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August 11, 1999


The opinion of the court was delivered by: McMAHON, District Judge.


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and breach of contract, brought by a surveyor whose site plan for a building site in the Town of Ramapo, New York was superseded by an allegedly infringing copy.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 here.

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. 3.

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 claims:

  "15. Some time after Plaintiff Sparaco completed the
  Heritage House Work and it was filed with the Town of
  Ramapo, New York, Defendants NMF, Klein, D & K,
  and G & A asked Plaintiff

  Sparaco to provide an estimate of his services to
  update the Heritage House Work. Upon information and
  belief, Defendants . . . then decided not to engage
  Plaintiff Sparaco and, instead, engaged Defendant
  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 seriatim.


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 his copy-right.

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. ยง 410 (c). An effective challenge to the copyright shifts the burden to ...

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