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.
“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.
Here is a link to the Copyright Blog about the intersection of fashion designs, copyright, protection of useful articles, design patents for the ornamental design of a functional item, and the Supreme Court of the United States (SCOTUS): http://copyrightlitigation.blogspot.com/. Enjoy.
Lately, there is a heightened awareness of trademarks, but many people have no idea whether the name they have chosen for their business is or contains someone else’s trademark. Keep in mind that (a) one acquires trademark rights by using a name in commerce, (b) the first to use the name has superior rights to those who come later, and (c) registration with the United States Patent and Trademark Office (USPTO) is not a prerequisite for obtaining enforceable rights in a trademark.
This became a reality for a client, who already had printed business cards, filed and published a fictitious business name statement, obtained a Board of Equalization License, began negotiating a lease in the business name, and drafted a business plan. We were consulted to form an LLC and found that the name was available with the Secretary of State’s office. Most would have concluded at that time that all was well and filed the Articles of Organization to register the LLC. We went further and looked at the USPTO website, and found that someone had filed an application to register the trademark of the exact name in the exact class of goods and services. While it would have been possible to register the LLC with the Secretary of State, it would have been an infringement of prior user’s trademark to actually do business under that name. Thus, it was back to the drawing board to select a new name.
It is critically important to clear your business name before you spend a lot of money, time, and energy. We suggest that a basic search be conducted and, if the name is clear, a full commercial trademark search then be conducted to ascertain its availability. The full commercial search will find registered marks, applications for registration, common law trademarks (those that have been in use but are not formally registered), and domain names. We also recommend that, as soon as you have cleared the name, acquire the Internet domain name in order to ensure that you have the rights on the Internet to your own trade name.
Matthew I. Berger Law Group, A Professional Corporation (805) 456-120010 E. Islay Street Santa Barbara, CA 93101