Question of Law from the United States Court of Appeals for
the Eleventh Circuit - Case No. 15-13100
A. Cortinas and Jonathan H. Kaskel of Gunster, Miami,
Florida; Henry D. Gradstein and Maryann R. Marzano of
Gradstein & Marzano, P.C., Los Angeles, California; and
Glen H. Waldman, Eleanor T. Barnett, and Jason Gordon of
Waldman Barnett, P.L., Coconut Grove, Florida, for Appellant
M. Gersten of Gordon & Rees Scully Mansukhani, Miami,
Florida; and Daniel M. Petrocelli and Cassandra L. Seto of
O'Melveny & Myers, LLP, Los Angeles, California,
Anton Metlitsky of O'Melveny & Myers, LLP, New York,
New York, and Jonathan D. Hacker of O'Melveny &
Myers, LLP, Chevy Chase, Maryland, for Appellee
L. Milham, St. Pete Beach, Florida, Charlotte C. Towne, Dani
Beach, Florida, Stephen M. Carlisle, Fort Lauderdale,
Florida, and Robert A. McNeeley, Tallahassee, Florida, Amicus
Curiae Entertainment, Arts, and Sports Law Section of the
K. Rushton and Stephen B. Kinnaird of Paul Hastings, LLP,
Washington, District of Columbia, Richard Adam Kaplan of
National Association of Broadcasters, Washington, District of
Columbia, Amicus Curiae National Association of Broadcasters
Pashoukos Wasylik of DPW Legal, Tampa, Florida, Amicus Curiae
Electronic Frontier Foundation
Danielle M. D'Oyley and Jonathan Y. Ellis of Lathan &
Watkins, Washington, District of Columbia, Andrew M. Gass and
James K. Lynch of Latham & Watkins, San Francisco,
California, Amici Curiae iHeartMedia, Inc. and Pandora Media,
A. Bushell of Bushell Law, P.A., Fort Lauderdale, Florida,
Amicus Curiae Copyright and Intellectual Property Law
Court has for review four questions of Florida law certified
by the United States Court of Appeals for the Eleventh
Circuit in a copyright dispute involving the satellite-radio
broadcasting of certain "pre-1972" sound
Court has jurisdiction. See art. V, § 3(b)(6),
Fla. Const. The dispute in this case concerns rights in sound
recordings of performances of musical works as distinct from
rights in the composition of such works. The crucial question
presented is whether Florida common law recognizes an
exclusive right of public performance in pre-1972 sound
recordings. We conclude that Florida law does not recognize
any such right and that Flo & Eddie's various state
law claims fail.
BACKGROUND AND CERTIFIED QUESTIONS
Flo & Eddie, Inc. ("Flo & Eddie"), is a
California corporation that owns the master sound recordings
of certain pre-1972 musical performances by The Turtles.
Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 827
F.3d 1016, 1018 (11th Cir. 2016). Appellee/defendant, Sirius
XM Radio, Inc. ("Sirius"), is a satellite and
internet radio provider that operates a nationwide broadcast
service. Id. Flo & Eddie has never licensed
Sirius to play Turtles recordings, and Sirius broadcasts
Turtles songs to Sirius's subscribers in Florida without
paying any royalties to Flo & Eddie. Id. As part
of its digital music broadcast service, Sirius creates
certain "back-up" and "buffer" copies of
recordings on its servers and satellites. Id. A
description of those copies is set forth in the district
court's opinion. See Flo & Eddie, Inc. v. Sirius
XM Radio, Inc., No. 13-23182-CIV, 2015 WL 3852692, at *1
(S.D. Fla. June 22, 2015).
& Eddie brought suit against Sirius in federal district
court in Florida on September 3, 2013, claiming that
Sirius's broadcasting of Turtles songs constitutes
unauthorized public performances of the recordings and that
Sirius's back-up and buffer copies constitute
unauthorized reproductions of the recordings. Flo &
Eddie, 827 F.3d at 1018. Flo and Eddie alleged the
following four causes of action under Florida law: (1) common
law copyright infringement; (2) common law misappropriation
and unfair competition; (3) common law conversion; and (4)
civil theft under section 772.11, Florida Statutes, for
violations of section 812.014(1), Florida Statutes.
Id. at 1018-19. On July 15, 2014, Sirius moved for
summary judgment on liability. Id. at 1019. After a
hearing, the district court granted Sirius's motion for
summary judgment on all claims. Id.
The District Court
noting that States are free to regulate pre-1972 sound
recordings and that the Florida Statutes do not directly
address these issues, the district court looked to
Florida's common law and separately analyzed the
copyright issues of public performance and reproduction.
Flo & Eddie, 2015 WL 3852692, at *3-6.
the exclusive right of public performance, the district court
concluded that no such right exists under Florida common law.
Id. at *5. The district court noted that there was
no Florida case law directly on point and that there was very
little Florida case law interpreting common law copyright
related to the arts in general. Id. at *4. The district
court thus determined that it was being asked to
"creat[e] a new property right in Florida" and
declined to do so, concluding that such a task was a
legislative one. Id. at *5. The district court also
noted that many unanswered questions would result from the
recognition of such a new right- issues such as ownership,
royalty administration, exceptions, and other stakeholders.
the right of reproduction, the district court implicitly
assumed that Florida common law recognizes a pre- and
post-sale right of reproduction for pre-1972 sound recordings
and then concluded that Sirius's back-up and buffer
copies "do not constitute an improper
reproduction." Id. at *6. The district court
found that "none of the buffer or back-up copies are
maintained by Sirius or accessible to the public. They are
discarded immediately after use. In addition, the buffer
copies are not full length copies of the recording."
Id. In concluding that Sirius did not unlawfully
reproduce the sound recordings, the district court cited two
decisions from the Second Circuit for the proposition that
buffer copies do not constitute copyright infringement.
Id. (citing Cartoon Network, LP v. CSC Holdings,
Inc., 536 F.3d 121, 127-30 (2d Cir. 2008), and
Authors Guild v. Hathi Trust, 755 F.3d 87, 97-99 (2d
determining that Flo & Eddie's common law copyright
claims failed, the district court then summarily dismissed
Flo & Eddie's remaining non-copyright claims-for
common law misappropriation and unfair competition, common
law conversion, and civil theft-on the basis that they were
all dependent on the copyright claim.
The Eleventh Circuit
appeal, the Eleventh Circuit found the existence of
"significant doubt" regarding answers to the
material questions of Florida law upon which the case turns.
Flo & Eddie, 827 F.3d at 1025. As to the
exclusive right of public performance, the Eleventh Circuit
examined this Court's decision in Glazer v.
Hoffman, 16 So.2d 53 (Fla. 1943), and ultimately
expressed uncertainty regarding the potential application of
Glazer to the instant case. Flo &
Eddie, 827 F.3d at 1020-22.
Glazer, Charles Hoffman, a magician/entertainer,
sought a permanent injunction against Maurice Glazer, another
magician/entertainer, alleging infringement of common law
copyright, among other things. Glazer, 16 So.2d at
53-55. In the complaint it was alleged that, among other
things, Glazer imitated several acts and performances that
were the "result of great labor, time and efforts."
Id. at 53-54. The acts and performances generally
involved using certain mechanical equipment to produce
various types of drinks for the audience members through
"sleight of hand performance." Id. at 54.
Glazer argued that he did not attempt to deceive the public
into thinking his performance was like Hoffman's, and
that the drink performance was the common property of all
magicians because it was merely an old sleight of hand trick.
Id. This Court concluded that the performance was
"not such a dramatic composition as to bring it within
the meaning of the" federal copyright statutes.
Id. at 55. This Court then addressed the
"asserted common law property right" in and to the
performance, concluding that Hoffman's performing of the
tricks in front of many audiences over the years constituted
a publication and a dedication to the public such that the
tricks "became the property of the general public, and
[Glazer] had a lawful right to use the same."
the Eleventh Circuit noted that Glazer could be read
to mean that Florida may recognize a common law copyright in
sound recordings, which, "no less than magic tricks, are
'intellectual productions, ' " Flo &
Eddie, 827 F.3d at 1021 (quoting Glazer, 16
So.2d at 55), while noting that Glazer could also be
read to mean that any such common law copyright is
extinguished at the moment of "publication" or
dedication to the public, which could include the public
distribution and sale of phonorecords under the facts of this
case, id. at 1021-22.
concluding that Florida law was unclear regarding the
existence of an exclusive public performance right, the
Eleventh Circuit then analyzed whether Florida law recognizes
an exclusive right of reproduction. Id. at 1023-24.
The Eleventh Circuit noted that CBS, Inc. v. Garrod,
622 F.Supp. 532 (M.D. Fla. 1985), provided some support for
the conclusion that Florida common law recognizes such a
right. Flo & Eddie, 827 F.3d at
1023-24; see also id. at 1023 n.5. The Eleventh
Circuit also noted as potentially relevant the fact that
Florida has a criminal record piracy statute and that the
statute contains an exception for radio broadcasters.
Id. at 1024 (citing § 540.11, Fla. Stat.).
Finally, in reviewing the district court's conclusion
that Sirius's buffer and back-up copies were
non-infringing, the Eleventh Circuit observed that the two
Second Circuit decisions relied on by the district
court-Cartoon Network and Authors
Guild-relied extensively on analyses of the Federal
Copyright Act. Id. The Eleventh Circuit expressed
uncertainty as to whether Florida common law would support
the same analysis and conclusion regarding Sirius's
buffer and back-up copies, even assuming-as the district
court did-that Florida common law otherwise recognizes a
right of reproduction that is not divested by publication.
Concerning Flo & Eddie's remaining non-copyright
claims, the Eleventh Circuit determined that Florida law was
unclear whether these claims "may lie in the absence of
an enforceable copyright." Id. at 1024-25.
the Eleventh Circuit certified to this Court the following
four questions of Florida law:
1. Whether Florida recognizes common law copyright in sound
recordings and, if so, whether that copyright includes the
exclusive right of reproduction and/or the exclusive right of
2. 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 thereof
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
3. 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?
4. To the extent that Florida does not recognize a common law
copyright in sound recordings, 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 ...