Flo & Eddie, Inc. v. Sirius SM Radio, Inc.
827 F.3d 1016
| 11th Cir. | 2016Background
- Flo & Eddie (owners/principals of pre‑1972 Turtles sound recordings) sued Sirius XM for broadcasting those recordings without license, alleging common‑law copyright infringement (reproduction and public performance), misappropriation/unfair competition, conversion, and civil theft under Fla. Stat. § 772.11/.812.014.
- Sirius is a nationwide satellite/internet radio service; it streamed Turtles recordings to subscribers in Florida and made transient buffer and backup copies on servers/satellites.
- District court granted summary judgment for Sirius, holding Florida common‑law does not recognize an exclusive public‑performance right in sound recordings, and that Sirius’s buffer/back‑up copies did not infringe any exclusive reproduction right; dependent tort claims were dismissed.
- On appeal, the Eleventh Circuit found Florida law unsettled on whether (and to what extent) Florida common law protects pre‑1972 sound recordings, whether publication (sales/performance) divests rights, and whether transient copies infringe.
- Because controlling Florida precedent is lacking and state law questions are dispositive, the Eleventh Circuit certified four questions to the Florida Supreme Court about (1) existence/scope of common‑law copyright in sound recordings (reproduction and performance rights), (2) effect of sale/distribution/performance as "publication" divesting rights, (3) whether Sirius’s buffer/back‑up copies infringe any reproduction right, and (4) whether non‑copyright torts (misappropriation, conversion, civil theft) survive absent a common‑law copyright.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Florida recognizes common‑law copyright in pre‑1972 sound recordings and whether it includes reproduction and/or public‑performance rights | Florida should be recognized to have common‑law copyright in sound recordings, including reproduction and public‑performance rights, analogous to other "intellectual productions." | Florida has no clear precedent; district court found no public‑performance right and no infringement of reproduction right by Sirius. | Certified to Florida Supreme Court as unsettled state‑law questions. |
| Whether public sale/distribution or public performance constitutes "publication" that divests common‑law rights | Flo & Eddie argued sales/performances did not necessarily divest rights; protection can survive distribution. | Sirius argued widespread distribution/dedication would divest common‑law rights under Glazer. | Certified to Florida Supreme Court as unsettled and outcome‑determinative. |
| Whether Sirius’s transient buffer/back‑up copies infringe an exclusive reproduction right | Flo & Eddie: buffer/back‑up copies are reproductions that infringe any exclusive reproduction right. | Sirius: transient copies are non‑infringing (analogous to Cartoon Network/CSC and fair use); Florida criminal statute may allow such copies for broadcasters. | Certified to Florida Supreme Court because Florida common‑law scope is unclear. |
| Whether misappropriation/unfair competition, conversion, or civil theft claims can proceed absent an enforceable common‑law copyright | Flo & Eddie: tort claims are freestanding and can lie even if copyright protection fails. | Sirius/district court: those claims are derivative of copyright and fail if no enforceable common‑law copyright or infringement. | Certified to Florida Supreme Court as unsettled. |
Key Cases Cited
- Glazer v. Hoffman, 16 So.2d 53 (Fla. 1943) (recognizes common‑law protection for an "intellectual production" and discusses divestment by publication)
- Waring v. WDAS Broadcasting Station, 194 A. 631 (Pa. 1937) (enjoined radio station from broadcasting orchestra recordings; supports common‑law property rights in performances)
- Capitol Records, Inc. v. Naxos of America, Inc., 830 N.E.2d 250 (N.Y. 2005) (New York rule that public sale of phonorecords is not necessarily a publication divesting common‑law protection in sound recordings)
- Cartoon Network, LP v. CSC Holdings, Inc., 536 F.3d 121 (2d Cir. 2008) (buffer copies by a provider held noninfringing under federal copyright analysis)
- Authors Guild, Inc. v. HathiTrust, 755 F.3d 87 (2d Cir. 2014) (fair use discussion relevant to permissibility of certain reproductions)
- CBS v. Garrod, 622 F. Supp. 532 (M.D. Fla. 1988) (district court held Florida common‑law protected reproduction right in sound recordings and that distribution did not divest that right)
- Goldstein v. California, 412 U.S. 546 (U.S. 1973) (federal preemption context distinguishing sound recordings from compositions)
- Brown‑Forman Distillers Corp. v. N.Y. State Liquor Auth., 476 U.S. 573 (U.S. 1986) (dormant Commerce Clause balancing framework)
- Pike v. Bruce Church, Inc., 397 U.S. 137 (U.S. 1970) (test for evaluating incidental burdens on interstate commerce)