Rock River Communications, Inc. v. Universal Music Group, Inc.
745 F.3d 343
9th Cir.2014Background
- Rock River licensed 16 early Bob Marley recordings from San Juan Music Group and created an album of 12 remixes, registering copyrights in the remixes and arranging digital/physical distribution and a movie placement.
- UMG sent cease-and-desist letters in 2007 claiming exclusive licensing rights (based on a 2003 JAD-UMG deal), contacted Rock River’s partners (Apple, Relativity, distributors), and distribution was halted.
- Rock River sued alleging Sherman/Clayton Act claims, intentional interference with contract and prospective economic advantage (IIPEA), and a §512(f) misrepresentation; after limited discovery only the IIPEA claim remained for trial.
- District court excluded hearsay testimony supporting an oral license from Lee Perry to San Juan for three disputed tracks, found Rock River lacked evidence of a lawful business expectancy, and granted summary judgment for UMG; Rock River appealed.
- The Ninth Circuit held (1) plaintiff need not prove legality of the expectancy as an element of IIPEA—illegality is an affirmative defense for the defendant to prove; (2) factual disputes remain about whether San Juan had rights to the contested tracks and whether UMG knew its title was questionable; (3) Noerr-Pennington immunity was not resolved on summary judgment because a jury could find UMG’s threats objectively baseless and a sham.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether validity/legality of plaintiff's business expectancy is an element of IIPEA | Rock River: not an element; expectancy presumed lawful unless illegality proved | UMG: plaintiff must prove expectancy is legally valid to succeed | Court: not an element; illegality is an affirmative defense for defendant to plead and prove |
| Whether Rock River produced evidence that San Juan had authority to license three disputed tracks | Rock River: Lee Perry affidavits + San Juan’s 30-year open licensing and accounting support a nonexclusive oral license | UMG: lack of documentary chain of title and excluded hearsay leaves Rock River without admissible proof | Court: triable issue exists based on affidavits and course of conduct; summary judgment improper |
| Whether UMG’s cease-and-desist letters are protected by Noerr-Pennington immunity | Rock River: letters were a sham—UMG knew title was questionable and used threats to block distribution | UMG: had a 2003 contract with JAD and reasonably believed it held exclusive rights | Court: material disputes about UMG’s knowledge and motive preclude summary judgment on Noerr-Pennington; sham exception may apply |
| Whether UMG waived attorney-client privilege by asserting Noerr-Pennington defense | Rock River: asserting immunity put counsel communications at issue, so privilege waived | UMG: Noerr-Pennington does not necessarily place privileged communications at issue | Court: Noerr-Pennington defense does not automatically waive privilege; district court did not abuse discretion in denying in camera review |
Key Cases Cited
- Professional Real Estate Investors, Inc. v. Columbia Pictures Indus., Inc., 508 U.S. 49 (U.S. 1993) (defines “sham” exception to Noerr-Pennington immunity)
- Oregon Natural Res. Council v. Mohla, 944 F.2d 531 (9th Cir. 1991) (Noerr-Pennington scope and pre-litigation immunity)
- Sosa v. DIRECTV, Inc., 437 F.3d 923 (9th Cir. 2006) (Noerr-Pennington and sham litigation analysis)
- Clipper Exxpress v. Rocky Mountain Motor Tariff Bureau, Inc., 690 F.2d 1240 (9th Cir. 1982) (sham exception is factual and summary judgment inappropriate when disputed)
- United States v. Gonzalez, 669 F.3d 974 (9th Cir. 2012) (standard of review for attorney-client privilege rulings)
- In re Burlington Northern, Inc., 822 F.2d 518 (5th Cir. 1987) (Noerr-Pennington defense does not necessarily waive attorney-client privilege)
- Pacific Gas & Electric Co. v. Bear Stearns & Co., 791 P.2d 587 (Cal. 1990) (California formulation of interference elements referenced)