ASCAP Expo: Joint authorship and collaboration agreements

I was on a panel with some great music lawyers at ASCAP Expo on 4/30 in Los Angeles.  We had a great room of songwriters and artists, and I told them I’d post my notes.

1.  What makes someone  a joint author?

The US Copyright Act defines joint authorship as a contribution by two or more authors with the intent that
their works be joined “as inseparable or interdependent parts of a unitary whole”, but courts have looked to objective evidence that the authors intended the contribution to be a collaboration and regarded themselves as joint authors, usually at or near the time of creation.

2.  Songwriting Collaborations

A good way for songwriters to produce this evidence is to sign a collaboration agreement  that, at a minimum, identifies the songwriters as joint authors and their splits.  These can be very simple agreements.

If one songwriter is an  artist-writer and the other songwriter is not part of the group or is not an artist, the artist-writer will have special issues with the collaborationagreement.  A frequent scenario is that the artist-writer collaborates with a producer.

The artist will want to be sure that at a minimum, the producer agrees to be subject to the same mechanical license terms that apply to the artist under the artist’s recording agreement.  This is also called the “controlled compositions clause” in the artist’s recording agreement.

The controlled compositions clause sets the maximum mechanical royalty that the record company will pay for the songs on the artist’s recordings.  This right needs to be preserved if the artist is signed or anticipates being signed.

For independent artists or artists who anticipate a year or more of development before being shopped, another
big concern is the ability of the artist to approve licenses for 100% of the whole song.

3.  Co-owner rights

At least in the US, joint owners of property have the right to grant non-exclusive licenses in 100% of the work subject to a duty to account (and potentially subject to a law suit for “waste”).

This is the theory that is reflected in controlled compositions clauses seeking to bind co-writers who are not parties to the agreement.

However, there is an argument that the “first use” of a song is not a non-exclusive license because the first use can only be granted once.  Even under the US regime of compulsory licensing for songs, that compulsory license does not apply to the first use of a song.

It is a good idea to get an actual agreement to the controlled compositions terms among the co-writers because even though the record company will impose obligations on the artist-writer by contract, the artist-writer may not be able to impose
those obligations on the co-writer by law.

Even in the absence of a record deal, it is a good idea for artist-writers to avoid having to get  the consent of non-artist co-writers for licenses of the artist’s recordings.  Artists may wish to take advantage of opportunities to license at free
or near free pricing.  They can find themselves blocked by producers or producer’s publishers who have their own agendas with the licensee that have nothing to do with the artist.

For example, we had an artist-writer who co-wrote with a writer signed to a major publisher who routinely denied uses for Channel One.  Our artist was unable to participate in Channel One because the publisher had a “policy” and was trying to use its market power to force Channel One to pay royalties.

Both have a legitimate argument—however, it is the artist’s career and the artist’s song and the artist invited the co-writer to participate.

3.  Sound Recordings:  Remember that co-authorship is not limited to songs.  It can apply to sound recordings or any work of copyright.

Here’s a sound recording example.

A producer developed an artist for a period of years and had a rudimentary written agreement that provided that the producer was to be paid a bonus if the artist was signed using the producer’s recordings.  The band acknowledged that the producer was actively participating in the creation of the sound recordings and co-wrote the songs. The producer’s share of the songs was not disputed.

The band signed to a major record company (and actually became a multiplatinum artist).  No one told the producer that the band was signed until he read it in Billboard.  The band’s lawyer refused to pay the signing bonus.  She was from New York.

The Texas producer attempted several times to be paid and was rebuffed.  This was probably due to the sale of the masters to the record company when the lawyer failed to disclose the producer as a joint author.  The record company would  not deal with the producer and referred him to the artist’s lawyer who would not deal with him.

The producer found a lawyer who suggested it would be a good idea to send copies of the producer’s recordings to leading producer management companies.  Particularly to one producer management company that also did artist
management and to which the artist was being presented by the record company.

This drew a letter from the artist’s lawyer that accused the lawyer—the lawyer—of copyright infringement for distributing copies of these jointly owned recordings.  The letter was copied to the record company.

The producer’s lawyer responded with his own letter reminding the artist’s lawyer that the producer had the right as a joint author to distribute copies on a nonexclusive basis as one of the rights of a copyright owner of a sound recording.

Within minutes after sending that letter, the producer’s lawyer received a call from the label apologizing and wanting to know how to make this go away.  The producer’s lawyer suggested a possible solution was the payment of money.  That day.

The artist was then forced by its label to sign a release with the producer that included a withdrawal of the claim for copyright infringement against the producer’s lawyer “as though it had never been sent” and transferred all rights from the producer to the artist.

4.  Direct Licenses

It is very common for websites and digital music retailers to seek a license from independent artists  granting them direct rights that would normally be licensed through collectives, such as the performance right in both sound recordings and the songs and in some countries the videos.

Very often, this is on a royalty-free basis, and may also convey the rights to permit others to create derivative works.  Sometimes this is specified as a non-commercial use, but “non-commercial” is not defined or is poorly defined.  Often there is no limitation.

It is important to note that web properties are trying to add value through what is often called the “hybrid economy”.  This means that users create value that is realized by the technology company providing the service, but the technology company pays nothing to the users when it is sold and that value is realized.

Flickr is one example, Google Books is another, YouTube is another.  Large amounts of money changed hands but no money was paid to the users, many of whom were creators themselves.  The latest example of this is the sale of the Huffington Post, and it is reported that a class action was filed by Jonathan Tasini against the Huffington Post seeking compensation for the bloggers who added value to the company that was realized on its sale. You may remember Jonathan Tasini from New York Times v. Tasini, the U.S. Supreme Court case on behalf of freelancers.

Imagine for a moment Ariana Huffington explaining to a jury why she should not have to share the AOL money
with the bloggers. If anyone is here from YouTube, you can just rattle your jewels.

When you grant a direct license to anyone, but particularly one of these hybrid economy, companies, you are essentially putting yourself in the exact position they want you—alone.  The power of collective licensing is essentially the power of collective bargaining.  Those who wish to unfairly exploit any one of us must take on all of us.  The cost of licensing and defending rights is distributed across the members of the collective and those who would exploit us are forced to deal with larger bodies to enforce our rights.

Remember—The Man 2.0 is just a more sophisticated version of The Man 1.0.  They still like their songwriters weak, poor and alone.