Famous Last Words November 2011

Quick Links: 

DISCLAIMER: This column is intended for general educational and entertainment purposes and is not legal advice. Every situation is unique. Anyone entering into a contract should have a lawyer who can provide counsel.

Jim Charne, Attorney at Law

November, 2011
Famous Last Words
By Jim Charne, Attorney at Law

Both Worked on the Music – One Exploited It – the Other Wants to Sue!

Dear Jim:

I feel like a huge idiot.

When I got out of school a buddy and me wrote several songs, which never amounted to anything.  The whole thing was pretty casual – friend to friend.

A year or so ago, after he had moved on, I used the songs in the soundtrack in a social game I put together that has actually been pretty popular!  My friend even got credit in the game as a co-composer.

But my “friend” – who I have not seen in at least a year, hired a nasty fire-breathing lawyer and is threatening to sue me and the publisher for huge piles of money – claiming that the game publisher and I have infringed on his rights big time!  They see huge dollar signs dancing before their eyes.

I have to indemnify the publisher against any claims from my game.  My ex-friend has offered to “let me off the hook” by buying out his rights for lesser gobs of money.

I know you always say “get it on paper.”  Well, I didn’t.  I feel like an idiot.  This guy’s not my friend.

Is there any help for me?

-- Can’t Sleep

Dear Can’t Sleep:

Actually there is help for you.

Since you and your ex-friend are co-composers of the songs, and there is no agreement as to who owns the copyrights, under U.S. copyright law, you are co-owners of the works.

This springs from the most fundamental principal of United States copyright law: Copyright vests in the author of a work from the moment it is fixed in a tangible form.

As co-authors, without any written agreement to the contrary, or an agreement transferring rights to some third party, you are co-owners. 

As co-owners, you each have unrestricted rights to exercise all the rights of a copyright owner.  That power comes with the requirement that each must share the bounty of exploitation with the co-owner.

The fact that you are a co-owner may very well save you here.  If your ex-friend were the sole composer, you’d probably be an infringer.  But unless ownership or some exclusive rights or control has been granted to a third party, you can’t really infringe on your own copyright!

Your ex-friend’s lawyer should brush-up on copyright law.

And you should dig up your old music files or notes to establish clearly that you both composed or produced those songs.  Put them someplace safe.

Now your job will be to split with the co-owner any income derived from exploitation of the songs in the game. 

I suggest doing so after your ex-friend signs a release agreeing not to sue based on those songs.

-----

Jim Charne practices law in Santa Monica, CA (www.charnelaw.com) where he represents developers, designers, composers and other clients in the games industry.  Jim has been a frequent speaker at GDC and Practicing Law Institute games industry programs, is active in IGDA from whom he received a coveted “MVP” Award at GDC 2006, and is a member of the Advisory Board of G.A.N.G.  On October 19, 2011, Jim will chair a one day program in San Francisco, offered by the Practicing Law Institute, titled: “Representing the Games Industry Client 2011.  Jim served as President of the Academy of Interactive Arts and Sciences from 1998 to 2001.

Is there language in your contract that has you scratching your head?  Found something confusing or worse?  Send it to “Famous Last Words” for developer-oriented analysis.

Famous Last Words is intended for general educational and entertainment purposes and is not legal advice.  Every situation and circumstance is unique.  Anyone entering into a software-related contract should have an experienced lawyer who can provide counsel throughout the process.

©2011 Jim Charne.  All rights reserved.