2:05-cv-74210-PJD-MKM Doc # 83 Filed 07/24/06 Pg 1 of 9 Pg ID 1743
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
`
`Case No. 05-74210
`
`Honorable Patrick J. Duggan
`
`RICHARD K. NIEMI, and MARK NIEMI,
`d/b/a RICHARD K. NIEMI DESIGN AND
`TECHNOLOGY, LLC, Limited Liability
`Company,
`
`Plaintiffs,
`
`v.
`
`AMERICAN AXLE MANUFACTURING
`& HOLDING INC., a Delaware corporation
`and successor corporation to AMERICAN
`AXLE & MANUFACTURING OF
`MICHIGAN, a defunct corporation, and
`AMERICAN AXLE MANUFACTURING
`INC., a Delaware corporation, and
`SPRINGFIELD TOOL & DIE, INC., a
`South Carolina defunct corporation, JAMES
`ONYSKI, an individual, GEORGE HILLS,
`an individual, and TOM ALDRIDGE, an
`individual, jointly and severally,
`
`Defendants.
` /
`
`OPINION AND ORDER
`GRANTING DEFENDANTS’ MOTION FOR PARTIAL SUMMARY JUDGMENT
`AS TO COUNT I OF PLAINTIFFS’ COMPLAINT
`
` At a session of said Court, held in the U.S.
`District Courthouse, Eastern District
`of Michigan, on July 24, 2006.
`
`PRESENT:
`
`THE HONORABLE PATRICK J. DUGGAN
`U.S. DISTRICT COURT JUDGE
`
`On November 2, 2005, Plaintiffs filed a copyright infringement action against
`
`

`
`2:05-cv-74210-PJD-MKM Doc # 83 Filed 07/24/06 Pg 2 of 9 Pg ID 1744
`
`Defendants.1 Presently before the Court is American Axle Manufacturing & Holding, Inc.,
`
`American Axle & Manufacturing of Michigan, American Axle Manufacturing Inc., and
`
`James Onyski’s Motion under FED. R. CIV. P. 56 for Partial Summary Judgment as to Count
`
`I of Plaintiff’s Complaint, filed on March 28, 2006. Defendant Springfield Tool & Die Inc.
`
`joined the Motion for Partial Summary Judgment as to Count I. The Court heard oral
`
`arguments on this Motion on May 16, 2006 and on June 22, 2006. For the reasons set forth
`
`below, Defendants’ Motion shall be granted.
`
`I.
`
`Factual Background
`
`Plaintiff Richard Niemi contends that he created a number of drawings for stabilizer
`
`benders, welders, and other special machinery used to manufacture parts for cars and trucks
`
`from 1996 to 2000. (Compl. ¶11). On September 29, 2005, the U.S. Copyright Office issued
`
`Niemi a copyright registration for the drawings. (Id.; see also Defs.’ Mot. for Summ. J. Ex.
`
`C). Niemi had previously granted a license to Plaintiff RKN Technologies with a right to
`
`sub-license others. (Compl. ¶11) Plaintiff RKN Technologies had provided the drawings
`
`to Defendants “for the sole purpose of making a single machine to produce stabilizer bars for
`
`the GMT 360 and a single machine to produce stabilizer bars for the GMT 800.” (Id.)
`
`Specifically, Plaintiffs contend that the parties reached an agreement where Plaintiffs
`
`would provide Defendants with the technical drawings so that one machine could be built
`
`1 On January 30, 2006, Plaintiffs stipulated to the dismissal of Defendant Thomas
`Aldridge, and on March 8, 2006, Plaintiffs stipulated to the dismissal of Defendant George Hill.
`On July 18, 2006, the Court entered an Order dismissing Count II of Plaintiffs’ Complaint,
`Conspiracy to Commit Copyright Infringement. Therefore, the only remaining claim in this case
`is Count I, Copyright Infringement, against the American Axle Defendants, Springfield, and
`James Onyski.
`
`2
`
`

`
`2:05-cv-74210-PJD-MKM Doc # 83 Filed 07/24/06 Pg 3 of 9 Pg ID 1745
`
`and tested. Then, when Defendants felt confident that the Plaintiffs’ machine, as depicted
`
`in the drawings, would work, Defendants would file a patent on behalf of Plaintiffs, pay a
`
`reasonable royalty to Plaintiffs, and engage Plaintiffs to design any and all additional
`
`machines. (Pls.’ Br. in Opp. to Defs.’ Mot. for Summ. J. at 4-5).
`
`Plaintiffs contend that, despite this agreement, Defendants infringed on their copyrights
`
`in the drawings “by using the Drawings to manufacture stabilizer benders and welders
`
`without Plaintiffs’ permission” and “by creating further drawings and machines to
`
`manufacture stabilizer bars from the Drawings by making derivative drawings and utilizing
`
`them to manufacture stabilizer benders and welders for different stabilizer bars for various
`
`automobiles.” (Compl. at ¶¶ 13, 15). According to Plaintiffs, the technical drawings
`
`submitted by Plaintiffs were copied and modified by Defendants to manufacture numerous
`
`machines. (Pls.’ Br. in Opp. to Defs.’ Mot. Summ. J. at 6).2
`
`II.
`
`Standard of Review
`
`Defendants move for partial summary judgment on Count I of Plaintiff’s Complaint
`
`(Copyright Infringement). This Court will grant summary judgment “if the pleadings,
`
`2 Plaintiffs contend that testimony and documents proving these infringements were
`provided in a prior action against Defendants commenced in September 2003, by Plaintiffs in
`Wayne County Circuit Court, Case No. 03-332390-CK. In the state court action, Plaintiffs
`asserted claims of misappropriation of trade secrets and breach of contract. Before the parties
`conducted discovery, Judge Gershwin A. Drain entered a Protective Order at the request of the
`parties, ordering that “any information or document designated as ‘CONFIDENTIAL’ shall be
`used solely in connection with his action and shall not be disclosed to anyone . . . .” On April 5,
`2006, Plaintiffs filed a motion in this Court seeking the entry of a protective order that allows for
`the use of the discovery produced in the state court litigation in the present copyright
`infringement action. On April 21, 2006, Defendants filed a response in opposition to Plaintiffs’
`motion for a protective order. This matter was referred to Magistrate Judge Wallace Capel on
`May 1, 2006 for a report and recommendation.
`
`3
`
`

`
`2:05-cv-74210-PJD-MKM Doc # 83 Filed 07/24/06 Pg 4 of 9 Pg ID 1746
`
`depositions, answers to interrogatories, and admissions on file, together with the affidavits,
`
`if any, show that there is no genuine issue as to any material fact and that the moving party
`
`is entitled to judgment as a matter of law.” FED. R. CIV. P. 56(c). No genuine issue of
`
`material fact exists for trial unless, by viewing the evidence in a light most favorable to the
`
`nonmoving party, a reasonable jury could return a verdict for that party. Anderson v. Liberty
`
`Lobby, Inc., 477 U.S. 242, 248, 106 S. Ct. 2505, 2510 (1986). The moving party bears the
`
`burden of informing this Court of the basis for its motion and identifying those portions of
`
`the record that establish the absence of a material issue of fact. See Celotex Corp. v. Catrett,
`
`477 U.S. 317, 323, 106 S. Ct. 2548, 2553 (1986).
`
`Once the moving party has met its burden, Rule 56(e) requires the nonmoving party to
`
`look beyond the pleadings and designate specific facts showing that a genuine issue exists
`
`for trial. FED. R. CIV. P. 56(e); Celotex, 477 U.S. at 322-24, 106 S. Ct. at 2552-53. It is not
`
`enough that the nonmoving party comes forward with the “mere existence of a scintilla of
`
`evidence . . . ,” Anderson, 477 U.S. at 252, 106 S. Ct. at 2512, or some “metaphysical doubt
`
`as to the material facts.” Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S.
`
`574, 586, 106 S. Ct. 1348, 1356 (1986). Rather, the nonmoving party must present
`
`significant probative evidence in support of its opposition to the motion for summary
`
`judgment. Moore v. Philip Morris Cos., Inc., 8 F.3d 335, 340 (6th Cir. 1993).
`
`III. Applicable Law and Analysis
`
`The specific issue before the Court is whether the use of copies, or derivatives of
`
`copies, of copyrighted technical drawings to manufacture a machine is an act of copyright
`
`infringement. (See Defs.’ Resp. to Pls.’ Suppl. Br. Ex. N, 6/22/06 Hrg. Tr. at 17). In their
`
`4
`
`

`
`2:05-cv-74210-PJD-MKM Doc # 83 Filed 07/24/06 Pg 5 of 9 Pg ID 1747
`
`Motion for Partial Summary Judgment, Defendants argue that, even assuming that Plaintiffs’
`
`allegations are true that Defendants did manufacture machines based on Plaintiffs’ technical
`
`drawings, the manufacture of such machines is not an actionable copyright infringement.
`
`Plaintiffs, however, contend that fabricating a machine depicted in a drawing is copyright
`
`infringement where the fabrication is achieved through the unlawful copying or making
`
`unlawful derivatives of copyrighted drawings.
`
`Plaintiffs’ technical drawings are original pictorial or graphic works protected by 17
`
`U.S.C. § 102(a)(5). Pursuant to 17 U.S.C. § 106, Plaintiffs, the copyright owners have the
`
`exclusive right to “reproduce,” “prepare derivative works,” “distribute copies,” and “display”
`
`the copyrighted work. However, “use” rights are governed by the Patent Act, 35 U.S.C. §
`
`271. See, e.g., Nimmer § 2.18[A] (“Where the owner of a patent obtains the right to exclude
`
`others from using the invention, the rights granted to a copyright owner under Section 106
`
`of the Copyright Act do not include the right to prevent others from using the copyrighted
`
`work.”) (quotation omitted).
`
`Moreover, 17 U.S.C. § 102(b) provides: “In no case does copyright protection for an
`
`original work of authorship extend to 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 a work.” 17 U.S.C. § 113(b) further limits such
`
`copyright protection and provides “[t]his title does not afford, to the owner of copyright in
`
`a work that portrays a useful article as such, any greater or lesser rights with respect to the
`
`making, distribution, or display of the useful article so portrayed than those afforded to such
`
`works under the law.” The Congressional record preceding the adoption of the Copyright
`
`5
`
`

`
`2:05-cv-74210-PJD-MKM Doc # 83 Filed 07/24/06 Pg 6 of 9 Pg ID 1748
`
`Act sets forth the following examples of the limitation expressed by 17 U.S.C. § 113(b):
`
`Under distinctions indicated in existing court decisions, that the copyright in a
`work portraying a useful article as such would not protect against manufacture
`of that article, copyright protection would not extend to the following cases:
`
`- A copyrighted drawing of a chair, used to manufacture chairs of that
`design;
`
`- A copyrighted scale model of an automobile, used to manufacture
`automobiles of that design;
`
`- A copyrighted technical drawing showing the construction of a machine
`used to manufacture the machine;
`
`- A copyrighted picture of a dress, used to manufacture the dress.
`
`(Defs.’ Mot. Ex. B, House Comm. on the Judiciary, 87th Cong., Report of the Register of
`
`Copyrights on the General Revision of the U.S. Copyright Law (1961) (emphasis added)).
`
`
`
`Thus, the manufacture of a machine from a copyrighted technical drawing is clearly not
`
`copyright infringement. Defendants contend that this remains true whether or not “copies”
`
`or “derivatives of copies” of the technical drawings were referenced, citing National Medical
`
`Care, Inc. v. Espiritu, 284 F. Supp. 2d 424 (S.D. W. Va. 2003).
`
`In National Medical Care, Inc., the court found that copyrights in technical drawings
`
`depicting medicine cabinets do not protect against the production of the medicine cabinets.
`
`Id. at 435-36. In that case, the defendant stipulated that he had made unauthorized copies of
`
`the plaintiffs’ technical drawings. Id. at 433. The plaintiff sought an order requiring the
`
`defendant to remove cabinets which had been built from the copied technical drawings. Id.
`
`The court found that, under 17 U.S.C. § 102(b), the ideas illustrated in the technical drawings
`
`were not protected. Id. at 433. The court held that copyright protection does not extend to
`
`6
`
`

`
`2:05-cv-74210-PJD-MKM Doc # 83 Filed 07/24/06 Pg 7 of 9 Pg ID 1749
`
`structures built from technical drawings “regardless of whether those structures have been
`
`built with reference to infringing copies . . . .” Id. at 435-36.
`
`Like the plaintiffs in National Medical Care, Inc., Plaintiffs in this case attempt to
`
`expand the scope of copyright protection to include the act of manufacturing an article using
`
`a copy or derivative copy of the copyrighted drawing. However, Plaintiffs are unable to cite
`
`to any case law in support of such protection.
`
`In their supplemental brief, Plaintiffs discuss a number of cases involving architectural
`
`drawings. See Nucor Corp. v. Tennessee Forging Steel Serv., Inc., 476 F.2d 386 (8th Cir.
`
`1973); Herman Frankel Org. v. Tegman, 367 F. Supp. 1051 (E.D. Mich. 1973); Robert R.
`
`Jones Assocs. Inc. v. Nino Homes, 858 F.2d 274 (6th Cir. 1988). However, architectural
`
`works are protected by separate section of the Copyright Act. A 1990 amendment to the
`
`Copyright Act defines architectural works as “design of a building as embodied in any
`
`tangible medium of expression, including a building, architectural plans, or drawings.” 17
`
`U.S.C. § 101.3 Therefore, these cases are not on point.
`
`3 Plaintiffs argue that prior to the 1990 amendment, the use of unlawful copies and
`derivative technical drawings to construct a building was copyright infringement. Plaintiffs are
`incorrect. See Demetriades v. Kaufmann, 680 F. Supp. 658, 666 (S.D.N.Y 1988). In
`Demetriades, which was decided prior to the 1990 amendment to the Copyright Act, the court
`rejected the argument that construction of a house from copied architectural plans constituted
`copyright infringement. Id. The court reasoned:
`Whether or not the construction originally “flowed from” infringing copies of
`[plaintiff’s] architectural plans is immaterial. Construction of a building imitating
`that depicted in copyrighted architectural plans does not, consistent with Baker,
`constitute infringement of those plans. Although individuals are not free to make
`unauthorized copies of copyrighted architectural plans, they remain free to duplicate
`houses depicted in those plans unless and until the designs embodied in such plans
`are secured by patent.
`
`Id.
`
`7
`
`

`
`2:05-cv-74210-PJD-MKM Doc # 83 Filed 07/24/06 Pg 8 of 9 Pg ID 1750
`
`For example, although the Sixth Circuit found, in Robert R. Jones Assocs., Inc. v. Nino
`
`Homes, 858 F.2d 274 (6th Cir. 1998), that “one may construct a house which is identical to
`
`a house depicted in copyrighted architectural plans, but one may not directly copy those plans
`
`and then use the infringing copy to construct the house,” id. at 280, this holding is limited to
`
`architectural works. See Winfield Collection, Ltd. v. Gemmy Indus., Corp., 147 Fed.Appx.
`
`547, 551 (6th Cir. Aug. 25, 2005) (distinguishing the architectural plans and construction on
`
`the house in Robert R. Jones Assocs., from design plans for a “crashing witch” ornament
`
`because the architectural plans involved “useful” objects4 “or functional creations whose
`
`protection sounds more appropriately in patent than in copyright”).
`
`Therefore, Plaintiffs have failed to cite a single case holding that the use of copies, or
`
`derivatives of copies, of copyrighted technical drawings to manufacture a machine
`
`constitutes an act of copyright infringement.
`
`Accordingly,
`
`IT IS ORDERED that Defendants’ Motion under FED. R. CIV. P. 56 for Partial
`
`Summary Judgment as to Count I of Plaintiff’s Complaint is GRANTED.
`
`IT IS FURTHER ORDERED that Plaintiffs’ copyrights are not infringed by the
`
`use, use of copies, or use of derivatives of copies, of technical drawings to manufacture or
`
`use stabilizer benders, welders, or other machines as alleged in Plaintiffs’ Complaint.
`
`4 The Robert R. Jones case was decided before the 1990 amendment to the Copyright Act
`which gave special protection to architectural works.
`
`8
`
`

`
`2:05-cv-74210-PJD-MKM Doc # 83 Filed 07/24/06 Pg 9 of 9 Pg ID 1751
`
`s/PATRICK J. DUGGAN
`UNITED STATES DISTRICT JUDGE
`
`Copies to:
`Robin Kyle, Esq.
`George Moustakas, Esq.
`Christian Garascia, Esq.
`
`9