"Paul Fakler is well regarded for his copyright and trademark expertise, particularly in issues arising in the technology and music industries. One market insider describes him as 'a true copyright specialist and an excellent litigator,' while another notes: 'He provides superlative service.'"Chambers USA
Paul Fakler is a partner in Mayer Brown's New York office and a member of the Intellectual Property practice. He works at the intersection of music, technology, and business. He draws upon over two decades of experience litigating some of the seminal cases applying copyright and related law to new media and technologies to help companies in the streaming, broadcasting, media, software, and other industries advance their business objectives. One of the few attorneys in the country with extensive first-chair experience before the Copyright Royalty Board and other royalty rate setting venues, his experience also spans many other issues, including music licensing, royalty audits and payment disputes, copyright infringement, fair use and other defenses, the DMCA and its safe harbor for online service providers, copyright issues relating to artificial intelligence, copyright policy matters, and government affairs. Paul has been ranked by Chambers USA and other independent ratings organizations as a leading copyright practitioner continuously since 2013, and frequently speaks and publishes on legal developments in the fields of copyright, music, and technology.
Although he assists clients with issues relating to many different types of content, Paul has especially deep experience in the music industry as it has adapted to fundamental changes brought by digital media. As music evolves into a cutting-edge digital industry, those businesses require an equally innovative legal approach. Paul offers creative ways to adapt copyright laws to the latest technology, through litigation, counseling and government relations. He has devoted his practice to this unique field, as well as to handling software copyright litigation, a natural fit given his experience as a copyright lawyer, former software developer and amateur musician.
Litigation & Licensing
He 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 ground-breaking cases have included MP3.com, Yahoo!, Veoh, MediaNet, Sirius XM Radio, Pandora Media, Bill Graham Archives, ExpressVPN, Private Internet Access, and Music Choice.
Paul is one of the few attorneys with significant first-chair experience handling copyright royalty rate-setting proceedings, including proceedings before the Copyright Royalty Board and the ASCAP and BMI rate courts. He obtained the only two royalty rate reductions ever granted by the Copyright Royalty Board (or its predecessors).
Paul also routinely represents clients in bet-the-company copyright infringement litigation across many industries, often making new law on issues such as the DMCA safe harbor and fair use.
Paul counsels clients with respect to 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.
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.
- Defending Pandora Media in group of copyright infringement cases coordinated by purported licensing collective, Word Collections, on behalf of alleged owners of the copyrights in jokes and comedy routines embodied in comedy sound recordings available on Pandora’s streaming service. In this case, the plaintiffs seek to disrupt decades of industry custom and practice by claiming that Pandora must separately license rights to the underlying jokes in addition to their existing licenses to stream the sound recordings. Paul serves as head of a large, multi-disciplinary Mayer Brown team not only for Pandora’s defense of these actions, but also in counterclaims against the plaintiffs and Word Collections for violation of various antitrust laws.
- Representing several Virtual Private Network (VPN) service providers, including ExpressVPN and Private Internet Access, in bet-the-industry copyright litigation brought by a grouop 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.
- Representing 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.
- Defending Music Choice, the world’s first digital music service, in litigation brought by SoundExchange, alleging underpayment of statutory license royalties for Music Choice’s commercial background music service. The district court recently stayed the case and referred a question of legal interpretation of the applicable royalty regulation to the Copyright Royalty Board.
- Representing Music Choice in connection with the current Business Establishment Service license rate proceeding (BES IV) before the CRB.
- Representing 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.
- Representing 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.
- Representing 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.
- Represented 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.
- Defended 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.
- Represented 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.
- Represented 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.
- Represented national trade association for broadcasters and Music Choice in connection with Copyright Office music licensing policy hearings.
- Represented 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.
- Defended digital music service MediaNet in litigations brought by various songwriters and music publishers relating to mechanical license requirements, leading to favorable settlements.
- Represented 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 of the debtor’s copyrights at risk, leading to a significantly increased recovery for the unsecured creditors.
- Represented 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.
- Represented 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.
- Defended symphonic rock band Trans-Siberian Orchestra in copyright infringement case relating to album art and band merchandise, leading to favorable settlement.
- Defended Scottish software developer in copyright infringement case brought by its competitor, one of the world’s largest ATM hardware and software companies.
- Represented famous artist Greg Hildebrandt, in DMCA fraudulent takedown notice litigation.
- Defended 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.
- Defended 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.
- Defended Yahoo! in a copyright case brought by the recording industry, determining the eligibility of Yahoo!’s LaunchCast webcasting service for a statutory copyright license.
- Represented First Niagara Insurance Brokers in $530 million trademark infringement action against First Niagara Financial Group.
- Represented 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.
- Defended 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.
- Represented 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.
- Represented an individual client in action to obtain subpoenas to trace identity of defendants who had posted defamatory statements on Internet forums.
- Represented a religious organization in a trademark action relating to the unauthorized use of the client’s trademark in a third-level domain name.
- 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.
- Represented Caesar’s World, Inc. in one of the first in rem cases brought under the Anticybersquatting Consumer Protection Act.
Georgetown University Law Center, JD, cum laude
BA, with honors, Philosophy
Phi Kappa Phi
- New York
- US Supreme Court
- US Court of Appeals for the District of Columbia Circuit
- US Court of Appeals for the Eleventh Circuit
- US Court of Appeals for the Federal Circuit
- US Court of Appeals for the Ninth Circuit
- US Court of Appeals for the Second Circuit
- US Court of Appeals for the Seventh Circuit
- US Court of Appeals for the Sixth Circuit
- US District Court for the District of Columbia
- US District Court for the Eastern District of New York
- US District Court for the Northern District of New York
- US District Court for the Southern District of New York
- US District Court for the Western District of New York
- Clerked for the Hon. Peter T. Fay, United States Court of Appeals, Eleventh Circuit
- New York State Bar Association, Intellectual Property Law Section, Former Chair
- Copyright Society of the USA, Member
- Ranked as a leading Copyright and Trademark lawyer in Chambers USA, 2013 - present
- Ranked in The Legal 500, 2013 - present
- Named a WIPR leader by World IP Review, 2016 - present
- Ranked a “Premier IP Star (Litigation)” in New York by Managing Intellectual Property, 2013 - present