OLIVARES v. UNIVERSITY OF CHICAGO et al
Filing
114
MEMORANDUM OPINION AND ORDER signed by JUDGE LORETTA C. BIGGS on 9/30/2016; that Defendants' Motion for Summary Judgment (ECF No. 109 ) is DENIED, specifically as to Olivares' copyright infringement claim. Defendants' Motion to Dismis s Claim Two, Regarding Infringing Acts Abroad (ECF No. 34 at 21-22) and Defendants' Motion to Dismiss Texas State-Law Tort Claims as Preempted (ECF No. 34 at 22-26) are GRANTED. Plaintiff's claims for "Violations of Universal Copyr ight Convention," "Unjust Enrichment," and "Money Had and Received" are DISMISSED with prejudice. Defendants' Motion to Strike Requests for Statutory Damages and Attorneys' Fees (ECF No. 34 at 26-28) is GRANTED. Olivares' requests for statutory damages and attorney's fees are STRICKEN from the Third Amended Complaint. Defendants' Motion to Dismiss or Transfer for Lack of Jurisdiction and Venue in the Eastern District of Texas (ECF No. 34 at 3-14) is DENIED AS MOOT. Plaintiff's Unopposed Request for Hearing on Defendants' Pending Motions (ECF No. 100 ) and Plaintiff's Request for Hearing on Defendants' Motion for Summary Judgment (ECF No. 113 ) are DENIED. (Sheets, Jamie)
IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
JULIÁN OLIVARES,
Plaintiff,
v.
UNIVERSITY OF CHICAGO,
UNIVERSITY OF CHICAGO PRESS,
MARGARET R. GREER, and
ELIZABETH RHODES,
Defendants.
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1:15-cv-713
MEMORANDUM OPINION AND ORDER
LORETTA C. BIGGS, District Judge.
Julián Olivares (“Olivares”) initiated this copyright infringement action in the United
States District Court for the Eastern District of Texas in October 2014. The case was
subsequently transferred to this Court.
Before the Court are several motions filed by
Defendants, including a motion for summary judgment, various motions to dismiss, and a
motion to strike Olivares’ request for statutory damages and attorney’s fees. Also before the
Court are Olivares’ requests for hearings on all pending motions. For the reasons below,
Defendants’ Motion for Summary Judgment as to Olivares’ copyright infringement claim is
denied; Defendants’ motions to dismiss claim two regarding infringing acts abroad and the
Texas state-law tort claims are granted; Defendants’ motion to strike Olivares’ requests for
statutory damages and attorney’s fees is granted; and Defendants’ motion to dismiss or transfer
for lack of jurisdiction and venue is denied as moot. In addition, Olivares’ requests for
hearings are denied.1
I.
BACKGROUND
In 1637, Spanish writer María de Zayas y Sotomayor (“Zayas”) published a collection
of ten stories titled Novelas amorosas y ejemplares (“Novelas amorosas”). (See Rhodes Decl. ¶ 7,
ECF No. 34-2; Greer Decl. ¶ 13, ECF No. 34-3.) In 2000, Olivares created an edition of the
Novelas amorosas, also in Spanish. (Olivares Decl. ¶ 3, ECF No. 44-28.) Olivares’ edition
contains the entire text of the Novelas amorosas, as well as several sections written by Olivares.2
(See Olivares Ed., ECF No. 1-2.) In 2009, Defendant University of Chicago published an
English translation of selected stories by Zayas, including four stories from the Novelas
amorosas. (See Rhodes Decl. ¶ 7, ECF No. 34-2; Greer Decl. ¶ 13, ECF No. 34-3.) The stories
were edited and translated by Defendants Margaret R. Greer (“Greer”) and Elizabeth Rhodes
1
Also before the Court is a motion that Defendants filed in the Eastern District of Texas and moved
to reinstate in this Court. The motion challenges personal jurisdiction and venue in the Eastern
District of Texas. The Court will not address this motion as to these issues, which became moot when
the Eastern District of Texas transferred the case on convenience grounds. See 5B Charles Alan
Wright & Arthur R. Miller, Federal Practice & Procedure § 1352 (3d ed.) (“The transfer of the case
[pursuant to § 1404(a)] will render moot any Rule 12(b)(3) motion to dismiss for improper venue.”).
Contrary to Defendants’ argument, the propriety of jurisdiction and venue in the Eastern District of
Texas has no bearing on whether this Court must apply Fourth Circuit or Fifth Circuit law. “[F]ederal
courts comprise a single system applying a single body of law, and no litigant has a right to have the
interpretation of one federal court rather than that of another determine his case.” Desiano v. WarnerLambert & Co., 467 F.3d 85, 91 (2d Cir. 2006) (quoting Menowitz v. Brown, 991 F.2d 36, 40 (2d Cir.
1993)) aff’d sub nom. Warner-Lambert Co., LLC v. Kent, 128 S. Ct. 1168 (2008). This Court will
accordingly proceed under the precedent of the Fourth Circuit. See Lanfear v. Home Depot, Inc.,
536 F.3d 1217, 1223 (11th Cir. 2008); Newton v. Thomason, 22 F.3d 1455, 1460 (9th Cir. 1994); TelPhonic Servs., Inc. v. TBS Int’l, Inc., 975 F.2d 1134, 1138 (5th Cir. 1992).
2
Sections by Olivares include an introduction, note on his edition, bibliography, glossary, index of
names, and index of poems. (See Olivares Ed. 7–8, ECF No. 1-2 (table of contents).) These sections
of the Olivares edition do not appear to be at issue in this case.
2
(“Rhodes”). (See Greer & Rhodes Translation, ECF No. 109-7 (book cover).) When
translating stories from the Novelas amorosas, Greer and Rhodes used Olivares’ edition of Zayas’
work. (Id. at 41 (note on the translations).) Their use of Olivares’ edition forms the basis of
the parties’ dispute.
Olivares asserts four claims: (1) copyright infringement under federal and foreign law,
(2) violations of the Universal Copyright Convention, (3) unjust enrichment, and (4) money
had and received. While this case was before the Eastern District of Texas, Defendants moved
to dismiss each claim except Olivares’ copyright infringement claim, pursuant to Rule 12(b)(6)
of the Federal Rules of Civil Procedure, for failure to state a claim upon which relief can be
granted. They also moved to strike Olivares’ requests for statutory damages and attorney’s
fees. After the case was transferred to this Court, those motions were reinstated, and
Defendants filed a motion for summary judgment under Rule 56 of the Federal Rules of Civil
Procedure as to all claims.
Though Defendants seek summary judgment on all of Olivares’ claims, they devote the
majority of their summary judgment brief to the copyright infringement claim. For the
remaining claims, Defendants direct the court to the parties’ earlier briefing related to their
motions to dismiss. (See Defs.’ Mot. 19–20, ECF No. 109.) Because the parties’ earlier
briefing does not present matters outside the pleadings and all of the parties’ arguments on
these issues are made in the Rule 12(b)(6) context, the Court will evaluate Olivares’ claims for
violations of the Universal Copyright Convention, unjust enrichment, and money had and
received pursuant to Rule 12(b)(6) for failure to state a claim. The Court will evaluate Olivares’
claim for copyright infringement under a Rule 56 summary judgment standard.
3
II.
MOTIONS TO DISMISS
Defendants move to dismiss Olivares’ claims for unjust enrichment, money had and
received, and violations of the Universal Copyright Convention. A motion to dismiss under
Rule 12(b)(6) “challenges the legal sufficiency of a complaint,” including whether it meets the
pleading standard of Rule 8(a)(2). Francis v. Giacomelli, 588 F.3d 186, 192 (4th Cir. 2009).
Rule 8(a)(2) requires a complaint to contain “a short and plain statement of the claim showing
that the pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2). This pleading standard “does not
require ‘detailed factual allegations,’ but it demands more than an unadorned, the-defendantunlawfully-harmed-me accusation.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell
Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007)). Mere “labels and conclusions” and “a
formulaic recitation of the elements of a cause of action will not do.” Twombly, 550 U.S. at
555. Instead, “a complaint must contain sufficient factual matter, accepted as true, to ‘state a
claim to relief that is plausible on its face.’” Iqbal, 556 U.S. at 678 (quoting Twombly, 550
U.S. at 570). A claim is plausible when the complaint alleges facts that “raise a right to relief
above the speculative level,” Twombly, 550 U.S. at 555, and allow the court “to draw the
reasonable inference that the defendant is liable for the misconduct alleged,” Iqbal, 556 U.S.
at 678. Where the facts are “merely consistent with” the defendant’s liability or allow the court
to infer only “the mere possibility of misconduct,” the complaint “stops short of the line
between possibility and plausibility” and must be dismissed. Id. at 678–79; see Twombly, 550
U.S. at 557.
4
A. Violations of the Universal Copyright Convention
In his claim for violations of the Universal Copyright Convention, Olivares alleges that
Defendants infringed his international copyrights by distributing and selling their translation
outside the United States. (Third Am. Compl. ¶¶ 38–39, ECF No. 27.) The Universal
Copyright Convention is a treaty that “mandate[s] a policy of national treatment in which
copyright holders are afforded the same protection in foreign nations that those nations
provide their own authors.” Creative Tech., Ltd. v. Aztech Sys. Pte., Ltd., 61 F.3d 696, 700
(9th Cir. 1995); see Universal Copyright Convention art. II, reprinted in 9 Melville B. Nimmer
& David Nimmer, Nimmer on Copyright App. 24.
Defendants argue that the Universal Copyright Convention is not self-executing and
does not give rise to a private cause of action. The Court agrees. “International treaties are
not presumed to create rights that are privately enforceable.” Goldstar (Panama) S.A. v.
United States, 967 F.2d 965, 968 (4th Cir. 1992). Rather, “[t]o determine whether a treaty
creates a cause of action, we look to its text.” McKesson Corp. v. Islamic Republic of Iran,
539 F.3d 485, 488 (D.C. Cir. 2008). Olivares does not identify specific text in the Universal
Copyright Convention which creates a private cause of action, and the Court finds no such
language. Accordingly, the Court dismisses Olivares’ claim for violations of the Universal
Copyright Convention pursuant to Rule 12(b)(6), for failure to state a claim upon which relief
can be granted.
B. State Law Claims
Olivares also asserts two state law claims, i.e., unjust enrichment and money had and
received. In his claim for unjust enrichment, Olivares alleges Defendants have obtained
5
revenue from sales of their translation that would be unconscionable for them to retain. (Third
Am. Compl. ¶ 48, ECF No. 27.) In his claim for money had and received, Olivares alleges
that Defendants’ revenue “in equity and good conscience” belongs to him. (Id. ¶ 52.)
Defendants move to dismiss Olivares’ state law claims based on Copyright Act
preemption. The Copyright Act preempts all state law rights that are “equivalent” to rights
under federal copyright law. 17 U.S.C. § 301(a). The scope of preemption is extensive. See
Pan-Am. Products & Holdings, LLC v. R.T.G. Furniture Corp., 825 F. Supp. 2d 664, 690–91
(M.D.N.C. 2011) (stating that the “shadow actually cast by the [Copyright] Act’s preemption
is notably broader than the wing of its protection” (alteration in original) (quoting U.S. ex rel.
Berge v. Bd. of Trustees of the Univ. of Ala., 104 F.3d 1453, 1463 (4th Cir. 1997))).
To determine whether a state law claim is preempted, courts must consider (1) whether
the work falls “within the subject matter of copyright,” and (2) whether the claim protects
rights “that are equivalent to any of the exclusive rights within the general scope of copyright.”
Id. (quoting 17 U.S.C. § 301(a)); U.S. ex rel. Berge, 104 F.3d at 1463. Both prongs must be
satisfied for preemption to apply. Tire Eng’g & Distrib., LLC v. Shandong Linglong Rubber
Co., 682 F.3d 292, 309 (4th Cir. 2012). The first prong, relating to subject matter, is easily
satisfied in this case. Both of Olivares’ state law claims relate to his edition of Zayas’ Novelas
amorosas, which falls within the subject matter of copyright law as a derivative work. Derivative
works are defined as works “based upon one or more preexisting works.” See 17 U.S.C. §
101. Because Olivares’ edition is based upon Zayas’ Novelas amorosas, it is evaluated as a
derivative work, leaving only the second prong, relating to equivalency, as the only prong at
issue in this case.
6
Under the equivalency prong of the preemption analysis, Olivares’ claims are
preempted if they are equivalent to the exclusive rights that the Copyright Act grants to
copyright owners. See 17 U.S.C. § 301(a). These exclusive rights include the rights to
(1) reproduce the work, (2) prepare derivative copies based on the work, (3) distribute copies
of the work, (4) perform the work publicly, (5) display the work publicly, and (6) in the case
of a sound recording, perform the work publicly by means of a digital audio transmission. 17
U.S.C. § 106. To assess equivalency, the Fourth Circuit applies the “extra element” test.
Rosciszewski v. Arete Assocs. Inc., 1 F.3d. 225, 229–30 (4th Cir. 1993). Under this test, the
Court must refer to the elements of the state law claims, not the conduct or facts pled. Tire
Eng’g, 682 F.3d at 309–10. If an act of reproduction, preparation of a derivative work,
distribution, performance, or display alone can establish the state law claim, then the claim is
the equivalent of an exclusive right of the Copyright Act and there is preemption. See PanAmerican, 825 F. Supp. 2d at 691. However, if the state law claim requires an “extra element”
instead of, or in addition to, the acts of reproduction, performances, distributions or display
in order to create a state cause of action, there is not preemption if that extra element
transforms the nature of the action, “making it qualitatively different from a copyright
infringement claim.” Tire Eng’r, 682 F.3d at 309 (internal quotation marks omitted).
1. Unjust Enrichment
For Olivares’ claim of unjust enrichment, the Court considers the elements of the claim
under both Texas law (because this case was transferred from Texas federal court) and North
7
Carolina law (because this Court sits in North Carolina).3 Under Texas law, “[a] person is
unjustly enriched when he obtains a benefit from another by fraud, duress, or the taking of an
undue advantage.” Lee v. Lee, 411 S.W.3d 95, 111 (Tex. Ct. App. 2013). This claim can be
established by a single act of copyright infringement. Thus, a claim of unjust enrichment under
Texas law does not involve an extra element that makes the claim qualitatively different from
a copyright infringement claim. See DaVinci Editrice S.R.L. v. ZiKo Games, LLC, No. H-133415, 2014 WL 3900139, at *13 (S.D. Tex. Aug. 8, 2014) (dismissing a claim of unjust
enrichment under Texas law as preempted). A claim of unjust enrichment under North
Carolina law requires a plaintiff to establish that “(1) a measurable benefit was conferred on
the defendant, (2) the defendant consciously accepted that benefit, and (3) the benefit was not
conferred officiously or gratuitously.” Primerica Life Ins. Co. v. James Massengill & Sons
Constr. Co., 712 S.E.2d 670, 677 (N.C. Ct. App. 2011). Similar to the claim of unjust
enrichment under Texas law, a claim of unjust enrichment under North Carolina law can also
be established by a single act of copyright infringement. The claim therefore lacks an extra
element that qualitatively differentiates it from a copyright infringement claim. See Pan-Am.,
825 F. Supp. 2d at 696 (dismissing a claim of unjust enrichment under North Carolina law as
preempted). The Court concludes that Olivares’ unjust enrichment claim is preempted by the
Copyright Act, regardless of whether it is asserted under Texas law or North Carolina law.
3
A choice-of-law analysis is not necessary here because Olivares’ claim for unjust enrichment is
preempted regardless of the applicable state law. See Perini/Tompkins Joint Venture v. Ace Am. Ins.
Co., 738 F.3d 95, 101 (4th Cir. 2013) (recognizing that the choice-of-law analysis becomes necessary
only if the laws of the different states lead to different outcomes, and where they do not so conflict,
the choice becomes immaterial and the court should apply the law of the forum).
8
2. Money Had and Received
For Olivares’ claim of money had and received, the elements of the claim are
substantially similar under both Texas and North Carolina law. Under Texas law, “a plaintiff
must show that a defendant holds money which in equity and good conscience belongs to him
[Plaintiff].” MGA Ins. Co. v. Charles R. Chesnutt, P.C., 358 S.W.3d 808, 814 (Tex. Ct. App.
2012). Under North Carolina law, a plaintiff can maintain an action for money had and
received “whenever the defendant has money in his hands which belongs to the plaintiff, and
which in equity and good conscience he ought to pay to the plaintiff.” Primerica, 712 S.E.2d
at 676 (quoting Allgood v. Wilmington Sav. & Trust Co., 88 S.E.2d 825, 829 (N.C. 1955)). A
single act of copyright infringement can satisfy the elements of a claim for money had and
received, so long as the alleged infringer received money from the act of infringement. No
extra element transforms a claim for money had and received into something qualitatively
different from a copyright infringement claim. The claim is therefore the equivalent of an
exclusive right under the Copyright Act, and the Court concludes that Olivares’ claim for
money had and received is preempted by the Act, regardless of whether it is asserted under
Texas law or North Carolina law.
Because the Copyright Act preempts Olivares’ state law claims of unjust enrichment
and money had and received, the claims are dismissed pursuant to Rule 12(b)(6), for failure to
state a claim upon which relief can be granted.
III.
MOTION FOR SUMMARY JUDGMENT
Defendants move for summary judgment on all of Olivares’ claims though, based on
the preceding discussion, his claim for copyright infringement is the only claim that remains.
9
Summary judgment is appropriate when “there is no genuine dispute as to any material fact
and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). A fact is
“material” if it might affect the outcome of the litigation, and a dispute is “genuine” if the
evidence would permit a reasonable jury to find for the nonmoving party. Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 248 (1986). The party seeking summary judgment bears the initial
burden of “pointing out to the district court . . . that there is an absence of evidence to support
the nonmoving party’s case.” Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986). To defeat
summary judgment, the nonmoving party must designate “specific facts showing that there is
a genuine issue for trial.” Id. at 324. The nonmoving party must support its assertions by
citing to particular parts of the record, such as affidavits, depositions, answers to
interrogatories, and admissions on file. Fed. R. Civ. P. 56(c)(1); Celotex, 477 U.S. at 324.
The role of the court is not “to weigh the evidence and determine the truth of the
matter” but rather “to determine whether there is a genuine issue for trial.” Anderson, 477
U.S. at 249. A genuine issue for trial exists only when “there is sufficient evidence favoring
the nonmoving party for a jury to return a verdict for that party.” Id. “If the evidence is
merely colorable or is not significantly probative, summary judgment may be granted.” Id. at
249–50 (citations omitted). When reviewing a motion for summary judgment, the court must
“resolve all factual disputes and any competing, rational inferences in the light most favorable”
to the nonmoving party. Rossignol v. Voorhaar, 316 F.3d 516, 523 (4th Cir. 2003) (quoting
Wightman v. Springfield Terminal Ry. Co., 100 F.3d 228, 230 (1st Cir. 1996)).
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A. Copyright Infringement
Olivares asserts his copyright infringement claim under the Copyright Act of 1976 and
under foreign law. He claims Defendants infringed his copyright in his edition of the Novelas
amorosas by copying and translating his edition, distributing that translation, and inducing third
parties to exploit his edition. (Third Am. Compl. ¶ 20, ECF No. 27.)
The Copyright Act of 1976 grants copyright protection to “original works of
authorship fixed in any tangible medium of expression.” 17 U.S.C. § 102. “Original, as the
term is used in copyright, means only that the work was independently created by the author
(as opposed to copied from other works), and that it possesses at least some minimal degree
of creativity.”
Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991).
“[O]riginality is usually considered a question of fact.” Metro. Reg’l Info. Sys., Inc. v. Am.
Home Realty Network, Inc., 722 F.3d 591, 595 n.9 (4th Cir. 2013).
An author who creates an original work enjoys “a bundle of exclusive rights.” A.V. ex
rel. Vanderhye v. iParadigms, LLC, 562 F.3d 630, 636 (4th Cir. 2009) (quoting Harper & Row,
Publishers, Inc. v. Nation Enters., 471 U.S. 539, 546 (1985)). These include the rights to
(1) reproduce the work, (2) prepare derivative copies based on the work, (3) distribute copies
of the work, (4) perform the work publicly, (5) display the work publicly, and (6) in the case
of a sound recording, perform the work publicly by means of a digital audio transmission.
§ 106. Violation of any exclusive right constitutes copyright infringement. See § 501(a). “To
establish a claim for copyright infringement, a plaintiff must prove that it owned a valid
copyright and that the defendant copied the original elements of that copyright.” Humphreys
11
& Partners Architects, L.P. v. Lessard Design, Inc., 790 F.3d 532, 537 (4th Cir. 2015) (quoting
Lyons P’ship, L.P. v. Morris Costumes, Inc., 243 F.3d 789, 801 (4th Cir. 2001)).
In seeking summary judgment on Olivares’ copyright infringement claim, Defendants
challenge the validity of Olivares’ copyright. Notably, their challenge extends only to Olivares’
copyright in his corrections to Zayas’ text, not to his copyright in his edition as a whole. This
is based on their understanding that Olivares claims Defendants infringed his rights in only
one section of his edition, the section containing the text of Zayas’ Novelas amorosas.4 (See
Defs.’ Mot. 7, ECF No. 109.) Olivares does not allege that Defendants infringed his rights in
any of the sections of his edition that he wrote himself.5 Thus, the Court will consider only
Olivares’ copyright in the text of the Novelas amorosas as published in his edition.
To create his edition of the Novelas amorosas, Olivares referenced several early editions
of Zayas’ work, including two editions published by Zayas and two editions he describes as
“pirated.” (See Olivares Decl. ¶¶ 7–10, ECF No. 110-7.) Olivares began by conducting a lineby-line comparison of the various editions and “noting all the variants and problematic areas
that needed clarification.” (Id. ¶ 9.) Following this comparison, Olivares transcribed Zayas’
second edition of the Novelas amorosas. (Id. ¶ 10.) He then made changes to the punctuation
4
“Olivares’ book consists of the text of Zayas’ Novelas amorosas, along with Olivares’s footnotes and
commentary on that text. Olivares does not claim that any of his footnotes or commentary were used
by Defendants.” (Defs.’ Mot. 7, ECF No. 109.)
5
Olivares argues that “Greer used Olivares’s introduction, which added bibliographic reference to
other person[s’] readings of Zayas’ texts and included his subjective interpretations of those texts.”
(Pl.’s Opp’n 4, ECF No. 110.) He bases this argument on a statement by Greer that she “didn’t use
[Olivares’ introduction] a great deal.” (Greer Dep. at 63:18–25, ECF No. 110-6.) This does not
amount to an allegation that Defendants translated his introduction or otherwise infringed his
copyright in his introduction. Indeed, in his deposition, Olivares stated he did not think Greer and
Rhodes copied any of his introductory material. (See Olivares Dep. at 262:8–11, ECF No. 109-2.)
12
and paragraph breaks, annotated the variants between the editions, and made corrections to
the text. (See id.) Because Olivares’ edition is based upon Zayas’ Novelas amorosas, it is a
derivative work. See § 101. Thus, Olivares’ copyright in his edition extends only to the
material he contributed, not to the material he copied from Zayas. See § 103(b). In addition
to the consideration of what Olivares contributed, the originality requirement of copyright law
also considers whether those contributions possess “at least some minimal degree of
creativity.” Feist, 499 U.S. at 345. Thus, Olivares’ copyright extends only to material that (1)
he contributed and (2) meets the minimal creativity threshold.
Defendants contend Olivares’ corrections to Zayas’ text constitute “the only material
he contributed.” (Defs.’ Mot. 7, ECF No. 109.) They then argue that his corrections—
specifically, his changes to Zayas’ punctuation and paragraph breaks—are not copyrightable.
(Id.) Though Olivares does not expressly agree that his corrections to Zayas’ text are the only
material he contributed to her text, he also does not contradict Defendants’ contention. He
disputes, however, the copyrightability of his corrections. (See Pl.’s Opp’n 3–5, ECF No. 110.)
He acknowledges that the “‘originality” ground actually reduces to ‘minimal creativity.’” (Id.
at 3.) Thus, the validity of Olivares’ copyright comes down to whether his corrections to
Zayas’ text are minimally creative, and the propriety of summary judgment depends on
whether there is a genuine dispute over the creativity question.
In the creativity inquiry, the Supreme Court has explained that “the requisite level of
creativity is extremely low; even a slight amount will suffice.” Feist, 499 U.S. at 345. The
Court observed that “[t]he vast majority of works make the grade quite easily, as they possess
some creative spark, ‘no matter how crude, humble or obvious’ it might be.” Id. (quoting 1
13
M. Nimmer & D. Nimmer, Copyright § 1.08[C][1] (1990)). Here, the parties agree that
Olivares’ corrections to Zayas’ text include changes to the punctuation and paragraph breaks;
rather, they disagree as to whether these corrections are sufficiently creative to merit copyright
protection. (See ECF No. 109 at 7; ECF No. 110 at 3–5.)
Defendants argue that corrections to punctuation and paragraph breaks are not
copyrightable. They direct the Court to the United States Copyright Office’s manual on
copyright law, which states, “Merely correcting errors in spelling, punctuation, grammar, or
making other minor changes, revisions, or other modifications to a preexisting work do not
satisfy [the originality] requirement.” U.S. Copyright Office, Compendium of U.S. Copyright
Office Practices § 709.4 (3d ed. 2014). Defendants also direct the Court to Grove Press, Inc.
v. Collectors Publication, Inc., in which a district court held that 40,000 revisions to the
punctuation, spelling, quotation marks, and typographical errors found in a preexisting work
“displayed no originality.” 264 F. Supp. 603, 605 (C.D. Cal. 1967).
Defendants appear to oversimplify the corrections that Olivares made to Zayas’
punctuation and paragraph breaks. If the extent of Olivares’ corrections consisted of fixing
proofreading errors in Zayas’ work, then the Court would be more inclined to find a lack of
originality. However, according to Olivares, his edition does not merely fix proofreading
errors; it restores, modernizes, and clarifies Zayas’ text. (Olivares Dep. at 101:12–23; 144:10–
145:13, 147:15–148:6, 178:1–179:1, ECF No. 109-2; see Greer Dep. at 145:1–3, ECF No. 1106 (“One of the things an editor of a 17th Century text does . . . is modernizing the spelling and
punctuation.”).) Though Zayas’ editions are not in the record before the Court, the parties
agree that Zayas’ original text often lacks paragraph breaks and punctuation. Greer explains
14
that in Zayas’ time, “manuscript authors didn’t punctuate their texts carefully, maybe not at
all,” because they expected the printer to supply the punctuation. (Greer Dep. at 61:3–5, ECF
No. 110-6.) Consequently, some of Zayas’ sentences “might be a paragraph long.” (Id. at
181:22.) Rhodes similarly states that in Zayas’ original text, “there are no paragraphs, and the
punctuation is inconsistent” in terms of whether and when there is punctuation. (Rhodes
Dep. at 131:18–120, ECF No. 110-9.) Olivares explains that one of Zayas’ stories was
originally published as a single paragraph spanning twenty or thirty pages. (Olivares Dep. at
149:1–14, ECF No. 109-2.) He then divided that single paragraph into approximately eighty
paragraphs, making the text easier to follow. (See id. at 149:8–12.) Olivares also describes
that he punctuated “a very long, long sentence that was very confusing.” (Id. at 239:20–23.)
The Court cannot find as a matter of law that these types of revisions utterly lack creativity, as
it would be required to do, to grant Defendants’ summary judgment on this claim of copyright
infringement.
As Rhodes explains, “different scholars will divide paragraphs differently based on how
they interpret the meaning of each paragraph.” (Rhodes Dep. at 131:22–24, ECF No. 110-9.)
Greer agrees that how an author divides paragraphs “matters in how we read a text.” (Greer
Dep. at 61:13–16, ECF No. 110-6.) And while some punctuation choices are mechanical and
dictated by established convention,6 other punctuation choices have the potential to change
the entire meaning of the text. (See Rhodes Dep. at 136:6–25, ECF No. 110-9.) To create an
edition that is “as accurate to the sense of Zayas as possible,” Greer acknowledges that
6
For example, Greer testifies that the Spanish language “used to use semicolons where we use
periods.” (See Greer Dep. at 81:2, ECF No. 110-6.) If Olivares replaced Zayas’ sentence-ending
semicolons with periods, that revision reflects conformance with convention, not creative choice.
15
Olivares had to exercise some judgment when supplying punctuation to the original text.
(Greer Dep. at 67:1–20, ECF No. 110-6.)
On the record before the Court, there is sufficient evidence for a reasonable jury to
find that Olivares’ corrections to Zayas’ punctuation and paragraph breaks satisfy the
originality requirement of copyright law. The existence of this genuine issue for trial precludes
an award of summary judgment in favor of Defendants. It also eliminates the need for the
Court to comprehend the full scope of Olivares’ contributions to Zayas’ text, which is not
possible on the present record. Because a reasonable jury could find that Olivares’ copyright
extends to certain elements of the text of the Novelas amorosas that appears in his edition,
Defendants are not entitled to summary judgment on the issue of copyrightability.
B. Defenses to Infringement
Defendants next argue, in the alternative, if the Court does not grant their motion for
summary judgment on the issue of copyrightability, they seek summary judgment based on
their argument that the defenses of fair use and estoppel would nonetheless preclude a finding
of infringement in this case. To obtain summary judgment on an affirmative defense, a
defendant “must conclusively establish all essential elements of that defense.” Ray Commc’ns,
Inc. v. Clear Channel Commc’ns, Inc., 673 F.3d 294, 299 (4th Cir. 2012) (considering the
affirmative defense of laches in a trademark infringement case). “When the defendant has
produced sufficient evidence in support of its affirmative defense, the burden of production
shifts to the plaintiff to ‘come forward with specific facts showing that there is a genuine issue
for trial.’” Id. (quoting Brinkley v. Harbour Recreation Club, 180 F.3d 598, 614 (4th Cir.
1999)). However, if the defendant fails to satisfy his initial burden of producing evidence
16
showing he is entitled to summary judgment, then the plaintiff is not required to rebut that
insufficient showing, and the court must deny summary judgment. Id. at 299.
1. Fair Use
Defendants argue their use of Olivares’ edition constitutes fair use. “A finding of fair
use is a complete defense to an infringement claim: ‘the fair use of a copyrighted work . . . is
not an infringement of copyright.’” Bouchat v. Balt. Ravens Ltd. P’ship, 737 F.3d 932, 937
(4th Cir. 2013) (quoting 17 U.S.C. § 107). The doctrine of fair use serves as “an equitable rule
of reason” and calls for a case-by-case analysis. Id. (quoting Sundeman v. Seajay Soc’y, Inc.,
142 F.3d 194, 202 (4th Cir. 1998)). Four non-exclusive statutory factors guide the fair use
analysis:
1. the purpose and character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes;
2. the nature of the copyrighted work;
3. the amount and substantiality of the portion used in relation to the
copyrighted work as a whole; and
4. the effect of the use upon the potential market for or value of the
copyrighted work.
17 U.S.C. § 107; iParadigms, LLC, 562 F.3d at 637. “These factors cannot be treated in
isolation from one another, but instead must be ‘weighed together, in light of the purposes of
copyright.’” Bouchat, 737 F.3d at 937 (quoting Campbell v. Acuff-Rose Music, Inc., 510 U.S.
569, 578 (1994)).
The fair use doctrine is an affirmative defense presenting a mixed question of law and
fact. Id. Though Defendants present evidence relevant to fair use, their evidence includes
one important omission: a complete copy of their translation of the Novelas amorosas, or an
17
expert report detailing any instances of copying. Without such evidence, the Court’s fair use
analysis is constrained. The third fair use factor, for instance, requires the Court to consider
“the amount and substantiality” of the portion of Olivares’ work that Defendants used in their
translation, in relation to Olivares’ work as a whole. 17 U.S.C. § 107(3). Defendants present
no evidence on this factor, only argument. Defendants argue that “the only material at issue
is certain changes to punctuation and paragraph breaks,” which represent “a vanishingly small
amount” of Olivares’ edition. (Defs.’ Mot. 15, ECF No. 109.) Without sufficient evidence,
however, the Court cannot evaluate whether punctuation and paragraph breaks represent the
full extent of Defendants’ copying, nor can the Court evaluate whether the elements copied
amount to a minuscule, insubstantial portion of Olivares’ work as a whole. Though the Court
cannot consider any fair use factor in isolation, every factor must still be explored. See
Campbell, 510 U.S. at 578. The record before the Court does not allow the Court to fully
explore each factor. The Court, therefore, cannot conclude as a matter of law that Defendants’
use of Olivares’ edition constitutes fair use. Because Defendants have failed to carry their
burden, they are not entitled to summary judgment based on the affirmative defense of fair
use.
2. Estoppel
Defendants also argue that even if Olivares’ corrections to punctuation and paragraph
breaks are copyrightable, “Olivares would be estopped from asserting copyright in those
changes because he gave no notice of them to the reader.” (Defs.’ Mot. 12, ECF No. 109.)
As support, Defendants cite a Second Circuit case about a book of Dorothy Parker poems,
Silverstein v. Penguin Putnam, Inc., 368 F.3d 77 (2d Cir. 2004). In Silverstein, the plaintiff
18
collected a selection of Parker’s poems, made extensive copy edits (“mainly changes in
punctuation, capitalization, indentation and titling, in order to standardize the text”), and
published the book. Id. at 79, 83. Three years later, a publishing house published its own
book of Dorothy Parker poems, which included photocopies of the poems published in the
plaintiff’s book. Id. at 79. The plaintiff brought suit. Id. Among his claims was a copyright
infringement claim based on his copyedits to Parker’s poems. Id. at 79, 83. The Second
Circuit recognized that a question existed “as to whether copyediting changes of this kind are
sufficiently creative to merit copyright protection.” Id. at 83. However, it held that the
plaintiff was estopped from asserting infringement on that basis because, even if his
copyediting changes were protectable, his book did not give any notice to the reader that he
had made any changes to Parker’s punctuation, titling, or formatting—“let alone what those
changes were”—leading reasonable readers to conclude that the plaintiff was reproducing
Parker’s own work. Id. Consequently, the plaintiff was estopped from asserting copyright
infringement based on his copyediting changes. Id.
Defendants argue that Olivares is similarly estopped from asserting copyright
infringement based on his “unmarked departures” from Zayas’ work. (Defs.’ Mot. 12–13,
ECF No. 109.) The Court disagrees. Olivares acknowledges in his deposition that by looking
at his edition, Greer and Rhodes had no way to know where he made changes to Zayas’
punctuation and paragraph breaks. (See Olivares Dep. at 155:10–17, ECF No. 109-2.) In this
case, however, the evidence demonstrates that Greer and Rhodes were aware that the
punctuation marks and paragraph breaks in Olivares’ edition reflected Olivares’ work, not
Zayas’. Both scholars had experience reading old texts. (Greer Dep. at 162:9, ECF No. 110-
19
6; see Rhodes Dep. at 141:4–6, ECF No. 110-9.) They understood that in creating an edition
of an old text, the standard practice in the field was to transcribe all the words and modernize
the spelling and punctuation. (Greer Dep. at 66:21–23, ECF No. 110-6; see id. at 151:16–19
(“One transcribes the words, and then, he presumably . . . would have modernized the spelling
and the punctuation.”).) Further, by the time they began the translations, both scholars were
deeply familiar with Zayas’ work. Rhodes was working on a book about Zayas at the time,
(Rhodes Dep. at 146:4–5, ECF No. 110-9), and Greer had worked so extensively with Zayas’
original texts over the previous ten years that she “could almost recite parts of them at times,”
(Greer Dep. at 63:8–9, 67:2–3, ECF No. 110-6). While translating, Greer and Rhodes did not
seek to follow Olivares’ punctuation. (Rhodes Dep. at 131:8–14, ECF No. 110-9.) Rhodes
translated the text “straight through with no paragraphs,” and then later divided the
paragraphs where she felt was appropriate. (Id. at 132:25–133:3.) Greer punctuated as she
translated. (Greer Dep. at 137:13–14, ECF No. 110-6.) Sometimes her punctuation of the
English sentence coincided with Olivares’ punctuation; other times, it did not. (Id. at 137:14–
18.) In any event, she understood that she was translating Zayas’ words but recognizes that
“[i]t may not be her punctuation, because that would have been supplied by whatever edition”
was before her. (Id. at 113:3–5.) Indeed, in describing Olivares’ edition, she acknowledges
that “the punctuation is different.” (Id. at 154:21.) In the “Note on the Translations” that
appears in Defendants’ book, Greer and Rhodes explain that they “occasionally alter[ed]”
Olivares’ punctuation and paragraph divisions to help make long sentences understandable.
(Greer & Rhodes Translation 41, ECF No. 109-7.) The evidence clearly shows that Greer and
Rhodes were aware that the punctuation and paragraph breaks in Olivares’ edition were not
20
the work of Zayas, and they were not led to believe otherwise. “Estoppel is an equitable
doctrine invoked to avoid injustice in particular cases.” Heckler v. Cmty. Health Servs. of
Crawford Cty., Inc., 467 U.S. 51, 59 (1984). Here, there was no injustice. Defendants are
therefore not entitled to summary judgment based on a theory of estoppel.
C. Copyright Infringement under Foreign Law
Given the genuine dispute as to whether Olivares’ copyright extends to the elements
of his work that Defendants allegedly infringed, and given Defendants’ failure to prove their
asserted defenses of fair use and estoppel, the Court denies Defendants’ request for summary
judgment on Olivares’ claim of copyright infringement. Further, this denial of summary
judgment extends to Olivares’ entire copyright infringement claim, which includes allegations
of infringement under both federal law and foreign law, because Defendants advance the same
arguments for both parts of the claim.7 (See Defs.’ Mot. 19, ECF No. 109.)
IV.
MOTION TO STRIKE
The Court next turns to Defendants’ motion to strike Olivares’ requests for statutory
damages and attorney’s fees, as barred by the Copyright Act. Defendants do not indicate
whether they seek to strike under Rule 12(f), Rule 12(b)(6), or some other rule of the Federal
Rules of Civil Procedure. The Court will therefore evaluate their motion under the Rule
12(b)(6) standard for failure to state a claim upon which relief can be granted.
See
Whittlestone, Inc. v. Handi–Craft Co., 618 F.3d 970, 974 (9th Cir. 2010) (stating that a motion
7
Specifically, Defendants argue that the Court should decline to exercise supplemental jurisdiction
after dismissing Olivares’ remaining claims, and that in any event, summary judgment is warranted on
the foreign law claim based on the same arguments as the copyright infringement claim under the
Copyright Act. (Defs.’ Mot. 19, ECF No. 109.)
21
to strike damages claim is “better suited for a Rule 12(b)(6) motion or a Rule 56 motion, not
a Rule 12(f) motion”).
By statute, statutory damages and attorney’s fees are not available for “any infringement
of copyright commenced after first publication of the work and before the effective date of
its registration, unless such registration is made within three months after the first publication
of the work.” 17 U.S.C. § 412(2). Thus, three dates are relevant in determining whether
Olivares is eligible for an award of statutory damages and attorney’s fees: (1) the date Olivares
first published his edition of the Novelas amorosas, (2) the effective date of Olivares’ copyright
registration, and (3) the date of Defendants’ alleged infringement. Only if the alleged
infringement occurred after publication and registration would Olivares be eligible for
statutory damages and attorney’s fees. That is not the case here. Olivares first published his
edition in 2000 and registered his work in 2014. (Copyright Registration, ECF No. 109-12.)
Defendants published their translation in 2008. (Greer Dep. at 65:15–16, ECF No. 110-6.)
Thus, any infringement necessarily occurred before the effective date of Olivares’ copyright
registration. Statutory damages and attorney’s fees are therefore not available in this case.
Olivares disagrees, based on an argument that his copyright was registered in Spain prior to
the alleged infringement. However, he has not cited any statutory language or case law—and
the Court finds none—suggesting that a foreign copyright registration can be used as a basis
to obtain statutory damages and attorney’s fees under the Copyright Act. Accordingly, the
Court grants Defendants’ motion to strike, and dismisses Olivares’ requests for statutory
damages and attorney’s fees pursuant to Rule 12(b)(6), for failure to state a claim upon which
relief can be granted.
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For the reasons outlined herein, the Court enters the following:
ORDER
IT IS THEREFORE ORDERED that Defendants’ Motion for Summary Judgment
(ECF No. 109) is DENIED, specifically as to Olivares’ copyright infringement claim.
IT IS FURTHER ORDERED that Defendants’ Motion to Dismiss Claim Two,
Regarding Infringing Acts Abroad (ECF No. 34 at 21–22) and Defendants’ Motion to Dismiss
Texas State-Law Tort Claims as Preempted (ECF No. 34 at 22–26) are GRANTED.
Plaintiff’s claims for “Violations of Universal Copyright Convention,” “Unjust Enrichment,”
and “Money Had and Received” are DISMISSED with prejudice.
IT IS FURTHER ORDERED that Defendants’ Motion to Strike Requests for
Statutory Damages and Attorneys’ Fees (ECF No. 34 at 26–28) is GRANTED. Olivares’
requests for statutory damages and attorney’s fees are STRICKEN from the Third Amended
Complaint.
IT IS FURTHER ORDERED that Defendants’ Motion to Dismiss or Transfer for
Lack of Jurisdiction and Venue in the Eastern District of Texas (ECF No. 34 at 3–14) is
DENIED AS MOOT.
IT IS FURTHER ORDERED that Plaintiff’s Unopposed Request for Hearing on
Defendants’ Pending Motions (ECF No. 100) and Plaintiff’s Request for Hearing on
Defendants’ Motion for Summary Judgment (ECF No. 113) are DENIED.
This, the 30th day of September, 2016.
/s/ Loretta C. Biggs
United States District Judge
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