Notable Representations, Key Contacts
This evolution is especially significant in the media and entertainment industries, driving legal disputes that are redefining the boundaries of antitrust, copyright, trademark, misappropriation, false advertising/Lanham Act, First Amendment, and commercial litigation issues. These developments affect all types of media companies – established and new – as well as numerous other content providers and hosts serving global businesses and consumers.
Against that backdrop, our IP/Media practice has developed an industry-wide reputation and record of success in a number of cutting-edge areas:
- Defense of Cutting-Edge Secondary Liability, Vicarious Liability, and Contributory Liability Claims. These claims collectively represent an increasingly deployed legal tool whereby intellectual property owners are attempting to impose liability on other parties that have indirect involvement in transactions involving claimed counterfeit or infringing content (e.g., web-based e-commerce platforms that allow users to sell products to other users). Our attorneys are experienced in handling these cutting-edge issues.
- Disputes between Content Distributors and Content Providers. As traditional media distribution platforms such as cable and broadcast television adapt to increased competition from web-based and other digital distribution platforms, as well as to new high-definition content, there has been an avalanche of litigation between content providers (like television networks) and content distributors (like cable and broadband providers) relating to the rights to distribute this content. Our practice has long been at the forefront of such disputes.
- Copyright Music Licensing Disputes. Weil has built an extensive music copyright practice, which counts Pandora Media, Sirius XM Radio Inc., ABC, NBC, CBS, DMX, Inc., the local broadcast radio industry, the local broadcast television industry, dozens of cable networks, and a host of Internet-based music users as clients. We have put an indelible stamp on music IP law that has defined – and is still shaping – the digital era through a series of precedent-setting licensing litigations and other proceedings involving the application of established legal doctrines to novel environments, whether they be television and radio broadcasts or wireless transmissions.
Weil regularly counsels leading companies and organizations around the world on a wide variety of IP issues ranging from IP enforcement and brand protection to cutting-edge contributory liability issues to advertising and privacy/data protection issues – including in the transactional context.
From leading social media companies to major entertainment companies to international financial services companies, clients turn to Weil to manage myriad intellectual property and related issues in the context of counseling and transactions, as well as prior to disputes and formal litigation. Our capabilities include a deep expertise in:
- IP matters arising in mergers, acquisitions, spin-offs, and other global corporate transactions
- False advertising/Lanham Act claims
- Representations in investigations before federal and state regulators
- Trade Secret Protection and Restrictive Covenants
- Bring Your Own Device to Work (BYOD) Policies and Related Social Media Issues
- Digital Millennium Copyright Act (DMCA) safe harbors and compliance requirements
- Development of terms of service, fair use, and infringement risks (both direct and secondary)
- Defenses associated with the clients’ service offerings and product development initiatives
- Cutting-edge secondary liability issues, including contributory and vicarious infringement issues
- Trademark and copyright licensing requirements
- Trademark strategy, enforcement, and, when necessary, litigation
- Music licensing
Weil was retained by Alibaba Group, a China-based provider of e-commerce websites, to defend it and several of its affiliates in a major trademark infringement lawsuit commenced by a group of luxury brand owners, including Gucci, Bottega Veneta, and Yves Saint Laurent, in the Southern District of New York. Plaintiffs allege, among other things, that Alibaba and its affiliates make it possible for “an army of counterfeiters” to sell counterfeit versions of plaintiffs’ brand-name products on Alibaba’s platforms, including to purchasers in the United States. They assert claims for trademark infringement, trademark counterfeiting, contributory trademark infringement and counterfeiting, false representation, trademark dilution, and violations of the RICO statute as well as various claims under New York law. We are defending against all of those claims, which Alibaba believes to be meritless. In August 2016 the district court granted Alibaba’s motion to dismiss the RICO claims in the S.D.N.Y. action on the ground that the plaintiffs had failed to allege a RICO enterprise. The parties are engaged in discovery relating to the remaining claims.
Weil has been retained by Alibaba to represent it in connection with similar actions either brought or threatened by brand owners in a number of jurisdictions, including Arizona, Florida, and California, among others.
Weil defended eBay against a suit in which Tiffany & Co. had claimed that eBay was responsible for policing counterfeit merchandise offered on its marketplace site. Weil represented eBay – through trial, on appeal, and through the denial of Tiffany’s petition for a writ of certiorari with the Supreme Court. The ruling for eBay is seen as establishing landmark precedent on secondary trademark liability for Internet intermediaries and vindicates eBay’s position, which is that in its role as an e-commerce transaction intermediary, it cannot be solely or principally responsible for the provenance or authenticity of merchandise offered on the site.
Weil also represented eBay in defense of a trademark infringement lawsuit brought by Wimo Labs, Inc. in federal district court in California. Plaintiff alleged eBay violated the Lanham and RICO Acts by permitting the sale of allegedly counterfeit versions of plaintiff’s phone cases on eBay’s online marketplace. In January 2016, the court granted eBay motion to dismiss the plaintiff’s RICO allegations for failure to state a claim. Following fact discovery, which revealed that eBay had in fact been diligent in removing the plaintiff’s reported instances of potential trademark infringement, the parties mediated and Weil negotiated a favorable settlement of all claims against eBay in June 2017.
Weil serves as Facebook’s lead U.S. IP counsel, counseling Facebook, as well as its Instagram, WhatsApp, and Oculus divisions, on all non-patent IP-related issues on a daily basis, including complex and cutting-edge copyright and trademark issues, product development, global DMCA notice-and-takedown issues, and music licensing issues. In addition, we help coordinate global IP advice for Facebook and craft their constantly-evolving trademark and copyright policies and notifications. Recently, Weil represented Instagram in a copyright infringement action in federal court in California (Reilly v. Instagram) by a fine art photographer alleging that Instagram users copied and displayed her copyrighted images on Instagram’s social media platform without authorization. Just two months after plaintiff filed her complaint, Weil successfully convinced her to stipulate to a dismissal of all claims.
Weil secured a complete victory for HarperCollins in a copyright infringement action against e-book publisher Open Road Integrated Media relating to the e-book rights to Jean Craighead George’s 1972 children’s book, Julie and the Wolves. HarperCollins alleges that it had obtained the exclusive right to license third parties to publish e-book versions of the award-winning children’s novel, and that Open Road had violated HarperCollins’ rights in that work by publishing such an e-book without HarperCollins’ authorization. George had contracted with HarperCollins in 1971, granting the exclusive right to publish her novel “in book form”; the agreement also granted HarperCollins certain subsidiary rights to the novel, including the exclusive right to license third parties to use the work “in storage and retrieval and information systems, and/or whether through computer, computer-stored, mechanical, or other electronic means now known or hereafter invented.” Open Road contended that this language did not convey e-book rights to HarperCollins. Ruling on the parties’ motions for summary judgment, the court agreed with HarperCollins and held that the language of the contract was clear on its face, and that the 1971 contract granted to HarperCollins the exclusive right to license electronic publications, which Open Road had infringed in its unlicensed e-book publication of Julie of the Wolves. The court found that although the 1971 agreement did not expressly address e-book rights, which were yet to be developed, the clear language of the contract was sufficiently broad to encompass those rights, finding that the contract “encompassing as it does the forward-looking reference to technologies ... is sufficiently broad to draw within its ambit e-book publication.”
Weil represents Pandora Media, the largest single webcaster in the United States, in a number of high-profile disputes with parties in the recorded music and music publishing industries.
- Weil is representing Pandora in Phonorecords III, a CRB proceeding adverse to the National Music Publishers Association (NMPA) and the Nashville Songwriters Association International (NSAI) that will determine royalty rates for the on-demand streaming of musical works for the years 2018-2022.
- Weil is also defending Pandora in connection with two copyright class actions filed in the S.D.N.Y. arising out of Pandora’s alleged unlicensed streaming of sound recordings created prior to February 15, 1972, as well as in connection with amicus submissions on this issue in various appellate courts around the country.
- In April 2015, Weil represented Pandora in CRB trial proceedings against SoundExchange that established rates for the use of recorded music by webcasters over a five-year period starting January 1, 2016. In December 2015, the CRB issued a favorable ruling that modestly increased current royalty rates – aligning closely with Pandora’s proposed rates – instead of awarding plaintiffs’ sought after fees that would have increased Pandora’s royalty rate by nearly 80% in the first year and escalated it even further thereafter, implicating billions of dollars in royalties. SoundExchange then appealed to the D.C. Circuit, which in September 2018, sustained every aspect of the CRB’s determination.
Weil has represented Sirius XM Radio in a variety of major disputes around the country, many involving SoundExchange Inc., a copyright collective that represents record labels and recording artists:
- Copyright Royalty Board Trial: Weil represents Sirius XM in a music royalty rate-setting proceeding before the Copyright Royalty Board (CRB) adverse to SoundExchange (representing a consortium of record companies), Warner Music Group, Universal Music Group, Sony Music Entertainment, the Recording Industry Association of America, and several other music industry trade associations. The CRB will determine the rates and terms for royalty payments due from Sirius XM to the recorded music industry between 2018 and 2022 for the digital transmission of sound recordings via Sirius XM’s satellite radio service. In 2008 and 2012, Weil obtained trial victories for Sirius XM before the Copyright Royalty Board in connection with similar proceedings affecting the 2007-2012 and 2013-2017 license periods, and defended those victories successfully before the Court of Appeals for the D.C. Circuit.
- Antitrust Litigation: Weil has been defending Sirius XM in an action brought by SoundExchange seeking payment of additional royalties for the digital transmission of sound recordings via Sirius XM’s satellite radio and webcasting services for the years 2007-2012 – above and beyond what Sirius XM has already paid for that reporting period. SoundExchange initially sued Sirius XM in the U.S. District Court for the District of Columbia, alleging that (among other things) Sirius XM owed hundreds of millions of dollars in additional royalty payments and interest. Sirius XM successfully moved to have the matter referred to the CRB, under the doctrine of primary jurisdiction, so the CRB could apply its expertise to interpret the meaning of its regulations. Once before the CRB, Sirius XM also successfully deflected SoundExchange’s threshold challenges to the CRB’s authority to accept the primary jurisdiction referral and its jurisdiction to interpret its regulations setting rates and terms for prior reporting periods. After additional discovery and briefing, the CRB released a September 2017 opinion agreeing with Sirius XM that it was entitled to reduce its royalty payments on account of performances of pre-1972 recordings – a holding that will save Sirius XM well over $100 million in back royalties and interest if the district court (to which the case will now return) affirms that Sirius XM’s method for calculating the pre-72 reduction was reasonably implemented, as is expected.
Weil, on behalf of the local broadcast television industry, has, through path-breaking litigation, severed industry payments to PROs from the revenues earned by that industry, and has obtained novel alternative forms of license, through which broadcasters (and now myriad other users) can more closely align the fees paid for licensing musical works with their competitive market value. These alternative forms of license consist of a “per-program” license and an “adjustable fee” blanket license – both of which facilitate the direct licensing of individual musical works without the user incurring a double payment penalty.Weil represented the Television Music License Committee, an industry trade association, in upcoming rate arbitrations with SESAC in October/November 2016 to determine license fees and terms for the local television industry for 2016-2019. These arbitrations are part of a class action settlement in which a series of rolling rate arbitrations will decide license fees and terms through 2035.
The multi-million dollar settlement, which was approved in February 2015, marked the culmination of an antitrust class action lawsuit brought by groups of Meredith, Scripps, and Hoak local television stations challenging SESAC’s licensing practices. The Television Music License Committee funded this lawsuit on behalf of a putative nationwide class of local television broadcasters. The plaintiffs alleged that SESAC wielded its monopoly power over the copyrighted works it licenses to extract supra-competitive fees, and denied television licensees any meaningful option to an all-or-nothing blanket license. SESAC will be bound through 2035 by some of the core conduct restrictions that constrain ASCAP and BMI, the other two performing rights organizations. The settlement also provides monetary relief, with SESAC paying $58.5 million into a settlement fund. The settlement marks the first time in more than 50 years that an entity obtained licensing conduct relief through a private antitrust action against a Performing Rights Organization.
Ranked among the top 3 firms in Band 1 in New York for Media & Entertainment Litigation and considered a “particularly strong choice for intellectual property disputes including contentious music royalty rate-setting proceedings, alongside strengths in disputes concerning the ownership, distribution and licensing of content.”
Chambers USA 2018
Experts in both legal and business issues,” Weil’s team is “noted for its ability to work ‘seamlessly’ with in-house legal departments.”
Legal 500 US 2018
Clients note that Weil “brings a depth of experience and a strategic component that is unmatched” and has “proven themselves to be an excellent resource across the board…They not only have a great understanding of the law, but also how the companies work and their risk level tolerance. That understanding of clients makes a world of difference.”
Chambers USA 2018
This international powerhouse handles a significant amount of work in the overlap between IP and media…” and “maintains its position at the cutting edge of media issues” by acting “for an enviable list of top media clients.” Clients call us “true experts in the field,” and highlight our “practical, knowledgeable and well-staffed” practice.
Chambers USA 2015
Weil has long been recognized as a top-ranked Tier 1 firm for Intellectual Property, Copyright and a “Leading” firm for both Intellectual Property, Trademarks: Litigation and Media and Entertainment, with market commentators calling us “extremely responsive, cutting-edge and highly experienced” and a “top-notch name in the music space” and noting our “strong trial expertise and experience in bet-the-company matters.”
Legal 500 US 2018