Jeffrey D. Goldman

Jeffer Mangels Butler & Mitchell LLP

Los Angeles

Copyright, trademark litigation

The key to Goldman's success is his earlier experience in areas outside of intellectual property law.

"Although this is an IP recognition, I started out 30 years ago as a generalist and did pretty much every type of litigation you can imagine," he said.

Goldman said his background in specialties from employment to bankruptcy prepared him for his current practice in music trademark litigation.

"There's a couple of trademark cases which -- while they involve band names like The Alan Parsons Project and The Rascals -- also involve issues of contract law and partnership law because these bands have longstanding partnerships and histories and you have to know something about that area of the law to sort out the trademark issues that arise," Goldman said.

"Music copyrights in and of themselves are much different from any other type of copyright because music is the only kind of copyright where you have two simultaneous copyrights going on, in the sound recording and the musical composition," he added. "You often have one in whatever audiovisual work you have accompanying it."

Goldman was lead counsel for the defense in a copyright case alleging that the No. 1 U.K. hit "Love Me Again" by John Newman infringed the plaintiff's alleged copyright in a song called "Need to Know." He won summary judgment on the grounds the phrase "need to know now" in the plaintiff's song was not original to the plaintiff, among other reasons.

He successfully defended the Nevada District Court victory in the 9th U.S. Circuit Court of Appeals in March 2019. Apps v. Universal Music Group Inc. et al., 17-17122 (9th Circuit, filed March 14, 2019).

"That case ultimately boiled down to one phrase, 'I need to know now' and the court found that phrase was not original enough to be protected," Goldman said.

Goldman said most of his work comes from one of the three main studios that produce commercial music: Universal, Sony and Warner.

"What I've learned over the years is that nothing is ever the last thing. If you look back to recording agreements from 30 or 40 years ago, which I do a lot, you find that people sometimes tried to predict how music was going to be delivered in the future and they never got it right," Goldman said.

"Ten years ago, I had a really big case for all the major record companies involving ring tones. They were suing a company making a make-your-own ring tone website, something called Mixer. The company spent a ton of money to get that product into copyright compliance and we were successful. But at the end of the day, by the time the case ended, nobody cared about ring tones anymore," Goldman said.

"Sometimes the legal process goes more slowly than technology and by the time you're done with your latest victory, you realize that something else completely different has come up that's more important," he said.

-- Carter Stoddard