Jay-Z Parts With Nothin’ For Big Pimpin’

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.

Federal Circuit Upholds Validity of Anticonvulsant Drug Patent

By Zachary Furcolo

In Mylan Pharmaceuticals Inc. v. Research Corp. Technologies, Inc., 914 F.3d 1366 (Fed. Cir. Feb. 1, 2019), the Federal Circuit affirmed the decision of the USPTO Patent Trial and Appeal Board (the “Board”) that claims 8–13 in U.S. Reissue Patent 38,551 (“the ’551 patent”) for an anticonvulsant drug were non-obvious and thus, the claims were not invalid on those grounds. 

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Federal Circuit Stomps Out Recognition of Separate Registered and Common-Law Trademarks

By Sofia Bonfiglio

Converse, Inc. v. Int’l Trade Comm., Inc., 909 F.3d 1110 (Fed. Cir. 2018), concerns the alleged infringement of Converse’s trade dress rights arising from its trademark registration and from common law. U.S. Trademark Registration No. 4,398,753 (“the ’753 trademark”), issued to Converse on September 10, 2013, describes the trade-dress configuration: three design elements making up the midsole of Converse’s Chuck Taylor All Star shoes. The court held that ITC erred in applying the wrong standards regarding its invalidity and infringement determinations, vacating and remanding the case for further proceedings. 

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Eleventh Circuit Holds Code Annotations Are Not Copyrightable

By Sofia Bonfiglio

In Code Revision Commission v. Public.Resource.Org, Inc., 906 F.3d 1229 (11th Cir. 2018), the Eleventh Circuit decided whether the annotations contained in the Official Code of Georgia Annotated (OCGA), which is part of the official codification of Georgia’s laws and enacted by the Georgia General Assembly, may be copyrighted by the State of Georgia . . .

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