Judge Sees Potential Merit In Steely & Clevie’s Claims Against Reggaetón Stars

A federal judge in California has ruled that Steely & Clevie Productions has made a strong enough argument to move forward with their copyright infringement claims against over a hundred Reggaetón musicians and producers, whom they’ve accused of ripping off the 1989 Fish Market riddim, better known as “Dem Bow.”

The Jamaican company, alongside Cleveland “Clevie” Browne and the estate of Wycliffe “Steely” Johnson, had named over 160 artists, producers, record labels, and more than 1,800 songs released between 1995 and 2021 as having used elements from Fish Market without permission. 

First used in songs like Gregory Peck’s Poco Man Jam (1989) and Shabba Ranks’ hit Dem Bow (1990), the Fish Market riddim was later adapted in a Spanish-language cover of Dem Bow titled Ellos Benia and the instrumental mixes “Pounder Riddim” and “Pounder Dub Mix II.” Steely & Clevie claim that the Pounder was “substantially similar if not virtually identical” to their original creation and that it was widely sampled in Reggaetón music in the years that followed. The lawsuit, separately filed against three groups of defendants in 2021, has since been consolidated and expanded with more defendants and songs and the addition of late Jamaican producer Ephraim ‘Count Shelly’ Barrett’s estate as a plaintiff and owner of the Pounder riddim.

In June last year, the majority of the defendants, including Bad Bunny, Daddy Yankee, Luis Fonsi, Justin Bieber, Drake, Pitbull, Rauw Alejandro, Diplo, and subsidiaries of all three majors, UMG, Sony Music, and Warner Records, either filed or co-signed five motions to dismiss the case.  

Some of these defendants contended that the musical elements allegedly stolen from the Fish Market were insufficiently original and, therefore, unprotectable under US copyright laws.   They also argued that the elements were so widely used and commonplace in the Reggaetón genre that the lawsuit should be thrown out.

However, in his 40-page ruling handed down on Tuesday (May 28) and obtained by DancehallMag, Judge André Birotte Jr. rejected these arguments.

“The Court recognizes the practice of musical borrowing, and in doing so, cannot merely conclude that because the reggaeton genre (or artists) have purportedly borrowed significantly from attributes of Plaintiffs’ work that those attributes are now in effect commonplace elements,” he wrote.

Moreover, he declined to rule on whether the Fish Market and its derivative works were original enough for copyright protection, noting that it was too early to decide, as more evidence and expert testimony are needed. He found that the Jamaican producers had sufficiently alleged the protectability of Fish Market’s drum pattern, the interplay of compositional elements, or the combination of these elements.  “Whether or not a jury would ultimately find the copied portion to be qualitatively significant is a question for another day,” he noted.

Some of the defendants had also pushed for the lawsuit to be thrown out on the grounds that Steely & Clevie cannot sue for infringement related to “Pounder Riddim” as they do not claim ownership of this work, nor can they sue for infringement of the “Fish Market” copyright for allegedly copied portions of “Dem Bow,” “Pounder Riddim,” or “Pounder Dub Mix II.” Additionally, they contended that Steely & Clevie lacked standing to sue for infringement of the “Pounder Dub Mix II” copyright because it was not registered before the lawsuit was initiated, as required by the Copyright Act.

In his decision on Tuesday, the Judge ruled that Steely & Clevie’s ownership of copyrights in Fish Market entitled them to sue for copying Dem Bow, Pounder Riddim, or Pounder Dub Mix II.  The Judge wrote: “A copyright owner has the exclusive right to prepare derivative works based on its original work of authorship and the exclusive right to ‘authorize others to prepare derivative works based on their copyrighted works.'”

He also noted that “the copying of material derived from protected elements of Fish Market will constitute an infringement of the Fish Market copyright regardless of whether the defendant copied directly from Fish Market or indirectly through a derivative work.”

While acknowledging that Steely & Clevie had prematurely asserted copyright infringement claims for “Pounder Dub Mix II” due to late registration with the Copyright Office, Judge Birotte declined to dismiss those claims. He cited the case’s “unique procedural posture,” which warranted excusing noncompliance with the pre-suit registration requirement.

“Plaintiffs have already obtained copyright registrations for the Subject Works; thus, it is plausible that dismissal of a subset of their claims would not require Plaintiffs to interact with the Copyright Office, but merely only force Plaintiffs to refile a separate case based on the Pounder Dub Mix II sound recording copyright and move to consolidate that case with this action. The Court has also invested a substantial amount of time and resources managing this action. At this juncture, dismissing the Pounder Dub Mix II claims would be a judicial travesty and waste of resources,” the judge wrote.

The judge did side with the defendants in dismissing Steely & Clevie’s claims that the artists and labels were liable for not preventing others from infringing. Birotte found that these claims lacked specifics but allowed the producers to amend their complaint within 30 days to address this issue.

Even without the claims for third-party infringement, millions of dollars in damages are potentially at stake.

The list of allegedly infringing songs includes mega-hits such as Luis Fonsi’s Despacito Remix with Justin Bieber and Daddy Yankee; Bad Bunny’s MIA with Drake; Drake’s One Dance with Wizkid and Kyla; El Chombo’s Dame Tu Cosita with Cutty Ranks; Daddy Yankee’s Dura, Gasolina, and Shaky Shaky; DJ Snake’s Taki Taki with Selena Gomez, Ozuna, Cardi B; and Pitbull’s We Are One (Ole Ola).