     Case: 10-20806     Document: 00512042185         Page: 1     Date Filed: 11/02/2012




            IN THE UNITED STATES COURT OF APPEALS
                     FOR THE FIFTH CIRCUIT  United States Court of Appeals
                                                     Fifth Circuit

                                                                            FILED
                                                                         November 2, 2012

                                       No. 10-20806                        Lyle W. Cayce
                                                                                Clerk

MARIA LUISA G. RAMIREZ; TONY GUERRERO

                                                  Plaintiffs - Appellees
v.

LISA NICHOLS, Trustee for Chapter 7 Estate of Big F., Incorporated,
formerly known as Freddie Records, Incorporated; FREDDIE MARTINEZ,
SR.

                                                  Defendants - Appellants



                   Appeal from the United States District Court
                        for the Southern District of Texas
                              USDC No. 4:08-CV-801


Before KING, SMITH, and BARKSDALE, Circuit Judges.
PER CURIAM:*
        Big F., Inc. (formerly known as Freddie Records, Inc.) and Freddie
Martinez, Sr. (whose sole proprietorship is Marfre Music Publishing) challenge:
being held liable to Luisa Ramirez and Tony Guerrero for copyright
infringement; and the district court’s awarding attorney’s fees. Defendants
assert: they had an express, or an implied license to exploit Ramirez’ and


        *
         Pursuant to 5TH CIR. R. 47.5, the court has determined that this opinion should not
be published and is not precedent except under the limited circumstances set forth in 5TH CIR.
R. 47.5.4.
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                                  No. 10-20806

Guerrero’s work; the verdict is fatally inconsistent; and the court abused its
discretion in awarding the fees. AFFIRMED in part; VACATED in part;
REMANDED for reconsideration of attorney’s fees.
                                        I.
      Ramirez and Guerrero are members of “La Sombra”; during the 1980s, it
recorded albums with Freddie Records and was paid for each album. The
albums were published by Marfre Music Publishing, Martinez’ sole
proprietorship.     Guerrero did not receive royalties for sales of the sound
recordings; Ramirez received composer royalties pursuant to several songwriter
contracts. Copyrights were registered, both by Defendants and by Ramirez and
Guerrero, for many of the musical compositions and sound recordings between
1987 and 2008.
      In the last year of registration, Ramirez and Guerrero filed this action in
Texas state court; it was removed to federal court. They sought damages and
attorney’s fees for, inter alia, copyright infringement.
      Trial was held in April 2010. A jury found Freddie Records and Marfre
Music, but not Martinez, liable for copyright infringement. It awarded damages
of approximately $65,000 to Guerrero and approximately $134,000 to Ramirez.
That July, the district court awarded attorney’s fees of approximately $288,000.
      Defendants’ post-trial motion was denied in October 2010, and they filed
for bankruptcy in 2011. The bankruptcy court lifted the automatic stays to allow
Defendants to proceed with this appeal.
                                       II.
      Defendants claim: they are entitled to a new trial on whether they
infringed copyrights, maintaining they had either an exclusive or implied license
to exploit the work; the verdict was so inconsistent as to be irreconcilable; and
the district court abused its discretion in awarding attorney’s fees.



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                                          A.
      The new-trial motion contended the evidence was insufficient to support
the jury’s finding Ramirez’ and Guerrero’s copyrights had been infringed. Denial
of a new-trial motion is reviewed for clear abuse of discretion. E.g., Foradori v.
Harris, 523 F.3d 477, 497 (5th Cir. 2008). In that regard, Defendants “must
show an absolute absence of evidence to support the jury’s verdict”. Id.
      Defendants maintain they had either an exclusive or implied license to
exploit Ramirez’ and Guerrero’s works. The burden is on Defendants to prove
having a license because it is an affirmative defense to a copyright-infringement
claim. Baisden v. I’m Ready Productions, Inc., 693 F.3d 491, 499 (5th Cir. 2012).
                                          1.
      An exclusive license is a transfer of copyright ownership, 17 U.S.C. § 101,
and must be memorialized in a signed writing, 17 U.S.C. § 204(a). Defendants
fail to meet their heavy burden of showing “an absolute absence of evidence” for
the infringement finding. Foradori, 523 F.3d at 497. For example, they admit
failing to locate many of the claimed songwriter agreements signed by Ramirez
and transferring all rights to Marfre Music. As another example, Martinez’
testimony provided reason to doubt the validity of those contracts Defendants
did introduce; he stated one of the admitted documents was “not the contract”
and would have been accompanied by “an original contract”, which was not
introduced.
                                          2.
      In the alternative, Defendants contend Ramirez and Guerrero knew
Defendants were exploiting La Sombra music for many years and never objected,
thereby providing Defendants an implied license. Because Defendants waived
this contention, we do not consider it.
       Defendants did not raise their implied-license claim until a May 2011
motion, in response to the district court’s jurisdictionally-barred (and later

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vacated) 10 April 2011 “amended final judgment”. Defendants failed to preserve
their implied-license contention because: that part of their motion seeking a new
trial was untimely, FED. R. CIV. P. 59(b); and they had already filed their notice
of appeal, thereby divesting the district court of jurisdiction for “those aspects
of the case involved in the appeal”. Weingarten Realty Investors v. Miller, 661
F.3d 904, 908 (5th Cir. 2011) (internal quotation omitted).
      Defendants claim they preserved the issue by pleading “license” as an
affirmative defense, and by, throughout trial, contending they had a “license”.
Along this line, however, the evidence Defendants presented at trial concerned
written, exclusive licenses. Similarly, the jury instructions, to which Defendants
did not object, specified:    “To be valid, the [license] must be in writing”.
(Emphasis added.)       Moreover, they failed to request an implied-license
instruction.
                                        B.
      Defendants contend the jury verdict must be vacated, or judgment
rendered for Martinez, because the jury inconsistently found him not liable while
finding his sole proprietorship, Marfre Music, liable. They assert: because
Martinez and Marfre are indistinguishable, the verdict is irreconcilable and the
district court “ha[d] no authority to enter judgment” based on it. Rosado v.
Deters, 5 F.3d 119, 124-25 (5th Cir. 1993) (internal quotation omitted). This
issue must be reviewed with great deference, making an “attempt to reconcile
the answers to validate the jury’s verdict”. Rideau v. Parkem Indus. Services,
Inc., 917 F.2d 892, 896 (5th Cir. 1990).
      The jury’s answers are reconcilable. It was instructed: “Each Defendant
is entitled to fair, separate and individual consideration of his . . . case without
regard to your decision as to the other defendants”. The jury’s special-verdict
form, to which Defendants did not object, included Martinez and Marfre Music
as separate defendants; and Martinez testified he had numerous employees at

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Marfre and did little of the publishing work himself. The instructions and
Martinez’ testimony gave the jury sufficient reason to believe it could find
Martinez infringed the copyrights when acting in his capacity as owner of Marfre
Music.
                                        C.
      Attorney’s fees awarded under the Copyright Act, 17 U.S.C. § 505, are
reviewed for abuse of discretion. McGaughey v. Twentieth Century Fox Film
Corp., 12 F.3d 62, 65 (5th Cir. 1994). “A trial court abuses its discretion when
its ruling is based on an erroneous view of the law or a clearly erroneous
assessment of the evidence.” Knight v. Kirby Inland Marine Inc., 482 F.3d 347,
351 (5th Cir. 2007) (quotation omitted).
      Under 17 U.S.C. § 505, a trial court has discretion to “award a reasonable
attorney’s fee to the prevailing party”. Unlike such fees in other contexts, those
awarded pursuant to § 505 are “the rule rather than the exception and should
be awarded routinely”.      McGaughey, 12 F.3d at 65 (citations omitted).
Nevertheless, this discretion is controlled by statutory limitations, including
proscribing fees for “any infringement of copyright in an unpublished work
commenced before the effective date of its registration; or any infringement . . .
commenced after first publication of the work and before the effective date of its
registration, unless such registration is made within three months after the first
publication of the work”. 17 U.S.C. § 412. These § 412 proscriptions are the
bases for the challenge to the award.
      The July 2010 order awarding the fees does not mention § 412. (The April
2011 “amended final judgment” discusses § 412 briefly; but, as noted, that order
was jurisdictionally-barred and vacated.) The relevant order states only: “A
prevailing party in a copyright infringement action is entitled to reasonable
attorney fees and expenses” under § 505; and “Plaintiffs presented evidence that
in this case that Plaintiffs are entitled to an award of fees under the Copyright

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Act”. The district court should have provided detailed findings and conclusions
for the fees award. This is especially critical in the light of the disputed evidence
relating to § 412.
      This omission, alone, does not rise to the level of “premis[ing] . . . legal
analysis on an erroneous understanding of governing law”. Regents of Univ. of
Cal. v. Credit Suisse First Boston (USA), Inc., 482 F.3d 372, 380 (5th Cir. 2007).
As such, the court’s failure to apply § 412 expressly does not per se constitute an
abuse of discretion. E.g., Knight, 482 F.3d at 351. On the other hand, in
perhaps finding by implication the copyright registrations satisfied § 412, the
court may have abused its discretion by a clearly-erroneous assessment of the
evidence. E.g., N.A.A.C.P. v. Fordice, 252 F.3d 361, 365 (5th Cir. 2001) (district
court’s finding “clearly erroneous” when “reviewing court on the entire evidence
is left with the definite and firm conviction that a mistake has been committed”).
      For purposes of illustration only, both sides presented evidence showing
publication and copyright-registration dates for various musical compositions
and sound recordings by Ramirez and/or Guerrero. The evidence perhaps
describes approximately 25 compositions or recordings. It may be that the
district court did not abuse its discretion in finding, by implication, timely
registration. For example, it appears that copyright registration numbers
TX0005846164 and PA0000689558 correspond to works by Ramirez that were
registered within three months of publication. On the other hand, it may be that
the evidence does not show any of Ramirez’ or Guerrero’s works were timely
registered, pursuant to § 412, to allow recovery of fees.
      Based on this record, it is impossible to decide whether the district court
abused its discretion, including because it failed to provide detailed analysis of
the evidence for why it concluded Ramirez and Guerrero were entitled, under
§ 412, to attorney’s fees. An attorney’s-fees order may be set aside when it fails



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to give reasons for its decision. Schwarz v. Folloder, 767 F.2d 125, 131-32 (5th
Cir. 1985).
      Therefore, the fees award is vacated, and this matter is remanded for the
district court to hold a hearing on the previously-filed fees application and to
then enter an order with detailed findings of fact and conclusions of law,
including for each infringement, if any, that satisfies 17 U.S.C. § 412, and with
a detailed analysis concerning the reasons for the amount of fees, if any,
awarded.      In that regard, the court can award fees only for instances as
permitted by § 412. Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1012 (2d Cir.
1995). See also Independent Living Aids, Inc. v. Maxi-Aids, Inc., 25 F.Supp.2d
127, 131 (E.D.N.Y. 1998).
                                       III.
      For the foregoing reasons, the judgment is AFFIRMED in part and
VACATED in part; this matter is REMANDED for reconsideration of attorney’s
fees, including entry of a detailed order, consistent with this opinion.




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