Witt v. Sollecito

• Decision Date: 28 October 2020
• Docket Number: 1:19-cv-676 (GLS/CFH)
• Parties: JOHN WITT et al., Plaintiffs, v. LARRY SOLLECITO et al., Defendants.
• Court: U.S. District Court — Northern District of New York

JOHN WITT et al., Plaintiffs, v. LARRY SOLLECITO et al., Defendants.

1:19-cv-676 (GLS/CFH)

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF NEW YORK

October 28, 2020

APPEARANCES:

OF COUNSEL:

FOR THE PLAINTIFFS:

Thorn Gershon Tymann &

Bonanni

5 Wembley Court

P.O. Box 15054

Albany, NY 12205

KYLE N. KORDICH, ESQ.

ERIN P. MEAD, ESQ.

FOR THE DEFENDANTS:

Larry Sollecito, Joanne

Sollecito & John Doe

Hinman, Straub Law Firm

121 State Street

Albany, NY 12207

JAMES T. POTTER, ESQ.

DeRaven Design & Drafting,

Roxanne Osborne-Heller &

David J. Hopper, Architects

Heslin, Rothenberg Law Firm

5 Columbia Circle

Albany, NY 12203

ANNETTE I. KAHLER, ESQ.

SUSAN E. FARLEY, ESQ.

Hinman, Straub Law Firm

121 State Street

Albany, NY 12207

JAMES T. POTTER, ESQ.

Gary L. Sharpe Senior District Judge

MEMORANDUM-DECISION AND ORDER

I. Introduction

Plaintiffs John Witt and Witt Construction, Inc. bring this action against defendants Larry Sollecito, Joanne Sollecito, DeRaven Design & Drafting, Roxanne Osborne-Heller, David J. Hopper, Architects, and John Doe pursuant to the Copyright Act,¹ the Lanham Act,² and New York state law. (See generally Am. Compl., Dkt. No. 24.) Now pending are defendants' motions for judgment on the pleadings, (Dkt. Nos. 31, 35), and plaintiffs' cross-motion to amend their amended complaint, (Dkt. No. 39). For the reasons that follow, defendants' motions are granted in part and denied in part, and plaintiffs' cross-motion is granted.

II. Background

A. Facts³

Witt is the owner of Witt Construction, a business focused on "designing, building[,] and servicing residential, commercial, and multi-family buildings." (Am. Compl. ¶ 1.) In June 2014, plaintiffs entered into an agreement with the Sollecitos, whereby plaintiffs were to design and plan the construction of a new home. (Id. ¶ 13.) The agreement was broken down into three parts: (1) plaintiffs were obligated to provide the Sollecitos with a preliminary design of the home, including "site investigation . . . and production of preliminary specifications and drawings of the home"; (2) plaintiffs were then obligated to provide drawings and final blue prints, and the parties were to enter into a construction contract with certain warranties and building specifications; and (3) in part three, "additional services" were to be offered. (Id. ¶¶ 14-16.) "[A]ll designs, drawings specification[,] and documents remained the exclusive property of [plaintiffs]." (Id. ¶ 17.)

Plaintiffs fulfilled part one of the agreement by providing theSollecitos with preliminary drawings and designs, but the Sollecitos did not fulfill their obligation under the second part of the agreement, as they "never entered into a contract with [plaintiffs] for the construction of the home in accordance with the drawings and designs." (Id. ¶ 21-22.) The Sollecitos were not authorized to use plaintiffs' drawings, designs, or works, which all remained their property per the original agreement. (Id. ¶ 23.) Nevertheless, in June 2016, Witt observed that the design of the Sollecitos' new home was "nearly identical" to the design and plans created by plaintiffs. (Id. ¶¶ 24, 32.)

Ultimately, Witt learned that his designs, drawings, and plans had been used by the Sollecitos to "develop, modify, and construct the[ir] residential home." (Id. ¶ 25.) Plaintiffs allege that the Sollecitos hired DeRaven, the owner and principal of which is Osborne-Heller, as the draftsman of the home, and they provided DeRaven with plaintiffs' designs, drawings, and other "works." (Id. ¶¶ 4, 27-28.) The Sollecitos and DeRaven then hired Hopper as architect, and Doe as contractor, to design, plan, and build the home using plaintiffs' designs. (Id. ¶¶ 29-30.) Plaintiffs allege that all defendants had access to the designs. (Id. ¶ 34.)

In May 2019, plaintiffs "filed for copyright registration of the designsand drawings." (Id. ¶ 19.) Plaintiffs allege that these designs are "distinctive and proprietary" because they (1) "are based on many hours of work by Witt"; (2) "were developed to incorporate open floor plans and modern design concepts within a buildable area of very specific geometry"; and (3) are "based upon early [twentie]th century architecture," and involve brickwork, windows, siding, dimensions, and "geometries" that are "unique to . . . Witt's artistic sense of design," and were "carefully crafted together by . . . Witt . . . to create a unique home for [the Sollecitos]." (Id. ¶ 20.)

B. Procedural History

Plaintiffs filed their initial complaint on June 5, 2019, (Compl., Dkt. No. 1), and the amended and operative complaint on October 1, 2019, (Am. Compl.) Plaintiffs bring the following ten causes of action: (1) a copyright infringement claim against all defendants; (2) a contributory copyright infringement claim against all defendants; (3) a vicarious copyright infringement claim against all defendants; (4) a Lanham Act claim against all defendants; (5) a breach of contract claim against the Sollecitos; (6) a claim pursuant to the New York Unfair Trade Practices Act⁴ against all defendants; (7) an unjust enrichment claim against alldefendants; (8) a conspiracy claim against all defendants; (9) a tortious interference with business relation/contract claim against DeRaven, Osborne-Heller, Hopper, and Doe; and (10) a tortious interference with economic advantage claim against all defendants. (See generally id.)

Defendants filed motions for judgment on the pleadings pursuant to Fed. R. Civ. P. 12(c),⁵ (Dkt. Nos. 31, 35), and plaintiffs cross-moved to amend their amended complaint, (Dkt. No. 39).

III. Standards of Review

A. Motion for Leave to Amend

Rule 15 allows a party not otherwise permitted to amend its pleading to do so with leave of the court. See Fed. R. Civ. P. 15(a)(2). The Rule mandates that "[t]he court should freely give leave when justice so requires." Id. Barring "futility, undue delay, bad faith or dilatory motive, repeated failure to cure deficiencies by amendments previously allowed, orundue prejudice to the non-moving party," leave should generally be granted. Burch v. Pioneer Credit Recovery, Inc., 551 F.3d 122, 126 (2d Cir. 2008) (citation omitted). "The non-moving party bears the burden of establishing why leave to amend should not be granted." Linares v. Richards, No. 08-CV-3243, 2009 WL 2386083, at *9 (E.D.N.Y. Aug. 3, 2009) (citations omitted).

B. Motion for Judgment on the Pleadings

"The standard for granting a Rule 12(c) motion for judgment on the pleadings is identical to that of a Rule 12(b)(6) motion for failure to state a claim." Patel v. Contemporary Classics of Beverly Hills, 259 F.3d 123, 126 (2d Cir. 2001) (citations omitted). The standard of review under Fed. R. Civ. P. 12(b)(6) is well settled and will not be repeated here. For a full discussion of the governing standard, the court refers the parties to its prior decision in Ellis v. Cohen & Slamowitz, LLP, 701 F. Supp. 2d 215, 218 (N.D.N.Y. 2010).

IV. Discussion

A. Copyright Infringement Claims

Plaintiffs bring claims of copyright infringement, contributory copyright infringement, and vicarious copyright infringement against alldefendants. (Am. Compl. ¶¶ 36-52.)

"In order to make out a claim of copyright infringement for an architectural work . . . a plaintiff must establish three things: 1) that his work is protected by a valid copyright, 2) that the defendant copied his work, and 3) that the copying was wrongful." Zalewski v. Cicero Builder Dev., Inc., 754 F.3d 95, 100 (2d Cir. 2014) (citations omitted). In addition, registration is "a precondition to filing a copyright infringement claim." In re Indu Craft, Inc., 749 F.3d 107, 113 n.9 (2d Cir. 2014) (citation omitted). A certificate of registration is sufficient. See Sorenson v. Wolfson, 96 F. Supp. 3d 347, 361 (S.D.N.Y. 2015) ("[A] certificate of a 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." (internal quotation marks and citation omitted)).

In arguing that they are entitled to judgment as to plaintiffs' copyright infringement claim, defendants contend that plaintiffs lack standing to bring such a claim, the claim is foreclosed by the statute of limitations, the drawings in question do not constitute original works protected by the Copyright Act, and plaintiffs' drawings are not substantially similar or nearly identical to defendants' drawings. (Dkt. No. 31, Attach. 1 at 8-17; Dkt.No. 35, Attach. 2 at 7-16.)

As an initial matter, in support of their motions for judgment on the pleadings, defendants submitted a declaration by Osborne-Heller, (Dkt. No. 31, Attach. 2), and L. Sollecito, (Dkt. No. 35, Attach. 1), and, in opposition to the motions, plaintiffs filed two affidavits and numerous exhibits thereto, most of which are unrelated to their cross-motion to amend, (Dkt. No. 39, Attachs. 1-22). To the extent that a document is not a public record such that the court may take judicial notice of it, not attached to the amended complaint, and/or not incorporated by reference to the amended complaint, the court has not considered it in ruling on the instant motions. See Hauschild v. United States Marshals Serv., No. 13-CV-5211, 2018 WL 3014095, at *4 (S.D.N.Y. June 15, 2018), aff'd and remanded sub nom. Atterbury v. United States Marshals Serv., 941 F.3d 56 (2d Cir. 2019) (holding that documents that were not attached, or incorporated by reference, to the complaint, and a "declaration [that] contain[ed] factual assertions that touch[ed] on the merits of the action," could not be considered in connection with the defendant's Rule 12(c) motion). And while the court could convert the instant motions to motions for summary judgment, and consider the evidence submitted outside of thepleadings and not otherwise falling into the realm of judicial notice, see Fed. R. Civ. P. 12(d), it declines to do so given the nascent nature of this action. See Toliver v. City of N.Y., No....