Home Design Services, Inc. v. Schroeder Construction et al

Filing 149

ORDER denying 112 Plaintiffs Partial Motion for Summary Judgment, only the following affirmative defenses remain pending in this action: (1) denial of allegations; (2) failure to state a claim; (3) laches, estoppel, and waiver; (4) statute of li mitations; (5) improper registration; (6) failure to join; (7) third-party liability; (8) willfulness/innocent infringement; (9) noncopyrightable material; (10) public domain; and (11) independent creation. All other affirmative defenses have been abandoned by Defendants, by Judge William J. Martinez on 2/16/2012.(ervsl, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge William J. Martínez
Civil Action No. 09-cv-01437-WJM-GJR
HOME DESIGN SERVICES, INC.,
Plaintiff,
v.
SCHROEDER CONSTRUCTION,
JAMES E. SCHROEDER, and
MARK FENN,
Defendants.

ORDER ON PLAINTIFF’S MOTION FOR PARTIAL SUMMARY JUDGMENT

The matter is before the Court on Plaintiff Home Design Services, Inc.’s Motion
for Partial Summary Judgment on Plaintiff’s claims for attorney’s fees and statutory
damages (ECF No. 112) (the “Motion”). The Motion seeks summary judgment on the
following issues: (1) whether Plaintiff owns a valid copyright; and (2) most of
Defendants’ affirmative defenses. (ECF No. 112 at 19.) For the reasons set forth
below, Plaintiff’s Motion is denied.1
I. LEGAL STANDARD
Summary judgment is appropriate only if there is no genuine issue of material

1

The Court notes that Defendant Mark Fenn did not respond to Plaintiff’s Motion for
Partial Summary Judgment. Plaintiff asserts that, based on this failure, the Court should grant
summary judgment in its favor on all of Fenn’s defenses. (ECF No. 128 at 1 n.1.) However,
Penn asserts many of the same defenses raised by the Schroeder Defendants and the Court’s
analysis of these defenses does not hinge on any fact particular to the Schroeder Defendants.
Accordingly, the Court finds that its analysis applies to both the Schroeder Defendants and
Mark Fenn and will refer to these parties collectively as “Defendants.”

fact and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P.
56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986); Henderson v. Inter-Chem
Coal Co., Inc., 41 F.3d 567, 569 (10th Cir. 1994). Whether there is a genuine dispute
as to a material fact depends upon whether the evidence presents a sufficient
disagreement to require submission to a jury or conversely, is so one-sided that one
party must prevail as a matter of law. Anderson v. Liberty Lobby, 477 U.S. 242, 248-49
(1986); Stone v. Autoliv ASP, Inc., 210 F.3d 1132 (10th Cir. 2000); Carey v. U.S. Postal
Service, 812 F.2d 621, 623 (10th Cir. 1987).
A fact is “material” if it pertains to an element of a claim or defense; a factual
dispute is “genuine” if the evidence is so contradictory that if the matter went to trial, a
reasonable party could return a verdict for either party. Anderson, 477 U.S. at 248.
The Court must resolve factual ambiguities against the moving party, thus favoring the
right to a trial. Quaker State Mini-Lube, Inc. v. Fireman’s Fund Ins. Co., 52 F.3d 1522,
1527 (10th Cir. 1995); Houston v. Nat’l General Ins. Co., 817 F.2d 83, 85 (10th Cir.
1987).
II. ANALYSIS
In this copyright infringement case, Plaintiff alleges that Defendants unlawfully
used and copied a trademarked home design and architectural plan registered as HDS2352-2 (“2352-2"). (ECF No. 141 at 2.) In the instant Motion, Plaintiff moves for
summary judgment on the issue of whether it owns a valid copyright in 2352-2. (ECF
No. 112 at 7.) It also moves for summary judgment on many of the affirmative
defenses asserted by Defendants in their Answer. (Id. at 7-10; ECF No. 112-1 at 1-20.)

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The Court will address each of these issues in turn below.
A.

Ownership of the Copyright
To prevail on its copyright infringement claim, Plaintiff must satisfy two elements:

“(1) ownership of a valid copyright, and (2) copying of constituent elements of the work
that are original.” Feist Publ's, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991).
The Plaintiff bears the burden of proof on both elements. Palladium Music, Inc. v.
EatSleepMusic, Inc., 398 F.3d 1193, 1196 (10th Cir. 2005).
In the instant Motion, Plaintiff moves for summary judgment on only the first
element of its claim—that it owns a valid copyright. Plaintiff does not seek summary
judgment on its copyright infringement claim as a whole. It is well-settled that Rule 56
permits a party to seek summary judgment only as to an entire claim; a party may not
seek summary judgment on a portion of a claim. Carbajal v. Lincoln Benefit Life Co.,
2007 WL 2221147, *3 (D. Colo. July 31, 2007); see also Wichita v. U.S. Gypsum Co.,
828 F.Supp. 851, 869 (D. Kan. 1993) (“A party is not entitled to partial summary
judgment if the judgment would not be dispositive of the claim.”); Kendall McGaw Labs.,
Inc. v. Cmty. Mem'l Hosp., 125 F.R.D. 420, 421 (D.N.J. 1989) (describing as “well
settled” the principles that summary judgment could be had as to one claim among
many, but not as to one portion of a claim); Capitol Records, Inc. v. Progress Record
Distributing, Inc., 106 F.R.D. 25, 28 (N.D. Ill. 1985) (deeming a motion seeking
summary judgment “as to less than a single claim” to be improper).
Because Plaintiff’s Motion for Summary Judgment seeks judgment in its favor on
only a portion of its copyright infringement claim, the Motion is denied.

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B.

Affirmative Defenses
Plaintiff also moves for summary judgment on most of the affirmative defenses

asserted in Defendants’ Answer.2 Specifically, Plaintiff moves for summary judgment
on the following: (1) Defendants’ second affirmative defense (denial of allegations); (2)
Defendants’ third affirmative defense (failure to state a claim); (3) Defendants’ fourth
affirmative defense (laches, estoppel, and waiver); (4) Defendants’ fifth affirmative
defense (statute of limitations); (5) Defendants’ sixth affirmative defense (improper
registration); (6) Defendants’ ninth affirmative defense (failure to join); (7) Defendants’
eleventh affirmative defense (third-party liability); (8) Defendants’ fourteenth affirmative
defense (willfulness/innocent infringement); (9) Defendants’ fifteenth affirmative
defense (Spearin doctrine); (10) Defendants’ sixteenth affirmative defense (noncopyrightable material); (11) Defendants’ nineteenth affirmative defense (independent
creation); and (12) Defendants’ twentieth affirmative defense (improper registration).3
(ECF No. 112 at 7-10; ECF No. 112-1 at 1-20.) Plaintiff concedes that Defendants’
seventeenth affirmative defense (public domain) raises a question of fact for the jury.
(ECF No. 112-1 at 18.) In their opposition to the instant Motion, Defendants withdrew

2

At this stage in the proceedings, the Final Pretrial Order, rather than the Answer, sets
forth the claims that are still at issue. (See ECF No. 141 at 15.) However, this distinction is
immaterial for purposes of the instant Motion because, in the Final Pretrial Order, Defendants
stated that they will “rely on all of the affirmative defenses not withdrawn or dismissed.” (Id. at
4-5.)
3

In correspondence between the parties, Defendants withdrew the following defenses:
(1) their seventh affirmative defense (set-off); (2) their eighth affirmative defense (failure to
mitigate); (3) their tenth affirmative defense (acquiescence); (4) their twelfth affirmative defense
(fair use doctrine); (5) their thirteenth affirmative defense (corporate veil); (6) their eighteenth
affirmative defense (copyright misuse); and (7) their twenty-first defense (copyright expiration).
(ECF No. 112 at 8 n.5.)

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their fifteenth affirmative defense—Spearin doctrine. (ECF No. 118 at 12.)
Plaintiff contends that the Court should grant summary judgment on a number of
the affirmative defenses because they are improperly characterized as affirmative
defenses. This Court has previously stated:
An affirmative defense is different from a denial. An
affirmative defense is a basis for denying liability even if the
facts of a complaint are true, while a denial simply denies
the facts of a complaint. Bobbitt v. Victorian House, Inc., 532
F.Supp. 734, 736 (N.D. Ill. 1982). A defendant’s denial of an
element of an offense is not properly an affirmative defense
but a denial. In re Kmart Corp., 318 B.R. 409, 413 (Bkrtcy.
N.D. Ill. 2004).
Lifeblood Biomedical, Inc., Opt-In Trust v. Mann (In re Sender), 423 F.Supp.2d 1155,
1163 (D. Colo. 2006).
While the Court agrees that a number of Defendants’ “affirmative defenses” are
more accurately characterized as denials, the Court does not find it necessary to grant
summary judgment on this basis. See id., 423 F.Supp.2d 1155, 1163 (D. Colo. 2006)
(“A defense should not be stricken if there is any real doubt about its validity, and the
benefit of any doubt should be given to the pleader.”) (internal quotations and citations
omitted); Home Design Servs. v. Trumble, 2011 WL 843900, *3 (D. Colo. March 8,
2011) (denying summary judgment when denials were mislabeled as affirmative
defenses). While it may not be the most accurate way to present an issue, in the
Court’s experience, parties will often label an argument as an affirmative defense to err
on the side of caution so as to be sure it preserves issues that they believe may arise
as the case proceeds. The Court sees no reason to grant summary judgment on an
issue when the opposing party is not prejudiced by any mislabeling of said issue as an
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affirmative defense. Id. The Court is also disinclined to grant summary judgment on a
so-called affirmative defense merely because it is redundant. See Trumble, 2011 WL
843900 at *3 (denying summary judgment on affirmative defenses that were redundant
because plaintiff had failed to show any prejudice suffered).
Defendants have conceded a number of their originally pled affirmative
defenses. With respect to those still remaining, the Court finds that there exist genuine
issues of material fact that make summary judgment inappropriate. Viewing the facts in
the light most favorable to Defendants, there are genuine issues of fact as to at least
the following issues: (1) when Plaintiff knew about the home at the center of this dispute
(see ECF No. 118-3 at 3); (2) when Plaintiff first published the 2352-2 plans (see ECF
Nos. 118-2, 118-4, & 118-5); (3) whether the 2352-2 are original so as to warrant
copyright protection (ECF No. 118-1 at 3-4); and (4) whether a third-party is partially
liable for any infringement (ECF No. 118 at 10-11).
It is black-letter law that the Court must resolve any factual ambiguities against
the moving party, thus favoring the right to trial. Quaker State Mini-Lube, Inc. v.
Fireman’s Fund Ins. Co., 52 F.3d 1522, 1527 (10th Cir. 1995). Defendants having
shown material factual disputes as to the affirmative defenses remaining in this case,
the Court denies Plaintiff’s motion for summary judgment on Defendants’ affirmative
defenses.4

4

The Court takes no position on whether presenting all of these affirmative defenses to
a jury is prudent and will leave the decision on how to best defend this action at trial to
Defendants’ able counsel. Following the presentation of all of the evidence at trial, the Court
will determine which issues have been sufficiently raised so as to warrant inclusion in the jury
instructions.

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III. CONCLUSION
For the reasons set forth above, Plaintiff’s Partial Motion for Summary Judgment
(ECF No. 112) is DENIED. For clarity of the record, only the following affirmative
defenses remain pending in this action: (1) denial of allegations; (2) failure to state a
claim; (3) laches, estoppel, and waiver; (4) statute of limitations; (5) improper
registration; (6) failure to join; (7) third-party liability; (8) willfulness/innocent
infringement; (9) noncopyrightable material; (10) public domain; and (11) independent
creation. All other affirmative defenses have been abandoned by Defendants.
Dated this 16th day of February, 2012.
BY THE COURT:

William J. Martínez
United States District Judge

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