Flo & Eddie, Inc. v. Sirius XM Radio Inc.
80 F. Supp. 3d 535
S.D.N.Y.2015Background
- Sirius’s summary judgment motion was denied and an order to show cause was issued as to liability for Flo and Eddie.
- The court contemplated either individual liability for Flo and Eddie or class-action certification with discovery.
- Flo and Eddie claim ownership of the Turtles’ master sound recordings and the associated common-law copyrights.
- Volman and Kaylan testified they transferred their rights in the Turtles’ master recordings to Flo & Eddie.
- Sirius argued implied license, waiver, estoppel, and statute of limitations defenses; the court analyzed these sequentially.
- The court ultimately allowed discovery to continue if Flo and Eddie pursues class certification; otherwise liability may be decided on an individual basis.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Ownership of recordings | Flo and Eddie owns the master copyrights | Volman and Kaylan’s transfer to Flo & Eddie is not proven | Flo and Eddie owns the master recordings and copyrights |
| Implied license | No implied license exists | Evidence suggests implied license due to conduct | No genuine issue; implied license defeated |
| Waiver and estoppel | No waiver or estoppel by Flo and Eddie | Actions on Sirius programming imply waiver/estoppel | Waiver and estoppel not established |
| Statute of limitations | Three-year limit for common law copyright applies; acts after 2010 actionable | Harrison Greenwich six-year period applies | Three-year statute of limitations applies; damages accrue for acts after Aug 16, 2010 |
| Class certification timing | Flo and Eddie should be allowed class discovery before certification | Rule 23 timing requires early consideration of certification | Court may lift discovery stay if Flo moves for class certification; otherwise proceed individually |
Key Cases Cited
- Martha Graham Sch. & Dance Found., Inc. v. Martha Graham Ctr. of Contemp. Dance, Inc., 380 F.3d 624 (2d Cir. 2004) (assignment of non-written copyright rights and implied transfer considerations)
- Houghton Mifflin Co. v. Stackpole Sons, 104 F.2d 306 (2d Cir. 1939) (courts recognize licensing activity consistent with ownership)
- Bourne v. Walt Disney Co., 68 F.3d 621 (2d Cir. 1995) (burden on implied license requires meeting of minds)
- Smith-Kline Beecham Consumer Healthcare, L.P. v. Watson Pharm., Inc., 211 F.3d 21 (2d Cir. 2000) (implied license elements and requirements)
- Kwan v. Schlein, 634 F.3d 224 (2d Cir. 2011) (ownership disputes framed within infringement claims)
- Capitol Records, Inc. v. Naxos of Am., Inc., 372 F.3d 471 (2d Cir. 2004) (three-year vs six-year limitations; ownership vs infringement distinctions)
- Merchant v. Levy, 92 F.3d 51 (2d Cir. 1996) (ownership actions and quiet title concepts in copyright context)
- Int'l Minerals & Res., S.A. v. Pappas, 96 F.3d 586 (2d Cir. 1996) (elements of estoppel and reliance in copyright disputes)
- Capitol Records, Inc. v. Naxos of Am., Inc., 372 F.3d 471 (2d Cir. 2004) (see above)
- Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (U.S. 2014) (limitations and infringement considerations in modern copyright)