Rolwes Company v. Barnes et al

Filing 43

MEMORANDUM AND ORDER: IT IS HEREBY ORDERED that Plaintiff's Motion for Preliminary Injunction is GRANTED, IN PART, AND DENIED, IN PART, and that, upon receiving notice of this Order, Defendants, their officers, directors, managers, agents, s ervants, employees, attorneys and all persons acting in concert or participating with Defendants (hereinafter collectively referred to as Defendants) are hereby enjoined and restrained: see order for details....IT IS FURTHER ORDERED that the par ties shall submit a Joint Proposed Scheduling Plan, providing proposed dates for all items set forth i n Fed.R.Civ.P. 16(b)(3), within ten (10) days of the date of this Order. The parties joint proposed scheduling plan must include a proposed date for mediation of Plaintiffs claims.. Signed by District Judge John A. Ross on 7/25/14. (JWD)

IN THE UNITED STATES DISTRICT COURT FOR THE
EASTERN DISTRICT OF MISSOURI
EASTERN DIVISION
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ROLWES COMPANY,
Plaintiff,
vs.
LARRY G. BARNES, et al.,
Defendants.

Case No. 4:14cv1045

MEMORANDUM AND ORDER
This matter is before the Court on Plaintiff’s Motion for Preliminary Injunction. This
matter is fully briefed and ready for disposition.
STANDARD FOR PRELIMINARY INJUNCTION
Whether the Court should issue a motion for preliminary injunction is governed by
Fed.R.Civ.P. 65(a).1 “In determining whether a preliminary injunction should be issued, a
district court must take into account the threat of irreparable harm to the movant, the balance
between this harm and the harm to the other party if the injunction is granted, the probability of
movant's success on the merits, and the public interest.” Bank One, Utah v. Guttau, 190 F.3d
844, 847 (8th Cir. 1999)(citing Dataphase Systems, Inc. v. C.L. Systems, Inc., 640 F.2d 109, 113
(8th Cir.1981) (en banc)). The burden of establishing the propriety of a preliminary injunction is

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Fed.R.Civ.P. 65(a) provides: (1) Notice. The court may issue a preliminary injunction only on
notice to the adverse party. (2) Consolidating the Hearing with the Trial on the Merits. Before or
after beginning the hearing on a motion for a preliminary injunction, the court may advance the
trial on the merits and consolidate it with the hearing. Even when consolidation is not ordered,
evidence that is received on the motion and that would be admissible at trial becomes part of the
trial record and need not be repeated at trial. But the court must preserve any party's right to a
jury trial.

on the movant. Baker Elec. Coop., Inc. v. Chaske, 28 F.3d 1466, 1472 (8th Cir.1994); Modern
Computer Sys., Inc., v. Modern Banking Sys., Inc., 871 F.2d 734, 737 (8th Cir.1989) (en banc);
Interbake Foods, L.L.C. v. Tomasiello, 461 F. Supp. 2d 943, 955 (N.D. Iowa 2006). “‘No single
[Dataphase] factor in itself is dispositive; in each case all of the factors must be considered to
determine whether on balance they weigh towards granting the injunction.’” Baker Elec. Co-op.,
28 F.3d at 1472 (quoting Calvin Klein Cosmetics Corp. v. Lenox Labs., Inc., 815 F.2d 500, 503
(8th Cir.1987) (citing Dataphase, 640 F.2d at 114)). “However, a party moving for a preliminary
injunction is required to show the threat of irreparable harm.” Baker Elec. Co-op., 28 F.3d at
1472 (citing Modern Computer Sys., 871 F.2d at 737; Dataphase, 640 F.2d at 114).
BACKGROUND
Plaintiff, a homebuilder, filed a Complaint in this case alleging that Defendants
wrongfully copied its Rockport design, registered with the United States Copyright Office,
Registration No. VA0001833470, for a three bedroom, single family residence. (Complaint,
¶¶25, 28-42). Plaintiff has presented evidence that Defendants submitted photocopied Rockport
plans, with Plaintiff’s name and copyright notice removed, to the City of Arnold, Missouri and to
unincorporated Jefferson County, Missouri, in connection with permit applications. (Complaint,
¶42). Similarly, there is evidence that Defendants submitted the Rockport plans, in redrawn,
handwritten form, with Plaintiff’s name and copyright notice removed, to the City of
Herculaneum, Missouri, in connection with permit applications. (Id.)

Plaintiff claims that

Defendants are building or have built at least ten homes in the St. Louis metropolitan area that
infringe upon its copyright in the Rockport design. (ECF No. 5 at 3).
The Court heard oral argument on Plaintiff’s Temporary Restraining Order (“TRO”) on
June 10, 2014, and entered a TRO on June 13, 2014 (ECF No. 22). The TRO provided that

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Defendants were restrained from marketing for sale, contracting to sell, or constructing any three
bedroom, one story, two bath house with a design that would infringe on Plaintiff’s copyrighted
“Rockport” architectural work previously registered pursuant to Copyright Registration No. VA1-833-470 (ECF No. 1-2), including but not limited to a house with all of the following features:
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Two ancillary bedrooms at the front of the house;

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A master bedroom in the rear of the house on the same side of the house as the
ancillary bedrooms;

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The ancillary bedrooms and the master bedrooms are not connected by a common
hallway; and

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The master bedroom is accessed from a separate entry way off of the great room
towards the back of the house.

The Court, however, allowed Defendants to complete construction and closing on the sale of the
houses at the following addresses: 120 Pistis, Arnold, Missouri; 1024 Stonewick, Court, Arnold,
Missouri; 1015 Stonewick Court, Arnold, Missouri; and 1317 Durham Drive, Herculaneum,
Missouri. Plaintiff has posted a $75,000.00 bond.
On Tuesday, July 15, 2014, the Court held a preliminary injunction hearing, which
included the testimony of witnesses. Thereafter, the parties submitted their proposed findings of
fact and conclusions of law. (ECF Nos. 40, 41).
FINDINGS OF FACT
Defendant Larry Barnes and Defendant Lisa Barnes are the sole owners of K.A.B.
Construction Company L.L.C., which does business as KAB Homes.

(Plaintiff Rolwes

Company’s Proposed Findings of Fact, Conclusions of Law, and Order on Prayer for Preliminary

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Injunction (“PFacts”), ECF No. 40, ¶7). As owners of KAB Homes, Larry and Lisa Barnes have
the right and ability to direct the business. (PFacts, ¶6)
Defendants built a house using the Rockport design at 1317 Durham Drive in
Herculaneum, Missouri. (“1317 Durham”). (PFacts, ¶13). Defendants have been using 1317
Durham, located in the front of the Providence Park subdivision, as a model home and office to
market their business. (PFacts, ¶14; (Defendants’ Proposed Findings of Fact and Conclusions of
Law (“DFacts”), ECF No. 41, ¶2). Over 75 lots remain for sale in the Providence Park
subdivision. (DFacts, ¶1).
CONCLUSIONS OF LAW
I.

Standard for Copyright Infringement

“In order to make out a claim of copyright infringement for an architectural work—or
any 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., 12-3448-CV, 2014 WL 2521388, at *2 (2d Cir. June 5,
2014)(citing Arnstein v. Porter, 154 F.2d 464, 468, 472–73 (2d Cir.1946); Laureyssens v. Idea
Grp., Inc., 964 F.2d 131,139–41 (2d Cir.1992)). “[N]ot all copying from copyrighted material is
necessarily an infringement of copyright. There are elements of a copyrighted work that are not
protected even against intentional copying.” Attia v. Soc'y of New York Hosp., 201 F.3d 50, 54
(2d Cir. 1999). The opinion in Zalewski v. Cicero Builder Dev., Inc. provides good guidance to
the Court regarding when copying is wrongful:
When an original work contains many un protected elements, … a close similarity
between it and a copy may prove only copying, not wrongful copying. This is
because the similarity may derive only from these unprotected elements. For
clarity, the term “substantial similarity” is properly reserved for similarity that
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exists between the protected elements of a work and another work. If two works
are “substantially similar,” any copying was wrongful. ... By contrast, similarity
that relates to unprotected elements is probative only of copying—not wrongful
copying—and is referred to as “probative similarity.”
Zalewski, 2014 WL 2521388, at *3 (citation omitted).
Here, there is no question that, at least at some point, Defendants copied Plaintiff’s work,
particularly related to their submissions to the City of Herculaneum and City of Arnold. Before
the Court is the issue of whether the past copying was wrongful and whether future design plans
continue to be wrongfully copied. See Zalewski, 2014 WL 252138, at *2 (“The second and third
elements—copying and wrongful copying—are often confused.”). When reviewing these issues,
the Court must keep in mind that “[e]very work of art will have some standard elements, which
taken in isolation are un-copyrightable, but many works will have original elements—or original
arrangements of elements. The challenge in adjudicating copyright cases is not to determine
whether a work is a creative work, a derivative work, or a compilation, but to determine what in
it originated with the author and what did not.” Zalewski, 2014 WL 2521388, at *6. In this case,
“there is no doubt that Plaintiff's designs, although copyrightable, are replete with
uncopyrightable elements.” Zalewski, 2014 WL 2521388, at *4. Thus, the Court’s challenge is
to determine what aspects of Plaintiff’s Rockport design, if any, are copyrightable, and whether
Defendants’ designs feature substantially similar features. See Zalewski, 2014 WL 2521388,at
*7 (holding there was no copyright violation because even if the defendants copied the plaintiff's
plans, they copied only the unprotected elements of his designs).
II.

Injunction

First, the Court addresses to what extent Defendants should continue to be enjoined from
utilizing the copyrightable features of the Rockport design, and what those copyrightable

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features are. Defendant Larry Barnes and Rolwes’ architect John Albers have admitted that the
split bedroom layout serviced by two separate hallways is the only feature that is unique to a
home of that size (less than 1700 square feet). (DFacts, ¶5). During the hearing, Plaintiff argued
that the placement of the stairs for the basement and the open kitchen entry were unique features
for the Rockport. The Court does not believe that Plaintiff has shown that the placement of the
basement stairs and the unobstructed kitchen entry have been described with sufficient
particularity or that they are features that can be considered unique to the Rockport design,
especially because the testimony of Rolwes’ own architect, John Albers, does not support this
position. See Howard v. Sterchi, 974 F.2d 1272, 1276 (11th Cir. 1992)(“The variety of ways a
two-story rectangle can be divided into three bedrooms, two baths, a kitchen, a great room or
living room, closets, porches, etc., is finite. In architectural plans of this type, modest
dissimilarities are more significant than they may be in other types of art works.”)(holding that
relatively minor dissimilarities between two country style frame houses were significant and that
Plaintiffs “failed to establish by a preponderance of the evidence the substantial similarity of the
plans required to show copyright infringement”). Because both parties are in agreement that the
location of the bedrooms, which are serviced by two separate hallways, in 1700 square foot
house is unique to the Rockport design the Court will enjoin Defendants from constructing a
house with that particular design feature. See Attia v. Soc'y of New York Hosp., 201 F.3d 50, 56
(2d Cir. 1999)(“The placement of a new building, … the alignment of floor heights and
corridors, the creation of a continuous traffic loop” are not protectable); see Zalewski, 2014 WL
2521388, at *8 (“They [the plaintiff’s and defendants’ plans] are quite similar in location, size,
and general design, but again, the similarities are due primarily to the shared colonial archetype.
The window panes, shutters, and garage-door paneling all have subtle differences. Likewise, the

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designs' shared footprint and general layout are in keeping with the colonial style. There are only
so many ways to arrange four bedrooms upstairs and a kitchen, dining room, living room, and
study downstairs. Beyond these similarities, Plaintiff's and Defendants' layouts are different in
many ways. The exact placement and sizes of doors, closets, and countertops often differ as do
the arrangements of rooms. … Copying that is not so close would—and in this case did—only
capture the generalities of the style in which Plaintiff worked and elements common to all
homes. Defendants' houses shared Plaintiff's general style, but took nothing from his original
expression.”).
Further, the Court finds that Plaintiff has satisfied the Dataphase factors, particularly
irreparable harm, that justify the Court granting an injunction. Specifically, Plaintiff has shown
that it will succeed on the merits and demonstrated that it has been injured by Plaintiff
wrongfully utilizing its Rockport design. Plaintiff has not been compensated by Defendants for
using its design, which includes at least some unique and copyrightable aspects. Thus, the Court
preliminarily enjoins Defendants from marketing for sale, contracting to sell, or constructing any
three-bedroom, one story, two bath house which includes all of the following features:
a. Two ancillary bedrooms which each include a wall that runs along the front of the
house;
b. A master bedroom in the rear of the home on the same side of the house as the
ancillary bedrooms;
c. The ancillary bedrooms are accessible from a hallway that does not provide access to
the master bedroom; and
d. The master bedroom is accessed from a separate entry way off of the great room
towards the back of the house.
This preliminary injunction, however, does not preclude Defendants from selling the house
located at 1317 Durham, Herculaneum, Missouri 63048.
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Next, the Court addresses whether Defendants can continue to utilize 1317 Durham for
business purposes. Defendants contend that Plaintiff has not demonstrated that it has suffered an
irreparable injury or will suffer an irreparable injury due to Defendants’ use of 1317 Durham.
There appears to be some dispute over whether Defendants were actually marketing the floor
plan for 1317 Durham. Plaintiff claims that Defendants are not notifying visitors (and potential
customers) to 1317 Durham that the house is not a home designed, created, or owned by
Defendants, and are leaving visitors (and potential customers) with the impression that the home
design is available to be built by Defendants. (PFacts, ¶¶20, 23).2 The Court finds that this
inquiry is not dispositive of whether Defendants should be allowed to continue using 1317
Durham to meet with customers and potential customers. Even if Defendants are not currently
marketing the Rockport design for sale or construction, the Court holds that Defendants’ use of
1317 Durham to meet with customers and potential customers harms Plaintiff. By allowing 1317
Durham to be representative of KAB Homes’ work product, Defendants are unfairly employing
Plaintiff’s design to further their business interests. Defendants are utilizing 1317 Durham to
showcase their workmanship and are unfairly appropriating and promoting Plaintiff’s design as
their own. The Court finds that Defendants are irreparably harming Plaintiff because Defendants
are using Plaintiff’s design to their advantage. Therefore, the Court enjoins Defendants from
meeting with customers and potential customers at 1317 Durham. The Court finds that this
restriction does not impose an undue hardship or burden on Defendants because they have
available alternatives for office space in the Providence Park subdivision. See, e.g., PFacts,
¶¶24-25. The Court also notes that while it is enjoining Defendants from utilizing 1317 Durham

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This is based primarily upon the testimony of Plaintiff’s employee, Ms. Christine Pratt. Ms.
Pratt, however, was informed that floor plans for the design were “unavailable”. Defendants
presume that their agent meant that the 1317 Durham, or a home identical to that building, was
not for sale. (ECF No. 41, ¶¶4-5, n.1).
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to meet with customers and potential customers, the Court does not enjoin the sale or transfer of
1317 Durham.
Accordingly,
IT IS HEREBY ORDERED that Plaintiff’s Motion for Preliminary Injunction is
GRANTED, IN PART, AND DENIED, IN PART, and that, upon receiving notice of this
Order, Defendants, their officers, directors, managers, agents, servants, employees, attorneys and
all persons acting in concert or participating with Defendants (hereinafter collectively referred to
as Defendants) are hereby enjoined and restrained:
(a) From marketing for sale, contracting to sell, or constructing any three bedroom, one
story, two bath house with a design that would infringe on Plaintiff’s copyrighted
“Rockport” architectural work previously registered pursuant to Copyright Registration
No. VA-1-833-470 (ECF No. 1-2), including but not limited to a house with all of the
following features:
-

Two ancillary bedrooms at the front of the house;

-

A master bedroom in the rear of the house on the same side of the house as the
ancillary bedrooms;

-

The ancillary bedrooms and the master bedrooms are not connected by a common
hallway; and

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The master bedroom is accessed from a separate entry way off of the great room
towards the back of the house.

(b) Notwithstanding the foregoing, Defendants may proceed to complete construction and
closing on the sale of the houses at the following addresses:
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120 Pistis, Arnold, Missouri;

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1024 Stonewick, Court, Arnold, Missouri;

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1015 Stonewick Court, Arnold, Missouri; and
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1317 Durham Drive, Herculaneum, Missouri.

The Court does not grant equitable relief as to these four houses because, if it is
determined that Plaintiff incurred damages due to Defendants’ infringement on these four
houses, then Plaintiff has an adequate remedy at law.
(c) Defendants are enjoined from meeting with customers and potential customers at 1317
Durham Drive, Herculaneum, Missouri. The Court again notes that it does not enjoin the
sale or transfer of this property.
(d) This injunction will remain in effect until further order of the Court. The bond will
continue in full force and effect.
IT IS FURTHERORDERED that the parties shall submit a Joint Proposed Scheduling
Plan, providing proposed dates for all items set forth in Fed.R.Civ.P. 16(b)(3), within ten (10)
days of the date of this Order. The parties’ joint proposed scheduling plan must include a
proposed date for mediation of Plaintiff’s claims.

Dated this 25th day of July, 2014.

JOHN A. ROSS
UNITED STATES DISTRICT JUDGE

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