So you’re a talented songwriter and damn it, you deserve a big publishing deal! Now, if only a well-connected, successful, efficient music publisher would listen to your music with the same enthusiasm in which you created it, it’d be a done deal! You’d be set!

So, how-oh-how do you get to that music publisher so he or she can offer you the deal you have worked so hard for and that you most certainly deserve? How do you find that person that will share in your passion that transcends into your music, who really understands each song, who will do everything he or she can to sell and/or license those songs over and over again?

Well, think back for a minute to all of the networking events you’ve attended; to the places where you wrote those songs for countless hours; to the pitch meetings you landed; to those encouraging meetings you held with your manager. Now, think of the one thing each of those places or events had in common → you!

Your publisher is your greatest untapped resource and quite likely, it is you! Who better knows your music? Who better can you entrust it with? Who better to really work hard for the money? Who better to run your business, than you? Likely, nobody!

Upon inspection, you would find that many, if not most successful songwriters in any large publishing company are, more times than not, persons that first became successful music publishers on their own. They simply learned, some for the sake of survival, how to pitch their music; how to develop and manage their catalog; how to secure and protect their copyrights; how to build not only a business plan, but a business team and; how to create a presence or ‘buzz’ for themselves in the infamous ‘industry.’ And, once they had done so and in turn, established for themselves an operable entity, they then also stood in a much greater position to enter into a coventure relationship with a larger, more productive and more lucrative company.

Taking this strategic and time-tested approach to building your career can prove invaluable! It is simply reasonable and not only common but, common sense, that a large publishing company is much more likely to coventure with an established, smaller company than it is to bring on a beginning writer where they would have to assume a greater risk and the consequent burden of making the relationship successful.

Also, you may wish to keep in mind that most publishing deals nowadays are co-publishing deals whereby the writer receives 100% of the writer’s share of income and also a portion of the publisher’s monies. Does this sound like a deal that favors the writer? Well that’s only because it does! Maybe not such a terrible idea after all, this be-your-own-publisher idea, eh!?

If you’re still finding this to be a daunting task and need inspiration, just read the biographies of songwriting legends like Carole King and Jerry Leiber who followed a similar path. You’ll see that it may be more fiction than fact that days existed where songwriters worked in isolation, tapping their foot to the beat of their own drummer while their songs were being shopped all over town. Rather, an aggressive, strategic and well-thought out approach that is focused on shaping those musically-inclined dreams into reality is not only time-tested, but reasonably, provides more probable results.

Are there any guarantees? Well of course not! You don’t need anyone to tell you that. However, while common sense is sometimes not all that common; common sense here will tell you that creating your own publishing company and working hard to develop not only its operations but, its value, stands a much better chance of tendering you the riches and success you seek than does waiting for someone to show up at your door and offer it to you. Don’t get me wrong. . . it can happen; but I might rather choose the former approach . . .at least until someone comes a-knockin’!

“Happy Birthday to You” is likely the most well-known and most frequently sung song in the world.  For nearly a century, this brief 4-line ditty has been sung to birthday celebrants everywhere irrespective of age, status, race or creed.  It has been sung in space; it has been sung under water; it has even been mechanically manipulated into greeting cards, watches, music boxes. . . the list goes on.  As such, its omnipresence serves as but one reason for the surprise received when people discover that it is copyrighted and therefore protected by federal law!  That’s right – each time you sing “Happy Birthday to You”, you may be committing copyright infringement!

So who owns the “Happy Birthday” song?

The media conglomerate, AOL Time Warner, owns the “Happy Birthday” song, that’s who!

It all began in Kentucky in 1893 with two sisters, Mildred and Patty Hill.  Both originally nursery school and kindergarten teachers, respectively, Mildred’s career took a musical turn to that of a composer, organist, concert pianist and a musical scholar.  While working at the same school her sister had become principal of years later, the two created a simple melody known as, “Good Morning to All”, for teachers to use when welcoming students to class each day. It went like this:

Good morning to you,
Good morning to you,
Good morning dear children,
Good morning to all.

The Hill’s song became more commonly known as “Good Morning to You” and was published that same year in a songbook titled, “Song Stories for the Kindergarten”.  Thirty-one years later, a gentleman named Robert Coleman edited the songbook, replacing the sisters’ lyrics with a second verse, “Happy Birthday to You”.  In 1924, and without the sisters’ permission, these popular new lyrics began being published as a second stanza to “Good Morning to You” in a number of books and eventually, the original lyrics disappeared altogether.

Within a few short years, the catchy song had made its debut in two Broadway musicals and was even a part of Western Union’s first “singing telegram.”  The Hills, however, were not compensated for any of the song’s uses.  Subsequently, a third Hill sister, Jessica, who had administered the copyright to “Good Morning to All”, filed suit to prove that “Happy Birthday to You” was her sisters’ song only with altered lyrics.  Using the “substantial similarity” test, the Court agreed and, in 1934, the Hills were officially awarded the copyrights to the song.

So, is Grandma going to get sued for singing “Happy Birthday” to little Susie?  Most likely, no.  Royalties are due for commercial uses of the song such as playing or singing it for profit, using it in movies, television programs or in stage shows, or incorporating it into musical products such as watches and greeting cards.  Royalties are also due for the “public performance” of the song which is defined by copyright law as performances which occur “at a place open to the public, or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered.”  Therefore, crooning the song to family members and friends at home is fine; however, performing such a copyrighted work in a public setting requires a license.  Ever notice on some sitcoms how the crowd sings, “For He’s a Jolly Good Fellow” in lieu of “Happy Birthday to You” or; how certain restaurants have their own rendition of the “Happy Birthday” song?  Well, now you know. . . they’re not just being creative.

Don’t think they’ll catch ya?  Tell that to the 6,000+ summer camps, including the Girl Scouts, that received letters warning them that they had to pay royalties for public performances of any copyright works.  It’s sad to think of the camp counselor too frightened to sing “Puff the Magic Dragon” around a camp fire, don’t you think?  Nevertheless, publishing houses like ASCAP and BMI have field agents on payroll for this very reason.  And when pursued, settlements may be quietly reached outside of court for a few-hundred to a few-thousand dollars, but, it’s worth noting that copyright law provides for fines of up to $30,000 for each infringement and up to $150,000 if the infringement is willful, plus attorney’s fees.  Not such a happy birthday after all!

So when is this song and dance over?  Well, after acquiring the company that held the rights to “Happy Birthday to You” for a reported $25 million in 1998, current copyright law provides AOL Time Warner with rights to the song until at least 2030.  And seeing as the song is estimated to bring in about $2 million a year in royalties, it’s doubtful they’ll ignore many royalty-deserving opportunities.  Consequently, before you perform your next impromptu “Happy Birthday” rendition in public, you may want to look around to see if anyone appears to not only be entertained but, is taking notes.

The creative process that is so closely tied to the success of the entertainment industry often raises questions regarding ownership of creative works. While copyrights usually rest with the creator of a work, certain agreements can be made that transfer these rights to another party.

Generally, copyrights rest with the author or authors who originally create a work. However, the Copyright Act of 1976 contains a major exception, the “Work Made for Hire” Doctrine, which challenges the fundamental principle that copyright ownership lies with the individual who creates the work. In the case of a “Work Made for Hire,” the party for whom the work was completed is considered the author and thus holds the copyrights to the work created rather than the party who actually authored the work.

A Work Made for Hire is not, however, any work that you pay someone to create for you. In addition, it is not any work that you and a developer simply agree is a Work Made for Hire. Rather, “Work Made for Hire” is a specifically defined term in Copyright Law and applies only when certain conditions are met.

Disputes over what constitutes a “Work Made for Hire” often arise over two main issues: the distinction between an employee and a non-employee or independent contractor and whether or not the work in question qualifies as one or more of the nine categories outlined in the Copyright Act.

Section 101 of the Copyright Act defines a “work made for hire” as either:

1.  a work prepared by an employee within the scope of his or her employment; or

2.  a work by a freelancer (independent contractor) which is specially ordered or commissioned for use as a translation, as a part of a motion picture or other audiovisual work, as a contribution to a collective work, as an atlas, as a compilation, as an instructional text, as a test, as answer material for a test, or as a supplementary work such as a preface to a book, a forward or a musical arrangement, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.

If the condition of category one is met, copyright ownership belongs to the employer unless an employment contract specifies that the creation of copyrightable material is not within the scope of employment. If the creation of the work falls outside the scope of employment then the employee, and not the employer, would have copyright ownership of the work.

If the conditions in category two are met, then the party hiring the freelancer would own the copyrights. If, however, these requirements are not strictly followed and the work falls outside the nine categories enumerated by the Copyright Act or a written agreement does not exist, then the freelancer would retain copyright ownership in the work.

Los Angeles intellectual property attorney, Anthony Spotora, commented, “It is the lack of a written instrument specifying the intended “Work-Made-for-Hire” relationship with independent contractors that commonly creates “Work-Made-for-Hire” copyright ownership issues. All too often, the intended owner seeks to argue that a “Work-Made-for-Hire” relationship was agreed upon, although it was stated only verbally. Subsequently, authorship of the work at issue ultimately winds up with its creator, rather that the intended owner. The second biggest misperception in freelance arrangements is that a written agreement specifying that a work is intended to be created on a “Work-Made-for-Hire” basis makes it so when, in fact, that is only the case if the work falls into one of the nine exceptions listed in Section 101 of the U.S. Copyright Act.”

Anthony Spotora is a Los Angeles entertainment lawyer and Los Angeles business attorney. To learn more, visit Spotoralaw.com.

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So what happens when your business name becomes someone else’s domain name? What happens when a layman registers www.mcdonalds.com before the billion burger server commonly known as “McDonald’s” does? What about when Hasbro and an adult entertainment website both desire the rights to www.candyland.com, but the adult site beats Hasbro to the proverbial punch or; when an MTV Video Jockey purchases www.mtv.com, but then leaves MTV? What happens?

For a time, these amounted to little more than good questions. It was clear that intellectual property rights were in question, being jeopardized and/or infringed upon, but the courts had not yet faced these new age digital era issues. Naturally, litigation ensued; actually, it boomed! Consequently, it also became increasingly obvious that with more than 3,000,000 registered trademarks and service marks; more than 33,000,000 internet domain names having been registered and; with the advent of phraseology like, “cybersquatting” and “typosquatting,” these issues were not going to quickly dissipate on their own. Subsequently, a coalition of internet business, technical, academic and user communities joined forces to find a means of resolution; resolution that would be short of a future bursting at the seams with litigation.

In October 1998, the Internet Corporation for Assigned Names and Numbers (ICANN) was developed and, amongst other things, this private-sector nonprofit organization became responsible for the management and coordination of the internet domain name system (DNS). As part of its policy, ICANN enacted the Uniform Domain Name Dispute Resolution Policy (UDRP) to provide a mechanism for trademark owners to recover domain names from cybersquatters. Moreover, all domain name registrars having the authority to grant top-level domains (i.e., .com, .net, etc.) would now be required to follow the UDRP which included a streamlined “cyber arbitration” procedure to more quickly and less expensively resolve domain name ownership disputes involving trademarks.

In order to win a UDRP arbitration, the trademark owner/complainant must prove each of the following elements:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
2. The domain name owner does not have any rights or legitimate interests in respect of the domain name; and
3. The domain name owner registered the domain name and is using it in “bad faith”.

If the trademark owner is successful in proving these elements, an award is granted whereby the registrar of the domain name is instructed to cancel, transfer or otherwise make changes to the domain name registration.

In light of the examples questioned above:

1. Candyland.com is now safely in the hands of Hasbro;
2. McDonald’s made a charitable contribution at the domain holder’s request to transfer the domain name; and
3. MTV settled out of court with Video Jockey, Adam Curry.

“Damn Bratz!” is surely echoing through the hallways of mega toymaker, Mattel, Inc., as the Ninth Circuit Court of Appeals has overturned the Barbie doll maker’s multi-million dollar verdict and injunction against competitor, MGA Entertainment, maker of the Bratz doll line.

Presiding Chief Judge Alex Kozinski stated that not only did former U.S. District Court Judge Stephen Larson err in ordering MGA Entertainment, Inc. to transfer the Bratz IP portfolio to Mattel but, that the ruling was an “abuse of discretion.”

“Unlike the relatively demure Barbie, the urban, multi-ethnic and trendy Bratz dolls have attitude,” Kozinski commented.  “America thrives on competition; Barbie, the all-American girl, will too.”

In August 2008, a federal jury concluded that former Barbie designer, Carter Bryant, was under contract with Mattel when he sold some of his sketches to MGA Entertainment and that those sketches ultimately led to the production of the Bratz doll line.  Consequently, the jury ordered MGA to pay Mattel $10 million in damages (of the nearly $2 billion sought) and further granted it a constructive trust over MGA’s entire Bratz IP portfolio.

“Even assuming that MGA took some ideas wrongfully, it added tremendous value by turning the ideas into products and, eventually, a popular and highly profitable brand”, the three-judge appellate panel said in an opinion (click to view opinion) written by Chief Judge Alex Kozinski. “It is not equitable to transfer this billion dollar brand – the value of which is overwhelmingly the result of MGA’s legitimate efforts – because it may have started with two misappropriated names.”

It appears that the 9th Circuit Court has reaffirmed the long-standing principle that copyrights cover only the particular expression of an idea, but not the idea itself.

Music publishing is a complex process that requires extensive knowledge of proper business practices and copyright law. A music publisher can help songwriters reap the benefits of their creativity.

While publishing their own music is a viable option for artists, the legal issues involved can be messy and complex. In order to avoid dealing with these issues, many artists turn to music publishers for help. Music publishers perform a variety of different functions for songwriters, as they have the expertise required to manage licenses and collect royalties.

One of the most important functions of a music publisher is to help an artist collect royalties. Royalties fall into two main categories: mechanical royalties and public performance royalties. Mechanical royalties are those fees paid to the copyright owner, usually the songwriter and the publisher, for the right to reproduce the song on some type of recording. Under the U.S. Copyright Act, once a song has been commercially released, any other artist can record and release their own version of the song, provided that they pay the copyright owner the minimum statutory royalty rate for every single copy of their version that is pressed or distributed.  This rate increases periodically and is calculated differently for songs that are over five minutes in length.

Public performance royalties are collected when a song gets played in public at a concert, in a nightclub, on television or the radio, etc. The copyright owner of the work is entitled to payment for each performance of the song. However, in order to collect this money, the songwriter will need to register as a member of a performance rights society which will collect royalties from those playing the songwriter’s music.

Not only do music publishers handle the collection of royalties, they also help songwriters manage the licensing of their songs to record companies and other interested parties. There are two main types of licenses that generate income for songwriters: synchronization licenses and print licenses. Any time the performance of a song is accompanied by a visual, a synchronization license is required. These licenses are issued when a song is used in a movie, television show, video game, or other type of visual medium, and the fee varies based on the usage and importance of the song.

A final way of earning income is through print licenses. While sheet music is not as popular as it once was, many songs are still available in print form. A music publisher will issue print licenses and collect income from the sheet music company, and the songwriter will receive a small royalty derived from the sale of his or her song.

Navigating these four possible sources of income can be difficult for an artist to do alone, and the knowledge a music publisher possesses in these areas can be a great benefit to artists. Entertainment and intellectual property lawyer Anthony Spotora commented, “Whereas music publishing seems to exist somewhere in the shadows of the music industry, good music publishers can be worth their weight in gold to songwriters.  In fact, hidden behind many of the ‘majors’ commonly lies a publishing division which often generates more annual revenue than does its label cohort.  And yet, even those who have been cast deep into the music industry itself often do not fully realize the role that a music publisher can play in the life of a songwriter and, more importantly, in the life of his or her music.  A good music publisher satisfies 5 primary duties: exploitation, administration, collection, protection and acquisition.  When they do their job well, many songwriters can finally begin to appreciate what it means to receive ‘pennies from heaven.’ ”

Music publishers can be a great asset to artists, but it is important that songwriters know their rights before entering into an agreement.  As a full-services business law firm Spotora and Associates provides exceptional guidance to songwriters considering entering into a publishing agreement, and has specialized in advising entertainment artists of their legal rights in the areas of intellectual property and entertainment law for over 15 years.

For more information, contact us.