U.S. trademark infringement law

Trademark Infringement in The U.S.

Trademark Law: Trademark Infringement in the U.S.By Justin M. Jacobson, Esq. Trademark law provides the exclusive right to use a mark to differentiate the goods or services of one person or business from those of another. A trademark commonly includes a word, phrase, logo, design or a combination of these, which are used in relation […]

Yearly Wrap Up & 5 Trending Esports Legal Topics For 2024: Yearly Wrap Up & 5 Trending Esports Legal Topics For 2024By Justin M. Jacobson, Esq. As 2022 continued into 2023 and the “esports winter” in the United States arrived, there was a myriad of shifts in the business and legal landscape including esports organization FaZe Clan famously going public at a nine-figure valuation, receiving a Nasdaq delisting warning; and eventually being purchased at a fraction of its initial listing price by the owners of the esports organization Complexity, GameSquare. This purchase was in addition to other esports organizations and event operators being acquired including NRG Esports buying Counter Logic Gaming, Shopify purchasing a League of Legends spot from TeamSoloMid (TSM), and the Savvy Gaming Group acquiring Electronic Sports League (ESL), Dreamhack, FACE-IT, and Vindex including Esports Engine. There was also a highly publicized franchise fee payment arbitration dispute, disclosed and undisclosed salary “caps” as well as an esports players’ association initiated “walkout.” Finally, Microsoft received approval for its purchase of Activision-Blizzard which is set to shift the entire esports space in ways yet to be seen. Accordingly, while there are many legal topics that are currently trending, here are five ones to monitor as the esports global industry continues to grow and evolve in 2024. 1. Continued player (gamer-tag) and esports team name disputes. Riot Squad Esports sued by Riot Games, Valorant team Squirtle Squad changing its team name, and streamer and content creator Digitalprincxss agreed upon rebrand from “Pokeprincxss” are just some of the recent examples of improper brand building and legal due diligence causing individuals to have to alter their entire established gamer-tag and associated personal “brand” as well as companies being involved in a trademark infringement lawsuits and other costly name disputes. 2. Franchise fee payment disputes. After a highly publicized compelled arbitration and eventual settlement, the Overwatch League eliminated all the outstanding fees owed by the participating franchise teams as well as agreed to absolve the esports organizations of any future franchise league payments. While the exact specifics and reasoning for the settlement are undisclosed, the Overwatch League did not seem to live up to expectations after nearly two dozen teams spent several million dollars in franchise fee buy-ins paid to the league operator Activision-Blizzard as well as expended additional substantial sums on player and personnel salaries, training, and other related team operational costs. While the Overwatch League seems to have disbanded, it will be interesting to see if any other esports franchise leagues that previously required and collected a buy-in payment will be subject to a similar fate with compelled alternative dispute resolution (ADR) by disgruntled franchisees. If so, this additional quarrel will...
Panelist: Casino Esports Conference (CEC) Live 2023 – iGaming, Gambling, and Esports Panels: November 8, 2023 - New York, NY - Justin M. Jacobson recently spoke as part of the Casino Esports Conference (CEC) Live in Atlantic City, New Jersey. Justin participate on two panels as part of the conference including "iGaming and Esports" as well as "Gambling and Esports." These panels explored the growth of iGaming and the integration of esports into digital gambling offerings, casinos, and platforms. They also looked at the current legislation and landscape for wagering and gambling in the esports space including speaking on which states currently have legalized esports gambling as well as touched on some of the existing hurdles to wide-spread adoption of wagering on esports events by more states. The panels concluded by exploring the potential growth opportunities existing in esports for casino and gambling operators and how these companies may best engage with the esports...
Event: 10/24/23 – Esports & Entertainment Networking Event at Coexist Gaming House: November 8, 2023 - New York, NY - On October 24, 2023, the Law Office of Justin M. Jacobson, Esq., The Gamehers, Coalition of Parents in Esports (COPE), Games Industry Gathering (GIG), and Esports Trade Association hosted an exclusive invite-only esports and entertainment industry networking event at the Coexist Gaming House in Manhattan, New York. The night featured a mixture of industry professionals, celebrities, professional gamers, streamers, musicians, artists, and DJs networking over free gaming at this members only club. The event was attended by many influential business professionals in the entertainment, esports, sports, music, and fashion spaces as well as by notable personalities and influencers, including sports agents, financial advisors and wealth management professionals, attorneys, and content creators, including an appearance by former NFL Hall of Fame running back, Edgerrin James.The official recap video can be found here and...
CLE Lecture: Esports Law 101 (2024 Edition) Presented by Federal Bar Association & myLawCLE: November 3, 2023 - New York, NY - On November 2, 2023 Justin M. Jacobson recently hosted a CLE lecture, "Esports Law 101 (2024 Edition)" presented by the Federal Bar Association and myLawCLE. The CLE presentation provided an overview of competitive video gaming or espors world. The CLE also examined the role of attorneys in the esports space including discussing what an esports lawyer does as well as exploring some common intellectual property protections such as copyrights and trademark matters for professional gamers, streamers, esports teams and organizations. It also explored some common contractual terms included in esports talent and sponsorship agreements, including those entered with professional gamers, streamers, coaches, and casters as well as focused on foreign visas and work authorization for professional gamers, content creators, coaches, casters, and other individuals. The CLE finished by examining some other related legal issues for the esports space including FTC and social media disclosures, DMCA and music licensing for streaming and content creation as well as emergence of esports federations, associations, and other governing bodies. Check the lecture...
A Record Deal’s “Re-recording Restriction” Clause and the Taylor Swift “Effect”: A Record Deal’s “Re-recording Restriction” Clause and the Taylor Swift “Effect”By Justin M. Jacobson, Esq. With the continued success of Taylor Swift and her “Taylor’s version” re-recordings of her previously released tracks, the music industry is in a state of evolution as it relates to a record deal’s “re-recording restriction” provision. In fact, in response to Taylor’s re-issuing and exclusive ownership in these new recordings, many record labels have begun to alter the traditional provisions applicable to an artist’s right to “re-record” a song previously provided to label after a certain specified time period. As a result of the shift in industry custom, it is crucial for a musician to fully understand this contractual limitation and how it might impair or provide an artist with an avenue to recapture and fully monetize their previously released works at a later date. Specifically, in many cases, most recording agreements include language that prevents an artist from recording a song for a certain time period. As a result, these clauses provide a set duration that a “re-recording restriction” or prohibition applies. While each contract is different, the time frame typically ranges from 3 to 5 years or sometimes up to 7 years. However, as a result of Taylor Swift’s highly publicized re-release of her previously distributed works, record labels adapted to increase the re-recording restriction time frames to as long as “10, 15 or even 30 years.” Accordingly, some recording companies have even tried to impose a perpetual or “in perpetuity” restriction which would prevent the artist from ever re-recording and re-releasing the song on their own again. While it is generally common for entertainment and music attorneys and other authorized talent representatives to negotiate against and attempt to reduce lengthy re-recording restriction periods, as more artists explore the Taylor Swift “option” of re-recording their previously licensed or sold songs due to the lower hurdles to commercial distribution and monetization, labels may continue to take an aggressive stance on implementing longer restrictive time frames. Additionally, some record companies have also included additional constraints in these provisions to prevent any future re-recordings by the artist from utilizing the re-recorded songs in the same or similar order. As a result of these changes, an artist might try to negotiate a set contractual “buyout” which could be a payment made by them to the record label to terminate an existing “re-recording restriction” provision. In this case, the clause would be based on the musician’s payment of a set amount or potentially providing an agreed upon percentage or even the fully unrecouped amount owed under the record deal. Alternatively, or in lieu of this revision, a musician might try to incorporate an automatic right to end a lengthy “re-recording...
Panelist: The Ethical Issues Created by Web3/Metaverse in the Law: Crypto Currency, Privacy & Ethics: October 18, 2023 - New York, NY - Justin M. Jacobson recently spoke as part of the New York State Bar Association and the California Lawyers Association's "Deep Dive into the Metaverse and Web3: Second Global Law Symposium" on a panel exploring the "Ethical Issues Created by Web3/Metaverse in the Law: Crypto Currency, Privacy & Ethics" with other attorneys including Jeremy Evans of California Sports Lawyer and Amanda Katzenstein of Salesforce. The symposium featured two days of panels exploring various legal issues related to Web3, Emerging Technologies, such as AI, and Digital Assets such as NFTs, including exploring multiple practice areas and examining how lawyers may competently and ethically represent clients in these ever-developing areas. The panel specifically explored the legal ethical issues created by an attorney's usage of web3, AI, and the metaverse as well as advising a lawyer's clients on best practices. The discussion centered around each attorney's duty of confidentiality as it relates to any information input or received in the metaverse or entered into an AI...
Event: 09/26/23 – Esports & Entertainment Networking Event at Coexist Gaming House: October 3, 2023 - New York, NY - On September 26, 2023, the Law Office of Justin M. Jacobson, Esq., The Gamehers, Coalition of Parents in Esports (COPE), and Esports Trade Association hosted an exclusive invite-only esports and entertainment industry networking event at the Coexist Gaming House in Manhattan, New York. The night featured a mixture of industry professionals, celebrities, professional gamers, streamers, musicians, artists, and DJs networking over free gaming at this members only club. The event was attended by many influential business professionals in the entertainment, esports, sports, music, and fashion spaces as well as by notable personalities and influencers, including sports agents, financial advisors and wealth management professionals, attorneys, and content creators.The official recap video can be found here and...
Interview: The FN Story #42 – Justin Jacobson: October 2, 2023 - New York, NY - The FN Story podcast hosted by Taylor "SomebodysGun" Yates interviewed Justin M. Jacobson, Esq. The content piece focused on Justin's background in the esports and video game space as well as explored the various legal issues he handles on behalf of professional esports players, casters, and coaches. The podcast also explored some important provisions and clauses to focus on during contract negotiations for professional esports players, sponsorship deals, on-air talent agreements, and other gaming content creator agreements. The episode finishes by discussing how an esports attorney or esports lawyer can provide for a professional gamer, esports player, coach, caster, streamer, or content creator. Check the full interview here and...
Justin M. Jacobson, Esq. named a Super Lawyers Rising Star for 2023: September 30, 2023 - New York, NY - Justin M. Jacobson of the Law Office of Justin M. Jacobson, Esq. has been selected for a eighth year in a row as a 2023 Super Lawyer Rising Star in Intellectual Property. Justin is listed in the New York Times Magazine as well as on the “Super Lawyer” website. For over three decades, this publication has been regarded by both the profession and public as the most credible and definitive guide to legal excellence in the United States. Super Lawyers select attorneys using their unique selection process consisting of peer nominations and evaluations based on 12 indicators of peer recognition in addition to the attorney's professional...
Interview: The Steady Compass – Saving Esports: To Survive, Orgs Must Evolve: September 24, 2023 - New York, NY - The Steady Compass podcast hosted by Quez interviewed Justin M. Jacobson, Esq. The content piece focused on the various hurdles in the professional esports business including those that exist for esports teams and organizations. The podcast also explored some potential benefits and methods to help the esports business ecosystem evolve and grow to another level. The episode finishes by discussing what possibilities exist for esports teams and organizations to grow and monetize for effectively and efficiently. Check the full interview here and...
Interview: Gamers Change Lives Podcast – Playing by the Rules: How Legal Expertise Shapes Esports Success: August 19, 2023 - New York, NY - The Gamers Change Lives Podcast hosted by Tom Leonard interviewed Justin M. Jacobson, Esq. The content piece focused on Justin's background and past work experience in the entertainment, esports and video game space. The podcast also explored some esports legal matters such as contract negotiation, proper visa and work authorization, and other related legal and business considerations for professional gamers, streamers, coaches, casters and other individuals and businesses in the esports and video game business. Check the full interview here and...
Panelist: Esports Trade Association Consultation Letter Service For O & P U.S. Visas: August 2, 2023 - New York, NY - Justin M. Jacobson recently spoke on the Esports Trade Association's panel exploring the "Esports Trade Association Consultation Letter Service For O & P U.S. Visas" with immigration attorney, Pablo G. Velez. The panel explored the new service created by the Esports Trade Association (ESTA) where the association provides Peer Advisory and Consulting letters for O1 and P1 visas. The discussion centered around the need for the initiative as well as explored the reasons for the creation of the ESTA's service which is available for both members and non-members. Check it...
Quoted: “The Esports Trade Association Launches Consultation Letter Service For O & P U.S. Visas” On The Esports Advocate & Esports Insider: On July 28, 2023, The Esports Advocate and Esports Insider quoted Justin M. Jacobson, Esq., President of Law Office of Justin M. Jacobson, Esq. as part of their article entitled “The Esports Trade Association Launches Consultation Letter Service For O & P U.S. Visas” and "Esports Trade Association launches Consultation Letter service for US esports visas." In particular, Mr. Jacobson commented on the new visa Peer Advisory letter and consultation service created by the Esports Trade Association (ESTA). This new initiative is intended to help foreign esports players, professionals, streamers, casters, and other esports and professional video game personnel to receive work...
What is a Non-Disclosure Agreement (NDA)?: What is a Non-Disclosure Agreement (NDA)? What Benefits Does It Provide?By Justin M. Jacobson, Esq. While not a mandatory practice, it is a prudent course of action when any business or individual is sharing or disclosing sensitive, private, or otherwise confidential information with another person or entity, that the participants enter into an agreement characterized as a non-disclosure agreement or an “NDA” for short. This mechanism is beneficial in all business areas, including for content creators, influencers, and other entertainment talent and celebrities. An NDA is a formal agreement that is signed between individuals or businesses when one or both parties are sharing confidential information with each other. Additionally, these types of documents might be referred to as a confidentiality agreement (CA), a confidential disclosure agreement (CDA), or a proprietary information agreement (PIA). While these contracts may be titled differently, they all are provided for the same purpose which is to ensure that any private information, documentation, data and analytics, client and customer lists, marketing campaign details, business plans and financials, or any other proprietary or confidential materials and information are kept secret and that they are not publicly disclosed or utilized by the receiving party. What is an NDA? Why Use An NDA? What is a Confidentiality Agreement (CA)? What is a Confidential Disclosure Agreement (CDA)? First, it is practical to have a signed NDA in place prior to the disclosure or sharing of any confidential information or materials by either party to ensure that the provided documents are subject to the NDA’s terms. As a result, once a party signs an NDA they cannot discuss, share, or utilize the materials that they receive from the other entity or person other than how it is specified in the agreement. These common protection documents usually restrict a recipient from disclosing or sharing confidential information or documents with an unauthorized party. In this context, many non-disclosure agreements include language that permits the disclosure of confidential documents to a company or a person’s authorized representatives, employees, or agents in accordance with the terms of the NDA such as when the disclosure is necessary in furtherance of the individual’s job on behalf of the recipient. Accordingly, it is the norm for companies and talent to utilize these arrangements in their business as the disclosed confidential information may represent some of their most valuable assets and require this additional contractual-provided protection. Why Create a Non-Disclosure Agreement or Confidentiality Agreement? An NDA can be structured in one of two ways. It can either be a mutual or bilateral NDA which protects and restricts any confidential information disclosed by either party to the other one or as a one-sided or unilateral arrangement which only restricts...
Interview: Fox News Digital – “Esports players stage first-ever walkout”: June 13, 2023 - New York, NY - A Fox News Digital segment hosted by video game journalist Eammonn Dignam interviewed Justin M. Jacobson, Esq. The content piece focused on the recent League of Leagues player "walkout," including exploring its potential implications on League of Legends esports. While the matter was ultimately resolved shortly thereafter, the segment discussed some potential issues arising from professional esports players refusing to compete for their esports organization. Check the full interview...
Some Tips for Game Developer and Game Publisher Licenses: Tips for Game Developer and Game Publisher Licensing Agreements By Justin M. Jacobson, Esq. Once a game developer protects the unique elements of its title with the appropriate intellectual property law protections such as copyrights and trademarks, the developer must then be aware of how its protected intellectual property (“IP”) can be licensed, sold, or used by another party. In fact, with the recent success of the “Arcane” animated series, the “The Last Of Us” television show, and the “Super Mario Bros.” motion picture, this knowledge is crucial for game developers of all sizes including independent or “indie” ones. Game Publishing Licenses for Game Developers and Game Publishers When a game is created, a developer has a variety of opportunities to monetize their title. One of these existing avenues is entering into a licensing agreement with a third-party game publisher to distribute or otherwise publicly sell the title. A “license” or a licensing agreement is a type of written contract that provides the licensee (i.e., the game publisher) with the “right to use” the IP (i.e., the game) owned by the licensor (i.e., the game developer) pursuant to the provisions of the written agreement. While the exact language of these documents differs, this article highlights a few crucial contractual clauses that a game developer should be aware of when negotiating these types of deals with a game publisher and that may be included in many of these standard agreements. While every document is different, these contracts usually outline the rights and obligations of both parties as it relates to the licensed IP as well as address the decision-making procedure for the game’s development, marketing, and sale. A standard licensing deal also contains information on the current and future financing of the title, the royalties earned from the game sales, the game’s overall development plan and timeline, as well as information on to the game testing and “localization” of the product. These types of arrangement also commonly address how and when the game will be distributed, marketed, and manufactured, and in which countries and on which gaming platforms. Video Game Licensing Agreements for Game Developers and Game Publishers A license can be structured as an exclusive or a non-exclusive agreement. An exclusive one is where no other party can use the IP during the term or forever for any purpose or solely for the stated purpose. In contrast, a non-exclusive arrangement permits other parties to use and monetize the same IP at the same time as another entity for the same or similar purpose. In most cases, an agreement between a game developer and a publisher is fashioned as an exclusive contractual arrangement but this can certainly be altered by the contracting parties. A standard video game licensing agreement usually addresses the scope of the arrangement between the game publisher and the developer,...
Event: 04/25/23 – Esports & Entertainment Networking Event at Coexist Gaming House: May 5, 2023 - New York, NY - On April 25, 2023, the Law Office of Justin M. Jacobson, Esq., The Gamehers, Coalition of Parents in Esports (COPE), and Esports Trade Association hosted an exclusive invite-only esports and entertainment industry networking event at the Coexist Gaming House in Manhattan, New York. The night featured a mixture of industry professionals, celebrities, professional gamers, streamers, musicians, artists, and DJs networking over free gaming at this members only club. The event was attended by many influential business professionals in the entertainment, esports, sports, music, and fashion spaces as well as by notable personalities and influencers.The official recap video can be found...
Quoted: “How a Quebec-Based Snack Maker’s Play Into Affiliate Marketing Fizzled” On The Esports Advocate: On March 28, 2023, The Esports Advocate quoted Justin M. Jacobson, Esq., President of Law Office of Justin M. Jacobson, Esq. as part of their article entitled “How a Quebec-Based Snack Maker’s Play Into Affiliate Marketing Fizzled.” In particular, Mr. Jacobson commented on the situation from a content creator, streamer and professional gamer perspective addressing the need for proper written agreements in any situation where a gaming talent works with or deals with any third-party, but especially in instances where the individual is working with companies for sponsorship and brand endorsement opportunities. Click here to check out the entire...
Lecture: Talent Contracts & NIL Matters for Professional Gamers, Streamers, and Content Creators (Shawnee Game Conference 2023): March 15, 2023 - New York, NY - Justin M. Jacobson recently hosted a lecture, “Talent Contracts and Name, Image, and Likeness (NIL) Matters for Professional Gamers, Streamers, and Content Creators” as part of Shawnee State University’s Shawnee Game Conference 2023. This presentation explored and provided analysis on several legal common contract clauses and provisions that competitive esports players, streamers and content creators should be aware of. This session also focused on explaining these clauses while providing insight into how to try to best navigate them during esports talent contract negotiations. The session concluded by focusing on a gaming talent’s “Name, Image and Likeness” (NIL) usage including as the rights relate to competitive gamers, streamers and content creators attending universities while monetizing a gamer’s likeness. Check the lecture here and...
Event: 02/22/23 – Esports & Entertainment Networking Event at Coexist Gaming House: March 2, 2023 - New York, NY - On February 22, 2023, the Law Office of Justin M. Jacobson, Esq., The Gamehers, Coalition of Parents in Esports (COPE), and Esports Trade Association hosted an exclusive invite-only esports and entertainment industry networking event at the Coexist Gaming House in Manhattan, New York. The night featured a mixture of industry professionals, celebrities, professional gamers, streamers, musicians, artists, and DJs networking over free gaming at this members only club. The event was attended by many influential business professionals in the entertainment, esports, sports, music, and fashion spaces as well as by notable personalities and influencers.The official recap video can be found...
Interview: Episode 016 – The Jersey Podcast: February 21, 2023 - New York, NY - The Jersey Podcast hosted by Darian Kelly interviewed Justin M. Jacobson, Esq. The podcast centered on Justin's past legal work in the sports and esports space. He discussed the potential legal issues for professional athletes and gamers as well as explored how the NCAA's stance on Name, Image, and Likeness (NIL) impacts the college esports and sports businesses. Check the full interview here and...
Interview: FTW with Imad Khan – Overwatch League vs. Activision Blizzard (Dot Esports): January 25, 2023 - New York, NY - FTW with Imad Khan on Dot Esports interviewed Justin M. Jacobson, Esq. The podcast centered on the current Overwatch League (OWL) vs. Activision-Blizzard dispute related to esports league franchise fees. He discussed the potential legal issues related to the on-going dispute, including potential jurisdictional and contract provision considerations. Check the full interview here and...
Event: 01/18/23 – Esports & Entertainment Networking Event at Coexist Gaming House: January 24, 2023 - New York, NY - On January 18, 2023, the Law Office of Justin M. Jacobson, Esq., The Gamehers, Coalition of Parents in Esports (COPE), and Esports Trade Association hosted an exclusive invite-only esports and entertainment industry networking event at the Coexist Gaming House in Manhattan, New York. The night featured a mixture of industry professionals, celebrities, professional gamers, streamers, musicians, artists, and DJs networking over free gaming at this members only club. The event was attended by many influential business professionals in the entertainment, esports, sports, music, and fashion spaces as well as by notable personalities and influencers. The official recap video can be found...
Lecture: Legal Matters for Professional Gamers & Streamers (IndieGameBusiness Sessions December 2022): December 7, 2022 - New York, NY - Justin M. Jacobson recently lectured on “Legal Matters for Professional Gamers & Streamers” as part of the 2023 IndieGameBusiness Sessions. This presentation explored the several legal matters that competitive esports players, streamers and content creators should be aware of. This session focused on intellectual property law protections such as copyrights and trademarks as well as explored the usage and formation of business entities by professional gamers and streamers. The session continued by describing and speaking on tax and visa matters as they relate to esports and content creation in the video game space. Check the presentation below and...
Event: 11/16/22 – Esports & Entertainment Networking Mixer at BrookLAN: December 2, 2022 - New York, NY - On November 16, 2022, the Law Office of Justin M. Jacobson, Esq., The Gamehers, Coalition of Parents in Esports (COPE), Community Gaming, Esports Trade Association, THIS Group, and the Play2Learn Foundation hosted an exclusive invite-only esports and entertainment industry networking event at BrookLAN in Brooklyn, New York. The night featured a mixture of industry professionals, celebrities, professional gamers, streamers, musicians, and DJs networking over complimentary beverages from Truly hard seltzer and complimentary gaming powered by Community Gaming. The event was attended by many influential business professionals in the entertainment, esports, sports, music, and fashion spaces as well as by notable personalities and influencers. The official recap video can be found...
What are DMCA Takedown Notices and Takedown Counter-Notices?: What are DMCA Takedown Notices and Takedown Counter-Notices?By Justin M. Jacobson, Esq. What is the DMCA? The Digital Millennium Copyright Act (DMCA) was passed by U.S. Congress to combat copyright infringement in today’s digital content age. This law applied existing United States copyright law to digital mediums and content distributors as well as created a "safe harbor" provision for internet service providers (ISPs) and other digital content providers. Consequently, this “safe harbor” insulates a digital content provider from potential liability for copyright infringement if they adhere to and follow an established “takedown” notice and counter-notice procedure formalized under this legislation. What is a DMCA takedown notice? What is a DMCA takedown counter-notice? As a result of this law, when a user is purported to be utilizing another’s work(s) without proper permission or authorization, a digital content provider's DMCA takedown notice procedure may be utilized to enable a copyright owner to submit a formal takedown notice to a third-party website host, content distributor, search engine, or ISP to request the removal of an allegedly infringing work from the digital platform. A DMCA takedown notice may be submitted to a multitude of major content providers such as Facebook, YouTube, Instagram, Apple Music, TikTok, Spotify, Pandora, Soundcloud, and many other digital content distributors and aggregators. The formal notice received by an entity is then sent to the user who uploaded, monetized, or is otherwise claiming rights in the reported work. The party who receives a DMCA takedown notice from a digital content provider can dispute and contest the provided takedown notice by submitting a DMCA takedown counter-notice. This counter-notice is submitted by the individual or company to challenge the issued takedown notice to maintain the current work and to dispute the allegations continued in the initial DMCA takedown notice. Ultimately, both the initial DMCA takedown notice and any DMCA counter-notice must be signed by the submitting party (either the content owner or their authorized representative) under penalty of perjury which ensures that any sent DMCA takedown or counter-notice is provided in good faith. Accordingly, in order for an ISP or other digital platform to enjoy the “safe harbor” legislation protection of the DMCA, the digital content distributor must promptly comply with a proper takedown notice as the failure by the ISP or platform to do could subject the content site to contributorily liability for any copyright infringement and for any other violations occurring on its platform, including the complained about instance. Who can file a DMCA Takedown Notice? A DMCA takedown notice can be filed by any owner of copyright owner, including an individual content creator as well as by any third-party authorized company, including content publishers or...
Interview: CANA Connection – Esports Business & Law: October 6, 2022 - New York, NY - The CANA Connection Podcast presented by CANA LLC interviewed Justin M. Jacobson, Esq. The podcast centered on the business and law of esports and professional video gaming and examined Justin’s past esports and video game industry work and his career path. He discussed the usage of data in esports and professional gaming space, including the various game publishers approach to data and analytics. Check the full interview here and...
Justin M. Jacobson, Esq. named a Super Lawyers Rising Star for 2022: September 29, 2022 - New York, NY - Justin M. Jacobson of the Law Office of Justin M. Jacobson, Esq. has been selected for a seventh year in a row as a 2022 Super Lawyer Rising Star in Intellectual Property. Justin is listed in the New York Times Magazine as well as on the “Super Lawyer” website. For over three decades, this publication has been regarded by both the profession and public as the most credible and definitive guide to legal excellence in the United States. Super Lawyers select attorneys using their unique selection process consisting of peer nominations and evaluations based on 12 indicators of peer recognition in addition to the attorney's professional...
Event: 09/21/22 – Esports & Entertainment Networking Mixer at BrookLAN: September 26, 2022 - New York, NY - On September 23, 2022, the Law Office of Justin M. Jacobson, Esq., The Gamehers, Coalition of Parents in Esports (COPE), Community Gaming, and the Play2Learn Foundation hosted an exclusive invite-only esports and entertainment industry networking event at BrookLAN in Brooklyn, New York. The night featured a mixture of industry professionals, celebrities, professional gamers, streamers, musicians, and DJs networking over beverages and complimentary gaming powered by Community Gaming. The event was attended by many influential business professionals in the entertainment, sports, music, and fashion spaces as well as by notable personalities and influencers. The official recap video can be found...
Voted As One of the Best Business Law Books of All Time: September 26, 2022 - New York, NY - Today, Justin M. Jacobson, Esq. announced that his book, "The Essential Guide to the Business & Law of Esports & Professional Video Gaming" was voted to Book Authority's top 100 Best Business Law Books of All Time. The textbook was also voted as one of the 17 Best New Business Law Books on Book Authority's Best New Business Law Books list. BookAuthority collects and ranks the best books in the...
Interview: “Have Game, Will Travel” (Full Sail Armada): September 15, 2022 - New York, NY - The "Have Game, Will Travel" podcast hosted by Bennett Newsome of Full Sail Armada interviewed Justin M. Jacobson, Esq. The interview focused on Justin’s past education and career history, including his work in the music, entertainment esports and video game business. He continued by discussing his career path as an attorney on behalf of professional gamers, musicians, athletes and other creative individuals as well as provided detailed information on his esports business law textbook. Check the full interview here and...
Musicians and Producers – Get Your SoundExchange Money in Order: Musicians and Producers - Get Your SoundExchange Money in OrderBy Justin M. Jacobson, Esq. In a previous article, I explored what SoundExchange is and the types of income that this organization collects. While these royalties have always been a vital artist revenue channel, in recent years, due to the increased focus and importance of digital music distribution and streaming services, the amounts collected by this organization have drastically risen along with the potential income available for a musician from this entity. In fact, since 2003, SoundExchange has distributed “more than $9 billion in digital royalties” to music creators; however, many artists are not fully earning or receiving any of this money, including a reported “$60 million” or more in “non-featured artist” royalties that are unclaimed and owed to individual creators. To start, SoundExchange distributes the income from each song by allocating fifty (50%) percent of the funds for the “sound recording” copyright owner, usually a record label, and providing the remaining fifty (50%) percent to the “featured” and “non-featured” artists. These individuals might include any credited or unaccredited musicians, vocalists, producers, engineers, remixers, and/or studio session players who contributed or are entitled to earn a royalty from the recording. As mentioned, in some cases, a record label is the owner of sound recording copyright in the track permitting them to receive this royalty portion; however, if an artist independently releases a song, then the musician may be the owner of the sound recording copyright in the track which provides them with this income. In addition, SoundExchange distributes the other fifty (50%) percent of the income with the “featured artist(s)” on a specific song receiving forty-five (45%) percent of the royalty amount and the remaining five (5%) percent being disbursed to the “non-featured artist(s).” For clarification, SoundExchange defines a “featured artist” as “an artist that is prominently featured on a track or album.” Conversely, they define a “non-featured artist” as “an artist who is not prominently featured on a track or album (i.e., a session musician or a back-up vocalist)." While a party, such as an artist, producer, or record label, may be entitled to receive SoundExchange royalties, if they fail to properly register and index their works with the organization, then they will most likely not receive some or any of their earned royalties. In fact, in some cases, some musicians may be able to register with SoundExchange as both a “featured artist” as well as a “sound recording owner” to ensure that the talent receives their full royalty payment. Furthermore, if there is more than one “featured artist” on a song, then the artists typically equally split the “featured artist” royalty share unless another percentage is agreed in writing by them. Specifically,...
10 Things You Should Legally Do As An Entertainer: 10 Things You Should Legally Do As An EntertainerBy Justin M. Jacobson, Esq. While there are no real bright line rules that an entertainer must follow, there are some essential strategies that a musician should take into account when conducting their music business in the new year. As we have already explored, a musician should approach their career as a business, which includes following the applicable state and federal laws, to ensure they adequately and properly exploit their works and receive the full intended benefit from them. With that said, we have compiled a few guiding resolutions that an entertainer should take to heart and implement this new year. 1. Always consult an entertainment attorney prior to signing anything. When you sign something, it will generally bind you to the terms of the contract, whether you understand them or not. While this might seem obvious and straight forward, many individuals simply sign what they are presented without fully understanding the nature of the document and what the terms actually mean in a practical sense. A musician also may fail to realize that most agreements are negotiable; so, a first offer isn’t usually a “take it or leave it” arrangement, as most situations should permit the discussion and negotiation of some important points prior to the signing. If it is presented as a “take it or leave it” proposition, that is an indication that an artist might want to avoid the deal. Hard sell salesmen usually indicate that an artist should run. An artist should always have time to consider the deal after “the heat” of the moment has passed. This is also an important resolution as sometimes an entertainer may just search the Internet to obtain some standard template or form in an attempt to feel that they are properly secure. In theory, this might be good and might work fine; but, an attorney specializing in the field will bring an expertise and understanding that ensures you have the proper terms and the agreement you sign actually operates as you intended it to. An artist’s worst nightmare is signing something that doesn’t provide the artist with the rights they thought they had. This mistake prevents them from fully realizing their work’s worth. If the cost of obtaining an attorney is too high, there are many volunteer organizations, such Volunteer Lawyers For The Arts, that provide cost-free or reduced fee legal guidance to creators. 2. Always obtain a license to use a “sample,” i.e., anything used in a recording that isn’t yours and is somebody else’s. Failure to clear a “sample” can cause more liability on a potential hit to the sample’s owners than the hit makes. This is a fairly straight-forward resolution as utilizing something that doesn’t belong to an artist can subject them to liability. It is essential to ensure that an artist has rights to whatever they use. A simple motto is that, if this isn’t the artist’s, then the...
Information on RFEs for DJs and Musician Visas: Information on RFEs for DJs and Musician VisasBy Justin M. Jacobson, Esq. and Pablo G. Velez, Esq. of Velez & Cipriano, PLLC After a musician, DJ or other artist submits a visa application for U.S. work authorization, the USCIS occasionally issues a “Request For Evidence” otherwise referred to as an “RFE.” (I-797E “Notice of Action”) The issuance of an RFE is not a formal or full rejection or denial of the visa, rather the notice requires that the applicant submit additional information, documentation, or other requested facts to the visa examiner to enable them to decide on the pending visa petition. While the content of each RFE letter is different, they follow a similar structure which includes a list of all the evidence required to meet the standards of the status, pointing out what has been accepted, as well as any deficiencies. It is prudent to ensure that the examiner has verified that they have received all the information included in the act’s original application. In addition to including the accepted information, the notice lists evidence that the application is currently lacking and that must be submitted by the applicant in order for the visa petition to proceed. As a result, the provided notice indicates the evidence that is deficient or missing and is therefore preventing the officer from issuing a visa. The RFE highlights which eligibility requirements are unsatisfied and lists acceptable documents that may be submitted by the party to satisfy the conditions. Finally, the RFE includes a response deadline and a mailing address where the responding documents must be submitted. The failure to timely submit the RFE documents could cause the immigration official to review the application without this additional information, which generally does not bode well for the application’s success. Additionally, in light of COVID, the response deadlines for previously issued RFEs have been extended. In fact, the USCIS will now consider and review a response “received within 60 calendar days after the due date in the RFE, if the issuance date listed on the request or notice is between March 1, 2020, and July 25, 2022." While this extension provides a bit of leeway for any currently pending applications, if a musician or DJ does receive an RFE, which are more common for first-time applicants, it is crucial for the individual or their agent or manager to begin gathering and timely submit the requested evidence to best strengthen their application. Complying with this additional request provides the applicant with the best chance for approval. Furthermore, the parties should always leave sufficient lead time before a tour or live show date in case any RFEs are issued. This time is crucial because some requests might require some additional work on the musical acts side to gather the requested documents. Ultimately, each situation is different, but a musical act who receives an RFE related to their pending...
Consider these legal angles before forming a streaming organization: Consider these legal angles before forming a streaming organizationBy Justin M. Jacobson, Esq. The emergence of One True King (aka OTK) has evolved the traditional esports business model, from through the organization’s deal with WePlay Esports, its partnership with a game developer, and the team’s organizational partnerships and activations with brands such as Mountain Dew and Chipotle. OTK is an “influencer network and media company built by creators” that was founded by several notable streamers, such as Asmongold, Mizkif, Esfand, and Rich Campbell. Through their collaborative efforts, they had positioned themselves as one of the largest streaming organizations in the world. With the creation and success of OTK, other top gaming influencers are certain to band together to pool their collective resources, capital and “influence” to create and operate formal organizations including Disguised Toast. These talent-led teams are complete with similar internal infrastructure that every other traditional esports organization possesses, such as business development and marketing personnel. When creators do come together to launch a content creation organization, there are several legal concerns that the gaming influencers must be aware of to protect themselves as well as their collective business interests. Some of these organizations may only field a team in one game; while, other larger organizations, may field teams in multiple games. For example, an organization such as Team Liquid or Cloud9 fields teams in a variety of games; while, some teams only have a Valorant team or other single team. Whether the organization is large or small, the legal and business considerations for their proper functioning are fairly similar. Proper adherence to these formalities is extremely important for the potential short-term success as well as long-term viability and profitability of any organization. While there are many relevant business and legal matters related to the management and ownership of a professional esports organization, the following is an overview of some of the most essential and relevant aspects. Protections for Esports Talent Collectives and Organizations - Corporations & LLCs Similar to other esports organizations and businesses, the streamers could create a formal business entity, such as a corporation or limited liability company (LLC). The entity provides protection for each individual creator’s personal assets from any company debts. The created business also enables its owners to execute a written contract that outlines how the organization operates. The document outlines each creator’s share of the organization’s revenue and lists each influencer’s ownership rights in the organization’s name, logo, and any other company-owned assets such as equipment. It may also address which individual(s) possesses the rights to approve the finished content and to issue any licenses...
Interview: Esports Research Colloquium (Esports Research Network): August 3, 2022 - New York, NY - The Esports Research Colloquium presented by the Esports Research Network was hosted by Oliver Leis and featured Justin M. Jacobson, Esq. The colloquium centered on the business and law of esports and professional video gaming and examined Justin’s past esports and video game industry work and his career path. He discussed esports player and coach contracts, event operation tips and an overview of the esports business. The conversation also examined his esports business law textbook, including highlighting several of its most unique features. Check the full interview here and...
Update on Visas for Musicians – A Look at Local Wait Times and USCIS COVID-19 Backlog: Update on Visas for Musicians – A Look at Local Wait Times and USCIS COVID-19 BacklogBy Justin M. Jacobson, Esq. and Pablo G. Velez, Esq. of Velez & Cipriano, PLLC Building on a previous article which explored some of the criteria for DJs and live musical acts attempting to receive work visas to perform at a music festival or concert in the U.S., this new piece is intended to provide an update in light of the substantial delays in visa processing initially caused by COVID-19, as well as illuminating some of the currently existing backlog for in-person visa appointments at US embassies and consulates across the globe, which is a required part of the approval. With this year’s music festival and conference season in full force after an extended hiatus and as the U.S. music and entertainment scene moves back toward business as usual, the renewed and increased demand for foreign musicians performing in the U.S. is experiencing substantial delays in scheduling and fulfilling the required appointments at overseas embassies and consulates to receive the visa stamp after USCIS issues an approval. This delay, combined with USCIS’s backlogged review, response, and approval process for foreign visas, such as the O-1 or P-1, makes it even more important for any touring artist or their booking agent or manager to engage and begin the visa process as early as possible. In fact, in light of the uncertain wait times related to USCIS’s visa approval process, there are unique benefits for a talent that utilizes the premium processing option to secure a timely response and potential visa approval from immigration. Additionally, it is important for touring acts and their representation to be aware that even after USCIS approves a musician’s status, if located overseas, the applicants must then schedule and appear at their local US consulate section to receive the requisite document in their passports by undergoing the “in-person” portion of the process. As a result, there is currently a large back-up in visa appointments with major cities having wait times of several weeks or longer depending on the city. For example in August 2022, Amsterdam has an “appointment wait time” around “120 calendar days.” Similarly, other prominent consulates have substantial wait times that fluctuate based on the time of year and prospective interest. For instance, during the same period, London has a wait time of about “75 calendar days,” Paris has one of about “231 calendar days,” and Madrid stated there is about “198 calendar days” before a non-immigrant visa appointment could be scheduled to appear before a Consular officer. Overall, in light of COVID related delays and as this year’s festival season is winding down, it is crucial that a foreign artist begins exploring their visa status for the upcoming year. In fact, as a result of the recent entertainment industry’s extended “pause,” there seems to be a...
Interview: Iron Lords Podcast: July 31, 2022 - New York, NY - The Iron Lords Podcast hosted by Lord Cognito, Lord Addict, Lord Sovereign and King David interviewed Justin M. Jacobson, Esq. The interview focused on Justin’s past esports and video game industry work and career path, including exploring his previous music business and esports legal and business industry experience. He continued by discussing his favorite video games and gaming memories as well as provided detailed information on his esports business law textbook. Check the full interview here and...
U.S. Visas for Foreign Professional Athletes – O1 and P1 Visas: U.S. Visas for Foreign Professional Athletes – O1 and P1 VisasBy Justin M. Jacobson, Esq. and Pablo G. Velez, Esq. of Velez & Cipriano, PLLC As a result of the global sports business, professional and amateur athletic competitors travel from countries across the world to compete in sporting competitions held within the United States or to play on behalf of a U.S. sports franchise in a professional league, such as the NBA, NFL, NHL, MLB, or MLS. Each foreign national athlete must receive the proper work authorization to enter the United States to earn a wage or other compensation (with the limited exception of earnings exclusively from a tournament prize pool). This requirement applies to an individual whether they are a currently a professional or are an aspiring amateur or athletic prospect. This criterion necessitates that a foreign athlete must first obtain the proper visa prior to entering the U.S. in order to perform some paid work on behalf of a professional sports organization or for any other company or brand. This requirement is applicable when an athlete is signing to a U.S.-based professional team or club, competing in an international or Olympic event in the U.S. as well as when acting as an amateur or “minor” league player for a United States team. The failure to receive the appropriate type of visa could prevent or delay an athlete’s arrival and hinder their ability to work, including impacting their availability to compete on behalf of a team or in a tournament. In addition, in light of the recent NCAA changes related to a college athlete’s “name, image and likeness” rights (NIL), foreign student athletes who may initially be in the country on a student visa may be required to obtain a similar talent visa and potentially reevaluate their current “student” status in light of accepting or possibly receiving any paid compensation while being a college athlete, including paid endorsements or personal appearances. Similarly, a prospective student-athlete should be aware of this fact, especially if they are a highly scouted talent or one that hopes to capitalize on their NIL rights. While there are many available work authorizations, there are a few non-permanent visa statuses available in the United States that a professional athlete might avail themselves to. Depending on the talent’s level of recognition and achievement, two most common ones that an athlete could apply for are a O-1A or a P-1A. Specifically, the USCIS defines a “professional athlete” as an “individual who is employed as an athlete by a team that is a member of an association of 6 or more professional sports teams whose total combined revenues exceed $10,000,000 per year, if the association governs the conduct of its members and regulates the contests and exhibitions in which its member teams regularly engage” as well as “any minor league team that is affiliated with such an association.” (8 U.S.C. § 1154(i)(2)(A)(B))....
Event: Entertainment & Esports Networking Event at ZeroSpace: July 19, 2022 - New York, NY - On July 14, 2022, Ford Model Esports led by Justin M. Jacobson, Esq., Merrill Lynch, The Gamehers, and Happy Warrior hosted an exclusive invite-only networking event at ZeroSpace in Brooklyn, New York. As the Call of Duty League Major arrived in Brooklyn, a mixture of industry professionals, celebrities, professional gamers, streamers, coaches and models collided over complimentary beverages at a state-of-the-art space. The event was attended by many influential business professionals in the entertainment, sports, music, and fashion spaces as well as by notable personalities and influencers. The event featured products and on-site giveaways from Revel Spirits, Owl’s Brew, Creek Water Whiskey, Bear Fight Whiskey, CADDY Cocktails, Next Century Spirits, ZenWTR, Koia, AIM Controllers, Gamer Advantage, Infinikey, Area 53 NYC, Skyline Drive-In, and Yolanda’s Sweets. The official recap video can be found...
NIL rights provide clear path for college esports pros: NIL rights provide clear path for college esports prosBy Justin M. Jacobson, Esq. The NCAA’s recent policy shift on a student athletes earning income and profiting off their “name, image and likeness" (NIL) while competing for a university has provided further clarity for current and aspiring pro gamers and content creators contemplating college esports. This change has also helped them pursue other intercollegiate sports while also being signed to a competitive esports organization or operating as a sponsored gamer or streamer. Previously, the NCAA passed on governing esports and competitive video gaming partly due to the “existing financial model of individual sponsorships for talented esports players and streamers conflict[ing] with the NCAA’s [previous] stance on amateurism.” However, it appears that the NCAA’s prior reservations are no longer warranted, which helps all current and future esports competitors and gaming creators. While many colleges and universities are developing their own esports or video game component on campus, college esports players — signed or unsigned — have several new on-campus income opportunities. Akin to traditional college athletes, these competitive college gamers could obtain independent endorsement, sponsorship or brand partnership deals, or receive free product in exchange for social media support. Some colleges have factored a gamer’s outside income into their recruitment pitches, with one school even “honor[ing] the existing partnerships [that] the players came to [a] school with” as well as not including the player in “any promotions that would cause [a] conflict with [their] existing deal.” College gamers could also earn income for coaching, paid gaming sessions, or events. These engagements might be autograph signings, fan “meet-and-greets,” live appearances, or paid speaking events. As a result, a competitive collegiate gamer could earn income in all the ways that a college student or any other pro athlete or influencer does, including by providing paid social media posts and livestreams. These funds would be in addition to anything that they’re already earning or could earn as a pro gamer. This income might include a salary if they are signed to an esports organization, streaming and social media revenue, sponsorship and endorsement fees, tournament and event winnings, and even income from any player-branded physical and digital merchandise or other licensed products. Even though the NCAA is still not regulating or governing college esports, its recent directive permits all NCAA college athletes to monetize their NIL rights as well as to hire professionals to advise them (such as agents, managers and attorneys). This new policy shows how a college esports athlete can continue their career as a pro gamer while also earning an education and competing at the collegiate level, including those who also might be student...
Panelist: Sports Business Institute’s Sports Business Career Camp 2022: June 21, 2022 - New York, NY - Justin M. Jacobson recently spoke on two panels as part of the “Sports Business Career Camp 2022” hosted by the Sports Business Institute at Fordham University. Justin participated on a panel titled “Sports Law and Agency” that explored the growth of Name, Image, and Likeness (NIL) rights among college athletes and the various income streams available for these students as well as new ability to retain agents, lawyers, and other independent advisors on their behalf. He later spoke on the “Esports” panel which focused on the growth of college esports as well as looked at the various career paths and opportunities in the esports and video game business and legal spaces. The annual sports business career camp featured high school students and many prominent guest speakers including a former professional New York Ranger, Tom Laidlaw as well as representatives from both professional and collegiate teams and organizations. The Sports Business Institute (SBI), a Fastlane Co., is an organization of distinguished leaders with a long track record of success working with students and aspiring career professionals to pursue a career in sports. SBI has produced education and professional development programs in partnership with industry leaders including the New York Yankees, NFL, NBA, PGA, MLS, the National Baseball Museum Hall of Fame as well as the College Football Hall of...
Lecture: CIMFest 2022 hosted by Georgia Game Developers Association: June 18, 2022 - New York, NY - Justin M. Jacobson recently lectured on “IP Law Protection and Copyright Licensing for Game Developers” as part of the 2022 Columbus Interactive Media Festival (CIMFest) hosted by the Georgia Game Developers Association. This presentation explored the various creative assets that a game developer or publisher might receive and apply for copyright protection for. The session continued by describing and speaking on licensing agreements for game developers with a game publisher, merchandise company, a television or movie studio or any other third-party, including identifying some common contractual provisions included in game publishing deals. Check the presentation below and...
Interview: ABA Journal’s Modern Law Library: June 6, 2022 - New York, NY - The American Bar Association (ABA) Journal's "Modern Law Library" hosted by Lee Rawles on the Legal Talk Network interviewed Justin M. Jacobson, Esq. The interview focused on Justin’s past entertainment and esports legal industry experience. He continued by discussing his esports business law textbook, including exploring the textbook's content and speaking on how an attorney or any other professional or individual can get involved in the industry and what they could learn from the book. Check the full interview here and...
Interview: Pandanomics hosted by David Chen: June 6, 2022 - New York, NY - The Pandanomics Podcast hosted by David Chen interviewed Justin M. Jacobson, Esq. The interview focused on Justin’s past entertainment industry work and career path, including exploring his previous music business and esports legal and business industry experience. He continued by discussing his current work as Manager of Ford Models' esports and gaming talent division as well as provided detailed information on his esports business law textbook. Check the full interview here and...
Copyrights and Trademarks for Podcasting and Podcasters: Intellectual Property Protections: Copyrights and Trademarks for Podcasting and PodcastersBy Justin M. Jacobson, Esq. In addition to the licensing of music and content for a podcast and other related business considerations for operating a podcast, there are also a variety of intellectual property protections that a podcast operator could employ to efficiently manage and safeguard their business interest, including those that exist under trademark and copyright law. Consequently, an owner should be aware of the available mechanisms to protect their podcast’s intellectual property (IP) assets, including any rights that the podcaster may secure in any recorded podcast materials as well as those contained in any associated creative assets. Trademark Protection for Podcasters: Trademark of Podcast Series Name, Logo Design, and Hashtag One intellectual property protection available to a podcast operator is a trademark. Trademark law protects a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods or services of one party from those of others. A trademark could be obtained in a company name, a color, a sound or a logo design that appears on goods or services or for a catchphrase, a marketing slogan or a hashtag that is used to promote or advertise the goods and services of an individual or a business. As a result, trademark protection is available for podcast series name, a podcast’s logo design as well as any marketing slogans or hashtags that the podcast uses to promote and market itself. In these cases, it is important to be aware that the protected podcast name must be utilized for a podcast series and not just for one episode. Furthermore, prior to selecting and beginning to use a specific podcast name, it is prudent for the podcaster to first conduct a thorough trademark screening search to determine the availability of the desired podcast title. This search is conducted to ensure the party’s usage is not prevented by another mark that is already using the same or a confusingly similar mark as the desired podcast series name. Additionally, if podcast series is named after or incorporates a specific individual’s legal name, stage name, or nickname, the podcast operator must obtain rights to the individual’s name, including acquiring the ability to register, own or otherwise use their name in commerce for the specific services, including for operating a podcast. As a result, the podcaster operator should execute a formal release with the featured talent to permit the network to apply for and register a trademark in the show name that incorporates another person’s name in it. While a podcast operator might apply for protection in a variety of goods and services, two commonly applied for International Classes of Goods are Class 009 and Class 041. Class 009 includes downloadable MP3 and other digital audio files, and Class 014 includes entertainment...
Legal Tips for Operating and Hosting a Podcast – Business Formations, Contracts, and Disclosures: Legal Tips for Operating and Hosting a Podcast - Business Formations, Contracts, and DisclosuresBy Justin M. Jacobson, Esq. Building off a previous article, with the rise of individuals, professionals, and businesses hosting, creating, and distributing their own podcast shows or series, it is crucial that a podcast operator is aware of the some of their mandatory obligations as well as some legal protections available to properly protect their personal and business interests. As a result of the commercial and public relationship, podcasts are subject to a variety of legal rules, including Federal Trade Commission (FTC) endorsement regulations as well as disclosure requirements for any paid “on-air” and social media advertisements. Additionally, it is crucial for a “for-profit” podcast to ensure that they comply with any applicable state, federal and international laws to avoid potential liability. Furthermore, as a podcast grows, proper agreement structure is extremely valuable, including executing written documents with any co-hosts, guests, and any other individual involved in the editing, production, or creation of a podcast. Podcaster Tax Liability and Business Protections such as Corporations and LLCs It is important to be aware that once a podcast generates revenue, the operator is “in business,” whether they earn money through the sale of on-air advertisements, sponsorships, or even something as small as an affiliate code or displaying a paid banner on the podcaster’s website. Specifically, the act of receiving income by publicly distributing a podcast imposes several legal obligations on the content’s proprietor. Considering these requirements, a podcaster might contemplate forming a formal business entity, such as a corporation or a limited liability company (LLC). These entities shield and protect the owner from personal liability for any claims related to the podcast’s operation. This fact means that the company, not the actual owner of it, is liable for the podcast’s debts and contractual obligations. As a result, any potential podcast creditors generally can only recover money from the business and not from the individual owner’s personal assets, such as their bank accounts, property, cars, stocks, or other personal holdings. While protecting a podcast creator from personal liability is an important advantage of forming a business, another one is that having a separate business entity permits the podcast to open a business bank account in the entity’s name. This option facilitates easier tracking of the podcast’s expenses and permits the potential deduction or “writing off” of relevant, properly documented business expenditures related to the podcast’s operation. These business entities also provide streamlined management over any podcast owned intellectual property (i.e., trademarks, copyrights, logos, podcast episodes, podcast anthems, podcast artwork) as well as any physical...
COVID-19 Update on Talent Visas for Entertainers, DJs, and Musicians: COVID-19 Update on Talent Visas for Entertainers, DJs, and MusiciansBy Justin M. Jacobson, Esq. and Pablo G. Velez, Esq. of Velez & Cipriano, PLLC The last two years have been unpredictable, especially for live music, concerts, nightclubs, and any other large social gathering of people in any space. However, it is important for an entertainer to be aware of current visa processes, whether for a renewal or initial filing especially as national and international travel bans and restrictions are ending. Similar to any job, a foreign national musical artist desiring to earn revenue within the United States must first obtain proper work authorization by applying for the appropriate visa with the United States Citizenship and Immigration Services (USCIS). For musicians, this law applies generally to any undertaking by the talent, including but not limited to performing at a night club, at a live musical festival or concert, or when performing any other paid live appearance, musical performance, sponsorship, and any other paid work. How To Obtain Musician, DJ, Producer and Band Visas - All Musicians Need a Visa In most situations, an individual may apply for either the O-1B and the P-1B visa status (depending on whether the artist is a solo act or part of a group, respectively). In the United States, the O-1B visa is available for an individual who possesses extraordinary ability in the arts, such as a musical performer. It is typically only appropriate for the musician who has made a mark in the particular field and has enough industry-wide name recognition to justify the visa’s issuance. To obtain this type of visa, the musician must apply to the USCIS and provide a formal written application that proves the requisite level of talent. If a musician or DJ, is applying for an O-1B, they must be aware that they, as well as any individual or business entity acting as the applicant’s agent of record, must submit a variety of information for the application. If the foreign talent has been nominated or received a prestigious industry award, such as a Grammy, then they are immediately qualified for this visa type. However, since that is a rare situation, musicians typically take the alternative route, which is displaying their achievements by fulfilling at least three of the USCIS’ established criteria. In these cases, the talent must submit evidence that they previously played a leading role or were a headliner at a respected nightclub, musical venue, or festival, including information citing how the talent was part of the notable music festival or other live event. This evidence could be substantiated by presenting documents that demonstrates the musician’s participation in the event through event flyers, official press releases, as well as any published news and media articles about event or the series of events. The individual must also prove that they achieved national or internationally recognition for their music talent...
Content and Music Licensing for Podcasters: Content and Music Licensing for Podcasters: Using Music, Media, and Video Content in a PodcastBy Justin M. Jacobson, Esq. Adding “Podcast Host” to your resume? There has been a growth in podcasting, including a large increase in overall podcast “listenership.” This expansion includes podcasts hosted by individuals and celebrities as well as those created by businesses who are either launching or purchasing a single show or an entire podcasting network. As a result of the increased audience, different entertainment and media companies have taken their own approach to monetizing podcasting. For example, some entities are spending millions of dollars to acquire existing successful podcast shows and networks; while, other media businesses are launching their own podcast shows or networks. In fact, digital streaming service Spotify reportedly spent a total of “$400 million” in a series of large content acquisitions for a variety of existing podcast shows and networks. These purchases included acquiring the Joe Rogan Show and the Bill Simmons Podcast as well as purchasing podcast networks Gimlet Media and Parcast. Conversely, Amazon created its own new podcast network, “Audible Originals” to provide its own exclusive original content, including works from entertainers such as “Carrie Coon, Christian Slater, Kevin Bacon and Yvette Nicole Brown.” In addition to well-known celebrities, journalists, and other on-air talent hosting their own podcasts, there has also been a rise in individuals, industry professionals, and businesses hosting, creating, and distributing their own podcasts. In all of these cases, it is crucial that a podcast operator is aware of their various legal rights in any of the broadcasted material, especially if they incorporate or use any music, sounds, videos, animations, text or any other protected third-party intellectual property in their recorded and publicly distributed podcast. Podcast Usage of Music, Images, Photographs, Videos and Other Third-Party Media One of the most important considerations for many podcasters is the usage of media content during their broadcast, especially the inclusion of another party’s sound or video clip. There are several specific legal principles applicable to a podcast that incorporates an existing song, sound effect, video, photograph, animation, or any other recorded sound in a live or taped episode. A guiding concept for these situations is that in cases where the podcast host is utilizing and playing any pre-existing material or any works that are created by another individual, the podcaster must obtain prior written authorization or consent from the appropriate owner(s) of the work, typically in the form of a written contract called a “license.” This means that prior approval is required for any material that the host did not independently create on their own or purchase outright from a third-party. This legal requirement specifically applies to a...
What Are “Neighboring Rights”?: What are "Neighboring Rights" In The Music Business?By Justin M. Jacobson, Esq. Featured artists, session musicians and master sound recording owners from other countries, including record labels, are entitled to an additional royalty stream that artists and sound recording owners within the United States are currently not receiving. This additional revenue stream is referred to as “neighboring rights” royalties. In recent years, this revenue stream has become a valuable source of additional income for non-U.S. citizen performers and sound recording copyright holders. It is reported that neighboring rights generates over $2 billion per year, including "$2.6 billion" being distributed in 2019. What are Neighboring Rights? Why Are They Important to A Musician? It is well established within the industry that there are two copyrights in music, the underlying musical composition (“PA”) and the sound recording (“SR”). The underlying musical composition is usually exploited by a music publishing company and songwriters. They receive public performance royalties from a Performing Rights Organization, such as ASCAP, BMI or SESAC in the U.S. The sound recording is typically owned by a record label, which receives their rights from the featured vocalist on the track “Neighboring rights” are monies distributed to musicians and master sound recording owners when a work is publicly broadcast or streamed. The concept of “neighboring rights” is derived from copyright law and this legal principle has been applied to many countries through the signing of the 1961 Rome Convention. The Rome Convention treaty was enacted to provide featured performers and session musicians with an additional revenue stream when their works are publicly performed. How Can A Musician Claim or Earn Neighboring Rights Royalties? To receive “neighboring rights” royalties, the Rome Convention treaty mandates that a featured performer, studio musician and master sound recording owner must be a permanent resident of one of the signatory countries. Some signatory nations include Canada, the United Kingdom, Australia, Germany, Japan, Greece, France, Hungary, Italy, Sweden, Switzerland, Spain and Poland. In Rome Convention signatory countries, neighboring rights collection societies, similar to United States’ ASCAP and BMI, collect and distribute “neighboring rights” royalties to their members. Since collection societies vary in different countries, a musician must register the individual master recordings with each collection society in all of the countries that their track is receiving airplay in to receive full payment. For example, the performing rights organization that distributes neighboring rights royalties in the United Kingdom is PPL; in Germany, it is GVL; in Spain, it is AIE; and, in Canada, it is the Recording Artists’ Collecting Society (RACS), which is a division of the Alliance of Canadian Cinema, Television and Radio...
Name, Image, and Likeness (NIL) Rights in Collegiate Athletics: Sports Law: Name, Image and Likeness (NIL) Rights: Recent Changes in Collegiate AthleticsBy Justin M. Jacobson, Esq. The recent changes in college athletic administrative policies have caused a monumental shift in the sports business and legal profession with emergence of a new potential “$100 million” market. As a result of a series of lawsuits and the passage of “at least 10” state laws, including in Alabama, Colorado, Florida, Georgia, Mississippi, New Jersey, New Mexico and Texas, the governing body for collegiate athletics, the National Collegiate Athletic Association (NCAA) officially changed its long-standing policy regarding “amateurism” and the ability for student athletes to earn income and be compensated while participating in college athletics. Specifically, the NCAA issued “interim” guidelines that provides NCAA college athletes within its “1,100 member schools” with “the opportunity to benefit from their name, image and likeness.” This policy shift means that current as well as prospective and aspiring college student-athletes are now permitted to earn income for the usage of their “name, image, and likeness” while they are actively participating in college sports. Additionally, since no federal NIL law currently exists, the new NCAA guidance specifically allow students to engage in NIL-related commercial activities so long as the talent’s actions are "consistent with the law of the state where the school is located" as well as enables students “who attend a school in a state without an [existing or enacted] NIL law [to also] engage in this type of [commercial] activity without violating NCAA rules.” In practice, these guidelines mean that college student-athletes within all 50 states have ability to derive revenue in a variety of commercial avenues previously unavailable to them while also competing in athletics at a university level. What is Name, Image, and Likeness Rights? What does this mean for College Student Athletes? To start, Name, Image, and Likeness (NIL) Rights are part of a person’s “right of publicity,” which is an intellectual property right recognized by many states. NIL rights provide a person with the ability to personally or with the assistance of another entity commercialize and publicly profit from their “name, image, voice, signature, and likeness.” (Justin M. Jacobson, Esq., The Essential Guide to the Business & Law of Esports & Professional Video Gaming, 130 (CRC Press 2021)) As a result of the NCAA’s new policy and the newly enacted state NIL laws, current and aspiring college athletes can now engage in a variety of previously prohibited commercial and promotional activities. This means a student athlete can compete while pursuing a degree and obtaining a formal college education and at the same time also explore their other passions and potential business opportunities. What do the NCAA’s Rules for Name, Image...
Trademark Infringement in The U.S.: Trademark Law: Trademark Infringement in the U.S.By Justin M. Jacobson, Esq. Trademark law provides the exclusive right to use a mark to differentiate the goods or services of one person or business from those of another. A trademark commonly includes a word, phrase, logo, design or a combination of these, which are used in relation to goods and services. Trademarks are used to designate the source of a good, and are used as an indicator of the quality of the goods. The same is true for marks used in connection with services, typically referred to as “service marks”. What is a Trademark Infringement? A trademark can be infringed in a variety of ways Trademarks can be valuable assets of a business, as the mark associated with the goods or services helps a business gain consume recognition. As a result of receiving a registered trademark, the Lanham Act permits the holder of a registered fedeal trademark to file a trademark infringement claim against a party or business that makes the unauthorized use of an existing trademark or uses a protected mark in connection with goods or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and services. Trademark Trial and Appeals Board (T.T.A.B.) – Opposition and Cancellation Proceedings Generally, if a trademark owner believes its mark is being infringed, they may file a lawsuit in either state or federal court for trademark infringement, depending on the circumstances of the case. (15 U.S.C. § 1125) A trademark owner can bring an infringement case to prevent a third-party’s use of a registered mark that is identical or confusingly similar to the owner’s mark when used in connection with goods (or services) that are similar or related to those offered by the party bringing the suit. The relevant inquiry in such cases are whether the targeted consumers are likely to be confused about the source of the goods or services sold in connection with the marks in question. An owner can also bring a suit when the use of the mark falsely suggests an affiliation, connection or association with them. In addition, a mark owner may also consider utilizing the Trademark Trial and Appeal Board (“TTAB”) to cancel another existing federal trademark registration through a Cancellation Proceeding. In the TTAB, the sole remedy is the cancellation of the infringing mark without the ability to recover any related damages for the infringement. Trademark Litigation - Likelihood of Confusion, Tarnishment, Blurring There are several relevant factors involved in determining which causes of action to pursue against an infringed party. Parties may examine the non-infringing party’s usage of the mark, including whether it was registered on the Principal or Supplemental Register, as well as how long the mark has been registered and used in commerce. For example, if a trademark is registered on the Principal Register and the mark...
Athletes and Entertainers: Clear Your Tattoos – Copyright Protection for Tattoos: Copyright Protection and Rights Clearance for TattoosBy Justin M. Jacobson, Esq. It is important for individuals and businesses in the entertainment and video game industries to be aware of the licensing requirements related to the use, display and reproduction of an entertainer, celebrity, athlete, or other social media influencer’s tattoos and other “body art.” In fact, it is established that the creator of a tattoo design, usually the tattoo artist, is the owner of the specific tattoo design, even though it is applied to another individual’s body. As a result of this little explored legal doctrine, there has been several past public instances in professional sports and video game development industries involving the “unauthorized” public display of a tattoo. For example, the movie production company for The Hangover 2 faced a copyright issue as a result of the film replicating and displaying professional boxer Mike Tyson’s “tribal” tattoo on an actor in the motion picture. Similarly, there has been series of past issues related to usage, display, and digitization of a professional athletes’ identifiable tattoos, including the inclusion of original tattoo designs on NFL, NBA and WWE in-game video game characters. For example, the game developer of a UFC video game faced a copyright dispute due to the use and replication of a UFC fighter’s tattoos in the game. Related to this was a case filed by a tattoo artist against the video game developer for NBA 2K, Take Two Interactive due to the usage and display of a variety of NBA players’ original tattoo artwork on their in-game characters. As a result of these encounters, many entertainment and video game companies began to adopt new policies targeted at proper copyright clearance for tattoo designs. For instance, NFL player Colin Kaepernick notably had "his tattoos featured” in a previous Madden football video game after he had acquired and “received [proper] permission” from the tattoo artist to permit such a digital reproduction. It is clear from the variety of legal issues encountered by entertainment and gaming companies that proper clearance and permission from the tattoo’s copyright owner(s) is crucial and should be a standard practice for all tattooed entertainers, athletes and other celebrity talent to incorporate Can you Copyright a Tattoo? Copyright Protection for Tattoos and Tattoo Designs According to 17 U.S.C. § 102, copyright protection exists “in original works of authorship fixed in any tangible medium of expression [… ] from which they can be perceived, reproduced, or otherwise communicated.” This provides copyright protection for any “original work of authorship” that can be perceived. This means that this legal protection applies to a finished tattoo design because the image (tattoo design) can be viewed on an individual’s exposed skin as well as reproduced in photographs and digitally in a video game....
Trademark Litigation and Cease and Desist Letters: Trademark Law: U.S. Trademark Litigation and Cease and Desist LettersBy Justin M. Jacobson, Esq. If a party believes that their ownership rights in a registered trademark are violated by another individual or business, this individual or company has a variety of available options to police and protect their rights. This might include potentially instituting a formal claim or lawsuit against them and engaging in trademark litigation. In addition to or in lieu of filing a lawsuit, the trademark registrant could instead send a formal notice letter commonly referred to as a “cease and desist” (C&D) letter. What is a Cease and Desist (C&D) Letter? Why Send a Cease & Desist Letter? A C&D letter is written correspondence that directs the other party to cease from their alleging infringing activities. The letter might also include a demand for compensation or other renumeration as well as contain other formal requests such as to remove or “take down” a damaging product. Additionally, the preparation and mailing of a cease-and-desist letter could be beneficial in a subsequent trademark action or litigation proceeding as the letter could later be introduced during a formal legal proceeding as evidence of notice of a violation. This is because the written correspondence is intended to provide the alleged infringing party with notice of their potential violation of the owner’s rights in a mark so that they will cease acting in the damaging manner. In fact, this correspondence could potentially be introduced during a formal legal proceeding as evidence of the party’s notice of their violation. In some instances, if a party receives a formal notice and disregards it, then this fact might enable the mark owner to proceed against the other party for “willful” infringement in addition to any other viable causes of actions. Trademark Trial and Appeals Board (T.T.A.B.) – Opposition and Cancellation Proceedings After a formal demand letter, the initiating party has a variety of options to proceed forward and prosecute their claim. For instance, the damaged party can file an Opposition Proceeding with the Trademark Trial and Appeals Board (T.T.A.B.) to oppose a pending trademark application on the basis that the application infringes or otherwise damages the owner’s trademark rights. (https://www.uspto.gov/trademarks/ttab/initiating-new-proceeding) Alternatively, a party can initiate a Cancellation Proceeding with the T.T.A.B. in an attempt to cancel an infringing registered mark when the mark violates another party’s rights. Additionally, a damaged party might turn to other means, including exploring obtaining an injunctive relief to prevent an existing infringement. In lieu of the above options, a damaged party could also initiate a formal lawsuit in state or federal court or even with the U.S. International Trade Commission.Since a trademark owner can acquire rights through “common” law as well as...
Trademark Renewals: Trademark Law: U.S. Trademark Registration Renewals - Renewal of Registered TrademarksBy Justin M. Jacobson, Esq. To maintain a trademark registered with the United States Patent and Trademark Office (U.S.P.T.O.) in good standing and to continue to receive the benefits of the registration, the mark must be renewed so that it is will not be invalidated and cancelled. If a registration is cancelled, the owner will lose the priority and seniority that the registration had already obtained through its continuous use in commerce for the listed goods or services and they will have to re-apply to re-register the trademark. This would require the preparation and filing of a new trademark application, including paying an additional filing fee for a mark that was previously registered. In the U.S., there are two renewal periods for every registered trademark. The first renewal period is the five (5) year trademark renewal which must be filed five years after the mark’s registration date. After this first renewal filing, the subsequent renewal is the ten (10) year renewal (the second renewal), which is due five years after the proceeding trademark renewal. Following the second renewal, the registrant must continue to renew the trademark every ten (10) years to keep the registration in force. Five-Year Trademark Renewal - The Filing of Section § 8 and § 15 Trademark Renewal After a trademark has been in continuous use for five years, the owner is required to file the five-year trademark renewal. This consists of the preparation and filing of an Affidavit of Continued Use (the Section §8 affidavit) as well as potentially the accompanying Affidavit of Incontestability (the Section §15 affidavit). In particular, the first trademark renewal must be filed between the fifth (5th) and sixth (6th) year after the registration date. Failure to file the appropriate renewals within the time period will cause the registration to be cancelled unless the required renewal is filed within the extended grace period. As of May 2022, the current §8 filing fee is $225 per class and the §15 filing fee is $200 per class. Therefore, the total government filing fees for a timely filing will be $425 for the combined §8 and §15 filings in addition to any applicable legal fees. There is a six-month grace period during which the renewal affidavits can be filed for an additional filing fee per class. Again, if a trademark owner fails to renew within this period, the mark will be considered “dead” and will no longer be registered. Ten-Year Trademark Renewal - The Filing of Section § 8 and §9 Trademark Renewal The next required trademark renewal is due five years after the previous five-year renewal. This is the ten-year renewal which consists of a § 9 trademark renewal and an additional §8 affidavit. These filings must be made between the ninth (9th) and tenth (10th) year after the mark’s registration date. After this, a mark must be...
Intellectual Property Law Protection of Comics, Cartoons, Anime, and Manga Works: Intellectual Property Law Protections for Comics, Cartoons, Anime, and Manga WorksBy Justin M. Jacobson, Esq. Ranging from the characters from Marvel, Disney, Pokémon, Dragon Ball Z, South Park, Mario, SpongeBob SquarePants, Sailor Moon, and many other creative properties, today’s popular entertainment products feature a plethora of unique intellectual property (IP), including rights that exist in cartoons, comics, anime, and manga stories. As a result, the need for proper legal protection for these creative assets is crucial, especially as more individuals and businesses incorporate their works into a variety of avenues including physical and digital merchandise, in video and computer games, television shows and motion pictures, as well as in written and digital literary works. This article explores trademarks and copyrights, which are two paramount intellectual property legal considerations that all creators, animators, and illustrators should be aware of, including those parties involved in the design and monetization of any written and digital animations, characters, or illustrations, such as the creators of cartoon, anime, manga, or other comic book stories. Copyright Protection for Cartoons, Comics, Anime, and Manga Works A copyright is a common intellectual property protection available to the owner of a creative work. For example, a copyright might exist in a specific created character (i.e., Bart Simpson or Mickey Mouse), in any composed story lines, such as any written text accompanying a work, as well as in any derivative works based on an original cartoon, anime, manga, or other comic creation. For instance, a derivative work could be a film, a television show, or a video game based on or containing a protected character such as the Super Smash Brothers video game titles featuring Nintendo characters such as Mario and Luigi or the Attack on Titan television series based on the existing anime story. As a result, a creator can obtain copyright protection in any digital or physical creation, such as a written book as well as in a physical or digital comic, manga, or anime work. Copyright protection could also exist in a digitally created asset, such as an NFT, in any 3D animation or image, as well as in any 2D cartoon, anime, or manga created piece, whether the work is available digitally or as a printed copy. Consequently, the creator of a unique character could either individually or jointly protect each individual character design, as well as apply for protection in their entire finished work. This means that the work’s creator could individually copyright each specific character design, the fully written comic or digital manuscript as well as any created audio-visual work including protection for any of the sounds and animations contained in the final piece. Furthermore, the copyright owner could potentially protect any unique merchandise, products, or other apparel designs they create which incorporates their...
Music Licensing for Restaurants, Nightclubs and Bars: Copyright Law: Music Licensing for Restaurants, Nightclubs and BarsBy Justin M. Jacobson, Esq. When operating a business, it is important for an owner to be aware of how restaurants, nightclubs, bars, and other hospitality enterprises can legally play music for its guests. Specifically, a public performance license must be obtained by the venue owner from the appropriate performing rights organization (PRO) to play the music for the owner’s patrons. This requirement applies to any establishment that is hosting live musical performances, including a live band, a solo artist, or a disc-jockey (DJ) as well as for store or restaurant that plays any music played within their establishment. In fact, this licensing requirement applies to a business playing music on traditional terrestrial radio as well as for digital and satellite radio stations and digital music streaming platforms such as SiriusXM, Pandora, Spotify, Tidal, or Apple Music Music Licensing for Nightclubs, Bars, Restaurants, Pubs, Concert Halls, Music Venues Typically, a business owner can obtain the appropriate license(s) from the appropriate performing rights organization (P.R.O.). Performing rights organizations license “small” performing rights in a composition. Today, there are currently four major performing rights organizations in the United States, which include the American Society of Composers, Authors & Publishers (ASCAP); Broadcast Music Inc.(BMI); the Society of European Stage Authors & Composers (SESAC); and, Global Music Rights (GMR). These right organizations are authorized by the rights holders, typically the music publishing companies and recording labels, to license, administer, and compensate their artist members, such as songwriters and music producers, for the public performance of their works. Each performing rights organizations charges different fees and rates based on the size of the establishment. For example, a small store or club would generally pay less in licensing fees to a PRO than a large club with an extensive sound system would. (17 U.S.C. § 100 et. al.) As discussed, nightclubs, bars, restaurants, and other hospitality establishments generally are required to obtain a license from the applicable PROs to legally play music to its guests. In most cases, a nightlife or hospitality business can receive a “blanket” license from a performance rights society. This license permits them to publicly perform all of the songs in the society’s respective repertoire without requiring them to obtain an individual license for each song that is performed. This means that most all entertainment, culinary and other retail establishments need to acquire these licenses in order to play music for its patrons. Additionally, the use of a background music service, such as Muzak, might preclude this need for a licensing from a PRO since these types of music services already obtain the proper authorization...
Copyright of Dance Choreography: Music Law: Copyright of Dance ChoreographyBy Justin M. Jacobson, Esq. Over the years, there has been an on-going public debate regarding the copyright protection afforded to the “creator” of a dance. This includes a dispute brought by Fresh Prince Of Bel-Air actor, Alfonso Ribeiro for his “Carlton Dance” against game developer, Epic Games. Furthermore, several other lawsuits were filed against Epic Games for the alleged usage of protected dance choreography in their game, Fortnite. In particular, the game publisher was providing its users with the ability to purchase in-game items referred to as “emotes” that were digital representations of specific dance moves. In-game “emotes” are “movements” that a game character can perform while playing the game. “Emotes” can either be purchased through the game developer’s in-game marketplace or they can be earned through achievements from continued gameplay. As a result of the inclusion of dance “emotes” in Fortnite, several musicians claimed that these “emotes” (dance moves) infringed on their protected dance movements. This included claims from the creator of the “2 Milly” dance, Terrence “2 Milly” Ferguson, one filed by the “Backpack Kid,” rapper Blocboy JB for his “Backpack Kid dance” as well as a claim by the “Orange Shirt Kid,” for alleging copying his signature dance move “Random,” which was “being sold in Fortnite [labeled] as [the] ‘Orange Justice’” dancing “emote.” With the rise in frequency of such lawsuits aimed at the use and reproduction of allegedly copyrighted dance choreography, it is important for a party incorporating another party’s dance moves into their work as well as for a creator to understand what can be protected and what an individual can do to apply for protection in their own unique dance choreography. Copyright of Dance Moves - How to Copyright Dance Moves and Choreography Specifically, the U.S. Copyright Act of 1978 was enacted, and it provided copyright protection for “pantomimes and choreographic works” that are created after January 1, 1978, and which are fixed in some tangible medium of expression. (17 U.S.C. § 102(a)(4)) Prior to the enactment of this copyright legislation, a creator was required to attempt to register these types of works as “dramatic compositions.” As a result of this copyright legislation, the U.S. Copyright Office provided some additional guidance on the elements related to the copyright registration of dance choreography in Circular 52. In this copyright circular, choreography is defined as “the composition and arrangement of a related series of dance movements and patterns organized in a coherent whole.” (Copyright Office Circular 52) This document also included information on some typical elements that are used to determine whether a fixed work is protectable, including examining whether the creation features “[r]hythmic movements of one or more...
UKnightedXP Announces Addition of Justin M. Jacobson, Esq. as a Legal Advisor: May 9, 2022 - New York, NY - Today, UKnightedXP, Inc. announced that Justin M. Jacobson, Esq. has joined the non-profit organization as a Legal Advisor. UKnightedXP is a 501c3 nonprofit “that offers education and consulting services at low or no cost that furthers our mission.” The organization exists to “facilitate innovation by helping to share the potential of gaming culture to enhance effectiveness, growth, and overall quality of life.” UKnightedXP’s mission is “advancing the world through gaming, education, and charity." CEO of UKnightedXP’s CEO Mitchel Reed stated “Justin is joining our team as we look to the future of gaming, esports and community and finding ways to create and scale global social impact as a charitable, strategic consultancy. He is an incredible human, talented attorney, and a tremendous asset to the gaming industry.” Jacobson added that “it is an honor to assist such an innovative and charitable organization as they aim to advance the world through esports and video...
What Is SoundExchange? Why You Should Sign-Up?: Music Law: What Is SoundExchange And Why You Should Sign-Up?By Justin M. Jacobson, Esq. In today’s music business, a musician needs to understand and receive all the various streams of revenue that they are entitled to for their musical works. However, many of today’s artists are uninformed as to what royalties they are entitled to; and, even more musicians are not properly registered nor have their works indexed. This prevents the artist from receiving all the income earned for their creative works. One of these most important streams of income that many musicians fail to recognize or handle properly are the revenues collected by SoundExchange. What is SoundExchange? How Do You Index Songs With SoundExchange? Why You Should SoundExchange is a performance rights organization authorized to collect royalties for the digital performance of sound recordings under Section 114 of the U.S. Copyright Act. The right to these funds was originally established with the passage of the Digital Performance in Sound Recording Act of 1995 and later expanded by the Digital Millennium Copyright Act. Originally, SoundExchange was created by the Recording Industry Association of America (R.I.A.A.) to handle these new revenues; however, SoundExchange eventually became its own stand-alone entity representing the interests of over one hundred thousand artists and copyright owners. As of August 5, 2015, SoundExchange reportedly paid over $3 billion directly to its artist and label members with its distributions growing each year. Unlike the other performance rights organizations in the United States that collect royalties for the public performance of musical compositions (i.e., ASCAP, BMI, and SESAC); SoundExchange is the only entity authorized to collect royalties for the digital performance of a sound recording. SoundExchange derives its authority, pricing and guidelines from the Copyright Royalty Board, which is appointed by the U.S. Library of Congress. SoundExchange is run by a board of directors that includes nine artist representatives and nine label representatives. This structure gives artists an equal say in the running of the organization. SoundExchange is authorized to collect digital performance royalties on behalf of the owners of the sound recording copyright (i.e., the actual recording of a performance of the musical composition, which is referred to as the “master recording”). Typically, the sound recording copyright is transferred to the record label as a part of the recording contract with the musician. However, there has been an increase in sound recording ownership by the artists themselves as record labels are extending far fewer recording contracts than they had done in the past. This fact is further evidenced by the large number of musicians who are involved in “Do-It-Yourself” music promotion and distribution without any traditional record label assistance. Additionally, it is...
Pros and cons? Thoughts on the Overwatch League ‘new teams’ decision: Pros and cons? Thoughts on the Overwatch League ‘new teams’ decision (Using New Franchise Names)By Justin M. Jacobson, Esq. Game developer, Activision Blizzard announced that the new teams in its “Overwatch League” will be compromised of newly established teams with the league owning the rights to these created teams. This new move has wide-spread impact, including both legal and financial ramifications, for all those team organizations and players involved in Blizzard’s newest league. The most obvious reason and benefit for this is the ease of licensing and league-wide sponsorship. Instead of the league having to acquire individual licenses from each organization to sell “official” team merchandise containing their logos, the league is able to create new teams and have the exclusive rights to license and otherwise utilize these teams and their associated imagery as they see fit. This permits the league to enter into more lucrative and long-term exclusive licensing deals that are applicable to all teams without having to separately negotiate or consult with each individual organization owner. Furthermore, it simplifies the league’s ability to create league-wide sponsorship deals. This includes the opportunity to create new “sponsored” jerseys for official league competitions as well as new “sponsored” gaming equipment utilized by all league competitors. These new product placement opportunities combined with the potential “all-access” that the league can provide these brands, creates a new inherent value that this potential league has; and, that none of the other developers or interested Esports parties, including already established organizations, possess. One last additional benefit is that league-wide ownership of all the intellectual property (trademarks and copyrights) in the team names, logos and player imagery, is that it permits much more cost efficient and manageable rights enforcement. This includes the ability to prevent the creation, sale, import and/or export of any infringing or counterfeit items containing the league’s protected assets (team logos). The league can also protect its rights world-wide by obtaining protection in many countries throughout the global and the related enforcement powers, such as country border controls. Finally, new franchise teams, similar to Major League Soccer, could potentially create new exposure and “hype” by hopefully tapping into a fan’s pride of “their” city and wanting to support their “local” Esports franchise. These new entities could also create some new excitement for the players and viewers by creating new rivalries. There should also be more opportunities for the game’s top talent to compete against each other. This new league also permits the creation and potential usage of new “developmental” and “substitution” players, especially, if any scheduling or other conflicts arise between a player’s team organization...
“Beats For Sale.” Now What? – Some Legal Issues: Music Law: “Beats For Sale.” Now What? A Look At Some Of The Legal IssuesBy Justin M. Jacobson, Esq. The rapid rise of the internet and the ease of world-wide instant peer-to-peer communications have provided many upcoming artists with new opportunities to monetize their unreleased, original works. The use of social media and the internet has made it possible for aspiring music producers, vocalists and musicians to instantly spread their music and attempt to make their own mark on the music industry. This pursuit has led to a large number of artists, in particular many music producers, advertising and promoting their “beats for sale.” This is to earn an immediate profit on their unreleased musical works. While this may seem to be a straight-forward transaction, where a musician pays a specified fee to purchase a “beat” or instrumental from a producer; there are many legal issues that arise. These issues must be taken into account to ensure this transaction is done properly and that all parties involved are properly compensated at that instant as well as in the future. "Beats for Sale"? Legal Matters and Considerations for Selling Music "Beats" and "Instrumentals" There are several considerations a purchaser must take into account when purchasing an instrumental track or “beat” from another. The first consideration is whether the instrumental track is being leased or sold. Also, whether the license (right to use the track) is an exclusive or non-exclusive “deal.” Typically, when a creator “leases” a beat to another, this arrangement provides the leasor (party leasing the instrumental) with the right to utilize the instrumental and to reproduce, sell or otherwise utilize the finished works containing the beat for a specified period of time. However, this transaction does not generally give the leasor the exclusive and indefinite right to utilize the beat. The creator is usually still able to re-sell the same instrumental to others. The leasor may also have to enter into an additional lease with the creator after the expiration of a specific time frame if they wish to continue utilizing and exploiting the recording that contains this leased beat. When negotiating an appropriate license fee for this particular option, is important to discuss and agree on how the leasor plans to utilize the beat. This includes how many copies of the finished work and in what mediums (i.e. CDs, downloads, streaming) it will be used. Also relevant is the territory or area the finished work can be sold in (i.e., North America, Europe, “the universe”) and whether it can only be used for a particular use (i.e. for demo use only, for iTunes sale only, free on a mixtape, or just for sending a song in an email). Conversely, a creator can instead assign all of the creator’s rights in the work to the purchaser by selling the instrumental and the creator’s exclusive rights associated with the track. Generally,...
Bands, Brands and Artist Names – Own Them Or Risk Losing Them.: Trademark Law: Bands, Brands and Artist Names – Own Them Or Risk Losing Them.By Justin M. Jacobson, Esq. An artist, band or brand name is one of the most important, if not, the most important feature in an individual’s career. Therefore, ownership and prior proper clearance of a particular name is prudent; and, generally, the creator should apply for trademark or service mark in their artist, band or brand name as soon as possible. Trademark Law Protection for Band Name, Artist Names and Brand Names Protection of Stage Name, Band Name, Performing Artist Name, Music Producer and DJ Name While the cost may be prohibitive, the potential downfall for lack of a search or registration could be much more detrimental and costly. Remember everything you do is based on the “name” and making a change destroys what you have built. Therefore, it is prudent to conduct a trademark screening search to identify any potential bars to your name and to determine the availability or lack thereof, for a particular name chosen. This will ensure you are not infringing on someone else’s registered or protected mark. Typically, an application can be filed for a mark currently in use or for one that the owner intends to use. An intent-to-use trademark or service mark application is filed prior to the actual use of a mark to “reserve” a particular name for a specific good or service. The trademark or service mark must actually be used in commerce within six months after a Notice Of Allowance is issued or an extension must be filed. If an individual chooses not to register their name and/or logo, they risk others adopting and using similar marks and logos. They also risk losing the presumptions of ownership and validity a federal trademark registration provides as well as the nationwide rights that are acquired by marks used in interstate commerce. If an individual fails to register a band name and just begins utilizing it in a specific area, the individual may be later forced to only advertise and utilize the mark in this particular area. Federal registration would entitle the individual to utilize the mark throughout the nation. Benefits of a Trademark Registration for Bands, Brands, Musicians, Creative Artists and Talent There are many other benefits to registering a trademark or service mark, including a presumption of ownership and validity of the trademark or service mark after the first five (5) years of registration. Second, a registration can be used offensively to prevent others from adopting and using confusingly similar marks for the same or similar goods or services. Third, the (R) symbol is notice to third parties of your trademark or service mark rights. Fourth, a trademark or service mark registration records for the owner, nationwide rights in the trademark or service mark as of the date of filing the application. Fifth, after five (5) years of securing a trademark or service mark registration and continuous use of...
Digital Hometaping Royalties (DART) Royalties: Music Law: What is The AARC and Digital Hometaping Royalties (DART) Royalties and ClaimsBy Justin M. Jacobson, Esq. Excerpts from “What is The AARC?” 56 Journal of the Copyright Society 213 (2008) by Justin M. Jacobson. What is the Alliance of Artists and Recording Companies? What is the AARC? The Audio Home Recording Act of 1992 (A.H.R.A) imposes royalty payments on the manufacturing, importing, and distribution of digital audio recording devices and digital audio recording media in the United States. These royalties are generally referred to as digital hometaping royalties (DART). What are Digital Hometaping Royalties? What are DART Royalties? How To Claim DART Royalties? The A.H.R.A. places an obligation on the importers and manufacturers of digital audio recording devices and digital audio recording media to file quarterly and annual statements with the Register of Copyrights accompanied by the appropriate payments. The basic royalty on digital audio recording devices is set by statute at two percent of the transfer price, with a $1 minimum and $8 maximum per machine. Royalties on the blank digital audio recording media are set at three percent of the manufacturer’s or importer’s transfer price. The monies collected by the Register of Copyrights are then divided into two basic funds: (1) a Sound Recordings Fund which receives two-thirds of the monies; and (2) a Musical Works Fund which receives the other one-third of the monies. Three percent of the total money in the Sound Recordings Fund is set aside for non-featured performers and vocalists, while sixty percent of the remainder is allocated to the copyright owners of sound recordings and forty percent is allocated to the featured recording artists. The monies in the Musical Works fund are divided equally between the copyright owners of the musical compositions and the authors of the compositions. The Alliance of Artists and Recording Companies (AARC) was established by the Recording Industry Association of America (RIAA) in 1992 to facilitate the collection and distribution of these digital royalty funds as well as to negotiate the distribution of both domestic and foreign digital media royalties that artists are entitled to under the A.H.R.A. The AARC is governed by 26 board members consisting of 13 artists and 13 record label representatives. In September 2021, the AARC closed down; and, as a result, SoundExchange will now be responsible for collecting these royalties. In the past, the A.A.R.C. would contact the U.S. Copyright Office to negotiate the distribution of the royalties collected by the U.S. Copyright Office from manufacturers and importers of digital audio recording devices and media to their members. The allocation of these royalties by the A.A.R.C. is based upon annual record sales as calculated by the Soundscan System. Soundscan tracks the sales of music and music video products throughout the U.S. by collecting...
What Makes Gamer-Tags and Esports Team Names Such Valuable Trademarks?: Esports Law: What Makes Gamer-Tags and Esports Team Names Such Valuable Trademarks?By Justin M. Jacobson, Esq. With the rapid international expansion and increased profitability of esports, including a surge in the number of players and teams involved in the competitions, the need to properly protect one’s “brand” and its associated intellectual property grows even more important every day. In the United States, protection for a particular mark or “brand” is provided by trademark law. It is essential for esports competitors to ensure they address trademark rights early in their career in order to properly exploit and monetize their products and services within this realm. Trademark Law Protection for Esports Teams and Gamers and Streamers Gamer-Tag A trademark registration provides the owner with the exclusive right to utilize a particular “mark” in commerce to differentiate their goods or services from those provided by others. A “service” mark is a mark used in connection with providing a particular service (e.g., participation in video game competitions, talent management services). Protection applies to a particular word, logo, slogan, phrase, smell, sound or a combination of these, used in relation to specific goods or services. This means that trademark protection is provided for a particular “name,” known as a “word mark” or for a particular logo, known as a “stylized mark.” In the esports context, this means that there are separate trademarks, which each require a separate application for the team name, the team’s logo, the user’s in-game name or “gamer-tag” as well as a user’s unique “gamer-tag” logo (if one exists). This is true, even if the logo already includes the team or player’s “gamer-tag” in it. Initially, a trademark screening search should be conducted first to determine the availability of the name and to assess the existence of any other confusingly similar marks that may block your application. Once a search is conducted and a name is cleared, a federal or state trademark application should then be filed with the appropriate state department or with the United States Patent and Trademark Office (“U.S.P.T.O.”). An application can be filed for a mark that is currently in use, called an “actual use” application or for one that the owner intends to use, called an “intent-to-use” application. An intent-to-use application is filed prior to the actual use of the mark in commerce by the owner to “reserve” a particular name for specific goods or services. The applicant must then actually use the mark in commerce within six months after a “Notice Of Allowance” is issued by the U.S.P.T.O. or an extension to file a “Notice of Use” must be submitted to extend the deadline to complete the registration. Why A Trademark Search? Trademark of Gamer-Tag for Esports Players and Twitch Streamers While the initial costs to search, prepare and file...
Why Do You Need A Band Member Agreement?: Music Law: Why A Band Member Agreement? – Reasons & ConsiderationsBy Justin M. Jacobson, Esq. While every band dreams of making it big and one day sharing the stage at a sold-out arena, the trials and tribulations that they encounter on the way to the top can leave lasting impacts on the band members as well as shape their financial and musical fates for the rest of the band member’s career. An “all for one” band member mentality, with each member receiving an equal share of all profits and equal say in the band’s operations, is great in theory; but, as money begins to roll in and problems are encountered, these sentiments are frequently tossed aside and become second-fiddle to the current situation or crisis. While it is not always the easiest conversation to have, a band should address, identify and agree to various essential points on how they operate. The creation of a band member agreement is the ideal medium to express these points. What is a Band Member Agreement? The importance of a Band Member Agreement It is advisable that each band member has their own attorney or independent legal advisor when drafting and agreeing to a band member agreement. However, if due to financial or other factors, that is an issue; then, the cost and labor of separate counsel can be avoided if each band member agrees to a written waiver of independent counsel. That would permit a single attorney to act as a scribe on behalf of the entire band and merely formalize the band members’ agreement. Generally, the law classifies the grouping of two or more people associated for a specific business purpose as a “partnership.” That entitles each partner to equal ownership in all of the partnership’s property (tangible and intangible), profits and debts.Each partner also has the ability to obligate the other partners to legally enforceable agreements with third-parties. These are reasons why many bands select a corporation or LLC as their business entity. While this traditional partnership arrangement may be the choice the band prefers, it is best to enter into a written agreement that formalizes these points as well as addresses various other ones to ensure that all band members are in agreement and understand what they are actually entitled to and own. There are various important issues that should be addressed in a band member agreement. A written agreement can apply to a formal corporate entity, such as a Corporation or an LLC and it can also be enforceable against the particular individuals who sign the agreement. Thus, the profits and losses from the band can be split as the parties desire, including a split by a shareholder’s stock ownership in a corporation (i.e., you own 10% of the Corporation’s shares, entitling you to 10% of income generated by the Corporation) or any other profit sharing formula that the band members agree to in writing. Control and decision making authority are essential terms that need...
Why An Esports Player Representative And Where They Fit In?: Esports Business: Why A Player Representative And Where They Fit In?By Justin M. Jacobson, Esq. Transparency is vital and so let’s start with a full disclaimer; I’m an esports player representative, so this may seem like a “pitch”, which in a way it undoubtedly is. However it is also meant to spotlight persistent misconceptions that the esports industry has for player representatives as well as where and how they fit into the esports business ecosystem. Setting aside the obvious bias of the author (me), an independent talent representative, including licensed attorneys, managers, and marketing agents, have existed since the inception of the modern entertainment and sports industries. It is the standard in all other major talent driven industries, including motion pictures, television, music, football, baseball, basketball, hockey, soccer, as well as the literary and modelling worlds. While their application and use in emerging professional sports, such as esports, is not as widely used, it is now becoming the norm for top gaming talent to utilize independent, competent third-party representatives in the advancement of their businesses and professional gaming careers. In particular, an individual who has extensive experience in contract review and negotiation is suggested. In fact, many such individuals are currently being utilized by professional gamers, streamers, content creators, coaches, analysts, casters and other talent involved in esports. While there are obvious drawbacks to a third-party representative consulting and representing a gamer in their everyday business; the potential downfalls that may occur as a result of a misunderstood agreement could have wide reaching negative implications. A gamer may see the additional cost that a professional representative imposes as prohibitive; but, the long-term value, experience and connections that they possess could be infinitely more valuable to the gamer’s long-term career advancement and justify this expense. There will always be unscrupulous and less than competent advisers; however, for the most part, the competent and top quality ones usually rise to the top. In particular, this industry is very reputation and referral driven; and as such, those who do not do their job properly are quickly replaced with more competent representatives. Similar to a player representative in other major North American professional sports, an esports player representative’s primary task is the negotiation of the gamer’s player contract with the professional organization or team. This includes reviewing and providing detailed analysis on the short and long-term ramifications of the various provisions listed in these typically long and ambiguously written documents. As with any initial draft, the agreement is typically slanted in favor of the drafter, who, in most instances, happens to be the team. Thus, a qualified professional is able to fully understand the clauses and provide...
Why A Songwriter “Split Sheet” Just Isn’t Enough?: Music Law: Are You Co-Writing Songs? Why A “Split Sheet” Just Isn’t EnoughBy Justin M. Jacobson, Esq. For some unexplained reason, frequently when artists go into the recording studio to work on a track together, they typically sign a “split sheet” and think it suffices. In reality, the traditional songwriter “split sheet” could merely be used as a stop-gap measure that is meant to ensure all parties are on the same page and understand what was contributed to the song by each party. Ultimately, songwriters should enter into a more elaborate and complete agreement to ensure the song can be properly used. What is a "Split Sheet"? Why A "Split Sheet" Is Not Enough To Secure Rights A “songwriter split sheet,” or “split sheet” for short, is a form that is signed by all the parties involved and lists each producer and songwriter. Each party’s contributions and ownership percentage of a particular musical composition are detailed. A typical “split sheet” should also include additional information about the parties, including each person’s physical mailing address, performance rights organization information (in the U.S., ASCAP, BMI, SESAC), publishing company information (if there is one), birthdate and Social Security and EIN number. This document may seem to be comprehensive enough to cover the parties involved as it lists each party’s specific contribution (i.e. lyrics, beats, melody, etc.) and the corresponding percentage that each party owns of the final piece; however, it does not specifically address numerous important issues that could make or break a tune and severely inhibit its commercial value. Generally under U.S. Copyright Law, if no agreement exists between the contributors to a particular copyrighted work, the assumption is that all of the contributors are considered joint-authors and own an undivided equal share of the song. This permits each owner to issue third-party licenses without the approval or consulting of any other owner as long as they account for any profits they made to the remaining owners. While this may be acceptable in situations where the actual work was equal among the contributors; it is not always the case, and could cause some serious issues if the composers do not understand this point. For example, if members of a band create compositions, sign a split sheet and then break up; each individual from the group can record and release the same material, merely subject to an accounting and payment. This is frequently thought of as a nightmare situation. Therefore, the right to issue or enter into third-party licenses for the finished material should be agreed upon in a more formal contract. This is an important point that a typical “split sheet” does not address at all. Additionally, a standard “split sheet” does not speak about many ancillary and important elements to a song’s commercial value. This includes any right of publicity matters, such as...
Assess Your Assets: What Entertainers And Athletes Need To Protect Themselves: Assess Your Assets: What Entertainers And Athletes Need To Protect ThemselvesBy Justin M. Jacobson, Esq. Picture this, you’re an unmarried professional athlete, no spouse; but, you have three children with three different women and no will. Upon your death chaos ensues, as no specific individual is seen as your “surviving spouse” under the law; so, now the three mothers of the three children have no right to any of your assets. The athlete’s estate and only the surviving heirs (the children) are entitled to collect under the law. Clearly, this poses a potentially costly dilemma, especially if one of the mothers has lived with the deceased prior to his death. This costly crisis is one that prudent estate assistance can avoid or at least mitigate. Intelligent planning will enable you to ensure your wishes are observed when such is needed. What is a Will? Why Should A Celebrity Create A Will? What are the benefits of a written will? As the complexities of today’s society continue to evolve and as instances of potentially debilitating injuries with long-term effects continue to rise in the entertainment and sports world, the need to have one’s financial and medical affairs in order to properly care for one’s loved ones when an entertainer or athlete is incapacitated or worse, is even more of a necessity than ever before. Protecting one’s family and finances are truly a paramount concern which frequently gets lost in the midst of a busy career and is rarely effectuated before it is too late. In order to ensure proper guidelines are adhered to, even when an individual is unable to participate in the conversation, it is critical that an estate is planned properly in advance to provide appropriate assistance for the correct individuals. Generally, to properly administer an individual’s estate, a will or a trust as well as a living will, health care proxy and power of attorney should be executed to ensure an entertainer’s wishes are adhered to and those he cares for the most are adequately supported. This avoids potentially costly estate battles as well as sheds light on the complex issues that are prevalent in today’s world as they relate to non-martial children and other non-traditional family dynamics. An individual who fails to execute these documents in advance may find that when they are deceased or permanently incapacitated, their wishes may not be adhered to at all and loved ones they wished were taken care of, are not. This becomes even more complicated when non-martial children and non-nuclear family members are involved in an entertainer’s affairs. What are Wills and Trusts? How Can Celebrities, Professional Athletes and Entertainers Use A Will? A will is a document that demonstrates the creator’s wishes on how his property is to be disposed of upon his death. It lists how the deceased’s property should be distributed, who has guardianship over any children as well as describes how...
“Record Deals” – Recording Agreements: The Artist & Recording Label Relationship - A Look At Standard Record "Deal" or Recording ContractBy Justin M. Jacobson, Esq. Another important document in the talent industry is the agreement that governs the artist (talent) and recording label relationship. This article is an examination of a few selected clauses from a standard recording industry agreement, better known as a “record deal.” Recording Agreement for Musician and Record Deals for Artists With Record label Once a musician has finished its product (music), the music is then distributed to the public for sale, either physically (CDs, vinyl), digitally (MP3 downloads, internet streams) or in both formats. Distribution is generally handled by a third-party on behalf of the artist unless the artist independently distributes their own music themselves. If an artist utilizes a third-party distributor, one of the industry’s most dominant distributors of recorded music is the recording or “record” label. These companies dispense the musician’s recorded music through a variety of channels, including to “Big Box” Retailers such as Best Buy and Target. Record labels are also involved in digital distribution by providing the work as digital downloads (MP3 format) in digital stores such as iTunes Store and on digital music streaming platforms, such as Spotify and Pandora. Today’s recording industry landscape has significantly changed from its earlier roots, with many of the older, independent labels being sold and merged into each other. For instance, there are still a variety of major recording labels, such as Capitol Records, Columbia Records, Interscope Records and Atlantic Records; however, most of these are owned by other larger entertainment entities such as Warner Music Group, Universal Music Group or Sony Music Entertainment. In addition, many major labels have also established “vanity” labels. These act as smaller distribution companies where a producer or an artist signs additional artists or producers to this imprint and the “vanity” label then is dispensed to the public by a larger entertainment entity. For example, “Cash Money Records” is a “vanity” label distributed by Republic Records, which is under the Universal Music Group umbrella. There are also a variety of independently owned record labels such Sub Pop Records, Epitaph Records and Norton Records, who operate and distribute works on their own. In addition, there has been a recent rise in “digital only” record labels that function like traditional record labels; but, solely distribute music digitally. What is in a Recording Agreement? What is in a Record Deal or Contract? Once an artist selects the appropriate distribution entity, it is standard practice for the parties to enter into an agreement outlining the deal points. To better comprehend this contractual relationship, let us now review a series of common clauses included in many standard record label...
The Rise Of The Sponsored Professional Gamer: Esports Business: The Rise Of The Sponsored Professional Gamer and StreamerBy Justin M. Jacobson, Esq. With publications constantly reporting on the esports “boom,” most of the world’s marketing agencies If you browse your Twitter feed or turn on your local news, you are sure to see something related to esports. While the mainstream media and the non-endemic brands of the world are finally catching up, the trend of utilizing video game content creators or “streamers,” as part of a brand’s marketing campaign is not a new fad. In fact, online content streamers, in particular, those who utilize YouTube or Twitch’s streaming platform have been around and involved in these types of activations for several years. In 2017, according to Forbes, several of these online content streamers grossed several million dollars, including Felix “PewDiePie” Kjellberg ($12 million) and Logan Paul ($12.5 million) As brands attempt to further integrate and market their product to the esports demographic and as esports press outlets continue to spotlight the individual competitive gamer, the focus and use of professional competitive gamers as part of a brand’s marketing plan has become prevalent. For instance, Intel recently entered into a sponsorship arrangement with Team Secret’s professional Counter-Strike: Global Offensive gamer, Julia “Juliano” Kiran. This action is different than how many brands have proceeded. They initially solely utilized traditional video game streamers, who may not be competitive gamers, for their branded activation. These companies also have traditionally focused solely on sponsoring and publicly aligning themselves with the esports organization or team rather than with the individual player. In recent months, this has begun to change due to the immense skill that these professional gamers exhibit. The development of a highly interactive and loyal gamer following as well as the international exposure that brands can obtain through a gamer’s participation in any of the streamed or televised tournaments has enabled this change. There has also been an increased focus from media, press and the teams themselves, to expose their signed talent to the public through interviews and other unique content meant to highlight the gamers’ distinct personalities. For instance, famous League of Legends’ player “Faker” was featured in traditional sports publication, The Players’ Tribune. Also, League of Legends’ League Championship Series franchise, 100 Thieves, who received a major investment from Cleveland Cavaliers’ owner, Dan Gilbert have launched their own unique content series, “The Heist,” in an effort to introduce the team so that the fans can familiarize themselves with the players. Another League of Legends’ League Championship Series franchise, the Golden Guardians, owned by Golden State Warriors’ majority owner Joe Lacob and his son, Kirk, provided “in arena” player introductions...
NIL Law: The Postmortem Right Of Publicity: Name, Image, and Likeness Law: The Postmortem Right Of PublicityBy Justin M. Jacobson, Esq. As technology advances, additional legal situations, including those relating to the rights of the deceased, continue to arise. One of today’s hot button issues is the use of computer-generated imagery (“CGI”) and computer-generated holograms (“CGH”) recreating deceased individuals for commercial purposes and how it relates to an individual’s right of publicity after death. This includes a series of recent public instances, such as the use of a holographic representation of deceased rapper, Tupac, performing live at the 2012 Coachella Music Festival in California, the debate around recently deceased actress, Carrie Fisher’s potential “CGI” inclusion in the upcoming “Stars Wars” franchise movies and the use of “CGI” to recreate the deceased actor, Paul Walker in the recent movie, “The Fast and Furious 7.” What is a Postmortem Right of Publicity? What are Name, Image and Likeness Rights? As mentioned above, a will is a document that reveals the testator’s (the creator of a will) wishes on the disposition of their property upon their death. This document lists who is entitled to what property, such as any bank accounts, real estate and other personal property that the testator owns. A will may also include information regarding the guardianship for any minor children as well as list how funds earmarked for the minor would be handled if the will is effective before the minor is of age. A will also detIt is clear that there is enormous value in a deceased celebrity’s persona, commonly referred to as a “deleb.” For instance in 2016, Michael Jackson was the highest earning “deleb,” grossing $825 million. Additionally, in that same year, the right holders to Arnold Palmer’s likeness ($40 million) and Elvis Presley ($27 million) were both substantial earners, further reinforcing the substantial value in postmortem publicity rights. An individual’s right of publicity is the right to control the use of a person’s name, nickname, voice, image, and/or likeness. This includes preventing any use, whether commercial or non-commercial, without prior approval from the rights holder. Authorization to exploit an individual’s right of publicity can be obtained through an agreement granting a third party the permission to utilize an individual’s right to publicity for a specified purpose. There is no applicable federal statute regarding the disposition of an individual’s right of publicity at death, so an individual’s postmortem right of publicity has to be interpreted based on state law. In these instances, the location of an individual’s domicile at the time of their death is typically of paramount importance. This is because a person’s “domicile” typically determines which state law is applicable to determine the rights of a particular deceased individual. The scope and length...
Music Talent Management Agreements: The Artist & Manager Relationship - A Look At Recording Industry Management AgreementsBy Justin M. Jacobson, Esq. One of the most important documents in the talent industry is the agreement that governs the artist (talent) and personal manager relationship. An exploration of what a manager does, a few standard provisions included in most management agreements as well as a few negotiation tips for these clauses follows. Talent Manager Agreements for Musician and Music Manager Agreements for Artists and Talent A “personal manager,” usually referred to as the artist’s “manager,” is one of the most important individuals in an artist’s career. Managers handle all of a musician’s day-to-day affairs, including booking hotels, procuring transportation to and from live performances and appearances, booking recording sessions and all the other personal matters that an artist doesn’t have time to handle on their own. In addition, a manager acts as a buffer between the artist and other parties, including the press, record label and endorsement seekers. In addition to coordinating day-to-day affairs, a personal manager advises the artist on all aspects of the career, including assisting in developing the artist’s creative direction, such as selecting producers, instrumentals (“beats”) and album artwork. They also help in various other facets of a musician’s life such as managing the artist’s tour, advising on merchandise design, licensing, songwriting and anything else related to the artist’s entertainment career. Choosing a manager is one of the most, if not most, important decisions that an artist makes in their career. It is a choice that should not be taken lightly as an artist’s first manager can have a profound effect on the talent’s long-term development. Once a musician has selected the individual to act as their manager, it is prudent, if not essential, for the manager and artist to enter into a detailed written agreement. This agreement should outline all of the essential terms of the arrangement to ensure that both parties are adequately protected. The document lists each party’s expectations and rights in an effort to alleviate any concern as to who is responsible for what and who is entitled to what. What is in a Music Talent Manager Agreement? What is in a Music Manager Contract? To better understand this contractual relationship, let us now review a series of common clauses included in many standard artist management agreements. Examples of Artist and Talent Management Contract Language, Provisions and Clauses Power of Attorney – Artist hereby irrevocably appoints Manager for the term of this agreement and any extensions hereof as Artist’s true and lawful attorney-in-fact, to:(a) sign, make, execute and deliver all agreements or contracts in Artist’s name as if Artist were personally present;(b) make, execute, accept, endorse, collect and deliver all bills of exchange,...
Business and Legal Tips for NBA 2K League and Professional Gamers: Esports Law: Business and Legal Tips for NBA 2K League and Professional Esports Players and GamersBy Justin M. Jacobson, Esq. The global esports phenomenon is growing in the United States. Players from around the world are With the launch of the NBA 2K league several years ago, 102 of the world’s top NBA 2K players earned a six month salary, receive first-class housing accommodations and were eligible for a variety of benefits, including health, vision, and dental insurance. Each player drafted in the first round earned a salary of $35,000 and every other player drafted earns a salary of $32,000. In addition to the player’s six month salary, the competitors played for a portion of a $1 million prize pool with the prize money apportioned over of a variety of tournaments throughout the season. This new career for many and sudden influx of income for most creates many new business and legal considerations for a professional 2K gamer. These include trademark and “personal” brand matters as well as taxes, immigration, and contract negotiation and review issues. Trademark Protection for Professional Gamers and Esports AthletesProtect Your Personal Brand with Trademarks One important legal consideration for a professional gamer is the protection of their “gamer tag.” This can be accomplished through a federally registered trademark. A trademark registration provides the owner with the exclusive right to a particular “mark” and to differentiate their goods or services from those provided by others. Protection applies to a particular word, logo, slogan, phrase, sound or a combination of these, used in relation to specific goods or services (e.g., participation in video game competitions). This means that trademark protection applies to a user’s unique “gamer-tag.” A trademark registration in a player’s “gamer-tag” provides the owner with the ability to actively police and prevent other individuals from “stealing” or otherwise impersonating the established gamer. This includes preventing a non-owner from utilizing a protected gamer-tag in another game as well as protecting against an imposter adding a slight modifier, such as a number or letter, to an established gamer tag and then using it. For example, if “WorldWideJust” is a protected gamer-tag owned by a NBA 2K gamer and an imposter “WorldWideJust1” creates a YouTube account, there could be potential confusion if the imposter account begins transmitting NBA 2K related content on this social media account. This potential consumer confusion could be prevented with a valid trademark registration, as the registration allows the filing of an infringement claim with various social media platforms, including Facebook, Twitter, Instagram, Twitch, and YouTube, to retrieve or block the infringing account. Further, when a player desires to enter into a sponsorship arrangement, the existence of registered trademark is valuable. This is due to the...
What’s A Will? Why Do You Need One?: Trusts and Estates Law: What’s A Will? Why Do You Need One?By Justin M. Jacobson, Esq. “Daddy, what’s a will?” - Jay Z (Legacy) As Jay Z’s first-born child, Blue Ivy Carter, so eloquently inquired on her father’s track, “Legacy,” off his release, “4:44.” The simple answer is that a will is a writing that lists how an individual’s estate will be handled after their death. This sets forth how possessions will be distributed. While this seems straight-forward, advanced estate planning is extremely important to generational wealth preservation. In addition, intelligent estate planning enables an individual to ensure that their wishes for their estate administration are observed. This is especially applicable due to the variety of complex issues prevalent in today’s world as they relate to non-marital children and other non-traditional family dynamics. The potential risks that the lack of an executed will may expose an individual and their heirs to are also an important consideration. What is a Will? Why Should A Person Create A Will? What are the benefits of a written will? As mentioned above, a will is a document that reveals the testator’s (the creator of a will) wishes on the disposition of their property upon their death. This document lists who is entitled to what property, such as any bank accounts, real estate and other personal property that the testator owns. A will may also include information regarding the guardianship for any minor children as well as list how funds earmarked for the minor would be handled if the will is effective before the minor is of age. A will also details how any non-marital children and other family members are handled. In addition to a will, there are other associated estate planning documents such as a living will, a health care proxy and a power of attorney. According to a 2015 “Rocket Lawyer” estate-planning survey by the Harris Poll, 64% of Americans do not have a will. This is an alarming statistic as the lack of a valid will/can become problematic for a variety of reasons. For example, there are many instances of the possessions belonging to an individual who died intestate (without a will) being passed through statutorily established procedures to estranged family members because they fall within the applicable line of succession. This could cause issues between the remaining relatives, eventually leading to costly legal battles and fighting amongst them. What happens if a party does not have a will? What happens if somebody dies without a will? The lack of a will can also potentially lead to sibling in-fighting about who is entitled to what items as well as what amounts of their deceased parent’s estate they are authorized for. There are even instances where the children of a first marriage may not be entitled to any portion of a particular estate; and, instead, an individual’s new partner...
The Marketing Dilemma of the Esports Influencer: Esports Business: The Marketing Dilemma of the Esports Influencer - Pro Gamers & StreamersBy Justin M. Jacobson, Esq. With publications constantly reporting on the esports “boom,” most of the world’s marketing agencies and brand managers are familiar with the world of esports and its “key” demographic. Marketers see league sponsors, such as Toyota, T-Mobile, and Sour Patch Kids for Blizzard’s Overwatch League, and other major brands aligning themselves with major esports organizations. Many major companies are taking notice and investing money into esports sponsorships and other gaming “influencer” activations. These include brands ranging from traditional endemic ones—gaming headsets, monitors, gaming chairs, game controllers, and other gaming peripheral items—to non-endemic ones such as Gillette, Dr. Pepper, Coca-Cola, Red Bull, Mountain Dew, Mercedes Benz, and Audi. While many major companies are investing time and resources into developing their brand’s presence within the esports sphere, many of these entity’s traditional indicators of a brand’s “successful” campaign—referred to as “Key Performance Indicators” (KPI)—are inapplicable to esports as the industry currently functions. In fact, these antiquated performance indicators may actually create barriers to individual professional gamer sponsorships. They may also be one of the main reasons that these types of arrangements are only a small fraction of the total sponsorships currently available in esports. For example, many brands determine the success of a marketing campaign based on how much content was generated. This includes the number of photographs, video clips, Instagram or Snapchat “stories” published, as well as which “influencers” shared the content, and the content’s total “impressions” and “engagement” figures. In this context, “engagement” means how the viewers interacted with the particular piece of content or the total promotional campaign. For instance, it includes how many “clicks” the content receives, including “post” clicks and “link” clicks, how many unique as well as total views of the material, how many shares or retweets of the content, how many replies or comments there were on the content, the “view-through” rate of the content, and the “watch time” of the piece (i.e. viewer watching 5 seconds and closing it or a viewer watching the entire clip, half the clip, etc.). “Impressions” are the total number of views, “clicks,” or other interactions by the viewers of the activation’s content. This is typically calculated by totaling the influencer’s social media following as well as that of the other individuals who covered or otherwise shared the material. A common misconception among brands entering the esports realm; and, one that is a fairly straight-forward conclusion based on most of today’s available data is that the social media platform,...
Live Performance and Appearance Agreements: Live Performance and Appearance Agreements for Musicians, DJs, Bands and Musical ActsBy Justin M. Jacobson, Esq. While there has been a decline in recorded music sales, the live performance sphere of the music business continues to post substantial numbers. For example, in 2016, Billboard Magazine stated that global “gross box-office revenue” exceeded “$5.5 billion dollars.” With such substantial sums earned through touring, most artists are scrambling to get their own “piece of the pie” and embark on their own live performances. While it is not required, it is prudent for a musician to enter into a written contract, sometimes referred to as a live performance agreement, for the commissioned concert that the artist intends to perform. These documents are typically between the artist or a third-party who is able to act on behalf of and bind the artist, such as their booking agent or manager, and the venue owner or the event promoter. We will now examine some important matters that should be addressed in a live performance agreement. Live Performance Agreements for Musician and Live Appearance Agreements for Artists and DJs The key components of a live appearance contract are the date, time and the length of the artist’s performance. These essential terms should be clearly outlined and agreed upon in writing so that an artist knows exactly how long, when, and where they are performing. Additionally, if it is necessary for the musician’s show, the contract should also specify the times for any equipment “loading” and “unloading” as well as potentially a scheduled time for a “sound check.” A “sound check” is typically conducted by an artist before the show to ensure that the artist’s equipment functions properly and that the sound is suitable for the musician’s show. The performer should also be aware of the scheduled times that the doors open as well as when they are slated to actually perform to ensure that they arrive to the venue on time. What is in a Live Musical Performance Agreement? What is in a Live Appearance Deal? Below is an example of language that describes the artist’s control over their live performance as well as specifies a time period for a “sound check.” Engagement/Sound Check – Artist agrees to appear and perform to the best of Artist’s ability and up to Artist’s customary standards as a professional musician, at such times and places as agreed to with Promoter in this Agreement.Artist shall be provided with reasonable time for a sound-check and rehearsal at Promoter’s Venue on the date of Engagement, but not later than three (3) hours prior to doors opening. Artist shall have sole and exclusive control over all aspects of its Engagement for Promoter, including production, presentation and performance of Artist’s show, including but not limited to personnel, instrumentation and repertoire. Examples of...
Trademark “Scams” – Fraudulent Notices For Renewals, Monitoring Services and Registries: Trademark Law: “Scam” Fraudulent Notices For Renewals, Monitoring Services and RegistriesBy Justin M. Jacobson, Esq. In recent years, there has been an increase in the creation of official “sounding” entities sending out authoritative “looking” communications to listed trademark owners. There are a variety of notices sent out to owners at their listed addresses and some include the offering of a “trademark monitoring” or “private registry” service. They also offer to record a trademark with a directory, U.S. Customs and Border Protection or to assist in complying with an upcoming filing deadline (i.e., a trademark renewal) or with a response to an outstanding Office Action Letter. The notices are usually sent from an official “sounding” company name incorporating “terms like ‘United States,’ ‘U.S.,’ ‘Trademark,’ ‘Patent,’ ‘Registration,’ ‘Office,’ or ‘Agency,’” together with an offer of services and a request for money. This is because a trademark owner’s contact information, including the individual or corporate name and address are a matter of public record, and are listed on the United States Patent and Trademark Office (U.S.P.T.O.) database for anybody to access. In response to these trademark letters, the U.S.P.T.O. began issuing public warnings to bring these wide-spread practices to the public’s attention. In fact, while these solicitations may often contain correct information (for example, that a filing is due to keep a registration active); a trademark owner is never required to use the services offered by these companies. In some instances, these services are extremely costly and also often may not even provide the competent service that a reputable attorney or other professional may. A registrant should review the provided notice for irregularities to determine its authenticity. This could include looking for any typos, spelling or grammatical errors as well as calling an entity something that does not exist. Some of these notices may actually state that they are not “affiliated or endorsed by the U.S. government” in the fine print at the bottom, so a careful read may alert the recipient to the fraudulent nature of the communication. Consequently, the U.S.P.T.O. mentions that there is no avenue available for obtaining a refund from a private company if a trademark owner pays for such services. That is because often there is nothing inherently illegal in their practices. A trademark owner should be aware of this prior to paying any of these companies. However, if the company is engaging in some type of fraudulent business practices, there is a possibility of making a claim with the Federal Trade Commission (FTC) to acquire their assistance. Further, the U.S.P.T.O. maintains a list of a variety of companies whose scamming activities are known as well as provides copies of some of their notices for...
Getting Ready For Season Three of the NBA 2K League And Beyond: Getting Ready For Season Three of the NBA 2K League and BeyondBy Justin M. Jacobson, Esq. As the fifth season of the NBA 2K League starts, the excitement for the upcoming release of NBA 2K23 as well as the sixth season of the NBA 2K League has caused many aspiring gaming professionals to begin planning how to best pursue a career in “the league” as well as the best course of action for competitive gameplay in NBA 2K2 video game series. While there is no sure-fire path or method to earn a spot in the NBA 2K League, there are a variety of important things that a gamer should be aware of when starting on this professional path. Similar to the last two years, there will be prerequisites established by the league; and, presumptively, there will be another player “combine process” for statistical evaluation purposes. When preparing for this player recruitment process one of the biggest on-going debates has been between which gaming console is the preferred gaming system, Xbox or Playstation. While both systems provide their own benefits, in recent years, there has been a large shift of the top competitive 2K players to Xbox but this changes every year so playing on both consoles never hurts. In this regard, many more of the top competitive NBA 2K players might have Xbox and not own a Playstation than those top players who have a Playstation and do not have an Xbox. In an effort to consolidate the competitive landscape and ensure that all the top players consistently play each other, it may be advantageous for individuals attempting to seriously try to make “the league” to play and build their “MyCareer” players on just one console, Xbox. This also includes playing on the most recent generation consoles, including Playstation 5. In addition to attempting to unify the different consoles to ensure that the best consistently play against the best, many current NBA 2K League employees and personnel solely utilize and compete on Xbox but some do not. This includes Heat Check Gaming General Manager and Head Coach, Derric “FamousEnough” Franklin, who had previously stated that “I don’t have a PS4 [Playstation 4].” While it isn’t necessary, it is advantageous for a prospect to start developing relationships with the key decision-makers at different NBA 2K League franchises, as this may benefit the gamer in the long-term by having the opportunity to interact with some of these individuals on a personal level. Building on this point, the level of talent that a prospect competes against is very important. While there is no official NBA 2K “minor” league or any other talent developmental system in place, many unaffiliated, independent competitive or “comp” leagues have been organized and operated by third-party individuals within the 2K community. Some of these leagues have operated for several years and some are run by individuals who currently work with existing NBA 2K League...
Brand Sponsorship and Endorsement Agreements For Musicians: Music Law: Brand Sponsorship and Endorsement Agreements For Musicians, DJs and BandsBy Justin M. Jacobson, Esq. This article examines the music publisher and its exclusive publishing agreement with a songwriter. In addition to the standard exclusive publishing agreement explored below, there are other types of related agreements a songwriter could potentially sign with a music publisher, including a co-publishing, sub-pWith the evolution of the music business in today’s digital age of streaming and downloads; the ancillary income that musicians generate from brand sponsorship and endorsements have become of paramount importance to an artist’s overall earnings. For instance, “sponsorship spending on music tours, festivals and venues is expected to total $1.54 billion in 2017,” which is an increase of “4.8 percent from 2016.” In addition to this spending, many major brands have also entered into multi-year, multi-million dollar endorsements arrangements with musicians, including Pepsi and Beyoncé’s $50 million deal. With the increased frequency of these types of arrangements and the potential large sums of money associated with them, an artist should ensure that all of the endorsement deal “points” are clearly articulated and negotiated. This is typically best accomplished through the use of a written agreement. We will now explore some considerations and provisions included in many endorsement and sponsorship contracts. Sponsorship Agreements for Musician and Endorsement Deals for Artists, DJs and Rappers Most sponsorship arrangements are similar with both the musician and brand agreeing to certain obligations in exchange for the other party’s performance. This means that the artist is responsible for fulfilling a list of stated duties known as “deliverables.” In exchange for the artist’s fulfillment of its “deliverables,” the musician is entitled to the compensation agreed upon in the agreement. This compensation could be the sponsor providing the artist with free goods, product discounts, money, or a combination of these. What an artist may receive from a sponsor differs based on a variety of factors, including the notoriety of the musician, the brand’s “ask,” and the length of the activation. In this context, the “ask” is what the artist is obligated to do (its deliverables) on behalf of the particular sponsor. What is in a Sponsorship Deal? What is in an Endorsement Agreement? As already mentioned, an artist’s “deliverables” differ based on what the musician is contracted to do. For example, the written contract may specify the particulars, such as a certain number of shows and appearances that the artist must make on behalf of a company during the agreement’s term. The document may also list the musician’s other obligations, including potential product placement in the artist’s music video, while conducting interviews or photoshoots as...
Trademark Law: The Principal and Supplemental Register: Trademark Law: The Trademark Principal Register and Trademark Supplemental RegisterBy Justin M. Jacobson, Esq. One constant question posed by clients and a frequent option offered in an Office Action Letter from the U.S. Patent and Trademark Office (U.S.P.T.O.) is the potential of registering a mark on the “Supplemental Register.” This is often misunderstood and is an important consideration for many individuals and companies as they create and expand their brand. This in because, in the United States, a trademark or service mark may be registered with the U.S.P.T.O. on either the Principal Register or the Supplemental Register. While this distinction may not be initially apparent, the difference between which register a mark is on is of great importance. This is because there are several legal implications depending on which Register a mark is registered on. Generally, an applicant will prepare and file a trademark or service mark application for registration on the Principal Register. This is because a mark registered on the Principal Register is stronger than a mark listed on the Supplemental Register. For instance, a Principal Registered mark receives the presumption of the validity of the mark. This requires a party, who is attempting to cancel or otherwise invalidate an existing registered mark to provide sufficient evidence to overcome and rebut this presumption. The existing Principal Register registration may also be used as prima facie evidence of valid ownership of the mark and as an acknowledgment of the mark’s continuous as well as exclusive use in commerce for a particular good or service. Furthermore, after five years of continuous, uninterrupted use from the date of registration, there is the possibility that the mark may achieve “incontestable” status. This status is beneficial to the mark owner as it limits the grounds that a third-party may use to cancel the registration. In particular, it enables an owner to bring an infringement lawsuit without having to prove that customers in a particular area actually know of and are familiar with the owner’s product or service and that the consumers would associate the owner’s trademark with providing that product or service. What is the Principal Register for Trademarks? What is the Supplemental Register for Trademarks? Nevertheless, certain marks may be refused registration on the Principal Register; but, instead may be permitted registration on the Supplemental Register. For example, a mark that is described as inherently “descriptive” may potentially receive protection on the Supplemental Register. This is because a “descriptive” mark has the potential to identify the source of the goods or services associated with the applicant through “acquired distinctiveness.” This means that as the owner utilizes the mark in commerce for an extended period of time, the mark could potentially acquire distinctive characteristics so that the consuming...
Why and Where Does an Entertainment Attorney Fit?: Music Law: Why and Where Does an Entertainment Attorney Fit?By Justin M. Jacobson, Esq. Being that I’m an entertainment attorney, I would be remiss to not acknowledge the inherent bias in this article; however, whether you work with me or one of my colleagues around the globe, the usage of a competent attorney or legal representative is of paramount importance to an entertainer’s career. In many instances, the usage or lack thereof may be the difference between a successful career and one that is filled with headaches in addition to heartbreaks. With that said, we will now look at how an attorney fits in, some criteria for selecting the appropriate individual as well as some other important information related to working with a lawyer. What is an Entertainment Attorney? What is a Music or Entertainment Lawyer? While there are many attorneys, certain ones specialize in different areas of law and others are “general practitioners,” who may work in a variety of unrelated legal fields. Generally, when selecting a lawyer for music or entertainment business matters, it is prudent to select an attorney specializing in the entertainment field. This is preferred as most entertainment industry related matters require specialized knowledge and familiarity to achieve the most advantageous results. What does an Entertainment Attorney do? What are some jobs of a Music or Entertainment Lawyer? An attorney typically handles all legal matters for their client, including managing and advising on trademark and copyright matters as well as drafting and negotiating all industry related contracts. These include recording contracts, publishing contracts, distribution agreements, sponsorship agreements as well as numerous other specialized deals. A lawyer may also assist with business entity formation and its associated formalities in addition to possibly advising and drafting wills and other estate/trust documents to preserve their client’s wealth. Some attorneys may also assist their entertainment clients with any foreign visa or other immigration matters to facilitate travel and proper work authorization for performances and appearances. The service that attorneys provide can coincide with others offered by the artist’s other professionals, including their personal management and/or business manager. What are benefits of an Entertainment Lawyer? How can a Music Attorney help? In addition to catering to an artist’s legal and business needs, these specialized advocates typically also work with and are familiar with other industry professionals who can help further their client’s careers. These include potential access to talent managers, booking agents as well as motion picture companies, record labels and music publishing company decision-makers. In addition to these matters, attorneys can potentially “shop” projects such as unsigned music to record labels and music publishers for deals, provide advice on music promotion...
What the E-2 Treaty Investor Needs to Know About Trademark Protection: What the E-2 Treaty Investor Needs to Know About Brand and Trademark ProtectionBy Justin M. Jacobson, Esq. and Pablo G. Velez, Esq. of Velez & Cipriano, PLLC Investing in a new or existing enterprise in the United States can be an advantageous proposition. As the E-2 Investor is well aware, having a company with a physical presence in the United States can expose the business to opportunities from substantial revenue growth to increased global exposure. However, the business must not neglect protecting its identity and brand from being used by competitors. This article surveys the importance and process of effectively protecting your foreign businesses’ brand name in the United States. When a foreign business or investor is planning to enter the U.S. marketplace, they need to understand and evaluate the potential legal and business barriers that exist prior to the company’s expansion into a new territory. It is prudent to consider these matters when initially determining a particular brand name, as the last thing a foreign business wants is to have to change or otherwise alter its established brand name when entering additional territories because it failed to adequately plan for foreign expansion. In order to understand the local business marketplace, a company should generally conduct a comprehensive trademark search for their existing brand name(s) prior to applying for or expanding into a foreign territory, including conducting one for the U.S. A trademark search can illuminate any identical or confusingly similar marks that exist, which could bar the foreign brand’s expansion under a particular tradename. It is also prudent to search for any common misspellings or phonetic equivalents as well as ensuring that the translation of any foreign words also does not infringe on any existing marks. International Trademark Protection For Business and Company Name After determining the availability of a particular mark, the owner should generally first apply for trademark registration in their home country. A brand name is protected by a country’s local trademark law. There are two types of trademark protection legal systems: the “first-to-file” and the “first-to-use” systems. Trademark Law - What is a "First Use" Trademark System? What is "Actual Use" Trademark System? In a “first-to-file” system, such as in China and in France, the first entity to file for a trademark registration in a particular name acquires rights to the name for the goods or services listed in the registration. Conversely, in a “first-to-use” system, such as in the United States, trademark rights only exist when the individual actually utilizes the mark in commerce for the particular goods or services listed. In addition to an “actual use” application, American trademark law also permits an owner to file an “intent-to-use” application to essentially “reserve” a particular trademark they intend to use for specific...
Trademark Infringement and Infringement Litigation: A Look At U.S. Trademark Infringement and Trademark Infringement LitigationBy Justin M. Jacobson, Esq. Trademark law provides the exclusive right to use a mark to differentiate the goods or services of one person or business from those of another. A trademark commonly includes a word, phrase, logo, design or a combination of these, which are used in relation to goods and services. Trademarks are used to designate the source of a good, and are used as an indicator of the quality of the goods. The same is true for marks used in connection with services, typically referred to as “service marks." Trademarks can be valuable assets of a business, as the mark associated with the goods or services helps a business gain recognition and consumer loyalty; however, the owner must actively police any potential infringers.In particular, the Lanham Act permits the holder of a registered trademark to file a trademark infringement claim against anyone who makes the unauthorized use of an existing trademark (or service mark) or uses a mark in connection with goods (and/or services) in a manner that is likely to cause confusion, deception, or mistake about the source of the goods (and/or services). What Is a Trademark? What is Trademark Infringement? Use of A Confusingly Similar Mark Generally, if a trademark owner believes its mark is being infringed, they may file a lawsuit in either state or federal court for trademark infringement, depending on the circumstances of the particular case (15 U.S.C. § 1125). The relevant inquiry in such cases are whether the targeted consumers are likely to be confused about the source of the goods (or services) sold in connection with the mark(s) in question. A trademark owner can also bring an infringement case to prevent a third-party’s use of a registered mark that is identical or confusingly similar to the owner’s mark when used in connection with goods (or services) that are similar or related to those offered by the party bringing the suit. An owner can also bring a suit when the use of the mark falsely suggests an affiliation, connection or association with them. In addition, a mark owner may also consider utilizing the Trademark Trial and Appeal Board (“TTAB”) to cancel someone else’s federal trademark registration through a Cancellation Proceeding. In the TTAB, the sole remedy is the cancellation of the infringing mark without the ability to recover any related damages for the infringement. What is an immoral, scandalous, or deceptive trademark? There are several relevant factors involved in determining which causes of action to pursue against an infringed party. Examination of the non-infringing party’s mark, including whether it was registered on the Principal or Supplemental Register, as well as how long the mark has been registered and used in commerce, are relevant inquiries. For example, if a trademark is registered on the Principal Register...
NBA 2K League 101: An Introduction To The NBA’s Fourth League: What is The NBA 2K League - An Introduction To The NBA’s Fourth LeagueBy Justin M. Jacobson, Esq. With the global explosion and continued expansion of esports and professional gaming, one of the world’s most profitable traditional sports leagues, the National Basketball Association (NBA) established their fourth league, the NBA 2K League. The new competitive gaming league is in partnership with Take Two Interactive, the developer of the world’s largest stimulation basketball video game, NBA 2K. Currently, many NBA franchise owners are already involved in esports and gaming in some capacity, including ownership interests in several established esports organizations that field teams in a variety of video games as well as franchise rights to teams in newly established professional esport leagues, such as Activision-Blizzard’s Overwatch League and Riot Games’ North America League of Legends Championship Series (NALCS). Some of these individuals include Golden State Warriors’ co-owner Peter Guber and Washington Wizards’ owner Ted Leonsis’ investment in aXiomatic, which later purchased a controlling interest in esports organization, Team Liquid. Others include Milwaukee Bucks’ co-owner Wesley Edens who purchased rights for a NALCS franchise (FlyQuest),Golden State Warriors’ majority owner Joe Lacob who purchased rights for a NALCS franchise (Golden Guardians) and Cleveland Cavaliers’ owner Dan Gilbert who purchased rights for a NALCS franchise spot (100 Thieves). In April of 2018, during the Season 1, the NBA 2K League Draft was hosted at Madison Square Garden, where NBA commissioner Adam Silver stated that the new league is the now “fourth league in our [NBA] family.” This is in reference to the NBA’s other professional sports properties, including the National Basketball Association (NBA), the Women’s National Basketball Association (WNBA), and the NBA’s developmental league, the NBA “G-League”. The NBA 2K League’s inaugural season featured seventeen NBA franchises’ gaming affiliate teams. Some of these teams include the Cleveland Cavalier’s Cavs Legion, the Washington Wizards’ Wizard District Gaming and the Boston Celtics’ Celtics Crossover Gaming organizations. Season 2 of the league featured four new teams, bringing the total to twenty-one, including the Los Angeles Lakers’ Lakers Gaming and the Atlanta Hawks’ Hawks Talon GC. They have since expanded the league further with new additional teams, including Gen.G Tigers operated by Gen. G Esports. What is the NBA 2K League? What is Esports? What is Esports Sports Simulation? Professional NBA 2K Each team is comprised of six competitive profiessional gamers, which has been reduced to only five players per a team during Season 5. Each gamer is in control of a different in-game player in 5 versus 5 game mode in front of a live studio audience as well as on the Twitch live video streaming platform, among...
Music Law: Publishing Deals – Songwriter and Music Publisher Agreements: Music Law: Publishing Deals - An Examination of the Songwriter and Music Publisher RelationshipBy Justin M. Jacobson, Esq. This article examines the music publisher and its exclusive publishing agreement with a songwriter. In addition to the standard exclusive publishing agreement explored below, there are other types of related agreements a songwriter could potentially sign with a music publisher, including a co-publishing, sub-publishing or administration arrangement; however, these will not be explored in this article and explored here. What is a Music Publishing Agreement or "Publishing" Deal? What Does a Music Publisher Do? Music publishers, which include Sony/ATV Publishing, Universal Music Publishing and Warner Music Publishing, are companies that manage a songwriter’s rights in a track. This may be typically referred to as an “administration” right in the composition. This provides the publisher with the right to license the music to others as well as to collect payments from any third-party for their uses of the songwriter’s work. The publishing company also handles the “paperwork” associated with the composition, including registering the copyrights in the songs, indexing the track with the appropriate Performing Rights Organization, as well as accounting and distributing the collected funds. A publisher may also “shop” a songwriter’s tracks in order to obtain licensable placements for its signed talent. An individual responsible for this task is sometimes referred to as a “song plugger.” In most instances, the songwriter and publishing company equally split all of the proverbial “publishing monies.” In reality, this means that fifty (50%) percent of the total amount earned is allotted for the “writer’s share” of the composition and the remaining fifty (50%) percent is allocated for the “publisher share” of the composition. Since a single track can have several co-writers, this means that several publishing companies and other individuals may also be entitled to a part of the “writer” or “publisher” share of the track. For instance, if a song has two co-writers, the “writer’s share” of the composition could be split equally with each writer receiving fifty (50%) percent of the entire track’s “writer” share. The streams of income generally subject to an exclusive publishing agreement include mechanical royalties, public performance royalties, synchronization fees and print incomes. Mechanical royalties are paid for the use of a musical composition on CDs, vinyl, cassettes and as MP3 downloads. In the United States, the Harry Fox Agency is generally responsible for collecting and distributing mechanical royalties. Print Income is also subject to these agreements and applies to any funds earned from the sale of the printed musical work, such as in lyric and musical score folios, individual sheet music and when the same is displayed or sold as sheet music on the...
Music Law: Co-Publishing, Sub-Publishing, and Administration Agreements: Music Law: A Look At Co-Publishing, Sub-Publishing, and Administration AgreementsBy Justin M. Jacobson, Esq. A prior article examined the traditional songwriter and music publisher relationship, including reviewing some standard clauses that an artist would find in many publishing arrangements. We will now explore a few other contractual relationships that can exist between a music publisher and a songwriter, including an administration agreement, a co-publishing contract, and a sub-publishing agreement. What is a Administration Agreement or "Admin" Deal? What is a Administration Agreement in Music? An administration “deal” is one of the more straight-forward relationships within the music publishing world. In this type of arrangement, the songwriter does not assign any of their publishing or ownership rights in their compositions to a music publisher or any other third-party. Instead, the writer retains these rights and merely contracts with the third-party for them to act as their “administrator” for a specified time period. The administrator is commissioned to handle the formalities related to the exploitation of the musician’s composition as well as to protect and enforce the rights in the song. Some matters that an administrator assists with can include registering of the compositions with the correct Performing Rights organizations, registering the finished pieces with the U.S. Copyright Office, maintaining the books and records, negotiating and issuing licenses to other parties for the work as well as collecting any and all royalties earned in the territories it is authorized to cover. Essentially, the administrator handles all the paper-work related to the licensing and monetization of the song in exchange for a specific fee or percentage of earnings. This fee is referred to as an “administration fee” and is usually 5-15% of the income generated from the musical compositions. However, in certain instances, the administration fee could be more or less, depending on the extent of services provided by the third-party to the songwriter. Sometimes, the company may make an advance payment to the owner in exchange for the administration right. This advance payment is then usually recouped from the amounts collected by the administrator. Additionally, these kinds of administration arrangements are usually exclusive to that particular party. This means that the administrator will be the only entity with these types of rights; so, this effectively means that no other party may issue any licenses or collect any of the writer’s publishing royalties for the same compositions. The agreement can apply to a particular composition, several compositions, or an artist’s entire music catalogue. What is Co-Publishing? What is a Co-Publishing Deal or Agreement in Music? In situations where the songwriter and music publisher desire a more elaborate relationship, a co-publishing arrangement might be suitable. One...
Some Additional Fashion, Beauty and Apparel Brand Legal Considerations: Fashion Law: Some Additional Fashion, Beauty and Apparel Brand Legal Considerations By Justin M. Jacobson, Esq. This article discusses some other related legal matters that fashion business entrepreneurs should be aware of. This article expands on the initial one that reviewed some initial business considerations for clothing, beauty and apparel brands as they grow and form their business ventures. Some Legal Benefits For Fashion, Clothing, Accessory and Jewelry Brands As previously mentioned, it is prudent to have properly drafted and executed agreements in place with any third-parties that contribute any work to your business. This means it is practical to have signed documents with any graphic designer, photographer, videographer, apparel designer, product packaging or sales tag designer and any other individual (e.g., model) featured in any promotional or commercial advertisements. This includes media or other content that is publicly posted on a brand’s social media platform or distributed through traditional promotional outlets, including television and radio advertisements. Essentially, a guiding principle for a business owner should be that an executed agreement is needed with any individual who creates or otherwise contributes work to the owner’s product, the design, packaging, and/or advertisements. In particular, the execution of such agreements should ensure that the business owner has the rights that they need. Generally, these transfers may be structured as “works for hire” or as an assignment or license of the rights possessed by the original creator. In these situations, an owner should ensure that they aim to acquire the entire “bundle” of rights provided by the U.S. Copyright Act (17 U.S.C. § 106) from this creator. Some of the important rights a fashion business should acquire include the right to reproduce the work, such as making copies of the product which contains a product label or name, distributing the product containing the logo, the right to make the product available for public sale as well as the right to license the goods to others for sale and distribution. Therefore, it is wise to confirm that any agreement ensures that the brand’s owner can utilize the finished materials for potential commercial as well as promotional purposes. Influencer Sponsorship and Endorsement Contracts with Clothing, Jewelry and Apparel Brands Furthermore, when working with notable individuals, such as a celebrity or other prominent influencer, it is important to obtain the appropriate rights to utilize this person’s likeness, image and/or name. To do so, an agreement, license or release confirming these facts should be in place. This is typically referred to as the individual’s “right of publicity” and is a right that must be contracted for by the company in order to legally mention or otherwise publicly associate the notable...
Esports Law: Crossing your T’s for your O-1’s and P’s: A Visa Checklist for the Professional Gamer: Immigration Law: Crossing your T’s for your O-1’s and P’s: A Visa Checklist for the Professional GamerBy Justin M. Jacobson, Esq. and Pablo G. Velez, Esq. of Velez & Cipriano, PLLC The global esports phenomenon is growing in the United States. Players from around the world are coming to the United States for a chance to participate in big money tournaments as well as to sign exclusive playing contracts with U.S.-based organizations and teams. However, many gamers are locked out because they fail to secure their work visas due to a lack of proper planning. This has been a notable issue with several examples of professional gamers not being able to sign with a particular team or attend a specific tournament due to visa issues. For instance, Overwatch League franchise, Shanghai Dragons high-profile signee, Kim “Geguri” Seyeon’s debut was delayed “due to visa issues.” Similarly, immigration complications prevented the 100 Thieves’ Counter-Srike: Global Offensive team from competing at “The ELEAGUE Major” in Boston in a previous year; as well as, immigration issues preventing Russian Overwatch player, Denis “Tonic” Rulyov from participating in the Overwatch Contenders Season 1 Playoffs. It is clear that a failure to properly plan through the entire visa petition process can hamper a professional gamer’s ability to compete. This article tackles the basic considerations for esports athletes and other stakeholders to set themselves up for a successful immigration petition process. How To Obtain Esports and Professional Gamer Visa - All Athletes Of All Ages Need a Visa Competing as a professional video gamer for a variety of tournaments is a “for-profit” venture. This means that proper work visas are needed for non-U.S. citizens to participate in the United States and earn a wage. This regulation applies to any individual, whether they are a seasoned veteran or a teenaged prodigy; as a work visa is required to comply with American labor laws. Additionally, there is no minimum or maximum age requirement when applying for a visa; so, as long as the other qualifications for the visa are met, a minor may apply for such a visa. A Look at Visas for Professional Esports Players, Coaches and Casters including Professional Gamers Differences Between The O-1A vs. P-1A Visa – Are you a famous lone wolf or a well-known team player? The key difference between the O-1A and the P-1A is a gamer’s personal notoriety and their long-term objectives. In the United States, the O-1A visa is for an individual who possesses extraordinary ability in a particular field (i.e. playing a video-game). It is typically appropriate for the athlete who has made a mark in the particular field and has enough industry-wide name recognition (literally, seeing the individual’s name published for personal accomplishments apart from their team) to justify the visa’s issuance. This is more the rare case...
How To Not Get “Taylor Swift’d” (Or How To Try Not To): Taylor Swift and Big Machine: Contract Lessons for Independent ArtistsHow To Not Get “Taylor Swift’d” (Or How To Try Not To)By Justin M. Jacobson, Esq. If you have been following the music business for the last few years, you might be aware of the on-going public debate between Grammy winning artist Taylor Swift and her first record label, Big Machine Records. In particular, on June 30, 2019, entertainment industry professional Scooter Braun, through his company, Ithaca Holdings, purchased an ownership interest in Scott Borchetta’s Big Machine Label Group. As part of this purchase, exclusive rights to all of the material on Swift’s first six albums were acquired by Ithaca Holdings. In response to this acquisition, Taylor Swift publicly stated that “[t]his is my worst case scenario.” After this purchase, this situation took another interesting turn. In Taylor Swift’s most Tumblr post, she alleged that Big Machine Label Group prevented her from performing her old music catalog (songs owned by Big Machine Label Group) live during that year's American Music Awards as well as refusing to permit the incorporation of her old material into a Netflix documentary about her career. However, both Braun and Borchetta responded and publicly denied refusing to issue appropriate licenses to permit Swift to perform her old works at the American Music Awards as well as to incorporate the songs into a Netflix documentary. After that, a public statement from Big Machine Label Group was made wherein the label announced they “had reached a licensing agreement with the producers of the American Music Awards” for use of Swift’s songs. While avoiding speculation on the situation and arguing for one side or the other, the most important consequence of this public controversy is that this disagreement further highlights the importance of properly understanding the documents that an artist signs as well as fully comprehending the potential long-term implications that a document signed early in a musician’s career can have on their further development. Why An Artist Should Read and Review Agreements and Contracts Therefore, whether they are an established or new artist, it is crucial for every musician to fully understand all of the provisions contained in any paperwork or documentation that they sign. This is because, assuming the contract is enforceable and the artist receives valid consideration, the document will be binding and the signatory will be obligated to abide by all of the contract’s terms. Typically, when a musician enters into an agreement with a record label or publishing company, these companies usually receive all of the rights to any material created by the musician in exchange for payment to the artist. In general, most of these agreements typically include and provide the company with the exclusive and sole right to license or otherwise control the use and reproduction of any work created under the...
Why Every Professional Gamer Needs a Team (of Professionals): Esports Law: Why Every Professional Gamer Needs a Team of ProfessionalsBy Justin M. Jacobson, Esq. Similar to other talent based industries, including music, television, and sports; professional video game competitors participating in organized esports should have a “team” of competent professionals around them to advise them and to consult with. While this may seem straightforward in today’s media driven world where legal issues arise daily, it has become a prevalent practice for many professional gamers to review, negotiate and sign agreements with esports organizations and teams without any assistance. They also are failing to properly handle other aspects of their career such as the press, immigration, and tax matters. While it is never required to have third-party advice, let alone an attorney or other third-party consultant or representative involved in an individual’s career, it never hurts to have a professional person assist whose daily job it is it to handle these types of matters providing an athlete with insight in addition to support. In fact, it is the norm for an entertainer, athlete, and every other personality to have a “team” of professionals assisting them with their legal, business, marketing, public relations and other day-to-day needs. These individuals assist the talent in order that they can focus on competing in their sport. Why A Professional Gamer or Stream Might Utilize An Attorney or Independent Representative While a gamer may have mastered their craft and honed their skills, there are a variety of other members of a professional esports competitor’s “team” that are essential to a gamer’s career longevity and potential success. Some of these professionals could include an attorney, a personal manager or player representative, a business manager, a public relations manager or any combination of or all of these. These experts are similar to the type of individuals that are commonly used by musicians in the music industry. For instance, a personal manager typically handles a musician’s day-to-day affairs, such as booking hotels, transportation to and from live performances and appearances, booking of recording sessions and other personal affairs that an artist doesn’t have time to handle. This is similar to how a player representative or manager operates on behalf of a gamer, including assisting with tournament logistics. This is in addition to the representative acting as a buffer between the gamer and other parties, especially when dealing with the press, league organizers, brands, and endorsement requests. Another essential player typically on an entertainer’s team—and one who is frequently needed and sparsely used by gamers—is an attorney. Similar to an attorney in show business, a lawyer practicing in esports frequently handles all legal matters for its client, including managing and advising on trademarks and copyrights as well as drafting and negotiating of all...
Considerations For Starting An Independent Clothing, Apparel or Accessories Brand: Some Legal Considerations For Starting An Clothing, Apparel, Jewelry or Accessories Brand By Justin M. Jacobson, Esq The expansion of new technologies and the domination of social media as a means for distribution and mass marketing have caused an explosion of independent fashion designers creating their own brands. From clothing to apparel and other related accessories, these new entrepreneurs are part of this new “do-it-yourself” movement, consisting of self-designed and managed clothing, jewelry and apparel brands that continue to spring up each day. These brands are typically run by independent designers, many with little to no prior business experience; and, as their brand’s notoriety grows, some end up grossing substantial sums of money. While there are many detailed aspects to successfully operating a business, this article provides a brief overview of some of the more salient legal points that a designer needs to be aware of. Benefits of Business Entity such as Corporations and LLCs For Fashion and Jewelry Brands The first consideration for a brand owner is whether they create a corporate entity, such as a corporation or an L.L.C. There are many benefits to creating a business entity for your brand and responsibilities associated with keeping it active that must be taken into account prior to its formation. One of the chief benefits is that these limited liability entities shield the owners from personal liability for any claims arising from any contracts or other agreements entered into on behalf of the individual entrepreneur through its business entity. Another benefit is that having a separate corporate entity permits the brand to open a corporate bank account in an assumed name, write and receive checks as well as obtain a federal Employer Tax identification number. Such an account also facilitates easier tracking of your expenses and permits the deduction or “writing off” of relevant properly documented business expenses. Each state has different requirements and fees associated with them, so an attorney or tax professional should be consulted before deciding the best entity for your business. A partnership or company affords the same ease of record keeping and deducting of expenses; however, they are business forms lacking the benefit of limited liability. It is also essential that the company follows any and all statutory procedures and guidelines, which vary in each state. Some of these corporate formalities include the preparation of annual corporate minutes to ensure the corporation is a real functioning entity. Furthermore, an owner must be aware that every individual must file both their own personal federal as well as, possibly, state tax returns for the state they live in as well as federal and state corporate tax returns on behalf of their entity. Again, please consult an accountant or tax representative regarding the appropriate filings....
Internet Law: A Look At The California Consumer Privacy Act (CCPA): Internet and Privacy Policy Law: A Look At The California Consumer Privacy Act (CCPA)By Justin M. Jacobson, Esq. In an effort to further protect its own citizens, California enacted its own legislation, the California Consumer Privacy Act (CCPA) in an effort to regulate the collection, storage, sale and usage of third-party data collected on California residents. In particular, the California state legislature stated that their intention in passing the law was to afford “consumers an effective way to control their personal information,” including the right to “know what personal information is being collected about them,” the right to “know whether their personal information is sold or disclosed and to whom,” the right to “say no to the sale of personal information,” the right “to access their [stored] personal information” free of charge (1798.100(d)), and the right to “equal service and price, even if they exercise their privacy rights” under the statute. The new law goes into effect on January 1, 2020 and any party subject to it must implement the required protections and procedures by July 1, 2020. The new privacy legislation applies to any “business” that: (a) “does business in the State of California” and (b) either: (1) “[h]as annual gross revenues in excess of twenty-five million dollars ($25,000,000),” (2) sells or buys “the personal information of 50,000 or more consumers, households, or devices,” or (3) “[d]erives 50 percent or more of its annual revenues from selling consumers’ personal information”) (1798.140(c)). The statute also provides a consumer with additional protections such as knowledge of “the categories of personal information to be collected and the purposes for which […] personal information shall be used” ((1798.100(b)). The law also mandates that “a business shall not collect additional categories of personal information or use personal information collected for additional purposes without providing the consumer with [prior] notice” of their intention to gather new user information (1798.100(b)). In addition, the CCPA establishes new protections for younger consumers, those who are less than 16 years old. In particular, the act mandates that a business must obtain specific authorization for a minor (between 13-16 years of age) to sell their information to a third party (1798.120(c)). Additionally, for any individual who is younger than 13 years old, affirmative authorization from their parent or guardian is required prior to the collector selling the minor’s personal data (1798.120(c)). This means that a minor’s data cannot be sold without the expressed permission of the minor‘s parent or guardian. A company who collects user data must also “make available to [its] consumers two or more designated methods for submitting requests” for the information disclosures. This could include establishing a...
Esports Law: A Look At Tax Considerations For Professional Gamers: Esports Tax and Professional Video Game Law: A Look At Tax Considerations For Professional GamersBy Justin M. Jacobson, Esq. and Jason Feingertz, CPA, Esq. The esports revolution continues as professional video-gaming continues to expand throughout the globe. As with most professions, professional video game participants, sometimes referred to as a “gamer,” are subject to taxes in every country, state and, sometimes, the city that they “work” in. Professional gamers must be aware of the tax implications of their earnings, including how their tournament winnings, player salaries, streaming monies and sponsorship funds are typically taxed. Like all taxpayers, professional gamers, who are residents of the United States, must pay federal income tax to the IRS on their worldwide income. While this concept may seem straightforward, there are still many gamers that fail to adequately pay the correct amount of personal income tax. The failure to pay this tax can cause serious problems for an individual, ranging from penalties and interest to potential imprisonment for the most egregious cases. A Look At The "Jock" Tax for Professional Gamers and Coaches One often overlooked aspect of tax planning for professional athletes is their state tax liability. In most cases, athletes must pay personal income tax to their state of residence on their worldwide income. This includes income derived from their playing contracts, as well as endorsement and sponsorship deals. In states where they do not reside, athletes increasingly find themselves subject to aggressive enforcement of “Jock Taxes,” which look to tax athletes on income “earned” in non-resident states. For example, New York imposes a non-resident income tax on visiting professional athletes who have earned income within the state. N.Y. Tax Law § 631(c). New York taxes visiting players’ salaries, which is apportioned among the states based upon the percentage of total “duty days” an athlete spends within New York. 20 NYCRR 132.22. A duty day is typically defined as any day an athlete does some form of work for their employer such as a media appearance, team practice, tournament or a game. Then, the apportioned income is multiplied by the states’ individual income tax rates. We will now explore a few main income streams for gamers and how the earnings may be taxed. While some question whether taxes really affect decision-making by athletes, the following examples should show how important it is for an gamer to have a tax advisor or other competent professional guiding them through all contract and taxable business decisions. Taxation of Tournament Winnings by Professional Esports Competitors and Gamers As discussed above, a professional video gamer may be subject to tax obligations in all of the states and countries that they earn income from. These tax payment obligations also extend to any and all of the gamer’s tournament winnings. Generally, the...
Legal and Business Tips For Musicians On Twitch: Legal and Business Tips For Musicians On TwitchBy Justin M. Jacobson, Esq. With current events, there has been a substantial shift of musicians and other celebrity influencers engaging with their fans by creating and distributing original content through live streaming platforms, such as Amazon’s Twitch. A livestreaming website, such as Twitch or Facebook, enables a user to create a live broadcast or “stream” that is accessible to a viewer. This stream may emanate from a creator’s smart phone or device, their computer or PC, or even from their gaming console, such as a Playstation or an Xbox. As a result of the entertainment industry’s uncertainty, including the wide-spread wave of music festivals and live performances cancellations, many artists are taking to the digital world to interact and engage with their fans. While it may seem as easy as clicking a button to go “live” to the world, there are a myriad of business and legal considerations that a musician or other entertainer must consider in order to take full advantage of their digital streaming outlet as well as to best maximize the potential revenue that they could earn through this income stream. How To Do Streaming “Right” Without delving deeply into the legalities of music licensing, any music played live during a stream or that is included in a created video is subject to proper authorization. This means that if the musician is not performing new original works that they own the full rights to; they must actually have written permission from the rights owner to perform the works, including a license to use their own previously licensed works. This authorization may be provided from the recording owner, such a record label. A streamer’s failure to obtain the appropriate permission to a musical recording can lead to the created content being removed for copyright infringement. In addition, a stream may be “muted” or otherwise “blacked out” due to the unauthorized use of a protected work. Furthermore, popular streaming services such as Twitch and YouTube have policies related to “repeat” copyright infringers that may subject the account to suspension or potential termination. If a user cannot obtain the rights to music, they may instead work with music licensing companies who provide a “blanket” license that permits the usage of any media contained in their applicable catalogue. In addition to proper rights to any music included in a stream, it is generally preferred that the entertainer structure their social media and their actual stream in the most professional light that they can. This is particularly important when positioning oneself as a marketable “brand,” especially in cases where the individual desires to incorporate sponsors and other brand partners into their streams. In order to establish the level of professionalism that most major...
A Look At 360 Agreements: “Multiple Rights Deals”: “Multiple Rights Deals” - A Look At 360 Agreements in Music and EntertainmentBy Justin M. Jacobson, Esq. With physical music sales evaporating and an overall decline in total earnings across the entire music business throughout the last decade; many music distributors have begun entering into more extensive arrangements with the talent they sign. There has been a shift from traditional record distributors “signing” artists solely to a recording agreement to now signing artists to much more elaborate contracts. These new agreements are commonly referred to as “multiple rights deals” and are also known as “360 degree deals.” We will examine some of the pros and cons of entering into a “multiple rights” agreement as well as look at some clauses utilized in these agreements that are rarely seen elsewhere within the music industry. What is a 360 Deal? What is a 360 Agreement in Music? This new breed of music distribution deal provided by many labels is characterized as a “multiple rights” deal. They are also referred to as a “360° deal”, a “270° deal” or a “180°deal”, depending on which rights are contracted for. For example, a typical “360° deal” entitles the label to receive a set percentage from four of the artist’s revenues streams. These would include a portion of the artist’s record sales, touring and personal appearance income, as well as publishing income, and the merchandise revenues. A “270°” or a “180°” multiple-rights deal may only cover two or three streams of an artist’s income, such as the label solely receiving a percentage from the musician’s record sales and publishing monies (180°) or a percentage from the artist’s record sales, publishing and touring incomes (270°). Additionally, some agreements include “catch-all” clauses, which entitle the label to a portion of the musician’s “collateral” or “ancillary” entertainment activities. Essentially, this means the label is entitled to a percentage of income generated from anything related to the musician’s entertainment career that does not fit into one of the above categories (touring, publishing, record sales, merchandise, etc.). Thus, the record company will not only be entitled to their traditional stream of revenue from recorded music (CDs, MP3s, Vinyl); but, they will also be entitled to percentages of all of the artist’s entertainment related revenues. This could include portions of the artist’s merchandise sales, endorsement and sponsorship fees, motion picture and television appearance fees, digital sales and music streaming royalties, tour and live performance revenues, songwriting and publishing revenues, ringtone and ring-back sales in addition to fan clubs. In a nutshell, the label receives a portion of anything and everything related to the signed talent’s entertainment career. Generally, in these situations, an artist enters into a few separate agreements with...
Business and Legal Considerations for Professional Esports Organizations and Teams: Esports Law: Business and Legal Considerations for Professional Esports Organizations and TeamsBy Justin M. Jacobson, Esq. Many new esports teams and organizations have joined the competitive circuit in the past 12 months. This is due to the continued global development of esports business as well as its expansion into newly created games and into existing games that were not previously part of this professional world. Some of these organizations may only field a team in one game; while, other larger organizations, may field teams in multiple games. For example, an organization such as Team Liquid or Cloud9 field teams in a variety of games; while, some teams only have a CS:GO team or other single team. Whether the organization is large or small, the legal and business considerations for their proper functioning are fairly similar. Proper adherence to these formalities is extremely important for the potential short-term success as well as long-term viability and profitability of any organization. While there are many relevant business and legal matters related to the management and ownership of a professional esports organization, the following is an overview of some of the most essential and relevant aspects. Business Law Protections for Esports Teams and Organizations such as Corporations and LLCs One of the primary business considerations for a team or organization is the formation of a business entity for the team. A business entity, such as a corporation or limited liability company (LLC), may be created by a team owner. The selection of which business entity to form is an initial crucial decision. Whether the team forms a C-Corporation, S-Corporation or LLC, typically depends on which state the entity will be formed in and the anticipated business structuring that the team envisions. For instance, a corporation in New York does not have the same costly publication requirement that an New York LLC has. This initial cost may be a consideration for a team when choosing which entity is most appropriate for their organization. Additionally, each state provides different tax treatment for the business entities as well as different statutory limitations on ownership of a particular entity. It is prudent to consult with a qualified professional, such as an attorney or accountant, when deciding which type of business entity and which state is proper for a particular team. Another benefit that an entity provides to its owner is protecting their personal assets (i.e. cars, houses, stocks, bonds, securities, bank accounts, etc.) from any claims arising from any contracts or other arrangements. Essentially, if a sponsor, league organizer, or some other third-party creditor desires or has an existing claim against a team who had properly entered into the original agreement on behalf of the organization, the only recourse for that creditor would be against the team entity, not the individual owner or their personal assets. While...
California’s New Employment Law and Its Effect On The Entertainment Business: California’s New Employment Law and Its Effect On The Entertainment and Music BusinessBy Justin M. Jacobson, Esq. In response to a wave of misclassification by employers, in 2019, California introduced new legislation. In particular, this legislation was passed in order to protect California citizens by reducing worker misclassification. Prior to this legislation, there were a lot of issues on the classification of individuals by companies across a variety of service-driven industries. In fact, many of these businesses wrongfully classified their workers as “independent contractors” rather than as “employees.” This misclassification caused these “independent contractors” (who might have actually been “employees”) to not be entitled to earn traditional “employee” benefits such as the standard minimum wage, paid sick days, health insurance, paid parental leave, unemployment insurance as well as scheduled paid rest breaks during their workday. Specifically, this new legislation attempted to narrow the language for those who are considered “independent contractors”, to ensure that more workers are properly identified as “employees.” As a result of the new law, “workers can only be classified as independent contractors [. . .] if (1) they are free from control and direction of the company that hired them while they perform their work; (2) the worker is performing work that falls outside the hiring company’s usual type of business; and (3) the worker has their own independent business or trade beyond the job for which they were hired.” If the individual does not satisfy these criteria, then that person is more akin to an “employee” and must be classified as such. The individual would then be entitled to traditional employment benefits from the hiring business. The statute also provides the State of California and each of its individual cities with the right to file suit against a company for worker misclassification. This statutory right even overrides any existing arbitration provisions that many businesses include in their standard hiring documents in an effort to shield themselves from worker complaints. As a result of this law, some industries are currently exempted from these rules. For instance, doctors, psychologists, dentists, podiatrists, insurance agents, stockbrokers, lawyers, accountants, architects, engineers, veterinarians, real estate agents, marketing professionals, travel agents, graphic designers, fine artists, and repossession agents are all not subject to it. There are also exemptions for photographers, freelance writers, and editors or newspaper cartoonists who make 35 or fewer submissions a year. In addition, other exempted parties include hairstylists, barbers, aestheticians, cosmetologists, and manicurists, as long as they set their own rates, are paid directly by their clients, and schedule their own appointments. Furthermore,...
Trademark Specimens and Information On “Actual Use” and “Intent-To-Use” Applications: Trademark Specimens Of Use and Information On “Actual Use” and “Intent-To-Use” ApplicationsBy Justin M. Jacobson, Esq. In the United States, trademark rights in a mark are based on “actual use” of the name in commerce; consequently, an owner must actually be utilizing the mark in commerce for the particular goods or services in order to acquire rights in the name (mark). Thus, in order to protect a name, a federal or state trademark application can be filed with the appropriate state department or the United States Patent and Trademark Office (“U.S.P.T.O.”). In America, a trademark application can proceed on an “actual-use” or an “intent-to-use” basis; therefore, an application can either be filed for a mark that is currently in use (an “actual use” application) or for one that the owner intends to use (an “intent-to-use” application). What Is "Intent-To-Use" Trademark Application? An “intent-to-use” application is one that is filed prior to actually utilizing a mark in order to “reserve” a particular name for a specific good or service. The mark must then actually be used in commerce within six months after a Notice of Allowance (“NOA”) is issued by the U.S.P.T.O. Once a mark is used, a Statement of Use (“SOU”) must be filed with the U.S.P.T.O. In situations where the trademark owner is not ready to proceed and begin “using” the mark in commerce, they may instead seek and file an extension to lengthen the time period to file the required Statement of Use. Each extension provides the owner with an additional six (6) month period to begin utilizing the mark and file the necessary document (the Statement of Use). The time to file a Statement of Use may be extended by the applicant up to five times after the Notice of Allowance is issued for additional six (6) month periods. What is a Trademark Specimen Of Use? What Is Submitted With A Trademark Application? In addition to using the mark in commerce, an applicant must also submit a suitable specimen to the U.S.P.T.O. when applying for protection. An appropriate specimen must be one that depicts the mark being used in commerce for the particular listed good(s). For example, if a mark is for providing “live performance” services in Class 041, copies of any live performance flyers or advertisements containing the mark could be submitted as specimens. Additionally, if a mark is being registered in Class 025 for clothing items such as t-shirts or pants, a flyer or other advertisement showing the clothing items available for sale with a listed price and a way to purchase them could suffice. Similar, for Class 014 for jewelry, such as bracelets and necklaces, a screen-shot of the product available for sale on an online website or an in-store flyer containing the items and prices may also work. What Are Some Examples Of Trademark Specimens? Furthermore, if an application is for class 009 for providing “downloadable music...
First Time Releasing Music? (How To) Make Sure You Do It Right: First Time Releasing Music? (How To) Make Sure You Do It RightBy Justin M. Jacobson, Esq. Once all the blood, sweat, tears, time, and money are invested into a musical work, it is now finally time for the artist to distribute the track. However, before a musician releases their song, they must be aware of a variety of matters to ensure that they can legally have the music publicly available. The following is a list of useful guidelines that may benefit a novice musician intending to monetize or otherwise generate revenues from the exploitation of their released song. This is by no means an exhaustive list and is only meant to provide a short overview of a few important considerations for a new artist releasing their first track. Ultimately, the failure to adhere to some or all of these could potentially subject the individual to liability. Protect Your Artist or “Stage Name” As elaborated in prior articles, one of the most important identifiers for a musician is an individual’s artist, DJ or “stage name.” With that said, trademark protection is available in the U.S. and many other countries across the world. This legal protection provides a trademark owner with exclusive rights to a specific name (i.e., an artist name) for a specified good or service, such as entertainment and live musical performance services. Since the musical release will presumptively be marketed and available for sale under the artist’s name, proper protection is prudent, and it can provide many unique benefits for the registration’s owner. Copyright Your Work, Logo, and Any Created Assets As discussed previously, there are many benefits to filing and obtaining a registered copyright in a finished song. This includes applying for protection in both of the distinct copyrights in a specific track or potentially protecting all of the released songs. The two copyrights in a musical work are discussed in more detail here. In addition, an artist may also apply for copyright protection for the artist’s album cover artwork, their logo, and any other promotional graphics that the musician utilizes on the release in order to secure exclusive rights to these creative works. Secure All The Rights To The Music With Proper Agreements A musician must ensure that they have secured all the rights to the released song(s). This is generally accomplished through written agreements between the interested parties listing all the essential terms of the deal. These could include contracts with any band members or other musicians involved in the recording as well as with any co-writers, producers, or co-producers. An artist could also execute an agreement with any third-party involved in the work’s creation, including any studio engineers, mixers, and session musicians and vocalists. Also, it is prudent to have written documents in place with any graphic and logo designers, photographers, and videographers to secure exclusive rights to any album artwork,...
What is Esports Law? What is an Esports Lawyer?: What is Esports Law? What is an Esports Lawyer?By Justin M. Jacobson, Esq. Esports has become a new buzz word among industry professionals and the masses alike. “Esports” refers to “electronic sports” and this entertainment segment is the world of professional competitive gaming. It usually involves an individual or a team competing against others in an organized league or tournament in a video or computer game. These competitions are usually for cash prizes, including some that award the winner several million dollars. Recently, in addition to the growth in the total prize winnings offered, a series of professional gamers and streamers are garnering substantial annual salaries (sometimes six figures or more) to compete on behalf of esports organizations and teams. In addition to these income streams, some players and gaming influencers have also received lucrative sponsorship and brand partnership opportunities. This revenue is all in addition to any streaming and social media advertising revenues as well as any other physical and digital merchandise and licensing income that they may generate. Esports and Video Game Attorneys represent Professional Gamers, Streamers, Creators, Coaches, and Casters As a result of the substantial earnings of these gamers and talent receive, there has been a development of an entire professional industry to support them. This profession includes seasoned as well as upstart attorneys, agents, accountants and wealth managers who have begun focusing on assisting individuals involved in the professional gaming industry. This mirrors the myriad of professionals who have traditionally worked in the entertainment, music, motion picture, television, fashion and sports worlds. In fact, similar to sports attorneys and entertainment lawyers; being a practicing “esports lawyer” has become a budding field in the industry. Additionally, there has been the development of a specialized bar association, the Esports Bar Association, established by practicing esports attorneys. In the same way that there is no easy way to define what “sports law” or “music law” entails, the definition of “esports law” had yet to be clearly articulated. While, there are many parallels to the experience that an attorney who assists entertainers, athletes, and other talent may possess; nonetheless, there are still many unique aspects of esports law that involve novel matters mainly applicable to competitive gaming professionals. These individuals may assist and work with a variety of talent including a professional gamer or coach as well as a streamer or content creator. These attorneys might also work with a professional esports team or organization as well as any third-party who works with any of these parties such as tournament and league operators. Additionally, esports attorneys could also work with a merchandise, gaming peripheral or hardware company that works in the space, such as...
Copyright? Trademark? Or Is It Both?: Intellectual Property Law: Copyright? Trademark? Or Is It Both?By Justin M. Jacobson, Esq. While sometimes mistakenly grouped together, trademarks and copyrights are very different. In fact, each of these intellectual property protections applies to distinct and unique things. However, both are equally important; and, in some situations, both may be necessary to secure proper protection in a project. Trademark and Copyright Protection Copyright law grants the owner of a work with exclusive rights to it for a limited time. A work is eligible for copyright protection if it is original and fixed in a tangible form, such as a sound recording fixed on a CD or as an MP3 file or a literary work on line or on paper. Many types of works may receive copyright protection, including musical works, literary pieces, dramatic works, choreography, audio-visual works and many graphic or artistic creations. For example, a person may copyright an original poem, a motion picture, a song, a video game, unique dance choreography, as well as a photograph. For additional information on copyright law, click here. What is a Trademark? What is a Copyright? Another intellectual property protection available to businesses and individuals is a trademark. Trademark law grants the mark’s owner with the exclusive right to use a mark or “brand” for the goods or services provided by them. In fact, trademark protection can apply to a word, phrase, slogan, logo design, smell, sound or a combination of these, that is used for a specific good or service. While some works and names are only eligible for either trademark or copyright protection; some things may actually be fully protected by them both. An owner may file and obtain both trademark registration for a specific mark as well as a copyright registration for a particular work. This is a rare instance; but, in the creative and entertainment worlds, proper understanding and use of both of these may be extremely beneficial, if not necessary. Is The Work Eligible For Copyright Protection? Is It Eligible for Trademark Protection? Or Both? One perfect example of a concept that may involve both copyright and trademark legal principles is Disney’s “Mickey Mouse” character. This is similar to any cartoon or other recognizable individual, such as any of Marvel comics’ super heroes and villains or the Simpsons or Family Guy characters. In this case, any printed image, animation, audio-visual works, photographs as well as any other illustrated footage may receive copyright protection. This protection may apply to any V.H.S., D.V.D., digital videos as well as any digital games such as a video or computer game containing a character, for example, “Mickey Mouse.” Furthermore, copyright protection is available for any unique “Mickey” vocal clips, songs and other musical works. In addition to utilizing copyright law, the owners of “Mickey Mouse” may also apply for...
So You Want a “Record Deal”? How To Legally Ensure An Artist Can Even Sign One: So You Want a "Record Deal”? How To Legally Ensure An Artist or Musical Act Can Even Sign OneBy Justin M. Jacobson, Esq. While most musicians dream of getting signed to a major “record deal,” the days where a record label executive attends a show and signs an artist based on their performance are long gone. These days, that only occurs in the movies or on television. Instead, today’s music industry has shifted toward a greater reliance on an artist’s social media impressions, presence, and following. It also focuses on the talent’s music streaming platform numbers and other factors unrelated to the actual quality of the music and instead focused on the artist’s perceived marketing and commercial value. How To Get A Recording Contract? How To Sign A Record Deal? In recent years, major recording deals were signed by individuals who had generated their own independent marketing “buzz,” including those who started their own pop culture reference, such as “Cash Me Outside” as well as those who created their own independent success (YouTube Star signed to major deal). In contrast, there are also artists who flourish independently without any major label or distributor assistance. This is a rare situation and typically only arises when an artist ensures that all their potential streams of income are properly maintained and established, such as Chance The Rapper. Whether an artist obtains notoriety through creating their own pop culture phenomenon or by independently developing the artist’s following to a level that they can achieve stardom on their own, any musician who is interested in being able to actually “sign” with a recording company must first ensure that their music business infrastructure is in order. This is particularly important as most artists believe that they are ready to sign a deal; however, in reality, the artist may not even own all the rights to the material that they think that they do. This means that the musician generally would not even have the rights that the deal requires them to possess in order for an agreement to be properly executed by the artist. It seems counter-intuitive to presume that a label or other third-party music distributor would knowingly entertain, let alone enter into an arrangement that could potentially expose them to liability. Therefore, it is prudent that prior to entering into any agreement with a third party, especially a record label or other music distributor, the musician ensures that they have all the rights to the material that the artist thinks and purports that they have. What Steps Should A Musician Take To Prepare For Signing A Record Deal? This means that prior to soliciting, submitting or otherwise searching for a music publishing, recording or distribution deal, the musician should ensure that their own music business infrastructure is in proper order. This could include the formation of business entity, such as a corporation or...
Trademark Protection of An Esports Team and Organization’s Name and Logo: Some Steps For Proper Protection of An Esports Team, Organization or Franchise Name and LogoBy Justin M. Jacobson, Esq. With the rising global esports market and the substantial investments received by some esports organizations and teams, it is crucial for these entities to properly protect and maintain their team name. An esports organization’s name is typically the basis of their entire “brand” and acts as a way to distinguish one competing entity from another. In esports, proper name protection is particularly important because a competitive gaming organization’s name is utilized on all of the team’s jerseys, social media accounts, merchandise, websites, and on any streaming platforms. In order to achieve this, a team owner may utilize trademark law to receive the exclusive rights to use a specific name for the goods or services that they provide. In fact, trademark protection can apply to a word, an entire phrase or slogan, a logo or other unique design, as well as a scent, a sound or even a combination of all of these elements. In the last few years, it has become an industry-wide trend for many prominent professional esports organizations and teams to apply and own marks in their name. Some of these teams include “Team Liquid,” who owns a variety of registrations in several classes (U.S. Registration Nos. 5,237,182; 5,299,681; 5,299,682; 5,338,391). In addition, other entities also have registrations protecting their team name, including “FNATIC” (U.S. Registration No. 4,677,398); “Evil Geniuses” (U.S. Registration No. 4,568,877 for the word mark and Registration No. 4,568,878 for the stylized logo); “Splyce” (U.S. Registration No. 5,250,213); “OpTic Gaming” (U.S. Registration No. 4,870,601), “Cloud9” (U.S. Registration No. 5,426,731); “Counter Logic Gaming” (U.S. Registration No. 4,417,823), “Complexity” (U.S. Registration No. 5,315,085); and, “Flyquest” (U.S. Registration Nos. 5,697,874; 5,280,553; 5,697,873). In addition, Immortals Gaming Club has protected in its name, logo as well as for its “IGC” design mark (U.S. Serial Nos. 88/355,897; 88/355,908). It is clear that such protections may be beneficial to an esport owner's business from the fact that so many major esports organizations and teams have already undertaken the actions of filing trademark applications to protect their name in a variety of classes. Trademark Law Protection for Esports Teams, Organizations and Franchises Since esports teams and organizations are global entities that compete and operate in many countries across the world, a United States-based gaming organization may apply for trademark protection in the U.S. at both the federal and the state levels. They may also look to apply internationally to secure rights in other countries through international trademark treaties, such as the Madrid Protocol. In particular, the Madrid Protocol permits an entity with an existing U.S....
Some Additional Legal Considerations For A Small Business Owner: Business Law: Some Additional Legal Considerations For A Small Business Owner By Justin M. Jacobson, Esq. Building off the initial piece, this article explores some additional available legal protections that small business owners might consider when starting or operating an existing company. While this is not an exhaustive list, it is meant to explore a few other relevant legal protocols that might assist a company in legally operating their business both effectively and efficiently. Trade Secret Protection For Small Business Owners In addition to trademark and copyright protection for a company’s intellectual property assets, such as their company or product name or logo; similar protection might also be available for any trade secrets owned or established by the business, including any confidential information or any other private assets that they develop or create. In these situations, it is important to ensure that a company has written agreements in place with any third parties who contributes any work to their business as well as those who receive, review, or otherwise accesses or has access to any confidential trade documents and other related company “trade secrets.” For example, in order to obtain protection for this type of classified information, a business owner could ensure that written and executed non-disclosure agreements (referred to as “NDAs”) are in place with any individual or corporation that receives or is provided with access to the company’s confidential information. Additionally, a small business might further protect its materials by requiring any employee or third-party that contributes or has access to this information must sign an agreement that includes provision addressing confidentiality and non-disclosure obligations as they relate to the company’s confidential materials. These clauses would typically aim to prohibit the receiving party, the employee or independent contractor, from sharing any confidential trade secrets or information they receive as a result of their employment with any other third party as well as prevents the individual from using this protected information for their own benefit or purpose. Furthermore, in some cases, copyright protection might also potentially be available for the specific confidential content if it is eligible for such protection. This might include registering a copyright for a confidential written presentation or some other protected visual image, diagram or any existing confidential business model or analytics software developed by the company and that is not publicly available. In all of these cases, it is also paramount to ensure that any and all “confidential” and sensitive information is labelled as such, including affixing wording such as “confidential” or “trade secret” prominently on these materials including on any the documents, diagrams, or data. Visa and Immigration Matters For Small Business...
Some Tips For Twitch Streaming By Celebrity Influencers: Some Tips For Twitch Streaming By Celebrity Influencers - Musicians, Athletes and Other “Influencers”By Justin M. Jacobson, Esq. With today’s current events, there has been a shift of musicians, professional athletes from a variety of sports as well as other celebrity influencers engaging with their fans by creating and distributing original content through live streaming platforms, such as Twitch and YouTube Gaming. Some have begun playing video and computer games with other influencers as well as interacting directly with fans through a livestreaming platform. A livestreaming website permits a user to create a live broadcast or “stream” that is instantly accessible to a stream viewer. This “cast” may come from the influencer’s smart phone or device, their computer, or even from their gaming console, such as an Xbox or a Playstation. As a result of the entertainment and sports industries’ uncertainty, including the wide-spread wave of league suspensions and event cancellations; many traditional entertainment and sports influencers are taking to the digital world to interact and engage with their fans. While it may seem as simple as clicking on a button to go “live” to the world, there are a myriad of legal and business considerations that an athlete or other entertainer should consider in order to take full advantage of their digital streaming outlet. These tips are also important in assisting the talent in best maximizing the potential revenue that they could earn through this income stream. How An Influencer Can Stream The “Right” Way To Create A Viable Business Model Without exploring the legalities of proper music licensing for a stream, any music played live during a stream is subject to proper authorization. This means that the influencer must have written permission from the rights owner to perform any protected works on a streaming platform. This authorization may be provided from the recording owner, such as a record label or from some other rights holder. An individual’s failure to obtain such permission may lead to their stream being “muted” or otherwise “blacked out” due to the unauthorized use of a protected work. Furthermore, popular streaming services such as Twitch and YouTube have policies related to “repeat” copyright infringers that may subject these infringing accounts to suspension or even termination. If a user cannot obtain the rights to music, they may instead work with music licensing companies who provide a “blanket” license that permits the usage of any media contained in their applicable catalogue. For example, dance record label, Monstercat has created its own monthly subscription service specifically for streamers. This service enables an individual to simply pay a monthly fee in order to use any of the available Monstercat music during their live streams and in any other monetized content. The service currently supports...
Music Sampling: Breaking Down The Basics: Music Law: Music "Sampling"By Justin M. Jacobson, Esq. With advancing technology and the development of new digital musical techniques, it has become even easier for an artist to “sample” and integrate another artist’s finished recording or sound bite into a new, altered and derivative work created by a new artist. In today’s evolving marketplace, commercial DJs such as Girl Talk and many of today’s top hip-hop, dance and pop music producers are all mixing and weaving together different “samples” (a portion of another musician’s recording) into their new “music.” With this practice becoming even more prevalent, a proper understanding of what sampling is and how to obtain proper clearance to legally utilize the sample becomes an essential factor in a song’s potential profitability as well as marketability. What is a Music "Sampling"? How Can A Musician Legally "Sample" Another Song? “Sampling” is best described as reusing a specific portion of another person’s sound recording. The amount used varies; from as little as merely integrating another creator’s unique drum combinations or guitar rift into a song, to utilizing the entire chorus or a complete verse from a song. This action, in simplest terms, can be viewed as merely “copying” and “pasting” a portion of another musician’s existing sound recording into your new work. Unlicensed instances of this practice can subject a creator to potential liability for copyright infringement; however, there are ways to avoid potential liability and obtain proper permission to utilize a “sample” of another person’s work. In order to properly and legally “sample” another musician’s work in an artist’s track, the sampling artist must obtain a “sample clearance” from the appropriate owner(s) of the original recording. Since there are two copyrights in every song — the sound recording (typically administered by a record label, e.g., Interscope Records) and the underlying musical composition (typically administered by a publishing company, e.g., Sony/ATV), a party must obtain permission from both copyright owners and enter into a licensing agreement with each owner in order to legitimately utilize a “sample.” There may be situations where a use is determined to be “de minimis” and too small to require licensing; but, that is a complicated situation which requires serious analysis. How To Clear a Music Sample? What Is A Sample Clearance License? Generally, in order to ascertain who the proper owners of each respective copyright are, you can start by accessing and searching through the U.S. performing rights society databases (i.e. ASCAP or BMI). These databases generally list all the relevant writers, producers and appropriate publisher information for a particular track. Typically, there is also direct contact information listed in the database; and if not, it is advisable to look for a department that handles...
An Introduction to NFTs in the Esports and Gaming Worlds: NFT Law: An Introduction to NFTs in the Esports and Video Gaming WorldsBy Justin M. Jacobson, Esq. Today’s entertainment, sports, art, esports and gaming industries are buzzing about NFTs or “non-fungible tokens.” This includes musicians earning millions of dollars through releasing their own NFTs, professional athletes launching their own NFT companies, and the trending NBA Top Shot taking over social media and press outlets everywhere. In fact, there has also been a rapid expansion and usage of NFTs in the entertainment and sports collectibles market, the art world and most recently in the esports and gaming space. This might include utilizing NFTs to secure rights to a particular piece of artwork, an “in-game” digital character or a “skin,” a digital “racing horse,” or even a video “moment” or other highlight of a professional athlete or wrestler. What is An NFT? NFTs and Crypto-token in Esports and Video Games An NFT is a type of cryptographic token that is not mutually interchangeable with something else that exists. This means that there is only one “original” copy that cannot be replicated or otherwise divisible no An NFT is a type of cryptographic token that is only one “original” copy that cannot be replicated or otherwise divisible no matter what. In fact, NFTs are “coded to have unique IDs” and underlying “metadata” that another token cannot reproduce which is where much of the value lies. This unique crypto token is managed on a “blockchain,” which acts as an official transfer ledger to trace and delineate the ownership and the full transaction history of an associated NFT. What Makes An NFT Valuable? A unique feature of an NFT is the ability to be easily transfer it from one owner to another through the existing blockchain technology. Generally, when a user earns an “in-game” item or any other digital asset, it is usually difficult to assign, trade, transfer or otherwise sell the item; however, an NFT solves this problem as the digital item can now be easily managed and transferred through a secure platform, such as a “Trust Wallet.” The owner’s asset can be traded or sold in various “marketplaces,” such as OpenSea and the Worldwide Asset eXchange (WAX). Two dominant forms of NFTs in today’s entertainment and gaming marketplaces are “fully digital” NFTs as well as those that exist as digital “placeholders” for actual “real world assets,” such as a painting or a signed jersey. In some cases, such as in the entertainment world, an “NFT Drop” might actually be a combination of both of these types. For example, the token might be for a purely digital item such as a digital song or character “skin” playable or usable in-game or through the purchaser’s digital “wallet” as well as those NFTs that act as a digital “placeholder” for a signed item, a concert ticket or some other fan “experience” that is also managed in the...
Some Legal Considerations For A Small Business Owner: Business Law: Some Legal Considerations For A Small Business Owner By Justin M. Jacobson, Esq. As more entrepreneurs continue to create their own businesses, the need for proper legal planning becomes of paramount importance. While there are many legal and business considerations a potential owner must consider before embarking on their own enterprise, this article touches on a few important ones, including the formation of a business entity. Benefits of Business Entity such as Corporations and LLCs For Small Business Owners One consideration for a small business owner is the creation of a business entity. Two of the most frequently selected ones are a corporation or a limited liability company (LLC). It is important to note that different states have different requirements and fees, so an attorney or other specialist in this area should be consulted prior to selecting the appropriate entity. These are both limited liability entities and exist to shield the owners from personal liability for any claims arising from any contracts or other arrangements entered into by the small business owner. This means that the entity, not the owners of it, is liable for any debts or contractual obligations of the business and creditors generally cannot recover against the individual’s personal assets. Why Should A Business Create A Corporation or Limited Liability Company? While shielding an individual from personal liability is one important advantage of creating an entity, there are also several other important benefits. One is that having a separate business entity permits the company to open a business bank account in an assumed name. This facilitates easier tracking of company expenses and permits the deduction or “writing off” of relevant, properly documented business expenses. Another benefit is that a business entity typically is governed by a written contract (an operating agreement for an LLC or a shareholder agreement for a Corporation) that outlines how the business will operate. This includes an outline of the split of any profits and losses among owners so there is no misunderstanding between the parties. Also, it specifies how management decisions are to be addressed and how additional owners (and members) can be added (or removed) to the business. These forms also provide easy management over any business owned intellectual property (i.e. trademarks, product designs, photographs, logos) as well as any tangible property (e.g., company equipment, computers). Without these outlined procedures, it may be very difficult to make certain business decisions, especially when more than one individual is involved in these important choices. Any existing entity can obtain a Tax-ID/E.I.N. number, which is analogous to the company’s social security number and is frequently required when working with many third-parties. However, these forms avoid the dangers of personal liability associated with partnerships and private...
Mechanical Licensing and Mechanical Royalties In Music: Music Business Law: Mechanical Licensing and Royalties in Music By Justin M. Jacobson, Esq. There are a variety of relevant and appropriate licenses required when releasing a song within the music industry. This article explores one of the most commonly acquired licenses, the mechanical license. This type of license (the right or permission to do something) is necessary when initially releasing an original musical work as well as when an individual commercially releases a “cover” of an existing song. What is a Mechanical License In Music? What Is A Mechanical Royalty? A mechanical license and the corresponding mechanical royalty that it imposes are explored below.A mechanical license grants to the licensee (the person acquiring the license) the rights to reproduce and distribute a copyrighted musical composition in an audio format. Utilizing a song in a video requires a separate license (a synchronization license) possibly in addition to a mechanical one. This means that a mechanical license is required whenever a recorded composition is released on a vinyl record, on a CD, used as a ringtone, sold as a permanent digital download (“DPD”) (e.g., iTunes download), or played in an interactive music stream, such as on Spotify or Apple Music. In exchange for the permission to do so, the licensee pays a fee to the copyright owner(s) of musical composition. In most cases, the rights holders are the composition’s songwriter(s), producer(s) and potentially their respective music publishing companies. In fact, a mechanical license is required whenever an individual or a company, even a recording label, distributes the copyrighted musical composition in any or all of these formats. Who Issues Mechanical Licenses? Who Collect Mechanical Royalties? Once a mechanical license has been issued and the track has been publicly released for the first time, a compulsory mechanical license is available to any individual or company who wants to record and distribute the work under 17 U.S.C. § 115 of the Copyright Act. This means that a musician wishing to cover an existing track is permitted to obtain a mechanical license by paying the established “statutory royalty rate” to an authorized licensor and making periodic accounting income statements. In fact, the payment rate that a party must remit for a mechanical license is set and regulated by the Copyright Royalty Board (CRB). In the United States, two well-known mechanical licensing entities include the Harry Fox Agency and Music Reports. These agencies collect the mechanical royalties owed from some digital service providers on behalf of its associates; and, then, these companies pay these royalties to music publishers who register with them. The music publishing companies then pays the songwriters and composers of the work. For example, Music Reports work with Spotify, Amazon Music, iTunes, Tidal, Netflix, Hulu, Paramout+, and Pandora. In addition, an individual desiring to...
Social Media Disclosures for Influencers: Paid Endorsements and Social Media Posts: Social Media Disclosures for InfluencersBy Justin M. Jacobson, Esq. Today’s entertainment, sports, music, and gaming worlds are dominated by the rise of influential celebrities and personalities commonly referred to as “influencers.” Many of these influencers operate in the physical space as well as within the digital metaverse and social media worlds. In fact, due to the rise in popularity and influence upon their fans and communities, many top brands and companies have begun engaging these personalities, including for digital promotion, marketing, sponsorship, in addition to endorsement opportunities. Some of these people are earning substantial sums for posting about a product on their social media, including on Instagram, Twitter, or Tik Tok; or, for utilizing a brand partner on a social streaming platform, such as on Twitch, YouTube, or Facebook Gaming. These types of influencer marketing initiatives are generally operated by a brand in an effort to engage with the celebrity’s followers in an attempt to have their fans become aware of or customers of the sponsoring product. However, as a result of their public nature and the existence of a business relationship (whether in kind or paid), the public statements made by influencers fall under the regulatory authority of the Federal Trade Commission (FTC) in the U.S. Why A Celebrity, Streamer or Content Creator Must Disclose Paid Endorsement or Advertisement In particular, the FTC is the American regulatory agency responsible for establishing policies to govern these types of individual’s actions. Specifically, Section 5 of the FTC Act titled the “Use of Endorsements and Testimonials in Advertising” governs and is applicable to an influencer’s social media statements, including those made in a posted video or while on stream. (15 U.S.C. § 45 (1914)) This regulatory section outlines the “general principles” used for “evaluating endorsements and testimonials” as well as those analyzed when determining whether or not a specific public “endorsement or testimonial” made by a party is “deceptive.” Disclosure Language for Twitter, Instagram, Tik Tok, YouTube Sponsored Posts and Streams As a result of the growing usage of influencers in public marketing campaigns, the FTC released guidelines that are applicable to social media and streaming influencers, “Disclosure 101 for Social Media Influencers.” This document lists “the various ways that an influencer’s relationship with a brand would make [a] disclosure necessary.” For instance, the statute requires that any post or other public statement made by an influencer is true and that the comment “reflect[s] the honest opinions, findings, beliefs, […] of the endorser.” This means that the party cannot make a “false or unsubstantiated” claim about the product or service that they post or otherwise endorse. Additionally, if an influencer...
After You Create An Entity – The “Loan-Out” and Music Production Companies: Music Business Law: After You Create An Entity – The Musician and Artist “Loan-Out” and Music Production Companies By Justin M. Jacobson, Esq. Previously, I explored some of the potential benefits that an artist, musician, music producer or engineer receives from establishing a business entity such as an LLC or corporation. I also discussed some other administrative matters related to the operation and continued maintenance of these entities. In this installment, I provide insight on how to move forward, including discussing the next steps and possibilities after a musician, producer or other musical artist creates such an entity, including utilizing this entity as a “loan-out” company and/or as a music production company. While every aspiring musician thinks of themselves as an entertainment or media mogul, the new business entity created by them is instrumental in creating the umbrella to make this vision a potential reality. In order to build toward this dream, an artist or music producer can utilize their new entity in a variety of ways. The “loan-out” company (corporation/LLC) formed by the musicial talent provides the musician’s services (recording, production, engineering, remixing, live performance) as an “employee” of the company to a third party such as a record label, a music publishing company, a performance venue or a sponsoring brand. As the name indicates the entity “loans out” the services of the “employee” (musician) by contracting with another party (e.g., recording label) instead of this party contracting directly with the entertainer. Therefore, the loan-out company signs the agreement with the third-party and the company then “hires” the artist to do the job that it is contracted for. This gives the artist the added level of insulation and personal asset protection that an artist should desire and is inherent in these types of entities. However, before the “loan-out” company is able to enter into agreements on behalf of the artist, the musician must first sign themselves to this entity. This means that the artist will actually be signing themselves to a recording, management and/or music publishing agreement with the entity they are an owner of. Typically, these standard music industry agreements provide the loan-out company with the right to license the artist’s musical compositions and master recordings as well as the right to enter into subsequent recording, distribution, publishing or other music business arrangements with other companies, such as a recording label or music publishing company, for the distribution of the artist’s work and for the artist’s other related services. As I have previously discussed, these “loan-out” companies also provide the artist with the ability to easily manage all of its intellectual property (i.e. trademarks, copyrights, sound recordings, audio-visual works, photographs, logos,...
Protect Your Gamer-Tag: Professional Gamers, Streamers and Content Creators: Esports Law – Professional Gamers, Streamers and Content Creators: Protect Your Gamer-TagBy Justin M. Jacobson, Esq. Professional gamers and gaming “influencers,” including streamers and content creators such as those on Twitch, YouTube Gaming, Facebook Gaming or Tik Tok, may protect their in-game name known as a “gamer-tag” as well as their unique logo design. To achieve this, a gamer wishing to properly protect and monetize their personal “brand” should utilize trademark law. While most professional gamers and streamers are still not securing a registration in their trade name (their gamer-tag) or in their logos, there has been a recent trend of top gaming professionals securing these rights. For example, gaming streamer Tyler “Ninja” Blevins has also applied for trademark protection in many different classes for both his gamer-tag as well as his unique “Ninja” logo (U.S. Serial Nos. 88/206,559, 88/481,530, 88/206,555, and 88/481,530). Another streamer Benjamin “DrLupo” Lupo received trademark protection for his gamer-tag, “DRLUPO” in a variety of classes as well as for his unique “D” logo (U.S. Registration Nos. 5,970,881 and 5,970,912). Also, another prominent streamer, Timothy “TimTheTatman” Betar has applied for protection in his gamer-tag in several categories, including “books” and “entertainment services” (U.S. Serial No. 88/891,655). Further, streamer Turner “TFUE” Tenney is also attempting to register his gamer-tag “TFUE” for clothing and entertainment services (U.S. Serial No. 88/294,707). In addition, competitive gamer Jonathan “FATAL1TY” Wendel has received protection for his gamer-tag, “FATAL1TY” (U.S. Registration No. 3,149,347). Matthew “Nadeshot” Haag, has also followed suit and has protected his gamer-tag, “NADESHOT” in a variety of classes, including for “dietary and nutritional supplements;” for “video game controllers;” and, for “live performances by e-athletes and competitive gamers.” (U.S. Registration No. 5,540,561). Trademark Law Protection for Professional Gamers, Streamers and Content Creator Name, Gamer-tags and Logos Generally, prior to attempting to protect a specific name, it is prudent for the gamer to conduct a trademark screening search to determine the availability of their gamer-tag. If the mark is clear, an application can be file with the U.S.P.T.O. in any relevant class(es) of goods. It is also important to be aware that a logo and a gamer-tag are two distinct marks. This means that in order to protect both a gamer’s logo and their gamer-tag; two separate applications must be prepared and filed. International Classes For Trademark Protection For Professional Gamers and Streamers There are a variety of International Classes of goods and services that a gamer or streamer might apply for protection in. Some of these classes might include International Class 041 for “entertainment services, namely,...
A Musician’s Basic Guide To Business Entities And Taxes In New York State: Music Business Law: A Musician’s Basic Guide To Business Entities And Taxes In New York State By Justin M. Jacobson, Esq. As an individual embarks on their chosen journey, a career in music and in the music business, it is essential for them to have a basic understanding of the complexities and formalities associated with operating a legitimate business. This means that an artist should treat their “musical career” as a full-time occupation in order to prosper and succeed on this journey. As Jay Z said “I’m not a businessman, I’m a business, man” and he literally meant it. In fact, in order to better protect their personal assets (i.e. Shawn Carter’s personal assets – cars, houses, stocks, bonds, securities, bank accounts, etc.), Jay Z and many other musical acts typically create a business entity, such as a corporation or limited liability company (LLC). These limited liability entities shield the owners from personal liability for any claims arising from any contracts or other arrangements entered into on behalf of the individual through its corporate or LLC entity. Generally, these individual’s business entities are called a “loan-out company” (i.e., Jay Z, Inc., a corporate entity that has rights to the performer). These loan-out companies typically enter into a contract with a third-party as part of a loan-out agreement. Ultimately, the corporate entity, not the members of it, is liable for any debts or contractual obligations of the entity and creditors generally cannot recover against each individual’s personal assets. This protects a person’s assets from judgments or outstanding debts. For example, this is beneficial if you are a member of a four-man musical group and during your live performance; a member spills a drink on the club’s soundboard and destroys it. If the live performance agreement at the venue is solely entered into with the band’s loan-out company (which it should be), the loan-out company will be the only party contractually responsible for the damaged property and each member will not be personally liable for the damage. The venue’s only recourse is to go after the corporate entity (which may not have assets) and, not each individual band member, for payment to fix or replace the broken equipment. While shielding an individual from personal liability is one of the most important advantages of creating a corporate entity, there are also several other important benefits for an artist’s career. One is that having a separate corporate entity permits the musician to open a corporate bank account in an assumed name. This also facilitates easier tracking of your expenses and permits the deduction or “writing off” of relevant properly documented business expenses. In order to determine a corporate entity’s eligibility for these deductions and not have the Internal Revenue Services (I.R.S.) categorize your musical career as “a hobby” (which...
The Legalities Behind A Cover Song: The Legalities Behind A Cover SongBy Justin M. Jacobson, Esq. The recording of covers is common practice in the music industry, and has only become more popular of late, particularly with the rise of YouTube. Still, by nature of the fact that a cover is someone else's intellectual property, there are inherent legal complications. Here we look at what some of those might be. How To Legally "Cover" Another Song? How To License A Track For A "Cover" Song? It is natural for musicians to record other people’s tunes. The subsequent version of an original song is called a “cover.” The creation and distribution of cover songs has become an increasingly widespread trend. It continues to explode with the increased usage of social media content distribution platforms, such as Facebook, Instagram and YouTube. These platforms permit individuals to instantly post their own created “cover” songs available for world-wide viewing. Some of these “covers” are monetized through the sale of the track or through advertisement revenue sharing programs. A few cover songs even reached several hundred thousand views, if not more. In these instances, if the creator of the new cover song does not first acquire the proper licenses to the original material, then they are potentially illegally using another person’s work. This usage has the ability to expose them to liability for copyright infringement; or, at the very least, the cover track could be removed for rights violations. Who Owns The Copyright To The Original Song Used For A "Cover" Track? A copyright holder in a track has the exclusive right to publicly sell, distribute as well as license a sound recording (the song). Therefore, to properly monetize and publicly distribute a cover song, the covering artist must receive a license, which is the right to utilize the work, from the copyright holder(s) in the work. What Licenses Does A Musician Need For A Cover Song? (Cover Music License) There are two common licenses that may be required for publicly distributing and/or monetizing a cover song. They are a mechanical license and/or a synchronization license, known as a “synch” license. The purpose of these licenses are to ensure that the owner of a song is adequately compensated for another party’s use of their work; or, it could provide the owner with the right to approve a third-party’s use of their song. What Is A Mechanical License? What Is A Synch License? A mechanical license from the original composition’s rights holder(s) is required for a cover song that is not paired with an audio-visual work. The license provides the licensee with the right to reproduce, distribute and/or publicly sell a protected work on CDs, vinyl, and/or as MP3 downloads. This means that a mechanical license is needed to sell a cover song on iTunes. A mechanical license is a type of compulsory license, which means it is available to anyone willing to pay the...
Sports Law – “Brand” and Name Protection For Professional and College Athletes: Sports Law – “Brand” and Name Protection For Professional and College AthletesBy Justin M. Jacobson, Esq. Today more than ever, all competitive athletes, including both professional and college ones, must be aware of how their “brand” is publicly viewed and protected. This new focus on a player’s off-the-field business has caused many professional athletes from various sports to properly protect and monetize their actual name as well as any publicly associated catchphrases, nicknames or slogans. Many athletes are also creating their own charities, athletic training camps and separate businesses that all require proper brand protection as well. This desired protection is generally achieved through the use of trademark law. A trademark registration provides the owner with the exclusive right to use a particular name or logo (trademark or service mark) to differentiate the goods or services that the owner provides from those of another. Trademark protection applies to a word, phrase, logo, sound, design or a combination of these, used in relation to a particular good or service. Trademark Law Protection for Professional and College Athlete Legal Name, Brand, Product, Charity and Camp Names In the professional sports world, trademark protection may apply to the athlete’s actual legal name, a unique logo, a nickname, a catchphrase or a business name used for an ancillary project in relation to specific good or service. In fact, numerous professional competitors have protected their legal name for a variety of products. These include “Michael Jordan” (U.S. Reg. No. 1,487,719) for “promoting the goods and/or services of others through the issuance of product endorsements,” owned by former NBA player, Michael Jordan; “Donovan McNabb” (U.S. Reg. No. 2,872,135) for “clothing” and “entertainment services in the nature of personal appearances by a professional football player,” owned by former NFL player, Donovan McNabb; and, “Tiger Woods” for “golf shirts, golf shoes, hats, jackets, shirts” and “golf clubs, golf gloves, golf tees” (U.S. Reg. 2,306,354) and for “computer game software featuring golf” (U.S. Reg. No. 2,281,652), owned by professional golfer, Tiger Woods. In addition to a professional athlete protecting their actual legal name, many individuals have also registered their nickname for a specific good or service. Some examples are former NBA Player Earvin Johnson, who owns “Magic Johnson” (U.S. Reg. No. 3,237,937) for sports commentary and for “personal appearances and speeches by a sports celebrity”; NBA player Jeremy Lin, who owns “Linsanity” for “clothing” and “cups and mugs” (U.S. Reg. No. 4,908,965); and, former MLB player Reggie Jackson, who owns “Mr. October” (U.S. Reg. No. 2,594,621) for clothing, posters, and baseballs. Another category that many athletes apply for protection is in any...
Trademark Law: A Musician’s Basic Guide to Trademark Law: A Musician’s Basic Guide to Trademark LawBy Justin M. Jacobson, Esq. Continuing from our prior installment where we discussed copyright law and how it relates to the music industry, we should now briefly explore how trademark law is related to the music business. Trademark Law Protection for Musicians Protection of Artist's Stage Name, A Band Name, A Performing Artist Name, A Music Producer Name and A Discjockey (DJ) Name As they say on Madison Avenue, “it’s all about the name;” and, trademark law provides protection for a particular name for a specific good or service other visual materials and any biography, website or other unique textual information the artist creates. Trademark registration grants the owner of a mark the exclusive right to utilize the brand in commerce to differentiate the goods or services provided by that individual or business from those provided by another. A service mark is a mark used in connection with providing a particular service (i.e. live performance services, talent management services). Trademark protection can apply to a particular word, phrase, slogan, logo, design, smell, sound or a combination of these, which are used in relation to specific goods. The general principle behind trademark law is that the mark acts as an identifier to the public of the source of a good or service. It is actually a consumer protection law based on the origin of goods and services. There are two distinct trademark systems for acquiring rights in a name. There is a “first-to-file” system, which exists in countries such as China and France. This system provides protection to the first entity to file for a registration for a particular name for the good or service listed in the registration. Conversely, the United States follows a “first-to-use” system. This system provides trademark protection to the first entity to file an application and who actually utilizes the mark in commerce for the listed goods or services. In order to protect a name, a federal or state trademark application should be filed with the appropriate state department or the United States Patent and Trademark Office (“U.S.P.T.O.”). In America, an application can be filed for a mark that is currently in use (an “actual use” application) or for one that the owner intends to use (an “intent-to-use” application). An intent-to-use application is filed prior to the actual use of the mark in commerce in an effort to “reserve” a particular name for a specific good or service. The applicant must then actually use the mark in commerce within six months after a “Notice Of Allowance” is issued by the U.S.P.T.O. or an extension must be filed to keep extending the deadline to file a “Notice of Use” to obtain the registration. Trademark Protection - What Can Be Trademarked? In the United States, a mark can only be registered if it is distinctive and not generic for the goods or services provided. A...
Intellectual Property Considerations For Restaurants, Food Products and Other Culinary Establishments: Intellectual Property Considerations For Restaurants, Food Products and Other Culinary EstablishmentsBy Justin M. Jacobson, Esq. As restaurants, food companies, and other culinary establishments continue to form and grow, these companies begin to face new legal challenges similar to any other business. While there are many matters a potential restaurateur must evaluate prior to forming or creating a culinary business, we are going to solely explore several intellectual property considerations. Trademark Law Protection for Restaurants Names and Food Product Names One of the most important aspects of any restaurant or food establishment is their name. A name is typically protected through a service mark or trademark. Protection can apply to the particular name, a logo as well as any special or “signature menu items.” For example, “ROOTY TOOTY FRESH ‘N FRUITY” (U.S. Reg. No. 3,433,997) is owned by I.H.O.P., “MOONS OVER MY HAMMY” (U.S. Reg. No. 1,946,766) is a protected menu item owned by Denny’s, McDonald’s “BIG MAC” sandwich (U.S. Reg. No. 1,126,102) is protected as well as the latest culinary craze, a “Cronut” (U.S. Reg. No. 4,788,108). Additionally, a culinary company may utilize their name as both a service mark and a trademark. This touches on the restaurant and potential “franchise” as well as licensing matters. For instance, “T.G.I. Friday’s” (U.S. Reg. No. 2,963,202), also known as “Fridays” (U.S. Reg. No. 4,681,669), is a restaurant franchise who has also expanded into officially licensed frozen foods (U.S. Reg. No. 5,095,702), corn chips (U.S. Reg. No. 2,565,300), and pre-made cocktail mixers (U.S. Reg. No. 1,417,077). Generally, placing a “TM” or “SM” next to a restaurants’ name, logo or menu item is an act of constructive notice to the public whereby the owner is claiming rights in the particular mark or logo. A company’s trademark rights in a selected mark in the U.S. are strengthened with the filing of a federal application with the United States Patent and Trademark Office (U.S.P.T.O.). In addition, many countries have their own trademark statutes to protect a mark in their country. Copyright Law Protection for Restaurant Logos, Menus and Other Creative Assets Another protection a restaurateur may pursue is filing a copyright registration for a logo as well as a unique menu design. Copyright protection applies to the particular visual representation and prevents others from copying the work. This is also beneficial if the owner wishes to create, sell or otherwise license any merchandise bearing the restaurant or food brand’s logo. In addition, recipes cannot be copyrighted as it is a “mere listings of ingredients;” rather, “copyright” protection may […] extend to substantial literary expression [,such as] a description, explanation, or illustration […] that accompanies a recipe or formula.” Instead,...
What Is “Publishing” Money In The Music Business? A Look At How Musicians, Songwriters and Producers Make Money From Publishing: What Is “Publishing” Money In The Music Business?A Look At How Musicians, Songwriters and Producers Make Money From PublishingBy Justin M. Jacobson, Esq. While songwriters, musicians and record producers are often advised by their fellow artists to keep their own publishing, such an approach is no longer especially applicable in the modern music economy. It is more important that artists develop a solid understanding of where exactly publishing revenue comes from, and how to deal with Performing Rights Organizations. What Is Music Publishing? Every new musician is told by some other musician or industry professional “to keep your publishing” or some variation of this. Such a statement is archaic and a potentially career debilitating mistake. A better understanding of what “publishing” monies consist of and why this outdated advice of “keeping your publishing at all costs” no longer applies in today’s digital music age is needed. What Is "Publishing" Money In The Music Business? In general, “publishing money,” as it is referred to, actually includes all the royalties earned from the public performance of a musical work, specifically the amounts generated for the owners of the copyright in the underlying musical composition. Typically, the underlying musical composition in a musical work refers to the lyrics and underlying musical composition. These rights are owned by the track’s songwriters, composers, producers, and publishers. A track’s songwriters, producers and composers must sign up with the appropriate performing rights organization to receive their public performance royalties or so-called “publishing monies.” In the U.S., the Performing Rights Organizations are ASCAP, BMI and SESAC. Each country has their own performing rights organizations, so a foreign citizen might apply and become a member of the organization for the country they are citizen of. Once a musician signs with a Performing Rights Organization (PRO), they must properly index their works with that organization. This involves listing each track’s writers and composers as well as their appropriate ownership percentage. The performing rights organizations then collect and distribute these “small” public performance royalties to its members based upon its own unique pay-out formula. Each organization has its own pay-out formula and a musician can research and determine the best fit for their music on each organization’s official website. Every PRO collects and licenses their members’ works for public performance usages. Some of these third-party public usages include license fees paid by licensees to play the songs on terrestrial and satellite radio, on television, in motion pictures, through digital streaming service providers as well as for the live performances of the works at venues, stadiums, theme parks and concert halls, nightclubs, colleges and universities. Additionally, the copyright in the sound...
Intellectual Property Law Considerations When “Minting” or Launching An NFT Project: Some Intellectual Property Law Considerations When “Minting” or Launching An NFT or NFT ProjectBy Justin M. Jacobson, Esq. The current buzz in the entertainment, sports, gaming, fashion, and art worlds as well as in other lifestyle, business, and technology areas are the “metaverse” and “non-fungible tokens” known as “NFTs.” However, it is crucial that an individual or company attempting to launch or “mint” their own NFT or any associated blockchain collection or token is aware of all the relevant legal considerations related to this business transaction. While there are many pertinent ones, including those focused on securities law, tax and other financial regulatory matters, this article will solely explore a variety of relevant intellectual property protections and considerations. This includes examining the benefits of copyright law, trademark law, and the drafting of proper licensing terms related to the ownership and usage of the digital asset. This piece also explores potential ownership rights monitoring and enforcement efforts that a project owner or a NFT purchaser might undertake to protect their virtual asset. Legal Protections Available For The NFT Creation While the U.S. government and others around the world are still determining how to best regulate and to effectively tax various NFTs and other associated blockchain “assets,” such as cryptocurrencies and select NFT projects; another paramount legal consideration is the intellectual property rights in the associated digital art as well as matters related to the underlying ownership rights in the specific NFT or other digital blockchain linked asset. Consequently, when a party is creating their own NFT project, whether a single token or an entire multi-piece collection, it is crucial to ensure that the intellectual property related to the project is properly cleared, protected, structured, and the ownership rights are expressed in writing, in order that that a purchaser is fully aware of what they do and do not receive when purchasing a specific cryptotoken. NFT Contract Law – Drafting and Enforcing Usage and License Terms for NFTs and “Smart" Contracts As a result, a company launching an NFT must be aware that an NFT collection drop has two contracts at work, the “smart” contract and the “usages and license” term agreement. The “smart” contract is blockchain linked aspect that automates handles the transfer process, including documenting ownership and transfers of the NFT, distributing and calculating fees and royalties, and anything else the creator programs. In addition to this agreement, a separate contract addressing the use of an NFT is prudent. When crafting these documents, it is crucial to ensure that a valid and clear license exists so that all parties understand what rights are transferred and how the purchaser may or may not use the digital asset. This includes whether a buyer has...
Why You Still Should Register A “Copyrighted” Work: Copyright Law: Why You Still Should Register A “Copyrighted” WorkBy Justin M. Jacobson, Esq. A common misconception in the entertainment industry is that an author has a “copyright registration” in the work upon completion and the publication of the created work. However, this is not entirely true. Although the Berne Convention, which the United States is a signatory to, creates a “universal copyright” or copyright upon creation and publication of a work, the work is not “registered” until it has, in fact, been registered with the U.S. Copyright Office. In fact, the full array of the benefits of copyright ownership are unavailable in America until the Copyright has been registered with the U.S. Copyright Office. Some Benefits of Copyright Law Protection Registering a copyright is as easy as preparing and submitting an application to the United States Copyright Office with the appropriate filing fee and a copy of the copyrighted material known as the "deposit." Once the work is registered and the copyright registration certification is issued by the U.S. Copyright Office, the benefits of the registration begin immediately and are retroactive to the original filing date of the application While it is established that a copyright is automatically created in a work upon the completion of the original work of authorship, when it is fixed in a tangible medium of expression; a formal registration of the creative materials with the U.S. Copyright Office within three months of public release provides additional, valuable benefits to the work's creator. Some of these benefits include that the work now becomes a matter of public record and is available for search within the U.S. Copyright Office and the Library of Congress. This makes it easy for another party to search and verify the ownership and extent of an existing, copyrighted work. This permits an individual to quickly find and contact the creator in the event that the individual desires to use or license the copyrighted material. Additionally, in order to bring a copyright infringement lawsuit when an author believes that one of their copyrighted works has been infringed upon, the work must be registered with the U.S. Copyright Office prior to instituting a lawsuit. A valid registration certificate constitutes prima facie evidence of valid copyright ownership in the work after five years. Also, if the owner has filed for registration prior to the infringement or within three months of publication of the work, the author may be entitled to recover actual damages incurred, statutory damages as well as attorney’s fees. These fees can exceed the actual damages incurred by the copyright owner. A valid registration also defeats a defendant’s defense of being an “innocent infringer” and provides increased statutory damages for infringements found to be “willful.” It also allows for the owner to easily license and catalog the various rights in the...
Copyright Law: Copyrights In Music: Copyright Law Protection In MusicBy Justin M. Jacobson, Esq. We have previously explored the reasons to register a copyright and the procedures to effectuate it. In this article, we will explore copyright law as it specifically relates to the music industry to ensure the proper exploitation and monetization of an artist’s finished song. What Can Be Copyrighted? For a work to be copyrightable, it must be original and fixed in a tangible form, such as a sound recording fixed on a CD, MP3 or other digital sound recording file format such as a WAV file. Some examples of copyrightable material that are common in a musician’s career are the actual song recordings, the lyrics and underlying musical composition, music videos or other audio-visual works, photographs, logos or other visual materials and any biography, website or other unique textual information the artist creates. Copyrights In Music Include the Sound Recording (SR) and the Musical Composition (PA) In particular, copyrights as they apply to music are unique in that every track has two copyrights. One of these is a copyright in the song, i.e. the musical composition, which consists of the lyrics and underlying music (beat, instrumental). The other is a copyright in the sound recording or “master recording” itself. The “C” in the circle (©) is the appropriate notice for the lyrics and underlying musical composition, which are protected by the “Performing Art” (PA) copyright. The appropriate notice is a “P” in a circle (℗) for the actual sound recording, which is protected by the “Sound Recording” (SR) copyright. This indication originates from the International Phonogram Convention and refers to a “Phonogram,” which is used when referring to any sort of audio master. The same party or several parties may own rights in each of these distinct copyrights for the same music. For example, “All Along The Watchtower” was originally written and composed by Bob Dylan. It has been subsequently performed and “covered” by several artists, including Jimi Hendrix. In this situation, the copyright in the underlying musical composition (the lyrics and musical arrangement) is owned by Bob Dylan (or his publishing company); while, the copyright in a particular sound recording is owned by Jimi Hendrix (or his record label). This situation most commonly arises where a singer is merely involved in and has rights in the sound recording copyright of a song by being the actual featured vocalists on a track; while, the other parties who wrote the track own rights to the underlying musical composition. Each copyright confers each owner with several exclusive rights. These include the exclusive rights to reproduce the work, including the mechanical reproduction of a musical composition in CDs, downloads and vinyl as well as to authorize third-parties to do the same. It also includes the exclusive right to distribute the work...
What Are NFTs (Non-Fungible Tokens)? A Look At NFTs in the Art, Entertainment, Music, Sports, Esports and Video Games Worlds: What Are NFTs (Non-Fungible Tokens)? A Look At NFTs in the Art, Entertainment, Music, Sports, Esports and Video Games WorldsBy Justin M. Jacobson, Esq. NFTs or “non-fungible tokens” are all the buzz in today’s entertainment, sports, art, esports and video game industries. This includes musicians earning millions of dollars through releasing their own NFTs, celebrities like Tom Brady and Jay-Z investing (and launching) in NFT distribution companies, and the trending NBA Top Shot taking over social media and press outlets everywhere, including breaking "$1 billion in sales" on the platform. In fact, there has also been a rapid expansion and usage of NFTs in the entertainment and sports collectibles market, the art world and most recently in the esports and gaming space. This might include utilizing NFTs to secure rights to a particular piece of physical artwork and digital pieces, an “in-game” digital character or a “skin,” a digital sneaker from Adidas or Nike, or digital art “camo” print from BAPE, or even a video “moment” or other unique collectible from current or legendary professional athletes and teams, such as NFL and NHL athletes and even WWE wrestlers. Professional soccer superstar Lionel Messi has even agreed to take a portion of his upcoming salary in his team’s “crypto token.” What is An NFT? How Does It Work? An NFT is a type of cryptographic token that is not mutually interchangeable with something else that exists. This means that there is only one “original” copy that cannot be replicated or otherwise divisible no matter what. In fact, NFTs are “coded to have unique IDs” and underlying “metadata” that another token cannot reproduce which is where much of the value lies. This unique crypto token is managed on a “blockchain,” which acts as an official transfer ledger to trace and delineate the ownership and the full transaction history of an associated NFT. In practice, this creates an automated and computerized ownership verification process and database for a specific asset which is authenticated on a “back-end blockchain” technology, such as Ethereum. Additionally, other technology platforms such as FLOW are used by Dapper Labs for the administration of its extraordinarily successful NBA Top Shot NFT. What is A "Smart Contract"? How Does It Apply To NFTs? In practice, NFTs are written with a software code referred to as a “smart contract.” A “smart contract” proscribes the permissible actions for an NFT, including assisting in verifying the ownership and managing the transferability of the digital asset. Similarly, a “smart contract” could be coded to automatically allocate a portion of any the amount paid in any subsequent sale of the NFT back to the original owner. This unique attribute provides the original owner with the ability to earn income from the “secondary marketplace” for all the subsequent sales of a digital item. This means that when...
Trademark Law Protection In A #Hashtag: Trademark Law Protection In A #Hashtag In The United StatesBy Justin M. Jacobson, Esq. As social media and digital marketing and promotions continue to dominate the business world, there is an increased importance on unique branded promotional campaigns. In today’s world, dominated by social media, one new key brand development utilized by many marketers and advertisers is to market and promote a company’s products and services with a “hashtag” (or hash/number symbol (#)). Trademark Law Protection for A "Hashtag" The United States Patent and Trademark Office (U.S.P.T.O.) in T.M.E.P. § 1202.18 defines a hashtag as “a word or phrase prefixed with the symbol ‘#.’” A hashtag is “often used in social-networking sites to identify or facilitate a search for a keyword or topic of interest” (T.M.E.P. § 1202.18). Many of the world’s leading social networking sites, including Twitter, Facebook, Instagram, YouTube and Tik Tok all support hashtags and permit a user to search the platform by using a hashtag to narrow the search results. For example, a Twitter user can search “#Esports” to locate and solely display all the Twitter posts that utilize the phrase “#Esport” in them. This is beneficial for brands, as it enables them to easily monitor and track users’ personal social media posts by searching a specified hashtag. This also permits the brand to search the hashtag in order to locate all the posts tagged with a particular brand. Companies can utilize these results to easily conduct promotional contests, sales and other events as well as any other giveaways centered on a particular hashtag themed campaign. With the rise of new innovative hashtag marketing campaigns, new legal standards for protecting and registering these phrases were enacted by the U.S.P.T.O. For instance, T.M.E.P. § 1202.18 only permits the registration of a trademark or service mark “if [the mark] functions as an identifier of the source of the applicant’s goods or services.” This means that the applied-for mark must be utilized in commerce (i.e., in an advertisement or affixed to the product), to indicate the source of a particular good. It must also be arbitrary or suggestive. Consequently, the main factor in determining whether a particular hashtag will be registerable is the nature of the hashtag as well as the context of its use. Conversely, simply adding a hash symbol before an otherwise unregisterable mark (i.e., a generic or descriptive mark, geographically misdescriptive, etc.) will still not be permitted registration by the U.S.P.T.O. (T.M.E.P. § 1202.18). For example, soda drink company Coca-Cola received protection for its recent “#ShareACoke” promotional campaign that urged all Coca-Cola consumers to capture a photograph of them enjoying and sharing a Coca-Cola product with the hashtag “#ShareACoke.” This permitted Coca-Cola to review any social media posts that ended with...
Trademark Law Protection For Slogans, Catchphrases and Tag Lines: Trademark Law Protection For Slogans, Catchphrases and Tag Lines In The United StatesBy Justin M. Jacobson, Esq. Trademark law grants the owner of a particular mark the exclusive right to use a mark to differentiate the goods or services provided by them from those provided by another business or individual. It functions as an identifier of the source of a particular good or service to the consuming public and as an indicator of the quality of the goods or services provided. Trademark protection in the United States is available for a word, logo, design, hashtag, smell, color, sound, slogan, catch-phrase, “tag line” or a combination of these, which are used in relation to specific goods or services. Trademark Law Protection for A Business "Slogan" or Marketing "Tag Line" Similar to a party applying for trademark protection in a “hashtag” and any other word mark, protection is available in the United States for a slogan or other “tag line” used in commerce by a particular mark owner. A “slogan” is defined by Merriam-Webster as “a brief attention-getting phrase used in advertising or promotion.” A “registrable slogan is one that is used [… to function] as a trademark or service mark on the Principal or Supplemental Register” (TMEP § 1213.05(b)(i)). However, a “mark [that] consists entirely of a slogan that is generic, merely descriptive, merely informational [… may] be refused, such as “WHY PAY MORE!” for supermarket services which was refused because it was a “common commercial phrase” (TMEP § 1213.05(b)(i)). This means that taglines and slogans are subject to the same scrutiny as traditional trademarks when they are being examined by the U.S. Patent and Trademark Office (U.S.P.T.O.). Therefore, to obtain rights in a slogan, a mark owner should engage in continuous and extensive nation-wide use of it. This use can occur through including the slogan or tag line in a company’s advertising materials, on their websites and social media platforms as well as on their marketing and promotional materials used to sell goods or services to the public. In this context, an advertising campaign that spans several years assists in potentially protecting a slogan. For example, fast-food restaurant chain, McDonald’s owns a variety of registrations for “I’m Lovin’ it” in many classes, including “restaurant services” (U.S. Reg. No. 2,978,887), “soft drinks” and other beverage items (U.S. Reg. No. 3,104,640), “edible sandwiches” and other food items (U.S. Reg. No. 2,978,889). In addition, sports apparel company Nike has registrations for its tag line, “Just do it” for various goods including “sunglasses” (U.S. Reg. No. 4,350,316), “cell phone cases” (U.S. Reg. No. 4,704,671), “footwear” and “backpacks” (U.S. Reg. No. 4,764,071), as well as for “bottles” (U.S. Reg. No. 4,902,036). Trademark Law Protection for...
Non-Traditional Trademarks: Protection of Color, Sounds and Scents In The United States: Non-Traditional Trademarks: Protection of Color, Sounds and Scents In The United StatesBy Justin M. Jacobson, Esq. Trademarks and service marks are essential and valuable assets of a company. They are used to identify the source of a particular good or service to the consuming public and are an indicator of the quality of the goods or services provided. A protected mark for a specific good or service helps a business increase its recognition and consumer loyalty. Additionally, an owner’s right in the mark continues to grow through use in commerce. In the United States, a mark can be registered at either the state or federal level; however, prior to selecting a particular mark for a product or service, a trademark-screening search should be performed on all state and federal registered marks as well as pending marks. Based on the results of the search, a determination on whether to seek federal registration for the trademark can be made. In America, trademark rights exist in both traditional and non-traditional marks. Words, phrases, symbols, logos and/or designs are all examples of traditional trademarks. In addition, to these traditional marks, exclusive rights can also exist for a particular color, sound, scent and/or any combinations of these. For the purpose of this article, we will focus specifically on non-traditional trademarks. The Trademark Act of 1946, known as the Lanham Act, governs trademark matters in the United States. In the Supreme Court decision Qualitex Co. v. Jacobson Products Co, the Court ruled that non-traditional trademarks could be protected (514 U.S. 159). In order to protect a non-traditional mark, the Court required a finding of “secondary meaning.” “Secondary meaning” exists when the relevant consumers identify a particular mark for a certain product or service. This is typically due to an extended period of use of a mark for a specific service or good. This can be proved by submitting evidence that the mark has acquired distinctiveness through proof of sales success, advertising and promotional expenditures. This substantiates the length and exclusivity of use. Evidence can also include unsolicited media coverage confirming this fact, statements in the form of affidavits from industry leaders recognizing the mark as a source identifier as well as consumer studies and surveys substantiating this fact. Trademark Law Protection for Colors For trademark protection in a particular color, the color must “act as an indicator of source” and not serve any function. A few prominent examples of protected colors include: Home Depot’s “orange” color for “retail home improvement stores” (Reg. No. 4,300,027); Tiffany’s particular shade of blue used on its bags, boxes and catalogue for “Jewelry” (Reg. No. 4,804,204); Owens-Corning’s “pink” insulation for “foam insulation for use in building and construction” (Reg. No. 2,090,588); and, United Parcel...
Law Office of Justin M. Jacobson, Esq. Launched: May 5, 2022 - New York, NY - Today, entertainment, esports, and video game attorney, Justin M. Jacobson, Esq. announces the launch of his new law firm, the Law Office of Justin M. Jacobson, Esq. Justin practices entertainment and music law, esports and video game law, sports and "name, image, and likeness" (NIL) law, fashion and jewelry law, art, comic and anime law, as well as food, nightclub and hospitality law. The Law Office of Justin M. Jacobson, Esq. provides top-flight legal services to all entertainment segments including for professional athletes, musicians, producers, songwriters, DJs, record labels, entertainment companies, fashion designers, as well as professional gamers, streamers, content creators, coaches, on-air talent, esports organizations and teams, event and tournament organizers, video game publishers and developers as well as works on behalf of other business and individuals involved in the entertainment, sports, music, motion picture, television, fashion, art, comic, and the professional video game and esports spaces. This includes handling intellectual property law and licensing matters, including trademark and copyright law, contract law, business and non-profit law, wills, trust and estates law, internet, privacy and NFT law as well as immigration law, including providing legal assistance in securing of work visas for professional gamers and esports players, esports coaches, and shoutcasters as well as for professional athletes, musicians, DJs and other musical acts to perform services in the United States. In this role, Justin will continue to work on behalf of industry leading creatives, influencers, and businesses on their various legal and business needs, including assisting in contract drafting and negotiations, trademark and copyright protection, corporate and business entity formation as well as other related legal matters....
Oh, No! They Rescheduled the Harry Styles Concert! Force Majeure and “Rain or Shine” Language in a Time of Disasters and Pandemics: Oh, No! They Rescheduled the Harry Styles Concert! Force Majeure and “Rain or Shine” Language in a Time of Disasters and Pandemics By Jeremy M. Evans, Esq. and Justin M. Jacobson, Esq. The sale of many consumer goods, including concert tickets, indicates something along the lines of “rain or shine.” Does this include disasters that occur? What happens if a disaster happens? Do clients have a claim against the seller? How can attorneys advise these clients? Considering today’s unpredictable weather as well as the ongoing COVID-19 global pandemic, there has been substantial discussion regarding cancellation policies as they relate to commonly used “rain or shine” policies for live events and attractions, as well as the potential usages of “force majeure” language. One way that attorneys have managed the risk for clients is by inserting protection clauses in agreements or other written documents entered into by these individuals or businesses. Some of these provisions include force majeure, indemnification, waivers, protocols, and a seemingly “moving target” approach to handling the continued uncertainty in an ongoing, unprecedented health pandemic. In many ways, states have varied in their approaches to the pandemic, but attorneys have been more consistent in their approach of protecting their clients from lawsuits or unnecessary risk. This article will explore legal approaches to the uncertainty caused by forces outside of each party’s control. In any attorney-client relationship, trust is paramount. In any attorney-to-attorney or client-to-opposing-party or business relationship, trust is also most important. The parties should like or at least trust each to be flexible to make changes to an agreement as times and circumstances change in a way that benefits or harms both parties. This happened repeatedly during the pandemic when airlines and hotels rebooked and refunded planned trips. Attorneys and clients need to think about contingencies if and when things go wrong and how to make them right. It is a collaborative way of contracting and retaining customers. Parties that are too strict will lose trust and customers, which will affect their overall long-term profitability and sustainability. The best example is one in the endorsement and sponsorship setting. The parties should want to work together to promote one another. If the parties find that they do not like each other, they should move on, as the relationship usually continues on a downward trend. In terms of business, companies should want customers and should try to be flexible within reason. In this respect, terms and processes should be outlined in detail in written agreements, policies, and “terms and conditions” on websites, backs of admission tickets, or elsewhere so that a purchaser or any other customer is aware of the applicable regulations associated with a specific transaction or purchase. The following are some ways attorneys...
Some Intellectual Property Law Considerations for Video Game Developers and Publishers: Some Intellectual Property Law Considerations for Video Game Developers and Publishers By Justin M. Jacobson, Esq. Proper protection of intellectual property by game publishers and game developers is of utmost importance. Usage of these protocols are especially critical as international major and independent or “indie” developers and publishers continue to grow their businesses via traditional business models (i.e., digital and physical copy sales), through the “Free-to-play” (F2P) and freemium models, as well as with the emergence of “Play-to-earn” (P2E) game titles and the creation and expansion of digital “metaverses” and associated non-fungible tokens (NFTs). As a result, a video game creator should be aware of and properly protect all of their intellectual property assets, including any relevant trademarks and copyrights. Trademark Law Protections for Game Developers and Publishers A major intellectual property protection that exists is trademark law. A trademark registration protects a word, logo, slogan, color, sound, catchphrase, product design, a hashtag, or any combination of these used to differentiate the goods or services that one company provides from those of another. As a result, most major AAA publishers as well as many indie game developers utilize trademark law to protect their intellectual property. In fact, trademark protection can be acquired by a company on a state, federal and/or on an international level. Consequently, it is paramount that a video game or software developer ensures that they are protected in the various jurisdictions that they market, license, distribute and sell their games. While there are many benefits in obtaining a trademark registration, one of these is that it prevents another party from using the same or a confusing similar mark for the identical or similar goods or services. Similarly, a trademark registration in a name is also a valuable commodity that can be licensed or sold to a third party. The existence of a registered mark also provides the owner with the ability to stop counterfeit or “grey market” goods with the owner’s mark from entering the United States by coordinating with the U.S. Customs and Border department. Finally, another useful benefit of a trademark registration is that it can be used offensively to file infringement claims with various social media platforms to retrieve or to block potentially infringing accounts, including with Facebook, Twitter, and Instagram as well as it may be used during a website domain dispute through ICANN. While a game development or publishing company has many different trademarks to choose from, some common ones include filing for trademark protection in their game publisher or developer company name as well as in their company logo. For instance, companies such as “Riot Games” (U.S. Reg. No. 4,109,440), “Activision” (U.S. Reg. No. 1,207,377), “Nintendo” (U.S. Reg. No....

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