IP Law Daily Owners of pre-1972 sound recordings cannot stop performances of remastered versions of the songs
Wednesday, June 1, 2016

Owners of pre-1972 sound recordings cannot stop performances of remastered versions of the songs

Owners of pre-1972 sound recordings cannot stop performances of remastered versions of the songs

By Jody Coultas, J.D.

A sound engineer’s remastering of a pre-1972 sound recording—through subjectively and artistically altering the work’s timbre, spatial imagery, sound balance, and loudness range, but otherwise leaving the work unedited—is entitled to federal copyright protection, according to the federal district court in Los Angeles (ABS Entertainment, Inc. v. CBS Corporation, May 30, 2016, Anderson, P.). Therefore, CBS Corporation was granted summary judgment of California copyright claims filed by ABS Entertainment, Inc., Barnaby Records, Inc., Brunswick Record Corporation, and Malaco, Inc. (collectively, Plaintiffs).

Plaintiffs distribute, sell, and license the reproduction, distribution, and performance of sound recordings for use in albums, CDs, audiovisual works, and for streaming and downloading over the Internet. Sound recordings of musical performances initially fixed prior to February 15, 1972 (pre-1972 Sound Recordings) were originally recorded in an analog format, but have been mastered, and sometimes remastered, into the newest formats. Plaintiffs have also entered into license agreements which allowed for the reproduction, remastering, and new distribution of the works, including as part of compilation albums with other sound recordings.

CBS owns and operates terrestrial broadcast radio stations, as well as online and mobile applications that stream music. Plaintiffs accused CBS of violating the California copyright law by publicly performing, either through terrestrial radio broadcasts or digital internet streams, the pre-1972 Sound Recordings. CBS moved for summary judgment, contending that it has only publicly performed post-1972 remastered versions of Plaintiffs’ works which are governed by federal copyright law.

A derivative sound recording incorporates some preexisting sounds that were previously registered or published, or sounds that were fixed, before February 15, 1972. The preexisting recorded sounds must have been rearranged, remixed, or otherwise altered in sequence or character, or there must be some additional new sounds. The new or revised sounds must contain at least a minimum amount of original sound recording authorship. Whether a derivative work is original requires a showing that: “(1) the original aspects of a derivative work must be more than trivial and (2) the original aspects of a derivative work must reflect the degree to which it relies on preexisting material and must not in any way affect the scope of any copyright protection in that preexisting material.”

CBS submitted declarations from music engineers and producers stating that remastered works will sound noticeably different based on the engineer who is responsible for remastering the work, and that the remastering process involves subjectivity, originality, and produces works of art. An expert for CBS also found that the versions used by CBS were: (1) “remastered” versions of the sound recordings at issue; (2) remastered versions of previously-remastered, and thus different, versions of the sound recordings; or (3) a completely different performance than the sound recording owned. Plaintiffs’ expert agreed that there were differences in equalizations, spatial imagery, and loudness range.

CBS’s performance of remastered versions of the pre-1972 sound recordings were sufficiently original to qualify as federally copyrightable derivative works, according to the court. Plaintiffs argued that a change in a work’s medium of expression is not, by itself, sufficient to confer copyright protection. However, there was no genuine dispute that, during the remastering process, some perceptible changes were made to the Pre-1972 Sound Recordings. For the 57 works reviewed by both parties’ experts, the court held that the changes made during the remastering process were original within the meaning of the Copyright Act, and entitled to federal copyright protection.

Plaintiffs’ argument that a pre-1972 sound recording governed by state copyright law cannot be converted into a post-1972 derivative work governed by federal law was rejected by the court. There was no dispute that the preexisting works were within the general subject matter of copyright. Also, Plaintiffs’ argument was unpersuasive because “[s]ound recordings are ‘derivative’ works of the preexisting musical composition . . . .” The exclusion of pre-1972 Sound Recordings from protection under federal law does not preclude a finding that derivative works based on pre-1972 Sound Recordings are federally copyrightable.

The argument that “any changes during the remastering process are not independent and original expression entitled to protection” because “removing Plaintiffs’ original sound recording from the remastered copy would leave nothing to perceive” was not supported by case law or the evidence of the case, according to the court. Had Plaintiffs shown that the works which CBS performed were created either without authorization, or pursuant to a license which affirmatively barred the creation of a copyrightable derivative work, Plaintiffs would have defeated CBS’s summary judgment motion. However, Plaintiffs failed to do so.

Finally, Plaintiffs claimed that they retained their common law rights in their pre-1972 Sound Recordings embedded in the derivative works performed by CBS because the copyright in the derivative works extends only to the original and independent expression contained therein. While the court agreed with this assertion, it disagreed with Plaintiffs’ further conclusion that this results in CBS having infringed Plaintiffs’ copyrights. The relevant question is whether CBS had the right to perform the remastered, post-1972 sound recordings. Under federal law, CBS has the right to perform post-1972 sound recordings on terrestrial radio without payment, and to perform them through digital platforms under a statutory compulsory license. There is no allegation that CBS has failed to comply with any of its royalty payment obligations under federal law.

The court also concluded that CBS would be entitled to partial summary judgment as to 117 of Plaintiffs’ pre-1972 Sound Recordings that were not examined by the parties’ experts. Plaintiffs admitted that they did not possess “actual, first-hand knowledge of which of the pre-1972 sound recordings listed on [Schedules A1-A4] CBS publicly performed in California after August 17, 2011.” Rather, Plaintiffs relied on CBS’s own records and third party reports to show that CBS publically performed the Pre-1972 Sound Recordings. Plaintiffs cannot create a genuine dispute of material fact that CBS performed the pre-1972 Sound Recordings by only demonstrating that CBS publicly performed a sound recording which has the same title and artist as one of the works owned by Plaintiffs. Absent a comparative analysis conducted by the parties’ experts which confirms that CBS performed a pre-1972 Sound Recording, the court cannot conclude that CBS performed a sound recording owned by Plaintiffs from nothing more than a song title and artist listed in a report.

The case is No. CV 15-6257 PA (AGRx).

Attorneys: Alan P. Block (McKool Smith Hennigan PC) for ABS Entertainment, Inc., Barnaby Records Inc. and Brunswick Record Corp. Amit Quint Gressel (Irell and Manella LLP) for CBS Corp. and CBS Radio Inc.

Companies: ABS Entertainment, Inc.; CBS Corporation

MainStory: TopStory Copyright CaliforniaNews

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