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James E. Zalewski et al v. T.P. Builders

June 18, 2012

JAMES E. ZALEWSKI ET AL., PLAINTIFFS,
v.
T.P. BUILDERS, INC. ET AL., DEFENDANTS.



The opinion of the court was delivered by: Gary L. Sharpe Chief Judge

MEMORANDUM-DECISION AND ORDER

I. Introduction

Plaintiffs James Zalewski and Draftics, Ltd. commenced this action*fn1 for copyright infringement under the Copyright Act of 1976, as amended,*fn2 against defendants T.P. Builders, Inc. and Thomas Paonessa (collectively "T.P."); Roxanne K. Heller and DeRaven Design & Drafting (collectively "DeRaven"); V.S. Sofia Engineering, Sofia Engineering, PLLC, and Vincenzo S. Sofia (collectively "Sofia"); Cillis Builders, Inc. and Theodore Cillis III, (collectively "Cillis"); and Cicero Building Dev., Inc. and Luigi Cicero (collectively "Cicero"). (See 3d Am. Compl., Dkt. No. 138, 10-cv-876; Compl., Dkt. No. 1, 11-cv-1156.)*fn3 Pending are T.P. and Cicero's motions for summary judgment.*fn4 (See Dkt. Nos. 176, 177.) For the reasons that follow, the motions are granted.

II. Background

A. Underlying Facts*fn5

In the early and mid-1990s, James Zalewski, the president, sole shareholder and draftsman for Draftics, Ltd., created home designs DRA210, DRA211, DRA212, DRA216, DRA217 and DRA313. (See 3d Am. Compl. ¶¶ 17, 22.) Although Zalewski did not immediately register these designs with the United States Copyright Office, he provided T.P. with copies of them. (See id. ¶¶ 23-29, 38.) Between 1993 and 1998, plaintiffs claim that T.P. advertised their designs and sold several houses in accordance with them. (See id. ¶ 41.) However, in 1998, plaintiffs assert that T.P. ceased using Draftics' services, yet continued to advertise and build homes based on their drawings. (See id. ¶ 42.)

Plaintiffs now allege that defendants constructed in excess of twenty homes which infringed their copyrighted designs. (See generally id. ¶¶ 32-94.) Specifically, they claim that in addition to "literal copying," the infringing homes "copy the overall form, look and feel . . ., the floor plans . . . , the elevation views . . . , the arrangement and composition of spaces and architectural features . . . , [and] the selection, coordination, and arrangement of rooms, windows, doors, closets, stairs and other interior and exterior architectural features of the copyrighted works." (Id. ¶ 52.) Moreover, plaintiffs aver that T.P. and Cicero removed copyright notices from advertisements displayed on various websites. (See id. ¶¶ 95-113; Compl. ¶¶ 18-41, 11-cv-1156.)

B. The Works

In general, plaintiffs' works depict Colonial home plans, consisting of elevation views and/or floor plans. (See Dkt. No. 138, Attachs. 1-7.) Each has been registered with the United States Copyright Office as evidenced by the certificates of registration attached to the Third Amended Complaint. (See id.) According to the certificates, DRA210 was first published on December 31, 1994 and registered on October 14, 2009, (see id., Attach. 1); DRA211 was first published on December 31, 1994 and registered on October 14, 2009, (see id., Attach. 2); DRA212 was first published on December 31, 1994 and registered on October 14, 2009, (see id., Attach. 3); DRA216 (home plan) was completed in 1996 and registered on November 13, 2007, (see id., Attach. 4); DRA216 (technical drawings) was completed in 1996 and registered on November 13, 2007, (see id., Attach. 5); DRA217 was first published on December 31, 1997 and registered on October 14, 2009, (see id., Attach. 6); and DRA313 was first published on December 31, 1996 and registered on October 14, 2009, (see id., Attach. 7).

C. Procedural History

Plaintiffs initially commenced this action in July 2010 against multiple defendants, including the builders, realtors and homeowners of the accused homes. (See Compl., Dkt. No. 1.) After various consultations with Magistrate Judge Randolph F. Treece, and the filing of a Second Amended Complaint, only T.P., Cicero, DeRaven, Sofia, Shelroc,*fn6 and Cillis remained. (See Dkt. Nos. 47, 51, 52, 53, 56, 61, 64, 68, 85; 2d Am. Compl., Dkt. No. 60.)

In a Memorandum-Decision and Order dated August 6, 2011, the court dismissed plaintiffs' Second Amended Complaint, but granted them leave to file a Third Amended Complaint. (See Dkt. No. 133.) Plaintiffs' elected to do so, and filed their Third Amended Complaint on September 1, 2011. (See 3d Am.Compl..) Inexplicably, plaintiffs voluntarily dismissed Shelroc and Cicero from the action,*fn7 and the remaining defendants filed dispositive motions. (See Dkt. Nos. 144, 146, 149, 151, 156.) Plaintiffs cross-moved for partial summary judgment against T.P., Sofia and Cillis, arguing, inter alia, that defendants' homes were "substantially similar." (Dkt. Nos. 158, 159, 160.)

After reviewing the parties' submissions, the court granted Cillis, DeRaven and Sofia's motions, holding that "plaintiffs' and defendants' works are not substantially similar." (Dkt. No. 168 at 10.) However, T.P.'s motion for partial summary judgment, which did not address substantial similarity, was denied as premature. (See id. at 10-12.) Thus, plaintiffs' causes of action for copyright infringement of architectural works against T.P., and unauthorized removal of copyright notices against T.P. and Cicero, survived. (See 3d Am. Compl. ¶¶ 32-113; Compl. ¶¶ 18-41, 11-cv-1156.)

III. Standard of Review

The standard of review under Fed. R. Civ. P. 56 is well established and will not be repeated here. For a full discussion of the standard, the court refers the parties to its decision in Wagner v. Swarts, No. 1:09-cv-652, 2011 WL 5599571, at *4 (N.D.N.Y. Nov. 17, 2011).

IV. Discussion

To establish copyright infringement, "a plaintiff with a valid copyright must demonstrate that: (1) the defendant has actually copied the plaintiff's work; and (2) the copying is illegal because a substantial similarity exists between the defendant's work and the protectible elements of plaintiff's." Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57, 63 (2d Cir. 2010) (internal quotation marks and citation omitted). Stated another way, a plaintiff must first establish the validity of his copyright, and then, "that the defendant, without authorization, copied the protected work." Charles W. Ross Builder, Inc. v. Olsen Fine Home Bldg., LLC, No. 4:10cv129, 2011 WL 4590003, at *7 (E.D. Va. Sept. 29, 2011). Evidence of access and substantial similarity will suffice where actual copying cannot be proven. See id. (citing Keeler Brass Co. v. Cont'l Brass Co., 862 F.2d 1063, 1065 (4th Cir. 1988)).

Relying on the court's previous decision, T.P. and Cicero argue that plaintiffs' causes of action for copyright infringement fail as a matter of law because the accused properties are not substantially similar to plaintiffs' architectural works. (See Dkt. No. 176, Attach. 1 at 5-8; Dkt. No. 177, Attach. 6 at 2-6.) In response, plaintiffs assert that the court's previous decision constituted legal error. (See Dkt. No. 181 at 19-20.) Specifically, plaintiffs take exception with the court's failure to address the originality of their works, and request that the prior decision be ignored or amended. (See id.) Furthermore, they aver that there are genuine issues of material fact with respect to the question of substantial similarity, and finally, that summary judgment is premature. (See id. at 13-18, 22-23.)

Addressing first the purported error in the court's previous decision, plaintiffs challenge the accuracy and completeness of the substantial similarity analysis. (See id. at 5-12, 19-20.) While the conclusion was correct, (see Dkt. No. 168 at 9-10), the steps in the substantial similarity analysis were not fully articulated. Thus, for the sake of clarity, the court exercises its discretion to amend only the reasoning in its previous decision to include the full analysis discussed below.*fn8 See Cusamano v. Sobek, 604 F. Supp. 2d 416, 435 n.30 (N.D.N.Y. 2009). In so doing, the court first discusses plaintiffs' claim regarding the propriety of summary judgment, followed by the availability and scope of copyright protection, and ultimately, the substantial similarity between plaintiffs' and defendants' works.

A. Propriety of Summary Judgment

Plaintiffs argue first that the court cannot weigh the evidence in deciding the pending motions. (See Dkt. No. 181 at 13.) They further claim that genuine issues of fact remain with respect to whether their works are substantially similar to the allegedly infringing designs. (See id. at 14-17.) Lastly, plaintiffs contend that discovery is necessary to "disclose additional as-built deviations," and to obtain further evidence to counter defendants' motions. (Id. at 16-17; Dkt. No. 181, Attach. 1 ¶¶ 46-47.) The court disagrees on all accounts.

With respect to the need for discovery, plaintiffs' previously cross-moved for summary judgment on the basis of substantial similarity.*fn9 (See Dkt. Nos. 158, 159, 160.) In so doing, plaintiffs implicitly represented that there were no genuine issues of material fact and they, as the moving party, were entitled judgment as a matter of law. See Fed. R. Civ. P. 56(a). It follows that their current argument regarding the need for discovery is both disingenuous and unpersuasive.

While traditionally reserved for the trier of fact, "[t]he question of substantial similarity is by no means exclusively reserved for resolution by a jury." Gaito Architecture, 602 F.3d at 63. Indeed, "it is entirely appropriate for a district court to resolve that question as a matter of law, [where] . . . 'no reasonable jury, properly instructed, could find that the two works are substantially similar.'" Id. (quoting Warner Bros. Inc. v. Am. Broad. Cos., 720 F.2d 231, 240 (2d Cir. 1983)). Because "the works themselves supersede and control contrary descriptions of them," Walker v. Time Life Films, Inc., 784 F.2d 44, 52 (2d Cir. 1986), discovery is unnecessary, where, as here, the court can conduct the requisite visual comparison. Gaito Architecture, 602 F.3d at 64. Moreover, in the case of architectural works-which are akin to compilations*fn10 -summary judgment "is often more reliabl[e] and accurate[]." Intervest Constr., Inc. v. Canterbury Estate Homes, Inc., 554 F.3d 914, 920 (11th Cir. 2008). "This is so because a judge is better able to separate original expression from the non-original elements of a work where the copying of the latter is not protectable and the copying of the former is protectable." Id. at 920.

Here, the parties provided the copyrighted works, (see Dkt. No. 138, Attachs. 1-7), the allegedly infringing works, (see, e.g., Dkt. No. 176, Attachs. 3-24; Dkt. No. 177, Attachs. 4-5; Dkt. No. 181, Attachs. 2-3), images of the exteriors of the as-built homes, (see Dkt. No. 181, Attach. 4), and screenshots of the relevant websites, (see Dkt. No. 181, Attachs. 5-12).Despite their contrary position in the face of T.P. and Cicero's motions, plaintiffs repeatedly stated that "[w]hen a court is called upon to consider whether the works are substantially similar, only a visual comparison of the works is required." (Dkt. No. 158, Attach. 1 at 13; Dkt. No. 159, Attach. 1 at 12; Dkt. No. 160, Attach. 1 at 10 (emphasis added)).Given the technical nature of the inquiry before it, and the comprehensive submissions by the parties, the court is not only capable of conducting the requisite visual comparison, but also better suited to do so. See Gaito Architecture, 602 F.3d at 64; Intervest, 554 F.3d at 920.

B. Availability and Scope of Copyright Protection

Turning to the issue of originality, plaintiffs aver that T.P. and Cicero conceded that their works are original. (See Dkt. No. 181 at 7-8.) T.P.'s reply refutes this claim, arguing that it challenged the originality of the works in its previous motion for summary judgment. (See Dkt. No. 183 at 2.) Because the originality inquiry is an "indispensable step of identifying the protectable aspects of plaintiffs' designs," the court discusses it first. (Dkt. No. 181 at 5.) In so doing, it concludes that plaintiffs' home plans are entitled to, at best, thin copyright protection.

1. Prima Facie Evidence of Validity

Establishing copyright infringement requires proof that the plaintiff owns a valid copyright, and "'copying of constituent elements of the work that are original.'" Boisson v. Banian, Ltd., 273 F.3d 262, 267 (2d Cir. 2001) (quoting Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991)). Normally, these requirements are satisfied by the certificate of copyright registration, which, if "'made before or within five years after first publication of the work'" constitutes "'prima facie evidence of the validity of the copyright . . . and of the facts stated in the certificate.'" 17 U.S.C. § 410(c). But, whereas here, the certificates were issued more than five years after the date of first publication, (see Dkt. No. 138, Attachs. 1-7), "[t]he evidentiary weight to be accorded [to them] . . . shall be within the discretion of the court." 17 U.S.C. § 410(c). When considered in light of "the Copyright Office's practice of summarily issuing registrations," Universal Furniture Int'l, Inc. v. Collezione Europa USA, Inc., 618 F.3d 417, 428 (4th Cir. 2010), the certificates here are, standing alone, insufficient. See Home Design Servs., Inc. v. Starwood Constr., Inc., 801 F. Supp. 2d 1111, 1116-17 (D. Colo. 2011); CJ Prods. LLC v. Snuggly Plushez LLC, 809 F. Supp. 2d 127, 143 (E.D.N.Y. 2011). As such, the burden remains with plaintiffs to establish the validity and originality of their drawings.*fn11 But see CJ Prods. LLC, 809 F. Supp. 2d at 142 (stating that where plaintiff has established a prima case of validity, "the burden to prove otherwise shifts to the defendants").

Here, the validity of the registrations is uncontested as neither T.P. nor Cicero challenges plaintiffs' compliance with, inter alia, 37 C.F.R. ยง 202.11. Absent evidence to the contrary, the court accepts, for the purposes of these motions, that plaintiffs' registrations are valid. However, in light of T.P.'s argument regarding the lack of ...


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