1

RECOMMENDED FOR FULL-TEXT PUBLICATION

Pursuant to Sixth Circuit Rule 206

ELECTRONIC CITATION: 2004 FED App. 0233P (6th Cir.)

File Name: 04a0233p.06

UNITED STATES COURT OF APPEALS

FOR THE SIXTH CIRCUIT

_________________

BRIDGEPORT MUSIC, INC.,

Plaintiff-Appellant,

SOUTHFIELD MUSIC, INC.;

WESTBOUND RECORDS, INC.;

NINE RECORDS, INC.,

Plaintiffs,

v.

RHYME SYNDICATE MUSIC;

UNIVERSAL-POLYGRAM

INTERNATIONAL PUBLISHING,

INC., individually and as

successor to Polygram

International Publishing, Inc.;

CARRUMBA MUSIC; AMMO

DUMP MUSIC,

Defendants-Appellees,

WB MUSIC CORP.; WARNERCHAPPELL MUSIC, INC.;

RHYME SYNDICATE RECORDS,

Defendants.

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Nos. 03-5005/5744

2 Bridgeport Music, et al. v. Rhyme

Syndicate Music, et al.

Nos. 03-5005/5744

*

The Honorable Judith M. Barzilay, Judge for the United States Court

of International Trade, sitting by designation.

Appeal from the United States District Court

for the Middle District of Tennessee at Nashville.

No. 01-00706—Thomas A. Higgins, District Judge.

Argued: April 28, 2004

Decided and Filed: July 22, 2004 

Before: GUY and GILMAN, Circuit Judges;

BARZILAY, Judge.*

_________________

COUNSEL

ARGUED: Richard S. Busch, KING & BALLOW,

Nashville, Tennessee, for Appellant. Russell J. Frackman,

MITCHELL, SILBERBERG & KNUPP, Los Angeles,

California, for Appellees. ON BRIEF: Richard S. Busch,

D’Lesli M. Davis, KING & BALLOW, Nashville, Tennessee,

for Appellant. Russell J. Frackman, Jeffrey D. Goldman,

Marc E. Mayer, MITCHELL, SILBERBERG & KNUPP, Los

Angeles, California, Philip M. Kirkpatrick, STEWART,

ESTES & DONNELL, Nashville, Tennessee, for Appellees.

GUY, J., delivered the opinion of the court, in which

BARZILAY, J., joined. GILMAN, J. (pp. 23-24), delivered

a separate opinion concurring in part and dissenting in part.
Nos. 03-5005/5744 Bridgeport Music, et al. v. Rhyme

Syndicate Music, et al.

3

1

Bridgeport appealed from the entry of summary judgment in favor

of defendants WB Music and Warner/Chappell Music, but voluntarily

dismissed the appeal against them as a result of a settlement. Also, no

distinct claims of error have been argued with respect to Rhyme Syndicate

Music.

_________________

OPINION

_________________

RALPH B. GUY, JR., Circuit Judge. Plaintiff, Bridgeport

Music, Inc., appeals from the district court’s orders

(1) granting summary judgment to defendant UniversalPolyGram International Publishing, Inc. (UPIP), on

Bridgeport’s copyright infringement claims; (2) dismissing

defendants Carrumba Music and Ammo Dump Music without

prejudice for lack of proper service of process; and

(3) awarding attorney fees and costs to UPIP as a prevailing

defendant under 17 U.S.C. § 505. No other claims or parties

are before us.

1

 After review of the record and the arguments

presented on appeal, we affirm both the entry of summary

judgment and the dismissals for lack of service. With respect

to Bridgeport’s separate appeal from the award of attorney

fees and costs to UPIP, however, we vacate the award and

remand for further consideration consistent with this opinion.

I.

The claims at issue in this appeal were first asserted on

May 4, 2001. In that original complaint, Bridgeport and three

sister companies alleged nearly 500 counts against

approximately 800 defendants for copyright infringement and

other state law claims arising from music sampling. The

amended complaint, filed after the district court severed the

initial pleading into 476 separate actions, was based on the

claim that the rap song “99 Problems” sampled the opening

three-note chord from the musical composition “Get Off Your

4 Bridgeport Music, et al. v. Rhyme

Syndicate Music, et al.

Nos. 03-5005/5744

2

The term “sampling” typically refers to the copying of a portion of

a master sound recording and using it in the making of a new work.

Bridgeport Music, Inc. v. Still N The Water Publ’g, 327 F.3d 472, 475 n.2

(6th Cir.), cert. denied, 124 S. Ct. 399 (2003). Use of a sample from a

master recording implicates two distinct copyrights: one in the musical

composition and one in the sound recording itself. Id. at n.3. When the

sample is an interpolation, meaning the master sound recording is not

used, only the composition copyrights are implicated.

Ass and Jam” (“Get Off”).2 Bridgeport Music is in the

business of owning and exploiting copyrights in musical

compositions. We assume for purposes of this appeal that

Bridgeport would be able to establish that it owns the

composition “Get Off,” which was written and recorded by

George Clinton, Jr., and the Funkadelics in the mid-1970s.

A. Background Facts

The song “99 Problems” was co-written and performed by

Tracy Marrow, p/k/a Ice-T, for release on the album “Home

Invasion.” At that time, Marrow, d/b/a Rhyme Syndicate

Music, owned 66.7% of the composition copyright in “99

Problems.” AlphonsoHenderson, p/k/a DJ Aladdin, co-wrote

“99 Problems.” The album was released by Priority Records

on March 23, 1993. While a mechanical license was probably

granted for use of the composition “99 Problems,” there was

no evidence presented in that regard.

More than a year later, UPIP obtained an interest in the

composition through its predecessor, PolyGram International

Publishing, Inc., by assignment from Marrow, d/b/a Rhyme

Syndicate Music. Specifically, in November 1994, Marrow

entered into several agreements with PolyGram, including an

Exclusive Songwriter’s Agreement and a Co-Publishing

Agreement covering past and future works. As part of these

agreements, PolyGram acquired half of Marrow’s interest in

the composition “99 Problems” (or 33.34%), as well as the

exclusive right to administer their combined interests and
Nos. 03-5005/5744 Bridgeport Music, et al. v. Rhyme

Syndicate Music, et al.

5

collect and distribute royalties. The copyright registration

reflecting this transfer listed the copyright claimants as

PolyGram, Rhyme Syndicate Music, WB Music, Carrumba

Music, and Ammo Dump Music. The record does not reflect

when UPIP succeeded PolyGram.

On January 7, 1998, Bridgeport’s administrator, Jane

Peterer, notified UPIP and others of its sampling claim and

demanded that Bridgeport be granted a 33.33% ownership

interest in the musical composition “99 Problems.” UPIP did

not respond, but Warner/Chappell Music denied any samples

were used on the “Home Invasion” album.

B. Procedural Facts

This action was commenced May 4, 2001, more than three

years after Bridgeport had actual notice of the alleged

infringement. Plaintiffs attempted to effect service of process

on Carrumba Music and Ammo Dump Music through

Warner/Chappell Music. Bridgeport also attempted to serve

Carrumba Music at an address that was the office of

Carrumba’s accounting firm.

Carrumba Music moved to dismiss both for failure of

service and for lack of personal jurisdiction, while Bridgeport

filed a motion for default judgment against Ammo Dump

Music. The district court granted Carrumba’s motion, denied

Bridgeport’s motion for default judgment, and dismissed

Carrumba Music and Ammo Dump Music without prejudice

pursuant to Fed. R. Civ. P. 4(m). Bridgeport’s subsequent

motion for reconsideration was denied.

Defendants Warner/Chappell Music and WB Music

(Warner defendants) moved for summary judgment on several

grounds. In August 2002, after considerable briefing and

supplementation, the magistrate judge issued a report and

recommendation in which he concluded that the infringement

claims against the Warner defendants should be dismissed

6 Bridgeport Music, et al. v. Rhyme

Syndicate Music, et al.

Nos. 03-5005/5744

3

UPIP also argued that Bridgeport could not prevail on its

infringement claims either because the sampled three-note chord was not

entitled to copyright protection, or because the use of the sample from the

composition was de minimis. We do not reach the questions of originality

or de minimis use.

because they were barred both by a release as part of a

settlement of prior litigation and by the applicable three-year

statute of limitations. As part of that decision, the magistrate

judge indicated that although the Warner defendants had

issued a license for the release of “99 Problems” in 1993, the

only acts by the Warner defendants within the limitations

period were the receipt of royalties on the sale of the album.

Recognizing that there was no case law on the question, the

magistrate judge concluded that the receipt of income from

the sale of infringing products within the limitations period,

by a party who does not manufacture, distribute, or sell the

infringing product (but who did provide a license), would not

constitute direct or contributory infringement.

The district court adopted the report and recommendation,

over plaintiffs’ objections, and granted summary judgment to

the Warner defendants on September 16, 2002. Because

Bridgeport has settled with the Warner defendants, that order

is no longer before us on appeal. It remains pertinent,

however, to the district court’s decision to award UPIP

attorney fees and costs incurred after September 16, 2002.

UPIP had also moved for summary judgment, arguing,

inter alia, that Bridgeport’s claims were barred, or

alternatively, limited by the statute of limitations.

3

 While the

motion was pending, UPIP wrote to Bridgeport and proposed

that they stipulate to judgment in favor of UPIP based on the

magistrate judge’s recommendation concerning the Warner

defendants’ motion for summary judgment. Bridgeport did

not respond. Once the district court granted summary

judgment to the Warner defendants, UPIP obtained leave to
Nos. 03-5005/5744 Bridgeport Music, et al. v. Rhyme

Syndicate Music, et al.

7

supplement its motion for summary judgment. Bridgeport

responded in opposition on October 4, 2002. The district

court granted summary judgment to UPIP on November 7,

2002, finding that Bridgeport failed to demonstrate direct,

contributory, or vicarious infringement by UPIP within the

limitations period. Judgment was entered accordingly, and

Bridgeport appealed.

In a post-judgment motion, UPIP moved for an award of

$297,292.60 in attorney fees and $16,119.22 in nontaxable

costs as a prevailing party under 17 U.S.C. § 505. On May 6,

2003, the district court awarded UPIP $79,340.94 in attorney

fees and $3,409.35 in costs, which represented the fees and

costs incurred by UPIP after September 16, 2002. Bridgeport

appealed.

II.

In its first claim of error, Bridgeport argues that there was

a question of fact whether UPIP committed acts within the

limitations period for which it could be liable for copyright

infringement. We review the district court’s decision to grant

summary judgment de novo. Smith v. Ameritech, 129 F.3d

857, 863 (6th Cir. 1997). In deciding a motion for summary

judgment, the court must view the evidence and reasonable

inferences in the light most favorable to the nonmoving party.

Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S.

574, 587 (1986). The nonmoving party may not rest on his

pleadings, but must come forward with evidence from which

a rational trier of fact could find in his favor. Anderson v.

Liberty Lobby, Inc., 477 U.S. 242, 249 (1986).

A. Copyright Infringement

A civil action under the Copyright Act must be

“commenced within three years after the claim accrued.”

17 U.S.C. § 507(b). A cause of action accrues when a

plaintiff knows of the infringement or is chargeable with such

8 Bridgeport Music, et al. v. Rhyme

Syndicate Music, et al.

Nos. 03-5005/5744

knowledge. Roley v. New World Pictures, Ltd., 19 F.3d 479,

481 (9th Cir. 1994). Because each act of infringement is a

distinct harm, the statute of limitations bars infringement

claims that accrued more than three years before suit was

filed, but does not preclude infringement claims that accrued

within the statutory period. Id.; Stone v. Williams, 970 F.2d

1043, 1049-50 (2d Cir. 1992); Hoste v. Radio Corp. of Am.,

654 F.2d 11, 11 (6th Cir. 1981) (per curiam); Mount v. Bookof-the-Month Club, Inc., 555 F.2d 1108, 1110-11 (2d Cir.

1977).

It is undisputed that Bridgeport had actual knowledge of its

infringement claims with respect to “99 Problems” more than

three years before this action was filed and, therefore, claims

arising prior to May 4, 1998, are barred by the statute of

limitations. For this reason, our focus must be on whether

Bridgeport established any acts within the period for which

UPIP could be held liable as a direct infringer, a contributory

infringer, or as one vicariously liable for the acts of another.

Liability for direct infringement arises from the violation of

any one of the exclusive rights of a copyright owner.

17 U.S.C. § 501(a). The owner of copyright in a musical

composition has the exclusive right to, and to authorize others

to, reproduce, distribute, perform, display, and prepare

derivative works from the copyrighted composition.

17 U.S.C. § 106. Liability for contributory infringement is

based on the defendant’s relationship to the direct

infringement. Ez-Tixz, Inc. v. Hit-Tix, Inc., 919 F. Supp. 728,

732-33 (S.D.N.Y. 1996). Contributory infringement occurs

when one, “with knowledge of the infringing activity,

induces, causes, or materially contributes to the infringing

conduct of another.” Gershwin Publ’g Corp. v. Columbia

Artists Mgmt., Inc., 443 F.2d 1159, 1162 (2d Cir. 1971). A

defendant can be held vicariously liable if he enjoys a direct

financial benefit from the infringing activity and “has the

right and ability to supervise” the infringing activity. Ellison
Nos. 03-5005/5744 Bridgeport Music, et al. v. Rhyme

Syndicate Music, et al.

9

v. Robertson, 357 F.3d 1072, 1076 (9th Cir. 2004) (internal

quotation marks and citation omitted).

B. Analysis

The district court seems to have assumed that UPIP granted

a mechanical license for use of the composition “99

Problems” on the “Home Invasion” album and received

royalties from the sale of the album within the limitations

period. With that assumption, the district court then found

that no direct infringement could be established because there

was no evidence either that Bridgeport ever demanded that

UPIP revoke its license because of the claimed infringement,

or that UPIP had the right to revoke the license for this

reason. It also found, consistent with its earlier decision

relating to the Warner defendants, that UPIP’s passive receipt

of income alone could not constitute contributory

infringement. Finally, vicariousliability was rejected because

there was no showing that UPIP had control over a direct

infringer.

After close examination of the record, we find a complete

absence of proof connecting UPIP either to the distribution

and sale of the album or to the performance of the allegedly

infringing work within the limitations period. We affirm on

this basis and do not reach the question of whether a publisher

may be found liable for infringing sales occurring within the

limitations period when its only actions were the granting of

a license outside the period and the receipt of royalty

payments under that license within the limitations period.

Bridgeport has also failed to demonstrate a basis to find UPIP

vicariously liable for the acts of a direct infringer.

1. Mechanical License

Bridgeport repeatedly emphasizes that there was

evidence that the “Home Invasion” album continued to

10 Bridgeport Music, et al. v. Rhyme

Syndicate Music, et al.

Nos. 03-5005/5744

4

Specifically, there was evidence that over 300,000 copies of the

“Home Invasion” album were sold since its release in 1993. With respect

to the relevant period, Bridgeport also indicates in a footnote that a latediscovered Chart History showed that 2,377 copies of “99 Problems” sold

between May 4, 1998, and May 4, 2001.

be sold and offered for sale after May 4, 1998.4 There is

no claim, however, that UPIP was directly involved in the

manufacture, distribution, or sale of the album. Nor is there

evidence from which a rational trier of fact could conclude

that UPIP ever granted a mechanical license for use of the

composition “99 Problems” on the “Home Invasion” album.

UPIP became a co-owner of the composition more than a year

after the album’s release and has flatly denied ever granting

a license for the use of the composition. Specifically, UPIP

offered the affidavit of Edward Arrow, a vice-president of

copyrights, attesting that there is no record that UPIP ever

issued any mechanical, performance, synchronization,

sheet/music or other licenses, or distributed or otherwise

exploited sheet music for the musical composition “99

Problems.” Arrow also stated that UPIP never controlled the

sale, distribution, or public performance of the “Home

Invasion” album; the issuance of blanket performance

licenses; or the apportionment of fees generated by such

licenses.

In addition, UPIP’s records showed that it did not receive

any mechanical royalties for the sale of “99 Problems.” In

fact, Anthony Sarageueta, vice-president of royalties,

testified that while UPIP would seem to have a right to

mechanical royalties, he could not explain without conducting

further research why UPIP had not received any such

royalties. The burden was on Bridgeport to follow up with

further discovery in its attempt to connect UPIP to the

distribution and sale of the album. Neither UPIP’s status as

a co-owner of the composition, nor its contractual right to

administer the composition and receive and distribute
Nos. 03-5005/5744 Bridgeport Music, et al. v. Rhyme

Syndicate Music, et al.

11

royalties, is sufficient to create a genuine issue of fact whether

UPIP received mechanical royalties.

Since Bridgeport failed to make a showing that UPIP

granted a license, received any royalties from the sale of the

album, or had any connection to the distribution and sale of

the album within the limitations period, summary judgment

was properly entered in favor of UPIP on the claims of direct

and contributory infringement. Similarly, Bridgeport’s claim

of vicarious liability is based solely on the allegation that

UPIP granted a mechanical license to the record label and had

the right (through the contracts with Marrow) to administer

the composition. The record fails to demonstrate UPIP’s

connection to, much less the ability to supervise or control,

the infringing activity.

2. Performance Royalties

Bridgeport contends that the undisputed evidence in the

record establishes that “99 Problems” was publicly performed

after May 4, 1998, as a direct result of licenses granted by

UPIP even if they were granted outside the limitations period.

On the contrary, the only thing established by the evidence

was that UPIP received $0.81 in performance royalties after

May 4, 1998. Specifically, UPIP received a total of $14.91 in

performance royalties related to the public performance of

“99 Problems,” of which only $0.81 was received after

May 4, 1998.

A composition copyright owner has the exclusive right to

perform, or authorize the performance of, a copyrighted

composition. 17 U.S.C. § 106(4). A claim for infringement

of this right requires proof that the composition was publicly

performed without having obtained permission. See Jobete

Music Co. v. Johnson Communications, Inc., 285 F. Supp.2d

1077, 1082 (S.D. Ohio 2003). Because Bridgeport failed to

show that any public performance occurred after May 4,

1998, there was no evidence of an infringing act within the

12 Bridgeport Music, et al. v. Rhyme

Syndicate Music, et al.

Nos. 03-5005/5744

5

Bridgeport also argues that even if UPIP did not actually license use

of the composition, UPIP may be liable as a direct infringer for offering

to license the work within the limitations period. None of the cases relied

upon by Bridgeport involved the offering to license a work. See Hotaling

v. Church of Jesus Christ of Latter-Day Saints, 118 F.3d 199, 203 (4th

Cir. 1997) (public library distributes infringing work when it adds the

work to its collection, lists it in the catalog, and makes it available for

borrowing by the public); Repp v. Webber, 914 F. Supp. 80, 84 (S.D.N.Y.

1996) (alleged infringer distributed the infringing work and granted

licenses to third parties to reproduce the infringing work); Johnson v.

Radio City Prods., Inc., No. 97 CIV. 4099 (JSR), 1998 WL 171463

(S.D.N.Y. 1998) (question of fact whether there was a performance

license and whether performances were authorized under the license).

limitations period either by UPIP, or to which UPIP could be

liable under theories of contributory infringement or vicarious

liability.

5

For the above reasons, we affirm the entry of summary

judgment in favor of UPIP on Bridgeport’s claims of

copyright infringement.

III.

Bridgeport alleged that Ammo Dump Music and Carrumba

Music, the d/b/a of Jorge Hinojosa, are publishers with an

interest in the composition “99 Problems.” The district court

dismissed the action against both Ammo Dump Music and

Carrumba Music for lack of proper service of process. If

service of the summons and complaint is not made upon a

defendant within 120 days after the filing of the complaint,

the court, upon motion or on its own initiative, shall dismiss

the action without prejudice as to that defendant or direct that

service be effected within a specified time. FED. R. CIV. P.

4(m). We exercise plenary review over legal issues involving

the adequacy of service but review the relevant findings of

fact for clear error. LSJ Inv. Co. v. O.L.D., Inc.,167 F.3d 320,

322 (6th Cir. 1999). Actual knowledge of a lawsuit does not

substitute for proper service under Fed. R. Civ. P. 4.
Nos. 03-5005/5744 Bridgeport Music, et al. v. Rhyme

Syndicate Music, et al.

13

6

Fed. R. Civ. P. 4(h) provides that:

(h) Service Upon Corporations and Associations. Unless

otherwise provided by federal law, service upon a domestic or

foreign corporation or upon a partnership or other

unincorporated association that is subject to suit under a

common name, and from which a waiver of service has not been

obtained and filed, shall be effected:

(1) in a judicial district of the United States in the manner

prescribed for individuals by subdivision (e)(1), or by delivering

a copy of the summons and of the complaint to an officer, a

managing or general agent, or to any other agent authorized by

appointment or by law to receive service of process and, if the

agent is one authorized by statute to receive service and the

statute so requires, by also mailing a copy to the defendant, or

(2) in a place not within any judicial district of the United

States in any manner prescribed for individuals by subdivision

(f) except personal delivery as provided in paragraph (2)(C)(i)

thereof.

A. Ammo Dump Music

Despite having been advised by Warner/Chappell that it

was not authorized to accept service for Ammo Dump Music

or Carrumba Music, Bridgeport attempted to serve the

amended complaint on Ammo Dump Music through

Warner/Chappell by mailing it to CT Corporation Systems,

which is authorized to accept service on behalf of

Warner/Chappell. Bridgeport contends that it properly served

Ammo Dump Music by serving a “managing agent” as

permitted by Fed. R. Civ. P. 4(h)(1).6

A managing agent is one authorized to transact all business

of a particular kind at a particular place and must be vested

with powers of discretion rather than being under direct

superior control. See Grammenos v. Lemos, 457 F.2d 1067,

1073 (2d Cir. 1972). Another factor to consider is the

exclusivity of the relationship between Warner/Chappell and

14 Bridgeport Music, et al. v. Rhyme

Syndicate Music, et al.

Nos. 03-5005/5744

Ammo Dump Music. See Dodco, Inc. v. Am. Bonding Co., 7

F.3d 1387, 1388-89 (8th Cir. 1993) (salesman did not

exclusively represent the defendant). In support of its claim

that Warner/Chappell is a managing agent for Ammo Dump

Music, Bridgeport relies on the affidavit of Ed Pierson, an

executive vice-president for Warner/Chappell, that was filed

in opposition to Bridgeport’s motion for entry of default

judgment against Ammo Dump Music. 

Pierson stated that Warner/Chappell works as a limited

agent for thousands of writers and their publishing entities,

but has never been authorized to accept service of process on

behalf of a writer or publishing company. Generally,

Warner/Chappell issues licenses to companies that want to

use musical compositions in television, movies, video games,

and the like. It collects the income generated from such

licenses and distributes the royalty shares to the writers and/or

their publishing entities. There was no evidence in the record

concerning the amount of discretion Warner/Chappell can

exercise with respect to the licensing of works owned by

Ammo Dump Music. See Jennings v. McCall Corp., 320

F.2d 64 (8th Cir. 1963) (salesman was not managing agent

where he was hired to secure new accounts but did not have

discretion to establish prices, terms, or conditions of contracts

and whose orders were subject to company approval).

Because Bridgeport failed to come forward with evidence

supporting a finding that Warner/Chappell was a managing

agent of Ammo Dump Music for purposes of Fed. R. Civ. P.

4(h)(1), the district court did not err by dismissing the action

against Ammo Dump Music for lack of proper service of

process.

B. Carrumba Music

Service on Carrumba Music, the d/b/a for Jorge Hinojosa,

is governed by Fed. R. Civ. P. 4(e), the provision for service
Nos. 03-5005/5744 Bridgeport Music, et al. v. Rhyme

Syndicate Music, et al.

15

7

Fed. R. Civ. P. 4(e) states:

(e) Service Upon Individuals Within a Judicial District

of the United States. Unless otherwise provided by federal law,

service upon an individual from whom a waiver has not been

obtained and filed, other than an infant or an incompetent

person, may be effected in any judicial district of the United

States:

(1) pursuant to the law of the state in which the

district court is located, or in which service is effected,

for the service of a summons upon the defendant in an

action brought in the courts of general jurisdiction of

the State; or

(2) by delivering a copy of the summons and of the

complaint to the individual personally or by leaving

copies thereof at the individual's dwelling house or

usual place of abode with some person of suitable age

and discretion then residing therein or by delivering a

copy of the summons and of the complaint to an agent

authorized by appointment or by law to receive service

of process.

of process on individuals.

7

 Rule 4(e) permits service pursuant

to the law of the state in which service is effected, which in

this case is California because Hinojosa is a resident of

California. See LSJ Inv., 167 F.3d at 322-23. Under

California law, service on an individual may be effected as

follows:

If a copy of the summons and complaint cannot with

reasonable diligence be personally delivered to the

person to be served, as specified in Section 416.60,

416.70, 416.80, or 416.90, a summons may be served by

leaving a copy of the summons and complaint at the

person’s dwelling house, usual place of abode, usual

place of business, or usual mailing address other than a

United States Postal Service post office box, in the

presence of a competent member of the household or a

16 Bridgeport Music, et al. v. Rhyme

Syndicate Music, et al.

Nos. 03-5005/5744

person apparently in charge of his or her office, place of

business, or usual mailing address other than a United

States Postal Service post office box, at least 18 years of

age, who shall be informed of the contents thereof, and

by thereafter mailing a copy of the summons and of the

complaint by first-class mail, postage prepaid to the

person to be served at the place where a copy of the

summons and complaint were left. Service of a summons

in this manner is deemed complete on the 10th day after

the mailing.

CAL. CIV. PROC. CODE § 415.20(b) (West 2004).

Bridgeport attempted to serve Carrumba Music by leaving

the summons and amended complaint with a receptionist at

the office of Provident Financial Management in Los

Angeles, California. Provident is an accounting firm retained

by Carrumba Music to perform routine bookkeeping and

accounting functions limited to tasks such as paying bills,

receiving and depositing checks, preparing taxes, and keeping

Carrumba Music’s books and records. Provident was not

authorized to accept service of process on behalf of Carrumba

Music.

Bridgeportfailed to show compliance with California’s rule

for service of process on individuals because it offered no

basis to conclude that the Los Angeles address for Provident

was the usual place of business or usual mailing address of

Carrumba Music. See LSJ Inv. Co., 167 F.3d at 323 (office

was location repeatedly given by defendant as the address for

his business and himself). Accordingly, we find no error in

the dismissal of Carrumba Music for lack of service of

process.

IV.

Turning next to Bridgeport’s separate appeal, we review the

district court’s decision to award $79,340.94 in attorney fees
Nos. 03-5005/5744 Bridgeport Music, et al. v. Rhyme

Syndicate Music, et al.

17

8

“In any civil action under this title, the court in its discretion may

allow the recovery of full costs by or against any party other than the

United States or an officer thereof. Except as otherwise provided by this

title, the court may also award a reasonable attorney’s fee to the

prevailing party as part of the costs.” 17 U.S.C. § 505.

and $3,409.35 in nontaxable costs to UPIP for abuse of

discretion. Coles v. Wonder, 283 F.3d 798, 804 (6th Cir.

2002); Murray Hill Publ’ns, Inc. v. ABC Communications,

264 F.3d 622, 639 (6th Cir. 2001). The Copyright Act

provides that in civil suits the district court, in its discretion,

may award costs, including reasonable attorney fees, to the

prevailing party. 17 U.S.C. § 505.8 This discretion must be

exercised in an evenhanded manner with respect to prevailing

plaintiffs and prevailing defendants, and in a manner

consistent with the primary purposes of the Copyright Act.

Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994).

While rejecting both a “dual standard” under which

prevailing defendants are required to show frivolousness or

bad faith and the “British Rule” of automatic recovery of

attorney fees by the prevailing party, the Court in Fogerty

explained that “‘[t]here is no precise rule or formula for

making thesedeterminations,’ but instead equitable discretion

should be exercised ‘in light of the considerations we have

identified.’” Id. at 534 (citation omitted). Several

nonexclusive factors were approved by the Court in Fogerty

for consideration in making awards to prevailing parties, as

long as the factors were “faithful to the purposes of the

Copyright Act and are applied to prevailing plaintiffs and

defendants in an evenhanded manner.” Id. at 534 n.19.

Those factors include “‘frivolousness, motivation, objective

unreasonableness (both in the factual and legal components

of the case) and the need in particular circumstances to

advance considerations of compensation and deterrence.’” Id.

(quoting Lieb v. Topstone Indus. Inc., 788 F.2d 151, 156 (3d

Cir. 1986)). As the district court observed, the factors need

18 Bridgeport Music, et al. v. Rhyme

Syndicate Music, et al.

Nos. 03-5005/5744

not all weigh in favor of an award in order to grant fees to a

prevailing party and other factors may be considered.

Separate summary judgment motions were filed by UPIP

and the Warner defendants. After the magistrate judge issued

his decision recommending that summary judgment be

granted to the Warner defendants on August 5, 2002, UPIP

wrote to Bridgeport and urged that Bridgeport stipulate to the

entry of summary judgment in favor of UPIP. That letter,

dated August 23, 2002, stated in part that:

Despite lengthy, intrusive, and expensive discovery, you

have not established and there is no evidence that any

infringing acts by UPIP took place after May 4, 1998.

This letter will further confirm that none of the very

limited monies UPIP has received after May 4, 1998

attributable to the composition 99 Problems are

attributable to post-May 4, 1998 activities[.] UPIP has

not granted any licenses for 99 Problems after May 4,

1998. . . . Indeed, the total revenue received by UPIP for

99 Problems since May 4, 1998 are 81 cents – of which

UPIP retained 40 cents.

Thus, in both Case Nos. 703 and 706, the Universal

[d]efendants stand in the same shoes as the Warner

defendants in Case No. 706. We can provide you with

sworn declarations to this effect if you so desire

(although, from the extensive discovery conducted and

your failure to put forward any such evidence in

opposition to our summary judgment motion, you are

already aware of the complete absence of evidence of

such activities during the statutory period).

. . . .

We have reviewed your Rule 72 Objections to Judge

Brown’s R&R to Judge Higgins. Judge Brown’s R&R

was thoughtfully analyzed and well-reasoned, and we
Nos. 03-5005/5744 Bridgeport Music, et al. v. Rhyme

Syndicate Music, et al.

19

fully anticipate that Judge Higgins will adopt it as the

order of the Court. We understand you have also

indicated you intend to appeal this issue to the Sixth

Circuit. With that in mind, we propose and request that

Bridgeport stipulate to judgment in favor of Universal

Polygram International Publishing, Inc. (“UPIP”) in Case

706 based upon Judge Brown’s R&R. This would

preserve the parties’ and the Court’s resources and avoid

unnecessary expenditures of time, effort, and expense

because the cases against both Warner-Chappell and

UPIP would proceed simultaneously.

Bridgeport did not respond, and UPIP began preparing for the

trial scheduled to commence on November 12, 2002.

Once the district court adopted the magistrate judge’s report

and recommendation with respect to the Warner defendants

on September 16, 2002, UPIP obtained leave to supplement

its pending motion for summary judgment. In the

supplemental brief filed on September 27, 2002, UPIP argued

that it “stood in the same shoes” as the Warner defendants.

Bridgeport filed an opposing memorandum on October 7,

2002. The district court granted summary judgment to UPIP

on November 7, 2002, and Bridgeport appealed. On

December 9, 2002, UPIP filed itsmotion seeking $297,292.60

in attorney fees and $16,119.22 in nontaxable costs as a

prevailing party.

In its order of May 6, 2003, the district court found UPIP

was a prevailing party and concluded that Bridgeport should

bear the reasonable fees and costs incurred by UPIP after

September 16, 2002, the date that summary judgment was

entered in favor of the Warner defendants. In calculating the

lodestar amount, the district court reduced the hourly rates

charged by UPIP’s Los Angeles counsel, “capped” the rates

charged for paralegal work, deducted fees for redacted or

nonspecific entries, allocated fees between two cases against

UPIP, and reduced the lodestar amount by 25% to account for

20 Bridgeport Music, et al. v. Rhyme

Syndicate Music, et al.

Nos. 03-5005/5744

“top-heavy” billing by partners for work that could have been

performed by associates. Bridgeport does not challenge the

district court’s calculation of the amount of fees reasonably

incurred or its inclusion of any particular item in the award.

After correctly stating the applicable standards, the district

court indicated at the outset that Bridgeport’s reliance on its

novel, albeit unsuccessful, theory was not objectively

unreasonable. In particular, the district court recognized that

it had “ruled on a previous motion against Bridgeport for

attorney’s fees that the plaintiff’s theory that publishing

defendants could be liable for infringement within the

limitations period for the receipt of royalties income was

novel enough to weigh against an award of attorney’s fees.”

Nonetheless, the district court found that several factors

weighed in favor of an award, including factors enumerated

in its decisions awarding attorney fees to prevailing

defendants in other Bridgeport cases. Specifically, the district

court noted the plaintiffs’ overlyaggressive, take-no-prisoners

litigation tactics, and the overall impression that plaintiffs’

strategy was to exact the highest possible toll in order to

maximize the settlement value of the cases. The deciding

factor, however, was specifically identified as

the plaintiff’s decision not to settle or otherwise

compromise its claim after the Court ruled in this case

against its theory of infringement by receipt of royalties,

which by September 2002 was its only remaining viable

theory against this defendant. Faced with certain defeat

on summary judgment, the plaintiff unnecessarily

extended this litigation and caused both sides to expend

enormous resources preparing for a trial on a theory that

had been clearly rejected by the Court, where the plaintiff

had no new facts to offer that might persuade the Court

otherwise. The Court views this behavior as foolhardy,

and believes it entitles the defendant to a partial award of

fees and costs. Therefore, the Court finds that [UPIP] is
Nos. 03-5005/5744 Bridgeport Music, et al. v. Rhyme

Syndicate Music, et al.

21

entitled to all reasonable fees and costs incurred after

September 16, 2002, the date that the Court adopted the

Report and Recommendation by the Magistrate Judge [],

approved the dismissal of all claims in this action against

the Warner defendants as barred by the statute of

limitations and rejected receipt of income theory of

infringement. The Court finds that Bridgeport’s further

pursuance of similar claims against Universal after that

date were objectively unreasonable.

With our affirmance of summary judgment, it is clear that

UPIP is a prevailing party. As discussed earlier, however,

attorney fees are not to be awarded automatically to every

prevailing party. In Murray Hill, this court reversed an award

of attorney fees to the prevailing defendant and concluded

that the plaintiff had presented unsettled questions of law and

one or more colorable claims of infringement. 264 F.3d at

640. This is consistent with the view from other circuits that

it generally does not promote the purposes of the Copyright

Act to award attorney fees to a prevailing defendant when the

plaintiff has advanced a reasonable, yet unsuccessful claim.

See Matthew Bender & Co. v. West Publ’g Co., 240 F.3d 116,

122 (2d Cir. 2001); Lotus Dev. Corp. v. Borland Int’l, Inc.,

140 F.3d 70, 75 (1st Cir. 1998) (In close infringement cases,

“the need to encourage meritorious defenses is a factor that a

district court may balance against the potentially chilling

effect of imposing a large fee award on a plaintiff[] who . . .

may have advanced a reasonable, albeit unsuccessful,

claim.”).

The district court explicitly found that Bridgeport’s receipt

of royalties theory was objectively reasonable. This

objectively reasonable theory did not suddenly become

objectively unreasonable (factually and legally) once it

became apparent that the district court would most likely

reject it and enter summary judgment in UPIP’s favor. As a

result, we find it would be an abuse of discretion to base the

award on the objective unreasonableness of Bridgeport’s

22 Bridgeport Music, et al. v. Rhyme

Syndicate Music, et al.

Nos. 03-5005/5744

claim. The district court also faulted Bridgeport for failing to

settle, but no settlement offer was made by UPIP. Instead,

UPIP demanded that Bridgeport stipulate to dismissal of its

objectively reasonable claim and forego a decision on the

merits specific to UPIP.

While it would be improper to sanction a party simply for

electing to await decision on a pending motion, we have

recognized that a party’s litigation tactics may weigh in favor

of an award of fees when the conduct supports an inference

concerning motivation or a particular need for deterrence.

Compare Matthew Bender, 240 F.3d at 125-26 (filing

12(b)(6) motion), with Coles, 283 F.3d at 803 (in light of

objective unreasonableness of the claims, the plaintiff’s

tactics and strategies could “be interpreted as seeking to force

settlement with a wealthy songwriter with little or no basis for

doing so.”) We remand for the district court to consider in its

discretion whether, despite the objective reasonablenessofthe

claim, an award or partial award is warranted based on a

weighing of one or more Fogerty factors or because an award

would otherwise further the purposes of the Copyright Act.

For the reasons set forth above, we AFFIRM the entry of

summary judgment in favor of UPIP; AFFIRM the dismissal

of Ammo Dump Music and Carrumba Music; and VACATE

the award of attorney fees and costs to UPIP and REMAND

for further consideration consistent with this opinion.
Nos. 03-5005/5744 Bridgeport Music, et al. v. Rhyme

Syndicate Music, et al.

23

_____________________________________________

CONCURRING IN PART, DISSENTING IN PART

_____________________________________________

RONALD LEE GILMAN, CircuitJudge, concurring in part

and dissenting in part. I concur in Parts I, II, and III of the

majority opinion. But I disagree with the majority’s

conclusion in Part IV that the district court abused its

discretion in awarding attorney fees to UPIP, the prevailing

defendant. 

Even assuming that Bridgeport’s receipt-of-royalties

argument was not unreasonable at the outset, the fact remains

that the failure of the argument was absolutely foreordained

once the district court resolved that very issue in a parallel

case in which Bridgeport was also the plaintiff. From that

point forward, the district court had a sound basis to conclude

that Bridgeport was unreasonable in continuing to pursue its

claim against UPIP, especially in light of UPIP’s proposal to

stipulate to a dismissal of the complaint while still preserving

Bridgeport’s right to appeal. This case is therefore easily

distinguishable from those where the district court was found

to have abused its discretion by shifting attorney fees to a

party who advanced a reasonable claim that had not

previously been ruled upon, such as in Matthew Bender &

Co., Inc. v. West Publishing Co., 240 F.3d 116, 123 (2d Cir.

2001), which is cited in Part IV of the majority’s opinion.

I agree with the general principle that awarding attorney

fees in cases that present close questions in unsettled areas of

law is improper; otherwise, parties might be deterred from

bringing colorable claims or defenses that merit judicial

consideration. But I cannot perceive how the purposes of the

Copyright Act would be thwarted by deterring a plaintiff such

as Bridgeport from pressing a theory that had already been

considered and rejected in a parallel case before the very same

judge. At a minimum, I am not “firmly convinced that a

24 Bridgeport Music, et al. v. Rhyme

Syndicate Music, et al.

Nos. 03-5005/5744

mistake has been made” in this case. Adcock-Ladd v. Sec’y of

Treasury, 227 F.3d 343, 349 (6th Cir. 2000) (quotation marks

omitted) (defining the term “abuse of discretion”). Nor do I

believe that “the lower court relie[d] on clearly erroneous

findings of fact, . . . improperly applie[d] the law[,] or use[d]

an erroneous legal standard.” Id. (quotation marks omitted).

Accordingly, I would AFFIRM the decision of the district

court because I find no abuse of discretion in its award of

attorney fees to UPIP.