Rupa Marya v. Warner Chappell Music Inc

Filing 146

DECLARATION of MARK C. RIFKIN in support of MOTION for Review of [REDACTED] MOTION FOR REVIEW OF MAGISTRATE JUDGE WILNERS ORDER RE: DISCOVERY MOTION DENYING PLAINTIFFS MOTION TO OVERRULE DEFENDANTS CLAIM OF ATTORNEY-CLIENT PRIVILEGE [FED. R. CIV. P. 72(a); L.R. 72-2.1] 145 [REDACTED] filed by Plaintiffs Good Morning to You Productions Corp, Majar Productions LLC, Rupa Marya, Robert Siegel. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J, # 11 Exhibit K)(Manifold, Betsy)

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 FRANCIS M. GREGOREK (144785) BETSY C. MANIFOLD (182450) RACHELE R. RICKERT (190634) MARISA C. LIVESAY (223247) WOLF HALDENSTEIN ADLER FREEMAN & HERZ LLP 750 B Street, Suite 2770 San Diego, CA 92101 Telephone: 619/239-4599 Facsimile: 619/234-4599 Interim Lead Class Counsel for Plaintiffs and Proposed Class UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA WESTERN DIVISION ) ) ) ) Plaintiffs, ) ) v. ) WARNER/CHAPPELL MUSIC, ) ) INC., et al., ) ) Defendants. ) ) ) ) ) ) ) ) ) GOOD MORNING TO YOU PRODUCTIONS CORP., et al., Lead Case No. CV 13-04460-GHK (MRWx) [ REDACTED] DECLARATION OF MARK C. RIFKIN IN SUPPORT OF PLAINTIFFS’ MOTION FOR REVIEW OF MAGISTRATE JUDGE WILNER’S ORDER RE: DISCOVERY MOTION DENYING PLAINTIFFS’ MOTION TO OVERRULE DEFENDANTS’ CLAIM OF ATTORNEY-CLIENT PRIVILEGE [FED. R. CIV. P. 72(a); L.R. 72-2.1] Date: September 15, 2014 Time: 9:30 A.M. Judge: Hon. George H. King Room: Disc. Cutoff: July 11, 2014 Pretrial Conf.: N/A Trial Date: N/A L/D File Jt. MSJ: 11/14/14 1 I, Mark C. Rifkin, hereby declare as follows: 2 1. I am an attorney duly licensed to practice law in the State of New York, 3 and am admitted before this Court pro hac vice in the above-entitled matter. I am a 4 partner with the law firm Wolf Haldenstein Adler Freeman & Herz LLP, interim lead 5 class counsel for Plaintiffs and the proposed class. I have personal knowledge of the 6 following facts, and if called upon to do so, I could and would competently testify as 7 8 9 10 11 12 13 14 to them. 2. I submit this declaration in support of the motion by plaintiffs Good Morning To You Productions Corp., Robert Siegel, Rupa Marya d/b/a Rupa & The April Fishes, and Majar Productions, LLC’s (“Plaintiffs’”) for review of the Order Re: Discovery Motion (“Order”) of Magistrate Judge Michael R. Wilner filed on July 25, 2014 (Dkt. 132), denying Plaintiffs’ motion to overrule the claim of attorneyclient privilege by Defendants Warner/Chappell Music, Inc. and Summy-Birchard, 15 Inc., in certain documents produced by non-party American Society of Composers, 16 Artists, and Publishers (“ASCAP”). 17 MAGISTRATE JUDGE WILNER’S ORDER 18 3. Plaintiffs sought an order overruling Defendants’ claim of privilege 19 pursuant to Rule 26(b)(5)(B). On July 15, 2014, the parties submitted a Joint 20 Stipulation to Magistrate Judge Wilner (Dkt. No. 123). After some additional 21 discovery on the privilege, both parties submitted supplemental briefs to Magistrate 22 Judge Wilner on July 22, 2014. See Dkt. Nos. 125, 126, 127, and 129 (Plaintiffs); 23 and Dkt. Nos. 128, 130 (Defendants). Magistrate Judge Wilner heard argument on 24 Plaintiffs’ Discovery Motion on an expedited basis on July 25, 2014, and filed the 25 Order later that day. (Dkt. No. 132). A true and correct copy of the July 25, 2014 26 27 Hearing Transcript is attached hereto as Exhibit J. Written notice of the order was served on July 28, 2014 (Dkt. No. 132). This Motion was filed within 14 days of 28 -1- 1 service of the written notice and is timely. See CDCA L.R. 72-2.1. 2 APPLICATION TO FILE UNDER SEAL 3 4. Plaintiffs have concurrently filed an application to file under seal certain 4 confidential exhibits attached to this declaration. 5 below were part of the record before the Magistrate Judge. 6 7 8 9 10 11 12 13 All of the exhibits referenced For the Court’s convenience in reviewing the relevant portions of the record, I have attached the exhibit to this declaration and noted where the exhibit may be found in the record before the Magistrate Judge. The confidential exhibits requested to be filed under seal as part of this Motion were sealed by the Magistrate Judge. See Dkt. 135, 137 and 138. FACTUAL AND PROCEDURAL SUMMARY 5. Plaintiffs seek, inter alia, a declaration pursuant to the Declaratory 14 Judgment Act, 28 U.S.C. §§ 2201-2202, that: (i) Defendants do not own any valid 15 copyright to the song Happy Birthday to You (the “Song”); (ii) any copyright to the 16 Song that Defendants do own is limited in scope to just specific piano arrangements 17 and an obscure second verse; and (iii) the Song itself is dedicated to public use and in 18 the public domain (hereafter “Claim One”). See generally Fourth Amend. Consol. 19 Class Action Compl. (“FAC”) Dkt. 95, filed Apr. 24, 2014 by Dkt. 96. 20 6. The Court has bifurcated Claim One from Plaintiffs’ other claims and 21 the scope of discovery was limited to the issues raised by Claim One only. See 22 Scheduling Conf. and Order Entering Scheduling Dates (Dkt. 92, Mar. 24, 2014) 23 (“Scheduling Order”). The Court initially set the fact discovery deadline for June 27, 24 2014. Id. at 1. ¶ 2. On June 9, 2014, Magistrate Judge Wilner extended the fact 25 26 27 28 discovery deadline to July 11, 2014. Minute Order (Dkt. 106, June 9, 2014). 7. The ownership and origin of the Song and the copyrights that Defendants claim in it are, at best, obscure. Despite more than a century of documented public performances, decades of disputed claims, and the Song’s -2- 1 ubiquity, no court has ever determined whether Defendants (or any of their 2 predecessors-in-interest) own any rights to the Song. Indeed, while the Song has 3 been used and performed innumerable times over the past 80 years without 4 Defendants’ (or their predecessors’) permission, no one has ever been sued for 5 infringing any copyright to the Song. 6 7 8 9 10 11 12 13 8. Defendants (and their predecessors) based their claim of copyright ownership only upon a single copyright, Reg. No. E51990, registered on December 6, 1935. That copyright covered a specific piano arrangement composed as a work for hire by Preston Ware Orem, a director and Vice President of the Clayton F. Summy Co. (one of Defendants’ predecessors-in-interest) (“Summy Co.”). According to the copyright records, the work also included “text.” 9. However, the copyright records do not indicate what “text” was 14 included in the work or who wrote it, and there is no known copy of the work 15 deposited with that registration. 16 17 18 19 20 21 22 23 24 25 26 27 28 . 10. Without that deposit copy, Defendants cannot prove what work was protected by that copyright registration. In any event, copyright Reg. No. E51990 was renewed by Summy Birchard Co. (another one of Defendants’ predecessors-ininterest) on December 6, 1962, under No. R306186. Whatever work the original -3- 1 copyright (No. E51990) may have covered, that copyright expired in 1963. 2 According to the 1962 Catalog of Copyright Entries (“Copyright Catalog”), the 3 official publication of copyright registrations and renewals published by the United 4 States Office of Copyright, the renewal copyright (No. R306186) covers Dr. Orem’s 5 piano arrangement only, not any “text.” See Exhibit B (a true and correct copy of the 6 7 8 9 10 11 12 13 1962 Copyright Catalog). Exhibit B was attached to the Declaration of Betsy C Manifold In Support of Plaintiffs’ Motion for Order for (i) Overruling Defendant’s Claim of Privilege in Documents Produced by a Non-Party, or Permitting a Second Rule 30(b)(6) Deposition to Determine the Factual Basis for that Claim; (ii) Granting Relief from the Discovery Cutoff to Conduct that Deposition [Fed. R. Civ. P. 26(b)(5)(B) & Civ. L.R. 79-5.1]] (“Manifold Declaration”), Dkt. 123-1 as Exhibit 12. 11. Recently, Defendants have begun to rely upon a second copyright, No. 14 E51988, also registered on December 6, 1935. That second copyright covered a 15 different piano arrangement, composed by R.R. Forman, another employee for hire 16 of Summy Co. That work’s copyright claim also included “revised text.” A deposit 17 copy does exist for the work registered under No. E51988, which includes as the 18 “revised text,” an obscure second verse for the Song, apparently written by Mrs. 19 Forman. Copyright No. E51988 was also renewed on December 6, 1962, under No. 20 R306185. And, like copyright No. E51990, the original copyright (No. E51988) also 21 expired in 1963. According to the 1962 Copyright Catalog, renewal copyright No. 22 R306185 was claimed by Summy-Birchard Music, Inc. (by way of change of name 23 from Summy Co.), for Mrs. Forman’s piano arrangement and the “revised text” she 24 apparently wrote. 25 26 27 28 DEPOSITIONS 12. During discovery, Defendants produced two witnesses, Thomas J. Marcotullio, Esquire, and Jeremy Blietz, to testify on their behalf concerning the historical record of their alleged ownership of any copyright to the Song and the -4- 1 scope of those copyrights shrouded in uncertainty. 2 3 4 5 6 7 8 9 10 11 12 13 14 14. 15 16 17 18 19 20 21 22 23 24 25 26 27 28 l. 15. Defendants should have produced Mr. Blietz to testify as their Rule 30(b)(6) designee, if not in place of Mr. Marcotullio, then certainly in addition to him. Nonetheless, after Plaintiffs learned of Mr. Blietz’s identity, on June 4, 2014, they noticed his deposition under Rule 30(b)(1). For the next several weeks, Defendants refused to produce Mr. Blietz. Eventually, Defendants relented and allowed Mr. Blietz to testify on July 10, 2014, the next-to-last day for discovery. -5- 1 Like Mr. Marcotullio, Mr. Blietz knew almost nothing of substance about Happy 2 Birthday or its origin. 3 4 5 6 7 ASCAP PRODUCTION 16. On March 28, 2014, Plaintiffs issued a subpoena to be served upon non- 8 party ASCAP seeking documents relevant to their claims. ASCAP objected to the 9 document subpoena but did not seek to quash it. 10 17. On April 22, 2014, Randall S. Newman, Esquire, one of my co-counsel, 11 and I spoke by telephone with Richard H. Reimer, Esquire, ASCAP’ s Senior Vice 12 President – Legal Services, regarding the document subpoena. During that call, Mr. 13 Reimer informed us that ASCAP would produce documents in response to the 14 subpoena. 15 18. Shortly thereafter, Mr. Reimer and I again spoke by telephone. During 16 that second call, Mr. Reimer told me that he was sending approximately 500 pages of 17 responsive documents to me. Mr. Reimer also told me that ASCAP was producing 18 two documents in particular that provided a detailed analysis of the disputed 19 ownership of the copyright that Plaintiffs would find very interesting. He did not 20 identify those documents any other way. 21 19. On May 9, 2014, I received approximately 500 pages of ASCAP 22 documents from Mr. Reimer, as did Defendants’ counsel’s office. 23 documents were marked “Confidential” by ASCAP pursuant to the stipulated 24 protective order entered in this action on May 5, 2014. I have maintained all of the 25 “Confidential” documents produced by ASCAP accordance with the Court’s May 5, 26 2014, stipulated protective order. 27 20. As Mr. Reimer told me during our second phone call, 28 -6- All of the 1 2 3 4 , that provided a detailed discussion of the disputed copyright ownership. 21. In his first letter, dated May 27, 1976 5 6 7 8 9 10 11 12 13 14 A true and correct copy of May 15 27, 1976, letter is attached hereto as Exhibit C. Exhibit C is attached to the Sealed 16 Declaration, Dkt. 137 (Ex B). 17 22. In his second letter, dated June 2, 1978, 18 19 A true and correct copy of 20 June 2, 1978, letter is attached hereto as Exhibit D. Exhibit D is attached to the 21 Sealed Declaration, Dkt. 137 (Ex.C). 22 23. Although Mr. Reimer had not identified the when we 23 spoke, I recognized them as the documents to which he referred in our second phone 24 call. I understood from Mr. Reimer’ s comments and ASCAP’ s production of the 25 that: (a) ASCAP intended to produce the to 26 Plaintiffs; (b) ASCAP did not regard them as privileged or confidential; and (iii) 27 ASCAP wanted to be sure that Plaintiffs saw the 28 -7- . ASCAP has since 1 confirmed to me that it does not assert any privilege regarding the 2 any of the other documents that Defendants claim are privileged. 3 24. or ASCAP also produced a letter from Arlene M. Sengstack, then Vice 4 President of Summy-Birchard Co., to Bernie Korman of ASCAP, on October 17, 5 1979, in which Ms. Sengstack forwarded the 6 than three years after the first letter were written and one year after the second letter 7 was written. ASCAP has marked Ms. Sengstack’s letter forwarding the to Mr. Korman more 8 to Mr. Korman as “Confidential.” A true and correct copy of the letter from 9 Ms. Sengstack to Mr. Korman is attached hereto as Exhibit E. A copy of Exhibit E is 10 11 attached to the Sealed Declaration, Dkt. 137 (Ex. D). 25. ASCAP also produced a letter dated November 9, 1940, from 12 13 concerning 14 a dispute between Summy and ASCAP over the use of the Song by telegraph 15 companies. A true and correct copy of 16 attached hereto as Exhibit F. 17 Declaration, Dkt. 137 (Ex. E). 18 26. letter to A copy of Exhibit F is attached to the Sealed ASCAP also produced a draft letter from 19 is to t, concerning disputes over 20 A true and correct copy of the draft 21 letter is attached hereto as Exhibit G. A copy of Exhibit G is attached to the Sealed 22 Declaration, Dkt. 137 (Ex. F). 23 27. On May 16, 2014, Mr. Newman and I again spoke by telephone with 24 Mr. Reimer. 25 designation for two of the documents. Although I did not mention the 26 27 28 During that call, I asked ASCAP to withdraw the “Confidential” at first, Mr. Reimer asked if I was referring to them, which I confirmed. 28. Mr. Reimer told Mr. Newman and me that he would not oppose withdrawing the “Confidential” designation, but only if Plaintiffs intended to use the -8- 1 only in connection with the California Action and not seek to publish 2 the letters outside the litigation. Mr. Newman and I confirmed that Plaintiffs would 3 not seek to publish the letters outside the litigation, but I reminded Mr. Reimer that 4 the California Action had received worldwide media coverage and that any public 5 filing might be reported by the media. Mr. Reimer said he was not concerned about 6 any media attention that a filing in the litigation might attract. 7 29. At the end of the call, Mr. Reimer told Mr. Newman and me that he 8 would need to speak with others before agreeing to the request, but that he would 9 not oppose withdrawing the “ Confidential” designation. 10 30. On May 22, 2014, Mr. Reimer sent me a letter in which he asserted that 11 certain of the documents ASCAP that produced to Plaintiffs (the “ASCAP 12 Documents”) “are subject to a claim of attorney-client or attorney work produce 13 privilege, and therefore were inadvertently produced.” Mr. Reimer also stated that 14 “counsel for the defendants” in would be contacting me directly “to provide the 15 details as to the basis for their clients’ claim of privilege.” A true and correct copy of 16 Mr. Reimer’s May 22, 2014, letter is attached hereto as Exhibit H. A copy of Exhibit 17 was attached to the Sealed Declaration, Dkt. 137 (Ex. G). 18 31. Despite Defendants’ claim of privilege, none of the ASCAP documents, 19 including the 20 Defendants on May 9, 2014, on Defendants’ amended privilege log produced on June 21 2, 2014, or on Defendants’ second amended privilege log produced on June 23, 2014. 22 Defendants have not produced any other privilege log including any of the disputed 23 ASCAP Documents. 24 32. , appeared on the privilege log produced by the In response to Mr. Reimer’s May 22, 2014, letter, I sequestered the 25 ASCAP Documents in accordance with Federal Rule of Civil Procedure 26(b)(5(B). 26 I notified Defendants’ counsel and Mr. Reimer that I sequestered the ASCAP 27 Documents by email on May 22, 2014 and subsequently filed the Discovery Motion 28 heard by the Magistrate Judge on July 25, 2014. The ASCAP Documents remain -9- 1 sequestered and have not been disclosed or used in any way (including in this 2 litigation) since I received Mr. Reimer’s letter on May 22, 2014. 3 ASCAP MOTION TO QUASH AND DEPOSITION 4 33. In light of the factual issues raised by the claim of privilege by the 5 Defendants, Plaintiffs issued a deposition subpoena to ASCAP, pursuant to Rules 45 6 and 30(b)(6), for deposition about the circumstances surrounding ASCAP’s receipt 7 of the 8 in 1979 and its production of those letters to Plaintiffs in 2014. 34. ASCAP initially moved to quash the subpoena in the Southern District 9 of New York. In support of ASCAP’s motion, Mr. Reimer submitted a declaration, 10 dated June 6, 2012, (“Reimer Decl.”), in which he stated that: (a) “ASCAP is a 11 voluntary membership association that represents more than 500,000 composers, 12 songwriters, lyricists and music publishers, and licenses on a non-exclusive basis the 13 public performance rights in the musical works owned or administered by its 14 members” (¶ 5), (b) ASCAP possesses no interest in the music it licenses (id.); and 15 (c) ASCAP possesses no interests in the fees or royalties it collects for its members 16 from the blanket licenses it issues (id.). See Exhibit K (ASCAP’s Reply Memo. June 17 26, 2014). A copy of Exhibit K was attached to Manifold Decl., Dkt. 126 as Exhibit 18 9. 19 35. On June 30, 2014, ASCAP agreed to withdraw its motion to quash and 20 to produce a witness to testify on its behalf. Plaintiffs served a second Rule 30(b)(6) 21 deposition notice on Defendants on May 22, 2014, in order to inquire about the facts 22 bearing on the legitimacy of Defendants’ privilege claims, including whether the 23 ASCAP Documents are privileged depends, among other things, upon the nature of 24 the relationship between ASCAP and Summy-Birchard Co. (the Defendants’ 25 predecessor-in-interest), their respective interests (if any) in the Song’s copyright, 26 their understanding (if any) regarding the documents, the reason(s) why the 27 documents were created, the reason(s) why Summy-Birchard Co. sent the documents 28 to ASCAP, and the circumstances under which ASCAP produced the ASCAP - 10 -

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