CTQ-201 6-00001
Amicus does not
request oral argument
(![ourt of ~ppeaLs
of tf;t
~tate of 1f-leh1 !f;>ork
FLO & EDDIE, INC., a California Corporation, individually
and on behalf of all others similarly situ a ted,
Plaintiff-Respondent,
- against -
SIRIUS Xl\II 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 AMICUS CURIAE THE ASSOCIATION
FORRECORDEDSOUNDCOLLECTIONS
I~ SUPPORT OF DEFENDANT-APPELLANT
Date Completed: September 1. 2016
Jo~eph R. Wetzel
Ethan P. Davis
KING & SPALDING LLP
1 0 l Second Street, Suite 2300
San Francisco, VA 94105
Telephone: (415) 318-1200
Facsimile: (415) 318-1300
jwetzel@kslaw.com
SECTION 500.1(£) CORPORATE DISCLOSURE STATEMENT
Anticus curiae the Association for Recorded Sound Collections
states that it does not have a parent corporation and that no publicly
held company owns 10% or mo1·e of its stock.
TABLE OF CONTENTS
SECTION 500.l(f) CORPORATE DISCLOSURE STATEMENT ............. i
TABLE OF CONTENTS .. .......................................................................... ii
TABLE OF AUTHORITIES .................................................................. ... .iii
STATEMENT OF INTEREST ................................................................... 1
INTRODUCTION ..................................................................... .................. 3
ARGUMENT ............................................................................................... 6
I. THE DISTRICT COURT'S HOLDING THAT RIGHTS
HOLDERS HAVE AN EXCLUSIVE AND PERPETUAL RIGHT
TO REPRODUCE AND PUBLICLY PERFORM PRE-1972
SOUND RECORDINGS DEFIES LOGIC ........................................ 6
A. The Common Law Of England Protected Only The Right
Of First Publication ................................................................. 6
B. New York Common Law Has Never Permitted Artists To
Sell Intellectual Property But Then Restrict Consumers'
Future Use Of That Property .......................................... ...... 10
C. The Purpose Of Recording lVIusic Is To Enable It To Be
Enjoyed In The Future ..................................................... ...... 15
II. THE DISTRICT COURT'S HOLDING INVENTING A
PERPETUAL PUBLIC PERFORlVIANCE RIGHT WILL HAVE
GRAVE CONSEQUENCES FOR CURATORS, CONSUMERS,
AND OTHER STAKEHOLDERS EVERYWHERE ....................... l7
A. Recognizing A Public Performance Right Raises The
Specter Of Unknowable Infringement Liability For Music
Cttrators .................................................................................. 18
B. Unpredictable Infringement Liability Will Chill
Consumers' Enjoyment Of Our Musical Heritage ................ 23
C. The Unprecedented Creation Of A New "Common Law"
Right Would Cut Short Good Faith Legislative Debate By
Interested Stakeholders ................................................ ..... .... 26
CONCLUSION ........................ ................................................................. 30
CERTIFICATE OF COlVIPLIANCE
CERTIFICATE OF SERVICE
ll
TABLE OF AUTHORITIES
Cases
Authors Guild v. Coogle, Inc ..
804 F.3d 202 (2cl Cir. 2015) .................................................................. 25
Caliga t ' . Inter-Ocean Newspaper,
215 U.S. 182 (1909) ..... ....... ............... .. ........... ....................................... 11
Capitol Records, Inc. v. Mercury Records Corp.,
221 F.2d 657 (2cl Cir. 1955) .................................................................. 14
Capitol Records, Inc. v. Naxos of Am., Inc.,
4 N.Y.3cl 540 (N.Y. 2005) ............................................................ 6, 13, 15
Chamberlain v. Feldman,
300 N.Y. 135 (N.Y. 1949) ...................................................................... 12
Donaldson v. Bechet (1774),
1 Eng. Rep. 837; 2 Bro. P.C. 129 ............................................................ 9
Estate of I-Iem.ingway v. Random. House,
53 Misc. 2d 462 (N.Y. Sup. Ct. 1967) ............................................. 12, 26
Fendler v. Morosco,
253 N.Y. 281 (N.Y. 1930) ...................................................................... 26
Flo & Eddie, Inc. t '. Sirius XM Radio, Inc.,
62 F. Supp. 3d 325 (S.D.N.Y. 2014) .............................................. passim
Flo & Eddie, Inc. t'. Sirius XM Radio, Inc.,
821 F.3d 265 (2d Cir. 2016) ............................................. ....................... 4
Fogerty v. Fantasy, Inc ..
510 U.S. 517 (1994) ............................................................................... 25
Goldstein v. California,
412 U.S. 546 (1973) ............................................................................... 13
Green v. Liter,
12 U.S. 229 (1814) ................................................................................. 15
Inglia. v. Trs. of Sailor's Snug Harbor.
28 U.S. 99 (1830) ......... ....... ... ................................................................ 15
Kirstaeng v. John vViley & Sons, Inc ..
136 S. Ct. 1979 (2016) ........................................................................... 25
lll
Metropolitan Opera Assn., Inc. l '. Wagner-.Nicols Recorder Corp.,
199lVIisc. 786 (N.Y. Sup. Ct. 1950) ........................................ .... ..... ..... 14
Milbom 's Case (1609).
77 Eng. Rep 420: 70 Coke 6b ...... ... ...... .................................. ............... 15
Millar v. Taylor (1769),
98 Eng. Rep. 201; 4 Burr. 2303 .............................................................. 8
Osborne v. Donaldson (1765),
28 Eng. Rep. 924: 2 Eden 327 ................................................................. 8
Palmer u. De Witt,
47 N.Y. 532 (N.Y. 1872) .......................................................................... 7
Pushman v. New Yor!? Graphic Socy ..
287 N.Y. 302 (N.Y. 1942) ...................................................................... 12
RCA Mfg. Co. v. Whiteman,
114 F.2cl86 (2d Cir. 1940),
cert denied 311 U.S. 712 (1940) ................................................ 12, 15,17
Rogers v. Tennessee,
532 U.S. 451 (2001) .......................................................................... .. ... 16
Sony Corp. v. Uni versa! City Studios, Inc. ,
464 U.S. 417 (1984) ..... ................................... .... ................................... 11
Stanley v. Columbia Broad. Sys.,
35 Cal. 2d 653 (Cal. 1950) .... ..... ............... ...... ....................................... 26
Thompson v. Stanhope (1774),
27 Eng. Rep. 476; Amb. 737 ...................... .. .......................... ... ............. 10
Tomphins l '. Hallecl?. ,
133 Mass. 32 (1882) .............................................................................. 14
Wheaton v. Peters.
33 U.S. 591 (183-:1:) .. ............................................................................... 11
Statutes
An Act for the Encouragement of Learning 1710, 8 Anne, c. 19, §II ...... 7
An Act for the Encouragement of Learning 1710, 8 Anne, c. 19, §XI .... . 7
Other Authorities
17 Parl. Hist. Eng. 1000 ......... .. .................................................................. 9
lV
Abrams, Howard B.,
The Historic Foundation of American Copyright Law: Exploding the
Myth of Com moll Law Copyright,
29 vVAYNE L. RE\'. 1119 (1983) ............................................................ 7, 9
Andrews, Travis :M.,
The Rolling Stones Demand Trump Stop Using Its Music at Rallies,
But Can the Band Actually Stop Him?,
WASH. POST (lVIay 5, 2016), http://wapo.st/1 VLOCs3 ........................... 22
ARSC,
About, http://bit.ly/2aTgoRQ ................................................................... 2
ARSC,
Comment Letter on Federal Copyright Protection of Sound
Recordings Fixed Before February 15, 1972 (Apr. 12, 2011),
http://bit.ly/2bhcpLl. .............................................................................. 18
ARSC,
Copyright and Fair Use Com.mittee, http://bit.ly/2akPmSx .................. 2
ARSC,
Preservation Grants Awarded,
141 ARSC NE'vVSLETTER (2016), http://bit.ly/2bTObJO ......................... 21
ARSC,
Promoting Changes in U.S. Copyright Law to Preserve Our Audio
Heritage (Feb. 2, 2015), http ://bit.ly/2aXxRG3 .................................... 23
BROOKS, TIM,
COUNCIL ON LIBRARY & INFO. RES. & LIBRARY OF CONG.,
SURVEY OF REISSUES OF U.S. RECORDINGS (2005) ................................ 23
Elec. Freedom Found.,
Comment Letter on Federal Copyright Protection of Sound
Recordings Fixed Before February 15, 1972 (Jan. 31, 2011),
http://bit.ly/2b41 W84 ................................................................ .. .......... 27
Erlinger, Jr. , Michael~
An Analog Solution in a Digital ~Vorld: Providing Federal Copyright
Protection for Pre-1972 Sound Recordings,
16 U.C.L.A. ENT. L. REV. 45 (2009) ....................................................... 27
v
Giebel, Doug.
Big Sandy Fund Requests a Turntable.
140 ARSC NEvYSLETTER (2016). http://bit.ly/2bmlzHU .................. 24, 25
MERRIAM-WEBSTER, Art,
http://bit.ly/lHqnkzU ............................................................................ 17
MERRIAM-WEBSTER, Perfonnance,
http://bit.ly/2bMRu3Z .............................................................................. 4
Music Library Ass'n,
Comment Letter on Federal Copyright Protection of Sound
Recordings Fixed Before February 15, 1972 (Jan. 31, 2011),
http://bit.ly/2bOgCT4 .................. ... ............... .............. ............... 23, 24, 28
Music Lib1·ary Ass'n,
Comment Letter on Federal Copyright Protection of Sound
Recordings Fixed Before February 15, 1972 (April 13, 2011),
http://bit.ly/2b41 tml .............................................................................. 27
Nat'l Ass'n of Broads. ,
Comment Letter on Federal Copyright Protection of Sound
Recordings Fixed Before February 15, 1972 (April13, 2011) ,
http://bit.ly/2bcCsr8 .............................................................................. 27
Opp'n Br. of Pl.-Appellee,
Flo & Eddie, Inc. tJ. Siriu.s XM Radio, Inc. ,
821 F.3d 265 (2d Cir. 2016) (No. 15-1164), 2015 WL 6157969 ..... 11, 19
Recording Indus. Ass'n of Am., Inc. & Am. Ass'n of Indep. Music,
Comment Letter on Federal Copyright Protection of Sound
Recordings Fixed Before February 15, 1972 (Jan. 31, 2011),
http://bit.ly/2b5YIT3 ......... .... ................ ................................................. 28
Recording Indus. Ass'n of Am., Inc.,
Comment Letter on Music Licensing Study: Notice and Request
for Public Comment (May 23, 2014), http://bit.ly/2aPMPyG ........ 27, 29
Rooney, Dennis D ..
ARSC Neu• Yorll Chapter Nett·s ,
139 ARSC NEWSLETTER (2015), http://bit.ly/2bMFoJB ........... ............ 20
Soc'y of Am. Archivists,
Comment Letter on Federal Copyright Protection of Sound
\'1
Recordings Fixed Before February 15, 1972 (Jan. 19, 2011),
http://bit.ly/2alf7aK ............................................................................... 27
U.S. COPYR£GHT OFFICE, FEDERAL COPYRIGHT PROTECTION FOR
PRE-1972 SOUl\TD RECORDINGS (20 11) ........................................... ...... .. 27
Zangwill, Nick,
Aesthetic Judgm,ent., STANFORD ENCYCLOPEDIA OF PHILOSOPHY (2014),
http://stanford.io/la VASMT ................................................................. 17
Vll
STATEMENT OF INTEREST!
In 1971, Robert Plant famously howled: "It's been a long time
since I rock and rolled." LED ZEPPELI!'\. Roell and Roll, on UNTITLED
(Atlantic Records 1972). But after the district court's holding in this
case, "a long time" might become "forever" for many music fans and
historians. Although Led Zeppelin's fourth studio album was released
on February 21, 1972. the album's lead single was "fixed" one year
earlier. The district court held that any recording fixed before February
15, 1972 finds an "exclusive right to public performance" in New York
common law. Flo & Eddie, Inc. tJ. Sirius X1'Vl Radio, Inc., 62 F. Supp. 3d
325, 339 (S.D.N.Y. 2014). That right would enable its holders to
prevent fans and anyone else who has lawfully acquired sound
recordings from playing those recordings publicly, in any context, in
perpetuity.
The Association for Recorded Sound Collections, Inc. ("ARSC")
appears as anticus curiae in support of Appellant because the district
1 No party's counsel authored this brief in whole or in part.
Neither any party nor any party's counsel contributed money that was
intended to fund preparing or submitting this brief. No person other
than amicus, its members, or its counsel contributed money that was
intended to fund preparing or submitting this brief.
1
court's view of the common law is untenable and would chill ARSC from
engaging in its core mission. ARSC is "a nonprofit organization
dedicated to the preservation and study of sound recordings." ARSC,
About. http://bit.ly/2aTgoRQ (last visited Aug. 4, 2016). To that end,
ARSC brings together leading archivists, librarians, and curators, as
well as record collectors, researchers, historians, discographers,
musicians, engineers, and broadcasters to discuss the preservation and
restoration of sound recordings and to reward outstanding research in
the field. Id. ARSC also advocates for policies "to allow best practices
in preservation and greater public access to historical recordings."
ARSC. Copyn:ghl and Fair Use Committee, http://bit.ly/2akPmSx (last
visited Aug. 4, 2016).
Preserving vintage recordings lies at the heart of ARSC's mission.
ARSC's members often pursue that mission by exhibiting, or publicly
"performing," vintage and refurbished recordings-activities that the
district court's decision would make substantially more difficult. The
district court's rule may even chill activities that are less obviously
"performances," like playing recordings as part of the restorative
process or while conducting important research. And a "public
2
performance right" in pre-1972 souncl1·ecorclings would ultimately harm
the downstream beneficiaries of ARSC's important work and the
ultimate beneficiary of the copyright la\vs-the public.
l\!Iusic is meant to be played. Because the district court's opinion
could place unprecedented restrictions on record owners' use of their
records and "make [public] broadcasts of pre-1972 recordings altogether
unavailable," Flo & Eddie, 62 F. Supp. 3d at 344, ARSC asks this Court
to hold that New York common law does not recognize an absolute
public performance right.
INTRODUCTION
The Southern District of New York incorrectly guessed that New
York law "would recognize the exclusive right to public performance of a
sound recording as one of the rights appurtenant to common law
copyright." Flo & Eddie, 62 F. Supp. 3d at 339. And the district court
found that broadcasting, or publicly playing audio recordings,
constitutes a "public performance."2 See id. at 352. Because the Second
2 Flo & Eddie may suggest that a "public performance right"
protects only the right to collect royalties from commercial broadcasters
like Sirius Xl\II. But that is not what Flo & Eddie has sought and it is
not what the district court said. See infra II.A. Moreover, a
"performance" need not be for money. Arguably the only prerequisite is
3
Circuit thought this Court "ha[d] not ruled on whether such a right
exists," it certified the question to this Court. Flo & Eddie, Inc. v.
Sirius XM Radio, Inc. , 821 F.3cl265, 269. 272 (2d Cir. 2016).
The district court's ruling will have broad and perniCiOUS
consequences-not just for Sirius XM and other commercial
broadcasters, but also for groups like ARSC and members of the public.
In fact, ollyone relying on the previously unquestioned understanding
that the common law does not recognize an absolute public
performance right in sound recordings could be liable for copyright
infringement for daring to publicly play, or "perform," a sound recording
fixed before February 15, 1972.
This view of common law copyright cannot be squared with the
English and American common law traditions, which protected only
against unauthorized copying of an artistic work and only before the
first publication. In improperly expanding that common law right, the
an audience. See Performance, lVIERR[AM-WEBSTER, http://bit.ly/
2bMRu3Z (defining "Performance" as "an activity (such as singing a
song or acting in a play) that a person or group does to entertain an
audience" or "a public presentation or exhibition"). None of the
Copyright Act's limitations on what constitutes a "performance" or what
it means to perform a work "publicly" would come with the district
court's "public performance right.''
4
district court fixated on cases addressing a different issue-when a
performance amounts to a publication (or "public dedication")-and
ignored general common law principles. But New York has never held
that an artist can sell copies of art, like a sound recording, and then bar
purchasers from using it in public under any circumstances.
The district court paid little attention to how an absolute right to
restrict the public use of sound recordings would affect ARSC's
members, the public, and other inte1·ested stakeholders who have relied
on the ability to play vintage music. An absolute public performance
right would expose ARSC's members to unpredictable infringement
liability for simply playing pre-1972 sound recordings in the presence of
others. See Flo & Eddie, 62 F. Supp. 3d at 352. And the threat of
copyright liability for music historians and conservators will ultimately
constrict the public's access to that music.
How to maximize public access to pre-1972 sound recordings while
adequately rewarding rig·hts holders raises complicated questions. But
Congress, with the help of diverse industry stakeholders, is currently
debating detailed solutions to those questions. Adopting the district
5
court's position would cut off this process and upend Congress's efforts
to strike a balance between rights holders. music users, and the public.
Recognizing an absolute public performance right would render a
century of industry practice inexplicable. create unprecedented
infringement liability, and snuff out a robust legislative debate.
ARGUMENT
I. The District Court's Holding That Rights Holders Have An
Exclusive And Perpetual Right To Reproduce and Publicly
Perform Pre-1972 Sound Recordings Defies Logic.
The district court hypothesized that New York common law would
recognize an "exclusive right to public performance of a sound
recording," which is "in [no] way circumscribed." Flo & Eddie, 62 F.
Supp. 3d at 339, 341. If that's true. rights holders could prevent
individuals who purchase music from playing that music in public for
any reason. Creating such an unbounded right would contravene
longstanding principles of English and New York common law.
A. The Comn1on Law Of England Protected Only The
Right Of First Publication.
This Court consistently looks to English common law for guidance
when construing the nature of common law copyright. See, e.g., Capitol
Records, Inc. v. Naxos of Am., Inc .. 4 N.Y.3d 540. 546-50 (N.Y. 2005)
6
' .
(noting ''it is helpful to examine the historical roots of property rights in
tangible intellectual products"); Palmer c. De ~l'itt, 47 N.Y. 532, 536·38
(N.Y. 1872). That tradition recognized that common law copyright
protected only the author's initial decision regarding when or whether
to publish an artistic work. In other words, common law copyright "is
the right of an author, established by decisional law, to prevent
unauthorized publication of a previously unpublished manuscript."
Howard B. Abrams, The Historic Foundation of American Copyright
Law: Exploding the Myth of Common Law Copyright, 29 WAYNE L. REV.
1119, 1129-30 (1983). Mter fixing a "copy" of his work and
disseminating it to the public, an author lost all power to restrict use or
copying because that work became part of the public domain.
English courts were first asked to determine the scope of common
law copyright after authors' terms of copyright protection under the
Statute of Anne expirecl.:3 See Abrams. supra. at 1138-39. In one case, a
plaintiff had successfully obtained an injunction against the defendant's
3 The Statute of Anne granted authors the "sole Liberty of printing
and reprinting" books for a period of twenty-one years for books
published before enactment and up to twenty-eight years for books
published after enactment. An Act for the Encouragement of Learning
1710, 8 Anne, c. 19, §§ II , XI.
7
publishing ''after the expiration of the [twenty-eight year term] allowed
by the statute of Anne." Osborne t'. Donaldson (1765), 28 Eng. Rep.
924, 924: 2 Eden 327. 327. The defendant urged that, after t he
expiration of statutory protection, the plaintiff was not "entitled to the
sole printing and vending ... on the foot of his common law right." Id.
The "common law right of the author being so extremely doubtful," the
Lord Chancellor dissolved the injunction. opining that it "might be
dangerous to determine that the autho1· has a perpetual property in his
books for such a property would give him not only a right to publish
[first], but to suppress too." 28 Eng. Rep . at 924; 2 Eden at 327-28.
In 1769, the Court of King's Bench briefly deviated from these
principles. holding that the common law right of an author to the "copy"
of his works protected not only the initial '·copy," but a lso "the copy after
publication." Millar t'. Taylor (1769). 98 Eng. Rep. 201, 229, 252-53; 4
Burr. 2303, 2354, 2398-99 (emphasis added). Justice Yates dissented,
arguing tha t the majority's decision could not be squared with the
simple fact that the Statute of Anne gave "authors a temporary
property in their works." 98 Eng. Rep . at 235; 4 Burr. at 2366. The
statute made no sense if an author's temporary statutory protections
8
..
expired only to then revert to a '·perpetual monopoly." Id. ("[I]f authors
have a right at common-law, they need not enter their books at all with
the Stationers Company.").
Only five years later, the House of Lords overruled Millar in
Donaldson c. Becl?.el (1774), 1 Eng. Rep. 837. 847; 2 Bro. P.C. 129, 145,
holding that the common law had never recognized a right to exclusive,
perpetual copying after publication. see Abrams, supra, at 1160-64. Nor
would the Lords fashion a new post-publication right, lest "there [be] no
means of compelling a second impression of a useful work." 17 Pari.
Hist. Eng. 1000.
Donaldson confirmed that common law copyright protected only a
right of first- not subsequent or perpetual-publication. Blackstone
agreed:
[T]hough the exclusive property of the manuscript, and all
which it contains. undoubtedly belongs to the author, before
it is printed or published; yet from the instant of publication,
the exclusive right of an author or his assigns to the sole
communication of his ideas immediately vanishes and
evaporates; as being a right too subtile and unsubstantial a
nature to become the subject of property at the common law,
and only capable of being guarded by positive statutes and
special provisions of the magistrate.
2 WILLIA.i\l BLACKSTONE, COMMENTARIES* 405-06 (emphasis original).
9
At common law, copyright thus protected the right to control only
the first "copy" of one's work. See, e.g .. Thompson v. Stanhope (1774),
27 Eng. Rep. 476, 476-77; Amb. 737, 737-39 (enjoining "defendants from
printing and publishing t he (decedent's unpublished] letters" because a
person '·had no 1·ight to print the letters 'vv ithout the executors' consent).
That right did not protect against copying after publication unless
specifically provided by statute. See 2 l\1ELVILLE B. NIMMER & DAVID
NIMMER, NIM£\IER ON COPYRIGHT § 8C.02 (2016) (noting that common
law copyright protection "is of on ly limited significance," because "if
public distribution of phonograph records by the music copyright owner
is regarded as a publication ... at such point, the music copyright
owner loses all common law rights").
B. New York Common Law Has Never Permitted Artists
To Sell Intellectual Property But Then Restrict
Consumers' Future Use Of That Property.
Early U.S. and New York decisions accord with British common
law in recognizing this fundamental difference between common law
and statutory copyright protections. In vVhea.ton v. Peters, the Court
held t hat the Copyright Act of 1790, "instead of sanctioning an existing
[common law] right. . . . created" the right to exclusive "printing,
10
reprinting, publishing, and vending" after publication. 33 U.S. 591,
660-61 (183-1) (emphasis added). Likewise, in Caliga v. Inter-Ocean
Newspaper. the Court stated that "la]t common law, the exclusive right
to copy existed in the author until he permit ted a general publication."
215 U.S. 182. 188 (1909). Although a publishing author "g[ave] up his
common-law right of exclusive duplication prior to general publication,"
the copyright "statute created a neu· property right, giving to the
author. after publication, the exclus ive right to multiply copies for a
limited perioc1 ."·1 Id. (emphasis added).
New York courts also recognized that common law copyright was
limited in scope and duration. protecting only against reproduction and
only before publication:
Common-law copyright is that right which an author has in
his unpublished literary creations-a kind of property
right-whose extent is to give him control over the first
publication of his work. or to prevent its publication. It is
often referred to in short as "the right of first publication".
·1 Because statutory copyright creates new rights, Flo and Eddie's
assertion that common law ownership "is necessarily much broader
than" federal copyright law is plainly incorrect. See Opp'n Br. of Pl.-
Appellee at 19-20, Flo & Eddie, Inc. v. Sirius XM Radio, Inc. , 821 F.3d
265 (2d Cir. 2016) (No. 15-1164), 2015 vVL 6157969 at* 19-20. And in
any case. statutory copyright "has never accorded the copyright owner
complete control over all possible uses of [a] work." Sony Corp. v.
Universal City Studios, Inc. , 464 U.S. 417. -132 (1984).
11
The right continues to exist until the work in question is
generally published; and once it is so published, no further
common-la\v copyright exists.
Estate of Hemingway v. Rando111 House. 53 Misc. 2d 462, 464 (N.Y. Sup.
Ct. 1967) (citing Chamberlain c. Feldman. 300 N.Y. 135 (N.Y. 1949) and
Pushman c. New Yorh Graphic Socy., 287 N.Y. 302 (N.Y. 1942)).
In an opinion by Judge Learned Hanel, the Second Circuit
confirmed this principle. It found that "[c]opyright in any form,
whether statuto1·y or at common-law, ... consists only in the power to
prevent others from reproducing the copyrighted work" prior to
publication. RCA Mfg. Co. v. White111a11 , 114 F.2d 86, 88 (2d Cir. 1940),
cert denied 311 U.S. 712 (1940) (emphasis added). According to Judge
Hand, a radio station that broadcast phonographs "never copied [the
orchestra's] performances at all." Id. It '·merely used those copies" that
it lawfully possessed. Id.
To be sure, this Court's decision in Capitol Records, Inc. v. Naxos
of America, holding that New York law furnishes copyright protection
"after public dissemination of the work." suggested an extension in the
12
duratio11 of common law copyright pmtection (i.e. , after publication).5 4
N.Y.3d at 555. Although the Naxos court 1·ecognized a right to prevent
post-publication piracy, the court never purported to change the scope of
copyright protection to allow a copyright owner to restrict subsequent
public performances of sound recordings. See id. at 563 ("A copyright
infringement cause of action in New York consists of two elements: (1)
the existence of a valid copyright: and (2) unauthorized reproduction of
the work protected." (emphasis added)).
The district court therefore ignored ltflhi tem.an and misread Naxos
when it held that the right to restrict subsequent reproduction justifies
a right to restrict subsequent "performances." Nothing the district
court relied on justifies that inferential leap, which would
fundamentally alter the nature of copyright. For example, the district
court cited Nimmer's treatise for the idea that common law copyright
"protects against ... unauthorized performances." 2 MELVILLE B.
5 The Naxos court believed the Supreme Court's decision in
Goldstein v. California "deviated from the Wheaton view-that
publication divests common-law rights even in the absence of statutory
protection." 4 N.Y.3d at 557. But Goldstein's holding was "narrowly
circumscribed" to California law. Goldstein t '. California, 412 U.S. 546,
560-61 (1973). And the Naxos court recognized its decision "may appear
to conflict with [that] generally accepted principle" that common law
copyright terminates at publication. 4 N.Y.3cl at 555.
13
NIMMER & DAYlD Nil\li\lER, NIMMER ON COPYRIGHT § 8C.02 (2016). But
Nimmer cites Tompflills t•. Hallech. which found only that defendants
violated plaintiffs' rights by copying and performing an unpublished
play. 133 l\Iass. 32, 3-l--35 (1882). An earlier limited performance by
the plaintiffs did not amount to a "publication." ld. at 32-33.
Accordingly. the plaintiffs were entitled "to restrain the public
representation" of the play because defendants pirated unpublished
literary property. ld. at 35-36, 42. That court reiterated that it "has
never been disputed" that an author's rights "in his works continues
until by publication a right to their use has been conferred upon or
dedicated to the public." ld. at 35 (emphasis added). Tompllins-and
Nimmer-stancl only for the uncontroversial proposition that the right
of first publication includes the right of first performance.6
6 The cases the district court relied on focused on when a
performance constitutes a publication, and thus when common law
copyright protection terminated- not on the existence of a perpetual
performance right. See, e.g., Capitol Records, Inc. u. Mercury Records
Corp., 221 F.2d 657, 663 (2d Cir. 1955) (finding sale did "not constitute
a dedication of the right to copy and sell the records"); Metropolitan
Opera Assn., Inc. v. Wagner-Nicols Recorder Corp., 199 Misc. 786, 798-
99 (N.Y. Sup. Ct. 1950) (finding performance and broadcast of operas
was not ··a general publication or abandonment" permitting defendant
to record performances for sale). The focus on when a performance
amounts to a publication highlights the tension in Naxos.
14
Even after Naxos. the mere use of copies lawfully possessed does
not infringe a right at common law. See H'hiteman. 114 F.2d at 88.
Copyright protects only against "unauthorized reproduction," not
against playing a lawfully purchased song. See Naxos, 4 N.Y.3d at 563.
C. The Purpose Of Recording Music Is To Enable It To
Be Enjoyed In The Future.
Reason is the spirit of the common la\-v. Mil born's Case (1609), 77
Eng. Rep 420, 421; 70 Coke 6b, 7a. But the district court's rule-that
the common law creates an absolute performance right restricting the
future use of sound recordings-is not reasonable. And where reason
ceases, the law should cease too. 1 ED\V!\IlD COKE, INSTITUTES *70b; see
also Green t '. Liter, 12 U.S. 229, 249 (1814) (Story, J.) ("The reason of
the rule could not apply to such a state of things; and cessante ratione,
cessal ipso lex.") , overruled in pari by Inglia v. Trs. of Sailor's Snug
Harbor, 28 U.S. 99 (1830). Thus. even if New York has recognized a
performance right for over 100 years in different contexts,7 this Court
7 The district court relied on opuuons discussing "performance
rights" in plays and films. See Flo & Eddie. 62 F. Supp. 3d at 339. But
those cases concerned plays and films that were unpublished. See, e.g.,
Roberts v. Petrot'a. 126 Misc. 86. 86-87 (N.Y. Sup. Ct. 1925); French v.
Maguire. 55 How. Pr. 471. 474 (N.Y. Sup. Ct. 1878); Brandon Films,
Inc. v. Arjay Enters., 33 Misc. 2d 794. 795-96 (N.Y. Sup. Ct. 1962); Roy
15
should hold that an absolute performance r ight is not applicable in the
case of sound recordings. In doing so, this Court need "not change (any]
prior r ule." See R ogers t '. Tennessee. 532 U.S. 451, 474-75 (2001)
(Scalia. J .. dissenting) (emphasis original). It need only recognize that
an absolute public performance right should not be extended to this
specific context.
The district court's absolute ownership theory cannot be squared
with general property principles. See RICHARD POSNER, ECONOMIC
ANALYSIS Or LAvV § 3.6 (8th eel. 2011) ("Truly exclusive (absolute,
unqualified) property rights would be a contradiction in terms.").
Indeed, '·[o]ne of the essential characteristics of property is the ability to
acquire it by any lawful and legitimate means." 63C Alvl. JUR. 2D
Property§ 2-1 (2016). The district court's rule permitting Flo & Eddie to
sell audio recordings and prevent purchasers from playing them
publicly precludes this essential transfer of rights and interests.
These principles are especially important for artistic works, like
music. which consist of "aesthetic objects" created by skill and
Export Co. v. Columbia Broad. Sys., 672 F.2d 1095, 1104 (2d Cir. 1982)
(noting "one-time showing of [film clips] was only a 'performance' which
cannot constitute a 'divesting' publication").
16
imagination. Art, MERRI.A .. \1-WEBSTER. http://bit.ly/lHqnkzU. Artistic
property always invites the viewer. reader. or listener to use or enjoy
the aesthetic object. Nick Zang\vill. Aesthetic Judgment, STANFORD
ENCYCLOPEDIA OF PHILOSOPHY (2014). http://stanford.io/laVASMT. And
our ability to "fix" those objects increases public access to art. If the
district court is right, that increased accessibility is meaningless.
Sound recordings "fix" music so it can be played in the future. The
Turtles' "putative protected pel'fol'mances [of recorded music] were
themselves intended for that purpose and for that alone." ~Vhiteman,
114 F.2d at 88. A perpetual public performance right is antithetical to
basic concepts of artistic property.
II. The District Court's Holding Inventing A Perpetual Public
Perforn1ance Right Will Have Grave Consequences For
Curators, Consumers, And Other Stakeholders
EvlL'ywhere.
The district court recognized that its "unprecedented" decision
would upend the broadcast radio industry. See Flo & Eddie, 62 F.
Supp. 3d at 344 (noting "the specter of administrative difficulties in the
imposition and collection of royalties . . . [could] possibly make
broadcasts of pre-1972 recordings altogether unavailable"); id. at 352
(agreeing that its "holding is unprecedented . . . and will have
17
significant economic consequences"). It even recognized that "a
legislative solution [might] be best." lcl. at 344. But the district court
chose to ignore the insurmountable problems its rule would create for
groups like ARSC. and the downstream effects on the public's access to
music. See id. at 353 ("The broader policy problems are not for me to
consider."). And it gave short shrift to a complex and ongoing
legislative debate over the status of pre-1972 recordings, believing the
common la\v somehow requires the absurd results that an absolute
performance right would create.
A. Recognizing A Public Performance Right Raises The
Specter Of Unknowable Infringement Liability For
Music Curato1·s.
"AJ{SC was founded for the express purpose of preserving our
recorded heritage and encouraging scholarship into that heritage."
ARSC, Comment Letter on Federal Copyright Protection of Sound
Recordings Fixed Before February 15, 1972. at 1 (Apr. 12, 2011),
http://bit.ly/2bhcpLl. And because there is little evidence that
preserving vintage recordings is a priority for rights holders, groups like
ARSC serve a singularly important role. Id. at 5-7. The district court's
18
opinion imperils that role by exposing music curators to myriad claims
asserting unpredictable infringement liability.
The district court suggested that "[a]ll Flo and Eddie seeks here is
the right to receive royalties under state law for the digital broadcasting
of its pre-1972 recordings." Flo & Eddie, 62 F. Supp. 3d at 343. But the
right Flo & Eddie seeks-and the district court's reasoning-is much
broader than that. Flo & Eddie believes "ownership of pre-1972
recordings necessarily canies with it the right to prevent all
unauthorized uses." Opp'n Br. of Pl.-Appellee at 12. Flo & Eddie, Inc. v.
Siril.ls XJV! Radio, Inc., 821 F.3d 265 (2d Cir. 2016) (No. 15-1164), 2015
WL 6157969 at * 12 (emphasis original). And the district court found
that New York protects an "exclusive right to public performance of a
sound recorcling"-not a limited right to collect royalties for digital
broadcasts. Flo & Edcli.e, 62 F. Supp. 3d at 339; see also id. at 344 ("In
short, general principles of common law copyright dictate that public
performance rights in pre-1972 sound recordings do exist."); id. at 341
("No New York case recognizing a common law copyright in sound
recordings has so much as suggested that right was in some way
circumscribed, or that the bundle of rights appurtenant to that
19
copyright was less than the bundle of rights accorded to plays and
musical compositions.").
If rights holders have an absolute right to control the public
performance-or public use--of audio recordings, music educators and
preservationists would infringe a common law copyright every time
they play a song fixed before February 15, 1972 in public. ARSC's
chapters often exhibit, or publicly '·perfm·m," vintage and refurbished
recordings. For instance, ARSC's New York chapter recently "offered a
tribute to pianist Earl vVild on the centennial of his birth" with "audio
and video segments, including some glimpses of vVild playing in recital."
Dennis D. Rooney, ARSC Neu: Yorh Chapter News, 139 ARSC
NEWSLErrvi'EH. 8 (2015), http://bit.ly/2b1VIFoJB. One month later, the
chapter held an event with the Audio Engineering Society at the New
School's Institute for Jazz Research, which included "playing excerpts of
the 1938 Benny Goodman Carnegie Hall Concert, in a new digital
restoration undertaken by [one of ARSC's members] from original
acetate lacquer master discs." !d. '·All of ARSC's New York Chapter
meetings,'' including these events, "are free and open to the public." Id.
20
Some of ARSC's activities are less obviously "public
performances," like playing recordings as part of the restorative process
or while conducting musicological research. See, e.g. , Preservation
Grants ALcarded, 141 ARSC NEWSLS'ITER 7 (2016), http://bit.ly/2bTObJO
(announcing grants "support[ing] playback and recording of piano rolls
recorded by Catalan composers Federico Nlompou and Manuel
Blancafort between 1914 and 1929"). But the specter of liability looms
here too. Imagine Sharon is attempting to restore rare 1930s swing
recordings. In the process, she plays back the master tracks countless
times in an effort to remove audio imperfections. Struggling to remove
a series of 'pops' or 'crackles,' she plays the recordings for a fellow ARSC
member to show her progress and elicit suggestions. Or perhaps
Sharon has successfully removed the imperfections, but worries her
digital processing has marred the inherent character of the original
tracking. Accordingly, she consults with a large team of audio
engineers, and together they listen to the recordings again and again.
Has Sharon infringed a public performance right? We don't know,
which is part of the problem. Without clarity, Sharon may decide not to
restore the vintage recordings at all.
21
VVhether the district court's rule restricts ARSC's work directly or
indirectly, it would ultimately harm the downstream beneficiaries of
ARSC's vvork-mernbers of the public. VVhat good is it to restore,
research, or p1·eserve sound recordings if the public cannot ultimately
appreciate those recordings? Flo & Eddie might argue that copyright
holders are interested only in pursuing large, commercial broadcasters,
and not the Herman's Hermits fan playing records in his backyard
while grilling burgers. But that suggestion will be small consolation to
the cautious citizen, who may rig·htly wonder whether playing those
recordings while entertaining guests at a lawn party m· blaring them in
his car with the windows rolled down constitutes a "public
performance." In any case, the suggestion may not be true because
rights holders sometimes have other, non-pecuniary reasons for seeking
to restrict the use of their music. See, e.g., Travis M. Andrews, The
Rolling Stones Denw.nd Tru.mp Stop Using Its Music at Rallies, But Can
the Band Actually Stop H . 2 Lm .. , WASH. POST (May 5, 2016),
http://wapo.st/l VLOCs3.
22
B. Unpredictable lnfringe1nent Liability Will Chill
Consu1ners' Enjoyment Of Our Musical Heritage.
Expansive and unpredictable copyright liability would discourage
archivists. librarians, and conservators from performing important
work with respect to the recordings that may need it most-recordings
fixed befm·e 1972. See, e.g., lVIusic Library Ass'n, Comment Letter on
Federal Copyright Protection of Sound Recordings Fixed Before
February 15, 1972, at 7 (Jan. 31, 2011). http://bit.ly/2bOgCT4 (noting
that "libra1·ians ... will shy away from uses which may otherwise be
permitted"). And discouraging that work will limit the public's access to
and enjoyment of our rich musical history.
ARSC believes that "only 10% of historic recordings made before
1955 have been made available by (or licensed by) rights holders."
ARSC, Prol1loting Changes in U.S. Copyri.ght Law to Preserve Our
Audio Heritage (Feb. 2. 2015), http://bit.ly/2aXxRG3 (citing TIM BROOKS,
COUNCIL 0~ LIBRARY & INFO. RES. & LIBRARY OF CONG., SURVEY OF
REISSUES OF U.S. RECORDINGS (2005)). An absolute performance right
would only make matters worse if it dissuades individuals like ARSC's
members from pursuing their important work for fear of copyright
liability.
•)'3 ......
But even those individuals who would choose to continue
researching, restoring, and preserving music in the face of potential
infringement liability may be practically prevented from doing so if the
threat of liability reduces critical financial support. ARSC's work is
"often prohibitively expensive." See Music Library Ass'n, Comment
Letter on Federal Copyright Protection of Sound Recordings Fixed
Before February 15, 1972, at 3 (Jan. 31. 2011), http://bit.ly/2bOgCT4.
And "donal'S are unlikely to give money to projects whose copyright
status is in question." ld.
The chilling effect on music curators and donors will ultimately
harm the public by restricting access to sound recordings. Earlier this
year, the Big Sanely Cultural Fund ('"BSCF''), a nonprofit organization
in Montana, requested ARSC's assistance in acquiring a CVS-14
variable speed turntable to enable "playing [and] transferring [its]
cultural center's growing collection of 78 rpm recordings, many of them
formerly owned by early [Montana] ranchers and homesteaders." Doug
Giebel, Big Sandy Fund Requests a Turntable, 140 ARSC NEWSLETI'ER
8 (2016). http://bit.ly/2bmlzHU. BSCF hopes to use ARSC's support "to
introduce [local] school students to historic recordings and the history of
24
American music" as part of an afterschool program. Id. If ARSC's
members are deterred from restoring records like BSCF's 78 rpm
recordings. or if donor timidity prevents ARSC from supporting projects
like BSCF's afterschool program. schoolchildren will lose the
opportunity to learn about their own heritage. That loss will be
especially acute in small towns like Big Sanely, where organizations like
BSCF (supported by groups like ARSC) may be a particularly valuable
source of cultural enrichment.
This result offends copyright law's basic purpose. "[C]opyright
law ultimately serves the purpose of enriching the general public
through access to creative works." Kirstaeng v. John Wiley & Sons,
Inc., 136 S. Ct. 1979, 1986 (2016) (quoting Fogerty u. Fantasy, Inc., 510
U.S. 517, 527 (1994)). And "while authors are undoubtedly important
intended beneficiaries of copyright. the ultimate, primary intended
beneficiary is the public." Authors Guild t '. Google, Inc., 804 F.3d 202,
212 (2d Cir. 2015).8
s Flo & Eddie cannot ameliorate the severity of the district court's
rule by suggesting that ARSC's "performances" would be excused as
"fair use." That is because "the fair use defense is unavailable in a
common law copyright infringement action." 2 lVlELV1LLE B. NIMlVIER &
DAV1D Nli\1;\ lER, NIMMER ON COPYRIGHT § 8C.02 (2016). See Stanley u.
25
C. The Unprecedented Creation Of A New "Common Law"
Right \tVould Cut Short Good Faith Legislative Debate
By Inte1·ested Stakeholders.
The district court's decision would also prematurely cut off robust
legislatiye debate about the appropriate scope of copyright protection
for pre-1972 sound recordings. vVhen Congress declined to extend
retroactive federal copyright protection, the result was an arbitrary
disparity in the treatment of recordings fixed before and after 1972.9
Columbia Broad. Sys., 35 Cal. 2d 653. 661 (Cal. 1950) ("Again, common
law rights in unpublished worles are of a wider and more exclusive
nature than the rights conferred by statutory copyright in published
works. The common law prohibits any kind of unauthorized
interference with, or use of, an unpublished work on the ground of an
exclusive propel'ty right, and the common-law right is perpetual,
existing until lost or terminated by the voluntary act of the owner,
while a statutory copyright permits a 'fair use' of the copyright
publication without deeming it an infringement." (emphasis original)
(citations omitted)); see also Fendler u. lVJorosco, 253 N.Y. 281, 291
(N.Y. 1930) ("Vle are not now considering whether the defendant ...
made a fair use of plaintiff's play. Since plaintiff had not published or
produced her play, perhaps any use that others made of it might be
unfair." (emphasis added)): Estate of Hemingu.•ay. 53 Misc. 2d at 465-66
(discussing fair use only after finding that plaintiffs retained no
common 1aw copyright because the disputed materials "ha[d] been
generally published, in that they have been distributed to the public at
large, without any of the limitations that could preserve the common-
law copyright").
9 There is evidence that the disparity is an anomaly based on a
mistaken belief that federalizing copyright for pre-1972 recordings
would bring all such recordings into the public domain. See Music
Library Ass'n, Comment Letter on Federal Copyright Protection of
26
After obselTing this disparity in practice. parties representing a wide
variety of interests-including representatives of the recording
industry. lll libraries and archives, 11 broadcast radio, 12 and the public
interestr3-have debated retroactively incorporating pre-1972 sound
recordings into federal law. At Congress's direction, the United States
Copyright Office prepared a detailed report that recommends removing
pre-1972 sound recordings from state jurisdiction. U.S. COPYRIGHT
OFFICE, FEDERAL COPYRIGHT PHOTECT!ON FOR PRE-1972 SOUND
RECORDI NCS 175-78 (2011).
Sound Reconlings Fixed Before February 15, 1972, at 6 (April 13, 2011),
http://bit.ly/2b4ltml (citing Michael Edinger, Jr., An Analog Solution in
a Digital World: Providing Federal Copyright Protection for Pre-1972
Sound Recordings, 16 U.C.L.A. ENT. L. REV. 45. 48 (2009)).
10 Reconling Indus. Ass'n of Am., Inc .. Comment Letter on Music
Licensing Study: Notice and Request for Public Comment 32 (May 23,
2014), http://bit.ly/2aPMPyG.
11 Soc'y of Am. Archivists, Comment Letter on Federal Copyright
Protection of Sound Recordings Fixed Before February 15, 1972, at 4-5
(Jan. 19. 2011), http://bit.ly/2alf7aK.
12 Nat'l Ass'n of Broads., Comment Letter on Federal Copyright
Protection of Sound Recordings Fixed Before February 15, 1972 at 1
(April 13. 2011), http://bit.ly/2bcCsr8.
t:3 Elec. Freedom Found., Comment Letter on Federal Copyright
Protection of Sound Recordings Fixed Before February 15, 1972, at 17
(Jan. 31, 2011). http://bit.ly/2b41 vV84.
27
Although there appears to be a consensus that Congress should
federalize copyrights in pre-1972 sound recordings. not all stakeholders
agree about how Congress should go about it. The music library
community. for example. has argued for federalization because it would
provide clear limits to the scope of copyrights. Music Library Ass'n,
Comment Letter on Federal Copyright Protection of Sound Recordings
Fixed Before February 15, 1972, at 1-2 (Jan. 31, 2011),
http://bit.ly/2bOgCT4. They have taken that position even though
federalizing the protection of pre- J 972 recordings ·would deprive it of
more favm·able rules applied in some states. Id. at 7.
The recording industry initially expressed concern over
fede1·alization. raising concerns about chain of title, loss of copyright
over recordings that will enter the public domain, and shortening of
their copyright term. See Recording Indus. Ass'n of Am., Inc. & Am.
Ass'n of I ndep. l\t[usic, Comment Letter on Federal Copyright Protection
of Soun1. Recordings Fixed Before February 15, 1972, at 5 (Jan. 31,
2011), http://bit.ly/2b5YIT3. But more recently, the recording industry
has endorsed the federalization of copyrights in pre-1972 recordings,
recognizing the benefits that come with the introduction of statutory
28
damages . extensive criminal copyright protections, and a more
comprehensive slate of exclusive rights. See Recording Indus. Ass'n of
Am., Inc.. Comment Letter on Music Licensing Study: Notice and
Request for Public Comment 32 (lVIay 23, 2014), http://bit.ly/2aPMPyG.
The district court's decision would abruptly end this debate,
awarding all the spoils to the rec01:ding industry and undermining
Congress's efforts to strike an appl'Opriate balance between the industry
and the public.
29
CONCLUSION
Ne\Y York has never recognized an absolute, perpetual right to
control the performance of sound recordings. It should not recognize
one now. For the sake of the common law, common sense, and common
access to musical works, this Court should hold that New York does not
recognize an absolute public performance right in audio recordings.
Dated: September 1, 2016
1
• Wetzel
'.Davis
SPALDING LLP
101 Second Street, Suite 2300
San Francisco, VA 94105
Telephone: (415) 318-1200
Facsimile: (415) 318-1300
jwetzel&kslaw .com
Counsel for Amicus Curiae
The Association for Recorded Sound Collections
30
CERTIFICATE OF COMPLIANCE
Pursuant to section 500.13(c)(l) of the Rules of the Court of
Appeals, I certify that this amicus brief complies with the length
limitations set forth in section 500.13(c)(l) because it contains
5,946 wm·cls, as counted by Microsoft Word, not counting the items that
may be excluded under section 500.13(c)(3).
. 'Netzel
:
CERTIFICATE OF SERVICE
Pursuant to section 500.13(l)(i) of the Rules of the Court of
Appeals, I certify that on Septembe1· 1, 2016, I filed this amicus brief
with the Clerk of the Court of Appeals. I certify that I will serve one
copy of this amicus brief on all parties in accordance with section
500.13(l)(i).