On November 14, 2014, the U.S. District Court for the Southern District of New York ruled that the owners of sound recordings made prior to 1972 have performance rights to their songs and found that satellite radio network Sirius XM had infringed copyrights held by two members of the 1960s band The Turtles.
In Flo & Eddie, Inc. v. Sirius XM Radio, Inc., et al (1-13-cv-05784), Sirius argued in its motion for summary judgment that performance rights for recordings made before 1972 are not covered by New York law and that its broadcasting of those recordings constituted fair use. (Federal copyright law does not extend to recordings made prior to Feb. 15, 1972, the enactment date of the Sound Recording Act of 1971.)
The Manhattan district court rejected Sirius’ argument and denied its motion telling Sirius to provide the court with any factual disputes that would require a trial by early December. Absent such facts, liability could be imposed and the court would move forward with determining damages.
The New York ruling was aligned with two previous rulings in which a California district court and a Los Angeles Superior Court both found that Sirius had infringed on The Turtles copyrights. A similar case is pending in Florida.
Following the Manhattan district court ruling, Sirius changed legal counsel and, according to a news report, has asked the district court to reconsider its ruling or certify the issue for interlocutory appeal to the U.S. Court of Appeals for the Second Circuit.
As basis for reconsideration, Sirius is arguing that the court did not have the opportunity to consider a 1940 Second Circuit ruling that it says is squarely on point: RCA Mfg. Co. v. Whiteman, 114 F.2d 86 (2d Cir. 1940), where bandleader Paul Whiteman sued RCA over radio broadcasts of his recorded music. In an opinion for the court authored by Judge Learned Hand, the Second Circuit found for the radio industry, saying that common law copyright protections extend only to recordings, not performances or broadcasts.
In a motion filed on December 1, 2014, Sirius argued that, “Because Whiteman was not addressed in the summary judgment briefing, the court did not have the benefit of considering . . . the only case to squarely address the existence of a common law performance right in pre-1972 sound recordings. Absent reconsideration, the court’s ruling would eviscerate Whiteman, upset the longstanding consensus that there are no state performance rights in sound recordings, and create significant and far-reaching policy problems.”
On January 15, 2015, U.S. District Judge Colleen McMahon rejected Sirius’ arguments that Flo & Eddie Inc., did not own copyrights to songs recording by The Turtles and that Sirius had an “implied” license to air the songs. The judge did, however, agree with Sirius that Flo & Eddie, Inc., could only recover damages for the three years prior to its filing suit on August 16, 2013 rather than the six years she had previously suggested.
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