Bridgeport Music, Inc. v. Rhyme Syndicate Music

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.; WARNER-
CHAPPELL 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 Honorab le 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.

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Nos. 03-5005/5744 Bridgeport Music, et al. v. Rhyme
Syndicate Music, et al.
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1Bridgeport appealed from the entry of summary judgment in favor
of defendants WB Music and W arner/Chappe ll Music, but vo luntarily
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 Universal-
PolyGram 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
2The 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.
Bridge port Music, Inc. v. Still N The W ater Publ’g, 327 F.3d 472 , 475 n.2
(6th Cir.), cert. denied, 124 S. Ct. 399 (200 3). 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
samp le 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.” Alphonso Henderson, 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

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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
3UPIP 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 m inimis. We do not reach the questions o f originality
or de m inimis 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

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Syndicate Music, et al.
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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. Book-
of-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

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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, vicarious liability 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
4Specifically, 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 late-
discovered Chart History showed that 2,37 7 copies of “99 P roblems” 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

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Nos. 03-5005/5744 Bridgeport Music, et al. v. Rhyme
Syndicate Music, et al.
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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
5Bridgeport also argues that even if U PIP did not actually license use
of the compo sition, 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 wo rk. See Hotaling
v. Church of Jesus Christ of Latter-Day Saints, 118 F.3d 199 , 203 (4th
Cir. 1997) (pub lic 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.

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6Fed. R. Civ. P. 4(h) pro vides that:
(h) Service Upon Corporations and A ssociations. 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 sum mons and of the co mplaint 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)
thereo f.
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

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7Fed. R. Civ. P. 4(e) states:
(e) Serv ice U pon Indiv idua ls W ithin a Judicial District
of the United Sta tes. Unless otherwise provided by federal law,
service upon an ind ividual from whom a waiver has no t 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 ind ividual perso nally 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 proce ss.
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.
Bridgeport failed 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

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8“In any civil action und er this title, the co urt in its discre tion 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 these determinations,’ 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

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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 its motion 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’ overly aggressive, 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

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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 reasonableness of the
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.

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Nos. 03-5005/5744 Bridgeport Music, et al. v. Rhyme
Syndicate Music, et al.
23
_____________________________________________
CONCURRING IN PART, DISSENTING IN PART
_____________________________________________
RONALD LEE GILMAN, Circuit Judge, 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.

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