FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

ABS ENTERTAINMENT, INC., an 

Arkansas corporation; BARNABY 

RECORDS, INC., a New York 

corporation; BRUNSWICK RECORD

CORPORATION, a New York 

corporation; MALACO INC., a 

Mississippi corporation, each 

individually and on behalf of all 

others similarly situated.,

Plaintiffs-Appellants,

v.

CBS CORPORATION, a Delaware 

corporation; CBS RADIO, INC., a 

Delaware corporation; DOES, 1 

through 10,

Defendants-Appellees.

No. 16-55917

D.C. No.

2:15-cv-06257-

PA-AGR

OPINION

Appeal from the United States District Court

for the Central District of California

Percy Anderson, District Judge, Presiding

Argued and Submitted November 9, 2017

Pasadena, California

Filed August 20, 2018
2 ABS ENTERTAINMENT V. CBS CORPORATION

Before: Richard Linn,* Marsha S. Berzon,

and Paul J. Watford, Circuit Judges.

Opinion by Judge Linn

SUMMARY**

Copyright

The panel reversed the district court’s grant of summary 

judgment in favor of the defendants on claims of violation of 

state law copyrights possessed by the plaintiffs in sound 

recordings originally fixed before 1972.

Under the Sound Recording Act, sound recordings fixed 

after February 15, 1972, are subject to a compulsory license 

regime for performance via digital transmission and are 

excused from infringement for performance via terrestrial 

radio. Congress reserved governance of sound recordings 

fixed before 1972 to state statutory and common law and 

excluded such sound recordings from federal copyright 

protection until 2067.

The plaintiffs owned sound recordings embodying 

musical performances initially fixed in analog format prior 

to February 15, 1972. They remastered these pre-1972 

sound recordings onto digital formats.

 * The Honorable Richard Linn, United States Circuit Judge for the 

U.S. Court of Appeals for the Federal Circuit, sitting by designation.

** This summary constitutes no part of the opinion of the court. It 

has been prepared by court staff for the convenience of the reader.
ABS ENTERTAINMENT V. CBS CORPORATION 3

The panel held that the district court erred in finding a 

lack of a genuine issue of material fact about the copyright 

eligibility of remastered sound recordings distributed by the 

defendants. The panel concluded that a derivative sound 

recording distinctly identifiable solely by the changes in 

medium generally does not exhibit the minimum level of 

originality to be copyrightable. 

The panel held that the district court erred in concluding 

that plaintiffs’ state copyright interest in the pre-1972 sound 

recordings embodied in the remastered sound recordings 

was preempted by federal copyright law. The panel held that 

the creation of an authorized digital remastering of pre-1972 

analog sound recordings that qualify as copyrightable 

derivative works does not bring the remastered sound 

recordings exclusively under the ambit of federal law. 

The panel held that the district court abused its discretion 

by excluding the testimony of plaintiffs’ expert, excluding 

certain reports as evidence of defendants’ performance of 

plaintiffs’ sound recordings in California, and granting 

partial summary judgment of no infringement with respect 

to the samples contained in those reports.

The panel concluded that the district court’s strict 

application of its local rules with respect to the timeliness of 

plaintiffs’ motion for class action certification was 

inconsistent with the Federal Rules of Civil Procedure and 

was thus an abuse of discretion.

The panel reversed the grant of summary judgment and 

the striking of class certification and remanded for further 

proceedings.
4 ABS ENTERTAINMENT V. CBS CORPORATION

COUNSEL

Robert Edward Allen (argued), Alan P. Block, Roderick G. 

Dorman, and Lawrence M. Hadley, McKool Smith 

Hennigan P.C., Los Angeles, California; Kathleen E. 

Boychuck, Andrew Szot, and Marvin A. Miller, Miller Law 

LLC, Chicago, Illinois; for Plaintiffs-Appellants.

Robert M. Schwartz (argued), Amit Q. Gressel, Andrew J. 

Strabone, and Victor Jih, Irell & Manella LLP, Los Angeles, 

California, for Defendants-Appellees.

Richard S. Mandel, Cown Liebowitz & Latman P.C., New 

York, New York; George M. Borowsky, Recording Industry 

Association of America Inc., Washington, D.C.; for Amicus 

Curiae Recording Industry Association of America Inc.

Morgan E. Pietz, Gerard Fox Law P.C., Los Angeles, 

California; Katrina Novak, Lowe & Associates P.C., Los 

Angeles, California; for Amicus Curiae California Society 

of Entertainment Lawyers.

Steven G. Sklaver, Kalpana Srinivasan, and Stephen E. 

Morrissey, Susman Godfrey LLP, Los Angeles, California; 

Daniel B. Lifschitz, Maryann R. Marzano, and Henry 

Gradstein, Gradstein & Marzano P.C., Los Angeles, 

California; for Amicus Curiae Flo & Eddie Inc.

Andrew M. Gass and Elizabeth H. Yandell, Latham & 

Watkins LLP, San Francisco, California; Roman Martinez, 

Latham & Watkins, Washington, D.C.; for Amicus Curiae 

iHeartMedia Inc.
ABS ENTERTAINMENT V. CBS CORPORATION 5

Stephen B. Kinnard, Paul Hastings LLP, Washington, D.C.; 

Emmy Parsons, Garrett Levin, and Rick Kaplan, National 

Association of Broadcasters, Washington, D.C.; for Amicus 

Curiae National Association of Broadcasters.

OPINION

LINN, Circuit Judge:

Appellants ABS Entertainment, Inc., Barnaby Records, 

Inc., Brunswick Record Corp. and Malaco, Inc. 

(collectively, “ABS”) appeal from the grant of summary 

judgment by the Central District of California in favor of 

CBS Corporation and CBS Radio, Inc. (collectively, 

“CBS”), holding that CBS did not violate any state law 

copyrights possessed by ABS in sound recordings originally 

fixed before 1972. ABS also appeals from the district 

court’s striking of its class action certification, and certain 

evidentiary rulings.

We conclude that the district court erred in finding a lack 

of a genuine issue of material fact about the copyright 

eligibility of remastered sound recordings distributed by 

CBS and improperly concluded that ABS’s state copyright 

interest in pre-1972 sound recordings embodied in the 

remastered sound recordings was preempted. We also 

conclude that the district court abused its discretion by 

excluding the testimony of ABS’s expert Paul Geluso, 

excluding the Triton Reports as evidence of CBS’s 

performance of ABS’s sound recordings in California, and 

granting partial summary judgment of no infringement with 

respect to the samples contained in those reports. Finally, 

we conclude that the district court’s strict application of its 

local rules with respect to the timeliness of ABS’s motion 
6 ABS ENTERTAINMENT V. CBS CORPORATION

for class action certification was inconsistent with the 

Federal Rules of Civil Procedure and was thus an abuse of 

discretion.

For the reasons set forth below, we reverse the grant of 

summary judgment and the striking of class certification, 

and remand for further proceedings consistent with this 

opinion.

I

In 1971, Congress passed the Sound Recording Act. 

This Act for the first time created federal copyright 

protection for certain sound recordings. Under that law, 

sound recordings fixed after February 15, 1972 were made 

subject to a compulsory license regime for performance via 

digital transmission and were excused from infringement for 

performance via terrestrial radio. 17 U.S.C. §§ 114, 301(c).

Congress reserved governance of sound recordings fixed 

before 1972 to state statutory law and common law and 

excluded such sound recordings from federal copyright 

protection until 2067. 17 U.S.C. § 301(c) (“With respect to 

sound recordings fixed before February 15, 1972, any rights 

or remedies under the common law or statutes of any State 

shall not be annulled or limited by this title until February 

15, 2067 . . . . [N]o sound recording fixed before February 

15, 1972, shall be subject to copyright under this title before, 

on, or after February 15, 2067.”).

ABS owns sound recordings embodying musical 

performances initially fixed in analog format prior to 
ABS ENTERTAINMENT V. CBS CORPORATION 7

February 15, 1972 (“pre-1972 sound recordings”).1 As 

digital formats replaced analog ones, ABS hired remastering 

engineers to remaster the pre-1972 sound recordings onto 

digital formats (“remastered sound recordings”). In doing 

so, ABS determined to optimize the recordings for the new 

digital format using standard, technical processes to create 

accurate reproductions of its original pre-1972 analog 

recordings and did not set out to create any new and different 

sound recordings. ABS contends that this resulted in a 

change in quality but not a substantial difference in the 

identity or essential character of the sound recordings 

themselves. ABS argues that injecting a substantial 

difference in the digital remasters from their analog originals 

would have diminished the value of the remastered sound 

recordings, contrary to ABS’s objective in seeking to fully 

exploit its intellectual property in those sound recordings.

ABS did not enter copies of the contracts between ABS 

and the remastering engineers into the record, but both 

parties agree that ABS authorized the creation of the 

remastered sound recordings at issue here.2 There is no 

dispute that the remastered sound recordings contain only 

the sounds (i.e. the vocals and instruments) originally 

performed and fixed in the studio before 1972 and contained 

in the pre-1972 sound recordings, and that no sounds were 

removed or rearranged from the original fixed version. ABS 

 1 For purposes of this appeal, the sound recordings at issue are 

defined by a series of 174 “representative samples” by artists including 

Al Green, the Everly Brothers, Jackie Wilson, King Floyd, and other 

artists.

2 The parties vigorously dispute whether the authorization to create 

the remastered sound recordings also authorizes the creation of 

derivative works, and which party bears the burden of proving such 

authorization (or lack thereof).
8 ABS ENTERTAINMENT V. CBS CORPORATION

agrees that the remastered sound recordings are not identical 

to the pre-1972 sound recordings, but contends that any 

differences were trivial and of no copyrightable 

consequence.

CBS delivers music content through terrestrial radio and 

digital streaming, including 18 music stations in California 

that are themselves streamed over the internet in 

“simulcast.” CBS’s Radio 2.0 system logs “all sound 

recordings it digitally transmits over the Internet,” and a 

third party, Triton, tracks CBS’s simulcasts. CBS does not 

use any analog sound recordings; it exclusively relies on 

digitally mastered or remastered sound recordings for the 

content it delivers to its customers. For all the broadcast 

content, CBS paid a royalty to the owner of the underlying 

musical composition. For the digitally streamed content, 

CBS paid the compulsory license fee under the Sound 

Recording Act to Sound Exchange. For content delivered by 

terrestrial radio, CBS does not pay a license fee pursuant, as 

permitted, to the Sound Recording Act’s safe haven for 

terrestrial radio performance. See 17 U.S.C. § 114(d).

II

On August 17, 2015, ABS filed a putative class action 

against CBS in the Central District of California, alleging 

that CBS’s transmission and distribution of the remastered 

sound recordings violated California state law—specifically, 

California Civil Code § 980(a)(2) (protecting the property 

rights of an author of a sound recording fixed prior to 

February 15, 1972); misappropriation and conversion; and 

unfair competition, under California Business and 

Professions Code § 17200.

On November 17, 2015, the district court denied a joint 

stipulation to extend the 90-day deadline for filing a motion 
ABS ENTERTAINMENT V. CBS CORPORATION 9

for class action certification to allow for class certification 

discovery, explaining that there was “no show of cause, let 

alone good cause.” On November 19, 2015, the expiration 

date of the local rule’s 90-day deadline for filing of class 

certification, the court denied without explanation another 

joint stipulation to extend the filing date. That same day, 

ABS timely filed a motion for class certification. On 

November 25, 2015, the district court struck the motion for 

class certification because it set a hearing date for the motion 

beyond the 35-day period after service of process as required 

by the court’s standing orders and it did not include a 

statement pursuant to Local Rule 7-3 that a “conference of 

counsel” took place prior to the filing of the motion. The 

court then struck ABS’s class allegations as untimely filed 

under Local Rule 23-3.

CBS thereafter filed a motion for summary judgment, 

arguing that there was no genuine issue of material fact that 

the remastered sound recordings were authorized original 

derivative works, subject only to federal copyright law. In 

support of its motion, CBS submitted declarations from 

music engineers, including from Durand R. Begault, 

attesting that the remastering process involved originality 

and aesthetic judgment. In response, ABS submitted expert 

declarations of its own, including from Paul Geluso, who 

testified that the pre-1972 and remastered recordings 

“embodied” the same performance based on waveform, 

spectral, and critical listening analysis.

The district court decided two important evidentiary 

issues and granted summary judgment to CBS. The district 

court excluded Geluso’s testimony under Federal Rule of 

Evidence 702 and Daubert v. Merrell Dow Pharms., Inc., 

509 U.S. 579, 589–90 (1993) as “unscientific” and 

“unnecessary to aid a fact finder capable of listening to the 
10 ABS ENTERTAINMENT V. CBS CORPORATION

sound recordings on his or her own,” and, “[a]lternatively” 

because Geluso’s testimony was “irrelevant.” The court 

reasoned that Geluso limited his forensic analysis to only the 

first five seconds of each sound recording, which was 

“clearly inadequate to rule out the possibility that non-trivial 

differences exist between the [pre-1972 and remastered 

sound recordings].” The court also rejected Geluso’s 

reliance on “critical listening” as undefined and unscientific, 

and objected to Geluso’s failure to include in his report the 

results of his phase inversion testing, which the court 

categorized as “adverse to Plaintiffs’ position.”

Considering only Begault’s expert testimony, the district 

court then held that there was no genuine issue of material 

fact that the remastering created original derivative works 

protected by federal copyright law. The district court 

explained that “during the remastering process, at least some 

perceptible changes were made to Plaintiff’s Pre-1972 

Sound Recordings,” and that these changes were not merely 

“mechanical” or “trivial” changes, but rather “reflect 

multiple kinds of creative authorship, such as adjustments of 

equalization, sound editing, and channel assignment.” The 

court thus concluded that as to the 57 works reviewed by 

both parties’ experts, the remastered sound recordings were 

entitled to federal copyright protection as original derivative 

works.

Next, the district court concluded that ABS authorized 

the creation of the remastered sound recordings, because 

ABS had failed to meet its burden to show that its 

authorization to create the remastered sound recordings did 

not extend to the creation of a derivative work, and because, 

in any event, “the right to claim copyright in a non-infringing 

derivative work arises by operation of law, not through 

authority from the copyright owner of the underlying work.”
ABS ENTERTAINMENT V. CBS CORPORATION 11

The district court also concluded that, because the 

remastered sound recordings, created after 1972, were 

original and authorized, the remastered sound recordings 

were exclusively governed by federal copyright law. 

Therefore, the district court held, CBS had the right to 

perform the remastered sound recordings by complying with 

the statutory compulsory license obligations and taking 

advantage of the terrestrial radio performance safe harbor 

under 17 U.S.C. § 114. The district court assumed that 

because the right to perform the remastered sound recordings 

had been secured, CBS’s performance of the remastered 

sound recordings could not infringe the pre-1972 sound 

recordings.

The district court also held, in the alternative, that CBS 

was entitled to partial summary judgment of noninfringement with respect to 126 of the 174 representative 

remastered sound recordings because ABS failed to provide 

evidence of CBS’s performance of those sound recordings. 

The evidence presented with respect to the 174 samples 

breaks down as follows. Sixty samples were contained in 

CBS’s internal digital audio library, Radio 2.0, which tracks 

broadcast or transmission via CBS’s internet-only radio 

stations. The parties agree that for 48 of these, ABS 

presented evidence of CBS’s broadcast or transmission of 

sound recordings embodying the same performances as 

ABS’s pre-1972 sound recordings. The parties also agree 

that nine sound recordings were not infringing because 

CBS’s records show that it broadcast versions based on 

different performances than the pre-1972 sound recordings. 

Three of these sound recordings were not reviewed by the 

parties’ experts. An additional 40 samples were contained 

exclusively in the Triton Reports, which are created by a 

third-party company to track “simulcasts”—live internet 

streams—of CBS’s radio broadcasts across the United 
12 ABS ENTERTAINMENT V. CBS CORPORATION

States. The parties do not discuss on appeal the evidence 

available with respect to the remaining 74 sound recordings.

The district court concluded that the Triton Reports were 

hearsay and did not fall within the business records 

exception because “Plaintiffs have failed to establish any one 

of the requirements necessary for them to be admitted under 

the business records exceptions.” The district court thus 

concluded that ABS had failed to raise a genuine issue of 

material fact as to CBS’s transmission or broadcast in 

California of all but the 48 samples both parties agree CBS 

transmitted.

ABS appealed each of the adverse rulings.

III

We review the district court’s grant of summary 

judgment de novo, asking whether the moving party has met 

its burden to prove the absence of genuine issues of material 

fact. U.S. Auto Parts Net., Inc. v. Parts Geek, LLC, 692 F.3d 

1009, 1014 (9th Cir. 2012). A genuine issue of material fact 

exists if, drawing all inferences in favor of the non-moving 

party, a reasonable jury could find in favor of the nonmoving party. Id. Whether a work is protected by copyright 

law is a mixed question of law and fact, which we review de 

novo. Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068, 1073 

(9th Cir. 2000). We review the district court’s evidentiary 

rulings for an abuse of discretion. Fonseca v. Sysco Food 

Servs. Of Ariz., Inc., 374 F.3d 840, 845 (9th Cir. 2004).

IV

We begin with the district court’s determination that 

“there is no genuine dispute of material fact that CBS 

performed a post-1972 version of Plaintiffs’ pre-1972 Sound 
ABS ENTERTAINMENT V. CBS CORPORATION 13

Recordings which contained federally-copyrightable 

original expression added during the remastering process.”

A

The constitutional purpose of copyright law is “to 

promote the Progress of Science and the useful Arts” by 

securing to “authors the right to their original expression, but 

encourage[ing] others to build freely upon the ideas and 

information conveyed by a work.” Feist Pubs., Inc. v. Rural 

Tel. Serv. Co., 499 U.S. 340, 349–50 (1991). “The sine qua 

non of copyright is originality.” Id. at 345. “Original, as the 

term is used in copyright, means only that the work was 

independently created by the author (as opposed to copied 

from other works), and that it possesses at least some 

minimal degree of creativity.” Id. A product of independent 

creation is distinguished from a copy in that it contains 

something which “owes its origin” to the independent 

creator. Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 

53, 58 (1884). A copy, on the other hand, is not a separate 

work, but a mere representation or duplication of a prior 

creative expression. 3

A “derivative work” is defined in the Copyright Act as a 

work “based upon one or more preexisting works” that 

 3 The Copyright Act defines “Copies” as “material objects, other 

than phonorecords, in which a work is fixed by any method now known 

or later developed, and from which the work can be perceived, 

reproduced, or otherwise communicated, either directly or with the aid 

of a machine or device. The term ‘copies’ includes the material object, 

other than a phonorecord, in which the work is first fixed.” 17 U.S.C. 

§ 101. “Phonorecords” are “material objects in which sounds, other than 

those accompanying a motion picture or other audiovisual work, are 

fixed by any method now known or later developed, and from which the 

sounds can be perceived, reproduced, or otherwise communicated, either 

directly or with the aid of a machine or device.” Id.
14 ABS ENTERTAINMENT V. CBS CORPORATION

“recast[s], transform[s], or adapt[s]” a preexisting work and 

“consist[s] of editorial revisions, annotations, elaborations, 

or other modifications which, as a whole, represent an 

original work of authorship.” 17 U.S.C. § 101. A derivative 

work is copyrightable when it meets two criteria: (1) “the 

original aspects of a derivative work must be more than 

trivial,” and (2) “the original aspects of a derivative work 

must reflect the degree to which it relies on preexisting 

material and must not in any way affect the scope of any 

copyright protection in that preexisting material.” U.S. Auto 

Parts, 692 F.3d at 1016 (citing Durham Indus. v. Tomy 

Corp., 630 F.2d 905, 909 (2d Cir. 1980)). This is known as 

the Durham test. Both prongs arise out of Copyright’s basic 

focus on originality. The first prong asks “whether the 

derivative work is original to the author and non-trivial” and 

the second prong ensures that the derivative work author 

does not hinder the original copyright owner’s ability to 

exercise all of its rights. Id. at 1017.

Because derivative works do not start from scratch, 

courts have endeavored to determine the kinds of 

contributions in the derivative work that qualify as original. 

In most circumstances, derivative works contain obvious 

creative contributions and so are easily recognizable as 

distinct from the underlying work. The casting, lighting, 

cinematography, props, editing, acting, and directing 

required to craft a movie from a screenplay, for example, 

easily render the movie distinct from the screenplay. 

Likewise, the authors of most sound recordings that use a 

sample of another sound recording to create distinct 

derivative works do so by adding new vocals, instruments, 

and edits to the underlying sample. Where the alleged 

derivative work, however, is intended as, and is in fact, a 

direct representation of the original work, the contributions 

of the derivative work author are harder to identify.
ABS ENTERTAINMENT V. CBS CORPORATION 15

This court applied the two-part Durham test in 

Entertainment Research Group, Inc. v. Genesis Creative 

Group, Inc., 122 F.3d 1211 (9th Cir. 1997). In that case, 

Entertainment Research Group (“ERG”) made threedimensional inflatable costumes based on copyrighted 

characters like “Toucan Sam” and “Cap’n Crunch.” Id. at 

1217–18. In relevant part, the court, in applying the 

originality prong, concluded that the costume-maker’s 

contributions—including the change in format from 2D to 

3D; changes in the proportion of textures, facial features and 

facial expressions; and the changes attendant to the 

functional addition of movement—were insufficient to 

render the costumes copyright eligible as derivative works. 

Id. at 1223.

The court first discounted the changes occasioned by 

technical, functional, and utilitarian concerns, such as the 

differences in proportion (necessitated by the requirement 

that a human body must fit within the costume) and texture 

(necessitated by the material choice), because copyright in a 

sculptural work is limited to its form and cannot extend to its 

mechanical or utilitarian aspects under 17 U.S.C. § 101. Id.

at 1221. The remaining changes in the facial expressions 

were also deemed insufficient to support a derivative work 

copyright, because “no reasonable trier of fact would see 

anything but a direct replica of the underlying characters.” 

Id. at 1224. “Viewing the three-dimensional costumes and 

the two-dimensional drawings upon which they are based, it 

is immediately apparent that the costumes are not exact 

replicas of the two-dimensional drawings.” Id. at 1223. 

These identifiable changes “themselves reflect[] no 

independent creation, no distinguishable variation from 

preexisting works, nothing recognizably the author’s own 

contribution that sets [ERG’s costumes] apart from the 

prototypical [characters]” the costumes represented. Id. at 
16 ABS ENTERTAINMENT V. CBS CORPORATION

1223 (quoting Durham, 630 F.2d at 910). In other words, 

the costumes did not constitute new works, despite the 

independent decision-making involved in their creation. Id.

at 1224 (holding that the different facial expressions, 

proportions, and functional capabilities were “clearly not the 

defining aspect[s] of the costumes” when viewed “in the 

context of the overall costume” and, thus, were not 

considered distinguishable variations capable of supporting 

independent copyright protection). The court then went on 

to apply the second prong of Durham, noting that because of 

the similarity between ERG’s costumes and the underlying 

characters, granting a derivative work copyright in the 

costumes would improperly give ERG “a de facto monopoly 

on all inflatable costumes depicting the copyrighted 

characters also in ERG’s costumes.” Id.

The Tenth Circuit similarly held that a digital work must 

be more than a copy of an underlying analog work to support 

copyright as a derivative work. In Meshwerks, Inc. v. Toyota 

Motor Sales U.S.A., 528 F.3d 1258 (10th Cir. 2008), the 

Tenth Circuit considered the copyright eligibility of 

Meshwerks’ digital wire frame models used as skeletons for 

the interactive display of Toyota’s vehicle designs online 

and in advertising. Id. at 1260. Meshwerks measured 

Toyota’s vehicles with an articulated arm tethered to a 

computer and mapped the results onto a computerized grid 

using modeling software; connected the measured points to 

create a wire frame; and manually adjusted about ninetypercent of the data points to make the models more closely 

resemble the vehicles. Id. at 1260–61. The Tenth Circuit 

drew a sharp distinction between copies and original works, 

explaining that copies cannot qualify for copyright 

protection “since obviously a copier is not a creator, much 

less an ‘independent’ creator.” Id. at 1267 (citing Patry on 

Copyright § 3:28). The wire frames were copies, according 
ABS ENTERTAINMENT V. CBS CORPORATION 17

to the court, because they “depict nothing more than 

unadorned Toyota vehicles—the car as car,” the visual 

designs of “which do not owe their origins to Meshwerks.” 

Id. at 1265, 1268.

Meshwerks relied on three important doctrines in coming 

to that conclusion. First, as in Entertainment Research 

Group, the mere act of translating the derivative work into a 

different medium did not confer a distinct identity on the 

derivative work. Id. at 1267 (“[T]he fact that a work in one 

medium has been copied from a work in another medium 

does not render it any the less a ‘copy.’” (citing 2 Nimmer 

on Copyright § 8.01[B])); id. (noting that although the wire 

models did not “recreate Toyota vehicles outright—steel, 

rubber, and all,” “what Meshwerks accomplished was a 

peculiar kind of copying”). Second, the court analyzed 

originality by comparing the start and end products—the 

underlying vehicle designs and the wire models—not the 

process used to get from one to the other. Id. at 1268 (“[I]n 

assessing the originality of a work for which copyright 

protection is sought, we look only at the final product, not 

the process, and the fact that intensive, skillful, and even 

creative labor is invested in the process of creating a product 

does not guarantee its copyrightability.”). Finally, the court 

considered Toyota’s intent in authorizing Meshwerks to 

create an accurate representation of Toyota’s vehicles, not 

something new and different: “If an artist affirmatively sets 

out to be unoriginal—to make a copy of someone else’s 

creation, rather than to create an original work—it is far 

more likely that the resultant product will, in fact, be 

unoriginal.” Id.

The Second Circuit considered the originality needed to 

justify copyright protection for a derivative work in L. Batlin 

& Son, Inc. v. Snyder. 536 F.2d 486 (2d Cir. 1976). In that 
18 ABS ENTERTAINMENT V. CBS CORPORATION

case, appellant Snyder obtained a copyright registration for 

a plastic version of a cast metal Uncle Sam bank that had 

previously entered the public domain.4 Snyder made several 

changes in the plastic version: he made it shorter “in order to 

fit into the required price range and quality and quantity of 

material to be used;” changed the proportions of Uncle 

Sam’s face, bag, hat, and eagle; changed the textures of 

several components; created a single-piece mold 

incorporating the umbrella instead of the two-piece mold of 

the metal bank; and replaced the arrows in the eagle’s talons 

with leaves, because “the arrows did not reproduce well in 

plastic on a smaller size.” Id. at 488–89.

Even though the plastic bank was not identical to the 

metal original, the Second Circuit held that the changes did 

not amount to a distinguishable variation in the identity or 

essential character of the original work. Id. at 491. The 

transfer of the expression from the underlying cast iron 

Uncle Sam to a plastic version, despite overcoming technical 

challenges and, arguably, improving the original in terms of 

lowering the price, did not result in a copyrightable 

derivative work, because the changes did not constitute the 

“substantial variation” necessary to support copyright. 

Instead, they were merely the “trivial” results of the 

“translation to a different medium.” Id. The plastic bank 

 4 The public domain metal bank comprised: “Uncle Sam, dressed in 

his usual stove pipe hat, blue full dress coat, starred vest and red and 

white striped trousers, and leaning on his umbrella, stands on a four- or 

five-inch wide base, on which sits his carpetbag. A coin may be placed 

in Uncle Sam's extended hand. When a lever is pressed, the arm lowers, 

and the coin falls into the bag, while Uncle Sam's whiskers move up and 

down. The base has an embossed American eagle on it with the words 

‘Uncle Sam’ on streamers above it, as well as the word ‘Bank’ on each 

side.” 536 F.2d at 488.
ABS ENTERTAINMENT V. CBS CORPORATION 19

was not a new work—it did not embody “the author’s 

tangible expression of his ideas,” id. at 492 (quoting Mazer 

v. Stein, 347 U.S. 201, 214 (1954)), and was thus a mere 

copy of the underlying work.

The Copyright Office guidance provided in Circular 56 

reflects that a similar analysis applies specifically to 

derivative sound recordings.5 In relevant part, Circular 56 

explains the following about derivative sound recordings:

A derivative sound recording is an audio 

recording that incorporates preexisting 

sounds, such as sounds that were previously 

registered or published or sounds that were 

fixed before February 15, 1972. The 

preexisting recorded sounds must be 

rearranged, remixed, or otherwise altered in 

sequence or character, or the recording must 

contain additional new sounds. The new or 

revised sounds must contain at least a 

minimum amount of original sound recording 

authorship.

Examples of derivative sound recordings 

include:

• A mashup comprising tracks and sounds 

from multiple sources.

 5 Circulars provide Copyright Office guidance on various issues. 

We may rely on them as persuasive but not binding authority. See 

Kitchens of Sara Lee, Inc. v. Nifty Foods Corp., 266 F.2d 541, 544 (2d 

Cir. 1959) (citing Copyright Office publication); In re World Aux. Power 

Co., 303 F.3d 1120, 1131 n.73 (9th Cir. 2002) (citing Circular 4).
20 ABS ENTERTAINMENT V. CBS CORPORATION

• Additional tracks added to a previously 

published album.

Mechanical changes or processes, such as a 

change in format, declicking, or noise 

reduction, generally do not contain enough 

original authorship to warrant registration

United States Copyright Office’s Circular No. 56, Copyright 

Registration for Sound Recordings, Revised Sept. 2017 

(“Circular 56”), available at <https://www.copyright.gov/

circs/circ56.pdf>.6 In common with the cases noted above, 

Circular 56 identifies original authorship as the touchstone 

of a copyright eligible derivative work and calls for either 

“additional new sounds” or some other minimum amount of 

original sound recording authorship, such as the 

rearrangement, remixing, or alteration of sounds in sequence 

or character. Id. According to the Circular, changes to 

format, declicking and noise reduction, even if perceptible, 

do not amount to the minimal amount of original sound 

recording authorship necessary under the law and do not 

warrant separate copyright protection.

From the foregoing, it should be evident that a 

remastered sound recording is not eligible for independent 

copyright protection as a derivative work unless its essential 

character and identity reflect a level of independent sound 

recording authorship that makes it a variation 

 6 The district court discussed an earlier version of Copyright Office 

Circular 56 and cited a key example therein of a derivative sound 

recording: “a remastering that involves multiple kinds of creative 

authorship, such as adjustments of equalization, sound editing, and 

channel assignment.” This example has since been removed from the 

updated version of Circular 56.
ABS ENTERTAINMENT V. CBS CORPORATION 21

distinguishable from the underlying work. The essential 

character and identity of a sound recording include, inter 

alia, the aggregate of the “emphasis or the shading of a 

musical note, the tone of voice, the inflection, the timing of 

a vocal rendition, musical or spoken,” 1 Nimmer on 

Copyright § 2.10 (2018); the choice of instrumental, vocal 

and percussion components; and the subtleties of dynamics 

and other performance characteristics that together result in 

“something irreducible, which is one [band’s] alone.” See 

Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 

250 (1903) (Holmes, J.). Such factors distinguish an original 

vocal rendition of a song from the vocal rendition of the 

same song by another singer and are not present when an 

original vocal rendition is merely remastered. A 

remastering, for example, of Tony Bennett’s “I Left My 

Heart in San Francisco” recording from its original analog 

format into digital format, even with declicking, noise 

reduction and small changes in volume or emphasis, is no 

less Bennett’s “I Left My Heart in San Francisco” 

recording—it retains the same essential character and 

identity as the underlying original sound recording, 

notwithstanding the presence of trivial, minor or 

insignificant changes from the original. That is so even if 

the digital version would be perceived by a listener to be a 

brighter or cleaner rendition.

If an allegedly derivative sound recording does not add 

or remove any sounds from the underlying sound recording, 

does not change the sequence of the sounds, and does not 

remix or otherwise alter the sounds in sequence or character, 

the recording is likely to be nothing more than a copy of the 

underlying sound recording and is presumptively devoid of 

the original sound recording authorship required for 

copyright protection. Such a work lacks originality. This 

presumption may, of course, be overcome, by showing that 
22 ABS ENTERTAINMENT V. CBS CORPORATION

the work contains independent creative content, 

recognizable contributions of sound recording authorship or 

variations in defining aspects that give a derivative sound 

recording a new and different essential character and 

identity.

A number of practical considerations, including but not 

limited to the considerations that follow, inform a 

determination of the essential character and identity of a 

remastered sound recording. First, the mere translation of a 

work from an analog to a digital medium to take advantage 

of technological improvements does not itself transform the 

essential character and identity of the underlying work. See 

Meshwerks, 528 F.3d at 1267 (“[W]e hold, as many before 

us have already suggested, that standing alone, ‘[t]he fact 

that a work in one medium has been copied from a work in 

another medium does not render it any the less a ‘copy’’” 

(citing 2 Nimmer on Copyright § 8.01[B])); L. Batlin, 

536 F.2d at 489 (holding that changes in the plastic bank, 

such as the “functional one of making a more suitable (and 

probably less expensive) figure in the plastic medium” and 

the aesthetic decision to replace the arrows with feathers 

because arrows did not reproduce well in plastic, were not 

original); Entm’t Res. Grp., 122 F.3d at 1221, 1223 (with 

respect to sculptural works, explaining that “any aspects of 

ERG’s costumes that are purely functional, utilitarian or 

mechanical will not be given any copyright protection” and 

agreeing “with the district court's conclusion that the 

differences in form, texture and proportionality that ERG 

points to as nontrivial differences all stemmed from 

functional considerations”). See also Durham, 630 F.2d at 

913 (“[C]opyright protection extends only to the artistic 

aspects, but not the mechanical or utilitarian features, of a 

protected work.”). Such functionally driven decision-
ABS ENTERTAINMENT V. CBS CORPORATION 23

making does not demonstrate the kind of originality with 

which copyright is exclusively concerned.

Second, a remastering engineer’s objective “to make a 

copy of someone else’s creation, rather than to create an 

original work,” Meshwerks, 528 F.3d at 1268, even if that 

task seeks to improve quality, brightness or crispness of 

sound, is persuasive evidence that the final product likely 

contains little more than a trivial contribution and does not, 

in fact, result in an original work. See Entm’t Res. Grp., 

122 F.3d at 1223 (“ERG’s customers—the companies—

wanted costumes replicating their characters. Thus, because 

ERG followed detailed instructions from its customers 

regarding exactly how they wanted the costumes to appear, 

it cannot be said that ERG’s artistic contributions were more 

than merely trivial contributions.”).

Finally, the process used to create the derivative work is 

seldom informative of originality in the copyright sense. 

Meshwerks, 528 F.3d at 1268. The remastering engineer’s 

application of “intensive, skillful, and even creative labor . . . 

does not guarantee its copyrightability.” Id.; see also L. 

Batlin, 536 F.2d at 491 (“Nor can the requirement of 

originality be satisfied simply by the demonstration of 

‘physical skill’ or ‘special training.’”). In Meshwerks, the 

exercise of independent technical and aesthetic judgment in 

adjusting the wire-frames did not result in a copyright 

eligible work, as those efforts were directed wholly to more 

effectively representing the underlying works, not to 

changing or adding to those works. 528 F.3d at 1268.

B

In this case, the district court determined that “at least 

some perceptible changes were made to Plaintiff’s Pre-1972 

Sound Recordings” and that these changes were not merely 
24 ABS ENTERTAINMENT V. CBS CORPORATION

“mechanical” or “trivial.” Therefore, the district court held, 

there was no genuine dispute of material fact that the 

remastered works performed by CBS were “sufficient[ly] 

original[].” Id. at 12. This conclusion was legal error.

In Entertainment Research Group, for example, the 

costumes were clearly distinguishable from the underlying 

characters. We nevertheless held that the costume-makers’ 

contributions were not original because the costumes would 

not be identified as distinguishable variations; i.e., the 

essential character and identity of each were not changed. 

Entm’t Res. Grp., 122 F.3d at 1223–24 (“Viewing the threedimensional costumes and the two-dimensional drawings 

upon which they are based, it is immediately apparent that 

the costumes are not exact replicas of the two-dimensional 

drawings,” but there was no originality because “no 

reasonable trier of fact would see anything but a direct 

replica of the underlying characters.”); see also Meshwerks, 

528 F.3d at 1267 (holding that the derivative digital wire 

frame models were “a peculiar kind of copy” of Toyota 

vehicles, although the wire models did not “recreate Toyota 

vehicles outright—steel, rubber, and all”); Durham, 

630 F.2d at 909 (“The three Tomy figures are instantly 

identifiable as embodiments of the Disney characters in yet 

another form: Mickey, Donald and Pluto are now 

represented as small, plastic, wind-up toys,” although the 

underlying Disney characters did not include the wind-up 

mechanism in the derivative toys.).

Here, there is no dispute that all of the sounds contained 

in the remastered sound recordings—the vocals, 

instruments, inflection, dynamics, rhythms, and 

sequences—were initially fixed in a studio before 1972. 

There is also no dispute that the remastering engineers did 

not add or remove any sounds and did not edit or resequence 
ABS ENTERTAINMENT V. CBS CORPORATION 25

the fixed performances. For these reasons, the remasters 

presumptively lacked the originality necessary to support 

copyright protection as derivative works.

The district court, in ruling otherwise and concluding 

that no genuine issues of material fact exist on the originality 

of the digital remasters, applied an incorrect test. In doing 

so, the district court placed critical reliance on the testimony 

of CBS’s expert, Begault. Begault explained that the 

digitally perceptible changes to “timbre, spatial imagery, 

sound balance, and loudness range” that he identified in the 

remastered sound recordings were measures of sound 

quality.

7 Such technical improvements associated with the 

translation of the analog pre-1972 sound recordings into a 

digital medium, however, do not support a finding of 

originality. See L. Batlin, 536 F.2d at 489 (rejecting changes 

made for the “functional” purpose “of making a more 

suitable (and probably less expensive) figure in the plastic 

medium”); Entm’t Res. Grp., 122 F.3d at 1223 (discounting 

differences in form, texture and proportionality arising out 

of the need to create space for a human to fit into a 3-D 

costume); Meshwerks, 528 F.3d at 1267 (holding that the 

technical adjustments of data points to more accurately 

reflect Toyota vehicles in a digital medium did not constitute 

the kind of contribution to qualify for copyright).

 7 Title 17, Section 114(b) explains that the exclusive right of a 

copyright holder in a sound recording “is limited to the right to prepare 

a derivative work in which the actual sounds fixed in the sound recording 

are rearranged, remixed, or otherwise altered in sequence or quality.”

(emphasis added). We read “quality” in § 114 to be referring to character 

and identity rather than a measure of improvement. See Quality, MiriamWebster (July 19, 2018), https://www.merriam-webster.com/

dictionary/quality.
26 ABS ENTERTAINMENT V. CBS CORPORATION

The purpose and effect of the remastering here was 

similarly a technical improvement. In its brief to this court, 

CBS explained that the reason for the remastering was to 

overcome the technical limitations of vinyl using the “nearly 

unlimited” sound range that CDs could reproduce. William 

Inglot, a remastering engineer responsible for some of the 

remastered sound recordings here and one of CBS’s 

witnesses, testified that his goal was to do a “good job,” to 

“do a better version of maybe what the production process 

was at that time because you have a little more control than 

maybe they had,” by “taking advantage of the technology.”

Begault analyzed the differences between the pre-1972 

sound recordings and the remastered sound recordings using 

sensitive digital analysis and concluded that the remastered 

sound recordings would be different if there was any 

difference in any of the four analyzed characteristics. But 

Begault nowhere analyzed whether the changes he identified 

reflected any original sound recording authorship that might 

have changed the essential character and identity of the 

resulting sound recordings. The technical changes as 

measured by sensitive digital analysis does not necessarily 

result in a change in the essential character and identity of 

the work in question. ABS’s expert, Geluso, aptly explained 

this shortcoming of Begault’s analysis: “I believe that two 

sound recordings would have to be nearly identical to pass 

all four of [Begault’s] tests. For example, Begault set a 

standard of 1 dB of loudness differential for two recordings 

as his passing mark. This is unreasonably extreme. In my 

experience, 1dB of dynamic range compression is barely 

audible and will most likely go undetected by a listener.” 

Geluso also explained that the spectral balance of a sound 

recording can be adjusted on most consumer listening 

equipment, and the loudness can be adjusted on most 

consumer software used to create and edit music. It is 
ABS ENTERTAINMENT V. CBS CORPORATION 27

unlikely that such changes—even if made with more 

technical expertise by a remastering engineer and fixed in a 

sound recording—would amount to a change in the essential 

character and identity of the sound recording.

The district court excluded several paragraphs of 

Geluso’s declaration as unscientific, based on unreliable 

methodology, lacking adequate foundation as expert 

testimony, unnecessary and irrelevant. The district court 

found Geluso’s critical listening methods to be unscientific, 

and “unexplained in Mr. Geluso’s declaration.” But in his 

declaration, Geluso cited an FBI report on forensic sound 

recording analysis that held out critical listening as an 

essential component of forensic audio analysis. Also, 

despite Geluso’s testimony that he critically listened to all of 

the recordings he examined, the district court found fatally 

deficient the fact that Geluso limited his waveform and 

spectral analysis to the first five seconds of each recording. 

While the shortness of the technical analysis impacts the 

weight of that testimony, there is no reason to question the 

science behind or the methodology of such testing for 

whatever it may show. And the district court failed to 

explain why five seconds of waveform analysis was 

insufficient to determine whether the pre-1972 and 

remastered sound recordings embodied the same 

performances. Moreover, Geluso’s testimony, offered in 

rebuttal to the testimony of CBS’s expert, Begualt, addressed 

the nature and extent of the differences between the original 

analog recordings and the digitally remastered sound 

recordings and was thus directly relevant to the issue of 

originality before the court. The district court also found 

deficient the fact that Geluso excluded from his report a 

phase inversion test from the first test he attempted. But that 

is not an adequate basis to exclude Geluso’s testimony. That 

test merely identifies the fact of difference—something that 
28 ABS ENTERTAINMENT V. CBS CORPORATION

ABS and Geluso do not contest exists between the pre-1972 

and remastered sound recordings. The district court’s 

exclusion of Geluso’s testimony was an abuse of discretion, 

and his testimony should be considered in full by the district 

court on remand.

The district court also erred in failing to consider ABS’s 

objective in creating the digital remasters. ABS hired 

recording engineers to create digitally remastered sound 

recordings of the pre-1972 sound recordings in order to 

allow for digital distribution and compilation albums and to 

take advantage of the improvements enabled by digital 

technology, not to introduce any substantive changes. As 

one ABS representative explained: “we understood as the 

technology increased, as things went from LP and cassette 

to CD [that the recordings would be re-mastered] . . . in such 

a way that they could be CD’s made out of them. They had 

to go digital. We knew they were going to have to be 

converted analog to digital.” Plaintiff Brunswick’s 

representative agreed, stating that “in order to release 

recordings in a digital format that they would in fact be 

remastered.” And Inglot testified that his goal was to “do a 

better version of maybe what the production process was at 

that time because you have a little more control than maybe 

they had” by “taking advantage of the technology.” Another 

declaration submitted by Plaintiffs averred that they “never 

would have permitted a Licensee to make any substantial or 

non-trivial changes to the sound of the Recordings when 

creating a remastered copy.” Nothing in the record suggests 

that ABS set out to make any substantive changes or 

distinguishable variations that would give the digital 

remasters a different essential character or identity, to add 

any original sound recording authorship or to do anything 

other than make accurate copies in digital format of the 

original analog sound recordings.
ABS ENTERTAINMENT V. CBS CORPORATION 29

Notwithstanding the above, CBS argues that all that is 

needed to support copyright is “more than a merely trivial 

variation,” Schrock v. Learning Curve Int’l, Inc., 586 F.3d 

513, 521 (7th Cir. 2009), and that this is the test mandated 

by U.S. Auto Parts and properly adopted by the district court. 

CBS argues that it met its burden when it pointed out 

deficiencies in ABS’s claims, and that ABS failed to provide 

significant probative evidence that the differences between 

the pre-1972 and the remastered sound recordings were 

mechanical, trivial, or insufficiently original.

CBS is correct that the threshold of creativity for 

copyright eligibility often is characterized as minimal, and 

that the courts police the amount of creativity only within the 

“narrowest and most obvious limits.” Bleistein, 188 U.S. at 

251; 1 Nimmer on Copyright § 2.01[B][1] (2018). But that 

relatively low bar does not eliminate the fundamental 

requirement of originality that is the touchstone of copyright 

protection. Here, the district court’s identification of 

“perceptible changes” between the recordings in 

characteristics relating to “quality” did not ensure that the 

remastered versions contained anything of consequence

owing its origin to the remastering engineers. As discussed 

above, a derivative sound recording that merely exhibits 

perceptible changes does not necessarily exhibit a change to 

the essential character and identity of the work or reflect the 

addition of even a minimal amount of sound recording 

authorship or originality. See also 1 Nimmer on Copyright 

§ 3.03 (2018) (“Any variation will not suffice, but one that 

is sufficient to render the derivative work distinguishable 

from its prior work in any meaningful manner will be 

sufficient.”).

CBS also argues that “copyrightability is [] purposeagnostic,” and that the creation of a derivative work for “the 
30 ABS ENTERTAINMENT V. CBS CORPORATION

purpose of migrating expression from one format to another” 

is a proper copyrightable purpose, relying on New York 

Times Co. v. Tasini, 533 U.S. 483 (2001). CBS is incorrect. 

In Tasini, freelance article authors authorized the inclusion 

of their articles into a newspaper, a collective work. The 

authors sued when their articles were included in an 

electronic database of newspapers in a form excised from the 

newspaper of which they were a part. Id. at 491. The 

Supreme Court concluded that the authors maintained their 

copyright in the articles, and that the electronic database 

infringed the authors’ copyright in their articles. Id. at 503–

04. Tasini does not say that a mere migration of a work into 

a new medium justifies an independent copyright.

Finally, CBS argues that the district court was correct to 

rely on Maljack Prods., Inc. v. UAV Corp., 964 F. Supp. 

1416 (C.D. Cal. 1997), aff'd sub nom. Batjac Prods. Inc. v. 

GoodTimes Home Video Corp., 160 F.3d 1223 (9th Cir. 

1998) to support its understanding that changes in 

equalization and quality in a sound recording support a 

derivative work copyright. In Maljack, the derivative work 

was a “panned and scanned” adaptation of a movie and its 

soundtrack. 964 F. Supp. at 1418. The enhancements to the 

public domain soundtrack there included “edit[ing] the 

motion picture’s monoaural soundtrack by remixing, 

resequencing, sweetening, equalizing, balancing, and 

stereoizing it, and also add[ing] entirely new sound 

material.” Id. Here the remastering process did not include 

remixing or stereoizing. The changes in the soundtrack in 

Maljack accompanied and had to track the changes to the 

visual changes resulting from the pan-and-scan film 

reformatting, which resulted in a cut of 44% of the film. Id.

at 1427. Also, the soundtrack accompanying the pan-andscan version was independently registered by the copyright 

office as a derivative work, creating a presumption of 
ABS ENTERTAINMENT V. CBS CORPORATION 31

copyright validity that the court found was not overcome. Id.

at 1428. None of these circumstances are present here. To 

the extent that Maljack held that the “noticeable 

improvement [in quality] over the public domain version” 

could create copyright eligibility, we do not consider that 

aspect of Maljack persuasive. See id.

We therefore conclude that a derivative sound recording 

distinctly identifiable solely by the changes incident to the 

change in medium generally does not exhibit the minimum 

level of originality to be copyrightable. In this case, the 

district court did not analyze whether the changes in quality 

identified by Begault were anything other than merely 

incidental to the transfer from the analog to the digital 

medium.

Nothing in this opinion should be construed to question 

or limit the creative contributions of the recording engineers 

and/or record producers responsible for the recording 

session that led to the initial fixation of the sound recording. 

The initial producer/engineer’s role is often to work in 

collaboration with the performing artists to make many of 

the creative decisions that define the overall sound of the 

recording as fixed, including such things as microphone 

choice, microphone placement, setting sound levels, 

equipment used, processing filters employed, tapes selected, 

session structure, and other similar decisions analogous to 

the creative choices of photographers that courts have 

consistently held to be original. See United States Copyright 

Office and Sound Recordings as Works Made for Hire: 

Hearing Before the Subcomm. on Courts and Intellectual 

Property of the H. Comm. on the Judiciary, 106th Cong. 2nd 

Sess. (2000) (statement of Marybeth Peters, Register of 

Copyrights) (“The copyrightable elements in a sound 

recording will usually, though not always, involve 
32 ABS ENTERTAINMENT V. CBS CORPORATION

‘authorship’ both on the part of the performers whose 

performance is captured and on the part of the record 

producer responsible for setting up the recording session, 

capturing and electronically processing the sounds, and 

compiling and editing them to make the final sound 

recording.”); cf. Burrow-Giles, 111 U.S. at 60 (holding that 

photographs are copyrightable to the extent of the 

photographer’s decisions with respect to costume, 

accessories, pose of subjects, light and shade and evoking 

the desired expression).

The role of remastering engineers, however is usually

very different from the role of the studio engineers. Studio 

engineers’ decisions almost always contribute to the 

essential character and identity contained in the original 

sound recording. By contrast, the remastering engineer’s 

role is ordinarily to preserve and protect the essential 

character and identity of the original sound recording, and to 

present that original sound recording in the best light 

possible by taking advantage of technological 

improvements. For example, Inglot testified that his goal 

was to “do a better version of maybe what the production 

process was at that time because you have a little more 

control than maybe they had” by “taking advantage of the 

technology.” Although we do not hold that a remastered 

sound recording cannot be eligible for a derivative work 

copyright, a digitally remastered sound recording made as a 

copy of the original analog sound recording will rarely 

exhibit the necessary originality to qualify for independent 

copyright protection.

C

The second prong of the U.S. Auto Parts/Durham test 

requires that a copyright-eligible derivative work must 

“reflect the degree to which it relies on preexisting material 
ABS ENTERTAINMENT V. CBS CORPORATION 33

and must not in any way affect the scope of any copyright 

protection in that preexisting material.” U.S. Auto Parts, 

692 F.3d at 1016. This prong ensures that a derivative work 

author—even one who contributes the requisite amount of 

creative authorship under the first prong—does not “prevent 

the owner of the preexisting work from exercising some of 

its rights under copyright law.” Id. at 1017. This prong 

protects the author’s right to authorize later derivative works 

without concern for aggressive enforcement against those 

later derivative works by the earlier derivative work 

copyright holder. In Entertainment Research Group, for 

example, we explained that “if ERG had copyrights for its 

costumes, any future licensee who was hired to manufacture 

costumes depicting these characters would likely face a 

strong copyright infringement suit from ERG.” 122 F.3d at 

1224; see also U.S. Auto Parts, 692 F.3d at 1020 (applying 

the second prong of the Durham test and concluding in that 

case, copyright in a derivative work would not circumscribe 

rights of the copyright holder in the underlying work).

The district court’s failure to fully consider this second 

prong here was legal error. See Entm’t Res. Grp., 122 F.3d 

at 1219 (adopting the Durham test over the previously 

applicable Doran test that looked only at substantial 

difference between the derivative and underlying work, 

“because the Doran test completely fails to take into account 

the rights of the holder of the copyright for the underlying 

work,” and therefore “should not be applied to determine the 

copyrightability of a derivative work that is based on a 

preexisting work that is itself copyrighted.”). Moreover, 

applying that prong, there is at least a genuine issue of 

material fact whether granting copyright protection for the 

remastered sound recordings here would undermine ABS’s 

rights in the pre-1972 sound recordings to authorize 

additional derivative works. Were ABS intent on granting 
34 ABS ENTERTAINMENT V. CBS CORPORATION

an authorization to create an intentionally derivative work, 

for example by authorizing use of the underlying works as 

samples or remixes, those authorized works would be at high 

risk of infringement suits from the remastered sound 

recording copyright holders. This risk would, in effect, grant 

the remastered sound recording copyright holder a “de facto 

monopoly” on derivative works. See id. at 1224. Indeed, in 

this case, where the underlying and derivative works are both 

sound recordings with few, if any, readily discernable 

differences, and the derivative work is the only one available 

in the vastly more accessible and marketable digital medium, 

the danger that the copyright holder of the derivative work 

could bring suit against a potential licensee of the underlying 

work is particularly acute.

If, on remand, the factfinder concludes that any or all of 

the remastered sound recordings here do manifest a change 

sufficient to create a derivative, copyrightable work, the 

factfinder should also consider the effect of recognizing a 

copyright in the remastered sound recording on ABS’s 

ability to exercise whatever copyrights it may possess in the 

pre-1972 sound recording.

For the above reasons, we conclude that the district court 

erred in holding that there were no genuine issues of material 

fact that the remastered sound recordings used by CBS were 

independently copyright eligible. We therefore reverse the 

grant of summary judgment to CBS as to that issue.

D

The parties here dispute whether ABS authorized the 

remastering engineer to create derivative works, whether 

such permission was necessary, and which party bears the 

burden to show such authorization (or lack thereof). This 

issue arises, of course, only if the remastered recordings 
ABS ENTERTAINMENT V. CBS CORPORATION 35

were derivative works. As we have determined that CBS was 

not entitled to summary judgment on that question, we 

address the authorization issue for guidance on remand.

The owner of a copyright has the exclusive right to 

prepare derivative works, 17 U.S.C. § 106(2), and to grant 

or withhold authorization to create such derivative works. 

Schrock, 586 F.3d at 522–23. In Schrock, photographer 

Schrock was hired by Learning Curve to photograph Thomas 

the Tank Engine. Id. at 515. Learning Curve and HIT 

Entertainment, the Thomas the Tank Engine copyright 

holder, used Schrock’s photographs for several years. Id. 

When Learning Curve stopped hiring Schrock as a 

photographer, he registered his photographs and sued 

Learning Curve and HIT for infringement. Id. Like here, it 

was undisputed that Schrock had permission to make the 

photographs. But Learning Curve argued that the 

photographer also needed Learning Curve’s permission to 

copyright the photographs. Id. The district court granted 

summary judgment to Learning Curve, concluding that the 

photographs were derivative works, and that although 

Schrock had permission to make the photographs, he did not 

have permission to copyright them. Id. The Seventh Circuit 

reversed, stating: “As long as he was authorized to make the 

photos (he was), he owned the copyright in the photos to the 

extent of their incremental original expression.” Id. We 

agree with that holding. The Seventh Circuit also explained 

that although this was the default rule, parties could alter this 

rule by contract. Id. at 523–24. Because the license 

agreements among the parties were not entered into the 

record, the Seventh Circuit remanded to the district court to 

determine whether the parties altered the default rule by 

contract. Id. at 525.
36 ABS ENTERTAINMENT V. CBS CORPORATION

It is undisputed here that the remastering engineers were 

authorized to do exactly what they did. On remand, if the 

authorization issue is raised in a further summary judgment 

motion or at trial, the district court should give ABS the 

opportunity to produce copies of its license agreements and 

should determine whether any such agreements altered the 

default rule on authorization.

V

The district court, in granting summary judgment also 

held that ABS’s state law claims to copyright in the pre-1972 

sound recordings, as embodied in the remastered sound 

recordings, were preempted by federal copyright law. This 

holding was error. This issue arises only if the remastered 

recordings are ultimately determined to be authorized 

derivative works. Again, we decide the issue for guidance 

as the case proceeds.

Prior to 1971, sound recordings were protected solely 

under state copyright laws. In 1971, Congress enacted the 

1971 Sound Recording Act, which, for the first time, created

federal rights in sound recordings distinct from the rights in 

the musical compositions embodied therein and from state 

rights in sound recordings. That Act reserved to state law 

the protection of sound recordings “fixed before February 

15, 1972.” 17 U.S.C. § 301(c). We here address another 

issue of first impression: whether the creation of an 

authorized digital remastering of pre-1972 analog sound 

recordings that qualify as copyrightable derivative works 

brings the remastered sound recording exclusively under the 

ambit of federal law.

ABS argues that its state law copyrights in the pre-1972 

sound recordings survived intact in the remastered sound 

recordings because they are distinct rights from whatever 
ABS ENTERTAINMENT V. CBS CORPORATION 37

rights inhere in the remaster, and because 17 U.S.C. 

§§ 301(c) and 103(b) preclude Federal preemption or 

interference in the state law copyrights. CBS has a 

dramatically different view. CBS argues that by authorizing 

the creation of the remastered sound recordings, ABS 

brought its rights in the pre-1972 sound recordings embodied 

therein wholly within the gamut of the comprehensive 

Federal Copyright scheme, which does not tolerate the 

reservation of any State law rights in works governed by 

federal copyright law.

CBS’s position is directly contrary to both established 

precedent and the statutory scheme. Under long-standing 

principles of copyright law, rights in an underlying work and 

derivative work are distinct, and the holder of a copyright in 

an underlying work retains that right in the content of the 

derivative work sourced from the underlying work. Stewart 

v. Abend, 495 U.S. 207, 223 (1990) (“[T]he element [of a 

derivative work] drawn from the pre-existing work remains 

on grant from the owner of a pre-existing work. So long as 

the pre-existing work remains out of the public domain, its 

use is infringing if one who employs the work does not have 

a valid license or assignment for use of the pre-existing 

work.” (internal citations omitted)); Russell v. Price, 

612 F.2d 1123, 1128 (9th Cir. 1979) (“[E]stablished doctrine 

prevents unauthorized copying or other infringing use of the 

underlying work or any part of the work contained in the 

derivative product so long as the underlying work itself 

remains copyrighted.”); Gilliam v. American Broadcasting 

Co., 538 F.2d 14, 20 (2nd Cir. 1976) (“[C]opyright in the 

underlying script survives intact despite the incorporation of 

that work into a derivative work.”). Section 103(b) makes 
38 ABS ENTERTAINMENT V. CBS CORPORATION

this principle explicit.8 Stewart, 495 U.S. at 224 (explaining 

that 17 U.S.C. § 103(b) “made explicit” that the “full force 

of the copyright in the preexisting work is preserved despite 

incorporation into the derivative work”).

CBS is incorrect that “the only sound recordings CBS 

broadcast were the remastered sound recordings, which were 

created long after 1972.” The broadcast of the remastered 

sound recording also broadcast the pre-1972 sound 

recording therein embodied, just as it also broadcast the 

underlying musical composition. Regardless of the 

remastering engineers’ alterations, the sounds fixed in the 

remastered sound recording include those performed and 

fixed before 1972. See 17 U.S.C. § 101 (“‘Sound 

recordings’ are works that result from the fixation of a series 

of musical, spoken or other sounds.”).

CBS argues that Stewart is inapposite because that case 

stands solely for the proposition that authorization is 

required for the derivative work author to retain control over 

the entire work, and its holding is limited to the unique 

situation where the authorization to use the underlying work 

in the derivative work was withdrawn. Stewart is not so 

limited. Although the case arose under the particular 

circumstance of a reversion of the renewal interest to the 

copyright in the underlying work, Stewart was unequivocal 

that “the element [of the derivative work] drawn from the 

pre-existing work remains on grant from the owner of the 

 8 17 U.S.C. § 103(b) states: “The copyright in a compilation or 

derivative work extends only to the material contributed by the author of 

such work, as distinguished from the preexisting material employed in 

the work, and does not imply any exclusive right in the preexisting 

material. The copyright in such work is independent of, and does not 

affect or enlarge the scope, duration, ownership, or subsistence of, any 

copyright protection in the preexisting material.”
ABS ENTERTAINMENT V. CBS CORPORATION 39

pre-existing work” and that “[s]o long as the pre-existing 

work remains out of the public domain, its use is infringing 

if one who employs the work does not have a valid license 

or assignment for use of the pre-existing work.” 495 U.S. at 

223. Whether the derivative work author has a valid license 

or assignment does not impact whether distribution, for 

example, of the derivative work requires a license from the 

underlying sound recording author—it does.9 Thus, it is 

well-established that, where the underlying work remains 

protected by copyright, copying of the derivative work 

remains an infringement of the underlying work. See Stewart 

v. Abend, 495 U.S. at 223–24 (explaining that 17 U.S.C. 

§ 103(b) “made explicit” that the “full force of the copyright 

in the preexisting work is preserved despite incorporation 

into the derivative work” (citing 17 U.S.C. § 7 (1976))); DC 

Comics v. Towle, 802 F.3d 1012, 1023 (9th Cir. 2015); 

Gilliam, 538 F.2d at 20; Russell, 612 F.2d at 1128. 

Therefore, if the remastered sound recordings are ultimately 

determined to be authorized derivative works, federal law 

would govern only the additional expression in the 

remastered sound recordings. Adopting CBS’s view to the 

contrary would have the unmistakable effect of restricting 

ABS’s rights in the pre-1972 sound recordings, because 

ABS would no longer have the exclusive right to authorize: 

the reproduction of remastered sound recording works in 

phonorecords, the preparation of further derivative works 

(from the remastered sound recording), the distribution of 

phonorecords of the remastered sound recording, or the 

public performance by digital audio transmission of the 

remastered sound recordings. See 17 U.S.C. § 106.

 9 Unless, of course, the license from the original owner includes a 

right to license the underlying work.
40 ABS ENTERTAINMENT V. CBS CORPORATION

Moreover, under CBS’s theory, a pre-1972 sound 

recording authorized for inclusion in a compilation album, 

would be wholly governed by federal copyright law. 

Presumably, an authorization to distribute from the 

compilation author would satisfy a distributor’s obligations 

wholly, without regard to the state law copyright in the 

individual songs. That result cannot be correct.

Neither CBS nor amici point to any authority for the 

proposition that the grant of an authorization to create a 

derivative work is indivisible from the grant of other rights 

and thus necessarily also grants the derivative work author 

sole and complete control over the exclusive rights of the 

derivative work. Authors of distinct components of a 

derivative work regularly maintain their exclusive rights 

independently; for example, both the author of a musical 

composition and a sound recording author maintain their 

exclusive rights in their components of the sound recording.

CBS insists that if the author of a work protected only 

under state law authorizes its inclusion into a federally 

copyrighted work, then federal law must govern the entire

work via preemption, and that state law rights in the 

derivative work are thereby extinguished. In support of its 

position, CBS points to a series of cases in which courts have 

held that state law rights were preempted by federal law 

governance of authorized derivative works. See James v. 

Delilah Films, Inc. (“Delilah Films”), 544 N.Y.S.2d 447, 

450 (Sup. Ct. 1989) (finding preemption for state law claims 

for using pre-1972 film clips with pre-recorded lip-synched 

sounds in a documentary film); Spear Mktg., Inc. v. 

BancorpSouth Bank, 791 F.3d 586, 597 (5th Cir. 2015) 

(finding preemption of state law claims to ideas fixed in a

software program); Shoptalk. Ltd. v. Concorde-New 

Horizons Corp., 168 F.3d 586, 591 (2d Cir. 1999) (finding 
ABS ENTERTAINMENT V. CBS CORPORATION 41

preemption of state law rights in a movie derived from an 

unpublished screenplay protected by state law); Laws v. 

Sony Music Entm’t, Inc., 448 F.3d 1134, 1145 (9th Cir. 

2006) (finding preemption of a state law right of publicity 

claim in an authorized derivative work); Maloney v. 

T3Media, Inc., 853 F.3d 1004, 1011 (9th Cir. 2017) (finding 

preemption of state law right of publicity claims in an 

authorized photograph); Fleet v. CBS, Inc., 50 Cal. App. 4th 

1911, 1919 (1996) (finding preemption of a movie actor’s 

state law right of publicity claims in an authorized movie).

The Copyright Act includes an express preemption 

provision: “On and after January 1, 1978, all legal or 

equitable rights that are equivalent to any of the exclusive 

rights within the general scope of copyright as specified by 

section 106 in works of authorship . . . are governed 

exclusively by this title.” 17 U.S.C. § 301(a). The rights 

asserted by ABS in the remastered sound recordings 

unquestionably meet the criteria of § 301(a). However, that 

provision is subject to an express exclusion for state law 

rights inhering in a pre-1972 sound recording:

With respect to sound recordings fixed before 

February 15, 1972, any rights or remedies 

under the common law or statutes of any 

State shall not be annulled or limited by this 

title until February 15, 2067. The preemptive 

provisions of subsection (a) shall apply to any 

such rights and remedies pertaining to any 

cause of action arising from undertakings 

commenced on and after February 15, 2067. 

Notwithstanding the provisions of section 

303, no sound recording fixed before 

February 15, 1972, shall be subject to 
42 ABS ENTERTAINMENT V. CBS CORPORATION

copyright under this title before, on, or after 

February 15, 2067.

17 U.S.C. § 301(c). This provision explicitly precludes 

federal preemption of state law rights in pre-1972 sound 

recordings like those at issue here. Absent federal copyright 

protection for the remastered sound recordings, distributors 

like CBS would still require ABS’s authorization to 

distribute any remastered derivative sound recordings under 

whatever state law copyrights ABS might possess in the 

underlying recordings. Under CBS’s understanding of the 

federal copyright law, it would not need ABS’s 

authorization, because it is enough to have the authorization 

via compulsory license from the author of the remastered 

sound recording; under CBS’s understanding, at least one of 

the rights or remedies under the common law or statutes of 

California are annulled or limited by the copyright law.10 

Thus, CBS’s reading of the law cannot be correct.

None of the cases CBS cites implicate the preemption 

exclusion in § 301(c), because the underlying works in those 

cases were not pre-1972 sound recordings. The only case to 

even address that exemption is James v. Delilah Films, Inc.

(“Delilah Films”), 544 N.Y.S.2d 447 (Sup. Ct. 1989). 

There, plaintiffs, a “girl group,” asserted various state law 

claims against documentary film makers who used video 

clips showing Plaintiffs, using a lip-synched soundtrack 

recorded before 1972. Id. at 449. The New York Superior 

Court held that the underlying works were audio-visual 

works because the sounds could not be “separated from the 

 10 Whether California copyright law or common law protects the 

public performance right of sound recordings is currently an open 

question we previously certified to the California Supreme Court. Flo & 

Eddie, Inc. v. Pandora Media, Inc., 851 F.3d 950, 957 (9th Cir. 2017).
ABS ENTERTAINMENT V. CBS CORPORATION 43

visual portion, merely to accommodate plaintiffs’ assertion 

that they are entitled to an exemption based on 17 U.S.C. 

§ 301(c).” Id. at 449–50; see also id. at 450 (explaining that 

the nature of plaintiffs’ actions was “to recover for the 

performance, distribution or display of plaintiffs’ 

performances” (internal quotation marks omitted)). 

Therefore, the court held, plaintiffs’ claims were preempted 

under § 301(a). The work here, by contrast, falls squarely 

within the exception in § 301(c).

CBS also cites to the broad statement in Shoptalk that “a 

single work cannot be protected from copying under both 

federal and state law at the same time.” 168 F.3d at 591 

(quoting Roy Export Co. Establishment of Vaduz, 

Liechtenstein v. Columbia Broadcasting Sys., Inc., 672 F.2d 

1095, 1101 n. 13 (2d Cir. 1982)). Shoptalk and Roy Export

were both discussing the incompatibility of protecting 

“published” works under federal copyright law and 

“unpublished” works under state law, which are generally 

mutually exclusive categories (except for allowable 

alternatives to publication, such as registration and deposit, 

Roy Export, 672 F.2d at 1101 n.13). Although there are only 

rare situations in which a work would be protected by both 

federal and state law, nothing prevents this from occurring. 

Thus, in Lone Ranger Television v. Program Radio Corp., 

we held that an unauthorized copy of a sound recording of a 

radio play infringed both the federal copyright law in the 

underlying script and state conversion law. 740 F.2d 718, 

721 (9th Cir. 1984).

CBS next argues that maintaining state sound recording 

copyright in derivative works would frustrate the goal of the 

safe harbor provision, 17 U.S.C. § 114(f)(4)(B): “Any 

person who wishes to perform a sound recording publicly by 

means of a transmission eligible for statutory licensing . . .
44 ABS ENTERTAINMENT V. CBS CORPORATION

may do so without infringing the exclusive right of the 

copyright owner of the sound recording [by paying a set 

royalty fee].” CBS argues that § 114 was intended to make 

post-1972 sound recordings subject to a compulsory license, 

and that maintaining state copyrights in the underlying pre1972 sound recordings would require parties to individually 

negotiate with pre-1972 copyright holders for the right to 

play post-1972 sound recordings. In other words, the § 114 

“safe harbor” would not be safe anymore. CBS draws a 

comparison between the § 114 safe harbor and the Digital 

Millennium Copyright Act’s (“DMCA”) safe harbor 

provision, 17 U.S.C. § 512, which absolves digital service 

providers from liability for copyright infringement under 

certain conditions, and, according to the Second Circuit, also 

covers pre-1972 sound recordings. Capitol Records, LLC v. 

Vimeo, LLC, (“Vimeo”), 826 F.3d 78, 90 (2d Cir. 2016) 

(holding that § 512 provided a safe harbor from infringement 

for digital service providers even as to pre-1972 soundrecordings, because a contrary ruling—limiting the 

functioning of the safe harbor only to federally protected 

content—would “defeat the very purpose Congress sought 

to achieve in passing the statute.”).

The DMCA safe harbor provision provides that “[a] 

service provider shall not be liable for monetary relief . . .

for infringement of copyright.” 17 U.S.C. § 512(c). That 

language, unlike § 114, does not limit the safe harbor to 

infringements of federal copyright. See Vimeo, 826 F.3d at 

89 (“A literal and natural reading of the text of § 512(c) leads 

to the conclusion that its use of the phrase “infringement of 

copyright” does include infringement of state laws of 

copyright.”). By contrast, § 114 offers only a safe harbor for 

infringement of federal copyright law. Id. (distinguishing 

§ 512(c) safe harbor from § 114 safe harbor on this basis); 

17 U.S.C. § 114(d)(1) (“The performance of a sound 
ABS ENTERTAINMENT V. CBS CORPORATION 45

recording publicly by means of a digital audio transmission, 

other than as a part of an interactive service, is not an 

infringement of section 106(6)” (emphasis added)). 

Moreover, policy favors the distinction between the DMCA 

safe harbor and § 114. Section 512 is directed to the 

protection of internet service providers who would otherwise 

be liable for infringing material of which they are unaware, 

and who would otherwise suffer enormous liability. See 

Vimeo, 826 F.3d at 92. Here, broadcasters who would be 

taking advantage of the § 114 safe harbor are aware of the 

particular songs they are broadcasting and must already 

ensure that they pay the proper royalties for any original 

post-1972 sound recording material and any musical 

compositions incorporated therein. The additional expense 

of tracking down incorporated pre-1972 sound recordings, 

particularly in a case where the alleged derivative works are 

mere remasters of the underlying pre-1972 sound recordings, 

is not similarly burdensome. Finally, the DMCA safe harbor 

only limits the liability of internet service providers; it does 

not exclude liability for infringing acts by the party posting 

the content. CBS’s theory here, in contrast, would render the 

authors of pre-1972 sound recordings embodied in 

remastered sound recordings that qualify as derivative works 

uncompensated and without control of distribution of their 

creative product.

VI

We next address whether the district court abused its 

discretion in excluding the Triton Reports as evidence under 

the business records exception. Business records may be 

admitted under Fed. R. Evidence 803(6) when:

(A) the record was made at or near the time 

by—or from information transmitted by—

someone with knowledge;
46 ABS ENTERTAINMENT V. CBS CORPORATION

(B) the record was kept in the course of a 

regularly conducted activity of a business. . .

(C) making the record was a regular practice 

of that activity;

(D) all these conditions are shown by the 

testimony of the custodian or another 

qualified witness, . . . and

(E) the opponent does not show that the 

source of information or the method or 

circumstances of preparation indicate a lack 

of trustworthiness.

Fed. R. Evidence 803(6).

ABS argues that the district court abused its discretion in 

rejecting the Triton Reports because those reports fit 

squarely within the business records hearsay exception. 

CBS argues that Mr. Neiman, a CBS employee relied upon 

by ABS to provide the foundation for the business records 

exception, did not know how the Triton Reports were made 

or maintained, see NLRB v. First Termite Control Co., 

646 F.2d 424, 427 (9th Cir. 1981), and was not a Triton 

employee.

We conclude that Mr. Neiman was qualified to establish 

the foundation for the business records exception, and that 

the district court abused its discretion in excluding the Triton 

Reports. The business records exception only requires 

“someone with knowledge” about the record-keeping, not 

necessarily an employee of the business or someone with 

knowledge of how the reports were made or maintained. See 

FDIC v. Staudinger, 797 F.2d 908, 910 (10th Cir. 1986). Mr. 
ABS ENTERTAINMENT V. CBS CORPORATION 47

Neiman testified that Triton was hired by CBS to create the 

reports, and that CBS sent those reports to Sound Exchange 

to determine artist royalties.

We agree with ABS that First Termite Control is 

inapposite here. First Termite Control held that business 

records, to be admissible under the business records 

exception, must be supported by testimony of a witness 

knowledgeable about the creation and maintenance of those 

records. 646 F.2d at 417. But in that case, the accuracy of 

the records was contested. Here, CBS itself relied on the 

reports to establish its royalty payments to Sound Exchange 

in the ordinary course of business. The accuracy of the 

records is not in question. In a similar situation, we have 

held that third party reports of this kind fall within the 

business records exception. See United States v. Childs, 

5 F.3d 1328, 1334 and n.3 (9th Cir. 1993) (distinguishing 

First Termite Control due to reliance on third party reports 

by company challenging their admissibility). CBS has 

presented no evidence or argument showing that the Triton 

Reports were unreliable or inaccurate.

The district court also held that, if it were to consider the 

Triton Reports, it would nevertheless conclude that the 

listing of a name and song title in the Triton Reports was 

legally insufficient to create a genuine issue of material fact 

“[a]bsent the comparative analysis” to show that the 

performed sound recordings were not different recordings.

We conclude that the district court here erroneously 

decided a genuine issue of material fact at summary 

judgment. We agree with ABS that the Triton Reports 

contain an album title, and sometimes the company label, 

and so would be sufficient for a jury to infer that the records 

CBS performed were the versions captured in Plaintiffs’ pre1972 sound recordings. The Triton Reports were used by 
48 ABS ENTERTAINMENT V. CBS CORPORATION

CBS to govern the royalties paid to recording artists via 

Sound Exchange; CBS has failed to present evidence that 

these same reports were not sufficient to identify the 

recording artists or the versions performed. The district 

court erred in finding the absence of a genuine issue of 

material fact with respect to the samples listed in the Triton 

Reports.

VII

Finally, we address the district court’s dismissal of 

ABS’s class certification motion.

Central District of California Local Rule 23-3 requires 

Plaintiffs to file a motion for class certification within ninety 

days after service of the complaint. The parties here twice 

stipulated to extend the deadline, explaining in the second 

stipulation that ABS needed more time for class actionfocused discovery. The district court denied the first 

stipulation for failure to show good cause, and denied the 

second without explanation. The district court did not 

address the asserted need for pre-certification discovery.

Despite the district court’s rulings, ABS timely filed its 

motion for class certification on November 19, 2015. The 

district court struck the motion because of two technical 

deficiencies: (1) noticing the hearing outside the thirty-fiveday period required by the Judge’s Standing Order and 

(2) not including in the notice of motion a statement that the 

parties had met and conferred and the date on which such a 

conference took place, as required by Local Rule 7-3. 

Having thus stricken the timely motion, the district court 

then dismissed the motion for class certification for failure 

to file a timely motion for class certification under Local 

Rule 23-3.
ABS ENTERTAINMENT V. CBS CORPORATION 49

ABS argues that the district court abused its discretion in 

striking the timely filed motion as a sanction for what it 

categorizes as “trivial” omissions in the notice.

Central District of California Local Rule 23-3 sets a strict 

90-day time frame from the filing of a complaint to the 

motion for class action certification. This bright line rule is 

in direct contrast to the flexibility of the Federal Rule, which 

calls for a determination on class certification “[a]t an early 

practicable time after a person sues or is sued as a class 

representative.” Fed. R. Civ. P. 23(c)(1)(A). That flexible 

approach makes sense. The class action determination can 

only be decided after the district court undertakes a “rigorous 

analysis” of the prerequisites for certification. Wal-Mart 

Stores, Inc. v. Dukes, 564 U.S. 338, 350–51 (2011) (quoting 

Gen. Tele. Co. of SW v. Falcon, 457 U.S. 147, 161 (1982)). 

To undertake that analysis may require discovery. Kamm v. 

Cal. City Dev. Co., 509 F.2d 205, 210 (9th Cir.1975) (“The 

propriety of a class action cannot be determined in some 

cases without discovery;” “To deny discovery in [such 

cases] would be an abuse of discretion.”).

The district court’s actions here demonstrate the 

impracticability of the 90-day limit, particularly in 

combination with the district court’s summary and 

unexplained denial of the parties’ joint stipulation to extend 

the 90-day deadline based on the need for pre-certification 

discovery. See Barbara J. Rothstein & Thomas E. Willging, 

Federal Judicial Center, Managing Class Action Litigation: 

A Pocket Guide for Judges 9 (3d ed. 2010) (“Considering 

[Fed. R. Civ. P. 23(c)(1)], you should feel free to ignore local 

rules calling for specific time limits; such local rules appear 

to be inconsistent with the federal rules and, as such, 

obsolete.”); Federal Judicial Center, Manual for Complex 

Litigation, Fourth § 21.133 (“Some local rules specify a 
50 ABS ENTERTAINMENT V. CBS CORPORATION

short period within which the plaintiff must file a motion to 

certify a class action. Such rules, however, may be 

inconsistent with Rule 23(c)(1)(A)’s emphasis on the 

parties’ obligation to present the court with sufficient 

information to support an informed decision on certification. 

Parties need sufficient time to develop an adequate record.”).

Although the district court’s application and 

interpretation of its Local Rules is entitled to “a large 

measure of discretion,” Lance, Inc. v. Dewco Servs., Inc., 

422 F.2d 778, 784 (9th Cir. 1970), Local Rules cannot be 

incompatible with Federal Rules. Fed. R. Civ. P. 83(a)(1). 

We conclude that the bright-line of Local Rule 23-3 is 

incompatible with Federal Rule of Civil Procedure 23.

We therefore reverse the district court’s striking of 

ABS’s certification motion, and remand for consideration of 

the class action motion on the merits, including 

reconsideration of whether pre-certification discovery is 

warranted.

VIII

For the reasons discussed above, we REVERSE the 

district court’s grant of summary judgment. We also 

REVERSE the district court’s striking of ABS’s class action 

motion as untimely, and the exclusion of Geluso’s 

testimony. We REMAND for further proceedings 

consistent with this opinion. The district court should 

consider ABS’s request for continuance of pre-certification 

discovery, and, if appropriate, the merits of ABS’s class 

action motion, at an early practicable time.