Second installment of Meet Team Texas. Brian sits down with Charles Wallace, entertainment and trademark attorney at Scale LLP, formerly Creedon PLLC, with a parallel life in theater, music, and DFW's club circuit. The conversation covers the questions creative clients ask most often: who owns this work, can I use someone else's, and what does 'work made for hire' mean? Plus the four-factor fair use test, retroactive assignments, and why music shows up in nearly every entertainment practice.
Original works of authorship, creative expression that is fixed in a tangible medium. Copyright exists the moment you create the work and fix it; registration is not required for the right to exist, though it is required for litigation and statutory damages. Facts, ideas, and utilitarian features are not protected by copyright (they fall under patent law or remain unprotected).
A work where two or more people each contribute original, creative elements. Each joint author independently owns the whole work, can exploit it, transfer their interest, and license it, but must account to the other authors for any profits. In practice, joint works are messy to enforce and clean up; better to assign or disclaim ownership upfront.
A statutory concept under Section 101 of the Copyright Act. When work qualifies as made for hire, the commissioning party (employer or contracting party) is considered both the owner AND the author of the work. The specific magic words from the statute must appear in writing for non-employee situations. Employees creating work within their employment scope automatically create WMFH without separate documentation.
Yes. If parties intended at the time of creation that one party would own the work but never papered the assignment, a written retroactive assignment is enforceable. This is a common cleanup tool before deals, filings, or registrations.
If the side project has nothing to do with the employer's scope of business or the employee's job description, the employee owns it, even if it was created during work hours. (The using-work-time issue is a separate employment matter, not an ownership matter.) If the side work is within scope of employment, the employer owns it automatically as WMFH.
A four-factor balancing test that determines whether otherwise-infringing use is excused. Purpose and character (commercial vs educational, transformative vs reproductive). Nature of the original (factual works get less protection than creative). Amount used and substantiality (small portions or the 'heart' of the work). Effect on the market for the original. No single factor controls; courts weigh all four.
The U.S. Copyright Office portal is user-friendly, but the application asks technical questions, is this a work made for hire, who is the author, is this published, where wrong answers can invalidate the registration. For meaningful or commercially valuable works, attorney involvement protects the registration.
Lightly edited from auto-transcription, ad reads removed, paragraphs grouped, speakers attributed via heuristic. For exact attribution, listen on Apple Podcasts, Spotify, or via the embedded player above.
Brian Elliott: 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. Learn more at scalefirm.com. Hi, everybody. Welcome back to Y'all Street Law Podcast.
Chuck Kraus: I'm your host today, Brian Elliott at Scale LLP. And today we're going to kick off a new mini series that we call Meet Team Texas. Scale has now 10 attorneys in Texas and we had already featured on the podcast Shannon Strawn in Houston who talked with us about her practice in NIL. And today we're excited to bring my colleague Charles Wallace into the studio.
Brian Elliott: Charles is a lawyer who straddles the worlds of entertainment law, intellectual property law, and has a very diverse and eclectic background. And with that, I'd like to welcome Charles. Charles, tell us a little bit about your practice. Thanks so much, Brian.
Chuck Kraus: 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 of years now.
Brian Elliott: We merged from our previous firm, Creedon PLLC. I came over with James Creedon and Shannon Strawn, 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.
Chuck Kraus: Well, Charles, why don't we start at the top and tell us, how did you get interested in this area? Have you always been an entertainment lawyer? Give us the background. I have not always been an entertainment lawyer, no.
Brian Elliott: In fact, I did not always want to go into the world of the law. I grew up in the arts. My parents met in theater. I met my current wife in theater.
Chuck Kraus: I have always just wanted to eat, sleep, and breathe the arts and theater. And I've really, really needed that output in my life as an entertainer and an artist myself. And no, I kind of fell into the world of the law through kind of a funny story. But yeah, I've been acting in theater production since I was seven.
Brian Elliott: I started a band when I was 14. I was the front man and guitarist for a few different bands,. But yeah. Put in there.
Chuck Kraus: 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. My practice is pretty broad, but at the same time, focused on the worlds of entertainment and branding specifically.
Brian Elliott: If we have time today, I would like to 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. 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. You bring a lot of credibility to your clients, having been there and really participated in, I heard you list off nearly every aspect of the arts, and it's quite impressive, and I'm sure your clients are going to get a lot of value out of it.
Chuck Kraus: Talk to me a little bit more about your clients. Are you servicing mostly Texas clients? You're here in the Dallas-Fort Worth area. Do you have national clients, international?
Brian Elliott: What's the makeup? 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 Creed and PLLC prior to coming here. We were very, very active in the local population.
Chuck Kraus: We would make sure that we were out there for community events as much as possible, making sure that we were showing our faces and saying, look, we're wanting to help local businesses, so definitely 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. That's great. What are some of the common issues that come up that you help your clients with on a daily basis?
Brian Elliott: 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 reign to distribute, to produce, to make derivative works, sequels, just to really do anything, to monetize.
Chuck Kraus: And many times people don't truly understand when they work with someone or when they have a handshake arrangement or whatever, who owns the work? 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 want to do something with it, tell me how, and I have to say, well, hang on, let's roll it back a bit. How did you create it?
Brian Elliott: Who all was involved? Was anything signed? You know, 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.
Chuck Kraus: Doesn't matter if you created something with a very close friend, even with a family member, even with maybe an employee, if this wasn't created within the scope of the employment, or, you know, if there wasn't something 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 going to reach out directly to this very prominent public figure and try to get a license agreement.
Brian Elliott: 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.
Chuck Kraus: 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. 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.
Brian Elliott: 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 a performance artist, you're going to be using music, unless you're a mime. Unless you're a mime. Well, even then, even then, there's still music backing you up.
Chuck Kraus: 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 going to be publicly performing it, whether you're going to be syncing it with a film, whether you're going to be distributing materials later on that incorporate some of that music. That's kind of what I would like to look at. Yeah.
Brian Elliott: So Charles, why don't you do that for us? 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. Absolutely. So let's hop into it.
Chuck Kraus: 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, can I trademark my work? Can I copyright my name?
Brian Elliott: People get these mixed up, get these various parts of IP mixed up. So first, for copyright protection, a copyright exists the moment you create something. Copyright protection exists for creative works that are defined as original works of authorship. What does that mean?
Chuck Kraus: That's really something that is 100% 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. That's more in the realm of patent law, but something that is creative, something that is visually or orally pleasing, creative, artistic. And the second part is it has to be fixed in a tangible medium.
Brian Elliott: And all that really means is it exists. It's something that is more than transitory. You're able to perceive it. You're able to view it and you're able to consume it.
Chuck Kraus: 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.
Brian Elliott: 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 and good for copyright protection. And then I think we're going to get into this, right? But a lot of creative people work with others and work on teams. So you have lots of people, groups working together and the creative process is often not just one person working alone.
Chuck Kraus: How do you talk to your clients about the ownership issues as it relates to a group process of creating, say, a song or a screenplay or something like that? 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.
Brian Elliott: It's a collaboration. And that happens a lot. I can't tell you how often times I've got clients coming in saying, I created this with this one other person. I want to get protection in it, put my name in there.
Chuck Kraus: And we have to just say, well, hang on. What did the other person 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 client and the the additional party.
Brian Elliott: And so with the joint work, it... is literally owned by both individuals. Well, I mean, we'll say, we'll use an example of just two 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, they can transfer their entire ownership interest to another person without the other person's consent.
Chuck Kraus: So imagine creating something with someone else, they can 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. So there's still a follow up accounting that you have to do, hey, look, we made this much money, you know, we're going to, we're going to subtract our expenses and other deductions.
Brian Elliott: But you know, 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.
Chuck Kraus: 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. 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 a copyright office, it just becomes a little bit of a mess when it comes to enforcement. And like I said before, accounting for any, 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.
Brian Elliott: 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'm gonna 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, 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.
Chuck Kraus: And I think probably a good example. the entertainment world is things that I have created, designs that I've created while working in theater, you know, set designs, designs on or for costumes. Those belong to the employer at the moment they're created. But what happens if you're not an employee?
Brian Elliott: And in fact, I think theater is a great example. In theater, most of the time you are getting independent contractors. You're getting non-employees to come in and create things for you. And that situation normally absent a written agreement, because they're not an actual employee, what they create would belong to them.
Chuck Kraus: They would be granting an implied license maybe for the theater to use the work, but they would 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. We call them the magic words. This work is going to be considered a work made for hire under section 101 of the Copyright Act.
Brian Elliott: 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?
Chuck Kraus: Notwithstanding that you weren't the one creating it, the actual artist was, but you are the author. You're considered the author and the owner. 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 were involved were thinking, okay, 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.
Brian Elliott: 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. with its tech-driven approach, check out the website linked in our podcast bio.
Chuck Kraus: let me ask you this charles what uh so we're talking about in the employment context right and what what are what are the um the contours of the requirement of the commission 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 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 um 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 you know 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 it's outside the scope that's that's a totally separate issue that's that's an employment issue um but uh you would own the the ip the copyright in that work so yeah and interesting uh interesting question yeah i mean look where where can this take us right in terms of uh like do you have any any kind of you know war stories you want to share about you know lessons learned uh in this area yes i do i've um i 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 it is very user-friendly but there are there are a lot of um specific nuances that you need to know about because if you file an application in the incorrect way if you if you check a uh 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 you know what does it mean well charles you touched on this before i do want to get to this um you know the the we we we talked about this concept of of fair use and i think that you know this is such a big area we we do it comes up all the time you know what can i use how how can i use it kind of uh you know give us a framework that our clients can start to think about fair use and um you know walk us through how you would approach it yeah absolutely so how you would approach it how you would approach it how you would care to do quick 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?
Brian Elliott: And the answer is always maybe. It really just depends on the context. 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.
Chuck Kraus: 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. There's four of them.
Brian Elliott: 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 portions of films or music or show pieces of art in an educational context.
Chuck Kraus: 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. 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.
Brian Elliott: 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.
Chuck Kraus: I got to 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. Without getting too deep into that, you are absolutely correct. I am of the legal mindset that things are black and white. Facts are facts.
Brian Elliott: 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.
Chuck Kraus: And in another way, even if something doesn't maybe have 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. 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?
Brian Elliott: 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. So those are typically the four things that we look at.
Chuck Kraus: 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?
Brian Elliott: Well, it's always an infringement, but an infringement that is not considered fair. It's really just dependent on the very, very specific situation. You have to balance all of these elements. No single element is dispositive here.
Chuck Kraus: So it's always very fact-specific. 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?
Brian Elliott: It's really dependent on what the client needs. Obviously, if the client comes to us and they say, I 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.
Chuck Kraus: That happens all the time. But I also have clients coming to me all the time saying, I want to use this. Is this considered fair? And my question always is, well, let's see if we can get a license.
Brian Elliott: 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. Really, it's just we can do that as a forecast as well. It seems like it's ultimately a risk analysis, right?
Chuck Kraus: That creatives have to go through and understand where the factors are that they can reasonably rely on based on how the courts come out on certain issues. 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?
Brian Elliott: Sure. Yeah. So just beyond clients coming to me and saying, do I own this? Or how can I own this?
Chuck Kraus: 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.
Brian Elliott: Like I said earlier in this discussion, many artists and many creative types deal in the world of music music at some point because it's a lot. language that we all speak. It's something that we can all feel and something that we can all relate to no matter where you are. It transcends all cultures, no matter where you are geographically.
Chuck Kraus: We all get it. Music is super important to the world of art. 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.
Brian Elliott: It's a pleasure to have you with us on Team Texas. 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. There's so much to cover. I think that we certainly look forward to that.
Chuck Kraus: Do you have any parting thoughts or words of wisdom that our audience can take away? 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 work is always your baby.
Brian Elliott: You always want to make sure that you protect it. That's all well and good. You have to be thinking about yourself as well, your personal brand, how you're bringing it to market. The best way of doing that is to contact an attorney skilled in this area.
Chuck Kraus: I'm always happy to talk with clients off the record just to get an idea of what it is that they like and what it is that they love and what it is that fuels them. Honestly, you said it right. I love my area of work and it's really the clients that keep me going. Thanks so much for sharing some time and some thoughts with us.
Brian Elliott: It's been really, really valuable and we'll talk again soon. Thanks for having me today, Brian. For more insights and updates, visit www.scalefirm.com or follow us on LinkedIn. Thank you.