United States District Court, Northern District of Illinois, E.D
May 28, 1985
BROADCAST MUSIC, INC., PLAINTIFF,
NIRO'S PALACE, INC., DEFENDANT.
The opinion of the court was delivered by: Plunkett, District Judge.
MEMORANDUM OPINION AND ORDER
Broadcast Music, Inc. ("BMI") brought this action against
Niro's Palace, Inc. ("Niro's"), seeking injunctive relief,
statutory damages, and attorney's fees for Niro's alleged
infringement of certain musical composition copyrights.
is based on 28 U.S.C. § 1338(a) and is not contested. Presently
before the court are the parties' cross-motions for summary
judgment. For the reasons set forth below, BMI's motion is
granted in part and denied in part, and Niro's motion is
The following facts are not in dispute. BMI purports to be
the world's largest "performing rights organization" that
licenses nondramatical musical works on behalf of copyright
owners under 17 U.S.C. § 110 et seq. Under this arrangement,
BMI pays a fee to the copyright owner, charges a fee for
nonexclusive licenses to perform copyrighted musical
compositions, and enforces infringements of BMI held
Niro's owns and operates the Palace Bowl, a bowling alley
and tavern. It serves food and drink to the public, and
provides live entertainment including performances of musical
compositions. In early December 1982, BMI learned that live
music was being performed on Niro's premises despite the fact
that Niro's did not have a licensing agreement with BMI. On
December 10, 1982, BMI sent a letter to Niro's informing it
that copyrighted music could not be performed on its premises
without prior consent of the copyright owner or a BMI license.
Enclosed with the letter was a BMI "blanket" license
Sometime in late December 1982 or early January 1983, a BMI
representative telephoned Niro's and advised Jack Nickol
("Nickol"), a principal of Niro's, that Niro's was violating
the Copyright Act of 1976 by allowing copyrighted songs to be
performed on Niro's premises without first obtaining a BMI
license. Niro's nonetheless refused to enter into a licensing
agreement. Subsequently, BMI sent a letter to Niro's again
informing it that it had to obtain a BMI license in order to
have copyrighted songs played on its premises. Niro's did not
respond to this letter. In late January 1983, BMI sent a
"mailgram" to Niro's demanding that it stop the playing of BMI
music on its premises. Niro's rebuffed all of these warnings
to stop infringing copyrights held by BMI.
BMI alleges that on March 18, 1983, a BMI investigator and
his wife observed the live performance of thirty-two musical
works on Niro's premises. Of these thirty-two musical works,
BMI alleges that fourteen involve copyrights held by BMI.
Subsequently, BMI contacted Niro's on two occasions, again
warning Niro's that performance of copyrighted music without
consent or a license constituted copyright infringement. No
license agreement was ever executed.
Rule 56(c) of the Federal Rules of Civil Procedure provides
[summary judgment] shall be rendered forthwith if
the pleadings, depositions, answers to
interrogatories, and admissions on file, together
with the affidavits, if any, show that there is
no genuine issue as to any material fact and that
the moving party is entitled to a judgment as a
matter of law.
Niro's attempts to raise several factual issues so as to stave
off summary judgment. As discussed below, its attempts are
entirely lacking in merit. (On the other hand, Niro's contends
that one or more of its affirmative defenses has been
established as a matter of law, and that it is therefore
entitled to summary judgment.)
I. Copyright Infringement
In order for BMI to establish copyright infringement, it
must prove (1) ownership of a valid copyright, and (2)
"copying" by defendant. E.g., Atari, Inc. v. North American
Philips Consumer Electronics Corporation, 672 F.2d 607, 614
(7th Cir. 1982); 3 M. Nimmer, Nimmer On Copyright § 13.01, at
13-3 (2d ed. 1984). The first element has been established by
the filing of BMI's registration certificates and the affidavit
of Theodore Zavin ("Zavin Aff."), which constitute a "prima
facie showing of proprietorship."
Broadcast Music, Inc. v. Moor-Law, Inc., 484 F. Supp. 357,
362-63 (D.Del. 1980).
With respect to the second element, "copying," Niro's makes
a tortured attempt to raise a material issue of fact. Copying
can take many forms. The most straightforward type of copying
is the public performance of another's musical composition.
Twentieth Century Music Corporation v. Aiken, 422 U.S. 151,
157, 95 S.Ct. 2040, 2044, 45 L.Ed.2d 84 (1975). Moreover, not
only is the peformer liable for infringement, but so is anyone
who sponsors the performance. As the Supreme Court found in
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
statute [the Copyright Act of 1909]. The
entrepreneur who sponsors such a public performance
for profit is also an infringer — direct or
422 U.S. at 157, 95 S.Ct. at 2044 (emphasis added).
In this case, BMI's affidavits establish that 14 copyrighted
songs were performed on Niro's premises on the evening of
March 18, 1983. (Affidavit of Daniel Wagemann, ¶ 6; Affidavit
of Audrey Wagemann, ¶ 5.) In an attempt to challenge these
affidavits, Niro's has submitted the affidavits of a band
member and of a bartender on duty on the night in question.
Niro's argues that the affidavit of the bartender raises a
material issue of fact because he disputes the kind of food and
drink that the BMI investigator and his wife claimed they were
served. (Affidavit of Michael Murphy, ¶¶ 4-5.) Such wholly
irrelevant details, however, do not effectively controvert
In addition, Niro's argues that the affidavit of the band
member raises a material issue of fact as to the songs played
on March 18, 1983. (Affidavit of Gregory Kerkera, ¶¶ 2-9.)
However, Kerkera's affidavit merely reveals that he cannot
remember what musical compositions were peformed. (Id., ¶¶
4-5.) Such evidence does not establish that a material factual
dispute exists in this case. However, as to two of the musical
compositions, "Yesterday" and "Tutti Frutti," the Kerkera
affidavit does controvert the BMI affidavits because it states
that "Yesterday" has never been performed by the band, and that
"Tutti Frutti" was added to the repertoire of the band only
after the night in question. (Id., ¶¶ 7-8.)
Therefore, as to the playing of twelve of the fourteen
musical compositions in question, no material factual dispute
exists. Accordingly, performance of these twelve songs on
Niro's premises constituted copyright infringement, unless
Niro's can establish a valid affirmative defense to that
II. Niro's Affirmative Defenses
Niro's has attempted to establish four affirmative defenses,
all of which are lacking in either legal or factual support.
Mere asertion of an affirmative defense, without a factual
predicate for it, is insufficient to defeat a motion for
summary judgment. See Fed.R.Civ.P.Rule 56(e); Tilden Financial
Corporation v. Palo Tire Service, 596 F.2d 604, 607-608 (3d
A. "Per Piece" Licensing
Under a "per piece" license agreement, a licensee pays for
the right to perform specific musical compositions. The per
piece license is the product of a consent decree entered into
by BMI and the United States in 1966 in an antitrust suit,
United States v. Broadcast Music, Inc., 1966 Trade Cases (CCH)
¶ 71,941 (S.D.N.Y. 1966). The conditions under which BMI is
required to offer a per piece license are set forth in the
consent decree as follows:
Defendant [BMI] shall not, in connection with any
offer to license by it the public performance of
musical compositions by music users other than
broadcasters, refuse to offer a license at a
price or prices to be fixed by defendant with the
consent of the copyright proprietor for the
performance of such specific (i.e., per piece)
musical compositions, the use of which shall be
requested by the prospective licensee.
1966 Trade Cases (CCH) at ¶¶ 83,326-83,327.
Niro's argues that BMI's alleged refusal to offer a per
piece license establishes abuse of copyright in this case.
This argument, however, is totally lacking in legal support.
The last clause of the quoted section of the consent decree
plainly states that the use of a per piece license "shall be
requested by the prospective licensee." Since Niro's has
neither alleged in its pleadings nor averred in its affidavits
that it ever requested a per piece license, it cannot complain
that BMI never offered one.
B. List of Protected Songs
Niro's next argues that BMI should be barred from
maintaining this copyright infringement action because BMI
refused to provide Niro's with a list of all of the songs
assigned to BMI. However, Niro's has not cited a single case
where a court has held that BMI has a duty to provide such a
list. Rather, the law is directly to the contrary. In
Leigh v. Sakkaris, 215 U.S.P.Q. (BNA) 113 (N.D.Cal. 1982), for
example, the defendant, a tavern owner, also argued that the
plaintiff-in-interest, the American Society of Composers,
Authors and Publishers ("ASCAP"), was barred from maintaining a
copyright infringement action because of its refusal to provide
a list of copyrighted songs. The court rejected that argument,
stating as follows:
As to the failure of the ASCAP to provide a
list of musical works covered by its licensing
agreement, courts have stated that in an era when
much of the music performed is copyrighted, a
proprietor should not profit at the expense of
song composers by instructing musical groups not
to play copyrighted music and by then claiming
ignorance of their program. See Chess Music, Inc.
v. Sipe, 442 F. Supp. 1184, 199 U.S.P.Q. 767
(D.Minn. 1977). As the only purpose of a list would
be to instruct musicians not to play those pieces
listed, production of a list is not a defense to
215 U.S.P.Q. (BNA) at 115. Accord Warner Brothers, Inc. v.
O'Keefe, 468 F. Supp. 16, 20 (S.D.Iowa 1977). See also Famous
Music Corporation v. Bay State Harness Horse Racing and
Breeding Association, Inc., 554 F.2d 1213
, 1215 (1st Cir.
1977). Thus, BMI clearly did not have a duty to provide Niro's
with a list of copyrighted songs. Accordingly, Niro's
affirmative defense is, as a matter of law, insufficient to bar
BMI's claims for copyright infringement.
C. Editing Service
Niro's next argues that BMI is equitably estopped from
asserting infringement on the theory discussed in Tempo Music,
Inc. v. Myers, 407 F.2d 503, 507 (4th Cir. 1969). In Tempo
Music, the court held that the plaintiffs were "estopped to
assert [the] infringement and ask for damages and counsel fees"
because an ASCAP representative, as agent for the plaintiffs,
failed to advise the defendant of the availability of an
editing service, as required by ASCAP's consent decree. See
United States v. American Society of Composers, Authors and
Publishers, Civil Action No. 13-95 (S.D.N.Y. Mar. 14,
Niro's reliance on Tempo Music is misplaced. In that case,
the source of the duty to disclose the availability of an
editing service was ASCAP's consent decree, to which BMI was
not a party. BMI's consent decree created no such duty, and
Niro's has not suggested any other source for such a duty.
Therefore, Niro's third affirmative defense is, as a matter of
law, insufficient to bar BMI's claims for copyright
D. Copyright Misuse
Niro's alleges copyright misuse as a fourth affirmative
defense. In support of this defense, Niro's relies heavily on
the decision in Broadcast Music, Inc. v. Moor-Law,
Inc., 484 F. Supp. 357 (D.Del. 1980). In Moor-Law, BMI sued a
small nightclub and its owner for copyright infringement. The
defendants raised copyright misuse as an affirmative defense,
and they filed an antitrust counterclaim. The counterclaim
alleged that an offer of a per piece license to a small
nightclub was a "sham" because such a license could not satisfy
its needs, and therefore left the nightclub with no alternative
except to purchase a blanket license.
As Niro's notes, the court in Moor-Law denied BMI's motion
for summary judgment, despite clearly proven infringements,
defendants point to evidence tending to show (1)
that after offering a per piece license, BMI
declined to supply a list of compositions within
its repertory, (2) that a BMI employee referred
to BMI's standard requests as a "snow job," and
(3) that BMI has apparently entered no license
more limited than the repertory-wide blanket
license with any [other small tavern owner].
484 F. Supp. at 367. Based on this evidence, the court found
that the defendants' copyright misuse defense and antitrust
counterclaim raised material issues of fact. Unlike the
defendants in Moor-Law, however, Niro's points to no evidence
to support its bald allegation of copyright misuse. Indeed,
Moor-Law helps to highlight the insufficiency of Niro's
affirmative defense of copyright misuse.
Since Niro's affirmative defenses are insufficient as a
matter of law, much less established as a matter of law, its
motion for summary judgment should be denied. Since BMI has
proven infringement of twelve of the fourteen copyrighted
songs, BMI's motion for summary judgment with respect to those
twelve songs is granted, but denied with respect to the
remaining two songs.
III. Injunctive Relief, Damages, Costs, and Attorney's Fees
A. Injunctive Relief
One of the remedies afforded by the Copyright Act of 1976 is
injunctive relief. 17 U.S.C. § 502. Injunctive relief is
appropriate in this case because the nature of the infringement
prevents BMI from obtaining an adequate remedy at law. E.g.,
Broadcast Music, Inc. v. Dendrinos, 220 U.S.P.Q. (BNA) 865, 869
(N.D.Ill. 1983); Boz Scaggs Music v. KND Corporation,
491 F. Supp. 908, 914 (D.Conn. 1980).
A permanent injunction is especially appropriate where a
threat of continuing infringement exists. See, e.g., Broadcast
Music, Inc. v. Dendrinos, 220 U.S.P.Q. (BNA) at 869. The threat
of continuing infringement is substantial in the present case.
Niro's provided unauthorized performances of copyrighted
musical compositions on its premises after receiving oral and
written notices of infringement and demands to stop such
infringement from BMI. This behavior indicates a willful
disregard of copyrights held by BMI and should be permanently
B. Statutory Damages
BMI has elected and is entitled to statutory damages of not
less than $250.00 nor more than $10,000.00 for each of the
twelve copyright infringements for which we have found that
BMI is entitled to summary judgment in this case. See 17 U.S.C. § 504(c);
Big Sky Music v. Todd, 388 F. Supp. 498, 501 (S.D.Ga.
1974). See also Milene Music, Inc. v. Gotauco, 551 F. Supp. 1288,
1296 (D.R.I. 1982). Within the statutory bounds, the
amount of damages is within the court's discretion. E.g.,
Quinto v. Legal Times of Washington, Inc., 511 F. Supp. 579, 582
BMI has asked for $10,000.00 for each infringement. We
believe, however, that that amount is excessive. Instead, we
are persuaded that $500.00 per infringement is an effective
deterrent for a willful infringer in Niro's position.
C. Costs and Attorney's Fees
A plaintiff is entitled to recover costs and attorney's fees
for willful copyright
infringement. 17 U.S.C. § 505; Lauratex Textile Corporation v.
Allton Knitting Mills, Inc., 517 F. Supp. 900, 904 (S.D.N.Y.
1981); Boz Scaggs Music v. KND Corporation, 491 F. Supp. at 915.
In the present case, an award of costs and reasonable
attorney's fees is justified because if Niro's had heeded BMI's
warnings either to enter a license agreement or to stop playing
copyrighted music, this litigation would have been wholly
unnecessary. In addition, Niro's repeatedly rebuffed offers to
resolve this dispute prior to the commencement of litigation.
See Boz Scaggs Music v. KND Corporation, 491 F. Supp. at 915.
Thus, Niro's was not an innocent infringer, and costs and
reasonable attorney's fees are appropriate.
For the reasons stated above, BMI's motion for summary
judgment is granted with respect to twelve of the fourteen
claimed infringements and denied with respect to the remaining
two, and Niro's motion for summary judgment is denied.
Accordingly, we permanently enjoin Niro's from playing music
for which BMI holds the copyright on its premises without
obtaining consent or a license from BMI. We order Niro's to
pay BMI $6,000.00 in statutory damages, and costs and
reasonable attorney's fees. BMI should submit affidavits
detailing the amount of costs and attorney's fees incurred in
prosecuting this action within fourteen days after receiving
notice of this decision. Niro's should file any objections to
BMI's submissions within fourteen days thereafter.