In a June 29, 2016 opinion, the Eleventh Circuit examined the question of whether common law copyright under Florida law protects sound recordings fixed prior to February 15, 1972. The opinion in Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 2016 WL 3546433 (11th Cir. June 29, 2016), written by Judge R. Lanier Anderson III, concluded that no Florida court decisions had yet addressed the question. In certifying several related questions to the Supreme Court of Florida, the Eleventh Circuit looked to the recognition of common law copyright in magic tricks (among other things) to support its conclusion that Florida common law may provide a basis for the Plaintiff’s copyright claims.
The case arose out of a dispute between members of the band The Turtles, and the satellite and Internet radio provider Sirius. The Plaintiff, Flo & Eddie, Inc., is a California corporation whose principals have been performing as The Turtles since 1965. The Turtles have recorded numerous iconic performances which Sirius has broadcast to subscribers in Florida. Because each of these performances was fixed prior to February 15, 1972, before enactment of the Copyright Act of 1976, they enjoy copyright protection, if at all, only under state law.
Flo & Eddie alleged four causes of action in its complaint against Sirius: (1) common law copyright infringement; (2) common law misappropriation and unfair competition; (3) common law conversion; and (4) civil theft under Fla. Stat. § 772.11 for violations of Fla. Stat. § 812.014(1). Sirius moved for summary judgment on the issue of liability. After a hearing, the district court granted Sirius’ motion, concluding that Florida common law did not recognize an exclusive right of performance; that to the extent Florida recognizes an exclusive right to reproduce the recordings, that right was not violated by Sirius’ buffer and back-up copies; and that the remaining non-copyright claims were dependent on the existence of a successful copyright claim. Flo & Eddie appealed.
The Eleventh Circuit found the case turned on whether or not Florida recognized common law copyrights in sound recordings fixed prior to February 15, 1972. Flo & Eddie argued that Sirius infringed its copyright under two theories: (1) infringement of its exclusive right to publicly perform the recordings; and (2) infringement of its exclusive right to reproduce the recordings (as distinguished from music compositions—notes on the page—which are governed by federal copyright law). The court addressed each theory in turn.
During oral argument in the Eleventh Circuit, both parties conceded that the Florida courts had not addressed the issues in this case in any prior litigation. Therefore, the Eleventh Circuit turned to the supernatural for direction. In 1943, the Supreme Court of Florida had concluded that Charles “Think-a-Drink Hoffman” did possess common law copyright in another type of creative performance: magic tricks. (The case was Glazer v. Hoffman, 16 So. 2d 53 (Fla. 1943).) Hoffman’s act involved a performance in which he produced mixed drinks and cocktails from metal cocktail shakers, which were shown to be empty, and from beakers filled with water. Hoffman sought an injunction when another magician creatively began performing imitations of his act under the name “Think-a-Drink Count Maurice” and “Have-a-Drink Count Maurice.”
The Glazer court held that, although the sleight-of-hand performance was not subject to protection under federal copyright statutes, it was entitled to prima facie protection under Florida common law. “It is true that an author at the common law has and owns a property right in his intellectual productions prior to publication or dedication to the public.” Glazer, 16 So. 2d at 55. Accordingly, the Eleventh Circuit in the present case concluded that “Glazer indicates that there is at least a significant argument that Florida common law may recognize a common law property right in sound recordings [which], no less than magic tricks, are ‘intellectual productions’ that are ‘created by heavy investments of time and labor.’” Flo & Eddie, 2016 WL 3546433, at *3.
That said, the Florida Supreme Court in Glazer had also held that the public performance of Hoffman’s act “before many audiences” constituted not only a publication, but also a dedication of the trick to the public. Thus, if common law copyrights exist for the pre-1972 sound recordings under Florida common law, they are neither unlimited nor indefeasible. Accordingly, the Eleventh Circuit also found a strong possibility that the public distribution and sale of the recordings, or performance thereof, may terminate the rights by publication. (The court here contrasted the handling of sound recordings under New York common law, where “the public sale of a sound recording is not a general publication that ends common law copyright protection.” Flo & Eddie, 2016 WL 3546433, at *4 (citing Capitol Records, Inc. v. Naxos of Am., Inc., 830 N.E.2d 250, 259 (N.Y. 2005)).)
The court then turned to the question of whether Flo & Eddie held an exclusive right of reproduction in the recordings. A 1985 federal suit arising out of alleged record piracy concluded that distribution of sound recordings did not cause the copyright holder to lose its exclusive right of reproduction under Florida law. CBS, Inc. v. Garrod, 622 F. Supp. 532 (M.D. Fla. 1985). The Eleventh Circuit found this supported the proposition that Florida common law might recognize the copyright constituent right of exclusive reproduction.
Additional support was found in Florida’s record piracy statute, Fla. Stat. § 540.11, which criminalizes the reproduction of a sound recording with the intent to sell or use for profit through public performance. On the other hand, to the extent that Sirius is analogous to a radio broadcaster, the court theorized that Fla. Stat. § 540.11(6)(a) may suggest that its buffer and back-up copies are permissible.
Here, the district court had implicitly assumed the existence of an exclusive right of reproduction that was not divested by publication, but held that Sirius’ buffer and back-up copies did not constitute improper reproduction. In so concluding, the district court relied on Cartoon Network, LP v. CSC Holdings, Inc., which was based on a close textual interpretation of the term “copy” in the relevant provision of the federal Copyright Act. 536 F.3d 121, 125–27 (2d Cir. 2008). The Eleventh Circuit, however, disagreed with the application, and concluded it was unclear whether the same result would be reached under Florida common law.
Because Florida law was not clear on the application of common law copyright to the underlying facts, the Eleventh Circuit certified the following questions to the Supreme Court of Florida:
- Whether Florida common law copyright extends to pre-1972 sound recordings and, if so, whether it includes an exclusive right of public performance and/or an exclusive right of reproduction;
- Whether Flo & Eddie forfeited any common law copyright by publication; and
- To the extent that Florida recognizes a common law copyright in sound recordings including a right of exclusive reproduction, whether the back-up or buffer copies made by Sirius constitute infringement of Flo & Eddie’s common law copyright.
In a similar dispute between the same parties, the Southern District of New York denied Sirius’ motion for summary judgment, precipitating an appeal by Sirius. Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 62 F. Supp. 3d 325 (S.D.N.Y. 2014), recons. denied, No. 13 Civ. 5784(CM), 2014 WL 7178134 (S.D.N.Y. Dec. 12, 2014). On appeal, the Second Circuit framed the central issue as whether New York common law afforded copyright holders the right to control the performance of sound recordings as part of their copyright ownership. Similar to the Eleventh Circuit, the Second Circuit pointed to uncertainty under New York law and certified to the New York Court of Appeals the question of whether there is a right of public performance for creators of sound recordings under New York law and, if so, what is the nature and scope of that right. Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 821 F.3d 265, 272 (2d Cir. 2016).
Although the doctrine of common law copyright has been largely preempted by federal copyright law, resolution of these questions will help clarify some of the remaining limited areas in which common law copyright continues to operate.
Posted by Walter Freitag.