Emilio B. Nicolas

• Entertainment, media, and intellectual property litigation. Examples include intellectual property rights ownership and royalty disputes, copyright infringement, trademark infringement, domain name disputes, misappropriation of the right of publicity, invasion of privacy, defamation, and breach of contract, as well as proceedings before the United States Patent and Trademark Office and the Trademark Trial and Appeal Board.
• Copyright, trademark, and right of publicity protection, registration, licensing, and enforcement.
• Intellectual property rights management and clearances.
• Due diligence of intellectual property assets in M&A deals.
• Pre-publication review of entertainment and media industry works, including motion pictures, television programs, video games, website and mobile app content, and advertisements.
• Prepare, review, and negotiate entertainment and media industry agreements with a focus on film, television, video games, book publishing, and digital, including:
  • film and television production, distribution, and finance agreements;
  • video game publishing agreements;
  • book publishing agreements;
  • music licensing agreements;
  • multi-channel network and multi-platform network content partnership and distribution agreements;
  • event production, sponsorship, and marketing agreements;
  • endorsement and influencer marketing agreements;
  • advertising and branded entertainment agreements;
  • media releases, including appearance releases, and location and access agreements; and
  • copyright security and mortgage agreements.
• Prepare, review, and negotiate agreements related to content, data, and technology properties for clients in various industries, including:
  • general intellectual property ownership, sale, and license agreements;
  • software development, publishing, maintenance, and license agreements;
  • website development and hosting agreements;
  • non-disclosure agreements; and
  • e-commerce agreements.
• Provide counsel on website and mobile app terms of service, privacy policies, and related electronic and e-commerce agreements and policies.
• Provide counsel on text messaging issues related to the Telephone Consumer Protection Act (TCPA).

• The Best Lawyers in America (Woodward/White Inc.)
  • Copyright Law, 2021
• “Texas Rising Star,” Super Lawyers – Rising Stars (Thomson Reuters), 2012-2016

Publications

• “What Are the Chances of Recovering a Trademark Infringer’s Profits? Recent Opinions by the Supreme Court and Fifth Circuit Provide Some Answers” (April 2020)
• “Congress Makes the “CASE” for a New Copyright Tribunal, While Dissenters Express Concern” (December 2019)
• “Two New Supreme Court Decisions Alter the Landscape for Litigating Copyright Infringement Cases” (March 2019)
• “So Far, So Good? The DMCA Safe Harbors at Twenty” (September 2018)
• “Internet of Things Part 3: How Your Smart Toothbrush Is An Idea Worth Protecting” (September 2018)
• “California Passes GDPR-Lite: Strictest Privacy Law in United States” (July 2018)
• “Last Call: Your Q4 DMCA Agent Designation Reminder” (October 2017)
• “Coming Into Focus: Recent Decisions Help Define the Scope of Right of Publicity Claims” (August 2017)
• “Upon Further Review: Supreme Court Ruling Means “Redskins” Trademark Registrations Are Still In Play” (June 2017)
• “New Law Necessitates Online Privacy Audits and Updates – What You Need to Consider Now If You Have a Website, Online Service or Mobile App” (January 2014)
• “‘Let My People Go…to Delaware’ – Paupers, Vagabonds and Fugitives from Justice Excepted,” American Bankruptcy Institute Journal (March 2013)
• “Beware: Twitter-Squatting and Its Successors,” TechLaw e-Alert (January 2010)
• “Online Copyright Infringement: Minimizing Exposure to Individuals and Small Businesses That Operate on the Internet,” Vol. 45, The Advocate 40 (Winter 2008)
• “Non-human Persons and the Right of Publicity,” 2008, No. 4, Media Law Resource Center Bulletin 61 (December 2008)
• “Keyword Search Advertising: Whose Name Is It Anyway?,” Vol. 25, No. 2, ABA Comm. Law 7 (2007)
• “The Perils of Keyword Search Engine Advertising,” Vol. 4, Association of Corporate Counsel – Austin Chapter Newsletter 3 (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

• 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 (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,” (May 2009), Jackson Walker LLP – Austin

• American Bar Association’s Intellectual Property Litigation Committee
  • Co-Chair of Copyrights Subcommittee, Since 2020
  • Co-Chair of Regional CLE Subcommittee, 2014-2020
• Copyright Society of the USA
  • Past Trustee
  • Member, Programming Committee for 2020 Mid-Winter Meeting
• Texas Bar Foundation, Member & Life Fellow