Flo and Eddie’s Lawsuit Underscores Challenges of pre-1972 Sound Recordings

the Turtles have filed a class action complaint against SiriusXM Radio for its failure to pay royalties to artists for broadcast of sound recordings made before February 15, 1972.  Flo & Eddie v. SiriusXM complaint. This action might have huge implications for recordings artists, record labels, broadcasters and the listening public.  A background in the law of sound recordings is necessary to understand why they had not been receiving royalties as recording artists, and why they brought this action in state court when copyright actions are always brought in federal court. A recorded song will generally have at least two copyrights: the composition (or “musical work”) and the sound recording.  The authors of the composition are the composers.  The authors of the sound recording are the performers, and often the producers.  Rights in the sound recordings are typically assigned by contract to a record company. However, sound recordings did not receive any protection under the United States Copyright Act until February 15, 1972.  Until then, the copyrights to sound recordings were presumed to be covered only by state common law copyright, if at all.  The Copyright Act of 1976 (which took effect on January 1, 1978) clarified that state copyright laws were preempted by federal law, and that it is why we never see copyright actions in state courts. With one notable exception – courts have found that protection for sound recordings made prior to February 15, 1972 are not preempted by federal law, thus leaving open the possibility of actions under state common-law regimes such as “misappropriation.” In Capital Records v. Naxos of America, New York State’s highest court held that authors of sound recordings made prior to February 15, 1972 could bring actions for common law copyright infringement under New York State law. Thus, when Yoko Ono sought to prevent the movie “Expelled: No Intelligence Alllowed” from using a segment of John Lennon’s “Imagine,” there were two separate lawsuits.  EMI Music, which owned the rights to Lennon’s sound recording, sued in New York State court.  Yoko Ono, the heir to Lennon’s composition rights, brought a federal action.  (In both actions, courts found that the use of “Imagine” was protected fair use.) There are more complications to recognize.  For one, the performance right for sound recordings applies only to digital transmissions.   No royalties are paid to recording artists for terrestrial radio.  Royalties are paid only for the compositions.  So when Natalie Imbruglia’s “Torn” was played millions of times on FM radio, she didn’t receive a cent for the airplay – it all went the band Ednaswap, who wrote the song and who was apparently unhappy with her cover (cover songs are subject to mechanical licenses under the Copyright Act – the original author receives a statutory fee and cannot withhold the license). So what does this mean for the Turtles and the other artists who released music before 1972?  A healthy amount of complicated and resolved legal issues.   For instance, a New York State appellate court recently held that the safe harbor of the Digital Millennium Copyright Act does not apply to pre-1972 sound recordings.  Thus, a website that relies on the DMCA to broadcast user-uploaded music may still run the risk of liability for infringement of sound recordings even if it fully complies with the federal safe harbor requirements. Moreover, state common-law protection of sound recordings can be subject to a patchwork of various state laws. Because recordings made prior to February 15, 1972 are not protected under the Copyright Act, courts could apply precedent and principles of state law.  But because all other copyright law has been preempted, state courts do not have established copyright law at all.  Will these courts adopt the principles of the United States Copyright Act when addressing claims of misappropriation of pre-1972 sound recordings? For example, it is clear under the Copyright Act that the copyright in sound recordings does not provide an infringement action against independently created versions of the recording.  In other words, so long as a band obtains a license to a composition (which can be obtained by statute under the Copyright Act), the band can record its own version and sound exactly like another recording without violating a copyright in the sound recording.   But would a state court applying its own law adhere to the same rule, or consider a “substantial similarity” standard?  If a singer can record her own version of “Respect” and sound exactly like Aretha Franklin, would a state court permit a misappropriation claim by Franklin and her record company? For that matter, would a state court find that an FM/AM radio station is misappropriating pre-1972 sound recordings by not paying royalties? We will be following this case closely. As a band, the Turtles are best known for the infectious 1967 hit “Happy Together.”  As litigants, they are best known for their pursuit against De La Soul and producer Prince Paul for an unauthorized sample of  “You Showed Me ”  on the song “Transmitting Live From Mars” on the 3 Feet High and Rising album.  The Turtles’ actions marked the end of free-for-all samples on hip-hop recordings (at least in the mainstream), and motivated artists to clear samples and obtain licenses from composers and record labels. Mark H. Jaffe is a partner at Tor Ekeland, P.C.  He has written about authorship in sound recordings for the Journal of the Copyright Society of U.S.A. and moderated a webinar on rights of recording artists to terminate their transfers of copyrights.  He can be reached at mark@torekeland.com. For informational purposes only.  Not legal advice.]]]]> ]]>

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