Case 3:11-cv-01530-GAG -BJM Document 9

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UNITED STATES DISTRICT COURT FOR THE DISTRICT OF PUERTO RICO DENNIS MARIO RIVERA CIVIL NUM. 11-01530 (GAG) Plaintiff v. MENDEZ & COMPAIA, HEINEKEN, LUIS ALVAREZ, JANE DOE, and the Legal Conjugal Partnership they both Comprise, Insurance Company ABC, Store KYZ, Company 123, John Doe, Susan Roe Defendants Copyright Infringement and Permanent and Preliminary Injunction

MOTION TO DISMISS1 MORAL RIGHT CLAIMS UNDER VARA AND THE PUERTO RICO INTELLECTUAL PROPERTY LAW TO THE HONORABLE COURT: COME NOW defendants Mndez & Compaa, Heineken and Luis Alvarez, and respectfully state, allege and pray: Fed.R.Civ.P 12(b)(6) allows a party to present a motion to dismiss for failure to state a claim upon which relief can be granted. In considering a 12(b)(6) motion to dismiss, the court must accept as true the well-pleaded factual allegations of the complaint, draw all reasonable inferences therefrom in the plaintiff's favor and determine whether the complaint, so read, sets forth facts 1 On Docket No. 5, the Court stayed the period in which to answer the complaint and/or move to dismiss pending a mediation meeting, not the filing of such motions per se. Defendants believe that it would not be fair on the Court and the plaintiff to learn at the mediation meeting that the defendant understands that three of plaintiffs four causes of action are dismissable right off the bat.

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sufficient to justify recovery on any cognizable theory. Martin v. Applied Cellular Tech., 284 F.3d 1, 6 (1st Cir.2002). To survive a motion to dismiss for failure to state a claim, the general rule under Rule 8 of the Federal Rules of Civil Procedure is that the complaint must state a claim to relief that is plausible on its face. Ashcroft v. Iqbal, 129 S.Ct. 1937, 1949 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). Plaintiffs complaint is divided into four causes of action: one for copyright infringement under 17 U.S.C. 106, and three for violation of plaintiffs purported moral rights under the Visual Artists Rights Act (V.A.R.A.) and the Puerto Rico Intellectual Property Act. As the applicable statutes make plain, moral rights are not available under federal or Puerto Rico law for the types of work at issue in this case. A. The works at issue in this case fall outside the scope of V.A.R.A. V.A.R.A. was enacted in 1990 as an amendment to the Copyright Act, to provide for the protection of the so-called moral rights of certain artists. Moral rights afford protection for the authors personal, non-economic interests in receiving attribution for her work, and in preserving the work in the form in which it was created, even after its sale or licensing. Pollara v. Seymour, 344 F.3d 265, 269 (2d Cir. 2003) (internal citations omitted). The term moral rights has its origins in the civil law and is a translation of the French le droit moral, which is meant to capture those rights of a spiritual, non-economic and personal nature. The rights spring from a belief that an artist in the process of creation injects his spirit into the work and that the artist's

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personality, as well as the integrity of the work, should therefore be protected and preserved. See Ralph E. Lerner & Judith Bresler, Art Law 417 (1989) (Art Law ). Because they are personal to the artist, moral rights exist independently of an artist's copyright in his or her work. See, e.g., 2 Nimmer on Copyright 8D-4 & n. 2 (1994) (Nimmer ). Carter v. Helmsley-Spear, Inc., 71 F.3d 77, 81 (2d Cir. 1995). V.A.R.A. provides that the author of a work of visual art, shall have the right, for life: (A) to prevent any intentional distortion, mutilation, or other modification of that work which would be prejudicial to his or her honor or reputation, and any intentional distortion, mutilation, or modification of that work is a violation of that right, and (B) to prevent any destruction of a work of recognized stature, and any intentional or grossly negligent destruction of that work is a violation of that right. 17 U.S.C. 106A(a)(3), (A), (B), (d)(3). Protection of a work under V.A.R.A. will often depend, as it does here, upon the works objective and evident purpose. The statute says: A work of visual art is-(1) a painting, drawing, print, or sculpture, existing in a single copy, in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author, or, in the case of a sculpture, in multiple cast, carved, or fabricated sculptures of 200 or fewer that are consecutively numbered by the author and bear the signature or other identifying mark of the author; or (2) a still photographic image produced for exhibition purposes only, existing in a single copy that is signed by the author, or in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author. A work of visual art does not include-(A)(i) any poster, map, globe, chart, technical drawing, diagram, model, applied art, motion picture or other audiovisual work, book, 3

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magazine, newspaper, periodical, data base, electronic information service, electronic publication, or similar publication; (ii) any merchandising item or advertising, promotional, descriptive, covering, or packaging material or container; (iii) any portion or part of any item described in clause (i) or (ii); (B) any work made for hire; or (C) any work not subject to copyright protection under this title. 17 U.S.C.A. 101 (West) It is clear from sections 106 and 101 that V.A.R.A. does not confer rights to any kind of work. It confers those rights only on artists who have produced works of recognized stature, or whose honor or reputation is such that it would be prejudiced by the modification of a work. Pollara v. Seymour, 344 F.3d 265, 269 (2d Cir. 2003). As is plain from the statute, posters as well as any merchandising item or advertising, promotional, descriptive, covering, or packaging material are expressly excluded from V.A.R.A. The works at issue here fall squarely within those exceptions. The Complaint states that from 1998 until 2009 plaintiff prepared works for the purposes of branding each annual Heineken Jazz Festival. Facts No. 15-16. It adds that the works were licensed for use in relation to each HJFs label and corporate identity, marketing pieces such as posters, bus shelters and related paraphernalia, and HJF event backdrops and merchandising such as t-shirts and program guides. Facts No. 17 & 24. The works at issue here were made for purposes of promoting and advertising the Heineken Jazz Fest. What is charged in the complaint is not the

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mutilation of a painting, drawing, print, or sculpture, existing in a single copy, in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author which are the works recognized by V.A.R.A. as protectable works of visual art. Rather, what is charged is that the defendants mutilated works used for marketing pieces such as posters, bus shelters and merchandising such as a t-shirt which are expressly declared no to be works of visual arts under V.A.R.A. Because the works at issue in this case are not works of art as defined under V.A.R.A., the Court must dismiss plaintiffs cause of action under V.A.R.A. B. The facts averred do not state a cause of action under the Puerto Rico Intellectual Property Act Puerto Ricos Intellectual Property Act has a V.A.R.A. type exclusion: Except when otherwise agreed to, those works created for the purpose of advertising entities [anunciar entidades] or promoting goods or services shall not enjoy protection by copyright [del derecho moral]. 31 L.P.R.A. 1401e. The works at issue here are of those kinds. As averred in the complaint, the works were created to market the Heineken Jazz Fest, for marketing pieces such as posters and merchandising such as a t-shirt. The finality of those works was advertisement and promotion, precisely what 1401e excludes from moral rights. Thus, as in the case of the V.A.R.A. cause of action, causes of action C and D must be dismissed as well for failure to state a claim under the Puerto Rico Intellectual Property Act for which relief can be granted.

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Puerto Ricos Intellectual Property Act, furthermore, also establishes a registration requirement in order to enjoy the benefits of the law: In order to enjoy the benefits of this chapter, it is necessary to have registered the rights and works that support it in the Copyright Registry, pursuant to the provisions of the above sections. 31 L.P.R.A. 1402d. Puerto Ricos Supreme Court has only recognized one exception to the registration requirement for the so peculiar a situation when the authorship of the work is in dispute: [P]ara gozar de los beneficios de nuestra Ley de Propiedad Intelectual es necesario haber inscrito el derecho y las obras que lo sustentan en el Registro de la Propiedad Intelectual .... Sin embargo, en situaciones tan peculiares como la de autos, cuando, precisamente, la alegacin es que otra persona se atribuy la autora de la obra (edicin), resolvemos que no ser necesario. To enjoy the benefits of our Intellectual Property Law, it is necessary to have registered the right and the underlying Works with the Intellectual Property Registry However, in so peculiar a situation as the one present here, where, precisely, the allegation is that another person is attributing the authorship of the work to himself, we hold that is shall not be necessary. Harguindey Ferrer v. U.I., 148 D.P.R. 13, 30 (1999). Plaintiffs cause of action number C charges defendants with violations to the moral right of integrity. That is not an issue of authorship. Since the works are not registered in the Puerto Rico Intellectual Property Registry, plaintiff cannot make the claim.

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C. The claims under the Puerto Rico Intellectual Property Act are time barred. The statute of limitations for moral rights claims brought under Puerto Ricos Intellectual Property Act is one year. Torres-Negron v. Rivera, 413 F. Supp. 2d 84, 85 (D.P.R. 2006). When requested by a party and supplied with the necessary information, a Court shall take judicial notice of facts that are: not subject to reasonable dispute in that it is either (1) generally known within the territorial jurisdiction of the trial court or (2) capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned. Fed.R.Evid. 201. Defendant requests that this Honorable Court take judicial notice that the 2010 Heineken Jazz Fest took place between June 3 and June 6, 2010. A simple internet search for Heineken Jazz Fest 2010 will reveal several sources whose accuracy cannot reasonably be questioned that establish those dates. See for example: http://www.discoveringpuertorico.com/2010/07/2010-puerto-rico-

heineken-jazzfest/. The instant complaint was filed on Tuesday, June 7, 2011, a day after the statute of limitations period expired. Thus, claims under Puerto Ricos Intellectual Property Act are time barred.

PRAYER FOR RELIEF Because the works at issue in the complaint are marketing and advertising pieces and thus fall outside the scope of federal and Puerto Rico moral rights

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protection, this Honorable Court must dismiss the Complaints causes of action B, C and D. The Court must also dismiss causes of action C and D as time barred. In San Juan, Puerto Rico, this 30th of June 2011. s/ Jos A. Hernndez Mayoral USDC 205307 20 Tetuan, Suite 702 San Juan, Puerto Rico 00901 Telephone: (787) 722-7782 Fax: (787) 722-7786 E-mail: jahm@mac.com I hereby certify that a copy of this motion was served on attorney for plaintiff through the CM/ECF system. s/ Jos A. Hernndez Mayoral