Jenner & Block

  • Viacom v. YouTube: Represented Viacom in settling a “landmark legal battle” (Financial Times) and a case that was largely viewed as one of the most significant copyright cases of our time, debating the use of copyrighted videos on Google’s YouTube service without permission. Earlier in this legal battle, the firm won an important victory for Viacom and the content industry when the US Court of Appeals for the Second Circuit reversed the trial court’s grant of summary judgment in favor of defendants, and remanded the case for further proceedings. The settlement, as described by Reuters, “ends seven years of litigation that drew wide attention from Hollywood, the music industry and Internet companies, and which tested the reach of a federal law designed to thwart piracy while letting people find entertainment online.”
  • Waverly Scott Kaffaga v. Thomas Steinbeck et. al: Led a Jenner & Block team that won a federal jury verdict of $13.15 million in damages for the Estate of Elaine Steinbeck, the late third wife of author John Steinbeck, in a weeklong trial over the rights to the writer’s works. In 2014, estate executor Waverly Scott Kaffaga sued Thom and Gail Steinbeck, John’s son and daughter-in-law, as well as their company Palladin, for wrongly claiming control over the copyrights, harming the catalogue as a whole, and, in particular, interfering with movie deals for East of Eden and The Grapes of Wrath. By claiming to control the rights, defendants caused Universal and Imagine Entertainment to walk away from a movie deal for East of Eden involving Gary Ross and Jennifer Lawrence and interfered with negotiations with DreamWorks for a movie deal involving The Grapes of Wrath, depriving the estate of millions of dollars in potential revenue. In November 2016, US District Court Judge Terry Hatter granted Ms. Kaffaga’s motion for summary judgment on claims for breach of contract and slander of title, leaving the jury to decide potential damages for those claims and whether Thom (now deceased), Gail and their company wrongfully interfered with the East of Eden and The Grapes of Wrath projects. Ms. Kohlmann also led the firm team that argued that motion. Following the trial, the seven-member jury sided with Ms. Kaffaga on all claims.  The September 2017 verdict, which included $7.9 million in punitive damages and $5.25 million in compensatory, clears up much of the confusion about who actually owns the rights to the author’s works and allows long-stalled film and television projects to potentially move forward.
  • Penguin Group (USA) v. Steinbeck: Won victories in the US Court of Appeals for the Second Circuit for the Estate of Elaine Steinbeck, widow of author John Steinbeck, in a decades-long litigation over copyright termination rights and the right to control the exploitation of his works. In one of the first cases to consider termination rights, the Second Circuit held that the publishing agreement for the early works was not subject to termination, and held that the Estate of Elaine Steinbeck lawfully controlled the Steinbeck works.
  • The S. Hekemian Group v. The Related Companies, L.P.: Represented defendant, a real estate developer, in a suit over use of the phrase “The Next Great Neighborhood,” defeating a motion for preliminary injunction on the grounds of fair use and failure to show likelihood of confusion resulting in voluntary dismissal of the lawsuit.
  • Meredith Corp. v. SESAC: Represented SESAC in a high stakes antitrust class action brought by a putative class of independent television stations. SESAC is a performance rights organization that licenses musical compositions on behalf of affiliated composers and music publishers. The plaintiffs alleged that SESAC violated antitrust laws in the way it licenses musical works for television programming. After granting in part and denying in part SESAC’s summary judgment motion, the parties have reached a settlement, subject to court approval.
  • AOL v. Represented AOL in a case involving claims for trademark infringement and unfair competition regarding use of AOL’s ADVERTISING.COM and AD.COM marks for an online display advertising network. The case involved cutting-edge issues regarding the scope of trademark protection for domain names.
  • Radio Music License Committee, Inc. v. SESAC, Inc., SESAC, LLC, and SESAC Holdings, Inc.:  The Radio Music License Committee (“RMLC”) sued SESAC in late 2012, purporting to represent the entire commercial radio industry, and alleging that the way in which SESAC licenses musical works gives rise to antitrust claims for “price-fixing” and a “group boycott.” As the matter currently stands, the court has dismissed the first two counts of the Complaint (price fixing and group boycott/refusal to deal under Section 1 of the Sherman Act), and the case will proceed on the remaining claim.
  • Mattocks v. Black Entertainment Television LLC:  Won a victory for client Viacom when a Florida federal judge granted summary judgment in connection with the issue of the ownership of  Facebook “likes.”  At issue was a dispute between the Viacom-owned BET cable network and the creator of a Facebook fan page for the BET series The Game over who should control the Facebook page.  The page creator demoted BET’s access to the page when negotiations between her and the network to hire her as a social media "freelancer” fell apart.  BET then asked Facebook to “migrate” the page to a BET-created official Series Page, which it did; Facebook then shut down the original page and its creator sued BET.  During litigation, the page creator argued that she owned the 6.2 million Facebook “likes” the page had accrued and that they were worth several million dollars.