Amid Leroy Hutson's Infringement Accusations, the Will to Test Fair Use in the Courts Gets Stronger
|By AMIR SAID (SA'ID)|
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. In what’s considered to be a preemptive lawsuit, the estate of Notorious B.I.G. recently 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 — is 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 court filing raises 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's the fair use claim that will undoubtedly have many of those on both sides of the sampling and copyright law quandary closely watching how this case turns out.
According to the complaint filed by lawers 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.
In other words, Hutson repeatedly harassed Bad Boy Records (and Atlantic Records, Warner Music Group, and EMI), in attempt to get a quick financial settlement, in exchange for not filing a copyright infringement lawsuit for an uncleared sample of the Hutson co-authored song “Can’t Say Enough About Mom.” 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 spurred on the 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 in at the threat of a copyright infringement lawsuit (as nearly all labels would), 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 their expert’s findings and including Easy Mo Bee’s meticulous, multidimensional description of how he composed “The What” in the complaint, the estate of Notorious B.I.G., which does not deny the actual sampling, asserts 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.” In other words, B.I.G.’s estate rejected the infringement shakedown and balked at the idea of 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 strongly believes that “The What” does not infringe upon “Can’t Say Enough About Mom,” and they're prepared to prove it in court. Thus, Hutson’s infringement shakedown attempt was thwarted mainly because the estate of Notorious B.I.G. was never scared to affirm fair use (...and for good reason).
Thing is, in determining unlawful appropriation, the courts will 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 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. In other words, 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. The intrinsic test is an examination of an ordinary person’s subjective impression of the similarities between the two works. This is the exclusive responsibility of a jury, not the allegedly infringed or the alleged infringer! (For a more thorough understanding of fair use and a proper fair use analysis, please read my book The Art of Sampling.)
In other words, as a whole, how similar is “The What” and “Can’t Say Enough About Mom?” And how critical, qualitatively speaking, is the sample (copied portion) to “Can’t Say Enough About Mom?” Also, does “The What” sample a substantial portion of “Can’t Say Enough About Mom?” In my own analysis and comparison, I find 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.
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 (most) 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 lables 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, notablyl 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. is 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, may be 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), I believe the court will agree that the “The What’s” use of “Can’t Say Enough About My Mom” meets the threshold of fair use, and will, therefore, grant relief to the estate of Notorious B.I.G.
More importantly, I also believe that this action taken by the estate of the Notorious B.I.G. will help raise the profile of fair use and give others the will to test fair use in other sampling cases. 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, 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<"
NOTORIOUS B.I.G. LLC vs. LEE HUTSON d/b/a SILENT GIANT PUBLISHING COMPANY