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.

Entertainment Law Update Episode 81 - Tamera Bennett and Gordon Firemark

entertainment law update episode 81 tamera bennett gordon firemark #podcast #entertainmentlaw

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 to the Entertainment Law Update Podcast or subscribe in iTunes.

In Episode 81 of the Entertainment Law Update Podcast, Tamera and Gordon offer an unscientific take on the top copyright, trademark, film, TV and other entertainment law cases of the year. The round-up includes:

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.


Why You Can't Trademark The President's Name

why-cant-i-register-a-trademark-with-the-presidents-name #createprotect #trademark

In every election year, we see a flurry of trademark applications filed by individuals that want to profit off a candidate's name. Maybe they are for the candidate, or perhaps against. Either way, filing a trademark application that includes, Trump, Hillary, or Bernie is always a waste of time and money.

Since January 1, 2016 over 100 trademark applications have been filed with the U.S. Patent and Trademark that have some reference to "Donald Trump." The applicants filing the marks are not "the Donald" or any business associated with Trump. Those applications have been or will be denied.

Here's Why You Can't Register A Trademark With The President's Name:

Denied registration for not having permission to use Donald Trump's name or image.

Denied registration for not having permission to use Donald Trump's name or image.

1.  You don't have permission: You need permission to use a person's name in a trademark registration.  You'll get this response in an office action refusing your application: Registration is refused because the applied-for mark consists of or comprises a name, portrait, or signature identifying a particular living individual whose written consent to register the mark is not of record.   Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §1206.  Without written consent, you will not be able to secure a trademark registration.

2.  Most likely you are not using the phrase, slogan, or mark as a trademark: If you decided to produce t-shirts, hats or other clothing using the candidate's (or President's) name or likeness, you may get a refusal that your use is merely ornamental. Registration is refused because the applied-for mark as used on the specimen of record is merely a decorative or ornamental feature of applicant’s clothing and, thus, does not function as a trademark to indicate the source of applicant’s clothing and to identify and distinguish applicant’s clothing from others.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127.  With respect to clothing, consumers may recognize small designs or discrete wording as trademarks, rather than as merely ornamental features, when located, for example, on the pocket or breast area of a shirt.  Consumers may not, however, perceive larger designs or slogans as trademarks when such matter is prominently displayed across the front of a t-shirt. 

Trademark Application Review Process is Bi-Partisan:

Don't worry that some trademark applications may be accepted and other's denied just because the trademark examining attorney is Republican or Democrat. The rules are applied equally. Since 2008 over 150 trademark applications have been filed by people not related to President Obama that contain the word Obama. Those applications have all been denied registration.

Denied for not having consent to use Obama's name. This application was filed by POM Wonderful. You would think they wouldn't have any tried.

Denied for not having consent to use Obama's name. This application was filed by POM Wonderful. You would think they wouldn't have any tried.

Five Things Copyright Law Does Not Protect

Five-things-copyright-law-doesn't-protect #copyright #createprotect Texas-copyright-lawyer-tamera-bennett

You know you need intellectual property protection, but you are just not sure how to protect your band name, the family BBQ recipe, or your latest idea. The intellectual property law areas of patent, trademark and copyright are related but protect distinct areas.

Copyright, a form of intellectual property law, protects original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture. Copyright does not protect facts, ideas, systems, or methods of operation, although it may protect the way these things are expressed.

A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. Examples of well-known trademarks include NIKE, CHANEL and ZYRTEC.  Click here to read more about trademark basics.

A patent protects ideas, concepts, systems, or methods of doing something.

Frequently Asked Questions On Things Not Protected By Copyright

Can I copyright my domain name?

Copyright law does not protect domain names. The Internet Corporation for Assigned Names and Numbers (ICANN), a nonprofit organization that has assumed the responsibility for domain name system management, administers the assigning of domain names through accredited registers.

Can I copyright my recipe?

A mere listing of ingredients is not protected under copyright law. However, where a recipe or formula is accompanied by substantial literary expression in the form of an explanation or directions, or when there is a collection of recipes as in a cookbook, there may be a basis for copyright protection.

Note that if you have secret ingredients to a recipe that you do not wish to be revealed, you should not submit your recipe for registration, because applications and deposit copies are public records. See FL 122, Recipes. If you do have a family secret recipe, protecting the recipe as a trade secret may be your best bet. Remember, you have to keep the recipe a secret and the recipe has to bring economic value to your business.

Can I copyright the name of my band?

No. Names are not protected by copyright law.  See Copyright Circular 34 "Copyright Protection Not Available for Names, Titles, or Short Phrases". Some names may be protected under trademark law. Learn more about the basics of trademark law from Attorney Tamera Bennett.

Can I copyright a name, title, slogan, or logo?

Copyright does not protect names, titles, slogans, or short phrases. In some cases, these things may be protected as trademarks. Copyright protection may be available for logo artwork that contains sufficient authorship. In some circumstances, an artistic logo may also be protected as a trademark.

Can I copyright my idea?

Copyright does not protect ideas, concepts, systems, or methods of doing something. You may express your ideas in writing or drawings and claim copyright in your description, but be aware that copyright will not protect the idea itself as revealed in your written or artistic work. To learn more about what is protected by a patent visit the U.S. Patent and Trademark Office website.

Click here for more frequently asked questions on the copyright process.

Entertainment Law Update Podcast - The Top Cases and News of 2016

music-lawyer-tamera-bennett-trademark-entertainment-law-update-podcast-year-in-review-2016

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 to the Entertainment Law Update Podcast or subscribe in iTunes.

In Episode 80 of the Entertainment Law Update Podcast, Tamera and Gordon offer an unscientific take on the top copyright, trademark, film, TV and other entertainment law cases of the year. The round-up includes:

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

EntLaw Update does a phenomenal job of keeping you current on issues of interest to anyone working at the intersection of law and media. Hosts Gordon Firemark and Tamara Bennett are personable and engaging, presenting stories in well-organized fashion that often leaves room for humor. As an avid consumer of law podcasts, I have to say this one is my favorite — if you need a reminder that the law isn’t *always* boring, Entertainment Law Update is what the doctor ordered!
— Michael

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

Music and Podcasts: How Do I Clear The Music Rights For My Podcast?

Music Rights and Podcasts How Do I Clear The Music Rights For My Podcast? #createprotect attorney-Tamera-Bennett

Media and music lawyer Tamera Bennett presented Legal Issue of Podcasting with attorney Gordon Firemark. You can watch the CLE at TexasBarCLE.  You can listen to the CLE as part of the Entertainment Law Update Podcast. Below is an excerpt from the CLE materials on Music and Podcasting.

Music Issues In Podcasting

Podcasting’s closest relative in the media world is traditional terrestrial radio.  A typical podcast may have the feel of a talk radio show. Podcast topics run the gamut from news, sports, health, the law, politics, religion, technology, entertainment and much more. Like talk radio, music can play an integral part in the feel and a presentation of a podcast. The podcast might be solely focused on music such as a “count down” of this week’s hits, or music may be a little “icing on the cake” for transitions during the podcast.

Just like the podcast is protected by copyright, so are any songs or sound recordings that you may include in an episode of the podcast.

Exclusive Rights of Copyright Owner

The owner of a copyright has a bundle of exclusive rights:

  1. to reproduce the copyrighted work in copies or phonorecords;
  2. to prepare derivative works based upon the copyrighted work;
  3. to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
  4. in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;
  5. in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and
  6. in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.  17 U.S.C. § 106.

These rights can be licensed by the copyright owner individually or as a whole; exclusively or non-exclusively.

Song Copyright and Sound Recording Copyright In Podcasts

Whether you’re talking intro and outro bumper music, or a whole podcast dedicated to music, you have to understand the different rights attached to a music copyright along with the different music licenses that may be involved.

When discussing the music and who owns what rights, it's important to note that there are two copyrights involved in each musical recording. 17 U.S.C § 102.  The copyright that attaches to the song covers the words, music, and the arrangement. Sound recordings are defined as “works that result from the fixation of a series of musical, spoken, or other sounds, but not including the sounds accompanying a motion picture or other audiovisual work.” 17 U.S.C. § 101.  The song copyright is owned by the songwriter or a music publisher who was assigned the copyright.  The copyright in a particular version of a recording is owned by the artist or record label who was assigned the copyright. 

As an example of the difference between owning the song copyright and the master/sound recording copyright, recall that Dolly Parton is the songwriter of the hit song “I Will Always Love You.” Neither Dolly Parton nor the music publishing company that owns the song copyright for “I Will Always Love You,” have any ownership in the sound recording copyright for the version of the song recorded by Whitney Houston for the movie “The Bodyguard.” Nor does the record label or Whitney Houston’s estate have any ownership in the song copyright.  The song and the sound recording are two distinct copyrights with different owners.

Streaming vs Download For Music In Podcasts

Because podcasts can be delivered to consumers in two different manners - streaming or download – multiple rights are triggered and need to be licensed. These multiple rights and licenses apply separately and distinctly to the song and sound recording.

Songs – Musical Compositions In Podcasts

A song copyright encompasses the words, music, and the arrangement. The copyright owner of a song has an exclusive right to license the public performance of the song as well as the mechanical reproduction of the song. A public performance of a song occurs when it is streamed as part of the podcast. This is analogous to listening to the song on the radio.  If the podcast can also be accessed by download, the exclusive right of reproduction – or mechanical right – is also triggered.  In traditional media, we think of a mechanical license being needed when a music compact disc or music download is purchased.

What does this mean for the podcaster who wants to include music in her podcast? In short, if the podcast can be consumed by both streaming and download, the podcaster needs both a public performance license and mechanical license whenever a song or a portion of a song is included in the podcast.

Public Performance Right For Songs In Podcasts

A public performance of a song occurs when the song is transmitted to the public; for example, radio or television broadcasts, music-on-hold, cable television, and by the internet.

In the United States, we have three major societies that collect all of the public performance payments for the various different licensees of music. Radio stations, TV networks, and nightclubs are a few of the types of businesses that publicly perform music and need a license.  What is nice about the public performance licensing scheme is that you can secure a blanket license which will allow you to publicly perform all songs in the performance right society’s catalog. You don’t have to go back for individua