The Basics of Counseling Entertainment Clients

 

From Entertainment Law for the General Practitioner, Chapter 12

 

Now that you know how the entertainment business generally works, what can you expect from potential clients? The scenarios that an entertainment client may bring to you are endless, but each area has subjects that almost every new client consultation will touch on. While this treatment is certainly not exhaustive, it will give you the ability to spot basic issues and counsel your client accordingly.

 

Copyright/Trademark

 

Can a copyrighted work of authorship also serve as a trademark and vice versa?

Yes. One of the best-known examples of this is the cartoon character Mickey Mouse, which was copyrighted in 1928 by the Walt Disney Company. Besides starring in animated Disney features, short films, and comic books, Mickey Mouse is also a registered trademark for the Walt Disney Company’s theme parks and Disney World, as well as overseas theme parks. Therefore, you should be aware of the potential dual nature of copyrighted materials that are also capable of serving as a device used to identify goods and services and distinguish them from others.

 

Are the titles of movies, television series, or songs copyrightable?

No. Copyright protection subsists in original works of authorship fixed in any tangible medium of expression now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a device. However, the regulations of the Copyright Office make it clear that words and short phrases such as names, titles, and slogans are not copyrightable. This means that a major motion picture, episodes of a television series, or a standard musical composition are fully protected by copyright, but the titles are not. Titles, phrases, and slogans can be protected by the law of trademark and unfair competition.

 

Do I need a patent, trademark, or copyright?

Essentially, a patent protects an idea, a copyright protects a creation, and a trademark protects goodwill. This means that you would patent an invention; copyright a book, piece of music, or work of art; and trademark a corporate slogan or logo.

 

Someone who sells products similar to mine has a registered trademark for a name I want to use, but it’s spelled differently. Can I register my mark?

Probably not. While many considerations go into the registration of a trademark, a different spelling of a word is not typically sufficient to distinguish one mark from another. The analysis is one of sight, sound, and meaning. This means that if the words sound the same, there is still a likelihood of confusion even if they look different.

 

Music

 

Why do I need to be a member of a royalty collection organization?

Performance royalties are a substantial form of revenue for a songwriter who writes popular music. Radio play and performances on jukeboxes, at restaurants, and in other venues generate performance royalties that are collected by royalty performance organizations. In order to collect those performance royalties, a songwriter must be affiliated with one of the organizations. A songwriter who is not affiliated with one will not collect royalties. It should also be noted that payment of royalties is not retroactive once a songwriter becomes a member. Royalties missed out on before signing up can never be recovered.

 

Should songwriters always retain the publishing rights to their songs?

Whenever possible, songwriters should hold on to the publishing rights to their compositions. If it becomes necessary to relinquish those rights in negotiating a deal, release them slowly. Start with a “no,” then retreat to 25 percent, begrudgingly concede 50 percent, and threaten to walk away from the deal beyond that. If the offer is lucrative in terms of money or association with an artist or company that can jump-start a career, then giving up the publishing rights might be appropriate. However, fight first.

 

Do I need a manager?

It depends. Many artists do fine without a manager because they have the time, temperament, and skills to handle the dual role of artist and manager. However, many artists don’t possess the ability to adequately perform the job. One of the factors influencing the decision to hire a manager is the number and type of engagement offers the artist is receiving on an annual basis. If offers for recording commitments and television, movie, and performance appearances are pouring in, the services of a manager are most likely needed. Even if the opposite is true and no work is coming in, the artist may need a manager with the ability and contacts to help get the artist’s career on track. Each situation must be analyzed carefully in order for the artist client to make an intelligent career decision.

 

How long should I sign with a manager?

Always keep the duration of any type of management agreement as short as possible. Stay flexible so that when a change in circumstances favors the artist, you have the ability to negotiate a better deal for your artist client.

 

Touring

 

If a performance contract requires payment prior to a performance, but the promoter asks to pay after the performance, should the artist agree?

Be very cautious. Although this might be acceptable in some situations, such as when the artist and the promoter have a history together, most of the time the artist should demand payment before the performance. There are, of course, many honest promoters who will pay in good faith. Unfortunately, however, there are many who will ask the artist to perform and then promise to put the check “in the mail.” Likewise, often a promoter will intend to pay, but if the performance does not generate the hoped-for revenue, the promoter may renege on the promise in order to meet other obligations. However, keep in mind that the public is unaware of what is going on behind the scenes and will blame the artist for failure to perform, rather than the promoter. These factors must be weighed carefully.

 

How should an artist decide whether to sign with a booking agency?

Research the agency first. Check out its roster of clients and request any promotional materials it may have. Interview the agency to get an idea of the number and types of bookings planned for your client.

 

Should an artist allow videotaping and photographs during a performance?

New technology has put a digital-quality camera and video recorder in the hands of everyone who owns a cell phone. Therefore, regulation in this area is very difficult. However, it is in the artist’s best interest to prohibit photographs and video. The sale of pirated photos and videos cuts into your client’s revenue and may dilute the artist’s brand by allowing inferior-quality products to compete with the artist’s product in the marketplace. However, there can be some benefits to allowing recordings at concerts. Up-and-coming artists can sometimes benefit from the publicity and exposure that online posts of videotaped performances can bring.

 

Film and Television

 

Do I need to license all music that appears in my film?

Yes. Unless your client composed and recorded the music that appears in the film, the client will need to obtain licenses from both the publisher that holds the copyright to the song and the artist or label that holds the copyright to the master recording.

 

Do I need to copyright my screenplay?

Yes. Even if your client’s screenplay is an adaptation of another work, such as a book, the screenplay is a separate creation that should have a separate copyright. However, be sure that, if your client has adapted another work, permission is obtained from the owner of the copyright of the original work to prepare a derivative work.

 

Do I need permission to use locations in my film?

Yes. A client who plans to film at a location should have a contract with the owner of the location. Keep in mind that, for any items on location that are not owned by the owner of the location (such as artwork or items with visible trademarks), your client will need separate permissions to include those items in the film as well.

 

My production company is nonunion, and it is shooting an independent production in a right-to-work state. Do I have to abide by union rules anyway?

Writers, directors, and actors each have separate unions that govern their work. Even if your client is a nonunion production company working in a right-to-work state, if any of the cast or crew are union members, your client will have to abide by union rules in order to employ them. The production company should ask each person it engages whether that person is union and, depending on what part the person plays, your client would contact the union to which the person belongs to find out its rules.

 

Books

 

When should I copyright my manuscript?

Your client should copyright a manuscript when it is complete. If the author brings you a manuscript that still needs major revisions, then copyright registration should wait until all of the revisions are done. Sometimes revisions involve the addition or deletion of entire chapters, which means that the material may change substantially. If your client intends to self-publish, then the copyright registration should wait until you have a printed copy of the book. The idea is that you need to submit the best edition, which means it should be as finished as possible when you register.

 

How long does it take to hear back from a publisher once I submit? Should I call to check on progress?

Different publishers have different time frames. Some will respond within a few weeks and others may take in excess of a year. Some will respond only if they are interested and some will send a form rejection if they decide to decline the manuscript. Regardless of the publisher’s response policy, it is seldom appropriate to call the publisher to request a status report. If you have a good relationship with a particular editor, you will know what the typical response time is, and you may check in if it is beyond the norm. However, publishers typically frown on requests for updates, and pushing a publisher for a response will generally result in a “no.”

 

Can you submit my manuscript to more than one publisher at a time?

Some publishers will not accept so-called “multiple submissions” and will review a manuscript only if they are given the exclusive right to consider it. Other publishers are open to considering a manuscript that is being considered by other publishers. Check submission guidelines for each publisher for details. If the submission guidelines are silent, that typically means that multiple submissions are allowed. However, if you make a deal with a publisher while another publisher is considering the manuscript, you should notify the second publisher that the manuscript is no longer available.

 

What budget items should I consider when budgeting for my self-published project?

Budget items for a self-published manuscript typically fall into three categories: production, marketing, and business. Production costs will include editorial and proofreading services, graphic design for the cover and internal layout, and printing (and associated shipping costs and taxes). Marketing costs will include web design, the services of a publicist, travel costs associated with book signings, costs associated with a release party, if one is planned, and any costs for other advertising. Business costs will include costs associated with shipping to bookstores, accounting (invoicing, collections, and tracking expenses and income), and legal expenses (consignment agreements with bookstores, copyrights, and so on).

 

Internet

 

What is Sound Exchange?

Sound Exchange is a royalty collection organization, much like ASCAP, BMI, and SESAC. However, Sound Exchange collects digital performance royalties for artists and record labels, rather than performance royalties for songwriters and publishers. That means Sound Exchange is responsible for collecting royalties that accrue from the digital performance of music online, and those royalties are payable only to recording artists and record labels. ASCAP, BMI, and SESAC pay the songwriters and publishers for performances that occur online.

 

Sound Exchange is unique to digital transmissions—record labels and recording artists are not entitled to performance royalties if the performance is not digital. What this means is that songwriters and publishers collect royalties for performances regardless of whether they occur online, via satellite, via radio, live, or in any other manner. However, record labels and recording artists can collect for performances only if the method of transmission is digital. They receive no royalties for nondigital performances.

 

If someone else has a domain name that contains my trademark, can I force that person to turn it over to me?

Not necessarily. Federal law prohibits “cyberpiracy,” which is the bad-faith use of a domain name containing a third-party mark that is entitled to protection. However, whether the domain name registrant is acting in bad faith in registering and using a domain name that contains a third-party trademark depends on a number of factors. An important factor is whether there is bona fide noncommercial use or fair use of the mark. Another factor that must be reviewed is whether there is intent to divert users from the mark owner’s site to another site that could harm the mark owner’s goodwill and create confusion. You would also need to look at whether the domain name consists of the user’s name, whether the registrant ever actually uses the name, as opposed to attempting to sell it to the mark owner for a profit without ever using it, and other factors set forth in the Lanham Act. Therefore, registering a name that contains someone else’s trademark is not a sufficient reason to force the registrant to disgorge the domain name. There must be bad faith.

 

Royalties

 

I was involved in a very successful project and I never received any royalties. What do I do?

There may be many reasons why a client has not received any royalties. A thorough investigation is necessary to determine the exact nature of the client’s rights and whether those rights were transferred or waived by any contract. This should be followed by an accounting before any legal action is taken.

 

My spouse, who is now deceased, used to receive royalty checks, but I haven’t gotten one since he passed away. What do I do?

Ownership rights in a copyright last beyond the death of the author. Publicity rights may or may not last depending on the relevant state’s law. All of these rights may be modified by a license agreement. The entity issuing the royalty payments should be contacted to determine the problem. The royalties may have terminated. The royalties may also be accruing and the issuing entity no longer knows where to send them. The issuing entity will likely require proof that the spouse now has legal title to the rights via a court order or other assignment document.

 

I have a small company that produces entertainment content, but I am an artist and not much of a businessperson. I’ve put out a lot of content, but I haven’t obtained licenses and I’m not really sure whom to pay. What do I do?

Begin by properly licensing all new content going forward and encouraging the client to make future payments based on the schedule in the license agreements. Then determine the applicable statute of limitations in the client’s jurisdiction. Examine the client’s catalog to determine which pieces of content are currently selling or were sold during the statute of limitations period and engage an expert to perform an accounting to determine potential liability for each piece of content. Then negotiate appropriate licenses for each piece of content and obtain waivers for past use by using the potential liability amount as a gauge for making settlement offers.

 

I’m trying to obtain a license to make a cover of a popular song, but I can’t get in touch with the publisher. I know that the publisher can’t refuse to let me record it. How do I protect myself under the law and what do I do with the royalties?

A notice of intention to obtain a compulsory license must be sent to the publisher either before or within 30 days of creating the recording and before any distribution. If the publisher cannot be determined, a notice of intention should be filed with the copyright office. Statutory royalties should be paid to the copyright owner monthly, if the owner’s identity can be determined. For further information, consult 17 U.S.C. 115. While strict compliance is technically required to avoid copyright infringement claims, industry practice is somewhat relaxed. Most publishers will overlook technical timing violations, and even late license requests, so long as proper statutory royalties are remitted to them.

 

International Issues

 

How can I best communicate with someone in a foreign country?

One way to make a huge impact is to print business cards in two languages. If you’ve identified opportunities for your client in Brazil, for instance, one side of your business cards should be printed in Portuguese. This particularly applies in reactive countries, such as Asian countries.

 

Should contracts with people working abroad be written in English?

You should make every effort to have the contracts written in English. However, some countries will not enforce a contract unless it is in that country’s language. Therefore, you should take care to understand any language requirements of a particular country and, at the very least, have the contract written in both English and the country’s native language.

 

If the contract is in English, be aware of small nuances that can make huge differences. For instance, some countries use a decimal instead of comma when identifying dollar amounts. It is very easy to mistake the amount of money involved if a comma is put in the wrong place. The same can apply to dates, which are written in a different format in some countries.

 

What is the easiest way to collect payment for overseas transactions?

It is essential to include transfer fees in international contracts. International transactions typically happen through wire transfers, and wire transfers have fees attached. These fees may be minimal or substantial, so it’s important to establish who will be absorbing this cost on the front end.

 

Are international gigs for musicians financially beneficial?

Not usually. If your client is solely focused on an individual offer to play a festival or single gig, chances are, financially, it will be a loss. However, a string of gigs can be potentially rewarding. In order to offset costs, it is important to obtain tour support. Tour support can come from a variety of sources, from tour sponsors and endorsement opportunities to having equipment provided by a particular sound brand.

 

Which are the fastest-growing international entertainment cultures?

The entertainment environment changes every year, but currently new markets are exploding for music and movies. The Unided Kingdom, Germany, Australia, and South Africa are steadily developing sustainable music cultures. Popular film markets follow rebate and incentive trends. , for example, has a successful movie production culture because of the rebate incentives offered by the Canadian film commission and government. In the United States, incentives vary from state to state.

Entertainment Law for the General Practitioner book jacket

 

Entertainment Law for the General Practitioner

Did you find this article helpful? Do you think more information like this would help you? More information is available. This material is excerpted from Entertainment Law for the General Practitioner, 2011, by X.M. Frascogna, Jr., Shawnassey B. Howell, and H. Lee Hetherington, published by the American Bar Association General Practice, Solo and Small Firm Division and the Forum on the Entertainment and Sports Industries. Copyright © 2011 by the American Bar Association. Reprinted with permission. All rights reserved. This information or any or portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association. GP/Solo members can purchase this book at a discount.

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