Latin American Music Co. v. Archdiocese of San Juan of the Roman Catholic & Apostolic Church

United States Court of Appeals
For the First Circuit

No. 05-2806

LATIN AMERICAN MUSIC CO., INC.
and ASOCIACIÓN DE COMPOSITORES
Y EDITORES DE MÚSICA LATINOMERICANA,
Plaintiffs, Appellants,

TURABO RADIO CORP., ET AL.
Plaintiffs,

SOUTHERN MUSIC PUBLISHING CO., INC., ET AL.,
Plaintiffs, Appellees

v.

THE ARCHDIOCESE OF SAN JUAN OF THE
ROMAN CATHOLIC & APOSTOLIC CHURCH, ET AL.,
Defendants, Appellees.

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

[Hon. Juan M. Pérez-Giménez, U.S. District Judge]

Before
Lipez, Circuit Judge,
Selya, Senior Circuit Judge,
and DiClerico, Jr.,* District Judge.

Jane Becker Whitaker, with whom Law Offices of Jane Becker
Whitaker, and Angel N. Caro, were on brief, for appellants.
Richard H. Reimer, with whom Diego A. Ramos, Fiddler González
& Rodriguez, PSC, Stephen S. Young, and Holland & Knight, LLP, were
on brief for appellee American Society of Composers, Authors and
Publishers.
Barry I. Slotnick, with whom Jacques Rimokh, Loeb & Loeb, LLP

*
Of the District of New Hampshire, sitting by designation.
and Adsuar Muñiz Goyco & Besosa, PSC, were on brief for appellees,
Southern Music Publishing Co., Inc., et al.

August 16, 2007
 DiClerico, District Judge. Latin American Music Company

("LAMCO") and Asociación de Compositores y Editores de Música

Latino Americana ("ACEMLA") brought suit in 1996, alleging that the

Archdiocese of San Juan of the Roman Catholic and Apostolic Church,

through its two radio stations, along with ten other radio

broadcasters, were infringing their copyrights in fifty-one songs.1

The case then expanded to include other claims and parties and was

consolidated with four related cases, which together involved

copyrights to more than five hundred songs. LAMCO and ACEMLA

appeal decisions by the district court that denied their

infringement claims as to five songs; allocated half of the

obligation to pay for a special master's fees to LAMCO and ACEMLA;

dismissed their claims, counterclaims, and defenses as a sanction;

and held that they were infringing copyrights owned by other

parties.

1
The original defendants were the Archdiocese d/b/a WORO-FM
and WKVM-AM, Isabela Broadcasting Co. d/b/a WKSA-FM and WISA-AM,
Kelly Broadcasting System, Corp. d/b/a WNIK-FM and WNIK-AM, Ramon
Rodriguez & Associates, Inc. d/b/a WCFI-FM, Bestov Broadcasting
System, Corp. d/b/a WIAC-AM and WIAC-FM, HQ-FM 103, Inc. d/b/a
WCHQ-FM, AERCO Broadcasting, Corp. d/b/a WQBS-AM, Tommy Muñiz
Productions, Inc. d/b/a WLUZ-AM, VI-MAN Broadcast System, Corp.
d/b/a WEGA-AM, ABG Realty & Investment Corp. d/b/a WRSJ-AM, and
Sensacion Broadcasting Corporation d/b/a WSAN-FM.

-3-
 I.

Luis Raul Bernard founded LAMCO, a music publisher based

in New York, and ACEMLA, a performance rights society2 affiliated

with LAMCO and based in Puerto Rico. Bernard is the chief

executive officer, director, and majority stockholder of both LAMCO

and ACEMLA. Because LAMCO and ACEMLA are closely aligned in this

case, we will refer to them as "LAMCO/ACEMLA," unless individual

differentiation is necessary.

In response to the infringement suit brought against them

by LAMCO/ACEMLA, the Archdiocese and the other radio broadcaster

defendants (collectively referred to as "the Broadcasters") brought

counterclaims against LAMCO/ACEMLA. They also filed third-party

complaints against Broadcast Music, Inc., Peer International

Corporation, and the American Society of Composers, Authors, and

Publishers ("ASCAP"), seeking indemnification and a defense against

the claims brought by LAMCO/ACEMLA.3 ASCAP and LAMCO/ACEMLA

disputed the rights to five of the songs listed in the LAMCO/ACEMLA

2
"Such organizations . . . obtain rights to musical
compositions, license them (often through blanket licenses), and
collect royalties from sub-licenses." Venega-Hernandez v.
Asociacion De Compositores y Editores De Música LatinoAmericana,
424 F.3d 50, 52 (1st Cir. 2005).
3
A more detailed presentation of the complex procedural
history of this case can be found in the district court's orders.
See Latin Am. Music Co. v. Archdiocese of San Juan of the Roman
Catholic & Apostolic Church, 2005 WL 1847013 (D.P.R. Aug. 2, 2005);
Latin Am. Music Co. v. Archidocese of San Juan, 194 F. Supp. 2d 30
(D.P.R. 2001); Peer Int'l Corp. v. Latin Am. Music Corp., 161 F.
Supp.2d 38 (D.P.R. 2001).

-4-
complaint and agreed that resolution of the ownership and copyright

issues as to those songs could serve as a roadmap for resolving the

same issues as to the other songs disputed by the parties. ASCAP

and LAMCO/ACEMLA filed motions for partial summary judgment. The

district court granted ASCAP's motion, dismissing LAMCO/ACEMLA's

infringement claims on all five songs.

Several music publishers (collectively referred to as

"the Publishers") brought claims against LAMCO/ACEMLA, alleging

that they owned or controlled copyrights to 468 songs that

LAMCO/ACEMLA were infringing.4 The Publishers moved for summary

judgment on their infringement claims. LAMCO/ACEMLA disputed the

rights to 294 of the songs claimed by the Publishers and moved for

summary judgment as to infringement of those copyrights. As to the

remaining 174 songs, LAMCO/ACEMLA acknowledged that they had been

included in an ACEMLA catalog in error but denied infringement. In

response to the motions, the district court summarized the bases of

the parties' claims of ownership and the applicable law but

reserved judgment on infringement pending review of the ownership

issues by a special master.

On March 31, 2003, noting that "the present copyright

cases are complicated and extremely fact intensive," the district

4
The music publishers are Peer International Corporation, Peer
International Corporation of Puerto Rico, Southern Music Publishing
Company, Inc., Peermusic Ltd., Sonido, Inc. d/b/a FAF publishing,
EMI Catalogue Partnership, EMI April Music, Inc., and Broadcast
Music, Inc.

-5-
court appointed a special master to examine the documentation

pertaining to the chains of title as to all of the songs at issue

in the consolidated cases. The district court directed the special

master to make recommendations as to issues of authorship,

ownership, and compliance with statutory requirements, whether the

copyrights for the songs at issue had been infringed, and if so, by

whom, and a recommendation on LAMCO/ACEMLA's allegations of missing

royalty payments. The special master's compensation was set at an

hourly rate of $565. The district court ordered the Publishers to

pay half of the fees and costs and LAMCO/ACEMLA to pay the other

half and ordered each group to file a bond with the court in the

amount of $37,500, within ten days following entry of the order.

During the course of the litigation, LAMCO/ACEMLA

repeatedly failed to meet court-ordered deadlines and obligations,

including posting the bond. On October 13, 2004, the district

court issued an ultimatum, granting a final thirty-day extension of

time for LAMCO/ACEMLA to post the bond and warning that failure to

comply would result in sanctions which could include dismissal of

their claims and affirmative defenses. Nearly nine months later,

on August 2, 2005, the district court concluded that LAMCO/ACEMLA

had failed to comply with its order and dismissed their claims,

counterclaims, and affirmative defenses in all of the consolidated

cases.

-6-
 On May 10, 2004, the special master issued his report and

recommendation. The district court approved and adopted the

special master's report and recommendation, in part, with

modifications as to the ownership of rights to certain songs, and

ordered a hearing to resolve a question about notice and good faith

with respect to ownership of rights in other songs. With respect

to the songs for which the special master's report and

recommendation was approved, the district court granted the

Publishers' motion for summary judgment on copyright infringement

against LAMCO/ACEMLA. The order also assessed damages in the

amount of $313,500 and allowed the Publishers to file an

application for reasonable attorneys' fees and costs.

Following a hearing on ownership issues for the songs

that were not resolved by the special master's report and

recommendation, the district court determined that the Publishers

also owned the copyrights to those songs. The court granted the

Publishers' motion for summary judgment as to their infringement

claims on those songs and awarded damages in the amount of $29,250.

The court also granted the Publishers' motion for a permanent

injunction against future infringement by LAMCO/ACEMLA and resolved

other issues that were then pending. Based on those

determinations, the district court entered judgment as to the

claims and counterclaims in the consolidated cases. LAMCO/ACEMLA

appealed.

-7-
 II.

On appeal, LAMCO/ACEMLA challenge the district court's

decisions holding that LAMCO/ACEMLA did not own copyrights in five

songs claimed by ASCAP-member publishers, apportioning fifty

percent of the special master's fees to LAMCO/ACEMLA, sanctioning

them for failing to post a bond as ordered, concluding that they

lacked standing to seek rescission of copyright assignments, and

holding that authorizing use of songs constitutes copyright

infringement. ASCAP and the Publishers oppose LAMCO/ACEMLA's

arguments on appeal.

A. Summary Judgment on Five Songs

ASCAP sought partial summary judgment on LAMCO/ACEMLA's

infringement claims against the Broadcasters as to five songs,

asking that those five claims be dismissed.5 LAMCO/ACEMLA sought

partial summary judgment that they held the performing rights

licenses to the same five songs. The disputed five songs are:

"Caballo Viejo" by Simón Díaz, "Patacón Pisa'o" by Ramon A.

Chaverra, "Ojos Chinos" by Rogelio "Kito" Vélez, and "Te Sigo

Quieriendo" and "Una Tercera Persona" by Luz C. Tirado.

5
ASCAP is a performing rights society that licenses "the
public performance of nondramatic musical works on behalf of
copyright owners of such works." 2 Melville B. Nimmer & David
Nimmer, Nimmer on Copyright § 8.19 at 8-268.47 (2005) (quoting 17
U.S.C. § 101). ASCAP can grant only non-exclusive licenses on
behalf of its members and does not own the copyrights to the works
of its members. Id. at 8-269.

-8-
 The district court concluded that as to four of the

songs, "Caballo Viejo," "Patacón Pisa'o," "Te Sigo Quieriendo," and

"Una Tercera Persona," ASCAP members held the copyrights, which

precluded LAMCO/ACEMLA's infringement claims arising from those

songs. With respect to the fifth song, "Ojos Chinos," the district

court determined that LAMCO/ACEMLA had a non-exclusive license,

which might entitle them to receive payments from the Broadcasters

but did not support standing to maintain a copyright infringement

claim. The court also held that although LAMCO/ACEMLA recorded

their agreement with the composer's heirs to a non-exclusive

license for all performing rights to "Ojos Chinos," the recording

did not comply with the requirements of 17 U.S.C. § 205(c) and,

therefore, did not provide constructive notice of the license.

Based on those conclusions, the court dismissed LAMCO/ACEMLA's

infringement claims based on the five disputed songs.

LAMCO/ACEMLA appeal that decision.

We review a district court's summary judgment decision de

novo, using the same standard that governed below. Ruiz-Rosa v.

Rullan, 485 F.3d 150, 155 (1st Cir. 2007). Summary judgment is

appropriate when the facts properly supported by the record and

taken in the light most favorable to the non-moving party "show

that there is no genuine issue as to any material fact and that the

moving party is entitled to judgment as a matter of law." Fed. R.

Civ. P. 56(c). Cross motions for summary judgment do not change

-9-
the standard. Specialty Nat'l Ins. Co. v. OneBeacon Ins. Co., 486

F.3d 727, 732 (1st Cir. 2007). To prevail on a copyright

infringement claim, "two elements must be proven: (1) ownership of

a valid copyright, and (2) copying of constituent elements of the

work that are original." T-Peg, Inc. v. Vt. Timber Works, Inc.,

459 F.3d 97, 108 (1st Cir. 2006) (internal quotation marks

omitted); accord Brown v. Latin Am. Music Co., ___ F. ___, 2007 WL

2253543, *3 (1st Cir. Aug. 7, 2007).

1. "Caballo Viejo"

It is undisputed that the composer, Simón Díaz, granted

the rights to "Caballo Viejo" to Selemúsica, C.A. through an

agreement dated September 29, 1981. Selemúsica entered agreements

with West Side Music Publishing, Inc. that granted West Side the

right to represent Selemúsica in the United States and its

territories. West Side registered the copyright for "Caballo

Viejo" in 1983, showing Selemúsica as the copyright owner.

LAMCO/ACEMLA based their claim to "Caballo Viejo" on

their agreements with West Side. In an agreement dated May 15,

1981, West Side granted LAMCO/ACEMLA the photomechanical rights and

the exclusive rights to publish and license performance of "Caballo

Viejo" for a five-year term. West Side and LAMCO/ACEMLA also

entered an exclusive performing rights agreement on January 3,

1982. LAMCO/ACEMLA recorded the 1981 agreement on December 17,

1986.

-10-
 ASCAP asserted its claim to "Caballo Viejo" also based on

the rights held by West Side. West Side entered an agreement with

Barnegat Music Corporation in 1989, which included the rights to

collect performing fees and royalties for "Caballo Viejo." West

Side and Barnegat merged in 1993. Barnegat had been a member of

ASCAP since 1984. On December 2, 1986, before LAMCO/ACEMLA

recorded their 1981 agreement with West Side, the Copyright Royalty

Tribunal determined that "[t]he Settling Parties [which include

ASCAP] showed that Selemusica, C.A. conveyed its rights to Barnegat

Music Corp., an ASCAP member."6 Final Determination of the

Distribution of the 1984 Jukebox Royalty Fund, CRT No. 85-1-84JD,

1986 WL 116931, 51 Fed. Reg. 43,455, 43,459 (CRT Dec. 2, 1986).

The district court agreed with the Tribunal that Barnegat

held the rights to "Caballo Viejo" but came to that conclusion

based on a somewhat different chain of title. The court concluded

that Hector Varona, the president of West Side, verbally terminated

the 1982 agreement with LAMCO/ACEMLA, thereafter did not accept

royalty payments sent to him, and refused to extend the 1981

agreement with LAMCO/ACEMLA. Based on those circumstances, the

district court held, based on the summary judgment record, that the

rights to "Caballo Viejo" were transferred from the composer to

6
ASCAP relies on the Tribunal's finding, while LAMCO/ACEMLA
denigrate it. Neither side cites authority as to what weight the
Copyright Royalty Tribunal's finding should be given. We will not
explore the preclusive effect of that determination in the absence
of appropriately supported briefing by the parties.

-11-
Selemúsica, to West Side, and then to Barnegat, an ASCAP member.

The court ruled that ASCAP was entitled to collect performance

royalties for the song.

On appeal, LAMCO/ACEMLA argue that the district court

erroneously concluded that West Side rescinded the 1982 agreement

with LAMCO/ACEMLA and assert that under the 1982 agreement,

LAMCO/ACEMLA continue to own the rights to "Caballo Viejo."

LAMCO/ACEMLA also argue that Varona, on behalf of West Side, could

not terminate the 1982 agreement verbally because all transfers of

copyright must be in writing. See 17 U.S.C. § 204(a). ASCAP

contends that West Side's entire agreement with LAMCO/ACEMLA

expired at the end of the 1981 agreement's five-year term and was

not renewed.

The summary judgment record is far from clear as to how,

when, or if the 1982 agreement was terminated. The record shows

that the 1981 agreement between LAMCO/ACEMLA and West Side expired

at the end of its five-year term in 1986.7 The 1982 agreement

between LAMCO/ACEMLA and West Side, however, did not include a time

limit. In the 1982 agreement, West Side "transfer[red] and cede[d]

to ACEMLA the exclusive rights to license in the territory or

territories of United States, Puerto Rico and Dominican Republic

7
There is some evidence that the term was extended for a few
months, which does not affect this decision.

-12-
all the rights to public performance which have been assigned to

West Side and other [sic] which may be assigned in the future . .

. ."

Although the district court concluded that Varona

verbally terminated the 1982 agreement, his testimony suggests that

he did not remember or clearly understand the distinctions between

the 1981 and 1982 agreements and that he was not sure when or how

he terminated the 1982 agreement. Further, even if he did intend

to terminate the 1982 agreement, that action would be effective

only if the exclusive license, granted in the 1982 agreement, could

be terminated verbally and unilaterally. The district court's

order does not cite authority to support either theory.8

Therefore, the record as it pertains to "Caballo Viejo"

demonstrates that material facts remain in dispute so that ASCAP

was not entitled to summary judgment as to that song.

2. "Patacón Pisa'o"

Ramon A. Chaverra wrote "Patacón Pisa'o" in 1984. He

conveyed his copyrights to a Colombian music publisher, Prodemus,

in February of 1984. Prodemus then conveyed to Música Unica

Publishers the right to represent Prodemus in the United States and

Puerto Rico, which gave Música Unica the rights to authorize and

license "Patacón Pisa'o." Música Unica obtained a copyright

registration certificate for "Patacón Pisa'o" on September 17,

8
We take no position as to either of these disputed issues.

-13-
1985. Música Unica, operating under the name Unimúsica, is an

ASCAP member and has a licensing agreement with ASCAP.

LAMCO/ACEMLA's claim to rights for "Patacón Pisa'o" was

based on a separate line of agreements. On September 23, 1985,

Chaverra, the composer, entered an agreement with Edinmúsica, LDT,

transferring all title and licensing authority for "Patacón Pisa'o"

as interpreted by another performer. On June 2, 1986, Edinmúsica

and LAMCO/ACEMLA obtained a copyright registration for the words

and music for "Patacón Pisa'o." In 1994, Chaverra terminated his

agreement with Edinmúsica and entered an agreement with

LAMCO/ACEMLA, transferring the exclusive rights to publish "Patacón

Pisa'o" and non-exclusive rights to collect performance royalties.

Chaverra also signed an affidavit, stating that LAMCO/ACEMLA

represented his interests. On November 21, 1994, LAMCO/ACEMLA

recorded Chaverra's affidavit and their agreement in the Copyright

Office.

The district court concluded that because Música Unica

never recorded its agreement with Chaverra, LAMCO/ACEMLA was the

first to record. The district court held, however, that Música

Unica’s copyright registration certificate for "Patacón Pisa'o"

provided constructive notice of Música Unica’s claim to the song.

For that reason, LAMCO/ACEMLA could not satisfy the good faith and

without notice requirements of 17 U.S.C. § 205(d). LAMCO/ACEMLA

dispute that result, arguing that the registration, in Música

-14-
Unica’s name, did not provide constructive notice that ASCAP had

the right to license the song.

The recording statute, 17 U.S.C. § 205, provides the

process for "the Copyright Office to accept for recordation any

document pertaining to a copyright." 2 Nimmer on Copyright, supra,

§ 7.25, 7-233. Section 205 "is relevant primarily to providing

notification of transfers of copyright ownership; hence, it is

interwoven with the inquiry over what constitutes constructive

notice of ownership and accordingly, when a subsequent transferee

may prevail over a prior transferee." Id. Section 205(d)

provides:

[a]s between two conflicting transfers, the
one executed first prevails if it is recorded
in the manner required to give constructive
notice under [17 U.S.C. § 205(c)], within one
month after its execution in the United States
or within two months after its execution
outside the United States, or at any time
before recordation in such manner of the later
transfer. Otherwise the later transfer
prevails if recorded first in such manner, and
if taken in good faith, for valuable
consideration or on the basis of a binding
promise to pay royalties, and without notice
of the earlier transfer.

A copyright registration certificate in the Copyright Office

provides "constructive notice as to the ownership of the copyright

and the facts stated in the registration certificate." Saenger

Org., Inc. v. Nationwide Ins. Licensing Assocs., Inc., 119 F.3d 55,

67 (1st Cir. 1997); see also Johnson v. Jones, 149 F.3d 494, 505

(6th Cir. 1998) ("Constructive notice of a valid copyright is

-15-
presumed upon registration."). Under federal copyright law,

remedies for infringement are tied to copyright registration, which

provides incentive to owners to register copyrights and "also

provides potential infringers with an incentive to check the

federal register." Id.; cf. Gaiman v. McFarlane, 360 F.3d 644, 655

(7th Cir. 2004) (holding that co-authors do not have incentive to

check the federal copyright register as to ownership claimed by

their collaborators).

To meet the § 205(d) requirements and prevail on summary

judgment as the first to record, LAMCO/ACEMLA had to provide

undisputed facts that they recorded the transfer from Chaverra in

good faith and without notice of the earlier transfer to Música

Unica. It is undisputed, however, that Música Unica obtained a

certificate of copyright registration for "Patacón Pisa'o" in

September of 1985, days before Chaverra entered an agreement with

Edinmúsica transferring rights to the song, and almost two years

before Edinmúsica and LAMCO/ACEMLA obtained a copyright

registration for the song. At the time LAMCO/ACEMLA entered into

their transfer agreement with Chaverra, a review of the Copyright

Office register would have revealed that Música Unica was listed as

the copyright owner. Música Unica's registration certification for

"Patacón Pisa'o," therefore, provided notice that prior

transactions existed relating to the copyright for "Patacón

-16-
Pisa'o," regardless of what entity currently might claim those

rights.

LAMCO/ACEMLA argue for a different rule that would base

constructive notice for purposes of § 205(d) on recording the

transfer to the current copyright owner, focusing on identification

of the current owner as opposed to notice of prior transfers.

Because such an interpretation would appear to alter the existing

legal standard, we are not persuaded to adopt LAMCO/ACEMLA's

argument. See, e.g., Pasdon v. City of Peabody, 417 F.3d 225, 228

(1st Cir. 2005) (declining invitation to expand standard in the

absence of supporting legal authority); Plumley v. S. Container,

Inc., 303 F.3d 364, 371 (1st Cir. 2002) (same). The district court

was correct in concluding, based on the record presented and §

205(d), that LAMCO/ACEMLA had notice of Música Unica’s copyright

claim to "Patacón Pisa'o," so that § 205(d) did not apply to give

LAMCO/ACEMLA priority and ASCAP's claim prevailed over

LAMCO/ACEMLA's claim.

3. "Ojos Chinos"

Regarding "Ojos Chinos," the district court concluded

that LAMCO/ACEMLA had received and recorded their license before

Southern Music Publishing Company, Inc. ("Southern") (an ASCAP

member) recorded, giving LAMCO/ACEMLA priority. The court held,

however, that because LAMCO/ACEMLA held only a non-exclusive

license, they lacked standing to bring a copyright infringement

-17-
claim. The district court also stated that the transfer agreement

LAMCO/ACEMLA recorded did not meet the specificity requirements of

17 U.S.C. § 205(c) and would not serve as constructive notice of

LAMCO/ACEMLA's rights to the song.

In their appellate brief, LAMCO/ACEMLA challenge only the

court's ruling on the specificity requirements of § 205(c). In

response, ASCAP notes that no dispute exists that a non-exclusive

license does not provide standing to sue for infringement and does

not address the district court's statements about the specificity

requirements of § 205(c). LAMCO/ACEMLA filed a reply brief in

which they assert, for the first time, that the district court

failed to realize that the composer's heirs granted them an

exclusive license to "Ojos Chinos." We do not consider issues

raised for the first time in a reply brief, and therefore, do not

address LAMCO/ACEMLA's late claim that they were granted an

exclusive license. Guillemard-Ginorio v. Contreas-Gomez, ___F. 3d

___, 2007 WL 1675837 at *8 n.3 (1st Cir. June 12, 2007) (citing

Waste Mgmt. Holdings, Inc. v. Mowbray, 208 F.3d 288, 299 (1st Cir.

2000)).

The district court's ruling that as non-exclusive

licensees LAMCO/ACEMLA lacked standing to bring an infringement

claim is not disputed and is correct. 17 U.S.C. § 501(b) ("The

legal or beneficial owner of an exclusive right under a copyright

is entitled, subject to the requirements of section 411, to

-18-
institute an action for any infringement of that particular right

committed while he or she is the owner of it." (emphasis added)).

See also, e.g., T-Peg, 459 F.3d at 108 ("One infringes a copyright

when he or she violates one of the exclusive rights to a work held

by a copyright owner, and the owner has the right to sue for

infringement."); Itar-Tass Russian News Agency v. Russian Kurier,

Inc., 153 F.3d 82 91 (2d Cir. 1998) ("Under United States law, an

owner . . . may sue for infringement in a United States court only

if it meets the standing test of 17 U.S.C. § 501(b), which accords

standing only to the legal or beneficial owner of an 'exclusive

right.'"); I.A.E., Inc. v. Shaver, 74 F.3d 768, 775 (7th Cir. 1996)

("[A] person holding a nonexclusive license has no standing to sue

for copyright infringement, . . . ."). The district court's

additional statements about the specificity requirements of §

205(c) are not material to the decision that LAMCO/ACEMLA lacked

standing to sue for infringement. Therefore, we will not delve

into whether LAMCO/ACEMLA's recording satisfied § 205(c).

4. "Una Tercera Persona" and "Te Sigo Queriendo"

Luz C. Tirado wrote "Una Tercera Persona" and "Te Sigo

Queriendo" in 1968 and transferred her rights in the songs to

Southern, an ASCAP member, on November 20 and December 17, 1968,

respectively. The transfer agreements also granted Southern the

right to renew the copyrights and a power of attorney to act on

Tirado's behalf in obtaining the copyright renewals. Southern

-19-
registered the copyright to "Una Tercera Persona" on February 6,

1969, and registered the copyright to "Te Sigo Queriendo" on July

29, 1969. Southern did not record the registrations. Under the

terms of the transfer agreements with Tirado, Southern, acting on

behalf of Tirado, executed assignments of the renewal rights to

"Una Tercera Persona" and "Te Sigo Queriendo" and obtained

copyright renewal registration certificates for "Una Tercera

Persona" on June 11, 1996, and for "Te Sigo Queriendo" on June 13,

1997.

On December 2, 1980 Tirado transferred the copyrights to

153 songs, including "Una Tercera Persona," to LAMCO/ACEMLA, and

they recorded the transfer agreement with the Copyright Office on

February 8, 1985. Tirado then granted LAMCO/ACEMLA the non-

exclusive right to collect royalties on Tirado’s behalf from the

public performances of the 153 songs transferred by the December 2,

1980 agreement, and the royalties agreement was recorded on

February 23, 1990. On September 25, 1986, Tirado transferred her

rights in "Te Sigo Queriendo" to LAMCO/ACEMLA, and they obtained

copyright registration on February 23, 1990.

On appeal, LAMCO/ACEMLA contend that the district court

erred in crediting the 1996 and 1997 transfers of renewal rights to

Southern because the assignments were not actually signed by

Tirado. They rely on 17 U.S.C. § 205(a), which provides the

requirements for recording copyright documents. LAMCO/ACEMLA fail

-20-
to explain, however, why the recording statute, § 205(a), is

pertinent to the validity of the 1996 and 1997 transfers. In

contrast, 17 U.S.C. § 204(a), pertaining to execution of transfers

of copyright ownership, provides that "[a] transfer of copyright

ownership, other than by operation of law, is not valid unless an

instrument of conveyance, or a note or memorandum of the transfer,

is in writing and signed by the owner of the rights conveyed or

such owner's duly authorized agent." (Emphasis added.) As

LAMCO/ACEMLA have failed to show that Southern was not Tirado's

"duly authorized agent," the district court correctly credited the

1996 and 1997 transfers to Southern.

LAMCO/ACEMLA also challenge the district court's

conclusion that Southern's 1969 certificates of registration for

"Una Tercera Persona" and "Te Sigo Queriendo" provided notice of

conflicting ownership interests in those songs. At the time

LAMCO/ACEMLA entered into agreements to obtain the copyrights to

"Una Tercera Persona" and "Te Sigo Queriendo," a review of the

Copyright Office register would have revealed the registration

certificates for those songs, giving LAMCO/ACEMLA notice that

Southern claimed the copyrights. See Saenger, 119 F.3d at 66.

Because LAMCO/ACEMLA failed to produce evidence that the copyright

certificates are invalid, the district court correctly concluded,

for purposes of summary judgment, that LAMCO/ACEMLA had notice of

-21-
Southern’s copyright claims and, for that reason, could not meet

the good faith and lack of notice requirements of § 205(d).

B. Payment Allocation

The Publishers and LAMCO/ACEMLA filed summary judgment

motions on claims of ownership and infringement of copyrights for

468 songs. Instead of deciding the motions, the court laid the

groundwork for a special master to use in addressing the complex

issues of ownership and infringement. On March 31, 2003, the

district court appointed Morton David Goldberg, Esquire, to serve

as a special master in the case.9 The court apportioned payment of

the special master's fees between the Publishers and LAMCO/ACEMLA

in equal portions and directed the special master to bill the

parties monthly. The parties were each ordered to file a bond in

the amount of $37,500. On appeal, LAMCO/ACEMLA challenge the

district court's decision to divide equally, between LAMCO/ACEMLA

9
The special master circulated a draft report and
recommendation on March 4, 2004. On March 26, 2004, the district
court denied ASCAP's and LAMCO/ACEMLA's then-pending motions for
summary judgment as moot, without explanation. LAMCO/ACEMLA argue
that the district court erred in denying their motion. Because the
issues raised in their motion had been referred to the special
master, the district court properly denied the motion on procedural
grounds. See, e.g., Becker v. Fed. Election Comm'n, 230 F.3d 381,
389 (1st Cir. 2000) (discussing mootness in context of
redressability). The subsequent proceedings are described in the
district court's order issued on September 26, 2005.

-22-
and the Publishers, the obligation to pay the special master's

fees.10

Federal Rule of Civil Procedure 53(a), which governed in

March of 2003 when the district court appointed the special master,

gave the district court authority to allocate his fees "as the

court may direct." Fed. R. Civ. P. 53(a) (2003).11 Under Rule

53(a), "the district court enjoys broad discretion to allocate the

master's fees as it thinks best under the circumstances of the

case." Aird v. Ford Motor Co., 86 F.3d 216, 221 (D.C. Cir. 1996);

see also 9A Charles Alan Wright & Arthur R. Miller, Federal

Practice & Procedure: Civil § 2608 (2d ed. 1995). Therefore, a

court's decision on allocation is reviewed for abuse of discretion.

Morgan v. Kerrigan, 530 F.2d 401, 427 (1st Cir. 1976); accord Roy

v. County of Lexington, S.C., 141 F.3d 533, 549 (4th Cir. 1998);

Manhattan Indus., Inc. v. Sweater Bee by Banff, Ltd., 885 F.2d 1,

9 (1st Cir. 1989). "An abuse of discretion occurs when a material

factor deserving significant weight is ignored, when an improper

factor is relied upon, or when all proper and no improper factors

are assessed, but the court makes a serious mistake in weighing

them." Sheppard v. River Valley Fitness One, L.P., 428 F.3d 1, 6

(1st Cir. 2005) (internal quotation marks omitted).

10
LAMCO/ACEMLA challenge the district court's allocation
decision, not the decision to appoint a special master.
11
The amendments that added subdivision (h), addressing
compensation, were not effective until December 1, 2003.

-23-
 LAMCO/ACEMLA assert that the Publishers should have been

required to pay the majority of the fees because they had

"enormously disproportionate wealth" and were responsible for

complicating the case to include more than 500 songs. LAMCO/ACEMLA

also contend that the Broadcasters should have paid some of the

fees because they benefitted from the special master's work and

were parties to the suit. Equal apportionment of the fees between

the Publishers and LAMCO/ACEMLA, they argue, constituted an abuse

of discretion.

Such arguments might be persuasive if the record

supported them. Here, however, the record shows that LAMCO/ACEMLA

initiated a copyright infringement case that foreseeably burgeoned

into claims involving more than five hundred songs.12 The record

also shows that the district court gave LAMCO/ACEMLA repeated

opportunities to demonstrate their inability to pay their share of

the fees, which LAMCO/ACEMLA failed to do. With respect to the

Broadcasters' benefit from the special master's work, the

Publishers took their place through the indemnification provisions

in the agreements between them and paid half of the fees, partially

on their behalf. Therefore, in the particular circumstances of

this case, LAMCO/ACEMLA have not shown that the district court

12
LAMCO/ACEMLA were not strangers to the foreseeable
complexities of copyright litigation. See, e.g., ACEMLA v.
Copyright Royalty Tribunal, 854 F.2d 10 (2d Cir. 1988).

-24-
abused its discretion in the equal allocation of the special

master's fees.

C. Sanctions

In August of 2005, the district court dismissed

LAMCO/ACEMLA's remaining claims, counterclaims, and defenses as a

sanction for failing to comply with the court's orders to post a

bond for their share of the special master's fees. LAMCO/ACEMLA

challenge the sanction as being too extreme for the circumstances

and, therefore, an abuse of discretion.

"A dismissal entered to sanction a party for failure to

comply with a court's order or for failure to prosecute the case is

reviewed for abuse of discretion." Ruiz-Rosa, 485 F.3d at 153.

Whether a sanction constitutes an abuse of discretion is determined

by considering all of the pertinent circumstances, "including the

severity of the violation, the legitimacy of the party's excuse,

repetition of violations, the deliberateness vel non of the

misconduct, mitigating excuses, prejudice to the other side and to

the operations of the court, and the adequacy of lesser sanctions."

Id. at 154 (internal quotation marks omitted).

The docket and record in this case show a pattern of

delaying conduct by LAMCO/ACEMLA. The district court had

previously imposed sanctions against LAMCO/ACEMLA because of

unexcused delay in responding to a motion for summary judgment.

-25-
After a year and a half of LAMCO/ACEMLA failing to comply with the

order to post a bond for their share of the special master's fees,

the district court issued an ultimatum on October 13, 2004. The

court ordered LAMCO/ACEMLA to post the bond within thirty days and

warned that failure to comply would result in sanctions, including

possible dismissal of their claims and defenses. After waiting for

more than eight more months, during which time LAMCO/ACEMLA still

did not post the ordered bond or provide adequate reasons for their

failure to do so, on August 2, 2005, the district court dismissed

LAMCO/ACEMLA's remaining claims, counterclaims, and affirmative

defenses as a sanction for their failure to comply with the court's

orders. Under these circumstances, the district court's sanction

was not an abuse of discretion.13

D. Summary Judgment in Favor of the Publishers

The district court granted summary judgment in favor of

the Publishers on their infringement claims against LAMCO/ACEMLA.

On appeal, LAMCO/ACEMLA argue that the district court erred in

holding that a certificate of copyright registration provides

notice for purposes of § 205(d), that merely authorizing the use of

13
LAMCO/ACEMLA assert, as part of their statement of the case,
that their counterclaim against Peer and Broadcast Music, Inc.
remains pending, despite the sanction imposed by the district
court. Because LAMCO/ACEMLA provide no developed argumentation to
support that assertion, we do not consider it here. See United
States v. Zannino, 895 F.2d 1, 17 (1st Cir. 1990).

-26-
songs constitutes copyright infringement, and that infringement

could occur when LAMCO/ACEMLA had the right to license a "fifty

percent writer's share" of the disputed songs. The Publishers,

joined in part by ASCAP, defend the district court's decision.

1. Section 205(d)

LAMCO/ACEMLA dispute the district court's ruling that

registration of a copyright constitutes notice for purpose of §

205(d). As they did in opposition to ASCAP's claim to "Patacón

Pisa'o," LAMCO/ACEMLA argue that recording, in compliance with §

205(c), should be required to provide notice under § 205(d). We

previously rejected that argument, and the same result applies

here. The district court's interpretation of § 205(d) was not

erroneous.

2. Writers' Share

LAMCO/ACEMLA claim that they have not infringed the

copyrights to the disputed songs because they were entitled to

license a "fifty percent writer's performance share" of ACEMLA's

affiliated composers. They have not cited authority, however, to

support a theory that a writer retains a fifty percent performance

share in a song after relinquishing the copyright. In contrast to

LAMCO/ACEMLA's theory, the owner of a copyright "has the exclusive

rights to do and to authorize . . . [others] to perform the

copyrighted work publicly." 17 U.S.C. § 106(4); see also, e.g.,

Phillips v. Pembroke Real Estate, Inc., 459 F.3d 128, 133 (1st Cir.

-27-
2006) (discussing the limited rights retained by an artist after

relinquishing the copyright to his work); Beethoven.com LLC v.

Librarian of Congress, 394 F.3d 939, 942-43 (D.C. Cir. 2005)

(discussing the exclusive performance rights held by copyright

owner under Digital Millennium Copyright Act).

In addition, even if LAMCO/ACEMLA could support their

retained performance rights theory, to the extent it is raised as

a defense to the Publishers' infringement claims, it has been

dismissed as part of the sanction imposed by the district court.

3. Rescission

LAMCO/ACEMLA challenged the Publishers' rights to some of

the disputed songs on a rescission theory. Specifically,

LAMCO/ACEMLA argued that the Publishers had failed to pay royalties

under their agreements with the composers, which provided a basis

for rescinding the agreements with those composers. The district

court ruled that LAMCO/ACEMLA lacked standing to claim that the

agreements should be rescinded. On appeal, LAMCO/ACEMLA contend

that the district court's decision was error.

A question of who may assert an otherwise justiciable

claim is a question of prudential standing that does not implicate

the court's jurisdiction. Baena v. KPMG LLP, 453 F.3d 1, 5 (1st

Cir. 2006). "[A] party generally must assert his own legal rights

and interests, and cannot rest his claim to relief on the legal

rights or interests of third parties." Kowalski v. Tesmer, 543

-28-
U.S. 125, 129 (2004) (internal quotation marks omitted). A party

may assert a claim on behalf of another only when "the party

asserting the right has a 'close' relationship with the person who

possesses the right" and when "there is a 'hindrance' to the

possessor's ability to protect his own interests." Id. at 130.

The composers, not LAMCO/ACEMLA, were parties to the

agreements in question. LAMCO/ACEMLA have not cited authority to

show that they, as non-parties to the composers' agreements with

the Publishers, may seek rescission. They have not shown a close

relationship with the composers or a hindrance to the composers'

ability to protect their own rights. Therefore, the district court

correctly determined that LAMCO/ACEMLA lacked standing to assert

that the composers' agreements with the Publishers should be

rescinded. In addition, to the extent rescission is raised as a

defense to the Publishers' infringement claims, it was dismissed by

the district court as part of the sanction imposed on LAMCO/ACEMA.

4. Infringement

LAMCO/ACEMLA challenge the district court's conclusion

that they infringed the Publishers' copyrights in the disputed

songs by including them in the ACEMLA catalog. They contend that

merely authorizing the use of the songs, in the absence of proof

that the songs were actually used in an infringing manner, is not

infringement. The Publishers argue that the particular

-29-
circumstances of this case show conduct by LAMCO/ACEMLA beyond

merely authorizing use of the songs.

17 U.S.C. § 106 provides the exclusive rights that are

held by the owner of a copyright. "One infringes a copyright when

he or she violates one of the exclusive rights to a work held by a

copyright owner, and the owner has the right to sue for

infringement." T-Peg, Inc., 459 F.2d at 108. Mere authorization

of an infringing act is an insufficient basis for copyright

infringement. Venegas-Hernandez, 424 F.3d at 57-58. Infringement

depends upon whether an infringing act, such as copying or

performing, has occurred. Id. at 58-59. Therefore, to prove

infringement, a claimant must show "an infringing act after the

authorization." Id. at 59.

In this case, the district court held that LAMCO/ACEMLA

infringed the Publishers' copyrights by including songs assigned to

the Publishers in ACEMLA's catalog. The district court also noted

that LAMCO/ACEMLA had songs available to be heard through their

website and had distributed a compact disc that included some of

the Publishers' songs. The Publishers argue that LAMCO/ACEMLA

"knowingly hijacked" their songs by including them in the ACEMLA

catalog, issued licenses to broadcasters for songs that they knew

were assigned to someone else, and threatened and initiated

litigation against broadcasters who played works in ACEMLA's

catalog.

-30-
 The Publishers have not cited authority to show that

including songs in a catalog, issuing licenses, and threatening

litigation are infringing actions under § 106. The district court

identified eight songs that were available on ACEMLA's website and

two of those songs, along with an additional song, that had been

distributed by LAMCO/ACEMLA in a compact disc. While those might

be infringing actions, only nine of the 468 songs that were the

subject of summary judgment are involved. In addition, the

district court did not decide whether LAMCO/ACEMLA had committed

infringing acts in addition to authorization, leaving a factual

issue as to whether LAMCO/ACEMLA's actions were infringing acts.

In the absence of guidance from the district court and little

assistance from the parties, we cannot decide whether the record

contains sufficient undisputed evidence of infringing acts to

warrant summary judgment on infringement. We therefore vacate

this aspect of the district court's judgment and remand for further

proceedings on this issue.

Conclusion

Summary judgment in favor of ASCAP is reversed as to the

song "Caballo Viejo" and is affirmed as to the other four songs.

The district court's allocation of payment of the special master's

fees and the decision imposing sanctions on LAMCO/ACEMLA are

affirmed. Summary judgment in favor of the Publishers on

-31-
infringement of the copyrights to 468 songs is reversed. The case

is remanded to determine the ownership of the rights to "Caballo

Viejo" and whether LAMCO/ACEMLA infringed the copyrights to 468

songs held by the Publishers. Each party shall bear its own costs

on appeal.

Reversed in part; affirmed in part; remanded.

-32-