Judge Graffeo then used Wheaton v. Peters as a springboard for a lengthy analysis that has been heavily criticized because it bounced indiscriminately back and forth between cases dealing with two different issues: does the issuance (“publication”) of phonorecords under the 1909-1976 Copyright Act divest the owner’s right to the sound recording; and, does it divest the owner’s right to the composition contained on the recording? As we have seen in the previous installments of this blog, these are very different issues, each with their own history and law, but Graffeo mashed them together indiscriminately.
The Fred Waring and Paul Whiteman cases from the 1930s, the Metropolitan Opera v. Wagner-Nichols case (1950), Capitol Records v. Mercury Records (1955), Goldstein (1973), Rosette v. Rainbow Records (1976), and even the Z. Z. Top and Rolling Stones cases from the 1990s — Graffeo threw them all into the rhetorical pot. It seemed at first reading to create a nonsensical mishmash. But if you dig deeper, you can discern in Judge Graffeo’s legal ping-pong a common theme:
State common-law copyright protection can continue beyond the technical definition of publication in the absence of contrary statutory authority . . .because the federal Copyright Act did not protect musical recordings, state common-law could supply perpetual copyright protection to recordings without regard to the limitations of “publication” under the federal act . . . until 2067, no federal or state statutory impediment constricts this common-law durational component for pre-1972 sound recordings.
This meant that no “rule of the shorter term” applied. Regardless of when a work’s copyright expires in its home nation, its copyright is perpetual in the State of New York. I have argued previously that given the convoluted language of section 301 of the 1976 Copyright Act, there is some question as to what exactly will happen to the legal status of pre-1972 phonorecords on February 15, 2067. I also looked for some hint in this case that Judge Graffeo thinks that New York common-law copyright will outlast the federalization of pre-1972 phono records. But, her language is pretty ironclad; she has no doubt that they will pass out of the control of state law on February 15, 2067, unless Congress changes the date:
With the 1971, 1976 and subsequent congressional amendments to the federal Copyright Act, New York common law protection has been abrogated . . . state common-law copyright protection is no longer perpetual for sound recordings not covered by the federal act . . .The musical recordings at issue in the case, created before February 15, 1972, are therefore entitled to copyright protection under New York common-law until the effective date of federal preemption—February 15, 2067.
And finally, tucked in at the very end of her opinion, was an admission 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” [emphasis added]. In addition:
A copyright infringement cause of action in New York consists of two elements: (1) the existence of a valid copyright; and (2) unauthorized reproduction of the work protected by the copyright.
You can read Capitol Records v. Naxos of America up, down, forwards and backwards, and you will never read a flat-out conclusion that Naxos committed copyright infringement. And the reason I believe you won’t is because they didn’t. They did not reproduce any of the CDs that were the subject of the controversy in the State of New York. So, in accordance with the 1973 Goldstein decision, Naxos could not have violated any New York music piracy or state copyright law. Moreover, they did not distribute CDs in the state knowing they had been reproduced without the permission of a legitimate owner.
From the perspective of Judge Graffeo, this was never a case about what Naxos did or didn’t do—that was irrelevant. This was a case about power. It was about who got to determine whether something was “published” or not: the state of New York or the federal government. Moreover, it will be New York’s law, not the federal government’s, that will be compared with foreign law to determine how ownership and duration should be awarded to a foreign-origin work. In essence, in matters of common-law copyright, New York will act as its own sovereign nation.
Will Capitol Records v. Naxos of America change the legal landscape? I doubt it. I don’t see it being used much as legal precedent, even in New York. I think Capitol v. Naxos was a lot of smoke and noise that didn’t really stand for much—after all, it never reached a conclusion on the core issue of infringement. The only thing you can take from it is this: don’t press your reissue CDs in the State of New York. And, it would probably be a pretty good idea to avoid selling them there as well.