Sony/ATV Publishing, LLC v. Marcos, 651 F. App'x 482

Background

Sony/ATV and EMI (Publishers) own rights in thousands of musical compositions; about 6,000 of those (Subject Works) appeared in karaoke recordings sold by Ontario (a karaoke distributor).
Publishers sued Ontario for copyright infringement, alleging Ontario reproduced and distributed Subject Works without valid licenses in the U.S.
Ontario relied on a variety of asserted licenses: an HFA mechanical license, MCPS/PRS licenses, licenses held by foreign "Karaoke Labels," and expired or co-publisher licenses from Publishers.
The district court reviewed extensive evidence and found Ontario lacked valid licenses for the Subject Works, granted a preliminary injunction broadly barring Ontario from exploiting compositions owned or administered by Publishers in the U.S., and imposed a compliance/notice mechanism.
Ontario appealed, challenging likelihood of success, irreparable harm, balance of equities, and the injunction’s breadth and retroactivity; the Sixth Circuit affirmed.

Issues

Issue	Plaintiff's Argument (Publishers)	Defendant's Argument (Ontario)	Held
Likelihood of success on ownership	Publishers submitted sworn declarations and business records showing ownership of Subject Works	Ownership evidence is incomplete; Publishers must prove each work	Court: Publishers showed sufficient evidence at preliminary-injunction stage; likelihood of success satisfied
Whether licenses authorize Ontario’s U.S. exploitation	Many asserted licenses do not cover the challenged uses or territories; some expired	Ontario: HFA, MCPS/PRS, Karaoke Labels, or co-publisher licenses authorize its activity	Court: Licenses did not authorize Ontario’s U.S. distribution of karaoke recordings; HFA excludes karaoke/lyrics; MCPS/PRS limited/expired; Karaoke Labels didn’t authorize U.S. downloads; co-publisher licenses expired
Irreparable harm from continued infringement	Presumption of irreparable harm follows from likelihood of success	Ontario: Harm speculative/exaggerated	Court: Presumption applies and Ontario failed to rebut; irreparable harm established
Scope and notice of injunction	Injunction narrowly tailored with a compliance/identification process to add further works; prevents future infringement	Injunction is overbroad, vague, retroactive, restricts advertising/offers and third-party rights	Court: No abuse of discretion — injunction, with identification, notice-and-cure, and modification procedure, provided fair warning and was appropriately prophylactic

Key Cases Cited

Obama for Am. v. Husted, 697 F.3d 423 (6th Cir. 2012) (preliminary injunction standard)
Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7 (2008) (injunction standard factors)
Six Clinics Holding Corp., II v. Cafcomp Sys., Inc., 119 F.3d 393 (6th Cir. 1997) (abuse-of-discretion review for injunctions)
Fogerty v. MGM Grp. Holdings Corp., 379 F.3d 348 (6th Cir. 2004) (elements of copyright claim)
Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) (copyright ownership/standards)
Univ. of Tex. v. Camenisch, 451 U.S. 390 (1981) (preliminary injunction may rest on incomplete evidence)
Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417 (1984) (licenses as affirmative defenses)
ABKCO Music, Inc. v. Stellar Records, Inc., 96 F.3d 60 (2d Cir. 1996) (technical workarounds cannot evade license scope)
Leadsinger, Inc. v. BMG Music Pub., 512 F.3d 522 (9th Cir. 2008) (chip with sound+lyrics constitutes audiovisual work beyond compulsory license)
Lexmark Int’l, Inc. v. Static Control Components, Inc., 387 F.3d 522 (6th Cir. 2004) (presumption of irreparable harm with likelihood of success)
Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240 (3d Cir. 1983) (injunctions despite infringer size)
Califano v. Yamasaki, 442 U.S. 682 (1979) (injunctions must not be more burdensome than necessary)
Grayned v. City of Rockford, 408 U.S. 104 (1972) (fair warning requirement for injunctions)
Apple Inc. v. Psystar Corp., 658 F.3d 1150 (9th Cir. 2011) (injunctive relief can cover non-litigated but similar items to prevent ongoing infringement)
Walt Disney Co. v. Powell, 897 F.2d 565 (D.C. Cir. 1990) (injunction scope beyond litigated works permissible)
United States v. W.T. Grant Co., 345 U.S. 629 (1953) (purpose of injunction is to prevent future violations)