Flo & Eddie, Inc. v. Sirius SM Radio, Inc. ( 2016 )

Case: 15-13100 Date Filed: 06/29/2016 Page: 1 of 19
[PUBLISH]
IN THE UNITED STATES COURT OF APPEALS
FOR THE ELEVENTH CIRCUIT
________________________
No. 15-13100
________________________
D.C. Docket No. 1:13-cv-23182-DPG
FLO & EDDIE, INC., a California corporation,
individually and on behalf of all others similarly situated,
Plaintiff-Appellant,
versus
SIRIUS XM RADIO, INC., a Delaware corporation,
Defendant-Appellee.
________________________
Appeal from the United States District Court
for the Southern District of Florida
_________________________
(June 29, 2016)
Before HULL and ANDERSON, Circuit Judges, and ROTHSTEIN, * District
Judge.
ANDERSON, Circuit Judge:
*
Honorable Barbara J. Rothstein, United States District Judge for the District of
Columbia, sitting by designation.
Case: 15-13100 Date Filed: 06/29/2016 Page: 2 of 19
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 appropriate 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
1
Because Flo & Eddie’s recordings were fixed before February 15, 1972, they enjoy
copyright protection, if at all, pursuant to state law. See 17 U.S.C. § 301(c).
2
Case: 15-13100 Date Filed: 06/29/2016 Page: 3 of 19
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 satellites.
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; and (4) civil theft under FLA. STAT. §
772.11 for violations of FLA. STAT. § 812.014(1). Flo & Eddie sought damages,
including compensatory and punitive damages, and injunctive relief.
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 &
3
Case: 15-13100 Date Filed: 06/29/2016 Page: 4 of 19
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.”
Fed. R. Civ. P. 56(a).
The district court had jurisdiction of this suit under 28 U.S.C. § 1332(a).
Therefore, in deciding this case, Florida substantive law applies. See Erie R.R. Co.
v. Tompkins, 304 U.S. 64, 78 (1938).
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
4
Case: 15-13100 Date Filed: 06/29/2016 Page: 5 of 19
fixed prior to February 15, 1972. See 17 U.S.C. § 301(c). 2 According to a leading
treatise, “[i]n general, the rights under common law copyright rights are at least co-
extensive with the rights commanded under the Copyright Act.” 2 Melville B.
Nimmer & David Nimmer, Nimmer on Copyright § 8C.02 (Matthew Bender, ed.,
2016). “Common law copyright thus protects against unauthorized reproduction of
copies or phonorecords, unauthorized distribution by publishing or vending, and
unauthorized performances.” Id.
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 addressing whether any such
common law copyright in sound recordings would include the two constituent
rights claimed here: the exclusive right of reproduction and the exclusive right of
public performance. At a motion hearing before the district court, Sirius
characterized the current state of the case law as “a complete judicial void.”
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
2
The sound recordings at issue here are to be distinguished from music compositions,
i.e., the actual notation of the musical notes on a page. Music compositions are governed by
federal copyright law, which has preemptive force. But sound recordings fixed prior to February
15, 1972, are not, and are expressly made subject to the common law or statutes of the respective
states until a fairly remote fixed future date, at which time such state laws will be preempted. Id.;
see also Goldstein v. California, 412 U.S. 546 (1973).
5
Case: 15-13100 Date Filed: 06/29/2016 Page: 6 of 19
directly on point, we think that Glazer v. Hoffman, 16 So. 2d 53 (Fla. 1943),
provides guidance on a possible direction of Florida common law. Although
Glazer does not concern sound recordings, 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 beverages, 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 follows:
[Hoffman’s] performance, as reflected by the record, is substantially,
viz.: He opens his performance with an address, professionally known
6
Case: 15-13100 Date Filed: 06/29/2016 Page: 7 of 19
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.
Id. at 54.
Glazer, the defendant, appears to have argued that the drink pouring
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 close analysis the mixed drink
performance is the old sleight of hand trick.” Id. Hoffman, relying inter alia on
Waring v. WDAS Broadcasting Station, 194 A. 631 (Pa. 1937), argued that “the
stunt is a child of his brain, created by heavy investments of time and labor, and
therefore is an intellectual production protected by the common law.” Id. at 55.
The Supreme Court of Florida, in holding or strong obiter dicta, agreed with
7
Case: 15-13100 Date Filed: 06/29/2016 Page: 8 of 19
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
8
Case: 15-13100 Date Filed: 06/29/2016 Page: 9 of 19
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
9
Case: 15-13100 Date Filed: 06/29/2016 Page: 10 of 19
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 have lost any
common law property in its sound recordings by publication thereof and dedication
thereof to the general public.
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 Fed. R. Civ. P.
33(a)(1). Nonetheless, Mark Volman, principal of Flo & Eddie, testified that Flo &
Eddie distributed and sold copies of its recordings in different formats through
different record labels multiple times between approximately 1975 and 1985.
Volman also testified that “[f]or the last four decades, Flo & Eddie has been
exploiting The Turtles’ master recordings by licensing the rights to make and sell
records and licensing the rights for The Turtles’ recordings to be used in movies,
TV shows, and commercials.” Howard Kaylan, principal of Flo & Eddie, testified
that The Turtles toured the world promoting The Turtles’ recordings in the 1960s
and that The Turtles currently continue to publicly perform their music in concerts.
Indeed, Kaylan characterized The Turtles’ recordings, including such “iconic” hits
as Happy Together, as “clearly part of world history and not just American
history.” These facts, among others in the record, suggest that to the extent that
10
Case: 15-13100 Date Filed: 06/29/2016 Page: 11 of 19
public distribution and sale of a phonorecord, of performance thereof, constitutes
publication of the sound recording therein under Florida common law, there is a
strong possibility that any Florida common law copyright has been terminated by
publication.
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., 830 N.E.2d 250, 259 (N.Y. 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. at 260
(quoting Capitol Records v. Mercury Records Corp., 221 F.2d 657, 663 (2d Cir.
1955)). According to the New York Court of 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
3
We note that the New York Court of Appeals relied on two law review articles for the
apparent proposition that the public sale of a phonorecord containing a recording of a musical
performance does not constitute publication for the purpose of terminating common law
copyrights in the embedded sound recording. See Capitol Records, Inc. v. Naxos of America,
Inc., 830 N.E.2d 250, 260 (N.Y. 2005) (citing Mark A. Bailey, Phonorecords and Forfeiture of
Common-Law Copyright in Music, 71 WASH. L. REV. 151, 171 (1996); Benjamin Kaplan,
Publication in Copyright Law: The Question of Phonograph Records, 103 U. PA. L. REV. 469,
471 (1955)). On our review, it appears that both of these articles deal with the question of
11
Case: 15-13100 Date Filed: 06/29/2016 Page: 12 of 19
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 protections. Id. It is true that the facts of Naxos
involved record piracy (i.e., the defendant had copied one of plaintiff’s records and
was selling its copies to the public). Id. at 252. However, the holding with respect
to publication and divestment was stated generally with regard to the “common
law copyright protection,” and not limited to the exclusive right of reproduction.
Moreover, Sirius points to no principled reason why the sale of records might
constitute only a limited publication and divestment with regard to the exclusive
right of reproduction, but an absolute divestment with regard to the exclusive right
of public performance. However, there may be other considerations at play.
Although the underlying property right would seem to apply in both contexts, sale
of records might well be deemed an abandonment of the right to publicly perform
the records—even in wide distribution to the public for profit—while not being
deemed an implied permission to copy and sell copied records. 4
whether the public sale of a record constitutes publication of the composition embodied in the
record and do not address the potentially distinct issue of publication of a sound recording.
4
The parties also dispute the significance of the previous existence and repeal of FLA.
STAT. § 543.02 (repealed 1977), which provided that when a phonograph record is sold for use in
Florida, all common law rights to further restrict or to collect royalties on the commercial use of
such records are abrogated. Again, the Florida courts have not addressed this issue.
12
Case: 15-13100 Date Filed: 06/29/2016 Page: 13 of 19
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 common law might recognize the
5
In CBS v. Garrod, 622 F. Supp. 532 (M.D. Fla. 1988), and in the context of CBS’s suit
against defendant Garrod for record piracy, the federal district court addressed the issue of
common law copyright protection under Florida law for sound recordings. The recordings
apparently were pre-February 15, 1972, recordings because the court applied Florida common
law, noting that phonorecords were not protected under the federal Sound Recordings Act until
1972. Id. at 535. The only issue before the court involved a claimed exclusive right of
reproduction, and the court held that Florida common law provided that copyright protection for
such sound recordings. The court also addressed the significance of CBS’s previous sales of the
records, and whether that constituted a publication causing a divestment of the common law
copyright protection. In the record piracy context of that case, Garrod held that the distribution
of the records did not cause CBS to lose its exclusive right of reproduction. Thus CBS retained
its claim for relief against the defendant for reproducing (i.e., pirating) CBS’s records. However,
the court explicitly noted, but expressed no opinion with regard to, the issue of publication and
divestment of “the author’s common law copyright to the recorded music or other performance
on the record.” Id. at 535, n*. Thus, Garrod holds that such distribution does not effect a
publication causing the wholescale divestment of the Florida common law copyright
protection—i.e., the distribution did not divest CBS of its exclusive right of reproduction. But
the court expressed no opinion as to the effect of the distribution on any exclusive right of
performance. Garrod acknowledged that there was no Florida law on point with respect to its
rulings about Florida common law copyright protection. Rather, the Garrod court relied upon
equitable principles and the unique nature of the recording business. Id. at 534–35. Cf. Alticor
Inc. v. Umg Recordings, Inc., No. 6:14-cv-542-Orl-37DAB, 2015 WL 8536571 (M.D. Fla. Dec.
11, 2015) (holding that Florida common law does not recognize a public performance right with
respect to sound recordings).
13
Case: 15-13100 Date Filed: 06/29/2016 Page: 14 of 19
copyright constituent right of exclusive reproduction. Moreover, some support for
that proposition might be provided by the fact that Florida’s record piracy statute,
FLA. STAT. § 540.11, criminalizes the reproduction of a sound recording with intent
to sell or use same for profit through public performance. On the other hand, to the
extent that Sirius is analogous to a radio broadcaster, § 540(6)(a) may suggest that
its buffer and back-up copies are permissible.
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, FLA. STAT. §
540.11, does not contain language parallel to the Federal Copyright Act’s
requirement that an infringing “copy” be “sufficiently permanent or stable to
permit it to be perceived, reproduced, or otherwise communicated for a period of
more than transitory duration.” Compare FLA. STAT. § 540.11(2)(a) with 17
U.S.C. § 101. However, the district court also relied on the Second Circuit’s
14
Case: 15-13100 Date Filed: 06/29/2016 Page: 15 of 19
decision in Authors Guild, Inc. v. HathiTrust, 755 F.3d 87 (2d Cir. 2014), which
extensively described and applied the fair use doctrine under the Federal Copyright
Act. In other words, the district court in this case implicitly held that Sirius’s
buffer and back-up copies were not infringing based on the fair use doctrine. 6
Again, neither the Supreme Court of Florida nor any of the Florida District Courts
of Appeal have addressed whether, assuming there is a Florida common law right
of exclusive reproduction that is not divested by publication or public dedication,
the same is infringed by Sirius’s buffer and back-up copies.
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
6
We reject Flo & Eddie’s argument that Sirius waived reliance on the doctrine of fair
use.
15
Case: 15-13100 Date Filed: 06/29/2016 Page: 16 of 19
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 because Florida does
not recognize a common law copyright in sound recordings that includes an
exclusive right of performance and that, to the extent Florida recognizes an
exclusive right of reproduction, Sirius’s conduct did not constitute infringement. In
other words, Sirius argues, and the district court agreed, that these remaining
claims are “based on” Flo & Eddie’s alleged common law copyright, and because
there was no infringement of any common law copyright, the remaining claims
must fail.
Flo & Eddie argues that these non-copyright tort claims are not derivative of,
or dependent upon, the existence of a common law copyright. 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.
16
Case: 15-13100 Date Filed: 06/29/2016 Page: 17 of 19
III. QUESTIONS TO BE CERTIFIED
When significant doubt exists about the answer to a material state law
question upon which the case turns, a federal 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:
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 public
performance?
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 reproduction?
3. To the extent that Florida recognizes a common law copyright
17
Case: 15-13100 Date Filed: 06/29/2016 Page: 18 of 19
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 civil theft
under FLA. STAT. § 772.11 and FLA. STAT. § 812.014? 7
Our phrasing of these questions is not intended to limit the Supreme Court of
Florida in considering the issues presented. The entire record in this case and the
briefs of the parties shall be transmitted to the Supreme Court of Florida for
assistance in answering these questions.8
7
In the event the Supreme Court of Florida holds that there are common law copyright
protections for sound recordings that are not divested by publication, and defines the scope
thereof, the Court may prefer not to address the significance of any such property interest with
respect to Flo & Eddie’s other claims (e.g., common law unfair competition / misappropriation,
conversion, and civil theft). The Court may prefer that the district court address same in the first
instance.
8
We note that Sirius also claims that the recognition of a Florida common law copyright
in sound recordings including an exclusive right of public performance would violate the
dormant Commerce Clause. The question of whether such a right would violate the dormant
Commerce Clause is not something we can adjudicate without knowing what, if any, rights exist.
See Brown-Forman Distillers Corp. v. N.Y. State Liquor Auth., 476 U.S. 573, 579 (1986)
(recognizing that “no clear line separat[es]” state regulation that is per se invalid and activity
subject to Pike balancing, and stating that “the critical consideration is the overall effect of the
statute on both local and interstate activity”); Pike v. Bruce Church, Inc., 397 U.S. 137, 142
18
Case: 15-13100 Date Filed: 06/29/2016 Page: 19 of 19
QUESTIONS CERTIFIED.
(1970) (“Where the statute regulates even-handedly to effectuate a legitimate local public
interest, and its effects on interstate commerce are only incidental, it will be upheld unless the
burden imposed on such commerce is clearly excessive in relation to the putative local benefits. .
. . If a legitimate local purpose is found, then the question becomes one of degree. And the extent
of the burden that will be tolerated will of course depend on the nature of the local interest
involved, and on whether it could be promoted as well with a lesser impact on interstate
activities.”). Because we must know what rights are provided under Florida common law to
determine whether the dormant Commerce Clause is violated, we are unable to reach this issue at
this stage. To the same effect, see Flo & Eddie, Inc. v. Sirius XM Radio, Inc., No. 15–1164–cv.,
2016 WL 1445100, at *4 (2d Cir. Apr. 13, 2016).
19