Right of Publicity

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 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.

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 Podcast - Episode 76

Entertainment Law Update Podcast 76 Tamera Bennett- Gordon Firemark #trademark #copyright #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.

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

Tamera H. Bennett - Mediation, Trademark, Copyright Spring 2016 Newsletter

Here's the latest news from Denton County trademark and music lawyer Tamera Bennett. Click the link to see updates from Tamera on her news interview on Prince's estate, walking the Cowtown Half Marathon, and protecting your band name as a trademark.

Entertainment Law Update Podcast - Episode 71 Tamera Bennett and Gordon Firemark

Entertainment Law Update Podcast Episode 71 -Tamera Bennett - Gordon Firemark #podcast #trademark #copyright #law

Click the arrow below to listen to Episode 71

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.

In Episode 71 Tamera and Gordon give the final wrap in the Happy Birthday class action lawsuit, answer questions about trademarks and copyrights in video games, and discuss player tattoos in video games.

These topics and more are available by clicking the arrow in the bar above.

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.

Real Trademarks in Virtual Game Worlds - VIRAG


Video games have become so realistic sometimes I struggle to tell the difference on a computer or TV screen between what's real and what's virtual. Game developers include familiar trademarks and brands to bring authenticity to the game.

First Amendment v. Trademark

In the United States, creative works are protected as free speech by the First Amendment.  Because of that protection for the whole 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).  If the court determines there is a likelihood of consumer confusion, it will then balance the trademark rights against the freedom of expression rights.

The standard test is is the two-prong 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.  Rogers and the cases adopting its holding have consistently framed the applicable standard in terms of confusion as to the defendant's artistic work as a whole and not solely the alleged use of the defendant’s trademark.

It would probably be helpful to jump over to Tamera's article Is That Fair (Use)? Third Party Trademarks in Film, Print, Video Games and other Media for some basics on the topic of fair use and trademarks and more background on application to video games.

Virag, S.R.L. v. Sony Computer Ent. America LLC

Race cars don’t seem to bring any new twists to the Rogers test. In Virag, S.R.L. v. Sony Computer Ent. America LLC, 3:15-cv-01729 (N.D. Calif. 2015), Virag, a flooring manufacturer, sponsors the Rally of Monza Track in Formula 1 racing. This means their trademark is visual around the track. And, one of their owners, Mirco Virag is a Formula 1 race car driver.  In 2010, Sony released the race car driving simulation game Gran Turismo 5 including a simulation of the Monza Track and the VIRAG trademark on a bridge in the game. The VIRAG mark was also used in Gran Turismo 6.

The court applied the Roger’s test on a Motion to Dismiss holding: 1) Since the game is focused on having a realistic race experience, using the VIRAG mark has some artistic relevance to the video game; and, under prong 2) there was no intentional misleading of consumers as to sponsorship. Gran Turismo 5 and 6 are race car simulation games. Because the VIRAG mark was used on the track and not on a race car, the court found the use was not intentionally misleading to consumers. Compare the holding and discussion in Electronic Arts, Inc. v. Textron, Inc., No. C 12-0018 (N.D. Cal. July 25, 2012).

The result of each video game case is fact-determined. What does that mean? Simply, the facts of the case determine the outcome. There's not a clear yes or no answer as to whether or not it's fair use to use a trademark you don't own in your video game.

Texas trademark lawyer Tamera Bennett will share even more of her thoughts on this topic at the TexasBarCLE Advanced IP Conference on February 18, 2016.

Entertainment Law Update Podcast - Episode 67


Film lawyer Gordon Firemark and Texas trademark lawyer Tamera Bennett were back "on the horn" for Episode 67. From Bikram Yoga to the Batmobile - they've got you covered on the latest legal issues in entertainment law.

Click the arrow below to listen to Episode 67.

Music In Political Campaigns - What Licenses Do I Need?


As the 2015/16 presidential election campaign trail heats up, we will hear more and more music and perhaps see more and more demand letters from artists/songwriters to the presidential candidates.

In the podcast below, Dallas copyright and music attorney Tamera Bennett explores questions related to public performance licenses, synchronization licenses, master use licenses and right of publicity -- all related to music used in presidential campaigns.

Theme Songs |

Presidential candidates love to pick theme songs. That's all fine and dandy when the artists and songwriters behind the selected tune support the candidate - - Bill Clinton and Fleetwod Mac ("Don't Stop").

So far this season, Donald Trump's campaign has heard from REM and The Rolling Stones.  Neil Young wasn't thrilled about Trump using "Rockin' in the Free World." And,  Aerosmith front man, Steven Tyler asked Trump to stop dreaming and stop using "Dream On."

Legal Issues Stay The Same |

There's nothing new to the legal issues. Do you remember the band Heart being so upset that candidate Sarah Palin used "Barracuda" in the 2008 presidential campaign? How about Newt Gingrich using "Eye of the Tiger?"

The podcast above will answer your questions on how you can use music in a political campaign.  Want to hear even more from Tamera Bennett and Gordon Firemark on the topic - click here for the Entertainment Law Update Podcast where they discuss the latest on Trump and Steven Tyler.

Join Us |

Leave a comment below with your favorite campaign song.

Entertainment Law Update Podcast - Episode 62 - Tamera Bennett, Gordon Firemark

Click the arrow below to play the Entertainment Law Update Podcast Episode 62

Entertainment lawyers Tamera Bennett and Gordon Firemark join forces for this Episode of the Entertainment Law Update Podcast. 

Tamera and Gordon share their insight on film/tv legal issues; music law; trademark law and copyright law in space.  Listen to learn the latest on Robin Williams' rights of publicity estate planning, MP3 tunes damage award, the Grooveshark ruling and much more.

Entertainment Law Update Podcast - Episode 61

Click the arrow to listen to Episode 61 of the Entertainment Law Update Podcast

In this episode of Entertainment Law Update Podcast, co-hosts lawyers Tamera H. Bennett and Gordon Firemark review the "Blurred Lines" decision, the effectiveness of reality TV releases, the Songwriter Equity Act and much more.