Friedman v. Live Nation Merch., Inc.

• Decision Date: 18 August 2016
• Docket Number: No. 14-55302,14-55302
• Citation: 833 F.3d 1180,119 U.S.P.Q.2d 1852
• Parties: Glen E. Friedman, Plaintiff–Appellant, v. Live Nation Merchandise, Inc.; Anthill Trading, LLC ; Art.com, Inc., Defendants–Appellees.
• Court: U.S. Court of Appeals — Ninth Circuit

833 F.3d 1180

119 U.S.P.Q.2d 1852

Glen E. Friedman, Plaintiff–Appellant,

v.Live Nation Merchandise, Inc.; Anthill Trading, LLC ; Art.com, Inc., Defendants–Appellees.

No. 14-55302

United States Court of Appeals, Ninth Circuit.

Argued and Submitted February 11, 2016—Pasadena, California

Filed August 18, 2016

Lorin E. Brennan (argued), Erica Allen Gonzales, and Douglas A. Linde, The Linde Law Firm, Los Angeles, California, for Plaintiff–Appellant.

Matthew R. Gershman (argued), Peter Yu, Jr., and Jeff E. Scott, Greenberg Traurig LLP, Los Angeles, California, for Defendants–Appellees.

Before: Marsha S. Berzon, and John B. Owens, Circuit Judges, and Algenon L. Marbley,^* District Judge.

OPINION

BERZON, Circuit Judge:

This case arises out of a copyright dispute over the use of photographs Appellant Glen Friedman took of the hip hop group Run–DMC. Appellee Live Nation Merchandise (“Live Nation”) stipulated in the district court that it infringed Friedman's copyrights when it used his photos without his authorization on t-shirts and a calendar. Our questions are whether there is sufficient evidence in the record to permit a jury to conclude that Live Nation committed willful copyright infringement, making it liable for additional damages under 17 U.S.C. § 504(c)(2) ; whether a jury could conclude that Live Nation knowingly removed copyright management information (“CMI”) from the photographs in violation of 17 U.S.C. § 1202(b) ; and whether Friedman can recover statutory damages awards measured by the number of retailers who purchased infringing merchandise from Live Nation, even though Friedman did not join those retailers as defendants in his suit.

FACTUAL AND PROCEDURAL HISTORY

Glen Friedman is a well-known photographer whose work focuses on figures from several American subcultures, including skateboarders, punk rock musicians, and hip hop artists. His photography has been in gallery exhibitions and on record covers and has been published widely.

During the 1980s, Friedman took a series of photographs of the hip hop group Run–DMC. Several of Friedman's photographs of the group appeared in a book collecting his work. In 2005, Friedman granted a license to Sony Music to reproduce some of his Run–DMC photographs, accompanied by information indicating that Friedman owned the copyrights, on a website. Fans could download the images to use as computer “wallpapers.” Sony's license permitted it to alter the images in some respects—for example, by adding a green tint, a Run–DMC logo, or a sparkle effect—and was the only license in which Friedman authorized such alterations to his photographs.

Live Nation¹ is a music merchandising company involved in the design, manufacture, and sale of apparel and other products featuring images and logos of various popular music artists. In developing products, Live Nation typically enters into written merchandising agreements with music artists in which the artists retain final approval authority on the design, development, distribution and sale of merchandise bearing the artists' marks and likeness. In practice, Live Nation submits “Product Approval Forms” to artists asking them to sign off on the development of products displaying specific images. Those forms supplied by Live Nation include no reference to copyrights or other usage restrictions. Live Nation maintains that artists are “not supposed to” provide approval if they do not have the rights to the proposed photographs, but points to no instruction or agreement so stating.

Live Nation also produced “Style Guides”—essentially, collections of available images of particular artists—to inform suppliers about images they could contract to use on merchandise. Like individual products, the Style Guides were first submitted to the artists, who were supposed to “pre-clear” the images of them included in the Guides. Live Nation's Run–DMC Style Guide (“Run–DMC Guide”) included a number of Friedman's images. Live Nation sought and obtained approval from Run–DMC for a 2008 Wall Calendar that included four of Friedman's images, and later, for three t-shirt designs, that included Friedman images previously featured in the Run–DMC Guide.

After he became aware of Live Nation's use of his photographs, Friedman filed a complaint asserting claims for relief for (1) copyright infringement, under 17 U.S.C. § 101 et seq., and (2) removal of copyright management information (“CMI”), under 17 U.S.C. § 1202. During discovery, Live Nation propounded a set of contention interrogatories and requests for admission. The interrogatories asked Friedman to detail the evidence supporting his claims, while the requests for admission asked him to concede that he lacked evidence to support a number of his assertions. The district court had set April 23 as the discovery cut-off date. Friedman's responses were due on April 19.

Friedman did not respond in time. Instead, on April 20, Friedman filed objections asserting that each request was “untimely” because it “requires a response beyond the discovery cut-off.” Friedman claimed that this was so even though his responses were due before the discovery cut-off date as—according to him—the discovery cut-off “is the date by which all discovery, including all hearings on and any related motions, is to be completed.” Reasoning that “a hearing on any discovery motion could not be completed before” April 23, and because “discovery not completed before the discovery cut-off date is not enforceable,” Friedman maintained that he “was not required to provide any response to Defendants' discovery requests.”

After the close of discovery, Friedman moved for summary judgment on the copyright infringement issue. In response, Live Nation stipulated to liability for infringement, and the district court entered partial summary judgment in Friedman's favor. Live Nation then moved for partial summary judgment on Friedman's CMI claim, and, to the extent Friedman claimed Live Nation's infringement was “committed willfully” under 17 U.S.C. § 504(c)(2), on the copyright infringement claim. Relying largely on Friedman's discovery default, Live Nation argued that Friedman had produced no evidence whatsoever indicating that Live Nation had willfully infringed his copyrights or had knowingly removed CMI from any of the images. In his opposition to Live Nation's motion, Friedman requested that the court permit him to withdraw any deemed admissions under Federal Rule of Civil Procedure 36(b).

Without referring to deemed admissions or explicitly ruling on Friedman's Rule 36(b) request, the district court granted Live Nation's motion for partial summary judgment. On the CMI claim, the court found that “Friedman has offered no evidence suggesting that Live Nation Merchandise actually removed CMI from any of his Run–DMC photographs, much less that it did so knowingly or intentionally.” As to Friedman's claim of willful infringement, the court concluded that “the burden of proof here rests on Friedman, and it is not clear that he has offered any evidence that would create an issue of fact for a jury.”

Friedman next filed a revised statement of damages claiming, “[i]n light of the Court's Order Granting Defendant's Motion for Summary Judgment, the maximum statutory damage award” of $3,120,000. Friedman later explained that this figure was based on records indicating that Live Nation had distributed one of the t-shirts to 27 retailers, the other t-shirt to 44 retailers, and the calendar to 33 retailers for a total of 104 separate statutory damage awards of $30,000 each. See 17 U.S.C. § 504(c)(1).

The district court rejected this calculation, ruling that Friedman was “entitled to only one statutory damages award per infringed work.” Even if Friedman's calculation of 104 “downstream infringers” were correct, the court held, this case “involves photographs in a mass-marketing campaign.” Although a prior Ninth Circuit case, Columbia Pictures Television v. Krypton Broadcasting of Birmingham, Inc. , 106 F.3d 284 (9th Cir. 1997), rev'd on other grounds sub nom. Feltner v. Columbia Pictures Television, Inc. , 523 U.S. 340, 118 S.Ct. 1279, 140 L.Ed.2d 438 (1998), was “arguably consistent with [Friedman's] position if read broadly enough,” the court stated that “there is nothing in [Columbia Pictures ] that suggests its reasoning should be applied to a mass-marketing campaign such as that at issue in this case.”

This appeal followed.

DISCUSSION

On appeal, Friedman challenges the district court's grant of summary judgment to Live Nation on his willful infringement and CMI violation claims. He also challenges the district court's order limiting his recovery to one statutory damages award per infringed work.

I.

“Summary judgment is appropriate only if, taking the evidence and all reasonable inferences drawn therefrom in the light most favorable to the non-moving party, there are no genuine issues of material fact and the moving party is entitled to judgment as a matter of law.”

Torres v. City of Madera , 648 F.3d 1119, 1123 (9th Cir. 2011) (citing Corales v. Bennett , 567 F.3d 554, 562 (9th Cir. 2009) ). “[T]here is no issue for trial unless there is sufficient evidence favoring the nonmoving party for a jury to return a verdict for that party. If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted.” McIndoe v. Huntington Ingalls Inc. , 817 F.3d 1170, 1173 (9th Cir. 2016) (quoting R.W. Beck & Assocs. v. City & Borough of Sitka , 27 F.3d 1475, 1480 n.4 (9th Cir. 1994) ). In determining whether there is sufficient evidence to support a grant of summary judgment, we “review[ ] the record as a whole.” Vander v. U.S. Dep't of Justice , 268 F.3d 661, 663 (9th Cir. 2001).

Before proceeding to the merits of the grant of summary judgment, we consider, and reject, a threshold question—Live Nation's contention that it is entitled to summary judgment on the basis of Friedman's discovery default.² Friedman's failure to specify evidence in response to...