Blagman v. Apple, Inc. et al

Filing 127

MEMORANDUM AND ORDER granting 111 Motion to Amend/Correct 111 MOTION to Amend/Correct Amended Complaint. For the foregoing reasons, the plaintiff's motion to file a second amended complaint (Docket no. 111) is granted. (Signed by Magistrate Judge James C. Francis on 5/19/2014) Copies Mailed By Chambers. (ja) Modified on 5/20/2014 (ja).

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, has moved, pursuant to Rule
15(a)(2) of the Federal Rules of Civil Procedure, for leave to file
a second amended complaint.

For the following reasons, the motion

is granted.
Background
Mr. Blagman brings this action individually and on behalf of
a proposed class, alleging that the defendants -- Apple Inc.,
Amazon.com,

Inc.,

Google

Inc.,

eMusic.com

Inc.,

Microsoft

Corporation, The Orchard Enterprises, Inc., and Orchard Enterprises
1

NY, Inc. -- illegally reproduced and distributed musical works
without

acquiring

licenses

for

the

underlying

(Amended Complaint (“Am. Compl.”), ¶¶ 1-8, 51-52).

compositions.
This alleged

systemic failure to secure proper licensing occurs in a two-step
process.

First, certain record labels and aggregators, including

defendant Orchard Enterprises, collect digital recordings and
supply them to digital music stores.

(Am. Compl., ¶¶ 84, 99-111).

The defendants Amazon, Apple, Emusic, Google, and Microsoft (the
“Retailer Defendants”), who make up almost the whole of the U.S.
digital music industry, acquire these songs from the aggregators
and offer them for sale in their online music stores.
¶¶ 14-18, 87-98).

(Am. Compl.,

According to the Amended Complaint, neither the

labels and aggregators who collect and upload recordings to the
U.S.-based online stores run by the Retailer Defendants, nor the
Retailer Defendants themselves, ensure that the recordings sold to
consumers are properly licensed.

(Am. Compl., ¶¶ 42-48, 51-52,

91-92, 94, 100, 103-104).
The plaintiff filed his original complaint in July 2012.
Three months later, he submitted an Amended Complaint, identifying
a class that includes“[a]ll persons or entities who own all or part
of one or more registered copyrighted musical compositions that
have been reproduced, distributed, or sold by Defendants.”
Compl., ¶ 52).

(Am.

On October 26, 2012, the defendants filed a motion
2

to dismiss and to strike the class allegations, and discovery was
stayed pending a decision on the motion.

The Honorable Andrew L.

Carter, U.S.D.J., denied the defendants’ motion on May 20, 2013,
and lifted the stay.

Blagman v. Apple Inc., No. 12 Civ. 5453, 2013

WL 2181709, at *8 (S.D.N.Y. May 20, 2013).
The plaintiff now requests leave to file a second amended
complaint, “narrow[ing] the scope of the class significantly,”
adding “more specific allegations” as to the infringing conduct,
and including two separate claims for unauthorized importation and
exportation

under

§

602

of

the

Copyright

Act.

(Plaintiff’s

Memorandum of Law in Support of Motion for Leave to File Second
Amended Complaint (“Pl. Memo.”) at 1).

The amendment changes the

current class definition by limiting the class to composition
copyright

holders

whose

songs

were

provided

to

the

Retailer

Defendants by 69 allegedly “unlawful” record labels.

(Second

Amended Class Action Complaint and Demand for Jury Trial (“2d Am.
Compl.”), attached as Exh. A to Declaration of Jason L. Solotaroff
dated March 4, 2014, ¶ 58; Pl. Memo. at 1, 3).

The addition of §

602 claims is in response to my ruling on November 19, 2013,
precluding discovery into extraterritorial sales because import and
export

claims

Complaint.

were

not

specifically

included

in

the

Amended

(Order dated Nov. 20, 2013; Pl. Memo. at 1).

The

defendants oppose the motion, contending that it is untimely,
3

prejudicial, and ultimately futile.

(Defendants’ Opposition to

Plaintiff’s Motion for Leave to File Second Amended Complaint
(“Def. Memo.”) at 7-19).

They characterize the proposed complaint

as adding four new theories of infringement and dramatically
changing the class definition.

(Def. Memo. at 1).

Specifically,

these new methods of infringement include “pirating” recordings,
providing defective compulsory license notices, and importing and
exporting infringing works.

(Def. Memo. at 5).

Discussion
Rule 15 of the Federal Rules of Civil Procedure provides that
courts

should

requires.”

“freely

give”

leave

to

amend

“when

justice

so

Fed. R. Civ. P. 15(a)(2); see also Foman v. Davis, 371

U.S. 178, 182 (1962); Aetna Casualty & Surety Co. v. Aniero
Concrete Co., 404 F.3d 566, 603–04 (2d Cir. 2005).

The Second

Circuit has stated that “[t]his permissive standard is consistent
with our strong preference for resolving disputes on the merits.”
Williams v. Citigroup Inc., 659 F.3d 208, 212–13 (2d Cir. 2011)
(internal quotation marks omitted).

Motions to amend should

therefore by denied only for reasons of undue delay, bad faith or
dilatory motive, undue prejudice to the non-moving party, or
futility.

See Burch v. Pioneer Credit Recovery, Inc., 551 F.3d

122, 126 (2d Cir. 2008) (citing Foman, 371 U.S. at 182); McCarthy
v. Dun & Bradstreet Corp., 482 F.3d 184, 200 (2d Cir. 2007).
4

The

court has broad discretion over such motions.

See McCarthy, 482

F.3d at 200.
A. Delay
As the Second Circuit has repeatedly recognized, “[m]ere
delay, [] absent a showing of bad faith or undue prejudice, does
not provide a basis for a district court to deny the right to
amend.”
843,

State Teachers Retirement Board v. Fluor Corp., 654 F.2d

856

(2d

Cir.

1981);

see

Parker

v.

Columbia

Pictures

Industries, 204 F.3d 326, 339 (2d Cir. 2000); Rotter v. Leahy, 93
F. Supp. 2d 487, 497 (S.D.N.Y. 2000) (“Typically, the moving
party’s

delay,

standing

foreclose amendment.”).

alone,

is

not

sufficient

reason

to

Where a significant period of time has

passed prior to filing a motion to amend, however, the moving party
must provide an explanation for the delay. Zubulake v. UBS Warburg
LLC, 231 F.R.D. 159, 162 (S.D.N.Y. 2005).
Here,

the

defendants

argue

that

the

delay

is

“[u]nconscionable” and unexplained, coming twenty months after the
suit was filed and three months after I found that violations of §
602 were not alleged in the Amended Complaint.
7).

(Def. Memo. at 6-

The plaintiff counters that, because discovery was stayed

while the motion to dismiss was pending and did not begin until a
discovery plan was negotiated in October 2013, the real time period
at issue is less than five months.
5

(Plaintiff’s Reply Memorandum

of Law in Support of Motion for Leave to File Second Amended
Complaint (“Reply”) at 2-3).

Much of the delay, according to the

plaintiff, can be attributed to the defendants’ “insistence on
extensive time-consuming negotiation . . . for every item of
discovery.”

(Reply at 3).

The plaintiff attributes the new

allegations in the complaint and the refined class definition to
information revealed during discovery.

(Reply at 6 (contending

that discovery enabled identification of the defendant’s major
suppliers, whose “location, identify and [] extent of involvement
. . . were previously unknown”)).

While the defendants argue that

much of the new information does not come from discovery (Def.
Memo. at 5, 8-9), “even vague or thin reasons are sufficient, in
the absence of prejudice or bad faith.”

Duling v. Gristede’s

Operating Corp., 265 F.R.D. 91, 98 (S.D.N.Y. 2010) (internal
quotation marks omitted).
To the extent that the defendants claim that Mr. Blagman’s
delay was strategic (Def. Memo. at 8-9), they provide no showing of
bad faith apart from the delay itself.
point

to

the

production

of

agreements

Although the defendants
with

major

labels

as

particular discovery that would have been unnecessary under the
newly defined proposed class (Def. Memo. at 11), it is plausible to
infer that this discovery was a means to narrow the plaintiff’s
claims (Reply at 7).

And while the plaintiff did delay seeking
6

leave to amend until after certain scheduled depositions (Reply at
5), he asserts that these depositions were “necessary regardless of
the amendment.”

(Reply at 5).

Finally, courts in this Circuit have routinely granted leave
to amend where the delay was much longer than even the twenty
months that have elapsed since the plaintiff first filed this
lawsuit.

See Commander Oil Corp. v. Barlo Equipment Corp., 215

F.3d 321, 333 (2d Cir. 2000) (no abuse of discretion in grant of
leave to amend after seven year delay, in absence of prejudice);
Rachman Bag Co. v. Liberty Mutual Insurance Co., 46 F.3d 230, 235
(2d Cir. 1995) (leave to amend properly granted after four-year
delay); Block v. First Blood Associates, 988 F.2d 344, 350-51 (2d
Cir. 1993) (amendment allowed four years after complaint filed);
Margel v. E.G.L. Gem Lab Ltd., No. 04 Civ. 1514, 2010 WL 445192, at
*10 (S.D.N.Y. Feb. 8, 2010) (collecting cases).

Because “mere

delay is not sufficient evidence of bad faith to merit denial of a
motion to amend,” Danaher Corp. v. Travelers Indem. Co., No. 10
Civ. 0121, 2013 WL 150027, at *4 (S.D.N.Y. Jan. 10, 2013), and the
time period at issue here is not substantial, the defendant must
show prejudice in connection with delay to warrant denial of the
motion to amend.
B. Undue prejudice
“Prejudice to the opposing party . . . has been described as
7

the most important reason for denying a motion to amend.”

Frenkel

v. New York City Off–Track Betting Corp., 611 F. Supp. 2d 391, 394
(S.D.N.Y. 2009) (internal quotation marks omitted).
undue prejudice justifies denial of leave to amend.

However, only
See A.V. by

Versace, Inc. v. Gianni Versace S.p.A., 87 F. Supp. 2d 281, 299
(S.D.N.Y. 2000); see also Oneida Indian Nation of New York State v.
County of Oneida, 199 F.R.D. 61, 77 (N.D.N.Y. 2000) (noting where
moving party provides explanation for delayed amendment, opposing
party must make “greater showing” of prejudice). Prejudice results
when the proposed amendment would “‘(i) require the opponent to
expend significant additional resources to conduct discovery and
prepare for trial; (ii) significantly delay the resolution of the
dispute; or (iii) prevent the plaintiff from bringing a timely
action in another jurisdiction.’”

Monahan v. New York City

Department of Corrections, 214 F.3d 275, 284 (2d Cir. 2000)
(quoting Block, 988 F.2d at 350); Adams v. City of New York, __ F.
Supp. 2d __, __, 2014 WL 309640, at *11 (E.D.N.Y. 2014).

Whether

a party had prior notice of a claim and whether the new claim
arises from the same transaction as the claims in the original
pleading are central to this determination.
at 284.

See Monahan, 214 F.3d

The moving party bears the burden “of demonstrating that

substantial prejudice would result were the proposed amendment to
be granted.”

Oneida Indian Nation, 199 F.R.D. at 77 (internal
8

quotation marks omitted); see also ResQNet.com v. Lansa, Inc., 382
F. Supp. 2d 424, 449 (S.D.N.Y. 2005), rev’d on other grounds, 594
F.3d 860 (Fed. Cir. 2010).
Prejudice may arise when a proposed amendment opens the door
to substantial expenditures of time and money.
at 284.

Monahan, 214 F.3d

Although the plaintiff asserts that the new import and

export claims under § 602 “will not require significant additional
discovery,” it is clear that this amendment will open previously
prohibited areas of discovery.

(Pl. Memo. at 2).

This may also be

true insofar as specific discovery into recording “piracy” and
defective

compulsory

licensing

may

be

warranted.

However,

“[a]llegations that an amendment will require the expenditure of
additional time, effort, or money do not [themselves] constitute
undue prejudice.”

A.V. by Versace, Inc., 87 F. Supp. 2d at 299

(internal quotation marks omitted). An “‘adverse party’s burden of
undertaking discovery, standing alone, does not suffice to warrant
denial of a motion to amend a pleading.’”

JPMorgan Chase Bank,

N.A. v. IDW Group, LLC, No. 08 Civ. 9116, 2009 WL 1357946, at *4
(S.D.N.Y. May 12, 2009) (quoting United States v. Continental
Illinois National Bank & Trust Co. of Chicago, 889 F.2d 1248, 1255
(2d Cir. 1989)); see also Margel, 2010 WL 445192, at *12 (noting
that “[t]he prejudice that would flow from any additional required
discovery

can

generally

be

mitigated
9

by

adjustments

to

the

discovery schedule,” and collecting cases).
This action has been intensively litigated to date, with
corresponding costs incurred by both sides.

However, discovery is

still underway, and neither a summary judgment briefing schedule
nor a trial date has been set.
1357946,

at

*5

(granting

See JPMorgan Chase Bank, 2009 WL

motion

to

amend

where

no

pending

dispositive motions or trial date, and “the legal issues raised by
the proposed amendment . . . overlap considerably with . . . the
original claims.”).

Therefore, although additional discovery may

be warranted, the amendments should not significantly prolong the
resolution of the action.
Amending a complaint to add color and detail gleaned from
discovery is permissible. See Friedl v. City of New York, 210 F.3d
79, 88 (2d Cir. 2000) (amendment allowed after discovery revealed
additional

relevant

facts);

In

re

Pfizer

Inc.

Securities

Litigation, No. 05 MD 1688, 2012 WL 983548, at *3 (S.D.N.Y. March
22, 2012); Bridgeport Music, Inc. v. Universal Music Group, Inc.,
248 F.R.D. 408, 417 (S.D.N.Y. 2008). However, some of what the
plaintiff describes as “more specific allegations,” (Pl. Memo. at
1), the defendants consider to be new theories of infringement
requiring additional discovery (Def. Memo. at 2, 5 & n.6).

In

particular, the defendants contend that the plaintiff is for the
first

time

asserting

infringement
10

by

means

of

pirated

sound

recordings and defective compulsory licenses.

(Def. Memo. at 5 &

n.6).
Although these are new methods of infringement, they are
closely related to the plaintiff’s original claims.

Indeed, the

essence of the plaintiff’s claim remains the same, which is that
the defendants infringe on copyrights by failing to ensure that the
recordings they offer for sale are properly licensed.

See Haddock

v. Nationwide Financial Services Inc., 514 F. Supp. 2d 267, 271 (D.
Conn. 2007) (allowing amendment where plaintiff’s legal theory of
the case “simply evolved throughout the course of discovery” and
new claim was “merely a variation” on previous claims); Naylor v.
Rotech Healthcare, Inc., 679 F. Supp. 2d 505, 509 (D. Vt. 2009).
“The fact that a proposed amendment would add new issues is
normally

not

prejudicial

unless

the

opposing

party

would

be

confronted with some unique difficulty in defending against the new
issues.”

Duling, 265 F.R.D. at 102; see also Taberna Capital

Management, LLC v. Jaggi, No. 08 Civ. 11355, 2010 WL 1424002, at *2
(S.D.N.Y. April 9, 2010) (allowing amendment that arguably “adds
new legal theories and is likely to expand the scope of discovery
significantly” where defendant did not demonstrate “this would
prejudice his ability to carry out his defense”).
circumstances,

and

given

Rule

15(a)’s

defendants cannot show undue prejudice.
11

liberal

Under these
standard,

the

C. Futility
Leave to amend may also be denied as futile when the pleading
would not survive a motion to dismiss. See AEP Energy Services Gas
Holding Co. v. Bank of America, N.A., 626 F.3d 699, 726 (2d Cir.
2010); Slay v. Target Corp., No. 11 Civ. 2704, 2011 WL 3278918, at
*2 (S.D.N.Y. July 20, 2011) (“Futility generally turns on whether
the proposed amended pleading states a viable claim.”); Penn Group,
LLC v. Slater, No. 07 Civ. 729, 2007 WL 2020099, at *4 (S.D.N.Y.
June 13, 2007) (collecting cases).

Under this standard, “‘[t]he

issue is not whether a plaintiff will ultimately prevail but
whether the claimant is entitled to offer evidence to support the
claims.’”

Todd v. Exxon Corp., 275 F.3d 191, 198 (2d Cir. 2001)

(alteration in original) (quoting Scheuer v. Rhodes, 416 U.S. 232,
236 (1974)). The opposing party must establish that granting leave
to amend would be futile.

Sotheby’s, Inc. v. Minor, No. 08 Civ.

7694, 2009 WL 3444887, at *3 (S.D.N.Y. Oct. 26, 2009); ResQNet.com,
382 F. Supp. 2d at 449.

The defendants contend that the proposed

amendment would be futile because the allegation of unauthorized
importation fails to state a claim and because the proposed class
cannot be certified.
1. Unauthorized Importation Claims under Section 602
The defendants allege that the unauthorized importation claims
must

fail

because

the

plaintiff
12

has

not

alleged

that

the

phonorecords at issue were “acquired outside the United States.”
17 U.S.C. § 602(a)(1); (Def. Memo. at 12).

However, in addition

to expressly alleging unauthorized importation and exportation, the
Proposed

Amended

Complaint

also

contains

specific

factual

allegations concerning certain labels operating outside of the
United States.

(2d Am. Compl., ¶¶ 140, 142, 144-155).

According

to the Proposed Amended Complaint, these foreign labels do not have
import

authorization

to

sell

digital

music

Defendants’ online U.S. music stores, yet do so.
¶¶ 142, 147, 151).

in

the

Retailer

(2d Am. Compl.,

These allegations are sufficient to support a

plausible inference that the defendants violated § 602 through
unauthorized importation.
2. Class Certification
Although the futility inquiry is generally focused on whether
the proposed amendments fail to state a claim, when proposing to
amend

class

allegations,

courts

instead

evaluate

whether

the

amendment “will enhance the likelihood of class certification.”
Duling, 265 F.R.D. at 104 n.6; Pierre v. JC Penney Co., Inc., No.
03-CV-4782, 2006 WL 407553, at *6 (E.D.N.Y. Feb. 21, 2006) (“[I]f
after viewing the amendment in the light most favorable to the
plaintiff, the court finds the proposed class cannot be certified
under Rule 23, leave to amend will be denied.”). But see In re
LIBOR-Based Financial Instruments Antitrust Litigation, 962 F.
13

Supp. 2d 606, 634-35 (S.D.N.Y. 2013) (finding “the propriety of
class treatment” not relevant at pre-certification motion to amend
stage).

The defendants urge the Court to apply this standard to

the current motion (Def. Memo. at 12-13), while the plaintiff
counters that such analysis would be premature, as discovery has
yet to end

(Reply at 9).

Judge Carter’s prior determination that the class allegations
are sufficient to withstand a motion to dismiss is the law of the
case.

Blagman, 2013 WL 2181709, at *5-7.

Leave to amend should

therefore be denied for futility only where “the proposed amendment
would, on its face, violate class action requirements.” Feldman v.
Lifton, 64 F.R.D. 539, 543 (S.D.N.Y. 1974); see Calibuso v. Bank of
America Corp., 893 F. Supp. 2d 374, 386 (E.D.N.Y. 2012) (“[G]iven
the existence of a plausible claim based upon the pleadings,
defendants’ motion is premature in this case, and plaintiffs should
be given an opportunity to set forth their proof of commonality at
the

class

certification

stage.”);

Academy

of

Ambulatory

Foot

Surgery (AAFS) v. American Podiatry Association, 516 F. Supp. 378,
383 (S.D.N.Y. 1981) (allowing pre-certification amendment changing
class

definition

because

defendants’

arguments

against

certification were “more appropriately addressed in the context of
motions to certify the proposed classes”).
“[T]he court’s inquiry into the class action requirements at
14

the pleading amendment stage[] is limited.”

Hallmark v. Cohen &

Slamowitz, LLP, 283 F.R.D. 136, 141 (W.D.N.Y. 2012). Although precertification motions to amend have been denied as unlikely to
succeed in certification, see Presser v. Key Food Stores Coop.,
Inc., 218 F.R.D. 53, 57 (E.D.N.Y. 2003) (denying in part motion to
amend

to

convert

individual

claim

into

class

action),

such

amendments are generally rejected only where they fail to overcome
deficiencies already identified in a class certification motion,
see, e.g., Orthocraft, Inc. v. Sprint Spectrum L.P., No. 98-CV5007, 2002 WL 31640477, at *2 (E.D.N.Y. Nov. 16, 2002); Luedke v.
Delta Air Lines, Inc., No. 92 Civ. 1778, 1993 WL 313577, at *4
(S.D.N.Y. Aug. 10, 1993). Here, by contrast, the plaintiff’s class
claims have survived a motion to strike and a motion to dismiss.
The only reason that determination is not fully dispositive is that
it applied a standard slightly different from that applicable on a
motion to amend.
a. Standing
The
copyright

proposed
holders

amendment
whose

limits

works

were

the

class

provided

to
to

Defendants by 69 identified labels and aggregators.

composition
the

Retailer

This revised

definition, which is narrower than the current putative class, does
not disturb Judge Carter’s previous determination on standing.
Blagman, 2013 WL 2181709, at *5-6.
15

b. Requirements of Rule 23
Although Judge Carter’s opinion denied the defendants’ motion
to dismiss the class claims, it did so based on the substantive
sufficiency of those claims; that opinion did not specifically
address the Rule 23 factors.

Rule 23(a) of the Federal Rules of

Civil Procedure sets forth a four-part test for certifying a class:
(1) the class is so numerous that joinder of all members is
impracticable; (2) there are questions of law or fact common to the
class; (3) the claims or defenses of the representative parties are
typical of the claims or defenses of the class; and (4) the
representative parties will fairly and adequately protect the
interests of the class.

See Fed. R. Civ. P. 23(a)(1)-(4); see also

Teamsters Local 445 Freight Division Pension Fund v. Bombardier
Inc., 546 F.3d 196, 201-02 (2d Cir. 2008) (“In determining whether
class certification is appropriate, a district court must first
ascertain whether the claims meet the preconditions of Rule 23(a)
. . . .”).

In addition to establishing numerosity, commonality,

typicality, and adequacy, the class claims must also satisfy the
requirements of one of the three subsections of Rule 23(b).

Fed.

R. Civ. P. 23(b); see Brown v. Kelly, 609 F.3d 467, 476 (2d Cir.
2010).

Rule 23(b)(3) allows a class to proceed only where “the

questions of law or fact common to class members predominate over
any questions affecting only individual members, and [] a class
16

action is superior to other available methods for fairly and
efficiently

adjudicating

the

controversy.”

Fed.

R.

Civ.

P.

23(b)(3).
In addition to these tests, “courts in this district have also
grafted

an

implicit

‘ascertainability

certification process.”

requirement’

upon

the

Flores v. Anjost Corp., 284 F.R.D. 112,

122 (S.D.N.Y. 2012) (collecting cases); see Enea v. Bloomberg,
L.P., No. 12 Civ. 4656, 2014 WL 1044027, at *3

(S.D.N.Y. March 17,

2014) (describing “implicit requirement of class ‘definiteness and
ascertainability’”). The ascertainability requirement is intended
to ensure that “the class description is sufficiently definite so
that it is administratively feasible for the court to determine
whether a particular individual is a member.”

Stinson v. City of

New York, 282 F.R.D. 360, 373 (S.D.N.Y. 2012) (internal quotation
marks omitted).

The defendants challenge the viability of the

class, alleging that it is unascertainable and fails to satisfy the
commonality and predominance requirements of Rule 23.1 (Def. Memo.

1

The defendants also contest, in a footnote, whether the
plaintiff can meet the typicality and adequacy requirements of Rule
23(a). (Def. Memo. at 16 n.12). Because Mr. Blagman’s copyrighted
works were created before 1978, they are governed by the Copyright
Act of 1909 and not the Copyright Act of 1976. See Silverman v.
CBS Inc., 632 F. Supp. 1344, 1349-50 (S.D.N.Y. 1986) (“The
requirements for, and duration of, copyright protection vary,
depending on the law in effect when a work was created.”), aff’d in
part, vacated in part on other grounds, 870 F.2d 40 (2d Cir. 1989).
Depending on when the majority of putative class members created
17

at 15-19).
The requirement of commonality ensures that class members’
claims “share a common question of law or fact.”

Cohen v. J.P.

Morgan Chase & Co., 262 F.R.D. 153, 158 (E.D.N.Y. 2009); In re
IndyMac Mortgage–Backed Securities Litigation, 286 F.R.D. 226, 233
(S.D.N.Y. 2012).

“The commonality standard does not mandate that

the claims of the lead plaintiff be identical to those of all other
plaintiffs,” but does “require[ ] that plaintiffs identify some
unifying thread among the members’ claims that warrant[s] class
treatment.” Kowalski v. Yellowpages.com, No. 10 Civ. 7318, 2012 WL
1097350, at *13 (S.D.N.Y. March 31, 2012) (second alteration in
original) (internal quotation marks omitted).
court

may

find

a

common

issue

of law even though there exists

‘some factual variation among class members’
. . . .’”

Therefore, “[a]

specific grievances

Dupler v. Costco Wholesale Corp., 249 F.R.D. 29, 37

(E.D.N.Y. 2008) (quoting In re Playmobil Antitrust Litigation, 35
F. Supp. 2d 231, 240 (E.D.N.Y. 1998)).
The predominance inquiry imposed by Rule 23(b)(3) of the
Federal Rules of Civil Procedure “‘tests whether proposed classes
are

sufficiently

cohesive

to

warrant

adjudication

by

their works, this may undermine the connection between Mr.
Blagman’s individual claims and the class claims. However, because
this argument is hypothetical until there is further clarity on the
actual make-up of the class, I decline to address it.
18

representation.’” In re Nassau County Strip Search Cases, 461 F.3d
219, 225 (2d Cir. 2006) (quoting In re Visa Check/MasterMoney
Antitrust Litigation, 280 F.3d 124, 136 (2d Cir. 2001)); accord
Jackson v. Bloomberg, L.P., __ F.R.D. __, __, 2014 WL 1088001, at
*11 (S.D.N.Y. 2014).

“Class-wide issues predominate if resolution

of some of the legal or factual questions that qualify each class
member’s case as a genuine controversy can be achieved through
generalized

proof,

and

if

these

particular

issues

are

more

substantial than the issues subject only to individualized proof.”
Moore v. PaineWebber, Inc., 306 F.3d 1247, 1252 (2d Cir. 2002); see
Kottler v. Deutsche Bank AG, No. 05 Civ. 7773, 2010 WL 1221809, at
*3 (S.D.N.Y. March 29, 2010) (requiring plaintiff show that “common
proof will predominate at trial with respect to the essential
elements of liability of the underlying causes of action” (internal
quotation marks omitted)).

The plaintiff is also required to show

that damages may be calculated “consistent with the classwide
theory of liability and [are therefore] capable of measurement on
a

classwide

basis.”

In

re

U.S.

Foodservice

Inc.

Pricing

Litigation, 729 F.3d 108, 123 n.8 (2d Cir. 2013). The predominance
requirement is related to commonality, but “is a more demanding
criterion.”

Moore, 306 F.3d at 1252; see New Jersey Carpenters

Health Fund v. DLJ Mortgage Capital, Inc., No. 08 Civ. 5653, 2014
WL 1013835, at *8 (S.D.N.Y. March 17, 2014).
19

The defendants argue that, because the plaintiff provides a
variety of ways through which the defendants allegedly infringe the
class

members’

works,

individualized

inquiry

into

both

the

infringing conduct and the resulting damages will be necessary.
(Def. Memo. at 17-18).

Mr. Blagman responds that these arguments

are premature in light of ongoing discovery.

(Reply at 9).

He

further asserts that, as revealed by deposition testimony, common
answers will apply to entire swaths of compositions on a label-bylabel basis, therefore satisfying the commonality and predominance
requirements.

(Reply

at

10

(“The

recordings

embodying

the

compositions at issue did not arrive in the Defendants’ stores one
by one; deposition testimony establishes that they were provided en
masse, thousands at a time, by labels that violate the law in the
same way.”)).
Mr.

Blagman’s

individual

claims

are

based

on

the

same

underlying legal theory as the proposed class and arise from the
same course of conduct, which is the alleged systemic failure of
the defendants to ensure that the songs sold in their online music
stores were appropriately licensed.

It is likely that there will

be some variation in how and whether infringement occurred, but
“‘[a]s long as a sufficient constellation of common issues binds
class members together, variations in the sources and application
of [a defense] will not automatically foreclose class certification
20

under Rule 23(b)(3).’”

In re Visa Check/MasterMoney Antitrust

Litigation, 280 F.3d at 139 (alterations in original) (quoting
Waste Management Holdings v. Mowbray, 208 F.3d 288, 296 (1st Cir.
2000)).

Mr. Blagman also asserts that there will be common

determinations of liability, at least on a label-wide basis.
(Reply at 10).

Given the limited inquiry to be undertaken at this

stage, and the possibility that theories of liability may be
limited at the certification stage to only those capable of
classwide proof, there is a reasonable likelihood of certification.
Although the defendants have highlighted serious issues that may
indeed capsize the plaintiff’s class allegations, these arguments
are

more

appropriately

weighed

in

the

context

of

a

class

certification motion.
The defendants also assert that the class is not properly
ascertainable because determining the membership of the proposed
class would require the Court to engage in several fact-intensive,
individualized

inquiries.

(Def.

Memo.

at

15).

All

of

the

recordings provided by the 69 identified labels and distributed by
the defendants would have to be compared and potentially matched to
the compositions registered with the Copyright Office. (Def. Memo.
at 15).

This would necessarily entail an individualized inquiry,

as “many songs” are recorded with titles that differ from the title
of the underlying copyrighted composition.
21

(Def. Memo. at 15).

After

determining

which

phonorecords

embodied

registered,

copyrighted compositions, the owner of the copyright would have to
be identified.

As example of the complications that might arise,

the defendants point to the evolution in ownership rights of one of
Mr. Blagman’s compositions referenced in the Amended Complaint
(“It’ll Never Be Over For Me”).

(Def. Memo. at 16).

The plaintiff

counters that copyright holders can be easily identified through
the use of database services used to obtain licensing.

(Reply at

10).
In any event, the ascertainability requirement “is designed
only to prevent the certification of a class whose membership is
truly indeterminable.” Gortat v. Capala Brothers, Inc., No. 07-CV3629, 2010 WL 1423018, at *2 (E.D.N.Y. April 9, 2010).

In light of

this standard, and because this determination is best suited for a
motion for class certification, the class definition may be amended
notwithstanding

the

defendants’

concerns

regarding

ascertainability.

See Noble v. 93 University Place Corp., 224

F.R.D. 330, 338 (S.D.N.Y. 2004) (“Class members need not be
ascertained prior to certification, but must be ascertainable at
some point in the case.”).
Conclusion
For the foregoing reasons, the plaintiff’s motion to file a
second amended complaint (Docket no. 111) is granted.
22

SO ORDERED.

JAMES C. FRANCIS IV
UNITED STATES MAGISTRATE JUDGE

Dated:

New York, New York
May 19, 2014

Copies mailed this date to:
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
Mary K. Bates, Esq.
King & Spalding LLP
1180 Peachtree St., NE
Atlanta, GA 30309
A. John P. Mancini, Esq.
Alison K. Levine, Esq.
Matthew D. Ingber, Esq.
Mayer Brown LLP
1675 Broadway
New York, NY 10019
23

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.
Scott A. Edelman, Esq.
Gibson, Dunn & Crutcher, LLP
333 South Grand Avenue
Los Angeles, CA 90071-3197

24