SiriusXM Filing

Case 2:13-cv-05693-PSG-GJS Document 499 Filed 10/07/16 Page 1 of 29 Page ID
#:20380
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DANIEL M. PETROCELLI (S.B. #97802)

dpetrocelli@omm.com
CASSANDRA L. SETO (S.B. #246608)
cseto@omm.com
OMELVENY & MYERS LLP
1999 Avenue of the Stars, 8th Floor
Los Angeles, California 90067
Telephone: (310) 553-6700
Facsimile: (310) 246-6779
Attorneys for Defendant
Sirius XM Radio Inc.
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
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FLO & EDDIE, INC., a California

corporation, individually and on behalf
of all others similarly situated,
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Plaintiffs,
v.
SIRIUS XM RADIO INC., a Delaware
corporation, and DOES 1 through 10,
Defendants.
Case No. CV 13-05693 PSG (GJS)

Hon. Philip S. Gutierrez
DEFENDANT SIRIUS XM RADIO
INC.S MEMORANDUM OF
CONTENTIONS OF FACT AND
LAW PURSUANT TO LOCAL
RULE 16-4
Final Pretrial Conference:
Oct. 31, 2016 at 2:30 p.m.
Trial Date:
Nov. 15, 2016 at 9:00 a.m.
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SIRIUS XMS MEM. OF
CONTENTIONS OF FACT & LAW

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TABLE OF CONTENTS
Page
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I.
INTRODUCTION ........................................................................................... 1
II.
PLAINTIFFS CAUSES OF ACTION [L.R. 16-4.1(a)-(c)] .......................... 3
A.
Relevant Procedural Background ......................................................... 3
B.
Summary Of Plaintiffs Causes Of Action ........................................... 4
C.
Elements Required To Establish Plaintiffs Causes Of Action ............ 5
D.
Key Evidence In Opposition To Plaintiffs Causes Of Action ............. 7
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III.
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SIRIUS XMS AFFIRMATIVE DEFENSES [L.R. 16-4.1(d)-(e)] .............. 12

A.
Summary Of Sirius XMs Affirmative Defenses ............................... 12
B.
Elements Required To Establish Sirius XMs Affirmative

Defenses .............................................................................................. 13
C.
Key Evidence In Support Of Sirius XMs Affirmative Defenses ...... 15
IV.
DAMAGES ................................................................................................... 17
V.
EVIDENTIARY ISSUES [L.R. 16-4.1(h)]................................................... 20
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VI.
ISSUES OF LAW [L.R. 16-4.1(i)] ............................................................... 20
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VII. BIFURCATION OF ISSUES [L.R. 16-4.3] ................................................. 20
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VIII. JURY TRIAL [L.R. 16-4.4] .......................................................................... 20
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A.
Causes Of Action And Affirmative Defenses Triable To The

Jury ...................................................................................................... 20
B.
Causes Of Action And Affirmative Defenses Triable To The

Court .................................................................................................... 21
C.
Timely Jury Demands ......................................................................... 21
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IIX. ATTORNEYS FEES [L.R. 16-4.5] ............................................................. 21

IX.
ABANDONMENT OF ISSUES [L.R. 16-4.6] ............................................. 22
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TABLE OF AUTHORITIES
Page(s)
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Cases
ABS Entmt, Inc. v. CBS Corp.,
2016 WL 4259846 (C.D. Cal. May 30, 2016)................................................... 2, 8
A&M Records, Inc. v. Heilman,
75 Cal. App. 3d 554 (1977) ................................................................................. 19
City Sols., Inc. v. Clear Channel Commns,
365 F.3d 835 (9th Cir. 2004) ............................................................................... 22
Cmty. Assisting Recovery, Inc. v. Aegis Sec. Ins. Co.,
92 Cal. App. 4th 886 (2001) .................................................................................. 6
Durell v. Sharp Healthcare,
183 Cal. App. 4th 1350 (2010) .............................................................................. 5
Fabricon Prods. v. United Cal. Bank,
264 Cal. App. 2d 113 (1968) ............................................................................... 15
Grisham v. Philip Morris, Inc.,
2009 WL 9102320 (C.D. Cal. Dec. 3, 2009) ...................................................... 23
Hodge v. Super. Ct.,
145 Cal. App. 4th 278 (2006) .............................................................................. 23
In re First Alliance Mortg. Co.,
2003 WL 21530096 (C.D. Cal. June 16, 2003)..................................................... 4
Integrated Sports Media, Inc. v. Mendez,
2014 WL 3728594 (N.D. Cal. July 28, 2014) ............................................... 18, 19
J&J Sports Prods., Inc. v. Medina,
2014 WL 641919 (E.D. Cal. Feb. 18, 2014) ...................................................... 19
24
25
26
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Lee v. Hanley,
61 Cal. 4th 1225 (2015) ......................................................................................... 7
Lopez v. Larson,
91 Cal. App. 3d 383 (1979) ................................................................................. 16
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(continued)
Page(s)
Lone Ranger Television, Inc. v. Program Radio Corp.,

740 F.2d 718 (9th Cir. 1984) ............................................................................... 19
Lueter v. State of Cal.,
94 Cal. App. 4th 1285 (2002) .............................................................................. 19
Miller v. Glenn Miller Prods., Inc.,
454 F.3d 975, 997(9th Cir. 2006) ........................................................................ 14
Newhart v. Pierce,
254 Cal. App. 2d 783 (1967) ............................................................................... 19
Open Text S.A. v. Box, Inc.,
2015 WL 466815 (N.D. Cal. Jan. 28, 2015) ....................................................... 22
Rubin v. L.A. Fed. Sav. & Loan Assn,
159 Cal. App. 3d 292 (1984) ............................................................................... 14
Smithwick v. Pacific E.R. Co.,
206 Cal. 291 (1929) ............................................................................................. 23
Stewart Title of Cal., Inc. v. Fidelity Nat. Title Co.,
279 Fed. Appx. 473 (9th Cir. 2008) ...................................................................... 5
Teutscher v. Woodson,
2016 WL 4488008 (9th Cir. Aug. 26, 2016) ....................................................... 23
Turpin v. Sortini,
31 Cal. 3d 220 (1982) .......................................................................................... 16
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Tyrone Pac. Intl Inc. v. MV Eurychili,

658 F.2d 664 (9th Cir. 1981) ............................................................................... 20
U.S. Golf Assn. v. Arroyo Software Corp.,
69 Cal. App. 4th 607 (1999) .................................................................................. 5
Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp.,
856 F. Supp. 2d 1136 (C.D. Cal. 2012) ............................................................... 23
Unilogic, Inc. v. Burroughs Corp.,
10 Cal. App. 4th 612 (1992) ................................................................................ 22
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(continued)
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Page(s)
Ware Supply Co. v. Sacramento Sav. & Loan Assn.,

246 Cal. App. 2d 398 (1966) ............................................................................... 15
Williams v. Weisser,
273 Cal. App. 2d 726 (1969)... ............................................................................ 18
Zellers v. State,
134 Cal. App. 2d 270 (1955) ............................................................................... 15
Statutes
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Cal. Bus. & Prof. Code 17200 ....................................................... 4, 5, 6, 13, 14, 15
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Cal. Bus. & Prof. Code 17203 ................................................................................. 6
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Cal. Bus. & Prof. Code 17208 ................................................................... 13, 14, 15
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Cal. Civ. Code 3336............................................................................................... 18

Cal. Civ. Code 3333............................................................................................... 18
Cal. Civ. Code 980........................................................................................... 1, 3, 4
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Cal. Civ. Code 980(a)(2) ................................................................................ passim
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Cal. Civ. Proc. Code 339 ................................................................................. 13, 15
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Other Authorities
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Judicial Council of California Civil Jury Instructions (2015) 2100 ........................... 7
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Judicial Council of California Civil Jury Instructions (2015) 338 ........................... 15
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Judicial Council of California Civil Jury Instructions (2015) 3900 ......................... 22
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Judicial Council of California Civil Jury Instructions (2015) 3931 ................... 16, 23
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Local Rule 16-4 .......................................................................................................... 1
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Defendant Sirius XM Radio Inc. (Sirius XM) respectfully submits this
Memorandum of Contentions of Fact and Law pursuant to Local Rule 16-4 and this
Courts Order for Jury Trial.
I.
INTRODUCTION
Flo & Eddie filed this lawsuit in August 2013 seeking to establish, for the
first time in history, that California law grants owners of sound recordings fixed
prior to 1972 a right to control and demand compensation for performances of those
recordings after they have been sold to the public. The Court resolved that issue of
first impression in September 2014, ruling that California Civil Code Section 980
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grants pre-1972 recording owners an exclusive performance right, and concluding
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that Sirius XM was liable to Flo & Eddie for performing its pre-1972 recordings
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without authorization. The Court subsequently granted Flo & Eddies motion for
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class certification, certifying a class of all owners of pre-1972 recordings performed
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by Sirius XM in California without authorization between August 2009 and August
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2016. The Court has not yet determined Sirius XMs liability as to absent class
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members. Sirius XM contends that trial in this case will involve a determination of
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class-wide liability and damages (if any).
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Class-wide Liability. Plaintiffs bear the burden of establishing class-wide
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liability for their misappropriation/violation of Section 980, statutory unfair
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competition, and conversion causes of action. This requires plaintiffs to establish,
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inter alia, (1) ownership of pre-1972 recordings, (2) unauthorized performance of
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those recordings by Sirius XM during the relevant period, and (3) resulting harm.
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Sirius XM will challenge those claims and assert defenses on various grounds.
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For example, Sirius XM will contest ownership on the grounds that class
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members cannot establish chain of title or ownership of recordings that (1) are
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owned by record companies with whom Sirius XM has written license and
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settlement agreements or record companies who opted out of the class in this case,
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(2) were re-mastered after 1972 and constitute post-1972 derivative works pursuant
SIRIUS XMS MEM. OF

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to ABS Entmt, Inc. v. CBS Corp., 2016 WL 4259846 (C.D. Cal. May 30, 2016), or
(3) have been abandoned and are now in the public domain.
Sirius XM will also prove that class members authorized it to perform their
pre-1972 recordings. For more than a decade, Sirius XM has openly and
continuously performed pre-1972 recordings without obtaining written licenses
from or paying compensation to recording owners. Before this lawsuit, no class
member ever objected to these performances or asked Sirius XM to stop performing
its pre-1972 recordings, obtain a written license, or pay compensation. To the
contrary, many class membersincluding Flo & Eddiewanted and even actively
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encouraged Sirius XM to play their pre-1972 recordings by sending promotional
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copies, imploring DJs to increase airplay, and making appearances on Sirius XM to
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promote their music. The reason is clear: class members benefited from Sirius
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XMs airplay through increased record sales and artist exposure. This and similar
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evidence negates plaintiffs claims of liability and damages and supports Sirius
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XMs defenses.
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Damages. Both parties have filed motions in limine concerning the
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appropriate measure of damages. Given the nature of both the property right and
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infringement alleged here, Sirius XM contends that California law allows only for
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damages in the form of lost licensing royalties (if any). Sirius XM has filed a
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motion in limine objecting to plaintiffs damages modelwhich seeks Sirius XMs
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gross revenue without deduction of costson the ground that it is inconsistent with
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governing law and fundamentally flawed. Sirius XM disagrees with plaintiffs
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position that the Court has ruled that plaintiffs damages modeland only
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plaintiffs damages modelwill be allowed at trial, and opposes plaintiffs motion
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in limine to preclude Sirius XM from contesting their model and presenting its own.
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Sirius XM also filed motions in limine to preclude (1) imposition of past
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damages as an impermissible and inequitable retroactive application of law,
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(2) damages accruing in the two years before plaintiffs complaint was filed, as a
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two-year statute of limitation applies to their misappropriation and conversion
claims, and (3) assertion of plaintiffs damages model under their statutory unfair
competition claim on the ground that it is unavailable as a matter of law.
Depending on the Courts disposition of these motions, the jury may be asked to
determine plaintiffs entitlement to damages and, assuming any damages are
awarded, the amount.
II.
PLAINTIFFS CAUSES OF ACTION [L.R. 16-4.1(a)-(c)]
A.
On August 1, 2013, Flo & Eddie filed a putative class action complaint
Relevant Procedural Background
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asserting that California Civil Code Section 980(a)(2) (Section 980) and
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California common law grant pre-1972 recording owners an exclusive right to
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control performances of their recordings, and alleging that Sirius XM violated
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California law by performing plaintiffs pre-1972 recordings without authorization
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and making incidental reproductions to facilitate those performances. Doc. 1-1.
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The complaint asserted three causes of action, styled as (1) Violation of California
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Civil Code 980(a)(2) and Common Law Misappropriation, (2) Statutory and
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Common Law Unfair Competition, and (3) Conversion. Id. at 7-9.
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On June 9, 2014, prior to seeking class certification, Flo & Eddie moved for
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summary judgment on liability. Doc. 69-1. On September 22, 2014, the Court
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granted partial summary judgment on Flo & Eddies performance claims, holding
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that Section 980 grants pre-1972 recording owners a performance right and that
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Sirius XM was liable to Flo & Eddie for playing Flo & Eddies recordings
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without authorization. Docs. 117, 175 at 1. The Court declined to grant summary
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judgment on Flo & Eddies reproduction claims, ruling that those claims turn on
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disputed factual issues. Doc. 117 at 12. Plaintiffs now have abandoned those
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reproduction claims. Doc. 444 at 3 n.1.
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On May 27, 2015, the Court granted Flo & Eddies motion for class
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certification, and certified a class defined as: owners of [pre-1972 recordings]

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which have been reproduced, performed, distributed, or otherwise exploited by
[Sirius XM] in California without a license or authorization. Doc. 225 at 2. The
Court has not determined Sirius XMs liability as to any class member other than
Flo & Eddie.
On September 8, 2016, the Court granted partial summary judgment in favor
of Sirius XM on plaintiffs common law unfair competition claim and request for
punitive damages. Doc. 411. The Court recognized that the central issue in this
casei.e., whether California law grants pre-1972 recording owners a performance
rightwas an issue of first impression and punitive damages are therefore
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unavailable as a matter of law. Id. at 3 & n.1 (noting that the rationale behind not
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allowing punitive damages in cases of first impression is that the requisite intent or
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willfulness required to consciously disregard anothers rights cannot be present if
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no right or duty has been recognized) (quoting In re First Alliance Mortg. Co.,
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2003 WL 21530096, at *10 (C.D. Cal. June 16, 2003)). The Court denied Sirius
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XMs request for summary judgment on disgorgement on the ground that Flo &
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Eddie is not seeking disgorgement. Id. at 6. After that ruling, plaintiffs submitted a
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supplemental damages report confirming the sole measure of damages they seek is
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Sirius XMs gross revenues without deduction of costs.
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B.
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First Cause of ActionViolation of California Civil Code 980(a)(2)
Summary Of Plaintiffs Causes Of Action
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and Common Law Misappropriation: Plaintiffs allege that Section 980 grants
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pre-1972 recording owners an exclusive right to control performances of their
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recordings, and that Sirius XM misappropriated that right by performing pre-1972
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recordings owned by plaintiffs without authorization. Doc. 1-1 18-23.
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Second Cause of ActionStatutory Unfair Competition: Plaintiffs allege
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that Sirius XMs unauthorized performance of pre-1972 recordings owned by
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plaintiffs constitutes an unlawful and/or unfair business act under California
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Business and Professions Code Section 17200 (Section 17200). Id. 24-28. As
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noted below, this is an equitable claim that would be tried to the Court after any
legal claims and issues have been tried to the jury.
Third Cause of ActionConversion: Plaintiffs allege that Sirius XM
performed pre-1972 recordings owned by plaintiffs without authorization for its
own use and financial gain, and thereby converted plaintiffs ownership rights in
performances of their pre-1972 recordings. Id. 29-34.
C.
First Cause Of ActionViolation of California Civil Code 980(a)(2)
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and Common Law Misappropriation: To establish a claim for common law

misappropriation, a plaintiff must prove the following elements:
(1)
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(2)
defendant appropriated and used plaintiffs property at little or no cost

to defendant;
(3)
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plaintiff invested substantial time, skill, or money in developing its

property;
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Elements Required To Establish Plaintiffs Causes Of Action
defendants appropriation and use of plaintiffs property was without

authorization or consent of plaintiff; and
(4)
plaintiff was injured by defendants conduct.
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See U.S. Golf Assn. v. Arroyo Software Corp., 69 Cal. App. 4th 607, 618 (1999)
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(citations omitted).
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Second Cause of ActionStatutory Unfair Competition: To establish
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liability under the unlawful prong of Section 17200, a plaintiff must prove the
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following elements:
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(1) defendant engaged in a business practice; and
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(2) that business practice is forbidden by law.
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See Durell v. Sharp Healthcare, 183 Cal. App. 4th 1350, 1361 (2010) (An
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unlawful business practice under Business and Professions Code section 17200 is
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an act or practice, committed pursuant to business activity, that is at the same time
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forbidden by law.) (internal citations omitted).

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Separately, to establish liability under the unfair prong of Section 17200, a

plaintiff must prove the following elements:
(1)
defendant engaged in a business practice; and
(2)
that business practice offends an established public policy or is
immoral, unethical, oppressive, unscrupulous or substantially injurious
to consumers.
See Cmty. Assisting Recovery, Inc. v. Aegis Sec. Ins. Co., 92 Cal. App. 4th 886, 894
(2001).
As to both prongs, equitable relief will only be awarded under Section 17200
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where a plaintiff demonstrates that (1) it suffered a loss of money or property,
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and (2) that loss resulted from the unfair competition. See Cal. Bus. & Prof. Code
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17203 (The court may make such orders or judgments as may be necessary to
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prevent the use or employment by any person of any practice which constitutes
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unfair competition, as defined in this chapter, or as may be necessary to restore to
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any person in interest any money or property, real or personal, which may have
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been acquired by means of such unfair competition.).
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Third Cause of ActionConversion: To establish a claim for conversion,

a plaintiff must prove the following elements:
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(1)
plaintiff owned or had a right to possess property;
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(2)
defendant intentionally and substantially interfered with the
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property by:
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(a)
taking possession of it, or
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(b)
preventing plaintiff from taking possession of it, or
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(c)
preventing plaintiff from having access to it, or
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(d)
destroying it, or
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(e)
refusing to return it after a demand for its return;
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(3)
plaintiff did not consent;
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(4)
plaintiff was harmed; and

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(5)
defendants conduct was a substantial factor in causing the harm.
See Judicial Council of California Civil Jury Instructions (2015) 2100
(ConversionEssential Factual Elements); see also Lee v. Hanley, 61 Cal. 4th
1225, 1240 (2015) (The elements of a conversion claim are: (1) the plaintiffs
ownership or right to possession of the property; (2) the defendants conversion by
a wrongful act or disposition of property rights; and (3) damages).
D.
First Cause of ActionViolation of California Civil Code 980(a)(2)
Key Evidence In Opposition To Plaintiffs Causes Of Action
and Common Law Misappropriation: As the evidence at trial will show,
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plaintiffs cannot meet their burden to establish class-wide liability on this cause of
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action. Among other reasons, many class members (a) cannot prove ownership of
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pre-1972 recordings performed by Sirius XM during the relevant period, (b)
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authorized or otherwise consented to Sirius XMs performance of their pre-1972
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recordings, and/or (c) suffered no harm. Key evidence on these points includes, but
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is not limited to:
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Ownership.
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Documents identifying pre-1972 recordings owned by non-class
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members, including the plaintiffs in Capitol Records LLC, et al. v. Sirius
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XM Radio Inc., who entered into a settlement agreement authorizing
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Sirius XM to perform all pre-1972 recordings they own or control, other
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recording owners with whom Sirius XM has written direct licenses, and
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former class members who opted out.
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Documents and testimony showing that recordings class members claim
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to own are in fact owned by the Capitol Records plaintiffs, Sirius XMs
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direct licensors, or opt-outs. See Doc. 352-1, Ex. A (identifying 276
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discrete ownership conflicts among 15 of the 18 subpoenaed class
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members and record companies with whom Sirius XM has a settlement
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agreement or written license). Sirius XM will also present testimony that

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ownership conflicts among pre-1972 recording owners are frequent
including, for example, testimony from class member Codigo that there
are constant conflicts between labels and Codigo has been involved in
thousands of ownership disputes.

Documents and testimony showing that class members claim to own were
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re-mastered after 1972 and constitute post-1972 derivative works that are
not subject to California law.1 To take one example, Sirius XM will
present evidence that certain recordings owned by class member
Brunswick Records and performed by Sirius XM were adjudicated in CBS
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to be post-1972 derivative works.

Documents and testimony showing that class members claim to own
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recordings that have been abandoned and/or are in the public domain. For
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example, Sirius XM will present testimony from class member Shanachie
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Entertainment and former class member David Freeman that certain pre-
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1972 recordings performed by Sirius XM have been abandoned by their
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initial owners, and that it is common practice to exploit such recordings
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without permission.
Documents and testimony showing that class members cannot establish
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chain-of-title to pre-1972 recordings they claim to own.
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Authorization/Consent.
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Testimony of Steven Blatter (Senior Vice President and General Manager,
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Music Programming, Sirius XM) that, inter alia, Sirius XM and its
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predecessors have openly and continuously performed pre-1972
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recordings without obtaining written licenses or paying compensation to
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In light of the recent ruling in CBS, 2016 WL 4259846, plaintiffs cannot satisfy
their burden to establish ownership of pre-1972 recordings performed by Sirius XM
to the extent those recordings were re-mastered after 1972 and contain original,
post-1972 content. Sirius XM will address this point in its forthcoming opposition
to plaintiffs Motion in Limine No. 7.
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recording owners for more than a decadeand never hid that fact. Mr.
Blatter will also testify that before this lawsuit, no class member ever
asked Sirius XM to stop performing its pre-1972 recordings, obtain a
written license, or pay compensation. Mr. Blatters testimony will
demonstrate that class members sought and encouraged Sirius XM to
perform their pre-1972 recordings, without any expectation of
compensation, in order to reap the promotional benefits of airplay and the
unique exposure of the works to a national audience on satellite radio.
Testimony of Flo & Eddie principals Mark Volman and Howard Kaylan
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that for nearly 50 years, Flo & Eddie has known that AM/FM radio
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stations perform its pre-1972 recordings without seeking permission or
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paying royalties, and that Flo & Eddie has known the same about Sirius
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XM for many years.
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Testimony of class members who claim to have known they had a right to
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control performances of their pre-1972 recordings and that Sirius XM was
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performing their recordings, but nonetheless chose not to object. For
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example, Sirius XM will present testimony that Codigo has been aware of
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Sirius XMs performances of its pre-1972 recordings since at least 2005,
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but never asked Sirius XM to obtain a licenseeven though it
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purportedly knew it had a right to demand one. Representatives of
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Fuel2000 will testify that it has been aware of Sirius XMs performances
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for 5-10 years, and supposedly knew that it had a performance right, but
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chose not to challenge Sirius XMs performances (even though Fuel2000
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did object to performances by Pandora and others). Sirius XM will
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present similar testimony from Malaco Records, Hindsight Records,
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Shout!, and other class members.
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Documents and testimony showing that class members have solicited

Sirius XM to perform their pre-1972 recordings by, for example, asking
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Sirius XM to increase airplay, sending Sirius XM copies of their
recordings to perform, making promotional appearances on Sirius XM,
and otherwise collaborating with Sirius XM to promote their music. To
take just a few examples, Freeman will testify that he knows many Sirius
XM DJs on a friendly first-name basis, sends them copies of his
recordings to play all the time, and has no objection to Sirius XMs
performances; Sundazed will testify that its president is friends with
several Sirius XM DJs and regularly sends them recordings to play; Rural
Rhythm will testify that it has provided Sirius XM with copies of its
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recordings from day one in hopes of maximizing airplay; Delmark
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Records will testify that it sent copies of albums to Sirius XM DJs with
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the intention that they be played; and VP Records will testify that it has
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frequently sent Sirius XM promotional emails containing links to
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download its recordings.
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Testimony of Mr. Blatter confirming that class members have encouraged
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Sirius XM to perform their pre-1972 recordings. For example, Flo &
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Eddies principals have made many promotional appearances on Sirius
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XM, during which their pre-1972 recordings (and others) were performed,
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and thanked Sirius XM for its support.
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No Harm.
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Testimony of Mr. Volman and Mr. Kaylan that they are unable to identify
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any lost sale, diminished license fee, or other economic harm as a result of
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Sirius XMs use of their recordings, and that Sirius XMs airplay has
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helped a great deal with sales of their recordings.
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Testimony of class members, including George Buck, Henry Stone,
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Delmark Records, and Shanachie, that they have suffered no economic
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harm from Sirius XMs performance of their pre-1972 recordings.
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Testimony of class members, including David Freeman, Curb, and Rural
Rhythm, that they benefitted from Sirius XMs performances in the form
of increased record sales and exposure.
Documents and testimony from class members and Mr. Blatter
demonstrating that class members have solicited Sirius XM to perform
their pre-1972 recordings by, for example, asking Sirius XM to increase
airplay, sending Sirius XM copies of their recordings to perform, making
promotional appearances on Sirius XM, and otherwise collaborating with
Sirius XM to promote their music. See supra at 8-10.
10
Second Cause of ActionStatutory Unfair Competition: As the evidence
11
at trial will show, plaintiffs cannot meet their burden to establish class-wide
12
liability on this cause of action. Among other reasons, many class members (a)
13
cannot prove ownership of pre-1972 recordings performed by Sirius XM during the
14
relevant period, (b) authorized or otherwise consented to Sirius XMs performance
15
of their pre-1972 recordings, and/or (c) did not lose money or property (and,
16
instead, were benefitted) by the performances of their pre-1972 recordings. And, as
17
to the unfair prong, the challenged does not offend established public policy and
18
is not immoral, unethical, oppressive, [or] unscrupulous. As this Court
19
recognized, no one knew that California law provides pre-1972 recording owners a
20
performance until its September 2014 ruling. Doc. 411 at 3-6; see also Doc. 234 at
21
26:9-10.
22
Key evidence on these points includes, but is not limited to:
23
Ownership.
24
See supra at 7-8.
25
26
See supra at 8-10.
27
No Loss of Money/Property.
28
See supra at 10-11.

- 11 -
SIRIUS XMS MEM. OF


#:20396
Challenged Conduct Not Offensive.
Documents and testimony confirming the industry consensus and practice
that broadcasters had no obligation to obtain written licenses from or pay
compensation to pre-1972 recording owners.
Third Cause of ActionConversion: As the evidence at trial will show,
plaintiffs cannot meet their burden to establish class-wide liability on this cause of
action. Among other reasons, many class members (a) cannot prove ownership of
pre-1972 recordings performed by Sirius XM during the relevant period, (b)
authorized or otherwise consented to Sirius XMs performance of their pre-1972
10
recordings, (c) suffered no harm, and/or (d) Sirius XM did not interfere with any
11
class members property rights. Key evidence on these points includes, but is not
12
limited to:
13
Ownership.
14
See supra at 7-8.
15
16
See supra at 8-10.
17
No Harm.
18
See supra at 10-11.
19
No Interference With Property Rights.
20
Testimony of class members, including David Freeman, Curb, and Rural
21
Rhythm, that they benefitted from Sirius XMs performances in the form
22
of increased record sales and exposure.
23
24
concerning the beneficial effects of airplay, including that Sirius XMs
25
performances helped a great deal with sales of their recordings.
26
Documents and testimony from class members and Mr. Blatter
27
demonstrating that class members have actively encouraged Sirius XM to
28
perform their pre-1972 recordings by, for example, asking Sirius XM to

- 12 -
SIRIUS XMS MEM. OF


#:20397
increase airplay, sending Sirius XM copies of their recordings to perform,
making promotional appearances on Sirius XM, and otherwise
collaborating with Sirius XM to promote their music. See supra at 8-10.
III.
SIRIUS XMS AFFIRMATIVE DEFENSES [L.R. 16-4.1(d)-(e)]
A.
First Affirmative DefenseLaches: Sirius XM alleges that plaintiffs
decades-long delay in asserting their putative rights was neither reasonable nor
excusable, and has prejudiced Sirius XM. See generally Doc. 38 37.
Summary Of Sirius XMs Affirmative Defenses
Second Affirmative DefenseWaiver: Sirius XM alleges that plaintiffs
10
waived any right to control performances of their pre-1972 recordings by, for
11
example, soliciting Sirius XM to perform those recordings and failing to object to
12
Sirius XMs performances. See generally id. 38.
13
Third Affirmative DefenseEstoppel: Sirius XM alleges that plaintiffs
14
are barred from challenging its performances of their pre-1972 recordings given
15
that Sirius XM has openly and continuously performed those recordings for more
16
than a decade, plaintiffs have been aware of those performances, and plaintiffs
17
never objected to or demanded compensation for those performances (and in many
18
instances, actively encouraged those performances). Sirius XM relied on plaintiffs
19
actions (and inactions) to its detriment. See generally id. 39.
20
Fourth Affirmative DefenseImplied License: Sirius XM alleges that
21
plaintiffs actionsincluding their efforts to encourage Sirius XM to perform their
22
pre-1972 recordingsgave rise to implied licenses. See generally id. 40.
23
Fifth Affirmative DefenseStatute of Limitation: Sirius XM alleges that
24
plaintiffs First and Third Causes of Action are governed by California Civil
25
Procedure Code Section 339, which provides a two-year statute of limitation and
26
limits plaintiffs recovery (if any) to damages accruing on or after August 1, 2011.
27
A four-year statute of limitation applies to plaintiffs Second Cause of Action, see
28
Cal. Bus. & Prof. Code 17208, but Section 17200 only provides for restitution of
- 13 -
SIRIUS XMS MEM. OF


#:20398
monetary losses, and plaintiffs damages model neither measures nor seeks
restitution as a matter of law. See generally id. 42; Doc. 471.
Sixth Affirmative DefenseMitigation of Damages: Sirius XM asserts
that plaintiffs failed to take reasonable measures to avoid the harm alleged, and that
Sirius XM conveyed special benefits to plaintiffsincluding the promotional
benefits of airplay and the unique exposure of the works to a national audience on
satellite radio, each of which drives record sales and increases artist exposure. See
generally Doc. 38 44.
9
10
11
B.
Elements Required To Establish Sirius XMs Affirmative Defenses
First Affirmative DefenseLaches: To establish the affirmative defense of

laches, a defendant must prove the following elements:
12
(1)
plaintiffs delay in asserting a right or a claim;
13
(2)
the delay was not reasonable or excusable; and
14
(3)
prejudice to defendant.
15
16
See Miller v. Glenn Miller Prods., Inc., 454 F.3d 975, 997 (9th Cir. 2006).
Second Affirmative DefenseWaiver: To establish the affirmative
17
defense of waiver, a defendant must prove either (a) plaintiffs intentional
18
relinquishment of a known right, or (b) conduct [of plaintiff] which, according to
19
its natural import, is so inconsistent with the intent to enforce the right in question
20
as to induce a reasonable belief that such right has been relinquished. See Rubin
21
v. L.A. Fed. Sav. & Loan Assn, 159 Cal. App. 3d 292, 298 (1984) (citation
22
omitted).
23
24
Third Affirmative DefenseEstoppel: To establish the affirmative

defense of estoppel, a defendant must prove the following elements:
25
(1)
plaintiff must know the facts;
26
(2)
plaintiff must intend that his conduct shall be acted upon, or must so
27
28
act that defendant had the right to believe that it was so intended;
(3)
defendant must be ignorant of the true state of facts; and

- 14 -
SIRIUS XMS MEM. OF


#:20399
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
(4)
defendant must rely upon the conduct to his injury.
See Ware Supply Co. v. Sacramento Sav. & Loan Assn, 246 Cal. App. 2d 398, 407
(1966).
Fourth Affirmative DefenseImplied License: To establish the
affirmative defense of implied license, a defendant must prove the following
elements:
(1)
conduct on behalf of plaintiff, including passive acquiescence; and
(2)
defendants reasonable interpretation of that conduct as plaintiffs

consent to use plaintiffs property for a particular purpose.
See Zellers v. State, 134 Cal. App. 2d 270, 273-74 (1955) (An implied license is
one which is presumed to have been given from the words, acts or passive
acquiescence of the party authorized to give it.).
Fifth Affirmative DefenseStatute of Limitation: To establish the
affirmative defense of statute of limitations, a defendant must prove that plaintiffs
alleged harm occurred before the applicable statute of limitation. Compare Judicial
Council of California Civil Jury Instructions (2015) 338 (Affirmative Defense
Statute of Limitations). Here, California Code of Civil Procedure Section 339 bars
damages for injuries occurring on or before August 1, 2011 as to plaintiffs
misappropriation and conversion claims, see Fabricon Prods. v. United Cal. Bank,
264 Cal. App. 2d 113, 117 (1968) (claim for conversion of intangible property
rights subject to Section 339); and California Business and Professions Code
Section 17208 bars damages for injuries occurring on or before August 1, 2009 as
to plaintiffs Section 17200 claim.
Sixth Affirmative DefenseMitigation of Damages: To establish the
affirmative defense of mitigation of damages, defendant must prove either
(a) plaintiff could have avoided the harm asserted with reasonable efforts or
expenditures; or (b) defendant conferred a special benefit to plaintiff. See Judicial
28
- 15 -
SIRIUS XMS MEM. OF


#:20400
Council of California Civil Jury Instructions (2015) 3931 (Mitigation of Damages
(Property Damage)); Lopez v. Larson, 91 Cal. App. 3d 383, 403 (1979) (It is no
doubt true that plaintiff had a duty to mitigate damages by accepting other available
employment; however, in the event of trial, defendant would have borne the burden
of proving that the claimed damages were avoidable.); see also Turpin v. Sortini,
31 Cal. 3d 220, 236-37(1982) ([w]hen the defendant's tortious conduct has caused
harm to the plaintiff ... and in so doing has conferred a special benefit to the interest
of the plaintiff that was harmed, the value of the benefit conferred is considered in
mitigation of damages) (internal quotations omitted).
10
C.
11
First Affirmative DefenseLaches: As the evidence at trial will show,
Key Evidence In Support Of Sirius XMs Affirmative Defenses
12
class members delayed in asserting their purported rights, and that delay was not
13
reasonable or excusable and prejudiced Sirius XM. Key evidence on these points
14
includes, but is not limited to:
15
See supra at 8-10 (regarding Authorization/Consent).
16
Testimony of David Frear (Senior Executive Vice President and Chief
17
Financial Officer, Sirius XM) that, inter alia, Sirius XM invested billions
18
of dollars developing, marketing, selling, promoting, and maintaining its
19
business over the yearsat considerable risk to its stockholders and
20
investorsand reasonably relied on the industry consensus and practice
21
that broadcasters had no obligation to obtain written licenses from or pay
22
compensation to pre-1972 recording owners as well as the actions (and
23
inactions) of such owners.
24
Second Affirmative DefenseWaiver: As the evidence at trial will show,
25
plaintiffs waived any right to control performances of their pre-1972 recordings by,
26
for example, soliciting Sirius XM to perform those recordings and failing to object
27
to Sirius XMs performances. Key evidence on these points includes, but is not
28
limited to:
- 16 -
SIRIUS XMS MEM. OF


#:20401
Third Affirmative DefenseEstoppel: As the evidence at trial will show,
plaintiffs are barred from challenging Sirius XMs performances of their pre-1972
recordings given that Sirius XM has openly and continuously performed those
recordings for more than a decade, plaintiffs have been aware of those
performances, and plaintiffs never objected to or demanded compensation for those
performances (and in many instances, actively encouraged those performances).
Sirius XM relied on plaintiffs actions (and inactions) to its detriment. Key
evidence on these points includes, but is not limited to:
10
11
See supra at 16 (regarding testimony of David Frear).
12
Fourth Affirmative DefenseImplied License: As the evidence at trial
13
will show, plaintiffs actionsincluding their efforts to encourage Sirius XM to
14
perform their pre-1972 recordingsled Sirius XM to reasonably believe that
15
plaintiffs authorized Sirius XMs performance of their pre-1972 recordings. Key
16
evidence on these points includes, but is not limited to:
17
18
19
20
21
Testimony of other class members and/or former class members,
22
including David Freeman, Curb Records, and Rural Rhythm, that they
23
benefitted from Sirius XMs performances of their pre-1972 recordings
24
through increased record sales and exposure.
25
See supra at 16 (regarding testimony of David Frear).
26
Fifth Affirmative DefenseStatute of Limitations: As the evidence at
27
trial will show, damages accruing before August 1, 2011 are barred by the
28
applicable statute of limitation. Key evidence includes, but is not limited to:
- 17 -
SIRIUS XMS MEM. OF


#:20402
The filing of plaintiffs complaint on August 1, 2013. Doc. 1-1.
See supra at 8-9 (regarding testimony of Steven Blatter).
Sixth Affirmative DefenseMitigation of Damages: As the evidence at
trial will show, plaintiffs failed to take reasonable measures to avoid the harm
alleged, and Sirius XM conferred special benefits on plaintiffsincluding the
promotional benefits of airplay and the unique exposure of the works to a national
audience on satellite radio, which drive record sales and increases artist exposure.
Key evidence on these points includes, but is not limited to:

10
11
12
13
Testimony of other class members and/or former class members,
14
including David Freeman, Curb Records, and Rural Rhythm, that they
15
benefitted from Sirius XMs performances of their pre-1972 recordings
16
through increased record sales and exposure.
17
18
IV.
DAMAGES
The parties have a dispute concerning the applicable measure of damages at
19
trial, and both have filed motions in limine on this issue. California law is clear that
20
the damages for plaintiffs causes of action must be calculated by reference to the
21
value of the property at issue (the non-exclusive right to perform pre-1972
22
recordings) at the time it was used. See Cal. Civ. Code 3336, 3333.
23
As set forth in Sirius XMs Motion in Limine No. 1 (Doc. 464), the proper
24
measure of damages is a reasonable license fee, which accurately accounts for the
25
value that a willing buyer would have paid for a non-exclusive performance
26
right. See Williams v. Weisser, 273 Cal. App. 2d 726, 743 (1969) (awarding
27
reasonable value of license for appropriation of literary property in violation of
28
common law copyright); Integrated Sports Media, Inc. v. Mendez, 2014 WL

- 18 -
SIRIUS XMS MEM. OF


#:20403
3728594, at *5 (N.D. Cal. July 28, 2014) (damages for conversion and
misappropriation of plaintiffs exclusive ownership over the nationwide
distribution rights for sporting event is measured by denial of the license fee to
which [plaintiff] would otherwise have been entitled); J&J Sports Prods., Inc. v.
Medina, 2014 WL 641919, at *4-5 (E.D. Cal. Feb. 18, 2014) (conversion of
[e]xclusive right to distribute a broadcast signal to commercial establishments is
measured by the market rate to broadcast that program at an establishment such
as Defendants).
Plaintiffs contend that the proper measure of damages is Sirius XMs gross
10
revenue without deduction of costs. Plaintiffs rely on A&M Records, Inc. v.
11
Heilman, 75 Cal. App. 3d 554 (1977), and Lone Ranger Television, Inc. v. Program
12
Radio Corp., 740 F.2d 718 (9th Cir. 1984), but those cases only allowed such a
13
recovery given their unusual facts. In Heilman, the court specifically discussed that
14
the defendant failed to prove its expenses due to inaccurate and incomplete
15
books, a reference that would make no sense if the appropriate form of damages
16
forbid deduction of costs. 75 Cal. App. 3d at 570 n.11. And in Lone Ranger, the
17
defendant simply conceded, without argument or analysis, that a truncated gross
18
revenue analysis applied based on Heilman. 740 F.2d at 726.
19
Plaintiffs demand for gross revenues without deduction of costs has no
20
support in California law under the facts of this case. At most, plaintiffs may seek
21
to measure damages by reference to Sirius XMs net profits, but only upon an
22
affirmative showing of special circumstancesi.e., that plaintiffs had the ability
23
to and would have made those same profits had Sirius XM not converted or
24
misappropriated their property. See Lueter v. State of Cal., 94 Cal. App. 4th 1285,
25
1301-02 (2002); Newhart v. Pierce, 254 Cal. App. 2d 783, 794 (1967). Plaintiffs
26
have made no such showing, nor can they. No logical reason exists to use Sirius
27
XMs gross revenue (or even its net profits) as a measuring stick for plaintiffs
28
damages because such revenue and profits do not reasonably measure the value of
- 19 -
SIRIUS XMS MEM. OF


#:20404
the performance rights allegedly taken from plaintiffs. See Tyrone Pac. Intl Inc. v.
MV Eurychili, 658 F.2d 664, 666-67 (9th Cir. 1981).
V.
4
5
6
EVIDENTIARY ISSUES [L.R. 16-4.1(h)]

As reflected in its motions in limine, Sirius XM contends that the following
evidence is inadmissible at trial:

The expert opinion testimony of Michael J. Wallace, and any other
evidence or argument that gross revenues without deduction of costs is an
appropriate measure of damages for plaintiffs claims. Doc. 474.
Evidence or argument regarding past damages, or at the very minimum,
10
damages that allegedly accrued prior to September 22, 2014
11
the date of the Courts summary judgment ruling, which established, for
12
the first time, that pre-1972 recording owners have a right under
13
California law to control and demand compensation for performances of
14
their recordings. Doc. 470.
15
16
17
Evidence or argument regarding alleged damages for claims accruing

outside the applicable statutes of limitation. Doc. 471.
Evidence or argument regarding Sirius XMs settlement of the Capitol
18
Records lawsuit with Capitol Records, LLC, Sony Music Entertainment,
19
UMG Recordings, Inc., Warner Music Group Corp., and ABKCO Music
20
& Records, Inc. (the Major Labels) and Sirius XMs direct license
21
agreements with other pre-1972 recording owners (Direct Licensors)
22
including (1) communications between Sirius XM and the Major Labels
23
or Direct Licensors, (2) negotiations concerning the Capitol Records
24
settlement and Direct Licenses, and (3) the terms of and amounts payable
25
under the Capitol Records settlement and the Direct Licensesexcept to
26
the extent necessary to identify pre-1972 recordings covered by those
27
agreements and royalty rates specified in those agreements (if any) for
28
purposes of calculating damages. Doc. 472.

- 20 -
SIRIUS XMS MEM. OF


#:20405
Evidence or argument regarding a September 22, 2011 letter from
SoundExchange to Sirius XM and the contents of that letter, including the
fact that SoundExchange (wrongly) blamed Sirius XM for its mistaken
statutory royalties for performances of post-1972 recordings to pre-1972
recording owners. Doc. 473.
6
7
Additionally, plaintiffs contend that the following evidence is inadmissible at

trial, and Sirius XM disagrees:
Evidence or argument in support of any defense to liability. Doc. 444.
Evidence or argument relating to any equitable defense, including laches,
10
11
12
waiver, and estoppel. Doc. 445.

Evidence or argument relating to the existence of implied licenses. Doc.
446.
13
Evidence or argument relating to ownership issues. Doc. 447.
14
Evidence or argument relating to practices of other broadcasters. Doc.
15
448.
16
Evidence or argument relating to Sirius XMs state of mind. Doc. 449.
17
Evidence or argument relating to any affirmative defense that was
18
19
20
purportedly not expressly pled or raised on summary judgment. Doc. 450.

Evidence or argument relating to any information or documents that were
purportedly produced after the close of discovery. Doc. 454.
21
Evidence or argument relating to any authorization to perform a recording
22
that Sirius XM purportedly did not specifically disclose in response to
23
plaintiffs Interrogatory No. 25. Doc. 458.
24
Evidence or argument relating to any exclusion requests that purportedly
25
did not comply with the requirements of the approved class notice
26
procedures. Doc. 460.
27
The expert opinion testimony of Dr. Keith R. Ugone. Doc. 464.
28
- 21 -
SIRIUS XMS MEM. OF


#:20406
Evidence or argument relating to any costs incurred by Sirius XM in
1
2
conjunction with its exploitation of pre-1972 recordings. Doc. 468.
Evidence or argument that lost royalties or imputed license fees are
an appropriate measure of damages. Doc. 469.
Expert discovery has not yet closed, and the parties are continuing to
exchange objections and meet and confer concerning exhibits, witnesses, and
deposition testimony.
VI.
ISSUES OF LAW [L.R. 16-4.1(i)]

Sirius XMs motions in limine raise issues of law that should be decided by
10
the Court. There may be additional issues for the Court to resolve after the trial,
11
including the availability of pre-judgment interest on any damages award.
12
VII. BIFURCATION OF ISSUES [L.R. 16-4.3]
13
14
Sirius XM does not seek bifurcation of any issues for trial.

VIII. JURY TRIAL [L.R. 16-4.4]
15
A.
16
Sirius XM identifies below the causes of action and affirmative defenses that
17
are triable to the jury. Plaintiffs entitlement to legal damages, see Judicial Council
18
of California Civil Jury Instructions (2015) 3900 (Introduction to Tort Damages
19
Liability Contested), and the appropriate amount of damages (if any), see Open
20
Text S.A. v. Box, Inc., 2015 WL 466815, at *2 (N.D. Cal. Jan. 28, 2015), would also
21
be triable to the jury.
Causes Of Action And Affirmative Defenses Triable To The Jury
22
Plaintiffs Causes of Action.
23
Plaintiffs First Cause of Action for Violation of California Civil Code
24
980(a)(2) and Common Law Misappropriation, see City Sols., Inc. v.
25
Clear Channel Commns, 365 F.3d 835, 842 (9th Cir. 2004).
26
27
Plaintiffs Third Cause of Action for Conversion, see Unilogic, Inc. v.

Burroughs Corp., 10 Cal. App. 4th 612, 623 (1992).
28
- 22 -
SIRIUS XMS MEM. OF


#:20407
Sirius XMs Affirmative Defenses.
Sirius XMs Second Affirmative Defense of Waiver, cf. Teutscher v.
Woodson, 2016 WL 4488008, at *5 (9th Cir. Aug. 26, 2016).
Sirius XMs Third Affirmative Defense of Estoppel, cf. id.
Sirius XMs Fourth Affirmative Defense of Implied License, see
6
7
Smithwick v. Pac. Elec. Ry. Co., 206 Cal. 291, 301 (1929).
Sirius XMs Fifth Affirmative Defense of Statute of Limitation, see
Grisham v. Philip Morris, Inc., 2009 WL 9102320, at *3 (C.D. Cal. Dec.
3, 2009).
10
Sirius XMs Sixth Affirmative Defense of Mitigation of Damages, see
11
Judicial Council of California Civil Jury Instructions (2015) 3931
12
(Mitigation of Damages (Property Damage)).
13
B.
14
Sirius XM identifies below the cause of action and affirmative defense that
15
may be triable to the Court after the jury trial. Any equitable remedies sought by
16
plaintiffs would also be triable to the Court.
Causes Of Action And Affirmative Defenses Triable To The Court
17
Plaintiffs Causes of Action.
18
Plaintiffs Second Cause of Action for Statutory Unfair Competition,
19
see Hodge v. Super. Court, 145 Cal. App. 4th 278, 285-87 (2006).
20
Sirius XMs Affirmative Defenses.
21
Sirius XMs First Affirmative Defense of Laches, see Ultimax Cement
22
Mfg. Corp. v. CTS Cement Mfg. Corp., 856 F. Supp. 2d 1136, 1151 (C.D.
23
Cal. 2012).
24
C.
25
As to all issues triable to a jury, plaintiffs made a timely demand on July 31,
Timely Jury Demands
26
2013, see Doc. 1-1 at 13; and Sirius XM made a timely demand on November 18,
27
2013, see Doc. 38 at 9.
28
- 23 -
SIRIUS XMS MEM. OF


#:20408
IX.
ATTORNEYS FEES [L.R. 16-4.5]

As plaintiffs have acknowledged, there is no basis for recovery of attorneys
fees against Sirius XM. Doc. 180 at 20 ([N]one of the claims at issue permit an
award of attorneys fees.); see Doc. No. 225 at 24 (Class Certification Order)
(noting that [a]ttorneys fees are unavailable in this case). Class counsel have
indicated that they will seek attorneys fees based on any class damages award
pursuant to the common fund doctrine. See Doc. 356-1 at 12-21.
X.
ABANDONMENT OF ISSUES [L.R. 16-4.6]

Plaintiffs have abandoned the reproduction claims asserted in their
10
complaint. See Doc. 1-1 1 (challenging reproductions allegedly made by Sirius
11
XM to facilitate broadcast of plaintiffs pre-1972 recordings); Doc. 444 at 3 n.1
12
(confirming that Plaintiffs are not pursuing at trial their copying/reproduction
13
claims). Sirius XM hereby requests that, if plaintiffs do not formally dismiss those
14
reproduction claims, the Court enter an order of dismissal.
15
Dated: October 7, 2016
OMELVENY & MYERS LLP
16
17
18
By: /s/ Daniel M. Petrocelli

Daniel M. Petrocelli
Attorneys for Sirius XM Radio Inc.
19
20
21
22
23
24
25
26
27
28
- 24 -
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Case 2:13-cv-05693-PSG-GJS Document 499 Filed 10/07/16 Page 1 of 29 Page ID

DANIEL M. PETROCELLI (S.B. #97802)

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

FLO & EDDIE, INC., a California

Case No. CV 13-05693 PSG (GJS)

Case 2:13-cv-05693-PSG-GJS Document 499 Filed 10/07/16 Page 2 of 29 Page ID

PLAINTIFFS CAUSES OF ACTION [L.R. 16-4.1(a)-(c)] .......................... 3

Relevant Procedural Background ......................................................... 3

Summary Of Plaintiffs Causes Of Action ........................................... 4

Elements Required To Establish Plaintiffs Causes Of Action ............ 5

Key Evidence In Opposition To Plaintiffs Causes Of Action ............. 7

SIRIUS XMS AFFIRMATIVE DEFENSES [L.R. 16-4.1(d)-(e)] .............. 12

Summary Of Sirius XMs Affirmative Defenses ............................... 12

Elements Required To Establish Sirius XMs Affirmative

Key Evidence In Support Of Sirius XMs Affirmative Defenses ...... 15

EVIDENTIARY ISSUES [L.R. 16-4.1(h)]................................................... 20

ISSUES OF LAW [L.R. 16-4.1(i)] ............................................................... 20

VII. BIFURCATION OF ISSUES [L.R. 16-4.3] ................................................. 20

VIII. JURY TRIAL [L.R. 16-4.4] .......................................................................... 20

Causes Of Action And Affirmative Defenses Triable To The

Causes Of Action And Affirmative Defenses Triable To The

Timely Jury Demands ......................................................................... 21

IIX. ATTORNEYS FEES [L.R. 16-4.5] ............................................................. 21

ABANDONMENT OF ISSUES [L.R. 16-4.6] ............................................. 22

SIRIUS XMS MEM. OF

Case 2:13-cv-05693-PSG-GJS Document 499 Filed 10/07/16 Page 3 of 29 Page ID

SIRIUS XMS MEM. OF

Case 2:13-cv-05693-PSG-GJS Document 499 Filed 10/07/16 Page 4 of 29 Page ID

Lone Ranger Television, Inc. v. Program Radio Corp.,

Tyrone Pac. Intl Inc. v. MV Eurychili,

SIRIUS XMS MEM. OF

Case 2:13-cv-05693-PSG-GJS Document 499 Filed 10/07/16 Page 5 of 29 Page ID

Ware Supply Co. v. Sacramento Sav. & Loan Assn.,

Cal. Bus. & Prof. Code 17200 ....................................................... 4, 5, 6, 13, 14, 15

Cal. Bus. & Prof. Code 17203 ................................................................................. 6

Cal. Bus. & Prof. Code 17208 ................................................................... 13, 14, 15

Cal. Civ. Code 3336............................................................................................... 18

Cal. Civ. Code 980(a)(2) ................................................................................ passim

Cal. Civ. Proc. Code 339 ................................................................................. 13, 15

Judicial Council of California Civil Jury Instructions (2015) 2100 ........................... 7

Judicial Council of California Civil Jury Instructions (2015) 338 ........................... 15

Judicial Council of California Civil Jury Instructions (2015) 3900 ......................... 22

Local Rule 16-4 .......................................................................................................... 1

SIRIUS XMS MEM. OF

Case 2:13-cv-05693-PSG-GJS Document 499 Filed 10/07/16 Page 6 of 29 Page ID

Defendant Sirius XM Radio Inc. (Sirius XM) respectfully submits this

Courts Order for Jury Trial.

grants pre-1972 recording owners an exclusive performance right, and concluding

class certification, certifying a class of all owners of pre-1972 recordings performed

by Sirius XM in California without authorization between August 2009 and August

class-wide liability and damages (if any).

Class-wide Liability. Plaintiffs bear the burden of establishing class-wide

liability for their misappropriation/violation of Section 980, statutory unfair

competition, and conversion causes of action. This requires plaintiffs to establish,

inter alia, (1) ownership of pre-1972 recordings, (2) unauthorized performance of

Case 2:13-cv-05693-PSG-GJS Document 499 Filed 10/07/16 Page 7 of 29 Page ID

continuously performed pre-1972 recordings without obtaining written licenses

from or paying compensation to recording owners. Before this lawsuit, no class

member ever objected to these performances or asked Sirius XM to stop performing

its pre-1972 recordings, obtain a written license, or pay compensation. To the

encouraged Sirius XM to play their pre-1972 recordings by sending promotional

copies, imploring DJs to increase airplay, and making appearances on Sirius XM to

Damages. Both parties have filed motions in limine concerning the