ABS v. CBS – Why the 9th Circuit Should Correct the District Court’s Mistake Regarding Sound Recordings

Even more than most, this post is my opinion only, and reflects views and opinions that should only be imputed to me.  The gist: The 9th Circuit should reverse in ABS v. CBS, digital remasterings of sound recordings absolutely can be protected by copyright, but aren’t always and it requires factfinding, and a digital remastering does not de facto federalize a sound recording from before 1972 protected by state law.

As some of you may know, I have a fairly lengthy piece on the scope of common-law copyright for sound recordings   It’s available here, although it’s still a work in progress (the staff at the Cincinnati Law Review are currently doing edits, so pagination will change some).  If you want an audio version, you can also hear a version of my talk on the issue from the Library of Congress.

One nice thing about having this blog is that I don’t need to wait for that piece to come out, though, to explain how the decision of the US District Court for the Central District of California in ABS v. CBS is incorrect and demands reversal.  It misunderstands the basic ordering of authorship and derivative works, and I’d like to briefly explain why.  That decision is current being briefed before the 9th Circuit, and is being briefed (the Appellants’ brief is here; Appellees’ Answering Brief is here)

ABS and a host of other parties assert that they own the common-law copyrights in sound recordings made prior to February 15, 1972.  Under the current law, such older sound recordings are not protected by federal law, but may be protected by state law protections.   The preemption provisions of the copyright law contain a specific exception until 2067, so protection for all pre-1972 sound recordings will terminate then.  In practice, most states tend to follow the model of indefinite protection offered by New York under the doctrine of common-law copyright (the protection given at common law to unpublished works, under the legal fiction that sound recordings that have been commercially released are nonetheless unpublished), but the modern case law regarding whether common-law copyright includes a performance right (aka a broadcast right) is surprisingly sparse. One of the things I point out in my article is that if you cast a broader net there’s plenty of caselaw from the late nineteenth century, all of which agrees on a performance right at common law, but Courts thus far haven’t embraced this argument completely.  In response to this confusion the Copyright Office recommended federalizing protection for pre-1972 sound recordings, but that has not yet happened.

Earlier litigation brought by Flo & Eddie of the Turtles argued that digital radio services that would be required to pay a royalty under federal law were not doing so under state law, leading to the surprising determination by the New York Court of Appeals that no performance right exists for pre-1972 sound recordings, a decision whose ramifications have yet to fully play out.  However, that decision only applied to New York state in theory (how much deference other states will accord it remains unclear), so the lawsuits brought by ABS et al are going forward in a number of other states.  However, ABS made a broader claim than Flo & Eddie had, claiming that all terrestrial stations (ie regular radio) had to pay a royalty for playing their sound recordings, a requirement that does not exist at federal law.  CBS Radio, one of the largest station operators in the nation, was sued by ABS in the Central District of California.

The issue for the Court was that on one hand, the weight of precedent was that common-law seems to require a performance right in California (indeed, the same Court had just ruled that), and there’s no real principled way to create a separate rule for terrestrial radio as opposed to satellite radio under existing doctrine.1  However, there’s currently no requirement for paying royalties for plays of sound recordings on terrestrial radio, and there are concerns of administrability and uniformity from finding a common-law performance right on a state-by-state basis.

Facing long odds given the Court’s recent decision on performance rights at state law, CBS tried a clever move – they argued that they weren’t playing pre-1972 sound recordings at all, but were rather playing post-1972 sound recordings, which were protected by federal law – but had no performance rights for terrestrial radio.  The argument is that because the radio station was not playing vinyl records made before 1972, but were rather playing subsequent digital transfers, the relevant sound recordings were the digital transfers and not the originals.  As such, the case should be dismissed because all parties understood no cause of action existed under federal copyright law.

Somewhat implausibly, this succeeded and the Court granted summary judgment (the decision is available as a PDF here).  The case is currently nearly briefed before the 9th Circuit, as noted above.  There are two particular mistakes in the Court’s decision that I wanted to highlight.

Firstly, the Court looked at a number of sources, including the Compendium of U.S. Copyright Office Practices, Third Edition (the Copyright Office’s examining manual), and held that for every sound recording at issue (over 100), a derivative work had been created when it was remastered into a digital version.2  However, section 803.9 of that manual indicates that the following words are indicative of de minimis creativity where no sufficient authorship exists for an independent copyight: “Declicking, New format, Noise reduction, Reissue.”  In addition, “the term ‘remastering’ may refer to authorship that is mechanical or too minimal to be copyrightable.”  Put another way, a remastering absolutely can be independently copyrightable, but this is a fact-intensive question that cannot be easily resolved.  The District Court’s failure to engage in factfinding on the issue for each an every sound recording at issue is an easy ground for reversal.  However, there is a deeper problem with the District Court’s decision’s, one which moots the need for such a factfinding – even if a derivative work was created in the transfer to digital and radio stations are playing that derivative work, radio stations are still playing the underlying pre-1972 sound recording as well.

The RIAA’s Amicus Brief makes this point especially well – a derivative work only includes what is new – anything in the original work is protected by the copyright in the original work only.  This is the core holding the Supreme Court reached in its 1990 decision in Stewart v. Abend regarding the copyright in the film Rear Window.  Creating a derivative work like a digital remaster of an analog recording does not replace the protection for the underlying work.  This isn’t a statement of opinion, it’s black letter law, at 17 U.S.C. 103(b):

The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material.

The District Court ignored a core tenet of copyright law in concluding that performance of a derivative work in a pre-1972 sound recording is only performing that derivative work, and not the original as well.

Having spent much of the recent year thinking about common-law copyright, I have devised an alternative argument along the lines of the CBS argument, one which I think avoids this pitfall.  I’ve included it below the jump, but be warned that I don’t think it actually works (especially in California) – and I’ll explain why too.  It’s more a conceptual exploration of how common-law copyright plays out differently from statutory copyright.

Okay, you’ve made it to conceptual argument part of this post.  This way be dragons – if you’re not fairly up on copyright law it might be a little confusing.  Enjoy!

CBS largely relied on the opinion of the 2nd Circuit in Shoptalk v. Concorde-New Horizons, which held that an unpublished screenplay was effectively included in the film which was produced around it.  In that case Charles Byron Griffith wrote a screenplay in 1959, which became the 1960 film Little Shop of Horrors.  The 1960 film was registered for copyright, and in 1981 the owner of the copyright in the film authorized Alan Mencken and Howard Ashman (collectively “Shoptalk” for purposes of simplification) to write a musical comedy version of Little Shop of Horrors.  Griffith registered a copyright in the screenplay in 1982 and sued (he needed to register to bring the suit), and the parties settled in 1983.  In 1988 the owner of the copyright in the film failed to renew the copyright, and Shoptalk ceased paying royalties.  Griffith sued again, and this time no settlement was possible.

The Brief of CBS to the 9th Circuit summarizes the resulting decision of the 2nd Circuit as follows:

The Second Circuit refused to allow the author to retain state-law rights for the parts of his screenplay that he had authorized to be included in the movie, because “a single work cannot be protected from copying under both federal and state law at the same time.”

However, that deliberately brushes aside the second part of the holding of the Court – they didn’t refuse to allow state-law rights to be exercised separately from the film per se, they held that the film constituted a publication of the previously unpublished screenplay.  In particular, the court held that “when the author consents to the inclusion of his work [(the screenplay)] in a derivative work [(the movie)], the publication of the derivative work, to the extent that it discloses the original work, also constitutes publication of that underlying work.”  With the underlying work published, it relies on the copyright on the film for its protection – or lack thereof.  The 9th Circuit reached a similar conclusion regarding the unpublished screenplay to a film whose copyright had expired in Batjac v. Goodtimes.

This quote of course suggests what CBS really could have argued with greater intellectual force – that the creation of a federally registered sound recording by remastering the analog pre-1972 sound recording to digital media and distributing it to the public constitutes a publication which destroys the state-law rights in that pre-1972 sound recording, meaning the only protection for the sound recording, full stop, is under federal law.

One of the interesting questions of the interface of common-law and federal copyright is whether publication is a question of federal or state law.  I explore this in my article, and my conclusion is that publication is actually two separate questions, one governed by state law, the other by federal law.  The first publication, the one which destroyed common-law copyright and was sometimes called “divestative” publication under the 1909 Act, is a question of state law.  The 1909 Act required publication with notice for protection, and the question of whether that publication had occured, sometimes called the question of “investative” publication, was a question of federal law.  Both questions are of course somewhat moot with the abolition of common-law copyright for everything but pre-72 sound recordings in 1976, but they remain important in this one nook of the law.

As I have alluded to, most states to look at the question have developed the legal fiction that the release of a sound recording does not constitute a divestative publication.  The rationale for this, boiled to its essence, is that publication is dedication to the public, and sound recording owners do not mean to abandon their protection just because they sell records.  This doctrine is subject to criticism, but here I am simply accepting it as a fact.  However, that doctrine no longer applies in an era where the creation of a digital remaster may provide a new federal copyright – if a sound recording owner is in fact getting de facto federal protection upon the creation of the derivative work, does the fiction that a publicly sold record was never “published” still make sense?

This would be a better argument in any of the 49 states where no statute exists (and, indeed, ABS has brought suit in many of those states).  However, the California statute does not rely on nonpublication, and instead simply states that

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.

CBS could argue that the issue of publication still exists, but this seems like a much higher bar facing this statute, especially working in tandem with the expansive exception to the preemption provision of the current federal copyright law:

With respect to sound recordings fixed before February 15, 1972, any rights or remedies under the common law or statutes of any State shall not be annulled or limited by this title until February 15, 2067…[N]o sound recording fixed before February 15, 1972, shall be subject to copyright under this title before, on, or after February 15, 2067.

Frankly, it’s difficult to square any version of CBS’s argument with this section of the federal law, be it the version the District Court accepted, or the modified version I propose.

This post has gone on a little long, and yet at the same time has been fairly cursory about complicated issues – I’d urge you to look at my draft article for more information.  The gist is simple though – although CBS’s argument was clever, it just isn’t a correct application of copyright law, state or federal.

  1. California actually has a statute for common-law copyright, so it’s not actually common-law, but it’s generally understood to just be a codification, and it’s short on detail
  2. In theory the Compendium is only given Skidmore  deference by the Courts, meaning it is advisory but not binding.  However, in practice the Compendium is more than a series of arbitrary examining rules – the 3rd Edition of the Compendium was one of the triumphs of Maria Pallante’s tenure as Register, and represents a thorough attempt to reckon with the body of statutes and caselaw that govern copyrightable works to determine what the Copyright Office should and should not be registering for copyright.  In practice it is now the leading treatise on what copyright does and does not protect. in the United States

Author: Zvi S. Rosen

Lawyer and sometimes academic. I've written a fair deal about the evolution of intellectual property law into its present form, this blog is a way to share things that don't fit into a full-length article.

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