Attorneys in MSK’s Entertainment & IP Litigation practice have helped shape the media and entertainment industry through their representation of motion picture, television, video, music, animation, and interactive game and software developers, as well as the producers, publishers, distributors, talent, and investors. We have tried and won numerous precedent-setting cases before judges and juries in state and federal courts. In addition, we are skilled in handling arbitrations, mediations and other forms of alternative dispute resolution, and actively provide litigation-avoidance counseling to our clients.

We offer advice and counsel in the areas of anti-piracy, copyright, trademark, patent, intellectual property and technology agreements, and trade secrets, providing worldwide representation in the protection, enforcement and exploitation of intellectual property rights.

Cases

trademark and unfair competition

• Represented Take-Two Interactive and Rockstar Games in trademark litigation before U.S. District Court involving their best selling title, “Grand Theft Auto: San Andreas” and set precedent for video game industry. 

• Represented Sony Music in a trademark infringement lawsuit against the label and members of the British pop group One Direction brought by an American group with the same name.

• Represented MCA Records in trial court and on appeal, defending a claim of trademark infringement and unfair competition brought by Mattel, Inc., seeking to enjoin the hit recording “Barbie Girl.”

• Represented Muhammad Ali in trademark and right of publicity action against United Kingdom internet auction company for misappropriation of name, likeness, and distinctive nickname. 

• Served as global trademark counsel for legendary musical group, formulating and implementing the band’s world-wide trademark registration and enforcement strategy.

• Represented AOL (also known as Advertising.com) in a trademark infringement action against Advertise.com.

• Represent UMG Recordings, Inc., before the Trademark Trial and Appeal Board (TTAB) against Mattel, Inc. involving the famous "Motown" trademark.

• Represent numerous artists in trademark matters, including Jay-Z, Mary J. Blige, Outkast, Ludacris, Kanye West, Blondie, Wyclef Jean, Santi Gold, Timbaland, and others.

• Obtained a preliminary injunction preventing further infringement and dilution of our client’s apparel trademarks and trade dress despite the fact the mark had been denied registration on the Principal Register. Further procured a contempt citation against the defendant for violation of the preliminary injunction with an award of attorneys’ fees and costs and an accounting of profits.

• Represented Ferrari in trademark infringement actions against replica car manufacturers.

• Obtained temporary restraining order in a trade secret and unfair competition case against a labor union that misappropriated our client’s customer list and sent union literature to client customers. We overcame the union’s contention that the customer list was not a trade secret and that an injunction would violate the First Amendment and federal labor laws.

• Represented a major software development company in litigation arising out of a multi-billion-dollar hostile takeover attempt launched by Computer Associates.

contract / profit participation

• Obtained summary judgement on behalf of Activision Blizzard against Axl Rose’s tort and contract claims concerning Guitar Hero III.

• On behalf of Fox, Lightstorm Entertainment, and James Cameron, obtained summary judgment in multiple copyright infringement and breach of contract suits brought by plaintiffs claiming that the motion picture Avatar was based on their ideas, screenplays or drawings.

• Represent major film exhibitors in disputes with independent producers and distributors over calculation of gross receipts involving major blockbuster releases.

• Represent major motion picture studios in licensing disputes over electronic games with game developers.

• Obtained summary judgment for a music publishing company in a copyright and breach of contract action, establishing the principle that the statute of limitations on a claim for failure to pay royalties accrues upon the first nonpayment. 

• Obtained summary judgment for a member of a legendary musical group in an action by a former drummer concerning the group's royalties.

copyright

• Represented Sony in copyright infringement defense against CyberSitter, a Web software filtering vendor that filed a multi-billion dollar lawsuit against the Chinese government, two Chinese software makers and seven major computer manufacturers alleging that the Chinese makers of a controversial Web filtering package the Chinese government had mandated to be installed on computers sold there illegally copied thousands of lines of code from CyberSitter's filtering software, and distributed more than 56 million copies of the infringing software to customers in China and to Chinese speakers worldwide.

• Represented Recording Industry Association of America’s (RIAA’s) member companies in internet copyright enforcement actions against P2P file sharing systems Napster, Aimster, Grokster, and KaZaA.

• Obtained judgment as a matter of law, following jury trial, on behalf of all Defendants, dismissing Plaintiff’s copyright infringement claim that Jay Z and Timbaland’s song “Big Pimpin’” infringed his alleged copyright in an Egyptian composition.

• Represented the Motion Picture Association of America (MPAA) members in DMCA and copyright litigation against software maker 321 Studios.  Obtained summary judgment and an injunction against 321 Studios, blocking further distribution of the company’s infringing software, capable of cracking copy protection on DVDs. 

• Represented the MPAA in DMCA litigation filed by InternetMovies.com Inc.  Set important case law precedent relating to the take-down provisions of the DMCA.  

• Represent motion picture studio in copyright infringement claims over music composition and performance rights in a feature film.

• Represented producers of a top 10 hit reality TV program in claims involving copyright infringement and idea submission.

• Defended at trial copyright infringement claims involving major motion pictures.

• Defended MCA Records against accounting and copyright claims brought by the owner and licensor of country music recordings arising from dissolution of the parties’ 15-year licensing and distribution relationship.

• Represent record company and music publisher clients in more than 100 related copyright infringement cases arising from the alleged unauthorized "sampling" of musical works in musical compositions and sound recordings.

• Represented prominent website in a high-profile suit against major online search engine Google, Inc., and obtained a preliminary injunction enjoining aspects of the display of thumbnail images owned by the client.

• Represented four stars from the original cast of the Broadway production of "Jersey Boys" in a litigation involving claims of trademark and copyright infringement by Franki Valli and the producers of the show.

• Represented 23 Recording Industry Association of America (RIAA) members in a copyright infringement action against a CD manufacturing plant resulting in a jury trial award of approximately $136 million in damages.  Verdict was upheld on appeal. 

• Developed and are currently implementing an anti-piracy and intellectual property enforcement program for major video game publishers.

• Obtained a multi-million dollar settlement on behalf of the RIAA in copyright infringement litigation brought against Amway. The settlement was the largest in RIAA history and our firm was awarded an Honorary Gold Record for our results in the case.

• Significant contributor to text and enactment of many federal copyright and e-commerce-related laws passed since 1983 (e.g., Semiconductor Chip Protection Act of 1984, Berne Convention Implementation Act of 1988), and act as lead counsel to copyright and other industry coalitions (e.g., Digital Millennium Copyright Act of 1998 for Creative Incentive Coalition; PRO-IP Act of 2008 for Coalition Against Counterfeiting and Piracy).

• As counsel to the leading copyright industry coalition on international copyright law and enforcement matters (International Intellectual Property Alliance), coordinate industry advocacy and drafting efforts on major international agreements (e.g., WIPO Internet Treaties, Free Trade Agreements with Singapore, Australia and Korea; Trans-Pacific Partnership Agreement), with special emphasis on Internet and digital piracy issues, and authored dozens of reports on copyright law and enforcement developments in major overseas markets.

• Led global advocacy efforts through the Internet Corporation for Assigned Names and Numbers (ICANN) for transparency and accountability in the Domain Name System, in support of enforcement of copyright and trademarks online. Founded and represented Coalition for Online Accountability (formerly Copyright Coalition on Domain Names) to lead copyright industry advocacy before ICANN.

anti-circumvention / dmca

• Represent Blizzard Entertainment, Inc. in lawsuit against operators of private multiplayer servers.

• Obtained $7 million judgment on behalf of Blizzard Entertainment, Inc. against the maker of a popular software "bot" that enabled users to cheat in the video game "World of Warcraft."

• Represent the Motion Picture Association of America (MPAA) members in DMCA litigation against 321 Studios.  Obtained summary judgment and an injunction against 321 Studios, blocking further distribution of infringing software.

• Represented the Motion Picture Association of America (MPAA) in DMCA litigation filed by InternetMovies.com Inc., relating to the take-down provisions of the DMCA.  

licensing

• Intervene on behalf of both licensors and licensees regarding their respective rights subsequent to the bankruptcy of either party, and whether a particular license (especially IP licenses) can be accepted or rejected and otherwise enforced in the bankruptcy context.  In particular, the firm focuses on crafting language in licensing agreements which cause a reversion of the rights granted under the license upon the licensee's breach or bankruptcy, rather than simply relying on a claim for damages.

• Crafted licensing agreements covering master recordings for major record label which included anti-piracy provisions, especially in relation to internet promotions.

• Review and provide counsel regarding millions of dollars worth of software and hardware licenses for a major motion picture studio.

• Represent a number of entertainment and technology companies in content licensing agreements, many of which include anti-piracy provisions.

• Represent an inventor and his joint venture company in licensing patents for a novel advertising mechanism.

patent

• Represent a client in a patent infringement case against Oracle involving a system for transforming and exchanging data between distributed heterogeneous computer systems.

• Represent toy company in litigation concerning patent, trademark and trade dress claims regarding major patented toy.

• Represent One World Technologies in patent infringement trial involving laser guided saw.

• Represent counter defendant-appellant Ormco Corp. on patent claims, obtaining a reversal of summary judgment for counterplaintiff-appellee and claims held obvious.

• Represent defendant in claim involving patent on pneumatic foot controller. Obtained summary judgment in favor of defendant on non-infringement.

right of publicity

• Prevailed in anti-SLAPP motion on behalf of Take2 Interactive and Rockstar Games against right of publicity claim and claims of fraud and misappropriation of likeness regarding the lead character in their hugely popular video game “Grand Theft Auto: San Andreas.”

• Prevailed on Anti-SLAPP motion on behalf of Twentieth Century Fox Film Corporation against claims brought by actor Frank Sivero alleging that a character on The Simpsons television series infringed his right of publicity.

• Obtained summary judgment in favor of Blizzard Entertainment, Inc. on copyright and right of publicity claims arising from a set of recordings used to voice a "World of Warcraft" character.

intellectual property and technology agreements

• Represent a major online entertainment company in acquisition and intellectual property matters.

• Drafted and negotiated marketing and software license agreements for major national company.

• Negotiated agreements with Oracle Corporation and other software companies for the development of innovative software, including fundraising software and fulfillment software.=

• Represented a software development company in its negotiations to purchase certain Linux technology rights from California Institute of Technology.

• Ongoing representation of a major picture studio in a range of technology licensing agreements.

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Multimedia