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July 16, 1990


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 provisions.*fn1

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.

In early July 1979, Kaufman contacted plaintiff about continuing to work for Kay-Bee. Plaintiff submitted a proposal which Kaufman signed. Plaintiff was initially paid a retainer of $12,000 by Kaufman, which was applied against fees for ensuing stores. Plaintiff then began to handle all of Kay-Bee's work and prepared a new set of drawings for Kay-Bee. At the time the drawings were made, he did not have any prior Kay-Bee drawings prepared by SRA or its predecessors. Plaintiff prepared the drawings from scratch with new formats, notes and details. In the fall of 1979 Kaufman supplied plaintiff with certain of SRA's drawings for Kay-Bee, which plaintiff used as a reference only after he prepared his own sets of drawings.*fn2 At no time was ownership of these drawings discussed by the two parties. Kunycia understood that, as an architect, he owned them. Kaufman believed that Kay-Bee owned the drawings.

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 notice.

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 stores.

On May 6, 1986, plaintiff's drawings for the Honey Creek Mall in Terre Haute, Indiana were registered with the Copyright Office.*fn5 The drawings which have been registered are typical and representative of the drawings he made for Kay-Bee during the period, 1979-1983.


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 differ.

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 expression); 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 ways).

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 ...

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