Broadcast Music, Inc. et al v. M.R.T.P., Inc. et al
Filing
48
MEMORANDUM OPINION Signed by the Honorable John F. Grady on June 26, 2014. Mailed notice(cdh, )
12-7339.141-JCD
June 26, 2014
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
BROADCAST MUSIC, INC., et al.,
)
)
)
)
)
)
)
)
)
)
)
Plaintiffs,
v.
M.R.T.P., INC. d/b/a Prisco’s
Eleven West; ANTHONY PRISCO, and
MICHAEL ROSSI,
Defendants.
No. 12 C 7339
MEMORANDUM OPINION
Before the court are plaintiffs’ motions for summary judgment
and defendant Michael Rossi’s cross-motion for summary judgment.
For the reasons discussed below, plaintiffs’ motions are granted as
to defendants M.R.T.P., Inc. and Anthony Prisco and denied as to
defendant Rossi, and Rossi’s motion is granted.
BACKGROUND
Plaintiff
Broadcast
Music,
Inc.
(“BMI”)
is
a
nonprofit
organization that acquires non-exclusive public performance rights
from copyright owners, such as music publishing companies and
composers,
and
then
licenses
copyrighted musical works.
the
public
performances
of
the
According to BMI, it has been granted
the right to license the public performance rights in approximately
7.5 million copyrighted musical works.
The other plaintiffs are
the copyright owners of the eight songs involved in this case and
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have granted BMI the right to issue public performance licenses for
their songs.1
Defendants M.R.T.P., Inc. (“MRTP”) and Anthony
Prisco operate Prisco’s Eleven West (“Prisco’s”), a bar located in
South Chicago Heights, Illinois.
Plaintiffs allege that defendant
Michael Rossi was also affiliated with Prisco’s at the times
relevant to the complaint.
Between November 16, 2010, and June 21, 2012, BMI sent Prisco
several letters (to the establishment’s address) and two e-mails
describing BMI’s vast repertoire and explaining that a license must
be obtained in order to publicly perform BMI’s musical works at the
establishment.
The letters repeatedly urged Prisco to obtain a
license in order to avoid infringing copyrights, and they included
a proposed license agreement, with a license-fee schedule, and/or
provided detailed instructions on how to apply for a license
online.
(Decl. of Lawrence E. Stevens, Ex. B.)
response to the letters.
There was no
On September 27, 2011, BMI sent Prisco a
1/
The eight songs are The Beautiful People, published by Emerald Forest
Entertainment Company, Inc. and Hori Productions America, Inc., a joint venture
d/b/a Dinger and Ollie Music; Jeordie White, an individual d/b/a Blood Heavy
Music; and Brian Warner, an individual d/b/a Songs of Golgotha; Keep Your Hands
to Yourself, published by Warner-Tamerlane Publishing Corp.; Eleksylum Music,
Inc.; and No Surrender Music, a division of Praxis International Communications,
Inc.; Killing Me Softly With His Song, published by Fox-Gimbel Productions, Inc.
and Charles Fox, an individual d/b/a Rodali Music; Mr. Jones a/k/a Mister Jones,
published by EMI Blackwood Music Inc. and Counting Crows, LLC d/b/a Jones Falls
Music; Round Here, published by Counting Crows, LLC d/b/a Jones Falls Music;
Christopher C. Roldan, an individual d/b/a Porkchops and Applesauce Publishing;
Dan Ryan Jewett, an individual d/b/a This Ought to Get Me a New Guitar Music;
Dave A. Janusko, an individual d/b/a Free Ohio Pub.; and EMI Blackwood Music,
Inc.; Walk, published by Cota Music Inc. and Power Metal Music Inc.; Keep it
Comin’ Love, published by EMI Virgin Songs, Inc. d/b/a EMI Longitude Music and
Harrick Music, Inc.; and Name, published by EMI Virgin Songs, Inc.; Brian Slagel,
an individual d/b/a Full Volume Music; and John T. Rzeznik, Robert C. Takac Jr.
and George R. Tutuska Jr., a partnership d/b/a Scrap Metal Music.
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letter, via FedEx, for which Prisco signed, instructing him to
cease the public performance of BMI-licensed music.
An additional
letter was sent on January 25, 2012, making another cease-anddesist request.
Prisco did not obtain a license.
Public performances of BMI-licensed music at Prisco’s occurred
after Prisco received this correspondence. On March 7, 2012, BMI’s
investigator visited Prisco’s on a “karaoke night” and observed the
performance of songs owned by the plaintiffs.
The investigator
made a digital recording of, and a written report about, the music
that was performed by means of the karaoke machine.
The report
includes information about Prisco’s--its location, the layout and
appearance of the establishment, details about the music equipment
that was being used--as well as details about the songs that were
being performed, to the extent that the investigator knew them.
Some of the remaining songs that were performed were identified
from the digital recording through the use of music-recognition
software and other BMI employees.
(Stevens Decl., Ex. A.)
After the investigator’s visit to Prisco’s, BMI sent Prisco a
letter advising him that its investigator had witnessed the recent
public performance of BMI-licensed music at the establishment; BMI
again requested that Prisco obtain a license.
response, so BMI filed this lawsuit.
There was still no
The complaint alleges eight
claims of willful copyright infringement, one for each of the eight
BMI-represented copyrighted songs that were performed at Prisco’s
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on March 7, 2012.
Plaintiffs seek statutory damages for each act
of infringement, an order permanently enjoining defendants from
further infringement, and an award of reasonable attorneys’ fees
and costs.
The plaintiffs move for entry of summary judgment against each
defendant.
Defendant Rossi cross-moves for entry of summary
judgment against plaintiffs.
DISCUSSION
“The court shall grant summary judgment if the movant shows
that there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law.”
P. 56(a).
Fed. R. Civ.
In considering such a motion, the court construes the
evidence and all inferences that reasonably can be drawn therefrom
in the light most favorable to the nonmoving party.
See Pitasi v.
Gartner Group, Inc., 184 F.3d 709, 714 (7th Cir. 1999).
“The court
need consider only the cited materials, but it may consider other
materials in the record.”
Fed. R. Civ. P. 56(c)(3).
“Summary
judgment should be denied if the dispute is ‘genuine’: ‘if the
evidence is such that a reasonable jury could return a verdict for
the nonmoving party.’” Talanda v. KFC Nat’l Mgmt. Co., 140 F.3d
1090, 1095 (7th Cir. 1998) (quoting Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 248 (1986)).
The court will enter summary
judgment against a party who does not “come forward with evidence
that would reasonably permit the finder of fact to find in [its]
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favor on a material question.” McGrath v. Gillis, 44 F.3d 567, 569
(7th Cir. 1995).
A.
Summary Judgment Against MTRP and Prisco’s
The Copyright Act grants copyright owners certain exclusive
rights in their copyrighted musical works, including the exclusive
right to control the public performance of their works. 17 U.S.C.
§ 106(4); ProCD, Inc. v. Zeidenberg, 86 F.3d 1447, 1454 (7th Cir.
1996) (“Copyright law forbids duplication, public performance, and
so on, unless the person wishing to copy or perform the work gets
permission . . . .”).
A plaintiff claiming copyright infringement
must establish two elements: “(1) ownership of a valid copyright,
and (2) copying of constituent elements of the work that are
original.” Janky v. Lake County Convention & Visitors Bureau, 576
F.3d 356, 361 (7th Cir. 2009) (quoting Feist Publ’ns, Inc. v. Rural
Tel. Serv. Co., 499 U.S. 340, 361 (1991)). Copying occurs when one
publicly
performs
authorization.
a
work
without
schedule
publishers,
of
copyright
owner’s
Janky, 576 F.3d at 361.
The first element is undisputed.
a
the
the
the
eight
dates
registration numbers.
songs
of
at
Attached to the complaint is
issue,
copyright
which
includes
registration,
and
the
the
BMI has also submitted the Declaration of
Hope M. Lloyd, its Assistant Vice President, Legal; attached to Ms.
Lloyd’s declaration are the copyright registration certificates for
each of the eight songs and subsequent documentation demonstrating
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their
chain
of
ownership.
(Decl.
of
Hope
M.
Lloyd,
Ex.
A.)
Defendants do not dispute that the asserted copyrights contain the
requisite
elements
of
originality,
that
they
were
properly
registered, or that plaintiffs have proprietary rights in the
works.
(Defs.’ Resp. to Pls.’ Local Rule 56.1 Statement ¶ 14.)
The second element is effectively undisputed by MRTP and
Prisco. We say “effectively” because although these two defendants
have no defense and have failed to come forward with any evidence
that would permit a jury to find in their favor, they have refused
to expressly concede liability.
Instead, they have filed a
response brief, which is devoid of any legal authority whatsoever,
requesting that “the relief sought by the Plaintiffs be denied in
its entirety.”
(Defs.’ Resp. at 4.)
request is baseless.
As to MRTP and Prisco, that
Plaintiffs have submitted evidence that the
songs were played at Prisco’s without authorization on March 7,
2012.
BMI’s investigator, Sarah Kaminsky, made a certified report
regarding her March 7, 2012 visit to Prisco’s, which included her
observation that one of the eight songs at issue, “Round Here,” was
performed that night.
BMI has also submitted Kaminsky’s separate
certification that she made a digital recording of the music that
was performed. In addition, BMI has submitted the certification of
Lisa Brammer, an Associate Director of Performance Identification
for BMI, who explains the music-recognition software that BMI used
to identify most of the songs that Kaminsky recorded, as well as
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the certification of Joannah Carr, a BMI employee who reviewed
Kaminsky’s report and recording and identified the songs and/or
confirmed
that
the
eight
(Stevens Decl., Ex. A.)
songs
at
issue
had
been
recorded.
BMI’s Assistant Vice President of General
Licensing, Lawrence E. Stevens, has submitted a declaration stating
that the plaintiffs have not issued a license to anyone that
authorizes the performance at Prisco’s of any of the musical works
at issue.
(Stevens Decl. ¶ 4.)
In their Local Rule 56.1 statement of undisputed facts,
plaintiffs state:
8. [P]ublic performances of BMI-licensed music continued
at Prisco’s Eleven West after [September 27, 2011, the
date of the cease-and-desist letter] and performances of
songs owned by the Plaintiffs were chronicled by a BMI
Music Researcher on March 7, 2012. (Stevens Declaration
¶ 10.)
9.
Specifically, BMI’s Music Researcher generated an
audio recording and a written report of the songs played
at Prisco’s Eleven West on March 7, 2012, which includes
the eight (8) songs that are the subject of this
infringement action. (Stevens Declaration ¶¶ 10-11, Ex.
A.)
The audio recording was reviewed by BMI’s
Performance Identification employee, who confirmed that
the eight (8) musical works that are the subject of this
action were performed at Prisco’s Eleven West on March 7,
2012. (Id. ¶ 11.)
Defendants respond to both paragraphs: “Defendants dispute the
statements of alleged facts contained in paragraph[s] 8 [and] 9.”
(Defs.’ Resp. to Pls.’ Rule 56.1 Statement ¶¶ 8-9.)
They do not
state why they dispute these paragraphs, nor do they cite to any
materials in the record that support their assertions.
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Plaintiffs also state: “Defendants admit that they have no
evidence
controverting
that
on
March
7,
201[2],2
the
[eight]
musical compositions [at issue] were performed at Prisco’s Eleven
West.”
(Pls.’ Rule 56.1 Statement ¶ 12.)
Defendants simply
respond: “Admissions 22 through 29 apply to Defendants Prisco and
M.R.T.P. only.”
This response refers to defendants’ responses to
plaintiffs’ first request for admissions, in which defendants
admitted that they have no evidence controverting that each of the
eight
songs
was
performed
at
Prisco’s
on
March
7,
2012.
Defendants’ Rule 56.1 response misses the point, which is the
performance.
We will address Rossi’s liability below; that is a
separate issue from whether there is any evidence to controvert
plaintiffs’
evidence
that
the
eight
songs
were
performed
at
Prisco’s on March 7, 2012.
Defendants have failed to properly controvert paragraphs 8, 9,
and 12 of plaintiffs’ Rule 56.1 statement. “A party asserting that
a
fact
cannot
be
or
is
genuinely
disputed
must
support
the
assertion” by citing to particular parts of materials in the record
or by showing that the materials cited do not establish the absence
or presence of a genuine dispute, or that an adverse party cannot
produce admissible evidence to support the fact.
2/
Fed. R. Civ. P.
At a few points in their briefs, both sides have mistakenly used “2013”
instead of “2012” when referring to the relevant date of March 7, 2012. We (and,
evidently, the parties) have treated the references to 2013 as typographical
errors.
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56(c)(1).
“If a party fails to properly support an assertion of
fact or fails to properly address another party’s assertion of fact
as required,” we may give an opportunity to properly support or
address the fact, consider the fact undisputed for purposes of the
motion,
grant
summary
judgment
if
the
motion
and
supporting
materials show that the movant is entitled to it, or issue any
other
appropriate
order.
Fed.
R.
Civ.
P.
56(e).
Because
defendants have failed to properly address plaintiffs’ assertions
in paragraphs 8, 9, and 12, and they have failed to offer any
evidence to show any genuine dispute that the eight songs at issue
were played at Prisco’s on March 7, 2012, we will consider those
paragraphs to be undisputed.
Thus, there is no genuine issue that
plaintiffs’ works were publicly performed without authorization and
therefore copied and infringed upon at Prisco’s on March 7, 2012.
Who is liable for the copyright infringement? Not only is the
performer liable for infringement, but so is anyone who sponsors
the performance.
Twentieth Century Music Corp. v. Aiken, 422 U.S.
151, 157 (1975) (“An orchestra or individual instrumentalist or
singer who performs a copyrighted musical composition in . . . a
public place without a license is . . . clearly an infringer under
the [Copyright Act]. The entrepreneur who sponsors such a public
performance
for
contributory.”).
profit
is
also
an
infringer--direct
or
The unauthorized performance was sponsored by
Prisco’s, and it is undisputed that MRTP owned Prisco’s at the
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relevant time.
13.)
(Defs.’ Resp. to Pls.’ Rule 56.1 Statement ¶¶ 6,
MRTP is therefore liable for the infringement.
As for Prisco, it is undisputed that he operated, and is the
president of, MRTP.
6.)
(Defs.’ Resp. to Pls.’ Rule 56.1 Statement ¶
Plaintiffs contend that Prisco is vicariously liable for
copyright infringement.
We agree.
“An individual may be held
vicariously liable” for copyright infringement “if he has the right
and ability to supervise the infringing activity and also has a
direct financial interest in such activities.”
Microsoft Corp. v.
Logical Choice Computers, Inc., No. 99 C 1300, 2001 WL 58950, at
*10 (N.D. Ill. Jan. 22, 2001).
In relevant part, plaintiffs’ Rule
56.1 statement asserts:
Defendants, M.R.T.P., Inc. and Anthony Prisco own and
operate Prisco’s Eleven West located at 11 West Sauk
Trail, South Chicago Heights, Illinois . . ., which
regularly features performances of live and recorded
music. As President of M.R.T.P., Inc., Anthony Prisco
has responsibility for the daily business activities of
Prisco’s Eleven West. At least as of March 7, 2013, the
date of Defendants’ copyright infringement, Defendant
Michael Rossi was [] listed as the Secretary of M.R.T.P.,
Inc. on Prisco’s Eleven West’s liquor license.
(Pls.’ Rule 56.1 Statement ¶ 6 (supporting citations omitted).)
Defendants
Prisco’s
“agree”
Eleven
that
West
on
“M.R.T.P.
owned
March
201[2],
7,
remaining statements of alleged facts.”
Rule 56.1 Statement ¶ 6.)
Plaintiffs also assert:
and
but
Prisco
operated
“dispute”
“the
(Defs.’ Resp. to Pls.’
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Defendants M.R.T.P., Inc., Anthony Prisco, and Michael
Rossi operated and maintained the Establishment, had the
right and ability to direct and control the activities of
the Establishment, and had a direct financial interest in
the Establishment. In addition, Defendants admit that
Defendant Anthony Prisco had the right and ability to
supervise the persons employed by Prisco’s Eleven West on
March 7, 201[2], and that Anthony Prisco was present at
Prisco’s Eleven West on March 7, 201[2].
(Pls.’ Rule 56.1 Statement ¶ 13 (supporting citations omitted).)
Defendants respond: “Paragraph 13 misstates evidence by lumping all
three Defendants into it.
Defendant Rossi had nothing to do with
Prisco’s Eleven West at any time.
Defendant M.R.T.P.
Prisco.
denied.”
Admissions 1 through 3 apply to
Admissions 4 through 7 apply to Defendant
Admissions 8 through 11 apply to Defendant Rossi and were
(Defs.’ Resp. to Pls.’ Rule 56.1 Statement ¶ 13.)
Putting the matter of Rossi’s involvement aside, these are not
proper responses to plaintiffs’ assertions concerning Prisco’s
right and ability to supervise the activity at Prisco’s, his
responsibilities, or his financial interest; Prisco fails to cite
to anything in the record in paragraph 6 that would support his
denial that he was responsible for the establishment’s daily
business activities. And referring back to discovery responses and
stating to whom they “apply” does not properly address what is
asserted. In those responses, however, defendants admitted that on
March 7, 2012, Prisco had the right and ability to direct and
control the activities of Prisco’s, the right and ability to
supervise Prisco’s employees, and a direct financial interest in
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Prisco’s.
(Defs.’ Resp. to Pls.’ First Req. for Admis. ¶¶ 5-7.)
Accordingly, we will consider it undisputed that Prisco had the
right and ability to supervise the infringing activity at Prisco’s
and had a direct financial interest in such activities.
Prisco is
therefore vicariously liable for the copyright infringements.
B.
Summary Judgment with Respect to Rossi
Plaintiffs argue that Rossi is also vicariously liable for the
instances of copyright infringement at Prisco’s. Rossi cross-moves
for summary judgment, noting that the “only evidence” plaintiffs
have submitted to connect Michael Rossi to MRTP “is that he was
allegedly listed as the Secretary [of MTRP] on the Illinois Liquor
Control Commission’s website.”
(Rossi’s Cross-Mot. for Summ. J. ¶
3.)
In plaintiffs’ opening brief, their argument for Rossi’s
liability
consists
Secretary
of
infringement.”
of
a
M.R.T.P.,
single
at
sentence:
least
as
of
“Michael
the
Rossi
date
of
was
the
(Pls.’ Mem. in Supp. of Mot. for Summ. J. at 9.)
Aside from Rossi’s sworn denials of having any ownership interest
in Prisco’s, the only evidence plaintiffs submit concerning Rossi’s
involvement are Prisco’s 2011, 2012, and 2013 liquor license
renewal applications, which evidently were sent to Prisco’s by the
Illinois Liquor Control Commission with certain information that
carried over from previous years pre-printed on the application,
which Prisco then signed and submitted.
Under the heading “YOUR
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CORPORATE OFFICER/OWNERSHIP INFORMATION ON RECORD HAS BEEN PRINTED
BELOW.
IF ANY INFORMATION HAS CHANGED, PLEASE MAKE APPROPRIATE
CORRECTIONS TO THE INFORMATION PRINTED BELOW,” three names are
printed: 1) “Anthony J. Prisco” as “PRES,” with “% OWNED” as
“100.00”; 2) “Anthony Prisco” as “PRES,” with “% OWNED” as “50.00”;
and 3) “Michael Rossi” as “SEC,” with nothing printed under the “%
OWNED” heading.
(Decl. of Paul R. Coble, Ex. B.)
In response, Rossi argues that he had no connection with
Prisco’s at the relevant time.
He submits a certification stating
that “on or about March 7, 2012, I had no interest of any kind in
M.R.T.P., INC. and/or PRISCO’S ELEVEN WEST, or any other entity
located at 11 West Sauk Trail, South Chicago Heights, Illinois.”
(Defs.’ Resp. to Pls.’ Rule 56.1 Statement, Ex. C, Certification of
Michael Rossi ¶ 1.)
He also states that his interest in MRTP and
Prisco’s was “terminated” in 2002.
(Rossi Cert. ¶ 2.)
Prisco
submits an affidavit stating the same. (Defs.’ Resp. to Pls.’ Rule
56.1 Statement, Ex. D, Aff. of Anthony Prisco ¶¶ 1-2.)
Plaintiffs find fault with this response, deeming Rossi’s
certification and Prisco’s affidavit “self-serving” and arguing
that Rossi has not provided any “explanation or details about” his
ownership interest, or lack thereof, and no “supporting documents.”
(Pls.’ Reply at 4.) Plaintiffs do not seem to appreciate that they
have provided no evidence about Rossi’s ownership or financial
interest in MRTP or Prisco’s.
Even the liquor-license renewal
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applications that plaintiffs themselves submit do not state that
Rossi
has
any
establishment.
ownership
interest
in
the
corporation
or
The fact that he may have been a corporate officer
of MRTP at one time is not material because it does not imply a
financial interest.
In addition, plaintiffs completely ignore the
factor of whether Rossi had the right and ability to supervise the
infringing activity at Prisco’s; his possible onetime position as
Secretary has no bearing on this question.
In sum, although plaintiffs contend that Rossi is vicariously
liable for the copyright infringement that occurred at Prisco’s,
they have submitted no evidence whatsoever that would entitle them
to a jury determination.
They have failed to meet their initial
burden under Rule 56, so their motion for summary judgment as to
Rossi will be denied.
Conversely, Rossi has submitted a certification that he had no
interest in MRTP or Prisco’s and that his interest was terminated
many years before the infringement.
It matters not that Rossi’s
certification is “self-serving” and uncorroborated; he asserts
specific facts based on his personal knowledge, and that is an
acceptable method for presenting evidence on summary judgment.
See, e.g., Payne v. Pauley, 337 F.3d 767, 770-73 (7th Cir. 2003).
Plaintiffs have not responded with any evidence showing that there
is a genuine issue of fact as to Rossi’s financial interest in, or
right
and
ability
to
supervise
the
infringing
activity
at,
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Prisco’s.
Rossi’s motion for summary judgment will therefore be
granted.
C.
Relief
1.
Statutory Damages
Plaintiffs
infringement.
request
statutory
damages
for
each
claim
of
The Copyright Act provides that a copyright owner
may recover statutory damages, instead of actual damages, of “a sum
of not less than $750 or more than $30,000 as the court considers
just” for each infringement.
17 U.S.C. § 504(c)(1).
The statute
also provides that where the infringement is proven to have been
committed willfully, the court may increase the award of statutory
damages to a sum of not more than $150,000, and if the court finds
that the infringer was not aware and had no reason to believe that
his acts constituted copyright infringement, it may reduce the
award of statutory damages to a sum of not less than $200.
17
U.S.C. § 504(c)(2).
Plaintiffs maintain that the record supports a finding that
the defendants deliberately violated plaintiffs’ rights because
defendants failed to obtain a license for public performance
despite BMI’s having informed them repeatedly of their need to do
so.
We agree, as to MRTP and Prisco.
Between November 2010 and
June 2012, BMI sent letters to Prisco, as well as cease-and-desist
requests, that repeatedly advised him of the need to enter into a
license agreement.
Plaintiffs have submitted copies of these
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letters.
(Stevens Decl., Ex. B.)
Although MRTP and Prisco
“dispute” that they were repeatedly so informed, Defs.’ Resp. to
Pls.’ Rule 56.1 Statement ¶¶ 7-8, it appears that this “dispute”
only goes to whether Rossi was so informed, and in any event
defendants provide no explanation for the denial and no supporting
materials.3
It is uncontroverted, then, that MRTP and Prisco were
repeatedly informed of the need for a license and received ceaseand-desist requests, and they still did not obtain any BMI license.
They were on notice that copyright infringement was occurring at
Prisco’s and did not attempt to correct it.
Accordingly, we find
that MRTP and Prisco acted willfully in violating plaintiff’s
rights.
Plaintiffs seek a total statutory-damages award of $32,000
($4,000 per infringement) for the eight acts of infringement here.
In his declaration, Mr. Stevens states that the estimated total
license fees from November 1, 2010 to October 31, 2013, had
defendants entered into a license agreement at the time BMI first
contacted
them
in
November
2010,
would
have
been
$4,961.25.
(Stevens Decl. ¶ 16.) Plaintiffs cite decisions awarding statutory
damages in the range of $3,000 to $10,000 per infringement where
3/
Defendants complain that plaintiffs, in their Rule 56.1 statement,
“lump” defendants together by making statements like “BMI repeatedly informed
Defendants of the need to obtain permission for public performances of
copyrighted music,” Defs.’ Resp. to Pls.’ Mem. in Supp. of Mot. at 2-3, but they
also engage in this sort of tactic by focusing their arguments on Rossi’s lack
of involvement without explicitly acknowledging MRTP and Prisco’s involvement.
-17-
the infringement resulted from deliberate indifference to copyright
laws.
We are not required to follow any rigid formula when awarding
statutory damages; we may consider various factors such as the
difficulty
or
impossibility
of
proving
actual
damages,
the
circumstances of the infringement, and the efficacy of the damages
as a deterrent to future copyright infringement. See Chi-Boy Music
v. Charlie Club, Inc., 930 F.2d 1224, 1229-30 (7th Cir. 1991);
F.E.L. Publ’ns, Ltd. v. Catholic Bishop of Chicago, 754 F.2d 216,
219 (7th Cir. 1985).
When the infringement is willful, the
statutory damages award may be designed to penalize the infringer
and to deter future violations.
30.
Chi-Boy Music, 930 F.2d at 1229-
The award requested by plaintiffs, $32,000, is more than six
times the amount of unpaid license fees.
At first blush, this
sounds a bit excessive, but not after we consider that MRTP and
Prisco
continued
their
infringing
behavior
after
being
given
numerous notifications and opportunities to obtain a license over
the course of a year and a half.
They dragged their feet on
appearing in this action and have contested liability with no basis
for doing so.
Moreover, plaintiffs do not seek an award anywhere
near the statutory maximum for each willful infringement.
We
believe that the requested award of $4,000 for each of the eight
infringing acts is reasonable; it is well within the statutory
range and should be sufficient to deter future violations by
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defendants, but not unduly large.
Accordingly, we will award
plaintiffs statutory damages of $4,000 per copyright, for eight
copyrights, for a total statutory damages award of $32,000.
2.
Injunctive Relief
Plaintiffs request permanent injunctive relief pursuant to 17
U.S.C. § 502(a), which provides that the court may grant a final
injunction on such terms as it deems reasonable “to prevent or
restrain infringement of a copyright.”
permanent
injunction
must
show
(1)
A plaintiff seeking a
that
it
has
suffered
an
irreparable injury; (2) that remedies available at law, such as
monetary damages, are inadequate to compensate for that injury; (3)
that, considering the balance of hardships between the plaintiff
and defendant, a remedy in equity is warranted; and (4) that the
public interest would not be disserved by a permanent injunction.
Flava Works, Inc. v. Gunter, 689 F.3d 754, 755 (7th Cir. 2012)
(citing Ebay Inc. v. Mercexchange, L.L.C., 547 U.S. 388, 391
(2006), and holding that Ebay’s four-factor test for permanent
injunctive relief governs requests for relief in copyright cases).
Plaintiffs fail to cite Seventh Circuit case law; they also fail to
develop their argument by addressing each factor and explaining why
each is satisfied here.
relief will be denied.
Accordingly, the request for injunctive
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3.
Attorneys’ Fees and Costs
Plaintiffs seek reasonable attorneys’ fees and costs pursuant
to 17 U.S.C. § 505, which provides that we may award reasonable
attorneys’ fees and costs to the prevailing party.
“The two most
important considerations in determining whether to award attorneys’
fees in a copyright case are the strength of the prevailing party’s
case and the amount of damages or other relief the party obtained.”
Assessment Techs. of WI, LLC v. Wiredata, Inc., 361 F.3d 434, 436
(7th Cir. 2004).
Attorneys’ fees under the Copyright Act “have
been awarded for the purposes of encouraging the assertion of
colorable copyright claims, deterring infringement, and making the
plaintiff whole.”
(7th Cir. 1989).
Roulo v. Russ Berrie & Co., 886 F.2d 931, 942
A finding of willful copyright infringement will
support an award of attorneys’ fees, although such a finding is not
a prerequisite.
Id.
We have found that defendants MRTP and Prisco acted willfully.
In addition, their defense of this case was frivolous. They forced
plaintiffs to file a motion for summary judgment and, without any
basis, took the position that plaintiffs are not entitled to any
relief against them. A compensatory award of reasonable attorneys’
fees and costs to plaintiffs is appropriate.
include
fees
incurred
for
work
performed
This award does not
by
plaintiffs
that
pertained solely to defendant Michael Rossi (such as plaintiffs’
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motion for summary judgment as to Rossi, document number 29, and
plaintiffs’ response in opposition to Rossi’s cross-motion).
On the claims against him, Rossi is the prevailing party, and
he also requests attorneys’ fees and costs. Plaintiffs assert that
they, not Rossi, “should be awarded attorneys’ fees for Rossi’s
distracting
and
frivolous
motion,
particularly
where
the
co-
defendants have essentially admitted the copyright infringement
claims in this case.”
(Pls.’ Resp. to Rossi’s Mot. for Summ. J. at
3-4.)
The liability of Rossi’s co-defendants has
We disagree.
nothing to do with Rossi’s liability.
As to Rossi, it is not
Rossi’s motion, but that of plaintiffs, that was frivolous.
Their
argument for Rossi’s vicarious liability was so weak that they
could not meet their initial burden on summary judgment.
In copyright actions, “prevailing plaintiffs and prevailing
defendants are to be treated alike.”
Assessment Techs., 361 F.3d
at 436 (citing Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 (1994)).
When the prevailing party is the defendant, who by definition
receives not a small award but no award, the presumption in favor
of awarding fees is very strong.
437.
Assessment Techs., 361 F.3d at
Rossi points out that he had to defend this case and move for
summary judgment because plaintiffs would not accept a sworn
statement that he had no ownership interest in Prisco’s at the
relevant time.
Plaintiffs refused to dismiss Rossi, based solely
on the fact that he was listed as a corporate officer--with no
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ownership
interest--on
applications.
Prisco’s
pre-printed
liquor-license
Rossi is therefore entitled to his reasonable
attorneys’ fees and costs. However, Rossi shares counsel with MRTP
and Prisco, so he is entitled only to the reasonable fees and costs
incurred solely on his behalf.
Defense counsel filed only two
documents solely on Rossi’s behalf.
The first was Rossi’s single-
page motion to dismiss the action, which we denied because it
relied
on
factual
matters
outside
the
pleadings
(Rossi’s
certification) that cannot be raised on a motion to dismiss.
Because that motion was without merit, we will not award Rossi the
fees incurred in connection with it.
The second document filed on
Rossi’s behalf was his two-page cross-motion for summary judgment
and one-page certification.
Thus, the fees incurred solely on
Rossi’s behalf appear to be negligible, but Rossi is entitled to
the fees incurred for that work, and they are awarded to him.
CONCLUSION
For the foregoing reasons, plaintiffs’ motion for summary
judgment as to defendant M.R.T.P., Inc. [27] is granted in large
part, except with respect to the request for injunctive relief;
plaintiffs’ motion for summary judgment as to defendant Anthony
Prisco [28] is granted in large part, except with respect to the
request for injunctive relief; plaintiffs’ motion for summary
judgment
as
to
defendant
Michael
Rossi
[29]
is
denied;
and
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defendant Michael Rossi’s cross-motion for summary judgment [43] is
granted.
The court awards plaintiffs statutory damages of $4,000.00 for
each of the eight copyrights that defendants M.R.T.P., Inc. and
Anthony Prisco infringed, for a total statutory damage award of
$32,000, against M.R.T.P., Inc. and Anthony Prisco, jointly and
severally.
The court grants plaintiffs’ request for an award of
attorneys’ fees and costs against M.R.T.P., Inc. and Anthony
Prisco.
(This award does not include fees incurred for work
performed by plaintiffs solely with respect to defendant Michael
Rossi.)
The court grants Michael Rossi’s request for an award of
attorneys’ fees and costs against plaintiffs for any work done by
defense counsel that was performed solely on behalf of Rossi.
The parties are directed to confer and informally attempt to
agree on the appropriate amount of attorneys’ fees.
They are
strongly encouraged to reach such an agreement; the court has spent
an undue amount of time on this case.
If, by August 15, 2014, they
have not been able to agree, they should follow the procedure
outlined in Local Rule 54.3 (and the schedule set forth in that
Rule shall run from August 15, 2014 instead of today’s date).
In
the event that the parties do reach an agreement regarding fees by
August
15,
the
plaintiffs
are
directed
judgment order by August 25, 2014.
to submit
a
proposed
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DATE:
June 26, 2014
ENTER:
___________________________________________
John F. Grady, United States District Judge
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