`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF PUERTO RICO
`
`
`
`THE ESTATE OF JOSÉ ANTONIO
`
`TORRES MARTINÓ, represented by
`
`RAÚL CINTRÓN RODRÍGUEZ,
`
`
`
`
` Plaintiffs,
`
`
`
`
`
`v.
`
`
`
`FOUNTAIN CHRISTIAN BILINGUAL
`
`SCHOOL CAROLINA, INC.; FOUNTAIN
`
`CHRISTIAN
`BILINGUAL
`SCHOOL,
`CIVIL NO. 18-1509(RAM)
`INC.; OMAYRA GUTIERREZ; OTONIEL
`FONT
`NADAL;
`THE
`CONJUGAL
`PARTNERSHIP BETWEEN OTONIEL FONT
`NADAL AND OMAYRA GUTIERREZ;
`FREDDY ABDUL SANTIAGO; JANE DOE;
`THE CONJUGAL PARTNERSHIP BETWEEN
`FREDDY ABDUL SANTIAGO AND JANE
`DOE; AND INSURANCE COMPANIES A
`AND B; CORPORATIONS A, B, AND C;
`JOHN DOE AND OTHER UNNAMED
`DEFENDANTS,
`
` Defendants.
`
`
`OPINION AND ORDER
`RAÚL M. ARIAS-MARXUACH, District Judge
`Pending before the Court is Defendants Fountain Christian
`Bilingual School, Inc. (“FCBS”) and Fountain Christian Bilingual
`School Carolina, Inc.’s (“FCBSC”) (jointly, “Defendants”) Motion
`to Dismiss Claims of Second Amended Complaint Based on State Law
`
`and State Constitution for Preemption (“Motion”) (Docket No. 150).1
`
`
`1 On June 18, 2021, Plaintiffs dismissed the Complaint against Omayra Gutierrez,
`Otoniel Font-Nadal and their conjugal partnership. (Docket No. 202). Partial
`
`
`
`2
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`After reviewing the parties’ submissions in support and
`opposition, the Court DENIES the Motion to Dismiss and sua sponte
`DISMISSES the Visual Artist Rights Act of 1990 claim.
`I. FACTUAL AND PROCEDURAL BACKGROUND
`On August 9, 2019, Plaintiffs filed a Second Amended Complaint
`(“Complaint”), against FCBS, FCBSC, Omayra Gutierrez and Otoniel
`Font-Nadal and unnamed codefendants. (Docket No. 142).2 They aver
`claims under the Copyright Act of 1909 (“the Copyright Act”), the
`Visual Artist Rights Act of 1990 (“VARA”), 17 U.S.C. §§ 101-1511,
`the Puerto Rico Authors’ Moral Rights Act (“PRMRA”), P.R. Laws
`Ann. tit. 31, §§ 1404i-1401ff, Article II Section 1 and Section 8
`of the Constitution of the Commonwealth of Puerto Rico, P.R. Const.
`art. II, §1, 8, and Article 1802 of the Puerto Rico Civil Code,
`codified at P.R. Laws Ann. tit. 31, § 5141. Id. ¶¶ 4.1-8.4. They
`allege Defendants mutilated and destroyed the mural “Rio Grande de
`Loíza” (“the mural”) created by José Antonio Torres-Martinó
`(“Torres-Martinó”) in an interior wall of a school leased by FCBS
`and FCBSC. Id. ¶ 3.32. When Torres-Martinó painted the mural in
`1966, the Puerto Rico Department of Transportation and Public Works
`
`
`final judgment was issued on June 24, 2021. (Docket No. 204). The Complaint
`also named as defendants Freddy Abdul-Santiago, Nodelis Alin Figueroa-Andino
`and their conjugal partnership, but that action is stayed per an October 31,
`2018 filing before the United States Bankruptcy Court for the District of Puerto
`Rico, case no. 18-06401-13. (Docket Nos. 85; 86; 142 at 3-4).
` Plaintiffs are members of Torres-Martinó’s Estate: José Martín Torres,
`Jackeline Torres, Michelle Torres, and Corrine Cobb (Plaintiffs”). (Docket No.
`142 at 2). Their legal representative is Raúl Cintrón-Rodríguez, allegedly
`chosen by Torres-Martinó as executor of his will. Id.
`
` 2
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`
`
`3
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`(“DTOP”) owned the school, and school visitors could access it
`until the school’s July 2017 closure. Id. ¶¶ 3.22-3.26. On April
`2, 2018, DTOP leased the school to Defendants and on April 12,
`2018, Plaintiffs learned Defendants had painted over the mural
`with light gray paint. Id. ¶¶ 3.28 and 3.32. Thus, they seek
`preliminary and permanent injunctions barring Defendants from
`attempting to “‘rescue,’ ‘recover,’ alter, deface, modify,
`mutilate or destroy” the mural, statutory and compensatory damages
`for damage caused to the mural, and costs to restore the mural by
`a qualified professional. Id. ¶¶ 10.1- 10.8.
`On October 4, 2019, Defendants filed the pending Motion
`seeking dismissal of the Complaint’s third, fourth and fifth causes
`of action concerning Plaintiffs’ state law claims. (Docket No.
`150). They claim dismissal is proper because Section 301 of the
`Copyright Act, 17 U.S.C. §301(a-e), and of VARA, 17 U.S.C. §301(f),
`preempt state law-based moral rights claims. Id. at 3-6.
`On November 13, 2019, Plaintiffs opposed the Motion. (Docket
`No. 159). They argue the state law causes of action invoking local
`laws protecting the integrity of a visual work of art fall under
`the exceptions in Section 106 of the Copyright Act and are not
`preempted by federal copyright law. Id. at 4. Further, federal
`copyright laws allegedly do not preempt Puerto Rico moral rights.
`Id. Defendants replied followed by Plaintiffs’ sur-reply. (Docket
`Nos. 167 and 178). The case has been stayed repeatedly pending the
`
`
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`Motion’s resolution. (Docket Nos. 188, 190, 195-196, 205-208 and
`212 and 215).
`
`4
`
`II. LEGAL STANDARD
`A. Dismissal for Failure to State a Claim Under Fed. R. Civ.
`12(B)(6)
`
`Fed. R. Civ. P. 12(b)(6) authorizes a complaint’s dismissal
`for "failure to state a claim upon which relief can be granted."
`To survive this motion, a complaint must contain sufficient factual
`matter stating a claim for relief is “plausible on its face." Bell
`Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). The Court must
`find if all alleged facts, when viewed in favor of plaintiff, make
`plausible plaintiff's entitlement to relief. See Ocasio-Hernandez
`v. Fortuno-Burset, 640 F.3d 1, 14 (1st Cir. 2011). Dismissal is
`proper only when these facts “taken as true, do not warrant
`recovery[.]” Martell-Rodríguez v. Rolón Suarez, 2020 WL 5525969,
`at *2 (D.P.R. 2020) (quotation omitted). Non-conclusory
`allegations are deemed true. See Nieto-Vicenty v. Valledor, 984 F.
`Supp. 2d 17, 20 (D.P.R. 2013). But “[t]hreadbare recitals of the
`elements of a cause of action, supported by mere conclusory
`statements, do not sufficient.” Prieto-Rivera v. American
`Airlines, Inc, 2021 WL 3371014, at *2 (D.P.R. 2020) (quotation
`omitted).
`Even when a party has not moved to dismiss a complaint, “a
`district court may ‘note the inadequacy of the complaint and, on
`
`
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`5
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`its own initiative, dismiss [it]’ under Rule 12(b)(6).” Fernandez
`v. BRG, LLC, 2017 WL 7362729, at *4 (D.P.R. 2017) (quotation
`omitted) (emphasis added). Sua sponte dismissal is “strong
`medicine,” and should be used sparingly. Southern Cat, Inc. v. W
`PR Mgmt., LLC, 2021 WL 1699226, at *2 (D.P.R. 2021) (quotation
`omitted). Such dismissals are erroneous unless parties “have been
`afforded notice and an opportunity to amend the complaint” or
`respond. Sanchez v. Pereira-Castillo, 590 F.3d 31, 40 (1st Cir.
`2009) (quotation omitted). However, they will be upheld without
`prior notice when the allegations, taken in favor of plaintiff,
`“are patently meritless and beyond all hope of redemption.”
`Gonzalez–Gonzalez v. United States, 257 F.3d 31, 37 (1st Cir.
`2001). “Only where ‘it is crystal clear that the plaintiff cannot
`prevail and that amending the complaint would be futile can a sua
`sponte Rule 12(b)(6) dismissal stand.’” Southern Cat, Inc., 2021
`WL 1699226, at *2 (quotation omitted).
`B. Copyright Act of 1909
`The Copyright Act, as amended in 1976, offers copyright
`holders the exclusive rights of reproduction, distribution,
`performance, display, and preparation of derivative works and
`allows them to recover for infringement of their copyright. See
`Fourth Est. Pub. Benefit Corp. v. Wall-Stret.com, LLC, 139 S. Ct.
`881, 887 (2019) (quoting 17 U.S.C. §106). A party “infringes a
`copyright ‘when he or she violates one of [those] exclusive
`
`
`
`6
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`rights.’” Berio-Ramos v. Flores-Garcia, 2020 WL 2788504, at *3
`(D.P.R. 2020) (quoting T-Peg, Inc. v. Vermont Timber Works, 459
`F.3d 97, 108 (1st Cir. 2006) (modification in original). The
`Copyright Act affords remedies such as injunctive relief and actual
`or statutory damages. See Massachusetts Museum Of Contemp. Art
`Found., Inc. v. Buchel, 593 F.3d 38, 48 (1st Cir. 2010). But, while
`it provides economic rights, the moral rights protected by VARA
`“exist independent[ly] of the [Copyright Act’s] economic rights.”
`Id.
`C. Visual Artist Rights Act of 1990
`In 1990, VARA amended the Copyright Act. See 17 U.S.C. §106A;
`Urbain Pottier v. Hotel Plaza Las Delicias, Inc., 379 F. Supp. 3d
`130, 132 (D.P.R. 2019) (quotation omitted). VARA “protects the
`‘moral rights’ of certain visual artists in the works they
`create[.]” Id. (quoting Massachusetts Museum of Contemporary Art
`Found., Inc., 593 F.3d at 47). These rights are “of a spiritual,
`non-economic and personal nature that exist independently of an
`artist's copyright in” their work. Rivera v. Mendez & Co., 824 F.
`Supp. 2d 265, 267 (D.P.R. 2011) (quotation omitted). Hence, they
`“spring from a belief that an artist in the process of creation
`injects his spirit into the work and that the artist's personality,
`as well as the integrity of the work,” should be protected. Id.
`
`
`
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`
`7
`
`IV. ANALYSIS
`Inapplicability of VARA to Plaintiffs’ Claims
`A.
`In their Motion, Defendants argue Plaintiffs’ state law
`claims are preempted because they provide the same rights and
`protections as the Copyright Act and VARA. (Docket No. 150 at 3,
`5-6). Conversely, Plaintiffs’ Opposition argues that matters
`related to the integrity of the work are not protected by federal
`copyright law and therefore are not preempted. (Docket. No. 159 at
`4).
`
`In the Copyright Act, Congress did not grant copyright holders
`moral rights. Circuit Courts have long upheld this assertion. In
`Gilliam v. American Broadcasting Cos., the Second Circuit
`explained that American copyright law “does not recognize moral
`rights or provide a cause of action for their violation, since the
`law seeks to vindicate the economic, rather than the personal,
`rights[.]” Gilliam v. American Broadcasting Cos., 538 F.2d 14, 24
`(2d Cir. 1976). Not much has changed since then. See Garcia v.
`Google, Inc., 786 F.3d 733, 746 (9th Cir. 2015) (“Except for a
`limited universe of works of visual art, . . . United States
`copyright law generally does not recognize moral rights.”); Kelley
`v. Chicago Park Dist., 635 F.3d 290, 297 (7th Cir. 2011) (holding
`that moral rights, especially the right of integrity over an
`artwork, “simply does not exist in our law.”) (quotation omitted).
`
`
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`
`8
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`The moral rights protected by VARA include the right of
`attribution and of integrity. See 17 U.S.C. §106(a).3 Attribution
`protects “the author's right to be identified as” author of their
`work and “against the use of [their] name in connection with works
`created by others.” Id. at 48. While the right of integrity
`protects their work from deformations or “mutilating” changes. Id.
`The parties do not question in the Complaint or in the Motion
`whether the mural falls under VARA’s aegis. (Docket Nos. 142 and
`150). Instead, they disagree as to whether VARA preempts the moral
`
`
`3 Regarding rights of attribution and integrity, VARA holds that a work’s author:
`
`(1) shall have the right—
`
`(A) to claim authorship of that work, and
`
`(B) to prevent the use of his or her name as the
`author of any work of visual art which he or she
`did not create;
`
`(2) shall have the right to prevent the use of his or
`her name as the author of the work of visual art in the
`event of a distortion, mutilation, or other
`modification of the work which would be prejudicial to
`his or her honor or reputation; and
`
`(3) subject to the limitations set forth in section
`113(d), shall have the right—
`
`(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 USC § 106(A)(a).
`
`
`
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`rights claims grounded on state law. (Docket Nos. 150, 159, 167
`and 178). However, works deemed “site-specific” are excluded from
`VARA’s protection per First Circuit precedent.
`In a site-specific artwork, “the artist incorporates the
`environment as one of the media with which” they work. Phillips v.
`Pembroke Real Estate, Inc., 459 F3d. 128, 134 (1st Cir. 2006).
`Thus, “the location of the work is an integral element of the work”
`and because it “contributes to [the work’s] meaning, site-specific
`art is destroyed if it is moved from its original site.” Id.
`(citation omitted). Hence, Phillips held that “VARA does not apply
`to site-specific art at all[.]” Id. at 143 (emphasis added).
`The District of Puerto Rico’s decision in Urbain Pottier v.
`Hotel Plaza Las Delicias, Inc. is instructive as to Phillips and
`VARA’s application to murals. See Urbain Pottier, 379 F. Supp. 3d
`130 (2019) (citation omitted). The case concerned the mural
`“Espejismo Nocturno,” located in a hotel bar in Ponce, Puerto Rico
`which was painted by Patrick Urbain Pottier in April 2013. Id. at
`131. In 2016, the hotel changed the bar’s location and wallpapered
`the mural allegedly “mutilating it and destroying it completely to
`the point where it [could not] be restored to its original state.”
`Id. Mr. Urbain sued the hotel for copyright infringement under the
`Copyright Act and the PRMRA. Id. After considering the mural was
`designed “taking into consideration the [bar’s] structure and
`architecture” and that it was a “known attraction” and “fundamental
`
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`part” of the bar to appeal to customers and tourists, the District
`Court held it was site-specific and unprotected by VARA or the
`PRMRA. Id. at 131, 133. The Court cannot reach a different
`conclusion here.
`The Complaint reflects the mural is a site-specific artwork.
`It was created in a school named after the renowned Puerto Rican
`poet Julia de Burgos and included an excerpt from her poem “Rio
`Grande de Loiza.” (Docket No. 142 ¶ 3.25).4 The mural “not only
`had artistic significance, but as part of the school building, it
`also had cultural and educational significance for every student
`who would graduate from said school[.]” Id. (emphasis added). It
`was cared for by members of the school community and was accessible
`to visitors until the school’s closure. Id. ¶ 3.26. Therefore,
`like “Espejismo Nocturno”, this mural is site-specific because its
`location is an “integral element” of it and moving it will likely
`destroy it. See Phillips, 459 F.3d at 134; see also Guzman v. New
`Mexico State Dep't of Cultural Affs., 2021 WL 1534138, at *5
`(D.N.M. 2021) (holding that a forty-year old mural could not likely
`be removed given plaintiffs’ failure to show it could be extracted
`“without altering, distorting, or destroying it.”); Kammeyer v.
`
`
`4 The excerpt reads as follows: “¡Rio Grande de Loiza! . . . . Rio grande.
`Llanto grande. El más grande de todos nuestros llantos isleños[.]” (Docket No.
`142-2 at 1-2). This translates to “Rio Grande Loiza! … Great river. Great tear.
`The greatest river of all ours tears.” Maira Garcia, Overlooked No More: Julia
`de Burgos, a Poet Whole Helped Shape Puerto Rico’s Identity, N.Y. Times (May 2,
`2018),
`https://www.nytimes.com/2018/05/02/obituaries/overlooked-julia-de-
`burgos.html (last visited October 5, 2021).
`
`
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`Oneida Total Integrated Enterprises, 2015 WL 5031959, at *6 (C.D.
`Cal. 2015) (noting the court could hold “the Mural is site-specific
`and thus not covered by VARA” but choosing to not resolve the
`issue). Since the Motion did not argue VARA’s inapplicability, the
`Court is mindful of the First Circuit’s warnings about prior notice
`of sua sponte dismissals. See Sanchez, 590 F.3d at 40. However,
`amendment of the Complaint would be futile as Phillips held that
`VARA does not apply “at all” to site-specific art. Phillips, 459
`F3d. 128 at 143. The mural is not afforded VARA’s protection and
`sua sponte dismissal is warranted. See e.g., Rivera Olmo v.
`Municipality of Carolina, 2017 WL 3600930, at *3 n.4 (D.P.R. 2017)
`(finding dismissal of state law tort claims without prior notice
`warranted since “the defect could not be cured by an amendment”).
`Lastly, given that VARA does not protect site-specific art,
`Plaintiffs’ moral rights claims pursuant to the PRMRA, the
`Constitution of the Commonwealth of Puerto Rico, and Article 1802
`of the Puerto Rico Civil Code are not preempted.
`V. CONCLUSION
`For the foregoing reasons, the Court DENIES the Motion to
`Dismiss (Docket No. 150) and sua sponte dismisses the Complaint’s
`VARA claim. Plaintiffs are given fourteen (14) days to show cause:
`a. Why the federal copyright claim should not be dismissed.
`
`
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`
`12
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`b. Why the Court should not decline to exercise supplemental
`jurisdiction under 28 U.S.C. § 1367 over remaining state
`law claims if the federal copyright claims are dismissed.
`IT IS SO ORDERED.
`In San Juan, Puerto Rico, this 5th day of October 2021.
`S/ RAÚL M. ARIAS-MARXUACH
`United States District Judge
`
`
`
`