United States Court of Appeals
For the First Circuit
No. 11-2108
LATIN AMERICAN MUSIC CO. INC., ET AL.,
Plaintiffs, Appellants,
v.
MEDIA POWER GROUP, INC., ET AL.,
Defendant, Appellees.
APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF PUERTO RICO
[Hon. Aida M. Delgado-Colón, U.S. District Judge]
Before
Torruella, Howard and Thompson,
Circuit Judges.
Artemio Rivera Rivera, with whom Anthony L. Bini Del Valle
was on brief, for appellants.
Patricia Rivera-MacMurray, with whom Miguel J. Ortega Nuñez
and Saldaña, Carvajal & Vélez-Rivé were on brief, for appellees.
January 15, 2013
HOWARD, Circuit Judge. Appellants Latin American Music
Company ("LAMCO") and Asociación de Compositores y Editores de
Música Latinoamericana ("ACEMLA")1 sued Media Power Group, Inc.
("MPG") and its president Eduardo Rivero Albino for infringement of
copyright with respect to twenty-one songs. The United States
District Court for the District of Puerto Rico granted the
defendants' motion for summary judgment as to twelve songs. Claims
as to the remaining nine songs went to trial, resulting in a jury
verdict for the defendants. LAMCO challenges both the summary
judgment and the unfavorable jury verdict. Finding no error, we
affirm.
I.
MPG owns four radio stations, branded "Radio Isla," in
Puerto Rico and has a number of affiliated stations that
rebroadcast its programming. In 2005, LAMCO notified MPG that
LAMCO owned copyrights to many songs played on Radio Isla and that
MPG was infringing the copyrights by using the songs on-air without
a license. After unsuccessful licensing negotiations, LAMCO filed
suit against MPG and its president, seeking money damages for
violations of the Copyright Act as to twenty-one songs. Segments
of the songs were allegedly broadcast during various news and talk-
1
LAMCO, a music publisher based in New York, and ACEMLA, a
performance-rights society based in Puerto Rico, are affiliated
with one another and their interests are aligned in this case.
Thus, we will refer to the appellants singularly as LAMCO.
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show programs on Radio Isla. LAMCO alleged that the composers or
their heirs had assigned copyrights in the songs to LAMCO. MPG did
not hold licenses from LAMCO or from the composers.
The parties' cross-motions for summary judgment were
referred to a magistrate judge for a report and recommendation.
Adopting most of the magistrate judge's findings and
recommendations, the district court denied LAMCO's motion and
granted the defendants' motion as to twelve songs, concluding that
LAMCO: (1) was collaterally estopped from litigating ownership of
valid copyrights in four songs; (2) failed to show compliance with
the registration requirement of 17 U.S.C. § 411(a) with respect to
four other songs; (3) failed to establish an infringing use as to
three songs; and (4) lacked ownership in one song. Infringement
claims as to the remaining nine songs were tried before a jury.
The jury found that LAMCO failed to prove that it owned the songs,
resulting in a verdict for the defendants.
II.
LAMCO presents four claims on appeal. First, it
challenges the jury verdict on sufficiency-of-the-evidence grounds.
Second, it contends that the issue of ownership was submitted to
the jury in violation of the law of the case doctrine. Third, it
maintains that the district court erred when it ruled that LAMCO
was collaterally estopped from litigating its claims as to four
songs. Finally, LAMCO challenges the dismissal of its claims
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relating to four other songs for failure to show compliance with 17
U.S.C. § 411(a). We address the claims in turn.
A. Sufficiency of the Evidence
To establish copyright infringement, the plaintiff must
prove two elements: "(1) ownership of a valid copyright, and (2)
copying of constituent elements of the work that are original."
Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991).
Provided that a copyright claim is registered with the Copyright
Office within five years of first publication of the work, the
certificate of registration is prima facie evidence of ownership
and the validity of the copyright. 17 U.S.C. § 410(c); Johnson v.
Gordon, 409 F.3d 12, 17 (1st Cir. 2005). "Upon the plaintiff's
production of such a certificate, the burden shifts to the
defendant to demonstrate some infirmity in the claimed copyright."
Johnson, 409 F.3d at 17.
The jury determined that LAMCO did not prove that it
owned copyrights in any of the nine songs that the defendants
allegedly infringed. LAMCO contends that the jury's determination
rests on insufficient evidence. Specifically, LAMCO argues that it
met its prima facie burden of establishing ownership of valid
copyrights in the songs by producing certificates of registration
and "chain of title" evidence of ownership, and that the defendants
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failed to carry their burden of rebutting this prima facie
showing.2 This contention need not detain us.
It is beyond peradventure that in order to
challenge the sufficiency of the evidence on
appeal, a party must first have presented the
claim to the district court, either by moving
for judgment as a matter of law before the
case is submitted to the jury and renewing
that motion after the verdict, Fed.R.Civ.P.
50(a), (b), or by moving for a new trial
pursuant to Fed.R.Civ.P. 59.
Hammond v. T.J. Litle & Co., Inc., 82 F.3d 1166, 1171 (1st Cir.
1996). Because LAMCO did not advance a sufficiency of the evidence
challenge before the district court, it is foreclosed from
advancing the challenge on appeal. Unitherm Food Sys., Inc. v.
Swift-Eckrich, Inc., 546 U.S. 394, 402 (2006). Indeed, we are
"powerless" to entertain such a challenge even to correct plain
error. Id. at 405; see Johnson v. Guerrieri Mgmt., Inc., 437 F.
App'x 853, 857 (11th Cir. 2011); Hertz v. Woodbury Cnty., 566 F.3d
775, 780-81 (8th Cir. 2009); Nitco Holding Corp. v. Boujikian, 491
F.3d 1086, 1089 (9th Cir. 2007). Accordingly, LAMCO's sufficiency
of the evidence challenge is procedurally defaulted and we do not
address it.
2
The jury was instructed that only two of the nine songs were
registered within five years of first publication, and thus the
defendants had the burden of rebutting the presumption of ownership
only with respect to those two songs. See Brown v. Latin Am. Music
Co., 498 F.3d 18, 23 (1st Cir. 2007) ("[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."
(internal quotation marks omitted)).
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B. Law of the Case
LAMCO next maintains that the district court erred in
submitting the ownership question to the jury because the court had
already ruled at summary judgment that there was no genuine issue
as to LAMCO's ownership of the songs. LAMCO argues that the
summary judgment ruling on ownership became the law of the case,
precluding the court from presenting the issue to the jury.
Before addressing the challenge, we review the procedural
context relevant to the claimed error. In his report and
recommendation on the parties’ cross-motions for summary judgment,
the magistrate judge concluded that there was no genuine dispute as
to LAMCO's ownership of valid copyrights in eight of the nine songs
subsequently presented to the jury, because the defendants did not
controvert LAMCO's evidence of ownership.3 The district court
adopted the conclusion in a footnote, noting that neither party
objected to it. Despite determining that ownership of the eight
songs was not genuinely in dispute, the court did not enter partial
3
The eight songs are: "Juanito Alimaña" by Catalino "Tite"
Curet-Alonso, "Madrigal" by Felipe Rosario Goyco, "La Botellita" by
Ernesto Carattini, "Padre San Antonio/Caminan las Nubes" by José
Ortiz, "La Loma del Tamarindo/Cante Jondo de Vieques" by Flor
Morales Ramos, "Honra y Cultura" by Flor Morales Ramos, "Llegó la
Navidad" by Raul Balseiro, and "Flotando Sobre el Caribe" by Luz
Celenia Tirado. Notwithstanding LAMCO's contention to the
contrary, ownership of a valid copyright in the ninth song
presented to the jury -- "Pollito Chicken" by Josefa Ramírez -- was
genuinely in dispute. See Latin Am. Music Co. v. Media Power
Group, Inc., CIV. 07-2254 ADC, 2011 WL 1261534, at *6-*7 & n.8
(D.P.R. Mar. 30, 2011).
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summary judgment in LAMCO's favor but instead denied outright its
motion for summary judgment. It is therefore unclear whether the
district court considered the fact of ownership undisputed for
purposes of the motion only, see Fed. R. Civ. P. 56(e)(2), or
treated the fact as established in the case, see Fed. R. Civ. P.
56(g).
At trial, the parties treated ownership as a live issue.
In the jointly proposed pretrial order and in its opening statement
to the jury, LAMCO acknowledged its burden to establish ownership.
LAMCO then produced evidence of ownership, and the defendants
challenged the sufficiency of LAMCO's evidence. Not only did LAMCO
fail to object to jury instructions on the issue of ownership, but
its own proposed instructions stated that LAMCO had the burden of
proving ownership of each song as an element of the claim. LAMCO
even objected to the defendants' Rule 50(a) motion for judgment as
a matter of law by arguing that it was for the jury to determine
whether LAMCO owned the songs. Furthermore, although the special
verdict form asked the jury to determine whether LAMCO proved
ownership of the songs, LAMCO did not object to it on the ground
that ownership was an established fact.4 The jury found that LAMCO
4
LAMCO did register a general objection to the special
verdict form, but did not articulate the grounds for the objection.
LAMCO only suggested that it preferred its own proposed verdict
form over the form proposed by the defendants and adopted by the
court. In supplemental briefing on appeal, LAMCO argues that it
was specifically objecting to the submission of the ownership
question to the jury, because its form only asked the jury to
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failed to prove that it owned the songs, and, as instructed, did
not proceed to decide whether LAMCO proved infringement.
Only in its Rule 59 motion for a new trial did LAMCO
apprise the district court of its theory that the ownership
determination was not for the jury because it was previously
determined at summary judgment.5 The court denied the motion
without setting forth its reasoning. LAMCO appeals on the ground
that the law of the case doctrine precluded the court from
submitting the ownership question to the jury, warranting a new
trial limited to the issues of infringement and damages.
decide whether infringement occurred and not whether LAMCO proved
ownership. Given that LAMCO treated ownership as a triable issue
throughout the trial and even proposed jury instructions on
ownership, it is remarkable to suggest that its general objection
somehow informed the district court that LAMCO was objecting to the
ownership question. Regardless of what its intentions may have
been, LAMCO did not apprise the court that this was the ground for
its objection. See Play Time, Inc. v. LDDS Metromedia Commc'ns,
Inc., 123 F.3d 23, 29 (1st Cir. 1997) ("Rule 51 requires a punctual
objection identifying 'distinctly the matter objected to and the
grounds of the objection.'" (quoting Fed. R. Civ. P. 51)). In any
event, we review preserved objections to special verdict forms for
abuse of discretion, Uphoff Figueroa v. Alejandro, 597 F.3d 423,
434 (1st Cir. 2010), and, as detailed later in the opinion, the
district court did not abuse its discretion in submitting the
ownership question to the jury.
5
Although LAMCO titled its post-verdict motion as a Rule
50(b) motion for judgment as a matter of law, or, in the
alternative, a motion for a new trial under Rule 59, LAMCO only
argued that a new trial should be granted. Because the jury did
not reach the infringement question, judgment as a matter of law in
LAMCO's favor was not an available remedy. Accordingly, we
construe the motion as limited to a motion for a new trial.
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We review the denial of a motion for a new trial for
abuse of discretion. Davignon v. Hodgson, 524 F.3d 91, 100 (1st
Cir. 2008). We review de novo whether the law of the case doctrine
applies. Negron-Almeda v. Santiago, 579 F.3d 45, 50 (1st Cir.
2009).
Under the law of the case doctrine, "unless corrected by
an appellate tribunal, a legal decision made at one stage of a
civil or criminal case constitutes the law of the case throughout
the pendency of the litigation." Flibotte v. Pa. Truck Lines,
Inc., 131 F.3d 21, 25 (1st Cir. 1997). Strictly speaking, the
doctrine was not implicated in this case because "interlocutory
orders . . . remain open to trial court reconsideration, and do not
constitute the law of the case." Harlow v. Children's Hosp., 432
F.3d 50, 55 (1st Cir. 2005) (internal quotation marks and
alteration omitted); see Fed. R. Civ. P. 54(b) (absent an entry of
a final judgment, "any order or other decision, however designated,
that adjudicates fewer than all the claims . . . may be revised at
any time before the entry of a judgment adjudicating all the
claims"). "We have sometimes said -- instead of an outright
statement that law of the case is not applicable to interlocutory
orders at all -- that law of the case permits a lower court to
review prior interlocutory orders as long as that review is not an
abuse of discretion." Harlow, 432 F.3d at 55. There was no abuse
of discretion here.
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Assuming that the summary judgment order deemed LAMCO's
ownership of the songs as established in the case, see Fed. R. Civ.
P. 56(g), the court was not precluded from revising that order to
revive the issue. Alberty-Vélez v. Corporación de P.R. para la
Difusión Pública, 242 F.3d 418, 422 (1st Cir. 2001) ("[A] trial
court retains jurisdiction to modify an order issued pursuant to
Rule 56[(g)] at any time."). Because the parties are entitled to
"rely on the [initial] ruling by forbearing from introducing any
evidence or cross-examining witnesses" in regard to established
facts, however, when the court "changes the initial ruling and
broadens the scope of trial, the [court] must inform the parties
and give them an opportunity to present evidence relating to the
newly revived issue" to avoid potential prejudice. Id. at 422,
424-25 (internal quotation marks and emphasis omitted).
The district court apparently did not give formal notice
that the issue of ownership was open to dispute.6 But the lack of
formal notice did not prejudice LAMCO because it treated ownership
as a live issue from the start. LAMCO presented evidence of
ownership, proposed instructing the jury that it had the burden of
proving ownership, and addressed the issue in its opening and
closing statements. Cf. id. at 424-25 ("sudden reopening" of an
issue established on summary judgment during presentation of
6
Indeed, at no point did the district court acknowledge the
effect of its earlier ruling that ownership was undisputed.
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defendant's case prejudiced plaintiff who relied on initial ruling
by not introducing evidence on the issue and was unprepared to
present evidence in rebuttal on short notice). Moreover, LAMCO
does not argue that it would have tried the case differently if it
had received formal notice that ownership was at play. See Leddy
v. Standard Drywall, Inc., 875 F.2d 383, 386 (2d Cir. 1989) (no
prejudice resulted from district court's failure to give appellants
"clear notice" that it was revising partial summary judgment
because they conceded they "had no other evidence they would have
presented"); cf. Alberty-Vélez, 242 F.3d at 425 (appellant's
outline of potential evidence to address the revived issue
demonstrated prejudice because it was "impractical" to expect her
to present such evidence on short notice). For their part, the
defendants, unlike at summary judgment, vigorously disputed LAMCO's
evidence of ownership at trial. Given the parties' treatment of
the ownership issue at trial, the better view of the record is that
the issue had not been decided. Even if the summary judgment order
in fact treated ownership as an established fact, however, the
district court did not abuse its discretion by reviving the issue
and presenting it to the jury. We affirm the denial of LAMCO's
motion for a new trial.
C. Collateral Estoppel
In Brown v. Latin Am. Music Co., 498 F.3d 18 (1st Cir.
2007), we affirmed the district court's dismissal of LAMCO's claims
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of infringement of copyright in eleven songs by Juan Antonio
Corretjer on the basis that LAMCO failed to establish a prima facie
case of ownership of valid copyrights in the songs. In the instant
litigation, LAMCO alleged infringement of four of those songs.7
The district court dismissed the claims on collateral estoppel
grounds, noting that LAMCO had presented the same evidence of
copyright ownership that the Brown court deemed insufficient.
LAMCO argues that the dismissal was in error, because in this case
LAMCO provided additional evidence of ownership that the district
court in Brown refused to consider due to tardy submission.
We review de novo a district court's dismissal of a claim
on collateral estoppel grounds. González-Piña v. Rodríguez, 407
F.3d 425, 430 (1st Cir. 2005). Because the judgment in Brown was
entered by a federal court exercising federal question
jurisdiction, the applicability of collateral estoppel is a matter
of federal law. Ramallo Bros. Printing, Inc. v. El Día, Inc., 490
F.3d 86, 89 (1st Cir. 2007).
Collateral estoppel, or issue preclusion, applies when:
"(1) the issue sought to be precluded in the later action is the
same as that involved in the earlier action; (2) the issue was
actually litigated; (3) the issue was determined by a valid and
binding final judgment; and (4) the determination of the issue was
7
The songs are: "Alabanza/Oubao Moin," "Andando de Noche
Sola," "Boricua en la Luna," and "En la Vida Todo es Ir."
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essential to the judgment." Mercado-Salinas v. Bart Enters. Int'l,
Ltd., 671 F.3d 12, 21-22 (1st Cir. 2011) (internal quotation marks
omitted). The dismissal of LAMCO's infringement claims in Brown
for failure to establish ownership of valid copyrights in the
Corretjer works, including the four songs subject to the instant
litigation, plainly satisfies all four elements, and LAMCO does not
argue otherwise.
Instead, LAMCO maintains that the Brown court dismissed
the claims without the benefit of additional evidence that LAMCO
submitted too late in that case, namely a certificate of
recordation that included the assignment of copyrights from
Corretjer's heirs to LAMCO. The argument is misguided. Although
"changes in facts essential to a judgment will render collateral
estoppel inapplicable in a subsequent action raising the same
issues," Montana v. United States, 440 U.S. 147, 159 (1979), a
party cannot circumvent the doctrine's preclusive effect merely by
presenting additional evidence that was available to it at the time
of the first action. As we noted in Brown, the assignment contract
was not newly-discovered evidence and it did not signal a change in
facts essential to the judgment. 498 F.3d at 25. Despite having
the contract in its possession at all relevant times, LAMCO failed
to timely submit it to the Brown district court at the summary
judgment stage. Brown v. Latin Am. Music Co., No. 05-CV-1242
(JAF), 2006 WL 2059606, at *2 (D.P.R. July 21, 2006). That it
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timely produced the contract in the instant litigation is
inapposite. The district court correctly concluded that LAMCO was
collaterally estopped from litigating the claims as to the four
Corretjer songs.8
D. Dismissal of Four Songs for Lack of Evidence of Registration
On the magistrate judge's recommendation, the district
court granted the defendants' motion for summary judgment as to
four songs on the ground that LAMCO failed to produce evidence of
registration.9 Registration of a copyright is a precondition to
filing a copyright infringement claim. Airframe Sys., Inc. v. L-3
Commc'ns Corp., 658 F.3d 100, 105 (1st Cir. 2011) (citing 17 U.S.C.
§ 411). Although the registration requirement "does not implicate
the subject-matter jurisdiction of federal courts, proof of
registration of the allegedly infringed work remains an element of
a cause of action for copyright infringement." Id. (internal
quotation marks, citations, and alteration omitted).
LAMCO challenges the ruling on two grounds. First, LAMCO
maintains that it had no duty to introduce evidence of registration
because the defendants did not properly raise the issue in their
8
LAMCO's alternative argument, that collateral estoppel is
inapplicable because ownership is not a static concept, need not
detain us. LAMCO does not claim that it acquired any new rights to
the four Corretjer songs since the Brown decision.
9
The songs are: "Secreto" by Pepito Lacomba, "Tres
Recuerdos" by Johnny Rodríguez, "Amor en Tus Ojos" by Johnny
Lastra, and "Jibaro" by Hilario Centeno.
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motion for summary judgment.10 LAMCO, however, did not object to
the magistrate judge's recommendation to dismiss the claims on this
ground. It is well-settled that "an objection to a magistrate
judge's order must apprise the district court of all the objector's
claims of error, and new claims of error on the part of the
magistrate judge cannot thereafter be raised in this court."
Phinney v. Wentworth Douglas Hosp., 199 F.3d 1, 4 (1st Cir. 1999).
Accordingly, we confine our analysis to the claim that LAMCO did
preserve: whether the evidence of registration was sufficient to
preclude summary judgment. Our review on summary judgment is de
novo. Barros-Villahermosa v. United States, 642 F.3d 56, 58 (1st
Cir. 2011).
For the four songs, LAMCO submitted certificates of
recordation containing assignments of rights to either the specific
song at issue or all of the relevant composer's works. The
district court correctly determined that a certificate of
recordation is not evidence of registration because it "merely
indicates that the document attached was recorded in the Copyright
Office on a specific date." Latin Am. Music Co. v. Media Power
Group, Inc., No. 07-CV-2254 (ADC), 2011 WL 1261534, at *3 (D.P.R.
Mar. 30, 2011); see 17 U.S.C. § 205(a) ("Any transfer of copyright
10
LAMCO contends that the defendants argued for the first time
in their reply brief that LAMCO failed to present admissible
evidence of registration for "Secreto" and "Amor en Tus Ojos" and
at no point raised the absence of such evidence for "Jibaro" and
"Tres Recuerdos."
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ownership or other documents pertaining to a copyright may be
recorded in the Copyright Office . . . ."). Because recordation of
an instrument relating to a work does not indicate that the work
itself has been registered, see 17 U.S.C. § 205(a), (c), a
certificate of recordation does not suffice to prove compliance
with the registration requirement. LAMCO did not produce any other
evidence of registration with respect to "Jibaro"11 and "Secreto,"
and thus claims as to those songs were properly disposed of by
summary judgment.12
11
LAMCO informed the district court that it had applied for
a certificate of registration for "Jibaro" in 2005, but did not
receive it from the Copyright Office in time for the summary
judgment proceedings. Circuits are split on whether the
registration requirement is satisfied "at the time the copyright
holder's application is received by the Copyright Office (the
'application approach'), or at the time that the Office acts on the
application and issues a certificate of registration (the
'registration approach')." Cosmetic Ideas, Inc. v.
IAC/Interactivecorp., 606 F.3d 612, 615-16 (9th Cir. 2010)
(collecting cases). We do not weigh in on the issue because, as
the district court noted, LAMCO failed even to show that it had
submitted all the necessary application materials for registration.
See 17 U.S.C. § 408(a) (to satisfy the statutory requirements for
registration, the owner of copyright must submit to the Copyright
Office an application, fee, and deposit copy of the work to be
copyrighted).
12
LAMCO also points to a declaration of its president as
evidence of registration. In the declaration, Luis Raul Bernard
merely declares that the assignments of copyrights "were all duly
recorded and the ownership all registered with the United States
Copyright Office as identified in Exhibit A and are attached hereto
. . . ." (emphasis added). His declaration, therefore, is limited
to the evidence submitted as part of the summary judgment record
and is not, in and of itself, evidence of registration.
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With respect to "Tres Recuerdos," LAMCO also submitted
registration documentation for a work by the same composer entitled
"Tres Historias de Amor" and argued, without any support in the
record, that the two works were the same and that both referred to
a song entitled "Tres Historias de Amor en un Recuerdo." Despite
the magistrate judge's unwillingness to infer that the two works
were the same, LAMCO did not present any additional evidence to the
district court in objecting to the recommended dismissal of the
claim. The district court agreed with the magistrate judge that
LAMCO's unsubstantiated statement that the two works were the same
was insufficient to withstand summary judgment. LAMCO now urges
that the district court was required to draw the inference that
"Tres Recuerdos" and "Tres Historias de Amor" were the same work.
We disagree. There is nothing in the record to suggest that the
inference is warranted. Accordingly, the dismissal of the claim
was proper.
Finally, LAMCO's proof of registration for "Amor en Tus
Ojos" included printouts from the Copyright Office's online
catalogue indicating that the song was registered in 1989 by its
composer and that the copyright was subsequently transferred to
LAMCO. The magistrate judge refused to consider the catalogue
printouts as evidence of registration, citing Local Rule 56(e) for
the proposition that the printouts would not be admissible at
trial. In objecting to the report and recommendation, LAMCO
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indicated that the printouts ought to be considered but did not
address the issue of admissibility. The district court adopted the
magistrate judge's recommendation to dismiss the claim. In its
appellate brief, LAMCO yet again lists the printouts as evidence of
registration but presents no argument as to their admissibility.
Its failure to raise the claimed evidentiary error before the
district court and to present developed argumentation on appeal
constitutes a clear waiver. See United States v. Zannino, 895
F.2d 1, 17 (1st Cir. 1990) (holding that "issues adverted to in a
perfunctory manner, unaccompanied by some effort at developed
argumentation, are deemed waived"). The reviewing court cannot be
expected to "do counsel's work, create the ossature for the
argument, and put flesh on its bones." Id. Accordingly, we do not
decide whether the catalogue printouts ought to be admissible or
whether they would have been sufficient evidence of registration to
preclude summary judgment.
III.
For the foregoing reasons, we affirm the judgments of the
district court.
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