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Lessons from the Drake-Jimmy Smith copyright dispute: Applying the US’s fair use summary procedures to Canadian fair dealing

Drake and others successfully defeated a claim for copyright infringement for sampling a jazz musician’s composition in the hit song “Pound Cake/Paris Morton Music 2” (“Pound Cake”).

In February 2020, the United States Court of Appeals for the Second Circuit released its summary order dismissing the appeal of the Estate of James Oscar Smith and Hebrew Hustle Inc. The Second Circuit upheld the lower court’s 2017 finding that Pound Cake’s sampling of “Jimmy Smith Rap” (“JSR”) constituted “fair use” (the American equivalent of Canada’s “fair dealing”). Though there are nuanced differences between fair dealing and fair use,[1] at their core, both concepts enable users to use copyrighted expression without the owner’s permission without being found liable for copyright infringement.

The litigation procedure used by the American court in this case informs available procedures that Canadian courts can adopt when dealing with claims for copyright infringement. If a case ultimately turns on whether the defendant’s use of copyrightable expression constitutes fair dealing, parties should be able to use summary proceedings to determine these issues, like Drake did.

Jimmy Smith was not a fan of Hip Hop

The late James Oscar Smith (aka Jimmy Smith) was a popular American Jazz musician. In 1982, he recorded the album Off the Top. The first six tracks are instrumental. The last track is JSR, a spoken word recording. In JSR, Jimmy Smith raps:

Jazz is the only real music that’s gonna last. All that other bullshit is here today and gone tomorrow. But jazz was, is and always will be.

In 2013, Cash Money Records and Universal Republic Records released Drake’s album Nothing Was the Same. Like JSR, the track named Pound Cake (featuring Jay Z) is the last song in the album. The opening to Pound Cake samples approximately 35 seconds of JSR. Jimmy Smith’s estate would not have granted a license for the composition because Jimmy Smith “wasn’t a fan of hip hop”. His estate sued for copyright infringement.

Summary judgment available

The parties brought cross motions for summary judgment. The court dismissed the plaintiff estate’s action. The court held that the transformative nature of Pound Cake brought it within the spectrum of fair use, which is an affirmative defence to copyright infringement. The court made this finding despite findings that it could not determine whether (i) the plaintiffs’ retained copyright in JSR or (ii) Pound Cake’s sampling copied the constituent original elements of JSR. Both issues would have been left for the jury if the court could not make an affirmative finding of fair use in the motion.

The court accepted the defendants’ argument that Pound Cake fundamentally altered the message of the original work. Drake edited the JFR recording from “Jazz is the only real music that’s gonna last” to “only real music is gonna last”. In doing this, the court found that Drake transformed Jimmy Smith’s dismissive comment about other trendy music into a statement on the relevance and staying power of “real music”, regardless of genre. 

Although the lower court cautioned that courts are typically wary about granting summary judgment in copyright matters, they will do so when there are no genuine issues of material fact in dispute. This was one such case in respect of the fair dealing analysis. The court noted that summary judgment in fair use cases may be appropriate where there is only a slight chance that additional, non-cumulative evidence will be presented at trial.

Applying Drake’s litigation tactic in the north

If the Pound Cake dispute had not been resolved at summary judgment, the parties would have spent significant resources trying to prove whether copyright subsists in a 40-year-old composition and whether the defendants engaged in any substantial taking. In this case, there was a dispute over copyright ownership in JSR. The main witness on ownership in the work, Jimmy Smith, was deceased. Because the case turned on whether Drake’s sampling of JSR constituted fair use, the court was able to adjudicate the dispute without making factual findings on Mr. Smith’s recording of JSR in the 80’s (or hearing lengthy evidence on this issue).

In Canada, courts are instructed to use procedures that provide for the just, most expeditious and least expensive determination of civil proceeding on the merits. Like fair use in the United Sates, if a Canadian court finds that the defendant’s use of the plaintiff’s copyrighted work constitutes fair dealing, the defendant will not be held liable for copyright infringement. If the court must undertake a fulsome trial of all issues, despite the case turning on the fair dealing analysis, all parties will have needlessly spent a tremendous amount of resources on issues that do not resolve the key fair dealing issue. In a copyright infringement lawsuit, parties can spend years and hundreds of thousands of dollars on discovery, production disputes, and damages quantification.

The Federal Court of Canada has a robust case management regime, which allows parties to agree to have the court adjudicate some or all of the issues in dispute. Summary judgment and summary trials in the Federal Court are designed to promote affordable, timely and just adjudication of civil claims. The Federal Court is the preferred (though not exclusive) jurisdiction to resolve copyright disputes because its jurisdiction covers the entire country, not just one province.

When cases turn on a single issue that is not fact-driven, parties can and should submit that issue for summary adjudication. If the allegedly infringing work constitutes fair dealing, there is no need to quantify damages, assess whether there is a substantial taking, or verify the chain of title in the copyright. This can save parties years of headache, uncertainty, and substantial legal bills.


[1] For example, fair dealing has a “closed” list of enumerated purposes unlike fair use; fair dealing has open-ended set of 6 “fairness” factors which may or may not be used in every analysis, and fair use has statutorily-prescribed set of 4 factors; and fair use analysis has been informed by First Amendment/free speech considerations, and fair dealing has not engaged in this analysis at length.

Lessons from the Drake-Jimmy Smith copyright dispute: Applying the US’s fair use summary procedures to Canadian fair dealing

Recent Items of Interest from Around the Internet

A round-up of interesting items from around the internet:

Recent Items of Interest from Around the Internet

Warman v Fournier: Infringement Assessed

The recent Federal Court of Canada decsion in Warman v Fournier (2012 FC 803 – for reasons which elude me, the decision is not yet available on the Federal Court’s website, but Howard Knopf has generously uploaded a copy) has occasioned a host of thoughtful observations (see Knopf, Trosow, Geist), which I can only summarize and add a few hopefully trenchant elements of my own analysis.

The dispute involved claims of copyright infringement relating to three separate works, one a speech, one an article and the last a photograph.  The defendants (who also co-defendants in the Baglow v Smith case, discussed here) operate a website described in the judgment as “an online political news discussion forum”, and each of the works in question was uploaded to the defendant’s website.

The action for infringement of copyright in the speech was time-barred due to the expiry of the limitations period set out in the Copyright Act (Canada), and so need not concern us further, except to note that the plaintiff’s attempt to ground his claim on an instance of infringement which occurred within the limitations period failed for lack of evidence – which the court indicated could have been resolved by provision of “a printout … with [a new] URL listed at the bottom owhich would have been evidence that there was an additional uploaded copy”.  So, reminder: print out hard copy evidence of infringements bearing timestamps.

No Infringement Because a “Substantial Part” Was Not Copied

With respect to the purportedly infringing article, a few things are worth remarking on.  First, the article was not written by Richard Warman, the plaintiff – instead, it was written by Jonathan Kay, and Warman acquired an exclusive license in respect of the work as a result of the settlement of an earlier defamation claim advanced by Warman against Kay and the National Post (the paper which had originally published the article).  I had previously remarked on assignments of copyright as a remedy for defamation (see here) and reiterate now my thought at the time that while this seems like an extremely useful remedy for a plaintiff to obtain, it still strikes me as problematic from a rights management perspective (why should the plaintiff get copyright in an entire work, as opposed to simply the defamatory elements?).

In any event, the court rejected the infringement claim because the amount copied on the defendant’s website did not amount to a “substantial part” of the article.  To quote from the judgment (para. 23, all emphasis added):

 

Whether a substantial part of a work has been reproduced is a question of fact and involves a qualitative rather than quantitative analysis. The relevant factors to be considered include:

a. the quality and quantity of the material taken;

b. the extent to which the respondent’s use adversely affects the applicant’s activities and diminishes the value of the applicant’s copyright;

c. whether the material taken is the proper subject-matter of a copyright;

d. whether the respondent intentionally appropriated the applicant’s work to save time and effort; and

e. whether the material taken is used in the same or a similar fashion as the applicant’s:

U & R Tax Services Ltd v H & R Block Canada Inc, [1995] FCJ No 961, at para 35.

While, because people may be tempted to derive “bright line” tests, it can be dangerous to quote from particular infringement analyses, this one seems worth reproducing (paras. 25-27, all emphasis added):

 

 

Quantitatively, the reproduction constitutes less than half of the work. The Kay Work itself consists of a headline and eleven paragraphs. The reproduction on Free Dominion included the headline, three complete paragraphs and part of a fourth. Qualitatively, the portions reproduced are the opening “hook” of the article, and the summary of the facts on which the article was based. Most of the commentary and original thought expressed by the author is not reproduced.

It does not appear that the excerpts of the Kay Work were reproduced to “save time and effort”. Based on the context of the posting, the respondents reproduced portions of the Kay Work to preserve a record of the facts summarized in the article, so that members of Free Dominion could continue to discuss those facts on the forum. Also, contrary to the applicant’s argument, the reproduction does include a summary or paraphrase of part of the work, specifically the second paragraph.

(I also note, parenthetically, that Warman’s acquisition of the copyright in the article appears to have cut against him in the court’s infringement analysis: at para. 26, the court notes that the plaintiff does not “use” the article in any traditional sense, but rather he acquired copyright “in order to prevent its further publication”.)

Back in the olden days when I was mucking about in the political blogosphere, an oft-discussed (or at least nodded at) question was exactly where the contours lay when quoting extensively from other blogs or news outlets – while no precise answer is possible, Warman v Fournier confirms that the traditional “substantial part” analysis applies to online fora such as blogs and discussion boards.

No Infringement Because the Use Constituted Fair Dealing

The Warman v Fournier decision is notable for being one of the few decisions to pay attention to the “news reporting” category of fair dealing found in Section 29.2 of the Copyright Act (Canada).  This element of the decision makes it worthy of attention from anyone engaging in online use of copyrighted materials.  Reiterating that the fair dealing provisions need to be, pace the Supreme Court, interpreted in a “large and liberal” manner, the court set out the fair dealing test:

(1) the purpose of the dealing; (2) the character of the dealing; (3) the amount of the dealing; (4) alternatives to the dealing; (5) the nature of the work; and (6) the effect of the dealing on the work

In assessing the use of the work in this case, the court found as follows:

Factors Weighing in Favour of FD Factors Weighing Against FD
(1) purpose – news reporting (interpreted purposively)
(2) character of the dealing – distributed on internet
(3) amount of the dealing – “very limited”, copied mostly facts and not most of the author’s original commentary
(4) alternatives to the dealing – could have provided a summary, rather than quotations
(5) nature of the work – because withdrawn from publication, finding of FD serves purpose of copyright law of disseminating works
(6) effect of dealing on the work – plaintiff was not exploiting the work

One could quibble with the analysis (e.g., it’s not clear that the court gave enough weight to the fact that the work had been withdrawn due to defamation concerns, which perhaps should have shifted item (5) to the other column), but again it is useful as an indicator of how courts approach these issues.

Linking is not Infringement (But Are All Links Created Equal?)

The aspect of the decision which has prompted much of the notice it has received relates to the issue of hyperlinking and its relationship to copyright infringement.  This portion of the decision receives the shortest treatment from the court, which is regrettable, as it appears no less deserving of extended attention from the court and from readers.

According to the decision, the plaintiff posted the photograph in question (which included the plaintiff’s image) on his website and the defendant’s website contained a link to the photograph.  The court held that the creation of the link could not constitute infringement because the plaintiff had already authorized telecommunication of the work to the public by the act of posting the photo on his website, and that the defendants merely also “telecommunicated the work to the public”.  But the analysis seems too brief.  It fails to distinguish, for example, between the nature of different types of hyperlinks: the defendant’s website did not contain simply a “hot” text link which could be clicked on and which would take the viewer to the plaintiff’s website – rather, according to para. 8 of the decision, the website contained an “inline link” to the plaintiff’s website, meaning that visitors to the defendant’s website saw the photograph at the defendant’s website, and likely were unaware that the photograph was being hosted at the plaintiff’s website.  That sort of “linking” seems qualitatively different from a simple hypertext link which would require the visitor to the defendant’s website to “click through” in order to view the photograph.

The court’s observation about the linking (“the [photograph] was within the applicant’s full control and if he did not wish it to be communicated by telecommunication, he could remove it from his website, as he eventually did”), while not wrong, seems slightly glib.  While it’s clear that the plaintiff had implicitly authorized others to “access” the photograph by putting it online, I’m not sure it automatically follows that he had also implicity authorized them to replicate it at another website by inline linking (technically, inline linking can be prevented on the host’s side (i.e., completely removing the photo is not only the option to prevent inline linking), but the details of that are well above my pay grade).

The difference between a simple hyperlink and an inline link seems meaningful – as an example, when the Supreme Court of Canada in its Crookes v Newton decision held that a hyperlink did not constitute publication of a defamatory statement, Justice Abella’s decision drew an analogy between a hyperlink and a “reference” (or footnote), stating “Both communicate that something exists, but do not, by themselves, communicate its content.  And they both require some act on the part of a third party before he or she gains access to the content.” (para. 30).  The decision draws repeated distinctions between “mere” hyperlinks and other types of links, saying “Embedded or automatic links, for example, may well prove to be of consequence in future cases, but these differences were not argued in this case or addressed in the courts below, and therefore need not be addressed here.”  Regrettably, the Warman v Fournier trial decision did not spend much time interrogating the differences in types of links.

Warman v Fournier is likely to be appealed – it strikes me that if it is, the appellate decision will need to spend a little more time on the nature of different types of hyperlinks and their relevance to the copyright infringement analysis.

Warman v Fournier: Infringement Assessed

Parody and Fair Dealing As It Is and May Be

The federal government has announced that it will be re-introducing Bill C-32 (The Copyright Modernization Act), which would have added “parody” as a category of fair dealing under the Copyright Act (Canada).  In addition, the Supreme Court of Canada is set to hear at least five copyright cases before the end of 2011 – an unprecedented occurrence; and of those five cases, at least two will address fair dealing.

But what of parody as fair dealing under existing law?  Emir Aly Crowne Mohammed has written an immensely useful paper which addresses the topic: “Parody as Fair Dealing in Canada: A Guide for Lawyers and Judges” (Journal of Intellectual Property Law & Practice (Oxford), Vol. 4, No. 7, 2009).  Other sources worth perusing are Graham Reynolds’ “Necessarily Critical? The Adoption of a Parody Defence to Copyright Infringement in Canada”, Giuseppina D’Agostino’s “Healing Fair Dealing – A Comparative Copyright Analysis of Canada’s Fair Dealing to U.K. Fair Dealing and U.S. Fair Use”,and Carys Craig’s “The Changing Face of Fair Dealing in Canadian Copyright Law: A Proposal for Legislative Reform”.

Parody and Fair Dealing As It Is and May Be

AUCSM Fair Use Guidelines for Poetry

The American University Center for Social Media has published its Code of Best Practices in Fair Use in Poetry.  While the analysis is obviously US-centric, this continues the AUCSM’s practice of developing guidelines for industry participants regarding fair use analysis (see their previous Documentary Filmmakers’ Statement of Best Practices in Fair Use), and will be of interest for Canadian entertainment and copyright lawyers both for comparative purposes and for purposes of assessing the Documentary Organization of Canada’s Guidelines to Fair Dealing Practices for Documentary Filmmakers (for previous Signal coverage of the latter, see here).

AUCSM Fair Use Guidelines for Poetry