By Sarah Marmon, JD Candidate L’21
In Fahmy v. Jay-Z, 908 F.3d 383 (9th Cir. 2018), the US Court of Appeals for the Ninth Circuit upheld the District Court’s determination that Fahmy, the heir to the copyright for Khosara, a song sampled in Jay-Z’s Big Pimpin’, assigned all of his rights under Egyptian copyright law and was not entitled to damages for copyright infringement.
Fahmy sued Jay-Z for copyright infringement on the basis that Fahmy retained the exclusive rights to prepare derivative works of Khosara, despite having transferred the economic rights to the song to recording company Sout El Phan and its various successors, which then licensed the song to Jay-Z. He advanced three claims to support his suit: first, that he retained untransferable moral rights to Khosara under Egyptian copyright law; second, that his agreement transferring economic rights to Khosara did not effectively transfer the derivative works right under Egyptian law; third, that he retained a beneficial ownership of Khosara, giving him a cause of action against the creators of unauthorized derivative works. The court rejected all three claims.
Fahmy claimed that Egyptian law gave him an untransferable moral right to prevent “mutilations” or “distortions” of Khosara. However, the court ruled that the case was governed by US copyright law, which does not provide moral rights to the creators of non-visual works. The Berne convention only requires equal treatment of all copyright holders under US copyright law, so Fahmy was not entitled to moral rights to Khosara in the US. Furthermore, the court held that Egyptian copyright law did not provide the monetary remedies Fahmy was seeking, as Egyptian law only allows moral rights owners to sue for an injunction. Because neither US nor Egyptian copyright law could provide the remedies Fahmy sought, his first claim failed.
Fahmy’s second claim stated that his agreement in 2002 transferring the economic rights to Khosara was not effective because Egyptian law requires that agreements “contain an explicit and detailed indication of each right to be transferred.” The agreement transfers the economic rights to Khosara, including the right to “adaptation.” Fahmy claimed that because the agreement did not specifically enumerate “the right to make future changes to Khosara,” Fahmy retained the derivative works right. However, the court held that it would be impractical to expect Egyptian copyright owners to enumerate every single right they are transferring, and that the agreement clearly transferred all economic rights, including the derivative works right. Therefore, Fahmy did not have a basis for his claim.
Fahmy also argued that he retained beneficial ownership of Khosara, giving him a cause of action against unauthorized derivative works under 17 U.S.C. §501. However, the court ruled that under the agreement, Fahmy only retained beneficial ownership “with respect to ‘the public performance and mechanical printing’” of Khosara, and that he did not retain beneficial ownership of derivative works. 17 U.S.C. §501 requires that the injured party retain beneficial ownership of the particular right that is infringed. Derivative works are categorized as a different right than public performance or mechanical printing of a work. Since Fahmy did not retain beneficial ownership of the right to prepare derivative works under the agreement, he did not have a cause of action against Jay-Z.
As all three claims were invalid, the court held that Fahmy lacked standing to sue Jay-Z for copyright infringement.