Hacienda Records, LP v. Ramos
Filing
201
MEMORANDUM OPINION AND ORDER granting 183 MOTION for Summary Judgment on Its Counterclaim, granting in part and denying in part 186 MOTION to Strike 183 MOTION for Summary Judgment on Its Counterclaim Declaration of R ick Garcia 183-1, denying as moot 184 EMERGENCY MOTION MOTION to Compel Discovery Responses and for Protection, denying 189 MOTION to Strike the Expert Report of Edward Z. Fair Submitted with Response to Hacienda's Motion for Summary Judgment on Its Counterclaim [Doc. 187-2] (Signed by Judge Nelva Gonzales Ramos) Parties notified.(mserpa, 2)
United States District Court
Southern District of Texas
ENTERED
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF TEXAS
CORPUS CHRISTI DIVISION
HACIENDA RECORDS, LP,
Plaintiff,
v.
RUBEN RAMOS, et al.,
Defendants.
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§
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June 29, 2016
David J. Bradley, Clerk
CIVIL ACTION NO. 2:14-19
MEMORANDUM OPINION & ORDER
Pending before the Court is Hacienda Records, L.P.’s (“Hacienda”) Motion for
Summary Judgment on its Counterclaim (D.E. 183), to which Claimants Ruben Ramos,
Hugo Cesar Guerrero, and Arturo Rene Serrata (collectively “Claimants”) have
responded (D.E. 187) and Hacienda has replied (D.E. 190). For the reasons set forth
below, Hacienda’s motion is GRANTED.
I. Background
The facts giving rise to this litigation, as well as its extensive procedural history,
are set forth at length in the Court’s prior orders granting in part Hacienda’s motion for
judgment on the pleadings and dismissing Claimants Guerrero and Serrata’s claims (D.E.
169) and granting summary judgment in favor of Hacienda on Claimant Ramos’ claims
(D.E. 176). See Hacienda Records v. Ramos, 2015 WL 5732558 (S.D. Tex. Sept. 30,
2015), 2015 WL 6680597 (S.D. Tex. Nov. 2, 2015).
Remaining is Hacienda’s counterclaim for a declaration of ownership of its master
sound recordings and related matters. According to Hacienda, Claimants entered into
various recording agreements with Hacienda dating back to the 1980s, whereby
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Claimants were hired to record vocals onto sound recordings for Hacienda and agreed
that Hacienda would own the master sound recordings to the albums. However,
Claimants now assert that they own the copyrights to Hacienda’s master sound
recordings, and their attorney has improperly deposited with the U.S. Copyright Office
several of Hacienda’s entire master CD compilations, as opposed to a mere sound
recording of Claimants’ voices.
Hacienda now moves for summary judgment on its counterclaim and seeks a
declaratory judgment under 18 U.S.C. § 2201 that: (1) Hacienda owns the copyright to
the master sound recordings and compilations; (2) Claimants and their assigns have no
copyright ownership in the master sound recordings and compilations; and (3) any
copyright registrations by Claimants to Hacienda’s master sound recordings and
compilations are invalid.
II. Summary Judgment Standard
Summary judgment is proper if there is no genuine issue as to any material fact
and the moving party is entitled to judgment as a matter of law. FED. R. CIV. P. 56(c). A
genuine issue exists “if the evidence is such that a reasonable jury could return a verdict
for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
The court must examine “whether the evidence presents a sufficient disagreement to
require submission to a jury or whether it is so one-sided that one party must prevail as a
matter of law.” Id. at 251–52. In making this determination, the court must consider the
record as a whole by reviewing all pleadings, depositions, affidavits, and admissions on
file, and drawing all justifiable inferences in favor of the party opposing the motion.
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Caboni v. Gen. Motors Corp., 278 F.3d 448, 451 (5th Cir. 2002). The court may not
weigh the evidence or evaluate the credibility of witnesses. Id. Furthermore, “affidavits
shall be made on personal knowledge, shall set forth such facts as would be admissible in
evidence, and shall show affirmatively that the affiant is competent to testify to the
matters stated therein.” FED. R. CIV. P. 56(e); see also Cormier v. Pennzoil Exploration &
Prod. Co., 969 F.2d 1559, 1561 (5th Cir. 1992) (per curiam) (refusing to consider
affidavits that relied on hearsay statements); Martin v. John W. Stone Oil Distrib., Inc.,
819 F.2d 547, 549 (5th Cir. 1987) (per curiam) (stating that courts cannot consider
hearsay evidence in affidavits and depositions). Unauthenticated and unverified
documents do not constitute proper summary judgment evidence. King v. Dogan, 31 F.3d
344, 346 (5th Cir. 1994) (per curiam).
The moving party bears the initial burden of showing the absence of a genuine
issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). If the moving
party demonstrates an absence of evidence supporting the nonmoving party’s case, then
the burden shifts to the nonmoving party to come forward with specific facts showing
that a genuine issue for trial does exist. Matsushita Elec. Indus. Co. v. Zenith Radio
Corp., 475 U.S. 574, 587 (1986). To sustain this burden, the nonmoving party cannot rest
on the mere allegations of the pleadings. FED. R. CIV. P. 56(e); Anderson, 477 U.S. at
248. “After the nonmovant has been given an opportunity to raise a genuine factual issue,
if no reasonable juror could find for the nonmovant, summary judgment will be granted.”
Caboni, 278 F.3d at 451. “If reasonable minds could differ as to the import of the
evidence, . . . a verdict should not be directed.” Anderson, 477 U.S. at 250–51. The
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evidence must be evaluated under the summary judgment standard to determine whether
the moving party has shown the absence of a genuine issue of material fact. “[T]he
substantive law will identify which facts are material. Only disputes over facts that might
affect the outcome of the suit under the governing law will properly preclude the entry of
summary judgment.” Id. at 248.
III. Declaratory Judgment Act
The Declaratory Judgment Act has been “repeatedly characterized . . . as ‘an
enabling act, which confers discretion on the courts rather than an absolute right on a
litigant.’” Wilton v. Seven Falls Co., 515 U.S. 277, 287 (1995) (quoting Pub. Serv.
Comm’n of Utah v. Wycoff Co., 344 U.S. 237, 241 (1952)). In analyzing whether to
decide a declaratory judgment action, a court must determine: (1) whether the declaratory
action is justiciable; (2) whether the court has the authority to grant declaratory relief; and
(3) whether to exercise its discretion to decide or dismiss the action. Orix Credit Alliance,
Inc. v. Wolfe, 212 F.3d 891, 895 (5th Cir. 2000). The Fifth Circuit has also identified
seven non-exclusive factors that district courts must consider when deciding whether to
exercise their discretion to decide a declaratory judgment action. St. Paul Ins. Co. v.
Trejo, 39 F.3d 585, 590–91 (5th Cir. 1994). These factors include:
“1) whether there is a pending state action in which all of the matters in
controversy may be fully litigated, 2) whether the plaintiff filed suit in
anticipation of a lawsuit filed by the defendant, 3) whether the plaintiff
engaged in forum shopping in bringing the suit, 4) whether possible
inequities in allowing the declaratory plaintiff to gain precedence in time or
to change forums exist, 5) whether the federal court is a convenient forum
for the parties and witnesses, and 6) whether retaining the lawsuit in federal
court would serve the purposes of judicial economy,” and . . . [7)] whether
the federal court is being called on to construe a state judicial decree
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involving the same parties and entered by the court before whom the
parallel state suit between the same parties is pending.
Id. (quoting Travelers Ins. Co. v. La. Farm Bureau Fed’n, 996 F.2d 774, 778 (5th Cir.
1993)). In Sherwin-Williams, the Fifth Circuit added another factor—the presence of a
federal question—stating that “‘[t]he presence of federal law issues must always be a
major consideration weighing against surrender’ of federal jurisdiction.” Sherwin–
Williams Co. v. Homes County, 343 F.3d 383, 396 (5th Cir. 2003) (quoting Moses H.
Cone Mem’l Hosp. v. Mercury Constr. Corp., 460 U.S. 1, 26 (1983)).
The application of the Trejo factors supports the Court’s retention of this case.
There is no pending parallel state proceeding, and Hacienda’s complaint raises federal
questions, making it appropriate for federal court. While Hacienda did file this lawsuit in
anticipation of litigation by Claimants, “[m]erely filing a declaratory judgment action in
federal court with jurisdiction to hear it, in anticipation of . . . litigation, is not in itself
improper anticipatory litigation . . . .” Sherwin–Williams, 343 F.3d at 391. Indeed, if
Hacienda did not anticipate a lawsuit, its declaratory judgment claim would lack the
immediacy required for the controversy to be justiciable. See Rowan Cos., Inc. v. Griffin,
876 F.2d 26, 28 (5th Cir. 1989) (“A controversy, to be justiciable, must be such that it can
presently be litigated and decided and not hypothetical, conjectural, conditional or based
upon the possibility of a factual situation that may never develop.”) (quoting Brown &
Root, Inc. v. Big Rock Corp., 383 F.2d 662, 665 (5th Cir. 1967)). There is no evidence of
forum shopping, and the Corpus Christi Division appears to be the most convenient
forum, as Hacienda’s principal place of business is in Corpus Christi and two of the five
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Claimants named in Hacienda’s First Amended Complaint reside in the Corpus Christi
Division. Finally, the Court has already ruled on Claimants’ counter-claims and is
intimately familiar with the facts of this case; thus, retaining this lawsuit would serve the
purposes of judicial economy.
Moreover, this district has recognized that “[d]eclaratory judgment is an
appropriate means of determining intellectual property rights when: (1) the party seeking
declaratory judgment has real and reasonable apprehension of litigation; and (2) the party
seeking declaratory judgment has engaged in a course of conduct that brings it into
adversarial dispute with its opponent.” Baisden v. I’m Ready Prods., Inc., 804 F. Supp. 2d
549, 552 (S.D. Tex. 2011) (citing Texas v. West Pub. Co., 882 F.2d 171, 175 (5th Cir.
1989)). “Traditional indicia of an objectively reasonable fear of litigation are direct
threats by the defendant or a history of litigation between the parties.” West Pub., 882
F.2d at 176. As set forth in the Court’s prior orders, Hacienda filed this action in response
to a letter from counsel for Claimants, David Showalter, requesting: copies of contracts
or agreements between Claimant Ramos and Hacienda with respect to certain songs
recorded by Hacienda and sung by Ramos (“Ramos Works”), documents reflecting the
quantities of products manufactured and sold by Hacienda that embody Ramos’ Works,
and any accountings and/or payments owed to Ramos for the exploitation of his Works.
The letter also requested that Hacienda immediately cease and desist from any unlicensed
exploitations of Ramos’ Works. Based on several other lawsuits in the Southern District
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of Texas involving Hacienda and Mr. Showalter,1 Hacienda had an objectively
reasonable apprehension of litigation yet again.
For these reasons, the Court will exercise its discretion to decide this declaratory
judgment action.
IV. Motions to Strike
In its Motion to Strike the Expert Report of Edward Z. Fair (D.E. 189), Hacienda
complains that Mr. Fair’s report: is unreliable, immaterial, impertinent, and irrelevant;
provides nothing more than improper and erroneous legal opinions; does not consider the
written copyright assignment agreements in reaching the legal conclusion that Hacienda
does not have any copyright ownership in the sound recordings; and is inadmissible
hearsay. The Court finds that, by training and experience, Mr. Fair is qualified as an
expert in the music industry. Hacienda’s objections go more to the weight that Mr. Fair’s
report should be given than to his qualification as an expert, and “‘[a]s a general rule,
questions relating to the bases and sources of an expert’s opinion affect the weight to be
assigned that opinion rather than its admissibility and should be left for the [factfinder’s]
consideration.’” United States v. 14.38 Acres of Land, More or Less Sit. in Leflore
County, Miss., 80 F.3d 1074, 1077 (5th Cir. 1996) (quoting Viterbo v. Dow Chem. Co.,
826 F.2d 420, 422 (5th Cir. 1987)). Thus, the Court finds that Mr. Fair’s report should not
be stricken, but should be considered and weighed accordingly.
1. See Guzman v. Hacienda Records & Recording Studio, Inc., Civil Action No. 6:12-42 (S.D. Tex. –
Victoria); Tempest Publishing, Inc. v. Hacienda Records & Recording Studio, Inc., Civil Action No. 4:12-736 (S.D.
Tex. – Houston); Sanchez v. Hacienda Records & Recording Studio, Inc., Civil Action 4:11-3855 (S.D. Tex –
Houston). See also Guerrero v. Martinez, Civil Action No. 4:11-1774 (S.D. Tex. – Houston); Guajardo v. Freddie
Records, Inc., Civil Action No. 4:10-2024 (S.D. Tex. – Houston); Sanchez v. Freddie Records, Civil Action No.
4:10-2995 (S.D. Tex. – Houston).
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Next, Claimants move to strike Hacienda’s motion for summary judgment in its
entirely for failing to abide by the 25-page limitation set forth in the Court’s Amended
Scheduling Order. The Court will not strike Hacienda’s 26-page motion, but will
disregard page 26.
In their Motion to Strike the Declaration of Rick Garcia (D.E. 186), Claimants
similarly complain that the Garcia Declaration exceeds 25 pages, arguing that “Hacienda
cannot use the Garcia Declaration as a source of additional briefing—either in an effort to
skirt the mandatory page limitations, or otherwise.” D.E. 186, p. 2. This objection is
without merit; the declaration is not a legal memorandum, but is instead summary
judgment evidence, on which there are no page limitations. Claimants further complain
that rather than provide a statement of facts based on his personal knowledge, Mr. Garcia
improperly offers legal arguments and conclusions. The Court agrees that Mr. Garcia has
offered numerous legal conclusions, and those portions of his declaration will be
disregarded; however, to the extent the Court has regarded factual portions of the Garcia
Declaration as relevant, admissible, and necessary to the resolution of particular summary
judgment issues, the Court will consider this evidence. See Lee v. Nat’l Life Assurance
Co., 632 F.2d 524, 529 (5th Cir. 1980) (“The rule is settled that on a motion for summary
judgment a court will disregard only the inadmissible portions of a challenged affidavit
offered in support of or opposition to the motion and will consider the admissible
portions in determining whether to grant or deny the motion.”). Moreover, the Court does
not find Mr. Garcia’s declaration to be inconsistent with his deposition testimony.
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Finally, the Court notes that, in support of their response to Hacienda’s current
motion for summary judgment, Claimants “adopt and incorporate [Ruben Ramos’
Response to Motion for Summary Judgment (Doc. No. 99), Hugo Guerrero’s Response to
Motion for Summary Judgment (Doc. No. 101), and Arturo Serrata’s Response to Motion
for Summary Judgment (Doc. No. 104)] as though fully set forth herein.” D.E. 187, p. 5.
These memoranda total 96 pages in length—nearly four times the limitation set forth by
the Court. Claimants may not rely on their responses to Hacienda’s prior motions for
partial summary judgment as a source of additional briefing, either in an effort to skirt the
mandatory page limitations, or otherwise. It is also not the Court’s responsibility to ferret
out Claimants’ response to Hacienda’s current motion for summary judgment by piecing
together these various memoranda. Accordingly, only Claimants’ arguments contained
within D.E. 187 will be considered.
V. Analysis
The master sound recordings that Claimants claim to own, for which they obtained
copyright registrations, are as follows:
Ruben Ramos
HAC 8207 – 15 Hits
SC 178 – 20 Hits de los Meros Leones
HAC 7579 – Back to Back Again!
HAC 7578 – Lo Pobre Que Soy
HAC 7684 – Medley of 34 Golden Hits
ZML-80005 – El Gato Negro y Paloma RR
Hugo Guerrero
HAC-8357 – Hugo Guerrero Y La ConnXcion
HAC-7610 – La Charanga de Nuevo
HAC-7612 – El Mero Fandango
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Rene Serrata
HAC 7673 – Tu Vestido Blanco
HAC-7314 – Bobby Naranjo and Rene Serrata, Special Edition
HAC-7650 – Que Sera de Mi
HAC-7511 – Los Buenos Hnos. Serrata, Como Te Llamas Tu
A. Whether Hacienda owns the copyright to the master sound recordings and
compilations.
Hacienda moves for a declaration that it owns the copyright to the master sound
recordings and compilations listed above based on: (1) the undisputed deposition
testimony of Claimants that Hacienda owns the master sound recordings in question; (2)
Claimants’ executed recording agreements stating that Hacienda owns the masters; and
(3) the copyright notice in Hacienda’s name that was affixed to Hacienda’s mastered
products upon the creation, release, and publication of the master sound recordings and
compilations, prior to Claimants’ registrations.
1. Legal Standard
The Copyright Act sets out eight categories or “works” that are protectable,
including “sound recordings.” 17 U.S.C. § 102(a)(7). “Sound recordings” are “works that
result from the fixation of a series of musical, spoken, or other sounds, but not including
the sounds accompanying a motion picture or other audiovisual work, regardless of the
nature of the material objects, such as disks, tapes, or phonorecords, in which they are
embodied.” Id. § 101.
Ownership of the copyright in a work occurs at creation, and when published, a
copyright notice may be affixed to the copyrighted work “identifying the name of the
owner of the copyright.” 17 U.S.C. §§ 201(a), 402(b)(3). The Copyright Act of 1976
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provides that copyright ownership “vests initially in the author or authors of the work.”
Id. § 201(a). As a general rule, the author is the party who actually creates the work, that
is, the person who translates an idea into a fixed, tangible expression entitled to copyright
protection. Id. § 102. A party may also become the owner of a copyright under a written
transfer of ownership or if the work was “made for hire.” Id. § 201(b)(d); see also Fair
Report, D.E. 187-2, p. 3.
If the work is for hire, “the employer or other person for whom the work was
prepared is considered the author” and owns the copyright, unless there is a written
agreement to the contrary. 17 U.S.C. § 201(b). “In Reid, the [Supreme] Court held that
general principles of agency law apply when deciding whether the work in issue was
prepared by an ‘employee’ rather than an independent contractor.” Quintanilla v. Tex.
Television Inc., 139 F.3d 494, 497 (5th Cir. 1998) (citing Cmty. for Creative NonViolence v. Reid, 490 U.S. 730, 739 (1989)).
Under the Copyright Act, “[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). The purpose of Section 204(a) is “to protect copyright
holders from persons mistakenly or fraudulently claiming oral licenses.” Eden Toys, Inc.
v. Florelee Undergarment Co., 697 F.2d 27, 36 (2d Cir. 1982), superseded on other
grounds by FED R. CIV. P. 52(a). The writing in question “doesn’t have to be the Magna
Carta; a one-line pro forma statement will do.” Effects Assocs., Inc. v. Cohen, 908 F.2d
555, 557 (9th Cir. 1990). Nor does the writing have to contain any particular language.
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Lyrick Studios, Inc. v. Big Idea Prods., Inc., 420 F.3d 388, 391–92 (5th Cir. 2005) (citing
Radio Television Espanola S.A. v. New World Entm’t, Ltd., 183 F.3d 922, 927 (9th Cir.
1999) (“No magic words must be included in a document to satisfy § 204(a).”). However,
it must show an agreement to transfer copyright. Id.
A sound recording ultimately released and published may also be called a “master
recording.” See Curington v. UMG Recordings, Inc., 2011 WL 3568278, *2 (M.D.N.C.
2011), aff’d, 468 Fed. App’x 304 (4th Cir. 2012). A “compilation” includes all the
mastered sound recordings on a released album, which are “selected, coordinated, or
arranged in such a way that the resulting work as a whole constitutes an original work of
authorship.” 17 U.S.C. § 101. The “normal practice in the [music] industry” regarding the
ownership of master sound recordings has been aptly summarized as follows:
[W]hen [a] song is recorded, there is a separate copyright in
the performance of the song. Jordan v. Sony BMG Music
Entm’t, Inc., 637 F. Supp. 2d 442 (S.D. Tex. 2008) (“Under
the Copyright Act, sound recordings (in this case, the fixation
of the combined music and lyrics) and the underlying musical
compositions are separate works with distinct copyrights”).
When an artist enters into a contract with a record label, the
performance generally does not exist. The record label pays
for the cost of creating the performance, including an advance
to the artist, payment of the musicians who perform the song
and payment of the costs of creating the master recording. In
return, the artist agrees that the copyright to the performance
(as opposed to the words and music themselves) belongs to
the record label. The master is the embodiment of the
performance on tape or digital image which can be used to
produce compact discs or digital downloads for sale to the
public. Because the record label pays for the creation of the
master, record contracts provide that the master belongs to the
label. More importantly, the copyright for the performance
belongs to the label as well.
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In re Antone’s Records, Inc., 445 B.R. 758, 779 (Bankr. W.D. Tex. 2011).
2. Analysis
a. Ruben Ramos
Hacienda has produced undisputed evidence that Ramos entered into an Exclusive
Artist Recording Agreement with Hacienda Records in 1985. D.E. 64-10. Pursuant to this
Agreement, Hacienda “employ[ed] the exclusive services of [Ramos] as a recording
artist” and Ramos “accept[ed] such employment.” Id. ¶ 1. Ramos agreed “to record and
deliver to [Hacienda] a minimum number of master recordings embodying [Ramos’]
performances . . . .” Id. ¶ 3. Hacienda agreed “to advance all costs for production of
master recordings,” and Ramos agreed that Hacienda “shall own the sole, exclusive and
worldwide rights in perpetuity in and to all master sound recordings made hereunder and
all derivatives thereunder and in and to the performances of Artist embodied therein.” Id.,
¶ 5. Ramos stated in his deposition that he agreed to Paragraph 5 of the Agreement, that it
was typical for a record label to own the master sound recordings, and that Hacienda had
the right to manufacture, license, and sell the master sound recordings. Ramos Dep., D.E.
124-2, Tr. at 113:22-115:6. Claimants’ expert, Edward Fair, did not review this
agreement—in fact, he did not review any of the recording agreements cited herein.
However, Mr. Fair conceded that “[c]ertainly, such an agreement may result in Hacienda
owning the copyright in the recordings.” Fair Report, D.E. 187-2, p. 1. The Court
therefore finds the Exclusive Artist Recording Agreement sufficient to transfer copyright
ownership to Hacienda.
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Hacienda has offered undisputed evidence that 15 Hits, 20 Hits de los Meros
Leones, Back to Back Again!, Lo Pobre Que Soy, Medley of 34 Golden Hits, and El Gato
Negro y Paloma RR were recorded at Hacienda Records, pursuant to the written
Agreement, and made during the timeframe of the Agreement. See Rick Garcia Decl.,
D.E. 183-1, ¶¶ 1–10, 58–59. In each case, Hacienda provided original contributions in the
form of sound engineering, editing, mixing, and mastering, and then each sound
recording was published and released by Hacienda with the affixed copyright notice in
Hacienda’s name.2 Id.; D.E. 64-11, 64-13, 64-14, 64-18, 64-23, 183-2.
Accordingly, the Court finds that, consistent with industry standard, Hacienda
owns the copyright to the master sound recordings of 15 Hits, 20 Hits de los Meros
Leones, Back to Back Again!, Lo Pobre Que Soy, Medley of 34 Golden Hits, and El Gato
Negro y Paloma RR.
b. Hugo Guerrero
Hacienda has produced undisputed evidence that Claimant Guerrero entered into
an Exclusive Artist Development Recording Agreement with Hacienda Records in 2002.
D.E. 65-10. This agreement contained language identical to that quoted in the Ramos
Agreement.
Id. ¶¶ 1, 3, 5, 7. The Court finds the Exclusive Artist Development
Recording Agreement sufficient to transfer copyright ownership to Hacienda.
Hacienda has also produced undisputed evidence that Guerrero entered into a
Master Recording Agreement for World-Wide Distribution with Hacienda Records in
2. Lo Pobre Que Soy was initially published and released by RCA Ariola International, which was
affiliated with Hacienda at the time; rights to the sounds recordings have since reverted to Hacienda.
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2012, wherein he agreed to “assign to [Hacienda] for PERPETUITY (forever) all rights”
to a number of master songs. D.E. 65-14.3 This Agreement is also sufficient to transfer
copyright ownership to Hacienda.
La Charanga de Nuevo and El Mero Fandango were recorded at Hacienda
Records, pursuant to the 2002 Exclusive Artist Development Recording Agreement,
during the timeframe of the Agreement. See Rick Garcia Decl. ¶¶ 11–14, 67. The
compilation entitled Hugo Guerrero Y La ConnXcion was recorded pursuant to the 2012
Master Recording Agreement for World-Wide Distribution. Id. ¶¶ 15–16, 67. In each
case, Hacienda provided original contributions in the form of sound engineering, editing,
mixing, and mastering, and then each sound recording was published and released by
Hacienda with the affixed copyright notice in Hacienda’s name. Id. ¶¶ 11–16, 67; D.E.
65-9, 65-11, 65-13. Finally, Guerrero has admitted that Hacienda owns the master sound
recordings on Hugo Guerrero Y La ConnXcion. Guerrero Dep., D.E. 122-2, Tr. at
183:19-23.
Accordingly, the Court finds that, consistent with industry standard, Hacienda
owns the copyright to the master sound recordings of Hugo Guerrero Y La ConnXcion,
La Charanga de Nuevo, and El Mero Fandango.
c. Rene Serrata
Hacienda has produced undisputed evidence that Claimant Serrata entered into
four recording agreements with Hacienda Records.
3. An Addendum swapped out four songs in this master. D.E. 65-15.
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In a June 25, 1991 Agreement, Hacienda “employ[ed] the exclusive services of
Rene Serrata and Los Buenos.” D.E. 66-10, ¶ 1. Serrata was hired “to record and deliver
to [Hacienda] 2 masters per year.” Id. ¶ 3. Hacienda “agree[d] to advance all the costs for
the production of master recordings,” and Serrata “agree[d] that [Hacienda] shall own the
sole, exclusive and worldwide rights in perpetuity in and to all master recordings and any
and all other types of sound recording releases obtained from the master.” Id. ¶ 5. “As the
sole and entire compensation for [Serrata’s] services,” Hacienda agreed to sell cassettes
to Serrata at a discounted price. Id. ¶ 7. The sound recordings in Tu Vestido Blanco were
made pursuant to this Agreement. Garcia Decl. ¶ 68. The Court finds this Agreement
sufficient to transfer copyright ownership to Hacienda.
In an Agreement dated October 15, 1991, Serrata was hired “to sing lead and
harmony on an unreleased LP performed by Bobby Naranjo and his group Direccion,”
and he agreed his “sole compensation for this recording” would be $300. D.E. 66-18. The
compilation entitled Bobby Naranjo and Rene Serrata, Special Edition (hereinafter
“Special Edition”) was recorded at Hacienda Records in 1992 pursuant to this
Agreement. Garcia Decl. ¶¶ 57, 69. The Court finds this Agreement sufficient to transfer
copyright ownership to Hacienda.
In a 2003 Recording Master Purchase Agreement for Worldwide Distribution,
Serrata recorded and “agree[d] to sell to [Hacienda] for PERPETUITY (forever)” the
sound recordings in the album Que Sera de Mi. D.E. 66-20, ¶ 1. Serrata further granted
Hacienda the right to use his voice “in all fields throughout the world of phonorecords
made hereunder, on the above purchased master.” Id. ¶ 3. The Court finds the Recording
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Master Purchase Agreement for Worldwide Distribution Agreement sufficient to transfer
copyright ownership to Hacienda.
Serrata recorded Como Te Llamas Tu pursuant to a written agreement executed in
1979, wherein Serrata agreed that Hacienda would own the master sound recordings.
Garcia Decl. ¶ 68. Hacienda has not submitted a copy of this written agreement; however,
Serrata does not dispute the agreement’s existence or contents. The Court finds a written
agreement stating that Hacienda owns the master sound recordings on Como Te Llamas
Tu is sufficient to transfer copyright ownership to Hacienda.
In each case, Hacienda provided original contributions in the form of sound
engineering, editing, mixing, and mastering, and then each sound recording was
published and released by Hacienda with the affixed copyright notice in Hacienda’s
name. Garcia Decl. ¶¶ 52–57; D.E. 66-9, 66-11, 66-17, 66-19, 183-3. Finally, Serrata has
admitted that Hacienda owns the master sound recordings in question. Serrata Dep., D.E.
126-3, Tr. at 135:4-19, 137:8-14.
Accordingly, the Court finds that Hacienda owns the master sound recordings to
Tu Vestido Blanco, Special Edition, Que Sera de Mi, and Como Te Llamas Tu.
B. Whether Claimants and their assigns have any copyright ownership in the
master sound recordings and compilations.
As set forth in Part V.A. above, Hacienda owns the master sound recordings to 15
Hits, 20 Hits de los Meros Leones, Back to Back Again!, Lo Pobre Que Soy, Medley of 34
Golden Hits, El Gato Negro y Paloma RR, Hugo Guerrero Y La ConnXcion, La
Charanga de Nuevo, El Mero Fandango, Tu Vestido Blanco, Special Edition, Que Sera
de Mi, and Como Te Llamas Tu. While joint authorship could theoretically entitle each
17
Claimant to an equal undivided interest in his recordings, see 17 U.S.C. § 201(a);
Thomson v. Larson, 147 F.3d 195, 199 (2d Cir. 1998), Claimants have offered no
evidence of joint authorship in the recordings, or that they retained any interest in the
recordings in which they transferred their ownership rights to Hacienda. 4 To the contrary,
Hacienda’s CDs include an attribution of copyright notice in Hacienda’s name only as the
copyright owner, and the various written agreements cited herein make clear that
Hacienda is the owner of the master recordings. Accordingly, the Court finds that
Claimants and their assigns have no copyright interest in the master sound recordings and
compilations listed herein.
C. Whether any copyright registrations by Claimants to Hacienda’s master
sound recordings and compilations are invalid.5
Claimants previously brought counterclaims against Hacienda for copyright
infringement based on copyright registrations they obtained for the sound recordings
listed above. Hacienda moves for a declaratory judgment that Claimants’ copyright
registrations are invalid because Claimants and/or their attorney purchased Hacienda’s
mixed and mastered CD’s and then wrongfully registered them as their own with the U.S.
Copyright Office. Moreover, most of Claimants’ registrations were submitted more than
five years after Hacienda’s creation, publication, and release of the sound recordings;
4. A “joint work” is “a work prepared by two or more authors with the intention that their contributions be
merged into inseparable or interdependent parts of a unitary whole.” 17 U.S.C. § 101. The authors of a joint work
are co-owners of copyright in the work. Id. § 201(a).
5. Hacienda’s motion for summary judgment seeks a declaration that “[a]ny copyright registrations by
Claimants to Hacienda’s master sound recordings and compilations contain intentionally and materially false
information and are invalid.” D.E. 183, p. 25 (emphasis added). However, Hacienda’s counterclaim only asks for a
declaration that Claimants’ copyright registrations are invalid. D.E. 153, p. 27. Accordingly, the Court declines to
make a finding regarding intent.
18
most contain false publication dates and/or false claims of authorship; and all contain
false claims of ownership.
1. Legal Standard
“A certificate of registration, if timely obtained, is prima facie evidence both that a
copyright is valid and that the registrant owns the copyright.” Gen. Universal Sys., Inc. v.
Lee, 379 F.3d 131, 141 (5th Cir. 2004). However, the U.S. Copyright Office does not
examine copyright applications for validity. See Gaste v. Kaiserman, 863 F.2d 1061,
1065 (2d Cir. 1988) (quoting H.R. Rep. 1476, 94th Cong., 2d Sess., 156–57 (1976));
Donald v. Uarco Bus. Forms, 478 F.2d 764, 765 n.1 (8th Cir. 1973). Thus, the
presumption that a certificate of registration creates is rebuttable. Norma Ribbon &
Trimming, Inc. v. Little, 51 F.3d 45, 47 (5th Cir. 1995).
Only “the owner of copyright or of any exclusive right in the work may obtain
registration of the copyright claim . . . .” See 17 U.S.C. § 408(a). As such, false
statements of ownership or authorship in a work render a copyright registration invalid as
a matter of law. See, e.g., Kunkel v Jasin, 420 Fed. App’x 198, 199–200 (3d Cir. 2011)
(“Because the bankruptcy estate, not [Claimant], owned the designs at the time that
[Claimant] registered them with the Copyright Office, those registrations are invalid.”);
Choyce v. SF Bay Area Ind. Media Ctr., 2014 WL 5597274, at *5 (N.D. Cal. 2014)
(“[Claimant] filed a registration application which identified himself as the ‘author’ of the
image, which he knew he was not. And then, when faced with the argument that he still
had no valid ownership interest in any copyright, he resorted to additional meritless
arguments: That his registration was prima facie valid (which it was not) . . .”); 16 Casa
19
Duse, LLC v. Merkin, 2013 WL 5510770, at *11, 12 (S.D.N.Y. 2013), rev’d and
remanded on other grounds, 791 F.3d 247 (2d Cir. 2015) (court had “no difficulty finding
that Plaintiff is entitled to summary judgment invalidating [defendant’s] copyright
registration” where defendant was not the author of the work).
Copyright registrations made more than five years after the publication and release
of a work similarly have no presumption of validity as a matter of law. See 17 U.S.C. §
410(c); Berg v. Symons, 393 F. Supp. 2d 525, 539 (S.D. Tex. 2005) (“Section 410 of the
Copyright Act requires that a court presume a copyright is valid if registered within five
years of the work’s first publication. If the copyright is registered after the five-year
period, the court may give as much weight to the copyright registration as it desires.”).
2. Analysis
a. Ramos
Hacienda has produced uncontroverted evidence that Ramos and/or his attorney
purchased, submitted to the Copyright Office, and claimed to own the Haciendapublished and released CDs 15 Hits, 20 Hits de los Meros Leones, Back to Back Again!,
Lo Pobre Que Soy, Medley of 34 Golden Hits, and El Gato Negro y Paloma RR,
containing Hacienda’s copyright notice.6 Ramos Dep. at 173:16-24; D.E. 124-4, Ramos
1st Supp. Resp. to Hacienda’s First Req. for Admis. Nos. 9–15.
6. Claimants argue that registering Hacienda’s masters, “rather than the roughcut, unmastered original,” is
excusable under the theory of using a “copy of the work, not a reconstruction.” D.E. 187, p. 9. However, as
Claimant Geurrero admits, a pre-production “click track” of a voice or other sound is a much different work than a
mastered sound recording. See Guerrero Dep. at 251:24–252:18; 149:3-25.
20
All of Ramos’ copyright registrations contain false publication dates and were
submitted more than five years after Hacienda’s creation, publication, and release of the
sound recordings. Garcia Decl. ¶¶ 1–10, 58–59; D.E. 64-26; D.E. 64-14, 99-11 at 12 (15
Hits); D.E. 64-18, 99-11 at 5 (20 Hits de los Meros Leones); D.E. 64-11, 64-13, 99-11 at
8 (Back to Back Again!); D.E. 64-19–64-22, 99-11 at 9 (Lo Pobre Que Soy); D.E. 64-23,
99-11 at 1 (Medley of 34 Golden Hits); D.E. 155-1, 183-2 (El Gato Negro y Paloma RR).
Several of Ramos’ copyright registrations contain admittedly false authorship claims. C.f.
Id.; Ramos Dep. at 178:17–179:6 (15 Hits), 175:9-23 (Back to Back Again!), 175:25178:16 (Lo Pobre Que Soy), 170:1–171:2 1 (Medley of 34 Golden Hits). Ramos also
falsely claimed to own all six master recordings. As set forth above, Hacienda owns the
copyright to these recordings.
Accordingly, the Court finds that Ramos’ copyright registrations for 15 Hits, 20
Hits de los Meros Leones, Back to Back Again!, Lo Pobre Que Soy, Medley of 34 Golden
Hits, and El Gato Negro y Paloma RR are invalid.
b. Guerrero
Hacienda has produced uncontroverted evidence that Guerrero and/or his attorney
purchased, submitted to the U.S. Copyright Office, and claimed to own the Haciendapublished and released CDs Hugo Guerrero Y La ConnXcion, La Charanga de Nuevo,
and El Mero Fandango, containing Hacienda’s copyright notice. Guerrero Dep. at
173:16-24; D.E. 126-7, Guerrero 1st Supp. Resp. to Hacienda’s First Req. for Admis.
Nos. 9–15.
21
The copyright registration for El Mero Fandango contains a false publication date,
and the registrations for both La Charanga De Nuevo and El Mero Fandango were
submitted more than five years after Hacienda’s creation, publication, and release of the
sound recordings. Garcia Decl. ¶¶ 11–16; D.E. 65-9, 65-17 at 5 (La Charanga De
Nuevo); D.E. 65-11, 65-17 at 7 (El Mero Fandango). These registrations also contain
admittedly false authorship claims. C.f. Id.; Guerrero Dep. at 87:2-19 (La Charanga De
Nuevo) and 82:20-24, 98:8-24, 251:24–252:18 (El Mero Fandango). Finally, Guerrero
falsely claimed to own all three master recordings. As set forth above, Hacienda owns the
copyright to these recordings.
Accordingly, the Court finds that Guerrero’s copyright registrations for Hugo
Guerrero Y La ConnXcion, La Charanga de Nuevo, and El Mero Fandango are invalid.
c. Serrata
Finally, Hacienda has produced uncontroverted evidence that Serrata and/or his
attorney purchased, submitted to the U.S. Copyright Office, and claimed to own the
Hacienda-published and released CDs Tu Vestido Blanco, Special Edition, Que Sera de
Mi, and Como Te Llamas Tu, containing Hacienda’s copyright notice. Serrata Dep. at
113:11-16; D.E. 126-7, Serrata 1st Supp. Resp. to Hacienda’s First Req. for Admis. Nos.
9–15.
The copyright registrations for Tu Vestido Blanco and Que Sera De Mi contain
false publication dates, and all registrations were submitted more than five years after
Hacienda’s creation, publication, and release of the sound recordings. Garcia Decl. ¶¶
52–57, 60–61; D.E. 66-24 at 78, 66-11, Serrata Dep. at 261:16–262:7 (Tu Vestido
22
Blanco); D.E. 66-24 at 80, D.E. 66-9 (Special Edition); D.E. 66-24 at 76, D.E. 66-17
(Que Sera De Mi); D.E. 155-1 at 2, D.E. 183-3 (Como Te Llamas Tu). These registrations
also contain admittedly false authorship claims. C.f. Id.; Serrata Dep. at 94:24-96:19 (Tu
Vestido Blanco), 212:20–213:14, 267:13–268:7 (Special Edition), 253:18–255:25 (Que
Sera de Mi), 81:3-15, 276:13-21. Finally, Serrata falsely claimed to own all four master
recordings. As set forth above, Hacienda owns the copyright to these recordings.
Accordingly, the Court finds that Serrata’s copyright registrations to Tu Vestido
Blanco, Special Edition, Que Sera de Mi, and Como Te Llamas Tu are invalid.
VI. Conclusion
For the reasons set forth above, Hacienda’s Motion for Summary Judgment on its
Counterclaim (D.E. 183) is GRANTED, and it is hereby DECLARED that:
1) Hacienda owns the copyright to the master sound recordings and
compilations;
2) Claimants and their assigns have no copyright ownership in the master
sound recordings and compilations; and
3) Any copyright registrations by Claimants to Hacienda’s master sound
recordings and compilations are invalid.
It is further ORDERED that Claimants’ Motion to Strike Declaration of Rick
Garcia (D.E. 186) is GRANTED IN PART AND DENIED IN PART; Hacienda’s
Motion to Strike the Expert Report of Edward Z. Fair (D.E. 189) is DENIED; and
Hacienda’s Emergency Motion to Compel Discovery Responses and for Protection (D.E.
184) is DENIED AS MOOT.
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Within seven (7) days from the date of this Order, the parties are ORDERED to
notify the Court if any claims remain pending against any parties in this case. If no
claims remain, the Court will issue a final judgment in favor of Hacienda.
ORDERED this 29th day of June, 2016.
___________________________________
NELVA GONZALES RAMOS
UNITED STATES DISTRICT JUDGE
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