Dorchen / Martin Associates, Inc. v. The Brook of Cheyboygan, Inc. et al

Filing 58

ORDER denying 35 Motion for Summary Judgment; denying 57 Motion for Leave to Supplement Evidentiary Record. Signed by District Judge Thomas L. Ludington. (SGam)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
NORTHERN DIVISION
DORCHEN/MARTIN ASSOCIATES, INC.,
Plaintiff,

Case No. 11-10561
Honorable Thomas L. Ludington

v.
THE BROOK OF CHEBOYGAN, INC.;
PRACTICAL ENGINEERS, INC.,
Defendants.
___________________________________/
OPINION AND ORDER DENYING
DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT
Defendants allege that Plaintiff does not own a valid, enforceable copyright, and have
filed a motion for summary judgment asserting that very point. Because Defendants’ contention
is incorrect, the motion will be denied.
I
Plaintiff Dorchen/Martin Associates, Inc. was created in 1989 with the merger of two
architectural firms: A. Samuel Dorchen, Architect; and F. Zeno Martin Associates,
Architects/Planners.

Since that time, Plaintiff has provided comprehensive architectural

consulting services for hire. In February 2001, Plaintiff agreed to create construction documents,
including architectural and structural plans, for DeWitt Builders AZ (DBA). DBA intended to
construct an assisted living facility known as “The Brook” in Roscommon, Michigan. The
agreement was signed by James DeWitt, DBA’s president, and Sam Dorchen. DBA agreed to
pay Plaintiff pursuant to a fee schedule, and in the event of termination, Plaintiff agreed to give
“[a]ll work performed up to the termination date” to DBA. Defs.’ Mot. Ex. B, at 7, ECF No. 35.
No such contingency was necessary, as Plaintiff provided the construction documents pursuant

to the contract, and DBA paid in full. DBA, as General Contractor, then constructed The Brook
of Roscommon pursuant to Plaintiff’s plans.
DBA was the General Contractor on two other construction projects using Plaintiff’s
plans: The Brook of West Branch and The Brook of Houghton Lake. Plaintiff prepared the plans
for each facility, endeavoring to make them “as identical as possible” to the Roscommon plan,
subject to local site considerations. DeWitt Decl. ¶ 6. When creating the Houghton Lake facility
plan, Plaintiff did not contract with DBA, but instead with The Brook of Houghton Lake, Inc.
The officers and directors of The Brook of Houghton Lake, Inc. include James DeWitt, DBA’s
president, as well as Jerry DeWitt, William Carey, and Diane Friedriechsen. Pl.’s Am. Compl. ¶
16, ECF No. 16. Plaintiff created the Houghton Lake plan, Pl.’s Am. Compl. Ex. F, and The
Brook of Houghton Lake facility was completed by DBA in 2004. As noted on the Houghton
Lake plan, Plaintiff authored the plan, and the “document and the subject matter contained
therein is proprietary and not to be used or reproduced without the written permission of
[Plaintiff].” Id.
Defendant The Brook of Cheboygan, Inc. was created on or about May 8, 2009. The
officers and directors of Defendant Brook are James DeWitt, William Carey, and Diane
Friedriechsen, three of the officers and directors of The Brook of Houghton Lake, Inc. Pl.’s Am.
Compl. ¶ 18. In 2009, Plaintiff learned that Defendant Brook planned to build a new facility in
Cheboygan, Michigan. On September 29, 2009, Mr. Dorchen sent Mr. DeWitt a letter, noting he
had been informed that Defendant Brook “submitted preliminary land use documents that are
similar to [those] . . . prepared for you for the Houghton Lake ‘Brook’ facility. In fact, we
believe that you submitted prints of our drawings.” Pl.’s Am. Compl. Ex. B. Mr. Dorchen
indicated that Plaintiff was the “author of that design and holds all copy and use rights in that

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design.” Id. In concluding the letter, Mr. Dorchen wrote, “Please accept this letter as notice of
our intent to protect our rights in our work product. Any further action of this project which
continues your infringement on our exclusive rights is prohibited and will only serve to
exacerbate damages. We hope you’ll make the proper choice as to how you intend to proceed.”
Id.
Defendant Brook responded on October 6, 2009 through William Carey, its legal counsel.
Mr. Carey explained that Plaintiff’s drawings were only submitted “[i]n order to give the
Planning Commission some understanding of our business concept[.]” Pl.’s Am. Compl. Ex. C.
Mr. Carey wrote that he was “academically” interested in Plaintiff’s assertion it held “all copy
and use rights” in its design, and that while Plaintiff’s work on the other facilities was
appreciated, Defendant Brook intended to “move forward aggressively with [its] building plans
in Cheboygan.” Id.
In October 2009, Plaintiff registered The Brook of Houghton Lake plan with the United
States Copyright Office. Pl.’s Am. Compl. Ex. A. Plaintiff indicated it was the author of the
plan and the copyright claimant. Id. Plaintiff also indicated the plan was completed in 2004 and
first published on November 29 of that year. Id. Certificate of Registration VA 1-688-432
(Registration 432), covering the plan, was then issued with an effective date of October 9, 2009.
Id.
As promised, Defendant Brook moved forward with the Cheboygan project. It contracted
with Defendant Practical Engineers, Inc. to create architectural plans for The Brook of
Cheboygan facility. A letter from Defendant Practical to the Cheboygan County Planning Office
indicates, however, that Defendant Practical did not create new, original plans. Defendant
Practical wrote, “The Brook plans you have are for one of the other facilities. While the building

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floor plan is identical to the proposed facility, we will submit a drawing with the correct north
arrow on the drawings.” Pl.’s Am. Compl. Ex. D. Defendant Practical then submitted a plan,
identical to Plaintiff’s Houghton Lake plan, except that the North arrow was redrawn by hand in
the opposite direction. Pl.’s Am. Compl. Ex. E.
Approval from the Cheboygan Planning Commission was secured for The Brook of
Cheboygan facility, and the building was constructed. DBA again acted as General Contractor
for the project. Plaintiff then filed a complaint against Defendants Brook and Principal on
February 11, 2011, alleging copyright infringement, Lanham Act violations, and civil
conspiracy. Pl.’s Compl., ECF No. 1. Defendants filed a motion to dismiss the complaint,
which was granted.

Plaintiff’s Lanham Act and conspiracy claims were dismissed with

prejudice, but Plaintiff was allowed to file an amended complaint regarding its copyright
infringement claim. ECF No. 14. Plaintiff did so two weeks later.
Plaintiff’s Amended Complaint alleges that it created copyrightable material with its
Houghton Lake plan, which was then copied by Defendants and used to construct The Brook of
Cheboygan facility in 2009. Defendants have filed a motion for summary judgment, alleging
that Plaintiff does not own the copyrightable work in the Houghton Lake plan, and even if it did,
Registration 432 is invalid and unenforceable. Def.’s Mot. 1–2.
II
Summary judgment is proper when there are no genuine issues of material fact and the
moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c). The focus must
be “whether the evidence presents a sufficient disagreement to require submission to a jury or
whether it is so one-sided that one party must prevail as a matter of law.” Anderson v. Liberty
Lobby, 477 U.S. 242, 251-52 (1986). All justifiable inferences from the evidence must be drawn

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in the nonmoving party’s favor. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S.
574, 587 (1986).
III
To establish a copyright infringement claim, two elements must be proven: (1) the
plaintiff has ownership of a valid copyright, and (2) the defendant copied constituent elements
that are original. Feist Publ’ns, Inc. v. Rural Tel. Servs. Co., Inc., 499 U.S. 340, 361 (1991).
Defendants raise two issues for judgment as a matter of law, both attacking the first requirement:
(1) Plaintiff’s ownership of the copyrightable material in the Houghton Lake plan; and (2) the
validity of Plaintiff’s copyright covering the Houghton Lake plan, Registration 432.
A
Defendants first claim that Plaintiff is not the owner of the copyrightable material in the
Houghton Lake plan, and that summary judgment in their favor is appropriate. As a rule,
Copyright ownership vests in the author of the work. 17 U.S.C. § 201. Typically, the author is
the party who actually creates the work. § 102. There is, however, an exception for “works
made for hire.” If the work is made for hire, the owner is the person for whom the work was
prepared. § 201(b). According to Defendants, DBA hired Plaintiff in 2001 to create the
Roscommon plan, making the plan a “work made for hire” under the Copyright Act. If accurate,
DBA then owns all the rights comprised in the plan “unless the parties have expressly agreed
otherwise in a written instrument signed by them[.]” § 201(b). Because no such instrument
exists, Defendants maintain DBA is the author of and owns all the rights to the Roscommon
plan.
Further, Defendants assert the Houghton Lake plan is a “derivative work” of the
Roscommon plan. A “derivative work” is “based upon one or more preexisting works[.]” § 101.
“The copyright in a . . . derivative work extends only to the material contributed by the author of
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such work, as distinguished from the preexisting material employed in the work; and does not
imply any exclusive right in the preexisting material.” § 103(b). Defendants claim that they own
the rights to the underlying Roscommon plan, and that because the Houghton Lake plan was
based upon it and is nearly identical, they own the rights to the Houghton Lake plan as well.
The threshold question in this analysis is whether the Roscommon plan is a “work made
for hire.” The Copyright Act defines a “work made for hire” as: “(1) a work prepared by an
employee within the scope of his or her employment; or (2) a work specially ordered or
commissioned for use as a contribution to a collective work . . . if the parties expressly agree in a
written instrument signed by them that the work shall be considered a work made for hire.” §
101. In this case, the architectural work for the Roscommon plan was not done by any employee
of DBA. The architectural work “on all of ‘The Brook’ projects was exclusively performed by
individuals who were all direct [Plaintiff] employees at the time the work was performed.”
Dorchen Aff. ¶ 5. As such, Defendants rely on the work being commissioned by DBA to
support its status as a “work made for hire.”
Contrary to Defendants assertion, courts have concluded that architectural works cannot
be considered under the work for hire doctrine. See Warren Freedenfeld Associates, Inc. v.
McTigue, 531 F.3d 38, 48-49 (1st Cir. 2008) (citations omitted) (“[T]he Copyright Act
enumerates certain types of works encompassed by the work for hire doctrine, and architectural
drawings do not fit within that taxonomy.”); Richard J. Zitz, Inc. v. Pereira, 225 F.3d 646, at *4
(2d Cir. 2000) (unpublished table decision) (“[D]rafting of architectural blueprints does not fit
into any of the . . . nine categories of ‘specially ordered’ work.”); M.G.B. Homes, Inc. v. Ameron
Homes, Inc., 903 F.2d 1486, 1492 (11th Cir. 1990) (“[A]rchitectural drafting does not fall within

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the nine enumerated categories of activities which may be done by independent contractors ‘for
hire[.]’”).
Even if the Roscommon plan could be considered a “work made for hire,” there has been
no showing the parties expressly agreed, in writing, to view it that way. Defendants maintain the
February 2001 contract between DBA and Plaintiff satisfies § 101’s “express agreement”
requirement. The termination clause in that agreement indicates, “All work performed up to the
termination date shall be given to [DBA].” Defs.’ Mot. Ex. B, at 7. Assuming the termination
clause applies even if the agreement was fully performed, the language does not express the
parties’ intention to transfer Plaintiff’s rights to the Roscommon plan to DBA, or that it was to be
considered a “work made for hire.”
Defendants advance two cases that indicate written agreements need not use specific
language to establish the work was made for hire: Warren v. Fox Family Worldwide, Inc., 328
F.3d 1136 (9th Cir. 2003), and Armento v. Laser Image, Inc., 950 F. Supp. 719 (W.D. NC 1996).
When the cases are examined, however, they offer no support for Defendants’ position. In
Warren, defendant MTM Productions (MTM) hired plaintiff Richard Warren “to render services
to MTM for the television pilot photoplay now entitled ‘Remington Steele.’ ” 328 F.3d, at 1140.
The agreement between the parties provided,
As Warren’s employer for hire, MTM shall own in perpetuity, throughout the
universe, solely and exclusively, all rights of every kind and character, in the
musical material and all other results and proceeds of the services rendered by
Warren hereunder and MTM shall be deemed the author thereof for all purposes.
Id. at 1141 (brackets omitted). The court found this language satisfied the “express agreement”
requirement in § 101 despite its lack of the phrase “work made for hire.”
Likewise, in Armento, although the contracts did not use magic language, they did satisfy
§ 101’s “express agreement” requirement.

There, the plaintiff created maps which were
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incorporated into a collective work.

Armento, 950 F. Supp. at 729.

The maps were

commissioned by an entity known as The Laser Image. Id. at 728. The relevant language from
the contracts reads as follows: “The illustrated maps and advertising artwork produced by [the
plaintiff] for The Laser Image remain the sole property of The Laser Image, and cannot be
reproduced or used for any other purpose by [the plaintiff] without the written consent of The
Laser Image.” Id. at 729.
These cases, relied on by Defendants, contain contract language unlike the contract
language in this case. The only reference to transfer of the Roscommon plan, contained in a
paragraph entitled “Termination,” indicates, “All work performed up to the termination date shall
be given to [DBA].” Defs.’ Mot. Ex. B, at 7. No reference to sole and exclusive rights, as in
Warren; nothing about limitations on reproduction and use, as in Armento. Nothing to show the
parties agreed and intended to consider the Roscommon plan “work made for hire,” or to
affirmatively transfer rights for use and authorship to DBA. Simply maintaining that the “work”
would be transferred upon termination does not satisfy § 101’s “express agreement” requirement.
Further, the Copyright Act draws a distinction between ownership of a copyright and of a
material object:
Ownership of a copyright, or of any of the exclusive rights under a copyright, is
distinct from ownership of any material object in which the work is embodied.
Transfer of ownership of any material object . . . does not of itself convey any
rights in the copyrighted work embodied in the object[.]
§ 202.

The transfer of Plaintiff’s “work” to DBA upon termination, without any express

language indicating it was to be considered “work for hire,” simply transferred the physical
architectural and structural drawings. Such an action does not transfer the right to the underlying
work without an express agreement in writing. It follows that Plaintiff is the author of the
Roscommon plan, owning any rights comprised in the plan.
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Because Plaintiff is the author and owns the rights to the Roscommon plan, it is evident
that Plaintiff also owns the derivative works which it later created. Therefore, Plaintiff owns the
rights in the Houghton Lake plan, and Defendants’ motion will be denied on this ground.
B
Defendants next argue that Plaintiff’s copyright for the Houghton Lake plan, Registration
432, is unenforceable as a matter of law. Defendants set forth three reasons: (1) Plaintiff
knowingly failed to disclose pre-existing material to the copyright office during the application
process; (2) Plaintiff knew DBA owned the underlying copyright in the Roscommon plan; and
(3) Plaintiff knowingly provided a false date of first publication. As outlined above, Defendants’
second contention is untenable, and will be dismissed. The other two assertions will be analyzed
below.
The Copyright Act requires that the application for copyright registration of a derivative
work “shall include . . . an identification of any preexisting work or works that it is based on or
incorporates, and a brief, general statement of the additional material covered by the copyright
claim being registered.” § 409(9). Defendants here claim that Plaintiff failed to comply with §
409(9), thereby making its registration unenforceable.
Contrary to Defendants’ position, “The issue raised by § 409(9) is whether and to what
extent the derivative design incorporates elements designed by someone else.” Frank Betz
Associates, Inc. v. J.O. Clark Const., LLC, 2010 WL 2253541, at *11 (M.D. Tenn. May 30,
2010). Where the evidence indicates that Plaintiff created derivative designs based on its own
original designs, “the concerns that § 409(9) raises are not implicated.” Id.
In Christopher Phelps & Associates, LLC v. Galloway, 492 F.3d 532, 536 (4th Cir.
2007), the plaintiff authored an architectural design, but did not register it for copyright. The
plaintiff then created a derivative work based on its own original design. Id. When the plaintiff
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discovered that the defendant was utilizing its derivative design to construct a house, it registered
the design for copyright protection and filed suit. Id. The Fourth Circuit established:
[The plaintiff] was the author of the Bell and Brown Residence design and
therefore owned the copyright in that work, even though it never registered that
copyright. [The plaintiff] was also the author of the Bridgeford Residence design,
which was a modification of the Bell and Brown Residence design. [The plaintiff]
did register the Bridgeford Residence design, but not as a derivative work. It
simply registered the entire design, as it was the author of the entire design.
While [the plaintiff] only registered the Bridgeford Residence design, that
registration satisfied the prerequisite for suit under 17 U.S.C. § 411 for the entire
design, even though some of it was created earlier in the form of the Bell and
Brown Residence design.
Id. at 539 (emphasis in original). The identical situation in this case calls for the same reasoned
conclusion. Plaintiff is the author of the Roscommon plan, which it used to create the Houghton
Lake plan. Although it did not register the Houghton Lake plan as a derivative work, that is
immaterial. The plan, in its entirety, was Plaintiff’s own creation. To deny Plaintiff protection
for that plan, simply because it failed to identify an earlier version it created and incorporated,
would contravene the purpose of rule 409(9).
Defendants’ reliance on Rich & Rich Partnership v. Poetman Records USA, Inc., 714 F.
Supp. 2d 657 (E.D. Ky. 2010) reconsideration granted in part, 2010 WL 3199668 (E.D. Ky.
June 7, 2010), does nothing to alter this conclusion. In that case, Rich & Rich registered its
derivative work for copyright protection without identifying the pre-existing work that was
created by another author. Id. at 664. The court concluded this was not an immaterial mistake,
as it was done knowingly, and as such Rich & Rich’s copyright was invalidated. Id. at 664-65.
In this case, Plaintiff did not utilize another author’s work, but its own. Its failure to advise the
Copyright Office of this information did not deprive the Copyright Office from fully evaluating
the application. As in Christopher Phelps, Plaintiff is entitled to the protection of its own work.

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Defendants’ final argument can be dismissed in short order. They claim that because the
Roscommon and the West Branch plans were published before November 2004, Plaintiff’s
failure to indicate an earlier publication date for the Houghton Lake plan renders Registration
432 invalid. As discussed above, it was appropriate for Plaintiff to register the Houghton Lake
plan for copyright protection as its original work. Because that plan was first published in
November 2004, it was appropriate for Plaintiff to indicate that fact in the application. That
Plaintiff did not indicate the publication dates of the Roscommon or West Branch plans does not
nullify Registration 432.

It is not a clever ploy to gain the presumption of validity, as

Defendants assert, but merely the truth. Therefore, Defendants’ claim that Plaintiff’s copyright,
Registration 432, is invalid and unenforceable will also be denied.
IV
Accordingly, Defendants’ Motion for Summary Judgment, ECF No. 35, is DENIED.
On October 9, 2012, Defendants filed a Motion for Leave to Supplement the Evidentiary
Record on Motion for Summary Judgment. Defendants wish to supplement the record with
deposition testimony of Samuel Dorchen indicating the similarity between the Roscommon,
West Branch, and Houghton Lake plans. As discussed above, the evidence has already been
considered, and in fact, is detrimental to Defendants’ argument. Therefore, Defendants’ Motion
for Leave to Supplement the Evidentiary Record, ECF No. 57, is DENIED.

Dated: October 15, 2012

/s Thomas L. Ludington
THOMAS L. LUDINGTON
United States District Judge

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PROOF OF SERVICE
The undersigned certifies that a copy of the foregoing
order was served upon each attorney or party of record
herein by electronic means or first class U.S. mail on
October 15, 2012.
s/Tracy A. Jacobs
TRACY A. JACOBS

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