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. ¶¶
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. ¶¶
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.