The Authors Guild, Inc. et al v. Hathitrust et al

Filing 162

DECLARATION of Joseph Petersen in Support re: 158 MOTION for Attorney Fees.. Document filed by Hathitrust. (Attachments: # 1 Exhibit A, # 2 Errata B, # 3 Exhibit C (Part 1 of 4), # 4 Exhibit C (Part 2 of 4), # 5 Exhibit C (Part 3 of 4), # 6 Exhibit C (Part 4 of 4))(Petersen, Joseph)

EXHIBIT A

Joseph M. Beck
PARTNER
Suite 2800, 1100 Peachtree Street
Atlanta, GA, 30309-4528
USA
t +1 404.815.6406
f +1 404.541.3126
[e-mail]

Services
Intellectual Property; Copyright; Consumer Product Safety; Internet

Industries
Entertainment, Media & Sports; Technology & Software; Consumer Products; Retail
Based on a survey of corporate counsel at Fortune 1000 companies, Mr. Beck was one of only 29 attorneys in the entire country
to have been selected for two years in a row by corporate counsel as providing "Outstanding Client Service." In 2010, Mr. Beck
was named the Intellectual Property Lawyer of the Year by Intellectual Property Magazine. Although he has handled government
contract, product liability and antitrust (civil and criminal) litigation in the course of his career, he currently focuses his practice on
intellectual property litigation, particularly copyright, and on consumer product, FDA and NHTSA recalls.
Copyright
Mr. Beck has served as lead counsel in some of the most important copyright cases in the United States. Several of his reported
cases are now included in standard law school case books. As a result, Mr. Beck has been asked to discuss his cases at law
schools including Harvard, Stanford, The University of Texas, Duke and other institutions and in countries ranging from Russia
to India. In addition to litigation in courts throughout the country, Mr. Beck has served as mediator in a number of copyright
infringement disputes involving works ranging from motion pictures to architecture, and was named a "Power Mediator" by The
Hollywood Reporter.
Product Recalls
Mr. Beck designed and helped quarterback one of the most successful recalls in Consumer Product Safety Commission history
involving an appliance that allegedly caused at least 11 deaths. As a result of his work, he was invited by the Consumer Product
Safety Commission to make a presentation to The U.S. Conference Board in Washington regarding recall techniques. At a
subsequent public hearing in Washington, the Vice Chair of the Consumer Product Safety Commission referred to him as "one
of the most knowledgeable persons in the country about consumer product recalls." Mr. Beck chaired the panel on the new
Consumer Product Safety Improvement Act at the annual meeting of the Association of Corporate Counsel in the Fall of 2009 in
Boston.
***
Prior to moving to Atlanta, Mr. Beck served as Legal Services attorney for indigents in Washington, D.C., produced a television
program on the law for a Washington, D.C. television station, developed a mathematical model of the criminal justice system for
the Urban Institute in Washington, and served in the U.S. Army, receiving the Meritorious Services Medal and two Army
Commendation Medals.
Mr. Beck has received the prestigious Burton Award, which recognizes legal writing, for an article in Copyright World. He is a
recipient of the Emory Medal, the highest award of the Emory Alumni Association. Mr. Beck was honored by Georgia State
University’s College of Law and J. Mack Robinson College of Business with the prestigious 2012 Intellectual Property Legends
Award for his outstanding achievements in intellectual property and for being "a highly respected and distinguished leader in the
international legal community with nearly 40 years of copyright law experience." Mr. Beck has been recognized in The Best
Lawyers in America® since 1995 and in 2013, he was listed in the areas of Entertainment Law and Intellectual Property Law. He
was named a 2012 "Atlanta Lawyer of the Year" in the area of Intellectual Property and a 2013 "Atlanta Lawyer of the Year" in
the area of Entertainment Law — Music, Motion Pictures and Television by The Best Lawyers in America®. Mr. Beck has been
named a Georgia "Super Lawyer" in the areas of Intellectual Property Litigation, Intellectual Property, and Entertainment &
Sports by SuperLawyers magazine. He was also listed in the 2009 and 2010 editions of Chambers USA: America's Leading

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Lawyers for Business for Intellectual Property and was listed as #1 in the 2011 and 2012 editions. Mr. Beck has been
recognized as a top U.S. practitioner in Trademark, Copyright & Trade Secrets by Chambers Global 2012. He was
recommended by Legal 500 US for Copyright in 2011 and 2012. Mr. Beck was recognized by Benchmark: Litigation as a 2011
"Litigation Star" for Georgia and is AV® rated by Martindale-Hubbell.*
* CV, BV, and AV are registered certification marks of Reed Elsevier Properties Inc., used in accordance with the Martindale-Hubbell certification
procedure's standards and policies.

Experience Highlights
Defended copyright challenge of Google's Book Search project
The firm served as lead counsel for Google Inc., in defending copyright infringement lawsuits brought by the Author’s Guild, et
al., and separately by McGraw-Hill and four other large New York publishers in the U.S. District Court for the Southern District of
New York. The complaint alleged that Google’s "Book Search" project (involving the scanning of books in the libraries at
Michigan, Harvard, Stanford, The New York Public Library and Oxford University) infringes the copyrights of millions of authors
and publishers. The litigation has been described as the most important copyright dispute in the last 50 years. A potential
settlement that will allow Google to continue to work with its library partners to scan public domain and in-copyright books from
their collections is being considered by the court.
The Authors Guild v. Google Inc., No. 1:05-cv-08136 (S.D.N.Y. filed Sept. 20, 2005).
Cooper v. Sony Music Entertainment Inc., et al.
Defended Sony Music Entertainment Inc., So So Def Productions and other defendants in a series of lawsuits asserting
copyright infringement and other claims relating to pre-1972 musical sound recordings. Representation resulted in dismissal of
suit and award of defendants' attorneys' fees.
Cooper v. Sony Music Entm't, Inc., et al., 2002 WL 391693 (S.D. Tex. Feb. 22, 2002).
Faulkner v. National Geographic
As lead amici counsel for more than two dozen academic associations (including the American Association for the Advancement
of Science), university presses (including Stanford, Duke and Oxford University) and an electronic archive of digitized versions
of scholarly literature, the firm helped convince the 2nd Circuit to affirm the application of §201(c) of the Copyright Act to a CDROM version of 100 years of National Geographic.
Faulkner v. National Geographic, 409 F.3d 26 (2nd Cir. Mar. 4, 2005).
Rosa Parks v. LaFace Records
Successfully represented LaFace Records in a lawsuit brought by civil rights icon, Rosa Parks, for naming their Grammy
nominated song "Rosa Parks." The suit alleged violations of the right of publicity and the Lanham Act, defamation and various
other state law claims.
Rosa Parks v. LaFace Records, 76 F.Supp. 2d 775 (E.D. Mich. 1999), aff'd in part, rev'd in part, 329 F.3d 437 (6th Cir. 2003),
cert. denied, 2003 WL 22303348 (Dec. 8, 2003).
Hustlers, Inc. v. Thomason
Defended Sanctuary Records in a copyright suit. The court granted Sanctuary's motion to dismiss the on the grounds that
Sanctuary held a license from one of the co-authors of each of the plaintiff’s songs.
Hustlers, Inc. v. Thomason, 65 USPQ 2d 1037 (N.D. Ga. 2002).
Cabell v. Sony Pictures Entertainment, Inc.
Served as lead counsel in representing Sony Pictures Entertainment Inc., actor/writer Adam Sandler and writer Judd Apatow, et
al., in a copyright, trademark and unfair competition suit in federal court in New York. The firm successfully obtained summary
judgment of copyright and trademark rights on behalf of Sony Pictures Entertainment Inc., rejecting claims of film and advertising
infringements and lighting the way for the movie You Don’t Mess With The Zohan. The Court of Appeals for the Second Circuit
affirmed the district court's grant of summary judgment to our client.
Cabell v. Sony Pictures Entm’t, Inc. 714 F. Supp. 2d 452 (S.D.N.Y. 2010), aff’d, No. 10-2690-CV, 2011 U.S. App. LEXIS 13057
(2d Cir. June 24, 2011).
DC Comics Inc. v. Unlimited Monkey Business Inc.
Represented DC Comics Inc., an AOL Time Warner subsidiary, in a copyright infringement suit in which summary judgment was
granted on the grounds that "Superstud" and "Wonder Wench" infringed the copyrighted characters Superman ® and Wonder
Woman®. The parody defense was rejected as a matter of law.
DC Comics Inc. v. Unlimited Monkey Bus. Inc., 598 F. Supp. 110 (N.D. Ga. 1984).

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Estate of Martin Luther King, Jr., Inc. v. CBS, Inc.
Successfully represented the heirs of Dr. Martin Luther King, Jr. against CBS Broadcasting Inc. in a highly publicized case
before the Eleventh Circuit. The decision upheld the validity of the copyright of the famous "I Have A Dream" speech against a
challenge that it had entered the public domain. Following briefing and oral argument, the Eleventh Circuit reversed a district
court’s finding that Dr. King’s copyright in the speech "I Have A Dream" was forfeited when delivered in 1963 at the March on
Washington and remanded the case for trial. CBS thereafter agreed to a settlement of the Dr. Martin Luther King, Jr. Estate’s
claim that CBS infringed copyrights when it used portions of the speech in a documentary by Mike Wallace.
Estate of Martin Luther King, Jr., Inc. v. CBS, Inc., 194 F.3d 1211 (11th Cir. 1999), reh. denied, 207 F.3d 666 (11th Cir. 2000).
Copyright infringement litigation for global mobility company
Defended a global mobility company in copyright infringement litigation alleging that mobile network carriers were unauthorized
to distribute the plaintiffs' greeting card style MMS messages over their networks. The plaintiffs alleged that MMS is
indistinguishable from peer-to-peer services such as Napster, Kazaa and Limewire that had previously been deemed by courts
to be infringing. The court issued a written decision granting the carriers' motion to dismiss with prejudice, finding among other
things that our client had no duty to police its network for infringing content. There are only a handful of cases that have
addressed a service provider's duty to filter infringing content, and thus, the court's holding that our client has no such obligation
is noteworthy. Currently on appeal to the Ninth Circuit.
Copyright infringement action for Washington University in St. Louis
Brokered an advantageous settlement agreement for Washington University in St. Louis in a complex copyright infringement
action. The case involved the University's acquisition of a film and media archive in 2001 consisting of various documentary film
materials that were collected by the late Henry Hampton, the documentary filmmaker famous for his critically acclaimed
television series on civil rights in America, "Eyes on the Prize." Six years after acquiring and housing the archive materials in the
University's Film and Media Archive, the late Henry Hampton's media company sued the University in Boston, Massachusetts
for copyright infringement, conversion and various other claims based on the University's possession and use of the archive.
The firm immediately filed a motion to dismiss the lawsuit and entered into settlement discussions that raised nuanced and novel
questions of copyright law.
SunTrust Bank v. Houghton Mifflin
Represented Houghton Mifflin in a copyright infringement suit prohibiting the publication of the book "The Wind Done Gone"
because of alleged infringement of the copyright in the novel and motion picture "Gone With the Wind." The Estate of Margaret
Mitchell, through SunTrust Bank as Trustee, brought a copyright infringement suit against Houghton Mifflin and obtained a
preliminary injunction. On May 25, 2001, and immediately upon conclusion of oral argument by the firm, a unanimous panel of
the Eleventh Circuit, U.S. Court of Appeals, vacated the injunction as an abuse of discretion and unconstitutional prior restraint
of speech. On October 10, 2001, the Eleventh Circuit issued a full opinion rejecting the district court’s conclusion that the plaintiff
was likely to succeed and finding, on the record before the court, that "The Wind Done Gone" likely made fair use of "Gone With
the Wind."
SunTrust Bank v. Houghton Mifflin, 252 F.3d 1166 (11th Cir. 2001), and 268 F.3d 1257 (11th Cir. 2001).
Copyright infringement defense for LaFace Records
The firm successfully defended LaFace Records and So So Def Productions in a series of lawsuits asserting copyright
infringement and other claims relating to pre-1972 musical sound recordings. Representation resulted in dismissal of suit and
award of defendants' attorneys' fees.
Fantasy, Inc. v. LaFace Records, 43 U.S.P.Q. 2d 1700 (N.D. Cal. 1997); Fantasy, Inc. v. LaFace Records, 43 U.S.P.Q. 2d 1959
(N.D. Cal. 1997); Fantasy v. LaFace Records, 49 U.S.P.Q. 2d 1148 (E.D. Cal. 1998).
Asset sale for the Estate of Martin Luther King, Jr. Inc.
Represented Estate of Martin Luther King, Jr. Inc. in the sale of Dr. King's papers to a buyer sponsored by the City of Atlanta.
*Experience gained by attorney prior to joining Kilpatrick Townsend

Publications, Articles and Speaking Engagements
Moral Rights and Wrongs: Conflicts in the Digital World
Journal of the Copyright Society of the USA, March 01, 2010
Digital-Age Claims for Old-World Rights
Journal of Intellectual Property Law, September 01, 2009
Music Fans May Help Settle the Score in Satriani v. Coldplay Infringement Suit
LJN’s Entertainment Law & Finance, April 01, 2009

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IP Innovations Class: Even More Hot Topics in Copyright and Publicity Law - The Google Book Search Litigation
Teleconference, January 08, 2009
Why the Corporate 'Policy' is No Shield to Multi-Million Dollar Copyright Liability
Intellectual Property Desk Reference, January 01, 2009
Copyright Questions and Answers
Intellectual Property Desk Reference, January 01, 2009
Why the Corporate ‘Policy’ is No Shield to Multi-Million Dollar Copyright Liability
Association of Corporate Counsel IP Committee Newsletter, November 18, 2008
Dangerous Consumer Products - Violators Beware
Product Liability Law 360, August 15, 2008
Toys, Food and Other Dangerous Products
Product Liability Law 360, January 02, 2008
Copyright Questions and Answers
Intellectual Property Desk Reference, January 01, 2006
Moral Rights Risks: Conflict and Constitutional Considerations
Intellectual Property Desk Reference, January 01, 2006
Moral Rights, Legal Wrongs: Risks, Conflict and Constitutional Consideration in Introducing Moral Rights Protection to
U.S. Law
Copyright World, September 01, 2003
Copyright Protection for GIS Information: A New Revenue Source
Georgia County Government, February 01, 2002
The Role of Parody in Copyright: Is a New Wind Blowing?
Copyright World, December 01, 2001
Copyright Law for Visual Artists
Art Papers, May 15, 1996
Multimedia/Multilegal Issues
OZ Magazine, March 15, 1995
Copyrights and Moral Rights - What Architects Need to Know
AIA Georgia, January 01, 1995

Professional & Community Activities
Copyright Society of the USA, Former Trustee and Founder and Chair of Southeast Chapter
Emory University, Adjunct Professor of Intellectual Property Law (Copyright, First Amendment)
Georgia First Amendment Foundation, Board of Directors
Journal of the Copyright Society of the USA, Editorial Board
U.S. State Department, Lecturer on copyright in Russia, India, Belarus, Macedonia, Albania, Kosovo and Bosnia
The Indian Journal of Intellectual Property Law, Advisor
2009 BTI Client Service All-Star Team
Alliance Theater, Past Board of Directors Member
Georgia Citizens for the Arts, Past Board of Directors
Leadership Atlanta, Class of 1985

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Education
Harvard University, J.D. (1968)
George Washington University Law School, M.A., Urban Law
summa cum laude
Emory University, B.A., History (1965)
magna cum laude

Bar Admissions
Georgia (1969)

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Joseph Petersen
PARTNER
The Grace Building, 1114 Avenue of the Americas
New York, NY, 10036-7703
USA
t +1 212.775.8715
f +1 212.775.8815
[e-mail]

Services
Intellectual Property; Copyright; Trademark; Trademark & Trade Dress Litigation; Internet

Industries
Technology & Software; Telecommunications; Entertainment, Media & Sports
Joe Petersen focuses his practice in representing technology and digital media companies in the enforcement and protection of
their copyrights and trademarks. In addition to his broad copyright and trademark litigation experience, Mr. Petersen possesses
unique experience in federal court litigation establishing fee structures for the public performance of musical works. Beyond his
litigation experience, Mr. Petersen also routinely counsels clients on the protection, enforcement and licensing of their
intellectual property assets.
Mr. Petersen was recommended for his copyright expertise in the prestigious 2011 and 2012 Legal 500 U.S. and in 2011, Mr.
Petersen was praised as "well regarded" for his knowledge of "cutting edge" copyright issues. Mr. Petersen was similarly praised
in the 2008 Chambers USA: America's Leading Lawyers for Business for IP Trademark Copyright as being "well versed in
copyright and trademark infringement claims, trade secret litigation and domain disputes." Mr. Petersen is AV® rated by
Martindale-Hubbell.*
*CV, BV, and AV are registered certification marks of Reed Elsevier Properties Inc., used in accordance with the MartindaleHubbell certification procedure's standards and policies.

Experience Highlights
Trademark enforcement services for Fortune 500 consumer electronics and computer software multinational corporation
Represents a California-based Fortune 500 multinational corporation that designs and manufactures consumer electronics and
computer software products in trademark enforcement work, including lead counsel representation of client in multiple
proceedings before the Trademark Trial and Appeal Board.
Trademark portfolio management for leading manufacturer of waterproof, breathable fabric
Represents leading manufacturer of waterproof, breathable fabric in connection with the enforcement of the company's
trademarks.
Trademark and copyright representation for a Fortune 100 financial services company
Represents a Fortune 100 financial services company in trademark license negotiations and copyright issues.
Capitol Records, Inc. v. Naxos of America, Inc.
Represented leading independent music label with litigation and mediation in connection with claims brought by music label
relating to pre-1972 music recordings.
Litigation for a leading publisher of fashion magazine
Represented leading publisher of fashion magazines in connection with lawsuit arising from termination of license agreement.
Copyright litigation for a leading jewelry design firm *
Represented a leading jewelry design firm in connection with copyright litigations filed against numerous infringers of client's
valuable copyrights.

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Copyright infringement litigation for global mobility company
Defended a global mobility company in copyright infringement litigation alleging that mobile network carriers were unauthorized
to distribute the plaintiffs' greeting card style MMS messages over their networks. The plaintiffs alleged that MMS is
indistinguishable from peer-to-peer services such as Napster, Kazaa and Limewire that had previously been deemed by courts
to be infringing. The court issued a written decision granting the carriers' motion to dismiss with prejudice, finding among other
things that our client had no duty to police its network for infringing content. There are only a handful of cases that have
addressed a service provider's duty to filter infringing content, and thus, the court's holding that our client has no such obligation
is noteworthy. Currently on appeal to the Ninth Circuit.
Social media policies for an international financial services company
Developed social media and privacy policies for international financial holding company and its banking and non-banking
subsidiaries.
*Experience gained by attorney prior to joining Kilpatrick Townsend

Publications, Articles and Speaking Engagements
KT Breakfast Briefing - Copyright Termination: The Looming Battle
Kilpatrick Townsend & Stockton LLP, October 09, 2012
Presentation on Hot Topics in IP — Epic Battles: Patent Wars, Trademark Throwdowns and Copyright Clashes — How
Increasing Litigation Affects the Industry and Your Company
ACC Annual Meeting 2012, October 01, 2012
Copyright Update for Trademark Counsel
KT 2012 Advanced Trademark Law Seminar, February 09, 2012
IP Year in Review
Association of Corporate Counsel's 2011 Annual Meeting, October 23, 2011
Termination of Copyright Transfers and Licenses: Are your copyrights subject to termination under the Copyright Act?
Benjamin N. Cardozo School of Law, September 22, 2011
Online Publication Subjects Foreign Author to U.S. Copyright Registration Requirement
Cyberspace Lawyer, July 01, 2011
Regarding the debate over what constitutes a "United States work" in copyright law
How Three Strikes Is Working
Managing IP Magazine, May 03, 2011
A handful of countries have implemented some form of the controversial three-strikes policy, which cuts infringers'
internet access. Joe Petersen and Andrew Pequignot report on the first few cases.
When Parodists Wish Upon the Fair Use Star - A dream come true could be a nightmare.
New York Law Journal, August 16, 2010
The Buck Stops Where? Avenues to Indemnification in the Copyright Context
American Bar Association Intellectual Property Litigation Newsletter, April 01, 2010
Presentation on Copyright Litigation
New York County Lawyers' Association, December 09, 2009
Presentation on Protecting Your Client's Intellectual Property
Association of Corporate Counsel, May 17, 2009
Copyright Questions and Answers
Intellectual Property Desk Reference, January 01, 2009
Much Needed Clarity: Scope of Copyright Legislation for Computer Programs
Copyright World, February 09, 2007
Presentation on Protection of Pre-1972 Sound Recordings Under State Common Law and the Copyright Act
2006 music related seminar hosted by the New York chapter of the Copyright Society of the U.S.A., January 01, 2006

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Education
Vanderbilt University, J.D. (1996)
State University of New York, University at Albany, B.S. (1991)
summa cum laude

Bar Admissions
New York
Connecticut

Court Admissions
U.S. Court of Appeals for the Second Circuit
U.S. District Court for the Eastern District of New York
U.S. District Court for the Southern District of New York

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Robert N. Potter
ASSOCIATE
The Grace Building, 1114 Avenue of the Americas
New York, NY, 10036-7703
USA
t +1 212.775.8733
f +1 212.775.8816
[e-mail]

Services
Copyright; Anti-counterfeiting & Gray Market; Trademark; Trademark & Trade Dress Litigation; Intellectual Property Litigation

Industries
Entertainment, Media & Sports; Fashion & Luxury Goods
Rob Potter focuses his practice on trademark and copyright litigation and counseling, with an emphasis on anti-counterfeiting
and Internet infringement. Mr. Potter routinely litigates disputes in state and federal courts around the country and before the
Trademark Trial and Appeal Board, and advises clients on intellectual property matters across a wide range of industries
including entertainment, luxury goods, and technology.
Mr. Potter has successfully represented clients in a broad array of copyright and trademark matters, including successful oral
argument before the Second Circuit in affirming a summary judgment victory for client Sony Pictures Entertainment. Mr. Potter
also has significant experience in obtaining and enforcing temporary and preliminary injunctive relief in trademark and anticounterfeiting matters.
Mr. Potter was selected as a New York "Rising Star" by SuperLawyers magazine in 2011 and 2012.

Experience Highlights
Worked on teams handling the following matters:
Trademark and dilution action for Bank of America Corporation
Successfully represented Bank of America in a trademark and dilution action involving the use of the name Banc America Auto
Sales for a reseller of cars on the Internet and in a brick and mortar business in Florida.
Intellectual Property counsel for bar/restaurant owner
Represented bar/restaurant owner in connection with numerous trademark and right of publicity issues, along with copyright
analysis with regard to publicity and promotion.

Trademark counsel for heirs of Jaco Pastorius
Representing the heirs of Jaco Pastorius, the celebrated bass guitarist, in obtaining the return of the well-known "Bass of Doom"
bass guitar, twenty years after it was stolen from Jaco Pastorius.
Coty Inc., et al. v. C Lenu, Inc., et al.
Obtained a $500,000 consent judgment and permanent injunction against C Lenu, Inc. and its principals. C Lenu operated a
decoding facility that used tools, chemicals and other methods to remove codes and other quality-control and anti-counterfeiting
measures from DAVIDOFF, CALVIN KLEIN and other Coty fragrance products. Under the injunction, C Lenu, as well as its
customers and suppliers, are prohibited from trafficking in infringing Coty fragrances of any kind, including decoded Coty
fragrances.
Coty Inc., et al. v. C Lenu, Inc., et al., Case No. 10-Civ-21812 (S.D. Fla. 2011).

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Trademark enforcement services for Fortune 500 consumer electronics and computer software multinational corporation
Represents a California-based Fortune 500 multinational corporation that designs and manufactures consumer electronics and
computer software products in trademark enforcement work, including lead counsel representation of client in multiple
proceedings before the Trademark Trial and Appeal Board.
Litigation for a leading publisher of fashion magazine
Represented leading publisher of fashion magazines in connection with lawsuit arising from termination of license agreement.
Cabell v. Sony Pictures Entertainment, Inc.
Served as lead counsel in representing Sony Pictures Entertainment Inc., actor/writer Adam Sandler and writer Judd Apatow, et
al., in a copyright, trademark and unfair competition suit in federal court in New York. The firm successfully obtained summary
judgment of copyright and trademark rights on behalf of Sony Pictures Entertainment Inc., rejecting claims of film and advertising
infringements and lighting the way for the movie You Don’t Mess With The Zohan. The Court of Appeals for the Second Circuit
affirmed the district court's grant of summary judgment to our client.
Cabell v. Sony Pictures Entm’t, Inc. 714 F. Supp. 2d 452 (S.D.N.Y. 2010), aff’d, No. 10-2690-CV, 2011 U.S. App. LEXIS 13057
(2d Cir. June 24, 2011).
Halted auction of GRAMMY Award for The National Academy of the Recording Arts & Sciences
Represented The National Academy of the Recording Arts & Sciences, the organization which administers the prestigious
GRAMMY award ceremony, in connection with efforts to halt Christie's auction of the GRAMMY awarded to James Brown, the
"Godfather of Soul," in 1986 for the song "Living In America." Christie's refused to heed the firm’s demand that it call off the
auction, asserting that there were no enforceable restrictions on the sale of the statuette. The firm responded by promptly
commencing a lawsuit in New York state court. Faced with the cloud on title resulting from the lawsuit, Christie's ultimately
pulled the GRAMMY award from the auction literally minutes before the bidding on the award was set to begin. Christie's
subsequently confirmed that it has returned the statuette with no plans to auction it in the future.
Trademark litigation for subsidiary to a Fortune 100 global infrastructure and financial services corporation
Obtained, in less than one week's time, a temporary restraining order on behalf of a lender subsidiary to a Fortune 100 global
infrastructure and financial services corporation thwarting the misuse of the client's trademark by a loan services company
seeking to enter into a loan transaction with a world-famous boxing champion.
Copyright infringement for musician
Served as lead counsel in representing a musician for copyright infringement and related claims against defendant website
asserting ownership over the musician's copyrighted recordings and compositions. Obtained favorable settlement agreement for
our client including declaration of full ownership in relevant songs.
Copyright infringement litigation for Arista Records and Outkast *
Obtained summary judgment victory for Arista Records and recording artist Outkast against claims for joint authorship and
copyright infringement.
*Experience gained by attorney prior to joining Kilpatrick Townsend

Publications, Articles and Speaking Engagements
So What'cha Want? The Need for Clarity in Copyright Infringement Cases Based on Digital Sampling
Bright Ideas, September 01, 2012
Counterfeiting and Fashion
IPABA IPL Young Lawyers Action Group/ABA IPL Section Law Student Outreach Panel, January 25, 2012
Grey Market Goods
2011 International Anti-Counterfeiting Coalition (IACC) Fall Conference, October 21, 2011
Girl Talk, J.D. Salinger, and 2 Live Crew: The Past, Present, and Future of Music Sampling and Copyright Law
Brooklyn Law School, February 23, 2011
Distinction Without Difference? The Impact of Salinger on Preliminary Injunctions in Trademark Cases in the Second
Circuit
Bright Ideas, October 01, 2010
Actionable Trademark Infringement
The Intellectual Property Strategist, September 01, 2009

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Copyright Questions and Answers
Intellectual Property Desk Reference, January 01, 2009

Professional & Community Activities
Copyright Society of the USA, Member, Programming Committee, New York Chapter
New York State Bar Association, Intellectual Property Law Section, Member
International AntiCounterfeiting Coalition, Member
Bronx School of Law & Finance, Advisory Board, Co-Chair

Education
University of Pennsylvania Law School (2005)
cum laude
Florida State University, B.A., Communication (1997)
summa cum laude

Bar Admissions
New York

Court Admissions
U.S. Court of Appeals for the Second Circuit
U.S. District Court for the Southern District of New York
U.S. District Court for the Eastern District of New York
U.S. District Court for the Eastern District of Michigan

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W. Andrew Pequignot
ASSOCIATE
Suite 2800, 1100 Peachtree Street
Atlanta, GA, 30309-4528
USA
t +1 404.532.6964
f +1 404.541.3321
[e-mail]

Services
Intellectual Property; Copyright; Trademark; Internet

Industries
Entertainment, Media & Sports; Technology & Software
Andrew Pequignot focuses his practice on copyright, trademark, and entertainment matters for technology and media
companies. He has litigation, transactional, and counseling experience in diverse areas such as music licensing, fair use, safe
harbors under the DMCA, anti-circumvention, software, Section 230 of the Communications Decency Act, First Amendment, and
rights of privacy and publicity. His experience includes negotiating and drafting a wide variety of agreements, including
intellectual property licenses and entertainment contracts. Mr. Pequignot served on the committee that drafted the Eleventh
Circuit pattern jury instructions for copyright cases and currently is the chair of the Copyright Committee of the IP Law Section of
the State Bar of Georgia and the co-chair of the Southeast Chapter of the Copyright Society of the U.S.A. He is a frequent writer
and speaker and has been recognized as a "Rising Star" in intellectual property by Super Lawyers magazine.

Experience Highlights
Worked on teams handling the following matters:
adidas America Inc. and adidas-Salomon AG v. Payless Shoesource Inc.
Represented adidas America Inc. and adidas-Salomon AG in trademark infringement litigation against Payless Shoesource
involving the defendant’s infringing use of the well-known and distinctive adidas Three-Stripe Mark. Following a 14-day trial and
two days of deliberation, the jury found unanimously in adidas' favor on all seven claims, including trademark infringement,
trade-dress infringement, unfair competition and unlawful and deceptive trade practices. The jury awarded $305 million in
monetary relief, including $137 million in punitive damages. This verdict was the largest in history for a trademark infringement
case. Following entry of final judgment in excess of $60 million, the parties later settled for an undisclosed amount.
adidas America Inc. v. Payless Shoesource Inc., No. CV01-1655 (D. Or. Nov. 11, 2008).
Defended copyright challenge of Google's Book Search project
The firm served as lead counsel for Google Inc., in defending copyright infringement lawsuits brought by the Author’s Guild, et
al., and separately by McGraw-Hill and four other large New York publishers in the U.S. District Court for the Southern District of
New York. The complaint alleged that Google’s "Book Search" project (involving the scanning of books in the libraries at
Michigan, Harvard, Stanford, The New York Public Library and Oxford University) infringes the copyrights of millions of authors
and publishers. The litigation has been described as the most important copyright dispute in the last 50 years. A potential
settlement that will allow Google to continue to work with its library partners to scan public domain and in-copyright books from
their collections is being considered by the court.
The Authors Guild v. Google Inc., No. 1:05-cv-08136 (S.D.N.Y. filed Sept. 20, 2005).
Board of Supervisors of Louisiana State University et al. v. Smack Apparel Co.
Represented four major universities and The Collegiate Licensing Company (CLC) in a trade dress infringement case. In an
attempt to avoid the provisions of a prior settlement agreement, the defendant, a clothing provider, sold t-shirts and other
merchandise bearing university colors that did not include any of the colleges’ registered marks. The firm secured a ruling
rejecting the theory that school colors were aesthetically functional and that the defendant's use was "fair." After prevailing on
summary judgment on the issue of liability for trademark infringement and unfair competition, we conducted a two-day jury trial

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on monetary relief. The plaintiffs recovered damages in the form of a reasonable royalty and an accounting of defendants’
profits. The defendants later appealed, and the Fifth Circuit unanimously affirmed.
Louisiana State University v. Smack Apparel Co., 438 F. Supp. 2d 653 (E.D. La. 2006), aff'd, 550 F.3d 465 (5th Cir. 2008).
Zino Davidoff S.A. v. CVS Corp.
Obtained a preliminary injunction, which was affirmed on appeal, enjoining CVS's sale of decoded gray market DAVIDOFF
COOL WATER fragrances, as well as counterfeits, based upon a holding that the removal of a serial number used for anticounterfeiting and quality control purposes from gray market products was a "material difference" under the trademark laws
even though consumers have no appreciation of the importance of the code. The decision is an important one to brand owners
who seek to control counterfeiting by employing anti-counterfeiting devices and policing their channels of distribution.
Zino Davidoff S.A. v. CVS Corp., No. 06 CV 15332 (KMK), 2007 WL 1933932 (S.D.N.Y. July 2, 2007), aff'd, 571 F.3d 238 (2d
Cir. June 19, 2009).
American Eagle Outfitters, Inc. v. Payless Shoesource, Inc.
The firm served as lead counsel asserting American Eagle Outfitters’ trademarks and obtained a preliminary injunction relative
to advertising and sale of AMERICAN EAGLE footwear by Payless prohibiting objectionable practices and requiring a prominent
disclaimer of any affiliation with American Eagle Outfitters.
American Eagle Outfitters v. Payless Shoe Source, Inc., No. 07-cv-1675-ERK-VVP (E.D.N.Y. filed October 20, 2008).
Coty Inc., et al. v. C Lenu, Inc., et al.
Obtained a $500,000 consent judgment and permanent injunction against C Lenu, Inc. and its principals. C Lenu operated a
decoding facility that used tools, chemicals and other methods to remove codes and other quality-control and anti-counterfeiting
measures from DAVIDOFF, CALVIN KLEIN and other Coty fragrance products. Under the injunction, C Lenu, as well as its
customers and suppliers, are prohibited from trafficking in infringing Coty fragrances of any kind, including decoded Coty
fragrances.
Coty Inc., et al. v. C Lenu, Inc., et al., Case No. 10-Civ-21812 (S.D. Fla. 2011).

Copyright infringement litigation for global mobility company
Defended a global mobility company in copyright infringement litigation alleging that mobile network carriers were unauthorized
to distribute the plaintiffs' greeting card style MMS messages over their networks. The plaintiffs alleged that MMS is
indistinguishable from peer-to-peer services such as Napster, Kazaa and Limewire that had previously been deemed by courts
to be infringing. The court issued a written decision granting the carriers' motion to dismiss with prejudice, finding among other
things that our client had no duty to police its network for infringing content. There are only a handful of cases that have
addressed a service provider's duty to filter infringing content, and thus, the court's holding that our client has no such obligation
is noteworthy. Currently on appeal to the Ninth Circuit.
*Experience gained by attorney prior to joining Kilpatrick Townsend

Publications, Articles and Speaking Engagements
Copyright Law for Trademark Lawyers: U.S. Copyright Protection for Logos Packaging and Products
Kilpatrick Townsend & Stockton LLP, April 02, 2012
The End of the Road: Terminations of Transfer Under the U.S. Copyright Act
March 09, 2012
How Social Media Tools Enable Companies to Enhance the User Experience and Improve their Brand
Technology Association of Georgia Entertainment, February 22, 2012
Digital Music Locker in Safe Harbour?
IP Update: Preferred Firms, December 01, 2011
Media Digital Distribution Issues
Entertainment, Sports & Intellectual Property Law Conference, November 12, 2011
Online Publication Subjects Foreign Author to U.S. Copyright Registration Requirement
Cyberspace Lawyer, July 01, 2011
Regarding the debate over what constitutes a "United States work" in copyright law

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How Three Strikes Is Working
Managing IP Magazine, May 03, 2011
A handful of countries have implemented some form of the controversial three-strikes policy, which cuts infringers'
internet access. Joe Petersen and Andrew Pequignot report on the first few cases.
The Impact of Offers of Judgment in Copyright Cases
ABA Intellectual Property Litigation Newsletter, May 01, 2011
Copyright Termination: Canary in a Coal Mine or Much Ado About Nothing
Entertainment Law Basics Boot Camp, March 29, 2011
Music Licensing in a Digital World: Recent Rate Proceedings and the Controversy Over License vs. Sale
8th Annual Entertainment Law Institute, November 19, 2010
U.S. Copyright Protection for Logos, Packaging and Products
Intellectual Property Magazine, October 01, 2010
Preview This: Music Licensing in a Mobile World
7th Annual Enternatinment Law Institute, October 30, 2009
Actionable Trademark Infringement
The Intellectual Property Strategist, September 01, 2009
Online Copyright Issues for Websites Offering User-Generated Content
Intellectual Property Desk Reference, January 01, 2009
Copyright Questions and Answers
Intellectual Property Desk Reference, January 01, 2009
Harry Potter Decision Provides Guidance on Fair Use
The Intellectual Property Strategist, December 01, 2008
What You Can (and Can't) Do to Protect Your Logo
Sports Law Half Day Seminar, May 14, 2008
Mix It Up: The Briggs Case, Preemption and the DJ Drama
6th Annual Entertainment Law Institute, September 21, 2007
From Ringtones to Downloads
Copyright World, June 01, 2007
A Question of Cost: Recent Decisions on the Copyright Act
Copyright World, May 03, 2007
Valid and Correct: A Recent US Case Which Challenged the Validity of a Statute
Copyright World, March 01, 2007

Professional & Community Activities
State Bar of Georgia, Intellectual Property Law Section, Chair of Copyright Committee
Copyright Society of the USA, Southeast Chapter, Co-Chair

Education
Georgia State University, College of Law, J.D. (2006)
Georgia State University, J. Mack Robinson College of Business, M.B.A. (2006)
Tennessee Technological University, College of Engineering, B.S., Mechanical Engineering (2000)

Bar Admissions
Georgia

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Court Admissions
U.S. Court of Appeals for the Eleventh Circuit
U.S. District Court for the Northern District of Georgia
Georgia Supreme Court
Georgia Court of Appeals
Superior Court of Fulton County

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Allison Scott Roach
ASSOCIATE
Suite 2800, 1100 Peachtree Street
Atlanta, GA, 30309-4528
USA
t +1 404.815.6044
f +1 404.920.3325
[e-mail]

Services
Intellectual Property; Trademark; Copyright; Consumer Product Safety

Industries
Entertainment, Media & Sports; Telecommunications
Allison Roach focuses her practice on trademark, copyright, and consumer product safety issues. She has experience in federal
trademark, trade dress, and copyright infringement litigation, international and domestic trademark portfolio management and
enforcement work, and counseling in Consumer Product Safety compliance. She also regularly practices before the Trademark
Trial and Appeal Board.

Experience Highlights
Worked on teams handling the following matters:
Cabell v. Sony Pictures Entertainment, Inc.
Served as lead counsel in representing Sony Pictures Entertainment Inc., actor/writer Adam Sandler and writer Judd Apatow, et
al., in a copyright, trademark and unfair competition suit in federal court in New York. The firm successfully obtained summary
judgment of copyright and trademark rights on behalf of Sony Pictures Entertainment Inc., rejecting claims of film and advertising
infringements and lighting the way for the movie You Don’t Mess With The Zohan. The Court of Appeals for the Second Circuit
affirmed the district court's grant of summary judgment to our client.
Cabell v. Sony Pictures Entm’t, Inc. 714 F. Supp. 2d 452 (S.D.N.Y. 2010), aff’d, No. 10-2690-CV, 2011 U.S. App. LEXIS 13057
(2d Cir. June 24, 2011).
Trademark services for Fortune 500 multinational corporation
Represents a California-based Fortune 500 multinational corporation that designs and manufactures consumer electronics and
computer software products in trademark enforcement work, including lead counsel representation of client in multiple
proceedings before the Trademark Trial and Appeal Board.
Esbin & Alter LLP v. Zappier et al.
Retained to defend independent software developer on a pro bono basis against former law firm employer that alleged copyright
infringement, fraud, breach of fiduciary duty and trade secret theft. Negotiated a favorable settlement for the software developer
that resulted in a dismissal of all claims, as well as permitting the software developer to sell the accused software product.
Esbin & Alter, LLP v. Zappier et al., No. 1:08-cv-00313 (S.D.N.Y. filed Jan. 14, 2008).
*Experience gained by attorney prior to joining Kilpatrick Townsend

Publications, Articles and Speaking Engagements
Moral Rights and Wrongs: Conflicts in the Digital World
Journal of the Copyright Society of the USA, March 01, 2010

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Digital-Age Claims for Old-World Rights
Journal of Intellectual Property Law, September 01, 2009
Oh Bother: Milne, Steinbeck, And An Emerging Circuit Split Over The Alienability of Copyright Termination Rights
Journal of Intellectual Property Law, March 01, 2007

Professional & Community Activities
Journal of Intellectual Property Law, Executive Articles Editor (2007-2008)
University of Georgia School of Law Class of 2008, President (2006-2008)
University of Georgia School of Law 2008 Legacy Class Gift Campaign, Co-Chairman (2007-2008)

Education
University of Georgia School of Law, J.D. (2008)
cum laude
University of Georgia, A.B., English and Studio Art (2005)
summa cum laude

Bar Admissions
Georgia (2008)

Court Admissions
Georgia Supreme Court (2009)
Georgia Court of Appeals (2009)
U.S. District Court for the Northern District of Georgia (2009)

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