Amador v. McDonald's Corp.

601 F.Supp.2d 403

Antonio E. AMADOR, Plaintiff v. McDONALD'S CORPORATION, et al., Defendants.

Civil No. 07-1312 (JAG).

United States District Court, D. Puerto Rico.

February 11, 2009.

COPYRIGHT MATERIAL OMITTED

Rafael E. Silva-Almeyda, Silva Almeyda Law Office, Rene Arrillaga-Armendariz, Arrillaga & Arrillaga Law Office, San Juan, PR, for Plaintiff.

Miriam Gonzalez-Olivencia, Miriam Gonzalez Olivencia Law Office, Guaynabo, PR, for Defendant.

OPINION AND ORDER

GARCIA-GREGORY, District Judge.

Pending before the Court are the motions for summary judgment filed by Plaintiff Antonio Amador ("Plaintiff"), (Docket No. 53), and Defendant Mc-Donald's System de Puerto Rico Inc. ("Defendant"). (Docket No. 54 and 56). Both Motions were referred to a Magistrate Judge for a Report and Recommendation. (Docket No. 79). The Magistrate Judge recommended that the motions be granted in part and denied in part. (Docket No. 90). For the Reasons set forth below, this Court adopts in part and rejects in part the Magistrate Judge's Report and Recommendation. (Docket No. 90).

FACTUAL AND PROCEDURAL BACKGROUND

Plaintiff specializes in photographing the Puerto Rico landscape. (Docket No. 52, Exh. C, ¶ 2). As part of its decoration, a McDonald's restaurant located in Luis Muñoz Marín International Airport (the "LMMIA") displayed from 2001 through October 2006, the blown up version of two (2) photographs taken by Plaintiff. (Docket No. 55, Exh. VIII, ¶ 11). One of the photos was titled "Cruise Ships in Old San Juan Bay" and the other was titled "Plaza Las Delicia, Ponce." (Docket No. 60, Mc-Donald's Corporation Statement of Uncontested Material Facts, ¶ 6-23).¹ The blown up photographs, which did not contain Plaintiff's name, (Docket No. 52, Exh. F, ¶ 29), and were visible to anyone who entered the McDonald's restaurant during its hours of operation.² (Docket No. 77, Exh. E, ¶ 19). Both photos were displayed without Plaintiff's authorization, (Docket No. 52, Exh. C, ¶ 10), as Plaintiff only gave an oral license to Mark Derth to use the photographs for a calendar. (Docket No. 84, Exh. IV, p. 14).

In 2006, Plaintiff discovered and saw for the first time his two photographs publicly exhibited at the McDonald's restaurant. (Docket No. 52, Exh. C, ¶ 8). Thereafter, Plaintiff filed the present complaint against Defendant. According to Plaintiff, Defendant's acts constituted copyright infringement under the Copyright Act of 1976, as amended, 17 U.S.C. § 101, et seq. (the "Copyright Act"). Plaintiff also claimed that Defendant morally violated his rights and reputation under the Visual Artists Rights Act of 1990 ("VARA"), 17 U.S.C. § 101 et. seq., and the Puerto Rico Intellectual Property Law, P.R. Laws Ann. tit. 31 § 1401, et seq. Additionally, Plaintiff proffered a claim under the Lanham Trademark Act ("Lanham Act"), 15 U.S.C. § 1125(a) in which he alleged that Defendant entered into unfair competition with him because the exhibition of the photographs unreasonably restrained his ability to compete and to sell his photographs in a fair market condition. Further, Plaintiff included claims for tort and unjust enrichment under Puerto Rico law. Finally, plaintiff argued that he should be awarded copyright statutory damages, actual damages, alleged illegal profits received by Defendant, and costs and attorney's fees. (Docket No. 21).

Both parties in this case moved for summary judgment. Plaintiff's motion for summary judgment evolves around the same claims he submitted in his complaint. Namely, the use, without authorization or consent, of his two (2) photographs at the McDonald's facilities inside the LMMIA. In its motion for summary judgment, Defendant does not contest the use of the two (2) photographs at the LMMIA location. Defendant avers that Plaintiff granted a license to distribute the photographs to third parties and, as such, is barred from claiming copyright infringement. Moreover, Defendant alleges that Plaintiff cannot claim moral damages under Puerto Rico laws because he did not register the photographs at the Puerto Rico Intellectual Property Registry. Furthermore, Defendant contends that statutory damages nor attorney's fees may be claimed since Plaintiff registered the photographs with the Copyright Office after the alleged acts of infringement and more than 7½ years after publication. Additionally, Defendant alleges that Plaintiffs unjust enrichment claim is preempted by the Copyright Act. According to Defendant, Plaintiff is also barred from claiming false designation of origin or unfair competition under the Lanham Act. Finally, Defendant claims that any tort claim is time barred and is also preempted by the Copyright Act. (Docket Nos. 53, 54, and 56). After the respective replies were filed, (Docket Nos. 68 and 78), both motions for summary judgment were referred to a Magistrate Judge for a Report and Recommendation. (Docket No. 79).

On December 5, 2008, the Magistrate Judge issued her Report and Recommendation. The Magistrate Judge recommended that both motions be granted in part and denied in part. Specifically, the Magistrate Judge recommended that Defendant be found liable under the Copyright Act. Second, the Magistrate Judge did not recommend the dismissal of Plaintiffs claim for statutory damages and attorney's fees. According to the Magistrate Judge, it would not be appropriate at the summary judgment stage to dispose of Plaintiff's request for statutory damages and attorney's fees. However, the Magistrate Judge failed to determine whether Plaintiff was entitled to statutory damages and attorney's fees as a matter of law. Third, the Magistrate Judge recommended that Plaintiff's claims under the Lanham act be dismissed. Fourth, the Magistrate Judge concluded that Plaintiff was barred from claiming infringement of moral rights under the Puerto Rico Intellectual Property Law because Plaintiff never registered the photographs with the Puerto Rico Intellectual Property Registry. (Docket No. 90). However, the Report and Recommendation failed to address Defendant's request to dismiss Plaintiffs state law tort and unjust enrichment claims.

On December 18, 2008, Plaintiff filed his objections to the Report and Recommendation. Plaintiff claims that he is entitled to statutory damages and attorney's fees as a matter of law. Additionally, Plaintiff requests that this Court find that Defendant is liable for moral right infringement under VARA.³ (Docket No. 92). On December 22, 2008, Defendant objected to the Report and Recommendation. Defendant alleges that as a matter of law, Plaintiff cannot claim statutory damages and attorney's fees. Moreover, Defendant contends that Plaintiffs state law tort claim should be dismissed because it is preempted by the Copyright Act. (Docket No. 93).

STANDARD OF REVIEW

1. Summary Judgment Standard

"Summary judgment is appropriate when there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law based on the pleadings, depositions, answers to interrogatories, admissions on file, and any affidavits." Thompson v. Coca-Cola Co., 522 F.3d 168, 175 (1st Cir.2008) (citing Fed. R.Civ.P. 56(c)). The issue is "genuine" if it can be resolved in favor of either party. Calero-Cerezo v. U.S. Dep't of Justice, 355 F.3d 6, 19 (1st Cir.2004). A fact is "material" if it has the potential to change the outcome of the suit under governing law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The party moving for summary judgment bears the burden of showing the absence of a genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). "In prospecting for genuine issues of material fact, we resolve all conflicts and draw all reasonable inferences in the nonmovant's favor." Vineberg v. Bissonnette, 548 F.3d 50, 56 (1st Cir. 2008).

Although this perspective is favorable to the nonmovant, once a properly supported motion has been presented before this Court, the opposing party has the burden of demonstrating that a trial-worthy issue exists that would warrant this Court's denial of the motion for summary judgment. Anderson, 477 U.S. at 248, 106 S.Ct. 2505. The opposing party must demonstrate "through submissions of evidentiary quality, that a trialworthy issue persists." Iverson v. City of Boston, 452 F.3d 94, 98 (1st Cir.2006) (internal citations omitted). Moreover, on issues "where [the opposing] party bears the burden of proof, it `must present definite, competent evidence' from which a reasonable jury could find in its favor." United States v. Union Bank for Sav. & Inv. (Jordan), 487 F.3d 8, 17 (1st Cir.2007) (citing United States v. One Parcel of Real Property, 960 F.2d 200, 204 (1st Cir.1992)). Hence, summary judgment may be appropriate, if the non-moving party's case rests merely upon "conclusory allegations, improbable inferences, and unsupported speculation." Forestier Fradera v. Municipality of Mayaguez, 440 F.3d 17, 21 (1st Cir.2006) (citing Benoit v. Technical Mfg. Corp., 331 F.3d 166, 173 (1st Cir. 2003)). It is important to note that throughout this process, this Court cannot make credibility determinations, weigh the evidence, and make legitimate inferences from the facts as they are jury functions, not those of a judge. Anderson, 477 U.S. at 255, 106 S.Ct. 2505.

2. Standard for Reviewing a Magistrate-Judge's Report and Recommendation

Pursuant to 28 U.S.C. §§ 636(b)(1)(B); Fed.R.Civ.P. 72(b); and Local Rule 503; a district court may refer dispositive motions to a United States Magistrate Judge for a Report and Recommendation. See Alamo Rodriguez v. Pfizer Pharmaceuticals, Inc., 286 F.Supp.2d 144, 146 (D.P.R.2003). The adversely affected party may "contest the Magistrate Judge's report and recommendation by filing objections `within ten days of being served' with a copy of the order." United States of America v. Mercado Pagan, 286 F.Supp.2d...