NOT PRECEDENTIAL

UNITED STATES COURT OF APPEALS

FOR THE THIRD CIRCUIT

_____________

Nos. 15-2270, 15-2359

____________

DANIEL V. MARINO,

Appellant in 15-2359

v.

USHER, a/k/a Usher Terry Raymond, IV; JAMES SAMUEL HARRIS, III; TERRY 

STEVEN LEWIS; BOBBY ROSS AVILA, JR.; ISSIAH AVILA, JR.; WILLIAM C. 

GUICE; DANTE E. BARTON; DESTRO MUSIC PRODUCTIONS, INC.; 

DEFENDERS OF MUSIC; FLYTE TYME TUNES; SUBLIME BASEMENT TUNEZ; 

UR-IV MUSIC, INC.; WARNER-TAMERLANE PUBLISHING CORP.; MARK 

PITTS; BYSTORM ENTERTAINMENT; TOMMY VAN DELL; IN2N 

ENTERTAINMENT GROUP, LLC; EMI BLACKWOOD MUSIC, INC.; SONY 

MUSIC ENTERTAINMENT; EMI APRIL MUSIC, INC.

 *Francis Malofiy, Esq.,

 Appellant in 15-2270

 *(Pursuant to Rule 12(a), Fed. R. App. P.)

____________

On Appeal from the United States District Court

for the Eastern District of Pennsylvania

(D.C. Civ. No. 2-11-cv-06811)

District Judge: Honorable Paul S. Diamond

____________

Submitted Pursuant to Third Circuit L.A.R. 34.1(a)

on June 23, 2016

Before: McKEE,  Chief Judge, FISHER and GREENAWAY, JR. Circuit Judges.

 

 Judge McKee concluded his term as Chief of the U.S. Court of Appeals for the Third 

Circuit on September 30, 2016.
2

(Opinion Filed: December 8, 2016)

____________

OPINION

____________

MCKEE, Chief Judge.

Songwriter Daniel Marino appeals the district court’s grant of summary 

judgment in favor of the defendants in his copyright infringement suit.1 The district court 

found that, because Marino had jointly created the song Club Girl, later developed into 

the derivative work Bad Girl and used by popular musician Usher, Marino’s infringement 

claims must fail. Marino’s attorney, Francis Malofiy, also appeals the district court’s 

order imposing sanctions against him in the amount of $28,266.54 for contacting an 

unrepresented defendant in the copyright suit, in violation of Rule 4.3 of the 

Pennsylvania Rules of Professional Conduct. For the reasons that follow, we will affirm 

both orders.

I.

In its opinion granting summary judgment in favor of the defendants, the district 

court reiterated what it terms the defendants’ “complete and meritorious defense,” that 

Marino’s claims must fail because Club Girl was jointly created by Marino, Guice, and 

Barton. The district court correctly held that co-authors of a joint work are each entitled 

 

 This disposition is not an opinion of the full Court and pursuant to I.O.P. 5.7 does not 

constitute binding precedent.

1 Marino has appealed what appears to be every order entered by the district court, 

including routine discovery orders and other orders that are plainly unappealable. App. at 

1–2.
3

to undivided ownership and that the joint owner of a copyright cannot sue his co-owner 

for infringement.2 The court reasoned that, without direct infringement, there can be no 

vicarious infringement, hence the derivative song, Bad Girl, did not infringe on Marino’s 

rights. The district court also concluded that Guice and Barton conveyed a valid nonexclusive license for the song to the other defendants. 

Moreover, in rejecting Marino’s contrary claims, the court stated that Marino’s 

argument was so without merit as to be “absurd and contrary to law.”3 The district court 

dismissed Marino’s state law claims without prejudice, noting that all of his federal 

claims had been disposed of and declining to exercise supplemental jurisdiction. Marino 

appeals.

The district court also imposed sanctions against Malofiy in the amount of 

$28,266.54 for contacting unrepresented defendant Guice, in violation of Rule 4.3 of the 

Pennsylvania Rules of Professional Conduct.4 Malofiy appeals, and both appeals have 

been consolidated. 

II.

5

 

2 See Brownstein v. Lindsay, 742 F.3d 55, 68 (3d Cir. 2014). See also Cortner v. Israel, 

732 F.2d 267, 271 (2d Cir. 1984) (“It is elementary that the lawful owner of a copyright 

is incapable of infringing a copyright interest that is owned by him; nor can a joint owner 

of a copyright sue his co-owner for infringement.”).

3

J.A. at 00011.

4 A three judge panel of this Court recently upheld the district court’s imposition on 

Malofiy of a three-month suspension from the practice of law. See In re Francis Malofiy, 

Appellant, No. 15-2472, 2016 WL 3553258, at *4 (3d Cir. June 30, 2016).

5 We have jurisdiction under 28 U.S.C. § 1291. The district court had jurisdiction under 

28 U.S.C. § 1338.
4

We review de novo the district court’s grant of summary judgment under Rule 56,6

as well as its dismissals under Rule 12(c).7 To determine whether the district court 

properly granted summary judgment, we employ the same analysis as the district court to 

determine whether any genuine disputes of material fact exist, while considering all 

evidence and all reasonable inferences in favor of the non-moving party.8 In reviewing a 

judgment on the pleadings under Rule 12(c), “we must view the facts presented in the 

pleadings and the inferences to be drawn therefrom in the light most favorable to the 

nonmoving party.”9 We review findings of fact for clear error, and “due regard shall be 

given to the opportunity of the trial court to judge the credibility of the witnesses.”10 We 

review a district court’s decision on attorney’s fees and costs for abuse of discretion.11

III.

In addition to his federal copyright claims, Marino’s amended complaint contained 

state law claims for creation of a constructive trust (Count IV) and for an accounting 

(Count V). Marino argues that the district court erred in dismissing those claims “sua 

sponte.” However, the record reveals that the district court dismissed the constructive 

 

6 See Lucent Info. Mgmt., Inc. v. Lucent Techs., Inc., 186 F.3d 311, 315 (3d Cir. 1999).

7 Hanover Ins. Co. v. Urban Outfitters, Inc., 806 F.3d 761, 764 (3d Cir. 2015).

8 Scott v. Harris, 550 U.S. 372, 380 (2007).

9 Hanover Ins. Co., 806 F.3d at 764 (internal quotations and citation omitted).

10 Fed. R. Civ. P. 52(a)(6); see Anderson v. Bessemer City, 470 U.S. 564, 573–74 (1985); 

Pension Benefit Guar. Corp. v. White Consol. Indus., Inc., 215 F.3d 407, 409 (3d Cir. 

2000).

11 See Hahnemann Univ. Hosp. v. All Shore, Inc., 514 F.3d 300, 305 (3d Cir.2008).
5

trust and accounting claims after defendants had submitted a motion to dismiss and that 

the issue had been fully briefed by both parties.12

Under § 301 of the Copyright Act, a state law claim may be preempted if it creates 

rights “equivalent” to the exclusive rights within the scope of copyright.13 That section 

also provides that state law is expressly preempted where the elements of the claim at 

issue are the same as those required for an infringement claim under § 106.

14

 By 

contrast, “if a state cause of action requires an extra element, beyond mere copying, 

preparation of derivative works, performance, distribution or display, then . . . federal law 

will not preempt the state action.”15

Here, the district court correctly applied the express preemption test in § 301(a).16 

Because Marino based his constructive trust claim on monies generated by the alleged 

infringement, the district court concluded that the first element is satisfied, and we agree. 

The second element is satisfied because Marino’s constructive trust and copyright claims 

 

12 Accordingly, Marino’s argument that he had no notice of potential preemption issues is 

without merit.

13 Orson, Inc. v. Miramax Film Corp., 189 F.3d 377, 382 (3d Cir. 1999).

14 See Dun & Bradstreet Software Servs., Inc. v. Grace Consulting, Inc., 307 F.3d 197, 

217 (3d Cir. 2002).

15 Id. (quoting Data Gen. Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147, 1164 (1st 

Cir. 1994)).

16 (1) Whether the work is the appropriate subject matter of a copyright as specified in 17 

U.S.C. §§ 102 and 103 and (2) whether the state law creates rights equivalent to the 

exclusive rights protected by the Copyright Act as set forth in 17 U.S.C. § 106. See

Harper & Row Publishers, Inc. v. Nation Enterprises, 723 F.2d 195, 200 (2d Cir. 1983) 

(rev’d on other grounds) 471 U.S. 539 (1985); 17 U.S.C. § 103(a).
6

arise from the same conduct.17 Accordingly, the district court correctly dismissed 

Marino’s constructive trust claim.

Marino’s accounting claims are similarly preempted by the Copyright Act. 

Marino demanded an accounting of monies received from the alleged infringement. The 

claim is, by its very nature, based on the same conduct alleged in the infringement claim, 

and Marino has failed to allege any additional elements.18 The district court therefore 

correctly found that Marino’s accounting claim was preempted.

Marino next argues that the district court improperly determined that Club Girl

was jointly owned because the trio had a preexisting oral agreement allotting credit and 

revenue for the works that they created. By his own admission, Marino did not make this 

argument until the vast majority of defendants had been granted summary judgment.19 

As the district court correctly explained, this argument comes several years too late and is 

deemed waived.20 Thus, for the reasons repeatedly explained by the district court, we 

conclude that the district court correctly found that Club Girl is a jointly owned work.21

Marino next contends that, because he was never credited or paid for his 

contribution to Club Girl, he did not give an implied license for the song’s use. Non-

 

17 See Dun & Bradstreet Software Servs., Inc., 307 F.3d at 217.

18 Id.

19 Marino Reply Br. at 15–16.

20 McLendon v. Cont’l Can Co., 908 F.2d 1171, 1183 (3d Cir. 1990) (“When an issue is 

raised on appeal for the first time in a reply brief, it is generally waived.”).

21 See Brownstein, 742 F.23d at 55 (“For two or more people to become co-authors, each 

author must contribute some non-trivial amount of creative, original, or intellectual 

expression to the work and both must intend that their contributions be combined.”).
7

exclusive licenses may be granted orally, in writing, or impliedly through conduct.22 The 

existence of an implied license is determined by an objective inquiry into the facts; the 

private hopes of the creator are not relevant.23 Here, Marino’s testimony as well as his 

actions indicate that he supported the use of Club Girl/Bad Girl by Usher. Marino never 

sought to enjoin the song’s release, he participated in events and celebrations surrounding 

the song, and he testified that he was excited at its commercial success. In addition, the 

record reveals that Marino admits receiving $4,553.06 in royalties from Barton in 2006.24 

Accordingly, the district court correctly found that Marino granted an implied license to 

the Appellees for the use of Club Girl.

25

Marino also argues that the district court erred in dismissing his sound recording 

claim for lack of standing. The law is clear that a work must be preregistered with the 

Copyright Office before suit can be brought for an alleged copyright violation.26 As the 

district court held, sound recordings and musical compositions are distinct from one 

another and require two different registrations.27 Here, the record reveals that, although 

 

22 See MacLean Assoc., Inc. v. Wm. M. Mercer-Meidinger-Hansen, Inc., 952 F.2d 769, 

778–79 (3d Cir. 1991) (quoting 3 M. Nimmer & D. Nimmer, Nimmer of Copyright §

10.03(A), at 10–37 (1991) for the proposition that “[a] nonexclusive license may be 

granted orally, or may even be implied from conduct”).

23 John G. Danielson, Inc. v. Winchester-Conant Props., Inc., 322 F.3d 26, 42 (1st Cir. 

2003).

24 J.A. at 00440, 01798–99, 02573–74.

25 See I.A.E., Inc. v. Shaver, 74 F.3d 768, 776 (7th Cir. 1996). 

26 Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154, 157–58 (2010). See also 17 U.S.C. § 

411 (providing that “no civil action for infringement of the copyright in any United States 

work shall be instituted until preregistration or registration of the copyright claim has 

been made in accordance with this title”).

27 17 U.S.C. § 102(a)(2), (7); Facenda v. N.F.L. Films, Inc., 542 F.3d 1007, 1026 (3d Cir. 

2008).
8

the musical compositions of Club Girl and Bad Girl were registered, the sound 

recordings were never registered with the Copyright Office. Accordingly, the district 

court correctly denied Marino’s sound recording claim.

Marino relies on the doctrine of equitable tolling to argue that the district court 

improperly limited his claims for infringement damages to those damages that occurred 

within three years of the filing of this case. However, since we affirm the district court’s 

conclusion that that there was no infringement, tolling is simply not an issue, and we 

need not address it.

Marino also argues that the district court abused its discretion in awarding costs 

and fees to the defendants in the amount of $110,888.60, reduced from a courtdetermined amount of $1,108,885.95 due to Marino’s inability to pay. In awarding fees, 

a district court may consider “‘frivolousness, motivation, objective unreasonableness 

(both in the factual and in the legal components of the case) and the need in particular 

circumstances to advance considerations of compensation and deterrence.’”28 Courts will 

consider the party’s ability to pay when setting the final amount of costs and fees.29 

Here, the district court carefully considered all of the statutory factors and examined the 

relevant evidence before it arrived at its final amount. The district court also conducted 

financial discovery to determine Marino’s ability to pay costs and fees. After an 

evidentiary hearing, the district court determined that the award should be reduced by 90 

 

28 Fogerty v. Fantasy, Inc., 510 U.S. 517, 534–35 n.19 (1994) (quoting Lieb v. Topstone 

Indus., Inc., 788 F.2d 151, 156 (3d Cir. 1986)).

29 Lieb, 788 F.2d at 156.
9

percent due to Marino’s financial circumstances and the frivolous nature of his claims.30 

Accordingly, we find no abuse of discretion in the award of costs and fees in the amount 

of $110,888.60.

Marino’s contention on appeal that the district court’s impartiality should be 

questioned is meritless. Judicial remarks may support a challenge to judge’s impartiality 

“if they reveal an opinion that derives from an extrajudicial source,” or “if they reveal 

such a high degree of favoritism or antagonism as to make fair judgment impossible.”31 

Marino has no shown that the district court’s opinion either derives from an extrajudicial 

source or reveals the requisite level of antagonism. Instead, the brief merely claims that 

“the Court’s opinions and findings departed from law and the largely undisputed facts of 

this case and revealed a bias against Plaintiff.”32 Contrary to Marino’s assertions, the 

record reveals that the district court acted properly and impartially throughout the 

proceedings. It also reveals that those proceedings were fraught with misconduct by 

Marino’s attorney, Francis Malofiy.

IV.

We turn now to Malofiy’s appeal of the district court’s order imposing sanctions 

in the amount of $28,266.54 for contacting unrepresented defendant William Guice,33 in 

violation of Pennsylvania Rule of Professional Conduct 4.3.34 The district court acted 

 

30 Lieb, 788 F.2d at 156 (court should consider whether award is excessive in light of 

“plaintiff’s resources”)

31 Liteky v. U.S., 510 U.S. 540, 555 (1994).

32 Marino Br. at 64.

33 CM/ECF No. 15-2270.

34 Rule 4.3 provides that:
10

under 28 U.S.C. § 1927 as well as under its own inherent authority over the conduct of 

proceedings before it. To impose sanctions, a court must find that an attorney “has (1) 

multiplied proceedings; (2) in an unreasonable and vexatious manner; (3) thereby 

increasing the cost of the proceedings; and (4) doing so in bad faith or by intentional 

misconduct.”35 

The district court made the following factual determinations when examining the 

evidence regarding Malofiy and Guice’s interactions.

“[S]ometime around Valentine’s Day, 2012,” Guice (then living in 

Colorado) telephoned Malofiy, whose name and telephone number were 

on the pleading’s first page. (Id. at 20:5–7; 18:8–13; 16:20–17:14; 

57:25–58:9; 29:13–16.) Malofiy said that he represented Plaintiff and 

that Guice had no obligation to speak with him. Malofiy did not ask if 

Guice was represented by counsel, nor did he advise Guice to obtain 

counsel. (Id. 20–21.) Malofiy did not inform Guice that Marino’s 

interests were adverse to Guice’s. (Id. at 21.) To the contrary, Malofiy 

untruthfully assured Guice: “don’t worry about it, he [Plaintiff] is not 

coming after you, it’s everyone else.” (Id. at 32:2–8.) Malofiy thus 

dishonestly convinced Guice that Marino was pursuing claims against 

only Barton and moving Defendants. (Id. at 23–24.)

 

(a) In dealing on behalf of a client with a person who is not represented 

by counsel, a lawyer shall not state or imply that the lawyer is 

disinterested. 

(b) During the course of a lawyer's representation of a client, a lawyer 

shall not give advice to a person who is not represented by a lawyer, 

other than the advice to secure counsel, if the lawyer knows or 

reasonably should know the interests of such person are or have a 

reasonable possibility of being in conflict with the interests of the 

lawyer’s client. 

(c) When the lawyer knows or reasonably should know that the 

unrepresented person misunderstands the lawyer’s role in the matter, the 

lawyer should make reasonable efforts to correct the misunderstanding.

35 In re Schaefer Salt Recovery, Inc., 542 F.3d 90, 101 (3d Cir. 2008) (citing In re 

Prudential Ins. Co. Am. Sales Practice Litig., 278 F.3d 175, 188 (3d Cir. 2002)).
11

The district court also found that Malofiy persuaded Guice to sign an affidavit 

stating that he, Barton, and Marino had created Club Girl together and that Guice’s belief 

that Marino was entitled to producing and writing credit. The district court concluded 

that, due to Malofiy’s misrepresentations, Guice never answered Marino’s complaint, 

with the result that a default judgment (later vacated) was entered against him. During 

Guice’s first deposition, it was revealed that, although Malofiy told Guice that he (Guice) 

was a defendant, Guice “did not know the meaning of ‘defendant,’” that [Guice] was a 

party to the copyright litigation; that [Marino] was seeking money damages from him 

personally; or that Malofiy had obtained a default against him.”36 Guice was so upset by 

these revelations that he left the deposition and had to be deposed again at a later date, 

which the district court found duplicated proceedings and increased costs. The district

court further found that Malofiy acted both intentionally and unreasonably in his dealings 

with Guice, and that Malofiy’s actions had no legitimate purpose. The district court 

credited Guice’s testimony that Malofiy did not advise him to retain counsel during their 

first conversation, and it further found that Malofiy’s email to Guice stating that “if you

want to review [the affidavit] with a lawyer, that’s fine too,” was insufficient to satisfy 

Rule 4.3.37

A panel of this Court recently addressed Malofiy’s behavior when affirming his 

three month suspension from the practice of law. The panel explained:

 

36 DCT Op. at 8.

37 J.A. at 00083.
12

we must determine whether Malofiy’s warning in the e-mail and his 

acknowledgment of Guice’s status as a defendant satisfy Rule 4.3. The 

District Court determined that Malofiy’s actions “failed to adequately 

convey the adversity of interests between [his] client and Mr. Guice.” 

App. 40–41. We agree. Per Rule 4.3(c), Malofiy “kn[ew] or reasonably 

should [have] know[n] that the unrepresented person misunderst[ood] 

the lawyer’s role in the matter.” Rather than correct the 

misunderstanding, Malofiy continued to foster the impression that Guice 

was a witness rather than a person who stood personally to lose money. 

As the first comment to the rule makes clear, Malofiy should have 

remedied the confusion by explaining that Guice’s interests were adverse 

to Marino’s. However, he consistently suggested that the opposite was 

true.38

We agree with this analysis and conclude that Malofiy did in fact violate Rule 4.3. 

Accordingly, the district court did not abuse its discretion when it imposed sanctions on 

Malofiy in the amount of $28,266.54.

V.

For the foregoing reasons, we will affirm the judgment of the district court.

 

38 In re Francis Malofiy, Appellant, No. 15-2472, 2016 WL 3553258, at *4 (3d Cir. June 

30, 2016).