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NEW YORK

COUNTY LAWYER

March 2013

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Recent Cases Demonstrate the Effectiveness of First Amendment Defenses to Claims of Intellectual Property Infringement By Marc J. Rachman, Esq. and Dominick R. Cromartie, Esq. There have been a number of recent cases reported in the press that have raised defenses under the First Amendment in response to claims of intellectual property infringement or right of publicity violations. For example, in February of 2012, an app developer sought First Amendment protection for its parody app called “Joustin Beaver” by filing a lawsuit seeking a declaration that the game did not violate Justin Bieber’s right of publicity because, among other things, it was protected speech. Similarly, in December of 2012, Sony Pictures moved to dismiss on fair use grounds a copyright infringement lawsuit concerning the use of William Faulkner’s famous quote, “The past is not dead! Actually, it’s not even past,” in the Woody Allen film, Midnight In Paris. And in a matter that was not litigated, but widely reported, Paramount Pictures Corp. refused Anheuser Busch’s request that it remove the Budweiser logo from the film Flight, in which Denzel Washington portrayed a highly functional alcoholic airplane pilot, on the grounds that such use was protected under the First Amendment. This article will discuss the origins of these defenses and how several recent court decisions have upheld their application in connection with a reference to Lindsay Lohan in a rap song, the use of biographical information about Olympic athletes in a Facebook app, the appearance of a Louis Vuitton knockoff bag in the film Hangover II, the depiction in paintings and prints of the University of Alabama’s football team, and the lampooning of a viral video in an episode of the television show South Park. First Amendment Defenses to Intellectual Property and Right of Publicity Claims The First Amendment defenses to claims of intellectual property infringement and right of publicity violations are based upon the protections afforded expressive and creative works. For trademark violations, courts rely on what some have coined the “Artistic Relevance” test, which was first discussed in Rogers v. Grimaldi.1 In Rogers, the movie star Ginger Rogers brought a Lanham Act false endorsement claim for the use of her first name in the movie titled “Ginger and Fred.” She argued that the title was likely to confuse the public into believing that she sponsored, endorsed or was otherwise involved in the film. In dismissing Roger’s claim, the Second Circuit held

Volume 7 / Number 20

I N S I D E Flood Insurance Reforms .....................2

Digital Music Distribution ...............3

Living Wills................7 T A B L E O F C O N T E N T S that the title was artistically relevant to the movie, as it told the story of two fictional Italian cabaret dancers who became known as “Ginger and Fred” for their dancing style during World War II. The Second Circuit explained that the title of a movie was not just a means to promote the movie, but an integral element of the film-maker’s artistic expression. The right of privacy under New York law is codified in Sections 50 and 51 of the New York Civil Rights Law. To succeed on a New York right of privacy claim, a plaintiff needs to establish that there was a use, without written consent, of her name, portrait, picture or voice within New York for advertising or trade purposes. However, New York courts have found that if the use is made as part of a work of art, even if it is sold, it may be protected speech under the First Amendment. For example, in Simeonov v. Tiegs2, the court found that the use by a sculptor of the model Cheryl Tieg’s likeness in a bronze sculpture that was to be sold for $20,000 was protected speech and not a violation of New York’s right of privacy law. In Comedy III Prods., Inc. v. Gary Saderup, Inc.,3 the Supreme Court of California adopted a slightly more subjective standard, referred to as the “transformative-use test,” to determine whether the First Amendment trumps a right of publicity violation under California law. Under the transformative-use test, expressive works are protected when they contain significant transformative elements or the value of the work does not derive primarily from the individual’s fame. In Saderup, the issue was thus whether t-shirts and other merchandise depicting charcoal renderings of the Three

Stooges were “transformative” in relation to the actual images of the Three Stooges such that they were entitled to First Amendment protection. The California Supreme Court found that the depiction of the Three Stooges was not protected because they were literal and conventional, lacking sufficient creative input. As to claims for copyright infringement, the Copyright Act of 1976 codified the fair use defense under Section 107.4 The Supreme Court has described fair use defenses as “speech protective safeguards” and “built-in First Amendment accommodations.”4 Section 107 sets forth a four factor test to be applied when determining whether the use of a copyrighted work is permissible as “fair use:” (i) the purpose and character of the use; (ii) the nature of the copyrighted work; (iii) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (iv) the effect of the use upon the potential market for, or value of, the copyrighted work. Recent Decisions Upholding the First Amendment Defense Just this February, in an action brought by Lindsay Lohan under New York’s right of privacy law for the use of her name in the rap song “Give Me Everything” by the artists known as Pitbull, Ne-Yo and Afrojack, the U.S. District Court for the Eastern District of New York found that the use of Lohan’s name was protected speech under the First Amendment as it was part of a work of art.6 The lyrics in issue were: “So, (See Intellectual Property on Page 15)

CLE Institute....................................4 Digital Music Distribution ...............3 Digital Training Center CLEs........10 Ethics Hotline ................................13 Flood Insurance Reforms.................2 Gideon v. Wainwright ....................13 Intellectual Property ........................1 Library Notes .................................10 Living Wills .....................................7 Message from Barbara Moses, NYCLA Foundation President ........6 Message from Stewart D. Aaron, NYCLA President............................3 Recent Event Photos ........................8 Upcoming Events.............................9 What’s Tweeting ..............................9


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March 2013 / The New York County Lawyer

Governor Cuomo’s Buyback Proposal Hinges on Reforms to Federal Flood Insurance Policy By Phillip Azachi

Even though these properties sit behind flood control structures, they bear a “residual risk” because the structures can fail if its capacity is exceeded. This was demonstrated by the catastrophic failure of the levees protecting New Orleans. The removal of the exemption would expand the total NFIP risk pool, which would lower average premiums, and provide insurance coverage for the risk posed by a catastrophic failure of flood control systems.6

Hurricane Sandy exposed the risks of floodplain development at a time of rising sea levels and extreme weather. To fortify New York State against flooding, Governor Andrew M. Cuomo is proposing to spend as much as $400 million of federal relief funds to purchase homes wrecked by Hurricane Sandy and then preserve the land permanently as undeveloped coastline.1 The success of the proposal will depend upon lowering buyout prices in the longer term and shifting the burden of flood risk management from the taxpayer to the homeowner, so that latter can properly perform a cost-benefit analysis of living in floodplains. Both objectives can be accomplished through continued reform of the National Flood Insurance Program (NFIP). While Gov. Cuomo’s proposal is unique in its scope, government officials will benefit from reviewing the history of buyouts. The Federal Emergency Management Agency (FEMA) has had voluntary buyout funds and authority since the 1980s. In its early years, the agency emphasized building levees, dams, and other flood mitigation structures. The 1993 Midwestern floods exposed the inefficacies of this approach, and FEMA started pushing for buyouts to return high risk flood zones to their natural state. FEMA has experienced limited success with buyout programs because of its costs. The government must compensate landowners for the fair market value of the purchased property, whether the government purchases the entire fee interest, a subsidiary right such as a conservation easement or development or redevelopment rights.2 But the fair market value does not reflect solely the land’s intrinsic value plus the homeowner’s improvements. It also reflects values arising from government actions. Any buyback program that does not account for government benefits will permit homeowners to double dip. Government actions that increase property values are known as givings in eminent domain jurisprudence. By building infrastructure that permits development to take place (or expand) and flood control measures that reduce the risk of flood-related damages, the government adds value to the property.3 Furthermore, where the government declares that it will not permit a floodplain landowner’s property to move, erode, or disappear (e.g. through disaster relief),4 the government again adds value. These givings distort market values because the costs of flood mitigation rest with the taxpayers and the benefit with homeowners. It is illogical then, if the government compensates homeowners for the value it has conferred. The federal government must recapture givings through buyouts. Of course, past givings cannot be recaptured because a clear and direct accounting of their relationship to value increments has never been recorded. The federal govern-

By maintaining the exemption, the government saps some of the incentive from the buyout program. Instead of adopting land use controls and purchasing federal insurance, protected communities are more likely to cluster development behind flood control structures.7 The protected communities can then shift financial responsibility to taxpayers to maintain flood control systems. The federal government should eliminate this exemption so homeowners can properly consider the costs and benefits of residing in floodplains. Governor Cuomo in Lindenhurst, Long Island surveying the destruction from Hurricane Sandy and meeting with residents whose shoreside homes were destroyed.

ment must focus on recapturing future givings over the lifetime of any New York State buyout program.

greater financial responsibility on homeowners that want to stay in flood-prone communities.

NFIP is an adequate vehicle for a givings recapture scheme because it provides below-market-rate flood insurance. Congress should amend the NFIP to explicitly recognize the amount of the subsidy difference between NFIP rates and what the private insurance market would charge for comparable coverage.5 The difference would be deemed as a credit against a future buyout. The government will avoid paying for the benefits it confers upon homeowners, and the homeowner will still receive just compensation.

One shortfall of the Reform Act is the failure to require property owners in residual risk areas to purchase insurance. Residual risk areas are areas protected by levees, dams or other flood control structures that would be subject to flooding if not for the protective structure. Pursuant to the National Flood Insurance Act, FEMA must map all communities containing a 100-year floodplain, including the residual risk areas. FEMA can then offer flood insurance to residents of communities containing any portion of a 100-year floodplain, provided their communities agree to adopt local land-use ordinances and building codes that meet minimum federal standards for floodplain development. Homeowners living in an area designated a “special flood hazard area” within the participating communities must purchase insurance to receive federallybacked mortgages. However, the NFIP exempts residual risk properties from the mandatory requirements applicable to properties in special flood hazard areas.

The federal government must also change homeowners’ perceptions about the utility of living in floodplains to entice them to sell. Since the federal government bears the burden of providing disaster relief, flood mitigation structures and belowmarket-rate flood insurance, the true costs of floodplain residency are not reflected in homeowners’ cost-benefit analysis. The buyout program is less appealing because homeowners believe it is more expensive to move than stay. Recent reforms to the NFIP have compelled floodplain homeowners to adjust their calculations because responsibility for flood risk management has shifted to them. The Biggert-Waters Flood Insurance Reform Act of 2012 (Reform Act) limits the availability of subsidized risk premiums. Subsidized rates are no longer extended to second homes, business properties, severe repetitive loss properties, and properties incurring flood damages that equal or exceed the fair market value of the property. Furthermore, sellers of structures insured before January 1, 1975 can no longer transfer their subsidized premium rates to buyers. These changes place

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As federal officials consider Cuomo’s proposal, they should consider the proposal’s long-term success to be contingent upon recapturing givings and compelling homeowners to assume the costs of continued floodplain living. The continued reformation of the NFIP is the means for accomplishing both tasks. Phillip Azachi, a NYCLA and Environmental Committee Member, is a recent graduate of CUNY School of Law, and is interested in environmental and real estate issues. References: 1 Thomas Kaplan, “Cuomo is Seeking to Curb Building in Flooded Area,” New York Times, February 4, 2013, at A1. 2 Daniel D. Barnhizer, Givings Recapture: Funding Public Acquisition of Private Property Interests on the Coasts, 27 Harv. Envtl. L. Rev. 295, 316 (2003). 3Id., Barnhizer at 318 4Id., Barnhizer at 320-21 5Id., Barnhizer at 367 – 373. 6 Jessica Granis, Analysis of How Flood Insurance Reform Act of 2012 MayAffectState and Local Adaptation Efforts, GeorgetownClimateCenter, available at: http://www.georgetownclimate.org/sites/default/f iles/Analysis%20of%20the%20Flood%20Insura nce%20Reform%20Act%20of%202012.pdf 7Id.

Department of Financial Services to Speed Resolution of Insurance Claims in Areas Affected by Sandy The Department of Financial Services (DFS) is setting new rules to speed the processing of insurance claims in areas affected by Storm Sandy. The new regulation reduces the amount of time an insurer can delay its decision on a claim, and requires insurers to report to the Department on how many claims it is delaying and the reasons for the delays. In response to the complaints that insurance companies are taking too long to accept or deny Sandy-related claims, the Department is instituting the following changes. • If an insurer is unable to make a claims decision within the allotted time, extensions are now only 30 days, not 90 days.

• Any extension letter sent to an insured must provide not just the reason for the extension, but an estimate of the date the insurer expects the decisionmaking process to be completed. • Insurers must report to DFS weekly on every claim that has been extended past the initial 15 business day decision window. This report will include, among other items, the amount of the claimed loss, the reason needed for the insurer’s extension, the number of extensions the insurer already has utilized, and the expected date for its decision. • Notification to claimants of what documents and forms will be needed to complete the claim must now be provided in a written, detailed document.


March 2013 / The New York County Lawyer Dear Readers: Last month in the February issue of New York County Lawyer we delivered insight on where the legal jobs are and covered “hot” topics in several of these practice areas including employment, matrimonial, and privacy law. Now, in the second in our two-part series on “hot” topics in “hot” legal practice areas compiled to provide insight to help you learn about emerging topics and to help shape your practice, we are covering some of the latest developments in intellectual property, and real estate and banking law. With lessons from Hurricane Sandy taking shape, real estate and insurance lawyers are discussing post-Sandy issues. Our article by Phillip Azachi, a NYCLA and Environmental Committee Member, on page 2, discusses Governor Andrew M. Cuomo’s s proposal to spend federal relief funds to purchase homes wrecked by Hurricane Sandy and then preserve the land permanently as undeveloped coastline. Meanwhile, with music, movies, literary, and other artistic works so prevalent in our society, intellectual property law continues to be a hot area. This issue features

Stewart D. Aaron President, New York County Lawyers’ Association

two pieces covering different angles, including the below article about digital music resale by NYCLA member Marissa Lewis. There also is an article on the cover by NYCLA members Marc Rachman and Dominick Cromartie that discusses recent cases which demonstrate the effectiveness of First Amendment defenses to claims of intellectual property infringement. When reading this article you will likely recognize several recent movies that have been to the subject of trials for accused intellectual property infringement, thus illustrating the breadth of this issue in today’s legal marketplace. According to the American Bar Associa-

tion’s What’s Hot and What’s Not in the Legal Profession Trends Report, the banking practice area is also “hot” in part because of The Dodd–Frank Wall Street Reform and Consumer Protection Act that was signed into federal law in 2010. Passed as a response to the late-2000s recession, it brought the most significant changes to financial regulation in the United States since the regulatory reform that followed the Great Depression. It made changes in the American financial regulatory environment that affect all federal financial regulatory agencies and almost every part of the nation’s financial services industry. Learn more in the article on page seven covering foreign banks and living wills. Tweet me @NYCLAPres and share what “hot” industries you are noticing in the legal world and what “hot” topics you are seeing emerging.

Stewart D. Aaron President New York County Lawyers’ Association

The First Sale Doctrine and Digital Music Distribution By Marissa Lewis

seller’s computer and any synced device so that only the purchaser has access to it.

The opinions and views expressed in this article are of the author and do not reflect the policy or views of Viacom. The first sale doctrine is a fundamental tenet of U.S. copyright law, limiting the copyright owner’s exclusive distribution right and entitling the owner of a lawful copy of a copyrighted work to dispose of that copy freely. The doctrine was conceived with tangible goods in mind and as the distribution of copyrighted works transitions into the digital world, its boundaries are becoming increasingly unclear. A recent case, Capitol Records v. ReDigi, calls on the court to determine whether the first sale doctrine extends to the resale of intangible copies of copyrighted works. In October 2011, ReDigi launched an online platform for the sale of pre-owned iTunes music, hoping to satiate the niche in the music industry left open by vanishing used record stores. In January 2012, Capitol Records challenged ReDigi’s service, contending that ReDigi’s website amounted to a “clearinghouse for copyright infringement.” Although the law does not speak directly to this issue, some argue that a materiality requirement may be implied. Section 106(3) confers the right to distribute “copies” and “phono records,” which § 101 defines as “material objects.” Further, in a 2001 report, the U.S. Copyright Office stated that “the tangible nature of the copy is… a defining element of the first sale doctrine and critical to its rationale.” However, policy compels that the law evolve to allow for the resale of digital content. Secondhand marketplaces have long relied on the first sale doctrine. The unrestricted ability to resell copyrighted works helps control the price of new items, enhances the value of the initial purchase, and increases the availability of products.The law should not

concern itself with the format and packaging of copyrighted works. Furthermore, the fundamental right to freely dispose of personal property should not be abrogated simply because technology has allowed that property to take on a new form. The unique nature of digital content does present some complications to the application of the first sale doctrine. For example, unlike physical copies of music, pre-owned digital music does not degrade over time, giving purchasers little incentive to purchase digital music from the primary market. And, since a seller of a digital song may be able to continue to enjoy that file even after it is sold, there is a concern that the resale of digital music will spawn illegal file sharing. However, ReDigi illustrates that it is possible to strategically fashion a business model to account for the risks involved in allowing users to buy and sell preowned digital songs. ReDigi requires and verifies that each song uploaded to its service be originally purchased from iTunes in order to ensure that each digital song is legally obtained. Upon transfer, ReDigi systematically deletes the copy of the digital song file from the

ReDigi offers a persuasive argument that its service does not violate the copyright owner’s right to distribution, regardless of whether the court concludes that the first sale doctrine does not apply to intangible digital music files. On one hand, if it is true that the first sale doctrine only applies to material objects, then consistency requires that the distribution right only apply to material objects as well. Following this reasoning, the sale of digital music files does not even implicate the copyright owner’s exclusive distribution right. In the alternative, if intangible digital music files fall within the scope of the first sale doctrine, the resale of such files on ReDigi’s Marketplace fall squarely within the first sale exception. In February 2012, the District Court denied Capitol Record’s motion for a preliminary injunction. Both parties subsequently moved for summary judgment and are currently awaiting trial. Practically, there are many ways for content owners to prevent secondary digital marketplaces, including making content through streaming, utilizing digital rights management systems, or structuring the transfer of content as a license agreement that prohibits resale and contains other use restrictions. Therefore, the debate regarding ReDigi and secondhand markets for digital song files remains unresolved and may even become obsolete. Marissa Lewis is a member of NYCLA’s Entertainment, Intellectual Property & Sports Committee and currently interns in Viacom’s Anti-Piracy Department. Marissa is graduating this May from Benjamin Cardozo School of Law with a concentration in Intellectual Property and is seeking employment in this field upon graduation.

NEW YORK

COUNTY LAWYER Stewart D. Aaron President

Sophia J Gianacoplos Executive Director

Toni Valenti Director of Marketing and Membership Development

Ariella Greenbaum Editor Senior Communications and Social Media Manager

New York County Lawyer is published by Long Islander Newspapers under the auspices of the New York County Lawyers’ Association. For advertising information, call 631-427-7000. Mailing address: 149 Main Street, Huntington, NY 11743. Copyright © 2013 New York County Lawyers’ Association. All rights reserved. New York County Lawyers’ Association grants permission for articles and other material herein or portions thereof to be reproduced and distributed for educational or professional use through direct contact with clients, prospective clients, professional colleagues and students provided that such use shall not involve any matter for which payment (other than legal fees or tuition) is made and provided further that all reproductions include the name of the author of the article, the copyright notice(s) included in the original publication, and a notice indicating the name and date of the Association publication from which the reprint is made. Subscription rate: $10.00 per year for non-members New York County Lawyer is published monthly (except January and August) for $10 per year by New York County Lawyers’ Association, 14 Vesey Street, New York, NY 10007. Periodicals postage paid is mailed at New York, NY and additional mailing offices. POSTMASTER: Send address changes to: New York County Lawyer, 14 Vesey Street, New York, NY 10007-2992. USPS #022-995 ISSN: 1558-5786 $10.00 of membership dues is deducted for a one-year subscription to the New York County Lawyer.

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March 2013 / The New York County Lawyer

CLE INSTITUTE Special Programs at the CLE Institute This March Join program chairs Robert Kelner, Kelner & Kelner and Hon. Robert Lippmann (Ret.) for the 36th Annual Civil trial Practice Institute: A Bridge the Gap for Litigators on Friday and Saturday, March 22 and 23. The program brings together an extraordinary panel of judges, litigators and leading academics to take you through the entire state civil trial process. You will learn ways to develop and improve trial practice techniques within the context of personal injury and commercial litigation. The program will satisfy the first or second year NY MCLE requirements for newly admitted attorneys. It also serves as a great refresher for all attorneys interested in litigating in NYS court. Topics to be discussed include: • Civil Pre-trial Practice: Commercial/Personal Injury • Preparation of Plaintiffs and Defendants • Conference and Settlement • Courtroom Techniques: Dealing With Expert Testimony and Hearsay • Ethics for Litigators • Evidentiary Problems During Trial • Voire Dire • Interactive Session: How to Select a Jury • Opening Statements • Direct and Cross-examination of Lay

and Expert Witnesses • Demonstration: Direct and Cross Examination of Lay and Expert Witness • Summations Program Chair Raymond J. Dowd, Dunnington, Bartholow & Miller LLP, has assembled an all-star faculty for a very special program to be held the evening of March 21, Should Stolen Holocaust Art Be Returned? Legal and Policy Perspective and Recent Case Developments. Joining Mr. Dowd on the panel are Hon. Stephen Crane (Ret.), JAMS, David Rowlan Esq., Sharon Levin, U.S. Attorney's Office, SDNY, and special guest panelist Ambassador Douglas Davidson, Special Envoy for Holocaust Issues. Topics to be discussed include: • A View from the U.S. State Department • From Abraham Lincoln’s Code of War to the Morgenthau Seizure at MOMA: The American Victory in World War II, Recent Case Law and the Failure To Return Stolen Art to Holocaust Victims • Nazi Looted Art Commissions After the 1998 Washington Conference: Comparing The European and American Experiences

March and Early April Programs When Allegations of Child Sex Abuse Are Made within Matrimonial and Family Law Cases...How to Defend and How to Prosecute Wednesday, March 6, 2013, 9 a.m.-1 p.m. 4 NY Credits: 2 PP; 2 Skills; Transitional and Non-transitional; 4 NJ Credits: General The Ins and Outs of Tax Audits: What You Need to Know Thursday, March 7, 2013; 6-8 p.m. 2 NY Credits: 2 PP; Transitional and Non-transitional; 2 NJ General Credits; 2 CPE Credits Member: $55 Non-member: $75 Co-op and Condo Law and Practice Wednesday, March 13, 2013; 6-9 p.m. 3 NY Credits: 1 Ethics; 2 Skills; Transitional and Non-transitional; 3 NJ (1 Ethics, 2 General) Sex Trafficking in New York City: Identifying Victims in the Court System and Practice Areas Wednesday, March 20, 2013; 6-8 p.m. 2 NY Credits: 2 PP; Transitional and Non-transitional; 2 NJ Credits: General\ Should Stolen Holocaust Art Be

web, on an iPad or an MP3 player. In addition, selected NYCLA programs are now available as live webinars and can be viewed in real time from the comfort of your home or office. Merging NYCLA CLE Institute’s superior content with user-friendly technology has

Civil Trial Practice Institute: A Bridge the Gap for Litigators Friday and Saturday, March 22 & 23; 9 a.m.-5 p.m. 16 NY Credits: 3 Ethics; 7 PP/LPM; 6 Skills; Transitional and Non-transitional; 16 NJ Credits (3 Ethics; 13 General) Mentoring for Lawyers: How to Find the Best Mentor/How to Be the Best Mentor – And Become the Best Lawyer You Can Be Tuesday, April 2, 2013, 6:30-8:30 p.m. 2 NY Credits:1 Skills; 1 Professional Practice; Transitional and Non-transitional; 2 NJ Credits: General Bridge the Gap 1 – A Program for Newly Admitted Attorneys Code 6.67 Consecutive Fridays, April 12 & 19, 2013; 9 a.m.-5 p.m. 16 MCLE Credits: 3 Ethics; 7 PP/LPM, 6 Skills; Transitional and Non-transitional*; 16 NJ Credits (3 Ethics; 13 General)

All NYCLA’s CLE Institute courses now available for New Jersey MCLE Credit

NYCLA CLE Institute and Lawline.com Form Strategic Partnership to Host On-line CLE Programs and Live Webinars NYCLA’s CLE Institute announces its strategic partnership with Lawline.com, a leading distributor of online content, to stream many of its video lectures online. Attorneys can access selected programs from NYCLA’s CLE Institute to fulfill their MCLE requirements at the time and place most convenient for them – on the

Returned? Legal and Policy Perspectives and Recent Case Developments Thursday, March 21, 2013; 6-9 p.m. 3 NY Credits: 1 Ethics; 2 PP; Transitional and Non-transitional; 3 NJ (2 Ethics, 1 General)

proven to be an effective combination. The outstanding advice, knowledge, guidance and skills taught by our faculty from the bench, bar, government agencies, academia and corporate sector is now available to audiences throughout New York, the U.S. and even throughout the world. For more information go to www.nycla.org

New York County Lawyers’ Association’s CLE Institute is currently certified as an Accredited Provider of continuing legal education in the State New Jersey. Please note that Tuition Assistance is available for qualified attorneys for live programs offered by the CLE Institute. Check our website at www.nycla.org for more information and how to apply for Tuition Assistance. Check our website for course details, faculty, complete program descriptions and pricing. Be sure to check our website for a complete listing of programs.

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March 2013 / The New York County Lawyer

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March 2013 / The New York County Lawyer

MESSAGE FROM BARBARA MOSES PRESIDENT OF THE NYCL A FOUNDATION Dear Friends: Each month NYCLA hosts a variety of events for attorneys at all career levels and in all practice areas. The late winter/early spring is a particularly busy time at the Association. Just a few weeks ago, on February 19, over 100 NYCLA members came out for a Guinness Beer Tasting hosted by the Young Lawyers’ Section. Attendees learned the history and heritage of the Guinness brand while tasting various beers and learning pouring tricks. Social events like this are always a big hit, allowing members to get to know one another and network while having fun. Our March 4 entertainment industry forum also looks like a hit. Hosted by the Entertainment, Intellectual Property & Sports Section, “Agents, Managers & Entertainment Attorneys: What the Heck Do They Do?,” features panelists — some of them lawyers — who write, direct, produce, cast, and even act in movies, TV shows and commercials, or manage those who do. A week later, on March 11, the NYCLA Justice Center and the Foreign and International Law and Women’s Rights Committees will host a special presentation entitled “Women in Afghanistan: Today and Tomorrow.” Manizha Naderi, the Executive Director of Women for Afghan Women, will discuss the prob-

while others are members-only events. Take a look at the calendar at nycla.org to see what’s coming up. Register for an event, come out, meet your fellow attorneys, and get involved.

lems facing Afghan women both in Afghanistan and here in the United States. NYCLA is also committed to honoring lawyers and judges who go above and beyond to serve the community. In that tradition, on April 4, NYCLA’s Women’s Rights Committee will honor Dorchen A. Leidholdt, Director of the Center for Battered Women’s Legal Services at Sanctuary for Families, with the 2013 Edith I. Spivack Award. Named for the woman who was the driving force in the establishment of NYCLA’s Women’s Rights Committee in 1972, the award was established in 1997 to honor Ms. Spivack and mark the 25th anniversary of NYCLA’s Women’s Rights Committee. These and many other thought-provoking programs this spring are free to NYCLA members. Some are also open to the public, or to the guests of NYCLA members,

Because your dues do not cover all the costs of the programs and services that make us proud to be NYCLA members, we depend on your contributions to support the work that we do to benefit the membership, the profession, and the public. To help support these programs, you can simply go to www.nycla.org and choose “Giving to NYCLA.” You can also mail a check, payable to the “NYCLA Foundation,” to NYCLA Foundation, 14 Vesey Street, New York, NY 10007. We are grateful for every contribution and are pleased to say “thank you” with a selection of DVDs, books, prints and other gifts, described on our website. NYCLA needs both your support and your ideas. Please do not hesitate to contact me with suggestions for fundraising or related topics. You can reach me at bmoses@maglaw.com.

Sincerely, Barbara Moses President of the NYCLA Foundation


March 2013 / The New York County Lawyer

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Deadline Approaching for Foreign Banks on Living Wills By Arnold & Porter, LLP During 2013, foreign banks with US$50 billion or more in global assets, and a branch or agency in the United States, will be required to submit resolution plans (often called “living wills”) to U.S. federal banking regulators. Resolution plans of foreign banks with less than US$100 billion in U.S. non-bank assets are due by year-end 2013, but a notice must be filed by April 1, 2013, if the institution wishes to use a simplified “tailored” resolution plan. Resolution plans of foreign banks with between US$100 billion and US$250 billion in U.S. nonbank assets must be submitted by July 2013. Foreign banks with US$250 billion or more in U.S. non-bank assets were required to submit resolution plans in 2012.1 The Board of Governors of the Federal Reserve System (FRB) and the Federal Deposit Insurance Corporation (FDIC) in November 2011, adopted regulations requiring certain U.S. and foreign banks, and nonbank financial companies supervised by the FRB pursuant to a systemic risk determination by the Financial Stability Oversight Council, to submit and periodically update resolution plans, describing how they can be resolved in an orderly manner under the U.S. Bankruptcy Code in the event of material financial distress or failure. The regulations, which implement Section 165(d) of the Dodd-Frank Wall Street Reform and Consumer Protection Act (Dodd-Frank), require each “covered company” to sub-

mit a resolution plan. The term “covered company” is defined to include foreign banks and companies that are, or are treated as, bank holding companies under Section 8(a) of the International Banking Act of 1978, and that have US$50 billion or more in global consolidated assets. This advisory describes the resolution plan requirements for foreign-based covered companies and the process for seeking a limited exception to the requirements. Timeframe for Submission The required timeframe for submission of the initial resolution plan depends on the size of the company’s U.S.-based nonbank2 operations as of November 30, 2011, which was the effective date of the regulation. While the largest covered companies were required to submit a resolution plan last summer, the vast majority of foreign-based covered companies must submit their resolution plans later this year. The two remaining deadlines for the submission of resolution plans by foreign-based covered companies are as follows: • July 1, 2013 for foreign-based covered companies with US$100 billion or more (but less than US$250 billion) in total U.S. nonbank assets; and • December 31, 2013 for foreign-based covered companies with less than US$100 billion of U.S. nonbank assets. For foreign-based covered companies with less than US$100 billion of U.S.

nonbank assets, April 1, 2013, is the deadline for submission of an application requesting permission to submit a less comprehensive, “tailored,” resolution plan.

In addition, they must provide a detailed explanation of how such resolution planning is integrated into the company’s overall resolution or other contingency planning process.

Informational Content of a Resolution Plan

Tailored Resolution Plans

Foreign-based covered companies and foreign banking organizations3 are generally required to submit a resolution plan that contains the following information with respect to its subsidiaries, branches, agencies, critical operations, and core business lines that are domiciled in the United States or conducted in whole or material part in the United States: • Executive summary • Strategic analysis • Corporate governance relating to resolution planning • Organizational structure and related information • Management information systems • Interconnections and interdependencies • Supervisory and regulatory information • Contact information

The regulation permits smaller, less complex foreign-based covered companies that operate in the United States predominately through one or more insured depository institutions, branches, or agencies to elect to file a tailored resolution plan that focuses only on resolution of the company’s U.S. nonbank operations and material business operations that are subject to resolution under the U.S. Bankruptcy Code, and the interconnections of such operations with those of its U.S. insured depository institution(s), branches, and agencies. A foreign-based covered company may elect to file a tailored resolution plan, and is considered an “eligible covered company” for those purposes if, as of the end of the prior calendar year: (1) it had less than US$100 billion in total U.S. nonbank assets, and (2) the assets of its U.S. insured depository institution operations, branches, and agencies comprised 85 percent or more of its U.S. total consolidated assets. (See Living Wills on Page 14)


8

March 2013 / The New York County Lawyer

RECENT EVENTS Immediate Past NYCLA President Honored for Service to Association James B. Kobak, Jr. (right), NYCLA’s immediate past President and partner at Hughes Hubbard & Reed LLP, is joined by Candace K. Beinecke (left), Chair, Hughes Hubbard & Reed LLP, at a Portrait Unveiling Ceremony & Reception held at the Home of Law on January 28 to honor Mr. Kobak for his service to NYCLA.

Young Lawyers Ring in the New Year with NYCLA Young lawyers rang in the new year with NYCLA at its Ring in the New Year event on January 24, and enjoyed some food and drink while learning about how to get involved in 2013.

Jeffrey Toobin on “The Obama White House and the Supreme Court” After discussing the Obama White House and the Supreme Court on January 9 before a sold out audience, Jeffey Toobin signs copies of his book The Oath, with Program Chair Alan Fell from NYCLA’s Law & Literature Committee.

NYCLA Hosts Experts Guide to Appellate Practice Program Hon. Eugene Pigott, Jr., NYS Court of Appeals, addresses the audience at The Experts Guide to Appellate Practice CLE Program on January 15, with program Chair Elliott Scheinberg listening.


March 2013 / The New York County Lawyer

9

UPCOMING EVENTS

Events Calendar All events, unless otherwise noted, will be held at NYCLA Home of Law, 14 Vesey Street. Visit the Association’s website, nycla.org for more details, schedule changes and additions, and to R.S.V.P. for events, which are subject to change.

Women’s Rights Committees This forum will feature a special presentation by Manizha Naderi, executive director of Women for Afghan Women on the current status of women in Afghanistan and what the future holds. Free and open to the public.

March

Who’s Watching Your Food: A Discussion on the Foods Safety Modernization Act Thursday, March 14 – 6 p.m. Sponsored by NYCLA’s Health Law Committee The Food Safety Modernization Act (FSMA) was signed into law in early 2011. New rules have recently been proposed to address preventive controls and establish science-based standards for growing, harvesting, packing, and holding produce. Panelist discussion and open forum will review the new rules and challenges in implementing the Act. Panelists: Sarah Roller, JD, RD, MPH, Partner at Kelley Drye & Warren LLP and Chair of the Food and Drug Law practice; Dr. Dilcia Granville, Senior Public Affairs Specialist, The Food and Drug Administration (FDA); Mathew Swinburne, JD, Network for Public Health Law – Eastern Region at the University of Maryland School Of Law. Moderator: Afia Asamoah, Esq., Associate at Covington & Burling LLP in the Healthcare and Food & Drug Practice.

Agents, Managers & Entertainment Attorneys: What the Heck Do They Do? Monday, March 4 - 7 p.m. Sponsored by NYCLA’s Entertainment, Intellectual Property, & Sports Section Are you interested in entertainment industry matters? Attend this panel discussion between an agent, a manager, and entertainment attorney and learn the differences in such roles. Gain insight into when an attorney might want to direct an entertainment client to speak with an agent or a manager instead of taking on a task he/she isn’t comfortable with or fit to do. In Practice Wednesday, March 6 - 12:30-1:30 p.m. Sponsored by NYCLA’s Young Lawyers’ Section This “In Practice” event will feature guest host Michael A. Cardozo, Corporation Counsel, City of New York. Registration is free and restricted to NYCLA members only. Women in Afghanistan: Today and Tomorrow Monday, March 11 - 6 p.m. Sponsored by NYCLA’s Justice Center and Foreign and International Law and

50th Anniversary of Gideon v Wainright Monday, March 18 – 5:30 p.m. Sponsored by Arnold & Porter LLP

Join NYCLA and Arnold & Porter LLP for this commemorative event on the 50th anniversary of the Supreme Court’s landmark decision in Gideon v. Wainwright. The program, which will begin with a 30-minute premiere screening of the film Gideon’s Promise Unfulfilled narrated by actor Martin Sheen of West Wing, will include a panel of federal and state prosecutors and defenders followed by a cocktail reception. Attend to hear about what the landmark decision did or did not do for people accused of crime and learn what needs to happen to fulfill the promise of Gideon. Speednetworking Thursday, March 21 – 6 p.m. Registration; 6:30 p.m. Start; 8 p.m. Networking Reception Sponsored by NYCLA’s Young Lawyers’ Section, the Westchester G.O. of New York Life Insurance, Brooklyn Law School, New York Law School, St. John’s University School of Law Join NYCLA for this special event open to practitioners of all levels and network with others based on your personal preferences over several rounds of speed networking sessions.

April 2013 Edith I. Spivack Award Reception Thursday, April 4 – 6 p.m. Sponsored by NYCLA’s Women’s Rights Committee Dorchen A. Leidholdt, Director of the Center for Battered Women’s Legal

Services at Sanctuary for Families, will be honored for her work in the area of women’s rights. The Spivack Award was named for the woman who was the driving force for the establishment of NYCLA’s Women’s Rights Committee in 1972, actively recruiting outstanding women attorneys and playing a significant role in identifying critical areas of discrimination against women. The award was established in 1997 to honor Ms. Spivack and mark the 25th anniversary of NYCLA’s Women’s Rights Committee. 50th Charles Evans Hughes Memorial Lecture Wednesday, April 10 - 6 p.m. Sponsored by Hughes Hubbard & Reed LLP James R. Silkenat, American Bar Association President-Elect (2012-13), and Attorney at Law with Sullivan & Worcester LLP, will lecture on “American Legal Education at a Crossroads: Training Lawyers and Judges for the Future” at this annual special event. Michael Cardozo, the Corporation Counsel of the City of New York, will give introductory remarks. In Chambers Tuesday, April 16 - 12:30-1:30 p.m. Sponsored by NYCLA’s Young Lawyers’ Section This “In Chambers” event will feature guest host Hon. Denny Chin, Associate Judge, U.S. Court of Appeals for the 2d Circuit.


10 March 2013 / The New York County Lawyer

LIBRARY NOTES

Changes in the NYCLA Library WestlawNext is coming to the NYCLA Library and promises to bring greater efficiency and ease to your digital research. As of March 1st, WestlawNext will be available to NYCLA members on most of the patron workstations in the library. In addition, new databases, such as New Jersey analytical materials and other enhanced resources will be part of the WestlawNext patron subscription. If you graduated from Law School since 2011, WestlawNext may be your preferred digital legal research engine. WestlawNext was developed to: 1. improve search, 2. assist the attorney in organizing research, and 3. be easier to use. In a simple search box the researcher states the research project in plain English or in a Boolean search without having to even select a library. WestSearch, a proprietary system – using all the editorial muscle from West’s 100+ year publishing history and West’s algorithms, ranks the results by relevancy and allows for easy narrowing of the results by jurisdiction, civil/criminal and other criteria. Click on what West promises will be relevant results. It will be interesting to see how the organizing focus of WestlawNext will work in the NYCLA Library’s multiuser environment. WestlawNext,usually has one person on a password, allows the user to set-up and name folders for research projects and allows highlighting relevant portions of saved items. Our multiuser environment will make it

important for NYCLA members to not leave workproduct where someone else may access client information. WestlawNext aspires to be easier to use. It promises a more “google like” experience and requires less knowledge of the specific Westlaw databases where your answer may be found. I have both respect and skepticism of artificial intelligence and I look forward to making a more comprehensive assessment of WestlawNext in the NYCLA Library. I expect that WestlawNext will prove very useful to our NYCLA Members and other Library users. Your Support Staff and the NYCLA Library You know the benefits you receive from NYCLA but do you realize your office support staff can also benefit from your membership? Lexis, WestlawNext, and Blaw training are available to support staff (clerks, paralegals, etc.) as well as to NYCLA members at no charge. A Bankruptcy Electronic Filing class is also available to you and your support staff for a $35.00 fee. Consult the CLE Calendar on the NYCLA homepage (www.NYCLA.org) for the schedule of Library CLE classes and register online. Besides the training opportunities, you may purchase a Clerk’s Card for one or several members of your office support staff to use the NYCLA Library on a yearly basis ($150.00 per person), for a three month period ($80.00 per person), for a daily Clerk’s Card ($20.00 per per-

son) or Clerk Card 10 Pack ($150.00) – to be used as needed. While at the NYCLA Library, your staff will have access to the NYCLA digital resources (WestlawNext, Bloomberg Professional, etc.) as well as our print collection and the helpful library staff. To purchase a Clerk’s Card for your staff send your request to Reference@NYCLA.org or call 212267-6646, x203. If you want to send the support staff member directly to the NYCLA Library, please have the person bring a letter from you, that includes your membership information along with a check or cash,and have them ask for the issuance of the Clerk’s Card. Law students working in your office should be encouraged to become a NYCLA Law Student Member, at $25.00 per year, as the most cost efficient way to gain access the NYCLA Library resources. NYCLA Membership is also a good first step toward developing the Law Student’s career. Clerk’s Cards may be sponsored by nonNYCLA attorneys but at higher prices than for NYCLA Members. Sources of Brehon Law When relaxing, it is sometimes enjoyable to compare a different legal system to our own Anglo-American tradition. In mid-March some may want to look at the ancient Brehon Laws of Ireland for that comparison. The Brehon Laws, often called the Fénechas, were a civil legal system based on an oral tradition.

The Brehons– the judges, it is suggested by some, were an offshoot of the Poetic class, the keepers of the wider oral history of Ireland. The Brehon laws were somewhat eclipsed in Ireland after the Norman invasion of Ireland in 1169 when the common law was introduced within the Pale. Brehon Law, which had a later resurgence as the “Old English” became “more Irish than the Irish,” was finally extinguished with the Tudor conquest of Ireland in the early 17th century. Below is a link to a handbook that may help you as you begin your study. Brehon Laws: A LEGAL HANDBOOKBY LAURENCE GINNELL, MDCCCXCIV Found at: http://www.libraryireland.com/BrehonLaws/Contents.php “WHEN it became known some time ago that I had undertaken to lecture on the Brehon Laws before the Irish Literary Society, London, one friend congratulated me on the fine subject I had taken in hand, and another on the same day asked me why in the world had I chosen such an uninteresting subject. To these two friends, and the classes they typify, I respectfully dedicate this little volume.” – Lawrence Ginnell For questions about NYCLA’s Library or its services, contact Dan Jordan, Director of Library Services at 212-2676646 ext. 201, or djordan@nycla.org.

Electronic Research Center CLE Programs Unless otherwise noted, courses are free and open to the public. Register at nycla.org. Questions? Contact Irina Chopinova at ichopinova@nycla.org or 212-267-6646 x203.

Westlaw: Public Record Research March 7 - 11:30 a.m.-12:30 p.m. 1 MCLE Credit: 1 Skills; Transitional

Lexis: I March 6 – 10:30– 11:30 a.m. 1 MCLE Credit: 1 Skills; Transitional

U.S. Bankruptcy Court Electronic Case Filing System March 20 – 10 a.m.-12:30 p.m. 2.5 MCLE Credits: 2.5 Skills; Transitional (Also NJ) Member: $65 Non-member: $85 Non-legal Staff: $35

Lexis Research Update March 6 – 12:00 – 1:00 p.m. 1 MCLE Credit: 1 Skills; Transitional

Westlaw: Intermediate March 26 - 1:30 - 2:30 p.m. 1 MCLE Credit: 1 Skills; Transitional

Lexis: Expert Witness March 6 - 1:30 - 2:30 p.m. 1 MCLE Credit: 1 Skills; Transitional

Westlaw: Insurance Law March 26 – 3 - 4 p.m. 1 MCLE Credit: 1 Skills; Transitional

March

Westlaw: Basic March 7 – 10-11 a.m. 1 MCLE Credit: 1 Skills; Transitional

April Lexis: I April 10 – 10:30 – 11:30 a.m. 1 MCLE Credit: 1 Skills; Transitional Lexis: II April 10 – 12:00 – 1:00 p.m. 1 MCLE Credit: 1 Skills; Transitional Lexis: Company & Financial Research April 10 - 1:30 - 2:30 p.m. 1 MCLE Credit: 1 Skills; Transitional Westlaw: Advanced April 11 – 10-11 a.m. 1 MCLE Credit: 1 Skills; Transitional Westlaw: Employment Law April 11 - 11:30 a.m.-12:30 p.m. 1 MCLE Credit: 1 Skills; Transitional Using Bloomberglaw.com for Litigation April 17 – 10 - 10:50 a.m. 1 MCLE Credit: 1 Skills; Transitional (Also NJ)

Using Bloomberglaw.com for a Corporate Transactional Practice April 17 - 11:05 - 11:55 a.m. 1 MCLE Credit: 1 Skills; Transitional (Also NJ) Westlaw: Basic April 23 - 1:30 - 2:30 p.m. 1 MCLE Credit: 1 Skills; Transitional Westlaw: Entertainment Law April 23 – 3 - 4 p.m. 1 MCLE Credit: 1 Skills; Transitional U.S. Bankruptcy Court Electronic Case Filing System April 24 – 10 a.m.-12:30 p.m. 2.5 MCLE Credits: 2.5 Skills; Transitional (Also NJ) Member: $65 Non-member: $85 Non-legal Staff: $35


March 2013 / The New York County Lawyer 11


12 March 2013 / The New York County Lawyer

The New York Center for Neuropsychology & Forensic Behavioral Science Dr. N.G. Berrill, Director

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NYCLA Comments on and Supports Issues NYCLA frequently reports, comments on and supports issues affecting the New York City legal community and has recently commented on or supported the following issues: • NYCLA Non-Profit Organizations Committee Sends Letter to New York State Attorney General’s Office about the Non-Profit Revitalization Act • Matrimonial Section Submits Comments to OCA on ADR Program for Matrimonial Actions • Civil Court Practice Section and

Providing Consultation to Attorneys & the Courts on Psycho-legal Matters • Criminal Cases: Competency Issues, Criminal Responsibility, Extreme Emotional Disturbance, Risk Assessment, Sex Offender Workups & Dispositional Planning

• Matrimonial & Family Court Cases: Custody/Visitation, Neglect/Abuse, Termination, Delinquency, Family Violence, & Adoptions

• Civil Cases: Competency Issues, Head Trauma, Sexual Harassment, Discrimination, Immigration, & Post-Traumatic Stress Disorders

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MAIN OFFICE 26 Court Street, Suite 1711, Brooklyn, NY 11242 718-237-2127 LONG ISLAND OFFICE 45 North Station Plaza, Suite 404, Great Neck, NY 11021 516-504-0018 MANHATTAN 139 Manhattan Avenue, New York, NY 10025 212-280-3706

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Supreme Court Committee Submit Joint Comments to OCA on 22 NYCRR Section 202.5b(d)(iii) • Civil Court Practice Section and Supreme Court Committee Submit Joint Comments on Proposal to Adopt 22 NYCRR Section 202.5(e) • Civil Rights & Liberties Committee and Criminal Justice Section Submit Comments to NYSBA on the Use of Solitary Confinement in New York State and City Prisons Learn more on the News & Publications section of nycla.org.

NYCLA In The News A roundup of recent national and local news stories featuring NYCLA and its members Law360.com February 11, 2013 Rivera Flap Shows NY High Court Picks Can Expect Scrutiny NYCLA’s Federal Courts Committee Chair Vince Chang was quoted in this article about the scrutiny around the appointment of Jenny Rivera to the State Court of Appeals. The article stated, “The charge that Rivera lacks experience is not necessarily fair, according to experts, including Wollmuth Maher & Deutsch LLP partner Vince Chang, who heads the New York County Lawyers Association’s federal courts committee.” It went on to say, “A lot of people say the criticism of her experience was just a pretext,” Chang said, noting that state

bar associations went over her record carefully and universally recommended her qualifications. “Many very fine judges were professors.” Law360.com January 28, 2013 Rule Would Give NY Judges Leeway To Aid Pro Se Parties This article, about a new rule giving judges more leeway in helping litigants avoid common blunders, featured the following quote by NYCLA’s President Stewart D. Aaron, “Generally speaking, judges are supposed to be completely impartial. To the extent they are assisting one of the parties, that could be deemed inconsistent with their duty to be impartial,” said attorney Stewart D. Aaron, president of the New York County Lawyers’ Association.


March 2013 / The New York County Lawyer 13

The Story Behind Gideon v. Wainwright The Petition of Prisoner No. 003826, 50 Years Later By Geoffrey Bickford, Esq. and Asha Smith, Esq. Prisoner No. 003826 had no formal legal education. His papers did not arrive typed, well-spaced or on decent paper, as was expected of petitioners requesting relief. He was, however, possessed of a feeling that he had been fundamentally wronged, that he had been denied a right he saw so clearly present in the law. He inscribed this idea neatly, in pencil, on the prison-provided lined sheets and sent them off to the Supreme Court of the United States sometime in the winter that stitched 1961 to 1962. Prisoner No. 003826 had spent his life drifting from state to state, working odd jobs and compiling a significant criminal record. In his interactions and his letters, he came across as a kind and simple man. He lacked a formal education, let alone legal training. When, in his latest spate of misfortune, he was accused of breaking into and stealing from a pool hall in rural Florida, he requested the trial judge to appoint a lawyer for him. He insisted that he was entitled to counsel under United States Supreme Court precedent. The judge informed him that in Florida, he could only be appointed an attorney for capital offenses. Despite his educational deficiencies, the prisoner was forced to act as his own lawyer. He tried, and performed admirably for a layperson, but was still convicted. Renewing his argument by way of a Writ of Habeas Corpus to the Florida State Supreme Court, his request was again summarily denied. Prisoner No. 003826 had a simple understanding of justice, and felt that he was right on the law. He argued that with the

balance of power so firmly tilted in favor of the state by virtue of it being represented by counsel, no person could ever receive a fair trial under the circumstances. Prisoner No. 003826’s handwritten petition worked its way into the hands of Supreme Court Justices, who assigned Abe Fortas, who himself would soon join the court as a justice, to represent him. The dilemma for Fortas and his new client was that no matter how pure the legal and moral reasoning of their argument was, it was technically wrong on the law. Twenty years earlier, in Betts v. Brady, the Supreme Court had found that criminal defendants in state trials had no absolute right to counsel under the Sixth Amendment as incorporated to the individual states by the due process clause of the Fourteenth Amendment. And yet a full decade before Betts, the Court in Powell v. Alabama had delivered a powerful maxim about the importance of being represented by a lawyer in a criminal case: “The right to be heard would be, in many cases, of little avail if it did not comprehend the right to be heard by counsel... [l]eft without the aid of counsel he may be put on trial without a proper charge and convicted upon incompetent evidence, or evidence irrelevant to the issue or otherwise inadmissible. He lacks both the skill and knowledge adequately to prepare for his defense, even though he have a perfect one. He requires the guiding hand of counsel at every step in the proceeding against him. Without it, though he be not guilty, he faces the danger of conviction because he does not know how to establish his innocence.”

This created a tension in the law, and the prisoner’s simple plea forced that tension to be resolved in his favor. In a decision written by Justice Hugo Black, the Court finally gave the well-worded idea from Powell force, and decided the time had come to overturn Betts. After March 18, 1963, every person charged with a crime, whether in state or federal court, was entitled to representation by counsel, whether he or she could afford a lawyer. Perhaps because the Justices realized how profoundly their decision would reshape the criminal justice system, their opinion functioned as much as a pronouncement of a new right for defendants as an explanation that Betts had been wrong all along. The Court explained that Betts had actually failed to heed the Court’s previous assertions about the importance of counsel for a fair trial. Thus, this was not as much a new obligation foisted upon the states as it was the correction of an old mistake. In the brief decision, Justice Black made clear the principle that the case stood for, not only the right it was establishing, but how it was firmly based upon the Court’s previous declarations regarding the centrality of counsel to a guarantee of due process: “Not only these precedents but also reason and reflection require us to recognize that in our adversary system of criminal justice, any person haled into court, who is too poor to hire a lawyer, cannot be assured a fair trial unless counsel is provided for him. This seems to us an obvious truth.” As most readers of this publication undoubtedly know, a half-century later the promise of this decision remains far from

fulfilled. Public defenders in the city, state and across the country maintain crushing caseloads and work with inferior resources that often render the assistance of counsel more of a procedural guarantee than a substantive one. There is also a growing movement to extend the application of the case to civil proceedings. The argument is advanced that the essence of the decision, that a litigant without counsel versus one with a lawyer creates an inherently unfair proceeding that calls into question the legal and moral propriety of the result, applies whether one is at jeopardy of liberty, or any other right. One can only hope that our profession and our society can see to it to resolve these pernicious and lingering deficiencies before the next half century is up. As for Prisoner 003826, his case was remanded back to the Florida trial court from where it came. His newly appointed lawyer skillfully took apart what was an abjectly weak prosecution case, mostly reliant on a sole eyewitness of questionable credibility. The jury deliberated for barely over an hour. Not guilty. The right to counsel for all criminal defendants having been affirmed, the need for a lawyer was also thus. Prisoner 003826, Clarence Earl Gideon, was free. Geoffrey Bickford, Esq. is a Court Attorney in New York City Criminal Court, and is the Co-Chair of NYCLA’s Criminal Justice Section. Asha Smith, Esq. is a staff attorney with the Legal Aid Society Criminal Defense Division in the Bronx, a member of the NYCLA Board of Directors and the chair of NYCLA’s Minorities and the Law Committee.


14 March 2013 / The New York County Lawyer

Living Wills (Continued From Page 7)

An eligible covered company that intends to submit a tailored resolution plan must provide the FRB and FDIC with notice of its intent and eligibility no later than 270 days prior to the date on which it is required to submit its resolution plan. Thus, as noted above, the deadline for such notice by foreignbased covered companies with less than US$100 billion of U.S. nonbank assets is April 1, 2013. The FRB and FDIC have wide discretion to approve an application for a tailored resolution plan or require a covered company to submit a resolution plan that meets some or all of the requirements of a full resolution plan. Thus, it is advisable for an eligible covered company to start consulting with the FRB and FDIC as soon as possible regarding the content of its application and in order to maximize its chances of being permitted to submit a

tailored resolution plan. Preparing a Resolution Plan

intend to file an application for permission to submit a tailored resolution plan. It may benefit covered companies to start working with the FRB and FDIC to determine the appropriate level of detail for such an application to submit a tailored resolution plan. It may also benefit them to start, if they have not already done so, creating teams and defining tasks in connection with the creation of the plan.

Covered companies are required to submit resolution plans and annually update them. The process of creating and obtaining FRB approval for a plan will require extensive staff time and involvement by the board of directors and senior management. The FRB and FDIC have indicated that resolution planning is an iterative process. Each covered company must develop its own plan, designed to address its own business and organizational structure. Covered companies with US$250 billion or more in total nonbank assets were required to submit resolution plans last summer. Although the FRB and FDIC have not yet approved those plans, the public portions of those plans may nevertheless provide some guidance to smaller covered companies in the preparation of their resolution plans.

References:

Covered companies are well advised to decide as soon as possible whether they

1 See 12 C.F.R. §§ 243, 381. A separate resolutions plan rule applies to FDIC-insured banks with US$50 billion or more in assets. See 12 C.F.R. §

The following Arnold & Porter, LLP staff contributed to this article: David F. Freeman, Jr., Richard M. Alexander, Kevin F. Barnard, Robert M. Clark, E. Whitney Debevoise, A. Patrick Doyle, Lisa Hill Fenning, Luc Gyselen, Gregory Harrington, Raul R. Herrera, Jeremy W. Hochberg, Evan C. Hollander, Quin Landon, Charles A. Malloy, Brian C. McCormally, Kathleen A. Scott, D. Grant Vingoe, Jeremy Willcocks

360. The Board of Governors of the Federal Reserve System has also separately proposed (but not yet adopted) rules that will require foreign banks with US$50 billion or more in global assets to submit risk-management, liquidity, and certain other plans, and impose certain other risk management and planning requirements on all foreign banks with a U.S. branch, agency, subsidiary U.S. bank, or Edge corporation. 2 The term “U.S. nonbank assets” generally refers to assets held outside the foreign bank’s U.S. branch, agency, U.S. commercial lending company, or depository institution subsidiary. 3 The regulations define a foreign banking organization as a foreign bank (and its parent) that (a) operates a branch, agency or commercial lending subsidiary in the U.S.; (b) controls a bank in the U.S.; or (c) controls an Edge corporation acquired after March 1987. Thus, a foreign bank maintaining only a representative office in the United States does not bring a company within the definition of a “foreign banking organization” potentially subject to the resolution plan requirements. However, a foreign bank with only a representative office in the United States but other substantial U.S. nonbank assets could become subject to the resolution plan requirements if designated as systemically important by the Financial Stability Oversight Council under Section 113 of Dodd-Frank.

Please join us to hear James R. Silkenat, President-Elect of the American Bar Association, speak on the topic of American Legal Education at a Crossroads: Training Lawyers for the Future. He will be introducaed by Michael Cardozo, New York City’s Corporation Counsel.

R.S.V.P. at NYCLA.org Wednesday, April 10, 2013 6:00 p.m. New York County Lawyers’ Association 14 Vesey Street • NYC


March 2013 / The New York County Lawyer 15

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Intellectual Property (Continued From Page 1)

I’m tiptoen,’ to keep flowin’/I got it locked up like Lindsay Lohan.” In addition, the court also found that the use was barred by the incidental use exception to a §§ 50-51 claim, as Lohan’s name appeared in only one of 104 lines of the song and was not in the song’s title or refrain. In January of this year, a California State Court in Spitz v. Samsung Elecs. Am., Inc.,7 dismissed several current and former Olympic athletes’ right of publicity claims for use of their images and biographical data in a Facebook app. The Olympians asserted that they did not authorize Samsung’s use of their

Ethics Hotline The Committee on Professional Ethics accepts both written and telephone inquiries on ethics matters and provides advisory opinions. For additional information, call the members listed below. March 1-15 Bruce Handler 212-508-9372 March 16-31 Sarah Jo Hamilton 845-412-5011 April 1-15 Mark Bower 212-240-0700 April 16-30 Malvina Nathanson 212-608-6771 Please Note: Assignments are subject to change. Questions to the Hotline are limited to an inquiring attorney’s prospective conduct. The Hotline does not answer questions regarding past conduct, the conduct of other attorneys, questions that are being litigated or before a disciplinary committee or ethics committee, or questions of law. This notation shall not be construed to contain all Hotline guidelines. For a full discussion of Ethics Hotline guidelines, please see the article below, “Guidelines on NYCLA’s Ethics Hotline,” published in the September 2006 issue of New York County Lawyer.

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biographical information in the Facebook app. Samsung filed an anti-SLAP motion, seeking to strike the lawsuit, arguing that the Olympians’ biographical data was protected First Amendment speech. Samsung claimed that the app was simply an entertaining way for users to discover and explore their connections to Olympic athletes, and, just like ideological and political speech, was protected by the First Amendment. The Court held that Samsung’s placement of its mark on the app pages was not sufficient to show that a commercial transaction was being proposed. And even if it did, the commercial message was “intertwined and overwhelmed” by the non-commercial aspects of the message. In June of last year, the U.S. District Court for the Southern District of New York in Louis Vuitton Mallatier S.A. v. Warner Bros. Entm’t Inc.8 found that the use of a knock-off Louis Vuitton bag in a humorous scene in the movie Hangover II satisfied the Artistic Relevance test, and thus was non-infringing. In the scene, the character Alan, played by Zach Galifianakis, says to the character Stu, played by Ed Helms, when Stu moves Alan’s shoulder bag off of a chair, “Careful... that is a Lewis Vuitton.” In reality, it turns out that the piece of luggage in issue was actually made by a company named Diophy and is described by the court as a “knock-off” of Louis Vuitton’s “Keepall” bag. Louis Vuitton brought its action against Warner Brothers for, among other things, trademark infringement under the Lanham Act. In opposition to Warner Brothers’ motion to dismiss based upon the Artistic Relevance test, Louis Vuitton argued that the use was explicitly misleading as to source, as consumers will be confused into believing that the Diophy bag was an authentic Louis Vuitton piece and that Louis Vuitton had sponsored and approved of the use and misrepresentation of the Diophy bag. The court found that the Artistic Relevance test had been met, as the use of the Louis Vuitton mark had some artistic relevance to the plot as a humorous device and was not explicitly misleading because viewers would not believe that Louis Vuitton produced or endorsed the film. Also in June of last year, the Eleventh Circuit in University of Ala. Bd. of Trus. v. New Life Art, Inc.9 held that an artist’s renderings of the University of Alabama’s football team’s uniforms and school colors on paintings, prints and calendars did not violate the school’s trademarks because they were protected by the First Amendment as artistic expression. The artist Daniel Moore had used the

University’s football team’s jerseys and helmet designs, as well as the crimson and white colors used in the team’s uniforms, in various famous scenes from Alabama’s football history. The court, applying the Artistic Relevance test, found that the use was non-infringing, as the University’s uniforms were relevant to the artistic expression of realistic portrayals of famous scenes from Alabama football history and there was no marketing of the items explicitly stating that they were affiliated with the University. Finally, in June of last year, the Seventh Circuit in Brownmark Films, LLC, v. Comedy Partners,10 affirmed the dismissal of a viral video owner’s copyright infringement lawsuit against the producers of South Park. South Park moved to dismiss the lawsuit on fair use grounds because the episode was meant to lampoon the plaintiff’s video, which was characteristic of society’s obsession with viral videos made famous on the Internet like Psy’s “Gangnam Style” music video. Relying only on copies of plaintiff’s video and the South Park episode, the court held that the Copyright Act’s fair use defense barred the plaintiff’s claims as the episode was a parody that provided commentary on the “ridiculousness” of plaintiff’s video and the viral nature of YouTube videos, was sufficiently transformative from the original, took no more of plaintiff’s work than was necessary to create the intended allusion, and would not have an adverse effect on the market value of plaintiff’s work. First Amendment protections can provide a potent defense for creators of expressive works against intellectual property and

right of publicity claims. Such protections have been successfully applied to protect the use of other’s copyrighted works, trademarks and individuals’ names and images in songs, movies, television shows, paintings, prints and apps. However, such a defense may not be successful if the use is misleading as to the source or origin of the defendant’s work, used to obtain a free ride on a plaintiff’s rights or is not sufficiently transformative of the original work. Marc J. Rachman, a member of NYCLA’s Entertainment, Intellectual Property & Sports Section and Young Lawyers’ Section, is a litigation partner at Davis & Gilbert LLP and co-chair of the firm’s Intellectual Property Litigation Group. Dominick R. Cromartie is a litigation associate at Davis & Gilbert LLP and part of the firm’s Intellectual Property Litigation Group. He is a member of NYCLA’s Entertainment, Intellectual Property & Sports Section, and Labor Relations & Employment Law, Law-Related Education, and Minorities & the Law Committees. References: 1 875 F.2d 994 (2d Cir. 1989) 2. 159 Misc. 2d 54 (N.Y. City Civ. Ct. 1993) 3. 25 Cal. 4th 387 (Cal. 2001) 4. 17 U.S.C. § 107 5. Eldred v. Ashcroft, 537 U.S. 186, 219, 123 S. Ct. 769, 788 154 L. Ed. 2d 683, 711 (2003) 6. Lohan v. Perez, No. 11 CV 5413 (DRH) (ARL), 2013 U.S. Dist. LEXIS 24049, at *13-18 (E.D.N.Y. Feb. 21, 2013) 7. Case No. BC 483475, slip op. (Ca. Super. Ct. Jan. 10, 2013) 8. 868 F. Supp. 2d 172 (S.D.N.Y. 2012) 9. 683 F.3d 1266 (11th Cir. 2012) 10. 682 F.3d 687 (7th Cir. 2012)

EMPLOYMENT & L A BOR L AW STEPHEN D. HANS & ASSOCIATES P.C. Counsel to the Profession ❏ Discrimination/Harassment ❏ Wage & Hour Litigation ❏ Department of Labor Investigation

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