The firm’s Copyright Practice is led by Bruce G. Joseph, who has been named one of the DC region’s 10 “Leading Intellectual Property Lawyers” in the areas of Copyright and Trademark by Legal Times; a “Leading Lawyer for Business” by Chambers USA in Trademark, Copyright & Trade Secrets; one of “Washington's Top Lawyers” by Washingtonian magazine; a “Recommended Lawyer” by The Legal 500 US; one of DC's “Super Lawyers” by Super Lawyers magazine; and one of Lawdragon’s “Leading Lawyers in America." Chambers USA calls Mr. Joseph “a renowned specialist in copyright protection and litigation matters” (2013), “one of the USA’s foremost experts in copyright protection” (2012), and “an utterly phenomenal litigator” (2010); he also was identified as “the finest IP lawyer” one source had worked with (2011). The Legal 500 US described Mr. Joseph as an “excellent litigator” whose “negotiation abilities are superior” (2011) and as “one of the premier copyright lawyers in the USA” (2012).
The Copyright Practice has broad experience in copyright and content protection (digital rights management) technology, copyright litigation, and music and sound recording licensing. Ranked again in 2013, The Legal 500 US praises the Practice as among the best in the country, noting that the firm "provides 'superior service' in the copyright law space" (2011) and "a hard-to-find combination of technical knowledge and practical legal advice" (2012). The quality and diversity of the Practice has garnered recognition from Chambers USA, where the Group is 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).
Our lawyers are in regular contact with Congress and 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 limiting the liability of Internet service providers in the Digital Millennium Copyright Act (DMCA) and expanding the permission for digital distance education in the Technology, Education and Copyright Harmonization (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, obtained a summary judgment ruling that the distribution of ringtones does not require wireless carriers to obtain public performance licenses, 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 | Music and Sound Recording Fee Litigation | Copyright and Content Protection Policy | Digital Rights Management | Contact Us
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 and engaging in ongoing enforcement of the copyright rights of newsletter publisher clients.
- Defending Google against claims by Agence France-Presse (AFP) that the Google News website infringed AFP copyrights in news headlines, story leads, and photographs.
- Securing dismissal with prejudice of a case claiming that a wireless carrier was liable for alleged copyright infringement occurring on its multimedia messaging system.
- 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 for the 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.
Music and Sound Recording Fee Litigation
The Copyright Practice is a “leader in the music licensing space” (Legal 500 US 2012) representing 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 and 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, and a favorable settlement on the fees payable for mobile video and ringback tones.
- 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 its 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 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 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. The reasoning of the proposed rule would have had broad ramifications for all services making digital performances and displays of copyrighted content. The firm submitted extensive comments, and Mr. Joseph testified at a Copyright Office hearing.
- The firm served as lead counsel to the higher education community in the legislative negotiations leading to TEACH, 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 as the U.S. Copyright Office, U.S. Patent and Trademark Office (USPTO), and Congress attempt to resolve the multitude of issues arising from the use of digital technologies and 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 DMCA added substantial 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 involved in many of the legislative debates 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.
- 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 represented the wireless industry during the U.S. Copyright Office’s 2009 triennial rule-making under Section 1201, opposing proposed exemptions to the prohibition on circumvention that would have permitted the circumvention of certain phone system locks. The firm submitted extensive comments, and Mr. Joseph testified at a Copyright Office hearing.
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 (NOI) 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.
ISSUE: DECEMBER 5, 2013
IN THIS ISSUE
Aereo Wins Another Round in its Battle with Copyright Owners
By Bruce G. Joseph, Andrew G. McBride, Karyn K. Ablin and Jennifer L. Elgin
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