“It’s elementary my dear Watson, Sherlock Holmes might still have copyright protection.” Not precisely the definitive answer one expects from Sherlock’s reasoning of all things – even the intricacies of copyright law.
The recent lawsuit filed against the estate of Sir Author Conan Doyle might bring out heirs of other great works created in the late 1800′s and early 20th century to see just how long copyright protection can be stretched.
The character of Sherlock Holmes first appeared in publication in 1887 and was featured in four novels and 56 short stories spanning until 1927. According to US Copyright Law, the works written and published prior to 1923 are in the public domain. That means the characters, story lines and plots are free for use. The Estate asserts the works between 1923 and 1927 are infringed by the book In the Company of Sherlock Holmes scheduled for publication by Random House. In order to head-off an infringement suit, author/editor Leslie Klinger filed a declaratory judgment action asking the Judge to find the copyright on certain works featuring Sherlock Holmes and certain elements of the stories has expired.
The Complaint filed does a great job laying out the facts regarding when certain elements were first used in the Sherlock Holmes stories and why those elements are in the public domain.
Also visit the Conan Doyle Estate website to see which Sherlock Holmes projects have been “licensed” or “authorized.”
On another interesting note, the Conan Doyle Estate Limited has been busy filing trademark applications for the brand SHERLOCK HOLMES. In 2010 the estate filed six intent to use trademark application featuring the name SHERLOCK HOLMES. Based on US Patent and Trademark office filings, none of these trademarks are currently in use by the Estate. The image above of Holmes with the Pipe is a registered trademark of the The Sherlock Holmes Memorabilia Company. According to the Conan Doyle Estate Website, the Estate is pursuing cancellation of this trademark registration.
In a much watched lawsuit, the Allman Brothers, Cheap Trick and the Youngbloods reached a settlement with the Sony record label for back payment of digital download royalties. The lawsuit has been in the forefront of the dispute between record labels and recording artists over the treatment of digital download income in respect to contracts signed back before the advent of iTunes and mp3 files.
This case was certified as a class action, so potentially the settlement terms could impact recording artists that had deals with Sony (or a predecessor) between 1976 and 2001.
Sony is not alone in facing litigation from artists that signed deals prior 2003 for the license vs sale issue. The “Eminem Case” of F.B.T. Productions, LLC v. Aftermath Records was the pioneer case in which the Ninth Circuit held a digital download should be treated as a license, entitling an artist to a 50% royalty.
As promised, here is a running list of lawsuits filed against record labels over the license vs sale royalty issue for digital downloads. Please be patient as we gather details on cases. We may have a case name listed while we are in the process of tracking down the citation.
Allman Brothers v. Sony BMG Music Entertainment, 1:2006cv03252, filed April 27, 2006, SDNY. As of 3/9/2012 The Court has preliminarily approved the Stipulation and the Settlement set forth, as being a fair, reasonable and adequate settlement as to all Class Members. A settlement in principal was reached a year earlier in March 2011.
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.
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.
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.
Elvis Presley Enterprises, LLC sued Chrysalis Music Group, Inc. in New York County Supreme Court for breach of a 2002 world-wide Music Publishing Administration Agreement.
The Complaint makes for interesting reading and lays out the history of Elvis Presley’s songwriting career. The Complaint alleges Chrysalis failed to properly license, collect and protect the song assets. There is also a claim that Chrysalis failed to properly promote the song catalog and there were “lost opportunities.”
While I find the arguments regarding lack of properly accounting, paying, and protecting the rights of the songs persuasive, I doubt a cause of action related to “lost opportunities” will fly.
The music publishing administration agreement is attached to the complaint. You can read more at The Hollywood Reporter Esq. Blog.
Estate of Bobby Fischer
As part of the materials for the 20th Annual Entertainment Law Institute held in Austin, Texas, I summarized several recent “estate” cases. The Bobby Fischer case is one that clearly falls under the category of “Failed to Plan.”
Robert James “Bobby” Fischer died in Iceland from kidney disease on January 17, 2008 at the age of 64 without even a simple will. Now the Icelandic courts are trying to determine his heirs between a Japanese woman who claims she was his wife, a Filipino woman who claims she is the mother of his only child, two estranged nephews, and the U.S Government. In August 2010 it was reported that after exhuming his body, DNA testing shows that Fischer is not the father of the Filipino child.
Estate of Darrell “Wayne” Perry
County songwriter Darrell “Wayne” Perry died in 2005 but his estate was not resolved until July 2010. Perry wrote songs including Tim McGraw’s number one country hit, “Not A Moment Too Soon.” Perry’s children sued their aunt, the executor of the estate, for wrongful death of their father in addition to mismanagement of the estate assets.
I have been unable to pull from the court records any of the court documents but provide this information to the case for reference. Estate of Darrell W. Perry, PE05-06-0659 (Butler Co. Ohio Probate Ct. decision July 26, 2010).
News reports state that Perry’s sister, Darlene Bishop, was appointed executor. This could have been via a will or the court may have made the appointment. Based on the animosity Perry’s children have openly displayed against Ms. Bishop, I am assuming there was a simple will involved that appointed Ms. Bishop the executor.
Whatever planning there was on Mr. Perry’s part pre-death, the court found the best plan was taking Mr. Perry’s songwriter royalty income and placing that in trust for his children’s benefit. Read this article from USA today for more information:Court Settles Estate of Songwriter Darren ‘Wayne’ Perry, USA Today (note the article title references Mr. Perry’s name incorrectly).
Estate of Jack Kerouac
When author Jack Kerouac died in 1968, he left everything to his mother, Gabrielle. When she died five years later, she in turn left everything via her will to Kerouac’s third wife, Stella Sampas. For the next 19 years the Sampas family controlled Kerouac’s estate.
Pursuant to a Florida court ruling in 2009, Gabrielle’s will has now been deemed a forgery. Estate of Gabriella Kerouac, 73004767ES (Pinellas Co. Probate Ct.). The Court did not declare who forged the will, just that evidence was sufficient to show Gabriella was not in good enough health to have executed the will.
Jan Kerouac, Jack’s daughter by his second marriage lead the charge to challenge Gabriella’s will 1) after seeing a copy of the will and questioning the authenticity; 2) after speaking with John Steinbeck, Jr. — who told her about copyright renewals.
Some of the copyright terminations cases gaining recent attention include:
U.S. Supreme Court declines to hear appeal of John Steinbeck estate. The Second Circuit overturned a lower court’s decision and maintained copyrights assigned to Penguin Book Group from Steinbeck’s widow. This extremely fact specific case turned on the fact that Steinbeck’s wife terminated and renegotiated Steinbeck’s 1939 agreement with Penguin. This renegotiation in 1994 “cut-off” the rights of Steinbeck’s children from his first marriage. Penguin Group (USA) v. Steinbeck, 537 F.3d 193 (2d Cir. 2008), cert. denied 2009.
A Southern District of New York judge ruled the heirs of comic artist Jack Kirby, were subject to transactional jurisdiction under a New York statute by sending copyright transfer termination notices pursuant to 17 USC 304(c). More information about the case is found here. Marvel Worldwide, Inc. v. Kirby, 2010 WL 1655253 (April 14, 2010)
Charlie Daniels’ “The Devil Went Down to Georgia,”was written in 1979, but Copyright Termination could be subject to agreements he signed with Universal Music Publishing Group pre-1978. This possible “gap” in the copyright law between Section 203 and Section 304 is under review at the Copyright Office.
Sherlock Holmes is not yet PD. Some of the early Sherlock Holmes’ works are public domain, but many are not yet. Some works were recaptured in 1981 and will remain under U.S. Copyright until 2023, although protection has long expired in the U.K.
Superman sends valid copyright termination notices. This blog post gives some great insight to what is required to send a valid notice of termination under 17 USC Section 304(c). Siegel v. Warner Bros. Entertainment, Inc., CV-04-8400-SGL (RZx), 2009 WL 2512842 (C.D. Cal. 2009).
The Estate of Michael Jackson inked what is touted as the most lucrative record deal ever providing $250 million in advances. The estate will continue to own Jackson’s master records and license them to Sony for distribution and exploitation.
The agreement does not include music publishing, merchandise, or name and likeness rights. Sony may license the tracks for uses in video games, toys, etc.
I made a series of posts at the Ask Before You Act blog here, here and here on the lawsuit filed by author of “Catcher In The Rye,” J.D. Salinger seeking damages for copyright infringement and an injunction against the writer, publisher and distributor of a sequel to “Catcher In The Rye” …. “60 Years Later: Coming Through the Rye.”
A preliminary injunction was issued in July 2009, but the case is still moving forward. The plaintiff is listed as J.D. Salinger, individual and Trustee of the J.D. Salinger Literary Trust. The work “Catcher In The Rye” was assigned by Mr. Salinger to the J.D. Salinger Literary Trust on October 24, 2008.
In accordance with Federal Rule of Civil Procedure Rule 25:
If a party dies and the claim is not extinguished, the court may order substitution of the proper party. A motion for substitution may be made by any party or by the decedent’s successor or representative. If the motion is not made within 90 days after service of a statement noting the death, the action by or against the decedent must be dismissed.
I anticipate a successor trustee was named in the Trust. It will depend on whether or not there are successor beneficiaries or if the corpus of the Trust is distributed as to who will be the proper party to move forward as the Plaintiff.
Broadway songwriting duo Richard Rodgers & Oscar Hammerstein II placed second on Forbes‘ list with $235 million in earnings. The bulk of their $235 million in combined earnings came from the sale of The Rodgers & Hammerstein Organization and the rights to music they wrote together. See my post here about the music publishing catalog purchase.
Debuting on the list in third place is musician Michael Jackson. In the four months since his untimely death, the King of Pop’s estate has brought in $90 million. A bulk of this income is related to earnings for the much anticipated “This Is It” show.
Elvis Presley placed fourth with $55 million in earnings. The Presley Estate topped the list in 2008 with earnings of $52 million.
Estate Tax attorneys are chomping-at-the-bit about the calculation of the value of Michael Jackson’s name and likeness, i.e., his right of publicity. It is possible the actual value for estate tax purposes may exceed the liquid assets of his estate. Under California law, an individual’s right of publicity is descendible and can be transferred by a contract, will or trust. If there is not a specific bequest in the will, then the interest may pass via a residuary clause (Cal. Civil Code Sec. 3344.1(b)).
If the Will of Michael Joseph Jackson that recently surfaced is valid, and there was no previous transfer of his right of publicity, then the interest transfers to the Michael Jackson Family Trust executed on March 22, 2002. If the will is not valid and the right of publicity interest passes intestate, in accordance with California Civil Code Section 3344.1(d)(2), because Michael Jackson died unmarried his interest would pass equally to his three children.
The question looms, what is the value of his right of publicity? For estate tax purposes, the goal will be to comply with the tax laws, but keep the figure as low as possible. For dealing with a third party that wants a license to use his name or likeness the goal is to maximize the right.
Additionally, the song in the Pepsi commercial is a derivative of “Billie Jean.” I cannot find confirmation regarding who owns the copyright in the music in the commercial. It is possible that Mr. Jackson was earning public performance songwriter and/or publisher royalties each time the commercial aired.
According to data from the Davie Brown Index (DBI), which uses consumer surveys to score 2,500 celebrities across various attributes, at the time of his death, Jackson’s trust among U.S. consumers was significantly lower than other iconic musicians, including Elvis Presley, Elton John, and Bruce Springsteen, whose trust scores were as much as 30 points higher than that of Jackson. Data from the DBI indicates that while Jackson is known by a remarkable 99 percent of U.S. consumers, his scores for attributes such as appeal, aspiration, breakthrough, and endorsement are notably lower.
The press release goes on to say the focus moving forward should be on Mr. Jackson’s career successes rather than any legal or personal issues he faced during his life.
Could the value for either estate tax purposes or for licensing purposes go down because of past allegations? Recent examples of personal life issues potentially lowering a celebrity’s right of publicity include American Apparel’s attempt to lower the value of Woody Allen’s name and likeness for calculating damages in a lawsuit. Additionally, Olympic Gold Medalist Michael Phelp’s perceived value went down after an unfortunate photograph surfaced.
What there is no question about is the right of publicity exists and the family/estate/trust/whoever owns the right should strongly enforce the right and guard the nature and types of licenses issued. “Fair Use” is a defense in right of publicity cases, but it is often very difficult to prove. There will be a lot of unauthorized goods floating around out there.
To some it all up, if the Lego company wants to have a Michael Jackson Lego block constructed look-a-like, they are probably okay so long as there is one or a very limited quantity because they would be protected under free speech. If they plan to mass-produce them in kits….get a license.
I asked California surrogacy lawyer Stephanie M. Caballero to provide my readers a basic understanding of the contractual process involved in surrogacy cases and the rights of the surrogates and/or donors and how this relates to Michael Jackson and his children.
In an email reply Ms. Caballero stated:
Gestational carriers in California do not have any custodial or visitation rights to any surrogate child they give birth to because the intent to parent controls in these cases and the Intended Parents, whether they used their own genetic material or a donor egg or sperm, are the only legal and natural parents of that child.
Even if Michael Jackson used a sperm donor to father his youngest child, that sperm donor is not the parent. Custody would have been relinquished in this case by a judgment of parentage signed by the judge and certified by the court, allowing Michael Jackson’s name to be listed as the only parent, since he was not married at the time.
The news varies from hour to hour whether or not Michael Jackson had a will and is it valid. Only a judge can make the decision if the will is valid and that decision will be months, even years away.
Mr. Jackson resided in Los Angeles County, California and passed away there as well. The probate of his estate, with or without a will, is proper in the Superior Court of Los Angeles.
by Tamera H. Bennett
with research assistance from Mitch Mitchell
James Brown, Jerry Garcia, and Jimi Hendrix all held very different spots in the world of music and entertainment ….. Part one of this post on James Brown is here.
Jerry Garcia
The latest suit against assets once controlled by Jerry Garcia involves the trust holding the publicity rights of musician Merl Saunders vs Jerry Garcia Estate, LLC. Click here for a link to the First Amended Complaint filed June 26, 2009 in the Northern District of California.
Merl Saunders performed hundreds of times with Garcia primarily as the “Merl & Jerry Band.” The complaint alleges there was a partnership between Merl Saunders and Jerry Garcia regarding equal name billing and a 50/50 split of profits and losses as to performances and recordings made as Merl & Jerry. There were numerous master recordings/sound recordings of the “Merl & Jerry Band” and the complaint alleges those were owned jointly.
Saunder’s trust claims the releases were never authorized, there has been no accounting for Saunder’s ownership in the sound recording copyrights or for the use of Saunder’s name and likeness in promoting the releases.
The original complaint, filed December 28, 2008, and the amended complaint, allege violations of Saunder’s right of publicity as well as unfair competition and a demand for an accounting.
The Saunders Trust may be too late on bringing some of their claims. The statute of limitations for violation of the California right of publicity statute is four years. For the release in December 2004, the trust may have missed their time to file by only a few days. The complaint alleges the plaintiffs were not aware of the release until some time after the actual release date.
The Lanham Act does not set out a specific statute of limitations for a False Endorsement/Unfair Competition claims, but relies upon a theory of laches to determine the applicable statute and such laches time frame is usually taken from the analogous state law. There is a four year statute of limitations for state law unfair competition claims in California, and a discovery rule/tolling period does not always apply.
As to the accounting between co-owners of a copyright, the claim can be brought at any time, but some courts have limited the recovery to a look back of three years from the time the lawsuit was filed.
An additional defense to the claims of breach of right of publicity and unfair competition is simply that inherent with the rights as co-owner of a copyright, when the copyright, ie, the sound recordings are released, the co-owner may include attribution to the joint owner. I believe the Plaintiffs could have won on a right of publicity and/or unfair competition claim had Mr. Saunders not been listed, but that they will be unlikely to recover anything more than an accounting between co-owners of a copyright in the case at hand.
UPDATED 2:45 pm July 1, 2009: Michael Jackson’s last will and testament is circulating on the web and was allegedly filed with the Los Angeles Superior Court today. Click here for a copy of the Will. Click here for a nice summary from The Hollywood Reporter Esq. Blog.
UPDATED 12:00 pm, June 30, 2009:Click here to review the Petition for Letters of Special Administration filed on June 29, 2009 by Mrs. Katherine Jackson to serve as Temporary administrator of Michael Jackson’s estate.
The Wall Street Journal reported today that the “2002 Will” may be filed with the Superior Court in Los Angeles as early as Thursday this week.
UPDATED 3:15 pm, June 29, 2009: Yahoo and CNN are reporting Mrs. Katherine Jackson, the mother of Michael Jackson, has filed in the Los Angeles Superior Court to serve as the administrator of Jackson’s Estate. Ms. Jackson also alleges Michael Jackson died without a valid will.
Let the will contests begin…..
PRIOR POST: Billboard reported over the weekend here and here that Michael Jackson did have a written will. Supposedly the last will and testament was executed in 2002 after the birth of his third child. There may be codicils (amendments to the will) or a completely new will that was created later than 2002, but all of this is speculation.
As I blogged here last week, there could always be challenges to the estate planning documents such as the will or any trusts that were in place at Michael Jackson’s death.
FORBES Magazine released
e Michael Jackson died unmarried his interest would pass equally to his three children.
