Warren Freedenfeld Associates, Inc. v. McTigue

• Decision Date: 20 June 2008
• Docket Number: No. 07-1603.,No. 07-1602.,07-1602.,07-1603.
• Citation: 531 F.3d 38
• Parties: WARREN FREEDENFELD ASSOCIATES, INC., Plaintiff, Appellant, v. Michael P. McTIGUE, D.V.M., et al., Defendants, Appellees. Warren Freedenfeld Associates, Inc., Defendant in Counterclaim, Appellee, v. Michael P. McTigue, D.V.M., Counterclaimant, Appellant.
• Court: U.S. Court of Appeals — First Circuit

531 F.3d 38

WARREN FREEDENFELD ASSOCIATES, INC., Plaintiff, Appellant, v. Michael P. McTIGUE, D.V.M., et al., Defendants, Appellees.

Warren Freedenfeld Associates, Inc., Defendant in Counterclaim, Appellee, v. Michael P. McTigue, D.V.M., Counterclaimant, Appellant.

No. 07-1602.

No. 07-1603.

United States Court of Appeals, First Circuit.

Heard May 5, 2008.

Decided June 20, 2008.

Garrett J. Lee and Robert A. McCall, with whom Barry S. Scheer, Parker Scheer, LLP, Michael J. Stone, and Peabody & Arnold LLP were on brief, for plaintiff.

Robert N. Meltzer, with whom The Mountain States Law Group, Mary C. Casey, and The Harbor Law Group were on brief, for defendants.

Before BOUDIN, Chief Judge, O'CONNOR,^* Associate Justice (Ret.), and SELYA, Senior Circuit Judge.

SELYA, Senior Circuit Judge.

These appeals rise, like the mythical Phoenix, out of the ashes of a failed business relationship between an architectural firm and its quondam client. They present interesting questions concerning the application of both the discovery rule and the work for hire doctrine in copyright infringement cases.

In the court below, the district judge dismissed the architectural firm's copyright infringement claim on timeliness grounds and thereafter, at the summary judgment stage, ruled that the client's counterclaims could not be proven. He also denied, anticipatorily, the defendants' nascent but as-yet-unasserted claim for attorneys' fees. As framed, the instant cross-appeals implicate all three rulings.

After careful consideration, we conclude that the district court incorrectly charged the architectural firm with inquiry notice of the alleged acts of copyright infringement and, therefore, vacate its dismissal of that cause of action. This disposition renders moot the anticipatory denial of attorneys' fees because the defendants are no longer prevailing parties as to that copyright infringement claim. Finally, although we follow a somewhat different analytic path, we affirm the lower court's entry of summary judgment on the counterclaims.

I. BACKGROUND

We rehearse here only those facts that are necessary to place these appeals in perspective.

In March of 1998, Michael P. McTigue, a veterinarian, hired Warren Freedenfeld Associates, Inc. (WFA), an architecture firm,¹ to design a veterinary hospital to be built in Gardner, Massachusetts. The parties executed a design agreement using a form promulgated by the American Institute of Architects (the AIA Agreement). Article 6 of the AIA Agreement provided that WFA would be "deemed the author" of all plans and drawings prepared for the project and would "retain all common law, statutory and other reserved rights [therein], including the copyright."

The relationship soon soured. Warren Freedenfeld, WFA's president, complained of nonpayment; McTigue countered with a charge that WFA had failed adequately to perform required services and, in the bargain, had neglected to keep the project within budget. During negotiations aimed at dissolving this impasse, WFA sent McTigue a letter, dated July 30, 1999, which warned that the plans and drawings produced by WFA were proprietary and that neither McTigue nor any successor architect could make use of them to complete the project. The letter demanded that, upon arriving at mutually acceptable terms for cancellation of the AIA Agreement, McTigue return all material previously submitted by WFA.

McTigue replied approximately two weeks later. He pronounced all of WFA's plans and drawings "useless" and declared that they had been "rolled up and discarded." Relatedly, he bemoaned the fact that he would have to pay another architect "tens of thousands of dollars" to finish the project.

As the negotiations dragged along, WFA took a prophylactic step: it secured a copyright over the plans and drawings by filing an application with the United States Copyright Office. See 17 U.S.C. § 408(a).

On September 2, 1999, the two sides finally reached an accord (the Termination Agreement). Pertinently, section 3 of that agreement stipulated that article 6 of the AIA Agreement remained "in full force and affect [sic]." Section 3 further provided that neither McTigue nor his proposed veterinary hospital (the Gardner Animal Hospital) would "use any of the work solely produced by WFA." The word "solely" was handwritten and inserted in the typewritten text. Both McTigue and Freedenfeld initialed that alteration.

McTigue thereafter retained a different architectural firm, Edward D. Cormier Associates, Inc., to complete the facility. In October of 1999, the city issued a building permit and construction proceeded apace. The veterinary hospital opened for business on or about June 9, 2000.

The next four years would prove to be the calm before the storm. In 2004, Freedenfeld came across an article in Veterinary Economics, a trade publication. It featured a drawing of the floor plan of the Gardner Animal Hospital and reported that the design had won a merit award. After obtaining a copy of the building plans from the city, Freedenfeld concluded that WFA's copyright had been infringed.

On September 26, 2005, WFA filed suit in federal district court against McTigue, the hospital, and several related parties. Its complaint alleged various counts of copyright infringement, 17 U.S.C. § 501 and violations of the Lanham Act, 15 U.S.C. § 1125(a). The defendants moved to dismiss, noting among other things the three-year statute of limitations contained in the Copyright Act. See 17 U.S.C. § 507(b).

Ruling from the bench, the district court granted this motion with respect to the copyright infringement claim. The court found "overwhelming" evidence that any "reasonably diligent person" in WFA's position would have learned of the supposed infringement no later than the date when the hospital opened. Since WFA's action had been instituted more than five years after that date, the three-year statute of limitations for copyright infringement barred its claim.

WFA's Lanham Act claim proceeded. In due course, McTigue counterclaimed, asserting copyright infringement and a gallimaufry of other federal and state-law causes of action. The common denominator of those causes of action was an assertion that WFA's continued use of the plans and drawings offended McTigue's proprietary rights under both federal and common law. While McTigue conceded that he had not personally prepared any of the plans or drawings, he posited that his contribution to the copyrighted material made him at least a co-owner of a portion of the copyrighted work.

After some skirmishing (not relevant here), WFA moved for summary judgment with respect to the counterclaims. McTigue opposed the motion. In an affidavit, he expounded on his claim that the Termination Agreement memorialized both his sole ownership of a portion of the copyrighted work and his joint ownership of other portions of that work.

The district court was unimpressed. Relying primarily on the express language of the two written agreements, it granted WFA's motion. See Warren Freedenfeld Assocs., Inc. v. McTigue, No. 05-11573, 2007 WL 757874, at *2-3 (D.Mass. Mar.9, 2007). The court added that, in all events, McTigue's contribution to the work appeared unremarkable in light of the traditional character of the architect-client relationship. Id. at *2.

At the same time, the court granted summary judgment for the defendants on WFA's Lanham Act claim. And although it had not been asked to rule on the point, the court entered a separate order declining to award attorneys' fees to the defendants with respect to WFA's unsuccessful copyright infringement claim. See 17 U.S.C. § 505.

These cross-appeals followed. In them, WFA challenges only the district court's dismissal of its copyright infringement claim. The defendants collectively challenge the anticipatory denial of attorneys' fees in connection with their triumphant defense of that claim. In addition, McTigue challenges what he characterizes as the premature termination of his counterclaims.

II. ANALYSIS

We begin with WFA's appeal and then proceed to McTigue's appeal. For reasons that will become apparent, we need not treat with the order anticipatorily denying attorneys' fees.

A. WFA's Appeal.

Because the district court dismissed WFA's copyright infringement claim pursuant to Rule 12(b)(6), we afford de novo review. See Rodi v. S. New Engl. Sch. of Law, 389 F.3d 5, 12 (1st Cir.2004). In conducting that tamisage, we accept as true all well-pleaded facts and draw all reasonable inferences therefrom in favor of the nonmovant (here, WFA). See Aguilar v. U.S. ICE, 510 F.3d 1, 21 (1st Cir.2007); Educadores Puertorriqueños en Acción v. Hernández, 367 F.3d 61, 62 (1st Cir.2004); see also Bell Atl. Corp. v. Twombly, ___ U.S. ___, 127 S.Ct. 1955, 1964-65, 167 L.Ed.2d 929 (2007). Those facts may be derived from the complaint, from documents annexed to or fairly incorporated in it, and from matters susceptible to judicial notice. See Redondo-Borges v. U.S. Dep't of HUD, 421 F.3d 1, 5 (1st Cir.2005). Where, as here, dismissal is premised on the running of a statute of limitations, we will affirm only if the facts, so derived and viewed in the requisite perspective, "leave no doubt that an asserted claim is time-barred." LaChapelle v. Berkshire Life Ins. Co., 142 F.3d 507, 509 (1st Cir.1998). These precepts frame our consideration of WFA's appeal.

The Copyright Act provides in relevant part that no claim for copyright infringement shall be maintained "unless it is commenced within three years after the claim accrued." 17 U.S.C. § 507(b). This date of accrual is not always determined mechanically; in certain circumstances, accrual contemplates application of the so-called discovery rule. See, e.g., Cambridge Literary Props., Ltd. v. W. Goebel Porzellanfabrik G.m.b.H. & Co., 510 F.3d 77, 81 (1st Cir.2007); Santa-Rosa v. Combo Records, 471 F.3d 224, 227 (1st Cir.2006). Under the aegis of this rule, a...