United States District Court, N.D. Ohio, Western Division
G. Carr Sr. U.S. District Judge
a copyright-infringement case.
Design Basics LLC, (DB), creates and licenses architectural
plans for single-family homes. It accuses defendants, the
home building companies Forrester Wehrle Homes, Inc., and
Wehrle Development, Ltd. (collectively, FWH) of copying,
manufacturing and selling “three-dimensional infringing
copies (houses)” of its copyright-protected designs.
(Doc. 89, ID 3488).
motions are pending.
is plaintiff's motion for summary judgment regarding: the
validity of the copyrights at issue; its ownership of the
copyrights; and defendants' alleged access to the
protected works. (Doc. 83). Second is plaintiff's motion
to exclude defense expert John Gugliotta's report, which
FWH cites in response to DB's summary-judgment arguments.
(Doc. 84). Defendants oppose both motions. (Docs. 87, 88).
is defendants' objection to an affidavit submitted by
plaintiff's counsel, James Rogers, “the materials
attached thereto, ” combined with a motion to strike
“Plaintiff's argument based thereon.” (Doc.
100, ID 4103). Plaintiff opposes the motion. (Doc. 104).
reasons below, I grant plaintiff's motion to exclude
Gugliotta's report in part, and deny it in part, overrule
defendants' objection to Rogers' affidavit and deny
their motion to strike plaintiff's “argument based
thereon” in its entirety, and grant plaintiff's
motion for summary judgment in part, and deny it in part.
reaching the substance of DB's copyright claims, I
resolve a threshold matter: determining exactly how many
copyrighted design plans are at issue. DB's conflicting
positions make this task harder than it should be.
on the second amended complaint (see Doc. 58), I
noted in previous orders that DB accused FWH of infringing
its copyrights in twenty-three architectural design plans.
See Design Basics, LLC v. Forrester Wehrle Homes,
Inc., (Design Basics I), 2017 WL 5467152 (N.D.
Ohio); Design Basics, Inc. v. Forrester Wehrle Homes,
Inc., (Design Basics II), 2017 WL 5444569 (N.D.
Ohio). They are: the “Kaiser, ” the
“Kendall, ” the “Shannon, ” the
“Sherburne, ” the “Newlin, ” the
“Bermier, ” the “Tollefson, ” the
“Monte Vista, ” the “Lancaster, ” the
“Franklin, ” the “Harrisburg, ” the
“Chandler, ” the “Galvin, ” the
“Carrington, ” the “Paisley, ” the
“Ambrose, ” the “Kincaid, ” the
“Gabriel Bay, ” the “Tilmer's Run,
” the “Crimson Creek, ” the “Kirby
Farms, ” the “Ashton” and the
“Albany.” (Doc. 58, ID 1222).
clarified that Counts I through VIII of its second amended
complaint, alleging traditional copyright infringement
claims, did not apply to the Ashton and Albany plans, which
DB had licensed to FWH in 2014. (Doc. 58, ID 1226; Doc.
83-25, ID 3248).
did not, however, explicitly exclude the Ashton or the Albany
from Count IX of the complaint, alleging a violation of the
Digital Millennium Copyright Act (DMCA), 17 U.S.C. §
1201 et seq., and claiming that defendants
“intentionally removed and omitted DB's copyright .
. . information from copies of DB's works”-an act
that could violate the DMCA notwithstanding a valid license.
See 17 U.S.C. § 1202(b)(1). I therefore
inferred that Count IX included a claim related to these two
designs-a supposition plaintiff later confirmed in its brief
opposing defendants' motion for summary judgment on
substantial similarity. (See Doc.118).
succeed on a DMCA claim, however, a copyright holder still
bears the burden of proving two of the elements essential to
a traditional copyright infringement claim: (1) that it owns
the copyright; and (2) that the defendant had access to it.
See 17 U.S.C. § 1202(b)(1) (“No person
shall, without the authority of the copyright owner
or the law . . . intentionally remove or alter any copyright
management information” (emphasis added)); see also
Granger v. Dethlefs, 2014 WL 2475979, *6-7 (E.D. Pa.)
(Plaintiff “cannot prove that Defendants violated the
DMCA because if there is not enough evidence to show
copyright ownership, it cannot be proved that any copyrighted
material was altered or removed.”); Design Basics,
LLC v. Lexington Homes, Inc., 2016 WL 8116897, *5 (E.D.
Wis.) (“Without evidence of access to the copyrighted
works, there is no genuine dispute of material fact as to
whether Defendants intentionally removed copyright management
information from the same copyrights as required for
Plaintiffs to prove their claim under the [DMCA].”).
present, DB does not move for summary judgment on its
ownership of a copyright in, or defendants' access to,
the Ashton or the Albany.
“moves for summary judgment on . . . Plaintiff's
ownership of the valid copyrights in the 21 works at issue,
” rather than the twenty-three works it named in the
second amended complaint. (Doc. 83-1, ID 2861 (emphasis
omitted)). Plaintiff did not submit certificates of copyright
registration or deposit materials for the Ashton or the
Albany as exhibits to its motion,  and did not include them
among its list of the twenty-one designs “at
issue.” (Id. at 2860). Thus, to the extent DB
had intended to raise any arguments concerning its ownership
of, and FWH's access to, the Ashton or the Albany,
plaintiff waived them by failing to discuss them in its
principal summary-judgment brief. See Scottsdale Ins. Co.
v. Flowers, 513 F.3d 546, 553 (6th Cir. 2008).
counsel evidently caught this mistake when drafting
plaintiff's reply. There, plaintiff asserts that it owns
“valid copyrights in the twenty-three (23)
architectural works at issue, ” and contends defendants
had access to all of them, bringing the Ashton and the Albany
back into the mix. (Doc. 98, ID 3751, 3768 (emphasis added)).
That it cannot do.
is a not a vehicle for DB to correct the omissions in its
initial brief. Hunt v. Big Lots, Inc., 244 F.R.D.
394, 397 (N.D. Ohio 2007). “[R]eply briefs
reply to arguments made in the response brief-they
do not provide the moving party with a new opportunity to
present yet another issue for the court's
consideration.” Scottsdale, 513 F.3d at 553
(quoting NovoSteel SA v. Untied States, 284 F.3d
1261, 1274 (Fed. Cir. 2002)). “As a matter of
litigation fairness and procedure, then, ” I treat
issues raised for the first time on reply “as
waived.” Id. (quoting NovoSteel, 248
F.3d at 1274); see also Hunt, 244 F.R.D. at 397.
because plaintiff waived its arguments concerning the Ashton
and the Albany, I deny DB's motion for summary judgment
on ownership and access insofar as it relates to these
because I have already dismissed DB's claims concerning
defendants' alleged infringement of plaintiff's
Kincaid, Bermier, and Paisley designs (Doc. 129, ID 4950), my
analysis herein concerns only the eighteen remaining designs
still at issue.
second threshold matter is whether, and to what extent, I may
consider certain expert testimony in resolving
plaintiff's arguments concerning validity, ownership, and
earlier order, I granted plaintiff's motion to exclude
defense expert Richard Kraly's initial report insofar as
it expressed legal opinions characterizing DB's designs
as too unoriginal to warrant copyright protection. Defendants
evidently assumed first, that I required witness advice on
matters of copyright law, and second, that Kraly, an
architect with no legal education or training, was somehow
qualified to provide it. See Design Basics I, 2017
WL 5467152 at *4 (citation omitted).
time, they rely on an actual attorney.
in opposing DB's summary judgment motion, FWH offers an
expert report penned by John Gugliotta, Esq., a lawyer
defendants bill as “an expert in . . .copyright
law.” (Doc. 88-1, ID 3438).
” at the summary judgment stage, the “parties are
not required to submit evidence . . . in a ‘form that
would be admissible at trial.'” Shazor v. Prof.
Transit Mgmt., Ltd., 744 F.3d 948, 960 (6th Cir. 2014)
(quoting Celotex Corp. v. Catrett, 477 U.S. 317, 324
(1986)). But their materials “must still comport with
the rules of evidence”-including those governing expert
testimony. Id.; see also Fed. R. Civ. P.
56(c)(2) (“A party may object that the material cited
to . . . cannot be presented in a form that would be
admissible in evidence.”).
already explained that “I have an independent
‘gatekeeping' duty to ensure that expert testimony
is admissible under Fed.R.Evid. 702.” Design Basics
I, 2017 WL 5467152 at *4 (citing Kuhmo Tire v.
Carmichael, 526 U.S. 137, 147 (1999)). “That duty
includes maintaining ‘vigilant' guard against
expert testimony that ‘embraces actual legal
conclusions.'” Id. (citation, brackets,
and ellipsis omitted). “Generally, an expert may not
state his or her opinion as to legal standards nor may he or
she state legal conclusions drawn by applying the law to the
facts.” United States v. Gordon, 493 Fed.Appx.
617, 626-27 (6th Cir. 2012) (citation omitted).
goes out of his way to do both.
Gugliotta opines that five of DB's designs are
“ineligible for copyright protection as a matter of
law” based on their dates of creation. As for the
others, he explains that “Plaintiff does not have any
claim of infringement for an architectural work” and
“Plaintiff's allegations of copyright infringement
. . . fail to sufficiently plead the nature of the
copyrighted material.” (Doc. 88-1, ID 3459-3465, 3468).
also repeats Kraly's assertion that DB's “works
are not copyrightable because there are no original design
elements present.” (Id. at 3468 (citing Kraly
report)). I previously excluded this portion of Kraly's
report because Kraly's “belief that DB's
designs do not merit copyright protection is a legal
conclusion-and a subject on which I ‘do not need the
judgment of witnesses.'”Design Basics I,
2017 WL 5467152 at *4 (quoting Gordon,
supra, 493 Fed.Appx. at 626). I now exclude this
portion of Gugliotta's report for the same
” as I said with respect to Kraly's report,
“the inclusion of such opinions does not render
[Gugliotta's] entire report and/or testimony
inadmissible.” Id. (citation and ellipsis
individual with specialized knowledge may offer testimony or
opinion as a lay witness so long as he has personal knowledge
of the facts he discusses. Harris v. J.B. Robinson
Jewelers, 627 F.3d 235, 239-41 (6th Cir. 2010);
United States v. Wells, 211 F.3d 988, 998 (6th Cir.
2000); see also Fed. R. Evid.701(a) (testimony
“rationally based on the witness's
perception” is lay testimony). Here, apart from his
legal advocacy, Gugliotta recounts personally observable
facts relevant to FWH's defenses, such as his claim that
he “review[ed] the records” at the United States
Copyright Office and “was unable to find any”
proof that Design Basics, Inc. (plaintiff's predecessor
in interest and the original copyright registrant)
transferred ownership of its copyrights to DB. (Doc. 88-1, ID
Gugliotta cannot render a legal conclusion based on this
fact, defense counsel can rely on it to dispute DB's
assertion that it owns the copyrights originally registered
to Design Basics, Inc. “The distinction, though subtle,
is nonetheless important.” See Berry v. City of
Detroit, 25 F.3d 1342, 1353 (6th Cir. 1994).
I disregard Gugliotta's legal conclusions, but consider
the facts he relays to the extent that they bear on FWH's
arguments regarding ownership, validity, and access.
final preliminary issue is FWH's objection to the
affidavit of plaintiff's counsel, James Rogers,
“the materials attached thereto, ” and its motion
to strike “Plaintiff's argument based
thereon.” (Doc. 100, ID 4103).
affidavit, Rogers attests that in the course of discovery,
defense counsel, Robert Stoffers, sent him the
“original Design Basics plan books” in his
“clients' possession” as of June 22, 2016.
(Doc. 98-10, ID 3847). The affidavit and its exhibits do not
state whether these “original Design Basics plan
books” were in defendants' “possession”
because FWH specifically ordered them, or received them
through a more passive means, such as unsolicited
advertisement. Other evidence in the record, however, shows
that one of the defendant entities-Forrester Wehrle Homes,
Inc.-ordered “Design Basics plan books” directly
from Design Basics, Inc. in 1993, 1996, 2002 and 2003. (Doc.
attests that he “personally reviewed each page”
of the plan books and “made a note of every page that
had handwriting, paper clips, dog ear pages [i.e., folds at
the upper corner], and any other physical alterations.”
(Doc. 98-10, ID 3848). He copied these pages and
“drafted a document summarizing” their
“materials attached thereto” Rogers'
affidavit include: (1) the letter from Stoffers stating that
the “original Design Basics plan books” were in
FWH's “possession”; (2) Rogers' copies of
the altered pages; (3) Rogers' notes summarizing the
alterations; and (4) a letter indicating that Rogers returned
the plan books to Stoffers following his review. (Docs.
98-11, 98-12, 98-13, 98-14).
relies on Rogers' affidavit and these exhibits to
demonstrate access-i.e., that one or more defendants saw or
“ha[d] a reasonable opportunity” to see
plaintiff's copyrighted designs “and thus ha[d] the
opportunity to copy” them. Jones v. Blige, 558
F.3d 485, 491 (6th Cir. 2009) (citation omitted). This is the
“argument based thereon” defendants move to
strike as part of their evidentiary objection.
end, FWH contends that Rogers' affidavit is insufficient
to authenticate his copies of the “original Design
Basics plan book” pages. This is so, it argues, because
Rogers lacks personal knowledge of “the DB books,
” including “their source, their creation, their
retention, their content, or that they are what they purport
to be.” (Doc. 100, ID 4107). And although Stoffers
signed the letter representing that the documents he produced
were indeed “original Design Basics plan books . . .
[then] in [his] clients' possession, ” (Doc. 98-11,
ID 3849-50), he now insists that his representation is also
insufficient to authenticate them, because he can
“express nothing more than [his] belief that the papers
are those described” in Rogers' discovery request.
Fisher v. United States, 425 U.S. 391, 413 (1976).
need not resort to Rogers' (or Stoffers') personal
knowledge “to produce evidence sufficient to support a
finding” that the plan book pages are what DB claims
they are. See Fed. R. Evid. 901(a). Rather, as
promotional materials “that contain a company logo,
” the Design Basics plan book pages are
self-authenticating documents pursuant to Fed.R.Evid. 902(7).
Alexander v. CareSource, 576 F.3d 551, 561 (6th Cir.
2009) (citing Pass & Seymour, Inc. v. Hubbell,
Inc., 532 F.Supp.2d 418, 438 (N.D. N.Y. 2007)).
example, many of the plan book pages feature illustrations of
homes in close proximity to a “Design Basics,
Inc.” logo, copyright symbol, or web address. Several
plan book cover pages also declare that they are
“published by Design Basics, Inc.” (Doc. 98-15,
ID 3883; Doc. 98-16, ID 3931; Doc. 98-18, ID 3935), or are
“a Design Basics, Inc. Publication.” (Doc. 98-14,
ID 3860; Docs. 98-19, 98-20). One, in fact, identifies itself
as a booklet of “Design Basics Home Plans.” (Doc.
98-19, ID 3935). On top of that, a number of the plan book
titles-“Gold Seal Home Plans, ” “Nostalgia
Home Plans Volume II, ” and “Neighborhood in a
Box”-are similar, if not identical to, the names of the
DB plan books Forrester Wehrle Homes, Inc., ordered from
Design Basics, Inc. in years past. (Compare Docs.
98-15, 98-18, 98-20, with Doc. 83-25, ID 3245-46).
these documents bear “[a]n inscription, sign, tag, or
label purporting to have been affixed in the course of
business and indicating origin, ownership, or control,
” they require “no extrinsic evidence of
authenticity in order to be admitted.” Fed.R.Evid.
902(7); see also Alexander, supra, 576 F.3d
alternatively contend that even if the plan book pages are
admissible, the handwritten notations on the pages are not,
because the “source(s)” of the marks, paper clips
and dog ear folds “are not known, ” (Doc. 106, ID
4348), and neither Rogers' affidavit, nor Stoffers'
letter “demonstrates that the markings . . . were made
by Defendants.” (Doc. 100, ID 4110).
enough. “But the fact that the author of the
‘handwritten notes remains unknown' does not
extinguish the document[s'] authenticity.”
Hardin v. Dadlani, 221 F.Supp.3d 87, 102 (D. D.C
2016) (quoting Lexington Ins. Co. v. W. Pa. Hosp.,
423 F.3d 318, 329 (3d Cir. 2005)).
901(a) does not require the document to be probative of a
particular fact.” Lexington Ins., 423 F.3d at
329-330. Nor does it require the proponent to “rule out
all possibilities inconsistent with authenticity, or to prove
beyond any doubt that the evidence is what it purports to
be.” United States v. Dhinsa, 243 F.3d 635,
658 (2d Cir.2001). All DB must do is introduce evidence
sufficient “for a jury to conclude that the document
‘is what its proponent claims it to be.'”
Lexington Ins., 423 F.3d at 330 (citation omitted).
DB has done at least that.
on the foregoing evidence, a reasonable juror could conclude
that one or more employees at Forrester Wehrle Homes, Inc.,
are responsible for the handwritten marks and alterations on
the Design Basics plan books Forrester Wehrle Homes, Inc.
ordered and admittedly kept in its “possession.”
See e.g., Hardin, 221 F.Supp.3d at 102
(employment application with the handwritten note,
“blond girl” admissible against employer despite
plaintiff's failure to “show who made the
‘blond girl' notation, ” where the
“application was in the defendants' possession . .
. and there was ample evidence that [the defendant
supervisor] said he wanted to hire blond girls”).
insistence that there are “other conceivable
explanations” for the handwritten marks (Doc. 106, ID
4350), goes to the weight of this evidence, not its
admissibility. See United States v. Crosgrove, 637
F.3d 646, 658 (6th Cir. 2011) (defendant's claim that his
cohort “may have hidden (or even written)” a
disputed letter “go to the weight the jury should
afford the evidence, ” not
overrule defendants' objection and deny their motion to
strike DB's access argument.
Summary judgment is appropriate under Fed.R.Civ.P. 56 where
the opposing party fails to show the existence of an
essential element for which that party bears the burden of
proof. Celotex, supra, 477 U.S. at 322.
movant must initially show the absence of a genuine issue of
material fact. Id. at 323. Once the movant meets
that burden, the “burden shifts to the nonmoving party
[to] set forth specific facts showing there is a genuine
issue for trial.” Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 250 (1986). Rule 56 “requires
the nonmoving party to go beyond the [unverified]
pleadings” and submit admissible evidence supporting
its position. Celotex, supra, 477 U.S. at
accept the non-movant's evidence as true and construe all
evidence in its favor. Eastman Kodak Co. v. Image Tech.