Dash v. Mayweather et al
Filing
172
ORDER granting 143 Motion for Summary Judgment; granting 145 Motion for Summary Judgment; dismissing as moot 95 Motion for Protective Order; dismissing as moot 96 Motion to Quash; dismissing as moot 100 Motion to Compel; dismissing as moot 125 Motion for Extension of Time; dismissing as moot 126 Motion for Joinder. Signed by Honorable Joseph F Anderson, Jr on 05/11/2012.(bshr, )
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF SOUTH CAROLINA
COLUMBIA DIVISION
Anthony Lawrence Dash,
)
)
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Plaintiff,
)
)
vs.
)
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Floyd Mayweather, Jr., an individual;
)
Mayweather Promotions; Mayweather )
Promotions, LLC; Philthy Rich Records, )
Inc.; and World Wrestling
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Entertainment, Inc.,
)
Defendants.
)
)
C/A No.: 3:10-cv-1036-JFA
ORDER
This matter comes before the court pursuant to Defendants’ motion for summary
judgment (ECF Nos. 143 & 145). The court held a hearing on this matter on May 9,
2012. After considering the written materials submitted and the arguments of counsel,
the court grants Defendants’ motions for summary judgment.
I.
FACTUAL AND PROCEDURAL HISTORY
This case arises from the appearance of Floyd Mayweather, Jr., a professional
boxer, at two World Wrestling Entertainment (WWE) events. Mayweather appeared at
Wrestlemania XXIV on March 30, 2008, and at the August 24, 2009, weekly episode of
WWE’s RAW program. During his entrance at the two events, Mayweather played the
“Yep” song. Plaintiff Anthony Dash alleges that “Yep” infringes a copyright he holds in
his beat, the Tony Gunz Beat (TGB beat). For the purpose of the damages issues
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presently before the court, the parties are assuming that Plaintiff had a valid copyright in
the TGB beat.
For the purposes of this motion, the parties have stipulated to the key facts. WWE
has disclosed the amount of revenues it earned and identified the particular revenue
streams from the events in question. (See ECF 137-1, an unredacted version of the
stipulations is on file with the court.) Plaintiff has stipulated that he has no evidence to
indicate that the playing of “Yep” at the two WWE events increased the revenue beyond
the amount WWE would have earned without the song.
This motion is before the court pursuant to the court’s Order Modifying Case
Management Order (ECF No. 138).
At a previous hearing, this court granted the
Defendant’s motion to bifurcate the trial, and held the various discovery motions in
abeyance.1 Following that hearing, the parties submitted a proposed order outlining the
issues to be addressed as a part of the bifurcated proceedings. The court adopted that
order, and accordingly, the first phase will address “the issue of Plaintiff’s entitlement to
actual damages and/or a profits based measure of damages pursuant to 17 U.S.C. §
504(b).”
II.
LEGAL STANDARD
1
Prior to the order bifurcating this case, the parties were embroiled in a contentious discovery dispute.
Many of the disputes stemmed from discovery related to damages, which resulted in this court’s decision
to bifurcate the trial, and address the damages issue first. Therefore, the following motions are still
pending: Defendant WWE’s Motion to Compel Discovery, for a Preclusion Order on Actual Damages
Claim, and for Modification of the Case Management Order (ECF No. 89), already granted in part;
Defendant WWE’s Motion for a Protective Order (ECF No. 95); Plaintiff’s Motion for a Protective Order
and to Quash a Subpoena (ECF No. 96); Plaintiff’s Motion to Compel (ECF No. 100) and Defendant
WWE’s Motion for Extension of Time (ECF No. 125) and the Mayweather Defendant’s corresponding
joinder motion (ECF No. 126). Because this court has decided to grant summary judgment in favor of
Defendants, those motions are hereby dismissed as moot.
2
Rule 56(a) of the Federal Rules of Civil Procedure provides that summary
judgment shall be granted when a moving party has shown that “there is no genuine
dispute as to any material fact and the movant is entitled to judgment as a matter of law.”
The court must determine whether the evidence presents a sufficient disagreement to
require submission to a jury or whether it is so one-sided that one party must prevail as a
matter of law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251–52 (1986). When
evaluating a motion under Rule 56, the Court must construe all “facts and inferences to
be drawn from the facts . . . in the light most favorable to the non-moving party,” Miller
v. Leathers, 913 F.2d 1085, 1087 (4th Cir. 1990) (internal quotations omitted), and
summary judgment should be granted in those cases where it is perfectly clear that there
remains no genuine dispute as to material fact and inquiry into the facts is unnecessary to
clarify the application of the law. McKinney v. Bd. of Trs. of Md. Cmty. Coll., 955 F.2d
924, 928 (4th Cir. 1992). In deciding a motion for summary judgment, “the judge’s
function is not himself to weigh the evidence and determine the truth of the matter but to
determine whether there is a genuine issue for trial.” Anderson, 477 U.S. at 249.
III.
DISCUSSION
Plaintiff’s monetary damages claim rests on two grounds: profits of the infringer
and actual damages. 2
a. Profits of the Infringer
2
In his complaint, Plaintiff sought injunctive relief as well as monetary damages. Counsel for Defendant
Mayweather indicated to this court that he did not plan to use the song again. In any event, the plaintiff
has now registered his copyright, and should defendant use the song again, the question presented would
be in a different posture than the issue presently before this court. Accordingly, the court finds it
necessary to address only the damages issues properly before it.
3
Plaintiff claims entitlement to Defendants’ profits as a measure of his damages
pursuant to 17 U.S.C. § 504(b), which provides as follows:
(b) Actual Damages and Profits.--The copyright owner is entitled to recover
the actual damages suffered by him or her as a result of the infringement,
and any profits of the infringer that are attributable to the infringement and
are not taken into account in computing the actual damages. In establishing
the infringer's profits, the copyright owner is required to present proof only
of the infringer's gross revenue, and the infringer is required to prove his or
her deductible expenses and the elements of profit attributable to factors
other than the copyrighted work.
Section 504(b)’s burden shifting requirement provides an initial burden of proof for the
copyright owner. The Fourth Circuit has noted that the “copyright holder must show
more than the infringer’s total gross revenue from all of its profit streams.” Bonner v.
Dawson, 404 F.3d 290, 294 (4th Cir. 2005). The Fourth Circuit has interpreted the term
“gross revenue” to refer only to revenue “reasonably related to the infringement.” Id.
(citations omitted). In Bouchat v. Baltimore Ravens Football Club, Inc., 346 F.3d 514
(4th Cir. 2003) the Fourth Circuit analyzed § 504(b)’s burden shifting provision in the
context of a summary judgment motion. The court concluded that summary judgment
may be properly awarded to an infringer where there is “no conceivable connection
between the infringement and the claimed revenues” or where the copyright holder can
offer no “more than mere speculation.” Id. at 520–22.
In Bouchat, the Baltimore Ravens used the plaintiff’s shield design as part of the
Flying B logo for the new team. In the damages portion,3 the plaintiff claimed damages
pursuant to § 504(b), arguing that “some portion of essentially all of the Defendants’
3
In bifurcated proceedings, the jury first found that the defendant was liable for the infringement.
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revenues was attributable to the infringing use of Bouchat’s artwork.” Id. at 517. The
Fourth Circuit ultimately affirmed the trial court’s decision to award summary judgment
on the damages issue regarding the revenues derived from sources other than
merchandise sales. Regarding the other revenues—such as minimum guarantee shortfalls
and free merchandise—the court found that there was no conceivable connection to the
design. The court determined that these revenues were independent of any connection to
the logo because “neither figure could fluctuate in response to consumer behavior,” and
were “necessarily independent of any reaction that an individual might have had to the
Flying B logo.” Id. at 524. In other words, these were “revenues whose levels were
fixed and immutable before licensees had an opportunity to [purchase the goods]” and,
accordingly, not a proper measure of damages under § 504(b). Id. at 524.
In Bonner v. Dawson, 404 F.3d 290 (4th Cir. 2005), the Fourth Circuit reiterated
its stance from Bouchat, but found that the revenues at issue did have a direct connection
to the infringing work. In Bonner, an architect designed a building, and the client and
builder later used the same design—without the architect’s permission—for a second
building. The revenues at issue were the profit streams derived from the building, such
as lease agreements, and therefore were “not generated by outside sources, but by money
collected from the use of the specific infringed work.” Id. at 294. As a result, the Fourth
Circuit determined that the architect met the initial burden under § 504(b).
Plaintiff’s position is that “when profits are directly realized from the sale of an
infringing product . . . , Plaintiff may recover without any further showing of a ‘causal
connection.’” (Pl.’s Opp. Def. Mot. Summ. J. 1, ECF No. 158.) Plaintiff asserts that the
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distinction between direct and indirect profits is critical, and that Defendants improperly
rely on indirect profits cases.
Plaintiff argues that once he has demonstrated an
infringement, he need only show Defendant’s gross revenue and then the burden shifts:
any burden of demonstrating a causal connection is satisfied by merely showing that the
Defendants’ generated revenues through the direct sale of the infringing work. Plaintiff
argues that the damages in this case are direct and concludes that he has met his initial
burden. Plaintiff asks the court to deny the summary judgment motions and allow the
case to move forward and place the burden on the Defendants to prove that the profit
generated at the two events was attributable to factors other than the use of the infringing
“Yep” work.
Plaintiff, however, fails to confront the Fourth Circuit cases directly, and rather,
relies on several out of circuit decisions, asserting that the law is more developed in the
copyright context outside of the Fourth Circuit. In Wood v. Houghton Mifflin Harcourt
Publishing Co., 589 F. Supp. 2d 1230 (D. Colo. 2008), the copyright holder of a
photograph sued a textbook publisher because the textbook used one of his photographs
without authorization.
That court held that the photographer established the causal
connection between the infringement and the profits by showing that the publisher
profited from the publication of works containing the photograph. The Plaintiff also
relies on Bergt v. McDougall Littell, 661 F. Supp. 2d 916 (N.D. Ill. 2009), for the similar
proposition that a painter need only show gross revenue from the sales of a textbook that
made unauthorized use of his work.
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The court finds that Plaintiff is not entitled to any of the Defendants’ profits as a
measure of damages. Critical to the resolution of this issue is the Plaintiff’s stipulation
that playing “Yep” did not increase the revenues of the Wrestlemania or RAW programs
beyond what they would have otherwise garnered. Given this stipulation, Plaintiff fails
to get past his initial § 504(b) burden as outlined in Bouchat. Plaintiff has failed to
present any evidence demonstrating a causal link between the alleged infringement and
the enhancement of a revenue stream at the WWE events in question. In such a case,
where there is “no conceivable connection between the infringement and the claimed
revenues,” Bouchat demands that summary judgment must be granted in favor of the
alleged infringer. Bouchat, 346 F.3d at 520.
While Plaintiff asserts that the damages in this case are direct, the court is not
convinced that the damages in this case are in fact direct. Defendant did not directly sell
the work, and as a result, the profits at issue here align more closely with cases involving
indirect profits.4 Plaintiff also argues that his case is analogous to Bonner, because both
involve direct profits. In Bonner, however, the court noted that the revenues came from
the buildings and that “no other source contributed to the generated funds.” Bonner, 404
F.3d at 294. The same cannot be said for the revenues in this case, and in fact, Plaintiff
has stipulated that the song did not increase the revenues at the two WWE events. In any
4
Plaintiff relies heavily on two district court cases from outside the Fourth Circuit, Bergt and Wood
discussed above, but both involve direct profits. Moreover, those two cases clearly apply the standard
applicable in their respective circuit, not the burden required in the Fourth Circuit. See, e.g., Bergt, 661 F.
Supp. 2d at 927–28 (“Consequently, as the Seventh Circuit has required only a minimal showing of a
causal nexus in a direct profit case to meet the plaintiff’s § 504(b) burden, Bergt only need establish
McDougal’s gross revenue from sales of the textbook.”) (emphasis added).
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case, viewed either as indirect or direct damages, Plaintiff is not relieved of the causation
burden, a burden that the court finds he has not met.
Plaintiff’s policy argument fails to present a complete picture of the relief
available under the Copyright Act.
Plaintiff uses several examples to attempt to
demonstrate that parties such as himself would be left without relief in the copyright
scheme if the court follows Defendants’ reasoning. As Defendants note, however, the
Copyright Act does contemplate a situation such as this one.
The Copyright Act
encourages registration, which then allows copyright holders to seek statutory damages in
situations such as the present one where the apportionment of damages under § 504(b)
becomes complex or relief is unavailable. In this case, however, Plaintiff failed to
register his copyright and is limited in the damages that he may seek—only actual
damages and infringer’s profits pursuant to § 504(b). Plaintiff’s policy argument fails to
discuss the role of statutory damages and therefore fails to present a full picture of the
relief available under the Copyright Act.
b. Actual Damages (Plaintiff’s Loss)
Plaintiff also seeks an award of actual damages pursuant to 17 U.S.C. § 504(b).
Actual damages under § 504(b) constitute the market value of TGB—the license fee that
Plaintiff would have charged. Hofmann v. O’Brien, 367 F. App’x 439, 442 (4th Cir.
2010) (citing On Davis v. The Gap, Inc., 246 F.3d 152, 166 (2d Cir. 2001). Traditional
damage principles dictate that actual damages may not be based on “undue speculation.”
Id. (citing On Davis, 246 F.3d at 166).
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Plaintiff argues that he is entitled to recover actual damages, and he relies on
expert testimony comparing fees paid to other entertainers whose music was played at
WWE events. Defendants argue that the actual value of TGB cannot be determined by
looking at other entertainers because the focus is on the value of Plaintiff’s work. In
other words, Defendants argue that the market value of Plaintiff’s beat bears no
relationship to the market value of songs by famous recording artists such as Snoop Dogg
and the Red Hot Chili Peppers. Defendants further support their position by noting that
Plaintiff did not report any income from his songs on his tax returns and has not offered
any other proof of sales of his beats. Defendants conclude that the TGB has no market
value and, accordingly, that this court should grant summary judgment in its favor on
both of the damages issues.
In this case, Plaintiff is not entitled to recover any actual damages. Plaintiff has
only offered speculation as to the value of the song.
Because the actual damages
calculation focuses on Plaintiff’s work, the amounts WWE paid to other entertainers, who
are not similarly situated to Plaintiff, is irrelevant. See Frank Music Corp. v. MetroGoldwyn-Mayer, 772 F.2d 505, 514 n.8 (9th Cir. 1985).
Plaintiff relies only on
speculation, while Defendants have offered evidence that indicates that Plaintiff’s song
did not have a market value. Accordingly, the court finds that the Plaintiff has not
offered sufficient, concrete evidence to indicate an actual value of the beat, and he cannot
survive summary judgment on the actual damages claim.
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IV.
CONCLUSION
Earlier in this case, the court sanctioned the individual defendant, Floyd
Mayweather, Jr., as a result of his conduct during discovery. Pursuant to the Declaration
recently filed with this court outlining Mr. Mayweather’s charitable activities (ECF No.
170), the court finds that he has complied with the sanctions as ordered by this court,
and that matter is now resolved.
For the reasons stated above, the court grants the Defendants’ motions for
summary judgment on the damages issues. Because the court finds that the Plaintiff is
not entitled to any damages, the case will not proceed to the liability phase, and the
pending discovery motions are hereby dismissed as moot. The clerk is instructed to
close the case.
IT IS SO ORDERED.
May 11, 2012
Columbia, South Carolina
Joseph F. Anderson, Jr.
United States District Judge
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