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April 17, 2014

The Notorious Fair Use: Why New Sampling Case May be the Beginning of the End of the Infringement Shakedown

Amid Leroy Hutson's Infringement Accusations, the Will to Test Fair Use in the Courts Grows Stronger


It looks like the late Notorious B.I.G.’s impact on music may have a second act. Only this time, the impact will likely hold critical implications for sampling and U.S. copyright law. On March 31, 2014, in what was considered to be a preemptive lawsuit, the estate of Notorious B.I.G. filed for declaratory judgment in a California federal court, seeking relief that B.I.G’s 1994 song “The What” — off of the classic album Ready to Die — was not a copyright infringement of the 1974 song “Can’t Say Enough About Mom,” performed by Leroy Hutson (co-written by Hutson and Michael Hawkins). While the suit raised the issues of valid copyright ownership, statute of limitations, and the doctrine of laches (waiting too long to file the claim), and producer indemnification, it was the fair use claim that undoubtedly had many of those on both sides of the sampling and copyright law quandary closely watching how this case would turn out.

The Complaint

According to the complaint filed by lawyers on behalf of B.I.G.’s estate, Leroy Huston “began a campaign of accusations against Plaintiff [Christopher Wallace PKA ‘Notorious B.I.G.,’ ‘Biggie,’ and ‘Biggie Smalls’], claiming that the Recording [‘The What,’ produced by Easy Mo Bee and featuring Method Man] violated his alleged copyright in ‘Can’t Say Enough About Mom.’” The complaint describes Hutson’s “campaign of accusations” as having began in 2012, when lawyers for Hutson sent Bad Boy Records notice of alleged copyright infringement, and having included numerous requests for financial compensation (as much as 50% of all income attributable to the recording) and part ownership (also as much as 50%); each request routinely made with the accompanying threat of a copyright infringement lawsuit. [source case: Notorious B.I.G. LLC v Lee Hutson, 2:14-cv-02415 (3/31/14).]

In other words, Hutson repeatedly harassed Bad Boy Records (and Atlantic Records, Warner Music Group, and EMI), likely in an attempt to force a quick financial settlement in exchange for not filing a copyright infringement lawsuit for an uncleared sample of Hutson’s song. These “ongoing, intensifying, and ultimately baseless accusations,” especially Hutson’s recent (and second) attempt to get a “legal hold” placed on “all royalties of the Recording” and to put a stop to “all distribution of the album [Ready to Die],” are what prompted the estate of Notorious B.I.G. to file civil action for declaratory relief.

They Were Never Scared — the Law Was Always on Their Side

Rather than cave to the threat of a copyright infringement lawsuit and settle out of court (as the labels tend to do), the estate of Notorious B.I.G. retained an expert to help assist them in analysis and comparison of the two songs at question. Citing in the complaint their expert’s findings and including Easy Mo Bee’s (the producer of the B.I.G. track) meticulous, multidimensional description of how he composed “The What,” the estate of Notorious B.I.G. — which did not deny the actual sampling — asserted in the complaint that the “use has not violated any valid copyright interest held by” Hutson, and, more importantly, that the “use” is both “de minimis and fair use.” Thus, B.I.G.’s estate rejected the common infringement shakedown and balked at paying Mr. Hutson or assigning an owner percentage to him, particularly without first doing their own due diligence. Having done their due diligence, B.I.G.’s estate concluded that “The What” did not infringe upon “Can’t Say Enough About Mom,” and they demonstrated their preparedness to prove it in court. In other words, Hutson’s infringement shakedown attempt was thwarted mainly because the estate of Notorious B.I.G. was, unlike the labels and most established artists, never scared to affirm fair use.

Thing is, When determining unlawful appropriation, the courts engage in a substantial similarity analysis in which quantitative and qualitative factors are assessed. An allegedly infringing work is considered substantially similar when it is nearly indistinguishable from the copyrighted work it appropriated. Quantitative analysis examines whether the sample constituted a substantial portion of the appropriated work, NOT whether it made up a substantial portion of the allegedly infringing work. Qualitative analysis considers whether the sample (copied portion) is qualitatively important to the allegedly infringed work as a whole. This means how critical, qualitatively speaking, is the sample (copied portion) to the appropriated work, and as a whole, how similar are the allegedly infringing song and the song it sampled. In order to determine proof of substantial similarity in a copyright infringement case, the courts conduct a two-part test of extrinsic similarity and intrinsic similarity. The extrinsic test is objective in nature and requires the party who brought the infringement claim to identify specific criteria which it alleges have been copied. (For a more thorough understanding of fair use and a proper fair use analysis, please read my book The Art of Sampling.)

So at question were three things: 1) As a whole, how similar is “The What” and “Can’t Say Enough About Mom?;” 2) How critical, qualitatively speaking, is the sample (copied portion) to “Can’t Say Enough About Mom?;” and 3) Does “The What” sample a substantial portion of “Can’t Say Enough About Mom?” In my own analysis and comparison, I found no substantial similarity between “The What” and “Can’t Say Enough About Mom.” In fact, if there ever was a more clear cut case of fair use, I haven’t heard it. Quantitatively and qualitatively speaking, the sample is a 4-second snippet of a barely audible fade out that appears — only once on the entire 5:54 long song — at the 5:50 mark. This snippet is neither substantial to the melody, rhythm, chorus, or main theme of “Can’t Say Enough About Mom.” And even an “ordinary person” could tell that “Can’t Say Enough About Mom” is a song about a son’s tribute to his mother, wherein he repeatedly professes his love and respect for his mother. Whereas “The What” is a braggadocios song about a skeptical worldview (the hook says, “Fuck the World!...”) in which the protagonists praise the values of being independent, street wise, and well armed. Certainly, the estate of Notorious B.I.G. came to a similar conclusion in their own analysis.

Origins of the Infringement Shakedown, and Why Hutson thought He Could Threaten His Way to a Nice Financial Settlement

To truly understand how the “infringement shakedown” came to be, you must first look at Grand Upright v. Warner Bros. and Bridgeport v. Dimension Films, two landmark court cases involving sampling and copyright law. (I cover both cases in greater detail in my book The Art of Sampling.)

In Grand Upright Music, Ltd. v. Warner Bros. Records, Inc. (New York, 1991), songwriter/recording artist Gilbert O’Sullivan filed suit against recording artist Biz Markie and his then-record labels Warner Bros. Records and Cold Chillin’, charging that “Alone Again,” a song on Markie’s album I Need A Haircut, contained an unauthorized “digital sample” of O’Sullivan’s 1972 hit song “Alone Again (Naturally)." The court found that Biz Markie/Warner Bros., et. al had willfully committed copyright infringement, granted an injunction against Warner Bros. to prevent further copyright infringement of Grand Upright’s song “Alone Again,” and referred the defendants for criminal prosecution. But before sentencing, the parties settled out of court for an undisclosed sum.

Although the question of fair use was never raised in Grand Upright, after the court’s decision, many labels took a better-to-be-safe-than-sorry stance, insisting that all samples be cleared. More importantly, following Grand Upright, the art of sampling was, in effect, criminalized and assigned a stigma of “theft” and “piracy.” A stigma that still plagues the art of sampling today.

Bridgeport Music, Inc. v. Dimension Films (Tennessee, 2001) centered around the use of N.W.A.’s song “100 Miles and Runnin’” in the 1998 No Limit Films produced/Dimension Films distributed film “I Got The Hook Up.” For part of the creation of the song “100 Miles and Runnin’,” N.W.A. had sampled a small piece of Funkadelic’s song “Get Off Your Ass and Jam.” This was all done without Funkadelic’s permission and with no compensation paid to either Bridgeport Music, which at the time owned the publishing rights to Funkadelic’s music, or to Westbound Records, which at the time owned the sound recording copyright to “Get Off Your Ass and Jam.” Bridgeport Music, Westbound Records, and other plaintiffs filed suit against Dimension Films, et. al, claiming that “100 Miles and Runnin’” infringed on their copyright in the song “Get Off Your Ass and Jam.” Dimension Films/No Limit argued that the sample in question was de minimis (legally insubstantial), and therefore, it did not amount to actionable copying under copyright law. The district court found the de minimis defense to be appropriate, and granted summary judgment for Dimension Films/No Limit. However, the appeals court reversed the district court and ruled that sampling of a sound recording — regardless of length— was, in effect, unlawful without the permission of the copyright holder. "Get a license or do not sample…," the circuit court wrote, essentially making the outrageously ridiculous claim that any unlicensed sampling of a sound recording violates the copyright of the copyright holder.

BUT, it’s important to note that the circuit court did not consider fair use (as they should have) in their decision. In fact, the court expressly noted that its decision did not preclude the availability of a fair use defense, even in the context of sampling. Which implies that the court, despite its nonsensical ruling, actually recognized that some instances of sampling do qualify as fair use.

Since Grand Upright and Bridgeport, RIAA labels have sought to clear samples — no matter the nature of the use — rather than take the chance of being sued for copyright infringement; “sample trolls” like Bridgeport Music have gone wild with infringement suits; and just the threat of a copyright infringement lawsuit has prompted lopsided undue settlements. This has lead to a tepid approach to sampling by the RIAA labels and many music makers. In turn, an ad-hoc (mostly one-sided and useless) sample clearance system has emerged. But as I make clear in The Art of Sampling, clearance of all samples isn’t the law, it’s just become industry custom!

Mud and Deception on the Profile of Fair Use

The profile of the fair use doctrine has all but faded in the music industry, as the RIAA labels have demonstrated no will to test fair use in the courts. But the lack of will to test fair use in the courts isn’t surprising. When it comes to the question of sampling and fair use, the RIAA labels and many well-known music lawyers, notably Dina LaPolt, have long tried to discredit fair use, typically misrepresenting it and even attacking its very concept and role in U.S. copyright law. Of course, these attacks have not been born out by a proper reading of the fair use doctrine as it's codified in the U.S. code. Strikingly, LaPolt and other similar opponents of fair use routinely mis-define fair use: On one hand, overlooking the fact that fair use is a critical safeguard meant to protect against the expansion of the "limited monopoly" of copyright holders, and on the other hand, consistently describing fair use as nothing more than "JUST a defense," rather than a right of the public.

The Will to Test Fair Use in the Courts Continues to Grow

Whether the estate of the Notorious B.I.G. was simply shielding itself from any potential lawsuit from Leroy Hutson or aiming for some grander statement, I think it’s clear that this case, one way or the other, is a watershed moment in the history of the sampling and copyright law quandary. Notwithstanding the other issues raised in the filing, namely the validity of Hutson’s copyright ownership (sorry, a Wikipedia citing certainly does not establish Hutson’s copyright in a song), this is a perfect test case for sampling and fair use.

On April 2, 2014, two days after the estate of the Notorious B.I.G. filed their complaint, Hutson formally filed a lawsuit for copyright infringement in the U.S. District Court, Southern District of New York, in Manhattan — Hutson et al v. The Estate of Christopher Wallace et al — against the estate of B.I.G., Bad Boy, EMI, Universal Music Group, and Warner Music Group. This New York case was stayed, pending a resolution of Hutson’s Motion to Dismiss the California case.

On July 3, 2014, the preemptive suit brought by the estate of Notorious B.I.G. was dismissed (as perhaps it should have been, given that the California court had no jurisdiction), and legal action continued to move forward in the New York court — where the estate of Notorious B.I.G. filed a motion to dismiss on September 5, 2014 — all the way up until October 24, 2014. On December 21, 2015, the New York court filed its decision, granting B.I.G.’s estate’s motion to dismiss.

However, none of the fair use issues raised by B.I.G.’s estate were addressed in the court’s decision. Instead, the court held that since Hutson could not prove ownership of the copyright in “Can’t Say Enough About Mom” (Hutson acknowledged a settlement that he made with Rhino and Warner Records in 2008 over Curtom Records recordings in which he granted copyright ownership of “Can’t Say Enough About Mom” and other recordings to Rhino), he lacked standing to sue B.I.G.’s estate for copyright infringement.

So what now? Does this mean that B.I.G.’s estate will face a lawsuit from Rhino for the same alleged infringement? I highly doubt it. But if they do, I can’t see the defense by B.I.G.’s being any different or less persuasive. So while Judge Sullivan didn’t get into the fair use issues that B.I.G.’s estate raised in its defense, this case is still important. For one thing, B.I.G.’s estate had the will to fight this copyright infringement lawsuit; their aggressive action will only serve to prompt others to do the same in the face of similar lawsuits. Second, and more importantly, the action taken by B.I.G.’s estate raises the profile of fair use and helps make the will to test fair use in other sampling/copyright infringement cases much stronger. I’ve long held that the infringement shakedowns in music sampling would end sooner or later. On the heels of this B.I.G. case (and the Jay-Z TufAmerica v. WB Music Corp. et al case, which I cover in the following section), it looks like the ending’s going to be much sooner.

The music and videos below are presented here for the purpose of scholarship.

The Notorious B.I.G. feat. Method Man – “The What” (Prod. by Easy Mo Bee)

Leroy Hutson - “Can't Say Enough About Mom<"


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