Sirius Gets a Win on CA State Copyright Claims

In Flo & Eddie, Inc. v. Sirius XM Radio, Inc., No. 17-55844 (August 23, 2021) (available here), 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.

Sovereign Immunity Strikes Again

In Canada Hockey LLC v. Texas A&M University Athletic Department, 484 F. Supp. 3d 448 (S.D. Texas 2020) (available here), the Southern District of Texas is presented with an unusual set of facts that presents a now-typical case of sovereign immunity in view of Allen v. Cooper (discussed by SoCal IP Institute previously here). In a short summary of that case, the Supreme Court decided that the Copyright Remedy Clarification Act of 1990 had demonstrated clear intent to abrogate sovereign immunity under Section 5 of the 14th Amendment. However, for that abrogation to comport with general sovereign immunity protections provided to the states, the abrogation must meet the “congruence and proportionality” test whereby the immunity being removed is congruent and proportional to the injury being redressed (e.g. copyright infringement claims against the state). In essence, the court found that the abrogation was too broad in view of the record at Congress in support of that abrogation. So, Congress did not adequately support its power under the Intellectual Property Clause of the Constitution to entirely destroy sovereign immunity for every state for every copyright claim. Accordingly, the CRCA was struck down as unconstitutional, returning the states to sovereign immunity for copyright claims unless and until Congress rectifies this issue. As a result, states can infringe the copyrights of anyone they so desire with virtual impunity.

Returning to Canada Hockey, despite the entity name, it asserts in its complaint that The Texas A&M University Athletic Department (and several other individuals) infringe Michael J. Bynum’s copyright in a non-fiction work he created as a biography of E. King Gill who is the inspiration for the “12th Man” moniker emphasized and applied to the students and supporters of Texas A&M athletics, in particular Texas A&M football. The Texas A&M University Athletic Department is alleged to have copied verbatim the entire first chapter of Mr. Bynum’s then-forthcoming book entitled “An A&M Legend Comes to Life” in 2014 and to have placed it on the 12th Man website, as well as emailed it to tens of thousands of newsletter followers.

Notably absent from the lawsuit’s list of defendants are The State of Texas and Texas A&M University. This was intentional, because the Texas A&M University Athletic Department operates as an independent non-profit organization, separate from the University itself, and because the plaintiff is aware that sovereign immunity should apply. The case is currently on appeal to the 5th Circuit, but the decision linked above provides a good background on the sovereign immunity issue generally, and more specifically to the timeline of this case preceding that appeal.

Mr. Bynum brought suit alleging infringement and the S.D. Tex granted the defendants’ motions to dismiss on all claims except for Mr. Bynum’s claims against one of the individual defendants (who seemingly controlled the associated website/twitter accounts at that time, as well as allegedly directing the copying). The plaintiff sought reconsideration in March of 2019, but the case was stayed pending resolution of Allen v. Cooper. Following that decision, this court confirmed its earlier finding, but ordered additional briefing discussing whether the Eleventh Amendment also barred plaintiff’s takings claims. The court in the decision linked above denied two separate motions for reconsideration, plaintiff’s motion for leave to amend, and granted the defendants’ request to enter final judgment against most defendants.

As a baseline, the court had previously here decided (and confirmed) that The Texas A&M Athletics Department, despite being a non-profit organization, was not the appropriate party. The appropriate party was the university itself. With that decision made, all points turn to sovereign immunity for the university and its staff. In view of Allen v. Cooper, the court found that sovereign immunity barred Mr. Bynum’s copyright claims against the state. Turning to the takings claims under the Eleventh Amendment, the Court found that monetary damages were unavailable and that state law claims had not been exhausted. In that context the various motions were filed and the S.D. Tex made its decisions. On various responsive motions, the Court rendered the decisions below.

Plaintiff’s Due Process Argument

In it’s first motion for reconsideration, plaintiff argued that because its copyright rights had been infringed, and the entire lack of any ability for the plaintiff to obtain relief, his 14th Amendment due process rights had been violated. In support of this claim, the plaintiff pointed to United States v. Georgia, 546 U.S. 151 (2006). Plaintiff essentially argues that if a claim is appropriately pleaded, and there remains no way for redress, that sovereign immunity must be abrogated. The S.D. Tex disagreed, finding that Georgia was limited to its facts, and has only been applied in the context of the ADA for such an argument. The court also again pointed to the Allen case.

Plaintiff’s Takings Argument

The plaintiff also argued that the copyright infringement amounts to a federal taking under the 11th Amendment and that Texas has waived sovereign immunity for such claims. The court “reluctantly” agreed with A&M, finding that federal takings claims are barred based upon Fifth Circuit precedent.

Plaintiff’s Motion to add Texas A&M and two Individual Defendants

Plaintiff sought to amend its complaint very late, 118 days after the court’s dismissal order, to name Texas A&M itself. The court denied the motion as untimely, imposing an “undue burden” on the sole remaining defendant Marquart, and futile in view of the court’s decision on the due process and takings arguments. In addition, the two individuals to be named in the amended complaint were entitled to qualified immunity. The motion was denied.

A&M’s Motion for Judgment

The court granted Texas A&M’s motion for final judgment on the basis that the court lacked jurisdiction to hear the plaintiff’s claims. However, the court believed that Texas state court should have jurisdiction, but may still be barred by sovereign immunity. If that is the case, the S.D. Tex. adopted the position that the appropriate remedy is to seek redress from the legislature or Texas to open their courts for such claims.


Texas A&M won on all claims, a single, individual defendant remains, and the case is presently on appeal, with oral arguments complete, at the 5th Circuit.

Please RSVP to Join the Discussion

All are welcome to attend the SoCal IP Institute program at 1:00 p.m. Pacific time on August 30, 2021 where we will discuss the above. To join the discussion, please RSVP via email to elisham @ (remove the spaces, which have been inserted to thwart spammers) by noon the day of the program to obtain a video conference link. This activity has been approved for one hour of CLE credit.