This appendix summarizes the results of a survey of civil law concerning the unauthorized creation, reproduction, and distribution of pre-1972 sound recordings in five states: California, Illinois, Michigan, New York, and Virginia. Relevant criminal laws in these five states are discussed in Appendix A.
California’s civil law protects an author’s interest in unfixed works by statute. Section 980(a)(1) provides that:
The author of any original work of authorship that is not fixed in any tangible medium of expression has an exclusive ownership in the representation or expression thereof as against all persons except one who originally and independently creates the same or similar work.1
This statute provides the basis for a civil claim against someone who makes or distributes an unauthorized fixation of an original work of authorship, such as a bootleg recording of a live performance or of an underlying musical composition that has never been “fixed.” In Williams v. Weisser,2 a defendant who ran a business publishing student-taken notes based on a university professor’s lectures was found to have violated the plaintiff professor’s “common law copyright” in his own lecture notes and oral expression. The court characterized the right provided by this statute as “common law copyright,” calling it “mainly a right of first publication” because published works are not the subject of “common law copyright.”3The court found that the professor’s oral delivery of his lectures was not a “divestive publication” that vitiated the “common law copyright” in his work.4
California’s Civil Code explicitly protects pre-1972 sound recordings against unauthorized duplication. Section 980(a)(2) provides:
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.5
California cases regard § 980 (a)(2) as conferring an intangible property in sound recordings that can be protected in a misappropriation, conversion, or unfair competition claim.6 They have, however, distinguished the property interest protected by state law from copyright law by stating that these actions lie outside copyright (and, arguably, outside the realm of copyright defenses).7
In Capitol Records, Inc. v. Erickson,8 defendant purchased tapes and recordings sold by plaintiff, remastered and duplicated them, and then sold them in competition with plaintiff. The court granted plaintiff’s motion for a preliminary injunction, holding that relief on the grounds of unfair competition could be granted in circumstances where someone “appropriates to his profit the valuable efforts of his competitor” even where the defendant did not “palm off” his products as those of his competitor.9The court said defendant did not merely copy the records and tapes, but “appropriated the product itself—performances embodied in the records.”10
A & M Records, Inc. v. Heilman11 involved similar facts. The court affirmed judgment for plaintiff, stating that defendant’s conduct “presents a classic example of … misappropriation of the valuable efforts of another” and constitutes unfair competition even if there is no “palming off.”12 In holding that there was a valid basis for placing a constructive trust on the money defendant made from selling copies of plaintiff’s recordings, the court further stated that the “misappropriation and sale of the intangible property of another without authority from the owner is conversion.”13
In Lone Ranger Television, Inc. v. Program Radio Corp.,14 plaintiff owned rights to recordings of radio broadcasts about the Lone Ranger and to the underlying scripts, which were copyrighted. In 1979, defendants obtained reel-to-reel tape copies of Lone Ranger radio programs from collectors, remixed them, and began to lease them to radio stations for broadcast. Plaintiffs brought suit for copyright infringement under federal law with respect to the scripts, and for conversion under state law with respect to the recordings. On plaintiff’s federal copyright claim, the court held that the derivative rights in the scripts were infringed by defendant’s activities with respect to the recordings. On plaintiffs’ state law claim, the court held that plaintiff had an intangible property right in the performances on tape under section 980(a)(2) and could assert a claim against defendants for conversion with respect to that right.15
There is one case addressing the use of pre-1972 sound recordings for educational purposes, Bridge Publications, Inc. v. Vien.16 The defendant violated § 980(a)(2) by copying tape-recorded lectures by L. Ron Hubbard without authorization. Although the copying of the pre-1972 sound recordings was related to education (defendant’s course on “Dynamism”), the court found that the use was commercial in nature because the course was “offered for sale.”17
California cases have dealt predominantly with for-profit entities that have made unauthorized copies of sound recordings for commercial gain, and therefore do not provide sufficient guidance on how not-for-profit entities or noncommercial uses of such recordings would fare.
No Illinois case that deals directly with the unauthorized recording of live performances was found.
In Fenton McHugh Productions, Inc. v. WGN Continental Productions Co., the Illinois Court of Appeals announced the elements of the action for “tortious infringement of an asserted common law copyright” as “(1) the existence of a property right of the plaintiff that is protected by the common law, (2) infringement of that property right by the defendant through copying or other similar forms of misappropriation, and (3) damages resulting therefrom to the plaintiff.”18 In order for a plaintiff to prevail on this theory “the act of the defendant must also have been ‘wrongful’ in a tortious sense.”19
A federal district court sitting in Illinois has also described “common law copyright” as protecting against “unauthorized copying, publishing, vending, performing, and recording.”20
Capitol Records, Inc. v. Spies21 held that the unauthorized recording and resale of commercial sound recordings for profit constitutes wrongful appropriation and unfair competition. The defendant had purchased records in retail stores, then made and sold 1,500 unauthorized copies. The court did not explicitly make commercial gain an element of an unfair competition claim, but the defendant in that case had profited from his piracy.
As explained by a subsequent Illinois court decision, “[u]nderlying the court’s reasoning [in Spies] is the premise that the plaintiff’s pecuniary reward for producing its intangible product would be severely reduced if other competitors could avoid production costs by merely waiting until a record became popular and then recording the work for resale.”22
There were no cases in which the defendant had used the contested sound recording for a nonprofit purpose.
Illinois unfair competition cases outside the sound-recording context similarly do not explicitly state that commercial exploitation by the defendant is required to make a valid claim. However, they arise in a commercial context and involve commercial gain to the defendant through the appropriation of plaintiff’s property right.23
A & M Records, Inc. v. M.V.C. Distributing Corp.24 was an action for unauthorized duplication and distribution of copies of plaintiff’s sound recordings. The U.S. Court of Appeals for the Sixth Circuit upheld the district court’s ruling that defendant’s alleged conduct constituted unfair competition under the common law of Michigan. It rejected defendant’s claim that plaintiffs lost their common law property rights when they distributed their recording.25
In Edwards v. Church of God in Christ,26 the court held there was no cognizable tort for misappropriation of unknown singer’s voice, but upheld a claim for negligent failure to get her permission to be taped.
Michigan unfair competition cases outside the sound-recording context have consistently involved commercial exploitation of plaintiff’s property right by the defendant, although never is this specifically made a requirement of the unfair competition claim.27 Our review did not reveal cases in which defendant was not seeking a commercial benefit from the appropriation of the plaintiff’s property right.
D. New York
In a case involving record piracy, Capitol Records, Inc. v. Naxos of America, Inc., a New York court recently answered several certified questions from the Second Circuit regarding the nature of common law claims for pre-1972 sound recordings under New York law.28Capitol Records involved recordings of performances by Yehudi Menuhin, Pablo Casals, and Edwin Fischer of classical music, made in England in the 1930s. Capitol succeeded to the rights in those recordings in the United States. When Naxos, without a license from Capitol, remastered and sold copies of the recordings in the United States, Capitol sued in federal district court.
The district court found in favor of Naxos, on the grounds that, inter alia, the works were in the public domain in New York since they were in the public domain in England.29 On appeal, the Second Circuit determined that the case involved state law issues of first impression, and certified several questions of law to the New York Court of Appeals, the highest court in New York.30 The New York Court of Appeals’ decision held that there was no reason for New York to adopt another country’s term of protection, and that New York law protected the recordings regardless of whether they were in the public domain in England.31
In its decision, the court also clarified the nature of common law copyright in New York, stating that a claim “consists of two elements: (1) the existence of a valid copyright; and (2) unauthorized reproduction of the work protected by copyright.” The court made clear that bad faith is not an element of a common law infringement claim in New York,32 and that:
Copyright infringement is distinguishable from unfair competition, which in addition to unauthorized copying and distribution requires competition in the marketplace or similar actions designed for commercial benefit.33
The final question certified by the Second Circuit related to the significance of a showing that Capitol’s recordings have “slight if any current market,” and that Naxos’s work, because of the remastering, “is fairly to be regarded as a new product.” The New York court held that the size of the market or the popularity of a product does not affect the ability to enforce a state law copyright claim. It observed, with reference to federal copyright law, that Naxos’s recordings were not independent creations, and that under the fair use doctrine, reproduction of an entire work is generally infringing.34 It ruled that even if Naxos created a “new product” through remastering, that product could still infringe Capitol’s copyright “to the extent that it utilizes the original elements of the protected performances.”35
Prior to Capitol Records v. Naxos, New York courts sustained many claims for unauthorized copying and distribution of sound recordings on common law unfair competition grounds.36
In at least two cases prior to Capitol Records, New York courts allowed authors and other right holders to bring claims of unfair competition and misappropriation against defendants who made and distributed for commercial gain unauthorized recordings of broadcasted live performances. In Metropolitan Opera Association v. Wagner-Nichols Recorder Corp., the Metropolitan Opera and Columbia Records joined in a complaint alleging unfair competition against a company that sold unauthorized records of opera performances “bootlegged” from radio broadcasts.37 The court justified plaintiffs’ claim of unfair competition as follows:
Plaintiff Metropolitan Opera derives income from the performance of its operatic productions in the presence of an audience, from the broadcasting of those productions over the radio, and from the licensing to Columbia Records of the exclusive privilege of making and selling records of its own performances. Columbia Records derives income from the sale of the records which it makes pursuant to the license granted to it by Metropolitan Opera. Without any payment to Metropolitan Opera for the benefit of its extremely expensive performances, and without any cost comparable to that incurred by Columbia Records in making its records, defendants offer to the public recordings of Metropolitan Opera’s broadcast performances. This constitutes unfair competition.38
CBS, Inc. v. Documentaries Unlimited, Inc.39 dealt with the unauthorized recording of a newscaster’s report of the death of President John F. Kennedy. The defendant had recorded the newscaster’s voice “off the air” and then used the recording as part of a commercial record chronicling Kennedy’s life. Plaintiff was planning to release a similar record. The court called the defendant’s actions “a clear case of appropriation for commercial profit of another’s property right.”40
In Lennon v. Pulsebeat News, Inc.,41 the court granted a temporary injunction against the distribution of records by defendant containing reproductions of taped interviews with the Beatles. Defendant claimed the use was permissible because “the interviews involved were furnished as news for [the] immediate purpose of publicity.” However, the court stated that “there can be no justification for utilizing for profit, without plaintiffs’ permission, their distinctive manner of speech and expression which for reasons not material herein have become valuable property.”42
However, in Current Audio, Inc. v. RCA Corp.,43 the court reached a different result. Elvis Presley held a press conference before a series of concerts in Madison Square Garden that was attended by members of the media and recorded on audiotape by many members of the audience and on film for later replay on television. A news magazine for its debut issue sought to include a story about Presley and an excerpt from the news conference on a phonograph record insert. The record contained material by many of the people mentioned in the magazine; it was about 45 minutes long, and the Presley portion ran 2-1/2 minutes. RCA Corporation, which had an exclusive recording contract with Presley, sued. The court denied RCA’s motion for a temporary injunction. It held that, unlike the newscaster in CBS v. Documentaries Unlimited, discussed above, Presley was not “performing” in the press conference, as that word relates to “his distinctive and valuable property.” Rather, he was participating in the “spontaneous ‘give and take’ of an unrehearsed public press conference.”44 The court said “in many ways a press conference stands as the very symbol of a free and open press, using that term in its broadest sense to encompass all the media, in providing public access to, and direct communication with, the notable and newsworthy.” The court refused to grant an order that would impede “the free dissemination of … newsworthy events and matters of public interest.”45
We were unable to find any unfair competition cases in Virginia that dealt with unauthorized recording of live performances or the unauthorized reproduction and distribution of sound recordings.
One case, Falwell v. Penthouse Int’l Ltd.,46 held that Falwell’s oral responses to an interview were not protected under common law copyright or a claim for invasion of privacy (for using his name and likeness for advertising or trade). Although this case did not involve a sound recording, it suggests that an interviewee would not have a right to preclude use of a recorded interview for purposes of news or information.
Outside the context of sound recordings, no Virginia case explicitly makes commercial exploitation an element of an unfair competition claim. However, all of Virginia’s unfair competition cases appear to have involved some form of commercial exploitation by the defendant.47
This is an appendix to Copyright and Related Issues Relevant to Digital Preservation and Dissemination of Unpublished Pre-1972 Sound Recordings by Libraries and Archives © 2008 June M. Besek, Kernochan Center for Law, Media and the Arts, Columbia Law School.
4Id. at 550. Cal. Civ. Code § 980 (a)(1), cited above, applies only to unfixed works. Fixed works are the subject of federal copyright protection. See Trenton v. Infinity Broadcasting Corp., 865 F. Supp. 1416, 1423-25 (C.D. Cal. 1994) (finding that simultaneous recording of radio show is a fixation that brings the matter under federal copyright law and preempts plaintiff’s state law claim).
6E.g., Lone Ranger Television, Inc. v. Program Radio Corp., 740 F.2d 718, 725 (9th Cir. 1984) (finding that an intangible property interest existed in performances from the time of their recording and that such interest was protected by the common law against conversion).
7 Until 1982, section 983 of the California Civil Code provided that “a composition in letters or the arts” lost state law protection when it was published by its owner. Pre-1972 sound recordings, however, are not eligible for federal copyright law, so if they were included in this section, they lost all protection upon publication. To avoid this result, courts have characterized this section as applicable to state claims of “copyright” and continue to protect sound recordings, even if published, pursuant to “non copyright” claims such as conversion, unfair competition, and the like. See id., 740 F.2d at 726 (“Lone Ranger TV’s protection against conversion of an intangible property right in the performances embodied in its tapes is unaffected by notions of copyright.”); A & M Records v. Heilman, 75 Cal. App. 3d 554, 564 (Cal. Ct. App. 1977) (“A & M Records’ action against Heilman for duplicating without consent performances embodied in A & M Records’ recordings is independent of any action that the owners of the underlying compositions might bring against Heilman for copyright infringement.”) (emphasis in original).
15See supra notes 6-7. The court’s efforts to distinguish conversion and unfair competition from common law copyright is due to section 983 of the California Civil Code, which at that time provided that “a composition in letters or arts” lost protection if it was published by its owner. Cal. Civ. Code § 983 (West 1981), amended by Cal. Civ. Code § 983 (1982).
19Id. In this case, having signed a contract that authorized the disputed use, plaintiff could not prove this element. Id. at 541-542. Plaintiffs could alternatively proceed on a theory of contract implied in law or quasi-contract. Id. at 541 n. 6.
20 Letter Edged in Black Press v. Public Bldg. Comm’n, 320 F. Supp. 1303, 1308 (N.D. Ill. 1970) (emphasis added) (finding that the public display of a monumental sculpture without the requisite notice constituted a general publication, such that common law copyright protection and federal protection under the pre-1976 federal copyright law were both precluded).
21 264 N.E.2d 874 (Ill. App. Ct. 1970). For further discussion of this case, see June M. Besek, Copyright Issues Relevant to Digital Preservation and Dissemination of Pre-1972 Commercial Sound Recordings by Libraries and Archives, App. n. 13 and accompanying text (Dec. 2005), available at https://www.clir.org/pubs/reports/pub135/pub135.pdf.
23See, e.g., Delta Med. Sys., Inc. v. Mid-America Med. Sys., Inc., 772 N.E.2d 768 (Ill. App. Ct. 2002) (reversing lower court decision that granted preliminary injunction on claim that defendant misappropriated plaintiff’s trade secrets in order to set up and operate a competing business); Everen Sec., Inc. v. A.G. Edwards & Sons, Inc., 719 N.E.2d 312 (Ill. App. Ct. 1999) (affirming arbitration panel’s award to plaintiff where defendants, former employees of plaintiff, solicited plaintiff’s customers and photocopied plaintiff’s customer records for the purpose of creating a database for their new employer).
25Id. at 314. In Artie Field Productions v. Channel 7, 32 U.S.P.Q.2d (BNA) 1539 (E.D. Mich. 1994), the court stated in dicta that A & M Records’ claim would have been preempted had it arisen after 17 U.S.C. § 301 became effective. The Artie Fields case involved audiovisual recordings, however, and it appears that the court overlooked the carve-out from section 301 for pre-1972 sound recordings.
27 See, e.g., Thrifty Acres, Inc. v. Al-Naimi, 326 N.W.2d 400 (Mich. Ct. App. 1982) (affirming lower court ruling in favor of plaintiff who brought unfair competition claim against defendant who operated a grocery store under a trade name established by plaintiff grocery store operator).
36 See, e.g., Arista Records, Inc. v. MP3Board, Inc., 2002 U.S. Dist. Lexis 16165 (S.D.N.Y. 2002) (plaintiff stated a claim for unfair competition under New York law against operator of an Internet site that provided users with pirated copies of plaintiff’s pre-1972 musical recordings); Rostropovich v. Koch Int’l Corp., 34 U.S.P.Q.2d (BNA) 1609 (S.D.N.Y. 1995); Greater Recording Co., Inc. v. Stambler, 144 U.S.P.Q. (BNA) 547 (N.Y. Sup. Ct. 1965) (denying motion to dismiss where defendant allegedly produced and distributed records made directly from plaintiffs’ recordings); Capitol Records, Inc. v. Greatest Records, Inc., 252 N.Y.S.2d 553 (N.Y. Sup. Ct. 1964) (enjoining defendant from manufacturing and distributing record album containing identical reproductions of certain records sold by plaintiff).
38Id. at 492. However in a later case, National Basketball Association v. Motorola, the Second Circuit found that Metropolitan Opera’s “broad misappropriation doctrine based on amorphous concepts such as ‘commercial immoralityí or society’s ëethicsí is preemptedî by federal copyright law. 105 F.3d 841, 851 (2d Cir. 1997).
40Id. at 812. See also Apple Corps Ltd. v. Adirondack Group, 476 N.Y.S.2d 716 (N.Y. Sup. Ct. 1983) (enjoining sales of records and tapes made without authorization from unpublished recordings of Beatles’ “Christmas Messages” sent to fan clubs in the 1960s).
46 521 F. Supp. 1204 (W.D. Va. 1981). There is a similar rule under New York law. Estate of Hemingway v. Random House, Inc., 279 N.Y.S.2d 51 (N.Y. Sup. Ct. 1967). See Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 2.02 n.34 and accompanying text (4th ed. 2008).
47 See, e.g., Cimmarron’s Old South Corp. v. Traveller’s Alley Café, Inc., 18 Va. Cir. 436 (Va. Cir. Ct. 1990) (preliminary injunction granted where plaintiff brought claim for unfair competition in the use of trade names against restaurant located on same street as his restaurant); Craigie, Inc. v. Legg Mason Wood Walker, Inc., 20 Va. Cir. 342 (Va. Cir. Ct. 1990) (court confirmed arbitration panel’s award to plaintiff where plaintiff’s unfair competition claim was based on allegation that defendant illegally induced plaintiff’s employees to leave plaintiff’s firm and work for defendant’s firm).