Hastings Communications and Entertainment Law Journal
.+3,$
8
3,!$0 02("+$

Newton v. Diamond: Measuring the Legitimacy of
Unauthorized Compositional Sampling— A Clue
Illuminated and Obscured
Susan J. Latham
.++.52'(1 -# ##(2(.- +5.0*1 2 ':/10$/.1(2.063"' 12(-&1$#3
' 12(-&1".,,$-2+ 5).30- +
02.%2'$ .,,3-(" 2(.-1 5.,,.-1 -2$02 (-,$-2021 -#/.021 5.,,.-1
-#2'$ -2$++$"23 +0./$026 5.,,.-1
9(102("+$(1!0.3&'22.6.3%.0%0$$ -#./$- ""$11!62'$ 5.30- +1 2 12(-&1"'.+ 01'(/$/.1(2.062' 1!$$- ""$/2$#%.0(-"+31(.-(-
 12(-&1.,,3-(" 2(.-1 -#-2$02 (-,$-2 5.30- +!6 - 32'.0(7$#$#(2.0.% 12(-&1"'.+ 01'(/$/.1(2.06.0,.0$(-%.0, 2(.-
/+$ 1$".-2 "2 5 -& -&$+ 3"' 12(-&1$#3
$".,,$-#$#(2 2(.-
31 - 2' , Newton v. Diamond: Measuring the Legitimacy of Unauthorized Compositional Sampling— A Clue Illuminated and
Obscured;AB=?<A @>> ?B 
4 (+ !+$ 2':/10$/.1(2.063"' 12(-&1$#3' 12(-&1".,,$-2+ 5).30- +4.+(11
119
Newton v. Diamond: Measuring the
Legitimacy of Unauthorized
Compositional Sampling—
A Clue Illuminated and Obscured
by
S
USAN
J. L
ATHAM
*
I. Introduction .......................................................................................121
II. A Brief History .................................................................................122
A. What is Digital Sampling, How Did it Start, and Why is it
Done? ............................................................................................122
B.
Grand Upright Music Ltd. v. Warner Bros. Records, Inc.
:
An
End to the Feast ...........................................................................123
III. Statutory Framework: Two Separate Copyrighted Works.........124
IV.
Newton v. Diamond
: The District Court Illuminates a Clue......127
A. The Facts and Claims....................................................................127
B. The Judgment and Analyses ........................................................128
1. Protectability of the Portion Sampled......................................128
2. Doctrine of De Minimis Use .....................................................132
3. Int
ernational Copyright Infringement and Limitation of
Damages ..........................................................................................134
V.
Newton v. Diamond
: The Court of Appeals Obscures a Clue.....134
A. The Judgment................................................................................134
B. Analysis of the Court
⎯
The Doctrine of
De Minimis
Use .......135
VI. Reality Check ..................................................................................137
A. Which is the Path to Reasonable Determination?....................137
B. The Conundrum of
De Minimis
Use Analysis...........................139
VII. Conclusion ......................................................................................146
*
LL.M. in Intellectual Property, Benjamin N. Cardozo School of Law, expected June
2004; J.D., Florida State University College of Law, May 2003. The author expresses her
gratitude to Prof. Justin Hughes of the Benjamin N. Cardozo School of Law, Prof.
Frederick Abbott of Florida State University College of Law, Mr. Alvin Deutsch, Esq. of
McLaughlin & Stern, LLP, and Mr. Robert McNeely, Esq. for the knowledge, guidance,
and insight each generously shared through their teaching and consultations.
120 H
ASTINGS
C
OMM
/E
NT
L.J. [26: 119
Appendix.................................................................................................148
Figure 1:
Choir
: The Musical Score for the Sampled Sequence....148
Diagram #1:
Newton v. Diamond’s
Two Separate Copyrighted
Works.............................................................................................149
Diagram #2:
Newton I
on Analytic Dissection of the Musical
Composition vs. Sound Recording.............................................150
Diagram #3:
Newton I
on the Protectability of a Particular
Segment of a Copyrighted Musical Composition.....................151
Diagram #4:
Newton I’s
De Minimis
Use Analysis ........................153
2003]
N
EWTON V
. D
IAMOND
121
I. Introduction
It seems to be a widely accepted truism that the wealth of
creative works amassed throughout our cultural history serves as a
foundation for each generation of new works.
1
For most of our
copyright history, and despite the occasional overreaching by some
authors of new works, this truism was fairly palatable to most because
it expressed the norms of subtle inspiration and creative
transformation rather than wholesale lifting of original creative
expression. However, with the emergence of the musical genre called
“hip-hop,” a new generation of authors elevated this foundational
concept from a subtle truism to a conspicuous mantra through the
practice of unlicensed digital sampling.
2
And suddenly, many within
the music industry and judicial branch found this modern incarnation
of a previously palatable truism hard to swallow.
3
This article will discuss the ramifications of that sudden distaste
and the current outlook for the future of digital sampling. Part Two
will begin the discussion with a brief history of digital sampling and its
initial legal challenge. Part Three will lay out the statutory framework
underlying musical works as a necessary precursor to an
understanding of the rights involved. Part Four will then delve into a
thorough examination of the district court opinion in
Newton v.
Diamond
4
(
Newton I
), which had the potential to cleanse palates and
help delineate where the buffet line for unlicensed samples may
begin. Thereafter, part Five will review the subsequent Ninth Circuit
opinion in
Newton v. Diamond
5
(
Newton II
). Part Six will compare
the
Newton I
and
II
decisions and evaluate the current state of
de
minimis
use analysis. Finally, part Seven will conclude this article with
a discussion of the implications the
Newton v. Diamond
decisions
have for the future practice of digital sampling.
1
.See
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575-576 (1994); Emerson v.
Davies, 8 F.Cas. 615, 619 (No. 4,436) (CCD Mass. 1845); Carey v. Kearsley, 4 Esp. 168,
170, 170 Eng.Rep. 679, 681 (K.B. 1803).
2
.See
generally
D
ONALD
S. P
ASSMAN
, A
LL
Y
OU
N
EED TO
K
NOW
A
BOUT THE
M
USIC
B
USINESS
(4th ed., Simon & Schuster 2000) (1991); Brett I. Kaplicer, Note,
Rap
Music and De minimis Copying: Applying the Ringgold and Sandoval Approach to Digital
Samples
, 18 C
ARDOZO
A
RTS
& E
NT
. L.J. 227 (2000); Henry Self,
Digital Sampling: A
Cultural Perspective
, 9 UCLA E
NT
. L. R
EV
. 347 (2002).
3
.E.g
., Grand Upright Music Ltd. v. Warner Bros. Records, Inc., 780 F. Supp. 182
(S.D.N.Y. 1991).
4. Newton v. Diamond, 204 F. Supp.2d 1244 (C.D.Cal. 2002).
5. Newton v. Diamond, 349 F.3d 591 (9th Cir. 2003).
122 H
ASTINGS
C
OMM
/E
NT
L.J. [26: 119
II. A Brief History
A. What is Digital Sampling, How Did it Start, and Why is it Done?
Digital sampling is the electronic extraction of a portion of an
existing musical work and its subsequent insertion into a new sound
recording,
6
while its corollary, looping, is the repetitive re-playing of
the sample within the new work.
7
The roots of hip-hop music and the
practice of digital sampling have been attributed to the innovation
occurring among disc jockeys (D.J.s) or “selectors” on the island of
Jamaica between the late 1950s and 1960s.
8
The innovation began as
a bold change from simply announcing selections in between the
music to “talking-over” the records as they played in a chant-like
manner that blended Black American slang with the distinctive West
Indian dialect of Patois.
9
As the practice became popular with live
audiences, D.J.s competed for the respect of fledgling fan bases and
many began commissioning Jamaican-styled instrumentals that
mimicked American “soul” hits.
10
The D.J.s were no longer
inconspicuously serving up music from the background; they had
become part of a blended musical performance and their “talk-overs”
were just as great of a draw as the music itself.
11
In 1974, a transplanted Jamaican D.J. named Clive Campbell,
a.k.a. “Kool Herc,” introduced the “talk-over” technique in New
York and adapted it to the “break dancing” movement rising from
the clubs of the South Bronx.
12
As dancers displayed their dexterity
and flexibility on the dance floor, “Kool Herc” exhibited his dexterity
and flexibility on the turntable by isolating and manipulating the
crucial instrumental breakdowns of various funk records.
13
And, just
6. Oren J. Warshavsky & Jay L. Berger,
Will Case Change Law on Sampling?:
District Court Found That Three-Note Sample Did Not Infringe the Copyright in a
Composition
, N
AT
’
L
L.J., Oct. 14, 2002, at C1.
7. A. Dean Johnson,
Music Copyrights: The Need for an Appropriate Fair Use
Analysis in Digital Sampling Infringement Suits
, 21 F
LA
. St. U. L. R
EV
. 135, 161 n. 174
(1993).
8
.See
Self,
supra
note 2; B
ILL
B
REWSTER
& F
RANK
B
ROUGHTON
, L
AST
N
IGHT A
DJ S
AVED
M
Y
L
IFE
: T
HE
H
ISTORY OF THE
D
ISC
J
OCKEY
(1999); D
AVID
T
OOP
, R
AP
A
TTACK
: A
FRICAN
R
AP TO
G
LOBAL
H
IP
H
OP
(3d ed. 2000); Robert M. Szymanski,
Audio Pastiche: Digital Sampling, Intermediate Copying, Fair Use
, 3 UCLA E
NT
. L. R
EV
.
271, 277 (1996).
9. Self,
supra
note 2, at 348.
10.
Id
.
11.
Id
. at 349.
12.
Id
. at 349-50.
13.
Id
.
2003]
N
EWTON V
. D
IAMOND
123
as had occurred in Jamaica, imitation and innovation among D.J.s
catapulted the genre to widespread popularity.
14
Sampling became digital and ubiquitous in the mid-1980s with
the commercial availability of the musical instrumental digital
interface (MIDI) device.
15
This electronic device allowed hip-hop
producers to easily recreate in the studio what the D.J.s had been
doing by extreme manual dexterity in the clubs.
16
Consequently, the
hip-hop artist was able to gain the use of a distinctive sound with little
expenditure of physical or financial capital and take advantage of any
public appeal the sampled sound had already garnered.
17
B. Grand Upright Music Ltd. v. Warner Bros. Records, Inc.:
18
An End to
the Feast
In the nascent stages of sampling, as artists were feeding off
samples of the distinctive sounds of prior works, the prevalent
attitude was “catch me if you can” and many hip-hop recordings were
being released without any attempt to license either the sound
recording or the musical composition from which the sample was
derived.
19
However, in the same district where the practice began, the
digital gluttony transpiring in hip-hop was brought to an end in 1991
via the terse opinion by District Judge Kevin Thomas Duffy in
Grand
Upright Music Ltd. v. Warner Bros. Records, Inc
.,
20
the first case to
confront unlicensed digital sampling.
In
Grand Upright Music
, the rap artist Biz Markie sampled three
words and a short keyboard riff from the Gilbert O’Sullivan
composition and recording of “Alone Again (Naturally).” However,
the opinion neither addressed the protectability of these elements nor
the substantial similarity of defendant’s use of them.
21
Instead, the
court began and ended its analysis with the first prong of an
infringement claim: ownership of the copyrighted work.
22
Further, by
opening its opinion with the biblical admonishment “thou shalt not
14
. See id.
15. Warshavsky & Berger,
supra
note 6; Kaplicer,
supra
note 2, at 228.
16
.See
Self,
supra
note 2, at 350.
17. Kaplicer,
supra
note 2, at 228.
18. 780 F. Supp. 182 (S.D.N.Y. 1991).
19. P
ASSMAN
,
supra
note 2, at 306-307;
see
Warshavsky & Berger,
supra
note 6.
20. 780 F. Supp. 182 (S.D.N.Y. 1991).
21. Stan Soocher,
Judicial Guidelines Mature for Sampling Copyright Issues
,
in
E
NTERTAINMENT AND
S
PORTS
L
AW IN THE
N
EW
E
CONOMY
(ABA Forum on the
Entertainment and Sports Industries CD-ROM, 2003 Annual Meeting October 10-11,
2003).
22.
Grand Upright Music Ltd.,
780 F. Supp. at 183.
124 H
ASTINGS
C
OMM
/E
NT
L.J. [26: 119
steal”
23
and closing it with a referral of the matter to the U.S.
Attorney for consideration of criminal charges (noting the
defendants’ “callous disregard for the law”),
24
the court struck fear
into the music industry and left behind the impression of a per se bar
to unlicensed digital sampling.
25
Consequently, the pendulum swung
in the direction of extreme caution, or paranoia, and the licensing of
digital samples skyrocketed.
26
Since
Grand Upright Music
, two phenomena have coalesced to
keep the pendulum stuck on the side of extreme caution. First, most
sampling cases continue to be disposed of via settlements between the
parties.
27
Second, despite an evolution of the legal reasoning
employed in digital sampling cases to include the more sophisticated
analyses common among other subjects of civil copyright
infringement actions, the courts have not elucidated guideposts for
lawful digital sampling.
28
Consequently, digital sampling has been
trapped in a discordant culture of social popularity and legal
uncertainty from which artists and record companies have had only
two unsatisfactory means of egress: one, the path of improvidence—
doling out steady streams of preventative payments; the other, the
path of imprudence—daring the copyright holders of sampled works
to “catch me if you can.” What has been missing and sorely needed is
a third path, a path of reasonable determination—via which the risk
of infringement may be reasonably estimated and prudent (rather
than paranoid or careless) decisions regarding the need for a sample
license may be made. In 2002, District Judge Nora M. Manella of the
Central District of California may have finally blazed that trail in
Newton v. Diamond (Newton I)
.
III. Statutory Framework: Two Separate Copyrighted Works
Before delving into
Newton I
, it is important to understand the
statutory framework underlying musical works. For every
embodiment of a musical work in a phonorecord since February 15,
1972, there are two copyrights involved: one protecting the
23
.Id
.
24
.Id
. at 185.
25
.See
Warshavsky,
supra
note 6; P
ASSMAN
,
supra
note 2, at 307.
26
.See
Warshavsky,
supra
note 6; P
ASSMAN
,
supra
note 2, at 307.
27. Soocher,
supra
note 21, at 18.
28.
Id
. at 18-19. The judicial tools employed by courts in the analysis of digital
sampling cases may have matured. However, a premise of this article is that despite the
use of these tools of legal reasoning, the courts have not yet applied those tools in a
manner that clearly delineates boundaries for lawful digital sampling.
2003]
N
EWTON V
. D
IAMOND
125
composition, and the other protecting the sound recording.
29
Notably,
it is generally accepted that nothing in the law requires the copyright
owner of either to allow others to use a digital sample of his or her
work.
30
Section 114(b) of the Copyright Act precludes such a
requirement for sound recordings and Section 115(a)(2) excludes it
from the requirement for musical compositions.
31
First, by clarifying the rights of a sound recording copyright
owner in regard to derivative works, Section 114(b) makes it clear
that the digital sampling of a copyrighted sound recording must
typically be licensed to avoid an infringement. Section 114(b) states
that:
The exclusive right of the owner of copyright in a sound recording
under [the Section 106 right to prepare derivative works] is limited
to the right to prepare a derivative work in which the
actual sounds
fixed in the sound recording
are rearranged, remixed, or otherwise
altered
in sequence or quality.
32
The import of this language is that it does not matter how much a
digital sampler alters the actual sounds or whether the ordinary lay
observer can or cannot recognize the song or the artist’s performance
of it.
33
Since the exclusive right encompasses rearranging, remixing,
or otherwise altering the actual sounds, the statute by its own terms
precludes the use of a substantial similarity test.
34
Thus, the defenses
available to a defendant are significantly limited.
35
Second, the compulsory mechanical license provisions of Section
115 do not provide for the compulsory licensing of digital samples.
Specifically, Section 115(a)(2) states that:
A compulsory license includes the privilege of making a musical
arrangement
of the work
to the extent necessary to conform it to
the style or manner of interpretation of the performance involved,
but
the arrangement
shall not change
the basic melody or
fundamental character of the work
,
and
shall not be subject to
29. 17 U.S.C. § 102(2), (7) (1996).
30
.See
P
ASSMAN
,
supra
note 2, at 307.
31
.
17 U.S.C. §§ 114(b), 115(a)(2) (2003).
32.
Id
. at § 114(b) (emphasis added).
33. Justin Hughes, Copyright Lecture Notes (October 16, 2003) (on file with the
author).
34. Forensic proof will likely be adequate for “unrecognizable” uses.
See
id.
35. There may be the possibility of a
de minimis
use defense, depending on how
strictly the court interprets the “actual sounds” language in the statute. However, a fair
use defense also seems to be limited by § 114(b) to use within noncommercially distributed
educational television and radio programming.
See id.
126 H
ASTINGS
C
OMM
/E
NT
L.J. [26: 119
protection as a derivative work
under this title, except with the
express consent of the copyright owner.
36
This language dictates that those seeking to benefit from the
compulsory licensing of a copyrighted composition for the
manufacture and distribution of phonorecords must abide by three
parameters. They must: (1) use the entire work; (2) not alter the
basic melody or fundamental character of the work in the new
performance;
37
and (3) not seek copyright protection for the
derivative work without the express permission of the composition’s
copyright owner. By nature, however, digital sampling will generally
run afoul of all three parameters by: (a) extracting only select
elements of work rather than using the work as a whole; (b) altering
the fundamental character of the work by rearranging and looping
those select elements (often combining them with still more samples
from other works) into an entirely new work possessing an entirely
different meaning or significance; and finally, (c) making derivative
use of the extracted elements within a new composition and sound
recording for which copyright protection is sought without express
permission from the copyright holder.
Notably, in contrast to the sound recording copyright owner’s
right to prepare derivative works, there has been no tailoring of the
derivative works right available to the copyright owner of a musical
composition to expressly preclude second-comers from rearranging,
remixing, or otherwise altering the composition. Sound recordings are
different animals. While their copyright owners generally have fewer
exclusive rights than copyright owners of other subject matter—such
as musical compositions—when it comes to digital sampling, the
sound recording copyright operates more resolutely. Consequently,
this distinction between sound recordings and musical compositions
places the centrifugal force of the legal uncertainty surrounding
digital sampling squarely within the copyright in the musical
composition.
36. 17 U.S.C. § 115(a)(2) (2003) (emphasis added).
37. For example, the composer of a religious spiritual may argue that recording a
techno dance version of his or her song violates Section 115(a)(2) by altering the song’s
fundamental character. Justin Hughes, Copyright Lecture Notes (Oct. 15, 2003).
2003]
N
EWTON V
. D
IAMOND
127
IV. Newton v. Diamond: The District Court Illuminates a Clue
A. The Facts and Claims
The copyrighted work at the center of the
Newton v. Diamond
digital sampling controversy is a composition for flute and voice
entitled “Choir.” The work was composed and registered with the
United States Copyright Office in 1978 by James W. Newton, a
composer and accomplished flutist. However, in 1981, Mr. Newton
recorded his performance of “Choir” and licensed all his rights in the
sound recording to ECM Records for the sum of $5,000. Thus, ECM
Records became the copyright owner of the sound recording of
“Choir.”
In February of 1992, while preparing their album “Check Your
Head,” a hip-hop group called the Beastie Boys paid ECM Records a
flat, one-time fee of $1,000 in exchange for an irrevocable sample
license. The license granted the Beastie Boys the nonexclusive right
to use portions of the “Choir” sound recording in all versions of their
song “Pass the Mic.” Thus, pursuant to this license, the Beastie Boys
digitally sampled and looped the opening six seconds of the “Choir”
sound recording, so that it actually appears over forty times
throughout various renditions of “Pass the Mic.” The Beastie Boys,
however, did not obtain a license from Mr. Newton.
The sampled six-seconds of the approximately four-and-a-half-
minute “Choir” sound recording consists of a three-note sequence
whereby Mr. Newton fingers a C-note while simultaneously singing
into the flute a C, vocally ascending to a D-flat, then descending back
to a C. This particular sequence appears only once in the musical
composition. Notably, the only elaboration of the musical score for
this sequence are the notations “
senza misura
” (without measure)
and “
largo
” (slowly), along with the footnote: “This piece requires
singing into the flute [and] fingering simultaneously.”
38
Mr. Newton alleged that the Beastie Boys were legally obligated
to obtain a separate license from him for their derivative use of his
musical composition. Thus, because of their failure to do so, Mr.
Newton asserted four separate claims against the Beastie Boys: (1)
copyright infringement; (2) international copyright infringement; (3)
reverse passing off; and (4) misappropriation of identity. Although
the third and fourth claims were dismissed, the claims for copyright
38. A copy of the musical score for the sampled sequence has been included in the
Appendix,
infra
.
128 H
ASTINGS
C
OMM
/E
NT
L.J. [26: 119
infringement survived and became the focus of this opinion on the
parties’ cross-motions for summary judgment.
In defense of the action, the Beastie Boys argued that the sample
was not protectable as a matter of law and that, even if it was
protectable, their use of it was merely
de minimis
and, thus, not
actionable. Further, they argued that since the domestic copyright
infringement claim could not be proved, the international claim must
also fail. Finally, they asserted that since there is a three-year statute
of limitations per 17 U.S.C. § 507(b), any damages would be limited
to only those accruing after April 9, 1998—the date three years prior
to the filing of Mr. Newton’s claim.
B. The Judgment and Analyses
So, were the Beastie Boys obligated to obtain a separate sample
license from the copyright owner of the musical composition
“Choir”? The court did not believe so and granted the Beastie Boys’
motion for summary judgment while denying Mr. Newton’s.
39
Since Mr. Newton was not the owner of the sound recording and
the Beastie Boys had properly licensed the sound recording, the
court’s decision depended upon the resolution of two key issues
underlying Mr. Newton’s general allegation. First, whether the three-
note sequence as embodied in the musical composition, absent the
distinctive sound elements created by Mr. Newton’s performance
techniques, is protectable under copyright law.
40
Second, if the
composed sequence is protectable by copyright, whether the Beastie
Boys’ unauthorized use of it infringed Mr. Newton’s exclusive rights
in the composition.
41
1. Protectability of the Portion Sampled
42
a. Analytic Dissection
As a fundamental matter, the district court held that the portion
of the musical composition sampled by the Beastie Boys is not
protectable as a matter of law.
43
To arrive at this finding, the court
began with an analytic dissection of “Choir” to filter out the elements
39. Newton v. Diamond, 204 F. Supp. 2d 1244, 1245, 1260 (C.D.Cal. 2002).
40
.Id
. at 1249.
41
.Id
. at 1256.
42. To aid the reader in more clearly following the district court’s analysis of the
sample’s eligibility for protection, a flow chart of the court’s analysis is presented in
Diagrams #2 and #3 in the Appendix,
infra
.
43.
Newton
, 204 F. Supp. 2d at 1253, 1256.
2003]
N
EWTON V
. D
IAMOND
129
that are unique to the sound recording and determine the scope of
protection available to the musical composition.
44
The court noted
that a musical composition consists of rhythm, harmony, and melody
expressed in written form.
45
Thus, to the extent those compositional
elements are elaborated within the score, the sounds that would
necessarily result from anyone’s performance of them are protected.
46
In other words, the generic performance of the written composition is
protected. However, to the extent a performer further elaborates
upon the musical composition during his recorded performance, those
unique elements of the sound recording are beyond the scope of
protection for the composition and must be filtered out of the court’s
analysis.
47
Here, the sampled sequence consists of a musical technique
called “vocalization.”
48
However, unfortunately for Mr. Newton, his
experts focused so intently upon convincing the court of the
uniqueness of Mr. Newton’s mastery of this technique that they failed
to appreciate the distinction between the composition and the sound
recording.
49
The plaintiff’s experts testified that Mr. Newton’s unique
approach to vocalization—dubbed the “Newton Technique”—uses a
combination of refined breath control and overblowing to produce
multiple pitches or “multiphonics.” However, none of the
characteristics that the plaintiff’s experts explained as comprising the
Newton Technique were written into the musical score.
Consequently, those specific techniques, unique as they may be, are
protected only by the copyright in the sound recording—not the
copyright in the musical composition.
50
b. Originality
Despite the plaintiff’s argument to the contrary, the court
affirmed that the presumption that attaches to a work upon federal
registration is one of validity of the copyright, not of the originality of
all its individual elements.
51
Instead, the originality of a work’s
individual elements is a matter of law to be decided by the judge.
52
In
44
.Id
. at 1249-52.
45
.Id
. at 1249.
46
.Id
.
47
. See id
. at 1251.
48
.Newton
, 204 F. Supp. 2d at 1250.
49
.Id
. at 1250-52.
50
.Id
. at 1251.
51
.Id
. at 1252.
52
.Id
. at 1253.
130 H
ASTINGS
C
OMM
/E
NT
L.J. [26: 119
making that determination, the court stated it must be cognizant of
the limited amount of raw material (notes and chords) available to
composers and the consequent recurrence of common themes among
various compositions, especially in popular music.
53
Keeping this in
mind, the district court’s analysis explained the divide between
common and original compositional elements.
The court revealed two basic routes to a finding of commonality,
or an absence of non-trivial creative contribution. First, the court
highlighted a line of cases in which the copied portion of the
composition consisted of three notes or less.
54
Along this route, the
court found the facts of
Jean v. Bug Music, Inc
.
55
“strikingly similar.”
56
There, the court held that a three-note sequence (C, B-flat, C) with an
accompanying lyric (“clap your hands”) was not eligible for
protection because it appeared commonly in music, rendering it
unoriginal.
57
Additionally, the lyric standing alone was too common a
phrase to render the otherwise unoriginal three-note sequence
original.
58
Looking to
McDonald v. Multimedia Entertainment, Inc
.,
59
the court observed that a claim of originality in a three-note sequence
taken from a television jingle was found “absurd.”
60
The
McDonald
court held that the sequence was too common in traditional western
music to be original; thus, it was unprotectable.
61
The second route to commonality that the court explained was
paved with generic compositional techniques. The court pointed to
Intersong-USA v. CBS, Inc
.,
62
in which the song’s descending step
motive, like the one in “Twinkle, Twinkle Little Star,” was deemed
too commonly used as a compositional device to be original; thus, it
was unprotectable.
63
Still, the district court noted that there have
been some findings of protectability for short sequences of notes.
64
The court explained that findings of originality for short
compositional sequences also generally occur along two routes:
samples involving greater than three notes and samples involving
53
.Id
.
54
.Newton
, 204 F. Supp. 2d at 1253
.
55. No. 00 Civ 4022 (DC), 2002 WL 287786 (S.D.N.Y. Feb. 27, 2002).
56.
Newton
, 204 F. Supp. 2d at 1253.
57.
Jean
, 2002 WL 287786 at 6-7.
58
.Id
.
59. 20 U.S.P.Q.2d 1372, 1991 WL 311921 (S.D.N.Y. 1991).
60.
Newton
, 204 F. Supp. 2d at 1253.
61. 1991 WL 311921 at 4.
62. 757 F. Supp. 274 (S.D.N.Y. 1991).
63
.Id
. at 282.
64
.Newton
, 204 F. Supp. 2d at 1254.
2003]
N
EWTON V
. D
IAMOND
131
unusual words and/or sounds.
65
Following the first route, the court
pointed to the finding of protectability in
Baxter v. MCA, Inc
..
66
There, the defendant had used the opening six notes of the plaintiff’s
composition to create the theme to the movie “E.T.” Yet, the court
observed that where sequences of less than six notes have been found
to be protectable, qualitative factors, such as: accompanying lyrics;
the heart of the composition; repetitive sequences or lyrics; and/or
common characteristics to both the composition and sound recording
have also been present.
67
Along the second route to originality, the court refuted the
plaintiff’s reliance on
Tin Pan Apple, Inc. v. Miller Brewing Co
.
68
as
supporting protectability for a few words or sounds.
69
Noting that the
defendant in
Tin Pan Apple
copied the words “hugga-hugga” and
“brrr,” the court did not find blanket support but, instead, a
distinguishing factor. The words used in
Tin Pan Apple
were unusual
and, by nature, unusual words and sounds are more distinctive than a
few generic notes.
70
After running the three-note “Choir” sequence through this dual
analysis looking for characteristics of either commonality or
originality, the court held that sample taken by the Beastie Boys is
unprotectable.
71
Here, the evidence showed that the three-note
sequence—C, D-flat, C—was a simple and common building block
extensively employed in twentieth century music by major composers,
especially in the decades preceding Mr. Newton’s use. Moreover, the
generic vocalization device had been recognized in academic
literature before the plaintiff adopted it for his composition, and it
had also been used in several compositions pre-dating the plaintiff’s
song. Consequently, as a matter of law, the court found neither the
three-note sequence nor the vocalization technique, or their
combination, sufficiently original to warrant protection.
72
65.
Id
.
66. 812 F.2d 421 (9th Cir. 1987).
67.
Newton
, 204 F. Supp. 2d at 1254.
68. 30 U.S.P.Q.2d 1791, 1994 WL 62360 (S.D.N.Y. 1994).
69
.See
Newton
, 204 F.Supp.2d at 1254.
70
.Id
.
71
.Id
. at 1254-55.
72
.Id
. at 1255.
132 H
ASTINGS
C
OMM
/E
NT
L.J. [26: 119
2. Doctrine of
De Minimis
Use
73
Although the district court could have been content with
extinguishing the action based on its preliminary determination that
the sampled portion of plaintiff’s composition was not protectable as
a matter of law, it provided an alternate ground for granting the
defendant’s motion for summary judgment. The court determined
that even if the three-note segment of Mr. Newton’s composition had
been found to be protectable, the doctrine of
de minimis
use would
apply to make the Beastie Boys’ sampling of it non-actionable as a
matter of law; thus, they would not be liable for copyright
infringement.
74
The court’s analysis explained that
de minimis
use operates to
prevent a finding of substantial similarity, a requirement for
actionable copying.
75
To explain the standard for
de minimis
use, the
court made reference to three cases:
Sandoval v. New Line Cinema
Corp
.;
76
Jean v. Bug Music, Inc
.;
77
and
Fisher v. Dees
.
78
First, the court
referred to
Sandoval
for the rule that to establish
de minimis
use, “the
alleged infringer must demonstrate that the copying of the protected
material is so trivial ‘as to fall below the quantitative threshold of
substantial similarity.’”
79
Referring to
Jean
, the court noted that
substantial similarity will not be found if only a small, common phrase
is copied, unless the copied portion is especially unique or
qualitatively important.
80
Finally, citing
Fisher
, the court stated that
copying is
de minimis
“if the average audience would not recognize
the misappropriation.”
81
Identifying the practice of digital sampling as involving
fragmented literal similarity,
82
the court stated that the general
approach among courts in analyzing
de minimis
use is to consider
both quantitative and qualitative factors.
83
Consequently, even if the
73. To more clearly follow the district court’s analysis throughout this section, it may
be helpful to refer to Diagram #4 in the Appendix,
infra
.
74.
Newton
, 204 F. Supp. 2d at 1256, 1260.
75
.Id
. at 1256-57.
76. 147 F.3d 215 (2d Cir. 1998).
77
.Jean
, 2002 WL 287786.
78. 794 F.2d 432 (9th Cir. 1986).
79. Newton, 204 F.Supp.2d at 1256.
80
.Id
. at 1256-57.
81
.Id
. at 1257.
82
.Id
. (citing N
IMMER ON
C
OPYRIGHT
§ 13.03 [A][2]).
83
.Id
. (citing N
IMMER ON
C
OPYRIGHT
§ 13.03[A][2]). Notably, the Court does not
cite to any particular cases for this proposition. Further, it is also important to note that
2003]
N
EWTON V
. D
IAMOND
133
amount copied is quantitatively trivial, the threshold of substantial
similarity may still be crossed if the portion used by the defendant is
especially unique or important.
84
The court explained that
quantitative and qualitative analyses focus solely upon the segment’s
significance to the plaintiff’s work, not the defendant’s use of it.
85
Therefore, the court stated that the quantitative or qualitative
importance the portion sampled possesses in the defendant’s new
song is irrelevant.
86
Here, the portion sampled by the Beastie Boys was only 2-
percent of “Choir.” Moreover, the three-note sequence appears only
once within “Choir.” Upon finding this to be quantitatively trivial in
relation to “Choir” as a whole, the court announced that the
plaintiff’s only chance for the sample to cross the threshold of
substantial similarity was via qualitative factors.
87
Although the court recognized that some segments of music may
be qualitatively important even standing alone, it reminded the
parties that—similar to the protectability analysis—what is at issue in
the
de minimis
use analysis is not whether the average listener might
recognize the segment as taken from the sound recording. Instead, it
is whether the average listener might recognize—from a performance
of the composition as written—the plaintiff’s musical composition as
the underlying source.
88
Here, even though the defendants conceded
they took “the best bit of ‘Choir,’” the court found that testimony
referred to the distinctiveness of the performance, not the
composition.
89
Further, the court again noted that in regards to
de
minimis
use, just as in the analysis of originality, the short
compositional sequences that have survived summary judgment have
involved: more than three notes; accompanying lyrics; the heart of
musical compositions; repetitive sequences; and/or sequences that
appear in both the composition and sound recording.
90
Finding none
of these factors present, the court stated that neither the notes nor the
generic vocalization technique—or their combination—imparted any
distinctiveness to the six-second portion sampled by the Beastie
this section of the Nimmer treatise is a discussion of substantial similarity and not
specifically
de minimis
use, a hurdle within its quantitative component.
84
.
Newton, 204 F. Supp. 2d at 1257.
85
.Id
.
86
.Id
.
87
.Id
. at 1258.
88
.Id
.
89
. See Newton
, 204 F. Supp. 2d at 1258-59.
90
.Id
. at 1259.
134 H
ASTINGS
C
OMM
/E
NT
L.J. [26: 119
Boys.
91
Thus, the court held that the plaintiff failed to identify any
factors separate from those attributable to his unique performance
that rendered the three-note sequence qualitatively important to
“Choir.”
92
Consequently, as a matter of law, the digital sampling of
“Choir” by the Beastie Boys was non-infringing due to its
quantitatively and qualitatively trivial nature.
3. International Copyright Infringement and Limitation of Damages
As a result of its determination on the claim under U.S. law, the
court made short shrift of the international copyright infringement
claim. That claim failed as a matter of law because it depended upon
successfully proving that the defendants were liable for at least one
completed act of infringement within the United States.
93
Additionally, the court held that even if the plaintiff’s copyright
claims had not failed, Mr. Newton would have only been entitled to
damages accruing after April 9, 1998.
94
The court’s reasoning is three-
fold. First, beginning with the statute, 17 U.S.C. § 507(b) mandates
that the civil action commence within three years after the claim
accrues.
95
Second, a claim accrues when the act of infringement
actually occurs, not when consequent damages are suffered.
96
Finally,
the plaintiff’s right to damages is limited to those suffered during the
statutory period of limitations regardless of when they may have been
incurred.
97
Thus, since Mr. Newton did not file suit until April 9,
2001, any damages incurred between 1992 and April 9, 1998, were not
eligible for consideration.
98
V. Newton v. Diamond: The Court of Appeals Obscures a Clue
A. The Judgment
On April 7, 2003, Mr. Newton’s appeal of the district court’s
decision was argued and submitted to the Ninth Circuit Court of
Appeals. Seven months later, on November 4, 2003, Chief Judge
Mary M. Schroeder issued the majority opinion affirming the grant of
91
.Id
.
92
.Id
.
93
.Id
.
94
.Newton
, 240 F. Supp. 2d at 1260.
95
.Id
.
96
.Id
.
97
.Id
.
98
.Id
.
2003]
N
EWTON V
. D
IAMOND
135
summary judgment to the Beastie Boys.
99
However, the opinion was
not merely an echo of the decision below.
The court began its opinion by acknowledging the difficulty and
importance of the sampling issue.
100
Yet, despite its recognition of the
district court’s “scholarly opinion,” it announced that—since it was
not required to address each decisional ground relied upon by the
lower court—it was basing its decision solely on the ground of
de
minimis
use.
101
Consequently, the Ninth Circuit ignored the district
court’s primary ground of decision—that as a matter of law, the
sampled sequence of “Choir” lacked sufficient originality to merit
copyright protection. Rather than undertake a review of that
threshold issue, the Ninth Circuit made an implied reversal of the
district court’s protectability holding by
assuming
the sampled
sequence of the composition
is
sufficiently original to merit copyright
protection.
102
B. Analysis of the Court
⎯
The Doctrine of De Minimis Use
Just as the district court had done, the Ninth Circuit began its
de
minimis
use analysis by showing a relationship between
de minimis
use and substantial similarity centered upon the determination of
actionable copying.
103
The court explained that although substantial
similarity between the plaintiff’s and defendants’ works must exist for
unauthorized copying to be actionable, the legal maxim
de minimis
non curat lex
(“the law does not concern itself with trifles”)
recognizes the coordinate principle that trivial copying will not
constitute actionable infringement.
104
However, differing from the district court, the Ninth Circuit
relied solely upon a footnote in its 1986 opinion in
Fisher v. Dees
to
establish the standard for
de minimis
use.
105
There, the court stated
99.
Newton v. Diamond
, 349 F.3d 591, 592 (9th Cir. 2003).
100
.Id
. at 592.
101
.Id
. at 592, 594.
102
. See id
. at 594.
103
. See id
.
104
. See id
.
105
.Id
. Although the standard built by the district court also has flaws, the district
court relied on a broader array of cases,
Sandoval
being primary among them with
Fisher
being referred to last—arguably as an elaboration. Notably, while the district court began
on track with the Second Circuit’s
Ringgold
standard—as expressed via
Sandoval
—
ultimately, it suffers from the same flaws as the analysis of
de minimis
use in
Newton II
.
Therefore, since
de minimis
use was merely a secondary ground of decision in
Newton I
,
the flaws within its
de minimis
use analysis are reserved for discussion via the Ninth
Circuit’s sole ground for decision.
136 H
ASTINGS
C
OMM
/E
NT
L.J. [26: 119
that a taking is considered
de minimis
only if it is so meager and
fragmentary that the average audience would not recognize the
appropriation.
106
Acknowledging that
de minimis
use was rejected as
a
defense
107
in
Fisher
, the court explained that, in
Fisher
, it found that
the defendant’s successful fair use defense—grounded in parody—
precluded finding the use insubstantial or unrecognizable since a
parodist must “‘appropriate a
substantial enough
portion . . .
to evoke
recognition
.’”
108
Building from the
Fisher
standard, the
Newton II
court
enunciated a further link between the tests for substantial similarity
and
de minimis
use by pointing to their common usage of the average
audience, or ordinary observer, to determine infringement.
109
The
court then concluded that, “to say that a use is
de minimis
because no
audience would recognize the appropriation is thus to say that the
works are not substantially similar.”
110
Consequently, after performing
a brief filtering exercise, the Court arrived at what it deemed to be
“the nub” of the
de minimis
use inquiry: “whether the Beastie Boys’
unauthorized use of the composition . . . was
substantial enough
to
sustain an infringement action
.”
111
Thereafter, similar to the district court, the Ninth Circuit
identified digital sampling as a problem of fragmented literal
similarity and stated that its substantiality is determined by
considering the qualitative and quantitative importance of the copied
segment in relation to the plaintiff’s work as a whole.
112
Here, the
evidence showed that, quantitatively, the sample comprised only 2-
percent of Mr. Newton’s composition and appeared only once within
“Choir.” From the qualitative perspective, the court held that the
sample was no more significant than any other section of the
composition because, with the exception of two notes, the entire
composition was made up of notes separated merely by whole and
106.
Fisher
, 794 F.2d at 434 n.2.
107. Whether the doctrine of
de minimis
use constitutes a defense or an element of the
plaintiff’s prima facie case is an open question, which will be discussed in Part VI. B,
infra
.
108.
Newton
, 349 F.3d at 595 (citing
Fisher
, 794 F.2d at 434 n.2) (emphasis added).
109
.Id
. at 594.
110
.Id
.
111
.Id
. at 596 (emphasis added).
112
.Id
. (citing 4 N
IMMER ON
C
OPYRIGHT
§ 13.03 [A][2], at 13-47, 48, n. 97). Once
again, as mentioned in note 83, it is important to realize that this section of the Nimmer
treatise is a discussion of substantial similarity and not specifically
de minimis
use, a hurdle
within its quantitative component.
2003]
N
EWTON V
. D
IAMOND
137
half steps.
113
Moreover, the plaintiff’s expert had described the
sample as a simple neighboring tone figure.
Notably, agreeing with the district court that the particulars of a
defendant’s use are irrelevant, the Ninth Circuit never analyzed the
Beastie Boys’ use of the sample.
114
The court declined to consider the
defendants’ use, stating that a rule requiring it to do so would allow
unscrupulous defendants to copy large or qualitatively significant
portions of a work and escape liability by burying them under non-
infringing material—“
even where an average audience might recognize
the appropriation
.”
115
In this regard, the court seemed to forget (or
discard) the premise with which it began its analysis, its own
Fisher
standard.
Similar to
Newton I
, the
Newton II
court placed the burden of
clearing the hurdle of
de minimis
use upon the plaintiff. Thereafter,
finding the evidence insufficient, the court similarly held that the
plaintiff failed to demonstrate the sample’s quantitative or qualitative
significance.
116
Consequently, the court deemed that Mr. Newton was
in a weak position to argue the presence of substantial similarity
between the works, or that an average audience would recognize the
appropriation.
117
Ultimately, the court’s
de minimis
use analysis led it
to conclude that the Beastie Boys’ use of the sample was insufficient
to sustain a claim for copyright infringement of the “Choir”
composition.
118
VI. Reality Check
A. Which is the Path to Reasonable Determination?
Just as the shortest distance between two points is a straight line,
the surest path to reasonable predictability in the law is a
straightforward, non-circuitous legal analysis. As mentioned earlier,
what has been sorely needed is a path of reasonable determination by
which to escape the persistent legal uncertainty surrounding the
practice of digital sampling. So, did the
Newton
courts finally blaze
that trail—the district court in
Newton I
with its protectability
113
.Id
. at 597.
114
.Id
.
115
.Id
.
116
.Id
. at 597-98.
117
.Id
. at 598.
118
.Id
. (emphasis added).
138 H
ASTINGS
C
OMM
/E
NT
L.J. [26: 119
(originality) analysis and/or the court of appeals in
Newton II
with its
de minimis
use analysis?
Although the factual distinctions it made may initially appear to
be an
ad hoc
consolidation of previous judicial pronouncements, the
Newton I
court seems to have blazed the most straightforward trail of
legal analysis. Thus, this author believes, the
Newton I
approach
could have provided the music industry a path of reasonable
determination. At its most basic level, the
Newton
I
approach can be
described as entailing two steps: filtration
119
and an originality
determination. Notably, no matter what approach one pursues,
filtration must be performed to separate the unique performance
elements of the sound recording from an analysis of the composition.
Thus, the core of the
Newton
I
approach is that, once distilled, the
sample from the composition can be run through a protectability
analysis
120
via a series of relatively straightforward questions, such as:
(1) is the sample comprised of three notes or less and/or a generic
compositional technique; (2) does the sample contain either six notes
or more, or unusual words or sounds; and (3) if the sample is
comprised of less than six notes or generic compositional techniques,
does it also contain (a) accompanying lyrics, (b) the heart of the
composition, (c) a sequence or lyric that is repetitive within the
composition, and/or (d) a sequence that is identically expressed in
both the sound recording and the composition? While not hitching
posts, these questions could be viewed as guideposts to lawful
sampling, which had not been previously elucidated. Consequently, as
a threshold determination, the
Newton I
approach has the potential
advantage of extinguishing claims before the need to undertake more
elaborate analyses arises.
On the other hand, those following
Newton II
may get lost along
its circuitous route. To illustrate its confusing twists and turns, picture
the following: as you begin to travel down the
Newton II
path, you see
a road sign marking the path as “
de minimis
: use too meager and
fragmentary to evoke recognition.” A short distance away, you come
upon another sign marking the path as “substantial similarity: use not
substantial enough to sustain an infringement action.” Thus, you
begin to wonder what test you are to apply and what are its
components. Just then, you arrive at a three-pronged fork in the road.
The first path is marked “significance to the plaintiff’s work.” The
119. For a graphic depiction of the
Newton I
court’s performance of this exercise, see
Diagram # 2 in the Appendix,
infra
.
120. For a graphic depiction of the protectability (originality) analysis, see
Diagram # 3 in the Appendix,
infra
.
2003]
N
EWTON V
. D
IAMOND
139
second path is marked “defendant’s use of the work,” and the third
path is marked “comparison between the plaintiff’s and defendant’s
work.” However, upon glancing down each path, you notice that the
second and third paths are immediate dead-ends. Thus, the only path
for you to walk is the first. Setting out, you turn left to examine the
quantity of the use. Along here, the
Newton II
court has planted a
marker stating, “Please note: under
Fisher
, a successful fair use
defense will prevent you from finding insubstantial or unrecognizable
use.” Next, you turn to the right to examine the qualitative
significance of the copied segment. Once again you are met with dual
markers; side-by-side they instruct, “Watch out for recognizability”
and “Watch out for a sustainable infringement action.” Yet, upon
reaching the end of the path, a final sign blocking egress from the
summary judgment proceeding states: “Proceed to full trial of this
matter
only
upon finding a sustainable infringement action.”
So, was there any consideration of the enunciated
Fisher
“recognizability” factor or was it impliedly subsumed within the
substantial similarity analysis? Moreover, was this a path for
analyzing
de minimis
use or for performing a full substantial similarity
test? It seems that rather than blaze a trail of reasonable
determination, the
Newton II
court has created a conundrum of
de
minimis
use analysis.
B. The Conundrum of De Minimis Use Analysis
Newton II
highlights the problem that a clear standard for
de
minimis
use has not yet been settled upon in the courts.
121
While
there may have already been a few lingering questions surrounding
the concept,
Newton II
surely added to the list. Currently, it seems
the riddle must be solved by answering the following questions: (1)
what is the
de minimis
standard; (2) which party has the burden of
proof; (3) where does the fair use defense fit into the analysis; (4)
what is the proper consideration to be given to the qualitative nature
of the copied portion; (5) does the
de minimis
use analysis merely
provide the means by which to bypass the factfinder on the issue of
substantial similarity; and finally, (6) which works should be
considered: solely the plaintiff’s, solely the defendant’s, or both?
121. Recently, however, the Sixth Circuit issued an opinion in
Gordon v. Nextel
Comms
., 345 F.3d 922 (6th Cir. 2003), which seems to closely follow the
Ringgold
analysis
of
de minimis
use. The
Gordon
court’s analysis focused on the quantitative measure
including consideration of the observability of the copied work within the defendant’s new
work. Notably, the
Gordon
court makes absolutely no mention of a qualitative factor
within its
de minimis
use analysis.
140 H
ASTINGS
C
OMM
/E
NT
L.J. [26: 119
First, what is the
de minimis
use standard? In
Fisher
, the Ninth
Circuit defined it as use “so meager and fragmentary that the average
audience would not recognize the appropriation.”
122
However,
subsequent to
Fisher
, the Second Circuit’s 1997 decision in
Ringgold
v. Black Entertainment Television, Inc
.
123
became the polestar of
de
minimis
use analysis.
Ringgold
formulated
de minimis
use as a
threshold determination on the way to a substantial similarity
analysis.
124
The
Ringgold
court explained that while substantial
similarity has both quantitative and qualitative components, the
de
minimis
concept is relevant to the quantitative component.
125
In this
regard the court stated, “since ‘substantial similarity,’ properly
understood, includes a quantitative component, it becomes apparent
why the concept of
de minimis
is relevant.”
126
Additionally,
Ringgold
established an observability test within
the
de minimis
use analysis.
127
Under the facts presented in
Ringgold
,
that observability test was applied to visual works. There,
observability was measured via characteristics of the defendant’s
work, such as: the length of time the copied portion is observable, the
focus, lighting, camera angles, and prominence.
128
Yet, these
characteristics seem to measure not only observability but also
recognizability. Thus, the observability test within
Ringgold
appears
to echo
Fisher
’s recognizability requirement.
129
Indeed, the
Ringgold
court found:
[I]n some circumstances a visual work . . . might ultimately be
filmed at such a distance and so out of focus that a typical program
viewer would not discern [the] effect that the work of art
contributes to the [new work]. But that is not this case. The
painting component is
recognizable
as a painting . . . .
130
Consequently, after
Fisher
and
Ringgold
, the
de minimis
use standard
could reasonably be understood as being comprised of two
122. 794 F.2d at 434 n.2.
123. 126 F.3d 70 (2d Cir. 1997).
124
. See id
. at 74.
125
.Id
.
126
.Id
. at 75.
127
.Id
.
128
.Id
.
129. Although, this would not be a direct echo since
Ringgold
never mentions or cites
to
Fisher
.
130
.
126 F.3d at 77.
2003]
N
EWTON V
. D
IAMOND
141
considerations: (1) quantitatively trivial portions of the plaintiff’s
work, or (2) unrecognizable use within the defendant’s work.
Second, which party has the burden of proof? Although the
defendants in both
Fisher
and
Ringgold
made the express assertion
that their use of the copyrighted work was
de minimis
, neither court
explicitly addressed the burden of proof on the matter. However, in
1998 the Second Circuit concisely reiterated the
Ringgold
standard in
Sandoval v. New Line Cinema Corp
.
131
and, while doing so, placed the
burden of proof upon the defendant.
132
The
Sandoval
court declared,
“the alleged infringer must demonstrate that the copying of the
protected material is so trivial ‘as to fall below the quantitative
threshold of substantial similarity’.”
133
Yet, in
Newton I
and
II
the
burden of proof was clearly placed upon the plaintiff.
134
Although the Nimmer treatise refers to
de minimis
use as a
defense in a few instances,
135
it does not discuss the burden of proof
on this issue. Yet, its nature as a threshold determination to be made
before the factfinder is bothered to undertake a full substantial
similarity analysis
136
would intimate that it should be characterized as
part of the plaintiff’s prima facie case, thus, burdening the plaintiff.
Further, even if
de minimis
use is properly characterized as an
affirmative defense, the question still might arise as to whether
de
minimis
use can be considered an equitable rule of reason, allowing
the court discretion to shift the burden back to the plaintiff, as
occurred under the analysis of the fourth fair use factor in
Sony Corp.
of America v. Universal City Studios, Inc
.
137
Third, where (if anywhere) does the fair use defense fit into the
de minimis
use analysis?
Ringgold
established that the
de minimis
use
analysis is inappropriate to the issue of fair use;
138
thus, implicitly, fair
use is also inappropriate to the
de minimis
use analysis. Indeed, the
Ringgold
court advised that where the allegedly infringing work
makes a quantitatively trivial use of a copyrighted work, “it makes
more sense to reject the claim on that basis and find no infringement,
131. 147 F.3d 215 (2d Cir. 1998).
132
.Id
. at 217.
133
.Id
.
134.
Newton I
, 204 F. Supp. 2d at 1258-59;
Newton II
, 349 F.3d at 597-98.
135. M
ELVILLE
B. N
IMMER
& D
AVID
N
IMMER
, N
IMMER ON
C
OPYRIGHT
§ 8.01[G],
8-24, 25, 26 (Matthew Bender & Co., Inc. 2003) (1963).
136. Remember, “the law does not concern itself with trifles” (
de minimis non curat
lex
). Arguably, this could be translated into more blunt phrasing, such as: “don’t bother
the court to exert its resources in putting trivial concerns through elaborate legal analysis.”
137. 464 U.S. 417, 451 (1984).
138. 126 F.3d at 75-76.
142 H
ASTINGS
C
OMM
/E
NT
L.J. [26: 119
rather than undertake an elaborate fair use analysis in order to
uphold a defense.”
139
The
Sandoval
court echoed this advice by
holding that it was error for the lower court to have resolved the fair
use claim without first determining whether the alleged infringement
was
de minimis
.
140
So, although a defendant will often present claims
of
de minimis
use and fair use as tandem defenses, a court will not
properly reach the fair use defense until it has resolved the
de minimis
use question. Consequently,
Newton II
’s resurrection of
Fisher
’s
consideration of fair use as precluding a finding of
de minimis
use
appears to be a red herring.
Fourth, what is the proper consideration to be given to the
qualitative nature of the copied portion? When refuting substantial
similarity is made the thrust of the
de minimis
use analysis, it presents
the danger that substantial similarity’s quantitative and qualitative
factors will dominate the process. Moreover, making qualitative
significance a primary factor alongside the quantitative measure
creates the risk that
de minimis
use analysis will, mistakenly, be
equated with the third factor of fair use—the amount and
substantiality of the use in relation to the copyrighted work as a
whole. As mentioned earlier, this would be inappropriate, especially
since
Ringgold
noted the distinction that the third fair use factor
operates along a continuum for which there is no precise threshold.
141
However, a qualitative factor may have value to
de minimis
use
analysis as a sort of “safety- valve” feature—a “double-check.”
142
Judge Graber in his dissent to
Newton II
validly reminds us that,
“even passages with relatively few notes may be qualitatively
significant. The opening melody of Beethoven’s Fifth Symphony is
relatively simple and features only four notes, but it certainly is
compositionally distinctive and recognizable.”
143
A qualitative
consideration also seems compatible with the observability (or
recognizability) test, especially since the heart of a copyrighted work
will be inherently more recognizable even if quantitatively smaller
than other parts of the copyrighted work.
Although, a question looms over a
de minimis
use qualitative
factor, which is: if a three-note sequence has already been found
sufficiently original to be protected by copyright law—how much
139
.Id
. at 76.
140. 147 F.3d at 217.
141. 126 F.3d at 76.
142. This proposition finds support in the Nimmer treatise.
See
N
IMMER
,
supra
note
135, § 13.03[A][2] at 13-47.
143.
Newton v. Diamond
, 349 F.3d 591, 598-99 (9th Cir. 2003) (Graber, J., dissenting).
2003]
N
EWTON V
. D
IAMOND
143
more original, or distinctive, does it need to be to clear the hurdle of
de minimis
use?
Newton I
suggests that for quantitatively trivial
sequences to survive summary judgment on
de minimis
use, they must
be somewhat larger than Newton’s three notes and involve either: (a)
accompanying lyrics, (b) the heart of the composition, (c) notes or
lyrics that repeat within the copyrighted work, and/or (d) sequences
that are identically expressed in both the composition and the sound
recording.
144
Newton II
suggests that the plaintiff needs to show that
the copied segment is more significant than any of the other segments
in the copyrighted work.
145
In regards to “Choir,” the
Newton II
court found: “Qualitatively,
this section of the composition is no more significant than any other
section. Indeed, with the exception of two notes, the entirety of the
scored portions of “Choir” consists of notes separated by whole- and
half-steps from their neighbors.”
146
Here, it may be appropriate to
recall the warning given by Justice Holmes in
Bleistein v. Donaldson
Lithographing Co
.:
147
“It would be a dangerous undertaking for
persons trained only to the law to constitute themselves final judges
of the worth of [expressive works], outside of the narrowest and most
obvious limits.”
148
Notably, both
Newton
courts failed to consider the
fact that the sampled sequence is the opening of “Choir” and unique
within the composition rather than repetitive, which may actually
enhance its distinctiveness rather than diminish it. Thus, even though
a qualitative factor may hold value for
de minimis
use analysis, a
court must exercise caution in its application.
Fifth, does the
de minimis
use analysis simply provide the means
by which to bypass the factfinder on the issue of substantial
similarity?
149
In other words, when considering
de minimis non curat
lex
during a summary judgment proceeding, should courts be making
a black and white choice between trivial, non-recognizable use (a
matter of law) and substantial similarity (a question for the
factfinder)?
150
Or should they, instead, decide whether the use of a
copied segment rises above a trivial, non-recognizable use to cross
144. 204 F. Supp. 2d at 1259.
145.
Newton
, 349 F.3d at 597.
146
.Id
.
147. 188 U.S. 239, 251 (1903).
148
.Id
.
149. Could this be substantial similarity analysis in the proverbial “sheep’s clothing?”
150. The relationship between substantial similarity and
de minimis
use seems to have
caused semantic confusion, which in turn has led to legal confusion in regards to its
analysis.
144 H
ASTINGS
C
OMM
/E
NT
L.J. [26: 119
into a gray area where reasonable minds may differ, presenting a
genuine issue of material fact regarding substantial similarity reserved
for the factfinder. This author believes it should be the latter, for
although there is a relationship between trivial use and substantial
similarity, if it is formulated as simply a black and white distinction—
with trivial use merely being the negative of substantial similarity—
courts run the risk of inadvertently eliminating the factfinder from the
determination of substantial similarity. Judge Graber’s dissent in
Newton II
demonstrates this possibility when he states:
[T]he composition, standing alone, is distinctive enough for a jury
reasonably to conclude that an average audience would recognize
the appropriation of the sampled segment . . . Because Newton has
presented evidence establishing that reasonable ears differ over the
qualitative significance of the composition of the sampled material,
summary judgment is inappropriate in this case.
151
Sixth, and finally, which work should be considered—solely the
plaintiff’s, solely the defendant’s, or both? In general, the answer is
both. However, as seems typical of
de minimis
use analysis, that
answer is not as straightforward as it appears on the surface.
Quantitatively,
Newton I
and
II
appear at first glance to correctly
state that the significance of the copied sequence in relation to the
defendants’ work is irrelevant and only the plaintiff’s copyrighted
work should be considered. Yet, this is likely the result of the
aforementioned ease with which the
de minimis
use analysis may be
confused with the third factor of fair use.
Indeed,
Ringgold
directs us to consider not only the quantitative
significance of the copied portion in relation to the plaintiff’s work,
but also the quantitative significance of the copied portion in relation
to the defendants’ work. To notice this directive, one need only look
to
Ringgold
’s observability test. Although “observability” may seem
to connote some sort of qualitative consideration,
Ringgold
deems it a
quantitative consideration.
152
In this regard,
Ringgold
states, “the
quantitative component of substantial similarity also concerns the
observability of the copied work [including] the length of time the
copied work is observable in the allegedly infringing work.”
153
In
Ringgold
, the court examined evidence regarding the
durational aspects of the defendant’s use, noting that all nine
151.
Newton
, 349 F.3d at 598, 600 (Graber, J., dissenting).
152. 126 F.3d at 75.
153
.Id
.
2003]
N
EWTON V
. D
IAMOND
145
instances in which the copyrighted work appeared to any degree
amounted to an aggregate duration of 26.75 seconds.
154
Further, the
court found that the repetitive effect of such use reinforced the effect
of its initial appearance. Thus, the court held:
From the standpoint of a quantitative assessment of the segments,
the principal four-to-five-second segment in which almost all of the
poster is clearly visible, albeit in less than perfect focus, reenforced
[sic] by the briefer segments in which smaller portions are visible,
all totaling 26 to 27 seconds, are not
de minimis
copying.
155
Notably, in discussing fragmented literal similarity, the Nimmer
treatise states; “The practice of digitally sampling prior music to use
in a new composition should not be subject to any special analysis: to
the extent that the resulting product is substantially similar to the
sampled original, liability should result.”
156
Therefore, given the
symbiotic relationship between the concepts of substantial similarity
and
de minimis
use, it is doubtful that—given
Ringgold
’s focus on
visual works—a different quantitative approach should pertain to
other types of works, such as compositions and sound recordings.
Qualitatively,
Newton I
and
II
also deem the defendants’ work to
be irrelevant. Additionally, in performing their
de minimis
use
analyses, neither
Ringgold
nor
Sandoval
ever discuss qualitative
factors per se—arguably preferring to maintain clarity in the thrust of
the
de minimis
use analysis as a quantitative consideration. However,
as mentioned above, a qualitative factor may have value to the
de
minimis
use analysis. And, if we again look closely at the
Ringgold
observability test, a qualitative feel is perceptible in some of the so-
called quantitative considerations, such as the focus, lighting, camera
angles, and prominence of the copyrighted work. Yet, noticeably, the
Ringgold
court was looking only to the defendant’s work in this
regard. Neither the
Ringgold
nor
Sandoval
courts discussed the
qualitative significance of the plaintiff’s copyrighted work. However,
because the facts of those cases involved copying of the entire
copyrighted work, they may have merely considered such discussion
unnecessary. Arguably, the qualitative significance of both the
plaintiff’s
work
and the defendant’s
use
should be considered—the
defendant’s in the primary sense under the observability test, and the
154
.Id
. at 76.
155
.Id
. at 77.
156. N
IMMER
,
supra
note 135, § 13.03[A][2] at 13-50.
146 H
ASTINGS
C
OMM
/E
NT
L.J. [26: 119
plaintiff’s in the secondary sense as a safety-valve to a pure
quantitative evaluation.
VII. Conclusion
For the time being, the grafting of creative expression performed
via digital sampling will remain trapped in its discordant culture of
social popularity and legal uncertainty. Unfortunately,
Newton II
has
left the music industry with only the same unsatisfactory means of
egress from that morass: the path of improvidence—doling out steady
streams of preventative payments—and the path of imprudence—
daring the copyright holders of sampled works to “catch me if you
can.” While the path of improvidence (the “sample for pay” model)
may be efficient and economical in some instances, it is generally
accepted that nothing in the law requires the copyright owner of
either the sound recording or the composition to license a digital
sample of his or her work. So, supposing your client has successfully
obtained a sample license for the sound recording: if negotiations
with the copyright holder of the composition are refused for artistic
reasons, break down for financial reasons, or your client is inclined to
daringly hop on the path of imprudence, what legal guideposts can
you look to for assistance in measuring the legitimacy of your client’s
impending act of unauthorized compositional sampling?
Whether or not its guideposts were ideal,
Newton
I
blazed a
sorely needed trail of reasonable determination grounded in the
threshold issue of originality. At its core,
Newton I
established an
efficient method whereby a distilled compositional sequence could be
run along a series of guideposts to make the threshold determination
as to eligibility for protection. Consequently, the
Newton I
approach
presented the potential advantage of being able to extinguish a claim
before escalation to more elaborate analyses became necessary.
However,
Newton
II
obscured the
Newton I
path under a muddy
analysis of
de minimis
use. Building its standard for
de minimis
use
analysis around a footnote in
Fisher
, rather than adapting
Ringgold
,
Newton II
demonstrates that a clear standard for
de minimis
use
analysis still has not been settled upon in the courts. Therefore, those
who engage in digital sampling and may make a
de minimis
use
assertion—or those who may attempt to refute such—will be faced
with a more elaborate analysis than appears on its surface.
De
minimis
use analysis would be a less circuitous path if, despite the
symbiotic relationship between
de minimis
use and substantial
similarity,
de minimis
use was not considered an exact antithesis of
substantial similarity.
Newton II
’s formulation of it as such presents
2003]
N
EWTON V
. D
IAMOND
147
the dual dangers of inadvertently bypassing the factfinder on the issue
of substantial similarity and inappropriately equating the analysis
with the third factor of fair use.
To be clear, the concept of
de minimis
use does possess the
potential to assist those engaged in digital sampling measure the
legitimacy of their actions.
157
However, until the courts settle upon
and elucidate consistent standards for
de minimis
use analysis, that
potential will remain unfulfilled.
Newton II
did not fulfill this
potential, although it had the opportunity to do so by adopting and
consistently adapting the
Ringgold
analysis to digital sampling. Still,
it is important to realize that even if the potential of
de minimis
use
analysis is fulfilled via further clarification and adoption of the
Ringgold
standard, its application may not hold an answer digital
samplers want to face, given
Ringgold
’s consideration of the
aggregate duration of a defendant’s use.
Ultimately, however, reasonable predictability in the law is
ensured through non-circuitous legal analysis.
Ringgold
recognized
this principle when it warned that it makes more sense to reject a
claim on the basis of
de minimis
use rather than try to navigate the
elaborate paths of a fair use defense.
158
In turn,
Newton I
inherently
applied this same principle at the threshold of an infringement claim.
Newton I
should have been affirmed on its primary ground of
decision—that the sampled sequence was not sufficiently original to
merit copyright protection. In that way, the Ninth Circuit could have
at least preserved one path of reasonable determination. If members
of the music industry are to be able to reasonably predict the
consequences of their digital sampling activity, courts in the future
must first undertake the
Newton I
approach, because it makes more
sense to reject a claim on the basis of ineligibility for protection rather
than tread the current muddy and circuitous path of a
de minimis
use
analysis.
157
. I.e.,
gauge their risk of infringement.
158. 126 F.3d at 76.
148 H
ASTINGS
C
OMM
/E
NT
L.J. [26: 119
Appendix
Figure 1: Choir: The Musical Score for the Sampled Sequence
159
159.
Newton
, 349 F.3d at ___ [Appendix].
2003]
N
EWTON V
. D
IAMOND
149
Diagram #1: Newton v. Diamond’s Two Separate Copyrighted Works
2. Musical Composition:
“Choir”
Rightsholder: plaintiff,
James Newton
1. Sound Recording: “Choir”
Length = approx. 4½ minutes
Rightsholder:
ECM Records
,
a 3d party
Acquired by license
from plaintiff in 1981
Feb. 26, 1992:
Irrevocable & non-
exclusive license to
“sample” issued to the
Beastie Boys.
Sample Used by
Beastie Boys:
6 seconds,
3 notes:
C
↑
D-flat
↓
C
w/ simultaneous
vocalization
Issue at Heart of Claims:
Were defendants legally
obligated to obtain a separate
license for the derivative use of
the musical composition ?
Claims:
1. Copyright infringement
2. Int’l copyright infringement
3. Reverse Passing Off
(dismissed per F.R. 12(b)(6)
– failur
e to state a claim)
4.
Misappropriation of Identity
(dismissed per F.R. 12(b)(6))
150 H
ASTINGS
C
OMM
/E
NT
L.J. [26: 119
Diagram #2: Newton I on Analytic Dissection of the Musical Composition
vs. Sound Recording
Musical Composition: “Choir”
Definition
: Rhythm, harmony, and melody
expressed in written form
Protects
: The generic sound that would
necessarily result from
any
performance of the work as written
Plaintiff’s
No time or key signatures
Score:
No further orchestration
Calls for improvisation
Sequence at issue appears only once
Footnote indicates performer must sing
into flute & finger the C note
simultaneously (i.e., “
vocalization
”)
Sound
Recording:
“Choir”
The aggregation
of sounds
captured by
recording onto a
phonorecord a
performer’s
rendition of a
musical
composition.
Analytic Dissection:
Why?
filtering
(a) Plaintiff does not own both copyrights; would be unnecessary if he did
(b) Plaintiff can’t base his claim on elements that are unique to the sound recording
(c) Must determine the scope of protection available for the musical composition
Plaintiff bases claim on originality of vocalization & overblowing.
Here, this results in a “Battle of the Experts”:
Generic Vocalization (G/V):
- Predates & is not unique to Plaintiff’s musical composition
- Has been used in Africa & was prevalent throughout 20th Century,
e.g
., “Voice
of the Whale,” 1971 composition by G. Crumb
- Academic literature recognized G/V before Newton wrote ”Choir”
- This is noted in the musical composition, “Choir”
Newton Technique (N/T):
- His unique approach: using breath control to emphasize certain notes
- Overblowing the C-note to produce multiple pitches
- Neither N/T nor overblowing are noted within “Choir” composition
- Plaintiff concedes that NOT all the elements of his performance of “Choir” are
reflected within the musical composition
Result
: Plaintiff’s specific techniques of performing “Choir” are protected only
by the copyright in the
sound recording
of his performance of “Choir,”
which defendants licensed.
2003]
N
EWTON V
. D
IAMOND
151
Diagram #3: Newton I on the Protectability of a Particular Segment of a
Copyrighted Musical Composition
Registration with Copyright Office in 1978
Prima facie evidence of:
(a)
Validity
of the overall
copyright in the work
Originality
of all elements within
the copyrighted work
Yes
No
Diagram continued on next page
152 H
ASTINGS
C
OMM
/E
NT
L.J. [26: 119
Protectability of Elements
within a copyrighted work
(b)
Yes No
Original
incl. creatively non-trivial ~
Feist
Common
& lacking nontrivial creative
contribution
Takes into consideration the limited
raw material (notes & chords)
composers have to work with
Where
sample
involves
< 6 notes:
Where
sample
involves
words /
sounds:
distinction
:
Generally also
involves:
- Accompanying
lyrics
- Heart of
composition
- Repetitive seq. &
lyrics, and/or
- Seqs. expressed in
both comp. &
sound recording
Generally
involve
unusual
words or
sounds
E.g. Baxter v. MCA
- use of 1st
six
notes
to create theme
song for movie
“E.T.”
E.g.
Tin
Pan Apple
v. Miller
Brewing
–“hugga-
hugga” &
“brrr”
Here
:
- No lyrics;
- Not heart;
- Not repetitive;
- Only analyzing
composition
Here
:
No unusual
words or
sounds
noted
within
comp.
Two ways to find
“commonality”:
3 notes
or less
Generic
compositional
technique
E.g. Jean v. Bug
Music, Inc.
:
C
↓
B flat
↑
C +
clap your hands:
not protectable
McDonald v.
Multimedia Ent.
:
3 notes common
to trad’l western
music not
p
rotectable
E.g. Intersong-
USA v. CBS
:
descending
scale step:
not
protectable
Here
:
C
↑
D flat
↓
C
is a common
building block in
20th Century
music
Strikingly similar
to facts of
Jean
Here
:
Common device
of generic
vocalization
cannot be
p
rotected
2003]
N
EWTON V
. D
IAMOND
153
Diagram #4: Newton I’s De Minimis Use Analysis
Doctrine of De Minimis Use
Operates to prevent a finding of
substantial similarity
(a requirement for actionable copying)
Standard
: average audience would not recognize the misappropriation.
Is the use quantitatively trivial?
Court focused on
: whether portion taken constituted a substantial portion of
the copyrighted work.
Court considered irrelevant:
whether portion taken constituted a substantial
portion of Defendant’s work. Here, the fact that the sequence was
“loo
p
ed” throu
g
hout entire “Pass the Mic” son
g
is of no conse
q
uence.
Defense will fail
N
o
Here
:
only 2% of “Choir” composition was taken, and it
appeared only once in the “Choir” composition
Yes
Is the use qualitatively trivial?
Court focused on:
Whether portion taken is important to Plaintiff’s entire song.
Court considered irrelevant:
Whether portion taken is important to Defendant’s
song.
Defense will fail
N
o
Note
:
The issue is not whether the average
listener might recognize the portion taken as
coming from Plaintiff’s sound recording!
Instead
: The issue is whether the average
listener might recognize Plaintiff’s musical
composition as the underlying source.
Yes
H
ere
: Neither the notes nor the G/V technique noted in the
composition–nor their combination–imparts any distinctiveness to
the 6-second portion. Also, Plaintiff fails to identify any factors
separate from those attributable to his unique performance
techniques that would render the 3-note sequence qualitatively
im
p
ortant.
Result
: Defense Succeeds for the Beastie Boys!
Cases where
de
minimis
use
defense failed
involved:
- larger portions
of music, AND:
- accompanying
lyrics
- heart of comp.
- repetitive seq. &
lyrics,
and /or
- seqs expressed
in both comp. &
sound recording