`
`WO
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF ARIZONA
`
`)))))))))))))))))))))))))))))
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`McDade & Sons, Inc., d/b/a Norton’s
`Country Corner; McDade Management,
`LLC d/b/a Norton’s Country Corner;
`Nancy McDade, individually; and Jason
`McDade, individually.
`Defendants.
`
`In this matter, Plaintiffs assert claims of copyright infringement against Defendants.
`
`Plaintiffs allege that Defendants infringed copyrights to thirteen musical compositions by the
`unauthorized public performance of these compositions at Norton’s Country Corner
`(Norton’s) in Queen Creek, Arizona, on June 10 and 11, 2011. (Doc. 29.) Plaintiffs have
`filed a motion for summary judgment and a supporting statement of facts on their claims of
`
`CV-11-1980-PHX-BSB
`ORDER
`
`Broadcast Music, Inc.; Sony/ATV Songs
`LLC d/b/a Sony/ATV Acuff Rose Music;
`Screen Gems-EMI Music,
`Inc;
`Songpainter Music; Tall Girl Music;
`Sony/ATV Songs LLC d/b/a Sony/ATV
`Tree Publishing; Universal-Songs of
`Polygram International, Inc; Warner-
`Tamerlane Publishing Corp; Believus Or
`Not Music; Glad Music Co; Paul Simon
`Music; Logrhythm Music; Universal-
`Millhouse Music, a division of Magna
`Sound Corporation; Bar None Music;
`Central Songs, a division of Beechwood
`Music Corporation,
`Plaintiffs,
`
`vs.
`
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`copyright infringement. (Docs. 39 and 40.) Defendants have filed a response and a
`supporting statement of facts opposing Plaintiffs’ motion. (Docs. 56 and 57.) Plaintiffs have
`filed a reply, a response and objections to Defendants’ statement of facts, and a motion to
`strike.1 (Docs. 60 and 62.) For the reasons set forth below, the Court grants Plaintiffs’
`Motion for Summary Judgment and enters a permanent injunction enjoining Defendants from
`further infringement of Plaintiffs’ thirteen copyrighted musical compositions and the musical
`compositions to which Plaintiff Broadcast Music, Inc. (BMI) holds the rights to enter
`licensing agreements.2
`I. Factual and Procedural Background
`On March 8, 2012, Plaintiffs filed a First Amended Complaint against Defendants
`McDade & Sons, Inc., d/b/a Norton’s Country Corner, McDade Management, LLC d/b/a
`Norton’s Country Corner, Nancy McDade, and Jason McDade alleging claims of copyright
`infringement. (Doc. 29.) Plaintiffs allege that these Defendants owned, operated and
`controlled Norton’s in June 2011, at the time of the public performance of the thirteen
`musical compositions at issue in this matter and, therefore, are liable for copyright
`infringement. (Id.)
`Plaintiffs allege that they own the copyrights to, or the rights to license the
`performance of, the thirteen musical compositions at issue and seek the following remedies
`
`1 The Court will deny Plaintiffs’ Motion to Strike (Doc. 62) for failure to comply with
`Local Rule of Civil Procedure 7.2(m), which provides that “an objection to . . . the
`admissibility of evidence offered in support of or opposition to a motion must be presented
`in the objecting party’s response or reply memorandum and not in a separate motion to strike
`or other separate filing.” L.R.Civ. 7.2(m).
`
`2 The thirteen songs include: “All My Ex’s Live in Texas,” “Baby Don’t Get Hooked
`on Me,” “Betty’s Bein’ Bad,” “Boot Scoot Boogie a/k/a Boot Scootin’ Boogie,” “Brown
`Eyed Girl,” “Eighteen Wheels and a Dozen Roses,” “Fireman” a/k/a “The Fireman,” “Race
`is On” a/k/a “The Race is On,” “You Can Call Me Al,” “Shake” a/k/a “The Shake,” “Ring
`of Fire,” “One Step Forward,” “Only Daddy That’ll Walk the Line” a/k/a “The Only Daddy
`That’ll Walk the Line.” (Doc. 40 at ¶ 20, Ex 1 at ¶ 4, Attachment A.)
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`provided by the Copyright Act, 17 U.S.C. §§ 502, 504, and 505: (1) an injunction prohibiting
`further infringing performances of any copyrighted musical compositions in the BMI
`repertoire; (2) statutory damages in the amount of not less than $3,000 for each of the thirteen
`copyright infringements; (3) costs and reasonable attorneys’ fees; and (4) interest from the
`date of judgment. (Docs. 29, 39.)
`
`Plaintiff BMI is a “performing rights society,” which is a nonprofit organization that
`licenses the right to publicly perform copyrighted musical compositions on behalf of its
`members and collects royalties whenever that music is performed. (Doc. 40 at ¶ 1, Ex. 1 at
`¶ 3)3; see 17 U.S.C. § 101 (“A ‘performing rights society’ is an association, corporation, or
`other entity that licenses the public performance of nondramatic musical works on behalf of
`copyright owners of such works, such as the American Society of Composers, Authors and
`Publishers (ASCAP), [BMI], and SESAC, Inc.”). The collection of musical compositions
`that BMI licenses is known as the BMI repertoire. (Doc. 40 at ¶ 3.) The other Plaintiffs are
`the copyright owners of the musical compositions that are the subject of this matter. (Doc. 40
`at ¶ 2, Ex. 1 at ¶ 4.)
`Through agreements with copyright owners, such as the individually named Plaintiffs,
`BMI acquires non-exclusive public performance rights. BMI has acquired such rights from
`each of the individually named Plaintiffs in this action. (Doc. 40 at ¶ 3; Ex. 1 at ¶ 2.) In turn,
`BMI grants music users such as broadcasters, and owners and operators of concert halls,
`restaurants, nightclubs, and hotels the right to publicly perform any of the works in the BMI
`repertoire through “blanket license agreements.” (Doc. 4 at ¶ 4.) The thirteen songs that are
`the subject of this action are registered with the Copyright Office and are part of BMI’s
`repertoire. (Doc. 40 at ¶ 17, Ex. 1 at ¶¶ 4-5, Attachment A.)
`At all times relevant to this matter, Defendant McDade & Sons, Inc. owned and
`operated Norton’s, had the right and ability to direct and control activities at Norton’s, and
`
`3 The exhibits to the Statement of Facts in Support of Plaintiffs’ Motion for Summary
`Judgment (Doc. 40), are filed at Docs. 40-48.
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`had a direct financial interest in Norton’s. (Doc. 40 at ¶ 6; Doc. 40 at Ex. 4, Resp. to
`Interrog. 1-5.) At all times relevant to this matter, Defendant Nancy McDade owned 100%
`of McDade & Sons, Inc., and was its sole officer and director; she had an ownership interest
`in Norton’s, the right and ability to direct and control activities at Norton’s, and the right to
`supervise its employees. (Doc. 40 at Ex. 4, Resp. to Interrog. 1-5; Doc. 57-1 at ¶ ¶ 2 and 3.)
`Defendants do not have a license from BMI to publicly perform at Norton’s any songs
`within the BMI repertoire. (Doc. 40 at ¶ 18, Ex. 2 at ¶ ¶ 4, 13, and 19, Ex. 3, Resp. to Req.
`for Admission 27.) Between February 2010 and May 2011, BMI repeatedly informed
`Defendants of the need to obtain permission for public performances of copyrighted music
`within BMI’s repertoire. (Doc. 40 at ¶ 10.) BMI conveyed this information through
`approximately twenty-nine letters, fifty-three telephone contacts, and at least one in-person
`visit. (Id.) BMI offered to enter into a blanket license agreement with Defendants, but
`Defendants declined to do so. (Id.) In March, April, and May 2011, BMI sent cease and
`desist letters instructing Defendants to cease public performance of music within the BMI
`repertoire. (Doc. 40 at ¶ 11.)
`On June 10, 2011, BMI sent investigator James Snyder to visit Norton’s and prepare
`a report indicating whether copyright infringement was occurring there. (Doc. 40 at ¶ 14.)
`During his visit, Snyder made an audio recording and later created a certified infringement
`report of the BMI-licensed songs played at Norton’s on June 10 and 11, 2011.4 (Doc. 40 at
`¶ 14, Ex. 2 at ¶ ¶ 14-15, and Exs. A and C.) In his report, Snyder personally identified eight
`musical compositions that were performed at Norton’s — “All My Ex’s Live in Texas,”
`“Baby Don’t Get Hooked on Me,” “Boot Scoot Boogie” a/k/a “Boot Scootin’ Boogie,”
`
`4 Plaintiffs prepared a schedule of information related to the musical compositions
`at issue. (Doc. 40 at Ex. 1, ¶ 4 and Attachment A.) Two of the thirteen songs — “Baby
`Don’t Get Hooked on Me” and “Betty’s Bein’ Bad” — were performed after midnight and
`are listed on the schedule as having been performed on June 11, 2011. (Id.)
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`“Brown Eyed Girl,” “Race is On” a/k/a “The Race is On,” “You Can Call Me Al,” “Shake”
`a/k/a “The Shake,” and “Ring of Fire.” (Doc. 40, Ex. 2 at Ex. A.)
`After Snyder submitted his report and the audio recording to BMI, Joannah Carr, a
`BMI Performance Identification employee, reviewed the audio recording and confirmed the
`eight musical compositions that Snyder had identified, and she identified five additional
`musical compositions on the audio recording — “One Step Forward,” “Only Daddy That’ll
`Walk the Line” a/k/a “The Only Daddy That’ll Walk the Line,” “Betty’s Bein’ Bad,”
`“Eighteen Wheels and a Dozen Roses,” and “Fireman” a/k/a “The Fireman.” (Doc. 40 at
`Ex. 2 at Ex. A.)
`After BMI confirmed that all thirteen songs are part of its repertoire, on June 27 and
`June 29, 2011, BMI sent letters to Defendants notifying them of the investigation and that
`BMI believed copyright infringement had occurred at Norton’s on June 10 and 11, 2011.
`(Doc. 40 at ¶ 19, Ex. 2 at ¶ 16 and Ex. B.) Defendants did not respond. (Id.)
`II. Summary Judgment Standard
`Federal Rule of Civil Procedure 56 authorizes the court to grant summary judgment
`“if the movant shows that there is no genuine dispute as to any material fact and the movant
`is entitled to judgment as a matter of law.”5 Fed. R. Civ. P. 56(a); see also Celotex Corp.
`v. Catrett, 477 U.S. 317, 322-23 (1986). A burden shifting analysis applies to motions for
`summary judgment under Rule 56. Nursing Home Pension Fund, Local 144 v. Oracle Corp.
`(In re Oracle Corp. Sec. Litig.), 627 F.3d 376, 387 (9th Cir. 2010).
`
`5 Although Rule 56 was amended in 2010, the amendments did not alter the standard
`for granting summary judgment. See Fed. R. Civ. P. 56 advisory committee’s note (2010
`amendments) (“The standard for granting summary judgment remains unchanged.”) Because
`the amendments merely sought “to improve the procedures for presenting and deciding
`summary-judgment motions and to make the procedures more consistent with those already
`used in many courts[,]”cases applying the prior version of Rule 56 remain applicable. Id.
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`The moving party bears the initial burden of informing the court of the basis for its
`motion, and identifying the portions of “the pleadings, depositions, answers to
`interrogatories, and admissions on file, together with the affidavits, if any,” which it believes
`demonstrate the absence of a genuine issue of material fact. Celotex Corp., 477 U.S. at 323.
`“Where the non-moving party bears the burden of proof at trial, the moving party need only
`prove that there is an absence of evidence to support the non-moving party’s case.” In re
`Oracle Corp. Sec. Litig., 627 F.3d at 387 (citing Celotex Corp., 477 U.S. at 325); see also
`Fed. R. Civ. P. 56 advisory committee’s note (2010 amendments) (recognizing that “a party
`who does not have the trial burden of production may rely on a showing that a party who
`does have the trial burden cannot produce admissible evidence to carry its burden as to the
`fact”).
`
`If the moving party meets its initial burden, the opposing party must establish the
`existence of a genuine dispute as to any material fact. See Matsushita Elec. Indus. Co. v.
`Zenith Radio Corp., 475 U.S. 574, 585–86 (1986). To avoid summary judgment, the
`opposing party must demonstrate the existence of a factual dispute that is both material,
`meaning it affects the outcome of the claim under the governing law, see Anderson v. Liberty
`Lobby, Inc., 477 U.S. 242, 248 (1986); Fortune Dynamic, Inc. v. Victoria’s Secret Stores
`Brand Mgmt., Inc., 618 F.3d 1025, 1031 (9th Cir. 2010), and genuine, meaning “‘the
`evidence is such that a reasonable jury could return a verdict for the nonmoving party.’”
`Freecycle Sunnyvale v. Freecycle Network, 626 F.3d 509, 514 (9th Cir. 2010) (quoting
`Anderson, 477 U.S. at 248).
`Furthermore, a party opposing summary judgment must support the assertion that a
`genuine dispute of material fact exists by: “(A) citing to particular parts of materials in the
`record, including depositions, documents, electronically stored information, affidavits or
`declarations, stipulations . . . , admissions, interrogatory answers, or other materials; or (B)
`showing that the materials cited do not establish the absence or presence of a genuine
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`dispute, or that an adverse party cannot produce admissible evidence to support the fact.”6
`Fed. R. Civ. P. 56(c)(1)(A)-(B). The opposing party “must show more than the mere
`existence of a scintilla of evidence.” In re Oracle Corp. Sec. Litig., 627 F.3d at 387 (citing
`Anderson, 477 U.S. at 252).
`When considering a summary judgment motion, the court examines the pleadings,
`depositions, answers to interrogatories, and admissions on file, together with the affidavits,
`if any. Fed. R. Civ. P. 56(a). The court’s function is not to weigh the evidence and
`determine the truth but to determine whether there is a genuine issue for trial. Anderson, 477
`U.S. at 249. The evidence of the non-movant is “to be believed, and all justifiable inferences
`are to be drawn in his favor.” Id. at 255.
`III. Copyright Infringement
`The Copyright Act gives the owner of a copyright the exclusive right to publicly
`perform, or authorize others to perform, the copyrighted work. 17 U.S.C. § 106(4). Any
`person who violates this exclusive right is an infringer. Id. at § 501(a). To establish a prima
`facie case of copyright infringement, a plaintiff “must demonstrate ‘(1) ownership of a valid
`copyright, and (2) copying of constituent elements of the work that are original.’” Range
`Road Music, Inc. v. East Coast Foods, Inc., 668 F.3d 1148, 1153 (9th Cir. 2012) (quoting
`Funky Films, Inc. v. Time Warner Entm’t Co., 462 F.3d 1072, 1076 (9th Cir. 2006)). “The
`word ‘copying’ is shorthand for the infringing of any of the copyright owner’s [six] exclusive
`rights,” one of which is the right “to perform the copyrighted work publicly.” S.O.S., Inc.
`v. Payday, Inc., 886 F.2d 1081, 1085 n.3 (9th Cir. 1989); see also 17 U.S.C. § 106(4)
`
`6 “The court need consider only the cited materials, but may consider other materials
`in the record.” Fed. R. Civ. P. 56(c)(3). Moreover, “[a] party may object that the material
`cited to support or dispute a fact cannot be presented in a form that would be admissible in
`evidence.” Fed. R. Civ. P. 56(c)(2).
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`(reserving to owners of copyrights in musical works the exclusive right “to perform the
`copyrighted work publicly”).
`Several courts have broken the prima facie case into the following five elements:
`“(1) originality and authorship of the work involved; (2) compliance with all formalities
`required to secure a copyright under the Act; (3) plaintiff’s ownership of the copyright in
`question; (4) public performance of the work; and (5) lack of authorization for the performer
`to perform the work.” Polygram Intern. Pub., Inc. v. Nevada/TIG, Inc., 855 F. Supp. 1314,
`(D. Mass. 1994); see also Hickory Grove Music v. Andrews, 749 F. Supp. 1031, 1035
`(D. Mont. 1990) (same); Broadcast Music, Inc. v. Pine Belt Inv. Dev., Inc., 657 F. Supp.
`1016, 1020 (S.D. Miss. 1987) (same). As discussed below, Plaintiffs have established these
`five elements.
`A. The First Three Elements — Originality, Registration, and Ownership
`The uncontroverted facts contained in the Declaration of BMI’s Assistant Vice
`President, Legal, Kerri Howland-Kruse, which includes a schedule of the musical
`compositions at issue and copies of the copyright registration certificates for these
`compositions, establishes the originality, registration, and ownership interest elements of
`copyright infringement. (Doc. 29, Ex. A; Doc. 40 at ¶ ¶ 20-21, Ex. 1 at ¶ ¶ 4-5 and Ex. A.)
`See Broadcast Music, Inc. v. 3–B, Inc., 1996 WL 426486, *2 (E.D. Mich. Jan. 16, 1996)
`(affidavits in support of copyright infringement action constitute sufficient evidence of the
`undisputed facts) (citing Pine Belt, 657 F. Supp. at 1020).
`Each of the musical compositions listed on the schedule attached to the Howland-
`Kruse declaration was registered with the Copyright Office. (Doc. 40 at ¶ 20, Ex. 1 at ¶ 4
`and Ex. A..) The Copyright Office issued registration certificates to the Plaintiffs for each
`of the compositions at issue. (Id.) “Registration is prima facie evidence of the validity of
`a copyright.” Three Boys Music Corp. v. Bolton, 212 F.3d 477, 488–89 (9th Cir. 2000); see
`also Hickory Grove, 749 F. Supp. at 1036 (copyright certification records constitute prima
`facie evidence of originality, compliance with formalities, and ownership of copyrights).
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`Defendants do not offer any evidence to dispute these first three elements.
`Accordingly, the Court concludes that Plaintiffs have established the originality and
`authorship of the compositions at issue, compliance with registration formalities, and
`ownership of the copyrights and, therefore, have established the first three elements of their
`copyright infringement claims against Defendants.
`B. The Fourth Element — Public Performance
`The BMI investigator’s certified infringement report, and the audio recording
`documenting the musical compositions from the BMI repertoire that were played at Norton’s
`on June 10 and 11, 2011, establish the public performance of those copyrighted works. See
`Hickory Grove, 749 F. Supp. at 1036 (uncontradicted affidavit of investigator established
`performance of musical compositions at defendant’s restaurant); Pine Belt, 657 F. Supp. at
`1020 (public performance may be established by certification). BMI hired an investigator
`to visit Norton’s on June 10, 2011 to record the musical compositions publicly performed
`there. (Doc. 40 at ¶ 14, Ex. 2 at ¶ ¶ 14-15 and Ex. A.)
`The investigator’s certified infringement report and the audio recording he made
`establish that the thirteen musical compositions at issue in this matter, as alleged in the
`Amended Complaint, were performed at Norton’s. See Broadcast Music, Inc. v. Hampton
`Beach Casino Ballroom, Inc., 1995 WL 803576, *4 (D. N.H. Aug. 30, 1995) (“‘It is well
`settled that investigators’ affidavits can constitute sufficient proof of live public
`performance.’”) (citing Broadcast Music, Inc. v. Larkin, 672 F. Supp. 531, 533 (D. Me.
`1987)); Broadcast Music, Inc. v. Paden, 2011 WL 6217414, *4 (N.D. Cal. Dec. 14, 2011)
`(finding that investigator’s certified infringement report and BMI music researcher’s review
`of investigator’s audio recording established performance of the musical compositions
`alleged in the complaint).
`In their response, Defendants cite only BMI v. 84-88 Broadway, Inc., 942 F. Supp.
`225 (D. N.J. 1996). But that case holds that certified infringement reports establish “public
`performance.” Id. at 229-30 (“It is well settled that investigators’ affidavits can constitute
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`sufficient proof of live performance,” rejecting defendants’ vague complaints about the
`clarity and completeness of the report.) Accordingly, the certified infringement report
`(Doc. 40 at Ex. 2, Ex. A) is sufficient to establish public performance of eight of the thirteen
`songs at issue.
`Defendants also argue that not all of the thirteen songs were performed at Norton’s
`on the relevant dates. (Doc. 56 at 5.) Although Defendants admit that at least six of the
`thirteen songs at issue were either “probably” or “perhaps” performed at Norton’s on June
`10 and 11, 2011, they dispute that the other seven were performed that night.7 To support
`their contention, Defendants challenge the clarity of the audio recording. The authenticity of
`the audio recording, however, was verified by the first-hand observation of the BMI
`investigator who visited Norton’s and who logged the songs that were played, and was
`further verified by other BMI employees who listened to it and confirmed that all thirteen
`songs at issue are heard on the recording. (Doc. 40 at ¶ 15, Ex. 2 at ¶ ¶ 14-15, Ex. A.)
`Defendants do not offer any competent evidence to create a genuine dispute about the
`veracity of the certified infringement report or the evidence on the audio recording.
`Defendants’ assertion that the CD is “mostly unintelligible” does not create a genuine dispute
`of material fact regarding whether the thirteen songs at issue were publicly performed at
`Norton’s. (Doc. 56 at 4-5.)
`
`7 In their response to Plaintiffs’ First Set of Requests for Admissions Defendants deny
`that the following songs were played at Norton’s on the relevant dates: “Baby Don’t Get
`Hooked on Me,” “Betty’s Bein’ Bad,” “All My Ex’s Live in Texas,” “Eighteen Wheels and
`a Dozen Roses,” “Race is On” a/k/a “The Race is On,” “You Can Call Me Al,” and “One
`Step Forward.” (Doc. 40 at Ex. 3, Resp. to Req. for Admissions 16 and 17.) Defendants
`state that it is possible that the following songs were played: “Boot Scoot Boogie a/k/a Boot
`Scootin’ Boogie,” “Brown Eyed Girl,” “Fireman,” “Shake” a/k/a “The Shake,” “Ring of
`Fire,” and “Only Daddy That’ll Walk the Line.” (Doc. 40 at Ex. 3, Resp. to Req. for
`Admissions 14-16.) Defendants do not cite to their admissions in their response to the
`motion for summary judgment.
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`Defendants also submit an unsigned affidavit from band leader Phil Bidegain and
`Defendant Nancy McDade’s notes of a conversation with Bidegain, which purport to
`establish that Bidegain’s band did not perform seven of the musical compositions at Norton’s
`on the dates at issue. (Doc. 56 at 5, Doc. 57, McDade Decl. at ¶ ¶ 11-12 and Exs. 1 and 2.)
`The affidavit of band leader Phil Bidegain is inadmissible because it is not signed by him.
`(Doc. 57 at Ex. 1); see Fed. R. Civ. P. 56(c)(2); Orr v. Bank of America, 285 F.3d 764, 778
`(9th Cir. 2002) (court can only consider admissible evidence when ruling on a motion for
`summary judgment). Additionally, Nancy McDade’s notes of her conversation with Bidegain
`are inadmissible hearsay. (Doc. 57 at Ex. 1); Orr, 285 F.3d at 778 (9th Cir. 2002) (hearsay
`evidence is inadmissible and thus may not be considered on summary judgment). Thus, there
`is no admissible evidence to create a genuine dispute regarding whether all thirteen songs at
`issue were performed at Norton’s.
`Additionally, Defendants’ assertion that the live band did not play seven of the
`compositions at issue does not create a genuine dispute regarding a material fact because it
`assumes that all of the music on the relevant dates was played by the live band. But, as the
`certified infringement report verifies, some of the songs were played by the live band and
`others were played by a computer-generated media source during the band’s breaks.
`(Doc. 40 at Ex. 2, Ex. A.) Both live and non-live sources constitute public performance. See
`17 U.S.C. § 101 (“To ‘perform’ a work means to recite, render, play, dance, or act it, either
`directly or by means of any device or process.”); Range Road Music, Inc., 668 F.3d at 1153
`n.2 (both musical tracks played from a compact disc player and compositions performed by
`a live band were “performed” for purposes of the Copyright Act, 17 U.S.C. § 101.) Thus,
`Defendants’ assertion that the live band did not play all thirteen of the songs, even if
`admissible, does not preclude summary judgment. Accordingly, the Court finds that the
`Plaintiffs have established that the thirteens songs at issue were publicly performed at
`Norton’s on June 10 and 11, 2011.
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`C. The Fifth Element — Lack of Authorization
`The fifth element, lack of authorization, is established by the undisputed fact that
`Defendants were not licensed by BMI on the dates in question to perform Plaintiffs’
`copyrighted musical compositions. (Doc. 40 at ¶ ¶ 9-10, 17-18, Ex. 3 at Resp. to Req. for
`Admission 27.) Plaintiff BMI sent several cease and desist letters to Defendants. (Doc. 40
`at ¶ ¶ 11-13.) Defendants did not respond to these letters. Furthermore, Defendants admit
`they were not licensed by BMI or any of the other Plaintiffs to perform any of their musical
`compositions at Norton’s. (Doc. 40 at ¶ 18, Ex. 3, Resp. to Req. for Admission 27.)
`Although Defendants admit they were not licensed to perform the musical
`compositions at issue, they argue that “BMI never advised [them] in any manner of their
`rights pursuant to 17 U.S.C. § 513 respecting the rights of single bar owners such as
`Defendant to file an application for the determination of an appropriate and/or reasonable
`license rate or fee.” (Doc. 56 at 6.) Defendants have not cited any authority indicating that
`BMI had such an obligation. Moreover, the record reflects that BMI sent numerous letters
`informing Defendants of the need to obtain permission from copyright owners to lawfully
`publicly perform copyrighted music at Norton’s. (Doc. 48 at 3-5.) Therefore, the Court finds
`that Plaintiffs have established the fifth element of their copyright infringement claims
`against Defendants.
`IV. Defendants’ Assertions and Defenses
`A. Non-Exclusivity and Failure to Join Indispensable Parties
`Defendants assert several additional arguments in opposition to the motion for
`summary judgment. First, Defendants argue that BMI is not entitled to summary judgment
`because its licensing and enforcement rights are non-exclusive as to the composers and songs
`at issue. (Doc. 56 at 3.) The non-exclusive nature of BMI’s licensing agreements, however,
`does not deprive BMI of the right to enforce the copyrights at issue. See Broadcast Music,
`Inc. v. TTJ’s Inc., 2010 WL 2867814, *1 (D. Idaho Jul. 20, 2010) (noting BMI rights are
`“nonexclusive” and granting summary judgment for BMI on its copyright infringement
`
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`claims). The assignments BMI receives from its “affiliates” (songwriters and music
`publishers who assign their copyrights to BMI) for the millions of songs in the BMI
`repertoire are non-exclusive because each BMI affiliate retains the right to separately grant
`permission to a particular user for the public performance of its songs.8 Absent such direct
`permission, however, a user must purchase a BMI license to obtain the right to publicly
`perform a song in the BMI repertoire. (Doc. 60 at 1-2, n.1 and Ex. A.)
`Defendants further argue that summary judgment is inappropriate because Plaintiffs
`have failed to join indispensable parties — ASCAP and SESAC. (Doc. 56 at 4.) Although
`ASCAP and SESAC are performing rights societies like BMI, see 17 U.S.C. § 101,
`Defendants have not offered any evidence that any of the compositions at issue were also
`subject to an ASCAP or SESAC license. Even though BMI has non-exclusive rights to
`license its affiliates’ copyrighted works, that non-exclusivity does not allow the affiliates to
`license with any other performing rights society. Rather, that non-exclusivity permits the
`affiliate itself to license the performance of its compositions. (Doc. 60 at 2, n.2.) Thus,
`ASCAP and SESAC are not indispensable parties to this action. See Fed. R. Civ. P. 19(a).
`Defendants’ arguments pertaining to non-exclusivity and indispensable parties lack merit.
`B. Promotional Value
`Next, Defendants re-urge a “promotional value” argument they asserted during a Rule
`16 scheduling conference in February 2012. (Doc. 36 at 5-6.) They argue that no copyright
`infringement occurred because the live band’s performance of copyrighted songs at Norton’s
`provides “promotional value” to the copyright owners by peaking a listener’s interest in the
`song or calling to mind fond memories related to the song, which in turn may lead the listener
`
`8 The non-exclusive nature of these assignments is required by a Consent Decree,
`issued by the Southern District of New York, that governs BMI’s operations. (Doc. 60 at 2,
`n.1 and Ex. A.) The Consent Decree requires that BMI “allow[] (its affiliated songwriters
`and publishers) to issue a music user making direct performances to the public a non-
`exclusive license permitting the making of such specified performances.” Id.; see Broadcast
`Music, Inc. v. Weigel Broadcasting, Co., 488 F. Supp. 2d. 411, 412 n.1 (S.D.N.Y. 2007).
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`to purchase the artist’s music. (Doc. 56 at 6-7.) Although Defendants state that this theory
`is “supported by copyright law in print,” they do not cite any such authority. (Id. at 7.)
`Furthermore, if accepted, Defendants’ argument would effectively eliminate the
`protections of the Copyright Act because, under Defendants’ “promotional value” theory, any
`person infringing a copyright could escape liability by simply asserting that the infringing
`conduct provided an intangible promotional value to the copyright owner. Defendants’
`further argument that “[n]obody coming to [Norton’s] will ever be confused and think, ‘Oh,
`my gosh, that’s George Straight up there singing,” is also unavailing. Customer confusion
`is not the standard for copyright infringement. See Range Road Music, 668 F.3d at 1153.
`C. Fair Use or Parody
`Defendants further argue that the music performed at Norton’s falls under the parody
`or fair use exception to copyright law. (Doc. 56 at 6.) As an example, Defendants argue that
`“Sweet Home Alabama,” as played at Norton’s, is a parody because the band “may” change
`the word “Alabama” in the song to “Arizona.” (Doc. 57-1 at 3.) “Sweet Home Alabama”
`is not one of the thirteen musical compositions at issue, and Defendants do not identify which
`of the compositions at issue falls within this exception.
`Parody is a subset of fair use, and is evaluated under the criteria set forth in 17 U.S.C.
`§ 107. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 581 (1994) (holding that parody
`may claim fair use § 107). Defendants’ argument does not satisfy the criteria for fair use or
`parody. First, the use of the copyrighted songs at issue were “of a commercial nature,” not
`“for nonprofit educations purposes.” 17 U.S.C. § 107(1). Second, changing one word in a
`song does not “create a new [composition] that, at least in part, comments on [the original]
`author’s works.” Id. at 580. Third, the thirteen songs at issue are “strong” copyrights —
`fictional lyrical stories rather than factual works — and thus deserve greater protection.
`Campbell, 510 U.S. at 586. Fourth, changing “Alabama” to “Arizona” is not the type of true
`parody that does not “supplant[] the original.” Fisher v. Dees, 794 F.2d 732, 438 (9th Cir.
`1986). And fifth, the copying here “is virtually complete or almost verbatim and will not be
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`protected.” Id. at 438. Defendants have not shown that any of thirteen musical compositions
`played at Norton’s on the relevant dates could be considered fair use or parody.
`D.