Panels Look At IP Considerations In Representing Creative Talent

NEW YORK – At a conference of hundreds of performers and agents in a hotel perched on Times Square this week, panellists told some interesting stories about intellectual property rights and protecting – or failing to protect – creations and performances.

The Association of Performing Arts Presenters (APAP) conference was held from 15-19 January.

David Postolski, an intellectual property lawyer who works with startups, moderated back-to-back panels on situations of those representing performers or creators who need a lawyer, including those who may not be able to afford one.

He described intellectual property as when you have an idea you take out of your head, describe it and get protection from the government for it.

If you are selling a good or service in more than one state, you are eligible for a trademark in the United States, he noted.

Lori Andersen, an agent, told a story about a tribute show of Frank Sinatra songs she is involved with called Simply Sinatra. The show, with its logo, had been running for 12 years uncontested – and they have the trademark on the name – when she was sent a cease and desist letter by the estate of the late crooner.

As the story goes, the Sinatra tribe has been very aggressive in asserting rights over anything with his name on it, and have protected whole segments extending into food, beverages and an endless variety of would-be products.

The letter was sent by a big law firm in New York, and when she realised they “weren’t going to play fair,” she hired a lawyer. Her lawyer spent about 5 hours total on the case over the course of a month, and she won the case. The Sinatra estate agreed that her group could continue to use the name and do the show. They have emphasised that it is a tribute show, which is considered to not be confusing with an authentic performance by Sinatra. There are apparently many such shows in existence.

Andersen was asked why they didn’t approach the estate to begin with years ago, and she said it was partly financial, as she thought they would demand a piece of everything they earned. She also thought that since it was a tribute that it was not necessary as there was no confusion.

Now, “the horse is out of the barn” and the estate is trying to contain it, she said. The Sinatra estate allegedly communicated to her that they did not actually expect to win the case, but that they would cause her to spend $100,000 in legal fees to defend it.

Postolski said a company can do things to reduce confusion, such as use the word “tribute,” that can help avoid running into trouble. And as one participant put it, it may be worth it as sometimes it becomes a case of “David and Goliath,” but the small company often gets crushed by the big producers with very deep financial resources. “If someone comes in with a bigger bank account they can bury you.

Postolski said the fact that the Simply Sinatra show had been running for 12 years without contention was a strong factor in its favour.

Andersen said business insurance can really help too, as it sometimes includes protection for trademark infringement if you are sued. Her insurance company was ready to go to battle with the Sinatra people if necessary, which helped in the case, she said.

Another example given during the panels related to a theatre in Connecticut, the Palace Theatre in Stamford, deciding to hold a jazz music series and naming it Jazz Alley, without searching to see if the name might already be in use. They went forward with the plans, making marketing materials and preparations, and then received a cease and desist letter from a group in the Seattle that had the trademark rights to the name, from 20 years ago.

The Palace Theatre consulted Postolski, who informed them that indeed the other company’s trademark gave them the rights anywhere in the US. But he went on to say it might be possible to work out a “co-existence” agreement allowing the Palace Theatre to continue. This could include a license agreement giving revenues to the Seattle group. So they approached them and once it was clear there were no bad intentions, they were able to agree for a very reasonable sum, the speakers said.

Postolski said the Palace Theatre could easily have done a search on the name in the US Patent and Trademark database to begin with, or hired an attorney.

In a different example, an audience member highlighted the importance of “intent” by mentioning a case in which the Gypsy Kings sued a show in Los Angeles in which some Gypsy Kings family members were involved. The outcome came down to intent, whether they intended to confuse, which they were found not to have done.

Postolski highlighted that damages have to be shown in cases, so there has to have been a business for some period of time to claim damages.

On copyright, he noted that people register copyrights but often they are not checking ahead of time whether they actually created it. The register’s office does not check but rather just does the registration. This is left to the courts. Postolski noted that the line between being influenced by a work and taking a work is so fine that it is so fine that it is the subject of hundreds of legal cases.

In a copyright case, panellist Paula Riley wrote a play years ago and sent it to some top actresses and agents – without protection or even a non-disclosure letter. Some time later, she said, she discovered that in an act of “outrageous theft,” the same character (with a different name) and even verbatim language were used in a major film, with no credit or payment to her. The famous writer behind the film (who she is now in agreement not to name) claimed to have written it.

So she went to a top entertainment lawyer, who saw the script and the film, and agreed it was plagiarised. But she was persuaded not challenge the “Goliath” writer. In part, this was because she was unable to identify who had given the writer the script or how she had gotten it. For instance, one of the actors may have given it to her agent who passed it on. But, she said, “she must have known.”

Separately, someone from the audience informed the event about a service called Volunteer Lawyers for the Arts (VLA), which they said might be helpful for those who lack funds for a lawyer.

In general, participants urged creators to keep records of the creation date and keep drafts and early versions of work. They also said it is preferable to protect each creative work, rather than a whole body of work at once. For instance, it was noted that if you ask a friend to make a song for your choreography, they could own the right to the music if you don’t have an agreement.

 

Image Credits: William New