3.1 State Criminal Statutes
Each of the states surveyed has criminal laws that (1) prohibit making copies of pre-1972 sound recordings without the right holder’s consent, and (2) prohibit making a recording of a live performance without the consent of the performer.106 These laws also prohibit a variety of other activities, including transporting such recordings; selling or renting, or offering to sell or rent, them; or possessing them with intent to rent or sell. These laws vary slightly from state to state. Some states, including California and Virginia, also prohibit unauthorized copying for use through public performance. Illinois prohibits “use” of unauthorized recordings (but that use must be “for profit”). State criminal laws in five states are described in Appendix A.
Based on the laws in the sample states, library activities with respect to pre-1972 recordings would not come under the plain language of the statutes, provided the library receives no payment and derives no commercial benefit. Criminal liability is conditioned on doing the activities described:
In some statutes, the terms “sale” or “rental” are not modified by words like “for profit” or “for commercial advantage,” presumably because the notion of monetary or other consideration is implicit.111
Criminal laws are strictly construed. As long as a library does not take anything in exchange for streaming, it will not come within the terms of the criminal laws. This is one of the reasons for the assumption made at the outset that libraries will not receive payment for streaming.
There are other defenses that may be available to a library, depending on the state. For example:
(1) In most cases criminal liability attaches only where the activities (recording a performance or copying, transporting, or distributing unauthorized copies) are done “knowingly” or “intentionally” for profit, commercial advantage, or personal financial gain. As long as a library does not act intentionally or knowingly for commercial advantage, it will not violate these laws. Under Illinois law, one can be liable for “negligently” doing certain activities (manufacturing, selling, performing, etc.) with respect to unidentified sound or audio recordings, but the use still must be “for profit” to fall under the law.
(2) Michigan and California have exemptions that would cover libraries and archives, although California’s does not relieve the library of certain obligations to find and compensate the right holder.
(3) Most states have exemptions for “broadcasters,” although the breadth of that term, and whether a library could come within it, are often unclear.
Assuming that these laws are representative of the criminal laws in other states, there is no significant risk that criminal liability would result from a library’s activities in copying sound recordings for preservation or for streaming them to users without charge. It is important to stress that this conclusion is based on a review of a small sample of states, and, particularly where criminal laws are concerned, a comprehensive review of states’ laws should be made.112
3.2 State Civil Law
State civil law protection for live performances and for pre-1972 sound recordings falls under many rubrics, including unfair competition, misappropriation, the rights of privacy and publicity, and “common law copyright.”
The term “common law copyright” is used in different ways by different people. Sometimes it is used narrowly to refer to protection akin to federal copyright that was formerly provided by states for unpublished works prior to 1978, and that some states still extend to pre-1972 sound recordings and certain other works (e.g., unfixed works) not eligible for federal copyright protection. Sometimes the term is used less precisely to refer collectively to the various types of protection that states provide for works of authorship. This study uses the term “common law copyright” in the narrower sense, as described in section 3.2.3.
State civil law in this area is usually common law, that is, based on judicial decisions, although there are some relevant state statutes.113
3.2.1 Unfair Competition/Misappropriation
Some states protect pre-1972 sound recordings under unfair competition law. State unfair competition law has evolved to embrace at least two principal torts. The first is sometimes known as “passing off” or “palming off.” Unfair competition in this sense occurs when a person or an entity “so promotes its goods and services as to create a likelihood that consumers will believe them to be (or to be associated with) the goods and services of another.”114 For example, it is considered palming off for a retailer to advertise or display products of one manufacturer to induce sales, and then substitute the products of a different manufacturer.115 The law developed to protect the reputation or goodwill that one acquires through the “expenditure or investment of money, skill, time and effort.”116
The other major tort embraced in state unfair competition law is known as “misappropriation.” Misappropriation occurs when someone copies or uses another’s valuable asset without payment and often without credit. The second person is not trying to “pass off” his own work as that of the first person, but rather to use the first person’s work without compensation, sometimes taking the credit for it.117
The conceptual distinction between the two principal forms of unfair competition is not reflected in all of the cases. In some states, early cases refer to misappropriation simply as unfair competition but later cases specifically refer to the claim as misappropriation. Other states continue to use the term unfair competition even for claims in the nature of misappropriation. For that reason, this study refers to unfair competition and misappropriation together.
A significant number of the state law cases that have protected performances or recordings of performances are based on claims of unfair competition or misappropriation. For example, Mercury Record Productions, Inc. v. Economic Consultants, Inc.118 was a case brought against an “unlicensed duplicator” that copied popular sound recordings originally recorded between 1929 and 1971, grouped them by year, and sold them on tapes with 16 songs each. The defendant claimed that the record company should not be allowed to bring the lawsuit because it had no continuing property interest in the recordings after they were sold, and that it was the prerogative of the legislature, and not the courts, to grant copyright or any similar protection. The court rejected defendant’s claims and allowed plaintiff to bring a record piracy claim on the grounds of unfair competition/misappropriation. In so doing, the court stated that “it is the duty of this court to act in circumstances where it is apparent that a wrong has been committed, and to furnish a remedy for that wrong when to do so is in accordance with the previous statements of this court and would be fully consistent with the legislatively expressed policy of this state.”119
Ettore v. Philco Television Broadcasting Corp.120 is another case protecting a performance on the basis of unfair competition/misappropriation. The case involved rights in a motion picture of a boxing match. Ettore met (and lost to) Joe Louis in a boxing contest in 1936. A motion picture of the match was made with Ettore’s consent, and he was paid a percentage of the proceeds. Several years later, the defendant broadcast an edited version of the motion picture on television without Ettore’s consent, and Ettore sued. The defendant claimed that it was free to broadcast the motion picture since Ettore had not specifically reserved rights in television broadcasts of the motion picture. The court nevertheless held that the defendant had violated Ettore’s property right in his performance because the motion picture was used for a purpose other than that which was specifically intended. In allowing the motion picture to be made and shown, Ettore had not transferred his television rights, according to the court, because commercial television did not exist at the time of the Ettore-Louis match.121The court characterized the holding as one grounded in unfair competition.
Metropolitan Opera Association v. Wagner-Nichols Recorder Corp.122provides another example of misappropriation, this time in the context of a musical performance. The Metropolitan Opera and Columbia Records joined in a complaint alleging unfair competition against a company that sold unauthorized records of opera performances “bootlegged” from radio broadcasts. The court justified the plaintiffs’ claim of unfair competition as follows:
Plaintiff Metropolitan Opera derives income from the performance of its operatic productions in the presence of an audience, from the broadcasting of those productions over the radio, and from the licensing to Columbia Records of the exclusive privilege of making and selling records of its own performances. Columbia Records derives income from the sale of the records which it makes pursuant to the license granted to it by Metropolitan Opera. Without any payment to Metropolitan Opera for the benefit of its extremely expensive performances, and without any cost comparable to that incurred by Columbia Records in making its records, defendants offer to the public recordings of Metropolitan Opera’s broadcast performances. This constitutes unfair competition.123
Many state law claims for unfair competition in the nature of misappropriation (as distinguished from passing off) are now preempted by federal law because the courts have found that such claims provide copyright or copyright-like protection for works that come within the subject matter of copyright.124 Unfair competition or misappropriation claims are still viable with respect to live performances and other unfixed works and to pre-1972 sound recordings.
3.2.2 Rights of Privacy and Publicity
The right of publicity is an individual’s right to exploit the use of her persona, or identity, for commercial purposes, and to prevent others from exploiting that value. The right of publicity can be divided into two broad categories: (1) the protection of “recognition values”; and (2) the protection of “performance values.”125 There are many similarities with the right of unfair competition, and many cases involving “right of publicity” may also be denominated “unfair competition.”
Protection for “recognition values.” Protection for the “recognition value” of someone’s identity is the better developed of the two categories. The contours of the right of publicity vary from state to state, but in almost all states, it encompasses the use of an individual’s name or picture. In some states, the right of publicity may also extend to a person’s voice, signature, or other identifying characteristics. For example, in Midler v. Ford Motor Co.,126 a California court upheld a claim by Bette Midler concerning use of a “sound alike” who deliberately imitated Midler’s distinctive voice for the audiotrack of a televised automobile ad. The right of publicity protects against uses that diminish the commercial value of an individual’s identity. In some states, the right of publicity grew out of the right to privacy,127 and in others it grew out of unfair competition law. More than half of the states have recognized the right of publicity in some form, whether by statute, common law, or both.128 Of the five states surveyed, four have a statutory right of publicity (see Appendix B).
The right of publicity is generally not limited to famous people.129 In many states it continues to exist after the death of the individual concerned.130Not all uses of someone’s name or likeness violate the right of publicity. For example, uses for purposes of news reports, biographies, public affairs, or the like are generally not actionable.131
Protection for “performance values.” Protection under the right of publicity for performances is less developed than protection for “recognition values.”132 The best-known case involving a performer asserting a right of publicity claim to his performance is Zacchini v. Scripps-Howard Broadcasting Co.,133 in which a local TV news station videotaped and broadcast Zacchini’s entire “human cannonball” act in the course of its coverage of entertainment at a state fair. An Ohio appeals court held that Zacchini had a claim against the broadcaster for infringement of his common law copyright. On appeal, the Ohio Supreme Court recognized plaintiff’s right “to the publicity value of his performance,” but nevertheless dismissed the case on the ground that the news broadcast was constitutionally privileged. The U.S. Supreme Court reversed the Ohio court, and held that the First Amendment did not immunize the broadcaster from Zacchini’s state law right of publicity in his act. The Court stated that “the broadcast of [Zacchini’s] entire performance, unlike the unauthorized use of another’s name for purposes of trade or the incidental use of a name or picture by the press, goes to the heart of [Zacchini’s] ability to earn a living as an entertainer.”134
Ventura v. Titan Sports, Inc.135 was another case that involved the right of publicity in a performance. Wrestling commentator (and former Minnesota governor) Jesse Ventura sued a producer who sold videotapes of wrestling matches for which Ventura was a commentator, without Ventura’s consent. Ventura had worked under an oral agreement that made no mention of videotape royalties or licenses. The Eighth Circuit concluded that Minnesota would recognize a right of publicity and that Titan was unjustly enriched by using Ventura’s performance as embodied in the videotapes. The court affirmed an award of damages for Titan’s exploitation of Ventura’s “commentating performances.”136
Although the right of publicity cases described above involved audiovisual recordings rather than sound recordings, the principle for which they stand—that the right of publicity can protect performances—applies to aural performances as well.
3.2.3 Common Law Copyright
Prior to January 1, 1978 (the effective date of the 1976 Copyright Act), common law copyright protected all unpublished works (manuscripts, artwork, etc.), since those works were not eligible for federal statutory copyright protection until they were published. On January 1, 1978, the law changed. Unpublished works already in existence that met the requirements for federal copyright (those that were original and fixed in a tangible medium of expression) became protected by federal copyright law. Pre-1972 sound recordings were an exception, as discussed above. Since 1978, common law copyright pertains primarily to works not fixed in a tangible medium, such as live performances, and to pre-1972 sound recordings.
While some states use unfair competition or misappropriation law to protect pre-1972 sound recordings, as discussed above,137 other states accord pre-1972 sound recordings “copyright” protection even though they have been published, because they are not eligible for federal protection. For example, in Capitol Records, Inc. v. Naxos of America, Inc.,138 New York’s highest court ruled that the plaintiff could assert a claim for infringement of common law copyright with respect to unauthorized copies of pre-1972 sound recordings that originated in England, even though the recordings were in the public domain in their home country. The court stated that “[c]opyright law is distinguishable from unfair competition, which in addition to unauthorized copying and distribution requires competition in the marketplace or similar actions designed for commercial benefit.”139
States that have protected published sound recordings under unfair competition or right of publicity regimes might provide “common law copyright” protection, similar to the protection described in the Naxos case, to unpublished sound recordings.
3.2.4 State Civil Law Summary
State law protection for performances and sound recordings may be provided under a number of different names. Zacchini, for example, relied on a right of publicity. Professor Thomas McCarthy, author of The Rights of Publicity and Privacy, argues that Zacchini might more properly be viewed as a common law copyright case, but “if a rose is still a rose by any other name, then unauthorized reproduction of a live performance is certainly an invasion of some legal right, no matter the name by which that right is known.”140 The same may be said of unauthorized reproductions of various types of sound recordings.
It is clear from the state cases discussed above and in Appendix C that there can be liability for recording and broadcasting live performances without consent, and for copying and distributing sound recordings without authorization. Some general observations can be drawn about state common law, with the important caveat that they are not based on a comprehensive survey of all states.
In most states it appears that a claim of unfair competition can be brought against a defendant that appropriated a valuable product or asset of plaintiff’s, when that appropriation resulted in commercial harm to the plaintiff, provided commercial benefit to the defendant, or both. This difference (commercial harm versus commercial benefit) could be significant for library use, but it is not something on which the courts have generally focused, because the parties are usually competitors, and commercial harm to one is presumed to benefit the other. If commercial benefit is required, libraries will generally not be liable. One of the assumptions made in this report is that the libraries’ activities would not entail commercial benefit, and that assumption will likely prevail in most instances. On the other hand, if commercial harm is a determining factor, libraries could face potential liability, because harm to a right holder can occur even in the absence of a commercial benefit to the library. The extent to which such harm is likely is discussed in section 4.0. Finally, some states still require that the parties be commercial competitors to recognize a claim141 (which would rule out libraries as a general matter), but others do not.
Similarly, the use of someone’s persona or performance for a commercial advantage appears to be an integral part of a successful common law right of publicity claim. Some states may still require passing off to support a claim of unfair competition, but in most states, it is enough that the defendant appropriated a valuable product or asset of the plaintiff, and that its appropriation resulted in commercial harm to the plaintiff, provided commercial benefit to the defendant, or both.
Unlike a claim for unfair competition, a claim based on common law copyright does not require a showing of competition or commercial benefit, as New York’s highest court held in Capitol Records v. Naxos. As Naxos is a relatively recent case, it is unclear whether other states would follow it and apply “common law copyright” to recordings that have been commercially distributed (or “published,” as that term is commonly understood). But the sound recordings in the examples would be considered unpublished under the laws of many states, so state courts might apply common law copyright rather than unfair competition principles.
There appear to be no common law claims against libraries or archives relating to their use of sound recordings. One cannot conclude, however, that libraries would be considered exempt from all common law claims, regardless of the nature of the sound recording or the scope of the libraries’ use. Common law courts have great flexibility, and the law can change over time. Courts are often willing to find a means to redress a perceived wrong if it is possible to do so.142 As one court has observed, “The common law’s capacity to discover and apply remedies for acknowledged wrongs without waiting on legislation is one of its cardinal virtues.”143 On the other hand, one can safely assume that a library’s conduct would have to be well outside the bounds of traditional library activities to be perceived as wrongful by a common law court. The specific role of libraries and how that role affects consideration of potential liability is discussed further in section 4.2.
With this background, each of the examples will be discussed to determine whether it is the type of performance or recording in which the courts have recognized a protectable interest, and who the potential right holders are. Whether library use is likely to trigger liability, or whether a court would be likely to find the use permissible because of specific statutory exemptions, for lack of a commercial impact, on public policy grounds, or a combination thereof, is considered next.
112 Each library need not do its own survey, of course; the ten-state law study commissioned by the Library of Congress will be helpful in this regard, as would any comprehensive survey done by or on behalf of any library or group of libraries.
121See also CBS, Inc. v. Melody Recordings, Inc., 341 A.2d 348, 353 (N.J. Super. Ct. 1975) (affirming an injunction against the sale of pirated copies of plaintiff’s sound recordings, the court stated that “misappropriation and tortious exploitation of another’s product may constitute unfair competition without a ‘palming off'”).
123Id. at 492. A few older state law cases have enforced express limitations against radio broadcast of sound recordings that accompanied copies sold by the right holder. See, e.g., Waring v. WDAS Broadcasting Station, Inc., 194 A. 631 (Sup. Ct. Pa. 1937); but see RCA Mfg. Co. v. Whiteman, 114 F.2d 86 (2d Cir.), cert. denied, 61 S. Ct. 393 (1940) (legends on records could not restrict radio broadcast since common law right in performances ended with sale of records).
124 In National Basketball Association v. Motorola, the Second Circuit concluded that Metropolitan Opera‘s “broad misappropriation doctrine based on amorphous concepts such as ‘commercial immorality’ or society’s ‘ethics’ is preempted” by federal copyright law. 105 F.3d 841, 851 (2d Cir. 1997). Nevertheless, misappropriation claims are still viable with respect to pre-1972 recordings, and the circumstances of the Metropolitan Opera case are unlikely to occur under the 1976 Copyright Act. Radio broadcasts of live performances are almost invariably recorded, and under the Copyright Act’s definition of “fixation,” this would qualify as a simultaneous fixation that would entitle the recording of the performance to federal copyright protection.
127 Privacy law in the United States encompasses four separate torts: (1) intrusion into the solitude of another; (2) publication of private facts; (3) publicity that casts someone in a “false light”; and (4) appropriation of an individual’s name or likeness. See generally Bruce W. Sanford, Libel and Privacy § 11.1 (2d ed. 2007); Restatement (Second) of Torts § 652A (1977). Appropriation of name or likeness usually arises where the defendant makes use of someone’s name without permission for commercial or advertising purposes, but it can apply whenever the use is for defendant’s “own purposes and benefit.” Restatement (Second) of Torts § 652C, cmt. b (1977); Sanford, supra, § 11.5. Nearly all states recognize the right of privacy, though not all states recognize all four of these causes of action. McCarthy, supra note 127, § 6.2.
130 Eighteen states recognize a postmortem right of publicity. See McCarthy, supra note 127, § 9.18. See, e.g., California (70 years), Cal. Civ. Code § 3344.1 (West 2007); Illinois (50 years), 765 Ill. Comp. Stat. Ann. 1075/30 (LexisNexis 2007); Virginia (20 years), Va. Code Ann. § 8.01-40 (2007). Michigan has no right of publicity statute, but a postmortem right is recognized at common law. New York does not recognize a postmortem right.
136Id. at 731. Ventura performed services for Titan again later, by which time he was aware of the videotape distribution, but waived his right to royalties. However, the court found that Ventura could also recover damages for that period, since his agreement to waive royalties was fraudulently induced. Id. at 732, 733.
137 In some states, this may simply be the way the common law evolved. In other states, common law copyright protection ends upon publication for all works, regardless of whether they are eligible for federal copyright protection, so redress for use of unauthorized sound recordings must be sought through unfair competition, misappropriation, or right of publicity claims.
139Id. at 266. See also CBS, Inc. v. Garrod, 622 F. Supp. 32 (M.D. Fla. 1985). The sound recordings at issue in Garrod were distributed in copies and would be deemed “published” under the definition of publication in the federal copyright law, but the court held that the distribution of copies of pre-1972 sound recordings did not constitute publication under Florida law. It also upheld claims for unfair competition and for conversion.
142 Metropolitan Opera Ass’n v. Wagner-Nichols Recorder Corp., 101 N.Y.S.2d 483 (N.Y. Sup. Ct. 1950), aff’d, 107 N.Y.S.2d 795 (N.Y. App. Div. 1951); Edwards v. Church of God in Christ, No. 220348, 2002 WL 393577, at *3 (Mich. Ct. App. Mar. 8, 2002) (unpublished) (although Michigan does not recognize a claim for misappropriation of an unknown singer’s voice, court upheld her claim for negligent failure to obtain her permission to be taped).
143 Hinish v. Meier & Frank Co., 113 P.2d 438, 447 (Or. 1941), quoted in McCarthy, supra note 127, § 6.4. See also Hurtado v. California, 110 U.S. 516, 530 (1884) (the “flexibility and capacity for growth and adaptation is the peculiar boast and excellence of the common law …”).