Author: David Bonilla, J.D Candidate, Class of 2014, Benjamin N. Cardozo School of Law

Counterfeiters continue to find creative and inventive ways to knock off goods and place those knockoffs in the marketplace.  One need only take a brisk walk through Times Square in order to come across tables laden with counterfeited fare, from not-so-red-bottomed Louboutin shoes to DVDs of movies not yet in theaters.  The increasing prevalence of counterfeit goods in the marketplace has caused law firms and in-house legal departments to attempt numerous methods, beyond traditional civil litigation, to thwart counterfeiters.  Cardozo’s Intellectual Property Law Society brought a panel together on November 15 to discuss the practices currently employed by law firms and in-house legal departments in their seemingly endless struggle to combat counterfeiters.  Danielle Gorman, Co-Acquisitions Editor of the Cardozo Arts & Entertainment Law Journal (“AELJ”), and Francesca Montalvo, an AELJ staffer, moderated the panel discussion.

The direct result of counterfeiting is displacement of sales.  However, it is unlikely that consumers of luxury goods will purchase suspiciously cheap alternatives, restricting this damage to manufacturers of lower-priced items.  Secondary dilution, on the other hand, affects manufacturers of luxury goods and is typically unquantifiable.  “If someone purchases a fake Coach handbag . . . and it looks awful, and they give it away or just carry it around, a potential consumer will see the handbag and say ‘wow, Coach has really gone downhill,’ and this tarnishes our reputation,” said panelist Ethan Yat Fai Lau, in-house counsel for Coach, Inc.  Other effects of counterfeiting include “funneling money into terrorist organizations, as well as child labor issues and tax issues—counterfeiters don’t pay taxes,” added Mr. Lau.

Thus, “one of the main things that [companies] spend their time doing is finding counterfeits,” said panelist Giselle C.W. Huron, an associate in Fross Zelnick Lehrman & Zissu, P.C.’s litigation practice group.  This can be accomplished in a number of ways including searching online marketplaces such as Ebay.com, using brand agents who go out into the field to collect evidence and make undercover purchases, coordinating with U.S. Customs and Border Protection, and reviewing consumer complaints.

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The views expressed here are exclusively of the author and do not represent agreement or endorsement by the Cardozo Arts & Entertainment Law Journal, Benjamin N. Cardozo School of Law, or Yeshiva University.

Author: David Bonilla, J.D Candidate, Class of 2014, Benjamin N. Cardozo School of Law

Networking remains the name of the hiring-game.  As the summer rapidly approaches and IP-minded Cardozo students continue their attempts to secure IP-related summer employment, Cardozo’s Intellectual Property Law Society brought together a panel of IP attorneys to discuss careers in trademark law.  The consensus: all’s quiet on the hiring front.  Nonetheless, the panelists offered sage advice for legal job seekers in general and those interested in careers in trademark law in particular.  Danielle Gorman, co-acquisitions editor of the Cardozo Arts & Entertainment Law Journal (“AELJ”), moderated the panel discussion.

While the panelists were very straightforward about the lack of openings at law firms, they still stressed the importance of networking.  Marc A. Lieberstein, a partner at Kilpatrick Townsend & Stockton LLP and a graduate of Cardozo Law School, got his first job in intellectual property through his cousin, “a partner at an intellectual property boutique.”  Similarly, Michelle Mancino Marsh, a partner at Kenyon & Kenyon, got her first IP job after her firm was dissolved and a law school classmate told her to apply for a position at Kenyon’s IP-litigation department.  In other words, don’t be shy about milking those contacts you already have.  More importantly, take this time while in law school to make contacts that, in the future, might be able to help you land a job.

Of course, we’ve all heard this before.  The networking-pill might be a hard one for a law student to swallow considering the fact that the panelists who preached the importance of networking prefaced their endorsements of that oft-reviled job-hunting tactic by reminding students that there simply aren’t any jobs.  No jobs, why network?  “You have to start somewhere.  Even if the big job that you wanted out of law school is not available after graduation, you can still get that job after you’ve gotten a few years of experience at a smaller firm,” said Mr. Lieberstein.

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The views expressed here are exclusively of the author and do not represent agreement or endorsement by the Cardozo Arts & Entertainment Law Journal, Benjamin N. Cardozo School of Law, or Yeshiva University.

Author: Gill Benedek, J.D Candidate, Class of 2014, Benjamin N. Cardozo School of Law

We live in tumultuous times.  Or so Professor David Nimmer, a prolific copyright law scholar, proposed during the Annual Burns Senior Lecture in Intellectual Property on January 17^th 2013, at the Benjamin N. Cardozo School of Law.  Armed with a highly animated PowerPoint presentation, Professor Nimmer guided over 100 students and practitioners through critical cases and legislative developments that address online copyright infringement.

Ultimately, who is really responsible for online copyright infringement?  Professor Nimmer began by discussing § 512(c) of the Digital Millenium Copyright Act’s (DMCA) “Safe Harbor” provision and recent related cases.  Online Service Providers (OSP), such as YouTube.com, can receive protection from copyright infringement liability if they are in compliance with the technical and policy requirements as setout in the DMCA’s “Safe Harbor” provisions.  Essentially, the Safe Harbor provisions place the responsibility of mitigating copyright infringing material onto service providers such as YouTube because they are in the best position to manage their networks.

This “Safe Harbor,” however, is not guaranteed.  One of the ways to be outside the Safe Harbor’s protections, among others, is if the service provider has actual knowledge of infringement [§ 512(c)(A)(1)(i)] or is aware of facts or circumstances from which the infringing activity is apparent [§512(c)(A)(1)(ii)].  It is the latter knowledge––facts or circumstance from which the infringing activity is apparent––that is dubbed the “Red Flag” test.  Professor Nimmer suggests that recent cases such as Perfect 10 v. CCBill and UMG v. Veoh Networks apply this test narrowly, thus allowing service providers to exercise near willful blindness in response to facts that suggest infringing activity.  The upshot of such a narrow application of the Red Flag test is that it shifts the responsibility of policing copyright infringement back onto the copyright owners.

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The views expressed here are exclusively of the author and do not represent agreement or endorsement by the Cardozo Arts & Entertainment Law Journal, Benjamin N. Cardozo School of Law, or Yeshiva University.

Author: Sam Castree, III, J.D Candidate, Class of 2013, Chicago-Kent College of Law

Online media distribution has become big business in recent years.  For example, Apple sold 10 billion songs on its iTunes platform between April 2003 and February 2010, an average of 46 songs per second.  So far in 2012, Amazon.com has sold 14% more e-books than traditional paper books.  These and other online digital media stores allow individuals and companies big and small to distribute their creative works worldwide.  However, the ease of copying electronic files also turns digital media stores into excellent opportunities for the unscrupulous to turn a quick, dirty payday.  Numerous creators, typically lone individuals and small start-up companies, are seeing their works copied wholesale by plagiarists and sold in digital media stores.

Unfortunately, the Digital Millennium Copyright Act (DMCA), Congress’s attempt to protect online service providers from secondary liability based on the actions of other Internet users, is not equipped to handle the widespread growth of digital media stores.  In particular, two provisions of the DMCA’s § 512(c) safe harbor for user-generated content are ripe for messy conflict because of ambiguities in the statutory language and contradictory interpretations by the courts.  Absent a revision by Congress, these gaps will only be closed by costly litigation and appeals, something that many of the victimized creators cannot afford.

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The views expressed here are exclusively of the author and do not represent agreement or endorsement by the Cardozo Arts & Entertainment Law Journal, Benjamin N. Cardozo School of Law, or Yeshiva University.

Author: Elsa Mitsoglou, J.D Candidate, Class of 2014, Benjamin N. Cardozo School of Law

Dr. Elena Cooper has been the Orton Fellow in Intellectual Property Law at Trinity Hall, Cambridge since 2009. She is also a researcher at the Faculty of Law on the “Of Authorship and Originality” project, funded by Humanities in the European Research Area (HERA). Dr. Cooper received a law degree from the London School of Economics and a master’s degree in Intellectual Property Law from King’s College London. She also has a PhD from the University of Cambridge, where her studies focused on the relationship between art and law in the history of photographic copyright. Her PhD thesis was awarded a Yorke Prize.

On September 24, 2012, Dr. Cooper was invited to present at Cardozo’s Intellectual Property and Information Law Speaker Series. The presentation was based on her latest article, Copyright: A Nineteenth Century Publicity Right?, which explores the history of photographic copyright. The article provides an alternative history of publicity rights law in England. Dr. Cooper explains that although England does not have a general law of privacy or publicity, publicity rights were protected through photographic copyright law in the 1860s.

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The views expressed here are exclusively of the author and do not represent agreement or endorsement by the Cardozo Arts & Entertainment Law Journal, Benjamin N. Cardozo School of Law, or Yeshiva University.

Author: Adam Hirst, J.D Candidate, Class of 2014, Benjamin N. Cardozo School of Law

The Cardozo Intellectual Property Society hosted Mr. Bernard Knight, the current General Counsel of the US Patent and Trademark Office (USPTO), for a discussion of his role as the chief attorney for a large US government agency and recent, significant, changes to patent law, with particular emphasis on the America Invents Act (AIA).

Mr. Knight stated that the AIA is the biggest change in trademark and patent law over the past fifty years. One of the major changes of the AIA was to change U.S. patent law from a “first-to-invent” system to a “first-to-file system.” This change brings U.S. patent law into harmony with the patent law of other developed countries. Mr. Knight also mentioned a number of other reforms included in the AIA: Post-grant review, inter partes review, and fee setting authority delegated to the USPTO that would allow the USPTO to adjust its fees “in the aggregate” to recover the estimated costs of its activities. Mr Knight said that the AIA was implemented in a year without lawsuits being filed against the agency.

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The views expressed here are exclusively of the author and do not represent agreement or endorsement by the Cardozo Arts & Entertainment Law Journal, Benjamin N. Cardozo School of Law, or Yeshiva University.

Author: Marc Pellegrino, J.D Candidate, Class of 2014, Benjamin N. Cardozo School of Law

The line is increasingly blurred between what content is or is not endorsed by a particular entity online. Social marketing outlets like Facebook and Twitter allow bloggers, celebrities and companies to communicate with their audience more intimately and in turn, content is shared and disseminated seamlessly among Internet users. Cardozo School of Law’s Intellectual Property Law and Cyberlaw Societies brought a panel together last month to discuss the ways in which businesses that interact with the vast array of these social networking outlets can effectively comply with Federal Trade Commission (FTC) disclosure regulations in light of the increase in sponsored content online. Robert DeBrauwere, co-chair of the Digital Media Group at Pryor Cashman LLP, and former Cardozo Arts & Entertainment Law Journal editor, moderated the discussion.

The FTC views the reasonable consumer as having a “healthy skepticism” toward conventional advertisements, said Leonard Gordon, partner at Venable LLP and former Regional Director of the FTC’s Northeast Regional Office. On the other hand, with the Internet facilitating the emergence of “consumer to consumer” marketing, it is harder and harder to determine the relationship between the author of the blog, tweet or product review and the underlying “product,” said Gordon. As a result, the 2009 revision of the FTC Guide states that, where it is not apparent that there is a “material connection” between the endorsee and product, an endorsee who is compensated in some way by the product must “conspicuously disclose” such information.

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The views expressed here are exclusively of the author and do not represent agreement or endorsement by the Cardozo Arts & Entertainment Law Journal, Benjamin N. Cardozo School of Law, or Yeshiva University.

Author: Al Roundtree, J.D Candidate, Class of 2013, Benjamin N. Cardozo School of Law

“What a prosperous looking bunch of lawyers,” was keynote speaker Scott Borchetta’s opening remark to the assembled group of entertainment lawyers, music industry professionals, and law students at last month’s Breakfast with ELI.

Borchetta is the President and CEO of Big Machine Label Group.  Big Machine represents recording artists such as Rascal Flatts, Tim McGraw, and Taylor Swift.  Borchetta has been labeled the “Country Music Anti-Christ” by some country music purists due to his promotion of Taylor Swift, “the biggest perversion of the term ‘country’ the genre has ever seen.”  More recently, in June 2012, Borchetta forged an unprecedented deal with media giant Clear Channel that entitles Big Machine artists to performance rights for terrestrial radio play, a deal that will likely become the industry model as radio continues to evolve into a digital format.  This recording artist-friendly agreement answers, in part, the larger question of how recording artists make money in the digital age.

Pursuant to U.S. copyright law, a song played over terrestrial radio is a public performance of a musical composition.  To publicly perform a musical composition, the terrestrial radio station must obtain a license from the composition copyright holder.  Online or digital, “interactive” radio is a different story –  recording artists have the right to receive licensing fees for songs streamed through websites such as Spotify.  Thus, under current copyright law, only composers, through performing rights organizations such as BMI and ASCAP, receive royalties for terrestrial radio play; the recording artists’ only compensation is publicity.

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The views expressed here are exclusively of the author and do not represent agreement or endorsement by the Cardozo Arts & Entertainment Law Journal, Benjamin N. Cardozo School of Law, or Yeshiva University.

Author: Russell Hasan, Esq., Member of the Bar of the State of New York, J.D. UConn Law 2011

Some academics have raised concerns that copyright law might be in conflict with First Amendment free speech law. Some scholars fear that copyright law might restrict the free flow of information in the marketplace of ideas. The typical answer to such concerns, embodied in the Supreme Court cases Harper & Row Publishers Inc. v. Nation Enterprises and Eldred v. Ashcroft, is that copyright law contains internal doctrinal mechanisms, namely the idea-expression dichotomy and fair use, which alleviate free speech concerns. Copyright law protects only expressions, not ideas or facts; so where free speech might encourage an idea or fact to be widely disseminated, copyright law would restrict it. The idea-expression dichotomy holds that ideas and facts are not within the subject matter of copyright protection. Therefore the media is free to report on facts and spread ideas, so long as they do so using expressions alternative to those protected by copyright.

Commentators argue that sometimes the free-speech interest in spreading knowledge requires use of copyrighted expressions. These commentators suggest that cases that conflict with free speech might require the creation of a distinct free-speech defense to copyright infringement.

However, there is no need for a distinct free-speech defense. Copyright law already contains a doctrine, the merger doctrine, which, if properly applied, would reconcile copyright law and free-speech law in cases where expressions are necessary in order to effectively spread ideas or for the press and news media to report on facts. The merger doctrine was developed in two cases, Morrissey v. Procter & Gamble Co. and Herbert Rosenthal Jewelry Corp. v. Kalpakian.

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The views expressed here are exclusively of the author and do not represent agreement or endorsement by the Cardozo Arts & Entertainment Law Journal, Benjamin N. Cardozo School of Law, or Yeshiva University.

Author: Ryan Brewer, J.D Candidate, Class of 2014, Benjamin N. Cardozo School of Law

The Cardozo IP & Information Law Program kicked off its fall 2012 IP Speaker Series with a presentation by Professor Peter Swire. Professor Swire teaches at the Moritz College of Law at Ohio State University and is a national and global leader on privacy, cybersecurity, and related technology issues. In his third appearance at the Benjamin N. Cardozo School of Law, Professor Swire discussed his upcoming article: The Right to Data Portability: Is This New Privacy Right Contrary to Antitrust Law?

Professor Swire focuses his discussion on the January 2012 draft of proposed reforms to the European Union (EU) Data Protection Directive that was put in place seventeen years ago. The proposal places the Right to Data Portability (RDP) amongst other fundamental human rights recognized within the EU and creates RDP for all EU citizens. More specifically, RDP creates a right in every user to obtain, in a “widely–used format,” a copy of his or her own electronic data that is “undergoing processing.” The regulation also creates a right to manipulate this data and export it “without hindrance.”

Professor Swire contends that this regulation was created with major Internet companies in mind—such as Facebook—and without consideration of the unintended and highly detrimental effects it would have on small businesses and consumers. Professor Swire provided the example of Facebook, which received criticism for many years over its control of users’ information. Previously, Facebook did not offer an export–import module (EIM) that would allow users to remove or export user material (e.g. photos, posts, contact lists) from the site. Furthermore, it was unclear which information a Facebook user had a right to—comments, liked pages, and photos in which the user was tagged were not necessarily considered the user’s own data. Prior to the passage of this regulation, Facebook responded to the criticism by creating its own EIM that allows a user to control his or her data in a manner that generally complies with the new right.

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The views expressed here are exclusively of the author and do not represent agreement or endorsement by the Cardozo Arts & Entertainment Law Journal, Benjamin N. Cardozo School of Law, or Yeshiva University.