Jurisdictional Splits and Timid Copyright Licensing

By Justin Jorgensen

University of Richmond School of LawExpected Graduation Date: May 2018

“‘[T]he creation of a circuit split [is] particularly troublesome in the realm of

copyright.’ Creating ‘inconsistent rules among the circuits . . . lead[s] to different levels

of protection in different areas of the country, even if the same alleged infringement is

occurring nationwide.’”1

Introduction

Copyright law is an ostensibly national legal regime, but it is fraught with regional

inconsistencies that can lead to different levels of protection—e.g., circuit spits and differing

state laws. Currently, there are several of these troublesome “splits among jurisdictions”2 that are

plaguing sound recording copyrights.3 Specifically, those splits deal with the de minimis use of

sound recordings in sampling cases, and the right of public performance for sound recordings

created before 1972.

In effect, these splits among jurisdictions cloud copyright law. This obfuscation is

especially detrimental to the music industry. Different circuits and states develop different rules

in different regions, but musicians and entities that deal with musicians often market their

services nationally and thus prosper when there is one rule for the entire country and suffer when

there is not.

For example, suppose a rap artist wants to sample someone’s music. Suppose further that

the Sixth Circuit requires a license for any sample no matter how small, and the Ninth Circuit has

a much more liberal standard that only requires licenses when a lot of sampling occurs. In theory,

the rap artist would get a license in the former, but not get a license in the latter. In practice,

1 Seven Arts Filmed Ent. Ltd. v. Content Media Corp., 733 F.3d 1251, 1256 (9th Cir. 2013) (quoting Silvers v. Sony Pictures Entm’t, Inc., 402 F.3d 881, 890 (9th Cir. 2005)). 2 I use this term to describe the differing state laws, opinions, and circuit splits in copyright law. 3 The precise definition of a “sound recording” will be discussed in Part I.A.

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however, she very likely has national aspirations, which means she would get a license in every

circuit. That way she would not have to worry about her album making its way to the circuit with

more stringent licensing requirements. Though there is a split of opinion, she will probably get a

license in every circuit, because the alternative is to make a song with the sample for one region

and a song without the sample for another region, which is clearly infeasible. Strictly speaking,

when confronted with a jurisdictional split, she will default to the most conservative, restrictive,

and demanding standard, which I call the “lowest common denominator.”

Defaulting to the lowest common denominator that copyright law provides can have

troublesome costs. In our example, the rap artist is paying money she does not necessarily have

to pay. More importantly, some rap artists are not going to sample at all, or will refrain from

marketing their music nationally, because they cannot afford the lowest-common-denominator

license. So, in fact, copyright’s main goal of encouraging creativity is retarded when people

engage in conservative licensing practices. In other words, the tendency to engage in overly

conservative licensing practices has negative effects that copyright law should try to do

something about, and creating a uniform set of rules can remedy those negative effects.

In this article, I describe the two relevant splits among jurisdictions in copyright law and

how the overly conservative licensing practices that they encourage are negatively impacting the

music industry. There are several possible solutions to this issue, including a legislative solution

and a judicial solution. Part I provides a general overview of current copyright law with a focus

on the music industry as well as the licensing practices in that industry. Part II discusses the two

splits among jurisdictions that deal with pre-1972 sound recordings and the de minimis use of

sound recordings. Part III explains how these splits have swayed licensing practices in a

conservative direction. Part IV discusses the possible solutions for these splits and the proper

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institutional mechanism to solve them, and then suggests the best solution that will encourage

both uniformity and creativity at the lowest possible monetary expense. In the end, I argue that

Congress should solve the problem for the circuit split regarding sampling by clarifying, in 17

U.S.C. § 114(b), that the de minimis doctrine applies to all copyrighted works. I also posit that

Congress should rectify the split among jurisdictions regarding pre-1972 sound recordings by

eliminating the 1972 border, meaning that the only public performance licenses needed for all

sound recordings are for digital audio transmissions.

I. Overview of Copyright with a Focus on the Music Industry

Before delving into the sound recording copyright issues, it is necessary to understand the

background and basics of copyright law. History illustrates just how important copyright law is

to the United States. The Constitution’s Copyright Clause states, “The Congress shall have

Power . . . To promote the Progress of Science and useful Arts, by securing for limited Times to

Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”4 Ever

since the ratification of the Constitution, the purpose of copyright law has been the

“encouragement of individual effort by personal gain . . . to advance the public welfare through

the talents of authors.”5 In other words, the public benefits from copyright law because it

encourages the creation of privately authored, creative works.6

Not every work is protected under copyright law. However, most creative works are

because the courts have construed the term “Writings” liberally7 to include printed works,

4 U.S. CONST. art. 1, § 8, cl. 8. 5 Mazer v. Stein, 347 U.S. 201, 219 (1954); 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 1.03[A] (Matthew Bender, Rev. Ed.). 6 See Eldred v. Ashcroft, 537 U.S. 186, 212 n.18 (2003). 7 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 1.08[A] (Matthew Bender, Rev. Ed.) (citing Fargo Mercantile Co. v. Brechet & Recheter Co., 295 F. 823 (8th Cir. 1924); Harper & Bros. v. Kalem Co., 169 Fed. 61 (2d. Cir. 1909), aff’d, 222 U.S. 55 (1911)).

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scripts, photographs, motion pictures, sound recordings, and more.8 Sound recordings were the

last “Writings” that were interpreted to be in the realm of copyrightable material9 before

Congress enacted the Federal Copyright Act of 1976, which helped create more generally

applicable rights.10 Prior to the Copyright Act of 1976, copyright law protected only those

particular categories of works that Congress specified in statutes.11 However, now any category

of work can receive a copyright if the “work contains a modicum of intellectual labor, and is

embodied in a tangible form.”12

Once an author obtains a copyright in a work, copyright law grants that author a limited

monopoly in her work.13 A copyright is “limited” because it lasts for a finite duration.14 A

copyright is a “monopoly” because the law grants the copyright owner certain exclusive rights in

a copyrighted work. The exclusive rights that a work may contain include: (1) the right to

reproduce; (2) the right to prepare derivative works, also known as the right to adaptation; and

(3) the right to public performance.15 As we will now see, however, not all copyrights have these

exclusive rights.

8 See, e.g., Sound Recordings Act, Pub. L. No. 92-140, 85 Stat. 391 (1971) (sound recordings); Goldstein v. California, 412 U.S. 546 (1973) (script or printed material); Kalem Co. v. Harper Bros., 222 U.S. 55 (1911) (motion pictures); Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884) (photographs). 9 See Sound Recordings Act, Pub. L. No. 92-140, 85 Stat. 391 (1971).10 See Copyright Act of 1976, Pub. L. No. 94-553, 90 Stat. 2541.11 See JULIE E. COHEN ET AL., COPYRIGHT IN A GLOBAL INFORMATION ECONOMY 345 (4th ed. 2015). 12 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 1.08[B] (Matthew Bender, Rev. Ed.); see 17 U.S.C. § 102 (2016) (detailing the broad list of copyrightable subject matter). 13 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 1.03[A] (Matthew Bender, Rev. Ed.).14 See Copyright Act of 1976, Pub. L. No. 94-553, 90 Stat. 2541.; Sonny Bono Copyright Term Extension Act, Pub. L. No. 105-298, 112 Stat. 2827 (1998) (extending copyright duration for a single authored work to life of the author plus 70 years, and for a work made for hire to 120 years from creation or 95 years from publication (whichever occurs first)). 15 17 U.S.C. § 106 (2016).

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A. The Differences Between Musical Compositions and Sound Recordings Under Current

Copyright Law

There are two copyrights in any recorded song or musical number: a copyright in the

musical composition16 and a copyright in the sound recording.17 A musical composition

copyright “captures an artist’s music in written form,”18 and is represented by a song’s sheet

music. If a songwriter owns a copyright in a musical composition, copyright law grants her the

exclusive rights to reproduce, to prepare a derivative work of, and to publicly perform her

composition.19

A sound recording copyright consists of a recording artist’s recorded rendition of a song

—a “fixation of a series of musical, spoken, or other sounds”20—and has more limited rights

compared to musical compositions. For example, if a recording artist owns a sound recording

that was created before 1972, state law may confer on her the right to control broadcasting and

other public performances of her sound recording, but federal law does not give her any

protection at all.21 Pre-1972 sound recordings are merely protected by an amalgam of diverse

16 The copyright act refers to these as “musical works,” but they are often called musical compositions because it is a better description of the actual work. 17 U.S.C. § 102(a)(2) (2016). 17 Lucille M. Ponte, The Emperor Has No Clothes: How Digital Sampling Infringement Cases Are Exposing Weaknesses in Traditional Copyright Law and the Need for Statutory Reform, 43 AM. BUS. L.J. 515, 522-24 (2006) (“The copyright to the musical score does not include ownership of the sound recording while the copyright to the sound recording does not extend to the musical composition itself.”).18 Newton v. Diamond, F. Supp. 2d. 1244, 1249 (C.D. Cal. 2003). 19 17 U.S.C. § 106 (2016); Reuven Ashtar, Theft, Transformation, and the Need of the Immaterial: A Proposal for a Fair Use Digital Sampling Regime, 19 ALB. L.J. SCI. & TECH. 261, 270 (2009); A Practical Guide to Licensing and Clearances, GLOBAL IMAGE WORKS, http://www.globalimageworks.com/rights/Practical%20Guide.pdf (last visited Apr. 17, 2017). 20 U.S. Copyright Office, Copyright Registration of Musical Compositions and Sound Recordings, https://www.copyright.gov/register/pa-sr.html (last visited Apr. 17, 2017). 21 17 U.S.C. § 301(c) (2016); Christopher J. Norton, Turtle Power: The Case for Common Law Protection for Pre-1972 Sound Recordings, 31 BERKELEY TECH. L.J. 759, 761 (2016); Lucille M. Ponte, The Emperor Has No Clothes: How Digital Sampling Infringement Cases Are Exposing Weaknesses in Traditional Copyright Law and the Need for Statutory Reform, 43 AM. BUS. L.J. 515, 525 (2006).

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state copyright law.22 Because of the political power of radio stations, federal protection was not

extended to sound recordings until 1972.23 Even then, they had no federal public performance

rights until 1995, and those rights are limited to digital audio transmissions, which effectively

protects traditional broadcasters like radio stations from paying licensing fees for broadcasting

sound recordings.24

In contrast, sound recording copyrights generally enjoy the same protection against

reproduction and adaptation as musical compositions.25 So, if someone wants to “sample”26 a

sound recording, that act implicates the reproduction and adaptation rights of both the musical

composition and the sound recording copyright.27 If the sampling reaches a certain level,

copyright law might allow a copyright owner to sue the sampler for infringing those rights.28

B. Music Licensing Scheme

22 See 17 U.S.C. § 301(c) (2016). 23 Christopher J. Norton, Turtle Power: The Case for Common Law Protection for Pre-1972 Sound Recordings, 31 BERKELEY TECH. L.J. 759, 761 (2016); Lucille M. Ponte, The Emperor Has No Clothes: How Digital Sampling Infringement Cases Are Exposing Weaknesses in Traditional Copyright Law and the Need for Statutory Reform, 43 AM. BUS. L.J. 515, 525 (2006).24 See Digital Performance Right in Sound Recordings Act of 1995, Pub. L. No. 104-39, 109 Stat. 336, as amended by the Digital Millennium Copyright Act of 1998, Pub. L. No. 105-304, 112 Stat. 2860, 2905 (codified at 17 U.S.C. § 114 (2016)); 2 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 8.14[A] (Matthew Bender, Rev. Ed.); Christopher J. Norton, Turtle Power: The Case for Common Law Protection for Pre-1972 Sound Recordings, 31 BERKELEY TECH. L.J. 759, 761 (2016).25 Reuven Ashtar, Theft, Transformation, and the Need of the Immaterial: A Proposal for a Fair Use Digital Sampling Regime, 19 ALB. L.J. SCI. & TECH. 261, 270 (2009).26 “‘Sampling’ involves taking an existing piece of copyrighted music and combining it with another to create a new work.” Alex Holz, How You Can Clear Cover Songs, Samples, and Handle Public Domain Works, ASCAP, https://www.ascap.com/playback/2011/01/features/ limelight.aspx.27 Peter DiCola, Sequential Musical Creation and Sample Licensing 6 (2010), http://scholarly commons.law.northwestern.edu/cgi/viewcontent.cgi?article=1033&context=facultyworkingpapers.28 This depends on the jurisdiction you are in. See VMG Salsoul, LLC v. Ciccone, 824 F.3d 871, 887 (9th Cir. 2016); Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792, 801 (6th Cir. 2005).

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Now that we understand the different works and the different exclusive rights involved in

copyright in music, we can consider the licenses that one would need to legally use such works.

For each exclusive right that a copyright owner has, a corresponding license exists that she can

grant to someone else. There are many licenses for each copyright because each copyright has

multiple exclusive rights.29 Since there are two copyrights in recorded music, there are

potentially twice as many licenses needed when attempting to use a song in an infringing way.30

The licensing scheme can be very complex, and it is helpful to use examples to describe it.

For musical compositions, suppose a traditional radio station wants to broadcast a song

created in 1961. The radio station’s broadcasting of that song constitutes a public performance of

the musical composition.31 Because copyright law grants exclusive rights over the public

performance of that song, the radio station should seek a license from the copyright owner. In

practice, these public performance licenses are administered as “blanket” licenses because most

composers belong to one of three collective rights organizations, ASCAP, BMI, or SESAC, that

administer such licenses on their behalf, making this an economically viable way to police and

enforce licensing agreements.32

Also regarding musical compositions, suppose a rap artist wants to sample someone

else’s music and market her song nationally. When she samples a song, she might need to get a

29 A Practical Guide to Licensing and Clearances, GLOBAL IMAGE WORKS, http://www.globalimageworks.com/rights/Practical%20Guide.pdf (last visited Apr. 17, 2017).30 Peter DiCola, Sequential Musical Creation and Sample Licensing 8 (2010), http://scholarly commons.law.northwestern.edu/cgi/viewcontent.cgi?article=1033&context=facultyworkingpapers.31 “To perform . . . a work ‘publicly’ means to transmit or otherwise communicate a performance . . . to the public, by means of any device or process.” 17 U.S.C. § 101 (2016); see 17 U.S.C. § 106 (2016). 32 Peter DiCola, Sequential Musical Creation and Sample Licensing 5 (2010), http://scholarly commons.law.northwestern.edu/cgi/viewcontent.cgi?article=1033&context=facultyworkingpapers; A Practical Guide to Licensing and Clearances, GLOBAL IMAGE WORKS, http://www.globalimageworks.com/rights/Practical%20Guide.pdf (last visited Apr. 17, 2017).

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license from the musical composition copyright owner because the sample implicates the

reproduction and adaptation rights of that copyright. However, there are no collective rights

organizations for sampling.33 Thus, to the extent that copyright law grants exclusive rights over

reproduction and adaptation, a sampler would need to negotiate directly with the owner of the

musical composition for a license to use each right.

The same cannot be said for the licensing regime of sound recordings, which is an

entirely different monster. There are certain limitations for sound recordings that musical

compositions simply do not have.34 Suppose again that a radio station wants to broadcast a song

from 1961. Like broadcasting a musical composition, broadcasting the song constitutes a public

performance of the sound recording of the 1961 song. However, as stated before, pre-1972 sound

recordings are currently only covered by an amalgam of state law,35 and some states do not

require a license to broadcast a sound recording.36 So in some states, the radio station will need a

license to broadcast the 1961 song and in others it will not.37

Suppose again that a rap artist wants to sample another person’s sound recording. When a

rap artist samples recorded music, the sample is a reproduction or an adaptation of the recording.

Depending on the extent of the sampling and the law of the relevant circuit, the sampling might

33 Alex Holz, How You Can Clear Cover Songs, Samples, and Handle Public Domain Works, ASCAP, https://www.ascap.com/playback/2011/01/features/limelight.aspx.34 See 17 U.S.C. § 114(b) (2016) (limitations on sound recordings); 17 U.S.C. § 301(c) (2016) (sound recordings made before 1972 are not covered by federal law). 35 17 U.S.C. § 301(c) (2016).36 See, e.g., N.C. GEN. STAT. § 66-28 (2010) (eliminating common law rights to obtain royalties for use of a sound recording once a copy has been sold, which effectively eliminates public performance rights); S.C. CODE ANN. § 39-3-510 (doing the same as the North Carolina law). 37 Even if the sound recording were created after 1972, no license would be needed because of the way federal law handles sound recordings. See 17 U.S.C. § 106(6) (2016) (applying the public performance right of sound recordings only to digital audio transmissions and not to terrestrial transmissions).

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require a license from the copyright owner of the sound recording, in addition to a license from

the copyright owner of the musical composition.

Copyright law is ripe with complexity. If a radio station wishes to broadcast a pre-1972

song, it must look to state law to determine if it needs a license for the sound recording, but

federal law always requires a license for the underlying musical composition. Further, whether

sampling needs a license for both a musical composition copyright and a sound recording

copyright depends on the extent of the sampling and the jurisdiction in which it occurs. The

cases that depict these differences are discussed at length in Part II below.

II. The Current Landscape of Jurisdictional Splits

So far, we understand the general overview of copyright law, the music industry, and the

music industry’s general licensing practices. Now we move on to the differences among

jurisdictions that further complicate those licensing practices. As we will see in Part II.A., courts

apply the de minimis doctrine when a small amount of sampling of a musical composition

occurs, but when it comes to applying the de minimis doctrine to sound recordings, different

jurisdictions apply very different rules. Further, in Part II.B., I describe the split among

jurisdictions for pre-1972 sound recordings and how the public performance right is or is not

applied in each jurisdiction. As we will see in Part III, these splits cause users of sound

recordings to default to the lowest common denominator and adopt overly conservative licensing

practices, because they obtain a license even when a license may not be necessary.

A. On Sampling and the De Minimis Doctrine

If no permission is sought or given to sample a song, and a sample is used, an

infringement action may be brought against the sampler for infringing the reproduction and

adaptation rights of both the musical composition copyright and sound recording copyright.

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However, there are instances where the copying does not rise to the level of actionable

infringement. “Some copying is permitted. In addition to copying, it must be shown that this has

been done to an unfair extent.”38 If the copying does not rise to that unfair level, no infringement

will be found. This principle is known as the de minimis doctrine,39 and it has been interpreted to

apply to copyright law in different ways.40

1. Newton v. Diamond: The Early Interpretation of the De Minimis Doctrine as

Applied to Musical Compositions

One of the leading copyright cases involving sampling and the de minimis doctrine is

Newton v. Diamond.41 In that case, jazz flutist James W. Newton sued the Beastie Boys, a

popular hip-hop group from the 1990s, for sampling the opening six-second, three-note segment

of a jazz performance from one of Newton’s songs, “Choir.”42 The Beastie Boys looped the six-

second sample over forty times as background music for their song, “Pass the Mic.”43 The

Beastie Boys obtained a license from ECM Records, the owner of the sound recording copyright,

to sample the “Choir” sound recording.44 However, the Beastie Boys failed to obtain a license to

sample the musical composition from Newton, the owner of the musical composition copyright.45

As a result, Newton filed an infringement action against the Beastie Boys, “alleging violations of

his copyright in the underlying [musical] composition.”46

38 West Publ’g Co. v. Edward Thompson Co., 169 F. 833, 861 (E.D.N.Y. 1909). 39 Newton v. Diamond, 388 F.3d 1189, 1193 (9th Cir. 2004).40 See, e.g., VMG Salsoul, LLC v. Ciccone, 824 F.3d 871 (9th Cir. 2016) (holding that de minimis applies to sound recordings); Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792 (6th Cir. 2006) (holding that de minimis does not apply to sound recordings); Newton v. Diamond, 388 F.3d 1189 (9th Cir. 2004) (holding that de minimis applies to musical compositions).41 Newton v. Diamond, 388 F.3d 1189 (9th Cir. 2004). 42 Id. at 1191. 43 Id. at 1192.44 Id. at 1191.45 Id.46 Id. at 1192.

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The Court began the analysis of Newton’s infringement claim as it does in all

infringement actions. First, for Newton to have a claim against the Beastie Boys, Newton had to

have valid ownership of the musical composition copyright.47 This was not disputed, because it

was clear that Newton owned a copyright in the underlying musical composition.48 Second, the

Beastie Boys needed to have actually copied Newton’s musical composition, which also clearly

occurred because they had specifically sampled Newton’s music in their song, “Pass the Mic.”49

Third, the copying of the musical composition had to “be significant enough to constitute

infringement.”50 “This means that even where the fact of copying is conceded, no legal

consequences will follow from that fact unless the copying is substantial.”51 This implies that

some amount of copying is permitted,52 and the law will not concern itself with very small

amounts of copying.53 This is, as the Court observed, known as the de minimis doctrine.54

The Court focused on the third factor in Newton. The Court looked to see if the Beastie

Boys’ use of the “Choir” sample “was substantial enough to sustain an infringement action.”55

Due to the similarity between the works and the fact that the sample was a short segment of

Newton’s song, the Court decided to use the “fragmented literal similarity” analysis.56

“Fragmented literal similarity exists where the defendant copies a portion of the plaintiff’s work

exactly or nearly exactly without appropriating the [original] work’s overall essence or

47 Id. 48 Id. at 1191. 49 Id. at 1195.50 Id. at 1192-93. 51 Id. 1193.52 Id. at 1193 (quoting West Publ’g Co. v. Edward Thompson Co., 169 F. 833 861 (E.D.N.Y. 1909).53 Id. 54 Id.55 Id. at 1194. 56 Id. at 1195.

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structure.”57 The controlling question is whether the similarity goes to trivial or substantial

elements of the work.58 To determine whether the similarity goes to trivial or substantial

elements, the Court “consider[ed] the qualitative and quantitative significance of the sampled

work in relation to [Newton’s] work as a whole.”59 If the similarity goes to trivial elements of the

work, no infringement will be found because it will be a de minimis copying.

After considering all the facts, the Newton Court held that the sampled work was a de

minimis use of Newton’s musical composition because “no reasonable juror could find the

sampled portion of the composition to be a quantitatively or qualitatively significant portion of

the [Newton] composition as a whole.”60 The three-note sample represented a mere two percent

of Newton’s composition, and Newton failed to prove that the three-note sequence was

qualitatively significant to “Choir.”61 Thus, to the Beastie Boys’ delight, their sampling of the

musical composition was not considered an infringement because it was a de minimis use.62

Consequently, they did not need to obtain a license from Newton to sample that portion of his

musical composition.

The Newton decision indicates that samplers do not need a license to sample a musical

composition if that sample is a de minimis use. The Court did not need to discuss the sound

recording copyright because a license had been obtained,63 but one could reasonably infer that

the de minimis doctrine applies to sound recordings as well—indeed, to any copyrighted work

that is copied in literal fragments.64 However, a split has developed in the circuit courts that

57 Id. 58 Id.59 Id. 60 Id.61 Id. at 1195-96. 62 Id.63 Id. at 1191.64 Lucille M. Ponte, The Emperor Has No Clothes: How Digital Sampling Infringement Cases Are Exposing Weaknesses in Traditional Copyright Law and the Need for Statutory Reform, 43

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interprets the de minimis use of sound recordings differently. The Sixth Circuit states that the de

minimis doctrine does not apply to sound recordings, while the Ninth Circuit states that the de

minimis doctrine does.

2. The Sixth Circuit’s Interpretation of De Minimis Use of Sound Recordings

Bridgeport Music owns the musical composition copyright and Westbound Records owns

the sound recording copyright to “Get Off Your Ass and Jam” by George Clinton, Jr.65 A rap

song titled “100 Miles and Runnin’” sampled the opening riff of the Clinton song.66 The opening

riff of the Clinton song is a three-note combination guitar solo that lasts approximately four

seconds.67 In the rap song, “a two-second sample from the guitar solo was copied, the pitch was

lowered, and the copied piece was ‘looped’ and extended to 16 beats.”68

In 1998, No Limit Films used “100 Miles and Runnin’” in a soundtrack for its new

movie, I Got the Hook-Up.69 No Limit Films negotiated and obtained a license from Bridgeport

Music to sample the musical composition of “Get Off Your Ass and Jam” in “100 Miles and

Runnin’.”70 However, No Limit Films did not obtain a license from Westbound Records for the

use of the sound recording.71 The Plaintiffs, the related entities Bridgeport Music and Westbound

Records, accordingly brought suit against No Limit Films for infringing Westbound Records’

sound recording copyright, in a case titled Bridgeport Music, Inc. v. Dimension Films.72

AM. BUS. L.J. 515, 535 (2006). 65 Bridgeport Music, Inc. v. Dimension Films, 401 F.3d 647, 652 (6th Cir. 2004). 66 Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792, 795 (6th Cir. 2005). 67 Id. at 796.68 Id. 69 Id. 70 Id. 71 Id.72 Id. at 796-97.

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It was assumed that the plaintiffs held valid copyrights, and since there was sampling,

there was copying.73 While in the district court, the court used a similar analysis that Newton

used and drew upon the de minimis doctrine and the fragmented literal similarity test.74 The

district court subsequently determined that no reasonable juror would recognize the source of the

copying as “Get Off Your Ass and Jam,” and thus determined that the copying was merely trivial

and not an infringement of the sound recording copyright.75

However, the Sixth Circuit reversed the district court’s holding, finding that the de

minimis doctrine did not apply to sound recordings and that “a sound recording owner has the

exclusive right to ‘sample’ his own recording.”76 In other words, the Sixth Circuit created a

bright-line rule: “Get a license or do not sample,” regardless of how substantial the sampling is.77

The Bridgeport Court arrived at the opposite conclusion of the federal district court for

several reasons. First, by disallowing sampling of any kind without a license, the Court created

an easily enforceable bright-line rule.78 Second, the Court largely rested its analysis on the

interpretation of 17 U.S.C. § 114(b), which, in relevant part, states that sound recording

copyright owners’ exclusive rights of reproduction and adaptation extend only to actual tape-to-

tape copying and not to “sound recording[s] that consist[] entirely of an independent fixation of

other sounds, even though such sounds imitate or simulate those in the copyrighted sound

recording.”79 Thus, the court reasoned, if those exclusive rights do not extend to another sound

recording that consists entirely of an independent fixation of other sounds, then the exclusive

rights of reproduction and adaptation do extend to a sound recording that has some copied

73 Id. at 796. 74 Bridgeport Music, Inc. v. Dimension Films, 230 F. Supp. 2d 830, 841 (M.D. Tenn. 2002).75 Id. at 842.76 Bridgeport Music, Inc., 410 F.3d at 798, 800. 77 Id. at 801. 78 Id. at 801. 79 17 U.S.C. § 114(b) (2016); Bridgeport Music, Inc., 410 F.3d at 800-01.

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elements.80 Accordingly, the sound recording copyright owner has control over any copied

elements, because “the part taken is something of value” to the owner, and is not merely trivial.81

If no sampling can be considered trivial, then a license is needed for any amount of sampling.

3. The Ninth Circuit’s Interpretation of De Minimis Use of Sound Recordings

In VMG Salsoul, LLC v. Ciccone, VMG Salsoul brought suit against Madonna Ciccone

(Madonna) and Shep Pettibone for violating VMG Salsoul’s musical composition and sound

recording copyrights.82 VMG Salsoul owns the musical composition and sound recording

copyrights for the song “Ooh I Love It (Love Break),” both of which VMG Salsoul alleges

Pettibone and Madonna sampled for the 1990 smash hit Madonna song, “Vogue.”83 The sampled

portion of “Love Break” in question is a modified .23 second segment of a “horn hit.”84 Since

Madonna did not obtain a license from VMG Salsoul for either the musical composition or the

sound recording, VMG Salsoul initiated an infringement action.85

VMG Salsoul undeniably owns valid copyrights in the musical composition and sound

recording of “Love Break,” and the Ninth Circuit assumed that the “horn hit” in “Vogue” was

sampled from “Love Break” for summary judgment purposes.86 The remaining question was

80 For present purposes, it does not matter which court is right, but it behooves me to say that Bridgeport makes a logical fallacy here. Consider the conditional statement: If it is entirely too cold outside, then you will need a jacket. It does not follow that if it is somewhat cold outside, you will not need a jacket. In the first statement, it could be -20 degrees Fahrenheit outside; in the second, it could be 38 degrees Fahrenheit outside. In both, you will still need a jacket. This is essentially what the Bridgeport court tried to argue. The conditional statement in the Bridgeport case is this: if sound recording consists entirely of an independent fixation of sounds, then there is no infringement. The court then incorrectly posits that if the sound recording consists of some copying, then there is infringement. 81 Bridgeport Music, Inc., 410 F.3d at 802.82 824 F.3d 871, 875 (9th Cir. 2016).83 Id. 84 Id.85 Id. 86 Id.

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whether Madonna copied a sufficiently similar portion of the copyrighted works to constitute

infringement.87 The federal district court granted summary judgment in favor of Madonna

because it applied the Newton analysis and found that the copying did not rise to the level of

infringement because it was merely de minimis copying.88

On appeal, the Ninth Circuit affirmed. First, the Ninth Circuit analyzed the alleged

infringement of the musical composition copyright. The Court compared the sampled “horn hit”

with the three-note sample in the Newton decision and found that the “snippets of the

composition that were . . . taken [in this case] are much smaller than the sample at issue in

Newton.”89 As a result, “[a] reasonable jury could not conclude that an average audience would

recognize an appropriation of the ‘Love Break’ composition.”90

Second, the Ninth Circuit analyzed the alleged infringement of the sound recording

copyright. The Court noted that the sampled portion in “Vogue” is a modified version of the

“Love Break” horn hit, and, as a result, decided against using the fragmented literal similarity

test that was used in Newton.91 However, the Court still drew on much of Newton’s approach and

ultimately found that the sample was de minimis copying because “a reasonable juror could not

conclude that an average audience would recognize the appropriation of the horn hit.”92 By

holding that the sampled sound recording was a de minimis use of VMG Salsoul’s sound

recording copyright, the Ninth Circuit explicitly disagreed with the Sixth Circuit’s holding in

Bridgeport that “any unauthorized copying—no matter how trivial—constitutes infringement.”93

87 Id. at 874. 88 VMG Salsoul, LLC v. Ciccone, 2013 U.S. Dist. LEXIS 184127 (C.D. Cal Nov. 18, 2013). 89 VMG Salsoul, LLC, 824 F.3d at 879. 90 Id. 91 Id. at 879-80 & n.8. The fragmented literal similarity test only applies when the sample was copied “exactly or nearly exactly.” Newton, 388 F.3d at 1195. 92 VMG Salsoul, LLC, 824 F.3d at 880. 93 Id.

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There are several reasons that the Ninth Circuit disagreed with the Sixth Circuit. For

instance, the Ninth Circuit was unable to find a valid reason to treat sound recording copyrights

differently with respect to the de minimis doctrine. Not only have courts applied the de minimis

doctrine consistently to all copyrightable subject matter,94 but several statutes also imply the

same consistency. For example, the Ninth Circuit analyzed the text of 17 U.S.C. § 102 and § 106

and found that § 102 treats sound recordings exactly like all other types of protected works,95

while § 106 does not contain or imply that the de minimis doctrine should be treated differently

for different works.96

Additionally, the Ninth Circuit found that the Sixth Circuit’s interpretation of 17 U.S.C. §

114(b) was incorrect, citing the statutory text. The text of § 114(b) asserts that the right to make

reproductions and derivative works of a sound recording does not apply to another sound

recording “that consists entirely of an independent fixation of other sounds.”97 This is a limitation

on the exclusive rights of sound recordings, because Congress judged it acceptable to

independently create a sound recording that sounds exactly like an original sound recording as

long as it is not an actual tape-to-tape copy. According to the Ninth Circuit, Bridgeport

incorrectly interprets this express limitation as an expansion of the exclusive rights of a sound

recording, finding that the rights of reproduction and adaptation extend to a work that contains

some copied elements (i.e. not “entirely” made of an independent fixation of other sounds).98 The

Ninth Circuit also vehemently disagreed with the Sixth Circuit’s interpretation because it is a

logical fallacy.99 “A statement that rights do not extend to a particular circumstance does not

94 Id. at 881. See also Newton, 388 F.3d at 1195 (stating that the de minimis doctrine “applies throughout the law of copyright, including cases of music sampling.”).95 Id. at 882.96 Id. 97 17 U.S.C. § 114(b).98 VMG Salsoul, LLC, 824 F.3d at 883-84.99 Id. at 884.

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automatically mean that the rights extend to all other circumstances.”100 Additionally, the Ninth

Circuit looked at the legislative history and found that it also does not support Bridgeport’s

analysis.101

Third, the Ninth Circuit disagreed with Sixth Circuit’s statements that because “the part

taken is something of value,” the part taken is not merely trivial.102 If this were true, new

creativity could not build upon prior creativity without a license because all takings would be

considered infringement. In fact, it is nearly always true that an artist uses “some expressive

content from [an] original artist.”103 That is the nature of progress in copyright law. Thus, there

must be some trivial takings in copyright law, or else there would be no progress. These

disagreements with the Bridgeport decision led the Ninth Circuit to explicitly create a circuit

split, because the Ninth Circuit found “that the ‘de minimis’ exception applies to actions alleging

infringement of a copyright to sound recordings.”104

In Part III, I will discuss the negative consequences that this circuit split has caused in

music licensing. First, however, let us consider a second disagreement among jurisdictions that

has different, although equally pernicious, effects.

B. On the Right to Public Performance of Pre-1972 Sound Recordings

Not only is there a split in the sampling context for sound recordings, but a separate split

on a different copyright issue has also been developing among the state of law in California,

New York, and Florida. Those splits deal with the right of public performance of sound

100 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.03[A][2][b] (Matthew Bender, Rev. Ed.).101 VMG Salsoul, LLC, 824 F.3d at 883. 102 VMG Salsoul, LLC, 824 F.3d at 880-87; Bridgeport Music, Inc., 410 F.3d at 802.103 VMG Salsoul, LLC, 824 F.3d at 885. 104 Id. at 887.

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recordings created before 1972. As a practical matter, this article will only discuss the facts of

the New York case because those facts apply to all three cases described below.

1. The Facts: Flo & Eddie, Inc. sues Sirius XM

Flo & Eddie, Inc. is a California corporation that is owned by two members of the band

the Turtles.105 The Turtles formed a band in 1965, and made many hit songs prior to 1972, most

notably the hit song “Happy Together.”106 Since these songs were recorded before 1972, the

sound recordings are not subject to federal copyright protection and must instead resort to state

law for protection, if any.

Sirius XM is a Delaware corporation that broadcasts satellite radio.107 It broadcasts digital

radio transmissions to its twenty-four million customers for a fee.108 These broadcasts include

many of the Turtles’ pre-1972 songs, as well as many other pre-1972 songs from other bands.109

However, Sirius XM broadcasts these sound recordings without obtaining a license or paying

any royalties to the owner of the pre-1972 sound recording copyrights.110 Because Sirius XM has

not obtained permission from the sound recording copyright owners, the Turtles subsequently

105 Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 821 F.3d 265, 267 (2d Cir. 2016).106 Id.107 Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 2016 N.Y. LEXIS 3811, 2 (N.Y., Dec. 20, 2016).108 Flo & Eddie, Inc., 821 F.3d at 267-68.109 Id. at 268.110 Id. Sirius XM does pay royalties to use and broadcast copyrighted musical compositions. U.S. Music Royalty Fee FAQs, SIRIUSXM (Jan. 5, 2015), http://www.siriusxm.com/usmusicroyalty/ faqs.

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filed suit in California, New York, and Florida, each alleging that Sirius XM has violated Flo &

Eddie’s state law sound recording performance rights in those pre-1972 songs.111

2. The Cases: California, New York, and Florida

In California, the lawsuit was decided in favor of Flo & Eddie.112 This was an easy case

for the California Court, because California has a statute that provides a broad public

performance right for pre-1972 sound recordings.113 Because of the California statute, in

November of 2016, Sirius XM agreed to settle the case with Flo & Eddie. Sirius XM agreed to

pay upwards of $99 million dollars to Flo & Eddie and others in the class action lawsuit;

however, this is a maximum settlement, contingent on the outcomes of the lawsuits in New York

and Florida.114 The settlement agreement also stipulated that, in the future, Sirius XM will have

to pay a royalty rate that is 2 percent higher than what is currently owed for broadcasting the pre-

1972 sound recordings.115

111 See Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 827 F.3d 1016 (11th Cir. 2016); Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 2014 U.S. Dist. LEXIS 139053 (C.D. of Cal., Sept. 22, 2014); Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 2016 N.Y. LEXIS 3811 (N.Y., Dec. 20, 2016). 112 Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 2014 U.S. Dist. LEXIS 139053, at *22-23 (C.D. of Cal., Sept. 22, 2014).113 Id.; see Cal. Civ. Code § 980(a)(2).114 Ben Sisario, SiriusXM Agrees to Pay Up to $99 Million to Settle Turtles-Backed Copyright Suit, THE NEW YORK TIMES (Nov. 29, 2016), https://www.nytimes.com/2016/11/29/arts/music/ turtles-siriusxm-1972-copyright-settlement.html; Tyler Ochoa, A Seismic Ruling Revisited: No Common-Law Public Performance Rights in Pre-1972 Sound Recordings in New York—Flo & Eddie v. Sirius, TECH. & MARKETING L. BLOG (Jan. 10, 2017), http://blog.ericgoldman.org/ archives/2017/01/a-seismic-ruling-revisited-no-common-law-public-performance-rights-in-pre-1972-sound-recordings-in-new-york-flo-eddie-v-sirius.htm.115 Bill Donahue, Sirius To Pay Up To $99M In Pre-1972 Songs Settlement, LAW360 (Nov. 29, 2016, 3:44 PM), https://www.law360.com/articles/866707/sirius-to-pay-up-to-99m-in-pre-1972-songs-settlement.

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In the New York lawsuit, the case was decided in favor of Sirius XM.116 Unlike

California, New York does not have a statute that addresses the public performance right of

sound recordings created before 1972. Thus, the New York Court of Appeals looked to state

common law to determine the issue.117 The Court found that while New York common law

provides for the exclusive right of reproduction, it “permits a purchaser to use copies of sound

recordings for their intended purposes, namely, to play them.”118 Accordingly, the New York

Court found that state common law does not recognize a right of public performance for creators

of pre-1972 sound recordings.119

Likewise, in the Florida lawsuit, a federal district court ruled against Flo & Eddie.120 In

that case, the Court noted that Florida does not have a statute “nor a bevy of case law interpreting

common law copyright related to [sound recording copyright protection].”121 The Court found

that it would be creating a new property right instead of merely interpreting existing law.122 As a

result of losing in the district court, Flo & Eddie appealed the case to the Eleventh Circuit. While

on appeal, the Eleventh Circuit has certified the question of public performance rights under

Florida law to the Florida Supreme Court.123 The Florida Supreme Court will hear oral arguments

in April of 2017.124

116 Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 2016 N.Y. LEXIS 3811 (N.Y., Dec. 20, 2016) (finding that New York common law does not support a right of public performance in pre-1972 sound recordings). 117 Id. at *9-11.118 Id. at *25. 119 Id at *25-26. 120 Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 2015 U.S. Dist. LEXIS 80535, at *15. 121 Id. at *13. 122 Id. 123 827 F.3d 1016 (11th Cir. 2016). 124 David Oxenford, Flo and Eddie NY Suit on Pre-1972 Sound Recordings Ordered Dismissed By Court of Appeals – No Issues with Copies Made in the Transmission Process, BROADCAST L. BLOG (Feb. 17, 2017), http://www.broadcastlawblog.com/2017/02/articles/flo-and-eddie-ny-suit-on-pre-1972-sound-recordings-ordered-dismissed-by-court-of-appeals-no-issues-with-copies-made-in-the-transmission-process/.

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Thus, there is currently an amalgamation of differing state law regarding public

performance rights in pre-1972 sound recordings.125 This mix of differing state law has

essentially created a split among jurisdictions on whether it is necessary for digital radio

broadcasters like Sirius XM to obtain a license to broadcast pre-1972 sound recordings.

III. These Splits Among Jurisdictions Have Led to the Creation of Conservative

Licensing Practices

The above-described splits among jurisdictions have led to serious consequences for

potential sound recording licensors and licensees. The courts have essentially created both

restrictive and permissive standards and those who operate in the music industry must decide

which to follow. Because of the reasons described below, the music industry defaults to the

restrictive lowest common denominator, which encourages conservative licensing practices at an

unnecessary monetary and creative expense. After describing the effects of these splits among

jurisdictions in Part III.A. and B., I will describe the possible solutions to them in Part IV.

A. Effect of De Minimis Sampling of Sound Recording Decisions on Licensing

Initially, the circuit split regarding the de minimis use of sound recordings might not

seem like that much of an issue. Musicians in the Sixth Circuit will seek a license to sample a

song, and musicians in the Ninth Circuit will have more leeway with whether they need to get a

license to sample. However, with the rise of technology and the desire for greater profits,

multistate and national activities are currently the norm in the music industry. This presents a

125 See, e.g., Cal. Civil Code § 980(a)(2) (providing public performance rights in pre-1972 sound recordings); N.C. GEN. STAT. § 66-28 (2016) (abrogating the public performance right in pre-1972 sound recordings); Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 827 F.3d 1016 (11th Cir. 2016) (certifying the state question of whether public performance rights extend to pre-1972 sound recordings, which could go either way); Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 2016 N.Y. LEXIS 3811 (N.Y Dec. 20, 2016) (holding that New York common law does not recognize a right of public performance in pre-1972 sound recordings).

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problem for musicians because there are now two major music markets126 that have different

interpretations of whether trivial copying of sound recordings is considered infringement or a de

minimis use.

In the Sixth Circuit, the standard is that a musician should always get a license if she

wants to sample a sound recording, because de minimis use does not apply to sound recordings

in that jurisdiction. In the Ninth Circuit, the standard is that a license will not be needed if the

sampled sound recording is a trivial use and therefore a de minimis use. If a musician operating

in California wants to sample a sound recording, it is a safe bet that she can sample that sound

recording as long as the Ninth Circuit has jurisdiction over all the parties involved. However,

even if the musician is based in California, she probably wants to market her music nationwide—

including in states governed by the Sixth Circuit standard. She will therefore most likely default

to the lowest common denominator, abide by the Bridgeport decision, and negotiate a license for

any sampling, no matter how trivial.

This example assumes that the musician has the means and money to negotiate a license.

Many new artists, however, do not have the necessary resources to locate the licensor and pay

the licensing fees to sample sound recordings, particularly when sampling is an important part of

their musical niche, as is the situation in the hip-hop, rap, and rock genres.127 As a result, this

conservative practice of obtaining a license when one may not even be needed can have a stifling

effect on creativity, which goes against one of the main purposes of copyright law: to encourage

creativity.

126 See Samuel Jablonski, California, The Music Capital, WRITER JUNKIE (May 22, 2016) http://writerjunkie.com/music-in-the-golden-state/; 8 Destinations for Country Music, FOX NEWS TRAVEL (May 2, 2013) http://www.foxnews.com/travel/2013/05/02/8-destinations-for-country-music-fans.html.127 Olufunmilayo B. Arewa, From J.C. Bach to Hip Hop: Musical Borrowing, Copyright and Cultural Context, 84 N.C. L. REV. 547, 630-31 (2006).

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B. Effect on Licensing Public Performance Rights of Pre-1972 Sound Recordings

As in the sampling example, the differences in state law inherent from the differing Flo

& Eddie decisions do not at first seem like a troubling issue until one understands that

nationwide activities are the norm in music broadcasting. A decision anywhere affects licensing

everywhere. Musicians want their songs to play nationally, and broadcasters want to make

money by broadcasting those songs nationally. It is simple economics. On top of that, both

California and New York had vibrant music scenes prior to 1972,128 and as a result there is much

at stake for copyright owners of pre-1972 sound recordings and consequently for broadcasters of

those sound recordings. Due to the differing laws in California and New York (and possibly

Florida), national broadcasters must be wary of whether they should obtain a license to broadcast

pre-1972 sound recordings, because “the differences and ambiguities in state laws make it

difficult to undertake multistate or nationwide activities, particularly for individuals and entities

that are risk averse or lack the ability to conduct detailed legal analysis for each proposed new

use.”129

Further, when California ruled that its state statute protected the public performance of

pre-1972 sound recordings, it forced every entity in California that broadcasts pre-1972 sound

recordings nationally or semi-nationally to obtain a license from the sound recording copyright

owner, or else face the prospect of infringement litigation in California. It is important to note

that the California statute and ruling has no limiting language regarding digital sound

recordings.130 This is in contrast to the federal Copyright Act, which limits the public

128 Harold C. Schonberg, For Music, New York is World’s Capital, THE NEW YORK TIMES (Jan. 4, 1985), http://www.nytimes.com/1985/01/04/arts/for-music-new-york-is-world-s-capital.html ?pagewanted=all.129 U.S. Copyright Office, Federal Copyright Protection for Pre-1972 Sound Recordings 48-49 (2011) https://www.copyright.gov/docs/sound/pre-72-report.pdf.130 See Cal. Civ. Code § 980(a)(2); Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 2014 U.S. Dist. LEXIS 139053, at *22-23 (C.D. Cal., Sept. 22, 2014); Noah Drake, Flo & Eddie, Inc. v. Sirius

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performance right of a sound recording to digital broadcasting.131 The California statute

encompasses not only digital broadcasts, but also traditional broadcasts—even though the

original defendant was Sirius XM, a digital music service. As a result, pre-1972 sound

recordings are now more protected than sound recordings created after 1972 in California (which

can be broadcast by traditional, non-digital means without a license).132 This has created a free-

for-all licensing scheme because now everyone is required to obtain a license if they wish to

broadcast pre-1972 sound recordings in California.133 In other words, both digital broadcasters

and traditional radio stations are now required to obtain a license to broadcast pre-1972 sound

recordings in California, creating a restrictive standard for potential licensees, which may reduce

the number of pre-1972 songs broadcast on California radio stations.

New York, on the other hand, went a different route. Since New York statutes and

common law do not recognize a right of public performance for pre-1972 sound recordings, no

license is needed to broadcast those sound recordings. The New York ruling permits people to

publicly perform pre-1972 sound recordings without a license.134 The ruling is a victory for both

digital services like Sirius XM and for traditional broadcasters, because both would have faced

XM Radio, Inc.: Public Performance Rights for Pre-1972 Sound Recordings, 6 CAL. L. REV. CIRCUIT 61, 66 (2015).131 17 U.S.C. § 106 (2016). And of course, this right only applies to sound recordings made in 1972 or later. 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 2.10[A][1][c] (Matthew Bender, Rev. Ed.).132 Noah Drake, Flo & Eddie, Inc. v. Sirius XM Radio, Inc.: Public Performance Rights for Pre-1972 Sound Recordings, 6 CAL. L. REV. CIRCUIT 61, 66 (2015); see also 17 U.S.C. § 106(6) (restricting sound recording public performance rights to “digital audio transmission”).133 Id. at 67; Steve Gordon & Anjana Puri, The Current State of Pre-1972 Sound Recordings: Recent Federal Court Decision in California and New York Against Sirius XM Have Broader Implications Than Just Whether Satellite and Internet Radio Stations Must Pay for Pre-1972 Sound Recordings, 4 NYU J. OF INTELL. PROP. & ENT. LAW 336, 353 (2015).134 Tyler Ochoa, A Seismic Ruling Revisited: No Common-Law Public Performance Rights in Pre-1972 Sound Recordings in New York—Flo & Eddie v. Sirius, TECH. & MARKETING L. BLOG (Jan. 10, 2017) http://blog.ericgoldman.org/archives/2017/01/a-seismic-ruling-revisited-no-common-law-public-performance-rights-in-pre-1972-sound-recordings-in-new-york-flo-eddie-v-sirius.htm. However, one might still need a license for the musical composition.

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the prospect of needing to obtain a license to broadcast pre-1972 sound recordings had the New

York court ruled in favor of finding a public performance right in those sound recordings.135 It is

important to note that, while the Florida case has yet to reach a decision on the common law

rights of public performance for pre-1972 sound recordings, “[i]t is likely that many other states

will now follow New York’s lead in rejecting a common-law right of public performance [for

those sound recordings.]”136

Thus, these disparate results will mean that broadcasters with national reach will default

to the lowest common denominator—the California decision. Such broadcasters will need to

obtain a license for publicly performing pre-1972 sound recordings nationally, or indeed

anywhere outside of New York, because “businesses may consider publicly performing [those]

sound recordings as too much of a risk. The risk of liability not only discourages innovation on

the technology front such as Sirius XM’s contribution to satellite technology, but also prevents

preservation and dissemination of the vast body of work recorded before 1972.”137

IV. Solutions to Remedy the Conservative Licensing Practices

Now that we understand the conservative licensing practices that these splits have caused,

we should consider the possible ways to remedy these practices. The problem of conservative

licensing practices emerges because of the diffuse nature of lawmaking. Different circuits and

different states create different rules in different regions, but musicians and entities that deal with

musicians often market their services nationally. This implies that both musicians and the entities

that deal with them will prosper when there is a single rule for the entire country. However,

when different courts reach different results, everyone defaults to the lowest common

135 Id. 136 Id. 137 Noah Drake, Flo & Eddie, Inc. v. Sirius XM Radio, Inc.: Public Performance Rights for Pre-1972 Sound Recordings, 6 CAL. L. REV. CIRCUIT 61, 68 (2015).

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denominator of licensing, even when that might result in spending more money on licenses,

which in turn harms less wealthy creators and disseminators.

In other words, any sampler with national aspirations will follow the more restrictive

Bridgeport ruling and get a license, even if the sampling is de minimis. And any radio station

who wants its music broadcast outside of New York will need to get a license for any pre-1972

sound recording, even though many states require no such license.138 Thus, instead of continuing

to harm the country with these disparate splits, legal institutions should develop a uniform sound

recording copyright system that encourages the most creativity for copyright law. Uniformity at

the national level is incredibly important, because technology and the internet allow for the

broadcasting of music much further than was possible in the past.139 This section first describes

the possible solutions for the circuit split regarding the sampling of sound recordings, and then

discusses the proper institution to rectify that issue. Then, the same analysis is done regarding the

split for pre-1972 sound recordings.

A. Sampling of Sound Recordings

1. Solution

First, regarding the issue of sampling sound recordings and the de minimis doctrine,

some scholars suggest that Congress should draft “a new [well-written] statutory provision

related solely to digital samples.”140 However, instead of drafting an entirely new provision, a

138 Traditional radio broadcasts are available online, so many traditional radio broadcasts do actually make it outside of the state they were originally broadcast in. See, e.g., 96.1 The Planet, IHEARTRADIO, http://961theplanet.iheart.com (a Richmond, Va. radio station’s web-stream). 139 For example, one can simply search the internet for a radio station that is normally played on the traditional radio, and a web-stream of it can most likely be found. It should be noted that digital radio broadcasting does not include traditional radio broadcasts on the internet. Traditional radio is broadcast in an analog format. See 17 U.S.C. § 101 (2016) (defining digital transmission as “a transmission in whole or in part in a digital or other non-analog format”).140 Lucille M. Ponte, The Emperor Has No Clothes: How Digital Sampling Infringement Cases Are Exposing Weaknesses in Traditional Copyright Law and the Need for Statutory Reform, 43 AM. BUS. L.J. 515, 556-75 (2006).

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better approach is for Congress to merely modify 17 U.S.C. § 114(b) to state, “In no case shall

this be read as an enlargement of the rights of sound recording copyrights over copyrights in

other kinds of works.” As noted above in the description of the VMG Salsoul decision, 17 U.S.C.

§114(b) imposes limitations on sound recording copyrights, and should therefore not be

interpreted as an enlargement of the rights in sound recordings.141 This suggested modification

merely clarifies that sound recordings should be treated like all other types of copyrightable

subject matter, and that de minimis use currently applies to all types of copyrighted works,

including sound recordings.142 Further, some copying has always been tolerated in copyright

law.143 This applies especially in the music industry, where musicians often draw inspiration

from other musicians and artists.

What about the statutory interpretation of 17 U.S.C. § 114(b) as an expansion of the

rights given to sound recordings, which was argued in the Bridgeport decision?144 The answer is

that the logical fallacy in the Bridgeport decision is very apparent,145 and when considering

traditional methods of statutory interpretation, there is no way that Congress meant to expand the

rights of sound recordings with the limiting clause of 17 U.S.C. § 114(b). A natural,

straightforward reading of the relevant part of 17 U.S.C. § 114(b) illustrates that the rights in

sound recordings are limited to actual copying.146 Further, the legislative history behind § 114(b)

supports the interpretation that it is a limiting clause because the legislative history actually

141 VMG Salsoul, LLC, 824 F.3d at 883-84.142 VMG Salsoul, LLC, 824 F.3d at 880 (“[C]ourts consistently have applied the [de minimis] rule in all cases alleging copyright infringement.”).143 Lucille M. Ponte, The Emperor Has No Clothes: How Digital Sampling Infringement Cases Are Exposing Weaknesses in Traditional Copyright Law and the Need for Statutory Reform, 43 AM. BUS. L.J. 515, 528 (2006). 144 See supra Part II.A.2.145 See supra note 81. 146 VMG Salsoul, LLC, 824 F.3d at 883.

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refers to §114 as a limitation.147 In substance, “[t]here is no indication that Congress intended . . .

to expand the rights of a copyright holder to a sound recording.”148

Statutory interpretation aside, was the bright-line policy concern that the Sixth Circuit

articulated legitimate?149 Bright-line rules are easy to follow and can make litigation cheaper.

Thus, it might be better to have a bright-line rule that is more conservative than to have a vague

rule that has more liberality like the proposed statutory language. Again, however, the answer is

no. Clear answers are not always the best in copyright law,150 and in any event the Bridgeport

decision was clearly an erroneous interpretation of 17 U.S.C. § 114(b). If Congress wants to

establish such a bright-line rule, it can, but it is not the judiciary’s place to do so. And in the

absence of any indication that Congress favors such a change, the better route is to modify the

language in 17 U.S.C. § 114(b) and add the proposed statutory language to avoid the confusion

that is currently running amok in the circuit courts.

2. Is Congress the Institution that Should Fashion the Solution for the Sampling of

Sound Recordings?

The above proposal assumes that Congress is the correct institution to solve the issue of

sampling sound recordings in copyright law. However, Congress can be influenced by music

industry lobbyists151 who might push for the outcome determined in the Bridgeport decision,

which would not necessarily be advantageous. Perhaps, then, the Supreme Court should be the

147 H.R. Rep. No. 94-1476, at 61 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5674 (stating that the 17 U.S.C. § 106, in relation to 17 U.S.C. § 114, is subject to “various limitations, qualifications, or exemptions[,]” but no mention is made of expansions). 148 VMG Salsoul, LLC, 824 F.3d at 884.149 See supra Part II.A.2.150 See, e.g., 17 U.S.C. § 107 (2016) (This statute codifies the fair use defense in copyright law. This is a balancing test, which is flexible and far from a clear.).151 Christopher J. Norton, Turtle Power: The Case for Common Law Protection for Pre-1972 Sound Recordings, 31 BERKELEY TECH. L.J. 759, 761 (2016).

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proper institution. It could grant certiorari in a case like VMG Salsoul and decide the issue once

and for all.

The problem with relying on the Supreme Court is that the time to grant certiorari for

VMG Salsoul has passed,152 so the Court must wait for another case which may never come.

Thus, more litigation would need to occur to ensure that the Supreme Court would even have the

opportunity to deal with the de minimis issue for sound recordings. That litigation would be

costly and time consuming, and potentially a waste of resources, which is, in effect, exactly what

we are trying to avoid by coming up with a solution to this problem.153 This immense monetary

aspect essentially forces potential samplers of sound recordings to defer to the lowest common

denominator of conservative licensing, stifling creativity in the long run.

“Legislative reform, on the other hand, can occur quickly if there is enough support

behind the movement.”154 Thus, if there is enough support, Congress could and should decide on

the solution. While there are possible disadvantages to having Congress decide this issue, those

disadvantages are outweighed by the fact that we cannot wait around forever for a case to

percolate up through the federal courts. There was a ten-year gap between the Bridgeport

decision and the VMG Salsoul decision, and the music industry could suffer if is forced to wait

another ten-years after VMG Salsoul.

B. Pre-1972 Sound Recordings

152 VMG Salsoul was filed on June 2, 2016, and no writ of certiorari has been filed. VMG Salsoul, LLC v. Ciccone, 824 F.3d 871 (9th Cir. 2016). The time frame to file certiorari is within 90 days of entry of judgment. Info. Sheet for Filing Petition for Writ of Certiorari, https://www.ca4.uscourts.gov/docs/pdfs/certinfosheet.pdf?sfvrsn=14. 153 Christopher S. Brown, Copyleft, The Disguised Copyright: Why Legislative Copyright Reform is Superior to Copyleft Licenses, 78 UMKC L. REV. 749, 777 (2010). 154 Id.

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1. Solutions

Next, consider the split among jurisdictions dealing with pre-1972 sound recordings.

Here, another commentator has already suggested the best solution: “Congress should repeal the

provision of the Copyright Act of 1976 that allows states to determine their own laws for pre-

1972 sound recordings.”155 The entire issue of conservative licensing practices arises from the

discord in state law. After repealing the provision in the Copyright Act,156 Congress could then

enact a statute that provides a public performance right for pre-1972 sound recordings when

broadcast via digital transmission. This would grant uniformity throughout copyright law and

would remedy the diversity in state law that has plagued broadcasters of pre-1972 sound

recordings. Indeed, even the record labels and digital broadcasters recognize that there is a

potential right to digital public performance of pre-1972 sound recordings, because these parties

have “by and large opted to settle their potential claims over the performance of those recordings

rather than litigate over murky rights that may or may not exist.”157 If Congress recognizes that

these rights do exist, then these settlements are not all for naught.

However, it is important to recognize the implications of eliminating the 1972 border and

whether that is the best solution, because no matter the solution Congress chooses, some party

will be harmed. For example, if Congress eliminates the 1972 border and applies current federal

copyright law to all songs with copyright protection, owners of pre-1972 sound recordings in

California would be harmed. Under current California law, owners of pre-1972 sound recordings

have a broad public performance right that requires both traditional and digital broadcasters to

get a license to broadcast those works. If Congress decides to treat these sound recordings like

155 Noah Drake, Flo & Eddie, Inc. v. Sirius XM Radio, Inc.: Public Performance Rights for Pre-1972 Sound Recordings, 6 CAL. L. REV. CIRCUIT 61, 68 (2015).156 See 17 U.S.C. 301(c) (2016).157 Christopher J. Norton, Turtle Power: The Case for Common Law Protection for Pre-1972 Sound Recordings, 31 BERKELEY TECH. L.J. 759, 770 (2016).

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post-1972 sound recordings, Congress will effectively be taking away public performance

licensing fees from those owners that traditional radio broadcasters have to pay under the current

California system. In other words, those owners would only get licensing fees from digital radio

broadcasters for broadcasting pre-1972 songs.

Alternatively, suppose that Congress decides to codify the California statute and grant

broad public performance rights to all sound recordings made prior to 1972. Traditional radio

stations would have to pay licensing fees for all sound recordings and musical compositions with

copyright protection, just like digital broadcasters. Instead of only needing to pay for one license

to broadcast pre-1972 songs,158 traditional broadcasters would have to pay for two licenses—the

musical composition license and the sound recording license. No matter which solution is

chosen, someone will be angered.

This raises the question of whether a uniform standard is really that important. Suppose

Congress decides not to solve the issue of public performance rights for pre-1972 sound

recordings. Radio stations may have the ability to limit their broadcasts to a geographically

limited area, which would help ease the jurisdictional issues caused by the split. And, as noted

above, digital broadcasters have “by and large opted to settle their potential claims over the

performance of those [pre-1972 sound] recordings.”159 Thus, perhaps it is best to leave states to

their own devices to create their own laws, let traditional radio broadcasters limit their own

broadcasts, and let the market settle the issue for digital broadcasters.

However, because of the impact that technology is having on the music industry and the

risk averse nature of radio broadcasters, lobbying interests, which are discussed below, will most

158 The public performance license for musical compositions, which those broadcasters already must pay.159 Christopher J. Norton, Turtle Power: The Case for Common Law Protection for Pre-1972 Sound Recordings, 31 BERKELEY TECH. L.J. 759, 770 (2016).

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likely prevail in this fight. Thus, Congress will need to create a uniform standard that eliminates

the current 1972 border and only apply the public performance right of sound recordings to

digital radio broadcasters.

2. Is Congress the Institution that Should Fashion the Solution for Pre-1972 Sound

Recordings?

But why Congress? After all, if copyright law needs a uniform system to resolve the issue

of public performance of pre-1972 sound recordings, there may be two institutions that can

fashion the solution: Congress and the Supreme Court of the United States. However, after

analyzing the pros and cons of each institution, it is clear that Congress should be the mechanism

that drafts the solution.

In favor of the legislative route, Congress can pass broad legislation and provide a

holistic view of the law. However, Congress is often influenced by powerful lobbying groups

with industry interests in mind instead of what is best for copyright law. Take the Digital

Performance Right in Sound Recordings Act of 1995 as an example. In that Act, Congress

decided to treat digital and traditional radio broadcasting differently.160 “[T]he compromise

solution that Congress ultimately devised was due more to powerful industry lobbying than any

good legal or philosophical reasons.”161

Further, it should be noted that there have been several proposed bills advanced in recent

years that would have dealt with the issue of public performance rights in sound recordings.162

However, none were passed, and Congress has been dragging its heels, which indicates “strong

160 Digital Performance Right in Sound Recordings Act of 1995, Pub. L. No. 104-39, 109 Stat. 336.161 Christopher J. Norton, Turtle Power: The Case for Common Law Protection for Pre-1972 Sound Recordings, 31 BERKELEY TECH. L.J. 759, 761 (2016).162 See Respecting Senior Performers as Essential Cultural Treasures Act, H.R. 4772, 113th Cong. (2d. Sess. 2014); Fair Play Fair Pay Act, H.R. 1733 114th Cong. (2015).

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evidence that no federal solution will be forthcoming in the near future.”163 This suggests the

strong possibility that the stagnation in Congress will not lead to a solution for public

performance rights in pre-1972 sound recordings.

On the other hand, the Supreme Court of the United States makes decisions based on

informed legal reasoning, and is supposed to be apolitical and immune to industry lobbying.

However, the nail in the coffin for the Supreme Court on this issue is that it can only become

involved in a case that has a federal issue.164 “[T]he Supreme Court has no power to resolve

issues of state law.”165 Thus, the Supreme Court is not a viable option because the pre-1972

sound recording problem is only a state law issue. In the end, then, the jurisdictional limits of the

Supreme Court outweigh the faults of Congress. Congress is the only institution that can develop

a solution regarding the difference in state law for public performance rights of pre-1972 sound

recordings.

Conclusion

In the realm of copyright law, clarity is king. With clarity comes more efficient licensing

practices which in turn spur creativity. Much copyright law has been clarified throughout the

years. However, as technology becomes more advanced, more issues become apparent. The

music industry is oftentimes on the forefront of these technological advances, which means the

163 Christopher J. Norton, Turtle Power: The Case for Common Law Protection for Pre-1972 Sound Recordings, 31 BERKELEY TECH. L.J. 759, 776 (2016); see also, Tyler Ochoa, A Seismic Ruling Revisited: No Common-Law Public Performance Rights in Pre-1972 Sound Recordings in New York—Flo & Eddie v. Sirius, TECH. & MARKETING L. BLOG (Jan. 10, 2017), http://blog.ericgoldman.org/archives/2017/01/a-seismic-ruling-revisited-no-common-law-public-performance-rights-in-pre-1972-sound-recordings-in-new-york-flo-eddie-v-sirius.htm.164 U.S. Copyright Office, Federal Copyright Protection for Pre-1972 Sound Recordings 136 n. 498 (2011), https://www.copyright.gov/docs/sound/pre-72-report.pdf.165 Id.

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music industry must deal with the brunt of these issues. The main examples of these issues are

the conservative licensing practices that have developed because of the sampling circuit split and

the pre-1972 sound recording split among jurisdictions. If Congress does not help rectify these

splits, money will be wasted and creativity will be lost. If Congress does decide to help, the

solutions described in this article will provide the most uniformity with current copyright law

and will improve upon the conservative licensing practices that currently torment creativity and

discourage profit in the music industry.

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