Hubbard Broadcasting v. Southern Satellite Systems, 3-81 Civ. 330.

• Decision Date: 23 August 1984
• Docket Number: No. 3-81 Civ. 330.,3-81 Civ. 330.
• Citation: 593 F. Supp. 808
• Parties: HUBBARD BROADCASTING, INC., Plaintiff, v. SOUTHERN SATELLITE SYSTEMS, INC. and Turner Broadcasting System, Inc., Defendants.
• Court: U.S. District Court — District of Minnesota

593 F. Supp. 808

HUBBARD BROADCASTING, INC., Plaintiff, v. SOUTHERN SATELLITE SYSTEMS, INC. and Turner Broadcasting System, Inc., Defendants.

No. 3-81 Civ. 330.

United States District Court, D. Minnesota, Third Division.

August 23, 1984.

COPYRIGHT MATERIAL OMITTED

Leonard, Street & Deinard by Sidney Barrows, Byron Starns, and Patricia Schaffer, Minneapolis, Minn., for plaintiff.

Faegre & Benson by Duane Krohnke, Minneapolis, Minn., Pepper & Corazzini by Robert Corazzine, Washington, D.C., and Jerry Reed, Tulsa, Okl., for defendant Southern Satellite Systems, Inc.

Popham, Haik, Schnobrich, Kaufman & Doty, Ltd. by Thomas K. Berg, Minneapolis, Minn., Troutman, Sanders, Lockerman & Ashmore by Tench C. Coxe and Hugh M. Davenport, Atlanta, Ga., for defendant Turner Broadcasting System, Inc.

MEMORANDUM ORDER

ALSOP, District Judge.

This matter comes before the court upon cross-motions for summary judgment. All parties agree that there are no genuine issues of material fact in dispute and that the question whether or not defendants are liable to plaintiff for copyright infringement is purely a question of law. The parties have submitted a joint stipulation of facts I and II, joint exhibits, volumes of separate exhibits, affidavits, a compendium of legal authorities, individual statements of facts and a number of briefs. The issues have been well presented by able counsel on all sides.

I. Standing

Plaintiff claims standing under 17 U.S.C. § 501(b), which provides that "the legal or beneficial owner of an exclusive right under a copyright is entitled ... to institute an action for any infringement of that particular right committed while he or she is the owner of it." Hubbard claims it has standing if (1) it is the owner of an exclusive right and (2) Turner & Southern infringed the particular right that Hubbard owns. Hubbard says the first requirement is met because all of the licenses for the five works in issue contain two provisions, a granting provision and an exclusivity provision, which together convey to Hubbard the exclusive right to transmit the works to television (TV) viewers in Hubbard's broadcast areas. "Plaintiff's Reply Memo" at 3-10. Hubbard claims the second requirement is met because Hubbard's exclusive right to exhibit the works to the television viewing audience in particular territories is the precise right allegedly infringed by Turner/Southern's cable transmissions of the works within Hubbard's exclusive zone. Id. at 11-16.

Defendants contend plaintiff lacks standing because, first, it is not the owner of any exclusive rights. Defendants claim the licenses do not affirmatively grant Hubbard a portion of the owner's exclusive rights, but instead merely contain promises by the owners that they will not license certain conduct by other entities. Those promises may give Hubbard a breach of contract claim, but do not constitute the transfer of part of the copyright owners' exclusive rights. "Defendants' Joint Memo" at 61-63. Furthermore, any exclusivity rights stemming from Hubbard's form exclusivity rider were directly dependent upon the FCC's syndicated program exclusivity rules. Once the FCC repealed those rules, after execution of these license agreements, Hubbard's exclusivity rights terminated. Second, defendants say, their activities have not interfered with Hubbard's copyright interests because the transmissions were not broadcast to TV viewers but occurred on a nationwide basis to cable TV systems. Id. at 63.

The court finds that plaintiff is the owner of exclusive rights in the five works and that plaintiff alleges that defendants' acts infringed the particular rights plaintiff owns. The court finds it is not necessary to repeat the parties' analysis except to note that it agrees that the granting and exclusivity provisions construed together give plaintiff exclusive rights to the works in particular geographic areas and that while repeal of the FCC syndicated programming exclusivity rules may have removed one basis of exclusivity, passage of the Copyright Act of 1976, 17 U.S.C. §§ 101 et seq., gave plaintiff another basis. Contrary to defendants' assertions, it seems very clear that the acts complained of allegedly infringed the particular rights plaintiff owns — plaintiff claims the exclusive right to televise particular works in particular geographic areas and defendants allegedly showed the same works in the same areas. The court basically agrees with plaintiff's assessment of its 501(b) standing found in its reply brief, at 1-16.

The plaintiff also claims standing under 17 U.S.C. § 501(c) and defendants challenge that standing as well. Plaintiff concedes, however, that § 501(c) standing is superfluous because it already has § 501(b) standing. The court agrees that it is unnecessary to decide the scope of § 501(c) standing since the court has found plaintiff has standing under § 501(b).

II. Prima Facie Copyright Liability

Plaintiff must establish five elements to make a prima facie showing of copyright infringement. Those elements are:

1. The originality and authorship of the compositions involved;

2. Compliance with all formalities required to secure a copyright under 17 U.S.C. § 101 et seq.;

3. That plaintiff is the proprietor of the copyrights of the compositions involved;

4. That the compositions were publicly performed for profit; and

5. That the defendants have not received permission from plaintiff or its representatives for such performance.

George Simon, Inc. v. Spatz, 492 F.Supp. 836, 838 (W.D.Wisc.1980). The first three elements are not in dispute and are covered by Joint Stipulation II of the parties. In response to the fifth element, defendants in effect say that they do not need plaintiff's permission because of various exemptions and licensing systems established by 17 U.S.C. § 111. Those sections will be discussed in parts IIIC and IIID, infra. In response to the fourth element, defendants say that the works were not publicly performed. Plaintiff contends that the works were publicly performed by both Turner and Southern.

Section 101 of the Copyright Act says:

To perform or display a work "publicly" means —

. . . . .

to transmit or otherwise communicate a performance or display of the work ... 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.

To "perform" a work "means ... in the case of a motion picture or other audiovisual work, to show its images in any sequence or to make the sounds accompanying it audible." Id. To "transmit" a performance or display is "to communicate it by any device or process whereby images or sounds are received beyond the place from which they are sent." Id. Plaintiff claims that Congress intended these definitions to be construed broadly and points to House Report 63, U.S.Code Cong. & Admin.News 1976, pp. 5659, 5676 which says, "The concepts of public performance and public display cover not only the initial rendition or showing, but also any further act by which that rendition or showing is transmitted or communicated to the public." Congress intended to cover all transmission activity in its broad definition of transmit. The House Report explains that "any device or process" is "broad enough to include all conceivable forms and combinations of wired or wireless communications media, including but by no means limited to radio and television broadcasting as we know them." Id. at 64, U.S.Code Cong. & Admin.News 1976, p. 5678. That report also states that:

Each and every method by which images or sounds comprising a performance or display are picked up and conveyed is a "transmission," and if the transmission reaches the public in any form, the case comes with the scope of clauses (4) or (5) of Section 106.

Id. at 64, U.S.Code Cong. & Admin.News 1976, p. 5678. Section 106 defines exclusive rights and says the copyright owner has the exclusive right to do and to authorize, among other things, public performance of the work (clause 4) and public display of the work (clause 5).

It is thus clear, plaintiff says, that the Act was intended to cover indirect as well as direct transmissions to the public. Even a performance to a selected group is still a public performance, plaintiff says, citing authority at "Plaintiff's Memo" at 11-12. Turner originates performance of the works and Southern's retransmission is independently a public performance. Plaintiff notes that § 111(a), which exempts certain retransmission activity from copyright liability, would be unnecessary if retransmission activity were not a public performance.

Plaintiff relies on WGN Continental Broadcasting Co. v. United Video, Inc., 693 F.2d 622, 625 (7th Cir.1982). WGN, like Turner's station WTBS, is a "superstation," i.e., its programs are carried outside its local broadcast area by cable TV systems. Its signals were transmitted by an intermediate carrier, United Video, to the cable systems. The court noted that United Video could not be immune from copyright liability just because it did not retransmit WGN's signal directly to the public, that is to the cable subscriber, but instead transmitted the signal to the cable systems who retransmitted it to their subscribers. The court said:

The passive carrier exemption § 111(a)(3) would be superfluous if intermediate carriers such as United Video could never be infringers anyway because they did not transmit directly to the public. And the scheme in section 111 § 111(c) for compensating copyright owners would be disrupted.... United Video could mutilate to its heart's content the broadcast signal it picked up and the copyright owner would have no recourse against it. His only recourse would be against the cable systems ... that were retransmitting the mutilated signals: a thousand or more copyright infringement suits instead of one.

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