TKO: Standing argument in copyright case falls
April / May 2023 IP Newsletter
A copyright owner can’t give someone an exclusive enforceable right in a live event after the event has already occurred, right? That’s what the defendants in Joe Hand Promotions, Inc. v. Griffith recently contended. But their argument fell short in light of some special circumstances.
The case arose out a sporting event known as “The Fight,” between boxer Floyd Mayweather and mixed martial arts fighter Conor McGregor, produced by Showtime Inc. Showtime sold individual viewers $99.99 personal use licenses to livestream the event on a personal device in a noncommercial setting. It also licensed commercial streaming to public establishments, such as bars and restaurants.
In June 2017, Showtime contracted with Mayweather Productions LLC to arrange, present and promote the fight. Mayweather, in turn, enlisted smaller distributors, including Joe Hand Promotions (JHP), to issue commercial licenses and collect fees. In a licensing agreement entered on August 1, 2017, it gave JHP the sole and exclusive license to distribute and authorize the public exhibition of the fight in a designated geographic area.
The fight wasn’t registered with the U.S. Copyright Office when it first aired on August 26, 2017. Showtime applied to register its copyright about two months later, and the copyright was issued on October 26, 2017.
On November 21, 2017, Showtime entered into a contract with JHP (Copyright Agreement), giving JHP the exclusive right to distribute and publicly perform the fight live on the day of the event, even though the event had already occurred. The agreement also gave JHP the exclusive right to sue anyone who livestreamed the fight without paying the required licensing fee. Mayweather, though not a party to the contract, also signed.
JHP subsequently sued several bars and restaurants that aired the fight without paying, including the owners of a bar who purchased a personal license for the fight and used an HDMI cable to connect a personal device to the TV at the bar and broadcast it. The bar advertised the event and charged patrons $6 to watch it.
The trial court dismissed the case against these owners. It held that JHP didn’t have the standing to sue because it didn’t own the copyright on the day the fight aired. It found the Copyright Agreement was essentially a sham because it purported to transfer an exclusive right in an event that had already occurred. JHP appealed to the U.S. Court of Appeals for the Sixth Circuit.
The author of a protected work is the original owner of a copyright and holds certain “exclusive rights” enumerated in Section 106 of the Copyright Act. The Sixth Circuit noted that some dispute exists over whether the list of exclusive rights extends beyond those identified in Sec. 106.
But the court also pointed out the special treatment the Copyright Act extends to live broadcasts. Specifically, the law allows an owner to sue for infringement of an unregistered copyright as long as it registers the copyright within three months of the broadcast. As the court explained, though registration is normally a requirement to sue, registration isn’t a condition of copyright protection — meaning copyright protection can arise before registration occurs.
The court concluded that the Copyright Agreement gave JHP an enforceable right to sue the bar owners. That agreement, it found, formalized the series of earlier agreements under which JHP exclusively licensed and distributed the fight to commercial establishments before it aired. Viewing all of the agreements together, the Copyright Agreement merely intended to reiterate that JHP’s existing exclusive license in the live right remained intact after the formal registration.
Saved by the bell
According to the court, Showtime, Mayweather and JHP essentially came together after the registration and concluded in the Copyright Agreement that the registration changed nothing other than the copyright’s status. The nature of the three parties’ exclusive rights and interests remained untouched, so JHP had standing to sue for infringement.