Unhappy Turtles Take a Bite Out of Sirius XM for Unauthorized Public Performance

This case involves the extent of the ownership rights to pre-1972 sound recordings and the relationship between state and federal copyright law.  The Turtles musical group recorded the 1960’s hit “Happy Together,” as well as a number of other hit songs.  Howard Kaylan and Mark Volman, two of The Turtles founding members, created and own Flo & Eddie, Inc.  Flo & Eddie in turn owns all rights to The Turtles’ master sound recordings.  Although Flo & Eddie has licensed The Turtles songs for use in movies, TV shows and commercials, Flo & Eddie has never licensed its public performance rights in the songs to a digital radio station or any other radio station. 

Sirius XM runs nationwide satellite radio and Internet radio subscription services.  Sirius XM publicly performed 15 separate sound recordings exclusively owned by Flo & Eddie.  Flo & Eddie did not license these songs to Sirius XM and Sirius XM publicly performs the songs without paying royalties to Flo & Eddie. 

Flo & Eddie knew that Sirius XM was playing the songs some years before it filed its lawsuit against Sirius XM in the Central District of California.  Flo & Eddie did not ask Sirius XM to stop playing the songs or to get a license before filing suit.  Flo & Eddie has known since the songs were recorded that AM/FM (terrestrial) radio stations were playing its songs without a license.  Flo & Eddie has not requested the terrestrial radio stations to pay for the public performances or sued those radio stations.

Sirius XM did not deny that it publicly performed the songs.  Sirius XM argued that because the songs are pre-1972 sound recordings, Flo & Eddie does not own the exclusive right to publicly perform the recordings.  According to Sirius XM, once it lawfully purchases a copy of a pre-1972 recording owned by Flo & Eddie, it is free to broadcast and stream that recording without permission from Flo & Eddie and without paying royalties.  Flo & Eddie argued that under California law, it owns the exclusive right to publicly perform its recordings and that others who want to publicly perform the recordings must obtain a license from it.  The district court agreed with Flo & Eddie and granted its motion for summary judgment.

The Relationship Between Federal and State Copyright Law Regarding Sound Recordings

When Congress passed the Federal Copyright Act in 1976, it carved out pre-1972 sound recordings as a limited area of copyright law unaffected by the new federal law and within the domain of the states: 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 no sound recording fixed before February 15, 1972, shall be subject to copyright under this title. 17 USC § 301(c). Accordingly, California statutory and common law presently governs the rights that attach to pre-1972 sound recordings because the Federal Copyright Act does not apply to those earlier recordings and explicitly allows states to continue to regulate them.  Flo & Eddie’s sound recordings were fixed prior to February 15, 1972, therefore, its rights to those recordings depend solely on whatever rights are afforded to sound recording owners under California law.

(Opinion pdf page 4).

Copyright Protection of Sound Recordings Under California Law

Cal. Civ. Code §980(a)(2) states that:

The author of an original work of authorship consisting of a sound recording initially fixed prior to February 15, 1972, has an exclusive ownership therein until February 15, 2047, as against all persons except one who independently makes or duplicates another sound recording that does not directly or indirectly recapture the actual sounds fixed in such prior recording, but consists entirely of an independent fixation of other sounds, even though such sounds imitate or simulate the sounds contained in the prior sound recording.

The question in this case was whether the exclusive ownership of a sound recording includes the exclusive right to publicly perform the recording. 

The district court ruled that under the statute’s plain meaning,

Flo & Eddie has the right to possess and use its sound recordings and prevent others from possessing and using them. The plain meaning of having ‘exclusive ownership’ in a sound recording is having the right to use and possess the recording to the exclusion of others. There is nothing in that phrase to suggest that the legislature intended to exclude any right or use of the sound recording from the concept of ‘exclusive ownership.’

(Opinion pdf pages 5-6).

The district court ruled that there was no California case law denying sound recording owners the exclusive right to publicly perform their recordings, and rejected Sirius XM’s argument that §980(a)(2) is a departure from California common law and should be narrowly construed to exclude the public performance right.

The district court concluded that

As indicated above, in light of (1) the clarity of the plain and ordinary meaning of § 980(a)(2)’s ‘exclusive ownership as against all persons’ and (2) the legislature’s choice to specify one use of recordings to exclude from the grant of ownership, the Court finds that the statute is clear and unambiguous as to the rights that attach to ownership in a sound recording. Under § 980(a)(2), the owner of a sound recording has the exclusive right to possess and use the recording for all purposes, necessarily including the exclusive right to publicly perform the recording, except that the owner does not have the exclusive right to record and duplicate “covers.”

Sirius XM’s attempts to insert ambiguity into the textual language fail because Sirius XM relies on information outside the statutory language to find that ambiguity in the first place. Regardless, the legislative history of § 980(a)(2) is consistent with the Court’s textual reading of the statute.

(Opinion pdf pages 7-8).

Flo & Eddie also sued Sirius XM for copyright infringement in the Southern District of New York.  That case involves New York state law and will be the subject of a separate post.

Thanks to Robert J. Carlson for giving me the idea for this post.  Bob is a patent attorney and partner at Lee&Hayes in Seattle.  Bob is also a member of the Seattle IP Inn of Court.

This case is Flo & Eddie Inc. v. Sirius XM Radio Inc., CV 13-5693 PSG (RZx), Central District of California.

2 thoughts on “Unhappy Turtles Take a Bite Out of Sirius XM for Unauthorized Public Performance”

  1. Tonya, thanks for the shout-out! It’s a treat to be mentioned in your blog, and thanks for your take on this issue. I wasn’t aware of the details of this strange carve-out for pre-1972 sound recordings, and it’s interesting to know that the Copyright Act doesn’t wholly preempt these rights arising under state law.
    I look forward to reading the post about New York’s handling of this issue. Thanks again.
    Bob

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