Brown v. Latin American Music Co., Inc.

United States Court of Appeals
For the First Circuit

No. 06-2710

ROY BROWN,

Plaintiff, Appellee,

v.

LATIN AMERICAN MUSIC CO., INC. (LAMCO);
ASOCIACIÓN DE COMPOSITORES Y EDITORES DE MÚSICA
LATINO AMERICANA (ACEMLA),

Defendants, Appellants.

APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF PUERTO RICO

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

__________________

Before

Torruella, Newman* and Lynch,
Circuit Judges.

__________________

Jane Becker Whitaker with whom the Law Offices of Jane Becker
Whitaker, PSC and Angel N. Caro were on brief, for appellants.
Patricia Rivera MacMurray with whom Bufete Hernandez Mayoral,
CSP was on brief for appellee.

August 7, 2007

*
Hon. Pauline Newman, of the Federal Circuit, sitting by
designation.
 NEWMAN, Circuit Judge. This appeal is taken from the district

court's dismissal with prejudice of the declaratory defendants'

counterclaim for copyright infringement. The counterclaimants are

the Latin American Music Company and the Asociación de Compositores

y Editores de Música Latino Americana (collectively herein "LAMCO"),

who claim that they own valid copyrights for eleven poems that were

written by Juan Antonio Corretjer and "musicalized" by Roy Brown,

a music composer and performer.

Mr. Brown brought a declaratory judgment action in the United

States District Court for the District of Puerto Rico, requesting

the declaration that poet Corretjer's work "En la Vida Todo es Ir"

is in the public domain because it was first published in 1957

without the requisite copyright notice. LAMCO's counterclaim named

ten additional poems for which LAMCO charged Mr. Brown with

infringement, based on his musical adaptations, of a copyright

registered by LAMCO in February 2000. The parties filed statements

of undisputed and disputed fact, depositions were taken, and Mr.

Brown presented documentary evidence concerning the poems, their

first publication, and his musicalizations as recorded on

phonorecords. Mr. Brown moved for summary judgment on the ground

that LAMCO did not possess a valid copyright for the poems, that ten

of the poems were in the public domain, and that the musical

composition as to the eleventh was authorized by the poet. Mr.

Brown also requested summary judgment on the ground that the claim

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of infringement was time barred because the three-year statute of

limitations had run if the phonorecords are viewed as derivative

works.

The district court denied Mr. Brown's motion for summary

judgment, stating that some material facts were unresolved.

However, the court dismissed the infringement counterclaim with

prejudice, ruling that LAMCO had not established the elements

required to proceed in a copyright infringement suit. On LAMCO's

appeal, we affirm the judgment of the district court.1

I. BACKGROUND

The eleven poems are entitled "En la Vida Todo es Ir," "Oubao

Moin," "Distancias," "Inriri Cahuvial," "El Hijo," "Andando de Noche

Sola," "Día Antes," "Ayuburi," "Diana de Guilarte," "Boricua en la

Luna," and "De Ciales Soy." They were produced by Corretjer from

the early 1950s through the 1970s, and ten of the poems appeared in

books or pamphlets bearing publication dates from 1952 to 1976, as

shown in the district court record; none of these works contained

a copyright notice.

Mr. Brown states that from 1975 to 1987 he set these poems to

music, performed the songs, and recorded them on phonorecords. He

states that on the labels and in the copyrights he registered for

the musical works Juan Antonio Corretjer was listed as the author

1
Brown v. Latin American Music Co., No. 05-1242 (D.P.R. May 8,
2006).

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of the poems. He testified concerning his relationship with the

poet, and that he made payments to Mr. Corretjer until the poet's

death in 1985.

Mr. Brown presented documentary and affidavit evidence

concerning the publication of ten of the eleven poems. In summary:

six of the poems were included in an anthology entitled Yerba Bruja

(these poems are "En la Vida Todo es Ir," "Inriri Cahuvial," "El

Hijo," "Andando de Noche Sola," "Ayuburi," and "De Ciales Soy");

Brown filed photocopies of the cover and pertinent pages of the

first edition of Yerba Bruja, showing no copyright notice.

The poem "Oubao Moin" was included in a book of poems entitled

Alabanza en la Torre de Ciales, published in Costa Rica in 1953 and

first published in Puerto Rico in 1965; no copyright notice appeared

in either publication. The first United States edition of Alabanza

en la Torre de Ciales also lacks a copyright notice. The poem

"Distancias" was first published in 1957 in a publication entitled

Imagen de Borinquen 3; the cover and pertinent pages contained no

copyright notice.

Mr. Brown filed the affidavit of the Director of the Puerto

Rico Collection of the library of the University of Puerto Rico, Rio

Piedras Campus, whose statement included the library call numbers

of the three books Imagen de Borinquen, Yerba Bruja, and Alabanza

en la Torre de Ciales, and that these books are part of the Puerto

Rico Collection and for public use in the library reading room;

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attached were photocopies of the covers and title pages of the books

in the library's Collection.

The record also contains photocopies of the relevant pages for

the poem "Día Antes," as first published in 1967, without a

copyright notice, in a pamphlet entitled Pausa para el Amor. The

poem "Diana de Guilarte" was included in a volume entitled

Construcción del Sur bearing the publication date of 1972; the first

edition has no copyright notice. As to the eleventh poem, Mr. Brown

stated that "Boricua en la Luna" was never published by Corretjer.

Mr. Brown also provided information concerning his musical

adaptations, and proffered the phonorecords in the district court.

He stated that he created the musical composition of "En la Vida

Todo is Ir" in 1975 and that its performance was included in the

phonorecord entitled Profecia de Urayoan in 1975. The phonorecord

entitled Distancias was created in 1976, and included the musical

compositions of the poems "Oubao Moin," "Distancias," "Inriri

Cahuvial," "El Hijo," "Andando de Noche Sola," and "Día Antes." The

musical compositions "Diana de Guilarte" and "Ayaburi" were included

in the phonorecord Nuyol released in 1984. The musical composition

"Boricua en la Luna" was included in the phonorecord Arboles created

in 1987. The copyright registrations for these musical works are

in the summary judgment record; they all name Juan Antonio Corretjer

as the author of the poems.

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 LAMCO entered general denials to almost everything in Brown's

Statement of Uncontroverted Facts And Authenticated Exhibits in

Support of Motion for Summary Judgment, except that LAMCO "admitted"

that five of the poems at issue "are contained in the collection of

poems titled Yerba Bruja, first published in 1957." LAMCO argued

that Mr. Brown had not established that some or all of the

publications were in the unlimited circulation that was necessary

to place the poems in the public domain. The district court,

pointing out that Brown bore the burden of proof on his motion for

summary judgment, denied the motion.

On this appeal Mr. Brown asks us to grant summary judgment as

a matter of law, on the basis that our appellate consideration is

de novo. He argues that LAMCO did not meet the requirements of Fed.

R. Civ. P. 56, which establishes that mere allegations or general

denials are insufficient to oppose a motion for summary judgment,

but "must set forth specific facts showing that there is a genuine

issue for trial." See Anderson v. Liberty Lobby, Inc., 477 U.S.

242, 247 (1976); Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986)

("the plain language of Rule 56(c) mandates the entry of summary

judgment, after adequate time for discovery and upon motion, against

a party who fails to make a showing sufficient to establish the

existence of an element essential to that party's case, and on which

that party will bear the burden of proof at trial."). Mr. Brown

points out that LAMCO responded to his complaint by merely

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"deny[ing] for lack of information or belief" and other phrases of

general denial, whereas the matter of having a valid copyright is

fundamental to LAMCO's charges of infringement. See id. at 323 (the

non-moving party must come forward with specific facts that raise

a genuine issue). Fed. R. Civ. P. 56(e); see also Cochran v. Quest

Software, Inc., 328 F.3d 1, 6 (1st Cir. 2003) (a fact is material

if it would affect the outcome of the case). Thus Mr. Brown asks

us to grant his motion for summary judgment. However, we need not

consider whether we have appellate jurisdiction of this issue or

whether this procedure is warranted, for we affirm the district

court's dismissal of the infringement counterclaim.

II. THE INFRINGEMENT COUNTERCLAIM

The dismissal of a claim or counterclaim for failure to

establish the elements of the claim receives plenary review,

applying the standards applicable to review of questions of law,

with factual inferences in favor of the claimant. See Ramirez v.

Arleguín, 447 F.3d 19, 20 (1st Cir. 2006)(the district court's

dismissal is reviewed de novo, drawing all reasonable inferences in

the claimant's favor); Ramos-Piero v. Puerto Rico, 453 F.3d 48, 51

(1st Cir. 2006) (dismissal for failure to state a claim requires

"accepting the plaintiff's well-pleaded facts as true and indulging

all reasonable inferences therefrom"). When a claim is challenged

with reference to matters outside the pleadings, including

depositions, admissions, and affidavits, Fed. R. Civ. P. 12(b)(6)

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provides that it is considered in accordance with the criteria of

summary judgment. See Garside v. Osco Drug, Inc., 895 F.2d 46, 650

(1st Cir. 1990) (the purpose of summary judgment is "to pierce the

pleadings and to assess the proof in order to see whether there is

a genuine need for trial") (quoting Fed. R. Civ. P. 56 advisory

committee note).

The infringement counterclaim is based on LAMCO's registration

in February 2000 of the copyright for a work entitled Oubao Moin y

17 Obras Mas de Juan A. Corretjer, which included the eleven poems

at issue. The registration application states the date of first

publication as February 19, 1979. The district court perceived that

the threshold question was whether LAMCO held a valid copyright to

these poems, and observed that the burden of establishing a valid

copyright resides with the claimant, citing Grubb v. KMS Patriots,

L.P., 88 F.3d 1, 3, 5 (1st Cir. 1996) ("To prevail on a claim of

copyright infringement, a plaintiff must show two elements: (1)

ownership of a valid copyright and (2) copying of the protected work

by the alleged infringer."). See also T-Peg, Inc. v. Vermont Timber

Works, Inc., 459 F.3d 97, 108 (1st Cir. 2006) (the burden is on the

claimant to prove a valid copyright and its infringement); Johnson

v. Gordon, 409 F.3d 12, 17 (1st Cir. 2005). Here it is not disputed

that Mr. Brown used the Corretjer poems, and although it is not an

issue, Brown states that the poet welcomed and encouraged this

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usage. See Grubb, 88 F.3d at 3 (the claimant bears the burden of

proof as to both elements of a copyright claim).

Mr. Brown argued in the district court that LAMCO did not have

a valid copyright because ten of the poems had been published and

placed in the public domain, whether viewed under the notice

requirements of the 1909 Copyright Act or the 1976 Copyright Act.

The district court agreed that the burden was on LAMCO, as the

claimant, to establish this threshold element. The Act of 1909

provided:

Any person entitled thereto by this title may secure
copyright for his work by publication thereof with the
notice of copyright required by this title; and such
notice will be affixed to each copy thereof published or
offered for sale in the United States by authority of the
copyright proprietor, except in the case of books seeking
ad interim protection under section 22 of this title.

1909 Copyright Act, 17 U.S.C. § 10 (emphasis added.) As explained

in Twin Books Corp. v. Walt Disney Co., 83 F.3d 1162 (9th Cir.

1996):

The general rule under the 1909 Act is that a work must
bear a valid copyright notice upon publication in order
to secure copyright protection in the United States.
Nimmer on Copyright § 7.02(C)(1). Under that rule, a
publication of a work in the United States without the
statutory notice of copyright fell into the public
domain, precluding forever any subsequent copyright
protection of the published work.

Id. at 1965-66

Under the 1909 Act the principle evolved that a "general

publication" without the statutory notice could bar access to

federal copyright, but a "limited publication" would not. See Burke

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v. Nat'l Broad. Co., Inc., 598 F.2d 688, 691 (1st Cir. 1979). This

principle carried forward to the Act of 1976 (effective January 1,

1978), which also required including a copyright notice in the first

publication. See 17 U.S.C. § 401(b).2

It was thus necessary for LAMCO to show, at least prima facie

in light of Brown's documentary evidence, that the poems at issue

were not published before the February 19, 1979 publication recited

in the registration certificate obtained by LAMCO in 2000. All that

LAMCO offered the district court was a denial of Brown's assertion,

plus the admission that Yerba Bruja with six poems was published in

1957. The district court referred to the absence of support, in

considering the evidentiary weight appropriate to LAMCO's copyright

certificate. The 1976 Act provides:

In any judicial proceedings the certificate of
registration made before or within five years after first
publication of the work shall constitute prima facie
evidence of the validity of the copyright and of the
facts stated in the certificate. The evidentiary weight
to be accorded the certificate of a registration made
thereafter shall be within the discretion of the court.

17 U.S.C. § 410(c). Thus a registration within five years of first

publication is accompanied by a presumption of validity of the

copyright, whereas a registration obtained after five years benefits

from no presumption, and the weight given to such a registration is

"within the discretion of the court." 17 U.S.C. § 410(c). See 3

2
This notice requirement applied to all publications until
March 1, 1989, when United States adherence to the Berne Convention
established that a copyright notice would no longer be required.

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Nimmer on Copyright, § 12.11, at 12-195 (2006) ("The significant

difference between these two provisions [of the 1909 and 1976 Acts]

is that the prima facie effect of registration was achieved under

the 1909 Act whenever registration occurred whereas, under the

current Act, it is limited to those registrations that occur before,

or within five years after, first publication of the work.")

The district court explained that Congress included this five-

year provision in the Act of 1976 "on the ground that the longer the

lapse of time between publication and registration, the less likely

to be reliable are the facts stated in the certificate." Brown,

slip op. at 7-8 (citing 3 Nimmer on Copyright § 12-11 and Cabrera

v. Teatro del Sesenta, Inc., 914 F. Supp. 743 (D.P.R. 1995)).

Exercising the discretion assigned by § 410(a), the district

court observed that LAMCO's copyright did not benefit from prima

facie validity, and concluded that the LAMCO registration would

receive little or no weight. The court referred to the passage of

twenty years between the date of first publication stated on the

registration certificate and the date of registration, citing Sem-

Torq, Inc. v. K Mart Corp., 936 F.2d 851, 854 (6th Cir. 1991) (upon

a gap of six years after first publication "the district court was

not bound to accept the validity of the copyright"). See also Latin

Am. Music Co. v. Archdiocese of San Juan of the Roman and Apostolic

Church, 194 F. Supp.2d 30, 39 (D.P.R. 2001) (when more than five

years have elapsed between first publication and registration, the

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court is not required to accept the prima facie validity of the

copyright); Tuff 'N' Rumble Mgmt., Inc. v. Profile Records, Inc.,

1997 WL 158364, 42 U.S.P.Q.2d (BNA) 1398 (S.D.N.Y. 1997)

(registration of a work more than five years after first publication

does not constitute prima facie evidence that the copyright is

valid, and thus the claimant has the burden of proving the validity

of its copyright).

The district court found "specific reason here to question the

facts contained in the certificate, as it states that the first

publication of the copyrighted work was February 18, 1979, but

Defendants, in their opposition to Plaintiff's statement of

uncontested facts, conceded that five of the poems in question -

'Andando de Noche Sola,' 'En la Vida Todo es Ir,' 'Inriri Cahuvial,'

'El Hijo,' and 'Ayubiri' - were first published in 1957." Brown,

slip op. at 8. The court mentioned LAMCO's admission that the facts

stated in the registration certificate are "not wholly accurate,"

and also that LAMCO proffered no evidence to counter Brown's

submissions concerning the publication of the poems.

In its briefs on this appeal LAMCO does not respond to the

district court's concerns as reflected in the opinion. Instead,

LAMCO argues that Brown did not challenge the assignment to LAMCO

from Corretjer's heirs, a matter not in dispute. LAMCO also argues

that the district court erred in considering Brown's evidence of

publication when LAMCO had "controverted" it by general denial.

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However, the district court correctly held that the burden of proof

of the existence of a valid copyright is with the infringement

claimant, and in recognizing that LAMCO presented or proffered no

facts or evidence concerning Brown's presentation of books and

pamphlets containing the poems without a copyright notice. In

opposing a motion for dismissal for failure to state a claim, as in

opposing a motion for summary judgment, general denials are

insufficient, and the court is not required to credit "bald

assertions, unsupportable conclusions, periphrastic circumlocutions,

and the like." Olson v. Blanchard, 83 F.3d 1, 3 (1st Cir. 1996).

See also, e.g., Centro Medico del Turabo, Inc. v. Feliciano de

Melecio, 406 F.3d 1, 5-6 (1st Cir. 2005) (the pleadings must support

each material element needed to sustain recovery). LAMCO did not

present any substantive support for its claim of copyright, as

against the twenty-year gap and the uncontroverted documentary

evidence of prior publication without the required statutory notice.

LAMCO's final argument on appeal is simply that the district

court erred in ruling on the counterclaim instead of having a trial.

Again, there is no suggestion of evidence that might lead to a

judgment in LAMCO's favor. We have been directed to no reversible

error in the judgment that LAMCO had not established the requisite

elements for proceeding with a suit for copyright infringement. In

view of this affirmance we do not reach Brown's additional and

alternate defenses, inter alia, that Brown's phonorecords commenced

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a three-year statute of limitations as to any claim on behalf of the

author of the poems. See 17 U.S.C. § 507(b) ("No civil action shall

be maintained under the provisions of this title unless it is

commenced within three years after the claim accrued."); see

generally Otero v. P.R. Indus. Comm'n, 441 F.3d 18, 20 (1st Cir.

2006) (the appellate court may affirm the judgment on any basis

supported by the record).

III. THE REQUEST FOR RECONSIDERATION

LAMCO argues that the district court erred in refusing to grant

the petition for reconsideration, stating that it provided

additional evidence. The evidence was a copy of the assignment to

LAMCO from Mr. Corretjer's family. Mr. Brown points out that the

assignment does not concern copyright validity; it is a transfer of

whatever rights the family had, not a creator of rights. LAMCO does

not explain how this document establishes a valid copyright in the

poems. The district court correctly rejected LAMCO's argument that

the assignment was newly discovered evidence, or that it became

relevant only upon the court's ruling. We agree with the court that

no basis for reconsideration was shown. See Jorge Rivera Surillo

& Co. v. Falconer Glass Indus., 37 F.3d 25, 29 (1st Cir. 1994)

(motions for reconsideration are for the purpose of correcting

manifest errors of law or fact, or if there is newly-discovered

evidence, or an intervening change in the law).

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 In its petition, LAMCO also proposed to withdraw its prior

admission that Yerba Bruja was "first published in 1957." Brown

points out that LAMCO proffered no evidence in contradiction of the

publication documents of record, and that no error has been shown

in the district court's denial of reconsideration.

CONCLUSION

The dismissal of the infringement counterclaim is affirmed.

Affirmed.

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