Fahmy v. Jay-Z

• Decision Date: 31 May 2018
• Docket Number: No. 16-55213,16-55213
• Citation: 891 F.3d 823
• Parties: Osama Ahmed FAHMY, Plaintiff-Appellant, v. JAY-Z, AKA Shawn Carter ; Timothy Mosely, FKA Timbaland; Kyambo Joshua; Rob Bourdon; Brad Delson; Mike Shinoda; Dave Farrell ; Joseph Hahn ; Chester Bennington; Big Bad Mr Hahn Music; Chesterchaz Publishing; EMI Blackwood Music, Inc.; EMI Music Publishing Ltd. ; Kenji Kobayashi Music; Lil Lulu Publishing; Machine Shop Recordings, LLC; Marcy Projects Productions II, Inc.; MTV Networks Enterprise, Inc.; Nondisclosure Agreement Music; Paramount Home Entertainment, Inc.; Paramount Pictures Corporation; Radical Media; Rob Bourdon Music; Roc-A-Fella Records, LLC; Timbaland Productions, Inc.; UMG Recordings, Inc.; Universal Music and Video Distribution, Inc. ; Warner Music, Inc., Defendants-Appellees.
• Court: U.S. Court of Appeals — Ninth Circuit

891 F.3d 823

Osama Ahmed FAHMY, Plaintiff-Appellant,

v.JAY-Z, AKA Shawn Carter ; Timothy Mosely, FKA Timbaland; Kyambo Joshua; Rob Bourdon; Brad Delson; Mike Shinoda; Dave Farrell ; Joseph Hahn ; Chester Bennington; Big Bad Mr Hahn Music; Chesterchaz Publishing; EMI Blackwood Music, Inc.; EMI Music Publishing Ltd. ; Kenji Kobayashi Music; Lil Lulu Publishing; Machine Shop Recordings, LLC; Marcy Projects Productions II, Inc.; MTV Networks Enterprise, Inc.; Nondisclosure Agreement Music; Paramount Home Entertainment, Inc.; Paramount Pictures Corporation; Radical Media; Rob Bourdon Music; Roc-A-Fella Records, LLC; Timbaland Productions, Inc.; UMG Recordings, Inc.; Universal Music and Video Distribution, Inc. ; Warner Music, Inc., Defendants-Appellees.

No. 16-55213

United States Court of Appeals, Ninth Circuit.

Argued and Submitted December 8, 2017 Pasadena, California

Filed May 31, 2018

Keith J. Wesley (argued), Corbin K. Barthold, and Peter W. Ross, Browne George Ross LLP, Los Angeles, California, for Plaintiff-Appellant.

Christine Lepera (argued), Mitchell Silberberg & Knupp LLP, New York, New York; David A. Steinberg, Mitchell Silberberg & Knupp LLP, Los Angeles, California; Andrew H. Bart, Jenner & Block LLP, New York, New York; for Defendants-Appellees.

Before: Carlos T. Bea, Consuelo M. Callahan, and Paul R. Kelly,^* Circuit Judges.

OPINION

BEA, Circuit Judge:

Days before the turn of the new millennium, rapper Jay-Z released an album containing his soon-to-be hit single Big Pimpin' . The background music to that track used a sample from a 1957 arrangement by Egyptian composer Baligh Hamdy. Today, we are faced with the question whether the heir to Hamdy's copyright (Appellant Fahmy) may sue Jay-Z for infringement based solely on the fact that Egyptian law recognizes an inalienable "moral right" of the author to object to offensive uses of a copyrighted work. We hold that he cannot.

I

A

In 1957, Baligh Hamdy composed the music to the song Khosara for the Egyptian movie Fata Ahlami . The song quickly became popular in Egypt. In 1968, Hamdy agreed to transfer certain license and distribution rights to an Egyptian recording company, Sout el Phan.¹ When Hamdy died in 1993, his heirs inherited whatever rights he retained in Khosara . Appellant Osama Ahmed Fahmy ("Fahmy") is one of these heirs.

In August 1995, Hamdy's heirs, including Fahmy, who acted as the heirs' representative, executed another agreement with Sout el Phan, confirming the continuing viability of the rights transferred through the 1968 agreement.² In December 1995, Sout el Phan transferred certain of its exclusive rights to a company called EMI Music Arabia ("EMI"). This agreement transferred to EMI, among other things, "the sole and exclusive right to protect, publish and/or sub-publish songs" contained on records in the Sout el Phan catalog, including Khosara . After the December 1995 agreement, EMI possessed the rights, previously held by Sout el Phan, to license and distribute recordings of Khosara in every country but Egypt. Sout el Phan retained the rights to license and distribute in Egypt.

Appellees enter the picture a few years later. In 1999, rapper Shawn Carter (professionally known as, "Jay-Z") and music producer Timothy Mosley (professionally known as, "Timbaland") produced a hit song, Big Pimpin' , that used portions of Khosara as a background track to Jay-Z's rap lyrics.³ They thought the music was part of the public domain and did not obtain permission to use it. EMI disagreed. As a result, in late 2000, EMI asserted its rights to the music, and Mosley paid EMI $100,000 for the right to exploit Khosara in Big Pimpin' .

Fahmy became aware of Big Pimpin' in December 2000. As a result, he authorized a U.S.-based intellectual property attorney, David Braun, to investigate a copyright infringement claim against Jay-Z. According to Fahmy, an attorney at EMI told Braun that EMI had a valid license to exploit Khosara but refused to disclose the agreement to Braun. Braun eventually declined to represent the Hamdy heirs.

Around 2001, control of Sout el Phan's musical catalog passed to another Egyptian entity called Alam el Phan. In 2002, independent of the agreements previously mentioned, Fahmy, as representative of the Hamdy heirs, including himself, signed an agreement with the owner of Alam el Phan, Mohsen Mohammed Jaber. The agreement transferred to Jaber certain rights to Khosara . Exactly which rights were transferred in this 2002 Agreement⁴ is the central dispute in this lawsuit. The agreement, in relevant part, reads as follows:

I, Osama Ahmed Fahm[y] ... in person and in my capacity as the representative of the heirs of the late [Baligh Hamdy] hereby assign to Mr. Mohsen Mohammad Jaber ... and to whoever he selects, the right to print, publish and use the music of the songs stated in this statement [including Khosara ] on all currently known audio and/or visual of videos, performances, records, cassette tapes, and cartridges in addition to all the modern technological and digital means such as the internet, telephones, satellites, or any other means that may be invented in the future including musical re-segmentation and alteration methods while maintaining the original segment of the music. Thisauthorization grants Mr. Mohsen Mohammad Jaber solely/or to whoever he selects, the right to publish and sell these songs using all the means available in all parts of the world. I do hereby approve, by signing this authorization to pledge not to dispose once again of this music, or republish, sell, or present them to any other individual, company, authority, or institution.

I do hereby further state that by signing this authorization and waiver of these pieces of music to Mr. Mohsen Mohammad Jaber, I would have authorized him solely and/or whoever he selects, fully, and irrevocably the right to use this music in whatever way he deems necessary. Mr. Mohsen Mohammad Jaber or his successors are solely the owners of the financial usage rights stated in [Article 147 of the 2002 Egyptian Copyright Law⁵] for the pieces of music listed hereinafter in the Arab Republic of Egypt and the whole world [including Khosara], and the use includes all the usage means and methods whether those currently available or those that will be invented in the future and whether it was audio, visual or audiovisual including the new digital and technology means during the whole legal protection period specified by the law.

...

Mr. Mohsen Mohammad Jaber and his successor become the sole publisher of the melodies of these songs in all the current publishing means and in any way he deems whether it was direct or indirect. Mr. Mohsen Mohammad Jaber also has the right to transfer all these rights or some of them or dispose them to another company or institution using any trademark he selects. ...

I [Appellant] did also fully assign to Mr. Mohsen Mohammad Jaber all our rights clarified in [the 1968 Agreement] between Sout El Phan Company and the musician [Baligh Hamdy], or any other contracts and/or rights pertaining to those pieces of music. As such, signing on this document is considered as a final quittance from any of our dues from Sout El Phan, and Mr. Mohsen Jaber, and his successor, has the right to request and receive any financial dues relevant to this music from any party ....

I [Appellant] received the amount of 115,000 (only one hundred fifteen thousand Egyptian Pounds) for this waiver and declaration while maintaining our rights in respect of the public performance and mechanical printing.

(Emphasis added).

B

Notwithstanding this 2002 Agreement, Fahmy filed the instant lawsuit against Jay-Z in 2007, claiming to have retained certain rights to the Khosara copyright. The complaint contained three causes of action for copyright infringement⁶ under Section 106(2) of the Copyright Act⁷ , and a state law claim for unfair business practices. The claim for unfair business practices was subsequently dismissed and is not at issue in this appeal.

On December 9, 2011, the district court granted Jay-Z's motion for partial summary judgment, holding that based on the Copyright Act's "rolling" statute of limitations Fahmy "may recover damages from any infringement only within three years prior to the filing of his lawsuit—i.e. , from August 31, 2004 to the present." That order is not challenged in this appeal.

On August 12, 2013, the district court granted Jay-Z's motion for summary judgment based on the doctrine of laches, holding that Fahmy's more than six-year delay in filing his complaint after hearing of the infringement was unreasonable and prejudiced Jay-Z. However, on May 19, 2014, the Supreme Court held in a different case that laches cannot be invoked to preclude copyright claims filed within the limitations period. See Petrella v. Metro-Goldwyn-Mayer, Inc. , ––– U.S. ––––, 134 S.Ct. 1962, 1967, 188 L.Ed.2d 979 (2014). Thereafter, the district court granted Fahmy's motion for reconsideration and vacated its summary judgment order to the extent it barred certain claims based on laches.

On September 24, 2015, the district court ruled on several pretrial motions. First, it granted Jay-Z's motion in limine to prohibit Fahmy from playing sound recordings of Khosara as evidence of the copyright. The court held that "[p]resenting the sound recordings at trial carries a significant risk of confusing and misleading the jury," which was "particularly problematic because [Fahmy] admits that his copyright does not include the 1992 recording [of Khosara ]."⁸ Second, the court granted Fahmy's motion to bifurcate the liability and damages phases of the trial. Third, the court denied Jay-Z's request to resolve at the outset of trial issues of foreign law, including whether the 2002 agreement between Fahmy and Jaber "effectuated a complete transfer of plaintiff's rights in Khosara , therefore denying [Fahmy] standing to bring the suit." The court held that, because "neither party had presented expert...