Adopting Single Co-Owner Rule, 11th Cir. Affirms BMI's Win Over Florida Tavern

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By Tamlin Bason

Nov. 24 — The district court made a number of erroneous chain of title rulings with respect to some plaintiff publishing companies, but the errors were harmless because Broadcast Music Inc. established that it was a co-owner of the copyrights in question, the U.S. Court of Appeals for the Eleventh Circuit held Nov. 21.

The court formally adopted the single co-owner rule established in a 2007 decision by the Second Circuit, holding that BMI's proof that it owned title to the five songs in question—through a license with at least one co-owner of each song—made the erroneous rulings as to the publishing companies' ownership harmless. That rule is supported by the text and legislative history of the Copyright Act, the court said.

Thus, although the district court erroneously determined the chain of title issue in favor of two publishing companies that were also plaintiffs, there was no harm because BMI's interest was sufficient to sustain the action regardless of those rulings, the Eleventh Circuit said. The district court's $16,953 copyright infringement award and its $32,517 attorneys' fees and costs award were accordingly affirmed.

Restaurant Ignored Letters, Calls

The record established that Evie's Tavern Ellenton Inc. ignored numerous cease-and-desist letters and phone calls informing it that it lacked permission to publicly perform various musical compositions. As a result, BMI, along with the purported copyright owners of six compositions, filed suit for copyright infringement.

The U.S. District Court for the Middle District of Florida granted summary judgment of infringement on five of the six asserted songs and ordered the bar and its owner to pay approximately $3,390 in damages for each infringed song.

The district court also awarded the plaintiffs costs and attorneys' fees under Section 505 of the Copyright Act, 17 U.S.C. §505.

On appeal, the defendants argued that the damages and fees awards constituted abuse of discretion. The defendants also argued that the district court erred by finding that the publishing companies, all joined as plaintiffs, owned the copyrights to the compositions at issue.

BMI Owned Copyrights, That Was Enough

“Here, the district court properly granted summary judgment in BMI’s favor on each of the five titles at issue on appeal,” the court said. In a footnote, the court said:

BMI was able to maintain copyright infringement actions for each title by establishing a valid license with at least one co-owner of each song that is a party to this case. Previously, the Eleventh Circuit has not explicitly adopted the rule set forth by the Second Circuit in Davis v. Blige, 505 F.3d 90, 99 (2d Cir. 2007), that a copyright co-owner may maintain and recover in a copyright infringement action without joining other co-owners. We do so now.

The Second Circuit's rule, the court said, accords with Section 501(b), “which states that the court ‘may require' an owner of a copyright to serve notice on and join a person who has or claims an interest in the copyright.” Moreover, the legislative history of the Copyright Act of 1976 suggests that Congress intended for co-owners to be treated as tenants in common under the law, the court said.

“Accordingly, because the district court properly granted summary judgment in BMI’s favor on each title, any error in granting summary judgment to other Appellees was harmless, and the district court’s summary judgment award is affirmed,” the court ruled.

No Abuse

The appeals court spent little time affirming the district court's damages and fees awards, noting that such awards are within a trial court's discretion, and finding no abuse of discretion here.

The court also affirmed the district court's permanent injunction, finding that there was no error in the court's treatment of the factors set forth in EBay Inc. v. MercExchange, LLC, 547 U.S. 388, 78 U.S.P.Q.2d 1577 (2006).

The opinion was written by Jane A. Restani of the U.S. Court of International Trade, sitting by designation. Chief Judge Ed Carnes and Judge Steven D. Merryday of the U.S. District Court for the Middle District of Florida, sitting by designation, joined the opinion.

BMI and the publishers were represented by Frank Robert Jakes of Johnson Pope Bokor Ruppel & Burns LLP, Tampa, Fla. Evie's Tavern was represented by Michael Moran, Sarasota, Fla.

To contact the reporter on this story: Tamlin Bason in Washington at tbason@bna.com

To contact the editor responsible for this story: Tom P. Taylor at ttaylor@bna.com

Full text at http://www.bloomberglaw.com/public/document/Broad_Music_Inc_v_Evies_Tavern_Ellenton_Inc_No_1315871_2014_BL_32/1.