Now that the window has opened for submitting new top-level domain name applications, should you apply? Before tying to answer that question, a little background.
The Internet Corporation for Assigned Numbers and Names, or ICANN, that regulates the use of Internet domain names announced last June that it would open the field of generic top-level …
Below is the transcript of my January 26, 2012, webinar presentation sponsored by the International Executive Resources Group focusing on protecting intellectual property here and abroad from new forms of online infringement and brand attacks. But first a word of warning. My talk runs for about 45 minutes and therefore this is a long post. Here is …
Mastering Rubik’s Cube may be easier. Predicting the amount of statutory damages that will be awarded in copyright infringement litigation continues to confound attorneys on both sides of the fence. Why? Here are some reasons.
But first a few words of explanation. I originally wrote this post in April of 2010. I decided to update it …
Appellate courts prefer to decide cases on the merits. But they will affirm the sanction of a default judgment dismissing a case where the plaintiff has repeatedly flouted court orders. The latest example is the Federal Circuit‘s December 28, 2011, decision in Benedict v. Super Bakery affirming Benedict’s default and cancelling his registered trademark as …
The safe harbor created by Section 512(c) of the Digital Millennium Copyright Act (DMCA) may now be an Internet service provider’s Bali Hai.
That’s because on December 20, 2011, the Ninth Circuit held in UMG v. Veoh that a webhost will only lose its safe harbor immunity under this section if it has specific knowledge of infringing …
Introduction by Andrew Berger
Negotiating tech deals is a bit like trying to navigate through uncharted waters. There are no statutes or regulations to guide the voyage. Instead as my colleague Mark Grossman in his guest post explains below, negotiating a tech deal requires an understanding of unwritten industry norms. Armed with that understanding, you can …
Introduction by Andrew Berger
Wondering where to litigate your IP disputes abroad? One of the firm’s new partners, Albert L. Jacobs, Jr., recently summarized for our litigation group two friendly venues IP practitioners may not be aware of: the Irish Commercial Court and the Dubai International Financial Center Courts. Below is Albert’s summary. But first here is …
Authors: want some help in protecting your works? Here is the text of a talk I will give to the Cornell Entrepreneur Network on November 17 on how authors can protect their intellectual property. This post is long and ignores conventional wisdom that blog readers stop reading after 1,000 words.
But you may find some useful tips …
Introduction by Andrew Berger:
I am pleased to share this guest blog post by Vivien Chan. She is the senior partner of Vivien Chan & Co…., a Greater China law firm with offices in Hong Kong, Beijing and Shanghai with close to 30 years experience in labor & employment, mergers and acquisitions, technology transfers, information technology,
Copyright creators should applaud the First Circuit’s decision in Sony v. Tenenbaum. Although the holding is narrow, the balance of the opinion is a resounding victory for copyright enforcement.
District Judge Nancy Gertner in this case held unconstitutional a jury award of statutory damages even though the award was within the statutory range that Congress had …
Today begins the inaptly named Sunrise B Period, the span between September 7 and October 28, 2011 when registered trademark owners not wishing to have their brands associated with adult entertainment websites can apply to registrars to prevent others from registering a .xxx domain name that matches the applicant’s federally registered trademark. ICANN delegated the management of …
Protecting your brand from new forms of online infringements and attacks is becoming increasingly difficult. The Internet is now a wild west of content formation and brand owners can no longer control the message or as the Burger King commercial used to tout, “have it your way.”
So what should you do? Here are two video clips …
Today Mr. Kirtsaeng asked for en banc review of the 2-1 majority opinion by the 2d Circuit in a copyright infringement case brought by John Wiley holding that the first sale doctrine is inapplicable to goods made abroad even if they were imported into the U.S. with the permission of the copyright holder. The petition is here…
§602 (a)(1) Trumps the First Sale Doctrine
The cloud lingering over the gray market industry since the Supreme Court split 4-4 in Costco just got a lot darker. Gray market goods are those made by the copyright holder abroad and then imported into this country without the permission of the copyright holder. Just last week it seemed the …
The huge gray market industry, disappointed with the Supreme Court’s 4-4 split in Costco v. Omega, has been hoping for better news from the 2nd Circuit. They keep waiting and hoping.
Different panels of the 2nd Circuit have now heard argument in three cases raising identical issues to those raised but not decided in …
Here is the 3rd and final post of my conversation with Judith Finell on the role musicologists play in copyright infringement disputes.
In Part 1 of that conversation, which is here, Judith explains the on-the-job training musicologists need to be effective in this forensic activity and the issues musicologists deal with before music is released and …
As I suggested in Part 1 of my conversation with Judith Finell, even most copyright lawyers have little idea of the role musicologists play in resolving copyright infringement disputes. In Part 1 of that conversation, which is here, Judith helps dispel the mystery. She explained the on-the-job training musicologists need to be effective in this forensic …
The Copyright Society is sponsoring a very interesting event this Wednesday July27 in D.C. The program is entitled Appealing YouTube: The Experts Debate!” The program will debate the many safe harbor issues in Viacom v. YouTube now on appeal to the Second Circuit.
Moderating will be Robert Kasunic, the Deputy General Counsel, U.S. Copyright …
Although musicologists play an important role in resolving copyright infringement claims involving music, most have little idea what that role is. Judith Finell ends the mystery.
In my conversation with Judith that begins below, she explains the training musicologists need to be effective in this forensic activity. Judith also outlines the issues musicologists face before the release …
Here is the 2d part of my video interview with the Cornell eClips program on brand protection on the Internet. Part 1 of the interview is here.
Q. What Are Some More Low-Cost Suggestions for Dealing with Online Infringement?
A. You may want to pay the infringer to migrate elsewhere; a payment sounds counter-intuitive but the money you …
Protecting your brand from new forms of online challenges has become increasingly complex. The Cornell eClips program was kind enough to interview me on this subject. eClips, created by Cornell University, is the world’s largest and highest quality source of on-line video on leadership, entrepreneurship and business with more than 15,000 + clips. Here is the first …
The IP Litigation Committee of the ABA Section of Litigation is sponsoring its first Hot Topics program to be held on Friday June 10 in DC. The program brochure is here.
The program will cover the bases: copyrights, trademarks and patents. The copyright program will focus on the unresolved issues arising from the 4-4 split in …
Counterfeits cost brand owners billions of dollars every year. How can brand owners combat this problem? What are the best strategies they can employ and will they work?
I am delighted that Lisa Martens has given us some expert and helpful advice. Lisa is a Principal in the Southern California office of Fish & Richardson P.C. Her …
Lime Wire continues to educate regarding statutory damages. The latest novel issue it decided is whether a judgment for statutory damages against an individual infringer for copyright infringement of a work in one action bars a statutory award in a second action against a secondarily liable defendant who induced that infringement. In other words where two (or …
The Arista Records v. Lime Wire litigation in the Southern District of N.Y., headed for a jury trial in early May, is a statutory damages tutorial. Judge Kimba Wood has decided a number of issues of first impression dealing with the availability of statutory damages in copyright litigation involving secondary and joint and several liability. The statutory …
The New York Court of Appeals (“Court of Appeals”) delighted the copyright industry on March 24 in the case of Penguin v. American Buddha by allowing New York-based copyright holders to assert digital piracy copyright infringement claims in this state even if the copyright holders suffered no quantifiable injury in N.Y. and even if no infringing activity …
I mentioned in my post yesterday that all eyes are on the 2d Circuit as we await the decision in the Kirtsaeng case (district court opinion here) which was argued last May. It involves text book arbitrage: the sale here of books made overseas for distribution there at prices below those charged for books intended for …
First, my apologies to those who want a quick fix on this issue; I have miserably failed to shorten this piece. The conflict between §§ 109(a) and 602 of the Copyright Act divided the Supreme Court in Costco v. Omega as it has vexed the district courts. Because I try to fairly present both sides of the issue …
First Circuit review of Judge Gertner’s decision in Sony BMG v. Tenenbaum is in sight with argument set for April 4. In that copyright infringement case, the district court did what no court had ever done before. It threw out a jury award of $675,000 in statutory damages on due process grounds even though the award was …
The Agence France decision may be even more important because of its expansive interpretation of what constitutes copyright management information under the Digital Millennium Copyright Act (“DMCA”). Copyright management information (“CMI”), defined in 17 U.S.C. § 1202(c), includes the work’s title, author or copyright owner and the terms and conditions governing the use of the work.
As …
Can users of social media have it both ways? Can they share on Twitter their posted content but still control its commercial exploitation and maybe thereby prevent others from infringing their copyrighted content? The recent case of Agence France Presse v. Morel gives photographers and other Twitter content posters limited control under defined circumstances. The case is …
My earlier post on this case ended with the question whether the successful defendants would seek attorneys’ fees. The answer is a resounding yes. Judge Wright in the Central District of California awarded defendants collectively more than $700,000 in fees and costs, including fees incurred in preparing their fee applications. His decision offers guidelines for how defendants …
The Viacom/YouTube copyright infringement case is a classic, 4-year fight between two media goliaths that is now at the Second Circuit. Hopefully that court will give some guidance about the scope of safe harbor protections for internet service providers (ISPs) under the Digital Millennium Copyright Act (“DMCA”). Viacom lost the first round when the district court granted…
As I indicate in my post below, the networks have sued ivi, Inc. in a separate copyright action also pending before Judge Naomi Buchwald in NY. Although the networks, led by WPIX, are seeking a preliminary injunction,they curiously in that case did not also request a temporary restraining order that, if granted, would have shut ivi down.
The networks argue …
Judge Naomi Buchwald on November 22 in CBS Broadcasting v. Filmon.com issued an order temporary restraining FilmOn “from infringing by any means, directly or indirectly, any of plaintiffs’ exclusive rights under Section 106 (1 )-( 5) of the Copyright Act, including but not limited to through the streaming over mobile telephone systems and/or the Internet of any …
My post How Your Social Media Posts Can Hurt You In Unexpected Ways has generated lots of feedback from friends and colleagues who have shared with me other ways that our social media posts can come back to haunt us.
I talked today with Kevin McKeown of LexBlog, Inc. who alerted me to another way …
Social media continues to captivate. The number of Facebook and Twitter users is staggering. But social media has a dark side. Your social media posts can hurt you in many ways.
I outlined some of the ways you can be hurt by your social media posts when I spoke at a program this week sponsored by the …
Long-arm statutes were designed to extend personal jurisdiction outside of state lines. But no doubt the legislators who enacted these statutes never dreamed that the long arm they were creating might stretch around the world thanks to the internet.
P enguin v. American Buddha is the latest case to shape the boundaries of the long-arm statute in …
The Second Circuit in Chloé v. Queen Bee expanded long-arm jurisdiction over Internet counterfeiters in trademark infringement cases. See my earlier post about Chloé here. But how far did the court stretch the long-arm statute? As I explain below, Chloé creates puzzling questions that need clarification about the limits of personal jurisdiction in counterfeit cases.
At a TeleConference …
The common law doctrines of contributory infringement and vicarious liability are a staple of copyright infringement law. But the Digital Millennium Copyright Act (“DMCA”) has significantly reshaped these doctrines.
Naomi Jane Gray, Esq., in her remarks to the Copyright Subcommittee of the Intellectual Property Litigation Committee of the ABA on September 28, 2010, clearly charted the changes …
How much creativity does copyright require? Thankfully for copyright creators, not much. A dash will do. But in the rare case when that dash is absent, the owner of the work cannot protect it. Express, LLC v. Forever 21, Inc., recently decided in the Central District of California, is the latest example of copyright litigation that …
On July 9, Judge Nancy Gertner in Sony BMG v. Tenenbaum did what no court has ever done before. The court held unconstitutional an award of statutory damages in copyright litigation even though the award was within the statutory range set by Congress. This ruling, if affirmed on appeal, will change the shape of copyright litigation for …
Counterfeit infringement over the Internet continues to grow. With the web erasing marketing and distribution hurdles, it is easier than ever for Internet marketers in Bangladesh to sell counterfeit goods in Spokane. Owners seeking to compel counterfeiters to defend trademark infringement actions in the owner’s home court face jurisdictional due process issues. Often the counterfeiters only contacts …
The Copyright Act gives a copyright owner certain exclusive rights but what happens when another federal statute grants the same rights to others. When those others engage in conduct authorized by another federal statute may the copyright owner still sue for infringement? International Swaps and Derivatives Assoc. v. Socratek grudgingly said yes after acknowledging …
Is Judge Stanton’s decision in Viacom v. YouTube vulnerable on appeal? You bet. Before I explain why some background.
The Action and Motions
In 2007 Viacom sued YouTube for copyright infringement alleging that YouTube posted on its site tens of thousands of Viacom’s videos without permission. Viacom argued in its summary judgment motion:
YouTube’s founders single-mindedly …
A recent Tenth Circuit decision in a trademark case demonstrates that it is possible to win even when nothing goes right. In this case, Lorillard Tobacco Co. v. Engida , plaintiff sued a liquor dealer under the Lanham Act for selling counterfeit Newport cigarettes.
Lorillard then sought injunctive relief and lost at every turn. The district court dissolved …
The problems that Sony v. Tenenbaum will cause copyright owners, if affirmed on appeal, are many. I touched on a few in an related post. Professor Eric Goldman in an excellent post adds a few more. As he indicates, Tenenbaum will now prompt a due process defense to a statutory damage claim thereby making copyright litigation, …
As Ben Sheffner reports in his fine blog, Copyright and Campaigns, the parties in Capitol Records v. Thomas-Rasset have been unable to reach a settlement in this much litigated copyright infringement case. Therefore, a third trial (that’s not a typo) in this case will likely go forward in early November.
This case is a …
Plaintiffs have long chosen to litigate copyright and trademark cases in the federal courts in New York because that is where much of the content and distribution industries are based. But those plaintiffs who seek to litigate in New York for infringing conduct that took place outside that state may lose their chosen forum depending on how …
Below is the video of Andrew’s PLI talk on April 30 at the 2010 Advance Copyright Seminar. He explains when you must register with the Copyright Office to be entitled to statutory damages; the number of awards of statutory damages you may be entitled to when multiple parties infringe your work multiple times; when your infringed copyrights …
I am happy to post here an outline of an excellent talk about software licensing Marc Temin delivered to our Copyright Subcommittee of the IP Litigation Committee of the Litigation Section of the ABA last month.
The outline is clear and comprehensive covering:
the differences between commercial and software licensing;
licensing grant alternatives (grants with conditions, covenants and …
Plaintiffs seeking a preliminary injunction in copyright or trademark infringement cases have long benefited from a presumption of irreparable harm that followed a showing of a likelihood of success on the merits. The presumption was a free pass; show success and the court assumed irreparable harm. Irreparable harm has been defined in Faiveley Transp. Malmo AB v. …
For a helpful and clear summary of the law regarding statutory damages in copyright litigation take a look at the very recent article by R. Buck McKinney published in the latest edition of Landslide, a publication of the ABA Section of Intellectual Property Law. The article will repay reading. Especially interesting is his discussion of the background surrounding …
17 U.S.C. § 504 (c)(1) provides for only one award of statutory damages for multiple infringements of one “work.” But many copyright holders do not realize that not all their copyrighted works qualify as “works” for purposes of fixing statutory damages. Eligible for statutory damages are only those works that have an independent economic value and are …
Random House has now apparently reversed course with respect to electronic rights to William Styron’s earlier works. A decade ago Random House claimed it had ebook rights to those works. But Random House, Inc. v. Rosetta Books LLC, 150 F.Supp.2d 613 (S.D.N.Y. 2001), aff’d, 283 F.3d 490 (2d Cir. 2002), held otherwise. Judge Stein …
New uses of old works are everywhere. Our cell phone wallpaper may be a wonderful family photo taken years ago. An ebook lets us read and bookmark a favorite novel. But when a new product exploits these works without the permission of the copyright holder, litigation is likely, especially where the new use has significant economic value.…
The Second Circuit in Bryant v. Media Right Production, Inc. on April 27 , 2010, further clarified the one-work limitation in copyright litigation set forth in the last sentence of 17 U.S.C. § 504 (c)(1).
This limitation has bedeviled courts and parties because of its ambiguity. It provides that, for purposes of determining the number of grants …
Statutory damages in copyright litigation can be a trap for the unwary.
In Part I of the post on statutory damages, I focused on two common misconceptions about statutory damages. I explained that a copyright owner is not entitled to statutory damages for the continuation of infringing conduct post-registration that began pre-registration. I also explained that a …
Confused about statutory damages in copyright litigation? You are in good company.
There are limitations on the availability and amount of statutory damages and the parties against whom statutory damages will be individually assessed, all of which create misunderstandings by parties on both sides of the fence. Copyright holders mistakenly assert they are entitled to statutory damages for …
