National Football v. Primetime 24 Joint Venture

• Decision Date: 06 February 2001
• Docket Number: No. 98 CIV. 3778 AJP.,98 CIV. 3778 AJP.
• Parties: NATIONAL FOOTBALL LEAGUE, Plaintiff, v. PRIMETIME 24 JOINT VENTURE, Defendant.
• Court: U.S. District Court — Southern District of New York

131 F.Supp.2d 458

NATIONAL FOOTBALL LEAGUE, Plaintiff, v. PRIMETIME 24 JOINT VENTURE, Defendant.

No. 98 CIV. 3778 AJP.

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

February 6, 2001.

COPYRIGHT MATERIAL OMITTED

Robert S. Loigman, Friedman Kaplan & Seiler LLP, New York, NY, Eric Seiler, Friedman, Kaplan & Seiler LLP, New York, NY, for National Football League.

Roger L. Zissu, Fross, Zelnick, Lehrman & Zissu, P.C., New York, NY, Brandon F. White, Foley, Hoag & Eliot, LLP, Boston, MA, for PrimeTime 24 Joint Venture.

OPINION AND ORDER (WITH FINDINGS OF FACT AND CONCLUSIONS OF LAW)

PECK, United States Magistrate Judge.

This case arises from PrimeTime's satellite transmission of copyrighted NFL football game telecasts to viewers in Canada. In April 2000, the Second Circuit affirmed Judge McKenna's permanent injunction prohibiting PrimeTime from transmitting NFL football games to Canada. National Football League v. PrimeTime 24 Joint Venture, 211 F.3d 10 (2d Cir.2000), aff'g, 98 Civ. 3778, 1999 WL 760130 (S.D.N.Y. Sept.27, 1999), & 1999 WL 945031 (S.D.N.Y. Oct.19, 1999). The issue presently before this Court is the amount of statutory damages, attorneys' fees and costs to be awarded to the NFL for PrimeTime's infringement. The parties have consented to decision by a Magistrate Judge pursuant to 28 U.S.C. § 636(c). (Dkt. No. 64.)

For the reasons set forth below, the Court awards plaintiff NFL $2,557,500 in statutory damages and $45,792.99 in costs, but does not award the NFL attorneys' fees.

PROCEDURAL BACKGROUND

The NFL's Complaint

On May 27, 1998, the NFL brought this copyright infringement action against PrimeTime seeking declaratory and injunctive relief, statutory damages, attorneys' fees and costs. (Dkt. No. 1: Compl., Wherefore ¶¶ A-D.) The complaint charged PrimeTime with retransmitting copyrighted NFL football game telecasts to Canada, thus exceeding the statutory license provided for certain U.S. retransmissions by the Satellite Home Viewer Act ("SHVA"). (Compl.¶¶ 1, 9-10, 20-25.) The complaint alleged:

20. Although the [Satellite Home Viewer] Act authorizes delivery of network programming only to "unserved households" in the United States, defendant has repeatedly and willfully transmitted NFL game telecasts to locations outside the country. Specifically, defendant captures the over-the-air broadcast signals in the United States and retransmits the signals to one or more satellites for further retransmission abroad (either directly to satellite dish owners or to cable systems), including in Canada.

21. The League has never granted defendant the right to sell or distribute telecasts of NFL games anywhere outside (or within) the United States.

(Compl.¶¶ 20-21.)

Judge McKenna's March 24, 1999 Denial of PrimeTime's Motion to Dismiss

On July 24, 1998, PrimeTime moved to dismiss, arguing that "`[t]he Complaint fails to state a claim upon which relief can be granted ... since all the actions complained of take place outside the United States. It is axiomatic that the copyright laws of the United States do not apply extraterritorially.'" National Football League v. PrimeTime 24 Joint Venture, 98 Civ. 3778, 1999 WL 163181 at *1 (S.D.N.Y. Mar.24, 1999) (quoting Dkt. No. 5: PrimeTime 7/24/98 Br. at 1). PrimeTime further argued that "`its transmissions of the captured signals are not public performances within the meaning of the Copyright Act because .... the final destination of the NFL game signals is outside this country, and since the Act does not apply abroad, [PrimeTime's] transmissions are outside the Act's scope.'" NFL v. PrimeTime, 1999 WL 163181 at *2 (quoting Dkt. No. 16: PrimeTime 9/25/98 Reply Br. at 1-2).

On March 24, 1999, Judge McKenna denied PrimeTime's motion to dismiss. Judge McKenna found that the Copyright Act did apply because "PrimeTime's transmission of the signals captured in the United States is `a step in the process by which a protected work wends its way to its audience,' ... and an infringement, even though it takes one or more further steps for the work to reach the public." NFL v. PrimeTime, 1999 WL 163181 at *2 (citation omitted) (quoting David v. Showtime/The Movie Channel, Inc., 697 F.Supp. 752, 759 (S.D.N.Y.1988)). Judge McKenna acknowledged that "the Ninth Circuit takes a different view." NFL v. PrimeTime, 1999 WL 163181 at *3 (citing Allarcom Pay Television, Ltd. v. General Instrument Corp., 69 F.3d 381, 387 (9th Cir.1995) ("federal copyright law does not apply to extraterritorial acts of infringement")). Judge McKenna concluded, however, that the "analysis in David [is] considerably more persuasive than the Ninth Circuit view." NFL v. PrimeTime, 1999 WL 163181 at *3.¹

Judge McKenna's September 27, 1999 Grant of Summary Judgment to the NFL and October 18, 1999 Entry of a Permanent Injunction Against PrimeTime

Soon after Judge McKenna's denial of PrimeTime's motion to dismiss, both parties cross-moved for summary judgment. (See Dkt. Nos. 20-24: NFL 5/28/99 SJ Papers; Dkt. Nos. 25-29: PrimeTime 6/16/99 SJ Papers; Dkt. Nos. 31-34: NFL & PrimeTime SJ Reply Papers.) On September 27, 1999, Judge McKenna denied PrimeTime's motion, granted the NFL's summary judgment motion in its entirety and held that a permanent injunction would be entered against PrimeTime. National Football League v. PrimeTime 24 Joint Venture, 98 Civ. 3778, 1999 WL 760130 (S.D.N.Y. Sept.27, 1999).

Judge McKenna found the relevant facts to be undisputed: "PrimeTime does not dispute that NFL is the owner of the copyrights in the telecasts of [the] NFL games" and "PrimeTime does not claim that it is a licensee of NFL." NFL v. PrimeTime, 1999 WL 760130 at *1-2. In addition, "PrimeTime has admitted that ... `[it] made secondary transmissions of U.S. network programming including NFL game telecasts for receipt by dish owners located outside the United States' ..., and that `unless enjoined, [it] intend[s] in the future to make secondary transmissions of U.S. network programming including NFL game telecasts for receipt by dish owners located outside the United States.'" Id. (citations omitted, bracketed material in original). Finally, Judge McKenna found that "PrimeTime does not dispute that it caused [certain NFL football] games to be retransmitted to Canada, nor that it causes, and intends to continue to cause, other NFL games of which NFL is the owner of the copyright, to be retransmitted to Canada." Id. at *1.

Judge McKenna concluded: "On these undisputed facts and admissions, under the law as the Court found it to be in the March 24, 1999 Order [denying PrimeTime's motion to dismiss], NFL is entitled to summary judgment." Id. at *2.²

Judge McKenna also held that a permanent injunction should issue:

The Court perceives no reason in the present case to delay the entry of a final injunction. PrimeTime has made it clear that, unless enjoined, it will continue to transmit telecasts of NFL games in which NFL holds the copyright via satellite to Canada, if not to other foreign countries. The presumption that the infringement of a copyright gives rise to irreparable harm has not been rebutted where, as here, an intent to infringe in the future is evident.

Id. at *4. After discussing and rejecting PrimeTime's arguments as to the scope of a final injunction, id. at *5-6, and finding "no just reason for delay" as required by Fed.R.Civ.P. 54(b), Judge McKenna concluded that:

NFL is entitled to the entry of judgment: (1) declaring that PrimeTime has violated NFL's rights under the Copyright Act by retransmitting NFL game telecasts of which NFL is the owner of the copyright to locations outside the United States; (2) permanently enjoining PrimeTime from making secondary transmissions of NFL game telecasts of which NFL is the owner of the copyright to locations outside of the United States; and (3) referring this case to a Magistrate Judge to calculate such statutory damages and attorneys' fees as NFL may be entitled to.

NFL is to submit a proposed judgment on ten business days' notice to PrimeTime, which may object in writing to the form of the judgment.

NFL v. PrimeTime, 1999 WL 760130 at *6.

On October 18, 1999, Judge McKenna entered judgment and an injunction permanently enjoining PrimeTime from making secondary transmissions of copyrighted NFL game telecasts to locations outside the United States. (Dkt. No. 39: Judgment & Permanent Injunction, signed on Oct. 18, 1999 at 11:49 a.m.) Simultaneously Judge McKenna denied PrimeTime's request for a delay in the injunction's effective date, holding that "PrimeTime's proposal that the final injunction, found by the Court in its September 24, 1999 Memorandum and Order to be warranted, not take effect until October 29, 1999 is not warranted. PrimeTime is to take all steps necessary to comply with the injunction forthwith." National Football League v. PrimeTime 24 Joint Venture, 98 Civ. 3778, 1999 WL 945031 at *1 (S.D.N.Y. Oct.19, 1999).

Second Circuit Appeal

PrimeTime appealed, and the Second Circuit stayed the injunction pending appeal. National Football League v. PrimeTime 24 Joint Venture, No. 99-9244 (2d Cir. Nov.16, 1999) (unpublished order granting motion for stay pending appeal and expediting appeal).

On April 28, 2000, the Second Circuit affirmed Judge McKenna's decision. National Football League v. PrimeTime 24 Joint Venture, 211 F.3d 10 (2d Cir.2000).³ The Second Circuit held:

We believe the most logical interpretation of the Copyright Act is to hold that a public performance or display includes "each step in the process by which a protected work wends its way to its audience." David [v. Showtime/The Movie Channel, Inc.], 697 F.Supp. [752] at 759 [(S.D.N.Y.1988)]. Under that analysis, it is clear that PrimeTime's uplink transmission of signals captured in the United States is a step in the process by which NFL's protected work wends its way to a public audience. In short, PrimeTime publicly displayed or performed material in which the NFL owns...