Frackman Doesn’t Need E-Mail When He Grapples With Google

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Russell Frackman, a partner at Mitchell Silberberg & Knupp LLP, admits he was a little late to the digital revolution.


His 98-year-old firm had represented recording artists, record companies and the Recording Industry Association of America, but when Frackman was representing the association in 2002 in its landmark case against Napster Inc., he didn’t even know how to use e-mail.


By the time the case had gone all the way to the U.S. 9th Circuit Court of Appeals and the music download firm had been essentially shut down, Frackman had learned how to send electronic messages. But he contends that the opposing counsel, David Boies, didn’t own a home computer at the time.


Frackman’s efforts did, however, earn him an honorary gold record from the RIAA and changed the modern music landscape. Characteristically, Frackman says that he hasn’t had time to hang it on his office wall. He’s been busy with more cases, successfully representing the music industry against download firms Aimster Inc. and Grokster Inc.


His most recent high-profile recent victory came last month, over the giant search engine firm Google Inc. Frackman represented Norman Zada, a philosophy professor who owns the adult magazine and Web site Perfect 10. Zada maintained that Google, by allowing Web surfers to access thumbnail adult photos from his site through its image search engine capacity, was infringing upon his firm’s content copyright on the photos, for which its charges a monthly fee. The court agreed.


“We weren’t asking the judge to shut Google down,” Frackman said of the case. “But when Google is using our copyrighted material, and we count on selling these pictures, and we tell them that these pictures are copyrighted work, Google has to take them down. Then it can go on with the rest of its very legitimate, helpful business.”


Rights issues involving content producers of every ilk, from porn to editorial reports from major media firms have huge ramifications for business and society. That Frackman is on the frontline of many of the fights is not surprising.


Mitchell Silberberg, established in 1908, has a long history in entertainment law. Founding partner Mendel Silberberg was a lifelong friend with Harry Cohn, who was running Columbia Pictures, and the studio boss made a point of sending work his way.


Frackman’s mentor, Howard Smith, and Abe Summer of Mitchell Silberberg represented the music industry in copyright cases in the 1960s, when the fight was against 8-track pirates. They were fighting the same battle in the 1970s, when cassettes were the prevailing medium and the scene of the crime was frequently a flea market.


Frackman scored a significant Ninth Circuit court victory in the mid-1990s, in which PhonoVisa prevailed over Cherry Auction. Frackman remembers attorney Vincent D’Onofrio predicting that his victory would create more work in other areas, particularly computers.


Talk about understatements.


“As the Internet developed, it was a natural progression for our firm,” Frackman said. “It’s all culminated in what has happened with our firm in the last five to six years.”


In 2001, the firm won the largest U.S. copyright verdict to date, $136 million, on behalf of 23 RIAA member companies against Media Group, a CD manufacturing company.


Frackman and his firm also represented the Motion Picture Association of America’s member companies against 321 Studios, which manufactured software that allowed users to copy DVDs. The firm won a permanent injunction blocking further Web distribution of the infringing software.


Frackman knows he has some major battles ahead: They are already on his personal docket. The patenting process often takes several years, and that creates an immense backlog. It makes it more difficult to establish who developed the technology first, and copyright laws often become technologically arcane.


“One way to look at copyright law is that it evolves as technology evolves,” Frackman said. “Unfortunately it’s the technology that evolves first and law has to catch up. Some of the early copyright laws were a result of a great duplication technology called the printing press. People could duplicate copyrighted materials in great quantities.”


When Frackman was in the midst of his fight with Napster, the Digital Millennium Copyright Act was almost three years old and completely irrelevant. Frackman said.


Frackman said that the pirate downloading ventures he fought were operating in bad faith.


“Their (technologies) were developed and used overwhelmingly for one purpose,” he said. “They get benefit by infringing copyright. What we have now are legitimate Internet businesses like Google, and no one would contest that Google serves a legitimate important purpose, but they appear to want to stretch the envelope.”



*Dean’s List for Convergence



Bob Steinberg



Partner, Corporate, Litigation Department



Latham & Watkins, LLP

L.A. Lawyers:

293


L.A. IP Lawyers:

23


Clients:

AOL, DirecTV and Disney Co.


Good to Know:

He’s a leader in digital rights management.


*Honor Roll for Convergence



Carole E. Handler



Partner, Vice Chair IP Litigation, Entertainment & Media Industry Team, Intellectual Property Department



Foley & Lardner LLP



L.A. Lawyers:

62


L.A. IP Lawyers:

15


Specialty:

Copyrights in new media


Good to Know:

She represented Marvel Enterprises Inc. in reclaiming the movie rights to Spider-Man and represents the MPAA in online film distribution cases.


Bill Growney



In-house counsel



Napster Inc.

About His Work:

He represents the company in IP issues as well as contracts and other company matters


Good to Know:

He outsources some of the IP work to Quinn Emanuel Oliver Urquardt & Hedges LLP


Mark S. Lee



Partner, Intellectual Property, Litigation



Manatt Phelps & Phillips LLP

Clients:

Tiger Woods and the estates of Elvis Presley and Frank Sinatra


Good to Know:

He’s prosecuted deep-linking and spidering, a piece of software that collects data from different sites across the Web.


Kent R. Raygor



Partner, Entertainment, Media,

and Communications Group

Sheppard Mullin Richter & Hampton LLP



L.A. Lawyers:

196


L.A. Lawyers in IP:

18


Clients:

Walt Disney Co., ESPN Inc., Billabong International Ltd. and News Corp.’s Fox Cable Networks Group and Twentieth Century Fox Film Corp.


Good to Know:

He’s a media convergence expert who works in film and TV copyrights, contextual advertising, pop-ups, spyware and adware issues.