Factual Issues Remain in Infringement Case Involving Jay-Z's ‘Big Pimpin' ' Sample

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By Blake Brittain

June 1 — Factual issues remain in the copyright infringement case involving Jay-Z's 2000 hit “Big Pimpin' ” as to ownership of rights in the song sampled by the rapper, “Khosara, Khosara,” the U.S. District Court for the Central District of California said in a denial of summary judgment May 27.

These issues included whether EMI Arabia could transfer the right to make derivative works from “Khosara” to Jay-Z, whether the licensing agreement between an Egyptian record company and EMI Arabia that granted EMI rights to the song expired in 2007, whether that company granted Jay-Z an implied license to exploit the song by not objecting to his use of it, whether EMI had the right to grant Jay-Z a public performance license, and whether public performances of the song would have been covered by BMI blanket licenses obtained by concert venues.

The Blueprint

Egyptian composer Baligh Hamdi co-wrote the song “Khosara, Khosara” some time around 1957. Hamdi transferred “some rights” to the song in a 1968 agreement with Egyptian record company Sout el Phan. Hamdi's heirs—including the plaintiff in the present case, Osama Ahmed Fahmy—“confirmed the continuing viability of the rights transferred in the 1968 agreement” in a separate agreement in August 1995. Sout el Phan transferred “some exclusive rights” in the song to EMI Music Arabia in December 1995, and EMI Arabia granted Timothy Mosley—the producer of “Big Pimpin' ” better known as Timbaland—the right to exploit “Big Pimpin' ” “free and clear of any claim by EMI Arabia” in a settlement agreement in March 2001.

Fahmy sued Jay-Z, Mosley and a number of related songwriters, labels and publishing companies in 2007 for copyright infringement. Jay-Z filed an affirmative defense on Feb. 2, 2015, asserting that he had a license to use and perform “Khosara” from Mosley's agreement with EMI Arabia.

Issues Remain

Fahmy forwarded three arguments in his motion for summary judgment: Fahmy had not consented to the agreement between EMI Arabia and Mosley; even if the agreement was valid, EMI Arabia did not have a conveyable right of public performance in “Khosara”; and the agreement between Sout el Phan and EMI Arabia actually expired in 2007. Jay-Z argued that Fahmy did not have standing to sue, based on a 2002 agreement between Fahmy and another Egyptian company, Alam el Phan, that granted the company some of Fahmy's rights in the song.

The court denied summary judgment because there were remaining material issues of triable fact for each claim.

On the issue of Fahmy's consent, the court—after determining that an exclusive licensee of a copyrighted work only must obtain consent from the licensor, and not the original creator additionally, before sublicensing the work—said that the wording of the August 1995 agreement created an issue of fact as to whether licensees of “Khosara” could grant licenses that allowed sublicensors to further sublicense their rights in the song.

On the public performance right, the court said that a 2007 letter from Fahmy's Egyptian lawyer that appeared to “disavow any ownership of performance rights in the song” created an issue of fact. Fahmy said the lawyer “clearly does not speak English as a first language” and did not intend to communicate that Fahmy did not have any performance rights in the song, and that the August 1995 and 2002 agreements affirmed that Fahmy and the other heirs retained public performance rights. The court also said there was a factual issue as to whether “Khosara” would have been covered by a blanket BMI license obtained by venues where Jay-Z performed “Big Pimpin'.”

On whether the agreement expired in 2007, the court said there was a factual issue as to whether a continued contract was implied in fact after Sout El Phan did not protest the continued exploitation of the sample following the end of the agreement.

And on the issue of Fahmy's standing, the court determined that the language of the 2002 agreement—which included language making Alam el Phan “solely the owners of the financial usage rights” in the song and giving it the right of “musical re-segmentation and alteration” but also retaining for Fahmy “rights in respect of the public performance and mechanical printing”—was unclear as to whether Fahmy conveyed all of his rights in “Khosara.”

The court therefore denied each request for summary judgment.

Judge Christina A. Snyder wrote the order.

Fahmy was represented by Christina J. Johnson of Browne George Ross LLP, Los Angeles. Jay-Z was represented by Eric Stephen Pettit of Caldwell Leslie & Proctor PC, Los Angeles.

To contact the reporter on this story: Blake Brittain in Washington at bbrittain@bna.com

To contact the editor responsible for this story: Anandashankar Mazumdar at amazumdar@bna.com

Full text at http://www.bloomberglaw.com/public/document/Fahmy_v_JayZ_et_al_Docket_No_207cv05715_CD_Cal_Aug_31_2007_Court_/1.