Ninth Circuit Rules that the “De Minimis” Exception for Copyright Infringement Applies to Sound Recordings, Creates Circuit Split

The Ninth Circuit, in a 2-1 decision, has ruled that Madonna is not liable for copyright infringement for incorporating a 0.23 second horn blast from a disco song in her 1990 song “Vogue,” holding that the “de minimis” exception, which excuses the unauthorized use of a small piece of a copyrighted work, applies to sound recordings. The Court held that, as reasonable juror could not conclude that an average audience would recognize the appropriation of the horn blast, Madonna has not benefited from the original artist’s expressive content and therefore, there is no infringement.

This ruling directly contradicts a decision by the Sixth Circuit in Bridgeport Music v. Dimension Films, a 2005 decision which expressly held that the “de minimis” exception didn’t apply when it comes to sound recordings. Bridgeport Music v. Dimension Films, 410 F.3d 792, 799 – 800 (6th Cir. 2005). The court in Bridgeport found that no unauthorized sampling was too small to constitute copyright infringement, stating in no uncertain terms “get a license, or do not sample.” Id. at 801.

As it was an open question in the Ninth Circuit whether the “de minimis” exception applied to claims of infringement of a copyrighted sound recording, the court began its analysis with the statutory text. The Plaintiff argued that Congress intended to create a special rule for copyrighted sound recordings, eliminating the “de minimis” exception. VMG Salsoul, LLC v. Ciccone at 24 (9th Cir. 2016). The plaintiff, and the Sixth Circuit, relied on 17 U.S.C § 114(b) which states:

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 Sixth Circuit held that as Congress stated that protection did not extend to independent sounds, even those which sound similar to the copyrighted sound recording, protection did extend to everything else. Bridgeport Music v. Dimension Films, 410 F.3d at 800. In other words, the Sixth Circuit found that if the infringing recording consists of anything but independent sounds, the copyright extends to it. Id.

The Ninth Circuit rejected this interpretation of § 114(b). The court stated that “a statement that rights do not extend to a particular circumstance does not automatically mean that the rights extend to all other circumstances.” VMG Salsoul, LLC v. Ciccone at 27. As the court found that the “de minimis” exception applied to all other copyrighted artistic works, they could not conclude that Congress intended to eliminate the “de minimis” exception for sound recordings through § 114(b). Id. at 29.

The Plaintiff further argued that because Congress has not amended the copyright statute in response to Bridgeport, the court should conclude that Bridgeport correctly interpreted congressional intent. Id. at 31. The court stated that 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, and rejected the argument. Id.; Alexander v. Sandoval, 532 U.S. 275, 292 (2001).

The court held that the “de minimis” exception applies to actions alleging infringement of a copyright to sound recordings. VMG Salsoul, LLC v. Ciccone at 32. The court was aware of the impact of creating a circuit split, but deemed it necessary stating:

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. Id at 29.

The opinion was accompanied by a strongly worded dissent from U.S. Circuit Judge Barry G. Silverman, believing that in any other context this would be called theft. Id. at 33. Judge Silverman stated that:

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” – 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. Id at 34.

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. Id. at 38.

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