Conflict is brewing among the United States Courts of Appeals as
to when a musical artist's use of a sample from another
artist's musical work is non-infringing. Three key opinions
analyzing this issue were decided by the federal Circuit Courts
governing the states in which the music industry proliferates
— New York, California and Tennessee — and each reached
different conclusions.
In 2005, the Sixth Circuit Court of Appeals (which includes the
federal courts in Tennessee) held that the use of a two-second
sample from a sound recording used in a rap song that was included
on the soundtrack of the motion picture "I Got the Hook
Up" constituted copyright infringement. In 2016, the Ninth
Circuit Court of Appeals held that Madonna's use of a
.23-second sample in her hit song "Vogue" did not
constitute copyright infringement. On May 31, 2017, the Second
Circuit similarly weighed in with a decision that Drake's use
of a 35-second sample from a Jimmy Smith spoken-word recording was
not infringing.
How did the Ninth Circuit and the Second Circuit reach decisions
that appear to diverge so dramatically from the Sixth Circuit's
finding?
In the Sixth Circuit's decision in Bridgeport Music, Inc.
v. Dimension Films, 410 F.3d 792 (6th Cir. 2005), the court
rejected application of a traditional de minimis or
substantial similarity analysis based on the statement in the
Copyright Act that the rights of sound recording copyright holders
"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." The court concluded that the
use of the word "entirely" meant that the sound recording
owner has the exclusive right to sample its own recording, and
pronounced: "Get a license or do not sample."
In contrast, in VMG Salsoul, LLC v. Ciccone, 842 F.3d 871
(9th Cir. 2016), the Ninth Circuit expressly diverged from the
Sixth Circuit's holding in Bridgeport and held that an
exception applies to infringement for de minimis copying. In this
case, Madonna's producer sampled a .23-second horn hit from the
plaintiff's song "Love Break" and used it 5-6 times
in two different mixes of the song "Vogue" while many
other instruments are playing at the same time as the horns. The
Ninth Circuit relied on the well-established rule that in order to
establish copyright infringement, the plaintiff must show that the
copying was greater than de minimis. A de minimis
use is one that the average audience would not recognize as an
appropriation. After listening to the recordings, the court
concluded that an average audience would not recognize "Love
Break" as the source of the horn hit, noting that "horn
hits are easy to miss" and the horn hits in "Vogue"
had been modified in numerous respects and did not sound identical
to the horn hits from "Love Break."
The Ninth Circuit rejected the reasoning of the Sixth Circuit in
Bridgeport on the basis that the Copyright Act treats sound
recordings identically to all other types of protected works. It
also rejected the Sixth Circuit's argument that the use of the
word "entirely" in the Copyright Act gave sound recording
owners the exclusive right to sample their works, holding instead
that the provision was a limitation on the rights of sound
recording owners: "The exclusive rights of the owner of a
copyright in a sound recording ... do not extend to the
making or duplication of another sound recording [with certain
qualities]." It further interpreted that provision of the
Copyright Act as meaning that a "new recording that mimics the
copyrighted recording is not an infringement, even if the mimicking
is very well done, so long as there was no actual copying." In
other words, a band can record a "cover" version of
another artist's sound recording without infringing on the
copyright on the sound recording. The court also cited numerous
District Court opinions from various jurisdictions, as well as the
leading treatise on copyright law, all of which had consistently
rejected and declined to follow the reasoning of
Bridgeport.
In the Second Circuit's opinion in Estate of James Oscar
Smith v. Cash Money Records, Inc., Case No. 14-cv-2703 (May
31, 2017), the court did not conduct a de minimis
analysis. Instead, it analyzed the substance of the defendants'
use under the fair use analysis codified in the Copyright Act (17
U.S.C. § 107), placing particular emphasis on the first
factor, which examines the "purpose and character of the
use" and is "the heart of the fair use inquiry." The
central question pertinent to that factor is whether and to what
extent the new work is transformative of the original work. As the
United States Supreme Court has articulated, a new work is
transformative if it does not merely supersede the objects of the
original work, but "adds something new, with a further purpose
or different character, altering the first with new expression,
meaning, or message." Applying this standard, the Second
Circuit determined that the defendants transformed the message in
the original work from "jazz is the only real music that's
gonna last" by changing it to "only real music is gonna
last." The court found that this change was precisely the type
of use that "adds something new, with a further purpose or
different character, altering the first work with new expression,
meaning, or message." This transformation of the earlier
artist's message rendered the defendants' use of the
original composition fair and non-infringing.
The United States Supreme Court has not addressed the fair use
defense in the context of music sampling since its holding in
Campbell v. Acuff Rose Music, Inc., 510 U.S. 569 (1994),
in which it held that 2 Live Crew's recording of a parody of
the song "Oh, Pretty Woman" may be protected by the fair
use doctrine, despite its commercial nature, and despite whether
the parody was in good taste or bad.
As cases continue to arise in the context of music sampling, as
well as in connection with appropriation art where courts are
grappling with determinations as to whether a work of visual art
has been sufficiently transformed by a secondary artist as to
render its use fair, the time appears to be ripening for the Court
to provide some clarity and guidance on the proper scope of the
fair use exception to copyright infringement.
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