Collaboration - The Issues of Legality
By Nancy VanReece - 10/22/2001 - 08:19 PM EDT
© 2001, Nancy A Reece & Duff Berschback
There are many ways to collaborate with another writer when creating a new copyright. You may be a staff writer for a publisher assigned to write with someone you've never even met before. You may be a lyricist, looking for a melody master via the Internet to work with long distance. You may be in a band or group or duo where many participate in the formation of both a song and its arrangement. Or you may bring your works into a studio where a producer begins to work with you on changes. There are considerations in all of these situations and others that should be reviewed. It is very important to understand before you begin writing together what you agree on concerning writer splits.
I have compiled some questions submitted to me over the past few months and have asked Duff to help explain the labyrinth of possibilities.
Collaboration or Derivative:
I have written music, in which the lyrics are from a 12 century Irish poem. I found the poem in a collection of Irish poetry from the past 1000 years. The translation is in the book, of which the original was obviously in Gaelic. Since, I have used the translation, do I need to get permission from the publisher of this book for this song?
A translation is simply a derivative work of the original. Since the original in this case is public domain (speaking re: U.S. law), you would not appear to need permission for the lyrics. Watch out though if there was a change in the original so as to create a separate copyrightable work.
Collaboration or Trade Mark?:
Does one have to get permission to use product names in a song? For example, in Phil Vassar's song "Just Another Day in Paradise" he refers to "Dominoes Pizza" in his lyrics. Did he have to obtain permission to use that name? Would I have to obtain permission to use the phrase “band-aid" in a song, being that Band-Aid is a brand name?
Most basically, trademark infringement liability under §43(a) of the Lanham Act attaches when the owner of the trademark has shown that ordinary consumers are likely to be confused as to the origin or affiliation of the defendant's goods or services. I would argue that mentioning a mark in a song isn't selling goods or services--Phil Vassar isn't selling pizzas and trying to piggyback on Domino's goodwill to do it, and likewise with BandAids.
As mentioned, the "usual" test for trademark infringement is the "consumer confusion" test. However, The Federal Trademark Dilution Act provides protection for "famous" marks from the "commercial use in commerce" of the mark by another, regardless of the actual or potential confusion to a consumer. 15 U.S.C. §1127(c) (1997). It has been up to the courts to establish what constitutes a "famous" mark and what is sufficient to establish "commercial use". Undoubtedly, I think, Dominoes and BandAid are famous marks. But again, I doubt that your use would qualify as commercial use in commerce. Also, consider a very practical point: How upset is Domino's pizza that its mark is mentioned in a huge hit single?
I seem to also remember an issue with Tina Turner’s “Private Dancer” that American Express was not accepted everywhere… no pun intended. The line “American express would do nicely, thank you” was replaced for certain markets that did have AMEX access.
Collaboration or Work For Hire?:
If I pay to have a person write a melody to a song, and I copyright that song, is that person out of the picture since he's been paid for his services? I have all the payments in writing.
The work for hire controversy usually has more to do with sound recordings than with song compositions. If the song is for an audio visual work, you need a written agreement specifying that the work has been specially commissioned created for use in an audiovisual work (plus some other stuff).
If not, it seems what this situation really deals with, is a single song publishing deal. Remember, the big difference between WFH and an assignment of copyright is that the former is not subject to termination rights.
Right Duff. Unless reversion rights are negotiated into the picture the assignment would last 35 years.
Collaboration in the Form of Arrangement
I'm writing a song for a musician friend of mine in an unusual way. He created and recorded a very interesting and unique arrangement to a cover song, only to find that he couldn't procure the rights to put it on his album. Now he wants to remove the vocals from his arrangement and have me write a brand new melody line/lyrics to go over the pre-existing chord progression/arrangement he's already got recorded. In theory, this would create an entirely new song that (hopefully) wouldn't be anything close to the cover. Sort of like reverse-engineering a song. My questions are: Is this legal? And if so, who would hold the copyright? Is it possible for me to own the copyright of the original composition (PA) and him to hold it on his particular arrangement/recording (SR)?
I'm not sure I completely understand the question ("song" and "recording" are terms of art that are often used interchangably with conflicting results).
Anyway, what I think is going on is that your friend sampled a master but couldn't get rights. Changing the recording in the way you suggest may in fact get rid of the sampling issue. But remember that you also need to worry about the danger of the new composition being considered a derivative work, which would not make the original song owner too happy. Remember, perhaps counterintuitively, you can get a license to use an *entire* song without the owner's permission, but if you want to use *less* than the whole, you must negotiate a license.
Overall, it seems like this is a question that could benefit from the opinion of a musicologist.
Collaboration with Band Members:
My previous project that I used to work with, has split company with me. I wrote all the drums, bass, guitar, and synth on all the songs, while the singer wrote the lyrics. What I am curious about is: Do I actually have claim to the compositions? (Having no other musicians on the material aside from the singer, kinda leaves me on strange ground. I also did all the engineering and production as well.....and collaborated on the story lines of the material).
Seems like you have an excellent claim to half ownership in the undivided whole. In the absence of an agreement to the contrary, a joint work (one created when one or more authors intend at the time of their creation, for their parts to become a part of a bigger whole) is owned equally by all the collaborators, who can license it on a non-exclusive basis without the others' permission, subject to the duty to account to them for profits.
Collaboration with a Deceased Writer:
I write to ask advice on how to gain permission to use a single line from another song in one of my own, and what the publishing/royalty ramifications are. My own inquiries have proved unhelpful. It's a reasonably well known line from a well known jazz standard, while I am an alternative pop writer. The lyricist died in 1989 I believe and so the lyric is not yet public domain. Would I approach the publisher or the estate of the lyricist? I would need to negotiate an appropriate writing credit/ royalty split with the owner of the copyrighted line. What is the norm in this kind of case, and does this fall into the realm of sampling, as in hip hop records?
The person to approach is the one with rights over the song--this could be the estate, but might be the publisher, too. BMI/ASCAP/SESAC websites are good places to look for such information. Yes, it's a sampling issue, and yes, you need to negotiate, because there is no compulsory license for sampling. As the song is a "well-known jazz standard", expect to give up a piece of your song. The percent depends upon the amount of use in the song, how famous the sampled song is, etc. Percents range from 10-50%, and many publishers will ask to co-administer the song. The other possibility is a one-time buy out, but usually that's only in the case of lesser-known works (and who wants to sample them?)
TO VIEW OTHER QUESTIONS AND RESPONSES, SEE NANCY'S "COPYRIGHT & PUBLISHING Q&A" ONLINE AT http://www.musesmuse.com/pubq-a.html OR DUFF'S "THIS LAW GOES TO 11" COLUMN AT
Please note: These two received a *lot* of e-mail in a month. If you sent in a question but have not heard a reply, it's very likely it already *has* an answer online. It's always a good idea to thoroughly look through the Q&A's online to see if your question has already been asked before you send in a request. Thanks!
ABOUT NANCY A. REECE:
Carpe Diem Copyright Management's owner and president, Nancy A. Reece has been involved in the music business since 1983. She was the president of an independent advertising agency for eight years
as well as a successful personal artist manager for nine years. She represented the careers of several recording artists and songwriters including those with EMI, Zomba and Liberty Records as well as Benson, Starsong, WoodBridge, Temple Hall and N'Soul Records. She also represented, for a number of years, a Grammy and Dove nominated record producer. Reece has won awards of excellence in print magazine advertising and has been named as one of 2,000 Notable American Women (1995) as well as being listed in the International Who's Who of Professional and Business Women (1993). She was also named Cashbox Magazine's Promoter of the Year (1989). In addition to her work at Carpe Diem Copyright Management, Reece is a Licensing Executive specializing in Corporate compliance in the General Licensing Department at BMI.
ABOUT DUFF BERSCHBACK:
Duff Berschback is an entertainment lawyer in Nashville, TN. He represents singers, songwriters, publishers, and other assorted industry types, with a particular focus on digital entertainment and new media. He spends spare time hanging with his family, playing with his Lab, reading, and, of course, listening to music. A bit scattershot in his musical taste, at any given time he can be found listening to Bach or Martina McBride, Wagner or Robert Johnson, Muddy Waters or (old) U2, Dire Straits or Dwight Yoakum, The Rolling Stones or Frank Sinatra, and (old) Van Halen or George Winston, among others.
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