22 August 2018Copyright

Ninth Circuit overturns ruling on pre-1972 copyright

The US Court of Appeals for the Ninth Circuit has said that making technical improvements to pre-1972 songs does not turn that content into new tunes that would be covered by post-1972 copyright law.

Senior Circuit Judge Richard Linn delivered the court’s 50-page decision on Monday, August 20.

Under federal copyright law, sound recordings “fixed” after February 15, 1972 are subject to a compulsory licence for digital distribution, as governed by the Sound Recording Act.

In the case at hand, ABS Entertainment owns sound recordings of musical performances which were initially fixed in analogue format before 1972, and it has since re-mastered some of this content into digital format.

The now-defunct CBS Radio operated by paying royalties to the owners of music broadcast on the station and paying the compulsory licence fee (under the Sound Recording Act) for music digitally streamed via its internet platform.

In 2015, ABS and three US-based record companies accused CBS of misappropriation, conversion, and unfair competition after the station transmitted and distributed the re-mastered recordings of pre-1972 content.

ABS said that the re-mastered recordings were embodied in the copyright-protected pre-1972 content, so they do not fall within the realm of the Sound Recording Act’s compulsory fee.

In response, CBS argued that once re-mastered, the recordings became authorised original works which are subject only to federal copyright law.

In 2016, the US District Court for the Central District of California agreed with CBS and said that the re-mastered versions of the songs were original and exclusively governed by federal copyright law.

The California court said that CBS had the right to distribute the re-mastered sound recordings by complying with the licensing requirements under the Sound Recording Act, and this distribution did not infringe the copyright of the pre-1972 content.

However, the Ninth Circuit this week said that the court erred in coming to this conclusion.

Linn declared that a derivative sound recording which is “distinctly identifiable solely by the changes in medium” does not meet the minimum level of originality for content to be protected by copyright.

Creating an authorised digital re-mastering of a copyright-protected pre-1972 song is not sufficient to bring the new recording within the remit of federal copyright law, Linn said, because “derivative works do not start from scratch”.

The “full force of the copyright in the pre-existing work is preserved despite incorporation into derivative work”, Linn concluded.

The Ninth Circuit reversed the grant of summary judgment and remanded the matter for further proceedings.

James Griffith, special counsel at Marshall, Gerstein & Borun, said the district court’s decision was “rather surprising and quite clearly erroneous”, so the Ninth Circuit’s reversal was appropriate.

Re-mastering is “designed to accurately capture the essential character of the original in a new medium, not to alter the character of the original in any material way that comprises additional ‘authorship’”, Griffith explained.

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories like this sent straight to your inbox.

Today's top stories

Nokia announces 5G patent licence fees

Steve Madden sues YSL as IP relations break down

Bob Dylan’s whiskey brand targeted in infringement suit

Fitzpatrick to join Venable by end of year

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at