Red Label Music Publ'g, Inc. v. Chila Prods.

• Decision Date: 30 May 2019
• Docket Number: No. 18 C 7252,18 C 7252
• Citation: 388 F.Supp.3d 975
• Parties: RED LABEL MUSIC PUBLISHING, INC. et al., Plaintiffs, v. CHILA PRODUCTIONS et al., Defendants.
• Court: U.S. District Court — Northern District of Illinois

388 F.Supp.3d 975

RED LABEL MUSIC PUBLISHING, INC. et al., Plaintiffs,

v.CHILA PRODUCTIONS et al., Defendants.

No. 18 C 7252

United States District Court, N.D. Illinois, Eastern Division.

Signed May 30, 2019

William W. Flachsbart, Michael R. La Porte, Robert P. Greenspoon, Flachsbart & Greenspoon, LLC, Gregg Ian Minkow, Minkow & Bergman, Ltd., Samuel Glenn Levin, Chicago, IL, for Plaintiffs.

Blaine C. Kimrey, Jonathon Philip Reinisch, Vedder Price PC, Brian Allen Rosenblatt, Bryce, Downey & Lenkov, LLC, Thomas Gerald Weber, Winston & Strawn LLP, Andrew H. Schapiro, Benjamin Andrew Berkman, Quinn Emanuel Urquhart & Sullivan, LLP, Chicago, IL, Michael S. Elkin, Winston & Strawn LLP, New York, NY, for Defendants.

MEMORANDUM OPINION AND ORDER

Virginia M. Kendall, United States District Judge

Everybody who grows up in Northern Illinois or is a professional football fan knows the legend of the 1985 Chicago Bears. After the single loss in their 15–1 season, "da Bears" boldly became the first sports team ever to record a hip-hop song. Two months later, that team rapped and shuffled their way to an historic 46–10 victory over the New England Patriots in Super Bowl XX. The Super Bowl Shuffle arguably guaranteed that win, and in the process, it captured the hearts and imaginations of many. Its popularity remains to this day; indeed, it prompted this federal lawsuit.

The song is an original and artistic expression, so it is the creators' (now owners') intellectual property. The plaintiffs hold the copyrights to the famous record, meaning they determine whether and under what terms others may duplicate it. They allege the defendants infringed these rights because they produced and distributed a documentary that includes clips of the work without first receiving the plaintiffs' permission to do so. The defendants argue this was a "fair use" of the material because their film is a historical commentary on the Bears' season and it only uses brief excerpts of the video. Therefore, they maintain they need not pay the plaintiffs to license their work. Because the documentary was a fair use of the music video, the Court enters judgment for the defendants.

BACKGROUND

Red Label Music Publishing, Inc. owns the copyrights to the words, music, sound recording, and video of the Super Bowl Shuffle. (Dkt. 6 ¶¶ 1, 8, 29.) Red Label's agent, Renaissance Marketing Corporation, licenses the use of these rights to others. Id. ¶¶ 1, 9, 29. Together, Red Label and Renaissance sued Chila Productions, Richard Lenkov, and Scott Prestin in federal court because they produced '85: The Greatest Team in Football History : a film released in 2016 that copied portions of the Super Bowl Shuffle without the owner's or agent's permission.¹ Id. ¶¶ 2–3, 6, 10–12, 14, 33–34, 36. Red Label and Renaissance assert that these defendants infringed on their intellectual property rights and therefore violated the Copyright Act. See 17 U.S.C. §§ 106, 501.

The documentary comments on the Super Bowl Shuffle 's role in the season between the 48:50 and 54:01 marks. (Dkt. 47-1.) That portion of the film features eight seconds of the song's music, only four of which contain lyrics. Id. '85: The Greatest Team in Football History also shows 59 seconds of the Super Bowl Shuffle music video. Id. The producers broke the video up into 16 clips, each lasting between one and eight seconds. Id. The audio and video only appear together in one eight-second snippet. Id. Otherwise, the clips are on the "B-roll," meaning commentators speak over a silent video as it plays. Id.

The defendants moved for judgment on the pleadings (under Federal Rule of Civil Procedure 12(c) ), or in the alternative, for summary judgment (under Rule 56). (Dkt. 46.) The plaintiffs moved to strike the plaintiffs' fair use affirmative defenses (Dkt. 107) and opposed summary judgment on the merits. Because the parties presented matters outside the pleadings and the Court did not exclude them, Rule 12(d) required the Court to treat the defendants' motion as one for summary judgment under Rule 56. (Dkt. 113.) The Court gave all parties a reasonable opportunity to present any material pertinent to this motion.² Id.

STANDARD OF REVIEW

Summary judgment is proper when "the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a) ; see, e.g. , Reed v. Columbia St. Mary's Hosp. , 915 F.3d 473, 485 (7th Cir. 2019). The parties genuinely dispute a material fact when " ‘the evidence is such that a reasonable jury could return a verdict for the nonmoving party.’ " Daugherty v. Page , 906 F.3d 606, 609–10 (7th Cir. 2018) (quoting Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) ). " Rule 56 ‘mandates the entry of summary judgment, after adequate time for discovery and upon motion, against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial.’ " Zander v. Orlich , 907 F.3d 956, 959 (7th Cir. 2018) (quoting Celotex Corp. v. Catrett , 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) ).

Additionally, a court "may strike from a pleading an insufficient defense or any redundant, immaterial, impertinent, or scandalous matter." Fed. R. Civ. P. 12(f). In so doing, the court exercises considerable discretion. See Delta Consulting Grp., Inc. v. R. Randle Const., Inc. , 554 F.3d 1133, 1141 (7th Cir. 2009). Courts generally disfavor motions to strike that serve only to delay but favor those that serve to expedite the case by removing any unnecessary clutter. See, e.g. , Sapia v. Bd. of Educ. of City of Chicago , No. 14-CV-07946, 2018 WL 1565600, at *4 (N.D. Ill. Mar. 31, 2018) (citing Heller Fin., Inc. v. Midwhey Powder Co. , 883 F.2d 1286, 1294 (7th Cir. 1989) ).

Courts will strike pleadings that are insufficient as a matter of law, "meaning they bear no relation to the controversy or would prejudice the movant." Gress v. Reg'l Transportation Auth. , No. 17-CV-8067, 2018 WL 3869962, at *5 (N.D. Ill. Aug. 15, 2018) (citations omitted). The moving party bears the burden of showing the "challenged allegations are so remote to the plaintiff's claim that they lack merit ..." See, e.g. , id. (citation omitted). Should the request for relief be unrecoverable as a matter of law, the court will strike it. See, e.g. , Fed. Deposit Ins. Corp. for Valley Bank v. Crowe Horwath LLP , No. 17 CV 04384, 2018 WL 1508485, at *2 (N.D. Ill. Mar. 27, 2018).

ANALYSIS

Before turning to the defendants' motion for summary judgment based on fair use, the Court addresses the plaintiffs' motion to strike that affirmative defense, seeing that if the Court does so then that will necessarily moot the defendants' motion.

I. Motion to Strike

The first issue is whether the plaintiff's motion was even timely. Rule 12(f)(2) empowers parties to move to strike "either before responding to the pleading or, if a response is not allowed, within 21 days after being served with the pleading." Fed. R. Civ. P. 12(f)(2). Here, four defendants answered the amended complaint on February 4, 2019 (Dkt. 45, 51), one defendant answered February 19, 2019 (Dkt. 77), and five other defendants answered on March 6, 2019 (Dkt. 96, 98–101). The plaintiffs then moved to strike the fair use affirmative defenses the defendants asserted in their answers on March 8, 2019. (Dkt. 107.) Because the defendants did not counterclaim, the plaintiffs had no other opportunity to respond to the answers, leaving them with 21 days—or until March 27, 2019—to move to strike. See Fed. R. Civ. P. 12(a)(3), (7). The motion was therefore timely as to the five defendants who answered on March 6 and the one defendant who answered on February 19. But the answer is less clear as to the four defendants who answered on February 4.

The plaintiffs cite Fed. Deposit Ins. Corp. v. Giannoulias , No. 12 C 1665, 2014 WL 3376892, at *1 (N.D. Ill. July 10, 2014), for the proposition that courts consider timeliness based on the last answer filed in multi-defendant cases with different answer dates. That case, not binding on this Court anyway, stands for no such proposition. There, the court merely exercised its discretion under Rule 12(f)(1) to strike material from a pleading on its own motion. See id. Rule 12(f)(1) does not impose any time constraint on courts like it does on parties in Rule 12(f)(2), so courts read that omission to mean they may consider a motion to strike at any point in a case. See Williams v. Jader Fuel Co. , 944 F.2d 1388, 1399–400 (7th Cir. 1991) (recognizing this practice but leaving its propriety unaddressed before jumping to the merits); see also, e.g. , Mussat v. IQVIA Inc. , No. 17 C 8841, 2018 WL 5311903, at *3 (N.D. Ill. Oct. 26, 2018) (Kendall, J.).

The Court also rejects the plaintiffs' framing of their motion to strike as a cross-motion—constituting part of their response to the defendants' motion for judgment on the pleadings or, in the alternative, for summary judgment—approved for filing on March 8, 2019. That claim has no basis in federal civil procedure. If the plaintiffs truly cross-moved, they would have filed their own motion for judgment on the pleadings, or in the alternative, for summary judgment. They did not. They moved to strike under Rule 12(f), not for judgment on the pleadings under Rule 12(c) nor for summary judgment under Rule 56. Those are two very different procedural devices that request different judicial relief. Because their motion to strike was independent, the deadline in Rule 12(f) applies.

Additionally, the plaintiffs rely on Doe v. Freeburg Cmty. Consol. Sch. Dist. No. 70 , No. 10-CV-458-JPG, 2012 WL 4006333, at *1 (S.D. Ill. Sept. 12, 2012), to claim that they can move for judgment on the pleadings after the 21-day period under Rule 12(f). True enough, Rule 12(c) imposes its own deadline, which is "[a]fter the...