TO:

FROM:
DATE:
RE:

MEMORANDUM OF LAW
Jacob Aronson
Daniel Bever
November 24, 2014
Donovan; copyright infringement of a sound recording through digital sampling

QUESTIONS PRESENTED
1.

In the Second Circuit, can an artist be held liable for infringing a sound recording copyright for
any unlicensed digital sampling, including slight or trivial appropriation?

2.

In the Second Circuit, does the owner of a sound recording copyright have a cause of action
against a party who digitally samples its protected work when the sampled selection is two
seconds long, contains two notes, features the title lyric of the original work, occurs in the
chorus of the original work, repeats twelve times in the original work, is lowered several octaves
in the new work, and is substantially distorted in the new work?
SHORT ANSWERS

1.

No. The court must choose between the per se rule and a substantial similarity analysis as it
decides whether it will allow a jury question on sound recording copyright infringement. If the
court adopts the per se rule, it can grant summary judgment in favor of the plaintiff because the
defendant has already admitted to sampling. Nevertheless, the court is unlikely to adopt such a
rule. Despite the recent use of the per se rule in the Sixth Circuit to determine infringement of a
sound recording copyright, the reasoning supporting this rule and its dissonance with the
legislative intent of the Copyright Act weigh against implementation. Furthermore, the Second
Circuit has not adopted the per se rule in seemingly analogous cases involving alleged
infringement through exact copying.

2.

Probably yes. Assuming the court evaluates infringement with a substantial similarity
analysis, it must choose between a fragmented literal similarity test and an

observability test. To prove fragmented literal similarity, a sample must be qualitatively and
quantitatively important to the original work. The court is likely to determine that a lyric found
in a song title and refrain that constitutes 10% of an original piece is not de minimis. The
observability test considers whether the sampled piece was prominent and recognizable in a new
song. The court is likely to rule that a distorted, two-second sample used twice in a new work is
de minimis.
SUMMARY OF FACTS
Candace and Malcom Donovan, our clients, received a letter from Zomba Recording
Corporation (Zomba) threatening legal action for copyright infringement. Their minor son,
Carter Donovan, digitally sampled a song in one of his mashups. Zomba owns the sound
recording copyright for the song in question.
Carter Donovon is seventeen years old. He lives in New York City with his family and
is an aspiring disc jockey (DJ). He specializes in mashups, which are compilations of songs
mixed together using digital sampling technology. Digital sampling is the process through which
an artist uses previously recorded material in a new recording. Carter creates mashups by
downloading songs from iTunes and using Musical Instrument Digital Interface (MIDI) software
to sample and mix different tracks.
Carters work includes the song Break It Down, which samples from (You Drive
Me) Crazy, a song recorded by Britney Spears in 1999. Zomba owns the copyright to the
sound recoding used in this song. The sample includes a two-second, two-note sequence of
the lyric crazy. In the original song, the sample was repeated twelve times. This count
includes repetition in the introduction and the chorus. In total, the lyric constituted twentyfour seconds of the 3:18 song, 12% of the total work. Carters mashup is four minutes long.
The lyric crazy appears once in the introduction and again thirty seconds into the song.

Carter distorted the sample by lowering its pitch significantly. Overall the songs do not
sound alike, and Carter claims that his work relies on a different story line.
Carter began working on mashups in July 2013, roughly fourteen months before Zomba
began threatening suit. In fall 2013, Carter finished the mashup collection. He posted his work
on Myspace, YouTube, SoundCloud, and an online DJ show. His parents financed him, and he
distributed copies of mashup CDs to family and friends. Later, he began hiring himself out and
playing his mashups in small clubs in New York City. He is planning to offer his CDs for sale to
the public.
IT experts at Zomba discovered that Carter had sampled from (You Drive Me) Crazy
in September 2014. Zomba then issued a cease-and-desist letter that threatened to sue for
copyright infringement.
DISCUSSION
Copyright holders have the exclusive rights to reproduce the copyrighted work in
copies or phonorecords, to prepare derivative works based upon the copyrighted work,
to distribute copies or phonorecords of the copyrighted work to the public by sale or other
transfer of ownership, or by rental, lease, or lending, and in the case of sound recordings, to
perform the copyrighted work publicly by means of a digital audio transmission. 17 U.S.C.
106 (2012). Proving copyright infringement involves a three-part test. The plaintiff must prove
(1) ownership of the copyright in question; (2) that the defendant actually copied the work; and
(3) that the copying was improper or unlawful appropriation. Castle Rock Entmt v. Carol
Publg Grp., 150 F.3d 132, 137 (2d Cir. 1998). In this case, no controversy exists on the
questions of copyright ownership and actual copying. The only element in dispute is whether
the appropriation is illegal.

A song embodies two separate copyrights. The law separates musical works,
including any accompanying words into a separate category from sound recordings. 17
U.S.C. 102(a). A musical composition includes only those elements that an artist can affix to a
written score and is devoid of any elements unique to a particular artists performance. Newton v.
Diamond, 388 F.3d 1189, 1194-95 (9th Cir. 2004). The term sound recording refers to works
that result from the fixation of a series of musical, spoken, or other sounds . . . regardless of the
nature of the material objects, such as disks, tapes, or other phonorecords, in which they are
embodied. 17 U.S.C. 101(7)(2).
To evaluate copyright infringement of musical compositions, courts use a substantial
similarity analysis. See, e.g. Newton, 388 F.3d at 1190; Williams v. Broadus, No. 99 Civ. 10957
MBM, 2001 WL 984714, *3 (S.D.N.Y. Aug. 27, 2001); Jarvis v. A&M Records, 827 F. Supp.
282, 285-86, 289 (D.N.J. 1993). This analysis reflects the de minimis principle, which
distinguishes trivial copying from actionable copying. Newton, 388 F.3d at 1192. In the Second
Circuit, whether digitally sampling a sound recording constitutes copyright infringement is an
issue of first impression. Courts have split on whether the per se rule or substantial similarity
analysis should be applied in such a situation.
The per se rule initially appeared in Bridgeport Music v. Dimension Films, 410 F.3d 792
(6th Cir. 2005). In its opinion, the court recounted the development of the Copyright Act. Id. at
799-800. Sections 106 and 114(a) of title 17 of the United States Code explain the exclusive
rights of copyright holders, including the right to produce derivative works. To maintain
balance between industry interests regarding revenue and the interests of new artists in regards
to creative freedom, Congress created sound recordings as a new type of copyright in 1971. Id
at 800.

The second section of the Bridgeport opinion analyzed the addition of the word
entirely to 17 U.S.C. 114(b) by Congress in 1976. Id. at 800-01. The revised statute states:
The exclusive rights of the owner of copyright in a sound recording under clauses (1) and
(2) of section 106 do not extend to the making or duplication of another sound recording
that consists entirely of an independent fixation of other sounds, even though such sounds
imitate or simulate those in the copyrighted sound recording.
17 U.S.C. 114(b) (emphasis added). The court understood this revision to preclude the
interpretation that an actor could sample from a protected sound recording without incurring
liability for copyright infringement. Bridgeport, 410 F.3d at 800-01. The Bridgeport court
concluded that adding the word entirely clarified the meaning of the statute. Without it, a
recording that in part consists . . . of an independent fixation of other sounds, including any
instance of digital sampling, could be construed as non-actionable in certain circumstances. Id.
at 800-01. However, when a sound recording must consist[] entirely of an independent
fixation of other sounds, to be nonactionable, any act of sampling would become an actionable
claim. Id. Under this interpretation, the only party able to legally sample a sound recording
without a license would be the owner of its copyright. Id.
While the court justified its reasoning through its reading of the statute, it also
presented optimistic policy implications. It asserted that samplers should offer payment because
they appropriate something of value. Id. at 801-02. It observed that many samplers are already
seeking licenses. Id at 804. It also remarked that the market could develop a mechanism for
distributing licenses to samplers. Id at 801. Because artists seeking to sample often demand
copyright protection for their own sound recordings at a later date, the test would not disrupt
the balance between samplers and copyright owners. Id at 804. Infringement per se would be
administratively efficient to enforce as a bright line rule. Id at 802. Finally, the opinion
indicated that sampling was analogous to a physical taking because a sound recording

copyright protects sounds that are fixed in . . . [a] medium and sampling involves tak[ing]
directly from that fixed medium. Id.
The reasoning behind Bridgeport was directly challenged in Saregama India v. Mosley,
687 F. Supp. 2d 1325 (S.D. Fla. 2009). The Saregama court noted that 17 U.S.C. 114(b)
shields derivative works and limits the scope of copyright protection for original sound
recordings. Id. at 1340-41. Interpreting 114(b) as simultaneously restricting and expanding
copyright protection seems to lack intertextual coherence. Id. Additionally, the Saregama court
took issue with Bridgeports classification of derivative works as all works incorporating a
digital sample. Id. The Saregama court also found no evidence in the statute to support the
concept that a work could simultaneously be derivative and lack substantial similarity to the
original work. Id.
Finally, the court noted that the legislative history of the statute did not support the per se
interpretation. 687 F. Supp. 2d at 1340. Notably, the Bridgeport court chose not to consider
legislative history in its interpretation of 114(b). 410 F.3d at 805. The committee report that
accompanied the 1976 Copyright Act clarified congressional intent regarding the circumstances
under which sampling would be actionable: infringement takes place whenever all or any
substantial portion of the actual sounds that go to make up a copyrighted sound recording are
reproduced. H.R. Rep. No. 94- 1476, at 106 (emphasis added). Rather, Congress only meant to
impose liability more narrowly, limiting infringement to those cases when a sampler
appropriated a substantial portion of a protected work. Id. The Saregama court reasoned that
a per se rule should not be read into a statute when legislative history reveals intent to restrict
infringement to cases of substantial appropriation.
Academic and secondary authorities have sharply criticized the reasoning in Bridgeport.

Nimmer on Copyright, one of the leading treatises on copyright law, articulated many of the
arguments adopted by Saregama: the totality of 17 U.S.C. 114(b) focuses on restricting, rather
than expanding, the rights of copyright holders, and the stated legislative intent of the statute
focuses on preventing substantial appropriation rather than any act of appropriation. 4
Melville B. Nimmer & David Nimmer, Nimmer on Copyright 13.03[A][2][b] (rev. ed. 2014).
Nimmer commented on a weakness in the Bridgeport courts classification of digital sampling as
a physical rather than intellectual taking that justified a unique form of copyright protection.
Id. Other media, such as written works, can be sampled without triggering automatic liability for
infringement. Id. For instance, sampling from a favorite poem in a small, trivial way by
appropriating the phrase the end does not constitute infringement. Id. See also William Y.
Durbin, Recognizing the Grey: Toward A New View of the Law Governing Digital Music
Sampling Informed by the First Amendment, 15 Wm. & Mary Bill Rts. J. 1021, 1039, 1040
(2007) (asserting that the policy implications in Bridgeport fail to adequately balance the
financial interests of copyright holders with the interests of new innovators); Mike Suppapola,
Confusion in the Digital Age: Why the De minimis Use Test Should Be Applied to Digital
Samples of Copyrighted Sound Recordings, 14 Tex. Intell. Prop. L.J. 93, 118 (2006)
(questioning the claim that courts cannot efficiently apply a de minimis analysis to digital
sampling and noting that courts already do so in areas of equal or greater complexity, including
computer programing); Note, Copyright Law - Sound Recording Act - Sixth Circuit Rejects De
minimis Defense to the Infringement of a Sound Recording Copyright. - Bridgeport Music, Inc.
v. Dimension Films, 383 F.3d 390 (6th Cir. 2004), 118 Harv. L. Rev. 1355, 1360 (2005) (citing
the incongruity of applying the per se rule when a sample includes a few notes from a sound
recording but refraining from using the per se rule when a sample includes a few notes from a
musical score). But see Tracy L. Reilly, Debunking the Top Three Myths of Digital Sampling:

An Endorsement of the Bridgeport Music Court's Attempt to Afford Sound Copyright

Protection to Sound Recordings, 31 Colum. J.L. & Arts 355, 358 (2008) (approving the
Bridgeport decision to use different types of analysis for sound recordings and musical
compositions and asserting that a voluntary licensing scheme could balance interests between
samplers and copyright holders).
In analogous cases involving exact copying, the Second Circuit has applied a
substantial similarity test. For instance, in Castle Rock Entmt v. Carol Publg Grp., 150 F.3d
132, 136, 137, 138 (2d Cir. 1998), the court used a substantial similarity test when photographs
of a television program appeared alongside questions about that program in a quiz book. If the
court were to apply the per se rule, this case would have represented an excellent opportunity.
Material from a protected work, in this case a television program, was appropriated and used in
an unauthorized secondary work. See also Sandoval v. New Line Cinema, 147 F.3d 215, 21718 (2d Cir. 1998) (applying a substantial similarity test where negatives of copyrighted
photographs were used in a motion picture); Ringgold v. Black Entmt Television, Inc., 126 F.3d
70, 76-77 (2d Cir. 1997) (applying a substantial similarity test where a television program
showed different portions of a copyright protected poster in clips between 1.86 and 4.16
seconds).
Furthermore, other jurisdictions have applied a substantial similarity analysis in cases
involving digital sampling of a sound recording. See, e.g., TufAmerica, Inc v. Diamond, 968 F.
Supp. 2d 588, 592, 593 n.2, 595-98 (S.D.N.Y. 2013); VMG Salsoul, LLC v. Ciccone, No. CV
12-05967 BRO CWX, 2013 WL 8600435, at *2, *10 (C.D. Cal. Nov. 18, 2013); Pryor v.
Warner/Chappell Music, No. CV 13-04344 RSWL (AJWx), 2014 WL 2812309, *7 (C.D. Cal.
June 20, 2014).

The Southern District of New York is likely to apply a substantial similarity analysis.
The reasoning behind the per se rule fails to acknowledge the legislative intent or operational
purpose of 17 U.S.C. 114(b). The Second Circuit and the Southern District of New York
regularly apply substantial similarity for unauthorized, exact copying in other media.
Furthermore, despite the Bridgeport precedent requiring per se infringement in cases of a sound
recording copyright, jurisdictions outside the Second Circuit and the Southern District of New
York regularly use the substantial similarity analysis in cases involving copyright infringement
of a sound recording through digital sampling.
To determine substantial similarity, courts choose between various tests, including the
total concept and feel test, comprehensive nonliteral similarity test, and fragmented literal
similarity test. Castle Rock, 150 F.3d at 132, 139-140. Of these, only the fragmented literal
similarity test is useful in cases of exact copying, which includes digital sampling. Id. at 140.
To determine fragmented literal similarity, courts look at quantitative and qualitative
importance together. Courts have generally adopted a permissive view in regards to the
quantitative standard in digital sampling cases. Even brief samples can form a cause of action,
if the qualitative importance is substantial. When evaluating qualitative importance, courts will
consider whether the sample used distinct lyrics, such as a lyric in a song title, or whether the
sample encapsulates an important portion of a sound recording, such as a refrain.
When a sample lasts for a considerable amount of time in the original recording and has
special importance within that recording, courts often allow a jury question regarding copyright
infringement on the basis of substantial similarity. In Bridgeport Music v. UMG Recordings,
585 F.3d 267, 272, 273, 279 (6th Cir. 2009), the court affirmed a jury instruction for substantial
similarity where the plaintiff sampled a refrain with the lyrics bow wow wow, yippe yo, yippie
yea, rhythmic panting, and the repeated use of the word dog as musical punctuation. In the

aggregate, these instances of copying were quantitatively important. Id. at 276-77.

Qualitatively, the samples also related to the dog theme. Id. The court reasoned that copying
the refrain was of particular qualitative importance, perhaps the functional equivalent of E.T.,
phone home. Id. at 276.
Similarly, in Jarvis, the court allowed a jury question when the allegedly infringing
work sampled the lyric ooh . . . move . . . free your body and an extended keyboard riff. 827 F.
Supp. at 286, 289, 292. The lyrics occurred in a qualitatively important section of the song, a
bridge that attempts to be distinct and attention-grabbing. Id at 292. The keyboard riff
announced the final section of the protected song and lasted for several minutes in the original
piece. Id. at 289, 292. In TufAmerica, the court evaluated six different samples for copyright
infringement and allowed jury questions on three samples. TufAmerica, 968 F. Supp. 2d at 588.
In particular, the court determined that a jury question for substantial similarity was appropriate
for an orchestral five-chord sequence that was repeated seventeen times in the original work,
lasting fifty-one seconds in the original 5:31 piece, or 15% of the original work because such a
sample carries both qualitative and quantitative importance. Id. 606-07.
Even a small amount of appropriation can constitute infringement, if the sample is
qualitatively significant. The TufAmerica court determined that a sample including the two
words say what from a song entitled Say What was not de minimis. Id. 603-04. This
sample was repeated emphatically throughout the protected piece and lasted for nine seconds
of the original 8:11 song, 1.8% of the original work. Id. In Pryor, the court held that sampling
the lyric get down in the artists signature voice was qualitatively important and therefore
not de minimis. This sampled lyric lasted approximately half-a-second in a song 6:39 long, or
0.01% of the original piece. No. CV 13-04344 RSWL (AJWx), 2014 WL 2812309, *7.
Additionally, in Elsmere Music, Inc. v. Nat'l Broad. Co., 482 F. Supp. 741, 743, 744, 747

(S.D.N.Y. 1980), affd on other grounds, 623 F.2d 252 (2d Cir. 1980), the court executed a
substantial similarity analysis and determined that appropriating the same tonal sequence and
changing the original lyric I love New York from a song entitled I Love New York to I
love Sodom was not de minimis. Although quantitatively small, the court held that the musical
phrase I love New York constituted the heart of the composition in the original piece. Id. at
744. The court ultimately ruled that no copyright infringement had occurred because the
sampling was protected by fair use. Id. at 746.
In cases where the sample is non-distinctive and extremely brief in the original work, the
courts have ruled that the copying was de minimis. In Poindexter v. EMI Record Grp., Inc., No.
11 Civ. 559(LTS)(JLC), 2012 WL 1027639, *1, 3-4 (S.D.N.Y. March 27, 2012), the court
concluded that digitally sampling a single note was de minimis. The sample in the song featured
a single unaccompanied note that lasted for approximately two seconds in the original work. Id.
at *1, 4. In Newton, the court ruled that sampling a three note sequence from an original work
was de minimis. 388 F.3d at 1191, 1192. In the original piece, this segment only constituted six
seconds of a four-and-a-half minute song, approximately 2% of the original work. Id. at 119596. Qualitatively, the sampled section bore no particular importance to the original song;
nearly the entire piece was separated by similar half-step intervals. Id. at 1195. In Saregama,
the court ruled that sampling a descending arpeggio was de minimius because it did not sample
a distinct lyric. 687 F. Supp. 2d at 1326-27, 1330. The original song looped the arpeggio four
times, creating a musical phrase that lasted approximately two seconds. Id. at 1330.
Similarly, in VMG Salsoul, the court ruled that sampling horn hitschords played by
brass instrumentswas de minimis. 2013 WL 8600435, *1, 9-10. The horn hit appeared twice
and lasted sixteen seconds in the original 7:00 recording. Id. at *2. In TufAmerica, the court
determined that a jury question was not appropriate for a three-second sample involving a series

of guitar chords, percussion, and the lyric, Now I want yall to break this down. 968 F. Supp.
2d at 607. The sample lasted for three seconds of the 6:20 song, or 0.8% of the original work.
Id. at 607. See also id. at 604-05 (determining that a jury question for substantial similarity was
unnecessary where the sample lasted four seconds and included a descending synthesizer note
supported by an arrangement featuring drums, voices, and percussion); id. at 605-06
(determining a three-second sample of a descending drum pitch was de minimis when the sample
constituted the first three seconds of a 5:56 song, or 0.8% of the original work); id. at 606
(determining that a six- second sample involving a descending synthesizer note, voices, and a
kick snare sequence was not substantially similar when the sequence lasted for six seconds in
the original 5:59 song, or 1.7% of the protected work).
If the court uses the fragmented literal similarity test in the case at hand, it will likely
allow a jury question on substantial similarity. Donovans sample contains a portion of the title
lyric from the song (You Drive Me) Crazy, which is a qualitatively significant part of the
protected work. The sampled lyric also appears in the refrain of the protected work, another
qualitatively important part of the song. The sample repeats throughout the original piece,
constituting 12% of the protected work, a percentage that the court is likely to consider
quantitatively significant.
Because the sample was distorted, the court may choose to use an observability test.
An observability test considers whether an average lay observer could recognize a sample in a
new work based on the prominence with which that new work displays the sample and that
duration of the sample within the new work. Sandoval, 147 F.3d at 217. The Second Circuit has
only applied the observability test in cases involving visual works. Castle Rock Entmt 150 F.3d
at 74-75. See also Dyer v. V.P. Records Retail Outlet, Inc., No. 05 Civ. 6583(WHP), 2008 WL
2876494 (S.D.N.Y. July 24, 2008).

In cases where a sample is clearly observable to the viewer and prominent in the
infringing work, a court will rule that copying is not de minimis. For instance, in Ringgold v.
Black Entmt Television, Inc., 126 F.3d 70, 75-77 (2d Cir. 1997), the court determined that a
television program featuring a copyrighted poster was not de minimis when a four-to-fivesecond clip revealed 80% of the poster, and additional, briefer shots of the poster continued
intermittently throughout the program. The court noted that, in this instance, the repeated shots
of the poster strengthened the effect of the four-to-five-second shot. Id. at 76-77. The poster
was showcased for a total of 26.75 seconds. Id. at 76. The shots of the poster allowed the
audience to observe the subject matter of the work, African-American adults and children
socializing near a pond. Id. at 77. It also allowed the audience to observe the signature style of
the poster, despite the lack of perfect focus on that protected work in the relevant shots. Id. at
77.
Similarly, in Dyer, the court held that observability was not de minimis when three
consecutive clips from a music video appeared in a commercial where the copied clips occupied
a majority of the screen and the protected subject matter was clearly observable to the
ordinary viewer. 2008 WL 2876494, *4. The clip lasted three seconds in the allegedly
infringing one-minute video. Id. at *2. The shots showed the artist performing in a studio and
moving rhythmically while sitting on a doorstep. Id. at *2. Additionally, the court determined
in Twentieth Century Fox Film Corp. v. Marvel Enters., Inc., 155 F. Supp. 2d 1 (S.D.N.Y. 2001),
that a three-second sample including highlights of a film and trailers in an advertising tape was
not de minimis because the clips were prominent[] and . . . plainly observable to the lay
viewer. Id. at 45-56.
In contrast, if images are difficult for the lay viewer to observe, the court will rule the
sampling de minimis. The Second Circuit determined in Sandoval v. New Line Cinema Corp.,

147 F.3d 215, 218 (2d. Cir. 1998) that a series of eleven shots featuring reproductions of
protected photographs that were filmed with meager lighting, that were severely out of focus,
obscured, and radically abbreviated was de minimis sampling. Unlike Ringgold, the shots had
no cumulative effect on the average viewer. The protected work was not displayed in the
amount of detail needed to observe either the subject matter or artistic style. Id.
If the court applies the observability test, it will find that Donovans sampling is de
minimis. The original sample was neither prominent nor recognizable in the new work. The
original lyric and tone of the original work is not discernable to the average lay observer in the
mashup. Although the crazy sample is featured in the introduction of the mashup and repeated
thirty seconds into the piece, this repetition has no cumulative effect because of the heavily
distorted quality of the sample.
CONCLUSION
The Southern District of New York will probably allow a jury question. Even
assuming that the court uses a substantial similarity analysis instead of the per se rule, the
fragmented literal similarity test will indicate that the digital sample exceeds de minimis in
regards to qualitative and quantitative importance. In contrast, if the court uses the observability
test, it may rule that the appropriation was de minimis because the digital sample lacked
prominence and clear discernibility to the average lay viewer within the allegedly infringing
work. To date, the Second Circuit has only used the observability test for visual works.