Published in Landslide, Volume 15, Number 3, 2023. © 2023 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion
thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the
American Bar Association.
54
Copyrights
C ight Act Treats Broadcast Rights Dierently
for Eligibility to Sue
33
Joe Hand Promotions, Inc. v. Grifth, 49 F.4th 1018, 2022
U.S.P.Q.2d 861 (6th Cir. 2022). Boxer Floyd Mayweather and
mixed martial arts ghter Connor McGregor faced off against
each other in an overhyped and underwhelming ght. Showtime
produced the ght and permitted viewers to live stream the event
from its website. Showtime purported to have contracted with
Mayweather Promotions to present and promote the ght and
exclusively exhibit and distribute the ght on the internet. The
defendants disputed the existence of that contract.
Mayweather contracted with smaller distributors to issue
commercial licenses for the ght and collect fees, including with
the licensee Joe Hand Promotions (JHP). Mayweather gave JHP
an exclusive license to distribute the ght. In the weeks leading
up to the ght, JHP promoted the event, sold commercial licenses
to broadcast the event at bars and restaurants, and collected fees
from those establishments. The ght was not registered with the
Copyright Ofce when it rst aired but was later registered by
Showtime. Showtime subsequently entered into a copyright agree
-
ment with JHP licensing the use of the ght, including the right to
sue for the unauthorized live streaming of the ght. As a result, JHP
started suing several restaurants and bars for copyright infringe-
ment. The defendants live streamed the ght at a bar without
paying a licensing fee. JHP sued them. The district court granted
the defendants’ summary judgment motion on the basis that JHP
did not own the copyright to the ght on the day it aired. JHP
appealed the decision.
The question was whether JHP had a cause of action against
the defendants for streaming the ght without a license. Under
the Copyright Act, to sue for copyright infringement, JHP must
have owned some interest in the copyright. The Second and Ninth
Circuits have held that merely possessing a right to sue, without
anything else, does not amount to ownership of a copyrighted
work. The Sixth Circuit also discussed the general principle that
copyrights are made up of a bundle of rights, and each indi-
vidual right may be separately transferred or assigned without
the rest. Noteworthy though is that the Copyright Act provides
special treatment to live broadcasts. When the copyrighted work
consists of sounds, images, or both, the rst xation of which
is made simultaneously with its transmission (i.e., the work is
broadcasted), then the Copyright Act permits an owner to sue for
infringement of an unregistered copyright so long as the owner
registers the copyright within three months of the live broad-
cast. The Sixth Circuit concluded that the copyright agreement
between Showtime and JHP gave JHP an enforceable right to
sue the defendants for infringement because it formalized earlier
agreements under which JHP licensed and distributed the ght
before it aired.
Such earlier agreements gave JHP an exclusive license to
distribute and stream the ght live on the air date. In particular,
Showtime granted Mayweather the exclusive right to distrib-
ute the ght via a distribution agreement, and Mayweather in
turn granted JHP an exclusive license to distribute the ght. The
exclusive right transferred to JHP was a right included in the
bundle of rights comprising the copyright. Notably, the Copy-
right Act denes exclusive rights to include the rights to display
and perform the work publicly. The Sixth Circuit found that it
was the clear intentions of the parties to transfer the exclusive
right to distribute the ght.
As a result, the Sixth Circuit held that JHP owned the exclusive
right to distribute and publicly display the ght and the copyright
was registered within three months of the alleged infringement,
which was sufcient to bring a claim for infringement. Thus, JHP
had a cause of action against the defendants.
Unauthorized Use for News Reporting Purposes Is
Not Always Fair Use
McGucken v. Pub Ocean Ltd., 42 F.4th 1149, 2022 U.S.P.Q.2d
727 (9th Cir. 2022). Photographer Elliot McGucken captured
a series of photographs of a lake formed on the desert oor in
Death Valley in 2019. McGucken licensed his photos to a number
of websites for use in articles about the lake. Digital publisher Pub
Ocean posted an article about the lake using several of McGucken’s
photos without permission or a license. McGucken sued Pub Ocean
for copyright infringement. Pub Ocean claimed a defense of fair use.
McGucken led a summary judgment motion focused on the fair use
defense, and the district court granted summary judgment in favor
of Pub Ocean on the grounds that the use of the photos was entitled
to the fair use defense. The Ninth Circuit reversed the district court’s
holding and directed the district court to enter summary judgment
for McGucken on the fair use issue.
In making its decision, the Ninth Circuit weighed the four
nonexhaustive fair use factors set forth in the Copyright Act: (1)
the purpose and character of the use, (2) the nat ure of the copy-
righted work, (3) the amount and substantiality of the portion
used in relation to the whole, and (4) the effect of the use upon
the potential market for or the value of the work.
With respect to the rst factor, the Ninth Circuit found that
Pub Ocean’s use was commercial and did not meaningfully trans-
form the photos. Pub Ocean’s primary argument was that its
article was transformative because it used the photos within a
broader context of what was presented in the article itself. The
Ninth Circuit disagreed with Pub Ocean and concluded that it
did not make transformative use of McGucken’s photos. The fact
John C. Gatz is a member of the firm Nixon Peabody LLP in
Chicago, Illinois. Column contributors include the following
writers: Copyrights: Jenni Psihoules, Nixon Peabody LLP;
and Mark R. Anderson, Actuate Law LLC. Patents: Cynthia K.
Barnett, Johnson & Johnson; R. Trevor Carter and Andrew M.
McCoy, Faegre Drinker Biddle & Reath LLP; Robert W. (Bill)
Mason, Southwest Research Institute; and Angelo Christopher,
Nixon Peabody LLP. Trade Secrets: R. Mark Halligan,
FisherBroyles LLP. Trademarks: Elizabeth W. Baio, Nixon
Peabody LLP; and Amy L. Sierocki, Blumenfield & Shere LLP.
John C. Gatz
DECISIONS IN BRIEF
