A Look at the Post-'Vogue' De Minimis World

It had been up in the air as to whether the de minimis use defense could be raised in infringement actions over sound recording samples.

It had been up in the air as to whether the de minimis use defense could be raised in infringement actions over sound recording samples.

The controversy increased last summer, when the U.S. Court of Appeals for the Ninth Circuit decided, in a lawsuit brought over a sample in Madonna’s recording “Vogue,” that it could. VMG Salsoul LLC v. Ciccone, 824 F.3d 871 (9th Cir. 2016) (http://bit.ly/2gojURN). The sound-recording de minimis issue was the subject of heated comments during a panel in November at the State Bar of Texas Annual Entertainment Law Institute Conference in Austin.

Sixth Circuit View

Some history: In 2004, the U.S. Court of Appeals for the Sixth Circuit declined to apply the de minimis defense when it found, in favor of a copyright plaintiff, that the unlicensed sampling of any segment of a sound recording (in that case three quick, successive notes from a George Clinton sound recording), even if digitally altered, automatically infringed. 

Bridgeport Music Inc. v. Dimension Films, 401 F.3d 647 (6th Cir. 2004). (The Sixth Circuit later acknowledged that a fair use defense could be considered by the district court. SeeBridgeport Music Inc. v. Dimension Films, 410 F.3d 792 (6th Cir. 2005). But the fair use issue wasn’t tested because the parties settled their dispute.)

Just about every federal district court to consider the issue outside the Sixth Circuit rejected that appeals court’s position.

Beastie Boys Case

In 2003, in the first federal appeals court ruling involving music sampling, the Ninth Circuit decided that the Beastie Boys’ unlicensed use of a sample of a three-note segment — from flutist James Newton’s composition “Choir” in the rap group’s recording “Pass the Mic” — was de minimis and thus not infringing. 

Newton v. Diamond, 349 F.3d 591 (9th Cir. 2003). Samples of pre-existing songs can be derivative works. But the fundamental issue in the de minimis defense is whether an average audience would recognize a plaintiff’s work has been appropriated.

In the Beastie Boys case, the rappers sampled a six-second segment of the song “Choir” made up of a C/D-flat/C sequence behind which Newton played a simultaneous C note on flute. In reaching its de minimis decision for the defendants, the Ninth Circuit decided that the background C was part of Newton’s sound recording of “Choir”; the Beastie Boys had obtained a sampling license for this from ECM Records, the label for which Newton recorded. The Ninth Circuit went on to rule that the remaining three-note segment in the sample wasn’t qualitatively or quantitatively important to Newton’s song.

The Sampling Suit Over ‘Vogue’

The Ninth Circuit didn’t address whether defendants who sample from a sound recording can use a de minimis defense until its decision in VMG Salsoul. The case was filed over the unlicensed use of brief segments of “horn hits” from the Salsoul Orchestra’s early 1980s recording “Ooh I Love It (Love Break)” in Madonna’s 1990s dance hit “Vogue.” (Co-defendant Shep Pettibone produced both recordings but didn’t appear to own an interest in the “Love Break” copyright.)

VMG Salsoul alleged infringement of both its “Love Break” song and sound recording copyrights. But the district court granted summary judgment for the defendants, first because the court found the 0.23-second segment Pettibone had sampled in single and double horn inserts wasn’t significant enough to be copyright protectable; but even if it was, the samples in “Vogue” were de minimis.

The Ninth Circuit emphasized the “consistent application of the de minimis exception across centuries of jurisprudence,” but added that “it is an open question in this circuit whether the exception applies to claims of infringement of a copyrighted sound recording.”

Non-Infringing Use

Affirming there wasn’t infringement, the Ninth Circuit first observed as to the “Love Break” song: “The snippets of the composition that were (as we must assume) taken here are much smaller than the sample at issue in Newton. The copied elements from the ‘Love Break’ composition are very short, much shorter than the six-second sample in Newton.

The single horn hit lasts less than a quarter-second, and the double horn hit lasts — even counting the rests at the beginning of the measure — less than a second. Similarly, the horn hits appear only five or six times in ‘Vogue,’ rather than the dozens of times that the sampled material in Newton occurred in the challenged song in that case.”

As a result, the Ninth Circuit determined: “A reasonable jury could not conclude that an average audience would recognize an appropriation of the ‘Love Break’ composition.”

In considering the de minimis defense for sound recording infringement litigations, the Ninth Circuit adamantly noted: “Other than [the Sixth Circuit's Dimension Films decision] and the district courts following that decision, we are aware of no case that has held that the de minimis doctrine does not apply in a copyright infringement case. Instead, courts consistently have applied the rule in all cases alleging copyright infringement.”

In light of this, the Ninth Circuit rejected VMG Salsoul’s position that, when extending the federal Copyright Act to sound recordings in the 1970s, Congress had eliminated a de minimis defense to infringement claims over those recordings. Instead, the appeals court said, “the statutory text, confirmed by the legislative history, reveals that Congress intended to maintain the de minimis exception for copyrighted sound recordings.”

(Ninth Circuit Judge Barry G. Silverman, insisted in dissent, however: “In any other context, this would be called theft. It is no defense to theft that the thief made off with only a ‘de minimis’ part of the victim’s property.” Judge Silverman added, “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 without permission.”)

The Texas Bar Panel

At the State Bar of Texas panel, Michael C. Donaldson — of the Beverly Hills-based Donaldson + Callif, author of Clearance & Copyright: Everything You Need to Know for Film and Television and counsel to documentary filmmakers on fair use issues, including music — took aim at the Sixth Circuit. (The panel, which this author moderated, also included attorney Joshua T. Love from the Los Angeles office of Reed Smith.)

In materials he prepared, Donaldson emphasized: “I can’t totally squelch my disapproval of Bridgeport. The court … based its opinion on the proposition that the Copyright Act grants the copyright holder the exclusive right ‘to duplicate the sound recording in the form of phonorecords or copies that directly or indirectly recapture the actual sounds fixed in the recording.’ 17 U.S.C. § 114(b). The court asserted that because one cannot ‘pirate the whole sound recording,’ one may not “lift” or “sample” something less than the whole.’”

“Out of the blue,” Donaldson continued, “the Bridgeport court yielded to the popular and consistent request for some bright line rules, admitting that ‘the music industry, as well as the courts, are best served if something approximating a bright-line test can be established.’” Donaldson added: “The court even pointed out its self-interest in such a rule, while disavowing any intention of letting that self-interest influence its decision: ‘When one considers that [the district court judge] has hundreds of other cases all involving different samples from different songs, the value of a principled bright-line rule becomes apparent.’”

Donaldson insisted that “this dragged music infringement jurisprudence into a dark period.”

Attorney Fees

Despite its opposition to the Sixth Circuit’s view, the Ninth Circuit had vacated the Central District of California grant of attorney fees, under §505 of the Copyright Act, to the Madonna defendants. The Ninth Circuit explained: “Here, the district court concluded that Plaintiff’s legal claim premised on Bridgeport was objectively unreasonable because, in the court’s view, Plaintiff should have been aware of the critiques of Bridgeport and should have declined to bring the claim.

In relying on that reasoning, the court erred as a matter of law. It plainly is reasonable to bring a claim founded on the only circuit-court precedent to have considered the legal issue, whether or not our circuit ultimately agrees with that precedent.”

Ironically, none of the three court rulings — all California federal district courts — that as of this article’s writing have cited VMG Salsoul, used the Ninth Circuit’s de minimis position for sound recordings. Instead, two cited VMG Salsoul for its view attorney fees perspective (Erickson Productions Inc. v. Kast, 5:13-cv-05472 (N.D.Calif. 2016); Johnson v. Storix Inc., 3:14-cv-1873 (S.D.Calif. 2016)). The latter district court decision contrasted the VMG Salsoul and Erickson Productions, by explaining: “The Ninth Circuit recently held that, ‘[i]f a plaintiff has a claim that hinges on disputed facts sufficient to reach a jury, that claim necessarily is reasonable because a jury might decide the case in the plaintiff’s favor.’ … Other courts, however, have noted that a ‘claim that is not “objectively unreasonable” at the outset can become so if the litigant continues to pursue it when the litigant knew or should have known that the chance of success was slim to none.’”

The third California federal court ruling to cite VMG Salsoul is Diamond Foods Inc. v. Hottrix LLC, 119 U.S.P.Q.2D (BNA) 1553 (N.D.Calif. 2016), based on a copyright infringement declaratory action by one mobile app seller against another, in which the district court noted: “The question of originality is separate from the question of whether Defendant’s alleged protectable elements and combination are de minimis such that any copying would be trivial and could not be actionable as infringement. SeeVMG Salsoul LLC v. Ciccone.”


The Ninth Circuit’s central principle, the embrace in VMG Salsoul of the de minimis defense in sound recording infringement actions, certainly has given future defendants in such litigations reason to celebrate. But the Sixth Circuit’s hardline refusal to do so nevertheless continues to make the unauthorized sampling of brief, and even altered, sound recording segments a risky proposition.

In its 2016 White Paper on Remixes, the U.S. Department of Commerce rejected compulsory licensing for “remixes,” a term within which the Commerce Department included sampling.

The views expressed in the article are those of the authors and not necessarily the views of their clients or other attorneys in their firm.

Originally published on the Law Journal Newsletters. All rights reserved. This material may not be published, broadcast, rewritten, or redistributed.

Contributing Author

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Stan Soocher

Stan Soocher is Editor-in-Chief of Entertainment Law & Finance and a tenured Associate Professor of Music & Entertainment Studies at the University of Colorado’s Denver Campus. He is...

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