Harbar Homes Inc v. Harris et al
MEMORANDUM OPINION Signed by Judge Karon O Bowdre on 8/28/12. (SAC )
2012 Aug-28 AM 10:00
U.S. DISTRICT COURT
N.D. OF ALABAMA
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ALABAMA
HARBAR HOMES, INC.,
J. BROOKS HARRIS, individually, et
This copyright infringement case comes before the court on the following motions:
“Motion for Summary Judgment of Defendants J. Brooks Harris and Harris & Doyle Homes,
Inc.” (doc. 38); “Motion for Summary Judgment of Defendant Jim Brown” (doc. 36); “Motion
of Defendant Jim Brown to Strike the Statement of Regina Ashmore” (doc.49); “Motion of
Defendant Jim Brown to Strike Plaintiff’s Exhibit 2" (doc. 50); and “Defendant’s J. Brooks
Harris and Harris & Doyle Homes, Inc.’s Motion to Strike Exhibit 6 to Plaintiff’s Response in
Opposition to Summary Judgment.” (doc. 53).
The court finds the following motions are moot because of its prior order dismissing
James Brown as a Defendant (doc. 57): “Motion for Summary Judgment of Defendant Jim
Brown” (doc. 36); “Motion of Defendant Jim Brown to Strike the Statement of Regina Ashmore”
(doc.49); and “Motion of Defendant Jim Brown to Strike Plaintiff’s Exhibit 2" (doc. 50). The
court finds “Defendant’s J. Brooks Harris and Harris & Doyle Homes, Inc.’s Motion to Strike
Exhibit 6 to Plaintiff’s Response in Opposition to Summary Judgment” (doc. 53) moot because
of the Plaintiff’s withdrawal of Exhibit 6 in “Plaintiff’s Opposition to Motions to Strike of
Defendants Jim Brown, J. Brooks Harris, and Harris & Doyle Homes, Inc.” (doc. 54). For the
reasons stated in this Memorandum Opinion, the court will DENY Defendants’ Motion for
Summary Judgment because genuine issues of material fact exist.
I. STATEMENT OF FACTS AND PROCEDURAL HISTORY
Phillip Franks, not a party to this litigation, has drafted numerous architectural plans for
Plaintiff Harbar Homes, Inc. since the 1970s through his company, Residential Concepts, Inc.
Harbar is a real estate development and holding company that bought and sold residential real
estate and lent money to other real estate and construction businesses until 2008 when it ceased
business activity. Mr. Franks drafted an original architectural plan for Harbar, entitled “27-A,”
on or about October 8, 2006, and he drafted a revised version of the plan on or about October 30,
2006. Plan 27-A is the alleged copyrighted work that gives rise to Harbar’s copyright
infringement claim. Harbar paid Mr. Franks in full for the plan in 2006, and Harbar paid Mr.
Franks a duplication or re-print fee of $75.00 each time it needed a copy of the plan.
Before events giving rise to this litigation, no person or entity other than Harbar ever built
Plan 27-A. Harbar Construction, an affiliate of the plaintiff, Harbar Homes, Inc., built Plan 27-A
nine times in the Sanctuary at Caldwell Crossings subdivision. Each time Harbar Construction
built a home according to Plan 27-A, it paid plaintiff Harbar a license fee.
In the summer of 2010, Jim Brown, no longer a party to this litigation, contacted Mr.
Franks to ask him for a copy of Plan 27-A. Mr. Franks testified that he gave the plan to Mr.
Brown under the mistaken impression that he was giving the plan to someone within Harbar’s
“family” or “group,” of which Mr. Franks thought Mr. Brown was a member. Mr. Brown works
for Realty South, a real estate company that sold homes in the subdivisions where Harbar
constructed houses, but he never worked for Harbar. Mr. Brown was Realty South’s Vice
President of New Home Sales and Marketing for approximately fifteen to twenty years until 2010
and is currently a salesman for Realty South. Mr. Brown was not acting as personal
representative of Harbar or in privity with Harbar when Mr. Franks gave Mr. Brown the plan, and
Mr. Brown did not pay Mr. Franks a fee for the use of the plan.
On July 7, 2010, Mr. Brown and Defendant Harris & Doyle Homes, Inc. entered into a
contract for the construction of the residence at issue. Sometime in the summer of 2010, Mr.
Franks and Mr. Harris of Harris & Doyle had a telephone conversation. A dispute exists over the
contents of the conversation. Mr. Franks testified that Mr. Harris did not ask him for a license to
use the plan, and that Mr. Harris did not mention to Mr. Franks that Harris & Doyle was using
the plan to build Jim Brown’s residence. To the contrary, Mr. Harris testified that he told Mr.
Franks that he had a client interested in building a home based on plans that Mr. Franks had
drafted for Harbar and that Mr. Franks orally granted permission for Mr. Harris to build
according to the plans.
On March 31, 2010, defendant Harris & Doyle requested a building permit to construct
the residence at issue. The building permit was issued on September 1, 2010. Construction on the
residence started sometime after September 2010 and was completed in January 2011. Mr.
Brown owns and resides in the residence at issue, and the residence was built according to Plan
On October 13, 2010, Mr. Franks validly executed a writing conveying his interest,
including any copyright interest, in Plan 27-A to Harbar, effective retroactively October 2006,
when the plan was created, and December 2006, when the plan was revised. The assignment
expressly states that it memorializes the transfer and assignment of Plan 27-A from Mr. Franks to
Harbar that occurred in 2006.
Although no dispute exists regarding the validity of the assignment, a genuine dispute
exists about the contents of the 2006 oral agreement that was memorialized in the 2010 written
assignment. Mr. Franks testified that he understood from the time of the creation of Plan 27-A
that he could copy and distribute the plan to Harbar exclusively. Mr. Franks also testified that he
had an agreement with Harbar not to give any of the plans he drafted for Harbar to other builders
or put the plans in a magazine or design book.
Mr. Franks testified that at the time he delivered Plan 27-A to Harbar Homes in 2006, no
agreement was in place about the ownership of the copyright in the plan. Denny Barrow,
President of Harbar, testified that in 2005 or 2006, Mr. Franks and Harbar reached an oral
agreement that Harbar exclusively owned all rights, including the copyright, in all the plans Mr.
Franks drafted for Harbar. Mr. Barrow testified this agreement was in place when Harbar bought
Plan 27-A from Mr. Franks in 2006. Mr. Barrow also testified that when he sent the 2010
assignment to Mr. Franks to sign, he told Mr. Franks that the document confirmed their earlier
oral agreement that Harbar owned Plan 27-A and all rights in the plan.
Both Mr. Franks and Mr. Barrow testified that the specific issue of copyright was never
discussed until approximately a week before execution of the 2010 assignment. Mr. Barrow
testified that it was the first time copyright was discussed because it was the first time anyone
besides Harbar had used the plans Mr. Franks drafted for Harbar. After the 2010 assignment, Mr.
Franks told Harbar for the first time that he had given Mr. Brown a copy of the plan in the
summer of 2010.
On June 22, 2011, Harbar brought this case against Defendants J. Brooks Harris, Harris
& Doyle Homes, Inc., JMB Makers, LLC, and James Brown. The one count complaint alleged
infringement of a copyright in an architectural work. On a stipulation of dismissal, the court
dismissed Defendant JMB Makers, LLC without prejudice, and on a motion to dismiss, the court
dismissed Defendant James Brown with prejudice. Defendants J. Brooks Harris and Harris &
Doyle Homes, Inc.’s motion for summary judgment is the final motion pending before this court.
II. STANDARD FOR REVIEW
Summary judgment is an integral part of the Federal Rules of Civil Procedure. Summary
judgment allows a trial court to decide cases when no genuine issues of material fact are present
and the moving party is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56. When a
district court reviews a motion for summary judgment it must determine two things: (1) whether
any genuine issues of material fact exist; and if not, (2) whether the moving party is entitled to
judgment as a matter of law. Fed. R. Civ. P. 56(c).
The moving party “always bears the initial responsibility of informing the district court of
the basis for its motion, and identifying those portions of ‘the pleadings, depositions, answers to
interrogatories, and admissions on file, together with the affidavits, if any,’ which it believes
demonstrate the absence of a genuine issue of material fact.” Celotex Corp. v. Catrett, 477 U.S.
317, 323 (1986) (quoting Fed. R. Civ. P. 56). The moving party can meet this burden by offering
evidence showing no dispute of material fact or by showing that the non-moving party’s evidence
fails to prove an essential element of its case on which it bears the ultimate burden of proof.
Celotex, 477 U.S. at 322-23. Rule 56, however, does not require “that the moving party support
its motion with affidavits or other similar materials negating the opponent’s claim.” Id. If the
moving party does not meet its burden, the court must deny the motion for summary judgment.
Mr. Harris and Harris & Doyle argue that they are entitled to summary judgment because
Harbar did not own the copyright to Plan 27-A at the time of the alleged copyright infringement.
Additionally, Mr. Harris and Harris & Doyle argue that Harris & Doyle obtained a license from
Mr. Franks, the copyright holder, to use Plan 27-A to build Mr. Brown’s home, and thus no
copyright infringement exists as a matter of law. The issue is whether Mr. Franks validly
transferred the copyright of Plan 27-A to Harbar in 2006 before the alleged infringement by the
A copyright vests originally in the author of a particular work, such as an architectural
plan, and the owner of the copyright has the exclusive right to prosecute an accrued cause of
action for infringement of that copyrighted work. 17 U.S.C. § 201(a), 501(b). Mr. Franks, as
author of Plan 27-A, owned the copyright in the plan at the time he drafted it and also held the
exclusive right to sue for its infringement.
The issue is whether and when Mr. Franks properly transferred the copyright to Harbar.
The transfer of a copyright is not valid “unless an instrument of conveyance, or a note or
memorandum of the transfer is in writing and signed by the owner of the rights conveyed.” 17
U.S.C. § 204(a). The Eleventh Circuit has recognized that this statute can be satisfied “by an oral
assignment later ratified or confirmed by a written memorandum of the transfer.” Imperial
Residential Design, Inc. v. Palms Dev. Grp., Inc., 70 F.3d 96, 99 (11th Cir. 1995) (citing Arthur
Ratenburg Homes, Inc. v. Drew Homes, Inc., 29 F.3d 1529, 1532-33 (11th Cir. 1994)).
In a copyright infringement claim involving the memorialization of a previous oral
assignment, the Third Circuit stated that for a plaintiff to get past a defendant’s motion for
summary judgment, the plaintiff must show some evidence aside from the later written
assignment of copyright that is “sufficient to allow a conclusion” that the previous “oral
assignment actually occurred.” Barfeoot Architect, Inc. v. Bunge, 632 F.3d 822, 832 (3rd Cir.
2011). This case presents a set of facts replete with genuine issues of material fact as to whether
the 2010 assignment memorialized a transfer of the copyright in Plan 27-A. Mr. Barrow and Mr.
Frank’s differing testimony presents sufficient evidence of a genuine issue of material fact
concerning whether a potential oral transfer of the copyright in Plan 27-A occurred when the plan
was created in 2006 to preclude judgment as a matter of law.
In sum, the court finds Mr. Harris and Harris & Doyle’s motion for summary judgment is
due to be DENIED. A separate order will be filed contemporaneously to that effect.
Dated this 28th day of August, 2012.
KARON OWEN BOWDRE
UNITED STATES DISTRICT JUDGE
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