Bloomberg BNA’s Patent Trademark & Copyright Law Daily™is the IP industry’s premier news service, offering objective, timely,and reliable daily news coverage and commentary from leading IP law...
June 9 — A California litigation piece of ongoing battles between the holders of rights in the Turtles' 1960s hit records and the operator of Sirius XM satellite radio should be stayed, the U.S. District Court for the Central District of California ruled June 8.
The court granted the stay after finding that the U.S. Court of Appeals for the Ninth Circuit has not expressly set forth a rule regarding whether a plaintiff can get a class certified after it has already won a judgment.
The Turtles were a 1960s pop music group that had several hits, notably “Happy Together.” The Turtles' founders transferred their rights in the recordings to an entity called Flo & Eddie Inc.
Flo & Eddie brought an action against Sirius XM Radio Inc, the operator of the Sirius XM satellite radio service, alleging that its use of Turtles recordings without paying royalties was a violation of Cal. Civ. Code §980(a)(2), which states that the author of an original sound recording made before Feb. 15, 1972, has exclusive ownership.
Pre-1972 sound recordings are not protected under the federal Copyright Act of 1976 and have thus far been subject to protection under state laws.
Sirius XM argued that because the recordings were not subject to the Copyright Act, that they had no obligation to seek authorization to use them or to pay royalties.
In September, the California court ruled that Sirius XM was liable for broadcasting and streaming the Turtles' recordings.
This was followed by a ruling in January, which said that if Flo & Eddie wanted to go it alone, then it would win summary judgment on the question of liability. But Flo & Eddie chose instead to try to convert the action to a class action.
On May 28, the court certified the class proposed by Flo & Eddie.
The Turtles are also pursuing similar claims against Pandora Media Inc., the operator of the Pandora Internet music streaming service.
In February, the district court rejected an attempt by Pandora to get the complaint thrown out based on the argument that Flo & Eddie's legal action was an attempt to suppress Pandora's free speech rights.
Flo & Eddie has also sued Sirius XM in New York and the U.S. Court of Appeals for the Second Circuit has given Sirius XM leave to appeal a ruling by the district court that the use of pre-1972 sound recordings are subject to royalties under New York state law.
Back in California, Sirius XM submitted an ex parte application to stay the proceeding in the Central District of California while it sought review of the class certification by the U.S. Court of Appeals for the Ninth Circuit.
The district court granted the stay after determining that Sirius XM had raised “a serious legal issue warranting review by the Ninth Circuit.”
This question was whether, under Ninth Circuit jurisprudence, a court may certify a class action after issuing a judgment in favor of the plaintiff.
The appeals court has not addressed this issue, the district court said, and thus, this was an unsettled question that should be resolved.
The court's ruling was issued by Judge Philip S. Gutierrez.
Flo & Eddie Inc. was represented by Gradstein & Marzano P.C., Los Angeles. Sirius XM was represented by O'Melveny & Myers LLP, Los Angeles.
To contact the reporter on this story: Anandashankar Mazumdar in Washington at firstname.lastname@example.org
To contact the editor responsible for this story: Tony Dutra in Washington at email@example.com
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to firstname.lastname@example.org.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to email@example.com.
Put me on standing order
Notify me when new releases are available (no standing order will be created)