Ninth Circuit breaks from Sixth Circuit in music copyright infringement case over a 0.23-second horn segment in Madonna’s pop hit “Vogue,” holding that de minimis copying exception applies to copyrighted sound recordings.

Plaintiff VMG Salsoul, LLC, sued pop icon Madonna Louise Ciccone (professionally known as Madonna), Shep Pettibone, WB Music Corp., Webo Girl Publishing, Inc., Lexor Music, Inc., Warner Music Group and Warner Bros Records, Inc., for copyright infringement in connection with the 1990s pop hit “Vogue.” VMG alleged that the defendants copied a 0.23-second horn segment from “Ooh I Love It (Love Break)” in two different forms. The Ninth Circuit concluded that the de minimis copying exception to copyright infringement liability “applies to infringement actions concerning copyrighted sound recordings, just as it applies to all other copyright infringement actions.”

VMG alleged that the producer of “Vogue” sampled a so-called “horn hit” from “Love Break” in two different forms. The first consisted of a “single” horn hit — a quarter-note chord in the key of B-flat comprising four notes: E-flat, A, D and F. The second form was a “double” horn hit, which was an eighth-note version of the same chord with a quarter-note version of the chord immediately following. The horn hit in “Vogue”similarly appeared in “single” and “double” forms. In the “radio edit” version of “Vogue,” there is one single-horn hit, three double-horn hits, and a “break-down” version of the horn hit. The “compilation” version of “Vogue” contains one single-horn hit and five double-horn hits.

To prevail on its copyright infringement claim, the Ninth Circuit said the plaintiff “must show that the copying was greater than de minimis,” noting that it held in its 2004 ruling in Newton v. Diamond that the de minimis exception applies to claims of infringement of musical compositions. In determining whether a use is de minimis, the test is “whether a reasonable juror could conclude that the average audience would recognize the appropriation.” Citing Newton, the Ninth Circuit determined that a reasonable jury could not conclude that an average audience would recognize an appropriation of the “Love Break” musical composition. The “snippets of the composition” used in “Vogue”are “much smaller” than the six-second portion at issue in Newton — the single-horn hit is less than a quarter-second in length and the double-horn hit is less than a second long — and involved “only one instrument group,” in contrast with Newton, pointed out the Ninth Circuit.

In considering a claim of copyright infringement of a sound recording, “[W]hat matters is how the musicians played the notes, that is, how their rendition distinguishes the recording from a generic rendition of the same composition,” the Ninth Circuit said. After listening to the recordings, the Ninth Circuit decided a reasonable juror could not conclude that an average audience would recognize the appropriation of the horn hit in the “Vogue”sound recordings. The Ninth Circuit reasoned that the horn hit “was not copied precisely,” that other instruments were playing at the same time as the horn hit in both “Love Break”and “Vogue,” and that the producer of “Vogue” transposed the horn hit to another key, truncated it and “added effects and other sounds to the chord itself” — all before introducing the sample to “Vogue”along with many other instrument tracks.

The Ninth Circuit Court rejected the bright-line rule articulated by the Sixth Circuit in its 2005 decision in Bridgeport Music, Inc. v. Dimension Films that for sound recordings, “any unauthorized copying — no matter how trivial — constitutes infringement.” Recognizing that its holding would create a circuit split and acknowledging the problematic nature of such splits in the copyright context, the Ninth Circuit nevertheless reasoned that it has an “independent duty to determine congressional intent” that the drawbacks of a circuit split cannot override. Interpreting the text of the Copyright Act and legislative history, the Ninth Circuit rejected VMG’s argument that Congress intended a special rule for sound recordings and to eliminate the de minimis exception, and held that the statutory text in fact “reveals that Congress intended to maintain the de minimis exception for copyrighted sound recordings.” The Ninth Circuit also rejected VMG’s arguments that the Bridgeport rule is superior as a matter of policy in that it is easy to enforce, concluding that such considerations “speak to what Congress could decide” and “do not inform what Congress actually decided.

However, the Ninth Circuit vacated the district court’s award of attorneys’ fees to the defendants under 17 U.S. Code Section 505, holding that the lower court abused its discretion in granting the award, because “[a] claim premised on a legal theory adopted by the only circuit court to have addressed the issue [the Sixth] is, as a matter of law, objectively reasonable.”

In a colorful dissent, Judge Barry G. Silverman wrote: “It is no defense to theft that the thief made off with only a ‘de minimis’ part of the victim’s property.” Judge Silverman criticized the majority for its reliance on the Nimmer copyright treatise “instead of an on-point decision of the Sixth Circuit.” He pointed out that Bridgeport holds that if “you want to use an identical copy of a portion of a copyrighted fixed sound recording . . . get a license. You can’t just take it.”

Persuaded by the Sixth Circuit’s reasoning that sampling is “a physical taking, not an intellectual one” and that “[s]ampling is never accidental,” Judge Silverman further argued 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.” He also reasoned that Congress’s silence in the wake of Bridgeport, although not dispositive, was “not chopped liver.” Finally, Judge Silverman criticized the majority’s “fuzzy approach,” which would require a case-by-case analysis in every instance of sampling.