Sierra-Pascual v. Pina Records, Inc.
| Decision Date | 24 September 2009 |
| Docket Number | Civil No. 08-1114 (GAG/BJM). |
| Citation | 660 F.Supp.2d 196 |
| Parties | Rafael SIERRA-PASCUAL, a/k/a Lito MC Cassidy, Plaintiff, v. PINA RECORDS, INC. et al., Defendants. |
| Court | U.S. District Court — District of Puerto Rico |
Francis A. Marquez-San Martin, Monique Guillemard-Noble, Nachman & Guillemard, San Juan, PR, for Plaintiff.
Francisco Ramos-Martinez, Edwin Prado-Galarza, Prado, Nunez & Associates, PSC, Roberto Sueiro-Del-Valle, Roberto Sueiro Del Valle LLM, San Juan, PR, for Defendants.
Plaintiff Rafael Sierra-Pascual a/k/a Lito MC Cassidy ("Sierra") filed this action, alleging copyright infringement through the unauthorized publication and distribution of the song "Noche Triste." Co-defendant Rafael Pina-Nieves ("Pina") moves for partial summary judgment and requests the dismissal of plaintiff's action for lack of subject matter jurisdiction. After reviewing the pleadings and pertinent law, the court DENIES co-defendant Pina's motion for summary judgment (Docket No. 41).
Summary Judgment is appropriate when "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). "An issue is genuine if `it may reasonably be resolved in favor of either party' at trial, and material if it `possess[es] the capacity to sway the outcome of the litigation under the applicable law.'" Iverson v. City of Boston, 452 F.3d 94, 98 (1st Cir.2006) (alteration in original) (citations omitted). The moving party bears the initial burden of demonstrating the lack of evidence to support the non-moving party's case. Celotex, 477 U.S. at 325, 106 S.Ct. 2548. The nonmoving party must then "set forth specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e). If the court finds that some genuine factual issue remains, the resolution of which could affect the outcome of the case, then the court must deny summary judgment. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
When considering a motion for summary judgment, the court must view the evidence in the light most favorable to the non-moving party (here, the plaintiff) and give that party the benefit of any and all reasonable inferences. Id. at 255, 106 S.Ct. 2505. Moreover, at the summary judgment stage, the court does not make credibility determinations or weigh the evidence. Id. Summary judgment may be appropriate, however, if the non-moving party's case rests merely upon "conclusory allegations, improbable inferences, and unsupported speculation." Forestier Fradera v. Municipality of Mayaguez, 440 F.3d 17, 21 (1st Cir.2006) (quoting Benoit v. Technical Mfg. Corp., 331 F.3d 166, 173 (1st Cir.2003)).
Plaintiff Sierra is a recording artist who is known by the artistic name of "Lito MC Cassidy." Co-defendant Pina is the chief executive officer and/or owner of co-defendant RAP Records, Inc., also d/b/a Pina Records, Inc. ("Pina Records"). According to the complaint, in 1999 Sierra and his then-partner, Rafael Polaco-Molina, signed an exclusive recording contract with Pina Records, owned at the time by co-defendant Pina's father, Rafael Pina-Gomez. Upon Pina-Gomez's passing in 2000, Sierra agreed to continue recording with Pina Records, under the same terms and conditions. After said contract expired in 2004, Sierra continued to collaborate with Pina Records.
At some point between 2005 and 2006, Sierra and Pina Records artist Kenny Vazquez ("Vazquez"), artistically known as "Ken-Y," recorded the song "Noche Triste" in Sierra's private studio. In his deposition, Sierra referred to his recording with Vazquez as a collaboration between partners from the same company. Sierra also testified that he wrote the lyrics to the song and hired Rafael Cardona ("Cardona"), artistically known as "D.J. Rafo," to compose the music. Co-defendant Pina argues that Sierra's deposition testimony suggests a different version of events: that Sierra gave a recording of the a capella lyrics to an Omar Rodriguez, so that he and another individual by the name of Joel Cruz would find a producer to compose the music. (See Docket No. 42-3.) Nonetheless, the work-for-hire agreement, dated August 23, 2006, states that Rompecuello Records, Inc., a company owned by Sierra, shall be considered the author and sole owner of Cardona's intellectual property as regards the song "Noche Triste," which would be published in an album tentatively titled "II Capo di Tutti Capi."
After this initial recording, the song was released on the internet. Sierra testified that Pina was unhappy with him upon hearing "Noche Triste," for having recorded a song with one of his artists without his permission. When the song became popular, however, Pina asked Sierra if he would come to Pina Records and re-record the song with Vazquez because he did not like the quality of the sound recording. Sierra agreed, and the song was recorded once more. According to Sierra's deposition testimony, in this second recording the original beat was re-mixed and mastered, with "maybe one or two instruments" added, but the lyrics to the song remained the same. (Docket No. 48-3 at 7.) Subsequently, Pina released the new version of "Noche Triste" to radio stations, with Sierra's consent. Sierra also agreed to take part in a music video, using the sound recording prepared at Pina Records. Thus, Sierra voluntarily participated in both the re-recording and the music video, which were paid in full by Pina Records.
The parties profered a Certificate of Registration issued by the United States Copyright Office in which plaintiff Sierra appears as the author of the music and lyrics for "Noche Triste." According to this document, the effective date of registration was October 10, 2006. At some point in 2006—apparently after Sierra filed for copyright protection—, "Noche Triste" was released for sale by Pina Records in an album titled "Masterpiece." The song was also performed on multiple occasions by Vazquez, allegedly without Sierra's consent. Sierra testified that when he agreed to re-record the song and appear in the music video, he thought those materials would only be used as promotional tools, and not for sale as part of an album. In his answer to interrogatories, Sierra alleges that he insisted on this point, stating that "[he] would go along only if the song were released for promotional purposes only, and that it would only be published on [his] next album." (Docket No. 48-6 at 4.) In contrast, Pina asserted in his deposition that he had authorization from Sierra to use his recordings or vocal performances in the release of the song "Noche Triste," and "that was the same song that was included as a bonus track in the Masterpiece album." (Docket No. 51-2 at 3.) As to the authorship of "Noche Triste," Pina also testified that the song had actually been composed by the artistic group known as "Los Magnificos," which comprised, among others, Pina, Sierra, Cardona, and Ken-Y.
Sierra filed suit against Pina, Pina Records, Universal Music Latino, Universal Music Distribution Corp., and other unnamed defendants, for the violation of his exclusive rights under the Copyright Act, 17 U.S.C. § 1101, by publishing, synchronizing with images, and distributing the song "Noche Triste" without Sierra's consent. (See Amended Complaint, Docket No. 3.) Codefendant Pina now moves for summary judgment (Docket No. 41), which motion was timely opposed by the plaintiff (Docket No. 48).
Co-defendant Pina argues that (1) the court lacks subject-matter jurisdiction because the plaintiff's copyright registration is invalid, (2) the plaintiff granted the defendants an implied, nonexclusive license to publish the song in Pina Records' next album, and (3) the plaintiff is estopped by his own acts from bringing a copyright infringement action against defendants. The court will address each of the codefendant's arguments in turn.
Title 17 of the United States Code, which governs copyrights, provides in section 411 that "no action for infringement of the copyright in any United States work shall be instituted until preregistration of the copyright claim has been made in accordance with this title." 17 U.S.C. § 411(a). The First Circuit of Appeals has held that this rule is jurisdictional. See Torres-Negron v. J & N Records, LLC, 504 F.3d 151, 156 (1st Cir.2007) (collecting cases). "[A]lthough copyright protection attaches the day original expression is fixed in a tangible medium, and thus an infringer may be liable for infringement from that day forward, registration of the copyright is a prerequisite to suit under the Copyright Act." Data Gen. Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147, 1160 (1st Cir.1994) (citations omitted).
Pina alleges that the court lacks subject-matter jurisdiction because Sierra's copyright registration is invalid. He argues that Sierra made material misrepresentations to the Copyright Office in his application for registration of the copyright, to wit, that he was the sole author of the song "Noche Triste." His contention is that "Noche Triste" was composed by the group known artistically as "Los Magnificos," which included Sierra, Cardona, Vazquez, and co-defendant Pina, and that Sierra failed to explain these facts in his application. Pina also points out that, though Sierra claims to have written the lyrics to the song and then hired Cardona to compose the music, Sierra's application for copyright registration made no mention of this "work for hire" agreement.
As pointed out by Sierra, although inaccuracies in a...
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