Blagman v. Apple, Inc. et al

Filing 119

MEMORANDUM AND ORDER: For the reasons articulated above, I will issue the letters rogatory seeking the assistance of the British and French courts in taking deposition testimony upon oral examination of the specified third-party witnesses. (Signed by Magistrate Judge James C. Francis on 3/31/2014) Copies Mailed By Chambers. (djc)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
- - - - - - - - - - - - - - - - - -:
NORMAN BLAGMAN, individually and
: 12 Civ. 5453 (ALC) (JCF)
on behalf of all others similarly :
situated,
:
MEMORANDUM
:
AND ORDER
:
Plaintiff,
:
:
- against :
:
APPLE, INC., AMAZON.COM, INC.,
:
GOOGLE, INC., MICROSOFT
:
CORPORATION, EMUSIC.COM INC., THE :
ORCHARD ENTERPRISES, INC., ORCHARD :
ENTERPRISES NY, INC., and JOHN DOES:
1-10, persons and entities whose
:
identities are unknown to plaintiff:
but who have performed and
:
participated in the unlawful acts :
alleged herein,
:
:
Defendants.
:
- - - - - - - - - - - - - - - - - -:
JAMES C. FRANCIS IV
UNITED STATES MAGISTRATE JUDGE
The plaintiff, Norman Blagman, brings this action individually
and on behalf of a proposed class, alleging that the defendants
illegally reproduced and distributed musical works through their
U.S.-based

online

stores

underlying compositions.

without

acquiring

licenses

for

the

Mr. Blagman now asks the Court, pursuant

to Rule 28 of the Federal Rules of Civil Procedure, to issue
letters rogatory requesting that authorities in the United Kingdom
and

France

depositions.

order

six

These

third-party

depositions
1

are

witnesses
warranted,

to

appear

the

for

plaintiff

contends, as discovery and investigation have revealed that many of
the digital recordings at issue are supplied by entities located
outside the United States.
Background
Mr. Blagman is a musician with over fifty years experience
writing, producing, and recording music.

(Declaration of Norman

Blagman dated Jan. 16, 2014 (“Blagman Decl.”), ¶ 5).

He is the

composer and copyright owner of “numerous original copyrighted
compositions,” including three specific works that he alleges have
been illegally copied, publicly distributed, sold, and performed by
the defendants through their online music stores.

(Memorandum of

Law in Support of Plaintiff’s Motion for the Issuance of Letters of
Request (“Pl. Memo.”) at 2-3).1

Mr. Blagman sues on his own behalf

and on behalf of a proposed class including all copyright owners of
one

or

more

registered

musical

compositions

that

reproduced, distributed, or sold by the defendants.
Complaint (“Am. Compl.”), ¶ 52).

have

been

(Amended

The defendants consist of two

groups. The first is comprised of major digital music retailers -Amazon,

Apple,

EMusic,

Google,

and

Microsoft

(the

“Retailer

Defendants”) -- representing over 80 percent of the U.S. digital
music market.

(Am. Compl., ¶¶ 14-18, 87-98).

1

The second includes

The terms letters of request and letters rogatory are used
interchangeably.
2

Orchard Enterprises and other John Doe aggregators who supply
digital recordings to the Retailer Defendants.2

(Am. Compl., ¶¶

99-111).
Based

on

the

results

of

discovery

and

investigation

by

counsel, the plaintiff believes that certain foreign record labels
and aggregators are reproducing and uploading infringing recordings
to the U.S. online stores of the Retailer Defendants.
at 1-3).

(Pl. Memo.

Customers based in the United States can then purchase

and download the recordings. Two types of recordings are at issue:
recordings made before 1963 and karaoke recordings.

The plaintiff

has identified six individuals or entities that he seeks to depose:
(1) Michael Bennett (the owner of labels Playbak, Taskmaster,
Vantage Point, Tripswitch, and Digilouge); (2) the aggregator
Second Wind Digital; (3) the aggregator Rants Ltd; (4) Thomas
Colley

(the

owner

of

labels

Magnitude,

Zodiac

649,

Karaoke

Universe, Sixth Right, Seventh Right, Eighth Right, Ninth Right,
Tenth Right, and 13th Right); (5) the aggregator Routenote Limited;
and (6) the aggregator Believe Digital SAS.

(Pl. Memo. at 5-10).

Mr. Blagman avers that he never licensed or authorized any of these
entities (collectively, the “Suppliers”) to reproduce or distribute

2

Record labels produce and distribute musical recordings,
while aggregators are entities that acquire digital distribution
rights to recordings from the labels and then upload the recordings
to online music stores.
3

his compositions in the Retailer Defendants’ U.S. online stores,
yet the recordings are nonetheless available there.

(Pl. Memo. at

5; Blagman Decl., ¶¶ 3, 12-13).
The plaintiff has contacted, through counsel, several of the
entities he now seeks to depose.

Mr. Bennett, whose labels have a

combined catalog of over 75,000 tracks available for sale in the
Retailer Defendants’ online music stores, confirmed that he did not
obtain

licenses

or

import

authorization

for

the

compositions

embodied in the digital recordings he supplied to the Retailer
Defendants.

(Pl. Memo. at 6).

He stated that any pre-1963

recordings were unlicensed, that they had been uploaded to the U.S.
music stores in error, and that they would be removed.
at 6).

(Pl. Memo.

After initially stating that his labels were not required

to obtain licenses in the underlying compositions when selling
karaoke recordings, Mr. Bennett subsequently told plaintiff’s
counsel that royalties were being paid “retrospectively through
[the labels’] aggregators in the [United States].”
6-7).

(Pl. Memo. at

Following these conversations, Mr. Bennett has not returned

telephone calls and e-mails from plaintiff’s counsel seeking more
information (Pl. Memo. at 7), and the pre-1963 recordings remain
available online (Pl. Memo. at 6).
Plaintiff’s counsel also spoke with two aggregators -- Second
Wind Digital and Rants Ltd. -- that work with certain of Mr.
4

Bennett’s labels.

(Pl. Memo. at 7-8).

Through representatives,

both aggregators confirmed that they do not acquire licenses for
the compositions embodied in the recordings and instead expect the
labels to obtain the proper copyright authorization. (Pl. Memo. at
7-8). Nor do the aggregators pay money to the U.S. copyright owner
of the recorded compositions.

(Pl. Memo. at 7-8).

Neither

representative has responded to the plaintiff’s request for a sworn
statement.
The

(Pl. Memo. at 7-8).

plaintiff

also

believes,

based

on

investigation

and

conversations with aggregators, that Thomas Colley controls several
U.K.-based labels that sell unlicensed music in the Retailer
Defendants’ U.S. online music stores.

(Pl. Memo. at 9).

The

plaintiff has identified one such label that is supplying a digital
recording of Mr. Blagman’s composition “It’ll Never Be Over For Me”
without authorization.

(Pl. Memo. at 9).

The plaintiff has not

communicated with Mr. Colley, but has spoken with two of his
label’s aggregators, Routenote and Believe Digital SAS. (Pl. Memo.
at 10).

Routenote’s CEO declined to answer the questions posed by

plaintiff’s counsel, but a Director of Believe Digital SAS stated
that Mr. Colley represented that his labels had all necessary
licenses and authorizations, and that Believe Digital did not
obtain licenses on behalf of the labels whose recordings it
distributes.

(Pl. Memo. at 10-11).
5

The letters rogatory sought by the plaintiff, identical in
substance, outline three topics for the requested depositions.
(Request for International Judicial Assistance (Letter of Request)
by the United States District Court for the Southern District of
New York (“Proposed Letters Rogatory”), attached as Exhs. 3.1-3.6
to Declaration of Matthew F. Schwartz dated Jan. 30, 2014).3
first

topic

whether

concerns

the

mechanical

third-party

entity

licensing
“obtained

and,

The

specifically,

digital

phonorecord

delivery or mechanical licenses pursuant to the U.S. Copyright Act
to

make

and

copyrighted

distribute

compositions

digital

sound

registered

(Proposed Letters Rogatory at 8).

in

recordings
the

United

embodying
States.”

The second topic focuses on

duplication of already-fixed sound recordings and whether the
entity was granted authority to duplicate such recordings by either
the copyright owners in the sound recordings or by any person who
fixed the sound recording pursuant to a compulsory license or an
express license from the copyright owner of the musical work.
(Proposed Letters Rogatory at 9).

The third topic relates to

whether the entity obtained import authorization for recordings
embodying copyrighted compositions registered in the United States,
for distribution and sale in the Retailer Defendants’ U.S. online

3

As the Proposed Letters Rogatory are materially identical
but for pagination, I will refer only to Exh. 3.1 throughout.
6

music stores.

(Proposed Letters Rogatory at 9).

These requests

are limited to the time period from July 13, 2009 to the present.
(Proposed Letters Rogatory at 8-9). While the plaintiff originally
included a request for document production as part of the proposed
letters rogatory, this request has since been withdrawn.

(Reply

Memorandum of Law in Further Support of Plaintiff’s Motion to
Compel at 10 n.6).
A. Procedural History
I have twice entertained requests from the plaintiff regarding
discovery of extraterritorial conduct.

Following a hearing on

November 19, 2013, I issued an order barring

the plaintiff from

pursuing discovery relating to customers based outside the United
States.

(Order dated Nov. 20, 2013).

On January 31, 2014, I

denied the plaintiff’s request to question a third-party witness on
exports and other extraterritorial conduct, on the grounds that
such topics reached beyond the claims pleaded in the operative
Complaint.

(Memorandum Endorsement dated Jan. 31, 2014).

The

plaintiff has now filed a motion requesting leave to amend the
Complaint for a second time, explicitly adding import and export
claims under 17 U.S.C. § 602.

(Plaintiff’s Memorandum of Law in

Support of Motion for Leave to File Second Amended Complaint at 1).
However, the operative complaint for the purposes of this motion is
the First Amended Complaint, filed October 12, 2012.
7

Discussion
A. Legal Standard
1. Letters Rogatory
Pursuant to Rule 28 of the Federal Rules of Civil Procedure,
a deposition of a third party may be taken in a foreign country “on
appropriate terms after application and notice of it.”
Civ. P. 28(b)(2)(A).

Fed. R.

One method for seeking discovery abroad is

issuing a letter of request through the Hague Convention on the
Taking of Evidence Abroad in Civil and Commercial Matters (the
“Hague Evidence Convention”), which charges the signatory nations
(including the United Kingdom and France) to cooperate on discovery
matters.

Société Nationale Industrielle Aérospatiale v. United

States District Court for the Southern District of Iowa, 482 U.S.
522, 530-31 (1987).

Letters rogatory are the means by which a

court can formally request that a court in another country lend its
judicial assistance in obtaining evidence or performing some other
judicial act.

See, e.g., Lantheus Medical Imaging, Inc. v. Zurich

American Insurance Co., 841 F. Supp. 2d 769, 775 (S.D.N.Y. 2012);
see also 28 U.S.C. § 1781(b)(2).

Parties based in the United

States may use letters rogatory to “‘take evidence from a specific
person

within

the

foreign

jurisdiction.’”

Lantheus

Medical

Imaging, 841 F. Supp. 2d at 775 (quoting Black’s Law Dictionary 778
(9th ed. 2009); see also Intel Corp. v. Advanced Micro Devices,
8

Inc., 542 U.S. 241, 247 n.1 (2004); In re Optimal U.S. Litigation,
837 F. Supp. 2d 244, 259 (S.D.N.Y. 2011) (“Letters rogatory are an
appropriate mechanism for securing the testimony of other witnesses
who cannot be compelled to appear in this Court.” (internal
quotation marks omitted)).

Letters rogatory issued through the

Hague Convention must provide the foreign officials with certain
information regarding the lawsuit and the information sought.
Hague Evidence Convention, 23 U.S.T. 2555, Art. 3(f) (“Where
appropriate, the Letter shall specify . . . the questions to be put
to the persons to be examined or a statement of the subject-matter
about which they are to be examined.”).
The determination to issue letters rogatory is committed to
the court’s discretion.

United States v. Al Fawwaz, No. S7 98

Crim. 1023, 2014 WL 627083, at *2 (S.D.N.Y. Feb. 18, 2014); Horvath
v. Deutsche Lufthansa, AG, No. 02 Civ. 3269, 2004 WL 241671, at *3
(S.D.N.Y. Feb. 9, 2004).

In making that determination, the court

applies the relevance standards of Rule 26 of the Federal Rules of
Civil Procedure. Lantheus Medical Imaging, 841 F. Supp. 2d at 776;
see also Bisnews AFE (Thailand) Ltd. v. Aspen Research Group Ltd.,
No. 11 Civ. 3108, 2012 WL 4784632, at *3 (S.D.N.Y. Oct. 4, 2012)
(noting that “a court should not authorize the service of letters
rogatory if it would not approve of the discovery requests in a
purely domestic context.”).
9

“Although not unlimited, relevance, for purposes of discovery,
is an extremely broad concept.”

Chen-Oster v. Goldman, Sachs &

Co., 293 F.R.D. 557, 561 (S.D.N.Y. 2013) (internal quotation marks
omitted).

Information that is relevant to any claim or defense of

any party is discoverable, as well as information “reasonably
calculated to lead to the discovery of admissible evidence,” even
if such information is not admissible itself.
26(b)(1).

The

party

seeking

discovery

bears

Fed. R. Civ. P.
the

burden

of

demonstrating relevance; once established, the opposing party must
justify any restrictions on discovery.

Chen-Oster, 292 F.R.D. at

561; see also Security Insurance Co. of Hartford v. Trustmark
Insurance Co., 218 F.R.D. 24, 26-27 (D. Conn. 2003) (“A party
opposing issuance of a letter rogatory must show good reason why
such letter should not issue.” (internal quotation marks omitted)).
Discovery may be curtailed where the information sought would be
“unreasonably cumulative or duplicative” or when “the burden or
expense of the proposed discovery outweighs its likely benefit.”
Fed. R. Civ. P. 26(b)(2)(C)(i), (iii).
Although a signatory to the Hague Evidence Convention, the
United Kingdom reserved its rights to impose stricter pretrial
discovery standards when evaluating letters rogatory received from
foreign nations. See Protection of Trading Interests Act, 1980, c.
11, § 2 (Eng.).

Pretrial depositions may be taken only when “the
10

subject matter of [the] deposition is restricted to the evidence
admissible at trial.”

Apple Computers, Inc. v. Doe, [2002] EWHC

(QB) 2064, 2002 WL 31476324 (Queen’s Bench Division Sept. 18,
2002); see also Metso Minerals, Inc. v. Powerscreen International
Distribution Ltd., No. 06 CV 1446, 2008 WL 719243, at *5 (E.D.N.Y.
March 18, 2008) (noting in appendix that U.K. precedent prohibits
deposition of third-party witnesses “for the purpose of seeking
information which, though inadmissible at trial, appears to be
reasonably calculated to lead to the discovery of admissible
evidence.”).
In France, following Hague Convention procedures for seeking
evidence for use at trial circumvents the so-called ‘blocking
statute’ that otherwise penalizes the production of “documents or
information of an economic, commercial, industrial, financial or
technical nature” that may affect France’s sovereign interests. In
re Vivendi Universal, S.A. Securities Litigation, No. 02 Civ. 5571,
2006 WL 3378115, at *1 n.1 (S.D.N.Y. Nov. 16, 2006) (quoting Art.
1 bis of French Law No. 80-538 of July 16, 1980); see also In re
Air Cargo Shipping Services Antitrust Litigation, 278 F.R.D. 51, 52
(E.D.N.Y.

2010).

Depositions

taken

pursuant

to

the

Hague

Convention are conducted in accordance with French procedure, with
the judge typically asking all questions.

See United States v.

Salim, 664 F. Supp. 682, 687 (E.D.N.Y. 1987), aff’d, 855 F.2d 944
11

(2d Cir. 1988) (noting that French deposition procedure usually
entails the judge questioning the witness, with attorneys providing
supplemental questions, and results in a dictated summary of the
testimony).

However, letters rogatory may request application of

the procedural rules of another jurisdiction (such as the Federal
Rules of Civil Procedure) and parties may also seek authorization
from the French court to ask questions.

See Nouveau Code De

Procédure Civile [N.C.P.C.] arts. 736, 739-740 (Fr.) (English
translation

2012).

Other

courts,

considering

the

scope

of

depositions sought in France pursuant to letters rogatory, have
found sufficient specificity in letters that contain a “brief
statement concerning the subject matter and relevance of the
request.” See Abbott Laboratories v. Impax Laboratories, Inc., No.
Civ.A. 03-120, 2004 WL 1622223, at *3 (D. Del. July 15, 2004); see
also Pronova BioPharma Norge AS v. Teva Pharmaceuticals USA, Inc.,
708 F. Supp. 2d 450, 453 (D. Del. 2010) (noting that if foreign
authorities consider letters rogatory to exceed allowable scope
under foreign law, “then the requests will presumably be narrowed
by the appropriate judicial authorities in those countries.”).
2. Copyright Act
The Copyright Act grants the owners of copyrights in nondramatic music compositions the exclusive rights to reproduce and
distribute their copyrighted songs and to authorize others to
12

engage in such activity.

17 U.S.C. § 106(1), (3).

These rights

are often called the “mechanical rights” and are governed by the
mechanical licensing process.

In re Cellco Partnership, 663 F.

Supp. 2d 363, 369 (S.D.N.Y. 2009).

When an individual who does not

own the copyright to a musical composition wishes to make and
distribute his own recording of the song, he must first obtain a
mechanical license from the copyright owner.

Mechanical licenses

can be acquired in several ways, including by negotiation (a
consensual

license)

or

by

following

the

procedures provided by 17 U.S.C. § 115.

compulsory

licensing

Compulsory licensing is

the Copyright Act’s attempt to balance the interests of the
composer in retaining control over their work with the interests of
the general public in promoting access and creativity.

See, e.g.,

Cherry River Music Co. v. Simitar Entertainment, Inc., 38 F. Supp.
2d 310, 311-12 (S.D.N.Y. 1999).

Once a song has been distributed

publicly, an individual may bypass the composition copyright owner
and obtain a compulsory mechanical license by simply providing
notice of the intended use and payment of a statutory royalty.
U.S.C. § 115.

17

If the party reproducing the song does not abide by

the procedures of § 115, however, no compulsory license may be
granted and the party may be liable for infringement if he has not
secured a negotiated license.

17 U.S.C. § 115(b)(1); see also

Cherry River Music, 38 F. Supp. 2d at 312.
13

B. Relevance
Courts have “the authority to confine discovery to the claims
and

defenses

asserted

in

the

pleadings”

and

parties

are

not

entitled to use discovery “to develop new claims or defenses.”
Fed.

R.

Civ.

amendment.
relevant

P.

26(b)(1),

advisory

committee

note

to

2000

Taking the depositions of the foreign Suppliers is

to

class

certification,

according

to

the

plaintiff,

because it will help establish the Suppliers’ common practice
regarding licensing and therefore be applicable to all copyright
owners whose songs are distributed by the Suppliers. (Pl. Memo. at
16). The defendants contend that the proposed letters rogatory are
in violation of my prior discovery orders and that two of the
proposed deposition topics fall outside the claims pleaded in the
Amended Complaint.
for

Letter

of

(Defendants’ Opposition to Plaintiff’s Motion

Request

for

International

Judicial

Assistance

Pursuant to the Hague Convention of 18 March 1970 on Taking of
Evidence Abroad in Civil or Criminal Matters (“Def. Memo.”) at 711).
1. Prior Court Orders
On two previous occasions, I denied the plaintiff’s requests
to seek discovery regarding exportation and actions relating to
customers outside of the United States.
2013;

Order

dated

Jan.

31,

2014).
14

(Order dated Nov. 20,
Indeed,

“[i]t

is

well

established

that

extraterritorial

copyright

laws

application.”

generally

Update

Art,

do

not

Inc.

Publishing, Ltd., 843 F.2d 67, 73 (2d Cir. 1988).

v.

have
Modiin

However, the

defendants’ argument that I have ruled that all extraterritorial
discovery is out of bounds.
The proposed letters rogatory are distinguishable from the
prior requests.

Here, the plaintiff seeks to depose certain

entities concerning digital recordings that are distributed through
the Retailer Defendants’ U.S. online music stores, despite being
uploaded abroad.

Thus, the locus of the allegedly infringing

action remains in the United States.

Further, the testimony may

support the plaintiff’s claims of commonality.
allegations

center

on

a

purported

systemic

The plaintiff’s
failure

by

the

defendants to ensure that the recordings offered for sale by the
Retailer Defendants had all necessary licenses and authorizations.
(Am.

Compl.,

¶¶

77,

91-92,

94).

The

defendants

assert

the

affirmative defense that all such authorizations were obtained.
(Google Inc.’s Answer to First Amended Class Action Complaint at
24; Answer of Defendant Apple Inc. to First Amended Class Action
Complaint at 21; Answer of Defendant EMusic.com Inc. to First
Amended Class Action Complaint at 24; Answer of Defendant Microsoft
Corporation to First Amended Class Action Complaint at 25; Answer
of

Defendant

Amazon.com

Inc.

to
15

First

Amended

Class

Action

Complaint at 24; Answer of Defendant Orchard Enterprises NY, Inc.
to First Amended Class Action Complaint at 25; Answer of Defendant
The

Orchard

Enterprises,

Complaint at 25).

Inc.

to

First

Amended

Class

Action

Evidence demonstrating the practice of foreign

labels and aggregators in obtaining rights to the recordings that
they supply to the Retailer Defendants is central to that defense.
Finally, as the plaintiff notes, defense counsel appear to have
contemplated the deposition of foreign labels and aggregators in
the November 19, 2013 hearing and conceded that deposing a sample
of five “should be fine” to determine the existence any “common
thread” with respect to the failure to obtain the requisite
licenses, at least for the purposes of class certification.
(Transcript of Proceedings dated Nov. 19, 2013, attached as Exh. A
to Letter of Gabrielle Levin dated Jan. 20, 2014, at 44).
2. Scope of Operative Complaint
i. Duplication
The plaintiff seeks to depose the Suppliers on whether they
had authorization to duplicate sound recordings. (Proposed Letters
Rogatory at 9).
and

the

The defendants object that, as both the plaintiff

proposed

class

are

made

up

of

copyright

owners

of

compositions and not of sound recordings, such questions are
outside the bounds of the Amended Complaint.

(Def. Memo. at 8).

Under federal copyright law, compositions and sound recordings
16

are

different

works,

each

with

distinct

ownership

rights.

Palladium Music, Inc. v. EatSleepMusic, Inc., 398 F.3d 1193, 1197
n.3 (10th Cir. 2005); In re Cellco Partnership, 663 F. Supp. 2d at
368. Copyright owners of sound recordings have the exclusive right
to duplicate that sound recording.

17 U.S.C. § 114(b).

In order

to enjoy that right, however, the sound recording itself must be
lawfully fixed.

See 17 U.S.C. § 103(a) (providing that copyright

in derivative works “does not extend to any part of the work in
which [pre-existing] material has been used unlawfully”); Palladium
Music, 398 F.3d at 1200 (finding no valid copyright in recordings
where party failed to obtain compulsory or consensual licenses from
copyright owners of underlying musical compositions).

Therefore,

while copyright owners of sound recordings do indeed have distinct
ownership rights from those of copyright owners in compositions,
the former cannot be had without authorization from the latter.
In

order

to

lawfully

duplicate

a

sound

recording,

the

duplicator must obtain authorization from the copyright holder of
the sound recording, who must in turn have acquired either a
mechanical or negotiated license for the underlying composition.
17 U.S.C. §§ 114, 115(a).

The language in the plaintiff’s request

is taken from the text of § 115(a), which governs the compulsory
licensing

process

for

non-dramatic

musical

compositions.

No

compulsory license in the underlying composition may be granted
17

unless two conditions are fulfilled: (1) the sound recording was
fixed

lawfully;

and

(2)

the

making

of

the

duplication

was

authorized by the copyright owner of the sound recording or, “if
the sound recording was fixed before February 15, 1972, by any
person who fixed the sound recording pursuant to an express license
from the owner of the copyright in the musical work or pursuant to
a valid compulsory license for use of such work in a sound
recording.”
the

Amended

17 U.S.C. § 115(a)(1).
Complaint

are

Thus, although the claims in

tied

solely

to

infringement

of

compositions, whether the Suppliers duplicated recordings without
authorization from the copyright holder of the sound recording is
critical

to

determining

whether

a

compulsory

license

in

the

underlying composition is even available.
The defendants also oppose any questions regarding duplication
on the grounds that duplication of sound recordings fixed before
1963 is lawful.

(Def. Memo. at 9).

While it is true that federal

copyright law extended its protection to sound recordings only in
1972, and only on a prospective basis, see 17 U.S.C. § 301(c), some
pre-1972 recordings are nonetheless shielded from infringement. In
the United States, recordings fixed prior to 1972 may be protected
by state common law copyright until 2067.

17 U.S.C. § 301(c); see

also Capitol Records, Inc. v. Naxos of America, Inc., 4 N.Y.3d 540,
562-63, 797 N.Y.S.2d 352, 367 (2005) (holding that New York’s
18

common-law

protection

for

pre-1972

recordings

continues

until

federal preemption occurs); N.Y. Penal Law § 275.25 (unauthorized
distribution of pre-1972 sound recordings prohibited).

Therefore,

even absent federal copyright protection, the Supplier is not freed
of any obligation to seek authorization from the individual holding
rights to the recording.

To the extent that the sound recordings

provided by the Suppliers are duplications of pre-1972 recordings,
state common law provides the basis for determining whether the
recording was legally duplicated.

See Arista Records LLC v. Lime

Group LLC, 784 F. Supp. 2d 398, 436 (S.D.N.Y. 2011) (noting that
pre-1972 recordings “are protected by state common law on copyright
infringement”).

Federal copyright law further provides that a

compulsory license in the underlying composition may not issue
unless, for sound recordings fixed prior to 1972, the duplicator
obtains

authorization

from

the

“person

who

fixed

the

sound

recording,” who must themselves have had authorization for the
copyright owner of the of the underlying composition.
115(a)(1).

17 U.S.C. §

Thus, there is no reason at this point to distinguish

between pre- and post-1963 recordings.
ii. Importation
The Copyright Act contains specific provisions governing
infringing importation and exportation of sound recordings.

17

U.S.C. § 602. Importation without authorization is infringement of
19

a copyright owner’s exclusive right to distribution.

17 U.S.C. §

602(a)(1); see also U2 Home Entertainment, Inc. V. Lai Ying Music
& Video Trading, Inc., No. 04 Civ. 1233, 2005 WL 1231645, at *4 &
n.8 (S.D.N.Y. May 25, 2005), aff’d in part, vacated in part sub
nom. U2 Home Entertainment, Inc. v. Wei Ping Yuan, 245 F. App’x 28
(2d Cir. 2007).
The defendants argue that the Amended Complaint contains no
reference to importing or exporting, nor does it invoke the
protection of 17 U.S.C. § 602, and that the plaintiff conceded this
point in the November 19, 2013 hearing.

(Def. Memo. at 3-4).

Importation is nonetheless relevant to the plaintiff’s current
claims.

In the Amended Complaint, the plaintiff alleges that the

Retailer Defendants “accept [and offer for sale] virtually every
recording delivered to them,” which, combined with reference to
popular songs being “recorded by innumerable artists all over the
world,” makes the question of import authorization relevant to the
defendants’ affirmative defenses.

(Am. Compl., ¶¶ 59, 83, 92).

For example, songs may be licensed to one entity for reproduction
and distribution in a foreign country and licensed to another in
the United States.

The recordings distributed by the first entity

are lawfully fixed and distributed within that foreign country but
would be considered infringing if they were directly imported into
the United States.

See Kirtsaeng v. John Wiley & Sons, Inc., __
20

U.S. __, __, 133 S. Ct. 1351, 1368 (2013) (noting that § 602(a)(1)
forbids

unauthorized

importing

of

phonorecords

lawfully

made

abroad, so long as there has been no prior sale abroad); see also
Capitol Records, LLC v. ReDigi Inc., 934 F. Supp. 2d 640, 655-56
(S.D.N.Y. 2013) (finding that the prior sale defense does not apply
to

digital

music

files

sold

online).

Therefore,

while

the

defendants assert the affirmative defense that they have all
necessary authorizations for the sound recordings they provide,
such authorization may be dependent upon whether the recordings are
imported into the United States.
C. Burden
The defendants also assert that taking six depositions abroad,
five

in

the

United

Kingdom

and

one

in

France,

imposes

an

unwarranted burden and is unnecessary for class certification.
(Def. Memo. at 11-12).

While the court has discretion to deny

discovery requests where the burden outweighs the likely benefit,
Fed. R. Civ. P. 26(b)(2)(C)(iii), parties opposing discovery must
supply specific evidence demonstrating the nature of the burden.
See Nunez v. City of New York, No. 11 Civ. 5845, 2013 WL 2149869,
at *3 (S.D.N.Y. May 17, 2013); Compagnie Francaise d’Assurance Pour
le Commerce Exterieur v. Phillips Petroleum Co., 105 F.R.D. 16, 42
(S.D.N.Y. 1984) (the party objecting to discovery must offer
“evidence revealing the nature of the burden”).
21

Other than noting

"significant expenses" associated with foreign depositions and the
possibility of "significant delays," the defendants make no showing
of undue burden.
may

be

(Def. Memo. at 11).

alleviated

by

allowing

Further, some of these costs

defendants'

counsel

to

appear

telephonically.

Although "obtaining evidence through the Hague

convention

letters

and

rogatory

[can

be]

and

cumbersome

inefficient," Rabbi Jacob Joseph School v. Allied Irish Banks, PLC,
No.

11 CV 5801,

2012 WL 3746220,

at *7

(E.D.N.Y. Aug.

27,

2012)

(collecting cases), on the whole, the defendants' general arguments
as

to

burden

depositions,

do
which

not
are

outweigh

the

likely

to

probable
assist

in

benefit

of

these

establishing

the

elements of class certification.
Conclusion
For the reasons articulated above,

I will issue the letters

rogatory seeking the assistance of 'the British and French courts in
taking deposition testimony upon oral examination of the specified
third-party witnesses.

SO ORDERED.

C. FRANCIS IV
UNITED STATES MAGISTRATE JUDGE

22

Dated: New York, New York
March 31, 2014
Copies mailed this date:

Matthew T. Schwartz, Esq.

Brian S. Levenson, Esq.

Schwartz & Ponterio, PLLC

134 W. 29th St.

New York, NY 10128

Jason L. Solotaroff, Esq.

Oren Giskan, Esq.

Giskan, Solotaroff & Anderson, LLP

11 Broadway

Suite 2150

New York, NY 10004

Kenneth L. Steinthal, Esq.

Joseph R. Wetzel, Jr., Esq.

King & Spalding LLP

101 2nd St., Suite 2300

San Francisco, CA 94105

A. John P. Mancini, Esq.

Alison K. Levine, Esq.

Matthew D. Ingber, Esq.

Mayer Brown LLP

1675 Broadway

New York, NY 10019

Vera Ranieri, Esq.
Greenberg Traurig LLP
4 Embarcadero Center, Suite 3000
San Francisco, CA 94111
Gabrielle Levin, Esq.
Gibson, Dunn & Crutcher, LLP
200 Park Avenue, 48th Floor
New York, NY 10166-0193
Gail E. Lees, Esq.
Gibson, Dunn & Crutcher, LLP
333 South Grand Avenue
Los Angeles, CA 90071-3197
23