In copyright infringement suit against pop singer Ricky Martin, First Circuit holds dismissal based on plaintiff’s failure to plead registration with Copyright Office should be without prejudice, allowing plaintiff to supplement complaint or file new action.
Luis Adrian Cortés-Ramos sued pop singer Ricky Martin, alleging that the music video for Martin’s song “Vida” infringed on the copyright of a music video Cortés-Ramos created in 2014, along with other violations of Puerto Rican laws. Cortés-Ramos created his 2014 music video as a submission to a songwriting competition allegedly sponsored by Martin and Sony Music Entertainment, and the winning composition was to be sung by Martin at the opening of the 2014 World Cup in Brazil. Although Cortés-Ramos did not win the competition, he was selected as one of the top 20 finalists. After Martin released the video for his song “Vida” in 2014, which Cortés-Ramos alleged was “almost identical” to his music video, Cortés-Ramos filed a lawsuit against Martin and companies affiliated with Sony Music Entertainment. Cortés-Ramos voluntarily dismissed Martin from that suit, and the court subsequently dismissed the claims against Sony because they were subject to an arbitration provision in the competition participation agreement.
Cortés-Ramos subsequently filed this second suit against Martin in 2016. The district court initially dismissed the case, ruling that the claims against Martin were also subject to the arbitration provision, but the First Circuit reversed and remanded that order (read our coverage of the First Circuit’s ruling here). On Martin’s renewed motion to dismiss for failure to state a claim, the district court ruled that Cortés-Ramos failed to allege that he had registered the copyright in his music video, as required by Section 411(a) of the Copyright Act, and that his allegation that the “Vida” music video was “almost identical” to his own was not sufficient to state that there was factual copying. The district court dismissed the copyright infringement claim with prejudice and Cortés-Ramos’ claims under Puerto Rican law without prejudice. Cortés-Ramos appealed the dismissal to the First Circuit.
In a de novo review of the dismissal of the copyright claim, the First Circuit explained that a plaintiff alleging copyright infringement has the burden to prove that the defendant actually copied the work as a factual matter—which can be established indirectly by showing that defendant had access to plaintiff’s work and that the two works share a sufficient degree of similarity—and also that the two works are substantially similar. It was undisputed that Martin had access to Cortés-Ramos’ music video by way of its submission to the songwriting contest, and the allegation that Martin’s “Vida” music video was “almost identical” to the video created by Cortés-Ramos was sufficient to meet plaintiff’s burden of pleading the similarity required for both the indirect actual copying and the substantial similarity prongs of his copyright claim.
The First Circuit found the district court’s dismissal with prejudice of Cortés-Ramos’ copyright claim based on his failure to plead that the video had been registered for copyright to be problematic, however. Section 411(a) of the Copyright Act states that “no civil action for infringement of the copyright in any United States work shall be instituted until … registration of the copyright claim has been made in accordance with this title.” Citing the Supreme Court’s 2019 decision in Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC, the First Circuit determined that “registration,” as used in Section 411(a), occurs not upon completion of the application to copyright a work but rather when the work is actually registered, after the Copyright Office has reviewed the application. In this regard, the Supreme Court viewed copyright registration as an administrative exhaustion requirement that must be satisfied before a copyright holder can file suit for infringement of that copyright. The First Circuit also found that the legislative history of Section 411(a) and other precedents supported this view. Because Cortés-Ramos’ complaint failed to allege that his music video had been registered prior to filing his lawsuit, the First Circuit agreed with the district court’s dismissal of the copyright claim on the grounds that registration had not been obtained. The First Circuit concluded, however, that because the deficiency in Cortés-Ramos’ complaint was a failure to satisfy a pre-suit requirement, the dismissal should have been without prejudice. The appellate court remanded the case, affording the district court the opportunity to determine whether Cortés-Ramos should be allowed to supplement his complaint with an allegation that he had obtained registration of his work (which indisputably occurred after he had filed his complaint) or whether he would be required to file a new action.
The First Circuit also affirmed the district court’s dismissal of Cortés-Ramos’ claims under Puerto Rican law without prejudice, finding that he failed to allege any facts supporting his assertion that his work was protected by Puerto Rican trademark law or that he was entitled to relief under other contract- and tort-based causes of action.
Summary prepared by David Grossman and Kyle Petersen