HANOVER ARCHITECTURAL SERVICE, P.A. v. CHRISTIAN TESTIMONY-MORRIS, N.P. et al

Filing 166

OPINION. Signed by Judge Kevin McNulty on 5/18/15. (DD, )

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW JERSEY

HANOVER ARCHITECTURAL SERVICE,
P.A.,

Civ. No. 2:10-5455
(KM)(SCM)

Plaintiff,
OPINION

V.

CHRISTIAN TESTIMONY-MORRIS, N.P.,
et al.,
Defendants.

KEVIN MCNULTY, U.S.D.J.:
This is a contract dispute between architect and client, in which
the architect also claims infringement of copyright. The plaintiff, Hanover
Architectural Service, P.A. (“Hanover”), entered into three contracts with
defendant Christian Testimony-Morris, N. P. (“Christian Testimony”).
These contracts required Hanover to provide architectural design services
for a “Conversion Project” at Christian Testimony’s new church facility.
Christian Testimony claims that Hanover breached the contracts in
numerous ways, for example by refusing to accommodate Christian
Testimony’s design requests and by failing to obtain certain necessary
construction permits for the Conversion Project. Finding Hanover’s
performance deficient, Christian Testimony hired a replacement
architect. Hanover claims that Christian Testimony’s new architect
copied Hanover’s copyrighted design plans.
Hanover is suing Defendants Christian Testimony; Visbeen
Construction Co., D.P.; Peter Raymond Wells, Architect, LLC; Reiner

1

Group, Inc.; Energy Saving and Electrical Corp., Inc.; James Chang;
Kenneth Visbeen; Peter Raymond Wells; Jinfar Liu; and John Does 1—
10,1 for copyright infringement and conspiracy to commit copyright
infringement under 17 U.S.C.

§ 101 et seq.; removal/alternation of

copyright management information and conspiracy to commit
removal/alteration of copyright management information under 17
U.S.C.

§ 1202(b) et seq.; providing false copyright management

information and conspiracy to provide false copyright management
information under 17 U.S.C.

§ 1202(a) et seq.; and negligent

misrepresentation. (See Amended Complaint, ECF No. 22.) Hanover
seeks declaratory judgment, an accounting of profits, injunctive relief,
statutory damages, actual damages, compensatory damages, punitive
damages, treble damages, interest, costs, and attorneys’ fees.
Christian Testimony counterclaims for breach of contract, a
declaratory judgment, and cancellation of certain copyright registrations.
(See Answer & Counterclaims, ECF No. 32.)
Now before the court are the following motions:
(1) Hanover’s motion for partial summary judgment on Christian
Testimony’s first counterclaim for breach of contract (ECF No.
101, the “101 Motion”);
(2) Hanover’s motion for summary judgment on all of the claims in
its amended complaint (ECF No. 116, the “116 Motion”); and
(3) Christian Testimony’s cross-motion for summary judgment on
all claims in Hanover’s amended complaint, as well as Christian
Testimony’s counterclaim for breach of contract (ECF No. 124,
the “124 Motion”).

In general, the distinction between Christian Testimony and the
individual defendants is immaterial to the legal issues on this motion. As the
context requires, references to Christian Testimony may be read to encompass
the individual defendants as well.

2

For the reasons set forth below, all motions for summary judgment
are DENIED.
I.

BACKGROUND
2
A. Facts
Plaintiff Hanover is a New Jersey corporation with a principal place

of business in Morris Plains, New Jersey. (CT 124 Stmt. ¶3.)
Defendant Christian Testimony is a New Jersey non-profit
corporation with a principal place of business in Boonton, New Jersey.
(Id. ¶1.) It is a born-again Christian church with a congregation of about
three hundred. (Id. ¶2.)
Defendant James Chang is a Brother of the church. (Id. ¶1.)
Defendant Chiming (“Jimmy”) Liou, a New Jersey resident and an
architect, is the principal owner of Hanover. (Id. ¶4.)
Defendant Visbeen Construction, Co., D.P. (“Visbeen
Construction”) was the general contracting firm involved with the
Conversion Project. (Id. ¶5.) Kenneth Visbeen is its owner. (Id.)
Defendant Peter Raymond Wells Architect, LLC (“Wells Architect”)
is the architectural firm Christian Testimony hired after Hanover. (Id.
¶6.) Peter Raymond Wells is its principal. (Id.)
Defendant Reiner Group, Inc. (“Reiner Group”) was hired by
Christian Testimony to design the heating, ventilation, and air
conditioning (“HVAC”) system for the Conversion Project. (Id. ¶7.)
Defendant Energy Savings & Electrical Corp., Inc. (“ESEC”) was
hired by Christian Testimony to design the fire alarm system for the

The record is so voluminous that full record cites, with abbreviations
defined in text, would be unworkable. Attached as an addendum to this opinion
is a key to the record citation abbreviations used in text.

2

3

Conversion Project. (Id. ¶8.) Jinfar Liu is its principal. (Id.)
Christian Testimony and Hanover entered into three agreements
requiring Hanover to provide architectural services for the Conversion
Project. It is undisputed that Christian Testimony paid Hanover in full
for all of the services Hanover performed under all of the agreements. (CT
124 Stmt. ¶j45, 57, 80 (citing Chang Deci. ¶J45, 56, 74); Han. 124

Resp. ¶J45, 57.)
a. First Agreement
On or about March 13, 2005, Christian Testimony entered into the
first of the three agreements with Hanover (“First Agreement”), which
required Hanover to provide architectural services for Christian
Testimony’s plan to modify its existing church facility. (CT 124 Stmt. ¶9;
Han. 124 Resp. ¶9; Chang Deci. Ex. 1.) Christian Testimony states that
the First Agreement was entered into for the purpose of obtaining a
variance from the Township of Parsippany for the project. (CT 124 Stmt.
¶9.)
The First Agreement related to the remodeling of Christian
Testimony’s existing building at 42 Intervale Road, Parsippany, NJ. The
remodeling was to include the following: a main entrance, vestibule and
lobby; Chinese and English sanctuaries; three baby/toddler rooms
adjacent to Chinese sanctuary; a cafeteria and kitchenette; additional
large classrooms; Elder and English fellowship rooms; a children worship
room; five offices; a library; and restrooms per the plumbing code
requirements. (CT 124 Stmt. ¶11 (citing Chang Deci. ¶14, Ex. 1).)
Hanover generally “den[ies] the allegations of Paragraph 80” (Han. 124
Resp. ¶80), which reads: “Despite Hanover’s refusal to perform as required
under the agreements it created, Christian Testimony paid Hanover in full in
the amount of $10,200 for its services rendered under the [Third Agreementj,
plus additional costs for overtime.” (CT 124 Stmt. ¶80 (citing Chang DecI. ¶74).)
Hanover does not allege or point to evidence, however, that it was unpaid or
underpaid. Hanover’s dispute with paragraph 80 may therefore be limited to the
first part of the statement, regarding its alleged “refusal to perform.”

4

Hanover’s responsibilities under the First Agreement included the
following: reviewing existing building plans; creating an architectural
design for the purpose of variance application; participating in three
meetings to finalize the design; attending one public hearing; and
producing twenty sets of blueprints for the purpose of the variance
application. (Chang Deci. Ex. 1.)
Specifically excluded from Hanover’s duties were the following: (1)
“confirmation of zoning ordinances regarding use, setbacks, building
coverage and height and etc.”; (2) “variance application and attending
public hearing unless otherwise noted”; (3) “measurement of existing
building”; (4) “certification of existing structure and conditions”; (5)
“construction drawings and details design”; (6) “engineering, parking lot,
landscaping designs and grading plan”; (7) “estimation, contract
administration, site visits, inspections and supervision.” (Id. (“Services
Not By Architect”).)
Liou testified that Chang advised him, after the first official design
for the project was completed, that the budget for Conversion Project was
to be $1.2 million. (CT 124 Stmt. ¶13 (citing Liou Dep. 43:21—44:7; Han.
124 Resp. ¶13.)
Hanover’s fee under the First Agreement was to be $7,000, plus
$400 for each public hearing attended; $120 per hour spent making
design changes requested by Christian Testimony or the Township of
Parsippany; $120 per hour for any additional meetings; and $3 per sheet
of additional blueprints (plus postage for delivery). (Chang Deci. Ex. 1.)
The Agreement provided for the adjustment of service fees “if the scope of
the proposed project changes during [the] design period.” (Id.)
Christian Testimony created “the original drawing and existing
layout for the project,” as well as four other presentations for the layout,
and gave copies to Hanover. (CT 124 Stmt. ¶fl5—17 (citing Chang Deci.

5

¶J17—19, Ex. 5, 6).4) Hanover drafted another layout on March 29, 2005,
which it sent to Christian Testimony. (Id. ¶18 (citing Chang Deci. ¶20,
Ex. 7).)
Christian Testimony and Hanover then collaborated in the design
process. (Id. ¶J19—26 (citing Chang DecI. ¶21—31 (citing Ex. 8).) Christian
Testimony proposed many changes to the designs, which were ultimately
incorporated into the final layout. (Id.) The design was finalized on June
1, 2005. (Id. ¶28 (citing Chang Decl. ¶30, Ex. 9).)
b. Second Agreement
On September 20, 2005, Christian Testimony and Hanover entered
into a Second Agreement, prepared by Hanover. (Han. 116 Stmt. ¶19
5
(citing 2d Am. Liou Decl. ¶19); Chang Deci. Ex. 2.) Christian Testimony
says that the Second Agreement was signed “based on the assumption
that the variance would be approved shortly.” (CT 124 Stmt. ¶46 (citing
Chang Deci. ¶46).)
The Second Agreement required Hanover (1) to provide
architectural design and construction drawings for the building itself, the
electrical fixtures, the plumbing, the fire protection layout; (2) to attend
three meetings to finalize the designs (for a total of six hours); (3) to
provide ten sets of blueprints for construction purposes, including two
sets for the construction permits applications; and (4) to ensure that any
modifications to the building comply with building code requirements
during the permits application process. (Chang Deci. Ex. 2.)
The Second Agreement explicitly excluded from Hanover’s duties
Hanover says it disputes this and certain other paragraphs, but does not
cite to any evidence.

4

Hanover has submitted several declarations from Chiming “Jimmy” Liou
in support of its moving papers. At times, Hanover is unclear about the
particular declaration it is citing in its statements of facts, although I have tried
to correlate them by content. The abbreviations used here for the various Liou
declarations are contained in the Addendum, infra.

6

the following services: (1) “confirmation of zoning ordinances regarding
use, setbacks, building coverage and height and etc.”; (2) “variance
application and attending public hearing”; (3) “construction permits
application and fees incurred by any jurisdictional agencies or any fees
incurred by owner hiring consultants”; (4) “certification of existing
structure and conditions”; (5) “structural design”; (6) “electrical panels,
load and wiring design”; (7) “mechanical and cooling/heating systems
designs”; (8) “automatic sprinkler system design”; (9) “site engineering,
parking lot, landscaping designs and grading plan”; (10) “kitchen and
built-in cabinets detail designs”; and (11) “estimation, contract
administration, site visits, inspections and supervision.” (Id. (“Services
Not By Architect”).)
Hanover was to be paid $17,000, plus $120 per hour spent making
design changes requested by Christian Testimony after the completion of
design meetings; $120 per hour for any additional meetings; $150 per
site visit requested by Christian Testimony or the contractors during the
construction period (up to an hour); and $3 per sheet of additional
blueprints (plus postage for delivery). (Id.) The Agreement provided for
the adjustment of service fees “if the scope of the proposed project
changes during [thel design period.” (Id.)
Christian Testimony contends that the purpose of the Second
Agreement was to enable Christian Testimony to obtain construction
permits. That is why, it says, the Second Agreement explicitly required
that any designs comply with building code requirements. (CT 124 Stmt.
¶55 (citing Chang Deci. ¶54, Ex. 2).)
Christian Testimony contends that Hanover did not complete its
performance under the Second Agreement because (1) it “only provided
the basic building design and design of lighting fixtures (not the entire
electrical system design)”; (2) Hanover did not provide plumbing design,
“other than plumbing fixtures and riser diagram”; and (3) Hanover did
7

not provide designs for fire protection and the automatic sprinkler
system, “other than some modifications to the sprinkler system layout.”
(CT 124 Stmt. ¶56 (citing Chang Deci. ¶55).) Hanover maintains that (1)
the Second Agreement “specifically excluded complete electrical design”
and that designs of electrical panels, load and wiring design, and
switches and receptacles “were subsequently removed from Hanover’s
scope of services following discussions with James Chang in 2007 as a
result of redundancy with work being performed by the electrical
engineer”; (2) the requirement to complete the plumbing designs “was
subsequently deleted in exchange for the design of secondary sanctuary
clerestory”; and (3) that the mechanical engineer on the project proposed
a new wet pipe sprinkler system that rendered the provision of a fire
protection layout (specifically, the modification of the existing automatic
sprinkler system layout) unnecessary. (Han. 124 Resp. ¶56 (citing Liou
Supp. Decl.

¶1J4, 19, 20).)
c. Third Agreement

On or about October 19, 2006, The Township of Parsippany
granted a variance, and Christian Testimony entered into the Third
Agreement with Hanover. (CT 124 Stmt. ¶58 (citing Chang Deci. ¶57);
Han. 116 Stmt. ¶21; Chang Decl. Ex. 3.)
Under the Third Agreement, Hanover was required (1) to provide
architectural design and construction drawings for the building, the
electrical fixtures, and the plumbing; (2) to attend two meetings to
finalize the designs (four hours total); (3) to provide ten sets of blueprints
for construction purposes, including two sets for the permits
applications; and (4) to ensure that modifications comply with building
code requirements during the permits application process. (Chang Deci.
Ex. 3.)
The Third Agreement excluded the same duties as the Second

8

Agreement. (See id. (“Services Not By Architect”).)
Hanover’s fee under the Third Agreement was $10,200, plus $120
per hour spent making design changes requested by Christian Testimony
after the completion of design meetings, $120 per hour for any additional
meetings, $150 per site visit requested by Christian Testimony or the
contractors during the construction period (up to an hour and prorated
thereafter), and $3 per sheet of additional blueprints (plus postage for
delivery). (Id.) The Agreement provided for an adjustment of service fees
“if the scope of the proposed project changes during [the] design period.”
(Id.)
Christian Testimony states that in or about June 2007, Hanover
estimated that construction costs for the project would be about $1.5
million. That figure, according to Christian Testimony, was 50% over the
“original budget.” (CT 124 Stmt. ¶66 (citing Chang Dccl. ¶63).) Hanover
denies ever agreeing to a particular budget. (Han. 124 Resp. ¶66 (citing
Liou Supp. Deci. ¶21).) The Third Agreement does not mention a
particular budget for the construction costs. (Chang Deci. Ex. 3.)
Christian Testimony says that because it was concerned about the
estimated construction costs based on Hanover’s designs, it solicited
budget proposals from other general contractors. (CT 124 Stmt. ¶67
(citing Chang Dccl. ¶63).) Other contractors estimated that construction
costs would range from $3.5 to $4.2 million. (Id.) Hanover contends that
these estimates included work that was specifically excluded from
Hanover’s design responsibilities. (Han. 124 Resp. ¶67.)
The Third Agreement requires Hanover to provide services for the
permits applications, such as providing sets of blueprints and ensuring
that any modifications comply with building code requirements, but it
also specifically excludes “construction permits application and fees”
from Hanover’s responsibilities. (Chang Dccl. Ex. 3.) Christian Testimony

9

interprets this language to mean that Hanover’s responsibilities included
obtaining construction permits from the Parsippany Township. (CT 124
Stmt. ¶69 (citing Chang Deci. ¶65).) Hanover disputes this, arguing that
“permits applications were specifically excluded from [the] Agreements.”
(Han. 124 Stmt. ¶69 (citing Supp. Liou Deci. ¶J23—24).)
Christian Testimony contends that “Hanover incorrectly classified
the facility under the relevant building codes,

.

.

.

thus requiring the

addition of a firewall that was not included in the plans as originally
prepared by Hanover.” The firewall, it says, would have greatly increased
the cost of the project. (CT 124 Stmt. ¶j7O—71 (citing Wells Deci. ¶9;
Chang Decl. ¶j66—67; Visbeen Deci. ¶6).) According to Christian
Testimony, Hanover refused to correct this mistake despite many
meetings with the Parsippany Building Department, resulting in delay

and increased costs. (Id. ¶72 (citing Chang Deci. ¶68; Visbeen Decl. ¶4).)
Christian Testimony says Hanover was asked by the Parsippany Building
Department to revise its design plans three times because the plans
failed to meet the Building Department’s requirements. (Id. ¶73 (citing
Chang Decl. ¶69; Visbeen Deci. ¶4).)
Christian Testimony also accuses Hanover of refusing to
accommodate its requests for design modifications to eliminate certain
features that would have exceeded Christian Testimony’s budget—in
particular, a large decorative arch and clerestory. (CT 124 Stmt. ¶J76—78
(citing Chang Decl. ¶J72—73, Ex. 14).) Christian Testimony says Hanover
refused to continue to perform its duties under the Third Agreement
unless it was appointed construction administrator. (CT 124 Stmt. ¶79
(citing Chang Decl. ¶73, Ex. 14).) Christian Testimony cites a letter from
Liou on September 19, 2007, in which he writes:
Since the beginning of design stage in 2005 until early June
this year, I had been informed many times that your church
formally decided to hire my firm to perform the management
At present time, I am told
services during construction.
.

.

10

.

that your church has not decided whether or not a
[construction administration] service is necessary.
In
order to prevent further damages, I decided not to provide
any services including [construction administration] to your
church from now on except the building code compliance
during permit application.
Regarding the design revisions
related to cost reduction, I have had tough time to figure out
how to modify the main sanctuary. I spend extra hours to
design that beautiful space to glorify our Lord. The requests
came out from the [general contractor] and some of you will
transform the main sanctuary to a space without any
meaning. I don’t want such a design created by a [general
contractor] and some of you to bear my name and damage
my reputation of creativity. This is the reason that I won’t
provide service for the design revisions related to cost
reduction.
.

.

.

.

.

.

(Chang Deci. Ex. 14.) Hanover disputes the authenticity of the email,
stating that certain words have been changed and others added. (Han.
124 Resp. ¶88.)
Christian Testimony calls Hanover’s refusal to make design
modifications a breach of the agreements. (CT 124 Stmt. ¶J89—9O.)
d. Construction permits
Christian Testimony says that Hanover’s refusal to make design
modifications meant that Christian Testimony had to hire a second
architect, Peter Wells, to create new drawings to reduce the projected
construction costs by more than $1 million. (CT 124 Stmt. ¶94 (citing
Chang Decl. ¶83).) This resulted in a delay of one year before the
construction permits were issued. (Id. ¶95 (citing Chang Deci. ¶84; Wells
Deci. ¶9; Visbeen Decl. ¶6).) Christian Testimony clarifies that at the
time Wells was hired, the Parsippany Building Department had issued a
demolition permit, but not construction permits. (Id. ¶96 (citing Chang
Decl. ¶85, Ex. 17; Wells Decl. ¶j3, 9; Visbeen Decl. ¶5).) Although the
permit (dated April 21, 2008) appears to be a construction permit (Chang
Decl. Ex. 17), Visbeen clarifies that the following indicates that the

11

permit was for demolition only: (1) on the “building subcode technical
section,” page, it states “THIS PROJECT HAS NOT BEEN APPROVED
FOR ANY STRUCTURAL WORK,” and “THIS PROJECT HAS NOT BEEN
APPROVED FOR ANY HVAC WORK”; (2) the permit itself only has an “X”
in the “building” box, which means mechanical work is not allowed; and
(3) Christian Testimony only paid $300 for the permit, rather than the
crossed-out original cost of $35,295. (Visbeen Deci. ¶5, Chang Deci. Ex.
17.)
Hanover’s position is that the April 21, 2008 permit covered the
portion of the project for which Hanover was responsible and permitted
construction. (Han. 124 Resp. ¶95 (citing Tomiano Report).) Hanover
says the structural and HVAC work was specifically excluded from
Hanover’s duties under the Agreements. (Id.) Hanover states that the
permit specifically indicated that the Building Department accepted the
“Architectural

—

A sheets,” which were the drawings Hanover prepared,

and “did not include demolition.” (Id. ¶J95—97 (citing Tomiano Report).)

e. Discussions regarding construction
administration
Christian Testimony and Hanover discussed the possibility of
Hanover’s being retained for the job of construction administrator as
well. (CT 124 Stmt. ¶31 (citing Chang Deci. ¶33); Han. 124 Resp. ¶33.)
Hanover claims that Christian Testimony made numerous promises
between March 13, 2005 and September 20, 2005 to Hanover, and to
Liou in particular, that it would retain Hanover as construction
administrator if Christian Testimony successfully obtained the variance
it needed. (Han. 116 Stmt. ¶J16, 20 (citing 2d Am. Liou Decl. ¶j16, 20).)
Hanover claims that those promises induced Hanover to agree to perform
its services under the Second and Third Agreements at a lower price than
it otherwise would have charged. (Id. ¶fl8, 22 (citing 2d Am. Liou Deci.
¶j18, 22).)

12

Christian Testimony maintains that, although Hanover repeatedly
requested that it be appointed construction administrator, Chang made
no such promises. (CT 116 Resp. ¶16 (citing Supp. Chang Deci. ¶j3, 5—
10).) Chang also says that Christian Testimony was not aware of
Hanover’s reasoning for its prices, that Hanover “never mentioned a word
to us about other rates or.

.

.

a discount,” and that the only mention of

prices came at the time of the Third Agreement, when Liou “mentioned
that he had not raised his prices in over a year since his first agreement
with us because this was a ‘church project.”’ (Supp. Chang Deci. ¶7; CT
116 Resp.

¶ 18.)

Furthermore, in an email to Chang, Liou wrote “[yjour

church is not obligated to hire my firm for the service of construction
administration.” (CT 124 Stmt. ¶32 (citing Chang Deci. ¶34, Ex. 106).)
Hanover claims that on June 7, 2007, Chang informed Hanover
that Christian Testimony would not be retaining Hanover for the
construction administration portion of the Conversion project. (Han. 116
Stmt. ¶24 (citing 2d Am. Liou Decl. ¶24).) Christian Testimony has a
different version of events: (1) that as of June 7, 2007, Christian
Testimony had not yet decided whether to use a “Project Management
construction method” (recommended by Hanover) or a “General
Construction method”; (2) that at the June 7, 2007 meeting, Chang
asked Hanover to bid for the construction administration part of the
project; (3) that Hanover declined to bid on the project; and (4) that
Christian Testimony eventually selected the General Construction
method and Visbeen Construction as the general contractor. (CT 116
Resp. ¶24 (citing Supp. Chang DecI. ¶9; Chang Decl. Ex. 167).)

Although Chang declares that the date of this email is August 23, 2007
(Chang Deci. ¶34), the actual exhibit is undated.

6

Once again, Chang declares that Liou’s email was dated August 15,
2007; however, the actual exhibit is undated.

13

f

Alleged copyright Infringements

Liou has submitted seven copyright office documents to this Court:
five original copyright registrations and two supplemental registrations.
Liou registered the copyright of his preliminary design plans for the
Conversion Project as “architectural work” with the United States
Copyright Office under the name “Chiming Liou” (VA 1-627-039; effective
date September 7, 2007). (Amended Complaint Ex. 18, ECF No. 221.8)
Liou registered the first revision of the design plans as “2-D artwork, map
and/or technical drawing’ with the Copyright Office under the name
“Chiming Liou, dba also known as Jimmy Liou” (VA 1-714-623; effective
date April 18, 2010). (Id. Ex. 19, ECF No. 22-2, 3, 4.) Then, Liou filed
supplemental registrations to correctly identify Hanover as the owner of
the copyrights, rather than himself (VA 1-432-357 and VA 1-432-358;
effective date June 22, 2010). (Id. Ex. 18, 19.) Liou also registered the
first revision of the designs as “architectural work,” with an effective date
of June 24, 2010 (VA 1-731-230). (Id. Ex. 19.) Liou registered the second
revision of the designs as both a “map and/or technical drawing,” (VA 1731-235) and “architectural work,” with an effective date of June 24,
2010. (Id. Ex. 20, ECF No. 22-5, 6.)
Hanover informed Christian Testimony on September 5 and 19,
2007, that Hanover’s copyrighted designs could not be used by Christian
Testimony or any of its hired professionals without obtaining written
permission from Hanover. (Han. 116 Stmt. ¶j29—30 (citing Han. 116
Mot. Ex. 8, 9).)
On April 23, 2008, Christian Testimony’s counsel, Paul E. Rusen,
informed Hanover that Christian Testimony had the exclusive rights to
use Hanover’s design plans, that Christian Testimony intended to use
Hanover’s motion exhibits were not filed on ECF in full. For convenience,
I here refer to the duplicate copies of these particular exhibits that were
electronically filed with Hanover’s Amended Complaint.
8

14

the design plans, and that Wells was appointed as construction
administrator. (Han. 116 Stmt. ¶32 (citing Han. 116 Mot. Ex. 10, ECF
No. 122-1).) On June 20, 2008, Rusen sent a second letter stating that
Christian Testimony would not be using Hanover’s designs for the
Conversion Project because the Parsippany Building Department had
only issued a “contingent construction permit”—permitting demolition
only—based on Hanover’s designs. (Id. ¶33 (citing Han. 116 Mot. Ex. 11,
ECF No. 120-2).) On July 1, 2008, Rusen sent a third letter, warning
Hanover not to interfere with the Conversion Project (after hearing
Hanover had spoken with the Parsippany Building Department),
reminding Hanover that it was no longer the architect on the job, and
informing Hanover that Christian Testimony would be redesigning the
project on its own. (Id. ¶34 (citing Han. 116 Mot. Ex. 12, ECF No. 1202).)
Christian Testimony’s new architect, Wells, created new drawings
for the Conversion Project, which Hanover says are “substantially
similar” to its own plans, and Christian Testimony says are “entirely new
drawings.” (Han. 116 Stmt. ¶1J35—36; 116 Mot. Ex. 17, ECF No. 12 1-3,
12 1-4 (Report of Douglass Asral, Registered Architect); 2d Am. Liou Deci.
¶35); CT 116 Resp. ¶J35—36.) Hanover’s position is that Wells removed
and altered the “CMI” (copyright management information) and title
blocks from Hanover’s design plans, but otherwise simply reproduced the
plans, without Hanover’s permission. (Han. 116 Stmt. ¶37 (citing 116
Mot. Ex. 13, ECF’ No. 120-3; 2d Am. Liou Deci. ¶37).)
Christian Testimony contends that because Hanover sent the
designs in read-only pdf format, “Wells could not have simply copied
Hanover’s plans as Hanover has alleged, much less simply removed
Hanover’s title block from the plans and placed his own firm’s name
there instead.” (CT 124 Stmt. ¶j103—104 (citing Wells Decl. ¶J6—7).)
Christian Testimony says Wells’ drawings are different from Hanover’s in

15

many ways, for example, Wells omits large arches and a clerestory from
his drawings. (CT 116 Resp. ¶37 (citing Wells Decl. ¶J6—8).)
On April 12, 2010, Chang and Liou had a telephone conversation
regarding the Conversion Project. (Han. 116 Stmt. ¶42.) Liou says that he
called to inquire about the approval process for the Conversion Project
and that Chang “mentioned that Christian Testimony-Morris had not
redesigned the project before constructing it.” (2d Am. Liou Deci. ¶42.)
Chang says that Liou called “to apologize that he did not come to
Christian Testimony’s August 15, 2009 celebration meeting to which we
had invited him,” and that, when Chang was asked about the status of
the construction, he “mentioned to [Liou] only that we were using the
conceptual layout from the variance approval that the Church itself
originally designed before Hanover started work and for which we paid
Hanover in full prior to completion of its responsibilities.” (Supp. Chang
Decl. ¶12.)
B. Procedural history
Hanover first filed a complaint on October 21, 2010. (ECF No. 1.)
Defendants moved to dismiss on January 18, 2011. (ECF No. 10.)
Hanover then filed an amended complaint on March 28, 2011. (ECF No.
22.) Defendants once again moved to dismiss on April 25, 2011. (ECF No.
23.) On November 29, 2011, Judge Wigenton granted Defendants’ motion
to dismiss Hanover’s fraud claim, but denied the motion as to all other
claims. (Opinion ECF No. 28; Order ECF No. 29.) Her opinion noted that
Hanover voluntarily withdrew its unfair competition claim. (Id.)
On December 28, 2011, Defendants filed an answer to the
amended complaint along with counterclaims. (ECF No. 32.)
On August 9, 2012, this case was reassigned from Judge Wigenton
to me. (ECF No. 53)
On October 3, 2012, Hanover filed a motion for partial summary

16

judgment on Christian Testimony’s counterclaim for breach of contract.
(ECF No. 54.) That motion was referred to Judge Dickinson R. Debevoise
for decision.
On January 24, 2014, Judge Debevoise partially granted Hanover’s
motion for summary judgment as to two parts of Christian Testimony’s
counterclaim, finding that they sounded in malpractice and therefore ran
afoul of New Jersey’s requirement of an Affidavit of Merit. Judge
Debevoise denied the motion in all other respects. (Opinion ECF No. 97;
Order ECF No. 98.) On February 10, 2014, Christian Testimony moved
for reconsideration of Judge Debevoise’s order granting partial summary
judgment in Hanover’s favor. (ECF No. 100.) On March 6, 2014, Judge
Debevoise granted Christian Testimony’s motion for reconsideration and
reversed his prior order. (Opinion ECF No. 143; Order ECF No. 144.)
The overall effect of Judge Debevoise’s two decisions, then, was a
complete denial of Hanover’s summary judgment motion. The
counterclaim for breach of contract was permitted to “move forward in its
entirety.” (ECF No. 143, at 13.)
Now, Hanover once again moves for partial summary judgment on
Christian Testimony’s first counterclaim for breach of contract. (ECF No.
101.) Hanover also moves for summary judgment on the claims in its
own complaint. (ECF No. 116.) Defendants cross-move for summary
judgment on Hanover’s claims and also on Christian Testimony’s
counterclaim for breach of contract. (ECF No. 124.)

II.

JURISDICTION
This Court exercises jurisdiction over the parties’ copyright claims

pursuant to 28 U.S.C.
U.S.C.

§ 1331 (federal question jurisdiction) and 28

§ 1338(b) (copyright jurisdiction). This Court exercises

17

supplemental jurisdiction over the state law claims pursuant to 28
U.S.C. § 1367.
III.

SUMMARY JUDGMENT STANDARD
A court “shall grant summary judgment if the movant shows that

there is no genuine dispute as to any material fact and the movant is
entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a); see also
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); Daniels v. Sch.
Dist. Of Phila., No. 14-1503, 2015 WL 252428, at *6 (3d Cir. Jan. 20,
2015). In deciding a motion for summary judgment, a court must
construe all facts and inferences in the light most favorable to the
nonmoving party. Heffeman v. City of Paterson, No. 14-1610, 2015 WL
265514, at *2 (3d Cir. Jan. 22, 2015). The moving party bears the
burden of establishing that no genuine issue of material fact remains.
See Celotex Corp. v. Catrett, 477 U.S. 317, 322—23, (1986). “[W]ith respect
to an issue on which the nonmoving party bears the burden of proof.
the burden on the moving party may be discharged by ‘showing’— that
is, pointing out to the district court— that there is an absence of
evidence to support the nonmoving party’s case.” Id. at 325. The
existence, or not, of a genuine, material issue must be considered in light
of the ultimate burden of proof—here, proof by clear and convincing
evidence. See p. 14, infra; Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
244 (1986) (the “clear and convincing” standard must be considered on a
motion for summary judgment).
If the moving party meets its threshold burden, the opposing party
must present actual evidence that creates a genuine issue as to a
material fact for trial. Anderson, 477 U.S. at 248; see also Fed R. Civ. P.
56(c) (setting forth types of evidence on which nonmoving party must rely
to support its assertion that genuine issues of material fact exist).
“[U]nsupported allegations

...

and pleadings are insufficient to repel

summary judgment.” Schoch v. First Fid. Bancorporation, 912 F.2d 654,
18

657 (3d Cir. 1990); see also Gleason v. Norwest Mortg., Inc., 243 F.3d
130, 138 (3d Cir. 2001) (“A nonmoving party has created a genuine issue
of material fact if it has provided sufficient evidence to allow a jury to find
in its favor at trial.”).
When, as here, the parties file cross-motions for summary
judgment, the governing standard “does not change.” Clevenger v. First
Option Health Plan of N.i, 208 F. Supp. 2d 463, 468-69 (D.N.J. 2002)
(citing Weissman v. US.P.S., 19 F. Supp. 2d 254 (D.N.J. 1998)). The
court must consider the motions independently, in accordance with the
principles outlined above. Goldwell of N.J., Inc. v. KPSS, Inc., 622 F.
Supp. 2d 168, 184 (2009); Williams v. Philadelphia Hous. Auth., 834 F.
Supp. 794, 797 (E.D. Pa. 1993), affd, 27 F.3d 560 (3d Cir. 1994). That
one of the cross-motions is denied does not imply that the other must be
granted. For each motion, “the court construes facts and draws
inferences in favor of the party against whom the motion under
consideration is made” but does not “weigh the evidence or make
credibility determinations” because “these tasks are left for the factfinder.” Pichler v. UNITE, 542 F.3d 380, 386 (3d Cir. 2008) (internal
quotation and citations omitted).
IV.

CROSS-MOTIONS FOR SUMMARY JUDGMENT
The parties have filed cross-motions for summary judgment.

Because numerous issues of fact remain as to the parties’ claims and
defenses, the motions are DENIED.
A. Christian Testimony’s breach of contract claim
(Counterclaim 1)
Christian Testimony alleges that Hanover breached the Second and
Third Agreements by: (1) providing incomplete electrical, plumbing, and
fire protection designs; (2) refusing to grant Christian Testimony’s
request to modi1r the designs to remove certain expensive features; (3)
preparing drawings that would have entailed construction costs that

19

were over Christian Testimony’s budget; (4) misclassifying the
Conversion Project facility under the building codes so as to require a
costly firewall and refusing to cooperate with the Parsippany Township
Building Department to resolve the issue; and (5) failing to obtain a
construction permit. (See CT 124 Mot. 22—23; CT 101 Opp. 1, 4—5.)
Christian Testimony also accuses Hanover of overbilling for overtime at a
rate of $225 per hour, rather than the $120 per hour specified in the
Agreements. (CT 101 Opp. 1.)
Neither party relies on the Agreements as written; both claim that
there were understandings outside the four corners of the contract.
Because issues of material fact remain, summary judgment is
inappropriate for either party on Christian Testimony’s breach of
contract claim.
To establish a breach of contract claim, Christian Testimony must
show (1) “that the parties entered into a valid contract”; (2) “that the
defendant failed to perform [its] obligations under the contract”; and (3)
“that the plaintiff sustained damages as a result.” Murphy v. Implicito,
920 A.2d 678, 689 (N.J. Super. Ct. App. Div. 2007).9

“[I]n a diversity action, a district court must apply the choice of law rules
of the forum state to determine what law will govern the substantive issues of a
case.” Warriner v. Stanton, 475 F.3d 497, 499—500 (3d Cir. 2007) (citing Klaxon
Co. v. StentorElec. Mfg. Co., 313 U.S. 487, 496 (1941)). New Jersey uses the
most-significant-relationship test, which consists of two prongs. Mciniscalco v.
Brother Int’l Corp. (USA), 793 F. Supp. 2d 696, 704 (D.N.J. 2011), affd, 709
F.3d 202 (3d Cir. 2013). First, the court must determine whether a conifict
actually exists between the potentially applicable laws. P. V. v. Camp Jaycee,
197 N.J. 132, 143, 962 A.2d 453, 460 (2008) (“Procedurally, the first step is to
determine whether an actual conflict exists. That is done by examining the
substance of the potentially applicable laws to determine whether there is a
distinction between them.”) (internal quotations omitted). “[I]f no conffict exists,
the law of the forum state applies.” Snyder v. Farnam Companies, Inc., 792 F.
Supp. 2d 712, 717 (D.N.J. 2011) (quoting P.V., 197 N.J. at 143, 962 A.2d at
453). If a conflict exists, the court then moves to the second prong: it must
determine “which state has the ‘most significant relationship’ to the claim at
issue by weighing the factors” in the applicable section of the Restatement
(Second) of Conflict of Laws. Gilbert Spruance Co. v. Pennsylvania Mfrs. Ass’n
20

Because issues of fact clearly bar an award of judgment, I will not
analyze each and every alleged breach of the contract. An adequate flavor
is given by consideration of the evidence underlying two of the breaches
alleged by Christian Testimony: (1) that Hanover did not complete
electrical, plumbing, and fire protection designs; and (2) that Hanover
refused to modify the designs, per Christian Testimony’s request, to
remove certain expensive features that were over Christian Testimony’s
budget. I discuss the rest in summary fashion.
i. Hanover’s allegedly incomplete electrical, plumbing, and
fire protection designs
Christian Testimony alleges that Hanover did not fulfill its
responsibilities under the Second or Third Agreements to provide
electrical, plumbing, and fire protection designs. (Answer &
Counterclaims ¶J274—75, ECF No. 32; CT 124 Stmt. ¶56.)’° As Judge
Debevoise noted, this alleged breach requires proof of (1) the terms of the
Second and Third Agreements, to determine what Hanover was required
to provide; and (2) the designs Hanover actually provided. (Jan. 24, 2014
Opinion at 17—18, ECF No. 97.)
What Hanover was “required to provide” is similar, but not
identical, under the Second and Third Agreements.
Under the Second Agreement, Hanover was required to provide: (1)
Ins. Co., 134 N.J. 96, 102, 629 A.2d 885, 888 (1993).
The parties seem to agree that New Jersey law applies in this diversity
action. At any rate, they point to no aspect in which the application of nonforum law would change the result. Having been directed to no applicable
conflict, I apply general principles of New Jersey contract law.
10
Confusingly, Christian Testimony undermines its contentions as to this
breach. In its motion papers it states that this is not a “primary” breach,
although it is a “piece of evidence fitting a pattern of non-performance.” (CT 101
Opp. 1, 3.) Judge Debevoise certainly regarded this as one of Christian
Testimony’s claims of breach. (See Jan. 24, 2014 Opinion at 17, ECF No. 97.) At
any rate, Christian Testimony presents these facts as highly “material” to the
issues, and therefore worthy of consideration on summary judgment.

21

“Electric Design—lighting fixtures, switches and receptacles”; (2)
“Plumbing Design—plumbing fixtures and riser diagram”; and (3) “Fire
Protection layout—Modify existing automatic sprinkler system layout.”
(Chang Deci. Ex. 2.) Specifically excluded from Hanover’s duties were: (1)
“Electrical panels, load and wiring design”; and (2) “automatic sprinkler
system design.” (Id.)
Under the Third Agreement, Hanover was required to provide: (1)
“Electric Design—lighting fixtures, switches and receptacles”; and (2)
“Plumbing Design—plumbing fixtures and riser diagram.” (Chang Decl.
Ex. 3.) Specifically excluded from Hanover’s duties were: (1) “Electrical
panels, load and wiring design”; and (2) “automatic sprinkler system and
fire protection designs.” (Id.)
The Second Agreement, as Christian Testimony admits, is
“somewhat ambiguous” in first requiring Hanover to “[mjodify existing
automatic sprinkler system layout” and then “separately stating that
Hanover was not responsible for the automatic sprinkler system design.”
(CT 101 Opp. 4—5.) This would appear to present an issue of fact, but
Christian Testimony argues that this ambiguity should be resolved
against Hanover, the drafter. (Id.) The Third Agreement clearly excludes
“automatic sprinkler system

.

.

.

designs” from Hanover’s responsibilities.

(Chang Decl. Ex. 3.)
As for what Hanover “actually provided,” Christian Testimony
points to three alleged shortcomings: Hanover wrongfully failed to
provide (1) electrical designs for switches and receptacles; (2) designs for
plumbing fixtures (other than plumbing fixtures and a riser diagram);
and (3) the fire protection layout and designs for the modification of the
automatic sprinkler system. (CT 124 Stmt. ¶56 (citing Chang Decl.

22

¶55).)”
Hanover’s response is essentially that the parties agreed to modify
its duties or transfer them to others. Hanover submits testimony that
“[s]witches and receptacles were subsequently removed from Hanover’s
scope of services following discussions with James Chang in 2007 as a
result of redundancy with work being performed by the electrical
engineer.” (Supp. Liou Dccl.

¶ 19;

Han. 124 Resp. ¶56.) As to the fire

sprinkler system, Hanover cites the exclusion in the Second Agreement.
(Han. 124 Resp. ¶56; Supp. Liou Decl. ¶20.) Finally, Liou explains on
Hanover’s behalf that:
The mechanical engineer proposed a new wet pipe sprinkler
system. With the change to the new system, the “provision of
fire protection layout—modify existing automatic sprinkler
system layout” [requirement of the Second Agreement] was
no longer necessary. Christian Testimony was aware of and
agreed to this change.
(Liou Deci. ¶20.)
Essentially, this alleged breach boils down to a credibility contest
between Chang and Liou regarding (1) what Hanover’s responsibilities
were intended to be under the Second Agreement (given the unclear
language); and (2) whether these responsibilities were later modified in
conversations between Hanover and Christian Testimony. These issues of
material fact preclude granting summary judgment to either side.

ii. Hanover’s refusal to modify the designs, per Christian
Testimony’s request, to remove certain expensive
features that were over Christian Testimony’s budget
Christian Testimony also alleges that Hanover breached the
Agreements by drafting designs that would have exceeded Christian
Testimony’s construction budget and refusing to modify the designs to
The Chang Declaration states that the plumbing fixtures were not
developed by Hanover, so it is unclear what Christian Testimony’s position is
with respect to the plumbing fixtures. (Chang Dccl. ¶55.)
11

23

reduce anticipation construction costs. These allegations require proof (1)
of an agreement to a particular budget and (2) that the agreement was
incorporated into the Third (or any) Agreement—both issues of material
fact that preclude granting summary judgment.
Christian Testimony has proffered testimony in support of its
position. Chang declares that (1) “the purpose of the three agreements
was to furnish the Church with a building design..

.

and to do so within

[]Christian Testimony’s budget”; (2) “Christian Testimony informed

Hanover of its budget constraints before Hanover began working on the
redesign project for Christian Testimony, and Hanover was aware of and
acknowledged the budget constraints under which it and Christian
Testimony agreed to operate”; and (3) “[p]rior to entering [into the First
Agreement], Hanover assured the Church that it would be able to create
a design that could be built within [Christian Testimony’s] $1 million
budget.” (Chang Dccl ¶J13, 16, 32.)
Hanover cannot credibly contend that there was no budget. Liou
declares, however, that it was only in April of 2005 (after the First
Agreement was signed) that Chang first “informally advised [Liou] that
Christian Testimony’s budget for the first phase of the construction was
$1.2 million.” (2d Supp. Liou Dccl. ¶40.) Liou also declares that in 2006,
after the Second Agreement was executed, Chang “advised [Liou] that the
budget had become $2.5 million dollars to include the second phase of
construction.” (Id.) Finally, Liou maintains that “[e]ach of these
discussions was informal, and at no time did Christian Testimony
allocate a percentage of the budget to the architectural work, much less
make agreement[s as] to a particular budget amount [to be incorporated
into] any of the Agreements.” (IcL)
Summary judgment is therefore denied because issues of fact
remain regarding (1) whether the parties agreed to a particular budget;
and (2) how that budget was incorporated into the Agreements.
24

iii. Other claims of breach
The two issues discussed above set the pattern. Christian
Testimony alleges several other breaches of contract: (1) Hanover
prepared drawings that would have entailed construction costs that were
over Christian Testimony’s budget; (2) Hanover misclassified the
Conversion project facility under the building codes so as to require a
costly firewall, and Hanover refused to cooperate with the Parsippany
Township Building Department to resolve the issue; and (3) Hanover
failed to obtain a construction permit. (See CT 124 Mot. 22—23; CT 101

Opp.

1, 4—5.)
For each breach, Christian Testimony states that certain

responsibilities were included in the Agreements, that Hanover’s
performance was deficient, and that Christian Testimony was harmed as
a result. For example, Christian Testimony proffers evidence that
Hanover incorrectly classified the Conversion Project facility, that
Hanover refused to correct its mistakes, and that this alleged breach
resulted in additional costs to Christian Testimony. (CT 124 Stmt. ¶J70—
73 (citing Wells Decl. ¶9; Chang Dccl. ¶J66—69; Visbeen Dccl. ¶J4, 6).)
Christian Testimony also offers proof that Hanover failed to obtain the
construction permits required by the Agreements. (CT 124 Stmt. ¶96
(citing Chang Decl. ¶85, Ex. 17; Wells Decl.

¶113, 9; Visbeen Decl. ¶5).)

For each breach, Hanover responds that it was not responsible for
the duties under the Agreements or that its performance was not
deficient. The budget issues have already been discussed above. Hanover
also proffers evidence that it properly classified the Conversion Project
facility and that any delays or costs associated with the Parsippany
Building Department’s issuance of permits were not Hanover’s fault.
(Han. 124 Resp. ¶1170—75 (citing Report of Joseph P. Tomaino, AlA, P.E.,
ECF No. 111-1; Supp. Liou Dccl. ¶1125, 26).) Finally, Hanover says that
the construction permits it obtained were sufficient. (Id. ¶1190, 96 (citing

25

Tomaino Report at 14).)
Because issues of fact remain as to each alleged breach, summary
judgment is inappropriate for either side.
B. Hanover’s copyright infringement claims (Hanover’s
Claims 1, 2)
Hanover and Defendants cross-move for summary judgment as to
Hanover’s claims of copyright infringement. Summary judgment is
inappropriate for either side.
To prove copyright infringement, a plaintiff must show: “(1)
ownership of a valid copyright; and (2) copying of constituent elements of
the work that are original.”’ Jackson v. Booker, 465 F. App’x 163, 165 (3d
Cir. 2012) (quoting Feist Publications, Inc. v. Rural Telephone Service. Co.,
499 U.S. 340, 361 (1991)). Christian Testimony disputes both of these
elements, arguing that (i) Hanover’s designs did not include any original
elements and were therefore not copyrightable; (ii) Christian Testimony’s
second architect, Wells, did not copy any original or copyrightable
elements of Hanover’s designs; (iii) Hanover’s copyrights are invalid
because they were filed under Liou’s name, rather than Hanover’s; (iv) if
there is anything copyrightable about the designs, Christian Testimony
owns those copyrights—either solely or jointly with Hanover; (v) that
Hanover committed fraud on the United States Copyright Office; and (vi)
that Christian Testimony has an implied license to use Hanover’s
designs.
i.

Whether Hanover’s designs are original

Christian Testimony has not overcome the presumption that
Hanover’s designs contain at least some minimum level of originality.
As the Supreme Court has explained:
The sine qua non of copyright is originality. To qualify for
copyright protection, a work must be original to the author.
Original, as the term is used in copyright, means only that
26

the work was independently created by the author (as
opposed to copied from other works), and that it possesses at
least some minimal degree of creativity. To be sure, the
requisite level of creativity is extremely low; even a slight
amount will suffice. The vast majority of works make the
grade quite easily, as they possess some creative spark, no
matter how crude, humble or obvious it might be.
Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345—46
(1991) (internal quotations and citations omitted). Also, “[t]he mere fact
that a work is copyrighted does not mean that every element of the work
may be protected.” Id. at 348. Rather, “copyright protection may extend
only to those components of a work that are original to the author.” Id.
A Certificate from the Copyright Office is prima facie evidence of a
valid copyright, and therefore of some original element in the copyrighted
work. See Value Grp., Inc. v. Mendham Lake Estates, L.P., 800 F. Supp.
1228, 1232 (D.N.J. 1992); Masquerade Novelty, Inc. v. Unique Indus., Inc.,
912 F.2d 663, 667 (3d Cir. 1990) (referring to 17 U.S.C.

§ 4 10(c)); Ford

Motor Co. v. Summit Motor Products, Inc., 930 F.2d 277, 290—91 (3d Cir.
1991). Christian Testimony rebuts this evidence with proof that it
provided certain preliminary drawings to Hanover, initially instructed
Hanover about the elements it wanted the designs to include, and
requested that Hanover modiii certain features during the design
process. (CT 124 Stmt. ¶fl5—29; see Chang Decl. p17—31, Ex. 5, 6, 8.)
For example, Christian Testimony says it instructed Hanover to draw 45degree angled corners on the altar, to include a raised baptistery at the
rear of the altar, to include two entrances to changing rooms, to change
the location of the bar window of the audio-visual room, to change the
shape of the coat rooms to have 45-degree angles, to expand the width of
the main sanctuary, and to modify the ceiling design in the main
sanctuary. (Chang Decl. ¶j22—28.) Such elements, says Christian
Testimony, are original to itself, not to Hanover.
Christian Testimony has not proven, however, that no element of
27

Hanover’s designs is original. As the Feist Court implied, a copyrighted
work may consist of original as well as unoriginal elements. At most,
Christian Testimony has shown that it provided Hanover with
preliminary designs for the Conversion Project and asked for certain
modifications to be made. It has not shown that Hanover’s designs are
entirely devoid of “some creative spark, not matter how crude, humble or
obvious it might be.” Feist, 499 U.S. at 345. Christian Testimony’s own
exhibit (Chang Decl. Ex. 8) reveals just what a fact-laden inquiry it would
be to prove that no element of Hanover’s designs was original. And
Hanover’s expert, Douglass Asral, Registered Architect, stated in an
expert report that “there are certain aspects of Mr. Liou’s design that are
arbitrary and serve no specific function are uniquely particular to his
vision, such as the angled walls in the Lobby, Main Sanctuary and the
partially recessed Entrance Doors.” (Han. 116 Mot. Ex. 17, ECF No. 1213, 121-4 (“Asral Report”).)
That another person germinated the ideas contained in a work
does not preclude a claim of copyright infringement. By statute, “[i]n no
case does copyright protection for an original work of authorship extend
to any idea, procedure, process, system, method of operation, concept,
principle, or discovery.” 17 U.S.C.

§ 102 (emphasis added). “As a general

rule, the author is the party who actually creates the work, that is, the
person who translates an idea into a fixed, tangible expression entitled to
copyright protection.” Cmty. for Creative Non-Violence v. Reid, 490 U.S.
730, 737 (1989). Even if Christian Testimony’s requests were original,
Hanover’s translation of those requests into tangible designs may be
copyrightable.
Christian Testimony has not dispelled the presumption of
originality that comes from the Certificate from the Copyright Office.
Issues of fact remain, and summary judgment is denied.

28

ii.

Whether Wells copied any original or copyrightable
elements of Hanover’s designs

There are likewise issues of fact regarding whether Wells (who took
over the project) copied any original or copyrightable elements of
Hanover’s designs.
Hanover’s evidence regarding the similarity between Liou’s and
Wells’s designs is as follows. First, Liou, an architect himself, declares
that Wells’s designs “are substantially similar to those of Hanover’s
plans.” (2d Am. Liou Deci. ¶36.) Second, Hanover submits the expert
report of Douglass Asral, in which Asral itemizes the similarities between
the designs and explains that “there are certain aspects of Mr. Liou’s
design that are arbitrary and serve no specific function and are uniquely
particular to his vision, such as the angled walls in the Lobby, Main
Sanctuary and the partially receded Entrance Doors.” (Asral Report.)
Asral concludes that “[i]t is highly unlikely these specific elements would
be produced independently by another creator in the very same manner,
size and location as they appear to be in both sets of plans.” (Id.) Third,
Liou says that when he called Chang on April 12, 2010, to inquire about
the approval process for the Conversion Project, Chang “mentioned that
Christian Testimony-Morris had not redesigned the project before
constructing it.” (2d Am. Liou Decl. ¶42.)
Christian Testimony offers the following evidence to the contrary.
First, Christian Testimony contends that because Hanover sent the
designs in read-only pdf format, “Wells could not have simply copied
Hanover’s plans as Hanover has alleged, much less simply removed
Hanover’s title block from the plans and placed his own firm’s name
there instead.” (CT 124 Stmt.

¶f 103—104 (citing Wells Decl. ¶J6—7).)

Second, Christian Testimony says Wells’s drawings are different from
Hanover’s in many ways: for example, Wells omits large arches and a
clerestory from his drawings. (CT 116 Resp. ¶37 (citing Wells Deci. ¶J6—

29

8).) Third, Chang disputes Liou’s account of the April 12, 2010 phone
call. When Liou asked Chang about the status of the construction,
Chiang allegedly “mentioned to [Liou} only that we were using the
conceptual layout from the variance approval that the Church itself
originally designed before Hanover started work and for which we paid
Hanover in full prior to completion of its responsibilities.” (Supp. Chang
Deci. ¶12.) Fourth, Christian Testimony submits the rebuttal expert
report of Thomas V. Ashbahian, Registered Architect, in which
Ashbahian explains why the elements of Liou’s designs are not original
(and therefore not copyrightable in the first place). (Moskin Deci. Ex. 27,
ECFNo. 128-1.)
Whether Wells is liable for copying original elements of Liou’s
designs depends on disputed issues of fact.
iii. Ownership, Fraud on Copyright Office, Implied License,
Registration in Liou ‘s Name
Because of the issues of fact identified above, summary judgment
cannot be granted to either party on the copyright claims. I briefly
discuss other proffered defenses.
Joint ownership/fraud on Copyright Office. Christian Testimony
claims, for example, that it is sole or joint owner of Hanover’s work,
because Hanover’s drawings were derived from its own. Christian
Testimony claims that Hanover defrauded the Copyright Office by failing
to reveal that its own designs derived from those of Christian Testimony.
As noted above, the degree of similarity or the extent of copying, if any,
pose issues of fact. Those issues of fact bar summary judgment as to
ownership or fraud on the Copyright Office.
Imp lied license. Christian Testimony argues that it retained an
implied license to use Hanover’s designs. (CT 16 Opp. 15—17.) “The owner
of a copyright can transfer ownership of the copyright by selling it or by
exclusively licensing it.” MacLean Assocs., Inc. v. Wm. M. Mercer

30

Meidinger-Hansen, Inc., 952 F.2d 769, 778 (3d Cir. 1991) (citing 17

§ 101.) Such exclusive licenses must be in writing. Id. (citing 17
U.S.C. § 204(a)). However, “[a] nonexciusive license may be granted

U.S.C.

orally, or may even be implied from conduct.” Id. at 779 (quoting 3 M.
Nimmer & D. Nimmer, Nimmeron Copyright 10.03[A], at 10—37 (1991))
(internal quotations omitted). It is the defendant’s burden to prove the
affirmative defense of implied license. Nat’l Ass’n For Stock Car Auto
Racing, Inc. v. Scharle, 184 F. App’x 270, 275 (3d Cir. 2006) (citing Atkins
v. Fischer, 331 F.3d 988, 992 (D.C. Cir. 2003)). “Whether there is an
implied license is determined by an objective inquiry into the facts; the
private hopes of the creator are not relevant.” Id. (citing John G.
Danielson, Inc. v. Winchester—Conant Props., Inc., 322 F. 3d 26, 42 (1St
Cir. 2003)). As to the existence of an implied license, The Third Circuit
has adopted a three-factor test:
(1) a person (the licensee) requests the creation of a work, (2)
the creator (the licensor) makes the particular work and
delivers it to the licensee who requested it, and (3) the
licensor intends that the licensee-requestor copy and
distribute his work.
Nat’lAss’n For Stock Car Auto Racing, Inc., 184 F. Appx at 275 (citations
omitted). Even where a license is found, “the licensor can still bring suit
for copyright infringement if the licensee’s use goes beyond the scope of
the nonexclusive license. MacLean, 952 F.2d at 779 (citation omitted).
The third element of the nonexciusive implied license test—
whether Hanover intended that Christian Testimony copy and distribute
the designs—remains in dispute. True, the designs were intended for
use, not display. But Hanover has introduced letters to Christian
Testimony warning that the designs were copyrighted and that Christian
Testimony must seek its permission before using them. (Chang Dccl. Ex.
14, Amended Complaint Ex. 13, ECF No. 22-1.) The scope of any license,
too, is the subject of factual dispute. It is not at all clear that Hanover

31

would have approved the alteration of its designs or the use of its designs
by others in the event Hanover was not retained as construction
2
administrator.’ These material issues of fact as to the license issue, too,
preclude summary judgment.
Erroneous name on application. Finally, Christian Testimony argues
that because the first copyright registration (VA 1-627-039) was in Liou’s
name instead of Hanover’s, it is of no legal effect, and Hanover lacks
standing to sue. (CT 116 Opp. 29—30.) “[A]n otherwise valid registration
is not jeopardized by inadvertent, immaterial errors in an application.”
Gallup, Inc. v. Kenexa Corp., 149 F. App’x 94, 96 (3d Cir. 2005) (citing
Raquel v. Educ. Mgmt. Corp., 196 F.3d 171, 177 (3d Cir. 1999), cert.
granted and judgment vacated on other grounds, 531 U.S. 952 (2000)).
A misstatement is material if it might have influenced the
Copyright Office’s decision to issue the registration.
Significantly, the Register reviews applications only to
determine whether the material deposited constitutes
copyrightable subject matter and [whether] the other legal
and formal requirements
have been met. In practice,
therefore, a misrepresentation is likely to affect the Register’s
decision only if it concerns the copyrightability of the work.
.

.

.

Id. (internal quotations and citations omitted). It seems unlikely that the
12
Indeed, there is evidence that Hanover refused to modify its designs
when asked to do so by Christian Testimony because Liou didn’t want a
modified design to “bear [his] name and damage [his] reputation of creativity.”
(Chang Dccl. Ex. 14.) Moreover, Christian Testimony’s own position is that
Hanover refused to perform its duties unless it was appointed construction
administrator for the project, citing a letter from Liou on September 19, 2007.
(CT 124 Stmt. ¶79 (citing Chang Dccl. ¶73, Ex. 14.) In the same September 19,
2007 letter, Hanover informs Christian Testimony that its designs are protected
by copyright law and that Christian Testimony must obtain Hanover’s written
permission before using the drawings. (Chang Dccl. Ex. 14.) In a previous
September 5, 2007 letter, Liou also warned that his designs were copyrighted
and could not be used without written permission, and wrote that he was
concerned that, if Hanover was not involved with construction administration,
Christian Testimony “may expose my firm and myself to certain risks during
and/or after construction.” (Amended Complaint Ex. 13, ECF No. 22-1.) These
letters suggest Hanover may have intended to grant an implied license only if it
was appointed construction administrator, as expected.

32

Copyright Office would have declined to issue the copyright certificate if
Hanover had been listed as the owner of the designs from the beginning.
After all, the Office accepted Liou’s supplemental registrations naming
Hanover as the owner of the rights. (See Amended Complaint Ex. 18, 19,
VA 1-432-357 and VA 1-432-358; effective date June 22, 2010). See
Jules Jordan Video, Inc. v. 144942 Canada Inc., 617 F.3d 1146 (9th Cir.
2010) (copyright not invalid because sole shareholder inadvertently
registered company’s copyright in his own name). At best, this defense
presents yet another issue of fact.
C. Hanover’s Digital Millennium Copyright Act claims
(Hanover’s Claims 3, 4, 5, 6)
Defendants and Hanover seek summary judgment as to Hanover’s
claim that Defendants violated the Digital Millennium Copyright Act.
The Digital Millennium Copyright Act, 17 U.S.C.

§ 1202(a),

prohibits a person from “knowingly and with the intent to induce, enable,
facilitate, or conceal infringement—(1) provide [CMI] that is false, or (2)
distribute or import for distribution [CMI] that is false.” Section 1202(b)
prohibits the removal or alteration of copyright management information
(CMI) without the copyright owner’s authority. Specifically, a person may
not:
(1) intentionally remove or alter any copyright management
information,
(2) distribute or import for distribution copyright
management information knowing that the copyright
management information has been removed or altered
without authority of the copyright owner or the law, or
(3) distribute, import for distribution, or publicly perform
works, copies of works, or phonorecords, knowing that
copyright management information has been removed or
altered without authority of the copyright owner or the law
17 U.S.C.

§ 1202(b).

Copyright management information is defined as “any of the

33

following information conveyed in connection with copies or
phonorecords of a work or performances or displays of a work, including
in digital form.
(1) The title and other information identifying the work,
including the information set forth on a notice of copyright.
(2) The name of, and other identifying information about, the
author of a work.
(3) The name of, and other identifying information about, the
copyright owner of the work, including the information set
forth in a notice of copyright.
(6) Terms and conditions for use of the work.
(7) Identifying numbers or symbols referring to such
information or links to such information.
(8) Such other information as the Register of Copyrights may
prescribe by regulation, except that the Register of
Copyrights may not require the provision of any information
concerning the user of a copyrighted work.
Id.
Hanover alleges that Wells removed the following CMI from
Hanover’s designs: (1) the title block, digitally created on AutoCAD
software, which includes Hanover’s address, phone number, and
facsimile number, and says that Hanover is the producer of the designs;
(2) the words “COPYRIGHT © 2007 Chiming Liou” in the title block; and
(3) the words “This construction document including design and all
drawings is protected by federal copyright law and should not be
completely or partially copied, modified or reproduced in any forms and
for any purposes without the architect’s written permission.” (Han. 116
Mot. 22—23.) Hanover accuses Wells of replacing Hanover’s CMI with his
own information. (Id.) Hanover also accuses Christian Testimony of
unlawfully distributing Hanover’s designs while knowing that CMI had
been removed, in violation of 17 U.S.C.

34

§ 1202. (Id.)

Christian Testimony replies that Wells’s drawings were new
drawings, not copies of Hanover’s drawings with the CMI removed. (CT
116 Opp. 17—20.) Christian Testimony perhaps oversteps in arguing that
removal of the CMI was impossible because Liou submitted his designs
in read-only pdf format. (CT 124 Stmt. ¶99 (citing Wells Deci. ¶7).)
Nevertheless, whether and how Wells copied Hanover’s drawings and
removed CMI are disputed.
Summary judgment is denied as to Hanover’s DMCA claim.
D. Hanover’s conspiracy claims (Hanover’s Claims 1—6)
Hanover alleges that Christian Testimony and all other defendants
engaged in a conspiracy to infringe on Hanover’s copyrights and violate
the DMCA.
In New Jersey, a civil conspiracy is a combination of two or
more persons acting in concert to commit an unlawful act, or
to commit a lawful act by unlawful means, the principal
element of which is an agreement between the parties to
inflict a wrong against or injury upon another, and an overt
act that results in damage.
G.D. v. Kenny, 984 A.2d 921, 934 (N.J. Super. Ct. App. Div. 2009) aff’d,
205 N.J. 275, 15 A.3d 300 (2011) (internal quotations and citations
omitted). “It is enough [for liability] if you understand the general
objectives of the scheme, accept them, and agree, either explicitly or
implicitly, to do your part to further them.” Banco Popular N. Am. v.
Gandi, 876 A.2d 253, 263 (N.J. 2005) (internal quotation and citation
omitted). “It is well known that the nature of a conspiracy is such that
more often than not the only type of evidence available is circumstantial
in nature.” Morgan v. Union Cnty. Bd. of Chosen Freeholders, 633 A.2d
985, 998 (N.J. Super. Ct. App. Div. 1993) (internal quotation and citation
omitted).
The New Jersey cases hold that a conspiracy may be inferred from
circumstantial evidence. Here, however, I have already found that there
35

are issues of fact as to the unlawful acts that are alleged to be the
conspiracy’s objects. Those issues create issues of fact as to the
conspiracy as well. Hanover has presented some evidence of copyright
infringement. Christian Testimony concededly hired numerous parties—
the other defendants—to design and construct the new church facility.
(CT 124 Stmt. ¶J5—8.) It is not unreasonable to infer that,

f the object of

Christian Testimony’s conduct was copyright infringement (a disputed
issue), then parties involved with the design and construction for the
Conversion Project would have known that.’
3
Summary judgment is denied as to the conspiracy claims.

E. Secondary and vicarious liability
Christian Testimony argues that Hanover cannot prove vicarious or
secondary liability of any Defendant other than Christian Testimony
regarding the copyright claims. (CT 124 Mot. 18—20.)
To establish vicarious liability, a plaintiff must show (1) “that the
defendant has the right and ability to supervise the infringing activity”;
and (2) that the defendant “also has a direct financial interest in such
activities.” Parker v. Google, Inc., 242 F. App’x 833, 837 (3d Cir. 2007)
(internal citations and quotations omitted). “Financial benefit exists
where the availability of infringing material acts as a draw for customers.
There is no requirement that the draw be substantial.” Id. To establish
secondary liability—or contributory infringement—a plaintiff must show
All defendants were involved with the design of the Conversion Project or
the construction of the project based on the designs. (CT 124 Stmt. ¶1J5—8.)
Visbeen, Wells, the Reiner Group, and Liu each supervised their portions of the
design or construction. Visbeen of Visbeen Construction was responsible for at
least a portion of the permits application process, communicated with Christian
Testimony about modifications to Hanover’s designs, and participated in
meetings with Hanover and the Parsippany Building Department. (Supp. Liou
Decl. ¶25; CT 124 Stmt. 25; Chang Deci. ¶28; Visbeen Deci. ¶4.) Wells of Wells
Architect drafted the final design plans used by Christian Testimony. Liu of
ESEC designed the fire alarm system. (CT 124 Stmt. 8; 2d Am. Liou Dec. ¶40.)
Reiner Group designed the heating, ventilation, and air conditioning system.
(CT 124 Stmt. ¶7.)
13

36

“(1) direct copyright infringement of a third-party; (2) knowledge by the
defendant that the third-party was directly infringing; and (3) material
contribution to the infringement.” Id. (citing Columbia Pictures Indus., Inc.
v. Redd Home, Inc., 749 F.2d 154, 160 (3d Cir. 1984)).
Summary judgment must be denied as to vicarious or secondary
liability, essentially for the same reasons expressed in Section IV.D with
respect to conspiracy.
F. Hanover’s negligent misrepresentation claim
Defendants and Hanover both seek summary judgment as to
Hanover’s negligent misrepresentation claim. Negligent
misrepresentation under New Jersey law consists of “[a]n incorrect
statement, negligently made and justifiably relied upon and economic
loss sustained as a consequence of that reliance.” Rapid Models &
Prototypes, Inc. v. Innovated Solutions, No. CIV. 14-277 NLH/KMW, 2014
WL 7384186, at *11 (D.N.J. Dec. 29, 2014) (quoting Green v. Morgan
Props., 73 A.3d 478, 493—94 (N.J. 2013)) (internal quotations and citation
omitted). Because there is a fact issue as to whether Chang made any
promises to Liou to hire Hanover as a construction administrator,
summary judgment is inappropriate for either side.
Hanover accuses Chang of negligently misleading Hanover into
thinking Hanover would be administering the construction project. (Han.
116 Mot. 24—2 5.) Liou asserts that he relied on this false representation
and agreed to provide services to Christian Testimony under the Second

and Third Agreements at below the fair market price. Liou says he
expected to “recoup” his “investment” in the project by administering the
construction of it. Christian Testimony, however, did not retain Hanover
as construction administrator, causing economic loss to Hanover. (2d
Am. Liou Dccl. ¶1116, 18, 20, 22.)
Christian Testimony replies that Chang never specifically assured

37

Liou that Hanover would be retained as the construction administrator.
Indeed, Christian Testimony did not itself know how construction would
be administered until mid-2007. (CT 116

Opp.

20—23.) Christian

Testimony cites an email from Liou to Chang, in which Liou wrote: “Your
church is not obligated to hire my firm for the service of construction
administration.”

14

(CT 124 Stmt. ¶32 (citing Chang Deci. ¶34, Ex. 10).)

And Chang, in his declaration, denies making promises or
representations to Liou regarding appointment as construction
administrator. (Chang Supp. Deci. ¶3, 6, 7; see also ¶J5, 8.)
These factual accounts clash. Issues of material fact remain as to
whether Chang made representations to Liou regarding construction
administration and whether Liou justifiably relied on such
representations. Summary judgment is denied as to Hanover’s negligent
misrepresentation claim.
V.

CONCLUSION
Neither side has carried its burden under Fed. R. Civ. P. 56 of

showing that there is no genuine dispute of material fact as to any of the
claims. Accordingly, all motions for summary judgment are DENIED.
Dated: May 18, 2015

ri
1

Hon. Kevin McNulty
United States District Judge

14

Chang declares that the date of this email is August 23, 2007 (Chang

Decl. ¶34), but the exhibit is undated.

38

ADDENDUM: CITATIONS
Rule 56.1 Statements:
15
For Hanover’s first motion for partial summary judgment (ECF No. 101):
Hanover’s Statement (ECF No. 115): Han. 101 Stmt.
Christian Testimony’s Response (ECF No. 147-1): CT 101 Resp.
For Hanover’s second motion for summary judgment (ECF No. 1161:
Hanover’s (Second Amended) Statement (ECF No. 141): Han. 116
Stmt.
Christian Testimony’s Response (ECF No. 146-1): CT 116 Resp.
Christian Testimony’s Counter-Statement (ECF No. 146-2): CT 116
Counter.
Hanover’s Responses to Counter-Statement (ECF Nos. 157-1, 158):
Han. 116 Resp.
For Christian Testimony’s motion for summary judgment (ECF No. 124):
Christian Testimony’s Statement (ECF No. 124-1): CT 124 Stmt.
Hanover’s Responses (ECF Nos. 145-1, 149, 150): Han. 124 Resp.
Moving papers:
For Hanover’s first motion for partial summary judgment (ECF No. 101):
Hanover’s Motion (ECF No. 101-3): Han. 101 Mot.
Christian Testimony’s Opposition (ECF No. 147): CT 101 Opp.
Hanover’s Reply (ECF No. 157): Han. 101 Reply
For Hanover’s second motion for summary judgment (ECF No. 116):
Hanover’s Motion (ECF No. 116-1): Han. 116 Mot.
Christian Testimony’s Opposition (ECF No. 146): CT 116 Opp.
For Christian Testimony’s motion for summary judgment (ECF No. 124):
Christian Testimony’s Motion (ECF No. 124-2): CT 124 Mot.
Hanover’s Opposition (as defendant on counterclaim) (ECF No. 145):
Han 124 Def. Opp.
Hanover’s Opposition (as plaintiff on claims) (ECF No. 148):
Han 124 P1. Opp.
Christian Testimony’s Reply (ECF No. 154): CT 154 Reply
Hanover’s Sur-reply (ECF No. 161): Han. 124 Sur-reply
Christian Testimony’s Sur-reply (ECF No. 165): CT 124 Sur-reply
15
Hanover hired separate counsel to prosecute its claims and defend it
against the counterclaims. Consequently, there are separate statements of
material fact and moving papers on the two sets of summary judgment motions.

39

Declarations, Reports, Deposition Excerpts:
Report of Thomas V. Ashbahian, Registered Architect, attached as
Exhibit 27 to the Moskin Deci. (ECF No. 128-1): Ashbahian Report
Declaration of James Chang, dated February 16, 2014, submitted
in support of Christian Testimony’s motion for summary judgment (ECF
No. 125): Chang Dccl.
Supplemental Declaration of James Chang, dated February 17,
2014, submitted in opposition to Hanover’s motions for summary
judgment (ECF No. 146-7): Supp. Chang. Deci.
Transcript of Chiming Liou’s deposition on October 11, 2013,
attached as Exhibit 23 to the Chang Declaration (ECF No. 128-1): Liou
Dep.
Declaration of Chiming Liou, dated February 11, 2014, submitted
in support of Hanover’s first motion for summary judgment (ECF No.
10 1-2): Liou Dccl.
Second Amended Declaration of Liou, dated February 18, 2014,
submitted in support of Hanover’s second motion for summary judgment
(ECF No. 140): 2d Am. Liou Dccl.
Supplemental Declaration of Liou, dated March 15, 2014,
submitted in support of Hanover’s opposition to Christian Testimony’s
motion for summary judgment (ECF No. 145-3): Supp. Liou Dccl.
Second Supplemental Declaration of Liou, dated March 31, 2014,
submitted in support of Hanover’s first motion for summary judgment
(ECF No. 157-2): 2d Supp. Liou Dccl.
Third Supplemental Declaration of Liou, dated April 2, 2014,
submitted in support of Hanover’s opposition to Christian Testimony’s
motion for summary judgment (ECF No. 16 1-1): 3d Supp. Liou Dccl.
Declaration of Jonathan Moskin, dated February 18, 2014,
submitted in support of Christian Testimony’s motion for summary
judgment, ECF No. 128: Moskin Dccl.
Declaration of Wendy H. Smith, Esq., dated February 12, 2014,
submitted in support of Hanover’s first motion for summary judgment
(ECF No. 111): Smith Dccl.
Report of Joseph P. Tomaino, AlA PP (Consulting Architect), dated
January 14, 2014, attached as Exhibit F to the Smith Deci. (ECF No.
111-1): Tomaino Report

40

Declaration of Kenneth Visbeen, dated February 25, 2014,
submitted in support of Christian Testimony’s ECF No. 124 motion for
summary judgment (ECF No. 129): Visbeen Deci.
Declaration of Peter Wells, dated February 12, 2014, submitted in
support of Christian Testimony’s ECF No. 124 motion for summary
judgment (ECF No. 127): Wells Deci.

41