BORROWED

The memorandum and order opens on four words inside quotation marks, with a footnote number attached. “Thou shalt not steal.” The footnote sends the reader to Exodus, Chapter 20: Verse 15. By the close of that first paragraph Kevin Thomas Duffy, District Judge, has set the frame he intends to hold: the conduct in front of him, he wrote, “violates not only the Seventh Commandment, but also the copyright laws of this country.”

The case is Grand Upright Music Ltd. v. Warner Bros. Records, Inc., decided in the Southern District of New York on December 17, 1991. It is a hip-hop case. The story it carries: the day sampling became theft, the ruling that made clearance mandatory. The court’s own findings are the reason that story cannot stand.

Start with what the order is. It is a preliminary injunction, sought by order to show cause, and the defendants admitted the use. Their post-hearing memorandum conceded that the Biz Markie album “embodies the rap recording” at issue, one that uses three words from a composition written and performed by Gilbert O’Sullivan “and a portion of the music taken from the O’Sullivan recording.” With the use conceded, a single question was left:

The only issue, therefore, seems to be who owns the copyright to the song “Alone Again (Naturally)” and the master recording thereof made by Gilbert O’Sullivan.

Ownership. Not whether a sample infringes. That question was never in front of the court, because nobody put it there.

Now read the findings at star page 185, where the court names who already knew the rule. Each defendant who testified, the court found, knew a license was necessary “before using the copyrighted work in another piece.” The finding walks the corporate defendants one at a time, each with a deposition cited by name and date. “Warner Bros. Records, Inc. had a department set up specifically to obtain such clearances.” Cold Chillin’ Records, Inc. “knew that such clearances were necessary.”

A department. Staffed and standing, at a major label, before this order existed.

The correspondence says it again. Before the album was released the defendants discussed the need for a license among themselves, decided to contact O’Sullivan, and wrote to his brother and agent with a copy of the tape enclosed. An attorney for the defendant wrote that Biz Markie “would like to obtain your consent” to the use of the original composition. The most persuasive evidence of ownership in the whole hearing, the court held, “comes from the actions and admissions of the defendants,” and it gave the reason in two sentences that both end in exclamation points: “One would not agree to pay to use the material of another unless there was a valid copyright! What more persuasive evidence can there be!”

Then comes the August 16 letter, sent by Biz Markie’s attorneys to counsel for Cold Chillin’ Records and copied to the other defendants. It records that Cold Chillin’ knew that “other sample clearance requests were pending at that time.” It names an earlier matter the label had handled properly, “as it did in the situation involving the Eagles samples.” It puts the failure at a precise place: the release went out “prior to the appropriate consents being secured in connection with such samples.”

That is not a rule being made. That is a rule being kept badly by an industry that had already built the paperwork for keeping it.

What follows is on the table, not in the Docket.

The excuse the defendants offered appears twice in this document, and the two appearances do not name the same business. In the opening paragraph the court recites it as the claim that “stealing is rampant in the music business.” Footnote 2 disposes of the same argument inside a narrower category:

The argument suggested by the defendants that they should be excused because others in the “rap music” business are also engaged in illegal activity is totally specious. The mere statement of the argument is its own refutation.

One order, two recitals of one argument, and the category shrinks between them. The court does not explain the difference and was never asked to. It is on the page in its own hand, and the refusal lands on the narrower name.

The narrower name is hip-hop.

The last paragraph grants the injunction and gives the plaintiff five days to submit a decree. Then it adds the referral that separates this file from an ordinary civil order:

This matter is respectfully referred to the United States Attorney for the Southern District of New York for consideration of prosecution of these defendants under 17 U.S.C. § 506(a) and 18 U.S.C. § 2319.

The sentence just above it says what the referral is for. The defendants’ “callous disregard for the law and for the rights of others requires not only the preliminary injunction sought by the plaintiff but also sterner measures.” And footnote 3 keeps the criminal question standing on its own legs: “The resolution of any issue left open in this civil matter should have no bearing on the potential criminal liability in the unique circumstances presented here.” Whatever the civil case did next, the referral was not to be read as answered by it.

The referral says “these defendants.” The caption gives one of them his name: Marcel Hall, professionally known as Biz Markie.

A preliminary injunction is an ordinary instrument. It is what a plaintiff asks for when the record is one-sided and the harm is continuing, and the court plainly grants one. A referral to a federal prosecutor is not ordinary. The order does both inside the same paragraph, and it is the second one that changes what this file is.

Nothing in this order invents a requirement. Nothing in it decides whether a sample infringes. What it adds to a rule every party already knew is a prosecutor.

The industry knew. Warner Bros. had the department. Biz Markie’s lawyers had already written the letter. What was new on December 17, 1991 was the referral.