McIntosh v. Northern California Universal Enterprises Company

Citation670 F.Supp.2d 1069
Decision Date30 October 2009
Docket NumberCase No. CV F 07-1080 LJO GSA.
PartiesRoger McINTOSH, Plaintiff, v. NORTHERN CALIFORNIA UNIVERSAL ENTERPRISES COMPANY, et al, Defendants. and Related Cross-Action.
CourtU.S. District Court — Eastern District of California

James J. Braze, Jeffrey A. Travis, Borton, Petrini, LLP, Bakersfield, CA, for Plaintiff.

Steven John Hassing, Law Offices of Steven J. Hassing, Roseville, CA, Chaka C. Okadigbo, GCR, LLP, Los Angeles, CA, William L. Alexander, Alexander & Associates, PLC, Bakersfield, CA, for Defendants.


LAWRENCE J. O'NEILL, District Judge.


Defendants Northern California Universal Enterprises Company ("NCUE"), Lotus Developments, L.P. ("Lotus") and City of Wasco ("Wasco") seek summary judgment that plaintiff Roger McIntosh's ("Mr. McIntosh's") copyright infringement claims arising from preparation of a subdivision tentative map and improvement plans cannot be established and are barred by defenses. Mr. McIntosh seeks summary adjudication that NCUE, Lotus, Wasco and defendant Dennis W. DeWalt, Inc. ("DeWalt")1 cannot establish affirmative defenses to his copyright infringement claims. This Court considered the parties' summary judgment/adjudication motions on the record2 without oral argument, pursuant to Local Rule 78-230(h). For the reasons discussed below, this Court DENIES NCUE, Lotus and Wasco summary judgment on Mr. McIntosh's claims and GRANTS in part Mr. McIntosh summary adjudication on certain affirmative defenses.


Mr. McIntosh is a Bakersfield civil engineer and does business as McIntosh & Associates, a sole proprietorship. For more than 30 years, Mr. McIntosh has performed urban planning and design of California residential subdivisions.

NCUE is a general contractor and has developed subdivisions in the Central Valley. Lotus is a California limited partnership, and NCUE is Lotus' general partner.

DeWalt is a Bakersfield civil engineering firm, performs topographical and land surveys and prepares tentative and final maps for subdivisions.3

This action arises from alleged infringing use of a tentative map and improvement plans to develop 480 acres as a subdivision in Wasco. Mr. McIntosh alleges that NCUE, Lotus, Wasco and DeWalt "created a residential subdivision by copying and using McIntosh's copyrighted works and employing a tangible embodiment of the landscape design McIntosh conceived and created."

Mr. McIntosh's Former Partnership

In 1980, Mr. McIntosh and Eugene Martin ("Mr. Martin") formed Martin-McIntosh Land Surveying ("Martin-McIntosh") which performed land planning services in California, including civil engineering, landscape architecture and construction management. In 1999, Mr. McIntosh bought out Mr. Martin, and Martin-McIntosh became McIntosh & Associates. Pursuant to the buy out agreement, the rights and works created to that point by Martin-McIntosh were assigned to Mr. McIntosh.

Martin-McIntosh's Preparation Of Tentative Map 5472

In January 1992, Wasco encouraged Legacy Group, L.P. ("Legacy"), a former land development firm, to purchase the 480-acre Valley Rose Estates subdivision ("subdivision") and to develop the subdivision with Wasco financing. In 1992, meaningful steps were initiated to develop a master development plan for the subdivision.

Martin-McIntosh created a "draft guidance package" ("guidance package") that provided direction and clarified expectations among Wasco, Legacy and Martin-McIntosh. Martin-McIntosh was to supervise the subdivision development and construction and serve as Legacy's representative for Wasco's review and processing of its master plan. Wasco notes that the guidance package called for Martin-McIntosh to produce master plans, tentative maps and improvement plans and provide them as part of Wasco's review and approval. Legacy was to serve as project applicant.

By a March 18, 1992 agreement ("MM-Legacy agreement") with Legacy general partner Michael S. Brown ("Mr. Brown"),4 Martin-McIntosh agreed to prepare for the subdivision a conceptual plan for $15,200, to prepare master plans for water, sewer and drainage, and other utilities for $54,800, and to conduct a subdivision survey for $19,100, for a $89,100 total. Mr. McIntosh characterizes Martin-McIntosh's roles "as a consultant to perform civil engineering services" for the subdivision.

By a May 11, 1992 letter agreement, Martin-McIntosh agreed to prepare for the subdivision Parcel Map No. 9572 for $5,000 and improvement plans and final map for Tract 54725 for $57,900.

By a June 24, 1992 letter agreement, Martin-McIntosh agreed to prepare a tentative map for Tract 5472 ("Tentative Map 5472") for $12,100.

On July 21, 1992, Martin-McIntosh recorded Map 9572, which divided the subdivision's 480 acres into six parcels, including the 33.51-acre Tract 5472.

According to Mr. McIntosh, he designed the overall subdivision layout and division of individual plots and common spaces and created the subdivision's landscape designs. Mr. McIntosh's subdivision and landscape designs are depicted in technical drawings ("MM improvement plans") that are subject of his February 22, 2007 copyright registration certificate.

Mr. McIntosh points out that Martin-McIntosh retained ownership of its work pursuant to the MM-Legacy agreement which provides in pertinent part:

All original papers, documents, drawings and other work product of consultant [Martin-McIntosh], and copies thereof, produced by consultant pursuant to this agreement shall remain the property of consultant and may be used by consultant without the consent of client [Legacy]. Upon request and payment of the costs involved, client is entitled to copy of all papers, documents and drawing provided client's account is paid current.

. . .

Client agrees not to use or permit any other person to use plans, drawings, or other work product prepared by consultant, which plans, drawings, or other work product are not final and which are not signed, and stamped or sealed by consultant. . . . Client further agrees that final plans, drawings or other work product are for the exclusive use of client and may be used by client only for the project described on the face hereof. Such final plans, drawings or other work product may not be changed nor used on a different project without the written authorization or approval by consultant.6

The MM-Legacy agreement addressed Legacy's default:

Client acknowledges that its right to utilize the services and work product provided pursuant to this agreement will continue only so long as client is not in default pursuant to the terms and conditions of this agreement and client has performed all obligations under this agreement.

In 1992, the Wasco council approved Tentative Map 5472 for development of 33.51 acres into 68 residential lots and one 96-unit multi-family lot.7

Original Subdivision Improvements

Wasco and Legacy entered in a November 3, 1992 development agreement for the subdivision and which provided that the agreement would continue until 2002, unless the tentative map expired.

In 1993, Martin-McIntosh prepared the MM improvement plans (streets, sidewalks, curbs and gutters, storm drains, sewer, water and utilities) for the subdivision. Also in 1993, Martin-McIntosh submitted the MM improvement plans to Wasco for Legacy to obtain a building permit to construct Tract 5472 improvements. Wasco approved Tentative Map 5472 and the MM improvement plans, and improvements were constructed in 1993 and 1994.

Legacy and Wasco entered into a January 28, 1993 Acquisition Agreement ("Acquisition Agreement") by which Wasco agreed to purchase infrastructure improvements to be constructed on Tract 5472. Legacy was to pay Martin-McIntosh with money received from Wasco. Wasco claims that it paid no less than $98,000 for the MM improvement plans for Tract 5472. NCUE, Lotus and Wasco further claim that Wasco paid Martin-McIntosh more than $800,000 for its subdivision services. Mr. McIntosh explains that Wasco paid Martin-McIntosh on Legacy's behalf from Martin-McIntosh's invoices submitted to Legacy.

NCUE and Lotus note that the Acquisition Agreement provided Wasco the right to complete improvements which were not completed by Legacy.

In 1994, the real estate market declined, Legacy declared bankruptcy, and subdivision construction ceased. Although improvements were constructed for Tentative Map 5472, legal lots within Tract 5472 were not created, and Martin-McIntosh ceased work, with Legacy's default, before the final map was approved. Tentative Map 5472 expired on May 11, 2001, and a final map was not recorded.

Lotus' Subdivision Purchase

The subdivision was dormant for 10 years after Wasco decided to stop funding improvements. On April 26, 2002, Wasco purchased Tract 5472 at a tax sale. Mr. McIntosh notes that at that time, the subdivision could have been redesigned by a developer. Wasco points out that substantially all improvements in the subdivision had been constructed in accordance with the MM improvement plans.

In November 2003, Wasco marketed Tract 5472 and circulated a developer information package ("developer package") which reached NCUE's real estate agent and touted Tract 5472 as having "infrastructure." The developer package included Tentative Map 5472 and a sewer and water map and noted that there were several plan documents developed in the early 1990s and which Wasco would make available. The developer package pointed out that "infrastructure, including roadways and water lines, were developed on the 34 acre parcel within the City-owned land."

Wasco and NCUE entered into a May 18, 2004 agreement for NCUE's purchase of the subdivision, including Tract 5472. Prior to the close of escrow,...

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