Flo & Eddie, Inc. v. Sirius XM Radio, Inc.
821 F.3d 265
| 2d Cir. | 2016Background
- Flo &u0026amp; Eddie, owner of pre-1972 Turtles sound recordings, sued Sirius XM for broadcasting those recordings without a license, asserting New York common-law copyright and unfair-competition claims.
- Sirius XM broadcasts music (including pre-1972 recordings) to millions of subscribers and made internal reproductions (library/buffer/cache) to facilitate its transmissions.
- Federal copyright law gives limited protection to post-1972 sound recordings but preserves state-law rights for pre-1972 recordings (17 U.S.C. § 301(c)). New York has no statute expressly protecting pre-1972 recordings, but New York common law has recognized some protections.
- The district court held that New York common law recognizes a public-performance right in pre-1972 sound recordings and denied Sirius XM summary judgment; it also rejected Sirius XM’s fair-use and dormant Commerce Clause defenses.
- The Second Circuit found the question of whether New York law recognizes a public-performance right for creators of sound recordings unresolved and determinative of the appeal, and therefore certified the question to the New York Court of Appeals, reserving decision.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether New York common law grants a public-performance right in pre-1972 sound recordings | New York common law affords a public-performance right; property rights are broad and include performance control | No such right exists under New York law; property rights are limited and performance and reproduction rights are distinct | Question unresolved by NY courts; Second Circuit certified the question to NY Court of Appeals and reserved decision |
| Whether Sirius XM’s internal reproductions (library/buffer/cache) are fair use | Copies facilitate unauthorized public performance and thus infringe; not fair use | Internal copies are fair use or otherwise permissible absent a performance right | Dependent on existence/scope of performance right; certification needed to resolve copying/fair-use analysis |
| Whether recognizing a state-law performance right would violate the dormant Commerce Clause | (Implicit) New York may recognize and enforce such rights | Recognition could burden interstate commerce and therefore be invalid under dormant Commerce Clause | Court cannot adjudicate dormant Commerce Clause issue without knowing scope/limitations of any NY right; certification remains appropriate |
| Whether federal precedents (e.g., Whiteman) resolve the issue | N/A | RCA Mfg. Co. v. Whiteman suggests skepticism about performance rights | Whiteman does not control; it is ambiguous and is federal construction of state law overridden by later state authority (e.g., Naxos II) |
Key Cases Cited
- Capitol Records, Inc. v. Naxos of Am., Inc., 372 F.3d 471 (2d Cir.) (discussing pre-1972 sound recording rights and certifying state-law questions)
- Capitol Records, Inc. v. Naxos of Am., Inc., 4 N.Y.3d 540 (N.Y. 2005) (New York Court of Appeals recognizing New York common-law protections for sound recordings)
- RCA Mfg. Co. v. Whiteman, 114 F.2d 86 (2d Cir. 1940) (federal court expressed doubt about public-performance rights and held such rights ended with record publication)
- Victory v. Baker, 67 N.Y. 366 (N.Y. 1876) (statement regarding broad ownership rights in property)
- Colavito v. N.Y. Organ Donor Network, Inc., 8 N.Y.3d 43 (N.Y. 2006) (Court of Appeals limits alleged common-law property claims)
- Palmer v. De Witt, 47 N.Y. 532 (N.Y. 1872) (distinguishing performance and publication/printing rights)
- Sherlock v. Alling, 93 U.S. 99 (U.S. 1876) (addressed whether state actions constitute regulation of commerce)