Designworks Homes, Inc. v. Columbia House of Brokers Realty, Inc.

421 F.Supp.3d 838

DESIGNWORKS HOMES, INC., et al., Plaintiffs,

v.COLUMBIA HOUSE OF BROKERS REALTY, INC., et al., Defendants.

Case No. 2:18-CV-04090-BCW

United States District Court, W.D. Missouri, Central Division.

Signed November 6, 2019

Kenneth N. Caldwell, Caldwell Law Firm, Kansas City, MO, for Plaintiffs.

Jeffrey J. Simon, William B. Kircher, Husch Blackwell LLP, Michael Owens, Edgar Law Firm LLC, Patrick David Kuehl, Jr., Rimon Law, Kansas City, MO, for Defendants.

ORDER

BRIAN C. WIMES, UNITED STATES DISTRICT JUDGE

Before the Court is Defendants' Motion for Summary Judgment (Doc. #72). The Court, being duly advised of the premises, grants Defendants' motion.

BACKGROUND

On May 4, 2018, Plaintiffs Designworks Homes, Inc., a design and build company, and Charles Lawrence James, Designworks' sole shareholder (collectively "Designworks") filed the above-captioned matter against Defendants Columbia House of Brokers Realty, Inc., Shannon L. O'Brien, Nicole Waldschlager, Deborah Ann Fisher, Jacqueline Bulgin, Carol S. Denninghoff, and John Doe 1. Defendant House of Brokers Realty is a real estate licensee and/or broker hired by a non-party to sell a residence located at 1713 Kenilworth, Columbia, Missouri. The individual defendants are real estate agents associated with the House of Brokers and involved in the listing and/or marketing for the sale of 1713 Kenilworth. (collectively, "Defendants").

In 1996, Designworks constructed a home located at 4306 Melrose, Columbia, Missouri. The home at this address is configured using an original expression referred to as "triangular atrium design with stairs" (hereinafter, "the Design"). Designworks would use the Design in at least four other subsequent home builds, including in the 1999 construction of a home located at 1713 Kenilworth.

In February 2017, the owner of 1713 Kenilworth hired Defendants to list and market 1713 Kenilworth for sale. As part of Defendants' attempt to sell the home, Defendants hired a third party to measure the interior of 1713 Kenilworth and create a drawing of the structure's floorplan. ("the Floorplan"). Defendants caused the Floorplan to be published in connection with Defendants' attempts to sell 1713 Kenilworth between February and July 2017.

Designworks' claims against Defendants arise from the Floorplan, which Designworks alleges violates the Copyright Act of 1976, 17 U.S.C. § 501(a) and the Visual Artists Rights Act of 1990, 17 U.S.C. § 106A ("VARA").

Designworks alleges the following claims based on their rights in the Design and Defendants' creation of the Floorplan: (I) copyright infringement; (II) contributory infringement; (III) vicarious infringement; and (IV) violation of VARA.

LEGAL STANDARD

A party is entitled to summary judgment if there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56 ; Rafos v. Outboard Marine Corp., 1 F.3d 707, 708 (8th Cir. 1993) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) ). The moving party bears the burden to establish both the lack of any genuine issue of material fact and an entitlement to judgment as a matter of law. Celotex, 477 U.S. at 323, 106 S.Ct. 2548. In applying this burden, the Court affords to the non-moving party the benefit of all reasonable factual inferences. Mirax Chem. Prods. Corp. v. First Interstate Commercial Corp., 950 F.2d 566, 569 (8th Cir. 1991) ).

UNCONTROVERTED FACTS

In 1996, Designworks designed and constructed a home at 4306 Melrose in Columbia, Missouri. The home design is configured and described as a "triangular atrium design with stairs" (hereinafter, "the Design"). Between 1996 and 2001, Designworks used the Design in at least 4 other residential builds.

In 1999, Designworks designed and constructed a home, using the Design, at 1713 Kenilworth in Columbia, Missouri. The completed structure at this location is visible from a public street.

In 2004, Designworks applied for and received a copyright registration for a house in which it used the Design located at 4804 Chilton Court, Columbia, Missouri. The copyright application was titled "Atrium ranch on walk out; Angular atrium ranch." The registration number for this copyright for "Architectural work," effective May 10, 2004, is VAu 623-402.¹ ("Registration C"). The deposit materials for Registration C are photographs of the exterior and interior structure at 4804 Chilton and drawings.

In 2013, Designworks applied for and received a copyright registration for an architectural work that used the Design. The copyright application was titled "2,187SF." The registration number for this copyright for an architectural work, effective June 6, 2013, is VAu 1-133-136.² ("Registration U"). The architectural work for Registration U was never built. The deposit materials for Registration U are drawings.

On February 23, 2017, Defendants listed the home at 1713 Kenilworth for $465,000.00. Defendant House of Brokers was the designated broker for the 1713 Kenilworth and the real estate agents for the listing were Jackie Bulgin, Shannon O'Brien, and Debbie Fisher.

On February 15, 2017, Sphero Tours / Shawn Ames ("Sphero") sent an invoice to Defendant House of Brokers, care of Jackie Bulgin, for Sphero's work measuring the interior dimensions and creating a computer aided design drawing of the interior of 1713 Kenilworth.³

On February 23, 2017, Defendant Jackie Bulgin completed a Residential Property Data Entry Form, MLS #308591, for 1713 Kenilworth in the Flexmls/MLS system. Bulgin selected the option to export the listing for 1713 Kenilworth to all available options, including Realtor.com, Supra, Zillow, and Homes.com. Pursuant to Bulgin's authorization on the MLS, the Floorplan was distributed to Realtor.com, where Designworks discovered it. Defendants marketed 1713 Kenilworth using the Floorplan from February 2017 to July 2017. The house did not sell during that time period.

In April 2018, Designworks registered copyrights in the technical drawings for 4306 Melrose and for 1713 Kenilworth. The copyright application for 1713 Kenilworth was titled "1713 Kenilworth / Heritage Meadows." The registration number for this copyright for a work of visual art is VAu 1-329-938, with a year of completion of 1999.⁴ ("Registration K"). The deposit materials for Registration K are drawings. In contrast with Registration C and Registration U, which are both registered as architectural works, Registration K is registered as a technical drawing and a work of visual art.

ANALYSIS

Defendants' motion for summary judgment argues there is no genuine issue of material fact and it is entitled to judgment as a matter of law on each of Designworks' four claims relating to the Floorplan.

A. Defendants are entitled to summary judgment on Designworks' claim for copyright infringement alleged in Count I.

"The Congress shall have Power ... to Promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective writings and Discoveries." Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 546, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985) (citing U.S. Const. art. I, § 8).

The Copyright Act protects "original works of authorship fixed in any tangible medium of expression ...." 17 U.S.C. § 102(a). The Copyright Act confers upon the owner of a copyright "a bundle of exclusive rights ...." Harper, 471 U.S. at 546, 105 S.Ct. 2218 (citing 17 U.S.C. § 106 ). "[T]hese rights – to publish, copy, and distribute the author's work – vest in the author of an original work from the time of its creation." Id.

These rights, however, apply only to a work's aspects that are independently created and have some degree of creativity. Feist Publns., Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 345, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991). Copyright protection does not cover "any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work." 17 U.S.C. § 102(b).

To make a prima facie case for copyright infringement, a plaintiff must prove: (1) ownership of a valid copyright in the work allegedly infringed; and (2) the defendant copied, displayed, or distributed protected elements of the copyrighted work without authorization. Taylor Corp. v. Four Seasons Greetings, LLC, 315 F.3d 1039, 1042 (8th Cir. 2003) (citing Moore v. Columbia Pictures Indus., Inc., 972 F.2d 939, 941 (8th Cir. 1992) (citing Feist, 499 U.S. at 361, 111 S.Ct. 1282 ("The establish infringement, two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original."))).

1. Defendants are entitled to summary judgment on Count I for Registration C and Registration U.

The Court of Appeals for the Eighth Circuit has observed the infringement element "[t]ypically ... cannot be proven directly." Moore, 972 F.2d at 941. "Therefore, copying can be established by demonstration of access (by the alleged infringer) and substantial similarity (between the works at issue.)." Id. at 941-42.

A plaintiff alleging infringement can establish the access requirement of the infringement element "by showing that the defendants had an opportunity to view or to copy his work." Id. at 942 (citing Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157, 1172 (9th Cir. 1977) ). A "bare possibility of access" is insufficient; rather, a plaintiff "must prove that the defendants had a ‘reasonable possibility’ of viewing his work." Id. (citing Ferguson v. Natl' Broad., Co., 584 F.2d 111, 113 (5th Cir. 1978) ).

Under the uncontroverted facts of this case, Designworks has copyrights in Registration C and in Registration U. Registration C is for an architectural work and has underlying deposit materials of structural photographs of 4804 Chilton, which uses the...