Flo & Eddie, Inc. v. Sirius XM Radio, Inc.

Case: 15-13100 Date Filed: 01/05/2018 Page: 1 of 4

[DO NOT PUBLISH]

IN THE UNITED STATES COURT OF APPEALS

FOR THE ELEVENTH CIRCUIT
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No. 15-13100
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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.

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Appeal from the United States District Court
for the Southern District of Florida
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(January 5, 2018)

Before ANDERSON and HULL, Circuit Judges, and ROTHSTEIN, * District
Judge.

PER CURIAM:

*
Honorable Barbara J. Rothstein, United States District Judge for the District of
Columbia, sitting by designation.
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This case returns to us after our certification of four questions to the

Supreme Court of Florida regarding whether and to what extent Florida common

law provides a copyright in pre-1972 sound recordings. For background, we refer

the reader to our previous opinion in this case, Flo & Eddie, Inc. v. Sirius XM

Radio, Inc., 827 F.3d 1016 (11th Cir. 2016). In that opinion, we certified the

following questions to the Supreme Court of Florida:

1. Whether Florida recognizes a 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 a 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 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?

Id. at 1025. The Supreme Court of Florida combined and rephrased the first two

questions as follows:
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Does Florida common law recognize the exclusive right of public
performance in pre-1972 sound recordings?

Flo & Eddie, Inc. v. Sirius XM Radio, Inc., --- So. 3d ---, No. SC16-1161, 2017

WL 4837765, at *4 (Fla. Oct. 26, 2017). After answering this question in the

negative, the court briefly addressed the other two questions.

The Supreme Court of Florida concluded that Florida common law does not

recognize an exclusive right of public performance in pre-1972 sound recordings.

Based on the lack of Florida case law establishing this right, the court found that

creating an exclusive right of public performance in sound recordings “would be

an inherently legislative task.” Id. at *8. The court also found that even if Florida

recognized such a right, Flo & Eddie would have lost the right by selling their

sound recordings to the public during the time when Fla. Stat. § 543.02 (repealed

1977) was in force. Flo & Eddie, Inc., 2017 WL 4837765, at *11. Finally, the court

noted that the New York Court of Appeals recently reached the same conclusion

regarding New York common law in Flo & Eddie’s parallel case in that court. Id.

Because Florida common law does not recognize an exclusive right of public

performance in pre-1972 sound recordings, Flo & Eddie’s claim that Sirius

infringed on this right by making unauthorized public performances of Flo &

Eddie’s recordings over the internet and through its satellites must fail.

The Supreme Court of Florida likewise foreclosed Flo & Eddie’s claim that

Sirius infringed on its exclusive right of reproduction by creating back-up or buffer
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copies of Flo & Eddie’s recordings on its servers and satellites. The court held that

even if Florida common law recognized an exclusive right of reproduction in pre-

1972 sound recordings, Sirius did not infringe on that right by creating back-up or

buffer copies for internal use. Id. at *12. Thus, the district court properly granted

summary judgment in favor of Sirius on both of Flo & Eddie’s copyright claims.

Lastly, the Supreme Court of Florida concluded that Flo & Eddie’s claims

for unfair competition and misappropriation, common law conversion, and

statutory civil theft are based on its alleged common law copyright. Id. Because

Flo & Eddie’s copyright claims must fail, the court instructed that Flo & Eddie’s

other claims are without merit. Accordingly, we affirm the judgment of the district

court.1

AFFIRMED.

1
Because Florida common law does not recognize an exclusive right of public
performance in sound recordings and Sirius did not violate any alleged exclusive right of
reproduction in sound recordings, we need not address Sirius’s alternative argument that the
rights Flo & Eddie assert violate the Dormant Commerce Clause.
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