Simpleville Music, v. Mizell

• Decision Date: 14 September 2006
• Docket Number: Civil Action No. 1:04cv393-MHT.
• Citation: 451 F.Supp.2d 1293
• Parties: SIMPLEVILLE MUSIC, et al., Plaintiffs, v. H. Jack MIZELL, Defendant.
• Court: U.S. District Court — Middle District of Alabama

451 F.Supp.2d 1293

SIMPLEVILLE MUSIC, et al., Plaintiffs, v. H. Jack MIZELL, Defendant.

Civil Action No. 1:04cv393-MHT.

United States District Court, M.D. Alabama, Southern Division.

September 14, 2006.

Dylan Cook Black, James William Gewin, Bradley Scott Burleson, Bradley Arant Rose & White LLP, Birmingham, AL, Richard H. Reimer, American Society of Composers, Authors and Publishers, New York, NY, for Plaintiff.

Steve G. McGowan, Steve McGowan LLC, Dothan, AL, for Defendant.

OPINION

MYRON H. THOMPSON, District Judge.

The plaintiffs are members of the American Society of Composers, Authors and Publishers ("ASCAP"), to which they have granted a non-exclusive right to license public performances of their copyrighted musical compositions.¹ The plaintiffs brought this lawsuit against defendant H. Jack Mizell, charging that he violated the Copyright. Act, 17 U.S.C. § 101-1332, by playing ASCAP's copyrighted musical compositions on the radio without authorization. This court has jurisdiction under 28 U.S.C. § 1338(a) (copyright) and § 1331 (federal question). Currently before the court is the plaintiffs' motion for summary judgment. The motion will be granted for the reasons that follow.

I. SUMMARY-JUDGMENT STANDARD

Summary judgment is appropriate "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). Under Rule 56, the party seeking summary judgment must first inform the court of the basis for the motion, and the burden then shifts to the non-moving party to demonstrate why summary judgment would not be proper. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); see also Fitzpatrick v. City of Atlanta, 2 F.3d 1112, 1115-17 (11th Cir.1993) (discussing burden-shifting under Rule 56). The nonmoving party must affirmatively set forth specific facts showing a genuine issue for trial and may not rest upon the mere allegations or denials in the pleadings. Fed.R.Civ.P. 56(e).

The court's role at the summary-judgment stage is not to weigh the evidence or to determine the truth of the matter, but rather to determine whether a genuine issue exists for trial. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). In doing so, the court must view the evidence in the light most favorable to the non-moving party and draw all reasonable inferences in favor of that party. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986).

II. FACTS

Mizell is the owner of Shelley Broadcasting, Inc. and Stage Door Development, Inc., and these two companies, in turn, operate radio stations WGEA and WRJFM, respectively. On September 20 and 21, 2003, WGEA broadcasted seven of the plaintiffs' ASCAP copyrighted compositions, and, on September 21 and 22, WRJM-FM broadcasted an additional eight. Neither station had ASCAP's permission to perform these compositions.

The 15 broadcasted songs are "I Can Only Imagine," "Any Day Now," "Stranger In My House," "Walking In Memphis," "Lovin' All Night," "Maybe God Is Tryin' To Tell You Somethin'," "His Hand In Mine," "More Than Wonderful," "Above All," "Love Is Alive," "L.A. Woman," "Hip To Be Square," "Highway To Hell," "Smokin'," and "Luck Be A Lady Tonight."

III. DISCUSSION

To establish a prima-facie copyright infringement case for a musical composition, a plaintiff may prove (1) ownership of a valid copyright and (2) "public performance" of the copyrighted work without authorization. 17 U.S.C. § 106(4) (subject to other provisions in the Copyright Act that provide that certain uses of copyrighted materials are not infringements despite § 106, "the owner of copyright . . . has the exclusive rights . . . in the case of . . . musical . . . works . . . to perform the copyrighted work publicly"); cf. Feist Publications, Inc. v. Rural Telephone Service Co., Inc. 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991) ("To establish infringement, two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original."); A & M Records v. Napster, Inc., 239 F.3d 1004, 1013 (9th Cir.2001) ("Plaintiffs must satisfy two requirements to present a prima facie case of direct infringement: (1) they must show ownership of the allegedly infringed material and (2) they must demonstrate that the alleged infringers violate at least one exclusive right granted to copyright holders under 17 U.S.C. § 106.").

The plaintiffs have satisfied the first element by submitting copies of the copyright registration certificates. See 17 U.S.C. § 410(c) ("In any judicial proceedings the certificate of a registration made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate.").

With regard to the second element, the plaintiffs have presented the affidavits of Jerry Glaze, who recorded the broadcasts of radio stations WGEA and WRJM-FM on the days in dispute, and Alex Kuzyszyn, who listened to the tapes and identified that the 15 compositions constituting the basis of this suit were found on the tape recordings. The evidence supplied by Mizell, either admits that these compositions were broadcast on radio stations WGEA and WRJM-FM or concedes that they may have been played. And the law is settled that a radio broadcast constitutes a "performance" within the meaning and coverage of copyright law. Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 161, 95 S.Ct. 2040, 45 L.Ed.2d 84 (1975) ("Broadcasters perform."); 2 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 8.14[B][1] (2006) ("the act of broadcasting a work is itself a performance of that work"); see also 17 U.S.C. § 101 ("To `perform' a work means to recite ... it, either directly or by means of any device or process . ."). Mizell also admits that he did not have permission from the plaintiffs or ASCAP to broadcast the 15 songs.

However, Mizell asserts an array of defenses to the copyright claims. He argues that there was no infringement because (1) the compositions were played from promotional CDs; (2) the compositions were played as incidental, background, or bumper music;² (3) the composition performers were not ASCAP members; (4) the compositions fall within the religious exemption to copyright laws; (5) he did not intend to violate copyright laws; and (6) he did not personally control the content of the broadcasts. Mizell also requests a jury trial so that it may determine the appropriate amount of statutory damages. The court will discuss the validity of each defense.

1. Promotional CDs

Mizell contends that he could play the songs without permission because they came off promotional CDs. According to him, his stations have had a policy of playing only promotional, royalty-free music since 1991, and the ASCAP songs he played came from free CDs the radio stations received, royalty-free, from either Compact Disc Xpress (CDX) or Crossroads.³ Promotional CDs are CDs that are distributed for free and for which the writer and publisher will not collect royalties. 6 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 30.02 (2006).

However, the fact that a copyright holder grants recording companies the right to make and distribute promotional copies of their songs does not mean that it waives its right to collect fees when a radio station wishes to broadcast publically from the promotional copy. Chappell & Co. v. Middletown Farmers Market & Auction Co., 334 F.2d 303, 305 (3rd Cir.1964) ("The surrender of one monopoly—the right to make mechanical reproductions—does not carry with it the right to publicly perform the copyrighted musical composition.").

Moreover, while Mizell provides multiple examples of music subscription service's that pay the licensing fees for the subscriber,⁴ none of these examples includes CDX or Crossroads, the two publishers of the CDs Mizell contends are promotional. In fact, the copies of the CD sleeves that accompanied the CDX CDs include the following cautionary language: "NOT FOR SALE: for promotional use only. Warning all rights reserved. Unauthorized duplication is a violation of applicable law."⁵

It is apparent that Mizell is using the term "promotional" out of context. The language on the CD sleeve defines the terms of its free, but restricted, transfer. The CD itself is promotional, its licensing for public performance is not. A radio station that receives a CD labeled "for promotional use only," which means that the station did not have to pay for the CD, must still obtain permission before broadcasting its contents. See Chappell, 334 F.2d at 305.

Mizell's promotional-CD defense is meritless.

2. Incidental or Background Use

Mizell used several ASCAP songs as background or bumper music. He asserts that, because ASCAP does not pay royalties to its members for background, bumper, or other incidental uses, he may use those songs as such without paying any licensing fees.

Background music is not exempt from being subject to licensing fees. See Schumann v. Albuquerque Corp., 664 F.Supp. 473, 477 (D.N.M.1987) (Bratton, J.) ("The fact that the song might have been used as background to a community calendar does not render its performance fair use under § 107."). Additionally, courts do allow incidental use fees. See United States v. American Socy. of Composers, 981 F.Supp. 199 (S.D.N.Y.1997) (Conner, J.) (ASCAP's incidental use fee of 0.06% is reasonable). Mizell's background-use defense is meritless.

3. Non-ASCAP Performers

Mizell argues that the plaintiffs cannot claim copyright infringement when the performers of the offending compositions are not ASCAP members.

The copyright owner has an interest...