“[T]he fact that Minaj’s side paid a significant sum to settle rather than face the expense and risk of trial should serve as a warning to those who want to publicly release songs containing samples of other artists’ works without first obtaining a license.” – Jason Bloom, Haynes and Boone.
Last week, documents were filed confirming that singer-songwriter Tracy Chapman accepted Onika Tanya Maraj’s (who performs rap under the stage name Nicki Minaj) Rule 68 Offer of Judgment, dated December 17, 2020, in the amount of $450,000, inclusive of all costs and attorney fees. In September 2020, the U.S. District Court of the Central District of California granted partial summary judgment in favor of Minaj, resolving a copyright infringement dispute originally filed in 2018 by Chapman over Minaj’s unauthorized use of Chapman’s 1988 single, “Baby Can I Hold You.” While the district court’s partial summary judgment ruling for Minaj said that Minaj had established a fair use defense to Chapman’s copyright infringement claims, it also said Chapman’s distribution claim should be tried and resolved by a jury, so the case moved forward.
Chapman Denied License to Minaj
Chapman filed suit against Minaj, asserting copyright infringement, after Minaj allegedly “violated [Chapman’s] copyright by creating and distributing a derivative work based on the Composition, while Minaj contended that her creation of the remake qualifies as fair use.” In 2017 Minaj experimented with a remake of a work she believed to be created by Shelly Thunder in creating a song called “Sorry,” but later learned that the work was a cover of “Baby Can I Hold You.” Knowing she needed to obtain a license, Minaj made multiple requests to Chapman for a license, but Chapman denied each request. Although Minaj did not include her remake on her album and denied sending a copy of “Sorry” to DJ Aston George Taylor (DJ Flex), DJ Flex somehow obtained a copy of “Sorry” and played it on the radio.
Minaj Argued Fair Use
In response to Chapman’s copyright suit, Minaj had argued that her creation of the track “Sorry” was a fair use of Chapman’s “Baby Can I Hold You.” In assessing the fair use factors in 17 U.S.C. § 107, the district court found that the first factor, the purpose and character of the use, favored fair use, and concluded that the initial purpose of Minaj’s work was experimentation. The court explained that since Minaj “never intended to exploit the work without a license” and excluded the new work from her album, Minaj’s use was not purely commercial. The court also noted that “artists usually experiment with works before seeking licenses and rights holders typically ask to see a proposed work before approving a license” and opined that “uprooting . . . [these] common practices would limit creativity and stifle innovation within the music industry.” With respect to the second factor, the nature of the copyrighted work, the court found it disfavored fair use because it involved a musical work. The court found that the third factor, the amount and substantiality of the portion used in relation to the work as a whole, favored fair use and explained that the material Minaj used “was no more than necessary to show Chapman how [Minaj] intended to use the Composition in the new work.” Similarly, the court found that the fourth factor, the effect of the use upon the potential market for or value of the copyrighted work, favored fair use because “there is no evidence that the new work usurps any potential market for Chapman.” In considering the factors as a whole, the court concluded that Minaj’s use was fair and granted partial summary judgment in favor of Minaj.
Distribution Claim and Settlement
In the September decision, the district court also denied a motion for partial summary judgment filed by Chapman on the issue of whether Minaj violated Chapman’s exclusive rights to distribution under 17 U.S.C. § 106(3) by sending “Sorry” to DJ Flex without Chapman’s permission. Noting that several disputed facts remained in the case, including the timeframe regarding when DJ Flex actually received the recording of “Sorry,” and whether the song was sent by someone other than Minaj or anyone taking direction from Minaj to send the recorded track, the district court determined that Chapman’s distribution claim has to be tried and resolved by a jury. This week’s settlement eliminates the need for a trial.
Jason Bloom, partner and Head of the Copyright Practice Group at Haynes and Boone, commented that, while “[t]he settlement of the case has no impact on the state of the law,” the outcome and significant sum should serve as a warning:
The fact that Minaj’s side paid a significant sum to settle rather than face the expense and risk of trial, in addition to attorneys’ fees they already incurred, should serve as a warning to those who want to publicly release songs containing samples of other artists’ works without first obtaining a license. Win, lose, or settle, litigation is expensive and can often be avoided by proceeding with caution on the front end. That being said, the Court’s summary judgment ruling that private sampling in the studio should be protected as a fair use seems to be the correct one. Copyright law is designed to protect against public performances, and what artists do in private while engaging in the creative process is generally not actionable.
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