Guzman v. Hacienda Records and Recording Studio, Inc.

Filing 159

MEMORANDUM AND ORDER denying 139 Defendants' Application for Attorneys' Fees and Costs with respect to application for attorney's fees.(Signed by Judge Gregg Costa) Parties notified.(arrivera, 4)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF TEXAS
VICTORIA DIVISION
JOSE O. GUZMAN,
Plaintiff,
VS.
HACIENDA RECORDS AND
RECORDING STUDIO, INC., et al.,
Defendants.

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§ CIVIL ACTION NO. 6:12-CV-42
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MEMORANDUM AND ORDER

Pending before the Court is Defendants’ Application for Attorneys’ Fees and
Costs (Docket Entry No. 139),1 following the Court’s entry of final judgment in its
favor on Plaintiff Jose Guzman’s copyright claim. This Memorandum and Order
disposes of the application for attorney’s fees only; the Court will rule on the
application for costs, which raises a difficult issue of statutory interpretation, in a
separate order.
I.

BACKGROUND
Guzman is a nonagenarian Tejano songwriter and musician who, in the early

1970s, composed a song called “Triste Aventurera.” The music and lyrics to Triste
were placed on a lead sheet and filed with the United States Copyright Office in
1

The Defendants in this case are Hacienda Records and Recording Studio, Inc.; Hacienda
Records, L.P.; Latin American Entertainment, L.L.C.; Rick Garcia; and Roland Garcia, Sr. For
simplicity, the Defendants are referred to collectively as Hacienda.
1

1974. Defendant Hacienda is a record label and recording studio located in Corpus
Christi, Texas that focuses primarily on Tejano music. In 1990, Hacienda released
a song titled “Cartas de Amor” on an album recorded by the band the Hometown
Boys.

Guzman filed suit against Hacienda on September 20, 2012, asserting

claims that Hacienda infringed his copyright in Triste through its recording and
release of Cartas and that Hacienda tampered with copyright management
information. A three-day bench trial was held from March 17–19, 2014.2
On December 9, 2014, the Court issued a Memorandum and Order holding
that Guzman did not prove by preponderance of the evidence that Hacienda had
reasonable access to Triste prior to the 1990 release of Cartas. On this basis, the
Court ruled in favor of Hacienda on both claims. On January 29, 2015, the Court
entered a take-nothing final judgment against Guzman.

Hacienda now seeks

attorney’s fees and costs for successfully defending against Guzman’s copyright
infringement claim.
II.

DISCUSSION
A. Governing Law
Under the Copyright Act, courts may award “a reasonable attorney’s fee to

the prevailing party as part of the costs.” 17 U.S.C. § 505. “In Fogerty v. Fantasy,

2

The Court recounted the facts of the case more thoroughly in its Memorandum and
Order following the three-day bench trial. See Guzman v. Hacienda Records & Recording
Studio, Inc., 2014 WL 6982331, at *1–4 (S.D. Tex. Dec. 9, 2014).
2

Inc., 510 U.S. 517, 534–35 (1994), the Supreme Court held that attorney’s fees
should be awarded evenhandedly to both prevailing plaintiffs and defendants in
copyright actions.” Virgin Records America, Inc. v. Thompson, 512 F.3d 724, 726
(5th Cir. 2008). Although awarding attorney’s fees is the “‘the rule rather than the
exception,’” and “‘should be awarded routinely,’” id. (quoting Positive Black Talk
v. Cash Money Records, Inc., 394 F.3d 357, 380 (5th Cir. 2004) , abrogated on
other grounds by Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010)), the
“recovery of attorney’s fees is not automatic.” Id. (citing Fogerty, 510 U.S. at
534). Indeed, “‘attorney’s fees are to be awarded to prevailing parties only as a
matter of the court’s discretion.’”

Id. (quoting Fogerty, 510 U.S. at 534)

(alterations omitted). “The Supreme Court listed several non-exclusive factors that
a court may consider in exercising its discretion: ‘frivolousness, motivation,
objective unreasonableness (both in the factual and in the legal components of the
case) and the need in particular circumstances to advance considerations of
compensation and deterrence.’” Id. (quoting Fogerty, 510 U.S. at 534 n.19).
To determine if Hacienda is entitled to an award of attorney’s fees as the
prevailing party, the Court must first consider, among other factors, the
frivolousness or objective unreasonableness of the claims.

“‘Objective

reasonableness’ is generally used to describe claims that have no legal or factual
support.” Viva Video, Inc. v. Cabrera, 9 F. App’x 77, 80 (2d Cir. 2001) (unpub.).
3

As Judge Rosenthal has stated, “[t]here is a difference between a suit that is
‘without merit’ and one that is ‘patently frivolous.’” Collins v. Doe, 2013 WL
2896822, at *6 (S.D. Tex. June 12, 2013) (citing Positive Black Talk, 394 F.3d at
382 n.23). Courts therefore tend to deny attorney’s fees when the claims, even if
ultimately unsuccessful, are neither objectively unreasonable nor frivolous.
Compare, e.g., id. at 6, 8 (denying attorney’s fees when claims “were neither
frivolous nor objectively unreasonable”); Brewer-Giorgio v. Bergman, 985 F.
Supp. 1478, 1483 (N.D. Ga. 1997) (denying attorney’s fees even though “court
found that the similarities between the works involved only non-copyrightable
ideas and facts” because “the court cannot say that Plaintiffs’ complaint and
arguments were objectively unreasonable at the time the action was filed.”) with
Coles v. Wonder, 283 F.3d 798, 803–04 (6th Cir. 2002) (upholding district court’s
award of attorneys’ fees to the defendant and affirming the conclusion that the
plaintiffs’ claims were objectively unreasonable because the legal issues were clear
and no case law from any circuit supported the plaintiffs’ position); Randolph v.
Dimension Films, 634 F. Supp. 2d 779, 792–95 (S.D. Tex. 2009) (Rosenthal, J.)
(awarding attorney’s fees to defendant because “there is an obvious and ‘profound
dissimilarity’” between the two works at issue). Moreover, the Fifth Circuit has
affirmed a district court that embraced this distinction.
2896822, at *6.

See Doe, 2013 WL

In Creations Unlimited, Inc. v. McCain, the district court
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concluded that the “Plaintiff’s challenge to Defendant’s designs, though ultimately
not successful, was neither frivolous nor objectively unreasonable” and declined to
award the defendant attorney’s fees. 889 F. Supp. 952, 954 (S.D. Miss. 1995).
Upholding that decision, the Fifth Circuit noted Fogerty’s admonition that
“attorney’s fees are to be awarded to prevailing parties only as a matter of the
court’s discretion,” and observed that the district court properly identified, and did
not abuse its discretion in applying, the relevant Fogerty factors. 112 F.3d 814,
817 (5th Cir. 1997); see also Womack+Hampton Architects, L.L.C. v. Metric
Holdings Ltd. P’ship, 102 F. App’x 374, 383 (5th Cir. 2004) (affirming district
court’s denial of attorney’s fees because, among other reasons, the district court
concluded that the claims were not frivolous).
B. ANALYSIS
Guzman’s allegation that Hacienda infringed his copyright in the song Triste
is a prime example of an unsuccessful claim that is neither frivolous nor
objectively unreasonable. As a preliminary matter, the Court notes that Guzman’s
claims survived summary judgment. See Docket Entry No. 97. This indicates that
Guzman’s claims were neither patently frivolous nor objectively unreasonable. In
any event, closer examination of the evidence adduced at trial confirms as much.
In order to succeed on his claim, Guzman had to prove that (1) he owned a valid
copyright in Triste and (2) Hacienda copied constituent elements of Triste that are
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original. See Positive Black Talk, 394 F.3d at 367. Because Hacienda conceded
that Guzman owned a valid copyright, the main issue in contention at trial was the
second, “copying,” element. Guzman, 2014 WL 6982331, at *4. To satisfy that
element, Guzman had to prove: “(1) factual copying and (2) substantial similarity.”
See Positive Black Talk, 394 F.3d at 367. But, “[a]s direct evidence of copying is
rarely available, factual copying may be inferred from (1) proof that the defendant
had access to the copyrighted work prior to creation of the infringing work and (2)
probative similarity.” Id. at 368 (quoting Peel & Co. v. The Rug Mkt., 238 F.3d
391, 394 (5th Cir. 2001) (footnote omitted)).

The trial thus focused on two

questions. First, did Hacienda have access to Triste prior to releasing Cartas?
And second, was there substantial similarity between Triste and Cartas?3
As to the first question, the Court found that Guzman did not show a
reasonable possibility that Hacienda had access to Triste. Far from the “access”
inquiry being patently frivolous or even objectively unreasonable, this issue was
not an easy call.

Guzman introduced evidence including that “Triste was

performed in and around the Corpus Christi area in the 1970s through the 1990s,
appeared on the radio in Corpus Christi, and was performed a handful of times in
3

The evidence concerning “probative similarity,” which informs the circumstantial
access inquiry, overlapped with that concerning “substantial similarity,” which is a separate
element requiring the degree of similarity necessary to establish copying. See Guzman, 2014
WL 6982331, at *4 n.6. Incidentally, the Court stated that “[a]lthough the Court need not reach
this issue, the Court easily would have concluded that Guzman showed probative similarity
between Triste and Cartas.” See id. Thus, the only two issues for resolution at trial were access
and “substantial similarity.”
6

Lubbock.” Guzman, 2014 WL 6982331, at *6. The Court conducted a thorough
and extensive analysis of this and other evidence adduced at trial, and while it
ultimately disagreed with Guzman’s view that the evidence supported an access
finding, it was question on which reasonable factfinders may disagree. See Docket
Entry No. 97 at 3 (“It is a closer question whether Guzman can demonstrate that
Defendants had ‘access’ to . . . ‘Triste Aventurera.’

Nevertheless, given the

summary judgment evidence presented by Guzman, the element of access remains
a genuine issue of triable fact.”).
In addition, the Court noted that the evidence favored Guzman on the second
element “of substantial similarity.” Guzman, 2014 WL 6982331, at *5 (“[T]he
Court believes that substantial similarity exists between the songs[.]” (footnote
omitted) (italics added)).

Because “Guzman’s inability to prove [reasonable]

access mean[t] a full ruling on the ‘substantial similarity’ element [was]
unnecessary” in the Court’s previous order, the Court will now flesh out that ruling
more fully as it further demonstrates why Guzman’s claim was not objectively
unreasonable.4

See id. at *5 n.7 (noting simply that the Court reached its

“substantial similarity” decision “based

4

Even now, the “substantial similarity” analysis that follows is not meant to be
comprehensive or thorough by any mean. The purpose of the inquiry is merely to demonstrate
why, in the context of whether to award attorney’s fees, the evidence adduced at trial does not
support a Fogerty finding of objective unreasonableness or frivolousness in this case.
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on the extensive expert testimony concerning the songs and [the Court’s] own
review of the songs”).
Substantial similarity is a nebulous concept, presenting “one of the most
difficult questions in copyright law, and one that is the least susceptible of helpful
generalizations.”

See MELVILLE B. NIMMER & DAVID NIMMER, NIMMER

ON

COPYRIGHT § 13.03[A]. What is clear is that “slight or trivial similarities are not
substantial and are therefore noninfringing.” Id. “But it is equally clear that two
works may not be literally identical, and yet, for purposes of copyright
infringement, may be found to be substantially similar.” Id. Thus, “[s]omewhere
between the one extreme of no similarity and the other of complete and literal
similarity lies the line marking off the boundaries of ‘substantial similarity.’” Id.
In the Fifth Circuit, the “substantial similarity” inquiry involves “a side-byside comparison . . . between the original and the copy to determine whether a
layman would view the two works as ‘substantially similar.’” See Positive Black
Talk, 394 F.3d at 374 (quoting Creations Unlimited, 112 F.3d at 816 (footnote
omitted)). “Two works are substantially similar if the expression of ideas in the
plaintiff’s copyrighted work and the expression of ideas in the defendant’s work
that are shared are substantially similar,” with [t]he test for expression of ideas
[being] whether the intended audience would find the total concept and feel of the
two songs to be substantially similar.” Id. at 373. Here, listeners of Tejano music
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comprise the intended audience of Triste and Cartas. The determinative question
is thus whether an ordinary observer of Tejano music would, as between these two
songs, “detect piracy ‘without any aid or suggestion or critical analysis by others.’”
Peel, 238 F.3d 391, 398 (5th Cir. 2001) (quoting Harold Lloyd Corp. v. Witwer, 65
F.2d 1, 18 (9th Cir. 1933)). Moreover, the factfinder must also determine the
qualitative importance of the copied parts in relation to the overall copyrighted
work. See Baxter v. MCA, Inc., 812 F.2d 421, 425 (9th Cir. 1987) (“Even if a
copied portion be relatively small in proportion to the entire work, if qualitatively
important, the finder of fact may properly find substantial similarity.”).
Cartas is not identical to Triste. However, the dissimilarities in the two
songs—including the tempo, duration, key, different lyrics after the first verse, and
different instrumental introduction and song breaks—do not mean that Cartas is
not substantially similar to Triste. The Court finds these stylistic differences to be
outweighed by the substantial similarities that permeate throughout the song.
Some of the more striking examples are detailed below.
First, the first verse of both songs goes beyond mere substantial similarity.
Indeed, the lyrics in the first verse of Cartas—“Yo tengo en mi poder unas cartas
de amor que tu me las mandastes pidiendo compassion (I have in my possession
love letters that you have sent me asking for compassion)”—are virtually identical
to the first words of Triste—“Yo tengo en mi poder una carta de amor que tu me la
9

mandaste pidiendo compassion (I have in my possession a love letter that you have
sent me asking for compassion).” The opening lyrics are thus exactly the same
except for the presence of an “s” following the words “carta” and “una” in Cartas,
an edit which functions solely to change the words from singular to plural form.
This minor change does not affect the conclusion that the lyrics of the two songs
are substantially similar.

See Sid & Mary Krofft Television Prods., Inc. v.

McDonald’s Corp., 562 F.2d 1157, 1167 (9th Cir. 1977) (“Duplication or near
identity is not necessary to establish infringement.”). Even Hacienda’s expert
conceded that the lyrical similarities between Cartas and Triste were not just
substantial, but were somewhere between striking and identical. See Tr. Transcript
Vol. 3 at 274–76.
Moreover, as a qualitative matter, the Court finds that the location of the
similar lyrics in relation to other portions of the song is particularly important.
Both songs begin with these lyrics, meaning that these are the first words the
listener hears to each song.

The lyrics are more important based on their

placement in the song. See NIMMER & NIMMER, supra, § 13.03[A] (“[E]ven if the
similar material is quantitatively small, if it is qualitatively important, the trier of
fact may properly find substantial similarity.”); see also Iowa State Univ. Research
Found., Inc. v. American Broadcasting Cos., 463 F. Supp. 902 (S.D.N.Y. 1978),
aff’d, 621 F.2d 57 (2d Cir. 1980) (holding that defendant committed copyright
10

infringement by broadcasting one 12-second segment from the plaintiff’s film).
And, combined with the other similarities between the songs, the lyrical similarity
is more than de minimis. See Elsmere Music, Inc. v. National Broadcasting Co.,
482 F. Supp. 741 (S.D.N.Y. 1980), aff’d, 623 F.2d 252 (2d Cir. 1980) (“Although
it is clear that, on its face, the taking involved in this action is relatively slight, on
closer examination it becomes apparent that this portion of the piece, the musical
phrase that the lyrics ‘I Love New York’ accompany, is the heart of the
composition. Use of such a significant (albeit less than extensive) portion of the
composition is far more than merely a de minimis taking.”).
Some of these other similarities involve the rhythmic patterns of the two
songs—the first five measures of the first verse in Cartas are rhythmically
identical to Triste and both songs are in 2/4 polka-style meter.

Yet more

similarities involve the songs’ respective melodies. The Court is “mindful of the
limited number of notes and chords available to composers and the resulting fact
that common themes frequently reappear in various compositions, especially in
popular music.” Gaste v. Kaiserman, 863 F.2d 1061, 1068 (2d Cir. 1988). For
that reason, the mash-up audio sample created by Guzman is particularly helpful in
comparing and contrasting the two songs. In it, the two songs are superimposed,
one after the other. See Docket Entry No. 115-44 (Pl.’s Ex. 50). The mash-up
demonstrates that the parallels between Cartas and Triste are substantial. What is
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most notable is that what is known as “melisma” occurs at precisely the same point
in both songs: on the same syllable, in the same word, in the same place of the
phrase, specifically on the italicized portion of the word “compassion.” Melisma is
the singing of a single syllable of text while moving between several different
notes. See OXFORD DICTIONARY OF ENGLISH, Vol. IX 580 (2d. Ed. 1991) (defining
“melisma” as “in singing, the prolongation of one syllable over a number of
notes”). The Court also notes that the chord progressions underlying the melodies
are substantially similar, and the pitch sequence of Cartas’s bass line is highly
similar to Triste.
The Court also finds that the instrumentation and accompaniment of both
songs are substantially similar, including the use of the following instruments:
accordion, bajo sexton—an instrument similar to a guitar but with twelve strings,
instead of six—drums, and bass. With respect to tempo and duration, Triste and
Cartas are very similar: Triste is approximately 109 beats per minute and is 2:38 in
duration, while Cartas is slightly slower at 101 beats per minute and is 2:41 in
duration. Neither tempo nor duration change the identity of a song. While the
songs are in different keys (Triste is written in the key of A flat major, while
Cartas is in the key of C major), that does not change the underlying DNA of the
song; the intervals between notes are the same and, when transposed, the
similarities are substantial. In sum, there is ample evidence demonstrating that the
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Triste and Cartas are substantially similar.
In light of Guzman prevailing on the “substantial similarity” element and
presenting a compelling if ultimately unsuccessful case of “copying,” two of the
main considerations in the Court’s attorney’s fees calculus—whether the claim was
frivolous or objectively unreasonable—counsel against awarding attorney’s fees.
So do the remaining Fogerty factors. The evidence does not suggest that Guzman
brought this suit in bad faith nor does the record show any “direct evidence of an
improper motive,” see Randolph, 634 F. Supp. 2d at 795, to support a bad faith
finding. Rather, the record supports the conclusion that Guzman believed he had a
legitimate copyright claim, first attempted to resolve it with Hacienda through a
cease-and-desist letter, and only filed suit after that effort was unsuccessful.
Indeed, the evidence shows that Guzman sought to enforce his rights in Cartas
against other record labels: he contacted Freddie Records and told them that Cartas
was the same as Triste, and thereafter received a check from Freddie Records for
$189.53. Guzman, 2014 WL 6982331, at *4.
Because the Court concludes that this case was not frivolous, objectively
unreasonable, or brought in bad faith, awarding attorney’s fees is not necessary to
promote special considerations of compensation or deterrence. See Bergman, 985
F. Supp. at 1484 (“Although Defendants prevailed on a motion for summary
judgment, the court does not believe that this action is a frivolous one that would
13

require an award of fees to deter the filing of future frivolous claims. In fact, the
court believes that parties in Plaintiffs’ position should not be discouraged from
seeking protection of their rights in court under the Copyright Act.”); Collins, 2013
WL 2896822, at *6 (“The imposition of a fee award against a copyright holder
with an objectively reasonable litigation position will generally not promote the
purposes of the Copyright Act.” (quoting Matthew Bender & Co. v. West Pub’g
Co., 240 F.3d 116, 122 (2d Cir. 2001)).

Hacienda argues that an award of

attorney’s fees “is necessary to deter further frivolous claims by a vexatious party
and counsel,” see Docket Entry No. 139 at ¶ 18, pointing out that “[t]his case is
one of two cases filed by Mr. Guzman, and one of five cases being prosecuted
against Hacienda and the Garcia family by Plaintiff’s counsel.” See id. at ¶ 3.
With respect to Mr. Guzman, it is true that he recently lost his second copyright
infringement case against Hacienda after a three-day jury trial in this Court. See
Guzman v. Hacienda Records, L.P., et al., No. 6:13-cv-41 (S.D. Tex. June 22,
2015) (Docket Entry No. 105).

But, there too, Guzman’s claims survived a

defense motion for summary judgment. See id. at Docket Entry No. 61. As for
Hacienda’s focus on the role of plaintiff’s counsel, the Court does not understand
why other lawsuits he has brought should affect the decision whether to require
this plaintiff to pay fees. Even as to Mr. Showalter, the Court notes that he did
prevail on one infringement claim in a bench trial against Hacienda. See Tempest
14

Pub., Inc. v. Hacienda Records & Recording Studio, Inc,

2015 WL 1246644, at *1 (S.D. Tex. Mar. 18, 2015).

Hacienda’s deterrence

argument is therefore unpersuasive.
For these reasons, the Court declines to exercise its discretion to award
attorney’s fees.
III.

CONCLUSION
Defendants’ application (Docket Entry No. 139) is DENIED with respect to

the Application for Attorney’s Fees. The Court reserves ruling on Defendants’
Application for Costs through a separate order.
SIGNED this 30th day of July, 2015.
______________________________
Gregg Costa
United States Circuit Judge*

*

Sitting by designation.
15