Proud Boys, Enrique Tarrio, Jason Lee Van Dyke, and Milo What's-his-Name


Proud Boys Trademark Specimen

Proud Boys, Enrique Tarrio, Jason Lee Van Dyke, and Milo What's-his-Name

by Susan Basko, esq.

As explained here back in April 2018, Texas lawyer Jason Lee Van Dyke registered the trademark on the words, "Proud Boys" for "Association services, namely, organizing chapters of a fraternity and promoting the interests of the members thereof" with his own legal entity, JLVD Holdings L.L.C., as the owner of the trademark.  At the time, Jason Lee Van Dyke was acting as a lawyer for the Proud Boys group.  You can read about that HERE.

Since then, Jason Lee Van Dyke was ousted from or quit the group.  Gavin McInnes, founder of the group, also quit.  

Subsequently, Enrique Tarrio was elected to head the Proud Boys.  Recently, Enrique Tarrio was revealed to be a long-time FBI Confidential Informant, which you can read about at ReutersThe GuardianNew York Times, and many other locations.

On January 6, 2021, a group of rioters entered the U.S. Capitol in Washington, D.C., causing property damage and resulting in about 6 deaths of police and participants.  Various members of the Proud Boys have been arrested in connection with the attack.  You can read about that at The Guardian.

Jason Lee Van Dyke, the lawyer who owns the Proud Boys trademark, has issued a letter to Enrique Tarrio rescinding a license granted to him to use the Proud Boys trademark.  See below.  

Now, Milo Yiannopoulos has offered to buy the trademark from Jason Lee Van Dyke and give it to the Proud Boys membership, if Enrique Tarrio agrees to quit the leadership, other than being the head of a local chapter.

WHICH BRINGS UP THE TOPIC -- IS THIS LEGALLY POSSIBLE?  I think so, yes, as an assignment of trademark.  Jason Lee Van Dyke would have to agree to assign the trademark and the organization would have to agree to have it assigned to it.  Assignments are done using forms at the U.S. Trademark Office.  The reason I think it would be legal is because it would still be the exact same organization using and benefiting from the trademark.  Then, they'd file an ETAS form and pay a $40 fee
Note: This is NOT legal advice.  You are not my legal client.  Blah blah blah, etc.

WILL THIS HAPPEN?  We shall see.  

What is Milo's interest in the Proud Boys?  Who knows.  He has written that he wants to gift the trademark to the group so "the fraternity never again has to beg someone else to use its own name."  

The World Trademark Review recently published an article in which I am quoted, entitled, "Proud Boys™ – far-right group's trademark could face cancellation, legal experts claim."  The article is pay-walled, but if you register, it is a well-written article and worth reading. 

Marijuana and Trademark

  Marijuana and Trademark

by Susan Basko, esq.

The U.S. Trademark Office will not register trademarks on any marijuana-related goods or services.  Period.  What the Trademark Office will do is jack around those who are foolish enough to try to register a trademark on marijuana-related goods or services.  

The reason the Trademark Office will not register trademarks on any marijuana-related goods or services is because marijuana is federally illegal, even though it is legal in numerous U.S. States.  It is possible in those States that, if the State itself has a trademark office, such trademarks might be registered there.  I don't know; I have never tried it, but in theory this makes sense to me.

(Note: There is a tiny exception in the trademark law for cannabis-derived products with negligible THC content, such as CBD oil that has less than 0.3 THC per dry weight.  And then, it cannot be an edible or touted as being a cure for anything.)

Now, you may ask, how does the Trademark Office jack around those who apply for trademarks on their goods and services?  Here is a cautionary tale. 

I got an email from a company called Camp Nova, which is a delivery service for marijuana and edibles. The photo above is from one of their emails, listing some of the celebrity brands of marijuana that Camp Nova sells.  So naturally, I looked up to see if Camp Nova had attempted to register a trademark on its name.  And yes, the owner of the company made two do-it-yourself attempts to register a trademark.  Trademark is not a do-it-yourself activity, ever.  If he had asked any credible lawyer, they would have told him that the trademark office does not register trademarks on any goods or services related to marijuana, period.

The first attempt at trademark registration, Camp Nova called its service: "Computer software platforms, downloadable, for mobile devices and herbal marketing." The Trademark Examiner sent out an Office Action saying the specimen provided was not correct for a software platform and that the goods were not specific enough. Camp Nova did not respond and the trademark application went DEAD.

About a year passed, and the owner of Camp Nova tried a second do-it-yourself trademark application.  This time, he called his service: "On-line wholesale and retail store services featuring hemp."   When he was searching for an identification for his goods or services, perhaps he noticed that there were no listings whatever for "marijuana" or for "cannabis."  Perhaps that still did not clue him in that the U.S. Trademark does not register trademarks on marijuana-related goods or services, or perhaps he thought he could sneak in by calling it hemp. However, the Trademark Examiner would look at the Camp Nova website and see it was a marijuana delivery service.

Now, upon seeing that Camp Nova was a marijuana delivery service, one would think that the Trademark Examiner might simply send Camp Nova a notice saying something like, "Sorry, the Trademark Office does not register trademarks on marijuana-related goods or services because marijuana is federally illegal."  Instead, the Trademark Examiner sent out an Office Action telling Camp Nova they have 6 months in which to file a Reply to the Office Action and they must answer ALL of the questions that are shown below in the highlighted area.  Please notice that if Camp Nova answers these questions, they will be admitting under sworn written oath, that they are committing a whole roster of federal crimes.

Below is a large portion of the Office Action, directly quoted.  Notice the Questions numbered 1-11, which I have highlighted to make them easier to find.  Quite seriously, only a fool would answer these questions.
And now, I hope you see why Trademark Registration is not a do-it-yourself project.

The Office Action asks, "If so, do the cannabis or cannabis derivative used (or to be used) in these goods contain more than 0.3 percent delta-9 tetrahydrocannabinol (THC) on a dry weight basis?"  Will Camp Nova respond, "Why yes, we sell Ice Cream Cake that has one hundred times that much THC, at 30% THC"?

The Nonfinal Office Action is dated September 4, 2020, which gives Camp Nova till February 4, 2021 to respond.  Will Camp Nova be dopey enough to respond and put it in sworn writing that they are selling Lemon Kush with 20% THC and Ice Cream Cake at 30% THC?  I hope not, but I will be watching their trademark file to find out.

Camp Nova ad - Ice Cream Cake

Camp Nova ad - Lemon Kush



The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 



Issue date:  September 04, 2020


 The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.


The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.



  • FDCA Refusal – No Bona Fide Intent to Lawfully Use in Commerce as of Filing Date;
  • Controlled Substances Act Compliance Advisory
  • Information requirement
  • Specimen requirement

FDCA Refusal


Registration is refused because applicant does not have a bona fide intent to lawfully use the applied-for mark in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907. 


To qualify for federal trademark/service mark registration, the use of a mark in commerce must be lawful.  Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987) (stating that “[a] valid application cannot be filed at all for registration of a mark without ‘lawful use in commerce’”); TMEP §907; see In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968); Coahoma Chemical Co., Inc. v. Smith, 113 USPQ 413 (Com’r Pat. & Trademarks 1957) (concluding that “use of a mark in connection with unlawful shipments in interstate commerce is not use of a mark in commerce which the [Office] may recognize.”).  Thus, the goods/services to which the mark is to be applied must comply with all applicable federal laws.  See In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016) (citing In re Midwest Tennis & Track Co., 29 USPQ2d 1386, 1386 n.2 (TTAB 1993) (noting that “[i]t is settled that the Trademark Act’s requirement of ‘use in commerce,’ means a ‘lawful use in commerce’”)); In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976); TMEP §907. 

The items or activities listed in the application in connection with which the mark is intended to be used involve a per se violation of federal law.  See In re Brown, 119 USPQ2d at 1352.  The Federal Food, Drug, and Cosmetic Act (FDCA) prohibits the introduction or delivery for introduction into interstate commerce of a food to which has been added a drug approved under Section 355 of the Act or a biological product licensed under 42 U.S.C. §262.  21 U.S.C. §331(ll); see also 21 U.S.C. §321(ff) (indicating that a dietary supplement is deemed to be a food within the meaning of the FDCA and does not include an article that is approved as a new drug under 21 U.S.C.  §355, certified as an antibiotic under 21 U.S.C. §357, or licensed as a biologic under 42 U.S.C.  §262).

Cannabidiol (CBD), a chemical constituent of the cannabis plant, was the subject of substantial clinical investigations before it was marketed in foods or as dietary supplements.  On June 25, 2018, the U.S. Food and Drug Administration (FDA) approved the first prescription pharmaceutical formulation of plant-derived CBD, Epidiolex®, for the treatment of two rare forms of epilepsy, Lennox-Gastaut syndrome and Dravet syndrome.  The Drug Enforcement Administration (DEA) placed Epidiolex® on schedule V of the CSA on September 27, 2018.  Nevertheless, marijuana and CBD derived from marijuana remain unlawful.  No other cannabis-derived drug products have been approved by the FDA.  Under the FDCA, any product intended to have a therapeutic or medical use, and any product (other than a food) that is intended to affect the structure or function of the body of humans or animals, is a drug.  21 U.S.C. § 321(g)(1)  An unapproved new drug cannot be distributed or sold in interstate commerce unless it is the subject of an FDA-approved new drug application (NDA) or abbreviated new drug application (ANDA). 21 U.S.C. §§ 331(d) and 355(a), (b), & (j); see also FDA Regulation of Cannabis and Cannabis-Derived Products: Questions and Answers copy attached.

Applicant’s goods and/or services are broad enough to encompass products that consist of, or include, items or activities that are or were prohibited by the FDCA, namely, “On-line wholesale and retail store services featuring hemp.”

As the applicant has identified that its services feature hemp, it is presumed that the goods also contain the prohibited substance of CBD.  Since CBD is an extract found in hemp plants, and since the applicant has not specifically excluded CBD from the Identification, it is presumed that the applicant’s services featuring goods containing CBD, and thus the FDCA refusal is applicable at this time

It is unlawful to introduce food to which CBD, an “article that is approved as a new drug,” has been added into interstate commerce or to market CBD as, or in, dietary supplements, regardless of whether the substances are hemp-derived. 21 U.S.C. §§321(ff)(3)(B)(ii), 331(d), 355(a); see also 21 U.S.C.  §352(f)(1) regarding mislabeled drugs.  See also Statement from FDA Commissioner Scott Gottlieb, M.D., on signing of the Agriculture Improvement Act and the agency’s regulation of products containing cannabis and cannabis-derived compounds. copy attached. 


In order for an application to have a valid basis that could properly result in a registration, the use of the mark has to be lawful.  See In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976)  Because introduction of such goods into commerce was not lawful as of the filing date, applicant did not have a bona fide intent to use the applied-for mark in lawful commerce in connection with such goods and/or the identified services.  See e.g. In re JJ206, LLC, 120 USPQ2d 1568, 1569 (TTAB 2016) (“where the identified goods are illegal under the federal Controlled Substances Act (CSA), the applicant cannot use its mark in lawful commerce, and ‘it is a legal impossibility’ for the applicant to have the requisite bona fide intent to use the mark.”); see also In re Brown, 119 USPQ2d, 1351-1352; TMEP §907.   




Use of a mark in commerce must be lawful use to be the basis for federal registration of the mark.   Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987) (stating that “[a] valid application cannot be filed at all for registration of a mark without ‘lawful use in commerce’”); TMEP §907. Thus, the goods and/or services to which the mark is applied must comply with all applicable federal laws.  See In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016) (citing In re Midwest Tennis & Track Co., 29 USPQ2d 1386, 1386 n.2 (TTAB 1993) (noting that “[i]t is settled that the Trademark Act’s requirement of ‘use in commerce,’ means a ‘lawful use in commerce’”)); In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976); TMEP §907.


Cannabidiol (CBD) is a nonpsychoactive constituent of the cannabis plant. Goods containing CBD derived from cannabis that meets the definition of “marijuana” are illegal under the federal Controlled Substances Act (CSA), 21 U.S.C. §§801-971. On December 20, 2018, the CSA was amended to remove “hemp” from the definition of “marijuana” and specifically exclude “tetrahydrocannabinols in hemp (as defined under section 297A of the Agricultural Marketing Act of 1946)” from Schedule I, 21 U.S.C. §812(c)(17). See the Agriculture Improvement Act of 2018, Pub. L. 115-334 (the 2018 Farm Bill), which amends the Agricultural Marketing Act of 1946 (AMA).


Applicant’s identified goods and/or services include: On-line wholesale and retail store services featuring hemp.”


To the extent applicant’s services contain goods that are derived solely from cannabis plants that meet the current statutory definition of “hemp,” such goods may be lawful.


Applicant must amend the identification of goods and services to specify that all cannabidiol-containing items are “solely derived from hemp with a delta-9 tetrahyrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis.” 


Applicant may adopt one of the following limitations and amend the identification of goods/services accordingly:


Class 035:  “On-line wholesale and retail store services featuring hemp with a delta-9 tetrahyrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis


Applicant should note, however, that even if applicant amends the application as outlined above, such amendment will not be sufficient to overcome the additional FDCA refusal set forth immediately below.


Applicant is advised that failure to amend the identification of goods/services will be grounds for refusal on the basis that the mark, as used/intended to be used in connection with the identified goods/services, is not lawful use in commerce under the CSA.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907.  


SCOPE ADVISORY: Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).




To permit proper examination of the application, applicant must submit additional information about applicant’s goods.  See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).


In addition, applicant must submit a written statement indicating whether all the goods, including the Controlled Substances Act (CSA) and the Federal Food, Drug, and Cosmetic Act (FDCA), 21 U.S.C. §§801-971 (see questions below). See 37 C.F.R. §2.69; TMEP §907.


Applicant must respond to the following questions and/or requests for documentation to satisfy this request for information:


1.      Do or will applicant’s identified goods include any oils, extracts, ingredients or derivatives from the plant Cannabis sativa L (also known as cannabis, marijuana or hemp), including CBD?  If so, please specify.

2.      If so, do the cannabis or cannabis derivative used (or to be used) in these goods contain more than 0.3 percent delta-9 tetrahydrocannabinol (THC) on a dry weight basis?

3.      If applicant has any documentation relative to the THC content of the oils, extracts or derivatives used or to be used in the goods, please submit them with the response.

4.      If applicant’s goods do or will contain oils, extracts, ingredients or derivatives from the plant Cannabis sativa L which has more than 0.3 percent delta-9 tetrahydrocannabinol on a dry weight basis, identify the part or parts of the plant used in obtaining the oils, extracts, ingredients or derivatives.

5.      If the “hemp” is grown in the United States of America, was the hemp used in the goods obtained from an authorized grower or supplier of industrial hemp from a hemp growing pilot program set up under the 2014 Farm Bill?

6.      Do or will applicant’s identified International Class 5 goods include CBD?

7.      If the answer to question 6 is “yes,” do or will applicant’s identified International Class 5 goods include CBD which is derived from, oils, extracts or ingredients from plants other than Cannabis sativa L?

8.      If the goods contain CBD, will there be more than a trace amount of CBD in the goods, that is, more than 50 parts per million (PPM)?  Please submit documentation of the CBD concentration of the goods.

9.      Is applicant currently seeking FDA approval for its goods in International Class 5?

10.  Upon information and belief do applicant’s goods comply with the CSA?

11.  Upon information and belief do applicant’s goods comply with the FDCA?

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).


Rudolph the Red-Nosed Reindeer Trademark


Rudolph the Red-Nosed Reindeer Trademark

by Susan Basko, esq. 

I answered this question on Quora: Is Rudolph the Red Nosed Reindeer’s character copyrighted?

Rudolph the Red-Nosed Reindeer is a song, a movie, etc. and these have Copyright protections. “Rudolph the Red-Nosed Reindeer” is also a trademark registered by Trust of the author, Robert L. May, for use on books, films, games, toys, etc. It has been registered since the 1980s. 

The specimens on file with the U.S. Trademark Office show a Viewmaster slide show of Rudolph, a story book signed by the author, a coloring book, an RCA Victor phonograph record, and a pair of bedroom slippers with a reindeer head. It is safe to say the character of Rudolph the Red-Nosed Reindeer is as legally well-protected as Mickey Mouse. Subsequent attempts by others to register trademarks on any Rudolph Reindeer-related goods or services have all failed and gone dead. 

The registration information is shown below, and above is a photo of the specimen provided of the coloring book and slippers.

  Word Mark


Goods and Services

IC 009. US 021 023 026 036 038. G & S: Filmstrips With [ and Without ] Sound Tracks. FIRST USE: 19470000. FIRST USE IN COMMERCE: 19470000

IC 016. US 037 038. G & S: Coloring and Activity Books. FIRST USE: 19470000. FIRST USE IN COMMERCE: 19470000

IC 028. US 022 023 038 050. G & S: [ Equipment Sold as a Unit for Playing Board and Dart Board Games, ] Stuffed Toys, Christmas Tree Ornaments, Hand Puppets and Jigsaw Puzzles. FIRST USE: 19470000. FIRST USE IN COMMERCE: 19470000

Mark Drawing Code


Serial Number


Filing Date

July 3, 1980

Current Basis


Original Filing Basis


Published for Opposition

October 9, 1984

Registration Number


Registration Date

December 18, 1984


(REGISTRANT) State National Bank of Evanston, co-trustees of Robert L. May, trust under will banking association UNITED STATES Orrington at Davis Evanston ILLINOIS 60204


Assignment Recorded


Type of Mark




Affidavit Text

SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20150110.


2ND RENEWAL 20150110

Live/Dead Indicator


Alexandria Ocasio-Cortez and the Brat Pack



Alexandria Ocasio-Cortez and the Brat Pack
by Susan Basko, esq.

You've probably seen the marvelous video above, which features now U.S. Representative Alexandria Ocasio-Cortez back when she was a student at Boston University.  In the video credits, she is listed as "Sandy Ocasio-Cortez."  What are the origins of this great little video?

Back in 2009, the French group named Phoenix released a catchy pop tune called Lisztomania.  The term, Lisztomania, refers to the freaky fandom that was rained down upon the composer Franz LIszt in Berlin in the 1840s.  Liszt was like the Justin Timberlake or Shawn Mendes of his day. 

Someone using the name AvoidantConsumer created a perfect dance video using the Lisztomania song from Phoenix with footage from the 1985 John Hughes movie, The Breakfast Club.  "It stars Emilio Estevez, Anthony Michael Hall, Judd Nelson, Molly Ringwald and Ally Sheedy as teenagers from different high school cliques who spend a Saturday in detention with their authoritarian assistant principal (Paul Gleason)."

The actors that starred in The Breakfast Club and other teen movies of the 1980s became known as The Brat Pack.  John Hughes made a series of movies depicting the lives of white teens from Chicago's wealthy northern suburbs.  Those movies included The Breakfast Club, Sixteen Candles, and Ferris Bueller's Day Off.  The John Hughes movies followed in the footsteps of the 1983 movie Risky Business by Paul Brickman, which also depicted lives of wealthy white Chicago suburban teens, and Class, directed by Lewis John Carlino, which did the same.  In the mid-1980s, it became a movie genre unto itself to tell stories of mischievous wealthy white teens challenging authority in suburban Chicago.  Their big freedom escapades often involved driving from their sleepy suburbs into downtown Chicago.

This rich Chicago teen genre and its tropes got turned on its head by 1992's Wayne's World, directed by Penelope Spheeris.  Wayne's World depicted ersatz Chicago suburban "teens," played by the older Mike Meyers and Dana Carvey as Wayne and Garth.  Wayne and Garth did not drive fancy sports cars; they had a 1976 AMC Pacer, a funny little car with huge windows that looked like a circus clown car.  Wayne and Garth were not pondering what to wear to the prom; they were busy making Public Access TV shows down in the paneled-and-brown-plaid finished basement.

The AvoidantConsumer video (below) was imitated by young people in Brooklyn, and then in Boston, and soon in cities all over the world.  You can see in the video below that the role that AvoidantConsumer created for Ally Sheedy was later imitated and reprised by Sandy Ocasio-Cortez in the Boston remake.  Allegedly, AvoidantConsumer's Youtube channel was shut down for Copyright infringement claimed against the video.  That person has resurrected on Youtube as AvoidantConsumer3. 

The first spin-off video was made on a rooftop in Brooklyn in New York City.  Notice it is pretty faithful to the AvoidantConsumer - Brat Pack original.

Rome, Italy, came up with a nice mashup of the video:

Michigan State University did a decent rendition:

This group from Moscow, Russia, does a pretty good job once they get up to the rooftop.  They capture the spirit of the original, even if they lack a brunette dancer for the Ally Sheedy part.

These folks in Rio de Janeiro look like they are having a lot of fun against the gorgeous scenery.

Students at University of Waterloo in Ontario, Canada, get points for a diverse cast and good dance moves.


These folks in Vienna, Austria, posed against the scenic local backdrops to make their Lisztomania mashup.

A family in Curitiba, Brazil, cast the mom, dad, and kids in the roles.  They made the video as a thank-you to Curitiba, which they enjoyed visiting.

These people in Versailles, France, look like they are having a lot of fun.  While they did not imitate the original Brat Pack video, they made up for it in energy and fun.

A shop in Paris, France, became the scene for this remake. Not everyone has a rooftop where they can go to dance around.

Dancers in Taipei, Taiwan, performed their mashup on a city train and on a big staircase. They stayed true to the energy and spirit of the original video, if not to its specifics.

San Francisco put forth an excellent version, with a producer, director, and choreographer listed in the credits.   The video is cast with beautiful young women and men, as one would expect in San Francisco. 

This group of dancers in Rimini, Italy, made good use of the charming local scenery.

Lecce, Italy, cast a beautiful brunette woman in the Ally Sheedy role.  The whole cast looks like they are having lots of fun.  

The Israeli version was performed in Jerusalem, Tel Aviv and Jaffa.  Parts of it were shot using what looks like a big orange Alexander Calder sculpture as a backdrop.  They do some couples dancing as well as some folk dancing moves. 

And finally, this ambitious group from Amsterdam, Netherlands, bring their dancing energy to a scene of graffiti-painted rocks and a water taxi boat.

If I missed any videos, please email me the link if you want me to add it onto this post. 

 Happy Dancing!

Wixen v Triller: Music Apps Need to License the Songs



Wixen v Triller: Music Apps Need to License the Songs

by Susan Basko, esq.

Wixen Music Publishing has filed a lawsuit against the Triller app claiming the songs Wixen controls have been infringed by Triller.  Triller is an app run by CEO Mike Lu.  The app allows users to create 15-second music videos and share them with friends and contacts within the app.  The app makes many songs availavle to the users for use in the videos. Some of those songs are controlled by Wixen.  Triller allows its users to choose a song, choose which 15 seconds of the song to use, and to make a little music video.  

Wixen is run by Randall Wixen, who is one of my personal longstanding music heroes.  Randall Wixen came into music publishing as an accountant who would collect the publishing money owed and take a percentage.  This differs from the traditional music publisher, which usually takes 50% of the publishing rights and notoriously does almost nothing to earn it.  At the time Wixen started, his service was groundbreaking and a cure for the traditional music publishing grab that robbed so many songwriters.  This is how and why Wixen has an impressive A-list of songwriters who sign with the company to have their money collected at an affordable price.  These are veteran songwriters who do not need any "help" getting their songs out there.  The Wixen Publishing Client List of over 2,000 songwriting music artists includes Tom Petty, Rage Against the Machine, Santana, Andrew Bird, Neil Young, The Doobie Brothers, Barry Mann and Cynthia Weil, The Doors, The Beach Boys, Steven Stills, Stevie Ray Vaughan.  

By US Copyright law, use of a song in a motion picture, including a music video, requires a Synch license from the publisher, as well as a Master's Use license from the owner of the copyright on the Sound Recording, which is usually a record label.  This lawsuit does not address the Master's Use license, because Wixen is a music publisher, not a record label.  I don't know if the song recordings used by Triller are original recordings owned or controlled by record labels, or if perhaps Triller has had sound-alike recordings made.  In either case, this particular lawsuit only deals with the publishing, by which is meant the songwriting, not the sound recording.   Songs have two copyrights -- the songwriting and the sound recording.  The songwriting copyright is usually controlled by a publisher, and will remain constant no matter which musicians have created a particular recording.  If Triller has used sound recordings without getting a Master's Use license, then it is possible there will be other lawsuits filed by record labels.  

Over the years, I have watched a good number of music start-ups fail and have to close up, and most of those were at least in part due to their lack of understanding of music law and /or their failure to get proper licensing for the music.  Music law is complex and most people do not understand it.  Further, music licensing is a gigantic, expensive pain.  

What makes music licensing such a pain?  First, there is no real central database that lists who controls what songs.  There are a mishmash of databases and they can be helpful, but there is no centralized registry.  Second, a song may have multiple songwriters, and each one may be represented by a different publisher, and by different publishers in different nations.  Third, since songwriters can move their songs from publisher to publisher, what is true one year may not be true the next.  Further, publisher merge, get bought up, go out of business, etc.  Songwriters die and their estates take over, and often the legal status of the publishing will be tenuous at best.  

So, let's say you have discovered which publishers control the songwriting / publishing rights to a song.  Let's say you eagerly want to get a synch license to use the song in a video.  Well, the publisher can say yes or say no, and they can even say nothing if they see you request as unworthy of a response.  Publishers always want to know a lot of information before granting a synch license, including which part of the song will be used in the motion picture, what the film or video will be like, who is producing and directing and starring in it, where it will be shown, how long it will be shown there, how many people will see it, and what the overall budget is and what the music budget is.  If the publisher grants the synch license, it can set any price and any terms it likes.  

With all that, how does an app negotiate to get synch licenses for thousands of songs, to be used in any way that the app users wish to use them?  As you see in this lawsuit, the easiest way is to skip getting synch licenses and deal with the consequences as they come.  Maybe that's not such a great idea.  Maybe music publishers should wake up and make themselves and the music they represent more available and affordable.  Use of a song in a video, even an amateur or fan music video, is good free publicity for the song -- usually, not always.  Sometimes a video can harm a song or do things the songwriter does not like, and that is one of the many reasons why publishers require information about the video before granting a synch license.  

Bulk licensing is possible, but a publisher rarely wants to deal with a music start-up company, with its finances as shaky as its reputation and future.  This is why, it seems, many music tech start-ups choose to ignore the complexities of music licensing.  The Wixen lawsuit complaint states, "The President and CEO of the National Music Publishers’ Association (NMPA), a trade group to which Wixen belongs, criticized Triller for not fully licensing NMPA members’ songs, stating that “Triller’s popularity is largely based on music. It boasts ‘millions of songs at your fingertips,’ however many of those songs have not been properly licensed. The pattern of tech platforms asking for forgiveness instead of permission to use songwriter’s work must stop. Triller must legitimize its business by properly licensing all music on its platform.” 

However, there are reasons that "tech platform" ask "for forgiveness instead of permission to use (a) songwriter's work." Those reasons, I think are lack of understanding of music law, lack of access to a music lawyer, lack of financial resources in the start-up phase of a company, and complexity in getting synch licensing and Master's Use licensing.

Wixen's complaint hopes to dispel any notion that Triller was unable to afford synch licensing by alleging that Triller has been lavishing money on its social media influencers.  "However, rather than pay Wixen and the songwriters Wixen represents to use their Works, Triller pays “social influencers” substantial sums of money and provides them with Rolls Royces, mansions (with housekeeping), weekly sushi dinners at Nobu, and, in at least one instance, a helicopter."  This is a no-go with Randall Wixen, who has built his business on being impeccably fair with his roster of songwriters.  

Wixen Publishing's website has a page called "How to Clear Music."  It includes a list of "How Not to Clear Music," which includes the admonition, "Don't chat up the receptionist."  None of this list (below) sounds like Wixen is open to negotiating with a music start-up for synch licensing of its songs en mass.  To the contrary, this all sounds intimidating, foreboding, and expensive.  Nothing says a music publisher has to be open to working with music apps or social media.  But, those platforms are the present and future of music, so it would seem a good idea to get on board with the things that music lovers enjoy today.  Just sayin', it might be more productive than filing lawsuits after the fact.  

This music street runs both ways and there is enough fault going around for everyone to take their share.  A songwriter and their music publisher do legally own the rights and control what can be done with their songs.  But it is the music fans who have made the songs what they have become.  Rejecting tech and social media platforms or making it nearly impossible for them to use music is the historical equivalent to if songwriters had refused to allow their songs to be played on a Victrola or record player, or on the new-fangled radio.  Music is being used in new ways, giving the fans the ability to create their own video media.  Will music publishers remain in their castle towers surrounded by a moat -- and don't chat up the receptionist on the way into the castle, please -- or will they get with the times? This remains to be seen.  

A lawsuit such as this one filed by Wixen is enough to financially kill off a platform like Triller.  I have seen many a music start-up killed off by the expense and demands of music licensing.  Will Triller and Wixen be able to work out a deal?  We'll all find out.  


How to Clear Music

  • Allow adequate time to obtain approvals.  In many instances, we have to track down a touring songwriter for approval of your request, and this can take time.
  • Provide us with complete written details of the proposed use.  For books, TV shows and films, we require plot descriptions and text pages showing the in-context placement of the proposed use.
  • Send your completed request via mail, FAX or by email to
  • Any proposed changes to a quote or license must be requested in writing.

How NOT to Clear Music

  • Don’t tell us how low your budget is.  If your request is approved, we will quote based on our perception of the fair market value, not your budget.
  • Don’t expect us to educate you in the clearance process or copyright law because you’ve never cleared anything before.  You should know what you’re doing before you contact us.  Consider hiring a clearance professional.
  • Don’t expect approval on a request just because you’re a bona fide good-deed-doing charity.  Many of our clients get dozens of charitable requests per week and they cannot all be approved.
  • Don’t ever send us a letter stating that if you don’t hear from us, you will assume that the use has been approved.  This will prompt an immediate and permanent denial.
  • Don’t change our forms of the terms of a license unless you have sent us a written request asking to do so, and we have approved such request.
  • Don’t chat up our receptionist.  It has zero bearing on whether your request will be approved or the speed in which your request will be considered.
  • No means no.  It is not an invitation to appeal a decision or send further information that you meant to send in your original request.
  • Don’t call our client or his or her manager or attorney directly to appeal their decision after receiving a response from this office.

Wixen v Triller Copyright i... by SusanBasko

Wixen Complaint List of Son... by SusanBasko

Response to Kanye West's Challenge to the Music Industry

Response to Kanye West's Challenge to the Music Industry

by Susan Basko, esq.

Kanye West recently tweeted out copies of the recording contracts he signed.  Like most artists that sign with major record labels, he found the contracts to be, essentially, a rip-off.  As with past complaints from other music artists, his main complaints seemed to be that the record label owned the copyrights to the sound recordings (Masters) and that the recoupment from royalties was never-ending and based on inflated costs.  These are the same complaints that have surfaced over and over again in the recording industry.

In response, I am tossing out a few ideas here:

The ownership of the Masters is how a record label owns anything.  The record label does not own the rights to the songwriting, as that is "owned" by the publisher.  To me, it seems that the record label could accomplish its goals by licensing the masters for a set period of time, rather than owning them.

Music artists who are dropped from their labels lose the right to distribute the music on their own.  Further, when record labels merge or shut down, many of the masters go dormant or are lost.  People or companies wishing to re-release the music meet practical and legal hurdles that cannot be overcome.  Back when a master was an actual hard metal platter from which vinyl records were pressed, the preservation and location of the master disc were of crucial importance.  

Today, with masters usually meaning an infinitely-copyable set of digital tracks or a mixed down version of those, the location of the tracks on a hard drive is also challenging.  Even if someone at a recording studio has been careful about organizing and naming files, and even if the studio is still intact (two real big ifs), does the hard drive still exist and is it still electronically accessible or has it become outmoded and inaccessible because of an outdated operating system or outdated hardware?  If every music recording studio or every record label had the practice of transferring files to updated technology every few years, the preservation and accessing of older music would be physically easier -- even if it was still a legal challenge.  Hence, we come to copyright law, which forbids the copying of such materials without permission of the owner of the copyright.  It seems that it would make sense to give such permission automatically in contracts, and to give this job to someone as a matter of course.  And by someone, I mean some responsible entity, not a person, since people come and go, and eventually die.  If the music dies with "that recording engineer who kept track of things," then the music is probably lost.

Then there are the legal issues.  Sound recordings in the U.S. did not have federal copyright protections until 1972.  Before that, the recordings were subject to a mishmash of state laws.  That is a massive amount of popular music and rock music from the 1960s heyday that were federally protected only in retrospect.  The practices of the major record labels are still based on these factors of sound recordings having a valuable platinum master and not having copyright protection.  There simply is no longer any need for record labels to be structured as they were.  

Some small independent record labels have been successful, but mainly if they are owned by a songwriter- music artist who is selling his or her own music independently,.  

The second main complaint mentioned by Kanye West, as well as by others who criticize the contracts of the major record labels, is that recoupment is never-ending.  In a nutshell, this is how that works:  A major record label signs an artist and gives them an advance, which is a loan, which is repaid through recoupment through royalties.  Costs and expenses, which are highly inflated and often imaginary, are also recouped.  The vast majority of music artists are not re-signed and make no more money beyond the first advance.  The few music artists that become financially successful hold down the fort for everyone.  This set-up is inequitable and top-heavy.

In the meantime, many really good songwriters and music artists long to be "signed."  They dream of being able to make their music, make enough money, and having someone else take care of the business, legal, and financial end of things.  

What are good answers to these problems?  Let's see if we can find some good solutions going forth.