Metropolitan News-Enterprise


Friday, June 3, 2016


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Ninth Circuit Upholds Dismissal of Suit Charging Madonna With Copyright Infringement




The copying of a minimal portion of a copyrighted song is not actionable as infringement, a divided panel of the Ninth U.S. Circuit Court of Appeals ruled yesterday.

The court affirmed the grant of summary judgment in favor of pop star Madonna, producer Shep Pettibone, Warner Bros. Records, Inc. and related companies, who were sued on a claim that that the horn part in the 1990 hit “Vogue” copied a 0.23-second segment of horns from the 1980s song “Love Break.” Pettibone produced both recordings.

VMG Salsoul, LLC sued Madonna, producer Shep Pettibone and Warner Bros Records, Inc. and related companies, claiming the horn segment was illegally copied from “Love Break.” VMG produced evidence, in opposition to the defendants’ summary judgment motion, that Pettibone “sampled” the segment, incorporating it into the later recording after modifying it slightly.

U.S. District Judge Beverly Reid O’Connell, granting summary judgment, agreed that there was evidence of “actual copying,” but said the segment was short enough to apply the “de minimis” exception to infringement claims.

Judge Susan Graber, writing for the Ninth Circuit, explained that under the circuit’s case law, use of copyrighted material is de minimis if the average audience would not recognize that the material was appropriated.

In this case, she explained, “[d]efendants copied, at most, a quarter-note single horn hit and a full measure containing rests and a double horn hit.” Having listened to the recordings, she said, “we conclude that a reasonable jury could not conclude that an average audience would recognize the appropriation of the composition.”

She cited Newton v. Diamond, 388 F.3d 1189 (9th Cir. 2004), which applied the de minimis exception to an action by jazz musician James W. Newton claiming the copyright to a song he composed and recorded was infringed when the Beastie Boys, sampled three notes and used them in a tape-loop for one of their songs.

The segment used in that case was considerably longer than the one VMG sued over, Graber pointed out. “Without careful attention, the horn hits are easy to miss,” Graber said.

She rejected the plaintiff’s argument that the de minimis exception, as applied to sound recordings, has been abrogated by the Digital Millennium Copyright Act, which provides in part that the rights to a sound recording “do not extend to the making or duplication of another sound recording” with certain qualities.

That provision, Graber explained, relates to “[a] new recording that mimics the copyrighted recording,” not to the situation “where, as here, the new sound recording as a whole sounds nothing like the original.” She rejected the Sixth Circuit rule announced in Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792 (6th Cir. 2005), which adopted a bright-line rule that any unauthorized copying of a copyrighted sound recording constitutes infringement under the DMCA.

The panel did, however, reverse an attorney fee award to the defendants, saying the plaintiffs’ theory was objectively reasonable as a matter of law, since it was supported by the only published appellate opinion on the issue.

Graber was joined by Judge David A. Ezra of the District of Hawaii, sitting by designation, but Judge Barry Silverman dissented and argued that Bridgeport Music was correctly decided.

“In any other context, this would be called theft,” Silverman said. “It is no defense to theft that the thief made off with only a ‘de minimis’ part of the victim’s property.”

Following the Sixth Circuit’s reasoning, Silverman said that “the pertinent inquiry in a sampling case is not whether a defendant sampled a little or a lot, but whether a defendant sampled at all.”

“The majority now proposes to introduce a different rule for this circuit, creating a circuit split, and providing a lower level of protection for copyright holders in a different area of the country,” he wrote.

Graber defended the circuit split in the majority opinion, writing that “the goal of avoiding a circuit split cannot override our independent duty to determine congressional intent.”

“Otherwise, we would have no choice but to blindly follow the rule announced by whichever circuit court decided an issue first, even if we were convinced, as we are here, that our sister circuit erred,” Graber wrote.

The case was argued in the Ninth Circuit by Robert S. Besser of Santa Monica for the plaintiff, and by Alexander Kaplan of Proskauer Rose LLP in New York and Richard S. Busch of King & Ballow in San Diego for the defendants.

The case is VMG Salsoul, LLC v. Ciccone, 13-57104.


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