COLLABORATION AGREEMENTS FOR AUTHORS AND FILM/TV WRITERS: WHAT THEY MEAN AND HOW THEY WORK

            Under the US copyright law, although ideas alone are not protectable, an author or creator owns a copyright in his or her work the moment the author’s expression of the idea is 'fixed in a tangible medium' (i.e., when the expression of an idea is written down or recorded in some manner). Once created, a copyright extends for the life of the author plus 70 years, and in the case of collaborators on a copyright it extends for the life of the last surviving collaborator plus 70 years.

            This article will focus on the collaboration between and among creators of books, stories, theatrical plays and television shows. The essence of collaboration is working together to create a single work regardless of how or what each party contributes. Collaborators may work together in the same room at the same time, or not. The creative contribution of each co-author may be equal in quality or quantity, or not. Both authors may work together on the total work, or each might write separate chapters or scenes (or with a book or audio/visual production one might write words or dialogue while the other is an artist doing graphics and illustrations, etc.)  The long history of collaboration has shown that there are endless combinations. Co-authors do not need to have a written agreement concerning their joint work, but it is probably a good idea to do so given the myriad issues that can arise and become a problem under such circumstances.

            Co-authors can divide copyright ownership in whatever proportion they determine and that ownership concerns both rights (ownership and control) and revenues (income generated from the work). In the absence of a written agreement, under current case law concerning both copyright and partnership law, two or more collaborators are generally deemed to share equally on a pro-rata basis. This might be so even if it is clear that the contributions of the authors were not equal since the Courts generally prefer not to make decisions about the value of each author’s contribution to a copyright and simply divide it by the number of authors (and we probably prefer that Courts not be making decisions about whether the writing in one scene or a particular chapter has more or less value than that of another, etc.). Therefore, without a written agreement two authors would be deemed to own the song fifty-fifty, three writers one-third each, etc.

            Beyond the issue of just dividing the income, there arises the issue of copyright ownership and control. In the absence of a written collaboration agreement or other contract stating otherwise, each author retains control over its respective share of the copyright. In this way each writer retains some control over what happens with the work, the scope of any uses, contracts or licenses and how much is charged. Under US copyright law, co-authorship is akin to partnership and each joint copyright owner can exploit the work and also grant non-exclusive licenses to third parties, subject to the duty to account to the co-authors for any money that is generated.

            Another important question that can arise is what happens if two or more authors start to collaborate on a work and then one leaves before the work is completed. This can raise complex legal issues concerning whether the contribution of the departing author is copyrightable and whether the parties had a clear intent to work together to create an indivisible copyrighted work. There have been cases that have addressed this situation with differing outcomes depending on different circumstances. In one case, one party had the idea for the play and engaged another party to do more of the actual writing. There was no written agreement, and the parties had a dispute about the direction of the project. The idea party departed and the writing party continued on to complete and produce the work. Later, the departing party sued claiming authorship and co-ownership of the copyright in the work.  In this particular case, the Court determined that, since ideas alone are not protectable under copyright law, only the expression of the idea was subject to copyright, therefore, only the writing party had ownership. The departing party had proposed the original idea for the project and had made suggestions along the way but the contributions were insufficient to create copyrightable material. Therefore, since there was no written agreement to indicate otherwise, the Court determined that only the writing party had an ownership interest in the copyright to the work that the parties had started together. 

            All of these issues can be addressed in a written collaboration agreement. There are endless variations depending on the circumstances. A collaboration agreement can be as simple as a pie chart drawing made on a napkin at the dinner after the writing session, or as complicated as a writer’s publishing company or TV/film production company dictates that it be.

            At the end of the day, if you believe in yourself and your talents, give yourself the benefit of the doubt and invest in good legal representation - all the successful creators do. Your lawyer can create a fair collaboration agreement for you to use or 'translate' the documentation presented to you and explain its terms and then help negotiate more favorable terms for you as appropriate. My advice: never sign anything - other than an autograph - without having your lawyer review it first.

Wallace Collins is an entertainment lawyer and intellectual property attorney. He was a songwriter and recording artist for Epic Records before receiving  his law degree from Fordham Law School. T: (212) 661-3656; wallacecollins@gmail.com; www.wallacecollins.com 

URGENT NOTICE: Department Of Justice Deals Devastating Blow to America's Songwriters

The NMPA and other songwriter and music publisher organizations have come out strongly against the recent decision by the Department of Justice ("DOJ") which dealt a massive blow to America’s songwriters. After a two year review of the consent decrees that govern ASCAP and BMI, career lawyers who were never elected nor confirmed to their positions, led by a lawyer who previously worked with Google, determined that songwriters should have even fewer rights, less control over their intellectual property and be treated more unfairly than they already are being treated. The DOJ ignored the voices of copyright experts, members of Congress and thousands of songwriters and delivered a huge gift to tech companies who already benefit from egregiously low rates.

When the DOJ began its review of the consent decrees, songwriters and publishers hoped for updated modifications and relief in the face of dramatic market changes to performance rights licensing which made it clear that fair royalty rates were not being paid. At best, the songwriting community had hoped that the WWII-era decrees would be done away with to permit songwriters the same freedom to license works as other property owners enjoy in America. At worst, the decrees would be updated to reflect the current digital marketplace and give songwriters and publishers more flexibility to negotiate market-driven rates with global digital services. The existing consent decrees were put in place before the transistor radio was invented. They were never meant to, nor could they envision, existing in a world of iPhones, streaming and instant access to practically all music. Unfortunately, the DOJ went in the opposite direction and chose the outcome most harmful to songwriters and the creative community.

Not only did the DOJ decide that no changes will be made to the current decrees, they also now interpret those decrees to demand that all works must be licensed on a 100 percent basis (which means that the traditional and logical practice of fractional licensing - or licensing only the share of a song a PRO represents - by ASCAP and BMI will be done away with completely).

As the NMPA's David Israelite pointed out, regardless of how one feels about the profession of songwriting and the innate right a creator has to control their creation, any legal body should be deferential to the office created to examine and advise on copyright law. That body, the U.S. Copyright Office, was asked to weigh in on the DOJ’s proposed changes, and said that, “an interpretation of the consent decrees that would require these PROs to engage in 100-percent licensing presents a host of legal and policy concerns. Such an approach would seemingly vitiate important principles of copyright law, interfere with creative collaborations among songwriters, negate private contracts, and impermissibly expand the reach of the consent decrees.” The defiance displayed by these career antitrust lawyers in ignoring the legal opinion of the Register of Copyright is shocking.

In addition to disregarding the Copyright Office, the manner in which the decision was made and delivered was insulting to those most invested in the futures of songwriters. Members of Congress who had expressed interest in knowing the outcome of the review were apparently caught off guard and not given any chance to appeal to the DOJ - they were simply alerted that a determination had been made and given no recourse to reason with the DOJ.

Congressman Doug Collins of Georgia’s office said that the DOJ “sent an email to Congressional staff assuring that the review was not complete and that parties and stakeholders would have a chance to provide their views before the review was completed. However, reports from the meeting and DOJ’s own positioning appear to indicate that DOJ has already determined what direction they will take.” Additionally, Congressman Collins stated that the “Department of Justice’s position is arrogance at its worst.”

This move also threatens transparency because while songwriters may have chosen to join one PRO, now their payments may be coming from another. And if each PRO can license an entire song, even if it only controls a small portion of it, then licensees may have the ability to license where rates are lowest in a royalty race-to-the-bottom.

The DOJ does not have the protection of songwriters in their interest so the songwriting community needs to speak out loud and strong.  Public opinion is powerful and the antitrust attorneys at DOJ must understand that their decisions will have a ripple effect through the fields of creativity for decades. In the coming weeks and months, it will be more important than ever to express the problems associated with the DOJ’s declaration, which was conveniently disclosed just before the holiday weekend.

Washington bureaucrats should not be in the business of regulating music as they are neither capable of understanding nor fixing the problems they have created. Hopefully, the creative community's allies in Congress will work together with those most affected, the creators themselves, to navigate a workable path forward. Until then, there will be no justice for America’s songwriters.


Wallace Collins is an entertainment lawyer and intellectual property attorney. He was a recording artist for Epic Records before receiving   his law degree from Fordham Law School. T: (212) 661-3656; www.wallacecollins.com

BEWARE: Recent Decision in CBS Lawsuit Over Pre-1972 Sound Recording Could Wreak Havoc In The Copyright World

The recording artist and songwriter communities should take note of a recent decision in ABS Entertainment, Inc. v. CBS Corporation, et al., a case concerning pre-1972 copyrights - and raise an outcry! The Judge in this case held that remastered versions of old songs are entitled to a new copyright and owners of the originals are not allowed to stop the public performance of them.

Over the past few years, the public performance of songs authored before sound recordings fell under Federal copyright law has become a contentious legal issue. This ABS v. CBS ruling could help immunize terrestrial radio operators and others from lawsuits and disturb many preconceived notions about copyright law. The case arose from a dispute between ABS, owner of recordings by Al Green and others, and CBS Radio, which was dragged into court in this case after other plaintiffs had been successful litigating the theory that pre-1972 songs are protected under State law and could not be broadcast without permission. The ABS lawsuit cut against decades of precedent that songs on the radio served promotional purposes and should not generate compensation for owners. As times have changed, with sales becoming less meaningful to artists, owners have pushed lawsuits and lobbying efforts to shake up the system.

As its defense to the ABS lawsuit, CBS argued that it was not broadcasting the original analog recordings but rather remastered versions that came out after 1972. Under this specious argument, the specifically performed works would not be protected by State law and CBS would not have to pay anything. ABS argued that what sound engineers accomplish by tweaking timbre, balance and loudness is "mechanical" and not sufficiently original to be entitled to copyright protection. ABS further argued that to accept otherwise would mean owners of sound recordings would enjoy perpetual copyright over works.

Incredibly, the Judge accepted the position of CBS. On the issue of originality, the Judge gave credence to the CBS expert, an acoustic engineer and research scientist specializing in forensic investigation of audio evidence, and held that the plaintiffs' pre-1972 sound recordings "have undergone sufficient changes during the remastering process to qualify for federal copyright protection," adding that ABS did not offer sufficient evidence to even make this a contestable point for a jury to decide.  As a specific example, the Judge referred to the remastered version of Ace Cannon's 1961 recording "Tuff," which the expert found had additional reverberation, was played in a different musical key and at a faster tempo. The Judge accepted the proposition that these were not merely “mechanical changes or processes ... such as a change in format, de-clicking and noise reduction,” nor were the changes “trivial,” making note of the fact that experienced sound engineers were brought in for a reason. "Instead, the changes reflect 'multiple kinds of creative authorship, such as adjustments of equalization, sound editing and channel assignment,'” he writes. ABS also tried to argue that sound recordings authored before 1972 cannot serve as a "pre-existing work" for a later derivative work, but the Judge found that argument to be unpersuasive. And so, for now, based on this decision, the remastered versions are independently copyrightable.

The holding in this case determined that for some of the recordings in dispute, such as Green's "Let's Stay Together" and Jackie Wilson's "I'm Coming on Back to You": there is no disagreement that the version publicly performed is different from the pre-1972 versions; that for other songs there is no genuine dispute that CBS is performing the post-1972 versions; and that for the remaining songs ABS failed to offer up sufficient evidence that CBS is performing pre-1972 versions. It all adds up to huge victory for CBS as well as roadmap for how radio can publicly perform older sound recordings without liability... and it is a horrific, although hopefully temporary, decision for the recording  artist community.

Hopefully, this decision will be overturned on appeal so as not to wreak havoc on issues of copyright term, termination rights and its singular determination that sound engineers do copyrightable work when they remaster sound recordings.

* Wallace Collins is an entertainment lawyer and intellectual property attorney. He was a songwriter and recording artist for Epic Records before receiving his law degree from Fordham Law School. T: (212) 661-3656; www.wallacecollins.com 

SONGWRITER COLLABORATION AND CO-WRITER AGREEMENTS: WHAT THEY MEAN AND HOW THEY WORK

            Under the US copyright law, an author or creator owns a copyright in his or her work the moment it is “fixed in a tangible medium” (i.e., the moment the expression of an idea is written down or recorded in some manner). When it comes to the recorded music business there are two primary copyrights of interest: one in the musical composition or song; another in the sound recording of that song. A copyright extends for the life of an author plus 70 years, and in the case of collaborators on a copyright it extends for the life of the last surviving collaborator plus 70 years.

            This article will focus on the collaboration between and among the co-writers of the musical composition or song which is generally comprised of the music (e.g., melody, harmony, chords, rhythm, etc.) and the lyrics (i.e., the words). The essence of collaboration is working together to create a single work regardless of how or what each party contributes. Collaborators may work together in the same room at the same time, or not. The creative contribution of each co-author may be equal in quality or quantity, or not. Both authors may work together on the music and lyrics or one might write just music and the other lyrics. The long history of collaboration has shown that there are endless combinations. Co-authors do not need to have a written agreement concerning their joint work, but it is probably a good idea to do so given the myriad issues that can arise and become a problem under such circumstances.

            Co-writers can divide copyright ownership in whatever proportion they determine, and that ownership concerns both rights (ownership and control) and revenues (income generated). In the absence of a written agreement, under current case law concerning both copyright and partnership law two or more collaborators are generally deemed to share equally on a pro rata basis. This might be so even if it is clear that the contributions of the authors were not equal since the Courts generally prefer not to make decisions about the value of each author’s contribution to a copyright and simply divide it by the number of authors (and we probably prefer that Courts not be making decisions about whether the hook or chorus lyric has more or less value than the chorus melody, etc.). Therefore, without a written agreement two songwriters would be deemed to own the song fifty-fifty, three songwriters one-third each, etc. A typical music business guideline for dividing ownership has been to designate the music as 50% and the lyric 50% of the song copyright. Under this scenario, if one person creates the music and two others write the lyrics, they may agree to divide the ownership 50% to the music creator and 25% to each of the lyricists. However, this concept does not have any legal significance so if there is no written collaboration agreement then under this scenario each author would own 1/3^rd of the song copyright.

            Beyond the issue of just dividing the income there arises the issue of copyright ownership and control (sometimes referred to as the administration right). Many songwriters prefer that there be separate administration among the various writers and their respective publishing companies, if any. In other words, each author retains control over its respective share of the copyright. In this way each writer retains some control over what happens with the song, the scope of the licenses and how much is charged. Under US copyright law, each joint copyright owner can exploit the song and also grant non-exclusive licenses to third parties subject to the duty to account to the co-writers for any money that is generated. Each writer could also transfer some or all of their respective share of the copyright (e.g., to a publishing company) without affecting the ownership interests of the any other co-writer’s share in the copyright (although no one writer can grant an exclusive license nor transfer copyright ownership in the entire song without the written permission of each co-writer).

            All of these issues can be addressed in a written collaboration agreement. There are endless variations depending on the circumstances. Each author may retain his or her share of revenues and ownership but grant the administration rights to one party (e.g., the artist/co-writer and/or its label) so that the artist would have the right to record and exploit the song and grant third party licenses. Particularly in the world of synchronization licenses (i.e., using the audio with visual images such as in film, television or video games), it is usually more convenient for one party to have the right to grant licenses and to collect and divide all the income. Licensing can become complicated when a licensee has to seek the approval of, and document permission from, multiple writers and their respective publishers. However, each different scenario and the co-writers involved will need to determine and negotiate what arrangement works best for themselves in that particular situation.

            A collaboration agreement can be as simple as a pie chart drawing made on a napkin at the dinner after the writing session or as complicated as a writer’s publishing company dictates that it be. Over the years there have been many stories of writers agreeing, however reluctantly, to acknowledge a “co-writer” who did not even make a contribution to a song (e.g., featured artists, producers, record executives, band members, etc.). The exact contribution to a song is always a somewhat subjective measurement and if the price of getting a song on the record of a multi-platinum artist is to share writing credit then this pressure can be difficult, if not impossible, to resist. However, keep in mind that once a “co-writer” is acknowledged in writing it can be very difficult to undo. Most successful songwriters rarely, if ever, share credit in this context and every writer should try to follow this practice.

            At the end of the day, if you believe in yourself and your talents, give yourself the benefit of the doubt and invest in good legal representation - all the successful songwriters do. Your lawyer can create a fair collaboration agreement for you to use or "translate" the documentation presented to you and explain its terms and then help negotiate more favorable terms for you as appropriate. My advice: never sign anything - other than an autograph - without having your entertainment lawyer review it first.

            Wallace Collins is an entertainment lawyer and intellectual property attorney. He was a songwriter and recording artist for Epic Records before receiving his law degree from Fordham Law School. T: (212) 661-3656; www.wallacecollins.com

UNDERSTANDING THE OPTION AGREEMENT FOR YOUR SCREENPLAY

Many writers dream that someday their story or script will garner interest from someone who wants to develop it into a feature film or TV project. Usually, the first step is taken when that someone, maybe a producer or a production company or even a movie studio, offers the writer a contract known as an option agreement. As with all such matters where art meets commerce, I always advise that if you are asked to sign anything – other than an autograph – you should have your lawyer review it first. Every writer should have a literary agent and a lawyer advising them about their business dealings once they get to this stage of the process where artistic creation spills over into the business world.

An option agreement at its most basic is a contract whereby the writer grants someone, for a period of time and for a payment, the right to make a film of the writer's screenplay. The three main material issues that usually arise in negotiating such a deal are the length of the option period, the amount of the option payment and the purchase price if the project comes to fruition. How each of these issues will be resolved will vary depending on the negotiating leverage of the respective parties (i.e., whether the writer is a beginner or has had prior success in the industry and whether the producer is an experienced player or just a fledgling production company trying to get traction).

An option agreement will designate an 'option period' or length of time granted to a producer or studio to commence production of the project. It can range from 6 months to 2 years, or longer, depending on the negotiations. Such agreements frequently include additional periods of time for the producer to extend the length of the agreement in consideration of additional payments to the writer.

The option agreement will also set forth an 'option payment', which is the amount to be paid to the writer as consideration for allowing the producer the privilege of utilizing the writer’s screenplay for development purposes. Again, depending on the negotiating strength of each side, this could range from a very small amount (e.g., a few hundred dollars or even one dollar) to a larger payment (tens of thousands of dollars). Then, if the other party wants to extend the option period for an additional length of time there should be additional payments to the writer. In most cases, these additional payments will be negotiated to be substantial even if the first payment is small. The amount of the option payments will vary depending on the negotiation process and other factors such as the writer's track record in the industry and the potential budget of the film or TV project. Some industry experts have said that as a rule of thumb option payments are frequently equivalent to 10% of the purchase price, but these amounts are always negotiable and writers need to be careful not to allow themselves to be taken advantage of in the rush of excitement that surrounds interest in their screenplay.

Another material term in an option agreement is the 'purchase price' which is the amount of money that the writer will receive in the event the screenplay is made into a feature film or TV project. The purchase price is often calculated on a sliding scale as a percentage of the budget, so as the budget of the film project grows, so will the purchase price, although as with all negotiated terms this too can vary greatly. 

When properly negotiated, an option agreement can be a win-win situation for both the writer and the producer. The writer is paid to lease his or her screenplays for a limited period of time, while the producer attempts to get the project green-lighted by a studio or production company. If this happens, the writer will receive a nice purchase price for his screenplay. If it does not happen during the option period, then the writer keeps the option payment or payments paid to date and all rights to the screenplay revert back to the writer. The writer could then decide to option the script again to another producer. From the producer's perspective, an option agreement gives the producer an opportunity to hold on to a screenplay exclusively for a period of time without having to lay out a lot of money up front while trying to get the project off the ground.

Wallace Collins is an entertainment and intellectual property lawyer. He was a recording artist for Epic Records before receiving his law degree from Fordham Law School. Tel: (212) 661-3656; www.wallacecollins.com 

UNDERSTANDING TRADEMARKS: WHAT IS A TRADEMARK? AND WHAT ARE TRADEMARK RIGHTS?

A trademark is a name, slogan or logo which identifies someone's goods or services and indicates source or quality. The purpose of a trademark is to identify and distinguish one person's products or services from those of another. A trademark functions as a symbol of quality and goodwill. Trademark rights accrue to the owner of a mark based on the "use" of a mark and these rights vest in the first user of a mark when the mark is used in connection with the trademark owner's goods or services. In other words, you own rights in your trademark from the moment you start using it to identify your products or services  These rights are applicable in the music business to the names used by rock groups, DJs, and rappers as well as by management, production and record companies.

Just how protectable your trademark is varies depending on whether it is deemed to be: 1) arbitrary and fanciful (the most protectable category); 2) suggestive; 3) descriptive (which is only protectable if "secondary meaning" can be established); or 4) generic (which is given little or no protection). In simple terms, the more unique your name is the more easily protection is available for it as a trademark. That is one reason that some of the strongest trademarks are words that were invented just for the purpose so that they fall into the first "arbitrary and fanciful" category. Such invented names include "Nike", "Rolex", "Exxon", and "Microsoft". When it comes to rock bands, names such as "Smashing Pumpkins", "Foo Fighters" and "Brooklyn Funk Essentials" would obviously fall into this distinctive arbitrary and fanciful category.

The first person to use a trademark has superior rights over a subsequent user of a similar trademark. The criterion for determining infringement of a trademark is the "likelihood of confusion" test. Under the Lanham Act (which is U.S. Federal Law governing trademarks), use of a trademark likely to cause confusion, mistake or deception by the public is prohibited. If your name or mark is deemed to be confusingly similar to a previously existing trademark, the prior user will have grounds for a trademark infringement action against you.

Therefore, before investing too much time, effort and money in establishing your prospective trademark it is a good idea to do a trademark search to make sure nobody else has been using the same or a confusingly similar name before you. Keep in mind that a mere search of current Federal trademark registrations may not be sufficient. In the event that a full nationwide search from one of the companies that specializes in doing such searches is beyond your budget, then at least do an online search through Google and other online search engines.  This is important because trademark rights are based on "first use."  Therefore, even if someone does not file for or procure a Federal trademark registration, certain rights vest in that person under state law from the moment they start using the name.  If they were using a particular name similar to yours prior to when you first started using your name then, under state law, even if you file a Federal trademark registration before that prior user files, he or she could still prevent you from using your name (and prevent or limit the release of your records under your name). The usual solution to such a problem is to buy out that person's rights, but this can be costly. However, the last thing you want to do is find out of the eve of your first big record release that someone else was using the name you have printed on all of the CD covers before you were using it, and you now have to scrap all of your records.

Once you are sure that the name you want to use is clear, the best way to protect your rights is to file an application for Federal trademark registration. Although certain ownership rights accrue to you in your trademark from the time you first start using it as a source identifier for yourself or your band, Federal registration will give you, among other things, a legal presumption of first use and ownership of the name nationwide. It will allow you to commence legal action in Federal court and may entitle you to injunctive relief (which is an order by the court that the infringer cease using the name until the case is resolved), treble damages and legal fees.

Therefore, having determined that no other person or entity is using the name that you want to use as our trademark, the next step is to file an application for trademark registration in the U.S. Patent and Trademark Office. The filing starts a process that can span several months. Although the time between filing the application and actually receiving your trademark registration certificate could be six months to a year, the effectiveness of the registration is retroactive to the date of first use. Therefore, once you start using a name is it best to continue. In fact, in order to maintain your trademark rights you must continue to use the name and you must police your trademark and beware of others who may use a confusingly similar name to yours.

In summary, the best way for a new artist or group to proceed is to choose as unique a name as you can think of, do a comprehensive search to be sure that it is uniquely your own, and then file an application for Federal trademark registration. Most importantly, remember that trademark rights are based on use so once you choose a name - use it or loose it!

Wallace Collins is an entertainment and intellectual property lawyer based in New York. He was a recording artist for Epic Records before receiving his law degree from Fordham Law School.  www.wallacecollins.com 

This INTERNATIONAL BUSINESS TIMES article quotes me several times starting at paragraph 4

http://www.ibtimes.com/aurous-legal-ad-free-music-streaming-service-was-sued-riaa-it-doesnt-look-promising-2142693