Case: 1:19-cv-02321 Document #: 86 Filed: 03/30/23 Page 1 of 29 PageID #:862
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
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`
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`Eddie Lee Richardson, a/k/a
`Hotwire the Producer,
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`Plaintiff,
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`v.
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`Karim Kharbouch, a/k/a
`French Montana,
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`Defendant.
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`No. 19 CV 02321
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`Honorable Nancy L. Maldonado
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`MEMORANDUM OPINION AND ORDER
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`Plaintiff Eddie Lee Richardson brings this action under the Copyright Act of 1976, 17
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`U.S.C. § 101 et seq., against Defendant Karim Kharbouch—a well-known hip hop artist who
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`performs under the name French Montana. Plaintiff claims that Defendant’s hit single “Ain’t
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`Worried About Nothin’” (“AWAN”) was created using the melody of a song that Plaintiff
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`composed and shared online when he was sixteen. Plaintiff alleges that Defendant’s public
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`performances of AWAN constitute willful copyright infringement, for which he seeks damages
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`and equitable relief. Currently before the Court are cross-motions for summary judgment. (Dkt.
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`69) (Plaintiff); (Dkt. 75) (Defendant). For the reasons given below, the Court grants Defendant’s
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`motion in part, denies it in part, and denies Plaintiff’s motion in full.
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`Background
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`Because this case is before the Court on summary judgment, the factual record is framed
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`largely by the parties’ Local Rule 56.1 statements and responses, (Dkt. 66-1, 69-1, 79-1), although
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`the Court retains discretion to “consider other materials in the record” where appropriate. Fed. R.
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`Civ. P. 56(c)(3). Regrettably, the parties’ filings deviate from Local Rule 56.1 in significant
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`respects. The Court will discuss the implications of this non-compliance before summarizing the
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`facts of this case. It will then provide a brief overview of the Copyright Act of 1976, which
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`articulates the legal framework governing Plaintiff’s claims.
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`A.
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`Local Rule 56.1
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`In the Northern District of Illinois, Local Rule 56.1 “guides how parties must marshal
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`evidence at the summary judgment stage.” Flint v. City of Belvidere, 791 F.3d 764, 766 (7th Cir.
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`2015). The rule requires movants for summary judgment to file, in addition to a supporting
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`memorandum of law, a “statement of material facts that complies with LR 56.1(d) and that attaches
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`the cited evidentiary material.” N.D. Ill. L.R. 56.1(a)(2). Local Rule 56.1(d) requires that the facts
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`in the movant’s statement be arrayed in “concise numbered paragraphs,” each of which must
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`contain references to the “specific evidentiary material . . . that supports it.” N.D. Ill. L.R.
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`56.1(d)(1)–(2).
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`In opposing a motion for summary judgment, a non-movant must “file a response” to the
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`movant’s statement of material facts “that complies with LR 56.1(e) and that attaches any cited
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`evidentiary material not attached to the” movant’s statement. N.D. Ill. L.R. 56.1(b)(2). Local Rule
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`56.1(e) requires that the non-movant’s response “consist of numbered paragraphs corresponding
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`to the numbered paragraphs” in the movant’s statement and that each of these paragraphs “set forth
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`the text of the asserted fact (including its citations to the supporting material), and then shall set
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`forth the [non-movant’s] response.” N.D. Ill. L.R. 56.1(e)(1). Each response must either “admit,”
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`“dispute,” or “admit in part and dispute in part the asserted fact.” N.D. Ill. L.R. 56.1(e)(2). Where
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`the non-movant disputes a fact, he or she must “cite specific evidentiary material that controverts
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`the fact and must concisely explain how the cited material controverts the asserted fact.” N.D. Ill.
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`L.R. 56.1(e)(3).
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`2
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`In addition to responding to the movant’s statement of material facts, a non-movant may
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`also file a statement of his or her own, setting forth in numbered paragraphs—with citations to the
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`record—any “additional material facts that comp[ly] with L.R. 56.1(d) . . . .” N.D. Ill. L.R.
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`56.1(b)(3), (d). If the non-movant relies on evidence in the record not attached by the movant to
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`his or her statement of material facts, the non-movant must attach that evidentiary material to his
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`or her response. N.D. Ill. L.R. 56.1(b)(3). The moving party must file a response to the non-
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`movant’s statement of additional material facts, if any, and that statement must comply with the
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`same requirements applicable to the non-movant’s response to the movant’s statement of material
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`facts. N.D. Ill. L.R. 56.1(c)(2).
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`Local Rule 56.1 serves to “inform the court of the evidence and arguments in an organized
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`way—thus facilitating its judgment of the necessity for trial.” Little v. Cox’s Supermarkets, 71
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`F.3d 637, 641 (7th Cir. 1995). The rule, promulgated by the Northern District of Illinois pursuant
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`to Federal Rule of Civil Procedure 83(a), is not merely aspirational—it is a rule of procedure like
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`any other, for which the failure to comply can carry severe consequences. Petty v. City of Chi., 754
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`F.3d 416, 420 (7th Cir. 2014) (“If parties fail to comply with local rules, they ‘must suffer the
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`consequences, harsh or not.’” (quoting Midwest Imports, Ltd. v. Coval, 71 F.3d 1311, 1317 (7th
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`Cir. 1995)). District judges possess broad discretion to “require strict compliance with Local Rule
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`56.1,” Flint, 791 F.3d at 767, and are not required to “scour the record looking for factual disputes.”
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`Thornton v. M7 Aerospace LP, 796 F.3d 757, 769 (7th Cir. 2015).
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`Unfortunately, the parties’ filings fail to comply with Local Rule 56.1 in significant ways.
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`Plaintiff’s Rule 56.1(b)(2) response to Defendant’s statement of material facts, for instance, does
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`not specifically respond to each of the facts in Defendant’s statement. (Dkt. 79-1). Instead, Plaintiff
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`responds to only one of those facts. While the Court interprets Plaintiff’s non-responsiveness as
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`3
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`indicative of his agreement with the remainder of the facts asserted in Defendant’s statement,
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`Plaintiff is reminded that Local Rule 56.1 requires a non-movant’s response to “set forth the text
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`of" and “admit,” “dispute,” or “admit in part and dispute in part” each fact asserted by the movant,
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`N.D. Ill. L.R. 56.1(e)(1)–(2).
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`The most significant departure from Local Rule 56.1 is Defendant’s failure to file a
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`response to either Plaintiff’s Rule 56.1(a)(2) statement of material facts (filed with Plaintiff’s
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`summary judgment motion) or Plaintiff’s Rule 56.1(b)(3) statement of additional facts (filed in
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`response to the statement of material facts Defendant included with his summary judgment
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`motion). Local Rule 56.1 makes clear that a party’s failure to respond to facts asserted by the
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`movant in a Rule 56.1(a)(2) statement of material facts or by the non-movant in a Rule 56.1(b)(3)
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`statement of additional material facts results in admission, at least for the purpose of ruling on the
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`motion for summary judgment. N.D. Ill. L.R. 56.1(e)(3) (“Asserted facts may be deemed admitted
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`if not controverted with specific citations to evidentiary material.”); Washington v. McDonough,
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`2021 WL 1962420, at *3 (N.D. Ill. May 17, 2021) (deeming facts asserted in movant’s statement
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`of material facts admitted where non-movant failed to file a response under Local Rule 56.1(b)(2));
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`Allied Ins. Co. v. United States, 2022 WL 4182383, at *5 (N.D. Ill. Sept. 13, 2022) (deeming facts
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`asserted in non-movant’s statement of additional material facts admitted where movant failed to
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`file a response under Local Rule 56.1(c)(2)).
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`In its discretion, the Court will enforce Local Rule 56.1 in this case, with a few exceptions
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`to promote an eventual decision on the merits, and not by a technical default. As will become
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`clearer below, were the Court to deem paragraphs 4, 6, and 7 of Plaintiff’s statement of material
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`facts admitted, that decision would all but require the Court to enter summary judgment in
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`Plaintiff’s favor. Paragraphs 4 and 6, citing to an expert opinion, state that “AWAN is ‘shockingly
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`4
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`similar’ to HPW,” (Dkt. 69-1, ¶ 4); and that “[i]t is ‘extremely unlikely’” that these similarities are
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`attributable to a common source in “the public domain,” (id. at ¶ 6; Dkt. 66-5). Paragraph 7 states
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`that “[o]rdinary observations by the public confirm that ‘there is more than a passing similarity’
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`between AWAN and HPW,” and is based on the opinion of a TMZ journalist (or perhaps more
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`than one). (Dkt. 69-1, ¶ 7; Dkt. 66-10).
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`The Court is not inclined to decide this case on a technicality, and will not strictly enforce
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`Rule 56.1 as to these three facts. The Court takes Defendant’s failure to respond as an
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`acknowledgement that these individuals expressed those opinions, not as an admission that those
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`opinions are factually correct. With this exception, the Court deems every other statement of fact
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`in the Local Rule 56.1 filings admitted, save the lone fact to which Plaintiff objected. On that
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`understanding, the Court will now summarize the salient facts bearing on Plaintiff’s claims.
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`B.
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`The Facts
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`In 2012, Plaintiff Eddie Lee Richardson—then just sixteen years old and an aspiring music
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`producer—composed an original piece of music titled “*Hood* Pushin’ Weight” (“HPW”). (Dkt.
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`69-1, ¶ 1); (Dkt. 72). According to Plaintiff’s expert report, HPW is “comprised of an arrangement
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`of seven [musical] motives”—“short musical idea[s] . . . used to develop longer musical
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`expressions like melodies.”1 (Dkt. 69-5, 3–4). With the exception of the “vocal phrase ‘Hotwire,’”
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`which Plaintiff interspersed throughout HPW to tag the work as his own, HPW is purely
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`instrumental. (Id. at 4); (Dkt. 69-1, ¶ 1).
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`On October 7, 2012, Plaintiff uploaded HPW to SoundClick.com, an “online audio
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`distribution and music sharing website that enables its users to upload, promote, and share audio.”
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`1 A melody is “a succession of single notes that develops over an extended period of musical time . . . .” (Dkt. 69-
`5, 3).
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`5
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`(Dkt. 69-1, ¶ 1). According to Plaintiff, SoundClick.com “is widely known by music producers
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`and artists . . . .” (69-2, ¶ 2).
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`On April 15, 2013, roughly six months after Plaintiff uploaded HPW to SoundClick.com,
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`Defendant released the hit single “Ain’t Worried About Nothin’” (“AWAN”). (Dkt. 69-1, ¶ 3);
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`(Dkt. 66-1, fact #1). AWAN proved immensely popular, reaching number ten on the Billboard
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`charts and inspiring collaborations with some of the music industry’s biggest names, including Lil
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`Wayne, Puff Daddy, Wiz Khalifa, Miley Cyrus, and The Game. (Dkt. 69-1, ¶ 5); (Dkt. 66-1, fact
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`#4); (Dkt. 66-5, Richardson Dep. Tr. 129:16–130:24). On May 7, 2013, Defendant posted the
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`official music video for AWAN to his YouTube channel, which has since garnered more than 93
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`million views. (Dkt. 69-1, ¶ 10); (Dkt. 69-13).
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`Although Defendant admits that he “contributed to the creation of AWAN by writing its
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`lyrics,” he maintains that AWAN’s underlying music was created by others. (Dkt. 66-10, 5). In
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`answer to one of Plaintiff’s interrogatories, Defendant explained that the music for AWAN was
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`created by a team of three producers—Richard Preston Butler, Jr., known professionally as “Rico
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`Love,” Earl Hood, and Eric Goudy. (Id. at 6). Rico Love was apparently the driving force behind
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`AWAN, and allegedly “created the music” for it in Miami. (Id. at 5–6).
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`Plaintiff heard AWAN for the first time on May 5, 2013. (Dkt. 69-1, ¶ 3); (Dkt. 66-1, fact
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`#2). Plaintiff “instantly” suspected that AWAN’s underlying melody was copied from HPW,
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`although AWAN included additional “vocalized lyrics and transitional effects.” (Dkt. 69-5, 4);
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`(Dkt. 69-2, ¶ 3); (Dkt. 69-1, ¶¶ 4, 6). According to Plaintiff’s expert, “AWAN contains . . . six of
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`the seven motives of HPW in the introduction and subsequent sections, including all verses,
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`choruses, and breakdowns,” a similarity he found “‘shocking.’” (Dkt. 69-1, ¶ 4).
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`6
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`In light of the patent similarities between AWAN and HPW, Plaintiff “immediately”
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`contacted Defendant on Twitter. (Dkt. 69-2, ¶ 4). Plaintiff sent Defendant “a link to HPW on
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`SoundClick.com” and demanded “credit for [his] work.” (Id. at ¶ 4); (Dkt. 69-1, ¶ 8); (Dkt. 69-
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`11). Defendant told Plaintiff that he should reach out to Rico Love. (Dkt. 66-1, fact #5); (Dkt. 69-
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`2, ¶ 4); (Dkt. 69-11). The conversation appears to have ended there.
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`On May 6, 2013 (the very next day), Plaintiff registered his copyright in HPW with the
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`U.S. Copyright Office—apparently “as a sound recording.” (Dkt. 69-1, ¶ 9); (Dkt. 66-1, fact #3);
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`(Dkt. 69-2, ¶ 5). Plaintiff’s copyright in HPW was registered as part of a compilation of “[a]t least
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`30” songs, which Plaintiff collectively titled “Hotwire’s Instrumentals.” (Dkt. 66-4, Richardson
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`Dep. Tr. 88:7–16); (Dkt. 69-12); (Dkt. 51, ¶ 12).
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`It is undisputed that at some point after listening to AWAN, perhaps after his conversation
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`with Defendant though the Court cannot be sure, Plaintiff “formed the opinion that the beat to
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`AWAN had been stolen by . . . Rico Love . . . .” (Dkt. 66-1, fact #2). Sometime in 2013, Plaintiff
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`“reach[ed] out to” Rico Love on Twitter, and the two had a “very brief” conversation.2 (Dkt. 66-
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`6, Richardson Dep. Tr 78:1–80:4). Defendant’s statement of material facts asserts that “Plaintiff
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`ceased to believe that Love stole his beat” after this exchange. (Dkt. 66-1, fact #5). But as Plaintiff
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`correctly points out, this is not an accurate interpretation of his deposition testimony. Plaintiff
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`explained during his deposition that, even after his conversation with Love, he remained firmly
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`convinced that someone involved in AWAN’s production had copied HPW—he simply was
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`unable to determine precisely who. (Dkt. 66-6, Richardson Dep. Tr. 80:22–81:7).
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`2 There is no record of that conversation, apparently because it was deleted by Rico Love or “somebody with
`access to his [Twitter] account . . . .” (Dkt. 66-6, Richardson Dep. Tr. 79:7–11). According to Plaintiff, if one party to
`a two-way Twitter conversation deletes the conversation, it erases any record of that conversation on both ends. (Id.
`at 79:2–6).
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`7
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`At this point, Plaintiff felt like “there was nothing . . . else [he] could do.” (Id. at 81:11–
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`15). Plaintiff had “reached out to the artist [and] . . . reached out to the producer and didn’t seem
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`to have success with either of them.” (Id.) Over the ensuing months, Defendant performed AWAN
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`publicly hundreds of times, including “378 times from . . . April 5, 2016” to the date Plaintiff
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`moved for summary judgment. (Dkt. 69-1, ¶ 12). At least one of those performances took place
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`within the Northern District of Illinois while this lawsuit was pending. (Id.)
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`Somehow—the record does not make entirely clear why—Defendant himself has received
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`$0 in compensation “for sales of AWAN by distributors” and $0 from any “performances of . . .
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`AWAN.” (Dkt. 66-1, fact #9). Although the Court is somewhat perplexed by these claims, Plaintiff
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`does not dispute them, and the Court will not question them further.
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`Plaintiff “did not immediately file his claim due to his young age at the time” of these
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`events. (Dkt. 69-1, ¶ 11). According to Plaintiff, he also had trouble “hir[ing] an attorney.” (Dkt.
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`69-2, ¶ 6). He commenced this copyright infringement suit on April 5, 2019. (Dkt 69-1, ¶ 11);
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`(Dkt. 1). On January 11, 2021, he filed a first amended complaint—the operative complaint in this
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`case. (Dkt. 51).
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`C.
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`Legal Framework
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`“The Constitution grants Congress the power ‘[t]o promote the Progress of Science and
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`useful Arts, by securing for limited Times to Authors . . . the exclusive Right to . . . their . . .
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`Writings.’” Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154, 157 (2010) (quoting U.S. CONST. art.
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`I, § 8, cl. 8). The Copyright Act of 1976 (“the Copyright Act”) is Congress’s latest effort to “craft[]
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`a comprehensive statutory scheme” exercising that power. Id. To this end, the Copyright Act
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`“establishes the prerequisites for copyright protection and sets limits on its scope.” Design Basics,
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`LLC v. Signature Constr., Inc., 994 F.3d 879, 885 (7th Cir. 2021).
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`8
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`For present purposes, the provisions of the Copyright Act can be divided into three
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`categories: (1) those defining what works are amenable to copyright protection and setting forth
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`authors’ rights in those works; (2) those imposing prerequisites and limitations on suits for
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`copyright infringement; and (3) those governing the relief available to copyright holders who bring
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`such suits.
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`1. Copyright Protection and the Rights of Copyright Holders
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`“[C]opyright protection” under the Copyright Act “subsists . . . in original works of
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`authorship fixed in any tangible medium of expression.”3 17 U.S.C. § 102(a). Copyright protection
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`under the statute attaches “immediately upon the . . . creation” of a qualifying work, Fourth Estate
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`Pub. Benefit Corp. v. Wall-Street.Com, LLC, 139 S. Ct. 881, 887 (2019), and “grants . . . copyright
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`holder[s]” a bundle of “‘exclusive’ rights to use and to authorize the use of” their protected works
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`in a number of ways. Sony Corp. of Am. v. Univ. City Studios, Inc., 464 U.S. 417, 432–33 (1984)
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`(quoting 17 U.S.C. § 106). Those rights are conferred by section 106 and limited in important
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`respects by other provisions of the Act. See generally 17 U.S.C. §§ 107–122.
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`Section 106 generally grants copyright holders the “exclusive rights” (1) “to reproduce the
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`copyrighted work,” (2) “to prepare derivative works based upon the copyrighted work,” and (3)
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`“to distribute copies . . . of the copyrighted work to the public . . . .” Id. § 106(1)–(3). In some
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`cases, section 106 also grants copyright holders the exclusive rights to perform publicly or display
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`their copyrighted works, id. § 106(4)-(6), although the scope of these rights depends on the
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`category of work at issue.
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`3 Because it is undisputed in this case that HPW qualifies for copyright protection, the Court will not discuss the
`requirements of originality and fixation in any detail.
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`Copyright protection in a sound recording, for instance, is less robust than copyright
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`protection in a musical composition. The copyright holder in a musical composition has the
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`exclusive right to “perform” and “display the copyrighted work publicly,” 17 U.S.C. §§ 106(4)-
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`(5), whereas a copyright holder in a sound recording has only the exclusive right to “perform the
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`copyrighted work by means of a digital audio transmission.” Id. § 106(6); see also id. § 114(a)
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`(“The exclusive rights of the owner of copyright in a sound recording are limited to the rights
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`specified by clauses (1), (2), (3) and (6) of section 106, and do not include any right of performance
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`under section 106(4)”). Section 114(d) places additional restrictions on the limited performance
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`right granted by § 106(6).
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`Because the Copyright Act defines infringement as any act that “violates any of the
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`exclusive [statutory] rights of the copyright owner,” a copyright holder suing for infringement
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`must always specify which of these exclusive rights the Defendant has violated. 17 U.S.C. §
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`501(a).
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`2. Prerequisites to and Limitations on Copyright Infringement Suits
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` Section 501(b) of the Copyright Act “creates a cause of action for [copyright]
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`infringement.” Signature Construction, 994 F.3d at 886; Fourth Estate, 139 S. Ct. at 887 (“The
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`Copyright Act entitles a copyright owner to institute a civil action for infringement of [his]
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`exclusive rights.”). In order to bring an infringement action, however, a copyright holder must first
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`register his copyright with the U.S. Copyright Office. 17 U.S.C. § 411(a) (providing that, with one
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`exception not relevant here, “no civil action for infringement of . . . copyright . . . shall be instituted
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`until . . . registration of the copyright claim has been made in accordance with this title”). This
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`requirement “is akin to an administrative exhaustion requirement that the owner must satisfy
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`before suing to enforce ownership rights . . . .” Fourth Estate, 139 S. Ct. at 887.4
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`If a copyright holder has properly registered his copyright, he may sue on any claim of
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`infringement accruing “within three years” of the commencement of suit. 17 U.S.C. § 507(b).
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`“[W]hen a defendant commits successive violations, the statute of limitations runs separately
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`from” each discrete act of infringement. Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663,
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`671 (2014). Therefore, although a given act of “infringement is actionable within three years, and
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`only three years of its occurrence,” the running of the statute of limitations on one claim of
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`infringement does not foreclose a copyright holder from seeking relief for more recent acts of
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`infringement. Id.
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`3. Statutory Damages
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`The Court will discuss the substantive standard applicable to copyright infringement claims
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`further below. If a copyright holder can prove such a claim, the Copyright Act authorizes him to
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`recover either his “actual damages and any additional profits of the infringer,” or statutory
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`damages. 17 U.S.C. § 504(a). A copyright holder “may elect, at any time before final judgment is
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`rendered, to recover” statutory damages. Id. at § 504(c)(1). Plaintiff has done so in this case. (Dkt.
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`79, 3).
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`“By its terms, § 504(c)(1) limits a plaintiff’s recovery to one award of statutory damages
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`for each work infringed.” Sullivan v. Flora, Inc., 936 F.3d 562, 567 (7th Cir. 2019). Therefore,
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`although a jury may find a defendant liable for many acts of infringement, the plaintiff is entitled
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`4 Because a copyright holders’ exclusive rights under the Copyright Act “vest[] . . . upon creation of their works,”
`the Copyright Act technically “prohibit[s] infringement from that point forward.” Fourth Estate, 139 S. Ct. at 891. So
`the mere fact that a copyright holder has not registered his copyright does not mean that the public is free to use the
`copyright holder’s work without permission. Upon registering a copyright, the copyright holder “can recover for
`infringement that occurred both before and after registration,” so long as the lawsuit is brought within the statute of
`limitations. Id. at 886–87.
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`to only one award of statutory damages if those acts infringed the same work. The size of that
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`award is a matter of discretion for the jury, although the statute sets higher and lower bounds within
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`which that discretion must be exercised. Feltner v. Columbia Pictures Television, Inc., 523 U.S.
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`340, 355 (1998) (holding that “the Seventh Amendment provides a right to a jury trial on all issues
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`pertinent to an award of statutory damages under § 504(c) of the Copyright Act, including the
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`amount itself”).
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`The Copyright Act sets a default range of $750 to $30,000, which the jury can award as it
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`“considers just.” 17 U.S.C. § 504(c)(1). However, if the jury finds “that [the] infringement was
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`committed willfully,” the maximum award increases to $150,000. Id. at § 504(c)(2). And if the
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`jury finds that the infringement was innocent—because the defendant “was not aware and had no
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`reason to believe that his or her acts constituted an infringement of copyright”—it may award as
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`little as $200. Id.
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`With the factual and legal background of this case in tow, the Court will proceed to consider
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`the specifics of Plaintiff’s claims and the merits of the parties’ cross-motions for summary
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`judgment.
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`Standard of Review
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`Under Federal Rule of Civil Procedure 56(a), summary judgment is appropriate “if the
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`movant shows that there is no genuine dispute as to any material fact and the movant is entitled to
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`judgment as a matter of law.” A fact is material if its determination by the trier of fact “might
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`affect the outcome of the suit under the governing law . . . .” Anderson v. Liberty Lobby, Inc., 477
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`U.S. 242, 248 (1986). A dispute with respect to such a fact is genuine if “the evidence is such that
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`a reasonable jury could return a verdict for the nonmoving party.” Id. at 248. If so, a motion for
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`Case: 1:19-cv-02321 Document #: 86 Filed: 03/30/23 Page 13 of 29 PageID #:874
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`summary judgment must be denied, no matter how overwhelmingly “the evidence . . . favors” the
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`movant. Id.
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`A court’s “function” at this stage “is not . . . to weigh the evidence and determine the truth
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`of the matter,” but rather to determine “whether a fair-minded jury could return a verdict for the
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`[non-movant] on the evidence presented.” Id. at 249, 252. In conducting this inquiry, courts must
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`“view the facts in the light most favorable to the nonmoving party and draw all reasonable
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`inferences in that party’s favor.” Holloway v. City of Milwaukee, 43 F.4th 760, 765 (7th Cir. 2022).
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`However, “it is not the court’s job to ‘scour the record in search of evidence to defeat a motion for
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`summary judgment.’” Hildreth v. Butler, 960 F.3d 420, 429–30 (7th Cir. 2020) (quoting Harney
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`v. Speedway SuperAmerica, LLC, 526 F.3d 1099, 1104 (7th Cir. 2008)). “Once a party has made
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`a properly-supported motion for summary judgment, the opposing party may not simply rest upon
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`the pleadings but must instead” point to specific “evidentiary materials” demonstrating a genuine
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`issue for trial. Harney, 526 F.3d at 1104 (7th Cir. 2008).
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`Analysis
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`Plaintiff’s operative complaint in this case asserts two counts against Defendant—one for
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`copyright infringement and one for willful copyright infringement. Plaintiff has moved for
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`summary judgment on his claims, asking the Court to find that Defendant willfully infringed his
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`copyright as a matter of law, and to enter an order awarding Plaintiff statutory damages and
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`permanently enjoining Defendant from performing AWAN. (Dkt. 69 at 1, 6.) Defendant has cross-
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`moved for partial summary judgment on several aspects of Plaintiff’s claims, arguing that Plaintiff
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`can only recover for acts of infringement after April 5, 2016, that Plaintiff’s damages are limited
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`to one award of statutory damages, and that any acts of infringement by Defendant were innocent
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`as a matter of law.
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`Case: 1:19-cv-02321 Document #: 86 Filed: 03/30/23 Page 14 of 29 PageID #:875
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`Before reaching the merits of the parties’ cross-motions for summary judgment, a few
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`threshold words about the scope of Plaintiff’s theory of infringement and the elements of his claim
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`are necessary. As the Court will discuss further below, Plaintiff has conceded that the Copyright
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`Act’s three-year limitations period restricts the scope of liability in this case to acts of infringement
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`occurring after April 5, 2016. (Dkt. 79, 3). This limited liability period, coupled with the relative
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`dearth of evidence in the record on Defendant’s role in distributing AWAN after April 5, 2016,
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`has apparently led Plaintiff to elect to pursue only a performance-based, rather than reproduction-
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`based, theory of infringement. Specifically, although Plaintiff’s complaint seeks to hold Defendant
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`liable for both his “performances over the melody of AWAN” and his role in “distribut[ing] . . .
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`AWAN . . . .” (Dkt. 51, ¶ 31), Plaintiff’s motion for summary judgment now appears to seek to
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`hold Defendant liable only for his performances of AWAN. (Dkt. 69, 4) (“Kharbouch is liable to
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`Richardson for at least 378 performances of AWAN between the three years preceding
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`Richardson’s claim and the present day.”); (Dkt. 80, 1) (“The actual issue is whether Kharbouch’s
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`performances of AWAN infringe on Richardson’s exclusive right to use HPW.”). In short, in his
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`motion, Plaintiff does not seek to hold Defendant liable for any distribution of the allegedly
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`infringing work, but rather only for performances of the work after April 5, 2016.
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`In light of Plaintiff’s concession regarding the liability period, and his exclusive focus on
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`Defendant’s performances of AWAN in his motion for summary judgment, Plaintiff will
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`essentially need to establish four elements to prove his claim: first, that he has a valid copyright in
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`HPW, properly registered with the U.S. Copyright Office; second, that AWAN unlawfully copied
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`HPW’s melody; third, that Defendant’s public performances of AWAN after April 5, 2016, violate
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`Plaintiff’s performance rights in HPW under the Copyright Act; and fourth (at least with respect
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`to count two of his complaint), that Defendant engaged in these infringing performances willfully.
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`Case: 1:19-cv-02321 Document #: 86 Filed: 03/30/23 Page 15 of 29 PageID #:876
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`At this stage, the parties appear to agree on the first element, that is, that Plaintiff has a
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`valid copyright in HPW: Plaintiff asserts that he has a valid copyright and attaches a registration
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`certificate, and Defendant does not contest the validity of the copyright. (Dkt. 69-1, ¶ 9); (Dkt. 66-
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`1, fact #3); (Dkt. 69-2, ¶ 5). The parties’ briefing and cross-motions therefore focus on the second
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`and fourth elements, that is, whether AWAN is an unlawful copy of HPW, and whether any
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`infringement was willful, as well as the issue of damages.
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`However, the Court observes that there is one aspect of the record that is unclear and not
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`sufficiently addressed by the parties that has important implications for another fundamental
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`element of Plaintiff’s claim, specifically the third element above: whether Defendant’s public
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`performances of AWAN after April 5, 2016 violate Plaintiff’s performance rights in HPW under
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`the Copyright Act. As discussed above, whether a copyright holder like Plaintiff has an exclusive
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`right to public performance of his copyright depends on whether his work is registered as a “sound
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`recording” or a “musical composition.” While Plaintiff can pursue a claim based on distribution
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`of his work under either type of registration, if Plaintiff only has a “sound recording” copyright,
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`then he can only maintain a copyright infringement action for performances of his work by “digital
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`audio transmission.” 17 U.S.C. §§ 106(6), 114(a)); see also Circular 56A, United States Copyright
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`Office (explaining the difference between “sound recording” and “musical composition”
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`registrations).5 If, however, Plaintiff’s copyright is for a musical composition, Plaintiff can pursue
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`an infringement action for public performances as well. Id.
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`While the parties appear to agree that Plaintiff has a valid copyright in his work, and
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`Plaintiff identifies his copyright as one for a “sound recording,” the parties do not address in either
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`their opening motions or response briefs what implications that fact has on Plaintiff’s claims.
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`5 Circular 56A is publicly available at https://www.copyright.gov/circs/circ56a.pdf.
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`Case: 1:19-cv-02321 Document #: 86 Filed: 03/30/23 Page 16 of 29 PageID #:877
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`Defendant briefly raises the issue in his reply brief, arguing in a single sentence that the fact that
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`HPW is registered as a sound recording means that “it would only be the unauthorized use of
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`HPW’s sound, and not any performance” that would be an infringement. (Dkt. 81 at 6.) But it is
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`well established that arguments raised for the first time in a reply are waived. Mendez v. Perla
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`Dental, 646 F.3d 420, 423–24 (7th Cir. 2011). The Court thus finds it inappropriate to reach this
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`issue. However, while the argument may not have been properly presented, the Court
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`acknowledges that if Plaintiff’s registration is one for a “sound recording,” that would likely mean
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`that he could only pursue an infringement action for performances by “digital audio transmission.”
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`But even if Defendant is correct on that point, the record is unclear at this stage whether
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`Defendant’s alleged acts of infringement, i.e. his performances of AWAN, were by means of
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`“digital audio transmiss