A Commonwealth Architects v. Rule Joy Trammell + Rubio Llc.

• Citation: 716 F.Supp.2d 428
• Decision Date: 03 June 2010
• Docket Number: Civil Action No. 3:09cv358.
• Parties: The HARVESTER, INC., d/b/a Commonwealth Architects, Plaintiff, v. RULE JOY TRAMMELL + RUBIO, LLC, Defendant.
• Court: U.S. District Court — Eastern District of Virginia

716 F.Supp.2d 428

The HARVESTER, INC., d/b/a Commonwealth Architects, Plaintiff,

v.RULE JOY TRAMMELL + RUBIO, LLC, Defendant.

Civil Action No. 3:09cv358.

United States District Court,E.D. Virginia,

Richmond Division.

June 3, 2010.

Sean Michael Golden, Jerrell E. Williams, Vandeventer Black LLP, Richmond, VA, for Plaintiff.

John Franklin, III, Christopher John Wiemken, Taylor & Walker PC, Norfolk, VA, for Defendant.

MEMORANDUM OPINION

(Denying Defendant's Motion for Summary Judgment)

HENRY E. HUDSON, District Judge.

This is an action brought under the Copyright Act, 17 U.S.C. § 101, et seq. Plaintiff, Commonwealth Architects (“Commonwealth”), alleges that Defendant, Rule Joy Trammell + Rubio, LLC (“Rule Joy”), infringed its copyright held in a set of several architectural drawings. The matter is before the Court on a Motion for Summary Judgment by Rule Joy. Both parties submitted initial memoranda, and, pursuant to the Court's Order of March 5, 2010, additional memoranda in support of their respective positions. The Court will dispense with oral argument because the facts and legal contentions are adequately presented in the materials presently before the Court and argument would not aid in the decisional process. For the reasons stated herein, Rule Joy's motion is denied.

I. IntroductionA. Factual Background

The John Marshall Hotel (“the Hotel”), located in Richmond, Virginia, was designed in 1928 by Marcellus Wright. Over time, various changes and additions were made to the original design of the Hotel, most notably in 1955, 1962, and 1978. In 2004, John Marshall Residence, LLC (“JM Residence”) proposed renovating the Hotel into condominium units and entered into an agreement with Commonwealth to provide architectural services for the project. JM Residence, however, abandoned the project and did not pay Commonwealth for most of its services. ¹

A separate entity, John Marshall Building, LLC (“JM Building”), initiated a new project for the Hotel and contracted with Commonwealth in March 2008 for architectural services to include preparation of as-built documents, schematic design, and design development to adapt the Hotel to apartment living and street level retail space. These services are known as “Phase 1” services. Commonwealth issued design development drawings termed “Instruments of Service” on June 30, 2008 and applied for copyright registration of these drawings on the same day. Commonwealth was issued a copyright registration effective May 4, 2009 for the architectural drawings. The copyright registration indicates that the drawings were registered as “architectural work [s],” ² and it notes that the “[p]reexisting architectural work”-the existing Hotel, as designed by Marcellus Wright and the subsequent renovating architects-was “[m]aterial excluded” from Commonwealth's copyright, while the “[n]ew and revised architectural work” created by Commonwealth is “included” in Commonwealth's copyright.

Due to unexpected economic conditions in 2008, financing for JM Building's project changed, requiring a reduction in costs for the project to proceed, particularly with respect to “Phase 2” services that would include the creation of construction documents, as well as construction contract administration services. JM Building also became delinquent in certain payments owed to Commonwealth. As a result, Commonwealth refused to negotiate a reduction of its fees and revoked the non-exclusive license to use and reproduce Commonwealth's Instruments of Service that it had allowed JM Building. Accordingly, JM Building did not contract with Commonwealth to provide Phase 2 services; instead, JM Building sought out the services of Rule Joy.

In November 2008, JM Building delivered to Rule Joy the historic drawings of the Hotel from the 1928 original design, as well as drawings from the three major renovations in 1955, 1962, and 1978. In addition to these historic drawings, JM Building delivered Rule Joy the design development drawings issued by Commonwealth. ³ Based on the combination of drawings provided, Rule Joy performed an initial assessment of the proposed project, JM Building's program requirements, ⁴ and JM Building's budget in order to prepare a proposal for architectural services. Rule Joy's initial proposal to JM Building was for Phase 2 services contingent upon the ability of Rule Joy to use Commonwealth's design development drawings to prepare construction drawings under a license from Commonwealth. This initial proposal was rejected by JM Building, however, and JM Building advised Rule Joy that it likely could not obtain a license from Commonwealth. Rule Joy then submitted a revised proposal to JM Building that was accepted in an agreement dated December 5, 2008, whereby JM Building retained Rule Joy to provide architectural, interior design, and engineering services for the Hotel project.

The agreement required Rule Joy to create demolition documents, schematic design, design development and construction documents while complying with applicable regulations for historic preservation and building codes. As was Commonwealth, Rule Joy was tasked by JM Building with returning the Hotel to the look and feel of the original 1928 Marcellus Wright design, while also adapting it for the modern use of apartment living and retail services. JM Building specified the number, size and type of apartment units and approximate size of retail space that it wanted Rule Joy to include in its design. ⁵ JM Building further charged Rule Joy with preparing a design to increase the rentable space from that designed by Commonwealth and reduce the construction costs by approximately $3,000,000.00.

JM Building was under a compressed schedule to produce completed drawings in compliance with the financing requirements of HUD and, therefore, demanded an accelerated schedule for Rule Joy to prepare its design documents. Due to the compressed schedule, Rule Joy formed two teams of architects, one to document, measure, record and draw existing conditions at the Hotel, and another to prepare a schematic design for the project. In preparing their own drawings, Rule Joy admits to having occasionally referred back to Commonwealth's drawings (1) as a “benchmark” and (2) to avoid infringing on any of Commonwealth's “protectable design items.” To allow for electronic access to Commonwealth's Drawings, Rule Joy commissioned a professional scanning service, Diazo Printing, to scan Commonwealth's architectural drawings into “.PDF” files and then upload the electronic copies to Rule Joy's “File Transfer Protocol” website. After spending some 6,000 hours developing its set of drawings, Rule Joy made its schematic design presentation to JM Building, including the proposed layout of all residential and public spaces, on January 29, 2009.

Rule Joy then produced its design development set of drawings, or first pricing set, on March 4, 2009, a pricing set of drawings on April 1, 2009, demolition and building permit sets on May 15, 2009, an issue for HUD review on June 30, 2009, and an issue for construction on August 24, 2009, in addition to other intermediate issuances. The layout proposed by Rule Joy provides more rental units (238 vs. 232), more rentable apartment space (an additional 5,000 square feet), and more street-front retail square footage than Commonwealth's layout. Rule Joy's design is also estimated by the general contractor to cost approximately $2,000,000.00 less to build than Commonwealth's design.

B. Procedural Background

Commonwealth filed its initial Complaint on June 5, 2009 naming only Rule Joy as a defendant and seeking damages and injunctive relief under the Copyright Act and the Lanham Act (Docket No. 1). On August 11, 2009, Commonwealth filed a motion for preliminary injunction (Docket No. 9), and on October 9, 2009, JM Building filed a motion to intervene as a defendant (Docket No. 20). The Court held a hearing on these two motions on October 15, 2009 to address concerns over jurisdiction and principles of federalism and comity, and the Court allowed the parties twenty days to make proper amendments to their pleadings. See Order of October 16, 2009 (Docket No. 25). On October 29, 2009, Commonwealth filed its Amended Complaint against Rule Joy in which it sought damages and injunctive relief under only the Copyright Act (Docket No. 29). JM Building filed an Amended Motion to Intervene on November 5, 2009 (Docket No. 33), and the Court granted JM Building's amended motion to intervene on November 19, 2009 (Docket No. 38). Rule Joy then filed the instant motion for summary judgment on December 22, 2009 (Docket No. 39). Commonwealth responded (Docket No. 46), and Rule Joy replied (Docket No. 50), but the Court believed additional briefing was necessary and ordered the parties to file supplemental briefs on the relevant legal issues (Docket No. 51). The appropriate supplemental briefs were filed timely (Docket Nos. 57, 58, 64, and 65).

Just prior to the close of the additional briefing period, Commonwealth moved to withdraw its motion for preliminary injunction (Docket No. 61), and the Court granted the withdrawal motion, terminating Commonwealth's motion for preliminary injunction as withdrawn on March 31, 2010 (Docket No. 63). Additionally, Commonwealth voluntarily withdrew both its temporary and final injunction requests by way of an Agreed Order entered April 27, 2010 (Docket No. 75), and JM Building was dismissed as a defendant from this litigation in a separate Agreed Order also entered on April 27, 2010 (Docket No. 76). Accordingly, all that remains of this suit is Commonwealth's copyright infringement claim against Rule Joy seeking exclusively monetary damages. Rule Joy has moved the Court for summary judgment as to this claim pursuant to Rule 56 of the Federal Rules of Civil Procedure, seeking full costs and reasonable attorney's fees pursuant to 17 U.S.C. § 505. This matter, initially before the ...