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CROSS-BORDER COPYRIGHT LICENSING

Law and Practice

CARLO SCOLLO LAVIZZARI, RENÉ VILJOEN

Copyright Licensing can no longer be considered purely from the perspective of the licensor’s home territory. This practical and wide-ranging reference work provides comprehensive coverage of the law and practice of cross-border licensing in a number of major territories, including China, the EU, India, Mexico, Russia, Singapore, South Africa, and the USA. The book, written by expert authors with insight from practice and from their home jurisdictions, focuses on both copyright licensing and competition law and, specifically, the inter-relation between these legal fields. The book is uniquely structured to provide both thematic coverage and detailed analysis of each territory’s applicable laws and regulations, highlighting and addressing the legal issues that are most critical in and relevant to licensing practice. Cross-Border Copyright Licensing is an essential starting point for anyone considering or advising on the implementation or enforcement of a copyright licensing program, in either developed and emerging markets.
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CONTRIBUTORS

 

Alexis Apostolidis is a partner in the patent litigation practice of Adams & Adams and heads the competition law department of the firm. He is well versed in all aspects of patent law and specialises in opinion work and patent litigation in the life sciences, agrochemical, petrochemical, IT and consumer goods sectors. He has successfully litigated on behalf of originator pharmaceutical companies, OEM German car manufacturers, banks and television content providers. Alexis’ practice also extends to litigation concerning design registrations, the licensing of IP and regulatory matters in the life sciences sector. He advises and represents clients in litigious work in a number of African countries.

Mr Apostolidis is a leading expert on the interface between competition law and intellectual property in South Africa, having dealt with the competition law aspects of the enforceability of intellectual property rights to the Supreme Court of Appeals in South Africa. He has represented clients both before the South African Competition Commission and Competition Tribunal.

Herman Blignaut is an Attorney of the High Court of South Africa and a Notary Public. He practises as a partner at Spoor & Fisher, focusing on copyright and trade mark law. Herman is a Fellow of the South African Institute of Intellectual Property Law, where he serves as a lecturer and examiner of the subject South African Copyright Law and Practice. Herman publishes research widely within his areas of expertise, and regularly presents guest lectures on various topics which include advertising and regulatory matters.

Lam Chung Nian heads the Intellectual Property, Technology, Media & Telecommunications and Data Protection practices at WongPartnership LLP, one of Singapore's largest full service law firms. He has extensive experience in handling transactional, enforcement and advisory matters involving intellectual property, including licensing, research & development, franchising and securitisation agreements, as well as IP asset acquisitions and divestments.

He is admitted to the Singapore Bar, the Roll of Solicitors of England & Wales, and is a registered patent agent in Singapore. He is also a Fellow of the Chartered Institute of Arbitrators (FCIArb) and an associate faculty at the Singapore University of Social Sciences.

Kayleigh Golish is an associate in Weil’s Antitrust Practice Group, where she focuses on the representation of clients in various antitrust matters, including criminal and complex civil antitrust litigations, government and internal investigations, and mergers and acquisitions. She currently serves on Weil teams representing Bridgestone Corporation and Calsonic Kansei and their US subsidiaries in one of the largest private antitrust class actions in history in In re Automotive Parts.

Prior to joining Weil, Ms Golish served as a law clerk on Senator Dianne Feinstein’s Senate Judiciary Committee staff and as a law clerk at the headquarters of Service Employees International Union in Washington, DC. Ms Golish received her JD from Georgetown University Law Center where she served as a Symposium Editor on the Journal of National Security Law and Policy for two years. At GULC, Ms Golish also monitored federal security and immigration policies and advocated for changes of federal and administrative policy directed towards women and children impacted by and fleeing from violence in Central American countries with her service in the Federal Legislation and Administrative Law Clinic. Ms Golish received her BA in Political Science and Peace and Conflict Studies from the University of California, Berkeley. Ms Golish also has experience working on international human rights issues and political campaigns.

Patricio González Granados After having clerked for the Honourable Germán Baltazar, Magistrate of the 17th Circuit Tribunal for Administrative Matters of the First Circuit, and worked for the Mexican Institute of Industrial Property, as an officer dealing with the analysis of famous trademarks and patent disputes, Patricio has focused his practice with TMI Abogados on solving complex cyberspace law matters involving cloud computing, the Internet of Things, digital copyright infringement, 3D printing, e-signature implementation, well-known and famous marks, and videogame protection. Has handled intricate Constitutional cases before IMPI, the Specialized IP Chamber of the Administrative Justice Tribunal, Circuit Courts, and the Supreme Court of Justice.

Eric Hochstadt is a partner in Weil’s Litigation Department. Mr Hochstadt’s practice focuses on civil antitrust, class action, and other complex and sports-related litigation, as well as criminal cartel investigations and antitrust counselling. He has represented clients in a broad range of industries, including broadcasting, e-commerce, electronics, financial services, pharmaceuticals, private equity, publishing, and transportation.

Mr Hochstadt has extensive experience with consumer and antitrust class action litigation, as well as antitrust lawsuits and commercial disputes between rivals or suppliers and distributors. He has litigated in state and federal courts around the country and participated in confidential arbitrations. He has litigated numerous dispositive and strategic motions, appeals, and has facilitated a number of favorable settlements, on behalf of litigation teams representing clients including CBS, eBay, Houghton Mifflin, GE, MasterCard, and StubHub, among others.

Mr Hochstadt was recognized by Chambers USA 2016 as a ‘leading’ lawyer for Antitrust in New York, by Legal500 as a ‘recommended’ lawyer for Antitrust nationwide as well as being named a ‘Next Generation Lawyer’ for the Sports Industry, by Benchmark Litigation as a Rising Star in its ‘Under 40 Hot List’ in 2016 and 2017, and by Law360 as a 2015 Competition ‘Rising Star’.

Mr Hochstadt is a lecturer in law at Columbia Law School teaching an advanced seminar on ‘U.S. Civil and Criminal Enforcement of International Cartels’. He is also a leader on the Economics Subcommittee of the ABA Section of Litigation’s Expert Witness Committee. In addition, he serves as an appointed officer of the Benjamin N. Cardozo School of Law Alumni Association’s Executive Committee. Mr Hochstadt also regularly speaks and writes on a wide variety of issues.

Mr Hochstadt began his career with the firm in 2003, following the receipt of his JD degree, magna cum laude and Order of the Coif, from the Benjamin N Cardozo School of Law, where he was a Notes Editor on the Cardozo Law Review. He received his BA degree in Political Science, High Distinction, from the University of Michigan in 2000. From 2006–07, he served as a judicial clerk for the Honorable Loretta A. Preska, now Chief Judge of the US District Court for the Southern District of New York.

Binny Kalra is a former senior partner in Anand and Anand, a leading intellectual property law firm headquartered in the Indian capital. She has dealt with a colourful array of litigation relating to all aspects of IP since starting her career in law in 1990. Her experience of the copyright law was gained in a rich variety of advisory work and unique cases in the Indian courts relating to a gamut of subject matter including literary, artistic, musical, dramatic, software, photographic, sculptural, cinematographic works. Many of these cases resulted in the expansion of the copyright law or first-time interpretation of existing provisions, such as copyright protection of customer databases, of comic book characters, authorship rights claimed by an amanuensis, a renowned sculptor’s fight against violation of his moral rights by the government, misuse of confidential information in the format of a TV reality show by a broadcast channel, etc. She has been passionate about assisting clients from the creative space of applied arts and fine arts for whom enforcement of copyrights poses unique challenges, more so owing to the complexities of overlap between artistic works and designs. She and her team prepared and filed a constitutional challenge to Section 15(2) of the Copyright Act 1957 aiming to seek full copyright protection vital for commercial viability of works generated by creative industries and the long-term sustainability of these industries.

Brigitte Lindner, Rechtsanwältin, is a member of the Bar of Berlin/Germany and practises as Registered European Lawyer (Bar Standards Board, England and Wales) in association with Serle Court Chambers in Lincoln’s Inn, London, advising on aspects of international, European and comparative copyright law. After studies in law and musicology and following her practical legal training and call to the German Bar in 1988, she joined a French firm of Avocats in Paris. From 1992 to 1999 she was Legal Adviser to the International Federation of the Phonographic Industry (IFPI) in London with responsibility for international conventions and national copyright legislation worldwide.

Brigitte frequently participates as a speaker in conferences and seminars on copyright and has been a course tutor on the Postgraduate Diploma Course/Masters in UK, EU and US Copyright Law at King’s College, London since 2004. She is the author of various contributions to legal treaties and commentaries on copyright in different jurisdictions and is co-editor of Lindner/Shapiro, Copyright in the Information Society: A Guide to National Implementation of the European Directive published by Edward Elgar in 2011. Brigitte also serves on the Executive Committee of the British Literary and Artistic Copyright Association (BLACA), London, the British group of the Association Littéraire et Artistique Internationale (ALAI).

Roman Lukyanov graduated from the law faculty of Moscow New Law Institute in 2009 and had experience of teaching law of intellectual property there. Roman has over ten years’ legal professional experience. He has headed legal departments of cinema and musical companies. He has also led more than 200 successful court cases on intellectual property. He is the author of scientific publications and a permanent participant of conferences and round tables. He is also managing partner and director of the legal company Semenov & Pevzner based in Moscow.

Tanvi Misra is a commercial and intellectual property lawyer currently working in the chambers of Mr. Akhil Sibal (Senior Advocate) and was formerly with Anand and Anand, a leading intellectual property law firm, for six years. She has developed expertise in copyright laws by regular representation of the creative industries in various fora including courts for over eight years. She has extensively researched the evolution of copyright law in India from imperial times to its present-day form along with the international conventions. She has handled a variety of copyright lawsuits and regularly undertaken advisory work for protection and enforcement of copyrights of the creative industry including advising on contractual issues and drafting assignment and licence agreements. She has worked closely with collective management organisations in the music industry for underlying works, sound recordings and neighboring rights like performer’s rights. She has worked extensively for the book publishing industry on contractual aspects, litigation and done due diligence through libel and defamation reads. For the applied arts sector, she has studied the nuances of the overlap of copyright with design rights and the legislative progression of such rights in other countries and has been a part of the team challenging the constitutional vires of a provision in the Indian Copyright Act that limits copyright protection for the applied arts industry.

She has published articles in legal journals like Asia IP and World Trademark Review and contributed chapters to books on copyright such as Copyright Litigation – Jurisdictional comparisons: Thomson Reuters (second edition 2015) (third Edition 2016) and Getting The Deal Through (2015).

Jan Bernd Nordemann is known as one of the leading copyright lawyers in Germany. The JUVE handbook 2017/2018 has again included Jan Bernd Nordemann as one of the leading German copyright lawyers. Best Lawyers International 2017 mentions him in the list of recommended attorneys for the fields of IP, entertainment and media, copyright, and litigation. He represents clients before the courts, produces expert opinions for clients, and drafts licensing agreements. In addition, he is active in political consulting on copyright and advises associations and parties.

Moreover, Professor Nordemann is well known in antitrust law. In this area he works primarily on the interface with intellectual property law and in particular on the antitrust law compliance of licensing agreements, R&D contracts, distribution agreements, and self-regulation by media associations.

Professor Nordemann studied law in Berlin, Goettingen, and Cambridge. Since 1997, he has worked as an attorney at law for Boehmert & Boehmert, Berlin office. Humboldt University Berlin appointed him as an honorary professor in 2007. For years he has held lectures there on copyright, trademark, and competition law. Professor Nordemann is the current chairman of the Standing Committee on Copyright at the International Association for the Protection of Intellectual Property (AIPPI). He is one of the editors of Fromm/Nordemann, Commentary on German Copyright Law (12th edn 2018) (together with Axel Nordemann), and he wrote several chapters in the well-known antitrust law commentary Loewenheim/Meessen/Riesenkampff/Kersting/Meyer-Lindemann (3rd edition 2016). Nordemann is listed as a contributor to the “Kluwer Copyright Blog”, where he publishes English language comments i.a. on European and German copyright cases. He has also published a number of articles in international law journals in the last years.

Thomas Pattloch heads up the IP division of the China Group of Taylor Wessing and is based in their Munich office, with regular attendance in their offices in Beijing and Shanghai.

He specialises in industrial property rights and technology transfer with a particular focus on China. He advises on trademark and patent infringements as well as copyright licensing and supports transactions and licensing negotiations, in particular in the luxury goods, lifestyle and online gaming sectors, but also automobile, pharmaceutical and electronics industries. In addition to advising foreign companies in China, Thomas supports and represents Chinese clients in German courts.

Thomas received his doctorate with a thesis on Chinese IP rights while acting as researcher at the renowned Max-Planck-Institute in Munich. Before joining Taylor Wessing he was a private practitioner in China, followed by five years as the European Commission’s IP Officer in Beijing, China.

He is Senator of the German section of the Senat der Wirtschaft. Thomas supports governmental authorities in relation to IP questions concerning China. He publishes regularly on IP and anti-trust matters in China and as a speaker of Mandarin maintains close links to Chinese authorities and institutions.

Suzanne Rab is a barrister specialising in competition law and regulation at Serle Court Chambers in London with extensive experience of international competition law, which combines cartel regulation, commercial practices, IP exploitation, merger control, public procurement and state aid.

Her practice focuses on the interface between competition law and economic regulation. She advises governments, regulators and businesses across the regulated sectors including in the communications, energy, financial services, healthcare/ pharmaceuticals, TMT and water sectors.

Suzanne’s wealth of experience of the practical application of antitrust law to the exploitation of IP includes advising (i) societies responsible for copyright collecting and publishing on the implementation of the European Commission’s CISAC decision; (ii) major film studios and publishers on territorial licensing of film rights; and (iii) major technology companies on the application of competition law to standard setting and patent licensing. She has also represented industry in consultations on the European Commission’s block exemptions in relation to technology transfer.

Suzanne is an expert adviser on the development, implementation and application of new competition laws and regulatory regimes in line with international best practices, including in India and other emerging markets.

In private practice as a solicitor for 15 years prior to joining the bar, she has held positions at magic circle and leading international antitrust practices. Most recently she was an antitrust partner with a leading US practice. She has also held the role of director at PricewaterhouseCoopers working within its strategy, economics and forensics teams.

Suzanne has published widely on competition law topics. She authored Indian Competition Law, an International Perspective (Wolters Kluwer, 2012; with a supplement on cartel regulation published in January 2013). The book is a pioneering international comparative analysis of the Competition Act of 2002 published contemporaneously with the coming into force of Indian competition law and merger control. Suzanne is also co-author of Media Ownership and Control: Law, Economics and Policy in an Indian and International Context (Hart Studies in Competition Law, 2014). She is a co-contributor to Atkins Court Forms in Civil Proceedings, Competition Law, Volume 10, 2016 (new edition) and co-editor of Hong Kong Competition Law (Hart/Bloomsbury, 2016).

Currently a visiting professor at Imperial College London specialising in the intersection between competition law and intellectual property, she is also a member of the advisory board and senior research associate with the Oxford Regulatory Policy Institute.

Suzanne is accredited as a mediator by the Centre for Effective Dispute Resolution.

Andrew Riseley is General Counsel, Regulation at the New Zealand Commerce Commission. Prior to this, he was Foreign Law Consultant in the Competition and Regulation Practice of WongPartnership LLP in Singapore – while in this role, he prepared the contribution to the Singapore chapter of this book. Andrew has practised as a competition and utility regulation lawyer in Australia, the UK, Singapore and New Zealand, and was previously the Chief Executive of the Channel Islands Competition and Regulatory Authorities.

Deyanirr Solorio Nocetti is an International Attorney, specialising in entertainment, copyright, intellectual property and international business transactions. She has experience in private and public sector. She has drafted and negotiated several agreements and licensing deals. She has also pursued, drafted and filed criminal complaints regarding intellectual property counterfeit, software circumvention, and illegal reproduction of copyrighted works. Deyanirr represents international and national clients within the entertainment industry. She is co-founder and General Counsel of the entertainment company Producciones Qool, S.C. She has lectured on entertainment law and intellectual property matters. Deyanirr graduated from USC Gould School of Law, earning a Master of Laws (LL.M) and a Certificate in Entertainment Law (2015). She was recognised as the best of her class at Universidad de las Américas Puebla México, earning a Bachelor of Laws and a Certificate in International Law (2013).

William S. Strong advises clients on copyright and trademark issues and on other publishing law matters such as defamation and false advertising. His practice includes copyright and trademark registration, licensing and other transactional matters; dispute negotiation, and where necessary litigation, to enforce or defend against infringement and other claims.

Mr Strong represents a wide range of companies – from very large to very small – and individuals involved in publishing: publishers, authors, trade associations, curriculum developers, and agents. He has advised the Association of American Publishers (AAP) on various legislative and other matters such as the provision of accessible formats to print-disabled students. (For the AAP, Mr Strong recently helped negotiate, and largely drafted, a new Wisconsin statute regarding provision of accessible textbook formats.) He has also represented the International Association of Scientific, Technical and Medical Publishers on issues regarding the protection of their copyrights in the United States.

Mr Strong served as an adjunct professor of Copyright Law at the Franklin Pierce Law Center in Concord, New Hampshire from 1987 to 1996.

Mr Strong’s book The Copyright Book: A Practical Guide (6th edition, The MIT Press, 2013), is the only comprehensive survey of US copyright law written in plain English, and has been called ‘an unsurpassable practical how-to-do-it guide’ and ‘a welcome guide to all who must fish in these troubled waters’. He has also written the chapter on copyright for the past several editions of The Chicago Manual of Style.

Ksenia Sysoeva graduated from the international law faculty of the Russian Foreign Trade Academy in 2008. A professional in the field of intellectual property and contract law with over ten years’ experience, she provides legal support for musical and advertising companies, artists, video production companies and licensing agencies. She is head of Contracts and Consulting in the legal company Semenov & Pevzner.

Kiyoshi Tsuru is PhD Candidate at George Washington University; LLM in Intellectual Property from the George Washington University (Recipient of the 2002 Thelma Weaver Memorial Award), USA, 2002; Yale University Mexico-US Leadership Program, New Haven, Connecticut, 2014; Internet Law Program, Harvard Law School, Berkman Center for Internet and Society, Cambridge, Massachusetts, 2002; Diploma, Intellectual Property Law, Instituto Tecnológico Autónomo de México (ITAM), 1999–2000. Bachelor’s Degree in Law from the Universidad Iberoamericana, Mexico 1999. He teaches Intellectual Property Law at the ITAM, Universidad Nacional Autónoma de México (UNAM) and Centro de Investigación e Innovación en Tecnologías de la Información y Comunicación (INFOTEC).

He has counselled with respect to: trademark clearance, maintenance and defence; trademark rights enforcement (infringements: counterfeits and unfair competition); estimation and declaration of notoriousness and fame; the protection and licensing of works protected by copyright, particularly in the digital environment; the integration and protection of intellectual property portfolios globally; the determination of the patentability of an invention; handling of patent applications, particularly PCT applications. He has been a speaker at diverse fora, colloquia and symposia in Chile, Mexico, Spain, Paraguay and the US, organized by Universities and Institutions such as the International Chamber of Commerce (ICC), AIPLA and AMPPI.

He also has solid experience with respect to domain names: counselling in the negotiation of amicable settlements between trademark and domain name holders; ADR procedures before WIPO; dispute resolution procedures before NIC-MEXICO; and has been a panelist in complex cases involving trademarks and domain names.