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Y'all Street Law Podcast is your home of everything Texas Business Law!
No. I've not always been a trademark and entertainment attorney, but I love what I do. And I've kind of fallen into this world, and I would not I would not go back.
Speaker 1:The Scale LLP Y'all Street Law podcast is intended to be your go to podcast for legal and business developments in the state of Texas. This episode of Y'all Street Law Podcast is brought to you by Scale LLP, the agile law firm built for modern clients and entrepreneurial attorneys. Learn more at scalefirm.com.
Brian Elliot:Hi, everybody. Welcome back to Yall Street Law podcast. I'm your host today, Brian Elliott at Scale LLP. And today, we're gonna kick off a new mini series that we call meet team Texas. Scale has now 10 attorneys in Texas, and we're we had already featured on the podcast Shannon Strahan in Houston, who talked with us about her practice in NIL.
Brian Elliot:And, today, we're excited to, bring my colleague Charles Wallace into the studio. Charles is a lawyer who straddles the worlds of entertainment law, intellectual property law, and has a very diverse and eclectic background. With that I'd like to welcome Charles. Tell us a little bit about your practice.
Charles Wallace:Thanks so much, Brian. Definitely great to be here today. Thank you so much for having me on. As you mentioned, I am an entertainment attorney as well as a trademark and branding attorney. I've been here with Scale, for a couple years now.
Charles Wallace:We merged from our previous firm, Creedon, LLC. I came over with James Creedon and Shannon Strahan, two excellent trademark attorneys, in their own rights as well. But it's great to be here. Really, really excited to kind of dive into some of these topics here today on the world of entertainment branding and the law.
Brian Elliot:Well, Charles, why don't we start at the top and tell us how interested in this area? Have you always been an entertainment lawyer? Give us the background.
Charles Wallace:I have not always been an entertainment lawyer, no. In fact I did not always want to go into the world of the law. I grew up in the arts. My parents actually met in theater. I met my current wife in theater.
Charles Wallace:I have always just wanted to eat, sleep, and breathe the arts and theater. And I've just I've I've really, really needed that output in my life as an entertainer and an artist myself. And, now I kind of fell into the world of the law, through kind of a a a funny story. But, yeah, I I've been acting in theater production since I was seven. I started a band when I was 14.
Charles Wallace:I was the front man and guitarist for a few different, bands actually. I played gigs around the DFW area including Deep Ellum, some, clubs that are still there, some that are not. Some of you listening may know the Curtain Club, Club Clearview, Blind Lemon, The Door. On the other side of things I also handle clients trademark needs, their branding needs ranging from initial brand development and strategy, application filing, and also follow on enforcement through the Trademark Trial and Appeal Board and through litigation and federal court. So my practice is, pretty broad, but at the same time, focused on the worlds of entertainment and branding specifically.
Charles Wallace:So if we have time today, would like to kind of go through all of those things ranging from common issues that come up with my music and filmmaking and art clients. And if we have time also to jump into an introduction to trademarks and branding as well. So that's my rambling way of answering a very simple question. No. I've not always been a trademark and entertainment attorney but I love what I do and I've kind of fallen into this world and I would not go back.
Brian Elliot:It's you bring a lot of credibility to your clients having been there and really participated in. I I heard you list off nearly every aspect of the arts. Yeah. And that's it's quite impressive. And and I'm sure your clients are gonna get a lot of value out of it.
Brian Elliot:Talk to me a little bit about a little bit more about your clients. Are you are you servicing mostly Texas clients? You're here in the Dallas Fort Worth area. Do you have national clients, international? What's the makeup?
Charles Wallace:The thing about being a branding and trademark attorney is just the nature of the business is you're going to have clients from all over the world. And I do. I've got clients that are local and they find me because I am local. And that stems primarily from my practice at Creedon plc prior to coming here. We were very, very active in the local population.
Charles Wallace:We would make sure that we were out there for community events as much as possible, making sure that we were were were showing our faces and saying, look, we're wanting to help local businesses. So definitely, we've there's a lot of word-of-mouth advertising. So yes I've got a lot of local clients and I found that my clients really do appreciate that.
Brian Elliot:That's great. What are what are some of the common issues that come up that you help your clients with on a daily basis?
Charles Wallace:Absolutely. So first thing is obviously ownership. So when it comes to any type of work that someone has created they want to own it, right? They want to make sure that they have full rein to distribute, to produce, to make derivative works, sequels, just to really do anything to monetize. And many times people don't truly understand when they work with someone or when they have a handshake arrangement or or whatever who actually owns the work.
Charles Wallace:And I will say that is probably the number one issue that comes up, most often with my clients is, hey, I have this thing. I wanna do something with it. Tell me how. And I have to say, well, hang on. Let's roll it back a bit.
Charles Wallace:How did you create it? Who all was involved? Was anything signed? We have to make sure we ask those fundamental questions first because oftentimes clients don't necessarily own what they think they own and it's really on me to make sure, hey, look, Let's make sure we button some of this up first. Doesn't matter if you created something with a very close friend, even with a family member, even with maybe an employee.
Charles Wallace:If this wasn't created within the scope of the employment or, you know if there wasn't something actually written out ahead of time. We need to make sure we untangle this first before we move forward with the actual thing, that it is that you're trying to do. Another issue that's pretty prevalent is can I use someone else's work? I may not have any hand in creating something, but can I use this other work? I may not have the money to potentially license this work or, you know, I'm not gonna reach out directly to this very prominent public figure and try to get a license agreement.
Charles Wallace:Where do I even start with that? And there are ways of getting around that. So I would like to briefly touch on fair use. I know everyone's heard of fair use, but it really is a very nuanced area of the law that I think a lot of people get wrong. So I'd like to maybe clean up and clear up some of the potential pitfalls that a lot of people fall into.
Charles Wallace:So that's definitely a very, very huge part of my practice as well as an entertainment attorney. And then next when it comes to music, music is a very broad huge area of the law. It is a language that we all speak and something that we can all agree with, something that moves us all, whether you're a musician or a filmmaker or a producer or performance artist, you're gonna be using music unless you're a mime. Unless you're a mime. Well, even then even then, there there's still music backing you up.
Charles Wallace:So I would like to go into that as well. Common issues that come up with my music and filmmaking clients in particular such as how do you get permission to play a song, whether you're gonna be publicly performing it, whether you're gonna be syncing it with a film, whether you're gonna be distributing materials later on that incorporate some of that music. That's kind of what I would like to look at.
Brian Elliot:Yeah so Charles why don't you do that for us like why don't we walk through maybe you can give us like a real life example something that comes up frequently and tell us some of the things that you know the considerations that your clients are going to have during that process and how you would manage them through that.
Charles Wallace:Absolutely. So let's hop into it and first I think probably just as a foundation it's probably really important for us to discuss first what is a copyright. A lot of people throw the terms around and they say, you know, can I trademark my work? Can you know, can I copyright my name? People get these mixed up, get these various parts of IP mixed up.
Charles Wallace:So first, for copyright protection, a copyright exists the moment you create something. It's copyright protection exists for creative works that are defined as original works of authorship. What does that mean? That's really something that is a % yours, something that you have contributed authorship to. You're an author to something that is creative, not necessarily something that is helpful or utilitarian.
Charles Wallace:That's that's more in the realm of patent law, but something that is creative, something that is visually or aurally pleasing, creative, artistic. And the second part is it has to be fixed in a tangible medium. And all that really means is it exists. It's something that is more than transitory. You're able to perceive it.
Charles Wallace:You're able to view it, and you're able to consume it. Something that you are creating that immediately washes away. Like if you make a design on the beach, some kind of beautiful artistic design, as soon as it gets washed away, it wouldn't really be considered fixed. So that's not something that you could get copyright protection in. But if I get a sheet of paper out and I draw a picture, I immediately have copyright protection in that work.
Charles Wallace:Same if I press a record button on my phone and I record anything that could be considered creative, not just me singing a single note, that would be creative as well good for copyright protection.
Brian Elliot:And then I think we're gonna get into this right but you know a lot of creative people work with others and work on teams so you have lots of people you know groups working together and create the creative process is often not just you know one person working alone. How do you talk to your clients about the the ownership issues as it relates to you know a group process of creating say a song or a screenplay or something like that?
Charles Wallace:Yeah, absolutely. It happens all the time. A lot of the time when we create it's in connection with something else with a greater project with more individuals. It's collaboration and that happens a lot. I can't tell you how oftentimes I've got clients coming in saying, I created this with this one other person.
Charles Wallace:I want to get protection in it, put my name in there, and we have to just say, well, hang on. What did the other person actually contribute? That's called a joint work under the Copyright Act. And most of the time, if it truly is a joint work where more than one person actively contributed to the creative original elements of what we're trying to get protection in, then they both have rights to that work, your your client and the additional party. And so with the joint work, it it is literally owned by both individuals.
Charles Wallace:Well, I mean, we'll say we'll we'll use an example of just two for for going into what this means. So let's say two people create a work. It's owned by both these people. Both people can freely exploit the work. They can make money from the work without the consent of any of the other joint authors.
Charles Wallace:They can transfer their entire ownership interest to another person without the other person's consent. So imagine creating something with someone else. They can actually transfer their fractional interest in that work to someone else. And all of a sudden you're a joint author with someone that maybe you've never even met before. And although you can exploit the work without the other person's consent, you still have to account to the other joint authors.
Charles Wallace:So there's still a follow-up accounting that you have to do. Hey, look, we made this much money. We're going to we're gonna subtract our our expenses and and other deductions, but here's the leftover net and now we have to distribute this amongst all the joint authors equally. Said another way, in a nutshell, it's a little bit of a mess and it's a lot to untangle. So typically what we do when a client comes in and they do have a joint work is we say, look, let's, let's let's turn around and see if we can get your other joint author to either disclaim their ownership or assign their ownership to you.
Charles Wallace:And if they won't, then we have to work out how we're going to get this thing filed because you can file with joint authors with the copyright office. It just becomes a little bit of a mess when it comes to enforcement and, like I said before, accounting for any profits that you're making through either exploitation or through enforcement. So something that we often provide for our clients in an effort to make it very very abundantly clear who owns what is we provide work made for hire agreements and a lot of people have probably heard this language before but what a lot of people don't understand is work made for hire is a term of art that appears in the copyright act. So a work made for hire refers to specifically to a situation in US copyright law where the employer or the commissioning party, you know, if there's not an employee and employer relationship, is considered the author of the creative work. So let's say, you know, our I wanna use our our law firm as a as an example, but let's say an employer commissions a work that an employee creates on behalf of the employer.
Charles Wallace:The employer will be considered the author, not just the owner, but the author of the work under work made for hire law because that employee is creating the work under their employment with that employer. And I think probably a good example in the entertainment world is things that I have created, designs that I've created while working in theater, know, set designs, designs on or for costumes. Those those belong to the employer at the moment they're created. But what happens if you're not an employee? And in fact, I think theater is a great example.
Charles Wallace:In theater, most of the time you are getting independent contractors. You're getting non employees to come in and create things for you. In that situation, normally, absent a written agreement, because they're not an actual employee, what they create would belong to them. They would be granting an implied license maybe for the employer to to well well, for the for the theater to use the work, but they would actually own it unless a work made for hire agreement exists. And so typically what we do is we create these work made for hire agreements that literally say the magic words.
Charles Wallace:We call them the magic words. This work is going to be considered a work made for hire under section one zero one of the copyright act and that really just makes it instantly this work will belong to the commissioning party and be considered and that commissioning party is also going to be considered the author. So it's pretty nuanced. It's pretty specific but that makes it very very clean-cut who owns what notwithstanding that you weren't the one actually creating it the actual artist was but you are the author. You're considered the author and the owner.
Charles Wallace:And one other just kind of quick note I'll add on to that is assignments can be retroactive. So if there happens to be a work that maybe the parties that involved were thinking, this, you know, party b is going to be the owner but party a is going to create it, but there's no actual work made for hire agreement or assignment in place, you can create a retroactive copyright assignment and that would be considered good enough as long as the parties will agree in a written instrument, in a contract that they at the time that the work was created, they meant for that work to be assigned over to the other party. That's enough.
Speaker 1:This podcast is brought to you by Scale LLP, a distributed national law firm that's been called the wave of the future by Reuters. Scale is a revolutionary distributed law firm that offers a fresh alternative to traditional practices. By leveraging cutting edge technology and a flexible structure, Scale empowers attorneys with a more satisfying and lucrative career and delivers efficient, connected legal solutions for clients. To keep up with how Scale LLP supports clients with its tech driven approach, check out the website linked in our podcast bio.
Brian Elliot:Let me ask you this, Charles. What so we're talking about in the employment context. Right? And Sure. What are what are the the contours of the requirement of the commission?
Brian Elliot:Right? So does it have to be within somebody's scope of work to do it? Or let's say I'm a a graphic artist working for a company and I've got a doodle pad on the side and I'm making my own creations that have nothing at all to do with my my day to day work subjects. Would those also be automatically subject to a work for hire agreement?
Charles Wallace:As long as you are creating it for the employer within your normal scope of employment that will be automatic. The work will automatically go over to your employer. But if you're just doodling, if this doesn't have anything to do with your work, say that you're working for a for a branding agency, even if you're a script writer for a branding agency. If on the side you're writing a script for your own film that you would like to produce on your own, it has nothing to do with the branding agency, you would own that work. Notwithstanding you might be on the clock and maybe you're not supposed to be doing your own side work while while at work, you would own that work because it is not commissioned by your employer and it is not created within the scope of your employment.
Charles Wallace:It's outside the scope and that's a totally separate issue. That's an employment issue but you would actually own the the IP, the copyright in that work. So yeah. An interesting interesting question.
Brian Elliot:Yeah. I mean, look, where where can this take us? Right? In terms of like, you have any any kind of, you know, war stories you wanna share about, you know, lessons learned in this area?
Charles Wallace:Yes. I do. Actually, I've I've found that a lot of clients do like to file their own applications, which is great. You know, the the interface is very user friendly, especially lately the copyright office has rolled out a brand new system. The the interface is is is great.
Charles Wallace:It is very user friendly but there are there are a lot of specific nuances that you need to know about because if you file an application in the incorrect way, if you if you check a, you know, an incorrect radio button or if you make a certain representation about is this a work made for hire, is this person an author, you could be making a misrepresentation that could invalidate your copyright application. And a lot of people don't really understand that. And that's why it's important to get an attorney involved, someone who does kind of understand the statutory language and what does it mean?
Brian Elliot:Well, Charles, you touched on this before. I do wanna get to this. We talked about this concept of fair use. And I think that this is such a big area. We do, it comes up all the time.
Brian Elliot:What can I use? How can I use it? Kind of give us a framework that our clients can start to think about fair use and know walk us through how you would approach it.
Charles Wallace:Yeah absolutely. So departing from the I own this, how can I use it, how can I make money from this? The other question is can I use this other thing? Maybe something that I don't own and you know the answer is always maybe. It really just depends on context.
Charles Wallace:So if someone is not able to get a license or permission from the copyright owner whether this is a friend or family member or a public figure even we got to do what's called a fair use analysis. And so I want to be very upfront in saying, look, we don't even get to the fair use analysis until you are infringing. What it's literally saying is, is your infringement fair? Is it a fair use under common law and under the Copyright Act? And so there's a number of factors that we have to look at.
Charles Wallace:There's four of them and they are the purpose and character of the use. So are you going to be using this creative work in an educational context or in a commercial context? Are you going to be making money from it? This is what insulates a lot of educational institutions like schools to be able to play certain, you know, portions of films or music or show pieces of art in an educational context, they are insulated because the purpose and character of that use is primarily educational. The next thing you want to look at is number two, the nature of the work, whether it's factual or whether it's creative.
Charles Wallace:So if you are reciting history or something that everyone knows, facts, that generally is not protected because it's not creative. It's like what we were talking before. The copyright act protects original works of authorship that are creative. Facts are not authored, they're not creative. Therefore if you are going to be using something that has facts within it, if you use those facts that's absolutely fine.
Brian Elliot:I gotta say that there are some people today who might think that facts can be creative and we can do lots of things with facts but I digress.
Charles Wallace:Without without without getting too deep into that, you are absolutely correct. I am of the I am I'm of the legal mindset that things are black and white facts are facts but yeah you bring up an interesting point and that's hey that's why attorneys exist right because there's always got to be a gray area. Getting back into it number three the third element is just the amount and part of the work used in relation to the whole and what that basically means is if you are using just a very small portion of the work but if it happens to be the part of the work that makes it so unique and so just popular and so you know have that commercial value to it. If you use that same part likely not a fair use. And in another way even if something doesn't maybe have that that little gem if it's as a whole creative and you're using maybe 80% of it or 85% of it, you're using a huge chunk of that creative work, probably not a fair use.
Charles Wallace:But if you're using a very small portion, maybe a small, you know, three to five second snippet of a song that you're trying to make a point, that's probably fair. And then the next is does it have any sort of effect on the market for the original? So are you going to create something that is going to negatively affect that owner's ability to commercialize the original work that you are copying? Clearly if you're going to be negatively affecting someone's ability to make money they're going to come after you. It's not going to be considered fair.
Charles Wallace:So those are typically the four things that we look at really it's laid out in the court system. You really need to make sure that you have an attorney take a look at your specific use. Is there precedent to show how these sorts of things have been used in the past? Has that been considered fair or has that been considered an infringement? Well, it's always an infringement, but an infringement that is not considered fair.
Charles Wallace:There's it's really just dependent on the very, very specific situation. You have to balance all of these elements. You know, no no no single element is dispositive here. So it's always very fact specific.
Brian Elliot:And in this case, the way you're speaking of it, this is a retroactive application of a test to something that's already happened. The infringement in this case has already happened. Or are you also doing this proactively looking at what art could we use in this circumstance?
Charles Wallace:It's really dependent on what the client needs. Obviously, the client comes to us and they say, have already used this. What are my rights? It's our job to find a creative way to prove that their use is fair, and that's fine. I mean, that that happens all the time.
Charles Wallace:But I also have clients coming to me all the time saying, want to use this. Is this considered fair? And my question always is, well let's see if we can get a license. If that's not possible or if that's too cost prohibitive, let's do this fair use analysis as well. So you don't necessarily have to do the fair use analysis after you have already used the work.
Charles Wallace:Really it's just we can do that as a forecast as well.
Brian Elliot:It seems like it's ultimately a risk analysis right? Sure. That creatives have to go through and understand where the factors are that they can reasonably rely on based on what's what the courts how the courts come out on certain issues.
Charles Wallace:Absolutely.
Brian Elliot:And they need a good team behind them to do that. I think it's fascinating. Why don't you give us an idea of some common issues that come up regularly in your practice?
Charles Wallace:Sure. So just beyond clients coming to me and saying do I own this or how can I own this or how can I use something that I don't own? Those are always very very interesting questions but I found that music comes up a lot. Like a lot. Like like I said earlier in in this discussion, many artists and many creative types deal in the world of music at some point because it's a language that we all speak.
Charles Wallace:It's something that we can all feel and something that we can all relate to no matter where you are. Transcends all cultures, you know, no matter where you are geographically, we all get it. Music is super important to the the to the world of art.
Brian Elliot:Charles, this has been a really fascinating discussion. It's so wonderful to hear somebody who's so enthusiastic about not only the practice of law but the industry that they support. Right? So it's a pleasure to have you with us on TEAM TEXAS And we will have you back on future episodes to dive deep on some of these nuanced areas that we haven't had a chance to even touch on yet. Right?
Brian Elliot:But there's so much to cover and I think that we certainly look forward to that. Do you have any sort of parting thoughts or words of wisdom that our audience can take away?
Charles Wallace:I will just echo that every business and every person with a great idea needs a trademark. Look, you all have great ideas out there. Your your your work is always your baby. You always wanna make sure that you protect it, and and that's that's all well and good. But, you know, you have to be thinking about yourself as well, your personal brand, how you're bringing it to market.
Charles Wallace:And the best way of doing that is to contact an attorney skilled in this area and you know I'm always happy to talk with off the record just for you know just to kind of get an idea of what it is that they that they like and what it is that they love and what what it is that fuels them. Honestly yeah I mean you said it right. I love my area of work and it's really the clients that keep me going.
Brian Elliot:Thanks so much for sharing some time and some thoughts with us. It's been really really valuable and we'll we'll talk again soon.
Charles Wallace:Thanks for having me today, Brian.
Speaker 1:Thanks for tuning in to the Scale LLP Y'all Street Law podcast. We hope you enjoyed today's episode and found it valuable. If you like what you heard, don't forget to subscribe and leave us a review. For more insights and updates, visit www.scalefirm.com or follow us on LinkedIn. Until next time, we'll see y'all later.