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Article: October 2019: EU Litigation Update

October 31, 2019
Business Litigation Reports

Metall auf Metall – 20 years of litigation over the sampling of two seconds, but no end in sight?


  1. Introduction

More than 20 years of litigation.  Already eight court decisions.  Hamburg, Karlsruhe, Brussels back and forth.  But no resolution so far.  And why?  Because of the sampling of two seconds!

            These are the remarkable characteristics of an exceptional copyright case called “Metall auf Metall”.  The latest stage in this far reaching litigation has recently concluded, when the Court of Justice of the European Union (“CJEU”) responded to six legal questions referred to it by the German Federal Supreme Court (“FSC”).  In short, the CJEU ruled that the sampling of a sound recording, even a very short excerpt, must be regarded as a partial reproduction of the original work if it is still recognizable.  The use of such unmodified and still recognizable samples therefore requires the consent of the right holder.

While the facts of the case are rather simple and quickly summarized, the dimensions of the legal problem to be solved were unforeseeable in the beginning.  And its outcome remains unpredictable.

On March 8, 1999, the German electronic music band Kraftwerk filed a copyright infringement action against the German music producer Moses Pelham. Pelham had used two seconds of Kraftwerk’s song “Metall auf Metall” (published in 1977) as a sample in the 1997 hip hop song “Nur mir” performed by artist Sabrina Setlur. In that song, the sample was used as a repeated sequence for the background rhythm and played at a 5% slower speed. Kraftwerk claimed they had never consented to such use.  According to Kraftwerk, this reproduction infringed their exploitation rights as producers of an audio recording (so-called performance right protected under copyright law).  They claimed an injunction, information and damages.

The central legal question in dispute, thus, was whether the use of a two second sample of an audio recording in a new audio work is sufficient to constitute an infringement of the exploitation rights of producers of audio recordings under the German Copyright Act (“GCA”).

  1. Procedural History

While the case appeared to be rather narrow, the FSC and later the German Constitutional Court (“GCC”) expanded the issue by starting to discuss the conflicting constitutional rights of users (freedom of arts) and producers of audio recordings (guarantee of property) in cases of music sampling.

  1. Hamburg Regional Court (file: 308 O 90/99) – Metall auf Metall

The Regional Court of Hamburg rendered its decision on October 8, 2004. The court ruled that Kraftwerk’s exploitation rights as producers of audio recordings were infringed and granted the injunction, information and damages claims (the latter on the merits only).  The court held that even the smallest parts of a recording were protected, while no copyright exceptions or limitations applied.

  1. Higher Regional Court of Hamburg (file: 5 U 48/05) – Metall auf Metall

The Higher Regional Court of Hamburg dismissed Pelham’s appeal and confirmed the decision on June 7, 2006.  While the Court emphasized that even though “smallest samples” may not be generally protected, it held that copyright protection had to be granted if the sample represented the characteristic element of the audio recording, which needed to be perceptible in the song using the sampling.

  • Federal Supreme Court (file: I ZR 112/06) – Metall auf Metall

On November 20, 2008, the FSC referred the case back to the Higher Regional Court of Hamburg.  While the FSC confirmed that even the copy of a small sample of a recording could suffice to infringe (under no further requirements), the FSC found that the appeal court had not evaluated whether sampling could be exempted under an analogous application of the free use exception in Sec. 24 para. 1 of the GCA (which in summary provides that an independent work created by the free use of the work of another person can be published or exploited without the consent of the author of the work used; the term “free use” obviously needs interpretation, but in essence, this exemption covers the use of another’s work if the other’s work is still recognizable and also not just copied but, for example, put into a new context by the independent work).  The FSC also shared its thoughts on an exemption for sampling:

  • In principle, Sec. 24 para. 1 GCA could be applied to sampling by way of analogy.
  • However, no analogous application was possible, if:
    • (i) the user could have rerecorded the sample by himself, instead of copying the original recording (equal replay), or
    • (ii) the sample was perceptibly used as the melody of the new song.
  1. Higher Regional Court of Hamburg (file: 5 U 48/05) – Metall auf Metall II

After the FSC’s remand, the Higher Regional Court of Hamburg dismissed the appeal again on August 17, 2011, confirming the infringement also in light of Sec. 24 GCA.  The Court found that the corresponding requirements, even if applied by way of analogy, were not met.  While it denied that the sample was a melody, it held that a copy had not been necessary, because the defendants could have equally replayed the sequence themselves, referring to two expert witnesses.

  1. Federal Supreme Court (file: I ZR 182/11) – Metall auf Metall II

On December 13, 2012, the FSC confirmed the appeal decision of the Higher Regional Court of Hamburg.  The FSC confirmed that the appeal court was right when it found that the capabilities of an average music producer were decisive for the question, if an equal replay of the sample could be conducted.  The Court pointed out that without such an objective test, an inexperienced and lousy music producer could more easily claim than an experienced and skilled producer that he with his individual skills and substandard equipment would not have been able to create a replay of the original sample of sufficient quality. The user’s freedom of art was further not constrained by such interpretation, even if such a replay was costly and time consuming.

  1. Constitutional Court (file: 1 BvR 1585/13) – Metall auf Metall

After the civil case had been concluded by the FSC’s second decision, Moses Pelham successfully claimed that this decision infringed Art. 5 para. 3 sent. 1 of the German Constitution (freedom of arts). On May 31, 2016, the previous decisions were vacated by the Federal Constitutional Court and the case was referred back to the FCS, because the alternatives of licensing or equal replay were found to be too limiting.  On the one hand, there was no right to be licensed, on the other hand, such replay could be costly and time consuming, while it would not ensure the same result.  In addition the GCC argued that sampling was a characteristic feature of hip hop music, which did not much hurt the economic interests of producers of audio recordings.

  • Federal Supreme Court (file: I ZR 115/16) – Metall auf Metall III

Before assessing the case for a third time and in the light of the GCC’s decision, the FCS stayed the proceedings and referred the following six questions to the CJEU on June 1, 2017:

  • Questions 1 & 2: Is there an infringement of the phonogram producer’s exclusive right to reproduce its phonogram if only very short audio snatches are taken and transferred to another phonogram? Can the latter be defined as a copy within the meaning of the Directive?
  • Question 3: Can the Member States enact a provision limiting the producer’s exclusive right in such a way that an independent work created in free use of its phonogram may be exploited without his consent?
  • Question 4: Can it be said that a work or other subject matter is being used for quotation purposes if it is not evident that another person’s work is being used?
  • Question 5: Do the provisions of EU law allow any latitude in terms of implementation in national law?
  • Question 6: In what ways are the EU fundamental rights to be taken into account when ascertaining the scope of protection (and of exceptions or limitations) of the exclusive right of the producer to reproduce its phonogram ?
  1. Court of Justice of the EU (file: C-476/17) – Pelham e.a./Hütter, Schneider-Eisleben

The CJEU rendered its decision on July 29, 2019 by essentially ruling that musicians cannot sample other artists’ records without permission, regardless of their length.  The Court’s primary rationale is very clear:  The reproduction by a user of a sound sample, even if very short, must be regarded as a “partial” reproduction of that audio recording so that such a reproduction falls within the exclusive right granted to the producer.  Yet, one exception applies if a party makes use of an audio recording’s sample in order to embody it, in a modified and unrecognizable form, in another audio recording.  To strike a fair balance between different interests, such a use could not qualify as ‘reproduction’ and no consent of the producer would be necessary (due to the freedom of arts, Art. 13 of the Charter of Fundamental Rights of the EU).

As for Question 3, the Court declared Sec. 24 para. 1 GCA (applied by way of analogy) - allowing a distinct work, created in the free use of a protected work, to be published and exploited without the consent of the right holder - to be non-compliant with EU law.  In fact, exceptions and limitations provided at the EU level must be considered exhaustive, so that the Member States do not enjoy any margin of discretion in the determination of further limitations, distinct to the ones already provided by EU law.

Lastly, the Court set forth the perimeter for the “exception for quotations” (Sec. 51 GCA): If the work from which a sample was taken was still recognizable to the ears of the user, the use may still amount to quotation, especially where the intent of the use is to enter “into a dialogue” with the protected work.  However, the use of a sample is not a quotation if it is not possible to identify the work in question.

  1. Outlook

Undoubtedly, the CJEU decision will have a significant impact on the music industry. Following the reasoning of the Court, it all comes down to a strict scrutiny of originality in musical compositions.  While clearer requirements have been put in place for the quotation exception, can the same be said for sampling?  Who will be the ultimate ear to decide whether a sample can be recognized within a different song where it is copied?

Many are the questions still unanswered, almost certainly as many as the years of litigation yet ahead.