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`JAMES H. GRIFFITH, Jr., d/b/a CJ’S
`SPORTS BAR, and LISA LESLEY
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`Defendants.
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`JOE HAND PROMOTIONS, INC.,
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`Plaintiff,
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TENNESSEE
`AT KNOXVILLE
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`Case No. 3:20-cv-382
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`Judge Travis R. McDonough
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`Magistrate Judge H. Bruce Guyton
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`MEMORANDUM OPINION
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`Before the Court are Plaintiff Joe Hand Promotions, Inc.’s (“Joe Hand”) motion for
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`partial summary judgment (Doc. 39) and Defendants Lisa Lesley and James Griffith, Jr.’s motion
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`for summary judgment (Doc. 41) and motion for sanctions (Doc. 48). Defendants Lesley and
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`Griffith’s motions motion for summary judgment is GRANTED (Doc. 41). Because the Court
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`grants Defendants’ motion for summary judgment, Plaintiff Joe Hand’s motion for partial
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`summary judgment (Doc. 39) and Defendants Lesley and Griffith’s motion for sanctions (Doc.
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`48) are DENIED.
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`I.
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`BACKGROUND
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`James Griffith, Jr. owns and operates CJ’s Sports Bar (“the Bar”) in Kingsport,
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`Tennessee. (Doc. 40-7, at 17.) Lisa Lesley is an employee of the Bar. (Id. at 49.) Joe Hand is a
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`business that licenses sports and entertainment programming to commercial establishments.
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`(Doc. 40, at 1.)
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`Case 3:20-cv-00382-TRM-HBG Document 54 Filed 10/20/21 Page 1 of 11 PageID #: 590
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`On August 26, 2017, Floyd Mayweather and Conor McGregor engaged in a prizefight
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`that was broadcast live (“the Event”). (Doc. 41-1, at 3.) Showtime, Inc., owned the copyright to
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`the Event and made the Event available for non-commercial streaming from its website. (Doc.
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`40-2, at 49.) Nearly three months later, on November 21, 2017, Joe Hand entered into an
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`agreement with Showtime (“the Agreement”), in which Showtime purportedly granted Joe Hand
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`“sole and exclusive Commercial Rights” in the Event; however, despite this ostensibly sweeping
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`phrase, the Agreement defined these rights as “[t]he exclusive right to distribute and publicly
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`perform the Event live on August 26, 2017[,] to Commercial Premises in the Territory.” (Id. at
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`46.)1 The Agreement also contained an “Enforcement of Rights” provision:
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`Insofar as [Showtime] is concerned, [Joe Hand] shall have the right and standing,
`as exclusive assignee, to assert independent claims, solely in the name of [Joe
`Hand], for copyright infringement under the copyright laws of the United States . .
`. solely relating to the unauthorized exploitation of the Commercial Rights in the
`Event in the Territory.
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`(Id. at 47.) The Agreement further stated that Joe Hand
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`has the exclusive right in the Territory to take enforcement measures, prosecute
`and commence legal actions with respect to any unauthorized exploitation of the
`Commercial Rights [and that Showtime] hereby assigns and grants to [Joe Hand]
`such rights, interests or powers in the Event as are held by [Showtime] solely to
`the extent necessary . . . to enable [Joe Hand] to enforce and to initiate legal
`proceedings . . . for copyright infringement.
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`(Id. at 46.) Joe Hand purportedly licensed the Event to commercial establishments and based its
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`rates upon the attendance or seating capacity of the commercial establishments sublicensing the
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`Event. (Id. at 28.) For an establishment with a seating capacity of 101 to 150 persons, Joe Hand
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`charged $5,200 to license the Event. (Doc. 40-3, at 1.)
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`1 Obviously, by the date of the Agreement, it was impossible for Joe Hand to do anything with
`the Event “live” on August 26, 2017.
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`2
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`Case 3:20-cv-00382-TRM-HBG Document 54 Filed 10/20/21 Page 2 of 11 PageID #: 591
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`Prior to the Event, the Bar posted or shared multiple posts on its Facebook page
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`promoting the Event and encouraging individuals to buy tickets. (Id. at 7–12.) Lesley rented the
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`Bar on the night of August 26, 2021, for $1,000, collecting six dollars each from patrons at the
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`door, and purchased the program from Showtime’s website for viewing at the Bar. (Id. at 18–20;
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`Doc. 41-1, at 3; Doc. 40-2, at 5; Doc. 40-7, at 27.) Lesley did not, however, license the Event for
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`the Bar through Joe Hand. (See Doc. 47, at 9.) Instead, Lesley used an HDMI cable to hook up
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`her computer—which she used to buy and stream the Event for $99—to a television so patrons
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`could watch the Event together on a larger screen. (Id.) No one from the Bar contacted Joe
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`Hand about broadcasting the Event. (Doc 41-1, at 3.) Griffith received money from the food
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`and beverages sold during the Event but did not receive any of the door charge collected by
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`Lesley. (Id.; Doc. 40, at 5.)
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`On August 26, 2020, Joe Hand instituted the present action for copyright infringement
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`and internet piracy. The Court previously dismissed Joe Hand’s claim for internet piracy, (see
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`Doc. 31), and a single count of copyright infringement remains. The parties have fully briefed
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`their cross-motions for summary judgment (Docs. 40, 41, 47, 49), and the motions are ripe for
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`adjudication.
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`II.
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`STANDARD OF REVIEW
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`Summary judgment is proper when “the movant shows that there is no genuine dispute as
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`to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P.
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`56(a). The Court views the evidence in the light most favorable to the nonmoving party and
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`makes all reasonable inferences in favor of the nonmoving party. Matsushita Elec. Indus. Co.,
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`Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986); Nat’l Satellite Sports, Inc. v. Eliadis Inc.,
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`253 F.3d 900, 907 (6th Cir. 2001).
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`3
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`Case 3:20-cv-00382-TRM-HBG Document 54 Filed 10/20/21 Page 3 of 11 PageID #: 592
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`The moving party bears the burden of demonstrating that there is no genuine dispute as to
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`any material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986); Leary v. Daeschner, 349
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`F.3d 888, 897 (6th Cir. 2003). The moving party may meet this burden either by affirmatively
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`producing evidence establishing that there is no genuine issue of material fact or by pointing out
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`the absence of support in the record for the nonmoving party’s case. Celotex, 477 U.S. at 325.
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`Once the movant has discharged this burden, the nonmoving party can no longer rest upon the
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`allegations in the pleadings; rather, it must point to specific facts supported by evidence in the
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`record demonstrating that there is a genuine issue for trial. Chao v. Hall Holding Co., Inc., 285
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`F.3d 415, 424 (6th Cir. 2002).
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`At summary judgment, the Court may not weigh the evidence; its role is limited to
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`determining whether the record contains sufficient evidence from which a jury could reasonably
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`find for the non-movant. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248–49 (1986). A mere
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`scintilla of evidence is not enough; the Court must determine whether a fair-minded jury could
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`return a verdict in favor of the non-movant based on the record. Id. at 251–52; Lansing Dairy,
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`Inc. v. Espy, 39 F.3d 1339, 1347 (6th Cir. 1994). If not, the Court must grant summary
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`judgment. Celotex, 477 U.S. at 323.
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`The standard of review when parties file cross-motions for summary judgment is the
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`same as when only one party moves for summary judgment. Taft Broad. Co. v. United States,
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`929 F.2d 240, 248 (6th Cir. 1991). When there are cross-motions for summary judgment, the
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`court must “evaluate each party’s motion on its own merits, taking care in each instance to draw
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`all reasonable inferences against the party whose motion is under consideration.” Id. In
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`considering cross motions for summary judgment, the court is “not require[d] . . . to rule that no
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`fact issue exists.” Begnaud v. White, 170 F.2d 323, 327 (6th Cir. 1948).
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`4
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`III. ANALYSIS
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`Lesley and Griffith assert they are entitled to summary judgment on Joe Hand’s
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`copyright-infringement claim because Joe Hand did not own the copyright to the Event when it
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`was displayed at the Bar. (Doc. 41, at 1.) Further, Griffith asserts that he did not benefit
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`financially from the infringement and, therefore, cannot be held vicariously liable. (Id. at 9.) In
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`evaluating Lesley and Griffith’s motion, the Court draws all inferences in favor of the
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`nonmovant, Joe Hand. See Matsushita Elec. Indus., 475 U.S. at 587.
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`Lesley and Griffith contend that Joe Hand did not own the copyright at the time the Bar
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`broadcasted the Event, and, therefore, it lacks standing to bring an action for copyright
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`infringement. Lesley and Griffith claim that either (1) the Agreement between Joe Hand and
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`Showtime, the copyright owner, was merely an assignment of a right to sue, or, alternatively, that
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`(2) the Agreement was not retroactive to the date of the Event. (Doc. 41-1, at 7.)
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`To succeed on a claim for copyright infringement, the party alleging infringement must
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`prove ownership of a valid copyright. Bridgeport Music v. WM Music Corp., 508 F.3d 394, 398
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`(6th Cir. 2007); see also 17 U.S.C. § 201(d)(2). Ownership can be transferred through “an
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`assignment, mortgage, exclusive license, or any other conveyance, alienation, or hypothecation
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`of a copyright or of any of the exclusive rights comprised in a copyright.” 17 U.S.C. § 101.
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`Once ownership is established, section 201(d) provides that “[t]he owner of any particular
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`exclusive right is entitled, to the extent of that right, to all of the protection and remedies
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`accorded to the copyright owner.” 17 U.S.C. § 201(d)(2). This includes the right to bring an
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`action for infringement. See 17 U.S.C. § 501.
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`The Sixth Circuit has stated that even though federal law governs copyrights generally,
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`“state law is not displaced merely because [a] contract relates to intellectual property.” Cincom
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`5
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`Sys., Inc. v. Novelis Corp., 581 F.3d 431, 437 (6th Cir. 2009). So long as a federal copyright
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`policy is not affected, “state contract law will govern the interpretation of a license because a
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`license is merely a type of contract.” Id. (citing In re CFLC, 89 F.3d 673, 677 (9th Cir. 1996));
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`5 PATRY ON COPYRIGHT § 129 (2021). The same framework applies to the analysis of an
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`assignment agreement because it, too, is a type of contract. Because Lesley and Griffith’s
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`argument poses a question of contract interpretation, the Court will look to Tennessee law to
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`determine whether the Agreement in this case was retroactive to the date of the Event, keeping in
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`mind that “[a] copyright license [or assignment] must be construed in accordance with the
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`purposes underlying federal copyright law.” Oracle Am., Inc. v. Hewlett Packard Enter. Co.,
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`971 F.3d 1042, 1051 (9th Cir. 2020); see also Design Basics, LLC v. Chelsea Lumber Co., 977 F.
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`Supp. 2d 714, 730 (E.D. Mich. 2013).
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`The language of the contract is the starting point for ascertaining the parties’ intent.
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`Allstate Ins. Co. v. Watson, 195 S.W.3d 609, 611 (Tenn. 2006). “It is well-settled that the
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`language used in a contract must be taken and understood in its plain, ordinary, and popular
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`sense.” Fisher v. Revell, 343 S.W.3d 776, 779 (Tenn. Ct. App. 2009) (citing Bob Pearsall
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`Motors, Inc. v. Regal Chrysler-Plymouth, Inc., 521 S.W. 578 (Tenn. 1975)). “Provisions in a
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`contract should be construed in harmony with each other, if possible, to promote consistency and
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`to avoid repugnancy between the various provisions of a single contract.” Id. (quoting Guiliano
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`v. Cleo, Inc., 995 S.W. 2d, 88, 95 (Tenn. 1999)). Contract interpretation is typically a question
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`of law. Planters Gin Co. v. Fed. Compress & Warehouse Co., Inc., 78 S.W.3d 885, 890 (Tenn.
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`2002).
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`There is no dispute that Showtime is the original owner of the copyright to the Event.
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`(Doc. 40-2, at 1.) However, Lesley and Griffith assert that the Agreement between Showtime
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`6
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`and Joe Hand does not constitute a valid transfer of an exclusive right under the Copyright Act.
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`(Doc. 41-1, at 7.) Among the exclusive rights granted to copyright owners are the rights to
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`“reproduce the copyrighted work in copies or phonorecords,” “to distribute copies or
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`phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by
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`rental, lease, or lending,” and, in the case of “motion picture[s] and other audiovisual work[s], to
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`display the copyrighted work publicly.” 17 U.S.C. §§ 106(1), (3), (5). Among the rights
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`conveyed from Showtime to Joe Hand is “the exclusive right to distribute and perform the Event
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`live on August 26, 2017 to Commercial Premises in the Territory.” (Doc. 40-2, at 46.) The right
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`to “distribute and perform” the Event is within the bounds of the Copyright Act, 17 U.S.C. § 106,
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`and the transfer was conducted through a permissible method. Id. § 101. Consequently, the
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`Court will assume, for the purposes of this motion, that the Agreement assigned Joe Hand an
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`exclusive right under the Copyright Act, and, with it, the accompanying enforcement rights.
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`Nonetheless, the question remains whether Joe Hand owned any exclusive right at the
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`time of the live presentation of the Event in August 2017. “The legal or beneficial owner of an
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`exclusive right under a copyright is entitled . . . to institute an action for any infringement . . .
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`committed while he or she is the owner of it,” 17 U.S.C. § 501(b), so the determinative question
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`here is whether Joe Hand owned the copyright at the time of the Event. Lesley and Griffith
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`assert that, even if Joe Hand owns an exclusive right or rights under § 106, it did not own these
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`rights at the time of the Event because the Agreement was not executed until November 2017—
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`nearly three months after the Event was broadcast. (Doc. 40-2, at 46; Doc. 41-1, at 7.)
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`The Agreement provides that Joe Hand possesses “[t]he exclusive right to distribute and
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`publicly perform the Event live on August 26, 2017 to Commercial Premises in the Territory.”
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`(Doc. 40-2, at 46 (emphasis added).) “Live” is defined as “[b]roadcast while actually being
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`7
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`Case 3:20-cv-00382-TRM-HBG Document 54 Filed 10/20/21 Page 7 of 11 PageID #: 596
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`performed; not taped or recorded.” THE AM. HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE
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`1024 (4th ed. 2000) (emphasis added). The use of “live” therefore indicates that the Agreement
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`was meant to reach back to August 26, 2017, the date the Event was occurring and broadcasted
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`live.
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`However, the parties’ stated intent in forming this contract does not square with the
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`purposes, and the text, of the federal Copyright Act, which “does not permit copyright holders to
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`choose third parties to bring suits on their behalf.” ABKCO Music, Inc. v. Harrisongs Music,
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`Ltd., 944 F.2d 971, 980 (2d Cir. 1991). While the Sixth Circuit has not yet directly addressed
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`this question, other courts of appeals have held that the conveyance of a “bare right to sue” is
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`insufficient to convey standing for copyright infringement. See, e.g., John Wiley & Sons, Inc. v.
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`DRK Photo, 882 F.3d 394 (2d Cir. 2018); Silvers v. Sony Pictures Entertainment, Inc., 402 F.3d
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`881 (9th Cir. 2005). In John Wiley, the Second Circuit closely analyzed the text of the Copyright
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`Act and concluded that courts should not “inject an additional untethered right to sue” into the
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`exclusive rights granted by § 106. John Wiley, 882 F.3d at 406. The Ninth Circuit has likewise
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`stated that “the right to sue is not an exclusive right” under the Copyright Act. Silvers, 402 F.3d
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`at 884; see also ABKCO Music, 944 F.2d at 980 (noting that an “assignee is only entitled to bring
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`actions for infringements that were committed while it was the copyright owner and the assignor
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`retains the right to bring actions accruing during its ownership of the right, even if the actions are
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`brought subsequent to the assignment”).
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`The Agreement between Joe Hand and Showtime purportedly grants an exclusive right—
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`the exclusive right to perform the broadcast live on the date of the Event. It further grants the
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`right to initiate enforcement actions for the violation of the exclusive right. (Doc. 52, at 2.)
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`Lesley and Griffith, however, identify a troublesome wrinkle: the Agreement was not executed
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`8
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`Case 3:20-cv-00382-TRM-HBG Document 54 Filed 10/20/21 Page 8 of 11 PageID #: 597
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`until November 2017, three months after the Event. Consequently, while the Agreement does
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`not convey an “untethered” or “bare” right to sue, it is no more than a thinly-veiled attempt to
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`evade the carefully drawn congressional boundaries delineating the right to sue for copyright
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`infringement. See 17 U.S.C. § 501(b); see also Righthaven LLC v. Hoehn, 716 F.3d 1166, 1169
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`(9th Cir. 2013) (holding that assignments for the purposes of prosecuting infringement suits
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`“after the alleged infringements occurred, but before [plaintiff] filed [the] suits” was insufficient
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`to confer standing under the Copyright Act, even after the parties executed a subsequent
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`agreement indicating that the assignment “convey[ed] all ownership rights in” the works);
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`HyperQuest, Inc. v. N’Site Solutions, Inc., 632 F.3d 377 (7th Cir. 2011) (“It is the substance of
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`the agreement, not the labels that it uses, that controls our analysis.”).
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`The exclusive right to perform the Event live is utterly meaningless once the Event has
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`already occurred, and, thus, can never be performed “live” again. And Showtime did not assign
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`any additional prospective or derivative rights in the Event that allow the Court to reach another
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`conclusion regarding the value of the transfer. See Righthaven, 716 F.3d at 1169 (“When
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`determining whether a contract has transferred exclusive rights, we look not just at the labels the
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`parties use but also the substance and effect of the contract.”). Even drawing all inferences in
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`favor of Joe Hand, the Court must conclude that this Agreement would, if effectuated, merely
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`enable Joe Hand to prosecute infringement actions and was not intended to convey any
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`meaningful exclusive rights under the Copyright Act.
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`Had this Agreement been executed prior to the Event, it is quite probable that Joe Hand
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`would be able to maintain this suit. However, the Agreement was executed months after the
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`Event, and, as a result, the Court concludes that the Agreement is a disguised assignment of the
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`right to sue. See DRK Photo v. McGraw-Hill Global Educ. Holdings, LLC, 870 F.3d 978, 985
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`9
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`Case 3:20-cv-00382-TRM-HBG Document 54 Filed 10/20/21 Page 9 of 11 PageID #: 598
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`(9th Cir. 2017) (“[T]he purported transfer of legal title coupled with the transfer of accrued
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`claims does not confer standing when the transaction, in substance and effect, merely transfers
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`the right to sue.” (internal citations omitted)). The Court is cognizant of the fact that it is
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`rendering the conveyance of the exclusive right to perform the Event live valueless, a disfavored
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`outcome under Tennessee principles of contract interpretation. See Lovett v. Cole, 584 S.W.3d
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`840, 861 (Tenn. Ct. App. 2019) (noting that “the law of contract interpretation militates against
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`interpreting a contract in a way that renders a provision superfluous” (citing Crossville Med.
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`Oncology, P.C. v. Glenwood Sys., LLC, 610 Fed. App’x 464, 468 (6th Cir. 2015))). However,
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`allowing Joe Hand to maintain this suit would ignore the plain language of the Copyright Act
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`and would invite parties to frustrate Congress’s intent with mere clever drafting, no matter how
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`metaphysically impossible it is to retroactively obtain an exclusive right to something that could
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`only have existed in the past: the right to display the Event “live.” Lesley and Griffith are
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`correct: there is absolutely no evidence that Joe Hand owned an exclusive right at the time of the
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`infringement on August 26, 2017. Therefore, it cannot maintain this action for infringement
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`against Lesley and Griffith. 17 U.S.C. § 501(b). There is nothing left for a jury to determine.
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`See Planters Gin, 78 S.W.3d at 890 (after a court “decid[es] the legal effect of the words, there is
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`no genuine factual question left for the jury to decide.”). Therefore, the Court GRANTS Lesley
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`and Griffith’s motion for summary judgment (Doc. 41) and DENIES Joe Hand’s motion for
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`partial summary judgment (Doc. 39). Because the Court denies Joe Hand’s motion for summary
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`judgment, it is unnecessary to analyze Defendants’ motion for sanctions, as Lesley and Griffith
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`seek only the exclusion of certain evidence as a sanction.
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`IV. CONCLUSION
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`For the foregoing reasons:
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`Case 3:20-cv-00382-TRM-HBG Document 54 Filed 10/20/21 Page 10 of 11 PageID #: 599
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`1. Defendants’ motion for sanctions (Doc. 48) is DENIED.
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`2. Defendants’ motion for summary judgment (Doc. 41) is GRANTED.
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`3. Plaintiff’s motion for partial summary judgment (Doc. 39) is DENIED.
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`AN APPROPRIATE JUDGMENT SHALL ENTER.
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`/s/ Travis R. McDonough
`TRAVIS R. MCDONOUGH
`UNITED STATES DISTRICT JUDGE
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`11
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