Circuits Split over Whether Recording Sample Is Infringement or Is De Minimis OK

The exclusive right of the owner of copyright in a sound recording under clause (1) of section 106 [the right of reproduction] is limited to the right to duplicate the sound recording in the form of phonorecords or copies that directly or indirectly recapture the actual sounds fixed in the recording. ' The exclusive rights of the owner of copyright in a sound recording under clauses (1) and (2) of section 106 do not extend to the making or duplication of another sound recording that consists entirely of an independent fixation of other sounds, even though such sounds imitate or simulate those in the copyrighted sound recording. [Emphasis added.]

The italicized portion of this provision was seized upon by the Sixth Circuit in Bridgeport Music to support its holding that even the most de minimis sampling infringes a sound recording copyright. However, in Salsoul, the Ninth Circuit considered '114(b) to provide no guidance on the standard for sound recording infringement beyond its explicit provision that an independently recorded imitation of the sounds on the recording did not constitute infringement.

The plaintiff in Salsoul claimed to own the copyright in the musical composition “Love Break” and the recording of it in 1980 by Shep Pettibone, who 10 years later recorded Madonna's mega-hit dance song “Vogue” from her I'm Breathless album. In making “Vogue,” Pettibone sampled a 0.23 second snippet from his earlier recording of “Love Break,” consisting of a “single horn hit,” in which trumpets and trombones simultaneously played four notes of a chord for the length of a quarter note.

The Ninth Circuit defined sampling as 'the actual physical copying of sounds from an existing recording for use in a new recording, even if accomplished with slight modifications such as changes to pitch or tempo.”In “Vogue,” the sample from “Love Break” was modified by transposing it upward, filtering out other instruments playing simultaneously, truncating it, adding effects and adding other sounds, including other instruments playing at the same time as the horn hit. The horn hit from “Love Break” was used in “Vogue” both as a quarter note (the “single horn hit”) and as part of a “double horn hit” in which the single hit appeared truncated as an eighth note and followed immediately in its quarter-note form. As used in “Vogue,” the single horn hit occurs once and the double horn hit occurs five times.

Although the defendants in Salsoul denied copying, the appeals court found that, construing the evidence in the light most favorable to plaintiff, copying was established. Defendants also asserted that the horn hit was insufficiently original to be copyrightable. But in light of its holding that the copying was de minimis and therefore not infringing, the appeals court did not reach the issue of copyrightability.

The Ninth Circuit divided its infringement analysis into three parts: infringement of the musical composition; infringement of the sound recording under general principles applicable to all types of copyrighted works; and whether, as held in Bridgeport Music, there should be an exception for sound recordings from the general rule that de minimis copying does not constitute infringement. Citing Newton v. Diamond, 388 F.3d 1189 (9th Cir. 2004), the Ninth Circuit noted that it was established in its circuit that the de minimis rule applies to copying musical compositions, but that the circuit had not yet decided whether that rule applies to sound recordings.

The appeals court then set forth the de minimis rule as it was applied in Newtonto a claim for infringement of a musical composition: “For an unauthorized use of a copyrighted work to be actionable, the use must be significant enough to constitute infringement. ' This means that even where the fact of copying is conceded, no legal consequences will follow from that fact unless the copying is substantial.'' The principle that trivial copying does not constitute actionable infringement has long been a part of copyright law.“

In applying this rule, the Ninth Circuit considered whether the average audience would recognize the sample taken as having been appropriated from the original. The appeals court pointed to the brevity of the snippets taken, the few times the sample was used in “Vogue,” the other instruments being played simultaneously with the sample, its transposition and truncation, and added sound effects, to conclude that a reasonable juror would not recognize the sample as having been appropriated from the musical composition “Love Break.” Even though the musical composition and sound recording copyrights are distinct from one another, in this instance the same factors led the court to conclude that the average listener would not recognize that the sample, as modified in the defendants' recording, was taken from plaintiff's recording. The Ninth Circuit therefore affirmed the district court's grant of summary judgment for the defendants on the issue of de minimis copying of both the composition and the recording of “Love Break.”

The sample at issue in Bridgeport Music consisted of three notes played by a guitar in quick succession to create an arpeggiated chord lasting two seconds. In the recording that used the sample, the sample was modified by lowering its pitch and extending it to 16 beats (approximately seven seconds). As modified, the sample was repeated in five places. The Sixth Circuit considered this taking to be de minimis, but nevertheless infringing.

The Sixth Circuit articulated several factors informing its conclusion including: 1) “[t]he analysis that is appropriate for determining infringement of a musical composition copyright is not the analysis that is to be applied to determine infringement of a sound recording”; 2) “[w]e address this issue only as it pertains to sound recording copyrights;” 3) “our opinion is limited to an instance of digital sampling of a sound recording”;'4) 'instances of digital sampling [have become] extremely common and have spawned a plethora of copyright disputes and litigation';'and 5) “[t]he music industry, as well as the courts, are best served if something approximating a bright-line test can be established.”

In its statutory analysis, the Sixth Circuit'relied primarily upon its reading of the third sentence of '114(b) providing that exclusive rights in a sound recording 'do not extend to the making or duplication of another sound recording that consists entirely of an independent fixation of other sounds, even though such sounds imitate or simulate those in the copyrighted sound recording.' That appeals court inferred from this language that'because a second recording containing a sample from an earlier recording does not consist “entirely” of independently recorded sounds, it would necessarily infringe.

In Salsoul, the Ninth Circuit rejected both the practical considerations enunciated by the Sixth Circuit and its legal analysis. First, Salsoul held that the same standard for infringement, and therefore the corollary de minimis rule, should apply in determining infringement of sound recordings, musical compositions and all other copyrighted works. The Ninth Circuit found nothing in the copyright statute that would suggest a different standard for sound recordings, and instead observed that the de minimis rule has been consistently applied across the board in all copyright decisions other than Bridgeport Music.

The Sixth Circuit explicitly rejected Bridgeport Music's reading of '114(b), noting that the entirety of that section sets forth limitations on the rights of the owner of the copyright in a sound recording. It would therefore be contrary to read '114(b) to expand the owner's rights in a sound recording, much less to eliminate the long-standing de minimis exception to copyright infringement. The Ninth Circuit also rejected consideration of the policy factors (e.g., bright-line rule) articulated in Bridgeport Music, which the Ninth Circuit viewed as issues in the bailiwick of Congress rather than the courts. (But the Ninth Circuit reversed the district court's award of attorney fees to the Salsoul defendants, by ruling that plaintiff's complaint could not be viewed as objectively unreasonable because, when filed, it was based on the only circuit court holding on point.)

Conclusion

When Congress passed the Copyright Act of 1976 establishing, inter alia, the preemption of all state laws concerning rights equivalent to copyright in works subject to the federal act, it sought to establish uniformity in the application of copyright law throughout the nation.'Because sampling is a common technique used in sound recordings, whether distributed within the Sixth or Ninth Circuit, the divergence of standards between these two circuits calls for Supreme Court review, so that a uniform standard will be applied to determine when sampling constitutes infringement.

The producers, artists and digital wizards creating sound recordings should not, by default, be inhibited by a strict liability standard for sampling if, on review, the Supreme Court were to conclude that the “substantial similarity” test for infringement should apply to sound recordings as it does to all other copyrighted works. In addition, a uniform standard will avoid forum shopping with copyright owners commencing actions within the Sixth Circuit and sample users racing to a courthouse within the Ninth Circuit seeking a declaratory judgment of non-infringement.

Robert J. Bernstein practices law in The Law Office of Robert J. Bernstein in New York City. Robert W. Clarida is a partner of Reitler, Kailas & Rosenblatt in New York City, and author of Copyright Law Deskbook (BNA).