Intellectual Property Industries

Bar Admissions

  • District of Columbia
  • Maryland
  • New York

Court Admissions

  • U.S. Supreme Court
  • U.S. Court of Appeals for the Second Circuit
  • U.S. Court of Appeals for the Third Circuit
  • U.S. Court of Appeals for the Fourth Circuit
  • U.S. Court of Appeals for the Ninth Circuit
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the District of Columbia
  • U.S. District Court for the District of Maryland
  • U.S. District Court for the Eastern District of Michigan
  • U.S. District Court for the Northern District of Florida
  • U.S. District Court for the Southern District of New York
  • Federal District Court Special Trial Bar
  • U.S. Court of Claims
  • U.S. Tax Court

Education

  • J.D., with honors, George Washington University Law School, 1975
  • B.A., University of Maryland, 1972

Memberships

  • Steering Committee (founding member), District of Columbia Bar Art, Entertainment & Sports Law Division, Chairperson, Visual Arts Committee

    Steering Committee, (past) Copyright Society of the U.S.A., Washington, D.C.

    American Bar Association

    National Computer Law Association

    District of Columbia Computer Law Forum

    Bar of the District of Columbia Art Law Section

    D.C. Bar Computer Law Division

    ABA Forum Committee on the Entertainment and Sports

    International Cultural Heritage Forum
T +1 202.344.8538
F +1 202.344.8300
 

Joshua J. Kaufman

Partner

Joshua Kaufman (AV® Preeminent™ Ranked) is the head of the firm's Copyright and Licensing Group. He counsels and litigates in the fields of copyright, e-commerce, licensing, art, intellectual property, software, on-line issues, trademark, entertainment, media, including digital media, and literary law. He advises his clients in structuring and negotiating transactions in which they exploit their intellectual property rights or in acquiring them from others.

Joshua is a leader in anti-counterfeiting. He has been involved in hundreds of anti-counterfeiting efforts leading to the seizing, destruction or elimination of thousands upon thousands of counterfeited and infringed products. He has represented trademark, copyright and other rights owners in their never ending struggle against the world wide scourge of counterfeiting. Whether it takes a simple "Cease & Desist" letter, filing of a law suit or undertaking actual raids, Joshua has been there time and again. Joshua prides himself on often being able to make his enforcement activities "profit centers" for his clients. In the interest of balance, he has defended counterfeiters and infringers as well.

Joshua was one of the nation's first computer and cyber lawyers. In addition to the law, Joshua knows technology. He worked as a computer consultant and, for 10 years, wrote a syndicated column in which he reviewed hardware and software. He is also one of the country's most well-known art lawyers with clients spanning the globe. He represents a wide variety of artists, art publishers, art licensing agents and art licensees. Once again his legal proficiency is augmented by a strong knowledge of the art world as an artist, gallery owner and importer (he was MC Escher's first distributor in the USA).

Joshua has a wealth of experience in all forms of licensing including software, trademarks, copyright, sports, art and personalities. He has negotiated hundreds of licenses involving most of the major licensing entities (representing licensee, licensors and agents). He has written numerous articles on licensing for a variety of publications, is a co-author of Licensing for Dummies, a regular contributor to the Licensing Royalty Rate Guide and a frequent speaker at the Licensing Show, Surtex and other trade events.

For a full listing of Joshua's publications, speaking engagements, case work and other activities, please visit www.Venable.com/kaufman-cv.

Joshua assists his clients in understanding how to acquire and obtain the rights necessary for their projects, specifically, the acquisition of licenses, copyrights, trademarks and trade secret rights. He assists clients in exploiting these rights through licensing and joint ventures. In the event that his clients' rights are infringed upon, Joshua assists them in securing proper and appropriate recompense for their losses through mediation, negotiation, arbitration and litigation. In order to fully protect their rights and insure they are not infringing on the rights of others he spearheads the firm's IP Audit group. In the event that a client has misused the intellectual property of another, Joshua seeks to extricate them from such circumstances in the most expeditious, cost-effective and confidential manner possible.

Joshua combines his knowledge of his clients’ businesses with his legal proficiency to provide practical legal advice without losing sight of the client’s business goals and needs. He never forgets the most important rule is to get the deal closed on the best possible terms for his clients.

Significant Matters

SUPREME COURT OF THE UNITED STATES:
  • CCNV v. Reid, 109 S.Ct, 2166 (1989) Successful affirmation (Copyright  Work For Hire)

APPELLATE COURTS:
  • Societe Civile Succession Richard Guino v. Beseder, Inc., et al., arguing before the 9th Circuit October 20, 2008.
  • Nelson Salabes, Inc. v. Morningside Holdings, et. al. 284 F.3d 505 (USCA 4th Cir. 2002) (Copyright Damages- Architectural works)
  • Staggers v. Real Authentic Sound, 77 F. Supp. 2d 57, 1999 U.S. Dist. LEXIS 19136 (D.D.C. 1999) (Music Copyrights)
  • Weschler v. Klank, 561 A.2d 1003 (D.C. App. 1989)  Successful affirmation (Consumer Protection  Auction House Liability-representing Bill Cosby)
  • Barry v. Donnelly, 781 F.2d 1041 (4th Cir. 1986)  Successful appeal (Equitable Estoppel) Ownership  rights in Artwork
  • Zitelman v. Metropolitan Insurance Agency, 482 A.2d 426 (D.C. App. 1984)  Successful appeal  (Civil Procedure  Summary Judgment)
  • Davis v. Davis, 417 A.2d 1008 (D.C. App. 1984)  Successful affirmation (Estates  Will Signing and Witnessing)
  • Spackman v. D.C. Department of Employment Services, et al., 590 A.2d 515 (D.C. App. 1991) (Labor Law  Employee vs. Independent Contractor status)

DISTRICT COURTS (selection of reported cases):
  • Aaron Young Fine Arts v. O’Brien, 244 F.R.D. 294 (U.S.D.C. MD 2007)
  • Pure Country Weavers v. Bristar, 410 F. Supp.2d 439 (USDC NDNC 2006)
  • Societe Civile Succession Richard Guino v. International Foundation for Anti-Cancer Drug Discovery, U.S.D.C. AZ 2:06-cv-1540; 460 F.Supp 2d 1105, 83 U.S. PQ 2d 1360 (D. Ariz, 2006)
  • Societe Civile Succession Richard Guino v. Beseder, Inc., et al., U.S.D.C. AZ 07-15582, 81 USPQ 2d 1260 (D. Ariz 2006)
  • Agence france Presse v. Google, 2005 WL 3174405
  • Getty Images News Services v. Department of Defense, 193 F. Supp 2d 112 (USDC DC 2002)
  • Agence France Presse v. Department of Defense, George Bush, Richard Cheney, et al, 762 F. Supp. 1558 (S. Dist. NY 1991) (First Amendment/Freedom of the Press)
  • United States of America v. Usama Bin Laden, 98 Cir 1023 (U.S.D.C.N.Y. 2001-) [First Amendment-Press Priviledge-Quash Subpoena]
  • Graffman v. John Doe, 1998 U.S. Dist. Lexis 1339 (DC SDNY) (Liability/Responsibility Art Collectors) Affirmed 2nd Cir. 1999.
  • Agence France Presse v. Department of Defense, George Bush, Richard Cheney, et al., 762 F. Supp. 1558 (S. Dist. NY 1991) (First Amendment/Freedom of the Press)
  • National Catholic Reporter Publishing Company v. Federal Bureau of Investigation  514 F. Supp. 1149 (D.C. 1981)  (Freedom Of Information Act)

Activities

For the past 18 years Joshua has been an adjunct professor at the Washington College of Law at American University where he has taught Entertainment Law and Art Law. He established two nonprofit organizations, the Volunteer Lawyers for the Arts, D.C. and the Society to Prevent Trade and Stolen Art. Joshua was a founding member of the D.C. Bar Sections on Art, Entertainment & Sports Law and Computer Law. He served on the Steering Committee of the Copyright Society of the United States (Washington, D.C. Chapter). He is General Counsel to the Art Copyright Coalition and international organization dedicated to the enforcement of the rights of the creative arts community.

Joshua sits on the boards of two nonprofits: the Jewish Foundation for Group Homes, one of the nation's preeminent organizations providing independent housing opportunities for disabled citizens; and Learning Matters an Emmy Award nominated and Peabody Award winning TV production company focusing on educational matters.