A proven dispute resolver with intellectual property experience.
As an arbitrator, “a masterful ability to organize and comprehend voluminous technical materials.”
As a mediator, “detail oriented but quickly grasps the big picture and … gets results. … a smooth operating style … simply a pleasure to work with.”
Intellectual Property ADR Panelist for:
- American Arbitration Association (AAA)
- International Center for Dispute Resolution (ICDR)
- World Intellectual Property Organization (WIPO)
- Dispute Resolution Centre
- ICC Dispute Resolution Services
- Arts Arbitration and Mediation Services
Judge Nusbaum has arbitrated, mediated and helped parties to settle Intellectual Property disputes.
Recent IP ADR Experiences
Copyright and Trademark. Claims for Breach of a Design Services and Compensation Agreement. Issues included whether bankruptcy terminated copyright and trademark rights under the Design Services Agreement, copyright preemption of Rights of Publicity, arbitrability/jurisdiction over claims of nonsignatory to arbitration agreement, unlicensed sale of goods under the Lanham Act, Lanham Act False Endorsement, Unfair Competition under Cal. Bus. And Prof. Code §17200, False Advertising under Cal. Bus. & Prof. Code § 17500, Unfair Competition under California Common Law, Violation of California Civil Code § 3344, California common law Right of Publicity and amount of damages for breach of contract. Sole Arbitrator, Arts Arbitration and Mediation Services.
International Trademark, Domain Name. Claims of breach of a Proprietary Information Agreement, with issues of violation of a non-competition agreement, trademark infringement, and use of a confusingly similar domain name. Request for injunctive relief, transfer of domain name ownership. Sole Arbitrator, American Arbitration Association.
Copyright. Trademark. Music Royalties. Rock Band Dissolution. Claims for winding up and dissolution of a corporation, accounting for royalties, right to use the band’s name, division of the band’s assets, declaration of copyright interests of the band members, rights to the GoDaddy account, division of band’s equipment, Leaving Member Agreements, joint copyrights, breach of contract, breach of implied covenant of good faith and fair dealing, breach of fiduciary duty by a partner, breach of accounting pursuant to California Corporations Code § 1501(c), partnership dissolution, damages. Sole Arbitrator, Arts Arbitration and Mediation Service.
Trademark. Claims of trade dress rights in burlap bag coffee flower sack wrapping for flower arrangements, and false advertising. Issues whether the trade dress was functional and had acquired secondary meaning. Artificially inflated Likes on Facebook. Lanham Act § 43(a). Sole Mediator, U.S. District Court for the Northern District of California.
Copyright. Trade Secret. Breach of Confidence. Fraud. Claims of violation of an on-line click-through terms of service agreement containing a nondisclosure agreement, copying of course materials, and transfer of assets in fraud on creditors. California Uniform Fraudulent Transfer Act (Cal. Civ. Code §§ 3439-3439.12). Sole Mediator, U.S. District Court for the Northern District of California.
Patent: Infringement. Claims of infringing U.S. Patent No. 8,887,308 (the ‘308 patent), entitled “Personalized Digital Media Access System- PDMAS Part III. Sole Mediator, U.S. District Court, Northern District of California ADR Program.
Copyright: Claims of infringing downloading of garment template images from a website without authorization and use of those images by a competitor on its competing website. Sole Mediator, United States District Court for the Northern District of California ADR Program.
Copyright. Claim of unauthorized use of a residential wired internet access service account to share music via a peer-to peer network or application. Account hacked. Independent Review, Center for Copyright Information, American Arbitration Association.
Copyright. Claim of unauthorized use of a residential wired internet access service account to share a movie via a peer-to peer network or application. Apartment rented to travelers without a secured router and without instructions not to download copyrighted material without authorization. Invitee of the household. Independent Review, Center for Copyright Information, American Arbitration Association.
Communications Act of 1994, Cable/Satellite TV commercial signal piracy. Alleged misappropriation of televised professional boxing program and its showing at a commercial establishment (a restaurant/bar) without a license. Discovery disputes over production of the programming bills. Issues involved the extent of damages, statute of limitations. Mediator for the United States District Court for the Northern District of California ADR Program.
Trademark. Federal trademark infringement and unfair competition, as well as attendant state claims. DUCK STYLE MARKS, including Registration Nos. 1,380,695; 2,309,011; and 2,689,807; DUCK COMMANDER mark, Registration No. 1,722,152. Early Neutral Evaluator for the United States District Court for the Northern District of California ADR Program.
Copyright: Claim that an Internet account was used to illegally copy and/or distribute copyrighted music over the Internet through a peer to peer application. Independent Review, Center for Copyright Information.
Trade Secrets. Claims of trade secret misappropriation, breach of employment contract, including breach of the implied covenant of good faith and fair dealing, breach of duty of undivided loyalty (Cal. Labor Code 2863), unfair competition, unjust enrichment and violation of Ca. Bus. & Prof. Code 17000 et seq. Sole Mediator, Superior Court of California, Santa Clara County.
Copyright. Mediation of issues arising in changing the extent of participation in developing a musical between a scriptwriter and a musician/musical producer . Sole Mediator. Arts Arbitration and Mediation Services.
Copyright, Trademark: Copying of college textbooks. Issues of 11th Amendment Immunity and Fair Use, applicable remedies and extent of damages. Sole Mediator, USDC, NDCA.
Patent. Claims for infringement of patents involved in Fiber Optics products, devices and methods used in the fiber optics communications field, including VCSELS. Private mediation.
Copyright. Breach of a Music Co-Publishing Agreement providing for advances for musical compositions. Issues in dispute included whether contesting the finality of the arbitrator’s award in a prior arbitration, and that judgment could be entered upon it, breached the Co-Publishing Agreement; res judicata or collateral estoppel barring plaintiff from seeking attorneys’ fees for legal services rendered to obtain confirmation of the prior arbitration award; whether the publisher exercised its option for a first option period; whether the publisher breached the Co-Publishing Agreement by failing to pay an advance for the first option period; when the Term of the Co-Publishing Agreement ended; whether arbitral and attorneys’ fees and costs were due from both the composer and his loan out company. Amount in dispute $ 350,000 together with arbitral and attorneys’ fees and costs. Sole Arbitrator, Arts Arbitration and Mediation Services.
Copyright. Claims for breach of an audio/visual production and distribution agreement. Issues included breach of contract, misrepresentation, fraud, breach of good faith and fair dealing. Amount in controversy $25,000. Sole Arbitrator, Arts Arbitration and Mediation Services.
Trade Secret. Silicon materials supplier to global solar manufacturers. Claims that a key employee was secretly operating his competing business while employed, misappropriating trade secrets, tortiously interfering with contracts with vendors and customers, interfering with prospective economic advantage and violating California Business and Professions Code § 17200, et seq. Amount in controversy $1,300,000. California Superior Court, Temporary Settlement Judge.
Patent. Claim for patent infringement. Issues of invalidity based upon unpatentable subject matter, and unenforceability because of inequitable conduct. Judge, Western Regional Orals, AIPLA Giles Sutherland Rich Memorial Moot Court Competition, “Presenting Problems in Intellectual Property Law,” 2011.
Trademark. Claims for the sale and distribution of counterfeit costume jewelry at both the wholesale and retail level; violation of Court’s Preservation Order, sanctions for spoliation of evidence. Amount in controversy $500,000. Sole Mediator, U.S. District Court, Northern District of California ADR Program.
Trade Secret. Claims of misappropriation of trade secrets, fraud, and breach of a non-disclosure agreement signed in course of negotiations regarding potential acquisition of certain assets. Amount in controversy $15 million. Temporary Settlement Judge, California Superior Court, Santa Clara County.
Copyright. Claims for infringement of a photograph that had been published on a website. The issues involved the profits of the infringer attributable to the infringement pursuant to 17 USC § 504. Sole Mediator, U.S. District Court, Northern District of California ADR Program.
Federal Communications Act; Unauthorized Reception of Cable Service; Commercial Signal Piracy. Claims involved the exhibition of a program in a commercial establishment through a home services subscription with Dish Network, in violation of 47 U.S.C. §§ 605 and 553, conversion, Cal. Business and Professions Code 17200, attorneys fees and costs, in the amount of 170,000. Sole Mediator, U.S. District Court, Northern District of California ADR Program
Copyright, Contract. Breach of Book Publishing Contract. Termination of publisher’s of copyrights, damages for failure to publish. Sole arbitrator, Arts Arbitration and Mediation Services.
Declaration of Intellectual Property Rights; Breach of Founders Contract. Claims involve the intellectual property rights arising out of development of software technology in a start up venture, founders’ shares, patent, trade secret and copyright ownership and rights of use, misappropriation, fraud, violation of fiduciary duty, breach of implied covenant of good faith and fair dealing, and interference with prospective business advantage. Early Settlement Neutral, Superior Court of California, Santa Clara County.
Patent Infringement. Claims involve validity, infringement, and damages of no less than a reasonable royalty, willful infringement, actively inducing infringement and contributory infringement. Mediator, U.S. District Court for the Northern District of California ADR Program.
Trademark and Unfair Competition. Claims involved trademark infringement under 15 U.S.C. § 1114; false designation of origin under 15 U.S.C. §1117(a)(3); common law trademark infringement; state law unfair competition: fraudulent business practices under Cal. Bus. & Prof. Code §17200 et seq., misrepresentation under Cal. Civil Code §1770)(a)(2) & (3), and false advertising under Cal. Bus. & Prof. Code §17500; waiver, estoppel, laches, acquiescence, and unclean hands; fraudulent use of a federal trademark before obtaining registration, fraud on the patent and Trademark Office, cancellation of the mark for impermissible material alteration of the drawing of the mark; attorneys fees, costs and expenses, injunctive relief. Early Neutral Evaluator, U.S. District Court, Northern District of California ADR Program.
Intellectual Property Professional Memberships
- American Bar Association, Intellectual Property Section, Chair ADR Committee 2012-2013.
- Copyright Society of the USA
Recent Technical Training
- IP Year in Review, San Francisco Bay Area IP American Inn of Court, September 16, 2015.
- Legal Analytics for Copyright and Trademark, Lex Machina, April 2, 2015, available at https://lexmachina.com/media/press/webcasts/apr2/.
- 2014 Patent Litigation Year in Review, Lex Machina, March 26, 2015.
- Trending Legal Issues in 3D Printing, with Laura Drossman, Esq. & Rachel Fischbein, Esq., April 24, 2014.
IP Publications and Lectures
- Copyright Litigation Strategies, Chapter 9: Court Annexed ADR, ABA Section of Intellectual Property Law, 2017.
- Arbitration of FRAND Disputes. San Francisco Bay Area IP Inn of Court, March 19, 2014.
- Arbitration of Standard Essential Patent Disputes, American National Standards Institute, October 2, 2013
- Working at the Edge of Settlement/ADR: What You Can and Cannot Do, The 28th ABA Annual Intellectual Property Law Conference, April 3, 2013.
80 Hunnewell Ave., Phippsburg, Me. 04563, USA