In most recent decision over The Turtles’ pre-1972 sound recordings, Eleventh Circuit asks Florida Supreme Court to determine whether state law recognizes common law copyright in sound recordings and, if so, whether that copyright includes exclusive rights of reproduction and/or public performance, and scope of and limitations on those rights.

Flo & Eddie Inc., a corporation with principals Mark Volman and Howard Kaylan of the iconic 1960s rock band The Turtles, sued Sirius XM Radio Inc., alleging the satellite and internet radio provider broadcast Turtles’ sound recordings to its subscribers without license or authorization, and asserting state law claims for common law copyright infringement, common law misappropriation/unfair competition, common law conversion and civil theft under Fla. Stat. Section 772.11.

In 1971, Congress amended the Copyright Act to grant limited copyright protection to sound recordings fixed on or after Feb. 15, 1972, leaving intellectual property rights in sound recordings fixed before that date to be governed by state law. Because all of the recordings of The Turtles’ performances of their hit songs were fixed before Feb. 15, 1972, they are not protected under the federal Copyright Act.

The district court granted Sirius’ motion for summary judgment and dismissed all of Flo & Eddie’s claims, concluding that: (1) Florida common law does not recognize an exclusive right of public performance of sound recordings; (2) to the extent Florida common law recognizes an exclusive right to reproduce the sound recordings, Sirius’ buffer and backup copies did not violate that right; and (3) Flo & Eddie’s remaining claims were all dependent on the existence of a successful copyright claim.

On appeal, the Eleventh Circuit addressed the issue of whether a common law copyright in sound recordings exists under Florida common law, and whether this copyright includes either or both of the rights asserted by Flo & Eddie — the public performance right and the reproduction right.

Acknowledging that Florida case law on the subject of public performance rights is “a complete judicial void,” the Eleventh Circuit examined a case addressing common law copyright in magic tricks, reasoning that although the case does not address sound recordings, it nevertheless “provides guidance on a possible direction of Florida common law.” In Glazer v. Hoffman, the Florida Supreme Court held that a magician’s performance, which involved the production of mixed drinks out of cocktail shakers that were shown to be empty, was protected under Florida common law. The Glazer court concluded 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.” On this basis, the Eleventh Circuit reasoned that “there is at least a significant argument that Florida common law may recognize a common law property right in sound recordings.” It pointed out that “[s]ound recordings, no less than magic tricks, are ‘intellectual productions’ that are ‘created by heavy investments of time and labor.’” The Eleventh Circuit also acknowledged, however, that a common law performance right can be “divested” through a public performance before “many audiences,” suggesting that Flo & Eddie may have lost any common law public performance right it had in the sound recordings by way of the sale of those recordings to the public. The court thus concluded that Florida law therefore is unclear on the existence and scope of a performance right in the pre-1972 recordings.

On the issue of reproduction rights, the Eleventh Circuit said it is possible that Florida common law recognizes a reproduction right for pre-1972 sound recordings, citing to a federal district court decision in CBS v. Garrod and to Florida’s record piracy statute, which criminalizes the reproduction of a sound recording with the intent to sell or use the recording for profit. On the other hand, the court reasoned, even assuming this right exists, a backup copy or buffer copy may be noninfringing, as the court below had determined. Regarding the remaining claims, the Eleventh Circuit concluded that Florida law is also unclear on whether Flo & Eddie can maintain freestanding unfair competition or misappropriation, conversion or civil theft claims separately from any common law copyright infringement claim.

Because “significant doubt exists” regarding the issues raised in the case, the Eleventh Circuit certified four questions to the Florida Supreme Court:

  1. Whether Florida recognizes common law copyright in sound recordings and, if so, whether that copyright includes the exclusive right of reproduction 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 including a right of exclusive reproduction in sound recordings, whether the backup or buffer copies made by Sirius 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. Section 772.11 and Fla. Stat. Section 812.014.

In a parallel action brought by Flo & Eddie in New York, the Second Circuit in April similarly reserved decision and certified to the New York Court of Appeals the following question: “Is there a right of public performance for creators of sound recordings under New York law and, if so, what is the nature and scope of that right?” (Read our summary of the Second Circuit’s decision here.)