Copyright: infringement by sampling

By Audrey Horton

10-2019

Summary

The European Court of Justice (ECJ) has held that a phonogram producer's exclusive right to reproduce and distribute allowed them to stop another person from taking a very short sound sample, unless the sample was included in another phonogram in a modified form unrecognisable to the ear.

Background

EU member states must provide for the exclusive right to authorise or prohibit direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part for phonogram producers, of their phonograms (Article 2(c), Copyright Directive (2001/29/EC)) (Copyright Directive) (Article 2(c)). However, Article 5 of the Copyright Directive (Article 5) contains an optional list of exceptions to this right, for example a quotation of a work (Article 5(3)(d)).

Member states must provide the exclusive right to make available to the public, by sale or otherwise, including copies, for phonogram producers, in respect of their phonograms (the distribution right) (Article 9(1)(b), Rental Directive (2006/115/EC)) (2006 Directive) (Article 9(1)(b)).

Article 1(a) of the Convention for the Protection of Producers of Phonograms Against Unauthorised Duplication of Their Phonograms defines phonograms as any exclusively aural fixation of sounds of a performance or of other sounds.

In Infopaq International v Danske Dagblades Forening, the ECJ held that the use of a data capture process by a media monitoring business, under which 11-word extracts from newspaper articles were stored and printed out, came within the concept of reproduction in part within Article 2(a), if the elements reproduced were the expression of the intellectual creation of the author (www.practicallaw.com/2-422-4217).

Facts

H issued proceedings in Germany against P in relation to P's use in a recording of a song of an approximately two-second rhythm sequence from a phonogram of H's music group.

The German court referred questions on certain provisions of the Copyright Directive and the 2006 Directive to the ECJ for a preliminary ruling.

Decision

The ECJ held that the reproduction fell within the exclusive right granted to the producer of a phonogram under Article 2(c). It held that the reproduction by a user of a sound sample of a phonogram, even if very short, must in principle be a reproduction in part of the phonogram.

However, the harmonisation effected by the Copyright Directive aimed to safeguard, particularly in the electronic environment, a fair balance between the interests of rights holders and the protection of the interests and fundamental rights of users, as well as of the public interest.

A balance must be struck between intellectual property rights and other fundamental rights, including freedom of the arts, which, in so far as it fell within the scope of freedom of expression in Article 10(1) of the European Convention for the Protection of Human Rights and Fundamental Freedoms, permitted the public exchange of cultural, political and social information, and ideas. The technique of sampling, which consisted of a user taking a sample from a phonogram, most often by electronic equipment, and using the sample to create a new work, constituted a form of artistic expression that was covered by freedom of the arts.

In exercising their freedom, the user of a sound sample might decide to modify the sample to such a degree that it would become unrecognisable to the ear in the new work. To treat an unrecognisable sample as constituting a reproduction within Article 2(c) would run not only against the usual meaning of the word in everyday language, but would also fail to meet the requirement of a fair balance.

However, Article 9(1)(b) (distribution right) of the Rental Directive meant that a phonogram that contained sound samples transferred from another phonogram did not constitute a copy, within the meaning of the provision, of the phonogram, as it did not reproduce all or a substantial part of the phonogram.

A member state cannot make an exception or limitation in its national law to the phonogram producer's right provided for in Article 2(c) other than the exceptions and limitations listed in Article 5.

Where a sample was recognisable to the ear, the use of the sample might amount to a quotation on the basis of Article 5(3)(d), depending on the facts of the case. However, the use must intend to enter into dialogue with the work from which the sample was taken, and the conditions set out in Article 5(3)(d) must be satisfied. There could be no dialogue where it was impossible to identify the work concerned by the quotation.

Article 2(c) unequivocally defined a phonogram producer's exclusive right of reproduction in the EU: it was not qualified by any condition nor was it subject in its implementation or effects to any measure being taken in any particular form. So it constituted a measure of full harmonisation of the corresponding substantive law.

Comment

Although the ECJ did not specifically address whether the principle in Infopaq applied to phonograms, this ruling is one of its most interesting on copyright infringement since Infopaq.

However, the ruling on the exclusive right of reproduction for phonograms leaves many questions unanswered. Unrecognisability must apparently result from modification and not from brevity, but it is unclear whether a sample can be so short that it cannot be infringing at all, without the need to be unrecognisable. What amounts to an unrecognisable sample will be a question for the national court. In the UK it is unclear whether this would be decided exclusively by the court, or by expert evidence, or the evidence of members of the public, in which case who would constitute that public is unknown. Some music samples might be recognised by connoisseurs, but not by casual listeners. So, the ruling may not be helpful for music artists involved in sampling as the utility of an unrecognisable sample is questionable.

Case: Pelham GmbH and another v Hütter and another C-476/17.

First published in the October issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.