PUBLISHED BY HEATHER M. MORADO

I am an attorney at Morado Law, PLLC.  I practice in the areas of entertainment and intellectual property law.

Wednesday
Feb062013

Can a songwriter prevent other musicians from recording cover versions of the songwriter's original compositions?

The short answer, is no.  To begin, it's important to first distinguish between the two separate copyrights in music: 1) the copyright in the underlying composition; and 2) the copyright in the actual sound recording.  Although artists can refuse to license the use of their recordings, they cannot prevent others from recording cover versions of the underlying compositions.  Under Section 115 of the Copyright Act, the licensing of copyrighted compositions is compulsory, as long as the artist recording the cover pays the original artist a mechanical license fee. 

Usually, when artists want to record a cover version of a song, they contact the original songwriter (or music publisher, whoever administers the rights), and secure a mechanical license directly, often at a price less than the statutory rate under the Copyright Act (currently 9.1 cents or 1.75 cents per minute of playing time, whichever is greater).

However, if the original songwriter refuses to grant a license, the Copyright Act allows the covering artist to obtain a compulsory mechanical license, provided that the covering artist gives the original songwriter notice of the covering artist's intent to obtain the compulsory license, and pays a mechanical license fee to the original songwriter at the statutory rate.
 
Mechanical licenses allow the covering artist to sell copies of their cover version of another artist's song.  As discussed in a previous post - for public performances of music, license fees are generally covered under the venue's ASCAP, BMI or SESAC blanket licenses.

Wednesday
Oct242012

Congrats to Michael Raymond on winning the Sci-Fi award at the Austin film festival

Congratulations to client and former Nicholl Fellowship finalist Michael Raymond on winning the Dark Hero Studios Sci-Fi Award at the 2012 Austin Film Festival for his screenplay, The Domain. The 19th annual Austin Film Festival jury chose its 2012 Screenplay and Teleplay Competition winners from a record number of 6,500 submissions.  The award is well deserved, congrats Michael!

 


Wednesday
Oct172012

K2: Siren of the Himalayas premiere

Congratulations to client K2 Siren, LLC – their film, K2: Siren of the Himalayas will premiere on November 3rd at the BANFF Mountain Film Festival in Alberta, Canada.  A feature documentary shot in Pakistan, the film follows world-class alpinists Fabrizio Zangrilli and Gerlinde Kaltenbrunner as they attempt to reach the summit of K2, a highly treacherous mountain with three times the fatality rate of Mount Everest.  One out of every four alpinists have died attempting to reach the summit of K2 as a result of harsh weather, demanding climbing conditions, and high avalanche danger.

Please support these intrepid local filmmakers by following them on Facebook and Twitter. View the trailer here:

 

 

 

 

Tuesday
Oct092012

Can a political campaign use an artist's music if the artist objects?

As the presidential election season heats up, so are the legal claims of musicians who object to the use of their songs in connection with election campaigns.  So far this election year, the Silversun Pickups, rapper K'Naan, and Twisted Sister's Dee Snider have all objected to the use of their songs "Panic Switch," "Wavin' Flag," and "We're Not Gonna Take It" at Romney-Ryan political rallies.  Upon hearing that Paul Ryan was a fan of Rage Against the Machine, guitarist Tom Morello wrote a scathing op-ed letter entitled, "Paul Ryan is the Embodiment of the Machine our Music Rages Against," published in Rolling Stone.

Prior election campaigns have also received cease and desist letters and even been served with a few lawsuits brought by musicians objecting to the use of their songs at campaign rallies and in political advertisements.  The McCain campaign received cease and desist letters from both the Foo Fighters and the band Heart objecting to the use of their songs "My Hero" and "Barracuda" at campaign rallies.  During an ultimately unsuccessful Senate campaign, former Florida governor Charlie Crist was sued by the Talking Heads when their song "Road to Nowhere" was used in a web video targeting Crist's opponent, Marco Rubio.  As a condition of settlement, Crist was required to post this awkward apology video on YouTube: 


So can musicians prevent usage of their songs in connection with political campaigns? 

It depends on how the songs are used by the campaign.

If a song is used in a video advertisement without obtaining a synchronization license, the songwriter and/or music publisher can assert claims of copyright infringement against the offending campaign.  If a song is used at a campaign rally, the viability of a copyright infringement claim is less clear.  As explained in a previous post, most all musicians affiliate with one of the performing rights organizations – ASCAP, BMI, or SESAC – for the collection of royalties and enforcement of blanket licenses for the public performance of music in places such as bars, restaurants, nightclubs, and other public venues.  Both the McCain and the Romney campaigns have claimed that their usage of artists' music at campaign rallies was lawful pursuant to the venue’s public performance blanket licenses. 

However, the stronger claim for musicians to assert in objecting to the usage of their songs at campaign rallies is for false endorsement.  Under the Lanham Act, if the campaign’s usage of a song implies a sponsorship or endorsement by the band, the campaign could be held liable for false endorsement.

Until the extent to which a political party’s usage of artists’ music is litigated and defined by the courts, it seems the best approach for the political parties would be to ask for artists’ permission to use their music.  When artists object to the use of their music in connection with political campaigns, at a minimum, it results in unfavorable publicity for the candidate, but at worst, it could also potentially result in legal liability for false endorsement under the Lanham Act.

Friday
Apr202012

Is LMFAO an immoral and scandalous trademark?

The dance music duo LMFAO, best known for club anthems such as “Sorry for Party Rocking,” and “Sexy and I Know It,” are attempting for the second time to secure trademark registrations with the United States Patent and Trademark Office (USPTO) by filing four applications in March.  LMFAO had previously filed applications in 2008, but they were refused registration by the USPTO on the basis that the acronym LMFAO was shorthand for “Laughing My Fucking Ass Off.”  The USPTO Examining Attorney concluded that the mark LMFAO constituted “immoral and scandalous matter” that was unregistrable under the Trademark Act, 15 U.S.C. §1052(a).   

To be considered scandalous, a mark must be “shocking to the sense of truth, decency or propriety; disgraceful; offensive; disreputable…giving offense to the conscience or moral feelings…or calling out for condemnation, in the context of the marketplace as applied to the goods and/or services described in the application.”  Scandalousness is determined from the standpoint of “not necessarily a majority, but a substantial composite of the general public, and in the context of contemporary attitudes.”  In re Mavety Media Group Ltd., 33 F.3d 1367, 31 USPQ2d 1923 (Fed. Cir. 1994).  Examples of previous trademark applications that were refused registration on this basis include “1-800-JACK-OFF,” “BULLSHIT,” “A-HOLE PATROL,” “SEX ROD,” and “COCAINE.” 

What may have prompted LMFAO’s recent trademark applications is the USPTO’s approval in 2011 of an application for LMFAO, filed by an unrelated third party.  In response to the Examining Attorney’s inquiry regarding the meaning of LMFAO, the applicant responded, “LMFAO appearing in the mark…is a term of art for Laughing My Freaking Ass Off.”  Interestingly, the recent applications filed by the musical group LMFAO contain this same disclaimer as to the meaning of the acronym.

Although the USPTO has allowed a previous application for LMFAO, it likely won’t be relevant to the applications filed by the musical group LMFAO.  USPTO Examining Attorneys are not bound by decisions made by other Examining Attorneys.  Rather, an Examining Attorney’s decision is based solely on the unique facts and evidence of record in connection with a particular application.  TMEP § 1216.01. 

Will the Examining Attorney find that LMFAO is an immoral and scandalous mark, seemingly in contradiction of another recently approved application?  It’s difficult to predict. 

In the meantime, I’m going to LMFAO at this hilarious video…wiggle wiggle wiggle wiggle wiggle, yeah!