Design Basics, LLC v. Forrester Wehrle Homes, Inc.
| Decision Date | 30 March 2018 |
| Docket Number | Case No. 3:15CV00666 |
| Parties | Design Basics, LLC, Plaintiff, v. Forrester Wehrle Homes, Inc., et al. Defendants. |
| Court | U.S. District Court — Northern District of Ohio |
This is a copyright-infringement case.
Plaintiff Design Basics LLC, (DB), creates and licenses architectural plans for single-family homes. It accuses defendants, the home building companies Forrester Wehrle Homes, Inc., and Wehrle Development, Ltd. (collectively, FWH) of copying, manufacturing and selling "three-dimensional infringing copies (houses)" of its copyright-protected designs. (Doc. 89, ID 3488).
Three motions are pending.
First is plaintiff's motion for summary judgment regarding: the validity of the copyrights at issue; its ownership of the copyrights; and defendants' alleged access to the protected works. (Doc. 83). Second is plaintiff's motion to exclude defense expert John Gugliotta's report, which FWH cites in response to DB's summary-judgment arguments. (Doc. 84). Defendants oppose both motions. (Docs. 87, 88).
Third is defendants' objection to an affidavit submitted by plaintiff's counsel, James Rogers, "the materials attached thereto," combined with a motion to strike "Plaintiff's argument based thereon." (Doc. 100, ID 4103). Plaintiff opposes the motion. (Doc. 104).
For the reasons below, I grant plaintiff's motion to exclude Gugliotta's report in part, and deny it in part, overrule defendants' objection to Rogers' affidavit and deny their motion to strike plaintiff's "argument based thereon" in its entirety, and grant plaintiff's motion for summary judgment in part, and deny it in part.
Before reaching the substance of DB's copyright claims, I resolve a threshold matter: determining exactly how many copyrighted design plans are at issue. DB's conflicting positions make this task harder than it should be.
Relying on the second amended complaint (see Doc. 58), I noted in previous orders that DB accused FWH of infringing its copyrights in twenty-three architectural design plans. See Design Basics, LLC v. Forrester Wehrle Homes, Inc., (Design Basics I), 2017 WL 5467152 (N.D. Ohio); Design Basics, Inc. v. Forrester Wehrle Homes, Inc., (Design Basics II), 2017 WL 5444569 (N.D. Ohio). They are: the "Kaiser," the "Kendall," the "Shannon," the "Sherburne," the "Newlin," the "Bermier," the "Tollefson," the "Monte Vista," the "Lancaster," the "Franklin," the "Harrisburg," the "Chandler," the "Galvin," the "Carrington," the "Paisley," the "Ambrose," the "Kincaid," the "Gabriel Bay," the "Tilmer's Run," the "Crimson Creek," the "Kirby Farms," the "Ashton" and the "Albany." (Doc. 58, ID 1222).
DB clarified that Counts I through VIII of its second amended complaint, alleging traditional copyright infringement claims, did not apply to the Ashton and Albany plans, which DB had licensed to FWH in 2014. (Doc. 58, ID 1226; Doc. 83-25, ID 3248).
Plaintiff did not, however, explicitly exclude the Ashton or the Albany from Count IX of the complaint, alleging a violation of the Digital Millennium Copyright Act (DMCA), 17 U.S.C. § 1201et seq., and claiming that defendants "intentionally removed and omitted DB's copyright . . . information from copies of DB's works"-an act that could violate the DMCA notwithstanding a valid license. See 17 U.S.C. § 1202(b)(1). I therefore inferred that Count IX included a claim related to these two designs-a supposition plaintiff later confirmed in its brief opposing defendants' motion for summary judgment on substantial similarity. (See Doc.118).
To succeed on a DMCA claim, however, a copyright holder still bears the burden of proving two of the elements essential to a traditional copyright infringement claim: (1) that it owns the copyright; and (2) that the defendant had access to it. See 17 U.S.C. § 1202(b)(1) (); see also Granger v. Dethlefs, 2014 WL 2475979, *6-7 (E.D. Pa.) (); Design Basics, LLC v. Lexington Homes, Inc., 2016 WL 8116897, *5 (E.D. Wis.) ().
And at present, DB does not move for summary judgment on its ownership of a copyright in, or defendants' access to, the Ashton or the Albany.
DB "moves for summary judgment on . . . Plaintiff's ownership of the valid copyrights in the 21 works at issue," rather than the twenty-three works it named in the second amended complaint. (Doc. 83-1, ID 2861 (emphasis omitted)). Plaintiff did not submit certificates of copyrightregistration or deposit materials for the Ashton or the Albany as exhibits to its motion,1 and did not include them among its list of the twenty-one designs "at issue." (Id. at 2860). Thus, to the extent DB had intended to raise any arguments concerning its ownership of, and FWH's access to, the Ashton or the Albany, plaintiff waived them by failing to discuss them in its principal summary-judgment brief. See Scottsdale Ins. Co. v. Flowers, 513 F.3d 546, 553 (6th Cir. 2008).
DB's counsel evidently caught this mistake when drafting plaintiff's reply. There, plaintiff asserts that it owns "valid copyrights in the twenty-three (23) architectural works at issue," and contends defendants had access to all of them, bringing the Ashton and the Albany back into the mix. (Doc. 98, ID 3751, 3768 (emphasis added)). That it cannot do.
A reply is a not a vehicle for DB to correct the omissions in its initial brief. Hunt v. Big Lots, Inc., 244 F.R.D. 394, 397 (N.D. Ohio 2007). "[R]eply briefs reply to arguments made in the response brief-they do not provide the moving party with a new opportunity to present yet another issue for the court's consideration." Scottsdale, 513 F.3d at 553 (quoting NovoSteel SA v. Untied States, 284 F.3d 1261, 1274 (Fed. Cir. 2002)). "As a matter of litigation fairness and procedure, then," I treat issues raised for the first time on reply "as waived." Id. (quoting NovoSteel, 248 F.3d at 1274); see also Hunt, 244 F.R.D. at 397.
Accordingly, because plaintiff waived its arguments concerning the Ashton and the Albany, I deny DB's motion for summary judgment on ownership and access insofar as it relates to these designs.
Further, because I have already dismissed DB's claims concerning defendants' alleged infringement of plaintiff's Kincaid, Bermier, and Paisley designs (Doc. 129, ID 4950), my analysis herein concerns only the eighteen remaining designs still at issue.
A second threshold matter is whether, and to what extent, I may consider certain expert testimony in resolving plaintiff's arguments concerning validity, ownership, and access.
In an earlier order, I granted plaintiff's motion to exclude defense expert Richard Kraly's initial report insofar as it expressed legal opinions characterizing DB's designs as too unoriginal to warrant copyright protection. Defendants evidently assumed first, that I required witness advice on matters of copyright law, and second, that Kraly, an architect with no legal education or training, was somehow qualified to provide it. See Design Basics I, 2017 WL 5467152 at *4 (citation omitted).
This time, they rely on an actual attorney.
Specifically, in opposing DB's summary judgment motion, FWH offers an expert report penned by John Gugliotta, Esq., a lawyer defendants bill as "an expert in . . .copyright law." (Doc. 88-1, ID 3438).
"Admittedly," at the summary judgment stage, the "parties are not required to submit evidence . . . in a 'form that would be admissible at trial.'" Shazor v. Prof. Transit Mgmt., Ltd., 744 F.3d 948, 960 (6th Cir. 2014) (quoting Celotex Corp. v. Catrett, 477 U.S. 317, 324 (1986)). But their materials "must still comport with the rules of evidence"-including those governing expert testimony. Id.; see also Fed. R. Civ. P. 56(c)(2) ().
I have already explained that "I have an independent 'gatekeeping' duty to ensure that experttestimony is admissible under Fed. R. Evid. 702." Design Basics I, 2017 WL 5467152 at *4 (citing Kuhmo Tire v. Carmichael, 526 U.S. 137, 147 (1999)). "That duty includes maintaining 'vigilant' guard against expert testimony that 'embraces actual legal conclusions.'" Id. (). "Generally, an expert may not state his or her opinion as to legal standards nor may he or she state legal conclusions drawn by applying the law to the facts." United States v. Gordon, 493 F. App'x 617, 626-27 (6th Cir. 2012) (citation omitted).
Gugliotta goes out of his way to do both.
First, Gugliotta opines that five of DB's designs are "ineligible for copyright protection as a matter of law" based on their dates of creation. As for the others, he explains that "Plaintiff does not have any claim of infringement for an architectural work" and "Plaintiff's allegations of copyright infringement . . . fail[] to sufficiently plead the nature of the copyrighted material." (Doc. 88-1, ID 3459-3465, 3468).
Gugliotta also repeats Kraly's assertion that DB's "works are not copyrightable because there are no original design elements present." (Id. at 3468 (citing Kraly report)). I previously excluded this portion of Kraly's report because Kraly's "belief that DB's designs do not merit copyright protection is a legal conclusion-and a subject on which I 'do not need the judgment of witnesses.'"Design Basics I, 2017 WL 5467152 at *4 (qu...
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