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A Circuit Split at Last: De Minimis Exception

Lesley McCall Grossberg

A Circuit Split at Last: De Minimis Exception
fhm via Getty Images

For the past ten years, the Sixth Circuit Court of Appeals has stood alone in having addressed the issue of whether a de minimis amount of copying used in a song sample constitutes infringement of a copyrighted sound recording. While the Sixth Circuit’s admonition of “get a license or do not sample” has gained little traction in the district courts outside of the Sixth Circuit, neither did its sister circuit courts take the contrary position—until now.  

On June 2, 2016, the Ninth Circuit held in VMG Salsoul, LLC v. Ciccone that a 0.23-second “horn hit” sampled from the song “Love Break” for use in Madonna’s song “Vogue” did not infringe the copyright in either the sound recording or the musical composition of the sampled song. Affirming the district court, the Ninth Circuit held that the de minimis exception to copyright infringement “applies to infringement actions concerning copyrighted sound recordings, just as it applies to all other copyright infringement actions.” 

The sampling at issue involved a “single” horn hit from “Love Break” consisting of a quarter-note chord comprised of E-flat, A, D, and F notes, played by trombones and trumpets, as well as a “double” horn hit consisting of an eighth note of those same notes, followed by a quarter-note chord. The single horn hit occurs once and the double horn hit occurs twice in the radio edit version of “Vogue.” The double horn hit was derived by the producer of “Vogue” from the single horn hit. In both “Love Break” and “Vogue,” other instruments are playing at the same time as the horns.  

The plaintiff proved, for purposes of summary judgment, that the producer of “Vogue” had actually and literally copied the horn hit from “Love Break.” Thus, the Ninth Circuit turned to the questions of whether the amount of copying was de minimis, whether the de minimis exception should apply to copyrights in sound recordings, and finally, whether the district court abused its discretion in awarding attorneys’ fees to the defendants. The court had already held in Newton v. Diamond that the de minimis exception applied to infringement of copyrights in musical compositions. 388 F.3d 1189 (9th Cir. 2004). In Newton, the Beastie Boys had a license for the relevant sound recording, and the court had determined that there was only de minimis copying for purposes of evaluating infringement of the musical composition, where the sampled six-second, three-note flute sequence was not the “heart” or “hook” of the sampled composition. 

The court adopted the test from Newton that a “use is de minimis only if the average audience would not recognize the appropriation” for purposes of evaluating the claims of infringement of both the composition and the sound recording. After listening to the recordings, the court concluded as a matter of law that a reasonable jury could not conclude that an average audience would recognize the appropriation of the composition. The sampled composition elements were much shorter than those at issue in Newton, and the “Vogue” sample used only a few of the many instruments playing during the sampled temporal segment.  

For purposes of the copyright in the sound recording of “Love Break,” the court noted that the “Vogue” producer had manipulated the copied sound recording, modifying the horn hit from the “Love Break” sound recording by “transposing it upward, cleaning up the attack slightly to make it punchier…and overlaying it with other sounds and effects.” The court thus determined that no reasonable jury could conclude that an average audience would recognize that the modified 0.23-second recording of a single quarter note had been appropriated. Having been modified in this manner, the horn hits in “Vogue” did not sound identical to the horn hits from “Love Break.” To illustrate this point, the court pointed out that the plaintiff’s primary expert had originally misidentified the source of the “double horn hit” and claimed that the double horn hit itself had appeared in the original recording, only to later recant and conclude that the “Vogue” producer had himself created the double horn hit by using the recording of the single horn hit. Thus, such de minimis copying was not an infringement of the copyright in the sound recording. 

The plaintiff had urged the court to follow the Sixth Circuit’s ruling in Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792 (6th Cir. 2005), which held that no de minimis exception would be recognized for copying of sound recordings: Rather, any unauthorized copying, however trivial, constitutes infringement. The Ninth Circuit observed that the Sixth Circuit’s holding is at odds with the longstanding premise that only substantial copying can support a claim of infringement, and further that the statutory text of 17 U.S.C. § 114(b), which creates express limitations on the rights of a copyright holder in a sound recording, should not be interpreted to instead create an exclusive right in the copyright holder to “sample” his or her own recording. Insofar as the district court had granted attorneys’ fees to Madonna and her co-defendants on the basis that the plaintiff’s reliance on the Bridgeport holding was unreasonable, however, the Ninth Circuit vacated the fees award, stating that it “plainly is reasonable to bring a claim founded on the only circuit-court precedent to have considered the legal issue, whether or not our circuit ultimately agrees with that precedent.” 

The Ninth Circuit acknowledged that it was creating a circuit split with the Sixth Circuit “only after careful reflection,” but also noted that the leading copyright treatise devoted many pages to discussing why the Sixth Circuit’s opinion in Bridgeport is wrong. Additionally, “almost every district court not bound by that decision has declined to apply Bridgeport’s rule.” As a practical matter, the newly created circuit split creates an incentive for copyright holders in sound recordings to seek redress for unauthorized sampling in the Sixth Circuit, and a corollary incentive for samplers to seek a declaratory judgment of noninfringement in the Ninth Circuit or another court with a history of rejecting the Bridgeport rule if litigation has been threatened. The Salsoul decision tips the weight of the authorities heavily on the side of recognizing a de minimis exception to copyright infringement of sound recordings and away from Bridgeport’s bright-line strict liability for sampling. While congressional action or a Supreme Court decision could resolve this split, neither seems particularly likely, at least for the foreseeable future, notwithstanding the prevalence of the act of sampling in the music industry.