IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
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`JULIÁN OLIVARES,
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`Plaintiff,
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`v.
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`UNIVERSITY OF CHICAGO,
`UNIVERSITY OF CHICAGO PRESS,
`MARGARET R. GREER, and
`ELIZABETH RHODES,
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`Defendants.
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`1:15-cv-713
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`MEMORANDUM OPINION AND ORDER
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`LORETTA C. BIGGS, District Judge.
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`Julián Olivares (“Olivares”) initiated this copyright infringement action in the United
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`States District Court for the Eastern District of Texas in October 2014. The case was
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`subsequently transferred to this Court. Before the Court are several motions filed by
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`Defendants, including a motion for summary judgment, various motions to dismiss, and a
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`motion to strike Olivares’ request for statutory damages and attorney’s fees. Also before the
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`Court are Olivares’ requests for hearings on all pending motions. For the reasons below,
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`Defendants’ Motion for Summary Judgment as to Olivares’ copyright infringement claim is
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`denied; Defendants’ motions to dismiss claim two regarding infringing acts abroad and the
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`Texas state-law tort claims are granted; Defendants’ motion to strike Olivares’ requests for
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`statutory damages and attorney’s fees is granted; and Defendants’ motion to dismiss or transfer
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`for lack of jurisdiction and venue is denied as moot. In addition, Olivares’ requests for
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`hearings are denied.1
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`I.
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`BACKGROUND
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`In 1637, Spanish writer María de Zayas y Sotomayor (“Zayas”) published a collection
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`of ten stories titled Novelas amorosas y ejemplares (“Novelas amorosas”). (See Rhodes Decl. ¶ 7,
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`ECF No. 34-2; Greer Decl. ¶ 13, ECF No. 34-3.) In 2000, Olivares created an edition of the
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`Novelas amorosas, also in Spanish. (Olivares Decl. ¶ 3, ECF No. 44-28.) Olivares’ edition
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`contains the entire text of the Novelas amorosas, as well as several sections written by Olivares.2
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`(See Olivares Ed., ECF No. 1-2.) In 2009, Defendant University of Chicago published an
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`English translation of selected stories by Zayas, including four stories from the Novelas
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`amorosas. (See Rhodes Decl. ¶ 7, ECF No. 34-2; Greer Decl. ¶ 13, ECF No. 34-3.) The stories
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`were edited and translated by Defendants Margaret R. Greer (“Greer”) and Elizabeth Rhodes
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`1 Also before the Court is a motion that Defendants filed in the Eastern District of Texas and moved
`to reinstate in this Court. The motion challenges personal jurisdiction and venue in the Eastern
`District of Texas. The Court will not address this motion as to these issues, which became moot when
`the Eastern District of Texas transferred the case on convenience grounds. See 5B Charles Alan
`Wright & Arthur R. Miller, Federal Practice & Procedure § 1352 (3d ed.) (“The transfer of the case
`[pursuant to § 1404(a)] will render moot any Rule 12(b)(3) motion to dismiss for improper venue.”).
`Contrary to Defendants’ argument, the propriety of jurisdiction and venue in the Eastern District of
`Texas has no bearing on whether this Court must apply Fourth Circuit or Fifth Circuit law. “[F]ederal
`courts comprise a single system applying a single body of law, and no litigant has a right to have the
`interpretation of one federal court rather than that of another determine his case.” Desiano v. Warner-
`Lambert & Co., 467 F.3d 85, 91 (2d Cir. 2006) (quoting Menowitz v. Brown, 991 F.2d 36, 40 (2d Cir.
`1993)) aff’d sub nom. Warner-Lambert Co., LLC v. Kent, 128 S. Ct. 1168 (2008). This Court will
`accordingly proceed under the precedent of the Fourth Circuit. See Lanfear v. Home Depot, Inc.,
`536 F.3d 1217, 1223 (11th Cir. 2008); Newton v. Thomason, 22 F.3d 1455, 1460 (9th Cir. 1994); Tel-
`Phonic Servs., Inc. v. TBS Int’l, Inc., 975 F.2d 1134, 1138 (5th Cir. 1992).
`
` 2
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` Sections by Olivares include an introduction, note on his edition, bibliography, glossary, index of
`names, and index of poems. (See Olivares Ed. 7–8, ECF No. 1-2 (table of contents).) These sections
`of the Olivares edition do not appear to be at issue in this case.
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`2
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`(“Rhodes”). (See Greer & Rhodes Translation, ECF No. 109-7 (book cover).) When
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`translating stories from the Novelas amorosas, Greer and Rhodes used Olivares’ edition of Zayas’
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`work. (Id. at 41 (note on the translations).) Their use of Olivares’ edition forms the basis of
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`the parties’ dispute.
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`Olivares asserts four claims: (1) copyright infringement under federal and foreign law,
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`(2) violations of the Universal Copyright Convention, (3) unjust enrichment, and (4) money
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`had and received. While this case was before the Eastern District of Texas, Defendants moved
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`to dismiss each claim except Olivares’ copyright infringement claim, pursuant to Rule 12(b)(6)
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`of the Federal Rules of Civil Procedure, for failure to state a claim upon which relief can be
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`granted. They also moved to strike Olivares’ requests for statutory damages and attorney’s
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`fees. After the case was transferred to this Court, those motions were reinstated, and
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`Defendants filed a motion for summary judgment under Rule 56 of the Federal Rules of Civil
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`Procedure as to all claims.
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`Though Defendants seek summary judgment on all of Olivares’ claims, they devote the
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`majority of their summary judgment brief to the copyright infringement claim. For the
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`remaining claims, Defendants direct the court to the parties’ earlier briefing related to their
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`motions to dismiss. (See Defs.’ Mot. 19–20, ECF No. 109.) Because the parties’ earlier
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`briefing does not present matters outside the pleadings and all of the parties’ arguments on
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`these issues are made in the Rule 12(b)(6) context, the Court will evaluate Olivares’ claims for
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`violations of the Universal Copyright Convention, unjust enrichment, and money had and
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`received pursuant to Rule 12(b)(6) for failure to state a claim. The Court will evaluate Olivares’
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`claim for copyright infringement under a Rule 56 summary judgment standard.
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`3
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`II. MOTIONS TO DISMISS
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`Defendants move to dismiss Olivares’ claims for unjust enrichment, money had and
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`received, and violations of the Universal Copyright Convention. A motion to dismiss under
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`Rule 12(b)(6) “challenges the legal sufficiency of a complaint,” including whether it meets the
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`pleading standard of Rule 8(a)(2). Francis v. Giacomelli, 588 F.3d 186, 192 (4th Cir. 2009).
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`Rule 8(a)(2) requires a complaint to contain “a short and plain statement of the claim showing
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`that the pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2). This pleading standard “does not
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`require ‘detailed factual allegations,’ but it demands more than an unadorned, the-defendant-
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`unlawfully-harmed-me accusation.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell
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`Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007)). Mere “labels and conclusions” and “a
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`formulaic recitation of the elements of a cause of action will not do.” Twombly, 550 U.S. at
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`555. Instead, “a complaint must contain sufficient factual matter, accepted as true, to ‘state a
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`claim to relief that is plausible on its face.’” Iqbal, 556 U.S. at 678 (quoting Twombly, 550
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`U.S. at 570). A claim is plausible when the complaint alleges facts that “raise a right to relief
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`above the speculative level,” Twombly, 550 U.S. at 555, and allow the court “to draw the
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`reasonable inference that the defendant is liable for the misconduct alleged,” Iqbal, 556 U.S.
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`at 678. Where the facts are “merely consistent with” the defendant’s liability or allow the court
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`to infer only “the mere possibility of misconduct,” the complaint “stops short of the line
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`between possibility and plausibility” and must be dismissed. Id. at 678–79; see Twombly, 550
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`U.S. at 557.
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`4
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`A. Violations of the Universal Copyright Convention
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`In his claim for violations of the Universal Copyright Convention, Olivares alleges that
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`Defendants infringed his international copyrights by distributing and selling their translation
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`outside the United States. (Third Am. Compl. ¶¶ 38–39, ECF No. 27.) The Universal
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`Copyright Convention is a treaty that “mandate[s] a policy of national treatment in which
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`copyright holders are afforded the same protection in foreign nations that those nations
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`provide their own authors.” Creative Tech., Ltd. v. Aztech Sys. Pte., Ltd., 61 F.3d 696, 700
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`(9th Cir. 1995); see Universal Copyright Convention art. II, reprinted in 9 Melville B. Nimmer
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`& David Nimmer, Nimmer on Copyright App. 24.
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`Defendants argue that the Universal Copyright Convention is not self-executing and
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`does not give rise to a private cause of action. The Court agrees. “International treaties are
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`not presumed to create rights that are privately enforceable.” Goldstar (Panama) S.A. v.
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`United States, 967 F.2d 965, 968 (4th Cir. 1992). Rather, “[t]o determine whether a treaty
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`creates a cause of action, we look to its text.” McKesson Corp. v. Islamic Republic of Iran,
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`539 F.3d 485, 488 (D.C. Cir. 2008). Olivares does not identify specific text in the Universal
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`Copyright Convention which creates a private cause of action, and the Court finds no such
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`language. Accordingly, the Court dismisses Olivares’ claim for violations of the Universal
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`Copyright Convention pursuant to Rule 12(b)(6), for failure to state a claim upon which relief
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`can be granted.
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`B. State Law Claims
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`Olivares also asserts two state law claims, i.e., unjust enrichment and money had and
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`received. In his claim for unjust enrichment, Olivares alleges Defendants have obtained
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`revenue from sales of their translation that would be unconscionable for them to retain. (Third
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`Am. Compl. ¶ 48, ECF No. 27.) In his claim for money had and received, Olivares alleges
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`that Defendants’ revenue “in equity and good conscience” belongs to him. (Id. ¶ 52.)
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`Defendants move to dismiss Olivares’ state law claims based on Copyright Act
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`preemption. The Copyright Act preempts all state law rights that are “equivalent” to rights
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`under federal copyright law. 17 U.S.C. § 301(a). The scope of preemption is extensive. See
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`Pan-Am. Products & Holdings, LLC v. R.T.G. Furniture Corp., 825 F. Supp. 2d 664, 690–91
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`(M.D.N.C. 2011) (stating that the “shadow actually cast by the [Copyright] Act’s preemption
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`is notably broader than the wing of its protection” (alteration in original) (quoting U.S. ex rel.
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`Berge v. Bd. of Trustees of the Univ. of Ala., 104 F.3d 1453, 1463 (4th Cir. 1997))).
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`To determine whether a state law claim is preempted, courts must consider (1) whether
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`the work falls “within the subject matter of copyright,” and (2) whether the claim protects
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`rights “that are equivalent to any of the exclusive rights within the general scope of copyright.”
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`Id. (quoting 17 U.S.C. § 301(a)); U.S. ex rel. Berge, 104 F.3d at 1463. Both prongs must be
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`satisfied for preemption to apply. Tire Eng’g & Distrib., LLC v. Shandong Linglong Rubber
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`Co., 682 F.3d 292, 309 (4th Cir. 2012). The first prong, relating to subject matter, is easily
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`satisfied in this case. Both of Olivares’ state law claims relate to his edition of Zayas’ Novelas
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`amorosas, which falls within the subject matter of copyright law as a derivative work. Derivative
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`works are defined as works “based upon one or more preexisting works.” See 17 U.S.C. §
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`101. Because Olivares’ edition is based upon Zayas’ Novelas amorosas, it is evaluated as a
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`derivative work, leaving only the second prong, relating to equivalency, as the only prong at
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`issue in this case.
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`Under the equivalency prong of the preemption analysis, Olivares’ claims are
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`preempted if they are equivalent to the exclusive rights that the Copyright Act grants to
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`copyright owners. See 17 U.S.C. § 301(a). These exclusive rights include the rights to
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`(1) reproduce the work, (2) prepare derivative copies based on the work, (3) distribute copies
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`of the work, (4) perform the work publicly, (5) display the work publicly, and (6) in the case
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`of a sound recording, perform the work publicly by means of a digital audio transmission. 17
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`U.S.C. § 106. To assess equivalency, the Fourth Circuit applies the “extra element” test.
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`Rosciszewski v. Arete Assocs. Inc., 1 F.3d. 225, 229–30 (4th Cir. 1993). Under this test, the
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`Court must refer to the elements of the state law claims, not the conduct or facts pled. Tire
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`Eng’g, 682 F.3d at 309–10. If an act of reproduction, preparation of a derivative work,
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`distribution, performance, or display alone can establish the state law claim, then the claim is
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`the equivalent of an exclusive right of the Copyright Act and there is preemption. See Pan-
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`American, 825 F. Supp. 2d at 691. However, if the state law claim requires an “extra element”
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`instead of, or in addition to, the acts of reproduction, performances, distributions or display
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`in order to create a state cause of action, there is not preemption if that extra element
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`transforms the nature of the action, “making it qualitatively different from a copyright
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`infringement claim.” Tire Eng’r, 682 F.3d at 309 (internal quotation marks omitted).
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`1. Unjust Enrichment
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`For Olivares’ claim of unjust enrichment, the Court considers the elements of the claim
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`under both Texas law (because this case was transferred from Texas federal court) and North
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`Carolina law (because this Court sits in North Carolina).3 Under Texas law, “[a] person is
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`unjustly enriched when he obtains a benefit from another by fraud, duress, or the taking of an
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`undue advantage.” Lee v. Lee, 411 S.W.3d 95, 111 (Tex. Ct. App. 2013). This claim can be
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`established by a single act of copyright infringement. Thus, a claim of unjust enrichment under
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`Texas law does not involve an extra element that makes the claim qualitatively different from
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`a copyright infringement claim. See DaVinci Editrice S.R.L. v. ZiKo Games, LLC, No. H-13-
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`3415, 2014 WL 3900139, at *13 (S.D. Tex. Aug. 8, 2014) (dismissing a claim of unjust
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`enrichment under Texas law as preempted). A claim of unjust enrichment under North
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`Carolina law requires a plaintiff to establish that “(1) a measurable benefit was conferred on
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`the defendant, (2) the defendant consciously accepted that benefit, and (3) the benefit was not
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`conferred officiously or gratuitously.” Primerica Life Ins. Co. v. James Massengill & Sons
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`Constr. Co., 712 S.E.2d 670, 677 (N.C. Ct. App. 2011). Similar to the claim of unjust
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`enrichment under Texas law, a claim of unjust enrichment under North Carolina law can also
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`be established by a single act of copyright infringement. The claim therefore lacks an extra
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`element that qualitatively differentiates it from a copyright infringement claim. See Pan-Am.,
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`825 F. Supp. 2d at 696 (dismissing a claim of unjust enrichment under North Carolina law as
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`preempted). The Court concludes that Olivares’ unjust enrichment claim is preempted by the
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`Copyright Act, regardless of whether it is asserted under Texas law or North Carolina law.
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`3 A choice-of-law analysis is not necessary here because Olivares’ claim for unjust enrichment is
`preempted regardless of the applicable state law. See Perini/Tompkins Joint Venture v. Ace Am. Ins.
`Co., 738 F.3d 95, 101 (4th Cir. 2013) (recognizing that the choice-of-law analysis becomes necessary
`only if the laws of the different states lead to different outcomes, and where they do not so conflict,
`the choice becomes immaterial and the court should apply the law of the forum).
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`2. Money Had and Received
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`For Olivares’ claim of money had and received, the elements of the claim are
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`substantially similar under both Texas and North Carolina law. Under Texas law, “a plaintiff
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`must show that a defendant holds money which in equity and good conscience belongs to him
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`[Plaintiff].” MGA Ins. Co. v. Charles R. Chesnutt, P.C., 358 S.W.3d 808, 814 (Tex. Ct. App.
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`2012). Under North Carolina law, a plaintiff can maintain an action for money had and
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`received “whenever the defendant has money in his hands which belongs to the plaintiff, and
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`which in equity and good conscience he ought to pay to the plaintiff.” Primerica, 712 S.E.2d
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`at 676 (quoting Allgood v. Wilmington Sav. & Trust Co., 88 S.E.2d 825, 829 (N.C. 1955)). A
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`single act of copyright infringement can satisfy the elements of a claim for money had and
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`received, so long as the alleged infringer received money from the act of infringement. No
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`extra element transforms a claim for money had and received into something qualitatively
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`different from a copyright infringement claim. The claim is therefore the equivalent of an
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`exclusive right under the Copyright Act, and the Court concludes that Olivares’ claim for
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`money had and received is preempted by the Act, regardless of whether it is asserted under
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`Texas law or North Carolina law.
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`Because the Copyright Act preempts Olivares’ state law claims of unjust enrichment
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`and money had and received, the claims are dismissed pursuant to Rule 12(b)(6), for failure to
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`state a claim upon which relief can be granted.
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`III. MOTION FOR SUMMARY JUDGMENT
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`Defendants move for summary judgment on all of Olivares’ claims though, based on
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`the preceding discussion, his claim for copyright infringement is the only claim that remains.
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`Summary judgment is appropriate when “there is no genuine dispute as to any material fact
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`and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). A fact is
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`“material” if it might affect the outcome of the litigation, and a dispute is “genuine” if the
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`evidence would permit a reasonable jury to find for the nonmoving party. Anderson v. Liberty
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`Lobby, Inc., 477 U.S. 242, 248 (1986). The party seeking summary judgment bears the initial
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`burden of “pointing out to the district court . . . that there is an absence of evidence to support
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`the nonmoving party’s case.” Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986). To defeat
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`summary judgment, the nonmoving party must designate “specific facts showing that there is
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`a genuine issue for trial.” Id. at 324. The nonmoving party must support its assertions by
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`citing to particular parts of the record, such as affidavits, depositions, answers to
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`interrogatories, and admissions on file. Fed. R. Civ. P. 56(c)(1); Celotex, 477 U.S. at 324.
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`The role of the court is not “to weigh the evidence and determine the truth of the
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`matter” but rather “to determine whether there is a genuine issue for trial.” Anderson, 477
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`U.S. at 249. A genuine issue for trial exists only when “there is sufficient evidence favoring
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`the nonmoving party for a jury to return a verdict for that party.” Id. “If the evidence is
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`merely colorable or is not significantly probative, summary judgment may be granted.” Id. at
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`249–50 (citations omitted). When reviewing a motion for summary judgment, the court must
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`“resolve all factual disputes and any competing, rational inferences in the light most favorable”
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`to the nonmoving party. Rossignol v. Voorhaar, 316 F.3d 516, 523 (4th Cir. 2003) (quoting
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`Wightman v. Springfield Terminal Ry. Co., 100 F.3d 228, 230 (1st Cir. 1996)).
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`A. Copyright Infringement
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`Olivares asserts his copyright infringement claim under the Copyright Act of 1976 and
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`under foreign law. He claims Defendants infringed his copyright in his edition of the Novelas
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`amorosas by copying and translating his edition, distributing that translation, and inducing third
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`parties to exploit his edition. (Third Am. Compl. ¶ 20, ECF No. 27.)
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`The Copyright Act of 1976 grants copyright protection to “original works of
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`authorship fixed in any tangible medium of expression.” 17 U.S.C. § 102. “Original, as the
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`term is used in copyright, means only that the work was independently created by the author
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`(as opposed to copied from other works), and that it possesses at least some minimal degree
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`of creativity.” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991).
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`“[O]riginality is usually considered a question of fact.” Metro. Reg’l Info. Sys., Inc. v. Am.
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`Home Realty Network, Inc., 722 F.3d 591, 595 n.9 (4th Cir. 2013).
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`An author who creates an original work enjoys “a bundle of exclusive rights.” A.V. ex
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`rel. Vanderhye v. iParadigms, LLC, 562 F.3d 630, 636 (4th Cir. 2009) (quoting Harper & Row,
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`Publishers, Inc. v. Nation Enters., 471 U.S. 539, 546 (1985)). These include the rights to
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`(1) reproduce the work, (2) prepare derivative copies based on the work, (3) distribute copies
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`of the work, (4) perform the work publicly, (5) display the work publicly, and (6) in the case
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`of a sound recording, perform the work publicly by means of a digital audio transmission.
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`§ 106. Violation of any exclusive right constitutes copyright infringement. See § 501(a). “To
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`establish a claim for copyright infringement, a plaintiff must prove that it owned a valid
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`copyright and that the defendant copied the original elements of that copyright.” Humphreys
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`& Partners Architects, L.P. v. Lessard Design, Inc., 790 F.3d 532, 537 (4th Cir. 2015) (quoting
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`Lyons P’ship, L.P. v. Morris Costumes, Inc., 243 F.3d 789, 801 (4th Cir. 2001)).
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`In seeking summary judgment on Olivares’ copyright infringement claim, Defendants
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`challenge the validity of Olivares’ copyright. Notably, their challenge extends only to Olivares’
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`copyright in his corrections to Zayas’ text, not to his copyright in his edition as a whole. This
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`is based on their understanding that Olivares claims Defendants infringed his rights in only
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`one section of his edition, the section containing the text of Zayas’ Novelas amorosas.4 (See
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`Defs.’ Mot. 7, ECF No. 109.) Olivares does not allege that Defendants infringed his rights in
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`any of the sections of his edition that he wrote himself.5 Thus, the Court will consider only
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`Olivares’ copyright in the text of the Novelas amorosas as published in his edition.
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`To create his edition of the Novelas amorosas, Olivares referenced several early editions
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`of Zayas’ work, including two editions published by Zayas and two editions he describes as
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`“pirated.” (See Olivares Decl. ¶¶ 7–10, ECF No. 110-7.) Olivares began by conducting a line-
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`by-line comparison of the various editions and “noting all the variants and problematic areas
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`that needed clarification.” (Id. ¶ 9.) Following this comparison, Olivares transcribed Zayas’
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`second edition of the Novelas amorosas. (Id. ¶ 10.) He then made changes to the punctuation
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`4 “Olivares’ book consists of the text of Zayas’ Novelas amorosas, along with Olivares’s footnotes and
`commentary on that text. Olivares does not claim that any of his footnotes or commentary were used
`by Defendants.” (Defs.’ Mot. 7, ECF No. 109.)
`
` 5
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` Olivares argues that “Greer used Olivares’s introduction, which added bibliographic reference to
`other person[s’] readings of Zayas’ texts and included his subjective interpretations of those texts.”
`(Pl.’s Opp’n 4, ECF No. 110.) He bases this argument on a statement by Greer that she “didn’t use
`[Olivares’ introduction] a great deal.” (Greer Dep. at 63:18–25, ECF No. 110-6.) This does not
`amount to an allegation that Defendants translated his introduction or otherwise infringed his
`copyright in his introduction. Indeed, in his deposition, Olivares stated he did not think Greer and
`Rhodes copied any of his introductory material. (See Olivares Dep. at 262:8–11, ECF No. 109-2.)
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`and paragraph breaks, annotated the variants between the editions, and made corrections to
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`the text. (See id.) Because Olivares’ edition is based upon Zayas’ Novelas amorosas, it is a
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`derivative work. See § 101. Thus, Olivares’ copyright in his edition extends only to the
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`material he contributed, not to the material he copied from Zayas. See § 103(b). In addition
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`to the consideration of what Olivares contributed, the originality requirement of copyright law
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`also considers whether those contributions possess “at least some minimal degree of
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`creativity.” Feist, 499 U.S. at 345. Thus, Olivares’ copyright extends only to material that (1)
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`he contributed and (2) meets the minimal creativity threshold.
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`Defendants contend Olivares’ corrections to Zayas’ text constitute “the only material
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`he contributed.” (Defs.’ Mot. 7, ECF No. 109.) They then argue that his corrections—
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`specifically, his changes to Zayas’ punctuation and paragraph breaks—are not copyrightable.
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`(Id.) Though Olivares does not expressly agree that his corrections to Zayas’ text are the only
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`material he contributed to her text, he also does not contradict Defendants’ contention. He
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`disputes, however, the copyrightability of his corrections. (See Pl.’s Opp’n 3–5, ECF No. 110.)
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`He acknowledges that the “‘originality” ground actually reduces to ‘minimal creativity.’” (Id.
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`at 3.) Thus, the validity of Olivares’ copyright comes down to whether his corrections to
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`Zayas’ text are minimally creative, and the propriety of summary judgment depends on
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`whether there is a genuine dispute over the creativity question.
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`In the creativity inquiry, the Supreme Court has explained that “the requisite level of
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`creativity is extremely low; even a slight amount will suffice.” Feist, 499 U.S. at 345. The
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`Court observed that “[t]he vast majority of works make the grade quite easily, as they possess
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`some creative spark, ‘no matter how crude, humble or obvious’ it might be.” Id. (quoting 1
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`M. Nimmer & D. Nimmer, Copyright § 1.08[C][1] (1990)). Here, the parties agree that
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`Olivares’ corrections to Zayas’ text include changes to the punctuation and paragraph breaks;
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`rather, they disagree as to whether these corrections are sufficiently creative to merit copyright
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`protection. (See ECF No. 109 at 7; ECF No. 110 at 3–5.)
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`Defendants argue that corrections to punctuation and paragraph breaks are not
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`copyrightable. They direct the Court to the United States Copyright Office’s manual on
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`copyright law, which states, “Merely correcting errors in spelling, punctuation, grammar, or
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`making other minor changes, revisions, or other modifications to a preexisting work do not
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`satisfy [the originality] requirement.” U.S. Copyright Office, Compendium of U.S. Copyright
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`Office Practices § 709.4 (3d ed. 2014). Defendants also direct the Court to Grove Press, Inc.
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`v. Collectors Publication, Inc., in which a district court held that 40,000 revisions to the
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`punctuation, spelling, quotation marks, and typographical errors found in a preexisting work
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`“displayed no originality.” 264 F. Supp. 603, 605 (C.D. Cal. 1967).
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`Defendants appear to oversimplify the corrections that Olivares made to Zayas’
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`punctuation and paragraph breaks. If the extent of Olivares’ corrections consisted of fixing
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`proofreading errors in Zayas’ work, then the Court would be more inclined to find a lack of
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`originality. However, according to Olivares, his edition does not merely fix proofreading
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`errors; it restores, modernizes, and clarifies Zayas’ text. (Olivares Dep. at 101:12–23; 144:10–
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`145:13, 147:15–148:6, 178:1–179:1, ECF No. 109-2; see Greer Dep. at 145:1–3, ECF No. 110-
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`6 (“One of the things an editor of a 17th Century text does . . . is modernizing the spelling and
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`punctuation.”).) Though Zayas’ editions are not in the record before the Court, the parties
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`agree that Zayas’ original text often lacks paragraph breaks and punctuation. Greer explains
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`that in Zayas’ time, “manuscript authors didn’t punctuate their texts carefully, maybe not at
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`all,” because they expected the printer to supply the punctuation. (Greer Dep. at 61:3–5, ECF
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`No. 110-6.) Consequently, some of Zayas’ sentences “might be a paragraph long.” (Id. at
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`181:22.) Rhodes similarly states that in Zayas’ original text, “there are no paragraphs, and the
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`punctuation is inconsistent” in terms of whether and when there is punctuation. (Rhodes
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`Dep. at 131:18–120, ECF No. 110-9.) Olivares explains that one of Zayas’ stories was
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`originally published as a single paragraph spanning twenty or thirty pages. (Olivares Dep. at
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`149:1–14, ECF No. 109-2.) He then divided that single paragraph into approximately eighty
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`paragraphs, making the text easier to follow. (See id. at 149:8–12.) Olivares also describes
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`that he punctuated “a very long, long sentence that was very confusing.” (Id. at 239:20–23.)
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`The Court cannot find as a matter of law that these types of revisions utterly lack creativity, as
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`it would be required to do, to grant Defendants’ summary judgment on this claim of copyright
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`infringement.
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`As Rhodes explains, “different scholars will divide paragraphs differently based on how
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`they interpret the meaning of each paragraph.” (Rhodes Dep. at 131:22–24, ECF No. 110-9.)
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`Greer agrees that how an author divides paragraphs “matters in how we read a text.” (Greer
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`Dep. at 61:13–16, ECF No. 110-6.) And while some punctuation choices are mechanical and
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`dictated by established convention,6 other punctuation choices have the potential to change
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`the entire meaning of the text. (See Rhodes Dep. at 136:6–25, ECF No. 110-9.) To create an
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`edition that is “as accurate to the sense of Zayas as possible,” Greer acknowledges that
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`6 For example, Greer testifies that the Spanish language “used to use semicolons where we use
`periods.” (See Greer Dep. at 81:2, ECF No. 110-6.) If Olivares replaced Zayas’ sentence-ending
`semicolons with periods, that revision reflects conformance with convention, not creative choice.
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`Olivares had to exercise some judgment when supplying punctuation to the original text.
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`(Greer Dep. at 67:1–20, ECF No. 110-6.)
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`On the record before the Court, there is sufficient evidence for a reasonable jury to
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`find that Olivares’ corrections to Zayas’ punctuation and paragraph breaks satisfy the
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`originality requirement of copyright law. The existence of this genuine issue for trial precludes
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`an award of summary judgment in favor of Defendants. It also eliminates the need for the
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`Court to comprehend the full scope of Olivares’ contributions to Zayas’ text, which is not
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`possible on the present record. Because a reasonable jury could find that Olivares’ copyright
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`extends to certain elements of the text of the Novelas amorosas that appears in his edition,
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`Defendants are not entitled to summary judgment on the issue of copyrightability.
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`B. Defenses to Infringement
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`Defendants next argue, in the alternative, if the Court does not grant their motion for
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`summary judgment on the issue of copyrightability, they seek summary judgment based on
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`their argument that the defenses of fair use and estoppel would nonetheless preclude a finding
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`of infringement in this case. To obtain summary judgment on an affirmative defense, a
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`defendant “must conclusively establish all essential elements of that defense.” Ray Commc’ns,
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`Inc. v. Clear Channel Commc’ns, Inc., 673 F.3d 294, 299 (4th Cir. 2012) (considering the
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`affirmative defense of laches in a trademark infringement case). “When the defendant has
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`produced sufficient evidence in support of its affirmative defense, the burden of production
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`shifts to the plaintiff to ‘come forward with specific facts showi