The firm’s Copyright Practice has broad experience in copyright and content protection technology; copyright litigation; and software, music, and sound recording litigation and licensing. Recognized in numerous rankings, including the 2018 “Best Law Firms” rankings published annually by U.S. News & World Report, the Copyright Practice has been praised as among the best in the country by The Legal 500, which has noted that the firm “provides ‘superior service’ in the copyright law space” (2011) as well as “a hard-to-find combination of technical knowledge and practical legal advice,” and is recognized for expertise “relating to online and emerging technology” (2012). The quality and diversity of the Practice has garnered recognition from Chambers USA, where the Group has been ranked among the directory’s leading Trademark, Copyright & Trade Secrets practices in Washington, DC. Chambers commends the Practice for its “considerable litigation experience...coupled with technical excellence” (2012), and sources tell the directory that the Group’s attorneys “display sound commercial sense” (2013).

Copyright Infringement Enforcement and Litigation

  • Obtaining appellate court ruling on behalf of a major entertainment company that “willful blindness” to infringement is knowledge of infringement and that the “right and ability to control” infringing activity does not require knowledge of infringement under the DMCA safe harbor, 17 U.S.C. § 512(c).
  • Developing and implementing intellectual property enforcement campaigns for consumer product and luxury goods manufacturers – which involves filing numerous federal district actions across the country based on claims of copyright infringement and related IP, tort, and computer fraud claims.
  • Obtaining a judgment in the maximum amount of available “statutory damages” against a website operator for unauthorized “scraping” and replication of our client’s website. 
  • Obtaining dismissal of a suit against a major entertainment company for alleged knowing misrepresentations in takedown notices under the DMCA, 17 U.S.C. § 512(f).
  • Obtaining broad injunctive relief on behalf of a publisher client to disable sites and services used for unauthorized distribution of publications.
  • Obtaining a jury verdict of willful infringement and an award of "statutory damages” in the amount of almost $20 million in favor of our publisher client for repeated intranet and email infringement of its financial newsletter by a major brokerage house and engaging in ongoing enforcement of the copyright rights of newsletter publisher clients.
  • Conducting software audits on behalf of software copyright owners.
  • Advising third-party payment processors, Internet service providers (ISPs), and technical service providers regarding compliance with injunction orders, subpoenas, and Digital Millennium Copyright Act (DMCA) takedown requests, as well as pirate practices and tendencies for host and domain name “hopping”.
  • Defending radio stations, political associations, and other media and technology clients accused of infringing copyrighted works.
  • Advising clients regarding anti-circumvention provisions of the DMCA, 17 U.S.C. § 1201.

Copyright Policy, Legislative and Regulatory Activities

Our lawyers are in regular contact with the U.S. Copyright Office and have been at the center of the major digital technology and copyright policy debates, among other things – playing a leading role in negotiations leading to legislation, and subsequent policy studies, regarding the liability of ISPs under the DMCA. They also have participated in many of the multi-industry efforts to develop technological approaches to content protection and digital rights management.

Copyright policy will continue to evolve rapidly as the U.S. Copyright Office, the U.S. Patent and Trademark Office (USPTO), and Congress attempt to resolve the multitude of new issues arising from the emergence of digital technologies and their use on the Internet. Wiley’s Copyright Practice is uniquely positioned to assist clients likely to be affected by these debates, which will have a profound effect on the rights of all owners and users of copyrighted works.

Representative experience includes:

  • Preparing comments for submission to the Copyright Office as part of the Office’s Section 512 Study on behalf of numerous organizations whose members create and disseminate a wide variety of copyrighted musical compositions and sound recordings.
  • Preparing comments for submission to the Copyright Office on behalf of a wide range of organizations including the National Association of Manufacturers, CTIA, and USTelecom.
  • Filing arguments against proposed exemptions to the DMCA’s anti-circumvention provisions as part of the Copyright Office’s triennial rulemakings under Section 1201 of the DMCA.
  • Drafting a Fourth Circuit amicus brief for USTelecom in an appeal of BMG v. Cox Communications.

Copyright Counseling and Registration

  • Providing copyright counseling, registration, clearance, and protection.
  • Expedited processing of applications for registration of a claim to copyright, or for the recordation of a document pertaining to copyright.
  • Determining the availability of a title, satisfying Errors and Omissions insurance requirements, and identifying litigation risks.
  • Providing opinions on copyrightability, fair use, infringement, ownership and title, notice, security interests, and foreign protection.
  • Efficient and consistent strategic group registration to take advantage of statutory damages.

Representative experience includes:

  • Licensing, opposition, and transfer of copyrights related to fabric design, and talent and production agreements.
  • Advising on copyright issues arising from labeling for hazardous substances and children’s products, Flammable Fabrics Act and Poison Prevention Packaging Act requirements, California and other state regulations, the implications of various U.S. Department of Energy efficiency and international consensus standards, and transportation safety regulatory requirements.
  • Evaluating computer software architectures, and instruction sets for copyright issues.
  • Counseling clients regarding intellectual property issues associated with the use of open source software.

Copyright Transactions

Our attorneys regularly assist clients in the creation, acquisition, protection, and commercialization of intellectual property, through licensing and acquisition. Our attorneys have significant knowledge of the diverse and unique needs of both established and emerging IP, digital, and new media companies, and regularly provide comprehensive transactional and counseling advice concerning copyrights, including related registration and licensing services. We develop licensing plans that maximize near-term sales, create recurring revenue models, mitigate risks, and expedite the ability to act when potential customers and partnerships present themselves. We represent varied owner and user interests in the licensing of diverse IP portfolios, including content, computer software, electronics technology, databases, biotechnology, certification marks, trademarks, and various trade secret technologies. In particular, we advise on a wide variety of IP matters related to the Internet and other new media – including webcasting, streaming, digital imaging, and the ownership and use of copyrights, trademarks, patents, and trade secrets.

Our services include: 

  • Joint-development agreements, assignments, rights clearance, and distribution agreements
  • Content licensing and content ownership agreements
  • Negotiation and preparation of Software License Agreements
  • Enterprise Licenses (seat, CPU, other)
  • SaaS/PaaS
  • Software and Mobile Tech Licensing
  • End User Licenses
  • Development Licenses
  • Open Source Policy/Evaluation
  • Source Code Licenses
  • Escrow Agreement & Release Terms
  • Maintenance/Support/Upgrade Agreements
  • Service Level Agreements
  • Data and Storage
  • Termination Structures
  • IP Indemnities
  • Web Development Agreements
  • ASP & Hosting Agreements

Our licensing and distribution experience includes the following types of matters:

  • Negotiating numerous data use agreements on behalf of a broadcast media client, including with Barons, CNN, AccuWeather, and the Associated Press (AP).
  • Negotiating Windows Digital Rights Management (DRM) agreement on behalf of a national telecommunications carrier client and Microsoft.

Royalty and Rate Issues

The firm has extensive experience in sound recording license fee litigation before the Copyright Royalty Board (CRB) and its predecessor Copyright Arbitration Royalty Panels (CARPs). These proceedings raise issues similar to those that arise in music performance rights fee disputes, most notably, attempting to ascertain the fees that would exist in an effectively competitive market using benchmarks and other methods of analysis. 

Highlights include: 

  • Serving as litigation counsel for the radio industry (on behalf of the National Association of Broadcasters) in the recently completed Web IV proceeding before the CRB to set sound recording simulcasting license fee rates for 2016 through 2020.
  • Serving as litigation counsel for all participating radio groups in the fully-litigated Web II case before the CRB that set sound recording simulcasting license fees for 2006 through 2010.
  • Serving as litigation counsel for Clear Channel Communications, Salem Communications, and the NRB Music License Committee in the fully-litigated Web I case before a CARP that set sound recording simulcasting license fees for 1998 through 2005.
  • Representing Sirius Satellite Radio Inc. in litigation before the CRB against the recording industry’s efforts to obtain royalties approaching $2 billion for the period from 2007-2012.
  • In Web I, Web IV, and SDARS I, we presented fully developed economic cases, backed by expert analysis and testimony.
  • Representing Verizon Wireless and Ericsson before the ASCAP Rate Court in the Southern District of New York in litigation over royalties applicable to wireless music performances and obtaining summary judgment that wireless carriers do not require a public performance license for the download or ringing of ringtones, and a favorable settlement on the fees payable for mobile video and ringback tones.
  • Reporting requirements for music.
  • Representing the radio industry in litigation before the CRB to establish sound recording fees for simulcast Internet streaming.
  • The firm successfully represented the National Association of Broadcasters (NAB), CTIA-The Wireless Association, and Verizon in opposition to a rule proposed by the U.S. Copyright Office that would have required services making streamed performances of music to pay a royalty under the copyright distribution right in addition to royalties already paid under the public performance right. 
  • Music Licensing.

Statutory Cable Licenses

The firm also advises clients with respect to statutory copyright licensing issues relating to cable and satellite carriage or broadcast signals, as well as online streaming issues. Among other things, we assist clients with filings with the Copyright Office and Copyright Royalty Board, and with obtaining and complying with the licenses needed to broadcast or stream musical works, including those from SESAC, ASCAP, BMI, and Sound Exchange.

  • Gray market fraud
  • Major account fraud
  • Subscriber credential and account misuse
  • Cable retransmission of content
  • Illegal streaming/retransmission of content over the Internet

Internet and Social Media

The advent of digital media and the Internet have increased the desire of content producers and distributors to find means of protecting their works against unauthorized mass distribution and other forms of infringement beyond the protection provided by copyright law. Content owners have primarily turned to technologies that encrypt the content and carry rules authorizing certain uses. They have also adopted methods of marking unencrypted content to carry similar usage rules. The rules are enforced either by legislation, regulation, or complex webs of interrelated licenses. The DMCA added substantial penalties for the circumvention of these technologies.

Internet- and technology-related litigation is a specialty of the firm. Our attorneys have extensive experience in technology-based infringement litigation, representing copyright owners, alleged infringers, and intermediary technology providers. The Copyright Practice has represented major movie and television studios, Internet service providers and other Internet companies, newsletter publishers, satellite radio broadcasters, universities, consumer electronics manufacturers, and computer hardware and software developers in cases involving digital use and infringement of copyrighted works.

Contact Us

Richard W. Smith
202.719.7468 | rwsmith@wiley.law

David E. Weslow
202.719.7525 | dweslow@wiley.law 

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