Tamera Bennett Press

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.

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 individual song licenses.  If you have a variety of music in your podcast and are unable to limit your music selections to those licensed by one performance rights society, you will need web licenses from ASCAP, BMI and SESAC.  While license fees will vary, you can estimate a minimum annual license around $300.00 for each society.

Most podcasts are embedded or streamed from a blogging or website platform. When you go to license the rights for public performance in the United States, the licenses are not typically named a “podcast license.”  At www.ascap.com the licenses are labeled for “website and mobile apps.” Search www.bmi.com under the “digital licensing center.” And, search www.sesac.com for “internet licensing.”

Mechanical Reproduction Right of Songs In Podcasts

Potentially two different mechanical uses are triggered when a podcast is accessed. If a podcast that contains music is downloaded, a permanent digital download (PDD) occurs with each individual digital delivery transmission resulting in a reproduction made by or for the recipient which may be retained and played by the recipient on a permanent basis. PDDs are sometimes referred to as full downloads or untethered downloads.  Even though the song is part of and incorporated into the podcast, the use is considered a PDD and requires a mechanical license and mechanical royalty.

The second mechanical right is triggered by interactive streaming. Streaming means listening to the podcast (which contains music) in real time, instead of downloading a file to your computer or mobile device and listening to it later.  There are two types of streaming: interactive and non-interactive. Streaming of content is considered interactive, or on-demand, when the listener can request the specific recording they wish to hear and the digital file is transmitted electronically to a computer or other device contemporaneously with the user's request.  17 U.S.C. § 114(j)(7).  Because the end user can control when they stream the podcast, the action is considered interactive. Other examples of interactive streaming include services such as Spotify, Beats Music, Google Play Music All Access, and Xbox Music.

Both the PDD and interactive streaming of the songs require a mechanical license. Does it matter how much of the song is used? Probably not. Unless the podcaster is able to fit within a fair use exemption for using the song, a mechanical license will be required. (See 17 U.S.C. § 107 for more on fair use). The leading collective for securing mechanical licenses is the Harry Fox Association (HFA). It is very important to realize that HFA does not have the rights to every song that a podcaster might want to include. Unlike a public performance license, there’s no ability to secure a blanket license for the podcast. Individual licenses must be secured for each song. Visit “digital licensing” at harryfox.com for more information on mechanical licenses for songs in podcasts. Because HFA does not have the rights to license every song, the podcaster may have to contact individual music publishers for the rights needed.

The current mechanical rate for a PDD is 9.1 cents per song per download. The rates for interactive streams are determined by a number of factors. These include service offering type, license type, service revenue, recorded content expense, and applicable performance royalty expense. 

Keep in mind the rights, licenses and rates are only for the United States. Each country has its own licensing procedures. As an example, in the UK and Australia, podcasters can license the public performance right and mechanical rights from a single organization in each respective country.

Sound Recordings or Master Recordings for Music In Podcasts

If securing the rights for the song wasn’t tough enough, a podcaster must also secure the rights for the version of the song – the recording – she wants to use. Performing the song in the podcast is a “digital audio transmission” of the sound recording. 17 U.S.C. § 106(6). With the master, two different rights are triggered.  A digital public performance right and a reproduction right – more commonly known as a master use.

A podcast is considered an interactive stream because the consumer can select when they play the podcast. A podcast is not the same thing as internet radio. Internet radio is non-interactive meaning the user cannot choose the track or artist they wish to hear.  The Digital Performance in Sound Recordings Act of 1995 created a statutory license for subscription-based, non-interactive digital audio transmissions.  17 U.S.C. § 114.  In 1998, Congress passed the Digital Millennium Copyright Act, which expanded the statutory license to include non-subscription, non-interactive digital audio transmissions.  License fees for non-interactive uses are pre-determined by a rate determining body called the Copyright Royalty Board, are non-negotiable and paid by the internet radio stations, webcasters and satellite radio stations to SoundExchange (the entity designated to collect the royalties) as a digital performance royalty. 37 C.F.R. Part 380.

You need to understand that SoundExchange cannot help you license sound recordings for a podcast.  In fact, SoundExchange states the following:

Interactive streaming and downloads: In addition, the statutory license administered by SoundExchange does not cover interactive streaming or downloads of any kind, including downloadable “podcasts” of archived programming. If you are offering podcasts that include sound recordings, then you may need to obtain a direct license.
— SoundExchange Memo to All Commercial Broadcasters dated Nov. 21, 2014

Because of the interactive nature of on-demand services, there is no statutory scheme or Copyright Royalty Board determining licensing rates.  The on-demand services must secure direct sound recording licenses from the owners of the sound recording copyrights in order to stream.  Royalty rates for on-demand services are negotiated between the sound recording copyright owner and the podcaster.

What does this mean for the podcaster? It means you have the obligation to secure a direct license for each sound recording that is in an episode of a podcast. You will have to negotiate direct licenses that will cover the digital public performance right and the reproduction/master use right. There are some companies that provide clearing house licenses for interactive sound recording uses. While I do not endorse or recommend any particular services, MediaNet (mndigital.com) is used by many large interactive streaming services for clearing popular music rights.  Their pricing may or may not be practical depending on the reach and scope of your podcast.

Possible Solutions For Music In Podcasts

Don’t give up hope yet. You may still be able to have music in your podcast.

The easiest solution to using music in your podcast is to secure music from a stock music library that has already pre-cleared all the necessary rights. It’s your job to read the license from the stock music library to determine if you have the rights for a digital interactive public performance of the song, permanent digital download of the song, interactive digital public performance of the sound recording, and master use/reproduction of the sound recording.  Keep in mind, most choices from a music library will probably be original music tracks created for the library. This means, using the latest Beyoncé track is probably not an option.

Another option is to hire musicians to record original music and sound recordings for you. Again, you need to secure in writing all of the appropriate rights.

You might also hire musicians to re-record some popular songs for you. Make sure you secure in writing the ownership and all copyrights in the re-record. In this situation, you would only need the public performance licenses from ASCAP, BMI and SESAC; and mechanical licenses from HFA.  By re-recording the popular songs, you’ve eliminated the need for any negotiated licenses for using the original sound recordings.

If you're interested in more hot topics in podcasting legal issues, visit the Google+ Community hosted by Tamera Bennett and Gordon Firemark.  Also, subscribe to the Entertainment Law Update Podcast so you don't miss any updates.

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

7 Questions for Authors to Ask Before Signing a Book Contract

Media and copyright lawyer Tamera Bennett presented 7 Questions for Authors to Ask Before Signing a Book Contract to the students enrolled in the "Author's Job" course presented by Creative Enterprises Studios.

Seven Questions for Authors to Ask Before Signing a Book Contract:

  1. Who owns the copyright in my book?
  2. How do I register a copyright?
  3. What are the options for publishing my book?
  4. What rights will the book publisher want?
  5. What will I get paid?
  6. When will I get paid?
  7. How can I cancel the book contract?

Bonus topics on trademark law and book publishing:

You can view the slide show above.



Protecting Your Business Trademark - Interview with Texas Trademark Lawyer Tamera Bennett

How Do I Protect My Business Trademark #trademark #intellectualproperty#createprotect Attorney Tamera H. Bennett

Whether you're a big or small business, you need to know how to protect your brand. Texas trademark lawyer Tamera Bennett was interviewed for Insureon to help business owners answer the following questions:

  1. Why do I have to defend my trademark?
  2. How can I protect my business from a trademark lawsuit?
  3. What do I do if my business is accused of trademark infringement?

Click here to read the full article and trademark attorney Tamera Bennett's responses.

Texas Music Lawyer Tamera Bennett Interviewed On Prince Estate Issues

Lesson Learned From Prince Make an Estate Plan attorney Tamera Bennett interviewed on KRLD. #princerip #rightofpublicity #estateplan #copyright

Dallas copyright and music attorney Tamera H. Bennett was interviewed today by KRLD Radio News Anchor Mitch Carr regarding what happens now to the assets in Prince's estate.

The death of music icon Prince shook the music world . . . but it's also causing headlines in the legal world. Prince's sister Teeka Nelson has gone to court to ask that someone be named to take over her brother's multimillion-dollar estate . . . and says there is NO WILL.

Click the arrow below to hear Mitch Carr and Tamera Bennett's conversation recorded on April 27, 2016.

Transcript of interview with Texas Music Lawyer Tamera Bennett on Prince Estate:

Mitch Carr -- The death of music icon Prince shook the music world . . . but it's also causing headlines in the legal world. Prince's sister Tyka Nelson has gone to court to ask that someone be named to take over her brother's multimillion-dollar estate . . . and says there is NO WILL.

Tamera Bennett -- So two different things were talking about.  Dying intestate means he died without a will.  

Mitch Carr -- Okay.

Tamera Bennett -- So he didn't have a written document saying this is how I wish for my assets to be disbursed upon my death.  So he dies intestate which means the state of Minnesota, just like every other state, has statutes that say who will get what upon his death.  It will go to his siblings.  And, under Minnesota law his half-siblings are treated as equal to his -- I believe he has one sister who is a full sibling.

Mitch Carr -- Right. I think what's important here is this can be a life lesson for all of us.

Tamera Bennett -- It sure can. Because we want to -- I think most of us want to control what happens to what we own whether it be small or large-- at the end of the day. And, even more than that do we really want to put our family into a position of having to figure out our wishes? And, sometimes these kind of disputes can not be fun.  So, I'm hopeful that their family will not have a lot of disputes. But, they might. We've seen it with other estates as they've passed away -- Ray Charles, James Brown.  And, in those cases they actually did do a plan.

Mitch Carr --  The fact that there can be fights either way, what does that tell us about how we should do our estate plan? How can we draw something up that won't end up in a legal battle?

Tamera Bennett --  There's nothing that's ever foolproof because it depends on the people who are left.

Mitch Carr -- Alright.

Tamera Bennett -- So, one of the recommendations we often have for people is to spell out why you're leaving them what you're leaving them. And, you don't fully disinherit people.

Mitch Carr -- The bottom line here from a legal aspect is do what you can but nothing's foolproof.

Tamera Bennett -- Exactly right and I think what's interesting partly about Prince is that there are some assets that he has that are very valuable that under Minnesota law it's going to be difficult to figure out who gets them. And one one of that is his right of publicity. So his name and likeness is obviously very valuable. In Texas we actually have a statute that says if -- pretty much -- if you're a famous person and you take value from your name or your likeness or you license that, for fifty years after your death, your heirs can benefit and control how your name and likeness is used. Minnesota doesn't have that law saying that it's inherited.

Mitch Carr -- It's unclear how much Prince's estate is worth. But during his career, he made hundreds of millions of dollars for record companies, concert venues and others . . . and he owned $27 million in property near Minneapolis.

Follow Tamera on Twitter @tamerabennett and Mitch on Twitter @mitchcarrnews.

The clip is used by permission of KRLD-CBS Dallas.

Texas Music Lawyer Tamera Bennett Speaks at SXSW 2016


Texas music and trademark lawyer Tamera Bennett is honored to join her colleagues Paul Bezilla, Lynn Morrow and Kelly Vallon presenting "Developing An Indie Artist's Career Using Their Money on Others'" on Friday, March 18, 2016 at the SXSW Music Conference.

Here's a link to the materials for the presentation. And you can click the slideshow to the right of this post.

Tamera Bennett Interviewed on Happy Birthday Copyright Case


Dallas copyright and music attorney Tamera H. Bennett was interviewed today by KRLD Radio News Anchor Mitch Carr regarding the Central District of California court ruling on the song "Happy Birthday To You."


A federal judge has ruled a music publisher does NOT hold a valid copyright on the song "Happy Birthday to You."   Royalties have been paid for years to use the song in movies and TV shows and such. Tamera Bennett is a copyright attorney in North Texas . . . What does this ruling mean?

Click the arrow below to hear the full interview.

Transcript of Interview By Mitch Carr of Copyright Lawyer Tamera H. Bennett

Mitch Carr -- A federal judge has ruled a music publisher does NOT hold a valid copyright on the song "Happy Birthday to You."   Royalties have been paid for years to use the song in movies and TV shows and such. Tamera Bennett is a copyright attorney in North Texas . . . What does this ruling mean?

Tamera Bennett -- So now it means we can sing "Happy Birthday," it can be included in film and TV and there's not going to be a license that would need to be paid to the copyright holder.

Mitch Carr --  Yeah Warner Chappell Music owns it now and it was originally the Clayton Summey Company. But does this mean that YouTube, and as you mentioned TV shows, now and movies too don't have to worry about it?

Tamera Bennett --  That's exactly right. And I mean the decision that the judge came down with was that the lyrics, and again the music has long since been unquestionably in the public domain, that there was no valid copyright assignment was part of the issues that they talked about in the twenties and thirties. That perhaps Summey may never actually owned the lyrics at all. And, it also means it is in the public domain.

Mitch Carr -- Is there any expectation that this will be appealed by Warner Chappell or anybody else?

Tamera Bennett -- I suspect it will be. I think they earn two million a year in fees. I believe that was either part of the opinion or some of the press that's been out. So at 2 million a year I suspect it's worth a fight to appeal the case.

Mitch Carr -- Can I get money back?

Tamera Bennett -- You know that's a great question. Because what about all of the -- even taking it out of the realm of the folks who maybe posted their birthday celebration on YouTube -- but let's put it into the realm of it was used in a movie.  And in this case it was used in a documentary -- is what spurred this lawsuit. You know, can those folks come back and get their money back? I don't know how that's logistical going to happen. I suspect anybody who has secured a license and going forward they're going to stop paying. And I think they can unless there's some contractual reason in the contract that they have to keep paying even though copyright has expired.

You know people wonder why when you go into certain restaurants and the servers are going to greet you for your birthday and they don't sing the happy birthday song -- they make up a song to sing to you?

Mitch Carr -- Right

Tamera Bennett -- No more. They'll now be singing it to you.

You can follow Tamera on Twitter @tamerabennett and Mitch on Twitter @mitchcarrnews.

The clip is used by permission of KRLD-CBS Dallas.

Image CC2.0 By Will Clayton.

CLE - Copyright and Trademark Primer- Webcast and Replay


MCLE Credit: 1 hr
Texas MCLE No: 901315062
Registration Fee: $85
Register for Webcast

How do I protect my copyrights and trademarks?

This program covers the basics of copyright and trademark law for the non-IP attorney. It's also perfect for the the business owner who wants to understand brand protection.

The program addresses the most commonly asked questions about copyright and trademarks, including: What are the differences between copyrights and trademarks? How do you get protection for your copyrights and trademarks? What are the advantages of registration? What do I do if I think someone has infringed my work? Am I covered if I just put my work in an envelope and mail it to myself?

Learning Objectives:

  • Understand the differences between copyrights and trademarks
  • Learn how to protect copyrights and trademarks
  • Identify issues relating to infringement - both when you think someone is infringing your rights and what to do when someone has accused you of infringement


Ms. Tamera H. Bennett, Lewisville
Bennett Law Office, PC

Ms. Dyan Michele House, Dallas
Carter Scholer Arnett Hamada & Mockler, PLLC


Watch in the comfort of your own home or office! If you cannot watch the entire webcast at its scheduled time, register now and watch it when the recording is available after the broadcast. You will have until to March 31, 2016 complete the program at your convenience!


Media Attorney Tamera Bennett - Panelist at CWIMA National Conference 2015


Dallas-area trademark and media attorney Tamera Bennett is honored to be a panelist

at the 11th Annual -  Christian Women in Media (CWIMA) national conference.

The 2015 national conference, held in Dallas, targets female media professionals, leaders, support agencies and aspiring women. The three day event offers multiple large group and break-out sessions.  Tamera will present her thoughts on protecting your intellectual property - trademark & copyrights and other legal issues in the media world. She is honored to be a co-panelist with bestselling author, CPA, and media entrepreneur Deborah Pegues as they discuss "The Business of Media – Expand your Financial 'Know-How' to Build Your Business and Increase your Reach."

Click here to learn more and register for the conference held April 30 to May 2, 2015 in Dallas (close to the Galleria).

Denton Trademark Lawyer Tamera Bennett Guest On Marketing Podcast

Texas trademark lawyer Tamera H. Bennett joins host Nick Augustine on the LawTalkRadio Podcast and shares tips for marketing and branding firms who want to avoid trademark pitfalls and lawsuits.

Topics covered in the 30 minute interview:

  • Tell us a little about yourself and why you chose to practice trademark law;
  • Describe a typical client and the trademark services your firm provides;
  • For marketing and branding firms, what are some trademark pitfalls?
  • What can happen if a creative firm/client gets sued for TM infringement?
  • How do you help trademark owners learn how to leverage their marks?
  • Do creative firms frequently use trademark lawyers for their client work?
  • Are there any resources you recommend to people who want to learn more?

Tamera H. Bennett is a wife, mom, lawyer, mediator, blogger, podcaster, and legal writer. With fifteen years in law practice, Tamera guides clients in licensing of materials to and from third parties. In addition to music licensing, trademark application prosecution and trademark licensing agreements, Tamera advises clients on co-branding, product placement, endorsement and sponsorship agreements. 

Bennett Law Office, PC , 132 West Main Street, Lewisville, Texas 75057, Phone: (972) 244-3210, Website Link

Sponsor: Members’ Choice Federal Credit Union on Unicorn Lake Boulevard.  You may be eligible to join if you live, work, worship or attend school in Denton or Argyle, Texas.

Learn more about Nick and Lone Star Content Marketing by clicking here.

Attorney Tamera Bennett to Speak at Writer's Conference

Dallas copyright, entertainment and media lawyer Tamera Bennett will discuss legal topics in book deals at the Roaring Lambs' Christian Writer's Conference on Saturday, July 19, 2014 in Plano, Texas.

The ninth annual conference will feature topics such as the Art of Writing, the Power of a Great Proposal, the Differences Between Traditional vs. Customized Publishing, Creative Marketing and Social Networking, Writing Besides Books, and the Uniqueness of Your Message.

Texas copyright lawyer Tamera Bennett is honored to be included in a day filled with speakers such as Karol Ladd and Allison Bottke to name just a few of the presenters.

It's not too late to register.

Divorced in Motown: Who Gets the Rights?

Image Mathias Miranda CC2.0

Image Mathias Miranda CC2.0

Updated 12/31/2014 - Smokey Robinson and his former wife settle the lawsuit out of court. The parties told the judge, "Due to the complexity of the settlement issues involved in reducing the parties’ agreement to a long form, which issues include having to address different income streams, and possible future uses and disposition of the copyrights and income streams, the parties require additional time to finalize their settlement agreement. The agreement also requires input from family law and music transactional counsel, in addition to litigation counsel."

originally published in TEXAS LAWYER*

Family lawyers worry about a divorce client or the ex-spouse undoing a settlement agreement after the divorce and diverting money or property. Worry is well founded if a client or his/her soon-to-be-former spouse writes songs, books, scripts or otherwise creates things protected by copyright.

Here’s a question: How does a divorced spouse claim a property right that might vest 30 years after the divorce? On March 7, famed songwriter Smokey Robinson filed a declaratory judgment in the U.S. District Court for the Central District of California. He asked the court to find that he had the sole right to reclaim certain copyright assets and that those rights, once reclaimed, vest solely in him. He and Claudette Robinson divorced 25 years ago. She now claims she is entitled to certain revenues from what Smokey Robinson alleges is a new and unvested property right that did not exist during their marriage.

Federal copyright law and state community property law don’t often collide, but when they do, it makes for an interesting case. As set forth in 17 USC §101, a copyright is an original work fixed into a tangible medium of expression. The right vests in the author of the work at the moment of creation.

Federal copyright law and state community property law don’t often collide, but when they do, it makes for an interesting case.
— Tamera H. Bennett

Although California law governs the Robinson case, the analysis is similar under Texas law. In Alsenz v. Alsenz, decided in 2003 by Houston’s First Court of Appeals, Texas fell in line with other community property states. The First Court held that a copyright created during the marriage is community property, and any royalties earned during the marriage are also community property.

In a U.S. Court of Appeals for the Fifth Circuit ruling in Rodrigue v. Rodrigue (1999), which originated in Louisiana, the Fifth Circuit held that federal copyright law does not preempt state family law. Texas adopted this stance in regard to patent law in Alsenz and Sheshtawy v. Sheshtawy (2004). It is a natural extension of Alsenz for Texas courts to find copyright law does not preempt Texas state family law.

Smokey Robinson assigned the copyright in the songs that he wrote during the marriage to his music publisher. That assignment entitled the songwriter to certain royalties from revenue earned by the music publisher from the songs.

Extending the reasoning in Rodrigue to the facts as alleged in Robinson, the royalties earned during the marriage should be community property. Claudette Robinson’s counterclaim filed on May 2 alleges that, upon divorce, there were 453 song copyrights that Smokey Robinson could solely control, but he had a fiduciary duty to her in regard to those songs. And, she was entitled to 50 percent of the royalties from these songs post-divorce.

Upon divorce, a non-creating spouse may negotiate a settlement that entitles him/her to a future royalty revenue stream from the copyright work. The non-creating spouse assumes this revenue stream will last for the life of the copyright.

For songs written by Smokey Robinson and published prior to Jan. 1, 1978, the copyright expires 95 years from publication. For the songs he wrote and published after Jan. 1, 1978, the copyright expires 70 years after his death.

The legislative history to the U.S. Copyright Act states that authors had signed bad deals, leading to loss of revenue streams from their copyrights. To counteract this situation, lawmakers revised the act to allow authors to reclaim assigned copyrights and have a second bite at the apple to enter into better deals.

According to 17 U.S.C §§ 304 and 203, Smokey Robinson, as the author, has the sole right during his life to terminate copyright assignments to the music publishers and reclaim ownership of the copyright in the United States for the 453 songs.

The Copyright Act sets forth detailed requirements on when and how to file such notices to terminate the copyright assignments. According to filings recorded with the U.S. Copyright Office, Smokey Robinson has so far filed notices to terminate the copyright assignments for 16 of the 453 songs and the rights in the 16 songs vested in the songwriter. Eventually, he’ll be able to assign the remaining U.S. copyright term for each song in which the rights vests.

While any of Smokey Robinson’s assignment of rights doesn’t completely cut off the royalties to Claudette Robinson, it could have a substantial impact. She wouldn’t be entitled to royalties from any new revenue streams, as those new revenue streams tie to the new right that vested in Smokey Robinson. Claudette Robinson still would receive her portion of income from prior licenses issued, as well as foreign royalties as those rights are not impacted.

It is unclear how Claudette Robinson will succeed in arguing that the U.S. Copyright Act allows any portion of this new right to vest in her, the divorced spouse. Smokey Robinson must take an affirmative action to terminate the copyright grants. If the songwriter dies before it’s time to take this affirmative action, only then may his then surviving spouse and surviving children (and possibly grandchildren) file the notices of termination.

Also, 17 U.S.C. §203 (b)(4) specifically states that “a further grant, or agreement to make a further grant, of any right covered by a terminated grant is valid only if it is made after the effective date of the termination.” Even if Smokey Robinson had made a grant of any potential reclaimed copyright term to Claudette Robinson as part of their divorce, the grant would have been invalid and unenforceable.

If the divorce settlement agreement, as alleged by Claudette Robinson, requires her former husband to act as a fiduciary to her, must he do everything he can to protect the 50 percent royalty to which she is entitled? Perhaps contract law, not copyright law, secures her a portion of royalties from this new vested right.

Just maybe, the deal has not been undone at all.

Tamera H. Bennett is a trademark, copyright and entertainment attorney and mediator practicing law in Texas and Tennessee as president at Bennett Law Office, PC in Lewisville.

*Reprinted with permission from the July 7, 2014 print edition of Texas Lawyer. © 2014 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited.  Read more