RETURN OF THE DE MINIMIS EXCEPTION IN DIGITAL MUSIC SAMPLING: THE NINTH CIRCUIT'S RECENT HOLDING IN VMG SALSOUL IMPROVES UPON THE SIXTH CIRCUIT'S HOLDING IN BRIDGEPORT, BUT RAISES QUESTIONS OF ITS OWN.

• Author: Di Cosmo, Francesco

Introduction

Sampling is a musical production practice that has become increasingly common since the 1980s. (1) A producer samples by copying a section of a sound recording and inserting it into the piece of music she is producing. (2) The type of sound recording sampled by producers can vary vastly from piece to piece. Numerous pop and hip hop songs sample from songs of various genres (rock, classical music, or other pop songs, for example). (3) Audio from a film, commercial, or speech may also be inserted into a song. Typically, the purpose of these samples is either to make use of the musical value of the sample or to trigger some sense of familiarity in the listener. (4) Some artists have made a career entirely out of sampling sections of different songs and fusing them into one piece. (5)

Often, samples are somehow altered or adapted to make the sound fit within the new piece. (6) This may include altering pitch, key, or speed, and may require the producer to isolate the sample from other sounds that occur simultaneously in the original work. (7) Samples also tend to be short segments of the original work, no more than a few seconds long. (8) However, while these are the trends in sampling, they are not the rule. (9)

Predictably, sampling creates a copyright issue when the sampled piece is under copyright and the sampling producer does not acquire a license to use the sampled copyrighted material. (10)

In a number of copyright contexts outside of music sampling, courts have found that there exists a de minimis exception to copyright infringement. (11) This exception provides that even where copyrighted material is used without a license, in cases where the use was particularly brief or otherwise insubstantial, the unlicensed use will not constitute copyright infringement, even if all other elements of copyright infringement are met. (12)

Within the context of the music industry, a circuit split has emerged with respect to the recognition of the de minimis exception. Specifically, the split revolves around recognition of the exception where a producer of a musical work samples a copyrighted digital sound recording without license to do so. (13) In 2005, the Sixth Circuit held in Bridgeport Music, Inc. v. Dimension Films that the de minimis exception does not exist in the context of digital sound sampling. (14) Therefore, the court held, all unlicensed sampling of copyrighted digital sound recordings is completely prohibited, no matter how short or minimal the sample. (15)

Eleven years later, in 2016, the Ninth Circuit reached the opposite conclusion, holding that a de minimis exception does exist in the context of digital sound sampling. (16) Therefore, unlicensed sampling of copyrighted digital sound recordings does not constitute copyright infringement if the average audience would not recognize the appropriation. (17) While the Ninth Circuit's opinion is persuasive in its legal analysis, which focuses heavily on congressional intent, (18) the average audience test for de minimis use that follows from its ruling creates certain significant problems that do not exist under the Sixth Circuit's bright-line rule prohibiting all unlicensed sampling. (19)

Parts I, II, and III of this note will explain the differences between the Sixth Circuit's reasoning in Bridgeport and the Ninth Circuit's reasoning in VMG Salsoul. While the focus of these parts is on illustrating the flaws in the Sixth Circuit's legal analysis, it will also introduce the complications that arise from the Ninth Circuit's average audience test, which do not exist under the Sixth Circuit's simpler, bright-line rule. Part IV will introduce scholarly criticism of another test used in copyright contexts--the substantial similarity test--and examine the ways in which the average audience test announced by the Ninth Circuit in VMG Salsoul shares the same flaws for which the substantial similarity test has been criticized. Finally, Part V will examine proposals for improving upon the average audience test.

1. THE SIXTH CIRCUIT'S ANALYSIS IN BRIDGEPORT

   In 2003, prior to the Bridgeport decision in 2005, the court in Newton v. Diamond applied the de minimis exception to music sampling. (20) When Bridgeport came to the District Court for the Middle District of Tennessee, the court followed the lead of Newton. The Bridgeport court held that the de minimis exception applied to the defendant (the band N.W.A.) in its unlicensed sampling of a four-second guitar riff from a song by plaintiff George Clinton, Jr. (21)

   On appeal, however, the Sixth Circuit held that the de minimis exception does not exist for the purposes of musical sampling, no matter how short or insubstantial the sample may appear. (22) The court succinctly summarized, "Get a license or do not sample." (23) The court reached this holding on the theory that not recognizing a de minimis exception in cases of sampling comports with a plain-language reading of 17 U.S.C. [section] 114(b), part of the Copyright Act, (24) and best serves public policy through the implementation of a clear, bright-line rule. (25)

   First, the court held that a plain-language reading of the Copyright Act supports the notion that unlicensed sampling should be entirely prohibited. (26) The Copyright Act includes language stating that license holders have the exclusive right to sample their own work. The court interpreted this language to mean that no one other than a license holder has the right to sample licensed sound recordings. (27)

   Next, the court held that the congressional intent underlying the Act was not relevant to the case. (28) While the defendants had argued that the legislative history of the Act indicated an intention to prevent the stifling of creativity rather than an intent to protect copyright holders' property rights, (29) the court noted that digital music sampling did not exist when the statute was passed. (30) The court decided that Congress's inability at the time of the statute's passing to contemplate present-day musical sampling rendered the defendants' argument unpersuasive, and made the legislative history documents for the Copyright Act inapplicable to the facts of Bridgeport. (31)

   Furthermore, the court held that completely prohibiting unlicensed sampling does not actually stifle creativity in any meaningful way. (32) The court noted that alternatives exist to sampling in cases where a producer wishes to mimic a sound from another piece. (33) For example, a producer could simply reproduce the sound in a studio if the producer has access to the same instrument. (34) Since this alternative exists, the prohibition of unlicensed sampling does not, according to the court, prevent producers from following their creative impulses. (35)

   Finally, the court noted that a bright-line rule would best promote the important public policy goal of clarity in copyright contexts. (36) The court stated that in copyright cases, clear and easily interpreted rules are particularly important. (37) The court noted that the elimination of the de minimis exception in digital sampling cases would provide much greater clarity than recognition of a de minimis exception. (38) Producers would know that they cannot sample without a license, and copyright or license holders would know that any unlicensed sample is automatically illegal. (39) Recognition of a de minimis exception could potentially leave producers and copyright holders unsure as to the legality of a musical piece including sampled material until it had been challenged in court. (40) Thus, the court held that not recognizing a de minimis exception better served the public policy goals sought by the judicial system in the area of copyright law. (41)

2. THE NINTH CIRCUIT'S ANALYSIS IN VMG SALSOUL

   In 2013, VMG Salsoul v. Ciccone arose in the Central District of California. VMG Salsoul, a company that owned the Salsoul record label, sued Warner Brothers and Madonna Louis Ciccone (known in the music industry simply as Madonna) for copyright infringement. (42) Madonna, in her song "Vogue," published by a Warner Brothers-owned record label, had sampled a "horn hit" (a chord played on the horn) from the song "Love Break" by The Salsoul Orchestra. (43) "Love Break" was held under copyright by the Salsoul record label, and VMG Salsoul sued Warner Brothers and Madonna in an attempt to enforce its copyright. (44)

   The District Court for the Central District of California held that even if there had been appropriation subject to copyright protection, Madonna's copying of the horn hit was de minimis (45) On these grounds, it granted summary judgment for the defendants. (46) The court noted that the plaintiff had relied on Bridgeport in its opposition to the defendants' motion for summary judgment, but found that Bridgeport was inapplicable, in part because Sixth Circuit decisions are not binding on the Ninth Circuit, which had not yet adopted the Bridgeport decision. (47)

   On appeal, the Ninth Circuit affirmed the District Court's holding that any copying, if it existed, was de minimis, and thus did not constitute copyright infringement. (48) It therefore affirmed the District Court's grant of summary judgment to the defendants. (49) The Ninth Circuit noted that in reaching this conclusion it was directly contradicting the Sixth Circuit's decision in Bridgeport, creating a circuit split. (50) The court called it an "unusual step" to intentionally create a circuit split and noted that a circuit split would be "particularly troublesome in the realm of copyright" (51) given the importance of consistent rules in the field. (52) However, the opinion also emphasized that the goal of avoiding circuit splits is subordinate to the duty to interpret congressional intent. (53) Since the court determined that the Sixth Circuit had failed to properly factor congressional intent into its decision, the Ninth Circuit was willing to reach a contradictory ruling. (54)

   As noted in...