NYSBA FALL 2020 | VOL. 29 | NO. 3 Bright Ideas A publication of the Intellectual Property Law Section of the New York State Bar Association In This Issue n Copyright Enforcement Risk Analysis After n Implications of Brexit for Trademarks, Fourth Estate: Deal Considerations for Copyrights, and Patents Transactional Attorneys William Samuels and Kristin Garris Carolyn J. Casselman and Jacqueline Malzone n Copyright Considerations as Art Galleries n Supreme Court Weighs in on Profit and Museums Move Online in the Wake of Disgorgement in Trademark Cases COVID-19 David J. Haas and Mark J. Rosenberg Amelia K. Brankov NYSBA.ORG/IPS New York State Bar Association New York NYSBA Membership 2021 Renewal Is Now Open NYSBA membership grants you access to exclusive benefits and to be part of monumental change. Whether it’s adapting to the new virtual environment, participating in health law discussions, or speaking out on racial injustice, we are always looking to increase involvement via leadership and task force opportunities. Here’s a list of existing benefits and partners…with additional ones added throughout the year! • Complimentary CLE programs included with select Membership • 25%+ discount on all additional CLE programs offered • 25%+ discount on all NYSBA published books & forms • Complimentary copies of the NYSBA Journal, State Bar News, CasePrepPlus and NY Law Digest NYBSA Partners ABA Retirement Funds JDL Group Renew Online USI Affinity Insurance Ruby Receptionists ABACUSLAW UPS NYSBA.ORG/RENEW2021 Clio Digital Age Marketing Group or by phone 800.582.2452 LawPay Fastcase Don’t forget! Discounted entertainment, travel and activities. New York Yankees Radio City Music Hall NYC Zoos and Aquariums Brooklyn Nets Sightseeing Pass AVIS/Hertz Rental Cars Barclays Center *Select discounts and promotions will vary by partner Table of Contents Page Message from the Chair .................................................................................................................... 4 Michael Oropallo Copyright Enforcement Risk Analysis After Fourth Estate: Deal Considerations for Transactional Attorneys .......................................................................................................... 5 Carolyn J. Casselman and Jacqueline Malzone Supreme Court Weighs in on Profit Disgorgement in Trademark Cases .................................. 8 David J. Haas and Mark J. Rosenberg Sohm v. Scholastic: Second Circuit Schools Litigants on Key Copyright Issues ...................... 10 Scott J. Sholder and Lindsay R. Edelstein Is DMCA Section 512 Working for Users? A Response to the Copyright Office’s 512 Report ....................................................................................................................... 16 Katharine Trendacosta Implications of Brexit for Trademarks, Copyrights, and Patents ............................................. 20 William Samuels and Kristin Garris Copyright Considerations as Art Galleries and Museums Move Online in the Wake of COVID-19 ...................................................................................................................... 24 Amelia K. Brankov Section Committees and Chairs ..................................................................................................... 28 Welcome New Section Members ................................................................................................... 29 Submission of Articles ..................................................................................................................... 30 NEW YORK STATE BAR ASSOCIATION If you have written an article you would like considered for publication, or have an idea for one, please contact the Editor-in-Chief: Jonathan Bloom Editor-in-Chief Weil, Gotshal & Manges LLP 767 Fifth Avenue New York, NY 10153-0001 [email protected] Articles should be submitted in electronic document format (pdfs are NOT acceptable), along with biographical information. REQUEST FOR ARTICLES NYSBA Bright Ideas | Fall 2020 | Vol. 29 | No. 3 3 Message from the Chair: New Beginnings As I take the reins of you who have lost loved ones or who have been per- as Chair of a great sonally affected more than the rest of us. Section of a great Bar Bright Ideas Association, I can’t Kudos once again to longtime editor help thinking about Jonathan Bloom for putting together another great edition the former Chairs that of our Section journal. And thanks to the authors, con- have been instrumen- tributors, and those behind the scenes for taking time out tal in my journey and of their collective days to pen such timely and thought- whose guidance and provoking articles. Please keep the articles coming. If you mentorship I am so have a case of interest or have run across an interesting thankful for. I only issue, we encourage you write it up and hit “send.” hope to build upon To those of you who have a tendency to put your their foundation and Bright Ideas journal in a pile with the many other mail- take the IP Section to ings you get, I urge you to take a moment to peruse the a new level. So too is articles in this issue. There are several articles regarding this a time for reflec- recent copyright law issues, including the SCOTUS Fourth Michael A. Oropallo tion and reemergence Estate opinion and the need to register a copyright prior for us all—a new to filing an infringement suit; proposed reforms to the beginning—as we face DMCA and copyright issues facing galleries and muse- the uncertainty COVID-19 has hoist upon us all. Before ums as they expand their online operations during the March few of us knew what Zoom was, let alone that pandemic. On the trademark front, there is a look at the Zoom meetings would become the norm. As IP lawyers, impact of Brexit and an overview and discussion of the many of us counsel clients on change, innovation, and SCOTUS Romag ruling concerning trademark damages, technology. And as lawyers, many of us were used to a disgorgement, and willfulness. daily routine of commuting to (and from) the office, trav- eling to some degree, and trying to balance our work with Please keep in mind that NYSBA’s Annual Meeting our personal lives. To say that our lives have changed is will be virtual this year, and the IP Section portion will an understatement. But we learn how to adapt. We find be split into two days: Wednesday, January 20 from 1:00 a way to make sense out of this craziness. We learn how to 4:30 p.m., and Tuesday, January 26 from 8:30 a.m. to to put our clients at ease, and we learn how to keep our noon. The theme, “Intellectual Property in a New Virtual loved ones safe. We find a new routine—albeit one where World,” should be practical, timely, and of interest to all. I the lines between work and home are blurred. And we encourage you to attend and participate. find tolerance, if not humor, in those intersections of our As we wade our way through the remainder of this formerly separate lives. crazy year and prepare for what will hopefully be a 2020 continues to tax us all. Just as it seems we might breakthrough 2021, I wish you all the best. be turning the corner, another bump in the road appears. Thanks to the perseverance of many, we will get through Michael A. Oropallo this together. And our collective thoughts are with those Contribute to the NYSBA Journal and reach the entire membership of the state bar association The editors would like to see well-written and researched articles from practicing attorneys and legal scholars. They should focus on timely topics or provide historical context for New York State law and demonstrate a strong voice and a command of the subject. Please keep all submissions under 4,000 words. All articles are also posted individually on the website for easy linking and sharing. Please review our submission guidelines at www.nysba.org/JournalSubmission. 4 NYSBA Bright Ideas | Fall 2020 | Vol. 29 | No. 3 Copyright Enforcement Risk Analysis After Fourth Estate: Deal Considerations for Transactional Attorneys By Carolyn J. Casselman and Jacqueline Malzone I. Introduction (especially in smaller designated marketing areas), port- In the unanimous Supreme Court decision Fourth folios of local media assets in the aggregate can yield high Estate Public Benefit Corp. v. Wall-Street.com, LLC,1 Justice enterprise value. Recent transactions involving local media Ruth Bader Ginsburg wrote a short and seemingly simple assets with multibillion-dollar purchase prices include the opinion holding that section 411(a) of the Copyright Act acquisition of Tribune Media Company by Nexstar (add- provides that a claimant may commence a copyright in- ing Tribune’s 42 local television stations along with digital fringement suit only after the Register of Copyrights “has applications and websites reaching 50 million households registered a copyright after examining a properly filed to Nexstar’s stable of over 170 television stations and com- application.”2 This approach had long been the law in the munity portal websites), the acquisition by New Media In- Second Circuit, but the Fifth and Ninth Circuits previously vestment Group, Inc. of Gannett Co., Inc. (combining New had used the “application” approach, whereby submitting Media’s 154 daily publications of locally focused print and an application for registration—without the further step digital content with Gannett’s flagship USA Today brand of examination and issuance of a registration certificate— and more than 100 local media brands), and the acquisi- satisfied the prerequisite under