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Alternatives Now Available to Copyright and Trademark Owners to Combat Gray Market and Counterfeit Goods: Recent First Sale and Related Litigation


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Wednesday, October 26, 2011
Product Code - LGAU02
Speaker(s): Scott Bain, Software Information & Industry Association; Andrew Berger, Tannenbaum Helpern Syracuse & Hirschtritt LLP; Lisa M. Martens, Fish & Richardson P.C.; Randi W. Singer, Weil Gotshal & Manges LLP
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Gray market and counterfeit goods continue to flood the marketplace and present unique challenges to copyright and trademark holders. Traditionally, consumers of gray market goods have attempted to seek refuge under the First Sale Doctrine, arguing that a manufacturer’s first sale should exhaust its right to further control distribution of goods. But a recent Ninth Circuit case, Vernor v. Autodesk, holds in the software context that a copyright owner can avoid the first sale doctrine through a well-drafted license agreement. Another even more recent Second Circuit Case, Wiley v. Kirtsaeng, appears to deny first sale protection to goods made overseas, even if they were imported with the permission of the copyright holder. What protections do consumers of gray market goods have to avoid infringement? What rights do foreign manufacturers have to control their distribution in the United States? This program will offer guidance on these issues.

The program will also offer guidance on a related problem: how to deal with the influx of counterfeit goods sold on back streets and via the Internet. What litigation alternatives do trademark holders have? How can trademark holders partner with the government to shut off the supply of counterfeit goods? What industry-wide initiatives have been effective in dealing with this problem and what legislation may be on the horizon.

Educational Objectives:

• The sources and typical ways by which gray market goods find their way into the United States
• When transfer of a copy either conveys ownership or is treated as a license
• How the courts have interpreted the phrase in the First Sale Doctrine “lawfully made under this title”
• The litigation alternatives trademark holders have to deal with counterfeit goods
• Upcoming legislative and government initiatives dealing with counterfeiting

Who would benefit from attending this program?

In-house and outside counsel who represent overseas and domestic manufacturers and software developers in intellectual property matters.

Scott Bain, Software Information & Industry Association; Andrew Berger, Tannenbaum Helpern Syracuse & Hirschtritt LLP; Lisa M. Martens, Fish & Richardson P.C.; Randi W. Singer, Weil Gotshal & Manges LLP

Scott Bain / Chief Litigation Counsel and Director of Internet Anti-Piracy/ Software Information & Industry Association

Mr. Bain manages and conducts SIIA litigation, including anti-piracy lawsuits on behalf of member companies in the software and publishing industries, as well as other litigation for the association and its members. He also conducts various compliance, educational, and policy initiatives relating to intellectual property.

Mr. Bain formerly was Vice President of Legal Affairs at the Recording Industry Association of America, where he led litigation to curb online copyright infringement and shape appropriate secondary liability principles. Before that, he was a partner at the law firm of Wiley Rein & Fielding LLP in Washington, D.C. Mr. Bain has litigated a wide variety of copyright, patent and other intellectual property cases, including three “NLJ 100” victories. In Lowry's Reports, Inc. v. Legg Mason, Inc. (D. Md. 2003), he was co-counsel for the plaintiff Lowry’s in what was reported as "one of the largest copyright verdicts in American history," a $19.7 million award for the copying and internal distribution of financial newsletters priced at $700. In NTP, Inc. v. Research in Motion Ltd. (E.D. Va. 2002), his client NTP procured a highly publicized $612 million patent infringement settlement from the manufacturer of the BlackBerry device.

Mr. Bain is a frequent speaker and author on intellectual property topics. He is co-author of the 2005 book Copyright Law in the Digital World: Basics, Law and Policy and many other IP publications, and was Co-Chair of the ABA International IP Committee. A former software engineer, he graduated from the University of Minnesota with a Bachelor of Electrical Engineering degree. He earned a J.D. from Boalt Hall School of Law at the University of California-Berkeley and then clerked for the Honorable Randall R. Rader of the U.S. Court of Appeals for the Federal Circuit.

Andrew Berger / Counsel / Tannenbaum Helpern Syracuse & Hirschtritt LLP
Andrew Berger is counsel to the New York firm Tannenbaum Helpern Syracuse & Hirschtritt LLP, where he specializes in intellectual property litigation, licensing, and commercial litigation. He represents content creators (including a 2010 Academy Award winner), entrepreneurs, ad agencies, distributors, and software companies in a variety of copyright and trademark matters. Mr. Berger graduated from Cornell University and its law school and is the past president of the Cornell Law Association, the alumni body representing the 9,000 graduates of that school.

Mr. Berger is a trustee and serves on the executive committee of the Copyright Society of the U.S.A. He is also the co-chair of the Copyright Subcommittee of the IP Litigation Committee of the ABA. Mr. Berger has been teaching trial practice at Hofstra Law School for the past 15 years. For the second consecutive year, he is rated among the top litigators in New York by Avenue Magazine. Mr. Berger writes an IP blog called “IP In Brief” which tracks and comments on how copyright and trademark law are reshaped by innovation, new technologies, and new media. The blog can be found at http://www.ipinbrief.com.

Lisa M. Martens / Principal /  Fish & Richardson P.C.
Lisa Martens is a Principal in the Southern California office of Fish & Richardson. Her practice emphasizes trademark prosecution and litigation for the food service, health care, biotechnology, computer, Internet, and retail clothing industries. Ms. Martens has significant experience in managing U.S. and foreign trademark portfolios for large international companies. Her internet work includes handling domain name disputes and securing domain names in the U.S. and worldwide, as well as providing advice on legal requirements for conducting online sweepstakes and promotions. Ms. Martens' practice also includes licensing intellectual property and litigation relating to trademarks, copyrights, trade secrets, and false comparative advertising.

Ms. Martens is admitted to practice in the United States District Court for the Northern District of California, the United States District Court for the Eastern District of California, the United States District Court for the Central District of California, and the United States District Court for the Southern District of California. She is a member of the International Trademark Association, American Bar Association, California Bar Association, and San Diego Intellectual Property Law Association and is listed in The International Who's Who for Trademark Attorneys (2011, 2009, 2007). She was selected to San Diego Super Lawyers Intellectual Property Litigation, Intellectual Property 2007-2011 and is listed in "The Legal 500 US IP" of top law firms and lawyers in the area of Trademark. Ms. Martens has also been named by San Diego Metropolitan Magazine as one of "San Diego’s 40 Young Leaders Under 40," September 2007 and by San Diego Daily Transcript as one of "San Diego's Top Attorneys, " July 2009.

Ms. Martens earned a J.D. from DePaul University College of Law, Order of the Coif, and a B.A. from Cornell College, magna cum laude.

Randi W. Singer / Partner / Weil Gotshal & Manges
Randi W. Singer is a litigation partner in the New York office. Ms. Singer’s practice focuses on copyright and Lanham Act false advertising and trademark litigation, as well as privacy, social media, music licensing, First Amendment, right of publicity and other intellectual property issues.

In addition to complex commercial litigation matters and bankruptcy proceedings, Ms. Singer has successfully represented and counseled clients on a wide variety of advertising, trademark and state unfair trade practices issues involving a broad spectrum of consumer products and services such as over-the-counter drugs, razors, toothpaste, paint, financial services, food, cosmetics, luxury goods and consumer electronics. She has achieved significant litigation victories for clients, including a high-profile win for eBay following a bench trial involving allegations of trademark infringement, a complete defense verdict for Procter & Gamble after a three-week jury trial involving claims of false advertising, and summary judgment for GlaxoSmithKline in a suit alleging trademark, false advertising and trade secret violations. Ms. Singer’s extensive litigation experience ranges from motion practice to bench and jury trials, with a particular expertise in preliminary injunction proceedings. She has been recognized in The Legal 500 and in Chambers USA.

Ms. Singer has taught Trademarks and Unfair Competition Law as an adjunct professor at St. John’s University School of Law. Her speaking engagements include panels and discussions concerning copyright, advertising and other intellectual property issues for various organizations such as the Copyright Society, the National Advertising Division, the Practising Law Institute, the American Conference Institute and the New York State Bar Association Section on Intellectual Property. Other professional affiliations include the International Trademark Association (INTA), the New York State Bar Association, the Private Advertising Litigation subcommittee of the ABA, and the Association of the Bar of the City of New York, where she served four years as Secretary of the Consumer Affairs Committee.

She is the New York head of Women@Weil, Weil’s women’s affinity group, the winner of Weil’s first-ever mentoring award, and was inducted into the YWCA’s Academy of Women Leaders. Herpro bono efforts include successes for the Hebrew Immigrant Aid Society and Sanctuary for Families, as well as extensive legal support and counseling concerning ambush marketing for NYC2012, New York City’s bid for the 2012 Olympics.

Ms. Singer graduated magna cum laude from Harvard University. After earning a J.D. from Columbia Law School, where she was a Harlan Fiske Stone Scholar, Ms. Singer clerked for the Honorable Richard Owen, US District Judge for the Southern District of New York.