Paul M. Fakler

As an experienced copyright lawyer, former software developer and amateur musician, he is also proficient in software copyright litigation. He is one of the few lawyers in the country with extensive first-chair experience before the Copyright Royalty Board and other royalty rate setting venues.

His experience spans many issues, including:

• Copyright issues implicated by the training and use of artificial intelligence and other machine learning technologies
• Music licensing and copyright royalty rate litigation
• Royalty audits and payment disputes
• Copyright infringement disputes
• Fair use and other defenses
• The DMCA and its safe harbor for online service providers
• Copyright policy matters
• Government affairs

Litigation & Licensing

Paul has litigated numerous high-profile copyright cases involving digital media, copyright, and the Internet. He routinely represents digital music services, as well as other media, software, and consumer products companies, in negotiations and disputes with record labels, music publishers, and other rights holders. His clients in these groundbreaking cases have included MP3.com, Yahoo!, Veoh, MediaNet, Sirius XM Radio, Pandora Media, Bill Graham Archives, ExpressVPN, Private Internet Access, and Music Choice.
Paul obtained the only two royalty rate reductions ever granted by the Copyright Royalty Board (or its predecessors), and often makes new law on issues such as the DMCA safe harbor and fair use through representing clients in bet-the-company copyright infringement litigation across many industries.

Counseling

Clients seek Paul’s counsel in copyright, trademark, right of publicity, entertainment, computer, and Internet law issues in diverse industries, including the music, motion picture, publishing, software development, data security, and digital media industries.

Government Relations

He also advises on strategies for shaping copyright policy and represents clients’ interest before government entities that impact the copyright ecosystem, such as Congress, the Copyright Office, and the Department of Justice.

Clients served by Paul have included Sirius XM, Pandora, Music Choice, the Orchestra Music Licensing Association, the Television Music Licensing Committee, MediaNet, MP3.com, LaunchCast, Veoh Networks, and Express VPN.

• Several technology companies, from startups to a Fortune 500 semiconductor and software company, advising on the copyright issues raised by the training, commercialization, and use of artificial intelligence and other machine learning technologies.
• The Television Music Licensing Committee in connection with negotiations and potential rate court litigation against various Performing Rights Organizations.
• Bill Graham Archives, operator of the Wolfgang’s and Concert Vault music services, in class action copyright infringement litigation arising from allegations that the company failed to secure mechanical and synchronization licenses for on-demand streaming of its collection of live concert audio and video recordings on its websites.
• Digital music service MediaNet in litigations brought by various songwriters and music publishers relating to mechanical license requirements, leading to favorable settlements.
• MP3.com digital music service in various copyright infringement lawsuits brought by record labels and music publishers relating to music streaming service, including litigation of whether musical sound recordings are works made for hire under the Copyright Act.
• Yahoo! in a copyright case brought by the recording industry, determining the eligibility of Yahoo!’s LaunchCast webcasting service for a statutory copyright license.
• Symphonic rock band Trans-Siberian Orchestra in copyright infringement case relating to album art and band merchandise, leading to favorable settlement.
• Scottish software developer in copyright infringement case brought by its competitor, one of the world’s largest ATM hardware and software companies.
• Prominent law firm in copyright infringement case relating to computer software used to process specialized financial transactions, successfully reversing preliminary injunction on appeal to the Second Circuit.
• Publications International, Ltd. in a case brought by the makers of Beanie Babies plush toys arising out of the publication of a Beanie Babies collector’s guide.
• Several Virtual Private Network (VPN) service providers, including ExpressVPN and Private Internet Access, in bet-the-industry copyright litigation brought by a group of independent movie production companies in courts throughout the country, seeking to hold VPN providers liable for the alleged movie piracy of individual consumers using VPN services. Recently negotiated favorable settlement for two VPNs, while proceeding to litigation for another.
• Major cosmetics company in connection with copyright infringement claims brought by major record and music publishing companies, based upon the posting or re-posting of videos that contain background music on social media accounts, including those by influencers and ordinary consumers.
• Music Choice in connection with the current Business Establishment Service license rate proceeding (BES IV) before the CRB.
• Music Choice, in a remand of the SDARS III proceeding before Copyright Royalty Board, which will determine the royalty rates payable by certain radio services transmitted over television-based platforms for the Section 114 sound recording performance and Section 112 ephemeral copying rights. Obtained the second rate decrease in the history of the CRB (and its predecessors) in same year when other licensees’ rates were increased by over 40%. Recently won appeal of ancillary issue before the D.C. Circuit, obtaining rare reversal of both the Register of Copyrights and the Board.
• Trade association Orchestra Music Licensing Association (“OMLA”), representing the interests of symphony orchestras in connection with various music rights and licensing issues, including Performing Rights Organization license negotiations, the Copyright Office’s “technical measures” study, and disputes regarding the creation and use of custom orchestrations of popular music by “pops” orchestras.
• Sirius XM Radio, Music Choice, Cincinnati Symphony Orchestra, and other music licensees in connection with the Department of Justice’s 2019-2021 review of the ASCAP and BMI consent decrees. Paul’s work resulted in DOJ closing the review without making any of the harmful changes requested by ASCAP, BMI, and music publishers.
• Various digital music services and other music licensees in connection with the negotiation, drafting, and enactment of the Music Modernization Act, including assisting clients in preparing for testimony at congressional hearings, lobbying, and obtaining key changes in the legislation to advance clients’ interests.
• Sirius XM Satellite Radio in the Webcasting IV royalty rate proceeding before the Copyright Royalty Board, resulting in the first royalty rate decrease ever granted by the Board or its predecessors.
• Sirius XM Satellite Radio, Music Choice, and other music licensees in proceedings before the Department of Justice related to its 2014-15 review of the ASCAP and BMI antitrust consent decrees, resulting in closure of review without implementation of any of the harmful modifications to the decrees requested by music publishers.
• National trade association for broadcasters and Music Choice in connection with Copyright Office music licensing policy hearings.
• Cable music service Music Choice in various copyright royalty rate-setting proceedings before the Copyright Royalty Board and the ASCAP and BMI rate courts, and lobbying efforts in the United States Congress relating to various proposed changes to the Copyright Act.
• The unsecured creditors’ committee in the Cengage Learning bankruptcy, the largest Chapter 11 filing of 2013. Developed a novel copyright strategy that placed the liens on all the debtor’s copyrights at risk, leading to a significantly increased recovery for the unsecured creditors.
• Sylvain Sylvain, founding member of seminal proto-punk band New York Dolls, successfully obtaining cancellation of trademark registration improperly obtained by David Johansen’s personal corporation.
• Members of The Allman Brothers Band in litigation against UMG Recordings, Inc. for failure to pay royalties at the correct rate for digital downloads and other digital exploitation of several classic albums by The Allman Brothers Band.
• Famous artist Greg Hildebrandt, in DMCA fraudulent takedown notice litigation.
• First Niagara Insurance Brokers in $530 million trademark infringement action against First Niagara Financial Group.
• Bill Graham Archives LLC with respect to various copyright, trademark, right of publicity, and other intellectual property disputes relating to the operation of its Wolfgang’s Vault website and exploitation of its rights to a large collection of sound recordings, poster art, and vintage rock and roll memorabilia.
• Domain name registrar Register.com in obtaining a preliminary injunction, affirmed on appeal, stopping the defendant from harvesting customer data from Register.com’s WHOIS database.
• An individual client in action to obtain subpoenas to trace identity of defendants who had posted defamatory statements on Internet forums.
• A religious organization in a trademark action relating to the unauthorized use of the client’s trademark in a third-level domain name.
  Caesar’s World, Inc. in one of the first in rem cases brought under the Anticybersquatting Consumer Protection Act.

Defeated:

• Preliminary injunction action brought by comedian Jackie Mason against a religious organization arising from the use of Mr. Mason’s name and likeness in a parody on a religious tract.