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Sampling of Phonogram: Fair use or Infringement

By Lucy Rana and Meril Mathew Joy

In a recent case that brought forth the issue of sampling of a phonogram recording amounting to infringement, the Federal Court of Justice, Germany on account of an appeal has put the particulars of the matter in front of the Court of Justice of the European Union (CJEU) for a preliminary ruling.
There was an unauthorized sampling of a 1977 recording owned by electro band Kraftwerk. Ralf Hütter and Mr. Florian Schneider-Esleben, members of the music group Kraftwerk, claimed that Pelham GmbH sampled approximately two seconds of a rhythm sequence from the track “Metall für Metall” and incorporated the sample as a continuous loop and with minimal modifications, in the defendant’s Sabrina Setlur’s  track ‘Nur mir’. The Kraftwerk band members initiated proceedings in the German courts claiming that Pelham GmbH, producers of the infringing phonogram, had infringed their exclusive rights of reproduction in the original work.[1]

The above matter was referred to the CJEU for a preliminary ruling along with questions as to the scope of EU laws on sampling. Further, the questions are referred to CJEU in order to shed some additional light and perspective on the ongoing debate of ‘post modern’ artistic freedom against established IPR.

CJEU, through (AG)Advocate General Szpunar (Court of Justice: Judge for the current case.), was of the following opinion:

  • The sampling of the phonogram recording amounts to infringement owing to it being protected under the meaning of the Copyright Directive, Article 2(c).[2]
  • A phonogram is a fixation of sounds that is protected by virtue of the fixation itself. Stating that although a sound or a word cannot be monopolized by an author by fixation alone, in case of a phonogram it falls within the scope of protection of copyright the moment a sound or word is recorded. Hence, the reproduction of the recording, owing to the copyright, is the exclusive right of the producer.
  • He rejected the view that the part copied was short in length and opined that there exists no de minimis limit with respect to works protected by copyright.
  • Further he stated that the to set a limit upon the financial interest of a copyright owner (producer) was unjust and that a producer’s right to exploit his work is not limited to mere distribution (selling copies) but also extends by way of authorizing sampling.
  • Addressing the apprehension of phonogram producers must not be eligible for a protection greater than that of given to authors; he dismissed these concerns as a misrepresentation, and stated that the producers of phonograms do not have any greater protection afforded by the subject matter of their work than author for his authorial works.
  • He also denied the position that is enshrined in WPPT [3]11, which confers exclusive right on the producers of phonogram for authorizing reproduction of their phonograms. He also stated that it does not apply to the case at hand and that it only dealt with protection against the unauthorized reproduction of a phonogram as a whole.

He concluded by iterating that ‘sampling’ of the phonogram recording in the present case is an act of infringement and it infringed the exclusive right of the producer to authorize or restrict the reproduction of the recording regardless of the length of the sample.

Further the Advocate General (AG) also gave his comments on the quotation exception with respect to sampling as is provided under the German copyright laws[1], stating that the exception can only apply if a few stipulated conditions are met. These conditions provided that;

  • The quotation must enter into some kind of dialogue with the work quoted (for the purposes of critique and review, for instance);
  • The quotation must be incorporated in the quoting work without modification; and
  • The quotation must indicate the source, including the author’s name.

Post the above perspective/opinion given by the AG on the present matter, the conclusion of the subject matter in view of the questions flows with the below mentioned answers for the same:

In the first question, the referring court asked, in essence, whether Article 2(c) of Directive 2001/29 should be interpreted as meaning that taking an extract of a phonogram for the purpose of using it in another phonogram (sampling) infringes the exclusive right of the producer of the first phonogram to authorize or prohibit the reproduction of his phonogram within the meaning of that provision, where it is taken without the latter’s permission.[2]

For this question the AG proposed that the provision of the directive must be interpreted to mean that in taking an extract of a phonogram for the purpose of sampling infringes upon the exclusive right of the producer to authorize or prohibit the reproduction of his work, without permission.

In the second question, the referring court asked whether Article 9(1)(b)[3] of Directive 2006/115 [4]should be interpreted as meaning that a phonogram which contains extracts transferred from another phonogram (samples) is a copy of the other phonogram within the meaning of that provision.[5]

For this question the AG proposed that Article 9(1)(b) of Directive 2006/115/EC must be interpreted to mean that a phonogram that consists of sampling, is not a copy of the phonogram being sampled under the meaning of the provision.

In the third question, the referring court asked, in essence, whether Article 2(c) of Directive 2001/29 and Article 9(1)(b) of Directive 2006/115 must be interpreted as precluding the application of a provision of the national law of a Member State, such as Paragraph/Section 24(1) of the UrhG[6], according to which an independent work may be created in the free use of another work without the consent of the author of the work used, (25) to phonograms.[7]

For this question the AG proposed that the Article 2(c) of Directive 2001/29 must be interpreted such that it overrules the application of the provisions of the national law of a Member State. Laws such as that stated under Paragraph/Section 24 of the German Law on Copyright and Related Rights, 1965, under which it is provided that a work may be created by free use of another work, without the consent of the author of such said work. This provision is precluded by Directive 2001/29, especially for phonograms, in so far as it exceeds the scope of the exceptions and limitations to exclusive rights provided for in Article 5(2) and (3) of that directive.

In the fourth question, the referring court asked, in essence, whether the quotation exception provided for in Article 5(3)(d) of Directive 2001/29,[1] applies where an extract of a phonogram has been incorporated into another phonogram such that it forms an indistinguishable part of the second phonogram.[2]

For this question the AG proposed that the quotation exception provided for in Article 5(3)(d) of Directive 2001/29 is not applicable to the current case where an extract of a phonogram (sample) is incorporated into another phonogram and lacks the intention of interacting with the first (source) phonogram and in such a way that it forms an indistinguishable part of the second phonogram.

In the fifth question, the referring court seeks to determine the degree of latitude afforded to the Member States in transposing into their domestic law the provisions relating to the exclusive rights provided for in Articles 2[3] and 3[4] of Directive 2001/29 and Article 9[5] of Directive 2006/115 and the exceptions to those rights set out in Article 5 of Directive 2001/29 and Article 10[6] of Directive 2006/115.[7]

For this question the AG proposed that the Member States must ensure and uphold the protection of the exclusive rights as under Articles 2 to 4[8] of Directive 2001/29, in so far as those rights can be limited by the application of the exceptions and limitations listed under Article 5 of said directive. Member States are nevertheless free as to the choice of form and methods they consider appropriate to implement in order to comply with that obligation.[9]

In the sixth question, the referring court asked how the fundamental rights set out in the Charter are to be taken into account when interpreting the scope of the exclusive rights of phonogram producers under Directives 2001/29 and 2006/115 and the limitations and exceptions to those rights provided for by those same directives.[10]

For this question the AG proposed that the exclusive right of the producers of phonogram under the Article 2(c) of Directive 2001/29 to authorize or prohibit reproduction, in part, of their phonogram in the event of its use for sampling purposes is not contrary to the freedom of the arts as enshrined in Article 13[11] of the Charter of Fundamental Rights of the European Union.[12]

Opinion of CJEU, in a brief

The CJEU was of the opinion that sampling of a phonogram and using it in a new phonogram amounts to infringement of the distribution right of the original phonogram producer (whose work is sampled) although the resulting phonogram would not be construed to be a copy of the original phonogram as long its association with the same is not identifiable by the ear. On the basis of the opinions and reasons given above, it is fair to say that the “postmodern” artistic freedom is given a heed to and alongside it, the exclusive rights of the IP holder are not overstepped.

Sampling of Phonogram and India
Under the Indian Copyright regime, there exists similar provisions as discussed above in detail. These provisions have a different scope than the EU and German laws but deal with the same question of law. Infringement of a sound recording/ phonogram would fall under Section 51 of the Copyright Act, 1957. Although under the given facts of the case, and the opinion of the CJEU therein, there is a clear parallel that can be drawn between the ‘free use’ and ‘fair dealing’ provisions as well as the exclusive rights provisions provided under respective German and Indian copyright laws.
Although, to invoke the infringement provisions, a need to address what amounts to infringement under respective laws is necessary. As is clear by the decision of the German Courts and the opinions of the CJEU, there is a clear impression that infringement occurs irrespective of the degree of copying, even be it 2 seconds (as was the case in the subject matter). Whereas, the same legal opinion is not widely upheld under the Indian copyright laws for two reasons:

  • The meaning of copyright under Section 14 of the Copyright Act, 1957 states that copyright provides for exclusive rights with respect to the whole work or to a substantial part thereof.
  • Due to a lack of any provisions dealing with ‘sampling’ of sound recording, there is a reliance on the term “substantial part” used throughout the Copyright Act, 1957.

Further, Indian laws and legal opinions might be of the same view with the CJEU on the question of the resulting phonogram recording not being a copy of the original; as there exists a few tests that reflect the same reason given by the CJEU to consider the resulting phonogram as an original copyrightable work. These tests are:

  • Sweat of the brow test.

Under this test, the minimum modicum of creativity is checked as well as the effort that is put into the work. This test checks that if there was ample effort put in to make a resulting work.

  • Look and feel test. (qualitative test)

This test has been upheld in the landmark R G Anand case. This test is in place as to not restrict infringement to only mean the making of exact copies of the protected work. The test provides for the acknowledgment of any work side by side to the infringing work to determine if they seem strikingly or substantially similar.

In view of the above, considering the infringement of 2 seconds of impugned recording (as in the present subject matter), the possibility of allowing infringement may have not succeeded under the Indian regime. This can be addressed on the following grounds:

  • There being only 7 notes in music, there can only be a certain definite number of combinations to the same for using it in a sound recording. Such notes when strung along in a sound recording, can only be done in repetitions of such certain number of patterns and combinations. On assessing a recording based on a 2 second frame, it might be found that thousands of recordings currently infringe upon the music in that frame.
  • The 2 second frame may be able to become grounds for infringement as long as it can prove that it is unique and has acquired such distinctiveness that people will be able to hear the specific frame apart from the infringing copy. Although, it would still be required to prove that the 2 second frame qualifies as a substantial part of the work.

[1] Entertainment Law Review (2019) Case Comment: “The Kraftwerk case – does a two-second sample infringe copyright?”: Calum Bryant & Rachael Heeley

[2] Directive 2001/29/EC Reproduction right. This provision provides for exclusive right to authorise or prohibit any 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.

[3] WIPO Performances and Phonogram Treaty.

[4] German Copyright Act, 1965: Section 51: This Section provides for the scenarios in which the use of a copyrighted work is permissible to be distributed and communicated to the public for the purpose of quotation.

[5] Opinion of Advocate General Szpunar delivered on 12 December 2018 (1) Case C‑476/17: Paragraph 19

[6]Directive 2006/115: Article 9(1)(b): This Article provides for the exclusive right if the copyright owner to make his work available to the public by sale or by any other means.

[7] Directive 2006/115/EC  on  Rental Right and Lending Right and on certain Rights Related to Copyright in the Field of Intellectual Property,2006

[8] Opinion of Advocate General Szpunar delivered on 12 December 2018 (1) Case C‑476/17: Paragraph 41

[9] German Law on Copyright and Related Rights, 1965

[10] Opinion of Advocate General Szpunar delivered on 12 December 2018 (1) Case C‑476/17: Paragraph 50

[11]Directive 2001/29 Article 5 (Limitations & Exceptions): This Article provides that  quotations for purposes such as criticism or review as long as conditions under this Article are met would not amount to infringement.

[12] Opinion of Advocate General Szpunar delivered on 12 December 2018 (1) Case C‑476/17: Paragraph 60

[13] Directive 2001/29 Article 2 (Reproduction right)

[14] Directive 2001/29 Article 3 (Right of communication to the public of works and right of making available to the public other subject-matter)

[15] Directive 2006/115/EC: Article 9: (Distribution right)

[16] Directive 2006/115/EC: Article 9: (Limitations to rights)

[17] Opinion of Advocate General Szpunar delivered on 12 December 2018 (1) Case C‑476/17: Paragraph  71

[18] Directive 2001/29 Article 5 (Distribution right)

[19] Opinion of Advocate General Szpunar delivered on 12 December 2018 (1) Case C‑476/17: Paragraph  100(5)

[20 Opinion of Advocate General Szpunar delivered on 12 December 2018 (1) Case C‑476/17: Paragraph  80

[21] Charter of Fundamental Rights of the European Union 2012/C 326/02: Article 13: (Freedom of the arts and sciences): “The arts and scientific research shall be free of constraint. Academic freedom shall be respected.”

[22] Opinion of Advocate General Szpunar delivered on 12 December 2018 (1) Case C‑476/17: Paragraph  100 (6)

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