JOE HAND PROMOTIONS, INC., Plаintiff-Appellant, v. JAMES H. GRIFFITH, JR., dba CJ‘s Sports Bar; LISA LESLEY, Defendants-Appellees.
No. 21-6088
UNITED STATES COURT OF APPEALS FOR THE SIXTH CIRCUIT
September 21, 2022
RECOMMENDED FOR PUBLICATION Pursuant to Sixth Circuit I.O.P. 32.1(b) File Name: 22a0217p.06
Appeal from the United States District Court for the Eastern District of Tennessee at Knoxville. No. 3:20-cv-00382—Travis Randall McDonough, District Judge.
Argued: August 10, 2022
Decided and Filed: September 21, 2022
Before: CLAY, ROGERS, and STRANCH, Circuit Judges.
COUNSEL
ARGUED: Jamie
OPINION
CLAY, Circuit Judge. Plaintiff Joe Hand Promotions, Inc. (“JHP“) аppeals the district court‘s grant of summary judgment in favor of Defendants James H. Griffith and Lisa Lesley (collectively, “Defendants“) in this copyright infringement suit brought under the Copyright Act,
I. BACKGROUND
A. Factual Background
On August 26, 2017, a world famous boxer, Floyd Maywеather, and a famous mixed martial arts fighter, Conor McGregor, entered the ring to face one another in what has become one of the most legendary fights of all time (“the Fight“). See John Eligon & Victor Mather, Mayweather v. McGregor: Highlights From Every Round, N.Y. Times, Aug. 26, 2017. Showtime, Inc. produced the Fight, and it allowed individual viewers to livestream the Fight from Showtime‘s website. Joe Hand Promotions, Inc., 2021 WL 4899466, at *1. Showtime charged individuals $99.99 for these personal use licenses (i.e., to watch the Fight on a personal device in a non-commercial setting). Showtime also partnered with event promoters to issue commercial streaming licenses to public establishments (i.e., bars, movie theaters, and restaurants). On June 20, 2017, Showtime contracted with Mayweather Promotions, LLC (“Mayweather“) to “arrange for, present and promote” the Fight on August 26, 2017. (Distribution Agreement, R. 40-4, Page ID #348.) In this contract (the “Distribution Agreement“), Showtime “grant[ed] to [Mayweather] exclusively, the right to exhibit and distribute, and authorize the exhibitiоn and distribution of, the [Fight] in the Territory live via the Internet.” (Id. at Page ID #357.) Defendants erroneously denied the existence of this contract between Showtime and Mayweather. (See Defs. Br. at 14 (“[T]here are no agreements in the record between Showtime and [Mayweather].“).)1
Mayweather, in turn, enlisted smaller distributors to go out and issue commercial licenses and collect fees. JHP was one of these distributors. On August 1, 2017, JHP entered into a Commercial Licensing Agreement with Mayweather. In that contract, Mayweather gave JHP “the sole and exclusive third party license . . . to distribute . . . and authorize the public exhibition of the [Fight]” in a designated geographic area. (Id.) Accordingly, in the weeks leading
The Fight was not registered as a copyrighted work when it first aired on August 26, 2017. Around two months later, Showtime applied to register its copyright in the Fight, which the United States Copyright Office issued on October 26, 2017 (the “Copyright Registration“). The Copyright Registration listed Showtime as the sole author and claimant of the copyright. On November 21, 2017, three months after the Fight but less than a month after the Cоpyright Registration, Showtime signed a contract with JHP (the “Copyright Agreement“). Although not a party to the Copyright Agreement, Mayweather also signed the agreement. The Copyright Agreement gave JHP “the exclusive right to distribute and publicly perform the [Fight] live on August 26, 2017.” (Copyright Agreement, R. 40-2, Page ID #262.) It further gave JHP “the exclusive right . . . to take enforcement actions with respect to any unauthorized exploitation of the Commercial Rights in the [Fight].” (Id.) Specificаlly, Showtime gave JHP “the right and standing, as exclusive assignee, to assert independent claims, solely in the name of JH[P], for copyright infringement under the copyright laws of the United States . . . solely relating to the unauthorized exploitation of the Commercial Rights in the [Fight].” (Id. at Page ID #263.) That is, Showtime gave JHP the exclusive right to sue anyone who livestreamed the Fight on August 26, 2017, without paying the required licensing fee. Accordingly, JHP began suing several restaurants and bars that aired the Fight without paying. See, e.g., Joe Hand Promotions, 2021 WL 4899466, at *1.
At this stage, Defendants do not dispute that they livestreamed the Fight on August 26, 2017, on a TV screen at their bar, CJ‘s Bar & Grill (“CJ‘s“), without purchasing a commercial license. As a commercial establishment, CJ‘s was required to pay a fee based on its occupancy limits in order to legally air the Fight on the bar‘s TVs. Rather than pay for a commercial license, Defendants paid around $99 for a personal license using Shоwtime‘s website. Defendants then used an HDMI cable to connect a personal device to the TV at CJ‘s and broadcast the Fight throughout the bar. Defendants advertised the event on CJ‘s Facebook page, and they charged patrons $6 for entry to the bar to watch the Fight.
B. Procedural Background
After discovering that Defendants livestreamed the Fight without paying for a commercial license, JHP sued them for copyright infringement under the Copyright Act,
II. DISCUSSION
A. Standard of Review
“The Court reviews a district court‘s grant of summary judgment de novo.” Clabo v. Johnson & Johnson Health Care Sys., Inc., 982 F.3d 989, 992 (6th Cir. 2020) (citing Rocheleau v. Elder Living Const., LLC, 814 F.3d 398, 400 (6th Cir. 2016)). Summary judgment is proper “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.”
B. Analysis
The issue in this appeal is whether JHP has a cause of action against Defendants for livestreaming the Fight without a commercial license. The Copyright Act creates a federal cause of action for copyright infringement. See
The author of a protected work is considered the original owner of a copyright.
The exclusive rights in a copyrighted work are freely alienable. “[T]he ownership
Thus, copyright ownership operates like the common analogy of a bundle of sticks. The author, as the original owner, holds all of the exclusive rights in the protected work. Id.
In addition to the ownership requirement, the Copyright Act includes a few other limitations on who can sue for copyright infringement. It limits the right to sue to those who owned the exclusive right at the time of the infringement.
However, the Copyright Act extends special treatment to live broadcasts. See id.
With this legal framework in mind, we turn to the question now before us: did the November 21, 2017, Copyright Agreement between Showtime and JHP give JHP the right to sue for copyright infringements occurring on August 26, 2017. We conclude that it did.
Defendants argue that JHP did not own any exclusive rights in the Fight on the day it aired. They recognize that the Copyright Agreement purportedly transferred “the exclusive right to distribute and publicly perform” the Fight live on August 26, 2017. (Copyright Agreement, R.40-2, Page
In response, JHP argues that the plain language of the Copyright Agreement retroactively gave JHP exclusive rights in the live broadcast on August 26, 2017. To the extent that the language of the Copyright Agreement is unclear, it argues that Showtime intended to retroactively give JHP the exclusive right to distribute the Fight on the day it aired as well as the right to sue violators for copyright infringement. As evidence of this intent, JHP points to the Commerсial Licensing Agreement between Mayweather and JHP on August 1, 2017. JHP does not have much to say about whether the Copyright Act allows such a retroactive transfer of exclusive rights.
These arguments touch on complicated questions of copyright law including when copyright protection in a live broadcast first arises, whether or how an author may transfer exclusive rights in a live event before registering a copyright, and whether an authоr can retroactively transfer exclusive rights. However, we do not need to get into these issues to resolve this case. We conclude that the Copyright Agreement gave JHP an enforceable right to sue Defendants because it formalized a series of earlier agreements under which JHP went about exclusively licensing and distributing the Fight to commercial establishments in a specific region before the Fight aired.
The earlier agreements between Showtime, Mayweather, and JHP gave JHP an exclusive license to distribute the streaming rights to commercial establishments to air the Fight live on August 26, 2017. On June 20, 2017, Showtime and Mayweather signed the Distribution Agreement. In that agreement, Showtime “grant[ed] to [Mayweather] exclusively, the right to exhibit and distribute, and authorize the exhibition and distribution of, the [Fight] in the Territory live via the Internet.” (Distribution Agreement, R. 40-4, Page ID #357.) The Distribution Agreement thus gave Mayweather one of Showtime‘s sticks from its bundle, making Mаyweather an “owner” under the Copyright Act. See
In the lead up to the Fight, even without the benefit of a registered copyright, these three entities—Showtime, Mayweather, and JHP—went about carving out their respective rights. These rights, including the exclusive right to distribute the Fight to commercial establishments, were outlined in the Distribution Agreement and the Commercial Licensing Agreement, both of which took effect before the Fight aired on August 26, 2017. However, the question remains whether the November 21, 2017, Copyright Agreement was intended to bestow some new and additional right to JHP, or whether it merely reiterated and reaffirmed the parties’ understandings of their preexisting rights with the added benefit of a newly registered copyright. The Copyright Agreement does not expressly answer this question. Nоwhere does it state that it intended to formalize existing arrangements, nor does it mention the Distribution Agreement or the Commercial Licensing Agreement. However, the earlier agreements provide necessary context for the Copyright Agreement. See Individual Healthcare Specialists, Inc. v. BlueCross BlueShield of Tenn., Inc., 566 S.W.3d 671, 694 (Tenn. 2019).4 And, because none of these agreements conflict with one another, we may turn to them to discern Showtime and JHP‘s intent when entering into the later Copyright Agreement. See id. at 696. Viewing these agreements together, the Copyright Agreement merely intended to reiterate that JHP‘s existing exclusive license in the live Fight remained intact even in the wake of Showtime‘s formal Copyright Registration.
Unlike the extensive terms and conditions found in the earlier Distribution Agreement and Commercial Licensing Agreement, which numbered 36 and 15 pages respectively, the Copyright Agreement was barely three pages long. Outside of the definitions and some boilerplate provisions, it had two substantive provisions which provided that: (1) “JH[P] has been granted the sole and exclusive Commercial Rights . . . in the Territory in the [Fight], under the copyright laws of the United States” with Commercial Rights defined as the “exclusive right to distribute and publicly perform the [Fight] live on August 26, 2017 to Commercial Premises in the Territory;” and (2) “JH[P] has the exclusive
Wе conclude that, by using a barebone contract signed by all of the parties involved in the days leading up to the Fight, it is clear that Showtime and JHP intended the Copyright Agreement to formalize existing rights in the wake of Showtime‘s newly obtained Copyright Registration. In effect, everyone involved came together after the Copyright Registration and concluded, in the Copyright Agreement, that the new registration did not change anything. The status of the cоpyright may have changed on October 26, 2017, but the nature of the exclusive rights and interests of these three parties remained untouched. If the Copyright Agreement was an entirely new transfer of rights from Showtime to JHP, there would be no need for Mayweather to agree. The Copyright Agreement only makes sense as an extension of the earlier agreements.
Defendants’ position is seemingly that the Copyright Agreement was a standalone transfer of rights wholly apart from the earlier agreements. They argue that the Copyright Agreement was, in essence, a sham because it purported to transfer an exclusive right in a live event that had already happened. The district court agreed. See Joe Hand Promotions, 2021 WL 4899466, at *5 (“The exclusive right to perform the [Fight] live is utterly meaningless once the [Fight] has already occurred, and, thus, can never be performed ‘live’ again.“). But the Copyright Registration listed Showtime as the sole author and claimant of the copyrighted work, and copyright ownership “vests initially in the author . . . of the work.”
Becаuse we conclude that the Copyright Agreement merely reiterated the existing distribution of rights, we need not reach the bulk of the parties’ arguments. The parties focus on whether the Copyright Agreement could legally transfer an exclusive right retroactively. Even if such a retroactive transfer could theoretically be legally valid, Defendants argue that the Copyright Agreement, as a factual matter, was not intended to be retroactive. Because the Copyright Agreement merely codified earlier transfers in the wake of the post hoc Copyright Registration, there is no retroactivity issue. By extension, we need not address Defendants’ arguments that the Copyright Agreement gave JHP a bare right to sue, which they claim is at odds with the Second and Ninth Circuits’ interpretation of the Copyright Act. The Copyright Agreement simply reaffirmed that JHP held an exclusive right to distribute the Fight to commerciаl establishments in advance of the live Fight. Even though the Copyright Agreement was signed at a later date, JHP acted as though it held the exclusive right well in advance of the Fight. Indeed, it advertised the Fight, distributed the livestream, and collected fees from commercial establishments
In sum, JHP owned the exclusive right to distribute and publicly display the Fight on the day it aired, August 26, 2017. The copyright was registered within three months of the alleged infringement, as required to sue for copyright infringements in live telecasts.
III. CONCLUSION
For these reasons, we REVERSE the district court‘s order granting Defendants’ motion for summary judgmеnt and REMAND with instructions to grant Plaintiff‘s motion for partial summary judgment on the issue of copyright standing and for further proceedings consistent with this opinion.