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May 3, 2016


By Barry Werbin

The Supreme Court just accepted certiorary in the cheerleader uniform case, STAR ATHLETICA, L.L.C. V. VARSITY BRANDS, INC., ET AL. The question addresses the appropriate test to use to determine whether features of a useful article are protected. This is surprising, but very significant for the entire apparel industry.


This is the special question the Court accepted (from the petition):


1. Under the Copyright Act, a "useful article" such as a chair, a dress, or a uniform cannot be copyrighted. 17 U.S.C. § 101. The article's component features or elements cannot be copyrighted either, unless capable of being "identified separately from, and . . . existing independently of, the utilitarian aspects of the article." Id. Circuit courts, the Copyright Office, and academics have proposed at least nine different tests to analyze this separability. The Sixth Circuit rejected them all and created a tenth. The first question is:

What is the appropriate test to determine when a feature of a useful article is protectable under § 101 of the Copyright Act?

Works for Hire and the No Moonlighting Clause: If You Write and App on the Side, Does Your Boss Own it Anyway?

By Britton Payne

Developers (and coders and programmers) dream of creating the next Facebook, Uber, or Spotify. Yet dreaming doesn't pay the bills, so these developers probably work for someone else in the meantime. When dreaming turns into coding on nights and weekends, things start to get tricky with regards to employment agreements.

Developers are a very smart class of people, and often rely on their own judgment when looking over employment paperwork at a new job. Unfortunately for both employee and employer, this often leads to adversarial consequences. When the programmer wants to leave the job to work on the dream, and the legal meaning of language in a contract doesn't line up with the developer's understanding, both the job and the dream can go up in smoke. This problem doesn't affect just tech companies -- many large companies hire developers in one capacity or another. There are many ways an employment agreement can trip up a dreaming developer and employer, often wrapped up in the No Moonlighting and Work for Hire clauses.

"No Moonlighting" Clauses can Turn "Personal Time Developing" into Breach of Contract

With or without a traditional 9:00 to 5:00 in an office, most developers feel like they have a pretty good understanding of what their jobs are: If you do your assignments for the benefit of the company, you're doing your job. Unfortunately, a developer's obligations to the employer may also include the things they don't do in addition to the things they do. Employment agreements often include limitations on what employees can do with their non-work time -- the "No Moonlighting" clause. The idea is that some jobs want you to put all creativity and effort into helping the employer, and not someone else (including the employee). Sometimes this is limited to work related to the job, but sometimes it is for any work at all. Here are sample No Moonlighting clauses:

-...The Employee shall devote substantially all of his business time and attention to the performance of his duties hereunder...

-You agree that you will not engage in any other business activities or render services of a business or commercial nature on your own behalf or on behalf of any other person, corporation or any other entity, whether for compensation or otherwise, without [Company]'s prior written approval.

A narrow No Moonlighting clause might restrict one from freelance developing on one's own time; a broad No Moonlighting clause might restrict one from even tending bar on personal time.

As you can see, the devil is in the details, and a particular clause may not be that easy to understand without the help of an attorney. A client of mine went to quit his job to work full time on his personal time project, and an amicable employer became suddenly aggressive. His employer claimed that not only did it own his project under the Work for Hire clause, but the (now former) employee was in breach of contract under the No Moonlighting clause. Naturally, he panicked. We got him through it, but he would have been much better able to manage his project, or even change his employment agreement, if he had consulted with an attorney before he signed his employment agreement.

"Work for Hire" Clauses can Easily Capture Personal Time Programming

Even without a No Moonlighting clause, most developers realize that a Work for Hire clause is standard, and that it limits their ability to own the programs and code they create for their employers. Developers generally understand that there is some rule about creating outside programs on work computers, during work time, or at the office. Unfortunately for developers, this could mean the difference between owning the intellectual property in outside work, or having to give it over to the employer. Some sample Work for Hire clauses include:

-I hereby assign to the Company... all my right, title, and interest in and to any and all inventions, original works of authorship... which I may solely or jointly conceive or develop... during the period of time I am in the employ of the Company... except an Invention that (i) I develop outside of the Company's normal working business hours and (ii) does not relate to the Company's business as currently conducted, or as conducted in the future. I further acknowledge that all original works of authorship which are made by me (solely or jointly with others) within the scope of and during the period of my employment with the Company and which are protectable by copyright are "works made for hire," as that term is defined in the United States Copyright Act.

-You acknowledge and agree that [Company] is the owner of the copyright in any work which it or you produce in connection with your employment...

-All inventions, innovations, improvements, methods, designs, drawings, characters, props, molds and all similar or related information (whether or not patentable) that relate to the Company's or its Affiliates' actual or planned business, research and development or existing or planned products or services and that the Employee conceived, developed, or made while an employee of, or a consultant to, the Company (collectively, the "Work Product") ... consisting of copyrightable subject matter is "work made for hire" as defined in 17 U.S.C. § 101 and such copyrights are therefore owned by the Company.

The terms of these clauses vary, as does the intellectual property they intend to capture. A more narrow clause would only capture personal time programming that is in connection with the "employment." However, a broader clause captures personal time programming that relates to the company's "actual or planned business," whether or not that relates to the developer's particular job. One developer client used a database program at work that he felt was inadequate. On his own time, he built a better database program for the purpose. He hoped to quit his job and have his employer become his first client. He knew that he had a Work for Hire clause, but because his job did not involve making database programs, he thought his project was outside the scope. When the employer got wind of his plan, they disagreed, and it led to some tense and adversarial negotiations that were unfortunate for both sides. A similar case from the pre-Internet era showed a court's thinking on how broadly "scope of employment" can be construed:

Miller's job description did not specifically state that he was to develop computer programs. Miller was not assisted by others in the development of the computer programs. Finally, Miller did not receive any type of additional compensation for the work done on his own time. However, the driving force behind the creation of the computer programs was to benefit CP by making the quality control laboratory more efficient. Furthermore, the development of the computer programs was clearly incidental to the other work performed by Miller. . . . [T]he court concludes that the development of the computer programs by Miller was within the scope of his employment.

Miller v. CP Chemicals, Inc., 808 F. Supp. 1238, 1244 (D.S.C. 1992). Neither side could have been pleased that it was stuck in a lengthy litigation.

Counseling before Signing the Employment Agreement is Good for the Employer and the Employee

Several of my pre-employment counseling clients have been referrals from employers. Developers are generally very smart and quite comfortable acting independently, but employers have seen relationships with developers go bad over the intellectual property terms of their employment agreements, even when both sides initially think that the terms are reasonable. Many employers of developers want to employ the kind of talented and enthusiastic developers who would build apps on their own time, and have no interest in owning or slowing down their truly outside projects. It may be better to have a special employee like that for only two years than a less motivated employee for 10. At the same time, employers (and their contract drafters) have an obligation to nurture and protect their companies' intellectual property. As friendly as an employer and a new employee may be, the employee is at a disadvantage when understanding the meaning and application of No Moonlighting and Work for Hire clauses. In addition, there are several other standard clauses peppered throughout a developer's employment agreement (and even the company policy documents) that might affect a developer's ownership of personal time programming.

Don't Give Up Hope: The Terms are Often Just the Starting Point for Negotiations

No one wants to go to court, no matter how much bluster one side or the other might display, and it may not even be in either side's interest to strictly enforce the No Moonlighting/Work for Hire clauses of an employment agreement. Further, overreaching or poorly written No Moonlighting restrictions or Work for Hire grabs may not be enforceable in court. When employment ends, the terms of the employment agreement may dictate strict adherence. In practice, they often serve as simply the basis for negotiations, especially once the developer leaving the job has representation. One client created a proof of concept app that was unrelated to his assignments, but which would help his employer. When he quit the job to develop it fully, the employer claimed that it owned the app. However, as it was only at an early stage of development, it was practically useless without further development from the ex-employee. The sides came to a negotiated agreement involving joint ownership of the new company formed to develop the app that adequately incentivized the developer, while giving the employer some benefit of the bargain set forth in the employment agreement.

Further Reading,

Mattel, Inc. v. MGA Entm't, Inc., 616 F.3d 904, 912-13 (9th Cir. 2010), as amended on denial of reh'g (Oct. 21, 2010) (exploring the ambiguity of the phrase "at any time during my employment").

Advanced Tech. Servs., Inc. v. KM Docs, LLC, 330 Ga. App. 188, 196, 767 S.E.2d 821, 828 (2014), reconsideration denied (Dec. 4, 2014) (finding a developer employment agreement for personal time programming to be ambiguous).

J & K Computer Sys., Inc. v. Parrish, 642 P.2d 732 (Utah 1982) (finding that elements of computer programs are trade secrets that can be protected from use by former employees, even though a few customers had access)

Jumping Ship: Legal Issues Relating to Employee Mobility in High Technology Industries, 17 Lab. Law. 25, 106 (2001)

The Moonlighting Survival Guide

Do You Need an Employee Moonlighting Policy to Protect Your Business? http://www.bizfilings.com/toolkit/sbg/office-hr/managing-the-workplace/employee-moonlighting-policies-protect-business.aspx

The 11 Contracts Every Artist, Songwriter & Producer Should Know: Band Agreements and Business Decisions a Band Can and Should Take Without an Attorney

By Steven R. Gordon

Steve Gordon is an entertainment attorney specializing in music, television, film and video. His clients include artists, songwriters, producers, managers, indie labels and music publishers as well as TV and film producers and digital music entrepreneurs. He also provides music and sample clearance services for producers of any kind of project involving music. Mr. Gordon is the author of The Future of the Music Business (www.futureofthemusicbusiness.com (Hal Leonard 4th ed. 2015)).

The author would like to thank attorney Wallace Collins for contributing a model band agreement contained in this article. He also gratefully acknowledges the assistance of Ryanne Perio, Esq. in the preparation of this article.


This series of articles and the forms included in them have been created for informational purposes only and do not constitute legal advice. This article and other articles in this series should be used as a guide to understanding the law, not as a substitute for the advice of qualified counsel. You should consult an attorney before making any significant legal decisions.


This is the ninth installment of an 11-part series on basic music industry agreements. It includes two different, though related, discussions. The first part of the article discusses business actions a band should take, and can take at no or little cost, without the services of an attorney. The second part of the article examines the elements and benefits of an agreement between members of a band or musical group pertaining to important issues, such as decision making, division of money (including performance and recording revenues), treatment of departing members, and ownership of band property (such as the band's name, songs, and masters).

Band agreements usually require the services of an experienced music attorney to draft a legally enforceable contract. A sample band agreement provided by my friend and colleague, veteran music attorney Wallace Collins, is included in this article. If you take just a brief glimpse at it, you will see it takes a lot of thought and work. Many experts, especially lawyers, advise clients to prepare and enter into a band agreement as soon as possible after the band's formation. The reason, they argue, is that's the time when everyone in the band is getting along well, whereas it would be difficult to complete an agreement if there is already a dispute among the members. On the other hand, the vast majority of bands and music groups rehearse and perform at clubs and other venues on a part-time basis, and make little if any money at the beginning of their careers. It may not be worthwhile (i) to spend the time needed to discuss and reach consensus on all the complicated issues usually covered by a band agreement, and (ii) spend the money on an experienced lawyer to draft an enforceable agreement.

The bottom line is, if there comes a time when a band starts making good money and it looks as if it has a real future, then that is the right time to consider taking the time and spending the money to create an enforceable band agreement. In the meantime, any band or musical group can and should take these basic business actions discussed in Section I below.


These are the actions a band can do without using a lawyer:

• Sign a "split sheet" for every song written by more than one individual;
• Register all songs and masters with the U.S. Copyright Office;
• Register every song with the appropriate Performing Rights Organization (PRO);
• Upload the set list of any live performance containing original songs for payment by its PRO;
• Write up a simple agreement that no departing member can use the name of the band without permission.


What is a Split Sheet?

A split sheet is a document that states who owns what percentage of a song and sets forth the credit each person should have. A sample split sheet is provided at the end of this section. A split sheet should be created for each and every song that was created by more than one person, and should be filled out and signed by all the writers before ever shopping it to a third party or trying to license it for placements. Every day around the world, songwriters collaborate on songs and never clarify who wrote what. If a songwriter is ever fortunate enough to license a song for a commercial, movie, or TV show, the writer may find him or herself fighting over who owns what percentage of the revenues generated from the song.

Most songwriters and artists just want to create great music, and it may feel uncomfortable to introduce a split sheet and start dividing up shares of publishing when trying to be creative. Yet it's a necessary part of the songwriting process. It's important to have a meeting about split sheets prior to hitting the studio; this way everyone understands that it's not personal, it's just business. Doing this makes everyone feel as though their interests are protected, which can enhance creativity rather than inhibiting it.

How to Complete a Split Sheet

Split sheets should contain the following information:

- The name of each writer.
- Percent of ownership. This is key. If the song makes money, this will determine how much each writer will receive.
- Credit for each writer, including who wrote the lyrics and who composed the underlying music.
- Everyone's signature.

Below is a sample split sheet:

Single Song Writers' Split Letter

Date: _______________

This is to confirm that we, the sole writers of the composition listed below, hereby agree among ourselves to the following writers' divisions:

Song Title: "_____________________"

Writers & % Ownership:

Writer Name: ________________ Ownership % _____________

Writer Name: ________________ Ownership % _____________

Writer Name: ________________ Ownership % _____________

Writer Name: ________________ Ownership % _____________


Lyrics by: __________, ___________

Music by: __________, ___________

Produced by: __________, ___________

If any samples are contained on this song for which the sampled writer(s)/ publisher(s) are to receive a copyright interest in and to the Composition and/ or payment of monies attributable to the Composition, then we agree that our own shares in the copyright and/or monies attributable to the Composition shall be reduced proportionately.

The following list of samples represents all of those samples embodied in the above composition:

Name of Song by Name of Writer

This Agreement contains the entire understanding of the parties hereto relating to the subject matter hereof and cannot be changed or terminated except by an instrument signed by all of the parties hereunder. The validity, interpretation and legal effect of this Agreement shall be governed by the laws of the State of _____ applicable to contracts wholly entered into and performed entirely within the State of _____.

Signature below will indicate agreement of the above.

Read and Agreed: Read and Agreed:

Read and Agreed: Read and Agreed:


Why Register?

Registration is not a prerequisite for copyright protection. Under the Copyright Act of 1976, a copyright comes into existence as soon as a work is fixed in a tangible medium of expression, and registration is not a condition of protection. However, registration provides crucial benefits to copyright owners. Those benefits, which are set forth in the U.S. Copyright Office's website at www.copyright.gov/circs/circ01.pdf, include the following:

1. Registration establishes a public record of the copyright claim.

2. Before an infringement suit may be filed in court, registration is necessary for works of U.S. origin.

3. If made before or within five years of publication, registration will establish prima facie evidence in court of the validity of the copyright and of the facts stated in the certificate.

4. If registration is made within three months after publication of the work or prior to an infringement of the work, statutory damages and attorney's fees will be available to the copyright owner in court actions. Otherwise, only an award of actual damages and profits is available to the copyright owner.

5. Registration allows the owner of the copyright to record the registration with the U.S. Customs Service for protection against the importation of infringing copies.

Of the reasons to register set forth above, the most important are that a copyright owner (i) cannot start a lawsuit for copyright infringement before registering, and (ii) cannot secure statutory damages or attorneys' fees without registering. With respect to (ii), the Copyright Act provides for statutory damages of up to $150,000 per infringement and attorneys fees. It is crucial that if the work has been published, the registration occurs prior to any infringement. Otherwise, the plaintiff must prove actual damages, which can be difficult to quantify, or may equal a negligible amount unless the defendant earned a lot of money from the infringing work. Further, attorneys fees are only available for published works that are registered prior to the infringement. Similar to other litigation, a lawsuit for copyright infringement can take a great deal of work and time on the part of the attorney. That is why attorney fees can add up. It would be difficult or impossible to retain the services of an experienced copyright litigator without the potential for recovering fees.

Note that the only way to secure the benefits of copyright registration is to register with the U.S. Copyright Office. These benefits, contrary to a popular myth, cannot be obtained by sending a copy of one's song or master to oneself (even by certified or registered mail).

How to Register

To register a work, including a song or a master, a completed application form, a nonrefundable filing fee, and a nonreturnable copy of the work. must be submitted Here are answers to the most important questions regarding registration:

Where to apply? Find and complete the copyright registration application online at http://www.copyright.gov/eco (eco is an acronym for Electronic Copyright Office).

How much will it cost? The basic fee for registering any work, including a song or master, was raised from $35 to $55 in May 2014. However, the fee is still $35 for registering a single work by a single author.

What else needs to be done? It is also necessary to provide a "deposit" of the work. This can be done by uploading an MP3, or print out a "shipping slip" to be enclosed with a CD and mail it to the Copyright Office within 30 days of applying for the registration.

Is it possible to register a sound recording and a song in one application? Yes. To register a master and a song in one application, click on "Sound Recording" in the drop down menu in the part of the application asking for the type of work to be registered. Later in the application, there will be a page allowing you to claim music and lyrics as well as the sound recording.

The U.S. Copyright Office's website (www.copyright.gov) is an invaluable source of information not only on registration, but also on how copyright law protects songs and masters.

Multiple Writers and/or Producers

Any signatory to the split sheet can register the copyright in a song and/or master. All the other signatories to the spreadsheet should be included as joint "authors" in the application.


What is a PRO?

Any user of music that publicly performs a song must secure a license and pay a royalty to do so. Songwriters and their music publishers use PROs to collect these royalties. In the U.S. there are three: ASCAP, BMI, and SESAC. A fourth PRO, recently launched by music industry mogul Irving Azoff, is Global Music Rights (GMR).

The PROs collect public performance royalties from radio, television, the Internet, as well as physical venues, such as bars, nightclubs, concert halls, arenas, and other places where live or recorded music is played.

In order to collect public performance monies, one must be a member of a PRO. Anyone can join ASCAP or BMI. SESAC, the smallest of the three, is selective.

When a song is registered with one of the PROs, the PRO will require the person registering the song to indicate the percent ownership of each writer. If the band has a manager, he or she can perform this function. The registration should reflect the breakdown of ownership in the split sheet. Even if no split sheet was ever signed, the registration will itself be a record of the percent ownership of each member in the band. That's why each member with an interest in a song should check to see if the information supplied to the PRO is accurate.

Live Performance Payments

Each of the PROs pays its writer and publisher affiliates for live performances at venues across the U.S. Basically, all the songwriter, who may also be an artist, has to do is submit a set list of songs performed at any venue showing which songs were written by him or her. Generally, he or she must also provide the venue name, address, size of venue and the dates of the performance. The songs must be registered first in order to complete this process. More information on each of the PROs' live performance programs is available at

- www.sesac.com/WritersPublishers/HowWePay/liveperformances.aspx
- www.bmi.com/creators/royalty/live_concert_royalties
- www.ascap.com/members/onstage.aspx

Anecdotally, I know a singer/songwriter in New York City who played shows at bars and restaurants and made about $200 a gig from passing the hat. She made $1,250 from SESAC by reporting her set lists for a single calendar quarter.


Make Everyone Agree That Departing Members Will Not Be Able To Use the Band Name

Even in the absence of a full band agreement, a band or musical group can handle the issue of who owns the name by using a form such as this:

Band Name Agreement

Date: _______________

Re "__________" [Name of band]

This is to confirm that we, the sole members the above referenced band, hereby agree among ourselves that each member of the band is a joint owner of the name of the band, provided that no leaving member, whether that member leaves voluntarily or not, shall be able to use the name of the band in connection with the entertainment industry including the music business.

This Agreement contains the entire understanding of the parties hereto relating to the subject matter hereof and cannot be changed or terminated except by an instrument signed by all of the parties hereunder. The validity, interpretation and legal effect of this Agreement shall be governed by the laws of the State of _____ applicable to contracts wholly entered into and performed entirely within the State of _____. [Use the state where the band members reside]

Signature below will indicate agreement of the above.

Signature below will indicate agreement of the above.

Read and Agreed: Read and Agreed:

Read and Agreed: Read and Agreed:

Note that sometimes a band will want to handle ownership of the band's name in a different manner than in the sample agreement. For instance, where two of the members founded the band and then added a third or more members later, the founders may want to exclusively own the rights in the name, or they may wish to allow departing members the right to use the band's name, provided that the leaving member uses the words "formally of". For a band that wishes to treat the ownership or use of the band's name in a different manner than the sample agreement, it may be wise to hire a lawyer.

Consider Registration of the Band Name with the U.S. Trademark Office

A band should also consider registering its name as a trademark with the U.S. Patent and Trademark Office (PTO, www.uspto.gov/trademark). In the U.S., it isn't necessary to register a mark to obtain protectable rights. You can establish "common law" rights in a mark based solely on use of the mark in commerce without a registration. However, owning a federal trademark registration provides a number of significant advantages over common law rights alone, including:

1. A legal presumption of ownership of the mark and exclusive right to use the mark nationwide.

2. The ability to bring an action concerning the mark in federal court.

3. The use of the U.S. registration as a basis to obtain registration in foreign countries.

Registration fees depend on the kind of form used and the number of International Classes listed in the application. International Classes refer to good and services for which the mark is used. A band would always want to file under International Class 41, which includes entertainment services. Another possibility may be to consider filing for International Class 25, which includes clothing, such as t-shirts and hats. The cheapest form is called "Trademark Electronic Application System (TEAS) Plus" and costs $225 per class. However, this form requires somewhat more information and is slightly more difficult to complete than two other possible forms: TEAS Reduced Fee (which costs $275 per class), and TEAS Regular Filing (which has the least number of requirements, and costs $325 per class). Of course, these fees only apply to marks in use in commerce. Additional fees apply if one is filing an Intent to Use.

Unlike the other recommended business actions previously discussed in this article, it is advisable to use an attorney in this situation. Filing a trademark application, or even deciding on the right form to use, is a bit tricky, and experience in filling out the appropriate application and dealing with the PTO is important. For instance, a failure to correctly list the goods/services with which the mark is used, or intended to be used, may prevent one from registration, and no refund of any fees paid is possible.



When two or more people associate for the purpose doing business, arguably they create a partnership in the eyes of the law. General partnership law applies to the association unless a written agreement states otherwise. General partnership law provides, among other things, that all partners equally own partnership property and share in profits and losses, that any partner can bind the partnership, and that each partner is fully liable for the debts of the partnership. In the case of most musical groups, a written agreement setting forth the arrangement between the group members as partners is preferable to general partnership law.

For instance, if one person creates a band and comes up with the band's name, he or she may want exclusive rights to make the band's decisions and the right to fire any new band member. That person may also want a bigger percentage of band profits, especially if he or she pays more money than other band members for touring or studio time. As an example, I represent one person who started a band in China. He created the name and moved to the U.S., where he selected all new band members. He's the lead singer and writes all the songs. In this situation, it may be better to simply employ the other band members as freelancers and pay them a certain percentage of money from live gigs, but stipulate that he can replace them at will.


When a time comes that a band is beginning to make decent money and it's clear that it actually has a future, that may be a good time to take the plunge. It will involve considering the issues discussed below, coming to a consensus among all the members of the band, and then hiring an attorney to draft an enforceable agreement.


A band agreement is an agreement between/among the members of a band that covers basic business issues. The most important issues are:

- Decision making
- Hiring and firing
- Profits and Losses
- Treatment of Leaving Members
- Band name
- Ownership of Songs and Masters

Decision Making

The issue of control is very important. In most cases, each member will have an equal vote and a majority will rule. However, as set forth in the sample agreement provided by Wallace Collins below, a particular member may have two votes, and the manager may have a tie-breaking vote. The agreement may also provide that certain matters, such as requiring financial contributions from group members or incurring debts on behalf of the band, require a unanimous vote. Again, there are endless variations, including situations where a particular member makes all of the decisions, or where new members do not have a vote on band business. For instance, a band could agree on what might be called a "reverse democracy"; each member has one vote, but if any member votes against doing something, then the band would not do it. In other words, this arrangement requires unanimous consent to proceed with an activity.

Hiring and Firing of Band Members

Another issue of control that must be decided concerns the hiring and firing of band members: How votes are calculated (e.g., will each member get one vote or will a particular member's vote count double or more) and how many votes are needed (e.g., a majority or a unanimous vote) to fire a group member and/or hire a new member. In most cases, a new member voted into the group will then be required to sign the band agreement. It must also be decided how to vote on any amendments to the band agreement, since this may materially affect the relationship between/among the members after the group has started. In most cases, a majority vote will be deemed determinative, but some members may prefer a unanimous vote on such things as amending the agreement (as well as hiring or firing). This will have to be decided between and among the members of the group.

Profits and Losses

The band agreement should contain provisions regarding the sharing of profits and losses. One provision may pertain to revenues earned during the term while each member is in the group, and another may pertain to after the departure of a member or the break-up of the group. In most cases, a new group will have a provision that all profits from the group are shared equally between all members with an exclusion for songwriting monies (which each of the respective songwriter members would keep). Where an established group adds new members, the provision may provide that a new member gets a smaller percentage than the founding members.

Treatment of Departing Members

The more complicated problem of revenue division arises after a member departs. The agreement may provide that the leaving member is entitled to his or her full partnership share of profits earned during his or her tenure, with a reduced percentage (or no percentage) of profits derived from activities after the departure; or the agreement may provide for a reduced percentage for a short period of time after departure (e.g., 90 days), and then nothing thereafter. This is an easier issue to deal with regarding live performances than record royalties. In most cases, bands will agree that leaving members should receive their shares of live performance during the time when the members were in the band, even if the shares are received after a departure. The group also needs to determine what happens, for example, when a member performs on three albums, but leaves before the fourth album is recorded. Although it might be acceptable to refuse to pay the departing member any royalties on the fourth and future albums recorded by the group under a record contract the leaving member signed as part of the group, it might not be fair to refuse to pay that individual his or her share of royalties from the three albums that were recorded with the band. Of course, this might vary depending on whether the leaving member quit or was fired.

Another important financial issue is the question of the departing member's share of partnership property, such as band recording equipment or a sound system. Again, the agreement might specify a monetary payout to the leaving member if he or she is terminated, but a forfeiture if the leaving member quits. If merchandise with the departing member's name and likeness is in inventory and sold after the member leaves, a decision will have to be made about whether and how much the departed member might receive for the use of his or her name and likeness.

Buy-out/Pay-out Provisions

A band contract should contain a comprehensive Buy-out/Pay-out provision that deals with departing members. Whether the leaving member quits or is fired, the agreement may provide that that individual waives all rights in the intangible assets of the partnership (e.g., the group name, the group contracts, etc.). If the member quits, he or she may waive any right to and benefit derived from the hard assets, such as band sound equipment. If the leaving member is fired, the agreement might provide that he or she is entitled to the pro rata percentage of the current value of the hard assets. With respect to this payout, the band contract may provide that if the valuation exceeds a certain amount or would put the partnership in financial distress, the payout would be in a certain number of equal monthly installments.

Again, this Buy-out/Pay-out provision can be as simple or as complicated as the band members deem necessary. There are as many variations in this as there are differences in personalities between the members of a group. Each member and each group, with the help of an attorney, has to find its own solutions.

Band Name

As previously discussed, an important issue is who owns the group name if one member leaves or if a group disbands. Under partnership law, the partners would be the owners of the name, and any member would arguably be permitted to use the name. Trademark rights are determined based on the 'use' of a mark, not on who thought of it, so each of the members of the group would be an equal co-owner of the group name under trademark law (this of course depends on how the application was completed; whether the band members were listed as co-owners, or whether the partnership or other business entity owned the mark). The end result could be chaos, with several bands all with the same name but different players.

One solution would be to use the brief agreement previously discussed. The matter can also be handled in the context of a full scale band agreement. In most cases, the band agreement will state, as the short form agreement previously discussed, that if a particular member leaves the band, either because he or she quits or is fired, that person will not be entitled to use the band name. The band agreement could fine tune this provision by stating that the leaving member may describe him or herself as a "former member" of the band.

However, if one member thought up the group name, then the band agreement may state that only a group including that member can use the name. This will apply whether one other member leaves or if the group disbands and only the founding member creates a new band.

Rights in the group name may also concern revenues in addition to the use rights, specifically as they concern merchandise, such as t-shirts, caps, buttons, and posters. The band agreement may deal with how much each member of the band will receive from sales of such merchandise.

Ownership of Songs and Masters

It was previously discussed how important it is to confirm who are the writers of a band's songs, and that a split sheet can be used to confirm ownership. The band agreement could include a provision incorporating split sheets, or provide that any song created by any member of the band would be jointly owned by all the band members. This last example would only make sense where the band operates as a collective, and every member is invited to and makes contributions to the creation of each song.

The band agreement could also confirm that every member of the band is a joint owner of any recordings made during the life of the band. This makes sense if each member of the band is performing on recorded tracks.

Advantages of Forming a Limited Liability Company and entering into an "Operating Agreement instead of a Band Agreement

An alternative to a traditional band agreement would be forming a limited liability company (LLC) and then drafting an Operating Agreement that would look pretty much the same as a band agreement, except that each member of the band would be a Member. The advantage to this approach is that when the band enters into agreements with third parties, such as investors, the personal assets of the band members would not be at risk.

Role of the Lawyer

If each member of a band or music group could afford his or her own lawyer, then the lawyers could work out an arrangement on behalf of their clients, which doesn't often occur. Instead, after a band decides on the issues discussed above, it should engage an attorney to review its decisions and write up a legally enforceable agreement. An attorney cannot represent each member of the band. That would create a conflict of interest; however, an attorney can be a "scribe" who enforces the decisions of the band by preparing an agreement that is legally enforceable. Fees can range from a $1,000 to $5,000 or more, depending on the lawyer and the complexity of the deal.

The below model band agreement has been graciously provided by Wallace Collins, Esq. (www.wallacecollins.com). Wallace is an entertainment and intellectual property lawyer. He was a recording artist for Epic Records before attending Fordham law school.


This agreement is made and entered into this ___ day of April, 2015, by and among the following persons:


The foregoing individuals are hereinafter each individually referred to as "Partner" and in the plural as "Partners".
With respect to any gender reference in this Agreement, wherever required in this Agreement, the singular shall include the plural, and the masculine gender shall include the feminine and neuter.


The Partners hereby constitute themselves as a general partnership (the "Partnership") to be known as "_____" (the "Group") under the laws of the State of_______________ for the purposes of live performances, creating sound recordings for use and commercial exploitation in all mediums and by any means whether now or hereafter devised of recording musical performances for reproduction ("Recordings"), exploiting and merchandising the names (both legal and professional) and likenesses of the Group and the members of the Group, using and commercially exploitation musical compositions composed by any Partner individually or jointly with any other person and recorded by the Group for the purpose of exploiting Recordings (the "Group Compositions"), and all other present and future activities of the Partners as members of the Group in the entertainment field during the term of this Agreement. Except as otherwise expressly provided herein, the Partnership shall have the exclusive right to the services of each Partner as a member of the Group in the entertainment field. The principal place of business of the Partnership shall be at such place as the Partners may determine pursuant to the provisions of this Agreement.


The Partnership shall do business as "_____" (the "Group Name") and any and all trademarks and related intellectual property rights therein and thereto shall be the sole and exclusive property of the Group.


The term for which this Partnership is to exist shall commence as of the effective date hereof and shall continue until dissolved in any manner provided herein.


Each of the Partners warrants and represents to each of the other Partners that he is free to enter into this Agreement, and that he is under no disability, restriction or prohibition which will interfere in any way with his full compliance with all of his obligations under this Agreement. Each Partner warrants and represents that he has not done nor will he do any act or thing that will or might impair the full enjoyment by the Partnership of any of the rights granted to it under this Agreement or the commencement or continuation of the Partnership business in the manner herein contemplated. Each Partner further warrants and represents that he will not sell, assign, transfer or hypothecate any right, title or interest in or to any asset of the Partnership without the prior written consent of all other Partners. Each Partner covenants and agrees that he will perform the services provided to be performed by him hereunder diligently, fully and to the best of his ability during the Term of this Agreement, in a competent and professional manner, and will refrain from participating in activities which with reasonable foreseeability could limit or prohibit him from so performing. Each of the Partners acknowledges that preservation and enhancement of the value of the Partnership may be hindered by the failure of an individual Partner to apply himself diligently to the business of the Partnership or by actions in a manner injurious to the rights of the other Partners.


As a contribution to the Partnership, each Partner is contributing his exclusive services as a recording artist with respect to Recordings embodying musical performances of the Group, his exclusive services as a musical performer in all media and on the live stage with respect to his activities as a member of the Group, his Merchandising Rights with respect to his activities as a member of the Group, his exclusive services as a songwriter and publisher with respect to the Group Compositions, and generally his exclusive services as a member of the Group within the entertainment field. No Partner shall be required to make any capital contributions except upon the unanimous agreement of the Partners.


(a) Subject to Paragraph 6(b) below, and unless agreed otherwise in writing by all of the Partners, the Partners shall share equally in all of the profits, losses, rights and obligations of the Partnership. Should any Partner at any time bear or satisfy a disproportionate share of the financial obligations of the Partnership, he shall be entitled to reimbursement therefore from the other Partners proportionately out of sums otherwise distributable to them as Partners. "Net profits" (as hereinafter defined) shall be distributed in cash to the Partners from time to time, but only as expressly authorized by a vote of a majority of the then-existing Partners. "Net profits" as used herein shall mean all commissions, royalties (including Recording royalties but excluding the so-called "songwriter's share" and "publisher's share" of music publishing royalties), bonuses, payments (other than repayment of loans), fees (including synchronization fees), dividends, stock bonuses, interests or monies of any kind or nature which shall be paid to the Partnership or to any Partner as a result of the Partnership activities after deducting the sum total of all reasonable salaries, rent, promotional costs, travel costs, office expenditures, telephone costs, accounting and legal fees, entertainment costs, and any and all legitimate Partnership expenses incurred by the Partnership while conducting Partnership business. No Partner shall receive any salary, bonus or goods or other assets of the Partnership in excess of that received by any other Partner, except as set forth herein or otherwise upon the unanimous vote of all of the Partners.
(b) Notwithstanding anything to the contrary contained herein, and unless agreed otherwise in writing by all of the Partners, net profits arising from the copyrighting, publishing and exploiting of a particular Group Composition ("Publishing Profits," which includes, without limitation, the so-called "songwriter's share" and publisher's share" of music publishing royalties) shall be shared solely among the Partners who are the authors of such Group Compositions.


(a) Each Partner shall have the right to participate equally in the control, management and direction of the business of the Partnership. In exercising this control, management and direction, each Partner shall have the same vote as each other Partner. No Partner shall have the right to make any expenditure in excess of $100 or incur any major obligation (including, without limitation, borrow or lend money, make, deliver, accept or endorse any commercial paper, compromise or release debts owing to the Partnership, sell, lease, license, assign or hypothecate any Partnership property or enter into any contract for any purpose) on behalf of the Partnership, except as expressly authorized by a vote of three-fifths (3/5) of the then-existing Partners. No Partner shall hold or accept from any third party any gratuity or other consideration in consideration of his exercising or declining to exercise his rights hereunder in any manner. The Partners may, by 3/5 vote, delegate all or any of their management functions to one or more professional managers upon such terms and conditions as the Partners so voting shall designate.
(b) Notwithstanding anything to the contrary contained herein, but subject to any future agreement, if any, between the Partnership and a third-party co-publisher or administrator, the Partner(s) who is/are credited as the writer(s) of a particular Composition shall have the exclusive right to sell or grant rights (by means of license or otherwise) in respect to such Composition in his/their sole reasonable discretion; provided that any Partner disassociated from the Partnership pursuant to Paragraph 11 hereof shall thereafter retain the right to sell or grant rights in respect to any Composition for which he is credited as a writer, subject to Paragraphs 7(b)(i) and (ii) hereof and the continuing rights of the other Partners in any net profits derived therefrom as provided in Paragraph 6 hereof. A disassociated Partner shall keep the Partnership informed as to his address and telephone number for the purpose of transacting business in respect to the Compositions. If a Composition is co-written by a remaining Partner and a disassociated Partner and the remaining Partner seeks to pursue a commercial opportunity in respect to such Composition, he shall send the disassociated Partner written notice thereof by certified mail, return receipt requested. If the disassociated Partner does not respond within fourteen (14) days after the date of such notice, then the remaining partner shall have the authority to grant rights in such composition to a third party, subject to the disassociated Partner's right to share in any net profits in respect thereto as provided herein.
(c) Notwithstanding the foregoing, the Partner or Partners who are the authors of any Group Composition hereby grant the Group a mechanical license for use of the Compositions in any Group Recording at the full statutory mechanical rate.


The Partnership books and records, together with all other documents and papers pertaining to the business of the Partnership, shall be maintained at its principal place of business or at such other place as shall be designated by the Partners, and shall be available for inspection at all reasonable times by any Partner or any designated representative of any Partner. The maintenance of such books and records shall be in accordance with generally accepted accounting practices and principles, consistently applied, and at the cost of the Partners, pro rata. The fiscal year of the Partnership shall end on December 31. The Partnership shall render yearly accountings to each Partner on the first day of February in every year during the term of the Partnership. At the sole cost and expense of the Partners, the Partners may retain any duly licensed firm of accountants and/or attorneys in connection with the business of the Partnership, including the rendition of said accountings.


(a) This Agreement shall terminate, and the Partnership shall be dissolved, upon the first to occur of the following events:
(i) The written agreement of all of the Partners to dissolve the Partnership; or
(ii) By operation of law, except as otherwise provided herein. The addition of a new Partner (as provided in Paragraph 10 hereof) or the disassociation of a Partner (as provided in Paragraph 11 hereof) shall not terminate this Agreement, and it shall remain in full force and effect among the remaining Partners.
(b) Upon termination of the Partnership, the Partnership's receivables shall be collected and its assets liquidated forthwith (except as provided in subparagraphs (d) and (e) below). The proceeds from the liquidation of the Partnership assets and collection of the Partnership receivables shall be applied in the following order:
(i) First, to the expense of liquidation and debts of the Partnership other than debts owing to any of the Partners;
(ii) Next, to the debts owing to any of the Partners, including debts arising from loans made to or for such Partners, except that if the amount of such proceeds is insufficient to pay such debts in full, payment shall be made on a pro rata basis;
(iii) Next, in payment to each Partner of any financial capital investment made by him in the Partnership belonging to him, except that if the amount of such proceeds is insufficient to pay such financial capital investment in full, payment shall be made on a pro rata basis;
(iv) Next, in payment to each Partner on a pro rata basis of any of such proceeds remaining.
(c) The Partners shall execute all such instruments for facilitating the collection of the Partnership receivables and liquidation of the Partnership assets, and for the mutual indemnity or release of the Partners as may be appropriate under all then-present circumstances.
(d) Any property, including, but not limited to, the Group Name, all rights and interests in contracts, agreements, options, choses in actions and Merchandising Rights, owned or controlled by the Partnership at the time of dissolution from which income is being derived, shall not be sold, but shall be retained and distributed in the manner hereinafter set forth. After the payments provided for in Paragraph 9(b)(i), (ii) and (iii) have been made in full, any such property owned by the Partnership and the continuing earnings received as a result of the exploitation thereof shall be valuated by an accountant selected by the Partners who is experienced in the music industry. Said property shall then be distributed, as nearly as possible, among the Partners in a manner consistent with the terms set forth in Paragraph 6 hereof.

A new partner may be admitted to the Partnership but only with the written consent of all of the Partners. Each new Partner shall be admitted only if he shall have executed an agreement with the Partnership under the terms of which such Partner agrees to be bound by all of the provisions hereof, as amended, as if a signatory hereto. Notwithstanding anything to the contrary contained herein, such new Partner shall have no right, title or interest in any of the assets or property of the Partnership existing at the time of his admission to the Partnership ("existing property") or in any of the proceeds derived from such existing property or from the sale, exchange, or liquidation thereof. Such new Partner shall have no interest whatsoever in the Group Name apart from the limited right to be known as a member of the Group, and upon the termination of the Partnership his interest in any assets, property, net profits and losses of the Partnership shall attach only to such assets, property, net profits and losses acquired by the Partnership after his admission to the Partnership. Such new Partner's capital contribution, if any, and share of the Partnership's net profits and losses shall be set forth in the written consent of all of the Partners approving the admission of the new Partner.

(a) A Partner may become disassociated from the Partnership by reason of his death, his disability, his resignation or by the written vote of all of the other Partners. For purposes of this Agreement, a Partner shall be deemed disabled if he is unable to perform services as required hereunder for any reason for a period in excess of one hundred eighty (180) consecutive days, or two hundred seventy (270) days out of the year. If a Partner resigns, he shall give thirty (30) days prior written notice of such resignation to each of the other Partners. A Partner (or, in the event of disassociation by death, his executor or personal representative) who is disassociated shall be entitled to receive an amount equal to his proportionate share of the net worth of the Partnership as of the date of his disassociation, exclusive of any value attributable to the Group Name, but he shall not be entitled to any of the earnings of the Partnership received thereafter or any interest in the Group Name, nor shall he be subject to any of the liabilities of the Partnership incurred thereafter; provided, however, that such Partner shall be entitled to receive his applicable proportionate share (as set forth in Paragraph 6 hereof) of any royalties (other than any share of Publishing Profits provided for in Paragraph 6(b)(ii)(A) in respect to Group Compositions which are not written, in whole or in part, by the disassociated Partner(s)) earned from the exploitation of (a) any Recording recorded hereunder and embodying his performances, and (b) the Group Compositions which have been recorded by the Group prior to the date of his disassociation, as and when such profits are actually received by the Partnership, less his pro rata or other agreed share of any expenses and/or liabilities relating thereto.
(b) The net worth of the Partnership shall be determined as of the date of the disassociation by an accountant selected by the remaining Partner(s) other than the Partnership's regular accountant, and other than the personal accountant of any Partner, which accountant shall be familiar with the music industry. The accountant shall make said determination in accordance with generally accepted accounting practices and principles, taking into consideration, among other factors, the fair market value of the assets of the Partnership other than the Group Name, its liabilities (including the disassociated Partner's entitlement to future royalties as provided in subparagraph (a) hereinabove), its past profits and losses. In the event of voluntary resignation, the determination of said accountant shall be final. However, if the disassociated Partner or his legal representative should disagree with the accountant's determination in the event of disassociation for any other reason, the disassociated Partner or such representative may within thirty (30) days after receipt of the accountant's determination submit the issue of the fair market value of the Partnership to arbitration in New York, under the applicable rules of the American Arbitration Association by one (1) arbitrator selected by such organization from its panel of arbitrators in accordance with its usual procedures. Unless the remaining Partner(s) elect to pay the disassociated Partner's share of the value of the Partnership sooner, said share shall be payable (without any interest accruing thereon) in twelve (12) approximately equal monthly installments commencing one month following the date of the final determination of said net worth; provided however, that if said share is in excess of $10,000 but less than $25,000, the remaining Partner(s) may elect to pay same in twenty-four (24) approximately equal monthly installments, and provided further, that if said share is in excess of $25,000, the remaining Partner(s) may elect to pay same in thirty-six (36) approximately equal monthly installments.

All accountings and notices to be given hereunder, and notices of any action by the Partnership which has the effect of altering any Partner's share of profits or losses shall be given in writing, by personal delivery or by mail or by telegram at the respective addresses of the Partners set forth above, or at such other addresses as may be designated in writing by registered mail by any Partner. Notice given by mail or by telegram shall be deemed given on the date of mailing thereof or on the date of delivery of such telegram to a telegraph office, charged prepaid or to be billed.

One or more Partnership bank accounts may be opened and maintained by the Partners with such bank or banks as the Partners may determine and any checks or withdrawals from or against any bank account or accounts shall be upon the signature of any of any person as the Partners may unanimously select; provided, however, that such checks or withdrawals shall be subject to the approval process set forth in Paragraph 7 hereinabove.

No Partner, or executor or administrator of a deceased Partner, shall sell, assign or transfer all or any portion of his financial or other interest in the Partnership or right to receive a share of Partnership assets, profits or other distribution without the prior written consent of all of the other Partners and any such purported sale, assignment or transfer in contravention of the foregoing shall be null and void. The Partners acknowledge that a part of the capital contribution of each Partner is the unique personal services required to be rendered for the exclusive account of the Partnership by each Partner, for which no presently adequate substitute exists; and that the other Partners are the sole and exclusive judges of the adequacy of any future substitution.

(a) Liability. The liability of the Partnership or the Partners arising out of any activities of the Partnership shall to the extent possible be covered by appropriate policies of insurance. In the event that any liability shall not adequately be covered by insurance, the amount of liability not so insured against shall first be satisfied out of the assets of the Partnership.
(b) Indemnity. Each Partner hereby indemnifies the other Partner(s) and holds such other Partner(s) harmless against and from all claims, demands, actions and rights of action which shall or may arise by virtue of anything done or admitted to be done by him (through or by agents, employees or other representatives) outside the scope of or in breach of the terms of this Agreement. Each Partner shall promptly notify the other Partner(s) if such Partner knows of the existence of a claim, demand, action or right of action.
(c) Successors and Assigns. Subject to the restrictions on assignments set forth in this Agreement, the provisions of this Agreement shall be binding upon and inure to the benefit of the heirs, executors, administrators, successors and assigns of the Partners.
(d) Severability. If any term, provision, covenant or condition of this Agreement is held to be illegal or invalid for any reason whatsoever, such illegality or invalidity shall not affect the validity of the remainder of this Agreement.

This Agreement shall be governed by and construed in accordance with the laws of the State of New York. In the event of any action, arbitration, suit or proceeding arising from or under this Agreement, the prevailing party shall be entitled to recover reasonable attorneys' fees and costs of said action, suit, arbitration or proceeding. This is the entire understanding of the parties relating to the subject matter hereof and supersedes all prior and collateral agreements, understandings, and negotiations of the parties. Each party acknowledges that no representations, inducements, promises, understandings or agreements, oral or written, with reference to the subject matter hereof have been made other than as expressly set forth herein. Each Partner acknowledges that he has consulted with legal counsel of his choice with respect to the contents of this Agreement prior to execution hereof, and has been advised by such counsel with respect to the meaning and consequences hereof. This Agreement cannot be changed, rescinded or terminated except by a writing signed by each of the Partners. The titles of the paragraphs of this Agreement are for convenience only, and shall not in any way affect the interpretation of any paragraphs of this Agreement or of the Agreement itself.


IN WITNESS WHEREOF, the parties hereto have executed and sealed this agreement on the date first above written. "PARTNERS"


May 6, 2016

Week in Review

By Eric Lanter

Developer Aby Rosen to Pay $7 Million in Unpaid Taxes on Art

Aby Rosen, a prominent Manhattan real estate developer and art collector, settled with the New York Attorney General's Office for failing to pay taxes on $80 million in artwork that Mr. Rosen bought or commissioned since 2002. While Mr. Rosen claimed that the works were for sale and therefore he did not need to pay sales or use taxes, he was treating the pieces as his personal possessions The attorney general, Eric Schneiderman, commented that, "Law-abiding New Yorkers should not be stuck footing the bill for those who fail to pay their fair share."


Egypt's Interior Ministry Accidentally Releases Memos on Restricting News Media

Egypt's leader President Abel Fattah el-Sisi, who is already facing scrutiny at home and abroad, has a new crisis to address. On Tuesday, Egypt's Interior Ministry leaked confidential guidelines that are designed to counter news media criticism. One document proposed a rule stopping all coverage of Giulio Regeni, an Italian graduate student who was killed in Cairo in February, which has put Egypt's relations with Italy into crisis. The Interior Ministry blames a technical malfunction for the leak.


Lincoln Center President's Departure Prompted by Relationship

After just 27 months serving as president of Lincoln Center, Jed Bernstein announced his departure. Lincoln Center has now acknowledged that he had been in a relationship with a staff member. Mr. Bernstein's contract was set to expire in December 2016, and as negotiations were beginning, some complained of his management style, but then an anonymous individual reported the sexual relationship between Mr. Bernstein and a female employee whom he had promoted to a senior position. The relationship violated Lincoln Center's employment policies. (After an internal investigation, it was reported that the woman deserved her promotion based on merit, and that she was also promoted under the previous president.)


UEFA's Recognition of Kosovo Angers Serbs

Europe's governing soccer body voted Tuesday to recognize the Kosovo Football Federation as its 55th member. Serbia, angered by this recognition, vows that to work to overturn the decision. Kosovo will also be submitting its application for membership to FIFA, with a vote to approve that application taking place at FIFA's annual Congress next week in Mexico.


United States Supreme Court Could Have a Say in Redskins Trademark Case

Two recent petitions were filed with the Supreme Court, asking it to sort out whether the Washington Redskins and an Asian-American dance-rock band called "The Slants" are entitled to the protections of federal trademark law. This comes at a time when the Patent and Trademark Office rejected trademarks for some words, such as "Heeb," "Dago," "Injun," and "Squaw." While it would be rare for the Supreme Court to hear both cases together, it would clarify the extent of free speech in trademark matters.


Judge Requires Sumner Redstone to Testify

Sumner Redstone, the former head of Viacom and CBS, is set to undergo a 30-minute deposition. This comes as part of his mental competency court battle in California, which has been contentious. Previously, the judge declined requests for the deposition, stating that the deposition would be fruitless, as Mr. Redstone apparently suffers from a severe speech impediment.


Hulk Hogan Sues Gawker

Hulk Hogan, whose real name is Terry Bollea, filed another lawsuit against Gawker. This comes after Hulk Hogan received a $140 million verdict against Gawker in March, after Gawker published a sex tape of him and a friend's wife. Mr. Bollea's new suit, however, accuses Gawker of intentionally inflicting emotional distress and leaking a video transcript in which Mr. Bollea used racial slurs.


Court Appoints Bank to Oversee Prince's Estate

The first hearing was held regarding Prince's estate in Carver County, Minnesota. All but one of his siblings signed an agreement to have Bremer Trust oversee the estate, as it appears that Prince died without a will. While the full extent of his assets are not known, his property alone is thought to be worth $31.3 million, with his music recordings worth at least tens of millions of dollars more.


An Intervention Came Too Late

Prince, leading up to his death, appeared to have been addicted to painkillers, much to the surprise of those who knew him. Those around him had always known him to not indulge in alcohol, marijuana, or other drugs; however, it appears that he had been in touch with an addiction doctor prior to his death. Those closest to him had hoped to have Prince sent to California for a period of time to rid himself of his painkiller addiction.


High School Basketball Player Who Said He Was 17 May Be Closer to 30

A South Sudan immigrant, Jonathan Nicola, who purported to be a basketball player at a Catholic high school in Canada, was arrested after it was revealed he was not 17, but closer to 29. He obtained a visa to study in Canada, fleeing the violence and turmoil of his home country. However, in that process, he misrepresented his birth date, and when authorities compared it to an American visitor visa and noted the discrepancy, they arrested Mr. Nicola.


Dee Gordon of the Miami Marlins Suspended 80 Games for Doping

Dee Gordon, star second baseman for the Miami Marlins, was suspended for 80 games after testing positive for performance-enhancing drugs. This suspension comes as the baseball season is beginning, which is a follow-up to Mr. Gordon's previous season leading the league in stolen bases and hits while winning a Gold Glove. Mr. Gordon dropped his appeal of this suspension.


Photo of Paris Attacks Victim Sets Off Press Freedom Case

As the terrorist attacks in Paris were occurring on November 13, 2015, Maya Vidon-White, a French war photographer, was taking photographs. One picture of a man, Cedric Gomet, who had been shot and would later die, was published in a weekly magazine, VSD. This dramatic photograph would lead to Ms. Vidon-White being charged by the Paris prosecutor's office for violating a French law designed to protect the dignity and privacy of terrorism victims. Ms. Vidon-White said that she was simply doing her job, and documenting the reality of the attacks; however, the French law is quite clear that victims of violent attacks cannot have their photographs published without their permission.


'Zappa Plays Zappa' Pits Zappa v. Zappa

Rock star Frank Zappa's son, Dweezil Zappa, has been touring under the name Zappa Plays Zappa, as he performs Frank Zappa's famous music. However, the name must change. Dweezil Zappa is being forced to tour under the name "Dweezil Zappa Plays Frank Zappa." Frank Zappa's Family Trust, which owns the rights to his music, informed Dweezil that the trust owns the trademark, and in addition, that he risked copyright infringement each time he played a song without permission. While the once tight-knit Zappa family is now seeing itself fray, Dweezil insists he simply wants to perform his father's music faithfully and will comply with the name change.


In China, An iPhone May Not Be a Phone

A Chinese man, Xintong Tiandi, has won a victory in China against the tech giant Apple. The Beijing Higher People's Court has ruled that Mr. Tiandi's trademark of "iPhone" is protected to mark leather goods, none of which are actually Apple's iPhone products. This comes despite Apple applying for the trademark in 2002 and Mr. Tiandi applying for the trademark in 2007. This is not the first instance of this happening, however, as Michael Jordan lost the rights to his name in China, and New Balance paid $16 million in damages for what a Chinese court said was the illegal use of the Chinese name for the company, which a person had already registered.


The Federal Government Warns North Carolina That Transgender Bill Violates Civil Rights Laws

The U.S. Department of Justice warned the State of North Carolina that its new law limiting bathroom access violates transgender people's civil rights, which will ultimately result in the State losing federal funds. In an already contentious debate, this adds pressure to North Carolina officials to reverse course, after just passing the bill, known as HB2, in March.


Gucci Fighting Cardboard Shoe Replicas in China

At specialty shops around Hong Kong, customers can buy a variety of goods that are meant to be burned as offerings for deceased relatives. These goods range from Italian sports cars, to smartphones, to cigarettes, to Gucci handbags and shoes, all of which are paper replicas. Kering, Gucci's parent company, sent letters to six such stores, instructing them to stop selling the replicas, as they violated Gucci's trademark. While this practice occurs in places like Beijing, Bangkok, and even New York, Gucci chose to make its stand in Hong Kong. Some shopkeepers have already complied with the demand, however, one notes that the offerings have nothing to do with the luxury products that Gucci seeks to protect, emphasizing the futility in Gucci's actions. Gucci did not demand payment for the uses.


Paterno Was Told of Sandusky Abuse Claim in 1976

Jerry Sandusky, former assistant coach for the Pennsylvania State University football team, is serving 30 to 60 years in state prison on a 45-count conviction of child sexual abuse charges. In 2011, Joe Paterno, the former coach of the team, testified that he did not know of any instances of sexual abuse. However, a judge in Philadelphia said that in 1976, a boy told Mr. Paterno that Mr. Sandusky had molested him. This comes as Mr. Sandusky is appealing his conviction and has a hearing set for May 20th, where his lawyers can show that the prosecutors lied or withheld evidence, with the hope being to dismiss the charges or be granted a new trial.


May 13, 2016

Week in Review

By Michael B. Smith

Russian Anti-Doping Experts Used Hole In Wall To Purge Urine

Grigory Rodchenkov, who ran the lab that handled drug testing for the 2014 Winter Olympics in Sochi, Russia, claims that he and others, including members of the Russian intelligence service, provided performance-enhancing drugs to Russian athletes while replacing their urine samples with clean samples before testing.


New Federal Trade Secrets Act Promises Certainty, Double Damages

On Wednesday, President Barack Obama signed into law the Defend Trade Secrets Act (DTSA). The DTSA does not expressly preempt state laws, but provides a federal forum for trade secret claims. The DTSA is largely modeled after the Uniform Trade Secrets Act (UTSA). The DTSA offers remedies similar to those available under the Lanham Act, including ex parte seizure of property "necessary to prevent the propagation or dissemination of the trade secret."

The DTSA rejects the "inevitable disclosure" doctrine, under which employees with knowledge of trade secrets can be enjoined from working for a competitor based on a presumption that secrecy cannot be maintained. Under the DTSA, an employer would have to provide evidence of "threatened misappropriation" in order to obtain injunctive relief.

The DTSA also does not require pre-discovery disclosure of trade secrets, as some states do.


ASCAP Agrees to Pay $1.75 million to Settle Antitrust Charges

On Thursday, The American Society of Composers, Authors and Publishers (ASCAP) announced it would pay a $1.75 million fine to resolve a Department of Justice (DOJ) investigation into claims that the music licensing agency had violated an existing consent decree that prevents ASCAP from entering into exclusive agreements with its members. The DOJ found that ASCAP had entered into approximately 150 exclusive contracts since 2008, "blocking members' ability to license their songs themselves [and] undermin[ing] a critical protection of competition contained in the consent decree." ASCAP did not admit wrongdoing, but agreed that Board members who are publishers would not be involved in licensing talks.


Verizon Settles ESPN Bundle Lawsuit

On Tuesday, ESPN and Verizon settled the lawsuit ESPN filed after Verizon launched its "Custom TV" pricing plan, which did not include ESPN in the base package. ESPN alleged that Verizon's exclusion of ESPN from the bundle violated "existing agreements." The terms of the settlement were not disclosed.


Union of European Football Associations President Resigns

Michel Platini, president of the Union of European Football Associations (UEFA), announced his intention to resign after an appellate tribunal confirmed a ban first imposed on Platini in 2015. UEFA banned Platini for eight years after investigating his receipt of 2 million Swiss francs from FIFA president Sepp Blatter in 2011. After two appeals, the ban was reduced to four years. Platini said he would "pursue [his] battle in front of the Swiss courts to prove [his] innocence...."


Sumner Redstone's Competency Suit Dismissed

On Monday, a Los Angles judge dismissed with prejudice the lawsuit filed by Sumner Redstone's former lover, Manuela Herzer. Herzer sought to have Redstone declared mentally incompetent, and to have herself put back in charge of his care. After hearing Redstone's testimony on the first day of trial, the court found that the proceeding was "not reasonably necessary to protect the interests of the patient, who was "satisfied with the care he is receiving and to be with his family." The court did acknowledge that it was "not in dispute that Redstone suffers from either mild or moderate dementia." On the same day the court dismissed the case, Herzer's lawyer announced that she had filed a new lawsuit against Redstone's daughter, alleging an "insidious two-part plan" to turn Redstone against her.


Farm News Fires Freelance Farmer Friday For Unflattering Funnies

"Farm News," a weekly publication aimed at Iowa farmers, fired freelance cartoonist Rick Friday after his most recent cartoon upset an advertiser. Friday's cartoon depicted one farmer saying to another, "I wish there was more profit in farming," to which the other replies, "There is. In year 2015 the CEOs of Monsanto, DuPont Pioneer and John Deere combined made more money than 2,129 Iowa farmers." An editor told Mr. Friday that he was being terminated because a seed company had withdrawn its advertising in response to the cartoon.


Court Says Olympic Ban on Sponsor Logos Are Not Anti-competitive

On Thursday, the District of Oregon dismissed a lawsuit brought by Gold Medal LLC (d/b/a Run Gum) against USA Track & Field (USATF) and the U.S. Olympic Committee (USOC), which alleged that rules prohibiting athletes from displaying unapproved sponsors' logos at Olympic events were anti-competitive. The court found that such prohibitions were necessary for USATF and USOC to raise funds, and that "allowing athletes to become human billboards at the Trials" would interfere with that mission.


Minnesota Considers "Prince Act" to Establish Post-Mortem Right of Publicity

Just weeks after the death of musician Prince, Minnesota Representative Joe Hoppe introduced the Personal Rights in Names Can Endure ("PRINCE") Act, which would protect the rights of publicity for 50 years after an individual's death. Prince died intestate.


Nintendo Cements Patent Win

In 2012, the United States Patent and Trademark Office (USPTO) invalidated a patent asserted by Motion Games LLC against the Wii Remote. The patent described cameras and systems to track assembly-line components, and was the subject of patent infringement litigation between Motion Games and Nintendo in the Eastern District of Texas. On Tuesday, the Federal Circuit affirmed the USPTO's decision to invalidate the patent.


Cruz Campaign Sued For Unlicensed Use of Music

Audiosocket, a music licensing and technology company, sued Ted Cruz's defunct presidential campaign in the Western District of Washington for the unauthorized use of two songs licensed by Audiosocket. Audiosocket alleges that the license it granted to the Cruz campaign expressly excluded political advertisements and television broadcasts, but that Cruz used the songs in television ads that also have received tens of thousands of views on YouTube. One of the ads has been pulled from YouTube. The campaign's ad agency reportedly sought (but did not attempt) permission to use the songs after the fact. Audiosocket is seeking over $2 million in damages.


Star Trek Fan Film Copyright Suit Survives Motion to Dismiss

Axanar Productions, which launched a Kickstarter campaign last year to fund a Star Trek "fan film," moved to dismiss a copyright infringement complaint filed by Paramount Pictures and CBS Studios, who own the rights to the Star Trek movies and TV shows, respectively. Axanar argued that the plaintiffs failed to identify protectable elements of the copyrighted works. The Central District of California disagreed, stating that, although each of the elements identified in the complaint was arguably non-protectable, the plaintiffs' claims were based not on those specific elements but on the entire set of copyright works at issue, including novels, television series, and motion pictures. The court further held that the combined elements were numerous enough, and their arrangement original enough, that their combination would constitute an original work of authorship.


Music Advocacy Group Leader Resigns After Demonstrating Why Group Lacks Diversity

Michael A. Butera, executive director of the National Association for Music Education, resigned on Wednesday after telling a room full of people that the association was not diverse because "blacks and Latinos lack the keyboard skills needed for this field."


Pop Warner Eliminates Kickoffs

Youth football organization Pop Warner decided to eliminate kickoffs for players ages five through 10, opting to place the ball at the 35 yard line instead. It also said it would reduce contact time during practices.


Hacker Pleads Guilty to Copyright Infringement and Identity Theft

Alonzo Knowles, 23, pleaded guilty on Monday to stealing unfilmed movie and TV scripts, social security numbers, passports, and other information from 130 entertainment industry celebrities. Knowles will be sentenced on August 25th.


May 22, 2016

Week in Review

By Ben Natter

When Cultural Heritage is Caught in the Cross-hairs of War

As Russia expands its military footprint in Syria, experts warn of risks to archaeological treasures, including temples and an arch dating back thousands of years in the Palmyra region where Russia has constructed a military base. Historic sites in Syria are continuously being destroyed as warfare continues. The Syrian army often uses ancient structures as military bases making damage to these structures, including the Great Mosque of Aleppo, inevitable.


Kesha's Billboard Music Awards Show Performance Is Canceled

A performance by Kesha at the Billboard Awards was cancelled as the legal and public relations battle between Kesha and her producer, Dr. Luke, continues. Kesha accused Dr. Luke of sexual and emotional harassment, and filed claims in New York State court that also call for her contracts with Dr. Luke and his production company, Kemosabe Records, to be cancelled. The majority of Kesha's claims have been thrown out by the court. The producer filed countersuits for defamation and breach of contract.

Although Kesha agreed not to reference Dr. Luke in the scheduled performance, Kemosabe Records rescinded its approval of the performance after anonymous reports stated the Kesha would not honor the agreement. Given the necessity for of record label consent for a majority of new work and performances, Kesha's career has been mostly dormant since the controversy started several years ago.


I.O.C. President Says Russian Federations Could Be Barred

The president of the I.O.C., Thomas Bach, stated that if allegations of widespread and government sponsored Russian doping leading up to the Sochi games (also including Beijing and London games) proved to be true, then the entire Russian Sports Federation could potentially be barred from participating in the Rio Olympics. Mr. Bach indicated that the I.O.C. would wait for the results of the World Anti-Doping Agency investigation surrounding Russian doping at the Sochi games. The investigation will attempt to verify whether Russia's former antidoping lab director is being truthful in his account of wide-spread doping and tampering with samples.

He also claims to have been complicit with doping leading up to the Beijing and London games. The United States Attorney's office for the Eastern District of New York is also looking into pursuing a criminal case against the Russian Sports Federation.



Six Concussion Suits Are Filed Against Colleges and the NCAA

A group of college football players filed class action lawsuits in connection with head injuries, naming their universities, conferences and the NCAA. Six cases were simultaneously filed on Tuesday, and all seek financial relief for mishandling of head injuries during the college football careers of these players. Among the defendants are Penn State, Vanderbilt, the Big Ten, the Southeastern Conference and the Pacific-12.

Previously, a proposed settlement with respect to another similar class action suit filed against the NCAA was approved that called for new safety measures and funds to be put toward prevention and treatment of concussions.


Keeping Hong Kong Protest Art Alive Means Not Mothballing It

After the 2014 Pro-Democracy protests ended in Hong Kong, groups such as Umbrella Movement Visual Archives and Research Collective stored many of the sculptures and posters created in connection with the protests. It was originally anticipated that the artwork would be displayed. There are many issues involving "protest artwork", including ownership (it is very difficult to identify the artists) and the opinion that these works, many of which display anti-government messages, should not be displayed and serve no purpose beyond use in connection with the protests.

A local museum in Hong Kong, M+, is actively building its collection of similar works and the MOMA and Victoria and Albert in London have displayed protest artwork. Experts attribute the issues and resistance to displaying the works in Hong Kong to "social mood" and its current cultural environment.


Itzhak Perlman Cancels Concert in North Carolina, Citing Bias Law

The violinist Itzhak Perlman, one of the biggest names in classical music, joined the list of musicians (including Ringo Starr and Bruce Springsteen) cancelling performances in North Carolina in response to a law that limits transgender bathroom access and preempts local governments from passing anti-discrimination ordinances.

Perlman contracted polio as a child and often performs in a wheelchair. He cited personal the importance of anti-discrimination laws in his statement to his fans.


May 23, 2016

Heirs Go Crazy: Prince's Estate and Copyright's Termination of Transfer

By Britton Payne

The fight over Prince's estate will dig deep into copyright law for a very long time.

When Prince passed away on April 21, 2016, he left no will, and now his heirs appear ready for a long fight over his estate. Apparently, their first meeting about the estate ended in shouting. Heirs can battle over any substantial estate, and there are particular complications when it involves an artist. Some of what Prince's heirs are fighting over is the ownership of his works -- his published and unpublished music compositions and recordings. Copyright law will have a significant impact on who has what rights, and for how long. Three particular areas affecting their rights are: the termination of transfer (17 U.S.C. § 203), the term of copyright for published and unpublished works (17 U.S.C. § 302), and the contracts already in place. The drafting of a will for an artist, or the administration of a late artist's estate, should include a consult from an attorney for copyright due diligence.

After 35 Years, Artists and their Estates Get Another Bite at the Apple

There is an inherent feeling of unfairness for artists when they sign away the rights to their works, which against all odds go on to become popular and make a fortune for the rightsholders -- but not the artists. To address this, the Copyright Act built in a "termination of transfer" provision that gives an author an opportunity to claw back the work after 35 years, essentially giving the artist "another bite at the apple." (17 U.S.C. § 203.) There are court cases about termination of transfer for "Santa Claus is Coming to Town," Winnie the Pooh, Archie Comics, Ray Charles, the Village People and a few others, but there aren't very many published opinions offering guidance about interpreting the law. The battles over the Prince estate may explore these issues for decades.

Most of Prince's Works are Owned by the Estate and Licensed to Warner Bros.

Prince's first album For You was released in 1978, but still earns money for its publisher Warner Bros. Records to this day. Had Prince wanted to, in 2013 he could have rescinded the rights to distribute his 1978 album from Warner Bros. In 2014, he could have terminated the transfer of his 1978 or 1979 albums, and reclaimed control over them. Had he wanted, he could have kept terminating transfers as his most popular albums hit their 35 year marks: Controversy (2016), 1999 (2017), Purple Rain (2019), Around the World in a Day (2020), Parade (2021), Sign o' the Times (2022), Lovesexy (2023), Batman (2024), Graffiti Bridge (2025), Diamonds and Pearls (2026) and so on. Instead, in 2014 Prince and Warner Bros. Records redid their deal, which apparently resulted in Prince's reclaiming ownership in his back catalogue, and Warner Bros. retaining certain rights to distribute his music. This effectively resets the clock on the termination right, which can't be exercised against Warner Bros. for the works covered by this agreement until 2049. Warner Bros. and other record labels appear to be quite flexible in redoing deals with their artists with still-popular back catalogues that are approaching their 35-year termination of transfer dates. Musicians are finding that the evolution of digital recording and distribution give them much more of an ability to exploit their works without the help of a record label, which gives them more leverage to get even more favorable deals if they renegotiate. The termination of transfer right and technological advances are giving artists just the second bite at the apple envisioned by the termination of transfer clause's authors -- as long as the artists and their heirs have the legal counsel to help them take advantage of it. Warner Bros. chose to do what it could to lock up Prince's most lucrative works in the face of a termination of transfer.

Prince's Estate can Already Claw Back Some of His Other Works, and More Every Year

However, there may be other licenses and transfers of rights in Prince's works that were not affected by the Warner Bros. agreement. The oldest of these licenses and transfers are eligible for termination, and more will be in the coming years. The mechanics of the termination are a bit complicated, but are based on the passage of 35 years since the initial transfer of copyright. For the purposes of illustration, imagine that shortly after Prince released "Purple Rain" in 1984, he licensed the song to Hallmark for exclusive use in musical greeting cards. Even if the contract said that Hallmark had the right to make "Purple Rain" greeting cards for the entire duration of copyright, Section 203 allows Prince to terminate that license after 35 years. The termination can take place as early as 2019, or within five years after that in 2024. It's a five-year window to terminate -- after that, Prince would lose his chance. To terminate a transfer related to "Purple Rain" as early as possible in 2019, Prince would need to notify Hallmark between 2009 and 2017, since the law calls for written notice no more than 10 and no less than two years before the termination would take effect. During that time between the notice and the termination, the original parties can renegotiate their deal, in this case Prince and Hallmark. If they couldn't come to an agreement, the termination takes effect, and the greeting card rights to "Purple Rain" would revert to Prince. Only after the termination took effect could Prince make a new deal with another party for "Purple Rain" greeting cards. There are many other contours to the law, and there is very little caselaw on how it works, so it is ripe for controversy and error without the guidance of an attorney who understands the process. As Prince has passed away, there is the further question of who (if anyone) can terminate a transfer in the first place.

Who can Pull the Trigger? Not Prince's Siblings

There may end up being an interesting split between who owns the copyright to Prince's work, and who has the right to terminate a transfer. Under Minnesota state law, Prince's estate, including his copyrights, will descend to his sister Tyka Nelson and their five living half-siblings. (More than 700 people have claimed to be Prince's half-sibling, but none have yet been recognized by the court.) Yet under the termination of transfer law, siblings of the author do not have the right to terminate. Section 203 says that widows/widowers, children and grandchildren are the family members who have termination rights. Prince left no living widow, children, or grandchildren, so none of that applies to his works. According to the termination law, siblings are not next in line -- "In the event that the author's widow or widower, children, and grandchildren are not living, the author's executor, administrator, personal representative, or trustee shall own the author's entire termination interest." So who will "inherit" Prince's right to terminate the transfers in his works? Who will actually get the second bite at the apple?

The Fight to be the Administrator

As of this writing, the termination of transfer right is owned by the court-appointed "special administrator" the Bremer Trust, which provided financial services to Prince for many years. "Administrator" is one of the entities recognized by the termination of transfer law. The Bremer Trust was appointed special administrator by request of Prince's sister Tyka Nelson. The Bremer Trust could exercise Prince's termination rights for older works now, and may even find it necessary to do so given the strict deadlines of the termination right. However, the special administrator should be replaced within six months by a more permanent representative. Tyka or any of the other siblings could seek to be named Prince's administrator, and the court could also name the Bremer Trust or another neutral party. An administrator is typically thought of as being a functional role, carrying out the best interests of the estate, distributing property by function of law and not operating for its own benefit. However, the termination of transfer creates a strange situation where the administrator him or herself becomes the owner of the terminated right (or work, if it was transferred in its entirety). It is not clear whether the administrator is required to redistribute any terminated rights to Prince's heirs, all of whom would be well-advised to raise these issues before the permanent administrator is appointed by the court. There may be a contractual agreement among the administrator and the heirs or a court order concerning the exercise of the termination of transfer right, but the actual termination must be made by the court-appointed administrator, the only party recognized by the Copyright Act. Unless addressed by the court, this means that the heirs who own Prince's works by the mechanics of estate law could lose their rights to their own administrator slowly over time through termination of transfer. There will certainly be a struggle among the parties over the selection of a favorable administrator, who may not be bound by any restriction with regards to termination of transfer. There could be a contractual agreement between the heirs and the administrator, but the statute may make such an agreement unenforceable. The court's order in establishing the administrator -- and its interpretation of the statute -- could be worth a fortune.

Most of Prince's Works are Protected through 2086

The fight will likely go on for a long time, but will come to an end on a date certain for most of Prince's works. It is very unusual for works to be commercially valuable through their entire terms of copyright. There are millions of works in the Copyright Office registry that have been all but forgotten. However, Prince is the kind of iconic, transformational artist whose works could very well still be earning money for generations. Under current law, the term of copyright protection is the life of the author plus 70 years, which in Prince's case is 2086. This applies to both Prince's published and unpublished works.

Who is Alexander Nevermind?

Prince also wrote under several pseudonyms, including Jamie Starr, Joey Coco, Alexander Nevermind and Christopher, and occasionally used those names for the copyright registration. Copyright for pseudonymous works lasts for 95 years from publication, or 120 years from creation, whichever expires first. (17 U.S.C. 302(c).) Some of these were registered with the Copyright Office to Prince, even though they were publicly credited to one of his pseudonyms. However, if a simple supplement is filed with the Copyright Office, the term of copyright and the termination of transfer rights remain the same, as if Prince had been credited as the author in the first place. (17 U.S.C. 302(c), § 408(a), (d).) This has already been done for many of these pseudonymous works, such as "Manic Monday." The heirs could choose to leave the registration pseudonymous, but that would likely result in a shorter term of copyright. Prince used pseudonyms primarily in the early part of his career, and works published pseudonymously before 1991 and left unclaimed would expire earlier than the 2086 expiration of works credited to Prince.

Some of Prince's Jointly Authored Works Will be Protected Even Longer

In the case of a joint work prepared by two or more authors who did not work for hire, the copyright endures for a term consisting of the life of the last surviving author and 70 years after such last surviving author's death. (17 USC 302(b).) Prince occasionally wrote with co-authors who have also passed, so the copyright in those songs will last (under current law) until 2086. Many of Prince's co-authors are still alive, such as Madonna for "Love Song," so the copyright expiration cannot yet be determined, but will last beyond 2086.

The Works Made for Hire Battleground

Prince's heirs may challenge any assertion that any of Prince's works were "works made for hire." When a company hires an artist to create a certain kind work and follows certain statutory requirements, the company is considered the author of the work as a work for hire. For a work for hire, term of copyright is 95 years from publication or 120 years from creation, whichever expires first. Songs like Prince's embody two copyrights: the copyright in the composition, and the copyright in the recording. Record contracts typically provide that the recording is a work for hire created by the record label as author, not the artist. As such, the termination of transfer is unavailable for works made for hire. However, that status has been regularly challenged in courts, and it may turn out that despite the language of a particular record contract, Prince's recordings were authored by Prince and transferred to the record label, rather than considered authored by the record label as works for hire. Although this determination affects the term of copyright, it is more impactful on the termination of transfer right, and likely to be a source of litigation as the termination rights in Prince's works mature over the next seventy years.

Joint Authorship Will Complicate Everything

Most Prince songs are credited in the copyright registration solely to Prince, like "Purple Rain" and "1999." Other songs have multiple authors. The Prince and the New Power Generation song "7" has three authors -- Prince and the late blues musicians Lowell Fulsom (d. 1999) and Jimmy McCracklin (d. 2012). Joint authorship affects both the term of copyright and the termination of transfer.

The termination of transfer is granted to any majority block of owners of the right to terminate. If Prince wrote a song with one other living co-author, then termination can only be affected by the co-author plus Prince's administrator. Where Prince is co-author with more than one person, the transfer could be terminated without Prince's administrator's participation. However, even if Prince's heirs and administrator object to such a termination, they are entitled to an equal share of any further exploitation of such works.

It gets more complicated where Prince's collaborators are also deceased. Prince co-authored some songs with his jazz musician father, the late John L. Nelson, such as "Computer Blue" from the Purple Rain album. In such a case, the termination of transfer will depend on both Prince's administrator and his father's heirs. John L. Nelson has several living children (Prince's siblings) and grandchildren who could claim an equal part of the right to terminate transfer. Whichever of them (or their descendants) is alive at the time of the maturation of the right to terminate a transfer of one of those co-authored songs will need to cobble together a majority group of Nelson's children and grandchildren that owns the right to terminate, and also Prince's administrator. This complexity is multiplied where there are multiple deceased authors, as with the song "7." It is possible that heirs who were shut out of a will would nonetheless own or share the late author's right of termination. These rights can be organized by an attorney in the present, even if they can't be exercised until some future date.

Post Mortem Rights of Publicity

Although not a part of copyright law, the right to exercise certain copyright rights will intersect with Prince's rights of publicity. Certain states have laws or court decisions that allow people to protect the use of their personas in commerce. As of this writing, Minnesota protects rights of publicity through court rulings (Lake v. Wal-Mart Stores, Inc., 582 N.W.2d 231 (Minn. 1998); Ventura v. Titan Sports, Inc., 65 F.3d 725 (8th Cir. 1995)), but does not have a right of publicity statute, and is silent on whether those rights exist after the celebrity has passed. However, Minnesota's Senate and House of Representatives recently introduced a new bill that would establish a broad right of publicity that would cover Prince -- the Personal Rights in Names Can Endure (PRINCE) Act. The PRINCE Act would grant extended publicity control to the artist's estate and limit commercial use of his name and likeness by others. It would last for the celebrity's life plus at least 50 years, thereafter for as long as it is still in use, and would apply retroactively to celebrities who died within 50 years before the law's passage. In Prince's case, the right would descend to his siblings, and be further sellable or descendible by them, until at least 2066. Any exercise of copyright in Prince's work would likely be accompanied by a consideration of his post mortem rights of publicity.

Change in Copyright Law will Likely Benefit Prince's Heirs

As we're talking about such a long time, copyright law itself may change. It has gone through major revisions in the United States that have affected the term of copyright. Each copyright regime has stayed in place for decades since the first Copyright Act of 1790. Major changes came in 1831 (which was essentially preserved in the Confederacy under 1861 and 1863 Confederate acts, and honored after the war) and again in 1909. The current regime is the Copyright Act of 1976, which federalized copyright law, removed formalities, and came into effect on January 1, 1978 -- coincidentally at the dawn of Prince's career. Each of these revisions expanded the rights of authors and more forcefully protected intellectual property. This gradual increase in copyright protection is not surprising, as the United States evolved from a country that largely imported the creative works it consumed, into the world's largest exporter of intellectual property. One recent change in copyright law added the administrator as a possible claimant for termination of transfer -- previously, it had only been children or grandchildren. We can expect another change in the law between now and the expiration of copyright in Prince's works in 2086. We can further expect that such a change will increase protection of his works, either in length of term or some unforeseen manner.

Prince as a Model for Future Application of Copyright Law

Due to the administrator's ownership of the right to terminate, there must be an administrator in power at least through 2086, when Prince's works finally enter the public domain. The administrator will have responsibilities beyond 2086, to exercise the termination rights for works Prince co-authored with collaborators who have not yet passed as of 2016. During his lifetime, Prince was a tireless advocate of his rights as an artist, using copyright law to control and protect his artistic footprint, even when it seemed like it would cost him more than it would gain. For different reasons, it appears that more contentious exploration of copyright law will continue to be part of his legacy. Needless to say, it will be a long time before Prince's estate is fully settled. Any successful artist would be wise to consult with an attorney about the effect of copyright law on their estate, and not leave behind the uncertainty faced by the Prince heirs.

May 27, 2016

Week in Review

By Eric Lanter

Bill Cosby and An Accuser Could Face Each Other

One of Bill Cosby's alleged victims, Andrea Constand, was set to face Cosby in the course of the criminal proceeding against him in Montgomery County, Pennsylvania. Prosecutors have filed charges against Cosby, saying that the 2004 encounter between him and Constand was a case of criminal sexual assault. At the hearing on Tuesday, prosecutors attempted to demonstrate that they have enough evidence to go to trial. The judge agreed.


Bill Cosby Sexual Assault Trial Can Proceed, Judge Rules

Following the prosecutors' presentation of evidence, the judge ruled in the Pennsylvania sexual assault criminal proceeding that the matter will move forward. As this was essentially the first legal skirmish in the action, it is expected that matters will only become more contentious as it progresses.


U.S. Soccer and Women's Team Move Toward Trial

On Thursday, lawyers representing the United States Soccer Federation (U.S. Soccer) and the union for the women's national soccer team battled in federal court in Chicago. Judge Sharon Johnson Coleman reserved ruling at the hearing, which increases the chance that the case will go to trial. If there is in fact a trial, it will likely come around the time of the Summer Olympics in Rio de Janeiro, Brazil, where the women's team is set to defend its Olympic gold medal. This action began in February, when U.S. Soccer sued the women's team's union, demanding that it holds the players to their contracts. The players, however, maintain that there is not a valid collective bargaining agreement in place. The court is tasked with resolving this contract interpretation dispute.


'The Founder,' Like Ray Kroc, Feasts on McDonald's Imagery

In "The Founder," a film about the rise of the McDonald's Corporation, there is an abundance of McDonald's imagery and trademarks, such as the famous golden arches. All of this raises questions about whether the film's use will fall within the "fair use" exception of using McDonald's intellectual property. One risk is whether the film falsely portrays McDonald's, in which case, the film could be deemed an unauthorized use of trademarks.


Muirfield Golf Club Barred as British Open Host After Vote Against Female Members

Muirfield Golf Club, a renowned golf course that has been the site of 16 British Opens and dates back to 1744, no longer has the right to host the British Open. This comes as a result of the Club voting against allowing female members, as 64% voted in favor of admitting women, falling short of the two-thirds majority required for the vote. Golf's governing bodies has increasingly sought to eliminate gender discrimination, at least partially in part due to its goal of growing the game.


Case Against Photographer Over Paris Massacre Picture is Dismissed

During the November 13, 2015 terrorist attacks in Paris, photographer Maya Vidon-White took a photo of a victim, Cedric Gomet, who was injured. That photograph would be published, supposedly in contravention of a French criminal law, which forbids the publication of photographs of survivors of violent crimes. However, last Friday, the case was dismissed.


Sumner Redstone Moves to Replace Ousted Trust Members

In the wake of Sumner Redstone, who is the head of the $40 billion media empire of Viacom, ousting two executives, speculation is abound as to who the replacements will be. It is rumored that the replacements have close connections to Shari Redstone, Mr. Redstone's "long-estranged, recently reconciled daughter." Some see Mr. Redstone's removal of the executives as a long-awaited victory for Ms. Redstone, fueling her hopes to succeed her father.


Redstone and Viacom Executives Go to Court Against Each Other

The ousted Viacom executives are going to court over Sumner Redstone's recent actions taking them off the Board of Directors. The executives accuse Shari Redstone, Mr. Redstone's daughter, of organizing this "unlawful corporate takeover." Mr. Sumner, who has controlled Viacom since 1987, has had his mental capacity questioned, and after an examination, the judge has not made a determination as to his capacity. The ousted executives cite a lack of mental capacity to explain his recent actions.


Redstone's Great-Grandchildren and Ex-Wife Added to Lawsuit

On Wednesday, attorneys for the ousted Viacom executives added Sumner Redstone's two great-grandchildren and ex-wife, Phyllis Redstone, as nominal defendants in their action. As nominal defendants, they cannot be held liable or responsible for any outcome in the action, but they are named as a result of being beneficiaries of the trust that controls the fate of the $40 billion Viacom empire.


Myanmar Poet Who Wrote of Private Tattoo is Convicted of Defaming Ex-Leader

A poet in Myanmar, Maung Saungkha, has been sentenced to a six month jail term for defamation, after he wrote last October that he had a tattoo of the country's president on his penis. While Myanmar has been viewed as limiting censorship in recent years, human rights advocates say that restrictions on free speech still exist, and violating those restrictions is accompanied by great peril.


Misconduct Allegations Roil Baylor

Kenneth Starr, the current president and chancellor of Baylor University, as well as the former solicitor general and a federal judge, is the subject of scrutiny after information surfaced that former football players reportedly committed sexual misconduct (two of whom were convicted of such), with no action taken by the University. Law firm Pepper Hamilton investigated Baylor's adjudication and discipline of the students.


Baylor Takes Disciplinary Action

On Thursday, Baylor University took disciplinary action, removing Kenneth Starr as the president of the university and firing the football coach, Art Briles. Mr. Starr will remain Baylor's chancellor and a professor at the law school. However, both Mr. Starr and Mr. Briles are being dismissed for their mishandling of the accusations against football players of sexual assault.


Report: BMX Legend Dave Mirra Had Brain Disease CTE

Dave Mirra, the BMX legend who took his life in February, is reported to have had the brain disease chronic traumatic encephalopathy (CTE). CTE is a prominent issue in the National Football League (NFL), as it has been revealed that repeated concussions fosters the disease, which has led to the suicide of numerous former players. Mr. Mirra was one of the most successful athletes in X Games history, racking up 24 medals, with 14 of those gold. He was 41.


Bubba Smith, NFL Star and Actor, Had CTE

Bubba Smith, an All-Pro defensive end in the NFL had the degenerative brain disease CTE when he died in 2011. This was confirmed by researchers affiliated with the Department of Veterans Affairs, Boston University, and the Concussion Legacy Foundation. Mr. Smith is the 90th former NFL player found to have CTE, of the 94 former professional players that were examined.


Russia Says 14 that of its Athletes are Suspected of Doping at Beijing Olympics

The Russian Olympic Committee announced on Tuesday that 14 of Russia's athletes in the 2008 Summer Olympics in Beijing tested positive for doping. This comes after the International Olympic Committee retested 454 doping samples from the Beijing Olympic Games. Russia's Olympic Committee's announcement follows chemist Grigory Rodchenkov's announcement that he developed a three-drug cocktail of steroids and liquor that allowed Russian athletes to evade detection during performance enhancing drug tests and also ensure Russia's dominance in international competition.


Russian Vaulter Threatens Lawsuit

After the International Association of Athletics Federations (IAAF) suspended Russia's athletics federation, two-time Olympic pole vault champion Yelena Isinbayeva said she will file a lawsuit if the ban is upheld and she cannot compete in Rio de Janeiro for the 2016 Summer Olympics. The IAAF is set to rule next month on whether Russia will be reinstated prior to the beginning of the Games.


PayPal Founder Said to Bankroll Hulk Hogan's Suit Against Gawker

Peter Thiel, a billionaire entrepreneur and philanthropist who founded PayPal, privately agreed to fund Hulk Hogan's fees in his action against Gawker Media for invasion of privacy. Mr. Thiel's connection to Gawker goes back to 2007, when Gawker published an article outing Mr. Thiel as gay. That led Mr. Thiel to call Gawker "the Silicon Valley equivalent of Al Qaeda." Legal observers questioned whether Hulk Hogan, whose real name is Terry Bollea, had financial support for his lawsuit when his lawyer removed a claim that had the effect of eliminating Gawker's insurance company from the case.


Gawker's Founder Speaks Out

On Thursday, a day after Peter Thiel, the billionaire founder of PayPal, announced that he bankrolled Hulk Hogan's lawsuit against Gawker, the founder of Gawker, Nick Denton, released his own statement. He accused Mr. Thiel of being "thin-skinned" and a "comic book villain," and challenged Mr. Thiel to "a public debate about the role of journalism in society." Mr. Denton summed up Mr. Thiel's involvement as "vindictive", but also pointed out that his involvement now opens him up to public scrutiny.


Google Prevails as Jury Rebuffs Oracle in Code Copyright Case

A jury ruled in favor of Google on Thursday, after a long legal dispute with Oracle regarding the software used on most smartphones. While Oracle argued that Google had used copyrighted material in 11,000 of its 13 million lines of software code in Android, Google claimed that it made fair use of the code, owing nothing to Oracle. Oracle's general counsel stated that the company planned to appeal.


Settlement in Dispute Over Picasso Bust

A dispute about ownership of a Picasso bust was settled in New York District Court on Monday, with no public information available about the terms of the settlement. The dispute arose between two major collectors, the Qatari royal family and Leon Black, the chairman of the Apollo private equity firm and co-chairman of the Museum of Modern Art. The work, a bust of Marie-Therese Walter, last sold in May of 2015 for approximately $106 million.


Political Light Installation on Hong Kong Skyscraper is Pulled

Artists Sampson Wong and Jason Lam installed an art installation by displaying a cryptic political message on the facade of Hong Kong's tallest building. The installation was effectively a countdown timer to July 1, 2047, the date when the former British colony's status as a handover to China expires. Officials and exhibition organizers pulled the plug on the installation, citing the artists' "disrespect" in changing the work without prior permission.


Brady Appeals for a New Hearing in the Deflategate Case

Lawyers for Tom Brady have requested an en banc hearing before the Second Circuit Court of Appeals in the "Deflategate" case, arguing that the action involves a basic right to fair process, shared by all union workers, and the issue of underinflated footballs is ancillary to that. Mr. Brady's attorneys argued that Commissioner Goodell's "biased, agenda-driven and self-approving appeal ruling must be vacated."


Patriots Join Deflategate Fight in Court for First Time

The New England Patriots organization has filed an amicus curiae brief with the Second Circuit Court of Appeals, arguing that it "stand[s] to lose their All-Pro quarterback for 25 percent of the upcoming regular season based on a severely flawed process." Robert Kraft, the owner of the Patriots, is a staunch proponent for Commissioner Roger Goodell, so this brief comes as a surprise to some analysts. However, Mr. Kraft is seeking to protect his four-time Super Bowl winning quarterback, Tom Brady, from sitting on the sidelines in the upcoming season.


Tony Gwynn's Family Sues Tobacco Industry, Seeking Recourse Over Fatal Habit

The family of Tony Gwynn, the Baseball Hall of Fame member who died in 2014 of salivary gland cancer, filed a wrongful death lawsuit in San Diego against the tobacco industry, alleging that Mr. Gwynn was manipulated into becoming addicted to smokeless tobacco, which killed him. Mr. Gwynn used up to two cans of smokeless tobacco each day for 31 years. While the family alleges that companies like Philip Morris induced him to become addicted to smokeless tobacco, analysts expect that the defendants will take the typical position of blaming the victim.


NFL Tried to Influence Concussion Research, Congressional Study Finds

A Congressional committee released a report that is damaging to the NFL, alleging that the NFL attempted to influence government research regarding concussion research by steering the study toward a doctor that had ties to the NFL. Dr. Robert Stern, the director of clinical research for Boston University's CTE Center, allegedly had a study directed away from him, which some believe is because Boston University's CTE Center has become a leader in researching CTE, the degenerative brain disease. The impetus for this Congressional report began in December of 2015, when the NFL was rumored to be backing out of its promises to objectively fund concussion research.


Kermit Washington Accused of Stealing from His Charity

Former NBA star Kermit Washington was accused of embezzling approximately $500,000 in charitable donations to his charity that were to be spent in Africa helping the needy. Instead, Mr. Washington allegedly spent that money on "jewelry, vacations and other things." The U.S. Attorney for the Western District of Missouri, Tammy Dickinson, stated that Mr. Washington was using his celebrity status to take advantage of others' goodwill, for his benefit, as a "very small fraction" of the money collected for Project Contact Africa allegedly actually went to the charity.


About May 2016

This page contains all entries posted to The Entertainment, Arts and Sports Law Blog in May 2016. They are listed from oldest to newest.

April 2016 is the previous archive.

June 2016 is the next archive.

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