A recent decision in *Flo & Eddie, Inc. v. Sirius XM Radio* (the opinion can be found here), in which the court denied Defendant summary judgment, is noteworthy in that it involves a rare (some would say it should be non-existent) copyright claim based not on federal copyright law but rather state law “common law” copyright. It is also noteworthy due to the fact that the trial judge recognized that a ruling for the copyright holder could “possibly make broadcasts of pre‑1972 records altogether unavailable,” yet felt compelled to rule in its favor anyway. Finally, it is a reminder that federal legislation to fix a perceived problem can lead to unforeseen consequences — in this case, 40 years after the legislation was enacted.
In *Flo & Eddie,* the issue is copyright in “sound recordings,” specifically, recordings by the 1960s rock band the Turtles. Copyrights usually affect the music industry only through the copyright on the “musical compositions,” i.e., music and lyrics. The owner of the copyright in the musical composition — initially the author or authors of the song, but often, through assignment, a “publisher” — is entitled to royalties on the sale of a recording (a vinyl record, a CD, a digital file). In addition, when the record is “performed” by being played on the radio, or in a public place, the owner of the copyright in the musical composition is entitled to royalties, although, in a commonly-noted irony, the owner of the copyright in the musical composition is not necessarily, or even usually, the performer; if Sirius XM, for example, played the Turtles’ record, “It Ain’t Me, Babe,” the royalty for the musical composition rights in that radio performance would be owed only to its composer, Bob Dylan (or to whomever he assigned his copyright).
*Flo & Eddie*, though, as the Court noted, “is not about musical composition.” Slip Op. 10. Sirius’ payment of “royalties to the holder of the copyright for the right to perform The Turtles’ compositions” is not an issue in the lawsuit. Slip Op. 11. “This suit is about copyright in sound recordings”; “[a] copyright in a musical composition is *not* the same as a copyright in a sound recording of a performance of that composition.” Slip Op. 10. “In essence, a copyright in a sound recording is a copyright in the performance — not in the work being performed.” Slip Op. 11. So, to continue with the example of “It Ain’t Me, Babe,” while royalties on performances of the musical composition as performed by the Turtles go to the composer, Bob Dylan, or his assignees, the owner of the rights, if any, in the Turtles’ *recording* itself are separate.
The question then is, what rights are there in the Turtles’ recordings themselves? None, under Federal copyright law. In the 1960s, the Turtles’ heyday, sound recordings were not subject to copyright protection. However, by the early 1970s, Congress became concerned with the sale of unauthorized, “bootlegged” copies of recordings, facilitated by a new, cheap technology (cassettes – discussed here), and it was asserted by lawmakers that state law remedies, even where there was a statute prohibiting “record and tape piracy,” were inadequate to address the perceived problem. See H.R. Report No. 92-487, “Prohibiting Piracy of Sound Recordings.” (Sept. 22, 1971) (available here). In 1971, based on these concerns, Congress added protection for sound recordings to federal copyright law. However, it did so only prospectively: federal copyright protection extends only to those sound recordings made on or after February 15, 1972. 15 U.S.C. § 301(c). Federal copyright is thus no help in the Turtles’ quest for royalties: given that the Turtles’ last top 40 hit was “You Showed Me” in 1969, Sirius XM is unlikely to play any Turtles recordings made on or after February 15, 1972.
Congress, however, left a loophole in the 1971 Sound Recordings Amendment. While copyright law generally pre-empts state law to the extent it purports to extend copyright-like protection to artistic works, Congress in 1971 was reluctant to declare pre‑1972 recordings to be in the public domain. Thus, the law as enacted in 1971 expressly preserves any state law rights as to pre‑1972 sound recordings, although the law also provides that eventually (currently, in 2067), the pre‑1972 recordings fall into the public domain.
Flo & Eddie, Inc. (named after the stage name of the two most prominent members of The Turtles, Mark Volman and Howard Kaylan) owns the rights in the sound recordings of the Turtles, via a contract with the Turtles’ former record company, White Whale. In 2013, Flo & Eddie sued Sirius XM in federal district court in New York for common law copyright infringement under New York law, for copying and “performing” many of the Turtles’ 60s hits. In a decision issued November 14, 2014, the court agreed that Flo & Eddie did have a common law copyright under New York law, and that, by storing the Turtles’ recordings digitally, Sirius XM made copies. According to the court, Sirius XM also “performed” them, via satellite broadcasting.
In my opinion, the court was too quick to rule that the “copying” for broadcasting purpose was actionable under New York law, rather than being fair use: what Sirius XM does is a far cry from the sale of “pirated” records decried by the advocates of the 1971 Federal copyright amendment. As to performance royalties, the court, in my opinion, erroneously brushed aside previous “judicial silence” (Slip Op. 19) and the fact that no one before Flo & Eddie believed there was a common law right to performance royalties, or at least tried to assert that belief in the courts. However, the decision is consistent with a decision issued August 2014, by a district court in California in a similar lawsuit by Flo & Eddie, that a California statute gives the Turtles’ rights to performance royalties against Sirius XM (although the court in the California case found there was a factual issue as to whether Sirius XM made unauthorized copies within the meaning of the statute).
The New York district court’s opinion recognized that its decision could wreak havoc on settled expectations in broadcasting, or at least have “significant economic consequences.” Slip Op. 39. Satellite broadcasters may face many more such lawsuits under various state laws: Flo & Eddie’s lawsuits purport to be class actions on behalf of similarly-situated copyright owners, and similar suits have been filed this month against Apple subsidiary Beats Music, Google, and Sony by the owner of the copyright in the Flying Burrito Brothers’ 1969 recording of “Sin City.” Unless the *Flo & Eddie* rulings are reversed on appeal, or fixed legislatively at the federal level, potential defendants will be in the unusual position of having to concern themselves with interpretation of “copyright” law in 50 different jurisdictions, rather than a uniform Federal law as contemplated by the Constitution’s copyright clause.