Popular 1950’s singer, Dion DiMucci, better known as “Dion,” has filed suit against ZeniMax Media (“ZeniMax”) over use of his famous song, “The Wanderer” in television commercials promoting the popular video game, Fallout 4. Both the film and video game industry often license popular songs for use in promotional materials or even in the final media product itself. Such licensing agreements are often complicated legal agreements and may require different versions for different regions or markets, even if it covers the same licensed materials. For example, Netflix and other streaming services must often negotiate different license rights for each of the different global markets they operate in. As a result, it is also not uncommon for licensing agreements to require the consent of multiple parties or allow for separate addendums or side negotiations.

In the lawsuit at hand, DiMucci claims that ZeniMax illegally used his song “The Wanderer” without his explicit consent. Although DiMucci had contractually agreed to license his song through a contractual agreement with UMG Recordings, DiMucci claims that ZeniMax was still required, by contract, to negotiate with DiMucci before using the song. Specifically, DiMucci claims that the contract concerning “The Wanderer” allowed him to reserve the right to negotiate his own payment terms with ZeniMax. Failure to negotiate with DiMucci allowed him to withdraw consent altogether, if necessary.

As the most recent addition to a well-regarded video game series, Fallout 4 was a highly anticipated release. As such, television commercials showing scenes of a desolate wasteland and an armed protagonist while playing “The Wanderer” were widely released and often played. Fallout 4 is rated M for “mature” due to blood and gore, intense violence, strong language, and use of drugs. As such, DiMucci alleges that the ads and use of his song were objectionable.

In the lawsuit, DiMucci notes that he is not claiming that he would never have licensed the right for use of the song in conjunction with Fallout 4. Instead, DiMucci alleges that the right to negotiate his own terms was imperative because it could have allowed him to procure payment sufficient to protect himself against any loss of goodwill from having the song associated with a violent video game. As such, DiMucci is seeking general damages in excess of a million dollars.

While it is unclear how the court will rule on DiMucci’s claims, it is important to note that the use of popular media (i.e., songs, movies, etc.) in other entertainment works often requires the use of complex licensing agreements. While one party may believe that they have properly licensed a song or movie because of an agreement they are a party to, it is important to conduct due diligence about the asset in order to ensure that other third-party property rights are not violated.

As such, it is imperative for artists and companies alike to hire or consult experienced intellectual property legal counsel before launching massive media campaigns or rolling out final products.

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In addition to Thriving Attorney, Darin M. Klemchuk is founder of Klemchuk LLP, a litigation, intellectual property, and transactional law firm located in Dallas, Texas.  He also co-founded Project K, a charity devoted to changing the world one random act of kindness at a time.  Click to read more about Darin Klemchuk's practice as an intellectual property lawyer.