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 ATTORNEY, John Ryan Gerba, Todd Daniel Larson, Weil, Gotshal & Manges LLP (NYC), New York, NY; Daniel M. Petrocelli, LEAD ATTORNEY, O'Melveny & Myers, LLP(CityCity), Los Angeles, CA; Marc Joseph Pensabene, LEAD ATTORNEY, O'Melveny & Myers LLP, New York, NY; Robert M Schwartz, Victor Jih, LEAD ATTORNEY, O'Melveny & Myers, LLP(LA), Los Angeles, CA; Michael Stewart Oberman, Kramer Levin Naftalis & Frankel, LLP, New York, NY.
DECISION AND ORDER CERTIFYING INTERLOCUTORY APPEAL
Colleen McMahon, United States District Judge.
Plaintiff Flo & Eddie, Inc. (" Flo and Eddie") brings this action under New York law for common law copyright infringement and unfair competition against Sirius XM Radio Inc. (" Sirius"). On November 14, 2014, the Court denied Sirius's motion for summary judgment dismissing the case and ruled that plaintiffs -- the owners of the common law copyrights in certain sound recordings made prior to February 1972 -- had the right to exclusively publicly perform and reproduce those recordings. (Docket #88). On December 12, 2014, the Court denied Sirius's motion for reconsideration (Docket #108).
In the alternative, Sirius asked this Court to certify an interlocutory appeal pursuant to 28 U.S.C. § 1292(b). That motion is GRANTED. Dockets #88 and Docket #108 are certified for interlocutory appeal because they present the following legal question:
Under New York law, do the holders of common law copyrights in pre-1972 sound recordings have, as part of the bundle of rights attendant to their copyright, the right to exclusive public performance of those sound recordings?
I. Standard for Certifying an Order for Interlocutory Appeal
A district judge may certify an order for interlocutory appeal if (1) " such order involves a controlling question of law" (2) " as to which there is substantial ground for difference of opinion, " and (3) " an immediate appeal from the order may materially advance the ultimate termination of the litigation." 28 U.S.C. § 1292(b); see Childers v. New York & Presbyterian Hosp., No. 13 CIV. 5414,
__ F.Supp.2d __, 2014 WL 2815676, at *21 (S.D.N.Y. June 23, 2014).
" A controlling question of law exists if: (1) reversal of the district court's opinion could result in dismissal of the action, (2) reversal of the district court's opinion, even though not resulting in dismissal, could significantly affect the conduct of the action, or (3) the certified issue has precedential value for a large number of cases." In re Lloyd's Am. Trust Fund Litig., No. 96 CIV. 1262, 1997 WL 458739, at *4 (S.D.N.Y. Aug. 12, 1997); see Klinghoffer v. S. N.C. Achille Lauro Ed Altri-Gestione Motonave Achille Lauro in Amministrazione Straordinaria, 921 F.2d 21, 24 (2d Cir. 1990).
In considering a request for certification, the district court must carefully assess whether all three § 1292(b) requirements are satisfied. In re Facebook, Inc., IPO Sec. & Derivative Litig., 986 F.Supp.2d 524, 529 (S.D.N.Y. 2014); see also Gottesman v. General Motors Corp., 268 F.2d 194, 196 (2d Cir. 1959) (certification is to be " strictly limited to the precise conditions stated in the law"). The trial court is vested with discretion whether to certify an interlocutory appeal based on the above criteria. See Ferraro v. Secretary of United States HHS, 780 F.Supp. 978, 979 (E.D.N.Y. 1992).
II. The Requirements for Certifying an Interlocutory Appeal are Met
Here, the requirements for certification are all met as to the question identified on the first and second page of this decision.
First, there is indeed a critically important controlling question of law in this case: whether the holders of common law copyrights in pre-1972 sound recordings have, as part of the bundle of rights appurtenant to their copyright, the right to exclusive public performance. If the Court's holding that they do have such a right is incorrect, then significant portions of this lawsuit -- including the public performance copyright infringement and unfair competition claims -- will have to be dismissed. Furthermore, reversal of this Court's ruling might well require reconsideration of the Court's fair use analysis in the context of Plaintiff's claim for copyright infringement on the basis of unauthorized copying -- a right plaintiffs plainly enjoy, see Capitol Records, Inc. v. Naxos of Am., Inc., 4 N.Y.3d 540, 563-64 (2005) -- ...