Ramos Perea v. Editorial Cultural, Inc.

United States Court of Appeals
For the First Circuit
Nos. 19-2119
19-2129
ROBERTO RAMOS PEREA,
Plaintiff, Appellee/Cross Appellant,
BEATRIZ LAGUERRE SAAVEDRA; BEATRIZ ALEXIA ALVAREZ LAGUERRE;
RAFAEL ENRIQUE ALVAREZ LAGUERRE; GABRIEL ORTIZ LAGUERRE; FABIAN
ANTONIO CHARRON ALVAREZ; CARLA VICTORIA CHARRON ALVAREZ,
Plaintiffs, Appellees,
v.
EDITORIAL CULTURAL, INC.,
Defendant, Appellant/Cross Appellee.
APPEALS FROM THE UNITED STATES DISTRICT
COURT FOR THE DISTRICT OF PUERTO RICO
[Hon. Pedro Delgado-Hernández, U.S. District Judge]
[Hon. Marcos E. López, U.S. Magistrate Judge]
Before
Thompson and Lipez, Circuit Judges,
and Laplante,* District Judge.
Luz Yanix Vargas-Pérez, with whom Manuel Porro-Vizcarra was
on brief, for appellant and cross-appellee Editorial Cultural,
Inc.
José A. Hernández Mayoral, for appellee and cross-appellant
Roberto Ramos Perea.
* Of the District of New Hampshire, sitting by designation.
Patricia Rivera MacMurray, for appellees Beatriz Laguerre
Saavedra, Beatriz Alexia Álvarez Laguerre, Rafael Enrique Álvarez
Laguerre, Gabriel Ortiz Laguerre, Fabián Antonio Charrón Álvarez,
and Carla Victoria Charrón Álvarez.
September 13, 2021
Thompson, Circuit Judge. In these cross-appeals the
issue we must resolve is whether a publishing company, Editorial
Cultural, Inc. ("Editorial" or "Editorial Cultural"), is liable
for copyright infringement after it printed and sold 20,000 copies
of the theatrical adaptations of two novels -- La Llamarada and La
Resaca -- ("the Adaptations") written by prominent Puerto Rico
author Enrique Laguerre. But first, we must resolve the
determinative question: which party owns the publishing rights to
the Adaptations. At the outset of this case, Laguerre's heirs and
Roberto Ramos Perea (the playwright who adapted each novel for the
stage) joined forces to sue Editorial Cultural. What followed was
litigation which took a twisted course towards final resolution
before landing here. Early on, the district court eliminated the
playwright as the copyright owner and, following a jury trial,
entered a judgment against Editorial Cultural awarding damages to
Laguerre's heirs. For reasons explained below, we vacate the
Opinion and Order entered on September 30, 2017, and part of the
amended judgment entered on September 19, 2019, and we direct the
entry of an amended judgment in favor of Ramos1 on his claim of
1 We refer to the playwright by his first surname because,
"[p]er 'Spanish naming conventions, if a person has two surnames,
the first (which is the father's last name) is primary and the
second (which is the mother's maiden name) is subordinate.'"
United States v. Maldonado-Peña, 4 F.4th 1, 9 n.15 (1st Cir. 2021)
(quoting United States v. Martínez-Benítez, 914 F.3d 1, 2 n.1 (1st
Cir. 2019)).
- 3 -
copyright infringement.
I. Background
A. Facts
Enrique Laguerre published the novel La Llamarada in
1934 and the novel La Resaca in 1949. In September 2001, Laguerre
and Producciones Teatro Caribeño, Inc. ("Caribeño") entered into
a contract which expressly authorized Ramos (who was not a party
to the contract) to create "an adaptation . . . for theatrical
presentation" of La Resaca and allowed Ramos to retain the moral
rights2 to this adaptation.3 The agreement authorized Caribeño to
stage the theatrical adaptation in Puerto Rico at any time over
the next four years. The agreement also specified that Laguerre
2 "In Puerto Rico, [an] intellectual property right is
composed of two rights: a moral right that protects the link
between the author and her work, and a patrimonial right that
grants her a monopoly over the exploitation of the work." Venegas
Hernández v. Peer Int'l Corp., 270 F. Supp. 2d 207, 213 (D.P.R.
2003) (citation omitted).
The patrimonial right is defined as the right to, inter
alia, reproduce and perform the work, as well as the
right to create derivative works, and to receive
benefits derived from these acts. The moral right
protects the right to attribution of the work and the
right to demand and protect the integrity of the work.
This includes the right to prevent the alteration,
truncation, and distortion of the work.
Id.
3 Strangely, the record is silent on Caribeño's legal
relationship, if any, to Ramos as we'll further discuss later on
in our analysis.
- 4 -
retained the exclusive right to print the play scripts. Ramos
completed the adaptation of La Resaca the same year. On April 29,
2003, Laguerre and Caribeño signed an addendum extending the term
of the original contract until 2010. On this same day, Laguerre
and Caribeño entered into a similar agreement authorizing Ramos to
create an "adaptation . . . for theatrical representation" of La
Llamarada. Again, Ramos, a non-party, retained the moral rights,
and Laguerre retained the printing rights, to the adaptation.
Ramos completed the adaptation of La Llamarada the same year. He
registered copyrights for the Adaptations in 2015.
Meanwhile, in January 2002, Laguerre entered into a
contract with Editorial Cultural purportedly giving it the right
to print "one edition" of "the dramatic adaptation of . . . La
Resaca" for seven consecutive years from the first printing date.
Then on April 29, 2003, Laguerre, on the same day he contracted
with Caribeño, entered into an agreement with Editorial Cultural
which, again, purportedly gave Editorial the right to print up to
25,000 copies of La Llamarada in exchange for royalties. According
to Editorial, both agreements were intended to provide it with the
exclusive right to publish the Adaptations of La Llamarada and La
Resaca (even though the agreement about printing La Llamarada did
not specifically mention the theatrical adaptation).
Laguerre died in June 2005. Editorial Cultural
published print versions of the Adaptations a few times, most
- 5 -
recently -- and most relevant for this litigation -- in 2013, after
receiving a purchase order from Puerto Rico's Department of
Education.
B. Procedural History
In 2015, Ramos and Laguerre's daughter, Beatriz Laguerre
Saavedra, initiated this suit against Editorial Cultural, their
complaint evolving over a few iterations. The Corrected Second
Amended Complaint was filed by Ramos and Laguerre's other heirs,4
who had been joined as plaintiffs. The plaintiffs alleged Ramos
owned the copyrights to both Adaptations and claimed Editorial
infringed the copyrights when it printed and sold the publications
to the Puerto Rico Department of Education in 2013.5 In Editorial's
4 Laguerre's other heirs are Beatriz Alexia Álvarez Laguerre,
Rafael Enrique Álvarez Laguerre, Gabriel Ortiz Laguerre, Fabián
Antonio Charrón Álvarez, and Carla Victoria Charrón Álvarez.
5The Corrected Second Amended Complaint included two other
counts; one claim requesting cancellation of the 2010 copyright
registrations Editorial Cultural had filed for revised editions of
each novel completed by Laguerre prior to the theatrical
adaptations, and one claim for an accounting of Editorial
Cultural's sales of each novel. Editorial Cultural responded with
a counterclaim for unjust enrichment and fraud, alleging Laguerre
knew his works were in the public domain when he entered into the
publishing contracts with Editorial Cultural in 2002 and 2003. By
the time the district court entered final judgment, the parties
had settled the cancellation of copyright claim, the district court
had dismissed the accounting claim and the unjust enrichment
counterclaim on the plaintiffs' and Editorial's respective
motions, and a jury found for the plaintiffs on Editorial's fraud
counterclaim. None of these claims are a subject of the cross-
appeals before us or have any bearing on Ramos's copyright
infringement claim.
- 6 -
answer, it admitted Ramos held the Adaptations' moral copyrights
but "affirmatively alleg[ed]" Laguerre "reserved" the publication
rights.
Both sides moved for partial summary judgment on the
infringement claim. In its motion, Editorial Cultural repeated
its assertion that, pursuant to the Laguerre-Caribeño contracts,
Laguerre reserved the printing rights to the Adaptations to himself
exclusively, and Ramos was therefore not entitled to damages for
infringement.6 The plaintiffs claimed that Ramos owned the
copyrights over the Adaptations, and thus was entitled to recover
for infringement because 1) Laguerre authorized Ramos to create
the Adaptations, therefore those creative works belonged to him,
or, alternatively, 2) La Resaca and La Llamarada were in the public
domain when the Adaptations were written (meaning they were
available for public use) and as such Laguerre's authorization was
not required.7
6 Editorial Cultural was also moving for summary judgment on
the plaintiffs' accounting claim, arguing its 2002 and 2003
contracts with Laguerre for printing the works were null and void
because each novel was in the public domain at the time the
contracts were formed. The district court denied this part of
Editorial's motion, concluding the court did not have sufficient
information from which to consider entering judgment as a matter
of law on this claim.
7 The plaintiffs also moved for summary judgment on Editorial
Cultural's two counterclaims, arguing Editorial's counterclaim for
deceit or fraud was barred by the applicable statute of limitations
and its counterclaim for unjust enrichment was not available to
the defendant as a distinct claim because this claim was simply
- 7 -
In granting Editorial's summary judgment motion on
Ramos's infringement claim, the district court's ruling relied
exclusively on the language of the Laguerre-Caribeño contracts and
did not directly address the legal status of Laguerre's original
novels at the time the contracts were signed.8 In so relying, the
court concluded the Laguerre-Caribeño contracts unequivocally
demonstrated Ramos was not the owner of the right to publish the
theatrical adaptations he'd created because Laguerre had expressly
retained this right in his contract with Caribeño:
If Ramos-Perea had any right over printouts of [the]
adaptations, he would prevail in case of infringement.
But the agreements authorizing him to prepare theatrical
adaptations for stage performance grant him rights over
the theatrical representations, not the right to
authorize printouts of the adaptations, which
corresponds to Laguerre. That being so, it was up to
Laguerre, not Ramos-Perea, to authorize the sale of the
theatrical adaptations.
Following summary judgment, some additional procedural
wrangling ensued and eventually a third amended complaint was
filed. In it, the plaintiffs added an allegation that in addition
to Ramos not authorizing the 2013 printing of the Adaptations
repackaging the claim for deceit. The district court denied the
plaintiffs' motion for partial summary judgment in its entirety,
concluding (as it had with the accounting claim) that the record
was insufficiently developed to permit judgment to enter on these
counterclaims.
The court acknowledged the parties had made arguments about
8
the novels being in the public domain but, when it addressed one
of Editorial Cultural's counterclaims, concluded it could not
resolve this question based on the record before it.
- 8 -
neither had Laguerre or the Laguerre heirs. And it repeated the
allegation that Ramos owned the copyrights over the Adaptations.9
The third amended complaint also acknowledged the district court's
summary judgment conclusion that, based on the Laguerre-Caribeño
contracts, Laguerre had the sole authority to allow the publication
and sale of the Adaptations but, nonetheless, the pleading
continued to allege that Editorial Cultural had engaged in
copyright infringement in 2013 pursuant to 17 U.S.C. § 106.
Although this third amended complaint did not explicitly
substitute Laguerre's heirs for Ramos as the alleged owners of the
Adaptations' copyrights, the heirs did contend they owned the
copyrights to Laguerre's original and revised works because, as
his testate heirs, they had ownership rights to these works. Based
on the district court's summary judgment finding, Laguerre's heirs
took up the mantle of the infringement claim and brought it to a
jury to decide who owned the patrimonial right to the Adaptations
and whether Editorial Cultural had infringed this right when it
printed and sold the Adaptations to the Department of Education in
2013. After a three-day trial held in February 2019, a jury
returned a verdict for the heirs and against Editorial on the
The plaintiffs dropped a footnote in this third amended
9
complaint that its allegations with respect to Ramos remained in
the pleading to preserve his right to appeal the court's order
granting summary judgment in Editorial Cultural's favor on his
copyright infringement claim. As we'll explain later, this was
not necessary.
- 9 -
infringement claim and awarded them damages in the amount of
$266,350.10
A couple of days later, Editorial Cultural renewed its
Rule 50 motion for judgment as a matter of law (originally argued
at the close of the Laguerre heirs' case but held in abeyance)
primarily asserting that Laguerre's heirs had failed to introduce
sufficient evidence at trial to demonstrate that Laguerre
transferred the right to publish the Adaptations to them.
Convinced by Editorial's argument the district court granted
Editorial's motion and vacated the jury verdict as to the heirs'
copyright infringement claim. Down but not out, Laguerre's heirs
filed a Rule 59(e) motion to alter or amend the judgment, which
caused the court to rethink its ruling. Concluding Editorial's
argument that Laguerre could have bequeathed the printing rights
to someone other than the Laguerre heirs should have been raised
at trial and thus was waived, the district court granted the
10Federal Rule of Civil Procedure 15(b)(2) tells us that an
"issue not raised by the pleadings [but] tried by the parties'
express or implied consent . . . must be treated in all respects
as if raised in the pleadings." While there is no explicit
allegation in the third amended complaint -- the operative pleading
at trial -- that Laguerre's heirs owned the copyrights to the
theatrical adaptations, the parties clearly tried the copyright
infringement claim based on the heirs claiming ownership and the
verdict form expressly asked the jury to decide whether the heirs
were the owners of the right to publish the adaptations.
- 10 -
plaintiffs' motion and reinstated the jury verdict.11 These cross-
appeals followed.
Before us, Editorial Cultural challenges the district
court's order granting the Laguerre heirs' Rule 59(e) motion
reinstating the infringement verdict. For his part, Ramos
challenges the district court's order granting summary judgment to
Editorial on his copyright infringement claim. The determinative
question in these cross-appeals continues to be which party owned
the publishing rights to the Adaptations when Editorial Cultural
sold them to the Department of Education in 2013. To find the
answer, we take a fresh look at the parties' cross-motions for
partial summary judgment and the exhibits each submitted to support
their respective positions.
II. Standard of Review
"We review an order granting summary judgment de novo."
Irobe v. U.S. Dep't of Agric., 890 F.3d 371, 377 (1st Cir. 2018)
(citing DePoutot v. Raffaelly, 424 F.3d 112, 117 (1st Cir. 2005)).
"A court may grant summary judgment only if the record, construed
in the light most amiable to the nonmovant, presents no 'genuine
issue as to any material fact and reflects the movant's entitlement
to judgment as a matter of law.'" Id. (quoting McKenney v.
The court also rejected Editorial's claim that the verdict
11
form should have required specific findings as to each plaintiff,
concluding that, too, should have been raised at trial.
- 11 -
Mangino, 873 F.3d 75, 80 (1st Cir. 2017); then citing Fed. R. Civ.
P. 56(a)). "Cross motions for summary judgment do not change the
standard." Latin Am. Music Co. v. Archdiocese of San Juan of Roman
Cath. & Apostolic Church, 499 F.3d 32, 38 (1st Cir. 2007). This
standard also remains in place when we review a summary judgment
decision after a trial occurred on the remaining issues. Segrets,
Inc. v. Gillman Knitwear Co., 207 F.3d 56, 61-62 (1st Cir. 2000)
(reviewing summary judgment rulings de novo in a copyright
infringement case in which trial issues had also been appealed).
III. Discussion
Before us, Ramos argues primarily (as he did below) that
he owns the full copyrights to the Adaptations because both of
Laguerre's novels were in the public domain when he created the
theatrical adaptations and, because the district court failed to
take the public domain status of each work into account when it
considered its summary judgment ruling, it erred. Ramos further
claims the district court was wrong to premise its findings on the
plain language of the Laguerre-Caribeño contracts because,
according to Ramos, they neither show nor support the court's
finding that he transferred his patrimonial copyright interests to
Laguerre. In consequence of these errors, the court was wrong not
to conclude, as a matter of law, that Ramos owned the copyrights
to the Adaptations, including the right to print and distribute
- 12 -
them.12,13
Curiously, Editorial Cultural first responds that we
should not seriously consider Ramos's arguments at all. If Ramos
truly believed he was the owner, then, according to Editorial, he
"should have insisted on an expedited appellate review." By not
requesting entry of final judgment on his infringement claim
immediately after his summary judgment loss, Editorial contends
Ramos waived appellate review of his claims.
Regarding Editorial Cultural's retort, it is clear to us
Editorial is forgetting that we rarely allow interlocutory
appeals. While Ramos could have sought an entry of partial
judgment under civil procedure rule 54(b), he was not required to
do so in order to preserve his appellate claims. Indeed, we have
long discouraged "piecemeal appellate review[,] . . . warn[ing]
time and again[] that Rule 54(b) should be used sparingly."
12Alternatively, we understand Ramos to be arguing that
Laguerre's contracts with Caribeño were unenforceable because
Laguerre did not own the copyrights of the novels at the time he
signed these contracts purporting to give his authorization to
write, produce, and print the Adaptations.
Helpfully, Laguerre's heirs conceded during oral argument
13
before us that Ramos is the rightful owner of the full copyrights
to the Adaptations. They stated that Ramos, as the true owner,
should win this case and that they would accept the court's
reversal of the summary judgment order. During oral argument,
Laguerre's heirs were clear that they took up the claim of
ownership for purposes of the copyright infringement claim only
after the district court issued its decision on the cross-motions
for partial summary judgment concluding Laguerre had effectively
reserved the printing rights to the Adaptations.
- 13 -
Nichols v. Cadle Co., 101 F.3d 1448, 1449 (1st Cir. 1996); see
also Estate of Barrett v. United States, 462 F.3d 28, 32 (1st Cir.
2006) (a district court's decision disposing of some but not all
claims is usually not an appealable judgment unless partial
judgment is certified under Rule 54(b)). We have also previously
noted that "[w]e are perfectly capable of reviewing a pretrial
grant of partial summary judgment after a full trial on the merits
of the remaining issues." Mandel v. Bos. Phoenix, Inc., 456 F.3d
198, 204 n.2 (1st Cir. 2006) (citing Voutour v. Vitale, 761 F.2d
812, 817 (1st Cir. 1985) (per curiam)).14
Editorial Cultural also complains here about what the
plaintiffs alleged and argued after the district court decided the
cross-motions for summary judgment, criticizing them for shifting
legal positions after the district court issued its decision (i.e.,
claiming they owned the copyrights to the Adaptations rather than
Ramos).15 But at this stage of our discussion what happened after
14 One more thing: we note Editorial Cultural appears to
concede that its waiver argument is not a winning one; it wrote in
the concluding paragraph of its reply brief that "regardless of
the fact that the district court did not enter judgment on the
dismissal of Ramos Perea's cause of action, and thus, the issue
remained open for review as the case continued towards trial with
the remaining parties, . . . ."
15 Editorial Cultural spilled significant ink comparing
Ramos's appellate arguments to those from Laguerre's heirs,
pointing out the contradictions in their positions. Given
Laguerre's heirs' concession, we need not address Editorial
Cultural's concerns. We simply note that Ramos's appellate
arguments were clearly focused on the case as it stood at the
- 14 -
summary judgment is unimportant since we are laser-focused on the
summary judgment record and the arguments based thereon. And as
we explain below, we conclude the record at the time the district
court ruled on the cross-motions undisputedly showed the public
domain status of Laguerre's original works. Accordingly, the
copyright owner of Ramos's theatrical adaptations should have been
determined as a matter of law by appropriate reference to the
statutes governing copyrights.16
We start then by laying out the essential legal
principles that govern.
A. Applicable copyright principles
Under the Copyright Act, "[c]opyright . . . vests
initially in the author or authors of the work." 17 U.S.C.
§ 201(a). "The Act confers on a copyright owner certain exclusive
rights, including the rights to reproduce and distribute the work
and to develop and market derivative works." Petrella v. Metro-
Goldwyn-Mayer, Inc., 572 U.S. 663, 668 (2014) (citing 17 U.S.C.
§ 106). A derivative work is "a work based upon one or more
preexisting works, such as a . . . dramatization . . . or any other
summary judgment stage of the litigation, and the heirs' arguments
were clearly focused on what happened after the summary judgment
motions in the time leading up to trial, during the trial itself,
and litigating the posttrial motions.
16As a result, we will not need to reach whether the Laguerre-
Caribeño contracts were enforceable.
- 15 -
form in which a work may be recast, transformed, or adapted." 17
U.S.C. § 101. Derivative works receive copyright protection to
the extent the author of the derivative work contributed material
to the new work as opposed to the material that existed in the
original work. 17 U.S.C. § 103(b).
"The ownership of a copyright may be transferred in whole
or in part by any means of conveyance or by operation of law
. . . ." 17 U.S.C. § 201(d)(1). Moreover, "[a]ny of the exclusive
rights comprised in a copyright, including any subdivision of any
of the rights specified by section 106, may be transferred . . .
and owned separately." Id. § 201(d)(2). "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." Id. § 204(a).
"The legal or beneficial owner of an exclusive right
under a copyright is entitled . . . to institute an action for any
infringement of that particular right committed while he or she is
the owner of it." Id. § 501(b); see also Motta v. Samuel Weiser,
Inc., 768 F.2d 481, 483-84 (1st Cir. 1985). "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.'" Latin Am. Music Co.
Inc. v. Media Power Grp., Inc., 705 F.3d 34, 38 (1st Cir. 2013)
- 16 -
(quoting Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S.
340, 361 (1991)).
Works created before January 1, 1978 retained copyright
protection for 28 years. See Stewart v. Abend, 495 U.S. 207, 212
(1990) (explaining that "[t]he Copyright Act of 1909 . . . provided
authors a 28-year initial term of copyright protection" (citing 17
U.S.C. § 24 (1976 ed.)); 3 Melville B. Nimmer & David Nimmer,
Nimmer on Copyright § 9.08 n.13 (2021) (hereinafter Nimmer on
Copyright) ("The courts . . . interpreted Section 24 of the 1909
Act as meaning that the first term expired 28 years from
publication or registration, whichever first occurred." (emphasis
in original) (citations omitted)); Shoptalk, Ltd. v. Concorde-New
Horizons Corp., 168 F.3d 586, 587 (2d Cir. 1999) (finding that the
1909 Act "governs works published before 1978" (citation
omitted)). Works whose initial term expired before January 1,
1978, were eligible for a renewal period of 28 years. See Nimmer
on Copyright at § 9.08 (explaining that "the 1909 Act provided,
upon satisfaction of the requisite procedures, for a renewal term
. . . [of] 28 years" (footnote omitted)); see also Stewart, 495
U.S. at 212 (stating that the 1909 Act provided for "28-year
renewal term" (citing 17 U.S.C. § 24 (1976 ed.)). "Once the
copyright expires, the work enters the public domain and is freely
subject to copying and performance without the owner's
permission." Phoenix Entm't Partners v. Rumsey, 829 F.3d 817, 825
- 17 -
(7th Cir. 2016) (citing Dastar Corp. v. Twentieth Century Fox Film
Corp., 539 U.S. 23, 33 (2003)); TrafFix Devices, Inc. v. Mktg.
Displays, Inc., 532 U.S. 23, 29 (2001); see also Golan v. Holder,
565 U.S. 302, 331-32 (2012) ("Once the term of protection ends,
the works do not revest in any rightholder. Instead, the works
simply lapse into the public domain. . . . Anyone has free access
to the public domain, but no one, after the copyright term has
expired, acquires ownership rights in the once-protected works.").
"In the case of a derivative work based on an underlying work that
is in the public domain, only the material added to the underlying
work is protected by copyright." Waldman Publ'g Corp. v. Landoll,
Inc., 43 F.3d 775, 782 (2d Cir. 1994) (citing 1 Nimmer on Copyright
§ 3.07[C]).
B. The novels were in the public domain
To determine when Laguerre's novels passed into the
public domain, we must simply do the math. From the exhibits
submitted in support of the cross-motions for summary judgment, La
Llamarada, as noted, was published in 1935 and La Resaca was
published in 1949. Both works were governed by the 1909 Copyright
Act and were therefore entitled to 28 years of copyright protection
after publication, plus an additional 28 years if properly renewed.
See Stewart, 495 U.S. at 212; Nimmer on Copyright, at § 9.08. A
copyright for La Llamarada was registered in 1936, and the parties
- 18 -
agree that there is no evidence that the registration was renewed.17
Thus, the work passed into the public domain in 1964. As for La
Resaca, this work may have always been in the public domain because
this novel was never registered in the Copyright Office. Even if
we assume Laguerre had complied with the requirements in place at
the time to secure copyright protection, however, the novel would
have passed into the public domain by 1977.18 See Stewart, 495
U.S. at 212. There is no doubt, therefore, that both novels were
in the public domain by 1977, a long time before Laguerre and
Caribeño purported to contract for the theatrical adaptation of
17Editorial Cultural submitted documents in support of its
motion for summary judgment showing that the copyright registered
to La Llamarada was not renewed or assigned.
18 Editorial Cultural also submitted evidence that no
copyright was ever registered as to La Resaca. Under § 10 of the
1909 Copyright Act, however, a work could also receive copyright
protection if it was published with the word "copyright" or the
familiar "©", the name of the copyright owner, and the year of
publication printed on the title page or the first page following
the title page, or evidence of substantial compliance with this
so-called "notice requirement." Robert A. Gorman and Jane C.
Ginsburg, Copyright: Cases and Materials 470 (Foundation Press 7th
ed. 2006) (citing §§ 10, 19 of the 1909 Copyright Right Act); see
also Brown v. Latin Am. Music Co., 498 F.3d 18, 23-24 (1st Cir.
2007). The first edition of La Resaca shows "[r]ights reserved in
accordance to law" printed within the first pages of the
publication. We need not decide whether this was substantial
compliance with § 10 of the 1909 Act because, even if this
statement did qualify as substantial compliance so that the novel
was protected by the initial 28-year term of copyright protection,
La Resaca was in the public domain long before any of the contracts
or adaptations at issue here were under consideration.
- 19 -
each work in the early 2000s.19
When Ramos adapted the novels into the play scripts in
2001 and 2003, respectively, Laguerre had no copyright interest in
either of these novels (or any work derived from them) and Ramos
became the owner of the derivative works -- the Adaptations -- he
created,20 with the exclusive power to authorize the printing and
sale of them. See Petrella, 572 U.S. at 668; 17 U.S.C. §§ 106,
201(a). As we discuss next, there is nothing in the summary
judgment record to suggest Ramos transferred his ownership or any
rights associated with this ownership (i.e., the printing rights)
to any other party.
C. Laguerre-Caribeño contracts
Ramos asserts that because Laguerre did not hold any
rights over the two novels at issue when he signed the contracts
with Caribeño, the documents had no legal effect because "Laguerre
19Editorial Cultural also asserts, without clear explanation,
that Ramos's argument on appeal that he is the true owner of the
copyrights because the original works were in the public domain
when Ramos adapted them would require "a giant leap of faith" on
our part as well as some impermissible assumptions about why the
jury found in favor of Laguerre's heirs. But as we've just
explained, the summary judgment record and the plain language of
the copyright statutes support Ramos's argument.
20 The parties do not contest the status of the Adaptations
as "derivative works" pursuant to 17 U.S.C. § 101; indeed, each
acknowledges the Adaptations as derivative works.
- 20 -
was attempting to exercise rights he did not have."21 Editorial
Cultural responds by asserting that Ramos "voluntarily transferred
the right to reproduce" the Adaptations to Laguerre via the
Caribeño contracts, which were "instrument[s] of conveyance signed
by [his] authorized agent . . . Caribeño." The problem with
Editorial Cultural's take on this point is that the plain language
of the contracts does not support its position.
Pursuant to Puerto Rico law, "where the terms of a
contract are clear, leaving no doubt as to the contracting parties'
intentions, such contract will be observed according to the literal
sense of its stipulations." Almeida-León v. WM Cap. Mgmt., Inc.,
993 F.3d 1, 12 (1st Cir. 2021) (quoting Markel Am. Ins.
Co. v. Díaz-Santiago, 674 F.3d 21, 31 (1st Cir. 2012) which was
quoting P.R. Laws Ann. tit. 31, § 3471) (internal quotation marks
omitted). On the face of the documents, each Caribeño contract is
between Laguerre and Caribeño. Ramos's name does appear twice in
each document; first when Laguerre purports to authorize Ramos's
creation of the Adaptations and second when Ramos is identified as
having the moral rights over the Adaptations. But Ramos is not
identified as a contracting party. Ramos is not a signatory to
21Editorial neither questions nor defends the district
court's conclusions at summary judgment that these contracts
governed the rights regarding the Adaptations, that the plain
language meant Laguerre had authorized Ramos to write the
Adaptations, and that Laguerre expressly retained the printing
rights to those Adaptations.
- 21 -
the contract, in either a personal or representative capacity.
And Caribeño is not identified as either Ramos's agent or in any
other way legally related to Ramos. Moreover, Editorial Cultural
does not point to any evidence in the record (summary judgment or
otherwise) where any relationship between Caribeño and Ramos is
fleshed out.22 While the language in the contracts is clear with
respect to Laguerre and Caribeño's intentions, the contracts are
equally clear that Ramos had not authorized either contractual
party to agree to any terms on his behalf. As a result, the
Laguerre-Caribeño contracts have no legal effect on Ramos's status
as owner of the copyrights over the theatrical adaptations he
wrote.
D. Infringement of the copyright
Having determined Ramos to be the true owner of the
copyrights, we move on to the second prong of a claim for copyright
infringement: "copying of constituent elements of the work that
22Editorial Cultural also argues that Ramos is "estopped" from
asserting before us that he is the owner of the copyrights to the
theatrical adaptations because he argued at summary judgment that
he was the owner, then, in the post-summary judgment amended
pleading, took the "contradictory position[]" that Laguerre owned
these copyrights, "voluntarily decid[ing] to exchange hats with
Laguerre's heirs for trial." Editorial doesn't elaborate this
point, but we note that, contrary to Editorial's statement in its
brief, Ramos did not affirmatively allege in the third amended
complaint that the heirs were the owners of the copyrights to the
Adaptations. There is no indication he switched his hat to
Laguerre's heirs. We therefore disagree that Ramos is in any way
estopped from his appellate arguments before us.
- 22 -
are original." Feist Publications, Inc., 499 U.S. at 363. "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.'" Cortés-Ramos v.
Martin-Morales, 956 F.3d 36, 41 (1st Cir. 2020) (quoting T-Peg,
Inc. v. Vt. Timber Works, Inc., 459 F.3d 97, 108 (1st Cir. 2006)).
Editorial Cultural's publication and sale of the
Adaptations in 2013 was not in dispute at the time of summary
judgment (or after). Editorial also does not contend that Ramos
provided consent or authorization for the 2013 printings. (Instead
it simply holds firm in its assertion, as we've previously noted,
that Ramos's permission was not required because Editorial
operated with contractual authorization from Laguerre.)
Therefore, in conducting our de novo review we conclude that
Editorial, in distributing Ramos's adaptations, is liable to him
for copyright infringement.23 See id.; 17 U.S.C. § 501.
We pause here for a moment to acknowledge a development in
23
the interpretation of the Copyright Act which occurred while this
litigation was pending. 17 U.S.C. § 411 provides that "no civil
action for infringement of the copyright in any United States work
shall be instituted until preregistration or registration of the
copyright claim has been made in accordance with this title." The
Copyright Office registered Ramos's copyrights to the theatrical
adaptations on October 14, 2015, nine days after he initiated this
cause of action. Ramos submitted copies of these certificates in
support of the plaintiffs' partial motion for summary judgment.
On March 4, 2019 (long after the district court resolved the cross-
motions for summary judgment and almost a month after the jury
- 23 -
Regrettably, the district court's erroneous conclusion
that Laguerre retained the right to print the Adaptations
fundamentally altered the course of this case. Our decision today
vacates the grant of summary judgment in Editorial Cultural's favor
as against Ramos and we direct the entry of summary judgment for
Ramos. Necessarily, we vacate the portion of the amended judgment
finding in favor of the heirs on the copyright infringement claim
and substitute Ramos as the prevailing plaintiff on that claim.24
rendered its verdict in this case), the Supreme Court issued an
opinion holding, for the first time, "that registration occurs,
and a copyright claimant may commence an infringement suit, when
the Copyright Office registers a copyright," not when the
application is filed. Fourth Estate Pub. Benefit Corp. v. Wall-
Street.com, LLC, 139 S. Ct. 881, 886 (2019). This decision
resolved a circuit split about "when registration occurs in
accordance with § 411(a)." Id. at 887. Editorial Cultural did
not raise a § 411 timing issue either before the district court or
before us on appeal and, even if it had, Ramos would have been in
the clear because, at the time he filed the initial complaint,
"registration" pursuant to § 411 had not been definitely decided
to mean the Copyright Office's registration of the copyright.
Editorial Cultural raises several other arguments in its
24
attempt to defeat Ramos's claim of copyright ownership, which we
acknowledge but for various reasons find unpersuasive.
Editorial Cultural contends that Ramos, through his conduct,
created an implied license allowing Editorial Cultural to print
the Adaptations. The implied license of a copyright "may occur
without any particular formality, as by conduct manifesting the
owner's intent." Estate of Hevia v. Portrio Corp., 602 F.3d 34,
41 (1st Cir. 2010) (citing John G. Danielson, Inc. v. Winchester–
Conant Props., Inc., 322 F.3d 26, 40 (1st Cir. 2003)). Editorial
Cultural asserts that Ramos acknowledged the Laguerre-Caribeño
contracts, paid royalties to Laguerre for the performances,
acquiesced to Editorial Cultural's publication of the Adaptations,
and knew about the contracts between Laguerre and Editorial
Cultural. First, Editorial Cultural's assertions here are not
supported by any of the evidence or documents on the record --
- 24 -
E. Damages
The remedies for copyright infringement can take several
different forms, including injunctions, impounding of the copied
work, actual damages, and statutory damages. 17 U.S.C. §§ 502-
505. As we highlighted at the beginning of this opinion, a jury
awarded $266,350 in monetary damages to Laguerre's heirs after it
found them to be the owner of the right to publish the Adaptations
and that Editorial Cultural infringed their right. This award was
summary judgment or otherwise. Second, while Editorial Cultural
mentioned the implied license in its answer to the Corrected Second
Amended Complaint, it did not make any argument on this point until
a surreply to the cross-motions for summary judgment. The district
court did not address this argument and neither will we. See
Irizarry-Santiago v. Essilor Indus., 929 F. Supp. 2d 30, 32 n.4
(D.P.R. 2013) (citing D.R. Civ r. 7(c)) (arguments raised for the
first time in a reply brief cannot be considered).
Editorial Cultural also suggests that because the respective
lawyers who represent the Laguerre heirs and Ramos on appeal
represented the plaintiffs together throughout the case in the
district court, including the Laguerre heirs during trial, there
is a conflict of interest. However, Editorial Cultural fails to
set forth the relevant law regarding conflicts of interest and
does not adequately explain how this conflict exists and serves to
prejudice it in its appeal before us. We deem this argument waived
for lack of development. See United States v. Zannino, 895 F.2d
1, 17 (1st Cir. 1990) (holding that "issues . . . unaccompanied by
some effort at developed argumentation[] are deemed waived").
Finally, Editorial Cultural suggests that Ramos is attempting
to convince us that the jury's attribution of copyright ownership
does not matter, a purported violation of due process because
Editorial Cultural defended itself against the Laguerre heirs'
claim to copyright ownership at trial. Additionally, according to
Editorial Cultural, by asking the court to transfer the judgment
from the Laguerre heirs to him, Ramos is seeking to deprive the
heirs of a jury verdict, which also violates due process. This
argument is only perfunctorily presented and, to the extent it is
not mooted by Laguerre's heirs' concession that Ramos is the true
owner of the full copyrights, the argument is waived. See id.- 25 -
clearly based on the purchase orders, invoices, and cancelled
checks on the record, first introduced by Editorial itself in
support of a second motion for summary judgment it filed prior to
trial. Laguerre's heirs then entered these documents as trial
exhibits.
Ramos states that this court need not set aside the
damages calculated by the jury because this dollar figure was based
on the calculation of revenue Editorial Cultural received when it
sold the infringing works minus its expenses, and this net total
remains the same regardless of the prevailing plaintiff in this
case. Ramos argues Editorial is liable to him for this same amount
and suggests we transfer the award in the same amount to him.
Editorial does not provide us with a reason why the damages award
could not be summarily transferred to Ramos. Indeed, Editorial
has waived any dispute it has with the damages amount because it
did not challenge the award figure before the trial court nor does
it do so here before us. We affirm this award without remanding
to the district court because Ramos -- seemingly satisfied with
this award as his damages -- encourages us to do so, the
uncontroverted record of Editorial Cultural's profit from the 2013
publication and sale of the theatrical adaptations is clear, and
principles of judicial economy will not be served by remanding
this case to the district court to determine damages. See Conde
v. Starlight I, Inc., 103 F.3d 210, 215 n.6 (1st Cir. 1997)
- 26 -
(opting, "for reasons of judicial economy," to calculate loss
figure using evidence that was before the jury); see also United
States v. Scott, 270 F.3d 30, 57-58 (1st Cir. 2001) (determining
the appropriate remedy for a Speedy Trial Act violation without
remanding because to do so advanced "goals of judicial economy");
Free v. Landrieu, 666 F.2d 698, 702 n.9 (1st Cir. 1981) (declaring
remand unnecessary for further development of record when no
indication from the briefs that the factual underpinnings of issue
were in dispute and when "time and money out of all proportion to
the dollar amounts at stake" had been expended in the case which
had little precedential value).
IV. Conclusion
Ramos's appeal is sustained and Editorial Cultural's
appeal is dismissed. We remand this case to the district court
for entry of judgment consistent with this opinion. Costs to
Ramos.
- 27 -