Latin Am. Music Co. v. Spanish Broad. Sys., Inc.

232 F.Supp.3d 384

LATIN AMERICAN MUSIC COMPANY, INC., also known as LAMCO, and Asociación de Compositores y Editores de Musica Latinoamericana, also known as ACEMLA, Plaintiffs,

v.SPANISH BROADCASTING SYSTEM, INC., and Raul Alarcon, Jr., Defendants.

No. 13–cv–1526 (RJS)

United States District Court, S.D. New York.

Signed February 6, 2017

James George Sammataro, Stroock & Stroock & Lavan, LLP, Miami, FL.

Kelly Douglas Talcott, The Law Office of Kelly D. Talcott, Sea Cliff, NY, for Plaintiffs.

James Charles Fitzpatrick, Meaghan Christina Gragg, Hughes Hubbard & Reed LLP, New York, NY, for Defendants.

OPINION AND ORDER

RICHARD J. SULLIVAN, District Judge:

Plaintiffs Latin American Music Company, Inc. ("LAMCO") and Asociación de Compositores y Editores de Musica Latinoamericana de Puerto Rico, Inc. ("ACEMLA") bring this action for copyright infringement against Defendant Spanish Broadcasting System, Inc. ("SBS").¹ Specifically, Plaintiffs allege that Defendant improperly broadcast thirteen songs owned by Plaintiffs on its Spanish-language radio stations without first obtaining licenses from Plaintiffs. On September 23, 2015, the Court denied Defendant's motion for partial summary judgment, which was filed prior to the completion of discovery, finding that genuine issues of material fact existed as to Defendant's contention that it had valid licenses to play certain of the songs. (Doc. No. 78.) On March 1, 2016, discovery in this matter closed. (Doc. No. 83.) Now before the Court is Defendant's second motion for partial summary judgment. For the reasons that follow, Defendant's motion is granted in part and denied in part.

I. BACKGROUND

A. Facts

Plaintiff LAMCO is a music publisher that administers copyrighted musical works of Puerto Rican and foreign composers; Plaintiff ACEMLA is an organization that licenses performance rights to musical works; and Defendant SBS is a radio broadcaster that owns and operates commercial radio and television stations across the United States and Puerto Rico.² (Def. 56.1 ¶¶ 1–3.) Background information on the parties and the basic facts underlying their dispute were set forth in the Court's September 23, 2015 opinion, and need not be repeated here. (See Doc. No. 78.) Accordingly, the following section focuses on the songs at issue on the instant motion, first discussing the songs as to which the parties dispute ownership, and second discussing those for which Defendant contends there is no evidence of infringement.

1. Disputes Over Ownership

As to seven of the songs addressed by Defendant's motion—Abuelita , Aguanile , Ausencia , Mi Gente , Soy Sensacional , Mantecadito , and Arroz con Bacalao —the parties dispute whether Plaintiffs currently own the rights to these songs. However, there is no dispute that one of two entities other than Plaintiffs—Fania Publishing Co., Inc. ("Fania Publishing") or Fania Records, Co. ("Fania Records")—registered copyrights for each of these songs in thè 1970s, decades before any purported transfer of copyright ownership to Plaintiffs. (Def. 56.1 ¶ 59.) For convenience, the Court will refer to these seven songs as the "Fania Works."

a. Abuelita , Aguanile , and Ausencia

In 1970 and 1971, Fania Publishing registered Abuelita , Aguanile , and Ausencia with the Copyright Office. (Def. 56.1 ¶¶ 8, 13, 17.) The registration certificate for each of these songs identifies Willie Colon and Hector Perez (sometimes under his pseudonym, Hector Lavoe) as the co-authors. (Id. ¶¶ 9, 14, 18.)

Decades later, in 1999 and 2000, Plaintiffs recorded agreements pursuant to which one of Hector Lavoe's heirs purportedly transferred the rights in Abuelita , Aguanile , and Ausencia to Plaintiffs. (Def. 56.1 ¶ 61; Pl. Counter 56.1 ¶ 6.) Also in 1999, Plaintiffs registered copyrights for these three songs. (Pl. Counter 56.1 ¶ 7.)

b. Mi Gente

In 1975, Fania Publishing registered Mi Gente with the Copyright Office. (Def. 56.1 ¶ 21.) The registration certificate lists "Johnny Pacheco" as the author of the work. (Id. ¶ 22.)

Plaintiffs' alleged ownership of the rights to Mi Gente stems from the same agreements with the Lavoe heir discussed above. (Def. 56.1 ¶ 61; Pl. Counter 56.1 ¶ 6.) Plaintiffs recorded these agreements in 1999 and 2000, naming Hector Lavoe as the author of Mi Gente instead of Pacheco. (Def. 56.1 ¶ 63; Pl. Counter 56.1 ¶ 6.) As of Plaintiffs' response to Defendant's 56.1 statement, Plaintiffs' application to register Mi Gente remains pending. (Def. 56.1 ¶ 65.)

c. Soy Sensacional and Mantecadito

In 1973, Fania Records registered Hommy —a Latin opera that includes both Soy Sensacional and Mantecadito with the Copyright Office. (Def. 56.1 ¶¶ 27–28.) The registration certificate lists "Larry Kahn a/k/a Larry Harlow" and "Jenaro Alvarez a/k/a Heny Alvarez" as the co-authors of the work. (Id. ¶ 29.) In the same year, Fania Records registered Soy Sensacional and Mantecadito individually with the Copyright Office. (Id. ¶¶ 31, 33.)

In 1996, Plaintiffs recorded with the Copyright Office agreements between themselves and "Jenaro Alvarez Domenech," pursuant to which Plaintiffs purportedly obtained rights to a number of Jenaro Alvarez Domenech's songs, including Soy Sensacional and Mantecadito. (Pl. Counter 56.1 ¶ 1.) In 2003, Plaintiffs registered copyrights to Soy Sensacional and Mantecadito , listing only Jenaro Alvarez Domenech as the author. (Def. 56.1 ¶ 66; Pl. Counter 56.1 ¶ 2.)

d. Arroz con Bacalao

In 1979, Fania Publishing registered Arroz con Bacalao with the Copyright Office. (Def. 56.1 ¶ 39.) The registration certificate lists "Johnny Alvarez" as the author of the work and indicates that Fania Publishing obtained ownership of the copyright via a songwriter's agreement with Alvarez. (Id. ¶ 40–41.)

In 2003, Plaintiffs recorded purported transfers of Arroz con Bacalao from "Jenaro Alvarez Domenech" (also listed as "Genaro Alvarez Domenech" and "Jenaro Heny Alvarez"). (Pl. Counter 56.1 ¶ 3.) The same year, Plaintiffs registered a copyright in Arroz con Bacalao ; the certificate lists Jenaro Heny Alvarez as author. (Id. ¶ 4.)

2. Alleged Infringing Activity

The parties also dispute whether there is any evidence that Defendant infringed four of the Fania Works—Ausencia , Soy Sensacional , Mantecadito , and Arroz con Bacalao —along with three other songs—Aniversario , La Malanga a/k/a La Malanga Brava , and Chumalacantela /Maquinolandera. Plaintiffs allege that Defendant's radio stations played these songs, relying exclusively on the personal recollection of their president, Raul Bernard, who has submitted a declaration under penalty of perjury in which he states:

In connection with my personal investigation of SBS in advance of filing the present lawsuit, I listened to SBS stations in an effort to determine whether SBS was broadcasting songs that were part of ACEMLA's catalog. Paragraph 23 of the Third Amended Complaint in this case lists the dates, times, and SBS stations on which I heard the songs at issue in this lawsuit performed.

(Doc. No. 122, Bernard Decl. ¶ 12.) Paragraph 23 of the third amended complaint in turn sets forth a list of the radio broadcasts Bernard recalls, identifying the specific dates, times, and radio stations for each. (Doc. No. 24, Third Am. Compl. ¶ 23.) Bernard's recollections are not supported by any documentary evidence in the record; although Plaintiffs previously represented to Defendant that they possessed audio recordings of the alleged unauthorized broadcasts, no such recordings were produced during discovery. (Def. 56.1 ¶ 74–75.)

B. Procedural History

Plaintiffs initiated this action on March 7, 2013. (Doc. No. 1.) On September 23, 2015, the Court denied a motion for partial summary judgment by Defendant, which was based on a limited discovery record, finding that genuine issues of material fact existed as to Defendant's contention that it had valid licenses to play the songs at issue. (Doc. No. 78.) The parties completed discovery on March 1, 2016. (Doc. No. 83.)

On April 22, 2016, Defendant filed the instant motion for partial summary judgment, in which Defendant argues that (1) Plaintiffs cannot prove infringement of the Fania Works because they cannot prove their ownership of the works and because Defendant possessed valid licenses to perform these songs, (2) Plaintiffs have not introduced any evidence of infringement of certain songs, (3) Plaintiffs are limited to statutory damages, and (4) Defendant qualifies as an "innocent infringer." (Doc. Nos. 98, 114.) The motion was fully briefed as of June 9, 2016. (Doc. No. 127.)

II. LEGAL STANDARD

Pursuant to Rule 56(a) of the Federal Rules of Civil Procedure, summary judgment should be rendered "if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). There is "no genuine dispute as to any material fact" where (1) the parties agree on all facts (that is, there are no disputed facts); (2) the parties disagree on some or all facts, but a reasonable fact-finder could never accept the nonmoving party's version of the facts (that is, there are no genuinely disputed facts), see Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp. , 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) ; or (3) the parties disagree on some or all facts, but even on the nonmoving party's version of the facts, the moving party would win as a matter of law (that is, none of the factual disputes are material), see Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

In determining whether a fact is genuinely disputed, the court "is not to weigh the evidence but is instead required to view the evidence in the light most favorable to the party opposing summary judgment, to draw all reasonable inferences in favor of that party, and to eschew credibility assessments." Weyant v. Okst , 101 F.3d 845, 854 (2d Cir. 1996). Nevertheless, to show a genuine dispute, the nonmoving party must provide "hard...