Notable Representations, Key Contacts
Weil named Copyright “Firm of the Year” - United States
Managing Intellectual Property 2019
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 has successfully represented Alibaba Group, a China-based provider of e-commerce websites, in a number of copyright and trademark infringement lawsuits, including in significant cases defining the limits of trademark law, particularly the potential secondary liability of e-commerce-enabling platforms.
Weil represented Alibaba in a major trademark infringement lawsuit commenced by a group of luxury brand owners, including Gucci, Bottega Veneta, and Yves Saint Laurent, in the S.D.N.Y. Plaintiffs alleged, among other things, that Alibaba and its affiliates made 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 asserted 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. In August 2017, the parties announced that they had settled the case and had entered into “a ground-breaking agreement to cooperate in their efforts to protect intellectual property and take joint enforcement actions online and offline against infringers.”
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, Utah, and California, among others.
For more than a decade, Weil has partnered with eBay to help it and its affiliates navigate significant and complex trademark, IP, and other issues relating to its e-commerce platform.
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.
Weil successfully negotiated a global settlement on behalf of eBay Inc. in a series of longstanding copyright infringement disputes in California federal court with a photographer who has sought to hold eBay liable for allegedly infringing photos offered by third party sellers. Prior to settlement, Weil twice secured summary judgment on behalf of eBay. First, in January 2015, a California federal judge granted eBay’s motion for summary judgment, ruling that the Digital Millennium Copyright Act safe harbor provisions protect eBay from liability for sales of photos by third-party sellers where eBay promptly takes down the listing after it is notified, and that the fair use and first sale doctrines preclude liability for the display of photos in back issues of magazines in connection with listings offering copies of the back issues for sale. After the plaintiff appealed to the Ninth Circuit, which vacated one narrow aspect of the 2015 judgment, the parties engaged in limited additional discovery, and in January 2018 the Court again granted eBay’s motion for summary judgment. The parties negotiated a settlement as plaintiff’s appeal was pending before the Ninth Circuit.
Weil also has successfully represented eBay in negotiating the resolution, prior to motion practice, of a number of other copyright and trademark infringement actions in courts around the country. Of late, we have carried out this role in cases in federal courts in California, New York, and North Carolina, and recently settled a trademark infringement action brought in Colorado federal court by a manufacturer of high-end hunting and utility knives.
For more than 10 years, Weil has worked with in-house lawyers at Facebook and its Instagram, Oculus, and WhatsApp subsidiaries on all manner of IP-related issues: complex and cutting-edge copyright and trademark issues, product development, safe-harbor (DMCA/CDA) protections, global notice-and-takedown disputes, and music licensing requirements. In addition, we help coordinate global IP advice for Facebook and craft its constantly evolving trademark and copyright policies and notifications. We also worked closely with Facebook’s music team as the company rolled out its global music licensing initiative and entered into agreements with music publishers and record companies around the world. Weil also has represented Facebook in IP-related litigation in courts around the United States, including successfully resolving a number of copyright and trademark disputes on a confidential basis before formal proceedings commenced in court.
Weil secured a summary judgment for Getty Images in a massive copyright infringement action involving more than 47,000 photographs in the U.S. District Court for the Southern District of New York. Plaintiffs, including another photo licensing agency called Zuma Press, and a number of individual photographers, filed suit in 2016 claiming that Getty Images did not perform proper due diligence into the ownership of certain photographs that Getty was offering for licenses, and had negotiated licensing fees without having proper ownership of the photos. Weil initially prevailed for Getty early in the litigation, including securing the dismissal of all but two of the original six claims and successfully defeating an attempt by plaintiffs to add 27 additional photographers as plaintiffs in the action. Just over a week after oral arguments on the summary judgment briefing, the Court granted Getty Images’ motion in full notably holding that “Zuma has nobody to blame but itself for how Getty came to possess these images.” The Court also found that the undisputed record showed that Getty Images lacked any intent to infringe and dismissed the case in its entirety.
Weil also represented Getty Images, as a co-defendant with the National Football League and the Associated Press, in a copyright infringement lawsuit brought by a group of sports photographers in New York federal court. The lawsuit alleged that the NFL, AP and Getty Images used or approved of uses of their photographs in violation of various contracts and in violation of the antitrust laws. The court granted Getty Images’ motion to compel arbitration, thereby dismissing the case against Getty with leave to renew after the completion of the arbitration. Following mediation, the claims against Getty were resolved and the claims against Getty were dismissed with prejudice.
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 alleged 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. Ruling on the parties’ motions for summary judgment, the court agreed with HarperCollins and held that George’s 1971 contract with HarperCollins granted the exclusive right to license electronic publications to HarperCollins, 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.
Weil continues to represent S&P Global in a variety of index IP related matters.
In October 2018, Weil won a second consecutive victory before the Eleventh Circuit for clients Oxford University Press, Cambridge University Press, and SAGE Publications in a high-profile copyright infringement dispute with Georgia State University involving the contours of the fair use doctrine in the academic setting. The dispute concerns GSU’s practice of electronically distributing digital excerpts of copyrighted works to students without securing license permission from the publishers of those materials. In its unanimous opinion, the appellate court vacated in substantive part the lower court’s determination that, with respect to 31 of the 48 works at issue, GSU’s unauthorized exploitation of those works was protected by the fair use doctrine. The appellate court also vacated the lower court’s award of attorneys’ fees to GSU, and it remanded the case for further proceedings consistent with its opinion. Earlier, in October 2014, the Eleventh Circuit ruled that the district court had used “legally flawed methodology” in applying the fair use doctrine in its May 2012 ruling following a bench trial, and that GSU’s sovereign immunity doctrine argument had not been properly raised on appeal and sent the case back to district court. In March 2016 the district court issued a remand ruling that essentially reinstalled the court’s prior findings, which Weil again appealed, resulting in the most recent victory.
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 completed a five-week trial in April 2017 and subsequently submitted thousands of pages of post-trial briefing. The CRB issued its initial determination in January 2018, granting a gradual royalty increase of less than five percent over five years. In March 2019, Pandora, along with streaming services Spotify, Amazon, and Google, filed an appeal challenging the rate increase in the D.C. Circuit.
- Weil also defended 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.
- Weil represented Pandora in Web IV, 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 also successfully represented Pandora Media in litigation in the C.D. Cal. filed by the heirs of a famous songwriter, Harold Arlen, for failing to clear proper music licenses. Weil was able to achieve a highly favourable settlement on behalf of Pandora, leading to its dismissal from the case.
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:
- Weil represented Sirius XM in adverse to SoundExchange (representing a consortium of record companies) in CRB proceedings setting rates for the 2007-2012 period, the 2013-2017 period, and most recently, for the 2018-2022 period. Weil successfully represented Sirius XM in the appeals of the decisions covering the earlier two periods before the Court of Appeals for the D.C. Circuit (the most recent proceeding has not yet been appealed).
- Weil has been retained by Sirius XM (and its Pandora subsidiary) in the Web V proceeding before the Copyright Royalty Board. That proceeding will determine the rates to be paid by non-interactive (i.e., radio-style) webcasters to the recorded music industry for the rights to publicly perform copyrighted sound recordings and to make ephemeral copies of those recordings over the 2021-2025 period.
- Weil also defended 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 purportedly resulting from: (i) Sirius XM’s performances of sound recordings made before 1972, even though they are not covered by the statutory license; and (ii) Sirius XM’s “Premier” news and sports channels that make only incidental use of sound recordings covered by the statutory license. 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. In June 2018, the parties entered into a settlement.
Through path-breaking litigation, Weil, on behalf of the local broadcast television industry, severed industry payments to PROs from the revenues earned by that industry, and 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 also represented the Television Music License Committee, an industry trade association, in 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.
Weil “thinks outside the box and pursues strategies that many others do not see” and combines “first chair trial counsel” with “authoritative expertise” in the trademark arena.
World Trademark Review 2020
Weil is totally dependable when mission-critical patent and trademark disputes arise; displaying commitment, tenacity and supreme trial skills at every turn[.]”
World Trademark Review 2019
Ranked among the top 3 firms in Band 1 in New York for Media & Entertainment: Litigation.
Chambers USA 2019
Clients say: “They’re outstanding. The key thing is they are thorough. If I need someone to think of a case from any possible line of attack and angle, this is the firm I’d go to.”
Chambers USA 2019
Clients call us “true experts in the field” and 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 2015 - 2019
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: Litigation.
Legal 500 US 2019
Weil is “one of the premier copyright litigation practices in the U.S.”
Legal 500 US 2019
Experts in both legal and business issues,” Weil’s team is “noted for its ability to work ‘seamlessly’ with in-house legal departments,” while market commentators call us “extremely responsive, cutting-edge and highly experienced” and a “top-notch name in the music space” and note our “strong trial expertise and experience in bet-the-company matters.”
Legal 500 US 2018