The Captain Beefheart Trademark Question

            I am a practitioner of trademark law and I can attest  that it is often a sea of angst and confusion.  I'm also a fan of both the late Captain Beefheart and the late Frank Zappa … there's a little bit of angst and confusion there as well.

            Thus, I am fascinated by the fact that Zappa's widow Gail just secured a notice of allowance on her intent to use application for the trademark "Captain Beefheart" (Serial No. 85695177).  (I have written about Gail Zappa before: http://tripaldredgelaw.blogspot.com/2012/12/selling-zappa.html).

            Ms. Zappa is seeking registration in several U.S. classes that include everything from "audio and video recordings" to "electronic games software"  to “sunglasses”. (Captain Beefheart sunglasses  ?  Cool!).

            I don't claim to know the whole complicated history between Don Van Vliet  (p/k/a Captain Beefheart) and the Zappas.  I know that Don and Frank were high school friends, I know that Zappa released  Trout Mask Replica and I know that there was some legal wrangling over the original master  recordings to the album  Bat Chain Puller which was recorded in the 1970’s but which went unreleased until 2012.

            I can't tell how Zappa would have acquired the rights to the trademark in sound recordings  and other classes for the Captain.  California has a very good right of publicity statute which would seem to give Vliet’s  heirs a right to exploit his name, image and likeness after his death. What about all of the other Beefheart  recordings that were released on labels other than those controlled by Frank Zappa?

            There may be a simple explanation to all of this and the explanation may be that it is none of our business.  Or it may be one of those interesting areas where the laws of intellectual property and state  property and probate laws intersect.  Stay tuned.

The Go-Go's lawsuit: a Test of Band Agreements

After three decades of practicing entertainment law I have learned that all bands are dysfunctional - it is a fact and it has nothing to do with the genre of music.  Therefore one of a music lawyer's biggest challenges is to try and get band members to execute a partnership agreement (or Operating Agreement depending on their type of business entity) to define the parameters of their relationship and to consider such issues as ownership of the band name, division of royalties and dealing with leaving members. 

            It is an imperfect art.  For example, many bands in Tennessee set up limited liability companies without operating agreements only to find that the statute on limited liability companies offers very little help in dealing with disputes. 

            Sometimes even the best made arrangements can be thwarted.  I have been reading the complaint filed two weeks ago in California in the case of Kathryn Valentine v. Carlisle, Wiedlin, Caffey Schock and Gogoco Corp.  The 34‑page complaint is daunting but it basically lays out Kathy Valentine's claim that the other members of the Go‑Gos, used corporate chicanery to dilute her interest in the band's revenues after essentially filing her from their 2013 tour. 

            The complaint lays out the facts that the band had previously set up an LLC called Ladyhead, LLC which owned the trademark to their name and collected royalty income (other than other individual songwriting income) and a touring corporation called Smith-Pocket Industries, Inc. which collected touring income.  The five Go‑Gos were equal members of each entity. 

            Valentine alleges that unbeknownst to her, her band mates set up a new corporation Gogoco Corp. and licensed their trademark and  good will to it which (to quote from the complaint) "if successful would shrink Plaintiff's share of the group's revenues purportedly falling within this license from 20 percent to 2 percent, is a textbook example of breach of fiduciary duty and abuse of control and is illegal under California law and impermissible under the group's governing corporate documents".  The complaint goes on to state "This 'license' is nothing more than an attempt by a majority (of shareholders) to take corporate assets owned by all of the members of Ladyhead, LLC and the shareholders of Smith‑Pocket and assign them to an entity that these four defendants control for the sole purpose of excluding and diluting a minority shareholder and member from her ownership interest". 

            The complaint outlines causes of action for breach of fiduciary duty, breach of contract, breach of the implied covenant of good faith and fair dealing and tortious interference with contractual relations. 

            Who knows if the allegations are true - if they are it seems like an imaginative if short-sighted way to deal with a band member you don't want to work with anymore.  The lawsuit makes it seem as if the Go‑Gos had a fairly sophisticated and equitable structure to run their business and that the band members went to great lengths to not have to honor it.  All of this is sad and it kind of proves a point that I have thought about for years.  If you are a minority member in any organization - be it a rock band or an accounting firm and the other folks don't want you around anymore you're probably going to get screwed, and a lot is going to depend  on the strength of your partnership agreement and the ultimate character of your partners.  It is never pretty.  The litigants in this case had no comment because their lips were sealed.

Hubris: My Adventures in the Record Business

In 2003, after 20 years of toiling in the fields of intellectual property I got the idea that I had the record business figured out and that I could some help artists that I liked release, distribute and sell their music.  I could sense that much of this work was practical common sense stuff but it was daunting to a lot of musicians.  From my years of watching artists and record companies, I sensed that there was a tremendous amount of money being wasted.  I wanted to start a record company.

I used a free plane ticket to go visit a distributor I had a good working relationship with.  They agreed to work with me.  Then I convinced a good friend and client to let me release his next solo record.  Part of my game plan was that I only wanted to work with artists who had previously  released records and had some kind of market awareness.

My friend finished his record and  we got another friend to design a cover.  I was shocked to discover that  my first choice for a label name was already taken. I was in such a hurry that I didn’t have time to get a logo for my first release.  I reserved a web site domain name.  I hired a publicist, lined up manufacturing and (to paraphrase John Prine) put my hand on a rock and started  a record label. 

I figured that in 2003 – 2004 the concept of chasing radio was foolish so I limited my radio push to a few selected college radio stations (remember them?) and friends with internet radio shows as well as some international shows.  I had a client who ran an international export business and he helped us out with some foreign sales.  I gave my publicist a bio and a bunch of CDs and wished her  Godspeed.  My artist/friend did an in‑store at Tower Records (remember Tower?). 

We generated a bunch of orders from retail outlets like Best Buy, Tower, Amoeba, the Trans-World Stores, etc.  

So what happened?

Actually the first record was sort of successful despite the fact that the artist did not tour.  The record itself was excellent and generated some really spectacular reviews.  I was happy to latch onto many of the in‑store marketing opportunities my distributor offered.  We flirted with the beginning of digital distribution. 

Then I decided to release a second record.  This was by a lesser-known artist who had been a member of a much-loved band.  He had no solo track record but I loved his songs and he put together what I consider to be a brilliant record.  I hired a photographer friend to shoot the cover, used the same album designer and publicist as the last time, got a few orders through my distributor, a glowing article in the artist’s hometown paper and then…nothing. 

The world didn’t care. 

Again,  part of the problem was that the artist didn’t tour but I was also beginning to learn some dirty little secrets that I was not aware of previously.  For example, it’s difficult to get reviews when you don’t buy ads.  Also, I was witnessing the simultaneous obliteration of retail record stores and many of the print publications I had assumed were going to be around forever (remember No Depression?).  I also witnessed firsthand the explosion  of internet file sharing.  It was one thing to witness as a fan, another to witness as a lawyer, and quite another thing to witness as a label owner. 

So while my first record sold respectably, the second record sank without a trace.  The real end came for me when UPS showed up at my office door with 12 big boxes of CDs; the dreaded “returns”.  Most of these boxes still reside in my garage. 

The label still exists in the digital realm but my fantasies  of finding more artists, releasing cool records on vinyl, re‑issuing some of my favorite recordings were pretty much gone, at least for the present. 

What I gained from this experience is a really healthy respect for all the independent label owners out there.  Even though I thought I understood the work they do. I realize that my knowledge just scraped the surface. 

However…I still want to put out that Raging Fire compilation album…

Bob Dylan, Hootie and Derivative Works

I can admit that I am a hypocrite.  I hated that Darius Rucker song “Wagon Wheel” until I learned that Bob Dylan co-wrote it.  Actually, I still don’t like the song much but I was intrigued with the story behind the song.  According to different sources, Dylan created the work as an outtake from the recording sessions for the soundtrack to Pat Garrett and Billy the Kid in 1973.  Dylan expert Clinton Heylin titled the song as “Rock Me Mama”.

Years later, Ketch Secor (who obviously knows his Bob Dylan bootlegs) of the band Old Crow Medicine Show added new verses to Dylan’s riff.  In an amazing occurrence, Bob Dylan consented to the co-write, even with the 28 year time difference, and a song was born.

So legally what is “Wagon Wheel”?  One can’t tell from the publishing information but it meets the definition of a “derivative work” defined in the Copyright Act as “a work based upon one or more pre-existing works, such as … a musical arrangement … or any other form in which a work may be recast, transformed or adopted.”  A derivative work cannot be exploited without permission from the underlying copyright owner.  This is to be distinguished from a “joint work” which is defined as “a work prepared by two or more authors with the intention that their contributions be merged into an inseparable or interdependent parts of a unitary whole”.  This describes the typical co-writing situation where each author owns an indivisible share of the copyright.

Taking this a step further, a parody is a derivative work.  If the underlying author does not authorize the exploitation of the work, the parodist’s only defense is to argue “fair use” as Luther Campbell did in the “Pretty Woman” case, an important case with a holding that nevertheless still confuses me.

There are many different ways that songs can be created.  Think of Billy Bragg and Wilco adding music to the poems of Woody Guthrie or the recent album where  Bob Dylan, Jack White and others added music to lyrics found in one of Hank Williams’ “lost” notebooks.

Lawyers often get involved in the aftermath of these creations.  In the past I’ve had to deal with one co‑writer wanting to add a third co-writer’s contribution to a song after it was considered finished, a co‑writer of the songs in a musical who wanted to use the songs in a different setting and the thorniest issue of all, a co‑writer who wanted to “undo” a co-written composition.

All of these issues present challenges and also make the study of the different forms of collaboration and the legal repercussions endlessly fascinating.

Let us Now Praise Jeff Finlin

I have known Jeff Finlin for many years. I represented his band, the Fur Trade (our first meeting was worthy of Spinal Tap). That band morphed into The Thieves, who had a major label deal on the short lived Bug/Capitol label.  Jeff was the drummer and Gwil Owen was the principal songwriter in that band.  When the Thieves broke up, Jeff began showcasing his own song around town.  And what songs they were, Jeff had a voice and direction from his first record. It was a pleasant shock.

Jeff’s done a lot. From his first release on Pete Anderson’s Little Dog label, to releases on major British labels (like all great American artists his work is probably more popular overseas than in his own country) to a song in Cameron Crowe’s Elizabethtown. The impressive thing about Jeff is that he just keeps on doing it-putting out great record after great record. With little fanfare, he’s creating his own universe.

To my mind, his new album My Moby Dick may be his best. He’s working with producer /guitarist Joe McMahan, who has helped Jeff create a musical setting that perfectly suits the songs. It’s probably a cheap comparison but it reminds me of the kind of atmosphere that Daniel Lanois has brought to records by Dylan, Neil Young and Emmylou Harris. In a neat full circle moment, Gwil Owen designed the extraordinary collage cover art.  Jeff has also just published his first book of poetry (with some prose) called Time Less Travel. I believe the works are currently available as a set.

Jeff will be doing an in store at Gwil’s Howlin’ Books http://tripaldredgelaw.blogspot.com/2013/02/howlin-books-and-grimeys-too.htmlthis Saturday May 11 at 4:00 p.m.  To me, at least, this is special because it’s one of his first gigs after moving back to Nashville after an extended stay in Colorado. We’re lucky to have him back. Go see him. Buy a record; buy a book.