NEWTON V. DIAMOND 591 Cite As 349 F.3D 591 (9Th Cir

NEWTON v. DIAMOND 591 Cite as 349 F.3d 591 (9th Cir. 2003)

Graber, Circuit Judge, dissented and James W. NEWTON, Jr., dba Janew filed opinion. Music, Plaintiff–Appellant, v. 1. Federal Courts O762 Michael DIAMOND; Adam Horowitz; Appellate court may affirm grant of Adam Yauch, dba Beastie Boys; Capi- summary judgment on any basis supported tol Records, Inc., a Delaware Corpora- by record, and need not reach each ground tion; Grand Royal Records, Inc., A relied upon by district court. California Corporation; Universal Po- lygram International Publishing, Inc., 2. Copyrights and Intellectual Property a Delaware Corporation; Brooklyn O66 Dust Music, an entity of unknown ori- Even if three-note sequence from au- gin; Mario Caldato, Jr., an individual; thor’s musical composition was sufficiently Janus Films, LLC, a New York Limit- original to warrant copyright protection, ed Liability Company; Criterion Col- hip-hop band’s sampling of sequence in its lection, a California Partnership; own song was de minimis, and thus not Voyager Publishing Company, Inc., a infringing; band had licensed author’s re- Delaware Corporation; Sony Music cording of composition and, though band Entertainment Group, a Delaware had looped sample throughout their song, Corporation; BMG Direct Marketing, it was neither quantitatively nor qualita- Inc., a Delaware Corporation; The tively significant portion of author’s com- Columbia House Company, an entity position. of unknown origin, Defendants–Ap- pellees. 3. Copyrights and Intellectual Property O53(1) No. 02–55983. For unauthorized use of copyrighted United States Court of Appeals, work to be actionable, there must be sub- Ninth Circuit. stantial similarity between protected and accused works, that is, copying must be Argued and Submitted April 7, 2003. substantial and not trivial. Filed Nov. 4, 2003. 4. Copyrights and Intellectual Property O53(1) Author of musical composition Copying of copyrighted work is de brought copyright infringement action minimis, and thus not actionable, only if it against alternative rock and hip-hop band. is so meager and fragmentary that aver- The United States District Court for the age audience would not recognize appro- Central District of California, 204 priation. F.Supp.2d 1244, Nora Margaret Manella, J., granted summary judgment of nonin- fringement, and author appealed. The Court of Appeals, Schroeder, Chief Judge, held that band’s sampling of three-note Alan Korn, Law Offices of Alan Korn, sequence from composition was de minim- Berkeley, CA, for the plaintiff-appellant. is. Adam F. Streisand and David C. Nelson, Affirmed. Loeb & Loeb, LLP, and Barry E. Mallen, 592 349 FEDERAL REPORTER, 3d SERIES

Manatt, Phelps & Phillips, LLP, Los An- use Newton’s underlying composition, geles, CA, for the defendants-appellees. which is also copyrighted. Todd M. Gascon (argued), Law Offices The district court granted summary of Todd M. Gascon, San Francisco, CA, for judgment to the defendants. In a scholar- amici curiae Philip Glass, et al, in support ly opinion, it held that no license to the of plaintiff–appellant. underlying composition was required be- David M. Given and Sarah Sevier Farn- cause, as a matter of law, the notes in bach, Phillips, Erlewine & Given, LLP, question—C–D flat—C, over a held C San Francisco, CA, for the amici curiae DJ note—lacked sufficient originality to merit Shadow, et al., in support of defendants– copyright protection. Newton v. Dia- appellees. mond, 204 F.Supp.2d 1244, 1256 (C.D.Cal. Appeal from the United States District 2002). The district court also held that Court for the Central District of Califor- even if the sampled segment of the compo- nia; Nora M. Manella, District Judge. sition were original, Beastie Boys’ use was Presiding. D.C. No. CV–00–04909–NM. de minimis and therefore not actionable. Id. at 1259. We affirm on the ground that Before SCHROEDER, Chief Judge, THOMPSON, and GRABER, Circuit the use was de minimis. Judges. Background and Procedural History

Opinion by Chief Judge SCHROEDER. The plaintiff and appellant in this case, Dissent by Judge GRABER. James W. Newton, is an accomplished avant-garde jazz flutist and composer. In SCHROEDER, Chief Judge: 1978, he composed the song ‘‘Choir,’’ a This appeal raises the difficult and im- piece for flute and voice intended to incor- portant issue of whether the incorporation porate elements of African–American gos- of a short segment of a musical recording pel music, Japanese ceremonial court mu- into a new musical recording, i.e., the prac- sic, traditional African music, and classical tice of ‘‘sampling,’’ requires a license to use music, among others. According to New- both the performance and the composition ton, the song was inspired by his earliest of the original recording. The particular sample in this case consists of a six-second, memory of music, watching four women three-note segment of a performance of singing in a church in rural Arkansas. In one of his own compositions by plaintiff, 1981, Newton performed and recorded and accomplished jazz flutist, James W. ‘‘Choir’’ and licensed all rights in the sound 1 Newton. The defendants, the performers recording to ECM Records for $5000. who did the sampling, are the members of The license covered only the sound record- the musical group Beastie Boys. They ob- ing, and it is undisputed that Newton re- tained a license to sample the sound re- tained all rights to the composition of cording of Newton’s copyrighted perform- ‘‘Choir.’’ Sound recordings and their un- ance, but they did not obtain a license to derlying compositions are separate works

1. In relevant part, the license reads as fol- TTTT lows: 3) The grant of rights according to section 1) [Newton] herewith grants, transfers and 1) especially, includes the rights to manu- assigns to ECM without limitations and re- facture in quantitiy [sic], to distribute, to strictions whatsoever the exclusive rights to license to others, as well as to perform the record his performances and to exploit recordings in public and to utilize it in these recordings in perpetuity throughout radio, TV, or in other ways without any the world in any manner whatsoever. restrictions. NEWTON v. DIAMOND 593 Cite as 349 F.3d 591 (9th Cir. 2003) with their own distinct copyrights. 17 would overlay with chanted or ‘scatted’ U.S.C. § 102(a)(2), (7). vocals. See Robert M. Szymanski, Audio The defendants and appellees include Pasitiche: Digital Sampling, Intermedi- the members of the rap and hip-hop group ate Copying, Fair Use, 3 U.C.L.A. Ent. L. Beastie Boys, and their business associ- Rev. 271, 277 (Spring 1996). Sampling ates. In 1992, Beastie Boys obtained a migrated to the United States and devel- license from ECM Records to use portions oped throughout the 1970s, using the ana- of the sound recording of ‘‘Choir’’ in vari- log technologies of the time. Id. The digi- ous renditions of their song ‘‘Pass the Mic’’ tal sampling involved here developed in in exchange for a one-time fee of $1000.2 the early 1980s with the advent of digital Beastie Boys did not obtain a license from synthesizers having MIDI (Musical Instru- Newton to use the underlying composition. ment Digital Interface) keyboard controls. These digital instruments allowed artists The portion of the composition at issue digitally to manipulate and combine sam- consists of three notes, C–D flat—C, sung pled sounds, expanding the range of possi- over a background C note played on the bilities for the use of pre-recorded music. flute. When played on the sound record- Whereas analog devices limited artists to ing licensed by Beastie Boys, the segment ‘‘scratching’’ vinyl records and ‘‘cutting’’ lasts for approximately six seconds. The back and forth between different sound score to ‘‘Choir’’ also indicates that the recordings, digital technology allowed art- entire song should be played in a ‘‘lar- ists to slow down, speed up, combine, and go/senza-misura’’ tempo, meaning ‘‘slow- otherwise alter the samples. See id. ly/without-measure.’’ Apart from an in- struction that the performer sing into the Pursuant to their license from ECM flute and finger simultaneously, the score Records, Beastie Boys digitally sampled is not further orchestrated. the opening six seconds of Newton’s sound The dispute between Newton and Beast- recording of ‘‘Choir.’’ Beastie Boys re- ie Boys centers around the copyright im- peated or ‘‘looped’’ this six-second sample plications of the practice of sampling, a as a background element throughout ‘‘Pass practice now common to many types of the Mic,’’ so that it appears over forty popular music. Sampling entails the incor- times in various renditions of the song. In poration of short segments of prior sound addition to the version of ‘‘Pass the Mic’’ recordings into new recordings. The prac- released on their 1992 album, ‘‘Check Your tice originated in Jamaica in the 1960s, Head,’’ Beastie Boys included the ‘‘Choir’’ when disc jockeys (DJs) used portable sample in two remixes, ‘‘Dub the Mic’’ and sound systems to mix segments of prior ‘‘Pass the Mic (Pt. 2, Skills to Pay the recordings into new mixes, which they Bills).’’ It is unclear whether the sample

2. In relevant part, the license reads as fol- James Newton (the ‘‘Sample’’); to embody lows: the sample in some or all versions of the [ECM Records], as owner of the applicable selection entitled ‘‘Pass the Mic’’ by the sound recording rights, including but not Beastie Boys (all versions of ‘‘Pass the Mic’’ limited to recording, reproduction, synchro- which contain the Sample are referred to as nization and performing rights, grants to the ‘‘Selection’’); to reproduce, distribute Beastie Boys, its licensees, assigns, employ- and otherwise exploit the Sample as part of ees and agents (the ‘‘Licensed Parties’’), the the Selection in all media, whether now irrevocable non-exclusive license and right known or hereinafter developed, including, to copy portions (if any) of the sound re- without limitation, all record formats cording entitled ‘‘Choir’’ performed by throughout the world in perpetuity. 594 349 FEDERAL REPORTER, 3d SERIES

was altered or manipulated, though Beast- 126 F.3d 70, 74 (2d Cir.1997); Ideal Toy ie Boys’ sound engineer stated that altera- Corp. v. Fab–Lu Ltd. (Inc.), 360 F.2d 1021, tions of tone, pitch, and rhythm are com- 1022(2d Cir.1966). This means that even monplace, and Newton maintains that the where the fact of copying is conceded, no pitch was lowered slightly. legal consequences will follow from that Newton filed the instant action in feder- fact unless the copying is substantial. See al court on May 9, 2000, alleging violations Laureyssens v. Idea Group, Inc., 964 F.2d of his copyright in the underlying composi- 131, 140 (2d Cir.1992); 4 Melville B. Nim- tion, as well as Lanham Act violations for mer & David Nimmer, Nimmer on Copy- misappropriation and reverse passing off. right § 13.03[A], at 13–30.2. The principle The district court dismissed Newton’s that trivial copying does not constitute ac- Lanham Act claims on September 12, 2000, tionable infringement has long been a part and granted summary judgment in favor of of copyright law. Indeed, as Judge Beastie Boys on the copyright claims on Learned Hand observed over 80 years ago: May 21, 2002. Newton v. Diamond, 204 ‘‘Even where there is some copying, that F.Supp.2d 1244 (C.D.Cal.2002). The dis- fact is not conclusive of infringement. trict court held that the three-note seg- Some copying is permitted. In addition to ment of the ‘‘Choir’’ composition could not copying, it must be shown that this has be copyrighted because, as a matter of law, been done to an unfair extent.’’ West it lacked the requisite originality. 204 Publ’g Co. v. Edward Thompson Co., 169 F.Supp.2d at 1256. The court also con- F. 833, 861 (E.D.N.Y.1909). This principle cluded that even if the segment were copy- reflects the legal maxim, de minimis non rightable, Beastie Boys’ use of the work curat lex (often rendered as, ‘‘the law does was de minimis and therefore not action- not concern itself with trifles’’). See Ring- able. Id. at 1259. Newton appealed. gold, 126 F.3d at 74–75. Whether Defendants’ Use was De Min- [4] The leading case on de minimis imis infringement in our circuit is Fisher v. [1, 2] We may affirm the grant of sum- Dees, 794 F.2d 432 (9th Cir.1986), where mary judgment on any basis supported by we observed that a use is de minimis only the record and need not reach each ground if the average audience would not recog- relied upon by the district court. See Ve- nize the appropriation. See id. at 434 n.2 netian Casino Resort L.L.C. v. Local Joint (‘‘[A] taking is considered de minimis only Executive Bd. of Las Vegas, 257 F.3d 937, if it is so meager and fragmentary that the 941 (9th Cir.2001), cert. denied, 535 U.S. average audience would not recognize the 905, 122 S.Ct. 1204, 152 L.Ed.2d 142 appropriation.’’). This observation reflects (2002). Assuming that the sampled seg- the relationship between the de minimis ment of the composition was sufficiently maxim and the general test for substantial original to merit copyright protection, we similarity, which also looks to the response nevertheless affirm on the ground that of the average audience, or ordinary ob- Beastie Boys’ use was de minimis and server, to determine whether a use is in- therefore not actionable. fringing. See, e.g., Cavalier v. Random [3] For an unauthorized use of a copy- House, Inc., 297 F.3d 815, 822 (9th Cir. righted work to be actionable, there must 2002); Castle Rock Entm’t, Inc. v. Carol be substantial similarity between the plain- Publ’g Group, Inc., 150 F.3d 132(2d Cir. tiff’s and the defendants’ works. See 1998) (‘‘Two works are substantially simi- Ringgold v. Black Entm’t Television, Inc., lar where ‘the ordinary observer, unless he NEWTON v. DIAMOND 595 Cite as 349 F.3d 591 (9th Cir. 2003)

set out to detect the disparities, would be elements unique to Newton’s performance. disposed to overlook them, and regard Stated another way, we must ‘‘filter out’’ [the] aesthetic appeal [of the two works] as the licensed elements of the sound record- the same.’ ’’ (quoting Arica Inst., Inc. v. ing to get down to the unlicensed elements Palmer, 970 F.2d 1067, 1072 (2d Cir.1992) of the composition, as the composition is (quoting Peter Pan Fabrics, Inc. v. Martin the sole basis for Newton’s infringement Weiner Corp., 274 F.2d 487, 489 (2d Cir. claim. See Cavalier, 297 F.3d at 822; Ap- 1960) (L. Hand, J.)))). To say that a use is ple Computer, Inc. v. Microsoft Corp., 35 de minimis because no audience would rec- F.3d 1435, 1446 (9th Cir.1994). ognize the appropriation is thus to say that the works are not substantially similar. In filtering out the unique performance elements from consideration, and separat- On the facts of Fisher, this court reject- ing them from those found in the composi- ed the de minimis defense because the tion, we find substantial assistance in the copying was substantial: the defendant testimony of Newton’s own experts. His had appropriated the main theme and lyr- experts reveal the extent to which the ics of the plaintiff’s song, both of which sound recording of ‘‘Choir’’ is the product were easily recognizable in the defendant’s of Newton’s highly developed performance parody. 794 F.2d at 434 & n.2. Specifical- techniques, rather than the result of a ly, the defendant copied six of the thirty- generic rendition of the composition. As a eight bars to the 1950s standard, ‘‘When general matter, according to Newton’s ex- Sunny Gets Blue,’’ to make the parody, pert Dr. Christopher Dobrian, ‘‘[t]he con- ‘‘When Sonny Sniffs Glue,’’ and paralleled tribution of the performer is often so great the original lyrics with only minor varia- that s/he in fact provides as much musical tions. Id. However, despite the works’ content as the composer.’’ This is particu- substantial similarities, we held that the larly true with works like ‘‘Choir,’’ given use was nevertheless non-infringing be- the nature of jazz performance and the cause, as a parody, it was ‘‘fair use’’ under minimal scoring of the composition. In- 17 U.S.C. § 107. Id. at 440. We ex- deed, as Newton’s expert Dr. Oliver Wil- plained that the defendant’s successful fair son explained: use defense precluded a finding that the use was insubstantial or unrecognizable [T]he copyrighted score of ‘‘Choir’’, as is because ‘‘the parodist must appropriate a the custom in scores written in the jazz substantial enough portion of [the original] tradition, does not contain indications to evoke recognition.’’ Id. at 435 n.2. for all of the musical subtleties that it is assumed the performer-composer of the This case involves not only use of a work will make in the work’s perform- composition, as was the case in Fisher, but ance. The function of the score is more also use of a sound recording of a perform- mnemonic in intention than prescriptive. ance of that composition. Because the defendants licensed the sound recording, And it is clear that Newton goes beyond our inquiry is confined to whether the the score in his performance. For exam- unauthorized use of the composition itself ple, Dr. Dobrian declared that ‘‘Mr. New- was substantial enough to sustain an in- ton blows and sings in such a way as to fringement claim. Therefore, we may con- emphasize the upper partials of the flute’s sider only Beastie Boys’ appropriation of complex harmonic tone, [although] such a the song’s compositional elements and modification of tone color is not explicitly must remove from consideration all the requested in the score.’’ More generally, 596 349 FEDERAL REPORTER, 3d SERIES

Dr. Wilson explained Newton’s perform- altered or digitally manipulated, it will be ance technique as follows: identical to the original. Yet as Nimmer [T]he Newton technique produces a mu- explains, ‘‘[if] the similarity is only as to sical event in which the component nonessential matters, then a finding of no sounds resulting from the simultaneous substantial similarity should result.’’ 4 singing of one or more pitches and the Nimmer § 13.03[A][2], at 13–48; cf. War- interaction of this pitch or pitches with ner Bros. v. Am. Broad. Cos., 720 F.2d the various components of the multi- 231, 242 (2d Cir.1983). This reflects the phonic array of pitches produced on the principle that the substantiality require- flute create a relatively dense cluster of ment applies throughout the law of copy- pitches and ambient sounds that some- right, including cases of music sampling, times change over time. even where there is a high degree of similarity. Whatever copyright interest Newton obtained in this ‘‘dense cluster of pitches and The high degree but limited scope of ambient sounds,’’ he licensed that interest similarity between the works here place to ECM Records over twenty years ago, Newton’s claim for infringement into the and ECM Records in turn licensed that class of cases that allege what Nimmer refers to as ‘‘fragmented literal similarity.’’ interest to Beastie Boys. Thus, regardless 4 Nimmer § 13.03[A][2], at 13–45. Frag- of whether the average audience might mented literal similarity exists where the recognize ‘‘the Newton technique’’ at work defendant copies a portion of the plaintiff’s in the sampled sound recording, those per- work exactly or nearly exactly, without formance elements are beyond consider- appropriating the work’s overall essence or ation in Newton’s claim for infringement of structure. Id. Because the degree of simi- his copyright in the underlying composi- larity is high in such cases, the dispositive tion. Having licensed away his interest in question is whether the similarity goes to the recording of his performance, New- trivial or substantial elements. The sub- ton’s only claim is for a violation of his stantiality of the similarity is measured by rights in the three-note sequence tran- considering the qualitative and quantita- scribed in the composition. tive significance of the copied portion in Once we have isolated the basis of New- relation to the plaintiff’s work as a whole. ton’s infringement action—the ‘‘Choir’’ See, e.g., Worth v. Selchow & Righter Co., composition, devoid of the unique perform- 827 F.2d 569, 570 n. 1 (9th Cir.1987) ance elements found only in the sound (‘‘[T]he relevant inquiry is whether a sub- recording—we turn to the nub of our in- stantial portion of the protectible material quiry: whether Beastie Boys’ unauthorized in the plaintiff’s work was appropriated— use of the composition, as opposed to their not whether a substantial portion of defen- authorized use of the sound recording, was dant’s work was derived from plaintiff’s substantial enough to sustain an infringe- work.’’); Jarvis v. A & M Records, 827 ment action. In answering that question, F.Supp. 282, 289–90 (D.N.J.1993); 4 Nim- we must distinguish between the degree mer § 13.03[A][2], at 13–47 to 48 & n. 97. and the substantiality of the works’ simi- This focus on the sample’s relation to the larity. Cf. Ringgold, 126 F.3d at 74–75; 4 plaintiff’s work as a whole embodies the Nimmer § 13.03[A][2], at 13–45. The fundamental question in any infringement practice of music sampling will often pres- action, as expressed more than 150 years ent cases where the degree of similarity is ago by Justice Story: whether ‘‘so much is high. Indeed, unless the sample has been taken[ ] that the value of the original is NEWTON v. DIAMOND 597 Cite as 349 F.3d 591 (9th Cir. 2003) sensibly diminished, or the labors of the the remainder of the composition calls for original author are substantially to an inju- sections of improvisation that range be- rious extent appropriated by another.’’ tween 90 and 180 seconds in length. Al- Folsom v. Marsh, 9 F.Cas. 342, 348 though the sampled section may be repre- (C.C.Mass.1841) (No. 4901). Courts also sentative of the scored portions of the focus on the relationship to the plaintiff’s composition, Newton has failed to offer work because a contrary rule that mea- any evidence as to this section’s particular sured the significance of the copied seg- significance in the composition as a whole. ment in the defendant’s work would allow Instead, his experts emphasize the signifi- an unscrupulous defendant to copy large cance of Newton’s performance, the unique or qualitatively significant portions of an- elements of which Beastie Boys properly other’s work and escape liability by bury- licensed. ing them beneath non-infringing material in the defendant’s own work, even where Yet Newton maintains that the testimo- the average audience might recognize the ny of his experts creates a genuine issue of appropriation. Cf. Sheldon v. Metro– material fact on the substantiality of the Goldwyn Pictures Corp., 81 F.2d 49, 56 (2d copying. To the extent the expert testi- Cir.1936) (‘‘[I]t is enough that substantial mony is relevant, it is not helpful to New- parts were lifted; no plagiarist can excuse ton. On the key question of whether the the wrong by showing how much of his sample is quantitatively or qualitatively work he did not pirate.’’). Thus, as the significant in relation to the composition as district court properly concluded, the fact a whole, his experts are either silent or fail that Beastie Boys ‘‘looped’’ the sample to distinguish between the sound record- throughout ‘‘Pass the Mic’’ is irrelevant in ing, which was licensed, and the composi- weighing the sample’s qualitative and tion, which was not. Moreover, their testi- quantitative significance. See Newton, 204 mony on the composition does not contain F.Supp.2d at 1257. anything from which a reasonable jury When viewed in relation to Newton’s could infer the segment’s significance in composition as a whole, the sampled por- relation to the composition as a whole: tion is neither quantitatively nor qualita- rather, Dr. Dobrian described the three- tively significant. Quantitatively, the note sequence at issue as ‘‘a simple ‘neigh- three-note sequence appears only once in boring tone’ figure.’’ The district court Newton’s composition. It is difficult to cited two pieces by Gyorgy Ligeti and measure the precise relationship between this segment and the composition as a Jacob Druckman employing similar fig- whole, because the score calls for between ures. Newton, 204 F.Supp.2d at 1255. 180 and 270 seconds of improvisation. This evidence is consistent with the opin- When played, however, the segment lasts ion of Beastie Boys’ expert, Dr. Lawrence six seconds and is roughly two percent of Ferrara, who stated that the sampled ex- the four-and-a-half-minute ‘‘Choir’’ sound cerpt from the ‘‘Choir’’ composition ‘‘is recording licensed by Beastie Boys. Quali- merely a common, trite, and generic three- tatively, this section of the composition is note sequence, which lacks any distinct no more significant than any other section. melodic, harmonic, rhythmic or structural Indeed, with the exception of two notes, elements.’’ Dr. Ferrara also described the the entirety of the scored portions of sequence as ‘‘a common building block ‘‘Choir’’ consist of notes separated by tool’’ used over and over again by major whole and half-steps from their neighbors; composers in the 20th century, particularly 598 349 FEDERAL REPORTER, 3d SERIES the 860s and 870s, just prior to James apply in this case, and I agree with the Newton’s usage. majority’s assumption that the sampled Having failed to demonstrate any quan- portion of ‘‘Choir’’ qualifies as ‘‘original’’ titative or qualitative significance of the and therefore is copyrightable. Maj. op. sample in the ‘‘Choir’’ composition as a at 594. However, on the record before us, whole, Newton is in a weak position to a jury reasonably could find that Beastie argue that the similarities between the Boys’ use of the sampled material was not works are substantial, or that an average de minimis. Therefore, summary judg- audience would recognize the appropria- ment is inappropriate. tion. In this respect, the minimal scoring of the ‘‘Choir’’ composition bears emphasis, As the majority observes, a use is de as does the relative simplicity of the rele- minimis only if an average audience would vant portion of the composition. On the not recognize the appropriation. Fisher v. undisputed facts of this case, we conclude Dees, 794 F.2d 432, 434 n. 2 (9th Cir.1986). that an average audience would not dis- The majority is correct that James New- cern Newton’s hand as a composer, apart ton’s considerable skill adds many recog- from his talent as a performer, from nizable features to the performance sam- Beastie Boys’ use of the sample. The pled by Beastie Boys. Even after those works are not substantially similar: Beast- features are ‘‘filtered out,’’ however, the ie Boys’ use of the ‘‘Choir’’ composition composition, standing alone, is distinctive was de minimis. There is no genuine issue enough for a jury reasonably to conclude of material fact, and the grant of summary that an average audience would recognize judgment was appropriate. the appropriation of the sampled segment Conclusion and that Beastie Boys’ use was therefore Because Beastie Boys’ use of the sound not de minimis. recording was authorized, the sole basis of Newton’s infringement action is his re- Newton has presented evidence that the maining copyright interest in the ‘‘Choir’’ compositional elements of ‘‘Choir’’ are so composition. We hold today that Beastie compositionally distinct that a reasonable Boys’ use of a brief segment of that com- listener would recognize the sampled seg- position, consisting of three notes separat- ment even if it were performed by the ed by a half-step over a background C featured flautist of a middle school orches- note, is not sufficient to sustain a claim for tra. It is useful to begin by observing that copyright infringement. We affirm the the majority’s repeated references to the district court’s grant of summary judg- sampled segment of ‘‘Choir’’ as a ‘‘3–note ment on the ground that Beastie Boys’ use sequence’’1 are overly simplified. The of the composition was de minimis and sampled segment is actually a three-note therefore not actionable. sequence sung above a fingered held C AFFIRMED. note, for a total of four separate tones.2 Even passages with relatively few notes GRABER, Circuit Judge, dissenting: may be qualitatively significant. The I respectfully dissent. The majority has opening melody of Beethoven’s Fifth Sym- laid out correctly the legal principles that phony is relatively simple and features

1. Maj. op. at 596, 597. scored as shown in the Appendix.

2. The sampled segment of the composition is NEWTON v. DIAMOND 599 Cite as 349 F.3d 591 (9th Cir. 2003)

only four notes, but it certainly is composi- majority reverses his intended meaning. tionally distinctive and recognizable. Professor Dobrian actually concludes: Applying traditional analysis to this The majority is simply mistaken in its brief excerpt from Newton’s ‘‘Choir’’— assertion, maj. op. at 597, that Newton’s i.e., focusing solely on the notated experts did not present evidence of the pitches—a theorist could conclude (erro- qualitative value of the compositional ele- neously, in my opinion) that the excerpt ments of the sampled material sufficient to contains an insignificant amount of infor- survive summary judgment. The majority mation because it contains a simple is similarly mistaken when it says, id., that ‘‘neighboring-tone’’ figure: C to D-flat Newton’s experts failed to distinguish be- and back to CTTTT If, on the other hand, tween the sound recording and the compo- one considers the special playing tech- sition. To the contrary, Newton presented nique described in the score (holding one considerable expert evidence that the com- fingered note constant while singing the position alone is distinctive and recogniz- other pitches) and the resultant com- able. plex, expressive effect that results, it is First, Newton offered a letter from Pro- clear that the ‘‘unique expression’’ of fessor Olly Wilson of the University of this excerpt is not solely in the pitch California at Berkeley. Professor Wilson choices, but is actually in those particu- acknowledges that much of the distinctive- lar pitches performed in that particular ness of the sampled material is due to way on that instrument. These compo- Newton’s performance and that the copy- nents in this particular combination are righted score does not fully convey the not found anywhere else in the notated quality of the piece as performed. Never- music literature, and they are unique theless, Professor Wilson concludes that and distinctive in their sonic/musical re- the score sult. clearly indicates that the performer will (Emphasis added.) simultaneously sing and finger specific It is important to note that Professor pitches, gives a sense of the rhythm of Dobrian is not talking about Newton’s per- the piece, and also provides the general formance of the sampled portion. Rather, structure of this section of the piece. he is speaking of the distinctiveness of the Hence, in my opinion, the digital sample underlying composition. The ‘‘playing of the performance TTT is clearly a real- technique’’ is not a matter of personal ization of the musical score filed with the performance, but is a built-in feature of copyright office. the score itself. In essence, Dobrian is Second, Newton presented a letter from stating that any flautist’s performance of Professor Christopher Dobrian of the Uni- the sampled segment would be distinctive versity of California, Irvine. The majority and recognizable, because the score itself deals with Professor Dobrian’s evidence by is distinctive and recognizable. stating: ‘‘Dr. Dobrian described the three- The majority, then, misreads the record note sequence at issue as ‘a simple, ‘‘neigh- when it states that Newton failed to offer boring tone’’ figure.’ ’’ Maj. op. at 597. evidence that the sampled material is qua- As the passage quoted below demon- litatively significant. In fact, Newton pre- strates, the majority fundamentally mis- sented evidence, as described above, to reads Professor Dobrian’s statement by show that an average and reasonable lis- taking it out of context; in the process the tener would recognize Beastie Boys’ ap- 600 349 FEDERAL REPORTER, 3d SERIES propriation of the composition of the sam- composition of the sampled material, sum- pled material.3 mary judgement is inappropriate in this case. Newton should be allowed to pres- Because Newton has presented evidence ent his claims of infringement to a jury. I establishing that reasonable ears differ therefore dissent from the majority’s con- over the qualitative significance of the clusion to the contrary.

3. Because Newton has established that a jury (9th Cir.1987) (noting that ‘‘a determination reasonably could find that the sampled por- of the qualitative importance of the material tion of ‘‘Choir’’ is qualitatively significant, we to the plaintiff’s work is more significant than need not address the question of the portion’s a quantitative calculation of the portion alleg- quantitative significance. See Worth v. Sel- edly appropriated by the defendant’’). chow & Righter Co., 827 F.2d 569, 570 n. 1