BY OLIVER HERZFELD, FORBES IP COUNSEL, FEBRUARY 14, 2014 In its February 17, 2014 edition, the National Enquirer’s front page story claimed playwright David Bar Katz was Hoffman’s gay lover, that he had seen Hoffman freebase cocaine the night before Hoffman’s death, and that he had seen Hoffman use heroin on a number of other occasions. Bar Katz has denied all of the Enquirer’sassertions and responded with a defamation lawsuit seeking $5 million in compensatory damages and another $45 million in punitive damages.
Read MoreBY OLIVER HERZFELD, FORBES IP COUNSEL, JANUARY 2, 2014 - A morals clause is a contract provision that prohibits, and provides a remedy for, a party’s illegal, immoral or otherwise undesirable conduct. Morals clauses commonly appear in contracts for the professional services of performers, athletes and other famous personalities. Companies insist on morals clauses to protect their reputation and interests from being adversely affected by the acts of their endorsers, service providers and other contractual counterparties. But what happens in the event of a corporate scandal or when company representatives behave badly? Shouldn’t performers, athletes and other famous personalities seek morals clause mutuality to protect their own reputations from being adversely affected by the companies that engage them?
Read MoreBY OLIVER HERZFELD, FORBES IP COUNSEL, DECEMBER 9, 2013 - Many people consider email to be an informal form of communication. As a result, offers, counter-offers and terms of proposed agreements are frequently exchanged via email with the hope and expectation that they are for negotiation purposes only. The question is, could such email messages be deemed to be legal, valid and binding agreements that are enforceable against senders in accordance with their terms? The New York Appellate Division in the recent case of Forcelli v. Gelco provides some important guidance regarding the answer to this question.
Read MoreBY OLIVER HERZFELD, FORBES IP COUNSEL, OCTOBER 24, 2013 - On Tuesday October 22, 2013, a sculpture of a sphinx made of foam, cement and cinder-blocks appeared on a sidewalk in Queens, New York surrounded by a wide pool of putrid water. On his website, the mysterious and anonymous artist known as Banksy claimed ownership of the work, “Everything but the kitchen Sphinx”, stating: “No turn unstoned. A 1/36 scale replica of the great Sphinx of Giza made from smashed cinderblocks. You’re advised not to drink the replica Arab spring water.” According to the New York Post, an art gallery representative paid the owner of a nearby auto-glass shop, Bernardo Veles, to recruit a team to dismantle the sculpture and load it onto a moving truck that quickly carted it away. Approximately two dozen Banksy fans observed the taking in dismay. One of the members of Mr. Veles’ team sold a brick from the base of the sculpture to a spectator for $100.
Read MoreApple’s iPhone has a China problem. The fact that the Chinese market is one that Apple simply cannot afford to ignore shouldn’t surprise anyone. China’s population – and its subsequent potential market – is booming. And Apple’s not ignoring it. Last month, it was announced that Apple’s new iPhones are licensed to work on China Mobile’s network. This opens up Apple to the world’s largest mobile phone company in terms of subscribers.
Read MoreBY OLIVER HERZFELD, FORBES IP COUNSEL, OCTOBER 15, 2013 - Contractual counterparties sometimes agree to contract on major terms while leaving other terms open and subject to further negotiation. In a prior Forbes column (available here), I reviewed a case where one party insisted on materially different terms to the previously agreed-upon major terms. But assuming the parties do not attempt to alter the major terms, what are the boundaries of the parties’ obligation to agree upon the open terms and enter into a final agreement? The recent decision in L-7 Designs v. Old Navy addresses this question.
Read MoreBY OLIVER HERZFELD, FORBES IP COUNSEL, AUGUST 20, 2013 - The composers of the hit song “Blurred Lines”, Robin Thicke, Pharrell Williams and Clifford Harris, Jr. (a/k/a T.I.), have commenced a lawsuit against Marvin Gaye’s family, as owners of Gaye’s “Got to Give It Up”, and Bridgeport Music, as owner of Funkadelic’s “Sexy Ways”. The complaint is for declaratory relief, meaning the plaintiffs are not pursuing any affirmative action, injunction or award of damages; they are only seeking a judgment that decides the rights of the parties. The plaintiffs commenced the lawsuit because both Marvin Gaye’s family and Bridgeport Music have threatened the plaintiffs with copyright infringement litigation based on similarities between “Blurred Lines” and each of “Got to Give It Up” and “Sexy Ways”, respectively. The key question of the lawsuit is: could the composers be held liable for copyright infringement if they were influenced and inspired by Marvin Gaye’s and Funkadelic’s prior works, but did not actually sample such prior works or otherwise literally copy any of Marvin Gaye’s or Funkadelic’s music or lyrics?” Surprisingly, the answer is: “it depends.”
Read MoreBY MICHAEL STONE, FORBES CMO NETWORK, AUGUST 16, 2013 - If you’re reading the news, it may appear as though Cronuts have taken the country by storm. While they’ve certainly amassed a large following, Cronuts are still only available, at least for now, in Dominique Ansel’s bakery in SoHo New York. I still haven’t tasted one myself, but as a New Yorker, believe me when I say that they’re all the rage. In case you don’t know, a Cronut is a cross between a doughnut and a croissant. Think of circled layers of croissant (with a hole in the middle) with the outside texture and cream or glaze of a doughnut.
Read MoreBY OLIVER HERZFELD, FORBES IP COUNSEL, AUGUST 6, 2013 - Copyright licensors, through their communications and conduct, sometimes permit their licensees to take actions that exceed the scope of the parties’ license agreements. The question is, are such so-called implied licenses binding and legally enforceable against licensors? The recent case of Davis v. Tampa Bay Arena provides a good review of the enforceability of implied grants in the context of copyright licensing.
Read MoreBY OLIVER HERZFELD, FORBES IP COUNSEL, JULY 10, 2013 - Contractual counterparties often negotiate and agree upon the key terms of a commercial transaction in a term sheet, leave other terms for further negotiation in due course, and agree to negotiate such other terms in good faith with the intention of entering into a definitive agreement based upon the initially agreed key terms. The question is, are such agreements to negotiate in good faith enforceable? And if so, what is the proper measure of damages if such an agreement is breached? Is the aggrieved party entitled to expectation damages (which would put such party in the position it would have been in had the agreement been fulfilled), or is its remedy limited solely to reliance damages such as attorney’s fees and other out-of-pocket expenses (which would only put such party in the position it would have been in had the agreement never happened)? The Delaware Supreme Court’s recent decision in SIGA Technologies v. PharmAthene provides some important guidance regarding the answers to these questions.
Read MoreBY OLIVER HERZFELD, FORBES IP COUNSEL, JUNE 25, 2013 - In a prior article, I reviewed the laws of trademark licensor liability for injuries caused by defective licensed products. In a similar vein, the recent case of Gibson Guitar v. Viacom presents an excellent opportunity to review the laws of licensor liability for a licensee’s infringement of a third party’s trademarks.
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