Karen Kidd Jul. 13, 2016, 11:20am


WEST PALM BEACH – More litigation could be triggered based on what the Florida Supreme Court decides about pre-1972 sound recordings in the state, a patent and trademark attorney and blogger said during a recent interview.

It isn't just who owns what, John Rizvi of Gold & Rizvi said during a Florida Record email interview.

 "Given the rise of satellite as opposed to local radio broadcast and the popularity of pre-1972 oldies, Flo & Eddie Inc. v. Sirius XM Radio Inc. holds at stake not only the rights of owners of pre-1972 sound recordings within the state of Florida, but also the potential for forum shopping among litigants if Florida creates law that is inconsistent with the statutory and common law protections afforded to such sound recordings in other states," Rizvi said.

Rizvi is known online as the Patent Professor who maintains a regular blog by the same name.

Former members of the band Turtles of "Happy Together" fame, Mark Volman and Howard Kaylan, are challenging the long-held assumption that radio broadcasters don't have to pay royalties to owners of sound recordings made before Feb. 15, 1972. The Federal Copyright Act of 1976 provides protections for rights over original musical works, including sound recordings and compositions from that date. Even older legislation, dating back to 1897, provides broad federal protections for musical compositions but, being in the pre-sound era, doesn't much address sound recording.

In 2013, Volman and Kaylan, incorporated as “Flo & Eddie," filed lawsuits in multiple states against the U.S. broadcasting company SiriusXM, seeking protection for their pre-1972 sound recordings. Flo & Eddie claim their work enjoys common law copyrights and they should be suitably compensated.

Courts in California and New York found in favor of Flo & Eddie but the U.S. District Court for Florida's Southern District found in June of last year that no specific legislation in the state covers sound recording property rights.

On appeal, the 11th Circuit Court of Appeals decided on June 29 to ask the state Supreme Court to decide if Florida recognizes common law copyright. Glazer v. Hoffman, a 1943 landmark magician's case in which the Florida Supreme Court ruled that trademark rights to a name in the case enjoys protections but the entertainment act itself does not.

"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," the appeals court said. "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 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."

On its face, the Supreme Court is considering Flo & Eddie's specific right, Rizvi said.

"On a case-specific level, at stake in this case is Flo & Eddie’s right to damages for Sirius’ unauthorized public performance of pre-1972 sound recordings by The Turtles, its unauthorized reproduction of the sound recordings onto its own libraries and databases of music including buffer copies, and its distribution of the sound recordings by providing copies of its databases to third parties," he said.

Flo & Eddie licenses others to use their recordings in various media, Rizvi said.

"Sirius XMRadio broadcasts songs by The Turtles and maintains backups of those songs on its libraries and databases without authorization by Flo & Eddie," he said. "Sirius asserts that Flo & Eddie has no exclusive right to public performance of the sound recordings and that Flo & Eddie lost any common law copyright protection to the works over 40 years ago when the sound recordings were first published."

While Florida has no statute nor common law addressing sound recording protection, there is common law protection in the state for musical compositions, though such protection is lost upon publication, Rizvi said.

"If the Florida courts find in favor of Flo & Eddie, they will be creating exclusive rights to sound recordings in Florida," he said. "This case stands for the exclusive rights in pre-1972 sound recordings in the state of Florida."

Finding in favor of Flo & Eddie arguably would bring Florida into line with the federal Sound Recording Act of 1971, as well as statutes and case law of other states, Rizvi said.

"Creating new rights will undoubtedly raise new issues," he said. "For this reason, the trial court, the District Court for the Southern District of Florida, stated that the Florida legislature is in the best position to address these issues."

However, courts are reluctant to create new law, Rizvi said.

"They are charged with interpreting and enforcing the law, not making it," he said. "It will be of interest to see if the Florida Supreme Court addresses the void or forces the legislature to make law."

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