Zalewski et al v. T.P. Builders, Inc. et al

Filing 168

MEMORANDUM-DECISION and ORDER - That the stay issued on December 22, 2011 is lifted. That Cillis, DeRaven and Sofia's motions to dismiss (Dkt. Nos. 146, 149, 156) are GRANTED and all claims against them are DISMISSED. That plaintiff's cro ss-motions for partial summary judgment (Dkt. Nos. 158, 159, 160) are DENIED. That T.P.'s motion for partial summary judgment (Dkt. No. 151) is DENIED as premature with leave to renew. That Cillis, DeRaven and Sofia are TERMINATED as parties. That the remaining parties contact Magistrate Judge Treece to schedule further proceedings in accordance with this memorandum-decision and order. Signed by Chief Judge Gary L. Sharpe on 2/22/2012. (jel, )

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF NEW YORK
_______________________________________
JAMES E. ZALEWSKI
and DRAFTICS, LTD.,
Plaintiffs,

1:10-cv-876
(GLS/RFT)

v.
T.P. BUILDERS, INC. et al.,
Defendants.
_______________________________________
APPEARANCES:
OF COUNSEL:
FOR THE PLAINTIFFS:
Lee Palmateer Law Office LLC
90 State Street, Suite 700
Albany, NY 12207
FOR THE DEFENDANTS:
T.P. Builders and Thomas Paonessa
Schmeiser, Olsen Law Firm
22 Century Hill Drive, Suite 302
Latham, NY 12110
Roxanne K. Heller
and DeRaven Design & Drafting
Heslin, Rothenberg Law Firm
5 Columbia Circle
Albany, NY 12203
V.S. Sofia Engineering, Sofia
Engineering, and Vincenzo Sofia
Sugarman, Wallace Law Firm
211 West Jefferson Street
Syracuse, NY 13202

LEE PALMATEER, ESQ.

ARLEN L. OLSEN, ESQ.

ANNETTE I. KAHLER, ESQ.
CAROLINE B. AHN, ESQ.
SUSAN E. FARLEY, ESQ.

KEVIN R. VAN DUSER, ESQ.
SAMUEL M. VULCANO, ESQ.

Cillis Builders
and Theodore Cillis, III
DeGraff, Foy Law Firm
90 State Street
Albany, NY 12207

GEORGE J. SZARY, ESQ.
NICOLE ROMAN RODGERS,
ESQ.

Gary L. Sharpe
Chief Judge
MEMORANDUM-DECISION AND ORDER
I. Introduction1
Plaintiffs James Zalewski and Draftics, Ltd. commenced this action
for copyright infringement under the Copyright Act of 19762 against
defendants T.P. Builders, Inc. and Thomas Paonessa (collectively “T.P.”);
Roxanne Heller and DeRaven Design & Drafting (collectively “DeRaven”);
V.S. Sofia Engineering, Sofia Engineering, PLLC, and Vincenzo Sofia
(collectively “Sofia”); and Cillis Builders, Inc. and Theodore Cillis, III,
(collectively “Cillis”). (See 3d Am. Compl., Dkt. No. 138.) Pending are
Cillis, DeRaven and Sofia’s motions to dismiss; T.P.’s motion for partial
summary judgment; and plaintiffs’ cross-motions for partial summary
judgment against T.P., Sofia and Cillis. (See Dkt. Nos. 146, 149, 151, 156,

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The Clerk is directed to terminate the stay issued on December 22, 2011.

2

17 U.S.C. § 101, et seq.

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158, 159, 160.) For the reasons that follow, Cillis, DeRaven and Sofia’s
motions to dismiss are granted; plaintiffs’ cross-motions are denied; and
T.P.’s motion for partial summary judgment is denied as premature.
II. Background
The court presumes the parties’ familiarity with the underlying facts
as discussed in its previous memorandum-decision and order and
plaintiffs’ Third Amended Complaint. (See Dkt. No. 133; 3d Am. Compl.,
Dkt. No. 138.) Relevantly, plaintiffs now allege four causes of action for
copyright infringement of architectural works.3 (See 3d Am. Compl. ¶¶ 32145.)
III. Standards of Review
The standards of review under the Federal Rules of Civil Procedure
12(b)(6) and 56 are well established and will not be repeated here. For a
full discussion of the standards, the court refers the parties to its previous
opinions in Ellis v. Cohen & Slamowitz, LLP, 701 F. Supp. 2d 215, 218
(N.D.N.Y. 2010) (Rule 12(b)(6)); and Wagner v. Swarts, No. 1:09-cv-652,

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Plaintiffs’ causes of action against Cicero Building Dev., Inc., Joseph M. Clark,
Shelroc Homes, LLC, Capital Framing, Inc. and Luigi Cicero were voluntarily discontinued.
(See Dkt. No. 144.) However, the court notes that plaintiffs have since commenced separate,
but related actions, against these defendants. See Zalewski et al. v. Shelroc Homes, LLC et
al., No. 11-cv-1159; Zalewski et al. v. Cicero Builder Dev., Inc. et al., No. 11-cv-1156.

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2011 WL 5599571, at *4 (N.D.N.Y. Nov. 17, 2011) (Rule 56).
IV. Discussion
Defendants Cillis, Sofia4 and DeRaven each argue the Third
Amended Complaint should be dismissed because plaintiffs have not
established that there are substantial similarities between the accused
properties and plaintiffs’ designs.5 (See Dkt. No. 146, Attach. 14 at 10;
Dkt. No. 149, Attach. 1 at 16; Dkt. No. 156, Attach. 17 at 5.) Though T.P.
elected not to pursue a similar argument, it now seeks partial summary
judgment on the bases that: (1) the Third Amended Complaint does not
provide fair notice of the advertisements from which the copyright notices
were allegedly removed; (2) the statute of limitations either bars the suit in
its entirety, or at a minimum, limits plaintiffs’ damages to those incurred in
the three years preceding the complaint; and (3) plaintiffs’ requested relief
is either inappropriate or unavailable in a copyright case. (See Dkt. No.
151, Attach. 1 at 7-24.) In response, plaintiffs oppose all of defendants’

4

In their motion, Sofia sought either summary judgment or dismissal of the Third
Amended Complaint under Fed. R. Civ. P. 12(b)(6). (See Dkt. No. 156.) Because Sofia is
entitled to relief under Rule 12(b)(6), the merits of their summary judgment motion will not be
discussed.
5

While defendants each assert additional grounds for dismissal, it is unnecessary to
discuss those grounds as the similarities, or lack thereof, between the accused properties and
plaintiffs’ designs is dispositive. (See generally Dkt. Nos. 146, 149, 156.)

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arguments and cross-move for partial summary judgment on the
substantial similarity element of their causes of action. (See generally Dkt.
Nos. 158, 159, 160.) The court will address each of these arguments in
turn.
A.

Motions to Dismiss
To establish copyright infringement, “a plaintiff with a valid copyright

must demonstrate that: (1) the defendant has actually copied the plaintiff’s
work; and (2) the copying is illegal because a substantial similarity exists
between the defendant’s work and the protectible elements of plaintiff’s.”
Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57, 63
(2d Cir. 2010) (internal quotation marks citations omitted). Presuming,
without deciding, that plaintiffs sufficiently pled that defendants actually
copied the architectural drawings, the court focuses on the similarity
between defendants’ works and the protectible elements of plaintiffs’.
While traditionally reserved for the trier of fact, “[t]he question of
substantial similarity is by no means exclusively reserved for resolution by
a jury.” Id. Indeed, the Second Circuit has “repeatedly recognized that, in
certain circumstances, it is entirely appropriate for a district court to resolve
that question as a matter of law, [where] . . . ‘no reasonable jury, properly
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instructed, could find that the two works are substantially similar.’” Id.
(quoting Warner Bros. Inc. v. Am. Broad. Cos., Inc., 720 F.2d 231, 240 (2d
Cir. 1983)). Thus, in the context of a motion to dismiss, the court reviews
“the facts as asserted within the four corners of the complaint together with
the documents attached to the complaint as exhibits, and any documents
incorporated in the complaint by reference.” Id. at 64 (internal quotation
marks and citation omitted). Because “the works themselves supersede
and control contrary descriptions of them,” Walker v. Time Life Films, Inc.,
784 F.2d 44, 52 (2d Cir. 1986), discovery is unnecessary, where, as here,
the court can conduct the requisite visual comparison. Gaito Architecture,
602 F.3d at 64.
This comparison, which is known as the “ordinary observer test,”
asks “whether an ordinary observer, unless he set out to detect the
disparities, would be disposed to overlook them, and regard [the] aesthetic
appeal as the same.” Id. at 66 (quoting Yurman Design, Inc. v. PAJ, Inc.,
262 F.3d 101, 111 (2d Cir. 2001) (internal quotation marks omitted)).
Stated another way, if the “average lay observer would recognize the
alleged copy as having been appropriated from the copyrighted work,” the
works are substantially similar. Gaito Architecture, 602 F.3d at 66 (internal
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quotation marks and citation omitted). In comparing the works in question,
the court is mindful that not all elements are protectible, and thus its inquiry
concerns only those elements which are entitled to copyright protection.
See Knitwaves, Inc. v. Lollytogs Ltd. (Inc.), 71 F.3d 996, 1002 (2d Cir.
1994); see also Attia v. Soc’y of N.Y. Hosp., 201 F.3d 50, 56-57 (stating
that general ideas and concepts—such as “the alignment of floor heights
and . . . the arrangement of space on particular floors”—are generally not
entitled to copyright protection since they lack sufficient detail to enable
construction).
Here, the record is replete with evidence which demonstrates that
plaintiffs’ drawings are not substantially similar to the accused properties.
In addition to the affidavits provided by DeRaven and Sofia—which
articulate no fewer than twenty distinctions per property between plaintiffs’
drawings and the accused properties, (see Dkt. No. 149, Attach. 5-14; Dkt.
No. 156, Attach. 1 ¶¶ 12-276)—the court visually compared the following
illustrations and images6:

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Notwithstanding plaintiffs failure to attach illustrations of the accused properties to
the Third Amended Complaint, the court is still able to conduct a visual comparison using
defendants’ submissions since their accuracy is uncontested, and they are matters of public
record. See Taylor v. Vermont Dep’t of Educ., 313 F.3d 768, 776 (2d Cir. 2002).

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(1) with respect to 35 Jo Ann Ct, as alleged in paragraph 46(h) of the
Third Amended Complaint, docket numbers 138 and 151,
attachments 1 and 41, respectively;
(2) with respect to 23 Thoroughbred Circle, as alleged in paragraph
46(j) of the Third Amended Complaint, docket numbers 138 and 149,
attachments 1 and 6, respectively;
(3) with respect to 14 Peachtree Lane, as alleged in paragraph 46(g)
of the Third Amended Complaint, docket numbers 138 and 151,
attachments 1 and 36, respectively;
(4) with respect to 1 Peachtree Lane, as alleged in paragraph 46(d)
of the Third Amended Complaint, docket numbers 138 and 151,
attachments 2 and 39, respectively;
(5) with respect to 6 Peachtree Lane, as alleged in paragraph 46(c)
of the Third Amended Complaint, docket numbers 138 and 151,
attachments 2 and 40, respectively;
(6) with respect to 16 Peachtree Lane, as alleged in paragraph 46(f)
of the Third Amended Complaint, docket numbers 138 and 149,
attachments 2 and 7, respectively;
(7) with respect to 24 Arch Avenue, as alleged in paragraph 46(i) of
the Third Amended Complaint, docket numbers 138 and 149,
attachments 6 and 11, respectively;
(8) with respect to 10 Peachtree Lane, as alleged in paragraph 46(b)
of the Third Amended Complaint, docket numbers 138 and 151,
attachments 6 and 29, respectively;
(9) with respect to 37 Jo Ann Court, as alleged in paragraph 46(a) of
the Third Amended Complaint, docket numbers 138 and 151,
attachments 6 and 37, respectively;
(10) with respect to 5 Peachtree Lane, as alleged in paragraph 46(e)
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of the Third Amended Complaint, docket numbers 138 and 151,
attachments 7 and 38, respectively; and
(11) with respect to 11 Nicole Court, as alleged in paragraph 130
of the Third Amended Complaint, docket numbers 138 and 146,
attachments 3 and 4, respectively; and
(12) with respect to the properties listed in paragraph 77(a) to (l) of
the Third Amended Complaint, docket numbers 138 and 151,
attachments 6 and 2 to 14, respectively.
Notably, the court observed, among other distinctions, the differences in
room dimensions between the floor plans; the shapes and placement of
windows and doors; and the design of the roofs.7 (Compare Dkt. No. 138,
Attach. 1-6, with Dkt. No. 151, Attach. 28-42.)
In sum, the court concludes that no reasonable juror, “properly
instructed, could find that” plaintiffs’ drawings are substantially similar to
the accused properties. Gaito Architecture, 602 F.3d at 63 (internal
quotation marks and citation omitted). Although the properties are
conceptually similar, plaintiffs’ allegations that the “infringing homes copy .
. . the floor plans[,] . . . the elevation views[,] . . . the arrangement and
composition of spaces and architectural features[,] . . . the selection,

7

Not all elements of plaintiffs’ works are entitled to copyright protection. However, as
neither plaintiffs nor defendants specifically identified what elements, if any, are copyrightable,
the court will not—and need not, in deciding the pending motions—determine what elements
are actually protected.

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coordination, and arrangement of rooms, windows, doors, closets, stairs
and other interior and exterior architectural features of the copyrighted
works” are untenable in light of the illustrations and images submitted by
the parties.8 (3d Am. Compl. ¶¶ 52, 80.) The images, which “supersede
and control contrary descriptions of them,” Time Life Films, Inc., 784 F.2d
at 52, establish, as a matter of law, that plaintiffs’ and defendants’ works
are not substantially similar.
Because plaintiffs cannot establish one of the requisite elements of a
copyright infringement claim, their causes of action against Cillis, Sofia and
DeRaven are unsustainable. As such, Cillis, Sofia and DeRaven’s motions
to dismiss are granted and plaintiffs’ cross-motions for partial summary
judgment are denied.
B.

Motion for Summary Judgment
T.P.’s motion for partial summary judgment attacks multiple aspects

of plaintiffs’ claims, including the sufficiency of the Third Amended
Complaint, the relevant period for calculating the statute of limitations, and
8

Notably, plaintiffs’ responses to the motions to dismiss contain purported overlays of
their drawings and the accused properties. (See, e.g., Dkt. 160, Attach. 4-26.) However, as
illustrated by DeRaven, the image overlays include un-copyrighted illustrations. (See Dkt. No.
165 at 11.) While the court presumes this error was unintentional—as deliberately misleading
the court would be a violation of, inter alia, the New York Rules of Professional Conduct—it is
skeptical of the accuracy of plaintiffs’ comparisons and thus is unpersuaded by them.

10

the availability of damages and/or equitable relief. (See generally Dkt. No.
151, Attach. 1.) Although for varying reasons, T.P.’s motion is denied in all
respects.9
Addressing the sufficiency of the Third Amended Complaint first, the
court rejects T.P.’s “notice” argument. (See id. at 7-9.) While the Third
Amended Complaint contains some “labels and conclusions,” plaintiffs
have pled “factual content that allows the court to draw the reasonable
inference” that T.P. infringed their copyrights by removing copyright notices
from images advertised on at least two websites. Ashcroft v. Iqbal, 129 S.
Ct. 1937, 1949 (2009); (See 3d Am. Compl. ¶¶ 100-02.) Because Rule 8
requires only a “short and plain statement of the claim,” T.P.’s motion for
partial summary judgment with respect to the sufficiency of the Third
Amended Complaint is denied.10 See Fed. R. Civ. P. 8(a)(2).
Furthermore, T.P.’s remaining arguments are premature. Because
both plaintiffs and T.P. expressed, albeit in different contexts, the need for
discovery, the court, pursuant to Fed. R. Civ. P. 56(d), deems it
9

T.P.’s request that plaintiffs’ post a bond is also denied as there is no evidence that
plaintiffs’ will not be able to pay the costs discussed in 17 U.S.C. § 505 in the event that T.P.
prevails. (See Dkt. No. 151, Attach. 1 at 23.)
10

Notably, this ruling applies only to T.P.’s “fair notice” argument and by no means
forecloses alternative attacks on plaintiffs’ claims.

11

appropriate to deny the motion with leave to renew. (See Dkt. No. 158,
Attach. 1 at 8, 16; Dkt. No. 163 at 11.) To the extent either party may wish
to reassert the arguments contained in their respective motions, they may,
in accordance with this memorandum-decision and order, do so at the
appropriate time.
V. Conclusion
WHEREFORE, for the foregoing reasons, it is hereby
ORDERED that the stay issued on December 22, 2011 is lifted; and
it is further
ORDERED that Cillis, DeRaven and Sofia’s motions to dismiss (Dkt.
Nos. 146, 149, 156) are GRANTED and all claims against them are
DISMISSED; and it is further
ORDERED that plaintiffs’ cross-motions for partial summary
judgment (Dkt. Nos. 158, 159, 160) are DENIED; and it is further
ORDERED that T.P.’s motion for partial summary judgment (Dkt. No.
151) is DENIED as premature with leave to renew; and it is further
ORDERED that Cillis, DeRaven and Sofia are TERMINATED as
parties; and it is further
ORDERED that the remaining parties contact Magistrate Judge
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Treece to schedule further proceedings in accordance with this
memorandum-decision and order; and it is further
ORDERED that the Clerk provide a copy of this MemorandumDecision and Order to the parties.
IT IS SO ORDERED.
February 22, 2012
Albany, New York

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