I’ve written periodic posts about Flo & Eddie since December 2014. As a brief refresher, the corporation Flo & Eddie owns the rights to the pre-February 15, 1972 sound recordings of The Turtles. Band members Mark Volman and Howard Kaylan own Flo & Eddie. Sirius XM Radio, Inc. operates nationwide as a satellite and Internet radio provider. Flo & Eddie sued Sirius in federal courts in California, New York and Florida. Flo & Eddie claimed that Sirius violated Flo & Eddie’s ownership rights in its pre-1972 sound recordings by broadcasting recordings and making buffer and backup copies of Turtles performances without a license or authorization. Appeals in the Flo & Eddie v. Sirius cases are pending before the Second, Ninth, and Eleventh Circuits.
Flo & Eddie’s cases against Sirius arise from the lack of federal copyright protection for pre-1972 sound recordings. Sound recordings did not receive protection under the Copyright Act until February 15, 1972, although musical compositions and lyrics have always been protected. If pre-1972 sound recording rights are protected at all, it is under state copyright law. Although the district courts in California and New York ruled in Flo & Eddie’s favor on its state law claims, the Southern District of Florida granted summary judgement in Sirius’ favor. On appeal in the Florida case, the Eleventh Circuit Court of Appeals determined that the state law questions had not been decided by Florida state courts. The Eleventh Circuit certified four questions to the Supreme Court of Florida for that court’s guidance on Florida state law.
The parties conceded at oral argument that there are no decisions of Florida courts addressing the existence vel non of a Florida common law copyright in sound recordings. Nor are there any decisions addressing whether any such common law copyright in sound recordings would include the two constituent rights claimed here: the exclusive right of reproduction and the exclusive right of public performance. At a motion hearing before the district court, Sirius characterized the current state of the case law as ‘a complete judicial void.’
(Opinion pdf page 5).
The Eleventh Circuit discussed the exclusive right of public performance and the exclusive right of reproduction, which are two separate issues.
Exclusive right of public performance
Because of a Supreme Court of Florida opinion recognizing a common law copyright interest in a magic act, the Eleventh Circuit concluded that “there is at least a significant argument that Florida common law may recognize a common law property right in sound recordings.” (Opinion pdf page 8). However, the same magic act case also indicated that publication acts as a limit on common law copyright.
The Supreme Court of Florida has never had opportunity to address either the existence vel non of common law copyright protection for sound recordings or the doctrine of publication in the context of sound recordings. If the rule articulated in Glazer in the context of magic tricks—that there is copyright protection for the performance of the magic trick but that the performance before ‘many audiences’ amounted to a publication for the purposes of divesting the common law property right in the magic trick—should be extended to sound recordings, there is a significant issue as to whether Flo & Eddie may have lost any common law property in its sound recordings by publication thereof and dedication thereof to the general public.
(Opinion pdf pages 9 – 10).
New York takes a different approach to the question of whether publication ends common law copyright protection.
The governing principle in New York is that where the originator, or the assignee of the originator, of records of performances by musical artists puts those records on public sale, his act does not constitute a dedication of the right to copy and sell the records.
Sirius points to no principled reason why the sale of records might constitute only a limited publication and divestment with regard to the exclusive right of reproduction, but an absolute divestment with regard to the exclusive right of public performance.
(Opinion pdf pages 11 – 12).
Exclusive right of reproduction
The Eleventh Circuit thought there might be support for an exclusive right of reproduction under both federal district court case law interpreting Florida law and Florida’s record piracy statute. The district court relied on federal copyright law to support its ruling that Sirius’ buffer and backup copies were not impermissible reproductions.
Flo & Eddie also brought unfair competition/misappropriation, conversion, and civil theft claims against Sirius. The district court ruled that these claims relied on the copyright claims and must fail due to the ruling of no infringement of a common law copyright. The Eleventh Circuit ruled that Florida state law was not clear on this matter.
Questions certified to the Supreme Court of Florida
1. 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?
2. 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?
3. 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?
4. 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 under FLA. STAT. § 772.11 and FLA. STAT. § 812.014?
(Opinion pdf pages 17 – 18).
Of interest to attorneys in the Western District of Washington, the Honorable Barbara J. Rothstein, United States District Judge for the District of Columbia, sat on the Eleventh Circuit panel. Judge Rothstein was appointed to the bench in the Western District of Washington in 1980 and served as chief judge from 1987 to 1994.
This case is Flo & Eddie, Inc. v. Sirius ZM Radio, Inc., No. 15-13100, Eleventh Circuit Court of Appeals.