< Back to latest news & events

News

Madonna Producer Succeeds in Royalty Appeal Against Warner Music

April 2019

A New York appeals court has held that Shep Pettibone, the producer of Madonna’s 1990 hit “Vogue” is entitled to back royalties from Warner Music Group, following a dispute over an indemnity provision in an agreement.

Background to Dispute

In 2012, a music company, VMG Salsoul LLC sued Pettibone and Warner for copyright infringement, arguing that Pettibone had copied a portion of the song “Love Break” and used it without permission in “Vogue”. Warner and Pettibone were successful in defeating this claim. However, Warner withheld over $500,000 in royalties due to Pettibone to offset the legal fees in defending the claim.

In April 2017, Pettibone brought a claim against WB Music Corp and Warner Music Group publishing division ‘Warner / Chappell’, claiming that the label and publisher had unfairly withheld his royalty payments.

Pettibone’s complaint was dismissed, with the court finding that the agreement with Warner provided that Pettibone’s royalty payments should be used to pay Warner’s attorney fees. A New York appeals court held on 17th April 2019 that Pettibone was not responsible for paying Warner’s legal fees in the copyright infringement case.

Contract with Warner

The section of the agreement dealing with the indemnity stated as follows;

“Each party will indemnify the other against any loss or damage (including court costs and reasonable attorneys’ fees) due to a breach of this agreement by that party which results in a judgment against the other party or which is settled with the other party’s prior written consent (not to be unreasonably withheld). In addition, [Pettibone’s] indemnity shall extend to the “deductible” under [Warner’s] errors-and-omissions policy without regard to judgment or settlement. Each party is entitled to be notified of any action against the other brought with respect to [the song “Vogue”], and to participate in the defense thereof by counsel of its choice, at its sole cost and expense”

Decision on Appeal

The appeals court found that under New York law, which governs the agreement, an indemnification provision cannot be enforced unless the intention to impose such an obligation is “unambiguous”.

The court held that the agreement was “pock-marked with ambiguity” and that on reading It appeared that the agreement provided that each party will pay their own costs and fees. The withheld royalties are estimated to be almost $1 million.

Advice for businesses

This case clearly illustrates that any legal agreement with a third party whether that be a supplier, customer or consultant should be as clear as possible to give effect to the aims of the business and legally enforceable. Without clarity in legal agreements (or poorly drafted indemnity provisions such as this), businesses can find themselves in similar positions– having to pay out large sums of money for issues that could have been avoided with careful legal drafting.

If you would like further advice on your legal agreements or copyright law issues please get in touch.

This update was prepared by HGF IP Solicitors Chris Robinson.  If you would like further advice on this or any other matter, please contact Chris.  Alternatively, you can contact your usual HGF representative or visit our Contact Page to get in touch with your nearest HGF office.

Latest updates

IP Ingredients, Part 13: Navigating Trade Marks in the World of Food and Drink Rebranding

In the dynamic world of the food and drink industry, rebranding can be a strategic tool used by companies to refresh their image, capture new markets, or adapt to changing …

Read article
Event - 9th May 2024

HGF's 10th Annual IP in Healthcare Conference 2024

We are delighted to invite you to HGF’s 10th annual IP in Healthcare Conference. This year’s theme focuses on emerging technologies. We will review the latest intellectual property issues and …

Event details

Crafting a claim for AI in medtech: Two case studies

As artificial intelligence creates a complex legal landscape for healthcare and medtech, Janine Swarbrick of HGF explores two case studies that shed light on how to claim an AI invention. …

Read article

Intellectual Property (IP) and its role in innovation during the energy transition

The shift from fossil fuels to greener energy will profoundly impact the profitability of many businesses in the energy sector. However, innovation has become an essential facilitator of the energy …

Read article

More than just ‘Patent Protected’: How Intellectual Property (IP) can fuel collaboration and growth

Traditionally, intellectual property (IP) protection is viewed as a mechanism to create a monopoly and exclude competitors. For example, patents give the owner the right to stop others from using …

Read article

HGF continues to grow with 7 new promotions

It gives us great pleasure to announce that seven members of our team have been promoted from Director to Partner. These promotions will be effective from the 1st of May …

Read article