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In an unprecedented expansion of common law copyright protections, the Court of Appeals Tuesday said recording artists are shielded in perpetuity under New York standards even when their foreign copyrights have long since expired. Attorneys predicted the 7-0 ruling in Capitol Records v. Naxos of America, 30, would have a significant impact on the recording industry. With Tuesday’s decision, New York apparently stands alone in its common law protection of the intellectual property rights of composing artists. In a 36-page ruling written by Judge Victoria A. Graffeo, the court said 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 decided Tuesday 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. Limited, 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 — not from Capitol’s remasterings — 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. Southern District Judge Robert W. Sweet found that Capitol has no common law copyright protection in New York, leading to an appeal to the 2nd U.S. Circuit Court of Appeals and three questions certified to the New York 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. Maxim H. Waldbaum of Schiff Hardin in Manhattan, counsel for Naxos, said no state court has ever gone so far in protecting common law copyrights. “This is the first time a common law copyright has been set forth as a right without any wrong on behalf of the defendant,” he said. “Here, you have a clear opinion from the Court of Appeals where they say there will be common law copyright infringement even if it is innocent. The ramifications are that anybody who ever did a musical piece from the time of Thomas Edison has common law rights and can come forward and sue anyone who uses their music, whether it is lost in time or not.” Philip Allen Lacovara of Mayer Brown Rowe & Maw in Manhattan, which represents Capitol Records, was not available for comment. COMMON LAW ROOTS At the trial level, Judge Sweet found that when the United Kingdom copyrights expired in the 1980s, the recordings entered the public domain internationally. Maybe so — but not in New York, according to the Court of Appeals. 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. Judge Graffeo concluded for the court, in contrast to Sweet, 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 United Kingdom 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. She found “no justification” for limiting New York common law protections because of British copyright terms and noted that this state’s shield will remain in place until federal law pre-empts in 2067 under the Sonny Bono Copyright Term Extension Act (17 USC �301). Judge Graffeo also said that neither malicious intent nor bad faith is necessary to implicate the common law protections. She said all that is necessary to establish infringement is the existence of a valid copyright and unauthorized reproduction. The court added that Naxos cannot defeat the infringement claim by showing that the reproduction has little if any significant market value or that its work could be viewed as a “new product.” The court did not opine on whether Naxos did indeed create a new product through its remastering efforts and merely observed in a footnote 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.” Waldbaum said the ruling frustrates the efforts of the music restoration industry to ensure that classical performances are preserved for posterity. “We are talking about things in the public domain that have no commercial value,” Waldbaum said. “We are not talking about the Beatles. We are not talking about Maria Callas. We are talking about things that are basically lost in time.” Waldbaum said he anticipates an eventual certiorari petition to the U.S. Supreme Court.

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