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NY Court of Appeals Limits Protection of Pre-1972 Sound Recordings Under Common Law
Practical Law Legal Update w-005-1343 (Approx. 3 pages)
NY Court of Appeals Limits Protection of Pre-1972 Sound Recordings Under Common Law
by Practical Law Intellectual Property & Technology
| Law stated as of 22 Dec 2016 • New York, USA (National/Federal) |
In Flo & Eddie, Inc. v. Sirius XM Radio, Inc., the New York Court of Appeals ruled that New York state law does not recognize an exclusive right of public performance in sound recordings in response to a certified question from the US Court of Appeals for the Second Circuit.
On December 20, 2016, in Flo & Eddie, Inc. v. Sirius XM Radio, Inc., the New York Court of Appeals answered a certified question from the US Court of Appeals for the Second Circuit ruling that, under New York common law, there is no right of public performance for sound recordings ( (N.Y. Dec. 20, 2016)). State law only applies to copyrights in areas not covered by the federal Copyright Act (17 U.S.C. §§ 101-810). Sound recordings fixed before 1972 are governed by state law because they are specifically excluded from federal protection until 2067 (17 USC § 301(c)).
Flo & Eddie, Inc. is owned by two of the original members of the band, The Turtles, which owns the copyrights in approximately 100 of the band’s pre-1972 sound recordings. Sirius XM Radio, Inc. is a satellite digital radio service that broadcasts pre-1972 sound recordings without paying royalties to or obtaining a license from the copyright holders.
Flo & Eddie brought a class action suit against Sirius in the US District Court for the Southern District of New York alleging common law copyright infringement and unfair competition. Sirius moved to dismiss the case. The district court:
- Found that copyright holders have an exclusive right of public performance in pre-1972 sound recordings.
- Denied Sirius’s summary judgment motion and request for consideration.
- Certified an interlocutory appeal.
On appeal, the Second Circuit decided that there was a significant and unanswered question of state law and certified the question to New York’s highest court, the New York Court of Appeals.
The certified question asked:
- Whether New York common law grants owners of a sound recording an exclusive right to control its public performance.
- If so, what is the nature and scope of that right.
The Court of Appeals found no exclusive right in public performance of pre-1972 sound recordings. The court reasoned that:
- Common law copyright only prevents others from copying and selling sound recordings.
- A purchaser of an authorized sound recording may use it as they please, including playing the recording publicly.
The court stated that it is not equipped to create protection for copyright where protection has not been established by the legislature or previous case law. The court also noted that copyright owners have not attempted to assert common law protection for pre-1972 sound recordings, indicating that they did not believe the protection exists.
Because the court found no right of public performance for sound recordings, it did not proceed to define the nature or scope of that right.
This is one of three class action suits Flo & Eddie brought against Sirius XM. The others were in California (Flo & Eddie, Inc. v. Sirius XM Radio, Inc., (C.D. Cal. Sept. 22, 2015)) and Florida (Flo & Eddie, Inc. v. Sirius XM Radio, Inc., (S.D. Fla. June 22, 2015). For more on the decision by the US District Court for the Southern District of Florida, see Legal Update, Sirius XM Radio Does Not Infringe Copyrighted Sound Recordings: S.D. Fla.