John G. Danielson v. Winchester-Conant Properties

Decision Date27 February 2002
Docket NumberNo. Civ.A.00-11021-WGY.,Civ.A.00-11021-WGY.
Citation186 F.Supp.2d 1
PartiesJOHN G. DANIELSON, INC., Plaintiff, v. WINCHESTER-CONANT PROPERTIES, INC. and the Willows at Winchester, LLC, Defendants.
CourtU.S. District Court — District of Massachusetts

Anthony E. Battelle, Brookline, MA, for plaintiff.

Judith Ashton, Davis, Malm & D'Agostine, P.C., Boston, MA, for defendants.

MEMORANDUM

YOUNG, Chief Judge.

John G. Danielson, Inc. ("Danielson"), an architectural firm located in Lexington Massachusetts, brings this action against Winchester-Conant Properties, Inc. ("Winchester-Conant") and The Willows at Winchester, LLC ("Willows LLC") (collectively "Winchester-Willows"), for copyright infringement under the Copyright Act, 17 U.S.C. § 101 et seq. (Count I), conversion (Count II), false designation or description of origin under the Lanham Act, 15 U.S.C. § 1125(a) (Count III), and unfair and deceptive trade practices under Chapter 93A of the Massachusetts General Laws (Count IV). Danielson's claims arise out of Winchester-Willows's alleged use, without Danielson's permission, of architectural plans drafted by or under the supervision of Danielson for a condominium project called the Willows at Winchester in Winchester, Massachusetts. Winchester-Willows moved for summary judgment on all counts. Danielson cross-moved for partial summary judgment on the copyright infringement, false designation or description of origin, and 93A claims. (Danielson would leave for trial the conversion claim and the issue of damages.)

On November 14, 2001, the parties argued these motions for summary judgment, and the Court took the motions under advisement. On February 8, 2002, in the interest of allowing the parties adequately to prepare for trial, the Court announced its conclusions of law:

1. Architectural drawings are amenable to copyright protection under the law as it existed at the time the drawings at issue in this case were created.

2. The particular architectural drawings at issue here are sufficiently original to warrant copyright protection.

3. Danielson has standing to pursue this case as the owner of the copyright interests embedded in the drawings. The June 29, 1987 contract between Danielson and Tellalian Associates ("Tellalian") effected a transfer of copyright from the author of the drawings, Tellalian, to Danielson. Such a transfer satisfies the statute of frauds provision of 17 U.S.C. § 204. Even if it did not, the absence of a dispute between Tellalian and Danielson as to Danielson's ownership of the copyright interests in the drawings bars Winchester-Willows from attacking the validity of the transfer.

4. There is no genuine dispute as to the fact that Winchester-Willows infringed Danielson's copyright. Winchester-Willows do not deny that they had access to the drawings at issue here. A comparison of the copyrighted drawings with the allegedly infringing drawings shows that no reasonable trier of fact could find other than that the allegedly infringing drawings are substantially similar to the copyrighted drawings.

5. The fact that Medford Engineering ("Medford"), and not Winchester-Willows, did the actual copying of the copyrighted drawings does not excuse Winchester-Willows from liability for infringement.

6. As matter of law, Danielson did not publish the drawings at issue here.

7. As matter of law, Danielson did not grant an implied nonexclusive license to Winchester-Willows.

8. The doctrine of merger does not apply to this case.

9. As matter of law, Danielson did not abandon its copyright interests in the drawings at issue here.

10. A genuine issue of material fact remains as to whether Danielson knew, or in the exercise of reasonable diligence should have known that Winchester-Willows infringed its copyright more than three years before it lodged its complaint with this Court. If Danielson should have known that Winchester-Willows infringed its copyright more than three years before filing suit, the copyright claim is barred by the three-year statute of limitations for copyright infringement claims under the Copyright Act, 17 U.S.C. § 507(b).

11. If Danielson's claim is not barred by the statute of limitations, Danielson may proceed to prove damages, including actual damages and any profits reaped by Winchester-Willows attributable to the infringement. Under 17 U.S.C. § 504(b), as to profits, Danielson need only show gross profits gained by Winchester-Willows from the project. Winchester-Willows may then show deductible expenses, as well as elements of profit attributable to factors other than the copyrighted work.

12. Danielson's conversion claim is not preempted by the Copyright Act. Danielson may attempt to show at trial that it suffered harm as a result of Winchester-Willows's wrongful physical possession of the drawings at issue here.

13. Danielson's Chapter 93A claim is preempted by the Copyright Act.

14. Danielson's Lanham Act claim survives summary judgment.

Order of Feb. 8, 2002 [Docket No. 56].

Taking the issues in slightly different order, this Memorandum explains the reasons for the Court's judgment. The Court begins with an exposition of those facts that are critical to the resolution of these motions.

I. Background

On June 29, 1987, Danielson executed a contract with Louis Farese ("Farese"), trustee of Conant Road Realty Trust ("Conant Realty Trust"), to perform architectural services for a proposed residential development comprising 70 condominium units called "The Willows at Winchester" (the "Project") located at 228 Cross Street and 7 Conant Road in Winchester, Massachusetts (the "Property"). Edmond Danielson Aff. ¶ 3-4 [Docket No. 27]. At the time, Conant Realty Trust owned the Property on which the Project was to be built. Id. ¶ 4. By the time the contract between Farese and Danielson was executed, Danielson had already completed seven drawings for the Project. Id. ¶¶ 6-7. These drawings were to be submitted to the Town of Winchester ("Town") Planning Board and Board of Appeals so that Conant Realty Trust could obtain a zoning variance permitting it to construct residential units in an area zoned for industrial use, and so that it could obtain a special permit to build the Project. These seven drawings became known as the "Covenant Drawings." Four of the Covenant Drawings, labeled SP-1, SP-2, SP-3, and A-3, are at issue in this litigation. Id. ¶ 7 & Exs. B (drawing SP-1), C (drawing SP-2), D (drawing SP-3), E (drawing A-3). Danielson concedes that three of the seven original drawings, labeled A-1, A-2, and EX-1, are not at issue in this litigation. Id. ¶ 7. Three of the Covenant Drawings at issue, SP-1, SP-2, and SP-3, bear Danielson's logo, as well as the logo of Tellalian Associates, Architects & Planners ("Tellalian"), a firm that assisted Danielson in the preparation of the design documents. Id. ¶ 8. The fourth drawing at issue, A-3, does not bear the logo of Danielson or Tellalian Associates, id., but instead appears to have been authored by Peter Whitman, an independent contractor who worked with Danielson and Tellalian, Defs.' Opp'n ¶ 2 [Docket No. 31]. None of the Covenant Drawings bears a notice of copyright. Defs.' Facts ¶ 4 [Docket No. 21].

The contract between Danielson and Farese is a 1977 version of a standard form American Institute of Architects ("AIA") agreement between the owner, Conant Realty Trust, and the architect, Danielson. Several of its provisions are relevant here. The contract provides that Danielson "shall prepare, for approval by the Owner, Schematic Design Documents consisting of drawings and other documents illustrating the scale and relationship of Project components." Edmond Danielson Aff.Ex. A, art. 1.1.4. Danielson was contractually required to follow up these schematic drawings with more detailed design development drawings, id. art. 1.2.1, and then construction documents, id. art. 1.3.1. Danielson was also required to assist Conant Realty Trust in filing such documents with the relevant government agencies, id. arts. 1.3.4 & 15, and was to supervise construction of the project, id. art. 1.5.

The contract also provided that Danielson owned the drawings and specifications rendered in connection with the project, id. art. 8.1. While Conant Realty Trust was entitled to retain copies of the drawings, the contract provided that "[t]he Drawings and Specifications shall not be used by the Owner on other projects, for additions to this Project, or for completion of this Project by others provided the Architect is not in default under this Agreement, except by agreement in writing and with appropriate compensation to the Architect." Id. The contract also stated that "[s]ubmission or distribution to meet official regulatory requirements or for other purposes in connection with the Project is not to be construed as publication in derogation of the Architect's rights." Id. art. 8.2.

Conant Realty Trust submitted the Covenant Drawings to the Town Planning Board for permission to construct the residential development sometime in June 1987. Edmond Danielson Aff. ¶ 13. On November 4, 1987, the Town Board of Appeals granted a special permit to construct the development in accordance with a Restrictive Covenant (the "Restrictive Covenant") that was subsequently executed by Conant Realty Trust and the Town Planning Board. Id.; Defs.' Facts ¶ 8. Among other things, the Restrictive Covenant provided that it was to run with the property as binding on all successors in interest for 30 years, Edmond Danielson Aff.Ex. J, §§ IV.B, IV.C, that construction was to proceed "substantially as shown on the Project Plans," id. § IV.E, with "Project Plans" defined to mean the original Covenant Drawings, id. § I & Ex. B, that any modification of the Project Plans was to be submitted to the Town Building Inspector for approval, id. § IV.F, and that the Covenant could not be amended except by a two-thirds vote of a Town Meeting, id. § IV.J.

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