text:
    [830 NE2d 250, 797 NYS2d 352]
    Capitol Records, Inc., Appellant, v Naxos of America, Inc., Respondent.
    Argued February 8, 2005;
    decided April 5, 2005

      POINTS OF COUNSEL

      Mayer, Brown, Rowe & Maw LLP, New York City (Philip Allen Lacovara and Todd Lundell of counsel), and Kaplan & Leven

      son LLP (Paul R. Levenson of counsel) for appellant.
    I. New York common law prohibits misappropriation of pre-1972 sound, recordings until 2067, despite the expiration of a foreign statutory copyright. (Firma Melodiya v ZYX Music GmbH, 882 F Supp 1306; Capitol Records v Greatest Records, 43 Misc 2d 878; Metropolitan Opera Assn, v Wagner-Nichols Recorder Corp., 199 Misc 786, 279 App Div 632; Apple Corps v Adirondack Group, 124 Misc 2d 351; Radio Corp. of Am. v Premier Albums, 19 AD2d 62; A & M Records, Inc. v M.V.C. Distrib. Corp., 574 F2d 312; G.M.L., Inc. v Mayhew, 188 F Supp 2d 891; CBS, Inc. v Garrod, 622 F Supp 532, 803 F2d 1183; People v Winley, 105 Misc 2d 474; Goldstein v California, 412 US 546.) II. New York common law requires showing only ownership of a valid right and unauthorized copying but does not require a separate showing of bad faith. (Capitol Records v Greatest Records, 43 Misc 2d 878; Roy Export Co. Establishment of Vaduz, Liechtenstein v Columbia Broadcasting Sys., Inc., 672 F2d 1095; Green v Lindsey, 885 F Supp 469; Capitol Records, Inc. v Wings Digital Corp., 218 F Supp 2d 280; G. Ricordi & Co. v Haendler, 194 F2d 914; Mastro Plastics Corp. v Emenee Indus., 16 AD2d 420, 12 NY2d 826; Saratoga Vichy Spring Co., Inc. v Lehman, 625 F2d 1037; Eagle Comtronics v Pico Prods., 256 AD2d 1202; Computer Assoc. Inti., Inc. v Computer Automation, Inc., 678 F Supp 424.) III. Naxos of America, Inc.’s conduct constitutes misappropriation and infringement of Capitol Records, Inc.’s common-law copyright, despite alleged enhancement of sound quality. (Durham Indus., Inc. v Tomy Corp., 630 F2d 905; Metropolitan Opera Assn, v Wagner-Nichols Recorder Corp., 199 Misc 786; Capitol Records v Greatest Records, 43 Misc 2d 878; Firma Melodiya v ZYX Music GmbH, 882 F Supp 1306; Apple Corps v Adirondack Group, 124 Misc 2d 351; UMG Recordings, Inc. v MP3.Com, Inc., 92 F Supp 2d 349; Harvey Mach. Co. v Harvey Aluminum Corp., 9 Misc 2d 1078; Eldred v Ashcroft, 537 US 186; Agee v Paramount Communications, Inc., 853 F Supp 778, 59 F3d 317.)

      Schiff Hardin, LLP, New York City (Maxim H. Waldbaum, Lori D. Greendorfer and John Becker of counsel), for respondent.
    Naxos of America, Inc. is entitled to defeat Capitol Records, Inc.’s claim for infringement of common-law copyrights in the source recordings. (Capitol Records v Mercury Records Corp., 221 F2d 657; Agee v Paramount Communications, Inc., 853 F Supp 778, 59 F3d 317; Hasbro Bradley, Inc. v Sparkle Toys, Inc., 780 F2d 189; Procter & Gamble Co. v Colgate-Palmolive Co., 199 F3d 74; Saratoga Vichy Spring Co., Inc. v Lehman, 625 F2d 1037; Computer Assoc. Intl., Inc. v Computer Automation, Inc., 678 F Supp 424; Eagle Comtronics v Pico Prods., 256 AD2d 1202; Metropolitan Opera Assn, v Wagner-Nichols Recorder Corp., 199 Misc 786, 279 App Div 632; Fame Publ. Co., Inc. v Alabama Custom Tape, Inc., 507 F2d 667; Green v Lindsey, 885 F Supp 469, 9 F3d 1537.)

      Loeb & Loeb LLP, New York City (Barry I. Slotnick and Eleanor M. Lackman of counsel), and Stanley Pierre-Louis, Washington, D.C., for Recording Industry Association of America, amicus curiae.
    I. New York common-law copyright remains in effect despite expiration of foreign statutory copyright. (Fonotipia Ltd. v Bradley, 171 F 951; Apple Corps v Adirondack Group, 124 Misc 2d 351; Radio Corp. of Am. v Premier Albums, 19 AD2d 62; Metropolitan Opera Assn, v Wagner-Nichols Recorder Corp., 199 Misc 786, 279 App Div 632; Dowling v United States, 473 US 207; Firma Melodiya v ZYX Music GmbH, 882 F Supp 1306; Capitol Records v Greatest Records, 43 Misc 2d 878; Goldstein v California, 412 US 546; Capitol Records v Mercury Records Corp., 221 F2d 657; Ferris v Frohman, 223 US 424.) II. A cause of action for infringement of a common-law copyright does not require a showing of bad faith. (International News Serv. v Associated Press, 248 US 215; Apple Corps v Adirondack Group, 124 Misc 2d 351; Metropolitan Opera Assn, v Wagner-Nichols Recorder Corp., 199 Misc 786, 279 App Div 632; Fonotipia Ltd. v Bradley, 171 F 951; Capitol Records v Greatest Records, 43 Misc 2d 878; Radio Corp. of Am. v Premier Albums, 19 AD2d 62; Roy Export Co. Establishment of Vaduz, Liechtenstein v Columbia Broadcasting Sys., Inc., 672 F2d 1095, 459 US 826; Electrolux Corp. v Val-Worth, Inc., 6 NY2d 556; Saratoga Vichy Spring Co., Inc. v Lehman, 625 F2d 1037; Feist Pubis., Inc. v Rural Tel. Serv. Co., Inc., 499 US 340.) III. A “new product” founded on a misappropriated work is an infringement of the common-law copyright in the original work. (Stewart v Abend, 495 US 207; Grand Upright Music Ltd. v Warner Bros. Records, Inc., 780 F Supp 182; Jarvis v A & M Records, 827 F Supp 282; Metropolitan Opera Assn, v Wagner-Nichols Recorder Corp., 199 Misc 786; Apple Corps v Adirondack Group, 124 Misc 2d 351; Harvey Mach. Co. v Harvey Aluminum Corp., 9 Misc 2d 1078; Capitol Records v Greatest Records, 43 Misc 2d 878; A&M Records, Inc. v Napster, Inc., 239 F3d 1004; Micro Star v Formgen Inc., 154 F3d 1107; Castle Rock Entertainment, Inc. v Carol Publ. Group, Inc., 150 F3d 132.)
   OPINION OF THE COURT

Graffeo, J.

Sound recordings produced after February 15, 1972 can be protected from infringement under federal copyright law but Congress did not extend statutory protection to recordings created before that date. In a certified question, the United States Court of Appeals for the Second Circuit asks us whether there is common-law copyright protection in New York for sound recordings made prior to 1972.

This case involves a dispute between two music recording companies. Capitol Records, Inc. owns the rights to several classical recordings made in the 1930s. Naxos of America, Inc. copied those recordings from the original shellac record format and, using technological advances, remastered the recordings for sale to the public as compact discs. Naxos did not request permission from Capitol to use the recordings. The issue here is whether Capitol may maintain a copyright infringement action against Naxos premised on the common law of New York. Because the answer to this question will have significant ramifications for the music recording industry, as well as these litigants, we were offered and accepted certification.

I. Factual and Procedural Background

During the 1930s, the Gramophone Company Limited, currently known as EMI Records Limited—the parent company of Capitol—recorded classical musical performances of three world-renowned artists: Yehudi Menuhin’s July 1932 performance of Edward Elgar’s “Violin Concerto in B minor, Opus 61”; Pablo Casals’ performances of J.S. Bach’s cello suites, recorded between November 1936 and June 1939; and Edwin Fischer’s performances of Bach’s “The Well Tempered Clavier, Book I,” recorded between April 1933 and August 1934, and of Bach’s “The Well Tempered Clavier, Book II,” recorded between February 1935 and June 1936. The artists’ contracts specified that Gramophone would have absolute, worldwide rights to the performances, including the right to reproduce and sell copies of the performances to the public.

Gramophone recorded all of the performances in England. At that time, the United Kingdom provided statutory copyright protection to sound recordings for 50 years (see UK Copyright Act of 1911, 1 & 2 Geo 5, ch 46, § 19). Thus, all of the Gramophone recordings at issue had entered the public domain in the United Kingdom by 1990.

In 1996, subsidiaries of EMI entered into a series of agreements whereby Capitol was granted an exclusive license to exploit the Gramophone recordings in the United States. Using modern electronic methods, Capitol remastered the original recordings to improve their audio quality and transferred them to digital format for sale to the public.

Naxos also wished to preserve these important historical recordings. It located copies of the original 1930s shellac recordings and undertook its own multistep restoration process in the United Kingdom. The remastered compact disc versions produced by Naxos were distributed for sale in the United States beginning in 1999, competing with the compact disc products marketed by Capitol. Naxos never obtained a license from Capitol and rebuffed Capitol’s demand to cease and desist the sale of the Naxos compact discs.

Capitol commenced an action against Naxos in the United States District Court for the Southern District of New York in 2002. The complaint set forth claims of common-law copyright infringement, unfair competition, misappropriation and unjust enrichment, all of which were premised on the law of the State of New York, the situs of the alleged infringement. Naxos moved to dismiss for failure to state a claim, arguing that the recordings had entered the public domain in the United Kingdom and, hence, the United States as well. Capitol moved for, among other relief, partial summary judgment on liability.

The District Court granted summary judgment to Naxos. The court characterized Capitol’s cause of action as a “hybrid copyright, unfair competition” claim and concluded that Capitol did not have intellectual property rights in the original recordings because its copyrights had expired in the United Kingdom. (262 F Supp 2d 204, 210 [2003].) With respect to the unfair competition cause of action, the District Court opined that the Naxos recordings were not a “duplicate” or “imitation” of the original recordings but “an entirely new and commercially viable product” because the original shellac records were obsolete and Naxos had removed “numerous sound imperfections” from the records. (Id. at 213, 214.) Finding that public policy favored the preservation and redissemination of classical performances, the court held that Capitol failed to show that Naxos had engaged in the type of bad faith required to sustain an unfair competítion cause of action. In a second written decision, the court adhered to its ruling.

On appeal, the Second Circuit determined that this case raises several unsettled issues of New York law. After noting that, under federal law, “it is entirely up to New York to determine the scope of its common law copyright with respect to pre-1972 sound recordings,” the Second Circuit certified the following question to this Court: “In view of the District Court’s assessment of the undisputed facts, but without regard to the issue of abandonment, is Naxos entitled to defeat Capitol’s claim for infringement of common law copyrights in the original recordings?” (372 F3d 471, 478, 484 [2004].) We are also asked to answer three questions:

“(1) ‘Does the expiration of the term of a copyright in the country of origin terminate a common law copyright in New York?’ (2) ‘Does a cause of action for common law copyright infringement include some or all of the elements of unfair competition?’
(3) ‘Is a claim of common law copyright infringement defeated by a defendant’s showing that the plaintiffs work has slight if any current market and that the defendant’s work, although using components of the plaintiffs work, is fairly to be regarded as a “new product”?’ ” {Id. at 484-485.)

II. English Copyright Law

Because of the close connection between the evolution of copyright protection in England and the American adaptation of copyrights, it is helpful to examine the historical roots of property rights in tangible intellectual products (see generally Eldred v Ashcroft, 537 US 186, 200 [2003] [when examining copyright law, “ ‘a page of history is worth a volume of logic’ ”], quoting New York Trust Co. v Eisner, 256 US 345, 349 [1921] [Holmes, J.]).

With the introduction of the printing press in England in the 15th century, a commercial interest in written works was born. It was, however, not authors but printers and publishers who initially sought to control the right to publish literary works {see Patterson, Copyright in Historical Perspective, at 6, 21). The concept of an exclusive right to reproduce works sprang from the commercial objectives of stationers or printers who wished to create a monopoly over the printing trade (see id. at 28-64). At the same time, the Crown had an interest in maintaining censorship authority over the press. Thus, the granting of an exclusive right to reproduce printed materials served the government’s desire to control the flow and content of information, and supported the economic viability of the printers’ trade guild (see id. at 223). This symbiotic relationship gave rise to early English copyright laws, such as those issued by the Star Chamber in its Decrees of 1586 and 1637, which reflected trade and guild regulations that assisted in preserving government censorship (see id. at 6, 9-11, 121, 125).

After the abolition of the Star Chamber in 1641 and the civil war between the Crown and Parliament, English law began to recognize an author’s natural property right to control the dissemination of a literary creation (see id. at 160-162; see also 2 Blackstone, Commentaries on the Laws of England, at 405-406 [1769]; Millar v Taylor, 98 Eng Rep 201, 257, 4 Burr 2303, 2406-2407 [KB 1769] [Mansfield, L.C.J.] [discussing the “uniform( )” decisions of the Chancery Court]; 98 Eng Rep at 212, 4 Burr at 2323 [Willes, J.] [same]). Parliament’s passage of the Statute of Anne in 1709 (8 Anne ch 19) signaled an attempt to end government censorship and trade guild monopoly. It broadened the concept of copyrights to include the ability of an author to decide whether a literary work would be published and disseminated to the public (referred to as the “right of first publication”) and, if distributed, how the work would be reproduced in the future. The Statute of Anne vested an author or publisher of a literary work with statutory copyright protection for specified time periods—new works received 14 years of copyright protection (with the possibility of a 14-year renewal) and previously published works were entitled to 21 years of protection (see Patterson, Copyright in Historical Perspective, at 143-150).

In the latter half of the 18th century, a recognition emerged that the creation of a literary work should vest rights in its author similar to the ownership rights in perpetuity associated with other forms of tangible property. The common law embraced this concept of ownership for literary works (see 2 Blackstone, Commentaries on the Law of England, at 405-406). This caused a “great question of literary property” to arise (Proceedings in the Lords on the Question of Literary Property, 17 Parliamentary History of England, at 953, 953-954 n [HL 1774]): did the Statute of Anne supplant the common law or did it provide additional rights and remedies that coexisted with the common law?

The first definitive ruling on this question appears in Millar v Taylor (98 Eng Rep 201, 4 Burr 2303 [KB 1769]). Millar, a bookseller, had purchased the rights to a certain book from its author. The dispute involved the unauthorized reproduction of the book by another publisher after copyright protection extended by the Statute of Anne had expired. The primary issues were whether common-law rights continued to exist in perpetuity after the first publication of a literary work and, if so, whether the Statute of Anne had abrogated the perpetual common-law copyright. In a 3-1 decision in favor of the bookseller, the court of King’s Bench concluded that the common law furnished perpetual copyright protection that did not terminate upon the first publication of a literary work. More importantly, the Statute of Anne was viewed as not extinguishing common-law protections (see 98 Eng Rep at 252-253, 4 Burr at 2398-2399 [Mansfield, L.C.J.]; see also Patterson, Copyright in Historical Perspective, at 168-172).

Several years later, however, the House of Lords reached a different result in the seminal case of Donaldson v Beckett (4 Burr 2408; 17 Parliamentary History of England, at 953 [HL 1774]). Relying on the Millar precedent, the Chancery Court had granted an injunction against the sale of an unauthorized reproduction of a literary work even though the work was not entitled to protection under the Statute of Anne. Given the importance of the issues presented, the House of Lords sought advisory opinions from 12 judges on five questions.* 1 The judges were asked to rule on whether the common law recognized the right of first publication; and if perpetual protection existed in common law for literary works, whether the Statute of Anne operated to curtail that protection.

The judges determined that the common law recognized a right of first publication (see Donaldson v Beckett, 4 Burr at 2417 [vote was 8-3]; cf. Patterson, Copyright in Historical Perspective, at 175 [vote was 10-1]) and that the common-law copyright protection extended beyond first publication into perpetuity (see Donaldson v Beckett, 4 Burr at 2417 [vote was 7-4]). By a 6-5 margin, the judges disagreed with the Millar court and concluded that the Statute of Anne was intended to abrogate the common law with respect to the duration of copyright protection (see id.). Applying the restrictions of the Statute of Anne, the House of Lords reversed and rescinded the injunction (see id.; Proceedings in the Lords on the Question of Literary Property, 17 Parliamentary History of England, at 958 n). The supremacy of statutory time limitations for copyright protection was now firmly established in English law.

III. Development of American Copyright Law

We enter the colonial era in America. In the midst of the Revolutionary War and transformation of the British colonies into independent states and commonwealths, it was generally presumed that colonial common law, derived from English law, should be applied as long as it was consistent with the acts of the colonial legislatures. Notably, preservation of existing common law was addressed in the first Constitution of the State of New York (see NY Const art XXXV [1777] [renumbered as article I, § 14 and amended by Constitutional Convention of 1938]). Our Founders were aware that there was common-law copyright protection in England, as evidenced in James Madison’s writings, which observed that “[t]he copyright of authors has been solemnly adjudged, in Great Britain, to be a right of common law” (Madison, Federalist No. 43).

Similar to the British experience, the new states responded to the needs of authors and publishers by adopting statutory copyrights. Using the Statute of Anne as a model, Connecticut, followed by Massachusetts and Maryland, enacted statutes assuring copyright protection for between 14 and 28 years following first publication (see Library of Congress, Copyright Enactments, 1783-1900, at 9-14). Soon thereafter, the Colonial Congress (operating under the Articles of Confederation) recommended that each state pass legislation providing at least 14 years of copyright protection after first publication (id. at 9). Twelve of the 13 original states would eventually heed this call (see id. at 14-29; Nachbar, Constructing Copyright’s Mythology, 6 Green Bag 2d 37, 38 [Autumn 2002]). When the New York Legislature acted, it contemplated the existence of common-law copyright protections separate from statutory rights: “nothing in this act, shall extend to effect prejudice, or confirm the rights, which any person may have, to the printing or publishing of any book or pamphlet, at common law, in cases not mentioned in this act” (L 1786, ch 54, § IV).

As the drafting of the national Constitution was underway, the Founders decided that federal copyright protection would be more effective and desirable than leaving the matter to the discretion of the states (see Madison, Federalist No. 43; Patterson, Copyright in Historical Perspective, at 192-193). In fact, the need for “national protection for intellectual property seems to have been accepted at first and full impression by both the [Constitutional] Convention and the states adopting the Constitution” (Sutak, The Great Motion Picture Soundtrack Robbery, at xiii-xiv [1976]). This fundamental belief in the need for uniform copyright protection led to the constitutional provision vesting Congress with the “Power ... To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries” (US Const, art I, § 8 [8]). When the first Congress convened under the authority of the new Constitution, it enacted America’s first federal copyright statute—the Copyright Act of 1790. The Act provided the author “of any map, chart, book or books,” or the author’s assignee, the exclusive “right and liberty of printing, reprinting, publishing and vending such map, chart, book or books” for up to 28 years (Act of May 31, 1790 § 1 [1st Congress, 2d Sess, ch 15], 1 US Stat 124, reprinted in Library of Congress, Copyright Enactments, 1783-1900, at 30-32).

The American counterpart to Millar and Donaldson reached the United States Supreme Court in the case of Wheaton v Peters (8 Pet [33 US] 591 [1834]). The plaintiff, who had been the third official reporter for the United States Supreme Court, invoked statutory and common-law copyright claims to prevent his successor from copying and republishing material contained in the volumes published by the first three official reporters (see Patterson, Copyright in Historical Perspective, at 203). The Supreme Court, with two Justices dissenting, remanded for factual determinations on the statutory copyright claim but held that Wheaton could not maintain a common-law copyright cause of action. The majority and dissenting opinions extensively debated the impact of Millar and Donaldson on colonial copyright law. The majority acknowledged that the common law insured copyright protection prior to publication but believed that in the absence of federal common law under our constitutional system, a party seeking common-law protection must look to the state where the controversy arose (see Wheaton v Peters, 8 Pet [33 US] at 658).

The lasting effect of the Wheaton decision was that it “became accepted, and in most cases unquestioned, doctrine that ... it was the act of publication which divested common law rights” (1 Nimmer on Copyright § 4.02 [C], at 4-17). New York courts also adhered to this view with regard to literary works, declaring the “settled” principle that “a statutory copyright operates to divest a party of the common-law right” (Jewelers’ Mercantile Agency v Jewelers’ Weekly Publ. Co., 155 NY 241, 247 [1898]; see e.g. Palmer v De Witt, 47 NY 532, 536 [1872]).

With the dawn of the 20th century, courts throughout the country were confronted with issues regarding the application of copyright statutes, which were created with sole reference to the written word, to new forms of communication. One of the first such challenges involved music. In White-Smith Music Publ. Co. v Apollo Co. (209 US 1 [1908]), the United States Supreme Court was asked to determine whether the federal Copyright Act encompassed perforated rolls of music used in player pianos. Although acknowledging that the federal statute had been amended as far back as 1831 to include “musical composition[s],” the Court believed that only written works that could be “see[n] and read” met the requirement for filing with the Library of Congress—a prerequisite to securing federal copyright protection {id. at 17). Because the music rolls were incapable of being read by a person, the Court concluded that federal statutory protection for “copies or publications of the copyrighted music” did not extend to music rolls {id. at 18).

Following the White-Smith decision, Congress passed the Copyright Act of 1909. Since the Supreme Court had declared that player piano rolls and, by implication, sound recordings could not be “published” (i.e., read by a person) under federal law, Congress did not include audio musical works within the scope of the statute {see Keller and Cunard, Copyright Law: A Practitioner’s Guide § 1:3:1, at 1-18 [Aug. 2004]). Despite the fact that sound recordings could not be “published” under federal law, they were eligible for state common-law protection (see Wheaton v Peters, 8 Pet [33 US] at 687 [Thompson, J., dissenting]). To insure that the 1909 Act would not be interpreted to deny any existing common-law protection, Congress explicitly stated that the Act “shall [not] be construed to annul or limit the right of the author or proprietor of an unpublished work, at common law or in equity, to prevent the copying, publication, or use of such unpublished work without his consent, and to obtain damages therefor” (17 USC § 2, added by 35 US Stat 1076 [1909]). Congress therefore confirmed that, although sound recordings were not protected under federal law, there was nothing to prevent the states from guaranteeing copyright protection under common law.

State courts then had to deal with the operation of this dual system of copyright protection. In Waring v WDAS Broadcasting Sta. (327 Pa 433, 194 A 631 [1937]), the plaintiff, a conductor and owner of an orchestra, had contracted with a phonograph company to produce recordings of the orchestra’s performances to be sold to phonograph dealers and the public. To avoid interfering with a different contract the orchestra had for weekly radio broadcasts of live performances, the record labels contained a printed warning that they were “[n]ot licensed for radio broadcast.” (327 Pa at 436, 194 A at 633.) The plaintiff sued to prevent the owner of a radio station from broadcasting the recorded performances over the airwaves.

The Supreme Court of Pennsylvania found that the records were protected by state common law. Beginning with the premise that sound recordings were not copyrightable under federal law, the court explained:

“[a]t common law, rights in a literary or artistic work were recognized on substantially the same basis as title to other property. Such rights antedated the original copyright act of 8 Anne c. 19, and, while it has been uniformly held that the rights given by the act supersede those of the common law so far as the act applies . . ..the common-law rights in regard to any field of literary or artistic production which does not fall within the purview of the copyright statute are not affected thereby” (327 Pa at 439, 194 A at 634).

The court declared that a performer who transforms a musical composition into a sound product creates “something of novel intellectual or artistic value [and] has undoubtedly participated in the creation of a product in which he is entitled to a right of property” (327 Pa at 441, 194 A at 635). Even if the common law offered protection to sound recordings only to the point of first publication, the court held that the sale of records was not a publication of the work that operated to divest the orchestra of its common-law property right because the phonograph records had been marked “[n]ot ... for radio broadcast,” which indicated that the manufacturer did not intend, by the sale alone, to make the records the “ ‘common property’ ” of the public (327 Pa at 443, 194 A at 636, quoting American Tobacco Co. v Werckmeister, 207 US 284, 300 [1907]).

A similar dispute arose in New York in Metropolitan Opera Assn, v Wagner-Nichols Recorder Corp. (199 Misc 786 [Sup Ct, NY County 1950], affd 279 App Div 632 [1st Dept 1951]). The plaintiffs operatic performances had been broadcast on radio and records of the performances were sold to the public. The defendant copied those performances and created its own records for sale. In granting an injunction preventing the sale of the defendant’s records, the trial court observed that “[a]t common law the public performance of a play, exhibition of a picture or sale of a copy of the film for public presentation did not constitute an abandonment of nor deprive the owner of his common-law rights” (199 Mise at 798). Far from expressing an intent to commit intellectual property to the public domain, the court determined that an owner who grants exclusive rights to record a performance to a particular company “shows clearly no intent to abandon but, on the contrary, an attempt to retain effective control over the . . . recording of its performances” (id. at 799). Thus, the court characterized the public sale of a sound recording as a “limited publication” that did not divest a composer or artist of common-law copyright protection (id.).

A contrary view was initially expressed by the Second Circuit in RCA Mfg. Co. v Whiteman (114 F2d 86 [2d Cir 1940], cert denied 311 US 712 [1940]). The court concluded that the sale of a record to the public is a general publication that ends common-law copyright protection. But the Second Circuit reconsidered this rule after Metropolitan Opera and subsequently stated that RCA Mfg. was “not the law of the State of New York” (Capitol Records v Mercury Records Corp., 221 F2d 657, 663 [2d Cir 1955]). Instead, the court announced that the appropriate governing principle was that “where the originator, or the assignee of the originator, of records of performances by musical artists puts those records on public sale, his act does not constitute a dedication of the right to copy and sell the records” (id.). Capitol Records v Mercury Records was consistent with the long-standing practice of the federal Copyright Office and became the accepted view within the music recording industry (see 1 Nimmer on Copyright § 4.05 [B] [4], at 4-35; Bailey, Phonorecords and Forfeiture of Common-Law Copyright in Music, 71 Wash L Rev 151, 157 [Jan. 1996]; Kaplan, Publication in Copyright Law: The Question of Phonograph Records, 103 U Pa L Rev 469, 472 [Jan. 1955]).

The Waring, Metropolitan Opera and Capitol Records decisions may appear to conflict with the accepted principle that a public sale of a literary work is a “general publication” terminating a common-law copyright, and any copyright protection thereafter must be derived from statute. But the historical distinction in the treatment of literary and musical works by Congress accounts for the lack of federal statutory copyright protection for sound recordings. In the absence of protective legislation, Congress intended that the owner of rights to a sound recording should rely on the “broad and flexible” power of the common law to protect those property rights after public dissemination of the work. As Metropolitan Opera so aptly observed more than five decades ago, the common law “has allowed the courts to keep pace with constantly changing technological and economic aspects so as to reach just and realistic results” (199 Mise at 799).

In recent times, state legislatures have found common-law remedies inadequate to deter the widespread prevalence of “music piracy.” By the 1970s, the technological ease of reproducing existing recordings for resale without securing authorization had motivated about one half of the state legislatures, including New York (see Penal Law former § 441-c [L 1966, ch 988]), to adopt criminal statutes prohibiting such piracy (see HR Rep No. 94-1476, 94th Cong, 2d Sess, at 133, reprinted in 1976 US Code Cong & Admin News, at 5659, 5749). Spurred by the action of the states, Congress finally responded in 1971 and amended the Copyright Act of 1909 to expressly include “[s]ound recordings” within the classes of artistic and intellectual works entitled to federal copyright protection (17 USC § 5 [n], added by Pub L 92-140, 85 US Stat 391 [Act of Oct. 15, 1971]). But the 1971 amendments were prospective only, so recordings created before February 15, 1972—the effective date of the amendment—were not protected by federal law (see Pub L 92-140 § 3 [1971]). During the drafting of the amendment, debate arose concerning the scope of protection to be afforded to pre-1972 sound recordings. Both the Senate and the House of Representatives recognized that decisional law had allowed sound recordings to be “protected by State statute or common law” (see HR Rep No. 94-1476, 94th Cong, 2d Sess, at 133, reprinted in 1976 US Code Cong & Admin News, at 5659, 5749). The Senate was content to permit the states to provide perpetual protection to pre-1972 sound recordings, but the House objected (see id.). The two houses eventually reached a compromise, deciding that existing state common-law copyright protection for pre-1972 recordings would not be preempted by the new federal statute until February 15, 2047—75 years after the effective date of the 1971 amendment (see 17 USC § 301 [c] [1976]).

The 1971 amendments raised new problems for the music recording industry. Because the status of pre-1972 sound recordings was a matter left to the states, there was uncertainty as to how claims of copyright infringement would be treated in different jurisdictions. The amendments also did not include a technical definition of the term “publication,” which clouded the meaning of that term of art in the recording industry. Finally, there was concern that the amendments could be read as abrogating existing state statutes proscribing music piracy (see HR Rep No 94-1476, 94th Cong, 2d Sess, at 133, reprinted in 1976 US Code Cong & Admin News, at 5659, 5749).

Initial guidance came from the United States Supreme Court in Goldstein v California (412 US 546 [1973]). The defendant, convicted of criminal music piracy, challenged the constitutionality of a California penal statute on the grounds that it conflicted with the Copyright Clause, the Supremacy Clause and the federal Copyright Act by “establishing] a state copyright of unlimited duration” (id. at 551). Rejecting the defendant’s claim, the Court noted that “[although the Copyright Clause . . . recognizes the potential benefits of a national system, it does not indicate that all writings are of national interest or that state legislation is, in all cases, unnecessary or precluded” (id. at 556-557). The Court further observed that, because the Constitution does not require Congress to “take affirmative action either to authorize protection of all categories of writings or to free them of all restraint,” it was sensible that the states did not relinquish all power to provide copyright protection {id. at 560).

The Supreme Court also acknowledged that the states were free to act with regard to sound recordings precisely because Congress had not, and in the absence of conflict between federal and state law, the Supremacy Clause was not a barrier to a state’s provision of copyright protection to a work not covered under federal copyright law {see id. at 569-570). Nor did the Court find fault with the perpetual nature of California’s copyright {see id. at 560-561). Rejecting the defendant’s “publication” argument, the Court clarified that

“[f]or purposes of federal law, ‘publication’ serves only as a term of the art which defines the legal relationships which Congress has adopted under the federal copyright statutes. As to categories of writings which Congress has not brought within the scope of the federal statute, the term has no application” {id. at 570 n 28).

The effect of Goldstein was more than an affirmation of the states’ right to enact criminal laws prohibiting music piracy. Its rationale clearly deviated from the Wheaton view—that publication divests common-law rights even in the absence of statutory protection. Instead, the Court relied on the rule that state common-law copyright protection can continue beyond the technical definition of publication in the absence of contrary statutory authority (see 1 Nimmer on Copyright § 4.02 [C], at 4-17 n 23).

In the aftermath of Goldstein, Congress rectified some of the problems that erupted with the 1971 amendment of the Copyright Act. A major revision and restructuring of the Act occurred in 1976 and took effect in 1978. Included among the amendments was a statutory definition of “publication,” now defined to include “the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership” (17 USC § 101). This definition applied prospectively only, thereby continuing to exclude pre-1972 recordings from the scope of the statute. Congress again left to the states the decision how to handle the meaning and effect of “publication” for pre-1972 sound recordings.

The music industry’s belief that state common law could provide copyright protection for pre-1972 recordings (until the date of federal preemption), without regard to the “publication” or sale of recordings, was undermined by the Ninth Circuit in La Cienega Music Co. v ZZ Top (53 F3d 950 [9th Cir 1995], cert denied 516 US 927 [1995]). This controversy pitted the owner of certain John Lee Hooker recordings against the band ZZ Top, which allegedly performed a top-selling song that was similar to earlier performances by Hooker. ZZ Top defended on the ground that any common-law protection was extinguished when the Hooker recordings were “published,” i.e., released for sale to the public. This contention challenged the Second Circuit holdings in Capitol Records (221 F2d 657 [1955]) and Rosette (546 F2d 461 [1976])—the only other United States Court of Appeals to have addressed the issue. The defendants in La Cienega were successful in convincing the Ninth Circuit not to adopt the rationale of the Second Circuit, and the court therefore held that public sale of a pre-1972 sound recording is a publication that divests the owner of common-law copyright protection.

La Cienega was criticized in Congress as exposing pre-1972 sound recordings to unauthorized uses and as “overturning] nearly 90 years of [precedential] decisions” (143 Cong Rec H9882-01 [statement of Rep. Coble]). It was estimated that the ruling, if allowed to stand, would cause musicians, composers and publishers to lose over a billion dollars in annual revenue (see id. [statement of Rep. Delahunt]). Congress reacted to La Cienega by amending section 303 of the federal Copyright Act to clarify that “[t]he distribution before January 1, 1978, of a phonorecord shall not for any purpose constitute a publication of the musical work embodied therein” (17 USC § 303 [b]). After the passage of this amendment, the Ninth Circuit acknowledged that the intent of Congress was to “ ‘restore national uniformity on this important issue by confirming the wisdom of the custom and usage of the affected industries and of the Copyright Office for nearly 100 years’ ” (ABKCO Music, Inc. v LaVere, 217 F3d 684, 690 [2000] [quoting 143 Cong Rec S11301 (statement of Sen. Hatch)], cert denied 531 US 1051 [2000]). Congress had confirmed that sound recordings created before 1972 could be eligible for common-law copyright protection until federal preemption of state law in 2067.

IV The Scope of Common-Law Copyright Protection in New York

The first New York State Constitution in 1777 permitted the continuation of colonial common law, derived from English common law. One such principle was that the creator of a literary work was entitled to perpetual common-law copyright protection in the absence of abrogation by statute (see Madison, Federalist No. 43; see also Whicher, The Ghost of Donaldson v. Beckett: An Inquiry Into the Constitutional Distribution of Powers Over the Law of Literary Property in the United States, 9 Bull Copyright Socy 102, 131-143 [1962]; Taubman, Copyright and Antitrust, at 9, 14 [I960]). The State Legislature acted to supplant common-law copyright protection when it passed a statute in 1786 “to promote literature” (L 1786, ch 54). The statute restricted the copyright protection an author of a literary work could receive after first publication for up to 28 years (see id.). This statute was superseded by Congress in 1790 when the first national copyright act was enacted (see Act of May 31, 1790, reprinted in Library of Congress, Copyright Enactments, 1783-1900, at 30-32). Consistent with the statutory abrogation rule, this Court established that New York common law would provide copyright protection to a literary work up to the point that federal law governed (see e.g. Jewelers’ Mercantile Agency v Jewelers’ Weekly Publ. Co., 155 NY at 247; see also Palmer v De Witt, 47 NY at 536; Estate of Hemingway v Random House, 23 NY2d 341, 346 [1968]).

As earlier discussed, federal copyright statutes in the early 20th century encompassed only written musical compositions, not sound recordings (see White-Smith Music Publ. Co. v Apollo Co., 209 US at 18). 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 (see Goldstein v California, 412 US at 560-561, 570). It is clear that both the judiciary and the State Legislature intended to fill this void by protecting the owners of sound recordings in the absence of congressional action (see Rosette v Rainbo Record Mfg. Corp., 546 F2d 461 [1976]; Capitol Records v Mercury Records Corp., 221 F2d 657 [1955]; Metropolitan Opera Assn, v Wagner-Nichols Recorder Corp., 199 Misc 786 [1950]; Firma Melodiya v ZYX Music GmbH, 882 F Supp 1306, 1316 n 14 [SD NY 1995]; see also Penal Law art 275; Arts and Cultural Affairs Law § 31.01; General Business Law former § 561 [L 1967, ch 680, § 59]; Penal Law former § 441-c [L 1966, ch 988]).

With the 1971, 1976 and subsequent congressional amendments to the federal Copyright Act, New York common-law protection of sound recordings has been abrogated, but only in two respects. First, the common law does not apply to any sound recording fixed, within the meaning of the federal act, after February 15, 1972, because recordings made after that date are eligible for federal statutory copyright protection. Second, state common-law copyright protection is no longer perpetual for sound recordings not covered by the federal act (those fixed before February 15, 1972), because the federal act mandates that any state common-law rights will cease on February 15, 2067. The musical recordings at issue in this 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.

Even assuming, however, that common-law copyright protection ceases upon “first publication” without regard to the existence of an applicable statute covering the type of literary or artistic work at issue, our common law would continue to protect sound recordings made before 1972.

The evolution of copyright law reveals that the term “publication” is a term of art that has distinct meanings in different contexts. With regard to literary works, it has long been the rule that common-law protection ends when a writing is distributed to the public (see e.g. Palmer v De Witt, 47 NY at 536; Chamberlain v Feldman, 300 NY 135, 139 [1949]; Estate of Hemingway v Random House, 23 NY2d at 345-346) because it is at that point that federal statutory copyright protection controls (see Jewelers’ Mercantile Agency v Jewelers’ Weekly Publ. Co., 155 NY at 247). In contrast, in the realm of sound recordings, it has been the law in this state for over 50 years that, in the absence of federal statutory protection, the public sale of a sound recording otherwise unprotected by statutory copyright does not constitute a publication sufficient to divest the owner of common-law copyright protection (see Rosette v Rainbo Record Mfg. Corp., 546 F2d 461 [2d Cir 1976], affg 354 F Supp 1183 [SD NY 1973]; Capitol Records v Mercury Records Corp., 221 F2d at 663; Radio Corp. of Am. v Premier Albums, Inc., 19 AD2d 62, 63-64 [1st Dept 1963]; Gieseking v Urania Records, 17 Misc 2d 1034, 1035 [Sup Ct, NY County 1956]; Metropolitan Opera Assn, v Wagner-Nichols Recorder Corp., 199 Misc at 799; see also Note, Copyrights—Unfair Competition—Property Right of Performer in Recorded Performance, 7 Air L Rev 122, 125 [1936]).

Y. The Certified Questions

Having concluded that the musical recordings here are presumptively entitled to common-law copyright protection in New York, we proceed to address the three subquestions posed by the Second Circuit.

First: “Does the expiration of the term of a copyright in the country of origin terminate a common law copyright in New York?”

When the recordings here were created in England, they received statutory copyright protection in the United Kingdom (UK) for 50 years after the date of creation (see Copyright Act of 1911,1 & 2 Geo 5, ch 46, § 19). As a result, the UK copyrights for all of the recordings expired by the 1990s—years before Naxos’s allegedly infringing actions. Naxos argues, and the District Court apparently agreed, that the expiration of the foreign copyrights prevents the enforcement of copyright protections in other jurisdictions, including the United States and New York. We disagree and concur with the Second Circuit’s observation that “nothing in federal law denies Capitol enforceable rights in the original recordings simply because the U.K. copyrights have expired” (372 F3d 471, 480 [2d Cir 2004]).

Under the Federal Constitution, treaties that the United States enters with other countries have the force of federal law and must be respected by the states (see US Const art VI [2]). Although the Berne Convention and the Universal Copyright Convention both recognize the “Rule of the Shorter Term,” which generally provides that the term of copyright in the nation where a work is first published should be applied by other nations that would grant a longer period of protection, neither treaty applies this rule to sound recordings (see Universal Copyright Convention art IV [4] [a], 25 UST 1341, TIAS No. 7868 [1974]; Berne Convention for the Protection of Literary and Artistic Works art 7 [8], July 24, 1971 [Paris Text], S Treaty Doc No. 99-27 [amended 1979]; 4 Nimmer on Copyright § 17.06 [A], at 17-48.2). Instead, sound recordings fall within the ambit of the Phonograms Convention but this treaty applies only to recordings fixed after the date it became law (March 10, 1974 in the United States). Furthermore, the Phonograms Convention does not contain a rule of the shorter term (see Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms, arts 4, 7 [3], 25 UST 309, TIAS No. 7808 [1974]). Nor does the statutory implementation of the Uruguay Round Agreements Act (Pub L 103-465, 108 US Stat 4809 [1994]), which appears in 17 USC § 104A, alter the common law with respect to the recordings at issue. That provision restores United States copyright protection to certain public domain works but does not apply to recordings, like those here, that were in the public domain in the country of origin prior to 1996 (see 17 USC § 104A [h] [6] [B]).

Thus, neither federal statutory nor constitutional law prohibits the states from providing common-law protection to artistic works that are in the public domain in the country of origin (see generally Hasbro Bradley, Inc. v Sparkle Toys, Inc., 780 F2d 189, 192-193 [2d Cir 1985]). Nothing in the statutes of this state or in our jurisprudence suggests such a prohibition is warranted. Indeed, there are indications that the opposite is true (see 1 Nimmer on Copyright § 5.11, at 5-90; see also Rostropovich v Koch Intl. Corp., 34 USPQ2d 1609, 1614, 1995 WL 104123, *5 [SD NY 1995]), given that the copyright protection extended by state common law to sound recordings not covered by the federal Copyright Act is similar to the scope of common-law ownership rights in other forms of property, which can exist indefinitely (see generally People ex rel. International Nav. Co. v Barker, 153 NY 98, 101 [1897]). Until 2067, no federal or state statutory impediment constricts this common-law durational component for pre-1972 sound recordings. Applying the copyright law of the situs where the infringement occurs (see e.g. Itar-Tass Russian News Agency v Russian Kurier, Inc., 153 F3d 82, 89 [2d Cir 1998]), there is no justification under New York law for substituting the British copyright term in place of New York’s common-law protection for these recordings, which continues until federal preemption occurs. We therefore answer the first subquestion in the negative because we conclude 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.

Second: “Does a cause of action for common law copyright infringement include some or all of the elements of unfair competition?”

We understand this question to ask whether the District Court was correct to assume that some type of malicious intent or bad faith is a necessary element of a state common-law copyright infringement claim. 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 (see e.g. L 1786, ch 54, § I). To the extent that any inference of deceptive or fraudulent intent may have been referred to in early copyright case law, it appears to have been the view that bad faith was inherent in the act of copying and selling a work without permission from a competitor because this would deprive the true owner of the work’s value (see Millar v Taylor, 98 Eng Rep at 203, 4 Burr at 2305; see also Capitol Records, Inc. v Wings Digital Corp., 218 F Supp 2d 280, 286 [ED NY 2002]). But fraud or bad faith is not an element of an infringement action in modern New York law (see Chamberlain v Feldman, 300 NY 135 [1949] [enjoining publication of Mark Twain manuscript on behalf of his estate’s trustees in the absence of any indication of fraud or bad faith]). Copyright infringement 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 (see Roy Export Co. Establishment of Vaduz, Liechtenstein v Columbia Broadcasting Sys., Inc., 672 F2d 1095, 1105 [2d Cir 1982], cert denied 459 US 826 [1982]; G. Ricordi & Co. v Haendler, 194 F2d 914, 916 [2d Cir 1952]; Capitol Records, Inc. v Wings Digital Corp., 218 F Supp 2d at 286; Metropolitan Opera Assn, v Wagner-Nichols Recorder Corp., 199 Misc at 793), or deception of the public (see e.g. Shaw v Time-Life Records, 38 NY2d 201, 206 [1975]). In response to the second subquestion, we hold that the causes of action for copyright infringement and unfair competition are not synonymous under New York law.

Third: “Is a claim of common law copyright infringement defeated by a defendant’s showing that the plaintiffs work has slight if any current market and that the defendant’s work, although using components of the plaintiffs work, is fairly to be regarded as a ‘new product’?”

We begin by noting that Naxos does not contend that “market size” or “new product” issues are relevant to the existence of a common-law copyright regarding sound recordings. Its discussion of those terms is limited to the context of an unfair competition cause of action. In any event, the ability to enforce copyright protections provided by New York common law is not diminished due to the size of the market and, therefore, the popularity of a product does not affect a state common-law copyright infringement claim (see generally Nimmer, Copyright in the Dead Sea Scrolls: Authorship and Originality, 38 Hous L Rev 1, 177-179 [Spring 2001]).

Nor do we believe that a state common-law copyright claim can be defeated under the so-called “new product” analysis. We note that the Second Circuit has declared that the “[independent creation” of a new product “[can]not consist of actual copying” of an entire work (Durham Indus., Inc. v Tomy Corp., 630 F2d 905, 910 [2d Cir 1980]). In the related area of the federal “fair use” doctrine, it is a general rule that the reproduction of an entire copyrighted work constitutes infringement (see Infinity Broadcast Corp. v Kirkwood, 150 F3d 104, 109 [2d Cir 1998], quoting 4 Nimmer on Copyright § 13.05 [A] [3], at 13-181). We see no justification for adopting a different rule of state law. Thus, even assuming that Naxos has created a “new product” due to its remastering efforts that enhance sound quality, that product can be deemed to infringe on Capitol’s copyright to the extent that it utilizes the original elements of the protected performances. We conclude that the third sub-question should be answered in the negative.

VI. Conclusion

In light of our responses to these inquiries and our conclusion that state common law protects ownership interests in sound recordings made before 1972 that are not covered by the federal Copyright Act, the answer to the main certified question is that, without regard to the issue of abandonment, Naxos is not entitled to defeat Capitol’s claim for infringement of common-law copyright in the original recordings. Accordingly, the certified question should be answered in the negative.

Chief Judge Kaye and Judges G.B. Smith, Ciparick, Rosenblatt, Read and R.S. Smith concur.

Following certification of a question by the United States Court of Appeals for the Second Circuit and acceptance of the question by this Court pursuant to section 500.17 of the Rules of Practice of the Court of Appeals (22 NYCRR 500.17), and after hearing argument by counsel for the parties and consideration of the briefs and the record submitted, certified question answered in the negative.

      . The District Court also addressed issues of waiver and abandonment, which are not relevant to the certified question posed to us.

      . One of the judges was Lord Chief Justice Mansfield, who, as a member of the House of Lords, declined to provide an opinion because of his participation in Millar v Taylor (4 Burr at 2417).

      . The texts of the inquiries by the House of Lords were as follows:
      1. “Whether, at common law, an author of any book or literary composition, had the sole right of first printing and publishing the same for sale, and might bring an action against any person who printed, published, and sold the same without his consent?”
      2. “If the author had such right originally, did the law take it away upon his printing and publishing such book or literary com-

        position, and might any person afterward reprint and sell, for his own benefit, such book or literary composition, against the will of the author?”
      3. “If such an action would have lain at common law, is it taken away by the statute of 8th Anne: and is an author, by the said statute, precluded from every remedy except on the foundation of the said statute, and on the terms and conditions prescribed thereby?”
      4. “Whether the author of any literary composition, and his assigns, had the sole right of printing and publishing the same, in perpetuity, by the common law?”
      5. “Whether this right is in any way impeached, restrained, or taken away, by the statute 8th Anne?” (Proceedings in the Lords on the Question of Literary Property, 17 Parliamentary History of England, at 970-971.)

      . The precise ruling by the House of Lords is the subject of scholarly debate. Professor Nimmer, among other commentators, takes the position that the House of Lords voted to overrule Millar only with regard to the abrogation question (see 1 Nimmer on Copyright § 4.02 [B], at 4-14, and n 12; see also Bowker, Copyright, Its History and Its Law, at 7 [1912]; Patterson, Copyright in Historical Perspective, at 174 [“The actual holding of the Donaldson case is that the author’s common-law right to the sole printing, publishing, and vending of his works, a right which he could assign in perpetuity, is taken away and supplanted by the Statute of Anne”]; Burger, The Berne Convention: Its History and Its Key Role in the Future, 3 J Law & Tech 1, 6 n 25 [1988]; Cambridge Research Institute, Omnibus Copyright Revision, Comparative Analysis of the Issues, at 6 [1973]). It has been argued, however, that the House of Lords actually held that the common law never provided any copyright protection and that the rights of authors and publishers were solely statutory in nature (see Abrams, The Historic Foundation of American Copyright Law: Exploding the Myth of Common Law Copyright, 29 Wayne L Rev 1119, 1164 [Spring 1983]; Deazley, Re-Reading Donaldson [1774] in the Twenty-First Century and Why It Matters, 25 [6] Eur Intell Prop Rev 270, 274 [2003]; Brown, Kaplan and Brown’s Copyright, at 53, and n 32 [2d ed 1974]). The controversy stems from the lack of any contemporaneous report of the opinions of the Lords, because at that time it was “contempt punishable by-imprisonment to publish any statements made by a member of Parliament in the course of parliamentary business” (Abrams, supra at 1159).

      . The majority opinion in Wheaton has been criticized for its failure to rely on the rationale of Donaldson (that common-law rights cease upon publication because divestment is required by statute) and the majority’s “unpersuasive analysis of Pennsylvania common law” (1 Nimmer on Copyright § 4.03, at 4-18).

      . At this time, Congress was in the process of revising the copyright statutes but decided to wait for the Supreme Court’s decision.

      . This rule was reaffirmed in Rosette v Rainbo Record Mfg. Corp. (546 F2d 461 [2d Cir 1976], affg 354 F Supp 1183 [SD NY 1973]).

      . The preemption date was later extended by 20 years, to February 15, 2067 (see Pub L 105-298, 112 US Stat 2827 [105th Congress, 2d Sess, Oct. 27, 1998] [termed the “Sonny Bono Copyright Term Extension Act”], amending 17 USC § 301 [c]).

      . This appears to be the position of the United States Copyright Office and the sound recording industry with respect to recordings not covered by the national Copyright Act (see ABKCO Music, Inc. v LaVere, 217 F3d at 690; see also 1 Nimmer on Copyright § 4.05 [B] [4], at 4-35; Bailey, Phonorecords and Forfeiture of Common-Law Copyright in Music, 71 Wash L Rev at 157; Kaplan, Publication in Copyright Law: The Question of Phonograph Records, 103 U Pa L Rev at 472). The international community also does not deem the sale of such a sound recording to be a “publication” (see Universal Copyright Convention art IV 25 UST 1341, TIAS No. 7868 [1974]), a definition crafted on the “understanding by the delegates [to the Convention] that the issuance of phonograph records does not amount to publication under United States law” and a belief “ ‘that a contrary provision in the Convention would require an amendment of the United States Copyright Law unlikely to be accepted by Congress’ ” (Landau, “Publication,”Musical Compositions, and the Copyright Act of 1909: Still Crazy After All These Years, 2 Vand J Ent L & Prac 29, 40 [Winter 2000] [citing Universal Copyright Convention art IV]).

      . As the United States Supreme Court has explained, a federal statutory copyright infringement cause of action consists of two elements: “(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original” (Feist Pubis, v Rural Tel. Serv. Co., 499 US 340, 361 [1991]). Commentators are in accord (see 3 Goldstein, Copyright § 15.5.2, at 15:45 [2d ed 1996; 2005 Supp]; 4 Nimmer on Copyright § 13.01, at 13-5).

      . Although we express no view on whether Naxos has, in fact, created a “new product,” we simply note that Capitol has a protected property interest in the performances embodied on the shellac records (cf Capitol Records v Greatest Records, 43 Misc 2d 878, 880 [Sup Ct, NY County 1964]) and that Naxos is selling remastered copies of the identical performances.


source: Caselaw Access Project

author: Chief Judge Kaye.

license: Public Domain

text:
    [830 NE2d 278, 797 NYS2d 380]
    Anthony Pommells, Appellant, v Francisco R. Perez et al., Respondents. David G. Brown, Appellant, v Athena D. Dunlap et al., Respondents. Miguel Carrasco, Appellant, v Aurora Mendez, Respondent.
    Argued March 23, 2005;
    decided April 28, 2005
    Decided April 28, 2005

      POINTS OF COUNSEL

      Pollack, Pollack, Isaac & De Cicco, New York City (Brian J. Isaac of counsel), and Ripka, Rotter & King, LLP (Alan S. Ripka of counsel) for appellant in the first above-entitled action.
    Plaintiff adequately raised triable issues of fact regarding whether or not he sustained a serious injury, thereby mandating denial of defendants’ summary judgment motions; conflicts in expert testimony based on the same evidence go to the weight of the evidence as did any gap in treatment; plaintiff cannot be faulted for relying on documents also used by defendants’ experts; under Toure v Avis Rent A Car Sys. (98 NY2d 345 [2002]) plaintiffs expert’s testimony was sufficient to raise a question of fact as to serious injury. (Kordana v Pomellito, 121 AD2d 783, 68 NY2d 848; Countermine v Galka, 189 AD2d 1043; Oberly v Bangs Ambulance, 96 NY2d 295; Gaddy v Eyler, 79 NY2d 955; Scheer v Koubek, 70 NY2d 678; Miller v Miller, 100 AD2d 577, 68 NY2d 871; Scamacca v Bennett, 161 AD2d 1197; Montgomery v Daniels, 38 NY2d 41; Licari v Elliott, 57 NY2d 230; Matter of Granger v Urda, 44 NY2d 91.)

      Norman Volk & Associates, New York City (Michael I. Josephs of counsel), for Francisco R. Perez, respondent in the first above-entitled action.
    I. Plaintiff was not too young to develop a degenerative back condition. II. During the four-year gap, any connection between plaintiffs initial injury and the symptoms found by Dr. Rose was irreversibly severed. (Franchini v Palmieri, 307 AD2d 1056; Kallicharan v Sooknanan, 282 AD2d 573.) HI. It was appropriate for defendants to have plaintiff examined by a neurologist. (Zoldas v Louise Cab Corp., 108 AD2d 378.) IV A herniated disc in plaintiffs lumbar spine was not alleged to be part of plaintiffs claims of serious injury. (Jeng-Jen Chen v Marc, 10 AD3d 295.) V There were no acceptable objective tests conducted by Dr. Rose. (Brown v Achy, 9 AD3d 30; Nitti v Clerrico, 98 NY2d 345; Grossman v Wright, 268 AD2d 79; Waldman v Dong Kook Chang, 175 AD2d 204.) VI. Appellant has not provided medical support for a serious injury under the 90/180 day category. (Beaubrun v New York City Tr. Auth., 9 AD3d 258; Dabiere v Yager, 297 AD2d 831.)

      Galvano & Xanthakis, P.C., New York City (Matthew Kelly of counsel), for Rohit Latchman, respondent in the first above-entitled action.
    The Appellate Division, First Department, correctly affirmed the trial court’s decision to grant defendants’ summary judgment motions to dismiss plaintiff’s complaint because there are no issues of fact as to whether plaintiff sustained a “serious injury” within the meaning of Insurance Law § 5102 (d). (Cosmos Forms v American Computer Forms, 193 AD2d 577; Paltrow v Town of Lewisboro, 199 AD2d 372; Capelin Assoc, v Globe Mfg. Corp., 34 NY2d 338; Hewett v Marine Midland Bank of Southeastern N.Y., 86 AD2d 263; Licari v Elliott, 57 NY2d 230; Pagano v Kingsbury, 182 AD2d 268; Dwyer v Tracey, 105 AD2d 476; Schaming v Saunders Constr. Carriers, 172 AD2d 957; Scheer v Koubek, 70 NY2d 678.)

      Barry Siskin, New York City, for appellant in the second above-entitled action.
    I. Plaintiff can prove a “significant impairment” without sustaining a herniated disc. (Lopez v Senatore, 65 NY2d 1017; Toure v Avis Rent A Car Sys., 98 NY2d 345.) II. The statute does not refer to a gap in treatment and that should be a fact-finding issue for the jury to determine. (Akamnonu v Rodriguez, 12 AD3d 187; Toure v Avis Rent A Car Sys., 98 NY2d 345; Cruz v Castanos, 10 AD3d 277.) III. Plaintiffs doctor’s opinion to a reasonable degree of medical certainty, following range of motion tests of the various movements of the cervical and lumbar spines, in degrees, with comparison to the norm that plaintiff sustained a serious injury is all that is required by this Court. (Villalta v Schechter, 273 AD2d 299; Grossman v Wright, 268 AD2d 79.)

      Rivkin Radler LLP, Uniondale (Cheryl F. Korman, Evan H. Krinick and Stuart M. Bodoff of counsel), for Athena D. Dunlap and another, respondents in the second above-entitled action.
    The Supreme Court and Appellate Division correctly granted Mr. Saunders’ cross motion for summary judgment inasmuch as plaintiff failed to raise an issue of fact as to whether he sustained a serious injury as defined by Insurance Law § 5102 (d). (Licari v Elliott, 57 NY2d 230; Scheer v Koubek, 70 NY2d 678; Toure v Avis Rent A Car Sys., 98 NY2d 345; Dufel v Green, 84 NY2d 795; Lowe v Bennett, 122 AD2d 728, 69 NY2d 700; Gaddy v Eyler, 79 NY2d 955; Calcagno v New York City Tr. Auth., 273 AD2d 334, 95 NY2d 875; Lopez v Senatore, 65 NY2d 1017; Brown v Dunlap, 6 AD3d 159; Franchini v Palmieri, 1 NY3d 536.)

      Curtis Vasile Devine & McElhenny, Merrick (Samantha B. Lansky of counsel), for Trucklease Corporation and others, respondents in the second above-entitled action.
    I. The court below properly granted summary judgment as defendants presented sufficient proof in admissible form that appellant did not sustain a serious injury. (Grossman v Wright, 268 AD2d 79; Villalta v Schechter, 273 AD2d 299.) II. The court below properly granted summary judgment to defendants as appellant’s proof was insufficient to raise a triable issue of fact that appellant did not sustain a serious injury. (Pramnieks v Bush, 272 AD2d 596; Toure v Avis Rent A Car Sys., 98 NY2d 345; Grossman v Wright, 268 AD2d 79; Dan v Luke, 237 AD2d 165; Monaco v Davenport, 277 AD2d 209; Goldin v Lee, 275 AD2d 341; Shay v Jerkins, 263 AD2d 475; Jeng-Jen Chen v Marc, 10 AD3d 295; Hernandez v Bahlke, 6 AD3d 578.)

      Ginsberg & Katsorhis, PC., Flushing (Nicole D. Katsorhis of counsel), for appellant in third above-entitled action.
    It is obvious that the medical affidavit submitted was, in and of itself, sufficient to deny summary judgment as a matter of law without the proffering of any other medical evidence or testimony.

      Epstein, Grammatico, Frankini & Marotta, Woodbury (Mona Haas of counsel), for respondent in the third above-entitled action.
    It is clear that the Supreme Court and Appellate Division’s finding that plaintiff failed to raise a triable issue of fact as to whether or not he sustained a “serious injury” should be affirmed by this Court.
   OPINION OF THE COURT

Chief Judge Kaye.

In 1973 the Legislature enacted the “Comprehensive Automobile Insurance Reparations Act” (see L 1973, ch 13)—commonly known as the No-Fault Law—with the objective of promoting prompt resolution of injury claims, limiting cost to consumers and alleviating unnecessary burdens on the courts (see Governor’s Mem approving L 1973, ch 13, 1973 McKinney’s Session Laws of NY, at 2335). Every car owner must carry automobile insurance, which will compensate injured parties for “basic economic loss” occasioned by the use or operation of that vehicle in New York State, irrespective of fault (Insurance Law § 5102 [a]; § 5103). Only in the event of “serious injury” as defined in the statute, can a person initiate suit against the car owner or driver for damages caused by the accident (Insurance Law § 5104 [a]).

No-Fault thus provides a compromise: prompt payment for basic economic loss to injured persons regardless of fault, in exchange for a limitation on litigation to cases involving serious injury (see Montgomery v Daniels, 38 NY2d 41, 50-51 [1975]). Abuse nonetheless abounds. From 1992 to 2000, reports of No-Fault fraud rose more than 1,700% and constituted 75% of all automobile fraud reports received by the Insurance Department in 2000 (see Matter of Medical Socy. of State of N.Y. v Serio, 100 NY2d 854 [2003]; see also State Farm Mut. Auto. Ins. Co. v Mallela, 4 NY3d 313 [2005]). There is, similarly, abuse of the No-Fault Law in failing to separate “serious injury” cases, which may proceed in court, from the mountains of other auto accident claims, which may not. That “basic economic loss” has remained capped at $50,000 since 1973 provides incentive to litigate.

In the context of soft-tissue injuries involving complaints of pain that may be difficult to observe or quantify, deciding what is a “serious injury” can be particularly vexing. Additionally, whether there has been a “significant” limitation of use of a body function or system (the threshold statutory subcategory into which soft-tissue injury claims commonly fall) can itself be a complex, fact-laden determination. Many courts have approached injuries of this sort with a well-deserved skepticism. Indeed, failure to grant summary judgment even where the evidence justifies dismissal, burdens court dockets and impedes the resolution of legitimate claims. As a hint of the dimension of the situation, in less than three years, Toure v Avis Rent A Car Sys. (98 NY2d 345 [2002])—addressing similar issues—already has been cited more than 500 times in published decisions of our trial and appellate courts (representing only a small portion of the trial court activity).

In all three cases we decide today, as in Toure, plaintiffs claim to have suffered soft-tissue injuries—herniated discs—caused by car accidents, challenging us once again to articulate criteria that will enable serious injury claims to proceed yet prevent abuses that clog the courts and harm the public. We conclude that, even where there is objective medical proof, when additional contributory factors interrupt the chain of causation between the accident and claimed injury—such as a gap in treatment, an intervening medical problem or a preexisting condition—summary dismissal of the complaint may be appropriate.

Pommells v Perez

Plaintiff Anthony Pommells was in a three-car accident on March 15, 1998. Days later, on his lawyer’s referral, plaintiff visited the North Bronx Medical Center where he had a neurological exam and began a course of daily physical therapy, which he continued for six months, while he remained out of work. Plaintiff initiated suit on June 24, 1998, alleging that he suffered serious injury under Insurance Law § 5102 (d). Plaintiff sought no further medical treatment or review of his alleged accident-related injury for more than three years, when, on January 11, 2002, he consulted with the physician who furnished a report in this case.

In the course of his deposition, plaintiff revealed that in July 2000—more than two years after the accident—he experienced severe pain in his back and side, sending him to a hospital emergency room where doctors inserted a stent in his kidney. After four weeks, doctors determined that surgery was necessary. Plaintiffs kidney was removed on August 18, 2000, and he again was out of work for six months.

Defendants sought summary judgment dismissing plaintiffs claim for failing to raise a triable issue of fact as to the existence of serious injury. In support of their motion, defendants submitted three doctors’ reports. Neurologist Michael J. Cárdente, based on an October 22, 2001 examination of plaintiff and plaintiffs medical records (including the unsworn MRI report and consideration of plaintiffs kidney problem), opined that there was “no evidence of a cervical or a lumbosacral spine radiculopathy” and “no evidence of a causally related neurologic disability.” Radiologist Steven Brownstein, after also reviewing plaintiffs MRI, reported that plaintiff suffered “[n]o diffuse bulge or focal disc protrusion” and stated that he could detect only a muscle spasm in plaintiff. Radiologist Richard Rafal reported plaintiff suffered “[n]o gross acute pathology.”

In response, plaintiff submitted an unsworn report by Dr. Leonid Slutsky from the March 1998 examination, which, based on a stated series of range of motion tests, revealed limitations in mobility and recommended a course of follow-up medical treatment, including physical therapy, chiropractic treatment, painkilling medication and neurological examinations. Plaintiff also offered a May 11, 1998 unsworn report by Dr. Robert Kronenberg relying on somatosensory evoked potentials (or SSEPs), and which, based on nerve stimulations and recorded limitations in movement, recommended physical therapy, but did not opine as to injury or causation.

Finally, plaintiff submitted the sworn report of orthopedist Louis C. Rose, based on the range of motion tests he performed on January 11, 2002 (detailed in the report), opining that plaintiff had “MRI documented evidence of a herniated lumbar disk with clinical evidence of radiculopathy” and was at risk of “development of osteoarthritic changes in an advanced fashion” due to “the destabilization and micromotion of the cervical and lumbar spine.” Dr. Rose noted that plaintiffs symptoms were “causally related to the history as stated,” which included both the 1998 car accident and plaintiffs past medical history, notably “[significant for right-sided nephrectomy which was undertaken on 8/18/00.”

The trial court granted defendants’ motion for summary dismissal and the Appellate Division affirmed, two Justices dissenting, bringing this appeal before us as a matter of right (CPLR 5601 [a]). We now affirm.

Proof of a herniated disc, without additional objective medical evidence establishing that the accident resulted in significant physical limitations, is not alone sufficient to establish a serious injury. Defendants initially made a prima facie showing that plaintiffs alleged injuries did not satisfy No-Fault’s serious injury threshold, leaving for plaintiff the burden to present objective medical proof of a serious injury causally related to the accident in order to survive summary dismissal. While plaintiff submitted objective evidence regarding physical limitations, his history revealed two interrupting factors: cessation of treatment six months after the accident and a kidney condition.

We first address the “gap in treatment” noted by the trial court and Appellate Division—the period of time between the end of plaintiffs physical therapy in 1998 and his visit to Dr. Rose to obtain an expert medical report in 2002. Defendants argue that the “gap” both renders the medical expert’s later opinion on causation speculative and places into question the seriousness of the injuries themselves.

In the present case, the so-called gap in treatment was, in reality, a cessation of all treatment. Plaintiff ended his physical therapy six months after the accident and sought no other treatment until years later, when he visited Dr. Rose in connection with this case. While a cessation of treatment is not dispositive—the law surely does not require a record of needless treatment in order to survive summary judgment—a plaintiff who terminates therapeutic measures following the accident, while claiming “serious injury,” must offer some reasonable explanation for having done so. Here, plaintiff provided no explanation whatever as to why he failed to pursue any treatment for his injuries after the initial six-month period, nor did his doctors (see Franchini v Palmieri, 1 NY3d 536 [2003]).

Further, plaintiff failed to address the effect of his kidney disorder on his claimed accident injuries. Dr. Rose’s report—the only competent evidence supporting plaintiffs response to the summary judgment motion (see Grasso v Angerami, 79 NY2d 813 [1991])—in fact noted the kidney surgery in plaintiffs medical history and then relied on that medical history in opining as to causation. Plaintiffs submission left wholly unanswered the question whether the claimed symptoms diagnosed by Dr. Rose were caused by the accident (see Franchini, 1 NY3d at 537; see also Simms v APA Truck Leasing Corp., 14 AD3d 322 [1st Dept 2005]; Blackwell v Fraser, 13 AD3d 157 [1st Dept 2004]; Mooney v Edwards, 12 AD3d 424 [2d Dept 2004]; Shaw v Looking Glass Assoc., LP, 8 AD3d 100 [1st Dept 2004]; Shinn v Catanzaro, 1 AD3d 195 [1st Dept 2003]; Lagois v Public Adm’r of Suffolk County, 303 AD2d 644 [2d Dept 2003]; Pajda v Pedone, 303 AD2d 729 [2d Dept 2003]; Monette v Keller, 281 AD2d 523 [2d Dept 2001]). On this record, we conclude that defendants’ motion for summary dismissal of the complaint was correctly granted.

Brown v Dunlap

On June 25, 1999, plaintiff, then 17 years of age, was a rear seat passenger in a vehicle owned by defendant Athena Dunlap and operated by defendant Louis Saunders (collectively Saunders) when it was struck from behind by a vehicle owned by defendant Trucklease Corporation and operated by defendant Gilberto Schasiepen (collectively Schasiepen). An ambulance transported plaintiff to St. Luke’s-Roosevelt Hospital, where he complained of neck and back pain. After x-rays revealed no fracture, plaintiff was given pain medication and released. A week later, referred by his counsel, plaintiff sought treatment from Dr. Samuel Melamed who, in August 1999, sent him to Ultra Diagnostics Imaging for an MRI of the lumbosacral spine. At that time, radiologist Mark Freilich reported: “Bulging is seen of discs L3-L5. There is herniation of disc L5-S1 towards the right and centrally indenting the thecal sac. Desiccative changes are noted of herniated disc L5-S1 as well.”

In September 1999, neurologist Daniel Feuer diagnosed plaintiff with a lumbosacral herniated disc and lumbosacral radiculitis. He recommended that plaintiff continue a course of physical therapy supplemented by over-the-counter anti-inflammatory medications. Additionally, Dr. Melamed, relying on Dr. Freilich’s earlier MRI report, noted spasms and tenderness and opined that, as a result of the accident, plaintiff sustained an acute cervical sprain and a lumbosacral sprain, and explained that plaintiffs continued pain and limitation of movement over the spine was a permanent injury. In March 2000, plaintiff commenced this action alleging that he had sustained serious injury within the meaning of Insurance Law § 5102 (d).

Following joinder of issue, defendant Schasiepen moved for summary judgment dismissing the complaint on the ground that plaintiff did not suffer a serious injury, and submitted the sworn reports of radiologist Jessica Berkowitz, orthopedist Norman Heyman and neurosurgeon Donald Frank. Defendant Saunders thereafter joined in the motion, adopting Schasiepen’s arguments and submissions, and adding the reports of orthopedic surgeon Howard Baruch and neurologist Robert April. According to defendants’ medical evidence, any limitations plaintiff suffered as a result of the accident were minor at best. However, those injuries that existed, according to Dr. Frank and Dr. Baruch, were causally related to the car accident. Only defendants’ radiologist, Dr. Berkowitz, noted—without more—that the “[d]isc desiccation and minimal diffuse disc bulge” were “chronic and degenerative in origin.”

In opposition, plaintiff submitted the affirmation of his treating physician, Dr. Melamed, opining that plaintiff suffered from “a herniated disc, confirmed by MRI testing, at L5-S1 towards the right centrally indenting the thecal sac; bulging discs, also confirmed by MRI, at levels L3-L5; and acute cervical sprain.” He added that his April 22, 2002 examination revealed numerical deficiencies in plaintiffs extension and flexion of the cervical and lumbar spine, and he opined, with a reasonable degree of medical certainty, that plaintiffs “inability to move his spine (lower back and neck) to the full range of what is normal [constituted a] . . . definite severe and permanent injury” that was causally related to the accident. Finally, Dr. Melamed explained that “[wjhen it became clear, after extensive therapy in my office, that further treatment and visits would be only palliative in nature, upon discharge from this office, I instructed [plaintiff] as to strengthening and stabilizing home exercises, which consisted of back and neck stretches and strengthening techniques.” Plaintiffs own affidavit noted that he continues to suffer “excruciating” pain in his neck and lower back when he stands for more than 15 minutes, and can no longer lift heavy objects; experiences numbness in his legs when he remains too long in the same position; and cannot continue his prior sports activities.

Based on these submissions, Supreme Court granted defendants’ motions dismissing the complaint, holding that plaintiff failed to explain a 2/2 year gap in treatment and also fatally relied on unsworn MRI reports. The Appellate Division affirmed, holding that plaintiff failed to both furnish an adequate explanation of the gap in treatment and address the suggested chronic disc condition. Two Justices dissented, bringing the appeal before us as a matter of right. We now reverse and reinstate the complaint.

Defendants’ submissions, indicating that plaintiff suffered only minor limitations as a result of the automobile accident, were sufficient to meet their initial burden. Plaintiffs submissions in opposition, however, raise material issues of fact as to whether he sustained a “permanent consequential limitation of use of a body organ or member” or a “significant limitation of use of a body function or system.”

On plaintiffs behalf, Dr. Melamed identified measurements of loss of range of motion in plaintiffs cervical and lumbar spine, and on that predicate opined that plaintiff suffered severe and permanent injuries as a result of the accident. Dr. Melamed concluded that plaintiffs “continuing condition accounts for [his] extreme pain, stiffness and inability to move his . . . spine [ ] to the degree of range of motion characteristic of a normal twenty year-old” (see Toure, 98 NY2d at 350-351, 353; Melino v Lauster, 195 AD2d 653, 655 [3d Dept 1993], affd 82 NY2d 828 [1993]). Moreover, Dr. Melamed, in his own sworn statement, noted that the MRI of plaintiffs spine—taken by Dr. Freilich approximately two months after the accident, and made part of the record—revealed one herniated and three bulging discs (cfi Toure [Nitti v Clerrico], 98 NY2d at 357-358).

Neither of the dispositive grounds in Pommells applies here. First, as to the so-called gap in treatment—the 2V2 years when plaintiffs injuries received no outside attention—Dr. Melamed explained that, once he determined further medical therapy would “be only palliative in nature,” he terminated treatment and instructed plaintiff to continue exercises at home. A plaintiff need not incur the additional expense of consultation, treatment or therapy, merely to establish the seriousness or causal relation of his injury. Unlike Pommells, plaintiffs cessation of treatment was explained sufficiently to raise an issue of fact and survive summary judgment.

Second, as to an alleged preexisting condition, there is only Dr. Berkowitz’s conclusory notation, itself insufficient to establish that plaintiffs pain might be chronic and unrelated to the accident. As opposed to the undisputed proof of plaintiff’s contemporaneous, causally relevant kidney condition in Pommells, here even two of defendants’ other doctors acknowledged that plaintiffs (relatively minor) injuries were caused by the car accident. On this record, plaintiff was not obliged to do more to overcome defendants’ summary judgment motions (contrast Shinn, 1 AD3d 195 [2003]; Lorthe v Adeyeye, 306 AD2d 252 [2d Dept 2003]), and we therefore reverse the Appellate Division’s order and reinstate the complaint.

Carrasco v Mendez

On May 31, 2000, defendant’s car struck plaintiffs vehicle as plaintiff was attempting to park and, on July 24, 2000, plaintiff commenced this action alleging that he suffered an accident-related “serious injury.” Following joinder of issue, defendant sought summary dismissal of the complaint on the ground that plaintiff had not sustained a serious injury within the meaning of the No-Fault Law.

In support of her motion, defendant submitted two reports of the doctor, Vadim Miloradovich, who treated plaintiff for several months immediately following the accident. Initially, Dr. Miloradovich diagnosed plaintiff with “[a]nterior spur formation of C5-C6 and C6-C7 disc,” traumatic herniation of the disc (C4-C5, C5-C6, C6-C7 and L2-L3) and “[d]isc bulge L3-L4,” and opined that plaintiffs injuries were a direct result of the accident. Several months later, however, in his “Final Report,” Dr. Miloradovich noted that “any degenerative condition that existed prior to [plaintiff’s current trauma ha[d] served to destabilize the spine” and that “although the return to (Base line’ ha[d] been achieved, prior existing conditions may continue with limited symptomatology.” Having determined that therapy would no longer benefit plaintiff, Dr. Miloradovich discharged plaintiff in December 2000 “with instruction to continue physical therapy and exercise at home for maintenance and to preclude exacerbation.”

Defendant also proffered the report of orthopedic surgeon Robert Orlandi, who conducted a physical examination of plaintiff on June 25, 2002 and reviewed his medical records, including reports of MRIs of his cervical and lumbar spine. Dr. Orlandi reported that the MRI reports of plaintiffs spine revealed degenerative conditions, including a “pre-existent spondylitic spur formation at C5/C6 and C6/C7” and disc desiccation at L2/L3 which was indicative of degenerative disc disease. He concluded that his orthopedic examination did not “document the presence of permanent residuals or a musculoskeletal disability.”

Plaintiff rejoined with the affidavit of Dr. Emmanuel Lambrakis, who explained that he had treated plaintiff since August 30, 2001—beginning more than a year after the accident. Dr. Lambrakis averred that his November 21, 2002 physical examination of plaintiff—conducted after defendant’s motion—revealed specific numerical deficiencies in plaintiffs extension, flexion and rotation of the cervical and lumbar spine. In addition, Dr. Lambrakis noted that he found “severe muscle spasms in the cervical spine with excruciating pain when compressing C3 and C7” and that “[t]he pain complained of and the loss of motion in the cervical spine is completely consistent with the disc herniations diagnosed at C4, 5, 6 and 7, as well as the anterior spur formation on C5, 6 and 7, after MRIs of the cervical spine were conducted after the accident.” He also explained that “the degree of pain exhibited by the Plaintiff with regard to his lumbar spine is consistent with the herniated disc at L2-L3, as well as a protrusion bulge on the L3-L4 level,” also diagnosed after an MRI. Dr. Lambrakis opined to a reasonable degree of medical certainty that plaintiff “sustained permanent severe partial disabilities as a result of the motor vehicle accident.”

Based on these submissions, Supreme Court granted defendant’s motion and dismissed the complaint. The Appellate Division unanimously affirmed. We granted leave and now affirm.

As in Pommells and Brown, defendant’s submissions shifted to plaintiff the burden of coming forward with evidence indicating a serious injury causally related to the accident. Unlike Brown, however, defendant presented evidence of a preexisting degenerative disc condition causing plaintiff’s alleged injuries, and plaintiff failed to rebut that evidence sufficiently to raise an issue of fact.

Dr. Orlandi, after physically examining plaintiff and reviewing prior medical records, including MRIs and x-rays, concluded that the pain in areas identified as herniated by Dr. Miloradovich was caused by preexisting and degenerative conditions. Even plaintiffs original doctor, Dr. Miloradovich, noted, in his final report, that plaintiffs pain was related to a prior condition.

While plaintiff provided Dr. Lambrakis’s expert report of specific losses of range of motion in plaintiffs spine, opining that plaintiff suffered serious and permanent injuries which were causally related to the accident (Lopez v Senatore, 65 NY2d 1017, 1020 [1985]), plaintiff did not refute defendant’s evidence of a preexisting degenerative condition. To the contrary, the Lambrakis report supplied by plaintiff explained that the pain and loss of range of motion in the cervical spine was entirely consistent with those formations identified by the MRI and set forth by Drs. Miloradovich and Orlandi as related to a degenerative condition. In this case, with persuasive evidence that plaintiffs alleged pain and injuries were related to a preexisting condition, plaintiff had the burden to come forward with evidence addressing defendant’s claimed lack of causation. In the absence of any such evidence, we conclude—as did the trial court and Appellate Division—that defendant was entitled to summary dismissal of the complaint (see Franchini, 1 NY3d at 537; see also Licari v Elliott, 57 NY2d 230, 237 [1982]).

Accordingly, in Pommells v Perez and Carrasco v Mendez, the orders of the Appellate Division should be affirmed, with costs, and in Brown v Dunlap, the order of the Appellate Division should be reversed, with costs, and defendants’ motions for summary judgment denied.

Judges G.B. Smith, Ciparick, Rosenblatt, Grapfeo, Read and R.S. Smith concur.

In Pommells v Perez:. Order affirmed, with costs.

In Brown v Dunlap: Order reversed, with costs, and defendants’ motions for summary judgment denied.

In Carrasco v Mendez: On review of submissions pursuant to section 500.4 of the Rules of the Court of Appeals (22 NYCRR 500.4), order affirmed, with costs.

      . Insurance Law § 5102 (d) defines a “serious injury” as “a personal injury which results in death; dismemberment; significant disfigurement; a fracture; loss of a fetus; permanent loss of use of a body organ, member, function or system; permanent consequential limitation of use of a body organ or member; significant limitation of use of a body function or system; or a medically determined injury or impairment of a non-permanent nature which prevents the injured person from performing substantially all of the material acts which constitute such person’s usual and customary daily activities for not less than ninety days during the one hundred eighty days immediately following the occurrence of the injury or impairment.”

      . Plaintiff claimed a serious injury under two section 5102 (d) clauses: “significant limitation of use of a body function or system” and “a medically determined injury or impairment of a non-permanent nature which prevents the injured person from performing substantially all of the material acts which constitute such person’s usual and customary daily activities for not less than ninety days during the one hundred eighty days immediately following the occurrence of the injury or impairment.”

      . Throughout this writing, where areas of specialization are not stated, it is because they are unidentified in the record.

      . In recent No-Fault cases, “gap in treatment” has become a prominent factor in summary judgment motions (see e.g. Garces v Yip, 16 AD3d 375 [2d Dept 2005]; Bent v Jackson, 15 AD3d 46 [1st Dept 2005]; Brown v Achy, 9 AD3d 30 [1st Dept 2004]; Rivera v Francis, 7 AD3d 690 [2d Dept 2004]; Melendez v Feinberg, 306 AD2d 98 [1st Dept 2003]; Vaughan v Baez, 305 AD2d 101 [1st Dept 2003]).

      . Though the MRI reports were unsworn, the various medical opinions relying on those MRI reports are sworn and thus competent evidence (see Grasso, 79 NY2d at 814).