C is for Copyright Infringement
No stranger to a good intellectual property dispute, Jay-Z is in the news again – this time for issuing proceedings against children’s author Jessica Chiha, who wrote “A B to Jay-Z”, a book designed to teach children to read using references to hip-hop culture, including artist names and lyrics.
This follows two Cease and Desist letters in which Jay-Z asked Ms Chiha (and her company The Little Homie) to top selling the book, as far back as March 2018.
While many news websites are being caught up in the “David and Goliath” narrative, when one looks at the underlying causes of action, Jay-Z’s decision no longer seems as unnecessarily harsh as some commentators have been suggesting.
Copyright and fair use
The starting point is, as always, that the unauthorised commercial use of someone else’s creative work amounts to an infringement of one or more intellectual property rights (usually copyright). By using Jay-Z’s lyrics (even if it is just a few lines) and adapting them, Ms Chiha is infringing Jay-Z’s copyright subsisting in his literary work.
There are however a number of exemptions to this starting position, which effectively allows some unauthorised uses of copyright works without a valid licence. The relevant one here is known as ‘fair use’ in the US, and ‘fair dealing’ here in the UK.
One might be tempted in particular to rely on parody and educational use to argue that Ms Chiha’s use does not amount to infringement. However, parody (known as parody, caricature and pastiche) is interpreted quite narrowly in the US – in this case, A B to Jay-Z is not a direct parody of Jay-Z’s work, and merely incorporates it in a humorous manner, and so this argument is unlikely to succeed.
With regard to alleged educational use, as in the UK this is often misinterpreted. The educational use exemption is designed to protect teachers and schools in some situations. Where a book (or another work) has been published commercially, the fact it has an educational purpose does not, in itself, allow unauthorised and unlicensed use of other copyright works.
Other intellectual property rights
In addition to potentially infringing copyright, Ms Chiha is using phrases which are similar or identical to a number of Jay-Z’s registered trade marks, thereby infringing another powerful intellectual property right.
It is common practice for musicians (and other celebrities) to file a large number of trade marks for their names but also for album and song titles, or even specific phrases, to prevent others from using these without permission. Where an artist holds a comprehensive trade mark portfolio to protect their work, this becomes a very strong tool in this type of litigation.
Finally, Jay-Z is claiming that Ms Chiha is deliberately and knowingly attempting to trade off his reputation, which is more easily enforceable in the US than here in the UK (where our broad equivalent of Passing Off can be very difficult to establish).
It is reported that Ms Chiha and Jay-Z’s legal representatives exchanged considerable correspondence since March 2018. Although we don’t know what was said, it is clear that no agreement was reached and Ms Chiha continued to sell the book despite repeated warnings and threats of legal action.
It now remains to be seen whether the dispute can be settled out of court (which is usually how these disputes are resolved) or whether the matter will proceed to full trial. Watch this space.
How does this affect me?
If you have a business which relies on the use of celebrities’ likenesses or names, or if you are producing and selling unofficial merchandise, this case may hit particularly close to home. Even though it is in a different jurisdiction, the basic consideration is the same.
This type of business often operates in a legal grey area in which there is always an element of commercial risk. Indeed, it is often the case that one or more products in such business’ range is technically vulnerable to a copyright infringement claim.
It is crucial to remember that just because other people are doing something and seem to get away with it does not mean that you are safe.
Whether you are If you receive a cease & desist letter, or if you would like to discuss your business’ risk of being of the receiving end of such a claim, please get in touch to arrange a free consultation.
For artists and musicians
Some of you may also read this and wonder how you can follow in Jay-Z’s footsteps and ensure that you stay in control of your image, and give yourself the tools you need to prevent this kind of unauthorised use of your brand.
If you want to discuss this, or are already considering taking action against a potential infringer, feel free to get in touch to discuss this in more detail.
Written by Joshua Schuermann, Solicitor