349 F.3d 591 (9th Cir. 2003)
James W. Newton
“Pass the Mic”
Comment by Charles Cronin
When Newton registered “Choir” with the Copyright Office, he deposited as a copy of the work a cassette recording of his performing it. His use of an audio recording likely led to his erroneously registering “Choir” as a sound recording rather than a musical work. Despite the fact that Newton deposited an audio recording to register his musical work, the Ninth Circuit relied only on Newton’s minimal score as representing the complete musical work. In other words, the court determined that the original musical expression contained in the sound recording was limited to the visual doodling of a “score”, which the court appended to its opinion.
In her sharp (and borderline patronizing) dissent, Judge Susan Graber claims that the majority did not rightly understand – or deliberately distorted – the expert testimony offered on Newton’s behalf about the musical distinctiveness of “Choir” independent of any particular performance of it.* In fact, the majority seems to have understood the testimony offered by Newton’s experts, but found it unconvincing as far as it attempted to undergird Newton’s claim that the music of the disputed segment amounted to more than the three notes of the sketch of the work that Newton submitted to the Copyright Office along with his copyright registration application.
I think the majority was correct to the extent it minimizes the scope of Newton’s “Choir” as a musical work as rendered in his notated version of it, and that the court could have affirmed the lower court’s finding that the segment in question was not sufficiently original to be eligible for copyright protection in the first place. Discarding the vaguely sanctimonious and ultimately irrelevant contextual information offered to the court about how Newton’s work is an evocation of the sound of an African-American spiritual choir (“Choir” sounds nothing like a spiritual) and similar talk of multiphonics, pitch clusters and ambient sounds that this writer finds of the most dubious significance in terms of musical composition, one is left with Newton’s score of three notes and performance instructions as to how to play them. This information has virtually no compositional value, and the majority gently hints at this realization when it winds up its opinion saying: “Newton is in a weak position to argue that the similarities between the works are substantial, or that an average audience would recognize the appropriation. In this respect, the minimal scoring of the ‘Choir’ composition bears emphasis, as does the relative simplicity of the relevant portion of the composition.”
Suppose Bach, rather than Newton, had written “Choir” and, along with Newton’s “senza misura” (captivatingly precious!) performance instruction, substituted the words “full organ” for Newton’s sentence about fingering and singing. Suppose further, that Bach records his performance of this work on Riverside Church’s Aeolian-Skinner, all stops pulled, blows the roof off the church, and multiphonics, overtones, pitch clusters, and ambient sounds spill full across the Hudson and into the high-rise condominiums at Fort Lee. If I perform the work “full organ” on a smaller instrument, the sound I produce will be less impressive and complex than that produced by Bach at Riverside Church, but will, nevertheless, include pitches at different intervals (at least octaves and fifths – because there is a quint stop on this organ) from the notated pitches, along with overtones and other ambient sounds. In other words, performance instructions may consistently result, among various performers, in the production of many sounds and pitches besides those indicated in the score, but these instructions do not necessarily add much to the underlying musical composition.
More to the point, Bach’s recorded performance of “Choir” would be spectacularly more significant than mine because it would include ninety seconds of Bach’s improvisation. Because he was prodigiously and unfailingly talented both as a composer and performer, any music Bach makes during these ninety seconds will be important, and once captured on tape, can be transcribed into standard notation and played and studied by others for all time. The three-note, full-organ, throat clearing snippet before and after the improvisation segment might strike listeners as a bit out-of-the-ordinary, but it is not musically significant as a part of the larger work, nor standing alone. Like Bach, Newton is a nimble improviser, and overwhelmingly, the value of “Choir” as a work of music lies in the non-notated improvised portion of the work that Newton fixed only in his recorded performance, and that the Beastie Boys never touched.
* Graber herself is not above a bit of the sort of questionable word-twisting she attributes to the majority. She starts her dissent: “…I agree with the majority’s assumption that the sampled portion of ‘Choir’ qualifies as ‘original’ and therefore is copyrightable.” On the question of the copyrightability of the musical segment in dispute the majority actually says: “We may affirm the grant of summary judgment on any basis supported by the record and need not reach each ground relied upon by the district court. Assuming that the sampled segment of the composition was sufficiently original to merit copyright protection, we nevertheless affirm on the ground that the Beastie Boys’ use was de minimis and therefore not actionable.” It seems more likely than not that the majority was suggesting here that it was not going to analyze the question of copyrightability because even if it found the segment was copyrightable, the defendants would prevail because their taking was de minimis.
Opinion by Judge Shroeder
This appeal raises the difficult and important issue of whether the incorporation of a short segment of a musical recording into a new musical recording, i.e., the practice of “sampling,” requires a license to use both the performance and the composition of the original recording. The particular sample in this case consists of a six-second, three-note segment of a performance of one of his own compositions by plaintiff, and accomplished jazz flutist, James W. Newton. The defendants, the performers who did the sampling, are the members of the musical group Beastie Boys. They obtained a license to sample the sound recording of Newton’s copyrighted performance, but they did not obtain a license to use Newton’s underlying composition, which is also copyrighted.
The district court granted summary judgment to the defendants. In a scholarly opinion, it held that no license to the underlying composition was required because, as a matter of law, the notes in question — C – D flat – C, over a held C note — lacked sufficient originality to merit copyright protection. Newton v. Diamond, 204 F. Supp. 2d 1244, 1256 (C.D. Cal. 2002). The district court also held that even if the sampled segment of the composition were original, Beastie Boys’ use was de minimis and therefore not actionable. Id. at 1259. We affirm on the ground that the use was de minimis.
Background and Procedural History
The plaintiff and appellant in this case, James W. Newton, is an accomplished avant-garde jazz flutist and composer. In 1978, he composed the song “Choir,” a piece for flute and voice intended to incorporate elements of African-American gospel music, Japanese ceremonial court music, traditional African music, and classical music, among others. According to Newton, the song was inspired by his earliest memory of music, watching four women singing in a church in rural Arkansas. In 1981, Newton performed and recorded “Choir” and licensed all rights in the sound recording to ECM Records for $ 5000. 1 The license covered only the sound recording, and it is undisputed that Newton retained all rights to the composition of “Choir.” Sound recordings and their underlying compositions are separate works with their own distinct copyrights. 17 U.S.C. § 102(a)(2), (7).
The defendants and appellees include the members of the rap and hip-hop group Beastie Boys, and their business associates. In 1992, Beastie Boys obtained a license from ECM Records to use portions of the sound recording of “Choir” in various renditions of their song “Pass the Mic” in exchange for a one-time fee of $ 1000. 2
Beastie Boys did not obtain a license from Newton to use the underlying composition.
The portion of the composition at issue consists of three notes, C – D flat – C, sung over a background C note played on the flute. When played on the sound recording licensed by Beastie Boys, the segment lasts for approximately six seconds. The score to “Choir” also indicates that the entire song should be played in a “largo/senza-misura” tempo, meaning “slowly/without-measure.” Apart from an instruction that the performer sing into the flute and finger simultaneously, the score is not further orchestrated.
The dispute between Newton and Beastie Boys centers around the copyright implications of the practice of sampling, a practice now common to many types of popular music. Sampling entails the incorporation of short segments of prior sound recordings into new recordings. The practice originated in Jamaica in the 1960s, when disc jockeys (DJs) used portable sound systems to mix segments of prior recordings into new mixes, which they would overlay with chanted or ‘scatted’ vocals. See Robert M. Szymanski, Audio Pasitiche: Digital Sampling, Intermediate Copying, Fair Use, 3 U.C.L.A. Ent. L. Rev. 271, 277 (Spring 1996). Sampling migrated to the United States and developed throughout the 1970s, using the analog technologies of the time. Id. The digital sampling involved here developed in the early 1980s with the advent of digital synthesizers having MIDI (Musical Instrument Digital Interface) keyboard controls. These digital instruments allowed artists digitally to manipulate and combine sampled sounds, expanding the range of possibilities for the use of pre-recorded music. Whereas analog devices limited artists to “scratching” vinyl records and “cutting” back and forth between different sound recordings, digital technology allowed artists to slow down, speed up, combine, and otherwise alter the samples. See id.
Pursuant to their license from ECM Records, Beastie Boys digitally sampled the opening six seconds of Newton’s sound recording of “Choir.” Beastie Boys repeated or “looped” this six-second sample as a background element throughout “Pass the Mic,” so that it appears over forty times in various renditions of the song. In addition to the version of “Pass the Mic” released on their 1992 album, “Check Your Head,” Beastie Boys included the “Choir” sample in two remixes, “Dub the Mic” and “Pass the Mic (Pt. 2, Skills to Pay the Bills). ” It is unclear whether the sample was altered or manipulated, though Beastie Boys’ sound engineer stated that alterations of tone, pitch, and rhythm are commonplace, and Newton maintains that the pitch was lowered slightly.
Newton filed the instant action in federal court on May 9, 2000, alleging violations of his copyright in the underlying composition, as well as Lanham Act violations for misappropriation and reverse passing off. The district court dismissed Newton’s Lanham Act claims on September 12, 2000, and granted summary judgment in favor of Beastie Boys on the copyright claims on May 21, 2002. Newton v. Diamond, 204 F. Supp. 2d 1244 (C.D.Cal. 2002). The district court held that the three-note segment of the “Choir” composition could not be copyrighted because, as a matter of law, it lacked the requisite originality. 204 F. Supp. 2d at 1256. The court also concluded that even if the segment were copyrightable, Beastie Boys’ use of the work was de minimis and therefore not actionable. Id. at 1259. Newton appealed.
Whether Defendants’ Use was De Minimis
We may affirm the grant of summary judgment on any basis supported by the record and need not reach each ground relied upon by the district court. See Venetian Casino Resort L.L.C. v. Local Joint Executive Bd. of Las Vegas, 257 F.3d 937, 941 (9th Cir. 2001), cert. denied, 535 U.S. 905, 152 L. Ed. 2d 142, 122 S. Ct. 1204 (2002). Assuming that the sampled segment of the composition was sufficiently original to merit copyright protection, we nevertheless affirm on the ground that Beastie Boys’ use was de minimis and therefore not actionable.
For an unauthorized use of a copyrighted work to be actionable, there must be substantial similarity between the plaintiff’s and the defendants’ works. See Ringgold v. Black Entm’t Television, Inc., 126 F.3d 70, 74 (2d Cir. 1997); Ideal Toy Corp. v. Fab-Lu Ltd. (Inc.), 360 F.2d 1021, 1022 (2d Cir. 1966). This means that even where the fact of copying is conceded, no legal consequences will follow from that fact unless the copying is substantial. See Laureyssens v. Idea Group, Inc., 964 F.2d 131, 140 (2d Cir. 1992); 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.03[A], at 13-30.2. The principle that trivial copying does not constitute actionable infringement has long been a part of copyright law. Indeed, as Judge Learned Hand observed over 80 years ago: “Even where there is some copying, that fact is not conclusive of infringement. Some copying is permitted. In addition to copying, it must be shown that this has been done to an unfair extent.” West Publ’g Co. v. Edward Thompson Co., 169 F. 833, 861 (E.D.N.Y. 1909). This principle reflects the legal maxim, de minimis non curat lex (often rendered as, “the law does not concern itself with trifles”). See Ringgold, 126 F.3d at 74-75.
The leading case on de minimis infringement in our circuit is Fisher v. Dees, 794 F.2d 432 (9th Cir. 1986), where we observed that a use is de minimis only if the average audience would not recognize the appropriation. See id. at 434 n.2 (“[A] taking is considered de minimis only if it is so meager and fragmentary that the average audience would not recognize the appropriation.”). This observation reflects the relationship between the de minimis maxim and the general test for substantial similarity, which also looks to the response of the average audience, or ordinary observer, to determine whether a use is infringing. See, e.g., Cavalier v. Random House, Inc., 297 F.3d 815, 822 (9th Cir. 2002); Castle Rock Entm’t, Inc. v. Carol Publ’g Group, Inc., 150 F.3d 132 (2d Cir. 1998) (“Two works are substantially similar where ‘the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard [the] aesthetic appeal [of the two works] as the same.'” (quoting Arica Inst., Inc. v. Palmer, 970 F.2d 1067, 1072 (2d Cir. 1992) (quoting Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960) (L. Hand, J.)))). 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.
On the facts of Fisher, this court rejected the de minimis defense because the copying was substantial: the defendant had appropriated the main theme and lyrics of the plaintiff’s song, both of which were easily recognizable in the defendant’s parody. 794 F.2d at 434 & n.2. Specifically, the defendant copied six of the thirty-eight bars to the 1950s standard, “When Sunny Gets Blue,” to make the parody, “When Sonny Sniffs Glue,” and paralleled the original lyrics with only minor variations. Id. However, despite the works’ substantial similarities, we held that the use was nevertheless non-infringing because, as a parody, it was “fair use” under 17 U.S.C. § 107. Id. at 440. We explained that the defendant’s successful fair use defense precluded a finding that the use was insubstantial or unrecognizable because “the parodist must appropriate a substantial enough portion of [the original] to evoke recognition.” Id. at 435 n.2.
This case involves not only use of a composition, as was the case in Fisher, but also use of a sound recording of a performance of that composition. Because the defendants licensed the sound recording, our inquiry is confined to whether the unauthorized use of the composition itself was substantial enough to sustain an infringement claim. Therefore, we may consider only Beastie Boys’ appropriation of the song’s compositional elements and must remove from consideration all the elements unique to Newton’s performance. Stated another way, we must “filter out” the licensed elements of the sound recording to get down to the unlicensed elements of the composition, as the composition is the sole basis for Newton’s infringement claim. See Cavalier, 297 F.3d at 822; Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1446 (9th Cir. 1994).
In filtering out the unique performance elements from consideration, and separating them from those found in the composition, we find substantial assistance in the testimony of Newton’s own experts. His experts reveal the extent to which the sound recording of “Choir” is the product of Newton’s highly developed performance techniques, rather than the result of a generic rendition of the composition. As a general matter, according to Newton’s expert Dr. Christopher Dobrian, “the contribution of the performer is often so great that s/he in fact provides as much musical content as the composer.” This is particularly true with works like “Choir,” given the nature of jazz performance and the minimal scoring of the composition. Indeed, as Newton’s expert Dr. Oliver Wilson explained:
The copyrighted score of “Choir”, as is the custom in scores written in the jazz tradition, does not contain indications for all of the musical subtleties that it is assumed the performer-composer of the work will make in the work’s performance. The function of the score is more mnemonic in intention than prescriptive.
And it is clear that Newton goes beyond the score in his performance. For example, Dr. Dobrian declared that “Mr. Newton blows and sings in such a way as to emphasize the upper partials of the flute’s complex harmonic tone, [although] such a modification of tone color is not explicitly requested in the score.” More generally, Dr. Wilson explained Newton’s performance technique as follows:
The Newton technique produces a musical event in which the component sounds resulting from the simultaneous singing of one or more pitches and the interaction of this pitch or pitches with the various components of the multiphonic array of pitches produced on the flute create a relatively dense cluster of pitches and ambient sounds that sometimes change over time.
Whatever copyright interest Newton obtained in this “dense cluster of pitches and ambient sounds,” he licensed that interest to ECM Records over twenty years ago, and ECM Records in turn licensed that interest to Beastie Boys. Thus, regardless of whether the average audience might recognize “the Newton technique” at work in the sampled sound recording, those performance elements are beyond consideration in Newton’s claim for infringement of his copyright in the underlying composition. Having licensed away his interest in the recording of his performance, Newton’s only claim is for a violation of his rights in the three-note sequence transcribed in the composition.
Once we have isolated the basis of Newton’s infringement action — the “Choir” composition, devoid of the unique performance elements found only in the sound recording — we turn to the nub of our inquiry: whether Beastie Boys’ unauthorized use of the composition, as opposed to their authorized use of the sound recording, was substantial enough to sustain an infringement action. In answering that question, we must distinguish between the degree and the substantiality of the works’ similarity. Cf. Ringgold, 126 F.3d at 74-75; 4 Nimmer § 13.03[A], at 13-45. The practice of music sampling will often present cases where the degree of similarity is high. Indeed, unless the sample has been altered or digitally manipulated, it will be identical to the original. Yet as Nimmer explains, “[if] the similarity is only as to nonessential matters, then a finding of no substantial similarity should result.” 4 Nimmer § 13.03[A], at 13-48; cf. Warner Bros. v. Am. Broad. Cos., 720 F.2d 231, 242 (2d. Cir. 1983). This reflects the principle that the substantiality requirement applies throughout the law of copyright, including cases of music sampling, even where there is a high degree of similarity.
The high degree but limited scope of similarity between the works here place Newton’s claim for infringement into the class of cases that allege what Nimmer refers to as “fragmented literal similarity.” 4 Nimmer § 13.03[A], at 13-45. Fragmented literal similarity exists where the defendant copies a portion of the plaintiff’s work exactly or nearly exactly, without appropriating the work’s overall essence or structure. Id. Because the degree of similarity is high in such cases, the dispositive question is whether the similarity goes to trivial or substantial elements. The substantiality of the similarity is measured by considering the qualitative and quantitative significance of the copied portion in relation to the plaintiff’s work as a whole. See, e.g., Worth v. Selchow & Righter Co., 827 F.2d 569, 570 n. 1 (9th Cir. 1987) (“The relevant inquiry is whether a substantial portion of the protectible material in the plaintiff’s work was appropriated — not whether a substantial portion of defendant’s work was derived from plaintiff’s work.”); Jarvis v. A&M Records, 827 F. Supp. 282, 289-90 (D.N.J. 1993); 4 Nimmer § 13.03[A], at 13-47 to 48 & n.97. This focus on the sample’s relation to the plaintiff’s work as a whole embodies the fundamental question in any infringement action, as expressed more than 150 years ago by Justice Story: whether “so much is taken[ ] that the value of the original is sensibly diminished, or the labors of the original author are substantially to an injurious extent appropriated by another.” Folsom v. Marsh, 9 F. Cas. 342, 348, F. Cas. No. 4901 (C.C. Mass. 1841) (No. 4901). Courts also focus on the relationship to the plaintiff’s work because a contrary rule that measured the significance of the copied segment in the defendant’s work would allow an unscrupulous defendant to copy large or qualitatively significant portions of another’s work and escape liability by burying them beneath non-infringing material in the defendant’s own work, even where the average audience might recognize the appropriation. Cf. Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 56 (2d Cir. 1936) (“It is enough that substantial parts were lifted; no plagiarist can excuse the wrong by showing how much of his work he did not pirate.”). Thus, as the district court properly concluded, the fact that Beastie Boys “looped” the sample throughout “Pass the Mic” is irrelevant in weighing the sample’s qualitative and quantitative significance. See Newton, 204 F. Supp. 2d at 1257.
When viewed in relation to Newton’s composition as a whole, the sampled portion is neither quantitatively nor qualitatively significant. Quantitatively, the three-note sequence appears only once in Newton’s composition. It is difficult to measure the precise relationship between this segment and the composition as a whole, because the score calls for between 180 and 270 seconds of improvisation. When played, however, the segment lasts six seconds and is roughly two percent of the four-and-a-half-minute “Choir” sound recording licensed by Beastie Boys. 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” consist of notes separated by whole- and half-steps from their neighbors; the remainder of the composition calls for sections of improvisation that range between 90 and 180 seconds in length. Although the sampled section may be representative of the scored portions of the composition, Newton has failed to offer any evidence as to this section’s particular significance in the composition as a whole. Instead, his experts emphasize the significance of Newton’s performance, the unique elements of which Beastie Boys properly licensed.
Yet Newton maintains that the testimony of his experts creates a genuine issue of material fact on the substantiality of the copying. To the extent the expert testimony is relevant, it is not helpful to Newton. On the key question of whether the sample is quantitatively or qualitatively significant in relation to the composition as a whole, his experts are either silent or fail to distinguish between the sound recording, which was licensed, and the composition, which was not. Moreover, their testimony on the composition does not contain anything from which a reasonable jury could infer the segment’s significance in relation to the composition as a whole: rather, Dr. Dobrian described the three-note sequence at issue as “a simple ‘neighboring tone’ figure.” The district court cited two pieces by Gyorgy Ligeti and Jacob Druckman employing similar figures. Newton, 204 F. Supp. 2d at 1255. This evidence is consistent with the opinion of Beastie Boys’ expert, Dr. Lawrence Ferrara, who stated that the sampled excerpt from the “Choir” composition “is merely a common, trite, and generic three-note sequence, which lacks any distinct melodic, harmonic, rhythmic or structural elements.” Dr. Ferrara also described the sequence as “a common building block tool” used over and over again by major composers in the 20th century, particularly the ’60s and ’70s, just prior to James Newton’s usage.”
Having failed to demonstrate any quantitative or qualitative significance of the sample in the “Choir” composition as a whole, Newton is in a weak position to argue that the similarities between the works are substantial, or that an average audience would recognize the appropriation. In this respect, the minimal scoring of the “Choir” composition bears emphasis, as does the relative simplicity of the relevant portion of the composition. On the undisputed facts of this case, we conclude that an average audience would not discern Newton’s hand as a composer, apart from his talent as a performer, from Beastie Boys’ use of the sample. The works are not substantially similar: Beastie Boys’ use of the “Choir” composition was de minimis. There is no genuine issue of material fact, and the grant of summary judgment was appropriate.
Because Beastie Boys’ use of the sound recording was authorized, the sole basis of Newton’s infringement action is his remaining copyright interest in the “Choir” composition. We hold today that Beastie Boys’ use of a brief segment of that composition, consisting of three notes separated by a half-step over a background C note, is not sufficient to sustain a claim for copyright infringement. We affirm the district court’s grant of summary judgment on the ground that Beastie Boys’ use of the composition was de minimis and therefore not actionable.
DISSENT: GRABER, Circuit Judge, dissenting:
I respectfully dissent. The majority has laid out correctly the legal principles that apply in this case, and I agree with the majority’s assumption that the sampled portion of “Choir” qualifies as “original” and therefore is copyrightable. Maj. op. at 15772. However, on the record before us, a jury reasonably could find that Beastie Boys’ use of the sampled material was not de minimis. Therefore, summary judgment is inappropriate.
As the majority observes, a use is de minimis only if an average audience would not recognize the appropriation. Fisher v. Dees, 794 F.2d 432, 434 n.2 (9th Cir. 1986). The majority is correct that James Newton’s considerable skill adds many recognizable features to the performance sampled by Beastie Boys. Even after those features are “filtered out,” however, the composition, standing alone, is distinctive enough for a jury reasonably to conclude that an average audience would recognize the appropriation of the sampled segment and that Beastie Boys’ use was therefore not de minimis.
Newton has presented evidence that the compositional elements of “Choir” are so compositionally distinct that a reasonable listener would recognize the sampled segment even if it were performed by the featured flautist of a middle school orchestra. It is useful to begin by observing that the majority’s repeated references to the sampled segment of “Choir” as a “3-note sequence” * are overly simplified. The sampled segment is actually a three-note sequence sung above a fingered held C note, for a total of four separate tones. ** 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.
The majority is simply mistaken in its assertion, maj. op. at 15778, that Newton’s experts did not present evidence of the qualitative value of the compositional elements of the sampled material sufficient to survive summary judgment. The majority is similarly mistaken when it says, id., that Newton’s experts failed to distinguish between the sound recording and the composition. To the contrary, Newton presented considerable expert evidence that the composition alone is distinctive and recognizable.
Second, Newton presented a letter from Professor Christopher Dobrian of the University of California, Irvine. The majority deals with Professor Dobrian’s evidence by stating: “Dr. Dobrian described the three-note sequence at issue as ‘a simple, “neighboring tone” figure.'” Maj. op. at 15778. As the passage quoted below demonstrates, the majority fundamentally misreads Professor Dobrian’s statement by taking it out of context; in the process the majority reverses his intended meaning. Professor Dobrian actually concludes:
Applying traditional analysis to this brief excerpt from Newton’s “Choir”–i.e., focusing solely on the notated pitches–a theorist could conclude (erroneously, in my opinion) that the excerpt contains an insignificant amount of information because it contains a simple “neighboring-tone” figure: C to D-flat and back to C. . . . If, on the other hand, one considers the special playing technique described in the score (holding one fingered note constant while singing the other pitches) and the resultant complex, expressive effect that results, it is clear that the “unique expression” of this excerpt is not solely in the pitch choices, but is actually in those particular pitches performed in that particular way on that instrument. These components in this particular combination are not found anywhere else in the notated music literature, and they are unique and distinctive in their sonic/musical result.
It is important to note that Professor Dobrian is not talking about Newton’s performance of the sampled portion. Rather, he is speaking of the distinctiveness of the underlying composition. The “playing technique” is not a matter of personal performance, but is a built-in feature of the score itself. In essence, Dobrian is stating that any flautist’s performance of the sampled segment would be distinctive and recognizable, because the score itself is distinctive and recognizable.
The majority, then, misreads the record when it states that Newton failed to offer evidence that the sampled material is qualitatively significant. In fact, Newton presented evidence, as described above, to show that an average and reasonable listener would recognize Beastie Boys’ appropriation of the composition of the sampled material.***
1 In relevant part, the license reads as follows:
1) [Newton] herewith grants, transfers and assigns to ECM without limitations and restrictions whatsoever the exclusive rights to record his performances and to exploit these recordings in perpetuity throughout the world in any manner whatsoever.
. . . .
3) The grant of rights according to section 1) especially, includes the rights to manufacture in quantitiy [sic], to distribute, to license to others, as well as to perform the recordings in public and to utilize it in radio, TV, or in other ways without any restrictions.
2 In relevant part, the license reads as follows:
[ECM Records], as owner of the applicable sound recording rights, including but not limited to recording, reproduction, synchronization and performing rights, grants to Beastie Boys, its licensees, assigns, employees and agents (the “Licensed Parties”), the irrevocable non-exclusive license and right to copy portions (if any) of the sound recording entitled “Choir” performed by James Newton (the “Sample”); to embody the sample in some or all versions of the selection entitled “Pass the Mic” by the Beastie Boys (all versions of “Pass the Mic” which contain the Sample are referred to as the “Selection”); to reproduce, distribute and otherwise exploit the Sample as part of the Selection in all media, whether now known or hereinafter developed, including, without limitation, all record formats throughout the world in perpetuity.
* Maj. op. at 15776, 15777, 15778.
** The sampled segment of the composition is scored as shown in the Appendix.
*** Because Newton has established that a jury reasonably could find that the sampled portion of “Choir” is qualitatively significant, we need not address the question of the portion’s quantitative significance. See Worth v. Selchow & Righter Co., 827 F.2d 569, 570 n.1 (9th Cir. 1987) (noting that “a determination of the qualitative importance of the material to the plaintiff’s work is more significant than a quantitative calculation of the portion allegedly appropriated by the defendant”).