On September 13, 2010 the US District Court of New York held that Bob Marley’s estate does not own the rights to five (5) of Bob Marley’s most popular albums, namely: “Catch a Fire”, “Burnin”, “Natty Dread”, “Rastaman Vibrations” and “Exodus”. The court held that these works belong to United Music Group (“UMG”). UMG acquired the rights from Island Records, the entity for which Bob Marley had done the recordings in 1973 and 1977. The court held that Bob Marley’s estate did not succeed in a claim against UMG for intentionally withholding royalties, failing to consult with them on key licensing decisions, including the use of Marley’s music as “ringtones” on AT&T, Sprint and T-Mobile phones.

The legal basis on which the court made this finding is that the recordings were done for Island Records under a “work for hire” arrangement, as defined in United States copyright law. Each of the agreements provided that the sound recordings were the “absolute property” of Island Records. Under United States copyright law, “work for hire” means that the work is done under an employment contract, or in other words as “wage labour”. Copyright in the product of this kind of arrangement belongs to the employer and not the employee. This is to be contrasted with commissioned work where the creator of the work is an independent contractor and his work is not automatically assigned to the person who ordered the work. It would be required that the ownership of the copyright be the subject of an express arrangement between the parties.

In Jamaica, the Copyright Act makes no distinction between “work for hire” arrangements and commissioned work arrangements. The Act provides that copyright belongs to the author of the work. The effect of this is that there is no automatic assignment of work done by an employee to an employer. In the case of Paymaster (Jamaica) Limited v Grace Kennedy Remittance Services Limited and Paul Lowe the Supreme Court of Jamaica held that the customary inference is that a licence (permission to use) and not an assignment (or transfer) will be implied for the benefit of the person who commissioned the work unless there is compelling evidence to the contrary.

The effect of the Jamaican legal situation is that an artiste may be entitled to the economic benefits associated with copyright in his work unless he entered into an agreement in which he transferred those benefits to a record company or producer. However, based on the Paymaster case, the artiste’s rights may be limited by an implied licence to the person who ordered his work. From all indications, a local court may have come to a similar ruling in the Bob Marley case because of the express words in the contracts which stated that the sound recordings were the “absolute property” of Island Records.

The Bob Marley case underscores the importance of an artiste ensuring that contracts involving his copyright are fair and provides an accurate reflection of the scope of the rights that he/she intended to transfer. Based on general principles of copyright law, as well as the Paymaster case, it is of paramount importance for artistes to enter into written contracts in order to properly protect their interests. Informal arrangements can prove to be a loss leader in the long run, and sometimes almost immediately. The artiste should also bear in mind that copyright in musical works subsists for approximately fifty (50) years from the year of death of the author, and agreements should reflect long term planning and not just short term gains.

Andrea Scarlett-Lozer is an Associate at Myers, Fletcher & Gordon and is a member of the firm’s Commercial and Intellectual Property Departments. Andrea may be contacted via andrea.scarlett@mfg.com.jm or www.myersfletcher.com.