Addressing whether a copyright infringement claim should be dismissed with prejudice where the plaintiff failed to register his copyright prior to filing the lawsuit, the US Court of Appeals for the First Circuit held that dismissal is too harsh, remanding the case for consideration of whether the claim should be dismissed without prejudice or if the plaintiff should be entitled to supplemental allegations. Cortes-Ramos v. Martin-Morales, Case No. 19-1358 (1st Cir. Apr. 13, 2020) (Dyk, J.[1]).
This dispute between Luis Adrian Cortes-Ramos and famous pop star Enrique Martin-Morales (known as Ricky Martin) stems from a 2014 contest. Cortes-Ramos entered a song and music video for the chance to have Martin perform it at the 2014 Federation Internationale de Football Association (FIFA) World Cup opening in Brazil. Cortes-Ramos’s entry was a top-20 finalist, but it did not win the competition. Shortly thereafter, when Martin released a new song titled “Vida,” Cortes-Ramos sued for federal copyright infringement and other claims under Puerto Rican state law, claiming the “Vida” music video was “almost identical” to his 2014 contest entry.
Initially, Cortes-Ramos sued Martin and companies affiliated with Sony Music Entertainment, who sponsored the contest. Martin was voluntarily dismissed from that proceeding, and the district court ultimately dismissed the claims against Sony as well, finding that they were subject to the arbitration provision in the contest agreement. In 2016, Cortes-Ramos filed the lawsuit in question against Martin, but the district court initially dismissed this case as well, finding that the claims against Martin were likewise subject to the arbitration provision.
On appeal, the dismissal in the Martin suit was reversed, with the appellate court ruling that the arbitration provision did not apply since Martin was not a party to the contest agreement nor a third-party beneficiary of it. On remand, the district court granted Martin’s motion to dismiss for failure to state a claim, including the copyright infringement claim, which was dismissed with prejudice. Cortes-Ramos again appealed.
The First Circuit affirmed the district court’s dismissal of the Puerto Rico state law claims. As to the copyright claims, the First Circuit agreed that Cortes-Ramos’s complaint was defective because it did not allege that Cortes-Ramos had pre-registered or registered his copyrightable works, citing the Supreme Court’s recent decision in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC. IP Update, Vol. 22, No. 3. However, the Court disagreed that Cortes-Ramos had failed to plead indirect actual copying and substantial similarity: “Given that there is a reasonable inference that Martin had access to Cortes-Ramos’s music video, we think that [Cortes-Ramos’s] ‘almost identical’ allegation is sufficient to meet [the] burdens of pleading both indirect actual copying and substantial similarity.”
Noting that the complaint’s only remaining deficiency was the failure to allege copyright registration, the First Circuit stated that the district court should not have dismissed the copyright claim with prejudice: “Generally, when a plaintiff’s claim is dismissed for failing to satisfy a pre-suit requirement, the dismissal should be ‘without prejudice’ when the plaintiff may be able to satisfy the requirement in the future.” Cortes-Ramos argued that he should have been allowed to supplement his complaint once the Copyright Office issued a registration for his music video, per FRCP 15(d). Agreeing that “this case appears to be a candidate for a Rule 15(d) supplement,” the Court remanded the case to the district court for consideration of whether Cortes-Ramos should be allowed to supplement his complaint under Rule 15(d) or required to file a new action now that his copyright registration has been issued.
[1] Of the Federal Circuit, sitting by designation.
