United States District Court, S.D. New York
NORMAN BLAGMAN, individually and on behalf of all others similarly situated, Plaintiff,
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.
MEMORANDUM AND ORDER
JAMES C. FRANCIS IV, 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 without acquiring licenses for the underlying compositions. 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 order six third-party witnesses to appear for depositions. These depositions are warranted, the 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.
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). 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 have been reproduced, distributed, or sold by the defendants. (Amended Complaint ("Am. Compl."), ¶ 52). 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). The second includes Orchard Enterprises and other John Doe aggregators who supply digital recordings to the Retailer Defendants. (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. (Pl. Memo. at 1-3). 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 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. (Pl. Memo. at 6). 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]." (Pl. Memo. at 6-7). 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. 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. (Pl. Memo. at 7-8).
The 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).
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). The first topic concerns mechanical licensing and, specifically, whether the third-party entity "obtained digital phonorecord delivery or mechanical licenses pursuant to the U.S. Copyright Act to make and distribute digital sound recordings embodying copyrighted compositions registered in the United States." (Proposed Letters Rogatory at 8). 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 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.
A. Legal Standard
1. Letters ...