Ranieri v. Adirondack Dev. Grp., LLC

164 F.Supp.3d 305

Dominick Ranieri, d/b/a Dominick Ranieri Architect, P.C., Plaintiff,

v.Adirondack Dev. Group, LLC; Hodorowski Homes, LLC; J. Luk Constr. Co., LLC; Coldwell Banker Prime Props., Inc.; Francis J. Hodorowski, Sr.; Francis J. “Luke” Hodorowski, Jr.; Kenneth Raymond, Jr.; Northstar Home Designs, LLC; Creative Concepts Home Plan Servs., LLC; John Kazmierczak; Paul Hodorowski; Stephen Edward Lamb; and Capital Dev. Group, LLC, Defendants.

1:11-CV-1013 (GTS/CFH)

United States District Court, N.D. New York.

Signed February 22, 2016

ERIN P. MEAD, ESQ., MATTHEW H. McNAMARA, ESQ., PAUL D. JURELLER, ESQ., THORN GERSHON TYMANN & BONANNI, LLP, Counsel for Plaintiff, 5 Wembley Court, New Karner Road, P.O. Box 15054, Albany, New York 12212-5054.

JOHN J. DOWD, ESQ., DREYER BOYAJIAN, LLP, Counsel for Adirondack Defendants and J. Luk Construction Co., LLC, 75 Columbia Street, Albany, New York 12210.

MICHAEL A. OROPALLO, ESQ., BARCLAY DAMON, LLP, Counsel for Coldwell Banker Defendants and Kenneth Raymond, One Park Place, 300 South State Street, Syracuse, New York 13202-2078.

MATTHEW J. KELLY, ESQ., ROEMER WALLENS GOLD & MINEAUX LLP, Counsel for Northstar Defendants and Stephen E. Lamb, 13 Columbia Circle, Albany, New York 12203.

DECISION and ORDER

GLENN T. SUDDABY, Chief United States District Judge

Currently before the Court, in this copyright infringement action filed by Plaintiff, Dominick Ranieri, d/b/a Dominick Ranieri Architect, P.C. (“Plaintiff”) against the above captioned entities and individuals (“Defendants”), are the following four motions for summary judgment, pursuant to Fed. R. Civ. P. 56 : (1) Plaintiff's motion for partial summary judgment against Defendants, Adirondack Development Group, LLC (“ADG”), Capital Development Group, LLC, Hodorowski Homes, LLC, Francis J. Hodorowski, Sr., Francis J. “Luke” Hodorowski, Jr. (“John Hodorowski”),¹ Paul Hodorowski (collectively “Adirondack”), John Kazmierczak, and Northstar Home Designs, LLC (Dkt. No. 93); (2) a motion for summary judgment filed by Defendants Northstar, John Kazmierczak, Creative Concepts Home Plan Services, LLC, (collectively “Northstar”) and Stephen E. Lamb, seeking to dismiss the Amended Complaint as against them (Dkt. No. 97); (3) a motion for summary judgment filed by Defendants Coldwell Banker Prime Properties, Inc. (“C.B. Prime”), and Kenneth Raymond, Jr., seeking to dismiss the Amended Complaint as against them (Dkt. No. 98); and (4) a motion for summary judgment filed by the Adirondack Defendants and J. Luk Construction Co., LLC, seeking to dismiss the Amended Complaint as against them (Dkt. No. 101).

For the reasons set forth below, Plaintiff's motion is granted in part and denied in part and Defendants' respective motions are granted in part and denied in part.

TABLE OF CONTENTS

I. RELEVANT BACKGROUND ...––––

A. Factual Background. ...––––

B. Plaintiff's Motion for Partial Summary Judgment....––––

C. Northstar's Motion for Summary Judgment. ...––––

D. Defendant Raymond and C.B. Prime's Motion for Summary Judgment....––––

E. Adirondack's Motion for Summary Judgment. ...––––

II. STANDARD GOVERNING A MOTION FOR SUMMARY JUDGMENT...––––

III. ANALYSIS...––––

A. Whether Plaintiff's Copyrights Were Infringed....––––

1. Whether Plaintiff's Work Is Protected by a Valid Copyright ...––––

a. Whether Plaintiff's Failure to Advise the Copyright Office that He Is Not the Original Author of the Designs Used to Create Admiral's Walk Invalidates His Copyright. ...––––

b. Whether Plaintiff's Final Design for Admiral's Walk Is a Derivative of The Martin Group's Cambridge Drawings and Whether They Are Sufficiently Original to Be Entitled to Copyright Protection. ...––––

c. Whether Plaintiff's Copyright for Admiral's Walk Should Be Invalidated Because the Registration Certificate Failed to List the Correct Date of Creation or Designate the Author as a Work Made for Hire....––––

2. Whether Plaintiff's Designs Were Copied and Whether Such Copying Was Wrongful. ...––––

a. Adirondack and Northstar. ...––––

b. Defendants Paul Hodorowski, J. Luk Construction Co., and Stephen Lamb. ...––––

c. C.B. Prime and Defendant Raymond....––––

B. Whether Defendants Had Implied Non-Exclusive Licenses to Use Plaintiff's Designs. ...––––

1. Vly Point. ...––––

2. Admiral's Walk. ...––––

3. Patroon Point & Jordan Point. ...––––

C. Whether Plaintiff's Copyright Infringement Claims Are Time-Barred. ...––––

1. Admiral's Walk & Vly Point. ...––––

2. Jordan Point. ...––––

D. Whether Defendants Can Be Held Liable for Contributory Copyright Infringement....––––

1. Adirondack Defendants. ...––––

2. Defendants Kazmierczak, Lamb, and Northstar. ...––––

3. C.B. Prime and Defendant Raymond....––––

4. Vicarious Liability. ...––––

E. Whether the First Sale and Exhaustion Doctrines Preclude Plaintiff's Infringement Claims Related to Vly Point and Admiral's Walk. ...––––

F. Whether C.B. Prime's Use of Plaintiff's Designs Was Permissible Under the Fair Use Doctrine. ...––––

1. Factor One: the Purpose and Character of the Use. ...––––

a. Transformative Use. ...––––

b. Commercial Use....––––

2. Factor Two: the Nature of the Work. ...––––

3. Factor Three: the Amount and Substantiality of the Portion Used....––––

4. Factor Four: the Effect of the Use Upon the Market for or Value of the Original. ...––––

5. Overall Assessment. ...––––

G. Whether Defendants Violated the Lanham Act ...––––

H. Whether Plaintiff May Recover Statutory Damages and/or Attorneys' Fees. ...––––

I. Whether Plaintiff's Claim for Unfair Competition Under N.Y. Gen. Bus. Law § 349 Should Be Dismissed....––––

J. Whether Plaintiff's Claim for Interference with Business Relations/Contract and Interference with Economic Advantage Should Be Dismissed....––––

K. Whether Plaintiff's Conspiracy Claim Should Be Dismissed. ...––––

L. Whether Plaintiff's Breach-of-Contract Claims Should Be Dismissed as to All Defendants Except Adirondack and Hodorowski Homes, LLC...––––

I. RELEVANT BACKGROUND

A. Factual Background

Generally, the salient facts regarding the parties' respective motions are as follows. Plaintiff is an architect licensed in New York State. (Dkt. No. 94, Attach. 21, ¶ 5 [Pl.'s Rule 7.1 Statement].) Defendants John Hodorowski and Francis J. Hodorowski, Sr., owned ADG which was later renamed as Hodorowski Homes, LLC, at some point between 2011 and 2012 and taken over by Defendants John and Paul Hodorowski. (Id. , ¶¶ 7-8, 10.) Hodorowski Homes, LLC, is in the business of residential single and multi-family home construction. (Id. , ¶ 9.) Capital Development Group, LLC, is owned equally by Defendants Francis J. Hodorowski, Sr., and Kenneth Raymond, Jr. (Id. , ¶ 11.) Capital Development Group was an owner and the developer of three development projects referred to in this action as Vly Point, Admiral's Walk, and Jordan Point. (Id. , ¶¶ 13-14, 18.) J. Luk Construction Co., LLC, is a general construction company owned by John and Paul Hodorowski. (Dkt. No. 93, ¶ 15 [Mead Aff.].)

Defendant, John Kazmierczak, is a draftsman (an unlicensed architect) and the owner of Northstar. (Dkt. No. 94, Attach. 21, ¶ 15 [Pl.'s Rule 7.1 Statement]; Dkt. No. 93, ¶ 18 [Mead Aff.].) Stephen E. Lamb is an independent contractor who typically stamped Defendant Kazmierczak's designs. (Dkt. No. 93, ¶ 18 [Mead Aff.].)

Vly Point

At some point before December 2005, Plaintiff was approached by Defendants Francis and John Hodorowski about designing buildings and creating plans for a condominium development project referred to as Vly Point. (Id. , ¶¶ 16-17.) Plaintiff presented a proposal for Vly Point to ADG on September 29, 2004, and a contract was entered into between the parties on December 9, 2004. (Id. , ¶¶ 20-21.) In accordance with the contract, Plaintiff developed plans for Vly Point, which were to be used solely for that project. (Id. , ¶¶ 24, 27, 29.) ADG was the builder of Vly Point; Capital Development Group was the owner and developer; Francis Hodorowski, Sr., worked with Plaintiff in the conceptual design of the project; John Hodorowski was the estimator and project manager; and Paul Hodorowski worked in the field doing punch-list items and served as the sales liaison for the project. (Id. , ¶ 18.)

Admiral's Walk

While the Vly Point project was underway, Plaintiff was approached to design condominium units for Admiral's Walk. (Id. , ¶ 58.) At the time Plaintiff was consulted regarding this project, site plan and zoning approvals had been issued based upon drawings drafted by The Martin Group architectural firm. (Id. , ¶ 62.) Plaintiff had a previous relationship with The Martin Group and reached an agreement with them to purchase the drawings. (Id. , ¶ 63.) According to the agreement, Plaintiff owned the copyrights to the design, plans, and drawings and could modify them if he chose to do so. (Id. , ¶ 64.) After the site plan had been approved by municipal authorities, Plaintiff was hired by ADG to further develop the basic concept design of these drawings. (Id. , ¶ 65.) The parties entered into an agreement on March 17, 2005. (Id. , ¶ 66.) As in the Vly Point project, ADG was the builder of Admiral's Walk, Capital Development Group was part owner, and John Hodorowski was the estimator and project manager. (Id. , ¶ 60.)

Plaintiff provided ADG with a “Permit and Construction” set of drawings for this project. (Id. , ¶ 69.) Some of the changes made to The Martin Group's original drawings included the removal of dormers, elimination of stone and using brick, changes to the arch detail, elimination of windows, and a fourth floor “bonus” room. (Id. , ¶ 70.) Plaintiff's drawings became the permit and construction set of drawings for Admiral's Walk and were stamped by Plaintiff and accepted by ADG. (Id. , ¶ 71.)

Patroon Point

ADG hired Plaintiff to provide designs, plans, and drawings for a townhouse project referred to as Patroon Point. (Id. , ¶ 93.) Plaintiff provided ADG with a construction set of drawings for Patroon Point to use for construction. (Id. , ¶ 97.) Adirondack had permission to use Plaintiff's...