Palm Valley Music LLC v. Citizen Watch Company of America, Inc.

Filing 53

ORDER granting 36 Letter Motion to Seal; granting 37 Letter Motion for Local Rule 37.2 Conference; granting 38 Letter Motion for Local Rule 37.2 Conference; granting 39 Letter Motion to Seal; granting 43 Letter Motion to Seal; granting [ 50] Letter Motion for Extension of Time to Complete Discovery. For the reasons discussed during the conference, defendant's September 3, 2024 letter-motion is GRANTED to the extent that, no later than October 24, 2024, plaintiff must produce: a s further set forth in this Order. It is further ORDERED that the parties' sealing motions at Dkts. 36, 39, and 43 are GRANTED, for substantially the reasons set forth therein, such that the parties' filings at Dkts. 37, 40, and 45 shall re main under seal. It is further ORDERED that the parties' joint letter motion (Dkt. 50) to extend the expert discovery deadline is GRANTED, and that: The deadline for plaintiff's expert report(s) is now November 7, 2024. The deadline for def endant's expert report(s) is now December 6, 2024. The deadline for the completion of all discovery is now December 20, 2024. No further extensions of these deadlines will be granted absent compelling circumstances. All relief not explicitly granted herein is DENIED. The Clerk of Court is respectfully directed to close the motions at Dkts. 36, 37, 38, 39, 43, and 50. SO ORDERED. ( Discovery due by 12/20/2024.). (Signed by Magistrate Judge Barbara C. Moses on 9/25/2024) (sgz)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

9/25/2024

PALM VALLEY MUSIC LLC,
Plaintiff,

24-CV-1637 (CM) (BCM)

-againstORDER
CITIZEN WATCH COMPANY OF AMERICA,
INC. d/b/a BULOVA,
Defendant.
BARBARA MOSES, United States Magistrate Judge.
Plaintiff Palm Valley Music LLC (Palm Valley) alleges that it is the exclusive owner of
the copyright to the musical composition "Fly Me To The Moon (In Other Words)" (Fly Me).
Compl. (Dkt. 1) ¶ 5. Plaintiff seeks copyright infringement damages from Citizen Watch
Company of America, Inc. d/b/a Bulova (Bulova), alleging that Bulova used Fly Me, without
authorization, in television commercials and online promotions for its "Frank Sinatra"
wristwatches. Id. ¶¶ 1, 7.
The most significant damages-related issue in the case appears to be the value of a
reasonable license fee for Bulova's use of Fly Me. In its Supplemental Initial Disclosures
Pursuant to Federal Rule of Civil Procedure 26(a)(1) (Dkt. 26-2), dated June 17, 2024, plaintiff
claimed damages of $3.75 million, based on three prior licenses, but did not explain its
calculation. On July 22, 2024, I ordered Palm Valley to "serve an updated damages computation
in accordance with Fed. R. Civ. P. 26(a)(1)(A)(iii), providing a reasoned explanation, based on
the information now reasonably available to it, as to how it derived its estimate of $3.75 million
in lost licensing revenue from the three data points disclosed in its June 17, 2024 supplemental
disclosure." (Dkt. 31.) On August 1, 2024, Palm Valley served its Second Supplemental Initial
Disclosures Pursuant to Federal Rule of Civil Procedure 26(a)(1) (2d Supp. Disc.) (Dkt. 37-1),
attaching seven prior licenses that were "granted by Plaintiff for comparable uses of the

composition at issue, and of comparable compositions." 2d Supp. Disc. at 3. Of the seven
attached licenses, two were for Fly Me, four were for "Feeling Good" (Feeling Good) and one
was for "Cosmic Dancer." Id. Exs. A-G.
On September 3, 2024, defendant filed a letter-motion (Def. Ltr.) (Dkts. 37, 38)1 seeking
an order compelling Palm Valley to disclose, inter alia, all of its past "sync" licenses for Fly Me
(together with related entries in its license/quote database and communications concerning those
licenses); all of its past sync licenses for Feeling Good (together with related entries in its
license/quote database and communications concerning those licenses); and all of its past sync
licenses for the most popular compositions in its "TRO Essex" catalog (together with related
entries in its license/quote database and communications concerning those licenses). Def. Ltr. at
1-4. Spirited letter-briefing followed (see Dkts. 40, 41, 44, 45).2 By the time the parties appeared
for a discovery conference on September 24, 2024, plaintiff had agreed to produce the requested
Fly Me licenses and related documents, and to base its future license fee calculations in this
action solely on the Fly Me licenses. However, the parties remained at odds as to the requested
discovery concerning Feeling Good and other TRO Essex compositions.
For the reasons discussed during the conference, defendant's September 3, 2024 lettermotion is GRANTED to the extent that, no later than October 24, 2024, plaintiff must produce:
1.

All synchronization licenses for the composition Feeling Good that relate to use
of the song with audiovisual material for use in advertising or promoting a
product or service (whether or not categorized by plaintiff as "commercials");

1

A redacted version of defendant's letter-motion and its exhibits is filed in public view at Dkt. 38,
and an unredacted version is filed under seal at Dkt. 37.
2

A redacted version of plaintiff's opposition letter is filed in public view at Dkt. 41 and an
unredacted version (including exhibits) is filed under seal at Dkt. 40. A redacted version of
defendant's reply letter is filed in public view at Dkt. 44, and an unredacted version (along with
one exhibit) is filed under seal at Dkt. 45.
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2.

Printouts of all entries from plaintiff's database reflecting synchronization licenses
or quotes/inquiries for the composition Feeling Good that relate to use of the song
with audiovisual material for use in advertising or promoting a product or service
(whether or not categorized by plaintiff as "commercials"), at least to the extent
the licenses or quotes themselves have not been produced;
3. Responsive documents obtained by running a search for "Feeling Good" OR
"Feelin Good" OR "Feelin' Good" AND the same connectors that the plaintiff has
agreed to use to search for Fly Me-related documents, limited to the time period
2015 to the present.

After carefully considering the parties' written and oral arguments, as well as plaintiff's
recent reliance on its prior Feeling Good licenses as "comparable uses" of a "comparable
composition[]," 2d Supp. Disc. at 3, I conclude that the Feeling Good licenses and related
documents are relevant to the parties' claims and defenses, and that the discovery described
above is proportional to the needs of the case, as required by Fed. R. Civ. P. 26(b)(1). However,
the broader discovery sought by defendant into licenses for other popular compositions in
plaintiff's TRO Essex catalog is less obviously relevant to the damages calculation in this case,
and the corresponding burden on plaintiff would be significantly higher (particularly for the
electronic search requested by defendant, even if limited to the five most popular compositions,
as defendant proposed). As to these documents, therefore, I cannot conclude that the discovery
sought is proportional to the needs of the case.
It is further ORDERED that the parties' sealing motions at Dkts. 36, 39, and 43 are
GRANTED, for substantially the reasons set forth therein, such that the parties' filings at Dkts.
37, 40, and 45 shall remain under seal.

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It is further ORDERED that the parties' joint letter motion (Dkt. 50) to extend the expert
discovery deadline is GRANTED, and that:
•

The deadline for plaintiff's expert report(s) is now November 7, 2024.

•

The deadline for defendant's expert report(s) is now December 6, 2024.

•

The deadline for the completion of all discovery is now December 20, 2024.

No further extensions of these deadlines will be granted absent compelling circumstances.
All relief not explicitly granted herein is DENIED. The Clerk of Court is respectfully
directed to close the motions at Dkts. 36, 37, 38, 39, 43, and 50.
Dated: New York, New York
September 25, 2024

SO ORDERED.

________________________________
BARBARA MOSES
United States Magistrate Judge

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