Trademark - Copyright - Music Licensing     

 

Trademark Law
An Overview
    by Robert A. Livingston

To enable a better understanding of trademarks the following will be discussed:
1) The federal trademark law,
2) Registration benefits and procedures, and
3) Temporary protection and the protection symbols.

Lanham Trademark Act

The federal law that governs the acquisition, registration, use, and misuse of trademarks is the Trademark Act of 1946, as amended. Or, as it is more commonly called, The Lanham Trademark Act.

For a mark to be eligible for registration and protection (in some cases this law protects bona fide trademarks even if they have not been registered) it must:

1) Be used in interstate commerce (i.e., used in at least two states) or, be used in at least one state and one foreign country,
2) Be distinctive, and
3) Be shown to be first adopted and used by the person or entity desiring protection (this does not mean it has to be an original creation...identification of the mark with a product or service is the important criterion).

A mark is not eligible for registration if it:

1) Consists of or comprises deceptive or immoral matter, disparages or ridicules persons (living or dead), institutions, nationalities, etc.,
2) Consists of, comprises, or simulates the flag or insignia of any country, state, or municipality,
3) Consists of or comprises a living person's name, portrait, or signature of a deceased president of the United States while the widow is still alive, and
4) Consists of, comprises, or resembles existing registered marks.

Principal and Supplemental Register

The Lanham Trademark Act provides for two registers called the Principal Register and the Supplemental Register. In short, the Principal Register is for a mark that is coined, arbitrary, fanciful, or suggestive--generally referred to as a "technical mark." Or, for marks that were not originally technical, but are regarded as "technical" because they have become specifically associated with a product by the public. All others would be registered on the Supplemental Register.

For example, if a video production company marketed DVDs with the distinctive words "Carrot Video" as their trademark, the words would be registered on the Principal Register. However, if they used the words "Color Video" as their trademark, it would not be "technical" but merely descriptive. This mark would therefore be registered on the Supplemental Register. If these words became specifically associated to their product by the public in the future, "Color Video" could then be registered on the Principal Register.

Marks registered on the Principal Register have these legal benefits over unregistered marks. Registration would:

1) Create a presumption of ownership by establishing prima facie evidence of ownership. Prima facie evidence is evidence presumed to be true unless subsequently disproved by evidence to the contrary. In short, it would take litigation to enable someone else to use the mark,
2) Entitle the owner to sue in federal courts,
3) Allow the owner to use the notice of registration symbol (to be discussed shortly) which gives constructive notice (i.e., notice imputed by law) of ownership to prohibit willful appropriation of the mark by others, and
4) Restrict foreign imports with like trademarks.

Marks registered on the Supplemental Register have only these few legal benefits over unregistered marks. Registration would:

1) Entitle the owner to sue in federal courts,
2) Allow the owner to use the notice of registration symbol, and
3) Prevent others from registering the mark.

Service, Certification, and Collective Marks

The Lanham Trademark Act also provides for the registration of certain special marks. A mark that is used to sell a service or to advertise a service and identify such and distinguish it from the service of others is called a "service mark." Marks that can be registered as service marks can be titles such as artist's names, band names, or character names. Also, other distinctive features of radio or television programs used to identify a service may be registered even if they, or the programs, advertise goods of the sponsor.

The term "certification mark" means a mark used to identify the products or services of one or more persons other than the owner of the mark. This mark could certify regional origin, material makeup, quality, or other characteristics. Or, it could certify that the work or labor on the goods or services was performed by members of a union or other organization.

For example, a group of computer music programmers could protect CDs that contained their music by registering a certification mark and affixing that mark to all manufactured copies so as to identify them and distinguish their music from the "old fashioned" music played by humans.

Finally, a service mark used to indicate membership in a union, association, or other collective group or organization may be registered as a "collective mark."

Immediate Protection and
Trademark Protection Symbols

Immediate protection for a mark is possible. If the mark fulfills all the eligibility requirements and is subsequently registered, temporary protection for the mark can be enabled by the use of the letters "TM."

"TM" is an abbreviation for trademark. This abbreviation (without the quotation marks) is placed in close proximity to the mark to be protected (e.g., a word, phrase, symbol, device, or emblem) this placement is immediate and precedes the registration of the mark as a trademark. The abbreviation gives notice to the public that the mark is protected by federal law if a registration certificate is subsequently granted.

When registration is completed, the "TM" is replaced by the symbol ® (the letter "R" in a circle). This trademark symbol gives notice to the public that the mark is registered and that use of the mark is protected by federal law. Use of the registered trademark symbol is not permitted before the registration certificate is issued.

Experienced businessman establish proof of the first use date of their trademarks. A good way to substantiate this is to use the mark in an advertisement placed in a dated, copyrighted publication...

The above is only a partial example excerpt...

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Trademark Law
 

Copyright Law
    by Robert A. Livingston

Copyright laws are binding rules that define and govern the acquisition, use and misuse of copyrights. Copyright law may comprise, depending upon jurisdiction...international agreements, federal statutes, state statutes, and common law.

Although there is not such a thing as an "international copyright," most countries do offer protection to foreign works via their national copyright laws as they coincide with the various international copyright treaties and conventions to which the individual countries belong.

Within the United States, federal statutes are by far the most comprehensive. Federal law supersedes state legislation (but only in federal courts--state courts enforce state statutes and state judges can ignore or make judgments that limit federal laws in certain instances, e.g., where narrowly defined state statutes conflict with a wider ranging federal law...in these instances, an appeal to a federal court may sometimes have to be made).

On the plus side, however, state statutes can be enforced in state courts where they supplement federal law, i.e., are in addition to the coverage provided by federal law.

The federal law that governs most activity with respect to copyright in the United States is the Copyright Revision Act of 1976 as amended (otherwise known as United States Code, Title 17--Copyrights). This law, which became generally effective in 1978, does not cover works created before 1978. Those older works fall under the jurisdiction of the previous statute which is the statute of 1909 as amended. One notable amendment to the 1976 Act was the Berne Convention Implementation Act of 1988. This amendment covers works created on or after March 1, 1989.

The federal law, in general, protects an original work of authorship (with some exceptions) which is significant in length and is an expression of an idea, or ideas. It defines certain exclusive rights in the work to be the property of the copyright owner. Under the law, the rights in copyright are recognized to be separate and distinct from the right to the physical object in which the work may be embodied, and also from any physical expression of the work, e.g., if you receive a letter from your friend the physical letter is your property but the expression of ideas contained in the letter and the rights in copyright belong exclusively to your friend (if they were originated by him, i.e., if he did not copy them from someone else).

The law also prohibits the unauthorized copying of the protected work. It further provides some remedies for certain infringements of the enumerated exclusive rights.

It also defines a group of compulsory licenses (and the fees payable for these licenses) that are available to certain perspective users of copyright. Compulsory licenses, though restrictive, may be obtained without the permission of the copyright owner.

The list of sub-entries that follow will define many of the terms relevant to copyright law. Where appropriate, terms are defined by direct quotes or paraphrases from the existing law.

Copyrightable Material

Any material of significant length that is an expression of an idea, or ideas, comprises an original work of authorship, and is fixed in a tangible medium of expression, i.e., it is embodied in a copy or phonorecord.

Material that is identical or similar to other works already copyrighted can be copyrighted by another as long as it is an original expression, i.e., as long as it was not copied.

This means that a work could possibly be created by more than one person if the second person's creation was independent of the first. However, it must be both consciously and subconsciously independent.

This means that if the second person had access to the material and later subconsciously re-created it, the re-creation would not be protected by copyright law. In fact, if used improperly, it would be an infringement of the original creator's right to copy.

Final decisions to determine if copyright infringement exists, however, are made via litigation and not by the copyright office.

Copyrightable Works Include:

1) Musical works (to include accompanying words),
2) Literary works,
3) Dramatic works (to include accompanying music),
4) Pantomimes and choreographic works,
5) Pictorial, graphic, and sculptural works,
6) Motion picture and audiovisual works, and
7) Sound recordings.

Noncopyrightable Material:

Noncopyrightable materials are works in the public domain that are:

1) Not an expression of an idea (ideas and expressions of ideas are not one in the same). For example, a person may have an idea about what love is, but the expression of what the person thinks it is (e.g., expressed in a love song) is distinctly different than the idea of love itself. Or, the idea of blues music (its beat, progressions, sound, feel, etc.) cannot be copyrighted whereas a particular blues song (an expression of the blues) could be if it met the other requirements of copyright law. This distinction, while allowing for the development of musical form and permitting a formidable amount of "borrowing" also prohibits any exploitation of a particular artist's rendering of a song.
2) Not significant in length, e.g., song titles, names, slogans, etc.. Any of these would be protected where they were embodied in a fixed work of sufficient length, i.e., in a typical work protected by copyright law. However, since the law allows insignificant copying of even copyrighted works, a court could rule that the copying of a title was insignificant. Further, if the title was considered insignificant relative to copyright law, other laws may apply and override, i.e., just because it is not protected by copyright law does not necessarily mean it is not protected by other laws. For example, state statutes of unfair competition and the federal trademark law may, under certain circumstances, protect song titles, names, slogans, etc..
3) Not original works,
4) Not fixed in a tangible medium, and
5) Works of the U.S. Government.

Examples of Noncopyrightable Materials Are:

1) Ideas,
2) Procedures,
3) Processes,
4) Systems,
5) Methods of operation,
6) Concepts,
7) Principals,
8) Discoveries,
9) Titles,
10) Names,
11) Slogans,
12) Designs,
13) Symbols, and
14) Listings of ingredients...

The above is only a partial example excerpt...

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Copyright Law
 

 

 
Music Licensing
    by Robert A. Livingston

A music license is a contractual permission to act. It is usually given by written agreement which is granted by a party of authority that is legally authorized to grant such permission, e.g., allowing a party to exclusively exercise a right in copyright. In the absence of such authorization the act would be illegal.

In the music industry the money flow and earnings are based in the various use licenses issued by the copyright owner or by his authorized representative(s). The fees charged for all such licenses create the money flow.

Since there are many rights given to the copyright owner by law, and since these rights are divisible, it would only follow that there would be many different types of licenses that may be issued. But, this is only the half of it! These multiple types of licenses can be issued to multiple numbers of users via multiple numbers of middlemen agents and representatives! The pie can have many slices and as more and more middlemen become involved, the slices get smaller and smaller!

Block License:

Also called a "blanket license," it is an all encompassing multiple use license, e.g., a license that enables the licensee to use an entire catalog of songs for an unlimited number of times over a designated period of time (e.g., one year). However, the fee charged for this type of license would normally increase relative to the typical number of uses and to the size of the listening audience.

One normal use of a block license is its issuing by a performance rights society to a user of its song catalog for live performances. Such user licensees might be radio stations and television networks (for broadcast music). Other blanket licensees called "general licenses" are issued to concert venues, malls, hotels, office buildings (elevator music), and night clubs (for live performance of bands). Note that it is the venue owner or producer that pays for the license and not the actual performer of the music. For example, in a night club the club owner would secure the license and not the band that will actually perform the music. Also a venue may need more than one type of license (e.g., one for the live performance of bands and another for jukebox performance) and they may also need a license from more than one issuer (e.g., for different song catalogs from ASCAP, BMI, and SESAC).

As can be seen, in the music industry, there are several different types of block licenses and several different licensors that issue such licenses. The actual fees charged will vary and the ways they are determined can be complex (e.g., evaluating one radio station vs. another). The potential user must contact the licensor to determine the correct and current fees.

The practice of blanket licensing by performance rights societies has been held up in the courts even though it smacks of being a monopoly. Some would hold that they should be allowed to directly negotiate source licenses from the music publisher or copyright owner. Since this would highly complicate and increase the accounting for most users, blanket licensing is seen by the courts as the best solution to the overall problem. However, depending on future litigation, this practice could be modified by the courts to try to create a better balance between all parties concerned.

Compulsory License:

A license authorized by copyright law and issued by the Copyright Office. It is a license that allows the licensee certain use rights of copyrighted material. Individual licenses are issued with respect to phonorecords (to manufacture, distribute, and sell), juke boxes (to publicly perform non-dramatic music), cable systems (to broadcast secondary transmissions), and noncommercial public broadcasting (to transmit). This type of license can be obtained by the perspective user without the permission of the copyright owner.

However, compulsory licenses can only be secured if certain conditions, restrictions, and fee (royalty) payment requirements are met.

For example, with respect to juke boxes, a compulsory license can only be obtained by a juke box operator user where the juke box operator user and the copyright owner (or his authorized representative, often his performance rights society) are unable to mutually agree upon a negotiated license.

Also, in the special case of a compulsory license for phonorecords (discs and CDs) it cannot be issued until the copyrighted work has had its first commercial recording and has been distributed to the public by sale or other transfer of ownership. (The license that allows the first commercial recording of a work is a negotiated license, called a mechanical license, and is issued to the record company by the copyright owner's agent licensor which is usually the Harry Fox Agency.)

Further, a compulsory license for phonorecords only allows for the recording of "sound-alike" recordings. These recordings must be arrangements that do not change the basic melody or fundamental character of the work.

The compulsory license for phonorecords is then, in effect, a license to manufacture, distribute, and sell a "sound-alike" recording. And since, in the record industry, a license to manufacture, distribute, and sell a phonorecord is called a mechanical license, a compulsory license for phonorecords simply amounts to a mechanical license for sound-alike recordings.

And finally, there is no compulsory license available that would allow for the reproduction of identical copies of an existing copyrighted recording. Manufacturing and selling identical copies is called pirating! Pirating is illegal and the pirate is subject to both civil and criminal penalties which may include damage awards, court costs and attorney's fees, as well as, substantial fines and imprisonment.

All use licenses that are not available via a compulsory license must be obtained from the copyright owner by the perspective user via negotiation.

To help deter the use of compulsory licenses and to help to promote negotiated licenses, compulsory licenses carry with them certain stringent liabilities inherent to their use. These liabilities are defined by copyright law. For example, one stringent condition included is the requirement for monthly royalty payments (instead of quarterly as is the industry standard). This requirement alone usually moves the perspective user to negotiate directly with the copyright owner (or his agent licensor) for a more plausible agreement. Negotiated agreements eliminate the need for the involvement of the Copyright Office.

Information on procedures that must be followed to obtain compulsory licenses and the royalty fees and other liabilities involved may be procured from the copyright office...

The above is only a partial example excerpt...

If you happened on this web page while surfing the Internet, and are interested in reading the full discussion, that discussion is found on the LaCostaMusic.com TMBIO Members Website...

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Music Licenses