Mark S. Lee

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, trademarks, rights of publicity, and/or related rights of musicians Elvis Presley, Frank Sinatra, Barbara Streisand, Brian Wilson, Neil Young, Steve Perry, Miles Davis, Jackson Browne, Kurt Cobain, Toni Basil and John Lee Hooker; the musical groups Nirvana and Earth, Wind & Fire; authors John Steinbeck, Harper Lee, Raymond Chandler, William Saroyan, Louis L’Amour, Helen Fielding, and Philip K. Dick; actors Robin Williams, Sylvester Stallone, Groucho Marx, and Doris Day; athletes Jim Brown, Kareem Abdul-Jabbar, and Tiger Woods: fictional characters Betty Boop, Barney, Rocky, Zorro, Dennis the Menace, and Emily the Strange; and photographers Richard Avedon and Jim Marshall.

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 six copyright, trademark or unfair competition actions and argued more than 20 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

• Earth, Wind & Fire IP, LLC v. Substantial Music Group LLC, –F. Supp. 3d–, 2024 WL 1025265 (S. D. Fla. March 1, 2024) (granted summary judgment that defendants’ use of “Earth Wind & Fire Legacy Reunion” to described their band infringed rights in “Earth, Wind & Fire” trademark, even though defendants’ band included some members who had previously played with the real “Earth, Wind & Fire.”)
• Nirvana L.L.C. v. Marc Jacobs International L.L.C., 2023 WL 11821416 (C.D. Cal, December 21, 2023) (granted partial summary judgment that record label’s former art director did not own copyright in “Smiley Face” design on “work made for hire” grounds).
• Bundy v. Nirvana L.L.C., 2023 WL 4311613 (9^th Cir. July 3, 2023) (affirmed dismissal on forum non conveniens grounds of copyright claim alleging infringement in the U.S. of copyright allegedly created under the laws of England and Germany.)
• Neman Brothers v. InterFocus, Inc., 2023 WL 115558 (C.D. Cal. Jan. 4, 2023)(granted summary judgment for defendant on the grounds that Plaintiff’s copyright registration was invalid as a matter of law under the standards established in Unicolors Inc. v. H&M Hennes & Mauritz L.P.,595 U.S. 941 (2022).
• Stillwater LTD v. Basilotta, 2022 WL 1486825 (9th Cir. May 11, 2022) (affirmed trial court ruling that Toni Basil’s notice of termination for the hit song “Mickey” and other sound recordings was effective because Basil authored the sound recordings.)
• Carter v. Atticus Corporation, 2022 WL 1038081 (S.D. Ala. February 9, 2022) (Arbitration Award) and Atticus Corporation v. Tonja B. Carter, 2022 WL 3586572 (S.D. Ala. 8/19/2022) (judicial confirmation of abritration award clarifying copyright ownership interests in the literary works “To Kill A Mockingbird” and “Go Set A Watchman.”)
• Walkowicz v. American Girl Brands, LLC, 2021 WL 510729 (W.D. Wis. Feb. 11, 2021) (dismissed right of publicity claim because the “American Girl” doll at issue did not take plaintiff’s “name and likeness” under Wisconsin right of publicity law.)
• Doc’s Dream, LLC v. Dolores Press, Inc., 959 F.3d 357 (9th Cir. 2020) (resolving an issue of first impression, reverses a district court’s denial of legal fees in a declaratory relief action that disputed the copyright ownership of works created by Dr. Gene Scott.)
• Nirvana, L.L.C. v. Marc Jacobs International, LLC et al., 2019 WL 7817082 (C.D. Cal. November 8, 2019) (defeated motion to dismiss complaint alleging copyright and trademark infringement in a dispute over a “Smiley Face” logo used by the band “Nirvana.”)
• Stephen Perry v. Brown, 791 Fed. Appx 643 (9th Cir. November 6, 2019) (affirmed temporary restraining order and preliminary injunction to prevent the unauthorized distribution of “demo” recordings that featured the vocal performances of Steve Perry in copyright, trademark, and right of publicity action.)
• Ticketmaster, L.L.C. v. Prestige Entertainment West, Inc., 315 F. Supp. 3d 1147 (C.D. Cal. 2018) (defeated motion to dismiss copyright infringement, DMCA, CFAA and related claims brought by company that used “bots” to cut in front of human purchasers of tickets on the Ticketmaster website).
• Marino v. Usher, et al., 673 Fed. Appx. 125 (3d Cir. December 8, 2016) (affirmed summary judgment in favor of Usher and others on copyright infringement claims based on use of copyrighted works with co–authors’ permission.)
• Cummings v. Soul Train Holdings LLC, et al., 67F. Supp. 3d 599, (S.D.N.Y. 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).
• Jim Brown v. Electronic Arts, Inc., 724 F.3d 1235 (9th Cir. 2013) (discusses Lanham Act and related claims based on use of avatar of football great Jim Brown in video game).