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`THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF PUERTO RICO
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`HECTOR L. ALVARADO-ORTIZ, aka
`“TOWY”,
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`Plaintiff,
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`v.
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`OMAR GONZALEZ-SANTIAGO, aka
`“SUPER YEI”, and/or “SUPERIORITY”,
`d/b/a/ “SUPERIORITY”, et al.,
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`Defendants.
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`Civ. No. 21-1197 (ADC)
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`MEMORANDUM OPINION & ORDER
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` Before the Court are two post-judgment motions filed by the prevailing defendants,
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`Omar González-Santiago (“González-Santiago”), Osquel Santiago-García, Gerardo Martínez-
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`Salella, Samuel J. Figueroa-Cruz, Heriberto Santiago-García, and Jonathan González-Collazo
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`(collectively, and with González-Santiago, “defendants”). In their first motion, defendants
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`request that the Court amend nunc pro tunc the judgment entered on September 30, 2022 (ECF
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`No. 43) to reflect that the copyright infringement claims filed by plaintiff Héctor L. Alvarado-
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`Ortiz (“plaintiff”) against González-Santiago have been dismissed with prejudice. See ECF No.
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`47. Seeing that this motion is unopposed and that the Court’s Order of September 26, 2022 (ECF
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`No. 41) reflects a dismissal with prejudice as to the claims against González-Santiago, the Court
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`hereby GRANTS defendants’ request to amend the judgment nunc pro tunc.
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`Defendants’ second motion requests an award for reasonable attorney’s fees incurred in
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`defending the copyright infringement claims levelled against González-Santiago under the
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`Case 3:21-cv-01197-ADC Document 49 Filed 09/11/23 Page 2 of 10
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`Civil No 21-1197 (ADC) Page 2
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`Copyright Act and for vexatious litigation, 28 U.S.C. § 1927. ECF No. 46. Defendants request an
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`award for $19,350. See id., at 4.
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`From the outset, the Court advances that it will deny an award under 28 U.S.C. § 1927, as
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`it is not evident that plaintiff’s counsel “so multiplie[d] the proceedings in [this] case
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`unreasonably and vexatiously” to warrant relief of this kind. The situation is different for
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`defendant’s request under the Copyright Act, which provides for the “recovery of full costs by
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`or against any party” and an “award [for] reasonable attorney's fee to the prevailing party as
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`part of the costs,” subject to the Court’s discretion. 17 U.S.C. § 505. In order for such allowance
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`and award, the Court must evaluate the criteria set out in Fogerty v. Fantasy, Inc., 510 U.S. 517
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`(1994) and Kirstaeng v. John Wiley & Sons, Inc., 579 U.S. 197 (2016). In doing so, it is guided by the
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`First Circuit’s application of these criteria in subsequent cases. See, e.g., Markham Concepts, Inc.
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`v. Hasbro, Inc., 71 F.4th 80 (1st Cir. 2023); Small Justice LLC v. Xcentric Ventures LLC, 873 F.3d 313
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`(1st Cir. 2017).
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`As a threshold matter, the Court sees no problem in finding that González-Santiago is a
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`“prevailing party” for purposes of 17 U.S.C. § 505. González-Santiago obtained judgment in his
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`favor over plaintiff’s claims based on a motion to dismiss for failure to state a claim. After
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`presenting proof that he held a license from the other undisputed joint authors (i.e., co-
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`defendants Heriberto Santiago-García, Osquel Santiago-García, and Jonathan González-
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`Collazo) to use the copyrighted material at issue. See ECF No. 35-2 (granting “Superiority,”
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`Case 3:21-cv-01197-ADC Document 49 Filed 09/11/23 Page 3 of 10
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`Civil No 21-1197 (ADC) Page 3
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`González-Santiago’s alias and trade name, license to exploit the master recording of the
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`copyrighted material at issue). Thus, his dismissal operates as a decision on the merits that has
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`created “a material alteration of the legal relationship between the parties.” Buckhannon Bd. &
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`Care Home, Inc. v. W. Virginia Dep't of Health & Hum. Res., 532 U.S. 598, 603–04 (2001).
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`But even if one were to see the dismissal as something less than a full victory on the
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`merits, that would matter little. A defendant can be a prevailing party even if his or her victory
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`is one on standing grounds or comes as a result of a plaintiff’s discovery violations. See Small
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`Justice LLC v. Xcentric Ventures LLC, 873 F.3d at 328 (citing InvesSys, inc. v. McGraw-Hill Cos., 369
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`F.3d 16, 20 (1st Cir. 2004)). Thus, González-Santiago is a prevailing party under 17 U.S.C. § 505.
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`Turning to the Fogerty test, the Supreme Court in that case adopted “several nonexclusive
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`factors that courts should consider in making awards of attorney's fees to any prevailing party.”
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`Fogerty, 510 U.S. at 534 n. 19. “These factors include frivolousness, motivation, objective
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`unreasonableness (both in the factual and in the legal components of the case) and the need in
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`particular circumstances to advance considerations of compensation and deterrence.” Id.,
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`(citation and quotation marks omitted). In Kirstaeng, the Supreme Court clarified that the
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`“objective reasonableness” factor was “an important factor in assessing fee applications [but]
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`not a controlling one.” Kirstaeng, 579 U.S. at 208. “Although objective reasonableness carries
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`significant weight, courts must view all the circumstances of a case on their own terms, in light
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`of the Copyright Act's essential goals.” Id. The statute’s “essentials goals” are “enriching the
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`Case 3:21-cv-01197-ADC Document 49 Filed 09/11/23 Page 4 of 10
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`Civil No 21-1197 (ADC) Page 4
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`general public through access to creative works… by striking a balance between two subsidiary
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`aims: encouraging and rewarding authors' creations while also enabling others to build on that
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`work.” Kirstaeng, 579 U.S. at 204 (citing U.S. Const., Art. I, § 8, cl. 8 and Fogerty, 510 U.S. at 526-
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`27).
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`After fresh review of the amended complaint and the ensuing motions, the Court finds
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`that the record does not show that plaintiff’s claims against González-Santiago were either
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`frivolous, motivated in bad faith, or objectively unreasonable either at law or in fact. Admittedly,
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`the record is slim, limited to pleadings, two motions to dismiss under Fed. R. Civ. P. 12(b)(6),
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`and the documents submitted by defendants in compliance with the Court’s order at ECF No.
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`32 to “file into the record evidence as to the copyrights and licenses held by each party….”
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`From the outset, the Court notes that defendants arguments are two-fold: (1) that the
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`Copyright Act’s essential goals were frustrated by plaintiff’s lawsuit given that defendants’
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`“creative work has been inaccessible to the public for 18 months;” and that (2) plaintiff’s lack of
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`interest in the prosecution of his case, evidenced by inexplicable procedural delays and failures
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`to comply with filing and court-imposed deadlines, was objectively unreasonable. No argument
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`is made as to whether the complaint was frivolous or motivated by bad faith.
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`First, the Court’s own review of the record finds that there is little to no indication of a
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`bad faith motivation behind the complaint. Second, neither can the Court classify the claims
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`against González-Santiago as frivolous, and in that same vein, the Court finds that the claims
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`Case 3:21-cv-01197-ADC Document 49 Filed 09/11/23 Page 5 of 10
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`Civil No 21-1197 (ADC) Page 5
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`against González-Santiago were not objectively unreasonable in fact or law. As opposed to co-
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`defendants Heriberto Santiago-García, Osquel Santiago-García, and Jonathan González-
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`Collazo, plaintiff did not recognize González-Santiago as a co-author of the copyrighted
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`material in his complaint. See ECF No. 19-1 at ¶¶ 23, 34, 68(g). The proof that ultimately carried
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`the day for González-Santiago was a “split sheet” royalty agreement in which these co-
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`defendants, as joint authors of the copyrighted material, granted him a license to exploit it. See
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`ECF No. 35-2. Although plaintiff’s name and contribution were included in the agreement, his
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`signature is absent from the document and there is nothing in the record that would suggest
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`that he was aware of this license. Accordingly, it was neither frivolous nor objectively
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`unreasonable, from the limited facts available on the record, for plaintiff to claim that Gonzalez-
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`Santiago was infringing on his copyright.
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`Third, defendants do have a point in that plaintiff’s lawsuit resulted in the public being
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`deprived of the enjoyment of the copyrighted work at issue here, as well as defendants’
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`enjoyment of its fruits for that period. This deprivation was ultimately unjustified given the lack
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`of merit of plaintiff’s copyright infringement claims—evidenced by its complete dismissal with
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`prejudice as to González-Santiago and without prejudice on sufficiency and time-limitations
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`grounds as to all other defendants. The above supports the imposition of attorney’s fees as a
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`deterrent against similar future actions.
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`Case 3:21-cv-01197-ADC Document 49 Filed 09/11/23 Page 6 of 10
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`Civil No 21-1197 (ADC) Page 6
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`Fourth, and relatedly, the Court is sympathetic to defendants’ argument that plaintiff’s
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`inattention to his case is a factor to consider, albeit not under the objective reasonableness prong.
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`The Fogerty factors are not exhaustive and the Court’s determination on the imposition of
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`attorney’s fees under 17 U.S.C. § 505 is subject to its sound discretion. Here, plaintiff’s failure to
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`comply with the Court’s Order at ECF No. 32 is evident. The Court there warned all parties that
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`failure to comply “shall result in the imposition of sanctions and[/]or denial of their respective
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`requests” to dismiss at ECF No. 17 and 20 and to amend the complaint at ECF No. 19.1 Moreover,
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`plaintiff’s counsel attempted to withdraw from his legal representation—without replacement
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`counsel—mere days after defendants moved to reiterate their request to dismiss the complaint
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`given plaintiff’s failure to comply with ECF No. 32. See ECF Nos. 36 and 38. This request was
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`not granted but held in abeyance instead. See ECF No. 39. Plaintiff was granted thirty days to
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`announce new counsel, but he failed to do. Id. Finally, it is not lost upon the Court that plaintiff
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`has failed to oppose defendant’s motion for attorney’s fees, which represents a sizable exposure
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`to him but has apparently not generated enough interest to warrant an opposition. Taken
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`together, this conduct—which includes noncompliance with a court order warning of the
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`possibility of sanctions—is not indicative of a party interested in vindicating its rights.
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`1 The order cannot be reasonably read not to include plaintiff. When it intended to refer only to defendants, as in the second and
`third sentences, it did so. But the imperative sentence compelling compliance was clearly directed at “all parties.”
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`Case 3:21-cv-01197-ADC Document 49 Filed 09/11/23 Page 7 of 10
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`Civil No 21-1197 (ADC) Page 7
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`Finally, the Court must note that defendants’ request for attorney’s fees is limited to the
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`dismissal of the copyright infringement claims against González-Santiago. These claims, as
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`noted above, were dismissed with prejudice after defendants proffered evidence to show that
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`González-Santiago received a valid license to exploit the copyrighted material from its co-
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`authors. This rationale is different from that applied to the other co-defendants, which were
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`dismissed because the complaint lacked any plausible allegation as to any infringing conduct.
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`However, the Court notes that, as to Heriberto Santiago-García, Osquel Santiago-García, and
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`Jonathan González-Collazo, the claims were frivolous and objectively unreasonable, as plaintiff
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`recognized himself in his complaint that they were copyright holders, against which an
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`infringement action was impossible. In that sense, the complaint cannot be said to advance a
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`legitimate interest in furtherance of the Copyright Act’s goals to protect creators. Nevertheless,
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`defendants did not request attorney’s fees in relation to these claims, so the Court will not afford
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`this fact too much weight.
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`After the above review, the Court finds that the goals of the Copyright Act, coupled with
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`plaintiff’s lack of interest in prosecuting his claims and vindicating his rights, merits the
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`awarding of reasonable attorney’s fees under 17 U.S.C. § 505. The Court has reviewed
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`defendants’ counsel’s time sheets and supporting sworn statement. From its analysis, the Court
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`is of the opinion that it should consider the work directly related or necessary for the preparation
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`of the motions to dismiss the copyright infringement claims against González-Santiago and the
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`Case 3:21-cv-01197-ADC Document 49 Filed 09/11/23 Page 8 of 10
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`Civil No 21-1197 (ADC) Page 8
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`motion in compliance with the court’s order at ECF No. 35. The Court will follow the lodestar
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`method for determining attorney's fees. Under the lodestar method, number of hours
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`productively spent on the case are multiplied by a reasonable hourly rate. Torres-Rivera v.
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`O'Neill-Cancel, 524 F.3d 331, 336 (1st Cir. 2008). The reasonable hourly rate is “a determination
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`that is often benchmarked to the prevailing rates in the community for lawyers of like
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`qualifications, experience, and competence.” Matalon v. Hynnes, 806 F.3d 627, 638 (1st Cir. 2015)
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`(citation and quotation marks omitted).
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`The Court’s lodestar calculation will thus be limited to the line items listed (i) after the
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`filing of the original complaint, starting on April 29, 2021, up to the line item at January 13, 2022
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`(excepting line items whose description does not evidence a direct relationship to the effort to
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`obtain dismissal); plus (ii) those line items listed after the Court’s issuance of its order for
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`evidence of copyrights and licenses on May 19, 2022, up to defendants’ motion reasserting their
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`request for dismissal on July 6, 2022. See ECF No. 46-1. The total hours add up to 28.30.
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`As to counsel’s $300.00 hourly rate, the only supporting evidence presented is an
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`unsworn statement under penalty of perjury submitted by attorney Francisco E. Colón-Ramírez
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`who attested, inter alia, that his legal practice includes “reviewing invoices for legal fees
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`submitted to insurers, to assess the reasonableness thereof;” that counsel’s years of experience
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`exceed his 28 years in the practice; that he has clients that have agree to a $300 hourly rate; and
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`that in his “professional opinion, the tasks performed by [defendants’ counsel] and the time
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`Case 3:21-cv-01197-ADC Document 49 Filed 09/11/23 Page 9 of 10
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`Civil No 21-1197 (ADC) Page 9
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`spent on each task is reasonable considering the nature of the case.” See ECF No. 46-2.
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`Defendants’ counsel did not provide any other support for her request.
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`Lucky for defendants’ counsel, even though there is persuasive authority in this district
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`to fix a reasonable rate at $275.00, see Pérez-Sosa v. Barr, No. CV 17-1399 WES, 2020 WL 13647081,
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`at *2 (D.P.R. Oct. 21, 2020); Skytec, Inc. v. Logistic Sys., Inc., No. CV 15-2104 (BJM), 2019 WL
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`2246775, at *2 (D.P.R. May 23, 2019), the Court is aware that most recently, in Howard v. Redline
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`Global, LLC, a sister Court considered her $300.00 per hour fee as reasonable. See Howard v.
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`Redline Glob., LLC, No. CV211538RAMMDM, 2023 WL 2910565, at *8 (D.P.R. Apr. 11, 2023),
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`report and recommendation adopted sub nom. Howard v. Redline Glob., LLC., No. CV 21-1538(RAM),
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`2023 WL 3158934 (D.P.R. Apr. 28, 2023). The Court will not quarrel with this determination,
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`particularly given the unopposed nature of the request.
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`The lodestar formula here is thus 28.30 x $300.00, and the total amount comes up to
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`$8,490.00. The Court considers it reasonable and just, under the circumstances present in the
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`record before it and to serve the deterrence goal of the Copyright Act, to award defendants this
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`amount.
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`For the reasons stated above:
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`1. The Court hereby GRANTS defendants’ unopposed request to amend the judgment
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`nunc pro tunc at ECF No. 47, and the Clerk of Court shall enter an amended judgment
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`reflecting the dismissal with prejudice of the copyright infringement claims against
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`Case 3:21-cv-01197-ADC Document 49 Filed 09/11/23 Page 10 of 10
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`Civil No 21-1197 (ADC) Page 10
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`defendant Omar González-Santiago pursuant to this Court’s Order at ECF No. 41;
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`and
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`2. The Court GRANTS IN PART defendants’ motion at ECF No. 46 for reasonable
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`attorney’s fees under 17 U.S.C. § 505, as a result of which plaintiff is ordered to pay
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`defendants the total sum of $8,490.00 in that concept.
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`SO ORDERED.
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`At San Juan, Puerto Rico, on this8th day of September 2023.
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` S/AIDA M. DELGADO-COLÓN
` United States District Judge
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