Arent Fox
ATTORNEY BIO
Paul M Fakler

Paul M Fakler
November 11, 2011
  • Partner
  • New York, NY
212.457.5445
paul.fakler@arentfox.com

Paul M. Fakler helps clients in the fields of copyright, trademark, entertainment, and computer/Internet law with litigation and counseling needs, and has litigated numerous cutting-edge cases involving digital music and the intersection of copyright and the Internet. 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, and Internet industries. He routinely represents digital music services, as well as other Internet and software companies, in negotiations and disputes with record labels and other rights holders. Paul has significant experience in the area of copyright compulsory license rate-setting proceedings, including proceedings before the Copyright Royalty Board and the American Society of Composers, Authors and Publishers (ASCAP) and Broadcast Music, Inc., (BMI) rate courts. Paul also counsels and represents recording artists in royalty disputes adverse to record labels, including with respect to the rates payable for digital downloads, and also assists artists and other authors with respect to recapturing ownership of their copyrights pursuant to the transfer termination provisions of the Copyright Act. He publishes Title 17: The S(c)ite For Copyright Law, a blog devoted to copyright law news, analysis, and discussion.

Client Work

Paul has represented clients with respect to numerous high-profile intellectual property matters, including:

  • Music Choice in various copyright royalty rate-setting proceedings before the Copyright Royalty Board and the ASCAP and BMI rate courts
  • Members of The Allman Brothers Band 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
  • Symphonic rock band Trans-Siberian Orchestra in copyright infringement case relating to album art and band merchandise
  • Scottish software developer in copyright infringement case brought by its competitor, one of the world’s largest ATM hardware and software companies
  • Famous artist Greg Hildebrandt, in DMCA fraudulent takedown notice litigation
  • Music publisher Bro ‘N Sis Music in copyright litigation against Papa John’s restaurant chain and IMG College sports licensing company in copyright infringement litigation stemming from Papa John’s unlicensed use of college fight song in television commercial
  • Prominent law firm in copyright infringement case relating to computer software used to process specialized financial transactions
  • National Music Publishers Association, and several member music publishers, in copyright infringement litigation against the owners and operators of various unauthorized song lyrics websites
  • 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
  • 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
  • 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
  • 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
  • Defeating 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
  • Caesar’s World, Inc. in one of the first in rem cases brought under the Anticybersquatting Consumer Protection Act

Previous Work

Paul served as a judicial clerk for the Honorable Peter T. Fay of the United States Court of Appeals for the Eleventh Circuit. Prior to attending law school, Paul worked in the multimedia software development field and taught English composition and film studies at the University of Florida. His undergraduate training was in philosophy, with an emphasis on continental and post-structuralist philosophy. He pursued graduate studies in literature and film studies, focusing his research on the impact of electronic forms of communication on human cognition.

Professional Activities

Paul is the immediate past chair of the New York State Bar Association Intellectual Property Law Section. He is also co-chair of the Copyright Committee and a member of the Entertainment, Arts and Sports Law Section. He is a member of The Copyright Society of the USA and the International Trademark Association. Paul frequently lectures on issues related to copyright, entertainment, and Internet law, and has appeared on television and in the press, commenting on cutting-edge intellectual property issues.

Publications, Presentations and Recognitions

Paul was recognized in the New York edition of Super Lawyers for intellectual property litigation in 2009, 2010, 2011, and 2012. He has also been listed in Chambers USA 2012 for the practices of Trademark and Copyright.

Paul publishes Title 17: The S(c)ite For Copyright Law, a blog devoted to copyright law news, analysis, and discussion. He holds a Martindale – Hubbell AV® Preeminent™ 5.0 out of 5 Peer Review Rating in Intellectual Property, Copyrights, and Litigation.

Paul’s other publications and presentations include:

  • “Copyright Termination Rights and Sound Recordings,” The State Bar of California, March 2012
  • New York State Bar Association Intellectual Property Law Section Annual and Fall Meetings, 2003, 2004, 2005, 2007, 2010, 2011, and 2012
  • The Copyright Office Comes to New York, co-chair, 2004-2010
  • “Selected Recent Trends in Copyright and Trademark Law,” Inside the Minds: Common Issues in IP Law, Aspatore Books, 2008
  • “Record Labels’ Inability to Adopt New Business Models Leads to Distortions in Copyright Law,” Instant Awareness: An Immediate Look at the Legal and Industry Ramifications of Virgin Records America v. Jammie Thomas, Aspatore Books, 2007
  • “Protecting Online Databases From Robotic Attack,” Global Intellectual Property Asset Management Report; November 2004
  • “The Entertainment Industry in the Post-Napster Era,” Columbia University Law School, March 2001

Life Beyond the Law

Paul is a recovering musician and an inveterate film fanatic.

Bar and Court Admissions

  • New York Bar
  • Supreme Court of the United States
  • US District Court, Eastern District of New York
  • US District Court, Southern District of New York
  • US District Court, Western District of New York
  • US Court of Appeals, District of Columbia Circuit
  • US Court of Appeals, Federal Circuit
  • US Court of Appeals, 2nd Circuit
  • US Court of Appeals, 7th Circuit
  • US Court of Appeals, 6th Circuit

Education

Georgetown University Law Center
, JD
  ( cum laude, dean's list )
University of Florida
, BA
  ( with honors, philosophy, Phi Kappa Phi, dean's list )

Practices

  • Appellate
  • Commercial Litigation
  • Intellectual Property

Industries

  • Media & Entertainment

Areas of Focus

  • Copyright
  • Copyright Royalty Rate-Setting Proceedings
  • Intellectual Property
  • Internet & Digital Media
  • Media & Entertainment / Sports
  • Motion Pictures
  • Music
  • Publicity Rights
  • Television
  • Trademark
  • Awards & Recognitions

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