Pro-Sirius XM Amicus Briefs Question Existence of Pre-1972 Performance Right in New York Common Law
NAB, Pandora and other groups sided with Sirius XM in proposed amicus briefs posted by Wednesday urging the U.S. Court of Appeals for the 2nd Circuit to reverse earlier U.S. District Court rulings in New York that the company owed performance royalties to Flo & Eddie, who own the copyright to The Turtles' “Happy Together” and the rest of that band's music library, and other artists for the performance of pre-1972 recordings. U.S. District Judge Colleen McMahon ruled against Sirius XM in November, saying then that “general principles of common law copyright dictate that public performance rights in pre-1972 sound recordings do exist” (see 1411170043). McMahon later largely affirmed that decision in a January ruling.
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Parties that filed proposed amicus briefs in Sirius XM’s appeal to the 2nd Circuit have uniformly backed the company, with many questioning McMahon’s ruling that New York common law includes a performance right for pre-1972 recordings. Her ruling “contravened decisions of this Court and the New York Court of Appeals recognizing that common-law copyright protects only against the unauthorized reproduction of sound recordings,” NAB said in its brief. “Although the district court stopped short of holding that common-law copyright in the performance of pre-1972 sound recordings is ‘broader than the right legislated by Congress’ for post-1972 recordings, so as to encompass over-the-air broadcasting,” the 2nd Circuit can eliminate any doubt by reversing the ruling.
New York’s common law related to sound recordings applies only to unauthorized reproduction, the New York State Broadcasters Association (NYSBA) said. State courts “never envisioned the grant of performance rights in sound recordings, and no analogous legislative guideposts even suggest the existence of such a right,” the group said. “Such recognition would have disrupted two organically developing, interrelated industries to the detriment of all parties. This is not how the common law operates.” Determining performance royalties for pre-1972 recordings would itself be “a monumental task given the age and multitude of the recording contracts at issue," NYSBA said. “There is no state registry of copyrights to consult for guidance, and the courts cannot fashion one.”
McMahon’s ruling also “all but ignored the extensive history of efforts by the recording industry to secure a federal performance right for sound recordings, precisely because there was no such right available under state law,” Pandora said. Record companies have pursued performance rights for recordings as far back as the 1920s. Congress has limited the scope of performance rights conferred so it “does not empower the rights-owners to preclude performances of the works by noninteractive Internet radio services like Pandora,” that company said. The performance right McMahon envisioned with New York state law “lacks any visible definition or detail,” reflecting Flo & Eddie’s argument that “a common law public performance right is a natural property right that admits of no exceptions,” Pandora said.
It’s “inconceivable that the New York courts would not look to the extensive work of Congress and the federal courts in defining and limiting performance rights in post-1972 sound recordings to inform their interpretation of state common law,” the Electronic Frontier Foundation said. The federal Copyright Act doesn’t mandate limits on state law protections on pre-1972 recordings, but “in the absence of recent state precedent, New York courts should apply the principles of limited, empirically justified expansion of copyright from federal law. More generally, federal law counsels deference to the legislature in expanding copyrights, particularly for existing works.”
A separate New York state law on pre-1972 performance rights would “directly” conflict with the federal statute “because it requires digital streaming services that qualify for the federal compulsory license to negotiate separate licenses with individual owners of pre-1972 sound recordings based on a patchwork of differing state laws, for performances that are not specific to any one state but that are available everywhere that a satellite radio or Internet connection exists,” said a group of IP law professors led by American University Washington College of Law professor Brandon Butler. Proponents and opponents of past legislative efforts to enact a federal pre-1972 performance right have uniformly agreed that “there was no existing public performance right in sound recordings under either state or federal law,” said a second group of IP law professors led by University of California-Los Angeles School of Law professor Eugene Volokh. “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?”
It’s not surprising that supporters of Sirius XM’s appeal are uniformly citing the issue of federal pre-emption of state IP laws since that’s the strongest argument they can make in advocating for the court to overturn McMahon’s ruling, said Fletcher Heald copyright attorney Kevin Goldberg. It’s also not surprising that Sirius XM has drawn support from fellow broadcasters since they're “very concerned about the implications of this because there’s always been an assumption that the federal pre-emption doctrine would protect over-the-air broadcasters” from the performance rights issue, Goldberg said. McMahon’s decision leaves “a little uncertainty” in the market, he said.