Sometimes It Really Is Better To Get Permission
Tuesday March 31st 2015, 4:15 pm
Filed under: Copyright & Legal

Have you heard the old saying, “It’s easier to ask for forgiveness than it is to get permission”?

Well, as one recording studio found out to their regret, sometimes it’s better to bite the bullet and ask for permission, because forgiveness sometimes comes at a high price.

Here’s the deal: Tempest Publishing Inc., a music publisher, sued Hacienda Records & Recording Studio, Hacienda Records, L.P., and Latin American Entertainment, LLC, claiming the defendants infringed their copyrights to four songs, including a Tejano piece written by Joe Martinez and Lee Quirino, Dos Gatos. In 1992, Martinez and Quirino had signed a songwriters’ contract granting exclusive rights to the song to Tessitura Music Trust, which registered Dos Gatos with the Copyright Office plus music licensing organizations BMI, ASCAP, and Harry Fox Agency. The song was recorded and released under the title Somos Dos Gatos.

The defendants were found not guilty of infringement for three of the four songs, but in the case of Dos Gatos, the court found the defendants had recorded and released a song that was “substantially similar” on a 2008 album, Y Como le Hare. The problem?

Actually, there were several problems…

  • The studio’s Executive Vice President in charge of licensing apparently visited the BMI website and learned the rights to Dos Gatos were owned by Musica Adela, which had acquired the rights to Dos Gatos from Tessitura in 1993 (and which was, itself, purchased by Tempest Publishing in 2000). Since he was in charge of licensing, he certainly should have known Hacienda needed to license the song in order to use it. However, they apparently didn’t even try to request licensing from either BMI or Harry Fox Agency.
  • Hacienda actually listed the song’s composers and publishers on the cover of their album, making it even harder (read: virtually impossible) for them to claim they didn’t know the song was copyrighted. #facepalm
  • Musica Adela reportedly often granted licenses after an album’s release, but only in cases where the request had been made before, or at worst very shortly after, the release. In this case, Hacienda reportedly waited four years before requesting licensing. Too long, said the judge.

Not surprisingly, the courts found that Hacienda had infringed on Tempest’s copyright, and — worse for Hacienda — that the infringement was willful.

Now, here’s the part that should make independent labels and recording artists sit up and take notice. There was evidence presented that the actual loss suffered by Tempest was no more than a whopping $4.37. Yep, you read that right. Four dollars and thirty-seven cents. Further, there was additional evidence presented that Hacienda had received net revenues from the infringing product to the tune of $79.40. You could easily spend more than that taking your significant other out to eat in one evening at a nice restaurant.

But because the infringement was deemed “willful,” the court assessed “statutory damages,” and Hacienda was ordered to pay $5,000. (Fortunately for them, since they’d been found to be non-infringing on the other three songs, the court declined to make them also pay Tempest’s attorney fees.)

The lesson to be learned here: if you’re going to use a song written by somebody else on your album, for pity’s sake, get the licensing in order before you release the album. Yes, it’s probably going to be a hassle, and yes, it’s probably going to cost you something out of pocket. But I’ll bet licensing Somos Dos Gatos would have cost Hacienda a lot less than $5,000, plus whatever they had to pay their lawyers to defend them in this lawsuit.

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