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  • Mark S. Lee

    Partner
    Intellectual Property
     mlee@manatt.com
    Download Contact (.vcf)

    Los Angeles
    Direct: 310.312.4128
    General: 310.312.4000
    Fax: 310.312.4224
    Education
    University of Illinois, J.D., 1980, B.A., 1977.
    Bar Admissions
    California
    • Profile
    • Representative Matters
    • Honors & Awards
    • Publications
    • Memberships & Activities
    • Speaking Engagements

    Profile

    Mark Lee’s practice focuses on intellectual property litigation and counseling for celebrities and celebrity estates, studios, and high technology companies. He has been heavily involved in copyright, trademark, and right of publicity counseling and litigation in many federal district courts, in the federal Second, Fifth, Sixth, Eighth, and Ninth Circuit Courts of Appeals, and in the U.S. and California Supreme Courts. He has:

    • Litigated or counseled regarding the rights of publicity and/or trademark rights of Elvis Presley, Frank Sinatra, Miles Davis, Barbara Streisand, Diana, Princess of Wales, Tiger Woods, Jim Brown, Sylvester Stallone, Groucho Marx, Doris Day and others.

    • Litigated or counseled regarding copyrights and other rights in the characters Betty Boop, Barney, Rocky, Zorro, Dennis the Menace, and Emily the Strange; in the works of authors John Steinbeck, Raymond Chandler, William Saroyan, Louis L’Amour, Helen Fielding, and Philip K. Dick; and in the music of Elvis Presley, Brian Wilson, Neil Young, Steve Perry and Jackson Browne.

    • Successfully tried to juries five copyright, trademark, or unfair competition actions.

    • Articulated the right of publicity/First Amendment standard adopted by the Missouri Supreme Court in Doe v. TCI Cablevision.

    • Co-authored the 1999 amendments to and negotiated language changes in the 2007 amendments to California’s posthumous Right of Publicity statute, Civil Code §3344.1, and participated in drafting California’s anti-cybersquatting statute, Bus. & Prof. Code §17525.

    • Participated in drafting the right of publicity statutes of Ohio and Pennsylvania.

    • Participated in litigation to determine the scope of permissible "deep-linking" and "spidering" on the Internet.

    • 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.

    • Obtained dozens of 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.

    • Successfully arbitrated international intellectual property disputes in Sweden and the People’s Republic of China.

    • Argued over eighteen appeals.

    • Authored or co-authored two books and numerous articles on entertainment and intellectual property law.

    Representative Matters

    • Love v. Associated Newspapers, Ltd., 611 F.3d 601 (9th Cir. 2010) (international territorial scope of Lanham Act and right of publicity claims).
    • Penquin Group (USA) v. Steinbeck, 537 F.3d 193 (2d Cir. 2008) (termination rights under the Copyright Act).
    • 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 Missouri Supreme Court).
    • ETW Corp. v. Jireh Publishing, Inc., 332 F.3d 915 (6th Cir. 2003) (amicus) (First Amendment defense to fair competition and right of publicity claim involving use of Tiger Woods’ image on poster).
    • Hoffman v. L.A. Magazine, 255 F.3d 1180 (9th Cir. 2001) (amicus) (unfair competition and right of publicity liability for using computer altered image of celebrity in magazine feature).
    • Comedy III Productions, Inc. v. Saderup, Inc., 25 Cal. 4th 387 (2001) (amicus) (standards for reconciling the right of publicity with the First Amendment).
    • Cairns v. Franklin Mint Co., 292 F.3d 1139 (9th Cir. 2000) (applying 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 F3d. 765 (5th Cir. 1999) (standards for wrongful seizure pursuant to the Lanham Act, 15 U.S.C. §1116(d)).
    • Siniouguine v. Mediachase, Ltd., 2012 WL 2317364 (C.D. Cal. 2012) (copyright ownership of computer software, the “work made for hire” doctrine, and enforceability of “results and proceeds” clauses in employment contracts).
    • Lyons Partnership v. Giannoulas, 179 F.3d 384 (5th Cir. 1999) (parody defense to copyright and trademark infringement claim involving the character "Barney").
    • Elvis Presley Enterprises v. Capece, 141 F.3d 188 (5th Cir. 1998) (parody in trademark infringement and right of publicity action involving the name and likeness of Elvis Presley).
    • Martin’s Herend Imports, Inc. v. Diamond & Gem Trading USA Co., 112 F.3d 1296 (5th Cir. 1997) (trademark infringement and unfair competition involving parallel importation).
    • Fifty-Six Hope Road Music, Ltd. v. A.V.E.L.A., Inc., 688 F.Supp.2d 1148 (D. Nev. 2010) (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) (likelihood of success in trademark infringement action involving identical marks in different businesses).
    • Ticketmaster L.L.C. v. RMG Technologies, Inc. 536 F.Supp.2d 1191 (C.D. Cal. 2008) (copyright misuse as a counterclaim).
    • Ticketmaster L.L.C. v. RMG Technologies, Inc., 507 F.Supp.2d 1096 (C.D.Cal.2007) (copyright infringement and Digital Millennium Copyright Act claims involving unauthorized use of computer programs to purchase event tickets online).
    • 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) (copyright infringement, unfair competition and breach of contract claims involving unauthorized deep linking and spidering of website).
    • ETW Corp. v. Mallamo dba Kids Golf, FA030200145284 (NAF 2003) (ICANN arbitration to retrieve "Tiger Woods" related domain names).
    • Sony Pictures Entertainment Inc. v. Fireworks Entertainment Group, Inc., 137 F.Supp.2d 1177 and 156 F.Supp. 2d 1148 (C.D. Cal. 2001) (copyright infringement and unfair competition action involving character "Zorro" and the "Mask of Zorro").
    • Novell, Inc. v. Weirdstuff, Inc., 1993 U.S. Dist. LEXIS 6674 (N.D. Cal. 1993) (copyright infringement and unfair competition in connection with the sale of portions of computer software).
    • Plasticolor v. Ford Motor Company, 713 F.Supp. 1329 (C.D. Cal. 1989) (trademark infringement and trademark dilution).

    Honors & Awards

    Named one of the Top 10 Copyright Lawyers in California in 2008 by the Los Angeles Daily Journal.

    Outstanding Lawyer of the Year, Los Angeles Chapter, J. Reuben Clark Law Society, 2003.

    Publications

    Entertainment and Intellectual Property Law (Thompson/West 2006-2012). 

    Co-Author, Expert Witnesses: Intellectual Property Cases (Thomson/West 2012). 

    “A ‘Like’ly Story: Facebook Advertising And The Rights Of Publicity,” ABTL Report Vol. 13 No. 3, Winter 2011.

    Co-Author, "Ninth Circuit Widens Split On Copyright Registration Issue," Los Angeles Daily Journal, May 28, 2010.

    "The 9th Circuits’s Doublespeak," Los Angeles Daily Journal, December 2, 2008.

    Co-Author, "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.

    Co-Author, "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.

    Co-Author, "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 Journal, Vol. 16 No. 3, June 1994.

    "Prejudgment Asset Freezes Against Software Pirates," The Computer Lawyer, Vol. 9 No. 10, October 1992.

    Memberships & Activities

    Member, the State Bar of California.

    Admitted to practice before the United States District Court for the Northern, Central and Southern Districts of California, the United States Courts of Appeals for the Second, Fifth, Sixth, Eighth, Ninth and Tenth Circuits, and the U.S. Supreme Court.

    Adjunct Professor, International Intellectual Property Law, Loyola Law School of Los Angeles, 1999.

    Adjunct Professor, Copyright Law, McGeorge School of Law, 1995-1998.

    Speaking Engagements

    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, NY 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

    Representative Media Interviews/Reports

    “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,” 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 Seize Market In Three Stooges,” Los Angeles Times, December 19, 1996.

    “Vigilant Copyright Holders Patrol The Internet,” 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.