Our lawyers are in regular contact with Congress and the 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 limiting the liability of Internet service providers in the Digital Millennium Copyright Act (DMCA) and expanding the permission for digital distance education in the TEACH Act. They also have participated in many of the multi-industry efforts to develop technological approaches to content protection and digital rights management.

Our copyright litigation practice is diverse, in part encompassing traditional infringement litigation, in part growing out of our extensive involvement in the digital copyright policy and legislative arena, and in part related to music and sound recording licensing. For example, our litigators successfully represented Sirius Satellite Radio against the recording industry's efforts to obtain billions of dollars in performance rights fees, secured a $20 million jury verdict for willful infringement in favor of a client newsletter publisher, stopped the recording industry's misuse of a unique ex parte subpoena process in the DMCA and filed amicus briefs in the Supreme Court's Grokster case.

Copyright Infringement and Related Litigation

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

• Stopping the recording industry’s expansive use of a unique ex parte subpoena process contained in the DMCA on behalf of a leading Internet service provider (Verizon v. Recording Industry Association of America (RIAA). 
• 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.
• Defending Google against claims by Agence France Presse (AFP) that the Google News website infringed AFP copyrights in news headlines, story leads and photographs.
• Participating as amicus curiae on behalf of Internet service providers and consumer electronics manufacturers in several cases involving MP3 recordings and Internet file sharing, including the Grokster case in the Supreme Court and the Rio and Napster cases in the U.S. Court of Appeals, Ninth Circuit.
• Representing a group of large Internet companies in the U.S. Court of Appeals for the Fourth Circuit in CoStar v. LoopNet to preserve important long-standing defenses to infringement.
• Devising and implementing a campaign of enforcement using investigative orders on behalf of professional photographers facing routine and widespread infringement by photofinishers.  Each case resulted in a favorable decision or consent injunction and the campaign raised the entire industry’s consciousness.
• Defending a complex case involving alleged infringement of computer interface protocols used in connection with in-room hotel movie systems.

Music and Sound Recording Fee Litigation

The Copyright Practice is a leader in the representation of user interests in the litigation, arbitration and negotiation of license fees payable for musical work and sound recording public performances to organizations including the American Society of Composers, Authors, & Publishers (ASCAP), Broadcast Music, Incorporated (BMI), SESAC, Inc. and SoundExchange.  The firm has represented satellite radio broadcasters, radio broadcasters, wireless carriers, Internet audio and video service providers,  among others, in such fora as the Copyright Royalty Board, ASCAP Rate Court and BMI Rate Court.  Significant cases include:

• Representing Sirius Satellite Radio Inc. in litigation before the Copyright Royalty Board against the recording industry’s efforts to obtain royalties approaching $2 billion for the period from 2007-2012 (Determination of Rates and Terms for Preexisting Subscription Services and Satellite Digital Audio Radio Services, Dkt. No. 2006-1 CRB DSTRA).
• 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.
• Representing the radio industry in litigation before the Copyright Royalty Board to establish sound recording fees for simulcast Internet streaming (Digital Performance Right In Sound Recordings and Ephemeral Recordings, Dkt. No. 2005-1 CRB DTRA).
• Serving as lead counsel to the radio broadcasting industry in their appeal of Internet streaming fees for the period 1998-2002, and representing noncommercial broadcasters in their appeal of the fees for 2006-2010.
• Litigating before the ASCAP Rate Court in the Southern District of New York on behalf of a committee of approximately 400 radio stations seeking reasonable licenses.

Copyright and Content Protection Policy

Wiley Rein’s Copyright Practice has been at the forefront of legislative development in response to the digital environment.  The firm has played a central role in recent policy debates and has used that knowledge and experience in a wide range of litigation matters.

Wiley Rein has been involved in the major policy debates on a diverse array of copyright and content protection technology issues in the digital environment.  For example:

• The firm played a leading role in the negotiations and legislative debates that resulted in copyright liability limitations for Internet service providers enacted as part of the Digital Millennium Copyright Act (DMCA).  Our attorneys also participated on behalf of service providers in the 1996 diplomatic conference that resulted in new international treaties relating to copyright and content protection technology.
• The firm served as lead counsel to the higher education community in the legislative negotiations leading to the Technology, Education and Copyright Harmonization (TEACH) Act, which expanded copyright exemptions for non-profit digital distance education, and in connection with legislative efforts to create new rights related to databases.
• Starting with its role as lead counsel to the consumer electronics industry in the negotiations leading to the passage of the Audio Home Recording Act in 1992, the firm has been deeply involved in many of the multi-industry efforts to develop approaches to digital content protection.  For example, the firm participated actively on behalf of a major consumer electronics manufacturer in the Broadcast Protection Discussion Group, Analog Redistribution Discussion Group and DVD Copy Control Association for video content and in the Secure Digital Music Initiative for audio.
• The Copyright Practice represented major radio broadcasting and satellite radio interests in the negotiations leading to reform of the arbitration process that sets fees paid to record companies for digital performances of sound recordings.

Copyright policy will continue to evolve rapidly as the Copyright Office, Patent and Trademark Office and Congress attempt to resolve the multitude of new issues arising from the emergence of digital technologies and their use on the Internet.  Wiley Rein’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.

Digital Rights Management

Content Protection Background: 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 Digital Millennium Copyright Act of 1998 added stiff penalties for the circumvention of these technologies. 

Many of the technologies and applicable rules have been developed in connection with multi-industry fora by groups of companies with names that create a rich alphabet soup (e.g., DVDCCA, CPTWG, DTLA, HDCP).  In other cases, individual companies are marketing private solutions.  All of these technologies have come to be known by the term "digital rights management," or "DRM."

Content creators and content protection technology developers are not the only ones who must understand the new DRM world.  Consumer electronics, computer and communications device manufacturers whose devices are designed to handle digital content will find themselves subject to a confusing array of obligations that govern how their devices may operate, how they must be built, what input and output they may use and how that may limit their own intellectual property rights.

Legislative and Regulatory Activities: The firm’s involvement with DRM-related issues extends back to 1991 and 1992, when it served as lead counsel to the consumer electronics industry in the negotiations leading to the passage of the Audio Home Recording Act (AHRA).  That law included the first copyright-related technology mandate, the Serial Copy Management System.  Since the AHRA, Wiley Rein has been at or near the center of every legislative debate involving DRM technology.  The firm’s experience includes: 

• Digital Video Recording Act (DVRA) — Representing the consumer electronics industry in negotiations with the motion picture industry over the DVRA, which ultimately failed in the face of computer industry objections. 
• Digital Millennium Copyright Act (DMCA) — Advising clients and participating in inter-industry negotiations in connection with the DMCA. That act added the statutory protection for technological protection measures that provides the legal foundation on which DRM protection is based.

The firm was actively involved on behalf of a major consumer electronics company and technology proponent in the proceedings at the Federal Communications Commission (FCC), seeking to implement the digital television “broadcast flag.”  That work involved the drafting and negotiation of content-protection technology license agreements and extensive examination and evaluation of the agreements proposed by other technology proponents.  The firm also was actively involved in the FCC’s Notice of Inquiry and legislative activities concerning an audio broadcast flag for digital and satellite radio.

Inter-Industry Activities: The Copy Protection Technical Working Group (CPTWG) was created in 1996 following the demise of the DVRA as a forum for the development of voluntary content protection standards.  Wiley Rein attorneys participated in many of the early CPTWG meetings on behalf of a leading trade association. 

Since then, the firm has been involved in many of the inter-industry activities related to content protection technology.  Some of our work includes: 

• Participating in the CPTWG on behalf of a major consumer electronics manufacturer.
• Representing a major consumer electronics manufacturer and technology proponent in the recording industry’s Secure Digital Music Initiative (SDMI), coordinating the client’s SDMI team and advancing its goals in multiple working groups and the SDMI Plenary, and developing the licenses by which the client’s technology was offered.
• Participating in the Broadcast Protection Discussion Group of CPTWG, as it considered the Digital Television (DTV) broadcast flag, and in the Analog Reconversion Discussion Group, which examined approaches to closing the “analog hole.”
• Representing a client in the Copy Protection Advisory Council of the DVD Copy Control Association and participating in the development of a proposal and licenses for watermarking technology.

Contact Us

Bruce G. Joseph
202.719.7258 | bjoseph@wileyrein.com