Pop star Madonna and Shep Pettibone recorded and released the mega-hit dance song Vogue in the early 1990s. Pettibone recorded the song Love Break in the early 1980s. VMG Salsoul LLC claims ownership of both the sound recording and musical composition copyrights for Love Break. VMG sued Madonna, Pettibone, and others, for copyright infringement, claiming that Pettibone “sampled” (physically copied the actual sounds) of horn hits (horn chords) from Love Break in creating Vogue.
Ruling that the horn hits were not original under copyright law and, alternatively, that any horn hit sampling was de minimis, the district court granted summary judgment in favor of Madonna and Pettibone. The Ninth Circuit held that the de minimis exception to copyright infringement actions applies to all copyright infringement actions, including sound recordings. In a previous case, Newton v. Diamond, the Ninth Circuit held that the de minimis exception applied to musical composition infringement claims, but did not decide the sound recording question, since that question was not part of that case. The Ninth Circuit reversed the district court’s award of attorney’s fees to the defendants for abuse of discretion.
Since this case came before the Ninth Circuit from the district court’s decision on a motion for summary judgment, the Ninth Circuit viewed the facts in the light most favorable to VMG, the plaintiff.
VMG presented evidence of actual copying. However, proof of actual copying is not sufficient to establish copyright infringement.
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. Some copying is permitted. In addition to copying, it must be shown that this has been done to an unfair extent. In other words, to establish its infringement claim, Plaintiff must show that the copying was greater than de minimis.
(Opinion pdf pages 10 – 11).
Any Copying Was De Minimis
A de minimis use occurs only when an average audience would not recognize that the portion in question was taken from the work of another.
Musical composition copying analysis
When deciding whether a musical composition has been copied, courts compare the written compositions and disregard how musicians actually played the notes.
Viewing the evidence in the light most favorable to Plaintiff, Defendants copied two distinct passages in the horn part of the score for Love Break. First, Defendants copied the quarter-note single horn hit. But no additional part of the score concerning the single horn hit is the same, because the single horn hit appears at a different place in the measure. In Love Break, the notes for the measure are: half-note rest, quarter-note rest, single horn hit. In Vogue, however, the notes for the measure are: half-note rest, eighth-note rest, single horn hit, eighth-note rest. Second, Defendants copied a full measure that contains the double horn hit. In both songs, the notes for the measure are: half-note rest, eighth-note rest, eighth-note horn hit, quarter-note horn hit. In sum, Defendants copied, at most, a quarter-note single horn hit and a full measure containing rests and a double horn hit.
(Opinion pdf page 13).
Even in analyzing the written compositions, though, the Ninth Circuit also listened to the recordings, determining that a reasonable jury could not conclude that an average audience would recognize a piece from one composition was taken from the other composition.
Sound recording copying analysis
When deciding whether a sound recording has been copied, courts compare how musicians played the notes and disregard the written composition. The protected elements are the unique aspects of the musician’s performance.
Viewing the evidence in the light most favorable to Plaintiff, by accepting its experts’ reports, Pettibone sampled one single horn hit, which occurred at 3:35 in Love Break. Pettibone then used that sampled single horn hit to create the double horn hit used in Vogue.
The horn hit itself was not copied precisely. According to Plaintiff’s expert, the chord ‘was modified by transposing it upward, cleaning up the attack slightly in order to make it punchier [by truncating the horn hit] and overlaying it with other sounds and effects. One such effect mimicked the reverse cymbal crash. The reverb/delay tail was prolonged and heightened.” Moreover, as with the composition, the horn hits are not isolated sounds. Many other instruments are playing at the same time in both Love Break and Vogue.
After listening to the audio recordings submitted by the parties, we conclude that a reasonable juror could not conclude that an average audience would recognize the appropriation of the horn hit. That common-sense conclusion is borne out by dry analysis. The horn hit is very short—less than a second. The horn hit occurs only a few times in Vogue. Without careful attention, the horn hits are easy to miss. Moreover, the horn hits in Vogue do not sound identical to the horn hits from Love Break. As noted above, assuming that the sampling occurred, Pettibone truncated the horn hit, transposed it to a different key, and added other sounds and effects to the horn hit itself. The horn hit then was added to Vogue along with many other instrument tracks. Even if one grants the dubious proposition that a listener recognized some similarities between the horn hits in the two songs, it is hard to imagine that he or she would conclude that sampling had occurred.
(Opinion pdf pages 15 – 16).
The De Minimis Exception Applies to Sound Recordings, Too.
VMG urged the Ninth Circuit to follow the Sixth Circuit’s bright line rule from Bridgeport Music v. Dimension Films: For copyrighted sound recordings, any unauthorized copying—no matter how trivial—constitutes infringement.
The Ninth Circuit refused to adopt the Sixth Circuit’s approach.
The rule that infringement occurs only when a substantial portion is copied is firmly established in the law. The leading copyright treatise traces the rule to the mid-1800s. The reason for the rule is that the plaintiff’s legally protected interest is the potential financial return from his compositions which derive from the lay public’s approbation of his efforts. If the public does not recognize the appropriation, then the copier has not benefitted from the original artist’s expressive content. Accordingly, there is no infringement.
(Opinion pdf pages 17 – 18).
The Ninth Circuit ruled that nothing in the Copyright Act supports VMG’s argument that Congress intended to eliminate the de minimis exception for sound recordings.
Referring to 17 U.S.C. § 114(b), the Ninth Circuit stated:
Congress intended to make clear that imitation of a recorded performance cannot be infringement so long as no actual copying is done. There is no indication that Congress intended, through § 114(b), to expand the rights of a copyright holder to a sound recording.
Perhaps more importantly, the quoted passage articulates the principle that ‘infringement takes place whenever all or any substantial portion of the actual sounds are reproduced.’ That is, when enacting this specific statutory provision, Congress clearly understood that the de minimis exception applies to copyrighted sound recordings, just as it applies to all other copyrighted works. In sum, the statutory text, confirmed by the legislative history, reveals that Congress intended to maintain the de minimis exception for copyrighted sound recordings.
(Opinion pdf pages 24 – 25).
This case is VMG Salsoul, LLC v. Ciccone, Nos. 13-57104, 14-55837, Ninth Circuit Court of Appeals.
Judge Graber wrote the majority opinion, in which Judge Ezra joined.
Judge Silverman dissented.
The plaintiff is the owner of a copyright in a fixed sound recording. This is a valuable property right, the stock-in-trade of artists who make their living recording music and selling records. The plaintiff alleges that the defendants, without a license or any sort of permission, physically copied a small part of the plaintiff’s sound recording – which, to repeat, is property belonging to the plaintiff – and, having appropriated it, inserted into their own recording. If the plaintiff’s allegations are to be believed, the defendants deemed this maneuver preferable to paying for a license to use the material, or to hiring their own musicians to record it. In any other context, this would be called theft. It is no defense to theft that the thief made off with only a ‘de minimis’ part of the victim’s property.
(Opinion pdf page 33).
Judge Silverman thought the Ninth Circuit should follow the Sixth Circuit’s approach in Bridgeport Music, Inc. v. Dimension Films.