With its decision in VMG Salsoul v. Ciccone, the Ninth Circuit Court of Appeals created a circuit split that could greatly impact copyright infringement claims based on unlicensed music sampling. For the advertising industry, this decision affects the risk assessment involved when creating or using music that contains “samples”. Read on for more.

On June 2, 2016, the Ninth Circuit concluded that the unauthorized use of a .23-second “horn blast” sampled from the song “Love Break” and incorporated in Madonna’s 1990 hit, “Vogue”, did not constitute copyright infringement. Despite technical copying, the court determined that the sampling did not amount to infringement because it was “de minimis,” or, so minimal that a general audience would not recognize it.

VMG Salsoul—the plaintiff—claimed that the horn blast sample was deliberately hidden within the famed Madonna song so as to avoid detection. The sample was so deeply integrated within the song that it took software to uncover it. Indeed, the plaintiff’s own expert witness—a trained musician specifically listening for infringement—originally misidentified where in the song the alleged copying of the horn blast occurred.

Because the alleged copying was nearly unidentifiable, Madonna and her co-defendants argued any copying was de minimis. Under the de minimis exception, copying does not amount to infringement if the copying was not identifiable by an average audience. Prior to 2005, the exception was generally available as a defense against all copyright infringement claims, regardless of the artistic medium involved.

In its 2005 Bridgeport Music, Inc. v. Dimension Films decision, however, the Sixth Circuit determined that the exception did not apply in the context of sound recordings. That is, under the Sixth Circuit’s approach, any sample included in a subsequent sound recording, no matter how unrecognizable, would amount to infringement if the artist failed to obtain a license from the appropriate rights holder.

Since Bridgeport, entertainment industry advisors approached music samples with heightened scrutiny: every sample, no matter its prominence in a sound recording, was likely being licensed. The legal and cost implications of using samples appear to have had a chilling effect on the practice—one which was common in music for decades before Bridgeport, and which played a crucial role in the rise of certain music genres. But the tides may be turning.

Prior to the Ninth Circuit’s decision, many district courts throughout the country did not adhere to the Bridgeport decision; courts viewed Bridgeport as inconsistent with the universal judicial acceptance of the de minimis exception in all other forms of art. Last week, the Ninth Circuit adopted that position.

Now, because the federal circuits are split on this issue (i.e., the Sixth and Ninth circuits disagree on whether the de minimis exception is available in sound recording copyright cases), advertisers should approach music licensing with added caution. Music licenses should always include language requiring the licensor to warrant against third party infringement and provide indemnification for such if a third party claim arises. Advertisers should also review and potentially revise their music licenses’ governing law provisions so the law governing those agreements is one that looks favorably upon the de minimis exception.