United States District Court, S.D. New York
CAPITOL RECORDS, INC. et al., Plaintiffs,
MP3TUNES, LLC et al, Defendants.
MEMORANDUM AND ORDER
WILLIAM H. PAULEY III, District Judge.
The parties have filed nineteen motions in limine. Some seek to resurrect discovery disputes and legal determinations this Court decided previously. Others level an impressive array of claims and defenses, including perjury, fraud, and witness harassment. Many seek determinations on the merits rather a ruling on the admissibility of evidence. And a large number could have been obviated by good faith discussions among the parties.
For the following reasons, the motions in limine pending at ECF Nos. 394 and 419 are granted. The motions in limine pending at ECF Nos. 391, 399, 401, 409, 411, 413, 421, 423, and 429 are denied. And the motions in limine pending at ECF Nos. 381, 386, 396, 415, 417, 425, and 427 are granted in part and denied in part. This Court declines to rule on the motion pending at ECF No. 403 at this time.
I. Legal Standard
The purpose of an in limine motion is "to aid the trial process by enabling the Court to rule in advance of trial on the relevance of certain forecasted evidence, as to issues that are definitely set for trial, without lengthy argument at, or interruption of, the trial." Palmieri v. Defaria , 88 F.3d 136, 141 (2d Cir. 1996) (internal quotations omitted). Evidence should only be excluded on a motion in limine when it is "clearly inadmissible on all potential grounds." United States v. Paredes , 176 F.Supp.2d 179, 181 (S.D.N.Y.2001). Courts considering a motion in limine may reserve decision until trial so that the motion is placed in the appropriate factual context. See, e.g., Nat'l Union Fire Ins. Co. of Pittsburgh v. L.E. Myers Co. Grp. , 937 F.Supp. 276, 286-87 (S.D.N.Y. 1996).
II. Motions Regarding Ellis Horowitz
The motions in limine pending at ECF No. 381, 415, and 429 relate to errors identified in Exhibit X to the Declaration of Plaintiffs' Expert, Ellis Horowitz. (Ex. A-B to Sacks Decl. in Supp. of Mot., dated 9/13/13 (ECF No. 385).) Exhibit X to Horowitz's Declaration purports to identify which of Plaintiffs' copyrighted tracks were sideloaded by Robertson and other MP3tunes employees. Horowitz opined that Robertson had personally sideloaded 47 of Plaintiffs' copyrighted songs, while other MP3tunes employees had sideloaded 123. This Court granted summary judgment against Robertson for direct infringement of 32 of those 47 songs, but not the remaining 15 tracks where fact issues remained as to Plaintiffs' copyright ownership. Capitol Records, Inc. v. MP3tunes, LLC , 07 Civ. 9931 (WHP), 2013 WL 1987225, at *7-8 (S.D.N.Y. May 14, 2013) ("Reconsideration Order"). Because it was unclear whether the other MP3tunes employees had sideloaded the remaining 123 tracks in the course of their employment, those direct infringement claims are proceeding to trial.
A. Robertson's Motion to Preclude Testimony and Exhibits from Ellis Horowitz and Related Relief (ECF No. 381)
Robertson contends that Exhibit X contains serious errors, which resulted in summary judgment against Robertson for sideloading tracks that are not copyrighted by Plaintiffs. In preparing for trial, Robertson determined that Exhibit X did not identify the full name of the source URL from which each song was sideloaded. When Robertson viewed the full URL name in one of the MP3tunes databases, it suggested that the song actually sideloaded was not the song Horowitz identified. For example, Exhibit X indicates Robertson sideloaded the track "Get Along With You" by Kelis from http://www.john-ralston.com/music on May 9, 2006. When Robertson checked the date and time of that particular sideload on a comprehensive list of his sideloads (see Horowitz Decl. Ex. W6), it indicated that a John Ralston song-not a Kelis song-had been sideloaded. And Plaintiffs do not own the copyrights to John Ralston's music.
In all, Robertson determined that Exhibit X contains various errors invalidating 18 of the 47 direct infringement claims against him. An additional 15 of the 123 remaining claims against other MP3tunes employees are also based on erroneous information. Robertson contends that Horowitz's errors amount to fraud. He accuses Horowitz of assigning Plaintiffs' track names randomly to sideloaded files and misidentifying numerous songs in Robertson's locker. Robertson asserts that Horowitz truncated the URLs deliberately without cross-checking databases. That, Robertson argues, is tantamount to "intentional misconduct" that should be sanctioned. (Robertson Mem., dated 9/14/13 (ECF No. 382) at 6.) Robertson also seeks to preclude Horowitz's testimony and vacate the grant of summary judgment against him.
Plaintiffs concede that Robertson accurately identified errors in Exhibit X. They explain that the errors are due to an "internal inconsistency" in the Defendants' two databases and that the errors do not materially change the number of works in suit. Horowitz corrected the errors and determined that his prior work understand the number of Plaintiffs' songs sideloaded by Robertson and MP3tunes employees. Thus, while 18 of the original 47 songs were erroneously identified as belonging to Plaintiffs, they have now discovered an additional 27 of their songs Robertson directly sideloaded, for a grand total of 56 songs. For the other employees, though 15 songs were identified as erroneous, 29 new songs were identified, for a grand total of 137. Plaintiffs contend that Horowitz's errors stemmed from inadvertence, not fraud, and that Robertson bears the blame for failing to challenge Horowitz's conclusions before judgment was entered. Plaintiffs ask this Court to remove the erroneous songs and add the newly identified songs, thereby adjusting the number of direct infringement claims to 193.
This Court is troubled by the parties' conduct. While Robertson has no obligation to correct Plaintiffs' expert report, he did have a responsibility to challenge Horowitz's findings at the summary judgment stage. Robertson's decision to raise these errors after summary judgment is perplexing. And Robertson's failure to confer with Plaintiffs before filing a sanctions motion contravenes the Federal Rules. Equally troubling are Horowitz's mistakes, which led to entry of a judgment against Robertson on grounds that are now erroneous.
This Court exercises its informed discretion to vacate that portion of its summary judgment ruling imposing direct infringement liability on Robertson for the sideloads erroneously included in Horowitz's calculations. Further, this Court denies Plaintiffs' request to add newly discovered claims for direct infringement on the eve of trial. Finally, this Court declines to impose any other sanctions against Plaintiffs for Horowitz's errors and omissions. Accordingly, the motion in limine pending at ECF No. 381 is granted in part and denied in part. Depending on Robertson's cross-examination of Horowitz, this Court will give a limiting instruction to the jury so that testimony relating to Horowitz's errors in the summary judgment phase do not confuse the jury at trial. The parties are directed to submit proposed limiting instructions.
B. Plaintiffs' Motion to Preclude Challenges to Robertson's Direct Liability Based on Whether He Sideloaded the Works at Issue (ECF No. 429)
Plaintiffs' motion in limine pending at ECF No. 429 is denied in view of this Court's ruling on Robertson's motion pending at ECF No. 381 to preclude Horowitz's testimony and exhibits.
C. The Parties' Letter Motions Regarding Sur-Replies and Supporting Expert Declarations of Ellis Horowitz and Kyong Son (ECF Nos. 505 and 507)
Because no new direct infringement claims based on Horowitz's corrected declaration will proceed to trial, the parties' requests to file sur-replies and supporting declarations of Ellis Horowitz and Kyong Son are moot.
D. Plaintiffs' Motion to Preclude Testimony from Undisclosed Third-Party Witnesses (ECF No. 427)
Plaintiffs move to preclude Robertson from calling two witnesses he failed to disclose pursuant to Rule 26(a) and to preclude Robertson from calling any undisclosed "corporate representatives and/or current or former employees from other record labels and/or publishers." (Pls.' Mot., dated 9/18/13 (ECF No. 427) at 1.) These witnesses relate to the direct infringement claims against Robertson. However, Robertson indicates he will not seek to call any further undisclosed witnesses. Thus, that portion of Plaintiffs' motion is moot. And in view of this Court's rulings regarding the Horowitz Declaration, the copyrights relating to John Ralston are no longer at issue.
As to singer Carla Bozulich, a party is not permitted to call a witness who was not disclosed pursuant to Rule 26(a) or (e) unless the failure was "substantially justified or is harmless." Fed.R.Civ.P. 37(c)(1). Preclusion of a witness depends on several factors: "(1) the party's explanation for the failure to comply with the [disclosure requirement]; (2) the importance of the testimony of the precluded witness[es]; (3) the prejudice suffered by the opposing party as a result of having to prepare to meet the new testimony; and (4) the possibility of a continuance." Patterson v. Balsamico , 440 F.3d 104, 117 (2d Cir.2006) (internal quotation marks omitted).
Robertson fails to explain his delay in disclosing his intent to call Bozulich. Songs by Bozulich's band, the Geraldine Fibbers, were identified in Plaintiffs' first takedown notice and in Alasdair McMullan's Declaration, dated October 29, 2010 (ECF No. 191). Robertson had ample notice of Bozulich. At summary judgment, Robertson could not show that any of the sideloads listed in the McMullan Declaration or the Audrey Ashby Declaration, dated October 29, 2010 (ECF No. 188), were sideloaded from authorized websites. As a consequence, Defendants were held liable for infringement stemming from those sideloads. Robertson cannot attack that ruling at trial. His attempt to recast Bozulich as an impeachment witness is an effort to circumvent this Court's prior ruling. Moreover, Bozulich's testimony is irrelevant because she was not authorized to distribute the music on her website, as Plaintiffs owned the exclusive distribution rights. (See Ex. A. to Platzer Decl. in Supp. Pls.' Reply Mem., dated 11/1/13 (ECF No. 483.).) Accordingly, Plaintiffs' motion to preclude Robertson from calling Bozulich as a witness at trial is granted.
III. Motions Regarding Evidence of Willful Blindness/Red Flag Knowledge
When a service provider is "aware of a high probability of the fact [of infringement] and consciously avoid[s] confirming that fact, " that provider is willfully blind to infringement and may lose the protections afforded under the safe harbor provisions of the Digital Millennium Copyright Act ("DMCA"). Viacom Int'l v. YouTube, Inc. , 676 F.3d 19, 35 (2d Cir.2013); see also 17 U.S.C. § 512 et seq. Viacom also established that something less than a formal DMCA-complaint takedown notice could constitute apparent or "red flag" knowledge of infringement. 676 F.3d at 32. A provider who has actual or red flag knowledge of "specific and identifiable instances of infringement" forfeits the protections of the DMCA safe harbor for those infringements. Viacom , 676 F.3d at 34; see also 17 U.S.C. §§ 512(c)(1)(A) & (d)(1). In view of Viacom's direction that district courts engage in "explicit fact-finding" on the issue of willful blindness, this Court vacated summary judgment on the issue of contributory infringement for those songs not subject to DMCA-compliant takedown notices. Viacom , 676 F.3d at 35 n.10; Capitol Records, 2013 WL 1987225, at *3. This Court also withdrew its prior grant of summary judgment to Defendants on their lack of red flag knowledge. See Capitol Records, 2013 WL 1987225, at *4.
A. Robertson's Motion to Preclude Evidence Related to Willful Blindness and Red Flag Knowledge (ECF No. 386)
Plaintiffs seek to present five categories of evidence related to willful blindness and red flag knowledge at trial: (1) evidence showing Robertson's awareness that no major record label distributed authorized content in MP3 format prior to January 25, 2007; (2) evidence showing that Defendants had Beatles songs available for sideload despite being aware that works by the Beatles were not authorized for digital distribution in 2007-2008; (3) screenshots of "questionable" websites from which Defendants' executives personally sideloaded files; (4) the results of a query of MP3tunes' databases, showing multiple takedown notices Defendants received for songs on specific third-party hosting sites, coupled with another query showing songs belonging to Plaintiffs which were sideloaded ...