Unhappy together: The Turtles, Sirius XM

On Sept. 22, U.S. District Judge Philip Gutierrez ruled that California's copyright statute, Civil Code Section 980(a)(2), which grants authors exclusive ownership to pre-1972 sound recordings - but which does not delineate what those "exclusive rights" are - includes the exclusive right to "publicly perform" them (e.g., broadcast them on radio and television, and play them in bars and restaurants). Gutierrez thereby granted summary judgment to Flo & Eddie, the company formed by two of the founding members of the '60s band The Turtles against the satellite and Internet radio service Sirius XM, holding that Sirius XM had infringed the California copyrights of Flo & Eddie by broadcasting 15 separate pre-1972 sound recordings over a seven-year period. Flo & Eddie Inc. v. Sirius XM Radio Inc., et al., CV13-569 (C.D. Cal.).

Prior to suing Sirius XM, Flo & Eddie had never demanded that Sirius XM either acquire a license or stop broadcasting its sound recordings. Nor had Flo & Eddie ever contacted any "terrestrial" (AM/FM) radio station with such a demand.

Gutierrez's decision cuts against decades of industry custom by the public performance industry - television and radio broadcasters, restaurant and bar owners - who have never been required to pay to publicly perform sound recordings fixed prior to 1972. In 1972, Congress enacted the Sound Recording Act, which brought sound recordings into the federal copyright scheme for the first time but at the same time excluded a public performance right from the exclusive grant of rights afforded to sound recordings. It was not until 1995, when Congress passed the Digital Performance Right in Sound Recordings Act of 1995 (DPRA), that owners of post-1972 copyrights in sound recordings obtained the exclusive right to publicly perform them by means of digital audio transmission only. However, Gutierrez did not rely on DPRA as support for his decision. Nor did he limit his holding that Section 980(a)(2) includes a public performance right for sound recordings to digital transmissions only.

The decision also is at odds with a recent ruling by Los Angeles County Superior Court Judge Mary Strobel denying a jury instruction requested by the major record labels in a similar action brought against Sirius XM. In that case, Strobel ruled that the language of the California statute is ambiguous. According to her, while the California statute may protect against unlicensed duplication and distribution, it doesn't specifically address whether it grants exclusive performance rights to the owners of sound recordings: "Plaintiffs [the record labels] have not cited any authority for the proposition that the state law rights in pre-1972 sound recordings included rights in public performance of the sound recordings."

Gutierrez looked at the issue the other way, noting that "Sirius XM cannot point to a single case in which a judge considered facts implicating this right or even theorized on the right then decided that the right of public performance does not attach to ownership of sound recordings in California ... when the legislature passed Section 980(a)(2), there was no common law rule in California rejecting public performance rights in sound recording ownership." He thereupon held that California's statute is inclusive of "all ownership rights that can attach to intellectual property," and, necessarily extrapolating from Section 114 of the federal Copyright Act which articulates the public performance right, that such rights include public performance, even though Section 114 expressly excludes the public performance right from sound recordings. Curiously, Gutierrez used Congress' exclusion of the public performance right for sound recordings as support for his conclusion that the state Legislature meant to include that right.

In light of the potential far-reaching implications of Gutierrez's decision, it is worth considering whether his analogy to federal copyright law is correct.

Any discussion of copyright necessarily begins with the U.S. Constitution. Article I, Section 8 provides that "to promote the Progress of Science and useful Arts" it is necessary to secure "for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." Put another way, the Founding Fathers decided that if artists couldn't put food on the table by exploiting their artistic works, they'd likely have to pursue another line of work. For example, there would certainly be a lot more lawyers around.

Would giving a public performance right for pre-1972 sound recordings do anything to advance the progress of the useful arts? Congress apparently didn't think so. When Congress finally got around to protecting sound recordings in 1972, it did not feel it was necessary to include the public performance right in the grant of rights. The Turtles band was formed in 1961. Their sole No. 1 hit song, "Happy Together" was released in 1967. By 1970 - two years before Congress granted copyright protection to sound recordings - The Turtles had disbanded, reportedly amidst multiple fights with their record companies and much litigation with their managers.

After the split, the two co-founders, Howard Kaylan and Mark Volman joined Frank Zappa's Mothers of Invention and also recorded some new material as the band Flo & Eddie. Eventually Flo & Eddie started touring again as The Turtles, a nostalgia act. But Flo & Eddie aren't recording new materials as The Turtles. So how would paying Flo & Eddie for the public performance of The Turtles' 1960s sound recordings advance the progress of new sound recordings by The Turtles? It most surely would not.

With several notable exceptions, there are few pre-1972 recording artists that are still actively performing. Even fewer are releasing new material. Those that are certainly could argue that getting paid for the public performance of their old sound recordings has a direct impact on the progress of the arts by enabling them to continue to release new material. But not The Turtles.

Strobel's decision against the interests of the major record labels implicitly recognizes that paying record companies - which own the great majority of all sound recordings by virtue of recording contracts that historically assigned ownership of sound recordings to the record companies that paid the recording costs - also does nothing to advance the arts, particularly in this day and age when advances in recording technology have resulted in record companies paying far less than they used to for new recordings. Put another way, the record companies aren't the performers, producers and recording engineers who create the magic. They are the suits.

Gutierrez's decision upends years of custom and practice in the industry. Arguably, the decision will do little if anything to advance the progress of music, and will inure largely to the benefit of record labels only.