UK: The Song Remains the Same: Music Sampling in the Digital Age

Ben Challis LLB MA Barrister at law

Sampling can be simply defined as the incorporation of pre-existing recordings into a new recording. It can be extended to include the incorporation of part or the whole of a ‘tune’ (a melody) and/or lyrics into another work. Copyright subsists in sound recordings and in the music and lyrics to a song pursuant to section 1(1) of the Copyright Designs and Patents Act 1988 (CDPA). The CDPA provides in section 16(1) that the owner of a work has a number of acts restricted to him or her which are to: Copy the work (b) Issue copies of the work to the public (c) Perform, show or play the work in public (d) Broadcast the work or include it in a cable programme and (e) Make an adaptation of the work and do any of the above in relation to such adaptation. Therefor any kind of sampling without the consent of the copyright owner will prima-facie amount to infringement. In both the UK and the USA there is an instant copyright infringement or violation when a song is sampled without permission as it is the unauthorised use of copyrighted material owned by another. To be clear, sampling without permission will usually violates two copyrights – in the sound recording copyright (usually owned by and artist or their record company) and the copyright in the song itself (usually owned by the songwriter or their music publishing company). In order for another party to carry out any of these activities, they must first gain consent from the original copyright owner or their agent such as the UK collection societies (the Performing Rights Society, Phonographic Performance Limited) which manage copyrights on behalf of copyright owners.

US attorney Michael McCready properly points out that in almost all circumstances a licence needs to be obtained before sampling. The results of failing to do this can be disastrous. Recently Dr Dre protege Truth Hurts learnt this to their cost. Truth Hurts had used a four minute sample from Indian composer Bappi Lahiri in their debut album and single Addictive without permission or credit. A federal judge in Los Angeles ruled that Addictive must be removed from shelves unless the composer Bappi Lahiri's name is added to the credits as the author of the sampled work "Thoda Resham Lagta Hai" composed by Lahiri for the 1987 Indian film Jhoothi. Lahiri is seeking compensatory damages in excess of $1 million. The Verve counted the cost of a borrowed melody when the UK courts awarded ABKCO, owner's of the Rolling Stone's The Last Time, one hundred percent of the royalties resulting from the exploitation of the Verve's "Bittersweet Symphony" which borrowed from the Stones' work. In 1990 US rapper Vanilla Ice also counted the cost of using the recorded bass line and the melody of the Queen/David Bowie track Under Pressure in his Ice Ice Baby single, loosing one hundred percent of his royalties to the established stars.

McCready advises that the use of samples without the proper clearance licenses leaves the sampler open to heavy penalties in the USA. Even at a basic level a copyright infringer is liable for "statutory damages" that generally run from $500 to $20,000 for a single act of copyright infringement. If the court determines there has been wilful infringement, damages can run as high as $100,000. The copyright owner can also get a court to issue an injunction forcing the infringer to cease violating the copyright owner's rights. The court can also order the recall of albums and destroy them.

In simple terms this means that any sample without permission is an infringement and in both the UK and the USA the copyright owner(s) have a range of remedies available against sampling including injunctive relief and damages. However two legal doctrines have given limited hope to would be samplers to attempt to defend their use of sampled material without permission.

Firstly both US and UK law provide tests to determine infringement in related though not identical doctrines. UK law provides that the infringement must relate to a "substantial" part of the original work - each case is decided on its individual merits, based upon the context. The case of Hawkes & Sons v Paramount Film Services (1934) held that the use without permission of twenty seconds of the musical work Colonel Bogey (which lasted four minutes in total) was infringement. The position in UK and US law now have seems to reached the point that any "recognisable" use would infringe. Infringement would take place when, on hearing a bar of music, a listener can easily identify a similar sounding piece of music.

In the United Kingdom the ‘substantial use’ defence was tested in Produce Records Limited v. BMG Entertainment International UK and Ireland Limited (1999). This case held reinforces the position that sampling sound recordings without the consent of the copyright owner is prima facie infringement of copyright if a substantial part of the original material is reproduced. Produce Records owned the copyright in a sound recording Higher and Higher by The Farm. BMG manufactured and distributed in the UK the hit track Macarena by the group Los Del Rio which sampled a seven-and-a-half-second section of Higher and Higher. No clearance had been obtained for the use of this sample and Produce Records brought proceedings for breach of copyright against BMG. BMG applied to strike out the proceedings on the basis that it was unarguable that the sample constituted a substantial part of Higher and Higher. BMG argued that this was a question for the judge alone to decide when comparing the two recordings. Produce Records introduced expert evidence from a forensic musicologist on which parts of Higher and Higher were more recognisable and memorable than others. Parker J rejected the strike-out application. He accepted that judges were not expert musicologists and could be assisted by expert evidence as to whether it was or was not substantial and also by the extrinsic factual evidence. In any event, having heard the two tracks, he thought that the Produce Records claim was plainly arguable and that it should not be struck out. Prior to this decision there was a hopeful `three second rule' which suggested that if three seconds or less of a work is sampled, no action would be customarily taken against a sampler. This is NOT the case.

The owners of lyrics are in the same position: In 2002, it was held that even short samples of lyrics needed copyright clearance. In Ludlow Music Inc v. Robbie Williams and others Robbie Williams was forced to pay damages to Loudon Wainwright III due to the similarity of lyrics in Williams’ song, Jesus in a Camper Van, to Wainwright’s earlier work.

US law provides that infringement will occur where a recording or composition fails a ‘substantially similar’ test: If a work is substantially similar it will infringe the original work unless the very limited doctrine of ‘fair use’ applies.

In Acuff Rose Music v Campbell (1994) the court had to decide whether a 2 Live Crew parody of the Roy Orbison song Pretty Woman was ‘substantially similar’. The Court of Appeals, sixth Circuit found that 2 Live Crew's use of the prior work was copyright infringement and not a fair use as a matter of law. The United States Supreme Court disagreed, and reversed the lower court, stating that the use of the prior work could be a fair use, and whether it was, needed to be determined on a case-by-case basis. This was not fair use but the following test for 'substantial similarity' was adopted:

1. Does the plaintiff own a valid copyright in the material allegedly copied?
2. Did the defendant copy the infringed work?
3. Is the copied work substantially similar?

However In the case of Grand Upright Music Ltd. v Warner Bros Records Inc (1991), Inc., the court seemed to short circuit this analysis, moving straight from the defendants' admission that a recording sampled three words from the plaintiffs’ song to the conclusion that the only issue, therefore, seems to be who owns the copyright in the plaintiffs song' when determining infringement.

There seems to be a very limited defence of fair use when a work is said to be substantially similar to an earlier work – but - to qualify for fair use a sample must be used for purposes such as parody, criticism, news reporting, research, education or some similar non-profit use. Using a sample merely because it sounds good is simply not enough to qualify for protection as fair use. Quite the reverse: and Michael McCready adds ‘There is also a rumor going around that you can use four notes of any song under the "fair use" doctrine. There is no "four note" rule in the copyright law. One note from a sound recording is a copyright violation. Saturday Night Live was sued for using the jingle, "I Love New York" which is only four notes. The test for infringement is whether the sample is "substantially similar" to the original’

The recent US case of Newton v Diamond & Others (2003) puts some limit on the doctrine that any use without permission is infringement: In 1992 the Beastie Boys got a license from ECM Records to sample a copyrighted sound recording from James W. Newton Jr.'s flute composition, Choir. The group sampled and used a six-second, three-note sequence and looped it throughout its song Pass the Mic, featured on the Capitol album Check Your Head. In 2000, Newton, who also composed the work, sued the Beastie Boys, alleging that the remix infringed the "heart" of his flute composition, and that the band should have obtained a license from him as the composer of the underlying work in addition to obtaining a sample to use the recording. The US Appeals Court, affirming the court of first instance's decision, held that there was no infringement because the use of the sample was minimal and there were no substantial similarities between the two works or that the average person would recognise the appropriation.

Fair use was explored in a recent US case where a New York federal court upheld the "fair use" doctrine by dismissing a lawsuit against Sony Music Entertainment and rappers Ghostface Killah, Raekwon and the Alchemist for copyright infringement. The plaintiff, Abilene Music, accused the rappers and Sony, which released the album, of infringing its copyright in the well known song "What a Wonderful World." The infraction allegedly occurred when the trio made slang references to marijuana in a rap that began with a variation on the first three lines of the song popularised by Louis Armstrong. The defendants successfully argued that while the song's lyrics were adapted from What a Wonderful World, they were protected as fair use under the US Copyright Act.

In granting a summary judgement for Sony and the rappers, Judge Gerard Lynch said the rap was clearly a parody, intended to criticise and ridicule the cheerful perspective of the original song. The judge also noted that the rap made key changes to the lyrics and to the overall effect of the lines, and it was not an imitation of the original. The Judge held that whereas the original first three lines of 'Wonderful World' describe the beauty of nature, the rap version read more like an invitation to get high with the singer. The slang reference to marijuana and the dark nature of the rap tune was in stark contrast to the mood of beauty in the original song.
Despite these two recent cases, the fair use doctrine is very limited and it would be unwise for anyone using a recorded sample to rely on this except in a carefully prescribed context with proper legal advice. In general terms you would almost always need to obtain permission and a licence for use of a sample from the copyright owner. Neither the substantial use, substantially similar or the ‘fair use’ tests are ‘get out of jail free’ cards. The established maxim ‘if its worth copying, it’s worth protecting’ still holds true. Samplers beware!

Ben Challis LLB(Hons) MA(Law) MA Barrister-at-law is a UK Lawyer specialising in entertainment law and a graduate of London University and the City University. Ben acts as General Counsel for 3A Entertainments and is Executive Producer for television for the Glastonbury Festival. Ben is a visiting senior lecturer in law at Buckinghamshire Chilterns University College in England.

Bruce, Jenna Sampling and New Independent Dance Labels: The Importance of Understanding Copyright Law www.musicjournal.org

McCready, Michael What Is The Law Regarding Sampling? http://www.music-law.com/sampling.html

McKenna, T Where Digital Music Technology and Law Collide - Contemporary Issues of

Digital Sampling, Appropriation and Copyright Law http://elj.warwick.ac.uk/jilt/00-1/mckenna.html

Abilene Music v Sony Music & Others (2003) see http://www.rapnewsdirect.com/News/2003/10/Ghostfacekillah.Infringementcase/

Grand Upright Music Ltd v Warner Bros. Records, Inc. 780 F.Supp.182 (SDNY 1991).

Ludlow Music Inc v. Robbie Williams, Guy Chambers, EMI Music Publishing Limited, BMG Music Publishing Limited (2002) see http://www.law.ed.ac.uk/script/newscript/postscri.htm

Newton -v- Diamond and Others (2003) see www.musicjournal.org/lawupdates.htm

Hawkes & Sons –v- Paramount Film Services (1934) 1 Ch 539

Produce Records Limited v. BMG Entertainment International UK and Ireland Limited (1999) from http://www.davenportlyons.com/www/legal_services/music_entertainment/articles/music_industry_1998-9.htm