Molinelli-Freytes v. Univ. of P.R., Civil No.:09-1655(DRD)
| Decision Date | 30 September 2012 |
| Docket Number | Civil No.:09-1655(DRD) |
| Parties | JOSE MOLINELLI-FREYTES, et al, Plaintiffs, v. UNIVERSITY OF PUERTO RICO, et al, Defendants |
| Court | U.S. District Court — District of Puerto Rico |
José Molinelli-Freytes ("Molinelli") and Lillian Bird-Canals ("Bird") (collectively, "Plaintiffs") brought suit against the University of Puerto Rico ("UPR"), the Puerto Rico Council on Higher Education ("CHE"), past and present UPR and CHE officers, the UPR trustees, and other allegedly responsible individuals, for copyright infringement under the Copyright Act of 1976 ("the Copyright Act"), 17 U.S.C. §§ 101 et seq.1 Plaintiffs assert that they created an original manuscript (the "Proposal") during non-working hours while employed as a professor and program director at UPR. Plaintiffs aver that UPR has used the Proposal improperly in order to create a new graduate program based upon the contents of the Proposal in violation of the Copyright Act. Plaintiffs further contend that CHE authorized the creation and implementation of this program in violation of the Copyright Act.
Rather than repeating the set of facts that pertain to the instant case in their entirety, the Court hereby ACCEPTS, ADOPTS AND INCORPORATES by reference the Magistrate Judge's findings of fact in toto.2
The Court referred the three pending motions for summary judgment (Docket Nos. 336, 339 and 341)3 to Magistrate Judge Bruce J. McGiverin on September 7, 2011 (Docket No. 343), and he entered his Report and Recommendation (Docket No. 409) on February 15, 2012. In his Report and Recommendation, the Magistrate recommended that the motions for summary judgment be granted as the Magistrate was of the opinion that Plaintiffs failed to establish an issue of material fact of copyright infringement. Specifically, the Magistrate recommended that Plaintiffs' motion to reinstate their previously dismissed procedural due process claims regarding the UPR administrative proceedings be denied as Plaintiffs have failed to present new facts or evidence that address "the court's finding that the availability of interlocutory review in Puerto Rico courts precludes application of the Gibson exception to Youngerabstention." (Docket No. 409, page 10).
Regarding the CHE Defendants, Magistrate Judge McGiverin determined that Plaintiffs' case against them is not moot and that the evidence presented is insufficient to determine whether there was a knowing and voluntary waiver or release. The Magistrate Judge also determined that there was a dearth of evidence to support a finding of infringement by the CHE Defendants.
The Magistrate Judge additionally ascertained that "the uncontested facts do not resolve whether there is sufficient privity among each of the defendants and UPR, so a finding that UPR would be entitled to judgment on preclusion grounds would not necessarily dispose of the case."4 (Docket No. 409, page 17).
As to whether UPR holds the Proposal's copyright as a work for hire, the Magistrate Judge first concluded that Plaintiffs' copyright certificate does not enjoy prima facie evidentiary weight because the certificate was made more than five years after the stated date of publication; therefore, the Magistrate concluded that it fails as prima facie evidence under 17 U.S.C. §410(c). See17 U.S.C. §410(c)("In any judicial proceedings the certificate of a registration made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate.").
Second, Magistrate Judge McGiverin resolved that the drafting of the Proposal was within the scope of Plaintiffs' employment as all three of the Second Restatement's elements were met.5 The Magistrate determined that there was no evidence which a reasonable jury could find that creating degree programs was not the kind of work Plaintiffs were employed to perform; that UPR did not authorize Plaintiffs to work from home or on weekends or holidays; that there is uncontroverted evidence that Plaintiffs intended to advance UPR's interests with the Proposal by specifically targeting the UPR Río Piedras and that Plaintiffs designed the Proposal with the intent to submit it to the UPR and CHE approval process and that Plaintiff so submitted the Proposal. Thus, the Magistrate opined that the Proposal was within Plaintiffs' scope of employment and that the work for hire doctrine vests the copyrights with UPR.
Third, Magistrate Judge McGiverin ascertained UPR's intellectual property policy (the "IP policy") does not alter the ownership of the Proposal even assuming that the Proposal wascreated under the work for hire doctrine. Under 17 U.S.C. 201(b), the authorship of a work for hire may be altered by an express written agreement signed by both parties. Here, the Magistrate determined that there is no evidence of any signed agreement between Plaintiffs and UPR nor evidence to infer the existence of such an agreement. Thus, the Magistrate Judge recommended that the IP Policy does not alter the work for hire determination pursuant to 17 U.S.C. 201(b).
Finally, the Magistrate Judge concluded that Plaintiffs' last contention that Defendants lack standing to challenge Plaintiffs' authorship of the Proposal is without merit as "the plaintiffs have not set forth any substantial argument for why the defendants should not be allowed to challenge their authorship, and because no such general rule would apply even if it exists, defendants are entitled to summary judgment." (Docket No. 409, page 26).
On February 23, 2012, Plaintiffs objected to the Magistrate Judge's Report and Recommendation (Docket No. 410). Therein, Plaintiffs made three objections to the Magistrate's findings of fact: (1) "[t]he General Regulations charge faculties with the duty to propose new academic programs;" (2) "[t]he proposal is specific to the UPR Río Piedras Campus;" (3) "Plaintiffs were aware of this process, and that the reviewers could demand that certain changes be made as a condition for approval." (Docket No. 410, pages 3-4)(emphasis in the original).
Plaintiffs also challenge the Magistrate's determination that the copyright certificate does not enjoy prima facie evidentiary weight. Plaintiffs assert that they initially erroneously wrote the date in which they submitted the original Proposal to Brad Weiner as the date of publication and that the original Proposal has, in fact, never been published.
Plaintiffs also argue that the Magistrate Judge incorrectly advised that the creation of the Proposal was within Plaintiffs' scope of employment. Specifically, Plaintiffs argue that there is no written agreement between Plaintiffs and UPR describing their duties and the ordinary duties of a professor and a program director do not include designing and creating a new program of study. Plaintiffs also advance that they had other full time obligations and that the creation of the Proposal was not done with any guidance from UPR nor were they granted release time or extra compensation for drafting the Proposal which is customary for UPR when a project exceeds 37.5 hours per week. Plaintiffs also posit that a professor's and a program director's flexible schedule does not mean that specific work that was preformed during vacation time and weekends was within "authorized time and space limits."
Plaintiffs further contend that the Magistrate erred by not including in his analysis the right of the employer to direct and supervise the manner in which the specific work at issue was preformed. Plaintiffs invite the Court to analyze the first two elements, the hiring party's right to control the manner and meansby which the product is accomplished and (2) the skill required, from Ulloa v. Universal Music & Video Distrib. Corp., 303 F. Supp. 2d 409, 414-415 (S.D.N.Y. 2004).
Finally, Plaintiffs find fault with the Magistrate's conclusion that the IP Policy does not constitute a valid transfer of ownership under the Copyright Act as the IP policy fulfills as the requisite requirements.
On March 5, 2012, UPR Defendants responded to Plaintiffs' objections to the Magistrate's Report and Recommendation (Docket No. 418). UPR Defendants advance, inter alia, that Plaintiffs' three alleged factual errors of the Magistrate should not be considered as Plaintiffs failed to admit, qualify or deny UPR Defendants' Statement of Uncontested Material Facts and that Plaintiffs failed to cite to any evidence in the record supporting their contentions. Additionally, UPR Defendants assert that "[a]llowing the Plaintiffs to include new arguments or new evidence at this point would defeat the purpose of the Magistrate's Act [as Magistrate Judge McGiverin already relied on UPR Defendants' Statement of Uncontested Material Facts when rendering his Report and Recommendation] and would [therefore] result in a colossal waste of judicial resources." (Docket No. 418, page 4).
Relating to the Plaintiffs' objections as to the ownership of the Proposal, UPR Defendants argue that the Court should not consider Plaintiffs' "newly" discovered second certificate ofregistration as Plaintiffs had not previously put forth this certificate even though it was obviously available to them. Furthermore, UPR Defendants advance that (Docket No. 418, page 9). Yet, even were the Court to entertain Plaintiffs' objection and find that the second certificate of registration constituted prima facie evidence of ownership, that argument is unavailing for Plaintiffs as UPR Defendants "have amply demonstrated that Plaintiffs have no valid copyright over the Proposal because the...
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