Years ago, during a music publishing seminar at which I was a presenter, a songwriter asked, “Why do I even need a music publisher? Couldn’t I just do what a music publisher does, myself?” My simple response was “will you?” It is generally true that of all the players in the music industry, the role of music publisher has one of the lowest thresholds to entry. Indeed, a financially successful music publisher’s stock in trade can sometimes be contained in a single desk drawer. However, that does not mean the job is easy or inexpensive, it just means that there are relatively few required steps for a company (or individual) to accurately call itself a "music publisher." If you are a beginning songwriter with one original song in your catalog and have not assigned any of your rights in that song to someone else, then congratulations, you are technically your own music publisher.
Songwriters frequently receive advice -- solicited or otherwise -- from “concerned” individuals (including fellow writers, family members, friends, rabbis, etc.) that they should never, under any circumstances, “give” their copyrights to anyone. And, because the vast majority of publishing deals involve the assignment of copyright to the publisher, some consider music publishing inherently evil. Of course, it is never a good idea to enter into an agreement with just any publisher who is willing to sign you, simply so you can brag to your family and friends that you signed a publishing deal.
An experienced music publisher should bring to the table at least four attributes that many songwriters lack: (1) an understanding of the music publishing business, including both the publisher’s traditional and developing roles in the larger music industry; (2) a set of established business practices and procedures to effectively manage a catalog and explore exploitation opportunities; (3) existing relationships in the industry; and (4) a relentless drive to both create a successful music publishing business and advance the careers of its signed writers. Notice that the last item does not say “a relentless drive to write great songs” -- that's the songwriter’s job. Writers who do not feel the same level of excitement about building a publishing business as they do about songwriting usually are better served by finding an effective publisher to fill that role.
OK, I know what you’re thinking: “I thought the whole point of this article was to help musicians who decide to ‘do it themselves.’ Why are you telling me I need to have a music publisher?” Well, I’m not telling you that you absolutely have to find a music publisher to achieve success as a songwriter, nor am I trying to discourage you from developing your own music publishing company. However, I do encourage those entrepreneurial writers who make the decision to take on the role of music publisher to learn as much about the business as possible and to seek help when necessary.
We all know the cliché, “knowledge is power,” and It definitely rings true in the music publishing world. Many great books on the subject are available, including Making Music Make Money: An Insider’s Guide to Becoming Your Own Music Publisher by Eric Beall and The Plain & Simple Guide to Music Publishing by Randal Wixen. Also, do not overlook Don Passman’s great, plain-English discussion of music publishing in his authoritative book, All You Need To Know About The Music Business, or Jeff and Todd Brabec’s detailed coverage in their book, Music Money and Success: The Insider’s Guide to Making Money in the Music Business. All of these books are available through most bookstores and online (be sure to confirm that you are purchasing the most recent edition).
As a parting thought, one of the traits that distinguishes successful entrepreneurs in any industry is the ability to recognize one’s own strengths and weaknesses. Most successful entrepreneurs humbly admit that, as mere mortals, they cannot possibly do everything themselves. Delegation of certain tasks to others who are better skilled in particular areas is a reality of the business world. Even seasoned music publishers sometimes enter into administration agreements with other publishing companies that are better able to perform administrative functions, leaving the non-administrative publisher free to concentrate on creative development and seeking exploitation. Finally, although entrepreneurial songwriters certainly can acquire knowledge of the publishing business, established music publishers are already in the game, and they can sometimes open doors that might otherwise remain closed to a songwriter just getting started as a publisher.
Regardless of the path you choose, you owe it to yourself and your music to make an informed decision.
Most business owners and executives have at least heard of the "big three" areas of intellectual property -- copyrights, trademarks, and patents -- although they might not fully understand the distinctions. However, trade secret law remains a foreign concept to most people, despite its important role in business. Trade secret protection is based on state law, with no federal equivalent. Thus, the definition of a trade secret and the degree of protection afforded to trade secrets varies among the states. This, coupled with the very fact-sensitive nature of trade secret cases, means that information that might be subject to trade secret protection in some states might not enjoy similar protection in others.
As a general matter, a trade secret is information (e.g., a film treatment, manufacturing process, inventory system, or sales program) created by a company or individual that is not generally known to others and can provide its creator or owner with a competitive advantage. However, simply calling proprietary information a "trade secret" does not automatically make it subject to protection. Indeed, for something to legally qualify as a trade secret, its owners must take reasonable steps to protect the information. It is a prudent practice for companies to develop systems for asserting trade secret protection in their proprietary information and consistently following written procedures governing the dissemination of information considered or containing trade secrets. This might sound easy, but it actually requires careful planning and diligent implementation.
Individuals and companies engaged in entertainment and other industries frequently share proprietary information with other parties. For example, a production company might send a treatment or script to other parties when securing talent for a film project. Similarly, an inventor or designer might need to share a schematic or CAD file with a manufacturer or part supplier during the sourcing or manufacturing process. At any time, many outside individuals and companies might have access to one’s confidential information.
Parties engaged in business activities often use confidentiality agreements or non-disclosure agreements (often referred to as "NDAs"). At their core, non-disclosure agreements contractually bind recipients of confidential information not to disclose or use the information without the owner’s authorization, and to use it only for the purposes specified in the agreement. Among other things, a non-disclosure agreement should clearly define what information is and is not protected, the time frame for protection, and the permitted uses of the information.
Employers also use non-disclosure agreements, as well as confidentiality provisions in comprehensive employment agreements, to protect against current and past employees disclosing confidential information. It is also a good practice to use non-disclosure agreements when inviting visitors to facilities if there is a chance that they might have access to proprietary information.
As discussed in Part 3 of this series, after it is filed with the United States Patent and Trademark Office (the “USPTO”), an application for trademark registration is assigned to an Examining Attorney. The Examining Attorney first reviews the application to ensure compliance with the federal trademark statutes and the USPTO rules. Next, the Examining Attorney conducts a substantive examination of the application. The examination includes consideration of the mark’s registrability, generally, and a review of the USPTO records to determine if the registration sought would create a likelihood of confusion with any existing federally registered marks.
If the examination reveals no registration impediments, the mark proceeds to publication in the Official Gazette, a weekly journal published by the USPTO containing detailed information about all marks receiving approval for registration by their respective Examining Attorneys for the relevant publication period. Publication provides notice of the pending application to the world. After publication, any party believing it will be damaged by a particular mark's registration may, within thirty days, file an opposition to the registration or request an extension of the time to oppose the registration. An opposition is similar to a proceeding in a federal court, but is held before the Trademark Trial and Appeal Board (the "TTAB"). If no one files an opposition, or if the opposition is unsuccessful, the application will proceed and usually the mark becomes registered in due time.
On the other hand, if the Examining Attorney determines that there is a minor issue with the application, he or she might contact the applicant or, if represented by counsel, the applicant’s attorney, to discuss an Examiner’s Amendment, which typically can be resolved over the telephone. However, if the Examining Attorney finds any significant issues that would prohibit registration, he or she will issue a detailed letter called an Office Action to the applicant or his or her attorney, identifying the legal impediments to registration. Similarly, any technical or procedural deficiencies in the application are typically addressed in an Office Action.
The primary pitfall at this stage for many applicants (particularly those attempting to register marks without legal assistance) is failing to give due consideration to all arguments contained in the Office Action. Or worse, completely ignoring the Office Action and hoping the Examining Attorney will have a change of heart and register the mark anyway. If an Examining Attorney sends an Office Action, the applicant must take the matter seriously and file a written response within six months to avoid abandoning the application.
The response must adequately address and overcome all objections under the proper legal standard or the Examining Attorney will issue a Final Refusal. In some instances, an experienced trademark attorney might be able to save an application filed previously without legal assistance through the response to the Office Action. However, because many of the issues that typically result in an Office Action can be traced to an earlier misstep in the trademark prosecution (e.g., the failure to properly clear a mark, the misidentification of good and services in the application, etc.), sometimes the problems are too significant to overcome through a response.
In some instances, an applicant might be able to appeal a Final Refusal to the TTAB, or simply apply again for registration. However, before investing additional time and money after receiving a Final Refusal, it is advisable to first consult with a trademark lawyer to assess the likelihood of registration, as well as the other issues discussed throughout this series.
After determining that a desired mark is available for use and registration (as discussed in Part 1 and Part 2 of this series), the focus next turns to preparing the application and its various components. Although rarely uniform, the order of the stages in trademark applications is fairly standard. First, the trademark owner files the application for registration. There are several options concerning the actual application form, which should be considered carefully, as not all options are available in every instance. The United States Patent and Trademark Office (the “USPTO”) has offered an electronic filing option for many years (which we will discuss in a later article), but the agency recently expanded the electronic application options, which can be confusing for the inexperienced applicant. Although discouraged and more expensive than electronic applications, the USPTO also accepts paper applications.
After the USPTO receives an application for registration and determines that it meets the minimum filing requirements, the USPTO issues the application a unique serial number and assigns it to an Examining Attorney. The Examining Attorney first reviews the application to determine if it complies with the federal trademark statutes and USPTO rules. If so, he then conducts a comprehensive examination of the application, including a search for any conflicting registered marks in the USPTO system and a detailed examination of the application.
An applicant should not take the application preparation lightly and must understand that errors can lead to delays, additional expense, and potentially a refusal to register a mark. Indeed, the deceptively simple appearance of the application coupled with the significant scrutiny that Examining Attorneys apply during examinations has caused problems for countless inexperienced applicants.
Although the number of potential issues is too great for any comprehensive discussion, the following are some common problems. First, some applicants fail to understand that one obtains rights in a mark through actual use of the mark in commerce. Although it is possible to file a federal application based on the “intent to use” the mark in commerce, one obtains no rights until after the first actual use occurs. An applicant must identify the proper “basis” for filing the application, which generally means he is either currently using the mark in commerce or has a bona fide intent to use the mark in commerce and is taking actual steps to use the mark in commerce (i.e., not simply attempting to preclude someone else from using the mark), such as market research, negotiating with suppliers or customers, etc.
Another common issue is the failure to properly identify the goods or services the mark is used to identify. The application must include a proper identification of the goods and/or services. Further, if those goods and/or services are dissimilar, they most likely fall within multiple classes of goods and services. The USPTO follows the international classifications of goods and services, in which specific categories of goods and services are grouped. Depending upon the circumstances, a mark might fall into one or more of the 45 current classes, which can require a more complex and expensive application. Words really do matter when crafting the identification for a particular good or service. So much so that we will discuss this specific issue in more detail in the next installment.
Another common problem is attaching an incorrect drawing or depiction of the mark to the application. An applicant must correctly identify the type of mark (e.g., word mark, graphic design, composite mark) and provide an accurate depiction of the mark. An applicant might seek broad rights in a mark by filing an application for a word mark, in which case, a “standard character” drawing is appropriate. On the other hand, the applicant might wish to protect a design or logo, in which case a “special form” drawing should be used. Improperly designating the type of registration or including an inaccurate depiction of the mark can result in certain elements of a mark being excluded from the registration or a refusal to register the mark.
A similar issue can arise when selecting appropriate specimens of a mark to support the application. An applicant must provide a "specimen" that demonstrates the actual use of the mark in commerce (either in the application, if the application is based on actual use of the mark, or in a subsequent Statement of Use or Amendment to Allege Use, as appropriate, if the application is based on the intent to use). Not all specimens are proper to illustrate use for both goods and services. Here too, attaching the wrong type of specimen can delay the application process and potentially preclude registration.
These are just some of the issues that can arise during the trademark application process. In the next installment of this series, we’ll cover several issues that can arise after filing, and during the pendency of, an application.
L. Kevin Levine is the founder of L. Kevin Levine, PLLC (go figure), a boutique entertainment, copyright, trademark, and business law firm in Nashville, Tennessee. A lifelong musician who grew up in his family's music store, it was inevitable that Kevin would build his legal career in entertainment and business.