SUPREME COURT TO DECIDE IF STATES ARE IMMUNE FROM LIABILITY FOR COPYRIGHT INFRINGEMENT
June 18, 2019
On June 3, 2019, the Supreme Court granted certiorari to hear the claim of filmmaker Frederick Allen and his video production company, Nautilus Productions, LLC that the Fourth Circuit erred when it held that the State of North Carolina is immune from suit for copyright infringement despite the enactment by Congress of the federal Copyright Remedy Clarification Act of 1990, which was intended to abrogate State immunity under the Eleventh Amendment or any other doctrine of sovereign immunity from suit in federal court for a violation of any of the exclusive rights of a copyright owner under the U.S. Copyright Act.
The case began two and a half centuries ago in 1717, when a ship named Queen Anne’s Revenge that had been captured from the French by the pirate Edward Teach, better known as “Blackbeard,” ran aground off the coast of North Carolina and sank. Under State law, the ship became the property of North Carolina. In 1996, the wreck of the Revenge was discovered by a research and salvage firm, Intersal, Inc., which entered into a salvage agreement with North Carolina. Intersal retained Nautilus to document the salvage of the Revenge. As a result, Nautilus accumulated a large archive of video and still images showing the underwater shipwreck and the efforts to recover various artifacts from it. Allen registered the copyrights in his works with the U.S. Copyright Office.
In about 2014, North Carolina began posting five of the videos owned by Allen on the State’s YouTube channel and distributed a newsletter that contained an article about the Revenge featuring one of Allen’s copyrighted still photographs. Allen and Nautilus filed suit in federal court for copyright infringement seeking declaratory and injunctive relief as well as statutory and compensatory damages. The State moved to dismiss on the ground, among others, that the State and its officials were immune from suit. In response, Allen and Nautilus argued that North Carolina’s sovereign immunity was abrogated by the federal Copyright Remedy Clarification Act of 1990.
The District Court rejected North Carolina’s claims of immunity, but on an interlocutory appeal, the Fourth Circuit reversed the District Court holding that Congress did not validly exercise its constitutional power when enacting the Copyright Remedy Clarification Act, and as a result, the Act did not serve to abrogate the immunity of North Carolina, its agencies or officials. The Court held that Congress cannot rely on its enumerated powers in Article I of the Constitution to compel a State to litigate copyright cases in federal court, and that Congress failed to satisfy the requirements for exercising its power under Section 5 of the Fourteenth Amendment to abrogate sovereign immunity.
This case is of particular importance to the entertainment industry as highlighted by the Recording Industry Association of America (“RIAA”) in its Brief as amicus curiae in support of Allen’s petition for writ of certiorari. RIAA is a trade organization whose members are the music labels that create and distribute about 85% of recorded music produced and sold in the United States. The RIAA is interested in making sure that copyright holders can effectively enforce their rights and obtain monetary relief for infringement whether the infringer is a private party or a State government and its officials.
It seemed that when Congress enacted the Copyright Remedy Clarification Act of 1990 (“CRCA”) to abrogate State sovereign immunity for copyright infringement claims, the matter was resolved, but lower federal courts since then have ruled that Congress lacked the power under the Copyright Clause in Article I of the Constitution or under Section 5 of the Fourteenth Amendment to take that step. As the RIAA stated in its Brief, “those rulings have effectively rendered the CRCA a dead letter.” As a result, “States are free to infringe copyrights with impunity, with nothing to deter them from that bad behavior.” Furthermore “such infringement is now accelerating at an alarming rate” particularly because of the nature of the copyrighted works. “Digital piracy of sound recordings and musical works, including by States, can be quick and easy to accomplish and is especially prevalent at the time of initial release” when a work may have its highest earnings potential. A copyright owner’s ability to sue for infringement and to seek damages as well as an injunction is a significant deterrent to such conduct.
For many people working in the entertainment industry, the entire value of the enterprise in which they are engaged lies in their copyrights. Congress attempted to remedy the problem of copyright infringement by States and their officials when it enacted the CRCA. The lower courts have eviscerated the CRCA however by holding that Congress exceeded its powers when it abrogated State sovereign immunity in claims for copyright infringement. The Supreme Court now has the opportunity to clarify whether States can be held to the same standards as private parties when it comes to enforcing the infringement provisions of the Copyright Act.
My thanks to Julia Anne McKeachie for her assistance in researching and writing this article.
CALIFORNIA’S RESALE ROYALTIES ACT STRUCK DOWN, LEAVING ARTISTS WITH NO RIGHT TO SHARE IN THE APPRECIATED VALUE OF THEIR WORKS
A recent decision by the U.S. Court of Appeals for the Ninth Circuit held that claims brought under the California Resale Royalties Act (“CRRA”), based on the resale of artwork after January 1, 1978, are expressly preempted by 17 U.S.C. § 301(a) of the U.S. Copyright Act. Chuck Close, et al. v. Sotheby’s, Inc., et al., Nos. 16-56234, 16-56235 and 16-56252, ___ F.3d ___ (9th Cir. July 6, 2018). The CRRA was enacted in 1976, and granted visual artists the unwaivable right under certain circumstances to receive 5% of the proceeds on any resale of their artwork. The right to resale royalties was limited to the resale of original paintings, sculpture or drawings and original works of art in glass. The seller of the artwork or the seller’s agent was required to withhold 5% of the resale price and pay it to the artist, or if the artist could not be found, to the California Arts Council. The artist could bring a cause of action for damages if the 5% resale royalty was not paid. In 2011, Chuck Close, Laddie John Dill and other artists or their estates sued the auction houses Sotheby’s, Christie’s and eBay alleging that the defendants in auctioning the artists’ works had violated their obligation to pay royalties to the plaintiffs under the CRRA. The District Court for the Central District of California dismissed the claims on the ground that the CRRA violated the Commerce Clause of the U.S. Constitution by purporting to regulate commerce outside the State of California. Estate of Graham v. Sotheby’s, Inc., 860 F.Supp.2d 1117 (C.D. Cal. 2012). On appeal, the Ninth Circuit in May 2015, agreed but held that the CRRA might nevertheless apply to resales of artwork taking place within California, and remanded the case to the District Court for further consideration. Sam Francis Foundation v. Christie’s, Inc., 784 F.3d 1320 (9th Cir. 2015), cert. denied, 136 S.Ct. 795 (2016). On remand, the District Court dismissed the complaint on the ground that the CRRA is preempted by the federal Copyright Act of 1976. Estate of Graham v. Sotheby’s, Inc., 178 F.Supp.3d 974 (C.D. Cal. 2016). The plaintiffs filed an appeal to the Court of Appeals for the Ninth Circuit which affirmed the decision of the District Court. Close v. Sotheby’s, supra.
California is the only state to have enacted a statute recognizing a resale royalty right for visual artists. The right to a royalty each time a work is resold is known as the droit de suite (literally, the right of following on) and finds its origin in a French law enacted in 1920. Since then, more than 70 countries have enacted a resale royalty law of some sort including Australia and most of the European Union, but not the United States.
In December 2013, the U.S. Copyright Office issued a report, Resale Royalties: An Updated Analysis, in which it concluded that “certain visual artists may operate at a disadvantage under the copyright law relative to authors of other types of creative works. Visual artists typically do not share in the long-term financial success of their works because works of visual art are produced singularly and valued for their scarcity, unlike books, films, and songs, which are produced and distributed in multiple copies to consumers. Consequently, in many, if not most instances, only the initial sale of a work of visual art inures to the benefit of the artist and it is collectors and other purchasers who reap any increase in that work’s value over time.” For example, the New York Times recently reported that the artist Robert Rauschenberg sold a collage, entitled “Thaw,” to a collector for $800, only to have the work sold later at auction for $85,000.
California’s attempt to address the disadvantage faced by visual artists through the CRRA however runs afoul of the preemption clause in the federal Copyright Act of 1976, which provides as follows:
On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State. —17 U.S.C. § 301
The Ninth Circuit held in Close v. Sotheby’s that the plaintiffs’ claims under the CRRA were expressly preempted by § 301(a). In reaching its conclusion, the Court used a two-pronged test: (1) does the subject matter of a claim under the CRRA fall within the subject matter of copyright as described in 17 U.S.C. §§ 102 and 103 of the federal law; and (2) if so, are the rights asserted under State law equivalent to the exclusive rights of copyright holders contained in 17 U.S.C. § 106? The Court answered in the affirmative to each question.
First, it was undisputed that claims under the CRRA for resale royalties on works of “fine art,” described as original paintings, sculptures, drawings or works in glass, fall within the subject matter of copyright under § 102. Second, the CRRA was held to run counter to § 301(a) by granting an additional right beyond what federal copyright law already provides while at the same time “reshaping the contours of federal copyright law’s existing distribution right.” Close v. Sotheby’s at ___.
The Court explained its reasoning by referring to the “first sale doctrine” codified in 17 U.S.C. § 109(a). Although a copyright owner has the exclusive right to control distribution of his or her work, the right is limited to the first sale of a copy of the work. The owner of a particular copy of a copyrighted work is entitled, without the authority of the copyright owner, to sell that copy. 17 U.S.C. § 109(a).
The Court found that the federal right to control distribution, as limited by the first sale doctrine, is equivalent to the CRRA’s resale royalty right because they “both concern the distribution of copies of artwork and define artists’ right (or lack thereof) to payment on downstream sales of those copies.” Close v. Sotheby’s at ___. The CRRA therefore expands the federal distribution right by granting artists a royalty of 5% on all downstream sales while the first sale doctrine limits an artists’ right to payment to the first sale. The CRRA also restricts the federal distribution right by forbidding artists from fully alienating, or transferring full ownership of, copies of their artwork because the right to a resale royalty in unwaivable. The Court considered this restraint on alienation to be at odds with federal copyright law’s existing distribution right.
The 1976 Copyright Act had an effective date of January 1, 1978. Prior to that date under the 1909 Copyright Act there was no express preemption provision in federal copyright law. The CRRA’s effective date was January 1, 1977. The Court therefore remanded the case to the District Court to determine if any of the plaintiffs’ claims under the CRRA arose between January 1, 1977 and December 31, 1977, the one-year period during which the CRRA coexisted with the 1909 Act.
The CRRA attempted to address the economic disparity faced by visual artists such as painters, illustrators, sculptors and photographers vis a vis the authors of other creative works protected by copyright such as literary works, musical compositions, sound recordings and motion pictures. The U.S. Copyright Office agrees that “under the current legal system, visual artists are uniquely limited in their ability to fully benefit from the success of their works over time.” Resale Royalties: An Updated Analysis, published by the U.S. Copyright Office, December 2013, at 1. While the authors of other creative works can receive income from various forms of reproduction and derivative uses of their works, the first sale of a work is the main or exclusive source of income for almost all American visual artists. Id. at 2. Since the resale of works created by visual artists may result in substantial financial gains for third parties such as auction houses, collectors and art galleries, it would seem fair that consideration should be given to enacting some form of resale royalty right, or droit de suite, under the Copyright Act for visual artists. The Ninth Circuit’s decision making the CRRA ineffective as a means of correcting the disparate treatment of visual artists under copyright law may provide the impetus for the issue to be reconsidered by Congress where previous efforts have died in committee.
BEYONCE LOSES ROUND ONE OF FAIR USE FIGHT WITH MESSY MYA’S ESTATE OVER THE USE OF SAMPLES
Messy Mya, whose real name was Anthony Barré, was shot and killed in New Orleans on November 14, 2010. Before his death, Mya had a YouTube channel where he would post videos of himself walking around the city rapping, making jokes and often insulting people. Mya was part of the Bounce Music phenomenon in New Orleans, and with his raspy voice, flowing hair in fluorescent colors and multiple tattoos, Mya was becoming a well-known New Orleans personality through his online videos.
In August, 2010, Mya created a video recording of himself walking in New Orleans, speaking in street vernacular, titled “Booking the Hoes from New Wildings,” and posted the video on YouTube. The video includes Mya saying “What happened at the New Orleans” and “Bitch, I’m back by popular demand.” About two weeks later, Mya posted another video of himself on YouTube titled “A 27 Piece Huh?” with more street jargon including the phrase “Oh yeah baby. I like that.”
In February 2016, world-famous recording artist Beyoncé released a single, and later a music video, titled “Formation” which included the voice of Messy Mya speaking the three phrases from his YouTube recordings: “What happened at the New Orleans,” “Bitch, I’m back by popular demand” and “Oh yeah baby. I like that.” In April 2016, Beyoncé released an album titled “Lemonade” that included the single “Formation.” The phrases from Mya’s video were also used during the “Formation World Tour” featuring Beyoncé.
On February 6, 2017, the Estate of Anthony Barré and Angel Barré, the sister of Anthony Barré, filed suit in the U.S. District Court for the Eastern District of Louisiana against Beyoncé Knowles Carter and her producers, record label, distributors and publishers for copyright infringement alleging that the defendants used “samples” from Anthony Barré’s copyrighted video recordings to make their recording and music video of the song “Formation,” and the album “Lemonade,” and on the “Formation World Tour,” all without permission. See, The Estate of Anthony Barré and his Sole Heir, Angel Barré v. Beyoncé Knowles Carter, et al., Civil Action No. 17-1057. The plaintiffs alleged that the “Formation” single, the “Lemonade” album and the “Formation World Tour” all were extremely profitable. They claimed damages in excess of $20 million for the unauthorized use of samples from Barré’s video recordings.
The defendants filed a motion to dismiss the complaint for failure to state a claim. They conceded that the “Formation” music video and the live performances during the “Formation World Tour” included approximately ten seconds of audio from Messy Mya’s YouTube videos. In particular, the defendants acknowledged that their music video uses four seconds of audio from the 5 minute and 14 second YouTube video titled “Booking the Hoes from New Wildings” and six seconds of audio from the 1 minute 53 second YouTube video titled “A 27 Piece Huh.” The defendants argued that although they did not have a license granting permission to use these samples from Mya’s YouTube videos, their use is protected by the fair use doctrine.
Fair use is an affirmative defense to copyright infringement found in the U.S. Copyright Act, 17. U.S.C. § 107. The Supreme Court has said that fair use is “a privilege in others than the owner of the copyright to use the copyrighted material in a reasonable manner without his consent.” Harper & Row Publishers, Inc. v Nation Enterprises, 471 U.S. 539, 549 (1985). A case-by-case analysis is required with respect to determining whether a particular use of a copyrighted work is a fair use. Section 107 provides a list of four relevant, but non-exclusive, factors for a court to consider in making the analysis: (1) the purpose and character of the use, (2) the nature of the copyrighted work, (3) the amount and substantiality of the part used in relation to the copyrighted work as a whole and (4) the effect of the infringement on the market for or value of the copyrighted work.
The defendants chose not to rely in their motion to dismiss on a claim that the plaintiffs failed to plead facts in the complaint sufficient to show that the defendants’ use of samples from Mya’s video recordings was more than a de minimis copying. Although the Sixth Circuit’s decision in Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792 (6th Cir. 2005), provided a bright-line rule that the de minimis exception to copyright infringement does not apply to the sampling of copyrighted sound recordings (the Court said, “Get a license or do not sample.”), the decision has been criticized, and a split between the Circuits was created when the Ninth Circuit held that the de minimis exception does apply to infringement actions concerning the sampling of copyrighted sound recordings. VMG Salsoul, LLC v. Ciccone, 824 F.3d 871 (9th Cir. 2016). A use is typically regarded as de minimis however only if the average audience would not recognize the appropriation as having been taken from another work. 824 F.3d at 878. A claim that the taking in Mya’s case was no more than de minimis might not pass the “average audience” test. Moreover, the defendants conceded the importance of Mya’s audio to their use of Mya’s samples when they admitted that the samples were used as “raw material” for the creation of their music video and concerts which were about “black Southern resilience that featured depictions of the history and culture of New Orleans.”
On July 25, 2017, the District Court denied the motion to dismiss filed on fair use grounds by Beyoncé and the other defendants. The decision was necessarily narrow in scope because on a motion to dismiss, the court had to make its decision based only on whether the plaintiffs alleged sufficient facts which, if true, would show that the 4-factor fair use test could ultimately weigh against a finding of fair use. Although entered at an early stage of the litigation, the decision suggests that the defendants may have a difficult time in convincing the court to sustain a fair use defense later in the case.
For example, the first factor in a fair use analysis, the purpose and character of the use, including whether the use is of a commercial nature or is for nonprofit educational purposes, would seem ultimately to weigh against Beyoncé and the other defendants. In analyzing this factor, courts will usually consider whether the infringing use is “transformative;” that is, does the use add something new with another purpose or a different character to the copyrighted work, or does it merely repackage or republish the original? In this case, unaltered portions of Mya’s audio recordings were merely taken and inserted directly into the defendants’ works. The defendants cannot disagree but assert that their purpose for the use, that is, to depict the history and the culture of New Orleans, is different from Mya’s stream-of-consciousness narrative to the camera as he walks the streets of the city.
The court found that based on the allegations in the complaint, the defendants’ use of Mya’s copyrighted work was not transformative. The defendants did not change or alter the expressive content or message of Mya’s recordings but rather, used unmodified samples without adding anything new. The samples were taken directly and used merely as an “illustrative example of New Orleans culture through the voice and catchphrases of a well-known local icon.” The first factor in the fair use analysis therefore could ultimately weigh against a finding of fair use.
The court discussed each of the other three factors to consider in a fair use analysis and found that at least at this early stage of the litigation, the plaintiffs had alleged facts sufficient to show that each of the factors could weigh against a finding of fair use. The court therefore denied the defendants’ motion to dismiss the plaintiffs’ complaint on the ground of fair use. Artists, songwriters, producers and attorneys in the music business will be watching closely for the outcome of the Barré case to see if fair use might be a viable defense to copyright infringement where samples have been taken from copyrighted sound recordings without permission. There are apparently no decisions directly on point. The defendants in this case used a verbatim copy of an audio recording simply for another purpose than that for which it was originally intended. The sample itself was not modified or otherwise transformed. In Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013), where the defendant’s alteration of 25 of the plaintiff’s Rastafarian portraits was held to be fair use, the court refused to find as a matter of law that 5 other portraits with only minimal alterations were protected by a fair use defense. In the Barré case, the defendants did not alter the samples from Mya’s videos at all before using the samples to create their own works.
HOW SONGWRITING TEAMS CAN AVOID DISPUTES
Jerry Leiber, a lyricist from Baltimore, teamed up with Mike Stoller, a music composer from Long Island, in the 1950s to write such hit songs as “Hound Dog” for “Big Mama” Thornton, later immortalized by Elvis Presley, and “Yakety Yak” for The Coasters.
Felice and Boudleaux Bryant were a husband and wife songwriting team remembered for their country and pop tunes recorded by many famous artists such as The Everly Brothers, Roy Orbison and Buddy Holly.
Cynthia Weil and Barry Mann are songwriters who have collaborated to write many tunes including “He’s Sure the Boy I Love” for The Crystals, “Blame It on the Bossa Nova” recorded by Eydie Gorme, and “You’ve Lost that Lovin’ Feelin’” with Phil Spector, for The Righteous Brothers.
Trivia: What else do all of these songwriters have in common? The answer is at the end of this article.
Behind the music, each of these songwriting teams is made up of collaborators whose songs are deemed jointly created works under U.S. copyright laws. A joint work is created when two or more authors intend to merge their original contributions into a single work. The authors then become co-owners of a copyright in that joint work.
Back in the day, songs that were played on the radio typically were composed by one or more songwriters whose sole job it was to write hits for artists to record. Occasionally, the names of superstar artists like Elvis Presley would appear on the songwriting credits even though they had no role in writing the song.
Over time, more and more artists began writing their own songs, sometimes in collaboration with people who made their living behind the scenes. For example, “Stand by Your Man” was written by Tammy Wynette, who sang the song, and her producer, Billy Sherrill.
Today, songwriting credits are often split among many people, some of whom may have provided the track, the lyrics or the melody, as well as band members who may have simply been in the room when the song was created adding vocal arrangements or a keyboard riff. For example, the #1 hit for Katy Perry in 2014, “Dark Horse,” was co-written by Ms. Perry, her guest vocalist, Juicy J., and four other writers.
Establishing splits among joint authors is important primarily because a song has the potential to earn royalties for many years after it is written, and royalty checks will be dispersed among those credited with having written the song.
Mechanical royalties have to be paid by record companies to songwriters and their music publishers for the right to distribute a song on CDs and through digital downloads. Public performance royalties are collected by organizations such as BMI, ASCAP or SESAC and distributed to songwriters and their publishing companies when songs are played on the radio, streamed over the Internet, or performed in clubs or at concerts. Songwriters and publishers also receive large fees from synchronization licenses when their songs are used in films, television shows or commercials.
The failure of joint songwriters to enter into an agreement when a song is first written defining their rights and obligations can lead to real problems down the road. For example, if a band that has been together for several years decides to break up, the songs they have written may constitute a valuable asset that will need to be divided among the members. The lead singer may feel that she wrote 100% of all the songs, but others in the band may have a different viewpoint if they made contributions to the music.
Even when a member is claiming co-ownership for a contribution that arguably would technically not meet the legal standard under copyright law to make him a joint author of the song, it may be necessary to reach an agreement with the member to avoid a contentious situation. It is far better to have an agreement in place ahead of time than to try to negotiate one when money is on the table and nerves are frayed.
Some bands will take the position that regardless of who contributed what to the creation of a song, all of the members own it in equal shares. Other bands may recognize that one member is primarily the songwriter, and that her share of each song is greater than the shares of the other members. In many cases, the band will reach an agreement with respect to each song when it is created establishing splits among the members based upon their contributions.
If there is no agreement between the individuals who claim to be the authors, or owners, of the copyright however general copyright law will govern ownership disputes. Litigation may be necessary to determine whether a song is a “joint work” and if so, who the joint authors are.
A resolution of the dispute will depend on the facts and circumstances surrounding creation of the song. Did each person claiming ownership contribute an independently copyrightable element to the work, or was the contribution merely a non-copyrightable idea? Did the individuals intend to merge their contributions into a single work, or did the lyricist write words for an instrumental track that had been composed months before?
Although many artists do not like to attend to the business side of the music industry, an agreement between them is very important to avoid disputes or even litigation over joint ownership of a song. The agreement should address the following issues, at a minimum:
- Who is entitled to joint ownership of a song and in what proportionate share?
- How will the songs be registered in the U.S. Copyright Office?
- Who will be responsible for registering them?
- Will each songwriter be permitted to exploit the jointly owned song, or will one of the authors be designated as having the sole administrative responsibility for exploiting it?
- Under what circumstances will unanimous consent to a particular use of a song be required, and when can the administrator act alone?
- How will the expenses of exploiting a song be divided among the collaborators?
- What restrictions, if any, should there be on transferring an interest in a song to another party, such as to an heir when a co-owner dies or to a spouse when there is a divorce?
If joint songwriters do not reach consensus on these issues before disputes arise, the result may be the destruction of friendships and costly litigation.
Answer to the trivia question: Each of these songwriting teams wrote at least one song that was covered by The Beatles.
MUSIC CLEARANCE: “GIRLS JUST WANT TO HAVE FUN”
You have almost finished editing your first full-length novel and are belatedly beginning to think about how to get people to buy it. The book will be self-published, but how do you promote a self-published book? A friend suggests creating a “book trailer” that you could post on YouTube and Vimeo and use in online social media. A “book trailer” is a short video advertisement for a book similar to a “movie trailer” that is used to promote a motion picture.
Your novel is about a young woman who has graduated from high school but is still living with her parents while holding down a job as a waitress. She works during the day and parties at night. Her parents are dismayed that their daughter seems completely satisfied with her lifestyle. There is a dark side however to their daughter’s seemingly hedonistic pursuits about which her parents are very much unaware.
It occurs to you that the perfect music for your book trailer would be Cyndi Lauper’s recording of “Girls Just Want to Have Fun.” You know from being a writer that copyright law protects original works of authorship, but you’re not sure how that translates into using Ms. Lauper’s song in your book trailer. You decide to consult an entertainment lawyer for advice.
Your lawyer explains that there are two copyrights in a recorded song: first, the copyright in the musical composition which includes the lyrics and melody, and second, the copyright in the sound recording. In order to use Cyndi Lauper’s recorded version of “Girls Just Want to Have Fun,” you will need permission from the songwriters (who usually will have turned over their rights in the song to a publishing company) and permission from the record company that owns the rights to Cyndi Lauper’s recording of the song. Neither party is required to grant permission. It is up to you to convince them to grant you the rights on terms that are acceptable to both of you.
Obtaining the permissions needed to use Cyndi Lauper’s recording of the song is called “clearing” the music for your book trailer. A grant of rights from the music publisher is called a “synchronization” or “sync” license. The right to use a particular recording of a song comes from the recording company and is called a “master use license.” Your lawyer suggests that locating the rights holders may be difficult and negotiating deals with each of them for realistic licensing fees is likely to be impossible, but you decide to give it a try. After all, the trailer is only going to be 30 seconds in length.
The place to start to find out the names of the songwriter(s) and their publishing company or companies is usually BMI, ASCAP or SESAC. These are all performing rights organizations, and they cannot grant a synch or master use license, but they often have music publishing information available in their online databases. ASCAP’s “ACE Repertory” indicates that “Girls Just Want to Have Fun” was composed by Robert Hazard, and that the music publisher is Sony/ATV Tunes LLC in Nashville. To find that a song was composed by a single songwriter with a single publisher is fortunate and somewhat unusual. It is not at all uncommon for the ASCAP, BMI or SESAC database to show a song being written by several composers all affiliated with different music publishing companies. Synch licenses would have to be negotiated with each of them.
Your next step would be to contact Sony publishing and present your request to use their song in your trailer usually on a form that the publisher will provide for you. It is important to be very professional, use letterhead and be specific about how the song will be used. Remember that the publisher gets lots of requests for sync licenses, and that in order to maintain the value of each song, the company must be careful in granting any licenses. Since you are not known to Sony publishing, they will want information upon which they can evaluate the credibility of your project. They will ask how much of the song will be used, what will be on-screen while the song is being played and the nature of the novel particularly the dark side of the daughter’s nightlife with which they may not want their song to be associated. You should be open in your responses because you do not want to be granted a license and then have the publishing company find that the song is being used in a way not contemplated by the license. After submitting your request, the publisher will get back to you, usually in 30 to 90 days, with a quote and proposed deal points. At that time, you can either continue to negotiate the terms of a license yourself or turn it over to your lawyer to finalize the agreement.
While you are in touch with Sony publishing, you also will want to be negotiating with the record company that owns the rights to Cyndi Lauper’s version of “Girls Just Want to Have Fun.” She released her first solo album “She’s So Unusual” on the Portrait label in 1983. The album featured several hits including “Girls Just Want to Have Fun.” Portrait dissolved in 2002, and “She’s So Unusual” was re-released on its 30th anniversary in 2014, on the Sony Legacy label. You find that Sony Legacy is a division of Sony Music, and that licensing master recording rights from a Sony Music artist goes through its website at www.sonymusiclicensing.com. Sony Music will also want information about how Ms. Lauper’s song will be used, who wants the license, the nature of the novel and other facts about the trailer. Again, they do not have to grant a license and will be protective of the property that they own.
MUSIC IN FILM
There are a lot of variations in making a deal for music in a theatrical film. For example, the director or producer may be interested in having a particular artist perform music in a film, or the deal may be for use of a song only, and it may be an existing song or one created specifically for the movie. The film may also need background music known as the underscore, or the score, written by a composer hired by the film company. Apart from the film, there may be a soundtrack album and other uses for the music. This article addresses only the use of existing music in theatrical films not made especially for television.
The music for most films today is coordinated by a music supervisor. He or she will consult with the director and producer to determine what music they want for their film. They may have specific artists or songs in mind, or they may rely on the music supervisor to make suggestions and decisions. The music supervisor is then responsible for contacting the people whose music has been selected for the film and for negotiating the deals to put the music in the film. Music supervisors act as liaisons between the worlds of music and film production.
An artist who writes and records his or her own music may be contacted one day by a music supervisor who tells the artist that the director of a new film has always liked his or her music and would like to include an old song of the artist in the film. This is an ideal situation for the music supervisor since the artist controls all of the rights to his or her music. In many cases however there will be separate deals to be made with a music publishing company, a record company and other rights-holders for the film company to acquire the rights to use a song in a film. In those cases the performing artist or songwriter may have a minimal role as the right to license a song for use in a film may have been granted to a record company or publisher. Remember however that the film company has to obtain both the right to the musical composition and the right to the particular recording of the song so if the artist has retained the right to either the master recording or the publishing the artist has to be involved in any deal with the film company.
The right to use a particular master recording of a song in a film is acquired by a master use license. The most important elements of a master use license are typically the territory (usually the universe), the term (in perpetuity), the nature of the use, the extent of the grant of rights and the fee for those rights. At a minimum, the music supervisor will want to establish in the agreement that the film company will pay a certain amount for use of the recording in the film. The fee typically includes a buyout of all rights to use the recording in the film and for in-context advertisements in all media as well as United States theatrical performance rights and the right to release the film on DVD. The agreement may also provide for use of the song on a soundtrack album as well as other uses. If so, a fee or royalty for such uses would be in the agreement. If not, the artist would be free to negotiate separate agreements for these uses at a later time.
When negotiating the master use license, or if the artist is asked by his or her record company for consent to a license, it is always important to determine how the song is going to be used in the film. The artist may, or may not, want to avoid scenes depicting sex, violence or drug use while the song is being played in the film. Moreover, the artist should be sure to negotiate for appropriate credit in the film which should be no less prominent than the credit given to others whose master recordings are used in the film.
The second license that has to be obtained by the music supervisor is a synchronization license for the use of the musical composition in a film. If the artist wrote the song and owns the publishing, the music supervisor has to make a deal with the artist. If a publisher controls the rights to a song, an agreement must be made with the publisher. The fee is typically for a buyout which often is identical to the master use fee. If there is a reason for the song to cost more than the master recording however the fee does not have to be the same and can be negotiated upward such as when a well known song is covered by an unknown artist. In that case, the synch license fee will almost certainly be more than the master use license fee.
Separate licenses may have to be obtained from the owner of a master recording that is sampled in the recording being used in a film and from the publisher who owns a song that has been sampled. Samples are pieces of other songs and recordings that may be incorporated in the song being licensed for the film. The music supervisor has to be careful to be sure that the owners of sampled material have licensed the rights to use any samples in the film.
A third revenue stream for the songwriter and publisher of a song used in a film is the public performance royalty that typically is collected by BMI, ASCAP or SESAC. Whenever the song is aired in the film over a television station or in foreign (but not U.S.) theatres, performance royalties are collected and paid to the songwriter and publisher of a musical composition. It is important therefore that the licensor of a song for a film obtain a “cue sheet” from the production company and make sure that it is filed with the applicable performing rights organization so that royalties can be collected and paid out.
Licensing music for a film can be quite complex, but the results can also be quite satisfying especially when the film is a success.