Recently, in the local and international news, there were reports that pop star, Miley Cyrus, settled a US$300M copyright infringement lawsuit filed by Jamaican songwriter, Flourgon. The claim essentially alleged that Miley Cyrus’ hit song, “We Can’t Stop”, was similar to, and misappropriated content from Flourgon’s song, “We Run Things”. While this settlement has been heralded as a big win for Jamaican music and the rights of Jamaican artistes not to have their works used by others without authorisation, this case is also a timely reminder to creatives of why it is so important to protect and register their intellectual property (IP).
Registration is proof of ownership
IP registration is essential because it provides very strong proof for a creative that a work belongs to him or her, thereby granting the exclusive rights of ownership.
This is the case notwithstanding the fact that copyright in a work comes into being as soon as the work is created, and registration is not necessary for copyright to exist. Under copyright law in Jamaica, certain exclusive rights include the right to copy the work, issue copies of the work to the public, and perform the work in public. These exclusive rights are not only useful in order to prevent third parties from taking, manipulating or profiting from a creative’s effort in creating a work, but can also be lucrative, as a creative can sell copies of his or her works, grant licences for the use of a work for a considerable fee, or grant an assignment to a third party in relation to all or certain of the exclusive rights in relation to a work, also for a substantial fee. Where a creative has registered his or her works, and is the proved owner of the work, there are a myriad of opportunities for the creative to exploit this work to his or her benefit. Further, where, as in the case above, a third party infringes a creative’s work, this can be an extremely costly mistake by the third party, which can also result in significant benefit to the creative. So, although copyright registration is not mandatory, it is most certainly recommended in light of the above.
While the suit filed by Flourgon, is not about trade marks, it generally aids the excellent point that creatives should protect the full gamut of their IP rights, including trade marks, which are also capable of being infringed by third parties. While a trade mark can exist and be protected, even if not registered, by pursuing a claim based on the common law tort of passing-off, registration is the best course. Like copyright, trade mark (or brand) registration is strong proof of ownership, and this ownership provides the exclusive right to the trade mark proprietor to use the mark in Jamaica and wherever else it is registered, in respect of the goods or services for which the mark is registered. Further, trade mark registration provides, in the case of an infringement, remedies to the owner of the mark which are clearly set out by statute. This is particularly important because trade marks are often the means by which the goods and services of one undertaking are distinguished from those of another undertaking, and are therefore associated with a particular enterprise. Thus, trade mark infringement, especially if it goes unchallenged, has the ability to weaken a brand, or cause confusion in a market place, which can be detrimental to a creative. It is, therefore, fundamental for creatives to protect their trade marks, by registration, in order to overcome any potential detriment, through remedies such as fines, or the imprisonment of the offending third party.
While it seems that Miley Cyrus was certainly stopped by having to settle this lawsuit for an undisclosed sum, it is quite interesting that such a case should come now, at the dawn of a new year and a new decade. The case ought to remind creatives of the value of their hard work, and the benefits to be reaped from the fruits of their labour. It is then, imperative for creatives, in all fields, to see the importance of IP law in unlocking the vast opportunities that are available to them, but note that, before opening the doors to these opportunities, and sharing their works with the world at large, it will also be necessary for them to have at hand, the irrefutable proof of proprietorship, for which registration is key!
Lisa Rhooms is an Associate at Myers, Fletcher & Gordon, and is a member of the firm’s Commercial Department. Lisa may be contacted via lisa.rhooms@mfg.com.jm or www.myersfletcher.com. This article is for general information purposes only and does not constitute legal advice.
