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Lombardi v. Whitehall XII/Hubert Street

March 4, 2010


The opinion of the court was delivered by: Honorable Paul. A. Crotty, United States District Judge



Plaintiff Joseph Pell Lombardi, doing business as Joseph Pell Lombardi & Associates, Architects, brings this action against Defendants, WXII/Hubert Street, LLC,*fn1 Whitehall Street Real Estate Limited Partnership XII, WH Advisors, L.L.C., XII (collectively, "Whitehall"), BKSK Architects, L.L.P. ("BKSK") and Pavarini McGovern, L.L.C. ("Pavarini") asserting two claims of copyright infringement under the Copyright Act of 1976 ("Copyright Act"), 17 U.S.C. § 101 et seq., as amended by the Architectural Works Copyright Protection Act ("AWCPA"), Pub. L. No. 101-650, §§ 701-706, 104 Stat. 5098, 5133-34 (1990) (codified in scattered sections of 17 U.S.C.). Plaintiff alleges that he designed an original building to be constructed at 137 Hudson Street, New York, New York 10014, also known as 3-9 Hudson Street, and that the Defendants copied his plans, the "Lombardi Plans," in designing and then constructing a building, called "the Hubert," at the same location.

Plaintiff commenced this action on August 20, 2004. On January 29, 2007, Plaintiff filed an Amended Complaint asserting two claims of copyright infringement. The first claim, asserted against all of the Defendants, is for copyright infringement of an architectural work. Plaintiff claims that the plans for the Hubert, prepared by BKSK, and the Hubert itself, constructed by Whitehall, BKSK and Pavarini, infringe on his registered copyright in the Lombardi Plans. The second claim, asserted solely against BKSK, is for copyright infringement of technical drawings. According to the Amended Complaint, the plans prepared by BKSK for the Hubert infringe on Plaintiff's registered copyright in the technical drawings for the Lombardi Plans. Plaintiff seeks an award of damages, equitable relief and attorneys' fees. In their Answer to the Amended Complaint, Whitehall and Pavarini assert a counterclaim for a declaratory judgment that they have not infringed on Plaintiff's copyright.

Defendants now move for summary judgment. In three separate motions they contend that (1) Plaintiff is equitably estopped from asserting his copyright infringement claims; (2) Plaintiff has failed to adduce sufficient evidence of copyright infringement; and (3) Plaintiff is not entitled to recover attorneys' fees.*fn2 The defense of equitable estoppel has not been proved, and the Defendants have not shown that they are entitled to judgment as a matter of law on Plaintiff's copyright infringement claims. Accordingly, and for the reasons that follow, Defendants' motions for summary judgment on equitable estoppel and non-infringement are denied. Plaintiff concedes that he is not entitled to recover attorneys' fees and Defendants' motion for summary judgment on Plaintiff's prayer for attorneys' fees is accordingly granted.


I. Facts

Stanley Scott ("Scott") was the controlling owner of 137 Hudson Street Associates L.P., the company which owned 137 Hudson Street, the lot on which the Hubert was ultimately built (the "Hubert Site"). (Deposition of Stanley Scott ("Scott Dep.") at 8:4-12, 12:25-13:18.) Through another company, 145 Hudson Street Associates, L.P., Scott also owned the adjoining building at 145 Hudson Street ("145 Hudson"). (Id. at 8:4-12.) Plaintiff, who is an architect, was hired by Scott in 1995 or 1996 to prepare architectural plans (the "Lombardi Plans") for a building to be constructed at the Hubert Site. (Id. at 9:23-12:21; Amended Complaint ("Am. Compl.") ¶¶ 16-17.) In addition to preparing architectural plans, Plaintiff was to gain approval for the plans from New York City's Landmarks Preservation Commission ("LPC")*fn3 and Board of Standards & Appeals ("BSA"). (1/22/1996 Letter from Lombardi to Scott; 7/27/96 Letter from Lombardi to Scott; Scott Dep. at 9:23-12:21.) Plaintiff and Scott did not, however, enter into a formal written contract, and they never discussed who would own the yet to be developed plans, their copyrights or any other rights relating to the plans. (Deposition of Joseph Lombardi ("Lombardi Dep.") at 13:16-23, 18:11-19:3; Scott Dep. at 87:2-89:9.)*fn4

Soon after being hired, Plaintiff began to work on the Lombardi Plans. Plaintiff intended for the Lombardi Plans to share similarities with 145 Hudson. (Lombardi Dep. at 131:3-6.) The similarities included the tripartite design, industrial style windows and the use of limestone at the base and as trim throughout the building. (Id. at 131:7-21.) During a June 25, 1996 presentation to the LPC, Plaintiff explained that he sought to have his design "relate as much as possible in every characteristic to the [145 Hudson Street] building and be sympathetic to it, not fight it in any way." (Tr. of 6/25/1996 LPC Hearing at 7.) The LPC approved of the Lombardi Plans, and issued a certificate of appropriateness ("COA") on February 10, 1997. (2/10/1997 COA for 3-9 Hubert Street.) The COA, which was required for building at the Hubert Site to commence, states that the Lombardi Plans are "closely derived," in a number of ways, from 145 Hudson, and that the building to be constructed will establish "a strong visual relationship with the historic building [145 Hudson] and with other historic buildings within the Tribeca West Historic District." (Id.)

The story, however, becomes more complicated in the summer of 1997, when copyright law interacts with New York City real estate development. Prior to August, 1997, Plaintiff learned that Scott intended to sell the Hubert Site. (8/18/1997 Letter from Lawrence Lipson to Lombardi; 12/15/1997 Letter from Scott to Lombardi.) And on December 15, 1997, Scott wrote to Plaintiff:

In reviewing the retainer agreement for 145 Hudson Street and 137 Hudson Street there appears to be items that should be removed or clarified: . . . .

Proforma -- no anticipated additional work?

N.B. Plans & applications?


Board of Standards?

As 137 Hudson Street will not be developed by us and will probably be sold in the near future we should be completed soon, if not please explain. (12/15/1997 Letter from Scott to Lombardi.) After learning that Scott intended to sell the property, Plaintiff completed the Lombardi Plans and obtained approval for the plans from the relevant regulatory bodies. (Defs.' Rule 56.1 Statement in Supp. of Mot. Summ. J. on Equitable Estoppel ¶ 18.) Scott then paid Plaintiff approximately $135,000 for preparing the Lombardi Plans. (Id. ¶ 19; Report of Wayne Hoberlein at 7-8; Lombardi Dep. at 26:20-24.)

In late 1997, Scott entered negotiations with Tishray Realty, LLC ("Tishray") to sell the Hubert Site along with the Lombardi Plans. (Scott Dep. at 40:5-42:8.) During the negotiations, one of Scott's attorneys wrote Plaintiff a memorandum stating: "Enclosed, regarding the referenced premises [137 Hudson Street], are copies of the plans attached as an exhibit to the Sale-Purchase Agreement with Tishray Realty, LLC." (11/12/1998 Memo from Amy Williams to Lombardi.) The memo asks Plaintiff to "review the enclosed plans and let Larry Lipson [Scott's attorney] or me know if they are substantially similar to the approved plans that we are awaiting from the BSA." (Id.) As requested, Plaintiff reviewed the plans, and Scott paid him for doing so. (Defs.' Rule 56.1 Statement in Supp. Mot. Summ. J. on Equitable Estoppel ¶ 23.) Scott, however, did not sell the Hubert Site to Tishray. (Scott Dep. at 59:4-13.)

Next, Plaintiff was part of a group that attempted to purchase the Hubert Site in late 1999. (Lombardi Dep. at 43:5-7; Defs.' Rule 56.1 Statement in Supp. Mot. Summ. J. on Equitable Estoppel ¶ 25.) On October 19, 1999, Scott sent Plaintiff, and a member of the group attempting to purchase the Hubert Site, Michael Steinberg ("Steinberg"), a letter (the "Letter of Intent") setting forth the basic terms of his offer. (10/19/1999 Letter of Intent; Lombardi Dep. at 45:3-5.) Under the heading, "Instrument of Transfer," the Letter of Intent states:

The closing documents would also transfer to the Purchaser all of Seller's right, title and interest in and to the plans and specifications, the variance, and approvals (including approvals by Landmarks and BSA), and any other tangible or intangible matters pertaining to the development of the project all of which would be fully paid for and free of liens. (10/19/1999 Letter of Intent.) Plaintiff reviewed the Letter of Intent upon receipt, (Lombardi Dep. at 45:10-12), and admits that the "plans" referenced in the letter are the plans he had developed. (Id. at 46:20-47:3.) Plaintiff also testified that he did not recall discussing the letter's reference to transferring the "plans" with Scott. (Id. at 47:4-8.) Ultimately, Plaintiff and Steinberg did not sign the Letter of Intent. (Id. at 45:13-14.) To the best of Plaintiff's recollection, his group chose not to purchase the Hubert Site because of ongoing litigation between Scott and Tishray and because of an appeal by a civic group of the BSA's approval of the Lombardi Plans. (Id. at 43:7-44:9, 45:16-46:6.)

At some point prior to December, 1999, Whitehall and Scott entered negotiations for the purchase and sale of the Hubert Site. On December 17, 1999, Scott, through 137 Hudson Street Associates L.P., entered into a contract (the "Sale-Purchase Agreements") with an entity known as 137 Hudson Street LLC for the sale of the Hubert Site. (12/17/1999 Sale-Purchase Agreement.) It appears that 137 Hudson Street LLC was controlled by Whitehall, and on September 19, 2000, 137 Hudson Street LLC assigned the Sale-Purchase agreement to Whitehall. (9/19/2000 Assignment & Assumption of Sale-Purchase Agreement.) Three days later, on September 22, 2000, Whitehall and Scott closed on the Hubert Site.

During the negotiations leading up to the Sale-Purchase Agreement, counsel for Whitehall requested that Scott obtain "an assignment duly executed by the architect of the [Lombardi] Plans which assigns to Purchaser all of the architect's rights to the Plans[.]" (Draft Sale-Purchase Agreement ¶ 12.1 attached to 11/22/1999 Letter from Scott Fuer to Lawrence Lipson.) Scott's counsel, Lawrence Lipson ("Lipson"), responded on November 24, 1999, stating:

Your insert 12.1 was not made . . . (ii) your request that the architect assign its rights to the plans is not necessary since an appropriate representation has been made with respect to the Seller's rights to assign the plans and Mr. Lombardi has no reason to cooperate with the Seller or any obligation to do so . . . . (11/24/1999 Letter from Lipson to Steven Estroff.) During his deposition, Lipson explained that the reason he wrote that Plaintiff had no reason to cooperate was because, "Mr. Lombardi was interested in buying the property. There would be no reason for him to cooperate to sell the property to somebody else." (Deposition of Lawrence Lipson ("Lipson Dep.") at 73:12-18.)

The Sale-Purchase Agreement provides that at closing Scott will provide an "Assignment Agreement" assigning, among other things, "any plans in Seller's possession prepared on Seller's behalf in respect to the Premises by The Office of Joseph Pell Lombardi & Associates . . . [and] any other permits, plans and/or approvals with respect to the Premises." (Sale-Purchase Agreement at 19.) Through the Sale-Purchase Agreement, Scott represented that "no person or entity other than Seller has a right to the Plans and the plans referenced in the Permit, and Seller has the right to assign the Plans and such plans free and clear of the rights of any other person or entity (including, without limitation, the rights of the architect that prepared the same)." (Id. at 30.) Scott testified that he "believe[d]" that he had purchased the rights to the Lombardi Plans, (Scott Dep. at 70:21-71:2), but also that he never discussed the issue with Plaintiff. (Id. at 87:2-89:9; Lombardi Dep. at 13:16-23, 18:11-19:3.)

Plaintiff and his associates, including Gary Silver ("Silver"), assisted Scott in negotiating the sale of the Hubert Site to Whitehall. (Defs.' Rule 56.1 Statement in Supp. Mot. Summ. J. on Equitable Estoppel ¶ 38.) Scott wanted to ensure that the building constructed at the Hubert Site did not interfere with the light and sight lines of his building at 145 Hudson. (Id. ¶ 41; Lombardi Dep. at 99:15-100:9.) Accordingly, Scott insisted that Whitehall enter into an agreement limiting the "envelope," or features, of any building constructed at the Hubert Site. The Sale-Purchase Agreement provides:

Notwithstanding anything to the contrary contained herein, any building improvements constructed on the Premises (collectively, the "Building") by Purchaser shall be constructed generally within the height, bulk and setback limitations set forth on the plans approved by The Board of Standards and Appeals of the City of New York (the "BSA") in connection with the Resolution (hereinafter defined), which plans are annexed as Exhibit "D" attached hereto, provided that Purchaser may: (i) increase the height of the Building to not in excess of One Hundred Ninety-Five (195) feet above curb level in order to install mechanical equipment on the top of the Building, and/or (ii) construct the Building to cover the entire lot that comprises the Premises (i.e., to cover the "footprint" of the Premises) but only up to a horizontal plane that is no higher that Thirty-Three (33) feet above curb level (provided that any such construction shall be performed in a manner that does not result in 145 Hudson being required pursuant to applicable laws or requirements to close-up or otherwise block any windows located on the 145 Hudson Street Building (hereinafter defined)). Purchaser shall not seek changes in the zoning applicable to the Premises or any variances with respect to the Premises. The provisions of this Section 5(A) shall survive the Closing and shall be ...

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