Case Analysis: Samples & Copyright Infringement

On Sept. 7, the U.S. Court of Appeals for the Sixth Circuit in Nashville held that a two-second sample infringed the sound recordings copyright. The three-judge panel in Bridgeport Music Inc. et al. v

On Sept. 7, the U.S. Court of Appeals for the Sixth Circuit in Nashville held that a two-second sample infringed the sound recordings copyright. The three-judge panel in Bridgeport Music Inc. et al. v. Dimension Films et al. created a "new rule" in federal copyright law.

While some in the industry applaud this decision, many lawyers say the opinion is "bad law" or "wrong as a matter of law." Following is a summary of the opinion and a few points made by lawyers.

Bridgeport Music, Southfield Music, Westbound Records and Nine Records are related entities. In 2001, they commenced an action in the U.S. District Court for the Middle District of Tennessee. The complaint, reportedly more than 1,000 pages in length, alleged nearly 500 counts of copyright infringement relating to use of samples against about 800 defendants. It also asserted state law claims.

The District Court severed the complaint into 476 separate actions. According to an attorney familiar with the case, the works that were allegedly infringed were listed alphabetically. The present appellate case involves rap song "100 Miles and Runnin,'" which includes a sample from George Clinton and the Funkadelics' "Get Off Your Ass and Jam." It's one of the first cases to be addressed since "100" comes before the alphabetical listing begins.

"100 Miles" was included in the soundtrack to the 1998 film "I Got the Hook Up," produced by defendant No Limit Films, which is owned by Master P.

Bridgeport claimed ownership of Clinton's composition, and Westbound claimed ownership of the sound recording.

The District Court held that Bridgeport granted a written sample use license for Clinton's composition to two of the original owners of "100 Miles" and "their licensees." The "100 Miles" owners granted No Limit an oral synchronization license to use their work in the soundtrack. Therefore, Bridgeport's claim for infringement of the composition against No Limit was barred by the terms of the sample use license.

With respect to the sound recording of "Get Off," an expert retained by Westbound claimed that "100 Miles" contained a sample from the original recording, which opens with a three-note combination solo guitar riff that lasts four seconds. A two-second sample of that solo was copied, the pitch was lowered, and the sample was looped and extended to 16 beats. This sample appears in five places in "100 Miles," and each looped segment lasts approximately seven seconds.

The District Court granted summary judgment to No Limit on the grounds that the alleged infringement was de minimis and, therefore, not actionable. Westbound appealed from this decision.

No Limit claimed that the sample was not protected by copyright law because it was not original. It also claimed that the sample was legally "insubstantial" and, therefore, did not amount to actionable copyright infringement.

Originality: As the Court of Appeals noted, the District Court held that the recording was "original." Although only three notes that, "if struck together, comprise a chord, [the notes] instead are played one at a time in very quick succession ... The rapidity of the notes and the way they are played produce a high-pitched, whirling sound that captures the listener's attention and creates anticipation of what is to follow," the District Court wrote. No Limit did not appeal from this determination of originality.

However, the Court of Appeals made a statement, alarming to some lawyers, that "we also find that the requirement of originality is met by the fixation of sounds in the master recording."

Does this mean that anyone with a computer who records sounds will be claiming copyright protection in the future? The opinion is unclear in this regard.

De Minimis Copying and the New Rule: With respect to de minimis copying, the District Court held that in the context of digital sampling, whether examined under a qualitative/quantitative de minimis analysis or under the so-called "fragmented literal similarity" test, the sampling did not "rise to the level of a legally cognizable appropriation." Therefore, there was no unlawful infringement of the sound recording.

The appellate court stated that it was not following the arguments of the parties, the analysis of the District Court or any legal precedent. It was creating a "new rule" for copyright law based on its own analysis.

"The music industry, as well as the courts, are best served if something approximating a bright-line test can be established. Not necessarily a 'one size fits all' test, but one that, at least, adds clarity to what constitutes actionable infringement with regard to the digital sampling of copyrighted sound recordings."

The Court of Appeals analyzed the Copyright Act, noting that section 114(b) only permits copyright owners to prevent others from duplicating the actual sounds fixed in the recording and from creating a derivative work by rearranging, remixing or otherwise altering in sequence or in quality the actual sounds.

"This means that the world at large is free to imitate or simulate the creative work fixed in the recording so long as an actual copy of the sound recording itself is not made," the court wrote.

Under copyright law, the court concluded, "if you cannot pirate the whole sound recording ... you [cannot] 'lift' or 'sample' something less than the whole." Even two seconds sampled from a recording is actionable copyright infringement.

The appellate court gave three reasons for recommending this approach.

First, this approach is easy to enforce. "Get a license or do not sample," the court wrote. If an artist wants to incorporate a riff from another work, he is free to duplicate that sound in the studio.

Second, the court wrote, the copyright owner could not exact a license fee "greater than what it would cost the person seeking the license to just duplicate the sample."

Third, "sampling is never accidental. It is not like the case of a composer who has a melody in his head, perhaps not even realizing that the reason he hears this melody is that it is the work of another which he had heard before. When you sample a sound recording you know you are taking another's work product," the court stated.

This reasoning, however, over-simplifies the art and science of recorded music as well as the talent necessary to create the original sounds. Many in the rap and hip-hop industry, including lawyers, note that a better understanding of music and the process of recording by a court is important when making a decision on sampling.

The Court of Appeals went on to answer a question that industry reps may ask. Why may a person take three notes from a musical composition but not three notes from a sound recording?

First, the court explained that it was taking a "literal reading" approach, and believed the result was dictated by the Copyright Act. However, it did not consider legislative history because sampling was not in use when sound recordings were first granted separate copyright protection in 1971.

Industry and copyright lawyers are already questioning this statement. Even if sampling wasn't in use in 1971, legislative history shows that sound recordings were provided with less protection, not greater protection, than other copyrighted works. In addition, an inquiry whether the infringement is di minimis is accepted copyright law even though it resulted from judicial interpretation of the Act and not from the statute itself.

Second, even when a small part of a recording is sampled, the part taken is "something of value," the court wrote. The recording was sampled because it saved costs or added something to the recording or both. "It is a physical taking rather than an intellectual one," the court explained.

This statement has lawyers baffled. Copyright law protects only intellectual property, not physical property, which is governed by personal property law. It's unclear why the court made this distinction and what it means.

Finally, the Court of Appeals provided a number of reasons for its "new rule" that any copying of a sound recording for digital sampling purposes is an infringement.

First, several law-review and text writers have suggested that this is the proper interpretation of the Copyright Act regarding sound recordings.

Second, the rule doesn't stifle creativity because many artists and companies already seek licenses. Also, there will be artists and companies that will still choose to sample without a license and "take their chances."

Further, the court stated, "there is a large body of pre-1971 sound recordings that is not protected and is up for grabs as far as sampling is concerned."

This statement is alarming many copyright owners of older recordings, since states often protect these recordings under various statutes and common law, such as unfair-competition claims. Lawyers fear the court is inviting artists and producers to "sample like crazy."

Third, the court wrote, the music industry is capable of working out guidelines and a fixed schedule of license fees if it desires to do so.

Finally, if this is not what Congress intended, "it is easy enough for the record industry, as they have done in the past, to go back to Congress for a clarification or change in the law."

To avoid other courts from mis-applying this rule in pending cases, the Court of Appeals stated that the new rule should not play any role in pending litigation, or in claims that arose before this decision, when assessing whether infringement was "willful" or "intentional."

Many lawyers cannot help but think that the Court of Appeals was trying to make things simpler rather than correctly applying copyright law. After all, the court did address the issue.

It stated that judicial economy didn't drive its opinion, even though noting that the District Court "has 800 other cases all involving different samples from different songs," making the "value" of the simple test "apparent." The court believed that "[i]f any consideration of economy is involved it is that of the music industry ... It would appear to be cheaper to license than to litigate."

Much of the opinion seems to indicate that the court was searching for reasons to support its final decision rather than analyzing the law to reach a decision. One cannot help but notice that the court writes in more than one place about "economy." But is economy a solid legal reasoning for changing copyright law?

The case was remanded to the District Court for further proceedings.

Case: Bridgeport Music Inc., Westbound Records Inc., Southfield Music Inc., Nine Records Inc. v. Dimension Films, Miramax Film Corp., No Limit Films, Case Nos. 02-6521 and 03-5738, U.S. District Court for the Middle District of Tennessee at Nashville, Thomas A. Higgins, District Judge
Opinion: U.S. Court of Appeals for the Sixth Circuit, Sept. 7, 2004, Recommended for Full-Text Publication, before Judges Guy, Gilman and Barzilay, opinion written by Judge Ralph B. Guy, Jr.
Counsel for Plaintiffs: King & Ballow by Richard S. Busch and D'Lesli M. Davis, Nashville.
Counsel for Defendant No Limit Films: Loeb & Loeb by Robert L. Sullivan, John C. Beiter, Nashville.