The Football Ass'n Premier League v. YouTube, Inc.

• Decision Date: 03 July 2009
• Docket Number: No. 07 Civ. 3582(LLS).,07 Civ. 3582(LLS).
• Citation: 633 F.Supp.2d 159
• Parties: THE FOOTBALL ASSOCIATION PREMIER LEAGUE LIMITED, Bourne Co. (together with its affiliate Murbo Music Publishing, Inc.), Cherry Lane Music Publishing Company, Inc., CAL IV Entertainment LLC, Robert Tur d/b/a Los Angeles News Service, National Music Publishers' Association, The Rodgers & Hammerstein Organization, Stage Three Music (U.S.), Inc., Edward B. Marks Music Company, Freddy Bienstock Music Company d/b/a Bienstock Publishing Company, Alley Music Corporation, X-Ray Dog Music, Inc., Fédération Française de Tennis, The Music Force Media Group LLC, The Music Force LLC, and SIN-Drome Records, Ltd. on behalf of themselves and all others similarly situated, Plaintiffs, v. YouTUBE, INC., YouTube, LLC and Google, Inc., Defendants.
• Court: U.S. District Court — Southern District of New York

633 F.Supp.2d 159

THE FOOTBALL ASSOCIATION PREMIER LEAGUE LIMITED, Bourne Co. (together with its affiliate Murbo Music Publishing, Inc.), Cherry Lane Music Publishing Company, Inc., CAL IV Entertainment LLC, Robert Tur d/b/a Los Angeles News Service, National Music Publishers' Association, The Rodgers & Hammerstein Organization, Stage Three Music (U.S.), Inc., Edward B. Marks Music Company, Freddy Bienstock Music Company d/b/a Bienstock Publishing Company, Alley Music Corporation, X-Ray Dog Music, Inc., Fédération Française de Tennis, The Music Force Media Group LLC, The Music Force LLC, and SIN-Drome Records, Ltd. on behalf of themselves and all others similarly situated, Plaintiffs, v. YouTUBE, INC., YouTube, LLC and Google, Inc., Defendants.

No. 07 Civ. 3582(LLS).

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

July 3, 2009.

COPYRIGHT MATERIAL OMITTED

Proskauer Rose LLP, Louis M. Solomon, William M. Hart, Hal S. Shaftel, of Counsel, Bernstein Litowitz Berger & Grossmann LLP, Max W. Berger, John P. Coffey, John C. Browne, New York, NY, for Lead Plaintiffs Murbo Music Publishing, Inc., Cherry Lane Music Publishing Company, Inc., Robert Tur d/b/a Los Angeles News Service, X-Ray Dog Music, Inc., Federation Française de Tennis, The Scottish Premier League Limited, and for the Prospective Class.

Girard Gibbs, LLP, Daniel Girard, Aaron Sheanin, Christina Connoly Sharp, of Counsel, San Francisco, CA, Barrett Johnston and Parsley, Gerald E. Martin, Laurel Johnston, of Counsel, Burr & Forman, Kevin Doherty, of Counsel, Nashville, TN, for Plaintiff Cal IV Entertainment, LLC.

Lieff, Cabraser, Heimann & Bernstein LLP, David S. Stellings, of Counsel, Morrisson & Foerster, New York, NY, for Plaintiffs National Music Publishers' Association, The Rodgers & Hammerstein Organization, Stage Three Music (U.S.), Inc., Edward B. Marks Music Company, Freddy Bienstock Music Company d/b/a Bienstock Publishing Company, Alley Music Corporation.

Lovell Stewart Halebian LLP, Christopher Lovell, Christopher M. McGrath, of Counsel, New York, NY, Law Offices of Jeffrey L. Graubart, Jeffrey L. Graubart, Steve D'Onofrio, of Counsel, Washington, DC, for Plaintiffs The Music Force Media Group LLC, The Music Force LLC, and Sin-Drome Records, Ltd.

Mayer Brown LLP, A. John P. Mancini, Richard Ben-Veniste, Andrew H. Schapiro, Matthew D. Ingber, Brian M. Willen, of Counsel, New York, NY, Wilson Sonsini Goodrich & Rosati, David H. Kramer, Maura L. Rees, Michael H. Rubin, Bart E. Volkmer, of Counsel, Palo Alto, CA, for Defendants.

OPINION and ORDER

LOUIS L. STANTON, District Judge.

In this putative class action for copyright infringement brought under the U.S. Copyright Act of 1976 (17 U.S.C. § 101 et seq.), defendants move for judgment on the pleadings dismissing plaintiffs' claims under the Act for (1) statutory damages on foreign works that have not been registered with the U.S. Copyright Office and (2) punitive damages.¹

Plaintiffs' Copyright Act claims for statutory damages are dismissed with respect to all registered in the United States foreign works which were not ("unregistered foreign works"), except those in suit under the "live broadcast exemption" in Section 411(c) of the Act.

I. Statutory Damages

A. Section 412 of the Copyright Act

Defendants argue that because statutory damages are not available under the Copyright Act for the unregistered foreign works plaintiffs sue upon, plaintiffs' Copyright Act claims for statutory damages on those works must be dismissed.

Plaintiffs respond that they may seek statutory damages on unregistered foreign works because all foreign works, as a matter of law, are exempt from any registration requirements under the Act.

That response is foreclosed by Section 412 of the Act. With specified exceptions, Section 412 prohibits recovery of statutory damages for each and every work unless the work was registered (a) before the infringement commenced or (b) within three months after its first publication. Section 412 states in pertinent part:

Registration as prerequisite to certain remedies for infringement

In any action under this title, other than an action ... instituted under section 411(c), no award of statutory damages ... shall be made for—

(1) any infringement of copyright in an unpublished work commenced before the effective date of its registration; or

(2) any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.

17 U.S.C. § 412.

Section 412 has no exception excusing foreign works from its mandate it requires registration to obtain statutory damages for both domestic and foreign works. Cf. Master Sound Int'l, Inc. v. PolyGram Latino U.S., No. 98 Civ. 8468(DLC), 1999 WL 269958, at *3 (S.D.N.Y. May 4, 1999) ("Registration is a prerequisite to bringing suit for recovery of [statutory] damages and [attorney's] fees, and [Section 412] does not incorporate an exception for works originated in countries outside the United States."); accord Rudnicki v. WPNA 1490 AM, 580 F.Supp.2d 690, 694 (N.D.Ill.2008) ("Registration is only a prerequisite when the foreign copyright holder seeks statutory damages and attorney's fees."); Peliculas Y Videos Internacionales, S.A. de C.V. v. Harriscope of Los Angeles, Inc., 302 F.Supp.2d 1131, 1138-39 (C.D.Cal.2004) (statutory damages unavailable on four foreign films because they were not timely registered in accordance with Section 412); Parfums Givenchy, Inc. v. C & C Beauty Sales, Inc., 832 F.Supp. 1378, 1393-95, 1393 n. 13 (C.D.Cal.1993) (statutory damages not recoverable on foreign design for perfume box because it was not timely registered as required by Section 412); 2 NIMMER ON COPYRIGHT § 7.16[C][1], at 7-183 (2008) ("the loss of remedies under Section 412 due to failure to register is applicable to works of foreign origin as well as to domestic works").

Section 411(a) of the Act, which requires preregistration or registration before any copyright infringement suit may be brought, is limited to U.S. works, stating "no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made", 17 U.S.C. § 411(a) (emphasis added), and thus allows suits to be brought upon foreign works without registration of them; but it does not impair the operation of Section 412, which forbids the recovery of statutory damages in any infringement action (except, among others, those under Section 411(c) concerning live broadcasts) unless the work has been registered. Unlike Section 411(a), Section 412 has no such limitation to U.S. works it applies to all unregistered works. See Barnhart v. Sigmon Coal Co., Inc., 534 U.S. 438, 452, 122 S.Ct. 941, 151 L.Ed.2d 908 (2002) ("when Congress includes particular language in one section of a statute but omits it in another section of the same Act, it is generally presumed that Congress acts intentionally and purposely in the disparate inclusion or exclusion" (internal quotation marks omitted)).

That Congress did not intend to exempt foreign works generally from Section 412 is also clear from the Act's legislative history. The House of Representatives' Report accompanying the Act shows that Section 412 was enacted to induce copyright registration, "which is useful and important to users and the public at large," by denying "special statutory remedies unless the owner has, by registration, made a public record of his copyright claim." H.R.Rep. No. 94-1476, at 158 (Sept. 3, 1976). According to the Report (at 158), the Act's general scheme permits a copyright owner whose work has been infringed before registration to seek the ordinary remedies of an injunction and actual damages plus any applicable profits, while:

section 412 would deny any award of the special or "extraordinary" remedies of statutory damages or attorney's fees where infringement of copyright in an unpublished work began before registration or where, in the case of a published work, infringement commenced after publication and before registration (unless registration has been made within a grace period of three months after publication).

The Report's next sentence states that "These provisions [of Section 412] would be applicable to works of foreign and domestic origin alike." Id.

B. International Agreements

Plaintiffs contend that unless Section 412 is construed to exempt all foreign works from its directive it would violate two international agreements to which the U.S. is bound the Berne Convention for the Protection of Literary and Artistic Works, an international copyright treaty which the U.S. joined in 1989, and the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPs"), a trade agreement the President made in 1994. Further, plaintiffs say, an amendment to Copyright Act § 411(a) in the Digital Millennium Copyright Act of 1998 ("DMCA") shows that Congress intended § 412 to be so construed, to conform to the foregoing and similar international agreements.

None of the materials on which plaintiffs rely so alters Section 412's terms.

1. The Berne Convention

Plaintiffs assume that if Section 412 denied statutory damages on a foreign work for failure to register, it would violate "one of the most fundamental tenets of Berne, that `the enjoyment and the exercise of [copyright] shall not be subject to any formality.'" Class Pls.' Opp. at 9-10 (plaintiffs' brackets), quoting Berne Convention Art. 5(2).

Congress rejected that assumption when it passed the Berne Convention Implementation Act of 1988 "to make the changes to the U.S. copyright law that are necessary for the United States to adhere to the Berne Convention." S.Rep. No. 100-352, at 1 (May 20, 1988).

The Senate Judiciary Committee confronted "the question of whether the registration provisions of existing U.S. copyright...