The U.S. Court of Appeals for the Ninth Circuit ruled in VMG Salsoul, LLC v. Ciccone1 that a 0.23-second snippet used in Madonna's song "Vogue" was de minimis, or small enough to be trivial. In doing so, that court opened up a split between the Ninth and Sixth Circuits, which may lead the U.S. Supreme Court to weigh in to clear up the subject.
Plaintiff VMG Salsoul, LLC owns the rights to the sampled work, 1976's "Ohh, I Love it (Love Break)." The plaintiff alleged that Shep Pettibone, a producer of "Vogue" who also recorded "Love Break," had sampled a "horn hit" from "Love Break" and used it for the 1990 Madonna track.2 In music notation, a "stab" or "hit" is a single staccato chord that adds dramatic impact to a composition. These are usually provided by horns (real or synthesized); thus the term "horn hit."
Mr. Pettibone copied one quarter-note of a four-note chord, lasting 0.23 seconds. He isolated the horns by filtering out the other instruments playing at the same time, transposed it to a different key, truncated it, and added effects and other sounds to the chord itself. For a "double horn hit" that also appears in "Vogue," Mr. Pettibone used the same process, except that he duplicated the single horn hit and shortened one of the duplicates to create the eighth-note chord from the quarter-note chord. Finally, he overlaid the resulting horn hits with sounds from many other instruments to create the song "Vogue."
The legal issue was whether Madonna and Mr. Pettibone should have obtained a license for the sampled sound, or if the sample qualified as "de minimis," meaning so small that it did not matter from a legal point of view.
The Ninth Circuit Ruling
In the Ninth Circuit's majority opinion, Judge Susan Graber writes,
Defendants copied, at most, a quarter-note single horn hit and a full measure containing rests and a double horn hit... 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.3
The opinion goes on,
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."... 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.4
The court held that Mr. Pettibone engaged in de minimis copying and that it was not infringing. The majority observed that the "horn hit," consisting of trombones and trumpets, shows up on "Vogue" five or six times (depending on the version of the song) and that other instruments are playing at the same time. The majority also noted that even an expert in the case was not able to say accurately which parts of "Love Break" had been copied. In other words, a highly qualified and trained musician listened to the recordings with the express aim of discerning which parts of the song had been copied, but could not do so accurately. Thus, the majority held that no reasonable juror could conclude that an average audience would do so either.
In his dissenting opinion, Judge Barry Silverman argued that even the smallest sample of music used without license should be considered a copyright violation. "In any other context, this would be called theft," he wrote.5 Judge Silverman was not persuaded that there should be a de minimis defense to what he perceives as outright thievery. He wrote,
True, get a license or do not sample doesn't carry the same divine force as Thou Shalt Not Steal, but it's the same basic idea. I would hold that the de minimis exception does not apply to the sampling, copying, stealing, pirating, misappropriation—call it what you will—of copyrighted fixed sound recordings. Once the sound is fixed, it is tangible property belonging to the copyright holder, and no one else has the right to take even a little of it with- out permission.6
Creation of a Circuit Spit
Judge Silverman is not without legal precedent to support his position. In fact, the Ninth Circuit's ruling is the first by a federal appeals court to directly reject the Sixth Circuit's 2005 decision Bridgeport Music, Inc. v. Dimenson Films.7 That case involved an N.W.A. rap song that sampled a Funkadelic riff, and found that the de minimis defense simply does not apply to sound recording copyrights. That ruling, which was controversial at the time, effectively turned any amount of sampling into copyright infringement.
The Ninth Circuit is now in direct conflict with the Sixth Circuit on the issue of whether it is legally permissible to take even the smallest amount without permission. The Sixth Circuit decision in Bridgeport has been controversial in the legal and musical community and has opened up copyright infringement liability for sampling musicians. For example, it may explain why a lawsuit filed last year against Justin Bieber and Skrillex over the song "Sorry" was filed in Nashville, Tennessee, of all places: Nashville is within the Sixth Circuit, a jurisdiction that has become friendly for plaintiffs in song-theft cases thanks in part to Bridgeport.8
But the majority opinion for the Ninth Circuit notes that with the exception of the Bridgeport case, there has been "consistent application of the de minimis exception across centuries of jurisprudence" and believes that Congress intentionally put limitations on the rights of a sound recording copyright holder.9 Further, the majority notes that the de minimis rule applies to other artistic works. "A computer program can, for instance, 'sample' a piece of one photograph and insert it into another photograph or work of art."10 The majority adds that "[w] e are aware of no copyright case carving out an exception to the de minimis requirement in that context, and we can think of no principled reason to differentiate one kind of 'physical taking' from another."11
Regarding Bridgeport, the Ninth Circuit does not even try to distinguish it: "Because we conclude that Congress intended to maintain the 'de minimis' exception for copyrights to sound recordings, we take the unusual step of creating a circuit split by disagreeing with the 6th Circuit's contrary holding in Bridgeport."12
Ripe for U.S. Supreme Court
The "Vogue" case raises the possibility of review by a Supreme Court that may be on the lookout for some less politically-charged disputes. If the Supreme Court does eventually step in, the top court would have an opportunity to clear up an issue that has weighed down rap and hip- hop, and is now doing the same for rock and pop. In the "Vogue" case it was certainly favorable to the defense that the copying was less than a quarter-second. Still, the decision leaves us with no idea how much copying would cause the de minimis defense to fail. A half-note? A full note? No key transposition? Perhaps the Supreme Court will address this subject.
It is interesting that "Vogue" is over a quarter-century old, but the lawsuit over sampling on the hit song was only recently filed. One may ask why the statute of limitations did not expire decades ago? The answer is found in the United States Supreme Court's 2014 decision in Petrella v. Metro-Goldwyn-Mayer (involving the film Raging Bull).13 That decision undermined the three-year federal statute of limitations by recognizing that the limitations period runs from each infringing use of the copyrighted material, and then holding that the doctrine of laches does not constrain a plaintiff from suing to recover profits from republication of infringing materials within that period, even if the original infringement took place well more than three years before the suit was filed. This effectively green- lighted demands for damages over alleged infringements that originally occurred decades ago. The results include last year's trial over Led Zeppelin's "Stairway to Heaven"14 and an infamous $7.4 million jury verdict in 2015 against Robin Thicke over the song "Blurred Lines."15
The "Blurred Lines" decision, especially, has put a cloud over the entire music industry. Industry observers feel the ruling penalized elements of songs long thought of as being fair game, like the generic 'feel' of a recording, and warned of a chilling effect on creativity.
While a solution to the issue regarding of laches and the statute of limitations for copyright claims will likely require a legislative change, it is possible that the Ninth Circuit's decision in the "Vogue" case, upholding the principle of de minimis sampling, could help to thaw the chill that many in the music industry are feeling may constrain creative expression.
1 VMG Salsoul, LLC v. Ciccone (9th Cir. 2016) 824 F.3d 871. Defendant "Ciccone" is Madonna Louise Ciccone, the artist popularly known as "Madonna."
2 A brief YouTube video illustrating Shep Pettibone's use of the "Love Break" horn hit in Madonna's "Vogue" is available at: https://www.youtube.com/watch?v=PgDJa1BaX1o.
3 VMG Salsoul, supra, 824 F.3d at 879.
4 Id. at 880.
5 Id. at 888.
6 Id. at 890.
7 Bridgeport Music, Inc. et al. v. Dimension Films, et al. (6th Cir. 2005) 410 F.3d 792.
8 Dienel v. Warner-Tamerlane Publishing Corp. et al., Docket No. 3:16-cv-00978 (D.Tenn., May 25, 2016).
9 VMG Salsoul, supra, 824 F.3d at 883.
10 Id. at 885.
12 Id. at 886.
13 Petrella v. Metro-Goldwyn-Mayer, Inc. (2014) 134 S.Ct. 1962
14 Skidmore v. Zeppelin et al., Docket No. 2:14-cv-03089 (E.D. Pa. May 31, 2014)
15 Williams v. Bridgeport Music, Inc. et al., Docket No. 2:13-cv- 06004 (C.D.Cal. Aug. 15, 2013)