Flo & Eddie, Inc. v. Sirius XM Radio, Inc.

• Decision Date: 29 June 2016
• Docket Number: No. 15–13100,15–13100
• Citation: 119 U.S.P.Q.2d 1145,827 F.3d 1016
• Parties: Flo & Eddie, Inc., a California corporation, individually and on behalf of all others similarly situated, Plaintiff–Appellant, v. Sirius XM Radio, Inc., a Delaware corporation, Defendant–Appellee.
• Court: U.S. Court of Appeals — Eleventh Circuit

827 F.3d 1016

119 U.S.P.Q.2d 1145

Flo & Eddie, Inc., a California corporation, individually and on behalf of all others similarly situated, Plaintiff–Appellant

v.Sirius XM Radio, Inc., a Delaware corporation, Defendant–Appellee.

No. 15–13100

United States Court of Appeals, Eleventh Circuit.

June 29, 2016

Jason T. Gordon, Glen H. Waldman, Eleanor Trotman Barnett, Heller Waldman, PL, Coconut Grove, FL, Henry Gradstein, Harvey Wayne Geller, Maryann Rose Marzano, Gradstein & Marzano PC, Los Angeles, CA, for Plaintiff–Appellant.

Daniel M. Petrocelli, Victor Jih, David Marroso, Evan T. Mayor, Robert M. Schwartz, Cassandra Seto, Los Angeles, CA, Jonathan D. Hacker, Washington, DC, O'Melveny & Myers, LLP, David Michael Gersten, Michael N. Kreitzer, David B. Massey, Martin Steinberg, Bilzin Sumberg Baena Price & Axelrod, LLP, Edward Soto, Weil Gotshal & Manges, LLP, Miami, FL, for Defendant–Appellee.

Kenneth L. Doroshow, Jenner & Block, LLP, Washington, DC, for Recording Industry Association of America, Amicus Curiae.

Eugene Volokh, UCLA School of Law, Los Angeles, CA, for Copyright and Intellectual Property Law Professors, Amicus Curiae.

Mtichell Stoltz, Electronic Frontier Foundation, San Francisco, CA, for Electronic Frontier Foundation, Amicus Curiae.

Anthony B. Askew, Meunier Carlin & Curfman, LLC, Atlanta, GA, Law Professors Gary Pulsinelli, Julie Ross, Peter Jaszi and Brandon Butler, Amicus Curiae.

Stephen Blake Kinnaird, Paul Hastings LLP, Richard Adam Kaplan, National Association of Broadcasters, Washington, DC, for National Association of Broadcasters, Amicus Curiae.

Edward Soto, Weil Gotshal & Manges, LLP, Miami, FL, for Pandora Media, Inc., Amicus Curiae.

Joseph Richard Wetzel, King & Spalding, LLP, San Francisco, CA, for The Association for Recorded Sound Collections, Amicus Curiae.

Before HULL and ANDERSON, Circuit Judges, and ROTHSTEIN,^* District Judge.

ANDERSON, Circuit Judge:

Flo & Eddie, Inc. (“Flo & Eddie”) appeals from a final order of the district court granting summary judgment in favor of Sirius XM Radio, Inc. (“Sirius”). We have had the benefit of oral argument and have reviewed the briefs and relevant parts of the record. As the case presents issues that have not been addressed by the Supreme Court of Florida, we believe the issues are appropriate for resolution by Florida's highest court and defer our decision in this case pending the certification of questions to the Supreme Court of Florida.

I. BACKGROUND

Plaintiff–Appellant Flo & Eddie is a California corporation. The principals of Flo & Eddie, Mark Volman and Howard Kaylan, have been performing music together as The Turtles since 1965 and have recorded numerous iconic hit performances. All of these performances were recorded before February 15, 1972.¹

Defendant–Appellee Sirius is a satellite and internet radio provider that operates a nationwide broadcast service. Sirius broadcasts over 135 channels of music, sports, news, talk, and other entertainment content to its over 24 million subscribers. Notwithstanding the absence of any license or authorization from Flo & Eddie, Sirius broadcasts recordings of Turtles performances to its subscribers in Florida.

On September 3, 2013, Flo & Eddie filed the instant suit claiming that Sirius violated Flo & Eddie's rights as owner of sound recordings of musical performances that were fixed before February 15, 1972. Flo & Eddie alleged 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. Based on these facts, the amended complaint alleged four causes of action: (1) common law copyright infringement, (2) common law misappropriation / unfair competition; (3) common law conversion; and (4) civil theft under Fla. Stat. § 772.11 for violations of Fla. Stat. § 812.014(1). Flo & Eddie sought damages, including compensatory and punitive damages, and injunctive relief.

On July 15, 2014, Sirius moved for summary judgment on the issue of liability. After a hearing, the district court granted Sirius's motion for summary judgment. The district court's order concluded that Florida common law does not recognize an exclusive right of performance. The district court further concluded that to the extent Florida recognizes an exclusive right to reproduce the recordings, that right was not violated by Sirius's buffer and back-up copies. Finally, the district court concluded that the remaining non-copyright claims were dependent on the existence of a successful copyright claim. Accordingly, the district court granted Sirius's motion for summary judgment on all claims. On appeal, Flo & Eddie challenges each of these conclusions.

II. DISCUSSION

We review the district court's grant of a motion for summary judgment de novo , viewing the record and drawing all reasonable inferences in the light most favorable to the non-moving party. Patton v. Triad Guar. Ins. Corp. , 277 F.3d 1294 (11th Cir. 2002). Summary judgment is appropriate if “there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a).

The district court had jurisdiction of this suit under 28 U.S.C. § 1332(a). Therefore, in deciding this case, Florida substantive law applies. See Erie R.R. Co. v. Tompkins , 304 U.S. 64, 78, 58 S.Ct. 817, 82 L.Ed. 1188 (1938).

A. Common Law Copyright

The first cause of action alleged by Flo & Eddie is infringement of its Florida common law copyright in its pre–1972 sound recordings. Flo & Eddie alleged two theories of infringement: (1) infringement of its exclusive right to reproduce the recordings; and (2) infringement of its exclusive right to publicly perform the recordings.

Although the state doctrine of common law copyright has been largely preempted by federal copyright law, this case falls into one of the limited areas in which state common law copyright may continue to operate: sound recordings fixed prior to February 15, 1972. See 17 U.S.C. § 301(c).² According to a leading treatise, “[i]n general, the rights under common law copyright rights are at least co-extensive with the rights commanded under the Copyright Act.” 2 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 8C.02 (Matthew Bender, ed., 2016). “Common law copyright thus protects against unauthorized reproduction of copies or phonorecords, unauthorized distribution by publishing or vending, and unauthorized performances.” Id.

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.”

We first address the issue of an exclusive right of public performance and then the issue of an exclusive right of reproduction.

Although there are no decisions of the Supreme Court of Florida that are directly on point, we think that Glazer v. Hoffman , 153 Fla. 809, 16 So.2d 53 (1943), provides guidance on a possible direction of Florida common law. Although Glazer does not concern sound recordings, that case appears to recognize a Florida common law copyright in another type of creative performance: magic tricks. Glazer v. Hoffman was a suit by a Charles Hoffman, a magician and entertainer also known as “Think-a-Drink Hoffman,” for a permanent injunction against Maurice Glazer, another magician and entertainer. Id. at 53. Hoffman alleged that Glazer had infringed his common law copyright. The complaint provided in relevant part that “Hoffman, as a result of great labor, time and efforts, developed and originated a performance by which he produced real, straight or mixed drinks or beverages, such as high balls, cocktails, liquers [sic], zombies, coffee and ice cream sodas from metal cocktail shakers which were shown to be empty and from beakers filled with water, which drinks were thought of or requested by members of his audiences.” Id. at 53–54. It was further alleged that Glazer “held himself out as a magician and performer and acted under the name of ‘Think-a-Drink Count Maurice’ and ‘Have-a-Drink Count Maurice’; and that the several acts and performances are imitations and violations of his rights and to the detriment and damage of the plaintiff.” Id. at 54. As described by the Supreme Court of Florida, the parties' performances were as follows:

[Hoffman's] performance, as reflected by the record, is substantially, viz.: He opens his performance with an address, professionally known as ‘patter’. The address appellee caused to be copyrighted. Subsequent to the ‘patter’ appellee proceeds to produce various cocktails, coffee, sodas and other drinks from pitchers, shakers, etc., and delivers these several drinks to the members of his audiences. These drinks are taken from ‘seemingly’ empty shakers and beakers. The mechanical equipment used and necessary for the sleight of hand performance given from time to time by the appellee is purchasable on the open market.

[Glazer's] act or performance consists of the use of similar mechanical equipment. He likewise attempts to deliver an address or professional ‘patter’ prior to the act or performance. He is able by sleight of hand performance to supply approximately any drink requested by the different members of his audiences. He points out that the act or performance is nothing more than a ‘trick’ or the common property of magicians.

Id. at 54.

Glazer, the defendant, appears to have argued that the drink pouring performance was not subject to...