Flo & Eddie and the right to publicly perform pre-1972 recordings

|The Volokh Conspiracy |

And speaking of federal pre-emption of state law . . . A few months ago, a federal court in California held that Sirius XM digital radio was violating the rights of the eminently forgettable recording group "the Turtles" by transmitting any of the group's pre-1972 recordings—their rather insipid cover version of Dylan's "It Ain't Me, Babe," (1965) for instance—to subscribers. Not their federal copyright rights (which they don't have with respect to these recordings, as all parties agree—recorded performances did not receive any federal copyright protection at all prior to 1972, and are only rather narrowly protected today), but rather their "public performance" rights under California state law. The Turtles—or rather Flo & Eddie, aka Mark Volman and Howard Kaylan, founding members of the Turtles, who own the rights in the group's recordings and were the plaintiffs in the action—have now followed up with a suit against Pandora on identical grounds (and which is being heard by the same judge, Philip Gutierrez in the Central District of California).

Lots and lots of interesting stuff in here. Tyler Ochoa (whose excellent summary of the copyright law involved in the suit is highly recommended to any and all copyright nerds out there who want to understand more precisely what is going on here, doctrinally) calls it a "seismic ruling" that "could result in undoing 75years of copyright history," and I think he's got it right. The law is a complicated, ungodly mess, but the bottom line is reasonably straightforward.

To begin with, the Copyright Act ordinarily pre-empts any attempt to assert copyright-like rights purportedly bestowed by state law. Sec. 301 of the Act expressly declares that

all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright . . . in works of authorship that . . . come within the subject matter of copyright . . . are governed exclusively by this title [i.e., by the federal Copyright Act]. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.

So if California law, say, gave filmmakers an additional 20 years of protection against reproduction or performance of their works over and above the protection provided by federal law, or provided them with a special cause of action when their films are shared over the Internet, those would surely be pre-empted by Sec. 301. The statute, however, goes on:

With respect to sound recordings fixed before February 15, 1972 -[the date sound recordings were first protected by federal copyright]— 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.

As you can imagine, there's a great deal of complicated history here, but the bottom line is clear: any "rights or remedies" provided by California law with respect to pre-1972 sound recordings survive pre-emption; if California law gives creators of pre-1972 sound recordings the exclusive right, say, to publicly perform their recordings, federal law does not pre-empt an action to enforce that right.

So: Does California law provide for such a right, and were the Turtles' recordings covered? Flo & Eddie argued that it does and that they were, and Judge Gutierrez agreed.

Turns out, though, he's wrong. Here's the operative portion of the provision in question (California Civil Code § 980):

The author of any product of the mind, whether it is an invention, or a composition in letters or art . . . has an exclusive ownership therein, and in the representation or expression thereof . . . 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 . . .

In the Sirius opinion, Judge Gutierrez held that use of the words "exclusive ownership" in the statute means that the author of a pre-February 15, 1972 sound recording has a right to exclude others from making any use of it, including by means of an unauthorized public performance.

It's not an entirely unreasonable reading of the statute—but it's not correct. One tip-off that it's not correct is that nobody has, before now, seems to have noticed that such a right exists—pretty strange, in an industry whose participants have never been, shall we say, shy about asserting their entitlement(s) to compensation for their works. Every AM or FM radio transmission of pre-1972 recordings—"Blue Suede Shoes," say, or "Like a Rolling Stone," or "I Saw Her Standing There" . . .—generated, under this reading, an infringement of the recording artists' state law rights (and therefore an entitlement to some form of royalty payment)—and nobody noticed this before? Hmm.

Probably the reason that nobody noticed is that it's not there. As it was in effect at the time that the Turtles were releasing their recordings, a different provision of the same California law—Sec. 983, which, rather astonishingly, seems to have been completely overlooked by the lawyers in the Sirius case and Judge Gutierrez—expressly divests these copyright owners of any rights under state law once a work is "published."

If the owner of a composition in letters or arts publishes it the same may be used in any manner by any person, without responsibility to the owner insofar as the law of this State is concerned.

This kind of scheme was, in fact, quite common in state copyright law before the 1976 Copyright Act went into effect. Federal copyright law protected works beginning the moment they were "published," and had nothing to say about rights/duties in regard to "unpublished" works, all of which were left to the States.

So there you go; whatever rights the Turtles may have had in their recordings disappeared once those recordings were "published"—and nobody disputes that they were indeed "published" (via a distribution to the public) many, many years ago.

As far as I can tell, neither Judge Gutierrez, nor Sirius' lawyers, seem to have taken any cognizance whatsoever of this provision; it's not even mentioned anywhere in the opinion or in the pleadings that I've taken a look at. Pretty startling, given that it is dispositive of the plaintiffs' claims, and it's not all that hard to find there in the statute.

And it gets even more interesting. Pandora has taken an interesting step in the suit Flo & Eddie filed against it: it has now filed an anti-SLAPP motion to try to obtain dismissal of the suit. As loyal VC readers are undoubtedly aware, California's rather extraordinary anti-SLAPP statute is designed to protect the exercise of First Amendment rights against the burdens imposed by legal claims that are not "reasonably likely to prevail." It creates a special "motion to strike" applicable to causes of action that would impose liability based on the exercise of the constitutional right to Free Speech. To prevail on an anti-SLAPP, the defendant has to show, first, that the lawsuit arises from "an act in furtherance of the defendant's constitutional right to free speech," at which point the burden shifts to the plaintiff to establish a "reasonable probability that it will prevail on its claim."

It's an unusual step to take in a copyright case—I'm not aware of other cases where the procedure has been used by defendants facing copyright (state or federal) claims. Pandora's argument on the first prong—that by playing these songs, it is engaged in activity protected by the First Amendment—seems straightforward enough. But the second prong—that the plaintiffs are not "reasonably likely to prevail" on their claim—gets a little tricky, no? Pandora can and does argue that there's simply no state law right here at all. But that's a tough argument to have to make to Judge Gutierrez, who has, just a couple of months ago, decided the question contrariwise. For Judge Gutierrez to grant the anti-SLAPP motion would require him to disavow his earlier decision—which he should do (because the earlier decision was incorrect), but which I'm not entirely sure he can do (without some kind of formal reconsideration of the earlier judgment) or will do. A complicated little procedural pickle indeed.

So it'll be off to the 9th Circuit we go, I suspect—one of the nice things about the anti-SLAPP process is that you get an immediate appeal as of right to the Court of Appeals if the motion is denied—which will, I would be willing to bet, overturn this rather serious misreading of the law and settle things down.