand that a true democracy requires a proliferation of free expression, that individuals not be beholden to any patron including the government, and that this can only be achieved by allowing professional creators to earn money from their works on the open market. Copyright is a brilliant way to achieve that end. The Shakespearean era theater grew out of the literal pay-wall described in the op-ed; our vast, prolific culture today has largely grown out of copyright law, a legal pay-wall.

The Guild's op-ed acknowledges that there is a place for free creative work online; and certainly there are those who will create for free, as many of the responses also point out. Indeed, many professionals who make a living from their works often will produce, perform and/or distribute works for free for any number of reasons (marketing, friendship, philanthropy, or the desire to see a particular work "out there"). Copyright gives creators the flexibility to do that - to decide when they want to assert their rights. Yet that is not what the op-ed is talking about; rather, it reminds us that copyright law enables artists and authors to make a living and is why we have the tremendous creative output we have today -- just as the theater's literal pay-wall was key to the creative burst in the theater in Shakespeare's time.

Let me give you a concrete example. Friday, after finally having acknowledged that my son was too sick to join my husband skiing, I cancelled our plans and we found ourselves with a delightfully free weekend ahead of us. I worked late and, among other things, read posts critiquing the op-ed forwarded to me by my co-teacher at Fordham Law (of a seminar "Copyright Reconsidered - Authorship in Historical Perspective"). Pondering the posts, I signed off and decided to indulge myself for the rest of the evening: I went to the gym and watched a movie on TV. As I later realized, it had been a truly indulgent evening -- over the next four hours my two kids (ages 13 and 14) and I had consumed millions and millions of dollars' worth of copyrighted works.

First, my daughter and I listened to the radio on the way to the gym, switching stations to find songs one or both of us liked; we heard some hard rock that was too hard for me, the Rolling Stones, Pink Floyd, and Rihanna (my choice --over her eye rolling). At the gym, she listened to her iPod, with a collection of about 2000 songs -- post-1990 alt-rock, punk rock and hard rock (all legally downloaded). I watched and listened to music videos licensed by the health club chain. I surfed between 6 or 7 stations, including dance, top hits, rock, alternative, rap, and whatever was playing songs that would keep me moving, some of which were creative and fun - lots of great choreography, dancing and/or special effects. On the way home, we listened to Evanescence (I'd been watching one of their videos when my daughter came to find me and we started to talk about it), and an Angels and Airwaves song that my daughter had heard in the locker room and wanted me to hear, on her iPod. She also played me a Blink 182 song and another sister band of Angels and Airwaves to compare the music.

At home, my son suggested I watch the "The Other Guys" on video-on-demand (a superb, hilarious movie). He listened to his iTunes songs (a collection of pre-1980 rock, also legally downloaded) on the computer while playing Wii Ski (which has wonderful artwork - it makes you feel like you are there on the powder covered mountain). He also watched the George Lopez sitcom simultaneously while checking out interactive ski trail maps. My daughter took pictures on her digital camera of our new kitten, then edited them and added special effects using iPhoto and Picnik software, chatted with friends on Facebook, texted others, all while listening to her iTunes collection on her computer. Then, we all got into bed and read - different books. (I read Just Kids by Patti Smith - a testament to the artistic soul and the difficulties creators experience for their art. Thanks to copyright, Smith's and Mapplethorpe's days of privation when "just kids" paid off and they both were eventually able to make a living off of their art.)

As spoiled as we are with an abundance of creative content, our activities on Friday evening were not completely atypical for Americans. I am sure that even those who object to copyright laws and believe that somehow art gets produced without it, also have iPods full of songs, watch TV and movies, read books, and rely on a large assortment of software programs, and would feel deprived without this "content."

The reason why I describe all this is because it's important to bear in mind that it took hundreds of professional creators who work full-time honing their art so that we can enjoy it to produce what the three of us consumed in just one evening. At a minimum, the following full-time creative professionals were involved in creating our evening at home, most of whom you can assume need to earn a living:

• Recorded music: performers (lead and side musicians) and song writers for about 50 songs, amount to at least several hundred people.

• Music videos: recording artists, professional dancers (hundreds among all the videos), choreographers, sound engineers, directors, cinematographers amount to several hundreds of people for all of the videos combined.

• Movie and TV: screen writers (probably several for just the movie), actors (who clearly added some of their own creativity/improvisation), directors, editors, cinematographers, special effects artists, sound artists. Don't forget the scores and accompanying background music, which are in addition to the music listed above.

• Wii Ski: visual artists, computer programmers -a couple dozen at least, I'd guess.

• Computer programs (iPhoto, Picnik, digital camera, cell phone, interactive maps, Facebook ... among others) - involving dozens, if not hundreds of people

• Books: Each one probably took the author the equivalent of at least one year (and probably much longer) of full-time work, plus there may have been ghost writers, and editors likely played a creative role.

All of those people make a living doing their work and had to get paid (in most cases, not a heck of a lot but enough to make a living) - before the big bad media companies who are, according to some, ruining the world with copyright, made a cent of profit. Although I paid for every item of content where payment was required, my amortized costs for our evening were maybe $20.

How fortunate we are. We have access to so much wonderful and creative art that brings us together in the ways we share and experience it. Yet we take all this content and the shared experiences it provides us for granted. Try to imagine our lives without music everywhere we go, TV, movies, books, newspapers and software. (What if we didn't have music, movies, TV, and books to share and talk about with our teenage kids? The arts afford so many opportunities for sharing thoughts, feelings and learning - and the kids don't even realize it!) The reason that we are able to have access to an abundance of really great content is that we live in a country with so many creative people who have devoted their lives to their art -- and they can do so because we have copyright laws that work.

What if we couldn't support professional creators anymore because no one could afford to pay them - which, as the Authors Guild op-ed warns, could happen if it becomes impossible to make money on content because everyone is stealing it online? The op-ed authors' point is that we, as a culture, have been lulled into taking that kind of creative output for granted, but there is no guarantee it will continue. While it's certainly true that there will always be people who will create regardless, do we really want to rely on the creativity of kids, academics, moonlighters and retirees, or, blogs for our culture? Without copyright, we certainly wouldn't have anyone to underwrite the significant costs of creating film, videos, computer games or software - so just say good bye altogether to those arts. There are few creators who could afford the time to write a book, write or record original music, or choreograph if they had to find other ways to make a living.

Copyright propelled a huge explosion of creative output in America. The production of our creative works is so vastly more complex than any patronage system could muster, even if we were willing to give up expressive and artistic freedom - which we are not. Furthermore, creativity is one of the things we are really good at in this country. We excel at teaching our kids to think creatively in and out of school, and as a society at large. As a result, copyrighted works are one of our largest exports. Let's celebrate that creativity. Let's not let rhetoric and the imperfections of current copyright law diminish it. Rather, let's learn from the past and help steer copyright law so that it continues to morph to accommodate the evolving technologies and practices of our arts today.

March 9, 2011

EASL Job Bank Info Updated

The EASL Lawyers in Transition (LIT) Job Bank has been updated! To view the Job Bank, please visit the EASL Lawyers in Transition group page on LinkedIn (

The EASL LIT Job Bank on Linked In is an exclusive benefit for members of EASL. In order to view the Job Bank, you must request to join the EASL LIT group page on Linked In. To join, visit and search for NYSBA Entertainment Art and Sports Law Lawyers in Transition Committee under "Groups." After submitting your request to join the group, we will confirm that you are a member of EASL and your request will be granted.

April 27, 2011

Diversity Committee

I am pleased to announce the formation of the Diversity Committee, chaired by Anne Atkinson. Anne was recently appointed as Co-Chair of the Membership & Diversity Committee, which has been split into two Committees, with Rosemarie Tully and Jessica Thaler as Co-Chairs of the Membership Committee and Anne as Chair of the Diversity Committee.

Anne, who is a new member of the EASL Executive Committee, is also a member of the Executive Committee of the NYSBA Corporate Counsel Section, where she has been involved in diversity initiatives. Anne is Of Counsel in the Entertainment, Media and Communications Group at Pryor Cashman. Anne's practice focuses on film and television finance and production.

I encourage you to join EASL's newly formed Diversity Committee. If you wish further information, please contact Anne Atkinson at

I also urge you to become involved in our Membership Committee. If you have any ideas or questions about membership, please contact Rosemarie Tully at and Jessica Thaler at Stay tuned for our wine tasting dinner, which will be held in the fall.

June 1, 2011

Seeking Authors

EASL's Publications Committee is seeking authors for its upcoming book about sports law - In The Arena.

Chapters will focus on the following issues and topics: NCAA and college/university athletic rules; arena football; right of publicity and privacy of athletes; doping; eminent domain; Pete Rose/gambling and the Baseball Hall of Fame; Title IX; Insurance; and medical safety issues (i.e. concussions and helmets). We are also accepting other suggestions regarding topics. Please note that this topic list is preliminary and subject to change. The target date for publication is 2013.

The book's editors are Elissa D. Hecker and David Krell.

Elissa is former Chair of the EASL Section, Co-Chair of EASL's Pro Bono Committee, Chair of EASL's Publications Committee and Editor of the EASL Journal and Blog. Elissa also co-edited the popular NYSBA books Entertainment Litigation: Know the Issues and Avoid the Courtroom and Counseling Content Providers in the Digital Age.

David Krell is The Writing Guy™. He is the writer of Krell's Korner, an article series in the EASL Journal. David has also written more than 60 articles and 100 commentaries about popular culture.

Please email Elissa at if you are interested in contributing to this book.

Maria Pallante Appointed as Register of Copyrights

By Mary Rasenberger

Today, concluding an 8 month search, the Librarian of Congress, Dr. James H. Billington, announced the appointment of Maria A. Pallante as the new Register of Copyrights.

Maria has been Acting Register since January 1st of this year following the retirement of long-time Register Marybeth Peters at the end of 2010.

Until her recent appointment as Acting Register, Maria served as Senior Advisor to the Librarian following two senior positions in the Copyright Office. She was the Associate Register for Policy and International Affairs from December 2008 to October 2010 and Deputy General Counsel from January 2007 to December 2008. While in those positions, Maria was instrumental in developing and implementing domestic and international policy initiatives, including policies relating to copyright exceptions for the reading disabled, orphan works, Google books and the gap in termination provisions under the copyright law. Before returning to the Copyright Office in 2007, Maria had already had a long, esteemed career in copyright law, including a former stint at the Copyright Office as Policy Advisor in 1996-97 and serving as intellectual property counsel and director of licensing for the Guggenheim Museums, on the legal staffs of the Writers Guild and the Authors Guild, as well as in private practice.

"The position of Register of Copyrights is extremely important to the copyright community, the Library of Congress and the United States, and requires a significant skill set," said the Librarian of Congress.

The Register of Copyrights, as director of the Copyright Office of the Library of Congress, administers the U.S. Copyright Office and is responsible for all administrative functions and duties under the U.S. Copyright Act, including overseeing the copyright registration system. In addition, the Register (i) advises Congress on national and international issues relating to copyright, (ii) provides information and assistance to Federal departments and agencies and the Judiciary on national and international issues relating to copyright, (iii) participates in meetings of international intergovernmental organizations and meetings with foreign government officials relating to copyright, including serving as a member of United States delegations as authorized by the appropriate Executive branch authority, (iv) conducts studies and programs relating to copyright and related matters, and (v) performs any other function vested in the Copyright Office by law, including educational programs conducted cooperatively with foreign intellectual property offices and international intergovernmental organizations and any other functions as Congress may direct.

We wish Maria the very best in her new position.

June 14, 2011

Pro Bono Clinic

Elissa D. Hecker
EASL Pro Bono Steering Committee

On Wednesday, August 10th, the EASL and IP Sections will be co-sponsoring a Pro Bono Clinic at the New York Foundation for the Arts (NYFA). The Clinic will take place between 4:00 and 7:00 p.m. at NYFA's offices in Dumbo, at 20 Jay Street, 7th Floor, Brooklyn.

If you would like to volunteer for one or more of the 30 minute time slots, please email me at and specify your contact information (name, firm/company, phone number and email address), which time slot(s), area(s) of expertise, and whether you are an EASL and/or IP Section member. In addition to the usual entertainment, arts and business related questions that we receive from potential clinic clients, we are particularly interested in attorneys who have experience with incorporating and working with 501(c)(3) not-for-profit companies. Please so advise if this is an area of expertise for you as well.

If you do not have pro bono liability insurance, you may be covered under EASL and IP's policy for this Clinic. Please also notify me if you need such coverage.

July 1, 2011

Entertainment Merchants Association

By Jason E. Carlie

On Monday, the Supreme Court struck down a California statute that prohibited the sale or rental of "violent video games" to minors, required modification of the labeling of their packaging, and established a civil fine of up to $1000 for violations. Cal. Civ. Code Ann. §§1746-1746.4 (West 2009). The statute, challenged by representatives of the video game industry, covered games "in which the range of options available to a player includes killing, maiming, dismembering, or sexually assaulting an image of a human being, if those acts are depicted" in a way that "[a] reasonable person, considering the game as a while, would find appeals to a deviant or morbid interest of minors," "patently offensive to prevailing standards in the community as to what is suitable for minors," that "causes the game, as a whole, to lack serious literary, artistic, political, or scientific value for minors." Id. at §1746(d)(1)(A).

The majority opinion written by Justice Scalia, with Justices Kennedy, Ginsburg, Sotomayor and Kagan concurring, concluded that videogames communicated ideas and as such, were protected by the First Amendment.

Relying upon its decision in United States v. Stevens from the previous term, the majority stated that "new categories of unprotected speech may not be added to the list by a legislature that concludes certain speech is too harmful to be tolerated." Under Stevens, a facial challenge based on the First Amendment can succeed only if "a substantial number of its applications are unconstitutional, judged in relation to the statute's plainly legitimate sweep." U.S. v. Stevens, 559 U.S. __,___ (2010). It is more difficult to mount a facial First Amendment attack on a statute that seeks to regulate activity that involves action as well as speech. Broadrick v. Oklahoma, 413 U.S. 601, 614-615 (1973). The Court stated that Stevens controlled Entertainment Merchants Association, and opined that "California has tried to make violent-speech regulation look like an obscenity regulation by appending a saving clause" and analogized the statute at issue attempting to mimic the obscenity-for-minors statute upheld in Ginsberg v. New York.

The Court noted that "[i]t is rare that a regulation restricting speech because of its content will ever be permissible." California acknowledged that it could not show a direct causal link between violent video games and harm to minors. The Court criticized the State's reliance on Turner Broadcasting System v. FCC, 512 U.S. 622 (1994), which applied intermediate scrutiny to content-neutral regulation. The California statute at issue in Entertainment Merchants Association, however, is content-specific, and as a result, must meet a strict scrutiny which requires that the California law must be "narrowly tailored" to further a "compelling interest" without there being a "less restrictive" alternative that would be "at least as effective." Reno v. American Civil Liberties Union, 521 U.S. 844, 874, 875, 879 (1997).

The California statute at issue suffered from three insurmountable issues. It was under-inclusive in two respects. First, it singled out video game creators and compared them against other kinds of speakers, such as "booksellers, cartoonists, and movie producers," without giving any "persuasive reason why." As such, the statute raised "serious doubts about whether the government is in fact pursuing the interest it invokes, rather than disfavoring a particular speaker or viewpoint."

Second, the Court felt that the statute was under-inclusive, in that California is "perfectly willing to leave this dangerous, mind-altering material in the hands of children so long as one parent [or guardian]" approves of it. Further, the majority also notes that there weren't any requirements to verify the nature of the relationship. This appeared to the court to be a rather lax way to address "a serious social problem."

As a result, California could not show that the statute's restrictions "meet a substantial need of parents who wish to restrict their children's access to violent video games but cannot do so." The Court then pointed to the video-game industry's voluntary rating system designed to inform consumers about each games' content.

Third, the Court held that the Act was wildly over-inclusive. It pointed out that "[n]ot all of the children who are forbidden to purchase violent video games on their own have parents who care whether they purchase violent video games." The Statute's entire effect, according to the Court, "is only in support of what the State thinks parents ought to want." (emphasis in original). Thus, the statute was not narrowly tailored to assisting parents, as the First Amendment requires.

Justice Alito, in his concurrence, would reach the same conclusion, but instead chose to focus on the "impermissibly vague" argument that the video-game industry raised.

Justice Alito started by citing the due process rule, requiring that laws give people of ordinary intelligence fair notice of what is prohibited. Grayned v. City of Rockford, 408 U.S. 104, 108 (1972). Then he pointed out several deficiencies that, in his opinion, rendered the statute void for vagueness. First, the California statute did not define "violent video games" with the "narrow specificity" the Constitution requires. Second, California "relied on undefined societal or community standards" as to what is suitable for minors. The California law is heavily dependent on the identification of generally accepted standards regarding the suitability of violent entertainment for minors, while leaving such critical terms as "deviant" and "morbid" undefined in the statute.

Moreover, the fact that there is no jurisprudence on the books regarding the standards for expression related to violence further weakens the state's failure to define what he felt were critical terms.

Justice Alito disagreed with the majority that Stevens controlled the analysis, because the statute in that case was sharply different from the one in Entertainment Merchants Association. Stevens related to a law that "broadly prohibited any person from creating, selling, or possessing depictions of animal cruelty for commercial gain." The Justice stated that the California statute in Entertainment Merchants Association "limited the sale or rental of violent video games to minors," and pointed out that there was no restriction on the creation of the games, nor was there one against adults from purchasing them.

Stevens, according to Alito, does not support the proposition that a law like the violent video games law has to satisfy strict scrutiny. For Justice Alito, the end result is that the majority opinion is a "sweeping" suggestion that "no regulation of minors' access to violent video games is allowed - at least without supporting evidence that may not be realistically obtainable given the nature of the phenomenon in question."

Justice Thomas' dissent took a novel approach. He did not rule on the statute on First Amendment grounds, essentially holding that minors have no constitutional right to speak or be spoken to without their parents' consent. There is no case citation supporting that proposition. It appeared to be an exercise in discerning what the Framers envisioned for the First Amendment's application to children via extended references to historical books on the nature of colonial- and post-Revolutionary War- era childrearing.

Justice Breyer's dissent applied a more conventional approach. He applied both the Court's vagueness precedents, and Stevens. He opined that the special category of protection is not "depictions of violence," but rather the protection of children. He would hold that the California statute provides fair notice of the prohibition, and therefore, it isn't impermissibly vague, in contrast to Justice Alito's concurring opinion. Breyer also believed that the California law survived strict scrutiny in that it was narrowly tailored, furthered a compelling state interest, and there was no less restrictive alternative that was at least as effective. Applying that rule, he would find that California's law imposed merely a modest restriction on expression, prevented no one from playing a video game, no adult from buying one, and no minor from getting one if a parent got one for them. To him, the California law advanced a compelling state interest in that the basic parental claim to authority over childrearing makes it proper to enact laws designed to further that cause, and the State's independent interest in the well-being of youth. He eschewed the majority's acknowledgement of the video-game industry's voluntary rating system as a less restrictive alternative as least as effective. Thus, he found that the law is not fatally under-inclusive, and cited many psychological studies to support his opinion.

August 2, 2011

Message from the Chair

I am pleased to announce the appointments of two Law Student Liaisons for the 2011-2012 academic year. As Law Student Liaisons, they will attend EASL Executive Committee meetings, participate in the lively exchange of ideas with EASL colleagues, assist with EASL programs and serve as the voice for their fellow classmates.

Nyasha S. Foy is a rising 3L at New York Law School. Nyasha is a student research fellow for the Institute for Information Law and Policy, New York Law School's home for the study of intellectual property and technology law, where she focuses on copyright, entertainment and music law. Additionally, she serves as the 2011-2012 Vice Chair for the National Black Law Students Association, Northeast Region. She is also a member of the New York Law School Moot Court Association and competed in the International Trademark Association's Saul Lefkowitz Moot Court Competition in spring 2011. She holds a B.A. in Music (Honors) and French from Wesleyan University and worked in marketing and advertising prior to attending law school. Nyasha runs her own music publishing company, yofoy music publishing.

Carey Alexander is a third-year student at St. John's University School of Law, where he is Associate Managing Editor of the St. John's Law Review. Prior to attending law school, Carey worked as an editor of the acclaimed consumer-advocacy blog The Consumerist, under both Gawker Media and Consumers Union. He was the web coordinator for the National Campaign to Restore Civil Rights, housed at New York Lawyers for the Public Interest, and served as a policy advisor to Bronx Borough President Adolfo Carrion. Carey received his undergraduate degree in Government from Skidmore College.

Warm welcome to Nyasha and Carey, the first EASL Law Student Liaisons from their respective law schools!

August 5, 2011

Message From the Chair

I hope everyone is enjoying the summer. I am delighted to announce two recent appointments to the EASL Executive Committee.

Judith B. Bass has been appointed as Co-Chair of EASL's Literary Works Committee. Judy is a media and entertainment lawyer with a solo practice who represents a variety of creative artists and producers in film, television, theater, publishing, licensing and the visual arts. She has worked, among other places, as an attorney and business affairs executive at Time Inc., CBS and Marvel Enterprises. An article about her practice entitled "Adding a Personal Touch for Less: Media Dealmaker Thrives Outside the Corporate World" appeared in the February 26, 2007 issue of Crain's New York Business. Her article entitled "Cariou v. Prince: Fair Use or Unfair?" will be published in the Summer 2011 issue of the EASL Journal.

Cheryl Davis has been appointed as Co-Chair of EASL's Diversity Committee. Cheryl is a partner at Menaker & Herrmann LLP, where her practice focuses on intellectual property matters (particularly copyright and trademark cases), employment, and real estate/construction related matters. She is also a published playwright whose work has been frequently read and performed nationally. Her play about the desegregation of the nations' school system, The Color of Justice, which was commissioned by Theatreworks/USA, received critical acclaim and tours regularly. Cheryl is the recipient of a Writers Guild Award for her work on the daytime dramatic serial As The World Turns.  Her musical Barnstormer received a Jonathan Larson Performing Arts Foundation Award and was in developmental production at the Red Mountain Theatre in Birmingham, Alabama in January 2010.

Warm welcome to Judy and Cheryl!

August 19, 2011

Message from the Chair Judith B. Prowda

I am delighted to announce the appointment of our first out-of-state Law Student Liaison, Aaron E. Rosenthal, who will be entering his 3rd year at DePaul University College of Law in Chicago. Like his fellow Law Students Liaisons, Aaron will attend EASL Executive Committee meetings, engage in the lively exchange of ideas with EASL colleagues, assist with EASL programs and serve as the voice for his fellow classmates.

Aaron is the current President of the Art and Cultural Heritage Law Society at DePaul. His work during law school has included a clerkship at the Chicago History Museum and an internship with The Lawyers' Committee for Cultural Heritage Preservation. Last spring, he participated in DePaul's National Cultural Heritage Law Moot Court Competition as a member of the Ghost Team, and drafted a section of the bench memo.

Aaron received his Bachelor's degree from Brown University in Old World Art and Archaeology, and his Master's degree in Art Business from the Sotheby's Institute of Art - New York. His Master's thesis; " Sellers of Ancient Art, the illicit trade in antiquities and CPAC: Kill or Cure?", focused on the development of bilateral trade agreements between the United States and archaeological source nations, and their effect on New York's market for antiquities.

September 23, 2011

Minority Attorneys: You're An Up and Coming Talent - Be More, Do More and Discover More By Reaching For The Leader Within You

Wednesday, October 12, 2011 6:00 pm-9:30 pm

There is no charge for this program.
To Register:

This seminar is aimed at enabling lawyers of color to determine effective ways to manage their career advancement and success by learning how to unlock the keys to the leader within. It can help you to tap your potential to bring more of your creativity, intelligence and ideas into your job role. Come to meet and hear how your peers in the legal community are achieving career success, satisfaction and fulfillment through their involvement and leadership in organizations, corporations, law firms, professional associations, affinity groups, academia, public interest, faith-based and civic affiliations and board membership. Learn how they use their leadership to their advantage and how their leadership activities have contributed to their career enhancement and success. Learn about the opportunities and exciting challenges in professional and civic association involvement that can and will bring you more career success. Each attendee will leave with a personalized action plan entitled Five Rules For Leadership Success that they can execute immediately. Breakout group leaders will be available to assist you in implementing your Five Rules For Leadership Success Plan.

Moderator:VERA SULLIVAN, M.A., President and Founder Diversityforce LLC

Speakers:RAKHI BAHADKAR, Senior Regulatory Services Consultant, New York Life Insurance Company; MICHAEL I. BERNSTEIN, Bond Schoeneck & King, PLLC; VINCENT T.CHANG, Wollmuth Maher & Deutsch LLP; City Bar Diversity Champion 2011; MARGO G. FERRANDINO, Bond Schoeneck & King, PLLC; THOMAS JACKSON, Executive Vice President, General Counsel and Corporate Secretary, EdisonLearning, Inc.; STEPHEN C. ROBINSON, Skadden, Arps, Meagher, Flom & Affiliates; Chair, Committee to Enhance Diversity in the Profession

Sponsored by:
Committee on Minorities in the Profession, Jeanine Conley, Chair

Co-Sponsored by:
NYSBA Entertainment, Arts and Sports Law Section, Committee on Diversity; Asian American Bar Association of New York; Association of Black Women Attorneys; Metropolitan Black Bar Association; New York City Bar's Committee To Enhance Diversity In The Profession

September 30, 2011

Remarks from the Chair

By Judith B. Prowda

There have been several exciting new developments this spring. One of EASL's most pressing themes is diversity. In response to President Vincent Doyle's initiative, EASL was among the first Sections to form a Diversity Challenge Team, initially comprised of Anne Atkinson, Rakhi Bahadkar, Elissa Hecker, Jessica Thaler, Rosemarie Tully and myself. As a member of the House of Delegates, I was thrilled to hear our Section lauded for our commitment to diversity at the House of Delegates meeting on June 25th.

We were already focusing our attention to diversity, creating a Diversity Committee in early spring, chaired by Anne Atkinson. Anne was recently appointed as Co-Chair of the Membership & Diversity Committee, which has been split into two Committees, with Rosemarie Tully and Jessica Thaler as Co-Chairs of the Membership Committee and Anne as Chair of the Diversity Committee. Anne will be building on her experience on the Executive Committee of the NYSBA Corporate Counsel Section, where she has been involved in diversity initiatives. Rosemarie and Jessica will continue in their roles building membership, which continues to grow as attorneys recognize the enormous value of EASL in their practices. In the coming year, we will be developing a comprehensive diversity plan, including expanding diversity of Section membership through CLE programs and other events such as networking opportunities. We are committed to participating fully in President Doyle's Diversity Challenge and welcome your ideas of how we can achieve our goals. Throughout the spring, the Section has held numerous programs of importance. An excellent double-feature on entertainment law was held in May. Professor Stan Soocher of the University of Colorado, Denver, presented two informative and lively programs. On May 16th he discussed legal developments in the film and television industries in a program organized by the Motion Pictures Committee (Steve Rodner and Mary Ann Zimmer, Co-Chairs) and the Television & Radio Committee (Pamela Jones and Barry Skidelsky, Co-Chairs). The following week, Professor Soocher delivered his essential lecture, "Entertainment Law - Year in Review", at our Spring Meeting on May 24th, which was organized by EASL Program Co-Chair Tracey Greco Meyer.
Our Theatre and Performing Arts Committee (Diane Krausz and Jason Baruch, Co-Chairs) hosted a program on June 20th, entitled "Revisiting Form D - Theatrical Offerings and What You Need to know," featuring attorneys Gary Emmanuel and Mark Beigelman. This event was held at UBS.

In April, our Fine Arts Committee, which I chair, organized a behind the scenes tour of Sotheby's, Inc., where we met with auction house specialists and toured the American Art and Photography exhibits. The following month, we held a panel, entitled "Fair Use and Visual Art: Recent Developments," which I moderated. This was a lively and engaging discussion on two recent cases focusing on copyright infringement and fair use involving photographers and visual artists: Patrick Cariou v. Richard Prince, Gagosian Gallery, Inc., Lawrence Gagosian, and Rizzoli International Publications, Inc., 2011 U.S. Dist. LEXIS 29070 (S.D.N.Y. Mar. 11, 2011); and Shepard Fairey and Obey Giant Art v. The Associated Press, Civil Action No.: 09-01234, filed 2/9/09 (S.D.N.Y.). Panelists included Judith B. Bass (Law Office of Judith B. Bass), Daniel Brooks (Schnader Harrison Segal & Lewis LLP), Meir Feder (Jones Day), and Claudia Ray (Kirkland & Ellis LLP).

The following month, the EASL Lawyers in Transition Committee (Leila Amineddoleh, Stephanie Khalifa, Co-Chairs) joined forces with the Fine Arts Committee to offer an informative program on cultural heritage property, entitled "A Snapshot of Cultural Heritage Property Law." This popular event featured Evan Barr (Steptoe & Johnson), Darlene Fairman (Herrick Feinstein) James McAndrew (former Senior Special Agent with U.S. Department of Homeland Security and currently Forensic Specialist at the law firm of Grunfeld, Desiderio, Lebowitz, Silverman & Klestadt LLP); and Jane Levine (Senior Vice President and Worldwide Director of Compliance for Sotheby's).
In late spring we participated in a full day joint CLE program co-sponsored by EASL, the Intellectual Property Section and the NYSBA Committee on Continuing Legal Education. This program, entitled "Putting it Together: An Introduction to Entertainment Law Practice," was co-chaired by Diane Krausz and Kimberly Ayers Shariff (Chair, EASL's In-House Counsel Committee). Among the featured participants in this program were Howard Siegel (Former Chair), Stephen B. Rodner (Co-Chair, EASL's Motion Picture Committee), Marc Jacobson (Founding Chairman), Carla Miller (Vice President, Business and Legal Affairs, Universal Music Group), Tom Ostertag (Senior Vice President and General Counsel, Major League Baseball), Stanley Pierre-Louis (Vice President, Associate General Counsel, Intellectual Property & Content Protection, Viacom Inc. and Co-Chair, EASL Litigation Committee), Lesley Rosenthal (Vice President and General Counsel, Lincoln Center for the Performing Arts, Inc.), Mark Merriman (Frankfurt, Kurnit, Klein & Selz, P.C.), Carter Ann McGowan (Sendroff and Baruch, LLP), and Hal Lieberman (Hinshaw and Culbertson, LP). The panels were expertly moderated by Rosemarie Tully (Vice Chair), Kimberly Ayers Shariff, Diane Krausz and Jason Baruch.

Our partnership with the New York Foundation for the Arts (NYFA) continues to blossom. On June 25th, the Pro Bono Committee provided speakers from the EASL Section for NYFA's Artist as Entrepreneur Boot Camp on copyright, contract, and trademark law, and organized breakout groups for various arts disciplines. Future collaborations between EASL and NYFA will include a program on Insurance Law Issues for NYFA's BUILD Program recipients (grant to help dance companies increase their administrative capacities) and pro bono litigations. EASL is also running a Pro Bono Clinic on August 10th for qualifying NYFA members. (Please see the Pro Bono Update for details).

On a more social note, Jessica Thaler, Co-Chair of our Membership & Diversity Committee, organized a splendid wine tasting at Villa Berulia in Manhattan in June. The restaurant paired a different wine with each of five courses. It was such a success that we will be holding similar events in the future.

It's an ongoing pleasure to welcome new liaisons from the Young Lawyers Section for the 2011-2012 term - Ethan Boardman, Jaimie Glover and Rakhi Bahadkar. This makes a grand total of five YLS liaisons, including Jason Aylesworth and Ezgi Kaya for the 2010-2011 term. Our enthusiastic Young Lawyers Liaison Committee organized a first ever Bowl and Mingle event on May 16th, which almost instantaneously sold out and was a rousing success. It was great fun, but please don't ask me my score!

Looking forward to the fall, we have a number of terrific events already in the works. A fabulous CLE program on financing in the sports and entertainment industries will be held during the week of September 19th. Speakers include a sports banker and an entertainment banker, a lender's counsel and a borrower's counsel. Jessica Thaler, who organized the outstanding panel, will also serve as Moderator.

Of course, the fall would not be complete without our Fall Program. Stay tuned for details about our events

In closing, I note several transitions in the Executive Committee. Bennett Liebman will be leaving his position as Co-Chair of the Legislation Committee in order to accept a position in State government. Bennett has been a steady and reliable EASL resource in Albany for many years, with extraordinary insight into legislative matters. Bennett has also served on the House of Delegates with distinction. Hopefully, Bennett will continue in his role as District Representative from the Third Judicial District. Tracey Greco Meyer stepped down as Program Co-Chair after five years of excellent service. We wish her well in her new position as Corporate Counsel and Director, Product Compliance at Ross Stores, Inc. I also acknowledge our outgoing Program Co-Chair Rachel DeLetto, who did such a fabulous job on the 2010 CMJ-EASL Fall Program. Our new Program Co-Chairs are Diane Krausz and our Liaison from the Young Lawyers Section, Ethan Boardman. Another wonderful addition to our Executive Committee is Judith B. Bass as Co-Chair of EASL's Literary Works Committee with Ken Swezey. In addition, our energetic and resourceful Law Student Liaison from Cardozo, Irina Tarsis, has been appointed as Litigation Coordinator for EASL's Pro Bono Committee, replacing Monica Pa, who stepped down early this year to accept a position at Disney in Los Angeles.

Finally, I thank our trusted liaisons in Albany, Dan McMahon and Leslie Scully, who have worked alongside many of us for the past year and a half. Although they are sadly leaving us as liaisons, they will fortunately continue to work with us on publications. We look forward to a productive relationship with Tiffany Bardwell, our new Section Liaison. Warm welcome to Ethan, Irina, Judy and Tiffany!

I hope to see many of you at our events in the fall! Please continue to e-mail me your ideas at

October 3, 2011

EASL Fall Program: Anatomy of a Hit Reality TV Series

Anatomy of a Hit TV Reality Show Series, and Other Things We Think You
Should Know

Wednesday, October 19, 2011
Concierge Conference Center
780 Third Avenue(between 48th and 49th)
New York, NY 10022

7.5 MCLE Credits (2.0 in ethics)

Our 2011 annual Fall Program begins with a morning breakfast and two
seminars hosted and inspired by EASL's Young Entertainment Lawyers: the
first will offer an expose of the history of the creation and operation
of one of the most successful reality shows, A&E's "PAWN STARS,"
presented by the actual production team behind the show. Equally
fascinating is the next panel which will discuss the video gaming
industry and the First Amendment challenges currently at issue. The
segment will be presented by a leading author on the subject along with
in-house counsel at one of the most prominent video gaming creators. The
afternoon sessions include an overview of the law in New York regarding
minors, followed by a case-oriented ethics seminar and lively audience
participation. Each of the panels is comprised of some of the most
experienced and respected practitioners in the field.

This full-day program, while geared toward the experienced entertainment
law attorney, will be of interest to attorneys of all disciplines. We
are offering a "morning-only" option for newly admitted lawyers. Please
join us at what is sure to be a "winning deal!"

Tiffany Bardwell
Section Liaison, Department of Section Services
New York State Bar Association
One Elk Street | Albany, New York 12207
518.463.8844 Fax

October 14, 2011

Pro Bono Clinic

On Thursday, November 17th, the EASL and IP Sections will be co-sponsoring a Pro Bono Clinic at the New York Foundation for the Arts (NYFA). The Clinic will take place between 4:00 and 7:00 p.m. at NYFA's offices in Dumbo, at 20 Jay Street, 7th Floor, Brooklyn.

If you would like to volunteer for one or more of the 30 minute time slots, please email me at and specify your contact information (name, firm/company, phone number and email address), which time slot(s), area(s) of expertise, and whether you are an EASL and/or IP Section member. In addition to the usual entertainment, arts and business related questions that we receive from potential clinic clients, we are particularly interested in attorneys who have experience with incorporating and working with 501(c)(3) not-for-profit companies. Please so advise if this is an area of expertise for you as well.

If you do not have pro bono liability insurance, you may be covered under EASL and IP's policy for this Clinic. Please also notify me if you need such coverage.

I look forward to hearing from you.

Best regards,

Elissa D. Hecker
EASL Pro Bono Steering Committee
Past Chair, EASL Section

October 25, 2011

Some Things to Know When You're a Woman

By Deborah Gonzalez

The statistics:
• 42 million women in the U.S. (about 53% of the adult female population) routinely participate in social media on a weekly basis (Flowtown 2010).

• 68% of women use social media to stay in touch with family and friends (Rebtel 2011 Survey).

• 89% of online women between the ages of 18 to 29 are on social media sites; 69% of them log on every day (Pew Internet & American Life Project, 2011).

• 70% of women online vs. 30% of men online "share" - this includes links, videos, images, other content, re-tweets and comments on blogs or forums (, 2011).

• Women are spending less time with traditional media as they spend more time with social media: 39% less on newspapers, 36% less reading magazines, and 30% less watching TV (BlogHer 2011 Survey).

• Women are more "network savvy" in the Alternative Dispute Resolution and International Trade Industries on LinkedIn, while men are more "network savvy" in Medical Practice and Law Enforcement (LinkedIn 2011 Analysis).

Some more statistics for context:
• Women make up 31% of all lawyers in the US (ABA Market Research Department, 2010).

• Women make up only 6% of Managing Partners, 15% of Equity Partners, and 19.4% of Partners in private practice. (ABA Commission on Women in the Profession, 2011 Glance at Women in the Law).

• Women make up 16 to 18% of General Counsel in Corporations (ABA Commission on Women in the Profession, 2011 Glance at Women in the Law).

• Women lawyers' average weekly salary is only 74.9% of a male lawyer's salary (2009 Bureau of Labor statistics).

Bringing these two sets of statistics together make something very clear - women are leading the way in social media but are lagging in the legal profession. Can the former change the latter?

Various legal professionals, such as Nicole Black, Carolyn Elefant, Carla Varriale and Amy Elizabeth Stewart, claim that the answer is a resounding "yes." Why? Let's take a look at some of their reasons:

1. Social media is where our clients are transacting business, living their lives. We need to be where they are.

2. Social media plays to women's interpersonal communication skills strengths - women tend to be relationship builders, and understand that in order to build a strong relationship, communication needs a social aspect to it and must be continuous. Knowing about the client, his or her family, and some personal notes, like hobbies, is essential business knowledge.

3. Social media is about transparency and authenticity - women tend to be more open in regards to information and who they are. This in turn allows clients to build "trust" in their lawyers.

4. Social media provides opportunities for women lawyers to demonstrate their expertise and knowledge in their legal fields through blogs and other forums. At the same these opportunities induce interaction and engagement between the bloggers and the readers, adding another layer of "social".

5. Social media allows for a convenient form of networking - one not limited by geography or time - lending itself to help women lawyers balance their work and home lives.

6. Social media is a flexible platform and can level the playing field. It permits women lawyers to seek and obtain mentors wherever those mentors may be, as currently there are so few women lawyers at the top who can share their insights and lessons of the way to success, as well as offer other employment and career opportunities.

These are six great reasons for seeing social media as a valuable tool in a woman lawyer's toolbox. Yet there are some things about which to be cautious.

1. Ethical Rules - Professional Rules of Conduct and ABA Model Rules must be adhered to while participating in social media. State bar associations are starting to provide guidelines for attorneys so they can stay ethical online. Examples include confidentiality concerns, disclaimers so that there is no accidental unauthorized practice of law in jurisdictions in which one is not licensed, and making sure that profiles do not contradict the "no specialty" rule for attorneys (for example LinkedIn Specialty section in its public profiles). It is important to keep in mind that these rules apply regardless of gender.

2. Regulatory Restrictions - Women attorneys practicing in regulated industries such as healthcare, the financial sector, and pharmaceuticals, will also have to be aware of FTC, FDA, SEC, and other agency guidelines regarding protected data and disclosures.

3. Privacy - Privacy is also a concern. Women attorneys need to realize that nothing is truly private - regardless of the privacy preferences set on your social media accounts. One should not put anything online that one would not want to see on a billboard. The media is full of cases of social media mishaps that have cost reputations, jobs, and even lives.

4. Using public WIFI - Ever go to Starbucks and turn on the tablet to get a quick look at emails? Be careful, public WIFI are unsecured and can leave a user and his or her data vulnerable to being stolen, damaged (through malware) or manipulated to harmful consequences. As attorneys, we may have sensitive information on our devices, so it is important to have a firewall and turn off file sharing while in public. As for security and using "the cloud", that's another article all together.

5. Safety - Is it prudent to let people know where one is or when one will not be home? Today's social media platforms, such as FourSquare and other geolocation sites, can be used as tools for targeting individuals. Women lawyers who work in the criminal arena need to be especially careful, as former defendants (who may have been convicted of violent crimes) may follow.

6. Cyber-discrimination, cyber-harassment and workplace cyber-bullying - From threats to off-color jokes, to the sending of inappropriate photos by email, text, Twitter or status updates, can cause harm to the professional dignity and safety of women lawyers. Can a woman put up the notice on Facebook that she just found out she is pregnant? Will that affect her legal career if the law firm finds out that she is on the "Mommy-track"? Businesses, corporations, and law firms must update their policies to include this online possibility and offer the mechanisms for victims to seek redress.

Upon review, we have six good and six bad points. Yet social media is basically neutral, as it is a tool and depends on how it is used. The negative can be protected against with awareness, education and other technology tools. The positive can have long-term effects, including changing the gender disproportion in the legal profession. What do you think? How are you using social media in your practice, and if you are not, why not? Go ahead, send out invites and do a "tweet-up" with women attorneys to discuss these issues. You may be surprised at what's happening around you.

Deborah Gonzalez, Esq. is the founder of Law2sm, LLC, a new legal consulting firm focusing on helping its clients navigate the legal issues relating to the new digital and social media world. Deborah speaks about the legal issues relating to intellectual property, art, music, and digital entertainment law, in addition to social media legal trends and practices. For more information email Deborah at or see

October 27, 2011

2011 Fall Conference 2nd Annual Conference on Sports and Entertainment Law

The Sandra Day O'Connor College of Law at Arizona State University will host the 2nd Annual Conference on Sports and Entertainment Law. Speakers and Panelists from all over the country will present and discuss the most critical issues in the fields of Sports and Entertainment Law. Keynote speaker is President of the Arizona Cardinals Michael Bidwill.

•Date: Saturday, November 5th, 2011
•Time: 9am - 5pm, followed by a reception for all attendees and speakers
•Location: Armstrong Hall, Sandra Day O'Connor College of Law at Arizona State University Campus - Tempe, AZ

"Collective Bargaining Agreements - The Big 4″ (9:10am - 10:40am)
•Gregg Clifton
•Travis Leach
•Darren Heitner

"Gene Doping/Drug Testing" (9:10am - 10:40am)
•Gary Marchant
•John Hoberman

"Protecting IP on the Internet-What and How to Enforce" (10:45am - 12:05pm)
•Hamid Jabbar
•Elissa D. Hecker
•Connie J. Mableson

"Right of Publicity & Defamation" (10:45am - 12:05pm)
•James M. Marovich
•Corie Rosen
•Don E.N. Gibson
•Neville Johnson

Keynote Address (1:05pm - 1:40pm)
•AZ Cardinals President Michael Bidwill

"State of the NCAA: Antitrust & the BCS; Amateurism & Compliance" (1:45pm - 3:05pm)
•Stephen Webb
•Timothy Liam Epstein
•Mary Penrose

"Sports Agent Regulation" (1:45pm - 3:05pm)
•Darren Heitner
•Travis Leach
•Gregg Clifton

"Ethics and In-House Counsel" (3:15pm - 4:15pm)
•Caleb Jay
•Nona Lee

"Bankruptcy - Stars, Dodgers, Coyotes, Rangers-Who's Next?" (4:20pm - 5:30pm)
•Tom Salerno
•Judge Redfield Baum
•Susan Freeman

For more information, see:

November 29, 2011

From Chair Judith B. Prowda - Additional EASL Law Student Liaisons for 2011-2012

I am delighted to announce the appointments of the following 6 additional Law Student Liaisons for the 2011-2012 academic year.

Megan Bellamy is a law student at BPP Law School in London, where she is also a student adviser on employment matters for the BPP Legal Advice Clinic. She is currently interning at the National Coalition Against Censorship and the law firm White Fleischner & Fino. Megan has also interned at the Art Loss Register, where she helped the recoveries team address legal issues surrounding the return of stolen art. In addition, she worked as a legal assistant at several law firms in the UK, U.S.A. and New Zealand. Megan holds a BA (Hons) in Geography from Durham University, England, a Diploma in Art and Design from Chelsea College of Art and Design in London, and is a member of the Institute of Art and Law in London. During her undergraduate studies, Megan was a member of the Durham Arts Festival Committee where she helped organize Durham's first arts festival, and has worked in an art gallery and at a creative design agency.

Peter Dagher is a 1L at Fordham. He spent the year prior to law school at as a paralegal in the Litigation Department at Paul Weiss LLP. Peter received his undergraduate degree from Georgetown University and majored in both Finance and International Business. As an undergraduate, he interned at several government institutions, including the International Conservation Caucus Foundation (a NGO which promotes educational events between private conservation groups and Congressional staffers) and the Department of the Treasury. He also worked at the Export-Import Bank in the International Business Development Department in the areas of Environmental Exports and Sub-Saharan Africa.

Caitlin Dempsey is a 2L at Fordham, and over the summer she clerked with the Chief Justice of the Supreme Court of Ireland. She presently serves as a research assistant to Professor Sonia Katyal in the area of intellectual property, and as secretary of Fordham Law Women. A triple major at Northwestern, Caitlin studied politics, art history and legal studies while doing internships at the Whitney, as well as two boutique law firms and the New York City Law Department. She also spent a year at the London School of Economics studying international government and interning at Art Review Magazine and Bloomsbury Auctions. She was awarded "thesis of distinction" for her study of the cooperation of the art world and governments to create guidelines on the repatriation of Nazi era stolen art.

Kibum Kim is an adjunct faculty member at the Sotheby's Institute of Art and a freelance writer whose work has appeared in The New York Times, Salon, and Foreign Policy. He received his B.A. in English and Economics from Georgetown and his JD from the NYU School of Law. He is awaiting admission to the New York State Bar.

William A. Lorenz, Jr., is a 3L at the State University of New York at Buffalo Law School. He hopes to eventually combine his passion for sports and entertainment with a career in law. William is the current Justice of Phi Alpha Delta Law Fraternity, International (Alden Chapter) at UB, and is also Vice President of UB's Entertainment for the Sports & Entertainment Law Society. His work during law school has included summer internships in the legal department of World Wrestling Entertainment (WWE) in Stamford, CT, and the Appeals Bureau of the Erie County District Attorney's Office in Buffalo, NY. He has extensive mock trial and moot court experience, and last spring competed in the Jessup International Law Moot Court Competition in New York City while coaching a mock trial team for Phi Alpha Delta. William received his All-College Honors Bachelor's degree from Canisius College (Buffalo) in Political Science, with a minor in Classics. His Honors thesis, "Alter Ego: Understanding American Society through Superheroes," chronicled the changes to major comic book characters since their creation to keep up with the current zeitgeist of society. Outside of law school, William holds a third-degree black belt in Isshinryu Karate, and volunteers his time to teach students of all ages at a karate school in Elma, NY.

Shannon Zhu is a 1L at the Benjamin N. Cardozo School of Law. She graduated cum laude from Stony Brook University ('10) with a BS in Finance and wrote an Honors Thesis entitled "Toxic Assets for Intoxicated Consumers." Prior to law school, Shannon worked in finance and the entertainment industry and has lived in Shanghai, China. She is currently a dancer in a contemporary dance company as well as a pianist and photographer. Shannon has a long-standing interest in music, traveling and sports.

December 19, 2011

Appointment of EASL Law Student Liaison

I am pleased to announce the appointment of Ally Colvin as EASL Law Student Liaison for the Spring 2012 Semester.

Ally is a 3L at St. John's University School of Law where she serves as President of the St. John's Entertainment, Arts & Sports Law Society and is a member of the New York International Law Review/Journal of International and Comparative Law. She was a summer associate at Helbraun&Levey LLP, a boutique firm that represents bars and restaurants. She has also interned in the Sports & Entertainment Department at Hiscock& Barclay LLP.During law school, Ally has internedat St. John's Securities Arbitration Clinic and as a research assistant for Professor Mary Lyndon. She received her Bachelor's of Music in Music Industry with a concentration in piano from Syracuse University. As an undergraduate, Allyinterned in the Copyright Department of Sony Music's and the Legal Department of Live Nation U.K. She was the 2009 recipient of the Melvin Douglas Soyars Music Industry Award as well as the George Mulfinger Prize for Excellence in Piano Performance.

Welcome aboard Ally!

Remarks from the Chair

By Judith B. Prowda

These are my farewell Remarks from the Chair. It has been an honor to serve as Chair of the Entertainment, Arts and Sports Law Section for the past two years. I extend my heartfelt gratitude to my remarkable Dream Team: Rosemarie Tully (Vice-Chair), Diane Krausz (Treasurer), Pamela Jones (Secretary 2011), Monica Pa (Secretary 2010), Jason Baruch (Assistant-Secretary), and the entire EASL Executive Committee. I also thank my dedicated Albany colleagues Tiffany Bardwell, Dan McMahon and Leslie Scully, among others, whose tireless support has been invaluable throughout my term.

I am proud of all that we have accomplished so far during my tenure as Chair. We have formed eight new standing Committees: Digital Media (including social media), Diversity, Ethics, Lawyers in Transition, In-House Counsel, International, Scholarship and Website. For the first time in EASL history, we have a District Representative for each of the 13 Judicial Districts in New York State. We have formalized our relationship with the Young Lawyers Section by appointing YLS members to serve as Liaisons to EASL and have organized successful several joint programs.

We have also welcomed law students to serve as Liaisons to EASL. Our highly successful Law Student Liaison program, which other Sections are enthusiastically emulating, has expanded to 13 Law Student Liaisons in 2011, including our first ever out-of-state and international Law Student Liaisons. These talented students connect their law schools with EASL and vice versa, attend Executive Committee meetings and become involved in planning programs and discussing new initiatives. By working with law students at the Executive Committee level, we are exposing them to our diverse practice areas and a wide array of EASL activities at an early stage of their careers while helping them hone their leadership skills. Together, our efforts have yielded several innovative programs and partnership opportunities between EASL and law schools. We are grateful too for the fresh perspectives our Law Student Liaisons provide.

Our Section continues to organize meaningful pro bono activities and cutting edge programs in entertainment, arts and sports law, as well as ethics. Our Fall Program, entitled "Anatomy of a Hit TV Reality Show Series, and Other Things We Think You Should Know" was one of our best ever, featuring four superb panels of interest. The first panel, which was inspired by EASL's Young Entertainment Lawyers, offered an exposé of the history of the creation and operation of one of the most successful reality shows, A&E's "PAWN STARS." The panelists - members of the actual production team behind the show - included Brent Montgomery (Leftfield Pictures), Rob Miller (Peleton Entertainment), Mary Donohue (History, A&E Television Networks) and was expertly moderated by Peter Hamilton (Editor, The next panel, on the topic of free speech and video games, featured Gena A. Feist (Vice President & Associate General Counsel for Take Two Interactive),John F. Wirenius (Author, First Amendment, First Principles: Verbal Acts and Freedom of Speech, and Deputy General Counsel to the Office of Collective Bargaining) and was superbly moderated by Jason Aylesworth (Sendroff & Baruch). Next we focused on the representation of minors in New York, with speakers Brian D. Caplan (Caplan and Ross), Paul LiCalsi (Mitchell Silverberg and Knupp), and Joseph L. Serling (Serling Rooks Ferrara Mckoy & Worob). The Fall Program concluded with a much sought-after ethics component, featuring Deborah A. Scalise (Scalise & Hamilton) and Pery D. Krinsky (Krinsky, PLLC). Without a doubt, this program was a "winning deal!" chock full of valuable information and offering 7.5 CLE credits, including 2 CLE credits in ethics and professionalism. Now THAT'S what I call reality! Thanks to Program Co-Chairs Jason Aylesworth, Ethan Bordman, Diane Krausz and Pamela Jones.

In September, we held an outstanding program, "Lending in the Sports and Entertainment Industries," which focused on contents of credit agreements, credit enhancement documents, industry, league and regulatory restrictions, among other topics. Our panelists included Stephen Brodie (Partner, Herrick, Feinstein LLP), Nick DeFabrizio (Chief Counsel Communications, Media and Entertainment Group CIT Legal Department), Victoria A. Gilbert (Partner, Kaye Scholer LLP), Bradley Rangell (Managing Director, Team Leader, Sports Advisory, Citi Private Bank), W. Wilder Knight II (Of Counsel, Pryor Cashman LLP), and Lucie Guernsey (Managing Director, Woodland Bay Capital, Inc.). The 2-CLE credit program, which was conceived and organized by Jessica Thaler, was held at Herrick Feinstein. Kudos Jessica!

Our aptly titled program in October "Exploring the Wild, Wild West of Filmmaking: Borat, Hidden Cameras and Investigative Reporting" was designed to help us guide our clients through the murky waters of public stunts, no releases, hidden cameras and more. The wild wild West (-coast) guest speaker, Michael C. Donaldson, a California entertainment lawyer and author of the newly released Legal Guide to Independent Film Making, delivered a lively presentation and commented on a variety of clips from films that have been the subject of lawsuits, and explained the release that was used by the Borat team. To round out the program, we discussed insurance to such a highly risky business. This sold-out event was co-sponsored by the Litigation, the Motion Pictures and Television and Radio Committees.

In addition, also in October, EASL's Committee on Alternative Dispute Resolution (Judith Bresler and myself, Co-Chairs) co-sponsored Mediation Settlement Day for the fourth consecutive year. This annual event is sponsored by FINRA Dispute Resolution, the New York State Unified Court System, and a coalition of over 100 alternative dispute resolution programs, bar associations, community based programs, schools, public and nonprofit organizations. Several EASL Executive Committee members participated in the Kick-Off event on October 18th at the New York City Bar Association, where we had reserved a table to showcase EASL's programs and initiatives. We were treated to a fascinating CLE program, "Mediation in the Mainstream," and a Keynote Speech by Michael Sardo, Creator and Executive Producer of USA Network's "Fairly Legal."

Looking ahead to our Annual Meeting, organized by Program Committee Co-Chairs Judith Bass, Ethan Bordman, Diane Krausz and Carol Steinberg, we anticipate another sold-out double-feature - with one panel on Trending Topics in Licensing and Branding and another panel on New Models of Publishing: E-Books, enhanced e-books, apps and how they have transformed the world of publishing. A cutting edge program not to be missed!

As I mentioned above, our Section has embraced new areas of law and technology. We now have a Twitter account created by our energetic new Co-Chair of Digital Media, Megan Maxwell. Our Blog has become a mainstay of our daily lives, with postings on the most current topics, thanks to our remarkable editor Elissa Hecker, and all of our Blog contributors. With the help of our newly formed Website Committee, chaired by Jennifer Liebman, we are updating our website which will provide information on substantive areas of law, announce upcoming events and highlight the work of EASL's Committees.

We have also turned our attention to important initiatives, such as President Vincent Doyle's groundbreaking Diversity Challenge. I was very proud to present the Diversity Challenge Team Report (described in page __ herein) to NYSBA President Vincent Doyle on behalf of EASL. I acknowledge our Diversity Committee Co-Chairs Anne S. Atkinson and Cheryl L. Davis, who spearheaded our initiatives, along with each of our other dedicated Diversity Challenge Team Members: Rakhi Bahadkar, Rich Boyd, Nyasha Foy, Elissa Hecker, Jessica Thaler, Rosemarie Tully and myself.

Our Diversity Challenge Team met on a regular basis throughout the summer to prepare our Report, which we presented to the EASL Executive Committee in September. At this writing, two programs (described below) have already been held in October and November, and other initiatives are at various stages of development. President Doyle has offered his thanks and gratitude for our Report and work thus far. We hope you will appreciate our diversity efforts and look forward to working with you to advance the NYSBA's and EASL's diversity goals.

Our Diversity plan includes (i) holding programs with minority bar associations, such as the one we held with the Black Entertainment and Sports Lawyers Association (BESLA) and the Metropolitan Black Bar Association (MBBA) described below, (ii) establishing a mentoring program for diverse new lawyers, 2L law students, and/or those who wish to shift areas of practice to the entertainment, arts and sports law areas, (iii) providing pro bono assistance and mentoring to newly admitted attorneys, and (iv) coordinating with veterans groups, starting with the Producers Guild of America East where EASL would provide speakers and representatives for roundtable discussions.

To start, we co-sponsored a program on October 12th with the New York City Bar Association, titled "You're an Up and Coming Talent: Be More, Do More and Discover More by Reaching For the Leader Within You." This free seminar was aimed at enabling lawyers of color to determine effective ways to manage their career advancement and success. The panel included Rakhi Bahadkar, a member of EASL's Diversity Challenge Team (Senior Regulatory Services Consultant, New York Life Insurance Company),Michael I. Bernstein (Partner, Bond Schoeneck & King), Vincent T. Chang (Partner, Wollmuth Maher & Deutsch LLP), Margo G. Ferrandino, (Litigation Associate, Bond Schoeneck & King) and Thomas Jackson (Executive Vice President, General Counsel and Corporate Secretary, EdisonLearning, Inc.), and was moderated by Vera Sullivan (President and Founder Diversityforce LLC).

In November, our Diversity Committee partnered with BESLA and MBBA to present a program on "Legal Issues in Reality TV". This joint program - our first with BESLA and MBBA - was such a resounding success, that we aspire to collaborate again in the future. Congratulations to Rich Boyd and Rob Thony, members of the EASL Diversity Committee, and Matt Middleton, President of BESLA, for creating such a superb program. Thanks also to Nyasha Foy, EASL Student Liaison, for coordinating with New York Law School for the perfect venue. We anticipate more programs such as these, and look forward to implementing each of our initiatives in the coming months. Please join us!

As our world grows increasingly global, it has become evident that EASL should expand our activities to address international issues. In September, we voted to create an International Committee. This Committee is co-chaired by Eric J. Stenshoel, Counsel at Curtis, Mallet-Prevost, Colt & Mosle LLP in New York and Brian Wynn, partner at Gardiner-Roberts LLP in Toronto. The International Committee begins its mission by co-sponsoring a program with the Digital Media Committee (Jason Aylesworth, Megan Maxwell and Andrew Seiden, Co-Chairs) on U.S. and Canadian cross-border criminal laws affecting the depiction of child pornography through digital images of manga (a style of comic book that originated in Japan). This program, conceived by Megan Maxwell, will present both sides of this compelling area of law.

In the legislation arena, EASL continues to support the Art Consignment Statute Bill Proposal, which would amend Articles 11 and 12 of the New York Arts and Cultural Affairs Law, in relation to consignments of art works to dealers by artists, their heirs and personal representatives. We appreciate NYSBA's continued support on this important piece of legislation.

Our Pro Bono Committee continues to dazzle us with a wide array of speakers' bureaus, clinics, and other events. Our Pro Bono Clinic at New York Foundation for the Arts (NYFA) in August was a terrific success and was repeated in November.

It's always a pleasure to acknowledge outstanding EASL Executive Committee members and welcome new faces. Our long-time Co-Chair of the Copyright and Trademark Committee, Neil Rosini, has stepped down after many years of distinguished service, and has been appointed Member-at-Large. Alan Hartnick, a strong and erudite presence in EASL almost since its inception, has also been appointed Member-at-Large, and continues in his role as District Representative for the First District. We warmly welcome Cheryl Davis (Co-Chair, Diversity Committee), Jennifer Liebman (District Representative, 12th District), Megan Maxwell (Co-Chair, Digital Media Committee); Britten Payne (Co-Chair, Copyright and Trademark Committee); and Eric J. Stenshoel (Chair, International Committee). We also welcome to our new Law Student Liaisons for 2011-2012: Megan Bellamy (BPP, London), Caitlin Lee Dempsey (Fordham), Peter Dagher (Fordham), Nyasha Foy (New York Law School), Carey Greenberg (St. John's), Kibum Kim (NYU), William A. Lorenz, Jr. (Buffalo) and Aaron Rosenthal (DePaul, Chicago). In addition, we welcome Ally Colvin (St. John's) for the Spring 2012 semester.

What a privilege it has been to serve as EASL's Chair. It will be an honor to play a vital role in EASL as your Past Chair and to continue in my roles as Chair of the Fine Arts Committee, Co-Chair of the ADR Committee, and as member of the House of Delegates through June 2012.

As I bid adieu as EASL Chair and join the distinguished pantheon of Past Chairs, I marvel at how much we have accomplished together during my tenure. As I look ahead, I am confident that we will continue to achieve our goals for the NYSBA, EASL, our profession and the greater community. In 2013 we will celebrate our 25th Anniversary. EASL's mission remains, as it was in its early days - to provide forums for discussion and debate and information-sharing in the EASL community. We have grown to almost 1,700 members with varied interests, including some of the hottest issues grabbing headlines being debated in Congress, and being heard by the courts.
I could not leave EASL in better hands than with my successor, dear colleague and friend Rosemarie Tully, whose vision for EASL is far-reaching and innovative. For many years Rosemarie has demonstrated her impressive talents and leadership skills (with a dash of style and grace) within EASL and the greater Bar. Rosemarie will be an effective and inspiring Chair and will serve EASL with distinction.

I hope to see many of you over the winter and spring months - and each and every one of you at our Annual Meeting on January 23, 2012 and our Silver Anniversary celebration in 2013!

December 27, 2011

Happy Holidays and New Year!

Best wishes for a wonderful holiday season and New Year.

Best wishes,

The EASL Executive Committee

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.

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:
· - 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

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

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 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

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, 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.

February 2, 2012

Weekly Issue in the News

By Geisa Balla

A former Harper's Bazaar intern filed a putative class action lawsuit in the Southern District of New York on February 1, 2012, alleging that parent company the Hearst Corporation violated federal and state wage and hour laws by not paying her while she worked there full time. The lawsuit seeks to join hundreds of unpaid interns at Hearst Corporation in the class. According to the lawsuit, the plaintiff, an Ohio State University graduate, was an intern at Harper's Bazaar from August 2011 to December 2011, where she worked between 40 and 55 hours a week, and was not paid for her work. The complaint states: "Employers' failure to compensate interns for their work, and the prevalence of the practice nationwide, curtails opportunities for employment, fosters class divisions between those who can afford to work for no wage and those who cannot, and indirectly contributes to rising unemployment."

Britain's Advertising Standards Authority ("ASA") ruled on February 1, 2012, that a magazine advertisement for L'Oréal's Revitalift Repair 10, featuring actress Rachel Weisz, "misleadingly exaggerates the performance of the product," and must not appear again in its current form. (Women's Wear Daily) reported: "The ASA said that the ad was misleading in relation to the claim that the product made skin look smoother and the complexion look more even, as the committee believed Weisz's image had "been altered in a way that substantially changed her complexion to make it appear smoother and more even." The ASA also told L'Oréal not to continue to use postproduction techniques that could misrepresent a product's claims."

In its response, L'Oréal attributed the quality of the image not necessarily to post-production, but to the lighting and techniques of the photography.

February 4, 2012

Arts Festival


Month Long Series of Performing, Literary, Visual and Media Arts Events Presented By Artspire and New York Foundation for the Arts

NEW YORK, NYC - The Bootstrap Arts Festival, the month long series of arts events presented by Artspire and New York Foundation for the Arts (NYFA), has released its preliminary schedule of exhibits and performances. Set to take place throughout February and across the five boroughs, the Bootstrap Festival includes performing, literary, visual and media arts events.

The Festival kicks off with an opening night reception at NYFA on February 3. The kick-off event features works and performances across a spectrum of media by a number of Artspire affiliated artists. The accompanying Boot Camp exhibition at NYFA runs from now through May, 2012.

The Bootstrap Arts Festival has emerged out of NYFA's on-going Artist as Entrepreneur Boot Camp, a program for arts professionals in all fields looking to focus on the business side of their creative practice. NYFA's Boot Camp is designed to help define concrete steps to building a business plan that can lead to greater financial security.

The first Bootstrap Arts Festival was held in November, 2010 and featured artists who had attended NYFA's Boot Camp. The 2012 festival continues and expands on that theme as it offers Boot Camp graduates venues and opportunities for exhibiting and/or performing their work.

Both Bootstrap and Boot Camp are key elements within NYFA's broad-based effort to provide a template for arts professionals that enables them to develop as entrepreneurs by offering support, education and resources. The most prominent tent pole initiatives within this ambitious plan are the recently launched and the new book The Profitable Artist (Skyhorse Publishing/Allworth Press). is the new community website that empowers individual arts professionals and organizations anywhere in the country to support their work with tax-deductible contributions while building entrepreneurship and creating a robust social network of supporters. With Artspire, artists can leverage the dynamic power of crowdsourced funding to galvanize, tap into and expand their roster of followers, thus building sustained financial backing for their work.

The Profitable Artist is the first complete "how-to" guide to being a professional and profitable working artist. This handbook features techniques in the areas of strategic planning, financial management, marketing, fundraising, and legal rights and obligations, aimed to assist all arts professionals. Further closing the circle, many of the lessons in The Profitable Artist were first developed during NYFA Boot Camp. Some of the artists who have taken part in Boot Camp are also in the book.

The schedule of events to date include:

February 2 - 15
Tue - Fri, 3:30 pm - 8:30pm; Sat & Sun, 12 pm - 6 pm, or by appointment

Bootstrap Exhibition
Clemente Soto Velez Cultural & Education Center, Inc, Abrazo Gallery
107 Suffolk Street, 2nd Floor
New York, NY 10002

Featuring the works of 21 visual artists, including painters, sculptors, photographers, and video artists. An opening reception will be held on Thursday, February 2 from 6pm - 9pm.

Admission: Free

February 4
5:00 pm & 7:30 pm

Joyce SoHo,
155 Mercer Street
New York 10012

An Evening of Dance Featuring: Ephrat Asherie Dance, Trainor Dance (Caitlin Trainor), Sydnie L. Mosley Dances, SAWTOOTH dancers (Cristina Jasen), Shandoah Goldman. Reception to follow after 7:30pm performance.

Admission Price: $15
For tickets/reservations go to

February 5, 2012
4:00 pm - 6:00 pm

Baruch Performing Arts Center,
Engelman Hall
55 Lexington Avenue, New York, NY

An Evening of Original Music Featuring: Gretchen Farrar, John Kamfonas, Eugene Marlow, Judith Sainte Croix. Reception to follow.

Admission Price: $10
For tickets, visit, or call the box office at (646) 312-5073.

February 7, 2012
7:30 pm

Clemente Soto Velez Cultural & Education Center, Inc.
107 Suffolk Street, 2nd Floor (Los Kabayitos Theater)
New York, NY 10002

Two Evenings of Dramatic Works (Night One) Featuring Laura Pruden, Rosanna Plasencia, Frances Lozada. Reception to follow.

Admission: Free
For reservations go to

February 9, 2012
7:00 pm

Clemente Soto Velez Cultural & Education Center, Inc.
107 Suffolk Street, 2nd Floor (Los KabayitosTheater)
New York, NY 10002

Two Evenings of Dramatic Works (Night Two) Featuring Katy Rubin, Craig Nobbs, LuAnn Adams, Michelle Chai. Reception to follow.

Admission: Free
For reservations go to

February 10 & 11, 2012
Time: 7:30 pm

322 Union Avenue
Brooklyn, NY 11211
(718) 395-7902

Two Evenings of Entrepreneurs in Film. Includes a discussion with the filmmakers regarding entrepreneurial practices in filmmaking.

Night One (February 10, 2012): Featuring filmmakers Frances Lozada, Melissa Hacker, Michelle Chai and Isabel Sadurni.

Night Two (February 11, 2012): Featuring filmmakers Yunah Hong, Ama Birch, Lisa Crafts, Dempsey Rice and Melissa Hacker.

Admission Price: $9 suggested donation
For tickets/reservations go to

Wednesday, February 15, 2012
Time: 6:00pm - 9:00pm

20 Jay Street, Suite 740
Brooklyn, NY 11201

Artist Talk and Tour: Visual artists in the NYFA exhibition speak about their work.

Admission: Free
For reservations go to

Thursday, February 16, 2012
Time: 7:30pm

721 Franklin Avenue
Brooklyn, NY 11238

An Evening of Literature featuring Katy Rubin (Concrete Justice), Ama Birch, Jennifer Cendaña Armas, and Hossannah Asuncion.

Admission Price: Free
For reservations go to

Friday, February 17, 2012
Time: 6:30pm - 8:00pm

EFA Project Space, a Program of the Elizabeth Foundation for the Arts
323 West 39th Street 3rd floor
NY, NY 10018
(212) 563-5855

An Evening of Interdisciplinary Work featuring John Kelly and Nora Ryan.

Admission Price: Free
For tickets/reservations go to

February 18, 2012

Cumbe: Center for African and Diaspora Dance
558 Fulton Street, 2nd Floor (near Flatbush Ave.)
Brooklyn, NY 11217

A Celebration of Movement and Interdisciplinary Art featuring Nicola Iervasi, Artistic Director, Mare Nostrum Elements, Kayoko Nakajima, and Clark Jackson.

Admission Price: Donations gratefully accepted
For reservations go to
The above schedule is subject to change.

Funding for this program is provided, in part, by the New York City Economic Development Corporation. Special thanks to Clemente Soto Velez Cultural & Education Center, Inc., The Elizabeth Foundation for the Arts, and LaunchPad, for the generous donation of their space.

For more information on the participants and their contributions, go to their website at, or see NYFA's webpage,

About the New York Foundation for the Arts (NYFA)
The New York Foundation for the Arts (NYFA) was founded in 1971 to empower artists at critical stages in their creative lives. Each year it provides over $1 million in cash grants to individuals and small organizations. The NYFA Learning programs provide thousands of artists with professional development training and the website,, received over 1 million unique visitors last year and features information about more than 8,000 opportunities and resources available to artists in all disciplines.

February 16, 2012

Weekly Issues in the News

By Geisa Balla

Singers Beyoncé and Jay Z filed an application with the United States Patent and Trademark Office on January 26, 2012, to trademark their baby's name "Blue Ivy Carter" for use in a vast array of products such as accessories, clothes, baby products, and entertainment services. (Serial number 85526099). The application was filed on behalf of Beyoncé's company, BGK Trademark Holdings, LLC. Prior to this filing, two unrelated parties submitted trademark applications for "Blue Ivy Carter NYC" and "Blue Ivy Carter Glory IV", after baby Blue Ivy Carter was born. The UPSTO denied both applications, stating that the name belong to a "very famous infant" and "consumers would falsely assume that the products were approved by the celebrity parents."

Singer M.I.A. raised quite a few eyebrows during Superbowl XLVI on February 5th, when she showed the camera her middle finger during her half-time performance. Unfortunately for M.I.A., she may have to pay dearly for the lewd gesture. If the Federal Communications Commission (FCC) decides to issue a fine, it appears that NBC and the NFL are off the hook, but M.I.A. will have to pay up. According to reports, M.I.A. signed a contract with the NFL agreeing to indemnify the latter for any potential FCC fines. However, at this time it is unclear whether the FCC will issue a fine for the gesture, as it fined CBS for Janet Jackson's wardrobe malfunction in 2004. NBC claims to have received very few complaints.

The defense attorney for William Balfour, the man accused of killing Jennifer Hudson's family members in 2008, is now requesting to examine Jennifer Hudson herself about the events surrounding this crime. Hudson was not expected to be named a witness in this case, but may now have to testify about texts she exchanged with her mother on the night of the murder.

February 17, 2012

Weekly Issues in the News

By Geisa Balla

Apple TM Issue in China

A trademark dispute between Apple and Proview Technology has brought sales of iPads to a halt in China. Proview Technology trademarked the name IPAD in several countries in 2000, intending to use it for Internet-capable handheld device. Yet this project did not take off. In 2009, Apple established a company called IP Applications in order to acquire the iPad trademarks and preserve confidentiality on its intent to launch its tablet. IP Applications bought the IPAD trademark from Proview's Taiwan company in December 2009 for $55,000. Apple believed that it had acquired all the rights to the IPAD trademark, but later found out that the rights for mainland China were registered under Proview's Shenzhen company. According to court documents, Proview refused to rectify the mistake and suggested that Apple should pay $10 million to purchase the China trademarks. Proview has filed for bankruptcy, but still holds rights to the IPAD trademark. In its lawsuit, Apple claimed that Proview refused to honor its contractual obligation. Apple was granted an injunction against Proview, preventing Proview from selling off its trademark rights. Yet in December 2011, a court in Shenzhen dismissed Apple's contention that it owned the iPad name in China. Apple intends to appeal the ruling.

If Apple does not prevail in this lawsuit, it would have to pay penalties, and possibly its tablet would be banned under the iPad name. Tens of millions of iPads have been manufactured in various plants in China since it was first launched in 2010. Proview now plans to take legal action against Apple for using a "fake company."

Sex and the City Lawsuit

Sex and the City writer and creator Candace Bushnell is being sued by her former friend and manager Clifford Streit, the inspiration for Sex and the City character Stanford Blatch. Streit, who was Bushnell's manager until 1999, first filed a federal lawsuit against Bushnell in 2005, claiming that Bushnell owed him 10% of her earnings from the show. The parties settled the lawsuit in 2006 by agreeing to give him 7.5% of her earnings. Now Streit claims that Bushnell last paid him in 2009, and owes him 7.5% of her earnings from the Sex and the City 2 movie, as well as residual earnings from the first Sex and the City movie and the "Sex and the City" show.


The Kodak Theater in Hollywood, where the Academy Awards have been held for the past 10 years, will soon have to change its name. Eastman Kodak Co. filed for Chapter 11 Bankruptcy protection in January 2012. In its proceeding, Kodak sought to cancel its 20-year agreement with landlord CIM/H&H Media to sponsor the theater. CIM/H&H Media moved to compel Kodak to continue performing under this agreement, but the court ruled in Kodak's favor. Kodak reportedly paid $3.6 million a year to CIM/H&H Media for the rights to the theater.


On February 14, 2012, Facebook Inc. was awarded $75,776 in legal fees from Paul Ceglia. Ceglia first filed a lawsuit against Zuckerberg in July 2010, alleging that pursuant to a 2003 agreement with Zuckerberg, he was entitled to half of Zuckerberg's stake in Facebook. U.S. Magistrate Judge Leslie G. Foschio ordered Ceglia to reimburse Facebook for legal fees it incurred while trying to get Ceglia to comply with discovery in the lawsuit. Ceglia is now claiming that he should not have to pay the "stratospheric" legal fees charged by Facebook's attorneys.,0,6212098.story

Whitney Houston

Grammy-winning artist Whitney Houston passed away on February 11, 2012, in her hotel room at the Beverly Hilton, where she was found partially submerged in a bathtub. Investigators did not find any illegal substances in Houston's hotel room, but found different prescriptions bottles, including some unidentified bottles. The Los Angeles County Coroner has issued subpoenas for Houston's medical records, and is investigating how Houston obtained these prescriptions. Hours after Houston was found dead, her 18-year-old daughter Bobbie Kristina Brown was rushed to the hospital after a "complete meltdown."

Despite Houston's death, her mentor Clive Davis went ahead with his annual pre-Grammy party that very same night, held in the same hotel. The February 12, 2012, Grammy awards honored Houston with an opening prayer and a performance by Jennifer Hudson. Whitney Houston's funeral service will be held on Saturday, February 18, 2012, at New Hope Baptist Church in Newark, and will be streamed live online.

February 24, 2012

Weekly Issues in the News

By Geisa Balla

NFL and Concussions

The family of former Chicago Bears player Dave Duerson filed a wrongful death suit against the NFL on Thursday, February 23, 2011. The lawsuit alleges that the NFL negligently caused the brain damage that led Duerson to commit suicide at age 50 by not warning him of the negative effects of concussions. Duerson took his own life on February 17, 2011. The lawsuit claims that the NFL knew of the effects of concussions, but concealed such information from Duerson. 657 retired NFL players have filed lawsuits against the NFL for concussion-related issues. A Philadelphia federal judge has consolidated the 657 complaints into 18 lawsuits. Duerson's case is different from the other lawsuits because his brain was the only one that was studied and found to have advanced brain damage. "We hope that through our case we can raise awareness and further effect change with the other retired players so they can get the benefits and medical attention they need," said Duerson's son, Tregg Duerson. "We also hope the change trickles down to youth sports and concussion policies, as well as how trainers treat these injuries."


The producers of "Spider-Man: Turn Off The Dark" and the trade association representing the show's former director Julie Taymor have settled the legal dispute between them. Taymor worked on the production of "Spider-Man" until she was fired in March 2011. Almost immediately after her termination, Taymor filed a copyright infringement against the "Spider-Man" producers, claiming that the producers made unauthorized and unlawful use of the material she developed for the show. In turn, the producers filed a countersuit against Taymor in January 2012, claiming that she endangered the show's chances of commercial success by "developing a dark, disjointed and hallucinogenic musical." Although this Broadway production cost more than $70 million to bring to stage and was received poorly by the critics, it has been a massive success with audiences. Under the settlement agreement, Taymor will receive full royalty fees for work as a director through the production's duration, as well as undisclosed fees for her work in developing the show.

Michael Jordan

Michael Jordan has filed a lawsuit against Chinese sportswear company Qiaodan Sports Co. in a China court for illegally using his name on marketing materials. "Qiaodan" is the Chinese translation for "Jordan." Qiaodan Sports sells athlete-branded basketball clothes and shoes in more than 5,700 retail locations across China. Qiaodan Sports claims to own the exclusive trademark to its name, and first registered to use this mark with the Trademark Office of China's State Administration for Industry and Commerce in 1997. However, under Chinese law, businesses cannot freely use the names of famous people, even if the famous people do not have trademarks on their names. In a video, Mr. Jordan claims that the lawsuit is not about money, but about the principle of protecting his identity and name. He also claims that any awards received from this lawsuit would be "invested in growing the sport of basketball in China.

Facebook as Service of Process

On February 21, 2012, a High Court judge in England approved the use of Facebook to serve legal claims. In a commercial dispute between two investment managers and a brokerage firm, counsel for one of the plaintiffs had been trying to track down one of the defendants to serve him with legal documents. A copy of the lawsuit was left at his last known address, but the attorneys did not have his new mailing address. The attorneys applied for permission to send him the claim via Facebook. Justice Nigel Teare permitted this method of service during a pretrial hearing, and gave the defendant extra time to respond "to allow for the possibility that he wasn't accessing his account regularly."


The EU's Anti-Counterfeiting Trade Agreement ("ACTA") will be referred to the European Court of Justice to determine if it is compatible with freedom of expression and freedom of the Internet. "ACTA is an international trade agreement that targets counterfeit goods, generic medicines and copyright infringement on the Internet. The European Commission and the European Council of member states have already approved ACTA, and the European Parliament is set to formally debate it in June. However, ACTA has generated protests and demonstrations in several European cities, including Paris and Berlin. Its critics say that ACTA violates the freedoms of speech and privacy. The main concerns are over ACTA's copyright enforcement and monitoring of Internet activity. The United States is one of the outside parties that has signed this treaty.

Online Shaming

Online shaming is the new tool in trademark disputes. User Phil Michaelson created an online cookbook,, which allows users to save the instructions for a certain recipe by clicking "K" for "Keep." AdKeeper, a New York based service that allows users to "keep" online adds, sent Mr. Michaelson a cease-and-desist letter, claiming that his use of "K" and "Keep" constituted trademark infringement. Mr. Michaelson, who could not afford a legal battle, posted the cease-and-desist letter on, a website created to help protect lawful online activity from legal threats. Mr. Michaelson was able to obtain free legal representation in this dispute after the letter was posted online.

TM Stats

The Wall Street Journal reports that trademark claims in U.S. district courts rose by 5% in the year ending March 2011. Fighting these battles in court is difficult for small start-up companies. Now a growing number of business owners are exposing trademark infringement threats on the Web, Facebook or Twitter.

March 1, 2012 Seeking Associate General Counsel is looking for an Associate General Counsel (AGC) of Music Licensing to significantly contribute to the further expansion of our products, services and geographical reach. Working closely with the business leaders of the Digital Music team and Amazon's legal team, the AGC will be responsible for structuring, drafting, negotiating and closing strategic licensing transactions and providing support, as required, on related commercial, intellectual property and regulatory issues.

With the recent release of our Cloud Player and Kindle Fire products, Amazon is uniquely positioned to introduce unprecedented functionality and virtual music experiences. The AGC, Music Licensing will assist in forming and executing our strategy to deliver more robust digital music offerings to our consumer base. This leader is expected to be a creative visionary in a rapidly evolving industry.

A J.D. from a top school, experience in licensing digital content or software IP and membership in good standing in at least one state bar are required. This role is based in Seattle , WA . Please send your resume to Karen Bertiger at

March 4, 2012

Weekly Issues in the News

By Geisa Balla

White v. West Publishing
Edward L. White, an Oklahoma attorney, and Kenneth Elan, a New York attorney, filed a class action copyright infringement lawsuit against West Publishing Corp. and Lexis Nexis in the United States District Court, Southern District of New York on February 22, 2012. The complaint alleges that the Plaintiffs and all class members own the copyrights to their legal work product, such as pleadings and memoranda of law. It further asserts that the Defendants infringe on the Plaintiffs' copyrights by willfully copying and distributing such works in their databases. The Class is defined as "all attorneys and law firms . . . through which attorneys are authorized to practice law in the United States, and its states and territories that authored works (including but not limited to, legal briefs, motions memoranda and other legal documents) that are contained in Defendants' searchable databases."">

Google's Privacy Policy and the European Union
Google's new privacy policy potentially violates European Union law. The European Commission asked the French privacy agency, the National Commission for Computing and Civic Liberties (CNIL), to conduct an initial assessment of Google's privacy changes. After its investigation, CNIL wrote a letter to Larry Page, Google's co-founder, expressing its concerns that Google's privacy policy was unclear: "Our preliminary investigation shows that it is extremely difficult to know exactly which data is combined between which services for which purposes, even for trained privacy professionals." CNIL has stated that it would send Google a full questionnaire about its privacy policies by mid-March. CNIL has the power to fine companies up to $400,000 for privacy breaches in France.

Shepard Fairey
Shepard Fairey, the Los Angeles street artist who became widely known in the 2008 U.S. presidential election for the Barack Obama "Hope" poster, pleaded guilty in New York to one count of criminal contempt for destroying documents, manufacturing evidence and other misconduct in his case involving his "Hope" poster. The charges stem from his civil lawsuit with the Associated Press. The Associated Press had claimed that Fairey used a copyrighted photo to create his "Hope" poster, while Fairey claimed that his work was protected under the fair-use doctrine. Fairey admitted in 2009 that he destroyed documents and submitted false images during the lawsuit, which was settled in 2011. A sentencing date has been set for July 16, 2012. Fairey could face a maximum fine of $5,000, a maximum prison sentence of six months, and a maximum term of supervised release of one year.

Harper Collins v. Open Road
On February 16, 2012, Open Road Integrated Media (Open Road) answered the complaint filed by HarperCollins Publishers (HarperCollins) in the United States District Court, Southern District of New York. HarperCollins filed a copyright infringement lawsuit against Open Road on December 23, 2011, regarding Open Road's publication of an e-book edition of the book Julie of the Wolves, by author Jean Craighead George. The lawsuit alleged that HarperCollins had a contract with the author, signed in 1971, giving it the right to publish the book "in book form," including via "computer, computer-stored, mechanical or other electronic means now known or hereafter invented." Open Road released the following statement: "We are confident that we have secured all necessary eBook rights from the author Jean Craighead George and that we will prevail. HarperCollins' claim is nothing but an attempt to seize rights that were never granted to it and to change the existing law with respect to eBook rights." Author Jean Craighead George added: "I have asked to intervene in this action to protect my rights under copyright and under my original contract with HarperCollins. When I signed that contract in 1971, eBooks did not exist so I could not have granted those rights. I am with Open Road all the way."

Hathi Trust
The Authors Guild filed a Motion for Partial Judgment on the Pleadings on February 28, 2012, in its lawsuit against HathiTrust. HathiTrust is a digitization initiative of over 60 partners and university libraries, including content digitized via the Google Books project. The Authors Guild filed a copyright infringement lawsuit against HathiTrust in the United States District Court, Southern District of New York, in November 2011, claiming that HathiTrust's scanning program constituted copyright infringement. HathiTrust answered the complaint in December 2011. The Author's Guild Motion for Partial Judgment argues that HathiTrust admitted to most of the allegations, and the Court should hold that HathiTrust's digitization projects are "not protected by any defense recognized by copyright law."

Urban Outfitters and the Navajo Nation
The Navajo Nation filed a complaint against Urban Outfitters Inc., on February 28, 2012, in the United States District Court for the District of New Mexico, alleging trademark infringement and violations of the federal Indian Arts and Crafts Act. The dispute began in 2011, when Urban Outfitters began selling a line of Navajo-branded products, particularly underwear and liquor flasks. The Navajo Nation sent a cease-and-desist letter to Urban Outfitters, demanding it pull the name "Navajo" from these products. The Navajo Nation claimed that the use of "Navajo" was "derogatory and scandalous," and Urban Outfitters removed the product names from its website. The lawsuit claims that Urban Outfitters is still selling "Navajo" branded items through its other company brands, in catalogs, and in retail stores. The Navajo Nation, which has 10 registered trademarks of the Navajo name, alleges in its lawsuit that the "fame and reputation of the Navajo name and marks is such that, when defendant uses the 'Navajo' or 'Navaho" marks with its goods and services, a connection with the Navajo Nation is falsely presumed."

Interpol has arrested 25 suspected members of the hacker group Anonymous in Europe and South America with the help of local law enforcement agencies. Those arrested are suspected of planning coordinate cyber-attacks against institutions such as Columbia's defense ministry and presidential websites, Chile's Endesa electricity company and national library. Among those arrested were four individuals who are suspected to have attacked Spanish political party web sites. These four are suspected of publishing information about police assigned to the royal palace. As authorities have made arrests of Anonymous members, Anonymous has made increasing attacks on law enforcement and military targets.

Madonna allegedly changed the title of her new single her upcoming album MDNA from "Girls Gone Wild" to "Girl Gone Wild" to avoid legal action from "Girls Gone Wild" founder Joe Francis. Mr. Francis claims that he threatened legal action against Interscope Records if the single was released with the original title. In a statement, he claims that the change from "Girls Gone Wild" to "Girl Gone Wild" was "an immediate solution form to thwart any injunctive relief." "Clearly her label was trying to avoid legal action surrounding the song," "[b]ut this is still infringement as far as the law is concerned and we have been in touch with Madonna's representatives in an effort to resolve this issue." Madonna's manager Guy Oseary claims that Francis had no impact on the name change as the song titles have been in constant flux for weeks, and that Madonna does not even know that Joe Francis exists.

On March 1, 2012, multiple television networks filed two separate lawsuits against start-up company Aero for wanting to broadcast without having "licensed this television programming from those who own it." Aereo is a small company that plans to launch its services on March 14, 2012, providing live streaming of major networks to mobile devices for a monthly fee. The first lawsuit, filed in the Southern District of New York by networks including Fox, Univision and PBS, claims that Aereo's planned re-transmittal is unlicensed and without consent. The complaint lists three causes of action: copyright infringement of the public performance right under 17 U.S.C. §§ 106(4), 501, copyright infringement of the reproduction right under 17 U.S.C. §§ 106(1) 501, and unfair competition under New York common law.

March 5, 2012

From Prospect to Pro: A Legal Primer on Recruitment of Professional Athletes Including Foreign Players

Thursday, March 8, 2012 from 6:00pm - 8:00pm

- Location -
Benjamin N. Cardozo School of Law
Room 424
55 5th Avenue
New York, NY 10003

The Entertainment, Arts and Sports Law Section and the Metropolitan Black Bar Association, Benjamin N. Cardozo School of Law Black Law Student Association and the Minority Law Student Association will cover key issues affecting the recruitment or professional players, including the regulation of agents, NCAA rules, the NBA categorization of prospects, dealing with foreign agents and players, including immigration aspects.

The speakers include Jared Bartie, Esq., Arent Fox, who has counseled sports clients on a variety of matters; Colleen Caden, Esq., Pryor Cashman, LLP, who represents many professional players and professional teams on immigration issues; Professor Mark Conrad, Associate Professor of Law and Ethics at Fordham University's Gabelli School of Business and its Graduate School of Business Administration; Brooks Meek, NBA, VP - Basketball Operations, International;; and Sunny Shah, CEO of 320 Sports Inc. and NFLPA Certified Contract Advisor.

EASL & MBBA Members: $25 (MBBA Members please call 518-487-5674 to register)
Non-Members: $50
Law Students: $15
Cardozo Law Students: Free with ID (Please call 518-487-5674 to register)
For more information, contact:

March 9, 2012

Weekly Issues in the News

By Geisa Balla


The Justice Department has warned six of the biggest U.S. publishers that it plans to file an antitrust lawsuit against them for colluding to raise the price of electronic books. The publishers facing this potential suit are Apple Inc., Simon & Schuster Inc., Hachette Book Group, Penguin Group, Macmillan and Harper Collins Publishers Inc. The parties have reportedly held settlement talks to avoid litigation. The potential lawsuit stems from Apple's move to change how publishers charge for e-books. Traditionally, under the "wholesale model," publishers sold books to retailers for half of the recommended cover price, and retailers could then price the books for less than the cover price if they wished to do so. When Apple launched its first iPad in 2010, Steve Jobs suggested moving to an "agency model," under which the publishers would set the price of the book and Apple would take a 30% cut. "We told the publishers, 'We'll go to the agency model, where you set the price, and we get our 30%, and yes, the customer pays a little more, but that's what you want anyway,'" Mr. Jobs was quoted as saying by his biographer, Walter Isaacson. The Justice Department now believes that Apple acted in concert with other publishers to raise book prices across the industry, in violation of federal antitrust laws.

Alexander Wang Lawsuit

A $50 million lawsuit was filed on March 6, 2012, against designer Alexander Wang in Queens Supreme Court, alleging wage and hour violations. The lawsuit was filed by Wenyu Lu, a 56 year-old former employee of Wang, who accuses Wang of running a sweatshop in Chinatown. The lawsuit alleges that workers were forced to work 16 hours a day or longer, without overtime. Lu claims to have been hospitalized because he was forced to work 25 hours without a break, under the threat of being fired. Wang has yet to be served with the lawsuit, but a spokesperson released the following statement to Women's Wear Daily: "The company takes its obligations to comply with the law very seriously, including the relevant wage and hour regulations, the payment of overtime to eligible employees and having a safe working environment for all of our employees. We will vehemently defend any allegations to the contrary."
Louis Vuitton

Louis Vuitton threatened the University of Pennsylvania Law School with trademark infringement lawsuit after a student group parodied the LV monogram on a poster for a fashion law symposium. Luis Vuitton sent a cease and desist letter to the school, stating "This egregious action is not only a serious willful infringement and knowingly dilutes the LV Trademarks, but also may mislead others into thinking this type of unlawful activity is somehow 'legal' or constitutes 'fair use' because the Penn Intellectual Property Group is sponsoring a seminar on fashion law and 'must be experts'. . . I would have thought the Penn Intellectual Property Group, and its faculty advisors, would understand the basics of intellectual property law." In a reply the school's general counsel denied that the poster infringes on LV's trademarks, describing the laws that establish the public right to parody, especially for educational purposes. He also invited LV's attorney to attend the symposium to learn more about intellectual property.
Elite Model Management

The 2008 winner of the TV show "Holland's Next Top Model" won her lawsuit against Elite Model Management in the Amsterdam District court on March 7, 2012. As a winner of the TV show competition, Ananda Marchildon won a three-year contract with Elite, worth about $98,500. Yet she was dismissed from Elite after $13,000 worth of work because she did not lose enough weight. Specifically, Elite asked Marchildon to lose nine centimeters off her hip measurements, from 98 to centimeters to 90. An e-mail from an Elite representative to Marchildon read: "We agreed that you would come by us every two weeks for an evaluation, how it's going with your diet and exercise and losing weight. We're going to keep measuring you." The court awarded Marhcildon $85,000 in damages, plus interest and legal fees.

March 30, 2012

Weekly Issues in the News

By Geisa Balla


Facebook Inc. moved to dismiss Paul Ceglia's complaint on March 26, 2012. Paul Ceglia filed a lawsuit against Mark Zuckerberg and Facebook in 2010, claiming that pursuant to a contractual agreement with Zuckerberg, he owns 50 percent of the social media site. In his complaint Ceglia had attached documents, now at issue, to show that this agreement existed. In its motion to dismiss, Facebook called the claims a "fraud and a lie", and depicted Ceglia as desperate for cash. The motion discusses the results of months-long investigations and forensic analysis of emails from Zuckerberg's college days. This investigation, according to Facebook, showed that Mr. Ceglia forged the contract and then attempted to cover his tracks with fake emails. Facebook claims that the second page of the contract produced by Ceglia does in fact contain Zuckerberg's signature, but the contract that Zuckerberg singed had a different first page. Facebook alleged that Mr. Ceglia baked the contract in the sun so the ink would appear aged and could not be tested by experts. Facebook also claimed that none of the emails in Mr. Ceglia's complaint showed in its search of Harvard's servers.

Nike v Reebok

Southern District of New York judge Kevin Castel issued an order on March 28, 2012 in favor of Nike Inc., blocking Reebok International from selling New York Jets apparel featuring the name of Tim Tebow. Nike filed a licensing dispute lawsuit against Reebok on March 27, 2012. The Denver Broncos traded Tebow to the Jets on March 21st. The order prevents Reebok from manufacturing, selling and shipping the alleged unauthorized apparel for the NFL team and bearing Tebow's name. The order also requires Reebok to offer to buy back any such apparel from retailers and recall products from shipping channels. The court denied Nike's demand to destroy any unauthorized Tebow products. Nike's complaint alleged that Nike will begin an exclusive five-year contract with the NFL to sell uniforms and related apparel for all 32 NFL teams on April 1, 2012. Nike claims that Reebok has no current agreement to sell Tebow/Jets products and that Reebok's licensing agreement with the NFL expired prior to this month. Nike's lawsuit does not concern Broncos products, or those made before March 1, 2012. A hearing is set for April 4, 2012, to decide whether the ban should be extended.

Gucci v. Guess

Gucci's trademark infringement trial against Guess in the Southern District of New York began on March 28, 2012. Gucci first filed a trademark infringement lawsuit against Guess in 2009, claiming that Guess was selling items with logos that are "studied imitations of the Gucci trademark." The trademarks in questions are a green and red stripe design, a square G, the designer's name in flowing script and a diamond pattern with repeating interlocking G's. Gucci claims that Guess knocked off over $221 million in Gucci products. Guess had argued in court filings that Gucci cannot claim infringement because it sat on its rights for at least seven years before taking action against Guess. In his opening argument, Guess attorney Daniel Petrocelli also argued that the two brands are different, that Guess had no reason and did not scheme to be like Gucci, and while Gucci uses leather, Guess uses plastic. He noted that Guess products are less than $100 and are geared toward women who cannot afford luxury goods like Gucci. Gucci is seeking damages of more than $124 million. The trial is expected to last two weeks.
Dolce & Gabbana

Dolce & Gabanna filed a lawsuit in the South African Western Cape High Court against gift shop Dolce & Banana. The lawsuit demands Dolce & Banana to change its name, and accuses Dolce & Banana of "objectionable conduct and of "diluting" the luxury brand's name. Shop owner Mijou Beller promptly changed the name of the shop to " ... & Banana."

April 6, 2012

Weekly Issues in the News

By Geisa Balla

Viacom v. YouTube

The 2nd Circuit Court of Appeals reversed a June 2010 decision, which had been considered a landmark decision in setting guidelines for websites to use content uploaded by users. The lawsuit was first filed in 2007 by Viacom to stop the posting of clips of TV programs on YouTube. The case tested the Digital Millennium Copyright Act of 1998, which limits the liability of online service providers for copyright infringement by users. Southern District of New York Judge Louis Stanton ruled on the case in 2010 in favor of YouTube, reasoning that YouTube could not be held liable for simply having "general awareness" that such videos might be posted, and that it does not need to monitor such activity. The decision was overturned, when Judge Jose Cabranes for the 2nd Circuit held that "a reasonable jury could find that YouTube had actual knowledge or awareness of specific infringing activity on its website." A YouTube representative stated in an e-mail: "All that is left of the Viacom lawsuit that began as a wholesale attack on YouTube is a dispute over a tiny percentage of videos long ago removed from YouTube. Nothing in this decision impacts the way YouTube is operating." Viacom, in a statement, said the appeals court "delivered a definitive, common sense message to YouTube: intentionally ignoring theft is not protected by the law."

Facebook v. Yahoo

Facebook filed a counterclaim against Yahoo this week in Yahoo's patent infringement litigation against Facebook initiated in March 2012 in the Northern District of California. Facebook is claiming that Yahoo is infringing upon 10 of Facebook's patents, five of which target features related to Yahoo's online advertising business. One of the allegedly infringing patents relates to Yahoo's Flickr photo sharing service, and its ability to connect with other users, to identify people in photographs and to generate personalized news feed. Facebook General Counsel Ted Ullyot said: "While we are asserting patent claims of our own, we do so in response to Yahoo's short-sighted decision to attack one of its partners and prioritize litigation over innovation."

Huffington Post

Southern District of New York Judge John Koeltl dismissed the lawsuit against the Huffington Post on March 30, 2012. This lawsuit was brought by unpaid bloggers for the Huffington Post, who claimed that the work of unpaid content providers for the Huffington Post gave it its value. AOL Inc. purchased the Huffington Post for $315 million last year, and the lawsuit claimed that the estimated 9,000 bloggers are entitled to about one-third of the purchase price. Judge Koeltl dismissed the lawsuit, reasoning that no one forced the bloggers to repeatedly provide their work with no expectation of being paid, and they got what they bargained for when their work was published. "The principles of equity and good conscience do not justify giving the plaintiffs a piece of the purchase price when they never expected to be paid, repeatedly agreed to the same bargain, and went into the arrangement with eyes wide open," the judge wrote. The case was dismissed with prejudice. Attorneys for the bloggers stated that they are considering their options going forward.

Gucci v. Guess

Gucci's trademark infringement trial against Guess continued this week. Gucci first sued Guess in 2009, claiming that Guess was selling items with logos that are "studied imitations of the Gucci trademark". Paul Marciano, the C.E.O. of Guess, testified on April 4, 2012, denying that his company intentionally copied Gucci's products. With regards to copying Gucci's interlocking "G"s in beige fabric, trimmed with red and green, he stated, "This kind of pattern is common in the world of fashion and it's not particular to Gucci... What I understand here, which is very frequent [in fashion], is an inspiration to create an original bag of G's with the same components. That's what design is." Yet Gucci's lawyers presented emails Marciano had exchanged with supplier Marc Fisher Footwear regarding sending Gucci fabric samples to Guess's own fabric supplier for copying.

April 10, 2012

Unraveled: A Film Review

By Christine A. Pepe

The documentary film Unraveled tells the compelling story of Marc Dreier, a once well-regarded attorney, who was convicted in 2009 for defrauding hedge funds and other investors of more than $400 million dollars. Dreier's scheme involved creating and selling fictitious promissory notes purportedly issued by his "clients." Of course, there were no real clients borrowing the money--Dreier used the borrowed funds to fuel his lavish lifestyle (e.g., an art collection including works by Warhol, Picasso, Matisse, and Damien Hirst, two yachts, an Aston Martin, a vacation home in the Caribbean, multiple homes in the Hamptons) and grow his law firm, Dreier LLP. The successful perpetration of Dreier's Ponzi scheme ultimately involved arranging meetings for the hedge fund investors during which Dreier (or one of his lackeys) impersonated representatives from the purported issuers of the promissory notes. If you haven't heard of Marc Dreier, that's largely because his story was overshadowed by an even bigger Ponzi schemer, Bernie Madoff, who was arrested and sentenced around the same time. Madoff was sentenced to 150 years in prison--Dreier to 20 years.

Consisting of first person accounts, archival footage and graphic animation, Unraveled presents an engaging and thought-provoking portrait of one of America's more brazen white collar criminals. Part of the film's impact is that it captures Dreier during his period of house arrest as he awaits sentencing after pleading guilty, an undoubtedly intimate and vulnerable time. Unraveled is directed by Marc Simon--an entertainment attorney at Cowan, DeBaets, Abrahams & Sheppard LLP--who previously worked for Dreier LLP and knows Dreier personally, even viewing him as a mentor at one time. Despite this potential closeness to the subject matter, Simon's film remains objective in its case study. The score, written by Chris Hajian, adds to the film, creating an ominous and powerful backdrop to this dark tale of one man's self-inflicted demise.

Dreier graduated from Yale and went on to Harvard Law School; in high school, he was president of his class and was voted "Most Likely To Succeed." These types of achievements apparently weigh heavy on a person throughout life--they convinced Dreier that not only was he was destined for tremendous success, but that he must achieve it--at all costs. Success can mean a lot of things to different people, but for Dreier, success meant money, status, and more importantly, the appearance of success. While many attorneys can relate to the pressure to succeed, for Dreier, the illusory appearance of success became a compulsion. The film gives Dreier a platform to explain why he "lost his way", as he admits, and lets the viewer decide whether any degree of sympathy is warranted.

Most people will never cross the line that Dreier crossed, but is that, as Dreier muses in the film, because the line is presented to so few people--dare we say an elite few? As Dreier continues his on-camera introspection, he ponders what really stops most people from committing crimes: Is it moral opposition or just a fear of getting caught? In this way, Dreier is reminiscent of Dostoevsky's Raskolnikov. It seems that what was driving both Dreier and Raskolnikov in part was a desire to prove themselves "extraordinary men" above morality and law. Raskolnikov killed because he could; Dreier swindled because he could. Of course, the analogy to Raskolnikov ends when Dreier gets caught in the criminal act, whereas, if you recall, Raskolinkov's guilt over his murder overwhelmed him to the brink of confession. For me, Unraveled provided a fascinating exploration of the psychological motivations of a white collar criminal. See this film and decide for yourself what drove a member of the legal profession off the rails into a life of criminality and whether the punishment fits the crime.

UNRAVELED premieres April 13th, 2012 at the City Village Cinema East (2nd Avenue and 11th/12th Streets)

Tickets can be purchased here:

or you can visit the UNRAVELED Facebook page with links to the theatre website:

April 11, 2012

EASL/IP Pro Bono Clinic at New York Foundation For the Arts

On Tuesday, May 15th, the EASL and IP Sections will be co-sponsoring a Pro Bono Clinic at the New York Foundation for the Arts (NYFA). The Clinic will take place between 4:00 and 7:00 p.m. at NYFA's offices in Dumbo, at 20 Jay Street, 7th Floor, Brooklyn.

If you would like to volunteer for one or more of the 30 minute time slots, please email Elissa Hecker at and specify your contact information (name, firm/company, phone number and email address), which time slot(s), area(s) of expertise, and whether you are an EASL and/or IP Section member.

If you do not have pro bono liability insurance, you may be covered under EASL and IP's policy for this Clinic. Please also indicate if you need such coverage.

We look forward to hearing from you.

Best regards,

Elissa D. Hecker and Kathy Kim
EASL Pro Bono Steering Committee

April 14, 2012

Weekly Issues in the News

By Geisa Balla

One Direction

California band "One Direction" has filed a trademark infringement suit against UK band "One Direction" in the Central District of California. The UK's "One Direction" was discovered on Simon Cowell's show, The X Factor, in 2010. The five members of the band, Simon Cowell's Syco Entertainment and Sony Music were named as defendants in the lawsuit. The plaintiff claims that the California band has been using the name "One Direction" since 2009, and has recorded two albums. The band filed a trademark application with the USPTO in February 2011. The UK "One Direction" reached instant stardom after its appearance on The X Factor, and has a much higher profile than the American "One Direction." The lawsuit alleges that Syco and Sony Music "chose to ignore the plaintiff's rights and willfully infringed them" after they realized that the bands shared the same name. The plaintiff in this action is seeking an injunction that would stop Syco and Sony Music from using "One Direction" in promotional materials, treble damages on the profits made by its UK rival, as well as compensatory damages in excess of $1 million. The lawsuit said that the continued use by both bands of the same name was causing "substantial confusion and substantial damage" to the goodwill earned by the California group.

Nike v. Reebok

Nike and Reebok have settled their lawsuit related to the sale of New York Jets football apparel with Tim Tebow's name. Nike first filed a lawsuit against Reebok on March 27, 2012, in the Southern District of New York, alleging that Reebok had no right to sell Tebow-related Jets merchandise as Reebok's licensing agreement with the NFL had expired at the end of February 2012. Pursuant to the settlement, Reebok will halt the sale of the Jets apparel bearing Tebow's name and will offer to buy apparel already shipped to retailers. Nike's exclusive five-year contract to sell apparel for the NFL began on April 1, 2012, and Tebow-Jets merchandise will be available for sale in late April.,_Nike_settle_suit_over_Tebow_apparel_sales/

Los Angeles Dodgers

The Los Angeles Dodgers announced that it expects to emerge from bankruptcy by the end of April. The Dodgers first filed for Chapter 11 Bankruptcy in June 2011. On March 27, 2012, the Dodgers announced that a group of buyers, led by investment firm Guggenheim Partners and Earvin "Magic" Johnson, had agreed to buy the team for $2 billion. The Dodgers are now filing an amended plan of reorganization, which would provide payments in full to all the allowed claims of creditors. The bankruptcy judge overseeing this case stated that he will confirm the plan to exit Chapter 11.


Apple rejected the U.S. Justice Department's allegations that it colluded with publishers over electronic book pricing. The Justice Department filed an antitrust lawsuit against Apple and five other publishers, claiming that the parties conspired to fix the prices of electronic books. The Justice Department reached a settlement with three of the publishers. Apple is defending its pricing structure. In a statement to the Wall Street Journal, Apple representative Natalie Kerris stated: "The launch of the iBookstore in 2010 fostered innovation and competition, breaking Amazon's monopolistic grip on the publishing industry . . . Just as we have allowed developers to set prices on the App Store, publishers set prices on the iBookstore".

April 20, 2012

Weekly Issues in the News

By Geisa Balla

Copyright Law and Gray Market Goods

The U.S. Supreme Court will examine two contradictory provisions in the Copyright Act in Kirtsaeng v. John Wiley & Sons. The competing provisions are the first sale doctrine, which permits the owner of a lawfully-produced work to resell the work without the authority of the copyright owner, versus the one controlling the importation of copyrighted material into the United States. The case at hand involves a Thai student, Kirtstaeng, who was selling used foreign-manufactured books on eBay at a profit. The student's position is that the first sale doctrine allows him to resell these books. John Wiley & Sons, whose Asian subsidiary produced some of the books in question, disagreed, and filed a copyright infringement lawsuit in 2008 in the Southern District of New York. The jury eventually found Kirtsaeng liable, and Kirtsaeng appealed. The Second Circuit upheld the verdict, ruling that the first-sale doctrine applies only to goods made in the United States. The Appellate Court also noted a "particularly difficult question of statutory construction" because of the competing Copyright Acts provision. The Supreme Court is expected to hear arguments in its October term for 2012.

Louis Vuitton

The U.S. International Trade Commission (ITC) issued a decision this week, putting border agents on notice to block counterfeit Louis Vuitton goods from entering the United States. Louis Vuitton filed an ITC complaint in December 2010, alleging that various Chinese counterfeiters and some U.S. retailers were infringing its Toile trademark. Some of the defendants settled the matter before trial, and the remaining defendants failed to participate in the proceedings. The decision by Administrative Law Judge Charles Bullock doesn't specify a remedy, but says that the ITC may issue cease-and-desist orders to keep the alleged counterfeiters from "engaging in unfair acts in the importation and sale" of infringing articles. Vuitton's global intellectual property director, Valerie Sonnier, told Women's Wear Daily that, "The chief administrative law judge recognizes the importance of protecting intellectual property and took the welcome step of ensuring that its orders include all merchandise that infringes on our Toile Monogram Marks, and not just products of the respondents in this case."

Superman and DC Comics

Attorney and businessman Marc Toberoff represented the heirs of Superman's creators, Jerome Segel and Joe Shuster, in a copyright dispute over the Man of Steel. After Toberoff won summary judgment for his clients in 2008, DC Comics filed a declaratory judgment action against him, his companies and his heirs. DC Comics contends that Toberoff induced Siegel and Shuster's families to break previous rights agreements, and in return, Toberoff would get 40% of whatever the families would earn from Superman rights. The court decided on April 17, 2012, that Toberoff cannot claim attorney-client privilege on the documents he turned over to prosecutors investigating a former associate who allegedly stole case documents from his office. DC Comics and Warner Brothers will now have access to the materials that support their arguments that the Siegel and Shuster families had entered into rights agreements before Toberoff interfered in their relationship with DC Comics. A Warner Brothers spokesperson stated, "We are extremely pleased that the 9th Circuit unanimously found in our favor. The ruling means that defendant Marc Toberoff must now turn over critical evidence in the pending litigation against him and others."


Magician and comedian Teller, of Penn & Teller, filed a lawsuit in the District of Nevada on April 11, 2012, against Dutch entertainment Gerard Dogge over Teller's copyright illusion known as "Shadows." The illusion involves a spotlight on a vase containing a rose, where the shadow of the rose is projected onto a white screen. Using a knife, Teller then severs the leaves and petals of the shadow, and the corresponding leaves and petals of the actual rose fall to the ground. The complaint alleges that Shadows is "the oldest most venerated piece of material in Penn & Teller's show." The illusion was registered with the Copyright Office in 1983. The defendant in this matter posted a YouTube video where he performs the illusion, and offers to sell the trick. Once Teller found out about the video, he directed YouTube to remove it and contacted Dogge, asking him to stop marketing the work, and even asked him to pay for it. Dogge countered, demanding a much higher sum from Teller, and threatened to disclose the secret to the illusion if Teller did not agree to Dogge's terms. The lawsuit seeks a permanent injunction against any copyright infringement, plus damages.,_sues_over_magic_trick/

The Bachelor

Two African-American men filed a class action racial discrimination lawsuit against ABC television and the producer of the reality show "The Bachelor" and "The Bachelorette." The plaintiffs are Nashville residents Nathaniel Claybrooks, an All-American football player, and Christopher Johnson, an aspiring NFL player. They claim that in the 10 years and 23 seasons of the shows, a person of color has never been featured in a central role. Both plaintiffs applied during an open casting in August 2011. Claybrooks claims that his interview lasted less than half the time of white applicants. Johnson alleges that he "did not get the opportunity to even make it to the second level," stating, "I was stopped by a young gentleman about five feet into the door. He saw fit to ask me exactly what was I doing here." Plaintiffs' counsel stated that he estimated there have been dozens or hundreds of contestants turned away because of their race, reasoning "How do you explain zero [Bachelors and Bachelorettes of color] for 23 [seasons]?" The plaintiffs refused to discuss their financial goals, but their attorney insisted: "This case is impact litigation... it can be a vehicle for change."

April 27, 2012

Weekly Issues in the News

By Geisa Balla

Trade Secrets During Discovery

New York Supreme Court Justice Shirley Werner Kornreich issued a decision on April 23, 2012, holding that plaintiffs who claim their trade secrets were misappropriated must identify what those secrets were during discovery. The decision was issued in a lawsuit by MSCI, which alleged that a former employee and his new employer misappropriated MSCI's source code for risk management software to sell to investment institutions. In a November ruling, the judge permitted MSCI to identify only which portions of its source code were not trade secrets. The defendants argued that it was unfair to expect defendants to deduce what secrets were at issue. The judge sided with them, holding that MSCI must identify "with reasonable peculiarity" the trade secrets were allegedly misappropriated. "Only by distinguishing between the general knowledge in their field and their trade secrets, will the court be capable of setting the parameters of discovery and will defendants be able to prepare their defense," Kornreich wrote. "Plaintiffs who have brought this action, bear the burden of proving their allegations," the judge continued. "Merely providing defendants with plaintiffs' 'reference library' to establish what portions of their source code are in the public domain shifts the burden to defendants to clarify plaintiffs' claim.",_judge_rules/

Apple and Motorola

The International Trade Commission (ITC)issued a preliminary ruling that Apple Inc. infringed on a Motorola Mobility Inc. patent in making its iPhones and iPads. The patent at issue covered eliminating noise and other interference during voice and data transmissions. A full commission will review the preliminary decision and make a final ruling in August. Motorola also accused Apple of violating three other patents, but the ITC did not rule in Motorola's favor on those patents. Motorola, who is being acquired by Google Inc., has filed related lawsuits against Apple in federal courts in Illinois and Florida. These legal battles are part of the larger market share battle between Apple's products and Google's Android software. Google has not yet been directly involved in the lawsuits because it does not make its own phone, but that will change once it acquires Motorola.

Facebook and AOL

Facebook will pay Microsoft Corp $550 million for 650 patents and patent applications, as well as a license to another 275 patents and applications owned by Microsoft. Earlier this month Microsoft purchased more than $1 billion in AOL Inc. patents. Microsoft's General Counsel stated that the Facebook deal allows Microsoft "to recoup over half of our costs while achieving our goals from the AOL auction." In the meantime, Facebook is also in a legal battle with Yahoo Inc. Yahoo sued Facebook earlier this year, alleging that Facebook infringed 10 Yahoo patents, and Facebook countersued alleging that Yahoo infringes 10 of Facebook's patents.$550_mln_for_AOL_patents/


Google has agreed to pay a $25,000 fine to the Federal Communications Commission (FCC) for allegedly impeding the agency's investigation into whether Google violated federal rules when its street-mapping service collected and stored data from unencrypted Wi-Fi networks. The FCC stated that Google executives "deliberately impeded and delayed" its investigation. A Google engineer who developed the code for Google's Street View service declined to testify and invoked his Fifth Amendment rights against self-incrimination. Google responded that it did not provide "untimely" responses, but the delays by the investigators lengthened the FCC's review. Google told the FCC in a letter that it "disagrees with the premise" of the fine, but "has determined to pay the forfeiture proposed [by the FCC] in order to put this investigation behind it." The FCC stated it did not find enough evidence to conclude that Google violated federal law designed to prevent electronic eavesdropping.

May 3, 2012

Chief Judge Jonathan Lippman's Speech - Law Day 2012

Thank you to Chief Judge Lippman for recognizing the need for pro bono counsel in NYS. The EASL Section is a leader in the NYSBA's efforts to promote pro bono among all of its members, and we will continue to do so through the Pro Bono Committee. Below are Chief Judge Lippman's remarks from Law Day, May 1, 2012.

Today on Law Day, we pause from our busy routines to celebrate our nation's faith
in the rule of law and the liberties we so dearly cherish. And we reaffirm the ideals of equality and justice that are the roots of our national prosperity.

While we enjoy the freedoms guaranteed to us by our Constitution, we cannot take
for granted that the continued vitality of those freedoms -- the very life of those freedoms -- depends on the active engagement of each of us. Those who are privileged to call ourselves lawyers have a special duty as the gatekeepers of justice to participate in preserving what we hold so dear.

With that in mind, my remarks today will focus on a most pressing responsibility for
all of us: instilling and fostering a culture of service in the men and women who enter our profession as lawyers each year. It is the legal profession's commitment to equal justice and to the practice of law as a higher calling that has made service to others an intrinsic part of our legal culture. The new protocols that I will announce today for admission to the bar in New York, will challenge every law student to answer very basic questions that are fundamental to the very fibre of the legal profession: How will you choose to benefit your fellow man and your community with your new skills? Will you use your legal acumen to foster equal justice in our state? Do you recognize that being a lawyer requires an understanding that access to justice must be available to all New Yorkers regardless of their station in life? From the start, these responsibilities of the profession must be a part of every lawyer's DNA - - to support the values of justice, equality and the rule of law that make this state and this country great.

We are facing a crisis in New York and around the country. At a time when we are
still adjusting to the realities of shrinking state coffers and reduced budgets, more and more people find themselves turning to the courts. The courts are the emergency rooms of our society -- the most intractable social problems find their way to our doors in great and increasing numbers. And more and more of the people who come into our courts each day are forced to do so without a lawyer.

The critical need for legal services for the poor,the working poor,and what has
recently been described as the near poor could not be more evident. Our Task Force to Expand Access to Civil Legal Services estimates that we are at best meeting only 20 percent of the civil legal services needs of New York State's low-income residents -- and this is at a time when 15% of the people in our state live at or below the poverty level. That means that literally millions of litigants each year are left to navigate our court system without the help of a lawyer.

Given the magnitude of this problem, and thanks to our partners in government in
the legislative and executive branches, the judiciary's budget has included substantial
funding for civil legal services over the last two years. I am proud of the fact that we have established a template in New York to publicly fund civil legal services for the poor in a systemic and reliable way. This year, the judiciary's budget includes $25 million to support civil legal service providers directly and another $15 million in rescue funding to IOLA -- the total of $40 million being the highest level of state funding for civil legal services in the country. These funds could not be more important given the economic crisis that has impacted most heavily on those who can least help themselves in our state and created greater demands for legal services than ever before in our history.

But we must do more to bridge the gap between this rising need and the services
we provide. While greatly increased state funding will go a long way to addressing the
desperate straits many litigants with limited means find themselves in, by itself, money is not enough. We need the continued individual efforts of lawyers doing their part. We are indeed fortunate that, in New York, so many lawyers are already embracing a culture of service. So many lawyers understand that it is their special responsibility to use their skills and their position to help ensure that we are providing for the justice needs of all New Yorkers.

Pro bono service has been part of the professional lives of lawyers for centuries.
It is deeply rooted in our traditions. Our own fabulous New York State Bar Association, as well as countless other bar associations around the state and the country, remind us of this.

For so many years, they have recognized our ethical and social responsibility to volunteer our time and resources to provide legal services for those in need.
These same considerations have become very much a part of the culture at law
schools as well. The conviction that serving the public is an essential component of our professional identity as lawyers has caught hold at law schools around the country. In fact, New York's practice rules -- like those of many other states -- allow law students to perform legal work under the supervision of law school faculty or legal service organizations,thereby enabling students to appear in court and put their name on court filings.

But, now it is time to connect these dots between the experience of law students on the one hand and the ongoing professional responsibility of lawyers to perform pro bono service on the other. If pro bono is a core value of our profession, and it is -- and if we aspire for all practicing attorneys to devote a meaningful portion of their time to public service, and they should -- these ideals ought to be instilled from the start, when one first aspires to be a member of the profession. The hands-on experience of helping others by using our skills as lawyers could not be more of a pre-requisite to meaningful membership in the bar of our state. So today, on Law Day, 2012, we turn over a new page in the bar admission process in New York -- by requiring each and every applicant for admission to contribute 50 hours of participation in law-related and uncompensated pro bono service before they can practice in New York State.

With this step, as it should be, New York will become the first state in the nation to
require pro bono service for admission to the bar. What better way to send the strongest message to those about to enter our profession -- assisting in meeting the urgent need for legal services is a necessary and essential qualification to becoming a lawyer. With this new initiative, New York will lead the way in stating loudly and clearly that service to others is an indispensable part of our legal training and that before you can call yourself a lawyer in New York, you must demonstrate in a very tangible way your commitment to the ideals of our great profession.

Every year, about 10,000 prospective lawyers pass the New York Bar Exam. While
50 hours of law related pro bono work would amount to little more than a few days of
service for each year of law school, the aggregate would be a half million hours each year that benefits New York and those in need of legal help. If every state in the country were to join us in taking up this mantle, that would mean at least two and a half million hours of additional pro bono work - - what a positive impact on persons of limited means, communities and organizations that would gain from this infusion of pro bono work.

And by doing so, we will not only benefit the clients who are in dire need of legal
assistance but, so importantly, we will also be helping prospective lawyers to build the valuable skills and acquire the hands-on experience so crucial to becoming a good lawyer.

There can be no argument that newly-minted lawyers are simply better at their jobs when they receive direct experience in the practice of law. By assisting a family facing eviction or foreclosure, by working with an attorney to draft a contract for a fledgling not-for-profit, by helping a victim of domestic violence obtain a divorce, or by using their legal talents to help state and local government entities in a time of economic stress, law students can access the real-world lessons that are so important to succeeding in legal practice and hopefully also experience the intrinsic reward that comes from helping others through pro bono service.

How will this new admission requirement work in New York? First, it will not be
solely the responsibility of law schools to provide pro bono opportunities, although there are law schools that already require some pro bono service to graduate, and most law schools today have an impressive array of clinical programs to offer their students. These students also may want to look outside the campus walls to legal service providers in their area and explore internships, or work with local bar associations to find pro bono possibilities. And while most applicants to the bar will want to complete their pro bono service during the law school years or over the summers, they will also have the option to do so after graduation, or even after taking the bar exam or after beginning a paid legal position in a law firm or elsewhere.

When applying to the Appellate Divisions for admission to the New York bar,
applicants will be required to include an affidavit describing the nature of their pro bono work, the organization and the individual lawyer who supervised them, and the dates and hours of service. In order to provide sufficient notice to current law students, this requirement will not affect the applicants seeking to join the bar this year. In New York, it is the Appellate Divisions of the Supreme Court through their Committees on Character and Fitness that oversee and approve all admissions to the bar, and they will ensure that applicants have completed their pro bono service before they are admitted to practice law.

The Presiding Justices of each of the four Appellate Divisions have fully embraced this new pro bono requirement for bar admission in our state, and I am so grateful to them not only for their support but also for their advice and wisdom.

It is my hope that New York will serve as the trendsetter nationally in requiring pro
bono service for admission to the bar and in recognizing that it is an essential part of what it means to be a lawyer. Across the country, it is critical that we formally recognize pro bono service as an indispensable part of our legal culture. This will not only affect the way we as lawyers perceive ourselves -- it will also shape the way we are perceived in the wider community and the society in which we play such an important role. The legal profession should not be seen as argumentative, narrow or avaricious, but rather one that is defined by the pursuit of justice and the desire to assist our fellow man.

With today's announcement, we celebrate the thousands and thousands of lawyers who perform pro bono work in our state every year, and who have risen to the occasion time and time again to provide legal services and ensure access to justice for all. We honor their commitment to take on legal work for those most in need and pass that commitment on to a new generation seeking to practice law in our state, starting on day one - - helping to shape that generation with the values we all share as members of our noble profession, and I do believe it is noble. As far back as judges and lawyers have existed, the pursuit of equal justice for all, rich and poor alike, has been the hallmark of our profession. In New York, now more than ever before, we will make this moral imperative a reality before anyone is given the privilege and honor of practicing law in our great state.

Thank you.

May 4, 2012

Weekly Issues in the News

By Geisa Balla

Betsey Johnson

U.S. design house Betsey Johnson LLC filed for Chapter 11 bankruptcy protection on April 26, 2012 in the U.S. Bankruptcy Court, Southern District of New York. It listed $21.3 million in assets and $15.4 million in liabilities as of the end of 2011. In its petition, Betsey Johnson cited sales and profitability for the bankruptcy filing, stating that its retail store sales have fallen 20% and profitability has dropped by more than 50% since 2007. The company is seeking offers to buy all or parts of its business, and has not been able to find buyers or investors so far. "The economic recession had a devastating impact on higher-end fashion apparel brands, including Betsey Johnson Fashions," the company said, adding that cash constraints had left it unable to turn the situation around. For fiscal year ending December 31, 2011, Betsey Johnson generated $60 million in sales, but recorded a negative EBITDA of $5.7 million.

Google Books

In the ongoing Google Books dispute, Google Inc. argued this week that associations of authors and photographers should not be allowed to sue the company as a group. The Authors Guild and the American Society of Media Photographers filed their lawsuit against Google, alleging that Google infringed on copyrights when it signed contracts with libraries for scanning, distributing and displaying about 20 million books. The attorney for the Authors Guild said that Google was an "intimidating defendant" for individuals, and that this "action calls out for a mass litigation to adjudicate the mass digitization." Judge Denny Chin did not issue a decision, but noted in oral arguments that it would take forever to resolve cases brought by individual authors, and that it "seemed to make sense" to consider the lawsuit as a group. This litigation began seven years ago over Google's desire to create the world's largest digital library. In March 2011, judge Denny Chin rejected a settlement in the matter over antitrust and copyright concerns.,_authors_go_head_to_head_over_digital_books/

Kurt Cobain

Courtney Love continues to lose control over the estate of her late husband, Nirvana front man Kurt Cobain. In 2009, Love lost custody of the couple's only daughter Frances Bean Cobain. Recently uncovered documents now show that Frances Bean has taken over control of the publicity rights for Kurt Cobain's name, likeness and appearance. The Fix reports that "the documents show that Love agreed to step down as Acting Manager of End of Music LLC--the business entity responsible for generating cash from Cobain's publicity rights--once she'd received a $2.75 million loan from Frances' trust fund in 2010 . . . Until Courtney pays it back, she won't receive a dime from Kurt's name, likeness or appearance from the deals formed by Frances and her advisers since December 2010." Frances also has the final say in business agreements of End of Music LLC. Courtney Love remains a company member, but has no power to make decisions on anything bearing the likeness of Cobain.

Greg Mortenson

The U.S. District Court for the District of Montana dismissed a class-action fraud lawsuit against Greg Mortenson, author of bestselling book "Three Cups of Tea." The lawsuit alleged that Mortenson fabricated much of the story in his book about promoting education for girls in Pakistan and Afghanistan. It also alleged that Mortenson and his publisher and non-profit Central Asia Institute fabricated material intended "to induce unsuspecting individuals to purchase his books and donate to [Central Asia Institute]. The court dismissed the lawsuit for the ""imprecise, in part flimsy, and speculative nature of the claims and theories advanced" by the plaintiffs. The lawsuit was filed in May 2011, after a "60 Minutes" program that disputed the author's account, and stated that his institute was largely being used to promote the author's book. The Montana Attorney General also investigated Mortenson's claims, and Mortenson acknowledged that less than half of his institute's proceeds were used to build schools, but that "much of the remainder was spent on CAI's other charitable programs." Mortenson entered into a settlement with the Montana Attorney General, agreeing to pay $1 million to compensate his Montana-based charity for using his non-profit to promote and buy copies of his book.

Linda Evangelista

Model Linda Evangelista is asking for a record $64,000 month in child support from millionaire François-Henri Pinault for their 5 year-old son. The child could get a total of $807,000 a year in child support, if the Court grants Evangelista's motion. Pinault is the chief executive of PPR, the conglomerate that owns Yves Saint Laurent, Gucci and Bottega Veneta. Pinault's lawyers claim that Evangelista's claim is beyond excessive. Yet Evangelista counters that their child needs armed bodyguards and his own driver. When questioned by the court as to why her son needs around-the-clock nannies and how much she works, Evangelista responded that when she works, it can be a 16-hour day. "On days when I do not work, I am working on my image. I have to hit the gym. I have beauty appointments. I have to work toward my next job and maintaining my image, just like an athlete."

Pro Bono Requirement to Join NY Bar

By Irina Tarsis

Few, if any, New York State law students know that May 1 is known as a Law Day, at least in the United States and among lawyers. Another curious fact law students may find noteworthy is that New York State may soon require them to work for free for 50 hours before being licensed to practice.

This year, on May Day or Law Day 2012, in his address to judges, lawyers and lawmakers assembled in Albany, Chief Judge Jonathan Lippman announced that starting in 2013, the approximately 10,000 applicants to the New York State Bar will have to show that they have performed 50 hours of pro bono work to qualify for admission. The impetus for requiring thousands of hours of unpaid work from recent graduates comes from the undeniable fact that a growing number of people in New York State cannot afford legal services: artists and blue colored workers, veterans and single parents, victims of domestic violence and the elderly. Free legal service providers such as The Legal Aid Society, Pro Bono Partnership, Volunteer Lawyers for the Arts, and New York Lawyers for the Public Interest have witnessed an increase in requests for free assistance with civil legal matters since the economic downturn. The courts have noted that the legal system is failing to provide justice to those unable to afford legal counsel. Lippman believes that the requirement would begin to satisfy the unmet need for lawyers to represent the poor and encourage lawyers-to-be to serve the public.

As a member of EASL's Pro Bono Committee, I agree that it is important to provide assistance to those who need it for reasons other than personal financial enrichment. We already offer free services for some transactional and litigation matters and provide opportunities to law students and recent graduates to shadow experienced attorneys performing pro bono work. However, making pro bono work mandatory may not be the best way of encouraging attorneys to help.

The same economic conditions that have forced more people to seek free representation have left hundreds of recent graduates with little work prospects (for more, read about legal actions brought by law graduates against their schools, such as: "Grads Can't Sue Law School for Allegedly Inflating Job Data," Bloomberg BNA (April 11, 2012 available at or the state of law firms such as Dewey and LeBoeuf in the New York Times ("For Law Students, Dewey & LeBoeuf Internships Evaporate" (May 3, 2012) available at Legal positions advertising for junior attorneys are consistently asking for 3 to 5 years of legal experience. The conundrum is obvious. If the newly graduating attorneys can be put to use in helping the poor, they would gain hard legal skills and perhaps become employable in a few years time; however, they require training, supervision and means to survive.

Some of the concerns with the Lippman initiative include whether the State may be pairing poor people with lawyers who resent the task; should the State settle young lawyers, already in debt and struggling to find jobs with additional obligations and blocks to bar admission, what are the benefits of relegating representation of the indigent to inexperienced and thus underqualified counsel?

Law school administrators in New York State are faced with these questions: How may law schools assist in bridging the gap and increase free legal services to the indigent? How can the schools make their graduates more marketable and employable after three years of classroom training?

To provide quality pro bono work as contemplated by Lippman's announcement would require supervision and training either at schools with experienced clinical faculty, at understaffed and underfunded free legal service providers, or at firms, ever-reticent to foot the bill for loss-making work. The hidden costs of such training by nonprofits will have to be addressed either through increased tuitions or through state funding - another conundrum. An optimist would argue that in light of the importance placed on clinical education and practical skills, students are likely to embrace the new requirement. A realist would hedge and say that students would be open to taking on more extracurricular activities only if they can fulfill the requirement while in law school or if they are guaranteed employment subsequently. According to Lippman, admission to New York state bar is "most coveted;" however, even that coveted license gives no guarantees.


Anne Barnard, "Top Judge Makes Free Legal Work Mandatory for Joining State Bar," THE NEW YORK TIME (May 1, 2012) available at

Joel Stashenko, "Lippman Announces Pro Bono Requirement for Bar Admission," NY Law Journal (May 1, 2012) available at

May 11, 2012

Weekly Issues in the News

By Geisa Balla

Myspace as the Newest FTC Settlement

Myspace settled charges with the FTC that it misled millions of users about sharing personal information with advertisers. The settlement will require the company to create a comprehensive program that protects consumers' information and bars Myspace from misrepresenting how it protects its users' privacy. Myspace will be subject to independent reviews of its privacy program for the next 20 years. The FTC settled in 2010 with Twitter over failure to safeguard users' personal information, and in 2011 it found that Facebook and Google Inc. had also engaged in deceptive privacy practices. Facebook and Google are subject to 20 years of audits, and Twitter is subject to 10 years of audits.


The Second Circuit Court of Appeals held on May 10, 2012, that CBS Corp and its chief executive, Leslie Moonves, are not liable to shareholders to failing to quickly disclose that the company would take a $14 billion writedown during the 2008 financial crisis. The Court held that the shareholders did not sufficiently show that CBS committed securities fraud by ignoring accounting standards for valuing goodwill. CBS shares dropped 20 percent on October 10, 2008, when CBS announced the writedowns. CBS is required by the Financial Accounting Standards Board to examine whether to write down goodwill, which reflects the difference between a company's value taken as a whole and the company's book value. The shareholders claimed in their lawsuit that CBS should have reviewed its goodwill in early 2008, as the economic downturn was commencing and as its market value and advertising revenue were dropping. However, the Court did not agree. "All of the information alleged to constitute 'red flags' ... were matters of public knowledge," it said. "CBS's market price would at all pertinent times have reflected the need for, if any, or culpable failure to undertake, if any, interim impairment testing.... That being the case, the second amended complaint does not sufficiently allege reliance upon a fraudulently inflated price."


Zynga Inc., the publisher of popular Facebook games like FarmVille and CityVille filed a trademark infringement suit against French game publisher Kobojo in federal court in San Francisco. The lawsuit is based on Kobojo's release of PYRAMIDVILLE in early 2011. The complaint alleges that "Facebook users are likely to believe, erroneously, that PYRAMIDVILLE is a member of Zynga's 'VILLE Family of Games." Zynga's effort to secure a trademark for the word "Ville" has stalled in the USPTO. The complaint states that Zynga has "consistently promoted the 'VILLE Family of Games together as a family, identified by the distinctive 'VILLE suffix." "Zynga's "Ville" family includes many well-known games, including FarmVille, CityVille and CastleVille, and the "Ville" suffix is strongly associated by gamers with Zynga," Zynga said in a statement Monday. "Given Kojobo's refusal to change their game name, legal action was necessary to defend our famous marks and prevent player confusion." The claim seeks treble damages against Kobojo.

Christopher Burch

A new lawsuit against Christopher Burch, ex-husband and business partner of designer Tory Burch, alleges discrimination and preference for hiring gay men. The lawsuit claims that Mr. Burch openly stated that he "only hired gay men because they were productive and he trusted them." The plaintiff and former employee Jamie Ardigo allegedly found the remark "extremely offensive" and complained about it and other "inappropriate comments," resulting in his termination from his human resources job in February 2012. Burch's attorney stated: "The defendants deny the allegations of discrimination and retaliation set forth in the complaint and are prepared to mount a vigorous defense."


A Virginia court recently ruled that the "like" button on Facebook is not constitutionally protected speech. Six people in Virginia said they were fired after "liking" the page of their boss' election rival. Their boss, Sheriff B.J. Roberts, fired them for supporting an opponent in his 2009 re-election bid. The workers then sued, saying that their First Amendment rights were violated. While public employees are allowed to speak as citizens on matters of public concern, the judge on the case ruled that clicking the "like" button did not amount to expressive speech. The judge stated that while other courts have ruled that Facebook posts are protected speech, simply clicking on the "like" button is different and does not warrant First Amendment protection. "It's not a very deep one, but you're making a statement." James H. Shoemaker, a lawyer for one of the dismissed workers, said that he was surprised by the April 24th ruling and stated that it would be appealed.

May 18, 2012

Weekly Issues in the News

By Geisa Balla

E-books, Apple

Southern District of New York Judge Denise Cote has denied motions to dismiss filed by Apple Inc. and five other publishers in the e-books class action case. The lawsuit is related to Department of Justice (DOJ) charges in April 2012, accusing Apple and other e-book publishers of colluding to break up's dominance of the digital book market. HarperCollins Publishers Inc., Simon & Schuster Inc. and Hachette Book Group reached settlements with the DOJ. Apple, Macmillian and Penguin said in court last month that they want to go to trial to defend themselves of the charges. The consumers' main allegation in the class action suit is that the publishers worked together to raise prices and decrease competition, with Apple coordinating the agreement among them. The publishers moved to dismiss the complaint, but the judge was not persuaded. Judge Cote said that as alleged in the complaint, "it is presumed that the conduct by all parties would be unlawful under the rule of reason." In their motion papers, the defendants argued that the alleged pricing agreement was implausible, and that after the purported pricing agreement, prices became more varied, not less so. According to the DOJ's complaint, the price fixing took place in early 2010, as Apple was introducing its iPad, and e-book prices went up an average of $2 to $3 in a three-day period in early 2010.,_publishers_must_face_consumers__e-book_suit/

Skechers Settlement

Skechers USA Inc. has agreed to pay $50 million to settle Federal Trade Commission (FTC) charges that it made unfounded claims when it advertised that its "toning shoes" would enable users to get stronger and lose weight. The FTC stated that Skechers was deceptive in the making of its Shape-ups, Resistance Runner, Toners and Tone-ups shoes. Skechers will pay $40 million to the FTC, which will return most of this settlement to consumers who bought the company's toning shoes. Skechers will pay an additional $5 million to 43 states and the District of Columbia, and another $5 million to the class action attorneys. David Vladeck, director of FTC's Bureau of Consumer Protection stated: "Skechers' unfounded claims went beyond stronger and more toned muscles. The company even made claims about weight loss and cardiovascular health." Skechers denied that its advertising was deceptive, saying that peer-reviewed journals had found fitness benefits from toning shoes. David Weinberg, the company's CFO, said in a statement: "We settled to avoid the cost and distraction of protracted legal battles so we could get back to doing what we do best." The FTC settled a similar claim with Reebok International Ltd. in 2011, where Reebok said it would pay $25 million for similar charges.

White et al v. West Publishing Corporation

On May 16, 2012, U.S. District Judge Jed Rakoff ruled that attorneys who did not register their works cannot sue West and LexisNexis for violating their copyrights. The decisions stems from a copyright infringement lawsuit brought in February 2012, accusing West and LexisNexis of unjustly profiting from selling attorneys' copyrighted filings. The class action lawsuit had two putative subclasses: attorneys with registered filings and attorneys with unregistered filings. Judge Rakoff stated that the subclass of lawyers who have not registered their filings with the U.S. Copyright Office do not have standing. He stated: "The statute is unequivocal that completing registration or pre-registration is a prerequisite to filing a claim."

Activision and Electronic Arts

Activision Blizzard Inc. settled a lawsuit with rival video game company Electronic Arts Inc. (EA), where Activision alleged that two of its former executives breached their employment contracts in develop games for EA. The two former executives developed the original "Call of Duty" game and several others in the series. After leaving Activision in 2010, the two former executives formed a new development studio, and signed an exclusive publishing and distribution agreement with EA. In a joint statement the companies stated: "Activision and EA have agreed to put this matter behind them." The details of the settlement were not disclosed.

Viacom and Time Warner

Viacom Inc. has settled a lawsuit with Time Warner Cable Inc. (TWC) over whether cable subscribers may watch shows on mobile devices such as iPads. Pursuant to the settlement, Viacom programming will become available over the TWC mobile app over the next several weeks. The companies said in a joint statement: "All of Viacom's programming will now be available to Time Warner Cable subscribers for in-home viewing via Internet protocol-enabled devices such as iPads." The terms of the settlement were not disclosed. Viacom settled a similar lawsuit over iPad streaming with Cablevision Systems Corp in August 2011. Viacom spokesman Mark Jafar said the settlement was "very good news for consumers.",_Time_Warner_Cable_reach_iPad_views_settlement/

May 25, 2012

Ethics, Advertising and Social Networks

By Lisa Fantino

Who could believe that "socializing" could get attorneys into trouble? Yet, with all of this Linking in, Facebooking, Tweeting and now "pinning," lawyers are on the horns of an ethical dilemma. How do we stay current with modern communication in the face of a stringent code for professional conduct on attorney advertising?

The New York State Code of Professional Conduct, Rule 7.1 (f) states: "Every advertisement other than those appearing in a radio, television or billboard advertisement, in a directory, newspaper, magazine or other periodical (and any web sites related thereto), or made in person pursuant to Rule 7.3(a)(1), shall be labeled "Attorney Advertising" on the first page, or on the home page in the case of a web site. If the communication is in the form of a self-mailing brochure or postcard, the words "Attorney Advertising" shall appear therein. In the case of electronic mail, the subject line shall contain the notation "ATTORNEY ADVERTISING."

Most of us are aware that if the electronic communications are to current clients or other lawyers, such communications are generally exempt from this labeling requirement. (See Comment 7) Yet, what about blogs, tweets, status updates and your pinboard on Pinterest?

Comment 6 to Rule 7.1 makes it pretty clear that "Advertising by lawyers consists of communications made in any form about the lawyer or the law firm's services, the primary purpose of which is retention of the lawyer or law firm for pecuniary gain as a result of the communication." One could argue that busy lawyers would not bother writing blogs or tweeting unless the primary purpose of such efforts was to generate billable hours; yet, as a journalist, I would argue that I simply love to write. I enjoy the mental gymnastics of presenting an argument, premises, analysis on any given topic, whether the issue is intellectual property or the death of a rock star. I do it because I love the art of the word and the wit which comes in snappy headlines/tweets.

Do I make new friends along the way? Sure. However, since my blog barely registers a blip on the cyber radar of SEO geeks and I have yet to hear from anyone who reads my tweets, it is highly doubtful that the primary purpose of my efforts is for pecuniary gain from the communication itself.

Comment 8 exempts coffee mugs, t-shirts, pens and pencils which display an attorney's name and contact information, declaring they are not advertising, but considered to be the marketing tools of branding. Really, who writes this stuff? If the attorney or firm is displaying contact information on t-shirts and mugs, what other purpose is there other than to bring clients in the front door? Did the drafters of these rules give much thought to them before casting them in cyber granite?

Certainly, as officers of the court, we are held to a higher standard and may not promulgate fraud, deceit and the like. However, attorneys do not sell their souls for admission to the bar, and participating in 21st century platforms of social communication should not be a threat but a gateway into a social discourse that elevates the intellectual playing field rather than dampens the meaningful dialogue which might result.

Lisa Fantino is an award-winning journalist and solo practitioner. She has a general practice firm in Mamaroneck, New York, where she focuses on entertainment and intellectual property, as well as general corporate transactional and litigation matters. She can be found at or blogging as

June 2, 2012

Weekly Issues in the News

By Geisa Balla

Gucci v. Guess

Gucci won $4.6 million in its trademark infringement trial against Guess. Gucci had alleged that Guess was trying to "Gucci-ize" its products by selling wallets, bags, belts, shoes and other items with designs similar or identical to Gucci's. The lawsuit alleged that Guess's products confused the consumers and diluted Gucci's brand. After three years of litigation, in April, three-week non-jury trial was held in the Southern District of New York before Judge Shira Scheindlin. Gucci was asking for $120 million in damages from the lawsuit. On May 21, 2012, Judge Scheindlin released a 104-page opinion, holding that Gucci may recover just $4.66 million in its lawsuit. The decision stated that while Guess infringed some trademarks, Gucci was not entitled to damages reflecting lost sales or harm to its brand, and an analysis from its damages expert was deemed "highly speculative." Judge Scheindlin also awarded Gucci a permanent injunction against Guess's use of three of the four challenged designs.

The permanent injunction applies to a design with green-red-green stripes, a stylized "Square G," and a group of four interlocking "G"s known as a "Quattro G." Guess is satisfied with the decision, and its CEO Paul Marciano said that the decision showed that Gucci had "overreached" and "misled the court with a number of facts that were unsupported by the evidence."$4_66_ml,_ban_on_Guess_knock-offs/

Microsoft and Motorola

On May 24, 2012, a German court ruled in a hearing that Motorola Mobility infringed Microsoft's patents by offering the option in its mobile phones to send a longer text in a batch of several messages. Microsoft said in a statement: "We're pleased the court agreed today that Motorola has infringed Microsoft's intellectual property, and we hope Motorola will be willing to join other Android device makers by taking a license to our patents." Motorola expects a written decision and will then explore its options, including a possible appeal. The two companies, as well as other makers of mobile devices, are involved in several disputes across the globe over software features of the latest smartphones.


On May 23, 2012, a California jury decided that Google's Android mobile platform did not infringe on Oracle's patents. In this lawsuit, Oracle alleged that Google's Android phone trampled on its intellectual property rights to the Java programming language, which connects programs and operating systems. The issue in question was whether such computer language can be copyrighted. Google argued that it did not violate Oracle's patents, and that Oracle cannot copyright certain parts of Java, which is publicly available software. The jury decided in Google's favor on the patent issue. Although the jury found earlier that Oracle had proven copyright infringement for parts of Java, it could not unanimously agree on whether Google could fairly use that material. Without a finding on fair use, Oracle cannot recover damages on most of its copyright claims.

U.S. District Judge William Alsup has not yet decided several issues that could determine how a potential mistrial on the copyright issues would unfold.

Net Neutrality Rules

The legal fight over the U.S. government's new Internet traffic rules will likely drag into 2013. In 2010, the Federal Communications Commission (FCC) adopted "net neutrality" rules that forbid broadband providers from blocking access to lawful content, while leaving flexibility for providers to manage their networks. The rules were seen as a compromise, but still upset both public interest groups and industry players, which have filed suits challenging the rules.

Verizon Communications Inc. filed suit in September 2011, asking the court to have the rules thrown out, arguing that the FCC was "arbitrary" and "capricious" and acted beyond its statutory authority. Public interest groups have criticized the rules as being too weak, saying that the FCC was swayed by industry players. These and other cases were consolidated before the U.S. Court of Appeals for the District of Columbia. On May 25, 2012, counsel for the numerous parties proposed a briefing schedule with the U.S. Court of Appeals for the District of Columbia, setting November 21, 2012 as the deadline for their final briefs. If this schedule is accepted, oral arguments will likely be scheduled in 2013. The FCC has expressed confidence in the legal foundation for the rules, and recently unveiled the members of a net-neutrality oversight panel that will monitor the impact of the rules and make recommendations. Netflix, Comcast, AT&T and Walt Disney Co are among the companies represented on the advisory panel, as well as advocacy groups such as the Internet Society and National Urban League.

Gaylord v. United States

The Federal Circuit held that artist Frank Gaylord is entitled to royalty damages against the U.S. Postal Service (USPS). Plaintiff Gaylord created "The Column," a group of 19 stainless steel columns that form the centerpiece of the Korean War Memorial on the National Mall in Washington D.C. In 2002, after securing a license agreement from the photographer, the USPS issued a 37-cent stamp depicting "The Column", commemorating the 50th anniversary of the signing of the armistice ending the War. Roughly 86.8 million stamps were sold, as well as retail goods containing the image. The USPS also licensed the image to retailers but did not seek Gaylord's permission (he typically licenses his work for a 10% royalty fee).

He filed suit in 2006 under 28 U.S.C. 1498(b) for copyright infringement. The Federal Circuit held that Gaylord owned the copyright and that USPS was liable for infringement, but remanded for determination of damages. On remand, the Court of Federal Claims limited Gaylord's damages to $5,000, finding that this was the upper limit in the "zone of reasonableness" around Gaylord's actual damages. The court denied Gaylord's claim for 10% royalties, find that neither 28 U.S.C. § 1498(b) nor the Copyright Act authorized a royalty-based award for copyright infringement. Instead, the court applied the "zone of reasonableness" approached used in Steve Altman Photography v. United States, and set the limit at $5,000 because the USPS argued that it had never paid more than $5,000 to license an image and had a policy against paying royalties. Gaylord appealed.

On May 14, 2012, the Federal Circuit reversed, vacating the lower court's damages decision and remanding for determination of market value of the infringing use and award of prejudgment interest. The Federal Circuit found that the lower court should not have relied only on the USPS's self-serving statements of its internal policies, but should have considered Gaylord's typical royalty rate of 8 to10%, the 8% royalty rate charged by the USPS to use "The Column", and the various ways in which the USPS used the image. The Federal Circuit also held that the lower court erred in denying prejudgment interest, as Section 1487(b) permits recovery of a plaintiff's "reasonable and entire compensation," which includes "delay compensation."

Slander in New York

The New York Appellate Division, Third Department held on June 1, 2012 that it is no longer slander in New York to falsely call someone gay. The decision stems from a lawsuit filed by Mark Yonaty, who alleged that a woman spread a rumor about him in hopes that Yonaty's girlfriend would break up with him. He said the comment hurt and ultimately destroyed the relationship. The decision wipes out decades of rulings that calling someone gay is defamatory. In a unanimous decision, Justice Thomas Mercure stated: "These appellate division decisions are inconsistent with current public policy and should no longer be followed," as qualifying being called gay as defamatory is "based on a false premise that it is shameful and disgraceful to be described as lesbian, gay or bisexual."

June 5, 2012

Dispute Resolution Project at the Straus Institute of Pepperdine University

Straus Institute has launched an innovative new Dispute Resolution Project relating to the Entertainment, Media and Sports Industries. All these industries are highly developed, yet continually evolving with constant frictions among various labor, creative, technology and other constituencies. These frictions lead to regular judicial and other confrontations in relation to collective bargaining, intellectual property, commercial and other issues. While law school curricula have historically focused on the substantive law relating to these areas, with a particular emphasis on litigation, ADR has not been a principal focus of any national law school in respect to them. Straus Institute is particularly well-positioned to develop and implement a series of different programs to address this gap in academic and professional education.

Under the leadership of its Managing Director, William Nix, and Faculty Director, Maureen Weston, this new Straus Project will among other things, work to develop domestic and international off-Campus programs for Internships/Externships and on building employment and other networking opportunities with professionals and organizations in these industries. Further details on this new Project are available on the Straus website at:

For any questions, please contact:

William Nix,Chairman
Creative Projects Group

Los Angeles Office:
14011 Ventura Blvd.
Suite 206 East
Sherman Oaks, CA 91423-3533
818.763.0374 (Tel)
818.788-7406 (Fax)

June 8, 2012

Weekly Issues in the News

By Geisa Balla


Nancy Silberkleit and Jon Goldwater, the co-CEOs of the company that publishes Archie comics, ended their dispute over control of the company through a settlement (which is being challenged by other family members) on Wednesday, June 6th. "Nancy Silberkleit and Jon Goldwater are no longer in an adversarial position, and they are beginning their working relationship anew," said Silberkeit's attorney. "She's thrilled to have settled this extremely upsetting matter." Goldwater is a son of one of the company's founders, while Silberkleit is another founder's daughter-in-law. They became co-CEOs in 2009. Goldwater sought to strip Silberkleit of her role at the company, claiming that she was an erratic troublemaker who sexually harassed employees, made bad business moves and once intimidated people in the office by parading a former football player. Silberkleit claimed that Goldwater was a chauvinist who demeaned her, kept her in the dark about the company's finances, and that he invented false allegations to seize control of the company. She claimed defamation and sought $100 million in damages. Silberkleit controls 50 percent of the company and Goldwater owns 25 percent. A trust set up by Goldwater's late half brother, Richard, owns the rest. Goldwater's three nieces Lisa, Taylor and Summer Goldwater, are the trust's beneficiaries.

Initially the nieces stood on the sidelines, assuming that their uncle was acting in their best interests. However, they decided to involve themselves this winter after suspecting that their uncle was misusing company assets, and trying to keep them unaware of it. The nieces filed papers in the litigation, saying that both CEOs' "hands are dirty." Supreme Court Justice Shirley Kornreich stated that the nieces were not in a legal position to weigh in on the settlement, but they could file a suit of their own. Attorneys for the three nieces said the they "will be pursuing the requisite steps to protect the interest of the trust and its beneficiaries."


The U.S. Attorney for the Southern District of New York filed a civil forfeiture lawsuit in the Southern District of New York on April 4th against Sotheby's, claiming that a 10th Century A.D. sandstone statute was illicitly removed from Cambodia. The U.S. is seeking right, title and interest in the statue. The complaint alleges that Sotheby's plans to sell the statue, despite warnings that looters had stolen the piece from its rightful place in the Prasat Chen Temple in Koh Kewr in northern Cambodia. The statute was torn from its place in the 1960s or 1970s, during civil unrest in Cambodia. It then fell into the hands of a private collector in Belgium, whose heirs reached an agreement to sell it on consignment to Sotheby's in March 2011. Cambodian officials notified Sotheby's that the statue had been looted, and the parties had been negotiating a settlement to the dispute for the last year. "The ... statue is imbued with great meaning for the people of Cambodia and, as we allege, it was looted from the country during a period of upheaval and unrest, and found its way to the United States," Manhattan U.S. Atty. Preet Bharara said in a statement released by his office. "With today's action, we are taking an important step toward reuniting this ancient artifact with its rightful owners." Sotheby's disputed the allegations, stating that the statute "was legally imported into the United States and all relevant facts were openly declared."

Lauryn Hill

Eight-time Grammy winner Lauryn Hill has been charged with failing to file income tax returns for several years with the Internal Revenue Service (IRS). The U.S. Attorney's Office in New Jersey said that Hill earned more than $1.6 million during 2005, 2006 and 2007, the three years that she failed to file returns. Her primary source of income is royalties from the music and film industries. She also owns and operates four corporations: Creations Music Inc., Boogie Tours Inc., L.H. Productions 2001 Inc., and Studio 22, Inc. Hill is scheduled to appear before a federal magistrate on June 29th. She faces a maximum penalty of a year in prison and $100,000 in each of the three charges against her.

Alexander Wang

On June 4th, Alexander Wang Inc. answered the class action complaint filed earlier this year, denying the allegations. The complaint was filed in March 2012 by two former employees of Alexander Wang Inc., and alleged that the company essentially ran a sweatshop in Chinatown in Manhattan, where it violated labor laws by failing to provide proper compensation, denied the workers bathroom breaks, and fired them when they complained about their work conditions. The answer claimed that Alexander Wang Inc. "has complied with all applicable wage and hour and leave laws, and there is no basis whatsoever for plaintiffs' frivolous and entirely unsupportable accusations." It further claimed that plaintiffs were "properly paid all wages owed ... provided with regular and multiple breaks during their work time ... [and] eligible for and provided with paid vacation, paid sick days, paid holidays, paid personal days, medical and dental insurance and other benefits."


The determination of Apple's motion to ban the sale of Samsung Electronics's Galaxy 10.1 tablets is delayed on procedural grounds. Apple filed a lawsuit against Samsung last year in the U.S. District Court, Northern District of California, alleging that Samsung "slavishly" copied the iPhone and iPad. Samsug denied the claims and countersued. Judge Lucy Koh denied Apple's motion to ban the sale of Samsung smartphones and the Galaxy 10.1 tablet. An appeals court told Judge Koh to reconsider her decision, and Apple promptly re-applied for the ban. On June 4th, Judge Koh denied Apple's motion on procedural grounds, stating that the appeals court must formally cede jurisdiction back to her before she could consider it. In a court filing last month Apple stated: "Each day that Samsung continues to sell its infringing Tab 10.1 causes additional harm to Apple through design dilution, lost sales, lost market share, and lost future sales of tag-along products." The parties attended court ordered mediation in May, which failed to produce a settlement.

Jerry Sandusky

Jury selection ended on Wednesday, June 6th, in the Jerry Sandusky child sex abuse trial. The jury consists of seven women and five men. Sandusky has been charged with 52 counts of molesting 10 boys over a 15-year period. He has pleaded not guilty and is facing more than 500 years in prison if convicted on all counts. Prosecutors allege that Sandusky met the boys through his charity Second Mile, and some of the assaults occurred at Penn State facilities. "The trial in this case will start on Monday morning. We anticipate that it will take at most three weeks and be done by the last day of June," Judge John Cleland said on Wednesday. Many of the jurors have close ties to Penn State: one is a professor there, one is an administrative assistant, another is a dance teacher and one is a 2007 graduate of the university. Sandusky appeared upbeat and animated during the jury selection. At one point he joked with reporters, saying: "What did you guys do to deserve me? How did you guys get stuck with this? Ay yi yi." ABC News reported that intimate love letters written by Sandusky to one of his accusers, Victim 4, will be read into testimony in trial. Victim 4 is expected to be the first witness to testify, and he is expected to show gifts Sandusky gave him during the alleged relationship.

Kevin Costner and Stephen Baldwin

Jury selection began this week in a federal lawsuit between Steven Baldwin and his business partner Spyridon C. Contogouris, and Kevin Costner. Baldwin claims that Costner cheated him out of his share of a multi-million dollar deal, under which British Petroleum bought 32 oil-and-water separation devices that were developed by a Costner-owned company. The deal was struck after the Macondo well blew out in April 2010, spewing more than four million barrels of crude into the Gulf of Mexico, in the largest accidental oil spill in history. Baldwin and Contogouris claim they were not told about the deal with BP before they agreed to sell their shares in a company that had been set up to market Costner's devices. The defendants allege that they were duped out of a portion of an $18 million deposit from BP for the devices.,_Baldwin_go_to_trial_over_business_deal/

Social Media

The New York City Bar Association stated in an ethics opinion released Monday, June 4th that lawyers can conduct research on social media websites, so long as they do not communicate with potential or sitting jurors. "Communication, in this context, should be understood broadly, and includes not only sending a specific message, but also any notification to the person being researched that they have been the subject of an attorney's research efforts," according to the opinion. "Even if the attorney does not intend for or know that a communication will occur, the resulting inadvertent communication may still violate the rule." The opinion cautions against the risk that may arise if research is done on a social media service that alerts users when another individual has viewed their profiles. "The central question an attorney must answer before engaging in jury research using a particular site or service is whether her actions will cause the juror to learn of the research," the opinion says. The definition of "communication" was intentionally left open-ended to account for the evolution of social media sites. "It is the duty of the attorney to understand the functionality and privacy settings of any service she wishes to utilize for research, and to be aware of any changes in the platforms' settings or policies to ensure that no communication is received by a juror or venire member."

June 12, 2012

Legal Basics for Artists

By Carol Steinberg

EASL's Fine Art and Pro Bono Steering Committees presented a panel discussion on Legal Basics for Artists in Bushwick on June 1st in connection with Bushwick's Open Studio weekend. The event was a great success, with much appreciation expressed by the artists and attorneys who attended. Judith Prowda, Immediate Past Chair of the Section, conceived the idea for a panel when she took her students from Sotheby's Institute of Art out to Bushwick earlier in the year. Judith moderated the panel, which consisted of "Copyright Basics", presented by Carol Steinberg, one of EASL's Pro Bono Steering Committee members, "Moral Rights", with Richard Altman, and "Artist-Gallery Agreements", with Megan Maxwell, EASL's Co-Chair of the Digital Media Committee. Innes Smolansky, EASL's Second Judicial District Representative organized the wonderful reception both before and after the panel discussion, which was enjoyed by all.

About 80 artists and a few lawyers attended the event, which consisted of a reception, panel discussion and Q&A. The program was held at the Diana H. Jones Senior Center in the heart of Bushwick, where photographer Daryl-Ann Saunders, curated a wonderful exhibit at the center itself.

Carol began her discussion with the following hypothetical and image of an abstract painting:

A producer from the Brooklyn Academy of Brooklyn (BAM) contacted an artist
whose work she saw in a gallery in Bushwick, and asked the artist to re-
create the work as a backdrop for a BAM production. The work would be a work-
for-hire, the artist would receive $5,000 in compensation, she could hire an
assistant, and must include images of a man and woman on the backdrop.

Each panelist spoke for 20 minutes, and Carol covered the basics of copyright and fair use, by focusing on how copyright is created, the exclusive rights of the copyright owner, work for hire, and the importance of registration. She showed images of Patrick Cariou's photographs from Yes Rasta and the appropriated images in Richard Prince' paintings, the subject of the Cariou v. Prince lawsuit, to illustrate the application of the fair use factors. Then she applied the legal basics to the BAM hypothetical and advised as to how the basic deal should be revised.

Richard Altman, who litigated at least two of the landmark Visual Artists Rights Act (VARA) cases, told the stories of important moral rights cases and showed a wonderful clip of the sculptural installation which was the subject of the Carter v. Helmsley-Spear litigation. (Carter v. Helmsley-Spear 71 F.3d 77 (2d Cir.1995), cert.den. 517 U.S. 1208 (1996)). He shared the story of the Soho Wall case, where artist Forrest Myers had been commissioned to erect projections on the wall of a building at Houston and Broadway. (Board of Managers of Soho Int'l Arts Condominium v. City of New York, 2005 U.S. Dist. LEXIS 9139 (S.D.N.Y. May 13, 2005)(decision after bench trial), 2004 U.S. Dist. LEXIS 17807 (S.D.N.Y. Sept. 8, 2004)(summary judgment decision) and 2003 U.S. Dist. LEXIS 13201 (S.D.N.Y., July 29, 2003). Subsequently, when the owner of the landmarked building wanted to remove the sculpture to use the wall for advertising, the City Landmarks Preservation Commission refused to permit it. Three-way litigation then ensued among the City, the owner and Myers, who engaged Richard to defend his rights under VARA. He then described "the nasty legal battle" where ultimately the work was restored to the building, with the owner obtaining a small portion of the lower wall for advertising revenue. Richard pointed out, as the Tilted Arc (Richard Serra) case illustrated, that when art conflicts with real estate in the U.S., art usually loses. He then described the Carter case, in which ultimately the court found the installation to be a work for hire (and thus not protected by VARA) despite the fact that the artists had a prior agreement that they alone held the copyright in the work (a much criticized decision). Richard also added his personal perspective. Several years later when the work had still not been torn down, he served on a panel where one of the lawyers for Helmsley-Spear said the work was not torn down for years despite the legal win. Richard said he was surprised that it had not been torn down, and the lawyer told Richard that the case was fought to prove a point --that artists cannot dictate what goes into their buildings.

Megan Maxwell then talked about contracts in general, typical agreements or lack thereof in the art world, and the artist consignment statute, which benefits artists by protecting the proceeds of sales of art and protects the art from the claws of creditors. Megan pointed out that contracts express the understanding of the parties and that many artists and galleries do not have written agreements. She discussed the basic provisions that should be included in artist gallery agreements and further described a gallery's fiduciary obligations to the artist.

The panel concluded with robust Q & A. The artists had many good questions. Further, Daniel Braun, a new EASL member, asked an interesting question about the legal implications of street art. Many stayed to speak individually with the panelists and to enjoy the refreshments.

June 14, 2012

Pace I.P., Sports & Entertainment Law Forum Seeks Article Submissions

The Pace I.P., Sports & Entertainment Law Forum (PIPSELF), Pace Law School 's first online publication dedicated to the discussion of emerging legal issues in the Intellectual Property, Sports and Entertainment law fields, is seeking articles to be published in its third annual publication in spring of 2013.

To learn more about PIPSELF, and to read current and previous issues, please click on the following link:

PIPSELF is seeking a diverse assortment of articles from professors, students, attorneys and other professionals that address cutting-edge topics in the areas of Intellectual Property, Sports and Entertainment law.

Please submit completed articles to Joseph Randall via e-mail at by September 1, 2012.

Joseph Randall
Acquisitions Editor, PIPSELF
Pace University School of Law
J.D. Candidate, 2013

June 15, 2012

Weekly Issues in the News

By Geisa Balla

Kevin Costner and Stephen Baldwin

Kevin Costner won his jury trial against Stephen Baldwin on Thursday, June 14th. Baldwin and his business partner Spyridon Contougouris filed a lawsuit in U.S. District Court for the East District of Louisiana, alleging that Costner cheated him out of a multimillion-dollar deal to sell oil cleanup devices to BP after the 2010 Gulf of Mexico oil spill. Baldwin alleged that Costner hid the details of a deal with BP before Baldwin and his partner sold their stake in the company. Costner's attorneys argued that Baldwin and Contogouris were not entitled to any payments because they sold their shares in the company before the deal with BP was sealed. The plaintiffs' attorney repeatedly accused Costner of lying about the nature of his communications with BP executives before they sealed the deal. The 8-person jury deliberated for less than two hours and awarded no damages. Costner told reporters after the trial: "My name means more to me than money. . . That's why we wanted to get to the truth of this." Counsel for Baldwin stated "The bigger celebrity won."

The University of Alabama v. New Life Art Inc.

The U.S. Court of Appeals for the Eleventh Circuit ruled on June 11th that a sports artist did not violate the University of Alabama's trademark rights by selling a painting of the school's football games. Artist Daniel Moore started painting famous sports scenes in 1979, and in 2002, his alma matter said that he needed permission to depict the team's uniforms. The school then filed suit in 2005. In 2009 an Alabama district court reached a split conclusion, finding that the artist's paintings and prints were protected by free speech but that his unlicensed calendars, coffee mugs and other items were not. Both parties appealed. The Eleventh Circuit affirmed the lower court ruling regarding Moore's paintings and prints, and added his calendars to the category of protected artistic expression. Judge Lanier Anderson wrote the unanimous decision, stating: "Moore's paintings, prints and calendars very clearly are embodiments of artistic expression, and are entitled to full First Amendment protection."

DISH Network

The Southern District of California found on summary judgment that Sonicview, makers of satellite receivers, violated the Digital Millennium Copyright Act (DMCA) and the Federal Communications Act. DISH Network and two of its affiliates filed suit against Sonicivew, alleging that Sonicview's receivers allowed pirates to obtain DISH Network signals without authorization by circumventing DISH Network's encryption system. The DMCA prohibits the manufacture of any technology which "is primarily designed or produced for the purpose of circumventing a technological measure that effectively controls access to a work protected [by copyright]." The court found that Sonicview violated the DMCA, as its receivers could serve no other purpose but to pirate satellite images. The court also found Sonicview liable under the Federal Communications Act, which prohibits a person from manufacturing or distributing any device or equipment knowing that the device is primarily used in the unauthorized decryption of satellite signals. The court awarded the plaintiffs over $64 million in damages and issued a permanent injunction.

Brantley et al v. NBC Universal Inc.

The Ninth Circuit has affirmed for a second time the dismissal of a putative class action of cable and satellite subscribers alleging violations of Section 1 of the Sherman Act. The plaintiffs in the class action alleged that cable and satellite programmers and distributors had illegally tied the purchase of popular channels to less desirable channels, requiring subscribers to purchase expensive multi-channel packages as opposed to choosing channels a la carte. The plaintiffs alleged that the tying of the "must have" and low demand channels reduced consumers' choices and drove prices higher. However, the plaintiffs did not allege that the tying of these channels foreclosed competition with independent programmers. The Ninth Circuit affirmed the district court's dismissal of the Third Amended Complaint due to the plaintiffs' failure to properly allege injury to competition. The court explained that market conditions might be such that a specific tying arrangement does not have anticompetitive effects, or may be a response to a competitive market rather than an attempt to circumvent competition. Therefore, the court concluded that proper allegations setting forth injury to competition were essential.

Ralph Lauren and Rolex

The USPTO's Trial and Appeal Board issued an opinion last week, finding that Ralph Lauren's requested RLX marks for jewelry and watches would not cause confusion with Rolex's marks. Rolex first opposed the marks in 2006, arguing that RLX was too similar to the marks previously registered by Rolex. The USPTO held that the test is not whether the marks can be distinguishable in a side-by-side comparison, but rather whether they are sufficiently similar, in their entities, to confuse consumers about the source of the products. Rolex argued that consumers might associate Ralph Lauren and Rolex, mistakenly assuming that the brands had collaborated. To support this claim, Rolex pointed out that the two brands often co-sponsor sporting events, where, for example at Wimbeldon, courtside clocks are Rolex and the ball boys are outfitted by Ralph Lauren. Ralph Lauren argued that the inclusion of the Ralph Lauren name alleviated any likelihood of confusion. The USPTO judges agreed that in the context of jewerly and watch marks, the combination of Ralph Lauren's initials with an X indicates an expansion of Lauren's product line, not an encroachment on Rolex's mark. Rolex can now appeal the decision to the U.S. Court of Appeals for the Federal Circuit.

June 22, 2012

Weekly Issues in the News

By Geisa Balla

Louis Vuitton v. Warner Brothers

S.D.N.Y. Judge Andrew Carter dismissed Louis Vuitton's suit against Warner Brothers for the use of Vuitton's mark in the movie "The Hangover Part II." In the movie, Zach Galifianakis' character Alan arrives at the airport with a baggage cart full of luggage bearing the Louis Vuitton toile mark, as well as a matching satchel. When Ed Helms' character tries to move Alan's satchel, Alan snaps, "Careful, that is a Louis Vuitton." (except he mispronounces Louis as Lewis.) Louis Vuitton took offense to the depiction in the movie because the satchel was a knockoff by Diophy, which sells Louis Vuitton fakes throughout the United States.

Vuitton filed the lawsuit against Warner Brothers, claiming that the movie diluted its mark and violated the Lanham Act by misleading customers. Judge Carter dismissed the lawsuit, holding that Warner Brothers was protected by the First Amendment. Carter relied on the 2nd Circuit Court of Appeals decision Rogers v. Grimaldi, which established the standard for weighing trademark claims in the context of artistic expression. Under Rogers v. Grimaldi, artistic works are protected under the First Amendment, unless there is a "particularly compelling likelihood" that consumers will be misled. Carter reasoned that Vuitton's two theories--that movie viewers would believe Alan's bag as genuine, or that they would think Vuitton had approved the appearance of the knockoff supplier's product--did not overcome the Rogers v. Grimaldi standard. "First, it is highly unlikely that an appreciable number of people watching the film would even notice that Alan's bag is a knock-off," he wrote. "Furthermore, Louis Vuitton's position assumes that viewers of the film would take seriously enough Alan's statements about designer handbags (even about those he does not correctly pronounce) that they would attribute his views to the company that produced the film. This assumption is hardly conceivable, and it does not cross the line into the realm of plausibility." Carter also emphasized the humor that Alan is supposed to convey, stating that his reference to his bag "comes across as funny because he mispronounces the French 'Louis' like the English 'Lewis,' and ironic because he cannot correctly pronounce the brand name of one of his expensive possessions, adding to the image of Alan as a socially inept and comically misinformed character."

FCC Ruling

The Supreme Court of the United States ruled on June 21, 2012 that the Federal Communications commission (FCC) cannot enforce its current policies against fleeting expletives and nudity on over-the-air programs, both live and scripted. The case stemmed from 2002 and 2003 awards shows on News Corp.'s Fox Television network, when singer Cher blurted out an expletive and Nicole Richie used two expletives. The FCC had said that the network violated its indecency rules. The case also involved a seven-second nudity shot on a 2003 "NYPD Blue" episode on Walt Disney Co.'s ABC network. Writing a unanimous decision, Justice Kennedy based the decision on the Constitutional Due Process requirement, saying that the broadcasters had to be given fair notice of the policy and the restrictions. "A fundamental principle in our legal system is that laws which regulate persons or entities must give fair notice of conduct that is forbidden or required," he wrote in the 18-page opinion. Under the FCC's policy from 2001 and amended in 2004, broadcasters could be fined for airing a single profanity blurted out on a live show or for brief nudity. The decision holds that the FCC's standards were vague as applied to the broadcasts at issue in the case, but did not decide the larger question of whether the indecency policy violated constitutional free-speech rights.,_nudity_cases/

Kevin Durant

Guitarist Mark Durante, known as "Durantula", filed a trademark infringement suit on June 20th against Oklahoma City Thunder star Kevin Durant and Nike. Durantula has performed under his stage name since the 1980s, and he trademarked his name in 2010. The lawsuit alleges that Durant, Nike and one of Durant's sponsors, the memorabilia company Panini America, are infringing on Mark Durante's trademark DURANTULA by using that nickname on items like basketballs and photographs and in shoe campaigns. The complaint alleges that Durante is a long-time Chicago musician. He released an album under the name Durantula and has maintained the website for more than 10 years. Durante has asserted rights to a "common law mark" on Durantula in connection with music, recordings, apparel, T-shirts and related merchandise, as well as a "registered mark" on music, ringtones, sound recordings and the like. Intellectual Property litigator Joseph Gioconda states that Durante's lawsuit could be problematic, as it might be difficult to show that consumers will confuse a 23-year old basketball player with a middle-aged rocker. Gioconda believes that Durante will most likely rely on the theory of reverse confusion, claiming that people will believe that Durante ripped off Durant.

Dinosaur Skeleton from Mongolia

Manhattan U.S. Attorney Preet Bharara filed a lawsuit on June 18th, seeking to return to Mongolia a 70 million year old skeleton of a Tyrannosaurus Bataar, a smaller cousin of the Tyrannosaurus Rex. The dinosaur skeleton was discovered in 1946 during a joint Soviet-Mongolian expedition to the Gobi Desert. Since 1924, Mongolia has enacted laws declaring dinosaur fossils to be the property of the government, and criminalized their export. The lawsuit seeks the forfeiture of the skeleton from Heritage Auctions of Texas, the auction company that sold it for more than $1 million last month to an undisclosed buyer. In a statement Bharara said: "A piece of the country's natural history was stolen with it, and we look forward to returning it to its rightful place." Last month the Heritage Auctions of Texas agreed to help the Mongolian government investigate the ownership of the skeleton, and a state district judge in Dallas granted the Mongolian government a temporary restraining order to prevent the transfer of ownership until it was determined whether it was illegally obtained from Mongolia.

A copyright infringement lawsuit was filed on June 13, 2012 against Jay-Z in Los Angeles. Patrick White alleges that Jay-Z's portions of his 2010 book "Decoded," which is a collection of lyrics and the story behind their meanings, were lifted from White's writing. "In 2009, my personal computer was compromised, resulting in my personal work to be used in Jay-Z's book 'Decoded' which was released in 2010," White alleged in the handwritten lawsuit. "The book contains various expressions/colors/phrases which correlates to my work," he continued. "After contacting or attempting to contact the co-author, I got no reply." Author Dream Hampton and Random House Publishing are also listed as defendants in the lawsuit.

June 29, 2012

Weekly Issues in the News

By Geisa Balla

Frances Williams Preston

Frances Williams Preston, the former president of BMI, passed away on June 13th in Nashville of congestive heart failure at the age of 83. She was surrounded by her family.

In 1958, Preston was a Nashville radio station receptionist when BMI hired her to open a southern regional office. By the time she retired as president and chief executive of BMI in 2004, she had been long known as one of the most successful and influential executives in the music industry and a key figure in Nashville's growth as a major music center. Preston fought passionately for the rights of songwriters, composers and music publishers. "She truly felt that writers were not properly compensated, and she spent her life fighting for them," said Del Bryant, who succeeded Preston as BMI's president and chief executive. "She was a well-known face on the Hill [in Washington, D.C.] and had a tremendous relationship with some of the leading legislators of her time." Preston nurtured the career of countless songwriters and mentored them throughout the years. "There's still people that I keep in touch with that I signed in the early days, like Willie Nelson, Dolly Parton and Kris Kristofferson," she told the Associated Press in 2002. "That was my favorite part of the business. But you've got to get into the business of the business in order to help them."

Preston is survived by her three sons, William Kirk Preston, David J. Preston and Donald L. Preston; six grandchildren; and a great-granddaughter.

South Park

The U.S. Court of Appeals for the Seventh Circuit upheld a lower court decision that the fair use defense applied to a 2008 South Park Episode that lampooned a 2007 viral video "What What (In The Butt.) (WWITB) Brownmark Films, owners of the original WWITB video, claimed that the fair use did not apply. The lower could had held that South Park's version, featuring the character Butters, made transformative use of the original by somehow doing "the seemingly impossible -- making the 'WWITB' video even more absurd by replacing the African-American male singer with a naive and innocent 9-year-old boy dressed in adorable outfits." The Seventh Circuit explained that Brownmark Films had waived its fair use argument by not addressing the argument in the Rule 12(b)(6) stage. Rather, it had only argued that the matter should go to trial. However, "even if Brownmark were not barred from offering argument that SPDS did not engage in fair use, we agree with the district court that this is an obvious case of fair use. When a defendant raises a fair use defense claiming his or her work is a parody, a court can often decide the merits of the claim without discovery or a trial. When the two works in this case are viewed side-by-side, the South Park episode is clearly a parody of the original WWITB video, providing commentary on the ridiculousness of the original video and the viral nature of certain YouTube videos." The Court further stated: "Despite Brownmark's assertions to the contrary, the only two pieces of evidence needed to decide the question of fair use in this case are the original version of WWITB and the episode at issue."

The Expendables

Judge Jed Rakoff has dismissed a copyright infringement suit filed against Sylvester Stallone that had alleged that he copied the film The Expendables. Marcus Webb filed a lawsuit against Sylvester Stallone in October 2011, claiming that the 2010 film The Expendables was "strikingly similar" to his own copyrighted work. Webb's script was titled The Cordoba Caper, about "a team of elite, highly-trained mercenaries." Webb claimed that Stallone and co-writer David Callaham may have had access to it, as the script was shopped around Hollywood for several years. Stallone denied the allegations. In a motion to dismiss, the defense argued that Webb wrote his script after Callaham had already written three drafts of the screenplay, and that Webb had no information that Stallone or Callahan had ever seen The Cordoba Caper. The defense also argued that the alleged similarities were merely ideas, and that the overall concept and the feel of the two works were vastly different. Judge Rakoff agreed with the defense, issuing a short order on Monday, June 25th, granting the defendants' motion "in all respects," and promising a fuller written opinion soon.

The Black Keys v. Pizza Hut, Home Depot

The Black Keys filed copyright infringement lawsuits against Pizza Hut and the Home Depot on June 21st, claiming that the former misused the song "Gold on the Ceiling" in a recent advertisement and that the latter did not have permission to use elements of the song "Lonely Boy" in an ad promoting power tools. Both songs are from the band's "El Camino" album, released in 2011. The suits claim that both companies were given written notices that the ads misused The Black Keys' music. Neither company received permission to use musical elements from the songs. The advertisements do not include any vocals. The lawsuits seek unspecified damages of more than $75,000 each, and orders preventing the continued use of the songs in the commercials.


On June 22nd, U.S. District Court Judge Gary Feess denied CBS' request for a temporary restraining order against ABC's new reality series "The Glass House". CBS filed the suit in May, claiming that "The Glass House" uses proprietary information from "Big Brother." ABC denied the allegations, arguing that the similarities between the shows--a group of strangers living in a house and competing against each other--are boilerplate elements of most reality TV shows. The judge sided with ABC, holding that, "The Court finds that CBS has failed to demonstrate an entitlement to the preliminary relief sought." The court also stated that "while it cannot say that CBS will not prevail at trial, it has concluded that success on the merits is unlikely. . . The evidence indicates to the Court that "Big Brother's" alleged trade secrets were either already known to the business ... were readily capable of being 'reverse-engineering' based on information disclosed in the public domain ...or were not adequately protected as trade secrets." The judge also noted that "CBS has failed to persuade the Court that it will suffer immediate and irreparable injury if 'Glass House' airs."

"We're pleased the Court agreed with ABC's arguments that 'The Glass House' is a very different show and people working in the reality television industry should not be prevented from bringing their skills to a new employer," stated an ABC release following Judge Fees' decision Friday. "We are thrilled viewers will now get a chance to continue to enjoy and participate in ABC's 'The Glass House.'" In its statement, CBS said: "Win, lose or draw on the TRO, we fully intend to proceed with our claims against Disney/ABC for copyright infringement and misappropriation of trade secrets over 'The Glass House,' which may still warrant more injunction proceedings depending on the content of each episode.",0,1369278.story

July 1, 2012

The Explorers Club "Artists In Exploration" Program Seeking Applications for Awards

By Kim Swidler

The Explorers Club ( is now accepting applications from both members and non-members for its new "Artists in Exploration" program, underwritten by Rolex Watch, USA. This is a rare chance for artists to be funded for particular works while working in the field - whether it be photography, music, painting, sculpture, or other art form. A total of $25,000 will be distributed among the 2012 winners.

Headquartered in Manhattan and founded in 1904, the Explorer Club's members have been responsible for an illustrious series of famous firsts: to the North Pole, to the South Pole, to the summit of Mount Everest, to the deepest point in the ocean, and to the surface of the moon.

The deadline for submissions is 5:00PM EDT on July 20th, 2012.

Those interested may contact Executive Director Matt Williams for an application at or by calling 212-628-8383.

July 6, 2012

Weekly Issues in the News

By Geisa Balla


MGM, the film studio behind Martin Scorcese's 1980 film "Raging Bull," filed a lawsuit against former boxer Jake LaMotta and the producers of "Raging Bull II" on July 3, 2012 in the California Superior Court. MGM alleges that LaMotta violated a 1976 agreement giving MGM the right of first refusal on his 1986 memoir "Raging Bull II," upon which the new film is based, or any other "owner-written sequel." The complaint also alleges that Raging Bull II Productions is publicly associating the sequel with the original, which was directed by Martin Scorcese and starred Robert DeNiro, neither of whom has any involvement with the new film. MGM is seeking to halt production of the new film, as well as compensatory and other damages. The complaint alleges that if the new film is allowed to go forward, it will "irreparably tarnish the value of the original."

Shakespeare Theater Company

Shakespeare Theater Company filed a lawsuit on June 12, 2012 against one of its landlords, the Lansburgh Theater in Washington DC, in attempt to fight its threatened eviction from its home of 20 years. The Lansburgh Theater, a nonprofit that serves as the landlord for one of the sites for the Shakespeare Theater Company, told Shakespeare Theater last year that its annual rent would increase from $70,000 to $480,000. When Shakespeare Theater refused to pay the increase, Lansburgh demanded that it vacate the site and that its managing director resign from the Lansburgh board. The Shakespeare Theater Company has now filed suit against the Lansburgh Theater to stop the eviction, claiming that its actions are contrary to its mandate to support the company.

E.U. Rejects ACTA

The European Union rejected an international treaty targeting digital piracy on July 4, 2012. The Anti-Counterfeiting Trade Agreement, or ACTA, had been signed by the United States, Japan, Canada, Australia, South Korea, and a number of individual EU members. Opponents of the treaty rallied tens of thousands of protesters into the streets of European capitals last winter, saying that approval of the treaty would lead to the proliferation of anti-piracy measures. Opponents also argued that even if other countries would ratify the treaty, it would have little authority since the EU represented 27 of the 39 countries that participated in the talks. The vote was seen as a victory by internet freedom groups. After the vote, some members of the Parliament stood up in the chamber, holding up signs reading: "Hello democracy, goodbye ACTA." The media industry however, bemoaned the vote, saying that protesters had twisted the debate to make the treaty seem more menacing than it actually is. The Parliament "has given in to pressure from anti-copyright groups despite calls from thousands of companies and workers in manufacturing and creative sectors who have called for ACTA to be signed in order that their rights as creators be protected," said Angela Mills Wade, executive director of the European Publishers Council.

Michael Kors

Michael Kors won a lawsuit against a number of websites selling counterfeit goods under the brand's name. Kors first filed suit in the Southern District of New York in November 2011 against 35 infringing websites, which were selling inauthentic bags, jewelry, and other accessories bearing Michael Kors trademarks. Judge Shira Scheindlin ruled in Kors' favor, holding that the counterfeit products caused consumer confusion as they were sold at price points similar to authentic Michael Kors products. Kors was awarded $2.4 million in damages, which will likely be collected from defendants' PayPal accounts.

U.S. Copyright Office Statement of Policy

The U.S. Copyright Office released a Statement of Policy on June 18, 2012, making it clear that "functional physical movements such as sports movements, exercises, and other ordinary motor activities alone" are not works of authorship protected under U.S. copyright law. The statement was released to clarify the practice of the Office relating to examination of claims of compilations involving uncopyrightable subject matter, and to clarify the Office's policy with respect to registration of choreographic works. The Copyright Office stated that in order for a compilation to be protected by copyright, its content must fall within one or more of the categories of authorship listed in Section 102 of the Copyright Act. The compilation of any other materials that do not fall within one or more of the specified categories of Section 102 is not protected by copyright law. The Copyright Office concluded that a compilation of exercise or yoga poses cannot be protected by copyright since it is not one of the eight categories, and the underlying material constitutes a "functional system or process."

Additionally, the Statement states that "although a choreographic work, such as a ballet or abstract modern dance" incorporate "simple routines, social dances, or even exercise routines as elements of the overall work, the mere selection and arrangement of physical movements does not in itself support a claim of choreographic authorship." Rather, it is explained that such a work must contain "at least a minimum amount of original choreographic authorship," which for copyright purposes must be a "composition and arrangement of a related series of dance movements and patterns organized into an integrated, coherent, and expressive [compositional] whole."

July 13, 2012

Weekly Issues in the News

By Geisa Balla

Aereo Inc.

Judge Alison Nathan of the Southern District denied a request for preliminary injunction by major U.S. broadcasters to stop Aereo Inc. from rebroadcasting some of its programming over the Internet.

Aereo is an online television venture, available only in New York City for $12 per month. Walt Disney Co's ABC, CBS Corp, Comcast Corp's NBC Universal and Telemundo, News Corp's Fox, Univision Communications Inc. and the Public Broadcasting Service had filed lawsuits accusing Aereo of copyright violations. The broadcasters sought to stop Aereo from streaming programs to phones, tablet computers and other devices, arguing that they would lose their right to retransmission fees from cable and other companies that rebroadcast their programming, and would lose significant advertising revenue. Judge Nathan held that while the broadcasters demonstrated that they faced irreparable financial damage if the venture were allowed to continue, Aereo also showed it would face severe harm if the requested preliminary injunction was granted. Judge Nathan agreed that Aereo would damage the broadcasters' ability to negotiate advertising and retransmission agreements, given that the service could artificially lower Nielsen viewership ratings. However Nathan also said Aereo, in addition to facing the risk of closure, could lose employees, the ability to attract new investors, customer goodwill, and its "substantial investments" in the service. The judge stated: "First and foremost, the evidence establishes that an injunction may quickly mean the end of Aereo as a business," and that "the balance of hardships certainly does not tip decidedly in favor of (the broadcasters)." The broadcasters said they would appeal, calling the decision "a loss for the entire creative community."

Kate Spade

The Vera Company, which controls the work of the late artist Vera Neumann, filed a copyright infringement lawsuit against Kate Spade in the Southern District. The lawsuit alleges that Kate Spade copied Neumann's 1979 work "Poppy Field" in the Kate Spade line of floral-print dresses and cell phone cases released in 2011. The complaint alleges that Spade publicly acknowledged "that among the items and products that have inspired her designs are the silk-screened scarves of [Neumann]." A Spade representative said the disputed design was "in fact created from a 'vintage' design," which was "obviously the plaintiff's."

Copyright Royalty Board

The U.S. Court of Appeals for the District of Columbia Circuit held on July 6th that the Copyright Royalty Board, which sets the rates broadcasters have to pay for copyright licenses, runs afoul of the Constitution. The U.S. Court of Appeals for the District of Columbia Circuit found that the three-judge board, appointed by the Librarian of Congress, violates the Appointments Clause of the Constitution, which requires officers with significant authority to be appointed by the President with Senate confirmation. The basis for the ruling was that "the Judges' exercise of significant ratemaking authority, without any effective means of control by a superior (such as unrestricted removability), qualifies them as "principal" officers who must be appointed by the President with Senate confirmation." The court found that it could fix the constitutional problem by giving the Librarian of Congress greater ability to fire the judges on board. "To remedy the violation, we follow the Supreme Court's approach in Free Enterprise Fund v. Public Company Accounting Oversight Bd., 130 S. Ct. 3138 (2010), by invalidating and severing the restrictions on the Librarian of Congress's ability to remove the CRJs. With such removal power in the Librarian's hands, we are confident that the Judges are 'inferior' rather than 'principal' officers, and that no constitutional problem remains."$file/11-1083-1382307.pdf

Lance Armstrong v. USADA

Lance Armstrong filed a 111-page complaint against the U.S. Anti-Doping Agency (USADA) on July 9th, after the USADA formally charged him with doping at the end of June. If found guilty, Armstrong could be stripped of all seven of his Tour de France titles, forced to turn over all the money he won from 1999-2005, and banned from Olympic sports for life. Armstrong's lawsuit alleged that USADA rules violated athletes' constitutional right to a fair trial, and that the agency does not have jurisdiction in his case. It also accused USADA's chief executive, Travis Tygart, of waging a personal vendetta against Armstrong. The lawsuit sought an injunction barring USADA from pursuing its case or issuing any sanctions against Armstrong. In the lawsuit, Armstrong called the USADA a "kangaroo court," stating that his Constitutional and common law due process rights were at risk. The complaint alleged that the USADA believed it "is above the United States Constitution, above the law, above court review, free from supervision from any person or organization, and even above its own rules."
Hours after the lawsuit was filed, it was dismissed by Judge Sam Sparks, who gave Armstrong leave to refile. Judge Sparks called the complaint a "lengthy and bitter polemic" against the defendants, and stated that the court "is not inclined to indulge Armstrong's desire for publicity, self-aggrandizement, or vilification of Defendants, by sifting through eighty most unnecessary pages in search of the few kernels of factual material relevant to his claims." In a footnote, Judge Sparks noted: "Contrary to Armstrong's apparent belief, pleadings filed in the United States District Courts are not press releases, internet blogs, or pieces of investigative journalism. All parties, and their lawyers, are expected to comply with the rules of this court, and face potential sanctions if they do not."

Armstrong's attorneys refiled a much shorter, 25-page complaint on July 10th.

July 20, 2012

Weekly Issues in the News

By Geisa Balla

Three's Company

DLT Entertainment, the copyright owners of the 1970s sitcom "Three's Company", sent a cease-and-desist letter to producers of the off-Broadway play "3C," claiming that the play infringed on the "Three's Company" copyright by borrowing too many elements of the TV series, including the main premise of the show of a man pretending to be gay to live with two female roommates. The issue is whether "3C" is enough of a parody of "Three's Company" to be protected under the fair use doctrine. "3C"'s producer and playwright are concerned with the financial ability to fight the legal threats. David Adjmi, the playwright, initially agreed to the demands that he turn down any future productions of "3C" or any publication or circulation of the script, allowing his play to die after its Off Broadway run at Rattlestick Playwrights Theater, which ended on Saturday. "I can't afford a fancy lawyer," Mr. Adjmi said, "and I was getting all sorts of conflicting advice from my agents at CAA and my producers, some of whom doubted that the play would meet the legal standards of parody." However, Mr. Adjmi has not signed any document, and follow playwrights are urging him to fight. Mr. Adjmi said his intent was to write "a deep critique of the ideologies and assumptions behind the television series, leading to a collective nervous breakdown for the characters." DLT Entertainment is very protective of the overall brand of "Three's Company", as the show has earned substantial revenues from syndication on TV Land and home video. Donald Taffner Jr., president of DLT Entertainment explained: "We're up for renewal soon with TV Land, and we're playing around with the idea of doing a theatrical version of 'Three's Company' ourselves, so we don't want anything out there that might cause harm. And we think '3C' borrows far too many elements to make a fair-use parody argument."

Macy's v. Martha Stewart

Macy's won a preliminary injunction against Martha Stewart on Friday, July 13, 2012, temporarily blocking plans by Martha Stewart Living to sell certain branded products at J.C. Penney stores. In December 2011, J.C. Penney announced plans to sell Martha Stewart-branded goods starting in 2013. Macy's filed a lawsuit against Martha Stewart Living, claiming that it had exclusive rights to sell certain Martha Stewart products, including soft furnishings, dinnerware and cookware. Macy's claims that Martha Stewart Living granted Macy's the exclusive rights to manufacture and sell Martha Stewart branded product in a 2006 contract that runs until 2018. New York State Supreme Court Justice Jeffrey Oing issued the preliminary injunction requested by Macy's, saying that Macy's had shown likelihood of ultimate success in its lawsuit. Justice Oing said that putting Martha Stewart products at J.C. Penney stores would deprive Macy's of its competitive edge. Martha Stewart Living plans to comply with the restrictions, but still will proceed with its deal with J.C. Penney early next year. "We continue to believe that we have not breached our agreement" with Macy's, the company said.

David Cassidy

A judge has ruled that the dispute between David Cassidy and Sony Pictures Television over Partridge Family will be heard by an arbitrator, and not a jury. Last year, the actor sued Sony and claimed that despite reports that ABC's top-rated series in the 1970s had generated nearly $500 million from games, magazines, posters and more, he was only paid a "paltry sum." Cassidy further alleged that his contract entitled him to 15 percent of net proceeds from merchandise and 7.5 percent of the net proceeds derived from the exhibition and exploitation of the underlying property rights of the show. Lost Angeles Superior Court Judge Joseph Kalin has decided to honor the arbitration provision of the actor's 1971 contract. Judge Kalin held that "There is no support for (Cassidy's) argument that he was fraudulently induced to enter into the arbitration agreement." Cassidy is appealing, as he would rather present his case before a jury.


VMG Salsoul recently filed a copyright infringement against Madonna, alleging that Madonna borrowed horn and string samples from a 1977 dance song by Salsoul Orchestra titled "Chicago Bus Stop (Ooh, I Love It)". The allegedly infringing song is "Vogue," released in 1990. VMG argues that it became aware of the samples only after they were detected by new technology that allows listeners to isolate and observe individual sounds within a song. The company seeks unspecified damages.


Canada's Supreme Court ruled on July 12th that no performance royalties need to be paid to songwriters and song publishers for downloaded music. The court also said that previews of songs in online stores such as Apple Inc's iTunes are not an infringement of copyright laws and do not merit the payment of royalties, but that the royalties from streaming music are still valid. The court's distinction between downloads and streaming music is similar to the difference between buying a CD, where the recording company collects the royalties, and listening to a song on the radio, where the station pays the royalties to the artist via the music publisher or a copyright collective. The ruling was seen as a blow for music composers and the organizations that disburse royalties on their behalf.

July 27, 2012

Weekly Issues In The News

By Geisa Balla


Coach Inc. was awarded a permanent injunction and $44 million verdict against Linda and Courtney Allen of Syosset, New York, who operated websites and, advertising and selling counterfeit Coach handbags. Southern District of New York Judge Colleen McMahon ruled that the Allens had "willfully" violated Coach's trademarks on 11 types of goods for a total of 22 separate infringements. The websites maintained by the Allens state that the items are "not original" and are "in no way affiliated with the authentic manufacturers." Linda Allen was similarly sued by Chanel in 2007 for trademark counterfeiting and infringement. "Linda Allen plainly requires substantial deterrence because she has not been deterred by prior judgments," Judge McMahon told the court. "She persists in her contumacious behavior. This award may be crippling, but it is plainly needed to prevent Allen from going back once again into the business of counterfeiting." Nancy Axilrod, Coach's deputy general counsel, stated that Coach was exceedingly pleased with the ruling, and added: "The decision in Coach v. Linda Allen, et al. should serve as a warning to defendants in all pending Coach lawsuits that courts consider counterfeiting a serious issue and are prepared to order defendants to pay large sums of money. This decision should also serve as notice to all who traffic in counterfeit goods that Coach will vigorously pursue you, and will win."

Modern Family

The cast of the award-winning TV show "Modern Family" filed suit against the show's production company, 20th Century Fox Television, on July 24, 2012 for violating their work contracts under California law. The lawsuit is largely seen as a negotiation tactic for higher pay. The show's stars Sofia Vergara, Eric Stonestreet, Jesse Tyler Ferguson, Julie Bowen and Ty Burrell filed the lawsuit in Los Angeles in a legal move to void their current contracts. Ed O'Neill later joined the lawsuit. The lawsuit alleged: "Modern Family has been a breakout critical and financial success. That success, however, has been built upon a collection of illegal contracts." The complaint said the current contracts for Ferguson, Bowen, Burrell and Stonestreet violated a California law that limits personal service contracts to no longer than seven years. After starting in January 2009, most of actors' deals were set to run until June 2016, making them illegal, the lawsuit said. One source says that the actors were offered $150,000 per episode with a $50,000 bonus per episode for the upcoming fourth season and $200,000 for the fifth season. A spokesperson for 20th Century Fox had no comment on the lawsuit, but confirmed that a table read was canceled on Tuesday, when the cast was to return to production in preparation for the fourth season of the show.

Lady Gaga

MGA Entertainment Inc, the maker of Bratz Dolls, filed a lawsuit against Lady Gaga and her management company in New York Supreme Court alleging breach of contract for failing to approve a line of dolls in the singer's image. The complaint alleges that it agreed to produce dolls in Lady Gaga's image in December 2011 at the "request and insistence" of Bravado International Group, a merchandising company that works with Lady Gaga. MGA claims that it paid Bravado $1 million in advance for the doll production. In April Bravado allegedly informed MGA that Lady Gaga wanted to delay production of the dolls until her new album is released in 2013. MGA says the defendants have continued to withhold final approval in order to delay marketing the dolls until next year and instead sell a licensed Lady Gaga perfume called "Fame." "Defendants' conduct is egregious, in bad faith and is pretextual, especially in light of the fact that MGA has, among other things, paid Bravado a $1,000,000 advance, agreed to an excessively generous royalty rate, invested millions in the preproduction of the Lady Gaga dolls and put its reputation and goodwill on the line in order to secure distributors and retail shelf space," MGA Entertainment said in the complaint.


Gucci Group filed a lawsuit against the great-grandson of Gucci's original founder, Guccio Gucci and his brother Alessandro, for using the name "Guccio Gucci" when marketing their own handbags and accessories firm ToBeG Srl. Gucci's original founder was also named Guccio Gucci. The court has found Guccio in the wrong, ruling that the name usage "constitutes an act of unfair competition to Gucci's detriment because the advertising materials of the defendant caused confusion with Gucci's products and business activities and took unfair advantage of the qualities and reputation of Gucci's products." In the past, Gucci Group has successfully sued family members Jennifer Gucci, Gemma Gucci, Cosimo Gucci, and Elisabetta Gucci for all trying to start companies using their own names.

August 3, 2012

Weekly Issues In The News

By Geisa Balla


NDTV, a leading Indian television network, filed a lawsuit against the Nielsen Company in New York Supreme Court, accusing its Indian joint venture of providing "false, fabricated and manipulated data" on TV ratings for almost a decade and taking kickbacks from other networks. The lawsuit was filed against Nielsen, its Indian joint venture TAM Media Research, and Kantar Media Research. NDTV, best known for broadcasting a 24-hour English language news station, alleges that employees of TAM manipulated ratings in exchange from kickbacks from other TV networks. NDTV further alleges that TAM, Nielsen and Kantar executives did not address the problems when NDTV presented "evidence of corruption and manipulation" to them in several meetings. NDTV claims that TAM ratings were easily manipulated because the company collected data only on the TV watching habits of 8,150 homes equipped with electronic monitoring devices. NDTV alleges that the sample size for TV ratings in China, a country of comparable size, is 55,000 homes. NDTV said two field employees of TAM met its executives in April and offered to help the channel lift its ratings if it agreed to pay them $250 to $500 for each home that they brought in to watch NDTV's channels. NDTV is seeking several billion dollars in damages.

The Walt Disney Company

The Ninth Circuit affirmed the dismissal of a copyright infringement complaint against The Walt Disney Company. Plaintiff Jake Mandeville-Anthony brought suit against defendants The Walt Disney Company, Walt Disney Pictures, Disney Enterprises, Inc., Pixar d/b/a Pixar Animation Studios for copyright infringement and breach of implied contract, alleging that he owns the copyright in two works, Cookie & Co. and Cars/Auto-Excess/Cars Chaos, that defendants had access to those works when they created the animated films CARS and CARS 2. Defendants moved to dismiss the complaint, arguing that plaintiff's works were not substantially similar to their films, and their works were independently created. The district court granted the motion, dismissing the copyright infringement claim without leave to amend, reasoning that defendants had shown that their movies were not substantially similar to plaintiff's works. The court also dismissed plaintiff's claim for breach of implied contract as time barred under California's two-year statute of limitations. The Ninth Circuit affirmed the district court's dismissal of the copyright claim, finding "no substantial similarity between protected elements of his copyrighted works and comparable elements of the defendants' works as a matter of law, and any similarity in the general concepts of car racing and anthropomorphic cars is unprotected." The Ninth Circuit also affirmed the dismissal of the breach of implied contract claim as time barred, rejecting arguments that the doctrines of "delayed discovery" and "continuing violations" applied to extend the statute of limitations.

Roy Lichtenstein

A Roy Lichtenstein painting missing since 1970 has surfaced at a New York City warehouse. Lichtenstein created "Electric Cord" in 1961, which depicts a coiled cord in black and white. It was purchased for $750 in the 1960s by art collector Leo Castelli, and disappeared in 1970 after Castelli sent the painting out for cleaning. Barbara Castelli, who inherited the art gallery when her husband Leo died, listed "Electric Cord" with the missing and stolen artwork in 2007. Castelli learned last week that an art dealer had contacted the Roy Lichtenstein Foundation seeking assistance to authenticate "Electric Cord", which was sitting at a storage facility on Manhattan's Upper East Side. Court records show that the painting was shipped from a gallery in Bogota, Colombia. New York Supreme Court Justice Peter Sherwood issued a temporary restraining order this week, barring the painting from being removed from the warehouse. Attorneys for Castelli claim the painting is currently worth $4 million.


Comcast is seeking reversal of an FCC ruling on discriminatory treatment against the Tennis Channel. The Tennis Channel filed a complaint with the FCC in 2010, alleging discriminatory treatment, and seeking distribution on par with other networks. Last month the FCC upheld an administrative law judge's ruling that Comcast discriminated against the Tennis Channel when it placed the network in a more expensive viewing tier than Comcast's affiliated sports networks. Comcast was ordered to pay $375,000 and to add the network to an additional 18 million households, which would cost Comcast millions of dollars in costs. On August 1, 2012, Comcast filed appeals papers, seeking a reversal of the FCC ruling. Comcast called the FCC decision "arbitrary" and "capricious" and argued that it violated constitutional rights. Comcast also argued that its 2005 contract with the Tennis Channel stipulated placement of the channel in a more expensive sports tier sought by fewer subscribers.


Singer-songwriter Devin Star Tailes, better known as Dev, filed a lawsuit on July 30, 2012 in Los Angeles Superior Court, claiming that its contracts with her record label Indie-Pop violate California's "Seven Year Rule." The contracts allegedly give her label and former manager and attorney 75% of her income, and allow them to deduct expenses "off the top" of her share. The singer alleges that the agreement she signed in 2008 at the age of 18 was an "onerous, one-sided agreement" that should be "null and void." Tailes says she that signed the deal after she was told the defendants would serve as her manager and "look after her best interests." She adds that she had little time to review the contract because she was told that she "could lose out on important opportunities if she did not the sign the document right away," and that she was "showered" with "flattery and praise" and that the defendants "manipulated her into believing that she could trust them fully." Tailes claims that the contract violates California's Seven Year Rule, which prohibits personal service contracts for longer than seven years. In addition, Tailes claims that defendants breached their fiduciary duty and participated in constructive fraud by failing to provide Tailes with independent legal counsel.


The Federal Trade Commission proposed tougher rules for online child privacy. The recommended rules are aimed at boosting privacy safeguards and mobile devices and ensuring that third party data brokers get parental permission before they collect children's data. The FTC would make websites, mobile apps and data brokers responsible for data collected about children by third parties, strengthening a proposed update on its Children's Online Privacy Protection Rule that it released last September. Previously it was unclear who had responsibility for third party collection. "The commission did not foresee how easy and commonplace it would become for child-directed sites and services to integrate social networking and other personal information collection features into the content offered to their users, without maintaining ownership, control or access to the personal data."

August 10, 2012

Weekly Issues in the News

By Geisa Balla

Competitive Cheerleading

The Second Circuit Court of Appeals held on August 7, 2012 that competitive cheerleading does not qualify as a sport under Title IX. The case was brought by members of Quinnipiac University's women's volleyball team, who alleged that the University's decision to replace volleyball with competitive cheerleading violated Title IX. The decision to categorize a varsity sport under Title IX is made by the U.S. Department of Education's Office of Civil Rights (OCR). In determining Title IX compliance, the OCR considers factors, such as whether the number of men and women on sports teams is proportional to the respective numbers enrolled at the school. In 2010, U.S. District Judge Stefan Underhill found that Quinnipiac had manipulated its team rosters by undercounting men and overcounting women to make it appear as if the genders were equally represented. Judge Underhill ruled that none of Quinnipiac's competitive cheerleaders counted as varsity athletes because the cheerleading was not recognized as a varsity sport by the OCR. On appeal, the Second Circuit Court held that Quinnipiac discriminated against women. While competitive cheerleading is "physically challenging" and requires competitors to possess "strength, agility and grace," Quinnipiac's program does not yet have the hallmarks of a varsity athletic sport, the court held. "(W)e do not foreclose the possibility that the activity, with better organization and defined rules, might someday warrant recognition as a varsity sport," U.S. Circuit Judge Reena Raggi wrote. "But, like the district court, we conclude that the record evidence shows that 'that time has not yet arrived.'",_federal_appeals_court_rules/

Gibson Guitar

Gibson Guitar Corp. will pay a $300,000 penalty under a criminal enforcement agreement with federal prosecutors, after it admitted to possible illegal purchases of ebony from Madagascar. The U.S. Justice Department began investigating the guitar maker in 2009 when it suspected that Gibson was importing banned or protected wood from Madagascar and India. "As a result of this investigation and criminal enforcement agreement, Gibson has acknowledged that it failed to act on information that the Madagascar ebony it was purchasing may have violated laws intended to limit over-harvesting and conserve valuable wood species from Madagascar, a country which has been severely impacted by deforestation," said U.S. Assistant Attorney General Ignacia Moreno of the Justice Department's Environment and Natural Resources Division. "Gibson has ceased acquisitions of wood species from Madagascar and recognizes its duty under the U.S. Lacey Act to guard against the acquisition of wood of illegal origin by verifying the circumstances of its harvest and export, which is good for American business and American consumers," Moreno said. The Lacey Act, originally passed to decrease trade in bird feathers, was amended in 2008 to require U.S. companies to make detailed disclosures about wood imports. In addition to the $300,000 penalty, Gibson will forfeit $261,844 worth of wood that was seized in the course of the investigation, and will pay $50,000 to the U.S. National Fish and Wildlife Foundation.

World Wrestling Entertainment Inc.

World Wrestling Entertainment Inc. finally settled a decade-old dispute over its former name WWF with the World Wide Fund for Nature. World Wide Fund for Nature works to save endangered species. The Switzerland-based World Wide Fund for Nature sued the WWE's predecessor company, World Wrestling Federation Entertainment, in 2000 in the United Kingdom. In May 2002, The World Wrestling Entertainment formally announced its WWE identity.


MGA has emerged victorious in its recent retrial against Mattel. Mattel sued MGA for copyright infringement in 2001 when MGA released the Bratz dolls. Mattel claimed that it owned the copyright to the doll as it was created by Carter Bryant, a former Mattel employee. At the initial trial in 2008, a jury awarded Mattel $100 million in damages, MGA was ordered to stop making and selling Bratz products, and to transfer to brand to Mattel. The U.S. Court of Appeals for the Ninth Circuit reversed the verdict and ordered a retrial. At the retrial, an eight-person jury unanimously rejected Mattel's copyright claims and absolved MGA of any wrongdoing in relation to stealing of trade secrets from Mattel. Instead, it found that Mattel was responsible for stealing trade secrets from MGA in relation to unreleased product information, and awarded MGA $88.5 million in compensation. Mattel was awarded only $10,000 on the claim that MGA and its chief executive had interfered with Mattel's contractual relations with Carter Bryant. Mattel lawyers are said to be seeking a retrial.

Sports Betting in New Jersey

U.S. college and professional sports leagues filed a lawsuit in the District Court of New Jersey on August 7, 2012, seeking to stop New Jersey from legalizing sports betting. The lawsuit claims that a law signed in January to allow sports betting at the state's racetracks and at Atlantic City casinos violates a broad federal ban on wagering on sports events. The law, signed by Governor Chris Christie, is expected to be fully implemented this fall. Once it is, New Jersey racetracks and casinos will be allowed to apply for licenses and open gambling operations for amateur and professional sports. Betting on college events taking place in New Jersey, or involving a New Jersey college team will still be prohibited. The lawsuit claims that allowing New Jersey to open sports gambling would "irreparably harm amateur and professional sports by fostering suspicion that individual plays and final scores of games may have been influenced by factors other than honest athletic competition." The lawsuit also said the New Jersey law was precluded by the Professional and Amateur Sports Protection Act, passed by Congress in 1992 to impose a broad ban on sports gambling.,_pro_leagues_sue_to_stop_New_Jersey_sports_betting/

The New Yorker

On August 9th, U.S. District Judge Paul Oetken dismissed most of a defamation claim brought by a Canadian art expert over a 2010 New Yorker magazine article. Peter Paul Biro, an art expert, claimed that the article defamed him. He brought defamation and injurious falsehood claims, challenging roughly two dozen passages of an article written by New Yorker staff writer David Grann. The article described Biro as a self-styled "forensic art expert" who claimed to have pioneered a new way to authenticate paintings. The article expressed skepticism about Biro's claims, discussed several lawsuits filed against him, and raised questions about Biro's business motives. Biro said his reputation was destroyed by the article, and is seeking up to $2 million in damages. "The article as a whole does not make express accusations against Biro or suggest concrete conclusions about whether or not he is a fraud," Oetken wrote. "Rather it lays out evidence that may raise questions, and allows the reader to make up his or her own mind." However, the court allowed Biro to go forward with a handful of defamation claims. The New Yorker said in a statement: "We are gratified that Judge Oetken has already dismissed the vast bulk of Mr. Biro's claims, and we are confident that we will prevail."

August 26, 2012

Weekly Issues in the News

By Geisa Balla

Federal Trade Commission

On August 23rd the Federal Trade Commission ("FTC") won a $478 million judgment against the marketers of a series of get-rich-quick real estate infomercials. The FTC filed the lawsuit in June 2009 against the marketers of the three "systems" for making money quick, including "John Beck's Free & Clear Real Estate System," which promised to teach consumers how to buy homes for pennies on the dollar during government sales. The FTC claimed that those behind the system made false and unsubstantiated claims about how much money consumers could make, and nearly all those who bought the products at $39.95 actually lost money. U.S. District Judge Jacqueline Nguyen in Los Angeles also imposed a lifetime ban from infomercial production and telemarketing against three defendants. An attorney for two of the defendants, Douglas Gravink and Gary Hewitt, stated that they would likely appeal the order to the extent it imposes a lifetime ban. Jeffrey Klurfeld, director of the western region of the FTC, said in a statement: "This huge judgment serves notice to anyone thinking of using phony get-rich-quick schemes to defraud customers."$478_mln_judgment_against_infomercial_scammers/

Lance Armstrong

U.S. District Judge Sam Sparks has dismissed Lance Armstrong's lawsuit against the U.S. Anti-Doping Agency ("USADA"). Armstrong's suit attempted to block a probe into whether Armstrong cheated by using performance-enhancing drugs. The Court dismissed the initial complaint in July 2012, calling the lawsuit a "lengthy and bitter polemic." Armstrong filed an amended complaint, which was dismissed on August 20, 2012 without prejudice. USADA chief executive Travis Tygart said in a statement that the agency was pleased with the ruling, and that the agency had "protected the rights of athletes for over a decade." The USADA formally charged Armstrong in June 2012 with doping and taking part in a conspiracy with members of his championship teams. In a letter to Armstrong which was published in the Washington Post, the agency said that it had blood samples from 2009 and 2010 that are "fully consistent" with doping.
Following the dismissal of his lawsuit, Armstrong announced on August 23rd that he would no longer fight the doping charges. USADA responded immediately, stating that it would strip Armstrong of his seven Tour de France titles. USADA did in fact erase his titles on Friday, August 24th, and issued a lifetime ban for Armstrong.


CBS has dropped its lawsuit against ABC over the alleged copying of its long-running reality TV series "Big Brother." CBS initially filed its suit against ABC in May in the U.S. District Court, Central District of California. The lawsuit claimed that ABC copied several elements of "Big Brother" when it created "Glass House." "Glass House" also employed 19 former producers and staff of "Big Brother." In the week ending Aug. 12th, "The Glass House" ranked 87th among broadcast TV shows by number of viewers, with an audience of 1.59 million, according to Nielsen. In a statement CBS said "Viewers have spoken and delivered the ultimate form of justice against 'The Glass House."" CBS voluntarily dismissed the case, and it will arbitrate its contract and trade secrets claims against former "Big Brother" producers accused of violating confidentiality agreements.


Imane Boudlal, a former Disneyland restaurant employee, filed a lawsuit against Walt Disney Co. on August 13th, alleging that she was fired because she wanted to wear a Muslim head scarf at work. The former employee worked as a hostess at the Storytellers Café inside Disney's Grand California Hotel & Spa at Disneyland in Anaheim, California. She alleges that two years into the job she asked permission to wear a hijab while at work. She said she offered to wear a scarf that matched the colors of her uniform or featured a Disney logo. She alleges that her managers denied her request, saying it would violate the company's policy for how employees "look" while on the job. Boudlal said she was given the choice of working in a back area, away from customers, or wearing a fedora-style hat on top of her head scarf. When Boudlal refused, she was fired, the lawsuit states. Boudlal also claims she was subject to anti-Arab and anti-Muslim slurs, including being called "terrorist" and "camel" by co-workers and supervisors. "Disneyland calls itself the happiest place on earth, but I faced harassment as soon as I started working there," Boudlal said in a statement released by the American Civil Liberties Union of Southern California. "It only got worse when I decided to wear a hijab." Disney claims it offered Boudlal several options for a costume that would accommodate her religious beliefs, as well as four different jobs where she could wear her own hijab. "Walt Disney Parks and Resorts has a history of accommodating religious requests from cast members of all faiths," Disneyland Resort spokeswoman Suzi Brown said in a statement. "Unfortunately, (Boudlal) has rejected all of our efforts and has since refused to come to work," Brown said. Boudlal is seeking punitive damages and an order that Disney may not prohibit employees from wearing hijabs.,_says_company_forbids_Muslim_head_scarf/


The National Football League ("NFL") filed a lawsuit in Los Angeles Superior Court on August 15th against nearly three dozen insurance companies, seeking to force them to defend it against mounting brain injury claims by former players and their families. The suit names virtually every insurer in the country, as all the firms provided coverage for the NFL at some point between 1960 and the date of the lawsuit. The NFL claimed that it was a defendant in 143 bodily or personal injury lawsuits, and its insurers were obligated to defend the NFL under its general liability policies. "As a direct and proximate result of said insurers' breach of their contractual duty to defend the NFL and NFL Properties in and against the injury lawsuits, Plaintiffs have suffered damages in attorneys' fees and other costs incurred to defend against those suits," the NFL alleges in its complaint, adding that it was entitled to at least $5 million in damages.

The following week, on August 22nd, several subsidiaries of Travelers Companies Inc. filed suit against the NFL in New York Supreme Court, seeking to avoid paying to defend the NFL against the brain injury claims by former players and their families. Travelers claims that it is not required to pay any of the defense costs of the NFL. According to the Travelers lawsuit, the company provided liability coverage for NFL Properties, the NFL's merchandising arm, but not the NFL, and should not be required to pay for a joint defense. The insurer points out that a "master complaint" filed jointly by some 2,000 former players in June alleges 14 counts against the NFL, but only two against NFL Properties. "Last week, the NFL filed a comprehensive lawsuit in California against 32 insurers to ensure an orderly and comprehensive determination of its insurance rights and its carriers' obligations," NFL spokesman Greg Aiello said. "This new filing by Travelers does not alter our objectives."

Christian Laboutin

Customs agents in Los Angeles seized 20,457 pairs of fake Christian Laboutin shoes shipped from China. The counterfeit "red sole" shoes could have brought $18 million if they had reached consumers. The Director of Field Operations for U.S. Customs and Border Protection in Los Angeles stated that "CBP maintains an aggressive and proactive posture on intercepting shipments containing counterfeit and pirated items." Five shipments were seized at the Los Angeles/Long Beach seaport on July 27th and August 14th, the Customs and Border Police release said. "Often available on illegitimate websites and underground outlets, counterfeit high fashion commodities multiply the illegal profits of smugglers and traffickers...The public is misguided into believing they are buying an original product at a significant discount."

Lululemon v. Calvin Klein

Lululemon Athletica Inc., the Canadian producer of athletic apparel, filed a design patent infringement lawsuit against Calvin Klein and manufacturer G-III Apparel Group Ltd. on August 13th in the United States District Court, District of Delaware. Lululemon alleges that some of Calvin Klein's "Performance" pants infringe on Lululemon's "Astro Pant" patent. Lululemon has three design patents that cover the Astro style: one of the actual waistband, the other two for two specific styles of the pant. To succeed Lululemon would have to show that Calvin Klein's pants look like its patented pants. Calvin Klein could strike back with a "prior art" argument, claiming that other made similar pants before Lululemon. Calvin Klein has already removed both styles of pants named in the suit from its website.

Geisa Balla is an attorney practicing in New York, NY. She can be reached at

August 31, 2012

Weekly Issues in the News

By Geisa Balla

Spider-Man: Turn Off the Dark

A settlement has been reached between Julie Taymor, the former director of the Broadway musical "Spider-Man: Turn Off the Dark," and its producers. Ms. Taymor was fired from the Spider-Man production in March 2011 amid disputes over changes to the show's script and staging. In November Ms. Taymor filed a breach of contract suit against the musical's producers, alleging that they were continuing to profit from her creative contributions to the show without compensating her. The producers filed a countersuit in January saying that she violated the terms of her contract and "could not and would not do the jobs" she was hired to do, and thus was not entitled to further royalties. On Thursday, August 30, 2012, Judge Katherine B. Forrest of the Southern District of New York issued a notice that the parties had reached an agreement. The terms of the settlement were not disclosed.

Dish Network Corp

Fox Broadcasting Company has moved for a preliminary injunction against Dish Network Corp. over Dish's new digital feature that enables consumers to skip commercials. Lawsuits and countersuits were filed in May in the Central District of California between Dish and TV networks CBS Corp, News Corp's Fox, Comcast Corp's NBC Universal and Disney's ABC. The networks are suing over Dish's new DVR feature "AutoHop," which allows customers to press one button to automatically skip commercials. While this feature would please viewers, it would undermine advertisers, the networks' main source of revenue. Fox moved for preliminary injunction on August 22nd against Dish, claiming that it was likely to suffer irreparable harm while the companies litigate further. In addition, Fox claims that Dish's "PrimeTime Anytime" feature, a service that records all of the prime-time TV programs on ABC, CBS, NBC, and Fox with one click and then keeps them saved for up to eight days, violates Dish's contract related to accessing video programming on demand. A Dish Network spokesman said in an email on Sunday: "DISH believes consumers have the right to control their television-viewing experience. We're disappointed at Fox's continued fight against that right."

Victoria's Secret

Zephyrs, a New Jersey based hosiery supplier, filed a lawsuit against Victoria's Secret Stores Inc. and its parent company Limited Brands Inc., for breach of a 2001 agreement and deliberately selling cheaper "knockoffs" to customers. The complaint alleges that Victoria's Secret is misleading customers by selling less expensive legwear while deliberately using images of Zephyrs-designed legwear on packaging and in-store displays. Zephyrs is the former hosiery supplier for Victoria's Secret. Joseph Gioconda, counsel for Zephyrs, stated "Victoria's Secret changed the product in the packaging but didn't change anything else except Made in Canada on the back of the package. It used to say Made in Italy." Gioconda said Victoria's Secret has sold "at least $120 million worth of Zephyrs-designed product throughout all 50 states, through the Victoria's Secret chain of retail stores, the Victoria's Secret print catalogue and the popular Victoria's Secret Web site" since 2001. The suit seeks $15 million in damages, as well as corrective advertising and a recall of the allegedly knockoff products.

Macy's v. J.C. Penney

Macy's filed a lawsuit against J.C. Penney on August 16th, claiming that J.C. Penney is interfering with its contract with Martha Stewart. Macy's had filed a prior lawsuit against Martha Stewart Living, claiming that it had exclusive rights to sell certain Martha Stewart products, including soft furnishings, dinnerware and cookware, in attempt to block the sale of Martha Stewart products at J.C. Penney. In July 2012, Macy's won a preliminary injunction against Martha Stewart, temporarily blocking plans by Martha Stewart Living to sell certain branded products at J.C. Penney stores. Macy's new lawsuit against J.C. Penney seeks to stop J.C. Penney from taking any actions that would violate Macy's agreement with Martha Stewart, and to stop J. C. Penney from using product designs that Macy's argued were illegally obtained from Martha Stewart. In the lawsuit, Macy's contends that the agreement with Martha Stewart includes language that says that monetary damages will not be able to remedy any breach of the contract. "The fact that J. C. Penney is a less upscale retailer compared to Macy's compounds the injury," the lawsuit said. Martha Stewart has countered that the items to be sold at J. C. Penney do not fall under the exclusive categories granted to Macy's.

Macy's also moved for preliminary injunction against J.C. Penney, seeking to block J.C. Penney from proceeding with plans to sell a number of Martha Stewart Home good products in its stores. On August 30th, the court denied the injunction. The court was unconvinced that Macy's had shown a likelihood of success on its claim against J.C. Penney. Recognizing that in July the court issued an injunction against Martha Stewart, the court stated "It's one thing to enjoin [Martha Stewart] because that company is the centerpiece of these actions," he said. "It's another thing to enjoin a retail company from doing business. We live in a free-market society."

Marilyn Monroe

The Ninth Circuit Court of Appeals in California upheld the right of a Marilyn Monroe photo library to license images of the film star taken by a celebrity photographer who was one of her business partners. Milton H. Greene Archives Inc. has been in a long-running court battle with Anna Strasberg, widow of Monroe's acting coach, Lee Strasberg, and her licensing agent CMG Worldwide, which have controlled use of Monroe's image for years. Green was a fashion photographer who became friends with Monroe, and the two formed a production company. The legal battle over Greene's images hinged on where Monroe was living at the time of her death on August 5, 1962. In a decision on August 30th, a lower court decision was upheld that allowed Greene Archives to license its images of Monroe. The court ruled that Monroe resided in New York and therefore she did not have the posthumous right of publicity based on the state's law. "Because no such right exists under New York law, Monroe LLC did not inherit it ... and cannot enforce it against Milton Greene or others similarly situated," Judge Kim McClane Wardlaw wrote for the court.

Kim Kardashian v. Old Navy

Old Navy and Kim Kardashian have settled a lawsuit filed by Kardashian in 2011, which had alleged that an Old Navy television commercial violated her publicity right by using look-alike model Melissa Molinaro. "The lawsuit was resolved to mutual satisfaction of both parties, but beyond that it's the only statement we have," said Kardashian's attorney Gary Hecker. The settlement details were not released.

Geisa Balla is an attorney practicing in New York, NY. She can be reached at

September 7, 2012

Weekly Issues in the News

By Geisa Balla

E-Book Settlement

On September 6th, Judge Denise L. Cote of the Southern District of New York approved a settlement between the Justice Department (DOJ)and three major publishers in a civil antitrust case. The case stemmed from a policy that the publishers adopted in 2010 that effectively coordinated the price of many newly released e-books to $12.99 to $14.99. After striking a deal with Apple, the publishers renegotiated contracts with Amazon and other retailers, allowing the publishers, and not the retailers, to set prices on e-books. Publishers the Hachette Book Group, Simon & Schuster and HarperCollins denied wrongdoing, but agreed to settle with the DOJ in April. The Penguin Group USA, Macmillan and Apple declined to settle. They face trial next summer.

In her opinion, Judge Cote said that DOJ had claimed a "straightforward, horizontal price-fixing conspiracy." She rejected arguments against the settlement, saying they were "insufficient" to deny its approval and dismissed requests to hold an evidentiary hearing as an unnecessary delay. The settlement calls for the three settling publishers to end their contracts with Apple within one week. The publishers must also terminate contracts with e-book retailers that contain restrictions on the retailer's ability to set the price of an e-book. For the next two years, the settling publishers may not agree to contracts with e-book retailers that restrict the retailer's "discretion over e-book pricing." For five years, the publishers are not allowed to make contracts with retailers that include a most-favored nation clause. According to the opinion, "The time limits on these provisions suggest that they will not unduly dictate the ultimate contours of competition within the e-books industry as it develops over time."

Christian Louboutin

On September 5th, the Second U.S. Circuit Court of Appeals reversed a lower court's decision that a single color could not be trademarked in the fashion industry. French footwear designer Christian Louboutin sued rival Yves Saint Laurent (YSL) in April 2011 over Louboutin's signature use of lacquered red on shoe soles. In August 2011 Judge Victor Marrero of the Southern District of New York denied Louboutin's request for a preliminary injunction, seeking to prevent YSL from selling pumps with red soles. However, the Second Circuit's ruling held that Louboutin's long-standing use of the red sole was "a distinctive symbol that qualifies for trademark protection." The Court limited Louboutin's trademark to shoes where the sole stands out, in contrast to the rest of the pump. The finding would allow YSL to produce a monochrome red shoe with a red sole. David Bernstein, an attorney for YSL, called the opinion a victory for the label. "The Court has conclusively ruled that YSL's monochromatic red shoes do not infringe any trademark rights of Louboutin, which guarantees that YSL can continue to make monochromatic shoes in a wide variety of colors, including red." Louboutin also called the ruling a win, stating that thanks to this ruling, it "will be able to protect a life's work as the same is embodied in the red sole found on his women's luxury shoes." The decision was based on Qualitex Co. v. Jacobson Products CoQualitex left open the possibility of defending a single color trademark on the grounds that its use is uniquely associated with a brand.

Michael Jackson

A Canadian memorabilia dealer who worked with Michael Jackson's mother in a tribute book reached a $2.5 million copyright settlement on Tuesday with Jackson's estate. The executors of Jackson's estate filed a lawsuit against Howard Mann in January 2011. Mann used, and similar domain names to sell Jackson's music and memorabilia. Mann worked with Katherine Jackson on several projects, including a 2010 Never Can Say Goodbye coffee table book featuring recollections of her son, and a DVD and calendar. Mann claimed that he obtained the rights at a bankruptcy sale involving members of Jackson's family several years ago. However, the estate holds the copyright to Jackson's image and music for the benefit of Jackson's mother and his three children.

Mann was found liable in August 2012 for infringing on Jackson's intellectual property, and trial was due to start soon to determine damages. Howard Weitzman and Zia Modabber, the attorney's for Jackson's estate, said in a statement that the "settlement seems appropriate for all concerned".

Ben & Jerry's

Ice cream maker Ben & Jerry's has filed a trademark infringement lawsuit in the Southern District of New York against the maker of "Ben & Cherry's" X-rated DVD, claiming that the "hardcore pornographic" films have smeared its reputation. The suit arises from the distribution and sale of a series of DVDs containing ""exploitative, hardcore pornographic films" featuring titles and themes based on "well-known and iconic" Ben & Jerry's ice cream flavors as well as packaging that contains key company features such as a grazing cow, green grass and large white puffy clouds. The lawsuit by the Vermont-based company said the films would likely cause "confusion, mistake or deception" regarding the company's trademarks. It identified some of the X-rated names similar to its own as "Boston Cream Thigh," ''New York Fat & Chunky" and "Peanut Butter D-Cup." Ben & Jerry's has ice cream flavors titled: "Boston Cream Pie," ''New York Super Fudge Chunk" and "Peanut Butter Cup."

James Franco

Actor James Franco is being sued by his former New York University professor for defamation. Franco received a D in 2010 when he was enrolled in NYU's Tisch film school. When asked about the grade, Franco said he could not explain it, that he did all the work and did well in his other film classes. He said that his professor Jose Angel Santana "probably felt uncomfortable with a working well known actor in his class." Now Professor Santana is suing Franco for defamation. The lawsuit was filed on September 4, 2012 in New York Supreme Court, and seeks unspecified damages over Franco's "disparaging and inaccurate public statements." Santana claims Franco received a D in the class because he missed 12 out of the 14 classes. Franco admitted that he missed the classes because he was filming "127 Hours", but also said, "I didn't feel like I needed to waste my time with a bad teacher." Santana has already sued NYU, claiming he was fired in 2011 for giving Franco the D. He said the school "bent over backwards to create a Franco-friendly environment" and did "everything in its power to curry favor with James Franco."

Geisa Balla is an attorney practicing in New York, NY. She can be reached at

September 14, 2012

Weekly Issues in the News

By Geisa Balla

Velvet Underground v. Warhol

Southern District of New York Judge Alison Nathan has dismissed part of The Velvet Underground's lawsuit against the Andy Warhol Foundation for the Visual Arts (Warhol Foundation). The Velvet Underground alleged that the Warhol Foundation violated its rights to an iconic banana image used in one of The Velvet Underground's albums. The image at issue is a large banana and stylized Andy Warhol signature. The image was used in the band's first album "The Velvet Underground & Nico." The Velvet Underground had collaborated with Warhol on the design and cover art for the album. In January 2012, the Velvet Underground filed suit against the Warhol Foundation after reading about the latter's plans to license the banana image for cases, sleeves and bags for Apple's iPhone and iPad. Judge Nathan rejected Velvet Underground's claim that the Warhol Foundation had no copyright claim to the banana image. "Because the Warhol Foundation has broadly covenanted not to sue Velvet Underground," Nathan wrote, "there is no underlying cause of action sounding in copyright for Velvet Underground to head off." The copyright claim was dismissed without prejudice. The trademark claims of the lawsuit remains active.

Michael Jackson

Michael Jackson's former music promoter AEG Live is withdrawing its $17.5 million insurance claim in the 2009 death of the pop star. AEG had filed a claim against Lloyd's of London, seeking insurance payment for the losses incurred in up-front costs for Jackson's "This is It" shows that were to start in London in July 2009. Lloyd's later filed a lawsuit against AEG, seeking a declaration that the insurance company did not owe the money. Marvin Putnam, an attorney for AEG, said the company no longer needed the $17.5 million because it was reimbursed by Jackson's Estate. Attorneys involved told the judge that they expected AEG to be dropped from the case, though that has not yet officially occurred. Recently, leaked emails have shown that AEG executives were concerned about Jackson's stability prior to his tour. Attorneys on the case deny that AEG's decision was related to these released emails.

Tianna Madison

The parents of Olympic sprinter Tianna Madison have filed a defamation lawsuit against their daughter. Madison won a gold medal in the 4x100 meter relay this summer. Madison's parents, Robert and Jo Ann Madison, claim that their daughter's husband, John Bartoletta, told them on March 17, 2012 that "Tianna Madison would be filing a lawsuit against Robert Madison and Jo Ann Madison for misappropriation of funds and fraud based on her power of attorney and that he had hired a bodyguard to protect Tianna Madison." The parents claim that they were shocked by these allegations, and that they have not been sued or served with such a lawsuit. The parents also state that their daughter sent them an email on July 21, 2012 containing an article that she had written, which, as Tianna stated in her email, had been sent to multiple news agencies. In this article Tianna "falsely and defamatorily asserted" that her parents had "engaged in fraudulent behavior directed toward her and her finances, misused and/or otherwise misappropriated finances belonging to her." The article was supposedly sent to the Cleveland Plain Dealer. The parents met with a reporter from the newspaper, who said that he had received the article but refused to publish it because it contained potentially libelous content. The parents claim that Tianna contacted them again in August, saying that she would break the story after the Olympics. The complaint states that "on August 12, 2012, Tampa Bay Online published an article about defendant Tianna Madison and her Olympic success. The article specifically mentioned that defendant Tianna Madison endured financial hardship and asserted that she was molested as a child." The parents claim that their daughter spread false allegations all over their hometown. They seek punitive damages for defamation.

ABC News

South Dakota meat processor, Beef Products Inc., sued ABC News for defamation on September 13th, over ABC's reports of pink slime produced by Beef Products. ABC aired reports about Beef Products Inc., the nation's largest producer of "lean finely textured beef", in March and April 2012. The company now claims that ABC falsely told viewers that its product was not safe, not healthy, and was not even meat, resulting in the 31-year-old company's loss of hundreds of millions of dollars in profit and roughly half of its employees. In addition to ABC, the company also sued six individuals: news anchor Diane Sawyer, reporters Jim Avila and David Kerley, Gerald Zirnstein, a former U.S. Department of Agriculture microbiologist credited with coining the term "pink slime," former USDA employee Carl Custer and former Beef Products employee Kit Foshee. At a press briefing, Beef Products' lawyer stated that ABC conducted a "sustained and vicious disinformation campaign," and that "to call a food product slime is the most pejorative term that could be imagined. ABC's constant repetition of it, night after night after night, had a huge impact on the consuming public." The suit seeks $1.2 in damages. "The lawsuit is without merit," Jeffrey Schneider, senior vice president of ABC News, a unit of Walt Disney Co, said in a statement. "We will contest it vigorously."

New York Fashion Week

A New York publicist has sued a French magazine editor and her mother for $1 million after a fight over front-row seats at a Zac Posen show. Lynn Tesoro filed the lawsuit on Wednesday against Jalouse editor Jennifer Eymere and Marie-Jose Susskind-Jalou in Manhattan state Supreme Court. It claims "assault, battery, intentional infliction of emotional distress, slander and/or libel." The complaint does not explain the circumstances of the alleged assault, but only states that it took place at Avery Fisher Hall on Sunday. Women's Wear Daily, however, reported that the incident occurred at the Posen show after city fire marshals removed 60 seats. Eymere began arguing with Tesoro, whose firm was in charge of promoting the Posen show, because her mother no longer had a seat. The confrontation escalated, with Susskind-Jalou, Eymere and Eymere's sister engaging in a screaming match with Tesoro. Tesoro was then allegedly slapped in the face. Eyemere told Women's Wear Daily that it was a small slap, and that "it was not strong. I didn't hurt her, it was just to humiliate her. She humiliated my mom, and I humiliated her in front of her crew. Voilà. I just said at the end, 'Now you know you don't fuck with French people. The lawsuit also named Eymere's sister, Vanessa Bellugeon, as a defendant.

Geisa Balla is an attorney practicing in New York, NY. She can be reached at

September 18, 2012

Proposed New Laws in New York State for Child Performers- Catching up with Reality

By Diane Krausz

On September 5th, the New York State Register contained a proposed rule from the Department of Labor concerning 12NYCRR Part 186 (Part 186), entitled "Child Performers." The Members of the EASL Executive Board have been asked to provide comments to the current draft of the regulations and intends to do so by the second week in October. Any comments or questions concerning this article or the regulations may be sent to

The proposed rule establishes, consolidates, clarifies, and (in some instances) updates all regulations and requirements regarding child performers within New York State. It also, for the first time, includes and defines what is a "reality show", filling in necessary protections for minors in this popular programming genre, especially outside of Hollywood. When Part 186 becomes law, it will be the "go-to" section for producers, agents, parents, and anyone seeking comprehensive and detailed information concerning the New York State requirements for a child performer's employment. As with any new law, many issues and questions remain to be resolved, but its eventual passage will be a solid and important step forward in assisting industry professionals (including the parents of professional minors) in protecting the dual goals of income retention and safe, healthy, and appropriate working conditions for underage entertainers.

1. What the Law Does: The promulgation of this law will supplement, update, and clarify existing laws that currently deal with the area of minority, New York State, and the entertainment industry:

(a) Section 35.01 of the Arts and Cultural Affairs Law discusses the ability and circumstances of a minor in the entertainment industry to legally be bound to an agreement with an employer;

(b) Labor Law Article 4-A, including Section 151, discusses the requirement that 15 percent of all of a child performer's earnings (regardless of a New York State or Surrogate's court approval of any particular contract) be put into a so-called "Coogan" account;

(c) Estates Powers and Trust Law Article 7, Part 7, discusses the details of "Coogan" accounts as trust instruments;

(d) Education Law Article 65, Part 1, sets forth for a child the specific requirements for schooling and tutoring; e.g., such as when an appropriate teacher is to be provided; and,

(e) Section 154-a, Article 4-A of the Labor Law, which is proposed to be inserted and deals with specific regulations stating the work conditions and hours required to "safeguard the health, education, morals, and general welfare of child performers."

2. The law initially outlines its main core requirements, which are:

A. Requirements for a Parent/Guardian of a Child Performer:
(i) A Child Performer Permit, which must be obtained by a parent or legal guardian before the child may engage in services; and

(ii) A Child Performer Trust Account, which must be established by the parent or legal guardian for the child's benefit.

B. Requirements for an Employer of a Child Performer:

(i) An Employer Certificate of Eligibility, which must be obtained by an employer before the use of the child's services;

(ii) A Notice of Use of Child Performer to the Department of Labor, before each production event by employer; and

(iii) Minimum Standards for education, hours of work, as well as health and safety requirements for the child during employment.

3. The proposed Section 186 is divided into 10 subparts, which predictably begins as Purposes, scope, and exemptions (186-1); thereafter, Definitions (186-2), Responsibilities of Parents and Guardians (186-3), Responsibilities of employers (186-4); Educational Requirements (186-5); Hours and Conditions of Work (186-6); Records; Contracts (186-7); Variances (186-8); Suspension or revocation of permits and certificates (186-9); and Penalties and Appeals (186-10).

4. Some facts of which to be aware in the current draft of the regulations are:

• The law applies to all child performers (under the age of 18) who either reside or work in New York State AND the entities employing them.

• Any child performer below 16 years of age is to be accompanied throughout the work day by a "responsible person" (186-2(t)), parent, or guardian. In film, television, and other non-live type work, the responsible person is either the parent, guardian or someone named by the parent or guardian. In live theater or performances, the employer may name the person responsible if parental accompaniment is not possible.

• The law applies to live performances and film, television, and Internet/social media; however, the actual requirements for an employer producing a live performance (as opposed to any other types of performances) differ, particularly in the amount, and type of supervision ("parental vs. responsible person"), and the specific hours and days of work.

• The cost for an employer for an initial three-year Certificate of Eligibility is $350, except for theaters with fewer than 500 seats, renewals of the Certificate and "Employment Certificates of Group Eligibility" (the hiring of a number of children as a group for a certain project for not more than two days of work) which each cost $200.

• In addition to this cost, an employer will incur significant reporting, recordkeeping (required to keep all records for six years), and other compliance requirements (trust account documentation, on-site tutoring). The employer will be responsible in each instance for collecting a copy of the Child Performer Permit from the parent or guardian.

• There is no cost for obtaining a child performer's permit, with the exception of the obtaining a statement of fitness for the minor. This is a new requirement for a certification by a physician, nurse practitioner, or physician's assistant that the child performer has been examined within 12 months of the date of application or renewal and is physically fit to work.

• There is a regulation for obtaining a temporary child's permit (valid for a first time applicant for 15 days), as well as for an annual renewal (12 month) of a regular Child Performer Permit.

• The proposed regulations require employers, at their costs, to provide for the education of child performers from certified or credentialed teachers when children's schedules conflicts with school commitments or schedules. A sex offender check of each proposed teacher must be made prior to hiring.

• For infants between the ages of 15 days (NYS does not allow an infant younger than 15 days to perform; see 186-6.2) and six weeks, the proposed regulations require employers to provide a nurse with pediatric practice experience to be present at the location.

• There are specific activities and performances that are exempt from the requirement of obtaining an employer certificate or a child's permit, or both. For example, when a child performer's performance is part of the activities of a school (whether academic or artistic), or broadcast from a school, or under the supervision of a department of education, or as part of a recognized course of academic study to receive credit, it is most likely exempt from the requirements of Rule 186 - unless the program in which the child is participating is a "reality show."

• In 186-1(s), "reality show" is defined as the "visual and/or audio recording or live transmission, by any means or process now known or hereafter devised, of a child appearing as himself or herself, in motion pictures, television, visual, data, and/or sound recordings, on the Internet , or otherwise," and, shall not include the recording or live transmittal of non-fictional athletic events academic events, "such as, but not limited to, spelling bees and science fairs" and interviews in newscasts or talk shows.

• An Employer who feels that he or she would "incur significant hardship" in complying with some or all of the regulations is able to apply for a variance (in conformity with 186-8).

• The Commission may suspend or revoke an Employer's Certificate of Eligibility for good cause or if an Employer has failed to provide inaccurate or false information on an Eligibility application, or has committed a violation that may be "hazardous or detrimental to the physical or mental health, morals, education," or general welfare of a child performer, or has not obtained a parent's permission for a child on a Group Eligibility form, or has not made the required deposit into a child's trust account, or has caused a minor to engage in or be scheduled to engage in an activity that "may be hazardous or detrimental the physical or mental health, education, morals, or general welfare of a child performer."

• In addition to revocation or suspension of an Employer's Certificate of Eligibility, civil penalties may be assessed against the Employer for violation of any provision of the part of the regulations. The penalty is currently limited to $1,000 for the first violation, $2,000 for the second violation, and $3,000 for the third violation. Each violation shall constitute a separate offense. Any final order issued by the Commissioner of Labor is subject to review by the Industrial Board of Appeals (pursuant to Labor Law Section 101), prior to any appeal to a regular State court.

September 24, 2012

Weekly Issues in the News

By Geisa Balla


Three consumers filed a lawsuit in the southern District of New York against Maybelline over its Super Stay 14HR Lipstick and Super Stay 10HR Stain Gloss. The lawsuit was filed on September 21, 2012 by Carol Leebove, Wanda Santa and Denise Santiago. It alleges that L'Oreal falsely advertised the staying powers of its lip products, which sell for about $9.00 each. The lawsuit claims that despite Maybelline's claims, the lip products fade away after only a few hours. The plaintiffs state that Maybelline misled consumers by claiming that the lip gloss "stays vibrant and shiny, yet transparent, and won't fade" for 10 hours, and that the lipstick has "super staying power." The lawsuit alleges breach of warranty and violations of state consumer protection laws. It seeks class-action status, compensatory and triple damages, and other relief.,_lawsuit_says/


Zynga Inc. filed a counterclaim against Electronic Arts Inc. ("EA"), claiming that EA's lawsuit against Zynga filed last month violated an agreement between the parties over how Zynga can hire EA's employees. Last month, EA filed a lawsuit against Zynga, claiming that Zynga obtained private information about EA's "The Sims Social" game after hiring three of EA's top employees and releasing its own game "The Ville." In its counterclaim, Zynga said that it had reached a deal with EA in 2011 with lawful restrictions on how Zynga solicited EA employees, and in exchange, EA released Zynga from legal claims surrounding its hiring practices.

Zynga now claims that EA breached this agreement by filing its complaint. Zynga states that an EA lawyer told Zynga that EA Chief Executive John Riccitiello was adamant about obtaining a no-hire agreement that would shut down Zynga's ability to hire EA employees. Zynga's filing acknowledged the signing of a non-monetary settlement agreement with EA in September 2011 in an effort to head off litigation. That deal included "lawful, appropriate and extremely narrow non-solicit restrictions" in the context of a non-monetary settlement agreement. In its filing, Zynga said that EA "undertook an anti-competitive and unlawful scheme to stop Zynga from hiring its employees." Its general counsel, Reggie Davis, also said in a statement that EA's copying claims have no merit.

Sister Act

A nun has filed a $1 billion lawsuit against The Walt Disney Company and Touchstone Pictures over the 1992 film "Sister Act." Queen Mother Dr. Delois Blakely of the Franciscan Handmaids of Mary Convent in Harlem filed the lawsuit last week in New York Supreme Court. The lawsuit alleges that "Sister Act" and its 1993 sequel, as well as the musical adaptation, used "plaintiff's actual life experiences without her permission or authorization, thereby irreparably damaging her by depriving her of the windfall of financial gain reaped by defendants." "The subplots actualized in the said motion picture 'Sister Act' and portrayed by Whoopi Goldberg are her real life experiences," the suit adds.

Dan Hamilton

The family of Dan Hamilton, the writer of the 1970s hit "Falling in Love" has won a significant jury verdict against Henry Marx, a music producer accused of failing to pay hundreds of thousands of dollars in revenue. Dan Hamilton was a member of Hamilton, Joe Frank & Reynolds, whose "Fallin' in Love" reached No. 1 on the Billboard Hot 100 in 1975. "Fallin' in Love" had been co-published by Spitfire Music, a company controlled by Hamilton's then-manager Joel Cohen. Marx and his Music Force music publishing company later acquired the Hamilton catalog in the mid-'80s. Hamilton had previously been married to Ann Wallace, who was credited as a co-writer of "Fallin' in Love." After Hamilton's death, Wallace sued his estate for back child support. A settlement was reached in 1998 that allowed Marx to collect 100 percent of revenue from the Hamilton catalog and designated that Marx had acquired the publishing interest of Spitfire. However, Spitfire continued to own a share of the publishing revenue. Fredricka Hamilton, Hamilton's widow and her stepdaughter sued and settled, obtaining rights to pursue Max for underpayment of revenue. The lawsuit against Marx sought money Marx allegedly withheld from royalty payments, as well as money that Marx should have collected had he truly collected 100 percent of the revenue. After a six-day trial, the jury unanimously agreed that Marx had committed fraud and breach of contract. Plaintiffs were awarded $562,317. Additionally, the jury found that punitive damages were warranted. Arguments over what the final award should be will be held on September 26, 2012.

Geisa Balla is an attorney practicing in New York, NY. She can be reached at

September 30, 2012

Weekly Issues in the News

By Geisa Balla

Toys R Us

Fuhi Inc., the maker of Nabi tablet computers for children, filed a lawsuit against Toys R Us on September 24, 2012. The suit alleges that Toys R Us stole trade secrets in preparing to introduce the rival Tabeo tablet this month. It states that Toys R Us agreed in October 2011 to become the exclusive Navi distributor, but in the end did "virtually no promotion" and only ordered for the holiday season a little more than what Toys R Us said could be sold in one day. Fuhu contends that Toys R Us agreed to become the exclusive seller of the Nabi to learn the product secrets before bringing Tabeo to market. The parties ended their exclusive agreement in January. "Toys R Us used Fuhu's trade secrets and confidential information to start selling Tabeo, which systematically attempts to replicate the Nabi experience, far earlier than Toys R Us could have done otherwise, if at all," the lawsuit said. Fuhu accused Toys R Us of fraud, breach of contract, unfair competition and trade secret misappropriation. Fuhu also said that Toys R Us copied Nabi's butterfly-shaped bumper, which is used to help protect the tablet, for Tabeo. The lawsuit seeks to stop Toys R Us from selling Tabeo ahead of the holiday season. Fuhi is also asking that any Tabeos be turned over to Fuhu and is seeking unspecified monetary damages.

Kanye West

Record label TufAmerica filed a lawsuit in the Southern District of New York against Kanye West for copyright infringement on West's latest album "My Beautiful Dark Twisted Fantasy." TufAmerica claims that two tracks on West's album include a bit from "Hook and Sling, Part 1" by New Orleans singer-pianist Eddie Bo. TufAmerica says that it bought the rights to the single more than 15 years ago. The sample appears in West's "Who Will Survive in America" and "Lost in the World." In its complaint TufAmerica alleges that West's label Roc-A-Fella and parent Universal Music Group paid a license fee of $62,000 but "failed and refused to enter into a written license agreements that accounted for their multiple other uses of [Hook and Sling]." TufAmerica is seeking undisclosed damages for copyright infringement.

The Innocence of Muslims

Cindy Lee Garcia, an actress appearing in "The Innocence of Muslims", has filed a lawsuit against YouTube, its parent company Google Inc., and Nakoula Basseley Nakoula, the filmmaker behind the film. Garcia claims that she was duped into appearing in the film, which incited violent protests across the Middle East. Last week, a Los Angeles Superior Court denied Garcia's request for a temporary restraining order that would have required YouTube to stop posting the video, finding that the actress was unlikely to prevail on the merits of her case. In this lawsuit Garcia has brought claims of fraud, libel and unfair business practices against the filmmaker. "The Innocence of Muslims" depicted the Prophet Mohammad as a fool and a sexual deviant. Google has refused to remove the film from YouTube, though the company has blocked the film in Egypt, Libya and other Muslim countries. Garcia claims that Google is infringing on the copyright she holds to her performance in the film by distributing the video without her approval on YouTube. According to Garcia, Nakoula operated under the assumed name of Sam Bacile, misleading her and other actors into appearing in a film they believed was an adventure drama called "Desert Warrior." After the fact, however, she learned that some of her lines spoken in the production had been dubbed over. The alteration made it look like Garcia "voluntarily performed in a hateful, anti-Islamic production", the lawsuit says, adding that she has "been subjected to credible death threats and is in fear for her life and the life and safety of anyone associated with her.",_YouTube_in_federal_court/

Ditocco v. Riordan

Plaintiffs, the authors and copyright owners of two books, The Hero Perseus and Atlas' Revenge, brought a copyright infringement lawsuit against, the author of the five-book series "Percy Jackson & The Olympians," the distributor of the books and the companies that produced and distributed the film "Percy Jackson & the Olympians: The Lightening Thief." The district court granted the defendants' motion to dismiss, finding that there was no substantial similarity between the protected elements of the plaintiff's books and the Percy Jackson books and movie. The plaintiff appealed, and the Second Circuit affirmed the "well-reasoned opinion of the district court." The court explained that both sets of works incorporate characters and classic stories from Green mythology, which are in the public domain and are therefore unprotectable. Leaving these unprotectable elements aside, and comparing the protectable elements of the works, the court concluded that "the district court determined that the two sets of books are not substantially similar as a matter of law." In the plaintiffs' novels, the protagonist PJ Allen is a popular and athletic young man who in his dreams travels to ancient Greece, where he fights mythical beasts and re-creates events in Greek mythology that have been erased from history. The "Percy Jackson & The Olympians" series tells the stories of demigod Percy Jackson and his battles against classical Greek monsters while traveling all over the country with his supernatural friends. The court noted that in these works, the Olympic gods live among the mortals in the modern world, wearing sunglasses, using cell phones and ignoring their demigod offspring.


The Vogue publishing companies Advance Magazine Publishers Inc. New York and Les Publications Condé Nast SA Paris filed a civil lawsuit with the Swiss courts over the activities of a Swiss company that manufactured and sold watches bearing the logo with the words "VOGUE My Style," where "My Style" were printed in very small letters. The Swiss Federal Tribunal issued a judgment, affirming that both "VOGUE" is a well-known trademark and that the lower court had correctly decided that the watchmaker is prohibited to use the term VOGUE for any kind of product likely to create a risk of confusion with the distinctive VOGUE. Importantly, the Federal Tribunal reasoning expanded beyond the lower court's reasoning by holding that the prohibition was not based only on unfair competition, but also on trademark law.

Geisa Balla is an attorney practicing in New York, NY. She can be reached at

October 8, 2012

Weekly Issues in the News

Google Books

Google Inc. and a group of publishers have agreed to a settlement over making digital copies of books. Google and the Association of American Publishers (AAP) said on October 4th that U.S. publishers can decide whether or not they want their books made available through Google. Google Books has allowed users to browse up to 20% of books in its library and then purchase the digital version through Google Play. Google has spent years scanning over 20 million books in partnerships with major libraries around the world. The Authors Guild responded by filing suit in 2005, alleging that Google violated copyright laws. Google settled the matter in 2008, agreeing to pay $125 to each copyright owner whose copyrighted books had been scanned, and to locate and share revenue with the authors who had yet to come forward. However, the Justice Department rejected the settlement. The Authors Guild stated that in spite of the publishers' settlement, it would continue with its fight. "Google continues to profit from its use of millions of copyright-protected books without regard to authors' rights, and our class-action lawsuit on behalf of U.S. authors continues," Paul Aiken, executive director of the Authors Guild said in a statement.

Steel Magnolias

Victoria L. White, the executive producer of the 1989 film Steel Magnolias, filed a lawsuit on October 1st against Lifetime Entertainment, A&E Networks and Sony Pictures Television, claiming that an upcoming TV movie based on the film is being made without permission or agreement for the underlying rights. The lawsuit was filed in the Superior Court of the State of California, Los Angeles County. In the complaint, White alleges to have been "shocked and dismayed" when she learned about the Lifetime project. White co-produced the film with Ray Stark, who died in 2004. The complaint states that White acquired rights to the movie when she entered into an agreement with Rastar Productions Inc., Stark's company, in 1989. In 1991 Sony acquired Rastar Productions. According to the complaint, there was a 1992 CBS movie based on the same material, and White was credited as a co-producer. The lawsuit says that the defendants told White that her rights to a TV version were limited to the 1992 TV movie. She claims that is not the case, and that she is entitled to royalties on all future TV versions. White believes that she is entitled to producing credit on the TV movie, and compensation of $5,000 per episode plus a $10,000 bonus, and a share of net profits. White has also asked the court to stop the release of the new Lifetime movie unless she gets a screen credit for her compensation.


YouTube recently added a more comprehensive appeals process that could help uploaders confronted with unjustified take-down notices in YouTube's Content ID program. Content ID is a program used by YouTube to automate the take-down process of unlicensed content. The program has been in place for four years, and YouTube said Wednesday that it has been used by more than 3,000 content owners, who have supplied the site with more than 300,000 reference files. YouTube announced the changes on its site stating:

"Users have always had the ability to dispute Content ID claims on their videos if they believe those claims are invalid. Prior to today, if a content owner rejected that dispute, the user was left with no recourse for certain types of Content ID claims (e.g., monetize claims). Based upon feedback from our community, today we're introducing an appeals process that gives eligible users a new choice when dealing with a rejected dispute. When the user files an appeal, a content owner has two options: release the claim or file a formal DMCA notification."

Adding the DMCA could help uploaders defend their use of material when it is covered by the fair use doctrine, and could help YouTube to convince more content owners to monetize. YouTube also said that it has improved its algorithms to detect false take-down notices, which could reduce the risk of automated mass take-downs.

California's Student Athlete Bill of Rights

Athletes enrolled in California's four-year institutions or higher education will be protected by the Student-Athletes Bill of Rights, effective January 1, 2013. This is the first law of this nature in the nation. The law applies to California universities that generate more than $10 million annually in athletics-related media revenue. Under the new law, if a student suffers a season-ending injury while participating in his or her scholarship program or exhausts his or her eligibility, the school must continue to provide benefits equivalent to that student's scholarship. Schools must pay the medical premiums for program-related medical claims for lower-income students and must pay the deductible amount for program-related injuries for any athlete. If an athlete requires ongoing treatment for a sports-related injury, the school must provide at least two years of that treatment or treatment covering insurance. The law also requires universities to provide specified financial and life skills workshops, including budget recommendations and time management skills. It directs universities to use their athletic media revenues to pay for complying with the law. Schools directly affected based on current revenue are Stanford, Berkeley, UCLA, and USC. NCPA President Ramogi Huma explained: "This is a great day for college athletes. California has acted to ensure that the players generating billions of dollars for its colleges are guaranteed basic physical, academic, and financial protections. No other state in the nation guarantees its college athletes these protections, and the NCPA will work to change that."


Bakers Footwear Group Inc., which operates 215 women's shoe stores in the United States, filed for bankruptcy protection on October 3rd. The company has been closing and selling stores, laying off staff and ending licensing deals. Bakers' weak sales pushed it into default on a $30 million secured credit facility it entered into with Crystal Financial LLC. Crystal agreed to lend the company $22 million to get it through its bankruptcy, according to documents filed in St. Louis's bankruptcy court. The loan requires that Bakers have a bankruptcy restructuring agreement in place by Nov. 2, or begin a process to find a buyer for the chain. Bakers has assets worth $41.9 million and debts worth $59.5 million, according to court documents.

Geisa Balla is an attorney practicing in New York, NY. She can be reached at

October 12, 2012

Weekly Issues in the News

By Geisa Balla


The operator of Artist Arena, a celebrity fan website for music stars Justin Bieber, Rihanna, Demi Lovato and Selena Gomez, has agreed to settle Federal Trade Commission (FTC) charges that it violated the Children's Online Privacy Protection Act (COPPA) by improperly collecting personal information from children under 13 without their parents' consent. The settlement will impose a $1 million civil penalty on Civil Arena, bar future violations of COPPA, and require that Artist Arena delete information collected in violation of COPPA. "Marketers need to know that even a bad case of Bieber Fever doesn't excuse their legal obligation to get parental consent before collecting personal information from children," said FTC Chairman Jon Leibowitz. "The FTC is in the process of updating the COPPA Rule to ensure that it continues to protect kids growing up in the digital age."

According to the FTC, Artist Arena operated fan websites such as,,, and, where children were able to register to join fan clubs, create profiles and post on members' walls. Children also provided personal information to subscribe to fan newsletters. The FTC alleged that Artist Arena falsely claimed that it would not collect children's personal information without prior parental consent and that it would not activate a child's registration without parental consent.


MGM Distribution won an appellate decision over the distribution of the film Madison. The film was shot by Bill Bindley in 1999. Its financial backers sued MGM in 2009, claiming that the studio failed to properly distribute the film. According to the lawsuit, MGM released Madison in April 2005 with the help of $6.75 million in marketing funds provided by a production company called Madison LLC. The film flopped, grossing just $500,000. MGM released it in only 15 markets and on 93 screens. The film's investors lost tens of millions of dollars and brought suit against MGM, which defended on procedural grounds, arguing that the studio did not have enough contact with Illinois to be sued there. Two years later the court ruled that it was proper to exercise jurisdiction over MGM in Illinois. MGM appealed. The appellate court overturned the trial court on September 28th, holding that MGM should not have been sued in Illinois. "We find that MGM Distribution did not in fact have sufficient minimum contacts with Illinois to support the exercise of specific personal jurisdiction in this case," and remanded it back to the trial court.


Stan Lee Media, the company that controls the rights to several Marvel characters, including Spider Man and Iron Man, has filed suit in the U.S. District Court in Colorado against Walt Disney Co., seeking "billions of dollars of profits" over the rights to many characters. Stan Lee himself is no longer associated with the company. The company claims that Lee assigned to it his rights to the Marvel characters in 1998, but then assigned the same rights to Marvel Enterprises one month later. Disney acquired Marvel Enterprises in 2009 for $4.3 billion. "The Walt Disney Company has represented to the public that it, in fact, owns the copyright to these characters as well as hundreds of other characters created by Stan Lee," states the complaint. "Those representations made to the public by the Walt Disney Company are false." The lawsuit focuses on successful movies based on Marvel characters that Disney has released since the acquisition, such as The Avengers. Disney claims that the suit is without merit, and that "it arises out of the same core facts and legal claims that have been rejected by three federal district court judges."

Electronic Arts

U.S. District Judge Claudia Wilken ruled on October 10th that Electronic Arts (EA) can settle antitrust claims by paying $27 million and releasing exclusivity rights to league-branded football video games. In 2008, lead plaintiffs Geoffrey Pecover and Jeffrey Lawrence claimed that EA killed off competing football video games by partnering with the National Football League (NFL), the National Collegiate Athletic Association (NCAA), the Collegiate Licensing Co. (CLC) and the Arena Football League (AFL). According to the complaint, EA was free to hike up the prices of its own games and gouge customers by monopolizing the market for these games. EA denied the allegations as well as any wrongdoing, eventually filing the joint settlement on July 20, 2012. The agreement bars EA from renewing its exclusive NCAA and CLC football licenses for at least five years after they expire in 2014. EA must also refrain from obtaining exclusive rights to the AFL for five years. The settlement will not affect EA's exclusive licensing with the NFL, even though the "Madden NFL" video game was central to the original lawsuit. The $27 million settlement fund will be distributed to consumers who purchased "Madden NFL," "NCAA Football" or "American Football League" games that were published between Jan. 1, 2005, and June 21, 2012.

Elton John

On October 10, 2012, the UK High Court held that Elton John was not defamed in The Times article about a tax avoidance scheme. On June 21st, the British newspaper carried the headline "Screen Play: how movie millions are moved offshore," and mentioned Ingenious Media top executive Patrick McKenna, who was said to be Elton John's former accountant and one of two main providers of film investment schemes in the UK. The paper also included another article that referenced John in a report about the "world of glitz and glamour that's on the Revenue's radar." John's attorneys sent a letter to the publishers, and The Times ran a correction stating that McKenna had never been John's accountant and then printed a "clarification" that Ingenious Media had not been involved in tax avoidance activities. Despite the correction, John sued, saying "the allegations are particularly damaging to the claimant's reputation in the sphere of charity fundraising." UK High Court Justice Michael Tugendhat held that the publication was not defamatory. "The conclusion I have reached is that the words complained of are not capable of bearing the meaning attributed to them by the claimant or any other defamatory meaning."

Geisa Balla is an attorney practicing in New York, NY. She can be reached at

October 17, 2012

Message from the Chair

By Rosemarie Tully

I am pleased to report that two bills that EASL reviewed and helped shape were recently signed into law by the Governor. Below are brief summaries of the two pieces of legislation excerpted from my Remarks in the upcoming EASL Journal.

Arts Consignment Law

On legislative issues, EASL's voice was front and center. Under the leadership of EASL's Immediate Past Chair, Judith Prowda, EASL helped shape an amendment to the Arts and Cultural Affairs Law (NYSCAL) relative to consignments of works of art to art merchants by artists, their heirs and personal representatives (the Arts Consignment Law). The revised statutes, Articles 11 and 12 of the NYSCAL, serve to strengthen pre-existing trust property and trust fund provisions, fortifying the rights of consignors (and their heirs) which rights otherwise may have been lost. This legislation was passed, signed into law by the Governor, and will be effective as of November 7, 2012.

Talent Agency Law

EASL also reviewed and supported amendments to the General Business Law and the Arts and Cultural Affairs Law in relation to theatrical employment agencies (the Talent Agency Law Revisions). Founding Chair Marc Jacobson spearheaded EASL's working group on this issue. Among the changes, the amendments add a definition for "artist," adjust the writing requirement for agency contracts, and deal with agency fees relative to negotiation or renegotiation on original or pre-existing contracts. In sum, the revisions clarify and create consistency in the regulation of theatrical employment agencies. This legislation was passed and signed into law by the Governor on October 3, 2012.

October 19, 2012

Weekly Issues in the News

By Geisa Balla

Clint Eastwood

Earlier this week, Clint Eastwood settled his claim with Evofurniture over the use of his name to sell furniture. In April 2012, Eastwood filed the lawsuit, claiming that Evofurniture was selling ottomans and chairs as "Clint" and "Eastwood" and trading on the goodwill associated with his name and his movies. Eastwood claimed that Evofurniture was "continuing to use Mr. Eastwood's name, identity and persona for the purpose of attracting attention to the infringing products," alleged the lawsuit. Evofurniture had advertised: "When you're invited into a person's home, you get to see the good, the bad and the ugly. When visitors come to your home, the Clint 47'' Entertainment Center makes your family room alone look like you live in a perfect world of a million-dollar baby." Eastwood sought a permanent injunction against the chair that bore his famous name, plus damages for misappropriation of right of publicity. Following mediation, the parties informed the court that they had reached an agreement on a global settlement to end all claims. The settlement terms were not disclosed.

The Bachelor

U.S. District Judge Aleta Trauger dismissed a civil rights lawsuit filed by two men who claimed that they were rejected for the starring role of ABC's "The Bachelor" because of their race. The lawsuit was filed by Nathaniel Claybrooks and Christopher Johnson in Nashville federal court. The plaintiffs claimed that ABC had never cast a person of color in the show's central role as a matter of policy. Claybrooks and Johnson had sued ABC, which is owned by Walt Disney Co, Warner Horizon Television Inc., which produces the show, Next Entertainment Inc., NZK Productions Inc. and executive producer Michael Fleiss in April. Judge Trauger stated that the men's goals were "laudable", but that the rights of the show's producers to control their creative content are protected by the First Amendment. Claybrooks and Johnson "seek to support social acceptance of interracial relationships, to eradicate outdated racial taboos, and to encourage television networks not to perpetuate outdated racial stereotypes," Trauger wrote. "Nevertheless, the First Amendment prevents the plaintiffs from effectuating these goals by forcing the defendants to employ race-neutral criteria in their casting decisions in order to 'showcase' a more progressive message."

Madonna and Marlon Brando

CMG Worldwide Inc. (CMG) has filed a breach of contract lawsuit against Marlon Brando's estate, claiming that the estate is reneging on a deal allowing the use of Brando's name and likeness during Madonna's 2012 World Tour. The complaint alleges that after CMG entered into a valid contract with Brando's estate, the estate backed out and demanded more money for the use of Brando's name, likeness and image. Under the initial agreement, Madonna would be able to use Brando's name, likeness and image for $5,000. According to CMG, the deal with Brando was exactly the same as those deals reached with the other deceased stars and the agreement itself included a "most favored nations" clause that ensures that each star receives equal financial treatment. After an oral acceptance of the deal, followed by acceptance via electronic message, Brando's estate reportedly upped its fee a week later -- to $20,000. CMG is seeking the declaration of a valid and enforceable contract between the parties, and demanding that Brando's estate be enjoined from bringing suit against CMG under the agreement.

Go the Distance Baseball LLC

Go the Distance Baseball LLC (Got the Distance) filed a lawsuit against the Residential & Agricultural Advisory Committee in Iowa on October 12, 2012 over the construction of an "All-Star Ballpark Heaven." Go the Distance, a development company run by Denise and Mike Stillman, is involved in a $38 million project to turn a 193-acre farm in Dyersville, Iowa into a destination spot for youth baseball and softball athletes. The development would be constructed on the same site used in the 1989 film "Field of Dreams". However, the residents of Dyersville objected to the development plan. Citizens distributed a "Save our Town" letter in June, warning of hotel and parking issues, as well as food threats as a result of the development. The Residential & Agricultural Advisory Committee initiated legal action to have the city's rezoning decision reconsidered. That attempt was denied. An appeal would derail the Stillmans' hope to close on the deal by the end of the year, and thus they filed their own lawsuit to push the project forward. The lawsuit brings claims of tortious interference and defamation. The "Save our Town" letter has become an exhibit in support of the allegation that the Advisory Committee is attempting to interfere with the plans. The Stillmans accuse the local residents of lying to their neighbors about the development and libeling them with defamatory statements.

Warner Brothers

On October 17, 2012, the U.S. District Court for the Central District of California granted Warner Brothers' motion for summary judgment on in its Superman copyright claim. The issue was whether a 1992 agreement with Jean Peavy, the sister of Superman's co-creator Joe Shuster, precludes the Shuster estate's attempt to terminate a copyright grant. The judge ruled "that the 1992 Agreement, which represented the Shuster heirs' opportunity to renegotiate the prior grants of Joe Shuster's copyrights, superseded and replaced all prior grants of the Superman copyrights. The 1992 Agreement thus represents the parties' operative agreement and, as a post-1978 grant, it is not subject to termination." Defendants' counsel stated: "The order for the most part is the tentative order issued over six weeks ago before oral argument. We respectfully disagree with its factual and legal conclusions, and it is surprising given that the Judge appeared to emphatically agree with our position at the summary judgment hearing."

Geisa Balla is an attorney practicing in New York, NY. She can be reached at

November 6, 2012

EASL Fall Meeting

Thursday, November 15, 2012
The Cornell Club
6 East 44thStreet
New York City

3:30PM-6:45PM: CLE Program
6:45PM - 8:45PM Cocktail Reception

Panel One: "Best Practices to Protect Entertainment Assets in a Bankruptcy"

How can you be protected should a bankruptcy suddenly disrupt the intended results of an entertainment-related business transaction? A licensor's bankruptcy could result in a licensee having difficulty asserting its rights or facing unexpected competition from new licensees. A songwriter who sold his copyright catalogue may be left with a worthless claim in a publisher's bankruptcy. By the time the bankruptcy is filed, it's too late to protect your rights. But what can you do in advance?

Join three leading lawyers from Curtis Mallet-Prevost Colt & Mosle LLP for an insightful panel discussion on the principles of bankruptcy in the entertainment industry, including the impact of recent cases changing the landscape, and how those principles affect rights in entertainment transactions.

The panel will feature three key elements:
Bankruptcy principles applicable to IP assets.
Recent changes likely to alter the treatment of entertainment assets in U.S. bankruptcies
Hypothetical scenario to identify the effect of various transaction structures on the rights and obligations of the IP creator and the IP distributor in bankruptcies.

Lynn P. Harrison 3rd, Esq., Partner and Co-Chair, Restructuring & Insolvency Group
Andrew H. Seiden, Esq., Partner and Chair, Entertainment & Media Practice Group
Eric J. Stenshoel, Esq., Counsel, Intellectual Property Group

Panel Two: "E-Books: The Sequel--Rights, Wrongs and Realities"

Traditional publishers are battling e-book companies in court, the government is suing traditional publishers and Apple over e-book pricing, and authors and publishers are regularly facing off in deal-making in the ever-evolving world of e-books, enhanced e-books, apps and self-publishing. In our second panel this year, we will hear from experts including a founder of a leading independent electronic publisher and counsel for a publisher in United States v. Apple. We will also get an inside look at transactional issues in a mock negotiation between counsel for an author and counsel for an e-book publisher.

Arthur Klebanoff, CEO, Rosetta Books, President, Scott Meredith Literary Agency, NY
Joel M. Mitnick, Esq., Partner, Sidley Austin, NY
Kim G. Schefler, Esq., Partner, Levine Plotkin & Menin, NY
F. Robert Stein, Esq., Law Office of F. Robert Stein, Of Counsel, Pryor Cashman, NY

Judith B. Bass, Esq., Law Offices of Judith B. Bass, NY
Kenneth N. Swezey, Esq., Partner, Cowan DeBaets Abrahams & Sheppard, NY

Under New York's MCLE rule, this program is pending approval for up to 3.0 MCLE Credit hours in the area of professional practice. This program is not transitional and does not qualify for credit for newly admitted attorneys.

For more information, contact:

The last day to pre-register online is November 15, 2012.

November 8, 2012

Pro Bono Help Requested from the Art Dealers Association

Jo Laird, on behalf of the Art Dealers Association writes:

I am writing to ask for your help.

As you know, a significant number of galleries in Chelsea were badly damaged during the storm. Galleries suffered structural and physical damage, and a great deal of art was destroyed. There is some real concern that some of the galleries will not be able to re-open for some time. Some of the smaller and most financially fragile ones may not make it back.

In the wake of the storm, the Art Dealers Association has identified legal services as one of the most crucial needs for these galleries. Patterson Belknap has agreed to provide pro bono services to these smaller and most needy galleries in their applications for relief -- insurance and FEMA claims, emergency government loans, etc.

It would be great if you and your firms could pitch in. I don't know how many of you have made it down to Chelsea in the last week, but it's been both heartbreaking and inspiring. Heartbreaking because the neighborhood was so
badly hit. Inspiring because of the energy of the people working to rebuild their galleries and save and salvage works oart.

I know that most of you have probably already contributed to broader relief efforts. This is a way that we can do our part to help the community we serve."

If you wish to help, please contact Jo Laird directly at

November 16, 2012

Week in Review

By Martha Nimmer

A World Without Commercials?

Late last week, the U.S. District Court for the Central District of California denied a request by News Corp.'s Fox Broadcasting unit to block Dish Network Corp.'s Hopper digital video recorder service and its AutoHop feature before a copyright infringement suit concerning those services can be decided. Dish's Hopper digital video recorder (DVR), introduced in March, records all major prime time television shows and then stores them for eight days after their first broadcast. The AutoHop service, a potential Godsend for people who do not enjoy watching TV commercials, allows viewers to skip all commercials recorded during the prime time broadcasts, without having to fast-forward manually through the commercials.

Although this initial ruling in the case of Fox Broadcasting v. Dish Network, 12-04529, U.S. District Court, Central District of California (Los Angeles) was filed under seal, both Dish and Fox issued separate responses to U.S. District Judge Dolly Gee's decision. Dish Network applauded the ruling, referring to it as "a victory for common sense and customer choice." Dish's general counsel also invoked the 1984 Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, decision, commenting that this recent ruling "underscores the U.S. Supreme Court's 'Betamax' decision, with the court confirming a consumer's right to enjoy television as they want, when they want." Fox, in stark contrast to the optimism evinced by Dish, lamented Judge Gee's ruling, stating, "we are disappointed the court erred in finding that Fox's damages were not suitable for a preliminary injunction." An attorney for Fox has confirmed Fox's intention to appeal the ruling.

Unnecessary Roughness?

Rashard Mendenhall is perhaps best known for being a Pittsburgh Steelers running back, and Charlie Sheen rose to fame in the 1980s as the star of movies such as Platoon, Wall Street and Major League. What could these two celebrities possibly have in common, other than their notoriety? Until recently, both men were endorsers for Hanesbrands, the parent company of Hanes and Champion sportswear. Mendenhall and Sheen are also no strangers to controversy. In March 2006, Sheen commented on a radio interview that "It seems to me like 19 amateurs with box-cutters taking over four commercial airliners and hitting 75 per cent of their targets feels like a conspiracy theory. It raises a lot of questions." Rashard Mendenhall also made controversial marks in regards to the death of Osama bin Laden. In 2011, Mendenhall tweeted "What kind of person celebrates death? It's amazing how people can HATE a man they have never even heard speak. We've only heard one side." It is this tweet that led Hanesbrands to terminate Mendenhall's contract to promote Champion sportswear. Hanesbrands alleges that this comment violated the morals clause contained in the company's endorsement deal with Mendenhall. Now, Mendenhall is suing Hanesbrands, claiming that the company breached his contract.

Morals clauses are common in the entertainment business; the vast majority of movie studios and companies that contract with actors, musicians, athletes and other notable figures retain some contractual protection that permits them to terminate the contract "upon controversy." Mendenhall's contract contained a typical morality clause that prohibited the running back from engaging in activities that would bring the company "into public disrepute, contempt, scandal or ridicule." The clause failed to specify, however, what Mendenhall was permitted--or prohibited--from saying on his personal Twitter account. It is this ambiguity that has led Mendenhall to argue that Hanesbrands "went outside" of its termination right, and acted arbitrarily and unreasonably in ending the sportswear endorsement deal with Mendenhall. To support the finding that the apparel company acted unreasonably and treated him unfairly, Mendenhall has sought documents from Hanesbrands showing how "the company has treated endorsers such as Mr. Sheen." Mendenhall's goal in making that discovery request is to prove that Hanesbrands treated him differently from other endorsers--such as Sheen--without good reason, despite the similarity between the two controversial remarks and the public's outcry to it. Mendenhall's suit is primed to determine just what celebrity endorses may say on Twitter, without running afoul of morality clauses, and to what extent companies may enforce such clauses differently among their endorsers.

Trouble in Tinseltown

Turning now to Tinseltown, the National Conference of Personal Managers, Inc. (NCOPM)--a Las Vegas-based trade association--has brought suit in federal court, seeking declaratory and injunctive relief that the Talent Agencies Act (TAA) of California violates the United States Constitution. Specifically, the NCOPM argues in National Conference of Personal Managers, Inc. v. Edmund G. Brown that the TAA runs afoul of Article 1, Sections 8 and 10, the 13th Amendment and the Due Process and Equal Protection Clauses of the 14th Amendment. Briefly stated, the TAA requires that any individual acting as a talent agent must be licensed by the State Labor Commissioner, and is subject to state oversight, including office inspections and records review. The essential purpose of the law is to protect artists from employers posing as employment counselors and making false promises about procuring work; the passage of the law in 1978 reflected a growing understanding in the California legislature of the mounting complexity involved in talent procurement and the entertainment business, particularly in the state of California. Despite these noble purposes, the TAA, some critics say, has been used by artists who want to avoid paying commissions to their managers.

Turning to the constitutional arguments proffered by the petitioner, the NCOPM disputes the "vague, uncertain and inconsistent provisions and enforcement of the TAA," stating that the law violates the substantive due process right to notice and a reasonable opportunity "to know what is required and what is prohibited . . . By Defendants under the TAA." Specifically, the plaintiff points to the fact that the "procure employment" language in the Act has never been defined by any court, and thus lends itself to uncertainty and ambiguity. Additionally, the plaintiff argues that the Act amounts to involuntary servitude, as it forces the plaintiff to forfeit his right to be paid for his labor, or face being convicted of a crime.

Although the TAA appears to have been well-intentioned, ambiguities in the law and almost 100 years of piecemeal interpretations of predecessors to the TAA have resulted in injustice and uncertainty on the part of talent managers in the entertainment industry.

Read the full complaint here:

Easter Comes Early for Cadbury

Now, to the other side of the pond. Earlier this week, the High Court of England and Wales dismissed an appeal by Swiss multinational Nestlé to prevent the registration of the color purple for use in connection with chocolate products. The case of Société Des Produits Nestlé S.A. v Cadbury UK Ltd [2012] EWHC 2637 sprang from the 2004 trademark application filed by Cadbury UK Limited (Cadbury) with the United Kingdom trademark registry. Although initially rejected by the registry, Cadbury was able to prove that the color purple--specifically, Pantone 2685C--had acquired distinctiveness through use. The trademark was registered on May 2008; three months later, Nestlé opposed the trademark application. The registry objected to Nestlé's opposition, and the Nestlé appeal to the High Court followed.

Nestlé's main objection to the registration focused on whether the mark, as applied for, was "a sign capable of being represented graphically." Nestlé argued in the negative, averring that the description of the trademark fell short of satisfying the criteria laid out in the case of Sieckmann (C-273/00). This case set out the parameters for when a mark can be said to be capable of being represented graphically; specifically, Sieckmann requires that the description of the mark be clear, precise, self-contained, easily accessible, intelligible and objective. The High Court judge disagreed with Nestlé, stating that the language of Cadbury's trademark registration was not impermissibly vague under the Sieckmann framework. In so stating, the court dismissed Nestlé's appeal.

This case should bring to mind for American attorneys the case of Qualitex Co. V. Jacobson Products Co., Inc., 514 U.S. 159 (1995). In Qualitex, a unanimous Supreme Court held that a color; here, greenish-gold, could fulfill the requirements for trademark registration under the Lanham Act, as long as the color had acquired secondary meaning.

November 21, 2012

Pepperdine University School of Law Straus Institute for Dispute Resolution


In July 2012, the Straus Institute announced a new initiative focusing on dispute resolution in the areas of Entertainment, Media & Sports (EMS@Straus). The aim of EMS@Straus is to provide a center for speakers, conferences, trainings/classes, and externships in this area, including inter-disciplinary coursework and other programming such as Speaker Events, Industry Expert Conversations and is in the process of organizing Continuing Legal Education Conferences and webinars. The leaders of the Project have been working closely with the Editors of Pepperdine Law School's Law Review and also the University's Center for Entertainment Media and Culture on innovative new symposia in these fields. The members of Pepperdine's Sports and Entertainment Law Society (SELS), bar association and other professional and industry groups are actively involved in the development and coordinated staging of these activities.

A summary of EMS@Straus Activities includes:

Launch of EMS@Straus: Summer 2012 Program in London

EMS@Straus launched in July 2012 with a 2-week intensive course on Olympic & International Sports Dispute Resolution in London, on the eve of the 2012 Olympic Games. The class was taught by Pepperdine Sports Law Professor Maureen Weston, and Jeff Benz, Esq., former general counsel for the U.S. Olympic Committee (USOC) and arbitrator with the Court of Arbitration for Sport (CAS). Among the many experts to meet with the students were Michael Beloff, QC, an English barrister and arbitrator specializing in international sports law, the Athlete Ombudsman, Associate General Counsel, and Chief of Security with the United States Olympic Committee, and General Counsel and three deputy attorneys from the London Organizing Committee for the Olympic Games. The students visited and met with officials from the U.K. Anti-Doping Agency, Sport Resolutions, Inc., NBA London, British Olympic Association, and Human Rights Watch. Cultural excursions included visits to Parliament, a tour of legal London, Chariots of Fire theater; the National Gallery, a private tour of Arsenal Futbol Stadium, and a trip to Olympic Park.


Industry Speakers

As part of a comprehensive Project to develop and enhance the School of Law's offerings to students and graduates, the Straus Institute's Entertainment Media and Sports Dispute Resolution Project (EMS@Straus) has been working with the Sports and Entertainment Law Society's (SELS) leaders to bring industry expert speakers to campus for luncheon briefings on the work they do, current industry issues and to advise on career paths based on their own professional experiences.

Beginning in September, once or more per month during the Fall 2012 Term, these industry experts have come to campus to participate in such briefings and spoken on the following topics:

Eyal Aharonov, Entertainment Lawyer, Attorney at Aharonov Law Group. Formerly at Trancas International Films, Inc., Adamson Ahdoot LLP, Doniger Burroughs APC. J.D., Entertainment, Entrepreneurship at Pepperdine University School of Law

Laura McDonald, Entertainment Lawyer, Independent Artist Management, Denver Music Examiner @ J.D., Pepperdine University School of Law, B.A., University of Notre Dame.

Catherine Baggett, Entertainment Lawyer, Music Business & Legal Affairs at The Walt Disney Company. Formerly with Rhino Entertainment, The Walt Disney Company, Carroll, Guido & Groffman LLP. J.D., Pepperdine University School of Law
Topic: Carving Your Path in the Entertainment Industry; Recent Grads Weigh In _____________________¬____________

Rodney Smith, Distinguished Professor of Law, Director of Center for Sports and Law Policy, Thomas Jefferson School of Law, San Diego
Topic: Gladiators in the 21st Century; Violence and Injuries in Athletics

Vikki Karan, Head of Client Services, William Morris Endeavor, Beverly Hills. Previously at The Endeavor Agency, NYU Stern School of Business, Virus 23. J.D., Law, Entertainment, International Entertainment Law at Pepperdine University School of Law
Topic: The World of an Agent

Steven Stern, Senior Vice-President of Music at APM Music, Los Angeles. Previously with Media Ventures with Hans Zimmer. Education: Music Theory and Classical Guitar at the Peabody Conservatory of Music, Film Music Composition at Berklee College of Music
Topic: Law and Custom Music Houses

Josh Luchs, Former NFL Player Agent. Author of Illegal Procedure; A Sports Agent Comes Clean on the Dirty Business of College Football.
Topic: Confessions of an Agent

Gordon Firemark, Solo Entertainment Law Practitioner, Los Angeles. Previously Entertainment Law Update Podcast, Academy for New Musical Theater. J.D., Law, Southwestern University School of Law
Topic: Ahead of the Curve; Utilizing Technology in a Solo Entertainment Law Practice

Paul Friedman, Senior Vice-President of Music Affairs, SONY Pictures Entertainment, Culver City. Previously with King, Holmes, Paterno & Berliner, LLP; Codikow, Carroll, Guido & Groffman; Fox Music. MBA at Tulane University- A.B. Freeman School of Business
Topic: Studio Development, Licensing and Use of Music in Film, Television and Digital Platforms

EMS & Pepperdine Law Review Symposium on College Sports

After a break for the examination period and the holidays, these luncheon speaker programs will resume in January 2013 and continue throughout the Term. On April 5, 2013, EMS@Straus, lead by Faculty Director and Law Professor Maureen Weston, working in partnership with the Pepperdine Law Review and its Symposium Editor, Michael Wood, will be hosting a symposium entitled The New Normal in College Sports: Realigned and Reckoning at the Law School.


Professor Weston's Fall 2012 Sports Law class included not only a study of the many legal issues involved in amateur, professional, and Olympic/International Sports, the students also engaged in mock preliminary injunction hearings, collective bargaining and salary contract negotiations, and policy review hearings, and each student presented findings and recommendations from their individual research and writing projects. In addition, the class included visits with key industry experts, including:

Danny Sussman, established Hollywood Talent Manager at Brillstein Entertainment Partners, formerly with William Morris Agency in Beverley Hills, who spoke on the topic of "The Business of the Sports and Entertainment Business."

Robert Hacker, V.P. of Business & Legal Affairs at FOX Sports, speaking about "Representing the Sports Network: Negotiations, Legal Issues, New Media."

Brian Halloran, NCAA Committee on Infractions, speaking on "NCAA Infractions Process: Investigation, Enforcement, Sanctions" and

William Nix, former V.P., Legal & Business Affairs for NBA Properties and currently Chairman of the Creative Projects Group, speaking on the topic of "Intellectual Property Licensing, Sponsorship and Marketing in Professional, Olympic and Collegiate Sports."

Site visit to the Pepperdine Athletic Department, and meeting with Athletic Director Dr. Steve Potts and Associate Director/Compliance Brian Barrio to learn about the many aspects of operating a college athletic program.


Pepperdine students Amanda Fletcher, Kara Ritchey, Sandy Ciel, and Jessica Johnson participated in the Entertainment Law Negotiation Competition at Southwestern University Law School. Brad Raboin, a School of Law Alum 2012, helped with coaching the team. The students worked hard in their preparations of representing the role of counsel for an entertainment production company in negotiations with talent and a television network contract. 24 teams from across the country competed. Entertainment industry lawyers served as judges and gave helpful and positive feedback to our students.

In January 2013, Dan Paret, SELS President, and Kevin Dulaney will represent Pepperdine at the Tulane Baseball Arbitration Competition.

In November 2013, under the supervision of Patty Hayes and Co-Chairs, Kristine Gamboa and Jessica Johnson, Pepperdine hosted its 15th Annual National Entertainment Moot Court Competition with twenty-four law schools competing from around the United States.


For information on how to become an EMS@Straus/SELS guest speaker or classroom visiting expert speaker on campus, or to recommend one, please contact:

Daniel Paret, SELS President,

Jeffrey Welsh, SELS Vice President,

William Nix, Managing Director, Entertainment, Media and Sports Dispute Resolution Project at the Straus Institute for Dispute Resolution and Chairman, Creative Projects Group.

Maureen Weston, Professor of Law and Faculty Director of the Straus Institute of Dispute Resolution's Entertainment, Media and Sports Dispute Resolution Project

For further information on EMS@Straus or SELS, please access the following:

SELS Twitter:

SELS Facebook:

November 30, 2012

Week in Review

By Martha Nimmer

More Time in the Penalty Box for Hockey Fans?

Much to the dismay of hockey fans across North America, the National Hockey League (NHL) has cancelled another round of games, this time nixing regular season games through December 14th, as well as the All Star Game scheduled for January 27, 2013. Fans fear, however, that the entire season may be the next thing on the NHL's chopping block, as was the case with the 2004-05 hockey season. This fear comes on the heels of continued disagreement between the NHL and the NHL Players' Association (NHLPA), the union for professional hockey players in the NHL. The NHLPA, according to its website, is charged with enforcing fair terms and conditions of employment for NHL members.

This latest NHL lockout stems from NHL owners' desire to reduce the players' union total hockey-related revenue percentage from 57 to 46%. The League's initial plan would also eliminate signing bonuses and would require that yearly salaries be the same for every year of a player's contract. Additionally, the proposed deal would also eliminate salary arbitration, according to reports from The New York Post.

On Wednesday, the players' union submitted its own proposal, which was subsequently rejected, leaving the owners and players at odds once again. Gary Bettman, commissioner for the NHL, commented that the two sides still remain "far apart." In this most recent proposal, the NHLPA offered to "link the players' share to revenue in the league's preferred percentage-based system," a move that some onlookers considered a substantial concession to the NHL. The lockout, however, continued.

Although the NHL and the NHLPA have yet to reach an agreement, most parties can easily agree that the latest rounds of game cancellations have resulted in millions of dollars of lost revenue. Commissioner Bettman said last week that the "damage incurred from the lockout has resulted in the league losing between $18 to $20 million by the day."

For more up to date information on this story, visit:

Fancy (and Fake?) Footwork

Earlier this month, shoe designer Charles Philip Shanghai filed suit against the Gap in federal court in Los Angeles, alleging trademark infringement and dilution. Charles Philip Shanghai, referred to simply as "Charles Philip" on the insoles of his designer slippers and moccasins, is seeking damages from Gap and is demanding that the California-based apparel company cease manufacturing and selling the copied footwear.

The Charles Philip loafers have been spotted on the feet of celebrities such as Jessica Alba, Rihanna, and other well-heeled stars, and retail for $135 to $160. In contrast, the Gap loafers cost less than $50. A notable feature of the Charles Philip shoes is the blue and white striped lining on the inside of the walls of the shoe. Previously, the Gap loafers in question sported a similar blue and white striped lining, and were referred to on the Gap website as the "Phillip Moccasin Slipper" and the "Phillip Slipper." (One wonders whether the addition of the second L in Gap's "Phillip Slippers" was intentional or a mere coincidence.) The loafers and slippers currently for sale from Gap, however, no longer have the striped lining and are not marketed under the name "Phillip."

For trademark law practitioners and fashionistas, this case should bring to mind the more than year-long legal battle wherein celebrity shoe designer and footwear demigod Christian Louboutin sued Yves Saint Laurent (YSL) over its use of red soles on the bottoms of its red high-heeled pumps. In that case, concluded in September, a federal appeals court held that Louboutin had a valid and enforceable trademark for the use of red outsoles, but only when the rest of the shoe was painted in a different color, thereby preserving YSL's right to create monochromatic red footwear.

Katt Williams' Onstage Meltdown

Katt Williams is no stranger to legal woes, and is now facing new legal troubles following a bizarre and disturbing onstage meltdown earlier this month in Oakland, California. When audience members arrived to the comedian's performance on November 16th at the Oracle Arena, they expected about an hour of stand-up comedy from the celebrity perhaps best known for his roles in the movie Friday After Next and the television show Wild 'N Out. Instead, Williams took off his clothes, confronted audience hecklers and attempted to fight three audience members before (mercifully) ending the show after just 10 minutes. Williams' own security team actually had to remove him from the stage. Attendees, who paid between $33 to $94 for tickets were, unsurprisingly, not happy. Luckily for audience members, Brian Herline, one of the attendees, has brought suit against Williams and promoter Live Nation Worldwide, Inc. for "failing to perform." The suit, filed on November 21st in Alameda County Superior Court, alleges breach of contract, unjust enrichment and violation of California's unfair competition law. The plaintiff, who is filing for class action status, seeks punitive damages and a refund of the ticket price paid for the November 16th performance.

Read the full complaint here:

50 Shades of Copyright Infringement

Given the content of E.L. James' bestseller, 50 Shades of Grey, it was only a matter of time until someone decided to make a pornographic version of the book (although some may contend that the book itself already borders on the pornographic). Nevertheless, that did not prevent Smash Pictures, Inc. from going forward with an adult adaptation of the novel. Smash Pictures executive Stuart Wall explained the "artistic reasoning" behind his company's decision to go forward with the porn version: ""Since they are going to make a mainstream [film] of the books, too, dabbling in the adult world we're choosing to go with a XXX adaption which will stay very true to the book and its S&M-themed romance."

The Fifty Shades trilogy traces the erotic relationship of Anastasia Steele, referred to as a "naive college graduate", and Christian Grey, "a wealthy but tormented entrepreneur." The first book in the trilogy was released in the United States in April 2012, and has met with dramatic commercial success. According to the plaintiffs' complaint, worldwide sales of the books have exceeds more than 40 million copies, and all three books have been on the New York Times Paperback Trade Fiction Bestseller list. Given the books' acclaim, Universal Studios, which shelled out $5 million this year to acquire the movie rights to the series, is not pleased that Smash Pictures has made a XXX version of the book. In fact, Universal Studios and the publisher of Fifty Shades of Grey, Fifty Shades Limited, have joined in a suit to stop the "willful attempt to capitalize on the reputation of the book." Filed on Tuesday in the Central District of California, the plaintiffs allege that Smash and other defendants lifted "exact dialogue, characters, events, story and style" from the 50 Shades series. In fact, Universal and Fifty Shades Ltd. aver that the XXX adaption "is not a parody, and it does not comment on, criticize, or ridicule the originals. It is a rip-off, plain and simple." To wit, the plaintiffs' complaint contains pages and pages of side-by-side comparison of dialogue from the book and dialogue of the opening scene of the XXX adaptation. In addition to a claim of copyright infringement, the plaintiffs also raise trademark dilution, false designation of origin, false advertising and unfair competition claims, in addition to causes of action arising under California law.

Read the full complaint here:

It's A Pirate's Life For Me

And now, for something completely different: Richard O'Dwyer, 24 year old British student and founder of TVShack, has avoided extradition to the United States, at least for now. In January of this year, a judge in the United Kingdom ordered O'Dwyer's extradition to the United States to face legal action here for online piracy, specifically, profiting from links he provided on his personal website to free movies and television programs. In response to the extradition order, Wikipedia founder Jimmy Wales launched a campaign to stop O'Dwyer's extradition. If extradited, O'Dwyer faced 10 years in prison in the United States. Luckily for O'Dwyer, however, he will only have to pay a nominal fine and travel to the U.S. to execute the agreed to deferred prosecution agreement.

A Case of the Cyber Mondays

Every Monday after Thanksgiving, still in a tryptophan-induced haze, millions of Americans log onto their computers to find online deals on countless products, from iPods to Coach handbags to DVDs of Homeland. A darker side to this flood of e-commerce is the growing number of companies and individuals selling counterfeit merchandise online. Luckily for consumers, however, Immigration and Customs Enforcement is on the case. In connection with cyber Monday, customs officials seized over 130 domain names allegedly selling counterfeit merchandise, such as NFL jerseys and Adobe software. According to an ICE official, "among the domain names seized was a site selling DVDs of 100 Years of Disney," despite the fact that studio was founded 89 years ago. Other seized sites include,,, and, as well as

According to U.S. officials, 2012 "marks the third year that ICE has timed domain name seizures to Cyber Monday." This year, ICE officials also coordinated seizure efforts with authorities in Belgium, the United Kingdom, Denmark, France and Romania. The focus of customs officials was on seizing "sites selling pirated trademarked goods as opposed to those trafficking in streaming movies and file sharing."

December 6, 2012

Week in Review

By Martha Nimmer

Friend Request Denied

U.S. District Court Judge Richard Seeborg has given his initial approval to a settlement offer made by Facebook in the case of Angel Fraley et al. v. Facebook, Inc. This is the social networking giant's second attempt to resolve a class action lawsuit that was commenced last year. The case, filed in the Northern District of California and involving over 100 million potential class members, centers on the "critical issue of proper notice to users of social media as to their relationship to advertising online . . . ." Specifically, the lawsuit involves the use of Facebook's main advertising vehicle "Sponsored Stories." Plaintiffs allege that their names and likenesses were used without their prior consent in Sponsored Stories ads shown to their Facebook friends, in violation of the plaintiffs' right of publicity. Judge Seeborg rejected Facebook's initial settlement offer from August, which failed to award money to Facebook users whose personal information had been used unlawfully.

Under Facebook's new settlement proposal, users may claim a cash payment of up to $10 each, the funds to be paid from a $30 million settlement fund. Facebook also agreed to develop new online tools that would permit members to see what personal content may have been displayed in Sponsored Stories advertisements. A hearing on the fairness of the settlement offer is scheduled for June 28, 2013.

This news comes just a day after Facebook started to allow its more than 1 billion members to begin voting on changes to the website's policies, changes that include new privacy practices stemming from Facebook's recent acquisition of photo sharing program Instagram. Another policy at issue would "loosen the restrictions on how members of the social network can contact other members using the Facebook email system." These changes to Facebook's privacy practices have gained the attention of privacy advocates and other watchdog groups around the globe. The Ireland-based Data Protection Commission has asked Facebook to provide more information about its policy proposals.

Facebook members have until December 10th to vote on the policies. The vote, according to Facebook, is only binding if at least 30% of users vote. The last two "elections" held by Facebook failed to reach that threshold, however. Whether these privacy policy changes bring Facebook new legal troubles remains to be seen.

America's Next Top Rapper

Whether your dream is to become a supermodel, live on a deserted island with a bunch of strangers, or be yelled at by fitness guru Jillian Michaels as you exercise, there is probably a reality television show that can make that goal a reality. This was the thinking behind the rap competition, "America's Next Top Rapper," scheduled for December of last year. A website promoting the competition claims that aspiring rap and hip hop artists can win $20,000, a record deal with Universal and help from "a hit production team." To garner media attention for the event, creators Omnipresent Media and Lawrence "Amar" Wright enlisted the help of hip hop artist "Trina"--also known as Katrina Taylor. Taylor agreed to promote the event and serve on a three-person panel that judged the rap competition. Taylor, however, failed to promote the competition and demanded more money to ensure her appearance, according to a complaint filed by Omnimedia and Lawrence Wright in Queens County Supreme Court in New York.

"Trina, despite being paid to do so, never attended or participated in the competition in any form or fashion as agreed," the complaint states. As a result of Taylor's breach, plaintiffs aver, event promoters were "forced to arrange for a substitute artist to appear, on short notice . . . ." Plaintiffs are seeking $50 million in damages.

Royalty Rules (No, Not Kate Middleton and Prince William)

Meanwhile, in the nation's capital: the Copyright Royalty Board has issued new regulations for licensing public broadcasting organizations, such as National Public Radio (NPR) and Public Broadcasting Service (PBS). The Copyright Act requires that the federal government must update its licensing rules and rates for noncommercial television and radio broadcasting every five years.

The Copyright Royalty Board received input from various noncommercial broadcasting organizations concerned about the new regulations, among them the American Society of Composers, Authors and Publishers (ASCAP), Broadcast Music, Inc. (BMI) and the Harry Fox Agency. The new rates will take effect on January 1, 2013 and will remain on the books until December 31, 2017.

Notable changes to the rates include the royalty rates paid by PBS and NPR: under the new rates, licensing a musical composition for use in a PBS feature presentation will cost $232.18; the performance of a work on a NPR feature presentation will now cost $23.53. The new rates also include a new tiered system for determining the royalty rates paid by college radio stations--the rates will be based on the number of students enrolled at a college or university. Finally, the rules also laid out tiered rates for Christian and talk radio stations, whose rates will be based on the number of people the station reaches.

Read the final rate rules:

Read the petitions submitted as part of the determination of reasonable rates and terms for noncommercial broadcasting:

Show Me the Money!

Crowdfunding uses the Internet to elicit small monetary contributions from a large number of contributors. Crowdfunding platforms such as Kickstarter and Indiegogo have made it easier for start-up projects and young entrepreneurs to raise funds, despite the fact that traditional lending institutions are not "loaning money like they used to." Now, there is a move to allow contributors to reap financial rewards from their contributions to indie film projects: according to Variety, "equity crowdfunding would allow investors to see a return on their money, opening the door for financiers to contribute from $100 up to $100,000 each toward the next breakout hit." The problem with this plan, however, is that it is not exactly legal--yet.

Crowdfunding risks running afoul of federal securities law on two grounds. First, some crowdfunding involves selling securities, which brings into play the registration requirements of the 1933 Securities Act. Second, the websites that make crowdfunding possible may fall under the definition of "broker" or "investment adviser," according to the amorphous language applied by the Securities and Exchange Commission. To clarify these ambiguities, the SEC has commenced the preliminary stages of the rule drafting process, which normally takes three months. Hopeful members of the independent film and crowdfunding communities are cautiously optimistic that the SEC will release guidelines by the second quarter of 2013.

For more information on crowdfunding, see: and Ronald L. Barabas, Crowdfunding: Trends and Developments Impacting Entertainment Entrepreneurs, Volume 23, Number 2 of the Entertainment, Arts and Sports Law Journal, (Summer, 2012).

Same Suit, Different Defendant

Undeterred by previous unsuccessful attempts to sue Marvel Entertainment, Stan Lee Media, Inc. (SLMI) has now gone after Disney in an effort to regain control over famed and iconic characters Spider Man, X-Men and the Fantastic Four, among others. Stan Lee, the comics legend who created the Spider Man, X-Men and Fantastic Four comic books series, founded SLMI in 1998 after disputing with Marvel. SLMI's suit, filed in October in Colorado federal court, alleges that Lee (who is no longer associated with SLMI) did not properly assign the works to Marvel, and that Disney never recorded its agreement with Marvel with the U.S. Copyright Office. As a side note, it should be pointed out that Disney purchased Marvel in 2009.

In its complaint, SLMI seeks billions of dollars in damages for the unauthorized use of Lee's comic creations in numerous films such as Spider Man and The Avengers. SLMI, according to Hollywood Reporter, "hoped to put the burden of proving rightful ownership upon Disney." So far, however, that plan has yet to succeed: On November 30th, Disney filed a motion to dismiss SLMI's complaint, calling it "flawed beyond cure." Among Disney's assertions, the company states that there is "no conceivable basis" on which SLMI can bring a copyright claim against The Walt Disney Company. Firstly, Disney avers, Colorado lacks personal jurisdiction over the defendant. Additionally, Stan Lee Media's complaint neglected to "plead a plausible copyright infringement claim," by failing to mention which specific works and characters it owns, instead simply referring to "comic book characters . . . that (Lee) had previously created or would create." Finally, among the many deficiencies listed by Disney, SLMI's suit seeks to relitigate the issue of copyright ownership, even though three different courts on three different occasions ruled on the issue. "The instant suit is just plaintiff's latest attempt to assert the same rights allegedly stemming from the 1998 agreement," says the Disney motion to dismiss.

Read the motion to dismiss here:

Time to Talk Turkey

And now, to a different type of art: ancient antiquities. On Monday, the Dallas Museum of Art returned an ancient mosaic to the nation of Turkey. The piece dates from approximately 194 C.E., and depicts Orpheus--the ancient Greek musician, poet and prophet--using his lyre to tame a group of wild animals. The museum decided to return the marble mosaic after researching its provenance and deciding that the work was likely looted years ago from an archaeological site in the area around the city of Sanliurfa, located in present day southeastern Turkey. The decision to return the ancient mosaic is part of the museum's plan to foster good relations with foreign museums, in an effort to facilitate exchange agreements with art institutions abroad. Maxwell L. Anderson, the director of the Dallas Museum of Art, also said that the return was part of a broader effort to tackle provenance issues head on: "[w]hat I didn't want to happen here was a succession of slow-motion claims coming at us." Turkish officials, according to Anderson, had been trying to locate the mosaic for some time, and "provided photographs of a looted site near [modern day Sanliurfa] whose physical characteristics closely matched those of the mosaic."

The decision of the Dallas Museum of Art follows robust efforts by Turkey to repatriate antiquities it says were unlawfully acquired by American and European museums. In the last few months, Turkey has demanded that the Metropolitan Museum of Art return artifacts that the Met says were legally acquired in the 1960s before being donated to the museum in the late 1980s. Unconvinced, Turkish officials filed criminal charges in Turkey this summer, seeking an investigation into the allegedly illegal excavation of 18 antiquities that are now part of the Met's Norbert Schimmel Collection. Directors from the Pergamon Museum in Berlin have even accused Turkish officials of "undue intimidation."

Turkey's efforts to reclaim allegedly looted antiquities from abroad has spurred international debate over who owns these priceless works of art, given the fact that national and regional borders have changed frequently in the last 100--let alone 1,000 --years. The UNESCO Convention of 1970 on the Means of Prohibiting and Preventing the Illicit Import, Export and Transfer of Ownership of Cultural Property is the international treaty that permits museums to "acquire objects that were outside their countries of origin before 1970." Although Turkey ratified this treaty in 1981, the country has relied on a 1906 law created during the Ottoman Empire that instituted a flat out ban on the export of cultural artifacts. Whether Turkey has any moral or cultural claim to these artifacts, however, is further complicated by the fact that its own museums are filled with pieces acquired by the Ottoman Empire during their rule over parts of the Middle East and southeastern Europe.

Read the UNESCO Convention here:

Tax Woe for LiLo

Lindsay Lohan is not having a very good year. Last month, the Liz & Dick star was arrested in New York for allegedly punching a woman in the face, and is now being charged with third-degree assault. This charge comes on the heels of charges filed against her in Los Angeles for obstruction of justice and lying to a police officer following a car accident this past summer. Now, the IRS has seized all of her bank accounts and has filed tax liens against the star for 2009 and 2010. The once-promising star also has unpaid taxes from last year. The Huffington Post reports that Lohan is said to owe the federal government over $230,000.

In Memoriam: Dave Brubeck

Dave Brubeck--the jazz musician best known for pieces such as "Take Five"--passed away on Wednesday, a day short of his ninety-second birthday.

Mr. Brubeck was born in 1920 near San Francisco, California. His mother, a choir director at a local church, introduced him and his two brothers to various musical instruments. Until attending college, however, Mr. Brubeck had no interest in pursuing a career in music--he planned to follow in his father's footsteps and become a cattle rancher. Luckily for the music world, however, Mr. Brubeck switched his major from veterinarian sciences to music.

After serving in the Army during World War II and playing with the Army band, Mr. Brubeck attended Mills College where he studied jazz and forged important connections with other musicians. Mr. Brubeck's first musical ensemble was composed of several fellow Mills students.

In 1954, Mr. Brubeck became the second jazz musician, after Louis Armstrong, to be featured on the cover of Time. That same year, he signed with Columbia Records, promising to deliver two albums a year, including the album "Time Out," recorded in 1959. Notably, "Time Out" has since sold about two million copies. By the end of the 1950s, Mr. Brubeck had "broken through with mainstream audiences in a bigger way than almost any jazz musician since the Second World War." The popularity of his music remains today.

In addition to jazz music, Mr. Brubeck is also remembered for his strong convictions. In the 1950s, the composer clashed with college deans who told him not to perform with a racially mixed band. In 1958, Mr. Brubeck refused to visit South Africa when it was revealed that he would be contractually required to play with an all white band. Additionally, as his obituary in the New York Times notes, the composer also used jazz "to address religious themes and to bridge social and political divides." Specifically, the work "The Gates of Justice" dealt with African Americans and Jews in America. Another piece, "Truth Is Fallen," commemorated the killing of students at Kent State University who were protesting the Vietnam War.

Mr. Brubeck was named a Jazz Master in 1999 by the National Endowment for the Arts, and in 2009, received a Kennedy Center Honor. He is survived by his wife, five children, ten grandchildren and four great-grandchildren.

December 13, 2012

Week in Review

By Martha Nimmer

This Means War

David Hester, "Storage Wars" personality and creator of "YUUUP!" catch phrase paraphernalia, has sued A&E Television Networks (A&E) over his allegedly wrongful termination from the hit reality TV series. Hester's suit also contends that the show is "rigged," in violation of the Communications Act of 1934. The suit, filed on Tuesday in Los Angeles Superior Court, states that "A&E has committed a fraud on the public and its television audience in violation of the Communications Act of 1934, which makes it illegal for broadcasters to rig a contest of intellectual skill with the intent to deceive the viewing public." Specifically, Hester alleges that A&E planted valuable items in some of the auctioned storage lockers, items ranging from a BMW mini car to newspapers from the day that Elvis died. The complaint avers that Hester was wrongfully terminated when he brought this practice to the attention of A&E producers. A&E has declined to comment on the suit, stating that it does not discuss pending litigation, but has previously asserted that the show is not faked.

"Storage Wars" follows the pursuits of "an eclectic group of modern day treasure hunters" who earn their living bidding on and selling off the contents of abandoned storage lockers located throughout southern California. According to the show's introduction, when a storage locker is not paid for or abandoned, the contents of the lockers are auctioned off to buyers. The buyers are usually given a few minutes to observe the lockers, but may not enter them or touch their contents. The buyers then bid on the lockers' contents, and only then may the winning bidder may enter the storage locker and inspect his winnings. The goal is to sell the contents of the locker at a profit. The original series debuted in 2010, with spinoffs in Texas and New York debuting in 2011 and 2013, respectively.

Read the complaint here:

Guardians of Eden Do Battle With Avatar

If you thought you were done hearing about Avatar for awhile, you were wrong. Since the movie was released in 2009, the entertainment world has been abuzz over the highest grossing film of all time. Unsurprisingly, this treasure trove of a movie has brought it with seemingly endless litigation aimed at getting a piece of the Avatar pie.

The latest lawsuit comes from Gerald Morawski, who met Avatar creator James Cameron in 1991. Morawski's complaint alleges that the plaintiff pitched a film called "Guardians of Eden" to Cameron in the early 1990s. The proposed film project recounted the "epic" struggle between evil mining companies set on destroying the planet to satisfy their greed, and a brave indigenous tribe that peacefully coexisted with the rainforest. Cameron, however, states that he remembers no such pitch meeting, and that his $2.8 billion dollar baby was his own, independent creation. In a 45 page declaration, Cameron recounts how he came up with the Avatar story, the idea for which came to him when he was a child in the 1960s. Morawski disputes this claim, however, noting that Cameron failed to commit the story line to paper until after meeting with the plaintiff. The defendants, however, are hoping to dispose of the suit via summary judgment.

Why Didn't the Mayans Predict This Lawsuit?

Cue the Indiana Jones theme music, because here comes a lawsuit involving the world-renowned adventurer!

Jaime Awe, a real-life Indiana Jones and director of the Institute of Archeology of Belize, filed suit last week in Illinois federal court on behalf of the nation of Belize. Awe is seeking the return of an ancient crystal skull, popularized by the 2008 film Indiana Jones and the Kingdom of the Crystal Skull (Crystal Skull), from the family that allegedly stole the piece almost a century ago from Belize. Dr. Awe has also named Lucasfilms, the new owner of the Walt Disney Co. and Crystal Skull distributor Paramount Pictures, for using a replica "likeness" of the skull in the most recent Indiana Jones movie. Among the damages alleged by Awe are the "illegal profits" of Crystal Skull. According to Hollywood Reporter, the movie grossed around $786 million.

According to the complaint, the skull is believed to have originated in Mayan culture. The Mayans, when they were not busy predicting the end of the world, carved the skull from clear or white quartz, and attributed supernatural powers to the object. Only four skulls are known to exist today: "three are on public display at the British Museum in London, the Musée du quai Branly in Paris and the Smithsonian in Washington." As for the fourth skull, Dr. Awe states that it was removed illegally from Belize in the 1920s by English adventurer F.A. Mitchell-Hedges. "Lucasfilm never sought, nor was given permission to utilize the Mitchell-Hedges Skull or its likeness in the Film," states the complaint. "To date, Belize has not participated in any of the profits derived from the sale of the Film or the rights thereto." Dr. Awe is suing the Mitchell-Hedges family for the removal of the skull from Belize. No word yet on whether Dr. Awe will make a cameo appearance in sequel to the Crystal Skull...

Read the complaint at the end of the story:

Illegal Contact!

Bad news for EA Sports. A federal court in Maryland ruled last month that EA Sports' (EA) use of the Baltimore Ravens' former team logo does not constitute fair use. This case harkens back to events in 1995, when plaintiff Frederick Bouchat "created and copyrighted a drawing of a raven clutching a shield emblazoned with a capital letter B." The NFL team copied Bouchat's illustration and incorporated the design into its logo, which was used on the team's helmets during its first three seasons, from 1996 to 1998. The artist previously sued both the NFL and the Ravens for copyright infringement, seeking $10 million dollars in damages. Unluckily for Bouchat, however, the jury declined to award him damages, finding that "no part of the defendants' profits was attributable to [their] copyright infringement." The Ravens adopted a new logo in 1998.

The story, however, does not end there. Seeking to ensure that its Madden NFL series was highly realistic, EA added a "throwback jersey" feature to the 2010, 2011 and 2012 versions of its highly popular video game. Among the "throwback" options recreated by EA was the 1996 Baltimore Ravens uniform, which featured the infringing "Flying B" logo. Bouchat promptly filed suit against both the NFL and EA, alleging copyright infringement. The defendants moved for summary judgment, arguing that their use of the logo was protected under the fair use exception to the Copyright Act. The court agreed with Bouchat, analyzing and applying the four fair use factors listed in 17 U.S.C. § 107: "(1) the purpose and character of the use, (2) the nature of the copyrighted work, (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole, and (4) the effect of the use on the potential market for the original work."

Applying the first factor, the court held that the "purpose and character" of the use weighed in Bouchat's favor, stating that EA had used the logo in a nontransformative way, for a substantially commercial use. Similarly, the second and third factors also weighed against a finding of fair use, given the fact that Bouchat's drawing is a creative work deserving of robust copyright protection, and because the entirety of Bouchat's creation was used in the video game. Finally, as for the fourth factor, the court held it "is, if not neutral, only slightly favoring a finding of fair use." Taking all four fair use prongs together, the court ultimately found that EA's use of the Flying B logo in Madden NFL was not a fair use.

December 20, 2012

Week in Review

By Martha Nimmer

Picture This

Instagram, Facebook's billion dollar baby, is poised to change its Privacy Policy and Terms of Service starting in 2013. The proposed changes have already shocked the Instagram world, from professional photographers who use the app to showcase their works to a global audience, to Brooklyn hipsters who chronicle their newest vegan, locally sourced brunches. The changes will go into effect on January 16th, but will not apply to pictures uploaded to Instagram before that date.

The proposed changes include modifications to how Instagram utilizes users' personal information, to how Instagram may use and market users photos. For instance, under the new privacy policy, Instagram is permitted to share user information with its parent company, Facebook, and outside affiliates and advertisers. The goal behind this change, according to Instagram, is to permit it and Facebook to communicate more seamlessly about its users. Another change, which has received much uproar from users, has to do with the "Rights" section of the Terms of Service. Under the new Terms, Instagram is now allowed to use its users' photographs and identities in advertisements. Specifically, the Terms state: "You agree that a business or other entity may pay us to display your username, likeness, photos (along with any associated metadata), and/or actions you take, in connection with paid or sponsored content or promotions, without any compensation to you . . . ." According to the New York Times, Marc Rotenberg, executive director of the Electronic Privacy Information Center, said that the use of a person's likeness in ads could "run into some state laws protecting people's privacy." Practitioners of privacy law and lawyers with even the most basic knowledge of state right of privacy/right of publicity laws will likely comment that this modification to the Instagram Terms of Service will likely run afoul of state law, possibly culminating in pricey class actions if these changes are actually implemented.

Instagram has also said that underage users are not exempt from the above changes. According to the New York Times, "Although Instagram says people must be at least 13 years old to sign up for the service, the new terms note that if a teenager signs up, they are agreeing that a parent or guardian is aware that their image, username and photos can also be used in ads." Although Instagram may insist that its underage users are not exempt under the new terms of service, state and federal laws aimed at protecting minors, such as the Children's Online Privacy Protection Act (COPPA), say differently. COPPA, which took effect in 2000, applies to websites that are developed expressly for children, but also covers any online service that is likely to be used by children or that collects information from children.

Creeped out yet? Upset? Too bad, says Instagram. The only way to "opt out" of these changes is to delete your account--Instagram's new Terms of Service state that "by accessing or using the Instagram website, the Instagram service, or any applications (including mobile applications) made available by Instagram (together, the "Service"), however accessed, you agree to be bound by these terms of use." In response to these changes, other photo sharing sites like Flickr have been trying to attract Instagram.

Read the text of the proposed changes here:

Read the text of COPPA here:

"I'm your biggest fan, I'll follow you until you love me / Papa, paparazzi"

Many thanks to Lady Gaga for those fitting lyrics. Now, we turn to California, where the State's Attorney is hoping to save a state motor vehicles law enacted to dissuade paparazzi from reckless driving while pursuing celebrities. Last week, attorneys for the State of California petitioned the Appellate Division for a review of Los Angeles Superior Court Judge Thomas Rubinson's decision to overturn the 2010 law, calling it an impingement of the First Amendment. Paul Raef, a California-based photographer, was prosecuted under Section 40008 for allegedly driving 80 MPH on a busy Los Angeles street as he pursued teen heartthrob Justin Bieber in November of this year.

Raef's attorney argued that the law at issue was overbroad, thereby failing to satisfy constitutional scrutiny. The attorney added that if California wanted to prevent paparazzi from driving recklessly, the state should increase the penalties for such conduct, instead of passing a law that could be used to punish or deter members of the press from pursuing news-gathering or other First Amendment-protected activities. In response, the Los Angeles City Attorney argued that the criminal penalties used in the past have proven insufficient in deterring paparazzi from engaging in reckless driving. In their petition for appellate review, the State's attorneys also argue that Judge Rubinson used the wrong level of scrutiny when assessing the constitutional validity of the law, attributing this error to a fundamental misunderstanding of First Amendment jurisprudence.

Although at first blush the law appears exceedingly applicable to media outlets that drive recklessly when investigating the news, Section 40008 is actually applicable to any person, not just one carrying a camera or a microphone: "It was a criminal law of general application that applied to any person, including news-gatherers," states the appellate petition. The law is content neutral due to this general applicability and thus receives intermediate scrutiny as per U.S. Supreme Court precedent. Intermediate scrutiny requires the government to prove that the statute at issue involves important governmental interests, and that the law is substantially related to achieving an important governmental purpose.

The State's petition has requested an immediate stay of trial court proceedings.

Scroll down for the full text of the petition:

Read the California statute here:

Federal Felines

Ernest Hemingway is known for many things: his writing, his love of Cuba and his news coverage of the Spanish Civil War. Hemingway was also the proud owner of a six-toed cat named Snowball. Now, Snowball's polydactyl descendants are subject to federal regulation by the Department of Agriculture. How, you may ask? Well, they apparently "substantially affect interstate commerce," at least according to the 11th Circuit Court of Appeals.

These federal felines can be found at Hemingway's former Key West home, now a museum. The cats number from 40 to 50, and live and roam freely on the grounds that are enclosed by a brick fence at the property's perimeter. According to the decision, "no Hemingway cat has ever been bought or sold, although some cats have been given away at various times. However, the Museum charges admission for a tour of the property, and the tour includes seeing and discussing the roaming Hemingway cats. Approximately 250,000 visitors from within and beyond Florida visit the Museum annually. The Museum's gift shop sells cat-related merchandise online and at its physical location." As the cats are so important to the museum's continued vitality and commercial success, the exhibition of the cats affects interstate commerce, which brings the cats under the purview of Congress and the Interstate Commerce Clause of the U.S. Constitution.

What does this mean for the whiskered residents of the Ernest Hemingway Home and Museum? It looks as if the museum will have to cage the cats at night, construct a higher fence to contain them or hire a security guard to keep on an eye on them at night. The museum may also have to "tag each cat and construct 'elevated resting surfaces' for the animals," according to the 11th Circuit.

Read the decision here:

Slap Shot

Earlier this week, in anticipation of an antitrust suit brought by the National Hockey League Players' Union, the National Hockey League (NHL) and its teams filed suit in federal court in Manhattan against the players' union. The NHL's suit comes in response to actions by the Executive Committee for the NHL Players' Association (NHLPA) authorizing a vote to determine whether the union's leadership may "disclaim interest in its role as the exclusive bargaining representative of NHL players so that the NHL players could commence antitrust litigation against the NHL." The NHL has called this move "an impermissible bargaining tactic," the goal (no pun intended) of which is to gain "more favorable terms and conditions of employment in ongoing collective bargaining negotiations with the NHL."

According to the NHL's 43-page complaint, the NHLPA's "improper threats of antitrust litigation are having a direct, immediate and harmful effect upon the ability of the parties to negotiate a new collective bargaining agreement." The NHL has sought a declaration that the ongoing lockout does not violate antitrust laws, specifically, the Clayton Antitrust Act, and consequently, cannot be enjoined or result in any damages to the defendants. The owners further claim "that the Norris-LaGuardia Act deprives the federal courts of jurisdiction to enjoin or restrain the ongoing lockout . . . ." This latest suit does not bode well for hockey fans: the owners' lockout threatens to cancel the entire NHL season, for the second time in nine years.

Football fans will recall a similar turn of events in the 2011 case Brady v. NFL, et al., wherein the National Football League Players' Union was "decertified" by the players, who professed to have become not a union, but "simply a collection of individual players." Essentially, the NFLPA members felt that by decertifying their union, the players could "force" antitrust scrutiny of the owners' lockout. Whether a similar outcome results in the ongoing dispute between NHL players and owners remains to be seen.

Read the Norris-LaGuardia Act here:

I Volunteer As Tribute!

Unfortunately for online retailer Yagoozon, Inc., it does not appear as if anyone will be volunteering to take its place in a lawsuit brought against it by Lions Gate Entertainment, the producer and distributor of the hit movie The Hunger Games.

Last week, Lions Gate filed suit in the Central District of California, alleging claims of federal and common law trademark infringement, false designation of origin, federal and state law trademark dilution, state and common law unfair competition and copyright infringement. The crux of the suit centers on Yagoozon's production of a "mockingjay pin," a version which was used on the cover of Suzanne Collins' book and appears on the official poster for the next film in the trilogy, The Hunger Games: Catching Fire. Readers familiar with the book or the first film will recall that the mockingjay pin was protagonist Katniss Everdeen's "tribute token" during the annual Hunger Games, and came to symbolize rebellion against the Games and its organizer, the Capitol. The pin has also become part of a billion-dollar franchise, and Lions Gate has "taken a number of steps to register the 'mockingjay logo' at the Trademark Office."

Given how popular the Hunger Games trilogy has become, Lions Gate has been robust in defending its intellectual property rights in the works. According to the complaint, the defendants attempted to purchase Hunger Games merchandise, including the mockingjay pin, from Lions Gate licensee National Entertainment Collectibles Association (NECA). Yagoozon CFO Benjamin Joseph later sent a letter to NECA, threatening an antitrust lawsuit if NECA did not sell the requested merchandise. NECA still refused to supply the items, and shortly thereafter, Lions Gate discovered that the defendants were selling counterfeit Hunger Games merchandise online, including the iconic mockingjay pin. Included with the pin, the plaintiff claims, was packaging "virtually identical" to NECA's Lions Gate-authorized packaging. Looking at the complaint (linked to below), one can see from the exhibits that the packaging is essentially indistinguishable, aside from, perhaps, the slightly sepia tone on Jennifer Lawrence's face on the Yagoozon packaging. In its prayer for relief, the studio seeks a permanent injunction against the production, sale or marketing of the infringing items, as well as damages and disgorgement of profits earned as a result of the infringement.

Given the degree of similarity between the NECA-produced Hunger Games merchandise and the allegedly counterfeited Yagoozon-made items, it does not appear that that odds will be ever in the defendants' favor...

Read the complaint here:

January 14, 2013

Week in Review

By Martha Nimmer

Itʼs a Bird, Itʼs a Plane, Itʼs...the Ninth Circuit Court of Appeals?

Warner Brothers is breathing a huge sigh of relief. Last week week, the Ninth Circuit Court of Appeals decided that a lower court incorrectly ruled that DC Comics -- a Warner Brothersʼ company -- brokered a deal in 2001 with the estate of Superman creator, Jerome Siegel. Absent the deal, the Siegel estate would not be able to recapture its rights in the highly successful comic book hero. This decision comes just months after a federal judge ruled in October of last year that the estate of Superman co-creator Joseph Snyder would not be able to recapture its own copyrights in the brawny superhero. This is all good news for Warner Brothers: now, the company is permitted to "exploit the Superman franchise without fear of substantial legal hassles" from the Shuster and Siegel estates.

Given the widespread success of the Superman character, the estates of his co-creators have devoted many years attempting to "exploit" the termination provision of the 1976 Copyright Act, with the ultimate goal being the recapture of valuable copyrights in the character. That provision of the Copyright Act, according to the its drafters, was to give artists who gave up their copyrights before the true value of the works became known another "bite at the bargaining apple." Facing financial hardship many years ago, Siegel and Shuster gave up their rights to Superman, but for very little money, not knowing how successful their flying superhero would become. Once Supermanʼs fame and notoriety "took off," the Siegel and Shuster estates have been
determined to recapture their rights.

Read the decision here:

Aloha from Hawaii Five-O

Bad news for George Litto, the talent agent who represented the creator of the original Hawaii Five-O series: a judge has granted CBSʼ demurrer to a lawsuit brought against it by Litto, meaning that "barring any reconsideration or appeal, the network has escaped any liability."

Now, why would George Litto sue CBS over the remake of a television show that ended over 30 years ago? It turns out, at least according to Litto, that he was prevented from participating in the creation and production of the new, highly successful Hawaii Five-O series that debuted in 2010. This exclusion, Litto says, prevented him from making "big money" on the remake. The original series aired from 1968 to 1980.

Back in the 1960s, Littoʼs talent agency represented the original Hawaii Five-O creator, Leonard Freeman. Freeman died in 1974. That year, according to the Hollywood Reporter, "an amendment to the contract [between CBS and Freeman] gave CBS the right to produce the show in the future and shifted responsibility of production from Freeman's company to CBS. The Freeman estate got a huge backend profit participation, and CBS wasn't allowed to recoup production overages." Freemanʼs widow and Litto also allegedly reached an agreement in 1996 to work together on future production of the series. Later, in 2010, CBS made a deal with the Freeman heirs, intent on going forward with a remake of the popular show. This deal, at least according to Litto, cut him out of the picture--and the profits. Fast forward to May 2012: Littoʼs agency sues Freemanʼs heirs for cutting the former agent out of dealmaking. Litto has stated that this "backstabbing" has cost him tens of millions of dollars.

The case history gets even more detailed and complex, but ultimately, the presiding judge on the suit decided to dismiss CBS from the case, for a (thankfully) simple reason: "Litto had waited too long to bring the claims," the judge wrote. Specifically, Los Angeles Superior Court Judge Gregory Alarcon stated that the "[p]laintiff instituted this current action over two years after the 2010 amendment was signed. CBS has already produced the television series and to restore the consideration would essentially require CBS to 'un-make' or, in the alternative, pull what has become a very popular television series." Not wanting to disappoint the showʼs fans, and finding it impossible to "unmake" the show, Judge Alarcon decided to dismiss CBS from the suit.

The(Mis)Adventures of Bristol Palin

If you thought you heard the last of the Palins, you were wrong.

Last week, A&E Networks settled a lawsuit with Disney Channel actor Kyle Massey over the idea for a reality show featuring Bristol Palin and her son, Tripp. In the suit, brought by Massey and his mother, the plaintiffs alleged that the Masseys created a written, halfhour series featuring the Massey and Palin families. The show, entitled Bristol-ogy 101, followed the families through their normal routines, including watching Bristol attend college while raising her child. Ms. Palin, it is alleged, agreed to work with the Masseys on the show. Two years later, however, found Ms. Palin working with A&E producers on a different show, this one called Bristol Palin: Lifeʼs a Tripp. The show aired on Lifetime, a subsidiary of A&E.

The Masseys alleged that the Lifetime show, which was subsequently removed from Lifetimeʼs prime time lineup, is substantially similar to their original show concept. The plaintiffs also raised claims of copyright infringement, fraud, breach of contract, misappropriation of name and likeness, tortious interference and unfair competition,
among other claims. Before a judge could decide whether the case could go to arbitration, however, the parties came to resolution. Details of the settlement have not been made public.

We still await news, however, about whether Sarah Palin can actually see Russia from her house...

Vimeo or Vime-Uh Oh?

And now, to the wonderful world of the Web! Capitol Records and other major players in the music business asked a federal judge in New York last Friday to grant their summary judgment motion against the user-generated video website Vimeo. The suit, filed in New York federal court, commenced three years ago. Among the claims the
plaintiffs raise are those of copyright infringement, based on Vimeoʼs alleged copying, performing and distributing well known sound recordings by artists such as The Beatles, Coldplay, the Beach Boys and Nat King Cole. The initial dispute has taken three years to resolve because, as the Hollywood Reporter writes, "there was a pertinent piece of litigation about to go before appeals judges that considered the copyright liability of user-generated-content sites, Viacom v. YouTube." The Second Circuit has now decided what is required before ISPs, like YouTube and Vimeo, may gain safe harbor from copyright liability; essentially, the court ruled that that an ISP has to possess "actual knowledge of specific infringements through takedown notices or something else before being required to remove copyright material expeditiously."

Now that the Second Circuit has decided the Viacom v. YouTube case, record label attorneys have gone full force into filing for summary judgment. According to the motion, Vimeoʼs business model intentionally varies significantly from the business approaches followed by YouTube and Veoh. Vimeo, the plaintiffs write, regularly uploads its own infringing videos and expressly tells its users it is lawful to have infringing music in their videos, even instructing users to do so. In essence, plaintiffs complain, Vimeoʼs business model is to infringe copyrighted music as much as possible.

In its motion for summary judgment, Vimeo denied taking such an active role in copyright infringement, stating that in light of "the sheer volume of video content uploaded every day, Vimeo does not -- and cannot -- view every video uploaded by its users to attempt to determine whether it infringes a copyright or otherwise violates
Vimeo's terms of service. Instead, Vimeo relies upon copyright holders to inform it if a user has uploaded an infringing video." Vimeo has yet to tackle, however, a video it provided to CBS for possible inclusion in a 60 Minutes piece about Vimeo owner Barry Diller. According to the Hollywood Reporter, in the video, Vimeo is said to have "questioned whether it should use the video because the music wasn't licensed, with an employee suggesting, ʻ[i]f you want me to make a version that does not have copyrighted music in it, I will do that for you.ʼ"

Scroll down for the text of the suit:

January 16, 2013

Pro Bono Clinic February 24th

On Sunday, February 24th, the EASL and IP Sections will be co-sponsoring a Pro Bono Clinic at Dance/NYC's 2013 Symposium. The Clinic will take place between 10:00 a.m. and 1:00 p.m. at Gibney Dance Center (890 Broadway, 5th Floor, New York, NY).

If you are a member of either the EASL Section and/or IP Section of the NYSBA and a licensed attorney and would like to volunteer for one or more of the 30 minute time slots, please email me at and specify your contact information (name, firm/company, phone number and email address), which time slot(s), area(s) of expertise, and whether you are an EASL and/or IP Section member. We are looking for volunteers with experience in the following general areas: Entertainment, Intellectual Property (copyright and trademarks), Licensing, Corporation/Incorporation (please specify if you have not-for-profit incorporation experience), and Collaboration Agreements.

If you do not have pro bono liability insurance, you may be covered under EASL and IP's policy for this Clinic. Please notify me if you need such coverage.

For your information, Dance/NYC's 2013 Symposium will explore the role and reach of New York City dance, and dig deep into the current circumstances of funding, touring, marketing, and education. Envisioned as a meeting of stakeholders--advocates, funders, policymakers, artists, managers, scholars and audiences--the event's primary goals are to: stimulate awareness, interest, and ongoing engagement in NYC dance; share innovation and develop collaborative advocacy, marketing, management, and creative models and information for use by the dance community; generate dialogue and forge dynamic partnerships among individuals and across nonprofit, government, and private sectors.

The 2013 event will make use of Gibney Dance Center's seven dance studios for main sessions, open level master classes, a networking lunch and reception, and more.
Thank you,

Elissa D. Hecker
EASL Pro Bono Steering Committee

January 18, 2013

Economic Espionage Act

By Gergana Miteva, Miteva Law, P.C (

President Obama is about to sign an amendment (// to the Economic Espionage Act (EEA) which extends trade secret protection for proprietary information which is intangible and it is not directly used by the owner in commerce. Congress drafted this amendment as a response to a recent Second Circuit decision which ruffled some legislative feathers.

In United States v. Aleynikov, 676 F.3d 71 (2d Cir. 2012), the defendant was a former Goldman Sachs employee who allegedly took off with the company's high frequency trading system algorithms and implemented them on his new employer's system. The court pointed out in its opinion that Mr. Aleynikov had been the highest paid programmer in his group, earning a yearly salary of $400,000 (not counting the generous bonuses Goldman Sachs is known to hand out). Aleynikov joined his new employer at a yearly salary of $1 million and was expected to develop a trading system, with functionality similar to that of Goldman's, within six months of his employment - a task that normally would take years to complete. During his last day at Goldman and minutes before his going away party, Aleynikov apparently uploaded 500,000 lines of code to his new employer's servers. He was later arrested in fitting style by the FBI at the Newark Liberty International Airport, carrying a potion of the incriminating code with him.

Mr. Aleynikov was prosecuted under the National Stolen Property Act, 18 U.S.C. § 2314 ( and the Economic Espionage Act, 18 U.S.C. §1832 ( in the United States District Court for the Southern District of New York. The case was tried before a jury, which found for the prosecution. Aleynikov was sentenced to eight years of imprisonment, one of the toughest sentences ever imposed under the EEA.

On appeal, the Second Circuit concluded that the defendant's actions did not violate either statute and vacated the conviction. The issue under the NSPA was whether the defendant stole "tangible goods" as defined in the statute; under the EEA, the issue was whether the code was a product "produced for or placed in the interstate or foreign commerce."

On the first issue, the court held that the statute does not apply to intangible goods, which effectively meant that it may not be used for prosecuting stolen source code offenses. According to the court, if Aleynikov had seized the code as it was embodied in a Goldman-owned CD or flash drive, that act would be covered by the statute. The court spun an even thinner web when it reasoned that the interstate transportation of the code on a memory drive was again not transportation of stolen goods, because the affixing of the intangible property to Aleynikov's drive did not transform it from an intangible stolen property into a tangible one. Ironically, Aleynikov's arbitrary decision to upload the code electronically to a remote server, rather than copy it to a memory drive, saved him from serving half a dozen years in prison.

In discussing Aleynikov's actions under the EEA, the court concluded that this statute also did not apply, because Goldman had not placed this particular code in "interstate or foreign commerce," but rather was using it for its internal operations. Again ironically, the same feature that defeated the government's case under the EEA - the fact that the code was not offered for sale or licensing - is essential in establishing it as a trade secret because it is a measure for shielding it from prying eyes.

Possibly disconcerted by the curious result in this case, Congress has now approved an amendment to the EEA that affirmatively protects in-house, intangible trade secrets. The bill is drafted to "clarify the scope of the Economic Espionage Act of 1996" and it expands the statute to include goods as well as services, which covers intangible property such as source code. The amendment also adds the phrase "a product or service used in or intended for use in ... interstate or foreign commerce," which disposes of the requirement that the trade secret be offered for sale or licensing in interstate commerce. Based on this, it would suffice that the trade secret be used in interstate or foreign commerce. These two changes serve as direct "fixes" to the Aleynikov decision - now it remains for them to be tested in federal court before employers may safely exhale.

January 21, 2013

Week in Review

By Martha Nimmer

Furniture Fights

It is unlikely that anyone will ever refer to the current era of reality TV as the "Golden Age" of television, but this television genre has nonetheless produced an array of interesting -- and often weird -- lawsuits. The latest noteworthy suit comes from high-end furniture maker Heptagon Creations Ltd. Last year, Heptagon sued real estate brokerage firm Core Group for copyright infringement. The suit alleged that Core Group used images of Heptagon's furniture without permission, ultimately using the images to create a "virtual, fully-furnished replica of [an] apartment to show interested buyers" on the HGTV series Selling New York. A judge dismissed this claim last year, but Heptagon appealed the decision to the Second Circuit Court of Appeals. The Second Circuit has affirmed the lower court's ruling, stating that "copyright protection does not extend to 'useful articles,' but individual design elements that comprise a portion of a utilitarian article may be eligible for copyright protection if the design element is either physically or conceptually separable form the article's functional elements."

Read the decision here:

Family Feud

Lady Gaga is well-known for her unconventional music, and perhaps even more for her 'unconventional' hair styles and clothing materials (meat dress, anyone?). At least for the near future, however, Lady Gaga will be known for being at the center of a father-daughter legal battle over one of her songs.

Last week, music producer Teddy Riley filed suit in California against his daughter, Taja, concerning a song that he allegedly developed with Lady Gaga back in September 2009. According to the complaint, Lady Gaga shared with Mr. Riley her concept for a composition that was originally entitled, "Show Me Your Teeth," which made it onto her Monster album as the song "Teeth." The music was written by Teddy Riley, he alleges, with lyrics from the Mother Monster herself. What followed next seems to be a classic case of sibling jealously: Taja Riley "'desirous of starting her own career in the music and entertainment business' and aware that her older sister Deja had been 'granted a gift of songwriting credit' by their father," initiated a discussion with her father about whether he would also gift a songwriting credit to Taja. Mr. Riley denies ever giving her such a credit.

Nevertheless, Taja Riley is said to have later signed a deal with EMI Music Publishing and EMI Virgin Music, claiming a co-writing credit and a 24% interest in the song "Teeth." Mr. Riley states that "the representations made by Taja Riley as to participation in the creation of the composition, authorship, and ownership are all false and untrue and that Defendant Taja Riley did not participate in any way in the creation of the composition, and did not own any rights whatsoever to The Song."

Mr. Riley raises several causes of action against his daughter, including copyright infringement, fraudulent copyright registration, unfair competition and accounting. EMI and Sony/ATV have also been named as defendants.

Hopefully for the Rileys, however, the family that sues together stays together...

Read the complaint here:

Thou Shall Not Bid

A famous Hollywood prop is now at the center of a lawsuit filed in Los Angeles Superior Court last week by auction house Profiles in History. The auction house claims that a bidder owes it $60,000 for the Ten Commandments tablets used in the famous Cecil B. DeMille film, The Ten Commandments. Profiles in History claims that Albert Tapper and two unnamed co-defendants successfully bid for the tablets in December. The defendants also won at auction a letter written by Hollywood legend Clark Gable; the winning bid for the letter, according to the plaintiff, was $8,000.

The plaintiff also claims that, following the auction in mid-December, its offices were closed for Christmas and the New Year. After the winter break, however, Profiles in History "sent invoices to defendants and requested payment. Defendants . . . refused to purchase the substantially more expensive [tablets] but represented that they would purchase the . . . [Clark Gable letter]." According to the complaint, the defendants claimed that they would not pay for the tablets because they "did not receive an immediate confirmation that they had won the items but instead had to wait two weeks to find out." The auction house continues to state that the "[d]efendants concealed from plaintiff the fact that they had no intention of paying for the major item purchased at auction, but that defendants carried out an elaborate plan in which they would agree to purchase the substantially less expensive item while keeping the major item for which they were the successful bidder from being sold to anyone else at the auction. This could only have been done through intentional manipulation."

The tablets were originally created by the Paramount Pictures prop department in 1956 for the classic movie The Ten Commandments. According to the complaint, the tablets measure 23 inches by 12 inches by 1 inch, and were "(c)onstructed of richly hewn fiberglass on wood backing ... in an early Canaanite script practiced in the late Bronze Age (c. 13th century B.C.) Moses era. These tablets were created by Paramount Studios scenic artist A.J. Cirialo, who made them to be slightly irregular with molded chips, craters and dings since they were to be carved with God's fire bolts, and he painted them in great detail to appear as carved stone." Also included in plaintiff's suit is a description of the Clark Gable letter. The letter dates from fall 1928, written just before Gable's "breakout performance on Broadway." The letter, cited in full in the complaint, hints at the difficult relationship the Hollywood star had with his estranged father, Will.

The auction house demands $81,600 and punitive damages for fraudulent concealment, fraudulent misrepresentation, negligent misrepresentation and breach of written contract.


More legal trouble for Facebook: Instagram--Facebook's recently acquired photo sharing service was served last month as part of what appears to be the first civil lawsuit to result from the photo service's newly revised terms of service. The suit, filed in federal court in San Francisco, raises breach of contract and other claims against the company. The complaint laments the fact that "customers who do not agree with Instagram's terms can cancel their profile," but then are forced to forfeit rights to photos they had previously shared on the service. "In short," the plaintiff states, "Instagram declares that 'possession is nine-tenths of the law' and if you don't like it, you can't stop us."

Instagram's new terms of service sparked outrage across the Internet over a new provision in the terms that would allow the company to utilize users' photos without compensation. The new provisions also included a mandatory arbitration clause, which forced "users to waive their rights to participate in a class action lawsuit, except under very limited circumstances." According to CNBC, the former terms of service contained no such "liability shield." Displeasure with the new terms of service eventually led Instagram founder and CEO Kevin Systrom to "retreat partially" from the new terms, ultimately deleting the language about displaying photos without compensation. Instagram did, however, keep language that "gave it the ability to place ads in conjunction with user content." The new terms also state that "[Instagram] may not always identify paid services, sponsored content, or commercial communications as such." Kurt Opsahl, a senior staff attorney with the Electronic Frontier Foundation, previously criticized Instagram for its revised terms of service; Opsahl later went on to say, however, that he was "pleased that the company rolled back some of the advertising terms and agreed to better explain their plans in the future."

So, unfortunately for Facebook and Instagram, it does not appear that 2013 will be a litigation-free year. Be sure to look out for class action notices in the mail, fellow Facebook and Instragram users!

January 28, 2013

Week in Review

By Martha Nimmer

Barbie v. Bratz

Good news for Barbie! A federal appeals court in California has ruled that Mattel, Inc. will not have to pay $172 million to MGA Entertainment, Inc. to settle a trade secrets theft suit. The court also did away with an additional $85 million in enhanced damages imposed by a lower court judge against Mattel. The court, however, kept in place more than $100 million in attorney's fees awarded to MGA.

The heart of the suit centered on MGA's big-eyed, pouty-lipped, sometimes scantily-clad Bratz dolls, introduced by the then-relatively unknown toy-maker in 2001. According to Thompson-Reuters, the "long-running saga" over MGA's Bratz dolls began in 2004 as the toys soared in popularity, ultimately leading Mattel to accuse the Van Nuys, California-based doll maker of "stealing its designs by hiring one of Mattel's key employees." In 2008, a jury ruled that MGA and its chief executive, Isaac Larian, would have to pay Mattel $100 million in damages. MGA appealed, and the 9th Circuit threw out the verdict in 2010. Following a retrial in 2011, a jury rejected Mattel's copyright claims, finding the toy maker liable on new trade secret allegations raised by MGA at retrial. Those new counterclaims were the basis of the 9th Circuit Court of Appeals' decision to throw out the 2011 jury award against Mattel. In siding with Mattel, the 9th Circuit ruled that MGA's counterclaims were not "compulsory," in that they were not "based on the same underlying facts as Mattel's trade-secret theft claims against MGA." As such, the lower court judge erred by allowing MGA's additional trade secrets claims to be part of the case. "That both Mattel and MGA claimed they stole each other's trade secrets isn't enough to render MGA's counterclaim compulsory," the court said. "What matters is not the legal theory but the facts."

The 9th Circuit closed with the following piece of advice: "[w]hile this may not be the last word on the subject, perhaps Mattel and MGA can take a lesson from their target demographic: Play nice."

The case is Mattel Inc. v. MGA Entertainment Inc., 11-56357, U.S. Court of Appeals for the Ninth Circuit (San Francisco).

Royal Intrigue

The Queen of Versailles, one of the hit films last year at the Sundance Film Festival, follows the daily life of the Siegel family. They are just like any other family, except that they live in a $75 million replica of the Palace of Versailles. The film shows the mansion being put on the market for a fraction of the home's value, as the global economic crisis comes to a head. This "rags-to-riches-to-rags" story of David Siegel, self-made time-share baron of the Westgate Resorts empire, made for an intriguing, if at times cringe-inducing, film. Mr. Siegel, however, is not a fan of the movie--he filed a defamation action last year against the movie's director, Lauren Greenfield.

Last month, the parties gathered for an evidentiary hearing as part of Mr. Siegel's defamation suit against the film's director. Both Mr. Siegel and Ms. Greenfield testified in court, and submitted briefs on the question of whether the film was, in fact, defamatory.

However, a judge must now rule if the dispute should be resolved in arbitration. This would seem like a cut-and-dry issue, considering that the director has a signed released form, stipulating that disputes would be resolved through arbitration. To get around that form, however, Mr. Siegel alleges that his son, Richard, who signed the form, lacked the "full authority to bind Westgate Resorts to arbitration." Essentially, as Hollywood Reporter stated, Mr. Siegel is "selling out his own son . . . ." Although Richard Siegel is a vice president of Westgate Resorts, the plaintiff contends that this was a "strictly honorary" designation, "unaccompanied by any of the traditional corporate authority such as a position might otherwise garner its occupant." In fact, the plaintiff is quick to point out, "that title . . . has been bestowed upon approximately a dozen other individuals working for one of the distinct companies within the Westgate Resorts organization."

Defense counsel, in response, writes that the plaintiff's claim that Ms. Greenfiled's work was unauthorized is "incredible on its face," adding that David and Richard Siegel both authorized the making of the film and the giving of the Westgate Resorts release, and hundreds of people were aware of it. How could over 200 personal releases be signed after shooting company activities if David did not give authority -- real or apparent -- to Richard?" the defendants ask. "The content of the film is the best evidence that David is lying."

A judge is expected to rule on the case soon.

Sixteen Seconds of Fame

The 7th Circuit Court of Appeals has dismissed a woman's invasion of privacy and misappropriation of image claims against comedienne Joan Rivers. Plaintiff Ann Bogie sued Rivers, IFC Films and others following the release of the documentary Joan Rivers: Piece of Work. The documentary follows Joan Rivers and features her performing one of her stand-up comedy routines. During one particular performance, Ms. Rivers discussed her dislike of children, but said that she would have made an exception for a young Helen Keller, "because she didn't talk." Upset by the joke, an audience member heckled Ms. River for the comment. Following the show, Ms, Rivers was approached backstage by the plaintiff, and the two shared a few words that were captured by the cameras filming the documentary. Ms. Bogie told Rivers that she (Bogie) "never laughed so hard" in her life." Ms. Bogie referred to the heckler as "[that] rotten guy," adding that she "was ready to get up and . . . 'tell him to leave.'" This interaction appeared in the documentary, which aired on IFC. Ms. Bogie was none too pleased, however, and sued.

Unconvinced by her claims, the 7th Circuit Court of Appeals wrote in its decision that Ms. Bogie "voluntarily approached a celebrity just after a public performance," adding that "[a]ny reasonable person would expect to encounter some kind of security presence, and indeed here that presence was visible. Furthermore, the camera crew must have also been visible to Bogie as they were filming both Rivers and, of course, Bogie. Courts have found that even performers themselves cannot count on a reasonable expectation of privacy in their own backstage areas."

Now that the suit has been dismissed, Ms. Rivers can concentrate fully on her two self-described interests: making fun of people and getting plastic surgery.

Read the decision here:

Unsportsmanlike Conduct?

Citing the importance of football in the "social lives of Arizonans," the Arizona attorney general has sued the state's NFL team, the Cardinals, in an attempt to force the team to provide captioning for the deaf on all monitors in the team's stadium. Attorney General Tom Horne filed the suit last week on behalf of Michael Ubowski, a deaf Cardinals fan. According to the complaint, Ubowski made numerous, albeit unsuccessful, "attempts between October 2005 and 2007 to consult with Arizona Cardinals' management and encourage them to adopt effective auxiliary aids and services to provide deaf and hard of hearing patrons an experience like that enjoyed by other Arizona Cardinals fans, as the team previously had at Sun Devil Stadium". According to Courthouse News Service, the team perviously used open captioning--a service that transmits information to every person in the stadium--at Arizona State's Sun Devil Stadium in Tempe from 1988 to 2006; that practice ended, however, when the Cardinals moved to the then-new University of Phoenix Stadium. Notably, the New England Patriots, Pittsburgh Pirates, Washington Redskins, and New York Yankees use open captioning in their stadiums, according to the complaint.

Two years after moving to the University of Phoenix Stadium in 2008, the Cardinals had removed the caption-enabled monitors, and began using three wireless personal digital assistants capable of displaying captions, but allegedly "failed to post information about the availability of this auxiliary aid on their website until August 2011, one year after the devices first became available." The complaint states that Ubowski and his father tried to use a PDA during a Cardinals game on September 26, 2010, but "found that the PDA was difficult to locate, obtain, and use." Additionally, there were "delays in the transmission of the captions and frequent device malfunctions," and the PDA "made it impossible to communicate in sign language, cheer, clap, eat, and drink, and also diverted [Ubowski's] attention from the field and scoreboard."

The Arizona Attorney General is seeking a permanent injunction against the defendants so that they will "permanently provide open captioning at the stadium during Arizona Cardinals' football games and events at University of Phoenix Stadium," on all monitors, and to train their employees "regarding operation of the captioning equipment and assistance for people with sensory disabilities."

She's a He

Bizarre is the only word that describes the Manti Te'o Internet girlfriend hoax. Fearing that this hoax may have legal repercussions, the alleged voice of Manti Te'o Internet girlfriend Lennay Kekua has hired an attorney. The lawyer for the man who has been identified as the creator of the hoax, Ronaiah Tuiasosopo, told the New York Daily News that his client "disguised his voice and assumed the identity of Lennay Kekua to try to develop a relationship with Te'o." Attorney Milton Grimes said that Te'o "thought it was a female he was talking with. It was Ronaiah as Lennay." Grimes added that Tuiasosopo was not trying to hurt Te'o: "[t]his wasn't a prank to make fun. It was establishing a communication with someone . . . It was a person with a troubled existence trying to reach out and communicate and have a relationship."

Earlier this week, the Notre Dame star linebacker appeared on Kate Couric's show, Katie, to explain his role in the apparent hoax. "It didn't sound like a man," Te'o told Couric during the interview that aired on Thursday. Te'o added "[i]t sounded like a woman. It's incredible that he can make that noise." To support his story, Te'o provided voicemails to the program that he says are from the person whom he thought was Kekua. Although the quality of the recording is poor in some of the supplied clips, in a few, the voice does, in fact, sound female. According to Te'o, Tuiasosopo called him to confess and apologize shortly before the hoax came to light this January.

For readers who have been lucky enough to miss this story, the hoax was revealed earlier this month when sports blog reported that the relationship had been faked. In September, Te'o told media outlets that he had lost both his grandmother and girlfriend "within the span of one day." The Notre Dame star said that his girlfriend, Lennay Kekua, had survived a car accident, but died after an unsuccessful battle with leukemia. Despite the loss of both his grandmother and Kekua, Te'o did not miss any football games for Notre Dame, saying that he had promised his deceased girlfriend that he would play even if something had happened to her. Sports media outlets reported on these tragedies during Te'o's strong 2012 season for Notre Dame when he emerged as a Heisman Trophy candidate. After receiving an anonymous email tip on January 11, 2013, however, reporters Timothy Burke and Jack Dickey conducted an investigation into the identity of Kekua. On January 16th, they published an article that said they found no record of a woman named Lennay Kekua, and that the story of her death was actually a hoax. According to the report, "the pictures published in the media supposedly of Kekua were actually taken of Diane O'Meara, an acquaintance of Ronaiah Tuiasosopo."

In a press conference following the report, Notre Dame athletic director Jack Swarbrick tearily confirmed that the university had hired private investigators to uncover the source of the hoax, adding that Te'o's relationship with Kekua was "exclusively an online relationship." This characterization conflicted with Te'o's father's previous account of his son's relationship with Lennay Kekua; Brian Te'o, the football player's father, said that Te'o and Kekua had met after a football game and that she visited him in Hawaii. Te'o previously told Sports Illustrated that she had seen him at a USC game when he was a sophomore.

To make this story even stranger, Ronaiah Tuiasosopo has met with Dr. Phil to discuss the hoax in an interview scheduled to air next week.

February 1, 2013

Week in Review

By Martha Nimmer

Food Fight

Custom Television Productions (Custom TV) has sued television producer Kyra Shelgren and her loanout company, Another Division, calling Shelgren's business practices "tantamount to extortion." Shelgren and her company, which helped produce a Food Network TV series entitled "$," is accused of refusing to "hand over dozens of consent forms signed by people on the show, unless the plaintiff company [paid] her $14,000." Custom TV is seeking damages for breach of oral contact and conversion, and seeking delivering of roughly thirty photography releases. As a general practice, Food Network requires releases from anyone filmed as part of a show segment. The network has withheld payment of $93,000 to Custom TV until it supplies the required releases.

Shelgren was hired by Custom TV president Steve Stockman as a producer in connection with a pilot called "$24 in 24 Hours," to air on Food Network. The series follows host Jeff Mauro "as he travels to a different city each week to track down the best breakfast, lunch and dinner he can find with only $24 in his pocket." Stockman later learned, however, that Food Network never received approximately 30 releases for the last episode of the show, shot in Philadelphia, despite promises from Shelgren that she would send the show's remaining paperwork to the channel. According to the complaint, "[o]n or about December 5, 2012, Mr. Stockman requested that Ms. Shelgren immediately send him the releases to give to The Food Network. On or about December 8, 2012, Ms. Shelgren stated that she would not return the releases unless Mr. Stockman paid her $14,000 via wire transfer, a demand tantamount to extortion."

It is unclear when--or if--the new television show will air.

It Is About the Book

More bad news for Lance Armstrong. A federal class action has been brought in Sacramento, CA, alleging that Armstrong and his publishers defrauded consumers by marketing and selling the athlete's book as nonfiction. It's Not About the Bike spent weeks on the bestseller list after being released in 2000. Armstrong's second book, Every Second Counts, also met with similar success.

The lead plaintiff in the suit, Rob Stutzman, has sued the cyclist, Penguin Group, G.P. Putnam's Son, Random House and others for fraud, negligent misrepresentation and various business law violations. In his complaint, Stutzman states that he bought the bestseller, It's Not About the Bike, "sometime between 2001 and 2003." The plaintiff claims that he met Armstrong in 2005 when Stutzman was a member of then-Governor Arnold Schwarzenegger's public relations staff; Stutzman allegedly told Armstrong that he (Stutzman) had recommended the book to friends.

This suit comes on the heels of Armstrong's revelations earlier this month that he used banned, "performance-enhancing drugs" to win all seven of his Tour de France victories. As a result of this revelation, he was stripped of his Tour de France titles, and has lost virtually every single one of his endorsement deals.

The 59-page complaint demands an accounting, restitution, attorney's fees, damages and an injunction. Now, we wait to see if purchasers of the once-ubiquitous yellow "Livestrong" bracelets file suit against the disgraced cyclist.

Bell of the Bar

Forgetting Sarah Marshall star Kristen Bell has sued the managers of Hollywood tequila bar L Scorpion, claiming that the bar failed to repay a $20,000 loan made by the actress. She also accuses the managers of skimming profits. Bell, along with several television executives and producers, seek damages for breach of fiduciary duty, breach of contract, conversion, unjust enrichment, unfair business practices and access to the defendants' books and records.

According to the complaint, defendants Meridian Restaurant Group, Scorpion Management and managers Christopher Heyman and Joshua Woodward "orchestrated a scheme to raise $400,000 from investors, including plaintiffs, to funnel the funds into their failing businesses and rob plaintiffs of their investment." Bell and other plaintiffs allegedly each invested $20,000 in the Hollywood Boulevard L Scorpion bar, in exchange for a 5% aggregate ownership interest in the bar. The actress claims that in July 2005, "Scorpion Management and its parent company Meridian agreed to repay Bell and the other investors 115 percent of their original investment, and distribute pro rata net profits." Despite this promise, Heyman and Woodward are accused of diverting food, money, and beverages away from L Scorpion to the defendants' other, failing businesses. According to the complaint, these funds and items were never repaid. Notably, no one seems to be sure if the bar is even still in operation: "[c]urrently, plaintiffs and the remaining investors do not know if the L Scorpion is still open for business, who is managing the restaurant, and who owns the licenses."

Looks like the party's over.

Touchdown for Free Speech

Citing First Amendment concerns, U.S. District Judge Kurt Engelhardt issued an injunction last week restraining the city of New Orleans from enforcing its "Super Bowl Clean Zone" law, which restricted signs and banners from being displayed during Super Bowl week. The Super Bowl will be played this Sunday, February 3rd, at the Mercedes Benz Superdome in New Orleans, Louisiana.

The suit was brought by Tara Jill Ciccarone, an Occupy NOLA protester, and Reverend Troy Bohn, a street preacher in the iconic and historical French Quarter. The city enacted the controversial law on December 6th, with the goal of restricting the use or placement of signs throughout the downtown area of the city as well as the French Quarter. The ban was to be in place from January 28th to February 5th. Violations were punishable by a $500 fine and up to six months in jail. The law prohibited "[i]nflatables, cold air balloons, banners, pennants, flags, building wraps, A-frame signs, projected image signs, electronic variable message signs, and light emitting diode signs of any kind shall be prohibited except for those sanctioned or authorized by the City. . . or by the National Football League." Yes, you read that correctly--the city of New Orleans placed partial control over citizens' free speech rights in the hands of the NFL.

In response to the ordinance, Ciccarone sued, stating that she and other Occupy NOLA protesters planned to demonstrate in the city and display signs, and that these constitutionally-protected activities would be infringed if the Clean Zone law were enforced. The signs that the protesters planned to display read "M]oney is not more important than constitutional rights, despite what Clean Zone would indicate" and "Your Tax Dollars Working to Help the Rich Get Richer." Rev. Bohn and his congregation regularly preach on Bourbon Street, carrying crosses and signs such as "I Love Jesus" and "Ask Me How Jesus Changed My Life." Ciccarone and Bohn argued that the city violated the Constitution "by vesting unbridled discretion in a private entity - the National Football League - to control the content of signs and other public media in the Clean Zone."

In a victory for free speech and sanity, Judge Engelhardt agreed with the plaintiffs, ruling that "plaintiffs have demonstrated a likelihood of success that this likely infringement is impermissible under the First Amendment to the United States Constitution."

Billionaire vs. Millionaire

Three paintings by renowned artist Jasper Johns are at the center of a lawsuit commenced late last week by billionaire Henry Kravis and his wife against art collector and businessman Donald L. Bryant, Jr. According to the Kravises, they purchased Johns' "Tantric Detail" series jointly with Bryant, with the intention of sharing the works and eventually donating them to New York's Museum of Modern Art (MoMA). The Kravises decided to purchase the paintings with Bryant in 2008, and worked out an agreement wherein one owner would transfer possession of the works to the other owner's chosen residence annually, so that Kravis and Bryant could each enjoy the paintings until they were eventually donated to the museum. Such an arrangement successfully took place between 2008 and 2012, according to the complaint. On January 14th of this year, however, the agreement appeared to fall through when Bryant allegedly refused to transfer the paintings to the Kravises. Instead, the complaint states that Bryant is holding the works "hostage" until a new agreement is worked out, one without the pledge to give the works to MoMa.

Striking Out Performance Enhancing Drugs

The Drug Enforcement Agency (DEA), along with Major League Baseball (MLB), are investigating the link between self-described Miami "biochemist" Anthony Bosch and MLB players Alex Rodriguez, Melky Cabrera, Gio Gonzalez, Nelson Cruz and Bartolo Colon. Bosch is currently being investigated by the DEA for his work at his now-defunct anti-aging clinic in south Florida.

The names of the baseball players, along with detailed patient files, payment records and handwritten notes were found in Bosch's files at his clinic. The players' names were then "leaked to a South Florida weekly paper by a former employee of the clinic," the New York Daily News reports. Alex Rodriguez's name also allegedly appears many times in Bosch's reports and in a notebook, under Rodriguez's real name as well as the aliases "Alex Rod" or "Cacique." The notebook is said to contain information that shows that Rodriguez received testosterone cream and insulin-like growth factor and other types of growth hormone from Bosch. Upon learning of this revelation, Rodriguez hired a Miami-based attorney.

According to sources, "MLB, which has turned over information from its own investigation to the DEA, will now move to question the players and will ask for assistance from the feds in verifying the report." Baseball's drug program, run jointly by MLB and its Players Association, permits "MLB to discipline players for performance-enhancing drug infractions, even if players had not tested positive for controlled substances." Readers will recall that in 2009 MLB suspended Los Angeles Dodgers pitcher Manny Ramirez under this drug program policy. Ramirez was suspended for 50 games when MLB discovered through a review of the player's medical records that he had received a prescription for a banned drug.

Read more:

Stranger Than Fiction

More legal drama has sprung from the Broadway show that never was--"Rebecca." Producers for the failed production have sued the show's former publicist, Marc Thibodeau, for defamation, breach of contract and bread of fiduciary duty. The producers allege that Thibodeau "scared off" a potential investor whose last-minute monetary investment could have saved the production from folding.

The anonymous investor retracted his $2.25 million offer in September, supposedly after receiving an email from a fictitious "Sarah Finkelstein." The email from the fictitious Finkelstein describes the various problems that plagued the doomed show, warning that "the walls are about to cave in" on "Rebecca" and its lead producer, Ben Sprecher. The Broadway production of "Rebecca" was indefinitely postponed in early fall, following "revelations that a middleman had concocted four investors who were responsible for $4.5 million of the show's $12 million capitalization, followed by a separate fiasco, the departure of the last-minute investor in response to Mr. Thibodeau's e-mail."

The alleged scheme by the middleman, Mark C. Hotton, came to light after a New York Times article "questioned the existence of one Hotton investor, "Paul Abrams," who had supposedly died of malaria in London." Hotton is now facing federal charges for fraud; he was arrested at his Long Island home by federal authorities in early October 2012.

In response to the suit filed against Thibodeau, several Broadway compatriots rose to the publicist's defense. In an email to the New York Times, veteran press agents and business partners Chris Boneau and Adrian Bryan-Brown wrote "Marc Thibodeau is one of the most outstanding press agents in the business. His extreme loyalty and dedication over three decades speaks for itself." Thibodeau's lawyer has also stated that his client was only trying to warn the innocent investor "that the show was caught in a 'web of deceit.'" The attorney applauded his client's efforts, calling him "an innocent whistle-blower."

The plot thickens.

Read the complaint here:

February 19, 2013

Week in Review

By Martha Nimmer

Flunking Franco

Whoever said that 90% of life is just showing up should probably share that bit of wisdom with actor James Franco, who is facing a default judgment in New York State Court. This default action, filed last week by Francoʼs former NYU professor Jose Angel Santana, stems from a defamation suit filed by Santana in September. Francoʼs former professor filed the lawsuit against the actor based on allegations that Franco had made disparaging and inaccurate public statements" against Santana after receiving a "D" in his class in 2010.

Santanaʼs suit concerns public comments by Franco that his former teacher was "awful," and that Franco "didnʼt feel like [he] needed to waste [his] time with a bad teacher." In response to Franco's comments, Santana's attorneys argue that Franco's actual reason for not attending class was having to work on the film 127 Hours. New York University, a co-defendant in Santanaʼs action against Franco, answered the plaintiffʼs suit in November. In its answer, NYU stated that the suit was nonsense; the university added that Francoʼs comments "consisted of nothing other than Franco's personal opinions regarding Santana's teaching skills" and hence could not be considered defamatory.

Franco could easily make the same argument, but for this to happen, he first has to hire an attorney and actually show up to court.

From Gospel to Gangsta Rap

Gospel singers Clara Shepherd Warrick and Jimmy Lee Weary have sued some of the biggest names in rap music: last week, the musicians brought suit against Rick Ross, Dr. Dre, Jay Z, Universal Music Group, Universal Music Publishing Group and Island Def Jam Music Group in federal court in Illinois. Warrick and Weary claim that the hip-hop superstars sampled their music without permission on Ross's Grammy nominated album "God Forgives, I Don't," and "laced plaintiffs' gospel work" with profanity and other offensive language.

The gospel work at issue, "Iʼm So Grateful," was created by the plaintiffs in 1976. According to the complaint, "Plaintiffs' song was first distributed circa 1976 by their gospel singing group, Crowns of Glory, on an album titled ʻGod Save the Children.ʼ Since the release of the song, Shepherd and/or Weary have performed plaintiffs' song all over the world." Last July, Rick Ross and Def Jam released the rap album "God Forgives - I Don't," which contains a song entitled "3 Kings." It is in this song, the plaintiffs complain, that the unauthorized sampling occured: "Defendants sampled and copied additional, substantial original elements of plaintiffs' Song without plaintiffs' permission, when they wrote, recorded, performed and made derivative works of the 3 Kings song."

Unfortunately for the gospel singers, "3 Kings" contains some pretty foul language. Unsurprisingly, the plaintiffs are not happy that their music has--allgedly--been used in such a way. Warrick and Weary argue that "Defendants' use of plaintiffs' work in the manner used continues to destroy the commercial value of the song in gospel circles. Defendants' use of plaintiffs' work is also destroying rather than enhancing the overall integrity and longevity of plaintiffs' gospel song. After the current use of plaintiffs' copyrighted work on the rap album by Rick Ross, Dr. Dre, Jay Z and Jake One, Plaintiffs' song will soon have no value in the gospel community."

It should also come as no surprise that Warrick and Weary object to the "3 Kings" music video, which "features a montage of clips of Rick Ross, Dr. Dre and Jay Z throughout their careers." According to the complaint, this video has received millions of views, and "upon information and belief, the video was prepared at the direction of defendant Dr.Dre. The video includes very graphic depictions of drug use, vulgarity, nudity, gun violence, criminal conduct, actions demeaning to women and many other items that are certainly inconsistent with plaintiffs' wishes for how plaintiffs' song would be portrayed." The plaintiffis seek an injunction prohibiting the defendants from performing "3 Kings" or selling the album that contains the offending song. Weary and Warrick also seek punitive damages for copyright infringement, unfair trade practices, unfair competition, conspiracy and unjust enrichment.

Pennsylvania Goes to Court for Penn State

Earlier this month, the NCAA filed suit in Pennsylvania court, asking a federal judge to throw out a lawsuit brought by the stateʼs governor that challenged the penalties imposed on Pennsylvania State University following the Jerry Sandusky child-abuse case. According to the NCAA, Pennsylvania Governor Tom Corbett lacks standing to
bring the case, and is seeking to undo an agreement "freely entered into" by Penn State officials. "This lawsuit is an inappropriate attempt to drag the federal courts into an intra-state political dispute," the NCAA added.

Readers will recall that Governor Corbett sued the NCAA in January, challenging a $60 million fine imposed on Penn State for its failure to prevent sexual abuse perpetrated by former assistant football coach Jerry Sandusky, who was convicted last year of molesting ten boys. The stateʼs complaint accuses the NCAA of using the Sandusky
crimes as a "pretext" to impose unprecedented sanctions, which, Governor Corbett aruges, violate antitrust laws. In addition to the multimillion dollar fine, the NCAA stripped Penn State of 112 football wins from 1998 through 2011, and barred the school from bowl games for four years.

According to the NCAA, Penn State has the authority under Pennsylvania law "to manage its own athletics program, voluntarily join the NCAA and agree to contracts." The governor, who is a member of the Penn State governing board that approved the NCAA agreement, is attempting to "usurp the discretion that the legislature delegated to PSU," the NCAA wrote.

Pennsylvania will seek an injunction against all the sanctions. The case is Corbett v. National Collegiate Athletic Association, 13-cv-6, U.S. District Court, Middle District of Pennsylvania (Harrisburg).

To the Batmobile!

Cue the Batman theme music, because we have some important news! In a victory for DC Comics, a federal court in California ruled last week that the iconic Batmobile is a "copyrighted comic book character" that cannot be replicated by an autobody business. DC Comics introduced the famous Batmobile back in 1941. The black, streamlined car was also featured in the "Batman" TV show, starring Adam West in the 1960s, and in the 1989 Batman movie, starring Michael Keaton.

DC Comics sued Mark Towle, owner of California-based auto shop Gotham Garage, in May 2011. The plaintiff claimed that Towle's work constituted copyright infringement, unfair competition and trademark infringement. DC Comics owns the copyright on the words "Batman" and "Batmobile", as well as the Batman logo, the licensing of which has proven to be an extremely lucrative business. Towle and Gotham Garage do not hold such a license, but this did not prevent them from turning cars into Batmobiles, "styled as either the model in the 1966 TV show or the 1989 movie."

In ruling with the plaintiffs, U.S. District Judge Ronald Lew found that Towle "copied not only a car, but a character." In that regard, Lew wrote: "the Batmobile, in its various incarnations, is a highly interactive vehicle, equipped with high-tech gadgets and weaponry used to aid Batman in fighting crime. Even though the Batmobile is not identical in every comic book, film or television show, it is still widely recognizable
because it often contains bat-like motifs, such as a bat-faced grill or bat-shaped tailfins in the rear of the car, and it is almost always jet-black." The judge also pointed out the importance of the Batmobile to the plot of Batman: "[t]he comic books portray the Batmobile as a superhero. The Batmobile is central to Batman's ability to fight crime and appears as Batman's sidekick, if not an extension of Batman's own persona." Judge Lew ultimaltey ruled that Towle's use of the Batmobile and Batman-related symbols were likely to cause confusion in the marketplace.

At least for now, it looks as if Gotham City can rest easy that no unlicensed Batmobiles are out on the streets...

February 22, 2013

Week in Review, Part 2

By Martha Nimmer

Free Sherlock

How can a literary work, which first appeared some 125 years ago, still be subject to copyright protection? That, essentially, is the question posed by Sherlock Holmes scholar Leslie Klinger in a civil complaint filed last week in Illinois federal court. Klinger argues that many licensing fees paid to the Arthur Conan Doyle estate have been unnecessary and not legally required, as the main characters and elements in Sherlock Holmes are derived from materials published before January 1, 1923, and thus no longer subject to the protection of U.S. copyright law.

Leslie Klinger is a renowned scholar on the subject of Sherlock Holmes, and serves as the editor of the three-volume, nearly 3,000-page Annotated Sherlock Holmes. According to The New York Times, Klinger's complaint "stems from In the Company of Sherlock Holmes, a collection of Holmes-related stories by various authors, edited by Mr. Klinger and Laurie R. King, herself the author of a successful mystery series featuring Mary Russell, Holmes' wife." According to the complaint, the estate of Sherlock Holmes author Sir Arthur Conan Doyle contacted the publisher of In the Company of Sherlock Holmes, hinting that the sale of the work could be threatened unless the estate received a licensing fee. Klinger states that he reluctantly paid the fee along with his co-editor. Unhappy with having paid the fee, and reportedly tired of the thinly veiled threats from the Conan Doyle estate, Klinger has asked the court to make a declaratory judgment that the basic "Sherlock Holmes story elements" are in the public domain.

Klinger points out that the goal of his legal action is not to interfere with the estate's legitimate rights in ten Sherlock Holmes stories that were published after January 1, 1923, and enjoy copyright protection until 2023. Given the huge success of Sherlock Holmes-inspired series "Elementary" and "Sherlock," as well as the hit Robert Downey, Jr. film, when the remaining Holmes stories enter the public domain in 2023, more legal drama is likely to play out.

Read the complaint here:

The Central Park Five

In a victory for "the precious rights of freedom of speech and the press," a federal judge in New York quashed a subpoena by New York City that demanded notes and outtakes from the Ken Burns documentary film The Central Park Five. The film details the story of the five men wrongfully convicted in the infamous 1989 "Central Park Jogger" rape case. The men were released from prison eight years ago "after another man in an upstate prison confessed to the crime and provided DNA that exonerated the five." Following their release from prison, the five men filed a $50 million lawsuit against New York City, claiming that their confessions were coerced. The city is still defending the lawsuit, and sought the documentary's outtakes to "support its arguments that authorities were acting in good faith and relying on the best information available at the time."

In response to the city's subpoena, Florentine Films, the producer of the documentary, argued that the outtakes and other non-confidential news-gathering materials were protected by New York's Journalist Shield Law. The law, N.Y. Civ. Rights Law § 79-h, codifies the First Amendment privilege that protects journalists from the forced disclosure of confidential sources or materials obtained while gathering information for reporting purposes. U.S. District Judge Ronald Ellis agreed with Florentine Films that a reporter has a qualified evidentiary privilege for information gathered as part of a journalistic investigation, adding that "any discussion of the reporter's privilege begins with an inquiry into whether a journalist can first establish entitlement to the privilege by demonstrating the independence of her journalistic process." The "independence standard," however, is a challenging one to satisfy, and has been the death knell of journalist shield litigation in the past. For instance, in an example cited by The Hollywood Reporter, filmmaker Joseph Berlinger failed to satisfy the independence standard when he attempted to prevent outtake footage from his documentary Crude from being obtained by oil company Chevron. Chevron subpoenaed the material to aid the company's defense of litigation in Ecuador stemming from the alleged contamination of an indigenous community in the Amazon Rainforest.

Judge Ellis ruled that Florentine Films had established its independence, rejecting various arguments from city attorneys that argued to the contrary. The city argued, for instance, that the Central Park Five filmmakers had a "point of view in favor of the plaintiffs," which would eviscerate any argument in favor of journalistic independence. Dismissing this argument, Justice Ellis wrote that having a point of view was not dispositive of whether the filmmakers were, in fact, independent under Berlinger. Other factors to consider in resolving the question of independence--funding for the work, editorial independence, among others--weighed in Florentine Films' favor. Additionally, the court found that the city had failed to make a sufficient showing that the information demanded was of likely relevance, and not reasonably available from another source.

Read the decision here:

Read the text of the Journal Shield Law here:$$CVR79-H$$@TXCVR079-H+&LIST=LAW+&BROWSER=BROWSER+&TOKEN=15272944+&TARGET=VIEW

Penney Pains

Martha Stewart is no stranger to legal woes, and now, her company--Martha Stewart Living Omnimedia, Inc. (MSLO)--is being sued by Macy's Inc. (Macy's) in New York State Supreme Court. Macy's, one of the largest U.S. department-store chains, is hoping to block MSLO's agreement with retailer J.C. Penney to produce Martha Stewart-branded home goods. A nonjury trial in the case began earlier this week before state Supreme Court Justice Jeffrey K. Oing in Manhattan. Justice Oing previously granted Macy's preliminary injunction in July, which barred MSLO from developing home goods products with J.C. Penney. The company in December 2011 acquired a 17% stake in MSLO for $38.5 million, as part of an effort to revive sales with new mini-stores dedicated to Martha Stewart and other brands.

According to Macy's pre-trial memorandum, "Macy's contracted with MSLO at a time when the MSLO brand was associated with the significantly downscale Kmart and Ms. Stewart was just being released from prison." Macy's eventually moved the brand into "soft home goods upscale," which, Macy's attorneys called, "a herculean task" that initially resulted in financial losses for the Ohio-based retailer. Macy's attorneys argue that MSLO is now trying to reap the rewards of Macy's rebranding efforts, which took the Martha Stewart Living brand from the barren shelves of K-Mart into the more reputable Macy's storefront.

MSLO, in turn, has defended its agreement with J.C. Penney, accusing "Macy's of breach of contract and saying the retailer stocked and priced Martha Stewart products in a manner that favors private-label brands." Specifically, lawyers for MSLO argue that its original 2006 agreement with Macy's permitted it to "design and sell products within the exclusive categories as long as they are sold through the Internet, television or at any retail store branded with the Martha Stewart name that's operated by the company or its affiliates or "prominently" features the brand." In other words, the original 2006 contract "gives Macy's the exclusive right, with important exceptions [emphasis added], to sell Martha Stewart-branded products in certain exclusive product categories." The agreement, as construed by MSLO, does not give Macy's an exclusive right to design, promote or sell any product outside certain named categories.

Justice Oing has set aside three weeks for the trial. Martha Stewart may be called to testify at trial, according to lists of potential witnesses.

The cases are Macy's Inc. v. Martha Stewart Living Omnimedia Inc., 650197/2012, and Macy's Inc. v. J.C. Penney Corp., 652861/2012, New York State Supreme Court (Manhattan).

Developments in the Oscar Pistorius Murder Case

South African police have replaced the lead investigator in the Oscar Pistorius murder case in light of revelations that lead investigator Hilton Botha is being charged with attempted murder in an unrelated case. Botha, who is facing seven charges of attempted murder, was replaced by Lieutenant-General Vinesh Moonoo. Prosecutor Gerrie Nel said that the attempted murder charges arise from a 2011 incident wherein Botha and two others fired at a minibus taxi that they were trying to stop.

The replacement announcement followed a bail hearing in a Pretoria Magistrates court where Botha stated that Pistorius and his girlfriend, Reeva Steenkamp, argued before he fatally shot her. Pistorius' lawyer called Botha's evidence "tainted," adding "Botha was not a credible witness." "We cannot sit back and take comfort he is telling the full truth," Pistorius' lawyer added.

The prosecution has disputed Pistorius' account of how he shot Steenkamp through a bathroom door at his home during the wee hours of Valentine's Day; Pistorius said that he thought Steenkamp was a burglar. If convicted of premeditated murder, Pistorius faces a maximum term of life in prison. The state considers Pistorius a flight risk, and opposes bail. The athlete's family said in a statement that his "iconic status internationally" made it highly unlikely that he poses a flight risk.

Pistorius, deemed "Blade Runner" because of his prosthetic running blades, was born without fibulas and had both legs amputated below the knee at 11 months old. The runner was included on Time Magazine's list of the world's 100 most-influential people, and is the winner of six Paralympic gold medals. Pistorius was the first amputee runner to compete at the Olympic Games.

In other developments, sporting-goods company Nike has reportedly suspended its contract with Pistorius. Additionally, a spokesman for eyewear company Oakley said that the company also suspended its contract with the athlete "effective immediately." Finally, Clarins SA's Thierry Mugler perfume brand said on Twitter that it was "removing all campaigns featuring Oscar Pistorius, out of respect and sympathy to families involved in the tragedy."

February 25, 2013

The Next Big Thing

By Pamela Jones

An application filed with the USPTO on August 21, 2011 and published on February 21, 2013 suggests that a new platform for the distribution of audiovisual content may be immerging in the not-too-distant future. At first blush, the hype around Apple's patent, dubbed the "iWatch", and news of Samsung's "Altius", may have already faded from the headlines, but this patent application may be a harbinger of the next big thing. Owners of copyrightable content who carefully parse out the bundle of copyrights, and their attorneys who draft "rights" definitions should take note, in order to avoid granting rights that one day soon may become a separate licensable platform.

Last week's story, as reported by the New York Times, The Wall Street Journal, Bloomberg et al., describes a "flexible communication device linked to a portable electronic device worn by the end-user". The speculation is that the "slap bracelet' would link to the computer by means of Bluetooth or possibly Wi-Fi. Earlier patents filed by Apple for "solar cell multi-touch panels", "curved glass" and "shake to charge" technology, in combination with this recently publicized patent, suggest that engineers may have overcome what experts hypothesize is the greatest challenge to wearable computers, battery life.

By all accounts, the terms "wristwatch" or "slap bracelet" are misnomers for what the patent, and prognosticators, suggest this device may ultimately be capable of delivering, including a credit card replacement (referred to by some as the "iWallet"), a health monitor and the real time display of video content. In view of the foregoing, it is more important than ever to carefully craft "rights" definitions and always include a reservation of rights provision when licensing audiovisual content.

US Patent Application 20130044215

March 1, 2013

Deputy General Counsel Lincoln Center for the Performing Rights

JOB DESCRIPTION: Reporting to the General Counsel, the Deputy General Counsel provides support for the General Counsel of the world's leading performing arts center in all aspects of the organization's legal affairs.

Candidates MUST have significant Digital and Media experience.

Specific responsibilities include:

• Provide support to the General Counsel as legal advisor on performing arts and education related matters, with a focus on programming/production and digital media matters but also including a wide range of other matters such as facilities, fundraising and operations.

• Draft and review a wide variety of contracts to ensure that the best interests of the organization are served, including contracts involving artists, co-productions, consultants, contractors, licenses and rentals, corporate sponsorships, artistic commissions, concessions, information technology, media production, product development and distribution, and other matters within the core mission and ancillary businesses of the organization. Conduct and/or provide advice and assistance in contract negotiations.

• Serve as resource for non-legal staff on legal matters including contracts, labor and employment matters, company procedures, liability, intellectual property, and other matters.

• Coordinate with Associate General Counsel, the department's Paralegal/Executive Assistant, and a rotating staff of 1-2 in-house legal interns, and help manage a large and highly valued group of outside pro bono counsel, to ensure consistency of information flow, workload and work product.

• Sensitivity and responsiveness within time constraints, practicalities and realistic risks and assessments of issues that are presented and solutions offered.

• JD
• Member of NY State Bar.
• 7+ years of experience directly related to the duties and responsibilities specified.
• Excellent writing skills.
• Ability to communicate and relate legal issues to non-legal staff.
• Experience with non-profits and/or in-house.
• Appreciation for the arts a plus.

TO APPLY: Please send cover letter, resume and salary requirements to:

Lincoln Center is an equal opportunity employer.

March 3, 2013

Week in Review

Martha Nimmer

Embracing the Evil

According to a panel of trademark judges in the nation's capital, "there is only one Evil Empire in baseball and it is the New York Yankees." Now, this may sound like bad news for the Bronx Bombers, but actually, it is quite the opposite: the statement came from the court in response to a request earlier this month from a private entrepreneur, known as Evil Enterprises, Inc., to register the trademark for the phrase "Baseballs [sic] Evil Empire." The Yankees objected to the registration, arguing that the team possessed the exclusive rights to the phrase in connection with baseball. The court agreed, stating "allowing anyone else to use the phrase exclusively would likely cause confusion."

Evil Enterprises initially applied for trademark registration of the "evil empire" phrase in 2008. According to The Wall Street Journal, the term was "coined in regard to the Yankees by Larry Lucchino, the president and chief executive of the Boston Red Sox, back in 2002." Lucchino referred to the Yankees as the "evil empire" upon learning that the team had acquired sought-after Cuban pitcher Jose Contreras. Unfazed by the
Red Sox, the Yankees embraced the evil empire label, even playing music from "Star Wars" during their home games.

Lawyers for Evil Enterprises are unsure if they will appeal the panel's ruling.

The Great Intern Revolt of 2013

In what is sure to send chills throughout the boardrooms of corporate America, summer 2013 may be the last hurrah for unpaid intern labor. As it turns out, people -- yes, even students -- like to be paid for their work, which is what led two former interns for Fox Entertainment Group to sue Fox Searchlight in September 2011. The former interns, who worked on the hit movie "Black Swan", claim that the company's unpaid production internship program runs afoul of minimum wage and overtime laws. Broadly, the plaintiffs argue that the interns performed work for the film company that displaced paid employees; that Fox financed, closely monitored and set employment conditions on productions like Black Swan; and that the internship program didn't qualify as a bona fide training program under the Labor Department's "Six Factor Test." The suit against Fox Searchlight was later expanded to cover Fox's entire internship program. An amended complaint in the suit lists damages of at least $5 million.

Fearing an unfavorable ruling, Fox has filed numerous court papers, the latest one being a motion for summary judgment. Fox has also filed a motion to strike the class claims, in essence arguing that the typicality requirement for class action certification is not satisfied: "[f]our named Plaintiffs seek to certify five different classes of student interns, some of whom may have interned on any one of 27 movie productions (putative Production Interns) or may have interned at any of over 500 corporate offices nationwide (putative Corporate Interns). Plaintiffs make dozens of wage and hour claims under a host of state and federal laws against Defendants Fox Searchlight Pictures, Inc. and its parent company Fox Entertainment Group, Inc., neither of whom employed much of the putative class." To prevail in its motion to strike, Fox must convince the court that Fox was not a "joint employer," that the company's role was limited in organizing production internships, and that it is not feasible, or desirable, to adjudicate the array of claims made by individuals with unique and varied internship experiences with Fox.

Read the plaintiffs' motion for summary judgment here:

Read Fox's motion for summary judgment here:

Six Strikes, You're Out

After years of planning, five major Internet Service Providers (ISPs) have finally launched the much anticipated and debated "Copyright Alert System." The goal of the program is to educate Internet users about content theft and decrease incidents of copyright infringement. The five ISPs are Verizon, AT&T, Comcast, Cablevision and Time Warner.

Under the Copyright Alert System, also dubbed the "Six Strike Policy" because of its graduated penalty system, content owners monitor P2P sites and look for material that has been uploaded without permission. Notices detailing the illicit uploads are then sent to the ISPs, which in turn send warnings to their users. The first warning, or "alert," sent to a user is used to notify an ISP subscriber that a customer has "made content available illegally through their connection." Subsequent alerts become more serious, and the consequences riskier.

Each ISP participating in the Copyright Alert System has its own mitigation measures, writes The Hollywood Reporter. AT&T, for example, plans to require repeatedly-targeted customers to complete an "online education tutorial on copyright." AT&T also reserves the right to cut off access to certain websites, and, after the fifth alert, share the offending customer's personal information with the content owner if it wishes to pursue legal action.

Unsurprisingly, the new system has its critics. Privacy advocates have denounced ISPs' plans to share user information with content owners. Small business owners who provide open WiFi access to customers, such as cafes and bookstores, also worry about the impact of the Copyright Alert System on the businesses' ability to use and provider Internet access. Even more concerned are the ISP customers, who want to know how they will be able to appeal an alert or a strike lodged against them. According to The Hollywood Reporter, The Center for Copyright Information, in collaboration with ISPs, suggests a review process handled by the American Arbitration Association as a way to allow customers to appeal strikes. Users who contest strikes will have to pay $35 for a review, although the fee is waived if financial hardship can be shown; refunds are given when appeals are successful.

Whether this program has any notable effect on clamping down on Internet piracy remains to be seen.

Fox and Dish

Fox just won't quit: last week, Fox Television filed an amended lawsuit and a new injunction in a California federal court, targeting Dish's Hopper with Sling, also known as "Dish Anywhere." Last July, a federal judge denied Fox's first motion for a preliminary injunction, ruling that that "copies made within Dish's system as an "intermediate" step to a user's time-shifting" qualified as fair use, and did not pose the threat of irreparable harm.

Dish's Hopper service was introduced in January, and received "widespread attention when CBS prohibited its CNET subsidiary from awarding a Best of Show prize." The Consumer Electronics Association eventually overruled CBS' decision, and awarded the product the prize. Fox, however, remains unimpressed. "Paying Dish for a satellite television subscription does not buy anyone the right to receive Fox's live broadcast signal over the Internet or to make copies of Fox programs to watch 'on the go,' because Dish does not have the right to offer these services to its subscribers in the first place," writes Fox in a memorandum in support of its preliminary injunction motion.

A Dish spokesperson responded to the lawsuit, saying, "[w]ith its latest motion, Fox continues its war against how Americans watch TV. Dish has long argued consumers have the right to privately watch shows anywhere, anytime, and it looks forward to continuing its fight on behalf of customer choice and control."

So, in the meantime, it looks like TV watchers are stuck with the tyranny of commercials...

Read Fox's preliminary injunction memo here:

March 8, 2013

Week in Review

By Martha Nimmer

A Losing Bet

Siding with the NCAA and the NFL, a New Jersey federal judge has struck down a law that was set to legalize sports betting in the state. Both the NCAA and the NFL sued to prevent the law from going into effect, which was signed into law by New Jersey Governor Chris Christie in January 2012. The law permits betting on professional and college sports at racetracks and Atlantic City casinos.

The petitioners, which include the NCAA, the NFL, the NBA, the NHL and MLB, argued that the law, if permitted to go into effect, would undermine the integrity of professional sports. The petitioners also relied on a federal law from 1992 that required states to restrict sports betting. Specifically, the U.S. Professional and Amateur Sports Protection Act of 1992 bans sports betting in all but four states: Nevada, Delaware, Montana and Oregon.

New Jersey, in turn, argued that the 1992 law was unconstitutional. Unfortunately for New Jersey, the court did not agree: "[a]fter careful consideration, the Court has determined that Congress acted within its powers and the statute in question does not violate the United States Constitution," wrote U.S. District Judge Michael Shipp. To make matters worse for the Garden State, the judge also issued an injunction prohibiting the state from "sponsoring, operating, advertising, promoting, licensing, or authorizing a lottery, sweepstakes or other betting, gambling, or wagering scheme" based on college or professional sports.

The case is National Collegiate Athletic Association v. Christie, 12-4947, U.S. District Court, District of New Jersey (Trenton).

Mad Model

Even though the photo in question was taken more than half-a-century ago, former fashion model Gita Hall May is not pleased that her image is being used in the Emmy winning television show, "Mad Men".

May rose to fame as a fashion model and actress in the 1950's and 1960's. The photo in question, taken by acclaimed photographer Richard Avedon, was used in a Revlon advertisement in the early 1960s. Fast forward more than fifty years, and the photo, according to the complaint, is the centerpiece of the hit show's opening credits. According to May, she only gave permission to Revlon to use the photo in connection with the promotion of cosmetics, and did not "agree to allow, forty years later, her image to be cropped from the photo [. . .] and inserted as a key element in the title sequence of a cable television series, without her consent and for commercial purposes." The former model seeks compensation for "the value her image contributed to their property or the revenues that her image contributed to their profit." According to the complaint, "Mad Men" has earned over $1 billion to date.

Although the series has been on the air since 2007, the suit explains that May only learned about the alleged unauthorized use of her image in 2012, when the show became available on home video. Apparently, May did not know that the show was on cable TV...

"Born This Way"...Except in Indonesia

As it turns out, Lady Gaga cannot count conservative Islamic groups among her fans, but she probably will not lose sleep over that. Her tour promoter, however, is pretty upset. The Mother Monster was scheduled to perform in Jakarta on June 2, 2012 as part of her Born This Way tour, but backed out following protests and threats from various Islamic groups. Specifically, the Jakarta Globe reported on May 17, 2012 that the "hardline Islamic Defenders Front (FPI) said it would dispatch 30,000 of its members to prevent Gaga from entering Jakarta." Now, Live Nation LGTours is trying to collect on part of the tour's insurance policy.

Citing millions of dollars in losses, Live Nation has sued a Lloyds of London syndicate in California federal court for not living up to the terms of a "Terrorism Policy," calling the defendant's conduct "despicable." The plaintiff states that this conduct subjected it "to cruel and unjust hardship in conscious disregard of the Plaintiff's rights... with the intent to vex, injure or annoy the Plaintiff, such as to constitute oppression, fraud or malice..." According to the lawsuit, the concert was canceled in order "to prevent bodily injury and property damage and to protect the lives and safety of Lady Gaga, all members of the Born This Way Tour, and the public." Following the cancellation, Live Nation tried to collect on its "Terrorism Insurance" policy. The language of the policy, according to The Hollywood Reporter, stated indemnification for the "ascertained net loss" for cancellations due to "the sole and direct result of Terrorism and/or Sabotage or Threat."

The plaintiff is seeking punitive damages and damages of at least $75,000 of "Ascertained Net Loss" for breach of contract and breach of the implied covenant of good faith and fair dealing.

Read the complaint here:

Dotcom Defeat

The walls may finally be closing in on Megaupload founder Kim Dotcom. Last Friday, a New Zealand appeals court overturned a lower court decision, ruling that the United States government does not have to turn over documents as part of its claim that Dotcom participated in a "mega conspiracy." The appeals court also "offered key guidance" that will likely make it easier for the U.S. government to secure Dotcom's extradition to a Virginia for prosecution on racketeering and copyright infringement charges. An extradition hearing is set for August.

The documents originally ordered to be handed over by American officials were "copyright ownership records, records obtained from covert operations by agents to identify infringements on Megaupload's network, communications between copyright holders and Megaupload and more." The documents were sought by Dotcom's legal counsel to bolster their argument that the company, shut down in January 2012, cannot be held liable for copyright infringement because of the absence of intent. The attorneys also cite protections for Internet Service Providers under the Digital Millennium Copyright Act.

If the U.S. is to secure Dotcom's extradition, the government will have to convince a New Zealand judge that there is a "prima facie case that justifies extradition in the same manner that would persuade a judge to allow a trial in New Zealand." The hearing, according to the appeals court, involves only a "limited weighing of evidence," and the U.S. is presumed to be a reliable party. The defendant is permitted, however, to challenge that assumption.

Enjoy your freedom for now, Dotcom, and see you in August.

Read the decision here:

March 14, 2013

Week in Review

By Martha Nimmer

Legal Louboutins

The Second Circuit Court of Appeals has told shoe designer Christian Louboutin to back off. Late last week, the three judge panel ruled that the footwear demigod cannot interfere with the decision of the U.S. Patent and Trademark Office (USPTO) to limit the trademark protection for his coveted red-soled pumps.

The Louboutin legal drama began in 2011 after the shoe designer sued French fashion house Yves Saint Laurent (YSL) following his release of monochrome women's shoes, which included a red pair with red soles. Louboutin had been painting the soles of his shoes red since 1992, and trademarked the red sole in 2008. A federal judge in Manhattan ruled for YSL, holding that a single color cannot serve as a trademark in the fashion industry. Happily for Louboutin, the Second Circuit later concluded in September of last year that Louboutin's red sole "acquired limited 'secondary meaning' as a distinctive symbol that identifies the Louboutin brand." The clerk of the court then issued a mandate to the USPTO to "make appropriate entry upon that Office's records to reflect that U.S. Trademark Registration No. 3,361,597, held by Christian Louboutin and dated January 1, 2008, is limited to a red lacquered outsole on footwear that contrasts with the color of the adjoining ('upper') portion of the shoe." Unhappy with that directive, Louboutin filed a letter with the clerk of the court, requesting a modification of that mandate. Unswayed, the Second Circuit ruled last week to deny the motion for modification.

In denying Louboutin's motion, the court cited four factors underlying its decision not to recall the mandate: "[w]e have previously identified four factors to consider in determining whether to recall a mandate: (1) whether the governing law is unquestionably inconsistent with the earlier decision; (2) whether the movant brought to the Court's attention that a dispositive decision was pending in another court; (3) whether there was a substantial lapse in time between the issuing of the mandate and the motion to recall the mandate; and (4) whether the equities 'strongly favor' relief." The designer, according to the court, "made no showing that any of the factors favor recall and modification of the mandate. In short, this matter does not present the 'exceptional circumstances' required to grant such a request."

Read the decision here:

Stopping Sexual Orientation Bias in the NFL

New York Attorney General Eric Schneiderman has asked the National Football League (NFL) to take steps to ensure that its teams do not discriminate against players or recruits based on their sexual orientation. Schneiderman stated that he sent a letter to NFL Commissioner Roger Goodell about the issue after three prospective players said that they had been asked questions relating to their sexual orientation. University of Colorado tight end Nick Kasa stated in a radio interview last month that several teams at an NFL scouting session asked him personal questions possibly aimed at determining his sexual orientation. University of Michigan quarterback Denard Robinson and Michigan State University running back Le'Veon Bell have alleged similar actions, writes ESPN.

The NFL, headquartered in midtown Manhattan, said in a statement last month that it planned to investigate one recruit's claims of sexual orientation bias, adding that teams are "expected to follow applicable federal, state and local employment laws." According to the Attorney General's letter, least 20 of the league's 32 teams are in jurisdictions that prohibit discrimination in hiring and employment based on sexual orientation. This, however, does not go far enough, according to Schneiderman, who wants the NFL "to issue a public statement and leaguewide [sic] policy that any form of discrimination or harassment on the basis of sexual orientation by teams against recruits or players 'constitutes a violation of state, local and, in some cases, contractual law, and will not be tolerated.'" Schneiderman has asked for a meeting with NFL officials to discuss the issue.

The Metropolitan Museum of Deceptive Practices?

Meanwhile, on the Upper East Side, the Metropolitan Museum of Art (the Met) has found itself in the middle of a legal battle over admission fees. A class action filed earlier this month in New York County Supreme Court alleges that the Met tricks visitors into paying admission fees to visit the museum, despite a 19th-century agreement with New York City that the museum would follow a no-fee policy, in exchange for a perpetual, rent-free lease of the building situated on Fifth Avenue. The agreement contained no mention of rent, according to the complaint, but required that the museum be open free of charge at least four days a week. Those terms were later expanded, but after the museum expressed concerns about costs, lawmakers set the free-admission schedule at five days a week, including Sunday afternoons, plus two evenings a week. According to the complaint, this agreement was meant to provide access to the arts for citizens "without regard to financial means."

Now, lead plaintiff Filip Saska claims that the museum has become "an expensive, fee-for-viewing, elite tourist attraction, where only those of financial means can afford to enter this publicly subsidized institution situated on prime city-owned land." The plaintiffs claim that the "unlawful and deceptive" fees paid by the class number in the tens of millions of dollars annually. The complaint also states that the museum violates state consumer protection law with signs and cashier stations that lead visitors to believe they must pay to enter.

Specifically, the complaint points to a $25 admission fee posted in a large, bold font at the main entrance of the Met, while the word "recommended" is in "tiny, unbold print." Cashiers, the plaintiffs allege, are trained "to pressure and embarrass" visitors into paying the stated admission fee. "Nowhere in the building is any visitor advised that admission to the museum exhibition halls is free for most days of each week," the complaint states. The class also claims the Met uses deceptive practices online, specifically on its website and websites of third-party vendors, where advance-purchase admission and package deals are advertised.

The class seeks an injunction, costs and actual damages, and an end to admission fees on free days and any activities that "insinuate that payment of any sum is required" on those days, such as signs, brochures and promotions." The plaintiffs also want the museum to promote its free days in New York's economically disadvantaged communities.

Read about an earlier suit here:

"Argo F Yourself"

Sorry, Ben Affleck, but it turns out that Iran isn't so keen on Argo. The film, which won the Oscar for Best Picture just a few weeks ago, depicts the harrowing escape of six American embassy staffers from Iran following the 1979 attack on the U.S. Embassy in Tehran. The six staffers were hidden by the Canadian ambassador to Iran, and escaped from the country by pretending to be part of a Canadian film crew scouting movie locations for a sci-fi flick. Unsurprisingly, Iranian officials have dismissed Argo as pro-CIA, anti-Iran propaganda.

The decision to file suit came after a group of Iranian cultural officials and film critics viewed the film in a private Tehran theater late Monday. Cultural officials dismissed the movie as a "violation of international cultural norms," although the statement did not specify which cultural norms. A statement issued after the screening also said that "awarding an anti-Iran movie is a propaganda attack against our nation and entire humanity." The press release did not specify how the movie was allegedly unrealistic, but Iranian officials have stated that the film depicts Iranians as "too violent." Luckily for fans of sanity and free speech, it remains unclear what specific claims Iran could raise against Argo's producers, and what court the country could turn to for relief. According to several media outlets, French lawyer Isabelle Coutant-Peyre is in Iran for talks with officials over how and where to file the lawsuit.

March 22, 2013

Week in Review

By Martha Nimmer

Fifty Shades of Gray Goods

The U.S. Supreme Court has ruled that copyrighted materials manufactured abroad can be resold in the United States. The 6-3 decision, issued on Tuesday, affects a multibillion dollar "gray goods market," in which parties import copyrighted or trademarked goods into the U.S. In some cases, these "gray goods" are then resold online or at discount retailers across the country. The goal behind this practice is to acquire goods made and sold abroad at lower prices, and then sell them at a profit in the U.S. Companies such as eBay and Costco have engaged in this practice for years, despite arguments that this practice violates American law.

The case, Kirtsaeng v. John Wiley & Sons, Inc., decided on Tuesday, involved a mathematics student from Thailand who helped pay his tuition at Cornell and the University of Southern California by selling textbooks that friends and relatives had purchased in his home country and then sent to him. The student, Supap Kirtsaeng,then resold the books on eBay. He is said to have made about $100,000 profit. Unsurprisingly, one publisher, John Wiley & Sons (Wiley), was not pleased, and sued Kirtsaeng for copyright infringement. Wiley won $600,000, with the lower court ruling that Kirtsaeng had violated U.S. copyright law by importing books without the permission of the copyright owner. Kirtsaeng appealed to the U.S. Supreme Court, arguing that his actions were permissible under the first sale doctrine. Under that doctrine, "buyers of books and other copyrighted goods may lend or sell them as they wish." Fearing the extension of the first sale doctrine to goods purchased abroad and then resold on the American market, a bevy of companies in publishing, software, and other industries warned the Court that a decision in favor of Kirtsaeng would harm their ability to sell products at lower prices in developing nations, and could possibly result in higher prices overall.

The high Court, however, was unmoved. Writing for the majority, Justice Stephen Breyer noted that Congress did not intend to limit the first-sale doctrine with a "geographical interpretation," which "would threaten ordinary scholarly, artistic,commercial and consumer activities." Consequently, the goods, once sold lawfully abroad, can now be resold in the U.S. without the copyright holder's permission. Justices Ruth Bader Ginsburg, Antonin Scalia and Anthony Kennedy were in the dissent. Calling the majority's opinion a "bold departure from Congressʼ design," Justice Ginsburg wrote that the majority was casting aside an explicit goal of American copyright law -- "to protect copyright owners against the unauthorized importation of low-priced, foreign-made copies of their copyrighted works." Justices Elena Kagan wrote a concurring opinion, in which Justice Samuel Alito joined. Acknowledging the dissent's concerns, Kaganʼs opinion noted that Congress is free to modify the law if it feels that copyright owners need more protection.

Read the opinion here:

Shape Up

With names like "Spanx" and "Yummie Tummie," you know youʼre in for an interesting legal battle. Things get even juicier when you add a "Real Housewife" to the mix. Enter the case of Spanx, Inc. v. Times Three Clothier, LLC. Filed in Atlanta federal court by billionaire (yes, with a B) shapewear creator Sara Blakley against The Real Housewives of New York City member Heather Thomson, the Spanx suit seeks a declaratory judgment that Spanx has not infringed Yummie Tummieʼs design patents. This suit comes shortly after Thomson publicly "accused Blakely of copying several of her camisoles . . . She specifically demanded that Blakely stop selling items called Spanx Total Taming Tank and Top This Cami," according to Business Week. A Spanx spokesperson responded that Spanx "was making shaping camisoles long before Yummie Tummie." Blakely started Spanx in 2000, while Thomson created her line in 2008. The earliest of Thomsonʼs camisole patents is from 2009.

What makes this case particularly notable is that it involves a dispute about design patents, not trademark or copyright law, which are the more frequently looked to fields in the realm of fashion design protection. In fact, some observers believe that this emphasis on patents signals a new trend in design protection: yoga clothier Lululemonʼs fight with Calvin Klein late last year, as well as Apple Samsung Electronics legal drama, have also been over design patents.

Given the barbs that the parties have traded, it looks like this case is "shaping up" to be a dramatic legal battle.

Read the complaint here:

Have You Seen This Priceless Work of Art?

Twenty-three years ago, two thieves pulled off a $500 million dollar art heist at the famed Isabella Stewart Gardner Museum in Boston. The thieves, who posed as police officers, overpowered the museumʼs night security guard, tied him up and made off with 13 priceless works of art, including pieces by Vermeer, Rembrandt, Manet and Degas. The crime remains unsolved, but investigators are getting closer to cracking the case.

On Monday, federal officials went public with news that they had learned the identities of the thieves, who allegedly belong to a criminal organization based in New England and the Mid-Atlantic states. Although officials did not reveal the exact names of the alleged thieves, the FBI did say that the paintings had been traced to Connecticut and the Philadelphia area 10 years ago. A special agent in charge of the FBIʼs Boston office added that the bureau planned to launch a publicity campaign aimed at gathering leads from the public, "and possibly from acquaintances of the thieves, [or] anyone who may have glimpsed one of the paintings over a mantel, say, or in an attic," writes The New York Times. The FBI plans to put up billboards in Connecticut and Philadelphia that feature images of the pilfered art work. Following the FBIʼs announcement, museum representatives reiterated the museumʼs earlier promise of a $5 million reward for information leading to the recovery of the works, with the understanding that they be in good condition.

Perhaps seeking to counter fears of criminal prosecution, attorney Carmen Ortiz added that the statute of limitations had expired for the crime of art theft. Anyone in possession of the art could, however, still face charges for the possession of stolen property. The FBI agent in charge of the Gardner heist also said it was possible that the people in possession of the works may not even be aware of their significance, or that they were stolen.

So, if youʼre in Connecticut or Philadelphia and you come across one of the missing paintings and it looks too good to be a reproduction, itʼs probably not.

Masks, Swords, and Smoke & Mirrors

Zorro is in the public domain and belongs to the masses, at least according to a lawsuit filed last week in Washington State federal court. The suit, brought by playwright Robert Cabell, asserts that defendants have "built a licensing empire out of smoke and mirrors" even though the copyright interests in the Zorro works expired years ago. Cabell claims that a 1919 story by Johnston McCulley, "The Curse of Capistrano", was "the first Zorro story." Cabell published a musical--"Z--The Musical of Zorro"--in 1996, and was threatened with litigation by Zorro Productions, Inc. owner John Gertz after licensing the musical last year to a performance company in Germany. The plaintiff claims that his work is based on author Johnston McCulleyʼs first Zorro story from 1919 and the 1920 Douglas Fairbanks film. Fearing legal action, Cabell has gone to court in the hopes of having it declare Zorro to be in the public domain. Specifically, the plaintiff avers that the "Defendants have fraudulently obtained federal trademark registrations for various Zorro marks and falsely assert those registrations to impermissibly extend intellectual property protection over material for which all copyrights have expired. Defendants also fraudulently assert that copyrights for later-published material provide defendants with exclusive rights in the elements of the 1919 story and the 1920 film." The complaint continues: "[n]early one hundred years later, the character is well-known as the masked outlaw who defends the public against tyrannical officials and other villains . . . Although Mr. Cabell's rights to use these public domain works is clear, the defendants have engaged in a campaign of intimidation and coercion aimed at preventing Mr. Cabell (and any other third party) from the legitimate use of this public domain material."

In support of the claim, Cabell points to a lawsuit filed by Sony Pictures over a decade ago against Paramount Studios over the television series Queen of Swords. (Sony, as readers will recall, made the 1998 Zorro film starring Antonio Banderas.) The plaintiff also relies on a footnote from a 2001 federal court decision, wherein the judge said, "[i]t is undisputed that Zorro appears in works whose copyrights have already expired, such as McCulley's story The Curse of Capistrano and Fairbanks's movie, The Mark of Zorro."

Cabell seeks a declaratory judgment that his musical does not violate any intellectual property rights held by defendants, and a preliminary and a permanent injunction against defendants prohibiting them from making claims that the musical infringes any of their intellectual property rights. Cabell also demands the cancellation of defendants' federal trademark registrations for the mark Zorro.

A Tool for Lawyers in Transition: LinkedIn


LinkedIn can be one of the most powerful tools in your arsenal during a time of career transition. It not only allows you to research people and companies who may ultimately serve as future employers, colleagues, collaborators or clients, but also introduces you to an expanded group of mentors, advisors and sources of relevant information. No matter your current position, having an extensive network is important, and LinkedIn is a great instrument for the maintenance and growth of that invaluable network.

When I speak to people in transition, or those who are thinking about exploring the possibilities, after ensuring they have an up-to-date resume, I inquire if they are on LinkedIn. Too often, the answer is that they are not. People often express concerns about their employer finding out about their LinkedIn profile - thus fearing that they are putting their job at risk - or will make the excuse that there just has not been enough time to set up a profile. "Is it really that helpful?", they will ask. Without hesitation or qualification, my answer is "yes." And although the task might seem daunting, LinkedIn makes the profile-creation process easy.

Head Shots

In setting up a profile, it is important to keep in mind that this is a professional venue. I have seen friends post the fun-loving profile shot that they use on Facebook; I have also seen head shots taken with cell phones while the subject was looking into a bathroom mirror. (This makes me shake my head like a disapproving mother.) Make sure your profile picture is of the type you would expect to see on a firm's webpage. Don't have the financial resources to hire a professional photographer? When I was developing my profile, I put on a suit, grabbed my camera and a friend, went to a library, and had her photograph me in front of a wall of books. I (we) felt silly but it was better than the bathroom-mirror shot. Eventually, through alumni and bar association involvement, I participated in professional photo shoots so that those organizations could have photographs of me that they could use in their materials. I asked permission to use several of these photos to update my LinkedIn profile picture, as well as my professional biography.

Work History and Educational Experience

Once your profile picture is chosen and uploaded, complete your work history and educational experience. Some people list only the names of what they think are the relevant entities and the titles of the positions they have held. Others, like me, more or less populate these fields with the extensive information contained in their resumes, and everything in between. In my opinion, the more information the better, so long as that information is germane, as it allows people a complete picture of your qualifications and experience. There is a caveat, however. There is such a thing as "too much" information, especially if the information is irrelevant or can become overwhelming to the reader. Where to draw the line depends on both your preferences and those of the intended consumer of the information. The rule I use is if I cannot read it through two or three times without getting distracted or losing interest, it is too long. Also, when I first put my profile up and whenever I make any significant changes, I ask a few trusted friends (a former supervisor and other career professionals I have worked with) to read my profile. As it so often happens, of course, if you ask six people, you will get six opinions. Ultimately, you have to decide what you are comfortable with. You can control how you present yourself and not how you are perceived. Accept the risk that someone may not like your profile and hope that is the exception and not the rule.

Making Connections

When your profile is up, it is time to start making connections. In my first attempt, I made a rookie mistake. LinkedIn will prompt you to allow it to tap into your email address book, wherever it is stored, and retrieve contact information. Once retrieved, it is very easy to click, click, click and send a mass invitation to connect. This sounded like a fantastic, easy and efficient way to get a LinkedIn network together. What I did not realize at the time was that not everyone is on or wants to be on LinkedIn and, once the request goes out, the system will continue to "remind" possibly to the point of annoyance invitees of the outstanding and yet-to-be-accepted invitation. Then I realized that when LinkedIn pulled my contacts into the system, it marked those who were also on LinkedIn with a little blue box containing the word "in" next to their names. So I focused on pursuing those contacts to be my LinkedIn connections, understanding that they would likely be more likely to accept because they too are using LinkedIn to expand their network.

Once your initial connections are established, LinkedIn will provide you with a list of "people you may know." LinkedIn surprised me with its accuracy. I suspect that the LinkedIn system uses a matrix to compare common connections, common learning institutions, common employers and the like in compiling these suggestions. I continue to look at LinkedIn's suggestions for potential connections. As I meet people through the more traditional methods of networking, I add them to my network, and LinkedIn's suggestions continue to grow.

Another option for enhancing a profile and, therefore, LinkedIn presence, is to join groups. I looked at professional groups, those based on my past employers, school affiliations and associations I was a part of, as well as other affinity groups. There really isn't a downfall to joining many groups outside of the fact that each group may send multiple notices to its members and your inbox may get flooded. (You can change your settings to manage how often emails are received.) Groups often use listserves to share information on trends, current issues, job opportunities and otherwise. Joining a group demonstrates to the LinkedIn community your interest in a particular subject, industry or other issue.


A great feature of LinkedIn is the ability to receive and post recommendations from former clients, employers or colleagues. As wonderful as it may be to have nice things published about you, it is still important that the recommendations are relevant and realistic. If the recommendations are "just too much" or if they appear contrived (i.e., a friend's recommendation is on a personal rather than a professional level), they are probably more detrimental than beneficial. I have sought, and continue to seek, recommendations from people in each stage of my personal and professional career but only after I have had the opportunity to work and collaborate in some real and significant capacity with them. This allows each person to honestly and knowledgably speak to my skills, strengths and otherwise. I provide recommendations to others utilizing a similar "rule." I only offer recommendations for people, focusing on the skills and strengths of those people, with whom I am very familiar.


LinkedIn can also be utilized to obtain relevant information about people and companies. When trying to connect with a company, whether in anticipation of an interview for employment or business development purposes, search for the company on LinkedIn. If the company has a profile, it provides a source of information that can supplement the information available in periodicals or on the company's proprietary website. LinkedIn will also show who you know, directly or indirectly, at that company. The direct connection is easy to identify and understand - someone part of your LinkedIn community is currently, or was previously, at that company. Where I find such a connection, I immediately reach out to that person, ask about the company, the person(s) I am scheduled or trying to meet, the position or project and possibly get the assistance of that person in getting ahead in the process. Even an indirect connection can be just as useful. The indirect connection shows someone in your network who has someone in his or her network who is at or was at that company. When I have this "second degree" connection, I will request that my "first degree" connection make an introduction to that "second degree" connection who can then provide me with the information or "in" I am seeking.

Similarly, before a scheduled meeting, check to see if the person with whom you are meeting is on LinkedIn. If he or she is, you can get information about that person, his or her interests, background and network; that knowledge can aid in your trying to connect. For example, it has allowed me to mention people known-in-common (granted, only after confirming that relationship is a current and amicable one), recognize and reminisce about a common university experience and so on. LinkedIn also allows you to look up someone you do not know and want to connect with but do not yet have a meeting with. You can see if there is someone in your network who might be willing to make an introduction. Just like with anything else, however, you need to consider how often you ask someone, respect what, if anything, the person is willing to do and the manner in which he or she is willing to do it. And be willing to reciprocate.

I personally have not made great use of the LinkedIn groups feature, although I know many who have, and I have only rarely posted into discussion groups. A danger with becoming too involved with posting is that, in attempting to get your name out, it can be easy to become an annoyance. Every time there is a post into a group's discussion page, the site sends out a notice of a new post to the group's members; so, if a member (who may be just the person someone is trying to impress) has not altered the default email settings, his or her inbox may be loaded with notices about the "serial" poster's latest musing. I have actually heard some colleagues commenting that they have unsubscribed from a group because of serial posts, and their impression of that poster is irreversibly marred.

Should You Get a Subscription?

Finally, do you need to get a paid subscription to get true benefit from using LinkedIn? My opinion is that it is not necessary. I like that the subscription service provides the ability to email people directly even if they are not a connection through the "in-mail" feature, that I can see who has viewed my profile as well as statistics regarding the number of views my profile receives and, when I submit for a job requisition, I am provided with greater information about the position, such as salary information, and can check a box to make my resume a "featured" application. Whether you need or want those or the other additional features that a paid subscription may provide depends on your personal goals and intended usage of the site.


Maintaining a network and a LinkedIn profile needs to be an ongoing endeavor. LinkedIn should be used, in whatever manner and however extensively a person is comfortable with, as a tool for professional networking and development. Most great opportunities come from whom you know, and LinkedIn provides a way to know more people. LinkedIn is also a great marketing tool. It is a personal website, demonstrating experiences and expertise and providing forums in which to share and from which to gather information. Like any other tool, however, you need to use it properly and appropriately not to be injured rather than assisted by it.

JESSICA THALER (, Law Offices of Jessica Thaler Esq., chairs the Committee on Lawyers in Transition of the New York State Bar Association. She received her undergraduate degree, cum laude, from UCLA and her law degree from Fordham University.

March 28, 2013

Week in Review

By Martha Nimmer

Secret Strikes

A federal judge for the U.S. District Court for the District of Columbia has handed a legal victory to the Office of Management and Budget (OMB), ruling that the OMB and other government entities do not have to turn over additional documents relating to the recent adoption of the Copyright Alert System. The system, implemented by major Internet Service Providers (ISPs) in February, following years of discussion and negotiations with entertainment representatives and government officials, is more commonly known as the "Six Strike Policy." It is based on the graduated penalties imposed on Internet users who make infringing material available online.

This demand for additional documents related to the adoption of the system arose after ACLU policy analyst Chris Soghoian "pushed to uncover more information about the program and the government's role in fostering cooperation that led to the adoption of the Copyright Alert System." Soghoian, however, met with limited success: he was able to file a Freedom of Information Act (FOIA) request to obtain limited information on the Obama Administration's involvement in the negotiations between entertainment industry leaders and ISPs. The U.S. government refused, however, to comply with Soghoian's full request for documents, declining to turn over material related to discussions about the "Memorandum of Understanding" between the MPAA, RIAA and ISPs; the potential costs and risks associated with the Copyright Alert System; and other opinions and recommend