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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FRANCIS M. GREGOREK (144785)
[e-mail]
BETSY C. MANIFOLD (182450)
[e-mail]
RACHELE R. RICKERT (190634)
[e-mail]
MARISA C. LIVESAY (223247)
[e-mail]
WOLF HALDENSTEIN ADLER
FREEMAN & HERZ LLP
750 B Street, Suite 2770
San Diego, CA 92101
Telephone: [phone]
Facsimile: 619/234-4599
Interim Lead Class Counsel for Plaintiffs and Proposed Class
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
WESTERN DIVISION
)
)
)
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Plaintiffs,
)
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v.
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WARNER/CHAPPELL MUSIC, )
)
INC., et al.,
)
)
Defendants.
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)
)
)
)
)
)

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

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I, Mark C. Rifkin, hereby declare as follows:

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1.

I am an attorney duly licensed to practice law in the State of New York,

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and am admitted before this Court pro hac vice in the above-entitled matter. I am a

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partner with the law firm Wolf Haldenstein Adler Freeman & Herz LLP, interim lead

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class counsel for Plaintiffs and the proposed class. I have personal knowledge of the

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following facts, and if called upon to do so, I could and would competently testify as

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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,

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Inc., in certain documents produced by non-party American Society of Composers,

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Artists, and Publishers (“ASCAP”).

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MAGISTRATE JUDGE WILNER’S ORDER

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3.

Plaintiffs sought an order overruling Defendants’ claim of privilege

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pursuant to Rule 26(b)(5)(B). On July 15, 2014, the parties submitted a Joint

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Stipulation to Magistrate Judge Wilner (Dkt. No. 123). After some additional

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discovery on the privilege, both parties submitted supplemental briefs to Magistrate

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Judge Wilner on July 22, 2014. See Dkt. Nos. 125, 126, 127, and 129 (Plaintiffs);

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and Dkt. Nos. 128, 130 (Defendants). Magistrate Judge Wilner heard argument on

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Plaintiffs’ Discovery Motion on an expedited basis on July 25, 2014, and filed the

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Order later that day. (Dkt. No. 132). A true and correct copy of the July 25, 2014

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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

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service of the written notice and is timely. See CDCA L.R. 72-2.1.

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APPLICATION TO FILE UNDER SEAL

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4.

Plaintiffs have concurrently filed an application to file under seal certain

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confidential exhibits attached to this declaration.

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below were part of the record before the Magistrate Judge.

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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

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Judgment Act, 28 U.S.C. §§ 2201-2202, that: (i) Defendants do not own any valid

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copyright to the song Happy Birthday to You (the “Song”); (ii) any copyright to the

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Song that Defendants do own is limited in scope to just specific piano arrangements

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and an obscure second verse; and (iii) the Song itself is dedicated to public use and in

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the public domain (hereafter “Claim One”). See generally Fourth Amend. Consol.

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Class Action Compl. (“FAC”) Dkt. 95, filed Apr. 24, 2014 by Dkt. 96.

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6.

The Court has bifurcated Claim One from Plaintiffs’ other claims and

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the scope of discovery was limited to the issues raised by Claim One only. See

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Scheduling Conf. and Order Entering Scheduling Dates (Dkt. 92, Mar. 24, 2014)

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(“Scheduling Order”). The Court initially set the fact discovery deadline for June 27,

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2014. Id. at 1. ¶ 2. On June 9, 2014, Magistrate Judge Wilner extended the fact

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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
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ubiquity, no court has ever determined whether Defendants (or any of their

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predecessors-in-interest) own any rights to the Song. Indeed, while the Song has

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been used and performed innumerable times over the past 80 years without

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Defendants’ (or their predecessors’) permission, no one has ever been sued for

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infringing any copyright to the Song.

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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

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included in the work or who wrote it, and there is no known copy of the work

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deposited with that registration.

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.
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
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copyright (No. E51990) may have covered, that copyright expired in 1963.

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According to the 1962 Catalog of Copyright Entries (“Copyright Catalog”), the

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official publication of copyright registrations and renewals published by the United

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States Office of Copyright, the renewal copyright (No. R306186) covers Dr. Orem’s

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piano arrangement only, not any “text.” See Exhibit B (a true and correct copy of the

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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.

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E51988, also registered on December 6, 1935. That second copyright covered a

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different piano arrangement, composed by R.R. Forman, another employee for hire

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of Summy Co. That work’s copyright claim also included “revised text.” A deposit

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copy does exist for the work registered under No. E51988, which includes as the

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“revised text,” an obscure second verse for the Song, apparently written by Mrs.

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Forman. Copyright No. E51988 was also renewed on December 6, 1962, under No.

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R306185. And, like copyright No. E51990, the original copyright (No. E51988) also

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expired in 1963. According to the 1962 Copyright Catalog, renewal copyright No.

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R306185 was claimed by Summy-Birchard Music, Inc. (by way of change of name

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from Summy Co.), for Mrs. Forman’s piano arrangement and the “revised text” she

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apparently wrote.

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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
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scope of those copyrights shrouded in uncertainty.

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14.

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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.

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Like Mr. Marcotullio, Mr. Blietz knew almost nothing of substance about Happy

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Birthday or its origin.

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ASCAP PRODUCTION
16.

On March 28, 2014, Plaintiffs issued a subpoena to be served upon non-

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party ASCAP seeking documents relevant to their claims. ASCAP objected to the

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document subpoena but did not seek to quash it.

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17.

On April 22, 2014, Randall S. Newman, Esquire, one of my co-counsel,

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and I spoke by telephone with Richard H. Reimer, Esquire, ASCAP’ s Senior Vice

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President – Legal Services, regarding the document subpoena. During that call, Mr.

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Reimer informed us that ASCAP would produce documents in response to the

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subpoena.

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Shortly thereafter, Mr. Reimer and I again spoke by telephone. During

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that second call, Mr. Reimer told me that he was sending approximately 500 pages of

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responsive documents to me. Mr. Reimer also told me that ASCAP was producing

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two documents in particular that provided a detailed analysis of the disputed

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ownership of the copyright that Plaintiffs would find very interesting. He did not

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identify those documents any other way.

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19.

On May 9, 2014, I received approximately 500 pages of ASCAP

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documents from Mr. Reimer, as did Defendants’ counsel’s office.

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documents were marked “Confidential” by ASCAP pursuant to the stipulated

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protective order entered in this action on May 5, 2014. I have maintained all of the

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“Confidential” documents produced by ASCAP accordance with the Court’s May 5,

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2014, stipulated protective order.

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20.

As Mr. Reimer told me during our second phone call,

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All of the

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, that provided a
detailed discussion of the disputed copyright ownership.
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In his first letter, dated May 27, 1976

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A true and correct copy of

May

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27, 1976, letter is attached hereto as Exhibit C. Exhibit C is attached to the Sealed

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Declaration, Dkt. 137 (Ex B).

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22.

In his second letter, dated June 2, 1978,

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A true and correct copy of

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June 2, 1978, letter is attached hereto as Exhibit D. Exhibit D is attached to the

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Sealed Declaration, Dkt. 137 (Ex.C).

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23.

Although Mr. Reimer had not identified the

when we

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spoke, I recognized them as the documents to which he referred in our second phone

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call. I understood from Mr. Reimer’ s comments and ASCAP’ s production of the

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that: (a) ASCAP intended to produce the

to

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Plaintiffs; (b) ASCAP did not regard them as privileged or confidential; and (iii)

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ASCAP wanted to be sure that Plaintiffs saw the

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. ASCAP has since

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confirmed to me that it does not assert any privilege regarding the

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any of the other documents that Defendants claim are privileged.

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or

ASCAP also produced a letter from Arlene M. Sengstack, then Vice

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President of Summy-Birchard Co., to Bernie Korman of ASCAP, on October 17,

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1979, in which Ms. Sengstack forwarded the

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than three years after the first letter were written and one year after the second letter

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was written. ASCAP has marked Ms. Sengstack’s letter forwarding the

to Mr. Korman more

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to Mr. Korman as “Confidential.” A true and correct copy of the letter from

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Ms. Sengstack to Mr. Korman is attached hereto as Exhibit E. A copy of Exhibit E is

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attached to the Sealed Declaration, Dkt. 137 (Ex. D).
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ASCAP also produced a letter dated November 9, 1940, from

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concerning

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a dispute between Summy and ASCAP over the use of the Song by telegraph

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companies. A true and correct copy of

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attached hereto as Exhibit F.

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Declaration, Dkt. 137 (Ex. E).

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letter to

A copy of Exhibit F is attached to the Sealed

ASCAP also produced a draft letter from

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is

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t, concerning disputes over

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A true and correct copy of the draft

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letter is attached hereto as Exhibit G. A copy of Exhibit G is attached to the Sealed

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Declaration, Dkt. 137 (Ex. F).

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27.

On May 16, 2014, Mr. Newman and I again spoke by telephone with

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Mr. Reimer.

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designation for two of the documents. Although I did not mention the

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During that call, I asked ASCAP to withdraw the “Confidential”

at first, Mr. Reimer asked if I was referring to them, which I confirmed.
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Mr. Reimer told Mr. Newman and me that he would not oppose

withdrawing the “Confidential” designation, but only if Plaintiffs intended to use the

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only in connection with the California Action and not seek to publish

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the letters outside the litigation. Mr. Newman and I confirmed that Plaintiffs would

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not seek to publish the letters outside the litigation, but I reminded Mr. Reimer that

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the California Action had received worldwide media coverage and that any public

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filing might be reported by the media. Mr. Reimer said he was not concerned about

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any media attention that a filing in the litigation might attract.

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29.

At the end of the call, Mr. Reimer told Mr. Newman and me that he

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would need to speak with others before agreeing to the request, but that he would

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not oppose withdrawing the “ Confidential” designation.

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30.

On May 22, 2014, Mr. Reimer sent me a letter in which he asserted that

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certain of the documents ASCAP that produced to Plaintiffs (the “ASCAP

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Documents”) “are subject to a claim of attorney-client or attorney work produce

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privilege, and therefore were inadvertently produced.” Mr. Reimer also stated that

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“counsel for the defendants” in would be contacting me directly “to provide the

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details as to the basis for their clients’ claim of privilege.” A true and correct copy of

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Mr. Reimer’s May 22, 2014, letter is attached hereto as Exhibit H. A copy of Exhibit

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was attached to the Sealed Declaration, Dkt. 137 (Ex. G).

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31.

Despite Defendants’ claim of privilege, none of the ASCAP documents,

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including the

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Defendants on May 9, 2014, on Defendants’ amended privilege log produced on June

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2, 2014, or on Defendants’ second amended privilege log produced on June 23, 2014.

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Defendants have not produced any other privilege log including any of the disputed

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ASCAP Documents.

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32.

, appeared on the privilege log produced by the

In response to Mr. Reimer’s May 22, 2014, letter, I sequestered the

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ASCAP Documents in accordance with Federal Rule of Civil Procedure 26(b)(5(B).

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I notified Defendants’ counsel and Mr. Reimer that I sequestered the ASCAP

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Documents by email on May 22, 2014 and subsequently filed the Discovery Motion

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heard by the Magistrate Judge on July 25, 2014. The ASCAP Documents remain

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sequestered and have not been disclosed or used in any way (including in this

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litigation) since I received Mr. Reimer’s letter on May 22, 2014.

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ASCAP MOTION TO QUASH AND DEPOSITION

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33.

In light of the factual issues raised by the claim of privilege by the

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Defendants, Plaintiffs issued a deposition subpoena to ASCAP, pursuant to Rules 45

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and 30(b)(6), for deposition about the circumstances surrounding ASCAP’s receipt

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of the

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in 1979 and its production of those letters to Plaintiffs in 2014.
34.

ASCAP initially moved to quash the subpoena in the Southern District

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of New York. In support of ASCAP’s motion, Mr. Reimer submitted a declaration,

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dated June 6, 2012, (“Reimer Decl.”), in which he stated that: (a) “ASCAP is a

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voluntary membership association that represents more than 500,000 composers,

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songwriters, lyricists and music publishers, and licenses on a non-exclusive basis the

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public performance rights in the musical works owned or administered by its

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members” (¶ 5), (b) ASCAP possesses no interest in the music it licenses (id.); and

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(c) ASCAP possesses no interests in the fees or royalties it collects for its members

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from the blanket licenses it issues (id.). See Exhibit K (ASCAP’s Reply Memo. June

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26, 2014). A copy of Exhibit K was attached to Manifold Decl., Dkt. 126 as Exhibit

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9.

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35.

On June 30, 2014, ASCAP agreed to withdraw its motion to quash and

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to produce a witness to testify on its behalf. Plaintiffs served a second Rule 30(b)(6)

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deposition notice on Defendants on May 22, 2014, in order to inquire about the facts

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bearing on the legitimacy of Defendants’ privilege claims, including whether the

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ASCAP Documents are privileged depends, among other things, upon the nature of

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the relationship between ASCAP and Summy-Birchard Co. (the Defendants’

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predecessor-in-interest), their respective interests (if any) in the Song’s copyright,

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their understanding (if any) regarding the documents, the reason(s) why the

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documents were created, the reason(s) why Summy-Birchard Co. sent the documents

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to ASCAP, and the circumstances under which ASCAP produced the ASCAP

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