Second Circuit certifies novel copyright issue to New York Court of Appeals (updated 6/9/16)

Flo & Eddie, Inc. v. Sirius XM Radio, Inc., No. 15-1164-cv (2d Cir. Apr. 13, 2016). 

Judge Guido Calabresi has argued that federal courts should certify questions of state law to state courts more often than they do. Here, joined by two of his colleagues, he certifies an interesting issue of New York law to that state’s highest court.

The owner of the Turtles’ recordings has sued Sirius for copyright infringement—not under federal law, but under the common law of New York. The owner is asserting that Sirius violated its rights under the common law of New York by broadcasting the Turtles’ pre-1972 recordings without payment or permission. But why isn’t the owner suing under federal law, and why is it suing over pre-1972 recordings? That’s because federal law didn’t protect sound recordings—as opposed to musical compositions—until 1972. And it still doesn’t protect recordings created before 1972. Pre-1972 recordings can seek protection only from state law.

But what sort of protection does New York law afford to owners of sound recordings? Specifically, if you perform the recordings publicly, as Sirius does, do you have to get a license from the owner? There isn’t an obvious answer to this question. Copyright law has long distinguished between rights in musical works or compositions, on the one hand, and rights in sound recordings, on the other, and it has generally given more protection to the former than the latter. New York courts have yet to address the question, the answer to which has potentially huge implications. So the question is certified to the New York Court of Appeals. If that court accepts certification and issues an opinion, I’ll be sure to post an update.

UPDATE (6/9/16): Last month, the New York Court of Appeals accepted the certified question.