Johnson v. Jones
| Decision Date | 21 July 1998 |
| Docket Number | Nos. 96-1580,96-1657,s. 96-1580 |
| Citation | 149 F.3d 494,47 U.S.P.Q.2d 1481 |
| Parties | 1998 Copr.L.Dec. P 27,799 Douglas A. JOHNSON, doing business as Douglas Johnson & Associates, Inc.; Professional Management Co., Plaintiffs-Appellees/Cross-Appellants, v. Theresa C. JONES; John C. Uznis; Uznis Deneweth Co., Defendants, Daniel A. Tosch; Progressive Associates, Inc., Individually, Jointly and Severally, Defendants-Appellants/Cross-Appellees. |
| Court | U.S. Court of Appeals — Sixth Circuit |
Christopher G. Manolis (argued and briefed), Richard P. Smith (briefed), Blake, Kirchner, Symonds, MacFarlane, Larson & Smith, Detroit, Michigan, for Defendants-Appellants/Cross-Appellees.
Douglas P. LaLone (argued and briefed), Bernard J. Cantor (briefed), Harness, Dickey & Pierce, Troy, Michigan, for Plaintiffs-Appellees/Cross-Appellants.
Carl J. Jarboe, Abbott, Nicholson, Quilter, Esshaki & Youngblood, Detroit, Michigan, for Defendant Jones.
Before: MERRITT, BATCHELDER, and FARRIS, * Circuit Judges.
Plaintiff Douglas Johnson, an architect, brought this suit alleging, inter alia, that his architectural drawings were altered and used without his permission in violation of the Copyright Act, 17 U.S.C. §§ 102(a)(5) and (8), and the Lanham Act, 15 U.S.C. § 1125(a). Johnson brought his copyright infringement and false designation of origin claims against Defendants Theresa Jones, Daniel Tosch, Progressive Associates, Inc., John C. Uznis, and Uznis Denewith Co. In addition, Johnson's complaint alleged breach of contract and/or unjust enrichment for work done by Johnson, for which he was never paid.
The district court granted summary judgment in favor of Jones, Uznis, and Uznis Denewith on Johnson's Lanham Act claim, but after a bench trial, found Uznis, Tosch, Progressive Associates, and Uznis Denewith jointly and severally liable in the amount of $107,125 ($104,625 profit by Uznis and $2,500 profit by Tosch) for willful infringement of Johnson's copyrighted architectural drawings. The district court, however, awarded neither attorney's fees nor statutory damages under the Copyright Act. In addition, the district court found Tosch liable for the Lanham Act violation, but chose not to award damages because such an award would be duplicative of damages already awarded for the copyright infringement. The district court did, however, order Tosch to pay Johnson's attorney's fees under the Lanham Act, because his violation of the Act had been willful and deliberate.
Although the district court found Jones not to be liable for copyright infringement, it did find her liable for breach of implied contract (quantum meruit ). Consequently, the district court ordered Jones to pay damages in the amount of $19,966.98, which it determined to be the reasonable value of Johnson's services.
Each defendant filed a timely notice of appeal. In turn, Johnson filed a timely notice of cross-appeal as to: (1) the district court's computation of damages on his copyright claims, (2) the district court's decision not to award him statutory damages or attorney's fees under the Copyright Act, and (3) the district court's decision not to award Johnson actual damages, in addition to profits, for the copyright infringement. Jones, Uznis, and Uznis Denewith have since voluntarily dismissed their appeals, pursuant to FED. R.APP. P. 42(b), leaving only Tosch and Progressive Associates to appeal the district court's ruling as to copyright infringement and false designation of origin.
We now affirm the district court in every respect but one. Because the district court failed to award Johnson Tosch's gross revenue, as required by § 504(b) of the Copyright Act, we reverse and remand so that the district court can order an award that includes Tosch's gross revenue.
Douglas Johnson, whose principal place of business is in Rochester Hills, Michigan, is licensed as an architect in Michigan, Arizona, and Maryland, and as a builder in Michigan. Defendant-Appellant Daniel Tosch, also licensed in Michigan, has been an architect since 1971 and is the owner of Defendant-Appellant, Progressive Associates, Inc. Defendant John C. Uznis is a licensed builder, and owner of Defendant Uznis Denewith Co. Defendant Theresa Jones is, in addition to being an ex-nun and a Ph.D., an experienced business woman who owns and operates a large automobile dealership.
This case arises out of Jones' desire to build her "dream house," complete with "1) a large sitting room outside the master bedroom; 2) a large kitchen with two sitting rooms, one for adults and the other for children; 3) 'his and hers' large walk-in closets in the master bedroom; 4) an exercise room; 5) children's bedrooms on the same floor as the master bedroom; 6) master bath with fireplace; 7) large entertainment room which could comfortably held [sic] 125 people; 8) a 'Superbowl;' party room; 9) a game room; 10) a six-car garage; and 11) a 'spectacular' spiral staircase from the foyer."
To that end, Jones first met with Johnson in July of 1993 and conveyed to him her idea to buy a house located at 1100 Orchard Ridge Road, in Bloomfield Hills, Michigan, which, with his help, she would turn into her dream home. Jones wanted the house ready by December 1994. Although Johnson promptly began working on this project, he and Jones were never able to agree on the terms of a contract. In fact, it was the delay caused by the prolonged contract negotiations that eventually caused Jones to fire Johnson and hire another architect and builder.
On July 15, 1993, Johnson presented Jones with the first contract, a standard American Institute of Architecture ("AIA") contract entitled, "Abbreviated Form of Agreement Between Owner and Architect." The AIA contract specifically provided, in article 6, section 6.1, that the architect shall be deemed author of the documents and other drawings prepared with respect to the project and shall retain all rights to said documents including copyrights. Section 6.1 further provided that the copyrighted drawings "shall not be used by the owner or others on other projects, for additions to this Project or for completion of this Project by others, unless the architect is adjudged to be in default under this agreement, except by agreement in writing with appropriate compensation to the Architect." (emphasis added).
Jones had not yet purchased the house on Orchard Ridge Road, but she was anxious to get the project moving. So, she asked Johnson to recommend a surveyor to do the mortgage and topographical survey of the property. During this time, Johnson had also begun working on a design for the house. Subsequently, on July 25, 1993, Johnson delivered to Jones his "Design Development Program," which outlined the necessary additions to, and remodeling of, the house. At that meeting, Johnson had expected to pick up a signed copy of the AIA contract, but was informed by Jones that her lawyer had not yet reviewed it. Nevertheless, Jones made it clear that she wanted Johnson to continue working. Johnson, therefore, continued working on the project under the assumption that Jones would eventually sign the contract he had given to her.
At a meeting on August 10, 1993, Jones asked Johnson to serve as the contractor in charge of the renovation. Johnson agreed to do the job, but informed Jones that he would have to supply her with a different contract that specifically covered "design/build" projects such as this. Shortly thereafter, Johnson delivered to Jones the second contract, an AIA contract entitled "Standard Form Agreements Between Owner and Design/Builder." Like the first contract, the second contract also contained a specific provision relating to ownership of the architectural drawings. The provision stated:
(emphasis added).
After this meeting, Johnson began working on floor plans, as well as demolition plans and plans for the additions to the house. The demolition drawings, addition drawings, and site plan were all submitted to the City of Bloomfield Hills for approval.
On September 24, 1993, a meeting was scheduled between Johnson and Jones, at which Johnson expected Jones to sign the second contract. When he arrived, however, Johnson was told that Jones' lawyer, Timothy Stoepker, would be joining them. Stoepker explained that he was bringing in Tosch to work as Jones' "construction agent" to ensure that the house was being built properly. Stoepker further informed Johnson that Jones would not be signing the second AIA contract. Instead, Stoepker intended to write a new contract for the project. Despite the fact that no contract had yet been signed, Johnson was told to continue working on the project. Apparently, Jones wanted to avoid any weather related delays which could threaten the desired December 1994 completion date.
Five days later, Stoepker sent the third contract to Jones. This contract contained several new provisions, including one providing that "[u]pon payment by the Owner to the builder for the architectural drawings and specifications, the same shall be owned by the Owner." Stoepker met with Johnson sometime in October to discuss the third contract. Johnson expressed numerous concerns and, according to Stoepker's testimony, the two of them worked out a revised language for the contract.
Specifically, Johnson and Jones allegedly came to an agreement about the distribution of ownership rights in the architectural drawings after the completion of the project. Pursuant to...
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