By Scott Hervey
If a sound recording produced before 1972 falls into the public domain in a foreign nation, is that sound recording still entitled to protection in the United States?#160 Recently, in Capitol Records, Inc. v. Naxos of America, the New York Court of Appeals (the State’s highest court) issued an opinion addressing this question; a question that is substantially more complex than it first appears.#160 One reason for its complexity is that Congress, when amending the Copyright Act in 1972, provided protection for sound recordings produced after February 15, 1972, but did not extend statutory protection to recordings created before that date.
Capitol Records v. Naxos involved a dispute between two music recording companies over the right to manufacture and distribute certain sound recordings.#160 Capitol Records was the owner of the rights in several classical recordings made in the 1930s of three world-renowned artists: Yehudi Menuhin’s July 1932 performance of Edward Elgar’s “Violin Concerto in B minor, Opus 61”; Pablo Casals’ performances of J.S. Bach’s cello suites, recorded between November 1936 and June 1939; and Edwin Fischer’s performances of Bach’s “The Well Tempered Clavier, Book I,” recorded between April 1933 and August 1934, and of Bach’s “The Well Tempered Clavier, Book II,” recorded between February 1935 and June 1936.#160 The rights to these sound recordings were originally owned by The Gramophone Company Limited, which later became know as EMI Records Limited.#160 All of the above-performances were recorded by Gramophone in England. At that time, the United Kingdom provided statutory copyright protection to sound recordings for only 50 years.#160 As such, all of these recordings entered the public domain in the United Kingdom by 1990.
In 1996, EMI entered into a series of agreements with Capitol granting Capitol exclusive licenses to exploit a variety of recordings in the United States, including the Gramophone recordings.#160 Capitol remastered the original recordings, improving their audio quality, and manufactured them in CD format and distributed them to record stores.
Naxos was also in the business of remastering and re-releasing historical recordings, and, as circumstances would have it, grew very interested in the Gramophone recordings. Naxos located copies of the original 1930 recordings and undertook its own restoration and remastering process in the United Kingdom. These remastered CDs were distributed for sale in the United States beginning in 1999, competing with Capitol’s CDs.
Despite receiving cease and desist letters from Capitol, Naxos continued with the manufacture and sale in the United States of its CDs.#160 Naxos believed that because the sound recordings had entered into the public domain in England it was free to manufacture and sell in the United States its remastered versions.
Capitol sued Naxos for copyright infringement, unfair competition, misappropriation and unjust enrichment, all of which were premised on New York law.#160 Naxos moved to dismiss, arguing that the recordings had entered the public domain in the United Kingdom and, hence, the United States as well.#160 The District Court granted summary judgment to Naxos, concluding that Capitol did not have intellectual property rights in the original recordings because its copyrights had expired in the United Kingdom.#160 The Appeals Court upheld the District Court’s hearing.#160 Capitol ultimately appealed to the State’s highest court.
Before engaging in an analysis of the issues on appeal, the Court discussed the evolution of copyright protection in England and the American adaptation of copyrights.#160 The Court’s discussion is not only enlightening, but helpful in understanding and appreciating the complexity of the issues it was facing.#160 The Court noted that when examining copyright law, “a page of history is worth a volume of logic” New York Trust Co. v Eisner, 256 US 345, 349 (1921)
Modern copyright law was born in England in the 15th century, primarily as a result of the development of the printing press.#160 At that time it was printers and publishers, not the authors who initially sought to control the right to publish literary works.#160 At the same time, the Crown wanted to maintain censorship authority over the press.#160 As such, establishing a system to grant exclusive rights to reproduce printed materials served the government’s desire to control and the printers’ desire to limit competition.
In the mid 1600s, English law began to recognize an author’s natural property right to control the dissemination of a literary creation.#160 Parliament’s passage of the Statute of Anne in 1709 broadened the concept of copyright to include the ability of an author to decide whether a literary work would be published and disseminated to the public (referred to as the “right of first publication”) and, if distributed, how the work would be reproduced in the future. The Statute of Anne vested an author or publisher of a literary work with statutory copyright protection for specified time periods – new works received 14 years of copyright protection (with a 14-year term renewal) and previously published works were entitled to 21 years of protection.
As America transformed itself from British colonies into independent states and commonwealths, the law makers and the courts looked to colonial common law, derived from English law, as the basis of national law as long as it was consistent with the acts of the colonial legislatures.#160 This included English common-law copyright protection.
Eventually, new states began adopting statutory protection for copyright, using the Statute of Anne as a guideline.#160 However, as the drafting of the national Constitution was underway, the Founders decided that federal copyright protection would be more effective and desirable than leaving the matter to the states.#160 The first Congress, having been granted the constitutional 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” enacted America’s first federal copyright statute – the Copyright Act of 1790. The Act provided the author “of any map, chart, book or books,” or the author’s assignee, the exclusive “right and liberty of printing, reprinting, publishing and vending such map, chart, book or books” for up to 28 years.
At the dawn of the 20th Century, America was facing the challenge of applying the Copyright Act to new forms of technology not anticipated in previous versions of the Act.#160 Although musical compositions were covered by the Act at that time, courts in that day were wrestling with the application of the Copyright Act to a new technology in music field – piano player rolls.#160 #160
In the early 1900’s federal copyright protection was extended only to written works that could be “seen and read.”#160 This did not bode well for the new piano player roll.#160 A Supreme Court case addressing the federal protectability of music rolls held that because they were incapable of being read by a person, federal statutory protection for “copies or publications of the copyrighted music” did not extend to music rolls.#160 Following this case, Congress passed the Copyright Act of 1909. Since the Supreme Court had declared that player piano rolls and, by implication, sound recordings could not be “published” (i.e., read by a person), Congress did not include protection for audio musical works in the new Act.#160 However, Congress acknowledged that sound recordings were eligible for state common-law protection and explicitly stated that the Act should not be construed to limit common law copyright interests.
The dual system of copyright protection resulted in court decisions that were difficult to harmonize.#160 In 1971, Congress amended the Copyright Act of 1909 to expressly include sound recordings within the classes of artistic and intellectual works entitled to federal copyright protection.#160 However, the amendment was a prospective only, so recordings created before February 15, 1972 – the effective date of the amendment – were not protected by federal law.#160 The states would have jurisdiction over pre-1972 sound recordings until February 15, 2047 – 75 years after the effective date of the 1971 amendment.
The court in Capitol, having determined that New York common law is not pre-empted by federal Copyright with respect to pre-1972 works, then turned its attention to whether the works being in the public domain in the United Kingdom would have an affect on the protectability of the works in the United States.#160 Naxos’ entire defense relied on the presumption that the expiration of the works’ copyright term in the United Kingdom terminated any copyright protection in the United States.
Naxos’ position was not without support.#160 The Berne Convention and the Universal Copyright Convention both recognize the “Rule of the Shorter Term,” which generally provides that the term of copyright in the nation where a work is first published should be applied by other nations that would grant a longer period of protection.#160 These treaties have the force and affect of federal law. However, neither treaty applies the Rule of the Shorter Term to sound recordings; sound recordings fall under the Phonograms Convention.#160 And then, this provision applies only to recordings fixed after March 10, 1974, the date this treaty became law in the United States.
The Capitol court came to the reasoned conclusion that neither federal statutory nor Constitutional law prohibits the states from providing common-law protection to artistic works that are in the public domain in the country of origin.#160 The Court found no justification under New York law for substituting the British copyright term in place of New York’s common-law protection, which would continue until federal preemption occurs in 2047.#160 As such, although the works had fallen into the public domain in the United Kingdom, Naxos sale of the recordings in the United States infringed Capitol’s copyright.