Kenneth Steinthal focuses his practice on trying cases and handling appeals, primarily in the music and broader media industries, both in the United States and internationally. He has more than 30 years of experience litigating matters in the IP/media sectors and across a wide spectrum of industries and disciplines, both in jury and bench trial settings, in U.S. federal and state court settings (including appellate proceedings), before copyright tribunals in the United States and internationally (where he has earned "rights of audience" to represent his clients), and before other arbitral bodies around the world.
Ken's litigation and trial experience encompasses media and entertainment litigation, consumer class actions involving false advertising and unfair business practices, sports litigation, antitrust litigation, real estate/hotel industry litigation, breach of contract, product liability, trade secret/fraud/unfair competition cases and bankruptcy litigation. He has particular experience in litigating copyright infringement claims in cases involving the distribution of audio and audiovisual content via both traditional and new media (e.g., mobile, video game and internet) distribution means; these engagements have involved, inter alia, the construction and application of provisions of the Digital Millennium Copyright Act (including statutory licenses and safe harbors thereunder), federal and state privacy statutes, and federal court/copyright tribunal proceedings in the United States and abroad establishing structures and rates for the exploitation of musical works in both traditional (e.g., cable, satellite, broadcast) and new media distribution environments.
Beyond his litigation experience, Ken also counsels clients on music rights and licensing, concentrating on the representation of entities engaged in wide-scale distribution of audio and audiovisual media content of all forms. This practice has involved the development of innovative licensing strategies in the traditional and new media space, and includes the representation of major industry players and their industry associations adverse to music collecting societies and related trade groups, both in the United States and internationally. He has been a frequent speaker at copyright seminars and similar forums on the subject of music rights and copyright litigation issues, and is a former adjunct professor of law at Fordham Law School.
Areas of Concentration
ˇ Media and entertainment
ˇ Copyright litigation and counseling
ˇ Complex commercial litigation
ˇ Consumer class actions, including false advertising, product liability, and privacy matters
ˇ International arbitration
Significant Representations
Copyright LitigationKen has led the defense of numerous copyright infringement and declaratory judgment lawsuits brought by music copyright owners (including record labels, music publishers and class actions brought by publisher members of ASCAP, BMI and HFA) against content distributors spanning traditional and new media distribution. Examples include:
ˇ "Napster II" (UMG Recordings, et al. v. Bertelsmann AG, et al). Defended Bertelsmann against a series of music label and publisher copyright infringement claims brought in the SDNY and NDCA (asserting liability in excess of $20 billion) based on alleged direct, contributory and vicarious liability of Bertelsmann arising from its investments in and relationship with the original Napster file-sharing service; rulings on motions led to settlements shortly before trial.
ˇ US v. ASCAP. Application of RealNetworks Inc. and Yahoo!, Inc. Managed trial and argued appeal leading to landmark decision of Second Circuit Court of Appeals in September 2010 holding that transmissions of music downloads do not trigger public performance rights liabilities for entities engaged in content distribution.
ˇ Arista Records, et al. v. Launch Media. Co-defended Yahoo! Music (f/k/a Launch Media) in a billion-dollar copyright infringement action brought by various record labels in the SDNY challenging the eligibility of Yahoo!'s internet radio service for the statutory license under section 114 of the Copyright Act; Yahoo! secured a jury verdict in its favor (later affirmed by the Second Circuit).
ˇ EMI Music v. Multiply Inc. Represented social network service in lawsuit claiming copyright infringement of works in EMI's label and publisher catalogues asserting Multiply did not qualify for the DMCA safe harbor; representation enabled settlement shortly after lawsuit was filed.
ˇ Sony/ATV Songs LLC, et al. v. MusicNet, Inc. Defended provider of on-demand streaming/conditional music download service against copyright infringement claims based on alleged failure of service to secure musical work reproduction rights licenses; representation enabled settlement not long after suit was filed.
ˇ Coleman, et al. v. ESPN. Defended ESPN against claims of ASCAP members asserting copyright infringement based on ESPN's alleged unlicensed public performance of musical works audible in the background of ESPN's broadcasts of sports programming and challenging ESPN's assertion of the "fair use" defense to such uses; defeated the publishers' summary judgment motion and secured a settlement shortly thereafter.
ˇ Angel Music, Inc. et al v. ABC Sports, et al. Represented the local television industry in this putative dual plaintiff/defendant class action copyright infringement lawsuit claiming that the ABC Television Network had infringed the publishers' rights by failing to secure synchronization licenses for so-called "one time uses" of compositions that were used as background for Olympics sports "bio-pic" segments; achieved dismissal of action. Beyond the above exemplars of matters that went to litigation, Ken has managed dozens of pre-litigation matters where content owners have threatened to bring lawsuits against content distributor clients, and enabled clients to avoid litigation via the negotiation of acceptable settlements and/or licenses. Ken also has managed the defense and/or tried numerous federal court and Copyright Tribunal cases against ASCAP, BMI and SESAC in the U.S., as well as against their "sister" organizations in the UK (i.e., MCPS/PRS) and Hong Kong (i.e., CASH). These cases have involved the resolution of significant legal issues (involving the interpretation of the Copyright Act in order to resolve whether certain activities require PRO licensing at all, antitrust issues associated with ASCAP/BMI/SESAC operations, etc.) as well as the establishment of rates and structures for fee-setting in traditional and new media settings. Examples include:
ˇ "Rate Court" Proceedings against ASCAP and BMI. Ken has handled ASCAP and BMI proceedings under the respective ASCAP and BMI consent decrees for more than two decades. Most recently, in U.S. v. ASCAP, Application of MobiTV, Inc., he tried the first case before the new judge supervising the ASCAP consent decree leading to a May 2010 trial decision entirely in favor of his client, MobiTV, Inc., establishing rates and terms for mobile distribution of TV/radio content. He also led the representation (in U.S. v. ASCAP, Applications of RealNetworks and Yahoo!, Inc.), of online services in their trial and ensuing appellate challenges to (i) ASCAP's position, noted above, that the transmission of downloads containing music requires that the service transmitting the download secure a public performance license, and (ii) ASCAP's proposal to charge online content distribution entities on a royalty basis far more onerous than exists for entities distributing content via traditional media vehicles. Ken is and/or has been lead trial counsel, as well, for numerous other ASCAP/BMI licensees engaged both in traditional and new media forms of content distribution; indeed, over the years, Ken has managed or co-managed the negotiations and, where necessary, trial teams in consent decree proceedings against ASCAP/BMI (and SESAC) on behalf of more than two dozen cable/satellite/broadcast television services (e.g., Showtime, ESPN, MTV Networks, Discovery, USA Networks, Lifetime Entertainment Services, Disney Channel, DirecTV, Lodgenet Entertainment, Univision, Fox, etc), the local television industry and numerous new media licensees.
ˇ Antitrust litigation against ASCAP and BMI. Ken was deeply involved in the seminal antitrust cases brought by the local television industry in the early 1980s (Buffalo Broadcasting Co., et al. v. ASCAP, et al) and the cable TV industry in the early 1990s (NCTA, et al. v. BMI, et al), against both ASCAP and BMI, which set the framework for the consent decree litigations that have followed.
ˇ International Copyright Tribunal Matters. Ken has been granted "rights of audience" in the Copyright Tribunals of the UK and Hong Kong to litigate matters pertaining to the proper structure and rates for musical work public performances (and, in some cases, reproductions), on behalf of both new media/online distributors of content and traditional cable/satellite television distributors. Ken was lead trial counsel in the precedent-setting UK Copyright Tribunal litigation on behalf of a consortium of music service providers (including AOL, Yahoo!, Apple, Napster LLC, RealNetworks, and MusicNet) against the UK collective MCPS/PRS. Ken has also represented a consortium of cable and satellite providers (including STAR TV, Television Broadcasts Ltd (TVB), Hong Kong Cable and PCCW (previously Hong Kong Telecom) in proceedings before the Hong Kong Copyright Tribunal against the Composers and Authors Society of Hong Kong (CASH), which resulted in a industry-wide settlement on the eve of trial.
ˇ US Statutory License Copyright Arbitration/Copyright Royalty Board Proceedings. Ken has represented a number of online "webcasters" and National Public Radio in connection with the negotiation and/or litigation of rates and terms associated with the operation of webcasting services eligible for statutory licenses under 17 USC sections 112 and 114 (in Copyright Arbitration Royalty Panel and then Copyright Royalty Board proceedings spanning the statutory license periods from the commencement of the section 112/114 statutory license through 2010).
Media/Entertainment/Sports Litigation
ˇ iJaal.com, Inc., et al. v. baazee.com, Inc., et al. Lead trial counsel in this SDNY jury trial defending baazee.com (the "eBay of India," in which News Corp's Star TV was the primary outside investor before acquisition by eBay after trial) and its principals against claims of breach of oral contract, misappropriation of partnership opportunity, misappropriation of trade secrets and related claims; obtained complete defense verdict.
ˇ Persky-Bright Organization, et al. v. Columbia Pictures Entertainment, Inc., et al. Lead trial counsel in defense of two $300 million actions brought in SDNY and CDCA, in which the plaintiff motion picture investment groups alleged a series of violations by Columbia Pictures of motion picture distribution agreements, together with RICO, fraud, antitrust/block booking and tax indemnity claims. The case spanned several years and included a mini-trial of non-jury issues that resulted in the substantial curtailment of issues to proceed before a jury, leading to a settlement thereafter.
ˇ Robehr Films, Inc. v. American Airlines, Inc. Lead trial counsel in SDNY jury action brought by in-flight film supplier alleging fraud and breach of contract by American Airlines. Plaintiff claimed American's conduct had forced it out of business. A three-week jury trial resulted in a no-liability defendant's verdict, which was affirmed on appeal to the Second Circuit.
ˇ European American Bank v. Film Finances, Inc., et al. Lead counsel in defending action brought by EAB under film loan agreements and completion bond against clients Film Finances and production/distribution entities. After preliminary pre-trial proceedings and motion practice, the case was settled on a zero-liability basis.
ˇ North American Soccer League (NASL) v. National Football League. Assisted in representing the NASL in this antitrust trial in the SDNY in which the NASL successfully challenged the NFL's "cross ownership" ban which would have prevented "cross-owners" such as Lamar Hunt and Joe Robbie from maintaining their investments in the NASL.
ˇ New York Islanders Hockey Club LP v. SMG, et al. Lead trial counsel for N.Y. Islanders hockey team in federal and state court litigations against SMG and Nassau County seeking to terminate lease arrangements at the Nassau Coliseum on novel constructive eviction theory. After preliminary injunction trial proceedings and a series of appeals, the case settled.
Other Engagements
ˇ David Wilson et al. v. Airborne, Inc. Lead counsel in representation of Airborne defendants in consumer class action (removed to Central District of CA under CAFA) alleging, inter alia, false advertising and violations of California consumer protection laws; led to class settlement.
ˇ In re CA Title Insurance Litigation. Lead trial counsel for national title insurance company in pending putative class action alleging violations of CA UCL §17200.
ˇ NNN Britannia Business Center, et al v. Grubb & Ellis Co., et al. Lead trial counsel for defendants in pending CA state court action alleging violations of CA UCL §17200, fraud, etc., associated with the syndication of certain commercial real estate investments.
ˇ Risko v. First Aviation Services, Inc., et al. Lead trial counsel in jury trial in Oakland, CA Superior Court alleging fraud and breach of contract against First Aviation and its principals. The case was brought by a former First Aviation principal alleging, among other things, entitlements under an oral agreement, and threatened the continued viability of client group. A two-week jury trial resulted in a no-liability defendants' verdict.
ˇ PIA v. UBS Securities, Inc. Lead trial counsel in defending lender liability, fraud and breach of contract claims brought in New York State Supreme Court by the owners of the Roosevelt Hotel in New York City against UBS, stemming from UBS' termination of an agreement to finance the renovation of the hotel. A three-week bench trial resulted in a no-liability defendant's verdict. Appellate proceedings in the New York Appellate Division and Court of Appeals affirmed the lower court rulings in defendant's favor.
ˇ Overnight Partners, et al. v. Ritz Carlton Hotel Co. Lead counsel in defense of $300 million "kitchen sink" action brought in the SDNY by the owners of the Ritz Carlton hotel properties located in New York, Washington DC, Houston and Aspen CO, against client Ritz Carlton. The case involved fraud, breach of contract, RICO, trademark and other claims brought by the Saudi group owners of those properties. After protracted pre-trial proceedings, the case settled on a basis whereby plaintiffs were stripped of their right to operate Ritz Carlton hotels.
ˇ In re Hylsa, S.A. v. M. W. Kellogg Co. Lead trial counsel for Grupo Industrial Alfa's steel company, Hylsa, SA, in ICC arbitration involving hundreds of millions of dollars in claims and technology issues relating to construction of "HYL Process" steel plants for SIDOR in Venezuela. After a series of ICC hearings, case was settled on a zero-liability basis to Hylsa.
Professional & Community Involvement
ˇ Member, American Bar Association
Awards & Recognition
ˇ Listed, Chambers and Partners USA Guide, an annual listing of the leading business lawyers and law firms in the world, Media & Entertainment: Litigation, (2005-2011) and Media & Entertainment: Copyright & Contract Disputes (2007)
ˇ Listed, Legal 500 US (2011)
ˇ Selected, Northern California Super Lawyers (2010-2011)
ˇ Selected, "Top 10 Copyright Lawyers," The Daily Journal (2007)
ˇ Selected, "Power Lawyers: Top 100 Outside Counsel," Hollywood Reporter (2007)
Articles, Publications, & Lectures
Articles
ˇ Author, "The Digital Millennium Copyright Act: Digital Performance and Ephemeral reproduction Rights Issues," International Jazz Archive Journal, Fall 2001
ˇ Author, "Pan-European Licensing of Music Performing Rights: Challenges, Opportunities and a Comparative Look at U.S. Experience," Telecommunications and Space Journal, Summer 1994
Lectures
ˇ Panelist, "After YouTube and Veoh: Have Courts (or Congress) Failed Creators or Struck the Right Balance?" National Association of Recording Merchandisers, Music Law Conference 2010, September 28, 2010
ˇ Panelist, "Use of Athletes' Images: An Active Area of Litigation and Licensing," Santa Clara Law 2010 Sports Law Symposium, Santa Clara University, September 16, 2010
ˇ Panelist, Arbitration Symposium, Singapore, January 24, 2002
ˇ Chairperson, "International Arbitration Across Three Continents," International Arbitration Symposium, New York, June 13, 2001
Interviews
ˇ The Business of Michael Jackson, Fox Business News, July 7, 2009