Who Owns the Band’s IP?

A discussion of who owns a musical group’s intellectual property

in the absence of legal agreements.

Christopher S. Hoffmann

J.D. Candidate, May 2020

Chicago-Kent College of Law

Fall 2019

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I. INTRODUCTION

After months practicing in a smoke-filled garage, jotting down lyrical ideas during the

morning train ride to your day job, and recording makeshift melodies into your iPhone’s Voice

Memo application, you feel like you’ve finally made it: your band is in the studio recording its

debut album. Pre-production demos with your producer went smoothly, and you’ve even gotten

initial interest from a few small record labels in releasing your music. One morning, before

recording vocals for the last song, your producer pushes past the glass door of the studio control

room, fragrant dark roast in-hand, and asks whether your band has legal agreements in place.

You assumed everything would be split equally among the four band members. What if

your guitarist believes he should own a greater percentage of the songs because he wrote the music

for six of the ten tracks the band is currently recording? Does your drummer own any of the music

if his only compositions were the drum tracks he performed on the recordings? How about your

producer – does he have an ownership interest in the songs for writing all the harmony vocals that

the band members sang in the studio? If your bassist wrote the lyrics to half the songs, and your

only contribution was singing on the studio recordings of those songs, does that mean you have

zero ownership interest in half of your band’s material? Who, if anyone, owns the right to use your

band’s name and logo?

In the absence of legal agreements, ownership of a musical group’s intellectual property is

divided. Potentially distinct sets of owners can exist for a band’s copyright in its musical works,

sound recordings, and music videos. In addition, separate ownership may exist for a band’s

trademarks, such as its name and logo.

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Section II of this paper provides brief background on essential elements of copyright law

before discussing who owns the copyright in a band’s musical works, sound recordings, and music

videos when legal agreements do not otherwise account for ownership of intellectual property in

those sets of works. Section III provides background information regarding trademark law before

discussing ownership of a band’s name and logo in the absence of agreements. Finally, Section IV

summarizes the findings of this paper and discusses the advantages of drafting a band agreement

and contracts addressing ownership of a band’s intellectual property, as opposed to relying on the

“default” settings offered by copyright and trademark law.

II. COPYRIGHT

The overarching goal for most bands is recording their songs for distribution. Whether

songs are made available online, via CD, or on vinyl records, having their music available to the

public allows bands to book shows, print merchandise, earn revenue and royalties from sales, and

begin to build a following. Most bands, however, do not understand the importance of treating

their group like a business. Young and inexperienced bands, who might begin creating music as a

hobby before deciding to make it their careers, are especially unlikely to view their band as a

business operation. As a result, the overarching majority of bands do not have agreements dictating

their terms of operation. A well-drafted band agreement can cover any topic from “[h]ow to split

profits from gigs” to “[w]hat to do if a band member wants to quit.”1

One of the most important subjects bands should address in their agreements is who owns,

and receives credit for, the bands songs.2 When a band’s agreement does not provide otherwise,

copyright law steps in to the void and provides default settings for how ownership of a band’s

1 BARRY IRWIN & ADAM REIS, BAND LAW FOR BANDS 4 (2d ed. 2016). 2 Id.

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music is divided. Copyright law also fills in the gap when bands do not execute contracts allocating

ownership of their sound recordings and music videos with the individuals who helped them to

create those products. When bands fail to execute agreements dictating ownership of these

important aspects of their intellectual property, the results supplied by copyright law are often

murky and only declared by judges after intensive fact-finding and consideration of what

constitutes a creative contribution to bands products. In many instances these default options will

either include individuals outside the band, whom the band members did not personally consider

shared owners in their works, or operate to exclude band members who have not made a significant

enough creative contribution in the eyes of the law, but who made a significant creative

contribution.

A. Background: Copyrightable works and copyright ownership, joint

authorship, and the two distinct forms of copyright that exist in the music industry

In order properly to explore the question of who owns a musical group’s copyright in the

absence of legal agreements, one must possess a basic understanding of certain applicable

copyright law concepts and doctrines. Relevant copyright topics include information regarding

copyrightable works and copyright ownership, the concept of joint authorship, and the two distinct

copyrights existing in every publicly distributed song: copyright in underlying musical works and

sound recordings.

1. Copyrightable works and copyright ownership

The Copyright Act of 1976 provides copyright protection for (1) original works of

authorship (2) fixed in any tangible medium of expression “from which they can be perceived,

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reproduced, or otherwise communicated, either directly or with the aid of a machine or device.”3

“Some minimal level of creativity” or originality is necessary for a work to be copyrightable.4 An

“author” of a copyrightable work is the individual “to whom anything owes its origin; originator;

maker; one who completes a work.”5 Works of authorship include musical works and any

accompanying words.6 A work is “fixed” in a tangible medium of expression when “its

embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently

permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a

period of more than transitory duration.”7 In the case of a rock band seeking copyright protection

for an original song written by one of its members, recording a song and putting it into digital

format or CD is enough to satisfy the requirement of fixation. Initial ownership of a copyrighted

work vests in the author or authors of the work.8

2. Joint Authorship

A “joint work” in copyright law is a work (1) prepared by two or more authors (2) with the

intention that their contributions be merged into “inseparable or interdependent parts of a unitary

whole.”9 A leading treatise on American copyright law is quick to suggest, however, that the

definition of joint works given in the Copyright Act is actually the definition of a work of “joint

authorship,” because it discusses the creation of a work by multiple authors as opposed to the

circumstances under which a work by a single author is jointly owned.10 “Inseparable” parts of a

unitary whole have little or no independent meaning standing alone, whereas “interdependent”

3 17 U.S.C.A. § 102 (1976). 4 Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340, 345 (1991). 5 Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 57–58, (1884) (quoting Worcester). 6 17 U.S.C. § 102. 7 Id. at § 101. 8 Id. at § 201. 9 Id. at § 101. 10 Childress v. Taylor, 945 F.2d 500, 505 (2d Cir. 1991) (citing 1 Nimmer on Copyright § 6.01 (1991)).

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parts of a unitary whole have some meaning standing alone but achieve their primary significance

because of their combined effect.11 Independently-created music and lyrics merged with the

intention of creating a song constitute a primary example of “interdependent parts of a unitary

whole,” and the resulting work is considered a work of joint authorship if it is prepared by multiple

authors.12 To achieve the requisite degree of intention for a copyrightable work to be considered a

work of joint authorship, the authors must intend “at the time the writing is done” that their

contributions be absorbed or combined into an integrated unit.13 Initial ownership of a joint work

vests in its authors, who are considered co-owners of the work’s copyright.14

Some jurisdictions have interpreted the statute to impose additional requirements for joint

authorship. Significantly, several jurisdictions require that each putative co-author’s contribution

be independently copyrightable, even before the contributions are merged into a single work.15

Precedent in the United States Court of Appeals for the Ninth Circuit Court goes further, requiring

that “authorship” itself constitute something more than an individual “making a valuable and

copyrightable contribution” to a work.16 The Aalmuhammed v. Lee17 court laid out three factors it

considered indicative when parties contributing to a single work are actually joint authors: (1) that

purported authors “superintend” the work by exercising control and being “the inventive[s] or

11 Id. at 505. 12 H.R. REP. 94-1476, 120, 1976 U.S.C.C.A.N. 5659, 5736. 13 Id. 14 17 U.S.C. § 201. 15 See Childress, 945 F.2d at 507 (“It seems more consistent with the spirit of copyright law to oblige all joint authors to make copyrightable contributions, leaving those with non-copyrightable contributions to protect their rights through contracts.”); Erickson v. Trinity Theatre, Inc., 13 F.3d 1061, 1070 (7th Cir. 1994) (A “collaborative contribution will not produce a joint work, and a contributor will not obtain a co-ownership interest, unless the contribution represents original expression that could stand on its own as the subject matter of copyright.”) (quoting Paul Goldstein, Copyright: Principles, Law, and Practice § 4.2.1.2, at 379 (1989)); Aalmuhammed v. Lee, 202 F.3d 1227, 1231 (9th Cir. 2000) (“A ‘joint work’ in this circuit ‘requires each author to make an independently copyrightable contribution' to the disputed work.”) (quoting Ashton–Tate Corp. v. Ross, 916 F.2d 516, 521 (9th Cir.1990)). 16 Aalmuhammed, 202 F.3d at 1232. 17 Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 2000).

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master mind[s]” who create or give effect to the work’s idea; (2) that putative coauthors “make

objective manifestations of a shared intent to be coauthors;” and (3) that the “audience appeal of

the work turns on both contributions and ‘the share of each in its success cannot be appraised.’”18

While the court indicated that the first factor, control, is the most important factor in many cases,

it was also quick to pronounce that the factors it articulated “cannot be reduced to a rigid

formula.”19

3. The two distinct forms of copyright existing in the music industry: copyright

in musical works and sound recordings

Two distinct forms of copyright exist for every recorded song a band releases: (1) copyright

in the underlying musical work and (2) copyright in the sound recording of that underlying musical

work.20 The underlying musical work, or “composition” of a song, consists of its musical notes,

lyrics, and arrangement.21 A “sound recording” is a recording of the performance of the underlying

musical work.22 Copyrights in musical works and sound recordings are distinct: the rights of an

owner in one do not extend to the rights of owners in the other form of copyright.23

The distinction between these two unique forms of copyright in music can be illustrated by

way of practical example. Consider, for instance, the Beatles’ revolutionary anthem “Come

Together.” The song was written by John Lennon and Paul McCartney.24 A recording of “Come

Together” performed by the Beatles is featured on the group’s “Abbey Road” studio album.

18 Id. at 1235 (internal quotations omitted). 19 Id. at 1235-1236. 20 BTE v. Bonnecaze, 43 F. Supp. 2d 619, 627-28 (E.D. La. 1999) (emphasis added). 21 IRWIN & REIS, supra note 1, at 17. 22 Id.; What is the Difference Between a Composition and a Sound Recording, TUNECORE (Oct. 9, 2019), https://support.tunecore.com/hc/en-us/articles/115006502747-What-is-the-difference-between-a-composition-and-a-sound-recording-. 23 BTE, 43 F. Supp. 2d at 627-28 (citing Neil Boorstyn, Copyright Law § 5:11 n. 54 (1981 & Supp.1986)). 24 Come Together, THE BEATLES BIBLE (Oct. 30, 2019), https://www.beatlesbible.com/songs/come-together/.

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Additional recordings of “Come Together” have been released, however, by artists as varied as

Aerosmith and Gary Clarke Jr. In the absence of legal agreements, a single set of owners would

hold the copyright in the the underlying music and composition of “Come Together,” namely, the

songwriting-partnership of John Lennon and Paul McCartney. On the other hand, different sets of

owners might possibly hold copyrights in the actual sound recordings for each cover of “Come

Together” that has been released for public consumption in the decades since its debut on “Abbey

Road.” An owner of the copyright in one of the sound recordings might infringe the copyright in

the underlying musical work by creating the sound recording, if it constitutes a reproduction,

distribution, or public performance of the musical work.

B. Copyright in musical works.

Copyright ownership over a band’s musical works is likely the most controversial aspect

of a group’s intellectual property in the absence of legal agreements. Copyright ownership over

musical works can be very fact-intensive because of the collegial atmosphere that is characteristic

of the creative process for many independent bands: it’s hard to say who the authors of a song are

when a group of musicians get together in a basement or garage and start jamming. Sometimes all

of the members offer ideas regarding song structure or arrangement, but only certain ideas are

accepted or incorporated into the finished musical product, and it is unclear who the originators of

the ideas were because of the informal writing environment. On the other hand, maybe a suggestion

by a member is incorporated into the ultimate song, but the suggestion does not rise to the level of

an independently copyrightable contribution that is necessary for joint authorship in many circuits.

Ultimately, decisions on joint authorship of musical compositions are primarily the result of

judges’ perspectives on what constitutes both “authorship” and copyrightable contributions.

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A prevailing theme throughout caselaw addressing musicians’ ownership in copyright of

musical works is the notion, particularly in circuits requiring independently copyrightable

contributions, that merely offering small insights or suggestions for altering a song is not enough

to qualify an individual as a joint author of a song’s underlying musical work. In BTE v.

Bonnecaze,25 the former drummer of rock band Better Than Ezra argued that he was entitled to an

accounting of his share of copyright royalties, and other profits derived from the band’s songs, as

a joint author of the group’s music.26 Bonnecaze’s argument for joint copyright ownership over

the group’s musical works essentially boiled down to a dispute regarding his perspective of the

band’s songwriting process versus the perspective of lead vocalist and guitarist Kevin Griffin.

Griffin maintained that he introduced underlying musical compositions which were “refin[ed]”

into the final product heard on Better Than Ezra recordings via uncopyrightable and unfixed

contributions from the other band members.27 Conversely, Bonnecaze contended that he personally

contributed “inseparable and interdependent” parts of songs, including “harmony, lyrics,

percussion and song rhythms, melody and song and musical structure,” that resulted in the ultimate

musical composition for many Better Than Ezra songs.28

The court concluded that Bonnecaze had contributed “ideas and helpful insights” in

“working up” the songs introduced by Griffin, but failed to supply any evidence in discovery which

could lead a rational trier of fact to the conclusion that Bonnecaze’s contributions were fixed into

a tangible form of expression.29 Final recordings of the bands songs were not sufficient as a

tangible form of expression for Bonnecaze to prove independent copyrightability of his

25 BTE v. Bonnecaze, 43 F. Supp. 2d 619 (E.D. La. 1999). 26 Id. at 621. 27 Id. 28 Id. 29 Id. at 628.

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contributions to the writing process, and thus joint authorship of the group’s songs, under the

framework provided in Childress and Erickson.30 While the court did not explicitly state the

reasoning behind its conclusion, it appears that the court’s implication was that, while Bonnecaze’s

contributions themselves were immortalized in Better Than Ezra’s songs, the contributions were

not fixed in a separate form of expression from Griffin’s contributions and, thus, could not be

evaluated to determine whether Bonnecaze’s ideas constituted copyrightable expression standing

alone.31 In focusing on the evidentiary problem of independent fixation of Bonnecaze’s

contributions, the court leapfrogged over the more interesting issue of whether “harmony, lyrics,

percussion and song rhythms, melody and song and musical structure” can, standing alone,

constitute independently copyrightable expression worthy of joint authorship in a musical work.32

Corwin v. Quinonez33 exemplifies another instance where a court, unfortunately, avoided

the legal question of minimum musical expression required for joint authorship and, instead,

resolved questions of musical works copyright ownership on the basis that a plaintiff had not

presented a genuine dispute of material fact at summary judgment.34 In this case, like Bonnecaze,35

a band member who contributed a degree of original, musical expression to a group’s songs

challenged claims of sole authorship on the part of the band’s primary musical architect.36 Disputes

between the two parties once again centered around their differing interpretations of the band’s

songwriting process and the very nature of collaborations between the plaintiff and defendant.

30 Id. at 624-25, 628. 31 Id. at 627. 32 Id. at 621. 33 Corwin v. Quinonez, 858 F. Supp. 2d 903 (N.D. Ohio 2012). 34 See id. 35 BTE v. Bonnecaze, 43 F. Supp. 2d 619 (E.D. La. 1999). 36 Id. at 905-906.

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Specifically, the defendant independently programed and recorded basic electronic songs

for the “electro-pop” group before the plaintiff then performed “live instrumental components” on

top of the “basic song[s]” originally composed by the defendant.37 Ultimately, the court determined

that the defendant’s own words evidenced that he did not possess the requisite intent of sharing

joint authorship with the plaintiff, as required under the Childress framework, that would factually

evidence joint authorship over the group’s musical works.38 In particular, the court pointed to

evidence that the defendant alone had final say over which parts recorded by the plaintiff would

end up in the band’s completed songs, and the imbalance of decision-making authority between

the two parties indicated that joint authorship did not exist.39

Overall, very little law exists discussing the factual prerequisites that entitle a band member

to joint authorship over a band’s musical works copyright. A general reluctance on the part of

courts to confront issues of the minimum degree of musical contribution necessary for joint

authorship can potentially be explained by two factors: (1) a desire not to chill “further refinement

that colleagues may offer” on the part of sole authors,40 and (2) hesitancy on the part of judges to

engage in the messy and philosophical considerations surrounding what modicum of expression is

necessary for copyrightability in music. Whatever the reason, the lack of instruction from courts

on the minimum degree of contribution necessary for joint authorship of musical works leaves

band members stranded amongst the grey area traditionally characterizes the songwriting process

for groups with music that is not written by a sole author.

37 Id. at 905. 38 Id. at 912. 39 Id. at 912-913. 40 BTE, 43 F. Supp. 2d at 624 (quoting Erickson, 13 F.3d at 1069).

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From a practical standpoint, on the other hand, it may be wise for courts enforcing

independent copyrightability requirements for putative joint authors to impose a high standard on

musical contributions that are considered independently copyrightable. The imposition of a high

standard of independent copyrightability prevents fragmentation of ownership over musical works

copyright. While it might make sense, musically, to consider lyrical or melodic contributions as

copyrightable expression standing alone, from a business perspective it is convenient to

concentrate musical works copyright ownership in a track’s core songwriters. The alternative risks

scenarios where musical works copyright is split between a high number of individuals even

though some of the musicians have only contributed a single line of lyrics or a minor musical

suggestion. Concentrating ownership among core songwriters also makes it easier to split royalties

earned from the use of a song’s musical work copyright. The imposition of a high standard for

independent copyrightability also makes sense because, if a group of musicians wish to ensure that

even small contributions to a song result in ownership of its musical work copyright, a band can

always contract around the default regime provided by copyright law. A group can specify in its

band agreement that all musical work copyright ownership of its songs will be split evenly, or

according to another scheme its members consider fair, for all songs that are conceived without

input from guest songwriters.

C. Copyright in sound recordings.

Copyright ownership in sound recordings, on the other hand, is frequently divided among

numerous individuals in the absence of legal agreements due to the nature of the recording process.

Whereas “[t]he author of a musical composition is generally the composer,” and any lyricists,

“[t]he author of a sound recording is the performer(s) whose performance is fixed, or the record

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producer who processes the sounds and fixes them in the final recording, or both.”41 Sound

recordings are “owned by the person[s] whose performance[s] [are] reflected on the recording.”42

Performances satisfying copyright ownership in a sound recording can also be accomplished

through programming electronic instruments, and are not limited to traditional instrumentation.43

In a sense, all sound recordings are works of joint authorship where more than one individual is

involved in the recording process, because “[s]ound recording authorship may be contributed by

the performer or the record producer” and, “[u]sually, authorship is contributed by both performer

and producer.”44 Taken to an extreme, providing equipment and simply organizing performers,

arrangers, and technicians, without actually performing on the recording itself, may constitute

enough of a creative contribution to the final product to justify ownership of a sound recording’s

copyright.45

As a general principal, each musician performing on a song’s recording is an owner of the

copyright in that sound recording, so long as legal agreements do not specify otherwise. In

Bonnecaze,46 for instance, the defendants conceded that the former drummer of their band

possessed copyright interests in the sound recordings of the songs that he played on with the

band.47 Theoretically, even musicians performing a minor role on a song—such as backing vocals

41 In re Cellco P'ship, 663 F. Supp. 2d 363, 369 (S.D.N.Y. 2009) (citing Copyright Office Circular 56A at 1 (“Copyright Registration of Musical Compositions and Sound Recordings”) (available at http://www.copyright.gov/circs/circ56a.pdf)). 42 Mitchell v. Capitol Records, LLC, 287 F. Supp. 3d 673, 682 (W.D. Ky. 2017) (internal quotations omitted). 43 See Staggers v. Real Authentic Sound, 77 F. Supp. 2d 57, 62 (D.D.C. 1999). 44 Sys. XIX, Inc. v. Parker, 30 F. Supp. 2d 1225, 1228 (N.D. Cal. 1998) (quoting United States Copyright Office, § 495.01 at 400–37 (1984)). 45 See Shaab v. Kleindienst, 345 F.Supp. 589, 590 (D.D.C.1972) (stating that providing the equipment and organizing the diverse talents of arrangers, performers, and technicians, are activities satisfying the 1909 Copyright Act's requirements of authorship). 46 BTE v. Bonnecaze, 43 F. Supp. 2d 619 (E.D. La. 1999). 47 Id. at 628.

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or an underlying orchestral accompaniment—are considered owners of the copyright in its sound

recording, subject to requirements of independent copyrightability in the circuits requiring it.48

Similar to requirements for minimum contribution for musical-work copyrights, these

considerations invite metaphysical inquiries regarding what types of musical performances are

sufficiently creative to be copyrightable standing alone, and current caselaw does not have a clear

answer. In this specific situation regarding sound recordings, however, it is logical for the law’s

default to assume that each performer on a recording is entitled to a share in the ownership of its

copyright for convenience sake. An alternative default would ask judges, who are not necessarily

musical experts, to determine which performances are integral enough to a sound recording to

warrant ownership over it. For example, in the absence of contrary contractual terms, it seems fair

to deem a cellist’s background accompaniment as equally deserving of copyright ownership as a

drummer’s performance. If the latter is clearly copyrightable, it should not matter that the cellist’s

performance only lasts for the length of a song’s bridge while the drummer’s performance lasts

the entire length of the track.

An important, and far more common, issue that many artists likely fail to consider while

they are enthralled in the recording process and busy preparing for daily sessions is the degree to

which record producers and sound engineers become joint authors of a band’s sound recordings

for the purposes of copyright law. In some instances, it might seem logical to recognize a record

producer as a cowriter of a group’s music when she explicitly contributes lyrical, musical, or

arrangement ideas that are ultimately incorporated into the underlying musical work. More

troublesome are instances where a producer or engineer does not necessarily change the underlying

48 In re Cellco P'ship, 663 F. Supp. 2d at 369.

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musical work but effects changes via the editing process, or by adding sound effects to recorded

tracks, which fundamentally shape the resulting recording of a song.

For instance, the Beatles’ “Lucy in the Sky with Diamonds” became iconic, in no small

part, thanks to the effect incorporated into John Lennon’s vocals which gave him a high-pitched,

childlike voice by recording Lennon at a slower speed before playing the track back at its original

pace.49 The choice of including that single effect permanently altered the character of the Beatles’

recording of “Lucy in the Sky with Diamonds,” and the use of pitch-shifting in this manner was

particularly inventive in 1967 when the Beatles were recording “Lucy.”50 In the absence of legal

agreements, should the Beatles’ producer, George Martin, be considered a joint author in the sound

recording copyright for “Lucy in the Sky with Diamonds?”

The drafters of the Copyright Act of 1976 envisioned that copyright in sound recordings

would “usually,” though not always, “involve authorship” both by the recording artist and “the

record producer” responsible for “setting up the recording session, capturing and electronically

processing the sounds, and compiling and editing them to make the final sound recording.”51 At

the same time, the committee recognized that there may be cases “where the record producer’s

contribution is so minimal that the performance is the only copyrightable element in the work.”52

Generally, the individuals categorized as “producers” in the House Report on the Copyright Act

are persons who “engage[d] in artistically supervising and editing the production.”53

49 Lucy in the Sky with Diamonds by The Beatles, SHMOOP (Nov. 6, 2019), https://www.shmoop.com/lucy-in-the-sky/music.html. 50 Id. 51 H.Rep. No. 94–1476, 94th Cong., 2d Sess. 56 (1976). 52 Id. 53 Forward v. Thorogood, 985 F.2d 604, 607 (1st Cir. 1993) (citing 1 Nimmer § 2.10[A](2)(b), at 2–150 to 2–151).

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As a result, a minimum degree of artistic supervision is required in order to become a joint

author in the copyright of a sound recording.54 The First Circuit held in Forward v. Thorogood55

that an individual who merely arranges and pays for a band’s recording session, without more, is

not a joint author in the resulting sound recording copyright.56 In Forward, the individual who

paid for the band’s recording session “made no musical or artistic contribution” and did not “serve

as the engineer at the sessions or direct the manner in which the songs were played or sung.”57

Instead, he merely requested that certain songs be played without actually supervising the

production in any sense outside of his financial contribution.58

The holding in Forward serves as an appropriate standard for the minimum artistic

contribution necessary to acquire joint authorship in a sound recording. Recalling that copyright

initially vests in the authors of a work, Forward contributed nothing to the actual performance and

fixation of George Thorogood’s songs in the form of a sound recording by simply paying for studio

time and requesting that songs be performed without arranging them.59 Forward illustrates an

obvious example of an instance where an individual’s contribution clearly should not entitle him

to ownership in a resulting sound recording.

Producers and engineers—who actually fix an underlying musical composition in the form

of a recording and shape the way it sounds to the ultimate music consumer—on the other hand,

fall into a grey area similar to the one facing ownership of copyright in musical works for bands

that collectively write their songs. From a musical standpoint, in many cases the contributions of

54 Id. 55 Forward v. Thorogood, 985 F.2d 604 (1st Cir. 1993). 56 Id. at 606-7. 57 Id. at 607. 58 Id. 59 See also Staggers v. Real Authentic Sound, 77 F. Supp. 2d 57, 62 (D.D.C. 1999).

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producers and engineers to sound recordings should entitle them to joint authorship of those sound

recordings, if agreements do not provide otherwise.

While courts have not engaged in much factual analysis of the minimum level of creative

input necessary for an individual who records a band to be entitled to ownership of the resulting

sound recording copyright, the modern process of music production is conducive to allowing joint

authorship for producers and engineers. Gone are the days of simply hitting a button to start and

stop recording while a band plays in the studio. Today’s music production almost necessarily

involves complicated editing of each instrument’s performance: autotuning vocals to ensure that

all notes sung are in key, adding sampled drum hits to a drummer’s actual performance in order to

make the resulting drum track thicker, and cutting up guitar players’ takes of individual

performances to create a “Frankenstein” track that is tighter and, importantly, different from any

of the original recorded performances.

On the other hand, one can also argue that the actions taken to create resulting works by

producers and engineers described above merely constitute scenes a faire—uncopyrightable

expression—that are inherent to any professional recording created in the twenty-first century.60

Because tuning vocals and editing performances to make them tighter is expected of sound

engineers, and such actions are routinely taken, they should not constitute copyrightable

expression that entitles those working behind the scenes of a sound recording to ownership of its

copyright. While both arguments have merit, the best practice would be for producers and sound

engineers to be considered authors of sound recordings because the act of editing a performance,

60 See Leslie A. Kurtz, Copyright: The Scenes A Faire Doctrine, 41 Fla. L. Rev. 79 (1989).

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to create a “better” take than the one which originally existed, is itself a creative action and input

sufficient to entitle a sound engineer to joint authorship of the resulting recording’s copyright.

Individually, editing a single vocal line or drumbeat has little effect on the ultimate product

enjoyed by listeners. Collectively, an entire recording containing edited takes is inherently

different from the original performances laid down by musicians while tracking. At the same time,

the role of producers and sound engineers is to ensure that the best possible performances are

captured and failure to take routine editing actions would be akin to recording malpractice in most

genres of music. In most instances, the “arrangement and administration of recording equipment,

the electronic processing of sounds,” and editing process will sufficiently alter the resulting

recording in a manner that enables courts to deem sound engineers and producers as joint authors.61

D. Copyright in music videos.

One other important area where copyright law can affect bands is the realm of music

videos. Bands that make it beyond their parents’ garage or practice space typically have a few

goals in mind: performing shows, building a fanbase, and releasing recorded music. After a band

records its music, the next step in marketing and attracting attention to one’s band is usually

recording a music video. Sometimes bands will even commission “behind the scenes” or

documentary style videos as promotional tools. Bands do not usually, however, record these videos

themselves. Most of the time a director, videographer, or entire team works behind the scenes to

create videos that bands then use to market their music to potential fans. In the case of music

videos, “absent a written agreement, the copyright for [a] music video is a joint ownership between

the performing artists and the video's producer.”62

61 Sys. XIX, Inc. v. Parker, 30 F. Supp. 2d at 1229. 62 Morrill v. Smashing Pumpkins, 157 F. Supp. 2d 1120, 1126 (C.D. Cal. 2001).

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In Morrill v. Smashing Pumpkins,63 the plaintiff filmed a documentary music video for

Billy Corgan’s pre-The Smashing Pumpkins band, The Marked.64 The facts were “undisputed”

that the plaintiff “directed, produced, and edited the video” while Corgan and his band “composed

and performed the music played in the video.”65 The court held that both “Morrill’s filming and

editing of the video” and “Corgan’s performance and composition of the songs” satisfied the

“requisite level of copyrightable expression necessary to support a claim of joint authorship” in

the Ninth Circuit.66 Basing its analysis in the Aalmuhammed67 framework, the court noted that

Morrill could not be the “sole force” behind the music video because the music itself was the

“central component of the completed work.”68 Regarding the second and third Aalmuhammed

factors of putative coauthors making “objective manifestations of a shared intent to be coauthors”

and the “audience appeal” of a work turning on both parties contributions,69 the court found that

the parties personally described the video as a “collaboration” on various occasions, and that the

audience appeal of the video rested “both on the video's visual aspects and on the composition and

performance of the music.”70

The argument that music videos are best suited as works of joint authorship in the absence

of legal agreements is best summarized by the Morrill court’s philosophical interpretation that

“[i]n a music video, the creator of the songs and the creator of the images are both ‘the inventive

or master mind[s]’ whose work comes together to produce a unitary whole,” because “both parties

63 Morrill v. Smashing Pumpkins, 157 F. Supp. 2d 1120 (C.D. Cal. 2001). 64 Id. at 1121. 65 Id. at 1123. 66 Id. 67 Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 2000). 68 Morrill v. Smashing Pumpkins, 157 F. Supp. 2d at 1124 (“While Morrill's filming, editing, and producing may have helped shape and present [the band’s] music for its audience, without the music itself [the video] would not exist.”). 69 Aalmuhammed, 202 F.3d at 1235. 70 Morrill v. Smashing Pumpkins, 157 F. Supp. 2d at 1124-5.

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ha[ve] creative control over separate and indispensable elements of the completed product.”71

Unlike other areas of copyright law that affect bands, the inherent nature of a music video or

documentary necessarily entails that two interdependent pieces, which also have meaning standing

alone, are combined to create a unitary whole and entirely new resulting work.72 For this reason,

the framework adopted in Morrill is the best way to determine who owns a music video’s copyright

in the absence of legal agreements. The full significance of a music video is a result of both its

auditory and visual elements, and each individual who creatively contributes to it should be

considered an owner of the resulting video’s copyright.

III. TRADEMARKS

Aside from a band’s music, one of the most important aspects of a band to its members is

a group’s name and any band logos associated with it. A band’s name and logo are important for

several reasons. First, they make up a great deal of a band’s identity by functioning as symbols of

a group’s brand. Names and logos are the first elements of a band potential fans often encounter,

even before listening to a group’s music, and they help to shape a band’s public perception.

Second, a band’s name and imagery can serve as tremendous sources of income, as a result of

licensing, after a band becomes well-known.73

Like many other aspects of being in a musical group, a well-drafted band agreement will

typically address who owns the rights to a band’s name.74 When a group does not execute a

comprehensive band agreement, trademark law steps in to provide a default answer to the question

71 Id. at 1124 (quoting Aalmuhammed, 202 F.3d at 1229). 72 But see Wake Up & Ball LLC v. Sony Music Entm't Inc., 119 F. Supp. 3d 944, 952-3 (D. Ariz. 2015) (holding that, at the pleading stage of litigation, plaintiff had sufficiently alleged that the music video in question was not a joint work where (1) the director had “complete creative and supervisory control and authority” and (2) the song’s performer did not contribute to or control the video’s “production process”). 73 IRWIN & REIS, supra note 1, at 7. 74 Id. at 4.

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of ownership of a band’s name and logo. Fortunately for bands, caselaw regarding the intersection

of this area of intellectual property with bands typical operations is more straightforward than in

the case of copyright law. The result in the absence of legal agreements, however, may not be one

desired by most bands: a group’s trademarks are owned by the band itself, and not any individual

members, in the form of a partnership.

A. Background

A trademark is “a word, phrase, logo, or other characteristic that indicates to consumers

that [a] band is the source of particular goods” and services such as albums, T-shirts, posters, and

live shows.75 The primary purpose of a trademark is to indicate the source of goods or services, by

identifying the originator of the goods or services, as opposed to identifying the products

themselves.76 The primary trademarks arising in the context of musical groups are: (1) a band’s

name and (2) “graphics or logos that have become synonymous with the group,” such as the

Grateful Dead’s “steal your face” skull with a lightning bolt running through it.77 Trademarks are

legally protected and regulated by federal statute under the Lanham Act, and various states also

allow for trademark registration.78

While there are statutory benefits to registering a trademark, trademark ownership is

acquired “from prior appropriation and actual use in the market” by being the first to use a mark

in a certain geographic area, and federal or state registration of a mark is not required.79 The

primary procedural advantage of registering a trademark is that the “burden of showing mark

75 Id. at 7. 76 Sunrise Jewelry Mfg. Corp. v. Fred S.A., 175 F.3d 1322, 1325 (Fed. Cir. 1999) (quoting Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164 (1995)). 77 IRWIN & REIS, supra note 1, at 14. 78 See MicroStrategy Inc. v. Motorola, Inc., 245 F.3d 335, 338-341 (4th Cir. 2001). 79 87 C.J.S. Trademarks, Etc. § 195.

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validity usually falls on the plaintiff[s] in trademark infringement action[s],” but registration of a

mark shifts that burden to defendants to demonstrate that a mark is not valid.80 Registration of a

mark provides evidence of ownership: that the trademark is being used in the course of business,

evidence of the date of first use of the mark, and constructive notice of the registrant's claim of

ownership.81 As a result, registration gives rise to a rebuttable presumption of a mark’s validity

and is prima facie that the mark is valid.82

Substantively, however, the right to a trademark grows out of its use and the legal reach of

a mark is the area in which it is used.83 Trademarks remain valid so long as they are used in

commerce.84 For trademarks registered with the federal government, registrations last for ten years

“provided that the registrant files affidavits of continued use within the one-year period

immediately preceding the expiration of six years following the date of registration or the date of

the publication and within the one-year period immediately preceding the expiration of ten years

following the date of registration, and each successive ten-year period following the date of

registrations.”85

Common law or unregistered trademarks, on the other hand, are protected only when prior

use is established by showing “first, adoption, and, second, use in a way sufficiently public to

identify or distinguish the marked goods in an appropriate segment of the public mind as those of

the adopter of the mark.”86 The Eleventh Circuit identified examples of the second requirement as

occurring where: (1) “the distribution of [a] mark was widespread because the mark was accessible

80 Id. 81 Id. 82 Id. 83 Id. 84 Kosturakis, supra note 67, at 54. 85 Id. 86 Commodores Entm't Corp. v. McClary, 879 F.3d 1114, 1131 (11th Cir.), cert. denied, 139 S. Ct. 225, (2018) (internal quotations omitted).

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to anyone with access to the Internet;” (2) “the evidence established that members of the targeted

public actually associated [a] mark with the product to which it was affixed;”(3) “[a] mark served

to identify the source of the product;” and (4) “other potential users of [a] mark had notice that the

mark was in use in connection with the product.”87

B. Ownership of unregistered trademarks for musical groups are held by the

groups themselves as a partnership, not by any individual band members.

In the absence of legal agreements, a band’s name is owned by the band itself rather than any

of the band’s individual members.88 The recent decision of Commodores Entm't Corp. v.

McClary89 exemplifies the analysis courts take to determine ownership of a band’s unregistered

trademark. In Commodores, the former guitarist of the band The Commodores sought to use the

name of the group in conjunction with his new band “The 2014 Commodores.”90 The court’s

analysis centered around an “essential” question: “What happens to the ownership of a trademark

in the name of a performing group when the group’s ownership has evolved with time?”91 After

describing the requirements to appropriate and protect an unregistered trademark, the court

declared that common law trademarks existed in the band name “and the original owner of the

marks was the group as a whole.”92

Similarly, in Robi v. Reed,93 a common law trademark for the band name The Platters was

initially “owned by five individuals comprising a group as a partnership” from the band’s

87 Id. at 1131-2 (internal quotations omitted). 88 IRWIN & REIS, supra note 1, at 4. 89 Commodores Entm't Corp. v. McClary, 879 F.3d 1114 (11th Cir.), cert. denied, 139 S. Ct. 225, (2018). 90 Id. at 1121-24. 91 Id. at 1131. 92 Id. at 1132. 93 Robi v. Reed, 173 F.3d 736 (9th Cir. 1999).

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formation until they later executed a band agreement.94 Both the Robi and Commodores courts

noted that ownership of a band’s name being held by the band itself, in the absence of other

agreements, is rooted in the ability of current members to supervise the group and “control the

quality of its services.”95 Control over a band’s output is crucial to the justification that groups

hold common law trademarks over their names in general partnerships that result when no legal

agreements are set forth, because one of the central goals of trademark law is protecting the

reputation and goodwill of producers of goods and services. Keeping the purpose of trademark law

in mind, it makes sense that band members currently in control of the quality of services rendered

by the band, as a business, are the ones who possess the right to use that business’ trademarks in

commerce.

The Ninth and Eleventh Circuits’ emphasis on control over the quality of services rendered by

a business led both courts to join a line of precedent holding that members who leave a band

owning its name in a common law trademark forfeit the right to use that mark in commerce

subsequently.96 In Commodores it did not matter that the plaintiff had reunited with members of

the group for several one-off performances, or even that he continued to draw royalties from songs

he wrote and performed with the group before his departure.97 The plaintiff was considered to have

94 Id. at 739. 95 Commodores Entm't Corp, 879 F.3d at 1133 (quoting Robi 173 F.3d at 740). 96 Id. (citing Robi, 173 F.3d at 740; HEC Enters., Ltd. v. Deep Purple, Inc., 213 U.S.P.Q. 991 (C.D.Cal.1980) (former members of rock band Deep Purple prohibited from performing under the band's name when members of the original group, with certain replacement members, continued to use the name); Kingsmen v. K–Tel Int'l, Ltd., 557 F.Supp. 178 (S.D.N.Y.1983) (holding, inter alia, that the former lead singer of The Kingsmen, who was with the group when it recorded the hit song “Louie Louie,” did not have the right to use the name after his departure) (“[i]t may very well be that given the collective sound of The Kingsmen, no single member of the group would be able to hold himself out as The Kingsmen without a substantial likelihood of confusion on the part of the public”); see also Giammarese v. Delfino, 197 U.S.P.Q. 162, 163 (N.D.111.1977) (former member of The Buckinghams enjoined from performing under the name because he was “clearly not possessed of a sufficient proprietary interest in the name to justify his conveyance of the entire trade name for use by a new and entirely distinct musical group.”) (quoting the unpublished Seventh Circuit opinion affirming the preliminary injunction). 97 Commodores Entm't Corp, 879 F.3d at 1132.

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left the group, he had never rejoined on a permanent basis in a manner that would cause him to

regain his right to use the mark, and ownership of the band’s name remained with members of the

group who continued to use it in commerce and were able to control the quality of its services.98

While caselaw has not yet addressed the question of how ownership of a band’s logos and

imagery, specifically, should be treated in the absence of legal agreements, the framework applied

in Robi and Commodores is the most logical and likely approach.99 Assuming the Ninth and

Eleventh Circuits’ analysis applies, all unregistered trademarks for bands lacking an operating

agreement are owned by the band itself in the form of a common law partnership.100

IV. SUMMARY

Ultimately, statutes and caselaw have developed a complex framework where ownership

of bands’ intellectual property, in the absence of legal agreements, is determined by the particular

situations and facts at issue within specific areas of intellectual property. In the realm of copyright,

ownership of a band’s musical works vests initially in the authors of the musical work. Authors

include those who contribute to a song’s lyrics, composition, or arrangement. In many circuits,

however, contributions made by band members also have to be independently copyrightable,

standing alone, in order to qualify for joint authorship. In practice, this prevents bandmates whose

contributions consist of mere ideas, suggestions, or small musical contributions from qualifying

as joint authors, leaving primary songwriters as the owners of a band’s musical work copyrights.

98 Id. at 1132-3. But see PGP, LLC v. TPII, LLC, 734 F. App'x 330, 333 (6th Cir. 2018) (citing Marshak v. Treadwell, 240 F.3d 184, 199 (3d Cir. 2001)) (finding no abandonment of trademark in a band’s name because the group “continuously received royalty payments”). 99 See Kaufhold v. Caiafa, 872 F. Supp. 2d 374, 376-7 (D.N.J. 2012) (“the parties to the settlement had agreed that each of the former members of the band … co-owned the Misfits Marks,” including the band name and “certain logos”). 100 For reasons why a partnership may not be the desired default business entity for bands, including personal liability and loss sharing, see § 5:1.Partnership defined, Partnership Law & Practice § 5:1 (2019) et seq.

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On the other hand, these requirements can also help to defend a band from claims of co-authorship

by its producer.

Copyright in a band’s sound recordings is a different story. Each individual whose

performance is fixed in a sound recording is considered an author of the resulting copyright. Unlike

copyright in musical works, guidelines from the drafters of the Copyright Act and resulting

caselaw suggest that record producers are, often, also co-authors in the resulting sound recordings

because of their contributions in processing the sounds and fixing the final recording. Similarly,

copyright ownership is also shared in the case of music videos, which involve joint authorship on

the part of both the sound recording copyright owners and the video’s producer, because of the

merger of their contributions and intent to create a new work containing interdependent parts of a

unitary whole.

In the realm of trademarks, a band can acquire a common law trademark in its name and

logo by using the marks in commerce in a way that allows the public to identify the group as the

marks’ adopter. Sufficient use of a mark in commerce is easily accomplished for most bands

simply by virtue of them being the first to use the mark and by performing and releasing music

under the mark. Ownership of common law trademarks reside in the members of the group, as a

whole, in the form of a partnership when a band does not have a legal agreement establishing a

separate business entity from its members. Ownership of common law trademarks by band

partnerships allow current band members to use the mark in commerce, and ex-bandmates lose the

right to use those marks because they no longer have control over the quality of goods and services

rendered.

While the law provides default business answers to bands that do not account for ownership

of their intellectual property, the wisest course of action is for musical groups to draft a band

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agreement. Drafting an agreement allows bands to cover a nearly exhaustive number of topics,

including ownership allocation of their song copyrights and trademarks, so that litigation and

further expenses can be avoided down the line if and when disputes occur. In addition, bands

should also enter contracts before hiring sound engineers, producers, and videographers if they

wish to dictate ownership of the resulting copyright in their sound recordings and music videos.

In many cases hiring a lawyer and taking time to draft these agreements will be cost prohibitive

for young or up-and-coming bands. In the long run, however, taking these extra precautions can

provide peace of mind and ensure that band members know where they stand regarding ownership

of their groups’ creations.