                                                              NOT PRECEDENTIAL

                      UNITED STATES COURT OF APPEALS
                           FOR THE THIRD CIRCUIT
                                _____________

                                Nos. 15-2270, 15-2359
                                   ____________

                               DANIEL V. MARINO,
                                          Appellant in 15-2359

                                          v.

     USHER, a/k/a Usher Terry Raymond, IV; JAMES SAMUEL HARRIS, III; TERRY
     STEVEN LEWIS; BOBBY ROSS AVILA, JR.; ISSIAH AVILA, JR.; WILLIAM C.
        GUICE; DANTE E. BARTON; DESTRO MUSIC PRODUCTIONS, INC.;
    DEFENDERS OF MUSIC; FLYTE TYME TUNES; SUBLIME BASEMENT TUNEZ;
      UR-IV MUSIC, INC.; WARNER-TAMERLANE PUBLISHING CORP.; MARK
         PITTS; BYSTORM ENTERTAINMENT; TOMMY VAN DELL; IN2N
      ENTERTAINMENT GROUP, LLC; EMI BLACKWOOD MUSIC, INC.; SONY
                MUSIC ENTERTAINMENT; EMI APRIL MUSIC, INC.

                                 *Francis Malofiy, Esq.,
                                   Appellant in 15-2270

                        *(Pursuant to Rule 12(a), Fed. R. App. P.)
                                   ____________

                   On Appeal from the United States District Court
                      for the Eastern District of Pennsylvania
                           (D.C. Civ. No. 2-11-cv-06811)
                     District Judge: Honorable Paul S. Diamond
                                   ____________

                  Submitted Pursuant to Third Circuit L.A.R. 34.1(a)
                                 on June 23, 2016

     Before: McKEE,  Chief Judge, FISHER and GREENAWAY, JR. Circuit Judges.


 Judge McKee concluded his term as Chief of the U.S. Court of Appeals for the Third
Circuit on September 30, 2016.
                           (Opinion Filed: December 8, 2016)
                                     ____________

                                        OPINION
                                      ____________

MCKEE, Chief Judge.

               Songwriter Daniel Marino appeals the district court’s grant of summary

judgment in favor of the defendants in his copyright infringement suit.1 The district court

found that, because Marino had jointly created the song Club Girl, later developed into

the derivative work Bad Girl and used by popular musician Usher, Marino’s infringement

claims must fail. Marino’s attorney, Francis Malofiy, also appeals the district court’s

order imposing sanctions against him in the amount of $28,266.54 for contacting an

unrepresented defendant in the copyright suit, in violation of Rule 4.3 of the

Pennsylvania Rules of Professional Conduct. For the reasons that follow, we will affirm

both orders.

                                             I.

       In its opinion granting summary judgment in favor of the defendants, the district

court reiterated what it terms the defendants’ “complete and meritorious defense,” that

Marino’s claims must fail because Club Girl was jointly created by Marino, Guice, and

Barton. The district court correctly held that co-authors of a joint work are each entitled


 This disposition is not an opinion of the full Court and pursuant to I.O.P. 5.7 does not
constitute binding precedent.
1
  Marino has appealed what appears to be every order entered by the district court,
including routine discovery orders and other orders that are plainly unappealable. App. at
1–2.
                                             2
to undivided ownership and that the joint owner of a copyright cannot sue his co-owner

for infringement.2 The court reasoned that, without direct infringement, there can be no

vicarious infringement, hence the derivative song, Bad Girl, did not infringe on Marino’s

rights. The district court also concluded that Guice and Barton conveyed a valid non-

exclusive license for the song to the other defendants.

       Moreover, in rejecting Marino’s contrary claims, the court stated that Marino’s

argument was so without merit as to be “absurd and contrary to law.”3 The district court

dismissed Marino’s state law claims without prejudice, noting that all of his federal

claims had been disposed of and declining to exercise supplemental jurisdiction. Marino

appeals.

       The district court also imposed sanctions against Malofiy in the amount of

$28,266.54 for contacting unrepresented defendant Guice, in violation of Rule 4.3 of the

Pennsylvania Rules of Professional Conduct.4 Malofiy appeals, and both appeals have

been consolidated.

                                                 II.5




2
  See Brownstein v. Lindsay, 742 F.3d 55, 68 (3d Cir. 2014). See also Cortner v. Israel,
732 F.2d 267, 271 (2d Cir. 1984) (“It is elementary that the lawful owner of a copyright
is incapable of infringing a copyright interest that is owned by him; nor can a joint owner
of a copyright sue his co-owner for infringement.”).
3
  J.A. at 00011.
4
  A three judge panel of this Court recently upheld the district court’s imposition on
Malofiy of a three-month suspension from the practice of law. See In re Francis Malofiy,
Appellant, No. 15-2472, 2016 WL 3553258, at *4 (3d Cir. June 30, 2016).
5
  We have jurisdiction under 28 U.S.C. § 1291. The district court had jurisdiction under
28 U.S.C. § 1338.
                                             3
       We review de novo the district court’s grant of summary judgment under Rule 56,6

as well as its dismissals under Rule 12(c).7 To determine whether the district court

properly granted summary judgment, we employ the same analysis as the district court to

determine whether any genuine disputes of material fact exist, while considering all

evidence and all reasonable inferences in favor of the non-moving party.8 In reviewing a

judgment on the pleadings under Rule 12(c), “we must view the facts presented in the

pleadings and the inferences to be drawn therefrom in the light most favorable to the

nonmoving party.”9 We review findings of fact for clear error, and “due regard shall be

given to the opportunity of the trial court to judge the credibility of the witnesses.”10 We

review a district court’s decision on attorney’s fees and costs for abuse of discretion.11

                                             III.

       In addition to his federal copyright claims, Marino’s amended complaint contained

state law claims for creation of a constructive trust (Count IV) and for an accounting

(Count V). Marino argues that the district court erred in dismissing those claims “sua

sponte.” However, the record reveals that the district court dismissed the constructive




6
  See Lucent Info. Mgmt., Inc. v. Lucent Techs., Inc., 186 F.3d 311, 315 (3d Cir. 1999).
7
  Hanover Ins. Co. v. Urban Outfitters, Inc., 806 F.3d 761, 764 (3d Cir. 2015).
8
  Scott v. Harris, 550 U.S. 372, 380 (2007).
9
  Hanover Ins. Co., 806 F.3d at 764 (internal quotations and citation omitted).
10
   Fed. R. Civ. P. 52(a)(6); see Anderson v. Bessemer City, 470 U.S. 564, 573–74 (1985);
Pension Benefit Guar. Corp. v. White Consol. Indus., Inc., 215 F.3d 407, 409 (3d Cir.
2000).
11
   See Hahnemann Univ. Hosp. v. All Shore, Inc., 514 F.3d 300, 305 (3d Cir.2008).
                                              4
trust and accounting claims after defendants had submitted a motion to dismiss and that

the issue had been fully briefed by both parties.12

       Under § 301 of the Copyright Act, a state law claim may be preempted if it creates

rights “equivalent” to the exclusive rights within the scope of copyright.13 That section

also provides that state law is expressly preempted where the elements of the claim at

issue are the same as those required for an infringement claim under § 106.14 By

contrast, “if a state cause of action requires an extra element, beyond mere copying,

preparation of derivative works, performance, distribution or display, then . . . federal law

will not preempt the state action.”15

       Here, the district court correctly applied the express preemption test in § 301(a).16

Because Marino based his constructive trust claim on monies generated by the alleged

infringement, the district court concluded that the first element is satisfied, and we agree.

The second element is satisfied because Marino’s constructive trust and copyright claims




12
   Accordingly, Marino’s argument that he had no notice of potential preemption issues is
without merit.
13
   Orson, Inc. v. Miramax Film Corp., 189 F.3d 377, 382 (3d Cir. 1999).
14
   See Dun & Bradstreet Software Servs., Inc. v. Grace Consulting, Inc., 307 F.3d 197,
217 (3d Cir. 2002).
15
   Id. (quoting Data Gen. Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147, 1164 (1st
Cir. 1994)).
16
   (1) Whether the work is the appropriate subject matter of a copyright as specified in 17
U.S.C. §§ 102 and 103 and (2) whether the state law creates rights equivalent to the
exclusive rights protected by the Copyright Act as set forth in 17 U.S.C. § 106. See
Harper & Row Publishers, Inc. v. Nation Enterprises, 723 F.2d 195, 200 (2d Cir. 1983)
(rev’d on other grounds) 471 U.S. 539 (1985); 17 U.S.C. § 103(a).
                                              5
arise from the same conduct.17 Accordingly, the district court correctly dismissed

Marino’s constructive trust claim.

       Marino’s accounting claims are similarly preempted by the Copyright Act.

Marino demanded an accounting of monies received from the alleged infringement. The

claim is, by its very nature, based on the same conduct alleged in the infringement claim,

and Marino has failed to allege any additional elements.18 The district court therefore

correctly found that Marino’s accounting claim was preempted.

       Marino next argues that the district court improperly determined that Club Girl

was jointly owned because the trio had a preexisting oral agreement allotting credit and

revenue for the works that they created. By his own admission, Marino did not make this

argument until the vast majority of defendants had been granted summary judgment.19

As the district court correctly explained, this argument comes several years too late and is

deemed waived.20 Thus, for the reasons repeatedly explained by the district court, we

conclude that the district court correctly found that Club Girl is a jointly owned work.21

       Marino next contends that, because he was never credited or paid for his

contribution to Club Girl, he did not give an implied license for the song’s use. Non-




17
   See Dun & Bradstreet Software Servs., Inc., 307 F.3d at 217.
18
   Id.
19
   Marino Reply Br. at 15–16.
20
   McLendon v. Cont’l Can Co., 908 F.2d 1171, 1183 (3d Cir. 1990) (“When an issue is
raised on appeal for the first time in a reply brief, it is generally waived.”).
21
   See Brownstein, 742 F.23d at 55 (“For two or more people to become co-authors, each
author must contribute some non-trivial amount of creative, original, or intellectual
expression to the work and both must intend that their contributions be combined.”).
                                             6
exclusive licenses may be granted orally, in writing, or impliedly through conduct.22 The

existence of an implied license is determined by an objective inquiry into the facts; the

private hopes of the creator are not relevant.23 Here, Marino’s testimony as well as his

actions indicate that he supported the use of Club Girl/Bad Girl by Usher. Marino never

sought to enjoin the song’s release, he participated in events and celebrations surrounding

the song, and he testified that he was excited at its commercial success. In addition, the

record reveals that Marino admits receiving $4,553.06 in royalties from Barton in 2006.24

Accordingly, the district court correctly found that Marino granted an implied license to

the Appellees for the use of Club Girl.25

       Marino also argues that the district court erred in dismissing his sound recording

claim for lack of standing. The law is clear that a work must be preregistered with the

Copyright Office before suit can be brought for an alleged copyright violation.26 As the

district court held, sound recordings and musical compositions are distinct from one

another and require two different registrations.27 Here, the record reveals that, although


22
   See MacLean Assoc., Inc. v. Wm. M. Mercer-Meidinger-Hansen, Inc., 952 F.2d 769,
778–79 (3d Cir. 1991) (quoting 3 M. Nimmer & D. Nimmer, Nimmer of Copyright §
10.03(A), at 10–37 (1991) for the proposition that “[a] nonexclusive license may be
granted orally, or may even be implied from conduct”).
23
   John G. Danielson, Inc. v. Winchester-Conant Props., Inc., 322 F.3d 26, 42 (1st Cir.
2003).
24
   J.A. at 00440, 01798–99, 02573–74.
25
   See I.A.E., Inc. v. Shaver, 74 F.3d 768, 776 (7th Cir. 1996).
26
   Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154, 157–58 (2010). See also 17 U.S.C. §
411 (providing that “no civil action for infringement of the copyright in any United States
work shall be instituted until preregistration or registration of the copyright claim has
been made in accordance with this title”).
27
   17 U.S.C. § 102(a)(2), (7); Facenda v. N.F.L. Films, Inc., 542 F.3d 1007, 1026 (3d Cir.
2008).
                                             7
the musical compositions of Club Girl and Bad Girl were registered, the sound

recordings were never registered with the Copyright Office. Accordingly, the district

court correctly denied Marino’s sound recording claim.

       Marino relies on the doctrine of equitable tolling to argue that the district court

improperly limited his claims for infringement damages to those damages that occurred

within three years of the filing of this case. However, since we affirm the district court’s

conclusion that that there was no infringement, tolling is simply not an issue, and we

need not address it.

       Marino also argues that the district court abused its discretion in awarding costs

and fees to the defendants in the amount of $110,888.60, reduced from a court-

determined amount of $1,108,885.95 due to Marino’s inability to pay. In awarding fees,

a district court may consider “‘frivolousness, motivation, objective unreasonableness

(both in the factual and in the legal components of the case) and the need in particular

circumstances to advance considerations of compensation and deterrence.’”28 Courts will

consider the party’s ability to pay when setting the final amount of costs and fees.29

Here, the district court carefully considered all of the statutory factors and examined the

relevant evidence before it arrived at its final amount. The district court also conducted

financial discovery to determine Marino’s ability to pay costs and fees. After an

evidentiary hearing, the district court determined that the award should be reduced by 90



28
   Fogerty v. Fantasy, Inc., 510 U.S. 517, 534–35 n.19 (1994) (quoting Lieb v. Topstone
Indus., Inc., 788 F.2d 151, 156 (3d Cir. 1986)).
29
   Lieb, 788 F.2d at 156.
                                              8
percent due to Marino’s financial circumstances and the frivolous nature of his claims.30

Accordingly, we find no abuse of discretion in the award of costs and fees in the amount

of $110,888.60.

       Marino’s contention on appeal that the district court’s impartiality should be

questioned is meritless. Judicial remarks may support a challenge to judge’s impartiality

“if they reveal an opinion that derives from an extrajudicial source,” or “if they reveal

such a high degree of favoritism or antagonism as to make fair judgment impossible.”31

Marino has no shown that the district court’s opinion either derives from an extrajudicial

source or reveals the requisite level of antagonism. Instead, the brief merely claims that

“the Court’s opinions and findings departed from law and the largely undisputed facts of

this case and revealed a bias against Plaintiff.”32 Contrary to Marino’s assertions, the

record reveals that the district court acted properly and impartially throughout the

proceedings. It also reveals that those proceedings were fraught with misconduct by

Marino’s attorney, Francis Malofiy.

                                            IV.

       We turn now to Malofiy’s appeal of the district court’s order imposing sanctions

in the amount of $28,266.54 for contacting unrepresented defendant William Guice,33 in

violation of Pennsylvania Rule of Professional Conduct 4.3.34 The district court acted


30
   Lieb, 788 F.2d at 156 (court should consider whether award is excessive in light of
“plaintiff’s resources”)
31
   Liteky v. U.S., 510 U.S. 540, 555 (1994).
32
   Marino Br. at 64.
33
   CM/ECF No. 15-2270.
34
   Rule 4.3 provides that:
                                             9
under 28 U.S.C. § 1927 as well as under its own inherent authority over the conduct of

proceedings before it. To impose sanctions, a court must find that an attorney “has (1)

multiplied proceedings; (2) in an unreasonable and vexatious manner; (3) thereby

increasing the cost of the proceedings; and (4) doing so in bad faith or by intentional

misconduct.”35

       The district court made the following factual determinations when examining the

evidence regarding Malofiy and Guice’s interactions.

        “[S]ometime around Valentine’s Day, 2012,” Guice (then living in
        Colorado) telephoned Malofiy, whose name and telephone number were
        on the pleading’s first page. (Id. at 20:5–7; 18:8–13; 16:20–17:14;
        57:25–58:9; 29:13–16.) Malofiy said that he represented Plaintiff and
        that Guice had no obligation to speak with him. Malofiy did not ask if
        Guice was represented by counsel, nor did he advise Guice to obtain
        counsel. (Id. 20–21.) Malofiy did not inform Guice that Marino’s
        interests were adverse to Guice’s. (Id. at 21.) To the contrary, Malofiy
        untruthfully assured Guice: “don’t worry about it, he [Plaintiff] is not
        coming after you, it’s everyone else.” (Id. at 32:2–8.) Malofiy thus
        dishonestly convinced Guice that Marino was pursuing claims against
        only Barton and moving Defendants. (Id. at 23–24.)


        (a) In dealing on behalf of a client with a person who is not represented
        by counsel, a lawyer shall not state or imply that the lawyer is
        disinterested.
        (b) During the course of a lawyer's representation of a client, a lawyer
        shall not give advice to a person who is not represented by a lawyer,
        other than the advice to secure counsel, if the lawyer knows or
        reasonably should know the interests of such person are or have a
        reasonable possibility of being in conflict with the interests of the
        lawyer’s client.
          (c) When the lawyer knows or reasonably should know that the
          unrepresented person misunderstands the lawyer’s role in the matter, the
          lawyer should make reasonable efforts to correct the misunderstanding.
35
   In re Schaefer Salt Recovery, Inc., 542 F.3d 90, 101 (3d Cir. 2008) (citing In re
Prudential Ins. Co. Am. Sales Practice Litig., 278 F.3d 175, 188 (3d Cir. 2002)).
                                             10
         The district court also found that Malofiy persuaded Guice to sign an affidavit

stating that he, Barton, and Marino had created Club Girl together and that Guice’s belief

that Marino was entitled to producing and writing credit. The district court concluded

that, due to Malofiy’s misrepresentations, Guice never answered Marino’s complaint,

with the result that a default judgment (later vacated) was entered against him. During

Guice’s first deposition, it was revealed that, although Malofiy told Guice that he (Guice)

was a defendant, Guice “did not know the meaning of ‘defendant,’” that [Guice] was a

party to the copyright litigation; that [Marino] was seeking money damages from him

personally; or that Malofiy had obtained a default against him.”36 Guice was so upset by

these revelations that he left the deposition and had to be deposed again at a later date,

which the district court found duplicated proceedings and increased costs. The district

court further found that Malofiy acted both intentionally and unreasonably in his dealings

with Guice, and that Malofiy’s actions had no legitimate purpose. The district court

credited Guice’s testimony that Malofiy did not advise him to retain counsel during their

first conversation, and it further found that Malofiy’s email to Guice stating that “if you

want to review [the affidavit] with a lawyer, that’s fine too,” was insufficient to satisfy

Rule 4.3.37

         A panel of this Court recently addressed Malofiy’s behavior when affirming his

three month suspension from the practice of law. The panel explained:




36
     DCT Op. at 8.
37
     J.A. at 00083.
                                              11
        we must determine whether Malofiy’s warning in the e-mail and his
        acknowledgment of Guice’s status as a defendant satisfy Rule 4.3. The
        District Court determined that Malofiy’s actions “failed to adequately
        convey the adversity of interests between [his] client and Mr. Guice.”
        App. 40–41. We agree. Per Rule 4.3(c), Malofiy “kn[ew] or reasonably
        should [have] know[n] that the unrepresented person misunderst[ood]
        the lawyer’s role in the matter.” Rather than correct the
        misunderstanding, Malofiy continued to foster the impression that Guice
        was a witness rather than a person who stood personally to lose money.
        As the first comment to the rule makes clear, Malofiy should have
        remedied the confusion by explaining that Guice’s interests were adverse
        to Marino’s. However, he consistently suggested that the opposite was
        true.38
We agree with this analysis and conclude that Malofiy did in fact violate Rule 4.3.

Accordingly, the district court did not abuse its discretion when it imposed sanctions on

Malofiy in the amount of $28,266.54.

                                            V.

       For the foregoing reasons, we will affirm the judgment of the district court.




38
  In re Francis Malofiy, Appellant, No. 15-2472, 2016 WL 3553258, at *4 (3d Cir. June
30, 2016).
                                            12
