De minimis is a Latin expression which means, about minimal things. The concept of de minimis in intellectual property arises as a defence for copyright infringement. The concept of de minimis is applicable when a sample of a musical work, an excerpt from a literary work, a photograph or any artistic Copyrighted work is used unauthorisedly but the use of which is so small or inconsequential that it is likely to cause no significant harm to the Copyright holder.
As opposed to the legal system in India, where the de minimis theory is applicable only to Copyright law, in the U.S. it is actively used as defence against Copyright and Trademark infringement both. In India TV independent news v. Yashraj telefilms Pvt Ltd, assuming the veracity of the reports, I am inclined to doubt the tenability of the claim in the lights of aforesaid Delhi HC judgment and cannot however reach at a conclusive opinion in the lights of incomplete facts. The intention therefore is to flag the de minimis principles and make certain prima facie observations.
There are three different ways de minimis might apply to copyright law: (1) the infringement itself is too small to bother with, (2) the amount taken is too small to be considered original, and (3) too little was taken for there to be substantial similarity.
The Indian courts have recently relied on the de minimis argument as a valid defence for infringement allegations. The de minimis principle argues that some issues are so minor in nature that the courts will not categorise them as contentious at all.
A number of copyright infringement cases have reached the courts of India wherein the de minimis principle is used as a defence. One of the land mark case; India TV independent news v. Yashraj telefilms Pvt Ltd ., Where the Delhi high court have used this doctrine as a defence and mentioned that minimum amount of sample copied may not lead to copyright infringement. Delhi High Court has paved the way for the de minimis maxim to not only apply in copyright law cases in India, but also to successfully dispute a copyright infringement claim; and successfully at that.
Given that de minimis has been held to be a valid defence to a copyright infringement claim, these factors includes:
(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
Similarly in Saregama India Ltd v. Viacom 18 Motion Pictures the Calcutta High Court also dealt with copyright infringement. A few words of a famous song from an old film had been used in a recently released film. In a prima facie opinion, the court held that as the few words were segregated from the rest of the song, no copyright claim could be made, as these words were used in common parlance. However, the Calcutta High Court did not apply the principles laid down by the Delhi High Court to conclusively decide if the use of few words of a song could deploy the de minimis defence.
However, in Bridgeport Music, Inc. v. Dimension Films such a ruling was overturned on appeal, the US appeals court explicitly declining to recognize a de minimis standard for digital sampling. In a lawsuit brought by Bridgeport Music and other owners of “Get Off Your Ass,” a federal judge found the borrowing of this one chord to be “de minimis” and therefore not a violation of copyright law. But two weeks ago, the U.S. Court of Appeals for the Sixth Circuit reversed that decision. It did so by interpreting the section of the copyright law that applies to sound recordings to impose liability even if only one note of a previous recording is borrowed.
In Newton v. Diamond , the Beastie Boys, a famous hip-hop band, used a three-note segment from a musical composition by avant-garde jazz composer James Newton. The court found that this copying was de minimis. The sequence, which the Beastie Boys had digitally looped into the background of its recording “Pass the Mic,” was a “simple, minimal, and insignificant” part of Newton’s musical composition and lacked any distinctive elements.
Also in E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc. , (finding that fair use doctrine did not apply when marks were not identical—defendant’s use of mark PIG PEN for a strip club in a video game was not identical to plaintiff’s mark PLAY PEN—and holding that use was not infringement based on the First Amendment).
Thus, it is fairly clear from this decision that despite the relative uncertainty about its nature and application, it is clear de minimis can be used in copyright law as a valid defence to a claim for copyright infringement.
– Pallav Tarnekar
1. 192 (2012) DLT 502.
3. 2004 U.S. LEXIS 18810 (6th Cir. Sept. 7, 2004).
4. (9th Cir. 2004)
5. 547 F.3d 1095 (9th Cir. 2008)