Opinion
No. 5:01 CV 1074, (Resolving Doc. No. 59)
October 28, 2002
MEMORANDUM OPINION AND ORDER
I. INTRODUCTION
The above-captioned matter is before the Court on Plaintiffs' motion for partial summary judgment on all claims and counterclaims in this case (Doc. No. 59). Defendants have responded (Doc. No. 62), and Plaintiffs have replied (Doc. No. 63). At the heart of this dispute are the copyrights of seven songs that Plaintiffs claim Defendants have infringed. For the reasons stated herein, the Court GRANTS Plaintiffs' motion for partial summary judgment on both their claims for copyright infringement and Defendants' counterclaims.
The Court notes that Defendants' opposition brief is in violation of the Local Rules. In a case on the standard track, memoranda may not exceed twenty pages unless exempted by a judicial officer. N.D. Ohio R. 7.1(g). In this case, the Court restricted memoranda to twenty-five pages. (Order dated July 1, 2002 (Doc. No. 55).) In direct contravention to the spirit of this rule, Defendants filed their memorandum with fewer than twenty-five pages; however, they greatly reduced the font size and line spacing to cram more text on each page. The Court admonishes Defendants for this practice and reserves the option to sanction Defendants at the end of these proceedings in accordance with the above Local Rule.
II. FACTUAL BACKGROUND
The fact pattern of this case is simple. On July 14, 2000, at the request of the American Society of Composers, Authors, and Publishers (ASCAP), Dennis Sichner visited the Defendants' nightclub, Banana Joe's, located in downtown Akron, Ohio. During the approximately four hours that Sichner was there, he witnessed the playing of numerous songs by disc jockeys in the establishment. Among those played were "Funky Cold Medina," "Kiss," "Push It," "Into the Groove," "Nobody Supposed to be Here," "Brick House," and "Play that Funky Music" (the "Songs").
ASCAP and its main competitor, Broadcast Music, Inc., issue licenses for the performance of their members' copyrighted musical works. See BMI v. CBS, 441 U.S. 1, 4-6 (1979) (discussing the historical backgrounds of both of these companies).
Plaintiffs own the copyrights to these seven songs. On behalf of Plaintiffs (and other copyright holders of musical compositions), ASCAP issues licenses to establishments like Banana Joe's of Akron for a fee. An ASCAP license permits a holder to play songs from the ASCAP repertory in a person's place of business, typically a bar or other social scene.
For years, ASCAP has attempted to work with Defendants on a licensing deal. No deal was ever reached. Yet, on July 14, 2000, Sichner observed Defendants playing the Songs. In order to enforce their copyrights against Defendants, Plaintiffs brought this action, alleging seven counts of infringement, one for each of the seven songs.
Against this simple factual background, Plaintiffs' amended complaint not surprisingly consists of a mere five pages with a two page attachment (Doc. No. 29). Defendants' amended answer (Doc. No. 41), however, is comprised of thirty-one pages exclusive of exhibits, with a myriad of obscure affirmative defenses and various counterclaims. Among the counterclaims are counts under the Sherman Antitrust Act, 15 U.S.C. § 1-2, the Lanham Act, 15 U.S.C. § 1125(a), and similar claims under state law. In these counterclaims, Defendants allege that Plaintiffs "and/or" ASCAP have monopolized various aspects of the music industry, fixed prices, employed numerous unfair business practices, and committed many other illegal acts. With respect to ASCAP, the Court notes that it has previously rejected arguments to implead ASCAP. (Order dated March 11, 2002 (Doc. No. 41).)
With exhibits, the pleading exceeds one hundred pages in length.
III. ANALYSIS A. Legal Standard for Summary Judgment
Summary judgment is appropriate where there are no genuine issues of material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56 ("Rule 56"). When considering a motion for summary judgment, "the inferences to be drawn from the underlying facts contained in [affidavits, pleadings, depositions, answers to interrogatories, and admissions] must be viewed in the light most favorable to the party opposing the motion." U.S. v. Diebold. Inc., 369 U.S. 654, 655 (1962).See. e.g., U.S. v. Hodges X-Ray. Inc., 759 F.2d 557, 562 (6th Cir. 1985). The Court's favorable treatment of facts and inferences, however, does not relieve the opposing party of the responsibility "to go beyond the pleadings" to oppose an otherwise properly supported motion for summary judgment under Rule 56(e). See Celotex Corp. v. Catrett, 477 U.S. 317, 324 (1986).
Once the moving party satisfies his or her burden to show an absence of evidence to support the non-moving party's case, Celotex Corp. v. Catrett, 477 U.S. at 323, the opposing party "may not rest upon mere allegation or denials of his pleading, but must set forth specific facts showing that there is a genuine issue for trial." Anderson v. Liberty Lobby. Inc., 477 U.S. 242, 256 (1986). Although the showing required of the non-moving party by Rule 56 does not go so far as to require that all opposition evidence be in a form admissible at trial, the rule does require the non-moving party who has the burden of proof at trial to oppose a proper summary judgment motion "by any of the kinds of evidentiary material listed in Rule 56(c), except the mere pleadings themselves. . . ." Celotex Corp. v. Catrett, 477 U.S. at 324. General averments or conclusory allegations of an affidavit, however, do not create specific fact disputes for summary judgment purposes. See Lujan v. National Wildlife Federation, 497 U.S. 871, 888-89 (1990). Furthermore, unsworn statements and affidavits composed of hearsay and non-expert opinion evidence, "do not satisfy Rule 56(e) and must be disregarded." See Dole v. Elliott Travel Tours, Inc., 942 F.2d 962, 968-69 (6th Cir. 1991) (quoting State Mutual Life Assurance Co. v. Deer Creek Park, 612 F.2d 259, 264 (6th Cir. 1979) and citing Adickes v. S.H. Kress Co., 398 U.S. 144, 158 n. 17 (1970)).
On a motion for summary judgment, the Court will consider "[o]nly disputes over facts that might affect the outcome of the suit under the governing law." Anderson v. Liberty Lobby, 477 U.S. at 248. Non-material facts will not be considered. Neither will the judge attempt to weigh the material evidence or determine its truth. Anderson v. Liberty Lobby, 477 U.S. at 249. The judge's sole function will be to determine whether there is a genuine issue for trial such that "there is sufficient evidence favoring the non-moving party for a jury to return a verdict for that party." Id. (citations omitted).
If the evidence is "merely colorable," or is "not significantly probative," the Court may decide the legal issue and grant summary judgment. Anderson v. Liberty Lobby, 477 U.S. at 249-50 (citingDombrowski v. Eastland, 387 U.S. 82 (1967) (per curiam) and First National Bank of Arizona v. Cities Service Co., 391 U.S. 253, 290 (1968)). In sum, "[t]he inquiry performed is the threshold inquiry of determining whether there is the need for a trial — whether, in other words, there are any genuine factual issues that properly can be resolved only by a finder of fact because they may reasonably be resolved in favor of either party." Anderson v. Liberty Lobby, 477 U.S. at 250.
B. No genuine issue of material fact exists as to the copyright infringement claims and Plaintiffs are entitled to judgment as a matter of law.
Among the exclusive rights granted by the Copyright Act, 17 U.S.C. § 101 et seq., are reproduction, creation of derivative works, distribution, and public performance, 17 U.S.C. § 106 (1995). At issue in this case is Defendants' public performance of the Songs.
To establish a claim for copyright infringement of a musical work vis-á-vis public performance, a claimant must prove: (1) the originality and authorship of a composition; (2) a valid copyright under the formalities of the Copyright Act; (3) claimant's ownership of the copyright at issue; (4) defendant's public performance of the composition; and (5) defendant's failure to obtain permission from the claimant for such performance. Bourne Co. v. Hunter Country Club, Inc., 990 F.2d 934, 939 n. 9 (7th Cir. 1993); Superhype Publ'g. Inc. v. Vasihou, 838 F. Supp. 1220, 1224 (S.D. Ohio 1993); Broadcast Music, Inc. v. Peppermint Club, Inc., Nos. C 83-694 C 84-7535, 1985 WL 6141, at *2 (ND. Ohio Dec. 16, 1985) (unpublished opinion); Broadcast Music, Inc. v. Abdalla, No. C-2-81-847, 1984 WL 2130, at *2 (S.D. Ohio June 27, 1984) (unpublished opinion).
As to the first three elements, Plaintiffs offer the affidavit of Mary A. Jenkins, an ASCAP employee. For each of the seven songs at issue, Jenkins attests that she had "reviewed the copyright registration certificates" and "pertinent assignments of copyright," and attached "true and correct copies of the copyright certificates, assignments, notices of termination, merger certificates and other documents demonstrating the chain of title of ownership." (Jenkins' Aft ¶ 3.) A copyright certificate is prima facie evidence of the first three elements for an infringement claim. 17 U.S.C. § 410(c) (1995); see also Superhype Publ'g, 838 F. Supp. at 1224; Blendingwell Music, Inc. v. Moor-Law, 612 F. Supp. 474, 480 (D. Del. 1985); Broadcast Music, Inc. v. Moor-Law, Inc., 484 F. Supp. 357, 362 (D. Del. 1980). Defendants do not challenge the authenticity or significance of the copyright certificates offered by Plaintiffs for "Kiss," "Into the Groove," and "Nobody Supposed to be Here." For the remaining four songs, however, Defendants question the validity of the certificates with naked assertions and blanket denials.
With respect to "Funky Cold Medina," Plaintiffs offer a copy of the copyright certificate bearing registration number "PA 403 460" and the date February 17, 1989. (Jenkins' Aff. Ex. A.) Listed on the certificate is Varry White Music as the copyright claimant. In addition, to show the chain of title of ownership, Plaintiffs offer a settlement agreement between Varry White Music and several other entities and individuals who are not parties to the instant litigation. On the second page of this document, the signers agree that the ownership interest in Varry White Music's copyrights will be documented separately upon completion of a referenced reorganization. On a separate page, but within the same exhibit, the publishers and their respective ownership percentages are listed as follows: "Varry White Music, Inc. — 37.5%," "Ex VW, Inc. — 37.5%," and "Loc'd Out Music — 25%." Thus, Plaintiffs have presented prima facie evidence of the first three elements for Defendants' infringement of "Funky Cold Medina."
In their opposition brief, Defendants argue that the registration certificate does not name two of the plaintiffs, Ex VW or Loc'd Out Music — an incomplete argument against summary judgment for a claim by three plaintiffs. Defendants omit any reference to the settlement agreement discussed in the previous paragraph, except to say that the settlement agreement is "very convoluted." In addition, Defendants point out that Plaintiffs have failed to indicate whether the settlement agreement was filed with the copyright office.
As stated in the legal standard, supra Part III.A, the non-moving party in summary judgment practice is obligated to set forth specific facts, by an affidavit or by other means provided in Rule 56, showing a genuine issue of material fact. Defendants' "incomplete" argument as to the copyright ownership of "Funky Cold Medina" and naked assertion about the filing of the settlement agreement do not satisfy this legal standard. Defendants' response rests on mere allegations and denials, which is insufficient to create a genuine issue of material fact as to the first three elements of an infringement claim.
Defendants' opposition brief makes evident that they misunderstand their obligations under Rule 56(e) for opposing a properly supported motion for summary judgment. Defendants' strategy was to make blanket denials of wrongdoing and assign blame to ASCAP. Yet, they present very little evidentiary support (or even argument) to support their position. Interestingly, although Defendants call the attachments to their response, "evidence," almost half of these attachments are excerpts from a law review article and treatises. These excerpts are not the kinds of materials recognized by Rule 56(e) that an adverse party may use to oppose summary judgment, Fed.R.Civ.P. 56(e).
With respect to "Push It," "Brick House," and "Play that Funky Music," Defendants employ a similar method. They make naked assertions and blanket denials about Jenkins' affidavit. (Defs.' Memo. in Opp'n to Summ. J. at 4-5.) As with the copyright for "Funky Cold Medina," the Court rejects these assertions and denials. Thus, as to these three songs, Defendants have failed to satisfy their obligations under Rule 56(e) to create a genuine issue of material fact with respect to the first three elements of each infringement claim.
As to the fourth element (public performance), Plaintiffs have submitted the affidavit of Dennis Sichner (Pls.' Mot. for Summ. J. Ex. 2). In this document, Sichner attests that he entered Defendants' establishment on July 14, 2000, and heard the seven songs performed during his visit. (Sichner's Aff. ¶¶ 4-5.)
In their opposition brief, Defendants assert that Sichner's affidavit is not made on personal knowledge and does not establish Sichner's competency to testify about the matters in the document. In addition, Defendants complain about the inconsistent date that appears on one of the six pages of Sichner's report (Sichner Aff Ex. A), which Plaintiffs explain as simply a typographical error.
With respect to this page, Sichner states: "The [attached] investigation report contains a typographical error on the top of page 5. The `date of investigation' was inadvertently typed in as `7/12/00' instead of the correct [date] `7/14/00.'" (Sichner Aff. ¶ 6.)
Contrary to Defendants' assertions, Sichner plainly establishes his competency and personal knowledge in his affidavit. He states: "As a result of my musical training and interest in music, I am fully familiar with the type of music performed at Banana Joe's. . . on the night of July 14, 2000." (Sichner Aff. ¶¶ 2.) He also states: "I entered Banana Joe's at 7:59 p.m. on July 14, 2000[,] and remained there continuously until I departed at 12:00 a.m.[,] July 15, 2000." (Sichner Aff. ¶¶ 2, 4.) Moreover, the inconsistent date appearing on page 5 of Sichner's report, which is attached to his affidavit, is insufficient to create a genuine issue of fact as to the performances at issue. Defendants have offered no affidavit or other materials permitted under Rule 56(e) to dispute any of the matters to which Sichner has attested. Thus, the fourth element is satisfied as to each of Plaintiffs' copyright infringement claims.
Finally, as to the fifth element (failure to obtain authorization for a public performance), the Court notes that, by its nature, this element must be established by the alleged inflinger. See Superhvpe Publ'g. Inc., 838 F. Supp. at 1224 (finding that the alleged infringers did not dispute the lack of authorization); Blendingwell Music, 612 F. Supp. at 481 see also Little Mole Music v. Mavar's Supermarket No. 4, Nos. C86-3129Y C87-1865Y, 1988 WL 167243, at *2 (N.D. Ohio Oct. 14, 1988) (unpublished report and recommendation); cf. Bartnicki v. Bopper, 532 U.S. 514, 552 (2001) ("`[A]s a practical matter[,] it is never easy to prove a negative.'" (quoting Elkins v. United States, 364 U.S. 206, 218 (1960))); Reno v. Bossier Parish Sch. Bd., 520 U.S. 471, 480 (1997) (same).
To establish authorization, Defendants cite the deposition of Mike Dennis, who testified on behalf of Defendants, but whose role with Defendant Banana Joe's of Akron or Defendant John Field is not specified. (Defs.' Memo. in Opp'n to Summ. J. at 6-7.) Defendants argue that his testimony indicates that they obtained permission from ASCAP to "play music without a license until negotiations were completed." (Defs.' Memo. in Opp'n to Summ. J. at 6.)
Dennis's testimony reveals no genuine issue of fact as to whether Defendants had permission to perform the Songs. They plainly did not. During his deposition, Dennis avoided the question and, when pressed, made no clear statement that Defendants obtained permission for the performance. Dennis is asked, "Do you know if [Defendants] had permission from any of the Plaintiffs. . . to play the musical compositions?" He responds:
[W]hat I think you're trying to ask me is whether or not we felt that we had a right to play any music in our facility, and I can tell you that I'm adamantly positive that in previous discussions with representatives of ASCAP over the period of a long period of time here, we were advised that during the negotiation process or during the discussions of the application process and getting things accurate and completed that we absolutely could continue to play music in our facility, since obviously in our discussions it was concluded that if we stopped playing a [sic] music, whether it be that that was licensed or not, that it likely would put that business out of business, and then ASCAP would not have any need to pursue getting applications completed or any reason to get any fees paid or generate any revenue.
(Dennis Dep. Tr. at 39-40 (emphasis added).)
When pressed, Dennis continued to evade the question:
As I understand it from a layman's point of view, I think ASCAP is — I think is a representative of these Plaintiffs. Making that presumption that ASCAP, as I think you're claiming, is a representative of these Plaintiffs, and the discussion with ASCAP was very direct and concise, to the point, that it would be in everyone's best interest to continue playing that music, I think that answers your question.
(Dennis Dep. Tr. at 40-41.)
When asked a third time, Dennis responded:
I don't know who Varry White Music is. I don't know that that's an individual. Looks to me like a company. Looks like a corporation. So — I don't see any names listed here, so I don't — I wouldn't know whether I have spoke with any of these particular people or not. But as I understood it or at least was represented to me by ASCAP representatives that they were an agent for or representative of these people.
(Dennis Dep. Tr. at 41.)
Dennis finally conceded, however, that Defendants never got permission directly from the Plaintiffs. (Dennis Dep. Tr. at 43.) As to Defendants dealings with ASCAP, whom Dennis claimed represented Plaintiffs, Dennis launches into a tirade about his dealings with ASCAP and its allegedly unfair business practices. (Dennis Dep. Tr. at 44-48, 80-83.) Yet, importantly, in describing his dealings with ASCAP, Dennis does not testify that Defendants obtained permission to perform the Songs.
Dennis's deposition testimony is insufficient to present a genuine issue of material fact as to whether Defendants obtained authorization to perform the copyrighted songs. Defendants do not offer, and the Court cannot find, any other evidence suggesting they had such permission. Thus, no genuine issue of material fact exists as to any of the elements for any of the claims of copyright infringement. Accordingly, the Court now turns to Defendants' affirmative defenses.
Defendants have pled a litany of affirmative defenses with apparent disregard for the requirement of a good faith basis under Federal Rule of Civil Procedure 11(b). Defendants have also disregarded the Court's order of December 12, 2001 (Doc. No. 33), which stated that they should voluntarily dismiss any unsupported defenses and counterclaims, and the Court's order of March 11, 2002 (Doc. No. 40), which rejected impleading an additional party. For Defendants' apparent disregard for the requirement of good faith pleading, the Court will entertain a motion for sanctions by Plaintiffs under Rule 11(c).
Defendants' thirteen affirmative defenses lack merit and, as stated in the preceding paragraph, lack a good faith basis entirely. Thus, the Court strikes them as having no basis in law or fact. These so-called defenses are (1) laches, (2) failure to join an indispensable party, (3) unclean hands, (4) waiver, estoppel, and laches, (5) abandonment of copyright, (6) fair use of copyright, (7) innocent intent, (8) breach of contract, (9) invalid contract, (10) license under BMI, (11) license to do business and good standing, (12) violations of antitrust law and other federal and state statutes, and (13) contributory tortfeasor.
Defendants simply assert that they have been prejudiced by "unreasonable delay" without a single shred of supporting argument or evidence. (Defs.' Memo. in Opp'n to Summ. J. at 11-12.)
Defendants do not specifically identify whom they believe is an indispensable party. (Defendants' Memo. in Opp'n to Summ. J. at 7.) To the extent Defendants assert ASCAP is an indispensable party, the Court has already rejected this argument. (Order dated March 11, 2002 (Doc. No. 40).)
As the basis for this defense, Defendants simply complain about ASCAP's allegedly "strong-arm tactics" and "take it or leave it" practice. As the Court has stated in its order of March 11, 2002 (Doc. No. 40), this action is not the place for Defendants to wage an antitrust battle against ASCAP.
The laches defense is simply restated from the first affirmative defense, which the Court has already rejected. See supra note 7. As to the waiver and estoppel defenses, Defendants simply state that all the elements of these defenses have been satisfied, but provide little or no discussion or evidentiary support for such a contention. (Defendants' Memo. in Opp'n to Summ. J. at 10-11.)
As to this defense, Defendants conjure back their arguments over ownership of the relevant copyrights. (Defendants' Memo. in Opp'n to Summ. J. at 12.) The Court has already rejected this argument, supra pp. 6-8.
See supra note 9.
Defendants again provide no basis to substantiate this defense. (Defendants' Memo. in Opp'n to Summ. J. at 12.)
Defendants do not identify any contract that serves as the basis for Plaintiffs' claims. Once again, Defendants provide no argument or evidentiary support for this so-called defense, except to incorporate by reference its other meritless defenses. (Defendants' Memo. in Opp'n to Summ. J. at 12.)
See supra note 11.
To support this supposed defense, Defendants state that they are "properly licensed to play music through BMI" and that "such a defense demonstrates that Defendants willingly pay for a proper music license; and that but for unlawful actions of Plaintiffs, by and through ASCAP, Defendants would be licensed through ASCAP." (Defendants' Memo. in Opp'n to Summ. J. at 12-13.) The Court finds no viable defense in these statements.
Defendants' notion that a company's license and business standing with the State of Ohio (Am. Answer ¶ 37) somehow absolves Defendant Field of liability for copyright infringement is preposterous. To the extent that Defendants use this statement to oppose joint liability for Field, the Court rejects such a contention. Plaintiffs offer substantial evidence to establish Defendants' joint liability. (Pls.' Mot. for Summ. J. at 4-5, 7-8.) Defendants' response (Defs.' Memo. in Opp'n to Summ. J. at 13) does not create an issue of fact as to the Defendants' joint liability.
See supra note 8.
Defendants offer no intelligible argument to support this defense. (Defendants' Memo. in Opp'n to Summ. J. at 14.)
Defendants' affirmative defenses fail to establish a genuine issue of material fact as to their liability for copyright infringement of the Songs. With no genuine issue of material fact, no legitimate affirmative defenses, and all the elements of copyright infringement satisfied, Plaintiffs are entitled to judgment as a matter of law on the issue of liability. Accordingly, Plaintiffs' motion for partial summary judgment is GRANTED. This case will proceed to trial on the issue of damages.
Plaintiffs' motion seeks injunctive relief, costs, and attorney's fees. A court with jurisdiction over a civil action arising under the Copyright Act may temporarily or permanently enjoin a party to prevent further infringement. See 17 U.S.C. § 502(a) (1995); see also Blendingwell Music, 612 F. Supp. at 485. Plaintiffs have established liability for copyright infringement. Plaintiffs have not established, however, that Defendants continue to perform the Songs at Banana Joe's of Akron. Therefore, the Court will not award injunctive relief at this time subject to renewal of the issue by way of a properly supported motion for permanent injunctive relief.
As for costs and attorney's fees, the Court also has the authority to award such relief under the Copyright Act. 17 U.S.C. § 505 (1995);Bourne Co., 990 F.2d at 938. The Court, however, will postpone considering whether such relief is appropriate until the conclusion of the trial on damages.
IV. CONCLUSION
For the foregoing reasons, Plaintiffs' motion for partial summary judgment on their claims for copyright infringement liability is GRANTED. This case shall proceed to trial on the issue of damages as to these claims.Trial is set on a standby basis for the two-week period beginning November 12, 2002. The Court will separately publish a trial order.
Further, Plaintiffs' motion for summary judgment on Defendants' counterclaims is GRANTED. Finally, Plaintiffs may move for sanctions under Federal Rule of Civil Procedure 11(c) as set forth in this opinion, supra p. 12.
Plaintiffs are entitled to summary judgment on Defendants' counterclaims under the Sherman Act, Lanham Act, and state fair competition and trade practices laws. As becomes apparent from Defendants' opposition brief (Defs.' Memo. in Opp'n to Summ. J. at 14-20), these counterclaims are no more than another attempt to wage an antitrust battle against ASCAP. ASCAP is not a party to this litigation. As stated in the Court's order denying leave to implead ASCAP (Order dated March 11, 2002 (Doc. No. 40)), Defendants can pursue their antitrust battle against ASCAP in a separate lawsuit. Accordingly, Plaintiffs are entitled to summary judgment on Defendants' counterclaims.
IT IS SO ORDERED.