Ron Paul Files Trademark and Defamation Lawsuit

This week the “Ron Paul 2012 Presidential Committee, Inc. filed a lawsuit claiming defamation of Rep. Ron Paul’s character and unauthorized use of the trademark rights in his name in a political video.

The video, released by Paul advocates and not approved or authorized by Paul, makes personal attacks against fellow Republican presidential nominee Jon Huntsman.  With Hunstman dropping out of the race, it’s unlikely Paul’s camp will pursue this litigation much further against defendants they have so far been unable to identify.

Supreme Court Upholds Copyright Protection For Foreign Works

The U.S. Supreme Court decision released this week in Golan v Holder maintained copyright protection for millions of works created by foreign authors. Before 1989, many foreign authors’ works became public domain for not fulfilling requirements in the U.S. Copyright Act. In 1994, Congress passed the Uruguay Round Agreements Act restoring U.S. copyright protection for works published by foreign authors primarily between 1923 and 1964. The URAA brought the U.S. into compliance with the Berne Convention copyright treaty.

The Justices that dissented in the 6 to 2 decision expressed concern that upholding the pertinent section of the URAA denies the right of freedom expression and curtails the incentive to create new works.

Read more from the SCOTUS Blog.

Read more from The New York Times.

Entertainment Law Update Podcast 26: Zombies, Crowds, & Trees

Take a listen to the latest edition of the Entertainment Law Update Podcast with co-hosts L.A.  film lawyer Gordon Firemark and Texas-based music lawyer Tamera Bennett.

I would like to give a personal shout-out and thank you to Gordon for bringing me on board for this great podcast.  I am looking forward to an amazing 2012 for the podcast and can’t wait to see who might be making a surprise visit as guest co-host!

Right of Publicity — 2011 In Review

When a famous person dies, the survival of the right to control and profit from their name and likeness depends on when they died and what state they lived in at their death.  Famous artists may need to take a closer look at where they call home during their life to insure their right of publicity has a home post-death.

After losing a battle in 2005 to have Jimi Hendrix’s right of publicity protected by New York state law, where Hendrix lived at his death, Hendrix’s heirs worked to amend the Washington state right of publicity law.  Hendrix’s heirs sued under the newly amended law. In 2011 a trial judge held Washington’s Personality Rights Act, that allowed anyone to sue in Washington to enforce their rights regardless of where the lived when they died, was unconstitutional.  The trial court’s decision has been appealed to the Ninth Circuit.

This year an Indiana court ruled that Indiana’s post-death right of publicity law cannot be applied retroactively.  The court ruled John Dillenger’s heirs have no claim to Dillenger’s name and likeness because Dillenger died before Indiana had a posthumous right of publicity.

A California  district judge’s decision ruling Marilyn Monroe was a resident of New York at her death is on appeal to the Ninth Circuit.  If upheld, Monroe’s post-death right of publicity would not be protected by changes to the California right of publicity statute which granted retroactive protection to famous California residents who died before 1985.  See Milton H. Greene Archives, Inc v. Marilyn Monroe LLC, 08-56471 (9th Cir. filed 2008).

George Clinton v UMG: Royalty Disputes and More

This article is was originally published in Billboard Magazine and has been reprinted with permission.

George Clinton v. Universal Music Group Highlights Time Limits On Royalty Claims, BILLBOARD, Sept. 29, 2011.

by Tamera H. Bennett

Judging from pioneering funk productions helmed by Parliament-Funkadelic mastermind George Clinton, the man knows the value of staying on the beat and keeping time.

But the apparent failure of Clinton to keep an eye on the clock could cost him dearly in terms of royalties he claims he’s still owed. The decision highlights one of the challenges facing heritage artists and their heirs in navigating claims for underpayment of digital downloads and possibly other new media uses of their copyrights. In addition to keeping track of royalties due to them (which can require costly audits), artists must also be aware of how long they have to raise objections to the size of the payments they receive.

In 1980, Clinton signed a production agreement with Casablanca Records, which is now owned by Universal Music Group. UMG claims that it couldn’t reach Clinton for years and that it was unable to send him royalty statements. Once Clinton re-surfaced in 2001, UMG sent back royalty statements and payments to Clinton for the years 1996 to 2000.

But Clinton sued UMG in 2007 for breach of contract, claiming that the label group didn’t pay him all the royalties he was due from 2000 to 2003. His production contract required Clinton to provide detailed and specific objections to his royalty statements and he complied — almost. Clinton outlined under-payments, non-payments and improper withholding of taxes.  What Clinton never specified was that he had been underpaid for royalties stemming from digital downloads.

Then earlier this year, Clinton amended his lawsuit claiming for the first time that UMG had not paid him the correct royalty rate for digital downloads, citing a 2010 decision by the U.S. Court of Appeals for the Ninth Circuit in F.B.T. Productions, LLC v. Aftermath Records. In the F.B.T. case, the court held that in certain contractual situations digital downloads are a license and as such the record label must pay a higher royalty rate to the artist.

Clinton had the right under his production agreement to review and audit royalty statements to determine if UMG had properly paid him. Clinton also had the right to sue UMG if it failed to do so.

But both of these rights had a time limit — three years after the date a royalty statement was “rendered” to Clinton. It is very common in recording agreements for there to be a time limit on bringing a lawsuit, a period of time which is usually shorter than the statute of limitations stipulated in state or federal law.

Three years seems like a pretty easy way to calculate a deadline. Indeed, in 2003, Clinton and UMG agreed to a “tolling” agreement that effectively froze time so the three-year window within which Clinton had to file a lawsuit for the statements rendered in 2000 and later would not run out.

But on Aug. 9,  U.S. District Court Judge Philip S. Gutierrez ruled that the clock had started running three years from the time Clinton should have received his royalty statement. If Clinton didn’t receive his royalty statement, his 1980 contract placed the responsibility on Clinton to tell UMG in writing that he never got his statement. Clinton’s four-year absence cost him the ability to sue UMG for potential accounting errors over multiple years.

In his ruling, Gutierrez made it clear that Clinton failed to specifically object to the underpayment of digital download royalties in a timely manner. Because Clinton didn’t comply with the requirements in his recording contract, he lost the opportunity to challenge UMG on years of royalty statements specifically related to digital downloads.

At the end of October, Gutierrez will determine whether Clinton v UMG will go to trial on the question of whether the tolling agreement was valid. The district judge ruled that it wasn’t valid, but an appeals court reviewed the decision and sent the question back to Gutierrez.

If the tolling agreement is valid — that is, if Clinton’s suit against UMG is deemed to have been filed within the required time frame, then Gutierrez will rule on Clinton’s claims that UMG failed to pay him royalties due to him, excluding those for digital downloads. This is a significant concern for any label or artist. Even though there is no binding court decision in Clinton v. UMG on this issue, it has become imperative to include language that references the freezing of all statutory limitations periods as well as contractual limitations periods.

The possibility that the tolling agreement could be declared invalid has prompted Clinton to sue his now-former lawyers for legal malpractice.
Tamera H. Bennett is an entertainment and intellectual property attorney based in Lewisville, Texas.

Music Licensing and the Nicaraguan Presidential Campaign

Music in presidential campaigns has been a hot topic in the US as well as in France.  Now we have the the campaign for Nicaraguan President Daniel Ortega entering the scene.

News reports say Ortega’s campaign  is using a Spanish language version of the classic song “Stand By Me” in political ads.  Sony/ATV, the copyright owner of the song,  forwarded a ceases and desist letter to Ortega.  I am assuming Sony/ATV is asserting no synchronization license was granted to use the song.

Read more about John McCain’s, Sarah Palin’s, Chuck Devore’s, and Nicolas Sarkozy‘s legal disputes over use of music related to a political campaign.

Texas No Longer Regulates Talent Agencies

Effective September 1, 2011, the Texas Legislature repealed Texas Occupations Code, Chapter 2105, and removed registration requirements for, and the authority to regulate talent agencies.

The supporters of repealing the code section made the following comments in legislative hearings:

It is inefficient and unnecessary to continue the state licensing of talent agencies ….. The number of licensees … is so small that there is no benefit to the consumer to continue regulation by TDLR. The Deceptive Trade Practices Act would provide sufficient protections to consumers who could be harmed ….

Talent agencies originally were regulated to protect actors from fraudulent agents. However, there is widespread activity by unregulated parties that offer similar services, and the regulations are easily circumvented, rendering them ineffective.

Those that wished to keep the regulation in place stated:

Regulation of talent agencies originally was enacted to ensure that actors were not swindled by talent agents who would take money in exchange for future services and then disappear and also to protect legitimate talent agencies. If there is widespread activity by unregulated parties, the bill should address better regulation, instead of removing it completely.

The Texas Talent Agencies Act only regulated securing business for models and actors.  It did not regulate the securing of gigs for musicians.

Bananas For Copyright Law: Who Owns Pictures Snapped by Monkeys?

Did you know that US Copyright Law and British Copyright Law do not grant copyright protection to works that “are not originated by humans?”  Hum, what does that really mean?  It might just mean that the photographs taken by a clever macaque monkey after it commandeered  the human photographer’s camera are in the public domain.

This post from Tech Dirt raises the issue of copyright ownership in the photos and raised the fur of the Carter’s News Agency who claim they now control the images.  The comments to the Tech Dirt post, and the serious (sometimes seriously funny) comments of Gordon Firemark and Tamera Bennett in Episode 23 of the Entertainment Law Podcast provide some food for thought on this issue.

Y.M.C.A. — Spells Copyright Termination

Victor Willis, the former lead singer of the group The Village People and the songwriter or co-writer on 32 songs performed by the group, is in a legal battle with the music publishers that currently own the copyright in the songs  to terminate the agreements granting ownership of the song copyrights to the music publisher.

Pursuant to section 203 of the 1976 Copyright Act authors (or certain heirs) may terminate  copyright assignments and reclaim copyrights 35 years after the work is first published.  There are strict statutory guidelines that must be followed and they are outlined in more detail in the article here.

The music publishers that own the songs made famous by The Village People have asked a judge to find the songs were created by Willis as “works for hire.”  Under the Copyright Act works created as “works for hire” are not subject to the termination provision because the employer, in this case the music publisher, would by law be deemed the author of the work.  But, songs are not specifically enumerated as a category of “works for hire,” so the music publishers would be required to prove that Willis was their employee in order for this argument to fly.

While the article from The Hollywood Reporter Esq. blog and The New York Times lay out the facts and the basics on termination law, they do not mention what might be the music publisher’s best argument to defeat the claim:  17 USC § 203(A)(1) requires that when a work, in this fact pattern a song, has more than one author, a termination of the grant may be effected by a majority of the authors who executed the original agreement conveying the rights to the copyright.  “Y.M.C.A” has four songwriters.  Three of the four songwriters must properly serve notice on the music publisher to meet the first hurdle in even attempting to terminate the grant. While the other co-writers may have filed their termination notices, this fact does not seem to be surfacing in the news reports.

Music lawyer Tamera Bennett and film lawyer Gordon Firemark discuss this case in detail in Episode 23 of the Entertainment Law Update Podcast.

Texas Anti-SLAPP Bill Becomes Law

Texas joins 26 other states in passing legislation that supports a defendant’s defense of freedom of speech in civil lawsuits.

The “Citizens Participation Act” (HB 2973), provides protections for individuals targeted with strategic lawsuits against public participation (anti-SLAPP). The lawsuits, often filed against bloggers and journalists,  are usually brought in retaliation for a news story in which the reporter believes they exercised their right to freedom of expression in conveying the information.

The new law will allow for the defendant in a freedom of expression case in Texas to file a motion to dismiss the case based on the anti-SLAPP law within 60 days of the lawsuit being filed.  A hearing must be promptly set within 30 days of filing the motion to dismiss.  The judge will make a ruling based on the pleadings and affidavits filed.  In limited situations the judge has the discretion to allow discovery.

The law reads:  A court shall dismiss a legal action against the moving party if the moving party shows by a preponderance of the evidence that the legal action is based on, relates to, or is in response to the party ’s exercise of:
(1)the right of free speech;
(2)the right to petition; or
(3)the right of association.

Even if the defendant meets the preponderance of the evidence standard, if the plaintiff can show be clear and convincing evidence, each and every element of the underlying cause of action, the case will not be dismissed.  The clear and convincing evidence standard is a very high hurdle for the plaintiff.

What makes the anti-SLAPP law most effective is the threat of the prevailing party recovering costs and attorneys’ fees.  It will be interesting to watch what will be the first test cases to be filed in Texas.

I would also like to give a shout to my friend and colleague media attorney Laura Lee Prather for spear-heading this bill.

Estate Updates On Bobby Fischer and James Brown

Where there’s money … there will be battles….

Bobby Fischer’s Estate:
An Icelandic Court’s ruling may have ended the running dispute as to who is the actual heir to renowned chess player Bobby Fischer.  I blogged here about the dispute between the person claiming to be his child and the women claiming to be his wife.  DNA testing ruled out the child as an heir.  The court ruled in March 2011 that documentation was sufficient to prove a women from Japan was his wife at his death at would inherit his 2 Million dollar estate.

James Brown’s Estate:
There really is no end in sight for the dispute between the heirs over the James Brown Estate. I blogged here on the ongoing dispute between Brown’s heirs and Brown’s alleged heirs regarding his estate plan that included the bulk of his estate going to a charitable trust.  An action has now been filed to overturn a 2009 Settlement Agreement that allocated a portion of his estate to heirs that were not specifically named in his will. By the court’s action in approving the 2009 Settlement Agreement, the corpus of the charitable trust was substantially reduced.

Part 3: BMG Rights Management Music Publishing Acquisitions

BMG Rights Management, formed in 2008 and jointly owned by Bertelsmann AG and Kohlberg Kravis Roberts & Co., spent 2010 acquiring one high-profile music publishing catalog after another.  BMG’s acquisitions  over the last 12 to 15 months expanded its catalog to over 300,000 compositions. It currently stands as the fifth largest music publishing company in the world.

With the help of my legal intern, Abby Kweller, this is Part 3 of a multi-part post summarizing various acquisitions in 2010.  You can read Part 1 here and Part 2 here.

TG Publishing (October 2010)
In October of 2010, BMG Rights Management acquired the twenty-five-year-old international music agency, TG Publishing.  TG Publishing managed the production, publishing, and licensing of 1500 songs from twenty songwriters and seven studios in Denmark and Sweden. TG Publishing’s catalog has sold over 40 million records and includes songs that have topped charts all across the world. A TG artist, Aqua, was made an international sensation from its 1997 Billboard Top-100 hit “Barbie Girl.” Other notable artists in the roster include DJ Ötzi, Dr. Bombay, and Kato. In the Deal, BMG acquired fifty percent of TG Publishing’s catalog with the remaining fifty percent to be sub-published.  

Chrysalis (November 2010)
A major acquisition for BMG occurred in November 2010, when the company struck a deal with one of the world’s biggest independent publishers, Chrysalis. The $168 million-plus offer from BMG made the deal a good one for Chrysalis, since BMG’s offer was more than five-million dollars higher than an offer made by EMI. BMG acquired over 100,000 songs in the Chrysalis acquisition, and gained the rights to legacy and active stars such as Michael Jackson, David Bowie, Blondie, Sheryl Crow, and recent chart topper Cee Lo Green. On a side note, you can read more here on how BMG’s acquisitions are impacting music industry executive’s jobs in Nashville.

TaPe Music Publishing (December 2010)
BMG’s ninth and final acquisition of 2010 was a co-publishing deal with newly founded independent publisher TaPe Music. TaPe Music secured major international deals before being acquired by BMG, and had an individual catalogue that included over 200 songs from TaPe’s executive director, Pete Kirtley. Kirtley sold over ten million records world-wide, and the price of the acquisition is unknown at this time.

Protecting An Artist’s Legacy Through Estate Planning: Dallas Bar CLE

In the US alone, thousands of copyright creators and/or copyright owners die each year.  How many of these folks create a comprehensive estate plan, or even a basic will or simple trust?  The goal of estate planning is to minimize the potential for probate litigation, make life easier for those left behind, and to preserve an artist’s legacy.

All to often we see cases where artists simply failed to plan for the protection and/or distribution of their estate.  Perhaps even more heart-breaking and legally interesting are the cases where the plan failed and the heirs, with the assistance of the court, were able to override the estate plan.

Austin based music and estate planning lawyer Ken Pajak and Dallas based music publishing lawyer Tamera H. Bennett presented “Protecting An Artist’s Legacy Through Estate Planning:  Probate and Post -Death Administration of an Artist’s Rights to the Sports and Entertainment Law Section of the Dallas Bar Association on May 25, 2011.

To review the article and handouts prepared by Ken Pajak and Tamera Bennett for the “Protecting An Artist’s Legacy Through Estate Planning” presentation click here and here.

For quick links to the topics and cases of interest discussed at the CLE and in the article click here.

By clicking on the names you can read more on the estates of Bobby Fischer, Jack Kerouac, Darrell “Wayne” Perry, and James Brown.

Music Lawyer Tamera Bennett Talks Eminem, Rick James and Allman Brothers

This article is featured in Billboard and is reprinted with permission.

Rick James Estate’s Class-Action Suit Against Universal: An Entertainment Attorney Weighs In

April 08, 2011

By Tamera H. Bennett

The Rick James estate filed a class action lawsuit against Universal Music Group and it’s raising expectations that more artists may enter the license-vs.-sale battle over digital downloads.

But the clock could be ticking for heritage artists interested in pursuing action against their former record labels.

In its suit against UMG, the James estate is seeking damages for what it alleges are unpaid royalties for the sale of music through digital downloads and ringtones. The filing came just days after the U.S. Supreme Court declined to review an appellate court decision granting F.B.T. Productions a greater share of royalties from UMG’s sale of Eminem’s music through digital downloads and ringtones.

The Allman Brothers Band recently settled a proposed class action case against Sony Music Entertainment on the same issue: Is a digital download a license or a sale? In accordance with the Eminem decision in the Ninth Circuit Court of Appeals, a digital download is a license, and an artist is typically entitled to 50% of what the record label was paid for the license, versus a lesser percentage that would be due for the sale of a record.

With record labels using standard agreements from the mid-’60s to the mid-2000s, the James estate is banking on having its case certified as a class action and bringing aboard thousands of plaintiffs who had record or production deals with UMG or affiliated record labels from Jan. 1, 1965, to April 30, 2004.

What the James estate may not be counting on is another fairly standard provision in these recording contracts: the “incontestability provision.” Most artist contracts signed during the proposed class window include language such as this: “All royalty statements rendered by the label to the artist shall be binding upon the artist and not subject to any objection by the artist for any reason unless specific objection in writing, stating the basis thereof, is given to the label within one year from the date the statement is rendered.”

A similar incontestability provision was included in the 1985 Allman Brothers recording agreement (originally signed with PolyGram Records) that’s part of the band’s current litigation against UMG pending in federal district court in New York. The court held in 2008 that the clause was valid and enforceable and denied the challenge to certain royalty statements because there wasn’t a timely objection to the statements in accordance with the contract.

Whether there is a one-, two-, three- or even a four-year window of time to object to a royalty statement, heritage artists who intend to challenge the royalty rate they’ve been paid for digital downloads may be barred from collecting years of unpaid revenue unless they act immediately.

Joining the James estate’s class action may sound appealing, but waiting for the case to be certified as a class action might be too late for some heritage acts. Even though there are common questions of law and fact among the proposed class members, the court may deny a class certification. Keep in mind that the Allmans’ case against Sony settled almost five years after being filed, but before the class was ever certified.

Heritage artists should review closely their agreements to determine if they have to take any additional action to preserve their rights. Launching a full-blown audit may not be financially viable for many heritage artists, but at a minimum they should immediately begin objecting in writing to the royalty rate paid for digital downloads. For those who have the financial resources, artists should comply with the contract objection provision, send notice of an audit and perhaps even send a tolling agreement to the label to freeze the contract-imposed limitations period. The Allman Brothers tried the tolling provision route first with UMG, but the major refused to freeze the limitations period, prompting the band to file suit.

Although UMG has repeatedly discounted the Eminem decision as only applying to the particular facts of that case, it’s anticipated that the Ninth Circuit decision will spur many heritage artists to start the litigation process to preserve their rights. Tactically speaking, individual suits may be more effective than a class action because the labels’ efforts will be divided in defending the suits. Artists might want to investigate filing suit in the Northern District of California, where the James estate filed its case.

If the rules of civil procedure are met, the court may consider a “joinder” of cases in lieu of a class action, potentially giving named plaintiffs more control over the terms of a settlement than under a class action. In the event of a joinder, only plaintiffs named in the lawsuit may recover damages.

Either way, time is of the essence. Heritage artists interested in pursuing a higher royalty rate on digital downloads should act quickly as windows of opportunity are closing each year.

Tamera H. Bennett is an entertainment and intellectual property attorney based in Lewisville, Texas.

Part 2: BMG Rights Management Music Publishing Acquisitions

BMG Rights Management, formed in 2008 and jointly owned by Bertelsmann AG and Kohlberg Kravis Roberts & Co., spent 2010 acquiring one high-profile music publishing catalog after another.   With the help of my legal intern, Abby Kweller, I am putting together a multi-part post summarizing the various acquisitions in 2010.  You can read Part 1 here and Part 3 here.

Selfmade Records (August 2010)
The first of BMG’s two August acquisitions was Selfmade Records, a successful German hip-hop label with releases ranking in the Top 30 and Top 20 on German charts. Selfmade’s catalog held rights to 172 songs.   Selfmade had an active songwriting roster and in addition to the existing copyrights, BMG also acquired songwriting contracts with German producers RIZBO, Mcs Kollegah, Flipstar, and Favorite.   The deal struck between BMG and Selfmade Records was for an unknown purchase price.

The Clarence McDonald Catalog (August 2010)
BMG inked a publishing administration agreement for 19 titles with writer, singer, and producer, Clarence McDonald, and his related North American publishing companies.  Partners in McDonald’s publishing companies include Lani Groves, Daniece Williams, and Bill Daniels. McDonald has produced songs for Ray Charles (“Heaven Help Us All”), the Emotions (“Best of My Love”), Johnny Mathis (“That’s What Friends Are for”), and Bill Withers (“Lovely Day”).

Evergreen Copyright Acquisitions (September 2010)
BMG’s sixth acquisition in 2010 was the US-based music publishing/administration company Evergreen Copyright Acquistions. The Evergreen catalog included 65,000 titles across diverse genres, bringing BMG’s catalog to over 200,000 song copyrights. Michael Jackson, MC Hammer, Dr. Dre, Snoop Dogg, and Uncle Kracker are a few of the notable artists that have made hits of songs in the Evergreen catalog.   Evergreen’s co-CEO was Texas music industry veteran Richard Perna.  The New York Post estimated the deal to be valued at 80 million USD.   The Evergreen catalog contained legacy songs as well as active songwriters.

More posts will follow with additional information on BMG Rights’ music publishing acquisitions.  Read Part 1 here.

Music Business Panel at Denton — 35 Conferette

Updated: March 14, 2011:

The Dallas Observer Blog has an interesting article on the “Music Business Legal Checklist” panel that was presented as part of the 2011 35 Conferette.

Click here for a summary of the topics discussed and resources you can review online.

_______________________________________________

Dallas and Fort Worth music lawyers team up for a “basics” music business legal issues panel on March 10, 2011 at Denton Banter as part of the Day Events for the 35 Conferette music conference.

Music Business Legal Check List: Five Things You Better Think About and Do
Sponsored by the Dallas Bar Sports and Entertainment Law Section
Thursday, March 10th from 3:00 PM – 4:30 PM at Banter, 219 West Oak Street, Denton, TX 76201

This free and open to the public  presentation will assist the new or established musician/artist/music business professional in navigating the ins-and-outs of legal issues involved in the music business. The panel will address 1) when key team members such as a manager, attorney or booking agent should become involved in an artist’s career; 2) who owns the content – songs, sound recordings, trademarks; 3) do you need a written agreement or is a hand-shake between the band members enough; 4) how do you raise money for the next record; and 5) what revenue streams are out there.

Moderator
Tamera H. Bennett: Attorney, Bennett Law Office, PC; President, Farm To Market Music, LLC, Lewisville, TX

Panelists
Megan M. Carpenter: Associate Professor & Director, Center for Law & Intellectual Property, Texas Wesleyan School of Law, Fort Worth, TX
Craig C. Crafton: Attorney, Cozen O’Conner, Dallas, TX
Catherine Hough: Attorney, Ferguson Law Group, PC, Plano, TX
Decker Sachse: Attorney, Sachse Law Group; Business Affairs, Kirtland Records, Dallas, TX

Stick around after the panel presentation for the 2nd Annual Music Mixer hosted by the Texas Board members of the Recording Academy (the Grammy folks).  Cash Bar.

Deals and Trends at MIDEM 2011

MIDEM 2011 wrapped in January, but the deals that were signed and forecasts given will have a long-term impact on the music publishing business.  Thank you to my legal intern Abby Kweller for assisting with research on this project.

Partial Listing of Deals:

• The Harry Fox Agency (HFA)  announced the renewal of a licensing agreement with DMI Music & Media Networks.
• HFA has partnered with Ricall to develop a synchronization licensing/clearance service.  HFA has issued sync licenses in the past, but stepped away from that side of the music licensing business several years ago.
• Hypebot has info on deals signed here, here and here.

Trends from MIDEM 2011:

It really seems like MIDEM 2011 was less about signing deals and more about how the music business and delivery of music continues to change moving forward.   A key take-away is that the music business is about successful delivery of content.  Here’s a look at the future of the music business and the MIDEM conference….

• Techy folks attending MIDEM are out numbering the more traditional record labels and music publishers.  This year’s MIDEM was focused on content delivery and the technology to deliver the content may seem more important than the the actual content.  Overall, it seems as if content will be streamed with a flat-fee charged to the consumer.
• Licensing is the biggest hurtle that all the parties face. With the technology in place or on the cusp of release, the tech companies and the music labels/music publishers need to come to terms on how the content owners will be compensated.
• Is delivery of content via the Cloud the future of the music business?
• Read this fantastic White Paper from the MIDEM conference on “Ten Lessons From the MIDEM Conference.”
• There are great resources on trends in the music business on the MIDEM website.

Entertainment Law Update Podcast: Beauty Pageants and Super Bowls

Film attorney Gordon P. Firemark and music lawyer Tamera H. Bennett have put Episode 18 of the Entertainment Law Update “in the can.”

Catch up on Sheppard Fairey, Jimi Hendrix, and Hurt Locker litigation matters.  New hot topics include litigation over the “Super Bowl” temporary seating, a Texas beauty queen dethroned, and Lady Gaga vs. Madonna.

BMG Rights Management Music Publishing Catalog Acquistions

BMG Rights Management, formed in 2008 and jointly owned by Bertelsmann AG and Kohlberg Kravis Roberts & Co., spent 2010 acquiring one high-profile music publishing catalog after another.  Since its founding, BMG Rights has inked more than 400 publishing deals, with at least 10 news-worth acquisitions  in 2010 and two already in 2011.    Some of the acquired catalogs were  owned and operated as large corporate conglomerates.  But, for  some songwriters there may be an adjustment from the small indie publisher “personal relationship” to working with a multi-billion dollar corporation.

With the assistance of my legal intern Abby Kweller, I will outline over the course of several blogs posts  the various acquisitions made by BMG Rights Management in 2010 and 2011. You can read Part 2 here and Part 3 here.

Cherry Lane Music Publishing Co. Inc. (March 2010)

BMG Rights Management  started 2010  with the acquisition of  Cherry Lane Music in the first quarter.  The Cherry Lane Music catalog includes hits written by the Black Eyed Peas, John Denver, Elvis Presley, John Legend and Quincy Jones.

This acquisition brought the number of song copyrights owned by BMG Rights Management to more than 140,000.  The estimated purchase price was between $85 and $100 million.

Cherry Lane Music has both a substantial legacy/back catalog as well as active/current songwriters that continue to add new hits to the catalog.

Adage IV (June 2010)

In June 2010, Cherry Lane Music added classic songs “Why Do Fools Fall In Love,” “Stay,” and “Little Darling” to its holdings as part of the acquisition of Adage IV Music.  Adage IV was established as a music publisher that acquires legacy, time-tested song copyrights.   Cherry Lane Music picked up an additional 500 song titles from Adage IV, bringing the catalog closer to the 150,000 title mark.

Stage Three Music (July 2010)

On July 15, 2010, BMG announced its third 2010 acquisition of leading independent publishing company Stage Three Music.  Stage Three Music acquired the rights to catalogs they believed to contain classic songs.  Hits from Aerosmith, David Essex, Macy Gray, Rascal Flats, and ZZ Top are some of the 39 artists and 29 writers that Stage Three controlled.  Stage Three’s held the rights to over 18,000 titles, so this acquisition brought BMG’s catalog up to approximately 168,000 titles. During the time of this acquisition, Executives believed this deal gave rise to BMG ranking fifth in terms of worldwide-music-publishing market share.  The purchase price of the deal was not disclosed.

Be on the look-out for additional blog posts summarizing the transactions.

Texas Trademark Lawyer Tamera Bennett on Small Business Trademark Disputes

Dallas-area based trademark attorney Tamera Bennett was interviewed and quoted in an article from Fox Business Small Business Center on selecting and defending a trademark.

Thank you to the author of the article for allowing reprint rights for the the blog.

How to Handle a Trademark Violation of Your Small Business

Published February 03, 2011 | FOXBusiness

Just like parents picking the name of their children at birth, business owners agonize over the words and logos that will represent their business.

Every entrepreneur should make sure that his or her business name is legally available and then register it with the U.S. Patent and Trademark Office in order to protect it. But, even that protection doesn’t guarantee that another shop won’t open with the same name and confuse customers.

When a small business owner comes across a business with an eerily similar name or trademark it’s important to do your research and act fast.

“First, make sure that it is a real infringement and determine the scope of your trademark rights,” recommended Chappaqua, NY-based Attorney Kyle-Beth Hilfer.

For example, Hilfe said small business owners should figure out if they are “using the mark in interstate commerce with a registration that provides rights throughout the United States or using the mark in a limited geographic area, while the competing mark is in a completely different geographic region.”

If the business name or mark is being infringed upon, Los Angeles-based attorney Konrad Trope warned small business owners to “put the infringer on notice to “cease and desist” and collect evidence of first use and infringement.”

“First use” establishes that a business owner held the name first. “First use in commerce is the key. Dated letters with letterhead, product sold with the mark, advertisements, all are examples of first use,” said Trope, “Make sure you can show the date that the advertisements were published or broadcast.“

Putting an entrepreneur on notice to stop using the name or logo is done through a cease and desist letter drafted by an attorney.

“A cease and desist letter puts the infringer on notice that the business owner is serious about intellectual property rights and will prosecute to the fullest extent of the law,” said Hilfer, “Frequently, these letters shake the infringer out of complacency, allowing negotiations to commence.”

But if negotiations don’t follow, the process gets serious and expensive. “What happens next depends on clients’ tolerance level for pain and spending money,” said Lewisville, Texas-based attorney Tamera Bennett. “Entrepreneurs need to consider how much money it will cost to send the letter, how much it will cost to sue and home much it will cost to negotiate a settlement.”

According to attorney Konrad Trope, the process can take up to 18 months and usually costs around $3,000.

Entrepreneurs should note that under certain circumstances, a business with the same name can exist. “If the business does not operate in the same trade channels or if the goods or services are completely different, it may be possible that the trademark can be used by two or more owners,” added Hilfer, “Also, if the mark is a weak mark, meaning it is primarily descriptive or the marketplace is flooded with similar marks, it may be more difficult to prevent others from using the same mark.”

Business owners should also be diligent about trademark maintenance. A trademark registration is good for ten years. The U.S. Patent and Trademark Office requires that, between the fifth and sixth years, business owners submit additional evidence of continued use. Between the ninth and tenth year the business owner must file a declaration of use again and an application for renewal.

“An issue we see popping up for clients is how they are using the mark ten years later does not look like what they registered,” said attorney Tamera Bennett, “the trademark office could consider that a material change and the business owner will have to file a new application.”

Read more: http://www.smallbusiness.foxbusiness.com/legal-hr/2011/02/03/handle-trademark-violation-small-business/#ixzz1DTosf1cJ