MOLINELLI-FREYTES et al

Filing 445

OPINION AND ORDER ADOPTING REPORT AND RECOMMENDATION 409 for 336 Motion for Summary Judgment; 339 Motion for Summary Judgment; and 341 Motion for Summary Judgment. IT IS SO ORDERED. Signed by Judge Daniel R. Dominguez on 9/30/2012.(om) Modified on 10/2/2012 correcting filing date (np).

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF PUERTO RICO
JOSE MOLINELLI-FREYTES, et al,
Plaintiffs,
v.

Civil No.:09-1655(DRD)

UNIVERSITY
al,

OF

PUERTO

RICO,

et

Defendants

OPINION AND ORDER
José Molinelli-Freytes (“Molinelli”) and Lillian Bird-Canals
(“Bird”) (collectively, “Plaintiffs”) brought suit against the
University of Puerto Rico (“UPR”), the Puerto Rico Council on
Higher Education (“CHE”), past and present UPR and CHE officers,
the UPR trustees, and other allegedly responsible individuals, for
copyright infringement under the Copyright Act of 1976 (“the
Copyright Act”), 17 U.S.C. §§ 101 et seq.1

Plaintiffs assert that

they created an original manuscript (the “Proposal”) during nonworking hours while employed as a professor and program director at
UPR.

Plaintiffs aver that UPR has used the Proposal improperly in

order to create a new graduate program based upon the contents of
the Proposal in violation of the Copyright Act. Plaintiffs further
contend that CHE authorized the creation and implementation of this
program in violation of the Copyright Act.

1

The Court previously dismissed Plaintiffs’ §1983 claims and unjust enrichment claims as well as claims
under the Puerto Rico Intellectual Property Act, 31 L.P.R.A. §§ 1401 et seq. (Docket Nos. 151, 294 and 318).

I. RELEVANT FACTUAL & PROCEDURAL HISTORY
Rather than repeating the set of facts that pertain to the
instant case in their entirety, the Court hereby ACCEPTS, ADOPTS
AND INCORPORATES by reference the Magistrate Judge’s findings of
fact in toto.2
The Court referred the three pending motions for summary
judgment (Docket Nos. 336, 339 and 341)3 to Magistrate Judge Bruce
J. McGiverin on September 7, 2011 (Docket No. 343), and he entered
his Report and Recommendation (Docket No. 409) on February 15,
2012. In his Report and Recommendation, the Magistrate recommended
that the motions for summary judgment be granted as the Magistrate
was of the opinion that Plaintiffs failed to establish an issue of
material

fact

of

copyright

infringement.

Specifically,

the

Magistrate recommended that Plaintiffs’ motion to reinstate their
previously dismissed procedural due process claims regarding the
UPR administrative proceedings be denied as Plaintiffs have failed
to present new facts or evidence that address “the court’s finding
that the availability of interlocutory review in Puerto Rico courts
precludes

2

application

of

the

Gibson

exception

to

Younger

Plaintiffs object to three of Magistrate Judge McGiverin’s findings of fact which will be addressed infra.

3

The members of the CHE, including former Interim Executive Director David Baez (collectively, “CHE
Defendants”) moved for summary judgment on September 6, 2011 (Docket No. 336). UPR President Miguel
Muñoz, UPR Chancellor Ana Guadalupe, Faculty of Natural Sciences Dean Brad Weiner and Environmental
Sciences Program Director Rafael Ríos in their official capacities (collectively, “UPR Defendants”) moved for
summary judgment on the same date (Docket No. 339). Similarly, the members of UPR’s Board of Trustees also
moved for summary judgment on even date (Docket No. 341).

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abstention.” (Docket No. 409, page 10).
Regarding

the CHE

Defendants,

Magistrate

Judge

McGiverin

determined that Plaintiffs’ case against them is not moot and that
the evidence presented is insufficient to determine whether there
was a knowing and voluntary waiver or release.

The Magistrate

Judge also determined that there was a dearth of evidence to
support a finding of infringement by the CHE Defendants.
The

Magistrate

Judge

additionally

ascertained

that

“the

uncontested facts do not resolve whether there is sufficient
privity among each of the defendants and UPR, so a finding that UPR
would be entitled to judgment on preclusion grounds would not
necessarily dispose of the case.”4 (Docket No. 409, page 17).
As to whether UPR holds the Proposal’s copyright as a work for
hire,

the

Magistrate

Judge

first

concluded

that

Plaintiffs’

copyright certificate does not enjoy prima facie evidentiary weight
because the certificate was made more than five years after the
stated date of publication; therefore, the Magistrate concluded
that it fails as prima facie evidence under 17 U.S.C. §410(c).

4

See

On February 23, 2012, UPR Defendants filed a limited objection to this finding of the Magistrate Judge’s
Report and Recommendation (Docket No. 411). UPR Defendants filed this limited objection “solely for the
purposes of preserving [the preclusion argument] before this Court and the Court of Appeals for the First Circuit, if
need be.” (Docket No. 411, page 6). The Court notes UPR Defendants’s objection, but does not further address this
contention as the Report and Recommendation, and the instant Opinion and Order adopting the Report and
Recommendation, resolves UPR Defendants’ pending motion for summary judgment favorably to the UPR
Defendants on other grounds. Thus, any further analysis of the preclusion argument is rendered merely academic at
this juncture.
The Court additionally clarifies that this argument is properly developed and, accordingly, does not fall
under the aegis of an underdeveloped, and thus waived, argument pursuant to United States v. Zannino, 895 F.2d 1,
17 (1st Cir. 1990).

-3-

17 U.S.C. §410(c)(“In any judicial proceedings the certificate of
a

registration

made

before

or

within

five

years

after

first

publication of the work shall constitute prima facie evidence of
the validity of the copyright and of the facts stated in the
certificate.”).
Second, Magistrate Judge McGiverin resolved that the drafting
of the Proposal was within the scope of Plaintiffs’ employment as
all three of the Second Restatement’s elements were met.5

The

Magistrate determined that there was no evidence which a reasonable
jury could find that creating degree programs was not the kind of
work

Plaintiffs

were

employed

to

perform;

that

UPR

did

not

authorize Plaintiffs to work from home or on weekends or holidays;
that there is uncontroverted evidence that Plaintiffs intended to
advance UPR’s interests with the Proposal by specifically targeting
the UPR Río Piedras and that Plaintiffs designed the Proposal with
the intent to submit it to the UPR and CHE approval process and
that Plaintiff so submitted the Proposal.

Thus, the Magistrate

opined that the Proposal was within Plaintiffs’ scope of employment
and that the work for hire doctrine vests the copyrights with UPR.
Third,

Magistrate

Judge

McGiverin

ascertained

UPR’s

intellectual property policy (the “IP policy”) does not alter the
ownership of the Proposal even assuming that the Proposal was

5

“To fall within the scope of employment, an employee’s conduct must (1) be ‘of the kind [the employee] is
employed to perform’; (2) occur ‘substantially within authorized time and space limits’; and (3) be ‘actuated, at least
in part, by a purpose to serve the master.’” (Docket No. 409, page 19, citing the Restatement (Second) of Agency §
228).
-4-

created under the work for hire doctrine.

Under 17 U.S.C. 201(b),

the authorship of a work for hire may be altered by an express
written agreement signed by both parties.

Here, the Magistrate

determined that there is no evidence of any signed agreement
between Plaintiffs and UPR nor evidence to infer the existence of
such an agreement. Thus, the Magistrate Judge recommended that the
IP Policy does not alter the work for hire determination pursuant
to 17 U.S.C. 201(b).
Finally, the Magistrate Judge concluded that Plaintiffs’ last
contention that Defendants lack standing to challenge Plaintiffs’
authorship of the Proposal is without merit as “the plaintiffs have
not set forth any substantial argument for why the defendants
should not be allowed to challenge their authorship, and because no
such general rule would apply even if it exists, defendants are
entitled to summary judgment.” (Docket No. 409, page 26).
On February 23, 2012, Plaintiffs objected to the Magistrate
Judge’s Report and Recommendation (Docket No. 410).

Therein,

Plaintiffs made three objections to the Magistrate’s findings of
fact: (1) “[t]he General Regulations charge faculties with the duty
to propose new academic programs;” (2) “[t]he proposal is specific
to the UPR Río Piedras Campus;” (3) “Plaintiffs were aware of this
process, and that the reviewers could demand that certain changes
be made as a condition for approval.”
4)(emphasis in the original).

-5-

(Docket No. 410, pages 3-

Plaintiffs also challenge the Magistrate’s determination that
the copyright certificate does not enjoy prima facie evidentiary
weight.

Plaintiffs assert that they initially erroneously wrote

the date in which they submitted the original Proposal to Brad
Weiner as the date of publication and that the original Proposal
has, in fact, never been published.
Plaintiffs also argue that the Magistrate Judge incorrectly
advised that the creation of the Proposal was within Plaintiffs’
scope of employment.

Specifically, Plaintiffs argue that there is

no written agreement between Plaintiffs and UPR describing their
duties and the ordinary duties of a professor and a program
director do not include designing and creating a new program of
study.

Plaintiffs also advance that they had other full time

obligations and that the creation of the Proposal was not done with
any guidance from UPR nor were they granted release time or extra
compensation for drafting the Proposal which is customary for UPR
when a project exceeds 37.5 hours per week.

Plaintiffs also posit

that a professor’s and a program director’s flexible schedule does
not mean that specific work that was preformed during vacation time
and weekends was within “authorized time and space limits.”
Plaintiffs further contend that the Magistrate erred by not
including in his analysis the right of the employer to direct and
supervise the manner in which the specific work at issue was
preformed.

Plaintiffs invite the Court to analyze the first two

elements, the hiring party’s right to control the manner and means
-6-

by which the product is accomplished and (2) the skill required,
from Ulloa v. Universal Music & Video Distrib. Corp., 303 F. Supp.
2d 409, 414-415 (S.D.N.Y. 2004).
Finally,

Plaintiffs

find

fault

with

the

Magistrate’s

conclusion that the IP Policy does not constitute a valid transfer
of ownership under the Copyright Act as the IP policy fulfills as
the requisite requirements.
On March 5, 2012, UPR Defendants responded to Plaintiffs’
objections to the Magistrate’s Report and Recommendation (Docket
No. 418).

UPR Defendants advance, inter alia, that Plaintiffs’

three alleged factual errors of the Magistrate should not be
considered as Plaintiffs failed to admit, qualify or deny UPR
Defendants’

Statement

of

Uncontested

Material

Facts

and

that

Plaintiffs failed to cite to any evidence in the record supporting
their

contentions.

Additionally,

UPR

Defendants

assert

that

“[a]llowing the Plaintiffs to include new arguments or new evidence
at this point would defeat the purpose of the Magistrate’s Act [as
Magistrate

Judge

McGiverin

already

relied

on

UPR

Defendants’

Statement of Uncontested Material Facts when rendering his Report
and Recommendation] and would [therefore] result in a colossal
waste of judicial resources.” (Docket No. 418, page 4).
Relating to the Plaintiffs’ objections as to the ownership of
the Proposal, UPR Defendants argue that the Court should not
consider Plaintiffs’

“newly”

discovered

-7-

second

certificate

of

registration as Plaintiffs had not previously put forth this
certificate

even

though

it

was

obviously

available

to

them.

Furthermore, UPR Defendants advance that “because Plaintiffs failed
to make any developed argument as to the weight to be given the
Certificate of Registration, [the Magistrate did] not apply any
burden shifting analysis. This in and of itself forecloses the
argument that Plaintiffs are now attempting at the objections
phase.” (Docket No. 418,
entertain

Plaintiffs’

page 9).
objection

Yet, even were the Court to
and

find

that

the

second

certificate of registration constituted prima facie evidence of
ownership, that argument is unavailing for Plaintiffs as UPR
Defendants “have amply demonstrated that Plaintiffs have no valid
copyright over the Proposal because the copyright owner is the
U.P.R.” Id.
UPR Defendants further aver that creating a new academic
program is similar to the kind of work that a professor and program
director would perform and that it is within the ultimate objective
goal

of

UPR;

employment.
provided

hence,

it

is

within

the

scope

of

Plaintiffs’

Further, UPR Defendants note that Molinelli was

release

time

for

the

performance

of

his

academic-

administrative duties and was paid an additional sum for performing
these duties.
does

not

Finally, UPR Defendants posit that UPR’s IP policy

support

Plaintiffs’

contention

that

UPR

transferred

ownership of the Proposal as the IP Policy is not a writing signed
by both parties.
-8-

On July 11, 2012, the Court held a hearing on the pending
motions for summary judgment and the Magistrate Judge’s Report and
Recommendation (Docket No. 438).
II. REFERRAL TO THE MAGISTRATE JUDGE
The Court may refer dispositive motions to a United States
Magistrate Judge for a Report and Recommendation pursuant to 28
U.S.C. §636(b)(1)(B).

See also FED. R. CIV. P. 72(b); see also

Local Rule 72(a); see also Matthews v. Weber, 423 U.S. 261, 96
S.Ct. 549 (1976).

An adversely affected party may contest the

Magistrate’s Report and Recommendation by filing its objections.
FED. R. CIV. P. 72(b).

Moreover, 28 U.S.C. §636(b)(1), in pertinent

part, provides that
any
party
may
serve
and
file
written
objections to such proposed findings and
recommendations as provided by rules of court.
A judge of the court shall make a de novo
determination of those portions of the report
or
specified
proposed
findings
or
recommendations to which objection is made. A
judge of the court may accept, reject, or
modify, in whole or in part, the findings or
recommendations made by the magistrate.
“Absent objection, . . . [a] district court ha[s] a right to assume
that

[the

affected

party]

agree[s]

to

the

magistrate’s

recommendation.” Templeman v. Chris Craft Corp., 770 F.2d 245, 247
(1st Cir. 1985), cert denied, 474 U.S. 1021 (1985).

Additionally,

“failure to raise objections to the Report and Recommendation
waives that party’s right to review in the district court and those
claims not preserved by such objections are precluded upon appeal.”
-9-

Davet v. Maccarone, 973 F.2d 22, 30-31 (1st Cir. 1992); see also
Henley Drilling Co. v. McGee, 36 F.3d 143, 150-51 (1st Cir. 1994)
(holding that objections are required when challenging findings
actually set out in a magistrate’s recommendation, as well as the
magistrate’s failure to make additional findings); see also Lewry
v. Town of Standish, 984 F.2d 25, 27 (1st Cir. 1993)(stating that
“[o]bjection

to

a

magistrate’s

report

preserves

only

those

objections that are specified”); see also Borden v. Sec. of H.H.S.,
836 F.2d 4, 6 (1st Cir. 1987)(holding that appellant was entitled
to a de novo review, “however he was not entitled to a de novo
review of an argument never raised”).
The Court, in order to accept unopposed portions of the
Magistrate Judge’s Report and Recommendation, needs only satisfy
itself that there is no “plain error” on the face of the record.
See Douglass v. United Servs. Auto, Ass’n, 79 F.3d 1415, 1419 (5th
Cir.

1996)(en

banc)(extending

the

deferential

“plain

error”

standard of review to the un-objected to legal conclusions of a
magistrate judge); see also Nettles v. Wainwright, 677 F.2d 404,
410

(5th

Cir.

1982)(en

banc)(appeal

from

district

court’s

acceptance of un-objected to findings of magistrate judge reviewed
for “plain error”); see also Nogueras-Cartagena v. United States,
172 F.Supp. 2d 296, 305 (D.P.R. 2001)(finding that the “Court
reviews [unopposed]
ascertain

whether

Magistrate’s

or

not

the

Report

and

Magistrate’s

-10-

Recommendation
recommendation

to
was

clearly erroneous”)(adopting the Advisory Committee note regarding
FED.R.CIV.P. 72(b)); see also Garcia v. I.N.S., 733 F.Supp. 1554,
1555 (M.D.Pa. 1990)(finding that “when no objections are filed, the
district court need only review the record for plain error”).
In the instant case, Plaintiffs have filed objections to the
Magistrate Judge’s Report and Recommendation (Docket No. 410).
Thus,

the

Court

reviews

the

portions

of

the

Report

and

Recommendation to which objections were made de novo and reviews
all other unobjected-to portions only for plain error.
III. SUMMARY JUDGMENT
Rule 56 of the Federal Rules of Civil Procedure provides that
summary

judgment

should

be

entered

where

“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 judgment as a matter of law.”

FED. R. CIV. P. 56(c); see Celotex

Corp. v. Catrett, 477 U.S. 317, 324-325 (1986).

Pursuant to the

clear language of the rule, the moving party bears a two-fold
burden: it must show that there is “no genuine issue as to any
material facts;” as well as that it is “entitled to judgment as a
matter of law.”

Veda-Rodriguez v. Puerto Rico, 110 F.3d 174, 179

(1st Cir. 1997).

A fact is “material” where it has the potential

to change the outcome of the suit under governing law.
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).

-11-

See
A fact

is “genuine” where a reasonable jury could return a verdict for the
nonmoving party based on the evidence.

Id.

Thus, it is well

settled that “the mere existence of a scintilla of evidence” is
insufficient to defeat a properly supported motion for summary
judgment.

Id.

After the moving party meets this burden, the onus shifts to
the non-moving party to show that there still exists “a trial
worthy issue as to some material facts.”

Cortes-Irizarry v.

Corporacion Insular, 11 F.3d 184, 187 (1st Cir. 1997).
At the summary judgment stage, the trial court examines the
record “in the light most flattering to the non-movant and indulges
in all reasonable references in that party’s favor.

Only if the

record, viewed in this manner and without regard to credibility
determinations, reveals no genuine issue as to any material fact
may the court enter summary judgment.”
F.3d 957, 959-60 (1st Cir. 1997).6
the weighing

of

the

evidence,

and

Cadle Co. v. Hayes, 116

“Credibility determinations,
the drawing

of legitimate

inferences from the facts are jury functions, not those of a
judge.”

Reeves v. Sanderson Plumbing Prod., 530 U.S. 133, 150

(2000)(quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 25051, 106 S.Ct. 2505 (1986)).

Summary judgment is inappropriate

where there are issues of motive and intent as related to material

6

Whether a motion is formally opposed or unopposed, the Court is still obligated to resolve the motion on
the merits. See Cordi-Allen v. Halloran, 470 F.3d 25, 28 (1st Cir. 2006)(noting that a district court is bound to a
review an unopposed motion for summary judgment on the merits).

-12-

facts.

See Poller v. Columbia Broad. Sys., 369 U.S. 470, 473, 82

S.Ct. 486 (1962)(summary judgment is to be issued “sparingly” in
litigation “where motive and intent play leading roles”); see also
Pullman-Standard v. Swint, 456 U.S. 273, 288, 102 S.Ct. 1781
(1982)(“findings as to design, motive and intent with which men act
[are] peculiarly factual issues for the trier of fact.”); see also
Dominguez-Cruz v. Suttle Caribe, Inc., 202 F.3d 424, 433 (1st Cir.
2000)(finding that “determinations of motive and intent . . . are
questions better suited for the jury”).

“As we have said many

times, summary judgment is not a substitute for the trial of
disputed factual issues.”

Rodríguez v. Municipality of San Juan,

659 F.3d 168, 178-179 (1st Cir. 2011)(internal quotations and
citations omitted).
where

the

Conversely, summary judgment is appropriate

nonmoving

party

rests

solely

upon

“conclusory

allegations, improbable inferences and unsupported speculation.”
Ayala-Gerena v. Bristol Myers-Squibb Co., 85 F.3d 86, 95 (1st Cir.
1996). However, while the Court “draw[s] all reasonable inferences
in the light most favorable to [the non-moving party] . . . we will
not draw unreasonable inferences or credit bald assertions, empty
conclusions or rank conjecture.”
(1st

Cir.

Moreover,

2010)(internal
“we

afford

no

Vera v. McHugh, 622 F.3d 17, 26

quotations
evidentiary

and

citation

weight

to

omitted).
conclusory

allegations, empty rhetoric, unsupported speculation, or evidence
which, in the aggregate, is less than significantly probative.”

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Tropigas De P.R. v. Certain Underwriters at Lloyd’s of London, 637
F.3d 53, 56 (1st Cir. 2011)(internal citations omitted).
Further, the Court will not consider hearsay statements or
allegations presented by parties that do not properly provide
specific reference to the record. See D.P.R. CIV. R. 56(e)(“The
[C]ourt may disregard any statement of fact not supported by a
specific citation to the record material properly considered on
summary judgment.
search

or

The [C]ourt shall have no independent duty to

consider

referenced.”);

any

part

of

the

record

not

specifically

see also Morales v. A.C. Orssleff’s EFTF, 246 F.3d

32, 33 (1st Cir. 2001)(finding that, where a party fails to
buttress factual issues with proper record citations, judgment
against that party may be appropriate);
Inc.,

895

F.2d

46,

50

(1st

Cir.

Garside v. Osco Drug,

1990)(“Hearsay

evidence,

inadmissible at trial, cannot be considered on a motion for summary
judgment.”).7
IV. ANALYSIS
When analyzing a motion for summary judgment, the Court must
view the facts in the light most favorable to the non-moving party,
in this case Plaintiffs. See Vera v. McHugh, 622 F.3d 17, 26 (1st
Cir. 2010); see also Agusty-Reyes v. Dept. of Edu., 601 F.3d 45, 48

7

D.P.R. CIV. R. 56(b), often referred to as the anti-ferret rule, requires the party moving for summary
judgment to submit a “separate, short, and concise statement of material facts, set forth in numbered paragraphs, a s
to which the moving party contends there is no genuine issue of material fact.” Similarly, the non-moving party is
required to submit a counter-statement “admit[ing], deny[ing] or qualify[ing] the facts by reference to each numbered
paragraph in the moving party’s statement of material facts and unless a fact is admitted, shall support each denial or
qualification by record citation.” D.P.R. CIV. R. 56(c).

-14-

(1st Cir. 2010); see also Cadle Co. V, Hayes, 116 F.3d 957, 959-60
(1st Cir. 1997). However, the Court will not “draw unreasonable
inferences or credit bald assertions, empty conclusions, [or] rank
conjecture.” Caban-Hernandez v. Philip Morris USA, Inc., 486 F.3d
1, 8 (1st Cir. 2007) (emphasis in original).

Similarly, “summary

judgment may be appropriate if the non-moving party rests merely
upon conclusory allegations, improbable inferences, and unsupported
speculation.”

Ayala-Gerena, 95 F.3d at 95 (internal quotations

omitted).
Furthermore, the Court will not consider hearsay statements
nor allegations presented by parties that do not properly provide
specific reference to the record.

See Hannon v. Beard, 645 F.3d

45, 49 (1st Cir. 2011) (“It is black-letter law that hearsay
evidence cannot be considered on summary judgment for the truth of
the matter asserted.”) (internal quotation marks omitted); Garside
v. Osco Drug, Inc., 895 F.2d 46, 50 (1st Cir. 1990)(“Hearsay
evidence, inadmissible at trial, cannot be considered on a motion
for summary judgment.”); FED. R. CIV. P. 56(e)(“The court may
disregard
citation

any statement
to

record

of

fact

material

not

properly

supported

by

considered

a

specific

on

summary

judgment. The court shall have no independent duty to search or
consider any part of the record not specifically referenced.”); see
also Morales, 246 F.3d at 33 (finding that, where a party fails to
buttress factual issues with proper record citations, judgment

-15-

against that party may be appropriate).

Keeping these limitations

firmly in mind, the Court proceeds with its analysis.
A. Factual Objections
As stated previously, Plaintiffs made three objections to the
Magistrate’s findings of fact: (1) “[t]he General Regulations
charge faculties with the duty to propose new academic programs;”
(2) “[t]he proposal is specific to the UPR Río Piedras Campus;” (3)
“Plaintiffs were aware of this process, and that the reviewers
could demand that certain changes be made as a condition for
approval.”

(Docket No. 410, pages 3-4)(emphasis in the original).

These facts are properly drawn from UPR Defendants’ Statement
of Uncontested Facts (Docket No. 340), which are properly supported
by the evidence. Plaintiffs did not deny or qualify these facts in
any manner.

Pursuant to Local Rule 56, an opposing statement of

material facts “shall admit, deny or qualify the facts supporting
the motion for summary judgment.” D.P.R. 56(c).

“Unless a fact is

admitted, the opposing statement shall support each denial or
qualification by a record citation as required by this rule.”

Id.

Local Rule 56(e) requires record citations in a “statement of
material facts” to be cited to “the specific page or paragraph of
identified record material supporting the assertion.” L.CV.R. 56(e)
(D.P.R. 2010). “The court may disregard any statement of fact not
supported by a specific citation.” Id. “The purpose of this rule is
to relieve the district court of any responsibility to ferret

-16-

through

the

record

to

discern

whether

any

material

fact

is

genuinely in dispute.” CMI Capital Mkt. Inv., LLC v. Gonzalez-Toro,
520 F.3d 58, 62 (1st Cir. 2008).

When a party fails to oppose a

supporting or opposing statement of material facts, as Plaintiffs
did for the three facts at issue, the Court shall deem the facts as
admitted.

See D.P.R. Civ. R. 56(e).

“[Parties ignore [Local Rule

56] at their own peril,” and that “failure to present a statement
of disputed facts, embroidered with specific citations to the
record, justifies deeming the facts presented in the movant’s
statement of undisputed facts admitted.” Ruiz Rivera v. Riley, 209
F.3d 24, 28 (1st Cir. 2000).
or

qualify

these

facts,

Plaintiffs’ failure to properly deny
much

less

provide

specific

record

citations, ends our inquiry.
However, temporarily setting aside the procedural requirements
of Local Rule 56, for the sake of completeness, we also find that
these objections are without merit.

As to the first fact in

controversy,

“none

Plaintiffs

assert

that

of

the

regulation

specifically describe the duty of creating and developing new
academic programs, but rather ‘participate in planning’ which is
something quite different.” (Docket No. 410, page 3).

Plaintiffs

also point out that “defendant Escalona de Motta herself conceded
that new programs are usually developed by committees, not by
individuals as was the instant case.” (Docket No. 410, pages 3-4).
While the Court appreciates the difference between a duty to
participate in planning and an affirmative duty to create, as well
-17-

as defendant Escalona de Motta’s testimony, these facts were
available to Plaintiffs and not properly placed before Magistrate
Judge McGiverin for his Report and Recommendation.

To permit a

litigant

before

to

present

some

arguments

and

evidence

the

Magistrate Judge and other evidence before the District Court Judge
would result in a waste of judicial resources and render the
Magistrate’s role to be little more than a dress rehearsal.

See

Paterson Leitch Co., Inc. v. Mass. Mun. Wholesale Elec. Co., 840
F.2d 985, 991 (1st Cir. 1988).
As to the second fact, the Court concurs with the Magistrate
that the Proposal is specific to the UPR Río Piedras Campus.
Plaintiffs’ contention that the requirements in Certification 93113 apply to any program submitted to CHE, without regard for the
institution

which

will

implement

the

program,

is

baseless.

Certification 93-113 (Docket No. 340-8) was issued to amend the
entire UPR’s Rules and Guidelines.

The Certification references

the UPR‘s Enabling Act and the UPR‘s internal administrative
structure.

The Certification was issued by the CHE in 1993,

because CHE was the governing body of the UPR at that time.
is

simply

no

evidence,

or

logical

reason,

to

conclude

There
that

Certification 93-113 applies to any institution of higher education
in Puerto Rico.
Finally, as to the third fact, Plaintiffs argue that “they
approved and incorporated only those changes which they deemed
acceptable to the proposal.” (Docket No. 410, page 4).
-18-

However,

this assertion that Plaintiffs only accepted those changes that
they deemed acceptable does not contradict the Magistrate Judge’s
stated conclusion that Plaintiffs were aware of the review process
and that the reviewers could demand that certain changes were made
as a condition for approval. Thus, this final factual objection is
equally devoid of substance.
B. Objections Relating to Copyright Ownership
i) Copyright Certificate
A

certificate

of

copyright

made

within

five

years

of

publication is prima facie evidence of a valid copyright pursuant
to 17 U.S.C. § 410(c).

However, the Magistrate did not grant

Plaintiffs the benefit that their copyright certificate enjoys
prima

facie

evidentiary

weight

as

Plaintiffs

submitted

a

certificate of registration for the Proposal which states that the
Proposal was first published in 2001 while the certificate was
effective in 2007.

As the certificate was made more than five

years after the stated date of publication, and as Plaintiffs did
not discuss the certificate or argue that it should be given any
special evidentiary weight, the Magistrate Judge did not grant
Plaintiffs the statutory presumption.
Plaintiffs now advances that there is a second, additional
certificate of registration for the Proposal (Docket No. 410-1),
which corrects the previous certificate and asserts that there is
no date of publication.

-19-

Under

28

U.S.C.

§

636(b),

a

district

court

reviewing

a

magistrate judge’s report and recommendation has discretion whether
to receive further evidence:

A judge of the court shall make a de novo determination
of those portions of the report or specified proposed
findings or recommendations to which objection is made.
A judge of the court may accept, reject, or modify, in
whole or in part, the findings or recommendations made by
the magistrate judge. The judge may also receive further
evidence or recommit the matter to the magistrate judge
with instructions.
28 U.S.C. § 636(b) (emphasis added).
the

Court

hereby

declines

to

Exercising our discretion,

consider

Plaintiffs’

second

certificate of registration. See Jasty v. Wright Med. Tech., Inc.,
528 F.3d 28, 33-34 (1st Cir. 2008).
issued

on

February

of

2009

and

The second certificate was
was

obviously

available

to

Plaintiffs prior to when the Court referred pending motions to the
Magistrate Judge and prior to when the Magistrate Judge issued his
Report and Recommendation.

Were the Court to now consider such

evidence that was not first presented to the Magistrate Judge prior
to him issuing his Report and Recommendation, the Court would be
allowing the parties to the proceedings before the Magistrate Judge
as a “mere dress rehearsal,” reserving their critical claims and
evidence for the main act before the District Judge.

See Augusta

News Co. v. Hudson News Co., 269 F.3d 41, 46 n.5 (1st Cir. 2001);
Paterson-Leitch Co. v. Mass. Mun. Wholesale Elec. Co., 840 F.2d

-20-

985, 991 (1st Cir. 1988)(“Systemic efficiencies would be frustrated
and the magistrate’s role reduced to that of a mere dress rehearser
if a party were allowed to feint and weave at the initial hearing,
and save its knockout punch for the second round. In addition, it
would be fundamentally unfair to permit a litigant to set its case
in motion before the magistrate, wait to see which way the wind was
blowing, and -- having received an unfavorable recommendation -shift gears before the district judge.”); see also Barden v. Sec’y
of Health & Human Servs., 836 F.2d 4, 6 (1st Cir. 1987) (“Parties
must take before the magistrate, ‘not only their “best shot” but
all of their shots.’”) (quoting Singh v. Superintending Sch. Comm.,
593 F. Supp. 1315, 1318 (D. Me. 1984)).
At any rate, “[t]he presumption flowing from § 410(c) is not
an insurmountable one, and merely shifts to the defendant the
burden to prove the invalidity of the plaintiff’s copyrights.”
Masquerade Novelty v. Unique Indus., 912 F.2d 663, 668 (3d Cir.
1990)(citation omitted).

Thus, even without the benefit of the

presumption, Plaintiffs still have been afforded ample opportunity
to make their case squarely on the merits.
ii) Scope of Employment
Plaintiffs object to the Magistrate Judge’s analysis and
ultimate conclusion that drafting the Proposal was within the scope
of Plaintiffs’ employment.

The Magistrate Judge stated that

“[t]here is simply no evidence from which a jury could conclude
that creating degree programs was not the kind of work Bird and
-21-

Molinelli were employed to perform” and that “Plaintiffs have not
established a genuine issue of material fact as to any element of
the work for hire doctrine.” (Docket No. 409, pages 20-21).8
Plaintiffs argue that creating a new graduate program is not
the kind of work that employees in their position traditionally
perform.

Plaintiffs note that there is no written agreement

between them and UPR describing their duties and that the ordinary
duties of a professor and a program director do not include the
design and creation of a new program of study. Further, Plaintiffs
argue that they were not given release time from their work
obligations,

or

extra

compensation,

which

is

customary

when

additional projects exceed the 37.5 hours per week.
As to the second element, Plaintiffs object to the Magistrate
Judge’s conclusion that “plaintiffs provided no evidence . . . from
which a jury could conclude that UPR did not authorize them to work
from home or on weekends or on holidays.”
20).

(Docket No. 409, page

Plaintiffs advance that the fact that a professor’s and a

program director’s schedules are flexible and that they may choose
to perform some of their duties off site and at irregular hours,
does not automatically entail that the specific work was performed
within “authorized time and space limits.”

Plaintiffs further

posit that UPR has failed to demonstrate that the use of vacation

8

The Magistrate Judge utilized the Restatement (Second) of Agency in his scope of employment analysis.
“To fall within the scope of employment, an employee’s conduct must (1) be ‘of the kind [the employee] is employed
to perform’; (2) occur “substantially within authorized time and space limits’; and (3) be ‘actuated, at least in part, by
a purpose to serve the master.’ See Restatement (Second) of Agency § 228.” (Docket No. 409, page 19).

-22-

time in the development of the Proposal was “authorized” by UPR.
Therefore, Plaintiffs assert that a jury could conclude that the
vacation time spent in research and drafting of the Proposal
occurred outside of “authorized” time.
The Court agrees with the Magistrate, upon conducting its own
de novo review, that the work for hire doctrine is applicable and
vests ownership of the Proposal in UPR and that Plaintiffs have not
demonstrated a genuine issue of material fact as to any element of
the work for hire doctrine.

We agree with the Magistrate Judge

that the creation of the Proposal was “of the kind” of work that
Plaintiffs were employed to perform. See Avtec Sys. v. Peiffer, 21
F.3d 568, 571 (4th Cir. 1994).

The drafting of a proposal for a

new academic program, and thereby improving upon the educational
content and offerings of UPR, is the kind of work Plaintiffs were
employed to do as a professor and as a program director.

See Shaul

v. Cherry Valley-Springfield Cent. Sch. Dist., 363 F.3d 177, 186
(2d Cir. 2004)(“It is clear that preparing materials for class was
the kind of work that [Plaintiff] was employed to perform as a
teacher (satisfying the first prong) . . . regardless of his
purported desire to publish the materials.”). The Court finds that
the development of a new course of academic study satisfies the
first

requirement

of

the

Restatement

test

for

a

university

professor and program director because such work falls “within the
ultimate objective of the principal and [is] an act which is not

-23-

unlikely that such a servant might do.”

Miller v. CP Chemicals,

Inc., 808 F. Supp. 1238, 1243 (D.S.C. 1992)(citing Restatement
(Second) of Agency § 229 cmt. b).
“When [the first] element of the Restatement test is met,
courts have tended not to grant employees authorship rights solely
on the basis that the work was done at home on off-hours.”
21 F.3d at 571.9

Avtec,

Thus, while “Molinelli testified that he used

spare time, including vacations and holidays, to work on the
proposal,” (Docket No. 409, page 5), the time, place and manner of
the creation of the Proposal is afforded less weight when the first
element of the Restatement test has been satisfied.10 See U.S. Auto
Parts Network, Inc. v. Parts Geek, LLC, 2012 U.S. App. LEXIS 18505,
at *20-21 (9th Cir. Aug. 31, 2012)(“when there is evidence that the
employee’s

creation

was

the

‘kind

of

work’

the

employee

was

employed to perform, courts have tended to put little weight on
evidence that ‘the work was done at home on off-hours.’”)(citing
Avtec, 21 F.3d at 571-72); Miller, 808 F. Supp. at 1244 n.7 (“When
the driving force behind the creation of the work is directly
related to a specific product of the employer and the employee’s

9

The Avtec Court cites the following cases: Miller, 808 F. Supp. at 1242-44 (computer program prepared at
home during off-hours, without direction or extra compensation from employer held work-for-hire), appeal
dismissed, No. 93-1045 (4th Cir. April 13, 1993); Marshall v. Miles Lab., Inc., 647 F. Supp. 1326, 1330 (N.D. Ind.
1986) (same, regarding article written for publication in scientific journal); In re Simplified Info. Sys., Inc., 89
Bankr. 538, 542 (W.D. Pa. 1988) (same, regarding computer software).
10

At any rate, the Court further notes that, as stated in UPR’s uncontroverted Statement of Uncontested
Facts, (Docket No. 340, page 2), Molinelli was paid a monthly bonus and was also given a partial release of his
academic load for his administrative duties as Director of the Environmental Sciences Program.

-24-

job responsibilities, and for the primary benefit of the employer,
such work may be within the scope of employment.”); Marshall v.
Miles Laboratories, Inc., 647 F. Supp. 1326, 1330 (N.D. Ind. 1986)
(“Neither case law nor the legislative history suggests that a
person can avoid the ‘work made for hire’ doctrine merely by
preparing the work during non-working hours or in a facility not
controlled by the employer.”); McKenna v. Lee, 318 F. Supp. 2d 296,
301 (E.D.N.C. 2002)(“the fact that a work is created off-site,
during non-working hours does not automatically remove the work
from the scope of employment.”).
Finally, Plaintiffs also object to the Magistrate Judge’s
scope of employment analysis on the basis that the Magistrate Judge
omitted the control and skill factors.
without merit.

Plaintiffs’ objection is

While these are factors in a

work for hire

analysis, they are utilized to determine whether an employment
relationship exists.

As Plaintiffs have admitted that they are

employees of UPR (Docket No. 362, page 14), these factors are not
relevant

to

the

instant

inquiry.

See

Cmty.

for

Creative

Non-Violence v. Reid, 490 U.S. 730, 751 (1989)(“In determining
whether a hired party is an employee under the general common law
of agency, we consider the hiring party’s right to control the
manner and means by which the product is accomplished. Among the
other factors relevant to this inquiry are the skill required . .
. .”); Restatement (Second) of Agency § 220(1); see also Drescher
v. Shatkin, 280 F.3d 201, 205 (2d Cir. 2002)(“We have often applied
-25-

[the Reid] factors in deciding whether a person is an employee or
a non-employee independent contractor.”).
iii) UPR’s Intellectual Property Policy
Finally, Plaintiffs argue that even if the work for hire
doctrine vests ownership of the Proposal in UPR, UPR’s IP policy
constitutes a valid transfer of ownership to Plaintiffs.

Thus,

Plaintiffs object to Magistrate Judge McGiverin’s conclusion that
“defendants have demonstrated a lack of evidence that the UPR IP
policy alters work for hire under 17 U.S.C. § 201, and plaintiffs
have not met their burden of showing a triable issue of fact on
this question.” (Docket No. 409, page 24).
Plaintiffs assert that the UPR’s IP Policy constitutes a
transfer of ownership of the Proposal as the IP Policy fulfills the
Copyright Act requirements under §204(a)11 because the IP Policy is
a written instrument executed by the UPR.

Therefore, Plaintiffs

advance that, UPR, as the owner of the Proposal, was entitled to,
and did, transfer the copyrights to Plaintiffs.
However, if the work is made for hire, as in the instant
matter, the Copyright Act states that “the employer or other person
for whom the work was prepared is considered the author . . . and,
unless the parties have expressly agreed otherwise in a written
instrument signed by them, owns all of the rights comprised in the

11

That provision of the Copyright Act provides that “[a] transfer of copyright ownership . . . is not valid
unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner
of the rights conveyed or such owner's duly authorized agent.” 17 U.S.C. § 204(a).

-26-

copyright.”

17

U.S.C.

§

201(b).

Thus,

in

work

for

hire

situations, a written instrument signed by both parties is required
to create a valid transfer.

Plaintiffs rely on the more general §

204(a), which only requires the writing to be signed by one party,
the transferor; however, this reliance is misplaced as the more
specific § 201(b) is the applicable provision in the work for hire
context.

See 1 Melville B. Nimmer and David Nimmer, Nimmer on

Copyrights, §10.03[A][6], (“for the employer to transfer copyright
ownership of the work for hire to the employee requires compliance
with the specialized provisions of the Act [referring in a footnote
to §201(b)] applicable to works for hire rather than the general
provisions currently under discussion [referring in a footnote to
§204(a)].”).

The IP Policy is unavailing for Plaintiffs as it is

executed only by one party, UPR Defendants/the employer, and not by
both UPR Defendants and Plaintiffs.
Even if the IP Policy was signed by Plaintiffs however, the
policy is so broad that it would fail to constitute an express
agreement whereby the employer knowingly and voluntarily consented
to transfer a property right.

See Manning v. Board of Trustees,

109 F. Supp. 2d 976, 981 (C.D. Ill. 2000) (“An agreement altering
the

statutory

presumption

under

the

Copyright

Act

must

be

express.”)(citing Baltimore Orioles, Inc. v. Major League Baseball
Players Ass’n, 805 F.2d 663, 672 (7th Cir. 1986)); Rouse v. Walter
& Assocs., L.L.C., 513 F. Supp. 2d 1041, 1063-64 (S.D. Iowa 2007);

-27-

(“An

employee

policy

is

insufficient

to

alter

the

statutory

presumption under the Copyright Act.”); Foraste v. Brown Univ., 248
F.

Supp.

2d

71,

81

(D.R.I.

2003)

(“The

Policy

[relating

to

copyrights] is patently inadequate to overcome the presumption of
Brown’s ownership under the work made for hire doctrine. ”). Here,
the IP Policy does not mention the Plaintiffs or the Proposal or
references any type of negotiation and consideration given for the
bargain of the supposed transfer.

Indeed, these specifics must be

lacking as the IP Policy was issued in 1993 whereas the Proposal
was drafted in 2001.
As Plaintiffs have not supplied a signed agreement between UPR
and Plaintiffs as required by § 201(b), nor pointed to any evidence
to infer the existence of such an agreement, the Court finds that
Plaintiffs’ argument that UPR transferred the copyrights in the
Proposal to Plaintiffs fails as a matter of law.
C. Un-objected to Portions
After Plaintiffs’ comprehensive objections, there is little
left in the Report and Recommendation that the Court has not
reviewed de novo.

However, the Court notes briefly that it has

found no plain error in the remaining portions of the Magistrate
Judge’s Report and Recommendation.

Specifically, as to the third

element of the Restatement test, the Court finds no plain error
with the Magistrate Judge’s assessment that Plaintiffs had the
intent to further UPR’s interest as there is uncontested evidence

-28-

that the Proposal specifically targets UPR Río Piedras; that
Plaintiffs designed the Proposal with the intent to submit it to
the UPR and CHE approval process; and that Plaintiffs indeed
submitted the Proposal for approval.

Additionally, the Court

concurs with the Magistrate’s recommendation that UPR has standing
to challenge Plaintiffs’ authorship of the Proposal.
V. CONCLUSION
For the reasons elucidated above, the Court determines that
Magistrate Judge McGiverin’s Report and Recommendation (Docket No.
409) contains no plain error as to the unobjected-to portions and
that upon a de novo review of the objected-to portions, the Court
reaches the same conclusions as the Magistrate.

Therefore, the

Court ADOPTS the Report and Recommendation IN TOTO and GRANTS
Defendants’ Motion for Summary Judgment (Docket Nos. 336, 339 and
341).12

Finding no viable claims of copyright infringement, the

Court hereby DISMISSES these causes of action WITH PREJUDICE.
Judgment shall be entered accordingly.
IT IS SO ORDERED.
In San Juan, Puerto Rico this 30th day of September, 2012.
/s/ DANIEL R. DOMÍNGUEZ
DANIEL R. DOMÍNGUEZ

12

“Where, as here, a [Magistrate] has produced a first-rate work product, a reviewing tribunal should
hesitate to wax longiloquence simply to hear its own words resonate.” In re San Juan Dupont Plaza Hotel Fire Litig.,
989 F. 2d 36, 38 (1st Cir. 1993). “The Court need not go further for it refuses to write ‘at length to no other end
than to hear its own words resonate.’” Vega-Morales v. Commissioner of Social Security, 380 F. Supp. 2d 54, 60
(2005)(quoting Lawton v. State Mut. Life Assu. Co. of Am., 101 F. 3d 218, 220 (1st Cir. 1996).

-29-

U.S. District Judge

-30-