Gregory Garre
Gregory Garre (Photo: Diego M. Radzinschi/ALM)

The U.S. Court of Appeals for the Ninth Circuit is asking the California Supreme Court for help in deciding a copyright dispute over pre-1972 sound recordings.

Following the lead of the Second and Eleventh circuits, a Ninth Circuit panel on Wednesday asked the state’s highest court to weigh in on California copyright law. The panel asked for guidance on both statutory and common law.

“We agree with our sister circuits that certification is the best way to proceed on these issues, especially in California,” a panel comprising Judges Stephen Reinhardt, Richard Paez and visiting Judge Paul Friedman of the District of Columbia stated in a per curiam order. “As an incubator of both musical talent and technological innovation, California has a significant interest in the appropriate resolution of the certified questions.”

The California Supreme Court isn’t obliged to take up the case, but the Ninth Circuit is making a hard sell: The court promised that a Supreme Court decision would resolve not only the anti-SLAPP motion presently on appeal, but the underlying claims being litigated by Flo & Eddie Inc. against Pandora Media Inc.

Flo & Eddie is a corporation formed by Mark Kolman and Howard Kaylan, the two surviving members of the 1960s-era band The Turtles. They’ve been pursuing royalties for Turtles music from Pandora and Sirius XM Radio Inc. in various federal courts around the country.

The outcome of the Ninth Circuit case, Flo & Eddie v. Pandora Media, could also affect a $99 million class action settlement with Sirius that is contingent on various appellate outcomes.

When The Turtles were singing “Happy Together” and “You Baby,” federal copyright law made no mention of sound recordings. The California Civil Code, however, granted the author of compositions “an exclusive ownership in the representation or expression thereof.” It also disclaimed any common-law copyrights in published works.

After federal copyright law expanded in 1978 to include the public performance of sound recordings made after 1972, the California Legislature responded by granting authors “exclusive ownership” of pre-1972 recordings. At the same time, the Legislature repealed the provision disclaiming common-law copyrights.

U.S. District Judge Philip Gutierrez of Los Angeles concluded that this “broadly protective statutory scheme is consistent with a legislative intent to maintain rights and remedies in pre-1972 sound recordings.”

The Ninth Circuit said it’s not crystal clear that “exclusive ownership” means the right to exclude all unauthorized uses. “There is no precedent, much less controlling precedent, from either the California appellate courts or the California Supreme Court to guide our court’s inquiry,” the court stated. The court further noted that a New York district court decision favoring Flo & Eddie was reversed after the Second Circuit certified the case to the state’s highest court.

Specifically, the Ninth Circuit asked the California Supreme Court to clarify whether California Civil Code §980(a)(2) or state common law provide an exclusive right of public performance. If the answer to either question is yes, the court added, “the district court’s ruling must be affirmed, and Flo & Eddie’s claims granted,” the court stated.

Latham & Watkins partner Gregory Garre argued the appeal for Pandora. Gradstein & Marzano partner Henry Gradstein argued for Flo & Eddie.

Contact the reporter at sgraham@alm.com.