“To Sample, Or Not To Sample, That Is The Question”

On 16th September 2020 the United States District Court for the Central District of California had to decide if the use by an artist – known as Nicky Minaj – of the recording of lyrics and melodies of a musical work “Baby Can I Hold You” by the artist Tracy Chapman (hereinafter the “Work”) for artistic experimentation and for the purpose of securing a license from the copyright owner is fair use (full decision here). Nicky Minaj was aware that she needed to obtain a license to publish a remake of the Work as her remake incorporated many lyrics and vocal melodies from the Work. Minaj made several requests to Chapman to obtain a license, but Chapman denied each request. Minaj did not include her remake of Sorry in her album. She contacted DJ Aston George Taylor, professionally known as DJ Funk Master Flex, and asked if he would preview a record that was not on her album.

The Court recognized fair use based on the following assessments:

·       the purpose of Minaj’s new work was experimentation. Since Minaj “never intended to exploit the Work without a license” and excluded the new work from her album, Minaj’s use was not purely commercial. In addition, the Court noted that “artists usually experiment with works before seeking licenses, and rights holders usually ask to see a proposed work before approving a license” The Court expressed concern that “the eradication … [these] common practices would limit creativity and stifle innovation in the music industry“;

·       the nature of the copyrighted work, did not favor fair use because the composition is a musical work, which is “the type of work that is at the core of copyright’s protective purpose“;

·       the amount of the portion used in relation to the work as a whole, favored fair use. Although Minaj’s new work incorporated many of the composition’s lyrics and vocal melodies, the material used by Minaj “was no more than necessary to show Chapman how [Minaj] intended to use the composition in the new work“;

·       the effect of the use on the potential market or value of the copyrighted Work, favored fair use because “there is no evidence that the new work usurps any potential market for Chapman“.

Considering the factors together, the Court found that Minaj’s use was fair and granted partial summary judgment in favor of Minaj that her use did not infringe Chapman’s right to create derivative works. The Court determined that Chapman’s distribution claim has to be tried and resolved by a jury, but a settlement eliminates the need for a trial. Minaj has paid a significant sum (450.000,00 Us dollar) to settle and avoid the risk of trial. If on one hand, this case confirm that private sampling should be protected as fair use, on the other hand it sounds like a warning for artists on sampling matter. Obtaining a preliminary license – also in the land of fair use – is always the best practice, although creativity and experimentation needs – in the opinion of the writer – to be protected to empower the spread of different music genre and contribute on cultural renaissance, especially regarding hip hop music, that is historically based on sampling.

The decision offers an interesting comparison with the Pelham case (CJEU – C-476/17 Pelham GmbH and others) in order to analyze how the two different systems are evolving on sampling matter.  Actually, the agreement between these two decisions is only partial.

Indeed, in Pelham the CJEU recognized the admissibility of “unrecognizable sample“. According to the CJEU “where a user, in exercising the freedom of the arts, takes a sound sample from a phonogram in order to use it, in a modified form unrecognizable to the ear, in a new work, it must be held that such use does not constitute ‘reproduction’ within the meaning of Article 2(c) of Directive 2001/29.”

Furthermore, in Pelham CJEU argue that the reproduction of a sound sample, even if very short, constitutes a reproduction that falls within the exclusive rights granted to the producer of phonogram. Considering that the US Court stressed that “not only (…) the quantity of the materials used, but about their quality and importance, too” has to be considered, according to Campbell, 510 U.S. at 587, this is probably one of the main gaps between the two decisions.

Indeed, the logical-argumentative process of the US Judge moves from a deep context analysis that implies an interpretation of sampling based on the purpose and character of the uses, according to the common-law tradition of fair use adjudication that always preferes a case-by-case analysis rather than bright-line rules.

Instead, the CJEU chose a different approach, arguing that the “free use” is a derogation not provided by the Infosoc Directive, so any reproduction act is subject to the reproduction rights notion mentioned by art.2 of each Directive. This “static” approach also (and especially?) depends on the pending – and unsolved – harmonization process of the European system of exceptions and limitations provided by the Infosoc Directive.

The US Court, instead of being based on a parameter of appreciation such as the “recognizability of hearing”, comes to the balance through an analysis of context aimed at preserving the freedom of artists to experiment, demonstrating – even in the (apparent) identity of results – more courage, as opposed to the practical approach of the European Court of Justice. The CJEU has not – in the opinion of the writer – taken the opportunity to move more decisively towards a grater balance between exclusive rights and fundamental freedoms, which should be considered the freedom to experiment for artists.

Matteo Falcolini

Chapman v. Maraj No. 2:18-cv-09088-VAP-SS (C.D. Cal. Sept. 16, 2020)

US 2nd Circuit holds that Google Books does not infringe copyright

Nearly two years after the US District Court for the Southern District of New York decision on the Google Books Library Project, the US Court of Appeals for the 2nd Circuit confirmed that the scanning activities of Google within its Library Project are to be considered a fair google-books-featured1-500x236use of copyright works under §107 of the US Copyright Act (full text here). The Litigation was brought against Google by the Association of American Publishers (AAP) and the Authors’ Guild, on behalf of authors whose books Google had digitized without permission, claiming that Google’s digital copying ofentire books, allowing users through the snippet function to read portions, would infringe author’s copyrights, providing consumers with a substitute for the original works.

In 2012, the AAP and Google concluded a settlement agreement, but this did not arrest the ongoing litigation between the Authors’ Guild and Google.

Judge Pierre N. Leval held among other things that Google’s making of a digital copy to provide a search function is a “highly transformative use”, with the meaning set forth in Campbell v. Acuff-Rose Music, Inc. (510 U.S. 569, U.S. 1994) to “add something new, with a further purpose or different character, altering the first with new expression, meaning, or message”.

In particular, the court said that Google’s book search function was transformative because it “augments public knowledge by making available information about the plaintiffs’ books without providing the public with a substantial substitute for matter protected by the plaintiffs’ copyright interests in the original works or derivatives of them”. Even if the snippet reveals some copyright–protected authorial expressions, the brevity and the cumbersome, disjointed and incomplete nature of the snippets just helps users to evaluate whether books falls within the scope of their interest, but does not allow to make them a competing substitute for the original.
A unanimous three-judge panel rejected the Author’s Guild’s argument that Google’s distribution of the digital copies to libraries exposed the books to risks of loss. On the contrary, the court said that Google Books did not have a strong effect on the potential market for the books and that any losses would eventually address interests unrelated to copyright.
If the decision will be upheld by the Supreme Court, it will predictably become a landmark ruling in copyright law. Its long term effects could be relevant. In addition to the public benefits of Google Books, which expands access to books and allows scholars to analyse huge amount of data, the decision might open the door for creating similar types of digitization projects involving copyrighted works. In this regard, it will be interesting to carefully follow if and how the decision will travel outside the United States, especially in those legal systems which does not have a fair use clause.

Predictably, in any case, the decision will not meet with unanimous praise. The decision proposes an extensive application of the transformative use doctrine, which could be interpreted as a lack of consistency concerning how the degree of transformativeness is to be assessed. This point could be matter for further guidance by the Supreme Court.

In the meantime, while Google heaved a sigh of relief, the next candidate is already on the horizon. It is the online trading platform Amazon, subject to both antitrust investigations and further calls for regulation. But this is another story…

Jacopo Ciani