IP Law Daily Lack of Florida performance rights in pre-1972 recordings dooms Flo & Eddie’s claims there
Friday, October 27, 2017

Lack of Florida performance rights in pre-1972 recordings dooms Flo & Eddie’s claims there

By John W. Scanlan, J.D.

Florida common law does not recognize an exclusive right of public performance in pre-1972 sound recordings, the Florida Supreme Court held in ruling against state law infringement, misappropriation/unfair competition, conversion, and civil theft claims brought by the owner of several pre-1972 performances by The Turtles. The decision came in response to the certification of four questions to the state high court by the U.S. Court of Appeals for the Eleventh Circuit regarding the application of Florida law (Flo & Eddie, Inc. v. Sirius XM Radio, Inc., October 26, 2017, Canady, C.).

Prior to 1971, there was no federal copyright protection for sound recordings, but states were permitted to regulate these recordings by common law or statute. In 1971, Congress enacted the Sound Recording Act of 1971, which extended limited federal copyright protections to sound recordings that were "fixed, published, and copyrighted" on or after February 15, 1972. The court noted that this right was focused on the right to produce and distribute reproductions of the recording to the public, and it contained an exemption for reproductions made by transmitting organizations solely for their own use. Federal legislation enacted in 1976 to bring copyright legislation "under the federal umbrella" nevertheless allowed states to protect pre-1972 recordings until 2047; a federal exclusive right of reproduction was recognized in 1995 for the public performance of sound recordings "by means of a digital audio transmission."

Flo & Eddie, Inc., which was formed by two founding members of the 1960s rock group The Turtles, owns master sound recordings for certain pre-1972 recordings by the group. Flo & Eddie brought suit against satellite radio broadcaster Sirius XM Radio, Inc., alleging claims for common law copyright infringement, common law misappropriation and unfair competition, common law conversion, and civil theft. The complaint asserted that Sirius XM’s broadcast of The Turtles songs constituted unauthorized public performances of its recordings and that back-up and buffer copies created by Sirius XM constituted unauthorized reproductions. Sirius XM moved for summary judgment on all of Flo & Eddie’s claims.

Prior decisions. A federal district court granted summary judgment to Sirius XM. Finding that there was no exclusive right of public performance under Florida common law, and no Florida case law on point, the district court determined that it was being asked to create a new property right and declined to do so, calling that a legislative task. Assuming that Florida common law recognizes a pre- and post-sale right of reproduction for pre-1972 recordings, the court also determined that the back-up and buffer copies of the songs used by Sirius in the broadcast process did not constitute improper reproduction, as they were not accessible to the public and were discarded immediately after their use. The remaining claims were dismissed because they were dependent on the unsuccessful copyright claim. Flo & Eddie appealed.

On appeal, the Eleventh Circuit found "significant doubt" regarding the portions of Florida law relevant to the dispute. Examining the Florida Supreme Court’s 1943 decision in Glazer v. Hoffman, a case involving acts and performances by two magicians, the Eleventh Circuit reasoned that Glazer could be interpreted with more than one meaning and that Florida law was unclear regarding an exclusive right of public performance. Furthermore, the Eleventh Circuit found that two Second Circuit decisions relied upon by the district court in ruling that the buffer and back-up copies were non-infringing relied upon the Federal Copyright Act rather than Florida law, making it unclear whether an analysis under Florida law would reach the same conclusion. Finally, it found Florida law unclear as to whether the remaining claims would be valid without an enforceable copyright.

Accordingly, the Eleventh Circuit certified four questions to the Florida Supreme Court. The state high court combined and rephrased the first two questions into what it considered to be the threshold issue for the case, which it found to be determinative: "Does Florida common law recognize the exclusive right of public performance in pre-1972 sound recordings?"

Right of public performance. After a survey of the history of both federal copyright law and Florida legislative enactments regarding sound recordings, the Florida Supreme Court found that both federal and state law had long distinguished the right of public performance from the right of reproduction. Congress recognized in 1909 an exclusive right of public performance for the owner of a musical composition, but declined for decades to provide a separate right for sound recordings. In 1971, Congress provided for federal copyright protection for post-1972 recordings but only with respect to record piracy, with a limited right of public performance of post-1972 recordings by means of digital audio transmission recognized in 1995.

The state high court agreed with the federal district court that because the state has never recognized an exclusive right of public performance for sound recordings, doing so now for the first time would be inherently legislative and would have impacts beyond the borders of the state and affect stakeholders not party to the suit. Finding such a right in pre-1972 recordings would be unworkable and would go beyond any right previously recognized in any sound recording. In contrast to what the court called the "carefully delineated and limited" federal right, the Florida common law right sought by Flo & Eddie in this case would be "unfettered," and adopting its position would require the court to ignore the actual history of the federal right.

Contrary to Flo & Eddie’s argument, Florida’s 1941 enactment of legislation that "repealed" and "abrogated" any common law rights attaching to phonograph records was not addressing a recognized right of public performance for sound recordings because there was no case recognizing such a right, despite the use of these terms. Instead, the laws were enacted in response to recent court decisions and were designed to prevent such a common law right from being recognized. Despite Flo & Eddie’s reliance upon Glazer, the Florida high court concluded that Glazer did not support the existence of this right for pre-1972 recordings. The court observed that The Turtles recordings at issue were sold when these statutory sections were in effect. Flo & Eddie asserted that the repeal of these statutes in 1977 caused all public performance rights to be revested in it, but the court stated that even if it agreed with their argument that Florida common law recognized this right prior to the 1941 statutory enactments and that the 1977 repeal revived that right, nothing supported their argument that the rights would revest in it entirely. A partial revesting allowing pre-repeal purchases of a performance to be freely played in public while subjecting post-repeal purchases of the same performance to licensing and royalty payments would be "illogical and unworkable," it continued. Finally, while Flo & Eddie asserted that New York common law recognizes a right of public performance in pre-1972 sound recordings, the court noted both that New York decisions are not dispositive in Florida and that the New York Court of Appeals has rejected this interpretation.

Other questions. Assuming that Florida common law recognizes a post-sale exclusive right of reproduction in pre-1972 sound recordings, there was no violation in the present case from Sirius XM’s use of the back-up and buffer copies because the "ultimate use of the internal copies is permissible." There was a specific exemption in Florida’s record piracy statute for copies made in connection with or as part of a radio broadcast that applied in this case. Finally, the Florida Supreme Court agreed with the district court that the claims for misappropriation/unfair competition, common law conversion, and statutory civil theft failed because they were based on the unsuccessful common law copyright claim.

The case is No. SC16-1161.

Attorneys: Angel A. Cortinas (Gunster) for FLO & Eddie, Inc. David M. Gersten (Gordon & Rees Scully Mansukhani) for Sirius XM Radio, Inc.

Companies: FLO & Eddie, Inc.; Sirius XM Radio, Inc.

MainStory: TopStory Copyright FloridaNews

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