Copyright Casebook

Beyonce and Des'ree

Dueling Divas

British diva Desree Weeks co-wrote “I’m Kissing You” with Timothy Atack, and she also performed the song on the soundtrack for the 1996 MTV-generation version of William Shakespeare’s Romeo + Juliet.

On April 3, 2007, Beyonce released a CD title B'Day Deluxe Edition, which is basically a re-release of the B'Day album released in 2006, except that it includes several latin remixes and a new song, "Still in Love (Kissing You)". Issuing these types of re-releases that include latin remixes and a new song or two is a common ploy of artists who want to get out of their contractual obligations with their label so that they can go cut some new tracks with Jay Z. In this case, the new song was a cover of the Des'ree song in which Beyonce used the music, re-titled the work, and added additional lyrics.

No Compulsion

The bone of contention is that Beyonce didn't get a license to do the cover. Generally, when doing a cover of a song, you get a license from the music publisher, either a negotiated or compulsory license. A compulsory license is what you get when you don't want to haggle with the music publisher. Its a fixed rate set by the government of around 10 cents per CD. However, there are some important restrictions with compulsory licenses:

• the original song must have been previously released on a recording
• the cover version cannot change the basic melody or character of the original
• only available for CD releases, does not cover music video

For the original music composition, Des'ree and Atack are co-authors of the work, and as such each has a 50% undivided interest in the composition. Atack assigned his rights to Westbury Music Limited, who then assigned them to The Royalty Network. It is through this succession of rights from Atack that a clearance agency, on behalf of Beyonce, approached Royalty Network for a negotiated license. Beyonce couldn't avail herself of a compulsory license because she was using "interpolations" of the song, and was also releasing a music video of the song.

After some back and forth, the clearance agency sent Royalty a formal license request. Royalty responded with a counter-proposal with several strict limitations:

• No music video.
• United States distribution only.
• No changing the title.

The counter-proposal was met with a long silence. Sensing that the train had already left the station, Royalty sent letter to Sony on March 27, 2007, Sony stating:

“It has come to our attention that Sony may be preparing to distribute the Album containing the Composition under the title “Still in Love (Kissing You)”. This is completely unacceptable to TRN. First, no agreement has been reached in connection with the embodiment of the Composition on the Album, and Sony has no right to proceed with the exploitation of the Album absent an agreement. Second, the re-titling of the Composition puts TRN at risk for claims from more than one third party, and this is a risk that Artist and Sony were or should have been aware of in light of the circumstances surrounding the discussions relating to this potential license. TRN hereby demands that Sony cease and desist from any distribution or other exploitation of the Album to the extent the Album contains the Composition under any title other than as previously released or under any terms other than as set forth in the Draft Agreement.”

Beyonce couldn't abide. Beyonce went ahead with the CD release on April 3, 2007, with a music video, worldwide, and with a changed title. The day before the CD release, realizing that you need your work registered with Copyright Office before you can sue for copyright infringement, filed for an expedited copyright registration for the original song. Two weeks later, they filed a lawsuit againt Beyonce.