Pre-1972 Sound Recording Litigation: The Beat Goes On

Flo and Eddie, still on a roll in New York, face a decision; meanwhile, a new plaintiff surfaces in California

For those of you awaiting the next installment of "Flo and Eddie Get Sirius", we have some news. Recall that last November, the former Turtles were oh-so-close to getting a judgment against Sirius XM in the New York version of their fight to collect for infringements of Flo and Eddie-owned copyrights covering a number of pre-1972 sound recordings. The only thing that stood between them and a favorable judgment was Judge Colleen McMahon's invitation (actually, it was an order) to Sirius XM to show cause why judgment shouldn't issue.

As we expected, Sirius XM came up with a number of arguments, none of which struck paydirt. It claimed that the plaintiff corporation, Flo and Eddie, Inc., didn't really own the copyrighted works at issue - a claim Judge McMahon rejected. Sirius XM's argument was based on the notion that, while Howard Kaylan and Mark Volman (who used the noms de disque Eddie and Phlorescent Leech a/k/a Flo, respectively) clearly held title to the recordings, it wasn't clear that they had formally transferred title to their corporate persona, "Flo and Eddie, Inc." Judge McMahon reviewed the available evidence and was convinced that the corporation held title.

Along the same lines, Sirius XM argued that Flo and Eddie had implicitly authorized the digital transmission of their works by appearing on (and hosting) various Sirius XM shows. Judge McMahon wasn't convinced, mainly because anybody alleging such implied authority has a very high burden to meet (and Sirius XM didn't meet it). Along the same lines Sirius XM claimed that Flo and Eddie had waived any infringement claims or that they should be estopped from raising them. McMahon concluded that this was akin to the "implicit authority" claim and rejected it.

Sirius XM did win a minor victory with respect to the relevant statute of limitations. Sirius XM claimed that the appropriate limit was three years, not six as alleged by Flo and Eddie. Judge McMahon agreed - but that merely reduced the extent of infringement. In other words, Flo and Eddie would still be entitled to damages for infringements within the preceding three years, so this was neither a major win for Sirius XM nor a major setback for Flo and Eddie.

Then came the final point.

Flo and Eddie had indicated that they wanted their case to proceed as a class action, but they hadn't yet formally moved for that status. Sirius XM argued that Judge McMahon could not issue a judgment in favor of Flo and Eddie until she has decided whether class certification is warranted. While the law on that particular point is not as slam-dunk as Sirius XM tried to make it out, Judge McMahon agreed that, ordinarily, issuance of a judgment to a single plaintiff prior to a determination as to class certification is inappropriate. So she gave Flo and Eddie the choice. They can either: (a) opt for class action status, in which case they would have to go through the necessary steps (including class discovery); or (b) notify the court that they wish to proceed individually (i.e., with no class certification), in which case McMahon would presumably issue the judgment in their favor promptly.

This puts Flo and Eddie in an interesting spot. They can take the money and run, leaving to another day the question of whether a class action is appropriate here. Or they can sit tight, run through the class action process and see what happens.

While class certification can be a big issue, that may not necessarily be the case as far as Flo and Eddie are concerned. After all, if they decide not to pursue class action status here, that shouldn't hurt them directly, nor is it likely to hurt others who might otherwise have chosen to participate in a class action had the class been certified. There are certainly going to be plenty of motivated plaintiffs willing to go through the extra few steps of filing their own lawsuit (as opposed to simply joining an existing class of plaintiffs), especially since Flo and Eddie have paved the way. So it wouldn't be a surprise if Flo and Eddie were to decline to pursue class certification in this case.

On the other hand, given their success thus far, Flo and Eddie may prefer to go the class action route. If they are successful in getting the class certified, that could enhance their ability to negotiate a favorable deal for themselves and other class members. And if they don't get a class certified, they can still seek a judgment solely in their own names. It will be interesting to see which way they go.

And speaking of other motivated plaintiffs, let's keep our eye on "Zenbu Magazines", which claims to own the copyrights in songs recorded by The Flying Burrito Brothers, Hot Tuna and the New Riders of the Purple Sage. Zenbu has filed seven separate copyright infringement lawsuits against some of the biggest streaming companies not called "Sirius XM" or "Pandora", specifically Apple's "Beat Electronics", Sony Entertainment, Google, Rdio, Songza, Slacker, and Escape Media Group (owner of the popular service Grooveshark). The suit was filed in the United States District Court for the Southern District of California on January 22.

Stay tuned. This is far from over.