By Thomas Long, J.D.
The U.S. Court of Appeals for the Eleventh Circuit has requested Florida’s highest court to provide guidance on the question of whether there are rights of reproduction and public performance for creators of sound recordings under Florida common law and, if so, whether Sirius XM Radio infringed copyrights in certain sound recordings made before February 15, 1972, by broadcasting the recordings without permission. In June 2015, the federal district court in Miami ruled that Sirius XM Radio did not engage in copyright infringement under Florida by broadcasting performances of pre-1972 sound recordings owned by Flo & Eddie, a company formed by two of the founding members of the 1960s rock group The Turtles to administer the group’s intellectual property. Because the case presented issues that had not been addressed by the Supreme Court of Florida, the appellate court decided that the issues were appropriate for resolution by Florida’s highest court and deferred its decision on Flo & Eddie’s appeal pending the certification of questions to the Supreme Court of Florida (Flo & Eddie, Inc. v. Sirius XM Radio, Inc., June 29, 2016, Anderson, R.).
The principals of Flo & Eddie, Inc.—Howard Kaylan and Mark Volman—were founding members and songwriters of the band The Turtles. Kaylan and Volman started performing together in 1965 and recorded several hit songs, all of which were recorded before February 15, 1972. Recordings fixed prior to that date are not covered by federal copyright law, and states may regulate these recordings, either by statute or the common law.
Sirius is a satellite and Internet radio provider that operates a nationwide broadcast service. Several of Sirius’ channels are devoted solely to playing music recorded before 1972. Although Sirius did not have any license or authorization from Flo & Eddie, Sirius broadcasted recordings of Turtles performances to its subscribers in Florida.
Flo & Eddie sued Sirius, asserting that Sirius infringed its common law copyright in those sound recordings by making unauthorized public performances of the recordings over the Internet and through its satellites and by making unauthorized reproductions of the recordings by creating buffer and back-up copies of the recordings on its servers and satellites. Among the causes of action in the complaint were common-law copyright infringement and common law misappropriation/unfair competition. The district court granted Sirius’s motion for summary judgment, concluding that Florida common law did not recognize an exclusive right of public performance. In addition, the district court determined that, to the extent Florida law recognized an exclusive right to reproduce the recordings, that right was not violated by Sirius’s creation of buffer and back-up copies. Finally, the court determined that the misappropriation/unfair competition claims were dependent on the existence of a successful copyright claim. Flo & Eddie appealed to the Eleventh Circuit, challenging all of the district court’s conclusion.
There had been no decision of Florida courts addressing the existence of a Florida common law copyright in sound recordings or whether, if such a copyright existed, Florida common law recognized exclusive rights of reproduction and public performance. A Florida Supreme Court case involving copyright protection for magic tricks could, the Eleventh Circuit said, support the contention that Florida common law recognized a property right in sound recordings—which, like magic tricks, were "intellectual productions" that were "created by heavy investments of time and labor." That case cited to a Pennsylvania Supreme Court decision holding that an orchestra had common-law property rights in a performance captured on a phonograph record. Both of those cases also suggested the existence of an exclusive public performance right.
However, the court noted, property rights under Florida common law were delimited by the doctrine of publication, pursuant to which a common-law copyright could be terminated in whole or in part. In the case involving magic tricks, the Florida Supreme Court had decided that the performance of the trick at issue before "many audiences" amounted to a publication for purposes of divesting the common-law right in the trick. If this doctrine were extended to sound recordings, the Eleventh Circuit reasoned, Flo & Eddie may have given up any common-law property in its recordings by publication of them, if the distribution and sale of phonorecords, or the performance thereof, constituted "publication" under Florida law. The court noted that under the common law of at least one other state—New York—the public sale of a sound recording was not a general publication that ended common-law copyright protection.
Because Florida law was not clear on several matters relevant to the dispute between Flo & Eddie and Sirius, the court certified four questions of law to the Supreme Court of Florida:
- Whether Florida recognizes common law copyright in sound recordings and, if so, whether that copyright includes the exclusive right of reproduction and/or the exclusive right of public performance?
- To the extent that Florida recognizes common law copyright in sound recordings, whether the sale and distribution of phonorecords to the public or the public performance thereof constitutes a "publication" for the purpose of divesting the common law copyright protections in sound recordings embedded in the phonorecord and, if so whether the divestment terminates either or both of the exclusive right of public performance and the exclusive right of reproduction?
- To the extent that Florida recognizes a common law copyright including a right of exclusive reproduction in sound recordings, whether Sirius’s back-up or buffer copies infringe Flo & Eddie’s common law copyright exclusive right of reproduction?
- To the extent that Florida does not recognize a common law copyright in sound recordings, or to the extent that such a copyright was terminated by publication, whether Flo & Eddie nevertheless has a cause of action for common law unfair competition/misappropriation, common law conversion, or statutory civil theft?
The case is No. 15-13100.
Attorneys: Jason T. Gordon (Heller Waldman, Pl) and Henry Gradstein (Gradstein & Marzano PC) for Flo & Eddie, Inc. Daniel M. Petrocelli (O'Melveny & Myers, LLP) and David Michael Gersten (Bilzin Sumberg Baena Price & Axelrod, LLP) for Sirius XM Radio, Inc.
Companies: Flo & Eddie, Inc.; Sirius XM Radio, Inc.
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