James E. Zalewski, Draftics, Ltd. v. Cicero Builder Dev., Inc.

• Decision Date: 05 June 2014
• Docket Number: Docket Nos. 12–3448–cv, 12–3450–cv, 12–5127–cv.
• Citation: 754 F.3d 95
• Parties: James E. ZALEWSKI, Draftics, Ltd., Plaintiffs–Appellants, v. CICERO BUILDER DEV., INC., Luigi Cicero, T.P. Builders, Inc., Thomas Paonessa, Cillis Builders, Inc., Theodore Cillis, III, Deraven Design & Drafting, Roxanne K. Heller, V.S. Sofia Engineering, Sofia Engineering, PLLC, Vincenzo S. Sofia, Defendants–Appellees.
• Court: U.S. Court of Appeals — Second Circuit

754 F.3d 95

James E. ZALEWSKI, Draftics, Ltd., Plaintiffs–Appellants,

v.CICERO BUILDER DEV., INC., Luigi Cicero, T.P. Builders, Inc., Thomas Paonessa, Cillis Builders, Inc., Theodore Cillis, III, Deraven Design & Drafting, Roxanne K. Heller, V.S. Sofia Engineering, Sofia Engineering, PLLC, Vincenzo S. Sofia, Defendants–Appellees.^*

Docket Nos. 12–3448–cv, 12–3450–cv, 12–5127–cv.

United States Court of Appeals,Second Circuit.

Argued: Jan. 15, 2014.

Decided: June 5, 2014.

Lee Palmateer, Lee Palmateer Law Office LLC, Albany, NY, for Plaintiffs–Appellants.

Paul C. Rapp, Monterey, MA, for Defendants–Appellees Cicero Builder Dev., Inc. and Luigi Cicero.

Autondria Minor (Arlen L. Olsen, on the brief), Schmeiser Olsen & Watts LLP, Latham, NY, for Defendants–Appellees T.P. Builders, Inc., and Thomas Paonessa.

George J. Szary, DeGraff, Foy & Kunz, Albany, NY, for Defendants–Appellees Cillis Builders, Inc., and Theodore Cillis, III.

Annette I. Kahler, (Susan E. Farley, on the brief), Heslin Rothenberg Farley & Mesiti, Albany, NY, for Defendants–Appellees DeRaven Design & Drafting and Roxanne K. Heller.

Kevin R. Van Duser, Sugarman Law Firm LLP, Syracuse, NY, for Defendants–Appellees V.S. Sofia Engineering, Sofia Engineering, PLLC, and Vincenzo S. Sofia.

Before KATZMANN, Chief Judge, WESLEY and LOHIER, Circuit Judges.

WESLEY, Circuit Judge:

This case calls on us to explore the limits of copyright protection for architectural works. Plaintiffs–Appellants are James Zalewski, an architect, and Draftics, Ltd., the company through which he does business (collectively “Zalewski” or “Plaintiff”). Zalewski asserts that he created and then licensed numerous designs for colonial homes to two construction companies.¹ He alleges that these companies and their contractors infringed his copyright in these designs by using them in ways the licenses did not permit and after the licenses had expired. Zalewski also asserts that Defendants' actions violated the Digital Millennium Copyright Act (“DMCA”). Defendants principally contend that their designs do not copy the protected elements of Plaintiff's designs.

The district court dismissed portions of Plaintiff's complaint and granted summary judgment to Defendants on the remaining claims. The court also granted two Defendants' motions for attorney's fees. Plaintiff now challenges the dismissal of his complaint, the grant of summary judgment to Defendants, the denial of summary judgment to him, and the award of attorney's fees. We AFFIRM the district court, in part, holding that (') any copying of Plaintiff's designs extended only to unprotected elements of his works, and (2) Plaintiff failed to plead a violation of the DMCA. We also VACATE, in part, holding that the district court applied the incorrect legal standard in awarding attorney's fees, and REMAND for the district court to apply the correct standard.

BACKGROUND

In the 1990s, Plaintiff James Zalewski was self-employed as an architect doing business through the firm Draftics, Ltd. During this period, he granted Defendants T.P. Builders (“T.P.”) ² and Cillis Builders (“Cillis”) ³ licenses to use several colonial home designs he had created. According to Zalewski, after the licenses expired, T.P. hired Defendant V.S. Sofia Engineering (“Sofia”) ⁴ and Defendant DeRaven Design & Drafting (“DeRaven”) ⁵ and Cillis hired DeRaven to customize his designs for their customers and continued marketing his designs, or customized versions thereof, without his consent. Defendant Cicero Builders (“Cicero”) ⁶ built two houses using DeRaven designs that were allegedly based on Plaintiff's originals.

Zalewski filed the first of these now consolidated actions in July 2010 in the United States District Court for the Northern District of New York, alleging that Defendants infringed the copyright in his original designs. Zalewski asserts that, in building the homes and customizing the designs, Defendants copied the overall size, shape, and silhouette of his designs as well as the placement of rooms, windows, doors, closets, stairs, and other architectural features. In addition to his copyright infringement claims, Zalewski asserts causes of action under the DMCA, which prohibits, among other things, “intentionally remov[ing] or alter[ing] any copyright management information.” 17 U.S.C. § 1202(b).

In his original complaint, Zalewski named as defendants the instant Appellees, along with numerous other defendants including other builders, engineers, architects, real estate agents, and owners of the purportedly infringing homes. Then, between September and December 2010, Zalewski voluntarily dismissed the vast majority of these defendants, and in October 2010, he filed a second amended complaint, naming only the instant Defendants. ⁷ The district court dismissed this complaint in August 2011 but granted leave to file a Third Amended Complaint—the operative complaint.

Following this final complaint, Defendants filed a number of motions to dismiss and motions for summary judgment, inter alia, on the ground that the designs they employed or created lacked substantial similarity with Zalewski's. Zalewski cross-moved for summary judgment. Over the next few months the district court sorted through the motions. After allowing some discovery, the court granted judgment to all remaining defendants and denied Zalewski's cross-motion for summary judgment. Still, the court permitted Zalewski to file a fourth amended complaint to more clearly state his DMCA claims. Zalewski passed on the offer and the district court entered final judgment in July 2012.

Finally, in November 2012, the court granted a motion by T.P. and Cicero for expenses and attorney's fees incurred defending against the first three complaints. Zalewski now challenges the partial dismissal of his complaint, the grant of summary judgment in favor of Defendants, the denial his motion for summary judgment, and the award of attorney's fees.

DISCUSSION

The Copyright Act, 17 U.S.C. §§ 101 et seq., provides a non-exhaustive list of categoriesof artistic works for which protection is available. The statute lists, for example, “sound recordings,” “pantomimes and choreographic works,” “pictorial, graphic and sculptural works,” and “literary works.” 17 U.S.C. § 102(a). When Congress passed the Copyright Act of 1976, architectural works were not among the listed categories, and it was not clear to what extent buildings or architectural plans could be copyrighted. William F. Patry, 2 Patry on Copyright § 3:109 (2014). In the 1980s, however, Congress started the lengthy process of updating the Copyright Act in order to join the Berne Convention, an international agreement that governs copyright protection. See generally7 Patry on Copyright § 23:45. Among other things, the Berne Convention requires signatory nations to protect architectural works. See2 Patry on Copyright § 3:107. Thus, the 1976 Act notwithstanding, the United States was compelled to clarify that architectural works are protectable under federal law. Id. To this end, Congress passed the Architectural Works Copyright Protection Act of 1990 and added “architectural works” to the list of protectable material. Id.

A. Copyright Infringement

In order to make out a claim of copyright infringement for an architectural work—or any work—a plaintiff must establish three things: 1) that his work is protected by a valid copyright, 2) that the defendant copied his work, and 3) that the copying was wrongful. See Arnstein v. Porter, 154 F.2d 464, 468, 472–73 (2d Cir.1946); Laureyssens v. Idea Grp., Inc., 964 F.2d 131, 139–41 (2d Cir.1992). The second and third elements—copying and wrongful copying—are often confused. This confusion is understandable; in many cases any copying of a work is wrongful, and thus there is often no need to draw the distinction.⁸ Nonetheless, the distinction can be important. Not every portion or aspect of a copyrighted work is given copyright law's protection. Copying these aspects of a work is not wrongful, and thus not all copying is wrongful.

An example is helpful. Suppose a particular law professor has never met any of my law clerks and has never read any of their numerous law review articles.⁹ If that professor independently composes a paragraph, which, by coincidence, is very similar to—or indeed identical with—a paragraph from one of their articles, the professor need not fear copyright liability. Even though the works are similar, the professor has not copied, and, therefore, element two of the infringement cause of action—actual copying—is not satisfied. Independent creation is a defense to copyright infringement. Folio Impressions, Inc. v. Byer Cal., 937 F.2d 759, 765–66 (2d Cir.1991).

Likewise, one of my clerk's articles may contain a lengthy quotation from a court opinion. The article is copyrighted, but the court opinion is in the public domain.¹⁰ A subsequent author may copy the language from the court opinion directly out of the article without infringing my clerk's copyright. This second author will have copied from my clerk, but not wrongfully. He took only what was in the public domain and therefore unprotected. See Arnstein, 154 F.2d at 472–73. In this example, element two—copying—is satisfied, but element three—wrongful copying—is not.

Confusion between elements two and three arises because a close similarity between two works is often relevant to proving both actual copying and wrongful copying. Obviously, if two paragraphs are identical, a reasonable inference is that the second paragraph was copied from the first. If the copied paragraph contains only protected material, then this similarity is also strong evidence that the copying was wrongful. Thus, in the first example above, the professor independently created a paragraph identical to my clerk's, but given the striking similarity between the paragraphs, we might be forgiven for thinking that the professor copied, and copied wrongfully.¹¹

When an original...