FLO & EDDIE, INC., а California corporation, individually and on behalf of all others similarly situated, Plaintiff-Appellant, v. SIRIUS XM RADIO, INC., a Delaware corporation, Defendant-Appellee.
No. 15-13100
United States Court of Appeals, Eleventh Circuit.
June 29, 2016
1016
Before HULL and ANDERSON, Circuit Judges, and ROTHSTEIN, District Judge.
Honorable Barbara J. Rothstein, United States District Judge for the District of Columbia, sitting by designation.
Nor is Cortes-Morales benefitted by his invocation of Supreme Court precedent instructing courts to employ a cаtegorical approach when determining enhancements under the ACCA. See Taylor v. United States, 495 U.S. 575, 602, 110 S.Ct. 2143, 109 L.Ed.2d 607 (1990). The Supreme Court in Taylor did not suggest that courts must ignore the particular circumstances of the defendant, but rather held only that courts are limited to the “fact of conviction and the statutory definition of the prior offense” when determining whether a prior conviction mandates a sentencing enhancement. Id. Indeed, the Court later made clear that some aspects of the particular defendant‘s conduct are relevant, holding that courts must take into account whether a state‘s recidivist statute imposed a higher sentencing maximum for the defendant in question. Rodriguez, 553 U.S. at 382-83, 128 S.Ct. 1783. Our holding is not inconsistent with these Supreme Court‘s opinions, rendered in a different context, concerning how prior convictions are viewed for purposes of the ACCA.
Because Cortes-Morales is not eligible for resentencing under the 2009 DLRA, he cannot satisfy even his view of the Savings Clause. We thus lack jurisdiction and may not reach the merits of his claim.
IV. CONCLUSION
We AFFIRM the judgment of the district court dismissing the petition.
WILLIAM PRYOR, Circuit Judge, concurring:
I join the majority opinion in full. Even assuming that the savings clause—as “interpreted” by this Court in Bryant v. Warden, FCC Coleman-Medium, 738 F.3d 1253 (11th Cir. 2013)—reaches retroactive amendments to state legislation, the Drug Law Reform Act of 2009 is not retroactive for prisoners like Cortes-Morales.
I write separately to reiterate that the five-part test we cooked up in Bryant is “indefensible as a matter of textual interpretation.” Samak v. Warden, FCC Coleman-Medium, 766 F.3d 1271, 1276 (11th Cir. 2014) (W. Pryor, J., concurring). Because Bryant is a monster of our creation, untethered to the text, I see no principled basis for determining its ultimate reach. If “circuit-busting precedent” opens the door to untimely, successive attacks on a prisoner‘s sentence, see Bryant, 738 F.3d at 1276, then why not retroactive amendments to state legislation? Until Bryant is overruled, we will continue to grapple in the dark to answer these types of questions. The en banc Court should overrule Bryant sooner rather than later.
Daniel M. Petrocelli, Victor Jih, David Marroso, Evan T. Mayor, Robert M. Schwartz, Cassandra Seto, Los Angeles, CA, Jonathan D. Hacker, Washington, DC, O‘Melveny & Myers, LLP, David Michael Gersten, Michael N. Kreitzer, David B. Massey, Martin Steinberg, Bilzin Sumberg Baena Price & Axelrod, LLP, Edward Soto, Weil Gotshal & Manges, LLP, Miami, FL, for Defendant-Appellee.
Kenneth L. Doroshow, Jenner & Block, LLP, Washington, DC, for Recording Industry Association of America, Amicus Curiae.
Mitchell Stoltz, Electronic Frontier Foundation, San Francisco, CA, for Electronic Frontier Foundation, Amicus Curiae.
Anthony B. Askew, Meunier Carlin & Curfman, LLC, Atlanta, GA, Law Professors Gary Pulsinelli, Julie Ross, Peter Jaszi and Brandon Butler, Amicus Curiae.
Stephen Blake Kinnaird, Paul Hastings LLP, Richard Adam Kaplan, National Association of Broadcasters, Washington, DC, for National Association of Broadcasters, Amicus Curiae.
Edward Soto, Weil Gotshal & Manges, LLP, Miami, FL, for Pandora Media, Inc., Amicus Curiae.
Joseph Richard Wetzel, King & Spalding, LLP, San Francisco, CA, for The Association for Recorded Sound Collections, Amicus Curiae.
ANDERSON, Circuit Judge:
Flo & Eddie, Inc. (“Flo & Eddie“) appeals from a final order of the district court granting summary judgment in favor of Sirius XM Radio, Inc. (“Sirius“). We have had the benefit of oral argument and have reviewed the briefs and relevant parts of the record. As the case presents issues that have not been addressed by the Supreme Court of Florida, we believe the issues are аppropriate for resolution by Florida‘s highest court and defer our decision in this case pending the certification of questions to the Supreme Court of Florida.
I. BACKGROUND
Plaintiff-Appellant Flo & Eddie is a California corporation. The principals of Flo & Eddie, Mark Volman and Howard Kaylan, have been performing music together as The Turtles since 1965 and have recorded numerous iconic hit performances. All of these performances were recorded before February 15, 1972.1
Defendant-Appellee Sirius is a satellite and internet radio provider that operates a nationwide broadcast service. Sirius broadcasts over 135 channels of music, sports, news, talk, and other entertainment content to its over 24 million subscribers. Notwithstanding the absence of any license or authorization from Flo & Eddie, Sirius broadcasts recordings of Turtles performances to its subscribers in Florida.
On September 3, 2013, Flo & Eddie filed the instant suit claiming that Sirius violated Flo & Eddie‘s rights as owner of sound recordings of musical performances that were fixed before February 15, 1972. Flo & Eddie alleged that Sirius infringed its common law copyright in those sound recordings by making unauthorized public performances of the recordings over the internet and through its satellites and by making unauthorized reproductions of the recordings by creating buffer and back-up copies of the recordings on its servers and satellitеs. Based on these facts, the amended complaint alleged four causes of action: (1) common law copyright infringement, (2) common law misappropriation / unfair competition; (3) common law conversion;
On July 15, 2014, Sirius moved for summary judgment on the issue of liability. After a hearing, the district court granted Sirius‘s motion for summary judgment. The district court‘s order concluded that Florida common law does not recognize an exclusive right of performance. The district court further concluded that to the extent Florida recognizes an exclusive right to reproduce the recordings, that right was not violated by Sirius‘s buffer and back-up copies. Finally, the district court concluded that the remaining non-copyright claims were dependent on the existence of a successful copyright claim. Accordingly, the district court granted Sirius‘s motion for summary judgment on all claims. On appeal, Flo & Eddie challenges each of these conclusions.
II. DISCUSSION
We review the district court‘s grant of a motion for summary judgment de novo, viewing the record and drawing all reasonable inferences in the light most favorable to the non-moving party. Patton v. Triad Guar. Ins. Corp., 277 F.3d 1294 (11th Cir. 2002). Summary judgment is appropriate if “there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.”
The district court had jurisdiction of this suit under
A. Common Law Copyright
The first cause of action alleged by Flo & Eddie is infringement of its Florida common law copyright in its pre-1972 sound recordings. Flo & Eddie alleged two theories of infringement: (1) infringement of its exclusive right to reproduce the recordings; and (2) infringement of its exclusive right to publicly perform the recordings.
Although the state doctrine of common law copyright has been largely preempted by federal copyright law, this case falls into one of the limited areas in which state common law copyright may continue to operate: sound recordings fixed prior to February 15, 1972. See
The parties conceded at oral argument that there are no decisions of Florida courts addressing the existence vel non of a Florida common law copyright in sound recordings. Nor are there any decisions
We first address the issue of an exclusive right of public performance and then the issue of an exclusive right of reproduction.
Although there are no decisions of the Supreme Court of Florida that are directly on point, we think that Glazer v. Hoffman, 153 Fla. 809, 16 So.2d 53 (1943), provides guidance on a possible direction of Florida common law. Although Glazer does not concern sound rеcordings, that case appears to recognize a Florida common law copyright in another type of creative performance: magic tricks. Glazer v. Hoffman was a suit by a Charles Hoffman, a magician and entertainer also known as “Think-a-Drink Hoffman,” for a permanent injunction against Maurice Glazer, another magician and entertainer. Id. at 53. Hoffman alleged that Glazer had infringed his common law copyright. The complaint provided in relevant part that “Hoffman, as a result of great labor, time and efforts, developed and originated a performance by which he produced real, straight or mixed drinks or beverаges, such as high balls, cocktails, liquers [sic], zombies, coffee and ice cream sodas from metal cocktail shakers which were shown to be empty and from beakers filled with water, which drinks were thought of or requested by members of his audiences.” Id. at 53-54. It was further alleged that Glazer “held himself out as a magician and performer and acted under the name of ‘Think-a-Drink Count Maurice’ and ‘Have-a-Drink Count Maurice‘; and that the several acts and performances are imitations and violations of his rights and to the detriment and damage of the plaintiff.” Id. at 54. As described by the Supreme Court of Florida, the parties’ performances were as fоllows:
[Hoffman‘s] performance, as reflected by the record, is substantially, viz.: He opens his performance with an address, professionally known as ‘patter‘. The address appellee caused to be copyrighted. Subsequent to the ‘patter’ appellee proceeds to produce various cocktails, coffee, sodas and other drinks from pitchers, shakers, etc., and delivers these several drinks to the members of his audiences. These drinks are taken from ‘seemingly’ empty shakers and beakers. The mechanical equipment used and necessary for the sleight of hand performance given from time to time by the appellee is purchasable on the open market.
[Glazer‘s] act or performance consists of the use of similar mechanical equipment. He likewise attempts to deliver an address or professional ‘patter’ prior to the act or performance. He is able by sleight of hand performance to supply approximately any drink requested by the different members of his audiences. He points out that the act or performance is nothing more than a ‘trick’ or the common property of magicians.
Glazer, the defendant, appears to have argued that the drink pоuring performance was not subject to copyright protection because it is “only a sleight of hand performance; that it has been in existence for many years and is as common as pulling rabbits out of hats or snakes out of pockets.” Id. “The magician usually wears a frock coat; surrounds himself with attractive female assistants; assumes a serious, wise and important attitude, but on
The Supreme Court of Florida, in holding or strong obiter dicta, agreed with Hoffman. Although the sleight of hand performance was not subject to protection within the terms of the extant federal copyright statutes, the Supreme Court of Florida concluded that it was entitled to prima facie protection under Florida common law. Specifically, the court concluded that “[i]t 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.” Id. at 55.
We think Glazer indicates that there is at least a significant argument that Florida common law may recognize a common law property right in sound recordings. Sound recordings, no less than magic tricks, are “intellectual productions” that are “created by heavy investments of time and labor.” Glazer‘s citation to Waring, in which the Supreme Court of Pennsylvania expressly held that an orchestra had “property rights at common law” in a musical performance recorded on a phonograph record, also suggests that Florida would recognize such property rights in sound recordings. Waring, 194 A. at 634-35. Similarly, Glazer suggests that Florida common law would recognize that such a property right would include the claimed exclusive right of public performance. Think-a-Drink Hoffman, after all, was seeking to enjoin Think-a-Drink Count Maurice from infringing upon his property rights by publicly performing the drink-pouring trick for profit. 16 So.2d at 53. So too, in Waring, the Supreme Court of Pennsylvania enjoined the defendant radio station from publicly broadcasting the recordings of the orchestra‘s performances for profit. 194 A. at 634-35. Based upon Glazer, there is at least a strong argument that Florida common law would recognize such a common law property right in Flo & Eddie‘s sound recordings.
However, as Glazer also indicates, under Florida common law, a property right in an intellectual production is neither unlimited nor indefeasible. Rather, any such property right is delimited by the doctrine of publication, pursuant to which the common law copyright may be terminated in whole or in part. The Court in Glazer explained that “[t]he record disclosed that Charles Hoffman, known as ‘Think-a-Drink Hoffman‘, acted and performed his sleight of hand tricks or stunts before many audiences since 1935.” Id. “On this record the conclusion is irresistible that these several acts and performances are not only a publication but a dedication to the public of the trick.” Id. Thus, “the trick or stunt became the property of the general public, and the defendant below had a lawful right to use the same.” Id.
The Supreme Court of Florida has never had opportunity to address either the existence vel non of common law copyright protection for sound recordings or the doctrine of publication in the context of sound recordings. If the rule articulated in Glazer in the context of magic tricks—that there is copyright protection for the performance of the magic trick but that the performance before “many audiences” amounted to a publication for the purposes of divesting the common law property right in the magic trick—should be extended to sound recordings, there is a significant issue as to whether Flo & Eddie may
Flo & Eddie claims not to have kept old records going back to the 1960s and objected to an interrogatory to identify the number of sales of each album containing any of the pre-1972 recordings on grounds that the request was irrelevant, overbroad, burdensome, or in excess of the limitations of
At least one other state, however, has articulated a different rule in the special context of the publication of sound recordings. Under New York common law, the public sale of a sound recording is not a general publication that ends common law copyright protection. Capitol Records, Inc. v. Naxos of America, Inc., 4 N.Y.3d 540, 797 N.Y.S.2d 352, 830 N.E.2d 250, 259 (2005). Rather, the “governing principle” in New York is that “where the originator, or the assignee of the originator, of records of performances by musical artists puts those records on public sale, his act does not constitute a dedication of the right to copy and sell the records.” Id. 797 N.Y.S.2d 352, 830 N.E.2d at 260 (quoting Capitol Records v. Mercury Records Corp., 221 F.2d 657, 663 (2d Cir. 1955)). According to the New York Court оf Appeals, this approach “was consistent with the long-standing practice of the federal Copyright Office and became the accepted view within the music recording industry.” Id.3 The New York Court of Appeals further explained that this special protection afforded to sound recordings was justified by historical context: because sound recordings were long left unprotected by the federal copyright law, New York courts saw fit to provide broader common law
Neither the Supreme Court of Florida nor any of the Florida District Courts of Appeal have addressed whether Florida common law would recognize copyright protection for sound recordings, and if so, whether the sales to the public of Flo & Eddie‘s sound recordings or the public performance thereof would constitute a publication or dedication to the public which would terminate the copyright protection in whole or in part.5
Turning now to Flo & Eddie‘s claimed exclusive right of reproduction, we noted above in note 5 that the federal district court opinion in Garrod provides some support for the proposition that Florida com-
The district court below implicitly assumed the existence of an exclusive right of reproduction that was not divested by publication, but held that Sirius‘s buffer and back-up copies did not constitute improper reproduction. It relied on the Second Circuit‘s decision in Cartoon Network, LP v. CSC Holdings, Inc., 536 F.3d 121, 125-27 (2d Cir. 2008), holding that a buffer copy does not infringe. However, the court in Cartoon Network relied on a close textual interpretation of the term “copy” in the relevant provision of the Federal Copyright Act. It is not clear to us whether the same result would be reached under Florida common law copyright. We observe that Florida‘s criminal record piracy statute,
Because Florida law is not clear on these matters, we certify to the Supreme Court of Florida the questions of 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. We also certify the question of whether Flo & Eddie has forfeited any common law copyright by publication. Additionally, to the extent that Florida recognizes a common law copyright in sound recordings including a right of exclusive reproduction, we certify the question of whether the backup or buffer copies made by Sirius constitute infringement of Flo & Eddie‘s common law copyright.
B. Other Claims
In addition to the Florida common law copyright claims, Flo & Eddie also alleges unfair competition / misappropriation, conversion, and civil theft.
As an initial matter, the parties dispute whether these remaining claims are dependent on the existence of a common law copyright in the recordings. Sirius claims, and the district court agreed, that Flo & Eddie‘s unfair competition, conversion, and civil theft claims must fail as a matter of law becаuse Florida does not recognize a common law copyright in sound recordings that includes an exclusive right of perform-
Flo & Eddie argues that these non-copyright tort claims are not derivative of, or dependent upon, the existence of a common law cоpyright. Rather, Flo & Eddie claims that it may maintain freestanding unfair competition / misappropriation, conversion, and civil theft claims separate and apart from any claim for common law copyright infringement. Because Florida law is not clear on this matter, we certify to the Supreme Court of Florida the question of whether an action for unfair competition / misappropriation, conversion, or civil theft of a sound recording may lie in the absence of an enforceable copyright.
III. QUESTIONS TO BE CERTIFIED
When significant doubt exists about the answer to a material state law question upon which the case turns, a fedеral court should certify that question to the state supreme court in order to avoid engaging in unnecessary speculation. See, e.g., Mosher v. Speedstar Div. of AMCA Int‘l, Inc., 52 F.3d 913, 916-17 (11th Cir. 1995).
Accordingly, we respectfully certify the following questions of law to the Supreme Court of Florida:
- Whether Florida recognizes common law copyright in sound recordings7 and, if so, whether that copyright includes the exclusive right of reproduction and/or the exclusive right of public performance?
- To the extent that Florida recognizes common law copyright in sound recordings, whether the sale and distribution of phonorecords to the public or the public performance thereоf constitutes a “publication” for the purpose of divesting the common law copyright protections in sound recordings embedded in the phonorecord and, if so whether the divestment terminates either or both of the exclusive right of public performance and the exclusive right of reproduction?
- To the extent that Florida recognizes a common law copyright including a right of exclusive reproduction in sound recordings, whether Sirius‘s back-up or buffer copies infringe Flo & Eddie‘s common law copyright exclusive right of reproduction?
- To the extent that Florida does not recognize a common law copyright in sound rеcordings, or to the extent that such a copyright was terminated by publication, whether Flo & Eddie nevertheless has a cause of action for common law unfair competition / misappropriation, common law conversion, or statutory civil theft under
FLA. STAT. § 772.11 andFLA. STAT. § 812.014 ?7
Our phrasing of these questions is not intended to limit the Supreme Court of Florida in considering the issues present-
QUESTIONS CERTIFIED.