Copyright: Waits V. Third Story

"I didn't think at this point in my life I'd be in a courtroom defending my songs, I'd rather be on stage or in a studio writing songs."

When Waits and Herb Cohen met in the L.A Troubadour in 1971, Cohen was already a settled rock manager/ label owner/ publisher and music business attorney. Over the years brothers Herb and Martin Cohen established a number of publishing companies all located at North La Brea Avenue in Los Angeles (probably part of Herb and Martin's law firm "Cohen & Cohen" or "Cohen and Luckenbacher"- unverified). All of Waits's songs were published by Cohen's Fifth Floor Music Inc. (later transferred to or incorporated by Cohen's Third Story Music Inc.).

In 1980 Waits was approached by Francis Ford Coppola to collaborate on the soundtrack for his upcoming movie "One From The Heart". Waits's label Asylum wasn't going to be involved in this project (Waits signed a one off deal with Copolla/ Zoetrope in July, 1980). Publishing of the songs however, was maintained by Cohen/ Fifth Floor Music. Apparently in 1980 Waits and Cohen also agreed on an amendment to their existing songwriting agreement, which included a clause prohibiting exploitation of Waits's songs in commercials.

The soundtrack for "One From The Heart" kept Waits occupied from 1980 through 1981. Actual recording of the soundtrack began in October 1980. As Waits was still signed to Asylum, he was probably obliged to deliver an album for 1980. So while working on the soundtrack, Waits took some time off to record his last album for Asylum (Heartattack And Vine) to be released in September 1980.

The $26 million production of One From The Heart opened in the US and Canada, February 1982 to lukewarm reviews. The soundtrack album sat on a shelf for months until legal wrangles with CBS were sorted out. It was released in Europe by CBS (Colombia Records/ Sony Music Entertainment) early 1983, published by Fifth Floor Music Inc. in the US and by Warner Chappell Music Ltd. in Europe.

Waits separated from Cohen/ Asylum/ Fifth Floor in 1983 (before the release of "Swordfishtrombones") facing a seemingly endless series of copyright related lawsuits.

In 1993 Cohen/ Third Story licensed the songs: "Heartattack And Vine" for a Levi's jeans commercial in Europe and "Ruby's Arms" for French ads for Williams' Gel shaving cream and "Opening Montage/ Once Upon A Town" for use in a Suchard Chocolate commercial in Argentina. Waits (seeking damages for "lost income" and "embarrasment and humiliation") sued Third Story claiming they violated the 1980 amendment to his songwriting agreement, which included a clause prohibiting exploitation of his work in commercials.

WAITS WINS RULING ON USE OF SONGS IN COMMERCIALS⁽¹⁾

September 10, 1994

LOS ANGELES: An L.A. Superior Court judge has reinforced Tom Waits' longstanding opposition to commercial use of his work, and awarded the singer/ songwriter $20,000 in damages for the "embarrasment and humiliation" that arose after his music publishers licensed two of Waits' songs for use in foreign TV ads.

In his tentative decision Aug. 23, Judge Harvey A. Schneider also ruled that Waits was entitled to recover any monies received by Third Story Music from the use of the tunes in the spots, but added that he was "unpersuaded" by expert testimony claiming that Waits' damages for lost income totaled $500,000, and found in favor of Third Story on that count.

Waits sued Third Story, the publishing firm operated by his former manager Herb Cohen and Cohen's brother, Martin, in March 1993. Waits alleged that the company violated a 1980 amendment to his 1977 songwriting agreement, which included a clause prohibiting exploitation of his work in commercials, by licensing the song "Heartattack And Vine" for a Levi's jeans commercial in the U.K. and the composition "Ruby's Arms" for French ads for Williams' Gel shaving cream⁽⁴⁾ (Billboard, April 17, 1993).

Schneider ruled that "Waits' consent is required before any of his compositions may be used in a commercial, irrespective of the amount obtained by [Third Story] for commercial use."

The judge added that a disputed paragraph in the agreement stated that Third Story was allowed to proceed without Waits' consent only if a song license pertained to "grand rights" (for usage in plays and films, but not commercials), and if such a license resulted in gross payments of more than $50,000.

Schneider wrote, "A songwriter, such as Waits, has a legitimate concern that his compositions may be denigrated by their use in commercials. It is for this reason that a songwriter who takes his material seriously might insist upon the absolute right to prohibit any use of his compositions in commercials."

However, in rejecting Waits' loss-of-income claim, Schneider said he was "not yet convinced that the use of Waits' songs in a commercial necessarily renders the songs valueless for further noncommercial exploitation."

Third Story attorney Evan Cohen, noting that Schneider found that Waits' consent is required for any of his songs to be licensed for commercial use, suggests that Third Story may contest the scope of the ruling. "This lawsuit only deals with Waits' albums written between 1977 and 1980, and deals with no other copyrights, and there are Waits copyrights not affected by this decision," Cohen says. "There are seven albums that are not affected by this decision."

Cohen believes that Schneider's decision will be made final in 20 to 40 days, pending a ruling on unspecified issues that Third Story will bring before the court. The attorney says that Third Story will appeal the decision.

The current decision marks Waits' second court victory in recent years stemming from his efforts to prevent his songs and distinctive musical style from being used in commercials. In 1990, the singer/ songwriter was awarded $2.5 million in a federal court action against Frito-Lay Inc. and its ad agency, which had used a Waits soundalike in an ad for Salsa Rio Doritos chips (Billboard, May 19, 1990).

Evan Cohen (1960) nephew of Herb Cohen, and lawyer for Six Palms Music Corp/ Third Story Music since 1985, later became the CEO of Manifesto Records, Inc. (the successor to Bizarre/ Straight Records). The first release of new material on Manifesto was the album 'Step Right Up: The Songs of Tom Waits' in 1995. They also released the tribute album 'New Coat of Paint', in 2000.

JUDGE SIDES WITH TOM WAITS, SAYS PUBLISHER CAN'T SELL SONGS⁽²⁾

December 20, 1996

LOS ANGELES: Tom Waits former music publishing company can't sell his songs to advertisers, a judge ruled.

Third Story Music, which held exclusive rights to Waits' songs from 1972 to 1983, claimed he signed an amendment to his contract in 1980 that gave the company commercial rights to the 14-song soundtrack from the movie "One From The Heart." But Superior Court Judge John Shook ruled Monday that Waits' original contract protected his songs from commercial use.

"I didn't think at this point in my life I'd be in a courtroom defending my songs," the singer-songwriter said. "I'd rather be on stage or in a studio writing songs."

Third Story's attorney, Alan Gutman, said he will speak with company executives before deciding whether to appeal.

Since 1991, seven lawsuits have resulted from Third Story's battles with Waits. Among other things, he contends that the company reneged on a contract by allowing two of his songs to be used for TV commercials overseas.

WAITS WINS LATEST SUIT OVER COMMERCIAL USE OF HIS SONGS⁽³⁾

January 11, 1997

LOS ANGELES: On Dec. 16, singer/ songwriter Tom Waits won another court decision here in his ongoing campaign to keep his compositions from being licensed for television commercials by his former music publisher.

Superior Court Judge John P. Shook prohibited Third Story Music, a Los Angeles firm operated by brothers Herb and Martin Cohen, from licensing any of Waits' songs from the 1982 Zoetrope Productions film "One From The Heart" for use in commercials for national or multinational use.

In late 1993, Third Story licensed the medley "Opening Montage/ Once Upon A Town" from the movie for use in a Suchard Chocolate⁽⁵⁾ commercial in Argentina, for a fee of $100,000.

Shook's decision came in a court case that combined an action filed by Third Story against Waits in May 1995 and a counterclaim by Waits against Third Story and Herb Cohen, Waits' former manager, filed the following month.

The judge's finding in Waits' favor made specific reference to a related court decision involving an exchange of suits between the musician and the publisher in 1993.

In that case, the singer claimed that Third Story had violated a 1980 amendment to his 1977 publishing agreement that prohibited commercial exploitation of his material by licensing the song "Heartattack And Vine" for a U.K. Levi's jeans commercial and the song "Ruby's Arms" for French ads for Williams' Gel shaving cream (Billboard, April 17, 1993). Third Story countersued, saying it was within its rights in granting the foreign licenses (Billboard, May 1, 1993).

In August 1994, Superior Court Judge Harvey A. Schneider rendered a decision in those actions, stating that Waits' contract forbade the licensing of his songs for national or international commercials. Waits was awarded income made by the publisher from the two ads and $20,000 for the "embarrassment and humiliation" suffered from the songs' use in the ads, but Schneider rejected the musician's claim for lost income (Billboard, Sept. 10, 1994). In its 1995 suit against Waits, Third Story maintained that under its agreement with Waits and the July 1980 agreement the musician signed with Zoetrope--which the publisher claimed as a contract that was "separate and distinct" from the amended publishing agreement--it could grant licenses for commercials if the price exceeded $100,000, without consulting Waits or securing his consent.

In his counterclaim, Waits cited Schneider's decision in the 1993 cases and depicted Third Story's Argentinian license as yet another violation of the publishing agreement.

Shook found for Waits following a bench trial of the 1995 suits in November and December. The judge ruled that the section of the amended publishing agreement forbidding commercial exploitation of Waits' songs was in force when Waits signed his 1980 agreement with Zoetrope and that the judgment in the 1993 court cases applied to the "One From The Heart" songs. Before his duels with Third Story, Waits successfully fought the misappropriation of his style for commercial use. In 1990, the performer won $2.5 million in a federal suit against Frito-Lay Inc. and its ad agency, which had used a Waits sound-alike in an ad for its Salsa Rio Doritos chips (Billboard, May 19, 1990). The judgment was upheld on appeal.

Prior to these lawsuits Waits had sued Cohen/ Fifth Floor Music for releasing demo tapes he had done for Cohen in 1971 (The Early Years, 1991/ The Early Years - 2, 1992). Though not related to the above lawsuits (exploitation of his work in commercials) it goes to show how hostile and agressive their relationship had become.

Notes:

⁽¹⁾ Source: "Waits Wins Ruling On Use Of Songs In Commercials": Billboard Magazine, by Chris Morris. September 10, 1994. Vol. 106 Issue 37. Section: Artists & Music. Transcript by Gary Tausch as sent to Raindogs Listserv discussionlist November 19, 1997

⁽²⁾ Source: "Judge Sides With Tom Waits, Says Publisher Can't Sell Songs": Associated Press. December 20, 1996. Transcipt by Robert Levy as sent to Raindogs Listserv discussionlist December 20, 1996

⁽³⁾ Source: "Waits Wins Latest Suit Over Commercial Use Of His Songs": Billboard Magazine, by Chris Morris. January 11, 1997. Vol. 109 Issue 2. Section: Artists & Music. Transcript by Gary Tausch as sent to Raindogs Listserv discussionlist November 19, 1997

⁽⁴⁾ Williams' Gel: formerly JB Williams Company, Inc., acquired by US based Combe Inc. in 2000. Further reading: Combe official site

⁽⁵⁾ Suchard Chocolate: Wilbur Chocolate Co. purchased in 1992 by Minneapolis based Cargill. Further reading: Wilbur Chocolate official site