Tmtv v. Mass Productions Inc.

• Decision Date: 13 June 2011
• Docket Number: 09–1956.,Nos. 09–1439,s. 09–1439
• Citation: 645 F.3d 464,99 U.S.P.Q.2d 1032
• Parties: TMTV, CORP., Plaintiff, Appellee/Cross–Appellant,v.MASS PRODUCTIONS, INC.; Emmanuel Logroño, a/k/a Sunshine Logroño; Gilda Santini; Conjugal Partnership Logroño–Santini, Defendants, Appellants/Cross–Appellees.
• Court: U.S. Court of Appeals — First Circuit

645 F.3d 464

2011 Copr.L.Dec. P 30,085

99 U.S.P.Q.2d 1032

TMTV, CORP., Plaintiff, Appellee/Cross–Appellant,

v.MASS PRODUCTIONS, INC.; Emmanuel Logroño, a/k/a Sunshine Logroño; Gilda Santini; Conjugal Partnership Logroño–Santini, Defendants, Appellants/Cross–Appellees.

Nos. 09–1439

09–1956.

United States Court of Appeals, First Circuit.

Heard Jan. 5, 2011.Decided June 13, 2011.

María D. Trelles–Hernández and Néstor M. Méndez–Gómez with whom Pietrantoni Mendez & Alvarez LLP, John F. Nevares and John F. Nevares and Associates PSC were on brief for defendants, appellants/cross-appellees.Roberto Sueiro–Del Valle with whom Roberto Sueiro Del Valle Law Offices, Freddie Oscar Torres–Gomez and Law Office of Roberto Sueiro were on brief for plaintiff, appellee/cross-appellant.Before BOUDIN, Circuit Judge, SOUTER,^* Associate Justice, and SELYA, Circuit Judge.BOUDIN, Circuit Judge.

Before us are cross-appeals in a decade-long copyright dispute concerning two sitcoms on Puerto Rican television. On one side is TMTV, Corp., a successor in interest to the first sitcom's production company; on the other, the second sitcom's production company, Mass Productions, Inc., and its principals—including the star of both shows, Emmanuel “Sunshine” Logroño. The district court granted summary judgment to TMTV on its claim charging infringement; and a jury granted it substantial damages, which the district court reduced by an amount recovered by TMTV in settlement of related litigation.

A summary of events and prior proceedings will suffice. In 1997, Antonio Mojena—an established television producer in Puerto Rico—approached two veteran entertainers—Sunshine Logroño and Iris Chacón—about co-hosting a variety show on Puerto Rican television. The show would be called De Noche con Iris y Sunshine and would begin with four two-hour episodes, continuing thereafter if it proved popular. Chacón and Logroño both agreed to participate.

During Mojena's initial pitch, he and Logroño discussed filling some of the two-hour episodes of De Noche con Iris y Sunshine with comedy segments. To that end, Logroño arranged a meeting in late September or early October 1997 with a team of comedians and scriptwriters, including scriptwriters Roberto Jiménez and Miguel Morales; Jiménez had worked with Logroño before, while Morales had not. At the meeting Jiménez suggested a sitcom centered on a condominium building and its residents. Logroño approved of the idea of setting a comedy segment in a condominium building, and the title 20 Pisos de Historia (“ 20 Pisos ”) was chosen.

The session produced a number of suggestions for dramatis personae, many modeled on preexisting characters taken from other projects involving the team. For example, a focus of the sitcom was to be a gossipy security guard in the lobby named “Vázquez,” who was based on a character Logroño played in a comedy segment in a previous television special, Sunshine a la BBQ. “Soto,” an older woman living alone, was drawn from a character in another prior Logroño show, La Tripletta. These and like adaptations were used when the sitcom was aired.

After this discussion of ideas, Logroño asked Morales to write scripts for two of the first three episodes of 20 Pisos and Jiménez to write the third. Logroño's recollection was that he framed the plots of all three, and Morales and Jiménez merely prepared dialogue to conform to Logroño's storylines. By contrast, Morales claims that he wrote the two scripts at home, by himself, based on the general concepts aired at the meeting; similarly, Jiménez claims to have taken the general ideas from the session and fixed them in writing for the first time.

The writers delivered their scripts to Logroño, who retyped all three using special screen-writing software. On the cover pages, Logroño listed Morales as the author of episodes one and three and Jiménez as the author of episode two. Logroño claims to have made substantial changes in the scripts given to him, but the trail of drafts shows only minimal editing. And while Logroño appears to have co-written a number of later scripts for 20 Pisos, these reflected themes and characters set up in the first three episodes.

The first episode of 20 Pisos aired on the inaugural broadcast of the variety show, De Noche con Iris y Sunshine, on November 7, 1997. The show was produced by Creative Relief Corp.—a business wholly owned by Mojena—and broadcast in Puerto Rico by the WKAQ television station, an affiliate of the Telemundo network. The early episodes were successful and the variety show—and the 20 Pisos sitcom within it—became a recurring weekly program for almost two years (although renamed after Chacón left).

In December 1999, Logroño decamped from WKAQ for a rival television station—WAPA, an affiliate of Televicentro—where he starred in a new sitcom produced by Mass Productions (a company controlled by Logroño and his wife), titled El Condominio. The new show, which began airing on WAPA in March 2000, featured many of the same actors as 20 Pisos. The show retained the old characters and the sitcom unfolded in a virtually identical condominium setting, although new stories were developed and some new characters added.

On March 15, 2000, TMTV brought a copyright infringement action in federal district court against Logroño, his wife, and their production company, Mass Productions.¹ The suit sought a declaratory judgment and various other legal and equitable remedies. Logroño filed an answer and counterclaim, asserting that he was the sole owner of the copyright to the outlines, scripts, and characters used for 20 Pisos and that he was owed royalty payments for the use of these properties by TMTV.

In due course, the district court granted summary judgment in the plaintiff's favor. TMTV, Corp. v. Mass Prods., Inc. ( TMTV I ), 345 F.Supp.2d 196 (D.P.R.2004). The court held that Morales and Jiménez had authored the first three scripts of 20 Pisos pursuant to valid work-for-hire agreements with TMTV's predecessor in interest and that all later episodes of 20 Pisos were derivative of the first three. Id. at 204–08. As to infringement, the district court found 20 Pisos and El Condominio virtually identical. Id. at 213.

In December 2004, a month or so after this decision, Televicentro—the network on which El Condominio was broadcast—sought unsuccessfully to intervene and to have the partial summary judgment set aside. In August 2005, TMTV sought to consolidate its own suit with two others now pending before another district judge: an infringement suit by TMTV against Televicentro for broadcasting El Condominio and a suit against TMTV by a group of actors claiming copyright in the characters they had portrayed in 20 Pisos. This motion too was denied.

Thereafter, Logroño made his own failed attempt to undo the liability ruling against the defendants by claiming that the scriptwriters' work-for-hire agreements with TMTV were invalid. TMTV, Corp. v. Mass Prods., Inc. ( TMTV II ), 453 F.Supp.2d 378, 382–83 (D.P.R.2006). He also sought, unsuccessfully, to forestall a trial on damages by arguing that a private intervening settlement of the suit by TMTV against Televicentro meant that any further award to TMTV would be an impermissible double recovery.

Prior to the trial, TMTV elected to claim only its actual damages (and not the defendants' profits or statutory damages). See 17 U.S.C. § 504 (2006). TMTV's expert witness, economist Michael Einhorn, estimated damages as at least $4.9 million, based on licensing fees TMTV allegedly would have earned but for the infringement by the defendants; this was measured in part by licensing fees actually earned by another comparable sitcom on Puerto Rican television. The jury awarded TMTV $772,079.29.

Following the verdict, the district court, over TMTV's objection, reduced the award by $700,000, representing the amount that TMTV had received in settlement from Televicentro. The court awarded TMTV prejudgment interest at the local-court rate of 5 percent per annum on the original jury verdict up through the date of the Televicentro settlement and, from then on, on the much smaller balance. Finally, the court denied TMTV's request for attorneys' fees as barred by the registration requirement of the Copyright Act, 17 U.S.C. § 412.

Both parties filed timely appeals, and we begin with Logroño's challenges to the summary judgment—most importantly, his attack on the infringement ruling against him and his co-defendants. That ruling in turn required that TMTV show both ownership of a validly copyrighted work and improper copying of the protected elements of that work. Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 33 (1st Cir.2001). Our review of the summary judgment ruling is de novo.

Since TMTV's claim to copyright runs through Jiménez and Morales, the first question is whether they or Logroño should be viewed as the creator of the original scripts. Jiménez and Morales say that once the condominium setting was agreed upon, they wrote the initial three scripts, framing the plots and dialogue and drawing in part on stock characters used in previous projects in which the team had participated. Logroño says that he outlined the plots and rewrote the scripts.

Ordinarily, a credibility contest means that the case must be tried but, in this instance, Logroño's claim to have substantially rewritten the scripts is refuted by comparing the originals and the final product. As for Logroño's supposed outlining of the plots, he has pointed to no writing—neither any written outline by him nor any notes taken by anyone at the original meeting—that reflects anything like an outline of the scripts. At best, Logroño's version would mean that he suggested some general ideas for plots and possible stock characters for the initial scripts.

One of the axiomatic requirements for copyright is that the author's work be “fixed.” 17 U.S.C. § 102(a). Copyright is a protection afforded to the...