IP Law Daily Sampling of ‘horn hit’ for Madonna’s ‘Vogue’ was de minimis, not actionable
Thursday, June 2, 2016

Sampling of ‘horn hit’ for Madonna’s ‘Vogue’ was de minimis, not actionable

By Thomas Long, J.D.

A modified version of a short horn segment used in the pop song Vogue, by recording artist Madonna, allegedly copied from another song, did not infringe the copyrights to either the composition or recording of that song because any copying that occurred was “de minimis,” the U.S. Court of Appeals in San Francisco has held (VMG Salsoul, LLC v. Ciccone, June 2, 2016, Graber, S.). As a matter of law, a general audience would not recognize the “brief snippet” in Vogue as originating from the plaintiff’s recording. Affirming a decision by the federal district court in Los Angeles, the Ninth Circuit held that the de minimis exception applied to claims alleging infringement of a sound recording. In reaching this conclusion, the Ninth Circuit disagreed with a holding by the Sixth Circuit to the contrary. Because the Sixth Circuit was the only appellate court to have addressed the issue, however, the rights holder’s claim was objectively reasonable, and did not warrant the grant of attorney fees to the prevailing defendants under 17 U.S.C. §505.

Recordings at issue. In the early 1980s, defendant Shep Pettibone recorded a song called Ooh I Love It (Love Break) (referred to by the court as “Love Break”). In 1990, defendant Madonna Louise Ciccone (known professionally by her first name, “Madonna”) and Pettibone recorded the dance song Vogue, which became a “mega-hit.” According to plaintiff VMG Salsoul, LLC (“VMG”)—which asserted ownership of copyrights to the composition and sound recording ofLove Break—Pettibone sampled a “horn hit” from Love Break and added it to Vogue. VMG filed suit against Madonna and Pettibone, as well as the recording companies and music publishers involved in the recording and distribution of Vogue, for copyright infringement.

The district court granted summary judgment to the defendants. The district court ruled that, even if the horn hit was original enough to be protected by copyright, any sampling of it was “de minimis or trivial.” In a separate order, the district court awarded attorney fees to the defendants. VMG appealed both orders.

De minimis copying. Although the defendants did not concede that sampling had occurred, VMG presented enough evidence—including testimony of Pettibone’s personal assistant—of copying to create a genuine issue of material fact, the court said. However, the court said, proof of actual copying was insufficient to establish infringement. To be actionable, the copying had to be significant enough to constitute infringement. The appellate court agreed with the district court that the alleged copying was de minimis and that the exception from infringement liability for de minimis copying applied to sound recordings.

After listening to audio recordings submitted by the parties, the appellate court concluded that a reasonable juror could not conclude that an average audience would recognize the appropriation of the horn hit. The horn hit was very short, less than a second long. The horn hit occurred only a few times in Vogue. Moreover, the horn hits in Vogue did not sound identical to the horn hits from Love Break, the court said.

Assuming that sampling had in fact occurred, Pettibone truncated the horn hit, transposed it to a different key, and added other sounds and effects. After these changes were made, the horn hit was added to Vogue, along with many other instrument tracks. Even if a listener recognized some similarities between the horn hits in the two songs, it was hard to imagine that he or she would conclude that sampling had occurred, the court said. The court noted that VMG’s own primary expert had originally misidentified the source of the sampled double horn hit. In his original report, the expert concluded that both a single horn hit and a double horn hit were sampled from Love Break. After listening to the isolated horn tracks from Vogue, the expert concluded that he had erred in opining that a double horn hit was sampled; instead, he expert determined, only a single horn hit was sampled, which was used to create the double horn hit in Vogue. If a highly qualified and trained musician listened to the recordings with the express aim of discerning which parts of the song had been copied, and he could not do so accurately, an average audience would not do a better job, in the court’s view.

Applicability of de minimis exception to sound recordings. Relying on Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792 (6th Cir. 2005), VMG argued that the court should not engage in a de minimis copying inquiry because this was a digital sampling case. In Bridgeport, the Sixth Circuit held that “no substantial similarity or de minimis inquiry should be undertaken at all when the defendant has not disputed that it digitally sampled a copyrighted sound recording.” In other words, the Sixth Circuit adopted a bright-line rule that, for copyrighted sound recordings, any unauthorized copying—no matter how trivial—constituted infringement.

The Ninth Circuit declined to follow the Sixth Circuit’s holding. According to the Ninth Circuit, the de minimis exception was firmly established in copyright law, with origins in the mid-1800s. With the exception of the Sixth Circuit in Bridgeport, and district courts following Bridgeport, courts had consistently applied the de minimis rule in all copyright infringement cases, including cases involving sampling of sound recordings. There was nothing in the text of the Copyright Act to suggest that sound recordings were to be treated differently from other types of works, the Ninth Circuit said.

VMG argued that the third sentence of 17 U.S.C. §114(b) supported its position. That sentence stated, in relevant part, “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]” (emphasis added). This provision limited copyright owners’ rights, the court said; it did not expand them. In the Ninth Circuit’s view, the meaning of the cited sentence was that a new recording that merely mimicked a copyrighted recording was not an infringement, as long as there was no actual copying. The passage cited by VMG did not reach the question of de minimis copying.

The Ninth Circuit, accordingly, held that the “de minimis” exception applied to actions alleging infringement of a copyright to sound recordings, and that the exception specifically applied to the allegedly sampled material used in Vogue.

Attorney fees. In granting the defendants’ motion for attorney fees, the district court concluded that VMG’s legal claim premised on Bridgeport was objectively unreasonable. This was error as a matter of law, the appellate court said. It was plainly reasonable to bring a claim founded on precedent from the only circuit court to have considered the issue, even though the Ninth Circuit ultimately disagreed with that precedent. The award of fees was vacated and remanded for reconsideration.

Dissenting opinion. Circuit Judge Barry G. Silverman dissented, opining that the Sixth Circuit had correctly decided the question regarding de minimis copying of sound recordings. In Judge Silverman’s view, a “physical taking” was at issue in this case, rather than an “intellectual” one. Noting the intentional nature of sampling, Judge Silverman argued that the defendants had appropriated valuable property owned by VMG, and the “de minimis” or “trivial” nature of the material taken should not be a defense to infringement liability.

The case is Nos. 13-57104 and 14-55837.

Attorneys: Robert S. Besser and Christopher Chapin (Law Offices of Robert S. Besser) for VMG Salsoul, LLC. Alexander Kaplan (Proskauer Rose LLP) and Paul H. Duvall (King & Ballow) for Madonna Louise Ciccone, Shep Pettibone, WB Music Corp., Webo Girl Publishing, Inc., Lexor Music, Inc., Warner Music Group, and Warner Bros Records, Inc.

Companies: VMG Salsoul, LLC; WB Music Corp.; Webo Girl Publishing, Inc.; Lexor Music, Inc.; Warner Music Group; Warner Bros Records, Inc.

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