`JOE HAND PRODUCTIONS, INC.,
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`Plaintiff,
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`v.
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`JEFFREY C. DUBOIS, individually, and
`as officer, director, shareholder, member,
`and/or principal of DD2, LLC., d/b/a
`Lucky Horseshoe Saloon, and DD2, LLC,
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`Defendants.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF ALABAMA
`SOUTHERN DIVISION
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`) CIVIL ACT. NO. 1:18-cv-496-TFM-MU
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`MEMORANDUM OPINION AND ORDER
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`Case 1:18-cv-00496-TFM-MU Document 53 Filed 07/27/20 Page 1 of 10 PageID #: 317
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`Now pending before the Court is Plaintiff’s Amended Motion for Summary Judgment (Doc.
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`35, filed November 7, 2019). The Court has carefully reviewed the pleadings, motion, documents
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`filed in the case, and relevant law, and it is ripe for review. For the reasons discussed below, the
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`motion is GRANTED in part and DENIED in part.
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`I.
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`JURISDICTION
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`The Plaintiff, Joe Hand Productions, Inc. (“JHP” or “Plaintiff”), asserts claims pursuant to
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`28 U.S.C. § 1331 (federal question jurisdiction) against DD2, LLC, d/b/a/ Lucky Horseshoe
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`Saloon (“DD2”), and Jeffrey C. Dubois, individually and as sole member of DD2 (“Dubois”)
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`(collectively, “Defendants”). Plaintiff alleges violations of the Copyright Act of the United States,
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`17 U.S.C. § 101, et seq., and the Communications Act of 1934, as amended, 47 U.S.C. §§ 553,
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`605. No party contests either subject matter or personal jurisdiction and adequate support exists
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`for both.
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`II.
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`BACKGROUND AND PROCEDURAL HISTORY
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`Plaintiff in this case is a Pennsylvania-based corporation that licenses and distributes
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`sporting and entertainment programming for commercial purposes to bars, restaurants, clubhouses,
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`and other non-residential establishments. In the course of its business, Plaintiff purchased and
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`retained the commercial exhibition rights to the planned August 26, 2017 Floyd Mayweather, Jr.,
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`vs. Conor McGregor prizefight, including all undercard bouts and the main event (collectively,
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`“the Fight”). Under the contracted arrangement, JHP then sub-leased to bars, nightclubs, casinos,
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`restaurants, and other commercial establishments the right to exhibit the Fight to patrons,
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`customers, members, and/or guests in exchange for a commercial sublicensing fee based on the
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`capacity of the establishment. In its Complaint, JHP contends that Defendants, owners of the
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`Lucky Horseshoe Saloon in Fairhope, Alabama (“Lucky Horseshoe”), exhibited the Fight without
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`permission or payment of the commercial licensing fee to JHP.
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`Plaintiff initiated this lawsuit on November 28, 2018, asserting two causes of action: (1)
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`satellite and/or cable piracy, in violation of either 47 U.S.C. § 553 (Unauthorized Reception of
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`Cable Service) or 47 U.S.C. § 605 (Unauthorized Publication of Communications); and (2)
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`copyright infringement, in violation of 17 U.S.C. § 501. From the lawsuit, Plaintiff seeks statutory
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`damages plus interest, costs, and attorney fees.
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`Plaintiff has filed an Amended Motion for Summary Judgment, asking the Court to grant
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`summary judgment on the second count of copyright infringement. Doc. 35. Plaintiff does not
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`seek summary judgment as to Count 1. Defendants failed to file a response to the Amended Motion
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`for Summary Judgment by the Court-appointed deadline.1 Moreover, Defendants have had ample
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`1 Indeed, substantial time has passed since the response deadline, and Defendants have taken no
`action to remedy their failure to respond. The Court notes that, during the pendency of Plaintiff’s
`Amended Motion for Summary Judgment, counsel for Defendants otherwise continued to litigate
`this case, filing documents with the Court unrelated to the summary judgment motion and
`appearing for status conferences. The Magistrate Judge assigned to the case reminded Defendants
`during two (2) December 2019 status conferences of the pendency of the summary judgment
`motion and Defendants’ failure to respond to it. Thus, it is clear to the Court that counsel is aware
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`opportunity since that time to seek the Court’s leave to file an out-of-time response or take other
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`appropriate action. None having been taken, the Court finds Plaintiff’s Amended Motion for
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`Summary Judgment is ripe for review.
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`III.
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`STANDARD OF REVIEW
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`“The court shall grant summary judgment if the movant shows that there is no genuine
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`dispute as to any material fact and the movant is entitled to judgment as a matter of law.” FED. R.
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`CIV. P. 56(). A factual dispute alone is not enough to defeat a properly pleaded motion for
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`summary judgment; only the existence of a genuine issue of material fact will preclude a grant of
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`summary judgment. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S. Ct. 2505, 2510,
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`91 L. Ed. 2d 202 (1986). “[T]he substantive law will identify which facts are material.” Id. at
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`248, 106 S. Ct. at 2510. At the summary judgment stage, the court does not “weigh the evidence
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`and determine the truth of the matter,” but merely “determine[s] whether there is a genuine issue
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`for trial.” Id. at 249, 106 S. Ct. at 2511.
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`The moving party bears the initial burden of showing the court, by reference to materials
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`on file, that there are no genuine issues of material fact that should be decided at trial. Celotex
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`Corp. v. Catrett, 477 U.S. 317, 323, 106 S. Ct. 2548, 2553, 91 L. Ed. 2d 265 (1986). “When a
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`moving party has discharged its burden, the non-moving party must then ‘go beyond the
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`pleadings,’ and by its own affidavits, or by ‘depositions, answers to interrogatories, and admissions
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`on file,’ designate specific facts showing that there is a genuine issue for trial.” Jeffery v. Sarasota
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`White Sox, Inc., 64 F.3d 590, 593-94 (11th Cir. 1995) (citing Celotex, 477 U.S. at 324, 106 S. Ct.
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`at 2553). The court must view facts and draw all reasonable inferences in favor of the nonmoving
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`of the summary judgment motion and the Court’s Order (Doc. 38) setting a deadline for
`Defendants’ response to the motion.
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`party. Moore v. Reese, 637 F.3d 1220, 1231 (11th Cir. 2011) (citing Rosario v. Am. Corrective
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`Counseling Servs., Inc., 506 F.3d 1039, 1043 (11th Cir. 2007)). However, to avoid summary
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`judgment, the nonmoving party “must do more than simply show that there is some metaphysical
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`doubt as to the material facts.” Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574,
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`586, 106 S. Ct. 1348, 1356, 89 L. Ed. 2d 538 (1986) (citations omitted).
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`Fed. R. Civ. P. 56(e) provides that:
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`[i]f a party fails to properly support an assertion of fact or fails to properly address
`another party’s assertion of fact as required by Rule 56(c), the court may:
`(1) give an opportunity to properly support or address the fact;
`(2) consider the fact undisputed for purposes of the motion;
`(3) grant summary judgment if the motion and supporting materials—including
`the facts considered undisputed—show that the movant is entitled to it; or
`(4) issue any other appropriate order.
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`FED. R. CIV. P. 56(e).
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`Although Plaintiff’s Amended Motion for Summary Judgment motion is unopposed, the
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`Court cannot grant summary judgment on this basis alone, but rather, must consider the merits of
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`the motion and determine whether there is a genuine issue of material fact. See United States v.
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`One Piece of Property, 5800 S.W. 74th Ave., Miami, Fla., 363 F.3d 1099, 1101 (11th Cir. 2004)
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`(“[S]ummary judgment, even when unopposed, can only be entered when ‘appropriate’”).
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`Although the Court “need not sua sponte review all of the evidentiary materials on file at the time
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`the motion is granted,” the Court “must ensure that the motion itself is supported by evidentiary
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`materials.” Id.
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`IV. DISCUSSION AND ANALYSIS
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`To demonstrate copyright infringement, Plaintiff must establish that (1) it owns a valid
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`copyright and (2) that Defendants infringed on one or more of the exclusive rights to the copyright.
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`Saregama India Ltd. v. Mosley, 635 F.3d 1284, 1290 (11th Cir. 2011); Suntrust Bank v. Houghton
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`Mifflin Co., 268 F.3d 1257, 1265-66 (11th Cir. 2001); Joe Hand Promotions, Inc. v. Phillips, Civ.
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`Act. No. 19-21723-Civ-Scola, 2020 WL 3404964, at *2, 2020 U.S. Dist. LEXIS 107981, at *5-6
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`(S.D. Fla. June 19, 2020); see also 17 U.S.C. § 106(3)-(5) (“[T]he owner of copyright under this
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`title has the exclusive rights to … distribute copies or phonorecords of the copyrighted work to the
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`public by sale or other transfer of ownership, or by rental, lease, or lending … to perform the
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`copyrighted work publicly; [and] … to display the copyrighted work publicly”). A copyright
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`owner need not prove a defendant knew or intended to commit the offense in order to establish
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`copyright infringement. Playboy Enters., Inc. v. Starware Pub. Corp., 900 F. Supp. 433, 436 (S.D.
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`Fla. 1995); Phillips, 2020 WL 3404964, at *2, 2020 U.S. Dist. LEXIS 107981, at *6.
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`JHP has established that it contracted with Mayweather Promotions, LLC, the exclusive
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`distributor of the Fight, and Showtime Networks, Inc. (“SNI”), the owner and operator of the
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`copyright to the Fight, for the sole and exclusive rights to distribute the Fight on August 26, 2017,
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`to commercial viewing locations in Alabama and elsewhere in the United States, including bars,
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`taverns, public houses, restaurants, clubs, and other public viewing areas. See Docs. 35-1 to 35-4.
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`SNI also assigned JHP the exclusive right to commence legal action to enforce its contractual
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`rights under federal copyright laws. See Doc. 35-3. Thus, Plaintiff has established the first prong
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`of its copyright infringement claim.
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`JHP also has established that the Lucky Horseshoe exhibited the Fight without permission
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`on August 26, 2017. JHP filed with its Amended Motion for Summary Judgment an affidavit
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`signed by Kimberly Jones, an auditor, stating that Jones personally observed that Lucky Horseshoe
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`exhibited the Fight on August 26, 2017, on three (3) television screens—one on each side of the
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`dance floor and another in an upstairs area. See Doc. 35-6. Jones stated that she paid a $10 cover
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`charge to enter the Lucky Horseshoe and observed the exhibition of the Fight. Id. In the affidavit,
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`Jones estimated that the Lucky Horseshoe had a capacity of about 500 people, but noted that there
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`were only 57 to 77 individuals in the establishment on the night of the Fight. Jones included with
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`the affidavit photographs from inside the Lucky Horseshoe. Id. Plaintiff also filed a copy of an
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`August 24, 2017 post by Lucky Horseshoe from its Facebook page stating that it would exhibit the
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`Fight. Doc. 35-8.
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`Joe Hand, Jr., President of JHP, submitted an affidavit stating that Defendants did not pay
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`the commercial sublicensing fee to receive the Fight transmission through their cable or satellite
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`provider, and thus, JHP did not authorize Defendants to exhibit the Fight to their patrons and did
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`not notify Defendants’ cable or satellite provider to allow them to receive and exhibit the Fight.
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`Doc. 35-1. Accordingly, Plaintiff has established that Defendants, as owners and operators of
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`Lucky Horseshoe, infringed on JHP’s copyright under 47 U.S.C. § 106(3)-(5) by exhibiting the
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`Fight without a license from JHP to do so.
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`JHP further asserts that Defendants’ infringement was willful for purposes of damages.
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`Where copyright infringement is established, the infringer is liable for either: “(1) the copyright
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`owner’s actual damages and any additional profits of the infringer, as provided by subsection (b);
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`or (2) statutory damages, as provided by subsection (c).” 17 U.S.C. § 504(a).
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`For actual damages and profits, a copyright owner is entitled to recover actual damages
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`suffered as a result of the infringement, and “any profits of the infringer that are attributable to the
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`infringement and are not taken into account in computing the actual damages.” 17 U.S.C. § 504(b).
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`To establish profits, a copyright owner must present proof of the infringer’s gross revenue. Id. In
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`turn, the infringer must prove “deductible expenses and the elements of profit attributable to factors
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`other than the copyrighted work.” Id.
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`For statutory damages, a copyright owner may elect to recover, in lieu of actual damages
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`and profits, an award of statutory damages of not less than $750 or more than $30,000, as the Court
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`considers just. Id. § 504(c)(1). Where the Court finds an infringement was committed “willfully,”
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`the Court “in its discretion, may increase the award of statutory damages to a sum of not more than
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`$150,000.” Id. § 504(c)(2). It is the copyright owner’s burden to prove willfulness. Id. By
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`contrast, “where the infringer sustains the burden of proving, and the court finds, that such infringer
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`was not aware and had no reason to believe that his or her acts constituted an infringement of
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`copyright, the court in its discretion may reduce the award of statutory damages to a sum of not
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`less than $200.” Id.
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`In the context of § 504(c)(2), “willfully” means that “the defendant knows his actions
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`constitute an infringement; the actions need not have been malicious.” Cable/Home Comm. Corp.
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`v. Network Prods., Inc., 902 F.2d 829, 851 (11th Cir. 1990); Broad. Music, Inc. v. Xanthas, Inc.,
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`855 F.2d 233, 236 (5th Cir. 1988). Additionally, the Eleventh Circuit has determined that an
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`infringement may be “willful” under the Copyright Act where Defendants acted with “reckless
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`disregard” to the possibility that their conduct was infringing a copyright. Yellow Pages Photos,
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`Inc. v. Ziplocal, LP, 795 F.3d 1255, 1271 (11th Cir. 2015).
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`JHP avers that Defendants’ willfulness is established because they intentionally
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`circumvented and/or avoided full knowledge of the commercial licensing requirements in
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`exhibiting the Fight. Plaintiff asserts that Defendants admitted to knowingly and willfully
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`broadcasting the Fight without JHP’s authorization, citing to Plaintiff’s Requests for Admission,
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`filed with the summary judgment motion. Doc. 10. Finally, Plaintiff asserts that the $10 cover
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`charged by the Lucky Horseshoe on the date of the Fight evidences an intent to profit from the
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`unauthorized broadcast.
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`The Court finds this showing insufficient to establish willfulness for purposes of summary
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`judgment. Although Defendants failed to respond to Plaintiff’s summary judgment motion, they
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`assert in their Answer to the Complaint that they have a commercial cable account through AT&T
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`at their place of business, they were offered an opportunity to exhibit the Fight through their
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`commercial cable carrier, they paid to exhibit the Fight, and they ordered and exhibited the Fight
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`in good faith. Doc. 10. JHP asserts that Defendants intentionally circumvented or avoided full
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`knowledge of the licensing requirements, but it provides insufficient evidence to demonstrate such.
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`Plaintiff established that Defendants charged an entrance fee on the date of the Fight and promoted
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`its exhibition of the Fight on Facebook, but this is the kind of conduct that could be anticipated by
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`a commercial establishment exhibiting the Fight whether or not the establishment had the proper
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`license to do so. It is not evidence, by itself, of willful infringement the copyright.
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`Plaintiff also cites to its Requests for Admissions as evidence of willfulness. In a footnote,
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`Plaintiff states that it served the request on Defendants on September 9, 2019, and Defendants
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`failed to respond. Thus, the matters addressed may be deemed admitted under Fed. R. Civ. P.
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`36(a)(3) (“A matter is admitted unless, within 30 days after being served, the party to whom the
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`request is directed serves on the requesting party a written answer or objection addressed to the
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`matter and signed by the party or its attorney”). Specifically, Plaintiff cites to admissions stating
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`that Defendants broadcast the Fight without paying JHP for the commercial exhibition rights;
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`Defendants knew they did not obtain the commercial exhibition rights from JHP; Defendants knew
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`the broadcast was not authorized by JHP; Defendants knowingly and willfully broadcast the Fight;
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`and Defendants benefitted financially from sales at the Lucky Horseshoe on the date of the Fight.
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`See Doc. 35-10. However, even accepting these unanswered admissions as evidence of
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`willfulness,2 the statements are directly contradicted by those made in Defendants’ Answer to the
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`Complaint. Thus, Plaintiff has not shown that there is no genuine dispute of material fact as to
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`willfulness and Plaintiff’s Amended Motion for Summary Judgment is due to be denied in this
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`regard. The Court notes that this finding does not necessarily preclude a finding of willfulness in
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`a bench trial.
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`As to damages, Plaintiff elects statutory damages under § 504(c)(2). Plaintiff seeks a total
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`award of $47,100, representing three (3) times the commercial licensing fee for exhibiting the
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`Fight. Plaintiff has offered evidence that the Lucky Horseshoe has an estimated capacity of 500
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`people, and that the licensing fee for exhibiting the Fight in an establishment with a fire code
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`capacity of 451-500 was $15,700. Docs. 35-5, 35-6. Defendants have provided no evidence to
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`the contrary. Thus, Plaintiff has demonstrated that it is owed that amount for exhibiting the Fight.
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`Accordingly, Defendant DD2, which does business as Lucky Horseshoe, is liable for the damages,
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`as is Defendant Dubois as sole member of DD2. See S. Bell Tel. & Tel. Co. v. Associated Tel.
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`Directory Publishers, 756 F.2d 801, 811 (11th Cir. 1985) (“An individual, including a corporate
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`officer, who has the ability to supervise infringing activity and has a financial interest in that
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`activity, or who personally participates in that activity is personally liable for the infringement”).
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`However, because there is a genuine dispute as to willfulness, Plaintiff’s request for treble damages
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`under § 504(c)(2) is inappropriate at this juncture. Moreover, as this action is ongoing, an award
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`of costs and attorney fees is premature.
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`2 The Court notes that the statements in the Request for Admission indicating that (1) Defendants
`knew they did not obtain a license from JHP and (2) willfully broadcast the program do not
`necessarily constitute a direct admission that Defendants willfully infringed on JHP’s copyright,
`since it allows for the possibility that Defendants wilfully exhibited the Fight but their infringement
`of the copyright was innocent.
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`V.
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`CONCLUSION
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`Based on the foregoing, Plaintiff’s Amended Motion for Summary Judgment (Doc. 35) is
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`GRANTED in part and DENIED in part. It is GRANTED as to Count 2 for copyright
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`infringement but DENIED as to a finding of willfulness. The Court notes that Count 1, which
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`was not addressed in Plaintiff’s summary judgment motion, also remains an issue for bench trial.
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`The Court finds statutory damages are established in the amount of $15,700 for copyright
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`infringement. Given that the question of willfulness is unresolved at this stage, the Court reserves
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`any further findings in regard to damages, costs, and attorney fees pending bench trial.
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`DONE and ORDERED this 27th day of July 2020.
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` /s/ Terry F. Moorer
`TERRY F. MOORER
`UNITED STATES DISTRICT JUDGE
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`Page 10 of 10
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