The Next Big Hit, 0714 SCBJ, SC Lawyer, July 2014, #5

Author:William Bee Ravanel Lewis.
 
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The Next Big Hit

Vol. 26 Issue 1 Pg. 46

South Carolina Bar Journal

July, 2014

\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0Protecting and Exploiting (In a Good Way) Your Musician-Client's Intellectual Property

\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0 William Bee Ravanel Lewis.

\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0South Carolina has produced or been home to numerous nationally and internationally known recording artists and songwriters including Dizzy Gillespie, James Brown, Chubby Checker, Eartha Kitt, Maurice Williams (of the Zodiacs) and, more recently, Hootie and the Blowfish, the Marshall Tucker Band, Edwin McCain, Jump Little Children, Cravin' Melon, Quiana Parler and Danielle Howie. Like all aspiring artists, each of these acts had to start the rise to fame somewhere.

\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0For the singer/songwriter, the rise to stardom typically begins with dreaming up lyrics and an accompanying melody. The artist then captures those two components on something as simple as a napkin or the insert of a matchbook to something as modern as a laptop or smart phone application. One way or the other, once those original lyrics and/or melody have been "fixed" by the songwriter 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 machine or device,"1 that songwriter has created a potentially valuable piece of property. That property is federally protected and may, in the future, generate numerous streams of income.

\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0What happens when that next great singer/songwriter (for purposes of this article, "Felicia Silverfolk") arrives at your office with a sheet of paper in one hand covered with lyrics, chords and melodies representing potentially the next blockbuster song and a thumb drive in the other hand containing a recording she made of herself singing the song? She begins asking you for broad advice as to what she owns, how she can profit from what she owns and where she goes from here as a musician. This article addresses these often complex questions and provides guidance as to when a general practitioner should perhaps seek assistance from a lawyer whose practice centers around such issues.

\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0What does Ms. Silverfolk own and how does she initially best protect her ownership interests?

\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0Ownership

\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0Ms. Silverfolk is the proud owner of two separate pieces of intellectual property. Title 17 of the United States Code, also known as "The Copyright Act," provides the foundation for Ms. Silverfolk's ownership rights, and for generating various streams of income from her creations. We purposefully refer to "creations" in the plural because Ms. Silverfolk owns two distinct pieces of intellectual property, each protected by federal copyright law. The sheet of paper she has presented you with is protected by way of 17 U.S.C. § 102(a)(2), in that copyright protection subsists in "musical works, including any accompanying words ..." The recording on the thumb drive she has presented you with is separately protected by way of 17 U.S.C. § 102(a)(7), in that copyright protection additionally subsists in "sound recordings."

\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0Federal registration

\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0A common misconception is that Ms. Silverfolk must actually do something further than she already has (writing down the words and music and recording the same) to actually "have a copyright" for her works. Laypersons often confuse a nebulous notion of "copyrighting" with the actual act of "federally registering the copyright." In other words and by way of example, this author often hears the question, "What do I need to do to copyright my song?"

\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0As alluded to in the introduction, pursuant to 17 U.S.C. § 102(a)(2), as soon as Ms. Silverfolk wrote down the melody and accompanying words, she became the proud owner of a copyright in the same. As soon as she recorded the melody and accompanying words, pursuant to 17 U.S.C. § 102(a)(7), she became owner of a separate copyright in the sound recording. The better questions thus would be, "What do I need to do to protect my ownership interest from potential infringers, whether such infringer does so intentionally or unintentionally?2 Do I need to federally register my copyrights?" The latter question, if asked at all, is often followed with "Can't I just put the song in an envelope and mail it back to myself keeping the envelope sealed, to prove when I wrote the song (a/k/a "the poor man's copyright")?

\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0"The poor man's copyright," as it is often called, may end up providing some form of evidence in a subsequent suit as to when Ms. Silverfolk first created the work that is alleged to have been infringed upon. However, it is not unheard of for an alleged infringer's expert to testify as to an "after the fact" alteration of the envelope by your client to make a false claim. On the other hand, federal registration provides simple, inexpensive3 evidence of the timing of creation, and more importantly, is a prerequisite to filing a copyright infringement lawsuit in federal court—the only court with jurisdiction over such a claim.4

\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0It is recommended that Ms. Silverfolk not wait until she believes someone has infringed upon either her musical composition and/or sound recording before federally registering her copyrights. If she registers prior to an alleged infringement or within three months of her publishing5 the work, and if successful in her suit, she may be entitled to statutory damages "in a sum of not less than $750 or more than $30,000" per infringement,6 and possibly her attorneys' fees,7 as opposed to simply actual damages and recoupment of the infringer's profits, resulting from waiting until after learning of the infringement to register the work.8

\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0What ownership rights does she have and for how long?

\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0Musical composition

\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0As soon as Ms. Silverfolk captured her music and lyrics on paper, she proudly vested herself with various exclusive rights with respect to her musical composition. They include the exclusive right to do and authorize (by way of licensing or transfer of copyright to third parties) any of the following:

(1) to reproduce the copyrighted work in copies or phonorecords;

(2) to prepare derivative works based upon the copyrighted work;

(3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;

(4) to perform the copyrighted work publicly; and

(5) ... to display the copyrighted work publicly9

\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0Sound recording

\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0Pursuant to Section 114 of Title 17 U.S. Code, of the five rights enumerated above with respect to Ms. Silverfolk's musical composition, only the first three enumerated rights apply to her sound recording copyright.10 In other words the owner of a sound recording copyright has no general public performance right nor does she have a "display" right, as a sound recording is "heard," not "displayed." However, Section 106 of Title 17 sets forth one additional exclusive right for owners of sound recording copyrights, and that is "in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission."[11]

\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0Duration of exclusive rights

\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0As to the length of Ms. Silverfolk's exclusive ownership rights, with respect to her musical composition copyright, the clock began ticking when she captured the music and lyrics on the sheet of paper. With respect to her separate copyright in the sound recording, the exclusive ownership rights clock began ticking when she actually recorded her musical composition. Unless she transfers ownership of her copyrights to a third party in compliance with 17 U.S.C. § 204(a),12 her ownership endures for the rest of her life plus the 70 years subsequent to her death. After those 70 years, her works enter the public domain and her heirs or transferees lose their exclusive rights enumerated above. Therefore, it is during those terms of copyright ownership that she (or her heirs or transferees) must capitalize upon the exclusive rights that come with such ownership.

\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0Exclusive rights and resulting streams of income

\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0Ms. Silverfolk's exclusive rights specified in 17 U.S.C. § 106 provide the foundation for the streams of income that may be generated from her musical composition copyright and the copyright in the sound...

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