Free Response to Motion - District Court of Arizona - Arizona

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Garrick L. Gallagher/Bar No. 009980 Debora L. Verdier/Bar No. 018676 SANDERS & PARKS, P.C. 1300 Abacus Towers 3030 North Third Street Phoenix, AZ 85012-3099 Telephone: (602) 532-5600 Facsimile: (602) 532-5700 [email protected] [email protected] Attorneys for DEFENDANT Tempe Union High School District UNITED STATES DISTRICT COURT DISTRICT OF ARIZONA PHOENIX DIVISION CV04 0341 PHX RCB THE DISTRICT'S RESPONSE TO PLAINTIFF'S MOTION FOR SUMMARY JUDGMENT ON DEFENDANTS' AFFIRMATIVE DEFENSES UNDER 17 U.S.C. § 412 AND CROSS MOTION FOR SUMMARY JUDGMENT PURSUANT TO 17 U.S.C. § 412 ON PLAINTIFF'S REQUEST FOR STATUTORY DAMAGES AND ATTORNEYS' FEES (Assigned to the Honorable Robert C. Broomfield)

JOHAN DE MEIJ, d/b/a AMSTEL MUSIC, 12 BV, 13 14 v. 15 TEMPE UNION HIGH SCHOOL DISTRICT, CORONA DEL SOL BAND 16 BOOSTERS, GREAT VIDEO PRODUCTIONS, ARIZONA MUSIC 17 EDUCATORS ASSOC., ARIZONA ACADEMY FOR THE PERFORMING 18 ARTS, INC., MARK D. RICHARDSON, WILLIAM J. RICHARDSON and CHRIS 19 EVANS, 20 21 22 23 24 25 26 Defendants Plaintiff,

Defendant Tempe Union High School District ("the District") submits this response to Plaintiff's Motion for Summary Judgment on Defendants Tempe Union High School District and Arizona Academy for the Performing Arts' Affirmative Defenses Under 17 U.S.C. § 412 ("Summary Judgment Motion") in which Plaintiff seeks summary judgment on the District's Section 412 defense based on the improper assertion that "the acts of infringement complained of commenced after Plaintiff's registration of
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copyright." (Summary Judgment Motion, p. 2 (emphasis in original).) Plaintiff's Motion for Summary Judgment, which leaves out significant and material facts and ignores longstanding legal principle relating to the Section 412 defense, should be denied. In this case, Plaintiff seeks recovery of statutory damages and attorneys' fees, despite the fact that Plaintiff failed to register the Composition for almost eight (8) years after its first publication and the alleged acts of infringement are traceable to activity that commenced before Plaintiff's registration. Thus, Section 412 bars Plaintiff's entitlement to statutory damages and attorneys' fees for any of the alleged infringements by the District. The District agrees with Plaintiff, however, that there exist no disputed issues of material fact on this issue and, thus, submits this cross motion for summary judgment. This response and cross motion is supported by the District's Controverting Statement of Facts and Separate Statement of Facts ("CSOF"), which is being submitted simultaneously herewith. The District also incorporates herein by reference the response and cross motion filed by co-defendant Arizona Academy for the Performing Arts and its supporting statement of facts. Plaintiff's Motion for Summary Judgment should be denied and the District's cross motion should be granted because there exist no disputed issues of material fact that the conduct that is the subject of Plaintiff's copyright claims commenced prior to Plaintiff's untimely registration of the work at issue. Factual Background Plaintiff's musical work, "The Big Apple" (hereinafter referred to as "the Composition"), was first published on April 1, 1994. (CSOF ¶ 4.) However, Plaintiff waited almost eight (8) years to register the Composition with the United States Copyright Office. (CSOF ¶ 5.) The effective date of Plaintiff's registration of the Composition was July 6, 2002. (Plaintiff's Statement of Facts in Support of His Motion for Summary Judgment on Defendant Tempe Union High School District and Arizona Academy for the Performing Arts' Affirmative Defenses Under 17 U.S.C. § 412 ("SOF") ¶ 1 and CSOF ¶ 1.)

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Approximately three (3) months prior to the effective date of Plaintiff's registration of the Composition (on April 19, 2002), District employee, Mark Richardson, purchased the "study score" of the Composition. (CSOF ¶ 7.) Shortly after receiving the study score, Mr. Richardson commenced working on arranging the Composition so that it could be performed by the Corona Del Sol High School Marching Band ("the Marching Band") during the Fall of 2002. (CSOF ¶ 8.) By the first week of June 2002, Mr. Richardson had distributed the individual musical parts of the Composition to the students and the Marching Band had begun rehearsing the Composition during its biweekly sectionals. (CSOF ¶ 9.) The Marching Band performed the arranged

Composition publicly during the half time of high school football games and at a handful of marching band festivals from September 5, 2002 to December 19, 2002. (SOF ¶ 2.) Plaintiff's Allegations of Copyright Infringement Plaintiff seeks damages under 17 U.S.C. Section 101, et seq., for infringement of Plaintiff's copyright for allegedly "performing a custom arrangement of the Composition without first obtaining a performance license." (Second Amended Complaint, Count III, ¶ 35.) Plaintiff also seeks copyright damages for contributory infringement of Plaintiff's copyrights in connection with the alleged unauthorized recording of the performances referenced in Count III. (Second Amended Complaint, Count IX, ¶ 48.) Included in Count IX, Plaintiff alleges that District employee, Bill Richardson "selected the Composition to be recorded." (Id.) Finally, Plaintiff seeks copyright damages for

vicarious infringement of the Plaintiff's copyrights in connection with the alleged unauthorized recording of the one of the performances referenced in Count III.1 (Second Amended Complaint, Count X, ¶ 50.) For his damages, Plaintiff prays for statutory damages and attorneys fees. Plaintiff also prays for actual damages in an amount to be determined at trial. (Second Amended Complaint, pp. 16-17.)
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Plaintiff has also brought claims against the District for violation of his due process rights (Count IV) and for unfair competition/palming off (Count V) in connection with the alleged copyright infringement. Each of these claims is the subject of pending dispositive motions.

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Because Plaintiff failed to timely register the Composition at issue within three months after its initial publication and because the first in the series of alleged acts of infringement occurred prior to the effective date of Plaintiff's registration, Plaintiff's Motion for Summary Judgment should be denied and the District's cross motion for summary judgment should be granted. I. PLAINTIFF IS NOT ENTITLED TO STATUTORY DAMAGES OR ATTORNEYS' FEES ON COUNTS III, IX AND X AGAINST THE DISTRICT BECAUSE THE ALLEGED INFRINGEMENT COMMENCED PRIOR TO PLAINTIFF'S REGISTRATION OF THE COMPOSITION. Under Section 412 a copyright owner is not permitted to recover statutory damages or attorneys' fees for copyright infringement when: "(1) the copyright was registered more than three months after the work was first published, and (2) the infringing activity commenced after the date of the first publication and before the effective date of the registration of the work." Parfums Givenchy, Inc. v. C&C Beauty Sales, Inc., 832 F. Supp. 1378, 1393 (C.D. Cal. 1993). Thus, if a copyright holder registers the work, but waits more than three months after first publication to do so, the copyright holder is not permitted to statutory damages and attorneys' fees for any infringements that commenced prior to that late registration. Id. Congress perceived statutory damages and attorneys' fees under the Copyright Act as "special" or "extraordinary" remedies, which should only be permitted where a copyright holder has timely registered the work. Mason v. Montgomery Data, Inc., 967 F.2d 135, 144 (5th Cir. 1992) ("Mason II"). The express goal of Congress in adopting Section 412 was to encourage copyright holders to expeditiously register their works. Id.; see also Mason v. Montgomery Data, Inc., 741 F. Supp. 1282, 1286 (S.D. Tex. 1990) ("Mason I") ("Congress clearly recognized a need for registration and sought to encourage prompt registration be denying statutory damages in cases of belated registration.") (emphasis added); see also Parfums Givenchy, Inc. v. C&C Beauty Sales, Inc., 832 F. Supp. 1378, 1395 (C.D. Cal. 1993). "The only exception Congress provided was to allow for a [three month] grace period to take care of newsworthy or suddenly

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popular works which could be infringed before the copyright owner has a reasonable opportunity to register his claim." Mason I, 741 F. Supp. at 1286. Numerous courts have defined "commencement of infringement" to mean when the first act of infringement in a series of on-going, discrete and separate infringements occurs. See, e.g., Johnson v. Univ. of Virginia, 606 F. Supp. 321, 325 (W.D. Va. 1985); see also Mason I, 741 F. Supp. at 1286; Parfums Givenchy, Inc., 832 F. Supp. at 1395; CD Law, Inc. v. Lawworks, Inc., 1994 U.S. Dist. LEXIS 20776, *16-17 (W.D. Wa. December 21, 1994); Ez-Tixz, Inc. v. Hit-Tix, Inc., 919 F. Supp. 728, 736 (S.D.N.Y. 1996); Johnson v. Jones, 149 F.3d 494, 505-507 (6th Cir. 1998) ("Jones"); Do It Best Corp. v. Passport Software, Inc., 2005 U.S. Dist. LEXIS 7213, *61-65 (N.D. Ill. March 31, 2005). There may be "multiple" acts of alleged infringement entitling a copyright holder to statutory damages; however, for purposes of Section 412, these same "multiple acts" are perceived as a "series" of continuing acts commencing with the initial act. Mason I, 741 F. Supp. at 1285-86 (declining to apply the doctrine of multiple infringements to Section 412 defense). Thus, under Section 412, infringement does not "commence" with each new act in an ongoing series of alleged infringements, but rather, the infringement "commences" with the first act of alleged infringement in a series of acts. Jones, 149 F.3d at 506. It is this long-standing and well-reasoned legal principle that Plaintiff chooses to ignore in his Motion for Summary Judgment. Plaintiff does not and cannot dispute that he failed to register the Composition within three months of initial publication. (CSOF ¶¶ 4-5.) Indeed, Plaintiff cannot even suggest he registered the Composition within three years of initial publication. (Id.) Instead, Plaintiff concedes he waited several years after initial publication to register the Composition. (CSOF ¶ 5.)2 Plaintiff should not be rewarded by entitlement to special or

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When asked the basis for the significant delay in registering the Composition with the United States Copyright Office, Plaintiff asserted that "like many other European composers" he did not believe registration "was necessary." (CSOF ¶ 6.) The District is aware of no legal authority that would

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extraordinary damages in the face of his significant delay in protecting the Composition. The only remaining issue is whether the alleged acts of infringement "commenced" prior to July 6, 2002. They did. Mark Richardson began arranging the Composition well before July 6, 2002 and, indeed, the students were rehearsing the arranged Composition by early June 2002. (CSOF ¶ 9.) It is undisputed that the actual performances occurred after July 6, 2002 (CSOF ¶ 1); however, this undisputed fact is not material and does not change the reality that the initial or first acts of alleged infringement occurred prior to Plaintiff's significantly-delayed registration of the Composition. Thus, Section 412 bars Plaintiff from recovering statutory damages or attorneys' fees.3 CONCLUSION Based on the foregoing, Plaintiff's Motion for Summary Judgment should be denied and the District's Cross Motion for Summary Judgment should be granted. RESPECTFULLY SUBMITTED this 19th day of August, 2005. SANDERS & PARKS, P.C.

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s/ Debora L. Verdier Garrick L. Gallagher Debora L. Verdier 1300 Abacus Towers 3030 North Third Street Phoenix, Arizona 85012-3099 Attorneys for DEFENDANT Tempe Union High School District

support Plaintiff's ignorance of the U.S. Copyright laws serving as an exception to Section 412. Plaintiff has cited no such authority. Plaintiff's Motion for Summary Judgment fails to address the other two claims for copyright infringement raised against the District, i.e., Counts IX and X. For its cross motion, the District asserts that it is undisputed that the recordings of the performances of the Composition referenced in Counts IX and X came after Plaintiff's registration of the Composition. However, for the same reasons outlined herein, the District is entitled to judgment as a matter of law that Section 412 prohibits Plaintiff from recovering statutory damages and attorneys' fees from the District for Counts IX and X, as well as Count III.

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CERTIFICATE OF SERVICE I hereby certify that on August 19, 2005, I electronically transmitted the attached documents to the Clerk's Office using the CM/ECF system for filing and transmittal of a Notice of Electronic Filing to the following CM/ECF registrants: Martin P. Clare, Esq. CAMPBELL YOST CLARE & NORELL, P.C. 101 North First Avenue, Suite 2500 Phoenix, AZ 85003-0001 Attorneys for Defendants Richardsons C. Mark Kittredge, Esq. Scott S. Minder, Esq. PERKINS COIE BROWN & BAIN, PA 2901 N. Central Avenue, 20th Floor Post Office Box 400 Phoenix, AZ 85001-0400 Attorneys for Defendant Arizona Academy for the Performing Arts, Inc. Francis G. Fanning, Esq. LAW OFFICES OF FRANCIS G. FANNING 500 E. Southern Ave., Suite B Tempe, AZ 85282-5211 Attorney for Defendant Corona del Sol Band Boosters I hereby certify that on August 19, 2005, I served the attached document by hand delivery to: The Honorable Robert C. Broomfield United States District Court Sandra Day O'Connor U.S. Courthouse 401 W. Washington Street, Suite 216, SPC 61 Phoenix, AZ 85003-2118

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I hereby certify that on August 19, 2005, I served the attached document by first class mail on the following, who are not registered participants of the CM/ECF System: R. Buck McKinney, Esq. P.O. Box 6231 Austin, Texas 79762-6231 Attorney for Plaintiff Thomas K. Irvine, Esq. IRVINE LAW FIRM, P.A. 1419 North Third Street, Suite 100 Phoenix, AZ 85004 Attorneys for Defendant Arizona Music Educators Assoc. J. Gregory Osborne, Esq. TOLMAN & OSBORNE, P.C. 1920 E. Southern Avenue, Suite 104 Tempe, AZ 85282 Attorneys for Defendant Chris Evans Arizona Music Educators Association c/o John C. Faris 4312 West Royal Palm Road Glendale, AZ 85032-6625

s/ Peggy Bailey

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