Dominick R. Pilla, Architecture-Eng'g P.C. v. Gilat
| Decision Date | 19 March 2020 |
| Docket Number | No. 19-CV-2255 (KMK),19-CV-2255 (KMK) |
| Parties | DOMINICK R. PILLA, ARCHITECTURE-ENGINEERING P.C., doing business as each of Dominic R. Pilla Associates, PC, DRPILLA Associates, PC, DRPILLA Consulting Engineers, and/or Dominick R. Pilla, Plaintiff, v. ORLY GILAT and W 108 DEVELOPMENT LLC, Defendants. |
| Court | U.S. District Court — Southern District of New York |
Appearances:
Benjamin M. Rattner, Esq.
Michael R. Wood, Esq.
Ceremele & Wood LLP
White Plains, NY
Kevin P. Mulry, Esq.
Hamutal Lieberman, Esq.
Farrell Fritz, P.C.
Uniondale, NY and New York, NY
Plaintiff Dominick R. Pilla, Architecture-Engineering P.C. ("Plaintiff") brings this Action against Orly Gilat ("Gilat") and W 108 Development LLC ("W 108"; with Gilat, "Defendants"), alleging copyright infringement under 17 U.S.C. § 101, et seq. (the "Copyright Act"), false designation of origin under 15 U.S.C. § 1051, et seq. (the "Lanham Act"), and violations of 17 U.S.C. § 1202 (the "Digital Millennium Copyright Act," or "DMCA"). Before the Court is Defendants' Motion To Dismiss (the "Motion"), pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure. (Not. of Mot. (Dkt. No. 22).) For the reasons explained herein, Defendants' Motion is granted in part and denied in part.
The following facts are drawn from Plaintiff's Complaint, documents appended to the Complaint, and other matters of which the Court may take judicial notice, and are taken as true for purposes of the instant Motion.1
Plaintiff is a New York-based corporation that provides "professional architectural services to various construction projects." (Compl. ¶¶ 4, 12.) W 108 is a New York-based limited liability company of which Gilat is an agent and principal, and is the owner of a "luxury construction project" at 324-326 West 108th Street in New York City (the "Project"). (Id. ¶¶ 1, 6-8.) The Project involves the renovations of two existing five-story buildings and a sixth-story addition to the buildings. (Id. ¶ 13.)
Plaintiff previously provided architectural services to Defendants in connection with the Project. (Id. ¶ 12.) In this role, Plaintiff created two sets of architectural drawings, titled the "W 108 Development 324-326 West 108th Street Plan Set" and the "W 108 Development 324-326 West 108th Street Plan Set 2" (collectively, "Plaintiff's Designs"), which it submitted to the United States Copyright Office (the "Copyright Office") in around 2016 to apply to register for acopyright. (Id. ¶¶ 1-2, 14.) Plaintiff created the Designs and submitted its copyright application at Defendants' "insistence and request." (Id. ¶ 14.) On September 12 and 16, 2016, the Copyright Office issued two Certificates of Copyright Registration (the "Certificates") for Plaintiff's Designs. The Certificates state that Plaintiff is the author, "Copyright Claimant," and organization with "[r]ights and [p]ermissions" with respect to the Designs. (Id. at 2-4.)2 The Certificates set forth that "new architectural work and revised architectural work" are included in the copyright claims, but "preexisting building design" is not. (Id. at 4.) According to Plaintiff, Defendants "were aware at all times" that the copyright for Plaintiff's Designs belonged to Plaintiff. (Compl. ¶ 17.)
Plaintiff began to implement its plans for the Project, but in approximately 2017, Defendants copied Plaintiff's Designs without receiving prior approval from Plaintiff. (Id. ¶ 20.) In approximately December 2017, Defendants submitted "illegal copies" of Plaintiff's Designs to the New York City Department of Buildings (the "DOB"). (Id. ¶¶ 20, 30.) In particular, Defendants submitted to the DOB a "cover sheet drawing list and accompanying [blue]prints" that were copied from the Designs. (Id. ¶ 30.) According to Plaintiff, Defendants represented to the DOB that the submitted drawings were their own, and Gilat "intentionally removed [Plaintiff's] name and [the] notice of copyright" from the original designs. (Id. ¶¶ 20, 45.) After making this submission, Defendants continued to work on the Project using designs or drawings "that were illegally copied [from Plaintiff's] . . . Designs," (id. ¶ 21), and may have "used, distributed, marketed, or displayed" Plaintiff's Designs for other construction projects, (id. ¶ 32).
On March 12, 2019, Plaintiff filed the Complaint, (Dkt. No. 1), which was subsequently re-filed the following day due to filing issues, (Dkt. No. 7). After receiving two extensions from the Court to respond to the Complaint, (Dkt. Nos. 13, 15), Defendants sought to file a motion to dismiss, (Dkt. No. 17). After receiving leave from the Court at a Pre-Motion Conference, (see Dkt. (minute entry for July 31, 2019); Dkt. No. 21), Defendants submitted the instant Motion on August 22, 2019, Mem. of Law in Supp. of Mot. ( ) (Dkt. No. 24).) Thereafter, the Parties requested an extension of the briefing schedule, (Dkt. No. 26), and Plaintiff filed its response in opposition to the Motion on September 24, 2019, (Pl.'s Mem. of Law in Opp'n to Mot. ("Pl.'s Mem.") (Dkt. No. 27)). On October 8, 2019, Defendants submitted their Reply. (Defs.' Reply Mem. of Law in Supp. of Mot. ( ) (Dkt. No. 28); Reply Decl. of Kevin P. Mulry, Esq. in Supp. of Mot. ("Mulry Reply Decl.")
Defendants argue that the Complaint should be dismissed because Plaintiff fails to state claims for (1) copyright infringement, due to the fact that Plaintiff's Designs and the renderings submitted to the DOB by Defendants are not substantially similar, (Defs.' Mem. 4-17); (2) false designation of origin because § 43(a) of the Lanham Act does not cover architectural drawings, (id. at 17-20); and (3) violations of the DMCA because Plaintiff insufficiently alleges that Defendants removed Plaintiff's copyright management information ("CMI") from the drawings, (id. at 20-21). Defendants also seek costs and reasonable attorney's fees. (Id. at 21-22.)
The Supreme Court has held that although a complaint "does not need detailed factual allegations" to survive a motion to dismiss, "a plaintiff's obligation to provide the grounds of his [or her] entitlement to relief requires more than labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do." Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007) (alteration and quotation marks omitted). Indeed, Rule 8 of the Federal Rules of Civil Procedure "demands more than an unadorned, the-defendant-unlawfully-harmed-me accusation." Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). "Nor does a complaint suffice if it tenders naked assertions devoid of further factual enhancement." Id. (alteration and quotation marks omitted). Rather, a complaint's "[f]actual allegations must be enough to raise a right to relief above the speculative level." Twombly, 550 U.S. at 555. Although "once a claim has been stated adequately, it may be supported by showing any set of facts consistent with the allegations in the complaint," id. at 563, and a plaintiff must allege "only enough facts to state a claim to relief that is plausible on its face," id. at 570, if a plaintiff has not "nudged [her] claims across the line from conceivable to plausible, the[] complaint must be dismissed," id.; see also Iqbal, 556 U.S. at 679 ( ; id. at 678-79 ().
"[W]hen ruling on a defendant's motion to dismiss, a judge must accept as true all of the factual allegations contained in the complaint," Erickson v. Pardus, 551 U.S. 89, 94 (2007), and "draw[] all reasonable inferences in favor of the plaintiff," Daniel v. T & M Prot. Res., Inc., 992 F. Supp. 2d 302, 304 n.1 (S.D.N.Y. 2014) (citing Koch v. Christie's Int'l PLC, 699 F.3d 141, 145 (2d Cir. 2012)). Additionally, "[i]n adjudicating a Rule 12(b)(6) motion, a district court must confine its consideration to facts stated on the face of the complaint, in documents appended to the complaint or incorporated in the complaint by reference, and to matters of which judicial notice may be taken." Leonard F. v. Isr. Disc. Bank of N.Y., 199 F.3d 99, 107 (2d Cir. 1999) (quotation marks omitted); see also Wang v. Palmisano, 157 F. Supp. 3d 306, 317 (S.D.N.Y. 2016) (same).
As a threshold matter, the Court considers whether exhibits submitted by Defendants in support of their Motion may be considered in this Opinion. Defendants filed several exhibits along with the instant Motion and with their Reply, and also included several visual aids in their Memorandum. (See Defs.' Mem.; Mulry Decl.; Mulry Reply Decl.) Exhibit A to the Declaration of Kevin P. Mulry, Esq. in Support of the Motion (the "Mulry Declaration") is a copy of Plaintiff's Complaint, which is, of course, properly considered in connection with Defendants' Motion. (See Mulry Decl. Ex. A (Dkt. No. 23-1).) Exhibit B to the Mulry Declaration includes "true and correct copi[es] of Defendants' architectural drawings" that were filed with the DOB on January...
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