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Case 1:05-cv-02162-JFK Document 79 Filed 05/14/07 Page 1 of 41
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
`
`CIVIL ACTION FILE
` NO. 1:05-CV-2162-JFK
`
`JUDY GORDON and AXIO
`DESIGN, LLC,
` Plaintiffs
` v.
`ROBERT A. LEE, BRENDAN C.
`MURPHY, BCM CUSTOM HOMES,
`INC., a Georgia Corporation, SARAH
`M. LEE, CHESAPEAKE
`DEVELOPMENT, INC., a Georgia
`Corporation, and RAL PROPERTIES
`AND DEVELOPMENT, INC.,
` Defendants.
`
`ORDER AND WRITTEN OPINION
`
`In the above-styled copyright infringement case, Plaintiffs have asserted two
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`causes of action based on Federal law and numerous state law claims. Plaintiffs have
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`asserted a claim of copyright infringement under the Copyright Act, 17 U.S.C. § 101,
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`et seq., and a trademark infringement claim based on the Lanham Act, 15 U.S.C. §
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`1125. [Doc. 1, Counts X and XI]. In addition to the federal claims, Plaintiffs’
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`complaint includes the following claims based on Georgia law: breach of contract
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`(Counts I and III); tortious interference with contract and business relations (Counts
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`II and IV); breach of fiduciary duties (Count V); tortious inducement to breach
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`fiduciary duties (Count VI); misappropriation, trover and conversion (Count VII);
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`unjust enrichment (Count VIII); piercing the corporate veil/alter ego doctrine (Count
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`IX); state law trademark infringement (Count XI); violation of the Georgia Uniform
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`Deceptive Trade Practices Act (Count XII); violation of the Georgia Trade Secrets Act
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`(Count XIII); violation of Georgia Computer Systems Act (Count XIV); equitable
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`accounting (Count XV); constructive trust (Count XVI); and attorney’s fees (Count
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`XVII). [Doc. 1]. Defendants Robert Lee and BCM have asserted against Plaintiffs the
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`following counterclaims: breach of contract (Counts I and II); breach of fiduciary duty
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`(Count III); equitable accounting (Count IV); declaratory judgment (Count V); breach
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`of private duty (Count VI); and dissolution of Defendant Axio’s corporate status
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`(Count VII). [Doc. 8]. This case is presently before the court on a motion [Doc. 52]
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`for partial summary judgment filed by Plaintiffs and on a motion [Doc. 55] for
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`summary judgment filed by Defendants. The predominant issue in both summary
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`judgment motions is whether Defendants’ use of certain residential design plans
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`constituted copyright infringement.
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`I.
`
`Facts
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`When evaluating the merits of a motion for summary judgment, the court must
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`view the evidence and factual inferences in a light most favorable to the non-moving
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`party. See Rollins v. TechSouth, Inc., 833 F.2d 1525, 1528 (11th Cir. 1987). However,
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`unsupported self-serving statements by the party opposing summary judgment are
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`insufficient to avoid summary judgment. See Midwestern Waffles, Inc. v. Waffle
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`House, Inc., 734 F.2d 705, 714 (11th Cir. 1984). Therefore, the evidence presented by
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`the parties having been evaluated in accordance with the foregoing principles, the
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`following facts are deemed to be true for the limited purpose of evaluating Plaintiffs’
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`motion [Doc. 52] for partial summary judgment and Defendants’ motion [Doc. 55] for
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`summary judgment.
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`Plaintiff Judy Gordon is an architect who received her Master’s Degree in
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`Architecture from Columbia University. [Plaintiff’s Statement of Material Facts
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`(“PSMF”) ¶ 3]. She worked as a licensed architect in New York from 1986 until 1997,
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`at which time she moved to Atlanta. [PSMF ¶ 3]. From 1997 to 2000, Plaintiff
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`Gordon taught architectural design studios as a part-time professor at Georgia Tech as
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`well as working part-time for various architectural firms and design studios in Atlanta.
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`[PSMF ¶ 4]. One of the design studios at which Plaintiff Gordon worked in Atlanta
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`was Rice Design Studio. [PSMF ¶ 6]. At the time Plaintiff Gordon worked at Rice
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`Design Studio, Defendant Robert A. Lee and Herman Howard were partners at Rice
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`Design Studio. [PSMF ¶ 7]. Defendant Lee received a Master’s Degree in
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`Architecture from the Georgia Tech in 1999 but has never been licensed as a
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`professional architect. [PSMF ¶ 8].
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`In or around September of 2000, Plaintiff Gordon, Defendant Lee, and Howard
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`joined together to form and become partners in The Design Collaborative Kaisen, LLC
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`(“TDC”), in Atlanta. [PSMF ¶ 1; Gordon Deposition (“Dep.”) at 25]. The work
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`initially performed by TDC was architectural design, interior design, and graphic
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`design. [PSMF ¶ 2]. Plaintiff Gordon became a licensed architect in Georgia in 2001.
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`[PSMF ¶ 5].
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`In late 2000 or early 2001, TDC entered into a joint venture with Defendant
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`BCM Custom Homes (“BCM”) to design and build houses in an area of Atlanta called
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`Lynwood Park. [PSMF ¶ 9; Gordon Dep. at 39]. Defendant Brendan C. Murphy,
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`President of BCM, testified that the TDC/BCM joint venture (“Lynwood Park joint
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`venture”) began as follows:
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`Robert Lee and I had built one house together. I became aware of the
`property in Lynwood Park. Rob and I both were interested in doing in-
`town in-fill. I introduced him to the property, asked him if he wanted to
`do it with me. He did, but he wanted to bring in his firm, do it as a
`partnership between two firms as opposed to he individually.
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`[PSMF ¶ 10; Murphy Dep. at 10-11, 31]. Murphy testified to the following with
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`regard to the terms of the agreement between BCM and TDC:
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`We agreed that TDC and BCM would jointly purchase property, jointly
`get construction loans, TDC would design the homes, TDC would – in
`the design, would do all the selections of colors and cabinets and flooring
`and put together a start package, which covers all of those things. BCM
`and TDC would jointly manage the construction. BCM would provide
`subcontractors, would handle the accounting, and some of the
`administration. The administrative duties would be split.
`
`[Murphy Dep. at 33-34]. Plaintiff Gordon characterized the agreement as a
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`“partnership” and testified: “The Lynwood Park Partnership was formed to design and
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`build houses in Lynwood Park. . . . There was a document produced that outlined the
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`responsibilities of that partnership, and then that partnership was registered with the
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`Secretary of State.” [Gordon Dep. at 39]. Gordon testified, however, that the
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`document was not signed; instead, “[i]t was an understanding that [the parties
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`involved] were moving together on this project.” [Gordon Dep. at 40].
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`Plaintiff Gordon testified that in approximately July of 2001, a guaranty with
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`SunTrust was signed by Gordon, her husband, Robert Lee, Lee’s wife Sarah, and
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`Herman Howard, in order to secure loan monies to purchase properties in Lynwood
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`Park. [Gordon Dep. at 58, 61, 62, 66]. Gordon testified, “I was asked to look at the
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`SunTrust Guaranty and sign it, so that we can buy properties together using the loan
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`monies to buy properties, and together, I mean BCM and TDC.” [Gordon Dep. at 58].
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`Murphy testified that he and Robert Lee agreed that the profits would be split
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`50-50 and that the “plans were the joint property . . . of the partners, and both groups
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`had rights to these, continuing rights.” [Murphy Dep. at 34-35]. Plaintiff Gordon
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`could not recall if she was involved in any discussions with Lee or Murphy about who
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`would own or have the right to the home designs created for the Lynwood Park joint
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`venture. [Gordon Dep. at 83]. Robert Lee testified:
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`The agreement was that TDC would provide plans, design services for
`houses in Lynwood Park. We would provide construction management
`for houses in Lynwood Park. We would provide marketing services for
`projects in Lynwood Park. We would provide selection service and start
`packages for projects in Lynwood Park. We would work with agents and
`buyers for houses that were being sold. We would all take a financial risk
`in the project, in terms of loans for the construction of the houses. We
`would all share in the ownership of plans for the houses that were
`designed there, and we would all look for new opportunities to build
`houses.
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`[Robert Lee Dep. at 47]. Lee also testified that under the terms of the agreement,
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`BCM’s responsibilities consisted of the following: “The accounting for the projects out
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`there, construction management for the houses out there, working with buyers, sales
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`agents, marketing, finding new property, reviewing the plans of a design, giving input
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`on those plans.” [Robert Lee Dep. at 47-48]. Lee stated that TDC was partially
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`responsible for design and that BCM “gave input on design, types of style of houses,
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`elevations, looks of houses, how big the house should be.” [Robert Lee Dep. at 48].
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`As noted, TDC was formed in September of 2000 by Plaintiff Judy Gordon,
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`Defendant Lee, and Herman Howard. [PSMF ¶ 1]. In the fall of 2001, Howard left
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`TDC at the behest of Plaintiff Gordon and Defendant Lee. [PSMF ¶ 11]. After the
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`departure of Howard, Plaintiff Gordon and Defendant Lee reorganized TDC,
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`redistributed responsibilities between Defendant Lee and Plaintiff Gordon, and
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`renamed it Axio Design, LLC (“Axio”), in 2002. [PSMF ¶ 12].
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`Plaintiff Gordon testified to the following with regard to her involvement in the
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`Lynwood Park joint venture:
`
`I helped look for some property over the Internet, because I was looking
`at some tax records. I didn’t do a lot of that at all. I design houses. I did
`construction sets. I did some permit sets. I did some marketing. I met
`with . . . potential buyers. . . . Things of that nature, went out and chose
`light fixtures for homes. . . . I designed houses. I worked on plans,
`elevations, I supervised – when we were Axio, I supervised employees
`who were doing construction documents. I worked with Rob [Lee] on
`some of the design of houses. I showed Brendan [Murphy, BCM
`President] some plans of the houses. So it was, you know, everyone was
`taking a look and giving opinions.
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`[Gordon Dep. at 42-43]. Plaintiff Gordon further testified that she prepared
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`construction drawings for the homes in the Lynwood Park joint venture, “[a]nd even
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`on some of those drawings, details were used from one project to another that weren’t
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`necessarily drawn by me particular. As I mentioned that this was more of a
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`collaborative effort, and so we were sharing information, as a firm does.” [Gordon
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`Dep. at 50]. When Plaintiff Gordon was asked if she was exclusively responsible for
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`any home designs in the Lynwood Park joint venture, she responded: “[E]xclusive is
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`a tough word, because as I mentioned that I would have other people look at it. So
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`there were houses that I did most of the work for, if you could look at it that way, but
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`I wouldn’t use the word exclusive. Again, because I would have people look at them
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`and give me their opinions on them.” [Gordon Dep. at 50]. Lee stated in his affidavit,
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`“I participated in the development and drafting of the Plans and Drawings for the
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`Partnership. The ten homes designed by the Partnership were given the names Amelia,
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`Avalon, Cedarbrook, Fernwood, Fernwood Alt A, Jonsborough, Lancaster, LaSalle,
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`Presston, and Presston Alt A.” [Robert Lee Affidavit (“Aff.”) ¶ 6].
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`Plaintiff Gordon testified that Brendan Murphy’s involvement in the design of
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`homes was very limited. [Gordon Dep. at 53]. Gordon stated that when she finished
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`a plan, she met with Murphy and asked him if there was anything that should be
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`changed. He would then review the plan and give his opinion. [Gordon Dep. at 54].
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`Murphy testified that “BCM had input into designs; did not do the design work itself.”
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`[Murphy Dep. at 27-28]. There was never any written agreement between Gordon and
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`Lee and Murphy, or between Axio and BCM, establishing ownership rights to the
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`residential property designs created during the Lynwood Park joint venture. [PSMF
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`¶ 17].
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`In September of 2002, Defendant Lee and Defendant Murphy met with Plaintiff
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`Gordon at a restaurant in Atlanta. Lee informed Gordon that he wanted to withdraw
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`from Axio and pursue a business relationship with Murphy and BCM. [Robert Lee
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`Dep. at 104, Ex. 4; Gordon Dep. at 90-92]. During the meeting, Lee handed Gordon
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`a letter which stated, in part:
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`This letter is to serve as my formal notice to withdraw from Axio Design,
`LLC. I have included in this notice a review of our current company’s
`operating agreement given by Harold Hudson as well as a review of my
`corporate responsibility regarding my ability to enter a business
`relationship with Brendan Murphy. Also included in this notice is a
`proposal for how the assets of Axio Design, LLC should be divided as
`well as a way Axio Design may be removed from the construction
`liabilities in Lynnwood [sic] Park.
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`[Robert Lee Dep. at 104, Ex. 4; Gordon Dep. at 90]. Lee also wrote, “I had hoped that
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`we might be able to develop a multi-purpose company combining architecture,
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`construction, and development. . . . But since I have been spending the majority of my
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`time in the construction portion of the business, I realize that this is where I want to
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`focus my efforts.” [Id.]. Murphy testified that during the meeting, he told Gordon that
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`“BCM would not continue the relationship with Axio, that we would wrap up what we
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`had ongoing, and that would be it.” [Murphy Dep. at 55].
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`After Defendant Lee’s disassociation from Axio, he returned to Axio’s offices
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`when Plaintiff Gordon was not there and removed two stand-alone desktop computers,
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`a jacket, some cups, and some books. [PSMF ¶ 18; Robert Lee Dep. at 132-138]. Lee
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`testified that he did not give any compensation for the property removed from Axio’s
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`office “because over half the property was left at the office.” [Robert Lee Dep. at 138].
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`
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`Lee and Murphy formed Defendant Chesapeake Development, Inc.
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`(“Chesapeake”), after the dissolution of the Axio/BCM Lynwood Park joint venture.
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`Chesapeake was formed in order to continue building and selling residential properties
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`in Lynwood Park as well as other areas in Atlanta. [PSMF ¶ 16]. BCM and/or
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`Chesapeake built approximately 25 more homes in the Lynwood Park neighborhood.
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`[Defendants’ Statement of Material Facts (“DSMF”) ¶ 23].
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`Defendant Sarah Lee is the marketing director for Chesapeake and works on
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`marketing plans for residential properties. Chesapeake’s website is under her
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`authority, although she does not manage it. [PSMF ¶ 19; Murphy Dep. at 96-98; Sarah
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`Lee Dep. at 64]. Marketing drawings for houses that were for sale by Chesapeake in
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`Lynwood Park were included on the Chesapeake website for marketing purposes.
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`[PSMF ¶ 20; Defendants’ Response (“Def. Resp.”) to PSMF ¶ 20; Doc. 72, Ex. E;
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`Robert Lee Aff. ¶ 10]. Murphy stated that BCM authorized Chesapeake to post
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`“marketing Drawings and photographs of the houses on its website.” [Murphy Aff. ¶¶
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`12, 13].
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`On May 3 and 5, 2004, Plaintiff Gordon filed Certificates of Registration with
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`the United States Copyright Office for the design plans created during the Lynwood
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`Park joint venture. Gordon listed Axio as the sole author and owner of the works.
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`[Doc. 52, Exs. C, D; DSMF ¶ 22]. On May 3, 2004, Axio residential design plans
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`entitled “Amelia”, “Fernwood”, “Fernwood Alt A”, “Jonsborough”, “La Salle”,
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`“Presston”, and “Presston Alt A” were registered. [PSMF ¶ 21; Doc. 52, Ex. C]. On
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`May 5, 2004, Axio residential design plans entitled “Avalon”, “Cedarbrook”, and
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`“Lancaster” were registered with the Copyright Office. [PSMF ¶ 22; Doc. 52, Ex. D].
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`Gordon testified that she sent to the Copyright Office the marketing brochures, the
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`photographs, and the construction documents for each house. [Gordon Dep. at 146-
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`47]. Murphy testified that neither BCM nor Chesapeake has ever applied for copyright
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`protection for anything. [Murphy Dep. at 93].
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`Additional facts will be set forth below as they become necessary for discussion
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`of the parties’ claims.
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`II.
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`Summary Judgment Standard
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`Summary judgment is proper “if the pleadings, depositions, answers to
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`interrogatories, and admissions on file, together with affidavits, if any, show that there
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`is no genuine issue as to any material fact and that the moving party is entitled to
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`judgment as a matter of law.” Fed. R. Civ. P. 56(c). Rule 56(c) mandates the entry of
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`summary judgment, after adequate time for discovery, against a party “who fails to
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`make a showing sufficient to establish the existence of an element essential to that
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`party’s case, and on which that party will bear the burden of proof at trial.” Celotex
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`Corp. v. Catrett, 477 U.S. 317, 322, 106 S. Ct. 2548, 2552, 91 L. Ed. 2d 265 (1986).
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`The standard for granting summary judgment mirrors the directed verdict standard
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`under Rule 50(a), which requires the court to grant a directed verdict where there can
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`be but one reasonable conclusion. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
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`250, 106 S. Ct. 2505, 2511, 91 L. Ed. 2d 202 (1986).
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`The movant bears the initial burden of asserting the basis of its motion, and that
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`burden is a light one. See Celotex, 477 U.S. at 323, 106 S. Ct. at 2553. The movant
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`is not required to negate its opponent’s claim. See id. Rather, the movant may
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`discharge this burden merely by “‘showing’ -- that is, pointing out to the district court
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`-- that there is an absence of evidence to support the non-moving party’s case.” Id. at
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`325, 106 S. Ct. at 2554. When this burden is met, the non-moving party is then
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`required to “go beyond the pleadings and . . . designate ‘specific facts showing that
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`there is a genuine issue for trial.’” Id. at 324, 106 S. Ct. at 2553 (quoting Fed. R. Civ.
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`P. 56(e)).
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`While the evidence and factual inferences are to be viewed in a light most
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`favorable to the non-moving party, see Rollins, 833 F.2d at 1529; Everett v. Napper,
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`833 F.2d 1507, 1510 (11th Cir. 1987), that party “must do more than simply show that
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`there is some metaphysical doubt as to the material facts,” Matsushita Electrical Indus.
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`Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S. Ct. 1348, 1356, 89 L. Ed. 2d 538
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`(1986). The non-moving party must come forward with specific facts showing there
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`is a genuine issue for trial. See id. at 587. An issue is not genuine if it is created by
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`evidence that is “merely colorable” or is “not significantly probative.” Anderson, 477
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`U.S. at 249-50, 106 S. Ct. at 2511; accord Young v. General Foods Corp., 840 F.2d
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`825, 828 (11th Cir. 1988). Similarly, substantive law will identify which facts are
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`material. See Anderson, 477 U.S. at 248, 106 S. Ct. at 2510. Thus, to survive a
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`motion for summary judgment, the non-moving party must come forward with specific
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`evidence of every element essential to its case. See Celotex, 477 U.S. at 323, 106 S.
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`Ct. at 2553; Rollins, 833 F.2d at 1528.
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`III. Discussion
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`Plaintiffs Judy Gordon and Axio Design have asserted two causes of action
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`based on Federal law and numerous state law claims. Plaintiffs have asserted federal
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`claim of copyright infringement (Count X) and trademark infringement (Count XI) and
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`the following state law claims: breach of contract (Counts I and III); tortious
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`interference with contract and business relations (Counts II and IV); breach of
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`fiduciary duties (Count V); tortious inducement to breach fiduciary duties (Count VI);
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`misappropriation, trover and conversion (Count VII); unjust enrichment (Count VIII);
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`piercing the corporate veil/alter ego doctrine1 (Count IX); state law trademark
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`infringement (Count XI); violation of the Georgia Uniform Deceptive Trade Practices
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`Act (Count XII); violation of the Georgia Trade Secrets Act (Count XIII); violation of
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`1Piercing the corporate veil is a means of imposing liability on an underlying
`cause of action, but it is not an independent cause of action. Peacock v. Thomas, 516
`U.S. 349, 354, 116 S. Ct. 862, 866, 133 L. Ed. 2d 817 (1996) (citations omitted).
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`Georgia Computer Systems Act (Count XIV); equitable accounting (Count XV);
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`constructive trust (Count XVI); and attorney’s fees (Count XVII). [Doc. 1].
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`Defendants Robert Lee and BCM have asserted the following counterclaims against
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`Plaintiffs: breach of contract (Counts I and II); breach of fiduciary duty (Count III);
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`equitable accounting (Count IV); declaratory judgment (Count V); breach of private
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`duty (Count VI); and dissolution of Defendant Axio’s corporate status (Count VII).
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`[Doc. 8]. Pending before the court is Plaintiffs’ motion [Doc. 52] for partial summary
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`judgment and Defendants’ motion [Doc. 55] for summary judgment. The issue upon
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`which both summary judgment motions focus is whether Defendants’ use of certain
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`residential design plans constituted copyright infringement.
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`A.
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`Defendant RAL Properties and Development
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`Plaintiffs have acknowledged that they named RAL Properties and
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`Development, Inc., as a defendant simply because they received a check erroneously
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`written out to RAL. Plaintiffs cannot specify any wrongdoing on the part of RAL.
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`Moreover, Plaintiffs do not oppose summary judgment with regard to their claims
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`against Defendant RAL. [DSMF ¶ 27; Doc. 66]. Accordingly, Defendants’ motion
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`[Doc. 55] for summary judgment is GRANTED on all of Plaintiffs’ claims against
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`Defendant RAL.
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`B.
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`Statutory Damages and Attorney’s Fees Under the Copyright Act
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`In Count X of the complaint, Plaintiffs seek statutory damages and attorney’s
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`fees pursuant to sections 504 and 505 of the Copyright Act. [Doc. 1]; 17 U.S.C. §§
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`504, 505. The relevant portion of the Act provides, “[N]o award of statutory damages
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`or of attorney’s fees, as provided by sections 504 and 505, shall be made for . . . any
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`infringement of copyright commenced after first publication of the work and before
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`the effective date of its registration, unless such registration is made within three
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`months after the first publication of the work.” 17 U.S.C. § 412. Plaintiff Axio
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`registered the disputed residential design plans with the Copyright Office in May of
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`2004. [PSMF ¶¶ 21, 22; DSMF ¶ 22]. This was more than a year after Chesapeake
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`was formed and began posting marketing drawings and photographs of houses for sale
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`in Lynwood Park on the company’s website. [PSMF ¶¶ 16, 19, 20]. Because Axio’s
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`copyright registration of the design plans occurred more than “three months after the
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`first publication of the work,” Plaintiffs are not entitled to an award of statutory
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`damages or attorney’s fees as provided by 17 U.S.C. §§ 504 and 505. Plaintiffs make
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`no argument to the contrary. [Doc. 65]. Therefore, Defendants’ motion [Doc. 55] for
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`summary judgment is GRANTED on Plaintiffs’ claims for statutory damages and
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`attorney’s fee under the Copyright Act as asserted in Count X of their complaint.
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`C.
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`Plaintiffs’ Copyright Infringement Claim
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`Plaintiffs Judy Gordon and Axio allege that Defendants impermissibly used
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`copyrighted architectural designs and plans (“designs”) in the construction, marketing
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`and sale of homes in the Lynwood Park development. [Doc. 1, Count X]. Defendants
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`make a number of arguments in support of their contention that summary judgment is
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`warranted on Plaintiffs’ copyright infringement claim. Defendants argue that the
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`designs are jointly owned by Defendant BCM and Plaintiff Axio as members of the
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`Lynwood Park joint venture.2 [Doc. 55 at 7-11]. Defendants also contend that
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`Defendant Robert Lee, Defendant Brendan Murphy and Plaintiff Gordon are joint
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`authors of the designs. [Doc. 55 at 12-14; Doc. 71 at 6-10]. According to Defendants,
`
`Defendant Chesapeake was issued a license to post the designs on its website. [Doc.
`
`2Defendants originally argued that individual Defendants Robert Lee, Brendan
`Murphy, and Sarah Lee are entitled to summary judgment because “they are protected
`from personal liability by their respective business entities.” [Doc. 55 at 4]. Plaintiffs,
`however, cited to Eleventh Circuit authority holding that individuals who supervise or
`participate in infringing activity may be held personally liable for copyright
`infringement. [Doc. 65 at 2]. See Southern Bell Tel. & Tel. Co. v. Assoc. Telephone
`Directory Publishers, 756 F.2d 801, 811 (11th Cir. 1985). Defendants apparently
`abandoned their original argument and now merely assert that Plaintiffs’ copyright
`infringement claim must fail because Lee and Murphy are co-owners of the designs.
`[Doc. 71 at 2-3]. This argument is address infra. Defendants also argued in their
`summary judgment motion that the designs were works made for hire for the Lynwood
`Park joint venture, but they have since abandoned this argument. [Doc. 50 at 11-12;
`Doc. 71 at 5].
`
`17
`
`AO 72A
`
`(Rev.8/82)
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`

`
`Case 1:05-cv-02162-JFK Document 79 Filed 05/14/07 Page 18 of 41
`
`55 at 14-15]. And finally, Defendants contend that even if BCM and Murphy were not
`
`joint owners of the designs, they had an implied nonexclusive license to continue to
`
`use the works in order to complete the Lynwood Park project. [Doc. 71 at 3-5].
`
`Plaintiffs have moved for summary judgment in favor of their copyright infringement
`
`claim based on their contention that there is no genuine issue of fact as to Defendants’
`
`infringing use of the residential designs. [Doc. 52 at 1-2, 12-13]. On this same basis,
`
`Plaintiffs have also moved for summary judgment against Counts I, II, and V of
`
`Defendants’ counterclaim, which assert claims for breach of contract (Counts I and II)
`
`and declaratory judgment (Count V). [Id.].
`
`“To 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.”
`
`Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340, 361, 111
`
`S. Ct. 1282, 1296, 113 L. Ed. 2d 358 (1991). The first issue that must be addressed is
`
`who initially owned the disputed designs. The Copyright Act, under a section entitled
`
`“Initial Ownership,” provides, “Copyright in a work protected under this title vests
`
`initially in the author or authors of the work. The authors of a joint work are coowners
`
`of copyright in the work.” 17 U.S.C. § 201(a). The Act defines a “joint work” as a
`
`“work prepared by two or more authors with the intention that their contributions be
`
`18
`
`AO 72A
`
`(Rev.8/82)
`
`

`
`Case 1:05-cv-02162-JFK Document 79 Filed 05/14/07 Page 19 of 41
`
`merged into inseparable or interdependent parts of a unitary whole.” 17 U.S.C. § 101.
`
`The Eleventh Circuit has noted:
`
`The terms “inseparable” and “interdependent” may be explained as
`follows: [I]f author B’s contribution when combined with author A’s
`contribution results in recasting, transforming or adapting A’s
`contribution, then the two contributions may be said to be inseparable.
`If the process is simply one of assembling into a collective whole A’s and
`B’s respective contributions, without thereby recasting A’s contribution,
`then the two contributions may be said to be interdependent.
`
`M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1493 (11th Cir. 1990)
`
`(quoting 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 6.04
`
`(1989)). Defendants argue that Plaintiff Judy Gordon and Defendants Robert Lee and
`
`Brendan Murphy are joint authors of the designs and, therefore, co-owners of
`
`copyright in the designs. [Doc. 55 at 12].
`
`“As a general rule, the author is the party who actually creates the work, that is,
`
`the person who translates an idea into a fixed, tangible expression entitled to copyright
`
`protection.” Community for Creative Non-Violence v. Reid, 490 U.S. 730, 737, 109
`
`S. Ct. 2166, 2171, 104 L. Ed. 2d 811 (1989). In Childress v. Taylor, 945 F.2d 500,
`
`506-08 (2nd Cir. 1991), the Second Circuit held that a joint authorship claimant was
`
`required to prove: (1) that he made a copyrightable contribution to the work; and (2)
`
`that the contributors intended to regard themselves as joint authors. There is no
`
`19
`
`AO 72A
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`(Rev.8/82)
`
`

`
`Case 1:05-cv-02162-JFK Document 79 Filed 05/14/07 Page 20 of 41
`
`question that the intent of the contributors to a work is relevant and significant. The
`
`Copyright Act explicitly provides that joint authors must have intended “that their
`
`contributions be merged into inseparable or interdependent parts of a unitary whole.”
`
`17 U.S.C. § 101. See M.G.B. Homes, 903 F.2d at 1492 (“There is no evidence that it
`
`was the intent of either Ballough or Unlimited that this concept (the sketch) become
`
`part of the finished expression (the architectural plans and drawings). In fact, the
`
`sketch did not form an ‘inseparable or interdependent’ part of the final house
`
`drawings.”).
`
`With regard to the Childress court’s requirement that each joint author must
`
`prove that he or she made a copyrightable contribution to the work, there is not a
`
`general consensus among the circuit courts about whether the Copyright Act itself
`
`provides such a requirement. As even the Childress court recognized, “The
`
`[Copyright] Act surely does not say that each contribution to a joint work must be
`
`copyrightable, and the specification that there be ‘authors’ does not necessarily require
`
`a copyrightable contribution.” Childress, 945 F.2d at 506. Professor Nimmer’s
`
`position is that while the finished work must be copyrightable, each author’s
`
`contribution need not be copyrightable. Nimmer on Copyright § 6.07. The Seventh
`
`Circuit adopted this viewpoint in Gaiman v. McFarlane, 360 F.3d 644, 658-59 (7th Cir.
`
`20
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`(Rev.8/82)
`
`

`
`Case 1:05-cv-02162-JFK Document 79 Filed 05/14/07 Page 21 of 41
`
`2004), and noted that while “[t]here has to be some original expression contributed by
`
`anyone who claims to be a co-author,” the requirement that each contribution be
`
`independently copyrightable leads to paradoxical results in some situations. The
`
`contributors’ joint labors may have sufficient originality and creativity to be
`
`copyrightable, but no single individual’s contributions would be copyrightable. Id.
`
`In such a situation, under the holding in Childress, no one could claim a copyright in
`
`the work.
`
`For these reasons, the court finds the reasoning of Professor Nimmer and the
`
`Seventh Circuit to be persuasive.3 A joint author is not required to establish that his
`
`3The Eleventh Circuit has not offered a discussion on whether an individual’s
`contribution to a finished work must be copyrightable in order to be considered a joint
`author. In Childress, the Sixth Circuit cited M.G.B. Homes, 903 F.2d at 1494, in
`support of its conclusion that the “case law supports a requirement of copyrightability
`of each contribution.” Childress, 945 F.2d at 506. The Sixth Circuit’s statement
`appears to be based on a misreading of the Eleventh Circuit’s holding in M.G.B.
`Homes. In that case, a home builder sued a competitor for copyright infringement of
`a floor plan. The floor plan was created by an architectural firm at the request of the
`plaintiff builder. The builder’s president had submitted a thumbnail sketch to the
`architectural firm in order to describe the type of floor plan that he desired. One of the
`issues addressed by the court was whether the home builder was a co-author of the
`floor plan. The Eleventh Circuit found that the home builder was not a co-author
`becaus

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