Monday, April 18, 2016

Are The Turtles Certifiable? Music Industry To Litigate Pre-1972 Public Performance Right @ New York Court of Appeals In Albany

On April 13, 2016, the United States Court of Appeals for the Second Circuit "certified" the question of whether New York common law provides a right of public performance to owners of pre-1972 sound recordings to the New York Court of Appeals, which is New York State's highest appellate court. 

The "Second Circuit" is a federal court, just below the U.S. Supreme Court, that has appellate jurisdiction over all of the U.S. District Courts in Connecticut, New York and Vermont.  The "certification" came about because the band the Turtles complained that Sirius FM radio was copying, caching, and broadcasting their pre-1972 sound recordings. 

The full decision in Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 15-1164 (2d. Cir. 2016) can be found here.

Federal courts are often called upon to answer questions of state law.  What is "certification"?   Why would the highest federal appeals court in New York "certify" a question to the highest appellate court in New York State?

Before answering those questions, I would like to review some basics that are important to attorneys asserting copyright-related claims in federal and state courts.   If a case "arises under" the Copyright Act, it may be asserted in federal court under federal question jurisdiction.   If it is a breach of a license agreement (a contract) involving copyrights, the question may be a pure question of state law and may not "arise under" the Copyright Act.

 Lawsuits in federal court may generally be based on "federal question" jurisdiction.  That is, the case involves questions of federal law, permitting a litigant to file its claims in federal court.

28 U.S. Code § 1331 - Federal question

The district courts shall have original jurisdiction of all civil actions arising under the Constitution, laws, or treaties of the United States.

Federal courts also have "diversity" jurisdiction.  When residents of different states (or of a foreign country) sue each other, the federal courts may, under certain circumstances, entertain cases involving purely state law.

(a) The district courts shall have original jurisdiction of all civil actions where the matter in controversy exceeds the sum or value of $75,000, exclusive of interest and costs, and is between—                    
(1) citizens of different States;                    
(2) citizens of a State and citizens or subjects of a foreign state, except that the district courts shall not have original jurisdiction under this subsection of an action between citizens of a State and citizens or subjects of a foreign state who are lawfully admitted for permanent residence in the United States and are domiciled in the same State;                    
(3) citizens of different States and in which citizens or subjects of a foreign state are additional parties; and                    
(4) a foreign state, defined in section 1603(a) of this title, as plaintiff and citizens of a State or of different States.

Then there are cases that are so close to federal law that it may take interpreting federal law questions to understand the state law question or whether federal and state law overlap or conflict with each other.  Below is part of one of the statutes that "opens the door" to federal courts answering state law questions.  I have inserted in brackets "federal question" and diversity to make the statute more easily understandable:

(a)Except as provided in subsections (b) and (c) or as expressly provided otherwise by Federal statute, in any civil action of which the district courts have original jurisdiction [FEDERAL QUESTION JURISDICTION], the district courts shall have supplemental jurisdiction over all other claims that are so related to claims in the action within such original jurisdiction that they form part of the same case or controversy under Article III of the United States Constitution. Such supplemental jurisdiction shall include claims that involve the joinder or intervention of additional parties.                
(b) In any civil action of which the district courts have original jurisdiction founded solely on section 1332 of this title [DIVERSITY JURISDICTION], the district courts shall not have supplemental jurisdiction under subsection (a) over claims by plaintiffs against persons made parties under Rule 14, 19, 20, or 24 of the Federal Rules of Civil Procedure, or over claims by persons proposed to be joined as plaintiffs under Rule 19 of such rules, or seeking to intervene as plaintiffs under Rule 24 of such rules, when exercising supplemental jurisdiction over such claims would be inconsistent with the jurisdictional requirements of section 1332.

(c) The district courts may decline to exercise supplemental jurisdiction over a claim under subsection (a) if—
(1) the claim raises a novel or complex issue of State law,                    
(2) the claim substantially predominates over the claim or claims over which the district court has original jurisdiction,                    
(3) the district court has dismissed all claims over which it has original jurisdiction, or                    
(4)in exceptional circumstances, there are other compelling reasons for declining jurisdiction.                    

So.  Back to the questions: "what is certification?" and "why certification?"

The Second Circuit's Local Rule 27.2: Certification of Questions of State Law provides as follows:

(a) General Rule. If state law permits, the court may certify a question of state law to that state's highest court. When the court certifies a question, the court retains jurisdiction pending the state court's response to the certified question.

(b) Motion or Request. A party may move to certify a question of state law by filing a separate motion or by including a request for certification in its brief.

"Certification" means that the Second Circuit asks the New York Court of Appeals to decide an important question of New York law.

Here is what the Second Circuit considers in determining whether to "certify" the question to the New York Court of Appeals:

(1) whether the New York Court of Appeals has addressed the issue and, if not,whether the decisions of other New York courts permit us to predict how the Court of Appeals would resolve it;
 (2) whether the question is of importance to the state and may require value judgments and public policy choices; and
(3) whether the certified question is determinative of a claim before us.

Here is Judge Guido Calabresi's explanation of the issue certified:

In 1971, Congress amended the Copyright Act to grant limited copyright protection to sound recordings fixed on or after February 15, 1972, while expressly preserving state-law
property rights in sound recordings fixed before that date. See 17 U.S.C. § 301(c). Later,
Congress created an exclusive performance right in post-1972 sound recordings performed
by digital audio transmission. See 17 U.S.C. § 106(6). Performances of post-1972 sound
recordings transmitted by other means, such as AM/FM radio, still do not enjoy federal

copyright protection. Because Appellee’s recordings were fixed before February 15, 1972,
they are protected, if at all, by state copyright law. While New York provides no statutory

protection to owners of pre-1972 sound recordings, New York common law does provide certain rights to copyright holders in these recordings. See Capitol Records, Inc. v. Naxos of
Am., Inc., 4 N.Y.3d 540, 563 (2005) (Naxos II). As a result, the issue before us is whether
New York common law affords copyright holders the right to control the performance of
sound recordings as part of their copyright ownership.

Judge Calabresi has left the "policy choice" as to whether to recognize the right to the New York Court of Appeals.   Many law professors and folks in the broadcasting industry have filed amicus briefs, guaranteeing that the Amtrak to Albany will be booked on argument day.

My book Copyright Litigation Handbook (Thomson Reuters West 2015-2016) discusses at length how to choose the forum in which to assert copyright claims and analyzes the various substantive and procedural hurdles to successfully pursuing a copyright owner's rights and remedies.

 Copyright Litigation Handbook on Westlaw

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