Monday, October 28, 2013

Article: Comic Books and the Law: Don't Get Trapped (2013)

Below is a link to an article I wrote that was published this month's (October) Intellectual Property issue of the ABA's Law Practice Today.  The article is about comic books and the law, so if you have an interest in those areas, then please check out the article!

[A]dvising a comic book client without the requisite legal knowledge can be complex, and as full of hidden dangers as the Fantastic Four on a mission to find Annihilus in the Negative Zone.  An attorney’s intellectual property and contract law experience will ultimately determine whether he or she is sufficiently qualified to advise clients on comic book licensing and legal matters...

Source: Law Practice Today (originally published in Law Practice Today, October 2013, ©2013 by the American Bar Association)

Sunday, August 25, 2013

Underground Hip Hop: 4 Things Recording Artists Must Consider to Succeed in the Music Industry

This is a legal guide that I first wrote and published on Avvo earlier this month. I have linked the information below for reference.


The underground hip hop and rap music industry can be one of the toughest industries to find success especially if one is clueless on how the music game operates. This guide identifies four (4) things the hip hop artist must consider in order to be in the music game as a business instead of a hobby. 

1. Financing of the Project 

How will the music be made? An artist can either self-finance or finance through a record company. If the artist is financing the project, then the artist will want to consider forming a legal entity (LLC or corporation) in the State where the artist will be conducting the business operations. This entity will provide certain liability protections and can handle the recordings and the publishing. Some people set up multiple entities for these purposes. Having a legal entity shows a level of professionalism. An artist does not need to have significant monies to run a record label, but it certainly helps, because the artist-label will need to pay for studio time, producers, musicians, sample clearances and mechanical royalties. The artist will also need money to retain an attorney and CPA to handle certain matters. If a record company finances the project, then the company will likely own/control the rights in the recordings and the attorney should review all such recording agreements. 

2. Ownership of the Materials 

The person who controls the copyrights in the music controls the exploitation of that music. There are 2 main copyrights for music: the sound recording (masters) & the underlying musical composition (publishing). The artist will own both copyrights when self-financing. The label will own the masters and some % of the publishing when the label finances. I recommend that my clients finance their own projects, or secure deals where they are not employees and do not have to assign their copyrights. The artist should have contracts and split sheets with every person who performs a service. These contracts should have work-for-hire language to ensure the artist owns the rights in the contributed works. There is still some argument whether sound recordings qualify as works-made-for-hire, so the artist will also need to include an irrevocable assignment. There may be payment obligations with using union musicians. Consider ADR for dispute resolution, so matters are private, not public record. 

3. Marketing and Promotional Campaigns 

Marketing is essential to increase the sales of music and ancillary materials. The artist must market and promote the music. Marketing can come in many different forms from ads, promotional appearances to social media. I tell artists to conquer their cities block by block and street by street. Once the artist conquers the city, the goal should be to conquer the State, the region, the nation and then the world. If the artist is talented and cannot conquer where they currently are, then move to a different place. Touring can be a steady income stream for many artists. The artist should tour in places where there is demand, and hit up local radio and mixshows too. The artist should also do fan contests and sweepstakes to collect marketing data and information. Blogs are huge in the hip hop game, so it is always good to have relations with outlets that share a similar audience and fan base. The artist should give a shout-out to any media that gives the artist's material a fair review. 

4. Ancillary Exploitation and Branding of the Artist and Music 

Many music artists are not content with just being musicians. They want to expand into other ancillary areas such as movies, television, web, theater and politics. An artist must properly brand himself and his music if the artist wants to have these ancillary opportunities. I came of age in the 1980s and 90s, and we used to call this "cross-over appeal" because the artist could become bigger than just the music. Think artists like Jay Z (sports agent) or Diddy (alcoholic beverages) who today have expanded their brands outside of music. Most new artists understand this from a conceptual level in that they want to be famous, but they do not know that fame is a function of the artist's branding efforts across various product and service categories. Choosing the performing name is the biggest decision to be made. The name and likeness should be memorable and eligible for trademark protection across the standard categories in merchandising, publishing, music, video games and multimedia. 

5. Conclusion 

The artist should retain a qualified music attorney before entering into any agreement with any other party. A qualified attorney will be a key asset to the artist's team, because the attorney will be able to review agreements and provide overall guidance for the artist's career. A classic song is eternal and every musician I have ever met dreams of making a classic song. Therefore, the song and the bad deal the artist makes today could have ramifications for years, if not decades. Please do not be that musician who makes a classic song, but does not get to reap the benefits because he did not have his legal affairs in order. 

About: Joseph Ford is a sole practitioner who provides legal advice in connection with entertainment licensing, distribution and production, including merchandising, publishing, copyright, trademark and piracy. Currently, Mr. Ford also serves as a Legal Consultant for NBCUniversal Media, where he provides licensing counsel to television shows such as Downton Abbey and Sharknado, advising high-level executives and attorneys, and in addition, has closed numerous transactions with high-profile companies. Joseph is a member of the California Bar and is a licensed patent attorney. 

Tuesday, July 30, 2013

How To Request a Certificate of Good Standing from the USPTO as a Patent Attorney or Agent

I could not find information on how to request a Certificate of Good Standing from the USPTO when I started searching a few months ago, so I had to write the Office of Enrollment and Discipline for this information. Therefore, I wanted to pass along this information to others. In order to obtain a Certificate of Good Standing from the USPTO OED, you must send a letter to the USPTO requesting the Certificate of Good Standing and a $10.00 processing fee. 

The letter should be mailed to:

Office of Enrollment and Discipline 
Mail Stop OED 
U.S. Patent and Trademark Office 
P.O. Box 1450 
Alexandria, VA 22313-1450

I have embedded a sample letter that you can reference for this purpose

Monday, July 29, 2013

Six Stages of Production Legal in Independent Motion Pictures

This is an update to the blog article I wrote several years back called LEGAL RAMIFICATIONS OF LOW-BUDGET MOVIE PRODUCTIONS. An attorney on Avvo asked me to update the article as a legal guide, so I updated the article. However, I did not want to leave it exclusively on Avvo, so I have re-posted it here as well.


This guide is based on my experiences as a production attorney for independent films in Los Angeles, California and is written to assist the independent producer or production attorney better understand some of the basic legal issues at each of the six stages of producing a motion picture project. 

1. SUBJECT MATTER/CONCEPT/ACQUISITION STAGE: So you want to produce a movie? Congratulations! Producing can be an exciting & rewarding career, but you have to decide what story you want to produce. The movie will be based on some type of subject matter or story - be it fact, fiction or original. The subject matter determination is both a creative and business decision made by the producer based on various market factors and the vision of the producer. The easiest subject matter to clear (or license) will be the producer's own original story, because there are no underlying rights to be secured. However, if the subject matter or story is not the producer's original creation, then certain motion picture rights will need to be licensed from third parties. A producer will need to secure an attorney at this point to ensure the licenses are sufficient to show a proper copyright chain-of-title when requested by financiers & talent guilds in the project's subsequent stages. The attorney may work for a flat fee or on an hourly rate basis. 

 2. DEVELOPMENT STAGE: Once the producer has identified the subject matter and secured the necessary rights, the producer can begin developing the movie for screen. Nevertheless, the producer will need money to make the movie and this money can come from many sources. There may be credit checks and financial due diligence requirements from potential financiers, so a producer has to be prepared for these checks. The attorney will also need to consider securities laws & regulations. The film's financing will be dependent on a number of factors such as the budget, the attachments of talent/crew and the available monies. The attorney will need to draft these investor financing agreements and file the necessary chain-of-title documents with the Copyright Office. If there are talent/crew attachments, then the attorney may also need to draft & negotiate letters-of-intent with these individuals. The financiers will likely take a portion of the equity and tax rebates (if any) in the project to secure the investment. 

3. PRE-PRODUCTION STAGE: In this stage, the attorney will form the desired corporate entity (corporation, LLC, etc.) in the desired jurisdiction with this decision to be discussed with the CPA. The attorney will draft the operating agreements and manage the entity's tax obligations such as the EIN and entity classification forms. After the legal entity is formed, the producer can open bank accounts. Financing for the project can be transferred to these accounts and the producer is ready to begin formalizing production dates & talent/crew commitments. A CPA should be hired as early in the process as possible. The accountant should be consulted in the early stages to ensure the project is best organized to receive the benefit of favorable tax advantages. In this production stage, the accountant is vital to keeping the project on the projected budget by managing, handling & controlling access to the project monies. There must be a contract or some other written acknowledgement for all expenditures on the project. 

4. PRODUCTION/PRINCIPAL PHOTOGRAPHY STAGE: The producer will need to discuss with the attorney whether the film project will be a signatory to any of the unions and guilds like SAG, DGA, WGA. The unions and guilds have specific signatory requirements (including monetary bonds) to employ one of their respective members, so the project may need to be guild-compliant before principal photography can commence. Having working relationships with the guilds can help. The casting agent will typically negotiate the talent's terms with the attorney drafting & providing the contracts, but it will depend on the talent. Contracts for all crew members should be executed before principal photography commences. Location releases, vendor contracts & permits will have to be drafted/finalized. The attorney will review the general liability and E&O insurance policies. If artwork and/or products are used, then the releases for these items will also need to be drafted. Unexpected things will happen, so the attorney should be prepared for anything. 

5. POST-PRODUCTION STAGE: The attorney may have to review and negotiate deals for the music, composer, film lab, editor & post-production suites at this stage. The producer may also need to shoot additional photography, so there may be additional talent & service agreements to be drafted and reviewed. Once the photography has been completed and the producer has satisfied all union and guild obligations, then the attorney can close out the agreements and request a return of any security bonds. One of the biggest issues working on an indie project is missing paperwork and agreements especially when the actual production occurs at a remote location where the attorney is not on-site. Therefore, the attorney will need to manage the return of all legal documents from the remote production team. All of the required paperwork for delivery, if known, should be compiled & cross-checked for availability and accuracy. If anything on the legal side is missing or incomplete, then the attorney will need to address the issue. 

6. DISTRIBUTION/EXHIBITION/EXPLOITATION STAGE: The final stage will be the time to distribute and exploit the project and hopefully make a lot of money. The producer may use a sales agent to secure distribution and if so, the attorney will need to negotiate the sales agent's agreement along with an applicable commission and term for the agent's services. The attorney's services may also include negotiating and reviewing the distribution agreement such as license term, advance, royalty rate, territory and reserved rights. The attorney’s legal services will typically cover only services up until the delivery of the project to the initial distributor, but the attorney should do one final review of all documentation & delivery obligations to ensure that everything is in compliance and then get the client to sign-off upon attorney's completion of the services. If the attorney is needed by the producer for additional services, then the attorney and the producer can negotiate these services at the attorney's hourly or a new flat fee rate. 

Source: Avvo


If you live in California and have questions about the legal process, there is a great FREE website that may help you.

Or you can call toll-free at 888-875-LAWS (888-875-5297).
On this site you can find assistance with questions such as:
  • How do I use the small claims court?
  • What can I do if I can't pay my debts?
  • Do I need a will?
  • What should I do if I have an auto accident?
  • Can the law help protect me from domestic violence?


Sunday, July 28, 2013

NFL's Collective Bargaining Agreement, Dated as of August 4, 2011

This is a reference link for my website's viewers.  You may download the NFL Collective Bargaining Agreement, dated as of August 4, 2011, by clicking the following link:

Joseph S. Ford, Jr.'s Legal Answers to Questions on

I have recently started answering questions for potential clients and the public. Therefore, I have decided to provide a link to my answers here on my blog for ease of reference.


Saturday, June 29, 2013

Avvo Top Contributor Award for 2013 in Entertainment and Licensing (Joseph Ford)

I just recently started answering questions on Avvo, but I guess people like my answers, because I just received a Top Contributor Award for 2013. I have not received any type of award in awhile, so I am excited. Please feel free to email me if you ever have any legal questions. 

Joseph Ford