Too Much Trademark “Melodrama”: Court Sanctions Author for Fraudulently Registering Book Publisher’s Trademark . . . and Then Using the Registration to Claim Publisher Is a Trademark Infringer

Southern District Grants Melodrama Publishing’s Pleading-Stage Request to Cancel Author’s Registration

The burden of showing fraud in a trademark filing is ever-evolving but always high. A similarly high standard applies when it comes to meeting the “exceptional case” requirement for an award of attorneys’ fees for the prevailing party. Nevertheless, some cases involve such obvious wrongdoing that the burdens can be met before discovery even opens. This is one of those cases. Continue reading

Kirtsaeng v. John Wiley & Sons: Supreme Court Applies First Sale Doctrine to Foreign-published Books Despite Publisher’s Geographic Import Restrictions

Court adopts policy of international exhaustion

In the recent case of Kirtsaeng v. John Wiley & Sons, the Supreme Court held that the first sale doctrine, codified in Section 109(a) of the Copyright Act, applies to copyrighted works manufactured overseas. Kirtsaeng, a Thai national studying mathematics in the United States, made himself thousands of dollars reselling textbooks on eBay that had been manufactured by Wiley’s Asian subsidiary and shipped to him by family and friends. Although the English-language Thai editions were nearly identical to their American counterparts, Wiley had priced them differently, as economic conditions and demand for academic textbooks vary in different territories. While this sort of activity is undoubtedly legitimate (and the underpinning of robust businesses) if it’s done entirely within the United States, the statutory text is, in the words of the Second Circuit, “simply unclear” and “utterly ambiguous” when you consider works produced abroad that are imported and resold domestically. Proponents of differential pricing argue that their ability to serve poorer territories with low cost, lower quality publications is subsidized by the sale of higher quality books where the market will allow it, whereas critics emphasize the importance of consumers’ freedom of choice and argue that differential pricing is not an exclusive right of copyright holders. Continue reading

Central Park Five: Judge Blocks City’s Subpoena

Ken Burns Film Not Required to Produce Footage and Outtakes

Renowned documentary filmmaker Ken Burns and his film company, Florentine Films, won a significant legal victory recently as a Magistrate Judge ruled that they do not have to produce unused material from his documentary The Central Park Five to New York City. On February 19, 2013, Magistrate Judge Ronald Ellis ruled that Burns and Florentine are protected by the reporter’s privilege. Continue reading

CDAS Client Katherine Applegate Wins Newbery Medal for Outstanding Children’s Book

Our whole firm joins CDAS partner J. Stephen Sheppard in congratulating our client Katherine Applegate on winning the Newbery Medal for her novel “The One and Only Ivan,” published by Katherine Tegen Books, an imprint of HarperCollins Children’s Books. Regarded as one of the most prestigious awards in publishing, the Newbery Medal is awarded annually to the most outstanding children’s book published in the preceding year. Continue reading

Facebook Introduces Graph Search, Privacy Challenges Possible

Facebook recently unveiled “Graph Search,” an innovation designed to help users find and connect their friends by their interests, shared history, and past activity on the social networking platform. The new feature, which will begin beta testing soon, greatly expands the search capabilities of the Facebook platform in a move some commentators speculate may help it compete with Google in the search business area. The Wall Street Journal has a rundown of Graph Search’s functionality here. Continue reading

What 2013 May Ring In For New Copyright Legislation

2012 was a quiet year for any new copyright legislation that could affect those engaged in the creation, production and distribution of entertainment media. With the elections behind us, this could change in 2013. The Copyright Office has indicated that it is interested in tackling several issues that were identified as office priorities in a two-year plan under the new Register of Copyrights, Maria A. Pallante, filed in October 2011. As Co-Chair of the American Bar Association Committee on Copyright Legislation, I have been following these and other legislative issues and will continue to provide updates throughout the year. Continue reading

Nancy E. Wolff Moderates “What Libraries Can Do Under Copyright” Panel, Part of CSUSA 2013 Mid-Winter Meeting

CDAS partner Nancy E. Wolff will moderate the panel “What Libraries Can Do Under Copyright,” part of the Copyright Society of the U.S.A.’s 2013 Mid-Winter Meeting, on Friday, February 15, 2013, from 9:00am – 10:30am. (The full CSUSA 2013 Mid-Winter meeting will take place from Thursday, February 14 through Saturday, February 16, 2013, at the Omni Austin Downtown Hotel in Austin, Texas). Continue reading

Kenneth N. Swezey Co-moderates “E-Books: The Sequel – Rights, Wrongs and Realities” at 2012 NYSBA EASL Fall Meeting

Kenneth N. Swezey will co-moderate the panel “E-Books: The Sequel – Rights, Wrongs and Realities” as part of the New York State Bar Association, Entertainment, Arts & Sports Law section’s 2012 Fall Meeting, on Thursday, November 15, 2012 in New York City. The full meeting runs from 3:30pm to 6:45pm, followed by its reception at The Cornell Club on 6 East 44th Street. (“E-Books: The Sequel” is Panel 2 which begins at 5:15 PM till 6:45 PM). Continue reading

Google Settles Book Scanning Lawsuit With Publisher Group

On October 4, 2012, Google reached a settlement in the Google Books case with the publisher plaintiffs, which include The McGraw-Hill Companies, Inc., Pearson Education, Inc., Penguin Group (USA) Inc., John Wiley & Sons, Inc., and Simon & Schuster, Inc. The Association of American Publishers (AAP) represented the publishers in the settlement, resolving its seven-year copyright dispute over Google’s controversial book digitization project in The McGraw-Hill Cos. Inc, et al. v. Google Inc., 05-cv-08881 (S.D.N.Y.). In 2004, Google launched the Google Books Project and commenced scanning thousands of books from major public and academic libraries pursuant to agreements with the libraries. Through its Google Books service, Google makes the scanned books searchable and publicly displays fragments of the books in response to search queries. In October 2005, five AAP member Publishers and the Authors Guild, on behalf of a class of authors, sued Google in the United States District Court for the Southern District of New York, claiming Google did not seek authorization from the owners of the works and accusing Google of massive copyright infringement. Google countered that its scanning and display of the books was fair use because it displayed only small “snippets” of each book, and the scanning was conducted for that purpose. Continue reading

Nancy E. Wolff – “What You Need to Know About Copyright”

CDAS partner Nancy E. Wolff joins the panel “What You Need to Know About Copyright, Licensing and Image/Footage Usage Trends” presented by Visual Connections, Wednesday, October 24, 10am, at The Altman Building, 135 West 18 Street, New York City. The panel will discuss a variety of copyright issues including fair use, orphan works, royalty free, managed rights, and copyright concerns in innovative uses of imagery. Please click here for more information and to register.