Vmg Salsoul, Llc v. Ciccone: the Ninth Circuit Finds That the De Minimis

• Publication year: 2022

51 Creighton L. Rev. 193. VMG SALSOUL, LLC V. CICCONE: THE NINTH CIRCUIT FINDS THAT THE DE MINIMIS

VMG SALSOUL, LLC V. CICCONE: THE NINTH CIRCUIT FINDS THAT THE DE MINIMIS

EXCEPTION IN SOUND RECORDING COPYRIGHT INFRINGEMENT ACTIONS IS IN HARMONY WITH PREVIOUS COPYRIGHT JURISPRUDENCE

I. INTRODUCTION

The Constitution of the United States empowered Congress to give creators exclusive rights in their works of authorship to promote the useful arts.(fn1) In § 106 of the Copyright Act,(fn2) Congress codified the exclusive rights that a copyright afforded to the creators of books, music, and other works of authorship.(fn3) Section 114 of the Copyright Act sets out limitations to the exclusive rights a creator has in a sound recording.(fn4) While copyrights have different limitations and qualifications from other works of authorship, some courts and commenters have differed on whether sound recording copyright infringement cases are subject to the de minimis copying exception.(fn5)

In VMG Salsoul, LLC v. Ciccone,(fn6) the United States Court of Appeals for the Ninth Circuit found that the de minimis exception applied in a sound recording infringement action.(fn7) In VMG, a portion of the song Ohh I Love It (Love Break), was sampled in the recording of the hit dance song Vogue.(fn8) The owners of the Love Break sound recording copyright brought a copyright infringement action against the creators of Vogue.(fn9) The United States District Court for the Central District of California granted the defendants Pettibone and Lexor's, motion for summary judgment reasoning that the sampling of Love Break was de minimis and, therefore, not actionable.(fn10) The Ninth Circuit acknowledged that its decision ran contrary to a decision of the United States Court of Appeals for the Sixth Circuit, but affirmed the ruling of the lower court that found that the de minimis exception did, in fact, apply to sound recordings.(fn11)

This Note will first examine the facts and holding of VMG.(fn12) Next, this Note will discuss the legislative intent of the Copyright Act and what constitutes copying under the Copyright Act.(fn13) Then, this Note will detail the Sixth Circuit's determination that the de minimis exception does not apply to sound recording infringements.(fn14) The Note will next discuss the United States Courts of Appeal for the Second and Ninth Circuit's de minimis use precedent.(fn15) Next, this Note will argue that a copyright for a sound recording was not intended to have more rights than any other work of authorship.(fn16) Then, this Note will argue that the Copyright Act is meant to protect works that are more than trifles.(fn17) Further, this Note will argue that a technical infringement is not actionable when the appropriation is not identifiable.(fn18) Finally, this Note will conclude that the de minimis exception applies to sound recording copyrights as it applies to other works of authorship.(fn19)

II. FACTS AND HOLDING

In VMG Salsoul, LLC v. Ciccone,(fn20) plaintiff VMG Salsoul ('VMG"), the copyright holder to the song Ooh I Love it (Love Break) ("Love Break"), brought a copyright suit alleging that the song Vogue by Madonna Louise Ciccone ("Madonna") violated the composition and sound recording copyrights to Love Break.(fn21) In the early 1980s, Shep Pettibone ("Pettibone") was hired by the Salsoul Record label to remix master tracks of existing songs to create derivative works.(fn22) Love Break was created as a result of the remix efforts; however, Pettibone created the song under a work for hire agreement, which deprived him of any rights in the composition.(fn23) In 1990, Pettibone recorded the song Vogue with Madonna, and the song became a hit after its release.(fn24) Verse Music Group ("Verse") owns VMG, and its CEO and former vice president were also involved with Pettibone and Madonna in the creation of Vogue and its remixes.(fn25) In February 2011, Verse CEO Curt Frasca convinced VMG to acquire the copyrights to the Salsoul works, stating that he believed there was potential to recover money from sample claims.(fn26)

Upon acquiring Salsoul's copyright catalog, VMG alleged that Pettibone sampled a horn hit from Love Break and used it in the creation of Vogue without permission.(fn27) VMG provided notice of copyright infringement to all parties involved in the creating, publishing, manufacturing, distributing, and selling of copies of Vogue.(fn28) VMG filed a complaint against defendants alleging deliberate and unauthorized use of VMG's sound recording copyright for Love Break in the United States District Court for the Central District of California.(fn29) Pettibone and Lexor Music filed an amended motion for summary judgment, which was subsequently joined by the remaining defendants (Madonna, Warner Music Group, Warner Bros. Records Inc., WB Music Corporation, Blue Disque Music Company, Inc., and WEBO Girl Publishing Inc.).(fn30) VMG argued that the court should not conduct a substantial similarity analysis because the claim was for infringement of a sound recording.(fn31) The district court declined to follow the United States Court of Appeals for the Sixth Circuit's opinion advanced by VMG and instead followed the test for substantial similarity discussed by the United States Court of Appeals for the Ninth Circuit.(fn32) Following Ninth Circuit case law, the district court granted the defendant's motion for summary judgment on two alternative grounds.(fn33) The district court first held that the horn hit was not sufficiently unique to satisfy the originality element of a copyright action because horn hits were widely used several music genres.(fn34) The court then found that even if the horn hit were sufficiently unique, the copying was de minimis because the average, or ordinary observer, would not regard the two works as the same.(fn35)

On appeal, the Ninth Circuit affirmed the lower court's ruling regarding VMG's copyright claims.(fn36) The court rejected VMG's argument that the lower court erred by conducting a de minimis analysis because no such exception is afforded in sound recording copyrights.(fn37)Specifically, the Ninth Circuit noted that the Sixth Circuit was the only authority that held that the de minimis exception does not apply to sound recording copyrights.(fn38) The Ninth Circuit pointed out language in the Copyright Act that illustrated Congress did not intend to treat sound recordings different from other works of authorship.(fn39) Further, the court pointed out the logical fallacy in the Sixth Circuit's interpretation of § 114(b) and noted exclusive rights cannot be generalized to all circumstances.(fn40) While the court acknowledged that declining to follow Bridgeport Music, Inc. v. Dimension Films(fn41) would officially create a circuit split, the court also pointed out that district courts not bound by the decision have declined to follow Bridgeport.(fn42) In affirming the decision, the Ninth Circuit specifically held that the lower court's granting of summary judgment on the issue of de minimis copying was correct.(fn43)

III. BACKGROUND

A. THE COPYRIGHT ACT OF 1976 EXTENDS COPYRIGHT PROTECTIONS TO NEW WORKS OF AUTHORSHIP BUT DOES NOT ADD ANY NEW RIGHTS

The Constitution of the United States empowered Congress to protect the works of authors and inventors by giving them exclusive rights to their works for a limited time.(fn44) Exercising this power, the United States Congress enacted its first Copyright Act in 1790, and revised it several times throughout the years.(fn45) When the Copyright Act was revised in 1909, motion picture and sound recordings were new technologies, and other mediums were being introduced and developed.(fn46) Measures to revise the act were introduced as early as 1924, but no revisions were enacted until 1974.(fn47) In 1974, Congress approved a limited revision measure out of necessity, although it was still working on a comprehensive revision to the Copyright Act.(fn48)

In 1976, Congress introduced bills in both houses similar to a 1973 general revision bill that was considered but not passed.(fn49) Section 106 of the revision bill enumerated the five fundamental rights a copyright affords its owner.(fn50) House Report 1476 specified that § 106 was meant to list the exclusive rights broadly, while §§ 107 through 118 were meant as limitations that were to be read in conjunction with § 106.(fn51) Section 114 sets the limitations for the exclusive rights for copyright holders in sound recordings.(fn52) House Report 1476 states that §114(b) directs that the copyright holder's protection is limited only to sounds contained within the recording.(fn53) Additionally, an amendment to the revision bill was adopted in order to clarify that the exclusive right to prepare derivative works only extended to the rearranging or remixing of the actual sounds fixed in the sound recording.(fn54) Since § 114 was meant to be a limit on the general rights conferred by § 106, it follows that the section did not expand sound recording copyrights by eliminating the de minimis exception in actions of infringement.(fn55)

B. ACTIONABLE COPYRIGHT INFRINGEMENT REQUIRES COPYING THAT IS SUBSTANTIALLY SIMILAR

In Feist Publications, Inc. v. Rural Telephone Service, Co.,(fn56) the United States Supreme Court announced that not all copying is an actionable infringement; rather, the plaintiff must prove it owned a copyright and the original elements of its...