United States Court of Appeals For the First Circuit
No. 20-1008
CYNTHIA FOSS,
Plaintiff, Appellant,
v.
MARVIC INC., d/b/a Brady-Built Sunrooms,
Defendant, Appellee.
APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS
[Hon. Timothy S. Hillman, U.S. District Judge]
Before
Lynch and Selya, Circuit Judges, and Katzmann,* Judge.
Andrew Grimm, with whom Gregory Keenan and Digital Justice Foundation were on brief, for appellant. James M. McLaughlin, with whom David F. Hassett, Sarah B. Christie, Melina M. Garland, and Hassett & Donnelly, P.C. were on brief, for appellee.
April 12, 2021
* Of the United States Court of International Trade, sitting by designation. LYNCH, Circuit Judge. Cynthia Foss is a graphic designer
who, in 2006, created a brochure for Marvic d/b/a Brady-Built
Sunrooms ("Marvic") to use in marketing its sunrooms and for which
she was paid. Twelve years later, she filed a complaint in federal
district court on January 19, 2018, alleging a federal claim for
copyright infringement and pendent state law claims. The district
court entered three separate rulings at issue in this appeal. On
March 19, 2019, it granted Marvic's motion to dismiss Foss's
copyright claim. See Foss v. Marvic, 365 F. Supp. 3d 164, 167 (D.
Mass. 2019). On September 30, 2019, it denied Foss's motion to
withdraw certain statements that the court had deemed admitted.
See Order Den. Mot. for Recons., Foss v. Marvic, No. 4:18-cv-
40010-TSH, (D. Mass. Sept. 30, 2019), ECF No. 74. On December 5,
2019, it granted Marvic's motion for summary judgment on Foss's
state law claims. See Foss v. Marvic, 424 F. Supp. 3d 158, 163
(D. Mass. 2019). Foss appeals from these rulings. We affirm.
I. Facts
In June 2006, Foss, acting through Hunter Foss Design
Inc., of which she is the President and Creative Director, provided
Marvic with an estimate of $3,000 for work in designing a twenty-
page brochure. The estimate said that this cost would include the
"usual and customary fees for research and design of (1) 20 page
brochure only; presentation of up to 3 comprehensive designs
showing style; 1 final layout showing format; 2 rounds of revisions; pdf files for email proofs; all file preparation for
printer, and permanent file archiving." Marvic engaged Foss and
paid her for her work. Marvic began using the brochure around
that time.
Foss alleges that ten years later, in 2016, she
discovered that Marvic had begun using a modified version of the
brochure she had designed in print and online without asking for
or receiving her permission. In November 2017, she sent a letter
to Marvic demanding payment for lost wages and copyright
infringement. She also sent Marvic an invoice for $264,000 seeking
compensation for Marvic's alleged copyright infringement over an
eleven-year period. She alleges that Marvic did not pay this
invoice.
II. Procedural History
Foss filed suit pro se against Marvic on January 19,
2018, in federal district court in Massachusetts. Her complaint
alleged that Marvic had infringed on her copyright and alleged,
inaccurately, that she had "applied for official U.S. Copyright
Registrations" for the brochure.
Marvic filed an answer on May 9, 2018, denying Foss's
allegations and asserting several affirmative defenses, including
that Foss's claims were time barred and that she presented no
evidence that she applied for copyright registration. Marvic filed
a motion to dismiss on August 7, 2018. On August 9, 2018, Foss filed an amended complaint. She
stated six causes of action: (1) copyright infringement; (2)
tortious interference with advantageous business relations; (3)
conversion; (4) unfair and deceptive business practices; (5)
breach of contract; and (6) fraud and breach of fiduciary duty.
Foss also stated that she had registered the brochure with the
U.S. Copyright Office on February 13, 2018 and February 28, 2018.
In fact, she had only applied for registration.
Marvic filed an amended motion to dismiss Foss's
copyright and breach of contract claims for failure to state a
claim on September 11, 2018. Foss did not oppose the motion, and
the district court dismissed the case on October 3, 2018.
On October 19, 2018, Foss filed a motion to reopen the
case and a motion for a preliminary injunction, both of which
Marvic opposed. The district court granted the motion to reopen
the case on January 9, 2019, and Foss filed an opposition to
Marvic's motion to dismiss that same day. Foss then retained
counsel, who entered an appearance on her behalf on February 22,
2019, the day the court held a hearing on Marvic's motions.
One of Marvic's arguments in support of dismissing
Foss's copyright claim was that Foss failed to establish that she
had registered her copyright, as required under 17 U.S.C. § 411(a).
Marvic noted the existence of a circuit split about whether 17
U.S.C. § 411(a) required the U.S. Copyright Office to grant an application or whether the submission of the application alone
sufficed. Marvic maintained that regardless of which standard
applied, Foss's "conclusory statements" merely asserting the
brochure was "registered" failed to meet either standard.
On February 26, 2019, the district court stayed the case
pending the Supreme Court's decision in Fourth Estate Public
Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881 (2019), which
addressed the meaning of the phrase "registration . . . has been
made" in 17 U.S.C. § 411(a).1 That decision issued on March 4,
2019, and held that registration occurs "not when an application
for registration is filed, but when the Register has registered a
copyright after examining a properly filed application." Fourth
Est., 139 S. Ct. at 892. The district court lifted its stay and
entered an order on March 19, 2019, granting Marvic's motion to
dismiss in part. Relying on Fourth Estate, it dismissed Foss's
copyright claim because "the Copyright Office has not acted upon
[Foss's] application for a copyright." Foss, 365 F. Supp. 3d at
167. The district court did not dismiss Foss's breach of contract
claim because she had "done enough to summarize the contract's
purported legal effect and provide Defendant notice of the nature
of the claim." Id.
1 At the hearing on February 22, 2019, the court asked the parties whether they thought the case should be stayed pending the Supreme Court's decision. Foss opposed the stay, while Marvic supported it. On May 2, 2019, Marvic served Foss, then represented by
counsel, with a request for production of documents and request
for admissions pursuant to Federal Rules of Civil Procedure 34 and
36. Foss did not respond to either request, so on June 21, 2019,
Marvic moved to compel a response to the request for documents
and, on July 8, 2019, filed a motion for discovery asking that the
statements in its request for admissions be deemed admitted. The
district court granted both motions on August 13, 2019.
The district court held a status conference attended by
counsel for all parties on August 21, 2019. At this conference,
Marvic told the court that it intended to file a dispositive motion
on Foss's remaining claims based on the statements the court had
deemed admitted.
On August 28, 2019, Foss's counsel moved to withdraw
from the case as of September 9, 2019.2 The court granted this
motion on September 5, 2019.
In late August and early September 2019, Foss, again
proceeding pro se, filed a series of motions requesting, among
other things,3 that the court reconsider its order deeming admitted
2 Foss's attorney had been suspended from the practice of law in Massachusetts. 3 Foss also requested that the court compel arbitration, appoint a law student to represent her pro bono, and "[o]rder a special subpoena authority" she said was warranted under Federal Rule of Civil Procedure 34. The court denied the first two requests on September 25, 2019. It denied her third request the statements in Marvic's request for admissions; that her time
to respond to Marvic's request for admissions be extended; and
that the court not grant summary judgment in Marvic's favor. She
also filed a motion captioned that the court should enter summary
judgment in her favor, but she provided no evidence or developed
argumentation in support of that contention. Marvic opposed these
motions and filed its own motion for summary judgment on September
13, 2019. Foss did not argue that her state law claims should be
dismissed without prejudice given the dismissal of her federal
claim. See 28 U.S.C. § 1367.
On September 25, 2019, the district court denied Foss's
request for more time to answer Marvic's request for admissions.
On September 30, 2019, it denied her request for reconsideration
of the court's order deeming certain statements admitted.
The court held a hearing on the parties' motions for
summary judgment on November 5, 2019. Foss attended this hearing
and argued pro se. On December 5, 2019, the court granted Marvic's
motion, denied Foss's motion, and entered judgment in Marvic's
favor. In doing so, it referred in part to the statements in
Marvic's request for admissions that were deemed admitted. First,
on Foss's tortious interference claim, it held that she could not
establish a prima facie case because she "has not identified any
without prejudice on September 30, 2019, and instructed her to comply with Local Rule 37.1. advantageous relation with a third party or submitted any evidence
showing that Defendant knew of such a relation and intentionally
interfered with it" and because Foss had conceded that she had no
evidence showing that Marvic interfered with her business. Foss,
424 F. Supp. 3d at 161. Second, on her conversion claim, the court
explained that no reasonable juror could find in Foss's favor
because she "conceded that she did not inform Defendant that she
owned all rights to the graphic images or that Defendant needed
her permission to modify the work" and offered no evidence to
support the conclusion that Marvic "intended to deprive her of her
property." Id. Third, on her unfair and deceptive business
practices claim, the court held that because Foss "conceded that
she did not inform Defendant in 2006 that she owned all rights to
her work or that Defendant needed her permission to modify it," no
reasonable jury could find in her favor. Id. at 162. Fourth, on
her breach of contract claim, it granted summary judgment to Marvic
because Foss conceded that the contract did not require Marvic to
obtain Foss's consent before using or modifying the brochure. Id.
Finally, on Foss's fraud claim,4 the district court ruled in
Marvic's favor because of Foss's earlier-described concessions and
because she had offered no evidence that Marvic knew it was making
4 Foss initially brought a breach of fiduciary duty claim but had withdrawn it before the district court ruled on Marvic's summary judgment motion. Foss, 424 F. Supp. 3d at 162. a false representation or that she relied on any false
representation to her detriment. Id. at 162-63.
On December 13, 2019, Foss pro se filed a notice of
appeal from the orders described earlier. She later retained
appellate counsel who entered an appearance on February 20, 2020,
and filed her briefs in this appeal.
III. Analysis
A. The District Court Did Not Err in Granting Marvic's Motion to Dismiss Foss's Copyright Claim.
We review a grant of a motion to dismiss for failure to
state a claim de novo. See Alston v. Spiegel, 988 F.3d 564, 571
(1st Cir. 2021). We find no error.
In Fourth Estate, the Supreme Court held that
registration occurs when the Copyright Office registers a
copyright, not when a copyright owner applies for a copyright.
139 S. Ct. at 888. "[R]egistration is akin to an administrative
exhaustion requirement that the owner must satisfy before suing to
enforce ownership rights." Id. at 887. Under 17 U.S.C. § 411(a),
"no civil action for infringement of the copyright in any United
States work shall be instituted" until "registration of the
copyright claim has been made." Here, Foss admits that she did
not register her copyright before filing suit. The district
court's dismissal of the suit under Fourth Estate was proper. See
Cortés-Ramos v. Martin-Morales, 956 F.3d 36, 43 (1st Cir. 2020) (applying Fourth Estate and holding that because the plaintiff
"conceded that he had not secured registration before filing [the]
action," the district court was correct to dismiss the plaintiff's
complaint).
Foss makes two main arguments against this conclusion,
neither of which is persuasive.5 First, she argues that the
district court erred because, instead of dismissing her copyright
claim, it should have stayed her claim pending the U.S. Copyright
Office's decision on registration and copyrightability. But Foss
never asked the district court for any such stay and so has waived
this argument. See CMM Cable Rep., Inc. v. Ocean Coast Props.,
Inc., 48 F.3d 618, 622 (1st Cir. 1995) ("A party who neglects to
ask the trial court for relief that it might reasonably have
thought would be available is not entitled to importune the court
of appeals to grant that relief."); Teamsters, Chauffeurs,
Warehousemen & Helpers Union, Local No. 59 v. Superline Transp.
Co., 953 F.2d 17, 21 (1st Cir. 1992) ("[A]bsent the most
extraordinary circumstances, legal theories not raised squarely in
the lower court cannot be broached for the first time on appeal.").
5 Foss submitted her opening brief on March 27, 2020, before this court decided Cortés-Ramos on April 13, 2020. To the extent she argues that her submission of a complaint did not "institute" proceedings and trigger § 411(a), that argument is barred by Cortés-Ramos. See 956 F.3d at 42-43. Next, Foss argues that her failure to register her
copyright before filing suit could be and later was cured, making
dismissal improper.6 This argument fails. She asserts that her
copyright registration must be deemed to be effective as of
December 3, 2018, which predates the district court's dismissal of
her claim on March 19, 2019. But Foss did not present this argument
to the district court. She learned that the Copyright Office had
registered her copyright on December 13, 2019, almost nine months
after the district court had dismissed her case, and did not move
for any relief from the district court's judgment. Instead, she
filed this appeal on December 13, 2019. In addition to her failure
to diligently pursue this issue, "[i]t is elementary . . . that we
review the record as it existed at the time the district court
rendered its ruling." Lewis v. City of Boston, 321 F.3d 207, 214
6 The district court dismissed Foss's copyright claim pursuant to Federal Rule of Civil Procedure 12(b)(6) without stating whether the dismissal was with or without prejudice. Generally, when the district court is "silent on the issue of prejudice," we "presume that such a dismissal was with prejudice." Claudio-De León v. Sistema Universitario Ana G. Méndez, 775 F.3d 41, 49 (1st Cir. 2014). In Cortés-Ramos, this court held that a plaintiff's failure to register a copyright before filing suit warranted dismissal but held that the district court should have dismissed the claim without prejudice. 956 F.3d at 43. Foss discusses Cortés-Ramos in her reply brief but does not argue that the district court should have dismissed her claim without prejudice. Instead, she argues that Cortés-Ramos supports her two main arguments that "a rush-to-dismiss approach is not mandatory" and that the registration of her copyright after dismissal cured any defect in her failure to register her copyright before filing suit. We therefore do not address whether her claim should have been dismissed without prejudice. n.7 (1st Cir. 2003) (citing Crawford v. Lamantia, 34 F.3d 28, 31
(1st Cir. 1994)). Because there was no evidence in the record
that Foss had registered her copyright when the court issued its
order of dismissal on March 19, 2019, there was no error in its
ruling.
B. The District Court Did Not Abuse its Discretion in Denying Foss's Motion to Withdraw Her Deemed Admitted Statements.
Under Federal Rule of Civil Procedure 36(a), after a
party serves a written request for admission, "[a] matter is
admitted unless, within 30 days after being served, the party to
whom the request is directed serves on the requesting party a
written answer or objection . . . ." Rule 36(b) provides a
mechanism for withdrawing admissions after they have been deemed
admitted, and "[d]istrict courts have considerable discretion over
whether to permit withdrawal or amendment of admissions made
pursuant to Rule 36." Farr Man & Co. v. M/V Rozita, 903 F.2d 871,
876 (1st Cir. 1990) (citing Bergemann v. United States, 820 F.2d
1117 (10th Cir. 1987); Brook Village N. Assocs. v. General Elec.
Co., 686 F.2d 66, 70 (1st Cir. 1982); 4A J. Moore & J. Lucas,
Moore's Federal Practice ¶ 36–08 at 36–80 (2d ed. 1990)). We review a denial of a request to withdraw admissions for abuse of
discretion and find none here.7 Cf. id.
Under Rule 36(b), a district court "may permit
withdrawal or amendment" if two conditions are met: (1) doing so
"would promote the presentation of the merits of the action" and
(2) "the court is not persuaded that it would prejudice the
requesting party in maintaining or defending the action on the
merits." Foss argues that the district court abused its discretion
because it denied her motion through "two perfunctory orders on
the docket" and did not properly engage with the standard in Rule
36(b).
We may "affirm a district court's ruling for any reason
supported by the record," Victim Rts. L. Ctr. v. Rosenfelt, 988
F.3d 556, 563 (1st Cir. 2021) (citing Miles v. Great N. Ins. Co.,
634 F.3d 61, 65 n.5 (1st Cir. 2011)), and "in the context of review
for abuse of discretion, . . . this court offers deference to the
district court's decisionmaking to the extent its 'findings or
reasons can be reasonably inferred.'" Id. (quoting Cotter v. Mass.
7 Foss requested withdrawal of the statements the court had deemed admitted in a "Motion for Reconsideration" that did not mention Federal Rule of Civil Procedure 36 or the standard under which it is permissible for a party to seek withdrawal of statements deemed admitted under Rule 36(a). Because she was acting pro se when she filed this motion, and because "[a] document filed pro se is 'to be liberally construed,'" Erickson v. Pardus, 551 U.S. 89, 94 (2007) (quoting Estelle v. Gamble, 429 U.S. 97, 106 (1976)), we construe her motion as a motion under Rule 36(b). Ass'n of Minority L. Enf't Officers, 219 F.3d 31, 34 (1st Cir.
2000)).
Marvic argued to the district court that Foss's request
to withdraw the statements deemed admitted came too late. It said
that the court should not revisit its order deeming the statements
admitted because Foss's motion was "long overdue" and Foss was
represented by counsel during the first four months she failed to
respond to Marvic's request for admissions. While the district
court did not explicitly state those reasons, the potential
prejudice to Marvic was obvious.8 Resolution of this case has been
delayed repeatedly. Foss waited more than twelve years after she
designed the brochure for Marvic to file her complaint. She
alleges she did not discover Marvic's purportedly unauthorized use
of the brochure until 2016, but even so waited until 2018 to bring
suit. She then failed to answer Marvic's 2018 motion to dismiss,
causing this case to be dismissed. She was permitted to reopen
the case in 2019 and, even after retaining counsel, failed to
respond to any of Marvic's discovery requests. Her failure to
respond to Marvic's request for admissions resulted in Marvic's
July 8, 2019, motion to deem these statements admitted, which Foss
never opposed and which the court granted on August 13, 2019. Foss
8 On appeal, Marvic does not contest that granting the motion would have "promote[d] the presentation of the merits of the action." Fed. R. Civ. P. 36(b). then waited more than a month to request withdrawal of the
statements deemed admitted.9 Given this case's long history marked
by repeated delays by Foss and the erratic nature in which she
chose to prosecute it, Marvic would have been prejudiced if Foss
were allowed to further delay the case by withdrawing her
admissions. See United States v. Kenealy, 646 F.2d 699, 703 (1st
Cir. 1981) (holding that, after a notice of default had issued and
the default was later removed, it was within the district court's
discretion to deny a defendant's motion seeking withdrawal of
statements deemed admitted when the defendant had repeatedly
delayed the proceedings, had failed "to oppose [a] request for
[involuntary admission]," and had engaged in "cavalier conduct" in
the discovery process). On this record, the conditions of Rule
36(b) were not met and the district court did not abuse its
discretion.
C. The District Court Did Not Err in Granting Marvic's Motion for Summary Judgment on Foss's Remaining Claims.
We review a grant of summary judgment de novo. See
Henderson v. Mass. Bay Transp. Auth., 977 F.3d 20, 29 (1st Cir.
9 On August 30, 2019, Foss submitted a "Motion to Extend Time to Answer Defendant's Requests for Admittance" and included answers to the original request for admissions. This filing came more than four months after Marvic asked for Foss's admissions, almost two months after Marvic filed its motion asking the court to deem the statements admitted, and two weeks after the district court had granted that motion. 2020). Foss argues that, even if the district court did not abuse
its discretion in denying Foss's motion to withdraw the statements
deemed admitted, it erred when it granted summary judgment on her
conversion claim, her breach of contract claim, and her unfair and
deceptive business practices claim.10 We again find no error.
First, for a conversion claim to succeed under
Massachusetts law, the defendant must, among other things, have
intentionally and wrongfully exercised control or dominion over
another's personal property. Evergreen Marine Corp. v. Six
Consignments of Frozen Scallops, 4 F.3d 90, 95 (1st Cir. 1993).
Foss's deemed admissions mean that she cannot satisfy that
standard.11 Independently, Foss also offered no evidence that she
10 Foss did not argue to the district court that it should have dismissed her state law claims without prejudice after dismissing her federal claim and does not make this argument on appeal, so the issue is waived. Even if it were not waived, district courts have discretion to retain pendent state law claims after dismissing a plaintiff's federal claim. See Rodriguez v. Doral Mortg. Corp., 57 F.3d 1168, 1177 (1st Cir. 1995). There was no abuse of discretion in retaining the state law claims here given the clarity of state law, the district court's sound basis for disposing of the claims, and the additional time it would have taken to resolve the case if the court were to dismiss Foss's pendent claims without prejudice. See id. 11 Foss made four admissions that prevent her from succeeding on her conversion claim: (1) she "possesses no evidence to support her contention . . . that [Marvic] intended 'to deprive [her] of her own use, display, modification, and sale of [her] intellectual property'"; (2) she "never informed anyone at [Marvic] that she owned all graphic design images in [the brochure]"; (3) if a contract existed, it "did not require Marvic . . . to obtain [Foss's consent] before using and/or modifying [Foss's] work"; and (4) her "work on [the brochure] was limited to in fact had the ownership interest she maintains she had in the
design of the brochure. No reasonable juror could conclude that
Marvic intentionally and wrongfully exercised control or dominion
over Foss's personal property.
Next, on Foss's breach of contract claim, her complaint
stated that Marvic breached the contract because it "modifi[ed]
[Foss's] copyrighted 2D visual artwork without notifying [Foss] to
obtain the required consent or agreement." But Foss admitted that
"if a contract or agreement existed between [Foss and Marvic], the
contract or agreement did not require [Marvic] to obtain [Foss's]
consent . . . before using and/or modifying the [P]laintiff's
work." And she has never presented any evidence that Marvic
entered into a contract with her containing such terms.
Finally, on the unfair and deceptive business practices
claim, "'[a]ny person who engages in the conduct of any trade or
commerce and who suffers any loss of money or property, real or
personal,' as a result of the unfair or deceptive act or practice,
or unfair method of competition, of another person who engaged in
trade or commerce" can recover under this theory. Auto Flat Car
Crushers, Inc. v. Hanover Ins. Co., 17 N.E.3d 1066, 1076 (Mass.
2014) (quoting Mass. Gen. Laws. ch. 93A, § 11) (alteration in
original). The Massachusetts Supreme Judicial Court "has
assembling the photographs and written content provided by Marvic . . . ." repeatedly held that 'mere negligence,' standing alone, is not
sufficient for a violation of ch. 93A." Baker v. Goldman, Sachs
& Co., 771 F.3d 37, 51 (1st Cir. 2014); see Klairmont v. Gainsboro
Rest., Inc., 987 N.E.2d 1247, 1257 (Mass. 2013); Darviris v.
Petros, 812 N.E.2d 1188, 1192 (Mass. 2004). Summary judgment was
proper because Foss admitted that she had no evidence that Marvic
intended to deprive her of property and that any agreement did not
require Marvic to obtain her consent to modify or use the brochure.
She also presented no evidence of any unfair or deceptive act or
practice or unfair method of competition that occurred during her
dealings with Marvic. No reasonable juror could find that Marvic
behaved unfairly or deceptively in modifying and later using the
brochure.
IV. Conclusion
Affirmed. Costs are awarded to Marvic.