Emails Create Binding Transfer of Copyright Interest, Court Finds

November 18th, 2011

Earlier this month, in Rafael Vergara Hermosilla v. The Coca-Coca Company, the 11th Circuit held that a chain of email correspondence created a valid and binding contract of copyright assignment.

The facts begin in 2009.  Coca-Cola created an advertising campaign for the 2010 FIFA World Cup soccer tournament, which featured a new version of the K’naan song “Wavin’ Flag,” the “Celebration Mix,” sung in different languages.  To produce the Spanish version of the Celebration Mix, Coca-Cola enlisted Jose Puig of Universal Music Latin America.  Puig, based on a recommendation from Rafael Artero of Universal Music Publishing Group, reached out to the plaintiff, Vergara, to adapt the lyrics of the song to Spanish.  Vergara knew he would need to negotiate his interest in the adaptation but assumed this would happen after the adaptation was completely.

Vergara adapted the Celebration Mix into Spanish and sent Puig the lyrics and a demo of the song with the Spanish lyrics.  Following Coca-Cola’s approval, Vergara created and delivered to Puig the final production of the song in December 2009.

The following month, Vergara invoiced UMP $6,000 for his production work and UMP began negotiating with the owners of the composition for an “adapter’s share” of the profits for Vergara.  In February 2010, iTunes Mexico began selling the Spanish Celebration Mix without any credit to Vergara for the Spanish adaptation.  The composition owners refused to grant an adapter’s share to Vergara, at which point Vergara threatened to file a lawsuit.

Puig and Vergara negotiated a settlement and confirmed the details via email.  Vergara stated in an email on March 4, 2010 to Puig and Artero that his “only demand” was that his “name as an adapter . . . [was listed] every time the name of any composer of [the Spanish Celebration Mix] [was] shown, . . . along with . . . production credits.” Vergara further wrote that Puig should “consider [the adaptation] a Work for Hire with no economic compensation” other than “one dollar.”  Puig emailed a response the next day, telling Vergara that he could “count on the credits on the track” and that he was resending the contract to Vergara.

The contract Puig sent Vergara did not comply with Vergara’s credit requests, so Vergara sent an email to Puig “revok[ing]” his “proposal” of March 4, 2010. Puig agreed to review the contract and make the necessary changes to the credit provisions.  Universal assigned all of its rights, including Vergara’s assigned copyright interest, to Coca-Cola on March 4, 2010.

In May 2010, Vergara filed a lawsuit against Coca-Cola.  After issuing a preliminary injunction against Coca-Cola from using the song unless it attributed proper credit to Vergara, the district court later granted summary judgment in favor of Coca-Cola.  The court ruled that the email exchange was a contract entered into by Vergara to assign his copyright interest in the adaptation to Universal.

Upon review, the Court of Appeals affirmed the district court decision of summary judgment in favor of Coca-Cola.  It held that the email exchange fulfilled the requirements under Florida law to form a binding contract.  Vergara set forth his “definite proposal” and Puig “unconditionally accepted,” matching the terms of the offer.  The court found that “[t]he two emails were ‘so connected with each other that they may be fairly said to constitute . . . a complete contract.” (quoting Webster Lumber Co.  v. Lincoln , 115 So. at 502).

Even though the parties intended to later execute a formal written contract, the court held that they still intended to be bound immediately by the written negotiations.

US Copyright Office Announces Priorities for Next Two Years

November 8th, 2011

On October 25, the US Copyright Office released a document which summarizes the priorities of the Copyright Office for the next two years.

Here is a list of the top priorities.  For more detail, the full document is available for download here.

Studies

  • Small claims solutions for copyright owners
  • Legal treatment of pre-1972 sound recordings
  • Mass book digitization

Legislative Work

  • Rogue websites
  • Illegal streaming
  • Public performance right in sound recordings
  • Orphan works
  • Copyright exceptions for libraries
  • Market-based licensing for cable and satellite retransmission

Trade and Foreign Relations

  • World intellectual property organization (WIPO)
  • Trans-pacific partnership and other trade priorities

Administrative Law Practice

  • Prohibition on circumvention of measures controlling access to copyrighted works
  • Electronic system for the designation of agents under the DMCA
  • Review of group registration options
  • Registration options for websites and other forms of digital authorship
  • Electronic administration of the statutory licenses
  • Recording notices of termination of copyright transfers

Special Projects

  • Study of fees and services
  • Revision of the compendium of Copyright Office practices
  • Technical upgrades to electronic registration
  • Dialogues and roundtables with copyright community
  • Research partnerships with academic community
  • Revision of Copyright Office website
  • Public outreach and copyright education
  • Business process reengineering of recordation division
  • Public access to historical records
  • Skills training for Copyright Office staff

Do you think the priority list is addressing the most pressing current issues in copyright law?  In the coming weeks, I plan on exploring some of these topics through blog posts that will address them individually in detail.

Beyoncé’s New Music Video: Infringement or Inspiration?

October 12th, 2011

Check out this comparison between Beyoncé’s “Countdown” video and “Rosas danst Rosas” by Belgian choreographer Anne Teresa De Keersmaeker.

When confronted, the pop-singer responded:  ”Clearly, the ballet ‘Rosas danst Rosas’ was one of many references for my video ‘Countdown.’  It was one of the inspirations used to bring the feel and look of the song to life.”

Does this inspiration go to far?  See for yourself  -

 

What’s up with pop artists using the “inspiration” excuse to rip off other works? There is also currently an ongoing lawsuit between David LaChapelle and Rihanna over her video “S&M.”

Event: Entertainment Law CLE – Monday September 10

October 5th, 2011

The Benjamin N. Cardozo School of Law,  Black Law Students Association, the Office of Career Services and Black Women in Entertainment Law present:

“Show me the Money! Understanding what areas of entertainment law have been expanding and how to transition into them”

Monday, October 10, 2011
7:00-9:00PM, Moot Court Room, Cardozo Law School, 55 Fifth Avenue (corner of 12th Street), New York, NY

Speakers:
Patrick Sullivan
President and CEO of RightsFlow

Marilyn Haft Esq.
Marilyn G. Haft, P.C.

Pauline Wen
SVP of MTV’s Digital Global Business and Legal Affairs

Erika Munro Kennerly Esq.
Senior Director of Business Affairs at truTV/Turner Entertainment Networks

Earn 2 NYS MCLE transitional/non-transitional credits in the area of professional practice.

Fee: $0  **

To RSVP, please send your name and company info via email CardozoBWEL2011@gmail.com by October 6th, 2011

 

** Note from me: the email I got said zero dollars.  This seems like it might be a typo though.

La-La-Lawsuits: A Look Back on September’s Finest Litigious Moments

September 30th, 2011

Sacha Baron Cohen and NBC Universal won a lawsuit brought by Richelle Olson and her husband, owners of a bingo hall which was filmed as part of the movie Bruno.  Cohen, acting as the character  Bruno, selected the bingo numbers and after each number related the number to a fact about his former male partner.  Here is a more detailed description, from a footnote in the opinion: “After Cohen called out the Bingo number 36, he states that “36″ was the age of his former male partner. Later, when he calls out the number 3, he says that his former partner’s birthday was “May 3.” When he later calls out the number 59, he remarks that 59 was the number of his hotel room he stayed in when he met his former partner, and a few minutes later when he announces number 42, Cohen offers that “42 inches was his partner’s chest size. Finally, after Cohen announces the number 7, he comments that he met his partner on “July 7.” Some members of the audience can be heard laughing after each comment.”  The comments enraged Ms. Olson and Cohen was escorted by security from the building, after which Ms. Olson went unconscious while hysterically crying and hit her head on the concrete floor causing two brain bleeds and and leaving her wheelchair-bound.  The  California Appeals Court sided with Cohen though, claiming that his statements were protected by the Constitution as free speech in making the film and touched upon a socially important issue – homosexuality, gay culture and homophobia.  The Olsons are now responsible for paying Universal and Cohen’s attorneys fees for the case.

“The singing of a song does not create a trademark,” according to a California judge that Madonna may not have clothing line trademark rights in the phrase “Material Girl.”  Madonna and her company, Material Girl Brand, are being sued by LA Triumph, an L.A.-based clothing company that claims to have sold “Material Girl” clothing since 1997 and has a registered trademark.  Madonna sold $85 million dollars of “Material Girl” merchandise in the 80′s but the judge, in denying her motion to dismiss, found that merchandise sales ancillary to her music career did not necessarily create a trademark in the brand for clothing.  The case will go to trial in October where a jury will hear all of the facts and make a final decision.

Napolean Pictures, the production company behind Napoleon Dynamite, is suing Fox Searchlight for $10 million for allegedly underreporting royalties, taking improper revenue deductions, breach of contract, and negligent misrepresentation in connection with the hit 2004 indie comedy. Searchlight had agreed in a term sheet to pay 31.66 percent of net profits on home video, but the plaintiffs claim that a 2008 audit reveals that Fox was only paying net royalties on home videos at a 9.66 percent rate, in addition to underreported royalties and improper deductions.

Bruno Mars filed suit in the Central District of California Superior Court, in an attempt to get out of his publishing deal with Bug Music.  Mars alleges that the contract has actually been terminated because Bug did not properly exercise an option to renew the deal.

The Saul Zaentz Co., producer of the 1996 best picture winner The English Patient, has sued distributor Miramax and its former owner the Walt Disney Co. for $20 million in profits from the hit drama, alleging that the companies hid revenue, improperly allocated and deducted expenses and fees, and engaged in self-dealing with respect to the film.

Pandora, the web service that allows users to customize radio stations based on listening preferences, is facing a class action lawsuit in Michigan.  The lawsuit  claims that Pandora is breaching customer privacy by making users’ profile pages, including favorite songs and listener history, publicly available and searchable online. Additionally, the class action asserts that Pandora is violating privacy by integrating users’ listening records with their Facebook accounts.  These acts purportedly violate Michigan’s Video Rental Privacy Act and Consumer Protection Act. The plaintiffs are demanding statutory damages of $5,000 per person.

Charlie Sheen, Warner Bros. and Two and a Half Men co-creator Chuck Lorre are settling their $100 million legal dispute.  An official statement from WB: “Warner Bros. Television, Chuck Lorre and Charlie Sheen have resolved their dispute to the parties’ mutual satisfaction.  The pending lawsuit and arbitration will be dismissed as to all parties.  The parties have agreed to maintain confidentiality over the terms of the settlement.” Terms of the settlement were not disclosed, but $25 million has been the rumor, which includes a reinstatement of the revenue stream from past episodes of Two and a Half Men (even those filmed before his media meltdown) that WB had denied Sheen after he filed the lawsuit.

In August, Lady GaGa submitted a complaint to the National Arbitration Forum that alleged that the website ladygaga.org was registered in bad faith and in violation of her trademark.  The owner of the site responded that it was merely a non-commercial, unofficial fan site for Gaga that “does not have any sponsored links or links to third-party websites which market and sell merchandise bearing Complainant’s trademark.” The owner of LadyGaga.org got her reward on Wednesday when three panelists at the National Arbitration Forum ruled that Lady Gaga had failed to show that respondent lacked legitimate interest in the disputed domain name.

And event more Lady Gaga drama – The latest lawsuit targets Excite Worldwide LLC, which is using the Gaga name to sell cosmetics and jewelry.

Universal Studios Home Entertainment is suing former COO Thomas Emrey for allegedly breaching his contract and fiduciary duties by leaving the company for DineEquity, which operates IHOP and Applebee’s. Universal says his employment contract ran through May 2012.

Europe Extends Sound Recording Copyright Protection to 70 Years

September 15th, 2011

This past Monday, the European Union extended the term of copyright protection for sound recordings from 50 years to 70 years.  The main motivation for the extension was to benefit songwriters and musicians, according to a statement released by the Council of the European Union.  Unfortunately, this motivation may not achieve its end.  A New York Times article on the topic predicted that only 4 percent of financial benefits from the extension will benefit musicians like those mentioned in the statement.  Instead, 72% will go into the pockets of the record labels and the rest will go to superstar acts.

“This is extremely good news for record companies and collection agencies, but bad news for artists,” said the singer Sandie Shaw, who along with Nick Mason of Pink Floyd and Ed O’Brien of Radiohead is one of the leaders of the Featured Artists Coalition, a British group that advocates for musicians’ rights. “It means they have 20 more years in servitude to contracts that are no longer appropriate to a digital age.”

There is no provision in EU copyright law similar to the US “termination rights,”so musicians cannot reclaim their assigned works.  The directive vaguely assured that it “foresees measures” to guarantee that musicians “actually benefit from the term extension and may recuperate their rights subject to certain conditions,” and does include ”a “use it or lose it” clause that allows artists to reclaim ownership rights to recordings, but only after 50 years and only if a recording is no longer available commercially. It also sets up a new fund for payments to session musicians and a “clean slate” provision that is supposed to wipe out musicians’ debts to their labels.”

EU member states must put the extension into effect within two years.

For more information, check out this Digital Music News article.

Another Label Pulls Catalog from Spotify

September 6th, 2011

Label Metal Blade pulled its catalog from Spotify – both in the US and Europe, according to Digital Music News.  Apparently there is one lingering album by Armored Saint, but the rest of the label’s roster is greyed-out as unavailable.  The roster includes Goo Goo Dolls, Slayer, Gwar, Bitch, As I Lay Dying, Brain Drill, Cannibal Corpse, Goatwhore, Charred Walls of the Damned, Torture Killer, and Vomitory (a representative list in order of bands-I’ve-heard to Most-Creative-Band-Names).

This follows a move by Century Media Group, which removed its catalog from the service in early August.


La-La-Lawsuits: A Look Back on August’s Finest Litigious Moments

September 1st, 2011

Florida rapper J.R. Bricks changed the name of his song ”Waffle House” to “After the Party” after  he received a cease-and-desist letter from Waffle House, Inc.  Despite the title change, the Waffle House reference remains in the chorus.

Lady Gaga is being sued by Rebecca Francescatti who claims the singer and her producing partner stole her song, “Juda,” to create the hit “Judas.” The plaintiff says she introduced her song to her former bass player and a sound engineer who was working with Gaga.  How similar are the two tracks? You be the judge. “Juda” is available here.  Gaga’s “Judas” here.

As I wrote about in a previous post, Spotify was caught using some nasty cookies that track customers even after they’ve tried to delete the cookies. Now, the popular music streaming service that just launched in the U.S., is one of the latest targets of a class action over breaches in privacy laws stemming from their use of the cookies.

The Writers Guild of America filed a claim against Bring It On: The Musical on behalf of Jessica Bendinger, the screenwriter of the 2000 Universal film on which the new musical is based.  The confidential arbitration demand asserts that Beacon Communications Corp. and Beacon Communications, LLC are exploiting Bendinger’s dramatic rights in the cheerleader-themed Bring It On without her consent, in violation of the guild agreement’s “separated rights” provisions. It seeks damages and an injunction against Bring It On: The Musical, which is being coproduced by Universal Pictures Stage Productions, Beacon Communications and others.  Bendinger had been working on developing her own stage version of the story for the past six years and found out through the rumor mill that the show was being shopped without her involvement.

Dr. Phil and CBS have settled a lawsuit by Shirley Dieu and Crystal Matchett who alleged they were lured by promises of getting personal counseling from Dr. Phil himself, only to be locked during a 2007 filming of the show in a “mock house” on a sound stage and “forced to be in the same room with a completely naked live man while he exposed his entire naked body, genitals and all.”  Last January a California judge denied CBS’ anti-SLAPP motion and determined that the women showed a likelihood of success.  The details of the settlement have not been released.

Lindsay Lohan has sued rapper Pit Bullfor defamation and exploiting the Logan name in the song “Give Me Everything.”  The lyric at issue: “Hustlers move in silence, so I’m tiptoein’, to keep blowin’. I got it locked up like Lindsay Lohan.” Lohan is seeking an injunction and damages.

Maria Menounos has been sued for defamation, tortious interference with prospective economic advantage, and intentional infliction of emotional distress by her former stylist, Lindsay Albanese, who claims that the ex-Access Hollywood host cost her clients by telling people she’s a thief.

20th Century Fox has won $40,000 in attorney’s fees from writer James Muller who sued the studio in 2009 claiming that the script for Alien vs. Predator infringed upon Muller’s script titled The Lost Continent.  In an order granting Fox’s motion for attorney fees, the judge gave three reasons why Muller’s claims were “frivolous and objectively unreasonable.” The stories were different, the alleged similarities were ill-conceived, and any similarities were not protectable by copyright, like stock themes.

Vampire Weekend  settled a lawsuit with model Kirsten Kennis who accused the popular indie rock band of violating her publicity rights by using an old photo of her on the 2010 Contra album cover. According to the complaint, the band obtained the photograph from the photographer, Todd Brody, who was accused of forging Kennis’s signature on the release form.  The details of the settlement are not disclosed but Kennis was seeking $2 million in damages.

Katherine Stockett, author of The Help, was awarded summary judgment in a lawsuit claiming that Stockett had based a character in the book on Ablene Cooper without her permission.  Cooper sought $75,000 in damages, but the summary judgment was granted in favor of Stockett because the one year statute of limitations had already elapsed when Cooper filed the suit.

The Throne (Jay-Z and Kanye West) are facing legal action from R&B singer Syl Johnson for allegedly not clearing a sample from Johnson’s 1967 song “Different Strokes,” which appears on the track “The Joy” on their new album, Watch the Throne.

Miles Davis‘s estate is suing a Manhattan jazz club called Miles’ Cafe for infringing his allegedly trademarked first name.

Termination Rights Explained

August 30th, 2011

The subject of copyright “termination rights” has been a recent focus of the New York Times, The Hollywood Reporter, Billboard, and countless other news sources, as artists are beginning to reclaim their copyright interest in sound recordings owned by record labels.  In this post, I’m going to attempt to clearly explain the concept and structure of the Copyright Act’s “termination clause” as well as discuss various issues and arguments that both sides (labels and artists) are making to support or counter the provision.  Even though I mostly discuss the provision as it applies to sound recordings and record labels, as that is the most ambiguous area of this law currently, it is important to realize that the termination rights also apply to other copyright protected works, such as musical compositions (i.e., this will be an issue for music publishing companies too).

§ 203 of the US Copyright Act: The “Termination Clause”

The 1976 US Copyright Act § 203 provides that any license or transfer of copyright or any right under copyright executed by the author after January 1, 1978 may be terminated after 35 years of the date of the license or transfer (or 40 years in certain circumstances) as long as the termination is done within 5 years after the 35 year mark begins.   Authors must also give notice of their intent to terminate the license no less than 2 years and no more than 10 years before they intend to terminate the grant.  There is a provision also built in for grants executed before 1978, but the rules are a different and those terminations won’t come due until 2018 at the earliest date for the first notice, so in the interest of simplicity, I will not get into the details at this point.

If there are more than one authors of a copyrighted work, the termination can be effected if a majority of authors who granted the original license decide to terminate.  Significantly, the termination right does not apply to works made for hire (which I discuss more below).

As an example of how this would work, let’s say the copyright of a sound recording was exclusively transferred to a record label in 1978.  35 years later, in 2013, the author or joint-author of the original work (the artist, most likely, in this case) could terminate this grant and take back the copyright from the label.  Because there is a minimum notice requirement of two years and a maximum of ten years, the author(s) can first give notice to the label in 2003.  There is a five year window within which the grant must be terminated (i.e., 2018 here), so the latest to give notice would be 2016.

Why are there termination rights in the first place?

The Copyright Act has gone through a number of versions, the most recent being the 1976 Act.  The 1909 Copyright Act had completely different term provisions for copyright.  The initial term of copyright protection was 28 years, and this protection could be renewed for an additional 28 year period, making the total 56 years.  An important feature of the renewal term was that even if an author had assigned all of his rights to a publisher or somebody else during the first term, the author would reacquire those rights at the beginning of the renewal term.  This renewal copyright would allow authors to renegotiate terms of licenses so they could better benefit from and get a larger share in the success of their careers.  Even at this stage in copyright law, one exception to this renewal period was for works made for hire.

The 1976 Act got rid of this two-term copyright protection structure, in its place imposing a single term of life of the author plus 50 years (later amended to 70 years in 1998) in most cases (there are exceptions where the term is different).  The amendment did not seek to abandon the ability of authors to regain control of their work after a given time period, so the termination provision was drafted.

The Labels’ Arguments…

As artists are now trying to reclaim their copyright interests in sound recordings, the labels are using two primary arguments to protect their interests in the sound recordings: (1) that the recordings are work for hires created by the artists for the label, and (2) that the artist is not the only author of the recording.

The Work for Hire Issue

Traditional record contracts almost always provide that the recordings made by the artist under the agreements are works made for hire.  Then, because (as I’ll get into below) sound recordings may not as a matter of law be able to be included under the work-for-hire umbrella, the contract provides that in the event the recordings are not deemed to be works made for hire under the copyright act, the artist assigns his or her copyright interest in the recordings to the record label.  It seems like these two sentences accomplish the same thing, but for purpose of the termination clause, the effect of the language makes all of the difference.  If the recordings are in fact works made for hire, the record company owns them and the artist never had a copyright interest to transfer; however, if the recordings were assigned by the artist, this would be a transfer for purposes of the termination clause and the artist could reclaim ownership and control over the copyrights 35 years later.

I think I got a little ahead of myself, so let’s take a step back to the basics of the work made for hire.

§ 201(b) of the Copyright Act provides the following:

Works Made for Hire. — In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.

I’m sure you can already see the issue starting to unfold.  If a work is made for hire, the author who actually created it has no interest in the copyright or work, the employer or commissioner is considered the author for purposes of copyright.

But what qualifies as works made for hire?

In the definitions portion of the Copyright Act, a “work made for hire” is defined as follows:

(1) a work prepared by an employee within the scope of his or her employment; or

(2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, . . . as a compilation, . . . if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. …

Notice a word missing in part (2)?  You’ll see that “sound recording” is nowhere to be found.  Whereas motion picture and other a/v works are included, sound recordings are not expressly stated.  In 1999, the RIAA tried to quietly insert “sound recording” after “other audiovisual work” in the work for hire provision through The Satellite Home Viewer Improvement Act of 1999.  The addition was not related to the subject matter of the bill and was only added in later drafts.  The amendment was enacted by Congress and President Clinton without discussion or debate.  Once musicians caught wind of this significant change, their disapproval led to a brief hearing which led to Congress retroactively repealing the amendment.  One might think that by Congress removing the “sound recording” language from the Act, it is confirming that sound recordings are not works made for hire.  Not necessarily, the RIAA did get Congress to add language to the Copyright Act stating that no such presumption could be made, that the removal of the language did not express approval or disapproval or any other legal significance.

Even though sound recordings aren’t expressly included in the work made for hire definition, the record labels will likely argue that the recordings were commissioned as a “contribution to a collective work” as a “compilation”, the full album in this case.   The artist would contend that each individual recording is a distinct work protected by copyright and its use as part of an album is incidental.  Unfortunately, some contracts may have this “collective work” language expressly included, further weakening the artist’s argument.  However, the emerging dominance of digital distribution as the primary method for music sales has led to a weakening of the album format.  Single recordings can be (and very often are) purchased independently of the album, a clear sign that the recording does not just exist to serve the collective whole of the album.

A separate argument may exist for the labels as to whether the artist may be considered an employee of the label, acting within the scope of his or her employment when recording the songs.  The law of agency determines whether a person was acting as an “employee” for purposes of the work for hire doctrine.  Some factors to be considered are: (1) control by the employer over the work; (2) control by employer over the employee; and (3) status and conduct of employer (such as providing benefits to the employee or withholding taxes) (CCNV v. Reid).  Applying these factors to the case of artists as employees of the record label, it seems that the artist would not be considered an employee.  In many cases, record companies now simply provide funds at the “front-end,” and distribution at the “back-end,” of a sound recording’s production.  Outside of this involvement, the label itself does not usually take control over the artist or the work (although this may vary in cases), the artist is responsible for engaging musicians and the producer, the artist does not usually record the work at the label’s office, the label does not provide employee benefits for the artist, and in most cases the label does not withhold taxes.  The labels could argue that they do have some control over the creative work, final creative control, and approval rights for the budget; however, the argument could subject them to back  tax liability.

An interesting historical sidenote – one theory for why sound recordings were not expressly excluded as work for hires in earlier copyright acts was because in the 1960′s the labels exerted much more control over the production and recording of the album – from engaging in-house producers and musicians to owning the recordings studios.  Because of the employment relationship developed through these practices, the labels did not initially seek out inclusion of sound recordings in the work for hire definition.

Producer as Author

Another issue that complicates termination rights is that the artist may not be the only author of the recording.  The producer may be an author too.  Producers also sign work for hire agreements with record labels.  Although not true in every case, most producers contribute creatively to the project, making decisions about the sonic characteristics and artistic quality of the sound to be captured in the recording.  And further, what if the session musicians and recording engineers are contributing creatively in the recording process?  If the producer is deemed to be a “joint author” and had transferred his or her rights to the label in a separate document than the artist, the producer would have an independent basis to terminate the grant and regain copyright in the recording.  The label could still exploit the recording as long as at least one of the other joint authors had not terminated their grant of rights to the label.  This could get very messy because if one but not all of the authors chooses to terminate the original grant and then re-license to another company, there would be multiple “versions” of the same sound recording on the market competing with one another.

As a side issue – what about foreign artists who signed recording agreements? Does it make a difference if the agreement was signed abroad, but the recordings are distributed domestically? What about if they were signed here, but relate to international sales or sub-publishing/distribution agreements?

Moving Forward

There is currently a push in Washington from the House Judiciary Committee to amend the Copyright Act in order to clarify the ambiguities as to who can benefit from the termination provision and reclaim their copyrights. “For too long the work of musicians has been used to create enormous profits for record labels, radio stations and others, without fairly distributing these profits to the artists,” said Michigan Representative John Conyers Jr. who was chairman of the Committee until January.  “Copyrights are a tool to be used by creators to earn a living from their work,” so it is important to ensure “a fair marketplace.”  Unfortunately, the amendment process is likely going to be long and complicated.

In the meantime, lawsuits are looming over many record labels as artists are beginning to take action to reclaim their copyright interests.  An anonymous source disclosed to the New York Times his understanding that some of the major labels (he distinguished the indie labels’ approach to this matter) want to take these issues to court, regardless of the time or money spent, while others think that that approach would alienate artists and prevent a more favorable renegotiation of these agreements.

Artists Taking Action

What artists have (allegedly) begun taking action on these termination rights?

  • Victor Willis,  the cop in the Village People is seeking to regain control over a 35-set songlist that includes ‘Y.M.C.A.’ (note – this is for their publishing, the rights in the composition, rather than the master recording).
  • Steven Greenberg, writer of the disco classic “Funkytown.”
  • Bob Dylan
  • Tom Petty
  • Bryan Adams
  • Tom Waits
  • Kris Kristofferson
  • Loretta Lynn

References

In writing this article, I consulted the following resources (among those cited above).  These would make great further reading for anyone interested in the subject. [randomly ordered]


 

La-La-Lawsuits: A Look Back on July’s Finest Litigious Moments

July 29th, 2011

Composer Jack Urbont is suing Sony Music Entertainment and Ghostface Killah for illegally sampling his “Iron Man Theme,” originally created for the 1960s television show, The Marvel Super Heroes.

A Florida judge dismissed a lawsuit brought by White Wave International Labs that claimed Lindsay Lohan and a business partner stole a formula for a sunless spray tan.

Orlando Magic (and former University of Arizona – go cats!) guard Gilbert Arenas recently followed Chris Bosh‘s and sued his ex-wife and the producers of VH1‘s Basketball Wives.  Here’s the complaint.

A California Superior Court judge  rejected Ticketmaster‘s settlement with a class of plaintiffs who claimed they were misled on “delivery fees” of concert tickets. According to the judge the settlement ”offered virtually no benefit to the class member.”

American Idol creator Simon Fuller  filed a lawsuit against Fox and Simon Cowell for an exective producer credit and a piece of ‘X Factor’ revenues. More details about the case here.

A New York federal judge has dismissed a lawsuit by writer Martin Alexander who claimed he came up with a copyrighted sitcom entitled Loony Ben that bore a striking similarity to the Emmy-award winning ABC comedy Modern Family.  Alexander’s list of similarities over a show to be focused on “a non-traditional family” was not enough to meet the New York court’s threshold for “substantial similarity,” so Alexander will not be getting his demanded 50% interest in the copyright.

Glee co-creator Ian Brennan is being sued his friend Michael Novick, who claims he was promised 15% in backend compensation on the hit Fox musical after helping Brennan develop the show.

Gossip Girl star Leighton Meester sued her mother for getting plastic surgery on Meester’s dime.  The actress alleges her mother used money for plastic surgery, botox and hair extensions that Meester had sent for her brother’s care.  A week later, the mother, Constance, filed her own lawsuit against Meester, claiming Constance “sacrificed her own happiness” for her daughter’s career by paying $230,000 for the actress’s acting classes and education.  Constance also claims that Meester agreed to pay her $10,000 a month for her mother’s case, which Meester has never paid out.

A federal court in New York refused to dismiss David LaChapelle’s copyright infringement lawsuit against Rihanna, Def Jam Records and Black Dog Films.  LaChapelle claims that the video for Rihanna’s “S&M” infringes upon a number of his photographs.  The judge found that Rihanna’s team had access to LaChapelles work (they used it as references in their storyboard), that there is “substantial similarity” between the works, and that the fair use defense in this case is “misguided.”  A pre-trial conference is set for August 10.

CBS sued Lucas Reiter, writer of NBC’s new show The Firm, for tortious interference with contract, breach of contract, and breach of the implied covenant of good faith and fair dealing.  CBS is claiming that Reiter and Entertainment One developed The Firm for CBS under an exclusive contract (which paid over $250,000) and then took it to NBC without CBS’s permission.  The Firm (show) picks up where Grisham’s novel The Firm leaves off.  It is set to air midseason with Josh Lucas as the star.

T-Pain, the R&B singer and producer widely credited with popularizing auto-tune, is suing Antares Technologies, the inventor of the auto-tune technology.  The singer is seeking an injunction to prevent Antavares from using his name, photograph, likeness, and his voice, claiming that continued implication of an endorsement will confuse and mislead the public and damage sales for his own new technologies, including his own voice-manipulation product “The T-Pain Effect.”

The View star Barbara Walters has been sued over allegations that she lied and defamed a woman in her 2008 autobiography Audition: A Memoir.  Nancy Shay claims to have had a relationship with Walter’s daughter nearly 30 years ago when both were teenagers. Shay says she was expelled from school at Walters’ behest back then, thus ruining her life, and was bullied to remain silent all these years. Now, after being allegedly subject to an unflattering portrayal in Walters’ memoirs, Shay is suing for defamation.

Heavy-metal rocker turned radio host and conservative preacher Bradlee Dean is suing MSNBC and Rachel Maddow for allegedly defaming him in a segment when she quoted a radio show statement he had previous made which stated in part “Muslims are calling for the execution for homosexuals in America… They seem to be more moral than even the American Christians do. Because these people are livid about enforcing their laws, they know homosexuality is an abomination.” The lawsuit claims $50 million in damages and alleges that Maddow twisted Dean’s comments in an effort to undermine Republican presidential candidate Michele Bachmann.

Joe Pesci is suing Fiore Films for $3 million and punitive damages after claiming they cut his role and salary in their John Gotti biopic, Gotti: In the Shadow of My Father.  Even though a contract was never signed, Pesci claims he was offered $3 million to play Gotti pal and enforcer Angelo Ruggiero and had already gained 30 pounds for the part.