United States District Court, N.D. Ohio, Eastern Division
MEMORANDUM OPINION & ORDER
M. PARKER, United States Magistrate Judge
Design Basics, LLC, holds United States Copyright
Office-issued certificates of copyrights on plans for
residential homes. It instituted this action for damages
contending that defendants used the designs without
permission. Plaintiff has moved for partial summary judgment
(ECF Doc. No. 61), claiming that there is no genuine dispute
of material fact that it is the owner of a valid copyrights
on the home plans at issue. If the court so finds, plaintiff
will have established one of the elements of its copyright
infringement claim. Plaintiff also seeks summary judgment on
several of defendant's affirmative defenses. The parties
have consented to my jurisdiction.
court will GRANT, in part, and DENY, in part, plaintiff's
motion for partial summary judgment.
Undisputed Facts and Case Posture
undisputed record evidence before the court establishes that
Plaintiff Design Basics, LLC, is a building design firm that
creates, markets, publishes, and sells licenses for the use
of architectural designs. It also is not disputed that
plaintiff holds certificates of copyright registration issued
by the United States Copyright Office for the designs at
issue here: (1) Plan No. 2408 - Crawford; (2) Plan No. 2326 -
Greensboro; (3) Plan No. 2355 - Waverly; (4) Plan No. 4998 -
Holden; (5) Plan No. 7614 - Southwick; (6) Plan No. 8108 -
Rose Hollow; and (7) Plain No. 2377 - Leighton. Plaintiff
asserts a single cause of action in its amended complaint:
copyright infringement. Plaintiff alleges that several of the
drawings, plans and/or houses constructed by defendants were
derived from the copyrighted works of plaintiff. Plaintiff
argues that several of defendants' affirmative defenses
should be dismissed because they are either not true
affirmative defenses or that there is no evidence to support
argue that plaintiff is not entitled to summary
judgment on the validity of its copyrights because it failed
to produce evidence establishing the originality of its
designs. Defendants also question whether the elements of
plaintiff's designs are even protectable under copyright
law or if they are standard features not entitled to
their affirmative defenses, defendants withdraw the defenses
of: 1) failure to state a prima facie case; 2) copyrights are
invalid; 3) ownership of valid
copyrights/originality/copyrightability; 4) actions do not
constitute infringement; 5) no access to copyrighted works
prior to independent creation; 6) no substantial similarity;
7) independently created plans and/or houses; and 8) no
direct infringement. Defendants oppose summary judgment on the
affirmative defenses of innocent infringement, copyright
misuse, fair use, laches and license.
Standard of Review
Fed.R.Civ.P. 56, summary judgment is warranted if “the
movant shows that there is no genuine dispute as to any
material fact and that the movant is entitled to judgment as
a matter of law.” Fed.R.Civ.P. 56(a). A dispute of fact
is “genuine” if “the [record] evidence is
such that a reasonable jury could return a verdict for the
nonmoving party.” Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 248, 106 S.Ct.2505, 91 L.Ed.2d 202
(1986). As a result, “[c]onclusory allegations,
conjecture and speculation . . . are insufficient to create a
genuine issue of fact.” Kerzer v. Kingly Mfg.,
156 F.3d 396, 400 (2d Cir. 1998) (citation omitted); see
also Fed. R. Civ. P. 56 (e)(2). As the Supreme Court has
explained, “[the non-moving party] must do more than
simply show that there is metaphysical doubt as to the
material facts.” Matsushita Elec., Indus. Co., Ltd.
v. Zenith Radio Corp., 475 U.S. 574, 585-86, 106 S.Ct.
1348, 89 L.Ed.2d 538 (1986). As for the materiality
requirement, a dispute of fact is “material” if
it “might affect the outcome of the suit under the
governing law.” Anderson, 477 U.S. at 248.
“Factual disputes that are irrelevant or unnecessary
will not be counted.” Id.
determining whether genuine issues of material fact exist,
the court must resolve all ambiguities and draw all
reasonable inferences against the moving party.
Anderson, 477 U.S. at 255. In addition, “[the
moving party] bears the initial responsibility of informing
the district court of the basis for its motion, and
identifying those portions of the [record] which it believes
demonstrate the absence of any genuine issue of material
fact.” Celotex v. Catrett, 477 U.S. 317,
323-24, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); see
also Fed. R. Civ. P. 56(c), (e). However, when the
moving party has met this initial burden of establishing the
absence of any genuine issue of material fact, the nonmoving
party must come forward with specific facts showing a genuine
dispute of material fact for trial. Fed R. Civ. P. 56(c),
Law & Analysis
Whether Plaintiff's Designs are Protected by a Valid
are two elements of an architectural copyright infringement
claim: (1) the work must be shown to be protected by a valid
copyright; and (2) it must be proven that the defendant
copied original or protectable aspects of the copyrighted
work. Feist Publ'ns, Inc. V. Rural Tel. Serv.
Co., 449 U.S. 340, 348, 111 S.Ct. 1282, 113 L.Ed.2d 358.
The first prong tests the originality and non-functionality
of the work. See M.M. Bus Forms Corp. v. Uarco,
Inc., 472 F.2d 1137, 1139 (6th Cir. 1973). A
fundamental rule of copyright law is that it protects only
“original works of authorship, ” those aspects of
the work that originate with the author himself. 17 U.S.C.
§ 102(b); Zalewski v. Cicero Builder Dev. Inc.,
754 F.3d 95, 100, 2014 U.S. App.LEXIS 10609 (2nd
Cir. June 5, 2014).
proof of the first element of the claim can be
straightforward. The ownership of certificates of
registration of copyrighted material constitutes prima
facie evidence of the copyright's validity.
Lexmark Int'l, Inc. v. Static Control Components,
Inc., 387 F.3d 522, 2004 U.S. App. LEXIS 22250
(6th Cir. 2004). And, while originality is
required for copyright protection, courts have not required
an “especially elevated” level of originality in
the architectural realm. Ranieri v. Adirondacck Dev.
Group, 164 F.Supp.3d 305, 329, 2016 U.S. Dist. LEXIS
20884 (N.D.N.Y. Feb. 22, 2016); see also Axelrod &
Cherveny Architects, P.C. v. Winmar Homes, 2007 U.S.
Dist. LEXIS 15788 (E.D.N.Y. Mar. 6, 2007). In Feist,
supra, the Supreme Court indicated that
The requisite level of creativity is extremely low; even a
slight amount will suffice. The vast majority of works make
the grade quite easily, as they possess some creative spark,
“no matter how crude, humble or obvious” it might
be … Originality does not signify novelty; a work may
be original even though it closely resembles other works so
long as the similarity is fortuitous, not the result of
Feist Publ'ns, Inc., 449 U.S. at 345.
Nonetheless, standard features “such as windows, doors,
and other stable building components” are not
copyrightable. 37 C.F.R. §202.11(d)(2); Zitz v.
Pereira, 119 F.Supp.2d 133, 147 (E.D.N.Y. 1999).
“In the case of more mundane residential designs, it is
obvious that the use of porches, porticos, dormers, and bay
windows, for example, is not protected, but the particular
expression of those ideas and their combination in one house,
may be protected.” Frank Betz Assoc, Inc. v. J.O.
Clark Constr., LLC, 2010 U.S. Dist. LEXIS 117961 (M.D.
Tenn. Nov. 5, 2010).
moves for partial summary judgment on the first element of
its copyright infringement claim - an element that is
presumptively satisfied by a certificate of registration and
a minimal showing of creativity in assembling even standard
elements of architectural design. Plaintiff contends, and
defendants do not dispute, that plaintiff is the owner of
certificates of registration for the house design plans
involved in this lawsuit. Plaintiff submits the affidavit of
Carl Cuozzo, a senior designer, who has worked for plaintiff
for thirty years. Mr. Cuozzo attests that Design Basics is
the sole author and owner of plaintiff's design
plans. Paragraph 7 of his affidavit states:
Design Basics independently created all seven of these plans
“from scratch, ” in a collaborative process used
by Design Basics since the mid-1980s. In other words,
Plaintiff's employee-design professionals would
brainstorm new designs, which would be created internally,
beginning with floor plans and elevation drawings, and
proceeded to the creation of construction drawings. At no
time would Design Basic's personnel use third-party
designs or drawings as a basis for creating its new designs.
complain that they cannot fully investigate the origin of the
house design plans due the destruction of plaintiff's
files following a roof collapse at plaintiff's facility
in January 2010. Although this accident may appear suspicious
to defendants, the fact that records were lost is not
evidence that contradicts that plaintiff is the original
author of its design plans. Defendants have not presented any
admissible evidence to rebut the presumption that the
copyrighted plans were independently created by plaintiff and
that they possess the requisite minimal decree of creativity.
As a result, plaintiff is entitled to partial summary
judgment on the first element of its copyright infringement
claim - that the plans involved in this lawsuit are generally
protected by valid copyrights.
disputes of material fact exist on the second element of the
plaintiff's claim. The second element of a copyright
infringement claim tests whether any copying occurred,
whether the two designs are substantially similar, and
whether the portions of the work copied were entitled to
copyright protection. Lexmark Int'l, Inc. v. Static
Control Components, Inc., 387 F.3d 522, 534, 2004 U.S.
App. LEXIS 22250 (6th Cir. 2004). Defendants
complain that many of the elements of plaintiff's design
plans are not entitled to copyright protection because they
were standard features or features dictated by building codes
and other practical concerns. These arguments go to the
second prong of plaintiff's copyright infringement claim.
The court has not been presented with the issues of whether
defendant's allegedly infringing conduct involved the
actual copying of plaintiff's copyrighted designs,
whether the allegedly infringing conduct copied portions of
plaintiff's work that were original or merely standard
elements that may not be protected by the copyright law, or
whether the allegedly infringing conduct created copies that
were substantially similar to plaintiff's designs.
Neither side has moved for summary judgment on these issues.
Because of this, much of defendants' argument is not
relevant to the issue presented in the current motion and
need not be further considered at this time.
also moves for summary judgment on several of the affirmative
defenses asserted by defendants in this case. Defendants
concede that some of their “affirmative defenses”
are not truly affirmative defenses and are being abandoned or
withdrawn. Specifically, defendants acknowledge that the
following defenses are not affirmative defenses: 1) failure
to state a prima facie case; 2) copyrights are invalid; 3)
ownership of valid copyrights/originality/copyrightability;
4) actions do not constitute infringement; 5) no access to
copyrighted works prior to independent creation; 6) no
substantial similarity; 7) independently created plans and/or
houses; and 8) no direct infringement. Defendants agree
that these may be dismissed as affirmative defenses but
reserve the ability to argue these defenses to disprove the
elements of plaintiff's claim. Defendants argue that the
“affirmative defenses” of 1) innocent
infringement; 2) misuse of copyright; 3) fair use; 4) laches;
and 5) license should not be dismissed.
is no innocent infringer defense that completely negates
liability for copyright infringement. Frank Betz Assocs.
v. Signature Homes, Inc., 2009 U.S. Dist. LEXIS 59354,
92 U.S.P.Q.2D (BNA) 1507, 2009 WL 2151304 (M.D. Tenn. July
13, 2009); See 4-13 Nimmer § 13.08. However,
innocent intent can affect how the court exercises its
discretion in awarding damages. Id.; 17 U.S.C.
§ 504(c)(2) (2004). As a result, defendants may be
permitted to introduce evidence regarding their intent if it
is determined that they copied protected portions of
plaintiff's design plans. Defendants should have
withdrawn this defense along with the others because it is
not an affirmative defense. “Innocent
infringement” will be dismissed as an affirmative
defense but defendants will be permitted to present evidence
of innocent intent at trial if necessary.
doctrine of copyright misuse prohibits a copyright holder
from using a copyright “to secure an exclusive right or
limited monopoly not granted by the [Copyright] Office and
which is contrary to public policy to grant. Alcaltel
USA, Inc. v. DGI Techs, Inc.,166 F.3d 772, 792
(5thCir. 1999). This defense functions as an
absolute bar on recovery for copyright plaintiffs who have
attempted to extend their limited rights to ...