The opinion of the court was delivered by: Robert P. Patterson, Jr., District Judge.
This is a class action brought by composers, their estates
and music publishers asserting copyright infringement in
violation of the Copyright Act of 1976, 17 U.S.C. § 101 et seq.
Plaintiffs move for summary judgment on the complaint and
striking certain of ESPN's affirmative defenses pursuant to
Rule 56 of the Federal Rules of Civil Procedure. For the
reasons set forth below, plaintiffs' motion is granted in part
and denied in part.
Plaintiffs named in the complaint are composers, the estate
of a deceased composer and music publishers who are members of
the American Society of Composers, Authors and Publishers
("ASCAP"). ASCAP is a performing rights society founded in
1914 having the non-exclusive right to license and collect
royalties for non-dramatic public performances of the
copyrighted musical compositions of its approximately 45,000
members. Charap Aff. ¶ 3. ASCAP also monitors performances
appearing on radio, television and cable programming for
unlicensed uses of compositions within the ASCAP repertory.
Ayden Aff. ¶ 2. Each ASCAP member authorizes ASCAP to sue for
copyright infringement on the member's behalf when unlicensed
performances are discovered. Charap Aff. ¶ 4.
Defendant ESPN, Inc. ("ESPN") is a cable service which
supplies 24-hour programming consisting of sporting events and
sports news to cable system operators. ESPN has 52 million
individual subscribers nationwide. The complaint charges that
"[m]any, if not all, of the cable television programs ESPN
supplies . . . contain non-dramatic public performances of
copyrighted musical compositions" for which ESPN is not
licensed. Complaint filed May 30, 1990 ¶¶ 11-12. Annexed to the
complaint is a schedule of twenty sample infringements alleged
to have occurred between November 1988 and April 1990.*fn1 The
compositions listed in the schedule include Stephen Sondheim's
"Send in the Clowns," alleged to have been performed on
November 14, 1988 as part of Skate International America 1988,
"Beer Barrel Polka," alleged to have been performed on March 3,
1990 as part of NCAA Basketball, and Prince's "U Got the Look"
alleged to have been performed on December 24, 1988 as part of
the 1988 National High School Cheerleading Championships. Ayden
Aff., Exh. A. The length of these and other performances ranges
from 35 seconds to nearly four minutes. Id. ¶ 7. In several
instances, the entire composition was performed. Id. ESPN has
admitted that the twenty compositions identified in the
were correctly identified from tapes of ESPN programs and that
ESPN was neither licensed nor authorized to perform them.
Ricigliano Aff. ¶ 4; Charap Aff., Exh. D.
In a letter dated August 29, 1988 ASCAP had urged ESPN,
without success, to obtain appropriate licensing pursuant to
United States v. American Soc'y of Composers, Authors &
Publishers, 1950-51 Trade Cas. (CCH) ¶ 62,595 (S.D.N.Y. 1950),
which provides a judicial mechanism known as the "rate court"
for determining reasonable license fees. Id., Exh. F; Tr. at
22.*fn2 ESPN however declined to join the rate court
proceeding of United States v. ASCAP/In re Application of
Turner, No. 89 Civ. 13-95 (S.D.N.Y. filed Jan. 13, 1989), an
action to determine whether Showtime and 33 similarly situated
cable companies are entitled to a per program license from
ESPN disavows any need to obtain music licenses from ASCAP
for a number of reasons: (1) ESPN commissions its own
music;*fn4 (2) ESPN requires program packagers who supply
programming to ESPN to warrant that any necessary rights have
been obtained;*fn5 (3) ESPN uses specialized music
libraries;*fn6 and (4) ESPN obtains individual licenses
directly from copyright owners when necessary.*fn7
In response to the specific instances of infringement
alleged in the complaint, ESPN claims that five compositions
— "Let's Go Blue," "Beer Barrel Polka," "Prove Your Love,"
"Don't Rush Me," and "Danger Zone" — constituted "ambient"
noise, i.e., sound audible in the arena during a sports event
such as live crowd noise. King Aff. ¶¶ 10-12. ESPN argues that
ambient arena noise is not under its control, is merely
incidental to its coverage of live sporting events and is
picked up only fortuitously, all of which make its use not
infringing. Colby Aff. ¶ 2.
ESPN further argues that the background music used by
athletes as accompaniment for their routines, including "U Got
the Look" and "Send in the Clowns," cannot give rise to
copyright infringement because such background music "is not
`essential' to ESPN's programming." King Aff. ¶ 13. ESPN points
out that commentators frequently speak over the music in order
to comment on the athlete's performance and that instant
replays are broadcast without the accompanying music. Id. ¶¶
Plaintiffs move for summary judgment on the complaint and
striking ESPN's fair use, copyright misuse, estoppel and
unclean hands defenses.
Summary judgment is appropriate if the evidence offered
demonstrates that there is no genuine issue as to any material
fact and the moving party is entitled to judgment as a matter
of law. Anderson v. Liberty Lobby, 477 U.S. 242, 106 S.Ct.
2505, 91 L.Ed.2d 202 (1986). The burden rests on the moving
party to demonstrate the absence of a genuine issue of material
fact, Adickes v. S.H. Kress & Co., 398 U.S. 144, 157, 90 S.Ct.
1598, 1608, 26 L.Ed.2d 142 (1970), and the Court must view the
facts in the light most favorable to the non-moving party.
United States v. Diebold, Inc., 369 U.S. 654, 655, 82 S.Ct.
993, 994, 8 L.Ed.2d 176 (1962).
The ownership and validity of plaintiffs' copyrights is not
in dispute. The copyright law gives copyright owners the
exclusive right, in the case of musical works, to perform the
copyrighted work publicly and to authorize any public
performances. 17 U.S.C. § 106(4). Section ...