Flo & Eddie, Inc. v. Sirius XM Radio, Inc.
849 F.3d 14
2d Cir.2017Background
- Flo & Eddie (owner of The Turtles' pre-1972 sound recordings) sued Sirius XM for broadcasting and making internal reproductions (library/buffer/cache) of those recordings, asserting New York common-law copyright (public-performance) and unfair competition claims.
- Sirius XM moved for summary judgment, arguing New York law does not recognize a public-performance right in pre-1972 sound recordings and that any state performance right would violate the Dormant Commerce Clause; it also argued internal copying was fair use if no performance right existed.
- The District Court denied summary judgment, holding New York common law recognizes a public-performance right for pre-1972 recordings and that Sirius XM’s internal reproductions were not fair use; it also found no Dormant Commerce Clause problem.
- The Second Circuit certified to the New York Court of Appeals the controlling question whether New York common law recognizes a public-performance right in pre-1972 sound recordings and the scope of any such right.
- The New York Court of Appeals answered that New York common law does not recognize a public-performance right for creators of pre-1972 sound recordings.
- On that basis, the Second Circuit reversed the district court’s denial of summary judgment and remanded with instructions to grant Sirius XM’s summary judgment motion and dismiss the case with prejudice.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether New York common law recognizes a public-performance right in pre-1972 sound recordings | Flo & Eddie: New York recognizes such a common-law right protecting creators/owners of pre-1972 recordings | Sirius XM: New York common law does not recognize a public-performance right for pre-1972 recordings | New York Court of Appeals: No public-performance right; Second Circuit reversed district court accordingly |
| Whether Sirius XM’s internal reproductions (library/buffer/cache) are unlawful if no performance right | Flo & Eddie: Copies enabled public performance and were not fair use | Sirius XM: If no performance right exists, internal reproductions are permissible fair use | Second Circuit: Certified question dispositive — with no performance right, copying claims fail; summary judgment for Sirius XM ordered |
| Whether recognition of a state-law performance right would violate the Dormant Commerce Clause | Flo & Eddie: State right does not implicate Dormant Commerce Clause concerns | Sirius XM: A state-law performance right would raise Dormant Commerce Clause issues | District Court found no Dormant Commerce Clause problem; Second Circuit did not need to decide after NYCOA’s ruling |
| Preclusive effect of New York Court of Appeals’ answer on related unfair competition claims | Flo & Eddie: Unfair competition and copying claims independently support liability | Sirius XM: Those claims depend on existence of a performance right; if none, they fail | Second Circuit: Answer to certified question was dispositive of copying and unfair competition claims; ordered dismissal |
Key Cases Cited
- Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 821 F.3d 265 (2d Cir. 2016) (Second Circuit certified the question to the New York Court of Appeals)
- Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 62 F. Supp. 3d 325 (S.D.N.Y. 2014) (district court denied summary judgment, recognizing a NY common-law public-performance right)
- Sherlock v. Alling, 93 U.S. 99 (1876) (historical precedent referenced regarding whether a right constitutes regulation of commerce)