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In an unprecedented expansion of common law copyright protections, the New York Court of Appeals said last week that recording artists are shielded in perpetuity under New York standards even when their foreign copyrights have long since expired. Capitol Records v. Naxos of America, No. 30. New York now apparently stands alone in its common law protection of the intellectual property rights of composing artists. Writing on behalf of a unanimous state high court, Judge Victoria A. Graffeo said that the common law rights of performances, as opposed to published compositions, remain intact forever in New York. Practically speaking, though, federal law will pre-empt New York common law on Feb. 15, 2067. The case arose from a federal dispute over the right of Naxos of America to market in the United States restorations of the recordings of cellist Pablo Casals, pianist Edwin Fischer and violinist Yehudi Menuhin. Records of their music were made in England in the 1930s, but copyrights in the United Kingdom expired after 50 years. EMI Records, whose predecessor, The Gramophone Co. Ltd., produced the original recordings, in 1996 gave Capitol Records exclusive rights to exploit the Casals-Fischer-Menuhin recordings in the U.S. market. But in 1999, Naxos made its own restorations of those works from recordings in the collection of the Yale University Library and marketed them in direct competition with Capitol. Capitol sued in federal court for copyright infringement and other torts. Since there is no federal copyright protection for pre-1972 recordings, the key question was whether New York common law shields the works from unauthorized duplication. U.S. District Judge Robert W. Sweet found that Capitol has no common law copyright protection in New York, leading to an appeal to the 2d U.S. Circuit Court of Appeals and three questions certified to the New York high court. The questions were: Does the expiration of copyrights in the United Kingdom extinguish any New York common law copyright? Answer: No. Does a successful claim under New York copyright common law require evidence of unfair competition? Answer: No. Is an infringement claim in New York defeated through evidence that the alleged infringer produced a “new” product as opposed to a facsimile of the plaintiff’s existing product? Answer: No. Sweet had found that when the U.K. copyrights expired in the 1980s, the recordings entered the public domain internationally. Maybe so, but not in New York, according to the high court. The court traced the history and tradition of intellectual property protections to their 15th century common law roots. It explored English copyright law, the development of copyright law in colonial America and modern application of common law principles. Graffeo concluded that New York “provides common-law copyright protection to sound recordings not covered by the federal copyright act, regardless of the public domain status in the country of origin, if the alleged act of infringement occurred in New York.” The court found no basis for the assertion that Capitol’s rights are not enforceable in New York simply because the U.K. copyrights expired. “Neither federal statutory nor constitutional law prohibits the states from providing common-law protections to artistic works that are in the public domain in the country of origin,” Graffeo wrote. The state’s shield will remain in place until federal law pre-empts in 2067 under the Sonny Bono Copyright Term Extension Act, 17 U.S.C. 301. The court added that Naxos cannot defeat the infringement claim by showing that its work was a “new product.” The court said that “Capitol has a protected property interest in the performances embodied on the shellac records and that Naxos is selling remastered copies of identical performances.”

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