Mark S. Lee

Partner

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Office:

Los Angeles

Practice Groups and Client Sectors:

International, Intellectual Property, Litigation

Areas of Focus:

Entertainment / Sports and Recreation Law, Intellectual Property Litigation, Trademarks & Copyrights
Mark S. Lee

Education

University of Illinois

J.D.

University of Illinois

B.A.

Previous Experience

Manatt, Phelps & Phillips, LLP - Partner

Lawler Felix & Hall/Arter & Hadden - Associate & Partner

Adjunct Professor, Copyright, Trademark, and Related Rights, and Entertainment Law, USC Gould School of Law

Adjunct Professor, International IP Law, Loyola Law School

Adjunct Professor, Copyright Law, McGeorge School of Law

Author, Entertainment and Intellectual Property Law (Thomson Reuters 2018)

Bars & Courts

  • US District Courts for the Southern, Central, Eastern, and Northern Districts of California
  • US Circuit Courts of Appeal for the 2nd, 3rd, 5th, 6th, 8th, 9th, and 10th Circuits
  • US Supreme Court

Professional Experience

Working at the intersection of intellectual property and entertainment, Mark Lee advises celebrities and celebrity estates, studios, and high-tech companies in copyright, trademark, and right of publicity matters.  He has litigated or counseled regarding copyrights and related rights in the music of Elvis Presley, Brian Wilson, Neil Young, Steve Perry Jackson Browne, and John Lee Hooker; in the literary works of authors John Steinbeck, Harper Lee, Raymond Chandler, William Saroyan, Louis L’Amour, Helen Fielding, and Philip K. Dick; in the fictional characters Betty Boop, Barney, Rocky, Zorro, Dennis the Menace, and Emily the Strange; and in the photography of Richard Avedon and Jim Marshall. 

He also has litigated or counseled regarding the rights of publicity and/or trademark rights of Elvis Presley, Frank Sinatra, Miles Davis, B.B. King, John Lee Hooker, Barbara Streisand, Diana, Princess of Wales, Robin Williams, Tiger Woods, Jim Brown, Kareem Abdul-Jabbar, Sylvester Stallone, Groucho Marx, Doris Day and others.

Mark’s litigation record spans federal district and appeals courts across the country, as well as the U.S. Supreme Court and the Supreme Court of California. He has successfully tried five copyright, trademark or unfair competition actions to juries and argued more than 18 appeals. His clients have been granted seizure orders, preliminary injunctions and/or asset freezes against computer software or luxury goods pirates, Internet service providers, computer bulletin board operators, cellular phone or trunking radio cloners, and others.

Clients sometimes seek Mark’s assistance abroad. He has participated in civil and criminal proceedings in Canada, the United Kingdom, Finland, Switzerland, Liechtenstein, Austria and the United States to remove pirated materials from the Internet, and to stop an internal computer software fraud ring. In Sweden and the People’s Republic of China, he successfully arbitrated international IP disputes.

At the vanguard of developments in IP law, Mark co-authored the 1999 amendments to—and negotiated language changes in the 2007 amendments to—California’s posthumous right of publicity statute. He also participated in drafting California’s anti-cybersquatting statute and the right of publicity statutes of Ohio and Pennsylvania.

In addition to his work on state statutes, Mark has authored or co-authored two books and numerous articles on entertainment and IP law.

REPRESENTATIVE MATTERS

  • Ticketmaster, L.L.C. v. Prestige Entertainment West, Inc., --F.Supp. 3d--,. 2018 WL 2448115  (C.D.Cal. May 29, 2018) (defeated motion to dismiss copyright infringement, DMCA, CFAA and related claims brought by company that uses unauthorized “bots” to cut in front of human purchasers of tickets on the Ticketmaster website).
  • Marino v. Usher, et al., 2016 WL 7156558, 673 Fed.Appx. 125 (3d Cir. December 8, 2016) (affirms summary judgment in favor of Usher and others on copyright infringement claims based on use of copyrighted works with coauthors’ permission, and affirms sanctions against plaintiff’s counsel for misconduct in the case)
  • Cummings v. Soul Train Holdings LLC, et al., --F. Supp. 2d--, 2014 WL 7008952 (S.D.N.Y. December 12, 2014) (grants motion to dismiss right of publicity, Lanham Act and other claims based on release of “Best of Soul Train” DVD box set that included musician’s background musical performances, on choice of law, copyright preemption, and First Amendment grounds).
  • Brown v. Electronic Arts, Inc., 724 F.3d 1235 (9th Cir. 2013) (discusses Lanham Act and related claim based on use of avatar of football great Jim Brown in video game).
  • Leon Chun-Lung Chen v. World Journal L.A., LLC, et al., 2013 WL 9400945 (Cal. App. 2d Dist. March 12, 2013) (unpublished) (affirms an anti-SLAPP order and attorneys’ fee award in a defamation action).
  • Siniouguine v. Mediachase, Ltd., 2012 WL 2317364 (C.D. Cal. 2012) (grants summary judgment on copyright ownership of computer software, the “work made for hire” doctrine, and enforceability of “results and proceeds” clauses in employment contracts).
  • Love v. Associated Newspapers, Ltd., 611 F.3d 601 (9th Cir. 2010) (affirms summary judgment in favor of Brian Wilson and others based on limits of the international territorial scope of Lanham Act and right of publicity claims).
  • Fifty-Six Hope Road Music, Ltd. v. A.V.E.L.A., Inc., 688 F. Supp. 2d 1148 (D. Nev. 2010) (recognizes the retroactive application of Nevada right of publicity statute to Bob Marley).
  • Credit One Corporation v. Credit One Financial, 661 F. Supp. 2d 1134 (C.D. Cal. 2009) (rejects preliminary injunction in trademark infringement action involving identical marks in different businesses).
  • Penguin Group (USA) v. Steinbeck, 537 F.3d 193 (2d Cir. 2008) (articulates the scope of termination rights under the Copyright Act in dispute over the works of John Steinbeck)
  • Ticketmaster L.L.C. v. RMG Technologies, Inc., 507 F. Supp. 2d 1096 (C.D. Cal. 2007) (grants a preliminary injunction on copyright infringement and Digital Millennium Copyright Act claims involving unauthorized use of computer programs to purchase event tickets online).
  • Motorola, Inc. v. Pick et al., Case No. CV04-2655 (C.D. Cal. November 16, 2005) (jury verdict of $1.58 million and permanent injunction obtained in copyright and trademark infringement action against mobile radio cloner and others)
  • Sheffield Enterprises, Inc. v. the Main Event, Inc., Case No CV02-03927 (C.D. Cal. January 6, 2004) (jury verdict and permanent injunction obtained in Lanham Act action against the producer of unauthorized Frank Sinatra “tribute” show on behalf of the company owned by the children of Frank Sinatra).
  • John Doe v. TCI Cablevision, 110 S.W.3d 363 (Mo.S.Ct. 2003) (nonparty) (right of publicity/free speech standard articulated in law review article adopted by the Missouri Supreme Court).
  • ETW Corp. v. Jireh Publishing, Inc., 332 F.3d 915 (6th Cir. 2003) (amicus) (discusses a First Amendment defense to unfair competition and right of publicity claim involving the use of Tiger Woods’ image on a poster).
  • Ticketmaster Online City Search v. Tickets.com, Inc., 2003 U.S. Dist. LEXIS 6483 (C.D. Cal. 2003) and 54 U.S.P.Q. 2d 1344 (C.D. Cal. 2000) (grants summary judgment on copyright infringement, unfair competition and breach of contract claims involving unauthorized deep linking and spidering of a website).
  • ETW Corp. v. Mallamo dba Kids Golf, FA030200145284 (NAF 2003) (successful ICANN arbitration to retrieve “Tiger Woods” related domain names).
  • Hoffman v. L.A. Magazine, 255 F.3d 1180 (9th Cir. 2001) (amicus) (discusses unfair competition and right of publicity liability for using a computer-altered image of celebrity in magazine feature).
  • Comedy III Productions, Inc. v. Saderup, Inc., 25 Cal. 4th 387 (2001) (amicus) (articulates the standards for reconciling the right of publicity with the First Amendment in California).
  • Sony Pictures Entertainment, Inc. v. Fireworks Entertainment Group, Inc., 137 F. Supp. 2d 1177 and 156 F. Supp. 2d 1148 (C.D. Cal. 2001) (addresses copyright infringement and unfair competition action involving the character “Zorro” and the film “The Mask of Zorro”)
  • Cairns v. Franklin Mint Co., 292 F.3d 1139 (9th Cir. 2000) (applies the “nominative fair use doctrine” to merchandise featuring Diana, Princess of Wales).
  • Martin’s Herend Imports, Inc. v. Diamond & Gem Trading United States Co., 195 F.3d 765 (5th Cir. 1999) (affirms a jury verdict and permanent injunction, and addresses standards for wrongful seizure pursuant to the Lanham Act, 15 U.S.C. §1116(d))
  • Lyons Partnership v. Giannoulas, 179 F.3d 384 (5th Cir. 1999) (addresses the parody defense to copyright and trademark infringement claim involving the character “Barney”).
  • Elvis Presley Enterprises v. Capece, 141 F.3d 188 (5th Cir. 1998) (reverses a summary judgment and applies the parody defense in trademark infringement and right of publicity action involving the name and likeness of Elvis Presley).

HONORS & AWARDS

  • “The Best Lawyers in America,” 2010-2018
  • “Top Intellectual Property Attorneys,” the Los Angeles Daily Journal, 2014-2015
  • “Top Intellectual Property Attorneys in Los Angeles,”  the Los Angeles Business Journal, 2012
  • “Top 10 Copyright Lawyers in California,”  the Los Angeles Daily Journal, 2008
  • "Outstanding Lawyer of the Year,” J. Reuben Clark Law Society, 2003

SPEAKING ENGAGEMENTS

  • Panelist, “Right of Publicity: How To Gaslight a Media Attorney,” Media Law and Resource Center, January 18, 2018
  • Speaker, “Political Candidates’ Use of Copyrighted Music Without Permission,” American Intellectual Property Law Association (“AIPLA”) Annual Meeting, May 18, 2017
  • Panelist, “Right of Publicity Litigation: The Past, Present and Future,” Beverly Hills Bar Association, October 8, 2015
  • Panelist, “The Social Justice Case for Paying College Athletes for Their Intellectual Property Rights,” Defense Research Institute Annual Meeting, October 24, 2014.
  • Panelist, “The Avenues Of Sports Law: Breaking Into The Industry,” Sports Law Societies of USC, UCLA and Loyola Law Schools, March 2012.
  • Panelist, “Celebrities And Brands: Image And Publicity Rights,” INTA Annual Meeting, August 17, 2011.
  • Panelist, “Right of Publicity Law,” INTA/ASIPI Conference, March 21 22, 2011.
  • Featured speaker, “Protecting the Celebrity: Right of Publicity and Beyond,” CLE International Film, TV & New Media Law Conference, January 28, 2011.
  • Moderator, “Use Of The Athlete’s Image In Video Games,” Santa Clara Law School Sports Law Symposium, September 17, 2010.
  • Panelist, “Right Of Publicity In Sports,” ABA Annual Convention, August 7, 2010.
  • Lecturer, “Right of Publicity Law,” CLE International Conference on Film and Television Law, December 2008, January 2010.
  • Panelist, “Current Trends in Online Games and Virtual Worlds,” Law Seminars International Conference on Gamer Technology Law, March 2009.
  • Lecturer, “Trademark Law in the Entertainment Industry,” ALI-ABA Entertainment, Arts and Sports Law Program, January 1997-2009.
  • Panelist, “Copyright Fair Use,” University of San Francisco Law School Fair Use Symposium, November 2008.
  • Panelist, “Movies, Music & Dead Celebrities,” AIPLA Annual Meeting, October 2006.
  • Panelist, Recent Copyright Legislation, “Copyright After MGM v. Grokster,” Glasser LegalWorks Seminar, July 14, 2005.
  • Lecturer, “Right of Publicity Law,” J. Reuben Clark Law Society, May 2004.
  • Panelist, “Copyright Law,” American Intellectual Property Law Association Annual Meeting, January 2004.
  • Lecturer, “Right of Publicity Law,” N.Y. State Bar Entertainment/Arts and Sports Law Section Retreat, Spring 2003.
  • Panelist, “Internet Issues in the Entertainment Industry,” ABA Section of Business Law Spring Meeting, 2003.
  • Panelist, “Right of Publicity and the First Amendment,” California State Bar Intellectual Property Law Section Spring Meeting, 2003.
  • Lecturer, “Right of Publicity Law,” Federalist Society Seminar on Intellectual Property and Free Speech, 2001.
  • Panelist, “Right of Publicity Law,” Bar of San Francisco CLE Program, 1999.

MEDIA INTERVIEWS

  • “Copyright Conundrum: Anatomy of a Circuit Split,” Law 360, January 9, 2018
  • “Who Gets Credit When a Meme Becomes a Movie” Motherboard Vice, May 24, 2017, https://motherboard.vice.com/en_us/article/9k979e/who-gets-credit-when-a-meme-becomes-a-movie.
  • “When It Comes to ‘Fake News,’ Free Speech Cuts Both Ways, The San Francisco Chronicle, February 17, 2017, https://www.sfchronicle.com/business/article/When-it-comes-to-fake-news-free-speech-10939162.php.
  • “EFF Challenges Anti-Circumvention Features of U.S. DMCA,” E-Commerce Law & Policy,August 5, 2016, http://www.e-comlaw.com/e-commerce-law-and-policy/article_template.asp?Contents=Yes&from=eclp&ID=2515.
  • “Must You Be ‘Unreasonable’? Justices Set to Mull Copyright Fees,” Law 360, April 22, 2016, https://www.law360.com/articles/787704/must-you-be-unreasonable-justices-to-mull-copyright-fees.
  • “Justices Set To Clean Up Atty’s Fees in Copyright Cases,” Law 360, January 20, 2016,  https://www.law360.com/articles/748309/justices-set-to-clean-up-attys-fees-in-copyright-cases.
  • “2nd Cir. Dodges Big Split on Copyright Registration,” Law 360, August 4, 2015,  https://www.law360.com/articles/687070/2nd-circ-dodges-big-split-on-copyright-registrations.
  • “Battle Over Ray Charles Songs Next Frontier for Termination Rights,” Los Angeles Daily Journal, February 11, 2015
  • “High Stakes Smokey Robinson Case Nears Settlement,” Los Angeles Daily Journal, January 26, 2015
  • “Supreme Court Rulings Mark Shift in Patent, Copyright Law,” and “High Stakes Smokey Robinson Case Nears Settlement,” Los Angeles Daily Journal, December 26, 2014.
  • “Supreme Court Declines to Review Superman Case,” Los Angeles Daily Journal, October 7, 2014.
  • “Will Circuit Let Football Greats Sit Out The Big Game?” The Recorder, July 6, 2012.
  • NPR Morning Edition, “John Steinbeck,” June 15, 2006.
  • “Steinbeck Heirs Should Get Rights to His Book, Federal Judge Rules,” Los Angeles Times, June 13, 2006.
  • “Star Power: Celebrity Rights,” The Boston Globe, June 4, 2006.
  • “Steinbeck Heirs Entangled In Epic Family Lawsuit,” The New York Times, August 2, 2004.
  • “Steinbeck Heirs Sue Widow’s Estate,” Los Angeles Times, July 16, 2004.
  • “John Steinbeck’s Son Sees Conspiracy To Cheat Blood Heirs,” San Francisco Chronicle, July 16, 2004.
  • “L.A. Jury Rules Frank Sinatra Trademark Infringed,” Yahoo! News.
  • “Law Review Article Guides Missouri High Court In Ruling,” Daily Journal Extra, p. 6, September 22, 2003.
  • “Tiger Woods and the Jireh Case,” Outside The Lines, ESPN, July 14, 2002.
  • “Michael Eisner Testifies Before Congress Regarding Internet Piracy,” CNBC Capitol Report, February 28, 2002.
  • “Movie Star Loses Case On First Amendment Rights,” Corporate Legal Times, September 2001.
  • “Ruling Strikes Blow to Rights of Celebrities,” Los Angeles Daily Journal, July 9, 2001.
  • “Actor Dustin Hoffman Loses Damages Award On Appeal,” San Francisco Chronicle, July 7, 2001.
  • “Use Of Altered Celebrity Photo OK, Court Says,” Los Angeles Times, July 7, 2001.
  • “Famous Retain Wealth of Images,” San Francisco Chronicle, May 1, 2001.
  • “This Case Is Going To The Dogs,” The Recorder, May 22, 2000.
  • “This Legal Dog Fight Is No Joke,” Los Angeles Times, May 2, 2000.
  • “Age Of The Internet: Domain Names For Celebrities,” CNN Digital Jam, October 27, 1999.
  • “Heirs Hail Bill Protecting Use Of Celebrity Images,” The Business Press, September 6, 1999.
  • “Interview On California’s Amended Posthumous Right of Publicity Statute,” CPCC 89.3 FM, August 31, 1999.
  • “Running With The Rat Pack,” Los Angeles Times, August 18, 1999.
  • “Star Signs: With Faces Worth Millions Celebrities Are Seeking New Ways to Protect Their Turf,” ABA Journal, June 1999.
  • “The Battle Over Tiger Woods,” ABC World News Saturday, February 20, 1999.
  • “Court Rules Against Use of ‘Elvis’ Moniker,” Daily Variety, May 11, 1998.
  • “Woods Wins Lawsuit Against Franklin Mint,” Milwaukee General Sentinel, April 16, 1998.
  • “Why, Soitenly!: Firm Sees Market in Three Stooges,” Los Angeles Times, December 19, 1996.
  • “Vigilant Copyright Holders Patrol The Internet,” The Wall Street Journal, December 13, 1995.
  • “Hunka Cyber-love: Elvis Estate Guards Rights On Web Page,” The Commercial Appeal (Memphis), July 9, 1995.
  • “Elvis Presley Enterprises Successful in CD-ROM Lawsuit,” Business Wire, April 7, 1995.
  • “Heartbreak Hotel In The Internet-Elvis Board Game,” Chicago Tribune, November 27, 1994.

 

Publications

  • Author, Entertainment and Intellectual Property Law (Thomson/Reuters/Westlaw 2006-2016).
  • Coauthor, Expert Witnesses: Intellectual Property Cases (Thomson/West 2013).
  • Author, “American Society For Testing materials v. Public.Resource.org, Inc.,” Leading Internet Case Law, March-April 2017.
  • Author, “The Debate in the U.S. as to Whether to Reform the DMCA,” E-Commerce Law and Policy, July 2016.
  • “9th To Review Google’s ‘Innocence,’” Los Angeles Daily Journal, December 1, 2014.
  • “Superheirs Ask High Court For Justice,” Los Angeles Daily Journal, August 1, 2014.
  • “Other People’s Personas,” Los Angeles Lawyer, May 2014.
  • “Be like Mike, but don’t speak for Mike,” Los Angeles Daily Journal, March 14, 2014.
  • “The Shape of Things to Come,” Los Angeles Daily Journal, January 28, 2014.
  • “A ‘Like’ly Story: Facebook Advertising And The Rights Of Publicity,” ABTL Report, Vol. 13, No. 3, Winter 2011.
  • Coauthor, “Ninth Circuit Widens Split On Copyright Registration Issue,” Los Angeles Daily Journal, May 28, 2010.
  • “The 9th Circuit’s Doublespeak,” Los Angeles Daily Journal, December 2, 2008.
  • Coauthor, “A U.S. Window on the Tomato Garden,” (Privacy in China), China IP (Sept/Oct 2008).
  • “Groove is In the Game? Kirby v. Sega America, Inc.,” E-Commerce Law Reporter, January 2007; republished in Intellectual Property Counselor, April 2007.
  • “Who Writes the Songs? A Look at Music Authorship,” Entertainment, Arts and Sports Law Journal, Vol. 16, No. 3, NYSBA Fall/Winter 2005.
  • “The Dastar Legacy,” Entertainment and Sports Lawyer, Vol. 23, No. 2, ABA Summer 2005.
  • “Virtual Superstars? The Promise And Peril To Real Actors,” Screen Actor, Vol. 45, No. 3, June 2004.
  • “Even Better Than The Real Thing: Virtual Superstars And The Right Of Publicity In Cyberspace,” CIPerati, a Cyberspace and IP Newsletter, Vol. 1, No. 2, ABA June 2004.
  • “Agents of Chaos: Judicial Confusion in Defining the Right of Publicity-Free Speech Interface,” Loyola Entertainment Law Review, Vol. 23, No. 3, 2003.
  • “Clean Cuts,” Los Angeles Lawyer, Vol. 26, No. 3, May 2003.
  • “Mattel Adds to Confusion on First Amendment Defense Issue,” Los Angeles Daily Journal, February 7, 2003.
  • Coauthor, “Documentaries, Docudramas, and Dramatic License: Crossing the Legal Minefield,” Southwestern Journal of Law and Trade in the Americas, Vol. 8, No. 1, 2002.
  • “The Copyrightability of Domain Names and URLs,” Journal of Internet Law, Vol. 5, No. 2, August 2001; republished in Computer Law Reporter, Vol. 34, No. 4, December 2001.
  • “Digital Debate–Friend or Foe?” CyberEsq. Magazine, Fall 2000.
  • “Legal Links–Deep Linking on the Internet,” Verdicts And Settlements, June 23, 2000.
  • “Speaking Freely – Right of Publicity And The First Amendment,” Verdicts And Settlements, October 8, 1999.
  • Coauthor, “Strength of Character: Intellectual Property Protection For Fictional Characters,” Los Angeles Lawyer, Vol. 20, No. 2, April 1997.
  • “Japan’s Approach To Copyright Protection For Computer Software,” Loyola of Los Angeles International and Comparative Law Review, Vol. 16, No. 3, June 1994.
  • “Prejudgment Asset Freezes Against Software Pirates,” The Computer Lawyer, Vol. 9, No. 10, October 1992.