(This post was contributed by Kaylee Sauvey, a rising 3L at the Fowler School of Law and intern for Roger Quiles, Esq.)
On July 2, 2017, recording artist Dion DiMucci (“Dion”) sued Zenimax Media, Inc. for failing to obtain his consent before using his song “The Wanderer” in advertisements for Fallout 4, the newest installment in the Fallout video game franchise.
The Complaint acknowledges that a valid contract was executed between the makers of Fallout and Universal Music, who owns the song’s copyright, for the song’s use in advertisements for Fallout 4. Despite this, the following elaborate argument details why Dion believes that he was entitled to personal consultation before the song’s public use.
Dion authored “The Wanderer” for Laurie Records in 1961, which had adopted AFTRA’s National Code of Fair Practice for Phonograph Recordings (modernly “SAG-AFTRA National Code of Fair Practice for Sound Recordings,” hereinafter “Phono Code”). Dion argues that because of this, he is entitled to benefit from any collective bargaining agreements made under AFTRA; because his music was being used in a commercial advertisement, Dion alleges that the SAG-AFTRA Commercials Contract – formed for the benefit of SAG-AFTRA members to regulate compensation and working conditions on the set of a commercial – applies to him.
In the Commercials Contract, there is a provision stating that the producer of a commercial must separately negotiate with a “principal performer” before a photograph or audio recording in which he is featured can be released to the public in a commercial advertisement.
The Universal/Zenimax contract guarantees that Dion would be paid at least the minimum amount offered under an applicable collective bargaining agreement, as well as “other economic benefits having a substantially equivalent cost.” These “economic benefits,” he argues, include the ability to be consulted before his songs are used in any public way. Dion alleges that the Commercials Contract “affords the artist the right to control the use of his performance to the same extent as a copyright or trademark owner licensing his intellectual property,” and because the “goodwill attached to a recording artist’s performance is his asset,” this qualifies as an economic benefit covered under the agreement for the song’s use in Fallout 4.
In the Dion case, the existence of a valid contract with the record company for the use of “The Wanderer” is procedurally accurate. Song use requires consent from the artist’s record company and/or publisher – those that hold the copyrights to songs. Obtaining a license for use from the copyright holder is the procedurally correct method of legally using a song.
The argument that personal consultation with a recording artist is required goes against the established principles of music law. If an artist had a legal right to object to any use of their music, then the proprietary function of record companies and publishers would cease to exist. This argument – disregarding a valid contract and saying that the Commercials Contract is binding – is unique, but inaccurate.
ISSUES WITH COMMERCIALS CONTRACT/PHONO CODE
On its face, the Commercials Contract is not even applicable to a recording artist in Dion’s situation. The Contract is specifically applicable to “principal performers” operating under the jurisdiction of SAG-AFTRA. The multi-part description of “principal performers” in the body of the Contract makes reference to actors and stuntmen of all varieties, but never makes reference to recording artists. In fact, in the Complaint, Dion has included the seemingly-applicable provisions of the Contract, but has replaced the phrase “principal performer” to instead say “Plaintiff.” This certainly appears to be a technique to manipulate the court into believing the provision applies to recording artists, even though, in reality, it does not.
Like the Commercials Contract, the Phono Code does not grant a recording artist permission to control his music, but is instead used to regulate compensation by establishing a royalty rate.
PROBLEMS WITH THIS ARGUMENT
Ultimately, there are many problems with Dion’s argument.
First, the argument that the Commercials Contract and the Phono Code overwrite the valid license for the use of “The Wanderer” is unsound because this suggests that the copyrights retained by the record company and publisher are secondary to the moral right vested in a recording artist. If this is true that a recording artist could overwrite valid agreements made to use their music, what purpose would it serve to have another entity hold the copyright to a recording artist’s music? Furthermore, Dion argues that he has the right to control his music “to the same extent as a copyright or trademark owner,” which, by its very nature is absurd, as he has surrendered the rights to his music to other entities that thereafter dictate how the music is used. Ultimately, the end result of this argument is that anyone following the proper procedure and obtaining a valid license for song use could still potentially face litigation by a recording artist.
Secondly, the applicability of the Commercials Contract to “principal performers” at no point specifically includes recording artists. However, the Complaint suggests that the relevant provisions of the Contract are applicable to “Plaintiff,” a recording artist, even though the original provision suggests otherwise.
Third, the attempt to label personal negotiation with an artist as an “economic benefit” is a creative argument at best. The argument is problematic in the sense that, while true that the “goodwill” attached to an artist’s image is vital, it is not by default an “economic benefit” that would be owed to him under a collective bargaining agreement.
Finally, both the Commercials Contract and the Phono Code are procedural agreements created to ensure fair treatment under a union standard. They regulate compensation and working conditions for those covered by SAG-AFTRA. They are not meant to ensure that a recording artist can bypass the rights of a copyright holder with respect to creative content.
If Dion’s argument is accepted by the court, it has the potential to change the way the world licenses music for videogame and advertisement use, as well as the function of music entities and the rights they hold to a recording artist’s music. It may invalidate otherwise valid licenses and result in a wave of litigation by disgruntled artists seeking to control their music even without possessing a valid copyright to do so. It seems unlikely that the court will accept Dion’s argument, but we will have to wait for a resolution to see what the court holds.
(This post was contributed by Kaylee Sauvey, a rising 3L at the Fowler School of Law and intern for Roger Quiles, Esq.)
Enforcement of copyright law is a very dense and subjective process, as seen in the Blizzard/Valve v. Lilith/uCool case, which is rooted in ownership of rights to the mod of Warcraft III called “Defense of the Ancients,” (“DotA”). In brief, teenage developer Eul created this mod and may have released his ownership of it on an online forum. He later sold his rights to Valve. DotA appeared to have been the basis several other popular mods, the rights of which were also sold to Valve and Blizzard by their “owners,” and eventually, two unlicensed smartphone apps were released by Lilith and uCool. One of the main issues in this case is whether the rights acquired by Valve and Blizzard are valid if the release of ownership was also valid.
Relevant Copyright Law
A copyright is created at the moment someone fixes something creative in tangible form. The second you take that picture or write down those song lyrics, you have a valid copyright. For example, as soon as you take a photo, you have an exclusive right to Photoshop, publish, sell copies of it, etc. Let’s say you Photoshop it and then save a copy. You have just created a derivative work. Someone sees your original and decides to Photoshop it and then publishes it as their own. While this is also a derivative work, it may be an infringement on your copyright because you hold the exclusive right to use your original. If, however, you no longer wanted to own the rights to your photo, you could abandon the copyright and anyone could use it without asking your permission; this requires “some overt act indicating an intention to abandon.”
Now let’s take a look at the Blizzard case.
2002: Blizzard releases “Warcraft III: Reign of Chaos,” which included the development program called “World Editor” for creating settings and other content to modify the game, but restricted use to non-commercial uses in its End User License Agreement (“EULA”). The EULA did not ensure that the rights to all intellectual property created using the World Editor would be retained by Blizzard. Eul developed DotA using the World Editor and then locked the mod to retain creative control.
2003: DotA: Allstars is created by a third party and the mod is not locked. Guinsoo builds off of Allstars and locks the mod.
2004: On September 23, Eul posts the following message on a gaming community forum:
“from this point forward, DotA is now open source. Whoever wishes to release a version of DotA may without my consent, I just ask for a nod in the credits to your map.”
2005: Guinsoo quits and Icefrog is enlisted to work on DotA.
2006: Icefrog is hired by S2 Games as a designer for “Heroes of Newerth.” Initially, Icefrog retains his intellectual property rights to his contributions to Heroes, but S2 later changes his contract to retain all rights.
2010: Icefrog and Eul sell their rights in DotA and Allstars to Valve. Guinsoo sells his rights in DotA and Allstars to Riot Games, which then sells them to Blizzard in 2011.
2013: Valve releases Dota 2.
2014: Lilith releases “DotA Legends” an app based on DotA. Six months later, uCool releases “Heroes Charge” – a similar app.
2015: Blizzard and Valve sue uCool and Lilith for copyright infringement.
Commercial Use? Open Source? Who Owns the Rights?
The second issue is whether Eul’s forum post was an actual abandonment of any rights to DotA or if the addition of his request to credit him would be considered a retention of some rights. If DotA is actually open source material, the case is strongly in favor of Lilith and uCool. If, however, Eul did retain some rights, the case is stronger for Eul that he had some rights to sell to Valve and Valve may actually own the rights to DotA.
What This Means for Game Developers
This problem could have been solved in favor of Blizzard at the outset if they had included a provision in their EULA for the World Editor in which they retained the intellectual property rights to any content created using the World Editor. In the aftermath of this lawsuit, programs like the World Editor, which may produce similar user-generated content, will likely include a provision retaining these rights for the developing company. This would make any content created by any user the automatic intellectual property of the development company and eliminate any legitimate, subsequent claims of authorship by other parties.
If the jury finds that Eul’s “open source” statement is actually an effective abandonment of his rights, despite his request for credit, then independent developers such as Eul would be encouraged to keep their mods locked and actively maintain them to strengthen their claim of ownership. Any permission given openly for use or distribution would also be deemed an abandonment of ownership. This may result in more mods being sold to other users for a price instead of encouraging free use and distribution.
(Photo used under creative commons by David Wees)
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