Venegas-Hernández v. Asociación De Compositores Y Editores De Música Latinoamericana

United States Court of Appeals
For the First Circuit

No. 04-1934
No. 04-1935

MARÍA VENEGAS-HERNÁNDEZ; GUILLERMO VENEGAS-HERNÁNDEZ;
RAFAEL VENEGAS-HERNÁNDEZ; YERAMAR VENEGAS-VELÁZQUEZ;
GUILLERMO VENEGAS-LLOVERAS, INC.,

Plaintiffs, Appellants/Cross-Appellees,

v.

ASOCIACIÓN DE COMPOSITORES Y EDITORES DE MÚSICA LATINOAMERICANA
(ACEMLA); LATIN AMERICAN MUSIC COMPANY, INC. (LAMCO),

Defendants, Appellees/Cross-Appellants.

v.

PEER; PEER INTERNATIONAL CORPORATION; SOUTHERN MUSIC
COMPANY; LUIS RAÚL BERNARD; JOSÉ L. LACOMBA; LUCY CHÁVEZ-BUTLER,

Defendants, Appellees.

APPEALS FROM THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF PUERTO RICO

[Hon. José Antonio Fusté, U.S. District Judge]

Before

Boudin, Chief Judge,

Cyr, Senior Circuit Judge,

and Howard, Circuit Judge.

Heath W. Hoglund for plaintiffs, appellants/cross-appellees.
Jane Becker Whitaker with whom Ángel N. Caro was on brief for
defendants, appellees/cross-appellants.
 Barry I. Slotnick with whom Jacques M. Rimokh, Loeb & Loeb
LLP, Francisco A. Besosa and Adsular Muniz Goyco & Besosa P.S.C.
were on brief for defendants, appellees Peer, Peer International
Corporation and Southern Music Company.

September 16, 2005
 BOUDIN, Chief Judge. These consolidated appeals concern

both disputes over ownership of interests in certain musical

copyrights and claims of infringement against various entities.

The musical compositions are those of Guillermo Venegas-Lloveras

("GVL"), a well-known Puerto Rican composer who died in 1993.

Because multiple issues are presented, we begin with an overview of

background events and pertinent proceedings, reserving details for

the discussion of individual claims.

GVL wrote, and obtained copyrights under the Copyright

Act for, a large number of compositions. Under the statute, a

copyright owner obtains a number of exclusive rights over the

copyrighted works for a fixed term, rights that he may license or

assign, 17 U.S.C. § 106 (2000). He also obtains a right to renew

the copyright for a further term, 17 U.S.C. § 304(a); however, if

this renewal right does not vest during the author's lifetime, it

passes to his heirs not by will but as specified by the Copyright

Act itself. Id. § 304(a)(1)(C).

During his lifetime, GVL granted various rights in his

compositions. Of particular importance is a 1952 agreement with

Peer, a musical publishing company that acquires such rights and

then licenses them to third parties; affiliated with Peer are Peer

International Corp. and Southern Music Co. (collectively, "the Peer

defendants"). GVL entered into other agreements, a series of which

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were made in 1969 with another publisher, PHAM,1 and yet another in

1970 directly with Peer affiliate Southern Music.

On October 16, 1996, GVL's widow, Lucy Chávez-Butler,

assigned all of her copyright interests in GVL's works to Latin

American Music Company ("LAMCO"), a New York-based music publisher.

One of LAMCO's affiliates is ACEMLA de Puerto Rico, a performance-

rights society. Such organizations, among them the well-known

entities ASCAP and BMI, obtain rights to musical compositions,

license them (often through blanket licenses), and collect

royalties from sub-licenses.

A year later, in October 1997, Chávez brought suit in the

Superior Court in Puerto Rico to settle a dispute with GVL's four

surviving children ("the siblings") as to ownership of copyright

interests in GVL's works after his death. Ultimately, in January

2000, the local Court of Appeals of the Commonwealth of Puerto Rico

ruled that rights in GVL's works belonged to his children,

ostensibly under his will and a later understanding reached between

Chávez and the siblings in settling the estate; however, just what

rights were so adjudicated is a matter of dispute on this appeal.

Then, in 2001, the present actions were filed in federal

district court in Puerto Rico by the siblings. One charged LAMCO,

ACEMLA, and three individuals associated with them ("the LAMCO

1
PHAM, the acronym for Promotora Hispano Americana de Música,
was at that time owned by Peer but was no longer so affiliated at
the time of the present litigation.

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defendants")--one of whom was Chávez herself--with various acts of

copyright infringement as to GVL's works, which the siblings now

claimed to own; the other action, thereafter consolidated with the

first, made similar charges and other related claims under contract

law against the Peer defendants.

In considering the siblings' infringement claims, the

district court first decided the ownership, as between Chávez and

the siblings, of such renewal-term copyrights as had arisen after

GVL's death. In two decisions, the district court ruled that

ownership of such renewal interests had not been resolved in the

earlier local litigation and that Chávez and the four siblings each

held a 20 percent interest in the copyrights. Venegas Hernandez v.

Peer Int'l Corp., 270 F. Supp. 2d 207, 216-17 (D.P.R. 2003)

("Venegas-Hernandez I"); Venegas-Hernandez v. Peer, 283 F. Supp. 2d

491, 503-05 (D.P.R. 2003) ("Venegas-Hernandez II").

Then, after an extensive bench trial, the district court

in 2004 issued a massive seventy-seven-page decision. Venegas-

Hernandez v. Peer, Civil No. 01-1215 (D.P.R. May 19, 2004)

("Venegas-Hernandez III") (unpublished opinion). In the end, the

court awarded $5,000 in damages against the Peer defendants for one

act of infringement, rejecting other infringement claims against

them; the court rejected as well the siblings' efforts to

terminate, by rescission or otherwise, certain rights that the Peer

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defendants obtained under their earlier agreements with GVL

himself, including the 1952 contract.

As to the LAMCO defendants, the court rejected LAMCO's

claims of ownership as to certain songs and held it liable for just

over $16,000 in damages for infringement. However, the court also

rejected a number of other infringement claims made by the

siblings; importantly, although the court agreed that the LAMCO

defendants had licensed certain GVL compositions during periods

when they had no right to do so, it found, as to most of their

unauthorized licenses, that no evidence of copying or performance

had been provided by the siblings.

Now before us are appeals by the siblings and by the

LAMCO defendants. The standard of review is de novo for issues of

law, clear error for factual findings, and varying degrees of

deference on law application, procedural matters, and choice of

penalties. Cariglia v. Hertz Equip. Rental Corp., 363 F.3d 77, 82

(1st Cir. 2004); Cavallaro v. United States, 284 F.3d 236, 245 (1st

Cir. 2002); Morley Music Co. v. Dick Stacey's Plaza Motel, Inc.,

725 F.2d 1, 3 (1st Cir. 1983). We begin with the issue of

ownership rights in the renewal terms, then address infringement

and contract issues, and conclude with the parties' remaining

claims.

Various of the siblings' infringement claims depended on

who owned renewal terms for certain GVL works. In 1976, Congress

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provided that copyrights still in their original 28-year term as of

January 1, 1978, are eligible for a renewal term of 47 years (a

term since extended to 67 years under the Sonny Bono Copyright Term

Extension Act, Pub. L. No. 105-298, 112 Stat. 2827 (1998)). 3

Nimmer & Nimmer, Nimmer on Copyright § 9.08, at 9-128 to 9-129

(2005) ("Nimmer"). The right to renew belongs to "the author of

such work, if the author is still living," but if not, then to "the

widow, widower, or children of the author"; if none in this latter

group is living, then the rights pass to the author's executor or,

absent a will, to "the author's next of kin." 17 U.S.C. §

304(a)(1)(C).

In the district court, the siblings took the position

that the renewal terms belonged solely to them,2 and that the issue

had been settled by the local courts and was res judicata against

Chávez. The district court, as already noted, held that under the

Copyright Act, Chávez retained a 20 percent interest as to renewal

terms created after GVL's death. On this issue, the siblings now

urge that they own 100 percent of those renewal terms; LAMCO, which

acquired whatever interest Chávez might have, argues in its cross-

appeal that her interest was 50 percent rather than 20 percent.

2
As to those renewal terms that had begun before GVL's death,
they belonged--under the terms of the statute--to GVL at the time
of his death, and neither the Peer nor LAMCO defendants dispute
that (given the decision of the Puerto Rico Court of Appeals) they
passed solely to the siblings.

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 We begin with the res judicata issue. Whether one speaks

of claim or issue preclusion, the outcome turns in this slightly

unusual situation on exactly the same question: whether, when the

local Court of Appeals said that authorship rights to GVL's musical

works belonged (under his will and a subsequent agreement between

the siblings and Chávez) entirely to the siblings, the court

intended to embrace renewal rights that had not come into being at

the time of GVL's death or only those original copyrights and

renewal terms that were in force and belonged to him at the time of

his death.

The district court concluded that the state courts had

not addressed or resolved the question of the unmatured renewal

rights, which, it said, did not pass by will but were created and

assigned by virtue of the Copyright Act, see Venegas I, 270 F.

Supp. 2d at 214-16; Venegas II, 283 F. Supp. 2d at 496-97; as for

the agreement between the siblings and Chávez governing the

division of the estate, the district court found from the evidence

that neither side had intended the agreement to cover renewal

rights unmatured at GVL's death--a subject that (the district court

said) they had not even considered in making their agreement. Id.

at 497-503.

One might have expected on this appeal that the siblings

would urge that the district court had misinterpreted the local

court decisions, the agreement between the siblings and Chávez, or

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both. But in the siblings' opening brief, there is no serious

attempt to parse the local decisions, nor any attempt to interpret

the agreement in light of its language and what the parties said or

intended.

Instead, the siblings' brief argues primarily that the

renewal rights must pass under Puerto Rico law in the absence of a

direct conflict with the Copyright Act. Secondarily, the siblings

suggest that to treat the renewal terms arising after the author's

death as something other than his property would violate the

Constitution's copyright clause, U.S. Const. art. 1, § 8, cl. 8,

because the clause allows Congress to secure to "authors"--not

anyone else--the fruits of their authorial work. To create rights

other than in the author, say the siblings, is at odds with the

Constitution.

The statutory argument is defeated by the statute itself,

which says that if the author is not alive when the renewal term

begins, then the right to renew belongs to his wife and children.

17 U.S.C. § 304(a)(1)(C)(ii). Only "if such author, widow,

widower, or children are not living" do the rights to renew pass to

"the author's executors," id. § 304(a)(1)(C)(iii)--presumably for

disposition in accordance with his will (an inference reinforced by

a final direction saying that "the author's next of kin" inherit

"in the absence of a will," id. § 304(a)(1)(C)(iv)).

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 If there were any doubt, it appears to be removed by De

Sylva v. Ballentine, 351 U.S. 570 (1956), the leading Supreme Court

decision addressing the clause at issue. There, in deciding

whether the renewal rights (not matured during the author's

lifetime) belonged to the widow alone or to both the widow and

children, the Court made no reference to any possible will and went

out of its way to say that "the author cannot assign his family's

renewal rights" and that the statute imposes "a compulsory bequest"

so as "to provide for the family of the author after his death."

Id. at 582.3

As to the constitutional objection, the Supreme Court in

De Sylva apparently did not see any patent constitutional objection

to this "compulsory bequest." More recently, it stressed in a

different context the broad scope of Congress' power to implement

expansively the copyright clause of the Constitution. Eldred v.

Ashcroft, 537 U.S. 186, 212-13 (2003). In all events, the

siblings' brief does little more than cite the "Authors" language

in the clause, and it would take a far more developed argument for

us to take seriously a constitutional attack of this kind.

This brings us to the truly difficult question as to

whether the renewal interest is divided 50-50 between the widow and

3
See also Miller Music Corp. v. Charles N. Daniels, Inc., 362
U.S. 373, 375 (1960) (stating that the author possesses "only an
expectancy to assign [renewal rights,] and his death, prior to the
renewal period, terminates his interest in the renewal which by §
24 [now § 304(a)] vests in the named classes" (emphasis added)).

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children or per capita so that the widow and each of the four

children would get a 20 percent interest. The Supreme Court in De

Sylva expressly declined to decide the issue. De Sylva, 351 U.S.

at 582. The Sixth Circuit, the only circuit court squarely to

address it, split, with the majority favoring the 50-50 solution,

Broadcast Music, Inc. v. Roger Miller Music, Inc., 396 F.3d 762,

781-82 (6th Cir. 2005), petition for cert. filed (U.S. June 30,

2005) (No. 05-31), and the dissent supporting the per capita view

adopted by the district court in this case, id. at 783-84

(Daughtrey, J., dissenting). (Earlier, the Second Circuit had

assumed a per capita division, Bartok v. Boosey & Hawkes, Inc., 523

F.2d 941 (2d. Cir. 1975), but the issue was scarcely discussed and

"[a]t best . . . Bartok contains no more than dicta on this issue."

3 Nimmer § 9.04, at 9-29).

There are good arguments on both sides. The phrase

"widow . . . or children" is opaque as to the division between

them; indeed, in De Sylva, arguments both ways could be made as to

whether the children should have any rights at all if the widow

were still living. 351 U.S. at 573. On the other hand, De Sylva's

conclusion that "both [widow and children] succeed to the renewals

as members of the same class," id. at 582, not only rejects the

widow-only position, but might be taken to suggest that widow and

children succeed per capita, and some read it in this manner.

Broadcast Music, 396 F.3d at 783-84 (Daughtrey, J., dissenting).

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 One should not attribute too much to a single phrase in

a Supreme Court opinion that squarely refused to decide the

apportionment issue. The "class" reference was made in deciding

whether the children had any interest at all if the widow were

alive, and the word "class" was in substance a shorthand way of

saying that the widow and children inherit together (if both are

alive) rather than sequentially (that is, the children inherit only

if the widow is not alive). The word "class" is not used in the

statute and, however the Supreme Court someday decides the issue,

we take it at its word in saying that it has not done so yet.

Pertinent to the open question is language in adjacent

statutory provisions that deal with termination interests in

copyrights; they are relevant because Congress there specified that

"the widow or widower owns one-half of the author's interest" if

"there are any surviving children or grandchildren of the author."

17 U.S.C. § 304(c)(2)(A). Chávez can point to this as a template

for resolving this case in the same way; the siblings can argue

that it would have been easy for Congress to use the same language

here. The provision is arguably more helpful to Chávez; the

opposite inference would be stronger if the provisions had been

drafted together.4

4
The renewal provisions in section 304(a) simply carried
forward language whose substance dates back to the Copyright Act of
1909. See Act of March 4, 1909, 35 Stat. 1075, 1080-81; H.R. Rep.
No. 94-1476, at 139 (1976), reprinted in 1976 U.S.C.C.A.N. 5659,
5755 (noting that "the [1976] bill preserves the language of the

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 Policy considerations favor the 50-50 solution over per

capita division. As De Sylva notes, the compulsory bequest is to

care for widow and children. 351 U.S. at 582. A majority of

states give the widow a 50 percent or greater interest in her

husband's estate if he dies intestate, even with multiple children,

see Restatement (Third) of Property: Wills and Other Donative

Transfers § 2.2 statutory notes 1-3 (1999); this is hardly a

surprising allocation, since ordinarily the widow will herself have

a duty to support children still in their minority, and children in

their majority ordinarily have earning power of their own.

A third solution--urged by neither party--would be to

adopt the intestacy provisions of local law. Although we are

construing a federal statute, such statutes can be read to

incorporate local law, see Chemerinsky, Federal Jurisdiction §

8.11, at 582-83 (4th ed. 2003), and that temptation is especially

strong where domestic relations issues are presented. De Sylva

followed this course on the issue of who constituted a "child" of

the author. 351 U.S. at 580-81. Yet the termination provisions of

section 304(c) do provide a competing uniform federal template.

Neither side in this case has urged adoption of Puerto

Rico law, whose substantive rules as to a widow's intestate share

are far from straightforward. See 31 L.P.R.A. §§ 2641-2693;

present renewal provision without any change in substance"). The
termination provisions of section 304(c), on the other hand, were
first introduced in the 1976 Act.

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Efraín González Tejera, Mortis Causa Wealth Transfer and the

Protection of the Family: The Spanish-Puerto Rican Experience, 60

Tul. L. Rev. 1231, 1236-39 (1986). We do not rule out the

possibility of such a solution if and when the issue is briefed in

a future case, but neither do we say that we would necessarily

endorse such an approach. On the choice that has been presented to

us, the 50-50 solution is superior to the per capita one and,

incidentally, avoids an unnecessary split with the Sixth Circuit.

In the district court, the siblings made a number of

infringement claims against both the Peer and LAMCO defendants

based upon various acts pertaining to a number of different songs.

Some, but not all, depended in part on who owned the copyright to

one or more pieces during the period of the alleged infringement;

ownership is an issue properly before the court in an infringement

case since "[t]o make out a copyright infringement, a plaintiff

must show ownership of a valid copyright . . . ." Matthews v.

Freedman, 157 F.3d 25, 26 (1st Cir. 1998).

We address in order the issues framed by the two appeals

before us. The first one concerns infringement claims by the

siblings against Peer as to songs of GVL owned by Peer under the

1952 agreement. Under the terms of the agreement, GVL assigned to

Peer the copyrights to all compositions he had written in the past

or would write during the term of the agreement, in exchange for

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specified royalties. The agreement continued in force until mid-

1964, so songs composed after that date are not covered.

The siblings urged in the district court that Peer's

rights in the pre-1964 compositions had been forfeited by Peer

mainly because it had not paid royalties to the siblings after

GVL's death--the right to the royalties having been inherited by

the siblings as heirs to GVL's rights under the 1952 agreement.

The district court held that the statute of limitations had run on

the claim and that in any case it was without merit. The latter

ground is less intricate and sufficient to sustain the district

court.

The main attack on Peer's ownership of rights under the

1952 agreement is framed by the siblings as a right to rescind the

1952 agreement on account of the failure to pay royalties after

GVL's death. The district court found that Peer had paid royalties

pursuant to the 1952 agreement until GVL's death in 1993, when it

ceased to make payments in light of the underlying ownership

dispute between the siblings and Chávez. This in turn made it

uncertain what amounts were owed to the siblings.

Under New York law, which the 1952 agreement specifies as

governing, rescission is an equitable remedy for breach of

contract; but ordinarily it requires breaches of "so material and

substantial a nature that they affect the very essence of the

contract and serve to defeat the object of the parties." Nolan v.

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Williamson Music, Inc., 300 F. Supp. 1311, 1317 (S.D.N.Y. 1969).

Furthermore, "[i]f the party who seeks rescission has an adequate

remedy at law, ordinarily he is not entitled to rescind." Callanan

v. Powers, 92 N.E. 747, 752 (N.Y. 1910).

The district court found that the delay in paying

royalties was not an equitable basis for undoing the entire

agreement, which had been carried out by royalty payments from 1952

to 1993, and that contract damages would make the siblings whole.

The amount appears to have been modest; Peer says that between 1993

and the trial, only about $3,000 in royalties had accumulated under

the 1952 agreement. It adds that it had offered to pay royalties

to the siblings in exchange for a hold-harmless agreement--

presumably to protect it against possible claims by Chávez that

part of the royalties belonged to her.

The siblings spend only a few paragraphs of their main

brief on appeal to challenge this determination, mainly complaining

that Peer should have paid them something and that Peer was

uncooperative in providing information until discovery in the

present lawsuit. They do not dispute that the district court's

decision is an exercise of equitable discretion to be reviewed with

deference on appeal. Delaney v. Matesanz, 264 F.3d 7, 13-14 (1st

Cir. 2001). Against the background events already described, the

siblings' spare assertions of error are no basis for overturning

the district court's equitable judgment.

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 The second, and larger, issue raised by the siblings

concerns acts of alleged infringement. This presents at the outset

its own threshold question, which could be of continuing

importance: whether a music publisher's unauthorized grant of a

license to a third party to perform or copy a copyrighted work is

an act of infringement where there is no adequate proof that the

third party ever undertook an infringing act (for example, by

performing or recording a copyrighted song).

Often this threshold question will not matter, because

ordinarily the plaintiff aims to recover damages and, if they

cannot be proved, the suit often will not be brought. But if

wrongful authorization alone were infringement, statutory damages

might be available without proof of copying, and occasionally harm

might be done by such an improper authorization even without a

further infringing act--for example, it might discourage the

purported licensee from seeking a license from the copyright's true

owner.

Looking only at the statutory language, one might think

that authorization alone could well be "infringement." Section 106

provides that the copyright owner "has the exclusive rights to do

and to authorize any of the following:" and then lists infringing

acts such as reproducing, recording, or performing the work.

Section 501(a) says, inter alia, that "[a]nyone who violates any of

the exclusive rights" provided in section 106 (among other

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sections) is an infringer. Section 504(a) provides that "an

infringer" is liable for actual or statutory damages.

Because the right to "authorize" is literally one of the

exclusive rights provided in section 106, the authorizing person

could (as a matter of language) be treated as an infringer subject

to statutory damages even if no listed infringing act (for example,

performance) actually occurred. Yet the legislative origins of the

"authorize" language in the statute arguably support a narrower

reading, and most (perhaps all) courts that have considered the

question have taken the view that a listed infringing act (beyond

authorization) is required for a claim. See II Goldstein,

Copyright § 6.3.2, at 6:44 (2d ed. 2005).

The "authorize" reference was added to the statute via

the 1976 Copyright Act. Danjaq, S.A. v. MGM/UA Commc'ns, Co., 773

F. Supp. 194, 201 (C.D.Ca. 1991). Prior to that time, the courts

had adopted a concept of "contributory infringement" to impose

liability on someone who wrongfully authorized an infringing act by

another who then committed that act. E.g., Gershwin Publ'g Corp.

v. Columbia Artists Mgmt., Inc., 443 F.2d 1159, 1162 (2d Cir.

1971). Thus the concept of infringement was expanded by creating

a kind of abettor liability for one deemed to have caused the

infringing act committed by the wrongfully authorized person. This

was hardly revolutionary; doing something forbidden by proxy can

lead to liability under both criminal and ordinary tort law. See

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2 Lafave, Substantive Criminal Law § 13.4, at 372-73 (2d ed. 2003);

Prosser and Keeton on Torts § 69 at 499-501 (5th ed. 1984).

When the new statutory language was added, the House

report explained that "[u]se of the phrase 'to authorize' is

intended to avoid any questions as to the liability of contributory

infringers." H.R. Rep. No. 94-1476, at 61 (1976), reprinted in

1976 U.S.C.C.A.N. 5659, 5674. If the language's purpose was simply

to codify the preexisting abetting doctrine that made an authorizer

liable for the authorized party's wrongful act of infringement,

arguably the drafters did not intend to create an independent

liability for authorizing where no listed infringing act, such as

performance, thereafter occurred.

It has also been said, in support of this limiting

interpretation, that state law provides ample remedies where there

is an unlawful authorization that causes harm without a listed

infringing act. For example, if the authorizing entity collected

a flat payment regardless of copying or performance, a state claim

for unjust enrichment might lie, Restatement of Restitution § 1

(1937); and if the authorization undercut efforts of the true owner

to license the copyright, the true owner might sue for interference

with contractual or advantageous economic relationships. See 3

Nimmer § 12.04, at 12-91 & n.85 (2005).

There would be nothing remarkable about such a

splintering of enforcement between federal and state law. The

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Copyright Act does not draw into federal court all matters that

pertain to copyright; a simple dispute over who owns a copyright is

usually governed by state law and would not, absent diversity

jurisdiction, even be heard in federal court if it were the only

issue in the case. See T.B. Harms Co. v. Eliscu, 339 F.2d 823,

826-27 (2d Cir. 1964), cert. denied, 381 U.S. 915 (1965). In this

very case, the secondary dispute over ownership is resolved in

federal court only as a byproduct of the infringement claims.

Admittedly, the better bare-language reading would allow

the claims in question; they might add some slight protection to

federal copyright interests, at the cost of more federal

litigation. But the narrower interpretation appears from

legislative history to be closer to congressional intent and has

been followed by other courts. Occasionally, and we think this

true here, the case is so close and the stakes low enough that

maintaining uniformity tips the balance.

This interpretation leads us to affirm the district

court's ruling rejecting several of the siblings' infringement

claims against the Peer and LAMCO defendants. In a number of

instances, the district court found that a publisher defendant had

granted a license, sometimes as part of a blanket license of many

songs, that included rights as to GVL works that were no longer

within the publisher's own rights portfolio--for example, because

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the copyright had entered its renewal period and the renewal period

rights belonged to the widow and siblings.

But the court also found that there was no proof that the

songs had been copied or performed under the mistaken licenses.

The siblings' position is that the mere fact of licensing creates

a presumption that the works were the subject of infringing acts,

but this ignores the reality that licensees often seek broad

licenses covering a range of works, allowing them to choose what to

use. Depending upon the surrounding circumstances, an inference

that a work was performed might be stronger or weaker, but a

universal presumption is not justified.

As for the specific circumstances of the rejected claims

in this case, the siblings say that LAMCO authorized, and was paid

for, a mechanical license to Sonolux for two songs and that this

proves that the infringing acts occurred pursuant to the license.

The siblings also say that Peer, through BMI, authorized the

broadcast in the United States of a GVL song, and that the online

database showed this as a licensed song. In both instances, it is

uncontested that LAMCO and Peer had no rights to license during the

period in question.

However, in each case there is no direct proof of an

infringing act after the authorization. Whether the listed

infringing acts were proved--apart from mere authorization--is a

factual issue and our review is for clear error. Cariglia, 363

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F.3d at 82. The Sonolux payment was refunded, and BMI listing a

song as authorized does not mean it was played. The siblings'

brief on appeal does not spend much time explaining why its

inference of infringement is compelling, and we see no reason for

setting aside the district court's fact-specific judgment.

A different problem is presented by yet another

infringement claim by the siblings. In 1993, Banco Popular de

Puerto Rico ("the bank") used GVL's composition Génesis in CDs and

videos during the original copyright term, which had been inherited

by the siblings. The siblings sued LAMCO for contributory

infringement based on a retroactive mechanical license it issued to

the bank in 1998, under which the bank paid $16,373.47 to LAMCO;

the district court awarded this amount to the siblings. The

siblings also sued because of a retroactive performance license

issued to the bank by ACEMLA, an affiliate of LAMCO; the court,

however, found insufficient evidence of performance and awarded no

damages.

On appeal, the siblings argue that they should have been

awarded additional damages based on the retroactive performance

license. They contend that an infringing performance should be

assumed in light of the understanding that Génesis was used in

connection with the bank's 1993 "Christmas Special" and the fact

that the bank paid for a retroactive performance license five years

later. While it may very well be that one who understands the

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details of the 1993 "Christmas Special" could presume that an

unauthorized performance of Génesis had taken place, the siblings

in their briefs fail to proffer even a basic explanation of what

the alleged performance entailed. Given so undeveloped an

argument, we will not disturb the district court's finding.

LAMCO, on the other hand, argues that the court erred in

awarding $16,373.47 in damages based on the retroactive mechanical

license because any 1993 infringement by the bank was outside of

the statute of limitations when LAMCO issued the retroactive

license in 1998, adding that the retroactive license was sought and

granted for reasons unrelated to the bank's concern about liability

for its 1993 acts. In LAMCO's view, there was thus no

"infringement" to be cured via the retroactive license and it

cannot be found liable for contributory infringement.

Fitting agency concepts like "retroactive authorization"

into copyright law provides plenty of room for debate; obviously a

license in 1998 did not "cause" a 1993 infringement. But LAMCO

does not pursue this interesting point, relying instead on a

statute of limitations argument, and the discussion in the briefs

is too sparse to justify any serious attempt to develop principles

in this recherché area of copyright law.

In their reply brief, dated March 1, 2005, the siblings

cited numerous documents to support their contention that LAMCO

never raised the statute of limitations argument at trial. LAMCO's

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own reply brief, filed on March 16, 2005, offered no rebuttal to

the siblings' argument. Whether or not LAMCO made the argument in

the district court, it has not countered the siblings' waiver

claim. It is worth adding that LAMCO's brief does not furnish

information we would need if we were to resolve the statute of

limitations argument on the merits.

LAMCO has one further claim on its cross-appeal. It

claims that it owned, and the siblings therefore did not inherit,

the original GVL copyright terms for eleven songs that appear on a

spreadsheet, signed by GVL, which states: "I CERTIFY: Those works

detailed above belong to me, Guillermo Venegas Lloveras. Founder

member of SPACEM." The district court said that this was

insufficient to establish an assignment to LAMCO and that LAMCO had

failed to offer contextual evidence to prove otherwise.

On appeal, LAMCO points to testimony from an official of

SPACEM that the signing of the spreadsheet was part of an intended

transfer by GVL to LAMCO and to testimony that LAMCO treated at

least some of the songs as its own. But the Copyright Act requires

a written transfer of ownership, "or a note or memorandum of the

transfer," 17 U.S.C. § 204(a); whether or not a cryptic document

could ever qualify, the district court was reasonable in concluding

that the document failed to effect a transfer of ownership rights.

There are a few loose-end arguments, such as a claim by

the siblings that the district court committed an abuse of

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discretion in failing to award sufficient statutory damages for one

of the infringements. Such arguments have been considered but do

not require additional discussion. The district court has ably

managed a case with an unusually garbled record and disparate

claims.

We affirm the district court on all issues raised by the

appeals of the siblings and LAMCO, save that we agree with LAMCO

that, as between a 50-50 share and a per capita allocation under

section 304(a)(1)(C), GVL's widow is entitled to 50 percent and the

siblings as a group to 50 percent. On that single issue, we vacate

and remand for any further proceedings that may be required and a

modification of the judgment. Each party to bear their own costs

on appeal.

It is so ordered.

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