Imperial Residential Design, Inc. v. Palms Development Group, Inc., s. 93-2309
| Decision Date | 05 December 1995 |
| Docket Number | 93-2400 and 93-2672,Nos. 93-2309,s. 93-2309 |
| Citation | 70 F.3d 96 |
| Parties | 1995 Copr.L.Dec. P 27,452, 37 U.S.P.Q.2d 1157 IMPERIAL RESIDENTIAL DESIGN, INC., a Florida Corporation; Regal Classic Homes, Inc., Plaintiffs-Appellees, v. The PALMS DEVELOPMENT GROUP, INC., a Florida corporation; Earl Peck, Jr., Defendants-Appellants, Tony Camelo, d/b/a Tony Camelo and Associates, Defendant. IMPERIAL RESIDENTIAL DESIGN, INC., a Florida Corporation; Regal Classic Homes, Inc., Plaintiffs-Appellees, v. The PALMS DEVELOPMENT GROUP, INC., a Florida corporation; Earl Peck, Jr., Defendants, Tony Camelo, d/b/a Tony Camelo and Associates, Defendant-Appellant. |
| Court | U.S. Court of Appeals — Eleventh Circuit |
William B. Pringle, III, Orlando, FL, for Palms Development Group, Inc. and Earl Peck, Jr.
Michael K. Gray, Vero Beach, FL, for Tony Camelo.
Ava K. Doppelt, Allen, Dyer, Doppelt, Franjola & Milbrath, Orlando, FL, for appellees.
Appeals from the United States District Court for the Middle District of Florida.
Before HATCHETT and EDMONDSON, Circuit Judges, and MELTON *, Senior District Judge.
This action is a copyright infringement action brought by Regal Classic Homes as the alleged transferee of the ownership of copyright in a home design. Regal appeals the district court's order on remand that Regal lacked standing to sue defendants for copyright infringement. We reverse and remand.
In 1988, Michael McGuffie, president of Regal Classic Homes ("Regal"), a housing development company, met with residential designer Donald Wilson, the president of Imperial Residential Design ("Imperial"), and asked him to design floor plans for a model single-family home. The design was to be based on McGuffie's ideas derived from his experience with home buyers. Wilson drafted and completed plans for the "Regency" model in August 1988. Both Wilson and McGuffie testified that Wilson then orally transferred to Regal all his company's rights in the Regency design and that both believed that the Regency plan was the sole property of Regal. In March 1989, Regal opened the first Regency model and offered to the public printed brochures displaying the Regency format. Before that time, only contractors, subcontractors, or governmental entities had seen the inside of the Regency model or the brochures. The brochures contained no copyright notice.
In March or April 1990, McGuffie saw in his advance copy of the "Parade of Homes" magazine a floor design for the "Chateau," a model that was strikingly similar to the Regency design. The Chateau had been designed by Tony Camelo of Tony Camelo and Associates ("Camelo") for Palms Development Group ("P.D.G.") and Earl Peck, president of P.D.G. P.D.G. built and marketed several homes based on the Chateau design. As a result, McGuffie sought legal counsel; and, in April 1990, McGuffie and Wilson signed a written agreement that transferred to Regal all copyright rights in the Regency design (April Agreement). On April 17, 1990, Regal and Wilson registered the Regency copyright under the name of Regal Classic Homes, Inc.
In October 1990, Regal filed a complaint for copyright infringement against defendants P.D.G., Earl Peck, Jr., David Meixner, and Tony Camelo ("first action"). In the first action, Regal alleged that defendants made unauthorized copies of the Regency design and used it for their own profit by promoting it as their Chateau house plan. Defendants challenged Regal's basis for standing, arguing that, although the April Agreement transferred from Imperial to Regal "all rights," the agreement transferred no right to Regal to sue for copyright infringements that occurred before the April transfer. In response, on May 15, 1991, McGuffie and Wilson executed a second written agreement (May Agreement) which they claim memorialized Wilson's alleged October 1988 oral transfer agreement with McGuffie. The May Agreement specifically transferred to Regal all causes of action for prior infringements.
Following a bench trial in September 1991, the district court found that defendants Regal claimed that the May Agreement memorialized the 1988 oral transfer. The district court determined, however, that the April Agreement was the only agreement properly before the court. The district court explained that the introductory phrase in the April Agreement, "[t]he following when signed by you and by us, shall constitute our agreement," constituted a merger clause indicating that the parties intended the April Agreement to be the final embodiment of their agreement to transfer all rights in the Regency design. The district court held that the May Agreement, therefore, was parol evidence and refused to consider it. In addition, the district court noted that the May Agreement was not executed until after the complaint had been signed and filed. The court held, therefore, that Regal lacked standing to sue and dismissed the suit.
through the use of the Chateau design, had infringed the copyrighted Regency plan. The district court concluded, however, that Regal did not own the copyright in the Regency plan at the time the infringements occurred. The district court explained that, although Wilson transferred to Regal in the April Agreement the copyright in the Regency, the Agreement did not transfer rights to sue for prior infringements: the April Agreement did not establish that Regal obtained ownership of the copyright by the 1988 oral agreement or that the parties intended the April Agreement to memorialize the 1988 oral agreement. The district court also concluded that the parties intended to transfer the copyright in the Regency by written, rather than by oral, agreement, as evidenced by the Copyright Registration Certificate application.
Regal filed notice of appeal, and in December 1991, the district court issued an Amended Order clarifying its position for purposes of appeal. The court vacated its prior ruling that the May Agreement constituted parol evidence but held that the May Agreement was properly excluded because it had been executed after the suit was filed. On appeal Regal argued (1) that the district court erred in excluding the May Agreement; (2) that the district court erred in finding that the April Agreement included no right to sue for infringements occurring before execution of that agreement; and (3) that the district court erred in finding that the April Agreement did not memorialize the earlier oral agreement. We affirmed the district court's decision without opinion. Regal Homes v. Palms Development, 979 F.2d 213 (11th Cir.1992).
In May 1992, Regal, along with Imperial, again filed suit against defendants for copyright infringement of the Regency design and added a claim for violation of section 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a) (second action). 1 In the second action, Regal based standing to sue on the May Agreement. After several motions were filed by both parties, the district court excluded from evidence the May Agreement. Based on this ruling, defendants moved to dismiss Regal for lack of standing. The district court, however, denied the motion and allowed Regal to proceed. Because it had found in the first action that defendants had infringed the Regency copyright, the court submitted to the jury only the issue of damages. The jury awarded Regal $75,000 in damages and awarded Imperial $6000. Defendants filed six post judgment motions which were denied. Defendants then appealed the district court's decision.
On appeal, we acknowledged that Regal might have standing to sue as an exclusive licensee or beneficial owner but, finding this inconsistent with the district court's decision in the first action, remanded ...
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