Hewlett Custom Home Design, Inc. v. Frontier Custom Builders, Inc. et al

Filing 97

MEMORANDUM AND ORDER on 81 MOTION to Strike Evidence filed with Plaintiff's Response to Motion for Summary Judgment, 64 MOTION to Strike Portions of Declaration of John McGinty, 58 MOTION for Partial Summary Judgment, 55 MOTION to Exclude Plaintiff's Expert Shane Hewlett, 56 MOTION for Summary Judgment. (Signed by Judge Ewing Werlein, Jr) Parties notified.(kcarr, )

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
HEWLETT CUSTOM HOME DESIGN,
INC.,
Plaintiff,
v.
FRONTIER CUSTOM BUILDERS, INC.
and RONALD W. BOPP,
Defendants.

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CIVIL ACTION NO. H-10-04837

MEMORANDUM AND ORDER
Pending are Defendants Frontier Custom Builders, Inc. and
Ronald W. Bopp’s Motion to Exclude Plaintiff’s Expert Shane Hewlett
(Document

No.

55),

Defendants’

Motion

for

Summary

Judgment

(Document No. 56), Plaintiff’s Motion for Partial Summary Judgment
(Document No. 58), Plaintiff’s Objections to and Motion to Strike
Portions of Declaration of John McGinty (Document No. 64), and
Defendants’ Objections and Motion to Strike Evidence Filed with
Plaintiff’s Response to Motion for Summary Judgment (Document No.
81).

After carefully considering the motions, responses, replies,

and applicable law, the Court concludes as follows.
I.
Plaintiff

Hewlett

Background

Custom

Home

Design,

Inc.

(“Plaintiff”)

alleges that it is the author and owner of certain architectural
works, namely its Plan 4348, Plan 4210, Plan 4540, Plan 4187, Plan

4721, Plan 5449, and Plan 5092, all of which it has registered with
the United

States

Copyright

Office.1

Plaintiff

alleges

that

Defendant Frontier Custom Builders, Inc. (“Frontier”) infringed on
Plaintiff’s copyrights in its design of certain homes in the
Houston area and in its creation of plans that it advertises on its
website, which Plaintiff claims are copies or derivatives of one or
more

of

Plaintiff’s

designs.2

Plaintiff

claims

copyright

infringement under the Copyright Act, 17 U.S.C. §§ 101 et seq.
Defendant Ronald W. Bopp (“Bopp,” and collectively with Frontier,
“Defendants”) is the principal of Frontier, who Plaintiff seeks to
hold vicariously liable for the infringement.

Defendants move for

summary judgment, and Plaintiff moves for partial summary judgment.
Both

parties

have

filed

objections

to

the

opposing

parties’

experts, and Defendants further object to Plaintiff’s inclusion of
certain exhibits in its summary judgment evidence.
II.
A.

Evidentiary Matters

Shane Hewlett
Defendants seek to exclude the testimony of Plaintiff’s non-

retained expert, Shane Hewlett (“Hewlett”), because of Plaintiff’s

1

Document No. 30 at 3-4 (1st Am. Cmplt.).

2

Id. at 5-6.
2

failure

to

comply

26(a)(2)(C).3

with

the

disclosure

requirements

of

Rule

Rule 26(a)(2)(C) states that:

Unless otherwise stipulated or ordered by the court, if
the witness is not required to provide a written report,
this disclosure [of the identity of the expert under Rule
26(a)(2)] must state:
(i) the subject matter on which the witness is expected
to present evidence under Federal Rule of Evidence 702,
703, or 705; and
(ii) a summary of the facts and opinions to which the
witness is expected to testify.
FED. R. CIV . P. 26(a)(2)(C).4
Plaintiff

timely

designated

Hewlett,

who

is

Plaintiff’s

principal and owner and the creator of the designs, as a rebuttal
expert witness to address the similarity between the copyrighted
works and the allegedly infringing works if Defendants chose to
designate an expert on this topic.

In the designation, Plaintiff

states that if Defendants designate such an expert, “[Plaintiff]
will serve the disclosures required by Rule 26(a)(2)(C) within the
time periods required for rebuttal experts under the Federal Rules
of Civil Procedure.”5

3

The disclosure further states that:

Document No. 55.

4

A witness who is “retained or specially employed to provide
expert testimony in the case or one whose duties as the party’s
employee regularly involve giving expert testimony” must submit an
expert report. FED . R. CIV . P. 26(a)(2)(B).
5

Document No. 55, ex. 1 at 1-2.
3

Mr. Hewlett will also offer testimony regarding his
creation of the works at issue and may also explain
aspects of the works at issue and the practices of the
building design industry.
To the extent that such
testimony is considered to be expert testimony rather
than fact testimony, HCHD similarly designates Mr.
Hewlett as an expert witness pursuant to Rule
26(a)(2)(6). Mr. Hewlett’s testimony would be based on
his knowledge of the works at issue and experience in the
building design industry, and would explain what the
works are and how they were created.6
Defendants designated and produced the report of retained expert
John McGinty to offer opinions on the originality of aspects of
Plaintiff’s works and to compare Plaintiff’s works with Defendants’
allegedly infringing works,7 but Plaintiff produced no further Rule
26 disclosures regarding Hewlett’s opinions and the bases for them
in

response

Hewlett’s

to

Defendants’

opinions

and

the

disclosure.
bases

for

Plaintiff
them

were

states

that

disclosed

in

responses to interrogatories propounded by Defendants, and that
Defendants were able fully to explore Hewlett’s opinions and their
bases in his deposition on November 13, 2012.8

However, Rule 26

states that a party must disclose a rebuttal expert’s opinions and
the bases for them within thirty days after the other party’s
disclosure.

FED . R. CIV . P. 26(a)(2)(C).

6

Id., ex. 1 at 2.

7

Id., ex. 2 at 1-2.

8

Document No. 75 at 2.
4

Plaintiff has made no

showing

that

it

complied

with

Rule

26

in

its

disclosure

of

Hewlett’s opinions.
However, Plaintiff’s failure to comply with the requirements
of Rule 26 does not result automatically in the exclusion of
Hewlett’s testimony. The Fifth Circuit considers four factors when
deciding

whether

a

district

judge

abuses

his

discretion

excluding an expert that was not properly disclosed:

by

(1) the

explanation for the failure to identify the witness; (2) the
importance

of

the

testimony;

(3)

the

potential

prejudice

in

allowing the testimony; and (4) the availability of a continuance
to cure such prejudice.

Brumfield v. Hollins, 551 F.3d 322, 330

(5th Cir. 2008) (citing Geiserman v. MacDonald, 893 F.2d 787, 791
(5th Cir. 1990)).
Plaintiff provides no explanation to justify its failure to
comply

with

Rule

26,

other

than

to

state

that

no

further

information was required by Rule 26, despite its own statement to
the contrary in its initial disclosure of Hewlett.

Nonetheless,

the testimony of Hewlett on the originality of Plaintiff’s works
and a comparison of his works with the alleged infringing works is
central to the claims alleged here.9

Defendants conclusorily state

that, “allowing such evidence long after the discovery date has

9

To the extent that Defendants are seeking to exclude
Hewlett’s testimony explaining aspects of his own works, such is
fact testimony rather than expert testimony, and thus not subject
to the Rule 26(a)(2)(c) requirements.
5

passed under the scheduling order and after this case has been on
file

for

Plaintiff

two

years,

asserts

would

that

it

clearly
has

fully

prejudice
informed

Defendants.”10
Defendants

of

Hewlett’s opinions and the bases for them in its responses to
interrogatories.
promptly

to

It should therefore be quite easy for Plaintiff

comply

with

Rule

26(a)(2)(C),

albeit

late.

Accordingly, it is ORDERED that within seven (7) days after the
date of this Order Plaintiff shall serve on Defendants its Rule
26(a)(2)(C)(i)

and

expected testimony.

(ii)

disclosures

pertaining

to

Hewlett’s

If Defendants in good faith contend that the

disclosures add new matters not previously disclosed in Plaintiff’s
responses to interrogatories, Hewlett’s deposition, and Hewlett’s
declaration opposing summary judgment, and which unfairly prejudice
Defendants, then the Court will consider a promptly filed motion to
strike such new matter(s) or consider granting a continuance to
cure

any

unfair

prejudice.

The

Motion

to

Exclude

Hewlett’s

Testimony (Document No. 55) is DENIED, without prejudice to being
reconsidered if Plaintiff does not serve the Rule 26(a)(2)(C)
disclosures as above required.11

10

Document No. 55 at 4.

11

Defendants’ Objections and Motion to Strike Evidence Filed
with Plaintiff’s Response to Motion for Summary Judgment (Document
No. 81) is DENIED as to their requests to strike paragraphs 11-96
of Hewlett’s declaration because of Plaintiff’s failure to comply
with Rule 26.
6

B.

John McGinty
Plaintiff

moves

to

strike

portions

of

the

declaration

of Defendants’ expert, John McGinty (Document No. 64).
witnesses are not allowed to “render conclusions of law.”

Expert
Snap-

Drape, Inc. v. C.I.R., 98 F.3d 194, 198 (5th Cir. 1996) (citing
Aldread v. City of Grenada, 988 F.2d 1425, 1436-37 (5th Cir.
1993)); Owen v. Kerr-McGee Corp., 698 F.2d 236, 240 (5th Cir.
1983)). However, “testimony in the form of an opinion or inference
otherwise admissible is not objectionable because it embraces an
ultimate issue to be decided by the trier of fact.”
704.

FED . R. EVID .

It is not clear that McGinty is attempting to use legal

definitions of “original” and “derivative” to state impermissible
conclusions of law, as suggested by Plaintiff, rather than merely
using these terms in their common usage to describe the historical
roots of architectural features and/or the process of creating an
architectural design.

The Court will assume the terms as used in

paragraphs 3, 5, and 14 are being used in the permissible manner,
and therefore denies Plaintiff’s motion to strike these sentences.
Plaintiff also moves to strike the sentence in paragraphs 7,
9, 11, 13, and 15, that “The similarities are based on functional
relationships between rooms required to meet the demands of the
market and client.”

Because McGinty provides no analysis or basis

for these conclusory opinions and does not explain what is meant by
the functional relationship between the rooms, etc., this sentence
7

is

STRICKEN

from

each

of

paragraphs

7,

9,

11,

13,

and

15.

Plaintiff’s motion to strike portions of McGinty’s Declaration
(Document No. 64) is otherwise DENIED.
C.

Plaintiff’s Exhibits
Defendants object to Plaintiff’s Exhibit 35 and Exhibits 37

through 66 on the grounds that they were not timely produced.12
These

exhibits

simply

contain

side-by-side

comparisons

of

Plaintiff’s and Defendants’ designs that were previously produced
on separate pages by both sides.

Defendants’ motion to strike

Exhibit 35 and Exhibits 37 through 66 is DENIED.
III.
A.

Motions for Summary Judgment

Summary Judgment Standard
Rule 56(a) provides that “[t]he 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).

Once the movant carries

this burden, the burden shifts to the nonmovant to show that
summary judgment should not be granted. Morris v. Covan World Wide
Moving, Inc., 144 F.3d 377, 380 (5th Cir. 1998).

A party opposing

a properly supported motion for summary judgment may not rest upon

12

Document No. 81 at 2-3.
8

mere allegations or denials in a pleading, and unsubstantiated
assertions that a fact issue exists will not suffice.

Id.

“[T]he

nonmoving party must set forth specific facts showing the existence
of a ‘genuine’ issue concerning every essential component of its
case.”

Id.

“A party asserting that a fact cannot be or is

genuinely disputed must support the assertion by: (A) citing to
particular parts of materials in the record . . .; or (B) showing
that the materials cited do not establish the absence or presence
of a genuine dispute, or that an adverse party cannot produce
admissible evidence to support the fact.”

FED . R. CIV . P. 56(c)(1).

“The court need consider only the cited materials, but it may
consider other materials in the record.”

Id. 56(c)(3).

In considering a motion for summary judgment, the district
court must view the evidence “through the prism of the substantive
evidentiary burden.”

Anderson v. Liberty Lobby, Inc., 106 S. Ct.

2505, 2513 (1986). All justifiable inferences to be drawn from the
underlying facts must be viewed in the light most favorable to the
nonmoving party.

Matsushita Elec. Indus. Co. v. Zenith Radio

Corp., 106 S. Ct. 1348, 1356 (1986).

“If the record, viewed in

this light, could not lead a rational trier of fact to find” for
the nonmovant, then summary judgment is proper.

Kelley v. Price-

Macemon, Inc., 992 F.2d 1408, 1413 (5th Cir. 1993).

On the other

hand, if “the factfinder could reasonably find in [the nonmovant’s]
favor, then summary judgment is improper.”

9

Id.

Even if the

standards of Rule 56 are met, a court has discretion to deny a
motion for summary judgment if it believes that “the better course
would be to proceed to a full trial.”

Anderson, 106 S. Ct. at

2513.
B.

Defendants’ Motion for Summary Judgment
Defendants move for summary judgment on Plaintiff’s copyright

infringement claim because (1) Plaintiff does not own a valid
copyright in the portion of its designs that Defendants allegedly
infringed upon, (2) Defendants did not have access to Plaintiff’s
designs, (3) the designs are not substantially similar, and (4)
Plaintiff cannot establish that any of Frontier’s revenues are
attributable to the alleged infringement.
In order to make a prima facie case of copyright infringement,
Plaintiff must prove (1) ownership of a valid copyright, and (2)
copying by defendant of constituent elements of the work that are
original.

Gen. Universal Sys., Inc., v. Lee, 379 F.3d 131, 141

(5th Cir. 2004) (quoting Feist Publ’ns, Inc. v. Rural Tel. Serv.
Co., 111 S. Ct. 1282, 1296 (1991)).
Plaintiff in the voluminous summary judgment evidence has
raised genuine issues of material fact on each of the essential
elements of its copyright infringement claims against Defendants as
to Plaintiff’s Plans 4187 and 4210.

As to these two Plans,

Defendants’ Motion for Summary Judgment will be DENIED.

10

Plaintiff

has made no showing, however, that Defendants ever had access to
Plans 4348, 4540, 4721, 5449, or 5092, or that Defendants ever used
such Plans in Frontier’s works.

Accordingly, as to these latter

five Plans, Defendants are entitled to summary judgment denying
Plaintiff’s copyright infringement claims.
C.

Plaintiff’s Motion for Partial Summary Judgment
1.

Plaintiff is the Owner of Valid Copyrights in the Works

Plaintiff’s uncontroverted summary judgment evidence shows
that Plaintiff’s principal Shane Hewlett independently created
Plans 4210, 4187, 4348, 4540, 4721, 5449, and 5092, the creation of
these plans required at least a minimal degree of creativity, and
that Plaintiff registered all of its works with the United States
Copyright

Office.13

Defendants

have

offered

no

evidence

to

contradict that proof; and Plaintiff has therefore established as
a matter of law that it is the owner of valid copyrights in these
works.
2.

Affirmative Defenses

Plaintiff moves for summary judgment to dismiss several of
Defendants’ affirmative defenses.14

13

A plaintiff moving for summary

Document No. 62, ex. A at 1-14.

14

In response to Plaintiff’s motion, Defendants withdrew their
defense that this Court lacks jurisdiction. They further withdrew
11

judgment on an affirmative defense, where defendant bears the
ultimate burden of proving the defense, may satisfy its burden by
showing the absence of evidence for an essential element of the
defense.

See Soto v. William’s Truck Serv., Inc., Civ. A. No.

3:11-CV-3242-B, 2013 WL 487070, at *3 (N.D. Tex. Feb. 8, 2013)
(citing F.D.I.C. v. Giammettei, 34 F.3d 51, 54 (2d Cir. 1994);
Celotex Corp., 477 U.S. at 323-24).
Defendants plead as an affirmative defense the bar of the
statute

of

limitations,

17 U.S.C. § 507.

which

for

copyright

is

three

years.

“In this Circuit a copyright claim accrues ‘when

[the party] knew or had reason to know of the injury upon which the
claim is based.’”

Jordan v. Sony BMG Music Entm’t Inc., 354 F.

App’x 942, 945 (5th Cir. 2009) (unpublished op.) (quoting Pritchett
v. Pound, 473 F.3d 217, 220 (5th Cir. 2006)); see also Interplan
Architects, Inc. v. C.L. Thomas, Inc., Civ. A. No. 4:08-CV-03181,
2010 WL 4366990, at *24 (S.D. Tex. Oct. 27, 2010) (Ellison, J.).
Shane Hewlett stated in his declaration that he first became
aware of the alleged infringement in December 2007 when he saw one
of the alleged infringing houses at 13723 Vinery Street while
driving around a neighborhood called Lakewood Oaks Estates looking

their affirmative defense of “substantial similarity,” recognizing
that this is not an affirmative defense but rather an element of
Plaintiff’s claim on which Plaintiff bears the burden of proof.
Document No. 63 at 7.
12

at Christmas lights displays.15

Plaintiff filed suit on December

3, 2010.16 Defendants contend that Hewlett should have known of the
injury before 2007,17 relying on summary judgment evidence that in
1997 Frontier was building houses in a subdivision adjacent to the
subdivision where Plaintiff’s Plan 4210 was being used to construct
a house on Kodes Clay Court.18

They contend that “Plaintiff should

have known these allegedly infringing houses were being built in
the Terranova subdivision as far back as 1997.”19

Defendants

produce no evidence, however, that any of the alleged infringing
houses was located in the Terranova subdivision, and Plaintiff
avers that there were no infringing houses being built there.20
Defendants’ unsupported allegation that Plaintiff “should have
known” of the injury giving rise to its cause of action more than
three years before filing suit--without proof of any facts--is
insufficient
their

statute

to
of

raise

a

genuine

limitations

issue

defense.

of

material

Plaintiff’s

fact

on

proof

is

uncontroverted, and Plaintiff is entitled to summary judgment on
the limitations defense.

15

Document No. 62, ex. A ¶ 20.

16

Document No. 1 (Orig. Cmplt.).

17

Document No. 63 at 3-5.

18

Document No. 63, ex. 17, App. 155-157.

19

Document No. 63 at 4.

20

Document No. 78 at 2.
13

Defendants in their Answers allege numerous other defenses
under the caption “Affirmative Defenses.” Plaintiff also moves for
summary

judgment

on

some

of

these

that

actually

are

not

“affirmative defenses,” upon which Defendants bear the burden to
raise a fact issue, but are simply the converse of facts that
Plaintiff must prove to establish its case.

Apart from what has

already been discussed, and because genuine issues of material fact
remain for trial on the core controversy, the better course is to
await a full development of the case at trial before ruling on
shades or phases of Defendants’ alleged defenses.

See Anderson,

106 S. Ct. at 2513.
IV.

Order

For the foregoing reasons, it is
ORDERED that Defendants Frontier Custom Builders, Inc. and
Ronald W. Bopp’s Motion to Exclude Plaintiff’s Expert Shane Hewlett
(Document No. 55) is DENIED without prejudice to being reconsidered
if Plaintiff does not within seven (7) days after the date of this
Order serve on Defendants the Rule 26(a)(2)(C) disclosures required
above at page 6; Plaintiff’s Objections to and Motion to Strike
Portions of Declaration of John McGinty (Document No. 64) is
GRANTED in part, as set forth above at pages 7 and 8, and is
otherwise DENIED; and Defendants’ Objections and Motion to Strike

14

Evidence Filed with Plaintiff’s Response to Motion for Summary
Judgment (Document No. 81) is DENIED.

It is further

ORDERED that Defendants’ Motion for Summary Judgment (Document
No. 56) is GRANTED as to Plaintiff’s copyright infringement claim
based on Plan 4348, Plan 4540, Plan 4721, Plan 5449, and Plan 5092.
The motion is otherwise DENIED, and Plaintiff’s Motion for Partial
Summary Judgment (Document No. 58) is GRANTED with regard to
Plaintiff’s ownership of valid copyrights in Plans 4187, 4210,
4348, 4540, 4721, 5449, and 5092, of which Plans 4187 and 4210
remain the subject of Plaintiff’s infringement case, and is further
GRANTED with regard to Defendants’ statute of limitations defense,
which defense is DISMISSSED.

Plaintiff’s motion is otherwise

DENIED.
The Clerk shall notify all parties and provide them with a
signed copy of this Order.
SIGNED at Houston, Texas, on this

21st

day of March, 2013.

____________________________________
EWING WERLEIN, JR.
UNITED STATES DISTRICT JUDGE

15