No. CTQ-2016-00001
In the
Court of Appeals
of the State of New York
FLO & EDDIE, INC., a California Corporation,
individually and on behalf of all others similarly situated,
Respondent,
v.
SIRIUS XM RADIO INC., a Delaware Corporation,
Appellant,
DOES, 1 THROUGH 10,
Defendants.
On Certified Question
to the United States Court of Appeals
for the Second Circuit
BRIEF OF PUBLIC KNOWLEDGE AS AMICUS CURIAE IN SUPPORT
OF APPELLANT
Raza Panjwani
Public Knowledge
1818 N Street NW, Suite 410
Washington, DC 20036
(202) 861-0020
raza@publicknowledge.org
Counsel for amicus curiae
Rev. 671d42d4
CORPORATE DISCLOSURE STATEMENT
Pursuant to Rule 500.1(f), amicus curiae Public Knowledge states that it has
no parent corporation or publicly held corporation that holds 10% or more of its
stock.
(i)
TABLE OF CONTENTS
CORPORATE DISCLOSURE STATEMENT . . . . . . . . . . . . . . . . . . i
TABLE OF AUTHORITIES . . . . . . . . . . . . . . . . . . . . . . . . . . iii
INTEREST OF AMICUS CURIAE . . . . . . . . . . . . . . . . . . . . . . . 1
SUMMARY OF ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . . 2
ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5
I. The Existence of a Public Performance Right for Sound Recordings
Under New York Common Law Is Untenable, in View of the Historical
Development of Copyright Law . . . . . . . . . . . . . . . . . . . . . . 5
A. The History of the Sound Recordings Act of 1971 Shows that Ex-
clusive Rights Are Not Naturally Bundled Together . . . . . . . . . 7
B. The Federal Digital Performance Right Further Undermines the
View of the Public Performance Right as Inherent in the Common
Law . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10
C. Public Performance Rights Have Been Granted Only to Certain
Specific Types of Works . . . . . . . . . . . . . . . . . . . . . . . 11
D. New York Common Law Does Not Clearly Recognize a Public
Performance Right in Sound Recordings . . . . . . . . . . . . . . 14
II. The Necessary Complexities of the Federal Public Performance Right
Would Be Infeasibly Difficult to Replicate Under New York Common
Law . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16
CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19
(ii)
TABLE OF AUTHORITIES
Cases
Capitol Records, Inc. v. Naxos of America, Inc.,
830 N.E.2d 250 (N.Y. 2005) . . . . . . . . . . . . . . . . . . . . . . 14–15
Eldred v. Ashcroft,
537 U.S. 186 (2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
EMI Records, Ltd. v. Premise Media Corp.,
89 U.S.P.Q.2d 1593 (N.Y. Sup. Ct. 2008) . . . . . . . . . . . . . . . . . . 17
Flo & Eddie, Inc. v. Sirius XM Radio, Inc.,
62 F. Supp. 3d 325 (S.D.N.Y. 2004) . . . . . . . . . . . . . . . . 5, 15–17
Golan v. Holder,
132 S. Ct. 873 (2012) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
Kirtsaeng v. John Wiley & Sons, Inc.,
133 S. Ct. 1351 (2013) . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
Metropolitan Opera Ass’n, Inc., v. Wagner-Nichols Recorder Corp.,
199 Misc. 786 (N.Y. Sup. Ct. 1950) . . . . . . . . . . . . . . . . . . . 14–15
Mikado Case, The,
25 F. 183 (C.C.S.D.N.Y. 1885) . . . . . . . . . . . . . . . . . . . . . . . 13
Moseley v. V Secret Catalogue, Inc.,
537 U.S. 418 (2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
Palmer v. De Witt,
47 N.Y. 532 (1872) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15
Statutes
17 U.S.C. § 106 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6
——— § 106(4)–(5) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6
——— § 106(6) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6
Act of Aug. 18, 1856, ch. 169, 11 Stat. 138 . . . . . . . . . . . . . . . . . . . 12
(iii)
Act of Jan. 6, 1897, ch. 4, 29 Stat. 481 . . . . . . . . . . . . . . . . . . . 12–13
Act of July 17, 1952, ch. 923, 66 Stat. 752 . . . . . . . . . . . . . . . . . . . 13
Copyright Act of 1790, ch. 15, 1 Stat. 124 (repealed 1831) . . . . . . 5, 11–12
Copyright Act of 1831, ch. 16, 4 Stat. 436 . . . . . . . . . . . . . . . . . . . 12
Copyright Act of 1909, ch. 320, 35 Stat. 1075 . . . . . . . . . . . . . . . . . 13
Copyright Act of 1976, Pub. L. No. 94-553, 90 Stat. 2541 . . . . . . . 3, 12–13
Digital Performance Right in Sound Recordings Act of 1995 (DPRA), Pub.
L. No. 104-39, 109 Stat. 336 . . . . . . . . . . . . . . . . . . . . . . . . . . 10
Sound Recordings Act, Pub. L. No. 92-140, 85 Stat. 391 (1971) . . . . . . 7–10
Townsend Amendment, Pub. L. No. 62-303, 37 Stat. 488 (1912) . . . . . . . 13
Other Sources
H.R. Rep. No. 92-487 (1971) . . . . . . . . . . . . . . . . . . . . . . . . . 8–9
H.R. Rep. No. 104-274 (1995) . . . . . . . . . . . . . . . . . . . . . . . . . 11
Ben Sisario, Old Songs Generate New Cash for Artists, N.Y. Times (Dec.
28, 2004), http://www.nytimes.com/2004/12/28/arts/music/old-songs-
generate-new-cash-for-artists.html . . . . . . . . . . . . . . . . . . . . . . . 11
S. Rep. No. 92-72 (1971) . . . . . . . . . . . . . . . . . . . . . . . . . . . 7–8
(iv)
INTEREST OF AMICUS CURIAE
Public Knowledge1 is a non-profit organization that is dedicated to preserving
the openness of the Internet and the public’s access to knowledge, promoting cre-
ativity through balanced intellectual property rights, and upholding and protecting
the rights of consumers to use innovative technology lawfully. Public Knowledge
advocates on behalf of the public interest for a balanced copyright system, partic-
ularly with respect to new and emerging technologies.
Public Knowledge has previously served as amicus in key copyright cases.
E.g., Kirtsaeng v. JohnWiley& Sons, Inc., 133 S. Ct. 1351 (2013);Golan v. Holder,
132 S. Ct. 873 (2012); Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003);
Eldred v. Ashcroft, 537 U.S. 186 (2003).
1No counsel for a party authored this brief in whole or in part, and no counsel or party made a
monetary contribution intended to fund the preparation or submission of the brief. No person or en-
tity, other than amicus, its members, or its counsel, made a monetary contribution to the preparation
or submission of this brief.
1
SUMMARY OF ARGUMENT
In determining whether New York common law contains a public performance
right for sound recordings that were created before February 15, 1972, the dis-
trict court erred in assuming that copyright protections necessarily encompass a
particular bundle of rights, and that the existence of a limited federal public per-
formance right for sound recordings necessarily pre-supposes the existence of a
state common law right. The district further erred in concluding that the judiciary
was properly suited to replicate limitations and regulatory mechanisms enacted by
Congress from the bench. This Court must not ratify those errors.
At the time of the district court’s ruling, no court in New York, either state
or federal, had acknowledged the existence of a common law public performance
right for sound recordings. In view of that judicial silence and legislative silence,
the district court assumed that the such a right must exist as part of a universal
bundle of rights attaching to all forms of protected works of authorship.
This Court should decline to ratify the district court’s interpretation of state law
for at least the following reasons.
1. A review of the history of federally granted rights under the Copyright Act
clearly shows that there has never been a universal bundle of rights applicable to all
copyrighted works. Over the years, several exclusive rights, including the right of
public performance, have been variously included and excluded from the scope of
2
copyrights. Aside from the basic reproduction right, other exclusive rights—such
as the rights of public performance, public display, and the broad preparation of
derivative works—were not presumed parts of some a priori copyright common
law, but instead were constructed individually and affirmatively by statute. The
development of the Copyright Act demonstrates that there is no “natural” or “in-
herent” bundle of rights, as the district court may have wished to impute to New
York common law.
In particular, it is virtually impossible to justify including a public performance
right for sound recordings in any purported “natural” bundle of copyright privi-
leges. Thus, New York common law should not encompass such a right. Federal
copyright law did not provide any public performance right for sound recordings
until more than two decades after first recognizing any rights in them—and even
then, it created only a very limited, highly regulatory scheme that applied only
to new technologies. Federal law explicitly restated its lack of a general public
performance right in the Copyright Act of 1976, and the idiosyncratic public per-
formance rights created for specific classes of works over the last two centuries
proves that a broad, general public performance right for sound recordings under
New York common law cannot reasonably trace its provenance to federal law.
2. The problems in creating a common law of public performance from the
bench are underscored by the highly circumscribed nature of the existing federal
3
right. While the district court assumes that the judiciary is capable of enacting
limitations and regulations, that would be an inappropriate taking of the legislative
branch’s policy making authority.
Accordingly, the creation of a common law performance right cannot be justi-
fied either on its face or when cabined by the context of the federal Copyright Act.
To avoid compounding the legal quagmire surrounding pre-1972 sound recordings,
this Court should not create such a right from the bench.
4
ARGUMENT
I. TheExistence of a Public PerformanceRight for SoundRecordingsUnder
New York Common Law Is Untenable, in View of the Historical Develop-
ment of Copyright Law
In announcing to the world for the first time that New York state common law
recognized a public performance right in sound recordings fixed before February
15, 1972, the district court reasoned from the conclusion that “years of judicial
silence implies . . . that common law copyright in sound recordings comes with the
entire bundle of rights that holders of copyright in other works enjoy.” Flo&Eddie,
Inc. v. Sirius XMRadio, Inc., 62 F. Supp. 3d 325, 341 (S.D.N.Y. 2004). Specifically,
the district court predicted that courts of this state would seek to “harmonize New
York’s common law of copyright with its federal statutory counterpart.” Id. at
343. But there is no such standard array or “entire bundle of rights” attendant to
copyright, and in any event an exclusive right of public performance is certainly
not part of any purported standard array.
The concept of a natural bundle of rights is inconsistent—indeed, it is
incompatible—with copyright law as it has been embodied in the history of the
Copyright Act.2 Were there an expansive set of exclusive rights that predated
2The history of copyright law in the United States is written primarily in statute; the first Copy-
right Act was passed in 1790, not long after the formation of the federal government itself. See
Copyright Act of 1790, ch. 15, 1 Stat. 124 (repealed 1831). State common law protections also
remain on the margins, but the federal statutes have been so expansive and preemptive of the field
that the history of those statutes largely defines the general philosophies and principles behind
American copyright law.
5
the statutory protections, the Copyright Act’s language and fundamental structures
would have been markedly different.
The Copyright Act has never defined a list of exclusive rights of copyright as
being a “traditional” bundle with carve-outs specific to particular types of works.
On the contrary, each statute has provided, by positive law, limited privileges to
limited types of works.3
This ad hoc development of the Copyright Act, assigning particular and lim-
ited exclusive rights to specific types of works, demonstrates that copyright law
is crafted to meet the immediate needs of the public, and not a reflection of some
unwritten yet universal schema. It would thus be a mistake to think that the ex-
istence of common law rights of reproduction or distribution imply some sort of
natural set of rights, and even more of a mistake to assume, as the district court
did, that such a purported set of rights included public performance. This Court
should decline to ratify the district court’s conclusion.
3The current Act grants, to all types of copyrighted works, the exclusionary rights “(1) to repro-
duce the copyrighted work in copies or phonorecords; (2) to prepare derivative works based upon
the copyrighted work; (3) to distribute copies or phonorecords of the copyrighted work to the public
by sale or other transfer of ownership, or by rental, lease, or lending.” 17 U.S.C. § 106. Section 106
then gives additional affirmative rights to particular types of works—for example, some types of
works, but not others, have a public performance right or a public display right. § 106(4)–(5). And
sound recordings in particular have only a special, limited right to “perform the copyrighted work
publicly by means of a digital audio transmission.” § 106(6).
6
A. The History of the Sound Recordings Act of 1971 Shows that Exclusive
Rights Are Not Naturally Bundled Together
The history of the Sound Recordings Act, Pub. L. No. 92-140, 85 Stat. 391
(1971), demonstrates that public performance rights are not inherently part of
the common law, but rather are only granted to a particular type of work when
Congress decides to make it so.
Prior to 1971, sound recordings lacked any kind of federal copyright protec-
tion at all, let alone a public performance right. The Sound Recordings Act set
out “a limited copyright in sound recordings for the purpose of protecting against
unauthorized duplication and piracy of sound recordings.” S. Rep. No. 92-72, at
1 (1971). The Act was thus designed to narrowly accommodate record produc-
ers in the music industry who wanted to prevent others from making and selling
unauthorized physical copies of sound recordings. See Sound Recordings Act § 1
(granting the right “[t]o reproduce and distribute to the public by sale or other trans-
fer of ownership, or by rental, lease, or lending, reproductions of the copyrighted
work if it be a sound recording”).
Congress specifically did not create a public performance right in the Sound
Recordings Act. An early, rejected version of the bill would have “extended that
protection to encompass a performance right so that record companies and per-
forming artists would be compensated when their records were performed for com-
mercial purposes.” S. Rep. No. 92-72, supra, at 3. But because granting the per-
7
formance right would not have stopped the unauthorized reproduction of sound
recordings, Congress omitted such a right from the 1971 Act. See id.
In addition, far-reaching and detailed limitations and exceptions to the rights
granted in the Sound Recordings Act indicate the lack of a preexisting common-
law bundle of rights. The exclusive rights of reproduction and distribution created
by the Sound Recordings Act were further limited in two ways.
First, the sound recording’s copyright owner cannot prevent “sound-alike”
recordings. Sound Recordings Act § 1(a) (“[T]his right does not extend to the
making or duplication of another sound recording that is an independent fixation
of other sounds, even though such sounds imitate or simulate those in the copy-
righted sound recording . . . .”). This restriction indicates a far more restrictive
scope than would seem to accrue from a natural right. By contrast, whether a
copyist reproduces a musical work via technological means or with a handwritten
transcription, the law still considers the resulting copy an infringing reproduction.
Second, the statute protected “reproductions made by transmitting organiza-
tions exclusively for their own use.” Sound Recordings Act § 1(a). This limitation
ensured that the rights of transmitting organizations, such as public television and
radio stations, would remain unchanged by the Act. H.R. Rep. No. 92-487, at 8
(1971). It thus gave wide latitude to nonprofit broadcasters tomake physical copies
of sound recordings, because the exception for transmitting organizations “extends
8
to programs produced, duplicated, distributed and transmitted by or through more
than one public broadcasting agency or entity so long as exclusively for educa-
tional use.” Id. These specific limitations to the scope of the sound recording right
indicate congressional intent to achieve a particular policy end, rather than a desire
to recognize an existing common law or natural right.
The Sound Recordings Act’s effect on post-1972 sound recordings further
points away from an exclusive right of public performance being a natural inci-
dent of copyright. As discussed above, that federal statute specifically provided
that no public performance right would inhere in a sound recording fixed on or
after February 15, 1972. If, as the district court thought, state common law inher-
ently included a public performance right (that has gone unenforced for nearly a
century), then the Sound Recordings Act would have had to extinguish that right
for post-1972 recordings. It is unlikely that Congress would have deprived future
musicians of such a valuable right if it existed—certainly not without any record
of discussion or debate on the matter. The more reasonable interpretation, which
strongly cuts against the district court’s view, is that there was no recognized com-
mon law public performance right, and the Sound Recordings Act created a new
right out of whole cloth.
The legislative history of the Sound Recordings Act demonstrates that there
was no a priori exclusive right over public performances. That law was narrowly
9
tailored to solve the economic harms caused by the unauthorized reproduction and
sale of sound recordings. Giving the public performance right to sound recordings
would not have solved this problem, so it was not granted. The Act thus contradicts
any view that a public performance right is inherently or naturally part of copyright.
B. The Federal Digital Performance Right Further Undermines the View of
the Public Performance Right as Inherent in the Common Law
Much like the Sound Recordings Act, the enactment of the Digital Performance
Right in SoundRecordingsAct of 1995 (DPRA), Pub. L. No. 104-39, 109 Stat. 336,
strongly points away from the district court’s theory that the public performance
right has existed in the common law since time immemorial. Rather, the statute
exemplifies Congress’s construction of a new right from scratch.
First, the DPRA creates a highly technical, regulatory scheme of rights and a
complex mechanism by which those rights can be exercised. See, e.g., id. sec. 3,
§ 114(d)(1)(B)(i) (exempting retransmissions of nonsubscription radio broadcast
transmissions “not willfully or repeatedly retransmitted more than a radius of 150
miles from the site of the radio broadcast transmitter”). Such complexity is not the
hallmark of codification of the common law; it is better understood as Congress’s
creation of a wholly novel system of regulation.
Additionally, the language used to describe the statute demonstrates a general
view that, prior to the statute, no exclusive right of digital performance previously
10
existed; Congress was well aware that it was creating a brand new right, not codify-
ing or limiting an existing one. The Committee Reports abound with such phrases
as “[the Act] creates a carefully crafted and narrow performance right, applicable
only to certain digital transmissions of sound recordings,” “[t]he limited right cre-
ated by this legislation reflects changed circumstances,” and so on. H.R. Rep. No.
104-274, at 12, 14 (1995) (emphasis added). Contemporaneous media accounts of
the bill agree that the digital performance right was newly formed. The New York
Times noted that the statute “established for the first time that the performers of
a song and the copyright holder of the recording would be paid a special royalty
separate from those paid to songwriters and publishers.” Ben Sisario, Old Songs
Generate New Cash for Artists, N.Y. Times (Dec. 28, 2004), URL supra p. iv. The
Times further quoted John Simson, then executive director of SoundExchange, as
saying: “This is a brand-new right . . . A lot of artists are unaware of it, and we’re
working against 80 years of a music industry without a performance right.” Id.
C. Public Performance Rights Have Been Granted Only to Certain Specific
Types of Works
The overall history of public performance rights further reveals that public per-
formance is not a common law right.
No public performance right—for any type of work—was recognized statu-
torily until 1856. The Copyright Act of 1790 conferred upon authors only the
11
exclusive rights to “print, reprint, publish, or vend” works; protected works were
limited to books, maps, and charts. Ch. 15, § 1, 1 Stat. 124, 124 (repealed 1831).
Composers were first granted copyright protection for musical works in 1831, but
then only for “printing, reprinting, publishing, and vending.” See Copyright Act
of 1831, ch. 16, § 1, 4 Stat. 436.
Public performance rights were introduced gradually and on an ad hoc basis,
inconsistent with a theory that such rights were inherent in the common law. The
first such rights appeared in 1856, when dramatic works were granted copyright
protection for both a reproduction right and a public performance right. See Act
of Aug. 18, 1856, ch. 169, § 1, 11 Stat. 138, 139 (granting, “along with the sole
right to print and publish,” a right “to act, perform, or represent the same, or cause
it to be acted, performed, or represented, on any stage or public place . . . .”). No-
tably, however, Congress declined to create a similar protection for musical works,
though they were clearly recognized and given exclusive rights equivalent to re-
production and distribution. See id. It took more than forty years before musical
compositions received a public performance right. See Act of Jan. 6, 1897, ch. 4,
29 Stat. 481. Motion pictures first received the public performance right in 1976,
seeCopyright Act of 1976, Pub. L. No. 94-553, § 106(4), 90 Stat. 2541, 2546, even
thoughmotion pictures were initially copyright-eligible under the federal statute as
“photographs” and later explicitly given copyright protection against unauthorized
12
reproduction, see Townsend Amendment, Pub. L. No. 62-303, 37 Stat. 488 (1912)
(providing copyright protection to “Motion-picture photoplays”). Literary works
were first granted copyright protection in 1790, but were not granted a public per-
formance right as a whole until over a century later in 1952. See Act of July 17,
1952, ch. 923, 66 Stat. 752.
The frequent limitations on public performance rights contradict a theory that
such rights come from a common law characterized by broad, generalized rules.
The Copyright Act of 1909, for instance, granted musical works a public perfor-
mance right, but only if the performance was for profit. See ch. 320, § 1(e), 35 Stat.
1075. This refined the performance right granted to musical works just a few years
before. See Act of Jan. 6, 1897. The for-profit limitation remained until the 1976
Act. See Copyright Act of 1976 § 106(4). Such intricacies are not commonplace
in common law concepts, again suggesting that the public performance right of the
Copyright Act was not a natural right of the common law.
The evolution of public performance rights demonstrates that the district
court’s public performance right is newly minted, not a mere confirmation of the
traditional common law. If anything can be called a “traditional” right inherent in
copyright law, it is the reproduction right. See The Mikado Case, 25 F. 183, 185
(C.C.S.D.N.Y. 1885) (“Strictly, the only invasion of a copyright consists in the
multiplication of copies of the author’s production without his consent. Any other
13
use of it, such as for the purpose of public reading or recitation, is not piracy.”).
The evolution of copyright protection in sound recordings also supports this asser-
tion, as does the statutory creation of the limited digital public performance right
in sound recordings.
D. New York Common Law Does Not Clearly Recognize a Public Perfor-
mance Right in Sound Recordings
The creation of a public performance right in sound recordings is not only con-
trary to the development of rights at the federal level: evidence for such a right
developing in the common law of New York is scanty at best. Prior to the district
court’s November 14, 2014 decision in this case, no New York court had recog-
nized the existence of a common law public performance right in sound recordings.
In fact, to the extent that courts have opined on the issue, the only question has been
whether those opinions have affirmatively denied the existence of such a right.
Two of the most prominent NewYork state law cases on rights in sound record-
ings (and decisions upon which the district court relies) provide no hint that the
common law might encompass a right resembling the modern public performance
right. Metropolitan Opera Ass’n, Inc., v. Wagner-Nichols Recorder Corp. held
that the plaintiffs had an unfair competition claim against defendants, who made
unauthorized recordings and distributions of its opera productions by taping tele-
vision broadcasts. 199 Misc. 786 (N.Y. Sup. Ct. 1950). Capitol Records, Inc. v.
14
Naxos of America, Inc. was likewise about a claim of unauthorized copying and
distribution of a sound recording. 830 N.E.2d 250 (N.Y. 2005). Contrary to how
it was characterized by the court below, Capitol Records was not decided after “a
century of judicial silence.” Flo & Eddie, 62 F. Supp. 3d at 340. Common law
copyrights with respect to reproduction were well established when Naxos was
decided.4 Capitol Records’s incremental step of deciding that state common law
rights are not affected by changes to common law jurisdictions is a far cry from the
judicial creation of a whole new performance right, and neither Capitol Records
nor Metropolitan Opera Ass’n provide support for such a leap.
Faced with a lack of reliable precedent to support this newly minted public
performance right, the district court, at Respondent’s urging, reasoned that such a
right must be within the ambit of the common law because no New York court had
yet rejected that right. The district court reasoned that “years of judicial silence
implies . . . that common law copyright in sound recordings comes with the entire
bundle of rights that holders of copyright in other works enjoy.” Flo & Eddie, 62
F. Supp. 3d at 341. This Court should not adopt similarly bend-over-backwards
4While New York common law has thus previously recognized a right of reproduction in sound
recordings, that fact does not in itself create a public performance right. New York case law draws
a clear distinction between the two types of exclusive rights even for works that were explicitly
granted both: “The right publicly to represent a dramatic composition for profit, and the right to
print and publish the same composition to the exclusion of others, are entirely distinct, and the one
may exist without the other.” Palmer v. De Witt, 47 N.Y. 532, 542 (1872).
15
logic: the lack of cases on this point far more clearly indicates the absence of the
right, especially in view of the federal legislative text and history discussed above.
Thus, public performance is not included within the scope of New York’s com-
mon law protection of sound recordings. Such a right cannot be found within fed-
eral or New York common law; nor can it be inferred from the history of copyright
law. To the contrary, that history proves that public performance rights are not part
of some natural bundle of exclusive rights, but rather must be affirmatively created
by some operation of law—one which is missing from the common law.
II. The Necessary Complexities of the Federal Public Performance Right
Would Be Infeasibly Difficult to Replicate Under New York Common
Law
The district court correctly noted that the sound recording public performance
right under federal law is part of a “carefully crafted scheme”, as described above,
and that recognizing and unbounded common law right would be problematic. Un-
deterred, the district court declared that courts are empowered to “craft the sort of
exemptions and limitations Congress has created, or to create a mechanism for ad-
ministering royalties.” Id. at 343–44. Thus, the court asserted that it and courts
of this state could create a parallel system of exceptions, limitations, and statutory
licenses to match the federal one.
While courts are certainly free to adopt and develop limitations and exceptions
16
to exclusive rights,5 it is far less likely that they can craft the equivalent of statutory
licenses such as those in the DPRA. This viewpoint would have the courts usurp the
role of the legislature by transforming the common law from a system of precedent
and deliberate, incremental change to one of wholesale judicial lawmaking.
Preemption of the legislature is hardly a straightforward application of judicial
power. The district court thought that enacting a complex regulatory schemewould
pose no problem, claiming that it had “back in 1950 fashioned a consent decree that
set up what became the most successful mandatory licensing and royalty scheme in
the world.” See id. at 344. Yet the district court ignores that the consent decree was
constructed out of a law enforcement action of the Department of Justice, applying
antitrust law to a market prone to anticompetitive behavior, not out of the district
court sua sponte imposing its policy views with respect to intellectual property on
the music industry. It is one thing for a court to be involved in the enforcement
of a complex settlement arrangement developed by the parties; it is quite another
for the court to author the settlement itself. Yet when the court below suggests
that it is “capable of fashioning appropriate relief—and even of recognizing only
such public performance rights in pre-1972 sound recordings as conform to rights
statutorily conferred on holders of statutory copyright in post-1972 recordings,”
id., it is ascribing to itself the ability to legislate from the bench.
5See, e.g., EMI Records, Ltd. v. Premise Media Corp., 89 U.S.P.Q.2d 1593 (N.Y. Sup. Ct. 2008)
(applying and finding fair use in the context of a pre-1972 sound recording).
17
The absence of common law evidence on whether a public performance right
exists for sound recordings in New York is, in this particular case, evidence of its
absence. To hold otherwise requires this Court to believe that the broadcast indus-
try has operated unlawfully since its inception and that the music industry simply
chose not to pursue an obvious source of revenue, despite its repeated statements
that it would like to do so. Because the creation of a common law public perfor-
mance right for sound recordings requires this Court to abandon both common law
and common sense, it must be rejected.
* * *
The district court presumed the existence of a public performance right in sound
recordings, despite the lack of any reliable source of law for those rights. Instead,
the court noted that, while federal law explicitly lacks such a right, New York law
remains silent. From this silence, the district court used tenuous logic to support
its presupposition that the common law includes an inherent “default” bundle of
exclusive rights, one of which is for the public performance of sound recordings.
The district court is incorrect. The bundle of rights that copyright grants to
authors has never been universal or uniform. The exclusive rights we are accus-
tomed to under federal copyright law are neither necessary nor comprehensive for
all systems of copyright. Aside from the exclusive right to reproduce works, the
iterations of the federal Copyright Act have variously included or excluded cer-
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tain rights for various different types of creative works. Other potential exclusive
rights have never been recognized for any creative work.
Nothing prevents the New York legislature from creating a public performance
right in pre-1972 sound recordings that aligns with the limited existing federal
rights, or Congress from doing the same for all sound recordings. However, neither
body has done so, and the common law recognizes no such right. The district
court’s attempt to manufacture such a right judicially was in error.
CONCLUSION
For the foregoing reasons, this Court should hold that New York law does not
recognize an exclusive public performance right in sound recordings made prior
to February 15, 1972.
Respectfully submitted,
Dated: September 2016
Raza Panjwani
Public Knowledge
1818 N Street NW, Suite 410
Washington, DC 20036
(202) 861-0020
raza@publicknowledge.org
Counsel for amicus curiae
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