IP Law Daily Audiovisual recordings of live concerts not covered by mechanical licenses
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Tuesday, April 10, 2018

Audiovisual recordings of live concerts not covered by mechanical licenses

By Brian Craig, J.D.

In a suit concerning copyright infringement for a collection of iconic live concert recordings, the federal district court in New York City has ruled that audiovisual recordings are not covered by mechanical licenses. The court held that prior mechanical licenses for musical recordings of live concert recordings for artists such as The Rolling Stones and The Who did not include reproducing those recordings in digital format through digital download and streaming services. While the court granted summary judgment for the music publishers on copyright infringement, a jury must decide certain matters on willful infringement as to whether certain prior licenses were untimely filed or covered by preexisting licenses. The court also denied the request for a permanent injunction, finding that the music publishers can be compensated without an injunction (ABKCO Music, Inc. v. Sagan, March 30, 2018, Ramos, E.).

The plaintiffs are a collection of six groups of music publishers who claim to own or hold exclusive licenses in the copyrights to approximately 200 musical compositions (the "Musical Works"). The collection reads like a veritable who’s who of rock, soul, and alternative music, containing the performances of The Rolling Stones, The Who, the Grateful Dead, Willie Nelson, Ray Charles, Aretha Franklin, and Carlos Santana, to name a few. The defendants William E. Sagan, Bill Graham Archives, LLC, and Norton, LLC ("Defendants") acquired mechanical licenses to the Musical Works. The defendants reproduced those recordings principally in digital format and made them available for mass consumption through digital download and streaming services through the defendants’ websites, including the Music Vault channel on YouTube. The plaintiffs claim that exploitation of the recordings infringes their copyrights in the Musical Works. The parties filed cross motions for summary judgment on the plaintiffs’ claim of copyright infringement and the plaintiffs’ request for a permanent injunction.

Copyright infringement. The court concluded that the defendants hold no valid licenses authorizing the reproduction and distribution of the Musical Works. The court rejected the argument asserted by the defendants that they have held valid mechanical licenses authorizing them to exploit the Musical Works. The court held that audiovisual recordings are not covered by mechanical licenses. The defendants have not met their burden of establishing that the recordings were fixed or manufactured with the consent of the artists and that the recordings were fixed pursuant to an express or valid compulsory license from the copyright holders. Moreover, any mechanical licenses that were not filed prior to the distribution of the related phonorecords are, as a legal matter, invalid.

While the court granted summary on the copyright infringement claim, the court held that a jury must decide certain issues as to willful infringement. There remain questions of fact as to whether certain of the prior licenses were untimely filed or covered by preexisting licenses. This question raises a triable issue on whether untimely Notices of Intention ("NOIs") were recklessly or willfully filed.

The court rejected the defenses of implied license and estoppel asserted by the defendants. The objective facts concerning the course of conduct between the parties do not support a finding that an implied license existed. There is no evidence that the plaintiffs intended recordings that were not fixed or exploited with the appropriate consents to be laundered into lawful reproductions by reason of the compulsory license regime. Accordingly, the implied license defense failed. The court also rejected the drastic remedy of estoppel because the defendants could not prove the first element requiring that the plaintiffs had knowledge of the infringing conduct.

Permanent injunction. The federal district court denied the plaintiffs’ request for a permanent injunction. While the court recognized that there is no question that the plaintiffs have been harmed, that harm is not irreparable because the plaintiffs can be compensated. The balance of hardships and consideration of the public interest does not tip in favor of granting an injunction. The public’s interest in having access to the recordings counsels against the imposition of a permanent injunction.

The case is No. 1:15-cv-04025-ER-HBP.

Attorneys: Barry Isaac Slotnick (Loeb & Loeb LLP) for ABKCO Music, Inc., Colgems-EMI Music Inc. and EMI Algee Music Corp. Chad D. Hansen (Kilpatrick Townsend & Stockton LLP) for William Sagan.

Companies: ABKCO Music, Inc.; Colgems-EMI Music Inc.; EMI Algee Music Corp.

MainStory: TopStory Copyright NewYorkNews

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