Monthly Archives: May 2015

Music Copyrights

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When you talk about copyrights in the music industry, at least two different copyrights exist.  There is a copyright in the lyrics and/or music of the song [the musical composition], and a separate copyright in the recorded version(s) of the song [the sound recording(s)].  If you record or re-record a song (your own or a cover of someone else’s), the copyright in the lyrics and music would remain the same, but there would be a new copyright in each new sound recording. 

musician shows classical guitar and flower music

Copyright in Music and Lyrics

Under the U.S. Copyright Act, everyone that contributes to the songwriting has a claim to the copyright.  Regardless of how much or how little you contribute, the Copyright Act considers all contributors to the same song to be joint authors (a.k.a. co-authors).  Each joint author owns an indivisible share to the entire copyright, unless there is a written agreement stating otherwise between all of the contributors (or any non-contributors).  Therefore, each co-author can do what he wants with the copyright as long as he pays the other co-author(s) an equal share of the proceeds.  Copyright ownership of a song can be very profitable, as songwriters receive money from publishing.  (Sometimes, songwriters assign their copyrights to music publishers to exploit the songs and administer the rights.)

Copyright in Sound Recordings

Technically everyone that contributes to the recording has a claim to the sound recording.  However, usually whomever pays for the recording (usually a record label) owns this copyright through a contract.  The songwriter will own the copyright in the lyrics and music, but the record label will own the copyright in the sound recording.  If the artist pays for the studio time, then the musicians who play on the recording will jointly own the copyright to the sound recording unless this is a written contract to the contrary.  

If the same person or group of people own the copyright in one or more musical compositions as well as the resulting sound recordings, then both copyrights can be protected on one copyright application.  If the owners are different, then separate copyright applications will need to be filed for the musical compositions and sound recordings.

 

Band Agreement Checklist: What’s the Deal?

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Are you a musical artist performing and collaborating with other musicians?  If so, then you should have a written agreement between the members of the group addressing, at least, the issues in the checklist below.  You might even want to consider forming a corporate entity for your group, which will protect your individual assets from liability related to group activities and address the issues below as well.  (Note:  A solo artist can benefit from the protection of a corporate entity.)dance-patry_1100012046-012914-int

A Band Agreement is to a band what a prenup is to a marriage or a will is to an individual…it addresses some important (and sometimes difficult) issues so a plan is in place — outlining how things will go, who is responsible for what, and who gets what — just in case the unexpected or unimaginable happens.  The Band Agreement should be negotiated towards the beginning of the relationship, when everyone is happy with everyone else.  Perhaps even more importantly, if your band doesn’t have its own written agreement, then state or federal laws may determine your band’s business relationship by default.  As with most relationships, if you wait until there are problems (or your band starts making money), it could be much more difficult (if not emotionally and financially draining), if not impossible, to resolve these issues.    

Band Members                                                                                                                                  

  • Who are the members of the band?
  • Is one or more band member(s) the “owner” of the band and the other “band members” really just employees or hired hands?
  • What happens when a new member is hired or an existing member leaves the band?
  • How can band members be fired?
  • Can a member quit at will?
  • What if a member becomes disabled or dies? (This may be important so surviving spouses/parents are(n’t) involved with the group’s business.)
  • What are the members’ responsibilities, relationship, etc.?
  • What is required of each member?
  • Does a member need permission from some or all of the other members to perform with another group while he’s a member of the band?
  • What if the band breaks up or decides to go their separate ways?

Money                                                                                                                                                

  • Who will pay/get paid for what?
  • How will band profits/debts be distributed? (Royalties, performance fees, etc.)
  • Do some members receive/contribute more than others?
  • Who will keep track of band monies?
  • What will happen when one band member contributes more time/money than expected?
  • Will band members receive payment for projects completed and/or be responsible for debts incurred prior to leaving? (Does this change depending on whether the person leaves or is removed?)
  • Does the band have to “buyout” the leaving member?

Acquisition of Assets                                                                                                                         

  • How will the band acquire gear/assets? (Instruments, PA system, lights, van, merchandise, website/domain name, social media accounts, etc.)

Business Decisions                                                                                                                             

  • How will band business decisions be made? (Hiring/firing lawyers, managers, agents, spending band money, signing with a record label, etc.) Majority vote? Unanimous vote? Veto power? Tie-breaker? Majority vote for some decisions and unanimous vote for others?
  • How can the band agreement be changed?

 Creative Decisions                                                                                                                             

  • Who owns the songs band members write? How is songwriting credit determined? Will the Band Agreement govern this issue, or will ownership be determined on a song-by-song basis in a separate songwriting split acknowledgement? (Note: You may want to seek advice on copyright law prior to deciding this, as those who write the songs get the publishing royalties. By the way…the U.S. Copyright Act will determine this if you don’t agree on the splits in a signed document.
  • Who decides which songs to perform/record?
  • Who decides what gigs to play?
  • Who decides if everyone has the same haircut and wears the same outfit on stage?

Band Name                                                                                                                                        

  • Who owns the band name?
  • How about websites/domain names, social media accounts and other media related to the band?
  • What happens to the band name if the band breaks up or a band member quits/is fired?
  • Who, if anyone, can still perform using the name? (Everyone must still be involved? The key player(s)/founder(s) must still be involved? No one can use the name?) (Note: You may want to seek advice on trademark law prior to deciding on a name and/or to determine if you want to apply for a federal trademark registration for the name.)

Corporate Entities                                                                                                                             

  • Partnership – Partnerships are easier to set up, but expose you and your personal assets to liability. You may want to start as a partnership and convert to a corporation once things get going. (Note: Unless a band has formed a corporate entity or created a written partnership agreement, state partnership laws will govern the bands’ business relationship.)
  • Corporations and Limited Liability Companies – Corporations are somewhat more expensive to set up, but provide more protection and shelter your personal assets. A Limited Liability Corporation (LLC) provides the flexibility of a partnership with the limited liability of a corporation.

This checklist provides some business and legal issues you should consider if you are engaging in activities in the music business as a musical performing artist.  However, the list is not exhaustive, is not necessarily in any particular order, and not every item on this list is necessarily appropriate for your particular situation.  Please consult with an Attorney who has music industry experience for advice regarding your particular needs and issues.  You may also want to engage the services of a Certified Public Accountant (CPA) to help you with tax preparation and entity-related decisions.

 

Copyright Protection Doesn’t Monkey Around

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The U.S. Copyright Office released an updated 1,222-page “Compendium of U.S. Copyright Office Practices, Third Edition” in 2014 clarifying its position that it “will register an original work of authorship, provided that the work was created by a human being.”  The report goes on to state that “[t]he Office will not register works produced by nature, animals, or plants.  Likewise, the Office cannot register a work purportedly created by divine or supernatural beings, although the Office may register a work where the application or the deposit copy(ies) state that the work was inspired by a divine spirit.”  The report provides examples of works that will not be protected by copyright, and the first example is “A photograph taken by a monkey.”

Macaca_nigra_self-portrait_(rotated_and_cropped)

The report was originally released weeks after wildlife and nature photographer David Slater claimed that Wikimedia was infringing his copyrights in the “selfies” taken by macaque monkeys in Indonesia by allowing the pictures to be posted in Wikimedia Commons, a library of public domain photos.  Wikimedia refused to remove the images because it believed the monkey was the photographer, and, therefore, the “author” of the photo…and, as non-humans can’t own copyrights, the photo was in the public domain.  Slater argued that he staged the shot and set up the selfie intentionally, so it’s irrelevant that the monkey pressed the shutter (likening the monkey to an assistant).

Although Slater is still claiming copyright ownership in the photos and could file a lawsuit against Wikimedia (as UK or European law may allow Slater to claim ownership if he employed “labour, skill and judgment” in connection with the photographs or they were part of his “intellectual creation”), he is currently offering free canvas prints of the monkey selfie and donating money to the Sulawesi Crested Black Macaques Conservation Programme for each print redeemed.

 

Social Media Terms of Use – Is Your Brand Following the Rules?

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Advertisements and promotions on social media channels are a daily occurrence.  In addition to complying with traditional advertising rules and regulations, brands need to comply with each social media channel’s Terms of Use and advertising-specific rules.

NBC recently ran afoul of Facebook’s rules when it posted a three-minute clip from the latest episode of Saturday Night Live that began with a five-second ad for Subway.  The rules state that “Third-party advertisements on Pages are prohibited, without our prior permission.”  In other words, video clips with ads not sold by Facebook are not allowed…unless a brand enters into an agreement similar to typographic-poster-design-i-have-read-and-accept-the-terms-and-conditions_GJfTZN_dFacebook’s deal with the NFL that allows brands to run ads after clips are shown and gives Facebook takes a piece of the ad revenue.  Earlier this year, Facebook launched Anthology, which connects brands and digital media publishers (like Funny or Die, The Onion and Oh My Disney) to create branded content to be targeted and optimized through Facebook.

The Terms of Use and related policies for each social media channel (Twitter, Instagram, Facebook, etc.) can differ greatly and tend to change frequently. The Terms of Use often contain guidelines or rules for advertising and hosting contests, sweepstakes and other promotions through the social media channel, ownership and (restrictions on) use of content, rules (and prohibitions) for using native functionality (e.g., “share on your Timeline to enter”), and other important information. Some social media channels, such as YouTube, require you to obtain written permission from them before you can post ads or product placements.

Before your brand posts content on a social media channel, be sure to check the rules on each channel to make sure you’re in compliance.

 

Protecting Your Marks Outside of the United States: Foreign Trademark Priority Filings

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Trademark protection is geographic in scope…meaning that a trademark is only protected in the geographic area(s) (state/region/country) in which the mark is used or registered.

earth globeA United States trademark application or registration with the United States Patent and Trademark Office (“USPTO”) does not protect a trademark in any foreign country.  However, U.S. trademark applications and registrations can be used to obtain trademark protection in other countries and vice versa.

Six-Month Priority Foreign Filings

If the foreign trademark application is filed within six months of the U.S. application, the foreign application can claim “convention priority.”  This means that the foreign application will be treated as if it was filed on the same day as the U.S. application.  Nearly all countries are members of the Paris Convention, which put this rule in place.

“Claiming priority” in this six month window can prove to be a major advantage by providing you with the earliest possible filing date for your mark.  If other applicants file similar marks after that priority date, they will be rejected or suspended. In other words, your application will receive priority over applications filed after not only your actual filing date, but also over applications filed between your actual filing date and your priority date.

Taking advantage of priority foreign filings also allows you the opportunity to spread out the costs associated with trademark filings over a six-month period and gives you time to assess your international brand protection strategy without sacrificing any protection…which can be significant, especially for a new venture or brand.

Foreign trademark applications filed after this six-month “priority” date take the actual dates on which they are filed.

Other Cost-Saving Measures and Strategies

In many cases, there are mechanisms available that provide efficient and cost-effective ways of obtaining protection for your brand simultaneously in multiple countries.  For example, the Madrid Protocol allows a trademark owner to seek protection in any of the almost 100 member countries by filing one application and designating as many member countries as it chooses.  It is also possible to file a single Community Trade Mark (“CTM”) application for a trademark covering all of the countries in the European Union.  You can designate the EU/CTM in your Madrid Protocol application.

 

What’s in a (Brand) Name?

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writing brand concept

Choosing a name for your company, creative project, product or service is just as important as (and often more difficult than) naming a child or pet. Brands are so important that many big companies spend hundreds of thousands of dollars and months or even years on research, focus group testing and the like in attempts to find just the right name or logo for a new product or service.

Your brand distinguishes your products and services from your competitors’ products and services. But a brand is much more than just a name or logo.  Your brand also serves as a symbol of the quality, value, and reputation which customers and fans expect in products you sell and services you provide…not to mention the emotional connection customers and fans can develop with your brand.  For example, if we’re talking about driving a Beetle or listening to The Beatles, you probably don’t just think “car” or “band.”  Instead, you likely have thoughts and emotions related to your experiences with and perceptions of those brands — whether positive or negative.

With so much at stake, choosing a name that will resonate with your customers and fans and convey information about your product or service is important.  When brainstorming a name for your company, creative project, product or service, remember that not all brands are created equal … particularly when it comes to trademark protection.

Brands — also known as Trademarks (used on products) and Service Marks (used in connection with services) — include any word, name, symbol, or device, or any combination of these, used, or intended to be used, in commerce to identify and distinguish the goods or services of one entity from those sold or provided by others, and to indicate the source of the goods or services. Trademarks can include entity names, product names, logos, domain names, 800 numbers, slogans, phrases and tag lines, character names, band names, jingles, and trade dress, such as product configurations, color, packaging and store designs.  

The best marks are memorable, appealing and elicit desired responses.  The ultimate goal should be to find a mark that is uniquely yours — a mark that is not confusingly similar to an existing mark used for similar products or services (i.e., someone else beat you to the punch), one that suggests some connection with another organization or famous person, or one that consists of a person’s last name.  And it can take a village of marketing, artistic, business and legal types to find that perfect mark.

While searching for that perfect mark, you should keep in mind that some marks are stronger than others…

  • Generic terms are common names for products or services, such as SALT when used in connection with sodium chloride or THE CHOCOLATIER for a store providing chocolate candy.  These terms can never be protected as trademarks.
  • Descriptive marks describe an ingredient, quality, characteristic, function, feature, purpose or use of the product or service, such as SALTY used in connection with crackers or DALLAS.COM for a website providing tourism information about Dallas.  These marks are not initially protectable unless the owner can show that the mark has gained “secondary meaning” or “acquired distinctiveness” (proof that the mark has become distinctive of the mark owner’s goods or services) in the marketplace over time through extensive and substantially exclusive use.
  • Suggestive marks suggest some characteristic or nature of the product or service and require imagination, thought or perception to reach a conclusion as to the nature of those products or services, such as COPPERTONE for suntan lotion or BLOCKBUSTER for a video rental store. Although there can be a fine line between descriptive and suggestive marks, suggestive marks are automatically protected as trademarks because they are “inherently distinctive.”
  • Arbitrary marks are very strong marks because they have no relation to the product or service, such as APPLE for computers.   However, because these are real words, other companies may have also adopted the words as marks, such as APPLE VACATIONS.
  • Fanciful/coined marks are the strongest marks because they are made up words, such as XEROX for copiers or EXXON for gasoline, and consumers only associate the mark owner with selling that service or product.  

From a trademark protection perspective, fanciful/coined, arbitrary or suggestive marks are preferable to descriptive (protectable with acquired distinctiveness) or generic (never protectable) marks.  Many company, product and service names tend to be descriptive or suggestive because business owners attempt to quickly choose names that help consumers easily identify their products or services.  However, the more creativity you use in the naming process, the stronger the mark and the more likely you are to prevent third parties from being able to use the same or similar mark on similar (or even unrelated) products and services.

Before using or registering a name for your services or products, you should, at the very least, perform a quick “knockout” availability search to see if a third party may already be using the same or similar mark in connection with the same or similar products or services.  You should:

  • Check for entity names and state trademark registrations with Secretary of State Offices where business will be done.
  • Search the U.S. trademark database.
  • Perform a Google search to determine whether third parties have common law rights to the name.
  • Perform a WHOIS search to determine whether domain names are available (as brands typically want a corresponding web presence).

A mark is one of the most important words, phrases or designs you will use to represent your products or services to the world.  Although selecting a name may seem simple, trademark law is very nuanced and is often much more complex than it appears. Therefore, I believe it is a wise investment of resources to engage a trademark attorney to perform more sophisticated searches to determine whether your mark is available and inform you as to the potential risks associated with use and/or registration of your proposed mark.  (Note:  You can save yourself some time and money by performing knockout searches for your potential marks before asking an attorney to search a particular mark more thoroughly.)

Choosing a mark that’s already being used by a third party can result in cease and desist letters and trademark infringement lawsuits…potentially requiring you to abandon use of the mark, destroy all products and materials that depict the mark, and potentially even paying the third party mark owner profits gained from infringing uses of a mark as well as damages the mark owner may have incurred from such infringing use.  The last thing you want to do after spending a bunch of money to print business cards, stationery, packaging, advertising and goodness knows what else emblazoned with your mark is having to scrap everything and start from scratch with another mark.

Hiring a lawyer to guide you during the mark selection process can save you (potentially hundreds of) thousands of dollars and several headaches down the road.