intellectual property: news
World Trademark Review Recognizes Nancy Mertzel in the 2016 Edition of The World’s Leading Trademark Professionals
January 22, 2016
Herrick Intellectual Property group chair Nancy Mertzel was recognized in World Trademark Review's annual WTR 1000, a list of the world's leading trademark professionals. World Trademark Review noted that Nancy draws praise from the IP bar, citing her reputation as "a dedicated, knowledgeable IP lawyer," as well as the "fantastic job" she did as author of an amicus brief on B&B Hardware, Inc. v. Hargis Industries, Inc., which involved the preclusive effect of decisions by the Trademark Trial and Appeal Board on subsequent litigation.
Taylor Swift, Matt Drudge and U.S. Copyright Law
November 13, 2015 -- Investor's Business Daily
Nancy Mertzel was quoted in Investor's Business Daily about how U.S. copyright law is ill-equipped to handle modern Internet functionality, as Congress begins considering the most sweeping reform of copyright law since 1976. In the meantime, Mertzel said "the biggest thing we're going to see is the notion of digital technology pushing up against the boundaries of copyright law." She added, "There will be more cases that require judges to figure out a balance between wanting to encourage new technology and content, but also authorship, so creators are incentivized."
Legal fight over California's unique art-sales law nears climax
December 17, 2014 -- The Los Angeles Times
Barry Werbin was cited in a Los Angeles Times story on a federal appeal of a lawsuit to enforce California's Resale Royalty Act. The 1976 law gives artists who are American citizens or California residents a 5-percent royalty when a state collector or gallery sells their work on a secondary market. The story references an article that Barry wrote for Herrick's Art & Advocacy newsletter on the U.S. Copyright Office recommending a federal artist resale royalty. This change would put visual artists on the same footing as composers, playwrights and authors, who are paid every time their works are resold as a live performance, recording or book.
Lawsuits on Rise as Establishment Takes Issue with Upstart Firms' Aggressive Growth
August 20, 2014 -- Real Estate Weekly
Barry Werbin, chair of Herrick's Intellectual Property practice, is quoted in a Real Estate Weekly article discussing the recent spate of lawsuits filed by real estate brokerage heavyweights alleging that rapidly growing competing startups are benefiting from expropriated market data. "Lawsuits between startups and incumbents over alleged information theft are common in many industries," Barry explains, noting that disruptive market entrants can face severe opposition as evidenced by the U.S. Supreme Court's recent ruling in favor of major television broadcasters against the startup Aereo.
NBC, Dish Talks Ease Tensions Over Ad-Skipping
June 27, 2014 -- Wall Street Journal
Barry Werbin, chair of Herrick’s Intellectual Property practice, is quoted in a Wall Street Journal report examining how the Supreme Court’s ruling in ABC v. Aereo might impact emerging broadcast TV delivery technologies such as Hopper, Dish Network’s ad-skipping digital video recorder.
NFL still standing with franchise on name
June 23, 2014 -- Sports Business Journal
Barry Werbin was quoted in the Sports Business Journal article "NFL still standing with franchise on name" (subscription required). In the article, Barry opines on the USPTO Trademark Trial & Appeal Board's cancellation of the Washington Redskins trademark, and the team's prospective use of common law to protect its trademark in the future. He adds that the matter is "also a big political issue, with the NFL having been pressured…by some 49 senators to force the team to change its name. Considering what happened with Sterling's racial remarks and the NBA forcing a sale of the Clippers, we probably are moving more and more to zero tolerance within the leagues respecting race and disparagement."
Broadcasters Consider Supreme Court Petition on Aereo
October 11, 2013 -- The Wall Street Journal
Barry Werbin was quoted in The Wall Street Journal article "Broadcasters Consider Supreme Court Petition on Aereo." In the article, Barry predicted the Supreme Court "ultimately will have to intervene in the matter, because of the significant potential impact these services could have on broadcast television and the public."
Dealer Pleads Guilty to Sale of Phony Lithograph
September 6, 2013 -- The Connecticut Law Tribune
Herrick Intellectual Property and Technology Group Chair Barry Werbin’s comments on Internet-based art fraud were featured in the Connecticut Law Tribune article “Dealer Pleads Guilty to Sale of Phony Lithograph.” In the article, Barry opines that “assessing the legitimacy of art at a gallery or auction house, where the work can be seen in person and examined by a buyer’s art consultant…is not certain to result in the purchase of a bona fide original.”
Law 360 Profiles Herrick Partner and Intellectual Property Group Chair
August 8, 2013 -- Law 360
Herrick Intellectual Property and Technology Group Chair Barry Werbin was profiled in the Law 360 interview “Q&A With Herrick, Feinstein’s Barry Werbin.” In the interview, Barry delves into Herrick’s successful representation of the estate of Michael Arnone, an original member of the Duprees and the owner of the underlying trademark rights to the group’s name. Barry also discusses, among other topics, the 1976 Copyright Act, and the extension of the fair use doctrine in the context of digital media and content delivery.
Copyright Protection, Freedom of Expression, and Fashion Show Photographs?
February 22, 2013 -- Center For Art Law
The Center For Art Law excerpted and linked to a review of the Ashby Donald and others v. France decision written by Barry Werbin, partner and chair of the Intellectual Property and Technology Group, which was originally published by the New York State Bar Association's Entertainment, Arts and Sports Law Blog.
Ultra Music, Ultra Music Festival Announce 'Global Alliance'
August 12, 2012 -- Billboard.biz
Days after Herrick successfully represented Ultra Enterprises, Inc. in a federal law suit against the largest independent electronic dance music (“EDM”) record label in a trademark infringement and breach of contract action in the U.S. District Court for the Southern District of New York, both parties agree to an alliance. The alliance is the result of a 13-hour settlement negotiation, spearheaded by Herrick, which benefits the growth of the Ultra brand.
Have You Heard? Duprees Singer's Suit Over Group's Name Is Thrown Out.
March 28, 2012 -- New Jersey Law Journal
Barry Werbin is quoted and Herrick’s win in federal court in New Jersey is noted in this article. A federal judge in New Jersey granted judgment to our client, the Estate of Michael Arnone, in a case that challenged the registered trademark ownership and rights of our client to use or license the name of The Duprees. The group, one of the world’s leading doo-wop groups, tours to this day and generates royalties. The judgment likely brings to a close the six-year dispute over the rights to the name and rejects the notion that early members of a band can use the group’s name if they leave the band without securing an agreement to the contrary or a license.
Toto, I've a feeling we're not in the public domain anymore
July 13, 2011 -- Thomson Reuters News & Insight
Barry Werbin weighs in on the possibility of appeal from or en banc reconsideration of a complex Eighth Circuit decision regarding rights to publicity photos shot on movie sets, based on the 1909 Copyright Act. This article notes that Barry is chair of the New York City Bar Association's copyright committee and mentions his view that portions of the plaintiff-friendly decision might be ripe for appeal, but that en banc reconsideration is unlikely, given the absence of a dissenting opinion from the three-judge panel.
NFL warning sponsors about deals with players trade group
March 27, 2011 -- Sports Business Journal
Barry Werbin says the NFL's and franchises' websites are primarily informational -- and the players public figures -- which means the league is probably on safe ground continuing to use players' likenesses during the lockout. He says he understands the players' ire but says the league's First Amendment rights to disseminate information probably will prevail.
Firms Train Sights on MTA Licenses
January 30, 2011 -- Crain’s New York Business
Barry Werbin is quoted in “Firms Train Sights on MTA Licenses,” which discusses the growing popularity of New York City subway merchandise and how several entrepreneurs have licensing contracts with the MTA. Barry explains that entrepreneurs must have solid projections of what they can sell and how much demand there is for their product before entering into these contracts.
SC Leaves Big Questions Open in Text-Message Privacy Case
June 18, 2010 -- E-Commerce Times
Barry Werbin says the Supreme Court's ruling in City of Ontario v. Quon was based on such a narrow and unusual fact pattern that it leaves open the larger questions of how much privacy employees can expect when they use employers' networks and systems for personal communications during work hours. Barry notes that as the cost of technology drops, more employees will have personal communications devices, which should lessen their reliance on employers' equipment.
Can Offbeat Names Hurt Business?
August 3, 2009 -- SmartMoney's SmallBiz
Barry Werbin cautions entrepreneurs against using lewd names for their small businesses because, he says, U.S. trademark law prohibits registering marks that the general public would consider immoral or scandalous. Also, he reminds, landlords can reject tenants for any non-discriminatory reason.
The Problems With Me, Inc.
August 3, 2009 -- SmartMoney's SmallBiz
In an article about eponymous small businesses, Barry Werbin says that selling a company with a trademarked name requires relinquishing the good will, or pleasant associations, that customers attach to brands or company names. Barry notes that in the U.S., a sale of a trademark without good will voids the mark if it's ever challenged in court.
Selling Your Trademarked Name
July 9, 2009 -- SmartMoney.com
Barry Werbin analyzes the legal and business issues behind selling companies' trademarked names in this question-and-answer column.
Google, Book Foes Propose Settlement To Copyright Lawsuit
October 29, 2008 -- Investor's Business Daily
Barry Werbin praises the settlement of widely watched copyright litigation between Google and two adversaries, the Authors Guild and the Association of American Publishers. Barry notes that the public will have a robust search mechanism, authors will receive appropriate royalties, and Google will develop significant revenue streams as a result of the settlement.
Unsealing of documents 'not great' for licensees
September 22, 2008 -- Sports Business Journal
Barry Werbin is quoted on the significance of a judge's unsealing of previously nonpublic documents -- including commercial license contracts -- in a lawsuit in which retired professional football players are suing the players' union over licensing income.
Workplace Text-Messaging Ruling Wows Privacy Advocates
June 20, 2008 -- E-Commerce Times
Barry Werbin is quoted on a Ninth Circuit decision that held that employers using outside vendors to manage their text-messaging services generally do not have the right to ask the vendors for data about the employees' use of texting.
Herrick advises Quiet Flight in Sale of Retail Operations to Billabong International
June 12, 2008 -- Herrick, Feinstein LLP
Herrick, Feinstein LLP advised renowned surf shop chain Quiet Flight in the sale of its retail operations to Australia-based Billabong International Limited. Quiet Flight is a leading U.S. east coast retailer and the operator of 13 stores, including the flagship Billabong and Element retail stores in New York, and has been one of Billabong Group’s key retail partners in the U.S.
Dealing With the Damage From Online Critics
October 4, 2007 -- The New York Times
Barry Werbin is quoted in this story, which explores various ways that companies can deal with on-line, negative postings about them.
Equal vs. Splenda
April 25, 2007 -- CNBC
Barry Werbin discusses the litigation between Equal and Splenda, arguing that Splenda's slogan, "It's made from sugar so it tastes like sugar," is not misleading and that Equal's claims are without merit.
CAN-SPAM Act of 2003
2003 -- Computer and Internet Lawcast
Barry Werbin is interviewed by Computer and Internet Lawcast, an audio legal news service, to discuss the provisions and practical implications of the “CAN-SPAM Act of 2003,” one of the most sweeping federal laws regulating e-commerce and use of the Internet to date.
The Boss's Souvenirs
December 1, 1998 -- The Village Voice
Barry Werbin is quoted in The Village Voice.