Mob Music Publishing v. Zanzibar on the Waterfront, LLC ( 2010 )

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
)
MOB MUSIC PUBLISHING, et al., )
)
Plaintiffs, )
) Civil Action No. 08-1617(EGS)
v. )
)
ZANZIBAR ON THE )
WATERFRONT, LLC, et al., )
)
Defendants. )
)
MEMORANDUM OPINION
This is an action for copyright infringement arising under
the United States Copyright Act, 17 U.S.C. § 101. Plaintiffs
allege that defendants infringed their copyrights by giving
unauthorized public performances of six musical compositions at
defendants’ establishment, Zanzibar on the Waterfront Restaurant.
Pending before the Court is Plaintiffs’ Motion for Summary
Judgment. Upon consideration of the motion, the response and
reply thereto, the applicable law, and the entire record, the
Court hereby GRANTS Plaintiff’s Motion for Summary Judgment.
I. BACKGROUND
A. The Parties
Plaintiffs are the purported owners of six musical
compositions at issue in this action: (i) Plaintiff MOB Music
Publishing purportedly owns the copyright to “Cha Cha Slide”;
(ii) Plaintiff Marley Marl Music, Inc. purportedly owns the
copyright to “Around the Way Girl”; (iii) Plaintiffs WB Music
Corp., Ain’t Nothing But Funkin’ Music, Music of Windswept,
Blotter Music, Elvis Mambo Music, and Curtis James Jackson d/b/a
50 Cent Music purportedly own the copyright to “In Da Club”; (iv)
Plaintiffs Odnil Music Limited and Fifty-Six Hope Road Music
Limited are the purported owners of the copyright to “Jamming”;
(v) Plaintiffs Odnil Music Limited and Fifty-Six Hope Road Music
Limited purportedly own the copyright to “Is This Love”; and (vi)
EMI April Music Inc., Big Poppa Music, and Bovina Music
purportedly own the copyright to “Big Poppa.” Plaintiffs’
Statement of Material Facts (“Pls.’ SMF”) ¶ 1.1
Defendant Zanzibar on the Waterfront, LLC is the owner and
operator of Zanzibar on the Waterfront Restaurant - a nightclub
and restaurant located in the District of Columbia, where live
music is routinely performed. Pls.’ SMF ¶¶ 2-4. Defendant
Michel L. Daley is the managing member of Zanzibar on the
Waterfront, LLC. Pls.’ SMF ¶ 7. In his capacity as managing
member, Defendant Daley performs a variety of functions for
Zanzibar on the Waterfront Restaurant, including obtaining
insurance, making bank deposits, signing checks, hiring and
1
As discussed infra, in Section III.A.1, defendants dispute
plaintiffs’ ownership of the copyrights to these musical
compositions. All other references to plaintiffs’ statements of
material facts included herein, however, are undisputed by
defendants.
2
firing employees, marketing and promoting the restaurant,
entering into licensing agreements for the restaurant, and
handling all legal matters – including lawsuits. Pls.’ SMF ¶¶ 8,
9.
B. ASCAP
Each plaintiff in this action is a member of the American
Society of Composers, Authors and Publishers (“ASCAP”), to which
they have granted a nonexclusive right to license non-dramatic
public performances of their copyrighted musical compositions.
Pls.’ Mot. at 2. On behalf of plaintiffs and its more than
360,000 members, ASCAP issues licenses to thousands of television
networks, radio stations, nightclubs, restaurants, and other
establishments whose owners desire to have public performances of
copyrighted musical compositions in the ASCAP repertory. Pls.’
Mot. at 2.
Defendants were licensed to have live performances of any of
the hundreds of thousands of works in the ASCAP repertory for
periods prior to August 15, 2006. Pls.’ SMF ¶ 15. Effective
August 15, 2006, however, ASCAP terminated defendants’ license
for failure to pay license fees. Pls.’ SMF ¶ 15. Although ASCAP
representatives made repeated offers to reinstate the license of
Zanzibar on the Waterfront, defendants have failed to renew their
ASCAP license. Pls.’ SMF ¶ 16. Accordingly, defendants have
3
been without a license to have live performances of musical
compositions in the ASCAP repertory since August 15, 2006.
C. This Action
On the evening of November 16, 2007, an investigator for
ASCAP visited Zanzibar on the Waterfront Restaurant for the
purpose of “making a contemporaneous list of the titles of all
musical compositions performed during [his] visit which [he] was
able to recognize.” Pls.’ Ex. J, Declaration of Kevin McDonough
(“McDonough Decl.”) ¶ 4. During his visit, the ASCAP
investigator heard performances of five songs in the ASCAP
repertory: “Cha Cha Slide,” “Around the Way Girl,” “In Da Club,”
“Jamming,” and “Is This Love.” McDonough Decl. ¶ 6. Plaintiffs
filed suit against defendants on September 19, 2008, alleging
that these musical compositions were performed in violation of
the Copyright Act.
On February 1, 2009 – while this lawsuit was pending – ASCAP
sent another investigator to Zanzibar on the Waterfront
Restaurant. See Pls.’ Ex. K, Declaration of Mark Eanes (“Eanes
Decl.”). During this visit, the ASCAP investigator heard the
performance of “Big Poppa” – another musical composition in the
ASCAP repertory. See Eanes Decl. ¶ 6. Accordingly, on April 16,
2009, plaintiffs amended their complaint to include a claim for
this alleged infringement.
4
A scheduling order was entered in this action on February 6,
2009, which provided for four months of fact and expert
discovery. See Docket No. 21. Discovery closed in this action
on June 12, 2009. On June 24, 2009, the Court held a status
hearing in the case, at which time a briefing schedule for
summary judgment was implemented.
On August 24, 2009, plaintiffs filed a motion for summary
judgment. Plaintiffs seek (i) statutory damages in the amount of
$10,000 for each cause of action, for a total of $60,000; (ii) an
injunction prohibiting further infringing performances of any
copyrighted musical compositions in the ASCAP repertory; and
(iii) reasonable attorney’s fees and costs. See Pls.’ Mot. at 3,
24. Defendants oppose the motion and ask the Court to, sua
sponte, enter summary judgment in defendants’ favor. See Defs.’
Opp’n Br. at 1. Alternatively, defendants seek additional
discovery pursuant to Federal Rule of Civil Procedure 56(f)
related to the circumstances surrounding Bob Marley’s composition
of “Jamming” and “Is This Love.” See generally Defs.’ Ex. A,
Affidavit of Ronald C. Jessamy, Sr. (“Jessamy Aff.”).
Plaintiffs’ motion for summary judgment is now ripe for
determination by the Court.
II. STANDARD OF REVIEW
Summary judgment should be granted only if the moving party
has shown that there are no genuine issues of material fact and
5
that the moving party is entitled to judgment as a matter of law.
See Fed. R. Civ. P. 56; Celotex Corp. v. Catrett, 477 U.S. 317,
325 (1986); Waterhouse v. Dist. of Columbia, 298 F. 3d 989, 991
(D.C. Cir. 2002). A fact is genuine “‘if the evidence is such
that a reasonable jury could return a verdict for the nonmoving
party.’” Steele v. Schafer, 535 F. 3d 689, 692 (D.C. Cir. 2008)
(quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
(1986)). Facts are material if they “‘might affect the outcome of
the suit under the governing law.’” Id. (quoting Anderson, 477
U.S. at 248). The party seeking summary judgment bears the
initial burden of demonstrating an absence of genuine issues of
material fact. Celotex, 477 U.S. at 322. In determining whether a
genuine issue of material facts exists, the Court must view all
facts in the light most favorable to the non-moving party. See
Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574,
597 (1986); Keyes v. Dist. of Columbia, 372 F. 3d 434, 436 (D.C.
Cir. 2004). “When a motion for summary judgment is properly made
and supported, an opposing party may not rely merely on
allegations or denials in its own pleading; rather, its response
must . . . set out specific facts showing a genuine issue for
trial.” Fed. R. Civ. P. 56(e)(2); see also Celotex, 477 U.S. at
324.
6
III. ANALYSIS
A. Copyright Infringement
“A plaintiff seeking to establish copyright infringement
must prove ‘(1) ownership of a valid copyright, and (2) copying
of constituent elements of the work that are original.’”
Stenograph LLC v. Bossard Assoc., Inc., 144 F.3d 96, 99 (D.C.
Cir. 1998) (quoting Feist Publ’ns, Inc. v. Rural Tel. Serv. Co.,
499 U.S. 340, 361 (1991)). In the music performance context,
these requirements have been alternatively stated as: (1)
originality and authorship of the compositions involved; (2)
compliance with the formalities required to secure a copyright;
(3) plaintiff’s ownership of the copyright; and (4) defendant’s
public performance of the compositions. EMI April Music, Inc. v.
White, 618 F. Supp. 2d 497, 504 (E.D. Va. 2009).
1. Ownership of a Valid Copyright
To establish ownership of valid copyrights to the musical
compositions at issue in this case, plaintiffs have filed copies
of the copyright registration certificates for each musical
composition as well as other pertinent documents demonstrating
chain of title. See generally Pls.’ Ex. B. Because these
copyright registration certificates constitute prima facie
evidence of plaintiffs’ valid copyrights, see 17 U.S.C. § 410(c)
(“In any judicial proceedings the certificate of a registration
made before or within five years after first publication of the
7
work shall constitute prima facie evidence of the validity of the
copyright and of the facts stated in the certificate.”),2
defendants have the burden of establishing the invalidity of
plaintiffs’ titles. See, e.g., Saenger Org. v. Nationwide Ins.
Licensing Assocs., 119 F.3d 55, 59 (1st Cir. 1997) (“[A]
certificate of copyright registration constitutes prima facie
evidence of copyrightability and shifts the burden to the
defendant to demonstrate why the copyright is not valid.”
(internal quotation marks omitted)).
Defendants contest plaintiffs’ ownership of the copyrights,
arguing that “[t]he record demonstrates that plaintiffs have not
produced evidence that they own the copyrights to the works that
are subject of the complaint.” Defs.’ Opp’n Br. at 3. First,
with regards to the songs “Cha Cha Slide,” “Around the Way Girl,
2
See, e.g., Joelsongs v. Shelley Broad. Co., Inc., 491 F.
Supp. 2d 1080, 1083 (M.D. Ala. 2007) (finding that plaintiffs
satisfied the first element of copyright infringement “by
submitting copies of the copyright registration certificates
which, pursuant to 17 U.S.C. § 410(c), constitute prima-facie
evidence of copyright ownership”); Odnil Music Ltd. v. Katharsis
LLC, No. 05-545, 2006 WL 2545869, at *5 (E.D. Cal. July 21,
2006)(same); Simpleville Music v. Mizell, 451 F. Supp. 2d 1293,
1296 (M.D. Ala. 2006) (same); Flyte Tyme Tunes v. Miszkiewicz,
715 F. Supp. 919, 921 (E.D. Wisc. 1989) (same); Warner Bros.,
Inc. v. Lobster Pot, Inc., 582 F. Supp. 478, 481 (N.D. Ohio 1984)
(same); see also Van Halen Music v. Palmer, 626 F. Supp. 1163,
1165 (W.D. Ark. 1986) (“A prima facie case as to the first three
elements [of infringement of copyright in musical compositions]
may be made by submitting certified copies of copyright
registration certificates and any subsequent assignments.”
(citing cases)).
8
“In Da Club,” and “Big Poppa,” defendants argue that the
copyright registration certificates are insufficient to establish
copyright ownership “because the copyright registrants are not
the plaintiffs” and “the plaintiffs have not produced any
evidence of [a] written and signed transfer of ownership.”
Defs.’ Opp’n Br. at 5. Second, with regards to the songs
“Jamming” and “Is This Love,” defendants argue that the copyright
registration certificates – which list the registrant of the
copyright as “Bob Marley Music Ltd., employer for hire of Bob
Marley” – are improper because “a musical composition cannot be a
work for hire.” Defs.’ Opp’n Br. at 7-8. Defendants assert that
because “Jamming” and “Is This Love” are not valid “works for
hire,” Bob Marley Music Ltd. Inc. lacked authority to transfer
the copyrights to plaintiffs, thereby invalidating plaintiffs’
claims of ownership. These arguments will be explored in turn.
i. “Cha Cha Slide,” “Around the Way Girl, “In Da
Club,” and “Big Poppa”
As discussed above, defendants argue that plaintiffs have
failed to establish ownership of the copyrights for the musical
compositions “Cha Cha Slide,” “Around the Way Girl, “In Da Club,”
and “Big Poppa” because “[e]ach plaintiff in the instant case is
bringing suit as an assignee, yet none of the plaintiffs have
shown evidence of a chain of title from the author of the work to
them.” Defs.’ Opp’n Br. at 5. In light of the evidence
9
presented in this case, the Court finds defendants’ argument
unpersuasive.
Specifically, the original copyright registration forms for
“Cha Cha Slide,” “Around the Way Girl, “In Da Club,” and “Big
Poppa” list the plaintiffs in this action as the copyright
claimants. See Pls.’ Ex. B-A (copyright registration form for
“Cha Cha Slide,” which lists plaintiff MOB Music Publishing as
the “copyright claimant” and states that plaintiff obtained
ownership of the copyright by “transfer of rights by author”);
Pls.’ Ex. B-B (copyright registration form for “Around the Way
Girl,” which lists plaintiff Marley Marl Music Inc. as the
“copyright claimant” and states that plaintiff obtained ownership
of the copyright “by written agreement”); Pls.’ Ex. B-C
(copyright registration form for “In Da Club,” which lists
plaintiffs Curtis James Jackson, WB Music Corp., Ain’t Nothing
But Funkin’ Music, Music of Windswept, Blotter Music, and Elvis
Mambo Music as copyright claimants and states that plaintiffs
obtained ownership of the copyright “by written agreement”);
Pls.’ Ex. B-F (copyright registration form for “Big Poppa,” which
lists plaintiffs EMI April Music Inc., Big Poppa Music, and
Bovina Music as copyright claimants and states that plaintiffs
obtained ownership of the copyright “by virtue of written
agreement”). Because plaintiffs are listed as the copyright
claimants on the certificates of registration, they have
10
satisfied their initial burden of demonstrating copyright
ownership. As the leading treatise on this issue explains:
If the plaintiff was the author of the work in issue,
he has no problem of proof beyond proving such
authorship in establishing his ownership of the
copyright. Where, however, the plaintiff claims not as
author but as a direct or mesne assignee of the author,
the question arises as to where the burden of proof
lies in establishing the chain of title. Here, a
distinction must be observed between a plaintiff who,
as assignee of the copyright, (either common law or
statutory), first registered a claim of statutory
copyright in his name, and a plaintiff who was merely
an assignee of a previously registered copyright. As
the former has obtained a certificate of registration
that constitutes prima facie evidence of the validity
of his copyright, and of the facts stated therein, the
defendant has the burden of controverting the
plaintiff’s chain of title. However, an assignee of a
previously registered statutory copyright has the
burden of proving his chain of title because nothing in
the registration certificate evidences his right to
claim through the original copyright claimant. Once
such evidence is offered by the plaintiff, the burden
shifts to the defendant to establish the invalidity of
plaintiff’s title.
3-12 Nimmer on Copyright § 12.11[C]; see also Marobie-FL, Inc. v.
Nat’l Assoc. of Fire Equip. Distribs., 983 F. Supp. 1167, 1173
(N.D. Ill. 1997) (“A plaintiff’s chain of title from the author
is presumed by reason of the registration certificate where the
plaintiff obtained an assignment of rights prior to
registration.”). As defendants have produced no evidence to
controvert plaintiffs’ chain of title to the songs “Cha Cha
Slide,” “Around the Way Girl, “In Da Club,” and “Big Poppa,” the
11
Court concludes that plaintiffs have established their ownership
of valid copyrights for these musical compositions.
ii. “Jamming” and “Is This Love”
Next, defendants argue that plaintiffs have failed to
establish rightful ownership of “Jamming” and “Is This Love.” As
a threshold matter, plaintiffs have produced chain-of-title
evidence demonstrating assignment of the copyrights from Bob
Marley Music Ltd. to Plaintiffs Odnil Music Limited and Fifty-Six
Hope Road Music Limited. See Pls.’ Ex. B-D (copyright
registration form for “Is This Love,” which lists the author as
“Bob Marley Music Ltd. employer for hire of Bob Marley”;
certificates of assignment documenting transfer of ownership from
Bob Marley Music Ltd. to Odnil Music Limited and Fifty-Six Hope
Road Music Limited); Pls.’ Ex. B-E (copyright registration form
for “Jamming,” which lists the author as “Bob Marley Music Ltd.
employer for hire of Bob Marley”; certificates of assignment
documenting transfer of ownership from Bob Marley Music Ltd. to
Odnil Music Limited and Fifty-Six Hope Road Music Limited).
Defendants, however, ask the Court to reject this evidence,
arguing that Bob Marley Music Ltd. did not own the copyrights for
“Jamming” and “Is This Love” – as is stated on the copyright
registration forms – because these songs are not valid “works for
12
hire.”3 Defendants argue that because these songs cannot qualify
as works for hire, only Bob Marley – not Bob Marley Music Ltd. –
had the authority to transfer ownership of the musical
compositions, thereby rendering plaintiffs’ subsequent
assignments of the copyrights invalid. See Defs.’ Opp’n Br. at 7
(“Because these were not valid ‘works for hire,’ the copyrights
for ‘Jamming’ and ‘Is This Love’ vested in Bob Marley (the
individual), not Bob Marley Music Ltd. The Plaintiffs have made
no showing that Bob Marley transferred ownership of these two
songs to anyone let alone the Plaintiffs Odnil Music Limited and
Fifth Six Hope Road Music Limited.”). The Court finds this
argument unpersuasive.
As discussed above, copyright registration certificates –
together with certificates of assignment – constitute prima facie
evidence of a party’s ownership of a valid copyright. In this
case, Odnil Music Limited and Fifty-Six Hope Road Music Limited
submitted the copyright registration certificates for “Jammin”
and “Is This Love.” Defendants’ idle assertions regarding the
possibility that these Bob Marley songs were improperly
3
The work for hire doctrine is an exception to the general
rule in copyright that the author is the original owner of a
work. Section 201(b) of the Copyright Act provides that “[i]n
the case of a work made for hire, the employer or other person
for whom the work was prepared is considered the author for
purposes of this title, and, unless the parties have expressly
agreed otherwise in a written instrument signed by them, owns all
of the rights comprised in the copyright.” 17 U.S.C. § 201(b).
13
registered as “works for hire” - as well as defendants other
unsupported evidentiary complaints - are simply insufficient to
create a genuine issue of material fact as to plaintiffs’
ownership of the songs. See Ginger v. District of Columbia, 527
F.3d 1340, 1347 (D.C. Cir. 2008) (“‘[A] mere unsubstantiated
allegation . . . creates no genuine issue of fact and will not
withstand summary judgment.’”(quoting Harding v. Gray, 9 F.3d
150, 154 (D.C. Cir. 1993))); see also Varry White Music v. Banana
Joe’s of Akron, No. 05-1074, 2002 U.S. Dist. LEXIS 25736, at *11-
13 (N.D. Ohio 2002) (finding that the defendants’ “naked
assertions and blanket denials” regarding the validity of the
copyright registration certificates filed by the plaintiffs were
“insufficient to create a genuine issue of material fact as to
the first three elements of an infringement claim”).4 The Court
concludes, therefore, that plaintiffs have established their
ownership of valid copyrights for “Jamming” and “Is This Love.”
See also Odnil Music Ltd. v. Katharsis LLC, No. 05-545, 2006 WL
2545869, at *5 (E.D. Cal. July 21, 2006) (finding that Odnil
Music Limited and Fifty-Six Hope Road Music Limited “conclusively
4
Plaintiffs also persuasively argue that “[i]f Defendants are
allowed to prevail with their arguments, then every copyright
infringer will be able to dispute copyright ownership based on
valid registration certificates with baseless speculation,
unsupported by any evidence, and thereby eviscerate the statutory
command that a copyright registration certificate ‘shall
constitute prima facie evidence of the validity of the copyright
and of the facts stated in the certificate.’” Pls.’ Reply Br. at
15 (quoting 17 U.S.C. § 410(c)).
14
establish[ed]” their ownership of a copyright for “Jamming” and
three other Bob Marley songs “by proffering into evidence the
copies of copyright registration certificates and other pertinent
documents,” and rejecting the defendants’ unsupported contentions
regarding the plaintiffs’ ownership of the copyrights).5
5
Pursuant to Federal Rule of Civil Procedure 56(f),
defendants also request leave to conduct additional discovery “to
determine the circumstances of [the] compositions” of “Jamming”
and “Is This Love.” See generally Defs.’ Ex. A, Jessamy Aff.
¶¶ 3-6. The Court finds defendants’ request – which was filed
after the close of discovery and, indeed, after plaintiffs had
filed their motion for summary judgment pursuant to a schedule
agreed upon by the parties – to be both dilatory and speculative.
Defendants’ assertion that “[i]t is unclear from the discovery
provided by plaintiffs to date and from the limited evidence
provided with their motion whether these two songs were, in fact,
‘works for hire’ or if they were created ‘in the scope of
employment,’” Jessamy Aff. ¶ 4 - “without any supporting facts to
justify the proposition that the discovery sought will produce
the evidence required,” Messina v. Krakower, 439 F.3d 755,762
(D.C. Cir. 2006) (internal quotation marks omitted) – appears to
this Court to be nothing more than a last-minute attempt to take
out-of-time discovery in the hopes of potentially garnering the
evidence necessary to rebut plaintiffs’ prima facie case. As
plaintiffs explain: “[I]f this were a legitimate request,
Defendants should have properly requested additional documents
when they received the copyright certificates, which was before
the close of discovery. Defendants could have, at the very
least, sought to take further discovery well before Plaintiffs
prepared and filed their summary judgment motion. They did not
do so and Plaintiffs should not be made to suffer for Defendants’
inaction.” Pls.’ Reply Br. at 22. Accordingly, the Court DENIES
defendants’ request for Rule 56(f) discovery substantially for
the reasons set forth in plaintiffs’ reply brief. See Pls.’
Reply Br. at 18-22 (explaining why defendants’ request for
additional discovery is inappropriate, and providing
documentation that was presented to defense counsel before the
end of the discovery period regarding plaintiffs’ intent to rely
upon the copyright registration certificates and related
documentation to establish plaintiffs’ ownership of the
copyrights to “Jamming” and “Is This Love”).
15
Accordingly, the Court finds that plaintiffs have
established proof of ownership of all musical compositions at
issue in this case.
2. Defendants’ Public Performance of the Musical
Compositions
In order to establish copyright infringement, plaintiffs
must also establish that the six copyrighted musical compositions
owned by plaintiffs were performed at the Zanzibar on the
Waterfront Restaurant without plaintiffs’ permission. The
affidavits of Kevin McDonough and Mark Eanes – the ASPAC
investigators – establish proof of the infringing behavior. See
Pls.’ Exs. J, K. Although defendants have generally denied that
the musical compositions were performed at the restaurant on the
dates alleged, they have offered no affirmative proof that the
compositions were not performed. See Defs.’ Response to Pls.’
SMF ¶¶ 15-16 (“Defendants do not know what songs were played in
their club on the dates in questions.”). Nor have defendants
offered any evidence that they received permission from the
individual plaintiffs to perform the disputed musical
compositions. See Pls.’ Ex. E-1, Daley Dep. Tr. Vol. 1 at 119-
120) (testimony of Defendant Daley indicating that he had no
reason to believe that any of the plaintiffs gave Zanzibar on the
Waterfront Restaurant permission to play any of musical
compositions at issue in this action). Defendants, therefore,
16
have failed to raise a genuine issue of fact necessary to defeat
plaintiffs’ motion for summary judgment. See Fed. R. Civ. P.
56(e)(2) (“When a motion for summary judgment is properly made
and supported, an opposing party may not rely merely on
allegations or denials in its own pleading[.]”).
In sum, the Court concludes that plaintiffs’ have
established that defendants unlawfully infringed upon their
copyrights for “Cha Cha Slide,” “Around the Way Girl, “In Da
Club,” “Big Poppa,” “Jamming,” and “Is This Love” through the
unauthorized performance of these musical compositions at
Zanzibar on the Waterfront Restaurant on November 17, 2007 and
February 1, 2009. Accordingly, the Court hereby GRANTS
plaintiffs’ motion for summary judgment.
B. Joint Liability
Plaintiffs contend that both defendants are jointly liable
for the copyright infringements alleged in their First Amended
Complaint. Pls.’ Mot. at 14-18. With respect to Defendant
Daley, plaintiffs argue that he may be held vicariously liable
for the copyright infringements because, inter alia, (i) he is
the managing member of Zanzibar on the Waterfront, LLC and is
held out to the public as such, Pls.’ SMF ¶¶ 7, 9; (ii) he has a
supervisory role with respect to the operations of Zanzibar on
the Waterfront Restaurant, SMF ¶¶ 8-9; (iii) he has the right and
ability to supervise the decision of which music is performed at
17
Zanzibar on the Waterfront Restaurant, Pls.’ Ex. E-1, Daley Dep.
Tr. Vol. 1 at 69-70, 127; and (iv) he derives a direct financial
benefit from the operation of Zanzibar on the Waterfront in the
form of a salary and dividends, Pls.’ SMF ¶ 10. Defendants do
not dispute these facts, nor do they respond to plaintiffs’
arguments in their opposition brief. The Court will
nevertheless, however, briefly review the law of vicarious
liability.
It is well established that an individual may be held
vicariously liable for copyright infringement if he (i) has the
“right and ability” to supervise the infringing activity and (ii)
has a “direct financial interest” in such activities. Rilting
Music, Inc. v. Speakeasy Enters., Inc., 706 F. Supp. 550, 556
(S.D. Ohio 1988) (discussing the widely-applied, two-prong test
for vicarious liability in a copyright infringement case
established in Shapiro, Bernstein & Co. v. H.L. Green Co., 316
F.2d 304 (2d Cir. 1963)). The imposition of liability on a
controlling individual is based upon the belief that the
individual is in a position to control the conduct of the entity
which is the primary infringer. Id. Lack of knowledge of the
infringing activity, however, is not a defense; nor is the fact
that independent contractors hired by defendants performed the
infringing musical compositions. See EMI April Music, 618 F.
Supp. 2d at 507. Indeed, “[e]ven when a restaurant proprietor
18
instructs band members not to perform copyrighted music at his
establishment, or inserts a provision to that effect in the
band’s contract, such proprietor cannot escape vicarious
liability when he has a right to supervise and a financial
interest in such performance.” Id. (citing cases). Accordingly,
the fact that “[t]he selection of songs played at the Defendants’
club is determined by non-employee, independent contractors who
are hired to play music at the club,” does not absolve Defendant
Daley of liability. Defs.’ Response to Pls.’ SMF ¶¶ 15-16.
Therefore, because it is undisputed that Defendant Daley had the
right and ability to supervise the infringing activity, and
because Defendant Daley had a financial interest in the
infringing activity through his operation of the profit-making
establishment, the Court concludes that Defendant Daley is
jointly and severally liable, along with his co-defendant
Zanzibar on the Waterfront, LLC, for the copyright infringements
that are the subject of this action.
C. Statutory Damages & Relief
Having found defendants jointly and severally liable for the
infringing behavior, the Court will now address the question of
damages and relief.
1. Statutory Damages
Plaintiffs seek statutory damages pursuant to 17 U.S.C.
§ 504(c)(1). Section 504(c)(1) directs the Court to award a
19
copyright owner an amount “not less than $750 or more than
$30,000” for each piece of work infringed. 17 U.S.C.
§ 504(c)(1). In a case where a defendant has willfully violated
a copyright, the Court “may increase the award of statutory
damages to a sum of not more than $150,000” for each piece of
work infringed. Id. § 504(c)(2).6
It is important to note that statutory damages “are intended
not merely for the restitution of reparation of injury, but to
deter wrongful conduct.” EMI April Music, 618 F. Supp. 2d at 508(internal quotation marks omitted). As the Supreme Court has
long recognized:
[A] rule of liability which merely takes away the
profits from an infringement would offer little
discouragement to infringers. It would fall short
of an effective sanction for enforcement of the
copyright policy. The statutory rule, formulated
after long experience, not merely compels
restitution of profit and reparation for injury but
also is designed to discourage wrongful conduct.
F.W. Woolworth Co. v. Contemporary Arts, 344 U.S. 228, 233
(1952). Indeed, in cases such as this, courts have routinely
awarded statutory damages in amounts between two and three times
6
Defendants contend that “the failure to pay a license fee to
[ASCAP] does not demonstrate willful conduct on the part of the
defendants in this case for copyright infringement.” Defs.’
Response to Pls.’ SMF ¶¶ 15-16. The Court need not decide this
issue, however, as plaintiffs are only seeking damages pursuant
to 17 U.S.C. § 504(c)(1). See Pls.’ Reply Br. at 16 (“[B]ecause
plaintiffs seek statutory damages under 17 U.S.C. § 504(c)(1), a
finding of willfulness is not necessary for the award of damages
requested by plaintiffs.”).
20
the license fees. EMI April Music, 618 F. Supp. 2d at 508
(citing cases).
Plaintiffs represent that had defendants been properly
licensed by ASCAP to date, defendants would owe approximately
$26,395.15 in license fees and finance charges. Pls.’ Mot. at 24
(citing Pls.’ Ex. I, Declaration of Douglas Jones ¶ 23).
Plaintiffs argue that an award of damages equivalent to the ASCAP
license fees, however, is insufficient to deter defendants from
continued infringement of copyrighted music, and urge the Court
to award damages of $10,000 per infringement – for a total of
$60,000.
The Court agrees that damages in the amount of the ASCAP
license fee, alone, are insufficient to deter defendants from
additional copyright infringements. Indeed, after this lawsuit
was filed, plaintiffs had to amend their complaint to add an
additional claim of copyright infringement which occurred on
February 1, 2009 – five months after plaintiffs had instituted
this action. Accordingly, the Court concludes that damages in
the amount of $6,000 per infringement are warranted for the
unlawful performances of “Cha Cha Slide,” “Around the Way Girl,”
“In Da Club,” “Jamming,” and “Is This Love,” which occurred on
November 16, 2007, for a total of $30,000 (which is slightly more
than the total ASCAP license fee “saved”). The Court concludes
that damages in the amount of $10,000 are warranted for the
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unlawful performance of “Big Poppa,” which occurred several
months after this lawsuit was filed and therefore after
defendants were put on notice of their infringing activity.7
Defendants are therefore jointly and severally liable in the
amount of $40,000 in statutory damages.
2. Injunctive Relief
Plaintiffs also seek a permanent injunction prohibiting
defendants from publicly performing any of the copyrighted
musical compositions in the ASCAP repertory. Pls.’ Mot. at 19-
20. Pursuant to 17 U.S.C. § 502(a), the Court may grant
“temporary and final injunctions on such terms as it may deem
reasonable to prevent or restrain infringement of a copyright.”
17 U.S.C. § 502(a). Because plaintiffs have established that
defendants have repeatedly infringed upon their copyrights by
unlawfully performing their musical compositions, and in view of
defendants’ unwillingness to renew their ASCAP license despite
7
The Court also notes, however, that well before this action
was filed, defendants were informed by ASCAP that a performance
of any musical composition in the ASCAP repertory would
constitute an actionable infringement. See, e.g., Pls.’ Ex. E-6,
Letter from ASCAP to Michael Daley, dated September 5, 2006 (“I
am writing to inform you once again that your ASCAP license was
terminated for default on 08/15/2006. . . . We advised you of
your potential liability under the United States Copyright Law
for infringing performances of our members’ copyrighted musical
compositions and requested payment of past due fees so that your
license could remain in effect enabling you to perform our
members’ works lawfully. Despite our efforts, you remain
unlicensed.”).
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ASCAP’s repeated efforts, the Court concludes that a permanent
injunction is warranted. See, e.g., EMI April Music, Inc., 618
F. Supp. 2d at 511-12 (permanently enjoining defendants from
directly or indirectly infringing on the copyrights of all ASCAP
members); Joelsongs, 491 F. Supp. 2d at 1085-86 (same); Odnil
Music Ltd., 2006 WL 2545869, at *9 (same). Accordingly, the
Court hereby ORDERS that defendants and all persons acting under
the direction, control, permission, or authority of defendants
are permanently ENJOINED AND RESTRAINED from publicly performing,
or causing to be performed, or aiding and abetting the public
performance of, any and all music in the ASCAP repertory without
proper authorization.
3. Reasonable Costs and Attorney’s Fees
Finally, plaintiffs seek reasonable costs and attorney’s
fees in the amount of $74,712.22. See Pls.’ Mot. at 24-28; see
also Pls.’ Ex. L, Declaration of Benjamin L. Zelenko in Support
of Attorney’s Fees and Costs. 17 U.S.C. § 505 permits “the court
in its discretion” to award “the recovery of full costs by or
against any party” as well as “reasonable attorney’s fees to the
prevailing party.” 17 U.S.C. § 505. Considering all the facts
in this case, including plaintiffs’ interest in vindicating the
rights provided to them by Congress in the Copyright Act,
plaintiffs’ need to amend its complaint to add an additional
infringement, and the protracted nature of this litigation, the
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Court concludes that an award of costs and attorney’s fees is
warranted. Having carefully reviewed the Declaration of Mr.
Zelenko, the Court concludes that an award of attorney’s fees in
the amount of $69,145.00 and costs of $5,567.22 is reasonable.
Defendants are therefore jointly and severally liable in the
amount of $74,712.22 for attorney’s fees and costs.
IV. CONCLUSION
For the foregoing reasons, plaintiffs’ motion for summary
judgment is GRANTED. An appropriate Order accompanies this
Memorandum Opinion.
SIGNED: Emmet G. Sullivan
United States District Court Judge
March 26, 2010
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