M.E.L.O.N.

Agreeing to License - Part 2: Turning On The Boilerplate – Indemnification Clauses

by Mark A. Pearson, Esq.

The following is the second in a series of articles that will try and explain some of the pros and cons of entering into a licensing agreement in today’s entertainment industry. 

   There are any number of different types of licensing agreements that come across my desk in a typical work week.  Some are short-form agreements, and others spell out every detail of the parties’ intentions over 50 pages or more.  One thing they all have in common; boilerplate provisions.  You know; the stuff that gets jammed into the last few pages of the license under the heading Miscellaneous.  Well, I’m here to remind you that while they may not be the sexiest part of a license, boilerplate provisions can solidify a good license or create possible pitfalls in a bad one.

   This week we focus on an important boilerplate provision known as the Indemnity Clause. An Indemnity or indemnification Clause is a provision in which one or both parties to the license agree to hold harmless the indemnified party from liability to a third party for loss or damage resulting from such liability.

   As we discussed in Part 1, there is a trend in the entertainment industry toward licensing intellectual property rights.  Music and motion pictures licensed for distribution would be an example.  Inherent in the licensing of intellectual property is a fear on the part of the licensee that a third party’s rights may be violated by the licensor’s work.  For example: Two musicians write a composition together and record a master of the song.  Musician A, a rather shady character, licenses the exclusive right to distribute the master to Distributor.  Distributor distributes the master and pays royalties and advances to Musician A.  Meanwhile, Musician B, who owns all rights to the master, knows nothing about the agreement between Musician A and Distributor.  When Musician B finds out about the agreement she sues both the Distributor and Musician A jointly and severally for copyright infringement and to recover monies earned under the license.

   In the example, a solid indemnity clause in the agreement with Musician A would protect the Distributor from liability stemming from Musician B’s rights in the master.  Without an indemnification Clause, or with a poorly worded and thus unenforceable Clause, Distributor might be liable to Musician B for big bucks!

   A good Indemnification Clause starts with setting forth a clear intention to indemnify. You should start the clause by stating the intention of the parties to provide indemnity.  Next, set forth the indemnitor and indemnitee.  The indemnification may or may not be unilateral. If there is a third party involved in the indemnification (an insurance provider for instance), make sure they are included. The clause must state that the indemnitee need notify the indemnitor of a claim or lawsuit in a timely manner, and how long the indemnification will last.  Will indemnity survive the termination of the license and for how long?  Finally, always include a clear statement on the losses, damages and liabilities covered, including whether or not future losses are covered. 

   You cannot draft an Indemnification Clause without understanding what can and cannot be indemnified.   First and foremost, the indemnification must be as against liability to a third party.  Public policy dictates that an Indemnification Clause is not enforceable if it seeks to indemnify against illegal activity, wrongful acts or a breach of a fiduciary duty.  In the example listed above, you might make an argument that the Distributor was negligent in not discovering Musician B.  In some jurisdictions negligence might void the Indemnification Clause.  Other jurisdictions make a distinction between active and passive negligence, allowing for indemnification if the negligence was passive. Arguably, the Distributor not discovering Musician B is passive negligence, if negligence at all. The important thing to remember is; if the Indemnification Clause is clear and knowingly bargained for, it is more likely to be enforceable even if it covers negligent acts.  A simple way of making it apparent that the Indemnification Clause was knowingly bargained for is to put it under its own heading.  Get it out of the Miscellaneous bin.

   Once you’ve established a clear definition of whom and what is being indemnified, here are some other things to think about when drafting your clause.  It’s implied that the indemnification covers legal costs and attorney’s fees, but it never hurts to make sure you expressly set forth langue covering those costs and fees.

   A big issue revolves around the issue of consent to settle.  If you are an indemnitor you want to make sure you have approval over any settlement that the indemnitee enters into.  Going back to our example, imagine if Musician A had the legal right to enter into the agreement with the Distributor, but Musician B filed the lawsuit anyhow.  Distributor could simply settle with Musician B to avoid the hassle, and send the bill to Musician A.   Now, imagine if Musicians C, D, E & F also came forward and filed claims against the Distributor, who in turn settles with all of them.  Ouch!  On this same note, Indemnitors may also want to participate in the indemnitee’s defense, including selection or approval of the attorney.

   Finally, you’re going to want to think about how the Indemnitee is going to be paid in the event of a lawsuit or settlement.  Will the Indemnitee be able to withhold payment under the license in order to pay for the cost of defending? Back to the example; under their license, Distributor is paying a royalty to Musician A on the master Distributor is exploiting.  Musician B sues, and Distributor notifies Musician A that it is seeking indemnity under the agreement, and will be withholding payment of royalties to pay for its legal defense. Here at BEAT-LAW, we’ve seen instances where the indemnification clause called for a bond to be established upon commencement of a lawsuit, or where the indemnitee is able to call for advance payment from the indemnitor to cover all legal fees.  If you are the indemnitor, you’d prefer that no payment be made until after final adjudication of any claim or lawsuit. Whatever the parties agree upon, make sure your Indemnification Clause clearly covers this issue. Do not remain silent!

   Next Month: We keep the boilerplate turned on, and explore what happens to your license if there’s a bankruptcy

For questions or comments, please email Mark at: [email protected]

10 Years After Napster: Welcome to 1998

by Tony Berman

Imagine a music service that allowed you to search for and download nearly any song for free with no monthly limits or caps. You could burn the downloaded music to a CD, either creating mixes or burning complete albums. This service exists, but it isn’t called Napster, and this isn’t 1998. All-you-can-eat music download services are being utilized by various universities who pay a site license on behalf of their students. While the downloads aren’t exactly free if the students are paying for it in the form of tuition or a technology fee, most college students don’t feel like they’ve paid for anything when it’s wrapped up in their regular tuition bill. Why does this feel an awful lot like what Napster was proposing to the record labels 10 years ago? Because that’s exactly what it is.

Agreeing to License Part One: Free to Roll With The Changes

by Mark A. Pearson, Esq.

The following is the first in a series of articles that will try and explain some of the pros and cons of entering into a licensing agreement in today’s entertainment industry.

As the various business models of the entertainment industry continue to reinvent themselves almost on a daily basis, one prevailing trend is the growing use of licensing.  More entertainment product is now self-produced by artists than ever before.  The “Studio System” and “Major Label” business models are quickly becoming obsolete.  It’s beyond the scope of this article to make any grand sweeping speculation as to why the industry models are changing.  Are these changes the result of the economy, backlash against the ‘old systems’, or technology changes?  The answer probably lies somewhere in the murky gray area known as “a combination of all of the above”.  The point is that change is here, and change means an influx in the use of licensing throughout the entrainment industry as the shift continues toward independent production.

Take the music industry, for example.  Under the old model, record labels hired talent evaluators to find artists, signed those artists to a recording contract, paid for the artist to record an album, created and distributed the album, and then profited off the sale of the album.  The label owned the copyright to master recordings that made up the album, and shared in the copyright of the song publishing with the songwriter.  The artist made money off of royalties paid by the label (including their advance) based on sales of the album, and on royalties paid to the songwriter by a performing rights organization (ASCAP/BMI) for use of the song.

Sampling Q&A

What is Sampling?  Sampling has several definitions, but the one used most commonly in music today is the practice of taking a section of recorded music, such as a guitar riff or a horn flourish, and inserting it into a new recording, often with some modification and in a loop. The use of samples in music can vary. Some samples are a straightforward reproduction of a familiar section of a popular song set to a new style of music. Examples of this approach are MC Hammer’s “U Can’t Touch This,” Vanilla Ice’s “Ice Ice Baby,” and Kid Rock’s “American Badass,” which sample Rick James’ “Superfreak,” Queen’s “Under Pressure,” and Metallica’s “Sad But True” respectively.

Circle C, Circle P: The Two Copyrights in Music

 

We get asked all the time about the copyright notices on CDs. There seems to be a lot of confusion about what is required and what exactly is meant by the “c in the circle” and the “p in the circle”. So let’s lift the veil on this issue.

 

There are two copyrights in music: the sound recording (which in general is owned by the record label) and the musical composition, including the lyrics (owned by the publishers). 

 

But there is also a separate copyright for the CD packaging and artwork.

 

The circle C refers to the packaging and artwork.  This notice should contain all of the following elements:

• The symbol ©, or the word “Copyright,” or “Copr.”
• The year of first publication
• The name of the owner of the copyright in the work

Example: © 1983 ABC Record Co.

 

(The owner of the packaging would normally be the record company that specially-commissioned or otherwise acquired the work through an assignment of rights.)

 

The circle P refers to the sound recording (i.e. phonorecord).  The notice for a sound recording should contain all of the following:

• The symbol (p)
• The year of first publication of the sound recording
• The name of the owner of the copyright in the sound recording

Example: (p) 1983 ABC Record Co.

 

(Again, the owner of the packaging would normally be the record company that specially-commissioned or otherwise acquired the work through an assignment of rights.)

 

What about the copyright in the underlying musical compositions?

 

There is no need to have a copyright notice for the compositions on the CD unless the lyrics are reprinted in the packaging. In that case, you would usually have a notice such as “Lyrics printed by permission © 2009 XYZ Publishing Co.”

 

Where should the copyright notices be positioned?

 

The notices should be affixed to copies of the CDs in a way that gives “reasonable notice of the claim of copyright.”  The three elements of the notices should appear together, as in the examples above, on the CDs or on the CD labels and inserts.

 

Are the notices really necessary?

 

The omission of notice does not affect copyright protection, and no corrective steps are required if the work was published on or after March 1, 1989.  For works published between January 1, 1978, but before March 1, 1989, no corrective steps are required if:

• The notice is omitted from no more than a relatively small number of copies or CDs distributed to the public OR
• The omission violated an express written requirement that the published copies or CDs bear the notice. 

This refers to the old copyright law requirement that a published copy bear the notice of copyright.  If it did not, the applicant had five years to cure the omission or error in notice before the work went into the public domain.  So, for works that are published between January 1, 1978 and March 1, 1989, no corrective steps are required if the omission violated an express written requirement that the published copies bear the notice (i.e., the old copyright law) because the work has already gone into the public domain.

 

In all other cases, for works published before March 1, 1989, to preserve copyright:

• The work must have been registered before it was published or before the omission occurred, or it must have been registered within five years after the date of publication without notice AND
• The copyright owner must have made a reasonable effort to add the notice to all copies or CDs that were distributed to the public in the United States after the omission was discovered.

If these steps were not taken, the work went into the public domain in the US five years after publication.  At that time all US copyright protection was lost and could not be restored.

 

Since prior law required the use of copyright notice, such use is still relevant to the copyright status of older works.  While the use of a copyright notice is no longer required under US law thanks to the Berne Convention, it is often beneficial.  Notice informs the public that the work is protected by copyright, identifies the copyright owner, and gives the year of first publication.  Further, if there is proper notice of copyright on the work, and the work is in fact infringed, it mitigates defendant’s claim of an innocent infringement defense.

(c):Defendant Destroyed Evidence, RIAA Wins

by Shana Dines

In a previous article about the lawsuit against Jammie Thomas, we discussed the arguments on either side of the "make available" theory of copyright infringement.  Just this week, Judge Davis granted the pending motion for a new trial.  The jury award of $222,000 in the Thomas case was considered the pride of the Recording Industry Association of America (RIAA). 

While this decision strikes a definitive blow to the RIAA's campaign to sue illegal file-traders for copyright infringement, there are still plenty of other cases pending on similar issues.  In another case that seemed to be leaning towards the defendants, the RIAA ultimately achieved a small victory earlier this month. 

The latest victims are the Howells, a husband and wife from Phoenix, AZ who decided to proceed in court without an attorney.  They had been faring relatively well for the past year, successfully blocking two summary judgments, however, the decision was ultimately ill-conceived. 

The Howells are now faced with a fine of $40,850 for destroying evidence that was critical to the case against them. 

Truth or Consequences: New Law Protects Performers and Public from Impostors

by Tony Berman

researched & edited by Shana Dines

While I was in Las Vegas the past couple of days, I checked out the listings of entertainment at the casinos.  There were obvious “tribute” shows such as “The Rat Pack is Back,” “Barbra and Frank: The Concert That Never Was,” and “Four Lads From Liverpool.”

Then there were some performers that made me wonder - “The Platters,” “Cornell Gunter's Coasters,” and “The Marvelettes.” 

I thought, “Didn’t Cornell Gunter die in the '90s in Las Vegas after being shot?” Who were these Coasters then?

And what about these Marvelettes?  I knew that for many years, none of the original members were able to tour under the name "The Marvelettes" in the United States due to a decision by Motown Records to sell their name to a promoter who had much younger girls on both coasts appearing as "The Marvelettes." 

"Did original Marvelette Gladys Horton regain control of the name?" I wondered.

And how many of the original Platters would be at this gig?  Certainly not Zola Taylor, who I knew had died last year.

Impersonators and tribute bands have long been a popular, inexpensive alternative to seeing the real musical groups, especially those who have passed away.  However, when a group falsely claims to include an original member and bills themselves as the real thing, they cross the line and become impostors.

(C): $200K Victory for RIAA May be Retried

by Shana Dines

In our previous article, Copyright: Registration Pt. 2, we mentioned the case of the Recording Industry Association of America (RIAA) suing Jammie Thomas for 24 counts of copyright infringement through the web-based P2P trading network, KaZaA.  In October 2007, the jury awarded the five record label plaintiffs (including Capitol and Sony/BMG) statutory damages of $222,000, which is less than 10% of what they were legally entitled to. 

Thomas filed an appeal 11 days after the jury verdict was entered on the grounds of excessive damages.  Finally, 7 months later, Judge Michael Davis filed an order stating that he was considering granting a new trial not based on excessive damages, but based on a possible "manifest error of law."  The hearing over this matter was held yesterday, August 4, 2008.  Although a decision will not be entered for another month, many commentators are expecting Judge Davis to declare it a mistrial.

Copyright: Perform. Rights vs. Local Radio Freedom Act

by Shana Dines

Back in February, we reported on the progress of the Performance Rights Act (H.R.4789, S.2500) in a three-part series of articles.  Part 1 provided the background of the bill, Part 2 explained the changes it would make to existing law, and Part 3 discussed the arguments for and against the bill.

On June 11, 2008, hearings on the Performance Rights Act were held in the House Judiciary Committee's Subcommittee on the Courts, the Internet, and Intellectual Property and on June 26, the subcommittee voted on and passed the bill.  Next is consideration by the full Judiciary Committee and, if approved, the bill will move on to the House of Representatives.

However, before the Performance Rights Act was proposed on Dec. 18, 2007, a Concurrent Resolution Supporting the Local Radio Freedom Act had been introduced in the House of Representatives on Oct. 31, 2007 that, if passed, would nullify the P.R.A.'s intended changes.

Imagine No Permissions

by Tony Berman

Researched & edited by Shana Dines

Since the U.S. District Court for the Southern District of New York decided against Yoko Ono Lennon earlier this month in a well-publicized copyright infringement case, many filmmakers are further confused about where the lines are drawn around the concept of “Fair Use”. 

Ono Lennon was denied an injunction against the makers of the documentary film "Expelled," about Intelligent Design theory, for using a 15-second excerpt from Lennon's renowned song "Imagine" without her permission.