Biederman Blog - The Latest in Entertainment and Media Law
The Biederman Blog is an academic activity of law students at the Biederman Entertainment and Media Law Institute at Southwestern Law School. It posts about timely, intriguing developments in Entertainment and Media Law.
Legal fees for entertainment projects in Los Angeles are costly and daunting. But they’re necessary to protect valuable intellectual property, deal with big risks of creative enterprises, and help filmmakers and their associated talent excel. Still, what would it mean to artists in the movie industry, especially innovative auteurs working with smaller budgets, if they could get needed legal counsel at no cost?
Just such assistance is available from Entertainment Law students at Southwestern Law School in Los Angeles. Under the close supervision of five seasoned and expert attorneys in the field, the aspiring counsel, in a highly competitive course, “Entertainment & The Arts Legal Clinic,” seek to hone their skills and capacities by providing production legal and business affairs services for entertainment clients, including: drafting clearance reports; personal service agreements for producers, actors, and other principal crew; location agreements and releases; and documentation of underlying rights and chain-of-title.
Jay Gendron, a former Warner Bros. executive and Showtime consultant (see full bio below), sat down recently with Biederman Blog Editorial Board member Carla L. Martin to discuss his work overseeing Southwestern’s Entertainment Law clinic (full disclosure: she’s participating in it this term):
Question: What kind of client approaches the clinic, and why don’t these creatives turn instead to many Entertainment Law practitioners in town?
Answer: A typical client who approaches our clinic is one with a low-budget production, either for TV or film, who can’t afford to add $20,000 or $30,000 in their budget for legal and business affairs related to their production needs.
Q: Does the clinic take away business from Entertainment Law practitioners, particularly in LA?
A: Not really. What happens is that a lot of times we get matters that lawyers say, “This client can’t afford me,” simply because their hourly rate is just too high. Or, lawyers can’t take these clients on due to a conflict of interest. We have certain clients who have accounting issues with studios, and other attorneys don’t want to take on them on as clients because they have accounts or relationships with those same studios. We are independent, so we can take on those clients and do the work for them, and for free.
A: The whole Biederman Institute has a strong Entertainment-legal presence in this town, and the clinic’s success flows from that. So many of our clients discover us through word-of-mouth, typically one client will talk to other filmmakers and then they reach out. We aren’t lacking for clients. In fact, some of our clients have their movies, with our logo at the end, available now on Amazon and on Netflix, and another client’s film is being considered at the Cannes Film Festival. We are very proud of this, and hopefully we will get the word out.
Q: Have there been any notable outcomes or success stories, for clients and students involved from services provided by the clinic?
A:. We have at least 10 former students working at studios or agencies or with law firms that we may refer matters to. A high percentage of our students who work within the clinic find successful placements just a couple of years after working in the clinic. For our clients, many of them find distributors and we are proud when that happens, too.
Q: What sorts of challenges do aspiring lawyers in the clinic encounter, and how might these challenges not only be helpful but also shed light on useful approaches for practicing Entertainment lawyers?
A: There are five [experienced and working] attorneys sitting here most days, and we often have fundamental differences on how to handle many of the issues that come our way. On any given day, you can witness conflicting views from these different attorneys, but this is a great learning experience. Students can draw from those discussions on how they want to approach a problem, and they realize that they should have the confidence in their own view because there isn’t just one way.
You also learn how to deal with new clients, most associates never get the chance to do that. Here, you speak directly with the clients and you get to decide whether or not you want to take on a client almost every week.
Q: How much money roughly might the clinic save clients with the services it offers?
A: On any given film, it can range depending on the size of its budget. Most of the legal services we provide to them for free would be billed by a law firm at their full rate ranging anywhere from $10,000-$20,000, or even from $20,000-$30,000.
Q: You mentioned the working professional colleagues besides yourself at the clinic. Can you tell us a little more about them?
Prof. Gendron spent more than 20 years at Warner Bros. Television, most recently as vice president of business affairs, where he served as the primary point person for negotiations for writers, producers, directors and actors for the world’s largest supplier of prime time scripted television. In this position, he handled all aspects of television business affairs including network license agreements, rights acquisitions and A-Level overall writer/producer agreements.
Prior to that, he was vice president of legal affairs, and oversaw all legal aspects of production, rights acquisitions, co-production agreements, distribution agreements, negotiation/drafting of contracts, and garnered court approval of minors’ contracts. He also drafted seminal development, license and termination agreements for The WB network.
Before he joined Warner Bros. in 1991, Gendron was the director of legal affairs at Lorimar Television. There, he served as production counsel, primarily handling network license agreements and clearance matters. Earlier in his career, he was an attorney with the firms of Leopold, Petrich & Smith and McCutchen, Black, Verleger & Shea. While in law school, he was editor of the Duke Legal Research Program. He also took part in the Fourth Circuit Court of Appeals Oral Advocacy Project and served on the Moot Court Board. He earned his bachelor’s in government-international Studies, at University of Notre Dame, and his juris doctor at Duke University.
That’s one way to look at the decision this fall by the U.S. Court of Appeals for the Ninth Circuit, which delivered a blow against those who may have looked at a too-easy means, purportedly, to crack down on those who may try to purloin digital materials.
The federal appellate judges affirmed a lower court’s dismissal of a lawsuit by Cobbler Nevada LLC against Thomas Gonzales. He was the owner of an IP address used to illegally download The Cobbler, an otherwise eminently forgettable and poorly reviewed 2014 film starring comedian Adam Sandler.
Now, there’s a big and genuine argument to be made that, unlike other forms of copyright infringement, digital piracy has gained a widespread social acceptance and has gotten out of hand. Too many netizens seem to have disassociated the act with the label of copyright infringement or theft altogether, and some even speak openly about it as if it were not those things. Although most still do “make the distinction between piracy for personal use and piracy for profit,” which the majority find to be unacceptable, digital piracy is a financial drain and a bane for creatives and companies — especially movie studios and music companies — that rely on their content.
That said, the appellate judges noted that Cobbler picked a peculiar internet user case to pursue with such zeal. Gonzales, in Portland, Ore., was the IP address owner, but the net service in question was for an adult care home. He apparently blew off Cobbler’s attempts to contact him about what the company asserted were multiple illicit downloads of its product.
Later, Gonzales and the facility tangled with Cobbler over disclosure of information about the identities of workers and residents at the home — many of whom had access to the facility’s net service. The defendant, citing privacy and First Amendment concerns, told Cobbler to use a little shoe leather or figure other ways to obtain the contested information.
Gonzales eventually stood as the sole named defendant, with assertions of infringement targeted at him just because his name was listed as the IP address owner. A federal magistrate gave the complaint the boot, as the appellate judges now have.
The ruling, which also upheld the award to Gonzales of attorney fees, may be yet another discouragement to plaintiffs without sound infringement cases to pursue defendants based on IP addresses alone. The practice has been legally fraught for a while, especially because of the notoriety attached to it, notably in mass John Doe lawsuits, due to the activities of the now notorious Prenda Law firm.
Prenda, in cases involving dozens of little-identified defendants at a time, sued internet users with a taste for blue movies in what one appellate judge, he a Southwestern Law alum, described as a “legal shakedown.” The firm knew that, rather than risk embarrassment over their naughty viewing habits, defendants, especially if the courts forced internet service providers to identify them, would “settle” with Prenda and its purported porn movie maker clients for hundreds of dollars each or more. Prenda partners since have sanctioned, criminally charged, convicted, and jailed for their schemes.
If you’re a fan of classic video games, you have probably heard of ROMs (read only memory). A ROM also is a digital image of a video game or other software that a player can display and manipulate via other software known as “emulators.” For example, a player can download emulator software onto her device and then download a ROM of the Super Nintendo title “Super Mario RPG,” and play the game to her heart’s content.
The ROMs are a popular and prized way for some fans to access classic video games that may have slid off the market, according to media coverage of the controversy.
However, no one pays for these ROMs and the ROM websites make the software available without the publisher or other copyright owner’s permission.
Nintendo, one of the largest video game publishers in the world, recently took notice of these ROM’s and filed a lawsuit (tip of the hat to TorrentFreak for posting it online) for copyright infringement, trademark infringement, and unfair competition against two of the most popular ROM websites: LoveRetro and LoveRoms. Both sites have since shut down.
However, a simple Google search will uncover dozens more ROM websites that remain active.
Nintendo asked for compensatory and incidental damages, as well as statutory damages, which can total up to $150,000 per infringement for each copyright violation and $2,000,000 per infringement for each trademark violation. The lawsuit is still in its nascent stages, however, if successful, it could herald a major change in the internet landscape, as online media coverage shows (see here and here and here)
Photo credit: Defunct LoveRetro web site, as shown in filing in U.S. District Court in Phoenix.
To decompose this claim requires pulling a stop on this legal instrument: Rest assured that Bach’s music, enshrined in the classical canon, also rests square in the public domain.
But, as it turns out, Sony holds copyrights on Bach recordings by legendary pianist Glenn Gould (1932-1982), and protections of these derivative works can be enforced under the law. That may explain, for a few bars, why Sony tried to put a rest to Rhodes’ Facebook video with a take-down notice.
Still, the matter remains as muddled as a modern orchestra performing without a maestro. Rhodes’ video also was a derivative work, because he, too, performed on the piano and he didn’t play Sony’s music in the background, meaning there doesn’t seem to be a viable infringement claim against him. At least he thought so.
But after Rhodes, a Warner Bros. recording artist, tried to appeal Sony’s claim to Facebook, the online giant denied him once again.
Reasonable people may differ, but, as described by the Electronic Freedom Foundation, Facebook’s disharmony with the pianist may be blamed on machines and not discerning men and women. The Menlo Park, Calif.,-based company employs automated software to process take-down notices filed by companies and individuals. Computers likely scanned registered recordings in a database, finding 47 seconds of matching material. A tone-deaf algorithm, playing solo and without human oversight, silenced a human expression, a virtuoso’s interpretation of a masterwork more than two centuries old. The legality of this may be as complex as an augmented 13th chord.
That’s because the 1998 U.S. Digital Millennium Copyright Act purportedly modernized copyright for the 21st century, requiring take-down notices to be sent with wording, insisting that the claim was issued with a “good faith belief” of impermissible use of copyrighted material. Failure to follow this procedure can leave the copyright holder liable for misrepresentation.
That Facebook take-down notice, as issued to Rhodes, surely stated it was made with a “good faith belief.” That’s because corporate lawyers know better: The DMCA requires this, because it makes nearly impossible any attempt by a plaintiff alleging misrepresentation, if disputing this element is the only remedy for frivolous infringement claims.
In Lenz v. Universal Music Corp., the U.S. Court of Appeals for the Ninth Circuit expanded the DMCA definition to try to fix this issue. The appellate judges required copyright holders to perform a fair-use analysis in their infringement determinations before issuing take-down notices.
But here’s the caveat: §512(f) imposes liability on only those who “knowingly materially represent that material or activity is infringing.” Therefore, to find a copyright holder liable for misrepresentation a jury would have to find the copyright holder formed a subjective good faith belief that the infringing material did constitute fair use and sent the take-down notice anyway.
Proving subjective belief creates a high burden. Therefore, a plaintiff like Rhodes could only prevail where there is evidence Sony entirely or almost entirely failed to consider fair use, while any oversight or carelessness would not be considered.
But what if that oversight or carelessness resided in a computer with faulty algorithmic engineering? How then could a court or jurors determine a copyright holder’s liability when the subjective “good faith” belief whirs in a computer processor? Can courts even get past the DMCA’s “good faith” requirement with automated systems if their capacity for bad faith can’t be proven? Do big companies like Sony and Facebook actually want to keep humans out and their computers and algorithms in and humming on take-down claims because they, effectively, have a classic, blame-the-machine legal defense and safe harbor? Shades of Hal 9000, the Matrix, and Skynet.
There’s more software to sing about in this saga, though, as Rhodes took to Twitter-shaming and emailing human beings to restore his video clip — moves that helped a musician who has been written up in major newspapers and whose difficult life story has been the subject of a British documentary. He says he’s still upset with his Facebook-Sony experience, which hit the right note after all with his clip posted in full, because he asks what happens to artists with less persistence and clout than he has?
EFF also took up his cause, in part, because the organization that advocates for humans’ civil liberties on the internet has expressed concern about new laws in the European Union that would mandate uses of automated filters for various reasons. The EU Copyright Directive, notably its articles 11 and 13, may “break the internet,” critics contend, and many more creatives, besides Rhodes, may have reason to complain, loudly.
Photo credit: from ‘Love in London’ video of James Rhodes’ performance of ‘Chopin — Presto from Sonata N0. 3, Op. 58’
The Jackson case dates to 2010 and the release of Michael, an album that rocked the worlds of fans and the late superstar’s family, to start, simply because it was an issue by a recently deceased artist.
In fact, not only was the public confused as to its authenticity, the Jackson family was dazed, too, about the album. Taryll Jackson, the son of the late pop king’s brother, tweeted: “I know my Uncle’s voice and something’s seriously wrong when you have immediate family saying it’s not him.”
Then, in June, 2014, Vera Serova, a Michael Jackson super-fan and then UCLA law student, filed a class-action lawsuit against Sony Music and Jackson’s estate for misrepresenting that Michael consisted of entirely original songs by Jackson with him as the lead singer. Serova asserted that three songs were not actually Jackson’s voice but rather that of impersonator Jason Malachi. The suit asserted that the defendants, with the album’s release, violated the Consumers Legal Remedies Act and Unfair Competition Law.
A trial court ruled in Serova’s favor, finding that album representations, such as its cover (shown above) and a promotional video for it (click on photo to play) pointing to Jackson as its creator and singer, were commercial speech subject to regulation.
But, years later now, judges for the Second District Court of Appeals for the state of California disagreed, overturning the lower court ruling. The appellate judges found that the contested statements on the album cover and in the promotional video were non-commercial speech, outside the scope of the consumer protection claims asserted by Serova.
Instead, the higher court judges, found they are protected by the First Amendment, as they addressed the public controversy over the album and its main artist. Administrative Presiding Justice Elwood Lui explained: “Because appellants lacked actual knowledge of the identity of the lead singer on the disputed tracks, they could only draw a conclusion about that issue from their own research and the available evidence. Under these circumstances, appellant’s representations about the identity of the singer amounted to a statement of opinion rather than fact.”
With blood, sweat, and tears, a quartet of California artists pursued their vision, winning over decades international critical attention and praise for their paintings and sculptures. But should these creators also be allowed more insight into their dealers’ pricing and a share of the rising profitability of their one-of-a-kind works?
Under this “right,” which the Golden State pioneered and became the only state to adopt as the 1977 California Resale Royalty Act (CRRA), the court noted: “[A]rtists receive a royalty each time the original, tangible embodiment of their work is resold. The practice was first recognized in France in 1920 and then adopted in other civil law jurisdictions. More recently, a number of common-law jurisdictions have adopted some form of the droit de suite. In those countries that recognize it, the droit de suite is
considered a moral right, albeit one with economic value.”
The CRRA provided that a seller of art in the secondary market must pay a resale royalty of 5 percent, if the seller resided in California or the sale took place in California, as long as the artist was a U.S. citizen or California resident.
But artists came to recognize that this act was rarely enforced, and big dealers, the creatives claimed, were less than forthcoming about later sales of creative works. Their frustration boiled up when, knowing their pieces had become exponentially more valuable over time, the works also found new markets online and artists had no idea where their pieces were going, for what prices, and to whom.
This led to lawsuits from foundations and estate representatives of renowned painter Sam Francis and sculptor Robert Graham, as well as Chuck Close, a painter and photographer (shown at work in photo above), and Laddie John Dill, a “light sculptor.” They sued major dealers, including Christie’s, Sotheby’s, and eBay, accusing them of violating the CRRA and owing them royalties.
The case took lawyers, judges, and the courts through an extensive examination of copyright law and droit de suite.
In a previous round, the dealers asked the courts to consider whether the CRRA and the artists’ claims conflicted with the Commerce Clause of the U.S. Constitution. These arguments were dismissed at the federal district level and went up on appeal, where a three-judge panel heard arguments but balked at issuing a ruling. Instead, the appellate court ruled en banc, tossing big parts of CRRA over how it tried to extend California regulation of art sales beyond the state’s borders.
In this round, the dealers turned to yet another argument, contending the artists’ claims were preempted by the Federal Copyright Act of 1976. That argument prevailed against other aspects of the remaining lawsuit, in the U.S. Court of Appeals for the Ninth Circuit, with judges Danny J. Boggs, Jay S. Bybee, and Paul J. Watford presiding.
Bybee wrote for the court, noting that the California law was passed about the same time the U.S. Congress amended the Copyright Act. Under the first sale doctrine, codified in the 1909 Copyright Act and reaffirmed in the 1976 Copyright Act, an artist has the right to receive payment on the first sale only. That conflicted with the CRRA granting artists the right to receive a percentage payment on all sales of artwork after the first sale.
“The CRRA,” Bybee explained, “is designed precisely to alter the first sale doctrine by affording artists a right to at least some measure of payment on every sale after the first. At the same time, the CRRA also restricts the federal distribution right by forbidding artists from fully alienating copies of their artwork. In effect, the CRRA creates an inalienable restraint on alienation.”
Artists who sold major paintings or sculptures in California in 1977 caught a lucky break under the CRRA’s royalty rules: The appellate judges found that those sales were not expressly preempted, nor were they preempted by conflict preemption. The affected sales occurred between the CRRA’s effective date of Jan. 1, 1977, and the 1976 Act’s effective date of Jan. 1, 1978.
The Ninth Circuit’s droit de suite ruling is the second in recent months in which appellate judges considered conflicts between U.S. copyright law and international practices. The circuit, which holds sway over one of the nation’s leading region for entertainment (Hollywood) and intellectual property (Silicon Valley) recently booted an attempt to extend droit moral in American copyright. It’s the notion accepted in other countries that give creatives protections for their artistic reputations and others changing or using them to the detriment of their works’ integrity.
Location, location, location— that’s the mantra to describe what matters in real estate, whether for frenzied buyers in overheated markets or posh agents pushing hot properties. But beyond a sizzling, just-so-wonderful address, another set of digits and data in contemporary real estate has just come under appellate court review. And CoreLogic Inc. has dashed to a perfect photo finish on these numbers at the U.S. Court of Appeals for the Ninth Circuit.
There, appellate judges affirmed a lower court’s grant of summary judgement in a case involving photographers and their complaints about CoreLogic’s removal of embedded copyright management information from their photographs posted online of real estate for sale.
The shooters said that erasing that metadata violated 17 U.S.C. § 1202(b)(1)-(3).
Let’s bring this case into sharper focus: Agents often hire photographers to create alluring portraits of houses for sale. Some of these photos are embedded with metadata that can only be viewed with specific computer software. This feature is automatic and describes key photographic matters such as the camera shutter speed, light sensitivity and location where a photo was taken.
CoreLogic develops and provides software like Matrix, InnoVia, Tempo 4, and Tempo 5. This software resizes images when necessary to accommodate large files, including photos, so they load and display faster and easier, say on websites. But the programs also unintentionally delete those invisible metadata marks.
After receiving shooters’ initial gripes about this, CoreLogic modified its programs to ensure automatically generated metadata would not be erased. The photographers’ lawsuit continued, since the programs still removed manually entered metadata.
The photographers further argued in their suit that, when metadata was excised, this erased a way for them and others to track and prove infringements by users on their copyrights.
Let’s look, first, at a key part of the invoked statute:
17 U.S.C. § 1202(b)(1) provides that that no person shall remove or alter any copyright management information…. Knowing, or … having reasonable grounds to know that it will induce, enable, facilitate, or conceal an infringement of any copyright.
The appellate judges concluded that by bringing a Section 1202(b)(1) claim, a plaintiff must provide evidence that future infringement is likely as a result of the removal or alteration of the metadata. Specifically, the court emphasized the lack of any detailed evidence that removal of metadata will impair future infringement policing.
The company put up a Brammer time-lapse photo of the Adams Morgan neighborhood in the nation’s capital, having seen the widely posted and uncredited shot and believing it unprotected by copyright. But Brammer made both an infringement claim and contested how he said Violent Hues, in its posting, erased copyright metadata embedded in the contested shot.
Hilton found that Brammer had failed to pursue his metadata claim and that Violent Hues had made fair use of his photo by using it in transformational fashion, switching from the shooter’s original promotional and expressive use to a means of providing public information about the area near the film fest.
A tip of the hat, by the way, to Loeb and Loeb for making the Hilton ruling available online, and for its analysis of the case.
The latest legal kerfuffle for Roberts, a Grammy-nominated rapper aka Rick Ross, involved another pseudonym he uses, the Mastermind, which the appellate judges found may infringe on mark rights of Raul Caiz, a California hip-hop artist. Caiz rapped to the federal court in his 2015 suit that he held the Mastermind mark, and asserted that a crew wrongfully used it. He named Roberts II, Def Jam Recordings Inc., Mayback Music Group LLC, and Universal Music Group Inc. in his infringement action, claiming his musical career was built on his legally protected name, which he properly had secured the rights to. He asserted his career was destroyed after Ross released his album Mastermind.
A federal district court in Los Angeles in 2016 doubted his assertions, granting Ross and the record companies a summary judgment and cancelling Caiz’s mark registration, finding it descriptive and lacking an acquired, secondary meaning.
But judges of the higher court rapped the legal knuckles of Senior U.S. District Judge Ronald SW Lew for dismissing Caiz’s case. The unanimous appellate panel overturned and remanded the case to Lew, siding with Caiz. They said “mastermind” is not merely a descriptive term, it had been accorded mark protection by the U.S. Patent and Trademark Office and courts were not to trifle with that designation. While Ross and the record companies had presented some evidence the mark could not be protected, that presentation was insufficient to overcome the presumption of the TM validity at summary judgment.
“A dictionary definition that uses the word ‘mastermind’ with reference to a musician, is far from establishing that musicians necessarily come to mind when the word is used,” Mark W. Bennett, a federal judge from Iowa sitting by designation, wrote for the appellate panel. “Evidence that other musicians have called themselves masterminds does not establish that the word is necessarily descriptive in this instance.”
The panel also reversed Lew’s cancellation of the Caiz’s registration. The judges asked Lew to reconsider Caiz’s arguments, including a fair use defense. LAW360’s legal analyst Dorothy Atkins reported that Caiz’s attorney, Sevag Demirjian, had stated in an email “This is a big win for all artist who follow the rules and properly protect their work, as the court did not allow a major star backed by a big label to come in and destroy an independent artist’s efforts.”
Sho’ Nuff, some music publishers still may have a financial reckoning ahead with a trio who called themselves Sly, Slick, and Wicked and who have laid claim to hits by Justin Timberlake and J. Cole for sampling their work.
The door had seemed shut on the dispute over royalties from the 1970s track sampled in the singles by Timberlake and J. Cole. But the U.S. Court of Appeals for the Second Circuit has reopened the copyright suit filed by ’70’s R&B performers John Wilson, Charles Still, and Terrance Stubbs. The band members argued that Dynatone Publishing Co., UMG Recordings Inc., and Unichappel Music Inc., collected royalties from the sampling of their single Sho’ Nuff in two 2013 hit recordings, Justin Timberlake’s Suit & Tie and J. Cole’s Chaining Day.
U.S District Judge Paul Engelmayer dismissed the band’s copyright claims as time-barred, ruling that their claims of copyright ownership had been repudiated during the initial copyright terms. But the appellate judges reversed him in a 3-0 ruling, finding that the R&B group Sly, Slick, & Wicked did not receive reasonable notice about actions involving their work. “If mere registration of a copyright without more sufficed to trigger the accrual of an ownership claim, then rightful owners would be forced to maintain constant vigil over new registrations.” wrote Circuit Judge Pierre N. Leval. “Such a requirement would be vastly more burdensome than the obligations that a ‘reasonably diligent plaintiff’ would undertake.”
The ruling was a victory for original authors of works, indicating that they won’t lose copyright ownership by failing to contest copyright registration by adverse parties.
Renewal Term Claims
Sly, Slick & Wicked registered Sho’ Nuff with the U.S. Copyright Office in 1973, listing Wilson, Still, and Stubbs as composer-lyricists. The 1973 single was released on People Records, a label set up in 1971 by James Brown, who is also credited as the track’s co-producer. Later in the year, Edward Perrell filed a registration with Broadcast Music Inc., listing Perrel Music, Belinda Music, and Dynatone Music as the publishers. In 1974, Chappell & Co, predecessor-in-interest to Unichappell Music Inc., filed a Copyright Office registration of the composition, listing Wilson, Still, and Stubbs as the writers and Dynatone Publishing Co. as the claimant.
Section 304 of the Copyright Act applies to copyrights in their first term on Jan. 1, 1978, and establishes that authors who are still living when the original 28-year copyright term expires are entitled to a renewal and extension of 67 years.
When the original term of protection expired in 2001, and beginning the renewal term, UMG Recordings Inc. renewed its registration. The label is the successor to Ploydor Records, which acquired People Records when Brown, the label’s founder, signed with Ploydor in 1971.
The group claims there are no written agreements with either Sho’ Nuff co-producer Eddie Perrell or People Records that include a “work-for-hire” provision, and that they never transferred renewal terms to either Perrell or People Records. Sly, Slick & Wicked registered their copyright interests for renewal in 2015, when they decided to sue UMG and the other publishing companies for royalties.
The Egyptians’ and their empire, culture, and world views so enthralled the ancient world that Greek and Roman generals and statesmen dreamed of ascending to the pinnacles of its power as pharaoh. But centuries later, and after more than a decade of litigation, Jay-Z — a royal of American modern urban music — may simply be relieved he and a host of others no longer will need to “be spendin’ big cheese” to defend a 1999 copyright infringement case over the rap hit Big Pimpin.
The U.S. Court of Appeals for the Ninth Circuit has rejected the suit against the superstar, aka Shawn Corey Carter, and others, quashing claims over the Big Pimpin sampling of a flute track from the song Khosara and putting to rest for now an attempt to extend “moral rights” for Egyptian and other global creatives and their works into American copyright laws on music and its recording.
Egyptian composer Baligh Hamdy held the rights to Khosara, dating to its 1957 use in an Egyptian film, and his relative Osama Fahmy claimed he inherited these. After Fahmy became aware in 2000 of Big Pimpin, a year after its release, he proceeded to hire American lawyers to investigate possible infringement claims. But lawyers, as part of this process, also unearthed a 2002 agreement in which Fahmy, representing Hamdy’s heirs, purportedly had transferred “all” Khosara rights to Mohsen Jaber.
Infringement saga launches
Still, in 2007, Fahmy sued Jay-Z, a host of music industry businesses, and a complicated crew of creatives — including rapper Timbaland, members of the hip hop group UGK and the rock band Linkin Park — claiming infringement under Section 106(2) of the Copyright Act.
Jay-Z and others involved in Big Pimpin said they innocently had sampled Khosara, believing it had entered the public domain. Timbaland, aka Timothy Mosley, in 2002 was told of potential complications with rights to the song, and he paid $100,000 to EMI Music Arabia, which claimed it held rights to the tune (click on the photo to play a video of it, though be warned: It may not be safe for work).
Pretrial motions prevented the case from starting up for another eight years, until 2015. In October of that year, U.S. District Judge Christina A. Snyder in Los Angeles then tossed the case, finding Fahmy lacked standing to make his claims because he signed the proper and binding 2002 agreement, transferring rights to Hamdy’s song. That agreement also allowed derivative works to be created from Khosara, and the judge said Egyptian law would permit such creations as artists exercising economic not moral rights.
Under Egyptian law, it is impossible to transfer the right to prohibit derivative works because it is a right subsumed within Egyptian “moral rights,” and is inalienable;
The 2002 Agreement is deficient for failing to “contain an explicit and detailed indication of each right to be transferred,” per Article 149 of Egyptian Copyright Law.
The 2002 Agreement reserves his right to receive royalties, thus making him a ‘beneficial owner’ of the Khosara copyright and conferring upon him standing to sue for copyright infringement.
Although music always has had global reach — hey, hip hop stars sampling music they heard for belly dancing, right! — the Big Pimpin case failed to extend for creatives protections that they enjoy more robustly overseas, notably so-called moral rights. American law, specifically copyright, has focused on artists’ controlling economic rights to their works, including who gets paid for their use and how.
The appellate court in Jay-Z’s case held that Fahmy’s moral rights were unenforceable because U.S. federal law does not recognize them, specifically as applied to music or its recording. The U.S. Visual Rights Act —the area of the Copyright Act that now discusses and provides for moral rights [ 17 U.S.C. 106A(a) ] — does not apply to, nor would it prevent distortions or mutilations of copyrighted music. Further, the appellate court said that, even if American law recognized moral rights for composers, under Egyptian law, Fahmy at best would be entitled to injunctive relief in Egypt.
Besides rejecting the moral rights claim, the appellate judges dismantled other elements of Fahmy’s case. The court looked to his 2002 agreement, finding it clear and specific, both in protecting and allowing the economic right for the holders to allow derivative works. The judges also waved off an argument he made as to how his possible receipt of royalties gave him standing to sue Jay-Z. Both in the United States and Egypt, receiving royalties does not give standing to sue for copyright infringement, the appellate court said. The judges cited Yount v. Acuff Rose-Opryland, which stated, “royalty rights reserved in a contract transferring a copyright are concern of state contract law only and are not a concern of federal law at all.”