Copyright

BMG Rights Management Buys Hal David Song Catalog

As reported by BILLBOARD, BMG Rights Management acquired Hal David's music publishing catalog at an estimated $42 million.  Net publisher's share is in the range of $3. 5 to $3.8 million and it is anticipated a multiplier of 11-13 times NPS was used to reach the purchase price. Read more here on how Net Publisher's Share is calculated.

Entertainment Law Update Podcast - Episode 47

Film/TV lawyer Gordon Firemark and Copyright/Trademark lawyer Tamera Bennett cover a "Motley Crew" of topics this month including trademark, copyright, film and tv legal issues surrounding the "Counting Crows," "Raging Bull," "Insane Clown Posse," and "Sherlock Holmes" .... to name a few.  Click here to listen.

gordon.jpg
tamera.jpg

Sherlock Holmes - Some Copyright, Some Not

In a 10-month-long dispute between the Conan Doyle Estate and writer/editor Leslie Klinger, the trial court ruled 50 of the Sherlock Holmes stories, all published prior to 1923, are in the public domain.  Ten stories published after 1923 are protected by copyright in the US.

The court held elements introduced in the Sherlock Holmes stories published after 1923, such as Watson having a second wife, remain under copyright in the United States.

The UK copyright for all the Sherlock Holmes stories expired in 1980.  According to UK law, the term of copyright protection is the life of the author plus 50 years.  Mr. Doyle died in 1930.

Even though the works were originally published in England, they still receive copyright protection in other countries. The protection in the US, is based solely on US law.  So why is 1923 the magic year in the US, the short answer is with implementation of the Copyright Term Extension Act it was determined that works published prior to 1923 are in the public domain. “Because of legislation passed in 1998, no new works will fall into the public domain until 2019, when works published in 1923 will expire. In 2020, works published in 1924 will expire, and so on.”

Read more about the history of the  dispute and ongoing trademark issues here.

Hear film lawyer Gordon Firemark and copyright lawyer Tamera Bennett discuss the case on the Entertainment Law Update Podcast Episode 47 and Episode 43.

Top Trademark/Copyright/Entertainment Law Posts of 2013

As we say goodbye to 2013, it's always fun to look back and see what our readers enjoyed. There's a great mix of trademark, copyright and music publishing cases. Most visited posts in 2013 (no matter original post date):

Number 5:  Johnny Football vs Juanito Futbal Trademark Likelihood of Confusion Number 4:  Do I Need A Music Lawyer? Number 3:  Music Publishing: A Good Investment Number 2:  New Recording Artist Checklist: What Every Artist Should Think About Number 1:  Bikram Yoga Protected by Trademark NOT Copyright - It's Hot

and a little variation on a theme - the Most visited posts that were originally posted in 2013:

Number 5:  Drybar vs Blow Dry Bar - Trademark for Blow Drying Hair Number 4:  Sherlock Holmes, Elementary, Copyright Protection and Trademarks Number 3:  Duck Dynasty - What Contract Clause Did Phil Violate? Number 2:  Johnny Football vs Juanito Futbal Trademark Likelihood of Confusion Number 1:  Bikram Yoga Protected by Trademark NOT Copyright - It's Hot

follow us in feedly Snag our RSS feed in Feedly

Copyright Grant Termination Can Undo Songwriter Estate Plan Part 1

Ray Charles planned ahead and gave each of his 12 children $500,000 in trust as their inheritance and required a release of any future claims against his estate.  What he didn't plan on was his heirs (children) exercising their ability under the U.S. Copyright Act to file notice of termination of the copyright assignments for Charles' songs and reclaim those revenue streams.  Charles left the bulk of his estate, including his copyright assets, to The Ray Charles Foundation for the benefit of hearing and seeing impaired persons. There are two schemes for termination of copyright grants under the U.S. Copyright law and they arise from works created and published pre or post January 1, 1978.  Ray Charles' wrote songs and signed copyright assignments falling into both categories, which makes this a very rich fact pattern.  The specific timing requirements for the notices are covered in detail here.

In a legal opinion focused primarily on the applicability of California's Anti-Slapp statute, you'll find some great nuggets on the intersection of estate planning and copyright law.

1.  A copyright grant termination notice is not "a claim against the estate" if probate on the estate has closed.   Which raises the questions: what if probate is still pending? or probate never occurred and the window of time under state law probate proceedings has past? or filing a notice of termination would be timely while probate is pending? or the heirs must file the termination notices before the probate proceedings end to fall with the notice window?

2.  If copyrights were created as "Works for Hire" then the copyrights were never part of the author's estate and filing the notice of termination could not be a claim against the estate.  Of course, no heir wants to argue "work for hire" because anything created as a work for hire does not have a right of termination.

3.  A termination right is inalienable because under the statute, "termination of the grant may be effected notwithstanding any agreement to the contrary, including an agreement to make a will or a future grant."  Does this mean there is no way for an author to control post-death what happens to his/her copyrights?

The opinion in this case was rendered in early 2013.  While notice of an appeal was filed, there has been no additional recorded court activity.  I suspect The Ray Charles Foundation and the heirs are entering into some form of negotiation.  Which leads to Part 2 of this post (coming soon) which addresses why The Ray Charles Foundation needs the Charles' heirs to maximize the value of the Foundation.

I've written numerous times about heirs reversing an estate plan via their statutory rights granted under the U.S. Copyright Act in relationship to Renewal of Copyright and Termination of Copyright Grants.  Read more here, here, and here.

Applicable code sections: 17 U.S.C. 203, 304.

Case cite: The Ray Charles Foundation v. Robinson, 2:12-cv-02725-ABC-FFM, (USDC Cal. 2013).

Malcom X Heirs Sue for Copyright Infringement and Injunction

The Heirs of Malcom X sue to stop the publication of key portions of Malcom X's diaries.  While the diaries were donated to the New York Public Library, the family argues no copyright transfer has occurred to allow defendant, Third World Press, to print all or any portion of the diaries.    The family, via the entity X Legacy, LLC, seeks emergency injunction relief to stop the publication.  To add to the confusion, one of Malcom X's daughters is an editor of the project and seems to be defending the actions of Third World Press. Donating of papers to a library or other organization is a common practice of high-profile individuals.  The act of donation does not constitute a transfer of the copyright.  At a minimum, in accordance with the terms of the donation or loan agreement, the donee may have the ability to display the materials for research purposes or public review.

At this stage in the litigation process, it is unclear on what grounds Third World Press, LLC is claiming they have the right to reproduce and distribute the diaries.

Making Money In A Digital Age: Bootcamp On Digital Royalty Strategies

Making Money in a Digital Age:   Maximizing your client's film and music revenues with various digital options available at our fingertips.  Join the Sports & Entertainment Law Section of the Dallas Bar Association for a Boot Camp all about digital distribution for film, music, & television. Learn how to maximize you or your client's film, music, or tv revenues with various digital options available at our fingertips.When: Friday, 18 OCT 2013 at 1:00pm Where: Texas Theatre, 231 W. Jefferson Blvd, Dallas, TX 75208,  214-948-1546$25 for lawyers (MCLE Pending) $20 for non-lawyers

To purchase tickets, please go to: http://www.prekindle.com/promo/id/22815447475413408

Music PanelistsSteven Corn - Los Angeles, California Co-owner with BFM Digital

Andy R. Jordan - Dallas, Texas Music producer for interactive media and documentary films

Lee Mezistrano - Seattle, Washington Lawyer with Starbucks - Digital Ventures

Evan Stone - Dallas, Texas Lawyer with FUNimation Entertainment and Partner at Stone and Vaughn PLLC

Film Panelists

Steven Masur - New York, New York Lawyer, Venture Law Group Cowan Debaets Abrahams & Sheppard LLP

Ken Topolsky - Dallas, Texas Producer, Dallas TV Show

Lise Romanoff - Los Angeles, California Managing Director/CEO , Vision Films

Copyright and Trademark Filings Still Accepted - Government Shut Down

UPDATED 10/7/2013 - The USPTO is currently unable to process credit cards.  If your filing deadline is today, you must use an alternative payment/filing method.ORIGINAL POST - The U.S. Copyright Office shut down at 12:01 am October 1, 2013.  According to their website, new Copyright Applications may be filed via the online eCo system.  We will assume that applications will not be processed until the government reopens.  Registration dates should not be impacted as the effective date of registration is the date the Copyright office receives the application, filing fee and deposit material.  If at all possible, use the eCo system to upload your deposit to insure the date of receipt of the deposit.

The US Patent and Trademark Office has reserve funds to operate for approximately 4 weeks. At this time processing of documents should continue uninterrupted.  As always, we recommend filings be made online via the TEAS or TEAS Plus systems.

Entertainment Law Update Podcast 42 - For IP Lawyers

Film lawyer Gordon Firemark and music lawyer Tamera Bennett bring you a mid-Summer podcast covering film, tv, trademark, copyright and employment law issues. Click here for the July 2013 Entertainment Law Update Podcast.  Be sure to subscribe to the podcast in the iTunes store and share a review.

EMI Entertainment World, Inc. v. Karen Records, Inc. - Who is the right plaintiff in a copyright dispute

EMI Entertainment World, Inc. learned the hard way  that making sure you name the correct plaintiff in a lawsuit is pretty important to winning. EMI sued Karen Records, Inc., Karen Publishing, Inc. and the owners of these entities for copyright infringement and won a $100,000 verdict.

Too bad EMI did not listen to Karen's attorney and verify who actually owned the copyright in the songs/sound recordings that were infringed by Karen. Because EMI refused to join in the lawsuit one or more of EMI's subsidiaries as the proper party and owner of the copyrights, the case was dismissed by the judge for lack of jurisdiction.  EMI did not have standing to file the suit on behalf of the EMI subsidiaries.  EMI was notified of this potential deficiency in the lawsuit and refused to fix the problem.

Copyright litigation practice tip -  Name the actual copyright owners as the parties to the lawsuit. EMI won, but actually lost.

Here's a link to the Opinion.

Copyright Basics FAQ - How Do I Register A Copyright?

Updated May 13, 2014

Copyright Basics
By Library of Congress Copyright Office

The US Copyright Office has a wealth of information available on their website on the copyright registration process.

What is a copyright?

Copyright is an original work of authorship fixed in a tangible medium of expression --- such as a song, book, or sound recording.

What is the difference between a trademark and a copyright?

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.

Copyright protection arises at the moment of creation — when you fix an original work in a tangible expression. Follow through with a copyright application to gain additional protections.

What is a “Poor Man’s Copyright”?

The practice of mailing a copy of your own work to yourself is sometimes called a "Poor Man's Copyright."  There is no provision in the copyright law regarding any such type of protection, and it is not a substitute for registration. In the event of an infringement lawsuit it may not even be admissible to prove creation and ownership of the work.

Do I need a lawyer to file a copyright application?

NO. Anyone may complete and submit an application to the Copyright Office.

Where do I file a copyright application?

Copyright applications may be filed through the U.S. Copyright Office.  More information is available at www.copyright.gov.

Which copyright application form should I use?

The Copyright Office has transitioned to an online filing system to replace the old TX, SR, PA paper forms.  To use the eCO Online Filing system click here.

What does it cost to file a copyright application?

As of May 1, 2014, the current filing fees charged by the Copyright Office are:

  • $65 per hard copy application;

  • $35 per eCO Online Filing application if there is a single author, same claimant, one work, not for hire; or

  • $55 per eCO Online Filing application for multiple authors, claimants, works; and work for hire.

Do I need to register my work to have copyright protection?

The short answer is No. Copyright protection arises at the moment of creation — when you fix an original work in a tangible expression. Follow through with a copyright application to gain additional protections.  Many choose to register their works because they wish to have the facts of their copyright on the public record and have a certificate of registration. Registered works may be eligible for statutory damages and attorney's fees in successful litigation. Finally, if registration occurs within 5 years of publication, it is considered prima facie evidence in a court of law.

How long is my work protected by copyright?

  • Life of author plus 70 years for works created or published on or after January 1, 1978 and are not deemed a work for hire;

  • 95 years from publication for works published with proper notice and renewal (if necessary) between 1923 and 1977.

Creative Commons is all the protection I need, right?

Creative Commons Licenses do not give you copyright protection. The licenses available from Creative Commons are simply that … licenses to help you define the rights and obligations by which other people can use your works.  Creative Commons is simply one option available to you for licensing your works to third parties.

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

Pre-72 Sound Recordings not subject to DMCA

Under New York state law a decision issued last week holds pre-1972 sound recordings are not subject to the DMCA safe harbor provisions and Grooveshark is liable for state law copyright infringement of UMG owned pre-1972 sound recordings.  UMG Recordings, Inc. v. Escape Media Group, Inc. Opinion linked here. The year the sound recording was released is key to UMG's argument.  Prior to February 15, 1972 sound recordings were protected by state law copyright schemes.  All sound recordings released after February 15, 1972 are protected by Federal Copyright Law.

Grooveshark continues to hide under the protection of the DMCA (Digital Millennium Copyright Act) Safe Harbor provision claiming it didn't know that content uploaded by third parties was infringing and had been uploaded without permission.   I believe the judges' decision was correct.  If the pre-72 sound recording owners do not receive any of the protections of the Federal Copyright Act such as the ability to recover attorneys' fees or sue for statutory damages, then why should an infringer receive defensive benefits from the Copyright Act?

Because this decision was issued by the New York State Appellate Court, that court had no obligation to follow a footnote in  Capitol Records, Inc. v. Mp3 Tunes, LLC, 821 F.Supp.2d 627 (S.D.N.Y. 2011) in which the court states in dicta:

This Court agrees with [Mp3 Tunes, LLC] the plain meaning of the statutory language makes the DMCA safe harbors applicable to both state and federal copyright claims. Thus, the DMCA applies to sound recordings fixed prior to February 15, 1972.

UMG made a great tactical decision in keeping their pre- and post-72 sound recordings separated in their legal filings.  A state court was the appropriate venue to decide if the DMCA applies to sound recordings that are not otherwise protected by the U.S. Copyright Act.