United States: New York Court of Appeals Says No Common Law Public Performance Right For Pre-1972 Sound Recordings

On December 20, 2016, the New York Court of Appeals, the highest court in the state, held that no common law public performance right exists for pre-1972 sound recordings. The issue of whether a common law public performance right exists for pre-1972 sound recordings in New York was an issue of first impression. Although this holding is only binding on New York state courts and federal cases decided under New York law, it is anticipated that, coming from a premier IP jurisdiction, it will also be highly influential for courts throughout the nation that are adjudicating or may adjudicate similar cases.

In 2013, members of the band, The Turtles, initiated a lawsuit against SiriusXM, the nation's largest satellite digital radio service, claiming rights to royalties for SiriusXM's broadcasts of their pre-1972 recordings. The radio service broadcasts pre-1972 sound recordings, including those recorded by The Turtles, but does not pay the group or other artists for broadcasting the recordings.

The court was tasked with determining whether the band members had a right to control public performances of works that were produced prior to 1972. In coming to the conclusion that the members had no such right, the court initially recognized that Congress did not provide a public performance right for pre-1972 sound recordings. Congress first provided copyright protection to sound recordings in 1971, effective February 15, 1972, but limited the protection to recordings produced after such effective date. Further, it did not initially grant owners of post-1972 copyrights in sound recordings a public performance right. Even the Digital Performance Right in Sound Recordings Act of 1995 ("DPRA"), effective February 1996, only provided a limited and highly regulated digital performance right that did not extend to nonsubscription broadcast transmissions, namely performances transmitted through AM/FM radio stations. Therefore, the court found significant that Congress has never recognized a general public performance right for post-1972 sound recordings nor provided generally for federal protection of pre-1972 sound recordings. It emphasized, however, that Congress expressly did not pre-empt any existing state laws concerning pre-1972 sound recordings, and such rights under state statute or common law may be asserted until February 15, 2067.

The court then analyzed its case law to determine whether New York courts have recognized a public performance right for pre-1972 sound recordings. It highlighted cases that discussed distribution and reproduction rights for owners of copyrighted works – these rights being necessary to prevent piracy of the works – but determined that the question of whether a public performance right in pre-1972 sound recordings existed in common law was an issue of first impression.

Finding no cases that addressed the issue, the New York Court of Appeals answered the question in the negative. It explained that the failure of artists to assert the right in court supports the contention that no such right existed. In fact, the court expressed its belief that artists failed to assert the right because they derived benefits from radio stations playing their music. For example, artists and record companies experienced an increase in album sales as a result of radio play.

The court also expressed concern about courts establishing a public performance right where none existed before. It explained that courts do not have the resources to balance the various interests that may be affected if such a right were to exist. It further encouraged artists to, instead, ask Congress to pass legislation on the issue. Congress, it explained, has the proper tools to establish the right and the scope of its protection.

Whether Congress should establish this right was a question the court seemed to also answer in the negative. The court seemed skeptical about using resources to expand copyright protection to pre-1972 works when, in its view, such a protection would not encourage the creation of new music because the works were produced decades ago.

In regard to the parties, the New York Court of Appeals noted that this holding will allow SiriusXM to avoid paying a higher rate in royalties to The Turtles members. Although the parties settled their dispute before the issue was raised in this court, the settlement amount was reportedly contingent on the result of actions pending between the parties, including this one.1

In regard to the resolution of similar cases, this holding represents an understanding that state courts should adjudicate this issue under state law. As the court discussed, federal copyright law does not provide an answer to the dilemma presented by the facts of this case. Therefore, federal courts should realize that resolution of this issue should be handled by the states or, at the very least, state courts should provide guidance regarding the existence of the right under state law.

Federal courts seem to be asking for such guidance. This New York Court of Appeals decision was the result of a certified question regarding state law from the Second Circuit Court of Appeals. Additionally, at least one other federal court has followed the Second Circuit's example. The 11th Circuit has also asked the Florida Supreme Court to determine whether a public performance right exists for pre-1972 sound recordings under Florida state law. Perhaps the New York Court of Appeals' decision may play a role in the analysis to be engaged in by the Florida Supreme Court.

Further, this case may affect the future of federal court decisions regarding the existence of a public performance right for pre-1972 sound recordings under state law. The U.S. District Court for the Central District of California granted summary judgment in favor of The Turtles, finding that such a right existed under California state law. Although the Central District's decision was based on a state statute rather than the common law, the understanding gained from the recent New York case and the pending Florida case may influence whether the decision is appealed or eventually certified to the California state courts. Further, federal courts may be more reticent about ruling on state law applied to pre-1972 sound recordings knowing that their decisions may eventually be overruled or revised by the state courts.

The Court of Appeals decision is also notable for a well-reasoned concurrence and dissent that each provide insight on how similar cases might be viewed by other courts. In particular, the concurrence includes a detailed discussion on the kinds of uses of sound recordings that fall on a continuum running from those that are clearly performances to those that are clearly reproductions and distributions, with some uses that don't comfortably fall within either category.

Ultimately, state courts will have to decide whether a public performance right in pre-1972 sound recordings exists in their state. This will present a hurdle to enforcing any such performance right on a uniform nationwide basis. Consequently, copyright owners in pre-1972 sound recordings should consult their attorneys regarding any interest they may have in public performances of their pre-1972 sound recordings, and, if the state has or appears to have granted the right, how best to enforce it.

Footnotes

1 See Jonathan Stempel, Sirius May Settle Music Copyright Suit Brought by the Turtles for $100M, insurancejournal.com, Nov. 30, 2016, available at http://www.insurancejournal.com/news/national/2016/11/30/433536.htm.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Events from this Firm
24 Oct 2017, Seminar, Los Angeles, United States

Presented by The American Bar Association White Collar Crime Committee.

24 Oct 2017, Conference, Los Angeles, United States

Corporate transactions are not just in the domain of M&A corporate attorneys. This program will cover the important role of employment and benefits counsel in shaping mergers and acquisitions. The presenters will provide practical guidance on conducting due diligence of labor, employment, employee benefits and executive compensation arrangements of target companies.

25 Oct 2017, Business Breakfast, New York, United States

Please join us for a complimentary breakfast program and networking with private equity investment banking professionals to discuss private equity activity and prospective deal flow opportunities in the technology industry.

 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.