The opinion of the court was delivered by: VINCENT L. Broderick, District Judge.
This case was tried to the court. This memorandum order
constitutes my findings of fact and conclusions of law pursuant
to Fed.R.Civ.P. 52(a) solely on the issue of liability.
Plaintiff has asserted a claim of federal copyright
infringement and a state law claim of unjust enrichment.
Defendant has denied the allegations and has asserted defenses
based on laches, the applicable statute of limitations, and
preemption of the state law claim.
Plaintiff Jaroslaw Kunycia is a licensed architect. Between
January 1972 and June 1979, plaintiff was employed as a
designer and draftperson at Stuart Roberts & Associates ["SRA"],
an industrial design firm owned by Stuart Roberts. One of
SRA's clients during this period was Kay-Bee Toy and Hobby
stores ["Kay-Bee"] of which Howard Kaufman was president.
Between 1970 and 1972, Kaufman decided to develop a uniform
design for his Kay-Bee stores in conjunction with his decision
to open up numerous stores in shopping malls. He employed a
number of architects in developing this design. Kaufman was
unhappy, however, with the drawings produced by these
architects: he found the drawings they produced difficult to
read. He therefore engaged SRA to develop the design for his
stores. SRA assigned plaintiff to the project.
During the SRA-Kay-Bee association, Kaufman remembers working
only with plaintiff. In 1977, plaintiff began work on his first
Kay-Bee project: a store in the Stroud Mall in Stroud,
Pennsylvania. No drawings from the previous architects were
available, and the design he ultimately produced was completely
new with a new storefront, display area, colors, display
systems, and arrangements.
SRA continued its design work for Kay-Bee during the years
1977 into 1979. Plaintiff headed up the work, serving as
"project-manager." In this position his work included the
preparation of drawings for successive Kay-Bee stores
throughout the country. These drawings differed from one
another based upon information obtained from landlords. During
his time at SRA plaintiff prepared the preliminary and working
drawings for more than seventy additional stores. Kaufman
reviewed preliminary drawings which were submitted, but did not
draw or design himself.
For this work SRA billed Kay-Bee a set fee for each store,
with the charges broken down by the phases of each project:
field trips; preliminary drawings; working drawings; consulting
engineers; etc. The originals of all drawings were kept at SRA,
and copies were given to Kaufman, landlords, general
contractors and other concerned parties. Neither SRA, Kunycia,
nor Kaufman discussed the ownership of these drawings. In SRA's
agreement with Kay-Bee there were no ownership or copyright
On June 1, 1979, Kunycia gave notice that he was going to
leave SRA. In mid-June Roberts met with Kaufman and explained
that Kunycia would be leaving and that Robert Padilla, another
designer at SRA, would be in charge of the Kay-Bee account.
Kunycia left SRA at the end of June to start his own business.
From July, 1979 to the spring of 1983, plaintiff prepared
drawings for approximately 200 additional Kay-Bee stores.
Plaintiff "stamped" all of these drawings, certifying them as
an architect. None of these drawings included a copyright
In August, 1981 the Melville Corporation acquired Kay-Bee.
Melville Corp. is involved in specialty retailing and operates
such store chains as Thom McAnn shoes, CVS drugs, Marshall's
clothing, and others. Defendant Melville Realty is a
wholly-owned subsidiary of Melville Corp. and is responsible
for certain of the leasing and construction activities of
Melville Corp. After the acquisition plaintiff continued to
deal with Kaufman in the same way as he had previously.
However, at some point after Kay-Bee was acquired, defendant's
drafting department began to prepare its own construction
drawings for Kay-Bee.
Beginning in the latter part of 1981, Melville Realty's
in-house drafting department reproduced drawings previously
prepared by plaintiff in connection with the construction of
new Kay-Bee retail facilities. Initially Melville used a "cut
and paste" method of reproduction. In March, 1982 Nicholas J.
Tricarico, who headed defendant's drafting work for Kay-Bee,
told Leonard Atkins, a drafting supervisor at Melville, to
redraw plaintiff's drawings.
Atkins was instructed to produce new drawing formats for
Kay-Bee. Thereafter, under his supervision some of plaintiff's
drawings were redrawn exactly, cut and paste versions of
plaintiff's drawings were used to prepare new drawings, and new
paper and title blocks were employed.*fn3
In October, 1983 plaintiff first suspected that Melville was
copying his Kay-Bee format without his permission. In April,
1984 he saw sheets prepared by defendant for a Kay-Bee store in
Leominster, Massachusetts [the "Searstown store"] which were in
significant part exactly like his own. It was his impression
that his drawings and lettering were photocopied and not
redrawn.*fn4 After seeing defendant's drawings for the
Searstown store, plaintiff spoke to Tricarico about the
copying. Tricarico stated that he would make changes in the
drawings, but plaintiff was never subsequently advised of any
changes. In the late summer of 1984, plaintiff engaged in a
series of written communications with Tricarico which concerned
defendant's copying of plaintiff's drawings and steps taken by
defendant to remedy the problem. Plaintiff believes that
defendant has developed construction drawings based on
plaintiff's plans for approximately 400 additional Kay-Bee
Proof of copyright infringement requires a showing of
ownership of a valid copyright by the plaintiff and copying by
the defendant. Hasbro Bradley, Inc. v. Sparkle Toys, Inc.,
780 F.2d 189, 192 (2d Cir. 1985); Past Pluto Productions Corp. v.
Dana, 627 F. Supp. 1435, 1440 (S.D.N.Y. 1986).
For a copyright to be valid the subject matter must be
copyrightable and the work must be sufficiently original.*fn6
Plaintiff's certificate of copyright registration for the Honey
Creek drawings is prima facie evidence that the copyright is
valid under § 410(c) of the Copyright Act. This presumption of
validity is not irrebuttable, see Durham Industries, Inc. v.
Tomy Corp., 630 F.2d 905, 908 (2d Cir. 1980), but the burden of
proving an invalid copyright shifts to the defendant. Hasbro
Bradley, 780 F.2d at 192.
An author may not obtain copyright protection for his ideas
or the facts he narrates. Harper & Row, Publishers, Inc. v.
Nation Enterprises, 471 U.S. 539, 556, 105 S.Ct. 2218, 2228, 85
L.Ed.2d 588 (1985). However, the specific means chosen by an
author to express certain ideas or facts may be copyrighted, as
opposed to the idea itself. Mazer v. Stein, 347 U.S. 201, 217,
74 S.Ct. 460, 470, 98 L.Ed. 630 (1954). The initial issue
presented by this action is whether plaintiff's Honey Creek
drawings involve an expression which is independent of the
underlying design of the Kay-Bee store itself and which
therefore may be protected under the Copyright Act.
1. Copyrightability of the Subject Matter
Plaintiff asserts that the "format" of his drawings is
protected by his copyright; he does not claim copyright
protection for the "design" of the Kay-Bee stores. For purposes
of this case, "format" is the method of expressing the basic
"design" of the Kay-Bee store. "Format" would include the
layout of the store, the arrangement of detailed drawings on a
sheet, the style and perspective of the drawings, the language
of the notes, and the method of presenting the notes — all the
factors that can vary when two individuals set out to portray
the same product on paper. "Design" is the arrangement of the
physical elements of the Kay-Bee store. While the design
expressed by two drawings may be the same, their format may
Defendant contends that the format of the Honey Creek
drawings is not copyrightable because the Kay-Bee store design
can be expressed in only a limited number of ways; design and
the expression of that design are not separable. If plaintiff
were allowed to enforce his copyright of the Honey Creek
drawings, defendant argues, he would be granted a monopoly on
the use of the store design itself. In support, defendant
refers to a number of cases in which the subject matter of
certain works was held not to be copyrightable because inherent
limitations on the ways in which an idea (or design) can be
expressed cause those expressions to be similar, when in fact
the similarity is imposed by the subject matter treated —
i.e., the idea (or design). See Frybarger v. International
Business Machines Corp., 812 F.2d 525 (9th Cir. 1987) (certain
features of a video game constituted the basic idea of video
games and were not copyrightable); Affiliated Hospital
Products, Inc. v. Merdel Game Manufacturing Co., 513 F.2d 1183
(2d Cir. 1975) (no copyright infringement where the distinction
between substance and arrangement of rules for two simple
uncopyrighted games was blurred); Morrissey v. Procter & Gamble
Co., 379 F.2d 675 (1st Cir. 1967) (rules of uncopyrighted
contest capable of only a limited number of forms of
Hearn v. Meyer, 664 F. Supp. 832 (S.D.N.Y. 1987) (locations of
quotes from literary works capable of expression in limited
number of ways); Decorative Aides Corp. v. Staple Sewing Aides
Corp., 497 F. Supp. 154 (S.D.N.Y. 1980), aff'd, 657 F.2d 262 (2d
Cir. 1981) (similarities between instructions for use of two
sewing devices were dictated by functional considerations,
which permitted expression of instructions in only limited
This case is distinguishable from the cases cited by
defendant in that plaintiff has shown that there are various
ways in which the same Kay-Bee store design elements can be
depicted. Paul Segal, an expert for the plaintiff, testified
that the Kay-Bee wall section, for example, could be drawn in
"an infinite number of ways" and described possible variations.
(Transcript, p. 218 et seq.) Similarly, Martin Dorf, also an
expert for the plaintiff, testified that there are "hundreds of
ways" to draw the same design, including the Kay-Bee design.
(Transcript, pp. 249-50.) Plaintiff also prepared, for example,
eight different depictions of the same very simple cube
display. (Trial Exhibit 60.) Finally, although defendant's
expert, Howard Krasnoff, indicated that he personally would use
only one of the alternative methods of depicting the cube
display set out by plaintiff in Trial Exhibit 60, he stated
repeatedly on cross-examination that, although certain SRA
drawings and Kunycia ...