Copyright Protection for Public Performances of Pre-1972 Music
A 2021 decision by the Ninth U.S. Circuit Court of Appeals has renewed focus on the scope and extent of copyright protection for public performances of pre-1972 sound recordings. The issue decided by the three-judge panel for the Ninth Circuit was whether California state copyright law protects rights to public performances of music created before 1972. The appeal panel ruled that while California copyright law protected musical compositions, it did not afford protection to their public performances.
As a form of intellectual property, copyright protects original works of authorship, including literary, musical, and dramatic, as well as artistic, works, such as writings, films, songs, architecture, and software.1 Al – though it protects original works, copyright law explicitly excludes protection for “any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied.”2 Likewise, copyright protection does not extend to words and short phrases, such as names, titles, and slogans, which are deemed to contain an insufficient amount of authorship.3 Importantly, although copyright does not protect ideas, it can protect expression of ideas.4
Copyright attaches to the original work upon its creation. Although not required for ownership purposes, registration is required to bring an infringement suit. In that regard, copyright registration does provide its owner with several advantages, including presumption of validity and ownership, as well as eligibility for statutory damages and attorney’s fees in an infringement suit.5 To obtain the benefits of copyright registration in the context of an infringement litigation, the registration needs to have occurred prior to the infringing act. How ever, the law provides a “safe harbor” under which registration is effective against an earlier infringement as long as it is done within three months of publication of the work.6
Although perhaps counterintuitive, there are key differences as to how copyright law treats musical compositions and musical sound recordings. By way of review, a musical composition refers to notes, melodies, and lyrics that make up a song and are frequently notated by musical symbols on sheet music.7 A sound recording, on the other hand, is a recording of the written music on a medium from which the sound can be reproduced, such as digital streaming or CD.8 The sound recording copyright holder may include the recording artist, background musicians, and the record label that helps to produce the recording.9
Because of the different treatments copyright law accords musical compositions and sound recordings, duration of copyright protection can be very different between the two, resulting in instances in which the composition is in the public domain and the recording is not. For example, musical works registered before January 1, 1924, are now in the public domain, and thus free to use by all, while the corresponding sound recording for the same works are not.10
Historical Antecedents
In the United States, copyright law dates back to the colonial days, which utilized British copyright law in the form of common law. Following independence, copyright protection was included in the U.S. Constitution, which grants Congress the power “to promote the Progress of Science and useful Arts by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”11
With the advent of federal copyright law, copyright became an amalgamation of state common law, inherited from colonial days and federal laws.12 The distinction between copyright protection at the federal and state levels was addressed by the U.S. Supreme Court in 1837.13 The plaintiff in Wheaton v. Peters sued under federal statutory and common-law copyright claims to prevent others from republishing his books. The Supreme Court struck Wheaton’s common-law copyright claim, reasoning that in the absence of federal common law under the U.S. constitutional system, claims based on common-law copyright protection must be sought by reference to the law of the state in which the controversy arose.14 Wheaton thus established the principle that the act of publication of a work divested an owner of his or her common law copyrights in the work.15
The question of scope and extent of copyright protection and, specifically, whether such protection extended beyond words, came to the fore on the subject of music in a case before the U.S. Supreme Court in 1908.16 The issue presented was whether the federal Copyright Act covered perforated rolls of music used in player pianos. Although the Court noted that federal statute did include “musical composition,” within its scope, it held that only works that could be “see[n] and read” could be filed with the Library of Congress, and thus be eligible to obtain federal copyright protection.17 The decision reasoned that since the music rolls were not capable of being read by a person, federal statutory copyright protection did not extend to them.18 The following year, in 1909, Congress enacted a revised federal copyright statute, which still did not extend performance protections to sound recordings, 19 leaving any protection for such works to state law.20
The next iteration in federal copyright law occurred in 1971 in the form of protection against music piracy. The advancement of copying technology in the 1960s had led to a corresponding rise in music piracy. In response, in 1971, Congress amended the 1909 copyright statute to include a prohibition on “unauthorized duplication and piracy of sound recordings.”21 While the 1971 amendment recognized sound recordings as “writings” deserving copyright protection, sound recordings were not granted the full array of exclusive rights afforded other authors. In particular, the 1971 amendment was only effective on a prospective basis, with the result that post-February 15, 1972, sound recordings were given protection from piracy, while protection of pre-1972 sound recordings continued to be left to states.22 Notably, although the 1971 amendment addressed unauthorized reproduction of sound recordings, it did not impose any restrictions on their commercial use.23
In 1976, Congress passed a comprehensive federal copyright law with the aim of bringing uniformity and predictability to copyright laws by preempting competing state laws.24 However, the 1976 law still did not extend copyright protection to sound recordings recorded prior to February 15, 1972.25 In addition, the act continued to exclude, and in fact explicitly rejected, a public performance right for sound recordings.26
In 1995, The federal copyright law underwent another change with the enactment of the Digital Performance Right in Sound Recordings Act (DPRA). The DPRA specifically recognized performance right in the form of digital audio transmission of post-1972 recordings.27 However, the DPRA did not address public performance protection for pre-1972 musical works.28
The year 2018 witnessed enactment of yet another new copyright law known as the Music Modernization Act (MMA). The MMA finally extended federal copyright protections to the prospective digital transmission of pre-1972 recordings.29 This act extends remedies for copyright infringement to owners of pre-1972 sound recordings for 95 years after the year of first publication of the recording, subject to certain additional periods based on when the sound recording was first published.
For recordings first published before 1923, the additional time period ended on December 31, 2021. Thus, all such pre-1923 works are now in the public domain. For recordings first published between 1923 and 1946, the additional time period is five years after the general 95-year term. For recordings first published in the period 1947-1956, the additional time period is 15 years after the general 95-year term. For all remaining recordings first fixed prior to February 15, 1972, the additional transition period will expire on February 15, 2067.
California Copyright Law
California law has long provided copyright protection for original works, with the first such law passed in 1872. The 1976 federal copyright law abrogated the distinction between published and unpublished works and sought to preempt competing state laws. In response, California amended its copyright law in 1982 to give effect to the relevant clauses of the 1976 Act. Under the 1982 amendments:
(a) (1) The author of any original work of authorship that is not fixed in any tangible medium of expression has an exclusive ownership in the representation or expression thereof as against all persons except one who originally and independently creates the same or similar work. A work shall be considered not fixed when it is not embodied in a tangible medium of expression or when its embodiment in a tangible medium of expression is not sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration, either directly or with the aid of a machine or device.
(2) The author of an original work of authorship consisting of a sound recording initially fixed prior to February 15, 1972, has an exclusive ownership therein until February 15, 2047, as against all persons except one who independently makes or duplicates another sound recording that does not directly or indirectly recapture the actual sounds fixed in such prior sound recording, but consists entirely of an independent fixation of other sounds, even though such sounds imitate or simulate the sounds contained in the prior sound recording.
(b) The inventor or proprietor of any invention or design, with or without delineation, or other graphical representation, has an exclusive ownership therein, and in the representation or expression thereof, which continues so long as the invention or design and the representations or expressions thereof made by him remain in his possession.30 Relevant to the present discussion is the provision of the amended California law that provides: “The author of an original work of authorship consisting of a sound recording fixed prior to February 15, 1972, has an exclusive ownership therein until February 15, 2047….”31
As noted, in 1976, Congress amended the Copyright Act. Among many other changes, the amendments abolished and preempted the common law and most state laws with respect to copyrights. The act states, for example, that the exclusive rights with respect to original works of authorship shall be “governed exclusively by” the Copy right Act whether the works are published or unpublished. The act goes on to state that “no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State….”32 After the effective date of the 1976 amendments, old common law copyright protections were converted automatically to the new protections provided by the amended Copyright Act. Essentially, the distinction between published and unpublished works ceased being legally relevant for copyright purposes.
Despite the preemption provision of the 1976 Act, cases for copyright protection under state copyright law continue to survive in areas not covered by federal law. Examples provided by courts include: causes of action which commenced before January 1, 1978,33 claims for copyright in a “light show” that is sufficiently transitory to qualify for copyright protection under Civil Code Section 980,34 works not fixed in a tangible form such as choreography that has never been filmed or notated,35 an extemporaneous speech,36 original works of authorship communicated solely through conversations or live broadcasts,37 and a sketch or musical composition improvised or developed from memory and without being recorded or written down.38
Ninth Circuit Decision
By way of background, as described by the Ninth Circuit decision, over-the-air radio stations do not pay royalties for public performance of music. In contrast, digital and satellite radio broadcasters, such as Sirius XM are required to pay such royalties for broadcast of post-1972 music, and with the enactment of MMA, for pre-1972 music as well. The panel set forth the issue as “whether digital and satellite radio stations have a duty to pay public performance royalties for pre-1972 songs under state copyright law.”39
In 2013, Flo & Eddie, Inc., a company created by the founders of the 1960s popular music group “the Turtles” brought putative class in federal district court in California against satellite radio provider SiriusXM, seeking compensation under California state copyright law for Sirius’s unauthorized play of the band’s pre-1972 songs. The lawsuit alleged that California copyright law which, according to its language, provided copyright owners “exclusive ownership” of their pre-1972 songs, also included the right of public performance.40
The federal district court agreed and granted summary judgment in favor of Flo & Eddie, concluding that “[t]he plain meaning of having ‘exclusive ownership’ in a sound recording is having the right to use and possess the recording to the exclusion of others.” The decision pointed out that there is “nothing in that phrase to suggest that the legislature intended to exclude any right or use of the sound recording from the concept of ‘exclusive ownership.’”41
On appeal, in 2021, the Ninth Circuit Court of Appeal reversed.42 The Ninth Circuit panel found the historical meaning of the term “exclusive ownership” differed from the modern dictionary’s definitions of the term applied by the district court. In particular, the court of appeal noted that, as of 1872, no courts in the United States had recognized copyright protection in public performance of musical works. Accordingly, the court concluded that the term “exclusive ownership” in California’s
1872 copyright statute of pre-1972 sound recordings did not include a right of public performance but rather referred to “the owner’s common law copyright in an unpublished work to reproduce and sell copies of that work.”43
Industry Implications
The Ninth Circuit decision is considered a big victory for digital and satellite radio services because it saves them tens of millions of dollars in back royalty payments for playing pre-1972 musical works. In addition, the ruling was welcomed by broadcast radio owners because federal copyright law currently does not require broadcast radio to pay performance fees for any music played on over-the-air radio regardless of its recording date. In that regard, the Ninth Circuit panel noted that “While Flo & Eddie reaps royalties from the Turtles’ songs being played on the bigscreen and television, it does not receive performance royalties for airplay on AM/FM radio. Sound recording owners have no right to receive royalty for AM/FM airplay under federal law.”44
——————————————————————————————————————————————————————————————————————————————-
U.S. Copyright Office, Copyright in General,
.html (last accessed May 8, 2023) [Copyright in
General].
2 Works Not Protected by Copyright, Circular 33,
available at https://www.copyright.gov/circs/circ33
.pdf (last accessed May 8, 2023).
3 Id.
4 Id.
5 See Copyright in General, supra note 1.
6 17 U.S.C. §412.
7 University of Mich. Libr., Obtaining Copyright
Permissions, https://guides.lib.umich.edu/permissions/
music (last accessed May 8, 2023).
8 Id.
9 Id.
10 CIV. CODE §980(a)(2).
11 U.S. CONST. art. I, §8.
12 Id.
13 Wheaton v. Peters, 33 U.S. 591 (1834).
14 Id. at 658.
15 Capitol Records, Inc. v. Naxos of Am., Inc., 4
N.Y. 3d 540, 551, (2005).
16 White-Smith Music Publ. Co. v Apollo Co., 209
U.S. 1 (1908).
17 Id. at 17.
18 Capitol Records, 4 N.Y. 3d at 552.
19 Id.
20 Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 9 F.
4th 1167, 1171 (9th Cir. 2021).
21 Id. at 1170.
22 Capitol Records, 4 N.Y.3 d at 555-58 (2005).
23 L. James Juliano, Performers’ Rights under the
General Revision of Copyright Law, 28 CASE W.
RES. L. REV. 766 (1978), available at https://
scholarlycommons.law.case.edu/caselrev/vol28
/iss3/9
24 17 U.S.C. §§101 et seq.
25 17 U.S.C. §301(c).
26 17 U.S.C. §114(a).
27 Flo & Eddie, Inc., 9 F. 4th at 1170 (9th Cir.
2021).
28 17 U.S.C. §1401(b) (2018).
29 Flo & Eddie, Inc., 9 F. 4th at 1172.
30 CIV. CODE §980(a)-(b).
31 CIV. CODE §980(a)(2).
32 See 17 U.S.C. §301.
33 Klekas v. EMI Films, Inc., (1984) 150 Cal. App.
3d 1102, 1109.
34 Grand Gen. Accessories Mfg. v. United Pac.
Inds. Inc., No. CV 08-07078 DDP (VBKx), 2009
WL 10672038, at *6 (C.D. Cal., June 11, 2009).
35 Signorelli v. North Coast Brewing Co. Inc., No.
5:18-cv-02914-EJD, 2018 WL 5310807, at *4
(N.D. Cal., Oct. 25, 2018).
36 Id.
37 Id.
38 Id.
39 Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 9 F.
4th 1167, 1168 (9th Cir. 2021).
40 Id. at 1171.
41 Id.
42 Id. at 1167.
43 Id. at 1169.
44 Id.