Latin American Music Co. v. Cardenas Fernandez & Associates, Inc.

Not for Publication in West's Federal Reporter
Citation Limited Pursuant to lst Cir. Loc. R. 32.3

United States Court of Appeals
For the First Circuit

No. 02-2104

LATIN AMERICAN MUSIC COMPANY, INC., AND ASOCIACION DE
COMPOSITORES Y EDITORES DE MUSICA LATINO AMERICANA, INC.,

Plaintiffs, Appellants,

v.

CARDENAS FERNANDEZ & ASSOCIATES, INC.; DAVID MALDONADO, D/B/A
DAVID MALDONADO ENTERTAINMENT; CFDM THEATRICAL PRODUCTIONS, LLC;
PROMOTORES LATINOS, INC.; CENTRO DE BELLAS ARTES CORP.;
CORPORACION PARA EL FOMENTO DE LAS ARTES Y LA CULTURA,

Defendants, Appellees.

SONIDO, INC.,

Intervenor, Appellee.

APPEAL FROM THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF PUERTO RICO

[Hon. Juan M. Perez-Gimenez, U.S. District Judge]

Before

Selya, Circuit Judge,
Coffin, Senior Circuit Judge,
and Lipez, Circuit Judge.
 Wilma I. Cadilla-Vazquez for appellants.
Clifford James, with whom Miguel J. Rodriguez Marxuach,
Fensterstock & Partners LLP, and Rodriguez Marxuach Law Offices,
P.S.C., were on brief, for intervenor-appellee.

April 8, 2003

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 COFFIN, Senior Circuit Judge. Plaintiffs-appellants Latin

American Music Company ("LAMCO") and Asociacion de Compositores y

Editores de Musica Latino Americana ("ACEMLA") appeal the district

court's grant of summary judgment to defendants-appellees on all of

plaintiffs' copyright claims and its subsequent denial of

plaintiffs' motion for reconsideration. Finding no error in the

court's rulings, we affirm.

I. Background

The facts are largely undisputed. Plaintiffs are corporations

that claim rights in several songs performed as part of a play

about composer Hector Lavoe's life ("Quien Mato a Hector Lavoe?"),

produced in New York City in 1999 and San Juan, Puerto Rico, in

2000. The songs were written by Hector Lavoe (the stage name for

Hector Perez), by Lavoe with Wilfredo Colon, or by Catalino "Tite"

Curet Alonso.1

Plaintiffs alleged that defendants, who created or were

involved in the production of the play, violated their rights by

performing the songs without obtaining licenses from them.

Defendants responded that they had obtained valid licenses from the

rightful copyright transferee, Fania Publishing Company, through

Sonido, Inc.

1
We note that the district court found that one of the songs
in which plaintiffs claimed rights, "Todo Tiene Su Final," was
composed by Colon alone. Because the plaintiffs acknowledge having
no claims to any songs written by Colon alone, we do not consider
this song.

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 Fania, the original copyright transferee, had entered into

Standard Songwriters Agreements ("SSAs") with Lavoe and Alonso in

the 1970s and 1980s that assigned Fania copyright interests in five

of the six songs at issue ("Paraiso de Dulzura," "Periodico de

Ayer," "Pirana," "El Todopoderoso," and "La Fama"). Defendants

produced a Certificate of Registration from the U.S. Copyright

Office, filed by Fania as the "Copyright Claimant," for the final

song, "La Murga."

For each composition, the SSAs encompassed:

all musical and non-musical rights therein, the title,
words and music thereof, (and all literary characters
contained therein), the worldwide copyright thereof and
the right to secure copyright therein throughout the
entire world and to have and to hold the said copyright
together with all of their right, title and interest,
both legal and equitable therein, including but not
limited to the sole and exclusive worldwide publication,
mechanical reproducing, and motion picture and television
synchronization rights and the right of public
performance by any means, and all other rights now known
or hereafter to come into existence, subject to the terms
of this agreement.

Each SSA was binding on "the respective parties hereto, their

respective successors in interest, legal representatives and

assigns and . . . cannot be terminated, or amended except by a

writing signed by all of the parties hereto."2

2
The one SSA executed in the 1980s, by Lavoe, contained
slightly altered language. It pertained to the composition "La
Fama" and assigned "the title words and music, and all copyrights
thereof . . . and all rights, claims and demands in any way
relating thereto, and the exclusive right to secure copyright
therein throughout the entire world." It applied to successors in
interest, but did not require termination by mutual agreement in

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 Sonido had obtained copyright licenses for the songs from

Valsyn, which owned Fania Publishing, and subsequently leased them

to defendants. As evidence of this transfer of rights, defendants

provided a series of licensing agreements: an October 1, 1986,

licensing agreement between Valsyn and Sonido, wherein Valsyn

conveyed to Sonido a license to use the songs at issue while

retaining ownership of the copyrights; a renewal of the agreement

between Valsyn and Sonido extending its expiration from December

31, 1999, to December 31, 2004; and an agreement between defendant

CFDM Theatrical Productions and Sonido dated July 5, 1999, in which

CFDM licensed the songs to be used in the play's production.3

Plaintiffs suggested that Alonso had sought to terminate the

SSAs, producing a 1983 letter from Alonso to Fania, which

apparently indicated his desire to end the agreements. With regard

to Lavoe's compositions, plaintiffs produced assignments of

copyrights they received from Lavoe's son, Jose Perez, after Lavoe

died in 1993. Perez registered the copyrights with the U.S.

Copyright Office in 1999 and subsequently assigned the copyrights

to LAMCO. Lavoe's other two heirs, his daughter and his widow,

writing. Nevertheless, the district court made no distinction
between the agreements and plaintiffs have not raised this as an
issue on appeal.
3
CFDM was a partnership between Cardenas Fernandez &
Associates and David Maldonado Presents, created specifically for
the purpose of producing "Quien Mato a Hector Lavoe?" in New York
City and Puerto Rico.

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were not parties to that assignment. Plaintiffs did not produce

any evidence tending to show that any of the SSAs were actually

terminated by the requisite mutually signed writing.

The district court granted summary judgment to defendants,

concluding that plaintiffs' rights were not infringed upon by the

production of the play because defendants had proven they held

valid licenses to use the songs. Subsequently, plaintiffs sought

reconsideration by the district court. Although defendants

neglected to defend the motion for reconsideration, Sonido was

granted leave to intervene and contest plaintiffs' motion, which

the district court denied. Defendants have not responded to

plaintiffs' appeal from the district court judgment, and this court

has also granted Sonido the status of intervenor-appellee.

II. Discussion

Plaintiffs appeal from the district court's decisions to stay

discovery, grant summary judgment to defendants, and deny

plaintiffs' motion to reconsider.

A. Stay of Discovery

Plaintiffs complain that the district court prejudiced their

case by staying discovery proceedings while the motion for summary

judgment was under advisement. Plaintiffs suggest that they would

have sought evidence to refute the legitimacy of Sonido's

copyrights and their subsequent licensing to defendants. They

further contend that they had claims against defendant Centro de

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Bellas Artes Corporation, operator of the theater in Puerto Rico

where the play was shown, that they "had not yet begun to litigate"

due to the court's stay of discovery.4 Plaintiffs argue that the

district court was in violation of this court's February 2001 order

vacating the district court's denial of a preliminary injunction

and requiring the court to conduct "further proceedings."

Our review of the record reveals that plaintiffs failed to

oppose defendants' motion to stay discovery. Nor did plaintiffs

file a request to compel discovery, pursuant to Fed. R. Civ. P. 37,

or a motion for further discovery, authorized by Fed. R. Civ. P.

56(f), prior to the court's decision on summary judgment. Had the

plaintiffs protested the stay or informed the court of what

information they sought to obtain while the court considered the

motions at issue, the situation would be vastly different. By

choosing to forgo Rule 37 relief, plaintiffs waived any claim of

error on appeal. See, e.g., U.S. Fid. & Guar. Co. v. Baker

Material Handling Corp., 62 F.3d 24, 29 (1st Cir. 1995) (holding

that plaintiffs "plainly waived" claim of unfair trial by foregoing

4
Plaintiffs make a companion argument that their claims
against Centro de Bellas Artes were not resolved by the district
court's orders and thus the judgment before us is not final.
Although Centro de Bellas Artes did not join in the motion for
summary judgment filed by other defendants, the court granted
summary judgment to all defendants. Thus, there has been a final
judgment with regard to all of plaintiffs' claims in this case,
including those against Centro de Bellas Artes.

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Rule 37 relief in favor of airing "cover-up" claims in front of

jury).

B. Summary Judgment

Plaintiffs appeal the court's grant of summary judgment to

defendants on several grounds. Most of plaintiffs' arguments were

not made until the motion for reconsideration, and as such were

forfeited, as explained in the next section. The only preserved

claim that plaintiffs make with regard to the court's summary

judgment ruling is that the court erred in concluding that under

Puerto Rico law Lavoe's son could not unilaterally transfer rights

to them.

In their summary judgment motion, defendants argued primarily

that they held valid, unrevoked assignments from the songs'

composers dating back to the 1970s and 1980s and therefore any

assignments to plaintiffs, occurring later in time, were

necessarily invalid. Plaintiffs, in their three paragraph argument

in response, made two particular points. First, they noted that

the original agreement between Valsyn and Sonido ended in December

1999 and thus was not in existence at the time the play was

produced, making the licenses granted to defendants from Sonido

invalid. Plaintiffs identified this as the "one simple, yet

compelling fact, that defeats any possibility of success for Co-

defendants' motion for summary judgment." (With their reply,

defendants proved this argument meritless by producing the renewal

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of the Valsyn-Sonido agreement, which extended its expiration to

December 2004.) Second, plaintiffs suggested that the composers

had in fact cancelled their original agreements with Fania,

submitting Alonso's 1983 letter in support.

The district court held that defendants had proven a valid

chain of transfers of the copyrights from the original transferee

to defendants for use in the play. The court concluded that

plaintiffs had not produced evidence to show that the original

assignments had been properly terminated, and thus they had no

enforceable rights of their own. Even if they had, the district

court further ruled, relying on Colon Gutierrez v. Registrador de

Propiedad, 114 D.P.R. 850 (1983), that Lavoe's son, acting alone,

did not have the right to convey copyrights to LAMCO.

As the court intimated in its denial of reconsideration, this

issue is ultimately inconsequential to the disposition of the case

because Lavoe's estate did not include the copyrights. Pursuant to

their terms, the SSAs between Lavoe and Fania did not expire upon

Lavoe's death, and having not been terminated via mutual written

agreement by Lavoe or his heirs, the copyrights continued to reside

with Fania and its successors. We therefore need not, and do not,

consider the merits of plaintiffs' argument that Lavoe's son had a

right to unilaterally transfer copyrights.

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C. Motion to Reconsider

Finally, plaintiffs appeal the district court's conclusion in

its denial of reconsideration that they waived two arguments that

they profess should have precluded summary judgment. They suggest

that the court erred because it failed to recognize disputed issues

of material fact and, alternatively, it neglected to consider a

legal issue that was dispositive in their favor. Neither of these

arguments was made prior to the motion to reconsider. We may

reverse the district court's decision only if it was an abuse of

discretion. See Tiller v. Baghdady, 294 F.3d 277, 284 (1st Cir.

2002).

(1) Factual Issues

Plaintiffs assert that genuine issues of material fact

remained concerning defendants' documentary evidence. First, they

argue that, because the agreements between Valsyn and Sonido were

not produced in original form, their authenticity was questionable.

Second, plaintiffs claim that the Valsyn-Sonido agreement was also

suspect because it did not reference any particular composition or

specific authors, but instead applied to all master recordings that

had been released on the "Fania" label. Finally, plaintiffs

complain that the original SSAs were not produced and thus the

signatures of the composers have not been verified. Because these

arguments were not made in plaintiffs' opposition to summary

judgment, the district court ruled that they were forfeited.

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 It is customary to append copies of documents to a summary

judgment motion and produce originals only if authenticity is

challenged. Although plaintiffs suggest that they sought to view

the original SSAs, no Rule 37 motion to compel was made. In short,

the court did not abuse its discretion in concluding that

plaintiffs' contentions about the agreements produced by defendants

were untimely. See Landrau-Romero v. Banco Popular de Puerto Rico,

212 F.3d 607, 612 (1st Cir. 2000) ("It is well-settled . . . that

new legal arguments or evidence may not be presented via Rule

59(e).").5

(2) Section 205 of the Copyright Act

Finally, plaintiffs allude to an allegedly unresolved issue of

law that they claim is dispositive of the case. Plaintiffs argue

that because defendants' assignments were not registered or

recorded with the Copyright Office, and otherwise failed to meet

Copyright Act requirements, plaintiffs' recorded copyrights are

superior. They specifically contend that the provision of the

5
Plaintiffs also assert a genuine issue of material fact in
the alleged bad faith of one of the defendants, David Maldonado, in
entering into an agreement with Sonido after plaintiffs informed
him of their copyright claims. We assume that plaintiffs are
referencing the Sonido-CFDM agreement since David Maldonado had no
contract with Sonido, but David Maldonado Presents was part of
CFDM, which was party to the agreement with Sonido. Because
plaintiffs did not raise this argument in either the motion for
summary judgment or the motion for reconsideration, it was
forfeited. Reviewing for plain error, see Chestnut v. City of
Lowell, 305 F.3d 18, 20 (1st Cir. 2002) (en banc) (per curiam), we
find none.

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Copyright Act governing conflicting transfers, 17 U.S.C. § 205,

applies and dictates an outcome in their favor.

Again, plaintiffs did not make this argument until the motion

for reconsideration. They contend that they preserved it, however,

by presenting it to the court during previous colloquies that

concerned both the instant case and related cases and by raising it

before this court in a previous appeal.6

We agree with the district court, however, that plaintiffs

forfeited this issue. In our review of the record, we find that

although plaintiffs made recurrent references to the Copyright Act

in general, it was not until their motion for reconsideration that

they specified a reliance on section 205. Thus, when deciding the

motion for summary judgment, the district court was justified in

believing that plaintiffs had decided to place all of their eggs in

one basket, disputing the validity of the defendants' original

assignments.

6
In our previous order, we directed the district court to
consider the merits of plaintiffs' claims in ruling on a request
for injunctive relief. Latin Am. Music Co. v. Cardenas Fernandez
& Assocs., No. 00-1443, 2 Fed. Appx. 40 (1st Cir. Feb. 23, 2001)
("The copyright claims in this case are complicated, and nothing we
say is intended to suggest a view that plaintiff is likely to
prevail, although this is likely to be the key issue as to
injunctive relief."). Plaintiffs suggest that our order required
the district court to specifically consider the section 205
argument. Nothing in that opinion, however, relieved plaintiffs
from their burden of informing the district court of the bases on
which they opposed summary judgment.

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 Plaintiffs' claims that they made the section 205 argument in

related proceedings, in particular at a status conference held on

July 26, 2001, in which multiple cases were discussed, are not

verifiable in the record before us. Only one status conference

appears in the record; it was held on July 6, 2001, and reflects

discussion of this case only. The conference notes report that

counsel for one of the defendants was "closely following the four

main cases involving Latin American Music Co., Inc. (96-2312, 97-

2356, 97-2875, 98-1597) and waiting to see who owns what, and who

will transfer what, in order to determine how they will proceed.

In all probability the Court will appoint a special master for all

of these cases." No indication that substantive arguments

regarding section 205 were made is revealed.

In the alternative, plaintiffs contend that this case was "de

facto" consolidated with other cases. As the district court noted

in its denial of reconsideration, the record makes plain that

plaintiffs labored under this faulty assumption, even though no

motion for consolidation was made prior to the motion to

reconsider.7 Even if plaintiffs made their section 205 argument to

the court in the related litigation, they were required to

reiterate, or at the very least reference, the argument in their

7
In their motion for reconsideration, plaintiffs argued that
there were indispensable parties, namely the composers themselves
and Sonido, who should be joined. In the alternative, they
suggested that the court should consolidate the case with related
pending litigation.

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opposition to summary judgment. Finally, even if plaintiffs made

the section 205 argument in their initial appeal, we did not

reflect such argument in our opinion, much less direct the district

court to consider it in this different phase of the case. The

district court cannot, therefore, be faulted for not considering

the argument, never raised directly before it. Thus, the district

court's refusal to consider plaintiffs' belated section 205

argument was not an abuse of discretion.

For the foregoing reasons, the judgment of the district court

is affirmed.

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