The Turtles performing Happy Together on The Ed Sullivan Show in 1967.
The Turtles performing Happy Together on The Ed Sullivan Show in 1967. (Photo via Wikipedia)

ALBANY – No common law right of public performance exists in New York state to compel Sirius XM Radio to pay fees for the use of pre-1972 sound recordings by popular artists such as The Turtles, the state’s highest court ruled Tuesday.

The 4-2 Court of Appeals majority said that while it is not unsympathetic to the anomalies in copyright laws that allow letting some artistic works to be used for profit by others without compensation to their creators, it should be up to Congress to define the public performance rights sought by creators of the Turtles’ music, as it did for post-1972 recordings under the federal Copyright Act of 1976.

Judge Leslie Stein wrote for the majority in Flo & Eddie v. Sirius XM Radio, 172, that it took Congress nearly 20 years of studying the nature and scope of sound recordings before it came up with the 1976 law.

“Ultimately, it cannot be overstated that, if this court were to recognize a right of public performance under the common law, we would be ill-equipped—or simply unable—to create a structure of rules to properly guide the application of that right” to pre-1972 recordings, Stein wrote. “The legislative branch, on the other hand, is uniquely qualified, and imbued with the authority to conduct the required balancing of interests and make the necessary policy choices.”

Stein noted that the digital and satellite technology that has allowed subscription music on-demand services such as Sirius to become so lucrative over the past decade has upended the previous “symbiotic” relationship between artists and broadcasters, where it was advantageous to both sides to play music recordings publicly.

“While changing technology may have rendered it more challenging for the record companies and performing artists to profit from the sale of recordings, these changes, alone, do not now warrant the precipitous creation of a common-law right that has not previously existed,” Stein wrote in a ruling in which she was joined by Judges Eugene Pigott Jr., Eugene Fahey and Michael Garcia.

Judge Jenny Rivera wrote in a dissent that the common-law right of public performance in New York has always been recognized as a “broad and flexible” one that the court should now extend to the pre-1972 sound recordings in the new age of satellite broadcasting.

“I reject a parochialism that justifies turning a blind eye to the exploitative practices of today’s music industry made possible by technological advances and that, as a consequence, excludes from our common-law copyright in sound recordings a quintessential property interest in the use of these works,” Rivera wrote.

Judge Sheila Abdus-Salaam joined in Rivera’s dissent. Chief Judge Janet DiFiore took no part in the decision.

Fahey wrote a concurring opinion in which he said he believed that the common-law right of public performance should apply to the on-demand services sold by Apple Music, Spotify, Rhapsody and Amazon’s Music Unlimited where consumers hear one song at a time from massive catalogs without downloading the individual songs, as listeners can through iTunes.

Fahey said, in his view, pre-1972 public performances are protected in such on-demand “rental or lease” use of the songs.

The Court of Appeals’ ruling was in response to a certified question from the U.S. Court of Appeals for the Second Circuit, which inquired in April whether New York’s common law provides copyright protections for recordings not covered by federal law (NYLJ, April 14).

Southern District Judge Colleen McMahon had denied Sirius’ motion for summary judgment in 2014, finding that New York common law does provide a public-right performance (NYLJ, Nov. 19, 2014).

The lead plaintiffs are Flo & Eddie Inc., the corporation controlled by the guiding members of The Turtles, Mark Volman (aka “Flo”) and Howard Kaylan (aka “Eddie”). While with The Turtles, the pair had a string of hits including “Happy Together” and “She’d Rather Be With Me,” both in 1967.

The duo has pressed its claims for payments for use of Turtles recordings in several courts.

Just before trial was set to begin last month, Sirius agreed to settle a claim brought by the former Turtles members in the U.S. District Court for the Central District of California, Flo & Eddie v. Sirius XM Radio, 13-5693.

In 2015, Sirius paid $210 million to settle claims by several major record labels, some of whom were members of the class in the California case that settled last month.

U.S. District Judge Darrin Gayles of the Southern District of Florida, however, granted summary judgment to Sirius in another Flo & Eddie case on the basis of Florida law.

Patrick Reilly, vice president for corporate communications for Sirius, declined to comment on Tuesday’s ruling.

Jonathan Hacker, a partner at O’Melveny & Myers in Washington, D.C., represented Sirius in the October arguments before the Court of Appeals (NYLJ, Oct. 18).

Caitlin Halligan, a partner at Gibson, Dunn & Crutcher in Manhattan, argued on Flo & Eddie’s behalf before the Court of Appeals. Henry Gradstein and Maryann Marzano of Gradstein & Marzano in Los Angeles also represented the songwriting duo.

Attorneys for the plaintiffs did not return calls seeking comment Tuesday.

Lori Landew, a partner in Fox Rothschild’s entertainment department in Philadelphia and Manhattan, said that Flo & Eddie and a few other older individual artists had taken their claims for payments to courts out of frustration that Congress has been unable to agree for many years to include a right for payment for pre-1972 public performances.

Landew, who is not involved in litigation filed by the former Turtles artists, said that the impending failure of their suit in New York could force artists to renew their lobbying efforts on Congress to revise the federal Copyright Act.

“Ultimately, the law has to be revised,” Landew said in an interview Tuesday. “It has to be, not only to keep pace with changes in technology, but also changes in how music is being consumed these days.”

Landew said that one of the many anomalies in copyright law that Congress could address is that while artists do not receive protections for pre-1972 public performances, they do qualify for payments for such performances that are aired or made live in other countries. However, U.S. artists cannot collect those foreign payments because the United States does not recognize reciprocity for the pre-1972 foreign artists’ performances in the United States, Landew said.

Helene Freeman at Phillips Nizer in Manhattan and co-counsel in Led Zeppelin’s recent victory over the songwriting credits to its classic “Stairway to Heaven,” said that Tuesday’s ruling should spur movement toward congressional action on copyrights for streamed music and other consumer choices created by digital technology.

“People who stream broadcasts of music on the web do operate nationally, so an individual state solution has a lot of complications,” said Freeman, who was not involved in the Flo & Eddie litigation.

Among those filing amicus curiae briefs supporting Sirius’ position were the National Association of Broadcasters, the Association of Recorded Sound Collections, the Electronic Frontier Foundation, iHeartMedia, Pandora Media, the National Restaurant Association and CBS Radio.