13 F.4th 43
1st Cir.2021Background
- Enrique Laguerre published La Llamarada (1935) and La Resaca (1949); both works entered the public domain long before 2001–2003.
- Roberto Ramos Perea adapted those novels into theatrical scripts in 2001 and 2003 (the "Adaptations") and later registered copyrights in 2015.
- Laguerre signed contracts with Producciones Teatro Caribeño, Inc. (Caribeño) authorizing Ramos to create stage adaptations and that, on their face, purported to reserve printing rights to Laguerre; Laguerre separately contracted with Editorial Cultural to publish (2002–2003).
- Editorial Cultural printed and sold thousands of copies of the Adaptations in 2013 (including sales to the Puerto Rico Department of Education).
- The district court granted summary judgment to Editorial on Ramos’s claim (finding Laguerre had reserved printing rights), a jury later awarded $266,350 to Laguerre’s heirs for infringement, post-trial motions produced vacatur and reinstatement, and the matter reached the First Circuit.
- The First Circuit held as a matter of law that the underlying novels were in the public domain when Ramos wrote the Adaptations, that Ramos therefore owned the derivative copyrights (including printing/distribution rights), and that Editorial is liable for infringement; the damages award is affirmed and directed to Ramos.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Who owned the copyrights/printing rights to the Adaptations? | Ramos: the original novels were in the public domain when he adapted them, so he owns the derivative copyrights including printing/distribution. | Editorial: Laguerre retained printing rights via the Laguerre–Caribeño (and Laguerre–Editorial) contracts, so Ramos lacked publishing rights. | Held: Novels were in the public domain; Ramos owns the derivative copyrights and printing/distribution rights. |
| Do the Laguerre–Caribeño contracts transfer Ramos’s printing rights? | Ramos: he was not a party or represented by Caribeño; the contracts do not bind or convey his rights. | Editorial: Caribeño acted as Ramos’s authorized agent and the contracts conveyed printing rights. | Held: Contracts do not show Ramos authorized Caribeño to convey his rights; they do not transfer Ramos’s copyrights. |
| Is Editorial liable for infringement for the 2013 publication? | Ramos: Editorial printed and sold the Adaptations without his authorization—constitutes infringement. | Editorial: It had authorization from Laguerre (via contracts) or, alternatively, an implied license from Ramos. | Held: Editorial distributed Ramos’s adaptations without his authorization and is liable; implied license argument unsupported on the record. |
| Are the damages awarded to the heirs transferable to Ramos? | Ramos: the jury’s monetary calculation (publisher revenues minus expenses) applies equally to him as the true owner; he asks transfer. | Editorial: did not meaningfully contest the damages amount on appeal. | Held: Damages award ($266,350) is affirmed and directed to be entered in Ramos’s favor; no remand required. |
Key Cases Cited
- Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663 (2014) (describing exclusive rights conferred by copyright, including reproduction and derivative works)
- Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) (elements of copyright infringement and originality requirement)
- Stewart v. Abend, 495 U.S. 207 (1990) (copyright terms under the pre-1978 statute)
- Golan v. Holder, 565 U.S. 302 (2012) (works enter public domain when copyright term expires)
- Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) (scope of exclusive rights and public-domain consequences)
- Waldman Publ'g Corp. v. Landoll, Inc., 43 F.3d 775 (2d Cir. 1994) (copyright protection for material added to public-domain underlying works)
- Latin Am. Music Co., Inc. v. Media Power Grp., Inc., 705 F.3d 34 (1st Cir. 2013) (summary of infringement proof and ownership requirements)
- Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881 (2019) (clarifying timing of registration for commencing an infringement suit)