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United States District Court, Southern District of New York

May 8, 1991


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 complaint 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 ASCAP.*fn3

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. ¶¶ 14-15.

Finally, ESPN offers an affidavit from the producer of the Ms. Fitness America competition in which he states he was informed by Richard Reimer of ASCAP that no license would be necessary in conjunction with use of "Babylon Sisters" and "Hot Thing" if no "line feed" was used,*fn8 as ESPN maintains it was not. Zwick Aff. ¶¶ 4-5. Reimer denies knowledge of having made any such statement. Reimer Aff. ¶¶ 3-4.

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 101 of the Copyright Act of 1976 defines "public performance" as follows:

To perform or display a work `publicly' means —

  (1) to perform or display it at a place open to
  the public or at any place where a substantial
  number of persons outside of a normal circle of a
  family and its social acquaintances is gathered;

  (2) to transmit or otherwise communicate a
  performance or display of the work to a place
  specified by clause (1) or to the public, by
  means of any device or process, whether the
  members of the public capable of receiving the
  performance or display receive it in the same
  place or in separate places and at the same time
  or at different times.

17 U.S.C. § 101 (1988). It is undisputed that ESPN "performed" plaintiffs' copyrighted musical compositions. Ricigliano Aff. ¶ 4. Transmissions by a cable network or service to local cable companies who in turn transmit to individual cable subscribers constitute "public performances" by the network under 17 U.S.C. § 101(2) separate from the live public performances which fall under § 101(1). See WGN Continental Broadcasting Co. v. United Video, Inc., 693 F.2d 622, 625 (7th Cir. 1982); David v. Showtime/The Movie Channel, Inc., 697 F. Supp. 752, 759 n. 3 (S.D.N.Y. 1988). Whether ESPN broadcast certain compositions unintentionally because they constituted spontaneous crowd noise is immaterial. Intent is not an element of copyright infringement. See Fitzgerald Publishing Co. v. Baylor Publishing Co., 807 F.2d 1110 (2d Cir. 1986); Nationwide Educ. Dev. Corp. v. Rex Communications, Inc., 16 U.S.P.Q.2d 1564, 1990 WL 64595 (S.D.N.Y. 1990). See also Columbia Broadcasting Sys., Inc. v. American Soc'y of Composers, Broadcasters & Publishers, 620 F.2d 930, 939 (2d Cir. 1980) (suggesting that license is required even for spontaneous performances of musical works), cert. denied, 450 U.S. 970, 101 S.Ct. 1491, 67 L.Ed.2d 621 (1981).*fn9

1. Fair Use

The main issue presented is whether ESPN has raised any issues of fact as to the fair use defense. Fair use is a mixed question of law and fact, see Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 560, 105 S.Ct. 2218, 2230, 85 L.Ed.2d 588 (1985), which requires a fact-intensive inquiry ill-suited for summary judgment. See Maxtone-Graham v. Burtchaell, 803 F.2d 1253, 1255 (2d Cir. 1986), cert. denied, 481 U.S. 1059, 107 S.Ct. 2201, 95 L.Ed.2d 856 (1987); Diamond v. Am-Law Publishing Corp., 745 F.2d 142, 147 (2d Cir. 1984); DC Comics, Inc. v. Reel Fantasy, Inc., 696 F.2d 24, 28 (2d Cir. 1982).

On this record, the unresolved factual issues precluding summary judgment on the complaint include whether each of the copyright takings alleged in the complaint is substantial and whether any individual taking is likely to impair the potential market for or value of the copyrighted work.*fn10 Accordingly, plaintiffs' motion for summary judgment on the issue of infringement is denied.

2. Copyright Misuse

  Plaintiffs attack ESPN's second affirmative defense (Answer
¶ 29) which pleads copyright misuse on two grounds. First,
plaintiffs argue that this circuit does not recognize copyright
misuse as a defense to copyright infringement. The defense of
copyright misuse prevents a copyright owner from recovering for
infringement where he has impermissibly extended the copyright
monopoly in a manner which constitutes an unreasonable
restraint of trade.*fn11 ASCAP's initial position is that
copyright misuse is not a valid defense as a matter of law.
However, since the more recent cases hold that copyright misuse
is a cognizable defense, plaintiffs' motion for summary
judgment dismissing the defense as a matter of law is denied.
See Basic Books, Inc. v. Kinko's Graphics Corp., 758 F. Supp. 1522
 (S.D.N.Y. 1991) (recognizing validity of copyright misuse
as a defense to infringement but finding it unsupported on the
facts); Broadcast Music, Inc. v. Hearst/ABC Viacom
Entertainment Servs., 746 F. Supp. 320, 328 (S.D.N.Y. 1990)
("the Court is persuaded by the more recent cases that the
affirmative defense of copyright misuse is cognizable"); United
Artists Assoc., Inc. v. NWL Corp., 198 F. Supp. 953 (S.D.N Y
1961) (denying plaintiff's motion to strike copyright misuse
defense).*fn12 Cf. Orth-O-Vision, Inc. v. Home Box Office,
474 F. Supp. 672, 686 (S.D.N.Y. 1979) (copyright misuse not a
defense to infringement); Peter Pan Fabrics, Inc. v. Candy
Frocks Inc., 187 F. Supp. 334, 337 (S.D.N.Y. 1960).

The second grounds for plaintiffs' attack is that even if copyright misuse is a valid defense to infringement, ESPN cannot establish on this record that there are no realistic alternatives available to it apart from the ASCAP blanket license. This question presents an issue of fact not resolvable on a motion for summary judgment. Accordingly, plaintiffs' motion for summary judgment dismissing ESPN's second affirmative defense is denied.

3. Estoppel and Unclean Hands

ESPN's third and fourth affirmative defenses (Answer ¶¶ 30-31) allege estoppel and unclean hands. Estoppel requires that the plaintiff aid the defendant in committing the acts alleged to constitute infringement or that plaintiff induce or cause defendant to perform such acts. M. Nimmer & D. Nimmer, Nimmer on Copyright § 13.07 at 13-134 (1990). See Broadcast Music, Inc. v. Hearst/ABC Viacom Entertainment Servs., 746 F. Supp. 320, 329-30 (S.D.N.Y. 1990). The causation requirement for estoppel is met if there is express consent by the copyright owner or some statement that he does not regard defendant's acts as infringing or that he has no objection to defendant's work. Id. at n. 6 & 7.

There are issues of fact regarding causation or inducement in connection with ESPN's performance of "Babylon Sisters" and "Hot Thing." ESPN has come forward with facts tending to show that ASCAP advised ESPN that no license was necessary and that ESPN relied upon such advice. ESPN has failed to raise any issue of fact, however, regarding causation or inducement in connection with the eighteen other compositions listed in the complaint. There is nothing in the record, viewed in the light most favorable to ESPN, to suggest that ASCAP shares even "partial responsibility" for ESPN's performance of those eighteen compositions. The record shows that responsibility for the allegedly infringing acts in connection with those compositions lies with ESPN alone. ESPN never sought to obtain a blanket license and refused to seek a determination of its right to a per program license by joining the Turner proceeding in or after 1989. Cf. Hearst/ABC Viacom, 746 F. Supp. at 329 (refusing to dismiss estoppel defense where defendant claimed BMI was responsible for "refusing to offer a reasonable license and precluding realistic alternatives").

In a copyright case, the defense of unclean hands requires that the plaintiff either participated in the acts of infringement or that plaintiff committed some "transgression" such as fraud upon the Copyright Office resulting in harm or prejudice to the defendant. See Nimmer on Copyright, supra, at 13-145 & n. 12.2. ESPN has not raised any issues of fact requiring trial on this defense. The record is devoid of any facts which would demonstrate that ASCAP either participated in ESPN's broadcasts or that the copyright owners acted with unclean hands in securing their registrations. Accordingly, plaintiffs' motion for summary judgment on ESPN's fourth affirmative defense is granted.


In conclusion, plaintiffs' motion for summary judgment on the complaint and on ESPN's fair use and copyright misuse defenses is denied. Plaintiffs' motion for summary judgment on ESPN's estoppel defenses as applied to "Babylon Sisters" and "Hot Thing" is also denied. Plaintiffs' motion for summary judgment dismissing ESPN's estoppel defense as to the eighteen compositions apart from "Babylon Sisters" and "Hot Thing" and for summary judgment dismissing the unclean hands defense as to all twenty compositions is granted.


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