Flo & Eddie, Inc. v. Sirius XM Radio, Inc. 1

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15-1164-cv
Flo & Eddie, Inc. v. Sirius XM Radio, Inc.
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UNITED STATES COURT OF APPEALS 2
FOR THE SECOND CIRCUIT 3
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August Term, 2015 5
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Argued: February 2, 2016 7
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Question Certified: April 13, 2016 9
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Certified Question Answered: December 20, 2016 11
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Decided: February 16, 2017 13
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Docket No. 15-1164-cv 15
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FLO & EDDIE, INC., a California Corporation, 18
individually and on behalf of all others similarly situated, 19
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Plaintiff-Appellee, 21
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– v. – 23
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SIRIUS XM RADIO, INC., a Delaware Corporation, 25
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Defendant-Appellant, 27
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DOES, 1 THROUGH 10, 29
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Defendants. 31
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Before: C ALABRESI , C HIN, and C ARNEY , Circuit Judges. 34
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Defendant-Appellant Sirius XM Radio, Inc., appeals from the November 14, 2014 36
and December 12, 2014 orders of the United States District Court for the Southern District 37
of New York (McMahon, J.) denying its motions, respectively, for summary judgment and 38
for reconsideration in connection with Plaintiff-Appellee Flo & Eddie, Inc.’s copyright 39
infringement suit. Flo & Eddie, Inc. v. Sirius XM Radio, Inc., No. 13-cv-5784 (CM), 2014 WL 40
7178134 (S.D.N.Y. Dec. 12, 2014) (denial of motion for reconsideration); Flo & Eddie, Inc. v. 41
Sirius XM Radio, Inc., 62 F. Supp. 3d 325 (S.D.N.Y. 2014) (denial of motion for summary 42
judgment). We previously concluded that the appeal raised a significant and unresolved 43
issue of New York law that is determinative of this appeal: Is there a right of public 44

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performance for creators of pre-1972 sound recordings under New York law and, if so, what 1
is the nature and scope of that right? 2
We certified this question to the New York Court of Appeals. Flo & Eddie, Inc. v. 3
Sirius XM Radio, Inc., 821 F.3d 265 (2d Cir. 2016). The Court of Appeals accepted 4
certification and responded that New York common law does not recognize a right of public 5
performance for creators of pre-1972 sound recordings. Flo & Eddie, Inc. v. Sirius XM Radio, 6
Inc., 2016 WL 7349183 (N.Y. Dec. 20, 2016). 7
In light of this ruling, we REVERSE the district court’s denial of Appellant’s motion 8
for summary judgment and REMAND with instructions to grant Appellant’s motion for 9
summary judgment and to dismiss the case with prejudice. 10
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HARVEY GELLER (Henry Gradstein, Maryann R. 13
Marzano, on the brief), G RADSTEIN & M ARZANO , P.C., 14
Los Angeles, CA; (Evan S. Cohen, on the brief), Los 15
Angeles, CA; Michael Gervais, Arun S. Subramanian, 16
SUSMAN G ODFREY LLP, New York, NY; Robert 17
Rimberg, G OLDBERG R IMBERG & WEG PLLC, for 18
Plaintiff-Appellee 19
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DANIEL M. PETROCELLI (Cassandra L. Seto, on the 21
brief), O’MELVENY & M YERS LLP, Los Angeles, CA; 22
(Johnathan D. Hacker, on the brief), O’M ELVENY & 23
M YERS LLP, Washington, DC; for Defendant-Appellant 24
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BRANDON BUTLER, AMERICAN UNIVERSITY 26
WASHINGTON C OLLEGE OF LAW , Washington, DC, for 27
Amici Curiae Law Professors Gary Pulsinelli, Julie Ross, 28
and Peter Jaszi, in support of Defendant-Appellant 29
30
EUGENE VOLOKH, UCLA SCHOOL OF LAW , Los 31
Angeles, CA, for Amici Curiae Howard Abrams, Brandon 32
Butler, Michael Carrier, Michael Carroll, Ralph 33
Clifford, Brian Frye, William Gallagher, Eric Goldman, 34
James Grimmelmann, Yvette Liebesman, Brian Love, 35
Tyler Ochoa, David Olson, David Post, Michael Risch, 36
Matthew Sag, Rebecca Tushnet, and David Welkowitz, 37
in support of Defendant-Appellant 38
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MITCHELL STOLTZ, VERA RANIERI, Electronic 40
Frontier Foundation, San Francisco, CA, for Amicus 41

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Curiae Electronic Frontier Foundation, in support of 1
Defendant-Appellant 2
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R. BRUCE RICH, BENJAMIN E. MARKS, 4
GREGORY SILBERT, TODD LARSON, KAMI 5
LIZARRAGA, WEIL , G OTSHAL & M ANGES LLP, New 6
York, NY, for Amicus Curiae Pandora Media, Inc., in 7
support of Defendant-Appellant 8
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SHERWIN SIY, JOHN BERGMAYER, RAZA 10
PANJWANI, Public Knowledge, Washington, DC, for 11
Amicus Curiae Public Knowledge, in support of 12
Defendant-Appellant 13
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STEPHEN B. KINNAIRD, PAUL HASTINGS LLP, 15
Washington, DC; RICK KAPLAN, National 16
Association of Broadcasters, Washington, DC; for 17
Amicus Curiae National Association of Broadcasters, in 18
support of Defendant-Appellant 19
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ADAM R. BIALEK, STEPHEN J. BARRETT, 21
WILSON ELSER M OSKOWITZ EDELMAN & D ICKER LLP, 22
New York, NY; DAVID L. DONOVAN, New York 23
State Broadcasters Association, Inc., Albany, NY; for 24
Amicus Curiae New York State Broadcasters Association, 25
Inc., in support of Defendant-Appellant 26
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PER CURIAM: 30
On September 3, 2013, Flo & Eddie, Inc. (“Appellee”), a California corporation that 31
asserts it owns the recordings of “The Turtles,” a well-known rock band with a string of hits 32
in the 1960s, sued Sirius XM Radio, Inc. (“Appellant”), a Delaware corporation that is the 33
largest radio and internet-radio broadcaster in the United States. The suit was brought on 34
behalf of itself and a class of owners of pre-1972 recordings; it asserted claims for common- 35
law copyright infringement and unfair competition under New York law. In particular, 36
Appellee alleged that Appellant infringed Appellee’s copyright in The Turtles’ recordings by 37

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broadcasting and making internal reproductions of the recordings (e.g., library, buffer and 1
cache copies) to facilitate its broadcasts. 2
In due course, Appellant moved for summary judgment on two grounds. Appellant 3
contended first that there is no public-performance right in pre-1972 recordings under New 4
York copyright law, and hence that its internal reproductions of these recordings were 5
permissible fair use. Second, Appellant argued that a state law public performance right, if 6
recognized, would be barred by the Dormant Commerce Clause. On November 14, 2014, 7
the District Court (McMahon, J.) denied this motion. Flo & Eddie, Inc. v. Sirius XM Radio, 8
Inc., 62 F. Supp. 3d 325, 330 (S.D.N.Y. 2014). 9
On the first issue, the court concluded that New York does afford a common-law 10
right of public performance to copyright holders, and that Appellant’s internal reproductions 11
were correspondingly not fair use. Id. at 344-46. On the second issue, the court found that 12
the recognition of a performance right did not implicate the Dormant Commerce Clause. It 13
noted that, pursuant to Sherlock v. Alling, 93 U.S. (3 Otto) 99 (1876), such a right did not 14
constitute a “regulation” of commerce. Flo & Eddie, Inc., 62 F. Supp. 3d at 351–53. 15
Soon after, Appellant, with new counsel, filed a motion for reconsideration of the 16
November 14, 2014 order. In the alternative, it asked the District Court to certify its 17
summary judgment order for interlocutory appeal. The District Court denied Appellant’s 18
motion for reconsideration, Flo & Eddie, Inc. v. Sirius XM Radio, Inc., No. 13-cv-5784, 2014 19
WL 7178134 (S.D.N.Y. Dec. 12, 2014), but did certify both the summary judgment and 20
reconsideration orders for interlocutory appeal, Flo & Eddie, Inc. v. Sirius XM Radio, Inc., No. 21
13-cv-5784, 2015 WL 585641 (S.D.N.Y. Feb. 10, 2015). 22

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Appellant then petitioned us to permit the interlocutory appeal, which we did. Flo & 1
Eddie, Inc. v. Sirius XM Radio, Inc., No. 15-cv-497, 2015 WL 3478159 (2d Cir. May 27, 2
2015). After extensive briefing and oral argument, we concluded that the appeal raised a 3
significant and unresolved issue of New York law that is determinative of this appeal: Is 4
there a right of public performance for creators of pre-1972 sound recordings under New 5
York law and, if so, what is the nature and scope of that right? 6
Accordingly, we certified this question to the New York Court of Appeals. Flo & 7
Eddie, Inc., 821 F.3d 265. The Court of Appeals accepted certification, and on December 8
20, 2016, responded that New York common law does not recognize a right of public 9
performance for creators of pre-1972 sound recordings. Flo & Eddie, Inc. v. Sirius XM Radio, 10
Inc., 2016 WL 7349183 (N.Y. Dec. 20, 2016). 11
Following the Court of Appeals’ answer, we ordered the parties to submit letter briefs 12
addressing the effect of the Court of Appeals’ decision on the appeal before this court. In its 13
letter brief, Appellee argued that the Court of Appeals “did not resolve [Appellant’s] liability 14
for unauthorized copying of [Appellee’s] recordings and engaging in unfair competition by 15
publicly performing those copies for profit, which the District Court had identified as 16
separate and independent grounds for finding [Appellant] liable.” Letter Brief for Appellee, 17
Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 821 F.3d 265 (2d Cir. 2016) (No. 15-1164), ECF 18
No. 215. 19
In our opinion certifying the question to the Court of Appeals, however, we noted 20
and held that 21
The fair-use analysis applicable to this copying . . . is bound up 22
with whether the ultimate use of the internal copies is 23
permissible. As a result, the certified question is determinative of 24
Appellee’s copying claims . . . . Similarly, Appellee’s unfair- 25

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competition claim depends upon the resolution of the certified 1
question. 2
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Flo & Eddie, Inc., 821 F.3d at 270 n.4 (emphasis added). 4
The answer to the certified question being determinative of the other claims, we 5
REVERSE the district court’s denial of Appellant’s motion for summary judgment and 6
REMAND to that court with instructions to grant Appellant’s motion for summary 7
judgment and to dismiss the case with prejudice. 8

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