QMJIP

Queen Mary Journal of Intellectual Property

Month: June, 2017

“Turn Down For What?” How About For Copyright Law!?

by Lisa D. Rhooms

In early May, Hip-Hop artiste, Lil’ Jon, and DJ and record producer, DJ Snake, were sued for willful copyright infringement. The complaint[1] is that the massively popular song “Turn Down For What”[2] released by the defendants, substantially copied another song, also entitled “Turn down For What”[3], and performed by Freddie GZ. The complaint contends:

“The copying alleged herein directly misappropriates quantitatively and qualitatively important portions of [the] Plaintiff’s Original Work in a manner that is easily recognizable to the ordinary observer. While [the] Defendants received accolades, awards, and a fortune for the Infringing Works, and built a brand on a foundation of copyright infringement, the writers truly responsible for the success of the Infringing Works received nothing, and their publisher, which owns the copyright, is now forced to bring this action to vindicate their rights for the taking of their work…”[4]

Lil’ Jon and DJ Snake are also not the only defendants whom the complaint alleges either performed, sold, caused to be sold, licenced, distributed or benefited from the sale of the purportedly infringing song.

The complaint also claims that:

“The idea for the Original Work came about in mid-to-late 2012. Freddie GZ and the team at A2M routinely threw around a saying, namely “turn down for what.” “Turn down for what” was their version of the colloquial term “turn up” (used to describe “get wild” or “let’s party,” among other things). Freddie GZ wanted to brand it, and believed the best way to brand this theme was to record it in a song. Freddie GZ composed the Original Song with Tha Architectz in late 2012; the final version was finished in the studio in January of 2013. A2M liked the Original Song and it was released as a single on March 9, 2013.[5]

The plaintiff contends that the original work was released to the public via several channels, including radio, iTunes, Spotify, Amazon, and YouTube, and gives statistics of the reach of the original work. The complaint also alleges that after the release, the song was “hyped” by respected Hip-Hop artistes such as Charlamagne.

As evidence of Lil’ Jon and DJ Snake’s awareness of the claimed original work, the plaintiff suggests:

“Tellingly, Lil Jon and DJ Snake exchanged tweets on July 15, 2013, only four months after the release of [the] Plaintiff’s Original Work. DJ Snake tweeted to Lil Jon ‘Turn Down For What ??? @LilJon’; Lil Jon replied ‘LET’S GO! Rt’@djsnake: Turn Down For What ??? @LilJon.’”[6]

The plaintiff further alleges that it was after the release of the original song that Lil’ Jon and DJ Snake recorded their “Turn Down For What”, which was “striking[ly] similar…[to] the Original Work and [which]when paired together with the timeline of events cannot be a coincidence.[Further] there is no possibility that the Infringing Works are creatures of independent creation.[7] Lil’ Jon and DJ Snake’s song was released in December 2013.

The crux of the copyright issue is that the similarities between Freddie GZ’s song and the contended infringing song are obvious, and are either undeniable similar or substantially similar; “strikingly similar”. As evidence, the complaint cites “Whosampled.com”, a website “which claims to be the world’s most comprehensive, detailed, and accurate database of samples, cover songs, and remixes, covering the entire history of music”[8],and which suggests that the Lil’ Jon and DJ Snake song sampled the plaintiff’s song.

Without going into too much about rhythm, count and lyric placement, as the complaint does, one essential point in the complaint was that:

“The Original Work’s introduction contains a steadily rising synth sound and the Infringing Works also start with a slowly rising synth line for the first seven measures. This similarity would be obvious to an ordinary listener and is just one example of the substantial similarities between the works at issue.” [9]

 Further:

“The structures of both songs are substantially similar. The choruses, which follow the introduction in both songs, are repeated three times in each song after two eight-measure sections, and both songs conclude with an instrumental section. This is very significant, would be obvious to an ordinary observer, and is a striking similarity. This is also not a common structure and the uses of eight measure sections are not common in rap songs.”[10]

 The complaint then alleges the commercial success of the allegedly infringing single which sold over a million copies in less than four months, certifying it platinum, and which has been remixed, with even a popular Dancehall remix; and which has been included on several compilation albums. The allegedly infringing song has also been on the music charts, and featured on the soundtracks of major motion picture films, and in commercials. Further, “Turn Down For What” has been featured on merchandise, and trade mark applications have been filed by the defendants for the phrase, as a word mark. The complaint sets out:

“Upon information and belief, the overwhelming success of the Infringing Works has provided [the] Defendants with substantial opportunities to tour and perform around the world. The revenue and profits derived from these performances and appearances are attributable to the success of the Infringing Works. These opportunities would not have been available to [the] Defendants if they had not infringed upon [the] Plaintiff’s Original Work, and are a ‘but-for’ cause of such profit.”[11]

The complaint states that these profits exceed fifteen million United States dollars (US$15,000,000.00).

In the concluding paragraph, the plaintiff prays for a declaration of infringement, an award of damages, and a permanent injunction, among other relief. It also demands a trial by jury.

Comment and Conclusion

Copyright Law is serious business, and if recent judgments such as the Robin Thicke “Blurred Lines” case are anything to go by, there may be nothing to sing, dance or ‘turn up’ about for the defendants. It will be interesting to see where this case goes, and whether substantial similarity will be found, coupled with an intention or will to infringe an earlier work, from which huge commercial gains flowed. Should a jury grant the relief as prayed, “Turn Down For What” may be turning down for good, for Copyright Law.

Lisa Diana Rhooms

 Assistant Editor, QMJIP

[1] Case 1:17-Cv-03329 filed 05/04/17 in the United States District Court for the Southern District of New York.

[2] https://www.youtube.com/watch?v=QFy0hQ3lY-w.

[3] https://www.youtube.com/watch?v=stUSatCj6QM (Warning! Contains expletives).

[4] ibid n. 1 [2].

[5] [26] and [27].

[6] [37].

[7] ibid.

[8] ibid n. 1 [47].

[9] [48].

[10] [58].

[11] [86].

“Establishment” in the EU requires a broad interpretation, says the CJEU

by Alina Trapova

While likelihood of confusion, reputation, earlier national rights, distinctiveness and descriptiveness, etc. certainly form the “meat” of most EU trade mark disputes, a case can be quickly thrown out of court on the ground that the said court is not the right forum to hear the dispute. This is however not what is foreseen to happen in the Hummel vs. Nike conflict below, which originated in the German courts (and is perhaps going to unfold there in the future).

Whoiswho

Hummel Holding owns an international trade mark registration designating the EU for goods in Class 25 (“clothing”).

Nike Inc., the first defendant, is the ultimate holding company of the Nike Group, which has its seat in the US.

Nike Retail BV, the second defendant, forms part of the Nike Group and has its seat in the Netherlands. Interestingly, this undertaking operates a website on which Nike goods are sold in Germany and supplies independent dealers, again in Germany, with Nike goods.

Nike Deutschland GmbH, not a party to the proceedings, is a subsidiary of Nike Retail BV and has its seat in Germany. It does not have its own website, nor does it sell goods to the end consumer or intermediaries. What it actually engages in, is the negotiation of contracts between intermediaries and Nike Retail BV and the support of Nike Retail BV in connection with advertising and performance of contracts. It also provides after-sale service to consumers.

Previously on whohasjurisdiction

Hummel claims that some of Nike’s products, in particular basketball shorts, infringe its trade mark and that most of these infringements took place in Germany. Hence, it brought an action against Nike Inc. and Nike Retail BV before the Regional Court of Düsseldorf (Germany). The court held that it had jurisdiction since Nike Deutschland GmbH was an “establishment” of Nike. The action failed however on the merits.

Upon appeal, the concept of “establishment” as per Article 97(1) EUTM was disputed. Ultimately, the question for the CJEU for a preliminary ruling was whether Nike Deutschland GmbH is an “establishment” for the purpose of Article 97(1)?

CJEU favours uniformity and broad interpretation

On 18 May 2017, the CJEU gave its preliminary ruling in which it emphasised heavily the necessity for an “autonomous” and “uniform” interpretation of the concept of “establishment”.

Next, the Court analysed the wording, context and objective of Article 97(1) EUTMR.

(i) Wording

The provision says in essence that infringement proceedings in EUTM matters are to be brought in “courts of the Member State in which the defendant is domiciled” or “has an establishment”.

It is apparent from the wording of the provision that a defendant, not domiciled in the EU, may have one or more establishments within the EU, which suggests that actions may be brought before the courts of various Member States where those establishments are located.

(ii) Context and objective

The Article aims to ensure that a court in the EU always has jurisdiction to hear and determine disputes concerning infringement of an EU trade mark. As such, Article 97(1) establishes the primary rule of domicile/establishment. Only if the defendant has no domicile, nor an establishment in an EU Member State, then do the subsequent provisions kick in. They would act as an alternative, which provides for jurisdiction to lie with the courts of the domicile or establishment of the plaintiff and, as a further alternative, with the courts of the Member State where EUIPO has its seat (Article 97(2) and (3)). These are designed in a somewhat cascade manner. So the concept of “establishment” should be interpreted broadly since this is not the exception to the basic rule of jurisdiction at the defendant’s domicile. This was a point also emphasised by the Advocate General.

Touching upon some of the facts of the dispute before it, the Court ruled that it is irrelevant whether a body has legal personality for the purpose of it being an “establishment”. What matters is that third parties are able to rely on the appearance created by the establishment acting as an extension of the parent body. Coming even closer to the peculiarities of the dispute, the Court considered irrelevant the fact that an undertaking is a second-tier subsidiary of a parent body with a seat outside the EU and not a direct one.

Eventually, such a second-tier subsidiary, with a seat in a Member State, of a parent body, without a seat in the EU, is an “establishment” of that parent body if there are visible signs that the subsidiary is a centre of operations which, in the Member State where it is located, has a certain real and stable presence from which a commercial activity is pursued, as manifested by the presence of personnel and material equipment and has the appearance of permanency to the outside world, such as an extension of the parent body.

Full judgment can be found here.

Alina Trapova LL.M. (QMUL)