Osama Fahmy v. Jay-Z ( 2018 )

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
OSAMA AHMED FAHMY, No. 16-55213
Plaintiff-Appellant,
D.C.
v. No. 2:07-cv-
05715-CAS-
JAY-Z, AKA Shawn Carter; PJW
TIMOTHY MOSELY, FKA Timbaland;
KYAMBO JOSHUA; ROB BOURDON;
BRAD DELSON; MIKE SHINODA; AMENDED
DAVE FARRELL; JOSEPH HAHN; OPINION
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.
2 FAHMY V. JAY-Z
Appeal from the United States District Court
for the Central District of California
Christina A. Snyder, District Judge, Presiding
Argued and Submitted December 8, 2017
Pasadena, California
Filed May 31, 2018
Amended November 1, 2018
Before: Carlos T. Bea, Consuelo M. Callahan,
and Paul R. Kelly, ∗ Circuit Judges.
Opinion by Judge Bea
*
The Honorable Paul J. Kelly, Jr., United States Circuit Judge for
the U.S. Court of Appeals for the Tenth Circuit, sitting by designation.
FAHMY V. JAY-Z 3
SUMMARY **
Copyright
The panel affirmed the district court’s grant of judgment
as a matter of law in favor of rapper Jay-Z and other
defendants on copyright infringement claims brought by the
heir to Egyptian composer Baligh Hamdy’s copyright in a
1957 arrangement of the song Khosara.
Jay-Z used a sample from the arrangement in the
background music to his hit single Big Pimpin’.
The district court held that the heir, Osama Ahmed
Fahmy, lacked standing to bring the copyright claims. First,
the district court held that Egyptian law recognizes a
transferable right of “adaptation,” such that when Fahmy
transferred “all” of his economic rights to Mohsen
Mohammed Jaber in a 2002 agreement, the transfer included
the right to create derivative works adapted from Khosara.
The district court concluded that the right of adaptation is an
economic right under Egyptian law, not an inalienable moral
right. Second, the district court held that the conveyance of
rights contained in the 2002 agreement complied with the
requirements of Article 149, the Egyptian law governing the
transfer of economic rights. Accordingly, the 2002
agreement successfully conveyed a right of adaptation of
Khosara to Jaber. Third, a reservation of rights found at the
end of the 2002 agreement referred to the right to receive
**
This summary constitutes no part of the opinion of the court. It
has been prepared by court staff for the convenience of the reader.
4 FAHMY V. JAY-Z
royalties, and thus did not confer standing on Fahmy to bring
a claim of copyright infringement.
Affirming, the panel concluded (1) that Egyptian law
recognizes a transferable economic right to prepare
derivative works; (2) that the moral rights Fahmy retained
by operation of Egyptian law were not enforceable in U.S.
federal court; and (3) that, even if they were, Fahmy had not
complied with the compensation requirement of Egyptian
law, which did not provide for his requested money
damages, and which provided for only injunctive relief from
an Egyptian court. The panel held that the district court
properly interpreted the 2002 agreement as conveying to
Jaber the economic right to create derivative works. In
addition, the fact that Fahmy retained the right to royalties
did not give him standing to sue for copyright infringement.
COUNSEL
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.
FAHMY V. JAY-Z 5
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
1
The agreement was written in Arabic. A certified translation can
be found in the record.
6 FAHMY V. JAY-Z
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
2
Also originally in Arabic, a certified translation of the 1995
agreement is in the record. The parties agree that the 1995 agreement
reaffirmed rights transferred in the 1968 agreement.
3
The Defendants-Appellees in this lawsuit include a long list of
music producers and record labels, all of whom were involved in the
production and/or distribution of various iterations of Big Pimpin’. For
convenience, we refer to the Appellees collectively as “Jay-Z.”
FAHMY V. JAY-Z 7
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 Agreement 4 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. This
4
Like the other agreements, the 2002 Agreement was written in
Arabic. A certified translation can be found in the record.
8 FAHMY V. JAY-Z
authorization 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 Law 5] 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
5
The 2002 Agreement uses the phrase “Law No. 82 for the year
2002.” But that phrase is a reference to Article 147 of the 2002 Egyptian
Copyright Law.
FAHMY V. JAY-Z 9
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
10 FAHMY V. JAY-Z
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
infringement 6 under Section 106(2) of the Copyright Act 7,
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.
6
The three causes of action relate to three different infringements,
all of which relate to Jay-Z’s Big Pimpin’. The first was based on the
initial publication of Big Pimpin’; the second, based on a collaborative
remake of Big Pimpin’, performed and published with the band Linkin
Park; and the third, based on Fade to Black, a film which depicts Jay-Z
performing Big Pimpin’. With respect to our analysis here, the claims
are identical.
7
Section 106(2) of the Copyright Act, 17 U.S.C. § 106(2), gives
copyright owners the “exclusive rights to do and to authorize . . .
prepar[ation of] derivative works based upon the copyrighted work.”
FAHMY V. JAY-Z 11
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., 134 S. Ct. 1962, 1967 (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 testimony
regarding the meaning of the 2002 agreement under
8
Fahmy filed a motion to reconsider this ruling at trial, which was
denied.
12 FAHMY V. JAY-Z
Egyptian law,” there remained “genuine issues of fact as to
whether plaintiff conveyed all of his rights.”
Trial commenced on October 13, 2015. The first phase
of the bifurcated trial (liability) concluded on October 20,
2015. That same day, Jay-Z filed a motion under Federal
Rules of Civil Procedure 50 and 52 for judgment as a matter
of law, asking the court to grant judgment in his favor on the
ground that Fahmy lacked standing to bring the copyright
claims. Fahmy also filed a Rule 50 motion for judgment as
a matter of law, arguing that he had established Jay-Z’s
liability under the Copyright Act.
On October 21, 2015, the court entered an order granting
Jay-Z’s motion for judgment as a matter of law. Because the
standing issue decided the case, the court declined to reach
Fahmy’s motion for judgment as a matter of law.
The district court decision proceeds in three parts, each
of which is separately challenged by Fahmy. First, the court
held that Egyptian law recognizes a transferable right of
“adaptation,” such that when Fahmy transferred “all” of his
economic rights to Jaber in the 2002 Agreement, that
included the right to create derivative works adapted from
Khosara. This first ruling included the holding that the right
of adaptation is an economic right under Egyptian law, not
an inalienable moral right. 9 Second, the district court held
that the conveyance of rights contained in the 2002
Agreement complies with the requirements of Article 149,
the Egyptian law governing the transfer of economic rights.
Accordingly, the 2002 Agreement successfully conveyed a
9
The parties agree that the district court’s application of Egyptian
law here was proper because the 2002 Agreement was formed and
executed in Egypt.
FAHMY V. JAY-Z 13
right of adaptation of Khosara to Jaber. Third, the district
court held that the reservation of rights found at the end of
the 2002 Agreement—i.e., the reservation of the “rights in
respect of the public performance and mechanical
printing”—refers to the right to receive royalties, and thus
does not confer standing on Fahmy to bring a claim of
copyright infringement.
As a result of the foregoing determinations, the district
court granted Jay-Z’s motion for judgment as a matter law.
Fahmy appealed.
II
We review de novo the district court’s grant of judgment
as a matter of law. Electro Source, Inc. v. United Parcel
Serv., Inc., 95 F.3d 837, 838 (9th Cir. 1996). Whether a party
has standing under the Copyright Act to sue for infringement
and whether the district court correctly interpreted and
applied foreign law are also reviewed de novo. Minden
Pictures, Inc. v. John Wiley & Sons, Inc., 795 F.3d 997, 1002
(9th Cir. 2015) (Copyright Act); Brady v. Brown, 51 F.3d
810, 816 (9th Cir. 1995) (foreign law).
III
A
To have standing to sue for the copyright infringement
alleged to have been done by Jay-Z’s adaptation of Khosara,
Fahmy must have retained the exclusive right to prepare
derivative works of Khosara, such as Big Pimpin’. 10 Fahmy
10
See 17 U.S.C. § 106 (listing the right “to prepare derivative
works” among the bundle of “exclusive rights” vested in the owner of
the copyright); see also § 201(d) (making each exclusive right
14 FAHMY V. JAY-Z
advances three alternative arguments for why he has retained
that right. First, he argues that, under Egyptian law, it is
impossible to transfer the right to prohibit derivative works
because it is a right subsumed within Egyptian “moral
rights,” and is thus inalienable. Whether the terms of the
2002 Agreement purport to convey it or not, Fahmy insists
that he retains the right to prohibit derivative works. Second,
he argues that, even if transfer of the right were possible
under Egyptian law, the 2002 Agreement does not clearly
and unequivocally convey that right to Jaber, as required by
Egyptian law for any such conveyance to be valid. Thus,
Fahmy asks us to hold, as a matter of contract interpretation,
that the 2002 Agreement did not convey to Jaber the right to
prohibit others to make derivative works. Third, Fahmy
contends that he has standing to sue for copyright
infringement by virtue of his right to receive royalties, which
is reserved in the 2002 Agreement. None of his arguments
are availing.
1
Copyright holders in Egypt possess both moral and
economic rights. As both parties concede, Egypt recognizes
a moral right of “integrity,” which is wholly separate from a
copyright holder’s economic rights, and which confers upon
the author of the copyrighted material the right to object to
those derivative works the author deems to be “distortions”
or “mutilations” of the work, whether or not the relevant
economic rights have been transferred. As the district court
transferrable “in whole or in part” and entitling the “owner of any
particular exclusive right . . . to all of the protection and remedies
accorded to the copyright owner by this title”). A logical extension of
the exclusive right to “prepare” derivative works is the right to prohibit
others from doing so without permission.
FAHMY V. JAY-Z 15
explained, moral rights are intended to protect the
“presumed intimate bond between authors and their works”
and are based on the notion that an author’s work is “almost
universally understood to be an extension of the author’s
personhood.” In sum, moral rights protect the author’s
personal or moral interests in the work and, for this reason,
are not transferable to another party.
By contrast, economic rights protect the author’s right to
profit from his work. Article 147 of the 2002 Egyptian
Copyright Law 11 (“Article 147”) provides that the author of
a copyrighted work and his successor have “the exclusive
right to authorize or prevent any form of exploitation of his
work, particularly through reproduction, broadcasting,
rebroadcasting, public performance, public communication,
translation, adaptation, rental, lending or making the work
available to the public in any manner.” Furthermore, Article
149 of the same Egyptian statute (“Article 149”) allows the
owner of a copyright to transfer “all or some of his economic
rights.”
Fahmy contends that the exclusive right to prepare (and
prohibit) derivative works is an inalienable moral right, not
a transferable economic right. The record supports the
proposition that an author’s moral rights in Egypt include
some sort of limited right to object to supposed “distortions”
or “mutilations” of the author’s work. But the record plainly
does not support Fahmy’s argument that the specific right to
prepare derivative works for profit is a non-transferable,
non-economic right. Fahmy’s own expert testified that an
“adaptation,” as used in Article 147, is the same thing as a
11
The parties agree that the 2002 version of the Egyptian Copyright
Law governs here because it was the operative statute at the time of the
2002 Agreement.
16 FAHMY V. JAY-Z
“derivative work.” Therefore, the plain language of Article
147, which grants authors the right to authorize
“adaptations” of their copyrighted works, and Article 149,
which gives authors the right to transfer “all or some” of their
economic rights, combine for the straightforward conclusion
that the right to prepare derivative works from the
copyrighted work for profit can be transferred under
Egyptian law.
This conclusion would not necessitate the determination
that Fahmy lacks standing to sue if the moral right to prevent
“distortions” and “mutilations” were enforceable in the
United States. However, Fahmy’s moral rights are not
enforceable here for at least two reasons. First, federal law
does not recognize the moral rights at issue here. The
Copyright Act recognizes some moral rights, but only for
certain “work[s] of visual art.” See 17 U.S.C. § 106A(a)
(granting to “the author of a work of visual art” an
inalienable right to prevent “distortion, mutilation, or other
modification” which might prejudice the author’s “honor or
reputation”); see also Garcia v. Google, Inc., 786 F.3d 733,
746 (9th Cir. 2015) (recognizing that, “[e]xcept for a limited
universe of works of visual art, . . . United States copyright
law generally does not recognize moral rights”). No
provision of the Act recognizes a moral right to prevent
distortions or mutilations of copyrighted music.
Moreover, while the Berne Convention 12 offers some
protection to foreign copyright holders in the United States,
it does not help Fahmy. The Convention guarantees only
12
The Berne Convention for the Protection of Literary and Artistic
Works (“the Convention”) is “the principal accord governing
international copyright relations.” Golan v. Holder, 565 U.S. 302, 306–
07 (2012). The United States joined in 1989. Id. at 307.
FAHMY V. JAY-Z 17
that holders of foreign copyrights are afforded “the same
protection” as holders of domestic copyrights, a policy
known as the “principle of national treatment.” Creative
Tech., Ltd. v. Aztech Sys. Pte., Ltd., 61 F.3d 696, 700 (9th
Cir. 1995); Subafilms, Ltd. v. MGM-Pathe Commc’ns Co.,
24 F.3d 1088, 1097 (9th Cir. 1994) (en banc) (quoting
3 David Nimmer & Melville B. Nimmer, Nimmer on
Copyright § 17.05 at 17–39 (1994) (“The applicable law is
the copyright law of the state in which the infringement
occurred, not that of the state of which the author is a
national or in which the work was first published.”). In other
words, parties to the Convention, such as the U.S., are not
required to grant foreign copyright holders rights which are
not granted to its domestic copyright holders. Since our
federal law does not accord protection of moral rights to
American copyright holders as to non-visual art, neither does
it recognize Fahmy’s claim to moral rights. That Fahmy
retains moral rights in Egypt does him no good here.
Second, even if federal law recognized the moral rights
of musical authors (or merely enforced foreign copyright
law), the specific right Fahmy retains under Egyptian law
entitles him only to injunctive relief in Egypt. The 2002
Egyptian Copyright Law—after granting to authors the
“perpetual[,] imprescriptible[,] and inalienable moral right[
]” to prevent a “distortion or mutilation of the work” in
Article 143—specifies the author’s recourse for violations of
such rights in Article 144:
Where serious reasons arise, the author alone
shall have the right to request the court of first
instance to prevent putting the work in
circulation, withdraw the work from
circulation or allow making substantive
modification to the work, notwithstanding his
18 FAHMY V. JAY-Z
disposal of the economic exploitation rights.
In such a case, the author shall, within a delay
fixed by the court, pay in advance a fair
compensation to the person authorised to
exercise the economic rights of exploitation,
failing which the court decision shall have no
effect.
Not only does the plain language of Article 144 grant
exclusively injunctive relief, it also requires the author to pay
“fair compensation to the person authorised to exercise the
economic rights of exploitation.” Absent the payment of fair
compensation, the court’s injunction has “no effect.” Thus,
even in Egypt, Fahmy’s moral rights would be insufficient
to win him anything but an injunction. And before he could
obtain that, Fahmy would have to compensate Jay-Z fairly
for limiting what would otherwise be an unencumbered
economic right to exploit Khosara, a right for which Jay-Z
already paid $100,000. The record is silent as to whether
Fahmy has made any offer of such compensation. Indeed,
such a proffered compensation is a far cry from the result
Fahmy seeks here. Fahmy asks the court not simply to
enjoin further use of Khosara but also to award him damages
and a portion of Jay-Z’s “profits and gains.” We cannot do
so. Assuming arguendo that Fahmy’s moral rights are
enforceable in federal court, we could not grant the relief he
seeks because he is not entitled to it—not even in Egypt.
Expert testimony confirms this reading of Article 144.
Jay-Z’s expert, Egyptian lawyer Abou Farhat, testified that
“[m]oral rights . . . are applicable only in Egypt.” When
asked what recourse an author has when his moral rights are
violated, Farhat said an author may “go [into] Egypt before
an Egyptian court and ask it to enforce” his right to enjoin
distortions and mutilations. Farhat’s testimony thus
FAHMY V. JAY-Z 19
supports the above reading of Article 144 (i.e., that moral
rights holders may seek only injunctive relief in Egypt) and
comports with this court’s prior cases, which outline the
“principle of national treatment” (i.e., that federal law treats
foreign copyrights the same as U.S. copyrights). Farhat’s
testimony also was not contradicted by the testimony of
Fahmy’s expert, Dr. Hossam Mohammad Loutfi.
Accordingly, like the district court, we credit Farhat’s
testimony and find that the remedy set forth in Article 144 is
for only injunctive relief in Egypt, and then only upon
proffer of the compensation required in Egypt. 13
We thus conclude (1) that Egyptian law recognizes a
transferable economic right to prepare derivative works;
(2) that the moral rights Fahmy retained by operation of
Egyptian law are not enforceable in U.S. federal court; and
(3) that, even if they were, Fahmy has not complied with the
compensation requirement of Egyptian law, which does not
13
We emphasize that it is our prerogative under Federal Rule of
Civil Procedure 44.1 to “consider any relevant material or source,
including testimony,” as we do here, in determining a question of foreign
law. See Universe Sales Co., Ltd. v. Silver Castle, Ltd., 182 F.3d 1036,
1039 (9th Cir. 1999) (“[I]t is neither novel nor remarkable for a court to
accept the uncontradicted testimony of an expert to establish the relevant
foreign law.”). Moreover, because a determination of foreign law “must
be treated as a ruling on a question of law,” Fed. R. Civ. P. 44.1, our
review of the district court’s determination is de novo. See de Fontbrune
v. Wofsy, 838 F.3d 992, 996–1000 (9th Cir. 2016) (explaining that the
“adoption of Rule 44.1 in 1966 marked a sea change in the treatment of
foreign law . . . by making the process of ascertaining foreign law
equivalent to the process for determining domestic law”); City of Harper
Woods Emps.’ Ret. Sys. v. Olver, 589 F.3d 1292, 1298 (D.C. Cir. 2009)
(citing Rule 44.1 for the proposition that foreign law determinations are
reviewed de novo).
20 FAHMY V. JAY-Z
provide for his requested money damages, and which
provides for only injunctive relief from an Egyptian court.
2
The 2002 Agreement unambiguously conveys to Jaber
the economic right to create derivative works. Egyptian law
requires a conveyance of economic rights to (1) be “certified
in writing,” 14 and (2) “contain an explicit and detailed
indication of each right to be transferred with the extent and
purpose of the transfer and the duration and place of
exploitation.” The 2002 Agreement is a writing which
“assign[s]” to Jaber the right to “print, publish and use the
music of [Khosara],” including with “musical re-
segmentation and alteration methods . . . in all parts of the
world.” It also makes Jaber and his successors “solely the
owners of the financial usage rights stated in [Article 147 the
2002 Egyptian Copyright Law].” These “financial usage
rights” are the economic rights listed in Article 147, which
include the right of “adaptation,” i.e., the right to prepare
derivative works. Thus, the plain language of the 2002
Agreement purports to convey the very right that Fahmy
needs to have so as to have a cognizable injury, and thus to
have standing to sue for copyright infringement.
Furthermore, the agreement also specifies the duration of the
agreement (“the whole legal protection period specified by
the law”) and the place of exploitation (“in all parts of the
world”), as required by Article 149.
Fahmy argues that the 2002 Agreement is deficient for
failing to “contain an explicit and detailed indication of each
right to be transferred,” per Article 149. Specifically, he
14
Fahmy does not argue that the 2002 Agreement is invalid because
it is not “certified.”
FAHMY V. JAY-Z 21
argues that the conveyance would fail, despite the parties’
intentions, because the agreement does not state “separately,
clearly, and unequivocally” that it transfers the “right to
make changes to future versions of Khosara.”
We find the district court’s refutation of this argument
persuasive. The court held that “it would be unreasonable to
interpret Egyptian law to require a copyright holder who is
purporting to transfer ‘all’ of the economic rights in his
copyright to also separately identify each economic right to
be transferred.” 15 Indeed, identifying each right to be
transferred would not only be redundant, it also runs the risk
of being counterproductive—in the future, the list could be
“used to infer an intent not to transfer rights other than those
specifically delineated.” Additionally, Article 147, by its
own terms, does not purport to provide an exhaustive list of
economic rights (“The author and his universal successor
shall have the exclusive right to authorise or prevent any
form of exploitation of his work, particularly through
reproduction, broadcasting, [etc.] . . . .”) (emphasis added) 16,
and the related Article 149 expressly allows for the transfer
of “all or some . . . economic rights” (emphasis added).
Neither of these provisions makes sense if a transfer of “all”
economic rights is impossible without an exhaustive list.
Finally, the record contains expert testimony indicating that
15
See generally ANTONIN SCALIA & BRYAN A. GARNER, READING
LAW 101–02 (2012) (explaining that phrases which include “general
terms,” such as the phrase “all persons” in the Fourteenth Amendment,
should “be accorded their full and fair scope,” unless there is “some
indication to the contrary”).
16
See READING LAW 132–33 (2012) (noting that the introduction of
a list with the word “including” is presumed to be nonexhaustive). Here,
we apply the same presumption to the words “particularly through.”
22 FAHMY V. JAY-Z
the only way to “assign[ ] all the rights” is to “refer to the
Article 147 itself.” This is exactly what the 2002 Agreement
does. Thus, we hold that the district court properly
interpreted the 2002 Agreement: it conveys to Jaber the
economic right to create derivative works.
3
Fahmy’s final argument is that the 2002 Agreement
reserves his right to receive royalties, 17 thus making him a
“beneficial owner” of the Khosara copyright and conferring
upon him standing to sue for copyright infringement. 18 This
argument also fails.
A copyright consists of a bundle of six statutorily created
rights, codified at 17 U.S.C. § 106. The statute confers upon
the owner of the copyright the following exclusive rights:
(1) to reproduce the copyrighted work in
copies or phonorecords;
(2) to prepare derivative works based upon
the copyrighted work;
17
A “royalty” is “[a] payment—in addition to or in place of an up-
front payment—made to an author or inventor for each copy of a work
or article sold under a copyright or patent.” BLACK’S LAW DICTIONARY
1528 (10th ed. 2014). “Royalties are often paid per item made, used, or
sold, or per time elapsed.” Id.18
Jay-Z argues the court should ignore this argument as waived
because it was not raised below. However, in Fahmy’s reply brief, he
points to a spot in the record in which the argument was raised. We
therefore consider it.
FAHMY V. JAY-Z 23
(3) to distribute copies or phonorecords of the
copyrighted work to the public by sale or
other transfer of ownership, or by rental,
lease, or lending;
(4) . . . to perform the copyrighted work
publicly;
(5) . . . to display the copyrighted work
publicly; and
(6) . . . to perform the copyrighted work
publicly by means of a digital audio
transmission.
17 U.S.C. § 106. Under the Copyright Act, “[t]he legal or
beneficial owner of an exclusive right under a copyright is
entitled to institute an action for any infringement of that
particular right . . . .” 17 U.S.C. § 501 (emphasis added).
While the Copyright Act does not define “beneficial
ownership,” this court has explained that “[t]he classic
example of a beneficial owner is ‘an author who ha[s] parted
with legal title to the copyright in exchange for percentage
royalties based on sales or license fees.’” DRK Photo v.
McGraw-Hill Glob. Educ. Holdings, LLC, 870 F.3d 978,
988 (9th Cir. 2017) (quoting Warren v. Fox Family
Worldwide, Inc., 328 F.3d 1136, 1144 (9th Cir. 2003)).
Fahmy’s copyright claims against Jay-Z specifically
allege infringement of only the right to prepare derivative
works under § 106(2). 19 Fahmy thus must show that he is
19
Fahmy’s summary judgment briefing made it abundantly clear
that he claims infringement only of derivative rights: “There is no claim
in this case that Defendants infringed Plaintiff’s copyright only by
24 FAHMY V. JAY-Z
the legal or beneficial owner of “that particular right” in
Khosara’s copyright bundle. See 17 U.S.C. § 501(b). He
has not done so. Fahmy points to the 2002 Agreement in
support of the idea that he retained royalty rights, but the
2002 Agreement states only that Fahmy retained royalty
rights with respect to “the public performance and
mechanical printing” of Khosara. Fahmy’s right to receive
royalties from the “public performance” of Khosara clearly
refers to the rights under § 106(4) and § 106(6). And
Fahmy’s right to receive royalties from the “mechanical
printing” of Khosara refers to a term of art in copyright law
called “mechanical reproduction,” whereby royalties are
paid every time a composition is reproduced, referring to the
right under § 106(1). 20
There is no evidence that Fahmy retained the right to
collect royalties with respect to the creation of derivative
works based on Khosara. Because Fahmy is not the
beneficial owner of the right that Fahmy alleges Jay-Z
‘reproducing’ – i.e., making identical ‘copies’ or ‘phonorecords’ – of any
material object in which Khosara was first fixed in tangible form.
Instead this case concerns the unauthorized preparation of derivative
works.”
20
The term “mechanical reproduction” came about with the advent
of player pianos—a disruptive technology that first allowed for the
mechanical production of music through the reproduction and sale of
player piano rolls. See Gary Myers & George Howard, The Future of
Music: Reconfiguring Public Performance Rights, 17 J. Intell. Prop. L.
207, 215 (2010). While player pianos are a thing of the past, the
“mechanical” term endures to describe reproductions of music on
records, CDs, or even digital downloads. Id.; 17 U.S.C. § 115. Each
time that a record is reproduced in such a “mechanical” format, a
“mechanical royalty” must be paid to the beneficial owner of the
exclusive right to reproduction of the copyrighted work under § 106(1).
FAHMY V. JAY-Z 25
infringed—the right codified in § 106(2) related to
preparation of derivative works—Fahmy lacks standing to
sue for infringement of that right.
For the foregoing reasons, we agree with the district
court’s conclusion that Fahmy lacked standing to sue Jay-Z
for copyright infringement. 21
IV
For the foregoing reasons, we AFFIRM the judgment of
the district court.
21
Because we hold Fahmy lacks standing to assert a copyright
infringement claim, we do not address his remaining arguments on other
issues.