Taking Common-Law Copyright for Pre-1972 Sound Recordings Seriously

For those unfamiliar with common-law copyright and sound recordings, it might be helpful to read my post Of Sheep and Goats summarizing the issues as context for this post, although I do go over the basics here as well.

Almost five years ago (how the time flies) I was reading about the then-new cases where Flo & Eddie of the Turtles were suing SiriusXM and Pandora for infringement of their common-law copyrights.  I distinctly remember going to bed and then getting up with a bit of a start, such is the drama of my life – I’d seen this before, and I didn’t think many others had.  In particular, while writing in my 2007 article The Twilight of the Opera Pirates, I remember reading various cases involving the operatic duo of Gilbert & Sullivan, including the Mikado and Iolanthe cases.  Both cases involved attempts by the British owners of the work to prevent American theaters from performing their in-house orchestrations of these operas, which had been orchestrated from the published piano reduction of the opera (designed to be performed at home).  At the time I’d focused on the success of the strategy, but looking back I realized something else – everyone seemed to agree that if the American theaters had used the unpublished orchestral score directly, they would be infringing the common-law copyright of the composer, even though (a) public performance of music was not infringing until over a decade later, and (b) the composer was British, and foreigners would not get copyright in America until 1891.

I dove deeper into the issue, and last month the Cincinnati Law Review published my article about common-law copyright for sound recordings, called “Common-Law Copyright.” I’ve been talking about this piece for a while now, and this will be the last such post, because it’s been published, and the final PDF is online.  My initial goal was to find more such examples from older cases, and I believe I demonstrated conclusively that common-law copyright has always included performance rights, and that such performance rights are not dependent on federal statute granting performance rights.  However, as I was writing I started to wonder whether performance rights and duration were the only points of difference between statutory and common-law copyright.

And that is why I gave my article the title “Common-Law Copyright,” instead of a title more explicitly linking it to sound recordings.  Because we’ve really failed to think through the doctrinal consequences of using common-law copyright to protect older sound recordings, or even really what common-law copyright is.  In my article I believe I document pretty clearly just how different common-law copyright is from statutory copyright, and how we’ve fairly to take it seriously as a doctrine and ended up with a muddle of unpredictability and confusion.

So, what is common-law copyright? In a nutshell, common-law copyright is the perpetual right of control over unpublished works – both pre-publication manuscripts and documents meant to be kept private, like letters and diaries.1  Copyright law both common-law and federal provides that if a work is published then it loses common-law protection In the 1930s through the 1950s, a number of court cases held that sound recordings are not published under state laws, even if publicly sold, and thus could be protected by common-law.  In 1972 sound recordings were brought within federal law and state-law protection was rendered largely moot, but this change only applied to sound recordings made on February 15, 1972 or later, leading to the current predicament regarding “pre-72” sound recordings.

In the middle of the 20th century, it wasn’t entirely clear if the doctrine was actually common-law copyright or a different sui generis protection – Courts generally didn’t use the phrase “common-law copyright,” and Nimmer – the major treatise on copyright at the time (and one of the major ones still) said in the 1973 edition that the protection for sound recordings is not common-law copyright.  However, in recent years Courts, especially in New York, have settled on the protection for pre-72 sound recordings being under common-law copyright.

Common-law copyright was abolished except for pre-72 sound recordings by the 1976 Copyright Act, meaning that Courts generally only encounter common-law copyright issues in this narrow context now.  Courts have thus tended to treat common-law copyright for pre-72 sound recordings as being largely identical to statutory copyright.  I believe this is a mistake, and if we’re going to use common-law copyright for pre-72 sound recordings, we should take the doctrine seriously and understand that it is substantially broader from statutory copyright.

The article covers a lot of ground, and I hope folks in the various affected fields find it helpful.  The Music Modernization Act, if passed, will require payment of royalties for digital audio transmission of pre-72 sound recordings, implicitly but not explicitly recognizing common-law rights in pre-72 sound recordings.  Whether we choose to take common-law copyright seriously going forward is up to us.

I try to include something archival with each post, so here‘s the casefile from Gee v. CBS on appeal to the 3rd Circuit Court of Appeals from the decision of the Eastern District of Pennsylvania, on the question of whether common-law copyright in sound recordings made by Bessie Smith is subject to adverse possession.  The very short unpublished opinion of the 3rd Circuit is also included.

Earlier Posts, which can also be seen in this blog’s Common-Law Copyright tag:



  1. The concept of mailing a document to yourself, sometimes called common-law or “poor man’s” copyright, is completely different, not to mention largely ineffectual.

Of Sheep and Goats: A Condensed History of Common-Law Copyright for Sound Recordings

“Some sheep are being treated like goats and the resulting mélange can satisfy no one except those who happen to profit from the confusion.”
Benjamin Kaplan, Harvard Law Professor, on sound recording copyright, from Publication in Copyright Law: The Question of Phonograph Records, 103 U. Penn. L. Rev. 469 (1955).

To be clear, what follows is solely my opinion, and should not be attributed to any institution, public or private.  Much to my chagrin I received no support for writing this post, directly or indirectly.

There’s been a lot of talk lately about the CLASSICS Act, now incorporated into the Music Modernization Act which passed the House and is now pending before the Senate.  There’s been a number of posts arguing whether it’s an extension of copyright to 144 years, or a clarification of the status quo.  I’ve personally spent a while on the issue of pre-1972 sound recordings and copyright, and my article Common-Law Copyright should be coming out soon, so I figured it might be helpful to explain a bit more why I tend to think this bill is largely a clarification and federalization of the status quo, by way of providing the background for pre-72 sound recordings.  This is fairly condensed, and I’d urge folks who want the whole story to read my article.  Those interested in the subject should also look at the Copyright Office’s Report from 2011 on pre-1972 sound recordings, as well as its related documents.

Continue reading “Of Sheep and Goats: A Condensed History of Common-Law Copyright for Sound Recordings”

Player Pianos and the Origins of Compulsory Licensing – Some Details of its Origins

The Music Modernization Act just passed the House as I’m writing this, and it seemed apropos to look at the origins of mechanical licensing in the 1909 Copyright Act.  The story has been told before (although not in a dedicated article or book), but I’ve found a number of aspects of the story that I believe have been largely forgotten, along with a few documents that I’ve scanned which are pretty cool to see.  Accordingly I’ve compressed parts of the narrative and expanded the parts where I have something new to add.  One of these days I’d like to write a book on the 1909 Act, or at least put this stuff into an article

The first sound recordings that could be played back were made in the 1870s, and the technology was commercialized effectively beginning in the 1890s.  In these early days the legal aspects of the various early sound reproduction systems were generally lumped in with another technology that developed at around the same time, the player piano,1 and in 1888 Harry Kennedy brought suit in the U.S. Circuit Court in Massachusetts, arguing that the inventor John McTammany had prepared Kennedy’s song Cradle’s Empty, Baby’s Gone, copyrighted in 1880, on a piano roll for use in a player piano (the song is a serious downer, fair warning).  The casefile from the National Archives  (which I originally shared last year) shows that in 1882 the Automatic Music Paper Company paid Kennedy a license fee, and published an authorized piano roll indicating that the song was used with permission.  In fact, although the reported decision does not make it clear, the Automatic Music Paper Company was Kennedy’s co-plaintiff in the case.2  However, in a brief decision the Court held that programming a paper reel with punches for use in a player piano did not infringe the copyright of the musical composition which was played back from that paper reel.  The matter was appealed to the U.S. Supreme Court, but in 1892 the Supreme Court dismissed the case without an opinion.  145 U.S. 643 (OT 1891 No. 168)

It would be another decade before another reported decision on mechanical reproduction, but at the beginning of the twentieth century one George Rosey was accused of selling sound recordings of two songs on wax cylinders – “Take Back Your Gold” and “Whisper Your Mother’s Name.”   I’ve scanned  the appellate case file of the DC Court of Appeals, and the briefs show the conflicting positions taken by the parties to the case, where Rosey based his argument on prior caselaw – the 1888 Kennedy decision and the then-recent English case of Boosey v.Whight, 1 Ch. 836 (1899) and 1 Ch. 122 (1900).  By contrast the music publishers of Joseph W. Stern and Edward B. Marks looked to broad principles of copyright to assert that recording a copyrighted song constituted infringement.  In 1901 the DC Court of Appeals (now the DC Circuit Court of Appeals) held similarly regarding sound recordings, finding that a sound recording did not infringe the copyright in a musical composition.

As I mentioned (I’m not sure others have noticed this), as early as 1882 the Automatic Music Paper Company was paying royalties to songwriters for mechanical reproduction, in spite of the lack of clear legal precedent saying they had to.  Later in that decade the Automatic Music Paper Company merged with the Mechanical Orguinette Company, and the resultant company would be named the Aeolian Company.  Aeolian would continue its predecessors practice of compensating songwriters for use of their songs.  Its motivation for starting this practice is unknown (at least to me – feel free to educate me in the comments) – was it alruism and a sense of duty, did they believe they had a legal obligation, or, as critics increasingly charged, did they intend to establish such a right once they already held licenses to most popular music, setting themselves up to dominate the player piano market using copyright?

When the White-Smith Music Publishing Company sued the Apollo Company to assert that Apollo had sold piano rolls that infringed their copyright in the musical compositions, it was generally understood that Aeolian was actually behind the litigation.3  The case slowly worked its way through the Courts, and while this was happening, in 1905, the gears began turning on a major revision to the copyright laws.  In June of 1906 Congress held hearings, and the transcript shows that Aeolian’s opponents showed up in force to argue that Aeolian was trying to create a monopoly in the player piano using its licenses to musical compositions.  Aeolian was not represented at these hearings, but at their behest a young Nathan Burkan published a pamphlet with the unwieldy title of The Charge That The Passage Of The Copyright Bill, Senate Bill 6330, Will Create A Monopoly In The Manufacture Of Automatic Musical Devices Is False.  The pamphlet on the one hand acknowledged that Aeolian had, in 1902, made contracts with many of the major music publishers for mechanical rights, assuming a court found such rights existed.  Aeolian also agreed to fund the litigation, and according to Burkan they had already expended $50,000 in legal fees, the equivalent of over $1.2 million today.  However, they argued that Aeolian had not secured contracts for all popular music, and further that such contracts explicitly did not include rights for sound recordings, which were likewise ascendant.  Nonetheless, the response does leave a certain lingering impression that Aeolian acknowledged that they would have at least a dominant position in the player piano market if a law giving the owners of copyrights in musical compositions an exclusive right of mechanical reproduction.

After the case arrived before the Supreme Court, but before argument, the defendants moved to dismiss the case, arguing that the amount in controversy was not significant enough for the Court to have jurisdiction.  This motion is found at the end of the case file held by the National Archives, and has not to my knowledge been previously discussed.  It’s not clear why Apollo would move to dismiss at this point if the amount in controversy was so minor anyway – they’d come so far, one would think they would want to be vindicated.  One possibility is that, if the case was a test case with a willing defendant, Aeolian grew concerned that the winds of the case were blowing against them, and tried to get out before the Supreme Court issued a decision.

Sure enough, in 1908 the Supreme Court affirmed the earlier decisions regarding mechanical reproduction in White-Smith v. Apollo, and held that the 1870 copyright law did not recognize mechanical reproductions as “copies.”  However, the Court made clear that Congress could step in and remedy this inequity, and in response the 1909 Copyright Act provided compulsory licensing provisions for “mechanical” reproductions of copyrighted musical compositions, including sound recordings.  It was widely understood that the compulsory nature of the licensing was meant to prevent another entity like Aeolian from dominating the market using exclusive licenses.

Roughly ten years later, the Federal Trade Comission investigated Aeolian for various antitrust claims, including price-fixing, leading to a cease and desist order (at pg. 124).  However, Aeolian survived far longer, and long after player pianos had left the mainstream, going through a series of mergers and finally declaring bankruptcy in 1985

  1. There were actually different technologies and names for mechanical organs at the time, but the details are only incidentally relevant and I’ve chosen to simply describe everything as player pianos and piano rolls.
  2. The casefile is pretty interesting in general, and the answer filed by the defendant includes a detailed description of how the player piano worked.
  3. The rolls were actually made by QRS, which is still in business today as the last maker of piano rolls.  This section is going to be compressed a bit, but you can read a longer version of the story of White-Smith v. Apollo at pp. 31-33 of my article Common-Law Copyright.

Fred Waring and the Pennsylvanian Litigation

Fred Waring and his allies launched a number of lawsuits in the 1930s to prevent radio stations from playing their record; this post presents scans of three such case files, including filings, evidence, transcripts, and legal briefs.  Read the rest to learn more!

Continue reading “Fred Waring and the Pennsylvanian Litigation”

Performance Rights at Common Law in 1880s San Francisco

As I’ve mentioned a few times on this blog, and will mention many more times, I currently have an article going through the editing process at the University of Cincinnati Law Review, which attempts to be a systematic study of common-law copyright, both generally and as applied to sound recordings, with a specific focus on performance rights.  This is part of a series of posts where I focus on specific cases/examples from that paper, and share some of the primary source documents.

In this post I will discuss two suits against the owners of the Tivoli Opera House in San Francisco for infringement of their common-law copyright by performing unpublished light opera (aka operetta) without a license. The cases are from the mid-1880s, which might seem like deep esoterica, but in fact I think they offer unique insight into the contemporary common-law copyright cases currently ongoing, in this case specifically the Flo & Eddie v. Pandora case currently being briefed before the California Supreme Court.  This is because, as I’ll explain more below, the 1880s and early 1890s offer a unique window into the question of whether a performance right exists at common law.  This is because federal law did not include performance rights for music at the time, but courts essentially universally found that common law copyright, which only protects unpublished works, did offer an exclusive performance right.  As a result, (a) questions of common-law copyright and its scope became especially important at this time, and (b) it strongly suggests that common-law copyright does not obey the limitations on performance rights that federal law does.

As the WPA Guide to San Francisco explains,

No American Theater did so much to popularize opera as the Tivoli, best remembered of all of San Francisco’s theaters, which Joe Kreling opened as a Beer Garden in 1875, with a 10-piece Orchestra and Tyrolean singers. Rebuilt in 1879, it became the Tivoli Opera House. Its career began happily with Gilbert & Sullivan’s Pinafore, which ran for 84 nights. For 26 years thereafter it gave 12 months of Opera each year, never closing its doors, except when it was being rebuilt in 1904: a record in the history of American Theater. For eight months of the year light opera – Gilbert and Sullivan, Offenbach, Van Suppe, Lecoq- was performed, and for 4 months, grand opera, principally French and Italian occasionally Wagner. From the Tivoli chorus rose Alice Nielsen, the celebrated prima donna.

Unmentioned in this excerpt is whether the Tivoli had the rights to perform any of these works.  The situation of performance rights as of the 1880s was a particularly complicated one under the federal statute.  There was a performance right for drama under a 1856 Act, codified into the 1870 revision of the copyright law, but it did not expressly include music (music had been added to the copyright act in 1831, but that act included no performance rights whatsoever).  The question of whether the act creating a performance right for dramatic works included music remained open until 1885, when the Circuit Court in New York conclusively rejected such an argument in The Mikado Case, about the Gilbert & Sullivan operetta.

In truth, though, whether or not the federal act included a performance right for music mattered little, since almost all composers were based out of Europe, not the United States, and foreigners were not protected by federal law at all until 1891 anyway (Gilbert & Sullivan had concocted an extensive scheme to get an American copyright, which I discuss much more in an article).  Accordingly, given that federal law did not protect them – both because they would not have a performance right, and because even if they did, they could not get an American copyright, European opera composers hoping for recompense for their labor in the American market were forced to rely on common-law copyright.

Into this gap stepped Leo Goldmark, who in the 1880s took on a role somewhat similar to that which Flo & Eddie have taken on in this decade – advocating for performance rights at common law.  Leo Goldmark is mostly best known today for his family members than his own legacy,1 but his own career was focused on the law, which he took up in the 1870s after emigrating to America.  Around 1880, with both musical training himself and connections to major composers, Goldmark began a national campaign of bringing lawsuits against various opera companies, accusing them of infringing the common-law rights of the unpublished parts of operettas.

The unpublished aspect was always a bit complicated, since for most of these operas the actual songs had been published in piano/songbook reduction.  However, Goldmark premised his arguments on the unpublished parts of the opera – the unsung dialogue, the stage direction/choreography, and the orchestration.  Courts across the country showed no resistance to this argument, liberally handing out injunctions. By the time Leo Goldmark brought suit against the Krelings in September of 1885, the case file reveals that he had already filed 26 other such lawsuits all across the country.  In this case he accused them of performing the operetta Nanon by Richard Genée without permission of the American rightsholders.

The US Circuit Court in San Francisco (the Circuit Court was a trial court until the 1890s) quickly found that Goldmark had a right to an injunction against performance of the operetta at common law.  The Court did not treat the matter lightly though, and indeed the presiding judge had initially denied the application for an injunction, but on a petition for rehearing invited the other federal judges from California to sit with him, and at that rehearing reversed his initial opinion and granted the injunction.

The matter continued to fester for a number of years, and in 1888 the Court,2 found that Nanon was protected by common law in the United States, because even assuming a authorized publication had occurred of some of the songs from the show, because other aspects of the operetta like the orchestration and interstitial dialogue had not been published.  The Court thus enjoined the Krelings from performing any part of Nanon that had not been published, but held that they could use their orchestration of the music for the opera, which they had created independently from the published piano score, and not copied from the unpublished original orchestration

The issue of orchestration and publication would be explored more in a second case brought against the Krelings by Thomas Henry French, manager of American operations for the theatrical licensing company (to this day) named after his father, Samuel French.  The lawsuit was commenced in early 1886 and was likely inspired by Goldmark’s similar suit, and the Courts in San Francisco seemed to treat it as being of a piece with the Goldmark suit, enjoining the Tivoli from performing the operetta Falka due to French’s common-law rights in the opera.

This litigation would run for many years, until the Circuit Court in 1894 decisively ruled that although a book of the songs from the original French version of the opera had been published, the complete orchestration and other aspects of the operetta had not been published, and had been infringed under common law.  Critical to that finding was one of the unpublished manuscript scores being found as part of the discovery process, and in turn included in the case file.

The decisions themselves are important reading for those seeking to understand common law copyright in California.  The case files, which I scanned from the National Archives Regional Division near San Francisco, are likewise fascinating.  For instance, the case file for French v. Kreling includes the transcript of a testimony of the in-house orchestrator of the Tivoli opera house, where he goes into great length about the then-common practice of having an individual such as himself on staff, tasked with orchestrating published piano scores into orchestral scores, to avoid paying royalties due to common law.  There are also copies of many of the opera libretti at issue in these cases included in the case files – I didn’t scan the entire volumes, but included scans of the cover pages should they be of interest to musical historians.

At least in the 1880s, it was pretty clear that California common law included performance rights for musical compositions, regardless of whether federal law did, a situation somewhat analagous to the situation today for terrestrial radio..  As the question of whether the codification of California common law includes a performance right is currently before the California Supreme Court, this seems like an important time to analyze.3

  1. His brother Carl Goldmark was a major composer at the time, best known today for his violin concerto and other orchestral pieces, but best known at the time for his opera The Queen of Sheba.  Leo Goldmark’s son Rubin Goldmark was himself a major composer during his life, although his compositions are mostly forgotten now and he is best remembered for teaching Aaron Copland and George Gershwin.
  2. in the interim California had been  split into two Districts, with the court in San Francisco becoming the Northern District
  3. Of course, the California Supreme Court is looking specifically at digital services that are required to pay performance royalties through SoundExchange, in this case Pandora, but the cases brought by ABS and others arguing that there is a performance right for terrestrial radio loom in the background.

The Promise and Perils of Protecting Sound Recordings with Common Law Copyright

It’s been too long since an update…and I had a couple of interesting old things to share. However, then the Northern District of Illinois granted a motion to dismiss in Sheridan v. iHeartmedia, and I needed to say a bit about it.  Some posts have been focusing on the fact that the Court found that performance rights do not exist at common law, but I think the Court actually went substantially further, and substantially abrogated civil protections for sound recordings made before 1972 in Illinois (a state criminal statute still exists for commercial record piracy).  In this post I will (hopefully) explain the doctrine, and why this case is a much bigger deal than is being commonly stated.  Finally, as always, I’ll include a tidbit from the archives.

As I’ve mentioned a number of times before, I have an article forthcoming on common-law copyright (edits are still being done by the Cincinnati Law Review).  In that piece I largely take as a given that common-law copyright protects sound recordings made before February 15, 1972, and then spend close to 100 pages exploring what exactly that means, focusing on the question of performance rights particularly and differences between statutory federal copyright law and common-law state copyright law.  And regarding New York and California, at least, that is a fairly safe presumption – given the (cryptic and outdated) California statute, coupled with caselaw from the New York Court of Appeals.  However, in other states the applicability of common-law copyright to pre-1972 sound recordings is suddenly appearing questionable, and I wanted to explore a bit what that means.

My article tells the story in much more detail, but as a result of a series of cases culminating in the Supreme Court’s 1908 decision in White-Smith v. Apollo, Courts and the Copyright Office came to understand that the 1909 Copyright Act did not protect mechanical reproductions of musical compositions (i.e. discs or piano rolls) as being protected by copyright law.  This began to be controversial in the 1930s, where big bands began to worry about radio stations using their recordings to compete with their (extremely lucrative) live radio programs.  Fred Waring and Paul Whiteman were the two primary litigants in these suits, and Waring found success, both at the Pennsylvania Supreme Court and at a Federal District Court in North Carolina (although North Carolina and several other states would abrogate these decisions by statute).  Whiteman on the other hand had his position rejected by the Second Circuit Court of Appeals, which would partially reverse itself in 1955 in the case of Capitol v. Mercury.

It is axiomatic that common law protected a creative work (under the pre-1978 laws) until it was published, but publication destroyed common-law copyright, leaving only the possibility of statutory copyright.  The arguments at issue in all these cases involved a fundamental question – is a sound recording that is commercially sold “published” within the meaning of copyright law?1  If publication occurred then no rights exist at common law, but if publication did not occur despite the public sale of the phonorecord, then common-law rights remain.

The argument that the sale of phonorecords does not constitute a publication of the sound recording they contain is bipartite.  The first part is objective, and argues that selling a record is more akin to public performance (which is not publication) than public sale (which is), because the record is just a captured performance.  Because the American rule is that performance is not publication, therefore commercial sale of a record does not constitute a publication.  The other half is subjective, and notes that a publication is a dedication to the public, and that the bandleaders in question did not intend to dedicate their recordings to the public without any intellectual property protections – accordingly the records were not “published” and common-law protection remains.

In the 1960s piracy became a serious problem with the advent of prerecorded tapes, and state common law would prove insufficient as a remedy.  In 1971 sound recordings were brought within federal law, but this amendment applied only to sound recordings made February 15, or thereafter, of 1972 leaving state common-law copyright as the main source of legal protection for sound recordings made before that point against unauthorized exploitation .  Shortly thereafter the US Supreme Court confirmed that state-law protections for sound recordings older than 1972 were both Constitutional and not preempted by the federal statute.  A few decades passed, and the New York Court of Appeals once again affirmed that sound recordings from before 1972 remained unpublished in that state.

And that has remained the bedrock of a rich panoply of litigation in recent years over whether the common law right includes a performance rights. And at least in New York state that has resulted in a decision I took issue with that pre-1972 sound recordings lack a performance right.  However, as the issue comes before other states, Courts are showing skepticism of the underlying argument made by Waring & Whiteman, both because it’s a transparent (if possibly necessary) legal fiction and because it offers a convenient way to resolve these cases neatly.  And as mentioned whether there has been a publication that destroys common law copyright is a question of state law, so we possibly have fifty different standards for whether sale of a phonorecord constitutes publication of the sound recording it embodies – and most states have no caselaw on this specific question.

This leads us to the Sheridan decision which is the spur for this posting.  In concluding that the motion to dismiss on common-law grounds should be granted, the Court held that “There is no dispute that the Sheridans voluntarily sold their recordings. When they did so, the Sheridans lost their common law right to control the public performance of those recordings in Illinois (and pretty much everywhere else).”  This doesn’t leave the Sheridans without legal protection (48 out of 50 states, including Illinois, have criminal statutes aimed at commercial record piracy.  However, these statutes do not go beyond commercial copying and resale, and leave the putative owner of the recording at common law without any civil remedies in most cases.

And it’s not just the Illinois decision where a Court questions whether a sound recording is published or not – in the Flo & Eddie litigation in Florida the District Court questioned whether Florida protected sound recordings at all, before holding it did not need to reach the question.  At recent oral argument, the Justice of the Florida Supreme Court seemed mightily suspicious of the arguments regarding nonpublication, although one cannot infer too much from oral arguments.

What happens when a state’s highest court holds that sound recordings are not published?  Is federalization finally going to get the boost it needs from stakeholders?  Surely leaving such a situation in place would be unacceptable to the owners of the sound recording?  I’m curious to find out.

As promised, a tidbit from the archives.  The Whiteman v. RCA case has a fascinating file, at the New York location of the National Archives.  It includes extensive deposition testimony and more.  One thing that I’m not aware of having been circulated is the District Court’s findings of fact and conclusions of law, which are substantially more detailed than its published opinion.  Sadly I only have cell phone pictures of the Findings of Fact and Conclusions of Law (PDF 10 MB), but here it is.

I planned on having a whole separate section on whether the protection for pre-1972 sound recordings is really common-law at all – many commentators in the mid-20s century said no, including Nimmer.  But that’s really a matter of semantics, fun as those are, and this post is more than long enough already.

  1. One interesting (to me at least) question is whether this question of publication is a matter of state or federal law.  I go into this more in the paper, but I’m inclined to think that the question of whether a publication occurred to destroy common-law copyright (a “divestative” publication) is a question of state law, except a successful federal registration is one of the ways common-law copyright is destroyed.  On the other hand, whether sufficient publication occurred to have a valid registration under the terms of the 1909 copyright act (a so-called “investative publication”) is a question of federal law.  One nice benefit of this understanding is that it clarifies that the differentiation between investative and divestative publication is not an artificial legal construct – they are actually two different things.

ABS v. CBS – Why the 9th Circuit Should Correct the District Court’s Mistake Regarding Sound Recordings

Even more than most, this post is my opinion only, and reflects views and opinions that should only be imputed to me.  The gist: The 9th Circuit should reverse in ABS v. CBS, digital remasterings of sound recordings absolutely can be protected by copyright, but aren’t always and it requires factfinding, and a digital remastering does not de facto federalize a sound recording from before 1972 protected by state law.

UPDATE: The 9th Circuit has largely followed what I urge in this post.

As some of you may know, I have a fairly lengthy piece on the scope of common-law copyright for sound recordings   It’s available here, although it’s still a work in progress (the staff at the Cincinnati Law Review are currently doing edits, so pagination will change some).  If you want an audio version, you can also hear a version of my talk on the issue from the Library of Congress.

One nice thing about having this blog is that I don’t need to wait for that piece to come out, though, to explain how the decision of the US District Court for the Central District of California in ABS v. CBS is incorrect and demands reversal.  It misunderstands the basic ordering of authorship and derivative works, and I’d like to briefly explain why.  That decision is current being briefed before the 9th Circuit, and is being briefed (the Appellants’ brief is here; Appellees’ Answering Brief is here)

ABS and a host of other parties assert that they own the common-law copyrights in sound recordings made prior to February 15, 1972.  Under the current law, such older sound recordings are not protected by federal law, but may be protected by state law protections.   The preemption provisions of the copyright law contain a specific exception until 2067, so protection for all pre-1972 sound recordings will terminate then.  In practice, most states tend to follow the model of indefinite protection offered by New York under the doctrine of common-law copyright (the protection given at common law to unpublished works, under the legal fiction that sound recordings that have been commercially released are nonetheless unpublished), but the modern case law regarding whether common-law copyright includes a performance right (aka a broadcast right) is surprisingly sparse. One of the things I point out in my article is that if you cast a broader net there’s plenty of caselaw from the late nineteenth century, all of which agrees on a performance right at common law, but Courts thus far haven’t embraced this argument completely.  In response to this confusion the Copyright Office recommended federalizing protection for pre-1972 sound recordings, but that has not yet happened.

Earlier litigation brought by Flo & Eddie of the Turtles argued that digital radio services that would be required to pay a royalty under federal law were not doing so under state law, leading to the surprising determination by the New York Court of Appeals that no performance right exists for pre-1972 sound recordings, a decision whose ramifications have yet to fully play out.  However, that decision only applied to New York state in theory (how much deference other states will accord it remains unclear), so the lawsuits brought by ABS et al are going forward in a number of other states.  However, ABS made a broader claim than Flo & Eddie had, claiming that all terrestrial stations (ie regular radio) had to pay a royalty for playing their sound recordings, a requirement that does not exist at federal law.  CBS Radio, one of the largest station operators in the nation, was sued by ABS in the Central District of California.

The issue for the Court was that on one hand, the weight of precedent was that common-law seems to require a performance right in California (indeed, the same Court had just ruled that), and there’s no real principled way to create a separate rule for terrestrial radio as opposed to satellite radio under existing doctrine.1  However, there’s currently no requirement for paying royalties for plays of sound recordings on terrestrial radio, and there are concerns of administrability and uniformity from finding a common-law performance right on a state-by-state basis.

Facing long odds given the Court’s recent decision on performance rights at state law, CBS tried a clever move – they argued that they weren’t playing pre-1972 sound recordings at all, but were rather playing post-1972 sound recordings, which were protected by federal law – but had no performance rights for terrestrial radio.  The argument is that because the radio station was not playing vinyl records made before 1972, but were rather playing subsequent digital transfers, the relevant sound recordings were the digital transfers and not the originals.  As such, the case should be dismissed because all parties understood no cause of action existed under federal copyright law.

Somewhat implausibly, this succeeded and the Court granted summary judgment (the decision is available as a PDF here).  The case is currently nearly briefed before the 9th Circuit, as noted above.  There are two particular mistakes in the Court’s decision that I wanted to highlight.

Firstly, the Court looked at a number of sources, including the Compendium of U.S. Copyright Office Practices, Third Edition (the Copyright Office’s examining manual), and held that for every sound recording at issue (over 100), a derivative work had been created when it was remastered into a digital version.2  However, section 803.9 of that manual indicates that the following words are indicative of de minimis creativity where no sufficient authorship exists for an independent copyight: “Declicking, New format, Noise reduction, Reissue.”  In addition, “the term ‘remastering’ may refer to authorship that is mechanical or too minimal to be copyrightable.”  Put another way, a remastering absolutely can be independently copyrightable, but this is a fact-intensive question that cannot be easily resolved.  The District Court’s failure to engage in factfinding on the issue for each an every sound recording at issue is an easy ground for reversal.  However, there is a deeper problem with the District Court’s decision’s, one which moots the need for such a factfinding – even if a derivative work was created in the transfer to digital and radio stations are playing that derivative work, radio stations are still playing the underlying pre-1972 sound recording as well.

The RIAA’s Amicus Brief makes this point especially well – a derivative work only includes what is new – anything in the original work is protected by the copyright in the original work only.  This is the core holding the Supreme Court reached in its 1990 decision in Stewart v. Abend regarding the copyright in the film Rear Window.  Creating a derivative work like a digital remaster of an analog recording does not replace the protection for the underlying work.  This isn’t a statement of opinion, it’s black letter law, at 17 U.S.C. 103(b):

The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material.

The District Court ignored a core tenet of copyright law in concluding that performance of a derivative work in a pre-1972 sound recording is only performing that derivative work, and not the original as well.

Having spent much of the recent year thinking about common-law copyright, I have devised an alternative argument along the lines of the CBS argument, one which I think avoids this pitfall.  I’ve included it below the jump, but be warned that I don’t think it actually works (especially in California) – and I’ll explain why too.  It’s more a conceptual exploration of how common-law copyright plays out differently from statutory copyright.

Continue reading “ABS v. CBS – Why the 9th Circuit Should Correct the District Court’s Mistake Regarding Sound Recordings”

  1. California actually has a statute for common-law copyright, so it’s not actually common-law, but it’s generally understood to just be a codification, and it’s short on detail
  2. In theory the Compendium is only given Skidmore  deference by the Courts, meaning it is advisory but not binding.  However, in practice the Compendium is more than a series of arbitrary examining rules – the 3rd Edition of the Compendium was one of the triumphs of Maria Pallante’s tenure as Register, and represents a thorough attempt to reckon with the body of statutes and caselaw that govern copyrightable works to determine what the Copyright Office should and should not be registering for copyright.  In practice it is now the leading treatise on what copyright does and does not protect. in the United States

Movie Copyright Litigation from 1915: O’Neill v. General Film Co.

Today’s New York Times ran an article about the modernization of the Archives for New York County, and it reminded me of some research I did there for my draft article on common-law copyright.  Although I ended up not using it that much, I tracked down the files from a number of nonmusical common-law copyright cases, and this led me to the same New York County Municipal Archives, to look at the case file for O’Neill v. General Film Co., 171 App. Div. 854 (N.Y. App. Div. 1916).

The case was brought by James O’Neill, best known today as father of Eugene O’Neill, but an important actor of his day who owned the American common-law copyright rights to Charles Fechter’s English stage adaptation of the County of Monte Cristo.  He sued the General Film Company for distributing a film also based on the novel The Count of Monte Christo, which he alleged was also based on Fechter’s adaptation, and made substantially the same editorial and dramatic choices as Fechter.  1  O’Neill had been playing the lead role of Edmond Dantes for some 35 years by this point, to tremendous financial success, and in the same year the suit was originally brought (1912), he had starred in an authorized adaptation of The Count of Monte Christo.

Both sides hired prominent lawyers.  The plaintiff hired Dittenhoefer, Gerber & James, likely the leading theatrical law firm of its day – Judge A.J. Dittenhoefer had been a leading theater lawyer for decades at this point.2.  The defendant hired Nathan Burkan, a rising star in the legal world who only a few years later (and before the appeal was decided) would help found ASCAP.

At trial, the Court took testimony and ruled in favor of the plaintiff O’Neill, holding that the motion picture at issue infringed his rights in the the Fechter play at common law.  On appeal, the Court had no difficulty affirming the trial court on the count of copying, but found the question of chain of title and publication more pressing.  On the question of whether O’Neill truly had valid title to the common-law rights in the play the Court was equivocal, finding the evidence scanty, but ultimately affirmed the trial Court and held that he had produced sufficient evidence to bring the case and create a rebuttal presumption of ownership.  The Court had the most difficulty with publication – they agreed that performance of the play or taking photos of the production did not constitute a divestative publication that would destroy common-law rights, which only made sense following existing NY precedents and the US Supreme Court’s recent decision in Ferris v. Frohman.  However, O’Neill had signed a contract several weeks earlier with the Famous Players Film Co,3 and the Court was concerned that this might have been a divstative publication of the unpublished play.  In the end, the Appellate Division held that the motion picture rights to any part of the unpublished play that were used in the authorized motion picture were deemed published, and thus the common-law rights had been lost.  However, O’Neill retained the common-law film rights to whatever parts of Fechter’s play had not been used in the motion picture.

The printed record of the case on appeal, which I scanned at The New York State Library in Albany, proved much more manageable than the original handwritten records of the case at The New York County Archives.  It contains a transcript of the testimony at trial which includes extensive documentation of theater practices for common-law copyright, by the plaintiff and others.4   The appellate briefs of the parties are also included, laying out the issue of common-law copyright as it was understood as of 1915.  However, not everything from the records in the New York County Archives is reproduced in the printed appellate record.  Notably, the New York County Archives has what appears to be a complete copy of Fechter’s dramatization, dated 1868.  Fechter’s drama has been reprinted several times, although not recently, and in differing versions.  It might be of interest to literary scholars.  In addition, the case file included a number of advertisements as exhibits; I’ve included them after the jump.

Continue reading “Movie Copyright Litigation from 1915: O’Neill v. General Film Co.”

  1. The film was not actually made by General Film, but rather by the Selig Polyscope Company in Chicago.  General Film was the distribution company of the Edison Trust.
  2. Dittenhoefer is best-remembered today for his association with Abraham Lincoln
  3. Famous Players later merged into what would become Paramount
  4. The testimony begins at page 61

Why The NY Court of Appeals Was Wrong Regarding Flo & Eddie

The New York (State) Court of Appeals (“COA”) recently issued an opinion on the question that had been certified to them from the Federal Second Circuit Court of Appeals, where the COA was asked to state whether New York common-law provides a right of public performance to sound recordings, and if it does, what the contours of that right are.  The case is captioned Flo & Eddie v. SiriusXM, and you can get the whole backstory here.

As folks who have been following my scholarship may know, I’ve been working on a extensive article on the problem of common-law copyright as applied to sound recordings in the 21st century for a few years now.  Due to a series of legal and legislative decisions in the first decade of the twentieth century, sound recordings had no protection under federal copyright law until a 1971 amendment, which applied only to sound recordings made February 15, or thereafter, leaving state common-law copyright as the main source of legal protection for sound recordings against unauthorized exploitation until that point.  Common-law copyright is limited to unpublished works, but a consensus emerged among the courts that a sound recording is unpublished for purposes of common-law copyright no matter how many copies of that recording are sold.

I completed a draft a few months ago (forthcoming and currently being edited by the University of Cincinnati Law Review – note that the draft online is still a bit rough), where I examined the question of whether common-law copyright includes an exclusive right to perform a work publicly, and whether that right is dependent on such a right existing at federal law.  I chose the 1880s as a period to study in detail, because it offers the most closely analogous period to the current situation in terms of the law – musical compositions did not have a performance right under federal law until 1897, just as sound recordings only have a limited performance right under federal law today.  I was curious as to whether courts found that unpublished musical works nonetheless had a performance right at common law before the 1897 federal amendment.  What I found was unanimous – a surprising number of both reported decisions and unreported dispositions where courts found that common-law provided a performance right to musical compositions, regardless of what federal law provided.

This result was even more remarkable considering that many of these works (mostly light opera) were by non-American composers, who were not eligible for any copyright protection whatsoever in the United States until 1891, and yet American Courts were not only protecting their unpublished works at common law, they were extending performance rights to their works that published musical works that had been registered for copyright did not receive.

Following that inquiry I then launched a broader study of common-law copyright more generally, and discovered that although common-law copyright often acts similarly to statutory copyright, it is different in many pertinent ways, all of which provide broader protection.  For instance, common-law copyright likely provides moral rights of attribution and integrity, which federal law only provides in a limited way under the Visual Artists Rights Act.

I was therefore disappointed to read the COA opinion.  Briefly, four Justices of the New York Court of Appeals held that New York common law does not provide a right of public performance to sound recordings.  One justice concurred, but would have held that there may be a performance right at common-law regarding “on demand” services like Spotify.  Two justices dissented, stating they would have recognized a performance right in sound recordings at common-law.

The majority opinion of the Court of Appeals speaks for itself, but the crux of the opinion is the question as to why this issue is only being raised in 2016, when the issue of performance rights in sound recordings could have been raised for almost a century.  However, as the opinion tacitly acknowledges, rightsholders did attempt to assert performance rights at common law during the latter part of the 1930s through 1940, when performers and radio were locked in a bitter struggle over the use of recordings instead of live musicians for radio broadcast.  In 1937 the Pennsylvania Supreme Court enjoined a radio station performing sound recordings created by the plaintiff.  However, three years later the Second Circuit Court of Appeals, in an opinion in RCA v. Whiteman by the famed Judge Learned Hand, held that any common-law rights in the sound recording ended when it was sold.

However, fifteen years later in 1955, the Second Circuit overruled Whiteman, and held that sale of records does not constitute a publication that destroys a work’s rights at common-law in the decision of Capitol v. Mercury.   The New York Court of Appeals unambiguously affirmed this holding regarding publication a half-century later, in 2005’s Capitol v. Naxos decision.

When the question of whether common law protected sound recordings from unauthorized broadcast came before courts in the 1930s, no court held that a work was unpublished and yet lacked a performance right – either a sound recording was unpublished and thus protected from unauthorized broadcast, or it was published and could be broadcast freely, assuming royalties were paid to the composer under federal law.1

To put this history another way, when recording artists were opposed to their records being played on radio, they were active litigants to preserve these rights, until a 1940 ruling called these rights into question.  By the time that ruling was reversed in 1955, recording artists were desperate to get radio airplay, and the idea of suing radio stations for playing music without paying additional royalties in the era of payola was simply asinine.  It was only when Sirius and Pandora stopped paying royalties on pre-1972 sound recordings circa 2012 that the lawsuits began.  Common-law copyright has always had public performance as part of its bundle of rights, regardless of what federal law provides, and failure to litigate when it would be contrary to good business does not destroy that right.

In search of support for its conclusion that common law does not include a performance right for sound recordings, the Court of Appeals attempts to argue that Whiteman remains good law regarding performance rights, and was only modified by Mercury to protect reproduction of records.  However this attempted hybrid of these cases requires a willful blindness of what Whiteman actually says.  The Whiteman case analyzes common law rights from the perspective of whether or not they exist, and having found that the commercial sale of the records constituted publication, determined that no rights existed at common law.  The Whiteman case makes no effort to split up the bundle of rights contained in common-law copyright, and makes no indication that performance might be a different question from reproduction at common law.  2  As the New York Court of Appeals expressly rejected that approach to publication in Naxos, following its rejection by the Second Circuit a half century earlier, it is unclear what relevance Whiteman has anymore.

Indeed, the majority opinion of the COA is unprecedented – for the first time I have seen a Court has found a major limitation to the protections granted by common-law copyright.  Looking at the underlying nature of common-law copyright, such a holding is surprising.  As a doctrine focused on pre-publication protection for works, the idea that they only have protection against duplication makes precious little sense.  As we have seen many times, playing a leaked rough cut of a song on the radio on the radio is deeply problematic.  Admittedly, the idea that sound recordings are not published even after they have been sold commercially is the most problematic aspect of the common-law copyright doctrine for sound recordings, but that is not at issue in this case, because the COA has unambiguously recognized this legal fiction.  Legally, playing a commercially sold pre-1972 sound recording on Sirius is no different from playing a studio bootleg – either way you’re infringing rights absent an agreement with the owner of the sound recording common law rights.

One other thing, acknowledged by the COA, is that this decision creates a split with Pennsylvania, whose common law has recognized a common-law performance right since 1937.3  It is difficult to predict what complications will arise from this, but the thought of fifty states with different rules for public performance of sound recordings makes the federalization of pre-1972 sound recordings recommended by the Copyright Office sound even more tempting.

This is a complicated issue, and I’ve simplified a number of things (explained at greater length in the article draft) for purposes of writing a readable blog post.  If people would like clarification on anything, I’d be happy to provide it in the comments.

  1. In addition to the Pennsylvania and New York cases, a North Carolina case from 1939 held substantially along the lines of the Pennsylvania case.
  2.  Whiteman does discuss whether language printed on the record that it may not be played on the radio is effective as an equitable servitude, but this is a different question from whether common-law copyright limits play on the radio, which would be effective regardless of whether such language was printed on the record
  3. I’ve wondered why Flo & Eddie didn’t attempt to find a plaintiff to bring suit in Pennsylvania – it would have been the most direct option.