MEMBERS OF THE MUSIC DUO THE NEPTUNES INVOLVED IN LEGAL DISPUTE OVER “THE NEPTUNES” TRADE MARK

Another dispute involving the rights to a band/group name has been reported. This time, the dispute involves the well-known songwriting and production duo, The Neptunes. The duo is made up of childhood friends Pharrell Williams and Chad Hugo.  The Neptunes were hit-making machines in the late ‘90s and the 2000s.  The duo wrote and produced for global superstars such as Usher, Justin Timberlake, Jay Z, Britney Spears, and Gwen Stefani to name a few.  In 2022, the Neptunes were inducted into the Songwriters All of Fame. The dispute arose when Williams’ company, PW IP Holdings, lodged applications for the mark, “The Neptunes” in various classes of goods and/services without listing Hugo as a co-owner. Hugo claims that Williams and his company “fraudulently” seek control over the “The Neptunes” trade mark. A trade mark is a word, phrase, or device which distinguishes the goods and/or services of one company/person from those of another. The owner of a trade mark has the exclusive right to use the mark and prevent others from using an identical or confusingly mark in the course of trade. It does not appear that Williams disputes Hugo’s co-ownership as he claims to have contacted Hugo’s team at some stage to formalise the co-ownership. Hugo contends that Williams and his team were insisting on “onerous business terms” that would deprive Hugo of “proper control and compensation.” In the South African context, section 10 (3) of the Trade Marks Act 194 of 1993, states that a bona fide proprietor of a trade mark is a person who has originated, acquired, or adopted the mark and has used it or proposes to use it in relation to the relevant goods and/or services.  Applying this section in the context of a musical act that consists of more than one member is not always simple given the erratic nature of group dynamics. To avoid chaos, artists are encouraged, from the onset, to enter into a comprehensive band agreement that addresses, amongst other things, trade mark ownership portions, the use of the band name by former members, administration, licensing, and compensation.  In his book, ‘South African Music Law, Contracts & Business’ Advocate Nick Matzukis likens a band agreement to an antenuptial agreement. This is a very useful way to view it and yes, it is absolutely THAT serious. We’re watching this matter with keen interest although it appears ripe for settlement.

SAMPRA AND RESTAURANT GROUP REACH SETTLEMENT AFTER CRIMINAL CASE

On 29 February 2024, the South African Music Performance Rights Association (SAMPRA) announced that it laid criminal charges against the restaurant group Life & Brand Portfolio. Life & Brand Portfolio is the parent company of popular restaurants La Parada, Tiger’s Milk and Lucky Fish & Chips amongst others. SAMPRA is a Collective Management Organisation (CMO) that administers Needletime Rights (also known as Neighbouring Rights) on behalf of its members, namely performers and record labels. Needletime is the royalty that is due when a sound recording is performed or broadcast in public. A good example of a public performance or broadcast of a sound recording is when a song is played on radio, retail stores, clubs, pubs and restaurants. It’s important to remember that there are two copyrights in a recorded song audio, namely the copyright in the sound recording and the copyright in the composition. SAMPRA is only concerned with the public performance of the sound recording. SAMPRA should not be confused with the Southern African Music Rights Organisation (SAMRO), which is concerned with the public performance of the composition. SAMPRA licenses users of music, including broadcasters and venues that play sound recordings in public. SAMPRA then pays the licence fees over to their members in the form of royalties. According to SAMPRA, they laid criminal charges against Life & Brand Portfolio after the restaurant group failed to pay the applicable licence fees. Fortunately, on 7 March 2024, SAMPRA announced that they had reached a settlement with Life & Brand Portfolio. The restaurant group finally committed to signing an agreement with SAMPRA and paying the applicable licence fees. This is a speedy win for rightsholders. While the Copyright Act 98 of 1978 and the Performers Protection Act 11 of 1967 both make provision for criminal penalties for certain types of infringement, it would have been interesting to see which sections, in particular, SAMPRA relied upon to lay criminal charges. This should serve as a stark reminder to owners of establishments that make use of music. Unless you are using royalty-free music, copyright subsists in the music played at your establishment. Familiarise yourself with all the relevant rightsholders and the CMOs represented by the said rightsholders, ensure that you are licensed with them and make provision for the applicable fees in your budget.

RE-RECORDING RESTRICTIONS & THEIR IMPACT ON LABELS AND ARTISTS

Taylor Swift’s re-recorded album “1989 (Taylor’s Version)” has reportedly sold approximately 1.5 million units in the United States alone within the first week of its release, making it the biggest opening week for any album released this year. Up until its release, the biggest first-week sales for 2023 belonged to the artist, Drake with 402,000 units sold with his album “For All the Dogs”. Taylor Swift almost tripled Drake’s first-week numbers with an album that was first released a decade ago.  This is a remarkable feat. You might ask why Taylor had to go through the trouble and expense of re-recording her albums. The simple answer is that she does not own the rights to the original recordings, the rights were vested in the first record label she was signed to, namely Big Machine Records. The label sold the rights to music entrepreneur Scooter Braun’s company Ithaca Holdings, which subsequently sold the rights to the investment company, Shamrock Capital. By way of background, every recorded song is made up of mainly two copyrights, namely the copyright in the composition (lyrics, melody, and/or structure of the song) and the copyright in the sound recording, which is the original recording of the song (also known as the “master”).  The copyright in the composition is owned by songwriters and the copyright in the master is usually owned by the person or entity that pays for the making of the master, typically the record label.  You might wonder whether Taylor’s new recordings infringe on any rights held by Shamrock Capital.  They do not. Copyright law allows a person who creates a new master to own the copyright in the new master created.    Given the considerable risk that labels take to invest in the recording and promotion of artists, it would not make business sense (to labels) for artists to make new recordings of the same songs the labels invested in as it could create confusion in the market and devalue the original recordings. To protect their investment, labels made provision for a re-recording restriction clause in recording contracts. The clause restricts artists from making new recordings of the songs delivered under the contract for a certain amount of time after the release of the songs or a certain number of years after the expiry of the contract. Taylor waited for the recording restrictions in her contract to expire and proceeded to re-record her previous albums, making her the owner of new masters. At the same time, Shamrock retains ownership of the original masters.  Both recordings exist on music platforms with the same titles, the slight difference being Taylor’s new recordings are aptly titled “Taylor’s Version”. In 2022, the re-recorded version of her album “Fearless” received 401.2 million streams, while the original version received 257 million streams. In the same year, the re-recorded version of the album “Red” was streamed 961.6 million times while the original was streamed 254.7 million times. As an artist who writes the majority of her music, Taylor still owns the copyright in the underlying compositions in the original recordings owned by Shamrock. Therefore, anyone who wishes to license the original recordings for television, film, or advertisements from Shamrock would still need Taylor to clear the use of the compositions.  Taylor is in a position to approve the licensing of her compositions ONLY when her new masters are used, effectively cutting out Shamrock from licensing revenue. While the re-recording of music is hardly a new phenomenon, Taylor Swift’s success with re-recorded albums serves as a seminal moment. We can expect the re-recording restriction clause to be the subject of drawn-out negotiations between artists and labels in the near future.

WHO OWNS THE TRADE MARK TO A BAND NAME?

While copyright often takes center stage in discussions about recording artists, trade marks tend to be overlooked.  Outside of recorded music, trade marks can be very lucrative assets for recording artists. WHAT IS A TRADE MARK? A trade mark is a word, phrase, or device which distinguishes the goods and/or services of one company/person from those of another. The owner of a trade mark has the exclusive right to use the mark and prevent others from using an identical or confusingly mark in the course of trade. Accordingly, the name of a band may qualify as a trade mark.   OWNERSHIP Generally, record labels are not interested in owning an artist’s name or stage name (there are some draconian exceptions, of course). Usually, a record label will ask for a non-exclusive licence to use the name for the purpose of promoting the band and the music recorded by the band.  As such, the question of ownership of the band name is often left to the band members to determine. Will the founding members own the trade mark or will ownership vest in all the members?  Will the members own the name in equal shares? In the absence of a written agreement, the question can be determined in the following ways: Applying the above principles to a band is not always simple when one considers the changes that often occur within a band’s personnel. THE ISLEY BROTHERS TRADE MARK DISPUTE Does a member who has stopped performing with the band still have an ownership interest in the band name?  The veteran R&B/ Soul band, The Isley Brothers is currently contending with this very issue in a pending court dispute. The lead member, Ronald Isley successfully applied for the registration of the trade mark “The Isley Brothers” as the sole owner. The application proceeded to registration in August 2022, much to the disapproval of his former bandmate and brother, Rudolph Isley. Rudolph is asking the court to declare that the trade mark “Isley Brothers” is jointly owned by the brothers in equal shares.  In addition, Rudolph is asking the court for a share of all proceeds received by Ronald in connection with the trade mark. It is worth noting that Rudolph stopped performing with the band in 1989. This is one of many disputes of this nature. It is also very common for band members to form factions that perform separately using the same band name or a derivative thereof. This has happened to the likes of UB40, and the Commodores, amongst many others.  From a South African perspective, I was watching with keen interest to see whether the dispute between members of the popular duo, Black Motion would involve the rights to the name “Black Motion”, but the dispute centered more around physical property such as studio equipment. CONCLUSION To minimise disputes, bands should address the issue of ownership very early after formation.  The first priority is to enter into a clear and comprehensive band agreement. The band agreement should address (amongst other things) who owns the rights to the band name and in what proportions, licensing, and crucially, whether members who leave the band may continue to use the band name.  Once the issue of ownership has been determined, the band should ensure that it applies for registration of the trade mark as soon as possible. Bands may also consider forming a legal entity under which all its business is conducted. Ideally, the entity should own the trade mark to the band name as opposed to it being owned by individual band members.   Trade mark due diligence in the context of a band may not be as enjoyable as performing and creating music but it is absolutely vital.

WORKPLACE BREATHALYSER TESTS AND ZERO TOLERANCE POLICIES

Workplace breathalyser tests and zero-tolerance policies are under the spotlight again. In the recent Labour Court judgement Samancor Chrome Ltd (Western Chrome Mines) v Willemse and Others (JR312/2020) [2023] ZALCJHB 150 (29 May 2023, the court had to consider whether the Commission for Conciliation, Mediation and Arbitration’s (CCMA) arbitration award in favour of an employee who was dismissed for failing a breathalyser test was reviewable. FACTS OF THE CASE: The employee was dismissed after he failed several breathalyser tests. The employer had a zero-tolerance policy in place for drugs and alcohol. The policy states that employees may be summarily dismissed for misconduct if they test positive for drugs or alcohol. The employee subsequently consulted his doctor who took the employee’s blood sample for testing and the results came back negative. The employee was still dismissed. At the CCMA, the employee led evidence by a chemical pathologist who testified that a breathalyser test may in certain instances produce false positive results and that the more reliable test is that of a blood sample tested in laboratory conditions. Of particular importance is that the chemical pathologist stated that in his opinion, the result DID NOT mean that any alcohol was not in the employee’s bloodstream, it merely meant that the blood alcohol level did not exceed 0.010 g/dl, but for all clinical purposes, the result was negative. The CCMA found in favour of the employee. APPLICATION FOR REVIEW: The employer took the arbitration award on review and argued that its zero tolerance policy does not require the employee to be intoxicated or to be unable to perform his duties. The zero tolerance policy only requires the employee to have a blood alcohol level of anything over 0.000g/dl. THE COURT’S FINDING: The Labour Court dismissed the employer’s application and accepted the employee’s evidence that the breathalyser tests may produce false positive results as the evidence was corroborated by an expert. COMMENTARY: 1. SOLEY RELYING ON BREATHALYSER TESTS: Employers are cautioned not to solely rely on breathalyser tests. Provision should be made in contracts of employment for employees to consent to blood tests. In addition to the breathalyser testing, physical observations of the employee in question remain important, including establishing whether the employee’s faculties were impaired to such an extent that the employee could not perform his/her duties. 2. ZERO TOLERANCE POLICIES ARE NOT “SILVER BULLETS” Employers are cautioned not to view zero tolerance policies as “silver bullets” that should result in dismissal in all instances. Employers are still required to align their zero tolerance policies with their operational requirements and apply the said policies in accordance with the circumstances of each offence. While employers have the prerogative to set rules in the workplace, the Labour Court has previously made it clear that the implementation of zero tolerance policies does not necessarily mean that the Labour Court will not have a say in the matter. In the case of Shoprite Checkers (Pty) Ltd v Commission for Conciliation Mediation and Arbitration and others the Labour Court stated the following: “But the law does not allow an employer to adopt a zero tolerance approach for all infractions, regardless of its appropriateness or proportionality to the offence, and then expect a commissioner to fall in line with such an approach. The touchstone of the law of dismissal is fairness and an employer cannot contract out of it or fashion, as if it were, a “no go area” for commissioners.” Contact us for more information on breathalyser tests and zero tolerance policies.

MUSIC SAMPLING AND THE LAW

Photo by Luis Gherasim on Unsplash The Sunday World is reporting that veteran singer and composer Caphius Semenya is claiming a 50% share of royalties from a song that appears on late rapper AKA’s posthumous album, “Mass Country”. It is being reported that AKA sampled one of Semenya’s songs without permission. Information about the specific songs in question is scant at this stage. While AKA previously used Semenya’s hit song “Matswale” on a previous album for a song ironically titled “Caiphus Song”, our understanding of the report is that the dispute was sparked by a new song. Without speculating about the details and merits of the matter, it’s worthwhile to discuss the general principles of music sampling. No discussion on music sampling would be complete without first defining the two different copyrights involved in a song, namely: The copyright in the Sound Recording (known in industry terms as the Master) and; The copyright in the underlying Musical or Literary work i.e the Composition. The Sound Recording is the original recording of the song. The Sound Recording is owned by the person or entity who commissions its making and pays for it in money (typically a record label or the artist if they are independent). The Composition is the various elements of the music including the melody, lyrics, and structure of the song. The Composition is owned by the songwriters and producers i.e composers and/or their publishers. In addition, it is important to differentiate between a sample and an interpolation. A sample is a portion of an existing Sound Recording incorporated into a new song. On the other hand, an interpolation is a portion of an existing Composition that is replayed, recreated, and/or re-sung and incorporated into a new song. View in your mind an interpolation as the use of a blueprint of an existing house to build a new house and view sampling as the use of the bricks from an existing house to build a new house. Sampling requires the permission of the record label or an independent artist (whatever the case may be) AND the permission of the composers or their publishers because BOTH the Sound Recording and the Composition are being used. An interpolation only requires the permission of the composers or their publishers because only the Composition is being used. This entire process is known in industry terms as a “clearance”. Some music producers believe that they can evade the responsibility of clearing an existing song by merely re-recording and replaying the parts they wish to use i.e. interpolation. This is because a new Sound Recording copyright vests in the new recording created. While this is a legally sound method to avoid the clearance of the existing Sound Recording, an interpolation will ALWAYS implicate the copyright in the Composition. An interpolation constitutes an adaptation in terms of section 6 (f) of the Copyright Act 98 of 1978, an exclusive right of the copyright owner. Accordingly, permission from the relevant composers and/or their publishers must always be sought, failing which the person making the adaptation may be held liable for copyright infringement.

COMPANY NAME REGISTRATIONS VS TRADE MARK REGISTRATIONS

Many new companies are under the mistaken belief that obtaining approval for a company name automatically grants them trade mark protection. Unfortunately, this is not true. A company name, as the name suggests, is the name under which an entity trades and is registered on the register of companies. In contrast, A trade mark is a word, phrase or device which distinguishes the goods and/or services of one company/person from those of another. Trade marks are registered on the register of trade marks. The owner of a registered trade mark is presumed to be the exclusive owner of the trade mark and can prevent others from using an identical or confusingly name in the course of trade. You’ll be interested to know that despite the register of companies and the register of trade marks both being under the Companies and Intellectual Property Commission (CIPC) “umbrella”, their respective registers are not cross-checked. The obvious danger here is that a company may very well obtain approval to use a company name but it may later transpire that the approved name incorporates a pending or registered trade mark that belongs to another company. This often leads to company name objections. Imagine the inconvenience and cost of being forced to change your branding months down the line. It is advisable for a company name reservation to be preceded by a separate trade mark availability search on the trade marks register to search for identical and/or confusingly similar names. This should also be accompanied by extensive market research to check for trade marks that are not on the register but may have acquired a reputation in the market through use. Once the said checks have been conducted, serious consideration should be given to filing a trade mark application for the proposed company name.

AI -GENERATED MUSIC — DOES IT VIOLATE SOUTH AFRICAN LAWS?

Artificial Intelligence (“AI”) music generators are software programs that use algorithms that analyse existing data to create new pieces of music. One of the recent AI innovations has been in the form of convincingly imitating the voices of well-known artists to create cover versions or original songs. The most well-known example happened recently when a song titled “Heart on My Sleeve” using AI-generated vocals identical to that of artists Drake and The Weeknd emerged on various platforms. A Tik-Tok user who goes by the name Ghostwriter took credit for using AI to create the simulated Drake and The Weeknd vocals. Both Drake and the Weeknd are signed to Universal Music Group. It came as no surprise when Universal took the song down from all major platforms, citing copyright infringement… but not before the song garnered millions of streams and views. The use of AI-generated music has raised several concerns amongst rightsholders in the music industry. From a South African perspective, we explore whether AI-generated, when used in the manner of “Heart on My Sleeve” could potentially violate copyright law and/or any other applicable laws. COPYRIGHT “Heart On My Sleeve” is by all accounts, an original composition, as such it would not violate the copyright in any musical and literary works of any composers and/or music publishers. If “Heart on My Sleeve” does not incorporate any sound recordings owned by Universal can it be said that it infringed the copyright in any sound recordings owned or controlled by Universal? The answer is not a straightforward one. The reason is as follows: For AI voice models to ‘come to life’, the models are trained by accessing existing recordings (many of which are copyright protected). The models themselves do not incorporate any of the recordings despite deriving their training from the recordings. There is currently an open question on whether such use constitutes copyright infringement or whether it falls within the copyright infringement exception known as “Fair Dealing” under the South African Copyright Act 98 of 1978 (“the Copyright Act”). The question becomes particularly more intriguing when one considers the looming signing of the South African Copyright Amendment Bill by President Cyril Ramaphosa. This bill has been criticised (and rightly so) for (amongst other things) its introduction of a “Fair Use” defence which involves more open-ended exceptions to copyright infringement as opposed to the more closed, determinable list of exceptions under the “Fair Dealing” provision in the current Copyright Act. PERSONALITY RIGHTS The sound and style of one’s voice does not fall within the categories of works eligible for copyright protection under the Copyright Act. However, the cloning of a person’s distinctive voice could potentially violate common law personality rights. South Africa does not have specialised protection of image rights however the law of delict provides for the actio iniuriarum which covers all personality rights which include identity, dignity, and privacy. A similar right referred to as the right of publicity exists in some states in the USA. It was on this basis that singer Bette Midler successfully sued Ford for using a singer who imitated her voice in an advert. While South African courts have never been called upon to decide disputes concerning voice imitations, the South Gauteng High Court has recognised the protection afforded by personality rights in the case of Kumalo vs. Cycle Lab (Pty) Ltd. In this case, former Miss South Africa, and TV executive Basetsana Khumalo successfully sued a company by the name of Cycle Lab for the unauthorised use of her picture in an advert in a magazine. Judge Boruchowitz held: “..the plaintiff’s image has been used in a misleading way. It generates the false impression that she endorses the lady-specific cycling products sold by the defendant and the defendant’s campaign to promote cycling among women. Use of her image in this manner constitutes a violation of her right to identity.” It is worth noting that personality rights cannot be separated from one’s personality and thus cannot be transferred. Accordingly, a record label or management company, for instance, would not be able to invoke this right on behalf of an artist. Only the artist can invoke this right. PASSING OFF Another common law remedy at the disposal of rightsholders is Passing Off, a species of unlawful competition. In the case of Capital Estate and General Agencies (Pty) Ltd and Others v Holiday Inns Inc and Others, Rabie JA defined Passing Off as follows: “The wrong known as passing off consists in a representation by one person that his business (or merchandise, as the case may be) is that of another, or that it is associated with that of another, and, in order to determine whether a representation amounts to a passing-off, one enquires whether there is a reasonable likelihood that members of the public may be confused into believing that the business of the one is, or is connected with, that of another.” Using “Heart on My Sleeve” as an example again, it would not be necessary for Drake and the Weeknd to show that the song explicitly claims to contain their voices for them to be successful in a passing off claim. It would be sufficient to demonstrate that there is a reasonable likelihood that members of the public may believe “Heart on My Sleeve” is a Drake and the Weeknd song. TRADE MARK Could AI-generated music possibly implicate another proprietor’s trade mark? A trade mark is anything capable of graphic representation which identifies the goods and services of one person from those of another. A trade mark serves as a badge of origin and is thus not applicable to the protection of music. An artist’s name may however constitute a trade mark, as such, an artist may institute trade mark infringement proceedings if an AI-generated song is wrongly attributed to the artist. Interestingly, “Heart on My Sleeve” uses music producer Metro Booming’s producer tag. A producer tag is a short sound on a song meant to make the listener aware of who is responsible for producing the