By Scott Hervey
A Federal district court jury in Nashville levied a $4.3 million dollar verdict against Sean Combs’ (Puffy) Bad Boy Entertainment, Bad Boy, LLC and Universal Records/UMG Recordings for infringing copyright owned by Bridgeport Music and Westbound records. The suit resulted from the use of a six second sample from the Ohio Player’s Singing in the Morning used by producer Easy Money in the title track to the Universal released Notorious B.IG.’s 1994 album “Ready to Die.”
At the trial the parties stipulated that the required license had not been obtained from Bridgeport Music/Westbound Records. The issue left for the jury to determine was to calculate the fair market value of the use of the track. The jury awarded $733,878 in actual damages, which represented the fair market value of the use of the track. In addition, the jury awarded $3.5 million in punitive damages, which include a $1 million award against Bad Boy LLC.
The story is not the fact that Combs et al were hit with a very large verdict for copyright infringement. The story is why the jury levied such a significant punitive damage award. Susan Butler, the legal matters reporter for Billboard Magazine, published a story in the April 8, 2006 edition of the magazine which explained the reason behind the damage award.
According to Butler’s story, it was the pre-litigation activities of Combs, et al. that motivated the jury. Apparently between 1998 and 1999 letters were written from Bridgeport’s administrator to various music publishers, Arista records, which at one time had a joint venture with Bad Boy Entertainment, claiming copyright infringement of the Ohio Players’ sample. According to Butler’s story, Arista apparently forwarded the letter it had received to Bad Boy Entertainment care of Bad Boy’s law firm. Further, there was no evidence presented to the jury that Combs et al. responded to any letters or phone calls that Bridgeport’s administrator apparently made prior to filing suit. Although, according to Butler’s story, there was no letter addressed directly to Bad Boy Entertainment, nor was there evidence that Bad Boy or its lawyers had actually received Bridgeport’s letters, the jury took serious issue with Bad Boy’s apparent refusal to address Bridgeport’s concerns.
Butler’s story quoted the jury foreman as stating that Bad Boy et al should have done something prior to Bridgeport filing its lawsuit or taken some action to show “a willingness to attempt at least a settlement.” According to the quotes attributed to the jury foreman in Butler’s article, it appears that Bad Boy could have lessened the amount of the Punitive damage award by responding to Bridgeport’s concerns.
The lesson to be learned here is to take seriously any and all cease and desist letter received. This doesn’t mean that you necessarily have to admit infringement and pay a settlement. According to the jury foreman’s quote in Butler’s story, it would have been significant if Bad Boy responded to Bridgeport’s letter by denying infringement. But ignoring a cease and desist letter and refusing to engage a party making serious and repeated allegations of copyright infringement can be a very perilous tactic.
Scott Hervey is a shareholder with Weintraub Genshlea Chediak Tobin & Tobin and practices in the firm’s technology and corporate sections. Scott’s practice primarily involves assisting companies in commercializing and protecting their intellectual property assets. Scott’s clients range from software companies to film production companies to digital content aggregators. For additional articles on IP law, visit www.theiplawblog.com