Example of “New Boss” Contracts: The YouTube covenant not to sue

In case you needed some proof, here is an excert from a “New Boss” contract, being Google’s indie publisher license for YouTube (Google’s heavily subsidized and dominant entry into the video and video advertising verticle).

To my knowledge, there has never been a comparable provision in an “Old Boss” music publishing license or recording agreement. Clauses like this define onerous, over reaching and misuse of bargaining position. Why does Google require it? Because they can. And because they will most likely take the music anyway requiring indie publishers to send them DMCA notice after notice after notice after notice after…

The clause seems designed to limit indie publishers from joining the current YouTube class action, a class certification issue Google recently lost in the Google Books case. In particular, it requires a waiver of any past infringements, prohibits the publisher from “joining in” to litigation (such as a class action or other group of joint plaintiffs), and might preclude a publisher from suing a “User” (including a YouTube “premium partner” like the shadowy Maker Studio, presumably) for any infringement if the user also posted the offending video on YouTube.  Boy, do they hate it when you organize–hence the covenant not to sue applying to “agents and representatives” which was the losing argument that Google made in the Google Books case to try to force authors and photographers to sue Google work by work and not be represented by the Authors’ Guild or the American Society of Media Photographers.

Quick: How many sync licenses have you ever seen with a covenent not to sue?  Waiver of injunctive relief, absolutely.  Arbitration clause, maybe.  Limitation on indemnity, definitely.  But a covenant not to sue?

Covenant Not to Sue. In consideration of Google’s entering into this Agreement, effective upon the Effective Date and through the end of the Term, Publisher covenants and agrees, for itself and its respective agents and representatives, solely with respect to the shares of Compositions owned or controlled by Publisher (and no other shares) not to bring, assert, pursue, maintain, join in or directly and/or indirectly support, assist, fund, lend resources to, or otherwise participate in any litigation, throughout the Territory, involving or asserting any claim based upon or alleging any form of copyright infringement arising from Google’s exploitation of the rights licensed by Publisher to Google herein through the operation of the Google Services, and in accordance with this Agreement, that Publisher has, had or may have against Google prior to the Effective Date or during the Term; provided, however, that such covenant not to sue shall apply to and be binding on a third party solely to the extent Publisher has the legal authority to grant the covenant not to sue herein on behalf of such third party without violation of any legal or contractual obligation to such party (such as, without limitation, an agreement with a songwriter, composer, rights collecting society, co-publisher or sub-publisher), and further provided, however, that this covenant not to sue does not extend to any legal claim arising from the public performance of any musical work on the YouTube Website or elsewhere. Subject to the following sentence, the foregoing covenant not to sue does not include any legal claim to be asserted against any party other than Google, including, without limitation, (i) any legal claim against any third party arising from the incorporation or use of a musical work in a Video or failure to pay royalties or other consideration due to any publisher or copyright owner for use of a musical work in a Video; or (ii) any legal claim against any third party (including a User) arising from the incorporation or use of a musical work in a Video (regardless of whether such Video is a User Video). Notwithstanding the preceding sentence, Publisher covenants not to sue any User who synchronizes any Publisher Composition in a Video uploaded to the YouTube Website, to the extent Publisher’s claim is based on the alleged infringement of rights granted by Publisher to Google herein solely on the YouTube Website.”