Vmg Salsoul, LLC v. Madonna Ciccone , 824 F.3d 871 ( 2016 )

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
VMG SALSOUL, LLC, a Nos. 13-57104
Delaware limited liability 14-55837
company,
Plaintiff-Appellant, D.C. No.
2:12-cv-05967-BRO-CW
v.
MADONNA LOUISE OPINION
CICCONE, professionally
known as Madonna, an
individual; SHEP PETTIBONE,
an individual; WB MUSIC
CORPORATION, a Delaware
corporation; WEBO GIRL
PUBLISHING, INC., a
California corporation;
LEXOR MUSIC, INC., a New
York corporation; WARNER
MUSIC GROUP, a Delaware
corporation; WARNER BROS.
RECORDS, INC., a Delaware
corporation,
Defendants-Appellees.
2 VMG SALSOUL V. CICCONE
Appeals from the United States District Court
for the Central District of California
Beverly Reid O’Connell, District Judge, Presiding
Argued and Submitted April 5, 2016
Pasadena, California
Filed June 2, 2016
Before: Barry G. Silverman and Susan P. Graber, Circuit
Judges, and David A. Ezra,* District Judge.
Opinion by Judge Graber;
Dissent by Judge Silverman
SUMMARY**
Copyright
The panel affirmed the district court’s summary judgment
in favor of the defendants and vacated an award of attorney’s
fees on a claim that in the Madonna song Vogue, a modified
version of a horn segment allegedly copied from a song
known as Love Break violated the plaintiff’s copyrights to
Love Break.
*
The Honorable David A. Ezra, United States District Judge for the
District of Hawaii, sitting by designation.
**
This summary constitutes no part of the opinion of the court. It has
been prepared by court staff for the convenience of the reader.
VMG SALSOUL V. CICCONE 3
Affirming the district court’s summary judgment, the
panel held that any copying that occurred was “de mimimis”
and not an infringement of either the composition or the
sound recording of Love Break. The panel agreed with the
district court that, as a matter of law, a general audience
would not recognize the brief snippet in Vogue as originating
from Love Break. Disagreeing with the Sixth Circuit, the
panel held that Congress did not eliminate the de minimis
exception to claims alleging infringement of a sound
recording in 17 U.S.C. § 114(b).
The panel held that the district court abused its discretion
in granting attorney’s fees to the defendants under 17 U.S.C.
§ 505. The panel held that a claim premised on a legal theory
adopted by the only circuit court to have addressed the issue
is, as a matter of law, objectively reasonable.
Dissenting, Judge Silverman wrote that the court should
follow the Sixth Circuit and hold that the use of an identical
copy of a portion of a copyrighted fixed sound recording is an
infringement.
COUNSEL
Robert S. Besser (argued) and Christopher Chapin, Law
Offices of Robert S. Besser, Santa Monica, California, for
Plaintiff-Appellant.
Alexander Kaplan (argued), Proskauer Rose LLP, New York,
New York; Richard S. Busch (argued) and Paul H. Duvall,
King & Ballow, San Diego, California; and Sandra A.
Crawshaw-Sparks and Susan L. Gutierrez, Proskauer Rose
LLP, Los Angeles, California, for Defendants-Appellees.
4 VMG SALSOUL V. CICCONE
OPINION
GRABER, Circuit Judge:
In the early 1990s, pop star Madonna Louise Ciccone,
commonly known by her first name only, released the song
Vogue to great commercial success. In this copyright
infringement action, Plaintiff VMG Salsoul, LLC, alleges that
the producer of Vogue, Shep Pettibone, copied a 0.23-second
segment of horns from an earlier song, known as Love Break,
and used a modified version of that snippet when recording
Vogue. Plaintiff asserts that Defendants Madonna, Pettibone,
and others thereby violated Plaintiff’s copyrights to Love
Break. The district court applied the longstanding legal rule
that “de minimis” copying does not constitute infringement
and held that, even if Plaintiff proved its allegations of actual
copying, the claim failed because the copying (if it occurred)
was trivial. The district court granted summary judgment to
Defendants and awarded them attorney’s fees under
17 U.S.C. § 505. Plaintiff timely appeals.
Reviewing the summary judgment de novo, Alcantar v.
Hobart Serv., 800 F.3d 1047, 1051 (9th Cir. 2015), we agree
with the district court that, as a matter of law, a general
audience would not recognize the brief snippet in Vogue as
originating from Love Break. We also reject Plaintiff’s
argument that Congress eliminated the “de minimis”
exception to claims alleging infringement of a sound
recording. We recognize that the Sixth Circuit held to the
contrary in Bridgeport Music, Inc. v. Dimension Films,
410 F.3d 792 (6th Cir. 2005), but—like the leading copyright
treatise and several district courts—we find Bridgeport’s
reasoning unpersuasive. We hold that the “de minimis”
exception applies to infringement actions concerning
VMG SALSOUL V. CICCONE 5
copyrighted sound recordings, just as it applies to all other
copyright infringement actions. Accordingly, we affirm the
summary judgment in favor of Defendants.
But we conclude that the district court abused its
discretion in granting attorney’s fees to Defendants under
17 U.S.C. § 505. See Seltzer v. Green Day, Inc., 725 F.3d
1170, 1180 (9th Cir. 2013) (holding that we review for abuse
of discretion the district court’s award of attorney’s fees
under § 505). A claim premised on a legal theory adopted by
the only circuit court to have addressed the issue is, as a
matter of law, objectively reasonable. The district court’s
conclusion to the contrary constitutes legal error. We
therefore vacate the award of fees and remand for
reconsideration.
FACTUAL AND PROCEDURAL HISTORY
Because this case comes to us on appeal from a grant of
summary judgment to Defendants, we recount the facts in the
light most favorable to Plaintiff. Alcantar, 800 F.3d at 1051.
In the early 1980s, Pettibone recorded the song Ooh I
Love It (Love Break), which we refer to as Love Break. In
1990, Madonna and Pettibone recorded the song Vogue,
which would become a mega-hit dance song after its release
on Madonna’s albums. Plaintiff alleges that, when recording
Vogue, Pettibone “sampled” certain sounds from the
recording of Love Break and added those sounds to Vogue.
“Sampling” in this context means the actual physical copying
of sounds from an existing recording for use in a new
recording, even if accomplished with slight modifications
such as changes to pitch or tempo. See Newton v. Diamond,
6 VMG SALSOUL V. CICCONE
388 F.3d 1189, 1192 (9th Cir. 2004) (discussing the term
“sampling”).
Plaintiff asserts that it holds copyrights to the composition
and to the sound recording of Love Break. Plaintiff argues
that, because Vogue contains sampled material from Love
Break, Defendants have violated both copyrights. Although
Plaintiff originally asserted improper sampling of strings,
vocals, congas, “vibraslap,” and horns from Love Break as
well as another song, Plaintiff now asserts a sole theory of
infringement: When creating two commercial versions of
Vogue, Pettibone sampled a “horn hit”1 from Love Break,
violating Plaintiff’s copyrights to both the composition and
the sound recording of Love Break.
The horn hit appears in Love Break in two forms. A
“single” horn hit in Love Break consists of a quarter-note
chord comprised of four notes—E-flat, A, D, and F—in the
key of B-flat. The single horn hit lasts for 0.23 seconds. A
“double” horn hit in Love Break consists of an eighth-note
chord of those same notes, followed immediately by a
quarter-note chord of the same notes. Plaintiff’s expert
identified the instruments as “predominantly” trombones and
trumpets.
The alleged source of the sampling is the “instrumental”
version of Love Break,2 which lasts 7 minutes and 46
seconds. The single horn hit occurs 27 times, and the double
1
Plaintiff prefers the label “horn part,” but the label has no effect on the
legal analysis. For simplicity, we follow the district court’s convention.
2
The label “instrumental” is misleading: The recording contains many
vocals. But again we adopt the terminology used by the district court.
VMG SALSOUL V. CICCONE 7
horn hit occurs 23 times. The horn hits occur at intervals of
approximately 2 to 4 seconds in two different segments:
between 3:11 and 4:38, and from 7:01 to the end, at 7:46.
The general pattern is single-double repeated, double-single
repeated, single-single-double repeated, and double-single
repeated. Many other instruments are playing at the same
time as the horns.
The horn hit in Vogue appears in the same two forms as
in Love Break: single and double. A “single” horn hit in
Vogue consists of a quarter-note chord comprised of four
notes—E, A-sharp, D-sharp, and F-sharp—in the key of B-
natural.3 A double horn hit in Vogue consists of an eighth-
note chord of those same notes, followed immediately by a
quarter-note chord of the same notes.
The two commercial versions of Vogue that Plaintiff
challenges are known as the “radio edit” version and the
“compilation” version. The radio edit version of Vogue lasts
4 minutes and 53 seconds. The single horn hit occurs once,
the double horn hit occurs three times, and a “breakdown”
version of the horn hit occurs once.4 They occur at 0:56,
1:02, 3:41, 4:05, and 4:18. The pattern is single-double-
double-double-breakdown. As with Love Break, many other
instruments are playing at the same time as the horns.
3
In musical terms, assuming that the composition was copied, Pettibone
“transposed” the horn hit in Love Break by one-half step, resulting in notes
that are half a step higher in Vogue.
4
The record does not appear to disclose the meaning of a “breakdown”
version of the horn hit, and neither party attributes any significance to this
form of the horn hit.
8 VMG SALSOUL V. CICCONE
The compilation version of Vogue lasts 5 minutes and 17
seconds. The single horn hit occurs once, and the double
horn hit occurs five times. They occur at 1:14, 1:20, 3:59,
4:24, 4:40, and 4:57. The pattern is single-double-double-
double-double-double. Again, many other instruments are
playing as well.
One of Plaintiff’s experts transcribed the composition of
the horn hits in the two songs as follows. Love Break’s single
horn hit:
Vogue’s single horn hit:
Love Break’s double horn hit:
Vogue’s double horn hit:
VMG SALSOUL V. CICCONE 9
In a written order, the district court granted summary
judgment to Defendants on two alternative grounds. First,
neither the composition nor the sound recording of the horn
hit was “original” for purposes of copyright law. Second, the
court ruled that, even if the horn hit was original, any
sampling of the horn hit was “de minimis or trivial.” In a
separate order, the district court awarded attorney’s fees to
Defendants under 17 U.S.C. § 505. Plaintiff timely appeals
both orders.
DISCUSSION
Plaintiff has submitted evidence of actual copying. In
particular, Tony Shimkin has sworn that he, as Pettibone’s
personal assistant, helped with the creation of Vogue and that,
in Shimkin’s presence, Pettibone directed an engineer to
introduce sounds from Love Break into the recording of
Vogue. Additionally, Plaintiff submitted reports from music
experts who concluded that the horn hits in Vogue were
sampled from Love Break. Defendants do not concede that
sampling occurred, and they have introduced much evidence
to the contrary.5 But for purposes of summary judgment,
Plaintiff has introduced sufficient evidence (including direct
evidence) to create a genuine issue of material fact as to
whether copying in fact occurred. Taking the facts in the
light most favorable to Plaintiff, Plaintiff has demonstrated
actual copying. Accordingly, our analysis proceeds to the
next step.
5
For example, Plaintiff hired Shimkin and then brought this action,
raising doubts about Shimkin’s credibility; Pettibone and others testified
that Shimkin was not present during the creation of Vogue and was not
even employed by Pettibone at that time; and Defendants’ experts dispute
the analysis and conclusions of Plaintiff’s experts.
10 VMG SALSOUL V. CICCONE
Our leading authority on actual copying is Newton,
388 F.3d 1189. We explained in Newton that proof of actual
copying is insufficient to establish copyright infringement:
For an unauthorized use of a copyrighted
work to be actionable, the use must be
significant enough to constitute infringement.
See Ringgold v. Black Entm’t Television, Inc.,
126 F.3d 70, 74–75 (2d Cir. 1997). This
means that even where the fact of copying is
conceded, no legal consequences will follow
from that fact unless the copying is
substantial. See Laureyssens v. Idea Group,
Inc., 964 F.2d 131, 140 (2d Cir. 1992);
4 Melville B. Nimmer & David Nimmer,
Nimmer on Copyright § 13.03[A], at 13-30.2.
The principle that trivial copying does not
constitute actionable infringement has long
been a part of copyright law. Indeed, as [a
judge] observed over 80 years ago: “Even
where there is some copying, that fact is not
conclusive of infringement. Some copying is
permitted. In addition to copying, it must be
shown that this has been done to an unfair
extent.” West Publ’g Co. v. Edward
Thompson Co., 169 F. 833, 861 (E.D.N.Y.
1909). This principle reflects the legal
maxim, de minimis non curatlex (often
rendered as, “the law does not concern itself
with trifles”). See Ringgold, 126 F.3d at
74–75.
VMG SALSOUL V. CICCONE 11
Newton, 388 F.3d at 1192–93. In other words, to establish its
infringement claim, Plaintiff must show that the copying was
greater than de minimis.
Plaintiff’s claim encompasses two distinct alleged
infringements: infringement of the copyright to the
composition of Love Break and infringement of the copyright
to the sound recording of Love Break. Compare 17 U.S.C.
§ 102(a)(2) (protecting “musical works”) with id. § 102(a)(7)
(protecting “sound recordings”); see Erickson v. Blake, 839 F.
Supp. 2d 1132, 1135 n.3 (D. Or. 2012) (“Sound recordings
and musical compositions are separate works with their own
distinct copyrights.”); see also Newton, 388 F.3d at 1193–94
(noting the distinction). We squarely held in Newton,
388 F.3d at 1193, that the de minimis exception applies to
claims of infringement of a copyrighted composition. But it
is an open question in this circuit whether the exception
applies to claims of infringement of a copyrighted sound
recording.
Below, we address (A) whether the alleged copying of the
composition or the sound recording was de minimis,
(B) whether the de minimis exception applies to alleged
infringement of copyrighted sound recordings, and
(C) whether the district court abused its discretion in
awarding attorney’s fees to Defendants under 17 U.S.C.
§ 505.6
6
Because we affirm the judgment on the ground that any copying was
de minimis, we do not reach Defendants’ alternative arguments.
Accordingly, we assume without deciding that the horn hits are “original.”
See Newton, 388 F.3d at 1192 (assuming originality). We also assume
without deciding that Pettibone is not a co-owner of Love Break.
12 VMG SALSOUL V. CICCONE
A. Application of the De Minimis Exception
A “use is de minimis only if the average audience would
not recognize the appropriation.” Newton, 388 F.3d at 1193;
see id. at 1196 (affirming the grant of summary judgment
because “an average audience would not discern Newton’s
hand as a composer . . . from Beastie Boys’ use of the
sample”); Fisher v. Dees, 794 F.2d 432, 435 n.2 (9th Cir.
1986) (“As a rule, a taking is considered de minimis only if it
is so meager and fragmentary that the average audience
would not recognize the appropriation.”); see also Dymow v.
Bolton, 11 F.2d 690, 692 (2d Cir. 1926) (“[C]opying which
is infringement must be something which ordinary
observations would cause to be recognized as having been
taken from the work of another.” (internal quotation marks
omitted)). Accordingly, we must determine whether a
reasonable juror could conclude that the average audience
would recognize the appropriation. We will consider the
composition and the sound recording copyrights in turn.7
1. Alleged Infringement of the Composition Copyright
When considering an infringement claim of a copyrighted
musical composition, what matters is not how the musicians
actually played the notes but, rather, a “generic rendition of
the composition.” Newton, 388 F.3d at 1194; see id. at 1193
(holding that, when considering infringement of the
7
It appears that Plaintiff did not introduce into the summary judgment
record a copy of the copyrighted composition and did not introduce a copy
of one of the two allegedly infringing sound recordings. We need not
decide whether those omissions are fatal to Plaintiff’s claims. For
purposes of our analysis, we accept the partial transcription of the
composition by Plaintiff’s expert, and we analyze the sound recordings
that Plaintiff did submit.
VMG SALSOUL V. CICCONE 13
composition copyright, one “must remove from consideration
all the elements unique to [the musician’s] performance”).
That is, we must compare the written compositions of the two
pieces.
Viewing the evidence in the light most favorable to
Plaintiff, Defendants copied two distinct passages in the horn
part of the score for Love Break. First, Defendants copied the
quarter-note single horn hit. But no additional part of the
score concerning the single horn hit is the same, because the
single horn hit appears at a different place in the measure. In
Love Break, the notes for the measure are: half-note rest,
quarter-note rest, single horn hit. In Vogue, however, the
notes for the measure are: half-note rest, eighth-note rest,
single horn hit, eighth-note rest. Second, Defendants copied
a full measure that contains the double horn hit. In both
songs, the notes for the measure are: half-note rest, eighth-
note rest, eighth-note horn hit, quarter-note horn hit. In sum,
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 recordings, we conclude that a
reasonable jury could not conclude that an average audience
would recognize the appropriation of the composition. Our
decision in Newton is instructive. That case involved a
copyrighted composition of “a piece for flute and voice.”
Newton, 388 F.3d at 1191. The defendants used a six-second
sample that “consist[ed] of three notes, C—D flat—C, sung
over a background C note played on the flute.” Id. The
composition also “require[d] overblowing the background C
note that is played on the flute.” Id. The defendants repeated
a six-second sample “throughout [the song], so that it appears
over forty times in various renditions of the song.” Id. at
1192. After listening to the recordings, we affirmed the grant
14 VMG SALSOUL V. CICCONE
of summary judgment because “an average audience would
not discern [the composer’s] hand as a composer.” Id. at
1196.
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. Moreover, unlike in Newton, in which the challenged
song copied the entire composition of the original work for
the given temporal segment, the sampling at issue here
involves only one instrument group out of many. As noted
above, listening to the audio recordings confirms what the
foregoing analysis of the composition strongly suggests: A
reasonable jury could not conclude that an average audience
would recognize an appropriation of the Love Break
composition.
2. Alleged Infringement of the Sound Recording
Copyright
When considering a claimed infringement of a
copyrighted sound recording, what matters is how the
musicians played the notes, that is, how their rendition
distinguishes the recording from a generic rendition of the
same composition. See Newton, 388 F.3d at 1193 (describing
the protected elements of a copyrighted sound recording as
“the elements unique to [the musician’s] performance”).
VMG SALSOUL V. CICCONE 15
Viewing the evidence in the light most favorable to Plaintiff,
by accepting its experts’ reports, Pettibone sampled one
single horn hit, which occurred at 3:35 in Love Break.
Pettibone then used that sampled single horn hit to create the
double horn hit used in Vogue.
The horn hit itself was not copied precisely. According
to Plaintiff’s expert, the chord “was modified by transposing
it upward, cleaning up the attack slightly in order to make it
punchier [by truncating the horn hit] and overlaying it with
other sounds and effects. One such effect mimicked the
reverse cymbal crash. . . . The reverb/delay ‘tail’ . . . was
prolonged and heightened.” Moreover, as with the
composition, the horn hits are not isolated sounds. Many
other instruments are playing at the same time in both Love
Break and Vogue.
In sum, viewing the evidence in the light most favorable
to Plaintiff, 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; he
transposed it to a different key; he truncated it; and he added
effects and other sounds to the chord itself.8 For the double
horn hit, he 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.
8
For all of those reasons, we decline to apply the “fragmented literal
similarity” test: Defendants did not copy “a portion of the plaintiff’s work
exactly or nearly exactly.” Newton, 388 F.3d at 1195; see also Dr. Seuss
Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1398 n.4 (9th
Cir. 1997) (rejecting the category of “fragmented literal similarity”).
16 VMG SALSOUL V. CICCONE
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. 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. As noted above,
assuming that the sampling occurred, Pettibone truncated the
horn hit, transposed it to a different key, and added other
sounds and effects to the horn hit itself. The horn hit then
was added to Vogue along with many other instrument tracks.
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.
A quirk in the procedural history of this case is
illuminating on this point. Plaintiff’s primary expert
originally misidentified the source of the sampled double horn
hit. In his original report, the expert concluded that both a
single horn hit and a double horn hit were sampled from Love
Break. The parties later discovered the original tracks to
Vogue and were able to listen to the horn hits without
interference from the many other instruments. After listening
to those tracks, the expert decided that he had erred in opining
that a double horn hit was sampled. He concluded instead
that only a single horn hit was sampled, which was used to
create the double horn hit in Vogue. 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, and he could not do so accurately. An average
audience would not do a better job.
VMG SALSOUL V. CICCONE 17
In sum, the district court correctly held that summary
judgment to Defendants was appropriate on the issue of de
minimis copying.
B. The De Minimis Exception and Sound Recordings
Plaintiff argues, in the alternative, that even if the copying
here is trivial, that fact is irrelevant because the de minimis
exception does not apply to infringements of copyrighted
sound recordings. Plaintiff urges us to follow the Sixth
Circuit’s decision in Bridgeport Music, Inc. v. Dimension
Films, 410 F.3d 792 (6th Cir. 2005), which adopted a bright-
line rule: For copyrighted sound recordings, any
unauthorized copying—no matter how trivial—constitutes
infringement.
The rule that infringement occurs only when a substantial
portion is copied is firmly established in the law. The leading
copyright treatise traces the rule to the mid-1800s. 4 Melville
B. Nimmer & David Nimmer, Nimmer on Copyright
§ 13.03[A][2][a], at 13-56 to 13-57, 13-57 n.102 (2013)
(citing Folsom v. Marsh, 9 F. Cas. 342, No. 4901 (C.C. Mass.
1841)); id. § 13.03[E][2], at 13-100 & n.208 (citing Daly v.
Palmer, 6 F. Cas. 1132, No. 3,552 (C.C.S.D.N.Y. 1868)); see
also Perris v. Hexamer, 99 U.S. (9 Otto) 674, 675–76 (1878)
(stating that a “copyright gives the author or the publisher the
exclusive right of multiplying copies of what he has written
or printed. It follows that to infringe this right a substantial
copy of the whole or of a material part must be produced.”);
Dymow, 11 F.2d 690 (applying the rule in 1926). We
recognized the rule as early as 1977: “If copying is
established, then only does there arise the second issue, that
of illicit copying (unlawful appropriation). On that issue the
test is the response of the ordinary lay hearer . . . .” Sid &
18 VMG SALSOUL V. CICCONE
Marty Krofft Television Prods., Inc. v. McDonald’s Corp.,
562 F.2d 1157, 1164 (9th Cir. 1977) (alteration and internal
quotation marks omitted), superseded in other part by
17 U.S.C. § 504(b); see Fisher, 794 F.2d at 434 n.2 (using the
term “de minimis” to describe the concept). The reason for
the rule is that the “plaintiff’s legally protected interest [is]
the potential financial return from his compositions which
derive from the lay public’s approbation of his efforts.”
Krofft, 562 F.2d at 1165 (quoting Arnstein v. Porter, 154 F.2d
464, 473 (2d Cir. 1946)). If the public does not recognize the
appropriation, then the copier has not benefitted from the
original artist’s expressive content. Accordingly, there is no
infringement.
Other than Bridgeport 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. Indeed, we stated in
dictum in Newton that the rule “applies throughout the law of
copyright, including cases of music sampling.”9 388 F.3d at
1195 (emphasis added).
Plaintiff nevertheless argues that Congress intended to
create a special rule for copyrighted sound recordings,
eliminating the de minimis exception. We begin our analysis
with the statutory text.
9
Defendants incorrectly assert that the quoted sentence controls the
outcome in this case. Newton considered an alleged infringement of the
composition only; it had no occasion to consider—and did not
consider—the argument that a different rule applies to the infringement of
sound recordings.
VMG SALSOUL V. CICCONE 19
Title 17 U.S.C. § 102, titled “Subject matter of copyright:
In general,” states, in relevant part:
(a) Copyright protection subsists, in
accordance with this title, in original works of
authorship fixed in any tangible medium of
expression, now known or later developed,
from which they can be perceived,
reproduced, or otherwise communicated,
either directly or with the aid of a machine or
device. Works of authorship include the
following categories:
(1) literary works;
(2) musical works, including any
accompanying words;
(3) dramatic works, including any
accompanying music;
(4) pantomimes and choreographic works;
(5) pictorial, graphic, and sculptural
works;
(6) motion pictures and other audiovisual
works;
(7) sound recordings; and
(8) architectural works.
20 VMG SALSOUL V. CICCONE
(Emphasis added.) That provision treats sound recordings
identically to all other types of protected works; nothing in
the text suggests differential treatment, for any purpose, of
sound recordings compared to, say, literary works. Similarly,
nothing in the neutrally worded statutory definition of “sound
recordings” suggests that Congress intended to eliminate the
de minimis exception. See id. § 101 (“‘Sound recordings’ are
works that result from the fixation of a series of musical,
spoken, or other sounds, but not including the sounds
accompanying a motion picture or other audiovisual work,
regardless of the nature of the material objects, such as disks,
tapes, or other phonorecords, in which they are embodied.”).
Title 17 U.S.C. § 106, titled “Exclusive rights in
copyrighted works,” states:
Subject to sections 107 through 122, the
owner of copyright under this title has the
exclusive rights to do and to authorize any of
the following:
(1) to reproduce the copyrighted work in
copies or phonorecords;
(2) to prepare derivative works based upon
the copyrighted work;
(3) to distribute copies or phonorecords of
the copyrighted work to the public by sale or
other transfer of ownership, or by rental,
lease, or lending;
(4) in the case of literary, musical,
dramatic, and choreographic works,
VMG SALSOUL V. CICCONE 21
pantomimes, and motion pictures and other
audiovisual works, to perform the copyrighted
work publicly;
(5) in the case of literary, musical,
dramatic, and choreographic works,
pantomimes, and pictorial, graphic, or
sculptural works, including the individual
images of a motion picture or other
audiovisual work, to display the copyrighted
work publicly; and
(6) in the case of sound recordings, to
perform the copyrighted work publicly by
means of a digital audio transmission.
Again, nothing in that provision suggests differential
treatment of de minimis copying of sound recordings
compared to, say, sculptures. Although subsection (6) deals
exclusively with sound recordings, that subsection concerns
public performances; nothing in its text bears on de minimis
copying.
Instead, Plaintiff’s statutory argument hinges on the third
sentence of 17 U.S.C. § 114(b), which states:10
10
The full subsection states:
The exclusive right of the owner of copyright in a
sound recording under clause (1) of section 106 is
limited to the 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. The exclusive right of the owner of
copyright in a sound recording under clause (2) of
22 VMG SALSOUL V. CICCONE
The exclusive rights of the owner of copyright
in a sound recording under clauses (1) and (2)
of section 106 do not extend to the making or
duplication of another sound recording that
consists entirely of an independent fixation of
other sounds, even though such sounds imitate
or simulate those in the copyrighted sound
recording.
Like all the other sentences in § 114(b), the third sentence
imposes an express limitation on the rights of a copyright
holder: “The exclusive rights of the owner of a copyright in
a sound recording . . . do not extend to the making or
section 106 is limited to the right to prepare a derivative
work in which the actual sounds fixed in the sound
recording are rearranged, remixed, or otherwise altered
in sequence or quality. The exclusive rights of the
owner of copyright in a sound recording under clauses
(1) and (2) of section 106 do not extend to the making
or duplication of another sound recording that consists
entirely of an independent fixation of other sounds,
even though such sounds imitate or simulate those in
the copyrighted sound recording. The exclusive rights
of the owner of copyright in a sound recording under
clauses (1), (2), and (3) of section 106 do not apply to
sound recordings included in educational television and
radio programs (as defined in section 397 of title 47)
distributed or transmitted by or through public
broadcasting entities (as defined by section 118(f)):
Provided, That copies or phonorecords of said
programs are not commercially distributed by or
through public broadcasting entities to the general
public.
17 U.S.C. § 114(b). Nothing in the other sentences advances Plaintiff’s
argument.
VMG SALSOUL V. CICCONE 23
duplication of another sound recording [with certain
qualities].” Id. (emphasis added); see id. (first sentence:
“exclusive rights . . . do not extend” to certain circumstances;
second sentence: “exclusive rights . . . do not extend” to
certain circumstances; fourth sentence: “exclusive rights . . .
do not apply” in certain circumstances). We ordinarily would
hesitate to read an implicit expansion of rights into Congress’
statement of an express limitation on rights. Given the
considerable background of consistent application of the de
minimis exception across centuries of jurisprudence, we are
particularly hesitant to read the statutory text as an unstated,
implicit elimination of that steadfast rule.
A straightforward reading of the third sentence in
§ 114(b) reveals Congress’ intended limitation on the rights
of a sound recording copyright holder: A new recording that
mimics the copyrighted recording is not an infringement,
even if the mimicking is very well done, so long as there was
no actual copying. That is, if a band played and recorded its
own version of Love Break in a way that sounded very similar
to the copyrighted recording of Love Break, then there would
be no infringement so long as there was no actual copying of
the recorded Love Break. But the quoted passage does not
speak to the question that we face: whether Congress
intended to eliminate the longstanding de minimis exception
for sound recordings in all circumstances even where, as here,
the new sound recording as a whole sounds nothing like the
original.
Even if there were some ambiguity as to congressional
intent with respect to § 114(b), the legislative history clearly
confirms our analysis on each of the above points. Congress
intended § 114 to limit, not to expand, the rights of copyright
holders: “The approach of the bill is to set forth the copyright
24 VMG SALSOUL V. CICCONE
owner’s exclusive rights in broad terms in section 106, and
then to provide various limitations, qualifications, or
exemptions in the 12 sections that follow. Thus, everything
in section 106 is made ‘subject to sections 107 through 118,’
and must be read in conjunction with those provisions.” H.R.
Rep. No. 94-1476, at 61 (1976), reprinted in 1976
U.S.C.C.A.N. 5659, 5674.
With respect to § 114(b) specifically, a House Report
stated:
Subsection (b) of section 114 makes clear
that statutory protection for sound recordings
extends only to the particular sounds of which
the recording consists, and would not prevent
a separate recording of another performance
in which those sounds are imitated. Thus,
infringement takes place whenever all or any
substantial portion of the actual sounds that
go to make up a copyrighted sound recording
are reproduced in phonorecords by repressing,
transcribing, recapturing off the air, or any
other method, or by reproducing them in the
soundtrack or audio portion of a motion
picture or other audiovisual work. Mere
imitation of a recorded performance would
not constitute a copyright infringement even
where one performer deliberately sets out to
simulate another’s performance as exactly as
possible.
Id. at 106, reprinted in 1976 U.S.C.C.A.N. at 5721 (emphasis
added). That passage strongly supports the natural reading of
§ 114(b), discussed above. Congress intended to make clear
VMG SALSOUL V. CICCONE 25
that imitation of a recorded performance cannot be
infringement so long as no actual copying is done. There is
no indication that Congress intended, through § 114(b), to
expand the rights of a copyright holder to a sound recording.
Perhaps more importantly, the quoted passage articulates
the principle that “infringement takes place whenever all or
any substantial portion of the actual sounds . . . are
reproduced.” Id. (emphasis added). That is, when enacting
this specific statutory provision, Congress clearly understood
that the de minimis exception applies to copyrighted sound
recordings, just as it applies to all other copyrighted works.
In sum, the statutory text, confirmed by the legislative
history, reveals that Congress intended to maintain the de
minimis exception for copyrighted sound recordings.
In coming to a different conclusion, the Sixth Circuit
reasoned as follows:
[T]he rights of sound recording copyright
holders under clauses (1) and (2) of section
106 “do not extend to the making or
duplication of another sound recording that
consists entirely of an independent fixation of
other sounds, even though such sounds imitate
or simulate those in the copyrighted sound
recording.” 17 U.S.C. § 114(b) (emphasis
added). The significance of this provision is
amplified by the fact that the Copyright Act of
1976 added the word “entirely” to this
language. Compare Sound Recording Act of
1971, Pub. L. 92-140, 85 Stat. 391 (Oct. 15,
1971) (adding subsection (f) to former
17 U.S.C. § 1) (“does not extend to the
26 VMG SALSOUL V. CICCONE
making or duplication of another sound
recording that is an independent fixation of
other sounds”). In other words, a sound
recording owner has the exclusive right to
“sample” his own recording.
Bridgeport, 410 F.3d at 800–01.
We reject that interpretation of § 114(b). Bridgeport
ignored the statutory structure and § 114(b)’s express
limitation on the rights of a copyright holder. Bridgeport also
declined to consider legislative history on the ground that
“digital sampling wasn’t being done in 1971.” 410 F.3d at
805. But the state of technology is irrelevant to interpreting
Congress’ intent as to statutory structure. Moreover, as
Nimmer points out, Bridgeport’s reasoning fails on its own
terms because contemporary technology plainly allowed the
copying of small portions of a protected sound recording.
Nimmer § 13.03[A][2][b], at 13-62 n.114.16.
Close examination of Bridgeport’s interpretive method
further exposes its illogic. In effect, Bridgeport inferred from
the fact that “exclusive rights . . . do not extend to the making
or duplication of another sound recording that consists
entirely of an independent fixation of other sounds,”
17 U.S.C. § 114(b) (emphases added), the conclusion that
exclusive rights do extend to the making of another sound
recording that does not consist entirely of an independent
fixation of other sounds. As pointed out by Nimmer,
Bridgeport’s interpretive method “rests on a logical fallacy.”
Nimmer § 13.03[A][2][b], at 13-61; see also Saregama India
Ltd. v. Mosley, 687 F. Supp. 2d 1325, 1340–41 (S.D. Fla.
2009) (critiquing Bridgeport’s interpretive method for a
similar reason). A statement that rights do not extend to a
VMG SALSOUL V. CICCONE 27
particular circumstance does not automatically mean that the
rights extend to all other circumstances. In logical terms, it
is a fallacy to infer the inverse of a conditional from the
conditional. E.g., Joseph G. Brennan, A Handbook of Logic
79–80 (2d ed. 1961).
For example, take as a given the proposition that “if it has
rained, then the grass is not dry.” It does not necessarily
follow that “if it has not rained, then the grass is dry.”
Someone may have watered the lawn, for instance. We
cannot infer the second if-then statement from the first. The
first if-then statement does not tell us anything about the
condition of the grass if it has not rained. Accordingly, even
though it is true that, “if the recording consists entirely of
independent sounds, then the copyright does not extend to it,”
that statement does not necessarily mean that “if the
recording does not consist entirely of independent sounds,
then the copyright does extend to it.”
The Sixth Circuit also looked beyond the statutory text, to
the nature of a sound recording, and reasoned:
[E]ven when a small part of a sound recording
is sampled, the part taken is something of
value. No further proof of that is necessary
than the fact that the producer of the record or
the artist on the record intentionally sampled
because it would (1) save costs, or (2) add
something to the new recording, or (3) both.
For the sound recording copyright holder, it is
not the “song” but the sounds that are fixed in
the medium of his choice. When those sounds
are sampled they are taken directly from that
28 VMG SALSOUL V. CICCONE
fixed medium. It is a physical taking rather
than an intellectual one.
Bridgeport, 410 F.3d at 801–02 (footnote omitted).
We disagree for three reasons. First, the possibility of a
“physical taking” exists with respect to other kinds of artistic
works as well, such as photographs, as to which the usual de
minimis rule applies. See, e.g., Sandoval v. New Line Cinema
Corp., 147 F.3d 215, 216 (2d Cir. 1998) (affirming summary
judgment to the defendant because the defendant’s use of the
plaintiff’s photographs in a movie was de minimis). A
computer program can, for instance, “sample” a piece of one
photograph and insert it into another photograph or work of
art. We 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. Second, even accepting
the premise that sound recordings differ qualitatively from
other copyrighted works and therefore could warrant a
different infringement rule, that theoretical difference does
not mean that Congress actually adopted a different rule.
Third, the distinction between a “physical taking” and an
“intellectual one,” premised in part on “sav[ing] costs” by not
having to hire musicians, does not advance the Sixth Circuit’s
view. The Supreme Court has held unequivocally that the
Copyright Act protects only the expressive aspects of a
copyrighted work, and not the “fruit of the [author’s] labor.”
Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 349
(1991). Indeed, the Supreme Court in Feist explained at
length why, though that result may seem unfair, protecting
only the expressive aspects of a copyrighted work is actually
a key part of the design of the copyright laws. Id. at 349–54
(explaining how “the ‘sweat of the brow’ doctrine flouted
VMG SALSOUL V. CICCONE 29
basic copyright principles”). Accordingly, all that remains of
Bridgeport’s argument is that the second artist has taken
some expressive content from the original artist. But that is
always true, regardless of the nature of the work, and the de
minimis test nevertheless applies. See Nimmer
§ 13.03[A][2][b], at 13-63 to 13-64 (providing a similar
critique of Bridgeport’s physical/intellectual distinction and
concluding that it “seems to be built on air”).
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 Sixth Circuit’s contrary holding in
Bridgeport. We do so only after careful reflection because,
as we noted in Seven Arts Filmed Entertainment Ltd. v.
Content Media Corp., 733 F.3d 1251, 1256 (9th Cir. 2013),
“the creation of a circuit split would be particularly
troublesome in the realm of copyright. Creating inconsistent
rules among the circuits would lead to different levels of
protection in different areas of the country, even if the same
alleged infringement is occurring nationwide.” (Citation,
internal quotations marks, and brackets omitted.) We
acknowledge that our decision has consequences. But the
goal of avoiding a circuit split cannot override our
independent duty to determine congressional intent.
Otherwise, we would have no choice but to blindly follow the
rule announced by whichever circuit court decided an issue
first, even if we were convinced, as we are here, that our
sister circuit erred.
Moreover, other considerations suggest that the
“troublesome” consequences ordinarily attendant to the
creation of a circuit split are diminished here. In declining to
create a circuit split in Seven Arts, we noted that “the leading
30 VMG SALSOUL V. CICCONE
copyright treatise,” Nimmer, agreed with the view of our
sister circuits. 733 F.3d at 1255. As to the issue before us, by
contrast, Nimmer devotes many pages to explaining why the
Sixth Circuit’s opinion is, in no uncertain terms, wrong.
Nimmer § 13.03[A][2][b], at 13-59 to 13-66.
Additionally, as a practical matter, a deep split among the
federal courts already exists. Since the Sixth Circuit decided
Bridgeport, almost every district court not bound by that
decision has declined to apply Bridgeport’s rule. See, e.g.,
Saregama, 687 F. Supp. 2d at 1340–41 (rejecting
Bridgeport’s rule after analysis); Steward v. West, No. 13-
02449, Docket No. 179 at 14 n.8 (C.D. Cal. 2014)
(unpublished civil minutes) (“declin[ing] to follow the per se
infringment analysis from Bridgeport” because Bridgeport
“has been criticized by courts and commentators alike”);
Batiste v. Najm, 28 F. Supp. 3d 595, 625 (E.D. La. 2014)
(noting that, because some courts have declined to apply
Bridgeport’s rule, “it is far from clear” that Bridgeport’s rule
should apply); Pryor v. Warner/Chappell Music, Inc., No.
CV13-04344, 2014 WL 2812309, at *7 n.3 (C.D. Cal. June
20, 2014) (unpublished) (declining to apply Bridgeport’s rule
because it has not been adopted by the Ninth Circuit); Zany
Toys, LLC v. Pearl Enters., LLC, No. 13-5262, 2014 WL
2168415, at *11 n.7 (D.N.J. May 23, 2014) (unpublished)
(stating Bridgeport’s rule without discussion); see also EMI
Records Ltd v. Premise Media Corp., No. 601209, 2008 WL
5027245 (N.Y. Sup. Ct. Aug. 8, 2008) (unpublished)
(expressly rejecting Bridgeport’s analysis). Although we are
the first circuit court to follow a different path than
Bridgeport’s, we are in well-charted territory.
Plaintiff next argues that, because Congress has not
amended the copyright statute in response to Bridgeport, we
VMG SALSOUL V. CICCONE 31
should conclude that Bridgeport correctly divined
congressional intent. We disagree. The Supreme Court has
held that congressional inaction in the face of a judicial
statutory interpretation, even with respect to the Supreme
Court’s own decisions affecting the entire nation, carries
almost no weight. See Alexander v. Sandoval, 532 U.S. 275,
292 (2001) (“It is impossible to assert with any degree of
assurance that congressional failure to act represents
affirmative congressional approval of the Court’s statutory
interpretation.” (internal quotation marks omitted)). Here,
Congress’ inaction with respect to a decision by one circuit
court has even less import, especially considering that many
other courts have declined to apply Bridgeport’s rule.
Finally, Plaintiff advances several reasons why
Bridgeport’s rule is superior as a matter of policy. For
example, the Sixth Circuit opined that its bright-line rule was
easy to enforce; that “the market will control the license price
and keep it within bounds”; and that “sampling is never
accidental” and is therefore easy to avoid. Bridgeport,
410 F.3d at 801. Those arguments are for a legislature, not a
court. They speak to what Congress could decide; they do
not inform what Congress actually decided.11
11
It also is not clear that the cited policy reasons are necessarily
persuasive. For example, this particular case presents an example in
which there is uncertainty as to enforcement—musical experts disagree as
to whether sampling occurred. As another example, it is not necessarily
true that the market will keep license prices “within bounds”—it is
possible that a bright-line rule against sampling would unduly stifle
creativity in certain segments of the music industry because the licensing
costs would be too expensive for the amateur musician. In any event,
even raising these counter-points demonstrates that the arguments, as
Plaintiff concedes, rest on policy considerations, not on statutory
interpretation. One cannot answer questions such as how much licensing
32 VMG SALSOUL V. CICCONE
We hold that the “de minimis” exception applies to
actions alleging infringement of a copyright to sound
recordings.
C. Attorney’s Fees
Finally, we consider the district court’s award of
attorney’s fees to Defendants. The Copyright Act permits a
court to “award a reasonable attorney’s fee to the prevailing
party.” 17 U.S.C. § 505. “[A]ttorney’s fees are to be
awarded to prevailing parties only as a matter of the court’s
discretion.” Fogerty v. Fantasy, Inc., 510 U.S. 517, 534
(1994). “In deciding whether to award fees under the
Copyright Act, the district court should consider, among other
things: the degree of success obtained on the claim;
frivolousness; motivation; objective reasonableness of factual
and legal arguments; and need for compensation and
deterrence.” Maljack Prods., Inc. v. GoodTimes Home Video
Corp., 81 F.3d 881, 889 (9th Cir. 1996).
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.
cost is too much without exercising value judgments—matters generally
assigned to the legislature.
VMG SALSOUL V. CICCONE 33
The district court also ruled that Plaintiff’s claim was
objectively unreasonable because of issues that hinged on
“disputed facts and credibility determinations.” Again, the
court erred as a matter of law. If 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.
Because the district court erred in finding that Plaintiff’s
claim was objectively unreasonable, we vacate the award of
fees and remand for reconsideration.
Judgment AFFIRMED; award of fees VACATED and
REMANDED for reconsideration. The parties shall bear
their own costs on appeal.
SILVERMAN, Circuit Judge, dissenting:
The plaintiff is the owner of a copyright in a fixed sound
recording. This is a valuable property right, the stock-in-
trade of artists who make their living recording music and
selling records. The plaintiff alleges that the defendants,
without a license or any sort of permission, physically copied
a small part of the plaintiff’s sound recording – which, to
repeat, is property belonging to the plaintiff – and, having
appropriated it, inserted into their own recording. If the
plaintiff’s allegations are to be believed, the defendants
deemed this maneuver preferable to paying for a license to
use the material, or to hiring their own musicians to record it.
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.
34 VMG SALSOUL V. CICCONE
The majority chooses to follow the views of a popular
treatise instead of an on-point decision of the Sixth Circuit, a
decision that has governed the music industry in Nashville –
“Music City”1 – and elsewhere for over a decade without
causing either the sky to fall in, or Congress to step in. And
just exactly what is the Sixth Circuit’s radical holding in
Bridgeport Music, Inc. v. Dimension Films that the majority
finds so distasteful? It’s this: if you want to use an identical
copy of a portion of a copyrighted fixed sound recording –
we’re not talking about “substantially similar” tunes or
rhythms, but an actual identical copy of a sound that has
already been recorded in a fixed medium – get a license. You
can’t just take it. 410 F.3d 792, 800–01 (6th Cir. 2005).
As the majority acknowledges, after Newton v. Diamond,
388 F.3d 1189 (9th Cir. 2003), it is an “open question” in the
Ninth Circuit whether a de minimis defense applies to fixed
sound recordings as it does to less tangible works. The
Bridgeport court explained why it should not.
First, by statute, sound recording copyright holders have
an exclusive right to sample their own recordings. It’s an
exclusive right; the statute does not give that right to others.
410 F.3d at 800–01. Under 17 U.S.C. §§ 106 and 114, the
holder of a copyright in a sound recording (but not others) has
the exclusive right to reproduce the work in copies or records
“that directly or indirectly recapture the actual sounds fixed
in the recording,” as well as the exclusive right to prepare
derivative works “in which the actual sounds fixed in the
1
Nashville also describes itself as the “Songwriting Capital
of the World.” See The Story of Music City, Nashville Convention & V
isitors Corp., http://www.visitmusiccity.com/visitors/aboutmusiccity/sto
ryofmusiccity (last visited May 20, 2016).
VMG SALSOUL V. CICCONE 35
sound recording are rearranged, remixed, or otherwise altered
in sequence or quality.” 17 U.S.C. §§ 106(1) and (2); 114(b).
Congress clearly qualified these exclusive rights, writing that
“another sound recording that consists entirely of an
independent fixation of other sounds, even though such
sounds imitate or simulate those in the copyrighted sound
recording” are not within the scope of the copyright holder’s
exclusive rights. 17 U.S.C. § 114(b). In other words, the
world at large is free to imitate or simulate the creative work
fixed in the recording (like a tribute band, for example) so
long as an actual copy of the sound recording itself is not
made. 410 F.3d at 800.
The majority rejects this straightforward reading,
explaining by way of a rhetorical exercise that Bridgeport’s
reading of § 114(b) is a logical fallacy, expanding the rights
of copyright holders beyond that allowed under the judicial
de minimis rule. As I see it, it is the majority that tortures the
natural reading of these provisions. Bear in mind that
§ 114(b) simply explains the scope of exclusive rights already
granted to copyright holders under § 106. These two
provisions must be read together, as the Sixth Circuit did.
410 F.3d at 799–801. When read together, their message is
clear: copyright holders have exclusive rights to their
recordings, but cannot be heard to complain (i.e., there can be
no infringement of those exclusive rights) where a new
recording consists entirely of independently created sounds,
such as might be found in a very good imitation. By the same
token, if a new recording includes something other than
independently created sounds, such as a blatant copy, the
copyright holder whose work was sampled has a legitimate
gripe. That right was not invented by the Sixth Circuit: it
already exists in the statutes. And these statutes say nothing
about the de minimis exception.
36 VMG SALSOUL V. CICCONE
The second reason the Sixth Circuit gave for not adopting
the de minimis rule is that sound recordings are different than
their compositional counterparts: when a defendant copies a
recording, he or she takes not the song but the sounds as they
are fixed in the medium of the copyright holders’ choice. Id.
at 801–02. In other words, the very nature of digital sampling
makes a de minimis analysis inapplicable, since sampling or
pirating necessarily involves copying a fixed performance.
See id. at 801 n.13. The defendants wanted horns to
punctuate their song, so they took the plaintiff’s copyrighted
recording of horns. The horn hit is brief, but clearly
perceptible and does its job. This is unlike indiscernible
photographs used, not for their content (which cannot be
made out), but to dress a movie set. See Sandoval v. New
Line Cinema Corp., 147 F.2d 215, 218 (2d Cir. 1998).
This is a physical taking, not an intellectual one. Id. at
802. Sampling is never accidental. Id. at 801. As the Sixth
Circuit observed, 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
that he has heard before. Id. When you sample a sound
recording you know you are taking another’s work product.
Id. Accordingly, 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. Id. at 798 n.6, 801–02 and n.13.
Again, the majority disagrees, rejecting Bridgeport’s
characterization of a sample as a “physical taking” on the
basis that copyright protection extends only to expressive
aspects of a work, not the fruit of the author’s labor.
According to the majority, copyright protection doesn’t
extend to the sweat of an author’s brow. Feist Publ’ns, Inc.
v. Rural Tel. Serv. Co., 499 U.S. 340, 349 (1991) (discussing
VMG SALSOUL V. CICCONE 37
originality as applied to factual compilations, such as
telephone directories). But that’s irrelevant here, since there
is no question that the underlying sound recording can be
copyrighted, and it is the taking of that protectable work that
is at issue.
I find Bridgeport’s arguments well-reasoned and
persuasive. Equally compelling is, I think, Congress’s silence
in the wake of Bridgeport, especially in light of the fact that
the Sixth Circuit explicitly invited Congress to clarify or
change the law if Bridgeport’s bright-line rule was not what
Congress intended. 410 F.3d at 805. While it’s true that
congressional inaction in the face of judicial interpretation is
not ironclad evidence of Congressional approval, see
Alexander v. Sandoval, 532 U.S. 275, 292 (2001), it’s not
chopped liver either. In this case Bridgeport has not been
hiding out in the woods, waiting to be found: it has been
governing the music industry in Nashville and elsewhere for
eleven years. The majority now proposes to introduce a
different rule for this circuit, creating a circuit split, and
providing a lower level of protection for copyright holders in
a different area of the country. See Seven Arts Filmed
Entertainment Ltd. v. Content Media Corp. PLC, 733 F.3d
1251, 1256 (9th Cir. 2013). This inconsistent approach is
plainly in contravention of Congressional intent that
copyright laws be predictable and uniform, yet the majority
defends its rogue path on the ground that Congress must have
intended something other than what the Sixth Circuit has
concluded, even though we’ve heard not a peep from
Congress, or for that matter the Supreme Court, in the eleven
years since Bridgeport has been on the books.
In short, the majority’s fuzzy approach would require a
factual and largely visceral inquiry into whether each and
38 VMG SALSOUL V. CICCONE
every instance of sampling was “substantial,” whereas
Bridgeport provides in the case of a fixed sound recording a
bright-line rule, and I quote: “Get a license or do not sample.”
410 F.3d at 801. 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 without
permission. I therefore respectfully dissent.2
2
Since I think that summary judgment was improperly granted on the
plaintiff’s sampling claims, I also would reverse the award of attorneys’
fees. However, I agree with the majority that the fee award was erroneous
in any event. I also agree that the district court properly granted summary
judgment on the plaintiff’s composition infringement claim.