Cortes-Ramos v. Martin-Morales ( 2020 )

United States Court of Appeals
For the First Circuit
No. 19-1358
LUIS ADRIÁN CORTÉS-RAMOS,
Plaintiff, Appellant,
v.
ENRIQUE MARTIN-MORALES, a/k/a RICKY MARTIN,
Defendant, Appellee,
JOHN DOE, RICHARD DOE,
and their respective insurance companies,
Defendants.
APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF PUERTO RICO
[Hon. Daniel R. Domínguez, Senior U.S. District Judge]
Before
Torruella, Dyk, Barron,
Circuit Judges.
Juan R. Rodríguez, with whom Rodríguez López Law Offices,
P.S.C. was on brief, for appellant.
David C. Rose, with whom Pryor Cashman LLP, Jorge I. Peirats,
and Pietrantoni Méndez & Álvarez LLC, were on brief, for appellee.

Of the Federal Circuit, sitting by designation.
April 13, 2020
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DYK, Circuit Judge. Luis Adrián Cortés-Ramos sued
Enrique Martin-Morales (a/k/a Ricky Martin) ("Martin") and other
unknown defendants, alleging violations of federal copyright law
and various Puerto Rico laws. On appeal, Cortés-Ramos challenges
the district court's dismissal of these claims pursuant to Federal
Rule of Civil Procedure 12(b)(6).
We conclude that the district court correctly held that
the complaint failed to state a copyright claim because it did not
allege registration. But we also conclude that the district court
erred in holding that the complaint otherwise failed to state a
copyright claim and dismissing the complaint with prejudice. We
remand so that the district court may consider, whether, in light
of this opinion, to dismiss the copyright claim or whether Cortés-
Ramos should be allowed to supplement his complaint under Federal
Rule of Civil Procedure 15(d) to allege registration. We affirm
the district court's dismissal of the state-law claims.
I.
This controversy concerning Cortés-Ramos's music video
comes back to this court for the fourth time. This appeal requires
us to determine the sufficiency of Cortés-Ramos's complaint.
A.
Cortés-Ramos's claims concern a songwriting contest that
he entered in 2014. The complaint alleges the following. In
August 2013, "[Martin] and Sony . . . claimed that they were
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sponsors" of and advertised the "SuperSong" contest. ¶ 11. The
contest was a competition; each participant was required to compose
a song with lyrics in English, Portuguese, or Spanish. ¶ 14. The
participants were required to submit their songs in "video format
showcasing the performance of the composer" by January 6, 2014.
¶¶ 14, 23. The winning composition was to be sung by Martin at
the grand opening of the 2014 Fédération Internationale de Football
Association ("FIFA") World Cup in Brazil. ¶¶ 12, 16.
After seeing the contest advertisement, Cortés-Ramos
composed a song and recorded a music video in his hometown in
Puerto Rico with several musicians, dancers, and chorus singers.
¶ 20. On January 2, 2014, Cortés-Ramos uploaded his music video
to the contest's website. A few days later, he was selected as
one of the top-twenty finalists. ¶¶ 22, 25. On January 15, 2014,
he signed "several documents (releases)" from Sony Brazil. ¶¶ 25–
26. Eventually, another participant was selected as the winner in
February 2014. ¶ 30.
In April 2014, Martin released his song Vida. ¶ 32.
Martin's "music video was almost identical to the one that [Cortés-
Ramos] composed and created." Id. Cortés-Ramos "was misinformed,
lured to enter and to participate in [the] contest with false
information and threats with the only purpose to obtain his release
to his compositions and creations in violation of copyright."
¶ 37.
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Based on these factual allegations, Cortés-Ramos's
complaint asserted: (1) a federal claim under the Copyright Act
(17 U.S.C. § 101 et seq.) and (2) state claims under the Puerto
Rico Trademark Act of 2009,1 Puerto Rico Contract Laws (31 L.P.R.A.
§ 2992) and Property Laws (31 L.P.R.A. § 1021),2 and Puerto Rico
Civil Code Articles 1802 and 1803 (31 L.P.R.A. §§ 5141–5142).3
B.
This is not Cortés-Ramos's first effort to secure
relief. Cortés-Ramos earlier filed an action against various
companies affiliated with Sony Music Entertainment ("Sony") and
Martin on July 28, 2014, alleging various claims including
copyright violation. Cortés-Ramos voluntarily dismissed Martin
early in that proceeding. Eventually, the district court dismissed
all claims against Sony on the ground that the claims were subject
to the arbitration provision of the SuperSong contest
1 The Puerto Rico Trademark Act of 2009 incorporated elements
of federal trademark law and the Model State Trademark Act.
2 These statutes provide that "[o]bligations are created by
law, by contracts, by quasi contracts, and by illicit acts and
omissions or by those in which any kind of fault or negligence
occurs," 31 L.P.R.A. § 2992, and "[t]he word property is applicable
in general to anything of which riches or fortune may consist," 31
L.P.R.A. § 1021.
3 These Articles provide recovery of damages caused by fault
or negligence.
The complaint also alleged a federal trademark claim, but
that claim was dismissed. Cortés-Ramos does not raise that claim
on appeal.
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participation agreement. This court affirmed in Cortés-Ramos v.
Sony Corp. of Am., 836 F.3d 128 (1st Cir. 2016). Later, this court
reversed an award of attorney fees in Cortés-Ramos v. Sony Corp.
of Am., 889 F.3d 24 (1st Cir. 2018), holding that Sony was not a
prevailing party under the Copyright Act where the case was
dismissed because Cortés-Ramos was compelled to arbitrate. Id. at
25–26.
On February 8, 2016, Cortés-Ramos filed this second
action against Martin. The district court initially ruled that
Cortés-Ramos's claims against Martin, like his claims against
Sony, were subject to the contest's arbitration provision and
dismissed the case. This court reversed, holding that the
arbitration provision did not extend to Martin because he was
neither a party to the contest participation agreement nor a third-
party beneficiary. Cortés-Ramos v. Martin-Morales, 894 F.3d 55,
58–60 (1st Cir. 2018).
C.
On remand of the 2016 action from this court, the
district court granted Martin's renewed motion to dismiss for
failure to state a claim. The district court dismissed Cortés-
Ramos's copyright claim with prejudice, concluding that Cortés-
Ramos failed to allege "preregistration or registration of his
copyright . . . to sustain a cause of action" as required by 17
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U.S.C. § 411(a). Op. 14.4 It also held that he failed to "show,
as a factual matter, that [Martin] copied [his] music video" and
that his allegation that Vida is "almost identical" to his music
video was "not sufficient to state that there was factual copying."
Id. at 15.
The district court dismissed Cortés-Ramos's state-law
claims without prejudice. It held that "the Puerto Rico Trademark
Act [claim] fails because [Cortés-Ramos] provide[d] no factual
allegations as to the required elements under this Act." Id. at
21. Regarding claims invoking 31 L.P.R.A. §§ 1021 and 2992, the
district court noted that the complaint alleges that Cortés-Ramos
"was misinformed, lured to enter and to participate in [the]
contest with false information and threats with the only purpose
to obtain his release to his compositions and creations." Id. at
19. It concluded that these "fraudulent inducement allegations
fail because [he] provide[d] no factual allegations" that
identified false information. Id. at 21. With respect to his
claims under Articles 1802 and 1803, the district court held that
the complaint contained no allegations of negligence. While
Martin's motion to dismiss also argued lack of personal
jurisdiction, improper venue, and lack of ownership (because
Cortés-Ramos allegedly assigned his rights to his music video to
4 "Op." refers to the district court's opinion dated March 25,
2019.
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Sony by agreeing to the SuperSong contest rules), the district
court declined to reach those issues.
Cortés-Ramos now appeals, challenging the district
court's dismissal of his copyright claim and state-law claims. We
have jurisdiction pursuant to 28 U.S.C. § 1291. "We review the
dismissal of a complaint under Rule 12(b)(6) de novo." Ocasio-
Hernández v. Fortuño-Burset, 640 F.3d 1, 7 (1st Cir. 2011). "The
sole inquiry under Rule 12(b)(6) is whether, construing the well-
pleaded facts of the complaint in the light most favorable to the
plaintiff[], the complaint states a claim for which relief can be
granted." Id.
II.
A.
We first address the district court's dismissal of the
copyright claim. A plaintiff who owns a copyrighted work has the
ultimate burden to prove that (1) the defendant "actually copied
the work as a factual matter" and (2) the "copying . . . rendered
the infringing and copyrighted works 'substantially similar.'" T-
Peg, Inc. v. Vt. Timber Works, Inc., 459 F.3d 97, 108 (1st Cir.
2006) (quoting Johnson v. Gordon, 409 F.3d 12, 17 (1st Cir. 2005)).
One way to indirectly establish "actual copying" is to show that
the defendant "enjoyed access to the copyrighted work" and "a
sufficient degree of similarity" exists between the copyrighted
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work and the allegedly infringing work.5 Id. at 111 (quoting
Johnson, 409 F.3d at 18). But, at the pleading stage, the
plaintiff need not actually prove the elements of his claim but
rather need only sufficiently allege facts that show the claim is
plausible on its face. Ashcroft v. Iqbal, 556 U.S. 662, 678
(2009); Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007).
Here, the district court concluded that Cortés-Ramos had
alleged a violation of copyright law and in support had
sufficiently alleged that Martin had access to his music video.
The district court held that it "may infer that [Martin] obtained
access to Plaintiff's music video through the submission of the
SuperSong Contest." Op. 15. In this respect, the complaint
included allegations that Cortés-Ramos submitted his music video
to the SuperSong contest, which Martin was involved in and
following which he would have sung the winning submission.
However, the district court concluded that Cortés-Ramos's
complaint was deficient because it did not sufficiently allege
similarity, even though the complaint alleged that Martin's Vida
is "almost identical" to Cortés-Ramos's music video.
Given that there is a reasonable inference that Martin
5"The similarity inquiry used to indirectly establish
[actual] copying is referred to as 'probative similarity' and is
'somewhat akin to, but different than, the requirement of
substantial similarity' that must be shown to prove [the second
element of] copyright infringement." T-Peg, 459 F.3d at 111
(quoting Johnson, 409 F.3d at 18).
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had access to Cortés-Ramos's music video, we think that the "almost
identical" allegation is sufficient to meet Cortés-Ramos's burdens
of pleading both indirect actual copying and substantial
similarity. Determining whether Cortés-Ramos's complaint supports
a plausible claim for relief is "a context-specific task that
requires the reviewing court to draw on its judicial experience
and common sense." Iqbal, 556 U.S. at 679. When viewing the
complaint in the light most favorable to Cortés-Ramos, Ocasio–
Hernández, 640 F.3d at 7, we conclude that it adequately supported
a reasonable inference of similarity so as to render his claim
plausible, Iqbal, 556 U.S. at 678, and provided Martin "fair notice
of what the . . . claim is and the grounds upon which it rests,"
Twombly, 550 U.S. at 555 (alteration in original) (quoting Conley
v. Gibson, 355 U.S. 41, 47 (1957), abrogated on other grounds by
Twombly, 550 U.S. at 561–63).
Therefore, aside from registration, Cortés-Ramos
sufficiently alleged a copyright violation.
B.
Our inquiry does not end there as the district court
also held that Cortés-Ramos's copyright complaint was defective
because his complaint did not allege that he "preregistered or
registered the music video [that] he submitted to the SuperSong
contest." Op. 14.
In Section 411(a) of Title 17, the copyright statute
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provides that "no civil action for infringement of the copyright
in any United States work shall be instituted until . . .
registration of the copyright claim has been made in accordance
with this title."6 In Fourth Estate Pub. Benefit Corp. v. Wall-
Street.com, LLC, 139 S. Ct. 881 (2019), the Supreme Court addressed
whether "registration" under section 411(a) occurs when the
claimant completed his application or only after the Copyright
Office registered the copyright (by issuing a certificate). Id.
at 886. The Supreme Court held that the registration condition
was satisfied only "when the [Copyright] Register has registered
a copyright after examining a properly filed application." Id. at
892.
In reaching its decision, the Supreme Court explained
that "a copyright claimant generally must comply with [section]
411(a)'s [registration] requirement" "[b]efore pursuing an
infringement claim in court." Id. at 887. This is because
"registration is akin to an administrative exhaustion requirement
that the owner must satisfy before suing to enforce ownership
rights." Id. It also recognized that "Congress has maintained
registration as prerequisite to suit, and rejected proposals that
6
Section 411(a) also allows institution of an action if the
copyright owner obtained preregistration. But such an action risks
dismissal if the owner does not promptly apply for registration as
set forth in the copyright statute. See 17 U.S.C. § 408(f)(3)–
(4). There is no issue of preregistration in this case.
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would have eliminated registration." Id. at 891. See also
Thompson v. Hubbard, 131 U.S. 123, 150–51 (1889) (notice
requirement of a predecessor copyright statute was a prerequisite
to filing an action); Airframe Sys., Inc. v. L-3 Commc'ns Corp.,
658 F.3d 100, 105 (1st Cir. 2011) (proof of registration is an
element of a cause of action for copyright infringement).
The legislative history of the copyright law discussed
by the Supreme Court is quite clear. The predecessor to section
411(a) provided that "[n]o action or proceeding shall be maintained
for infringement . . . until the provisions . . . with respect to
the deposit of copies and registration of such work shall have
been complied with."7 17 U.S.C. § 13 (1970). While changing the
phrase "[n]o action . . . shall be maintained" in the earlier
statute to "no civil action . . . shall be instituted" in enacting
section 411(a) in 1976, Congress made clear that registration was
a prerequisite to a copyright lawsuit. Specifically, Congress
recognized:
The first sentence of section 411(a) restates
the present statutory requirement [in 17
U.S.C. § 13 (1970)] that registration must be
made before a suit for copyright infringement
is instituted. Under the bill, as under the
law now in effect, a copyright owner who has
not registered his claim can have a valid
cause of action against someone who has
infringed his copyright, but he cannot enforce
his rights in the courts until he has made
7 This language originates from Section 12 of the Copyright
Act of 1909.
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registration.
H.R. Rep. No. 94-1476, at 157 (Sept. 3, 1976) (emphasis added); S.
Rep. No. 93-983, at 188 (June 27, 1974). Congress thus confirmed
that registration is a prerequisite to enforcement of copyrights.
This interpretation of the copyright statute is
consistent with interpretation of other statutes with similar
language. For example, McNeil v. United States, 508 U.S. 106
(1993) addressed similar language of the Federal Tort Claims Act
in 28 U.S.C. § 2675(a). That statute states that "[a]n action
shall not be instituted . . . unless the claimant shall have first
presented the claim to the appropriate Federal agency and . . .
have been finally denied." Id. at 107 n.1 (quoting 28 U.S.C.
§ 2765(a)). The Supreme Court held that the use of the word
"instituted" required that the plaintiff exhaust his
administrative claim before filing his action in federal court.
Id. at 112–13.
Here, Cortés-Ramos's complaint did not allege that
registration had been obtained prior to suit. Cortés-Ramos has
conceded that he had not secured registration before filing this
action. We thus agree with the district court's decision on the
sufficiency of the complaint with respect to registration. But
since we determine that the complaint is insufficient as to only
the registration ground, the district court should not have
dismissed the copyright claim with prejudice. Generally, when a
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plaintiff's claim is dismissed for failing to satisfy a pre-suit
requirement, the dismissal should be "without prejudice" when the
plaintiff may able to satisfy the requirement in the future. See,
e.g., Lumiere v. Pathe Exch., Inc., 275 F. 428, 430 (2d Cir. 1921)
(addressing a predecessor copyright statute and holding that
dismissal without prejudice was proper because "the plaintiff may
get a certificate of registration . . . and thereafter may maintain
another action"). There appears to be no dispute that the
Copyright Office registered Cortés-Ramos's music video after he
filed his complaint with the district court, and thus he could
allege registration in a new action.
At oral argument in this court, Cortés-Ramos urged that
the district court should not have dismissed the action at all,
but should have allowed him to amend the complaint to allege that
he had obtained registration after the filing of the action, even
though he made no such motion to the district court before it
dismissed the case.
Federal Rule of Civil Procedure 15(d) provides that
"[o]n motion and reasonable notice, the court may, on just terms,
permit a party to serve a supplemental pleading setting out any
transaction, occurrence, or event that happened after the date of
the pleading to be supplemented." Although a supplemental pleading
under Rule 15(d) may be allowed to cure even jurisdictional
defects, United States ex rel. Gadbois v. PharMerica Corp., 809
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F.3d 1, 5–6, 5 n.2 (1st Cir. 2015), a lack of registration is not
a jurisdictional defect. In Reed Elsevier, Inc. v. Muchnick, 559
U.S. 154 (2010), the Supreme Court held that the registration
condition in § 411(a) is not jurisdictional but rather a "claim-
processing rule[]." Id. at 161, 165–66.
In Gadbois, this court explained that "supplementation
of pleading is encouraged 'when doing so will promote the economic
and speedy disposition of the entire controversy between the
parties, will not cause undue delay or trial inconvenience, and
will not prejudice the rights of any of the other parties to the
action.'" 809 F.3d at 4 (quoting 6A Charles Alan Wright et al.,
Federal Practice and Procedure § 1504, at 258–59 (3d ed. 2010)).
Although this case appears to be a candidate for a Rule 15(d)
supplement, the question of whether a supplemental pleading should
be permitted lies in the first instance with the district court.
Id. at 6. "Under Rule 15(d), the filing of a supplemental pleading
is not available to the pleader as a matter of right but, rather,
is subject to the court's discretion." Id. Our role, as an
appellate court, is generally "limited to examining whether the
district court abused its discretion." Id. Thus, here, as in
Gadbois, we remand to afford the district court "an opportunity to
pass upon" the question of whether Cortés-Ramos should be allowed
to supplement his complaint under Rule 15(d) or instead he should
be required to file a new action. Id.
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III.
Cortés-Ramos next argues that the district court's
dismissal of his state-law claims was erroneous. We disagree.
As for his Puerto Rico trademark claim, Cortés-Ramos
provides no argument at all as to why the district court was wrong.
Cortés-Ramos's complaint was deficient because it failed to
identify what he contends to be protected under Puerto Rico's
trademark law. A complaint that merely cites to the statute
without pleading factual allegations fails to state a claim.
Iqbal, 556 U.S. at 678.
Cortés-Ramos's allegations concerning the other two
state-law claims are similarly deficient. Cortés-Ramos merely
contends that he invoked Articles 1802 and 1803 (which provide
recovery of damages caused by fault or negligence) and that the
Puerto Rico Supreme Court recognized that there is "a cause of
action . . . against a tortfeasor third party (defendant) who
interfered between contractors." Appellant Br. 6, 28. But, the
complaint did not even allege that Martin interfered with Cortés-
Ramos's contractual relationship with another. Even if that had
been pleaded, a "naked assertion" without "further factual
enhancement" is insufficient to survive a motion to dismiss.
Iqbal, 556 U.S. at 678 (quoting Twombly, 550 U.S. at 557). As for
his claims under 31 L.P.R.A. §§ 1021 and 2992 (which provide relief
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for recovery in contracts, fault, or negligence), Cortés-Ramos
repeats his allegation in the complaint that he "was misinformed,
lured to enter and to participate in [the] contest with false
information and threats with the only purpose to obtain his release
to his compositions and creations." Appellant Br. 28 (emphasis
removed). To the extent that Cortés-Ramos alleged that Martin
breached an obligation by fraudulently inducing him to enter the
SuperSong contest, the complaint is wholly conclusory and cannot
survive a motion to dismiss.
IV.
Cortés-Ramos contends that the district court erred by
not authorizing discovery before deciding on the 12(b)(6) motion.
However, other than generally arguing the presence of factual
disputes and that Martin had access to Sony's records, Cortés-
Ramos did not present any reason why he needed discovery to address
the motion to dismiss. Resolution of a motion to dismiss generally
does not require discovery, and we see no error in the district
court's denial of discovery. DM Research, Inc. v. Coll. of Am.
Pathologists, 170 F.3d 53, 55–56 (1st Cir. 1999) (holding that
discovery was not warranted at the motion to dismiss stage).
V.
Accordingly, we affirm the district court's dismissal
without prejudice of the state-law claims. We remand to allow the
district court to consider whether to dismiss the copyright claim
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without prejudice or to allow Cortés-Ramos to supplement his
complaint under Rule 15(d) to allege registration. If the district
court decides to allow supplementation, the district court must,
of course, determine whether it has personal jurisdiction over
Martin and whether venue is proper.8
Affirmed-in-part, vacated-in-part, and remanded.
Costs to neither party.
8 We do not address whether Cortés-Ramos assigned his rights
to his music video to Sony by agreeing to the SuperSong contest
rules because that issue was not reached by the district court.
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