          Supreme Court of Florida
                                  ____________

                                  No. SC16-1161
                                  ____________


                            FLO & EDDIE, INC., etc.,
                                  Appellant,

                                         vs.

                         SIRIUS XM RADIO, INC., etc.,
                                  Appellee.

                                [October 26, 2017]

CANADY, J.

      This 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 recordings.1



       1. For purposes of convenience, we use the term “pre-1972” sound
recordings to refer to those sound recordings that were recorded—that is,
“fixed”—prior to February 15, 1972. And we refer to sound recordings fixed on or
after that date as “post-1972” sound recordings. That date is relevant because post-
1972 sound recordings fall within the exclusive realm of federal copyright
protection, whereas pre-1972 sound recordings receive no federal copyright
protection at all. See 17 U.S.C. § 301(c). Congress left it to the States to regulate
pre-1972 sound recordings and to provide “any rights or remedies under the
common law or statutes . . . until February 15, 2067.” Id.
This 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.

              I. BACKGROUND AND CERTIFIED QUESTIONS

      Appellant/plaintiff, 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).2 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




      2. The sound recordings at issue include the iconic hit “Happy Together.”
Flo & Eddie, 827 F.3d at 1022.


                                         -2-
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).

      Flo & 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.3 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.

                               A. The District Court

      After 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




      3. Flo & Eddie brought similar suits against Sirius in California, see Flo &
Eddie Inc. v. Sirius XM Radio Inc., No. CV 13-5693 PSG RZx, 2014 WL 4725382
(C.D. Cal. Sept. 22, 2014), and in New York, see Flo & Eddie, Inc. v. Sirius XM
Radio, Inc., 62 F. Supp. 3d 325 (S.D.N.Y. 2014), rev’d, 849 F.3d 14 (2d Cir.
2017).


                                          -3-
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.

      As to 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.4 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. Id.

      As to 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



       4. The district court noted that the only case to which Flo & Eddie cited that
interpreted Florida law was CBS, Inc. v. Garrod, 622 F. Supp. 532 (M.D. Fla.
1985), a case that “relied extensively on New York law” and that did not address
the issue of public performance rights. Flo & Eddie, 2015 WL 3852692, at *4.


                                        -4-
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 Cir. 2014)).

      After 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. Id.5

                             B. The Eleventh Circuit

      On 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



       5. Although the district court granted summary judgment in favor of Sirius,
the district court nevertheless addressed an argument raised by Sirius regarding the
Dormant Commerce Clause, concluding that any state regulation of pre-1972
recordings would not violate the Dormant Commerce Clause, given that Congress
specifically authorized the States to regulate pre-1972 recordings. Flo & Eddie,
2015 WL 3852692, at *6.


                                        -5-
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.

      In 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


                                        -6-
tricks “became the property of the general public, and [Glazer] had a lawful right

to use the same.” Id.

      Here, 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 1021-22.6

      After concluding that Florida law was unclear regarding the existence of an

exclusive public performance right, the Eleventh Circuit then analyzed whether


      6. The Eleventh Circuit also noted that Glazer referenced Waring v. WDAS
Broadcasting Station, 194 A. 631 (Pa. 1937), in which the Supreme Court of
Pennsylvania held that a plaintiff orchestra had a common law right of
performance that could be enforced in equity to prohibit a defendant radio station
from publicly broadcasting a lawfully purchased recording of the orchestra’s
musical performance. Flo & Eddie, 827 F.3d at 1021 (discussing Waring, 194 A.
at 634-35).
      The Eleventh Circuit also examined the New York Court of Appeals’
decision in Capitol Records, Inc. v. Naxos of America, Inc., 830 N.E.2d 250 (N.Y.
2005), and concluded that “[u]nder New York common law, the public sale of a
sound recording is not a general publication that ends common law copyright
protection.” Flo & Eddie, 827 F.3d at 1022-23. We note that the New York Court
of Appeals recently distinguished Naxos (and certain other cases addressing New
York common law) as involving solely the right of reproduction, holding that New
York common law “does not recognize a right of public performance for creators
of sound recordings.” Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 70 N.E.3d 936,
937 (N.Y. 2016).

                                         -7-
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.7 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. Id.




      7. In Garrod—a record piracy case—the federal district court in Florida
concluded that distribution of records does not result in the loss of “common law
copyright.” Garrod, 622 F. Supp. at 535.


                                         -8-
      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.

      Consequently, 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 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 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?




                                       -9-
Id. at 1025.8

                C. Combined and Rephrased Certified Question

      We conclude that this controversy turns on the threshold question of whether

Florida common law recognizes an exclusive right of public performance in

pre-1972 sound recordings. Consequently, we combine and then rephrase the first

two certified questions into the following determinative question:

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

We first explain why we answer the combined and rephrased question in the

negative. We then briefly address the remaining two questions of Florida law

certified by the Eleventh Circuit.

                                     II. ANALYSIS

      As noted by the district court and the Eleventh Circuit, there is no Florida

case law specifically addressing Florida common law copyright in the context of

sound recordings. But the issue of copyright for sound recordings—including

public performance rights—has a long and well-documented history in this

country, under both federal law and Florida law. Consequently, we first explore

that history and then explain its relevance to our conclusion that Florida common



      8. The Eleventh Circuit also reserved judgment on the district court’s
conclusion regarding the Dormant Commerce Clause. Flo & Eddie, 827 F.3d at
1026 n.8. We do not address this issue.


                                         - 10 -
law does not recognize an exclusive right of public performance in pre-1972 sound

recordings.

               A. Copyright for Sound Recordings—Federal Law

      As recognized by the Eleventh Circuit, “sound recordings . . . are to be

distinguished from music compositions, i.e., the actual notation of the musical

notes on a page.” Flo & Eddie, 827 F.3d at 1019 n.2; see also Brian T. Yeh, Cong.

Research Serv., RL33631, Copyright Licensing in Music Distribution,

Reproduction, and Public Performance 2-3 (2015) (noting the distinction under

federal copyright law between “musical works” and “sound recordings”). Musical

compositions have been protected by federal copyright law since 1831. See Act of

Feb. 3, 1831, ch. 16, § 1, 4 Stat. 436 (granting the author of a “musical

composition . . . the sole right and liberty of printing, reprinting, publishing and

vending such . . . musical composition”). And in 1909, Congress expanded that

federal copyright protection for musical compositions by granting the copyright

owners the exclusive right “[t]o perform the [musical composition] publicly for

profit.” Act of March 4, 1909, Pub. L. No. 60-349, § 1(e), 35 Stat. 1075. Thus, the

owner of the copyright in the composition (oftentimes the songwriter or publisher)

has long been entitled to receive royalties whenever the musical work is played on

the radio, whether that be terrestrial radio or, more recently, satellite radio.




                                         - 11 -
      Historically, the performing artist who recorded the song (or the record

company), however, was not entitled to a separate federal copyright for the sound

recording and thus did not receive any royalties when the recorded song was

played on the radio. For decades, record companies and artists sought to change

that result. Numerous bills were introduced over the years that would have

provided a performance right for sound recordings, but those bills all failed. See,

e.g., H.R. 10632, 74th Cong. (1936); H.R. 7173, 77th Cong. (1942); H.R. 1270,

80th Cong. (1947); see also Linda A. Newmark, Performance Rights in Sound

Recordings: An Analysis of the Constitutional, Economic, and Equitable Issues, 38

ASCAP Copyr. L. Symp. 141, 142 n.9 (1992) (listing more than twenty failed bills

between 1936 and 1981). In fact, up until 1971, Congress declined to provide any

form of federal copyright protection to sound recordings.

      In 1971—in an apparent response to the rise of record piracy—Congress

extended federal copyright protection to sound recordings for the very first time in

the Sound Recording Act of 1971 (Act of 1971), Pub. L. No. 92-140, § 1, 85 Stat.

391. But this new copyright protection was “limited” and focused exclusively on

the right to “reproduce and distribute to the public . . . reproductions of the . . .

sound recording.” Id. And one of the exceptions to this limited new right was for

“reproductions made by transmitting organizations exclusively for their own use.”

Id. The Act of 1971 did not grant the sound recording owner an exclusive right of


                                          - 12 -
public performance. Thus, under federal law, the playing of a sound recording

over the radio continued to require only one license—from the copyright owner of

the musical work. The Act of 1971 only applied to those sound recordings “fixed,

published, and copyrighted” on or after February 15, 1972, which was the effective

date of the Act of 1971. Id. § 3, 85 Stat. 392; see also 17 U.S.C. § 301(c).

Although pre-1972 sound recordings did not come within the purview of the Act of

1971, Congress did make clear that it was not preempting any state protections for

pre-1972 sound recordings. See Act of 1971, § 3, 85 Stat. 392 (noting that nothing

in the Act of 1971 or in title 17, United States Code, “shall be . . . construed as

affecting in any way any rights with respect to sound recordings fixed before

[February 15, 1972]”); see also Goldstein v. California, 412 U.S. 546, 571 (1973)

(“Congress has indicated neither that it wishes to protect, nor to free from

protection, recordings of musical performances fixed prior to February 15, 1972.”).

      In 1976, Congress amended title 17 of the United States Code in its entirety,

largely bringing all of copyright law under the federal umbrella.9 See Act of Oct.

19, 1976 (Act of 1976), Pub. L. No. 94-553, § 101, 90 Stat. 2541, 2544-45.

Regarding sound recordings, the Act of 1976 made two things clear. First, States

remained free to provide statutory or common law protections for all pre-1972



     9. United States copyright law was codified as title 17 of the United States
Code on July 30, 1947.


                                         - 13 -
sound recordings, until February 15, 2047.10 Id. § 101, 90 Stat. 2572 (amending 17

U.S.C. § 301(c)). Second, for those sound recordings covered by federal copyright

protection, that protection specifically did not include an exclusive right of public

performance. Id. § 101, 90 Stat. 2560 (amending 17 U.S.C. § 114(a)). The Act of

1976 went into effect on January 1, 1978. Id. § 102, 90 Stat. 2598-99.

      In 1995—in an apparent response to the rise of certain digital technologies—

Congress expanded federal copyright protection for post-1972 sound recordings,

granting them an exclusive right of public performance for the very first time. See

Digital Performance Right in Sound Recordings Act of 1995 (Act of 1995), Pub. L.

No. 104-39, 109 Stat. 336. But this new right was, again, limited—the new right

only applied to the public performance of sound recordings “by means of a digital

audio transmission.” Id. § 2, 109 Stat. 336 (amending 17 U.S.C. § 106). As a

result of the Act of 1995, under federal law, companies like Sirius now required

two licenses to broadcast post-1972 sound recordings—that is, one from the owner

of the musical composition and one from the owner of the sound recording—but

continued to require only one license to broadcast pre-1972 sound recordings. And

traditional AM/FM radio continued to require only one license to broadcast any



      10. Congress later extended the future date for federal preemption of state
regulation over pre-1972 sound recordings for an additional twenty years, until
February 15, 2067. See Sonny Bono Copyright Term Extension Act, Pub. L. No.
105-298, § 102(a), 112 Stat. 2827 (1998).


                                        - 14 -
sound recordings, whether pre-1972 or post-1972. The Act of 1995 reflects

Congress’s attempt at a balancing act of the various competing stakeholder

interests involved in this arena. Namely, the Act of 1995 included, among other

things, a compulsory license scheme for companies that engage in the digital

transmission of sound recordings, a rate-setting mechanism, an exemption for

traditional radio, and a mandate for royalty sharing with the performers. See

generally Act of 1995.

      This relevant history shows that federal copyright law has long distinguished

the right of public performance from the right of reproduction and that up until

1995—when Congress granted a limited right of public performance for post-1972

sound recordings—Congress had repeatedly declined to recognize any right of

public performance for any sound recordings.

              B. Copyright for Sound Recordings—Florida Law

      Although no Florida case law specifically addresses Florida common law

copyright in the context of sound recordings, the Florida Legislature has addressed

the issue of copyright for sound recordings on various occasions. These legislative

measures in Florida were directly related to Congress’s amendments to the federal

copyright laws, as well as to certain case law emanating from other jurisdictions,

namely, two cases that specifically addressed the issue of public performance

rights for sound recordings—Waring v. WDAS Broadcasting Station, Inc., 194 A.


                                       - 15 -
631 (Pa. 1937), and RCA Manufacturing Co. v. Whiteman, 114 F.2d 86 (2d Cir.

1940).

      In Waring, the Supreme Court of Pennsylvania identified but then declined

to follow the “general American doctrine,” under which the act of “publication” by

the holder of certain common law property rights generally terminates those rights.

Waring, 194 A. at 635-36. Waring involved a conductor of an orchestra filing suit

to enjoin a radio station from broadcasting phonograph records of the orchestra

performing its own artistic renditions of popular music. Id. at 632-33. The

orchestra originally played in certain limited venues and eventually began to play

over the radio, entering into a contract with the Ford Motor Company to broadcast

on one night of the week. Id. The orchestra also started to make phonograph

records for the Victor Talking Machine Company to sell to the public, but the

records contained a label that read: “Not licensed for radio broadcast.” Id. at 633.

The defendant purchased a copy of the phonograph record and began playing it on

the defendant’s radio station. Id. Waring recognized that the case presented an

issue of first impression. Id. at 632.

      After recognizing that the sound recordings were not protected under federal

copyright law, id. at 633, Waring concluded that the orchestra had a common law

property right because the orchestra’s productions met the test of “elevat[ing]

interpretations to the realm of independent works of art,” id. at 635. Waring then


                                         - 16 -
addressed the issue of whether the orchestra should be considered to have lost its

property interest through “publication”—the general rule in the realm of common

law copyright. Id. at 635-36. Waring concluded that the restriction label affixed to

the records was not unreasonable, id. at 638, and therefore resulted in only a

“limited” or “qualified” publication as opposed to a “general” publication, id. at

636. Consequently, the orchestra could “enforce[] in equity” its public

performance right as against the radio station. Id. at 638.11

      In 1940, the Second Circuit Court of Appeals in Whiteman expressly

disagreed with the Supreme Court of Pennsylvania’s decision in Waring.

Whiteman similarly involved an orchestra attempting to enjoin a radio station from

broadcasting phonograph records of the orchestra’s musical performances that

were sold with the following restrictive legend: “Not Licensed for Radio

Broadcast.” Whiteman, 114 F.2d at 87. But Whiteman concluded that New York

would follow the doctrine that any common law protection in the sound recordings

“ended with the sale of the records.” Id. at 88. Whiteman reasoned that to rule

otherwise would be to effectively grant a perpetual monopoly to a work that was

otherwise non-copyrightable under federal copyright law—a law which itself



       11. Two years after Waring, a federal district court in North Carolina
similarly concluded that the plaintiff orchestra could enjoin the defendant radio
station from playing electrical transcriptions of its musical interpretations on the
radio station. See Waring v. Dunlea, 26 F. Supp. 338 (E.D.N.C. 1939).


                                        - 17 -
grants only a temporary monopoly to a copyrightable work in exchange for its

dedication to the public. Id. at 89. Thus, Whiteman determined that any relief for

sound recording owners must come from Congress, not from the courts. Id. (“Any

relief which justice demands must be found in extending statutory copyright to

such works . . . .”).12

       In the wake of Waring and Whiteman, the Florida Legislature enacted

legislation aimed squarely at the issue of claimed public performance rights for

sound recordings. See ch. 20868, Laws of Fla. (1941) (codified at §§ 543.02 and

543.03, Fla. Stat. (1941)). The new Florida law provided as follows:

               543.02. Common law rights abolished.—When any
       phonograph record or electrical transcription, upon which musical
       performances are embodied, is sold in commerce for use within this
       state, all asserted common law rights to further restrict or to collect
       royalties on the commercial use made of any such recorded
       performances by any person are hereby abrogated and expressly
       repealed. When such article or chattel has been sold in commerce,
       any asserted intangible rights shall be deemed to have passed to the
       purchaser upon the purchase of the chattel itself, and the right to
       further restrict the use made of phonograph records or electrical

        12. In 1955, the Second Circuit overruled Whiteman, but only in the context
of the right of reproduction and distribution, holding that under New York
common law, “where the [owner] 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.” Capitol Records, Inc. v. Mercury Records
Corp., 221 F.2d 657, 663 (2d Cir. 1955); see also Flo & Eddie, 70 N.E.3d at 943
(concluding that Mercury Records overruled Whiteman, but solely in the context
of anti-piracy). But concerning the right of public performance, Whiteman appears
to have become the final judicial word in the period since 1940 until recent
litigation by Flo & Eddie.


                                         - 18 -
      transcriptions, whose sole value is in their use, is hereby forbidden
      and abrogated.

             543.03. Rights under copyright laws unaffected.—Nothing
      in § 543.02 or this section shall be deemed to deny the rights granted
      any person by the United States copyright laws. The sole intendment
      of this enactment is to abolish any common law rights attaching to
      phonograph records and electrical transcriptions, whose sole value is
      in their use, and to forbid further restrictions or the collection of
      subsequent fees and royalties on phonograph records and electrical
      transcriptions by performers who were paid for the initial performance
      at the recording thereof.

The enactment of this law indicates the Florida Legislature’s intent to codify the

“general American doctrine” that Waring acknowledged but declined to follow, see

Waring, 194 A. at 635-36, and that Whiteman adopted, see Whiteman, 114 F.2d at

88.

      Thirty years later, shortly before Congress passed the Act of 1971—which

provided copyright protection to post-1972 sound recordings solely in the context

of the right to “reproduce and distribute” reproductions of the recordings, see Act

of 1971, § 1, 85 Stat. 391—the Florida Legislature enacted its own record piracy

law, albeit a criminal one. See ch. 71-102, § 1, at 255-56, Laws of Fla. (codified at

§ 543.041, Fla. Stat. (1971)). The new Florida law—which made no distinction

between pre- and post-1972 recordings—made it a crime to “[k]nowingly and

willfully, without the consent of the owner,” copy with the intent to sell or cause to

be sold any sound recording on a “phonograph record, disc, wire, tape, film, or

other article.” Id. § 1, at 256. Additionally, the new law did not amend section

                                        - 19 -
543.02, which continued to provide that the public sale of a sound recording

extinguished any asserted common law rights to restrict the commercial use made

of that recorded performance. Thus, like Congress, the Florida Legislature clearly

viewed the issue of public performance rights for sound recordings as separate and

distinct from the right of reproduction.

      In 1977, shortly before the effective date of Congress’s sweepingly

preemptive Act of 1976, the Florida Legislature repealed almost all of chapter 543,

Florida Statutes, including the common-law-divestiture provision in sections

543.02 and 543.03. See ch. 77-440, § 1, at 1802, Laws of Fla. The Florida

Legislature did not, however, repeal the anti-piracy statute in section 543.041. Id.

§ 2, at 1802. Rather, the Legislature expanded the anti-piracy statute to, among

other things, make it unlawful to “[k]nowingly and willfully, without the consent

of the performer,” copy performances “whether live before an audience or

transmitted by wire or through the air by radio or television.” Id. § 2, at 1803. In

addition, the Legislature carved out certain exceptions to the criminal statute,

including a specific exception for “any broadcaster who, in connection with or as

part of a radio, television or cable broadcast transmission, or for the purpose of




                                           - 20 -
archival preservation transfers any such sounds recorded on a sound recording.”

Id. (emphasis added).13

   C. Answering the Combined and Rephrased Certified Question—Does
  Florida Common Law Recognize the Right of Public Performance for Pre-
                          1972 Recordings?

      Florida common law has never previously recognized an exclusive right of

public performance for sound recordings. To recognize such a right for the first

time today would be an inherently legislative task. Such a decision would have an

immediate impact on consumers beyond Florida’s borders and would affect

numerous stakeholders who are not parties to this suit. The district court in this

case recognized these concerns, Flo & Eddie, 2015 WL 3852692, at *5, as did the

New York Court of Appeals when it recently answered a similar question certified

by the Second Circuit in a suit brought by Flo & Eddie against Sirius in federal




       13. The Legislature subsequently moved the record piracy statute to section
540.11, Florida Statutes—chapter 540, Florida Statutes, generally addresses
commercial discrimination and unfair competition. The Legislature later amended
the record piracy statute again, in 1989. See ch. 89-181, § 1, at 749-52, Laws of
Fla. Among other things, the 1989 amendments made it unlawful to knowingly,
willfully, and without the consent of the owner, copy sound recordings or
performances with the intent to “use or cause to be used for profit through public
performance” the article on which the sounds are transferred. Id. § 1, at 750. The
Legislature also retained the exception for broadcasters, while adding certain new
exceptions. Id. § 1, at 752. The Legislature has not amended the record piracy
statute since 1989.


                                        - 21 -
district court in New York based on the same conduct at issue in this case,14 Flo &

Eddie, Inc. v. Sirius XM Radio, Inc., 70 N.E.3d 936, 949-50 (N.Y. 2016). Indeed,

in declining to recognize a right of public performance under New York common

law, the New York Court of Appeals noted that to recognize such a right would

have “extensive and far-reaching” consequences that would “upset settled

expectations” and impact the “many competing interests at stake.” Flo & Eddie,

70 N.E.3d at 949. We agree. Flo & Eddie essentially asks this Court to recognize

an unworkable common law right in pre-1972 sound recordings that is broader

than any right ever previously recognized in any sound recording. Doing so would

require this Court to, among other things, ignore the lengthy and well-documented

history of this topic—something we decline to do.

      As set forth above, since 1831, Congress has extended copyright protection

to the owner of the musical composition itself. See Act of Feb. 3, 1831, ch. 16, §

1, 4 Stat. 436. And since 1909, that copyright protection has included the

exclusive right of public performance. See Act of March 4, 1909, Pub. L. No. 60-

349, § 1(e), 35 Stat. 1075. Congress—over the course of several decades—then



       14. In Flo & Eddie’s related New York suit, the Second Circuit determined
that the case turned on “a significant and unresolved issue of New York law” and
then certified the following question to the New York Court of Appeals: “Is there a
right of public performance for creators of pre-1972 sound recordings under New
York law and, if so, what is the nature and scope of that right?” Flo & Eddie, Inc.
v. Sirius XM Radio, Inc., 849 F.3d 14, 16 (2d Cir. 2017).


                                       - 22 -
repeatedly declined to provide any form of separate copyright protection for sound

recordings. In 1971, Congress finally extended federal copyright protection to

sound recordings, but only to post-1972 sound recordings, see Act of 1971, § 3, 85

Stat. 392, and solely with respect to record piracy, with an exception for

“transmitting organizations” for their own use, id. § 1, 85 Stat. 391. It was not

until the Act of 1995 that Congress finally granted a limited right of public

performance that only applied to the public performance of post-1972 sound

recordings “by means of a digital audio transmission.” See Act of 1995, § 2, 109

Stat. 336 (amending 17 U.S.C. § 106).

      Unlike the carefully delineated and limited right of public performance for

post-1972 sound recordings that Congress eventually recognized in 1995 and

circumscribed within the context of the various competing stakeholder interests,

the Florida common law right sought by Flo & Eddie for pre-1972 sound

recordings is unfettered. Thus, if this exclusive right of public performance has

existed all along under the common law, then one would have to conclude that

Congress actually took away that common law right for post-1972 recordings, on a

going-forward basis, when enacting the Act of 1971—an act that recognized solely

the right of reproduction in post-1972 sound recordings. See Act of 1971, § 1, 85

Stat. 391. And one would have to conclude that Congress then only partially

restored that right when enacting the Act of 1995—an act that recognized the right


                                        - 23 -
of public performance in post-1972 recordings, but only in the context of digital

transmissions. See Act of 1995, § 2, 109 Stat. 336. We decline to reach the

conclusion that, despite decades of industry lobbying, Congress eventually granted

a right in 1972 that was significantly less valuable than the right Flo & Eddie

claims has existed all along under the common law in Florida and elsewhere.

Accepting Flo & Eddie’s position would require that we ignore the lengthy history

of this issue on the federal level.

      As set forth above, certain legislative developments in Florida are also

relevant to our conclusion. Flo & Eddie cites the Legislature’s enactment of

sections 543.02 and 543.03, Florida Statutes (1941)—which “expressly repealed”

and “abolish[ed] any common law rights attaching to phonograph records”—as

proof positive that Florida common law recognizes a common law right of public

performance. Flo & Eddie argues that the Legislature would not have “abolished”

those common law rights in 1941 had they not existed in the first place. We reject

Flo & Eddie’s arguments.

      As an initial matter, at the time the Legislature enacted sections 543.02 and

543.03, there was no Florida case law that in any way recognized a common law

right of public performance for sound recordings. The Legislature therefore was

not addressing a recognized right under Florida common law. Instead, the

Legislature’s enactment of sections 543.02 and 543.03 in the wake of Waring and


                                        - 24 -
Whiteman was designed to prevent common law from developing in Florida that

would have recognized the exclusive right of public performance for sound

recordings. The Legislature’s use of the terms “repeal” and “abrogate” in sections

543.02 and 543.03 does not support a different conclusion. The Legislature simply

used language similar to that used in legislation passed in other states to reject

Waring. See, e.g., 1939 S.C. Acts 53. The operative language of the statute

focuses on “all asserted common law rights.” § 543.02, Fla. Stat. (1941) (emphasis

added). No mention is made of “existing” or “established” common law rights.

      Flo & Eddie also argues that when the Legislature subsequently repealed

sections 543.02 and 543.03 in 1977, the effect of this repeal was to revive with full

force and effect the prior existing common law that had been in place before the

enactment of sections 543.02 and 543.03. In support of this proposition, Flo &

Eddie cites Florida Fertilizer & Mfg. Co. v. Boswell, 34 So. 241, 242 (Fla. 1903)

(“[W]hen a statute changing the common law is repealed, the common law is

restored to its former state.”), and North Shore Hospital, Inc. v. Barber, 143 So. 2d

849, 853 (Fla. 1962) (same). But Flo & Eddie’s repeal argument is flawed in at

least three respects.

      First, as just explained, Florida common law had never recognized any

exclusive right of public performance prior to the enactment of sections 543.02 and

543.03. Consequently, if anything, the repeal of those two sections would simply


                                         - 25 -
restore Florida common law to its previous state—that is, the absence of any such

common law right. Indeed, in Barber, this Court specifically looked to case law

that “was decided prior to the enactment of the [subsequently repealed] statute.”

Barber, 143 So. 2d at 853 (emphasis added).

      The second problem with Flo & Eddie’s repeal argument is in its reliance on

this Court’s decision in Glazer. Flo & Eddie argues that in Glazer, “this Court

expressly recognized the copyright principles embraced in the seminal and

instructive Waring case.” In certifying the questions of Florida law in this case,

the Eleventh Circuit did not embrace Flo & Eddie’s reading of Glazer, instead

expressing uncertainty as to the potential application of Glazer to the instant case.

Flo & Eddie, 827 F.3d at 1021-22. But in doing so, the Eleventh Circuit did note

that Glazer contained a reference to Waring. Id. at 1021. We conclude that Glazer

does not support the existence of a common law right of public performance for

pre-1972 sound recordings.

      As an initial matter, we note that Glazer did not adopt Waring. Instead,

Glazer’s lone reference to Waring was a bare recitation that Waring was one of

approximately seven different cases relied on by the plaintiff in Glazer. See

Glazer, 16 So. 2d at 55. Another problem with Flo & Eddie’s reliance on Glazer is

that Glazer was decided in 1943, after the enactment of sections 543.02 and

543.03. Thus, Glazer was not the common law that existed prior to the enactment


                                        - 26 -
of those two sections. See Barber, 143 So. 2d at 853. Moreover, we do not read

Glazer as even applying to public performance rights for sound recordings, given

that sections 543.02 and 543.03 were in effect at the time Glazer was decided, and

Glazer itself specifically referenced chapter 543, Florida Statutes, noting that “the

alleged common law property right” at issue was not governed by those provisions.

Glazer, 16 So. 2d at 56. But even if we agreed that Glazer supports the recognition

of an exclusive right of public performance for sound recordings, Flo & Eddie still

would not prevail. Glazer concluded that Hoffman’s repeated public performances

of the magic trick constituted a publication and dedication such that the general

public had the “lawful right to use” the trick. Id. at 55. Thus, if anything, Glazer

would stand for the proposition that for those “dramatic composition[s]” or

“intellectual production[s],” id., that do not rise to the level of being covered by

federal copyright law—as was the case with Hoffman’s magic trick, and as was the

case in 1943 with respect to all sound recordings—any exclusive right of public

performance is lost at the moment of publication. In other words, when

phonorecords are commercially sold, the public would obtain the “lawful right to

use” the sound recordings. Id. In brief, Glazer in no way supports the existence of

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

      The third problem with Flo & Eddie’s repeal argument is that the sound

recordings at issue were sold in commerce in Florida at a time when sections


                                         - 27 -
543.02 and 543.03 were in full force and effect.15 Flo & Eddie does not appear to

dispute that sections 543.02 and 543.03 would have caused any purported public

performance rights to be lost in Florida for those sound recordings sold in

commerce during that time. Instead, Flo & Eddie argues that upon repeal of

sections 543.02 and 543.03 in 1977, all public performance rights revested in Flo

& Eddie. But even if we agreed that Florida common law did recognize the right

of public performance prior to the enactment of sections 543.02 and 543.03 in

1941, and that the repeal of those sections in 1977 revived that common law right,

we would reject Flo & Eddie’s repeal-and-revive argument for those songs sold in

commerce prior to repeal. Nothing in the legislative history of the repeal or in the

cases cited by Flo & Eddie supports the conclusion that such rights revested

entirely. See, e.g., Firestone Tire & Rubber Co. v. Acosta, 612 So. 2d 1361, 1363

(Fla. 1992) (concluding that the repeal of the statute of repose could not “have the

effect of reestablishing a cause of action that had been previously extinguished by

operation of law”). Even to conclude that such rights only partially revested would

be problematic. For example, a finding that a pre-repeal purchase of, say, “Happy

Together” could continue to be freely played in public while a post-repeal purchase




       15. The Eleventh Circuit noted certain “facts . . . in the record,” including
that, among other things, Flo & Eddie was selling copies of its recordings going
back to at least 1975. Flo & Eddie, 827 F.3d at 1022.


                                        - 28 -
of that same recording was subject to licensing and royalty payments would be

illogical and unworkable. But of course, Florida common law has never

recognized an exclusive right of public performance in sound recordings.

      Finally, we note that Flo & Eddie relies on the assertion that New York

common law recognizes a right of public performance in pre-1972 sound

recordings. In fact, Flo & Eddie argues that this Court’s decision in Glazer—

which Flo & Eddie interprets as recognizing an exclusive right of public

performance for pre-1972 sound recordings—is “entirely in accord with the

decisions from New York and Pennsylvania that have arrived at the same

conclusion grounded on the English common law adopted in those states as well as

in the State of Florida.” As an initial matter, the development of New York and

Pennsylvania common law is not dispositive here. But in any event, we note that

the New York Court of Appeals has since squarely rejected Flo & Eddie’s

interpretation of New York law. The Court of Appeals has held unequivocally that

“New York’s common-law copyright has never recognized a right of public

performance for pre-1972 sound recordings.” Flo & Eddie, 70 N.E.3d at 949. In

declining to recognize the right of public performance for the very first time, the




                                        - 29 -
New York Court of Appeals observed that the common law “evolves slowly and

incrementally, eschewing sudden or sweeping changes.” Id. at 941.16

      This Court has similarly noted that the common law should be altered only

in rare circumstances. See, e.g., In re T.A.C.P., 609 So. 2d 588, 594 (Fla. 1992)

(noting that the common law should be altered only when “demanded by public

necessity” or when necessary “to vindicate fundamental rights” (citation omitted));

Hoffman v. Jones, 280 So. 2d 431, 435 (Fla. 1973) (“[T]his Court may change the

[common law] where great social upheaval dictates.”). And we conclude that this

case does not demand the recognition of a new common law right of public

performance in pre-1972 sound recordings.

      In short, we answer the combined and rephrased certified question as

follows:




       16. We note that in the related suit filed by Flo & Eddie against Sirius in
California, the federal district court granted Flo & Eddie’s motion for summary
judgment “but only on the basis of public performance conduct.” Flo & Eddie,
2014 WL 4725382, at *1. We also note that California has a statute that addresses
pre-1972 sound recordings. See Cal. Civ. Code § 980(a)(2). And we note that the
district court in that case relied on the plain language and legislative history of the
California statute in reaching its conclusion. Flo & Eddie, 2014 WL 4725382, at
*7. Lastly, we note that the issue of public performance rights for sound
recordings is currently on appeal before the Ninth Circuit in a similar suit brought
by Flo & Eddie against a different defendant, with the Ninth Circuit recently
certifying to the California Supreme Court two questions of California law on that
issue. See Flo & Eddie, Inc. v. Pandora Media, Inc., 851 F.3d 950, 951 (9th Cir.
2017). But again, the development of California law is not dispositive here.


                                         - 30 -
      Florida common law does not recognize an exclusive right of public
      performance in pre-1972 sound recordings.

Because the issue of public performance rights is, in our view, the determinative

issue based on the facts of this case, we only briefly address the remaining two

certified questions.

                       D. Remaining Two Certified Questions

      The Eleventh Circuit certified the following additional question concerning

“back-up or buffer copies”:

      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?

Flo & Eddie, 827 F.3d at 1025. Even assuming that Florida common law

recognizes the existence of a post-sale exclusive right of reproduction in pre-1972

sound recordings, any such right would not be unfettered and we would conclude

that no violation occurred under the facts of this case. We agree with the Second

Circuit’s conclusion in Flo & Eddie’s related suit that, based on the facts, Flo &

Eddie’s “copying claims” fail because “the ultimate use of the internal copies is

permissible.” Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 849 F.3d 14, 16-17 (2d

Cir. 2017) (citation omitted). And we agree with the district court’s decision in

this case to dismiss Flo & Eddie’s reproduction claims. Flo & Eddie, 2015 WL

3852692, at *6. Finding for Flo & Eddie on this question would require this Court


                                        - 31 -
to, among other things, ignore the fact that for the past four decades, Florida’s

record piracy statute—albeit a criminal one—has contained a specific exception

for copies made “in connection with, or as part of” radio broadcast transmissions.

See § 540.11(6)(a), Fla. Stat. (2017).17 Again, we decline to ignore the relevant

history. We therefore answer the third certified question in the negative.

      The Eleventh Circuit also certified the following question related to other

causes of action asserted by Flo & Eddie:

      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?

Flo & Eddie, 827 F.3d at 1025. We answer this question in the negative. Because

Flo & Eddie cannot show that the asserted common law property rights both exist

under Florida law and were violated, Flo & Eddie’s remaining causes of action

necessarily fail. We agree with the district court’s decision in this case to

summarily dismiss Flo & Eddie’s remaining claims as being “without merit”

because the claims were “all based on [the] alleged common law copyright.” Flo

& Eddie, 2015 WL 3852692, at *6. And we agree with the Second Circuit’s




       17. It does not appear to be in dispute that Sirius is a radio broadcaster,
albeit a digital/satellite one.


                                         - 32 -
conclusion in Flo & Eddie’s related lawsuit that the answer to the certified question

involving public performance rights was determinative of all claims. Flo & Eddie,

849 F.3d at 16-17.18

                               III. CONCLUSION

      For the reasons explained above, we combine and rephrase the first two

questions certified by the Eleventh Circuit into a single determinative question and

hold that Florida common law does not recognize an exclusive right of public

performance in pre-1972 sound recordings. And we address the remaining

certified questions by concluding that Flo & Eddie’s remaining claims fail under

Florida law. Having answered the certified questions, we return this case to the

Eleventh Circuit Court of Appeals.




       18. Flo & Eddie’s remaining claims are also problematic for other reasons.
For example, as to Flo & Eddie’s claim for statutory civil theft, section 772.11(1),
Florida Statutes, provides a cause of action for treble damages and for reasonable
attorney’s fees for “[a]ny person who proves by clear and convincing evidence that
he or she has been injured in any fashion by reason of any violation of [section
812.014].” Section 812.014, itself, is a criminal theft statute. While the civil
remedy set forth in section 772.11(1) only requires a “clear and convincing”
evidence standard, the underlying cause of action is predicated on conduct that
violates a criminal statute. See Gasparini v. Pordomingo, 972 So. 2d 1053, 1056
(Fla. 3d DCA 2008) (“To establish a claim for civil theft, a party must prove that a
conversion has taken place and that the accused party acted with criminal intent.”).
Again, Florida has a criminal record piracy statute that expressly excepts copies
made “in connection with, or as part of” radio broadcast transmissions.
§ 540.11(6)(a), Fla. Stat. To use an entirely different criminal statute as the basis
for imposing civil liability for the same conduct would be illogical.


                                       - 33 -
      It is so ordered.

LABARGA, C.J., and PARIENTE, QUINCE, POLSTON, and LAWSON, JJ.,
concur.
LEWIS, J., concurs in result.

NOT FINAL UNTIL TIME EXPIRES TO FILE REHEARING MOTION AND,
IF FILED, DETERMINED.

Certified Question of Law from the United States Court of Appeals for the
Eleventh Circuit – Case No. 15-13100

Angel 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

David 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

Julee 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 Florida
      Bar

Lisa 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


                                      - 34 -
Dineen 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, Inc.

Daniel A. Bushell of Bushell Law, P.A., Fort Lauderdale, Florida,

      Amicus Curiae Copyright and Intellectual Property Law Professors




                                      - 35 -
