Recent Blog Posts

  1. Guest Post By Robert Cumming: Initial Interest Confusion Under EU Trademark Law

    Guest Post By Robert Cumming: Initial Interest Confusion Under EU Trademark Law


     
     Introduction by Andrew Berger
    I am pleased to introduce Robert Cumming who I have enjoyed meeting at INTA and whose blog posts at.www.robertcumming.eu I read with interest.
    Robert is an experienced IP lawyer with Appleyard Lees, a 32-person firm of European patent and trade mark attorneys.  With a litigation background and qualifications as an English solicitor, Registered UK and European trade mark attorney and Trade Mark Litigator, Robert is just as happy advising on contentious matters as prosecution, strategy and licensing.  He has written and presented on keyword advertising and is working with INTA on a global report analysing the use of survey evidence in trade mark litigation.

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  2. Determining Genuine Use of a CTM in the EU after ONEL

    Determining Genuine Use of a CTM in the EU after ONEL

     

    Another issue that came up in a Table Topics discussion I moderated at INTA earlier this month was what constitutes genuine use sufficient to sustain a CTM in the European Union (EU). We briefly touched on Merken v. Beheer (better known as  ONEL) recently decided by The Court of Justice of the European Community (CJEU).
    Again because ONEL might not be well known to practitioners outside the EU I decided to summarize it and the guidance it provides.

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  3. Translating IP Translator For US Mark Holders Filing in Europe

    Translating IP Translator For US Mark Holders Filing in Europe

    I recently moderated a table topics discussion at the INTA annual meeting in Dallas on alternatives available to US mark holders when registering their marks in Europe. One of the issues that came up was Chartered Institute of Patent Attorneys v. The Registrar of Trademarks known as IP Translator (decision here). The case continues to cause problems for Community trademark filers seeking a community trademark (CTM) in the European Union (EU).

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  4. The Art of the Deal: How to Draft and Negotiate an IP Deal; Part I

    The Art of the Deal: How to Draft and Negotiate an IP Deal; Part I

     
     
    I recently spoke at a CLE at my firm about how to successfully draft key provisions in an intellectual property license and negotiate them. Here is an edited transcript that I post in two pieces. In this first one I offer suggestions about drafting warranties, indemnities and limitations of liability and I also provider some drafting tips.

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  5. Oral Argument in the Second Circuit in Aereo Suggests that a Reversal Is in the Offing

    Oral Argument in the Second Circuit in Aereo Suggests that a Reversal Is in the Offing


    The oral argument in WNET et al. v. Aereo before the 2d Circuit panel of Judges Denny Chin and Christopher Droney and Eastern District Judge John Gleeson was long (more than 45 minutes) and spirited. The transcript is here. But the panel’s questions suggest the court may reverse and find that Aereo’s online transmission of live TV performances is an unlicensed public performance violating the Copyright Act.

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  6. Will Aereo’s Internet Streaming Service Survive Second Circuit Review?

    Will Aereo’s Internet Streaming Service Survive Second Circuit Review?


    Innovation breeds copyright litigation. The scenario is often the same. The copyright holder whose market share is eroded by the innovative product claims it infringes its statutory-protected rights. The technologist responds that its innovation is simply another authorized improvement in an evolutionary chain that benefits the public. These arguments are at play in ABC et al. v. Aereo and WNET v.

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  7. Guest Blog Post by Michael Einhorn: Establishing Indirect Lost Profits Resulting from Copyright Infringement

    Guest Blog Post by Michael Einhorn: Establishing Indirect Lost Profits Resulting from Copyright Infringement


     
     
     


     
    Introduction by Andrew Berger
    I am pleased to introduce Michael Einhorn to IP In BRIEF.
    Michael (http://www.mediatechcopy.com) is an economic consultant and expert witness in the areas of intellectual property, media, entertainment, and product design. He is the author of Media, Technology, and Copyright: Integrating Law and Economics (2004) and over seventy related professional articles in intellectual property, economic analysis, and damage valuation.
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  8. Brownmark v. Comedy Partners: Court Finds Fair Use Without Allowing Plaintiff Any Discovery

    Brownmark v. Comedy Partners: Court Finds Fair Use Without Allowing Plaintiff Any Discovery

     

    Faced with a copyright infringement suit where your defense is fair use? Chances are you wouldn’t consider making a motion to dismiss at the outset. Instead, you will most likely contemplate  extensive discovery and an expensive summary judgment motion. Well, think again. The 7th Circuit in Brownmark_Films_LLC_v_Comedy latest recently affirmed the district court’s grant of a motion to dismiss a copyright infringement suit based solely on a side-by-side comparison of the videos in question before the parties had engaged in any discovery.

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  9. Coming On July 26: Accelerated Case Resolution Webinar Before the Trademark Trial and Appeal Board

    Coming On July 26: Accelerated Case Resolution Webinar Before the Trademark Trial and Appeal Board

     

    Those caught in costly trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board may be wondering how they might streamline their TTAB practice and achieve faster resolution on the merits. A webinar sponsored by the ABA Section of Litigation on July 26th may help.
    The focus will be on more efficiently achieving a merits determinations in inter partes proceedings before the TTAB. Mary Margaret O’Donnell of the Blue Filament law firm (and co-chair of the Trademark Subcommittee of the IP Litigation Committee) has organized and will moderate what looks to be a fine program.

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  10. How Brands May Navigate the Challenges Raised by ICANN’s Domain Name Expansion

    How Brands May Navigate the Challenges Raised by ICANN’s Domain Name Expansion

     
     

    Sometime in 2013 we may experience the largest expansion of the Internet namespace in history. On June 13, 2012, ICANN (the Internet Corporation for Assigned Numbers and Names) announced the receipt of 1,930 applications from 60 countries for 1,409 new generic top-level domains or gTLDs. (A gTLD is part of the domain name or string to the right of the dot, such as .com., .biz or .org.) A list of applicants is here.

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  11. Almost Everything You Wanted to Know About Cybersquatting Decisions under the UDRP in 2011

    Almost Everything You Wanted to Know About Cybersquatting Decisions under the UDRP in 2011

     

     
    Keep Alert, a brand monitoring site based in France, published a study (here) of decisions under the Uniform Domain Name Dispute Resolution Policy (UDRP) in 2011. The study is a treasure trove of useful and noteworthy information, including the following:
    1. The arbitration tribunal at the World Intellectual Property Organization (WIPO) handled the most UDRP cases in 2011: 2,764.

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  12. Guest Post: Want to Value Your Intellectual Property? Here Are Three Approaches

    Guest Post: Want to Value Your Intellectual Property? Here Are Three Approaches

     
    Introduction by Andrew Berger
    I am pleased to post an article by Weston Anson on IP valuation. Wes is Chairman of CONSOR®, a leading intellectual asset consulting firm specializing in trademark, technology, and copyright licensing, valuation, and expert testimony. The firm is headquartered in La Jolla, California with offices in New York and London.
    After receiving his MBA from Harvard, he served with the management consulting firm of Booz-Allen & Hamilton and then at Playboy Enterprises, Inc., where he launched many of their licensing programs.

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  13. Coming Up: Hot Topics In Intellectual Property Litigation, 2nd Annual IP Litigation CLE Program

    Coming Up: Hot Topics In Intellectual Property Litigation, 2nd Annual IP Litigation CLE Program


    I want to encourage all who are able to attend an day-long program in Chicago next Friday June 8  sponsored by the ABA Litigation Section, IP Litigation Committee entitled Hot Topics In Intellectual Property Litigation.
    The program at Schiff Hardin’s offices will blanket IP focusing on issues relating to copyrights, trademarks, trade secrets and patent law. The luncheon speaker will be Judge Richard Posner of the United States Court of Appeals for the Seventh Circuit.

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  14. Registering Your Mark In Europe? Consider These Three Alternatives

    Registering Your Mark In Europe? Consider These Three Alternatives

    If you are selling your trademarked goods or services in Europe, you may want to register your mark there. Your US trademark rights stop at our borders. But news of good brands travels fast. You don’t want to find when you expand to Europe that another has registered your trademark ahead of you in anticipation of reaping a profit from your purchase of it.

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  15. As a result of Viacom v. YouTube the Future of the Red Flag Standard in DMCA Litigation Is Black

    As a result of Viacom v. YouTube the Future of the Red Flag Standard in DMCA Litigation Is Black


    Thankfully the Second Circuit in Viacom v. YouTube  has reversed Judge Stanton’s see no evil, speak no evil opinion which had granted summary judgment to YouTube. But in response to the “most important” issue the appellate court stated it faced, that court dropped the ball.
    The issue was whether the actual and red flag standards in § 512(c)(1)(A)(i) and (ii) of the DMCA each required actual knowledge of specific and identifiable infringements.

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  16. Why Technology Projects Fail

    Why Technology Projects Fail

     
    Introduction by Andrew Berger 
    I am pleased to host a guest blog post by Robert Kotch. Bob is an experienced management consultant and business executive with extensive background in business strategy development and deployment, financial management and technology leadership. His experiences include integrating diverse IT organizations, serving as CIO and financial head of a division of a Fortune 50 company, and many technology focused successes including CIO and executive team coaching, web strategy development, IT process deployment, business process improvement, management of major programs and evaluation of acquisition targets.

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  17. Ten Considerations To Keep In Mind When Negotiating a License for Intellectual Property

    Ten Considerations To Keep In Mind When Negotiating a License for Intellectual Property


    I this week did a licensing program with Rand Brenner, President & CEO at Licensing Consulting Group. Rand is a licensing expert assisting clients in the acquisition and sales of licensing rights. His recent assignments include acquiring licensing rights for clients to several national brands including Major League Baseball, The NFL and NCAA Football.
    At the program I discussed ten considerations the parties to a license agreement should keep in mind when negotiating it.

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  18. Guest Blog Post: Why Did Apple Lose the First Round in Its iPad Trademark Dispute in China

    Guest Blog Post: Why Did Apple Lose the First Round in Its iPad Trademark Dispute in China

    Introduction by Andrew Berger:
    I am pleased to post another article by Vivien Chan focusing on IP in China. Vivien 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, and related tax issues.

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  19. What Copyright Management Information Does the DMCA Protect?

    What Copyright Management Information Does the DMCA Protect?

     
    The genesis of this post is a recent copyright infringement case we handled that dealt with a relatively unexplored corner of the Digital Millennium Copyright Act (“DMCA), defendant’s removal of copyright management information (CMI) and the statutory damages that arise from that DMCA violation.
    Three DMCA Issues that Divide the Courts
    In researching the DMCA claims, we noted that three issues have divided the courts:
    (a) is CMI as defined in §1202 of the DMCA restricted to digitally encoded information contained in an automated copyright protection or rights management system or does CMI extend to any identifying information about a copyrighted work, digital or not;
    (b) does the DMCA only protect CMI if it’s on the face of a copyrighted work or does protection include CMI that is elsewhere on the page where the work appears; and
    (c) what constitutes a violation of the DMCA for purposes of computing statutory damages.

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  20. How to Protect Your Intellectual Property When Outsourcing

    How to Protect Your Intellectual Property When Outsourcing


    Thinking about outsourcing? Take a deep breadth and you may want sit down till the thought passes. Many outsourcing arrangements fail for a variety of reasons and even when they succeed the costs incurred may be more than the costs saved.
    One of the biggest risks is protecting your intellectual property (“IP”) when it is outsourced. There are no silver bullets that will guarantee protection.

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  21. Should You Apply for an ICANN Top-Level Domain: the Benefits and the Pitfalls

    Should You Apply for an ICANN Top-Level Domain: the Benefits and the Pitfalls


     
    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 domains (“gTLD”), the identifiers to the right of the dot (.com, .biz, .org) from the current 22 to any word in any language.

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  22. Protecting Your Intellectual Property in the U.S. and Abroad from New Forms of Online Infringement and Brand Attacks

    Protecting Your Intellectual Property in the U.S. and Abroad from New Forms of Online Infringement and Brand Attacks


    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 a quick overview of what I cover.

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  23. Why It’s Difficult to Predict the Amount of Statutory Damages Plaintiff Will Be Awarded in Copyright Litigation-Revised Version

    Why It’s Difficult to Predict the Amount of Statutory Damages Plaintiff Will Be Awarded in Copyright Litigation-Revised Version

             
    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 after some of the cases I mentioned went through further appeals and retrials.  I kept the same title (so you may see the earlier version come up on Google searches) but I substantially rewrote this version.

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  24. Goodyman Meets the Hangman: The Federal Circuit in Benedict v. Super Bakery Afirms the Cancellation of a Registered Trademark

    Goodyman Meets the Hangman: The Federal Circuit in Benedict v. Super Bakery Afirms the Cancellation of a Registered Trademark


    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 a sanction. But although the Federal Circuit affirmed, it rejected the reasoning below of the Trademark Trial and Appeal Board.

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

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


    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 content on its site and fails to take down that content.

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  26. Guest Blog Post by Mark Grossman: A How-To Guide for Negotiating Tech Deals

    Guest Blog Post by Mark Grossman: A How-To Guide for Negotiating Tech Deals

     
    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 push in those areas where you may have an impact and, as Mark aptly says “choreographing your concessions around areas where you’re not likely to win the battle anyway.”
    Mark explains a number of invaluable “How Tos,” including how to draft a warranty to protect against the unexpected; how to protect against a loss when the unexpected occurs; how to limit the limitations on liability and how to avoid the tendency to see the deal’s starting point as the vendor’s form.

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  27. Guest Blog Post By Albert L. Jacobs, Jr.: A Quick Summary of the Irish Commercial Court and the Dubai International Financial Center Courts

    Guest Blog Post By Albert L. Jacobs, Jr.: A Quick Summary of the Irish Commercial Court and the Dubai International Financial Center Courts

    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 some background about Albert.

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  28. Guidelines for Authors When Drafting Publishing Agreements and Protecting Their Intellectual Property From Infringement

    Guidelines for Authors When Drafting Publishing Agreements and Protecting Their Intellectual Property From Infringement

    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 here.

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  29. Guest Blog Post: How to Combat Counterfeiting in China by Effectively Using Its Customs Recording System

    Guest Blog Post: How to Combat Counterfeiting in China by Effectively Using Its Customs Recording System

    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, and related tax issues.

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  30. The First Circuit’s Decision in Sony v. Tenenbaum is a Welcome Victory for Copyright Holders  In Copyright Infringement Cases

    The First Circuit’s Decision in Sony v. Tenenbaum is a Welcome Victory for Copyright Holders In Copyright Infringement Cases

     
    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 set.

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  31. Blocking Your Mark From Registration as a .XXX Domain Name

    Blocking Your Mark From Registration as a .XXX Domain Name

     
    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 .xxx to a company called ICM Registry.

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  32. Two Video Clips on Protecting Your Brand From New Forms of Online Infringements and Attacks

    Two Video Clips on Protecting Your Brand From New Forms of Online Infringements and Attacks

     
    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 of my interview about brand protection produced by the Cornell eClips program.  eClips, created by Cornell University, is a quality source of on-line video on leadership, entrepreneurship and business with more than 15,000 + clips.

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  33. Kirtsaeng Asks for En Banc Review; Let’s Hope He Gets It

    Kirtsaeng Asks for En Banc Review; Let’s Hope He Gets It


    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.

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  34. The Wait For Kirtsaeng Is Over: The 2d Circuit Holds, Consistent With The 9th Circuit’s Opinion In Omega v. Costco, That The First Sale Doctrine Applies Only To Goods Manufactured In This Country

    The Wait For Kirtsaeng Is Over: The 2d Circuit Holds, Consistent With The 9th Circuit’s Opinion In Omega v. Costco, That The First Sale Doctrine Applies Only To Goods Manufactured In This Country


    §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 2d Circuit would never decide John Wiley v.

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  35. Waiting for Kirtsaeng: the Unresolved Tension Following the 4-4 Split in Costco Between Sections 602 and 109 of the Copyright Act

    Waiting for Kirtsaeng: the Unresolved Tension Following the 4-4 Split in Costco Between Sections 602 and 109 of the Copyright Act


    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 Costco. But the 2nd Circuit has not decided any of these cases, even though the earliest, John Wiley v.

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  36. Part 3: Judith Finell Explains The Roles Musicologists Play In Resolving Copyright Infringement Claims Involving Music

    Part 3: Judith Finell Explains The Roles Musicologists Play In Resolving Copyright Infringement Claims Involving Music

     
    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 after it becomes the subject of litigation.

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  37. Part 2: Judith Finell Explains The Roles Musicologists Play In Resolving Copyright Infringement Claims Involving Music

    Part 2: Judith Finell Explains The Roles Musicologists Play In Resolving Copyright Infringement Claims Involving Music

    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 activity and the issues musicologists deal with before music is released and after it becomes the subject of litigation.

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  38. “Appealing YouTube: The Experts Debate!” Program in DC on Wedensday July 27 Sponsored by the Copyright Society

    “Appealing YouTube: The Experts Debate!” Program in DC on Wedensday July 27 Sponsored by the Copyright Society


    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 Office. The fine panelists are: Jonathan Band of Jonathan Band PLLC; Patrick Coyne of  Finnegan, Henderson, Farabow, Garrett & Dunner LLP; Russell Frackman of Mitchell Silberberg & Knupp LLP; Ron Lazebnik: Fordham University School of Law; and Mary Rasenberger: Skadden, Arps, Slate, Meagher & Flom LLP.

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  39. Judith Finell Explains The Roles Musicologists Play When Music Prompts Copyright Infringement Issues: Part 1

    Judith Finell Explains The Roles Musicologists Play When Music Prompts Copyright Infringement Issues: Part 1


    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 of music and after it has triggered litigation.

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  40. Part # 2: More On Protecting Your Brand Against New Forms of Online Infringement and Challenges

    Part # 2: More On Protecting Your Brand Against New Forms of Online Infringement and Challenges

     
    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 spend may be less than the cost of a lawsuit.

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  41. Some Suggestions About Protecting Your Brand Against New Forms of Online Infringements

    Some Suggestions About Protecting Your Brand Against New Forms of Online Infringements


    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 part of the interview.

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  42. Hot Topics In IP Litigation Program Coming to D.C.

    Hot Topics In IP Litigation Program Coming to D.C.

     
    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 Costco v.

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  43. A Conversation with Lisa Martens About How Brand Owners Can Combat Counterfeiting

    A Conversation with Lisa Martens About How Brand Owners Can Combat Counterfeiting


    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 practice emphasizes trademark prosecution and litigation for the food service, health care, biotechnology, computer, Internet, and retail clothing industries.  Her complete bio and contact information are here.

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  44. Arista Records v. Lime Wire: Did the Record Companies Forfeit the Right to Collect from Lime Wire As Much as $15.6 Million By Recovering Less than $48,000 from Other Infringers in Earlier Actions?

    Arista Records v. Lime Wire: Did the Record Companies Forfeit the Right to Collect from Lime Wire As Much as $15.6 Million By Recovering Less than $48,000 from Other Infringers in Earlier Actions?

     
    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 more) infringers are jointly and severally liable, does recovery of an award of statutory damages against one infringer in one action bar a statutory award against the other infringer in a second action.

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  45. Arista Records v. Lime Wire Answers Some Novel Questions re Statutory Damages In Copyright Litigation

    Arista Records v. Lime Wire Answers Some Novel Questions re Statutory Damages In Copyright Litigation

     
    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 damage issues, now answered, include:
    1.

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  46. March of the Penguins: The New York Court of Appeals Expands Long-Arm Jurisdiction over Digital Pirates in Copyright Infringement Cases in Penguin v. American Buddha

    March of the Penguins: The New York Court of Appeals Expands Long-Arm Jurisdiction over Digital Pirates in Copyright Infringement Cases in Penguin v. American Buddha


    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 took place in N.Y.

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  47. Additional Appeals to Watch in the 2d Circuit in the Aftermath of the Costco/Omega 4-4 Split

    Additional Appeals to Watch in the 2d Circuit in the Aftermath of the Costco/Omega 4-4 Split

     
    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 the U.S.

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  48. Hey, Can I Keep Those Gray Market Goods Out of Here? The Unresolved Conflict Between §§ 109(a) and 602 of the Copyright Act Following the Supreme Court’s Deadlock in Costco v. Omega

    Hey, Can I Keep Those Gray Market Goods Out of Here? The Unresolved Conflict Between §§ 109(a) and 602 of the Copyright Act Following the Supreme Court’s Deadlock in Costco v. Omega



    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 and the policy questions raised, I have gone way beyond recommended blog length.  So with that warning, let’s begin.

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  49. Sony v. Tenenbaum: What Are the Due Process Limitations on Awards of Statutory Damages in Copyright Litigation?

    Sony v. Tenenbaum: What Are the Due Process Limitations on Awards of Statutory Damages in Copyright Litigation?


    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 within the statutory range set by Congress.  The court instead awarded the music labels $67,500 for Tenenbaum’s near-decade of music downloading.

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  50. More on Agence France v. Morel: A Publisher May Now Face a DMCA Claim For Removing Almost Any Copyright Management Information Even If It Was Not on the Work Itself

    More on Agence France v. Morel: A Publisher May Now Face a DMCA Claim For Removing Almost Any Copyright Management Information Even If It Was Not on the Work Itself

     
    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 mentioned in my earlier post, Morel placed on his TwitPic page a number of Haiti earthquakes photos.

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  51. Agence France v. Morel: Can Content Creators Control the Commercial Exploitation of Their Content Once They Post It On Twitter?

    Agence France v. Morel: Can Content Creators Control the Commercial Exploitation of Their Content Once They Post It On Twitter?


    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 worth reading because it breaks new ground.

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  52. Express v. Forever 21: Ouch! Court Awards Defendants More than $700,000 in Attorneys Fees and Costs for a Successful Defense of Copyright and Trademark Infringement Claims

    Express v. Forever 21: Ouch! Court Awards Defendants More than $700,000 in Attorneys Fees and Costs for a Successful Defense of Copyright and Trademark Infringement Claims

     
    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 who prevail in defending copyright and trademark infringement claims may recover their attorneys’ fees from plaintiff.

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  53. Viacom/YouTube: Will The 2d Circuit Continue to Shield YouTube from Liability under the DMCA for Welcoming Infringement On Its Site?

    Viacom/YouTube: Will The 2d Circuit Continue to Shield YouTube from Liability under the DMCA for Welcoming Infringement On Its Site?


    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 YouTube’s motion for summary judgment dismissing Viacom’s copyright infringement claims.

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  54. Is ivi an Internet Pirate or Entreprenurial Innovator?

    Is ivi an Internet Pirate or Entreprenurial Innovator?


    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 that ivi is not entitled to a compulsory license for a number of reasons, including that ivi is not delivering its streaming content over an infrastructure it built or controls and does not use a secure closed transmission path.

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  55. CBS Draws First Blood in Its Effort to Shut Down Filmon.com’s Internet Streaming

    CBS Draws First Blood in Its Effort to Shut Down Filmon.com’s Internet Streaming


    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 of the broadcast television programming in which any plaintiff owns a copyright.”
    The order will continue pending a hearing on CBS’s request for a preliminary injunction.

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  56. Update on How Our Social Media Posts Can Hurt Us

    Update on How Our Social Media Posts Can Hurt Us

     
     

    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 that our social media posts can hurt. About one-third of law enforcement agencies are now requiring applicants to sign waivers authorizing their potential employers access to applicants’ private passwords, Internet pseudonyms, text messages and e-mail logs for social media sites including Facebook, Twitter, YouTube and MySpace.

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  57. How Your Social Media Posts Can Hurt You In Unexpected Ways

    How Your Social Media Posts Can Hurt You In Unexpected Ways


    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 Copyright Society of the USA entitled Using Social Media to Build Your Brand.

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  58. Penguin v. American Buddha: Should Internet Copyright Infringement Alter the Jurisdictional Analysis Under the Long-Arm Statute?

    Penguin v. American Buddha: Should Internet Copyright Infringement Alter the Jurisdictional Analysis Under the Long-Arm Statute?


    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 an internet age.

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  59. Chloé v. Queen Bee, How Far Has the Second Circuit Extended the Long-Arm Statute to Reach Internet Infringers in Counterfeit Cases?

    Chloé v. Queen Bee, How Far Has the Second Circuit Extended the Long-Arm Statute to Reach Internet Infringers in Counterfeit Cases?


    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 on October 6 on Chloé that I moderated sponsored by Law Seminars International, our fine panelists, Joan Archer, Esq.

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  60. Secondary Liability under the DMCA: Has the DMCA Shrunk Contributory Infringement and Vicarious Liability?

    Secondary Liability under the DMCA: Has the DMCA Shrunk Contributory Infringement and Vicarious Liability?

    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 the DMCA has made to secondary liability.

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  61. Express v. Forever 21: How Much Creativity Does Copyright Require? “A Little Dab Will Do”

    Express v. Forever 21: How Much Creativity Does Copyright Require? “A Little Dab Will Do”


    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 collapsed because the copyright owner could not show that its works contained even the spark of creativity.

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  62. Sony BMG v. Tenenbaum: Are Willful Infringers In Copyright Litigation Now Judicially Protected?

    Sony BMG v. Tenenbaum: Are Willful Infringers In Copyright Litigation Now Judicially Protected?


    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 years to come.

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  63. Chloé v. Queen Bee of Beverly Hills: The Second Circuit Stretches New York’s Long-Arm Statute in Response to Counterfeit Infringement Over the Internet

    Chloé v. Queen Bee of Beverly Hills: The Second Circuit Stretches New York’s Long-Arm Statute in Response to Counterfeit Infringement Over the Internet


    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 with the local forum are a sale there that infringes plaintiff’s trademark plus sales of products bearing the marks of others.

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  64. Does a Federal Statute Authorizing Copyright Infringement Trump the Copyright Law?

    Does a Federal Statute Authorizing Copyright Infringement Trump the Copyright Law?

     
    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 the “scant case law” resolving conflicts between federal statutes and the Copyright Act.

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  65. Viacom v. YouTube: Can A Web Host Welcome and Profit From Infringing Activity and Then Claim Not to Know About It?

    Viacom v. YouTube: Can A Web Host Welcome and Profit From Infringing Activity and Then Claim Not to Know About It?


    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 focused on geometrically increasing the number of YouTube users to maximize its commercial value.

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  66. Can You Win Even When You Lose? Lorillard Shows How in a Trademark Case

    Can You Win Even When You Lose? Lorillard Shows How in a Trademark Case

    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 temporary restraining issued at Lorillard’s request and simultaneously denied Lorillard’s motion for a preliminary injunction.

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  67. Sorry: Trying to Settle or Keep Costs Down in Copyright Litigation Have Become Much Harder Thanks to Sony v. Tenenbaum

    Sorry: Trying to Settle or Keep Costs Down in Copyright Litigation Have Become Much Harder Thanks to Sony v. Tenenbaum

    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, already expensive, more so.

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  68. What? A Third Trial in Capitol Records v. Thomas-Rasset on Statutory Damages in Copyright Litigation? Stay Tuned.

    What? A Third Trial in Capitol Records v. Thomas-Rasset on Statutory Damages in Copyright Litigation? Stay Tuned.

     
    As Ben Sheffner reports in his 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 poster child for the uncertainty and confusion surrounding statutory damages in copyright litigation.

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  69. Penguin v. American Buddha: Will the Long-Arm Statute Adapt to the Digital World?

    Penguin v. American Buddha: Will the Long-Arm Statute Adapt to the Digital World?

    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 the New York Court of Appeals decides a novel issue referred to it last week by the Second Circuit Court of Appeals in Penguin Group.

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  70. Still Confused About Statutory Damages? Watch the Video Below for Some Answers

    Still Confused About Statutory Damages? Watch the Video Below for Some Answers


    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 will qualify as “works” eligible for statutory damages and where in the range—from innocence to willfulness—infringing conduct falls and the statutory damages that may be assessed for that conduct.

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  71. Software Licensing Explained

    Software Licensing Explained

    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 implied grants);
    the first sale doctrine that we will hear much more about when the Supreme Court next term considers Costco v.

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  72. Don’t Despair: Even Without a Presumption of Irreparable Harm You Are Still Likely to Win a Preliminary Injunction in Copyright Litigation after Establishing a Likelihood of Infringement

    Don’t Despair: Even Without a Presumption of Irreparable Harm You Are Still Likely to Win a Preliminary Injunction in Copyright Litigation after Establishing a Likelihood of Infringement

    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. Wabtec Corp., as “an injury that is neither remote nor speculative, but actual and imminent, and one that cannot be remedied if a court waits until the end of trial to resolve the harm.”
    The Supreme Court in eBay v.

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  73. Very Recent Useful Article About Statutory Damages in Copyright Litigation

    Very Recent Useful Article About Statutory Damages in Copyright Litigation

    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 the wave of copyright infringement suits brought by the Recording Industry of America.

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  74. When Does a Copyrighted Work Qualify as a “Work” for Purposes of Fixing Statutory Damages?

    When Does a Copyrighted Work Qualify as a “Work” for Purposes of Fixing Statutory Damages?

    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 viable.

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  75. Random House Allows William Styron’s Estate to Publish Electronically

    Random House Allows William Styron’s Estate to Publish Electronically


    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 found that Random House’s license agreements with Styron, giving Random the right to “print, publish, and sell” Styron’s older works “in book form,” did not give the publisher the right to distribute these works as ebooks.

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  76. New Uses of Old Works: When May a Licensee Exploit Previously Licensed Content without the Consent of the Copyright Owner?

    New Uses of Old Works: When May a Licensee Exploit Previously Licensed Content without the Consent of the Copyright Owner?

    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 parties to the litigation are most often the copyright holder who licensed the copyrighted work and the licensee who seeks to exploit the work in the new product.

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  77. Bryant v. Media Rights: The Second Circuit Provides Some Further Answers About the “One-Work Limitation” on Grants of Statutory Damages Involving an Infringing Compilation

    Bryant v. Media Rights: The Second Circuit Provides Some Further Answers About the “One-Work Limitation” on Grants of Statutory Damages Involving an Infringing Compilation

    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 of statutory damages, “all the parts of a compilation or derivative work constitute one work.” The question the statute raises, but does not answer, is “whose compilation” is the statute referring to.

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  78. Here Are Some More Answers to End the Confusion about Statutory Damages in Copyright Litigation  (Part II)

    Here Are Some More Answers to End the Confusion about Statutory Damages in Copyright Litigation (Part II)

    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 copyright owner may recover only one award of statutory damages for multiple infringements of one copyrighted work whether committed by one infringer or by multiple infringers acting together.

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  79. Confused about Statutory Damages in Copyright Litigation? Join the Club. Here Are Some Answers (Part I)

    Confused about Statutory Damages in Copyright Litigation? Join the Club. Here Are Some Answers (Part I)

    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 an infringement that occurs after they registered their work, even when this infringement continues a pattern of infringement that began before registration.

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