Scott J. Sholder

Scott J. Sholder

Partner, New York ssholder@cdas.com

Scott J. Sholder, Co-Chair of the firm’s Litigation group, focuses his practice on litigation, counseling, and dispute resolution in connection with entertainment, media, and intellectual property matters.  Scott represents and advises clients across various industries in copyright, trademark, right-of-publicity, unfair competition, domain name, and commercial and business disputes, as well as defamation defense.  He has appeared in federal and state courts around the country as well as administrative and arbitral tribunals and has handled cases from pre-suit negotiations through trial and post-trial procedures.  His clients range from major media and entertainment companies and A-list talent to closely held and startup businesses and individuals in need of advice on intellectual property or guidance concerning brewing or existing legal conflicts. Scott is a skilled advocate and understands the risks, benefits, and practical considerations inherent in these cases and knows how to make use of available leverage and industry knowledge to reach a favorable conclusion.  He utilizes a principled yet practical approach to litigation with an eye toward efficient resolution in line with the client’s business needs and financial realities.

A frequent writer and speaker on issues related to copyright and trademark in the entertainment and digital media space, Scott is a regular contributor to the CDAS legal blog as well as other major legal publications and has published several law review articles.  He has also authored several amicus briefs in the Courts of Appeal and U.S. Supreme Court addressing important and cutting-edge issues in copyright law.

Awards

  • Winner of “Americas Rising Star” Award for “Best in Media & Entertainment,” Euromoney Legal Media Group 2020
  • Named in “The Best Lawyers in America” for Copyright 2021
  • Named to “40 and Under Hot List,” Benchmark Litigation 2019
  • “New York Metro Rising Star,” New York Metropolitan Area Super Lawyers, 2014-2020
  • “Rising Star, Media & Entertainment,” Law360, 2018
  • Short-listed for “Best in Media & Entertainment,” Euromoney Legal Media Group’s inaugural “Americas Rising Stars Awards,” 2018

Publications

“Anything for Selenas? A Right of Publicity Case Study,” Landslide, ABA, November/December 2020

“Fair Use and First Amendment Defenses (Trademark Litigation)” Lexis Practice Advisor Practical Guidance, Fall 2020

“Pre-suit Considerations in Copyright Litigation”, Lexis Practice Advisor, Practical Guidance, Fall 2020

“Sohm v. Scholastic: Second Circuit Schools Litigants on Key Copyright Issues,” Bright Ideas, NYSBA, Fall 2020

Show the Tattoo: Video Game Company Free to Depict Inked Basketball Stars,” Digital Media Licensing Association, June 18, 2020 (co-authored with Nancy E. Wolff)

Content in Quarantine: Copyright Best Practices During a Pandemic, LAW360 Intellectual Property, LAW360 Media & Entertainment, and LAW360 Coronavirus, May 1, 2020

Copyright 2020 Law & Practice USA,” Chambers & Partners (co-authored with Nancy E. WolffSara Gates and Elizabeth Altman)

”Content in Quarantine: Copyright Best Practices for Pandemic”, Law360, April 30, 2020

”When Copyright Litigation Becomes a Business Model”, The Routledge Companion to Copyright and Creativity in the 21st Century (essay)

“Copyright 2020: Law & Practice,” Chambers & Partners (contributing author)

“Staying Safe in the Showdown over Digital Content Use Online,” GPSOLO (ABA, March/April 2019)

TVEyes and the Future of Technotainment,” Bright Ideas, NYSBA, Fall 2018

“Determining a Reasonable Licensing Fee for Purposes of Copyright Damage Awards,” Bright Ideas, NYSBA Spring/Summer 2018

Brammer v. Violent Hues Productions, LLC: Long Live the Right-Click License?”, MLRC MediaLawLetter, July 2018

DMCA 2.0: A Potential Shift in Safe Harbor Jurisprudence,” Law360 Expert Analysis, May 19, 2017

“Teachable Moments: A Year-in-Review of Best Practices in DMCA Compliance,” Inside, NYSBA Fall 2016

“Photo prints are expressive works entitled to First Amendment Protection,” Intellectual Property Magazine, July/August 2015

“Video Game Cases May Break New Right-Of-Publicity Ground,” Law360 Expert Analysis, Aug. 1, 2014

 “The Role of Volition in Evaluating Direct Copyright Infringement Claims Against Technology Providers,” Bright Ideas (published by the New York State Bar Association’s IP Section), Lead Article, Winter 2013 (co-author)

Briefs

Drafted amicus briefs on behalf of industry organizations in:
  • Canada Hockey, L.L.C. v. Texas A&M University Athletic Department (abrogation of sovereign immunity for state copyright infringers; 5th Cir. Court of Appeals)
  • State of Georgia v. Public.Resource.Org, Inc. (copyrightability of annotated legal codes; 2d Cir. Court of Appeals
  • Brammer v. Violent Hues (fair use in connection with photograph copied and displayed to illustrate commercial website; 4th Circuit Court of Appeals)
  • WNET v. Aereo  (legality of broadcast television retransmission over the Internet; U.S. Supreme Court during certiorari and merits stage)
  • .Kirtsaeng v. John Wiley & Sons, Inc. –(interpretation of Copyright Act attorney’s fee awards; filed with U.S. Supreme Court during merits stage on second appeal)
  • Oracle v. Google (fair use regarding use of computer code integrated into mobile phones; Federal Circuit Court of Appeals)
  • Viacom v. YouTube (secondary liability on the Internet; 2d Circuit Court of Appeals)
  • Fox News Network v. TVEyes (fair use regarding digitization of content for purposes of news aggregation; 2d Circuit Court of Appeals)
  • Fox Television Stations, Inc. v. FilmOn X, LLC (legality of broadcast television transmissions over the Internet; 9th Cir. Court of Appeals)
  • Cambridge University Press v. Patton (fair use in the context of mass digitization of books; 11th Cir. Court of Appeals).
  • Maloney v. T3Media, Inc. (intersection of First Amendment protection of artistic works and right of publicity; 9th Circuit Court of Appeals)
  • Authors Guild v. Google (concerning the legality of mass digitization of books; 2d Circuit Court of Appeals)

Speaking

  • “Implied License and De Minimis Use Defenses in IP Litigation: Raising and Contesting the Defenses,” Strafford Webinar (forthcoming March 25, 2021)
  • Faculty facilitator, breakout session regarding copyright, trademark and right of publicity, Media Law Resource Center (MLRC) Virtual Annual Conference, October 6, 2020
  • “Can You Do That? Copyright Litigation for Unauthorized Derivative Works,” ABA Webinar, Oct. 22, 2019

  • “Right of Publicity and Social Media,” ABA IP West Conference, Oct. 2, 2019
  • “Online Tension between Owners’ Rights and User Rights: Enforcement and Responsibility,” IPIC 93rd Annual Conference, Sept. 27, 2019
  • Moderator, “Small Ticket Items: Strategic & Ethical Considerations for Copyright Claims of Small Monetary Value,” CSUSA, September 12, 2019
  • “Derivative Works and Copyright,” Strafford webinar, June 18, 2019
  • Faculty facilitator, breakout session regarding copyright, trademark, and right of publicity, Media Law Resource Center (MLRC) Annual Conference, November 7, 2018
  • “Think Like a Lawyer, Talk Like a Geek 2018: Get Fluent in Technology,” Practising Law Institute (PLI), October 11, 2018
  • “Joint or Co-Ownership in Copyright: Works for Hire, Unique Considerations for Motion Pictures, Statute of Limitations, and Duration,” Strafford webinar, September 6, 2018
  • “Famous and Furious: Beer, Video Games, and Fantasy Sports vs. Celebrity Likeness,” ABA webinar, August 29, 2018
  • “Attorney’s Fee Awards in Copyright Litigation,” Mondo NYC, October 6, 2017
  • “Drawing the Line: Investigating Your Client’s Copyright Claims and Defenses and Avoiding Ethical Pitfalls in Infringement Actions,” CSUSA, September 27, 2017
  • “Right of Publicity Basics,” ABA webinar 2017
  • “No ‘Blurred Lines’ in the Judgment,” ABA webinar, 2016
  • “The Ethics of Enforcing Your Copyright,” CSUSA, October 14, 2016
  • “Copyright Litigation Hot Topics,” New York City Bar Association, September 2014, 2015
  • Moderator, Entertainment Litigation Strategies Panel, CMJ Business Law Seminar, October 2014

Associations & Activities

  • Media Law Resource Center (MLRC), Co-Chair of Media, Copyright & Trademark Committee
  • Copyright Society of the USA (CSUSA), Planning Committee
  • American Bar Association (ABA) Section of Intellectual Property, inaugural Chair and current Vice-Chair, Right of Publicity Committee
  • New York State Bar Association
  • New York City Bar Association

Representative Matters

Copyright and Trademark Litigation
  • Representing world-renowned interactive art collective in copyright litigation against copycat exhibition.
  • Defended production company against copyright claim brought by producer who wrongly claimed to own documentary footage.
  • Representing prestigious photo agency in copyright litigation against music artist who used an iconic photograph as an album cover and on merchandise without consent.

  • Defended author in trademark litigation over title of book series; defeated TRO motion aimed at halting publication of author’s new book.
  • Defended legendary rock musician against copyright infringement claim related to a song performed during a famous MTV broadcast.
  • Defended famous music star in a high-profile copyright infringement claim involving a record company’s logo.
  • Defended major sports league and member team in a trademark dispute concerning the member team’s name.
  • Representing top E-Sports team in trademark litigation with apparel manufacturer; achieved favorable settlement on the eve of trial.
  • Defended Manhattan hotel owners and investors against trademark infringement claims brought by Nashville restaurant.
  • Defending owners and operators of various pop culture news websites against copyright infringement claims by paparazzi photograph aggregators and copyright “trolls”; secured fair use dismissals and attorney’s fee awards resulting from frivolous claims.
  • Represented online travel booking website in trademark infringement action against competitor using website’s registered marks as search engine advertising keywords.
  • Defended software developer in copyright infringement action relating to 3-D modeling apps.
  • Secured favorable settlement on behalf of estate of legendary experimental jazz artist whose musical compositions were being exploited without permission or compensation.
Digital Media, Media Defense, and Domain Name Disputes
  • Representing online content producers in disputes concerning linking and embedding of content.
  • Providing counseling and legal defense on behalf of major social media and online news outlets against various copyright, defamation, and false light claims, including responding to claim letters, settlement negotiations, and litigation defense.
  • Defended political action committee against defamation claim by subject of a press release.
  • Securing removal of infringing user-generated content on social media websites and pirate sites through use of DMCA procedures.
  • Defended operator of popular consumer complaints website against defamation claims.
  • Secured dismissal with prejudice of federal and state lawsuits against major media company asserting claims of false light, infliction of emotional distress, and tortious interference in connection with online articles and radio/video interviews.
  • Securing the transfer of infringing domain names from cybersquatters on behalf of music artists, television/film talent, photographers, game designers, and fashion designers through UDRP procedures.
Right-of-Publicity and Privacy Disputes
  • Defending famous director/writer/actor and production company in right-of-publicity claim.
  • Represented leading Irish folk dancer in right-of-publicity claim against major talent management firm for using name and likeness for advertising purposes.
  • Secured dismissal of a right-of-publicity claim against a fine art photographer by subjects of photographs, and affirmance by the New York Appellate Division First Department.
  • Reached a favorable settlement for major stock content licensor in a lawsuit dealing with improper end uses of a photograph depicting the plaintiff which had been submitted with a falsified model release.
  • Secured dismissal of right-of-publicity, breach-of-contract, and fraud claims against a photographer when photographs of model appeared on adult websites in violation of EULAs and without knowledge of the photographer.
  • Handling disputes concerning model releases in connection with digital image licensing.
  • Asserting claims on behalf of subjects whose likenesses were used without consent or beyond the scope of releases or license agreements.
General Media and Entertainment Litigation and Counseling
  • Defended theater producer in a contract litigation arising out of force majeure cancellations of live productions.
  • Represented foundation of famous pop-culture artist against former exclusive agent and dealer for copyright and contract breaches; secured significant judgment after summary judgment and damages trial.
  • Represented mystery writer in contractual fight with co-author; achieved favorable settlement.
  • Represented international film sales agent in arbitration and federal litigation against distributors who failed to pay minimum guarantees or secure financing; secured complete victory in two-day arbitration and favorable settlement in federal court case.
  • Representing classical music management company in dispute over whether employment agency license is required; first-chairing multi-week bench trial.
  • Providing counseling and advice and engaging in settlement negotiations on behalf of film, digital media, and television producers dealing with various contract disputes with co-producers, financiers, directors, editors, and talent.
  • Providing counseling and advice, and settling disputes concerning various commercial contract claims, including over unpaid commissions, fees, and royalties, improper termination, and unfulfilled advertising and marketing commitments.
  • Representing various media and entertainment companies in connection with third-party subpoenas for the production of documents and depositions.
General IP Advice and Strategy
  • Conducting trademark searches, clearance, and risk assessments.
  • Registering trademarks with USPTO.
  • Handling office actions, oppositions, and other TTAB proceedings.
  • Providing counseling in connection with various copyright issues, including assessing public domain status of works, fair use of copyrighted works, registration, and protectability of new works.