First Circuit Finds Infringement in TV Sitcom

The U.S. Court of Appeals for the First Circuit decided that actor Emmanuel “Sunshine” Logro'o and a TV production in which he was a principal infringed on the copyright for the plaintiff production company's TV situation comedy. TMTV Corp. v. Mass Productions Inc., 09-1439. In addition to substantial similarity, the case involved issues of authorship, work for hire and a reduction in infringement damages.

Logro'o had been approached in 1997 by TMTV's predecessor-in-interest to co-host a new variety show, De Noche con Iris y Sunshine, for broadcast in Puerto Rico. The actor then met with scriptwriters Roberto Jim'nez and Miguel Morales. Jim'nez raised the idea of creating a sitcom segment, which became “Pisos de Historia” about condominium residents. Logro'o asked Jim'nez and Morales to write the first several episodes. In 1999, Logro'o left the TV show to star in another program, El Condominio, made by his company Mass Productions and broadcast by a Televicentro affiliate. TMTV responded by suing Logro'o and Mass Productions for infringement. The U.S. District Court for the District of Puerto Rico granted summary judgment to TMTV. (TMTV sued Televicentro separately, settling through payment of $700,000 of Televicentro's profits to TMTV.)

Logro'o claimed authorship of the early TMTV episodes scripts, but affirming summary judgment the Third Circuit noted: “Logro'o's claim to have substantially rewritten the [Jim'nez and Morales] scripts is refuted by comparing the originals and the final product. As for Logro'o's supposed outlining of the plots, he has pointed to no writing ' neither any written outline by him nor any notes taken by anyone at the original meeting ' that reflects anything like an outline of the scripts. At best, Logro'o's version would mean that he suggested some general ideas for plots and possible stock characters for the initial scripts.”

The appeals court determined that TMTV owned the copyrights as works for hire from Jim'nez and Morales. The appeals court reasoned: “Jim'nez and Morales confirmed in depositions that this was their own oral understanding with the production company; but the [federal copyright] statute requires express agreement in a signed written instrument, see, 17 U.S.C. '101 (definition); and the [federal] circuits are divided as to whether the language and policy require the writing before the creation or at least the completion of the work. But even assuming that the rights remained with the scriptwriters, before this case began they conveyed (in writing, 17 U.S.C. '204(a)) whatever rights they had to TMTV.”

As for infringement, the Third Circuit observed: “The initial episode of El Condominio mentioned the characters' move to a new building; and the El Condominio advertising campaign invited viewers to reconnect with their favorite characters at a new location.” The appeals court agreed with the district court that “the similarities between the two programs are so striking that there is no doubt that 'El Condominio' is ' an unauthorized derivative work” of “Pisos de Historia.”

For damages, a jury had awarded TMTV $772,079, which the district judge reduced by the $700,000 that TMTV received in its settlement with Televicentro. Affirming the reduction, the Third Circuit explained: “True, some of the infringing acts differed: Logro'o acted and wrote scripts; [Televicentro] broadcast the programs. But the damages were (on TMTV's own theory) the same harm: the lost royalties that could have been earned by TMTV for the production and broadcast of the El Condominio programs if TMTV's right had been respected instead of infringed.”

The U.S. Court of Appeals for the First Circuit decided that actor Emmanuel “Sunshine” Logro'o and a TV production in which he was a principal infringed on the copyright for the plaintiff production company's TV situation comedy. TMTV Corp. v. Mass Productions Inc., 09-1439. In addition to substantial similarity, the case involved issues of authorship, work for hire and a reduction in infringement damages.

Logro'o had been approached in 1997 by TMTV's predecessor-in-interest to co-host a new variety show, De Noche con Iris y Sunshine, for broadcast in Puerto Rico. The actor then met with scriptwriters Roberto Jim'nez and Miguel Morales. Jim'nez raised the idea of creating a sitcom segment, which became “Pisos de Historia” about condominium residents. Logro'o asked Jim'nez and Morales to write the first several episodes. In 1999, Logro'o left the TV show to star in another program, El Condominio, made by his company Mass Productions and broadcast by a Televicentro affiliate. TMTV responded by suing Logro'o and Mass Productions for infringement. The U.S. District Court for the District of Puerto Rico granted summary judgment to TMTV. (TMTV sued Televicentro separately, settling through payment of $700,000 of Televicentro's profits to TMTV.)

Logro'o claimed authorship of the early TMTV episodes scripts, but affirming summary judgment the Third Circuit noted: “Logro'o's claim to have substantially rewritten the [Jim'nez and Morales] scripts is refuted by comparing the originals and the final product. As for Logro'o's supposed outlining of the plots, he has pointed to no writing ' neither any written outline by him nor any notes taken by anyone at the original meeting ' that reflects anything like an outline of the scripts. At best, Logro'o's version would mean that he suggested some general ideas for plots and possible stock characters for the initial scripts.”

The appeals court determined that TMTV owned the copyrights as works for hire from Jim'nez and Morales. The appeals court reasoned: “Jim'nez and Morales confirmed in depositions that this was their own oral understanding with the production company; but the [federal copyright] statute requires express agreement in a signed written instrument, see, 17 U.S.C. '101 (definition); and the [federal] circuits are divided as to whether the language and policy require the writing before the creation or at least the completion of the work. But even assuming that the rights remained with the scriptwriters, before this case began they conveyed (in writing, 17 U.S.C. '204(a)) whatever rights they had to TMTV.”

As for infringement, the Third Circuit observed: “The initial episode of El Condominio mentioned the characters' move to a new building; and the El Condominio advertising campaign invited viewers to reconnect with their favorite characters at a new location.” The appeals court agreed with the district court that “the similarities between the two programs are so striking that there is no doubt that 'El Condominio' is ' an unauthorized derivative work” of “Pisos de Historia.”

For damages, a jury had awarded TMTV $772,079, which the district judge reduced by the $700,000 that TMTV received in its settlement with Televicentro. Affirming the reduction, the Third Circuit explained: “True, some of the infringing acts differed: Logro'o acted and wrote scripts; [Televicentro] broadcast the programs. But the damages were (on TMTV's own theory) the same harm: the lost royalties that could have been earned by TMTV for the production and broadcast of the El Condominio programs if TMTV's right had been respected instead of infringed.”