Torres-Negron v. J & N Records, LLC

Decision Date02 October 2007
Docket NumberNo. 06-2058.,No. 06-2059.,06-2058.,06-2059.
Citation504 F.3d 151
PartiesFernando TORRES-NEGRÓN, Plaintiff, Appellant/Cross-Appellee, v. J & N RECORDS, LLC, Defendant, Appellee/Cross-Appellant, Antonio Rivera, et al., Defendants.
CourtU.S. Court of Appeals — First Circuit

Carlos G. Dalmau-Ramírez, with whom Carlos Dalmau Law Offices, Tamara Sosa Pascual, and Pascual Moran & Associates were on brief, for appellant/cross-appellee.

James B. Sheinbaum, with whom Borstein & Sheinbaum was on brief, for appellee/cross-appellant.

Before TORRUELLA and LIPEZ, Circuit Judges, and STAFFORD,* Senior District Judge.

LIPEZ, Circuit Judge.

At the request of a friend who was looking for new material for his band to play, Fernando Torres-Negrón wrote the music and lyrics to a song, Noche de Fiesta, in 1993. Torres gave his friend the piece of paper on which he had written the lyrics, along with a cassette tape containing a recording of Torres singing the song. The song eventually ended up on three CDs, distributed both in Puerto Rico and the continental United States. When Torres first learned of the distribution and sales of his song in 2001, he submitted an application for copyright registration with the Copyright Office, and filed this lawsuit for infringement. Although the case proceeded to trial and resulted in a jury verdict for Torres, the district court granted the defendants' motion for judgment as a matter of law.

There is no dispute about the district court's finding that Torres submitted a reconstruction of his original songs, created from his memory and without direct reference to his original works, to the Copyright Office. Because the Copyright Act requires that a "copy" be submitted along with an application for copyright registration, and not a reconstruction, Torres failed to submit a complete application for registration of his copyright. A complete application is a jurisdictional prerequisite to filing suit in federal court for copyright infringement.1 Therefore, we agree with the district court that it lacked jurisdiction over Torres' lawsuit. We also conclude that the district court did not err in denying defendants' motion for attorney's fees.

A. Factual Background

In 1993, Torres was a songwriter living in a rural town in Puerto Rico when his friend, Rubén Cañuelas, asked him to write some songs for Cañuelas' band, Tempo Merenguero. The band was primarily a cover band that played merengue music. To give Torres a sense of the band's musical style, Cañuelas invited Torres over to his house and played a cassette tape for him that included songs that the band frequently played. After listening to the tape, Torres wrote the song Noche de Fiesta, using a merengue bomba rhythm, which was similar to the rhythm of some of the songs on the tape. Torres then gave the lyrics, written on a piece of paper, to Cañuelas, along with another cassette, on which he had recorded himself singing the song. Torres understood that the song would be played in public by Tempo Merenguero. Torres did not, at that time, make a copy of the lyrics or the cassette for himself and never saw the originals again.

Cañuelas subsequently joined a different band, Gozadera, and recorded Noche de Fiesta with that band. The resulting CD, titled Bailando y Gozando con Gozadera, was produced by Antonio Rivera and released in 1993. Torres had been informed that his song would be recorded by Gozadera and that their album would be commercially released. Torres purchased a copy of the record and registered his song with the American Society of Composers, Authors and Publishers ("ASCAP"). He also spoke with Rivera about the recording and was paid nine hundred dollars in royalties, as compensation for the use of two of his songs on that record.2

Around the same time, Rivera sold the master recording of Noche de Fiesta to J & N Records Distributor, Inc. ("J & N"). Over the course of the next six years, the song (as recorded by Gozadera) was released on three additional CDs: a second version of Bailando y Gozando con Gozadera was distributed by J & N in 1994; a compilation record called Merenhits '94 was released by J & N and EMI later that year, containing Noche de Fiesta; Merenhits '94 was re-released in 1999. Neither J & N nor the other distributors of these records contacted Torres to ask his permission for use of his song on these subsequent records, and he was not paid royalties or other compensation for that use. Torres' name did appear as the author or composer of the song on the first three records; his name was deleted from the credits on the 1999 version of Merenhits '94

Torres learned of the existence of these three records in 2001. At that point, he began taking steps to protect his rights to Noche de Fiesta. He submitted an application for registration of copyright to the Copyright Office, and received a certificate of copyright on January 31, 2002. Because the application required a "copy" of the copyrighted work, Torres submitted a typed version of the lyrics and a cassette tape, on which he had recorded himself singing the song and clapping the rhythm. He created the tape in 2001, at the time he prepared his application. It is unclear exactly when Torres first wrote a second set of the lyrics to Noche de Fiesta, after giving Cañuelas his original version in 1993, but it was certainly after he learned of the 1993 Gozadera record.

B. Procedural Background

Torres filed a copyright infringement action against numerous defendants, including J & N and other producers and distributors of each of the three records, in the District of Puerto Rico. At trial, the defendants moved for judgment as a matter of law pursuant to Federal Rule of Civil Procedure 50(a)(1) after the close of the plaintiff's case. The district court dismissed the claims against some defendants, but denied the motion as to J & N Records. At the close of all evidence, the remaining defendants renewed their motion, but the court reserved judgment and permitted the case to go to the jury. The jury returned a verdict in favor of Torres, finding that J & N had infringed his copyright on Noche de Fiesta.

Defendant J & N then filed a renewed motion for judgment as a matter of law, Fed.R.Civ.P. 50(b), on a number of grounds. J & N argued that the district court lacked subject matter jurisdiction for two independent reasons: (1) the copy of Noche de Fiesta submitted to the Copyright Office was an invalid reconstruction (rather than a "bona fide" copy); and (2) Torres' application indicated that his song was not a derivative work, whereas J & N argued that it was an unauthorized derivative of an earlier merengue song. J & N also argued that the case was barred by the statute of limitations, that there was insufficient evidence to support the jury's verdict, and that the damages were speculative and unjustified.

The district court held that "a copy that is simply created or reconstructed from memory without directly referring to the original, known as [a] `reconstruction,' does not comply with the deposit requirements of the Copyright Act," and found that "`Torres' deposits constitute impermissible reconstructions." Torres Negron v. Rivera, 433 F.Supp.2d 204, 213-14 (D.P.R. 2006). Therefore, the court concluded that the copyright registration was invalid, and because "copyright registration is a jurisdictional prerequisite for maintaining a copyright infringement suit," it granted J & N's motion for judgment as a matter of law.

The court alternatively found that the jury verdict could not stand because "(1) Noche de Fiesta is an unauthorized derivative work not entitled to copyright protection; (2) Torres granted [the producer] an implied license to exploit the song [] Noche de Fiesta . . .; and (3) the amount of damages awarded by the jury is untenable due to insufficiency of the evidence."

Torres appealed, seeking reinstatement of the jury verdict. J & N cross-appealed, challenging the district court's denial of its motion for attorney's fees and costs. We affirm the district court's judgment dismissing the infringement claims, on the basis of Torres' failure to satisfy the deposit copy requirement for copyright registration. We also affirm the district court's denial of attorney's fees.


We review the district court's dismissal of a case for lack of subject matter jurisdiction de novo. Gill v. United States, 471 F.3d 204, 205 (1st Cir.2006). We review the court's findings of fact for clear error. Id.

"[N]o 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." 17 U.S.C. § 411(a); see also Data Gen. Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147, 1160 (1st Cir.1994) ("[R]egistration of the copyright is a prerequisite to suit under the Copyright Act." (citation omitted)). This requirement is often described as a jurisdictional one. See, e.g., Positive Black Talk Inc. v. Cash Money Records, Inc., 394 F.3d 357, 365 (5th Cir.2004) ("17 U.S.C. § 411(a) sets forth [a] jurisdictional prerequisite . . . ."); Well-Made Toy Mfg. Corp. v. Goffa Int'l Corp., 354 F.3d 112, 115 (2d Cir.2003) ("Th[e] registration requirement is jurisdictional."); Xoom, Inc. v. Imageline, Inc., 323 F.3d 279, 283 (4th Cir.2003) ("Copyright registration is a jurisdictional prerequisite to bringing an action for infringement under the Copyright Act."); M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1488 (11th Cir.1990) ("The registration requirement is a jurisdictional prerequisite to an infringement suit."). In order to complete the registration process, and receive a certificate of copyright registration, a creator must submit to the Copyright Office "a complete copy or phonorecord" of the work for which he seeks registration, often referred to as the "deposit copy." 17 U.S.C. § 408(b).3 The Copyright Act defines "copies" a...

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