Joe Hand Promotions, Inc. v. Griffith

49 F.4th 1018

JOE HAND PROMOTIONS, INC., Plaintiff-Appellant,

v.James H. GRIFFITH, Jr., dba CJ's Sports Bar; Lisa Lesley, Defendants-Appellees.

No. 21-6088

United States Court of Appeals, Sixth Circuit.

Argued: August 10, 2022

Decided and Filed: September 21, 2022

ARGUED: Jamie King, JAMIE KING, P.C., Kingwood, Texas, for Appellant. John T.D. Bathke, PHILLIPS & BATHKE, P.C., Chicago, Illinois, for Appellees. ON BRIEF: Brian L. Yoakum, EVANS PETREE, PC, Memphis, Tennessee, for Appellant. John T.D. Bathke, PHILLIPS & BATHKE, P.C., Chicago, Illinois, Jonathan LA Phillips, PHILLIPS & BATHKE, P.C., Peoria Heights, Illinois, for Appellees.

Before: CLAY, ROGERS, and STRANCH, Circuit Judges.

CLAY, Circuit Judge.

Plaintiff Joe Hand Promotions, Inc. ("JHP") appeals 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, 17 U.S.C. §§ 106, 501. See Joe Hand Promotions, Inc. v. Griffith , No. 20-cv-382, 2021 WL 4899466, at *5 (E.D. Tenn. Oct. 21, 2021). For the reasons set forth below, we REVERSE the district court's order granting Defendants’ motion for summary judgment and REMAND with instructions to grant Plaintiff's motion for partial summary judgment as to copyright standing and for further proceedings consistent with this opinion.

I. BACKGROUND

A. Factual Background

On August 26, 2017, a world famous boxer, Floyd Mayweather, 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 exhibition 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 up to the Fight, JHP promoted the event, sold commercial licenses to broadcast the event at bars and restaurants, and collected fees from those establishments. JHP charged hefty commercial licensing fees to air the Fight, ranging from $3,700 to $15,700 based on the establishment's occupancy limits.

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 Copyright 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. ) Specifically, 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 Showtime'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, 17 U.S.C. §§ 106, 501.² After discovery, the parties filed cross motions for summary judgment. The district court granted Defendants’ motion after finding that JHP did not own the copyright to the Fight on the day it aired. See Joe Hand Promotions , 2021 WL 4899466, at *2. The district court found that the Copyright Agreement between Showtime purported to give JHP an exclusive right in the copyrighted work retroactively. See id. at *5. However, the district court concluded that such retroactive transfers were essentially worthless. See id. It therefore concluded that the Copyright Agreement merely gave JHP the right to sue for past copyright infringement. See id. at *4–*5. According to the district court, to have a cause of action under Copyright Act, plaintiffs must own some exclusive right beyond the right to sue. Id. at *4 (citing John Wiley & Sons, Inc. v. DRK Photo , 882 F.3d 394 (2d Cir. 2018) ). Believing that Showtime merely gave JHP a right to sue, the district court concluded that JHP did not have a cause of action for copyright infringement because it "did not own the copyright to the [Fight] when it was displayed at [CJ's]." Id. at *2. The court therefore granted Defendants’ motion for summary judgment. Id. at *5. JHP timely appealed and this Court heard oral arguments on August 10, 2022.

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." Fed. R. Civ. P. 56(a). "A dispute of a material fact is genuine so long as ‘the evidence is such that a reasonable jury could return a verdict for the non-moving party.’ " Kirilenko-Ison v. Bd. of Edu. of Danville Indep. Schs. , 974 F.3d 652, 660 (6th Cir. 2020) (quoting Jackson v. VHS Detroit Receiving Hosp., Inc. , 814 F.3d 769, 775 (6th Cir. 2016) ).

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 17 U.S.C. § 501. It provides that "[t]he legal or beneficial owner of an exclusive right under a copyright is entitled ... to institute an action for any infringement of that particular right." Id. § 501(b). Therefore, to sue Defendants for copyright infringement, JHP must own some interest in the copyright. See Bridgeport Music. v. WM Music Corp. , 508 F.3d 394, 398 (6th Cir. 2007) ("Copyright infringement has two elements: ‘(1) ownership of a valid copyright; and (2) copying of constituent elements of the work that are original.’ " (quoting Stromback v. New Line Cinema , 384 F.3d 283, 293 (6th Cir. 2004) )).

The author of a protected work is considered the original owner of a copyright. 17 U.S.C. § 201(a). The owner holds certain "exclusive rights" in the work. Id. § 106. Those "exclusive rights" are listed in § 106 of the Copyright Act, and they include the right to reproduce, distribute, perform, and display the work. Id. There is some dispute over whether the list of exclusive rights extends beyond those enumerated in § 106. Relevant to this appeal, the Second and Ninth Circuits have held that possessing a bare right to sue, without any additional exclusive right, does not amount to ownership of a copyrighted work. See John Wiley , 882 F.3d at 410 ("[T]he [Copyright] Act does not permit a plaintiff assignee to bring a claim for infringement without also having or having had a legal or beneficial ownership in some exclusive right under part of the allegedly...