            United States Court of Appeals
                        For the First Circuit

No. 19-1358

                       LUIS ADRIÁN CORTÉS-RAMOS,

                         Plaintiff, Appellant,

                                  v.

              ENRIQUE MARTIN-MORALES, a/k/a RICKY MARTIN,

                         Defendant, Appellee,

                         JOHN DOE, RICHARD DOE,
               and their respective insurance companies,

                              Defendants.


            APPEAL FROM THE UNITED STATES DISTRICT COURT
                   FOR THE DISTRICT OF PUERTO RICO

     [Hon. Daniel R. Domínguez, Senior U.S. District Judge]


                                Before

                       Torruella, Dyk, Barron,
                           Circuit Judges.


     Juan R. Rodríguez,     with whom Rodríguez López Law Offices,
P.S.C. was on brief, for   appellant.
     David C. Rose, with   whom Pryor Cashman LLP, Jorge I. Peirats,
and Pietrantoni Méndez &   Álvarez LLC, were on brief, for appellee.




     
         Of the Federal Circuit, sitting by designation.
April 13, 2020




    - 2 -
          DYK,   Circuit    Judge.        Luis   Adrián   Cortés-Ramos   sued

Enrique Martin-Morales (a/k/a Ricky Martin) ("Martin") and other

unknown defendants, alleging violations of federal copyright law

and various Puerto Rico laws.        On appeal, Cortés-Ramos challenges

the district court's dismissal of these claims pursuant to Federal

Rule of Civil Procedure 12(b)(6).

          We conclude that the district court correctly held that

the complaint failed to state a copyright claim because it did not

allege registration. But we also conclude that the district court

erred in holding that the complaint otherwise failed to state a

copyright claim and dismissing the complaint with prejudice.              We

remand so that the district court may consider, whether, in light

of this opinion, to dismiss the copyright claim or whether Cortés-

Ramos should be allowed to supplement his complaint under Federal

Rule of Civil Procedure 15(d) to allege registration.             We affirm

the district court's dismissal of the state-law claims.

                                     I.

          This controversy concerning Cortés-Ramos's music video

comes back to this court for the fourth time. This appeal requires

us to determine the sufficiency of Cortés-Ramos's complaint.

                                     A.

          Cortés-Ramos's claims concern a songwriting contest that

he entered in 2014.        The complaint alleges the following.           In

August 2013, "[Martin] and Sony . . . claimed that they were

                                 - 3 -
sponsors" of and advertised the "SuperSong" contest.    ¶ 11.    The

contest was a competition; each participant was required to compose

a song with lyrics in English, Portuguese, or Spanish. ¶ 14. The

participants were required to submit their songs in "video format

showcasing the performance of the composer" by January 6, 2014.

¶¶ 14, 23.   The winning composition was to be sung by Martin at

the grand opening of the 2014 Fédération Internationale de Football

Association ("FIFA") World Cup in Brazil. ¶¶ 12, 16.

          After seeing the contest advertisement, Cortés-Ramos

composed a song and recorded a music video in his hometown in

Puerto Rico with several musicians, dancers, and chorus singers.

¶ 20.   On January 2, 2014, Cortés-Ramos uploaded his music video

to the contest's website.   A few days later, he was selected as

one of the top-twenty finalists. ¶¶ 22, 25. On January 15, 2014,

he signed "several documents (releases)" from Sony Brazil. ¶¶ 25–

26. Eventually, another participant was selected as the winner in

February 2014. ¶ 30.

          In April 2014, Martin released his song Vida.         ¶ 32.

Martin's "music video was almost identical to the one that [Cortés-

Ramos] composed and created." Id. Cortés-Ramos "was misinformed,

lured to enter and to participate in [the] contest with false

information and threats with the only purpose to obtain his release

to his compositions and creations in violation of copyright."

¶ 37.

                              - 4 -
                Based    on    these    factual    allegations,      Cortés-Ramos's

complaint asserted:            (1) a federal claim under the Copyright Act

(17 U.S.C. § 101 et seq.) and (2) state claims under the Puerto

Rico Trademark Act of 2009,1 Puerto Rico Contract Laws (31 L.P.R.A.

§ 2992) and Property Laws (31 L.P.R.A. § 1021),2 and Puerto Rico

Civil Code Articles 1802 and 1803 (31 L.P.R.A. §§ 5141–5142).3

                                            B.

                This    is    not    Cortés-Ramos's     first     effort   to    secure

relief.         Cortés-Ramos earlier filed an action against various

companies affiliated with Sony Music Entertainment ("Sony") and

Martin     on    July    28,    2014,     alleging     various    claims     including

copyright violation.                Cortés-Ramos voluntarily dismissed Martin

early in that proceeding. Eventually, the district court dismissed

all claims against Sony on the ground that the claims were subject

to   the        arbitration          provision    of    the      SuperSong      contest



     1 The Puerto Rico Trademark Act of 2009 incorporated elements
of federal trademark law and the Model State Trademark Act.
     2 These statutes provide that "[o]bligations are created by
law, by contracts, by quasi contracts, and by illicit acts and
omissions or by those in which any kind of fault or negligence
occurs," 31 L.P.R.A. § 2992, and "[t]he word property is applicable
in general to anything of which riches or fortune may consist," 31
L.P.R.A. § 1021.
     3 These Articles provide recovery of damages caused by fault
or negligence.
       The complaint also alleged a federal trademark claim, but
that claim was dismissed. Cortés-Ramos does not raise that claim
on appeal.

                                          - 5 -
participation agreement.    This court affirmed in Cortés-Ramos v.

Sony Corp. of Am., 836 F.3d 128 (1st Cir. 2016). Later, this court

reversed an award of attorney fees in Cortés-Ramos v. Sony Corp.

of Am., 889 F.3d 24 (1st Cir. 2018), holding that Sony was not a

prevailing party under the Copyright Act where the case was

dismissed because Cortés-Ramos was compelled to arbitrate. Id. at

25–26.

            On February 8, 2016, Cortés-Ramos filed this second

action against Martin.     The district court initially ruled that

Cortés-Ramos's claims against Martin, like his claims against

Sony, were subject to the contest's arbitration provision and

dismissed   the   case.   This    court   reversed,   holding   that   the

arbitration provision did not extend to Martin because he was

neither a party to the contest participation agreement nor a third-

party beneficiary.    Cortés-Ramos v. Martin-Morales, 894 F.3d 55,

58–60 (1st Cir. 2018).

                                    C.

            On remand of the 2016 action from this court, the

district court granted Martin's renewed motion to dismiss for

failure to state a claim.        The district court dismissed Cortés-

Ramos's copyright claim with prejudice, concluding that Cortés-

Ramos failed to allege "preregistration or registration of his

copyright . . . to sustain a cause of action" as required by 17



                                  - 6 -
U.S.C. § 411(a).         Op. 14.4    It also held that he failed to "show,

as a factual matter, that [Martin] copied [his] music video" and

that his allegation that Vida is "almost identical" to his music

video was "not sufficient to state that there was factual copying."

Id. at 15.

               The district court dismissed Cortés-Ramos's state-law

claims without prejudice. It held that "the Puerto Rico Trademark

Act [claim] fails because [Cortés-Ramos] provide[d] no factual

allegations as to the required elements under this Act."                       Id. at

21.    Regarding claims invoking 31 L.P.R.A. §§ 1021 and 2992, the

district court noted that the complaint alleges that Cortés-Ramos

"was misinformed, lured to enter and to participate in [the]

contest with false information and threats with the only purpose

to obtain his release to his compositions and creations."                      Id. at

19.     It concluded that these "fraudulent inducement allegations

fail        because   [he]    provide[d]      no   factual      allegations"     that

identified false information.                Id. at 21.        With respect to his

claims under Articles 1802 and 1803, the district court held that

the complaint contained no allegations of negligence.                           While

Martin's        motion   to      dismiss    also    argued      lack   of   personal

jurisdiction,         improper    venue,     and   lack   of    ownership   (because

Cortés-Ramos allegedly assigned his rights to his music video to


        4   "Op." refers to the district court's opinion dated March 25,
2019.

                                           - 7 -
Sony by agreeing to the SuperSong contest rules), the district

court declined to reach those issues.

          Cortés-Ramos   now   appeals,   challenging    the   district

court's dismissal of his copyright claim and state-law claims. We

have jurisdiction pursuant to 28 U.S.C. § 1291.         "We review the

dismissal of a complaint under Rule 12(b)(6) de novo."         Ocasio-

Hernández v. Fortuño-Burset, 640 F.3d 1, 7 (1st Cir. 2011).       "The

sole inquiry under Rule 12(b)(6) is whether, construing the well-

pleaded facts of the complaint in the light most favorable to the

plaintiff[], the complaint states a claim for which relief can be

granted." Id.

                                 II.

                                 A.

          We first address the district court's dismissal of the

copyright claim.   A plaintiff who owns a copyrighted work has the

ultimate burden to prove that (1) the defendant "actually copied

the work as a factual matter" and (2) the "copying . . . rendered

the infringing and copyrighted works 'substantially similar.'" T-

Peg, Inc. v. Vt. Timber Works, Inc., 459 F.3d 97, 108 (1st Cir.

2006) (quoting Johnson v. Gordon, 409 F.3d 12, 17 (1st Cir. 2005)).

One way to indirectly establish "actual copying" is to show that

the defendant "enjoyed access to the copyrighted work" and "a

sufficient degree of similarity" exists between the copyrighted



                                - 8 -
work and the allegedly infringing work.5                    Id. at 111 (quoting

Johnson, 409 F.3d at 18).               But, at the pleading stage, the

plaintiff need not actually prove the elements of his claim but

rather need only sufficiently allege facts that show the claim is

plausible on its face.             Ashcroft v. Iqbal, 556 U.S. 662, 678

(2009); Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007).

            Here, the district court concluded that Cortés-Ramos had

alleged     a    violation    of     copyright       law    and     in    support    had

sufficiently alleged that Martin had access to his music video.

The district court held that it "may infer that [Martin] obtained

access to Plaintiff's music video through the submission of the

SuperSong Contest."          Op. 15.         In this respect, the complaint

included allegations that Cortés-Ramos submitted his music video

to   the   SuperSong     contest,     which    Martin       was   involved      in   and

following       which   he   would    have    sung    the    winning       submission.

However,        the   district     court     concluded       that        Cortés-Ramos's

complaint was deficient because it did not sufficiently allege

similarity, even though the complaint alleged that Martin's Vida

is "almost identical" to Cortés-Ramos's music video.

            Given that there is a reasonable inference that Martin


      5"The similarity inquiry used to indirectly establish
[actual] copying is referred to as 'probative similarity' and is
'somewhat akin to, but different than, the requirement of
substantial similarity' that must be shown to prove [the second
element of] copyright infringement."    T-Peg, 459 F.3d at 111
(quoting Johnson, 409 F.3d at 18).

                                       - 9 -
had access to Cortés-Ramos's music video, we think that the "almost

identical" allegation is sufficient to meet Cortés-Ramos's burdens

of   pleading   both   indirect    actual     copying   and    substantial

similarity. Determining whether Cortés-Ramos's complaint supports

a plausible claim for relief is "a context-specific task that

requires the reviewing court to draw on its judicial experience

and common sense."     Iqbal, 556 U.S. at 679.          When viewing the

complaint in the light most favorable to Cortés-Ramos, Ocasio–

Hernández, 640 F.3d at 7, we conclude that it adequately supported

a reasonable inference of similarity so as to render his claim

plausible, Iqbal, 556 U.S. at 678, and provided Martin "fair notice

of what the . . . claim is and the grounds upon which it rests,"

Twombly, 550 U.S. at 555 (alteration in original) (quoting Conley

v. Gibson, 355 U.S. 41, 47 (1957), abrogated on other grounds by

Twombly, 550 U.S. at 561–63).

          Therefore,    aside     from      registration,     Cortés-Ramos

sufficiently alleged a copyright violation.

                                    B.

          Our inquiry does not end there as the district court

also held that Cortés-Ramos's copyright complaint was defective

because his complaint did not allege that he "preregistered or

registered the music video [that] he submitted to the SuperSong

contest." Op. 14.

          In Section 411(a) of Title 17, the copyright statute

                                  - 10 -
provides that "no civil action for infringement of the copyright

in   any   United    States   work    shall   be   instituted   until     . . .

registration of the copyright claim has been made in accordance

with this title."6      In Fourth Estate Pub. Benefit Corp. v. Wall-

Street.com, LLC, 139 S. Ct. 881 (2019), the Supreme Court addressed

whether    "registration"     under    section 411(a)    occurs    when     the

claimant completed his application or only after the Copyright

Office registered the copyright (by issuing a certificate).                 Id.

at 886.    The Supreme Court held that the registration condition

was satisfied only "when the [Copyright] Register has registered

a copyright after examining a properly filed application." Id. at

892.

            In reaching its decision, the Supreme Court explained

that "a copyright claimant generally must comply with [section]

411(a)'s    [registration]      requirement"       "[b]efore    pursuing     an

infringement claim in court."            Id. at 887.      This is because

"registration is akin to an administrative exhaustion requirement

that the owner must satisfy before suing to enforce ownership

rights."    Id.     It also recognized that "Congress has maintained

registration as prerequisite to suit, and rejected proposals that



       6
       Section 411(a) also allows institution of an action if the
copyright owner obtained preregistration. But such an action risks
dismissal if the owner does not promptly apply for registration as
set forth in the copyright statute. See 17 U.S.C. § 408(f)(3)–
(4). There is no issue of preregistration in this case.

                                     - 11 -
would have eliminated registration."              Id. at 891.       See also

Thompson   v.   Hubbard,    131   U.S.     123,   150–51   (1889)    (notice

requirement of a predecessor copyright statute was a prerequisite

to filing an action); Airframe Sys., Inc. v. L-3 Commc'ns Corp.,

658 F.3d 100, 105 (1st Cir. 2011) (proof of registration is an

element of a cause of action for copyright infringement).

           The legislative history of the copyright law discussed

by the Supreme Court is quite clear.          The predecessor to section

411(a) provided that "[n]o action or proceeding shall be maintained

for infringement . . . until the provisions . . . with respect to

the deposit of copies and registration of such work shall have

been complied with."7      17 U.S.C. § 13 (1970).      While changing the

phrase "[n]o action . . . shall be maintained" in the earlier

statute to "no civil action . . . shall be instituted" in enacting

section 411(a) in 1976, Congress made clear that registration was

a prerequisite to a copyright lawsuit.             Specifically, Congress

recognized:

           The first sentence of section 411(a) restates
           the present statutory requirement [in 17
           U.S.C. § 13 (1970)] that registration must be
           made before a suit for copyright infringement
           is instituted. Under the bill, as under the
           law now in effect, a copyright owner who has
           not registered his claim can have a valid
           cause of action against someone who has
           infringed his copyright, but he cannot enforce
           his rights in the courts until he has made

     7 This language originates from Section 12 of the Copyright
Act of 1909.

                                  - 12 -
            registration.

H.R. Rep. No. 94-1476, at 157 (Sept. 3, 1976) (emphasis added); S.

Rep. No. 93-983, at 188 (June 27, 1974).             Congress thus confirmed

that registration is a prerequisite to enforcement of copyrights.

            This     interpretation     of     the   copyright      statute     is

consistent with interpretation of other statutes with similar

language.     For example, McNeil v. United States, 508 U.S. 106

(1993) addressed similar language of the Federal Tort Claims Act

in 28 U.S.C. § 2675(a).          That statute states that "[a]n action

shall not be instituted . . . unless the claimant shall have first

presented the claim to the appropriate Federal agency and . . .

have been finally denied."          Id. at 107 n.1 (quoting 28 U.S.C.

§ 2765(a)).     The Supreme Court held that the use of the word

"instituted"        required     that    the     plaintiff         exhaust     his

administrative claim before filing his action in federal court.

Id. at 112–13.

            Here,    Cortés-Ramos's     complaint     did    not    allege    that

registration had been obtained prior to suit.                 Cortés-Ramos has

conceded that he had not secured registration before filing this

action.   We thus agree with the district court's decision on the

sufficiency of the complaint with respect to registration.                    But

since we determine that the complaint is insufficient as to only

the   registration     ground,   the    district     court   should    not    have

dismissed the copyright claim with prejudice.                Generally, when a

                                    - 13 -
plaintiff's claim is dismissed for failing to satisfy a pre-suit

requirement, the dismissal should be "without prejudice" when the

plaintiff may able to satisfy the requirement in the future. See,

e.g., Lumiere v. Pathe Exch., Inc., 275 F. 428, 430 (2d Cir. 1921)

(addressing   a   predecessor   copyright      statute    and   holding    that

dismissal without prejudice was proper because "the plaintiff may

get a certificate of registration . . . and thereafter may maintain

another   action").    There    appears   to    be   no   dispute   that    the

Copyright Office registered Cortés-Ramos's music video after he

filed his complaint with the district court, and thus he could

allege registration in a new action.

           At oral argument in this court, Cortés-Ramos urged that

the district court should not have dismissed the action at all,

but should have allowed him to amend the complaint to allege that

he had obtained registration after the filing of the action, even

though he made no such motion to the district court before it

dismissed the case.

           Federal Rule of Civil Procedure 15(d) provides that

"[o]n motion and reasonable notice, the court may, on just terms,

permit a party to serve a supplemental pleading setting out any

transaction, occurrence, or event that happened after the date of

the pleading to be supplemented." Although a supplemental pleading

under Rule 15(d) may be allowed to cure even jurisdictional

defects, United States ex rel. Gadbois v. PharMerica Corp., 809

                                 - 14 -
F.3d 1, 5–6, 5 n.2 (1st Cir. 2015), a lack of registration is not

a jurisdictional defect.   In Reed Elsevier, Inc. v. Muchnick, 559

U.S. 154 (2010), the Supreme Court held that the registration

condition in § 411(a) is not jurisdictional but rather a "claim-

processing rule[]." Id. at 161, 165–66.

            In Gadbois, this court explained that "supplementation

of pleading is encouraged 'when doing so will promote the economic

and speedy disposition of the entire controversy between the

parties, will not cause undue delay or trial inconvenience, and

will not prejudice the rights of any of the other parties to the

action.'"   809 F.3d at 4 (quoting 6A Charles Alan Wright et al.,

Federal Practice and Procedure § 1504, at 258–59 (3d ed. 2010)).

Although this case appears to be a candidate for a Rule 15(d)

supplement, the question of whether a supplemental pleading should

be permitted lies in the first instance with the district court.

Id. at 6. "Under Rule 15(d), the filing of a supplemental pleading

is not available to the pleader as a matter of right but, rather,

is subject to the court's discretion."      Id.    Our role, as an

appellate court, is generally "limited to examining whether the

district court abused its discretion."     Id.    Thus, here, as in

Gadbois, we remand to afford the district court "an opportunity to

pass upon" the question of whether Cortés-Ramos should be allowed

to supplement his complaint under Rule 15(d) or instead he should

be required to file a new action. Id.

                               - 15 -
                                      III.

           Cortés-Ramos    next    argues     that   the   district    court's

dismissal of his state-law claims was erroneous. We disagree.

           As for his Puerto Rico trademark claim, Cortés-Ramos

provides no argument at all as to why the district court was wrong.

Cortés-Ramos's    complaint     was    deficient     because   it    failed   to

identify what he contends to be protected under Puerto Rico's

trademark law.        A complaint that merely cites to the statute

without pleading factual allegations fails to state a claim.

Iqbal, 556 U.S. at 678.

           Cortés-Ramos's       allegations    concerning      the   other    two

state-law claims are similarly deficient.               Cortés-Ramos merely

contends that he invoked Articles 1802 and 1803 (which provide

recovery of damages caused by fault or negligence) and that the

Puerto Rico Supreme Court recognized that there is "a cause of

action . . . against a tortfeasor third party (defendant) who

interfered between contractors."         Appellant Br. 6, 28.         But, the

complaint did not even allege that Martin interfered with Cortés-

Ramos's contractual relationship with another.             Even if that had

been   pleaded,   a    "naked    assertion"    without     "further    factual

enhancement" is insufficient to survive a motion to dismiss.

Iqbal, 556 U.S. at 678 (quoting Twombly, 550 U.S. at 557). As for

his claims under 31 L.P.R.A. §§ 1021 and 2992 (which provide relief

                                   - 16 -
for recovery in contracts, fault, or negligence), Cortés-Ramos

repeats his allegation in the complaint that he "was misinformed,

lured to enter and to participate in [the] contest with false

information and threats with the only purpose to obtain his release

to his compositions and creations."     Appellant Br. 28 (emphasis

removed).    To the extent that Cortés-Ramos alleged that Martin

breached an obligation by fraudulently inducing him to enter the

SuperSong contest, the complaint is wholly conclusory and cannot

survive a motion to dismiss.

                                IV.

            Cortés-Ramos contends that the district court erred by

not authorizing discovery before deciding on the 12(b)(6) motion.

However, other than generally arguing the presence of factual

disputes and that Martin had access to Sony's records, Cortés-

Ramos did not present any reason why he needed discovery to address

the motion to dismiss. Resolution of a motion to dismiss generally

does not require discovery, and we see no error in the district

court's denial of discovery.    DM Research, Inc. v. Coll. of Am.

Pathologists, 170 F.3d 53, 55–56 (1st Cir. 1999) (holding that

discovery was not warranted at the motion to dismiss stage).

                                 V.

            Accordingly, we affirm the district court's dismissal

without prejudice of the state-law claims. We remand to allow the

district court to consider whether to dismiss the copyright claim

                               - 17 -
without prejudice or to allow Cortés-Ramos to supplement his

complaint under Rule 15(d) to allege registration. If the district

court decides to allow supplementation, the district court must,

of course, determine whether it has personal jurisdiction over

Martin and whether venue is proper.8

     Affirmed-in-part, vacated-in-part, and remanded.

     Costs to neither party.




     8 We do not address whether Cortés-Ramos assigned his rights
to his music video to Sony by agreeing to the SuperSong contest
rules because that issue was not reached by the district court.

                               - 18 -
