The opinion of the court was delivered by: McMAHON, District Judge.
DECISION AND ORDER ACCEPTING IN PART AND REJECTING
IN PART THE REPORT AND RECOMMENDATION OF THE HON. LISA MARGARET SMITH
On May 14, 1999, I received a thorough Report and Recommendation from
the Hon. Lisa Margaret Smith in the above-captioned matter — a suit
for copyright infringement, trade name infringement, unfair competition
and breach of contract, brought by a surveyor whose site plan for a
building site in the Town of Ramapo, New York was superseded by an
allegedly infringing copy. I have received objections from all parties,
and on July 23, the parties appeared before me to argue their various
motions. Upon review of the record, I have decided to accept Judge
Smith's recommendations in part and reject them in part, in accordance
with this decision.
Magistrate Judge Smith prepared an excellent statement of undisputed
facts, which I adopt as my own. For ease of reading, I incorporate it
Plaintiff, Albert R. Sparaco, Jr., entered into a contract with
Defendants Northern Metropolitan Foundation for Health Care, Inc.
("NMF"), and its Executive Director, Morris Klein ("Klein"), under which
Plaintiff was to survey the site for Heritage House,*fn1 a proposed
development. See Contract dated July 15, 1993, attached as Ex. A to
Plaintiffs Order to Show Cause. In addition to surveying the site,
Plaintiff also created a site plan for which he obtained a Certificate of
Copyright Registration in December, 1996. See Aff. of Albert Sparaco
dated Feb. 11, 1999, ¶¶ 4-10; Ex. B. attached to Am.Comp. The site
plan consisted of a depiction of the grade and contours of the land, a
proposed location for the building, and the proposed location of
utilities. Plaintiffs site plan is dated December 22, 1993. See Ex. A.
attached to Am.Compl. This site plan was filed with the Town of Ramapo,
New York.*fn2 See Am. Compl., ¶ 13.
Klein and NMF hired Defendant Dahn & Krieger ("D & K"), to
redesign the building in May, 1996. See Aff. of William Dahn dated Nov.
25, 1998 ("Dahn Aff."), attached to Dkt. #27, ¶ 3; Dahn Aff. dated
Feb. 25, 1999, ¶ 4. As a result of the redesign, the footprint of the
building changed.*fn3 See Dahn Aff. 2, ¶ 6. As a further result, the
site plan prepared by Plaintiff and filed with the Town required
amendment. See Dahn Aff. 2, ¶ 6.
In 1997, Defendants Klein and NMF contracted with Defendant Lawler,
Matusky & Skelly Engineers, LLP ("LMS"), and one of its partners,
Defendant Thomas Vanderbeek ("Vanderbeek"), to amend the site plan. See
Affidavit of Thomas Vanderbeek ("Vanderbeek Aff"), dated Nov. 30, 1998,
¶¶ 3-4. In completing that project, LMS and Vanderbeek "digitized"
contours from Plaintiffs site plan onto the amended site plan because the
land had already been disrupted by the early stages of construction. See
Vanderbeek Aff. ¶ 4. The amended site plan by LMS and Vanderbeek,
dated June 13, 1997, indicates that it is based on a previously approved
site plan by Plaintiff. See Ex. C attached to Am.Compl.; Ex. B. attached
to Order to Show Cause. It is undisputed that on July 27, 1997, LMS and
Vanderbeek's site plan was also filed with the Town of Ramapo. See
Vanderbeek Aff., ¶ 4.
Defendants Klein and NMF contracted with Defendant Graham &
Alexander ("G & A"), to construct the building. See Aff. of Leonard
Kohl dated Dec. 10, 1998, ¶ 3. That construction was completed by
November, 1998. See Declaration of Morris Klein, ¶ 3. LMS and
Vanderbeek are currently in the process of preparing and filing an "as
built" survey and site plan. See Aff. of Thomas Vanderbeek, dated Jan.
22, 1999, ("Vanderbeek Aff. 2"), ¶ 4, attached to Dkt. #40, as Ex.
Plaintiff filed this action on August 22, 1997, alleging copyright
infringement, unfair competition under the Lanham Act, unfair competition
under New York law and breach of contract. The breach of contract claim
appears to be alleged as against Defendant Klein alone. In the Amended
Complaint, Plaintiff asserts the following as relevant to all of his
16. Upon information and belief, after Plaintiff
Sparaco published the Heritage House Work, Defendants
infringed said copyright by copying and causing to be
filed in the office of the Clerk of the Town of Ramapo
a derivative work (hereafter the "Derivative Work")
comprising a substantial copy of the Heritage House
Am.Compl. ¶¶ 15-16 (emphasis supplied).
The original complaint was filed against LMS and Vanderbeek on August
22, 1997. Plaintiff amended his complaint on November 3, 1997, to include
NMF and Klein, architects D & K, and builders G & A. Plaintiff
filed an Order to Show Cause why a Preliminary Injunction should not
Issue, on April 23, 1998.*fn4 Defendants responded to that motion and
subsequently filed motions to dismiss and for summary judgment, as well
as various supporting papers. Defendant G & A filed an Affidavit
joining in co-defendants' various motions.
In November 1998, shortly after I took the bench here in White Plains,
I conferenced this case and learned that it had been in limbo for some
time. I sent it to Magistrate Judge Smith for a Report and Recommendation
concerning plaintiffs motion for a preliminary injunction and defendants'
various motions for summary judgment. As noted above, after reviewing the
voluminous record and hearing the parties, she issued a 23 page Report on
May 14, 1999.
Rather than summarize the Report, I will deal with each recommendation
1. Copyright Infringement
Plaintiffs first cause of action, asserted against all defendants,
alleges that Defendants "have been copying and making the Derivative Work
and, upon information and belief, otherwise selling, and/or otherwise
marketing the copyrighted Heritage House Work. . . ." Am.Compl. ¶
21. The derivative work referred to varies, it would seem, depending on
which defendant is being sued. As to Defendants LMS and Vanderbeek ("the
Surveyor Defendants") the derivative work is indisputably their amended
site plan. As to Defendants D & K (the designer of the new building)
and G & A (the builder of the new building), the derivative work is
apparently the building itself, which plaintiff alleged at oral argument
to be an infringing derivative work. As to Defendants NMF and Klein ("the
Developer Defendants"), the derivative work is both the site plan and the
building that was eventually constructed.
I have no difficulty agreeing with the learned Magistrate Judge that
the First Cause of Action must be dismissed as against D & K and G
& A. Plaintiffs theory is that, because the redesigned building
necessitated amending the site plan, which resulted in the creation of an
infringing derivative work (the amended site plan), the building
constitutes an infringing derivative work and its designer and builder
can be sued for copyright infringement. This is nonsense. Plaintiff is
not an architect. He never designed any building. He designed a site plan
to accommodate a building designed by some
one else. When the building's developers decided they wanted to change
the building, they hired a new architect (D & K) who redrew the
building. That appears to have required changes in the original site
plan. But plaintiff had no guarantee, under either the copyright laws or
his contract with Klein, that the building for which he designed his site
plan would be built or that his plan would be used with any other
building. Indeed, plaintiffs contract expressly forbade use of his site
plan with any other building (see infra.) Plaintiffs only right (if he had
any right) was a copy-right — that is, a right to keep others from
making copies of his original work. As long as the new architect and the
builder who carried out the architect's vision did not make copies of
Plaintiffs copyrighted work (i.e., his site plan), they did not violate
As the Magistrate Judge correctly found, there is no evidence in this
record that either D & K or G & A either copied or caused anyone
else to copy plaintiffs work. There is also no evidence that D & K or
G & A sold or otherwise marketed Sparaco's site plan. Neither does
plaintiff allege that these two Defendants directly profited from any
infringing activity — or, for that matter, that they were even
aware that the other defendants might be infringing Sparaco's copyright.
The profits they received for redesigning the building and constructing
it — while associated with and resulting from the project —
did not emanate directly from the allegedly infringing activity. To the
contrary, the allegedly infringing activity (the creation of an amended
site plan) emanated from the redesign of the building.
With respect to the other defendants, the question is far from clear.
In order for Plaintiff to succeed in his action for copyright
infringement, he must show that he holds a valid copyright and that
Defendants copied elements of his work that are copyrightable. See Feist
v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 362, 111 S.Ct. 1282, 113
L.Ed.2d 358 (1991). A certificate of registration from the Copyright
Office is prima facie evidence of the validity of the copyright, but the
court maintains discretion over how much weight that certificate should
be given. See 17 U.S.C. § 410 (c). An effective challenge to the
copyright shifts the burden to ...