Using Popular Music in Advertising

 

By: Andrew J. Zulieve, Esq.

 Recently, an attorney called me to explain the potential legal issues facing her client, which involved using a musical score for advertising purposes.  I represent many artists and composers, so the attorney’s question had considerable relevance to my practice and my clients. The issue before me implicated copyright issues, which never seem to have simple answers. Here are a few brief explanations:

 Brief History of Copyright Law

Copyright law in the U.S. is provided for by federal statute which implicates both the original Copyright Act of 1909 and the new Copyright Act of 1976, which became effective in 1978. In either case, copyright confers on the owner six exclusive rights that can only be transferred [e.g. a license] in writing. Put another way, copyright exists separately and apart from the actual work. For example, buying a record gives ownership of the physical record and the right to listen to it, but does not transfer any of the exclusive copyrights outlined below.

Your Rights

Copyright protects original works of authorship from unauthorized use by others.  Under the existing Copyright Act, the copyright owner has the exclusive rights to do the following: (1) reproduce the work in copies or phonorecords, (2) prepare derivative works based upon the original work, (3) distribute copies or phonorecords of the work to the public by sale or other transfer of ownership, or by rental or leasing, (4) perform the work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion picture and other audio-visual works, (5) display the work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic or sculptural works, including the individual images of a motion picture or other audiovisual works, and (6) in the case of sound recordings, to perform the work publicly by means of a digital audio transmission.  Under the old act, copyright was perfected upon publication of an original work with proper copyright notice.  Under the new act, copyright is perfected upon the creation and fixation of an original work in a tangible form.

There are several key factors to consider including:

 (1) Whether the musical score is protected by copyright-

 (2) When will it expire?

 (3) From whom should a license to use the work be obtained?

Determining the expiration date of a copyright can be complicated and, depending on when the work was created, may require reference to both the 1909 and the 1976 Copyright Acts.

 Generally speaking

The creator of an original work of authorship owns copyright in it.  However, copyright in musical compositions and books often may be owned by the music company or book publisher.  In addition, the owner of copyright in musical compositions often hires the services of one or more agencies to license and obtain royalties for the right to perform a copyrighted work, which includes transmission of the work by T.V. broadcasts or via the internet [The American Society of Composers, Authors and Publishers (ASCAP), BMI, and SESAC), or to issue “mechanical licenses” to use a copyrighted work on CDs, records, tapes and certain digital configurations (Henry Fox Agency).  If a business or person desires to use a particular musical composition for either one of these purposes and the work is listed in the agency’s catalogue, then a license must be obtained from that agency.  However, licenses for one or more of the other exclusive copyright interests must be obtained from the actual copyright owner.

 Ultimately, I determined that the musical score remained subject to valid copyright and was listed in the ASCAP catalogue.  The attorney’s client had to obtain a performance license from that agency or risk exposure to a costly federal court copyright infringement action for any unauthorized use of that composition. 

About the Author:

Andrew Zulieve is a business attorney & Intellectual Property Specialist. He grew up in the Washington D.C, area, was a law clerk for Finnegan Henderson, one of the world’s largest intellectual property firms headquartered in Washington, D.C. and was a trademark examining attorney for the United States Trademark Office.

His areas of practice are: complex contracts, construction law matters, trademark & copyright, trade secret, unfair competition and business structuring. From his office Zulieve Law LLC in Midcoast Maine, he serves clients both nationally and internationally. He can be reached at ajzlaw@roadrunner.com

Contracts: Myth #1 – A Handshake Seals the Deal.

It’s great to have trust…I’m a fan of trust. Success in business unquestionably requires some willingness to cooperate with and have faith in others. However, when it comes to business, I cannot tell you how many oral agreements have led to misunderstandings and legal disputes; the details of which can be difficult or impossible to prove in court. In certain situations, written agreements are mandatory…good to know just in case you wake up one day and find yourself in a lawsuit.

You should put most every agreement in writing- some examples are:
• Partnership Agreements: They spell out terms and expectations of owners and help to settle in advance what happens if one owner wants to leave the business or when partners disagree about things. (that never happens right?)
• Employee Agreements. Make sure that when hired, employees sign nondisclosure agreements so they keep your valuable trade secrets (pricing, formulas, recipes etc.) confidential.
By Maine law, you must put the following in writing:
• The sale of goods for more than $500
• The sale of real estate.
• Agreements that take longer than one year to complete.
• Home Construction Contracts for more than $3,000 in materials and services are now required to include specific information and be signed by both parties.
Many business owners try to save money by doing everything they can by themselves including contracts and other agreements. Doing some legwork can really reduce the cost of legal fees – but are not a substitute for a good legal review to make sure that your interests are well protected.

Be Diligent- Be Proactive- Be Safe.

Regards,
Andy