FLO & EDDIE, INC ., a California corporation, individually v. SIRIUS XM RADIO, INC ., a Delaware corporation

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
FLO & EDDIE, INC ., a California
corporation, individually and on
behalf of all others similarly situated,
Plaintiff-Appellee,
v.
S IRIUS XM R ADIO, INC ., a Delaware
corporation,
Defendant-Appellant.
No. 17-55844
D.C. No.
2:13-cv-05693-
PSG-GJS
OPINION
Appeal from the United States District Court
for the Central District of California
Philip S. Gutierrez, Chief District Judge, Presiding
Argued and Submitted February 8, 2021
Pasadena, California
Filed August 23, 2021
Before: Richard C. Tallman, Consuelo M. Callahan, and
Kenneth K. Lee, Circuit Judges.
Opinion by Judge Lee

-- 1 of 22 --

2 FLO & EDDIE V . S IRIUS XM R ADIO
SUMMARY*
Copyright / California Law
The panel reversed the district court’s grant of partial
summary judgment to Flo & Eddie, Inc. in its action against
Sirius XM satellite radio, seeking royalties for pre-1972
songs that were played on Sirius XM without permission or
compensation.
The complaint alleged a violation of California common
law and statutory copyright law. Flo & Eddie control the
rights to the songs of the rock band the Turtles. Relying on
California’s copyright statute, Cal. Civil Code § 980, Flo &
Eddie argued that California law gave it the “exclusive
ownership” of its pre-1972 songs, including the right of
public performance, which required compensation whenever
their copyrighted recordings were publicly performed.
The panel held that the district court erred in concluding
that “exclusive ownership” under Section 980(a)(2) included
the right of public performance. Without contrary evidence,
the panel presumed that California did not upend the
common law in establishing “exclusive ownership” in the
statute. The panel remanded for entry of judgment
consistent with the terms of the parties’ contingent
settlement agreement.
* This summary constitutes no part of the opinion of the court. It
has been prepared by court staff for the convenience of the reader.

-- 2 of 22 --

FLO & EDDIE V . S IRIUS XM R ADIO 3
COUNSEL
Anton Metlitsky (argued), O’Melveny & Myers LLP, New
York, New York; Jonathan D. Hacker, O’Melveny & Myers
LLP, Washington, D.C.; Daniel M. Petrocelli, Cassandra L.
Seto, and Patrick S. McNally, O’Melveny & Myers LLP,
Los Angeles, California; for Defendant-Appellant.
Kalpana Srinivasan (argued), Steven G. Sklaver, and Rohit
D. Nath, Susman Godfrey LLP, Los Angeles, California;
Stephen E. Morrissey and Rachel S. Black, Susman Godfrey
LLP, Seattle, Washington; Henry D. Goldstein and Maryann
Rose Marzano, Gradstein & Marzano P.C., Los Angeles,
California; for Plaintiff-Appellee.
Joseph C. Gratz, Durie Tangri LLP, San Francisco,
California; Prof. Tyler T. Ochoa, Santa Clara University
School of Law, Santa Clara, California; for Amici Curiae
Copyright and Intellectual Property Law Professors.
Stephen B. Kinnaird, Paul Hastings LLP, Washington, D.C.;
Richard Kaplan, Jerianne Timmerman, and Bijou
Mgbojikwe, National Association of Broadcasters,
Washington, D.C.; for Amicus Curiae National Association
of Broadcasters.
Russell J. Frackman and Hilary E. Feybush, Mitchell
Silberberg & Knupp LLP, Los Angeles, California, for
Amicus Curiae Recording Industry Association of America.

-- 3 of 22 --

4 FLO & EDDIE V . S IRIUS XM R ADIO
OPINION
LEE, Circuit Judge:
When an AM/FM radio station plays a song over the air,
it does not pay public performance royalties to the owner of
the original sound recording. In contrast, digital and satellite
radio providers like Sirius XM must pay public performance
royalties whenever they broadcast post-1972 music. But
until Congress amended the copyright code in 2018, they did
not have to fork over royalties for playing pre-1972 music
under federal law. What remains less clear is whether digital
and satellite radio stations have a duty to pay public
performance royalties for pre-1972 songs under state
copyright law. This patchwork quilt of federal and state
copyright laws, along with statutory distinctions between
terrestrial radio and digital stations, led to a ball of
confusion—and to this longstanding litigation.
At issue in this case is whether California law creates a
right of public performance for owners of pre-1972 sound
recordings. The district court held that SiriusXM must pony
up payments for playing pre-1972 music because California
law grants copyright owners an “exclusive ownership” to the
music. Looking at the individual dictionary definitions of
the words “exclusive” and “ownership,” the district court
gave broad meaning to the phrase “exclusive ownership” and
reasoned that it must include “right of public performance.”
To answer this 21st century question about the
obligations of satellite radio stations, we must rewind back
almost 150 years and look to the common law in the 19th
century when California first used the phrase “exclusive
ownership” in its copyright statute. At that time, no state had
recognized a right of public performance for music, and
California protected only unpublished works. Nothing

-- 4 of 22 --

FLO & EDDIE V . S IRIUS XM R ADIO 5
suggests that California upended this deeply rooted common
law understanding of copyright protection when it used the
word “exclusive ownership” in its copyright statute in 1872.
So we do not construe “exclusive ownership” to include the
right of public performance. We thus reverse the district
court’s partial summary judgment for the plaintiff-appellant
Flo & Eddie.
BACKGROUND
I. The Turtles Sue Sirius XM.
In 1971, Howard Kaylan and Mark Volman—the
founding members of the Turtles—formed Flo & Eddie, Inc.
to control the rights to the band’s songs, including their
iconic anthem, “Happy Together.” Ever since, Flo & Eddie
has licensed the rights to make and sell records, and to use
its music in movies, TV shows, and commercials.
While Flo & Eddie reaps royalties from the Turtles’
songs being played on the big screen and television, it does
not receive performance royalties for airplay on AM/FM
radio. Sound recording owners have no right to receive
royalty for AM/FM airplay under federal law. Until August
2013, Flo & Eddie had not asked Sirius XM to pay for
playing the Turtles’ pre-1972 recordings. Flo & Eddie,
however, apparently had a change of heart and was no longer
content to let it be. It filed a putative class action suit against
Sirius XM, alleging that it had played the Turtles’ music and
other pre-1972 songs without permission or compensation.
The complaint alleged, among other things, a violation of
California common law and statutory copyright law.
Relying on California Civil Code Section 980, Flo & Eddie
argued that California gives it the “exclusive ownership” of
its pre-1972 songs, including the right of public

-- 5 of 22 --

6 FLO & EDDIE V . S IRIUS XM R ADIO
performance, which requires compensation whenever their
copyrighted recordings are publicly performed.
Flo & Eddie also brought parallel suits against Sirius XM
in Florida and New York, arguing that Sirius’ actions
violated the laws of both states. See generally Flo & Eddie,
Inc. v. Sirius XM Radio, Inc., 62 F. Supp. 3d 325 (S.D.N.Y.
2014); Flo & Eddie, Inc. v. Sirius XM Radio, Inc., No. 13
Civ. 5784 (CM), 2015 WL 3852692 (S.D. Fla. June 22,
2015).
II. The Oldies: Common Law Conception of Copyright
To fully understand modern copyright law, we need to
look at its common law origins.
America inherited the fundamental principles of
copyright protection from England. At the time of the
Founding, common law copyright vested a perpetual
monopoly over the initial publication of the creative work
and all later physical reproduction of it. Capitol Records,
Inc. v. Naxos of Am., Inc., 830 N.E.2d 250, 254–55 (N.Y.
2005). Decades later in 1834, Parliament enacted the first
statute extending copyright protections to include a novel
protection for dramatic works, an exclusive performance
right. See Palmer v. De Witt, 47 N.Y. 532, 542 (1872).
Meanwhile, back in the U.S.A., the Supreme Court first
recognized state common law copyright protection for pre-
publication manuscripts in 1834. See Wheaton v. Peters,
33 U.S. (8 Pet.) 591, 657–662 (1834). But the Wheaton
Court refused to extend common law copyright protections
to published works; in fact, it held that publication divested
the work of its copyright. Id. The Court explained that
uniform federal copyright law provided the exclusive means
of securing a limited, rather than perpetual, monopoly for

-- 6 of 22 --

FLO & EDDIE V . S IRIUS XM R ADIO 7
published works. Id. In 1856, Congress adopted
Parliament’s public performance right for published
dramatic works, Act of Aug. 18, 1856, ch. 169, 11 Stat. 138,
which it later incorporated into the 1870 Copyright Act. Ch.
230, 16 Stat. 212. Two years later, California enacted its
first copyright statute, establishing protections for only
unpublished materials. That 1872 statute included the
“exclusive ownership” language at issue in this appeal.
Except for a few amendments over the years, that California
statute has remained in effect ever since. Cal. Civ. Code
§ 980.
As early as 1908, the Supreme Court held that “the
reproduction, through the agency of a phonograph, of the
sounds of musical instruments playing the music composed
and published,” was not the “copy or publication of the same
within the meaning of the [Federal Copyright Act.]’” White-
Smith Music Pub. Co. v. Apollo Co., 209 U.S. 1, 12, 28 S.
Ct. 319, 52 L. Ed. 655 (1908) (citation omitted). And when
Congress enacted a new Copyright Act in 1909, it chose not
to extend performance protections to sound recordings.
California’s statute, however, continued to provide a
perpetual monopoly for unpublished sound recordings. To
sum up, federal law provided limited protection for
published works, while state law offered robust protections
but only for unpublished materials.
But performers and their record labels wanted more.
Despite substantial lobbying efforts, they failed many times.
See generally Kevin Parks, Music and Copyright in
America: Toward the Celestial Jukebox, 101–137 (2012).
Nevertheless, they persisted. In 1971, Congress—
responding to lobbyists’ pleas and the increasing prevalence
of record piracy—finally prohibited “unauthorized

-- 7 of 22 --

8 FLO & EDDIE V . S IRIUS XM R ADIO
duplication and piracy of sound recording[s].” Sound
Recording Amendment, Pub. L. No. 92-140, 85 Stat. 391.
In 1976, Congress started a revolution. It enacted a new
Federal Copyright Act, seeking to wipe out the tenuous
balance between state and federal copyright protection.
17 U.S.C. §§ 101, et seq. The Act abrogated the distinction
between published and unpublished works, so that parties no
longer had to walk the line between state and federal
copyright protections. But there was a catch: The Act did
not apply to sound recordings “fixed” on or before February
14, 1972. 17 U.S.C. § 301(c) (1976). The Act also explicitly
rejected a public performance right for sound recordings.
17 U.S.C. § 114(a) (1976) (“The exclusive rights of the
owner of copyright in a sound recording . . . do not include
any right of performance under section 106(4)”).
Then, in 1982, California amended its own copyright law
to, among other things, remove the now-irrelevant
distinction between pre- and post-publication works. But it
still maintained the “exclusive ownership” language used in
the original 1872 statute.
It was Congress’ turn next to add yet another texture to
the legal wall of sound. In 1995, Congress enacted the
Digital Performance Right in Sound Recordings Act
(“DPRA”). Pub. L. No. 104-39 § 2(3), 109 Stat. 336 (1995).
The DPRA recognized a limited performance right for the
digital audio transmission of post-1972 recordings, requiring
the copyright holders to license their music under a
federalized pricing scheme. 17 U.S.C. § 114 (1995). Put
another way, digital music providers still did not have to pay
public performance royalties for pre-1972 music under
federal law.

-- 8 of 22 --

FLO & EDDIE V . S IRIUS XM R ADIO 9
That brings us to Sirius XM, a leader of the pack among
digital audio transmission companies. It uses a network of
satellites, terrestrial repeaters, command-and-control earth
stations, and the internet to broadcast commercial-free
music, talk radio, and sports to an audience of nearly
26 million subscribers. Its channels often played pre-1972
songs without paying the recording owners, including
15 separate tracks by the Turtles. And in 2013, Flo & Eddie
sued Sirius XM under California’s copyright law, seeking
payment for the broadcast of pre-1972 songs.
III. The Parties Come Together to Settle the Case.
In 2014, the district court granted partial summary
judgment to Flo & Eddie, ruling that sound recording owners
enjoy the right of public performance under California law.
After a brief discussion of the relationship between federal
and state law copyright protections, the district court turned
to the text of California Civil Code Section 980(a)(2):
The author of an original work of authorship
consisting of a sound recording initially fixed
prior to February 15, 1972, has an exclusive
ownership therein until February 15, 2047, as
against all persons except one who
independently makes or duplicates another
sound recording that does not directly or
indirectly recapture the actual sounds fixed in
such recording, but consists entirely of an
independent fixation of other sounds, even
though such sounds imitate or simulate the
sounds contained in the prior sound
recording.
It concluded that “[t]he plain meaning of having ‘exclusive
ownership’ in a sound recording is having the right to use

-- 9 of 22 --

10 FLO & EDDIE V . S IRIUS XM R ADIO
and possess the recording to the exclusion of others.” It
continued that there is “nothing in that phrase to suggest that
the legislature intended to exclude any right or use of the
sound recording from the concept of ‘exclusive ownership.’”
The district court later certified a class of all pre-1972
sound recording owners whose recordings had been
broadcast by Sirius and set the remaining claims for trial.
But before trial, the parties settled. Sirius XM agreed to pay
for past performances of pre-1972 recordings in exchange
for a prospective license to use those recordings until 2028.
Even though the settlement agreement had been signed,
sealed, and delivered, it did not end this case. Under the
settlement, both the royalty rate for future broadcasts of
songs and compensation for past performances could go
higher and higher, depending on the outcome of the appeals
before the Second, Ninth, and Eleventh Circuits. If Flo &
Eddie prevails in any of those three appeals, it will receive
about $5 million more under the settlement agreement. The
district court granted final approval of the settlement and
entered final judgment.
Sirius then timely appealed to this court. Sirius also
successfully sought to stay the appeal pending the resolution
of a related case, Flo & Eddie, Inc. v. Pandora Media, Inc.,
851 F.3d 950, 954 (9th Cir. 2017). In Pandora, the panel
had certified the Section 980(a)(2) question about the
meaning of “exclusive ownership” to the California
Supreme Court. Id. at 954.
In the meantime, Sirius XM scored a series of victories
in the parallel New York and Florida cases. First, on
certification from the Second Circuit, the New York Court
of Appeals held that New York common law had never
recognized a right of public performance for pre-1972 sound
recordings. Flo & Eddie, Inc. v. Sirius XM Radio, Inc.,

-- 10 of 22 --

FLO & EDDIE V . S IRIUS XM R ADIO 11
70 N.E.3d 936, 952 (N.Y. 2016). As a result, the Second
Circuit remanded the New York litigation with instructions
to dismiss the case. Flo & Eddie, Inc. v. Sirius XM Radio
Inc., 849 F.3d 14, 17 (2d Cir. 2017) (per curiam). A year
later, the Florida Supreme Court issued a similar opinion,
also on certification. See Flo & Eddie, Inc. v. Sirius XM
Radio Inc., 229 So. 3d 305, 307 (Fla. 2017). The Eleventh
Circuit then affirmed the district court’s decision in favor of
Sirius. Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 709 F.
App’x 661, 663 (11th Cir. 2018) (per curiam). With these
losses in the Second and Eleventh Circuits, Flo & Eddie has
nowhere to run but to the Ninth Circuit.
A final twist to this case came in 2018 when Congress
enacted a new copyright law, the Music Modernization Act
(“MMA”), amid lobbyists’ shouts for more robust
protections. 17 U.S.C. § 1401(b) (2018). At last, the MMA
extended earlier federal copyright protections to the
prospective digital transmission of pre-1972 recordings. As
a result, the California Supreme Court—after keeping the
parties hanging on for over two years—ultimately dismissed
the certified case. Flo & Eddie, Inc. v. Pandora Media, Inc.,
No. S240649, 2019 WL 5797219, at *1 (Cal. May 22,
2019).1 In January 2020, we lifted the stay for this appeal.
1 This court then held that the MMA preempts “state law claim[s]
arising before the passage of the [MMA] from the digital audio
transmission of . . . pre-1972 [recordings] if the transmitting party meets
certain conditions.” Flo & Eddie, Inc. v. Pandora Media, Inc., 789 F.
App’x 569, 570–71 (9th Cir. 2019). The parties here agree—and we
concur—that the MMA does not preempt the claims because Sirius XM
has not met all the “certain conditions.” Without getting bogged down
river deep into detail, Sirius XM has not yet satisfied one of the
conditions—whether a party has “paid for . . . [the] digital audio
transmission[s] under that agreement” (17 U.S.C. § 1401(e))—because

-- 11 of 22 --

12 FLO & EDDIE V . S IRIUS XM R ADIO
After losses in every other court over the past eight years,
it’s now or never for Flo & Eddie.
JURISDICTION
Jurisdiction properly vested in the district court under the
Class Action Fairness Act, 28 U.S.C. § 1332(d)(2)(A). Flo
& Eddie is a citizen of California, and Sirius XM is a citizen
of New York and Delaware. And the amount in controversy
exceeds $5 million. After the district court entered final
judgment, Sirius XM timely appealed. We thus have
jurisdiction under 28 U.S.C. § 1291.
STANDARD OF REVIEW
We review de novo a district court’s grant of summary
judgment on questions of law. United States v. Phattey,
943 F.3d 1277, 1280 (9th Cir. 2019).
ANALYSIS
The district court erred in concluding that “exclusive
ownership” under Section 980(a)(2) includes the right of
public performance.
We begin, as we must, with the text of the statute. The
statute seems seductively simple: “The author of an original
work of authorship consisting of a sound recording initially
fixed prior to February 15, 1972, has an exclusive ownership
therein until February 15, 2047, as against all persons except
[someone who makes a ‘cover’ recording].” Cal. Civ. Code
§ 980(a)(2).
Sirius may still owe Flo & Eddie another $5 million, depending on the
outcome of this case.

-- 12 of 22 --

FLO & EDDIE V . S IRIUS XM R ADIO 13
The district court started by looking at the individual
dictionary definitions of the words “exclusive” and
“ownership.”2 Then combining these two dictionary
definitions, the district court arrived at a capacious definition
of “exclusive ownership”: the right to “possess and control
[something] and to not share that right to possess and control
with others.” And given this broad and literal definition
established by the court, it held that “exclusive ownership”
of a copyrighted song must include the right of public
performance. That is so because the legislature included
only one exception for those who make cover versions of
songs. Cal. Civ. Code § 980(a)(2) (“cover” exception). And
in applying the expressio unius canon, “[c]ourts should
‘presume the Legislature included all the exceptions it
intended to create.’”
But the district court glossed over an alternative—and
more compelling—way to analyze the statutory text.
Dictionaries and tools of grammatical construction can help
determine plain meaning of specific words, but some phrases
have a separate or more specialized “term of art” meaning
that cannot be stripped away from its historical context or
subject matter area. See Antonin Scalia & Bryan Garner,
Reading Law: The Interpretation of Legal Texts 73 (2012)
(“Sometimes context indicates that a technical meaning
applies. Every field of serious endeavor develops its own
nomenclature—sometime referred to as terms of art . . . .
And when the law is the subject, ordinary legal meaning is
to be expected, which often differs from common
2 Even if we relied solely on dictionaries, we would not look at a
dictionary from 2011 to interpret the text of a statute written in 1982
because often a change is going to come eventually.

-- 13 of 22 --

14 FLO & EDDIE V . S IRIUS XM R ADIO
meaning”).3 In short, literalism is not necessarily
textualism. See Antonin Scalia, A Matter of Interpretation:
Federal Courts and the Law 24 (1997) (“the good textualist
is not a literalist”); Bostock v. Clayton Cnty., 140 S. Ct. 1731,
1766 (2020) (Alito, J., dissenting) (“textualists . . . do not
confine their inquiry to the scrutiny of dictionaries”).4
Critically here, the term “exclusive ownership” retains a
historical meaning that predates the Federal Copyright Act
and differs from the modern dictionary’s definitions of those
two separate words. See Brief for Law Professors as Amici
Curiae Supporting Defendant-Appellant at 7, Flo & Eddie
Inc. v. Sirius XM Radio, Inc., No. 17-55844 (9th Cir. July 1,
2020). The California Civil Code’s use of “exclusive
ownership” dates to 1872 when the state first adopted it. So,
“when textualism is properly understood, it calls for an
examination of the social context in which a statute was
enacted because this may have an important bearing on what
its words were understood to mean at the time of enactment.
3 Cf. United States v. Verdugo-Urquidez, 494 U.S. 259, 265 110 S.
Ct. 1056, 108 L. Ed. 2d 222 (1990) (analyzing the Constitution’s phrase
“the people” in the Fourth Amendment context and concluding that it
“seems to have been a term of art employed in select parts of the
Constitution.”); John F. Stinneford, The Original Meaning of
“Unusual”: The Eighth Amendment as a Bar to Cruel Innovation,
102 N W. U. L. REV. 1739, 1767–1819 (2008) (describing how the
common law meaning of an “unusual” punishment evolved, developing
unique legal connotations, from its early 17th century uses in England
through early American case law).
4 In our certification order to the California Supreme Court, we also
noted that Section 980 “does not establish what ‘ownership’ rights are
included in the first instance.” Pandora, 851 F.3d at 956. Put differently,
the phrase “exclusive ownership” does not really answer what rights fall
within that “ownership.” As explained below, the common law in the
19th century clarifies what rights are protected.

-- 14 of 22 --

FLO & EDDIE V . S IRIUS XM R ADIO 15
Textualists do not read statutes as if they were messages
picked up by a powerful radio telescope from a distant and
utterly unknown civilization.” Bostock, 140 S. Ct. at 1767
(Alito, J., dissenting). We thus need to examine the
understanding of the phrase “exclusive ownership” under the
common law in 1872. And as explained below, the
difference between the literal and context-specific
definitions of “exclusive ownership” is night and day.
A. The common law meaning of “exclusive ownership”
in 1872 did not include the right of public
performance.
California’s courts did not start deciding cases on a blank
slate. Nor did the California legislature draft a copyright
statute based on just its imagination running away. Rather,
they inherited the common law tradition. English law, at
least before the Founding, remained relatively silent on
public performance rights for songs. But we can learn much
from the sound of silence.
Between the 1834 decision restricting common law
copyright to unpublished works and California’s first
statutory copyright protection enacted in 1872, state courts
outside of California heard a handful of cases about common
law copyright and public performance. See Jessica Litman,
The Invention of Common Law Play Right, 25 Berkeley
Tech. L.J. 1381, 1403–10 (2010). And these cases largely
rejected the existence of a common law public performance
right, at least in cases involving published dramatic works.5
5 See. e.g., Keene v. Kimball, 82 Mass. (16 Gray) 545, 552 (1860)
(concluding that public performance of a dramatic work from memory
did not constitute copying or publishing prohibited by the common law);

-- 15 of 22 --

16 FLO & EDDIE V . S IRIUS XM R ADIO
Put another way, no court as of 1872 had recognized the
right of public performance under any nascent understanding
of copyright law. So when California first enacted its
copyright statute in 1872, the term “exclusive ownership”
almost certainly did not include a right of public
performance. Rather, “exclusive ownership” referred, and
still refers, to the owner’s common law copyright in an
unpublished work to reproduce and sell copies of that work.
See RCA Mfg. Co. v. Whiteman, 114 F.2d 86, 88 (2d Cir.
1940) (Hand, J.), cert. denied, 311 U.S. 712 (1940)
(collecting cases).
Little changed even decades after 1872. Only one state,
Pennsylvania, ever changed its tune. But see Wheatley, 14 F.
Cas. at 185. In Waring v. WDAS Broadcasting Station, the
Pennsylvania Supreme Court held that its common law
protected an exclusive performance right. 194 A. 631, 638
(Pa. 1937). Following Pennsylvania’s lead, a district court
in North Carolina created a similar common law right.
Waring v. Dunlea, 26 F. Supp. 338, 340 (E.D.N.C. 1939).
But the North Carolina legislature immediately passed a law
disclaiming public performance rights, leaving Pennsylvania
alone again. N.C. Gen. Stat. Ann. § 66-28. Florida and
South Carolina soon passed similar statutes as well. S.C.
Code Ann. § 39-3-510; Fl. St. §§ 543.02, 03 (repealed); see
also Flo & Eddie, 229 So. 3d at 317 (“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”). Of
Keene v. Wheatley, 14 F. Cas. 180, 185 (C.C.E.D. Pa. 1861) (No. 7,644)
(recognizing that, absent “any legislation for the special protection of
dramatic literary property, an authorized public circulation of a printed
copy of a drama . . . is a publication which legalizes an optional
subsequent theatrical representation by anybody from such copy”).

-- 16 of 22 --

FLO & EDDIE V . S IRIUS XM R ADIO 17
all the states in the union, only the lonely state of
Pennsylvania in 1937 recognized a common law right of
public performance. In short, the common law meaning of
“exclusive ownership” in the copyright context—before and
after 1872—generally did not refer to a right of public
performance.
The case against a right of public performance becomes
even stronger when we examine New York law. Section
980(a)(2) is not an example of California dreaming up a
radical new copyright scheme. Rather, New York’s Civil
Code, drafted by David Dudley Field, served as the template
for California’s law. With New York on its mind and a little
help from its friends in the Empire State, California adopted
a similar copyright law, including what we now know as
Section 980. See Law Professors Amici Br. 10 n.7. Section
983 of California’s 1872 code—a word-for-word facsimile
of Field’s proposed § 432 in New York—divested any
author of his or her “exclusive ownership” upon intentional
publication of the protected work. 1 Civil Code of the State
of New York 130–131 (1865). In other words, “exclusive
ownership” in New York, and by extension in California as
well, encompassed only those few pre-publication common
law copyright protections recognized by the state at that
time.
The Second Circuit affirmed that limited common law
understanding of “exclusive ownership,” holding that New
York common law did not recognize a copyright holder’s
right to control post-sale public performance of a sound
recording. Whiteman, 114 F.2d at 89. And more recently,
the New York Court of Appeals—hearing a certified
question from the Second Circuit in a suit parallel to ours—
issued a sound decision, ruling that “common-law copyright
protection prevents only the unauthorized reproduction of

-- 17 of 22 --

18 FLO & EDDIE V . S IRIUS XM R ADIO
the copyrighted work, but permits a purchaser to use copies
of sound recordings for their intended purpose, namely, to
play them.” Flo & Eddie, Inc., 70 N.E.3d at 947.
Flo & Eddie tries to distinguish Waring by arguing that,
unlike New York, California’s post-1872 common law came
to recognize a pre-publication right of public performance
for dramatic works and screenplays. Of course, the
California Supreme Court has recognized that “apart from
statute the law recognizes certain rights of property in the
original intellectual products of an author, which are entitled
to the same protection as rights in any other species of
property; that the author has the right of first publication and
that such right is transferable.” Loew’s Inc. v. Superior Ct.
of Los Angeles Cnty., 115 P.2d 983, 984 (Cal. 1941).6
But the key to understanding these cases lies in the
historical discrepancy between state common law copyright
for non-published works and federal statutory copyright for
published works. The California courts in Goldmark and
French dealt with dramatic works that did not (in the courts’
view) constitute “published” works. Common law provides
a perpetual copyright for unpublished works, but Congress
alone determines the length of a monopoly for published
6 See also Goldmark v. Kreling, 25 F. 349, 351 (C.C.D. Cal. 1885)
(recognizing an exclusive right to produce an unpublished opera, and
noting that “[t]here is also . . . great force in the suggestion that the
owner, as in this case, of a play or opera, or other property not protected
by patent or a copyright, is entitled to select his licensee”); French v.
Kreling, 63 F. 621, 623 (C.C.N.D. Cal. 1894) (concluding that “[t]he law
protecting the rights of authors in their compositions, literary and
musical, where they have not been dedicated to the public, or published
with the author’s consent, is well established”).

-- 18 of 22 --

FLO & EDDIE V . S IRIUS XM R ADIO 19
works.7 Third-party performances of works not sufficiently
“published” violated the author’s exclusive right to
publication under state copyright law. But, except for
Pennsylvania’s frolic, sale has always constituted
“publication.” For example, after selling a manuscript, the
original owner cannot restrict the purchasers’ performances
because courts construe them as impermissible restraints on
alienation. See Whiteman, 114 F.2d at 88 (collecting cases).
Of course, Flo & Eddie and its amici contest this
interpretation. But they fail to direct us to a single case in
which a court recognized a discrete property interest in the
post-sale performance of a sound recording. In fact, every
relevant case that Flo & Eddie and its amici cite implicate
performance rights solely in the context of unauthorized
reproductions of post-publication sound recordings. These
cases distinguish between protections from post-sale
copying and post-sale performance. And when a
defendant’s reproduction of the content violates recognized
property rights, such as first publication or reproduction,
then courts recognize a misappropriation or conversion. See,
e.g., Int’l News Serv. v. Associated Press, 248 U.S. 215, 39
S. Ct. 68, 63 L. Ed. 211 (1918).
The common thread tying International News together
with Flo & Eddie’s other cited authorities8 is that the
7 The Federal Copyright Act of 1976 and DPRA create notable
exceptions.
8 See A & M Records, Inc. v. Heilman, 142 Cal. Rptr. 390, 394 (Cal.
Ct. App. 1977) (defendant “admitted advertising and selling record and
tape ‘albums’ which included performances of songs duplicated from
recordings manufactured by A & M Records without making payments
to A & M Records or to any of the musicians involved”); Capitol
Records, Inc. v. Erickson, 82 Cal. Rptr. 798, 799 (Cal. Ct. App. 1969)

-- 19 of 22 --

20 FLO & EDDIE V . S IRIUS XM R ADIO
defendants there engaged in direct competition for the same
body of potential customers, physically copied plaintiffs’
work, and violated their other rights by usurping business
opportunities. In contrast, Sirius does not buy, reproduce, or
resell Flo & Eddie’s master records. Nor can it reasonably
be seen as competing with Flo & Eddie for the sale of a
sound recording performance. A customer interested in
hearing the Turtles’ magnum opus “Happy Together,” or
even their entire discography, cannot simply queue it up on
a Sirius XM channel.
B. Without contrary evidence, we must presume that
California did not upend the common law in
establishing “exclusive ownership” in the statute.
Flo & Eddie suggests that we need not bother with the
1872 common law understanding of “exclusive ownership”
because that was yesterday. We should instead look at
California’s modern 1982 version of Section 980. But the
statute’s use of the term “exclusive ownership” has remained
unchanged for almost a century-and-half, despite the
legislature’s three amendments to the statute in 1947, 1949,
and 1982. We see no textual reason to believe that the
(defendant “purchase[d] on the open market records and tapes of musical
performances which have been produced, recorded, and sold by Capitol
. . . then [made] ‘master’ recordings from the records and tapes . . . and
used the master recordings to produce tape cartridges which it [sold] to
the general public”). Flo & Eddie also refers us to Capitol Records, LLC
v. BlueBeat, Inc., 765 F. Supp. 2d 1198 (C.D. Cal. 2010). But BlueBeat
only says that “publication of a protected work does not strip protectable
and actionable ownership rights” under Section 980(a)(2), and thus that
a party still has standing to sue for unfair competition claims. Id. at 1206.
Further, because Flo & Eddie fails to demonstrate that California
common law recognizes a right of public performance, its claims for
misappropriation and conversion based on that alleged common law
right necessarily also fail.

-- 20 of 22 --

FLO & EDDIE V . S IRIUS XM R ADIO 21
California legislature retained the same statutory language
yet altered the original meaning of “exclusive ownership” as
it existed in 1872.9
And under California law, “statutes are not presumed to
alter the common law unless expressly stated.” Borg-
Warner Protective Servs. Corp. v. Superior Ct., 89 Cal. Rptr.
2d 687, 689 (Cal. Ct. App. 1999) (citing Saala v. McFarland,
45 Cal. Rptr. 144, 148 (Cal. 1965)) (emphasis added). Thus,
if “exclusive ownership” under California’s common law in
1872 did not include the right of public performance, then
that original meaning of “exclusive ownership” remains the
only legal meaning unless the California legislature
expressly changed it. Flo & Eddie does not point to any
evidence suggesting that the California legislature intended
to upend the common law understanding of “exclusive
ownership” when it enacted its first copyright statute in
1872.
The district court declined to apply this canon of
construction, pointing out that no California decision has
expressly rejected a right of public performance. Of course,
there is no California decision recognizing that common law
right, either. Indeed, no state other than Pennsylvania has
ever recognized one. In short, the lack of a judicially
recognized right of public performance across dozens of
9 Rather, we draw the opposite presumption. The legislature merely
reiterated what it had said for 110 years before. See Norman J. Singer &
Shambie Singer, SUTHERLAND STATUTES AND STATUTORY
CONSTRUCTION, § 22:33 (7th ed. 2020); Bakersfield Energy Partners,
LP v. Comm’r of Internal Revenue, 568 F.3d 767, 775 (9th Cir. 2009).

-- 21 of 22 --

22 FLO & EDDIE V . S IRIUS XM R ADIO
states underscores that no such right ever existed under the
common law.10
CONCLUSION
We REVERSE the district court’s grant of partial
summary judgment, and REMAND for entry of judgment
consistent with the terms of the parties’ contingent
settlement agreement.
10 Because we reverse the district court’s grant of summary
judgment on § 980(a), we need not determine whether it erred by
concluding that California’s law does not violate the Dormant
Commerce Clause.

-- 22 of 22 --