VMG Salsoul, LLC v. Ciccone

• Decision Date: 02 June 2016
• Docket Number: Nos. 13-57104,14-55837,s. 13-57104
• Citation: 824 F.3d 871
• Parties: VMG Salsoul, LLC, a Delaware limited liability company, Plaintiff–Appellant, v. Madonna Louise 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.
• Court: U.S. Court of Appeals — Ninth Circuit

824 F.3d 871

VMG Salsoul, LLC, a Delaware limited liability company, Plaintiff–Appellant

v.Madonna Louise 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.

Nos. 13-57104

14-55837

United States Court of Appeals, Ninth Circuit.

Argued and Submitted April 5, 2016 Pasadena, California

Filed June 2, 2016

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.

Before: Barry G. Silverman and Susan P. Graber, Circuit Judges, and David A. Ezra,^** District Judge.

Dissent by Judge Silverman

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 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 , 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 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.

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:

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.

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. , ...