Design Basics LLC v. Petros Homes, Inc.

Filing 87

Memorandum Opinion and Order. The Court GRANTS, in part, and DENIES, in part, Plaintiff's 61 Motion for Partial Summary Judgment. The court grants summary judgment on the first element of plaintiff's copyright infringement claim - that the design plans involved in this lawsuit are generally protected by valid copyrights. The court also grants summary judgment on the affirmative defenses of "innocent infringer" and laches. The court denies summary judgment on the affirmative defenses of copyright misuse, fair use, and license. Magistrate Judge Thomas M. Parker on 3/7/2017. (O,K)

IN THE UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF OHIO
EASTERN DIVISION
DESIGN BASICS, LLC,
Plaintiff,
v.
PETROS HOMES, INC., et al.,
Defendants.

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Case No. 1:14-CV-01966

MAGISTRATE JUDGE
THOMAS M. PARKER

MEMORANDUM OPINION &
ORDER

Plaintiff, Design Basics, LLC, holds United States Copyright Office-issued certificates of
copyrights on plans for residential homes. It instituted this action for damages contending that
defendants used the designs without permission. Plaintiff has moved for partial summary
judgment (ECF Doc. No. 61), claiming that there is no genuine dispute of material fact that it is
the owner of a valid copyrights on the home plans at issue. If the court so finds, plaintiff will
have established one of the elements of its copyright infringement claim. Plaintiff also seeks
summary judgment on several of defendant’s affirmative defenses. The parties have consented
to my jurisdiction. 1
The court will GRANT, in part, and DENY, in part, plaintiff’s motion for partial
summary judgment.

1

ECF Doc. No. 57, Page ID# 280.

I.

Undisputed Facts and Case Posture
The undisputed record evidence before the court establishes that Plaintiff Design Basics,

LLC, is a building design firm that creates, markets, publishes, and sells licenses for the use of
architectural designs. It also is not disputed that plaintiff holds certificates of copyright
registration issued by the United States Copyright Office for the designs at issue here: (1) Plan
No. 2408 – Crawford; (2) Plan No. 2326 – Greensboro; (3) Plan No. 2355 – Waverly; (4) Plan
No. 4998 – Holden; (5) Plan No. 7614 – Southwick; (6) Plan No. 8108 – Rose Hollow; and (7)
Plain No. 2377 – Leighton. Plaintiff asserts a single cause of action in its amended complaint:
copyright infringement. Plaintiff alleges that several of the drawings, plans and/or houses
constructed by defendants were derived from the copyrighted works of plaintiff. Plaintiff argues
that several of defendants’ affirmative defenses should be dismissed because they are either not
true affirmative defenses or that there is no evidence to support them.
Defendants argue 2 that plaintiff is not entitled to summary judgment on the validity of its
copyrights because it failed to produce evidence establishing the originality of its designs.
Defendants also question whether the elements of plaintiff’s designs are even protectable under
copyright law or if they are standard features not entitled to protection.
Regarding their affirmative defenses, defendants withdraw the defenses of: 1) failure to
state a prima facie case; 2) copyrights are invalid; 3) ownership of valid
copyrights/originality/copyrightability; 4) actions do not constitute infringement; 5) no access to
copyrighted works prior to independent creation; 6) no substantial similarity; 7) independently
created plans and/or houses; and 8) no direct infringement. 3 Defendants oppose summary

2
3

ECF Doc. No. 65, Page ID# 938.
ECF Doc. No. 65, Page ID# 951.

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judgment on the affirmative defenses of innocent infringement, copyright misuse, fair use, laches
and license.
II.

Standard of Review
Under Fed. R. Civ. P. 56, summary judgment is warranted if “the movant shows that

there is no genuine dispute as to any material fact and that the movant is entitled to judgment as a
matter of law.” Fed. R. Civ. P. 56(a). A dispute of fact is “genuine” if “the [record] evidence is
such that a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct.2505, 91 L.Ed. 2d 202 (1986). As a result,
“[c]onclusory allegations, conjecture and speculation . . . are insufficient to create a genuine
issue of fact.” Kerzer v. Kingly Mfg., 156 F.3d 396, 400 (2d Cir. 1998) (citation omitted); see
also Fed. R. Civ. P. 56 (e)(2). As the Supreme Court has explained, “[the non-moving party]
must do more than simply show that there is metaphysical doubt as to the material facts.”
Matsushita Elec., Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 585-86, 106 S.Ct. 1348,
89 L.Ed.2d 538 (1986). As for the materiality requirement, a dispute of fact is “material” if it
“might affect the outcome of the suit under the governing law.” Anderson, 477 U.S. at 248.
“Factual disputes that are irrelevant or unnecessary will not be counted.” Id.
In determining whether genuine issues of material fact exist, the court must resolve all
ambiguities and draw all reasonable inferences against the moving party. Anderson, 477 U.S. at
255. In addition, “[the moving party] bears the initial responsibility of informing the district
court of the basis for its motion, and identifying those portions of the [record] which it believes
demonstrate the absence of any genuine issue of material fact.” Celotex v. Catrett, 477 U.S. 317,
323-24, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); see also Fed. R. Civ. P. 56(c), (e). However,
when the moving party has met this initial burden of establishing the absence of any genuine

3

issue of material fact, the nonmoving party must come forward with specific facts showing a
genuine dispute of material fact for trial. Fed R. Civ. P. 56(c), (e).
III.

Law & Analysis
A.

Whether Plaintiff’s Designs are Protected by a Valid Copyright

There are two elements of an architectural copyright infringement claim: (1) the work
must be shown to be protected by a valid copyright; and (2) it must be proven that the defendant
copied original or protectable aspects of the copyrighted work. Feist Publ’ns, Inc. V. Rural Tel.
Serv. Co., 449 U.S. 340, 348, 111 S.Ct. 1282, 113 L.Ed.2d 358. The first prong tests the
originality and non-functionality of the work. See M.M. Bus Forms Corp. v. Uarco, Inc., 472
F.2d 1137, 1139 (6th Cir. 1973). A fundamental rule of copyright law is that it protects only
“original works of authorship,” those aspects of the work that originate with the author himself.
17 U.S.C. § 102(b); Zalewski v. Cicero Builder Dev. Inc., 754 F.3d 95, 100, 2014 U.S.
App.LEXIS 10609 (2nd Cir. June 5, 2014).
Establishing proof of the first element of the claim can be straightforward.

The

ownership of certificates of registration of copyrighted material constitutes prima facie evidence
of the copyright’s validity. Lexmark Int’l, Inc. v. Static Control Components, Inc., 387 F.3d 522,
2004 U.S. App. LEXIS 22250 (6th Cir. 2004). And, while originality is required for copyright
protection, courts have not required an “especially elevated” level of originality in the
architectural realm. Ranieri v. Adirondacck Dev. Group, 164 F.Supp.3d 305, 329, 2016 U.S.
Dist. LEXIS 20884 (N.D.N.Y. Feb. 22, 2016); see also Axelrod & Cherveny Architects, P.C. v.
Winmar Homes, 2007 U.S. Dist. LEXIS 15788 (E.D.N.Y. Mar. 6, 2007). In Feist, supra, the
Supreme Court indicated that
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
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some creative spark, “no matter how crude, humble or obvious” it might be …
Originality does not signify novelty; a work may be original even though it
closely resembles other works so long as the similarity is fortuitous, not the result
of copying.
Feist Publ’ns, Inc., 449 U.S. at 345. Nonetheless, standard features “such as windows, doors,
and other stable building components” are not copyrightable. 37 C.F.R. §202.11(d)(2); Zitz v.
Pereira, 119 F. Supp.2d 133, 147 (E.D.N.Y. 1999). “In the case of more mundane residential
designs, it is obvious that the use of porches, porticos, dormers, and bay windows, for example,
is not protected, but the particular expression of those ideas and their combination in one house,
may be protected.” Frank Betz Assoc, Inc. v. J.O. Clark Constr., LLC, 2010 U.S. Dist. LEXIS
117961 (M.D. Tenn. Nov. 5, 2010).
Plaintiff moves for partial summary judgment on the first element of its copyright
infringement claim – an element that is presumptively satisfied by a certificate of registration and
a minimal showing of creativity in assembling even standard elements of architectural design.
Plaintiff contends, and defendants do not dispute, that plaintiff is the owner of certificates of
registration for the house design plans involved in this lawsuit. Plaintiff submits the affidavit of
Carl Cuozzo, a senior designer, who has worked for plaintiff for thirty years. 4 Mr. Cuozzo
attests that Design Basics is the sole author and owner of plaintiff’s design plans.5 Paragraph 7
of his affidavit states:
Design Basics independently created all seven of these plans “from scratch,”
in a collaborative process used by Design Basics since the mid-1980s. In
other words, Plaintiff’s employee-design professionals would brainstorm new
designs, which would be created internally, beginning with floor plans and
elevation drawings, and proceeded to the creation of construction drawings.
At no time would Design Basic’s personnel use third-party designs or
drawings as a basis for creating its new designs.

4
5

ECF Doc. No. 61-5, Page ID# 402.
ECF Doc. No. 61-5, Page ID# 403.

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Defendants complain that they cannot fully investigate the origin of the house design
plans due the destruction of plaintiff’s files following a roof collapse at plaintiff’s facility in
January 2010. Although this accident may appear suspicious to defendants, the fact that records
were lost is not evidence that contradicts that plaintiff is the original author of its design plans.
Defendants have not presented any admissible evidence to rebut the presumption that the
copyrighted plans were independently created by plaintiff and that they possess the requisite
minimal decree of creativity. As a result, plaintiff is entitled to partial summary judgment on
the first element of its copyright infringement claim – that the plans involved in this lawsuit are
generally protected by valid copyrights.
Genuine disputes of material fact exist on the second element of the plaintiff’s
claim. The second element of a copyright infringement claim tests whether any copying
occurred, whether the two designs are substantially similar, and whether the portions of the work
copied were entitled to copyright protection. Lexmark Int’l, Inc. v. Static Control Components,
Inc., 387 F.3d 522, 534, 2004 U.S. App. LEXIS 22250 (6th Cir. 2004). Defendants complain
that many of the elements of plaintiff’s design plans are not entitled to copyright protection
because they were standard features or features dictated by building codes and other practical
concerns. These arguments go to the second prong of plaintiff’s copyright infringement claim.
The court has not been presented with the issues of whether defendant’s allegedly infringing
conduct involved the actual copying of plaintiff’s copyrighted designs, whether the allegedly
infringing conduct copied portions of plaintiff’s work that were original or merely standard
elements that may not be protected by the copyright law, or whether the allegedly infringing
conduct created copies that were substantially similar to plaintiff’s designs. Neither side has
moved for summary judgment on these issues. Because of this, much of defendants’ argument is

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not relevant to the issue presented in the current motion and need not be further considered at
this time.
B.

Affirmative Defenses

Plaintiff also moves for summary judgment on several of the affirmative defenses
asserted by defendants in this case. Defendants concede that some of their “affirmative
defenses” are not truly affirmative defenses and are being abandoned or withdrawn.
Specifically, defendants acknowledge that the following defenses are not affirmative defenses:
1) failure to state a prima facie case; 2) copyrights are invalid; 3) ownership of valid
copyrights/originality/copyrightability; 4) actions do not constitute infringement; 5) no access to
copyrighted works prior to independent creation; 6) no substantial similarity; 7) independently
created plans and/or houses; and 8) no direct infringement. 6 Defendants agree that these may be
dismissed as affirmative defenses but reserve the ability to argue these defenses to disprove the
elements of plaintiff’s claim. Defendants argue that the “affirmative defenses” of 1) innocent
infringement; 2) misuse of copyright; 3) fair use; 4) laches; and 5) license should not be
dismissed.
1.

Innocent Infringement

There is no innocent infringer defense that completely negates liability for copyright
infringement. Frank Betz Assocs. v. Signature Homes, Inc., 2009 U.S. Dist. LEXIS 59354, 92
U.S.P.Q.2D (BNA) 1507, 2009 WL 2151304 (M.D. Tenn. July 13, 2009); See 4-13 Nimmer §
13.08. However, innocent intent can affect how the court exercises its discretion in awarding
damages. Id.; 17 U.S.C. § 504(c)(2) (2004). As a result, defendants may be permitted to
introduce evidence regarding their intent if it is determined that they copied protected portions of
6

ECF Doc. No. 65, Page ID# 951.

7

plaintiff’s design plans. Defendants should have withdrawn this defense along with the others
because it is not an affirmative defense. “Innocent infringement” will be dismissed as an
affirmative defense but defendants will be permitted to present evidence of innocent intent at
trial if necessary.
2.

Copyright Misuse

The doctrine of copyright misuse prohibits a copyright holder from using a copyright “to
secure an exclusive right or limited monopoly not granted by the [Copyright] Office and which is
contrary to public policy to grant. Alcaltel USA, Inc. v. DGI Techs, Inc., 166 F.3d 772, 792 (5th
Cir. 1999). This defense functions as an absolute bar on recovery for copyright plaintiffs who
have attempted to extend their limited rights to “property not covered by the … copyright.”
Lasercomb Am., Inc. v. Reynolds, 911 F.2d 970, 972 (4th Cir. 1990).
Plaintiff correctly argues that the Sixth Circuit has not recognized the defense of
copyright misuse. In fact, the Sixth Circuit has not addressed the topic. As described in detail,
in a case cited by defendants, Home Design Servs. v. Park Square Enters., 2005 U.S. Dist.
LEXIS 33627 (M.D. Fla., 2005), several other circuit courts have recognized the copyright
misuse defense:
The trend toward recognizing the copyright misuse defense, moreover, is wellgrounded in the basic objectives of copyright. At its core, copyright law seeks “to
promote the dissemination of creative expression, and provide incentives for
copyright owners to produce . . . original works.” CBS Broad., Inc. v. EchoStar
Communications Corp., 265 F.3d 1193, 1211 (11th Cir. 2001). While these goals
are furthered by granting copyright holders limited monopolies over the original
elements of their creative works, the very same goals may be severely
undermined when copyright holders leverage their monopolies to control “areas
outside of the monopolies.” A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004,
1026 (9th Cir. 2001). More to the point, where a copyright holder asserts rights in
non-copyrightable materials, other individuals may be discouraged from
integrating those non-copyrightable materials into their own original creative
works. See generally, William F. Patry & Richard A. Posner, Fair Use and
Statutory Reform in the Wake of Eldred, 92 Calif. L. Rev. 1639, 1654-59 (2004).
8

The reward for the copyright holder is unduly inflated while the creativity of other
individuals is potentially stifled. In short, the basic goals of copyright are
undermined.
Against this background, it is clear that the function of the copyright misuse
defense amounts to more than merely penalizing “overclaiming” by copyright
holders. Id. at 1658. Rather, the defense also encourages (or at least diminishes a
deterrent for) other members of the public to engage in creative expression. For
this reason, and in accordance with nearly all of the courts which have had
occasion to address the issue, the Court recognizes copyright misuse as a viable
defense to copyright infringement.
Home Design Servs., 2005 U.S. Dist at *37-39.
Plaintiff also argues that defendants have failed to offer specific evidence to support the
misuse defense. The court disagrees. Defendants contend that plaintiff’s design plans contain
many standard elements that are not protected by the copyrights held by plaintiff. They argue it
is a misuse of copyright law to obtain protection over things not able to be copyrighted.
Defendants further assert that the very business “model” utilized by plaintiff – to financially
incentivize employees to find alleged copyright infringements, to sue alleged infringers and to
force settlements of cases by leveraging the onerous burden placed on the alleged infringers to
disprove plaintiff’s presumptive damages – is evidence of a “misuse of copyrights” that
“completely undermines the purpose behind the protection afforded under copyright law.” 7
Defendants have shown how this business “model” has manifested itself by plaintiff’s filing of
over 80 similar lawsuits in 12 states (most of which were filed after plaintiff’s original design
files were irretrievably damaged and lost). Defendants have produced specific information that,
if true, could be construed by a jury to support the misuse of copyright defense.
In Home Design Servs., the court reasoned that, if many of the elements of the plaintiff’s
design plans were later determined to be generic or unprotected, “the logical next step would be
to determine whether [plaintiff] has used its limited rights to ‘obtain settlement or . . . even to
7

ECF Doc. No. 65, Page ID# 946.

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achieve an outright victory over’ defendants.” Id. at 39. Here, there are genuine disputes of
material fact on the asserted affirmative defense of copyright misuse and, absent controlling case
law holding that such a defense has been rejected, summary judgment on this defense is
inappropriate.
3.

Fair Use

The "fair use" defense has been codified by statute and provides, in relevant part:
[T]he fair use of a copyrighted work, including such use by reproduction in copies . . .,
for purposes such as criticism, comment, news reporting, teaching . . ., scholarship, or
research, is not an infringement of copyright. In determining whether the use made of a
work in any particular case is a fair use the factors to be considered shall include—
(1) the purpose and character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted
work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted
work.
17 U.S.C. § 107.
These four factors guide courts in deciding cases within the purpose of the fair-use
doctrine, which "is to ensure that courts 'avoid rigid application of the copyright statute when, on
occasion, it would stifle the very creativity which that law is designed to foster.'" Zomba Enters.,
491 F.3d at 581 (quoting Princeton Univ. Press v. Mich. Doc. Servs., Inc., 99 F.3d 1381, 1385
(6th Cir. 1996) (en banc), cert. denied, 520 U.S. 1156, 117 S. Ct. 1336, 137 L. Ed. 2d 495,
(1997)). However, the four factors are non-exclusive. Swatch Grp. Mgmt. Servs., Ltd. v.
Bloomberg L.P., 756 F.3d 73, 81 (2nd Cir. 2014). Defendants bear the burden of proving that
their use was fair, but they need not establish that each of the factors weighs in their favor. N.

10

Jersey Media Grp. Inc. v. Pirro, 74 F.Supp.3d 605, 614 (S.D.N.Y. 2015). “[T]he factors are to
be explored, and the results weighed together, in light of the purposes of copyright.” Campbell
v. Acuff-Rose Music, Inc., 510 U.S. 569, 578, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994). The
court must consider these factors to determine whether, on the evidence identified by defendants,
a reasonable jury could come to the conclusion that defendant’s alleged use of plaintiff’s design
plans was fair. Balsley v. LFP, Inc., 691 F.3d 747, 2012 U.S. App. LEXIS 17187 (6th Cir. Ohio
2012).
a)

Factor One: the Purpose and Character of the Use

The first factor concerns the manner in which the copied work was used. An important
focus of the first factor is whether the use is “transformative.” Authors Guild, Inc. v. HathiTrust,
755 F.3d 87, 96 (2nd Cir. 2014). “A use is transformative if it does something more than
repackage or republish the original copyrighted work.” Id. “[T]he more transformative the new
work, the less will be the significance of the other factors… that may weigh against a finding of
fair use.” Campbell, 510 U.S. at 579. As part of the first factor, the court must also consider
whether, and to what extent, defendants alleged use of plaintiff’s design plans was for a
commercial purpose. Pirro, 74 F.Supp.3d at 617-618.
Plaintiff contends that this factor weighs against the fair use defense because the
defendants used plaintiff’s plan designs for commercial purposes. There is little doubt that, if the
defendants used protected elements of plaintiff’s designs, they used them for commercial
purposes. An argument could be made that defendants’ use of the plans was transformative, but
defendants have not so argued. The commercial purpose has been established and factor one
weighs against the fair use defense.

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b)

Factor Two: the Nature of the Work

The second statutory consideration recognizes that “some works are closer to the core of
intended protection than others, with the consequence that fair use is more difficult to establish
when the former works are copied.” Campbell, 510 U.S. at 586. As pointed out by plaintiff,
“creative expression for public dissemination falls within the core of the copyright’s protective
purposes,” Id., and architectural works are generally considered creative. Rainieri v.
Adirondack Dev. Group, 164 F.Supp.3d 305, 353, 2016 U.S. Dist. LEXIS 20884 (N.D.N.Y.
2016). Again, defendants have not argued that this factor weighs in favor of the fair use defense
and the court finds that it weighs against its use in this case.
c)

Factor Three: the Amount and
Substantiality of the Portion Used

The third factor is “the amount and substantiality of the portion used in relation to the
copyrighted work as a whole.” 17 U.S.C. § 107(3). “The question is whether the quantity and
value of the materials used are reasonable in relation to the purpose of the copying.” Pirro, 74
Supp.3d at 620. “In general, ‘the more of a copyrighted work that is taken, the less likely the use
is to be fair.’” Swatch, 756 F.3d at 89. The basic inquiry is whether “no more was taken than
necessary.” Campbell, 510 U.S. at 589.
As to the third factor, it is the plaintiff who has not presented any argument in its motion
for summary judgment. 8 Defendants argue that this factor weighs in favor of the fair use defense
because they did not use any of plaintiff’s work in creating their own designs. Alternatively, if it
is later determined that they did copy some of the protected elements of plaintiff’s designs,
defendants contend that they copied very little. They point to the deposition testimony of Gary
Naim and Carl Cuozzo stating that the alleged similarities between the parties’ plans involved
8

ECF Doc. No. 61-2, Page ID# 338-339.

12

standard elements found in homes such as the placement of stairways, entryways, rooms,
porches, and ratio of bedrooms to bathrooms. 9 This factor weighs in favor of the fair use
defense.
d)

Factor Four: the Effect of the Use Upon the
Market or the Value of the Original

The fourth factor relates to the copyright owner’s ability to “capture the fruit of his labor
and hence his incentive to create.” Bond v. Blum, 317 F.3d 385, 396 (4th Cir. 2003). This factor
“requires courts to consider not only the extent of market harm caused by the particular actions
of the alleged infringer, but also ‘whether unrestricted and widespread conduct of the sort
engaged in by the defendant would result in substantially adverse impact on the potential market’
for the original.” Campbell, 510 U.S. at 590.
Defendants contend that, even if they had used portions of plaintiff’s design plans,
plaintiff’s plans “were still viable and could be used for other projects.” Ranieri, 164 F.Supp.3d
at 354. Defendants argue that the parties do not share the same client base. Plaintiff does not
use its plans to construct homes but creates plans to be sold or licensed to homebuilders
nationwide. The majority of plaintiff’s income comes from the sale of its plans. Defendant
Petros, on the other hand, does not copyright any of its plans. It builds homes in Northeast Ohio
and sells directly to prospective homeowners. Petros claims that it has a reputation for
customizing its homes to the specifications of its customers. Building specifications of the
residential developments, counties and municipalities also dictate elements of defendants’ design
plans. Defendants contend that Petros has not usurped any of plaintiff’s market or taken over its
customer base. Defendants argue that the fourth factor weighs in favor of the fair use defense.
9

While this evidence does not relate to the first element of plaintiff’s copyright infringement claim, it
contains both facts and opinions related to whether the parties’ designs are substantially similar. In the
event that plaintiff establishes the second element of its copyright infringement claim, this evidence may
become relevant to defendants’ fair use defense.

13

Plaintiff asserts that defendants bear the burden of proving the ‘market effect’ factor.
Plaintiff cites Zomba Enterprises, Inc., v. Panorama Records, Inc., 491 F.3d 574, 2007
U.S.App.LEXIS 15180 (6th Cir. 2007) in support of this proposition. Although Zomba does
place the burden proof of this factor on the alleged infringer, it is of little precedential value here.
In Zomba, it was undisputed that defendants copied songs owned by plaintiff and there was
evidence illustrating that the parties were operating in the same market. Zomba, 491 F.3d at 58384.
The non-controlling Ranieri decision is more applicable to the facts of this case. Ranieri
involved the alleged use of copyrighted architectural plans. The district judge who denied
summary judgment on the fair use defense reasoned that, while defendant had competed in the
same market as plaintiff, it had not usurped the market for plaintiff’s design. Ranieiri, 164
F.Supp.3d at 353-54. The court reasoned that plaintiff could license or sell his designs to another
developer. His plans were still viable and could be marketed for other projects. Id.
Here, the facts are even more favorable to recognizing the fair use defense. Plaintiff and
defendant are not competing in the same market. And, unlike the apparent effect on the potential
market in Zomba, the alleged harm to plaintiff in this case is not so straightforward. There is no
evidence before the court to show that defendants’ alleged use of plaintiff’s design plans would
have any impact on plaintiff’s nationwide market or whether an outsider would even be aware of
the substantial similarity between the two designs. This is a question of fact which has not been
decided. The fourth factor weighs in favor of the fair use defense.
Defendants claim that they did not copy any protected portions of plaintiff’s designs.
They have asserted the fair use defense as an alternate means of defending this case, in the event
it is determined that they did, in fact, copy protected elements of plaintiff’s designs. After

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weighing the four factors together, the court cannot conclude, as a matter of law, that the alleged
use of plaintiff’s designs was unfair. Reasonable minds could differ as to whether fair use
applies to the facts of this case, and summary judgment is inappropriate on this affirmative
defense.
4.

Laches

To prevail on a laches defense, defendants must demonstrate two elements: (1) undue
delay and lack of diligence on the part of plaintiff, and (2) prejudice to defendants as a result of
the delay. See Herman Miller Inc.v . Palazetti Imports & Exports, Inc., 270 F.3d 298, 320 (6th
Cir. 2001). If the statute of limitations has not elapsed, there is a strong presumption that
plaintiff’s delay in bringing the suit is not unreasonable. Only rarely should laches bar a case
before the statute of limitations has run. Chirco v. Crosswinds Cmtys, Inc., 474 F.3d 227, 233,
2007 U.S. App. LEXIS 427 (6th Cir. 2007).
Defendants contend that “Petros has been on [plaintiff’s] radar since the 1980s.” 10
Defendants point to the fact that plaintiff was sending its publications to Petros as early as 1987.
Defendants also argue that plaintiff routinely encourages employees to seek out potential
copyright infringement lawsuits. However, defendants have not presented any Rule 56 evidence
showing that plaintiff was aware of any alleged copyright infringement by Petros in the 1980s or
at any appreciable time before it filed this lawsuit. In analyzing the first element of the laches
defense – lack of diligence – a plaintiff is chargeable with such knowledge as he might have
obtained upon inquiry, provided the facts already known by him were such as to put upon a man
of ordinary intelligence the duty of inquiry. Johnston v. Standard Min. Co., 148 U.S. 360, 370,
13 S.Ct. 585, 37 L.Ed. 480 (1893). But architects have no general ongoing duty to comb through
public records or to visit sites in order to police their copyrights. Warren Freedenfeld
10

ECF Doc. No. 65, Page ID# 959.

15

Associates, Inc. v. McTigue, 531 F.3d 38, 46 (1st Cir. 2008). That plaintiff was sending
publications to defendant and has sued numerous other entities for copyright infringement does
not amount to constructive notice that defendants were potential infringers. There are no genuine
disputes of material fact on the first element of defendants’ laches defense and plaintiff is
entitled to summary judgment on the same.
5.

License

Plaintiff moves for summary judgment on the affirmative defense of license. 11 Plaintiff
complains that defendants have not produced sufficient evidence showing that they purchased a
license from plaintiff. Plaintiff characterizes Gary Naim’s testimony on this subject as
“evasive.” Plaintiff argues that defendants must produce an actual licensing agreement to prevail
on this affirmative defense.
Defendant Petros represents that it purchased at least one of plaintiff’s designs, “the
Leighton.” 12 As evidence, defendants point to an order detail listing produced by plaintiff
showing that Defendant Petros made a purchase from plaintiff on October 2, 1995.
The court notes that, at this time, discovery is ongoing in this case. 13 Some evidence
exists to show that Defendant Petros made a purchase from plaintiff in October 2015. 14 The
parties should be permitted to fully develop the record as to this purchase. At this time, it
appears that there is a genuine dispute of material fact as to whether Defendant Petros purchased
one of plaintiff’s plans and/or was licensed to use it. Summary judgment on defendant’s
affirmative defense of license will be denied at this time.

11

ECF Doc. No. 61-2, Page ID# 339.
ECF Doc. No. 65, Page ID# 961.
13
ECF Doc. No. 59, Page ID# 307.
14
ECF Doc. No. 65-15, Page ID# 1171.
12

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C.

Motion to Strike

Plaintiff’s reply brief objects to some of defendants’ evidence and “requests” that the
court strike it. 15 In response, defendants filed a memorandum in opposition to plaintiff’s motion
to strike. 16 Defendants contend that Rule 12(f) of the Federal Rule Civ. Proc. permits a court to
strike pleadings, not materials, submitted in support of a motion for summary judgment. In
apparent agreement, plaintiff filed a reply to defendants’ memorandum on December 8, 2016. 17
Plaintiff states that it did not file a motion to strike and that it was only “objecting” to some of
the evidence submitted by defendants.
Plaintiff’s motion for partial summary judgment objects to the admissibility of some of
the evidence defendants submitted in support of their argument that plaintiff’s copyrights are
invalid. The court sustained plaintiff’s motion on the first element of its copyright infringement
claim. The evidence to which plaintiff has objected was not considered when ruling on the
portions of plaintiff’s motion for summary judgment which were not sustained. In any event,
plaintiff maintains that it did not file a motion to strike. Consequently, it is unnecessary for this
court to issue an order in response to plaintiff’s “request.”

IV.

Conclusion
The court GRANTS, in part, and DENIES, in part, plaintiff’s motion for partial summary

judgment. The court grants summary judgment on the first element of plaintiff’s copyright
infringement claim – that the design plans involved in this lawsuit are generally protected by
valid copyrights. The court also grants summary judgment on the affirmative defenses of

15

ECF Doc. No. 73, Page ID# 2617.
ECF Doc. No. 776, Page ID# 2743.
17
ECF Doc. No. 79, Page ID# 2844.
16

17

“innocent infringer” and laches. The court denies summary judgment on the affirmative
defenses of copyright misuse, fair use, and license.
IT IS SO ORDERED.
Dated: March 7, 2017
Thomas M. Parker
United States Magistrate Judge

18