Dorchen / Martin Associates, Inc. v. The Brook of Cheyboygan, Inc. et al
Filing
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Opinion and ORDER denying 61 Motion for Reconsideration of 58 Order denying Motion for Summary Judgment. 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 RECONSIDERATION
Plaintiff Dorchen/Martin Associates, Inc. filed a complaint against Defendants The Brook
of Cheboygan, Inc. and Practical Engineers, Inc., alleging copyright infringement. Plaintiff
claims it created an architectural plan that Defendants used unlawfully. Defendants moved for
summary judgment, claiming that Plaintiff did not own the copyrighted material comprised in the
plan, and further, that Plaintiff’s copyright registration was invalid.
After consideration,
Defendants’ motion was denied.
Defendants then filed a motion to reconsider the opinion and order denying their motion
for summary judgment. The Court concluded in the opinion that Plaintiff was the sole author of
the plan in question and maintained control of any copyrights comprised in that plan.
Defendants presently allege that the plan was not a work made for hire, but instead that Plaintiff
is not the sole author. As before, Defendants argument is imaginative, but without merit. The
motion for reconsideration will be denied.
I
Plaintiff provides comprehensive architectural consulting services for hire. In February
2001, Plaintiff agreed to develop 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. Plaintiff created the necessary construction
documents and provided them to DBA. Then DBA, as General Contractor, constructed The
Brook of Roscommon pursuant to Plaintiff’s plan.
Using Plaintiff-created plans, DBA
constructed two other facilities: The Brook of West Branch and The Brook of Houghton Lake.1
When creating the Houghton Lake Plan, Plaintiff did not contract with DBA as it had with The
Brook of Roscommon facility, but instead with The Brook of Houghton Lake, Inc. James
DeWitt, president of DBA, remained involved as an officer and director of The Brook of
Houghton Lake, Inc.
Defendant Brook of Cheboygan, Inc. (Brook) was created on or about May 8, 2009. Mr.
DeWitt was involved with the project and is an officer and/or director of Defendant Brook. In
2009, Plaintiff learned that DBA planned to use the Houghton Lake Plan to build a new facility
in Cheboygan, Michigan. On September 29, 2009, Plaintiff sent Mr. DeWitt a letter explaining
that any use of Plaintiff’s plans to build another facility without permission would be copyright
infringement.
The Brook Retirement Communities’ legal representative responded that it intended to
proceed. Plaintiff then registered the 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
1
The plan underlying The Brook of Houghton Lake project is referred to herein as the “Houghton Lake
Plan.”
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copyright claimant. 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.
Instead of retaining Plaintiff to develop the architectural plan for The Brook of
Cheboygan facility, as with the three previous facilities, Mr. DeWitt decided that Defendant
Practical Engineers, Inc. would do the job.2 Construction of The Brook of Cheboygan facility
commenced, with DBA again acting as General Contractor for the project
Plaintiff then filed a complaint against Defendants Brook and Practical 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 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. Defs.’ Mot. 1–2. Because Plaintiff’s plan was not
a “work made for hire,” but instead was based on a line of previous work created by Plaintiff,
Defendants’ motion was denied.
Defendants have filed a motion to reconsider that determination, asserting that the
Court’s October 15, 2012 opinion and order contains palpable defects and should be vacated.
First and foremost, Defendants assert that James DeWitt was involved with the creation of
Plaintiff’s architectural plans — involving The Brook of Roscommon, The Brook of West
2
Representing Defendant Practical on the other side of that handshake was Brian Ross.
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Branch, and The Brook of Houghton Lake — to the point that he is a joint author and co-owner
of any copyright comprised in those plans.
II
A motion for reconsideration will be granted if the moving party shows: “(1) a ‘palpable
defect,’ (2) the defect misled the court and the parties, and (3) that correcting the defect will
result in a different disposition of the case.” Michigan Dept. of Treasury v. Michalec, 181 F.
Supp. 2d 731, 733–34 (E.D. Mich. 2002) (quoting E.D. Mich. LR 7.1(h)(3)). A “palpable
defect” is “obvious, clear, unmistakable, manifest, or plain.” Michalec, 181 F. Supp. 2d at 734
(citing Marketing Displays, Inc. v. Traffix Devices, Inc., 971 F. Supp. 262, 278 (E.D. Mich.
1997)). “Motions for rehearing or reconsideration which merely present the same issues ruled
upon by the Court, either expressly or by reasonable implication, shall not be granted.”
Michalec, 181 F. Supp. 2d at 734 (brackets omitted) (quoting E.D. Mich. LR 7.1(h)(3)).
III
Defendants allege four errors in the Court’s opinion and order that require
reconsideration. Three of the errors — the Court’s conclusion that the architectural work on the
Roscommon plan was done solely by Plaintiff’s employees; that Plaintiff owned any rights
comprised in the Roscommon plan; and that Plaintiff therefore owned any rights to the derivative
Houghton Lake Plan — are essentially one argument. Defendants believe that James DeWitt is a
joint author of the Roscommon plan, which would throw a wrench into all three conclusions.
The fourth alleged error Defendants raise is the Court’s conclusion that Defendant Brook
contracted with Defendant Practical for the creation of The Brook of Cheboygan Plan. Each is
addressed below.
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A
Defendant’s primary argument in favor of their motion for reconsideration is that James
DeWitt is a joint author of the Roscommon Plan, and any derivative plans that followed, because
of his contributions during the creation process. But Defendants’ argument is unpersuasive, and
does not change the Court’s conclusion that Plaintiff owns the copyright in the Roscommon Plan
and the subsequent Houghton Lake Plan.
Copyright ownership of a protected work initially vests in the work’s author. 17 U.S.C. §
201(a).
When a work is “prepared by two or more authors with the intention that their
contributions be merged into inseparable or interdependent parts of a unitary whole,” 17 U.S.C. §
101, the authors create a “joint work,” id., and are considered to be “joint authors.” Childress v.
Taylor, 945 F.2d 500, 505 (2d Cir. 1991). Thus, joint authors are entitled to “equal undivided
interests in the whole work — in other words, each joint author has the right to use or to license
the work as he or she wishes, subject only to the obligation to account to the other joint owner
for any profits that are made.” Thomson v. Larson, 147 F.3d 195, 199 (2d Cir. 1998) (citing §
201(a)); Childress, 945 F.2d at 508.
In an unpublished opinion, BancTraining Video Sys. v. First Am. Corp., 956 F.2d 268
(6th Cir. 1992), the Sixth Circuit analyzed joint authorship, but did not establish a specific test
for courts to apply when determining the issue.
Defendants do not cite BancTraining or
otherwise suggest what the Sixth Circuit’s joint authorship test is or should be. Plaintiff’s
response, on the other hand, points to Childress, 945 F.2d 500; Erickson v. Trinity Theatre, Inc.,
13 F.3d 1061 (7th Cir. 1994); and Ashton-Tate Corp. v. Ross, 916 F.2d 516 (9th Cir. 1990), for
the proposition that “joint authorship requires that the respective contributions of each alleged
joint author must be independently copyrightable, and that the alleged co-authors intend, at the
time the work is created, to regard themselves as co-authors.” Pl.’s Resp. 10.
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The Second Circuit’s Childress v. Taylor test requires a party claiming joint authorship to
show that (1) each party intended to be joint authors, and (2) each party made an independently
copyrightable contribution to the work. Childress, 945 F.2d at 505–06; see also Thomson, 147
F.3d 195 (refining Childress’ joint authorship test). After examination, this Court believes
Childress states the appropriate test for determining joint authorship.
The Seventh Circuit provided persuasive reasoning for doing so in Erickson, 13 F.3d
1061, 1067–71 (7th Cir. 1994) (Childress best satisfies statutory definition of joint work,
Childress’ “independently copyrightable contribution” requirement provides consistency,
promotes judicial efficiency, and reinforces goals of Copyright Act, and majority of courts
considering joint authorship have applied Childress). Moreover, several other district courts in
the Sixth Circuit have applied Childress and Erickson when confronting claims of joint
authorship. See Corwin v. Quinonez, 858 F. Supp. 2d 903, 910 (N.D. Ohio 2012); Downey v.
Downey, CIV 09-634-MRB-JGW, 2010 WL 3781715, at *2 (S.D. Ohio Aug. 26, 2010); Tang v.
Putruss, 521 F. Supp. 2d 600, 606 (E.D. Mich. 2007); Perry v. Herd, 1:04-CV-195, 2006 WL
335522, at *18–*19 (E.D. Tenn. Feb. 14, 2006); Balkin v. Wilson, 863 F. Supp. 523, 528 (W.D.
Mich. 1994).
As explained above, Childress requires a party claiming joint authorship to show that (1)
each party intended to be joint authors, and (2) each party made an independently copyrightable
contribution to the work. 945 F.2d at 505–06. With regard to intent, it is not enough that the
parties intend their contributions to be merged into “inseparable or interdependent parts of a
unitary whole.” See BTE v. Bonnecaze, 43 F. Supp. 2d 619, 623 (E.D. La. 1999) (citing
Childress, 945 F.2d at 507–08). Rather, the parties must “entertain in their minds the concept of
joint authorship.” Childress, 945 F.2d at 508; see also Thomson, 147 F.3d at 201 (“since
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coauthors are afforded equal rights in the co-authored work, the equal sharing of rights should be
reserved for relationships in which all participants fully intend to be joint authors.”) (internal
quotation marks omitted).
With regard to Childress’ second prong, a putative joint author’s contribution must be
independently copyrightable. Erickson, 13 F.3d at 1072. As such, ideas, refinements, and
suggestions are not sufficient to create joint authorship. Id. Rather, a party must identify
specific contributions that were fixed in a tangible medium. Id. at 1071; see also Bonnecaze, 43
F.Supp.2d at 628 (ideas and insights contributed by drummer of rock band insufficient to
establish joint authorship of underlying compositions, and drummer’s contributions to sound
recordings cannot serve as the required tangible expression for establishing joint authorship of
underlying compositions). “Providing sketches, ideas or supervision over copyrightable material
is not sufficient to make one a joint author.” BancTraining, 956 F.2d 268, at *3 (citing M.G.B.
Homes, Inc. v. Ameron Homes Inc., 903 F.2d 1486, 1493 (11th Cir. 1990) (providing sketches
and ideas does not constitute creating)).
Here, in support of their joint-author argument, Defendants offer deposition testimony
from Samuel Dorchen, Plaintiff’s Rule 30(b)(6) representative. Mr. Dorchen explains that Mr.
DeWitt contributed to the architectural plans Plaintiff created, but nowhere does he indicate that
Plaintiff intended Mr. DeWitt be considered a joint author. Further, Mr. Dorchen provided an
affidavit indicating that the architectural work in the plans was done solely by Plaintiff’s
employees and that the underlying copyrights remain with Plaintiff.3 Defendants have not
3
Defendants have expressed concern about the fact that Mr. Dorchen’s original affidavit, submitted with
Plaintiff’s response to Defendant’s Motion for Summary Judgment, was not signed. Although Plaintiff attached an
identical affidavit, this time with signature, to its response to Defendants’ Motion for Reconsideration, Defendants
assert that this affidavit “is in direct conflict” with Mr. Dorchen’s deposition testimony and must be ignored. Defs.’
Mot. 6. Plaintiff has indicated it intended to submit a signed affidavit before hearing on Defendants’ Motion for
Summary Judgment, but failed to do so when the Court cancelled the hearing and issued its Opinion and Order.
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established that both parties in this case intended the work be considered the product of joint
authors.
Further, as noted above, simply providing “sketches, ideas or supervision” is not
sufficient to make one a joint author. BancTraining, 956 F.2d 268, at *3. While Plaintiff’s
Houghton Lake Plan contained copyrightable material, Defendants have not adequately
demonstrated that Mr. DeWitt contributed independently copyrightable contributions to the
plans. In M.G.B. Homes, 903 F.2d at 1493, a client contributed to the creation of architectural
plans by producing sketches and retaining approval authority during the plan’s creation. The
Eleventh Circuit noted that “[s]uch involvement by a client in the preparation of architectural
plans is normally expected . . . . Such involvement does not, however, ordinarily render the client
an ‘author’ of the architectural plans.” Id. (citation and quotation marks omitted).
Defendants have not identified a triable issue of fact concerning whether James DeWitt
was a joint author of Plaintiff’s Roscommon Houghton Lake Plans. Mr. Dorchen’s deposition
testimony that Mr. DeWitt had input during the creation process is not inconsistent with Mr.
Dorchen’s assertion that Mr. DeWitt was not, nor was he ever intended to be, a joint author on
the project. Additionally, Defendants have not indicated any of Mr. DeWitt’s contributions were
independently copyrightable. Because Defendants cannot satisfy the Childress test, they have
not established that Mr. DeWitt is a joint author of any of Plaintiff’s plans, and there is no reason
As an initial matter, Mr. Dorchen’s affidavit does not contradict his deposition testimony as presented by
Defendants. His affidavit explains that the architectural work on the plans at issue was performed exclusively by
Plaintiff’s employees. His deposition testimony indicates that James DeWitt contributed ideas, sketches, and
supervision during the creation process. The two ideas are not mutually exclusive. Mr. Dorchen has never claimed
that Mr. DeWitt performed architectural functions, such as actually drafting the plans themselves, or that he acquired
an interest in the underlying copyrights. Customer input is undoubtedly useful to architects, as well as customary
when creating a custom plan, and such input does not indicate the client performed architectural work. Accordingly,
Mr. Dorchen’s affidavit does not contradict his deposition testimony, and need not be excluded on that basis.
Additionally, it is apparent that Plaintiff did not attempt to submit the affidavit with the sole intention of
contradicting previous deposition testimony. Instead, identical affidavits were submitted both before and after Mr.
Dorchen’s deposition was conducted. While the first was unsigned, such an oversight, while careless, does not
prevent this Court from considering it. Defendants have presented no authority indicating otherwise.
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to reconsider the Court’s Opinion and Order. The conclusions remain that Plaintiff is the sole
author of the Roscommon and Houghton Lake Plans, owning any copyrights comprised therein.
B
In the October 15, 2012 Opinion and Order, the Court also wrote that “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.” Opinion & Order, 3,
ECF No. 58.
Defendants request that the record be clarified, claiming that the only “contract” for
creating The Brook of Cheboygan plans was “a handshake between Mr. James DeWitt . . . and
Mr. Brian Ross, of Practical Engineers.” Defs.’ Mot. 2. Defendants emphasize that Mr. DeWitt
is president of DeWitt Builders AZ (DBA), and further state that Defendant Brook had no role in
the development of The Brook of Cheboygan facility. Id. Defendants do not, however, note that
Mr. DeWitt is also an officer and director of Defendant Brook in addition to being the president
of DBA.
Defendants also ignore the fact that The Brook Retirement Communities’ legal
counsel, William Carey, indicated that it was the Brook Retirement Communities that planned to
“move forward aggressively” with construction in Cheboygan, not merely DBA and Defendant
Practical.
Nevertheless, Defendants request will be granted — the statement that Defendant Brook
contracted with Defendant Practical will not be considered an established fact at this point in the
proceedings. This distinction, however, has no effect on the outcome of the Court’s opinion and
order. Who Practical contracted with to “create” The Brook of Cheboygan Plan is entirely
irrelevant to the determination of whether Plaintiff is the sole owner of the copyrighted material
for the The Brook of Houghton Lake plan. The statement in the Court’s opinion and order will
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be corrected concerning contractual agreement between Defendants Brook and Practical, but the
rest of the opinion and order will remain.
IV
Accordingly, it is ORDERED that Defendants’ Motion for Reconsideration, ECF No.
61, is DENIED.
It is further ORDERED that the following line, found on page 3 of this Court’s October
15, 2012 Opinion & Order, is deemed REMOVED: “It [Defendant Brook] contracted with
Defendant Practical Engineers, Inc. to create architectural plans for The Brook of Cheboygan
facility.” The outcome of the Court’s October 15, 2012 Opinion & Order, ECF No. 58, is
unchanged.
Dated: December 17, 2012
s/Thomas L. Ludington
THOMAS L. LUDINGTON
United States District Judge
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 December 17, 2012.
s/Tracy A. Jacobs
TRACY A. JACOBS
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