Robert Kubicek Architects & Assocs., Inc. v. Bosley
| Decision Date | 14 December 2012 |
| Docket Number | No. CV-11-02112-PHX-DGC,CV-11-02112-PHX-DGC |
| Court | U.S. District Court — District of Arizona |
| Parties | Robert Kubicek Architects & Associates, Incorporated, Plaintiff, v. Bruce C. Bosley and Joanne M. Bosley, The Bosley Group Incorporated, Bashas' Incorporated, Defendants. |
Defendants Bruce C. Bosley, Joanne M. Bosley, and the Bosley Group, Inc. ("TBG") (collectively "Defendants" or "Bosley Defendants") move for summary judgment on the first, second, and third causes of action of Plaintiff's complaint, alleging direct copyright infringement, contributory copyright infringement, and vicarious liability for copyright infringement. Doc. 63. This Court previously severed the claims against Defendant Bashas' and referred them to the Bankruptcy Court. Doc. 26. The Court subsequently dismissed Plaintiff's federal RICO, state-law racketeering, and alter ego claims, making the above-listed claims against the Bosley Defendants the only remaining claims in this case. Doc. 57. Defendants' motion has been fully briefed. Docs. 74, 78.1
The severed claims against Defendant Bashas' were dismissed in part by the Bankruptcy Court, and the remaining claims have since been withdrawn from that court and are currently pending before Judge Frederick J. Martone. No 2:12-cv-01947-FJM. Plaintiff Robert Kubicek Architects & Associates, Incorporated ("RKAA") filed a second motion to consolidate, requesting consolidation of the pending claims against Bashas' with the claims in this case. Defendant Bashas' filed a response in opposition (Doc. 80), and the Bosley Defendants filed a response in opposition and joinder in Bashas' response. Doc. 81. For the reasons set forth below, the Court will grant Defendants' motion for summary judgment in part, deny it in part, and deny Plaintiff's motion to consolidate.
RKAA is an architectural firm located in Phoenix, Arizona. Doc. 1, ¶ 13. Defendant Bruce Bosley began working as a draftsman for RKAA in 1982, after which he became a licensed architect, became a minority shareholder, and served as President and a member of RKAA's board of directors. Id., ¶ 14-15. On March 14, 2007, Mr. Bosley resigned from the firm without prior notice. Id., ¶, 20.
From 1997 up to the time of his resignation, Mr. Bosley worked as the architect principally responsible for managing RKAA's work for Bashas' Inc., a major, long-term client of the firm. Id., ¶¶ 22, 24-25. After leaving RKAA, Mr. Bosley formed his own architectural firm, TBG, and seven other RKAA employees who had worked on Bashas' projects left RKAA and began working for TBG. Id., ¶¶ 27-30. Bashas' stopped sending new work to RKAA, and instead sent its work to TBG. Id., ¶ 36. RKAA alleges that about the time Mr. Bosley left to start his own company, Defendants acquired copies of RKAA's copyrighted architectural drawings related to Bashas' projects and later unlawfully copied and used the drawings in providing services to Bashas'. Id., ¶¶ 44-53.
A party seeking summary judgment "bears the initial responsibility of informing the district court of the basis for its motion, and identifying those portions of [the record]which it believes demonstrate the absence of a genuine issue of material fact." Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Summary judgment is appropriate if the evidence, viewed in the light most favorable to the nonmoving party, shows "that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). Summary judgment is also appropriate against a party who "fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Celotex, 477 U.S. at 322. Only disputes over facts that might affect the outcome of the suit will preclude the entry of summary judgment, and the disputed evidence must be "such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
Copyright protection applies to "original works of authorship fixed in any tangible medium of expression." 17 U.S.C. § 102(a). This includes "technical drawings, including architectural plans" and "architectural works." 17 U.S.C. § 102(a)(5) & (8), § 101 (). "An 'architectural work' is the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings." Id. at § 102(a)(8). Such work "includes the overall form as well as the arrangement and composition of spaces and elements in the design, but does not include individual standard features." Id.
Registration of a copyrighted work is not required for copyright protection. 17 U.S.C. § 408(a). Registration is, however, a prerequisite for bringing a civil action for copyright infringement. Id. at § 411(a). The Ninth Circuit has found that the receipt of a completed application by the U.S. Copyright Office is sufficient for purposes of initiating litigation and that the processes of copyright registration and an underlying infringement case can proceed concurrently. Cosmetic Ideas, Inc., v. IAC/Interactivecorp, 606 F.3d 612, 619-21 (9th Cir. 2010). Even rejection of a registration application does not bar a civil suit, as long as the Copyright Office has been notified of the litigation and served acopy of the complaint. Id. at 619; 17 U.S.C. § 411(a). The Copyright Office may become party to the suit, but it is the court's responsibility to determine the validity of a plaintiff's copyright claim. 17 U.S.C. § 411(a).
To establish copyright infringement, a claimant must prove "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Feist Publ'n, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991). A certificate of copyright registration "made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate." 17 U.S.C. § 410(c). This presumption "is not an insurmountable one, and merely shifts to the defendant the burden to prove the invalidity of the plaintiff's copyrights." Masquerade Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663, 668 (3d Cir.1990. "The burden on the defendant to rebut the presumption varies depending on the issue bearing on the validity of the copyright." Id.
A work is "original" when it "possesses at least some minimal degree of creativity" and was "independently created by the author (as opposed to copied from other works)." Feist, 499 U.S. at 345. Id. at 348. Whether individual components of a work are sufficiently original to be protected is a question of fact. See, e.g., Vargas v. Pfizer, Inc., 418 F.Supp.2d 369, 373 (S.D.N.Y. 2005) ().
The Court must first determine whether RKAA has made claims based on the infringement of materials that it has either registered with the U.S. Copyright Office or for which it has applied to that office for copyright registration. RKAA has presentedevidence that it submitted registration applications for the following as "architectural works": (1) the grocery design for "Food City by Bashas' Store #141," (2) the grocery design for "a new Bashas' Market Store #166," (3) the architectural design for "Ike's Farmers Market by Bashas' Store #9," (4) the architectural design for "Ike's Farmers Market by Bashas' Store #125," (5) the technical specifications for grocery design, "Generic Specifications (Project Manual)," and (6) the technical specifications for grocery design, "Project Manual for a new Bashas' Market, Store #166." Doc. 75-2 at 2-6, Decl. of Harvey G. Unti, ¶¶ 7-12; see Doc. 75-2 at 8-24.
In addition to identifying the relevant works for which it has sought copyright registration, RKAA must point to evidence sufficient to create a triable issue of fact on whether Defendants copied these particular works. RKAA asserts that on several occasions after Mr. Bosley left RKAA he accessed the firm's computer system and forwarded emails to himself that, in some instances, had copies of RKAA drawings attached. Docs. 74 at 15; 75, ¶ 40. Neither the emails nor their attachments appear to pertain to any plans for which RKAA applied for copyright registration, however, and are therefore outside the scope of this lawsuit. 75-1 at 40-42.
RKAA also argues that a comparison of RKAA drawings and TBG drawings shows that portions of TBG's work "are essentially identical to, and have been appropriated from, digital files containing RKAA's plans, drawings, schedules, and design products." Doc. 74 at 15. RKAA cites to the declaration and report of its expert, Irwin G. Pasternack, who opined that works prepared by TBG for a number of Bashas' projects "appear to be direct appropriations and plagiarizations of RKAA work product in virtually every respect, with intentional cosmetic changes that appear to have been designed to change certain aspects of the physical appearance of the documents in order to disguise the misappropriations and plagiarisms." Doc. 75-6 at 4, ¶ 7(a).
As with the emails, Pasternack's report pertains, in part, to drawings other than those for which RKAA applied for copyright registration, and opinions based on these drawings are outside the scope of this lawsuit. Doc. 75-6 at 9-10...
To continue reading
Request your trial