By: David R. Gabor

I. The Art World Is No Longer A Quiet Place

Decades ago, a former counsel for the Metropolitan Museum of Art in New York City commented that transactions in the art world are generally very "hush-hush" and have always been that way. See Gabor, Deaccessioning Fine Art Works, 36 UCLA L. Rev. 1005 (1989).

Much has changed in the intervening years. Like the now-ubiquitous tallies of weekend movie box office grosses, the ups and downs in the art market, driven by spiking art world prices, increasing art speculation, and an influx of the day-trader mentality into the art world, have become fodder for many major publications. Most recently, the value of a significant portion of the Detroit Institute of Art has made national news headlines, with various creditors and experts jousting over the proper valuation of the artworks, for purposes of potential sale within the context of Detroit’s municipal bankruptcy.

Despite the increasing public fascination with blockbuster art auctions, the rarefied world of the discrete art dealer, quietly buying, selling, or trading works, for any number of reasons, including to shore-up shaky owner finances to help them save face, still very much exists.


Continue Reading Red Rothko: Confidentiality Agreements in the World of Big Art

By: Audrey A. Millemann

On January 22, 2014, the United States Supreme Court decided that a patent owner has the burden of proving infringement in an action filed by a licensee for a declaratory judgment of noninfringement. This case, Medtronic, Inc. v. Mirowski Family Ventures, LLC, 2014 U.S. LEXIS 788 (2014), reversed a Federal Circuit Court of Appeals decision holding that in such a case, the burden of proof shifts to the licensee to prove it did not infringe.

In 1991, Medtronic and Mirowski entered into a license. Medtronic made medical devices, including cardiac devices, and Mirowski owned patents covering heart simulator implants. The license provided that if Mirowski believed that a new product of Medtronic was covered by the patents, Mirowski would give notice to Medtronic. Medtronic could then choose one of three options: agree to pay royalties for the new product, pay royalties and also challenge Mirowski’s finding of infringement, or not pay royalties, when which would allow Mirowski to terminate the license and sue Medtronic for patent infringement. The parties later modified the license to allow Medtronic to pay royalties into an escrow account if it decided to challenge Mirowski’s finding of infringement, with the winner receiving those royalties.


Continue Reading Patent Owners have Burden of Proof in Declaratory Judgment Actions

By: Scott Hervey

Every practitioner should teach law school at least once. This year I am teaching Entertainment Law at the University of California at Davis. (Although flying up from and back to L.A. once a week can be a bit of a drag, so far it is a good experience.) Finding issues to trigger discussion and debate in class is forcing me to look at cases much differently. Since I already know the general holdings of the cases I am teaching, I find myself spending more time analyzing the dissenting opinion and loosing party’s position, looking for points that can foster robust in-class discussion. This week, in preparing for a class session on right of publicity, I re-read the recent 9th Circuit case of Keller v. Electronic Arts and found myself questioning whether the courts have changed the Transformative Use test set forth by the California Supreme Court and used to analyze a conflict between right of publicity and First Amendment protected speech.

The facts of Keller are straight forward. Electronic Arts produced an NCAA Football series of video games which allowed users to control avatars representing college football players and participate in simulated football games. In NCAA Football, EA replicated each school’s entire team as accurately as possible and every football player avatar had a jersey number and virtually identical height, weight, build, skin tone, hair color and home state as each real life player. EA’s player avatars reflect all of the real life attributes of the NCAA players; the only exception is that EA omitted the real life player’s name from the corresponding avatar and assigned the avatar a hometown that is different from the real player’s hometown.


Continue Reading Did The California Court Of Appeals Transform The Transformative Use Test in Right of Publicity Cases?

By: James Kachmar

A recent decision in the case Jobscience, Inc. v. CVPartners, Inc. (N.D. Cal. Jan. 9, 2014) shows the interplay between the various theories of intellectual property claims. There, the plaintiff asserted claims for both copyright infringement and trade secret misappropriation arising out of the alleged theft of its software code. The court was required to deal with the issue of whether plaintiff’s trade secret claim was preempted by its claim for copyright infringement.

Jobscience develops and licenses recruiting software applications, including its JS 2 Jobscience Recruiting Package. In 2010, Jobscience entered into a master agreement with defendant CVPartners that contained an End User License and Agreement, which provided the defendant with a license to use plaintiff’s job recruiting software application. The license was renewed in 2011.


Continue Reading Copyright Preemption and Its Interplay with Trade Secret Misappropriation