Dash v. Mayweather

• Decision Date: 26 September 2013
• Docket Number: No. 12–1899.,12–1899.
• Citation: 731 F.3d 303
• Parties: Anthony Lawrence DASH, Plaintiff–Appellant, v. Floyd MAYWEATHER, Jr., an individual; Mayweather Promotions; Mayweather Promotions LLC, a/k/a Mayweather Promtions LLC; Philthy Rich Records Inc.; World Wrestling Entertainment Inc., Defendants–Appellees.
• Court: U.S. Court of Appeals — Fourth Circuit

731 F.3d 303

Anthony Lawrence DASH, Plaintiff–Appellant,

v.Floyd MAYWEATHER, Jr., an individual; Mayweather Promotions; Mayweather Promotions LLC, a/k/a Mayweather Promtions LLC; Philthy Rich Records Inc.; World Wrestling Entertainment Inc., Defendants–Appellees.

No. 12–1899.

United States Court of Appeals, Fourth Circuit.

Argued: March 20, 2013.

Decided: Sept. 26, 2013.

ARGUED:William Angus McKinnon, McGowan, Hood & Felder, LLC, Rock Hill, South Carolina, for Appellant. Mark G. Tratos, Greenberg Traurig, Las Vegas, Nevada; Jerry S. McDevitt, K & L Gates, LLP, Pittsburgh, Pennsylvania, for Appellees. ON BRIEF:John G. Felder, Jr., McGowan, Hood & Felder, LLC, Columbia, South Carolina; Thomas L. Moses, Monahan & Moses, LLC, Greenville, South Carolina, for Appellant. Curtis B. Krasik, K & L Gates, LLP, Pittsburgh, Pennsylvania, Joshua W. Dixon, K & L Gates, LLP, Charleston, South Carolina, for Appellee World Wrestling Entertainment, Inc.; Bethany Rabe, Greenberg Traurig, Las Vegas, Nevada, P. Benjamin Zuckerman, Buckingham, Doolittle & Burroughs, Boca Raton, Florida, for Appellees Floyd Mayweather, Jr., Mayweather Promotions, Mayweather Promotions LLC, and Philthy Rich Records Inc.

Before DAVIS and THACKER, Circuit Judges, and MARK S. DAVIS, United States District Judge for the Eastern District of Virginia, sitting by designation.

Affirmed by published opinion. District Judge DAVIS wrote the opinion, in which Judge THACKER joined. Circuit Judge DAVIS wrote a separate opinion concurring in the judgment.

DAVIS, District Judge:

In this copyright infringement case, Anthony Lawrence Dash (“Dash”) alleges that Floyd Mayweather, Jr. (“Mayweather”), Mayweather Promotions, Mayweather Promotions LLC, Philthy Rich Records, Inc., and World Wrestling Entertainment, Inc. (“WWE”), (collectively “Appellees”), violated his copyright by playing a variant of Dash's copyrighted music during Mayweather's entrance at two WWE events. Dash appeals from the district court's grant of summary judgment on the issue of his entitlement to damages under 17 U.S.C. § 504(b). For the reasons set forth below, we affirm.

I.

A.

In 2005, Dash composed an instrumental music track entitled “Tony Gunz Beat” (“TGB”). Dash has created a number of musical tracks; however, Dash has never received revenue from TGB or any other musical composition.

On February 7, 2008, Mayweather, a well-known boxer, entered into a contract with the WWE under which Mayweather agreed to promote and perform at a live WWE pay-per-view event: Wrestlemania XXIV. Tickets for Wrestlemania XXIV were sold out at the time the parties entered into the contract. The contract did not address the music to be played during Mayweather's appearance at the event, nor did the parties discuss Mayweather's entrance music at the time they entered into the contract.

At some point prior to Wrestlemania XXIV, the WWE communicated to Mayweather that it had selected a song by the musical artist 50 Cent to be played as Mayweather entered the ring at the event. However, the night before Wrestlemania XXIV, one of Mayweather's associates communicated to the WWE that Mayweather would be entering to a different song, entitled “Yep.” Mayweather's manager provided the WWE with a CD containing the song and represented that Mayweather owned all rights to the song and was granting the WWE rights to use it in connection with his appearance. On March 30, 2008, Mayweather appeared at Wrestlemania XXIV, entering the arena to “Yep,” which played for approximately three minutes. Dash claims that “Yep” combines lyrics with his now-copyrighted instrumental music, TGB.

On August 19, 2009, Mayweather entered into a second contract with the WWE in which he agreed to appear as a “Raw Guest Host” on the WWE's August 24, 2009 broadcast of its live weekly program, RAW. Like the Wrestlemania XXIV contract, this contract did not include any terms or conditions related to Mayweather's entrance music. On August 24, 2009, in accordance with the RAW contract, Mayweather appeared as a live guest host on RAW. As in Wrestlemania XXIV, “Yep” was played in connection with Mayweather's appearance.

Although Dash alleges that he created TGB in 2005, he did not file a copyright application for the beat with the United States Copyright Office until sometime in 2009. Dash then received a Certificate of Registration providing an effective date of registration for TGB of October 13, 2009. (J.A.33). Dash claims that Appellees' use of “Yep” in connection with both of Mayweather's WWE appearances infringed his copyright in TGB. Therefore, the claimed infringement is alleged to have occurred after Dash composed TGB, but before his copyright registration became effective.

For the purpose of summary judgment, the parties stipulated to the existence and amount of several revenue streams associated with Wrestlemania XXIV and the August 24, 2009, RAW broadcast.¹ The parties further stipulated as follows:

7. [Dash] has adduced no evidence that the playing of the “Yep” song at Wrestlemania XXIV or the August 24, 2009 RAW show increased any of the WWE revenue streams ... beyond that which would have existed without the song “Yep.”

8. [Dash] has adduced no evidence that WWE received any additional revenue beyond that which would have existed without the song “Yep,” in any of the revenue streams for Wrestlemania XXIV or the August 24, 2009 RAW show ... due to the use of the “Yep” song by Mayweather.

Id.

B.

Dash filed this copyright infringement action against Appellees on April 26, 2010. Dash initially sought preliminary and permanent injunctive relief, actual damages, profit damages from both Wrestlemania XXIV and the August 24, 2009, RAW broadcast, and statutory damages, all as set forth in 17 U.S.C. § 504. Dash later amended his Complaint to remove his request for statutory damages. As the district court observed, because Dash had not registered his copyright prior to the alleged infringement, statutory damages were not available to him. See Dash v. Mayweather, No. 3:10cv1036–JFA, 2012 WL 1658934, at *4 (D.S.C. May 11, 2012).

Following several discovery disputes between the parties and upon Appellees' motion, the district court bifurcated the proceedings with respect to liability and damages. The parties then filed a joint motion asking the district court to address Dash's entitlement to damages under § 504 before reaching the question of Appellees' liability for infringement. The district court granted this motion and ordered Appellees to submit partial summary judgment motions concerning Dash's entitlement to actual and profit damages under § 504(b), which Appellees later filed.

In response, Dash filed a report prepared by a retained expert, Dr. Michael Einhorn, discussing the amount of both actual and profit damages Dash should receive based on the alleged infringement (the “Einhorn Report”). The Einhorn Report described certain background information concerning Dash's history as an artist and the general importance of music to the WWE. It then addressed Dash's entitlement to damages under § 504(b). Regarding actual damages, the Einhorn Report listed four benchmark licensing fees paid to other artists for the use of their music at Wrestlemania XXIV. Based on those fees, the Einhorn Report stated that Dash “would have earned a maximal sum of $3,000 for the use of his musical composition.” (J.A. 1088). Accordingly, the Einhorn Report concluded that Dash's actual damages were “no more than $3,000.” Id. at 1082.

With respect to profit damages, the Einhorn Report reviewed the WWE's various profit streams attributable to Wrestlemania XXIV, calculated the value of Mayweather's appearance at that event relative to the net profits derived from the event, and then calculated the value of “Yep” to Mayweather's appearance based on the minutes of use relative to the length of Mayweather's performance. Id. The Einhorn Report concluded that $541,521 of the WWE's net profit from Wrestlemania XXIV was attributable to the WWE's infringing use of TGB. Id. at 1090. The Einhorn Report performed the same calculation with respect to the net profits that Mayweather derived directly from his appearance at Wrestlemania XXIV, concluding that $480,705 of such profits was attributable to the infringing use. Id. at 1091. The Einhorn Report did not conduct similar analyses concerning the August 24, 2009, RAW broadcast, concluding that there was not sufficient information to apportion a share of the Appellees' net profits to the infringing use of TGB. Id. at 1082. Therefore, based only on the calculations related to Wrestlemania XXIV, the Einhorn Report concluded that Dash should receive “no less than ... $1,019,226,” over and above any actual damages received, “to disgorge” the profits Appellees derived from their alleged infringement of Dash's copyrighted music.²Id.

On May 9, 2012, the district court held a hearing on Appellees' motions for summary judgment. Following the hearing, the district court issued an order granting both motions, finding that Dash was not entitled to either actual or profit damages under § 504(b). Addressing profit damages first, the district court considered the issue of Dash's entitlement to a portion of the profits Appellees derived from Wrestlemania XXIV and from the August 24, 2009, RAW broadcast. With respect to these profit damages, the district court found that Dash had failed to satisfy his initial burden of proof under this Circuit's burden shifting approach to § 504(b). Specifically, in light of Dash's stipulation that the playing of “Yep” did not increase the revenues of either event beyond what such revenues would have otherwise been, the district court found that Dash had failed to present evidence demonstrating a causal link between the alleged infringement and the enhancement of any revenue stream claimed by Dash. In the absence of such evidence, the district court concluded that there was “no conceivable connection” between...