Coleman v. ESPN, Inc.

• Decision Date: 08 May 1991
• Docket Number: No. 90 Civ. 3632 (RPP).,90 Civ. 3632 (RPP).
• Citation: 764 F. Supp. 290
• Parties: Cy COLEMAN; Leonard Bernstein; Stephen Sondheim; David Fields Lahm, Sidney Aron and Albert I. DaSilva, as co-executors of the estate of Dorothy Fields; Famous Music Corp.; Warner Bros., Inc.; Rilting Music, Inc.; Revelation Music Publishing Corp.; Paramount Music Corp.; Zeon Music; Freejunket Music; Controversy Music; G. Schirmer, Inc.; Jobete Music Co., Inc.; November Nights Music; Almo Music Corp.; Chappell & Co., Inc.; Theodore Presser Company; Shapiro, Bernstein & Co., Inc.; Jim Boy Music; and Don Schlitz Music, individually and on behalf of all members of the American Society of Composers, Authors and Publishers, Plaintiffs, v. ESPN, INC., Defendant.
• Court: U.S. District Court — Southern District of New York

764 F. Supp. 290

Cy COLEMAN; Leonard Bernstein; Stephen Sondheim; David Fields Lahm, Sidney Aron and Albert I. DaSilva, as co-executors of the estate of Dorothy Fields; Famous Music Corp.; Warner Bros., Inc.; Rilting Music, Inc.; Revelation Music Publishing Corp.; Paramount Music Corp.; Zeon Music; Freejunket Music; Controversy Music; G. Schirmer, Inc.; Jobete Music Co., Inc.; November Nights Music; Almo Music Corp.; Chappell & Co., Inc.; Theodore Presser Company; Shapiro, Bernstein & Co., Inc.; Jim Boy Music; and Don Schlitz Music, individually and on behalf of all members of the American Society of Composers, Authors and Publishers, Plaintiffs, v. ESPN, INC., Defendant.

No. 90 Civ. 3632 (RPP).

United States District Court, S.D. New York.

May 8, 1991.

COPYRIGHT MATERIAL OMITTED

Paul, Weiss, Rifkind, Wharton & Garrison by Martin Flumenbaum, New York City, for plaintiffs.

Weil Gotshal & Manges by Kenneth G. Steinthal, New York City, for defendant.

OPINION AND ORDER

ROBERT P. PATTERSON, Jr., District Judge.

This is a class action brought by composers, their estates and music publishers asserting copyright infringement in violation of the Copyright Act of 1976, 17 U.S.C. § 101 et seq. Plaintiffs move for summary judgment on the complaint and striking certain of ESPN's affirmative defenses pursuant to Rule 56 of the Federal Rules of Civil Procedure. For the reasons set forth below, plaintiffs' motion is granted in part and denied in part.

BACKGROUND

Plaintiffs named in the complaint are composers, the estate of a deceased composer and music publishers who are members of the American Society of Composers, Authors and Publishers ("ASCAP"). ASCAP is a performing rights society founded in 1914 having the non-exclusive right to license and collect royalties for non-dramatic public performances of the copyrighted musical compositions of its approximately 45,000 members. Charap Aff. ¶ 3. ASCAP also monitors performances appearing on radio, television and cable programming for unlicensed uses of compositions within the ASCAP repertory. Ayden Aff. ¶ 2. Each ASCAP member authorizes ASCAP to sue for copyright infringement on the member's behalf when unlicensed performances are discovered. Charap Aff. ¶ 4.

Defendant ESPN, Inc. ("ESPN") is a cable service which supplies 24-hour programming consisting of sporting events and sports news to cable system operators. ESPN has 52 million individual subscribers nationwide. The complaint charges that "many, if not all, of the cable television programs ESPN supplies ... contain non-dramatic public performances of copyrighted musical compositions" for which ESPN is not licensed. Complaint filed May 30, 1990 ¶¶ 11-12. Annexed to the complaint is a schedule of twenty sample infringements alleged to have occurred between November 1988 and April 1990.¹ The compositions listed in the schedule include Stephen Sondheim's "Send in the Clowns," alleged to have been performed on November 14, 1988 as part of Skate International America 1988, "Beer Barrel Polka," alleged to have been performed on March 3, 1990 as part of NCAA Basketball, and Prince's "U Got the Look" alleged to have been performed on December 24, 1988 as part of the 1988 National High School Cheerleading Championships. Ayden Aff., Exh. A. The length of these and other performances ranges from 35 seconds to nearly four minutes. Id. ¶ 7. In several instances, the entire composition was performed. Id. ESPN has admitted that the twenty compositions identified in the complaint were correctly identified from tapes of ESPN programs and that ESPN was neither licensed nor authorized to perform them. Ricigliano Aff. ¶ 4; Charap Aff., Exh. D.

In a letter dated August 29, 1988 ASCAP had urged ESPN, without success, to obtain appropriate licensing pursuant to United States v. American Soc'y of Composers, Authors & Publishers, 1950-51 Trade Cas. (CCH) ¶ 62,595 (S.D.N.Y.1950), which provides a judicial mechanism known as the "rate court" for determining reasonable license fees. Id., Exh. F; Tr. at 22.² ESPN however declined to join the rate court proceeding of United States v. ASCAP/In re Application of Turner, No. 89 Civ. 13-95 (S.D.N.Y. filed Jan. 13, 1989), an action to determine whether Showtime and 33 similarly situated cable companies are entitled to a per program license from ASCAP.³

ESPN disavows any need to obtain music licenses from ASCAP for a number of reasons: (1) ESPN commissions its own music;⁴ (2) ESPN requires program packagers who supply programming to ESPN to warrant that any necessary rights have been obtained;⁵ (3) ESPN uses specialized music libraries;⁶ and (4) ESPN obtains individual licenses directly from copyright owners when necessary.⁷

In response to the specific instances of infringement alleged in the complaint, ESPN claims that five compositions — "Let's Go Blue," "Beer Barrel Polka," "Prove Your Love," "Don't Rush Me," and "Danger Zone" — constituted "ambient" noise, i.e., sound audible in the arena during a sports event such as live crowd noise. King Aff. ¶¶ 10-12. ESPN argues that ambient arena noise is not under its control, is merely incidental to its coverage of live sporting events and is picked up only fortuitously, all of which make its use not infringing. Colby Aff. ¶ 2.

ESPN further argues that the background music used by athletes as accompaniment for their routines, including "U Got the Look" and "Send in the Clowns," cannot give rise to copyright infringement because such background music "is not `essential' to ESPN's programming." King Aff. ¶ 13. ESPN points out that commentators frequently speak over the music in order to comment on the athlete's performance and that instant replays are broadcast without the accompanying music. Id. ¶¶ 14-15.

Finally, ESPN offers an affidavit from the producer of the Ms. Fitness America competition in which he states he was informed by Richard Reimer of ASCAP that no license would be necessary in conjunction with use of "Babylon Sisters" and "Hot Thing" if no "line feed" was used,⁸ as ESPN maintains it was not. Zwick Aff. ¶¶ 4-5. Reimer denies knowledge of having made any such statement. Reimer Aff. ¶¶ 3-4.

Plaintiffs move for summary judgment on the complaint and striking ESPN's fair use, copyright misuse, estoppel and unclean hands defenses.

DISCUSSION

Summary judgment is appropriate if the evidence offered demonstrates that there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. Anderson v. Liberty Lobby, 477 U.S. 242, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The burden rests on the moving party to demonstrate the absence of a genuine issue of material fact, Adickes v. S.H. Kress & Co., 398 U.S. 144, 157, 90 S.Ct. 1598, 1608, 26 L.Ed.2d 142 (1970), and the Court must view the facts in the light most favorable to the non-moving party. United States v. Diebold, Inc., 369 U.S. 654, 655, 82 S.Ct. 993, 994, 8 L.Ed.2d 176 (1962).

The ownership and validity of plaintiffs' copyrights is not in dispute. The copyright law gives copyright owners the exclusive right, in the case of musical works, to perform the copyrighted work publicly and to authorize any public performances. 17 U.S.C. § 106(4). Section 101 of the Copyright Act of 1976 defines "public performance" as follows:

To perform or display a work `publicly' means —

(1) to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered; or

(2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.

17 U.S.C. § 101 (1988). It is undisputed that ESPN "performed" plaintiffs' copyrighted musical compositions. Ricigliano Aff. ¶ 4. Transmissions by a cable network or service to local cable companies who in turn transmit to individual cable subscribers constitute "public performances" by the network under 17 U.S.C. § 101(2) separate from the live public performances which fall under § 101(1). See WGN Continental Broadcasting Co. v. United Video, Inc., 693 F.2d 622, 625 (7th Cir.1982); David v. Showtime/The Movie Channel, Inc., 697 F.Supp. 752, 759 n. 3 (S.D.N.Y.1988). Whether ESPN broadcast certain compositions unintentionally because they constituted spontaneous crowd noise is immaterial. Intent is not an element of copyright infringement. See Fitzgerald Publishing Co. v. Baylor Publishing Co., 807 F.2d 1110 (2d Cir.1986); Nationwide Educ. Dev. Corp. v. Rex Communications, Inc., 16 U.S.P.Q.2d 1564, 1990 WL 64595 (S.D.N.Y.1990). See also Columbia Broadcasting Sys., Inc. v. American Soc'y of Composers, Broadcasters & Publishers, 620 F.2d 930, 939 (2d Cir.1980) (suggesting that license is required even for spontaneous performances of musical works), cert. denied, 450 U.S. 970, 101 S.Ct. 1491, 67 L.Ed.2d 621 (1981).⁹

1. Fair Use

The main issue presented is whether ESPN has raised any issues of fact as to the fair use defense. Fair use is a mixed question of law and fact, see Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 560, 105 S.Ct. 2218, 2230, 85 L.Ed.2d 588 (1985), which requires a fact-intensive inquiry ill-suited for summary judgment. See Maxtone-Graham v. Burtchaell, 803 F.2d 1253, 1255 (2d Cir. 1986), cert. denied, 481 U.S. 1059, 107 S.Ct. 2201, 95 L.Ed.2d 856 (1987); Diamond v. Am-Law Publishing Corp., 745 F.2d 142, 147 (2d Cir.1984); DC Comics, Inc. v. Reel Fantasy, Inc., 696 F.2d 24, 28 (2d Cir.1982).

On this record, the unresolved factual issues precluding summary judgment on the complaint include whether each of the copyright takings alleged in the complaint is substantial and whether any individual taking is likely...