United States District Court, S.D. New York
FLO & EDDIE, INC., individually and on behalf of all others similarly situated, Plaintiff,
SIRIUS XM RADIO INC., and DOES 1 through 10, Defendants
For Flo & Eddie, Inc, A California Corporation, individually and on behalf of all others similarly situated, Plaintiff: Robert L. Rimberg, LEAD ATTORNEY, Joel Steven Schneck, Goldberg & Rimberg, PLLC, New York, NY; Evan S Cohen, PRO HAC VICE, Evan S. Cohen, Los Angeles, CA; Harvey Wayne Geller, Henry D. Gradstein, Maryann Rose Marzano, Robert Edward Allen, PRO HAC VICE, Larry Steven Castruita, Gradstein & Marzano, P.C., Los Angeles, CA; Kathryn Lee Crawford, Schwarcz Rimberg Boyd & Rader, LLP, New York, CA; Kristen Leigh Nelson, Schwartz & Perry, New York, NY; Rajika Lynn Shah, Schwarcz, Rimberg, Boyd & Rader, LLP, Los Angeles, CA.
For Sirius XM Radio, Inc., A Delaware Corporation, Defendant: Benjamin Ely Marks, Bruce S. Meyer, LEAD ATTORNEYS, John Ryan Gerba, Todd Daniel Larson, Weil, Gotshal & Manges LLP (NYC), New York, NY; Daniel M. Petrocelli, LEAD ATTORNEY, O'Melveny & Myers, LLP(C'tyCity), Los Angeles, CA; Marc Joseph Pensabene, LEAD ATTORNEY, O'Melveny & Myers LLP, New York, NY; Robert M Schwartz, Victor Jih, LEAD ATTORNEYS, O'Melveny & Myers, LLP(LA), Los Angeles, CA; Michael Stewart Oberman, Kramer Levin Naftalis & Frankel, LLP, New York, NY.
DECISION AND ORDER
COLLEEN MCMAHON, United States District Judge.
On November 14, 2014, the Court denied Sirius's motion for summary judgment. (" Decision and Order," Docket #88.) In addition to denying Sirius's motion, the Court ordered Sirius to show cause " why summary judgment should not be entered in favor of Flo and Eddie as to liability only." (Decision and Order at 1.)
Sirius moved for reconsideration of the Court's order and for the Court to certify an interlocutory appeal of the Decision and Order. (Docket #92.) Sirius then submitted a response to the order to show cause. (Docket #104.) The Court denied the motion for reconsideration and deferred Sirius's motion to certify an interlocutory appeal until it had resolved the order to show cause. (" Reconsideration Decision," Docket #108 at 1.)
The order to show cause has now been fully briefed. For the reasons stated below, the Court will not at this time enter summary judgment in favor of Flo and Eddie. If Flo and Eddie wishes to proceed individually and not as a class representative, it should so notify the Court, at which point summary judgment as to liability will be entered in its favor. However, if the action is to remain a class action, the parties should proceed with discovery, and Flo and Eddie should move for class certification no later than April 3, 2015.
The reader is presumed to be familiar with the facts of this case and with the Court's previous decisions.
Sirius argues that summary judgment should not be entered in favor of Flo and Eddie as to liability at this time for five reasons.
I. Ownership Issues
Sirius first argues that Flo and Eddie is not entitled to summary judgment because it has not yet established its ownership of the Turtles recordings. The legally relevant issue is ownership of the common law copyrights in those recordings, not the recordings themselves; however, neither party has claimed that ownership of the Turtles recordings has ever been transferred separately from ownership of the common law copyrights in those recordings also being transferred, and unless the parties otherwise agree, the sale of an artistic work normally conveys the common law copyright in that work. See Rosenberg v. Zimet, 30 Misc.3d 592, 594, 913 N.Y.S.2d 547 (Sup.Ct. 2010).
There is no genuine dispute of material fact on the issue of Flo and Eddie's ownership of the recordings, and undisputed evidence -- indeed, evidence admitted by Sirius -- establishes Flo and Eddie's ownership of the copyright in those sound recordings.
As described in the Decision and Order, the Turtles' recordings were originally owned by White Whale Records. (Cohen Tr. 45:12-19; Kaylan Tr. 44:5-7; Volman Decl. ¶ 2.) After a legal dispute between the Turtles and White Whale, White Whale transferred " all right, title and interest in and to the original master recordings of The Turtles" to five of the Turtles' members: Mark Volman, Howard Kaylan, Al Nichol, John Seiter, and James Pons. (Volman Decl. ¶ 5; see also Cohen Tr. 61:3-14.) Volman and Kaylan (two of those members) then purchased the remaining members' interests. (Kaylan Tr. 49:21-51:10; Volman Tr. 43:10-18; Volman Decl. ¶ 6.) In the Rule 56.1 statement filed by Sirius in support of its motion for summary judgment, Sirius concedes all of the above. (Sirius 56.1 Statement ¶ ¶ 18-19).
What Sirius does not concede is that Volman and Kaylan transferred their interest to Flo and Eddie, an entity in which they are the principals. Volman submitted a sworn declaration in which he testified that he and Kaylan " transferred all of the rights to The Turtles' master recordings to Flo & Eddie." (Volman Decl. ¶ 7.) Volman repeated that claim in his deposition. (Volman Tr. at 43:19-44:10.) Nonetheless, as far as Sirius is concerned, that ultimate transfer is nothing more than an allegation (" Plaintiff claims that Volman and Kaylan transferred ...