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Jay Monahan has been blazing trails in the Wild West that is Internet intellectual property law. After eight eventful years as the top intellectual property lawyer at eBay, his new horizon is a video-sharing startup called Vuze Inc. Monahan helped eBay create what, at the dawn of the millennium, was considered a cutting-edge program to root out copyright- and trademark-infringing products sold on the online auction site. He also helped lead the charge in the landmark eBay vs. MercExchangeU.S. Supreme Court case, which established that injunctions shouldn’t be issued because of patent infringement alone. As general counsel and the only lawyer at Vuze, the 48-year-old Monahan will again be on the cutting edge of technology and intellectual property law. “It is the intersection between law, entertainment and self-expression; and technology is evolving so quickly that the law can’t keep up with it,” Monahan, who joined Vuze in September, said recently. “To help navigate those waters for this company � it’s sort of the next frontier.” That’s not to say eBay had grown dull for its deputy general counsel and IP vice president. It still faces big challenges on the intellectual property front. A judgment is pending in a fight with Tiffany & Co., in which the luxury jewelry maker blames eBay for facilitating the sale of tens of thousands of fake Tiffany products. And then there’s the MercExchangecase where, in spite of the Supreme Court victory, a federal judge approved a $30 million judgment against eBay for patent infringement last week. (EBay plans to appeal.) Monahan said leaving unfinished business wasn’t easy. “I certainly like to see everything through to the end, and I do regret that I wasn’t able to see the Tiffany case through to trial,” he said. “But there’s never a point when there’s nothing going on.” Some may be happy to see Monahan go � especially the lawyers that have gone against him when eBay went after companies such as BidBay, CoinBay and Perfumebay for trademark infringement. Thomas Chan represents Perfumebay, which lost its case on appeal in the 9th U.S. Circuit Court of Appeals earlier this month. Chan, a Los Angeles lawyer, called eBay’s tactics “uber-aggressive.” “He was going after everyone who has bay in their name,” Chan said. “Why not go after Hudson Bay?” John Crittenden, a Cooley Godward Kronish partner who served as outside counsel for eBay on a number of the trademark cases, said Monahan’s move makes sense. “He’s a real pioneer � it’s like he had done so many things and really created some greatness over there, and, economically, I know he’s done well and he could’ve retired,” Crittenden said. “Now here’s an opportunity to be entrepreneurial.” A PIRATE-CATCHER’S LIFE Monahan started out on the other side of the IP range. Before joining eBay, he spent six years as the vice president of worldwide anti-piracy for Walt Disney Pictures & Television, protecting Disney trademarks when they showed up on random Web sites. Like eBay. Monahan called the young Web site in 1999 with copyright infringement concerns over a photo-copied script being auctioned off. He also asked whether the company was hiring, and became employee 209. IP insiders were surprised by the move. “Many people kind of viewed him as a pro-IP protectionist person that switched to the dark side,” said Neil Smith, a veteran IP lawyer at Sheppard Mullin Richter & Hampton in San Francisco. “But he did it with dignity, becoming a good spokesperson for eBay.” As the new IP vice president, Monahan helped eBay set up the Verified Rights Owner (VeRO) program so that intellectual property owners can easily report listings that infringe their rights, such as counterfeits. The program was embraced enthusiastically, but some have since soured on it. “In the sale of counterfeit goods, the clients have been disappointed in its effectiveness,” said Smith, who has represented companies against eBay. Other IP lawyers praise the program. David Bloch, a San Francisco Winston & Strawn lawyer, said that it saved him time � and his client considerable money � in policing pirated software. Bloch also commended Monahan and eBay for taking MercExchangeto the U.S. Supreme Court. The case, which made it harder for patent holders to get injunctions, not only changed the course of patent law, but was also pursued at no small cost to eBay. “They have been either pioneering or setting important precedents that obviously help eBay but also help the industry more broadly,” Bloch said. NEW FRONTIER Like YouTube, Vuze thrives on shared content, and so runs the risk of users posting copyrighted videos. But Monahan said he isn’t sitting back to wait for take-down notices from the movie companies. Instead, he said he’s taking a pro-active approach, looking for videos that might be infringing. He said he wants to implement a VeRO-type program at his new company. “I can certainly walk into every meeting with my head held high, in talking with people about how we’re going to protect their rights,” Monahan said. With the help of Vuze’s outside counsel, Wilson Sonsini Goodrich & Rosati, Monahan has been hammering out agreements with copyright holders such as movie studios, which provide about half of Vuze’s videos. At eBay, he would often turn to Cooley as well as Orrick Herrington & Sutcliffe and Skadden Arps Slate Meagher & Flom. While few have heard of his new company, located in Palo Alto, Calif., that’s OK with Monahan. After all, not that many people had heard of eBay back in 1999. This article originally appeared inThe Recorder , a publication of ALM. �

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