The End of Oldies? (Or, Why You Might Not Hear Bob Dylan on Internet Radio Until 2067)

Today’s post looks at the intersection of new technology and our somewhat antique laws.  It has recently been reported that major music labels (Sony, Universal, Warner Music, and ABKCO) filed suit against the internet music service Pandora on April 17^th, alleging copyright infringement for essentially “playing old songs without licenses.”  What makes this case most interesting is that these multi-national music industry conglomerates are suing the California-based Pandora in New York State Supreme Court in Manhattan (for those not familiar with our special court-naming preferences in NY, that’s the regular civil trial court).  Without getting into any jurisdictional issues, I wondered why these plaintiffs would sue in state court for what is a predominantly federal cause of action (copyrights).

The answer lies in a strange quirk of history, most clearly articulated by the New York State Court of Appeals (that’s our highest court … I know, it’s confusing), in their answer of certified questions in Capitol Records, Inc. v. Naxos of Am., Inc., 4 N.Y.3d 540, 830 N.E.2d 250 (2005).  Under federal law (17U.S.C. §302) copyrights generally last for the life of the author/creator, plus 70 years.  However, the U.S. Copyright law never squarely addressed musical recordings, which remained unprotected on the federal level until amendments were made to the Copyright Act in 1972.   At the same time, most states had a body of common law rules concerning copyright in creative works (including musical recordings) which were often more expansive than the federal rights, and allowed a nearly unlimited term of protection.  During the drafting of the 1972 amendments to the Copyright Act, the House and Senate reached a compromise regarding protection of pre-1972 musical recordings: existing state common-law copyright protection for them would not be preempted by the new federal statute until February 15, 2067.  See Capitol Records, Inc. v. Naxos of Am., Inc., 4 N.Y.3d 540, 555-56, 830 N.E.2d 250, 260-61 (2005).  Thus, “[p]ursuant to 17 U.S.C. § 301(c), ‘[f]ederal copyright law does not cover sound recordings made prior to [February 15,] 1972. Rather, these recordings are protected by state common law on copyright infringement.’”  Capitol Records, LLC v. Harrison Greenwich, LLC, 652249/2012, 2014 WL 1492299 (N.Y. Sup. Ct. Apr. 14, 2014). 

But don’t federal statutes concerning something usually preclude inconsistent state law?  How can a state like New York say that, under our common law, all music recordings are entitled to permanent, perpetual copyright protection, when the federal law may protect the same recording for as little as 71 years?

Shortly after passage of the Copyright Act amendments, the U.S. Supreme Court addressed these concerns in Goldstein v. California, 412 U.S. 546, 93 S.Ct. 2303, 37 L.Ed.2d 163 (1973). The defendant in that case was convicted of criminal music piracy based on a California copyright law, which he challenged on the grounds that it conflicted with the U.S. Constitution’s “Copyright Clause, the Supremacy Clause and the federal Copyright Act by ‘establish[ing] a state copyright of unlimited duration.’” Capitol Records, Inc. v. Naxos of Am., Inc., 4 N.Y.3d 540, 556-57, 830 N.E.2d 250, 261 (2005) (quoting Goldstein).  The majority on the Court rejected the defendant's arguments, noting that

“[a]lthough the Copyright Clause ... recognizes the potential benefits of a national system, it does not indicate that … state legislation is, in all cases, unnecessary or precluded,” … the states did not relinquish all power to provide copyright protection … the states were free to act with regard to sound recordings precisely because Congress had not, and, in the absence of conflict between federal and state law, the Supremacy Clause was not a barrier to a state's provision of copyright protection to a work not covered under federal copyright law.

Capitol Records, Inc. v. Naxos of Am., Inc., 4 N.Y.3d 540, 556-57, 830 N.E.2d 250, 261 (2005) (quoting Goldstein).  Therefore, turning back to New York, the federal Copyright Act precludes and supercedes New York common-law protection of sound recordings only in two respects.

First, [New York] common law does not apply to any sound recording fixed, within the meaning of the federal act, after February 15, 1972, because recordings made after that date are eligible for federal statutory copyright protection. Second, state common-law copyright protection is no longer perpetual for sound recordings not covered by the federal act (those fixed before February 15, 1972), because the federal act mandates that any state common-law rights will cease on February 15, 2067.  The musical recordings … created before February 15, 1972, are therefore entitled to copyright protection under New York common law until the effective date of federal preemption—February 15, 2067.

Capitol Records, Inc. v. Naxos of Am., Inc., 4 N.Y.3d 540, 559-60, 830 N.E.2d 250, 263 (2005).

Goodnight, Irene

Therefore, if Sony and the other labels want to extract licensing fees from Pandora for the “performance” of pre-1972 musical recordings (or prohibit altogether Pandora’s playing them), it appears that New York’s common law of copyright might be their best shot.  I haven’t had the opportunity to review the actual text of the complaint in this case, but my gut says that Pandora (and those of us who enjoy online listening to anything recorded before Houses of the Holy) might have a problem.  Under New York’s common law, proof of copyright infringement only requires: (1) the existence of a valid copyright; and (2) unauthorized reproduction of the work protected by the copyright. Capitol Records, LLC v. Harrison Greenwich, LLC, 652249/2012, 2014 WL 1492299 (N.Y. Sup. Ct. Apr. 14, 2014).  As recently articulated by the federal Southern District of New York, “[c]ourts have consistently held that the unauthorized duplication of digital music files over the Internet infringes a copyright owner's exclusive right to reproduce.” Capitol Records, LLC v. ReDigi Inc., 934 F.Supp.2d 640, 648 (SDNY 2013).  Additionally, Pandora most likely won’t be able to argue that "unpopular" older music (perhaps some obscure Leadbelly tunes?) are exempt from New York’s protection either: “the ability to enforce copyright protections provided by New York common law is not diminished due to the size of the market and, therefore, the popularity of a product does not affect a state common-law copyright infringement claim.” Capitol Records, Inc. v. Naxos of Am., Inc., 4 N.Y.3d 540, 564, 830 N.E.2d 250, 266 (2005).

It will be interesting to see how this case turns out.  Most likely, I foresee it resulting in an out-of-court settlement involving additional licensing fees on Pandora for use of pre-1972 songs.  But if nothing else, the filing of this suit in New York illustrates the creativity and tenacity of the music industry in monetizing their copyrightable works – via any available legal means.