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,

(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,

, 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

(a).

Marvic noted the existence of a circuit split about whether

(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,

(2019), which

addressed the meaning of the phrase "registration . . . has been

made" in

(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.,

. 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,

. 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."

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

.

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,

, 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.

. "[R]egistration is akin to an administrative

exhaustion requirement that the owner must satisfy before suing to

enforce ownership rights."

. Under

(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,

(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.,

(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.,

(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

. 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,

, 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,

(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.

. 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,

(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,

(1st Cir. 1990) (citing Bergemann v. United States,

(10th Cir. 1987); Brook Village N. Assocs. v. General Elec.

Co.,

(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.

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,

(1st Cir. 2021) (citing Miles v. Great N. Ins. Co.,

, 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.'"

(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,

(2007) (quoting Estelle v. Gamble,

(1976)), we construe her motion as a motion under Rule 36(b). Ass'n of Minority L. Enf't Officers,

(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,

(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.,

, 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,

(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.,

(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

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.,

(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.,

(1st Cir. 2014); see Klairmont v. Gainsboro

Rest., Inc.,

, 1257 (Mass. 2013); Darviris v.

Petros,

, 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.