CTQ-2016-00001
Court of Appeals
of the
State of New York
FLO & EDDIE, INC., a California Corporation,
individually and on behalf of all others similarly situated,
Plaintiff-Respondent,
– against –
SIRIUS XM RADIO INC., a Delaware Corporation,
Defendant-Appellant,
DOES, 1 THROUGH 10,
Defendants.
––––––––––––––––––––––––––––––
ON APPEAL FROM THE QUESTION CERTIFIED BY THE UNITED STATES
COURT OF APPEALS FOR THE SECOND CIRCUIT IN DOCKET NO. 15-1164-CV
BRIEF OF AMICI CURIAE COPYRIGHT AND
INTELLECTUAL PROPERTY LAW PROFESSORS
IN SUPPORT OF DEFENDANT-APPELLANT
SIRIUS XM RADIO, INC.
DANIEL L. SCHMUTTER
HARTMAN & WINNICKI, P.C.
74 Passaic Street
Ridgewood, New Jersey 07450
Tel: (201) 967-8040
Fax: (201) 857-4124
Attorneys for Amici Curiae
Copyright and Intellectual Property
Law Professors
Date Completed: August 29, 2016
i
TABLE OF CONTENTS
Table of Contents ....................................................................................................... i
Table of Authorities .................................................................................................. ii
Questions Presented .................................................................................................. 1
Interest of Amici Curiae ............................................................................................ 1
List of Amici Curiae .................................................................................................. 2
Summary of Argument ............................................................................................. 4
Argument ................................................................................................................... 5
I. Statutory Background ..................................................................................... 5
II. For 75 Years, It Has Been Considered Settled Law That There Is
No Common-Law Public Performance Right for Sound Recordings. ............ 8
III. Proponents Have Repeatedly Denied The Existence of Public
Performance Rights When Seeking Relief From Congress. ........................ 14
IV. Applying a Public Performance Right to Broadcasters and Listeners
Located Outside of New York Would Violate the Dormant Commerce
Clause. ........................................................................................................... 20
Conclusion .............................................................................................................. 21
Certificate of Compliance ....................................................................................... 23
ii
TABLE OF AUTHORITIES
Cases
American Vitagraph, Inc. v. Levy, 659 F.2d 1023 (9th Cir. 1981) ............................ 6
Brown v. Tabb, 714 F.2d 1088 (11th Cir. 1983) ........................................................ 6
Caliga v. Inter Ocean Newspaper Co., 215 U.S. 182 (1909) ................................... 6
Capitol Records, Inc. v. Mercury Records Corp., 221 F.2d 657
(2d Cir. 1955) ........................................................................................... 11, 12
Capitol Records, Inc. v. Naxos of America, Inc., 4 N.Y.3d 540,
797 N.Y.S.2d 352 (2005) ............................................................................... 13
Fleischer Studios, Inc. v. Ralph A. Freundlich, Inc., 73 F.2d 276 (2d Cir. 1934) .... 5
Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 62 F. Supp. 3d 325
(S.D.N.Y. 2014) ............................................................................................. 14
Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 114 U.S.P.Q.2d (BNA) 1997
(S.D. Fla. June 22, 2015) ................................................................................ 8
Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 821 F.3d 265 (2d Cir. 2016) ............... 3
Flo & Eddie, Inc. v. Sirius XM Radio, Inc., ___ F.3d ___, 2016 WL 3546433
(11th Cir. June 29, 2016) ................................................................................ 8
Holmes v. Hurst, 80 F. 514 (2d Cir. 1897), aff’d, 174 U.S. 82 (1899) ..................... 6
Louis DeJonge & Co. v. Breuker & Kessler Co., 235 U.S. 33 (1914) ...................... 6
McIntyre v. Double-A Music Corp., 166 F. Supp. 681(S.D. Cal. 1958) .................. 7
Metropolitan Opera Ass’n v. Wagner-Nichols Recorder Co.,
199 Misc. 786, 101 N.Y.S.2d 483 (Sup. Ct. 1950),
aff’d, 279 App. Div. 632, 107 N.Y.S.2d 795 (1951) ............................... 10, 11
iii
Mifflin v. Dutton, 190 U.S. 265 (1903) ...................................................................... 6
Mills Music, Inc. v. Cromwell Music, Inc., 126 F. Supp. 54 (S.D.N.Y. 1954) .......... 7
RCA Mfg. Co. v. Whiteman, 114 F.2d 86 (2d Cir. 1940), cert. denied,
311 U.S. 712 (1940).............................................................................. passim
National Comics Publication v. Fawcett Publications, 191 F.2d 594
(2d Cir. 1951) .................................................................................................. 5
Rosette v. Rainbo Record Mfg. Corp., 354 F. Supp. 1183 (S.D.N.Y. 1973),
aff’d, 546 F.2d 461 (2d Cir. 1976) ................................................................... 7
Sam Francis Foundation v. Christie’s, Inc., 784 F.3d 1320 (9th Cir. 2015) ......... 21
Shapiro, Bernstein & Co. v. Miracle Record Co., 91 F. Supp. 473
(N.D. Ill. 1950) ............................................................................................... 7
Waring v. WDAS Broadcasting System, 194 A. 631 (Pa. 1937) ................................ 8
White-Smith Music Publishing Co. v. Apollo Co., 209 U.S. 1 (1908) ....................... 7
Statutes
17 U.S.C. § 101 ......................................................................................................... 7
17 U.S.C. § 114(a) ................................................................................................... 16
17 U.S.C. § 303(b) ..................................................................................................... 7
Copyright Act of 1909, Pub. L. 60-349, ch. 320, § 9, 35 Stat. 1077 ......................... 5
Copyright Act of 1909, Pub. L. 60-349, ch. 320, § 18, 35 Stat. 1079 ....................... 5
N.C. Gen. Stat. Ann. § 66-28 ..................................................................................... 8
S.C. Code § 39-3-510 ................................................................................................. 8
iv
Sound Recording Amendments Act of 1971, Pub. L. No. 92-140, § 1,
85 Stat. 391 .................................................................................................... 15
Legislative Materials
Copyright Law Revision, Hearings Before the Subcommittee on Patents,
Trademarks, and Copyrights of the Senate Committee on the Judiciary,
90th Cong., 1st Sess., pursuant to S. Res. 37 on S. 597, Part 2 (1967) ................... 17
Copyright Law Revision, Hearings Before the Subcommittee on Patents,
Trademarks, and Copyrights of the Senate Committee on the Judiciary,
90th Cong., 1st Sess., pursuant to S. Res. 37 on S. 597, Part 3 (1967) ................... 18
Economic Conditions In the Performing Arts, Hearings Before the Select
Subcommittee on Education of the House Committee on Education and
Labor, 87th Cong., 1st and 2d Sess. (1962) ............................................................ 17
H.R. Rep. 92-487, at 3 (1971), reprinted in 1971 U.S.C.C.A.N. 1566 .................. 15
Performance Rights in Sound Recordings, Hearings Before the Subcommittee
on Courts, Civil Liberties, and the Administration of Justice of the House
Committee on the Judiciary, 95th Cong., 2d Sess. (1978) ................................ 18, 19
Regulations
47 C.F.R. § 25.144(a)(3)(1) (2014).......................................................................... 21
47 C.F.R. § 25.144(e)(4) (2014) .............................................................................. 21
Rules
N.Y.C.R.R. 500.1(j)(1) ........................................................................................... 23
N.Y.C.R.R. 500.13(c) ............................................................................................. 23
v
Other Authorities
Robert L. Bard & Lewis S. Kurlantzick, A Public Performance Right in
Recordings: How to Alter the Copyright System Without Improving It,
43 Geo. Wash. L. Rev. 152 (1974) .......................................... 9, 10, 13, 15, 21
Steven J. D’Onofrio, In Support of Performance Rights in Sound Recordings,
29 UCLA L. Rev. 168 (1978) ........................................................................ 15
Benjamin Kaplan, Performer’s Right and Copyright: The Capitol Records
Case, 69 Harv. L. Rev. 409 (1956) ................................................................ 13
Linda A. Newmark, Performance Rights in Sound Recordings: An Analysis of
the Constitutional, Economic, and Ethical Issues, 38 Copyr. L. Symp.
(ASCAP) 141 (1992) ..................................................................................... 14
Kevin Parks, MUSIC AND COPYRIGHT IN AMERICA: TOWARD THE CELESTIAL
JUKEBOX (ABA 2012) .......................................................................... 8, 9, 10
Report of the Register of Copyrights, Copyright and the Music Marketplace
(Feb. 2015) ..................................................................................................... 16
Report of the Register of Copyrights, Copyright Implications of Digital
Audio Transmission Services (Oct. 1991) ............................................... 16, 19
Report of the Register of Copyrights, Federal Copyright Protection for
Pre-1972 Sound Recordings (Dec. 2011) ................................................ 16, 22
Report of the Register of Copyrights, Performance Rights in Sound
Recordings (June 1978) ........................................................................... 16, 18
Barbara A. Ringer, Copyright Law Revision Study No. 26, The Unauthorized
Duplication of Sound Recordings (1957) ....................................................... 8
Harry P. Warner, Unfair Competition and the Protection of Radio and
Television Programs (Part II), 1950 Wash. U.L.Q. 498 ................................ 9
1
QUESTIONS PRESENTED
The United States Court of Appeals for the Second Circuit certified to this
Court, and this Court accepted for review, the following question: “Is there a right
of public performance for creators of sound recordings under New York law and, if
so, what is the nature and scope of that right?” Flo & Eddie, Inc. v. Sirius XM
Radio, Inc., 821 F.3d 265, 272 (2d Cir. 2016).
INTEREST OF AMICI CURIAE
Amici curiae, whose names and institutional affiliations are listed below, are
all professors who teach and write about copyright law or about intellectual
property law in general. Amici do not have any financial interest in the outcome of
this litigation. The only interest that amici have in this litigation is a respect for the
historical development of copyright law, and a commitment to the orderly
development of copyright law in the future. Amici do not necessarily agree on the
merits of a public performance right for sound recordings, but amici agree that 1)
historically there has not been any public performance right in sound recordings
under state law, and 2) the issue should be addressed on a nationwide basis, by
Congress, prospectively, rather than on a piecemeal basis through state-by-state
litigation.
2
LIST OF AMICI CURIAE
Howard B. Abrams
Professor of Law
University of Detroit Mercy School of Law
Brandon Butler
Director of Information Policy
University of Virginia Library
Michael A. Carrier
Distinguished Professor of Law
Rutgers School of Law
Michael W. Carroll
Professor of Law and Director
Program on Information Justice and Intellectual Property
American University Washington College of Law
Ralph D. Clifford
Professor of Law
University of Massachusetts School of Law
Brian L. Frye
Associate Professor of Law
University of Kentucky College of Law
William Gallagher
Professor of Law and Co-Director
IP Law Center
Golden Gate University School of Law
Eric Goldman
Professor of Law and Co-Director
High Tech Law Institute
Santa Clara University School of Law
James Grimmelmann
Professor of Law
Cornell Tech and Cornell Law School
3
Peter Jaszi
Professor of Law and Director
Glushko-Samuelson Intellectual Property Clinic
American University Washington College of Law
Yvette Joy Liebesman
Professor of Law
Saint Louis University School of Law
Brian J. Love
Assistant Professor of Law and Co-Director
High Tech Law Institute
Santa Clara University School of Law
Tyler T. Ochoa
Professor of Law
High Tech Law Institute
Santa Clara University School of Law
David G. Post
Professor of Law (ret.)
Temple University Beasley School of Law
Michael Risch
Professor of Law
Villanova University School of Law
Matthew Sag
Professor of Law
Loyola University of Chicago School of Law
Rebecca Tushnet
Professor of Law
Georgetown University Law Center
David S. Welkowitz
Professor of Law
Whittier Law School
4
SUMMARY OF ARGUMENT
From the early days of radio, performers and record companies have sought
to establish a public performance right for sound recordings. In 1940, the U.S.
Court of Appeals for the Second Circuit ruled that no such right existed or could be
enforced in New York. After the U.S. Supreme Court denied certiorari, a wide-
spread consensus developed that broadcasters were free to play sound recordings
without any obligation to pay royalties to performers or record companies. During
the past 75 years, proponents have repeatedly asked Congress to enact a public
performance right for sound recordings. Each time, proponents contended that
they did not have an existing public performance right in sound recordings, under
either state or federal law. With one limited exception, Congress has repeatedly
refused to enact a public performance right for sound recordings. Frustration with
Congressional inaction has resulted in this attempt to convince this Court to
recognize a public performance right in sound recordings under New York law for
the first time. Such a ruling would improperly extend New York law beyond the
borders of New York, as Internet and satellite broadcasters operate nationwide and
are unable to tailor their broadcasts to fit only within the borders of New York. If
public performance rights for sound recordings are to be recognized, it should be
left to Congress to do so on a nationwide basis, as recommended by the Register of
Copyrights, rather than through litigation on a state-by-state basis.
5
ARGUMENT
I. Statutory Background
Under the 1909 Copyright Act, an eligible work acquired federal copyright
protection when it was published with proper copyright notice. Copyright Act of
1909, Pub. L. 60-349, ch. 320, § 9, 35 Stat. 1077.1 (Proper copyright notice
consisted of 1) the word “Copyright” or the abbreviation “Copr.,” or in some cases
the symbol ©; 2) the year of first publication; and 3) the name of the copyright
owner. Copyright Act of 1909, Pub. L. 60-349, ch. 320, § 18, 35 Stat. 1079.2) If a
work was published without proper notice, it immediately and irrevocably entered
the public domain, meaning that it could be copied (and publicly performed)
without restriction. National Comics Publications, Inc. v. Fawcett Publications,
Inc., 191 F.2d 594, 598 (2d Cir. 1951) (per L. Hand, J.) (“It is of course true that
the publication of a copyrightable ‘work’ puts that ‘work’ into the public domain
except so far as it may be protected by [federal statutory] copyright. That has been
unquestioned law since 1774.”); Fleischer Studios, Inc. v. Ralph A. Freundlich,
Inc., 73 F.2d 276, 277 (2d Cir. 1934) (“Publication with notice of copyright is the
1 When the Copyright Act was codified in Title 17 in 1947, this section was
renumbered as section 10. Therefore cases decided after 1947 concerning this
section refer to it as section 10, rather than as section 9.
2 When the Copyright Act was codified in Title 17 in 1947, this section was
renumbered as section 19.
6
essence of compliance with the statute, and publication without such notice
amounts to a dedication to the public sufficient to defeat all subsequent efforts at
copyright protection.”).3
Before a work was published, it could be protected by state law, which
provided only a common-law right to publish (reproduce and distribute) the work.
Once the work was published, however, state-law protection was forfeited, and
unless the plaintiff took steps to secure a federal statutory copyright, the work
entered the public domain. See Caliga v. Inter Ocean Newspaper Co., 215 U.S.
182, 188 (1909) (“At common law, the exclusive right to copy existed in the author
until he permitted a general publication. Thus, when a book was published in print,
the owner’s common-law right was lost.”).
A work was “published” when copies of the work were distributed or
offered to the general public. Brown v. Tabb, 714 F.2d 1088, 1091 (11th Cir.
1983); American Vitagraph, Inc. v. Levy, 659 F.2d 1023, 1027 (9th Cir. 1981).4
Whether distribution of a work in the form of a “phonorecord” similarly divested a
work of its common-law copyright was for many years a contested issue. Some
3 This principle was carried forward from previous copyright acts. See Mifflin
v. Dutton, 190 U.S. 265, 265 (1903); Louis DeJonge & Co. v. Breuker & Kessler
Co., 235 U.S. 33, 35-37 (1914).
4 Again, this case law carried forward the definition that applied under pre-
1909 Act case law. See Holmes v. Hurst, 80 F. 514 (2d Cir. 1897), aff’d, 174 U.S.
82, 88 (1899).
7
courts held that distribution of phonorecords divested the common-law copyright
in the musical works contained in that recording. See Shapiro, Bernstein & Co. v.
Miracle Record Co., 91 F. Supp. 473, 475 (N.D. Ill. 1950); Mills Music, Inc. v.
Cromwell Music, Inc., 126 F. Supp. 54, 69-70 (S.D.N.Y. 1954); McIntyre v.
Double-A Music Corp., 166 F. Supp. 681, 682-83 (S.D. Cal. 1958). Other courts,
noting that the Supreme Court had defined a “copy” of a musical work as “a writ-
ten or printed record of it in intelligible notation,” White-Smith Music Publishing
Co. v. Apollo Co., 209 U.S. 1, 17 (1908), held that distribution of “phonorecords”
containing sound recordings of musical works did not constitute a publication of
the musical works contained on those recordings. Rosette v. Rainbo Record Mfg.
Corp., 354 F. Supp. 1183, 1188-92 (S.D.N.Y. 1973), aff’d, 546 F.2d 461 (2d Cir.
1976). For musical works, Congress eventually resolved the question in favor of
the latter view. 17 U.S.C. § 303(b). Unlike a musical work, however, a sound re-
cording can only be perceived through hearing, rather than by sight. Consequently,
there is no persuasive reason why the same definition of publication (limited to the
public distribution of “copies”) should be applied to sound recordings. Indeed,
under the 1976 Copyright Act, the definition of “published” specifically includes
the public distribution of “phonorecords” as well as “copies.” 17 U.S.C. § 101.
Consequently, a state remains free to hold that public distribution of phonorecords
completely or partially divests a common-law copyright in those recordings.
8
II. For 75 Years, It Has Been Considered Settled Law That There Is No
Common-Law Public Performance Right for Sound Recordings.
Since the dawn of radio broadcasting, performers and record companies
have sought to establish a right to exclude others from publicly performing their
sound recordings. See generally Kevin Parks, MUSIC AND COPYRIGHT IN AMERICA:
TOWARD THE CELESTIAL JUKEBOX 101-137 (ABA 2012). Early answers to the
question were split, with Pennsylvania recognizing a common-law right of public
performance, see Waring v. WDAS Broadcasting System, 194 A. 631 (Pa. 1937),
and three states (North Carolina, South Carolina, and Florida) enacting statutes
prohibiting recognition of such a right. See Barbara A. Ringer, Copyright Law
Revision Study No. 26, The Unauthorized Duplication of Sound Recordings 8-9 &
n.79 (1957).5 In 1940, the United States Court of Appeals for the Second Circuit
(per Judge Learned Hand) decided RCA Mfg. Co. v. Whiteman, 114 F.2d 86 (2d
Cir. 1940), cert. denied, 311 U.S. 712 (1940), which questioned the existence of a
common-law right of public performance and held that even assuming such a right
existed, any such right was divested when the sound recordings were first sold to
5 Two of those statutes are still in effect. See N.C. Gen. Stat. Ann. § 66-28;
S.C. Code § 39-3-510. Although Florida repealed its statute effective July 1, 1977,
a federal district court in Florida recently refused to recognize a public perfor-
mance right in sound recordings under Florida common law. Flo & Eddie, Inc. v.
Sirius XM Radio, Inc., 114 U.S.P.Q.2d (BNA) 1997 (S.D. Fla. June 22, 2015). On
appeal from that ruling, the Eleventh Circuit certified four questions to the Florida
Supreme Court. ___ F.3d ____, 2016 WL 3546433 (11th Cir. June 29, 2016).
9
the public, notwithstanding the restrictive legend on some of the records “Not
Licensed for Radio Broadcast.” 114 F.2d at 88.6
Although Whiteman was decided as a matter of New York law, “when the
Supreme Court refused to hear the case on December 16, 1940, it became official:
Judge Hand’s opinion was [accepted as] the last word on the legality of
broadcasting sound recordings.” Parks, at 121. See also Robert L. Bard & Lewis
S. Kurlantzick, A Public Performance Right in Recordings: How to Alter the
Copyright System Without Improving It, 43 Geo. Wash. L. Rev. 152, 155 (1974)
(“The last reported case involving purported common law performing rights was
R.C.A. Mfg Co. v. Whiteman.”); Harry P. Warner, Unfair Competition and the
Protection of Radio and Television Programs (Part II), 1950 Wash. U. L.Q. 498,
512 (Whiteman “for all practical purposes sounded the death knell of NAPA,” the
National Association of Performing Artists); id. at 514 (“The Whiteman case was
NAPA’s last attempt to secure a court adjudication via the common law.”) .
Instead, “performers refocused their efforts from the courts to Congress. No fewer
than six bills were introduced between 1942 and 1951; they were designed to bring
6 “[T]he monopoly of the right to reproduce the compositions of any author—
his ‘common-law property’ in them— was not limited to words; . . . and for the
purposes of this case we shall assume that it covers the performances of an
orchestra conductor. . . . [If so, w]e think that the ‘common-law property’ in these
performances ended with the sale of the records and that the restriction did not
save it; and that if it did, the records themselves could not be clogged with a
servitude.” Id. at 88.
10
recordings under the copyright statute.” Parks, at 123. All such efforts failed.
Indeed, by the 1950s the economics of the music industry were such that record
companies paid broadcasters to play their recordings, rather than vice versa, in
order to promote the sales of records. Id. at 137; Bard & Kurlantzick, 43 Geo.
Wash. L. Rev. at 155.
Plaintiffs contend that Whiteman was overturned by subsequent New York
case law, especially Metropolitan Opera Ass’n v. Wagner-Nichols Recorder Co.,
199 Misc. 786, 101 N.Y.S.2d 483 (Sup. Ct. 1950), aff’d, 279 App. Div. 632, 107
N.Y.S.2d 795 (1951). In that case, the Met had sold the exclusive right to make
phonograph records of its performances to CBS and had sold the exclusive right to
broadcast its live performances to ABC. The defendant recorded broadcast
performances off the air and sold records made from those recordings. The N.Y.
Supreme Court granted an injunction, which was affirmed by the Appellate
Division, on the ground that broadcasting live performances was not a
“publication” of those performances, and therefore the common-law right in such
performances was preserved. 101 N.Y.S.2d at 498-99. This is entirely consistent
with Whiteman, in which this Court specifically stated:
[I]f a conductor played over the radio, and if his performance was not
an abandonment of his rights, it would be unlawful without his
consent to record it as it was received from a receiving set and to use
the record. Arguendo, we shall also assume that such a performance
would not be an abandonment, just as performance of a play, or the
11
delivery of a lecture is not; that is, that it does not ‘publish’ the work
and dedicate it to the public.
Whiteman, 114 F.2d at 88. Metropolitan Opera involved only the right to create,
reproduce and sell phonograph records of broadcast performances; it did not
involve the right to publicly perform recordings which had been lawfully made and
sold to the general public.
Capitol Records, Inc. v. Mercury Records Corp., 221 F.2d 657 (2d Cir.
1955), is also distinguishable from Whiteman and from this case. That case
involved competing claims to the exclusive right to reproduce and distribute in the
United States certain recordings made by Telefunken in Germany during the Nazi
regime. This Court held that: 1) the sound recordings could not themselves receive
a federal statutory copyright under the 1909 Copyright Act, id. at 659-62; 2) as
between the two parties, Capitol Records held the contractual right to reproduce
and sell the recordings in the United States, even if Mercury retained a contractual
right to reproduce and sell the recordings in Czechoslovakia, id. at 662-63; and 3)
the sale of phonograph records to the public did not divest Capitol of its common-
law right to exclude others from reproducing and selling copies of those
recordings, id. at 663.7 Specifically, the Second Circuit characterized Whiteman as
7 Judge Hand agreed with the first two holdings but dissented on the third, on
the ground that federal law, rather than state law, should determine whether a work
had been “published.” 221 F.2d at 665-67 (L. Hand, J., dissenting).
12
holding in part that “the common-law property in the performances of musical
artists which had been recorded ended with the sale of the records and that
thereafter anyone might copy them and use them as he pleased,” Id. at 663
(emphasis added), and it stated that “the quoted statement from the RCA case is not
the law of the State of New York.” Id. It reasoned that under the Metropolitan
Opera case, “where the originator, or the assignee of the originator, of records of
performances by musical artists puts those records on public sale, his act does not
constitute a dedication of the right to copy and sell the records.” Id. at 663
(emphasis added).8 As the emphasized language indicates, Capitol Records v.
Mercury Records involved only “the right to copy and sell” recordings that had
been lawfully made. It said nothing about whether the common-law property right
in such recordings included a public performance right or whether any such right
was divested by the sale of records. RCA v. Whiteman itself had distinguished the
right to reproduce and sell from the right of public performance:
Copyright . . . consists only in the power to prevent others from
reproducing the copyrighted work. [Defendant] has never invaded
any such right of Whiteman; they have never copied his performances
at all; they have merely used those copies which he and [RCA] made
and distributed.
8 Judge Hand expressly agreed that if New York law controlled the issue in
question, then the Metropolitan Opera case should be followed. 221 F.2d at 665-
66 (L. Hand, J. dissenting).
13
114 F.2d at 88. See also Benjamin Kaplan, Performer’s Right and Copyright: The
Capitol Records Case, 69 Harv. L. Rev. 409, 435-36 (1956) (distinguishing a
“right to prevent unlicensed broadcast” from “physical duplication of records” and
concluding “[t]he RCA case may be right in result without necessarily calling for
the denial of relief in Capitol Records”); Bard & Kurlantzick, 43 Geo. Wash. L.
Rev. at 154 (same). If, as Plaintiffs contend, the Capitol Records case overturned
RCA v. Whiteman in its entirety, such that they had an enforceable common-law
public performance right in sound recordings in New York, why did recording
companies publicly complain for six decades afterward that they did not have a
public performance right in their recordings? Their silence in asserting such a
right, and their vehement public protests about the unfairness of not having such a
right, ought to be conclusive on the question of whether such a right existed.
Similarly, Capitol Records, Inc. v. Naxos of America, Inc., 4 N.Y.3d 540,
797 N.Y.S.2d 352 (2005), only involved Capitol’s right to prevent Naxos from
reproducing and selling recordings that had been released to the public. The issue
was whether the New York common-law right expired at the same time as the
statutory right in England, the country where the recordings were made. This
Court held that the common-law right did not follow the “rule of the shorter term,”
but instead persisted until preempted by federal law on February 15, 2067. 4
N.Y.3d at 561-62, 797 N.Y.S.2d at 366-67. Capitol Records v. Naxos said nothing
14
about whether the state common-law right in sound recordings did or did not
include a right of public performance.
As the district court in this case acknowledged, “the conspicuous lack of any
jurisprudential history confirms that not paying royalties for public performances
of sound recordings was an accepted fact of life in the broadcasting industry for the
last century.” Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 62 F. Supp. 3d 325, 340
(S.D.N.Y. 2014). The lack of a public performance right under state law is
confirmed by the long history of record companies seeking (and failing) to enact
such a right in Congress.
III. Proponents Have Repeatedly Denied The Existence of Public Performance
Rights When Seeking Relief From Congress.
“The fact that sound recordings constitute the only class of copyrightable
subject matter that is denied a performance right is not merely the result of
Congressional oversight. Numerous legislative attempts to amend the Copyright
Act to include performance rights in sound recordings have failed after receiving
tremendous opposition from lobbying groups supported mainly by the broadcasting
industry.” Linda A. Newmark, Performance Rights in Sound Recordings: An
Analysis of the Constitutional, Economic, and Ethical Issues, 38 Copyr. L. Symp.
(ASCAP) 141, 142 (1992). At least twelve bills were rejected between 1936 and
1951, and another twelve were rejected between 1967 and 1981. Id. at 142-43 n.9
15
(listing bills). While many commentators supported enactment of such a right, and
many opposed it, the one thing that all commentators agreed on was that there was
no existing public performance right in sound recordings under either state or
federal law. See, e.g., id. at 142; Steven J. D’Onofrio, In Support of Performance
Rights in Sound Recordings, 29 UCLA L. Rev. 168, 168 (1978); Bard &
Kurlantzick, 43 Geo. Wash. L. Rev. at 154-56. If such a right was thought to exist
under state law, why were so many people wasting so much effort lobbying for and
against a public performance right under federal law?
In 1971, as a condition of getting federal copyright protection against
unauthorized duplication and sale of recordings made on or after February 15,
1972, record companies grudgingly accepted the fact that such federal protection
would likewise not include any public performance right. See Sound Recording
Amendments Act of 1971, Pub. L. No. 92-140, § 1, 85 Stat. 391. Congress
expressly had considered enacting a public performance right for sound recordings;
a previous version of the bill “encompass[ed] a performance right so that record
companies and performing artists would be compensated when their records were
performed for commercial purposes,” but the public performance right was
deliberately removed from the final legislation. H.R. Rep. 92-487, at 3 (1971),
reprinted in 1971 U.S.C.C.A.N. 1566, 1568. This restriction was later codified in
Section 114(a) of the 1976 Copyright Act: “The exclusive rights of the owner of
16
copyright in a sound recording . . . do not include any right of performance under
section 106(4).” 17 U.S.C. § 114(a). Had record companies believed at the time
that they had a right of public performance under state law, it is highly doubtful
that they would have accepted a federal law that divested them of any such rights
for sound recordings made on or after February 15, 1972.
Since 1971, the Register of Copyrights has consistently advocated that
Congress enact a public performance right for sound recordings. See Report of the
Register of Copyrights, Performance Rights in Sound Recordings 3-7 (June 1978);
Report of the Register of Copyrights, Copyright Implications of Digital Audio
Transmission Services 156-57 (Oct. 1991); Report of the Register of Copyrights,
Copyright and the Music Marketplace, 135-39 (Feb. 2015). The Register has also
recommended that Congress bring pre-1972 sound recordings within the federal
copyright system. Report of the Register of Copyrights, Federal Copyright
Protection for Pre-1972 Sound Recordings (Dec. 2011). Summarizing the legal
situation in 2011, the Register concluded: “In general, state law does not appear to
recognize a performance right in sound recordings.” Id. at 44; see also id. at 45
(“Until 1995 there was no public performance right in sound recordings under
federal law, and it does not appear that, in practice, pre-1972 sound recordings had
such protection.”).
17
Each time the issue arose, record industry executives testified that they did
not have any existing right to collect royalties for unauthorized public
performances. For example, in 1961, Herman Kenin, President of the American
Federation of Musicians, testified: “It is a shocking crime that people like Mr.
Leopold Stokowski or Leonard Bernstein, or Louis Armstrong, or whoever the
artist may be, are denied the right to receive additional fees, when money is made
with his product.” Economic Conditions In the Performing Arts, Hearings Before
the Select Subcommittee on Education of the House Committee on Education and
Labor, 87th Cong., 1st and 2d Sess., at 17 (1962). In 1967, Alan W. Livingston,
President of Capitol Records, testified: “It must shock one’s conscience that the
playing of the delayed performance of a phonograph recording artist, however,
results in no compensation to the person who made that phonograph record.”
Copyright Law Revision, Hearings Before the Subcommittee on Patents, Trade-
marks, and Copyrights of the Senate Committee on the Judiciary, 90th Cong., 1st
Sess., pursuant to S. Res. 37 on S. 597, Part 2, at 498 (1967).9 Jazz pianist Stan
Kenton, in his role as Chairman of the National Committee for the Recording Arts,
testified that unlike composers and publishers, a recording artist “receives nothing
9 This occurred 12 years after the Capitol Records v. Mercury Records case
supposedly overturned the ruling in RCA v. Whiteman. If that was the correct
interpretation of Capitol Records, then Capitol was already entitled under state law
to demand compensation for the playing of its sound recordings, and the testimony
of Mr. Livingston, Capitol’s president, would have been meaningless.
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for the commercial playing of his record[,] even though the user may be reaping
great profits with it.” Id. at 542. Erich Leinsdorf, conductor of the Boston
Symphony Orchestra, testified: “According to the present laws only the composer
and the publisher of a musical work gets a financial benefit when the recorded
work is played on the radio or on the television. The artists who recorded the work
get nothing.” Id., Part 3, at 820.
In 1978, Barbara A. Ringer, Register of Copyrights, testified: “Broadcasters
and other commercial users of recordings have performed them without permission
or payment for generations.” Performance Rights in Sound Recordings, Hearings
Before the Subcommittee on Courts, Civil Liberties, and the Administration of
Justice of the House Committee on the Judiciary, 95th Cong., 2d Sess., at 116
(1978). Victor W. Fuentealba, President of the American Federation of Musicians,
asked: “Why, alone, are radio stations and others who use our music without our
consent, exempt from paying for the product on which they base their business?”
Id. at 11. The Recording Industry Association of America submitted a statement:
“Under existing law, broadcasters pay the composer and publisher of the song that
is played over the air in a sound recording. But the performers and record
company whose artistry and skill brought that composition to life in a recorded
performance . . . are paid nothing.” Report of the Register of Copyrights,
Performance Rights in Sound Recordings 726 (June 1978).
19
In 1991, the RIAA reaffirmed that “[c]urrently, [broadcasters] do not pay
anything for the creative efforts of the musicians, artists and recording companies
that produce records.” Report of the Register of Copyrights, Copyright
Implications of Digital Audio Transmission Services, Appendix at 15 (Oct. 1991).
“[T]he performance royalty stream that results from the airplay and other public
exposure of a hit song benefits only the composer and the music publisher; not the
performing artist, not the musicians, not the record company.” Id. at 17.10 The
AFL-CIO, American Federation of Musicians, and American Federation of
Television and Radio Artists (AFTRA) stated: “We have long been concerned
about the exploitation of sound recordings by broadcasters and others without
compensation to those responsible for creating the recordings. No other kind of
copyrighted work lacks a performance right.” Id. at 72.
Plaintiffs would have this Court believe that each of these people testified
with their fingers crossed behind their backs, silently thinking: “When I testified
that recording artists and record companies did not receive any money from public
performances of sound recordings, I only meant that no such right existed under
federal law. Such as right exists, and has always existed, under state law. We
simply chose voluntarily for decades not to rely on those state-law rights to which
10 That the RIAA was referring to pre-1972 sound recordings as well as more
recent ones is demonstrated by the example that it chose to illustrate the issue:
Bing Crosby’s classic 1942 recording of “White Christmas.” Id. at 17.
20
we were legally entitled.” The notion is highly implausible. For 75 years,
performers and record companies alike accepted Whiteman as the law and testified
in Congress that they lacked a public performance right in sound recordings. With
one limited exception, Congress has resisted all invitations to enact a public
performance right in sound recordings. It is only dissatisfaction with Congress’
judgment that has led sound recording copyright owners to try once again to get
this Court to recognize a public performance right under state law.
IV. Applying a Public Performance Right to Broadcasters and Listeners Located
Outside of New York Would Violate the Dormant Commerce Clause.
If this Court were to recognize a public performance right under New York
law for the first time, there is no legal principle that would limit its ruling to digital
audio transmission. Every radio and television network, and every local television
or radio station whose signal can be received in New York, would be obligated to
pay royalties to sound recording copyright owners as well, for the first time in their
history. But broadcast signals cannot be confined to the borders of a particular
state, and Sirius XM and other satellite, Internet, radio, and television broadcasters
are unable to tailor their signal so that it reaches only listeners who live outside of
21
New York.11 In order to comply with New York law, broadcasters would be
required to refrain from performing pre-1972 sound recordings, which would
interfere with their First Amendment rights to communicate with listeners who live
outside of New York. A radio station located in New Jersey could not broadcast
pre-1972 sound recordings to listeners in New Jersey without violating New York
law. As the Ninth Court recently recognized in Sam Francis Foundation v.
Christie’s, Inc., 784 F.3d 1320 (9th Cir. 2015) (en banc), application of a state law
to transactions located wholly outside of the state violates the dormant Commerce
Clause. See also Whiteman, 114 F.2d at 89-90 (refusing to issue an injunction
based on Pennsylvania law, because broadcast signals could not be confined to
Pennsylvania); Bard & Kurlantzick, 43 Geo. Wash. L. Rev. at 157 (“since radio
and television broadcasters are the predominant public performers of recorded
music[,] the disruption of interstate commerce attributable to state recognition of a
record public performance right would be considerably more severe than that to be
expected from state anti-piracy legislation.”).
CONCLUSION
Plaintiffs invite this Court to overturn 75 years of settled precedent and a
settled understanding of the law in the music industry by inventing a new common-
11 Indeed, Sirius XM is required by FCC regulations to transmit the same
programming to all of its subscribers in the 48 contiguous states. 47 C.F.R. §
25.144(a)(3)(1), § 25.144(e)(4) (2014).
law right of public performance in sound recordings. This Court should decline
this invitation. Creating an obligation to pay such royalties now, on a state-by-state
basis, would be incredibly disruptive to the broadcast industry, and would
improperly extend New York law outside of the borders of New York. If such a
drastic change in the status quo is to occur, it should be done prospectively, on a
nationwide basis, by Congress, as the Register of Copyrights has recommended.
Report of the Register of Copyrights, Federal Copyright Protection for Pre-1972
Sound Recordings (Dec. 2011). Plaintiffs' frustration with Congressional inaction
is not a sufficient reason to recognize public performance rights under New York
common law retroactively, eight decades after broadcasting was invented.
Dated August 29, 2016 By:
22
Respectfully submitted,
Daniel L. chmutter
Hartman & Winnicki, P.C.
7 4 Passaic Street
Ridgewood, NJ 07450
(201) 967-8040
dschmutter@hartmanwinnicki. com
Counsel of Record for Proposed
Amici Curiae Copyright and
Intellectual Property Law Professors
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