Intellectual (and artistic) progress is possible only if each author builds on the work of others. No one invents even a tiny fraction of the idea that make up our cultural heritage. – Judge Easterbrook in Nash v. CBS Inc.
Sampling of music is as old as music itself, but there has been a paradigm shift from analogue to digital sampling over a period of time. One of the latest examples of digital sampling of a Bollywood song is Lata Mangeshkar’s infamous song “Thoda Resham Lagta Hai” sampled in “Truth Hurts ft Rakim – Addictive” and the “Black Eyed Peas – Don’t Phunk with My Heart (2005)” borrows its melody from “Aye Naujawan Sab Kuch Yahan” and samples “Yeh Mera Dil Pyaar ka Deewana” both of which were originally performed by a renowned bollywood vocalist Asha Bhosle.
Digital sampling has been described as the conversion of analogue sound waves into a digital code. The digital code that describes the sampled music can be reused, manipulated or combined with other digitalised or recorded sounds using a machine with digital data processing capabilities, such as computer synthesiser. In simpler words, sampling can be defined as a process of taking a portion or a sample of sound recording and using it in new work.
This article discusses the essence of “sampling” i.e. the definition, defences, legality and use in India.
Black’s Law Dictionary defines “sampling” as “[t]he process of taking a small portion of a sound recording and digitally manipulating it as a part of the new recording.” A contemporary musician may sample a large portion of a pre-existing recording or only a few notes. Advances in digital recording, playback, and synthesis technology have made sampling quite easy, even for an average sampler on a personal computer, causing the practice of sampling to penetrate nearly across all genres of modern popular music.
In Hawkes & Son v. Paramount Film Service Ltd., the phrase “substantial part” was elucidated for the first time. While the phrase varies from case to case, the usage of mere 20 seconds of a four-minute long music piece was construed as a “substantial part”.
“Copyrights can be extended to two major aspects of music:
- the musical composition, which is usually the composition and lyrics;
- the physical embodiment of a particular performance of the musical composition, usually in the form of a master recording.”
Sampling of any musical work without prior permission of the original copyright-holder infringes the holder’s right. However, to prove infringement, the plaintiff must show the “ownership of the copyright” and “unauthorised copying of the copyrighted work”. In order to substantiate a claim for unauthorised copying, the following must be established:
- the defendant has actually copied the plaintiff’s work; and
- the copying is illegal because a substantial similarity exists between the defendant’s work and the protectable elements of plaintiff.
Once a prima facie case of copyright infringement against the defendant has been made out by the owner of the copyright, the onus will lie on the alleged infringer to prove his innocence. This may lead to the use of affirmative defences, such as fair and de minimis uses, as well as estoppel, laches, misuse, etc. to prove innocence.
Music sampling can “at time” be legal. The fundamental purpose of copyright is to strike a balance between the interests of the copyright-holder and the consumers.
Therefore, to strike the balance and avoid infringement, the following affirmative defences can be used:
- The defence of de minimis.
- The defence of fair dealing.
1. The defence of de minimis
The de minimis defence to a copyright infringement is based on the legal maxim de minimis non curat lex, meaning “the law does not concern itself with trifles”. According to this principle, the incorporation of a word and/or usage of tune should be minimum or negligible. For example, if a musician who utters the phrase “Yo Jude” as a deliberate reference to the Beatles’ song “Hey Jude” in the musician’s own new song, this would probably be a clear-cut case of a de minimis use. To some extent, copying is permitted and is not conclusive of infringement. However, it is necessary to show that it has not been done to an unfair extent.
The High Court of Delhi in India TV Independent News Service (P) Ltd. v. Yashraj Films (P) Ltd. has held that:
- the use of de minimis, as applied in other areas of the law, without any modification or without having any marriage of convenience, has three significant advantages in the field of copyright law. Firstly, the fair use concept would be a bad theoretical fit for trivial violations. Secondly, de minimis analysis is much easier. Thirdly, a de minimis determination is the least time consuming, and needless to state it is in the interest of the parties as also the society that litigation reaches its destination in the shortest possible time.
- After all, the factors commonly considered by courts in applying de minimis are well listed. They are five in number:
(i) the size and type of the harm;
(ii) the cost of adjudication;
(iii) the purpose of the violated legal obligation;
(iv) the effect on the legal rights of third parties; and
(v) the intent of the wrongdoer.
2. Fair dealing of copyrighted work
The doctrine of “fair dealing” is the second defence to copyright infringement that allows restricted use of copyrighted work without the owner’s permission. It acts as a limitation as well as an exception to the exclusive right provided to a copyright-holder under the Copyright Act, 1957 (“the Act”). Section 52 of the Copyright Act lays down certain acts or works that cannot be considered as an infringement of copyright, namely, fair dealing with a literary, dramatic, musical or artistic work. The idea behind the introduction of this doctrine is to prevent stagnation of creativity and to differentiate between bona fide and mala fide usage of the copyrighted work.
Legality of music sampling in India
Indian copyright law provides protection for works created in India. While the Act does not include a provision particularly dealing with music sampling, it protects various works, including, dramatic, musical works, original literary, sound recordings and even films. Any violation of these rights of the right-holder is considered a copyright infringement.
Section 14 of the Act provides the copyright-holders with the right to protect their complete or a substantial part of their work. Section 14(a) in particular, provides the owner of a “musical work”, the right to make any adaptation of the work, issue copies of the work to the public not being copies already in circulation, perform the work in public and communicate it to the public, etc. “Musical work” is defined under Section 2(p) of the Act. It means work consisting of “music” and includes any graphical notation of such work but does not include any words or any action intended to be sung, spoken or performed with the music.
Protection of foreign works
The Act additionally protects any foreign work that is the product of countries mentioned in the international copyright order, as if such works are “Indian works”. The international copyright order safeguards works of nationals of countries included in the Berne Convention for the Protection of Literary and Artistic Works, the “Trade Related Aspects of Intellectual Property Rights Agreement”, and the “Universal Copyright Convention”.
Two-pronged test to determine copyright infringement
In cases of infringement, the courts have adopted a two-pronged test. This test determines whether the rights of a copyright-holder have been infringed. The test requires substantial similarity between the original and infringing works, and the challenged work to be a copy of the original work. The same has also been upheld by the Supreme Court of India in Eastern Book Co. v. D.B. Modak wherein the Court first examines if the entire work is original or if there are any substantial similarities between the original work and the work in question.
Since the definition of the term “originality” is not defined under the Indian copyright law, we will have to rely on the jurisprudence to understand the term. The Supreme Court of India in Eastern Book Co. v. D.B. Modak, following the principles laid down in CCH Canadian Ltd. v. Law Society of Upper Canada, held that “the original work should be the product of an exercise of skill and judgment and it is a workable yet fair standard. The sweat of the brow approach to originality is too low a standard which shifts the balance of copyright protection too far in favour of the owner’s right and fails to allow copyright to protect the public’s interest in maximising the production and dissemination of intellectual works. On the other hand, the creativity standard of originality is too high”.
The Court further observed that the copyrightable work must be original and should be independently created by “application of substantial degree of skill, industry or experience”. It is pertinent to note that Indian courts have time and again stressed the fact that copyright vests in independently created work regardless of their resemblance to a pre-existing work.
2. Substantial similarity
The sampling of a substantial portion of the original copyright work is determined by the quality of the copyrighted work and not its quantity. The High Court of Bombay in Twentieth Century Fox Film Corpn. v. Sohail Maklai Entertainment (P) Ltd. held that “substantial similarity” between the original and the copied work is determined by the quality of the copied work and not the quantity. The mere fact that only four notes have been used for the sample has insignificant implications on determining whether the similarity is substantial. If a qualitative analysis of the work shows a clear similarity between the works, then there is a possibility of an infringement.
However, Indian courts have largely relied on “look and feel” or “audience test” to fairly determine the infringement. The Supreme Court of India in R.G. Anand v. Deluxe Films has held that look and feel or audience test are the most reliable tests to determine a copyright infringement where the “reader, spectator or viewer after having read or seen both the works is clearly of the opinion and gets an unmistakable impression that the subsequent work appears to be a copy of the original. Where the theme is the same but is presented and treated differently so that the subsequent work becomes a completely new work, no question of violation of copyright arises”.
Further, the High Court of Delhi in India TV Independent News Service (P) Ltd. v. Yashraj Films (P) Ltd. had highly relied on American jurisprudence to determine the substantial similarity between the original and the work in question. The Court observed that the prerequisite to copyright infringement is the demonstrable copying of the work amounting to substantial similarity. The Court further identified two types of substantial similarity: (i) comprehensive non-literal similarity; where courts have strived to identify the “fundamental essence of the structure”, and it being copied, even where specific expression is not copied. (ii) Fragmented literal similarity, in which bits of specified expressions are copied, but the overall structure is not. The term fragmented literal similarity is defined by the 9th Circuit Court in Newton v. Diamond, is where “the defendant copies a portion of the plaintiff’s work exactly or nearly exactly, without appropriating the work’s overall essence or structure”.
In cases of digital sampling, the use of a sample is deemed to not be substantially similar, only when an average listener cannot recognise such usage. However, there is a high degree of similarity between the works, but the onus will lie on the infringer to establish that the similarities are trivial or de minimis and not substantial.
Consequences of Infringement – Damages to the aggrieved
The High Court of Madras in Lahari Recording Co. Ltd. v. Music Master Audio Video Mfg Co. (P) Ltd., discussed in length the types of damages available to a copyright owner i.e. Sections 55 and 58 of the Act. The Act provides civil remedies for a copyright-holder in an infringement suit, which includes injunctions and damages, with the costs of proceedings determined by the court’s discretion. Additionally, the Act also makes copyright infringement a criminal offence, punishable by imprisonment and fines. It is important to note at this juncture that the courts have made it certain that, the damages can be levied only if the infringement is established.
Just like the principle of “live and let live” music has prevailed and developed over the concept of “sample and let sample”. The Copyright Act does not specifically deal with the concept of music sampling. However, it provides ample provisions for the protection of music. Further, even the Indian courts have spoken in length regarding damages to a plaintiff in cases of infringement. While the safest way out of repercussions for music sampling is obtaining a licence, the Copyright Act has provided certain exceptions like de minimis and fair dealing of copyrighted musical works as a leeway from legality.
*Authors are Founder and Associate respectively with Shivadass & Shivadass (Law Chambers). The authors would like to acknowledge the contribution of Ms Shachi Gambhir, a 3rd Year law student from National Law University, Odisha. The contents and comments of this document do not necessarily reflect the views/position of Shivadass and Shivadass (Law Chambers) but remain solely of the author(s). For any further queries or follow up, please contact firstname.lastname@example.org.
 899 F 2d 1537, 1540 (7th Cir 1990).
 Jarvis v. A & M Records, 827 F Supp 282, 286 (D.N.J. 1993).
 Black’s Law Dictionary 1368 (8th Edn., 2004).
 Peter Cuomo, Claiming Infringement Over Three Notes is Not Preaching to the “Choir”. Newton v. Diamond and a Potential New Standard in the Copyright Law, 10. B.U.J. Sci. & Tech. L.177, 179 (2004).
 See David S. Blessing, Who Speaks Latin Anymore? Translating De Minimis Use for Application to Music Copyright Infringement and Sampling, 45 William & Mary L. Rev. 2399, 2404-05 (2004).
 Hawkes & Sons (London) v. Paramont Films Services Limited, (1934) 1 Ch 593.
 Ulloa v. Universal Music and Video Distribution Corpn., 303 F Supp 2d 409, 412 (SDNY 2004).
 Jorgensen v. Epic/Sony Records, 351 F 3d 46, 51 (2nd Cir 2003) [citing Feist Publications Inc. v. Rural Telephone Service Co. Inc., 1991 SCC OnLine US SC 46 : 113 L Ed 2d 358 : 499 US 340, 361 (1991) and Castle Rock Entertainment Inc. v. Carol Publishing Group, 150 F 3d 132, 137 (2nd Cir 1998)]. Also see Saregama India Ltd. v. Mosley, 687 F Supp 2d 1325 (S.D. Fl. 2009).
 Hamil America Inc. v. GFI, 193 F 3d 92, 99 (2nd Cir 1999) [quoting Knitwaves Inc. v. Lollytogs Ltd., 71 F 3d 996, 1002 (2d Cir 1995)]; Tufenkian Import/Export Ventures Inc. v. Einstein Moomjy Inc., 338 F 3d 127, 131 (2d Cir 2003); Boisson v. Banian, Ltd., 273 F 3d 262 (2nd Cir 2001).
 Black’s Law Dictionary, 1713 (8th Edn., 2004).
 The example comes from the Sixth Circuit case, Toulmin v. Rike-Kumler Co., 316 F 2d 232 (6th Cir 1963).
 Government of India, Department for Promotion of Industry and Internal Trade, Ministry of Commerce and Industry, A Handbook of Copyright Law, <https://copyright.gov.in/Documents/handbook.html> (last visited 13-7-2021).
 The Copyright Act, 1957, Section 14(a).
 Government of India Department for Promotion of Industry and Internal Trade, Ministry of Commerce and Industry, A Handbook of Copyright Law, <https://copyright.gov.in/Documents/handbook.html> (last visited 13-7-2021), “Indian work” means a literary, dramatic or musical work, the author of which is a citizen of India; or which is first published in India; or the author of which, in the case of an unpublished work is, at the time of the making of the work, a citizen of India.
Government of India, Department for Promotion of Industry and Internal Trade, Ministry of Commerce and Industry, A Handbook of Copyright Law, <https://copyright.gov.in/Documents/handbook.html> (last visited 13-7-2021), “Indian work” means a literary, dramatic or musical work, the author of which is a citizen of India; or which is first published in India; or the author of which, in the case of an unpublished work is, at the time of the making of the work, a citizen of India.
 K.M. Gopakumar and V.K. Unni, Perspectives on Copyright: The “Karishma” Controversy, 38 Economic & Political Weekly 2935, 2935 (2003).
 2004 SCC OnLine Can SC 13. http://www.scconline.com/DocumentLink/8BTs70WN
 204 F Supp 2d 1244, 1249-50 (C.D. Cal 2002).