No Right of Public Performance for Sound Recordings Under New York Common Law

Answering a question certified to it by the Second Circuit Court of Appeals, the New York Court of Appeals held in Flo & Eddie, Inc. v. Sirius XM Radio, Inc., that New York’s common law does not protect the right to publicly perform a sound recording. The plaintiff is a company formed by two former members of the “Turtles,” a band most famous for its 1967 hit, “Happy Together.” Federal Copyright law began to recognize limited protection for sound recordings in 1971: owners of sound recordings produced after February 15, 1972, were granted the exclusive right to reproduce, distribute and prepare derivative works of those recordings. In 1995, Congress passed the Digital Performance Right in Sound Recordings Act (DPRA), now codified at 17 U.S.C. § 114, which afforded a limited right of public performance with respect to copyrighted sound recordings. The DPRA was aimed at prohibiting public performance of sound recordings by digital radio services, and excluded AM/FM radio stations, bars, restaurants, and stores, which maintain the ability to play (i.e., “perform”) copyrighted sound recordings.

Because the Turtles’ music was recorded before 1972, the band members were forced to rely on state common law protection. Analyzing the history of the common law in the state, a majority of New York’s highest court held that no such protection exists under New York’s common law. Analyzing cases going as far back as 1872, the Court found that, in contrast to federal statutory protection, New York’s common law copyright protection is “very slight at best,” and is limited to the right of first sale of a work.

The Court’s ruling does not address other causes of action like unfair competition and does not overrule cases that disapprove of “piracy,” i.e., surreptitiously recording a live performance and selling it. Nonetheless, the Court’s decision is a victory for digital radio services like Sirius, Pandora, and the like, which have fought nationwide over the right to play older un-copyrighted works without paying licensing fees.

For more information on copyright law or the New York Court’s decision in Flo & Eddie, Inc. v. Sirius XM Radio, Inc., please contact Kathleen Barnett Einhorn, Esq., Chair of the Firm’s Complex Commercial Litigation Group, at keinhorn@genovaburns.com or Jennifer Borek, Esq., Partner in the Complex Commercial Litigation Group, at jborek@genovaburns.com.