Lang-Correa v. Diaz-Carlo

672 F.Supp.2d 265

David LANG-CORREA, Plaintiff, v. Wilma DIAZ-CARLO, et al., Defendants.

Civil No. 09-1247 (FAB).

United States District Court, D. Puerto Rico.

December 7, 2009.

COPYRIGHT MATERIAL OMITTED

Richard Schell-Asad, San Juan, PR, for Plaintiff.

OPINION & ORDER

BESOSA, District Judge.

Pending before the Court is plaintiff's motion for default judgment against two defendants. (Docket No. 11) Having considered the arguments contained in plaintiff's motion and heard testimony at the default hearing held on November 9, 2009, the Court GRANTS IN PART AND DENIES IN PART the motion for default judgment.

DISCUSSION

I. Background

Procedural Background

On March 12, 2009, plaintiff David Lang-Correa ("Lang" or "plaintiff") filed a complaint against Grupo Editorial Nueva America, Inc. ("Grupo Editorial") and Wilma Diaz-Carlo ("Diaz") (collectively "defendants")¹ alleging a copyright infringement claim pursuant to the Copyright Act of 1976, 17 U.S.C. §§ 101-1332. (Docket No. 1 at ¶¶ 1-4)² On September 16, 2009, the Clerk entered default against Grupo Editorial and Diaz. (Docket No. 10) On October 9, 2009, plaintiff filed a motion for default judgment against both Diaz and Grupo Editorial. (Docket No. 11) A hearing was held on November 9, 2009, to establish damages and support the facts alleged in the complaint. (See Docket No. 18)

Factual Background

The following factual findings are derived from testimony and evidence presented at the November 9, 2009, hearing:

Plaintiff was born on August 8, 1959, and resides in Guaynabo, Puerto Rico. He works as a makeup artist, but also spends a significant amount of his time as a "paso fino" competition judge. The term "paso fino" refers to a particular breed of horse raised in Puerto Rico and other parts of Latin America. Lang spent a period of ten years gathering historical documents and photographs related to the "paso fino" horse. The product of that research is a book entitled Memorias del Paso Fino: El Caballo de Puerto Rico ("Memorias del Paso Fino"). Memorias del Paso Fino includes photographs from different parts of Latin America and Lang's personal collection. Lang holds both federal and Puerto Rico certificates of registration establishing his intellectual property rights with regard to this literary work. (Docket No. 20-2; Plaintiff's Exhibit 2)

Lang met Diaz while working as a makeup artist at a photo shoot for Belleza y Salud magazine, where Diaz worked as an editor. After working with Diaz on this occasion, Lang offered her $2,000 to edit and correct the final manuscript of Memorias del Paso Fino. Diaz accepted, and Lang delivered to her the original manuscript and all original photos that had been compiled for the book. Diaz told Lang that she could use her professional connections with publishing houses to secure the publication of Memorias del Paso Fino. Diaz has not returned the original materials for Memorias del Paso Fino to Lang.

In August of 2008, Memorias del Paso Fino was published without Lang's involvement by Grupo Editorial, a corporation formed and controlled by Diaz. Approximately 1,100 copies of the book were printed by a publishing house in Colombia, with about 340 copies delivered to defendants. The remaining copies are currently held by the publishing house in Colombia. Lang estimates that defendants have sold approximately 200 copies of Memorias del Paso Fino through various bookstores in Puerto Rico at a price of $125 per book. Lang has received no royalties from the sale of Memorias del Paso Fino and has made no agreement with Diaz regarding the sale, marketing, or distribution of the book. Apparently, Diaz did not pay the publishing house in Colombia for printing copies of Memorias del Paso Fino; Lang was later billed for those services.

Although Lang owns the intellectual property rights for the book, defendants maintained possession of approximately 340 of the 1,100 published copies³ of Memorias del Paso Fino, the original manuscript, and the original photographs included in the book. The rest of the 1,100 copies are still at the publishing house in Colombia. On many occasions, Lang has attempted to contact defendants by telephone and e-mail to request the return of the original manuscript and original photographs, but defendants have not responded to his efforts.

Lang testified that he expected to receive profits of $100,000 from the sale of Memorias del Paso Fino, split evenly between first and second printings sold in Puerto Rico, the Dominican Republic, Aruba, and other countries where "paso fino" breeding and competition is popular. He claims that defendants' actions have deprived him and will continue to deprive him of opportunities to expand the goodwill of the book. Lang also testified that his personal reputation has been damaged by defendants' actions.

II. Legal Analysis

A. Default Judgment Standard

Pursuant to Rule 55(b), a plaintiff "must apply to the court for a default judgment" where the amount of damages claimed is not a sum certain. When necessary to effectuate judgment, "the court may conduct hearings or make referrals" for numerous purposes, including "determin[ing] the amount of damages." Fed.R.Civ.P. 55(b). Entry of default, however, "`constitutes an admission of all facts well-pleaded in the complaint'" and precludes a defaulting defendant from contesting liability. See Benitez-Ruiz v. Hospital Buen Pastor, No. 03-1330, 2009 WL 2151285 at *2 (D.P.R. July 14, 2009) (quoting Metropolitan Life Ins. Co. v. Colon Rivera, 204 F.Supp.2d 273, 274-75 (D.P.R.2002)); see also In re The Home Restaurants, Inc., 285 F.3d 111, 114 (1st Cir.2002) ("[I]t is precisely the right to contest liability that a party gives up when it declines to participate in the judicial process."). The court may, however, "examine a plaintiff's complaint to determine whether it alleges a cause of action." Quirindongo Pacheco v. Rolon Morales, 953 F.2d 15, 16 (1st Cir. 1992).

Once default has been entered against a defendant and liability has been established, the only remaining issue for the court is the determination of damages. See id. At this stage, "the trial judge has considerable latitude in determining the amount of damages." See Jones v. Winnepesaukee Realty, 990 F.2d 1, 4 (1st Cir.1993) (citing Sony Corp. v. Elm State Elecs., Inc., 800 F.2d 317, 321 (2d Cir. 1986)).

B. Federal Copyright Infringement Liability

Pursuant to 17 U.S.C. § 501(b), "[t]he legal or beneficial owner of an exclusive right under a copyright is entitled . . . to institute an action for any infringement of that particular right committed while he or she is the owner of it." To establish that action, "a party must prove both control of a valid copyright and copying of original elements of the work by the putative infringer." Coquico, Inc. v. Rodriguez-Miranda, 562 F.3d 62, 66 (1st Cir. 2009) (citing Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991)). To show copying of original elements, a plaintiff must show that defendant actually copied his or her copyrighted material and that "the copying was so egregious as to render the allegedly infringing and infringed works substantially similar." Id. (citing Lotus Dev. Corp. v. Borland Int'l, Inc., 49 F.3d 807, 813 (1st Cir.1995)).

The court is satisfied that Lang has established the liability of both defendants based on the admitted factual allegations of the complaint and evidence presented at the default hearing. To satisfy the requirement of copyright ownership, the complaint alleges that Lang is the sole author and owner of the copyright of Memorias del Paso Fino. (Docket No. 1 at ¶ 7) Furthermore, Lang submitted both federal and Puerto Rico registrations of his copyright ownership with respect to that book. (Docket No. 20-2 at 1; Plaintiff's Exhibit 2)

With regard to the requirement that original elements of Memorias del Paso Fino be copied by Diaz and Grupo Editorial, the complaint alleges that Diaz, through Grupo Editorial, published the original manuscript Lang had submitted for editing services and sold copies of the book in Puerto Rico. (Docket No. 1 at ¶¶ 8-11) Lang also testified at the default hearing that defendants ordered the printing of approximately 1,100 copies of the book, received 340 copies, and sold 200 copies of those received. Furthermore, one of these printed copies was introduced into evidence during the default hearing. (Plaintiff's Exhibit 1) The allegations in the complaint and the evidence presented at the default hearing establish that defendants simply published the original manuscript of Memorias del Paso Fino, thus demonstrating that defendants actually copied Lang's copyrighted material and that the product of that copying was not only substantially similar to the original, but rather, aside from some editing that may have been performed by Diaz, was exactly the same.

Damages

When bringing a claim under 17 U.S.C. § 501(b), a plaintiff may prove actual damages or, as in this case, opt for statutory damages. 17 U.S.C. § 504(a). Pursuant to 17 U.S.C. § 504(c)(1), a plaintiff may recover "statutory damages for all infringements involved in the action, with respect to any one work, . . . in a sum of not less than $750 or more than $30,000 as the court considers just." Where a plaintiff proves "that infringement was committed willfully, the court in its discretion may increase the award of statutory damages to a sum of not more than $150,000." 17 U.S.C. § 504(c)(2).

"Courts have wide discretion to set damages within these statutory limits." Pedrosillo Music, Inc. v. Radio Musical, Inc., 815 F.Supp. 511, 517 (D.P.R.1993) (citing Morley Music Co. v. Dick Stacey's Plaza Motel, Inc., 725 F.2d 1, 3 (1st Cir. 1983); Int'l Korwin Corp. v. Kowalczyk, 855 F.2d 375, 383 (7th Cir.1988)). In exercising this discretion, a court should consider the following factors: "(1) the expenses saved and profits reaped by defendants...