Emilio B. Nicolas

Representative Litigation Matters

Intellectual Property & Entertainment Dispute Resolution:

• Defense of photographer in the “Nirvana Baby” album cover case. The trial court dismissed all claims with prejudice because they were time-barred. The case is currently pending on appeal to the Ninth Circuit Court of Appeals.
• Defense of music copyright infringement suit brought against major television network and advertiser. Emilio and his team successfully bifurcated discovery and obtained favorable deposition testimony, which led to the voluntary dismissal of all claims with prejudice.
• Defense of music rights ownership suit between the publishers of Tejano music catalogs. Emilio obtained a favorable settlement for his client after early mediation.
• Defense of music copyright infringement suit brought by a performance rights organization (PRO) and several music publishers against a restaurant group for the unlicensed public performance of PRO-affiliated songs. Emilio obtained a favorable settlement for his client shortly after answering the lawsuit.
• Successful enforcement of a top-tier fashion house’s copyright-protected dress designs and artwork.
• Defense of multiple photo copyright claims asserted against various websites and other online publishers, with early favorable settlements, releases, and/or dismissals.
• Successful representation of a production company in its breach of contract and accounting rights suit against an independent film distribution company.
• Favorable resolution of a film rights arbitration before The Independent Film & Television Alliance (IFTA). Emilio’s litigation strategy and performance helped his film producer client confirm exclusive ownership and control of the disputed rights to a documentary film.
• Favorable pre-suit resolution of font copyright infringement claims alleged against live event company.
• Part of trial team for defense of copyright infringement claims against an internet service provider. Jackson Walker developed evidence supporting Digital Millennium Copyright Act (DMCA) safe harbor defenses and counterclaims for fraud that forced a settlement below the amount previously offered by the client and prior to costly trial preparation.
• Early favorable settlement of claims against Amazon sellers alleging the sale of counterfeit goods. Jackson Walker negotiated favorable settlements early in the litigation.
• Part of appellate team in music copyright ownership dispute before the Fifth Circuit Court of Appeals. The Fifth Circuit affirmed the trial court’s ruling in favor of Jackson Walker’s client.
• Obtained dismissal of a lawsuit against the Austin photographer behind Nirvana’s “Nevermind” album cover that accused the album’s creators of commercializing child pornography.

Local Counsel:

• Local counsel in successful defense of copyright infringement suit against major book publisher for the alleged unlicensed use of photographs in publications.
• Local counsel in defense of music copyright infringement suit brought by local songwriter against major performing artist, music publishers, and record labels. The case was voluntary dismissed with prejudice.
• Local counsel in defense of trademark infringement and counterfeit claims against major book publisher alleging unauthorized use of book title and other associated marks. The case was voluntary dismissed with prejudice.

Other Dispute Resolution Matters:

• Part of the trial and appellate team for a Lehman Brothers bankruptcy adversary proceeding. Lehman Brothers sought to claw back roughly $1 billion in payments made to the 250 noteholders of certain synthetic collateralized debt obligations (CDO).  Emilio was part of the noteholder defense group’s thought leadership; and the defense group obtained a complete Rule 12(b)(6) dismissal of all claims from the Bankruptcy Court for the S.D.N.Y.  Both the S.D.N.Y. and the Second Circuit affirmed the dismissal of all claims.
• Part of the trial team for a dispute over the boundaries and ownership of a tract of lakefront property. Jackson Walker’s client was awarded ownership and a declaration of rights to the real estate, as well as attorneys’ fees.
• Part of the trial team in a highly litigious adversary proceeding before the Bankruptcy Court for the W.D. Tex. Representing the debtor, a nonprofit children’s hospital, Emilio’s ability to obtain favorable deposition and hearing testimony and to discredit the other side’s allegations was instrumental to the Bankruptcy Court’s confirmation of a plan of reorganization approximately seven months after the Chapter 11 filing, with the plan including payment in full of the general unsecured creditors.
• Successful enforcement of state law claims on behalf of a major telecommunications service provider against various entities for negligently cutting subsurface telephone and data lines during construction efforts.
• Favorable resolution of post-closing, pre-litigation dispute over the scope of confidential and proprietary data sold pursuant to an energy facility acquisition agreement.

Representative Transactional Matters

Intellectual Property Transactions:

• Copyright, trademark, and right of publicity registration and maintenance work.
• Advise clients on IP rights management and monetization issues.
• Review, prepare, and negotiate various IP rights agreements, including:
  • IP asset purchase agreements, transfers, and assignments;
  • copyright license agreements;
  • trademark license agreements, co-existence agreements, and consent to use agreements; and
  • non-disclosure agreements.
• Due diligence for IP rights issues in M&A deals.
• IP and media rights issues training for marketing and in-house legal departments.

Entertainment and Media Rights Transactions:

• Pre-publication review and rights clearance work.
• With the help of Jackson Walker’s Corporate & Securities group, assist financiers in their due diligence and review of film investment and film finance deals.
• Review, prepare, and negotiate:
  • media releases, including personal releases and location releases;
  • license agreements for music, video clips, photographs, artwork, and other content; and
  • book publishing agreements.

Information and Technology Transactions:

• Working with Jackson Walker’s Cybersecurity, Data Protection & Privacy group, assist clients with the development of e-commerce and data privacy related strategies and solutions for their products and businesses.

• The Best Lawyers in America (Woodward/White Inc.), 2021-2023
  • Copyright Law, 2021-2023
  • Entertainment Law – Music, 2023
  • Litigation – Intellectual Property, 2023
  • Trademark Law, 2023
• “Austin’s Top Attorneys” List – Intellectual Property Rights, Austin Monthly, 2021
• “Texas Rising Star,” Super Lawyers – Rising Stars by Thomson Reuters, 2012-2016

Publications

• View Emilio’s articles published on the Jackson Walker website »
• “‘Let My People Go…to Delaware’ – Paupers, Vagabonds and Fugitives from Justice Excepted,” American Bankruptcy Institute Journal (March 2013)
• “Online Copyright Infringement: Minimizing Exposure to Individuals and Small Businesses That Operate on the Internet,” The Advocate 40, Vol. 45 (Winter 2008)
• “Non-Human Persons and the Right of Publicity,” Media Law Resource Center Bulletin 61, No. 4 (December 2008)
• “Keyword Search Advertising: Whose Name Is It Anyway?,” ABA Forum on Communications Law – Communications Lawyer, Vol. 25, No. 2 (2007)
• “The Perils of Keyword Search Engine Advertising,” Association of Corporate Counsel – Austin Chapter Newsletter 3, Vol. 4 (2007)
• “Why the Ninth Circuit Added Too Much To Subtract Add-on Software From the Scope of Derivative Works Under 17 U.S.C. § 106(2): A Textual Argument,” 2004, Syracuse Sci. & Tech. L. Rep. 1 (2004)

Speaking Engagements

• “Legal Issues in Artificial Intelligence for the Entertainment Industry,” State Bar of Texas Entertainment & Sports Law Section’s Entertainment Law Institute (November 2021)
• “Rights Clearance for Film,” State Bar of Texas Entertainment & Sports Law Section’s Entertainment Law Institute (November 2021)
• Moderator, “The CASE Act: What You Need to Know About the New Copyright Small Claims Board,” ABA Intellectual Property Litigation Committee Roundtable (May 2021)
• Guest lectured for the fall 2019 IP Transactions course at UT School of Law
• “Hot Topics in Video Game Law,” Austin Bar Association Entertainment & Sports Law Section CLE (March 2015)
• “They’re Not Just for Kids: Video Games and the Future of Soft IP Law,” American Bar Association Intellectual Property Litigation in Texas: Video Games, Damages, Patents and the Supreme Court (February 2015)
• “Music and the Right of Publicity,” Austin Bar Association (December 2013)
• “Hot Topics in Video Game Law,” State Bar of Texas Annual Meeting (June 2013)
• “NY Chapter: Game On! Video Game Clones and Killer IP,” New York Chapter of the Copyright Society of the U.S.A. (March 2013)
• “What You Need to Know NOW About Video Game Law,” Copyright Society of the U.S.A. Mid-Winter Meeting (February 2013)
• “Lights! Camera! Transaction! Entertainment Law for the Everyday Practitioner,” Hays County Bar Association (April 2012)
• “How to Conduct Business in the U.S. – Legally,” UKTI Interactive Master Class (March 2012)
• “International Entertainment Litigation: The Challenges of Practicing Abroad,” Texas Review of Entertainment & Sports Law (February 2012)
• “Arbitration of Entertainment Disputes,” ABA CLE Webcast (April 2011)
• “Legal Frontiers In Social Networks, Blogs and Beyond,” SXSW (March 2011)
• “Copyright/Trademark Issues: A Primer,” Texas State Bar CLE Webcast (January 2010)
• “Your Band as a Business,” Austin Music Foundation Music Law Essentials (August 2009)
• “International Intellectual Property Rights Workshop,” Jackson Walker Austin Office (May 2009)

In the News

• “Austin lawyers with Jackson Walker win Nirvana ‘Nevermind’ album cover lawsuit,” Austin Business Journal (September 2022)
• “Judge dismisses lawsuit over Nirvana’s ‘Nevermind’ cover,” Austin American-Statesman (September 2022)

• Austin PBS, KLRU-TV
  • Board Member, 2022-Present
• The University of Texas School of Law
  • Adjunct Professor – Trademark Law, Spring 2023
• Texas Bar Foundation
  • Life Fellow, 2019-Present
• American Bar Association’s Intellectual Property Litigation Committee
  • Co-Chair of Copyrights Subcommittee, 2020-2022
  • Co-Chair of Regional CLE Subcommittee, 2014-2020
• Copyright Society of the USA
  • Trustee, 2015-2017
  • Texas Chapter Co-Founder, Chair and Vice-Chair, 2014-2016
  • Member, Programming Committee for 2020 Mid-Winter Meeting
• Texas Accountants and Lawyers for the Arts
  • Board Member, 2013-2015
• State Bar of Texas Entertainment and Sports Law Section
  • Council Member, 2010-2014