JAMES W. NEWTON, JR. v. MICHAEL DIAMOND
388 F.3d 1189 (9
SCHROEDER, Chief Judge:
This appeal raises the difficult and important issue of whether the incorporation of a short seg-
ment of a musical recording into a new musical recording, i.e., the practice of "sampling," requires a
license to use both the performance and the composition of the original recording. The particular
sample in this case consists of a six-second, three-note segment of a performance of one of his own
compositions by plaintiff, and accomplished jazz flutist, James W. Newton. The defendants, the
performers who did the sampling, are the members of the musical group Beastie Boys. They ob-
tained a license to sample the sound recording of Newton's copyrighted performance, but they did
not obtain a license to use Newton's underlying composition, which is also copyrighted.
The district court granted summary judgment to the defendants. In a scholarly opinion, it held
that no license to the underlying composition was required because, as a matter of law, the notes in
question -- C - D flat - C, over a held C note -- lacked sufficient originality to merit copyright pro-
tection. The district court also held that even if the sampled segment of the composition were origi-
nal, Beastie Boys' use of a brief segment of the sound recording of "Choir" was a de minimis use of
the "Choir" composition and therefore was not actionable. We affirm on the ground that the use was
Background and Procedural History
The plaintiff and appellant in this case, James W. Newton, is an accomplished avant-garde jazz
flutist and composer. In 1978, he composed the song "Choir," a piece for flute and voice intended to
incorporate elements of African-American gospel music, Japanese ceremonial court music, tradi-
tional African music, and classical music, among others. According to Newton, the song was in-
spired by his earliest memory of music, watching four women singing in a church in rural Arkansas.
In 1981, Newton performed and recorded "Choir" and licensed all rights in the sound recording to
ECM Records for $ 5000.
The license covered only the sound recording, and it is undisputed that
Newton retained all rights to the composition of "Choir." Sound recordings and their underlying
compositions are separate works with their own distinct copyrights. 17 U.S.C. ß 102(a)(2), (7).
The defendants and appellees include the members of the rap and hip-hop group Beastie Boys,
and their business associates. In 1992, Beastie Boys obtained a license from ECM Records to use
portions of the sound recording of "Choir" in various renditions of their song "Pass the Mic" in ex-
In relevant part, the license reads as follows:
1) [Newton] herewith grants, transfers and assigns to ECM without limitations and restrictions whatsoever the
exclusive rights to record his performances and to exploit these recordings in perpetuity throughout the world in any
. . . .
3) The grant of rights according to section 1) especially, includes the rights to manufacture in quantitiy [sic], to dis-