Jamie Kelly Jun. 17, 2016, 1:32pm


PASADENA, Calif. (Legal Newsline) —A decision earlier this month by the U.S. Court of Appeals for the Ninth Circuit about whether the 1990 Madonna hit “Vogue” infringed on the copyright of another song marks a split with an earlier decision by the Sixth Circuit and leaves musicians and rights holders unsure about what the law really is, according to a copyright lawyer.

The confusion could lead to the U.S. Supreme Court stepping in, if the plaintiff in VMG Salsoul v. Madonna Louise Ciccone et al. decides to appeal, said Ira Sacks, an attorney with Ackerman LLP whose practice focuses on trademark and copyright.

“There now is a clear circuit split, which is one of the things the Supreme Court looks at,” Sacks told Legal Newsline. “I think if the plaintiffs feel that they can't live with this decision as a legal proposition, then sure (they might appeal to the Supreme Court).

"The Sixth Circuit decision and this decision are surely different and are surely incompatible with each other. This is something, if properly crafted, that might interest the Supreme Court, but they take so few cases that it's always hard to tell which cases they're going to take.”

The Ninth Circuit ruled that although “Vogue” might have used a sample from a 1980s song, “Love Break,” the copying was small enough and hard enough to distinguish that it fell under what’s known as the “de minimis” exception in copyright law.

That goes against what the Sixth Circuit ruled in a 2005 case, Bridgeport Music Inc. v. Dimension Films, when it claimed Congress had essentially eliminated that exemption for sound recordings.

“[L]ike the leading copyright treatise and several district courts — we find Bridgeport’s reasoning unpersuasive,” Judge Susan P. Graber wrote in an opinion for the 2-1 majority. “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.”

Sacks, who said he also found the Sixth Circuit’s reasoning faulty in the Bridgewater case, thinks that a decision by the Supreme Court would be the clearest and simplest way to resolve the conflict that now exists.

“The easiest way is to have the Supreme Court decide,” he said. “The reason that I don't think this is conveniently fixed by legislation is that courts read legislation wrong.

"I think the Sixth Circuit read section 114(b) of the copyright act wrong. Section 114(b), at least how I read it, is a limitation on the rights of owners of copyrights and sound recordings. What the Sixth Circuit ended up doing was expanding the rights for owners of copyright of sound recordings by getting rid of what was long settled — the de minimis exception to the exclusive rights.”

Unless the Supreme Court decides to step in, Sacks said, musicians are left in a tricky position in which one court said some sampling might be OK while another said it would always constitute infringement unless the musician had a license from the rights holder.

“It's very difficult, and I'm sure that's what the plaintiffs will say if they go to the Supreme Court,” he said.

“Musicians have no idea what they are or are not allowed to do, because the Sixth Circuit says you're not allowed to take two or more notes and copy them, and the Ninth Circuit says that most of the time, two or three notes or a quarter of a second won't make a difference.”

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