Updates on Prince Estate - Heirs Determined; UMG Deal Voided; Possible Dispute Over Prince Stage Show

#createprotect Attorney Tamera Bennett Prince Estate stop Purple Rain Tribute Band

What Happens Now that Prince's Heirs Are Determined?

More than a year after Prince's death, the court certified Prince's heirs as his sister and five, half siblings. Under Minnesota law, half siblings are treated equally with full siblings for inheritance purposes.

The first action of the heirs seems to be challenging deals made by the trustee managing the estate for the past year. News reports state all six heirs agreed in 2016 that the estate administrator was rushing to sign deals for Prince's "vault" of songs and masters when their didn't seem to be a reason to push a deal through. A deal was made with UMG in January 2017 that was worth $31 million. Now there's a discrepancy between what rights UMG actually acquired under the deal signed as opposed to rights currently claimed by Warner Bros in the catalog.

In July 2017, the court voided the deal with UMG and now $31 million should be returned to UMG. Hopefully that money is still held in trust. But what about any commissions the trustees may have earned? 

Can Prince's Heirs Block A Stage Production About Prince?

Is it a musical or a cover band? That's the first legal question I think the heirs need to ask regarding the "A Celebration of Prince Purple Rain" tour that launches in August in the UK. An article from the BBC says the heirs are exploring legal options in regards to the tour.

Do tribute bands trigger "grand rights"?

Under U.S. law and U.K. law, theatrical grand rights require a public performance license to use music in stage/theatrical production. Those rights are fully negotiable and can be withheld by the copyright owner. These are different rights from the small rights that would be secured in order to present a concert. Small rights are much harder to deny so long as the necessary public performance licenses are secured. In the U.S., the small rights are licensed from ASCAP, BMI, and SESAC. In the U.K., PRS for Music is the public performance licensing agent.

If the tour is actually a "musical," then the tour could be shut down if the proper grand rights licenses are not secured from the music publisher. A concert starts to look more like a musical or theatrical stage production when the songs are used as part of the arc of a story line. If the songs are used for dramatic purposes to carry the story forward, grand rights are triggered.

Do tribute bands infringe trademark rights or right of publicity?

What are the options if this is a "tribute band"? I went to see a Journey tribute band earlier this summer and rocked out to the great hits. I had no illusion or confusion that I was going to see the real members of Journey. The name of the cover band didn't even mention Journey. There was a small tag line in the advertising materials saying the group was a tribute band. 

A small tag line is very different from how the Prince "tribute band" is advertising their shows. The purple website, the dove, and the words "purple rain" on the website could all be used to confuse a consumer that somehow this is an authorized tour. This case might come down to less of an issue of copyright infringement, but more of an issue of trademark infringement and unfair competition.  There's also a question of infringing on Prince's right of publicity. In accordance with Minnesota state law, the right of publicity will survive after death.  In the U.S., all of the factors mentioned could potentially weigh in favor of Prince's estate.

I'm not an expert on U.K. law regarding trademarks and unfair competition so I asked my colleague Claire Freeman with Dummett Copp to share her thoughts on the law in the U.K.

“We don’t have personality rights or unfair competition laws in the U.K. Prince’s estate will need to rely on the U.K. laws of passing off and/or trade mark infringement.  For an action under passing off to succeed, the estate must show that fans are mistakenly under the impression that the production has been endorsed by Prince’s estate.  Their chances of success will depend on the court’s assessment of the facts of the case and in particular on the way in which Prince’s name is being used."

Claire went on to say, "In June of this year, Prince’s record company, NPG Records Inc, filed both a U.K. and European trade mark application for the mark PURPLE RAIN presumably in order to try and help them win this legal battle.”

Here's a link to some other interesting tribute band litigation.

Entertainment Law Update Episode 87 - Tamera Bennett and Gordon Firemark

Entertainment Law Update Podcast Tamera Bennett Gordon Firemark

Listen to Dallas-area music lawyer Tamera Bennett and Los Angeles film lawyer Gordon Firemark discuss the latest entertainment law issues on the Entertainment Law Update Podcast.

Click the arrow below to listen or click the "Apple" below to subscribe in iTunes.

In Episode 87 of the Entertainment Law Update Podcast, Tamera and Gordon discuss the latest news and cases involving copyright, trademark, film, TV, and other entertainment law issues.

These cases and much more on this episode of the Entertainment Law Update Podcast.

Please leave us listener feedback at the iTunes store. Your comments will help other folks find our podcast

This post contains affiliate links. That means if you click a link I may receive a benefit.

Entertainment Law Update Episode 86 -- Tamera Bennett & Gordon Firemark

Entertainment Law Update #podcast episode 86 Tamera Bennett Gordon Firemark

Listen to Dallas-area music lawyer Tamera Bennett and Los Angeles film lawyer Gordon Firemark discuss the latest entertainment law issues on the Entertainment Law Update Podcast.

Click the arrow below to listen or click the "Apple" below to subscribe in iTunes.

In Episode 86 of the Entertainment Law Update Podcast, Tamera and Gordon discuss the latest news and cases involving copyright, trademark, film, TV, and other entertainment law issues.

These cases and much more on this episode of the Entertainment Law Update Podcast.

Please leave us listener feedback at the iTunes store. Your comments will help other folks find our podcast.

This post contains affiliate links. That means if you click a link I may receive a benefit.

How Can I Protect A Trademark For My T-shirt?

You've just developed a catchy new phrase or word that you want to protect as a trademark. Maybe you went so far to already file a trademark application and received an office action refusing your application. What went wrong?

What Can I Do To Protect The Trademark On My T-Shirt (or other clothing)?

Simply putting a phrase on a t-shirt does not convey to the world that you are using the phrase as a trademark or brand. In fact, if you try to register a phrase as a trademark and the only thing you submit as your evidence of use is a t-shirt with the phrase across the front or back, you will receive an office action denying your trademark application stating your slogan is "merely ornamental" or decorative in nature. 

After the "Slants" Ruling ...

On June 19, 2017 the U.S. Supreme Court ruled the disparagement clause of the U.S. Trademark Act is facially unconstitutional under the First Amendment's Free Speech Clause. These means that trademarks like the "The Slants" for musical groups and t-shirts, or "Dikes on Bikes" for videos will be able to proceed with registrations. The key is using the phrase or word as a trademark and not as ornamental or decorative. Keep reading for tips on proper use of your trademark on clothing.

Size Matters For Trademarks On Clothing

Typically the smaller and more discrete a mark is used on clothing, the more likely the U.S. Trademark Office will consider the use as a trademark. Wording or design located on the pocket or breast portion of a garment (for example, a small design of an animal) may create the commercial impression of a trademark, whereas a larger depiction of the same wording/design prominently displayed across the front of a garment may be more likely to be seen as a purely decorative or ornamental feature of the goods.

Where Can I Place My Trademark On My Clothing?

The U.S. Trademark Office will be looking for trademarks to be in the neck of shirt or the band of a pair of pants. Also, on hang-tags attached the garment or product packaging.  If you offer your goods for sale on line, then make sure to use the trademark in close relation to the cart for checkout.

Here's a document that provides examples of how to properly place your trademark on clothing.

Podcasts I'm Listening To And Why - January to June 2017

Podcasts I'm Listening To - Why You Should Listen to Podcasts tamera bennett #createprotect #podcasts #happier #wsirn

Over the last year I've seen my consumption of information transition from reading to listening. I've always been a huge fan of good-ole' fashioned terrestrial radio and an avid listener to all things NPR.  I've found for most of 2017, I've moved away from print information to podcasts.

Three Reasons To Listen To Podcasts

  1. I'm Learning More And Faster - I've never been a huge audio book fan. But, I have been sucked right into the world of podcasts this last year. There's a podcast out there for just about every interest. Most of my listening falls into the "cultural" category. Listening to podcasts gives me a level of diversity and opposing views I just wasn't getting from other media sources.
  2. Exercise Is More Fun - I walk long distances. This year I completed walking my third half marathon. Some podcasts are more conducive to walking than others. I have to make sure I'm not slowing down my walking pace if I get sucked into the dialogue. Those long walks go a whole lot faster when I'm engaged in a topic.
  3. It's Made Me A Better Podcaster - I've co-hosted more than 85 episodes of the Entertainment Law Update Podcast. Listening to other podcasts has given me an awareness of what's appealing to consumers of podcasts. This is where I give a huge shout out to my co-host Gordon Firemark who makes sure we always have great sound quality.

Four Podcasts I'm Listening To

  1. Girls Gone WOD - I'm quickly approaching my three year anniversary of participating in Crossfit. Gasp. If you know me you will find it very hard to believe I intentionally lift heaving things and on occasion run, row, and do burpees.  Girls Gone WOD is the "first female-hosted lifestyle podcast dedicated to discussing CrossFit(R), body image, eating healthy, getting strong, and balancing life, work, husbands, babies, glitter eyeliner, avocado toast, and happy hour." If you have passion for getting healthier, you need to listen. It gets "real" fast. #GGW
  2. What Should I Read Next? - This is the podcast for people who love to read. I have discovered so many wonderful new books. The podcast has helped me hone the types of books I enjoy and don't like at all. I'll avoid dysfunctional family drama at all costs.  I will gobble up non-fiction books that involve humanly insane physical challenges. Is that a genre? "What Should I Read Next is the show for every reader who has ever finished a book and faced the problem of not knowing what to read next. Each week, host Anne Bogel interviews a new person and finds out their tastes. Then, she makes recommendations about what to read next." #WSIRN
  3. Happier With Gretchen Rubin - Duh, who doesn't want to be happier? I feel a kinship to the co-host Gretchen Rubin as she is a recovered lawyer turned journalist. Each week Gretchen and her sister Elizabeth Craft discuss life hacks and habits that can help us to achieve more and hopefully bring about some happiness in our lives. "Gretchen Rubin is HAPPIER, and she wants you to be happier too. The #1 bestselling author of The Happiness Project and Better Than Before gets more personal than ever as she brings her practical, manageable advice about happiness and good habits to this lively, thought-provoking podcast. Gretchen’s co-host and guinea pig is her younger sister, Elizabeth Craft, a TV writer and producer living in Los Angeles, who (lovingly) refers to Gretchen as her happiness bully." #HAPPIER
  4. S-Town - S-Town is a seven episode podcast that will rock your world. While all my other podcast recommendations are ongoing, S-Town takes seven episodes to explore the life of one man in small-town rural Alabama. You must listen. Stick with it.  S-Town is from the producers of SERIAL and This American Life. "John despises his Alabama town and decides to do something about it. He asks a reporter to investigate the son of a wealthy family who’s allegedly been bragging that he got away with murder. But then someone else ends up dead, sparking a nasty feud, a hunt for hidden treasure, and an unearthing of the mysteries of one man’s life." #STOWN

Let me know what podcasts you enjoy and what I should read next. Please leave me a comment.

This post contains affiliate links. That means if you click a link I may receive a benefit.

Entertainment Law Update Podcast Episode 85: Tamera Bennett, Gordon Firemark

entertainment law update podcast tamera bennett gordon firemark

Listen to Dallas-area music lawyer Tamera Bennett and Los Angeles film lawyer Gordon Firemark discuss the latest entertainment law issues on the Entertainment Law Update Podcast.

Click the arrow below to listen or click the "Apple" below to subscribe in iTunes.

Entertainment Law Topics In This Podcast Episode:

In Episode 85 of the Entertainment Law Update Podcast, Tamera and Gordon discuss the latest news and cases involving copyright, trademark, film, TV, and other entertainment law issues.

These cases and much more on this episode of the Entertainment Law Update Podcast.

Please leave us listener feedback at the iTunes store. Your comments will help other folks find our podcast.

This post contains affiliate links. That means if you click a link I may receive a benefit.

Entertainment Law Update Podcast Episode 84 - Tamera Bennett and Gordon Firemark

#podcast Entertainment Law Update Podcast Episode 84 Tamera Bennett Gordon Firemark

Listen to Dallas-area music lawyer Tamera Bennett and Los Angeles film lawyer Gordon Firemark discuss the latest entertainment law issues on the Entertainment Law Update Podcast.

Click the arrow below to listen or click the "Apple" below to subscribe in iTunes.

Entertainment Law Topics In This Podcast Episode:

In Episode 84 of the Entertainment Law Update Podcast, Tamera and Gordon discuss the latest news and cases involving copyright, trademark, film, TV, and other entertainment law issues.

These cases and much more on this episode of the Entertainment Law Update Podcast.

Please leave us listener feedback at the iTunes store. Your comments will help other folks find our podcast.

This post contains affiliate links. That means if you click a link I may receive a benefit.

Entertainment Law Update Podcast Episode 83 - Tamera Bennett and Gordon Firemark

#podcast #createprotect Entertainment Law Update Podcast Episode 83 Tamera Bennett Gordon Firemark

Listen to Dallas-area music lawyer Tamera Bennett and Los Angeles film lawyer Gordon Firemark discuss the latest entertainment law issues on the Entertainment Law Update Podcast.

Click the arrow below to listen or click the "Apple" below to subscribe in iTunes.

Entertainment Law Topics In This Podcast Episode:

In Episode 83 of the Entertainment Law Update Podcast, Tamera and Gordon discuss the latest news and cases involving copyright, trademark, film, TV, and other entertainment law issues.

These cases and much more on this episode of the Entertainment Law Update Podcast.

Please leave us listener feedback at the iTunes store. Your comments will help other folks find our podcast.

This post contains affiliate links. That means if you click a link I may receive a benefit.

Empire v Empire: The Fox TV Show vs the Record Distributor - Trademark Fair Use

Empire tv vs Empire Distribution

In January 2015, the Fox television show EMPIRE debuted. It’s a fictional story of a feuding entertainment industry family that chronicles the struggles of a rapper and drug dealer turned music industry mogul. In the first episode we learn the mogul is dying and the family battle begins to control the “empire.”

Like most television shows about the music business, music is heavily featured in the show. So much so, Fox partners with Columbia Records to release songs following the broadcast of each episode. Fox also promotes artists and their music that has been featured on an episode at radio stations and live performances.

Empire Distribution is a record label, music distributor, and publishing company formed in 2010. Empire Distribution has distributed music by Kendric Lamar, Snoopdog, Gladys Knight, and many others. In fact, Empire Distribution is recognized as a major player in the rap and hip hop genres.  Empire Distribution claims common law rights in various Empire trademarks and has multiple pending federal trademark applications.

After the television show began airing in 2015, Empire Distribution sent a cease and desist letter to Fox alleging trademark infringement. Fox responded by filing a declaratory judgement action in the U.S. District Court for Central California, Los Angeles.

Fox claims their ability to name the show EMPIRE is protected by the First Amendment, ie, freedom of expression. Empire Distribution alleges Fox’s actions amount to trademark infringement and that actual consumers are confused that there is a connection between the TV show and Empire Distribution.

In the United States, creative works are protected as free speech by the First Amendment.  Because of that protection for the whole work, even the title of the work, a balancing act must occur between the rights of the trademark owner and the First Amendment rights that arise in the creative work.  Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). To read an overview of how the Rogers Test has been applied in other cases, click here.

On Summary Judgment the court reviewed and applied the Rogers Test: 1) whether the use of the third-party trademark has artistic relevance; and 2) if so, is it deliberately misleading as to the source or content of the work. 

  1. Is there artistic relevance: The district court found that using the word empire was appropriate since the show is about a struggle for control over the vast music business empire. The TV show is also set in New York – the Empire State.
  2. Does the Empire TV series explicitly mislead as to the source of the content of the work?

The parties disagree on the appropriate test to apply. Empire Distribution argues that a traditional trademark likelihood of consumer confusion analysis must be considered in this prong. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). Fox argues the plain language of Rogers is the test and that using a third-party trademark must be an “explicit indication, overt claim, or explicit misstatement” as to the source of the work or prong two is met.

The court held on summary judgment that even with a showing of consumer confusion, First Amendment rights still trump if there was no intent on the part of the junior user to explicitly mislead. Fox wins on the second prong of the Rogers Test.

As expected, Empire Distribution appealed the Summary Judgment decision. In addition to procedural issues, Empire Distribution argues that Fox used EMPIRE beyond the title of an expressive work. Fox’s marketing plans from the beginning was to launch a record label, sign recording artist, and create EMPIRE branded merchandise. Empire Distribution argues on appeal, “Ultimately, under the district court’s very narrow application of the ‘explicitly misleading’ prong, the prong could virtually never be satisfied (or even reach a determination at trial), absent an admission or other smoking gun evidence that the defendant was deliberately attempting to mislead consumers. Under the district court’s holding, one could start a competing record label today called Motown, Sony, Universal or Def Jam, and so long as they could provide any artistic reason for the name, they would be protected under the First Amendment, regardless of the amount of consumer confusion.”

Fox argues that its merchandise and promotional efforts using EMPIRE were not properly before the court, and did not relate to Fox’s actual claim, which is premised on the title and content of Fox’s show and soundtracks. Fox goes on to state, “Rogers makes clear that, so long as an artist does not explicitly mislead the public about his work, the First Amendment protects his efforts to promote it. If Rogers worked otherwise, it would be an empty promise.” In effect Fox is claiming they can distribute directly competitive merchandise that “promotes” their creative work without repercussion of trademark infringement.

As a trademark lawyer, I’m very concerned for the path Fox is taking. While I support and understand the value of freedom of expression and the ability to use a third-party trademark in creative works, the district court took this a step too far. I believe the courts should first make the decision on likelihood of consumer confusion when faced with a third-party trademark in a creative work. If there’s no consumer confusion, then there’s no reason to make a first amendment analysis. If there is consumer confusion, than apply the Rogers Test.  You can see this application in the following cases – both out of the seventh circuit: Fortres Grand Corp. v. Warner Bros. Entertainment, Inc., No. 13-2337 (7th Cir. Aug. 14, 2014); Eastland Music v. Lionsgate Entertainment, 707 F.3d 869 (7th Cir. 2013). I argue that consumer confusion has to be considered in the second prong of the Rogers Test.

See Twentieth Century Fox Tel., et al v. Empire Distribution, Inc., (9th Circuit - 16-55577). As of April 24, 2017, briefs have been filed in the appellate court.

Entertainment Law Update Podcast Episode 82 - Tamera Bennett and Gordon Firemark

#podcast #createprotect Entertainment Law Update Podcast Episode 82 Tamera Bennett Gordon Firemark

Listen to Dallas-area music lawyer Tamera Bennett and Los Angeles film lawyer Gordon Firemark discuss the latest entertainment law issues on the Entertainment Law Update Podcast.

Click the arrow below to listen or click the "Apple" below to subscribe in iTunes.

Entertainment Law Topics In This Podcast Episode:

In Episode 82 of the Entertainment Law Update Podcast, Tamera and Gordon discuss the latest news and cases involving copyright, trademark, film, TV, and other entertainment law issues.

These cases and much more on this episode of the Entertainment Law Update Podcast.

Please leave us listener feedback at the iTunes store. Your comments will help other folks find our podcast.

This post contains affiliate links. That means if you click on the link I may receive a benefit.

Five Things You Need to Know About Filing A DMCA Designated Agent

Five Things You Need To Know About Filing a DMCA Designated Agent #createprotect #copyright #dmca

Enacted in 1998 as part of the Digital Millennium Copyright Act (“DMCA”), 17 USC Sec. 512 established a system for copyright owners and online entities to address online infringement.

Does Your Website Have Third-Party Generated Content?

If you are a service provider (the term service provider includes web sites) that allows the upload of third-party generated content, you may have limitations on liability if you fulfill certain requirements. One requirement is registering a Designated Agent with the U.S. Copyright office to receive notice of infringing content posted on your website.

Why Should I Register a DMCA Designated Agent?

To protect your business from certain claims of copyright infringement.

By What Date Do I Need to Re-Register?

New regulations went into place on December 1, 2016, the same date the U.S. Copyright Office launched a new electronic system and directory. The new electronic DMCA Registered Agent registration system will expedite the process of recording and searching for Registered Agents. Any service provider that has previously designated an agent with the Office will have until December 31, 2017 to submit a new designation electronically through the new online registration system.

As part of the transition to the new system, the Office’s present public directory of designated agents, generated by service providers’ paper filings, will be phased out on December 31, 2017. Until that time, an accurate designation in the old paper-generated directory will continue to satisfy the service provider’s obligations under section 512(c)(2), and the public will need to continue to search the paper-generated directory if the service provider is not yet listed in the new electronically-generated directory.

Where Do I Register My DMCA Designated Agent?

You can register online for only $6 via the U.S. Copyright Office.

How Does Someone File A Notice of Claimed Infringement When I Have a Designated Agent?

When a copyright owner’s work is allegedly being infringed on or through a service provider’s service, the copyright owner may send a notification of claimed infringement (often referred to as a “takedown notice”) to the service provider’s designated agent. For takedown notices to be legally effective, they must be provided to a service provider’s designated agent in writing and include substantially the following:

  1. A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

  2. Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site.

  3. Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material.

  4. Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted.

  5. A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.

  6. A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

17 U.S.C. § 512(c)(3)(A). Upon receipt of a compliant takedown notice, a service provider must respond expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of the infringing activity. If a service provider fails to do so, it may lose its safe harbor protection and be subject to an infringement suit.

Music, Estates, Taxes and the IRS - Latest On Michael Jackson and Prince

music estates taxas irs #michaeljackson #prince #createprotect music lawyer tamera benentt dallas texas

The Value of Michael Jackson's Right of Publicity

What's the value of a name? That is the question the IRS is asking in a dispute over the post-death value of Michael Jackson's name and likeness.  Under California law, where Michael Jackson resided at the time of his death in 2009, his right of publicity lasts for 70 years after his death. That means his estate can continue to make money from licensing the rights to use Michael Jackson's name, likeness, and voice.

The IRS Court will need to determine the value of Jackson's right of publicity at the date of his death.  The rub is that the family says the value was almost zero at the date of his death because Jackson was taking minimal steps to promote his name and likeness. Post-death, the family ramped up efforts to maximize revenues and did a great job promoting and licensing the name and likeness rights of Jackson. The IRS claims they are entitled to the increase in value, not just the purported value at death.  The asserted value at death was $2,105. The IRS claims the value is closer to $434 million.

The valuation does not take into account revenues from song or sound recording copyrights owned or licensed by Jackson.

Hindsight might be 20/20.  Music attorney Tamera Bennett was interviewed in 2009 on the value of the Jackson estate and stated, "Michael Jackson’s most valuable asset is his name and likeness, ie, his right of publicity. This right is descendible under California law. For estate tax purposes the value of his right of publicity is speculated to exceed the liquid assets of his estate."

Prince's Estate Tax Payment Could Have Been Reduced

Prince died in April 2016 without a will, trust, or other estate or tax planning documents in place. In a worst case scenario, Prince’s estate is subject to a federal tax of 40 percent and Minnesota’s state tax of 16 percent. In January 2017, Prince's estate had to make its first estate tax payment to the IRS. It's estimated the estate will owe $100 million in taxes.

Like the Jackson estate, the Prince estate is working to maximize revenues from the music assets. Deals were struck to have Prince's music catalog available on all major streaming services in February. Most likely a choice Prince would have personally hated based on the limited streaming deals he did during his lifetime. Additionally, Universal acquired rights to Prince's "vault" of back catalog recordings that have not been released.

Music attorney Tamera Bennett discussed the Prince estate issue with KRLD radio news manager Mitch Carr in the days following Prince's death. You can listen to the interview by clicking here.