Written Materials for Dan Nelson's Remarks at the American Bar Association IP CLE Tips From the Masters - IP Trial Strategies
June 7, 2013
Pillsbury Winthrop Shaw Pittman LLP - New York, NY
Trial Tips for IP Attorneys
Nelson & McCulloch LLP
155 East 56th Street
New York, New York 10022
This brief synopsis is intended to provide some practice pointers for IP practitioners at trial. These pointers are not by any means exhaustive. They are intended as useful tips for attorneys in addressing judges and juries at trial. They are, as they appear, elementary. This is due in part to the nature of dealing with juries, and in part to the remarkable number of trial attorneys who have either forgotten or never learned much that is elementary about trial practice.
Winning Over Judges While Convincing Juries
The challenges of framing and presenting a case to a judge and a jury require a trial lawyer to utilize a vast array of different skills. While it may not be necessary in every case, the goal of every trial lawyer should be to win over the judge and the jury to their theory of the case. By the time a jury is seated, the lawyers have usually had months if not years to win over the judge. Trial is an opportunity to continue that quest, while at the same time trying to convince the jury that your client deserves to win.
What the judge knows for certain, and that the jury may not appreciate at the outset of trial, is that someone is wrong. Wrong not necessarily in the sense of being liable or not having a meritorious claim. Someone is wrong for being there. For not effectively managing their risk. For submitting the dispute to the jury. Whether you or wrong or your adversary is wrong, it is critical to success at trial that the judge and the jury come to view you and your client as the reasonable players, and the other side as the unreasonable players who have necessitated everyone taking time out of their busy lives in order to teach the wrong side the valuable lesson that they are wrong. The importance of this presumption is difficult to overstate. It is important for every trial lawyer not to take it for granted. The trial may involve a bitter dispute that has dragged on for years. The judge may have ruled for your client on every point of law and scoffed at everything that your adversary has ever said. But when potential jurors take their seats for voir dire, they are new to the dispute. Trial counsel can ill-afford to take for granted that the jury agrees with them. From the first moment of trial until the verdict is read, the trial lawyer should always be advancing the similar but different goals of convincing the judge and the jury that their client is right and the other party is wrong.
The initial challenge of trial is to get the judge interested in your case. Judges are only interested in two kinds of cases. Important cases and novel cases. If you can't convince the judge that your case is important, focus on the novelty. In modern litigation, a judge is likely to have a strong orientation about your case when you start trial. It is difficult but not impossible to change that orientation during trial.
Your case is important to you. It is most likely important to your client. It is probably not important to a federal judge. This sad fact becomes obvious to any practitioner who has had their angry rant about the unspeakable conduct of the other party or their counsel cut short so that the judge could go sentence Bernie Madoff or the Times Square bomber. The awesome responsibility of federal judges, their busy schedules, and their tendencies to become jaded or cynical are beyond the control of the attorneys who appear before them. Reconciling those circumstances with the tremendous importance of the case to you and your client is a daunting, but not impossible, task. Seize the opportunities that present themselves to explain to the judge not just why your side is correct as a matter of law, but how your client has been treated, and why the interests of justice merit a decision in your favor.
Attorneys who practice in the field of IP litigation benefit from the fact that judges often view IP cases as novel and interesting, whether they are high stakes or relatively low stakes. Because the law is always adapting to catch up with advancements in technology, judges feel pressure to keep up. It is important that practitioners capitalize on opportunities to educate the judge and stimulate the court's interest in the technological aspects of their case. Not to mention the significance of their case on the evolution of the law.
In presenting cases to juries, it is important to understand the enormous responsibility of juries. The backbone of our civil justice system is placing important decisions in the hands of regular people who may seem, and undoubtedly feel, ill-equipped to make them. Those who proceed willingly to trial have implicitly agreed to trust their fate in part to those people. In most cases, litigants have made the decision to trust a jury to take its charges seriously. And fortunately for those litigants, the vast majority of juries take their responsibilities very seriously.
Despite consensus among trial lawyers that jurors don't understand legal jargon, almost all continue to utilize it entirely too much. Avoid excessive use of legal jargon. Beware of using using acronyms. Consider the following exchange from a bad movie on late-night television:
Six year-old: What are you doing?
Mother: Are you with the FBI?
Six year-old: No.
Six year-old: No.
Six year-old: No.
Six year-old: No.
Six year-old: No.
Six year-old: No.
This exchange is humorous because the child doesn't understand the acronyms and the audience does. If you only learn one thing at the ABA IP CLE, it should be to avoid using acronyms when addressing juries. The same goes for jargon. Consider the following two lines, one from an opening statement and one from a five-year old girl:
"The evidence will demonstrate a pattern and practice of a licensee whose copyright compliance practices showed reckless disregard for the rights of third-party content owners, and resulted in massive infringements of the creative works of thousands of copyright owners."
"Mom! Sammi took my doll!"
In this example, the five year old has a much better chance of getting through to a jury. Trial lawyers should resist the temptation to pull the juiciest lines from their summary judgment briefing and insert them into their opening statements.
A great old trial lawyer once said that the law is just an impediment to telling the jury what happened to your client. This view will serve any advocate well at trial. Within the confines of the judge's rulings and admonitions, tell the jury in as simple terms as you can, what happened to your client. And what you want them to do about it.
The jury is always watching you and your client. Whether you know it or not. Whether they know it or not. The jury is always sizing you and your client up. Evaluating your credibility. Deciding if they like you. If they want to help you. Win the battle for the sympathy of the jury. Make them like you and your client more than your adversaries. And not just when you are addressing witnesses or the jury. Project an air of confidence at counsel table. Avoid obstreperous objections. Do not project overconfidence, desperation, or exasperation. While the law may be an impediment to telling the jury what happened to our clients, avoid the jury viewing you as an impediment to hearing the other side's story.
If the adage that you win or lose your case in open statements is not true, it is certainly close to true. Keep it in mind when you're ordering your witnesses. If the jury is not on your side when you call your first witness, it is crucial to your cause that they're on your side when the first witness leaves the stand. I suggest leading off with your best witness to frame your case, your side of the story. Then proceed immediately to the other side's best witness for you, in terms of admissions that support your theory of the case. After that, try to organize witnesses in a sequence that tells the story of your case in a logical progression. It is difficult for the jury to absorb information from damage witnesses when they don't fully understand the theory of liability. If you win the draw on opening statements, your first witness lays out a clear and coherent theory of your case, and a witness from the other side admits to the validity of crucial portions of that theory, inertia will most likely carry you to victory.
Textbook Licensing: Where the Clean-up Meets the Cover-Up
by 1Dan Nelson With 2Kevin P. McCulloch
Selling Stock, October 28, 2010
Many stock photography professionals remain largely unaware of the widespread and institutionalized practice of copyright infringement that plagues the textbook licensing industry. The dual purpose of this article is to provide a brief introduction to this phenomenon and, in doing so, to help alert photographers, vendors, and other stock photography professionals to the fact that major U.S. textbook publishers have been—and, indeed, still continue to—systematically infringe third-party copyrights in photographs that they use in textbooks and various other materials. We also will explore some of the various factors that allowed this situation to occur and go unnoticed, despite being an industry-wide practice that has given rise to some of the most egregious cases of copyright infringement in recent memory.
Enticed by the ease of technology, several major textbook publishers have made it their policy—often without the knowledge or consent of the licensor or copyright owner of third-party content—to retain the high-resolution digital files of photographs licensed for their programs. Despite this burgeoning trend, most publishers have been slow to adapt or develop technology to guarantee proper rights management of the photographs now being maintained in these databases. As a result, publishers remain in possession of an enormous volume of third-party photographic content, but do not have any systems or policies in place to guarantee that the required rights are secured before this content is included in future textbooks or other materials. Perhaps even more troubling is that this problem persists despite the fact that the original licenses governing much of this content were limited to particular publications or editions and, in many cases, made clear that additional permission (and payment) was required before any additional or subsequent uses could be made of these images.
Simply put, textbook publishers have acquired vast amounts of third-party content, but have been woefully deficient (and, in some cases, intentionally so) in creating the systems and developing the policies that are required to manage the rights for these images. As these archives of third-party content grew, publishers often succumbed to the temptation to use them as a source of material for new projects without securing the necessary rights to do so. Photo editors routinely searched these databases and selected third-party photographs for new programs. As a result, many major textbook publishers routinely failed to make the considerable effort needed to secure additional permission to use these images before including them in new textbooks.
Because publishers failed to develop the necessary rights-management infrastructure to expeditiously seek licenses for such uses, several unacceptable problems emerged. Many photographs were published with no permission, and none ever granted subsequently. Many thousands of photographs were published prior to any permission being granted. And many thousands were exploited in excess of the print run limitations spelled out in license agreements. Publishers routinely sent third-party copyrighted material to the printer without permission to use it, and then never received permission for that use or surreptitiously sought retroactive permission under the guise of forward rights.
In many cases, the surreptitious requests for retroactive rights included misleading (and oftentimes outright fraudulent) language that gave vendors and photographers the impression that only prospective rights were being requested. These stealth retroactive license requests, as they have come to be known in the cases against these publishing companies, often use language that suggests that the publisher is “working on” a program, or they identify the copyright date as a year or more out but fail to mention that the book already is in print and already is being sold to customers. In many cases, these retroactive requests also are presented as seeking permission for an “extension” of the original print run, despite the fact that the copies already have been ordered, printed, shipped, and sold. Such tactics obviously are intended to create the illusion that the publisher has not already infringed the content owner’s copyrights. When confronted with such requests, many vendors and photographers (understandably) are duped into signing agreements that the publishers now claim release them from liability for these egregious and fraudulent practices.
Despite repeatedly being confronted in litigation about these questionable practices, major textbook publishers continue to toe the line between the clean-up and the cover-up, surreptitiously seeking retroactive permissions and trying to run out the clock on old infringements. By organizing these questionable practices into some basic categories, we can better understand the immense scope of the problem and, hopefully, begin to develop some practicable and just solutions.
With the advent of technology allowing publishers to retain and easily search high-resolution digital files of third-party content, major publishers began to stockpile literally tens of thousands of photographs that they did not own, regardless of whether they had obtained the rights to do so. These archival databases were designed to allow photo researchers to easily review and select images for upcoming publications, but they did not always include the sophisticated detail that is necessary to ensure effective rights management. As a result, photo researchers could easily access third-party content from other programs and incorporate such photographs in new books, but did so without the knowledge or consent of the copyright owner.
Consolidation of Permission Departments
Most major textbook publishers, in addition to acquiring their smaller competitors, also have begun to consolidate their permissions departments. While such a move allows for coordinated and centralized permissioning, it has highlighted the central problem that permeates the industry: the tug of war between the clean-up and the cover-up. While different publishing companies have taken different approaches to the problem, the one thing that appears to be consistent across the industry is a lack of fair dealing vis-à-vis photographers and vendors in whatever efforts are made to “extend” or “true up” licenses. Publishers almost never volunteer that they already have exceeded the scope of their license, or that the unauthorized use already has taken place. Instead, most publishers either do nothing, hoping the passage of time will absolve their liability for infringement, or they engage in some form of stealth retroactive licensing.
The problem of print overruns in textbook licensing has become the most widely understood copyright problem affecting the stock photography industry. In order to obtain rights as cheaply as possible, publishers traditionally have sought permission to print relatively few books, but then printed as many as they required. The scope of this practice is astonishing. In many cases, the major publishers have printed millions of copies of books containing third-party content, despite the fact that the governing licenses permitted only tens of thousands of copies. Because this egregious practice is so widespread, there are literally tens of millions of books in print for which these publishers never sought or received permission to use all of the third-party content. In many cases, publishers never seek to “true up” these licenses unless there is a future business reason for the extension. As a result, most copyright owners whose images appear in these books remain unaware that the publisher exceeded the permission granted, let alone that courts considering the issue repeatedly have held that exceeding the authorized print run constitutes copyright infringement. In the few cases where publishers have sought to “true up” their print overruns, they nearly always do so without disclosing that the print run already has been exceeded and the license already has been breached.
A lesser known issue in the industry involves straightforward unauthorized use of third-party content. It is extremely difficult to determine how prevalent this practice is in the industry, but it is certain that major publishers have printed books containing third-party content for which they never subsequently sought or obtained permission to print. This is one of the most insidious of the bad business practices in the textbook publishing industry. The Copyright Act creates a monopoly in favor of the copyright owner to control the manner in which their copyrighted material is (or is not) published. Retaining third-party content, usually without the knowledge of the content owner, then publishing that content in books without the knowledge or consent of the copyright owner flies directly in the face of the founding principles of the Copyright Act.
Nearly as troubling as non-permissioning is the problem of late permissioning. We use the term “permissioning” loosely here, since an unwitting victim of a stealth retroactive license request is not truly granting permission. Nevertheless, prior to the consolidation of permissioning departments at major textbook publishers, most permissioning was done by design and production departments. As a result, permissioning largely took a back seat to production, resulting in countless programs for which files were sent to the printer before permissioning was complete. This obviously resulted in non-permissioning, but it also resulted in widespread late permissioning, where permission was sought only after publication. This too constitutes flagrant infringement of an author’s exclusive copyrights.
Despite this being one of the biggest rights grabs of third-party content in recent memory, publishing executives and photographers remain largely oblivious to these insidious business practices. It is understandable, albeit unacceptable, that the publishing industry would attempt to conceal from the stock photo industry its enormous liability for infringing third-party copyrights. As the struggle continues between the cover-up and the clean-up, largely in secret and under bogus claims of confidentiality, a shadow has been cast on the entire textbook publishing industry, and that industry’s respect for the copyrights of creative professionals remains in serious doubt.
1 Dan Nelson is the founding partner of Nelson & McCulloch LLP and represents professional photographers in copyright litigation. He can be reached at firstname.lastname@example.org or at (212) 907-6677.
2 Kevin McCulloch is the managing partner of Nelson & McCulloch LLP’s Washington, D.C. office. He can be reached at email@example.com or at (703) 351-5281.
3 Selling Stock, October 28, 2010
Stealth Retroactive License Agreements
By Dan Nelson1 and Amy Zelcer2
The licensing of photographs for textbooks can be a lucrative source of income for professional photographers; however, this practice often leads to unforeseen complications. As seen in the recently filed copyright infringement lawsuits against Pearson Education Inc. and Houghton Mifflin Harcourt publishing companies,3 large publishing companies like the aforementioned are continuously violating the intellectual property rights of professional photographers for their own gain. What begins as an above board legal purchasing of the rights to a photographer's copyrighted images often continues with thousands or hundreds of thousands of print overruns. The abuse goes further with stealth retroactive license agreements that are intended to fortify the publishers from further suits by encouraging photographers to sign away rights to photographs that were already infringed. These retroactive license agreements masquerade as honest and straightforward contracts, inviting the photographer to grant the publishers a certain number of licenses for print runs in exchange for licensing fees. A closer review of the terms of the licenses reveals that they are often retroactive rather than prospective.
A photographer skimming through the details of a stealth retroactive licensing agreement might not notice the fact that he or she is granting the publishing companies the rights to photographs that had in fact already been infringed. By signing these agreements without closer examination, professional photographers are potentially compromising claims for willful copyright infringement of up to $150,000 in statutory damages per infringement plus attorneys fees and costs. The ill-fated victims of this scheme are the prepared, conscientious photographers who register their copyrights pre-infringement, for timely registration provides the most potential for statutory damages under the Copyright Act. A closer read of these license agreements on the part of professional photographers could yield greater monetary rewards for the photographers as well as the opportunity to more effectively curb the abuse of copyright law by large institutional infringers.
Stock photographers are faced with difficult decisions about whether to pursue claims for copyright infringement of their images. But those decisions should be made with the knowledge and understanding that their rights under the Copyright Act have already been violated, and that they may be unwittingly settling those claims.
1 Dan Nelson is the Founder and Managing Partner of Nelson & McCulloch LLP, 100 Park Ave 18th Floor, New York, NY 10017. He represents professional photographers in copyright litigation. He can be reached at firstname.lastname@example.org.
2 Amy Zelcer is a paralegal in Nelson & McCulloch LLP's New York office.
3 See Wu et al. v. Houghton Mifflin Harcourt Publishing Company, S.D.N.Y. 09-cv-6558; Wu et al. v. Pearson Education Inc., 09-cv-6557.
THE FUTURE OF COPYRIGHT ENFORCEMENT FOR PHOTO STOCK ARTISTS AND THEIR DISTRIBUTORS
By Dan Nelson
Reprinted From Picture Archive Counsel of America Newsletter, July 8, 2008