Case 3:11-cv-01530-BJM Document 169 Filed 12/12/13 Page 1 of 18
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF PUERTO RICO
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`Civil No. 11-1530 (BJM)
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`DENNIS MARIO RIVERA,
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`Plaintiff,
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`v.
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`MÉNDEZ & COMPAÑIA, et al.,
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`Defendants.
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`OPINION AND ORDER
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`In an amended complaint, Dennis Mario Rivera sued Méndez & Compañia
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`(“Méndez”), HNK Americas, Luis Álvarez, Triple-S Propiedad, Inc. and others, alleging
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`copyright infringement. Docket No. 83 (“Compl.”). The parties have consented to
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`proceed before a magistrate judge. Docket No. 107. Before the court is plaintiff’s
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`motion for summary judgment and defendants’ motion for partial summary judgment.
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`Docket Nos. 120, 121 (“Pl. Mot.”), 124 (“Def. Mot.”), 125. Each side has opposed the
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`other, and plaintiff additionally submitted a reply. Docket Nos. 128, 132, 148. In light of
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`the findings of fact and legal discussion set forth below, plaintiff’s motion for summary
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`judgment is GRANTED IN PART and DENIED IN PART, and defendants’ motion for
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`partial summary judgment is DENIED.
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`SUMMARY JUDGMENT STANDARD
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`Summary judgment is appropriate when “the movant shows that there is no
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`genuine dispute as to any material fact and the movant is entitled to judgment as a matter
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`of law.” Fed. R. Civ. P. 56(a). A fact is material only if it “might affect the outcome of
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`the suit under the governing law,” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
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`(1986), and “[a] ‘genuine’ issue is one that could be resolved in favor of either party.”
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`Calero-Cerezo v. U.S. Dep’t of Justice, 355 F.3d 6, 19 (1st Cir. 2004). The court does not
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`weigh facts, but instead ascertains whether the “evidence is such that a reasonable jury
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`Case 3:11-cv-01530-BJM Document 169 Filed 12/12/13 Page 2 of 18
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`Rivera v. Méndez & Compañia, Civil No. 11-1530 (BJM)
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`2
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`could return a verdict for the nonmoving party.” Leary v. Dalton, 58 F.3d 748, 751 (1st
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`Cir. 1995).
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`The movant must first “inform[] the district court of the basis for its motion,” and
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`identify the record materials “which it believes demonstrate the absence of a genuine
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`issue of material fact.” Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986); R. 56(c)(1).
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`If this threshold is met, the opponent “must do more than simply show that there is some
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`metaphysical doubt as to the material facts” to avoid summary judgment. Matsushita
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`Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). The nonmoving party
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`may not prevail with mere “conclusory allegations, improbable inferences, and
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`unsupported speculation” for any element of the claim. Medina-Muñoz v. R.J. Reynolds
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`Tobacco Co., 896 F.2d 5, 8 (1st Cir. 1990). Still, the court draws inferences and evaluates
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`facts “in the light most favorable to the nonmoving party,” Leary, 58 F.3d at 751, and the
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`court must not “superimpose [its] own ideas of probability and likelihood (no matter how
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`reasonable those ideas may be) upon the facts of the record.” Greenburg v. P.R. Maritime
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`Shipping Auth., 835 F.2d 932, 936 (1st Cir. 1987).
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`BACKGROUND
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`This summary of the facts is guided by the parties’ Local Rule 56 statements of
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`uncontested facts. See Docket Nos. 120 (“Pl. SUF”), 125 (“Def. SUF”), 131, 133, 149.1
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`Dennis Mario Rivera is an artist of more than 30 years based in Puerto Rico.
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`Méndez & Compañia is a Puerto Rico company that serves as the exclusive distributor of
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`Heineken beer in Puerto Rico, and sponsors the annual Puerto Rico Heineken Jazz Fest
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`1 Local Rule 56 requires parties at summary judgment to supply brief, numbered
`statements of facts, supported by citations to admissible evidence. It “relieve[s] the district court
`of any responsibility to ferret through the record to discern whether any material fact is genuinely
`in dispute,” CMI Capital Market Inv. v. González-Toro, 520 F.3d 58, 62 (1st Cir. 2008), and
`prevents litigants from “shift[ing] the burden of organizing the evidence presented in a given case
`to the district court.” Mariani-Colón v. Dep’t of Homeland Sec., 511 F.3d 216, 219 (1st Cir.
`2007). The rule “permits the district court to treat the moving party’s statement of facts as
`uncontested” when not properly opposed, and litigants ignore it “at their peril.” Id.
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`Case 3:11-cv-01530-BJM Document 169 Filed 12/12/13 Page 3 of 18
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`Rivera v. Méndez & Compañia, Civil No. 11-1530 (BJM)
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`3
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`(“PRHJF”). Luis Álvarez is a Vice President at Méndez and the Executive Producer of
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`PRHJF. Pl. SUF ¶¶ 1–5. The Puerto Rico Heineken Jazz Fest is a music festival,
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`established in 1991, and which raises funds for students of the Berklee College of Music.
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`Def. SUF ¶ 1.
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`Sometime before the 1998 festival, Méndez approached Rivera and commissioned
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`him to create a visual design that included the Heineken logo and featured that year’s
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`artist, to be used in various promotional and marketing materials (posters, t-shirts, bus
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`shelters, etc.) for the 1998 PRHJF. Compl. ¶¶ 16–17; Def. SUF ¶¶ 2–3. For each festival
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`starting in 1998 through 2009, Rivera created one such design (for a total of twelve
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`pieces). Pl. SUF ¶ 10. Rivera was given a significant amount of artistic freedom to
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`create these works. Id. ¶¶ 100–02, 104. Upon completion of each piece, Rivera would
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`deliver to Méndez the original work, framed, and the work in a digital format on a disk.
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`Def. SUF ¶ 7. For each piece, he charged Méndez $5000 for the original artwork, $4000
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`for “logo design,” and an additional sum for the original’s framing. See, e.g., Docket No.
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`125-8, at 10–18. Prior to the festival’s twentieth anniversary in 2010, Álvarez met with
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`Rivera at a restaurant in San Juan and notified him that another artist would be designing
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`the artwork for the 2010 PRHJF. Pl. SUF ¶¶ 11–12. During this meeting, Rivera claims
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`he told Álvarez that he was fine with this change, but that they could no longer use any of
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`his prior artwork. Id. ¶ 165; Docket No. 146-9. Álvarez claims Rivera never made such
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`a statement. Docket No. 133-1, at 2.
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`Although Méndez did not commission Rivera to produce a new piece for the 2010
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`festival, Méndez used at least six of Rivera’s previous designs in a collage that was
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`placed on festival programs and commemorative merchandise sold during the 2010
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`festival. Pl. SUF ¶ 116; Def. SUF ¶ 10. Rivera did not explicitly authorize the creation
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`of this collage. Pl. SUF ¶ 118. Additionally, Rivera’s artworks are still displayed on the
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`Méndez &
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`Compañia
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`(www.mendezcopr.com)
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`and
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`PRHJF
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`websites
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`(www.prheinekenjazz.com). Pl. SUF ¶ 17; Docket Nos. 133-3, 133-4. On the Méndez
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`Case 3:11-cv-01530-BJM Document 169 Filed 12/12/13 Page 4 of 18
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`Rivera v. Méndez & Compañia, Civil No. 11-1530 (BJM)
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`website, a page describes the history of the Heineken Jazz Fest and allows the user to
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`scroll through year-by-year, to see the artwork from each annual event, including all
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`twelve of Rivera’s works. Docket No. 133, Additional Fact ¶ 7.
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`Rivera registered all twelve artworks at issue with the U.S. Copyright Office on
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`April 27, 2011. Docket No. 120-4. He brought suit against defendants in June 2011 for
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`copyright infringement, seeking injunctive relief and damages.
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`DISCUSSION
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`Plaintiff Rivera moves for summary judgment on his copyright infringement
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`claim. To prevail, a plaintiff must demonstrate an absence of a genuine issue of material
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`fact as to: 1) ownership of copyright, and 2) defendants’ infringement. Johnson v.
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`Gordon, 409 F.3d 12, 17 (1st Cir. 2005) (“two elements must be proven: (1) ownership of
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`a valid copyright, and (2) copying of constituent elements of the work that are original”).
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`Defendant Méndez argues that its use of Rivera’s artwork is within the scope of implied
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`licenses Rivera granted to Méndez each time an artwork was commissioned and
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`delivered. Méndez also asserts a fair use defense with respect to the display of Rivera’s
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`artwork on the Méndez & Compañia and PRHJF websites. Lastly, Méndez moves for
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`partial summary judgment on Rivera’s claim for damages. Each issue will be discussed
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`below in turn.
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`I.
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`Copyright Infringement
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`To establish copyright infringement, a plaintiff must first demonstrate ownership
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`of a valid copyright. Johnson, 409 F.3d at 17; see also Feist Publ’ns, Inc. v. Rural Tel.
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`Serv. Co., 499 U.S. 340, 361 (1991). The burden of proving copyright ownership is
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`borne by the plaintiff. Grubb v. KMS Patriots, L.P., 88 F.3d 1, 3, 5 (1st Cir. 1996).
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`Registration with the U.S. Copyright Office within five years of the work’s first
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`publication is prima facie evidence of copyright ownership, and the burden shifts to the
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`opposing party to demonstrate invalidity of the copyright. 17 U.S.C. § 410(c); Lotus Dev.
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`Corp. v. Borland Int’l, Inc., 49 F.3d 807, 813 (1st Cir. 1995). Registration obtained after
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`Case 3:11-cv-01530-BJM Document 169 Filed 12/12/13 Page 5 of 18
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`Rivera v. Méndez & Compañia, Civil No. 11-1530 (BJM)
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`five years benefits from no presumption, and the weight given to such a registration is
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`within the discretion of the court. 17 U.S.C. § 410(c); Brown v. Latin Am. Music Co.,
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`Inc., 498 F.3d 18, 23–24 (1st Cir. 2007).
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`In this case, Rivera registered all twelve artworks at issue on April 27, 2011. See
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`Docket No. 120-4. The first publication date for these pieces range from 1998 to 2009.
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`Id. Thus, the registrations are prima facie evidence of valid copyright ownership for only
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`some of the artworks (those with a first publication date on or after April 27, 2006).
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`However, Méndez has produced no evidence to demonstrate why Rivera’s claimed
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`copyright is not valid, and in fact it admits that Rivera is the “copyright owner of the
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`artworks” at issue. SUF ¶ 9. Accordingly, I find that Rivera has established ownership of
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`valid copyright and has satisfied the first prong of his copyright infringement claim.
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`Summary judgment as to the issue of copyright ownership is granted. See Fed. R. Civ. P.
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`56(g) (court may enter order finding any material fact not in dispute and “treating the fact
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`as established in the case”)
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`With respect to the second prong, a plaintiff must show “(a) that the defendant
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`actually copied the work as a factual matter,” and “(b) that the defendant’s copying of the
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`copyrighted material was so extensive that it rendered the infringing and copyrighted
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`works ‘substantially similar.’” Airframe Sys., Inc. v. L-3 Comms. Corp., 658 F.3d 100,
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`105–06 (1st Cir. 2011) (quoting Situation Mgmt. Sys., Inc. v. ASP Consulting LLC, 560
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`F.3d 53, 58 (1st Cir. 2009)) (further citations omitted). Absent direct evidence of
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`copying, actual copying may be inferred where “the alleged infringer had access to the
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`copyrighted work” and “the offending and copyrighted works are so similar that the court
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`may infer that there was factual copying (i.e., probative similarity).” Lotus Dev. Corp.,
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`49 F.3d at 813. The probative similarity inquiry “is somewhat akin to, but different than,
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`the requirement of substantial similarity.” Johnson, 409 F.3d at 18. Substantial similarity
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`exists where “a reasonable, ordinary observer, upon examination of the two works, would
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`‘conclude that the defendant unlawfully appropriated the plaintiff’s protectable
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`Rivera v. Méndez & Compañia, Civil No. 11-1530 (BJM)
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`expression.’” T-Peg, Inc. v. Vt. Timber Works, Inc., 459 F.3d 97, 112 (1st Cir. 2006)
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`(quoting Johnson, 409 F.3d at 18). “Summary judgment on substantial similarity is
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`‘unusual’ but can be warranted on the right set of facts.” T-Peg, 459 F.3d at 112.
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`Rivera appears to claim at least two distinct sets of infringing activity: (1) use and
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`display of his artwork in a collage that commemorates the twentieth anniversary of
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`PRHJF, and (2) display of his artwork on the Méndez & Compañia and PRHJF websites.
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`In both instances, there is compelling evidence of copying in-fact. It is undisputed that
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`Méndez had access to Rivera’s artwork—in the form of the original, and in digital form.
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`Def. SUF ¶ 7. Méndez also admits to use and reproduction of Rivera’s prior artwork to
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`create the 2010 anniversary collage. Pl. SUF ¶ 116; Def. SUF ¶ 10. And the websites
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`clearly reproduce and display substantial portions of the artworks at issue, such that they
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`could not be reproduced without copying-in-fact. See, e.g., Docket Nos. 133-3, 133-4.
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`However, Rivera falls short in establishing substantial similarity between the
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`copyrighted works and the infringing works, as he appears to conflate the concepts of
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`probative similarity with substantial similarity. After noting defendants’ access to his
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`works and the “striking similarity” between the copyrighted works and the infringing
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`works, Rivera asserts in a conclusory fashion that the substantial similarity inquiry is
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`satisfied. Pl. Mot. at 15–16. Plaintiff does not provide details on how much of the
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`artworks were copied and used in the allegedly infringing collage or the website. “It is
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`not enough merely to mention a possible argument in the most skeletal way, leaving the
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`court to do counsel's work, create the ossature for the argument, and put flesh on its
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`bones.” United States v. Zannino, 895 F.2d 1 (1st Cir. 1990). Given this lack of
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`argumentation, it cannot be said that a reasonable jury must find that the defendants
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`unlawfully appropriated the plaintiff’s protectable expression. I find that Rivera has not
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`met his burden of establishing the absence of a genuine issue of material fact with respect
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`to substantial similarity. Thus, plaintiff’s motion for summary judgment as to
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`infringement must be denied.
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`Case 3:11-cv-01530-BJM Document 169 Filed 12/12/13 Page 7 of 18
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`Rivera v. Méndez & Compañia, Civil No. 11-1530 (BJM)
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`II.
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`Implied License
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`Even assuming ownership of copyright and infringement, Méndez argues it is not
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`liable because Rivera granted it an irrevocable, implied license to use, reproduce, and
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`display the works.
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`Federal copyright law provides that a transfer of copyright ownership must
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`generally be in writing and signed by the copyright owner. 17 U.S.C. § 204(a); see Latin
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`Am. Music Co. v. Archdiocese, 499 F.3d 32, 42 (1st Cir. 2007). However, this
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`requirement does not apply to the grant of nonexclusive licenses. See 17 U.S.C. § 101;
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`see also John G. Danielson, Inc. v. Winchester-Conant Props., Inc., 322 F.3d 26, 40 (1st
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`Cir. 2003). The owner of a copyright may grant such nonexclusive licenses orally, or
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`such licenses may be implied from conduct indicating the owner’s intent to allow a
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`licensee to use the work. Id. “Uses of a copyrighted work that stay within the bounds of
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`an implied license do not infringe the copyright.” Estate of Hevia v. Portrio Corp., 602
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`F.3d 34, 41 (1st Cir. 2010). The burden of proving the existence of such a license is on
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`the licensee party claiming its protection. Id. Moreover, “implied licenses are found only
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`in narrow circumstances.” Id.
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`“The touchstone for finding an implied license is intent.” Id. (internal quotations
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`omitted). The ultimate inquiry is “whether the totality of the parties’ conduct indicates an
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`intent to grant such permission.” Id. (internal quotations omitted). In determining
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`whether an implied license was granted, courts look to various factors, including: (1)
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`“whether the licensee requested the work,” (2) “whether the creator made and delivered
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`that work,” and (3) “whether the creator intended that the licensee would copy and make
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`use of the work.” Id.
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`In this case, the evidence clearly indicates Rivera granted Méndez an implied
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`license to use, reproduce, and display his artworks. It is undisputed that Méndez, the
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`licensee, requested Rivera to create the twelve artworks at issue. Compl. ¶ 16–17.
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`Accordingly, Rivera created and delivered the artworks to Méndez, with the intent that
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`Case 3:11-cv-01530-BJM Document 169 Filed 12/12/13 Page 8 of 18
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`Rivera v. Méndez & Compañia, Civil No. 11-1530 (BJM)
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`Méndez would “reproduce, display, and distribute copies” of the works in marketing
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`materials to promote each annual PRHJF. Compl. ¶ 18.
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`The real dispute centers on the scope of the implied license—namely, its duration
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`and extent. Rivera claims he granted Méndez limited one-year licenses for each of the
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`artworks, such that the licenses expired at the end of each annual PRHJF; and thus when
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`Méndez used and reproduced Rivera’s artwork at the 2010 PRHJF, it was infringing on
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`his exclusive rights under federal copyright laws. Docket No. 148, at 9–10. In response,
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`Méndez argues that the implied license was of indefinite duration and irrevocable.
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`Docket No. 132, at 2.
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`Determining the scope of an implied license is an objective inquiry. Danielson,
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`322 F.3d at 42. The focus is not on the parties’ subjective intent but their objective
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`manifestation of it. Id. On the record before me, there exists a genuine issue of material
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`fact as to whether the parties intended for the implied license to be of a limited or
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`indefinite duration. The record lacks evidence of statements or conduct that indicate
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`whether Rivera intended for Méndez to be able to use his artwork beyond the year in
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`which it was commissioned. It is also unclear whether Méndez objectively manifested an
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`intent to procure from Rivera a license to use the artworks for more than the year in
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`which they were made. The record so far only establishes that for each year starting 1998
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`through 2009, Méndez commissioned Rivera to create one artwork representing that
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`year’s festival. 2 Both parties were aware and intended that the artwork be used to
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`promote the event that year. Beyond this base of agreement, it is difficult to say whether
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`the parties had any other intended uses for the artworks.
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`2 Méndez points out that it commissioned Rivera to create two works in 1999, because
`the musician originally scheduled (Chucho Valdés) was unable to attend. Docket No. 133,
`Additional Facts ¶ 2. The Chucho Valdés work was used in a subsequent year. Id. ¶ 4. This
`slight twist does not affect the court’s calculus because it does not shed light on the parties’ intent
`at the time of contracting for these works.
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`Rivera v. Méndez & Compañia, Civil No. 11-1530 (BJM)
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`Méndez notes that Rivera was aware that the artwork would be used to brand each
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`event, and the artwork would be used on PRHJF merchandise such as posters, t-shirts,
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`coasters, CDs, that by their nature would be available for sale after the event (at least
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`until the merchandise sold out). It is true that such awareness would tend to show Rivera
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`knew his artwork from prior years would still be available in the form of merchandise
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`past the immediate festival. But this awareness does not necessarily mean Rivera
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`intended to allow Méndez to use the artworks indefinitely and create collages therefrom
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`for future events. Thus, there is a genuine issue of material fact which precludes
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`summary judgment on this defense.
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`In a last ditch effort, Rivera contends that any implied license granted to Méndez
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`was revoked upon the filing of this action. Docket No. 148, at 10. Méndez counters that
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`the implied licenses at issue here are supported by consideration, and thus are
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`irrevocable.3 Docket No. 132, at 6. Rivera’s claim that any implied license granted was
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`terminated upon the filing of an infringement suit has been squarely rejected by other
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`circuit courts. See, e.g., Lulirama Ltd. v. Axcess Broad. Servs., Inc., 128 F.3d 872, 882
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`(5th Cir. 1997). Those same courts have held that implied licenses supported by
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`consideration are irrevocable. See Asset Mktg. Sys., Inc. v. Gagnon, 542 F.3d 748, 757
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`(9th Cir. 2008); Lulirama, 128 F.3d at 882 (“[A] nonexclusive license supported by
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`consideration is a contract”). In any event, a genuine question remains as to whether
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`3 Méndez also asserts that termination of transfers of copyright must be made in writing
`pursuant to 17 U.S.C. § 203. But that provision is inapplicable here as Rivera is not seeking to
`exercise his right of termination under § 203, but rather appears to be asserting an argument for
`termination under contract principles. See Korman v. HBC Florida, Inc., 182 F.3d 1291, 1297
`(11th Cir. 1999) (noting that § 203 is not meant to convert casual oral licenses into thirty-five
`year “straitjacket[s]” and “if state law provides that licenses of indefinite duration may be
`terminated in less than 35 years, it is state law and not section 203 that governs the question of
`termination”).
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`Rivera v. Méndez & Compañia, Civil No. 11-1530 (BJM)
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`Méndez exceeded the scope of the implied license, and whether its conduct amounted to
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`infringement of Rivera’s exclusive rights.
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`III.
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`Fair Use Defense
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`Méndez also seeks a determination that its displays of Rivera’s artwork on
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`Méndez & Compañia and PRHJF’s websites constitute fair use. Docket No. 132, at 10.
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`“Fair use” is a defense that allows a court to avoid the rigid application of the
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`Copyright Act when such application would stifle the very creativity the law was
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`designed to foster. See Stewart v. Abend, 495 U.S. 207, 236 (1990). The “fair use”
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`defense permits the use of copyrighted materials for certain purposes, including parody,
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`criticism, comment, teaching, news reporting, or research. Campbell v. Acuff-Rose Music
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`Co., 510 U.S. 569, 576–77 (1994).
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`Section 107 of the Copyright Act provides a list of non-exclusive factors that a
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`court must ponder in determining whether an unauthorized use of a copyrighted work can
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`be called “fair use,” including “(1) the purpose and character of the use, including
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`whether such use is of a commercial nature or is for non-profit, educational purposes; (2)
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`the nature of the copyrighted work; (3) the amount and substantiality of the portion used
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`in relation to the copyrighted work as a whole; and (4) the effect of its use upon the
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`potential market for or value of the copyrighted work.” 17 U.S.C. § 107; see Stewart,
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`495 U.S. at 236–37; Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 549
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`& 561 (1985). No one factor is dispositive; all are to be explored and weighed together
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`in light of the purposes of the Copyright Act. See Campbell, 510 U.S. at 578. Since fair
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`use is an affirmative defense, defendants carry the burden of proof in demonstrating fair
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`use. Id. at 590. Although fair use is a mixed question of law and fact, a district court
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`may resolve fair use issues on summary judgment where there is no genuine issue of
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`material fact relevant to the fair use determination. See Harper & Row, 471 U.S. at 560-
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`61.
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`Rivera v. Méndez & Compañia, Civil No. 11-1530 (BJM)
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`A.
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`Purpose and Character of Use
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`The first factor focuses upon whether the new work “merely supersedes the
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`objects of the original creation, or instead adds something new, with a further purpose or
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`different character, altering the first with new expression, meaning, or message; it asks, in
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`other words, whether and to what extent the new work is ‘transformative.’” Campbell,
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`510 U.S. at 579. Other factors that may militate against a fair use finding decline in
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`significance to the extent that a work is more transformative. Id.
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`Here the use is somewhat transformative. The purpose of the new use, in
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`defendant’s words, is “expository, archival” in nature. The display of Rivera’s works on
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`the two websites is meant to be informational. The artworks appear on both websites on
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`pages that describe the history of the Heineken Jazz Fest. For example, on the Méndez
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`website, one page describes the history of the festival and allows the user to scroll
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`through year-by-year to see the artwork from each annual PRHJF, including all of
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`Rivera’s works. See, e.g., Docket No. 133-4. But this new use does not add anything to
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`the works such that it creates a wholly “new expression, meaning, or message.”
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`Campbell, 510 U.S. at 579. The websites do not alter the artworks in any significant way,
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`except to resize them so that they fit on the webpage. Moreover, the artworks were
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`originally created to promote and represent that year’s festival, and the reproduction of
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`these works on the website also serve as a representation of these past events. Thus, I
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`find Méndez’s new use only slightly transformative. Cf. Robinson v. Random House,
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`Inc., 877 F. Supp. 830, 841 (S.D.N.Y. 1995) (finding new biographical use was not
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`substantially transformative because when “the secondary use involves . . . an
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`untransformed duplication of the original, it has little or no value that does not exist in the
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`original work”).
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`The fact that a use is commercial as opposed to nonprofit is a separate factor that
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`tends to weigh against a fair use finding. Harper & Row, 471 U.S. at 562. “[E]very
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`commercial use of copyrighted material is presumptively an unfair exploitation” of a
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`Rivera v. Méndez & Compañia, Civil No. 11-1530 (BJM)
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`12
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`copyright owner’s monopoly privilege. Id. “The crux of the profit/nonprofit distinction
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`is not whether the sole motive of the use is monetary gain but whether the user stands to
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`profit from the exploitation of the copyrighted material without paying the customary
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`price.” Id. (citations omitted). The court also considers the propriety of defendants’
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`conduct as part of the “character” of the use. Fair use presupposes good faith and fair
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`dealing. Id. at 562–63.
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`The distinction between commercial versus nonprofit use is of limited importance
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`here, but it could be said to weigh slightly against a finding of fair use. Although PRHJF
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`is an event intended to raise funds for students of the Berklee College of Music, the event
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`sponsor, Méndez, is a corporation that stands to commercially benefit from use of
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`Rivera’s works to promote the jazz festival series and the Heineken brand itself.
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`Additionally, there is no evidence of bad faith on the part of Méndez in using Rivera’s
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`works on the two websites. On balance, then, I find that there is a genuine issue as to
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`whether the purpose and character of the use weighs in favor of or against a fair use
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`finding.
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`B.
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`Nature of the Copyrighted Work
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`The next factor “calls for recognition that some works are closer to the core of
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`intended copyright protection than others, with the consequence that fair use is more
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`difficult to establish when the former works are copied.” Campbell, 510 U.S. at 586.
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`Creative works of art are traditionally at the core of intended copyright protection, though
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`the scope for fair use of published works is broader than that for unpublished works.
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`Reyes v. Wyeth Pharm., Inc., 603 F. Supp. 2d 289, 298 (D.P.R. 2009) (citing Bill Graham
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`Archives v. Doring Kindersley Ltd., 448 F.3d 605, 612 (2d Cir. 2006). However, the
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`factor may be of limited usefulness where the creative work of art is being used for a
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`transformative purpose. See Bill Graham Archives, 448 F.3d at 612; Campbell, 510 U.S.
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`at 586.
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`Rivera v. Méndez & Compañia, Civil No. 11-1530 (BJM)
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`13
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`Here, the works at issue are creative works deserving of protection. Although the
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`works contain some informative elements, namely, references to the Heineken brand and
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`the artist or artists performing that year, the works themselves are completely original
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`creations by Rivera. He enjoyed a great deal of artistic freedom (in color, design, and
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`medium) when creating these works. Pl. SUF ¶¶ 100–02, 104. Given that the secondary
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`use is only slightly transformative, this factor clearly weighs against a finding of fair use.
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`C.
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`Amount and Substantiality of the Portion Used
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`The third factor focuses on whether the quantity and value of the materials used
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`are reasonable in relation to the purpose of the copying. Campbell, 510 U.S. at 586
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`(citation and quotation omitted). Copying an entire work usually weighs against a fair
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`use finding, but courts have also found that copying the entirety of a work is sometimes
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`necessary to make a fair use of it. Reyes, 603 F. Supp. 2d at 299 (citations omitted); Bill
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`Graham Archives, 448 F.3d at 613. However, copying only an insubstantial portion of
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`the entire work “in absolute terms” may not help the defendant if that portion constitutes
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`the “heart” of the work. Harper & Row, 471 U.S. at 564–65 (relatively few words quoted
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`from unpublished manuscript, but passages used were among the most interesting and
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`powerful in the book). Thus the inquiry at the third factor must take into account that
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`“the extent of permissible copying varies with the purpose and character of the use.”
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`Campbell, 510 U.S. at 586–87.
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`This factor is relatively neutral in the instant analysis. Méndez appears to
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`concede that entire works or substantial portions of the artworks appear on the two
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`websites. Docket No. 132, at 13. But the displays of entire works or substantial portions
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`thereof appear to be necessary to effectuate the purpose of the secondary use, i.e. to
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`memorialize and inform the reader of the past festivals. The websites would not be as
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`informative of PRHJF history if they displayed only insignificant portions of the
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`artworks. Thus, this factor does not weigh against a finding of fair use.
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`Rivera v. Méndez & Compañia, Civil No. 11-1530 (BJM)
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`14
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`D.
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`Effect of the Use upon the Potential Market for the Works
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`Lastly, the court must evaluate “the effect of the use upon the potential market for
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`or value of the copyrighted work.” 17 U.S.C. § 107. This factor “requires courts to
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`consider not only the extent of market harm caused by the particular actions of the
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`alleged infringer[s], but also whether unrestricted and widespread conduct of the sort
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`engaged in by the defendant would result in a substantially adverse impact on the
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`potential market for the original.” Campbell, 510 U.S. at 590 (punctuation and citation
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`omitted). This factor “must take account not only of harm to the original but also of harm
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`to the market for derivative works.” Id. (quoting Harper & Row, 471 U.S. at 568). That
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`is, this factor focuses upon secondary uses of the copyrighted work that, “by offering a
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`substitute for the original, usurp a market that properly belongs to the copyright holder.”
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`Reyes, 603 F. Supp. 2d at 299 (citation and quotation omitted). However, “a copyright
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`holder cannot prevent others from entering fair use markets merely by developing or
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`licensing a market for . . . transformative uses of its own creative work.” Bill Graham
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`Archives, 448 F.3d at 614–15 (citation and quotation omitted). “[C]opyright owners may
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`not preempt exploitation of transformative markets.” Id. (citation and quotation omitted).
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`When “the second use is transformative, market substitution is at least less certain, and
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`market harm may not be so readily inferred.” Campbell, 510 U.S. at 591.
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`Méndez contends that display of Rivera’s works on its websites do not negatively
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`affect the potential market for the works as there is no market for these works. It is true
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`that Méndez owns the originals, but that does not mean there is no market for Rivera’s
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`twelve works. The originals could be sold in the future to other buyers, and there
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`certainly may be a market for derivative works. Because fair use is an affirmative
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`defense, the burden is on defendants to demonstrate fair use, but it is difficult to carry this
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`burden “without favorable evidence about relevant markets.” Campbell, 510 U.S. at 590.
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`Defendants have introduced no such evidence except to assert that their use does not
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`Case 3:11-cv-01530-BJM Document 169 Filed 12/1