Benefits of trademark registrations for musical Artists

Many artists wonder whether they should register their band names or artist names as trademarks with the USPTO. There are several considerations that make trademark registrations a good idea. Some are codified in the federal trademark statute, which is known as the Lanham Act. For example, under the Lanham Act, when you apply to register your trademark, you lock in your “priority” over anyone who might later try to use the same mark, or one that is “confusingly similar” to it, on a nationwide basis. A band that has never played outside of California, therefore, would have the ability to enforce its mark against a junior user in Arkansas thanks to its trademark application. Additionally, the Lanham Act provides that owners of registered trademarks are entitled to a presumption of the validity of their rights if they ever have to go to court to address an infringement, which can also be very consequential.

Perhaps the most important benefit to trademark registration doesn’t come from the Lanham Act, however. It’s the ability to enforce your trademark in private correspondence (e.g. takedown notices) with services like Spotify. That is, social media services and streaming platforms like Spotify often refuse to cooperate with trademark complaints unless the complaining user has a trademark registration. This practice can be frustrating to lawyers since it is not really grounded in the Lanham Act or other authorities (notably, you have some rights in your mark even without registering it), but streaming platforms don’t seem to care.

If you’re afraid someone else might use your same name, or one that’s very close to it, on Spotify or other platforms and thereby sew confusion among your fans and maybe even divert your royalties, you shouldn’t hesitate to register your mark.

Uses and misuses of the digital millennium copyright act

Back in 1998, Congress enacted a law known as the Digital Millennium Copyright Act, or DMCA, which forms the backbone of the “copyright strike” system you might know from YouTube or other platforms. Under the DMCA, service providers like YouTube or Spotify, as well as distributors like TuneCore or DistroKid, are shielded from liability for copyright infringement in relation to the works they distribute as long as they satisfy certain requirements in the law—i.e., in general, they have to have a system for the submission of “take-down” requests by people who think the works the services are distributing violate their copyright interests, as well as a system for the submission of “counter-notices” for people who think their works were removed improperly. As long as the notices contain the information listed in the law, the service providers must promptly remove content in accordance with take-down notices and reinstate it in accordance with counter-notices. It is supposed to be a rubber stamp process. Under the law, if the service providers don’t follow these rules, they lose their immunity and assume responsibility for infringing content.

The system makes sense, fundamentally. These platforms ingest and distribute massive amounts of content, and they can’t be in the business of vetting all uploads against a boundless universe of prior art to determine whether the uploads are infringing. At the same time, it wouldn’t be fair to let them ignore good faith infringement claims either. The resulting take-down notice and counter-notice procedure, when utilized correctly, can be an extremely useful tool to parties asserting or defending against claims of copyright infringement.

Unfortunately, anecdotally, it appears that many providers have stopped consistently removing content uploaded to their services despite receiving a compliant take-down request and reinstating content previously removed despite receiving a compliant counter-notice. The explanation, perhaps unsurprisingly, appears to be the commercial significance of the users on either end of the dispute to the service providers. If a major label wants its song on or your song off of streaming services, for example, the services will generally comply irrespective of the DMCA’s requirements. If you’re an independent artist, the streaming services will probably care much less about your preferences. Needless to say, this can be extremely frustrating if you’re an independent artist with a meritorious claim of Infringement or a defense to someone else’s claim in that regard.

As service providers behave less and less predictably with respect to DMCA issues, it is more and more important to involve knowledgeable lawyers in the process early on. We routinely form creative and powerful strategies to get clients what they need when it comes to DMCA matters and copyright claims generally, and would be happy to assist you in this area if needed.

Reclaiming Your Works - Terminating Transfers of Copyright Interests

Are you written about in this Billboard issue about the top songs from 1990? If so, we should talk.

Many of the contracts you might be asked to sign as a recording artist, songwriter, producer, or other creative professional in the music industry will contain a clause that states that by signing the contract, you are surrendering your copyright interests in the works you create under the deal forever. That can be scary. After all, for a lot of creatives, a song or recording on which they work is like their baby, and turning over custody and control of your baby is not a pleasant proposition. Well, good news: In most cases, you have the ability to terminate the transfer and reclaim your interests, even if you sign a contract that contains a clause like that.

The key is section 203 of the Copyright Act. If you’re a copyright lawyer or are having trouble sleeping, you can read the text of the statute here. What it means, in short, is that there is a five year window that starts 35 years after you transfer your copyright interests in which you can cancel the transfer and reclaim your interests. To take advantage, realistically, the first step is to hire a lawyer, as the statute is full of traps and technicalities. Your lawyer will have to send a code-compliant notice to whoever holds the rights you transferred, and the notice will have to be sent at least two years and at most ten years before the cancellation is to become effective.

If they use this tool correctly, artists can enjoy huge financial benefits, as they will be able to make a new deal with respect to their works for the balance of the copyright term. And even if a work isn’t particularly commercially valuable, putting ownership back in the hands of its creator can be a powerful thing from a personal standpoint.

If you transferred a copyright interest in the last 30 to 40 years and are interested in reclaiming it, give us a call so we can discuss your options.

What Do Independent Music Producers Need a Lawyer For?

I get a lot of calls from independent music producers at the very beginning of their careers. I don’t know if It’s their entrepreneurial spirit, which I can easily relate to with my solo law practice, or the sheer musical talent that they often have, but whatever the explanation, they’re fun to work for and are some of my favorite clients. A few times, I’ve had producers call me with a sense that it was a good idea to speak with a lawyer before going too far down the road, but without a sense as to what exactly they need to speak about. This post is for them.

In my experience, the most important thing you need as an upstart music producer is a good beat license agreement. I know—BeatStars and some of the other services offer their own, and there might be some cut rate ones available online. But these agreements are not good. They’re vague, convoluted, and sometimes outright contradictory (just like the free or discount recording agreements you can find online, by the way). None of those are good characteristics for a legal contract, and you’ll be frustrated by each of them when it comes time to enforce your rights and collect your money, at which point it will be too late to do anything about it.

It’s gratifying to work with independent music producers to help avoid these pitfalls through the use of a customized, enforceable agreement that will afford them all customary rights and protections. Even better, in that process, we can have strategy discussions regarding business issues—e.g. Are you sure you want to offer exclusive (or non-exclusive) licenses? Are you sure you want (or don’t want) to put a cap on distribution? These are not insignificant questions, and they’re not ones you should just follow the crowd on. The answer might be different for you from others, and there could be tens of thousands of dollars’ worth of a difference in your life, or more, depending on your answers to these questions.

It can be tough to put up the money for personalized legal services when you’re just starting out, of course, but if you’re serious about protecting your rights and ensuring you won’t get left out if one of your beats becomes a hit, it’s money well spent.

Eric Helps Secure Win for Nicki Minaj on Novel Copyright Theory

In addition to the work he does through his independent practice, over the last several years, Eric has been happy to collaborate with the Century City litigation firm Browne George Ross. Among the clients he represents in that role is the superstar Nicki Minaj, for whom Eric recently helped secure a favorable summary judgment ruling in a copyright infringement case brought by the artist Tracy Chapman.

In advance of Minaj’s 2018 album Queen, she recorded a song with Nas called “Sorry” that contained an “interpolation" (which is similar to a sample) of Chapman’s composition “Baby Can I Hold You.” Minaj left “Sorry” off of Queen, however, after Chapman refused to grant her a license for the interpolation. Nevertheless, the recording was somehow leaked to New York DJ Funkmaster Flex and played on his radio show around the time of the album’s release. In the case, Chapman has argued that Minaj is liable for leaking the track to “Flex,” as he is known, but also that she is liable for infringement just for making the recording in the first place—i.e. that she would be on the hook even if she had nothing to do with leaking the track to Flex.

Fortunately, the court agreed with Eric and his BGR colleague Pete Ross that it is okay for artists to experiment with copyrighted materials owned by third parties in studio sessions so long as they do not intend to commercially distribute any resulting recordings without appropriate licenses. The ruling has a significant and direct impact within the sample-heavy hip hop industry, but it stands for a principle that is important to the efficient functioning of the creative industry in general. As a result, the ruling was widely covered in the press in sources like Hollywood Reporter, Variety, and Pitchfork. You can read BGR’s own summary here and read the full court opinion here.