throbber
Case 2:11-cv-01980-BSB Document 63 Filed 03/06/13 Page 1 of 24
`
`WO
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF ARIZONA
`
`)))))))))))))))))))))))))))))
`
`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.
`
`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
`28
`
`

`
`Case 2:11-cv-01980-BSB Document 63 Filed 03/06/13 Page 2 of 24
`
`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.)
`
`- 2 -
`
`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
`28
`
`

`
`Case 2:11-cv-01980-BSB Document 63 Filed 03/06/13 Page 3 of 24
`
`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.
`
`- 3 -
`
`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
`28
`
`

`
`Case 2:11-cv-01980-BSB Document 63 Filed 03/06/13 Page 4 of 24
`
`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.)
`
`- 4 -
`
`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
`28
`
`

`
`Case 2:11-cv-01980-BSB Document 63 Filed 03/06/13 Page 5 of 24
`
`“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.
`
`- 5 -
`
`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
`28
`
`

`
`Case 2:11-cv-01980-BSB Document 63 Filed 03/06/13 Page 6 of 24
`
`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
`
`- 6 -
`
`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
`28
`
`

`
`Case 2:11-cv-01980-BSB Document 63 Filed 03/06/13 Page 7 of 24
`
`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).
`
`- 7 -
`
`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
`28
`
`

`
`Case 2:11-cv-01980-BSB Document 63 Filed 03/06/13 Page 8 of 24
`
`(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).
`
`- 8 -
`
`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
`28
`
`

`
`Case 2:11-cv-01980-BSB Document 63 Filed 03/06/13 Page 9 of 24
`
`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
`
`- 9 -
`
`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
`28
`
`

`
`Case 2:11-cv-01980-BSB Document 63 Filed 03/06/13 Page 10 of 24
`
`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.
`
`- 10 -
`
`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
`28
`
`

`
`Case 2:11-cv-01980-BSB Document 63 Filed 03/06/13 Page 11 of 24
`
`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.
`
`- 11 -
`
`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
`28
`
`

`
`Case 2:11-cv-01980-BSB Document 63 Filed 03/06/13 Page 12 of 24
`
`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
`
`- 12 -
`
`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
`28
`
`

`
`Case 2:11-cv-01980-BSB Document 63 Filed 03/06/13 Page 13 of 24
`
`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).
`
`- 13 -
`
`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
`28
`
`

`
`Case 2:11-cv-01980-BSB Document 63 Filed 03/06/13 Page 14 of 24
`
`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
`
`- 14 -
`
`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
`28
`
`

`
`Case 2:11-cv-01980-BSB Document 63 Filed 03/06/13 Page 15 of 24
`
`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.

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket