TMTV, CORP. v. Mass Productions, Inc.
645 F.3d 464
| 1st Cir. | 2011Background
- TMTV sued Mass Productions and related individuals in Puerto Rico federal court for copyright infringement of the sitcoms 20 Pisos and El Condominio, alleging ownership of outlines, scripts, and characters.
- Logroño contended he authored or substantially contributed to the first three scripts and claimed ownership of the underlying copyrights, while also alleging royalty rights.
- The district court granted summary judgment to TMTV that Morales and Jiménez authored the first three scripts under work-for-hire arrangements, making the original production company the copyright owner.
- The court found El Condominio to be a virtually identical derivative work to 20 Pisos, based on the same setting, characters, and plot elements.
- A jury awarded damages to TMTV, which the district court reduced by the amount TMTV had settled with Televicentro, and there was a ruling on prejudgment interest and attorneys’ fees.
- The First Circuit reviews the district court’s liability ruling de novo and addresses authorship, infringement, settlement effects, prejudgment interest, and attorneys’ fees.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Authorship and ownership of the first three scripts | Morales/Jiménez authored; work-for-hire to TMTV; Logroño lacks authorship claim. | Logroño substantially contributed to outlines/plotting and could own copyright in part. | Morales/Jiménez are authors; ownership vested in TMTV as work-for-hire (assignment later obtained). |
| Infringement and substantial similarity | El Condominio copied from 20 Pisos in expression and overall structure. | Differences exist; some new scenes/traits negate substantial similarity. | El Condominio is a virtually identical derivative; substantial similarity established. |
| Effect of Televicentro settlement on damages | Settlement does not bar recovery; damages should reflect infringement by defendants alone. | Settlement with Televicentro bars any further recovery against related defendants. | Settlement did not extinguish or preclude recovery; no mutual release or issue preclusion; offset approved to avoid double recovery. |
| Prejudgment interest | Prejudgment interest appropriate to compensate for loss of royalties. | Copyright Act does not expressly authorize prejudgment interest; rate should be reconsidered. | Prejudgment interest awarded within district court’s discretion; rate and approach upheld. |
| Attorneys' fees | Fees should be recoverable as prevailing party; registration issue should not bar all fees. | Fees barred by registration requirement of 17 U.S.C. § 412; no fee shift. | Fees barred for the scripts due to registration; no fee recovery awarded. |
Key Cases Cited
- Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25 (1st Cir. 2001) (requires showing ownership and copying for infringement; substantial similarity framework)
- Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930) (stock characters not protectable; ideas not protected)
- Coquico, Inc. v. Rodríguez-Miranda, 562 F.3d 62 (1st Cir. 2009) (stock elements and derivative works analysis in copyright)
- Torres v. E.I. Dupont De Nemours & Co., 219 F.3d 13 (1st Cir. 2000) (assignment and ownership principles in copyright)
- McDermott, Inc. v. AmClyde, 511 U.S. 202 (Supreme Court 1994) (settlement and offset principles in tort and related actions)
- Merle v. West Bend Co., 97 P.R. Dec. 403 (Puerto Rico Decisional) (local law context for offset/settlement in copyright)