`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF NEW YORK
`- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -
`MACKENZIE ARCHITECTS, PC
`
`Plaintiff,
`
`v.
`
`1:15-CV-1105
`
`VLG REAL ESTATES DEVELOPERS, LLC;
`VICTOR GUSH; FGR ASSOCIATES, LLC;
`CAPTAINS LOOKOUT DEVELOPMENT, LLC;
`DESIGN LOGIC ARCHITECTS, PC;
`CLARK REALTY, LLC; PAUL CLARK;
`FRANK TATE; and ROBERT BUCHER
`
`Defendants.
`- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -
`THOMAS J. McAVOY
`Senior United States Judge
`
`DECISION and ORDER
`
`Before the Court are a number of motions in this case concerning Plaintiff
`
`Mackenzie Architects, PC’s claims that Defendants breached various copyright and
`
`contract rights. Defendants seek judgment on the pleadings on Plaintiff’s claims, as
`
`well as attorney’s fees. See dkt. ##s 43, 46, 49. Plaintiff moves to strike certain
`
`Defendants’ answers and counterclaims. See dkt. # 59. The parties have briefed the
`
`issues and the court will resolve them without oral argument.
`
`I.
`
`BACKGROUND
`
`This matter involves alleged copyright infringement and breach of contract
`
`between an architect and several groups of developers, builders, and another architect.
`
`Relating the role of the various parties will help explain the dispute at the center of this
`
`case.
`
`A.
`
`The Gush Defendants: VLG, Victor Gush, and FGR.
`
`
`
`Case 1:15-cv-01105-TJM-DJS Document 70 Filed 09/08/16 Page 2 of 30
`
`The Plaintiff in this case is Mackenzie Architects, PC (“Mackenzie”). In
`
`December of 2007, Mackenzie entered into a building agreement with three of the
`
`above-named defendants: VLG Real Estate Developers, LLC; Victor Gush (controlling
`
`member of VLG); and FGR Associates, LLC (collectively, the “Gush Defendants”)
`
`Mackenzie provided to the Gush Defendants a set of architectural designs and
`
`technical drawings for use on the development of a multi-family residential building
`
`called “Captain’s Lookout.” The apartment building would be located on the Hudson
`
`River in Cohoes, New York. The agreement fell through shortly thereafter. The parties
`
`dispute the reasons why.
`
` Mackenzie claims that the Gush Defendants failed to obtain financing for the
`
`project. See First Amended Complaint, dkt. # 41, at ¶ 30. The Gush Defendants claim
`
`that Mackenzie’s designs were too complex and expensive. See FGR’s Answer to First
`
`Amended Complaint, dkt. # 45, at ¶ 32; VLG’s Answer to First Amended Complaint, dkt.
`
`# 48, at ¶ 29. Regardless, the Gush Defendants parted ways with Mackenzie.1 Despite
`
`being unable to use Mackenzie’s specific designs, Gush was still interested in building a
`
`large apartment building on the Hudson River in Cohoes, New York. See Complaint,
`
`dkt. # 41, at ¶ 31.
`
`B.
`
`The Captain’s Lookout Defendants: Clark Realty, Paul Clark, Frank
`Tate, Captain’s Lookout Development, LLC.
`
`After the agreement with Mackenzie fell through, Mr. Gush looked elsewhere to
`
`complete the project. Id. Mackenzie claims that “[w]ithout any notice to Mackenzie,
`
`1 Mackenzie claims that VLG and FGR did not satisfy payment obligations. See
`Complaint, dkt. # 41 at ¶ 30. FGR claims that Mackenzie was compensated more than
`the prevailing market rate for its services. See FGR’s Answer, dkt. # 45 at ¶ 36.
`
`2
`
`
`
`Case 1:15-cv-01105-TJM-DJS Document 70 Filed 09/08/16 Page 3 of 30
`
`without Mackenzie’s authorization or permission, and without any compensation . . . to
`
`Mackenzie . . . , Mr. Gush sold the project site, along with the Designs to Clark Realty.”2
`
`Id. Clark Realty’s principal owner is Paul Clark. Clark is also the CEO of the building
`
`group called “Captain’s Lookout Development, LLC.” Frank Tate is a member of the
`
`Captain’s Lookout Development group. Now in charge of the project, these Defendants
`
`(the “Captain’s Lookout Defendants”) began work in the Fall of 2013. See First
`
`Amended Complaint, dkt. # 41 at ¶ 37.
`
`C.
`
`The Design Logic Defendants: Design Logic and Robert Bucher
`
`The Captain’s Lookout Defendants retained a new architect, Robert Bucher of
`
`Design Logic, to create and design an apartment building to be located on the same
`
`project site for which Mackenzie had originally designed Captain’s Lookout. Design
`
`Logic submitted its design to the City of Cohoes Building and Planning Department in
`
`September 2013. Id. at ¶ 33. The record is in the name of Design Logic, with a
`
`copyright notice attributable to Design Logic only. Id. Design Logic contends that it
`
`“created an entirely original plan for Captain’s Lookout which bears little resemblance to
`
`the Mackenzie Plain.” See Design Logic’s Motion for Judgment on the Pleadings,
`
`Memorandum of Law, dkt. # 43-7, at 2. Mackenzie claims that Design Logic infringed
`
`on its design, as the “overall look and feel of the Captain’s Lookout Design is nearly
`
`identical.” See First Amended Complaint, dkt. # 41, at ¶ 36. Mackenzie claims that it is
`
`the owner of valid copyrights of the original Captain’s Lookout design, and that Design
`
`2 The Gush Defendants claim that Mackenzie conveyed a license to use the
`drawings for the Captain’s Lookout project. See FGR’s Answer, dkt. # 45 at ¶ 39;
`VLG’s Answer, dkt. # 48, at ¶ 36.
`
`3
`
`
`
`Case 1:15-cv-01105-TJM-DJS Document 70 Filed 09/08/16 Page 4 of 30
`
`Logic had access to and infringed on those copyrights. Upon learning that its
`
`architectural designs and technical drawings were possibly misappropriated by others,
`
`“Mackenzie . . . applied to register the copyright with the United States Copyright
`
`Office.” Id. at ¶ 35.
`
`D.
`
`Mackenzie’s Complaint
`
`Mackenzie’s Amended Complaint raises fifteen causes of action:
`
`1) Direct Copyright Infringement against the Clark Defendants and Design Logic
`Defendants. (1,2)
`
`2) Vicarious Copyright Infringement against the Gush Defendants, the Clark
`Defendants, and the Design Logic Defendants. (3,4,5)
`
`3) Contributory Copyright Infringement against the Gush Defendants, the Clark
`Defendants, and the Design Logic Defendants. (6,7,8)
`
`4) Removing Copyright Management Information and Providing False
`Management Information against the Gush Defendants, the Clark Defendants,
`and the Design Logic Defendants. (9,10,11,12,13,14)
`
`5) Breach of Contract against VLG Real Estate and FGR Associates, LLC. (15)
`
`After being served with the Complaint, the Defendants answered and then filed
`
`the instant motions for judgment on the pleadings. Plaintiff likewise moved for
`
`judgment on the pleadings on the Gush and Captain’s Lookout Defendants’
`
`counterclaims, while also seeking to strike portions of their answers and counterclaims.
`
`The parties briefed the issues, bringing the case to its present posture.
`
`II.
`
`LEGAL STANDARD
`
`Defendants have moved for judgment on the pleadings. Federal Rule of Civil
`
`Procedure 12(c) provides that “[a]fter the pleadings are closed–but early enough not to
`
`delay trial–a party may move for judgment on the pleadings.” FED. R. CIV. P. 12(c). “‘In
`
`4
`
`
`
`Case 1:15-cv-01105-TJM-DJS Document 70 Filed 09/08/16 Page 5 of 30
`
`deciding a Rule 12(c) motion, [a court will] apply the same standard as that applicable
`
`to a motion under Rule 12(b)(6), accepting the allegations contained in the complaint as
`
`true and drawling all reasonable inferences in favor of the nonmoving party.’” Mantena
`
`v. Johnson, 809 F.3d 721, 727-28 (2d Cir. 2015) (quoting Burnette v. Carothers, 192
`
`F.3d 52, 56 (2d Cir. 1999)). Under this standard, the “‘complaint must contain sufficient
`
`factual material, accepted as true, to state a claim to relief that is plausible on its face.’”
`
`Johnson v. Rowley, 569 F.3d 40, 44 (2d Cir. 2009) (quoting Ashcroft v. Iqbal, 556 U.S.
`
`662, 678 (2009) (internal quotations omitted)). Plaintiff has moved to dismiss
`
`Defendants’ counterclaims.
`
`In addressing such motions, the Court applies the same standard as used in
`
`12(b)(6) and 12(c) motions. Holmes v. Grubman, 568 F.3d 329, 335 (2d Cir. 2009).
`
`III.
`
`ANALYSIS
`
`The Court will address each of the various motions in turn.
`
`A. Design Logic’s Motion for Judgment on the Pleadings
`
` As a general matter, Plaintiff alleges that Design Logic infringed on its Captain’s
`
`Lookout design. Plaintiff alleges “while having such access and possession, [Design
`
`Logic], without authorization from Plaintiff, with knowledge that such authorization was
`
`required, and with good reason to believe that no such authorization existed, copied
`
`Plaintiff’s copyrighted design.” See First Amended Complaint, dkt. #41, ¶ 62. Plaintiff
`
`argues that its original designs were copied, and used by the Clark Defendants and
`
`Design Logic to complete the Captain’s Lookout project. Id. Plaintiff alleges that the
`
`“filed drawings and finished project are nearly identical to Plaintiff’s designs.” Id. at ¶
`
`5
`
`
`
`Case 1:15-cv-01105-TJM-DJS Document 70 Filed 09/08/16 Page 6 of 30
`
`63.
`
`Defendant Design Logic seeks judgment on the pleadings. Design Logic argues
`
`that Plaintiff could not prevail on any of its claims of copyright violations raised against
`
`Design Logic even if all facts alleged proved true. Design Logic contends that the
`
`designs are not “substantially similar,” and that “Plaintiff cannot establish the [Design
`
`Logic] unlawfully infringed upon its copyright.” See Design Logic’s Motion for Judgment
`
`on the Pleadings, Memorandum of Law, dkt. # 43-7, at 4. The Court concludes that
`
`Design Logic has not met its burden of showing that the “[nonmoving party] can prove
`
`no set of facts in support of his claim which would entitle him to relief.” Patel v. Searles,
`
`305 F.3d 130, 135 (2d Cir. 2002).
`
`In order to establish a claim of copyright infringement, “a plaintiff with a valid
`
`copyright must demonstrate that: (1) the defendant has actually copied the plaintiff's
`
`work; and (2) the copying is illegal because a substantial similarity exists between the
`
`defendant's work and the protectible elements of plaintiff's.” Peter F. Gaito
`
`Architecture, LLC v. Simone Development Corp., 602 F.3d 57, 63 (2d Cir. 2010)
`
`(quoting Hamil Am. Inc. v. GFI, 193 F.3d 92, 99 (2d Cir.1999)). In this case, the
`
`principal issue is whether a substantial similarity exists between Design Logic’s designs
`
`for the Captain’s Lookout project and the protectible elements of Plaintiff's design. A
`
`plaintiff must first establish actual infringement before he can prevail on a claim for
`
`vicarious or contributory infringement. Faulkner v. Nat’l Geographic Enters., 409 F.3d
`
`26, 40 (2d Cir. 2005). Defendants’ arguments focus on copying and substantial
`
`similarity, regardless of the type of copyright claim.
`
`To satisfy the first element of an infringement claim—the “unauthorized copying”
`
`6
`
`
`
`Case 1:15-cv-01105-TJM-DJS Document 70 Filed 09/08/16 Page 7 of 30
`
`element—a plaintiff must show both that his work was “actually copied” and that the
`
`portion copied amounts to an “improper or unlawful appropriation.” Castle Rock
`
`Entertainment, Inc. v. Carol Pub. Group, Inc., 150 F.3d 132, 137 (2d Cir. 1998). “Actual
`
`copying may be established by direct or indirect evidence.” Boisson v. Banian, Ltd.,
`
`273 F.3d 262, 267 (2d Cir.2001). Further, a plaintiff may establish copying with
`
`circumstantial evidence “by demonstrating that the person who composed the
`
`defendant's work had access to the copyrighted material,” Herzog v. Castle Rock
`
`Entm't, 193 F.3d 1241, 1249 (11th Cir.1999); see also W alker v. Time Life Films, Inc.,
`
`784 F.2d 44, 48 (2d Cir 1986), and that there are similarities between the two works
`
`that are “probative of copying,” Repp v. Webber, 132 F.3d 882, 889 (2d. Cir. 1997).
`
`Access means that an alleged infringer had a “reasonable possibility”—not simply a
`
`“bare possibility”—of seeing or hearing the prior work; access cannot be based on mere
`
`“speculation or conjecture.” Gaste v. Kaiserman, 863 F.2d 1061, 1066 (2d Cir.1988).
`
`Plaintiff has satisfied the first element of the prima facie copyright infringement
`
`claim. Plaintiff’s Complaint contains a sufficient number of circumstances, with respect
`
`to access, for the Court to connect with respect to Design Logic’s motion for judgment
`
`on the pleadings. The Clark Defendants retained Design Logic after they were
`
`allegedly sold (or licensed)3 the Mackenzie design. Despite claiming that Design Logic
`
`“started from scratch,” Design Logic’s final design of the apartment complex is similar to
`
`Mackenzie’s design in several important ways. Taking Plaintiff’s facts as true, there is a
`
`3 The Gush Defendants claim that Mackenzie licensed them to use the building
`design. Mackenzie claims that the Gush Defendants impermissibly sold the design to
`Clark Realty.
`
`7
`
`
`
`Case 1:15-cv-01105-TJM-DJS Document 70 Filed 09/08/16 Page 8 of 30
`
`reasonable probability that Design Logic had access to Mackenize’s designs.
`
`To satisfy the second element, “[t]he standard test for substantial similarity
`
`between two items is whether an ‘ordinary observer, unless he set out to detect the
`
`disparities, would be disposed to overlook them, and regard [the] aesthetic appeal as
`
`the same.’” Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 111 (2d Cir. 2001) (quoting
`
`Hamil Am. Inc. v. GFI, 193 F.3d 92, 100 (2d Cir.1999)). In applying the so-called
`
`“ordinary observer test,” the Court asks whether “an average lay observer would
`
`recognize the alleged copy as having been appropriated from the copyrighted work.”
`
`Knitwaves, Inc. v. Lollytogs Ltd. (Inc.), 71 F.3d 996, 1002 (2d Cir.1995). On occasion,
`
`though, the Second Circuit has noted that when faced with works “that have both
`
`protectible and unprotectible elements,” the analysis must be “more discerning,”
`
`Fisher–Price, Inc. v. Well–Made Toy Mfg. Corp., 25 F.3d 119, 123 (2d Cir.1994), and
`
`that the Court instead “must attempt to extract the unprotectible elements from our
`
`consideration and ask whether the protectible elements, standing alone, are
`
`substantially similar,” Knitwaves, Inc., 71 F.3d at 1002.
`
`No matter which test is applied, however, the Second Circuit has disavowed any
`
`notion that the Court is “required to dissect [the works] into their separate components,
`
`and compare only those elements which are in themselves copyrightable.” Id. at 1003.
`
`Instead, the Court is principally guided “by comparing the contested design's ‘total
`
`concept and overall feel’ with that of the allegedly infringed work,” Tufenkian
`
`Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127, 133 (2d Cir.2003);
`
`see Knitwaves Inc., 71 F.3d at 1003, as instructed by our “good eyes and common
`
`sense,” Hamil Am., 193 F.3d at 102. This is so because “the defendant may infringe on
`
`8
`
`
`
`Case 1:15-cv-01105-TJM-DJS Document 70 Filed 09/08/16 Page 9 of 30
`
`the plaintiff's work not only through literal copying of a portion of it, but also by parroting
`
`properties that are apparent only when numerous aesthetic decisions embodied in the
`
`plaintiff's work of art—the excerpting, modifying, and arranging of [unprotectible
`
`components]—are considered in relation to one another.” Tufenkian Import/Export
`
`Ventures, Inc., 338 F.3d at 134. Thus, in the end, the Court’s inquiry necessarily
`
`focuses on whether the alleged infringer has misappropriated “the original way in which
`
`the author has ‘selected, coordinated, and arranged’ the elements of his or her work.”
`
`Knitwaves Inc., 71 F.3d at 1004 (quoting Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499
`
`U.S. 340, 358 (1991)).
`
`With respect to substantial similarity, the Court finds Design Logic’s motion for
`
`judgment on the pleadings without merit. The “ordinary observer” test has traditionally
`
`been treated as a question of fact. In discrete circumstances, courts have determined
`
`substantial similarity on a motion to dismiss or judgment on the pleadings, but generally
`
`prefer to wait until the summary judgment stage of the litigation. Given the amount of
`
`circumstantial evidence provided by Plaintiff, and given the visual similarity of the
`
`designs, the Court finds that Design Logic has not demonstrated that Plaintiff has
`
`stated no facts that could entitle Plaintiff to relief. Defendant’s motion will be denied.
`
`Design Logic also seeks attorneys fees, contending that Plaintiff’s Complaint was
`
`frivolous and that, as prevailing party, Design Logic should be able to recover such fees
`
`under the Copyright Act. See 17 U.S.C. § 505 (“the court in its discretion may allow the
`
`recovery of full costs by or against any party [and] may also award a reasonable
`
`attorney’s fee to the prevailing party as part of the costs.”). Design Logic has not
`
`prevailed, and is not entitled to any fees. The motion will be denied in this respect as
`
`9
`
`
`
`Case 1:15-cv-01105-TJM-DJS Document 70 Filed 09/08/16 Page 10 of 30
`
`well.
`
`B. Captain’s Lookout Defendants’ Motion for Judgment on the Pleadings
`
`Defendants Captain’s Lookout Development LLC, FGR Associates LLC, Clark
`
`Realty, LLC, Paul Clark and Frank Tate (the “Captain’s Lookout Defendants”) also
`
`move for judgment on the pleadings. Defendants argue that Plaintiffs have failed to
`
`provide adequate support for their allegations of copyright infringement and breach-of-
`
`contract against them.
`
`i. Copyright Claims
`
`Defendants argue that Plaintiff has not alleged any actual copying and that, even
`
`if allegations of actual copying were present, Plaintiff has not alleged substantial
`
`similarity. For the same reasons explained above with reference to the Design Logic
`
`claims, the Court rejects these arguments.
`
`Additionally, the Defendants contend that any use of the Mackenzie Drawings
`
`was authorized, and thus no infringement occurred. A copyright “owner may give a
`
`license to someone to exploit the work in some way, provided he owns that particular
`
`copyright interest.” Davis v. Bilge, 505 F.3d 90, 99 (2d Cir. 2007). “A copyright owner
`
`who grants a nonexclusive license to use his copyrighted material waives his right to
`
`sue the licensee for copyright infringement.” Graham v. James, 144 F.3d 229, 236 (2d
`
`Cir. 1998). This right of use is not absolute, however, because while “[a] valid license . .
`
`. immunizes the licensee from a charge of copyright infringement,” that immunity
`
`applies only when “the licensee uses the copyright as agreed with the licensor.” Davis,
`
`505 F.3d at 100.
`
`10
`
`
`
`Case 1:15-cv-01105-TJM-DJS Document 70 Filed 09/08/16 Page 11 of 30
`
`Plaintiff’s Amended Complaint alleges that:
`
`25.
`
`26.
`
`27.
`
`The parties understood and agreed that any designs created by
`Mackenzie Architects would be used on a non-exclusive basis by the
`Gush Defendants only for Captain’s Lookout. The parties never agreed or
`even contemplated that the Gush Defendants’ non-exclusive license to
`use the designs was transferable or assignable.
`In a document titled Agreement to Proceed dated December 31, 2007, the
`parties memorialized their agreement that Mackenzie Architects would
`retain its copyrights, and provided that it was a temporary short form
`agreement pending a subsequent “AIA” contract. (Exhibit H).
`The parties exchanged the AIA agreement, (Exhibit A), to supersede an
`earlier executed agreement to proceed. The contract’s written terms
`confirm the oral understanding of Mr. Gush and MacKenzie Architects:
`that Mackenzie Architects retained all copyrights and that FGR was
`granted only a non-exclusive, non-assignable license in exchange for
`payment in full. The contract stated that if the owner failed to fulfill its
`obligations under the contract, it would be considered substantial
`nonperformance of the contract and there would be no license.
`
`Amended Complaint at ¶¶ 25-27. Defendants contend that these passages constitute
`
`an admission by Plaintiff that their use of the copyrighted material was a licensed one.
`
`The Court disagrees. Courts treat licenses as contracts in this context, and “‘[i]n
`
`interpreting a contract, the intent of the parties governs. A contract should be
`
`construed so as to give full meaning to all of its provisions.’” Chapman v. New York
`
`State Div. for Youth, 546 F.3d 230, 236 (2d Cir. 2005) (quoting Am. Express Bank Ltd.
`
`v. Uniroyal, Inc., 164 A.D.2d 275, 562 N.Y.S.2d 613, 614 (N.Y. App. Div. 1990)). Here,
`
`Plaintiff does not even allege that an agreement existed to provide the Lookout
`
`Defendants with a license; the Complaint specifically alleges that any license was
`
`granted to the Gush Defendants. Assuming that the Captain’s Lookout Defendants
`
`were somehow beneficiaries of that license, the Complaint also alleges that the license
`
`could not be assigned to another architect. The Complaint here alleges that the
`
`Captain’s Lookout Defendants provided Design Logic with copies of the plans, and that
`
`11
`
`
`
`Case 1:15-cv-01105-TJM-DJS Document 70 Filed 09/08/16 Page 12 of 30
`
`Design Logic violated Plaintiff’s copyright in designing the buildings actually
`
`constructed. Accepting all of Plaintiff’s allegations as true, the Court finds that nothing
`
`in the Complaint indicates that a license immunized any of the Defendants’ infringement
`
`of Plaintiff’s copyright.
`
`Defendants also argue that Plaintiff’s claims for removing copyright information
`
`and providing false management information must also fail. According to Defendants,
`
`such allegations “are based on the bald allegation that Design Logic wrongfully copied
`
`the Mackenzie Drawings.” Defendants rely on their argument that nothing in the
`
`Complaint establishes such copying. As the Court has rejected this argument, the
`
`Court will deny the motion to dismiss on these grounds as well.
`
`The Lookout Defendants’ motion will thus be denied with respect to the copyright
`
`claims. Because the Court finds that Plaintiff has stated a claim for copyright
`
`infringement, the Court will also deny Plaintiff’s motion for attorney’s fees pursuant to
`
`17 U.S.C. § 505.
`
`ii. Contract Claims
`
`Defendants next argue that Plaintiff has failed to allege facts sufficient to give
`
`rise to a contract claim. Plaintiff does not allege any completed agreement between the
`
`parties and therefore cannot make out a contract claim. Even if the claim were properly
`
`pled, they insist, the statute of limitations has run.
`
`In New York, “[t]he essential elements of a cause of action to recover damages
`
`for breach of contract are the existence of a contract, the plaintiff’s performance
`
`pursuant to the contract, the defendant’s breach of its contractual obligations, and
`
`damages resulting from the breach.” PFM Packaging Mach. Corp. v. ZMY Food
`
`12
`
`
`
`Case 1:15-cv-01105-TJM-DJS Document 70 Filed 09/08/16 Page 13 of 30
`
`Packing, Inc., 16 N.Y.S. 3d 298, 2015 N.Y. App. Div. LEXIS 6711 at *2 (2d Dept. Sept.
`
`16, 2015). Defendants argue here that Plaintiff has not alleged a contract between the
`
`parties. “‘In determining whether the parties entered into a contractual agreement and
`
`what were its terms, it is necessary to look . . . to the objective manifestations of the
`
`intent of the parties as gathered by their expressed words and deeds.’” Minelli Constr.
`
`Co., Inc. v. Volmar Constr., 917 N.Y.S.2d 687, 688, 82 A.D. 3d 720, 721 (2d Dept.
`
`2011) (quoting Brown Bros. Elec. Contrs. v. Beam Constr. Corp., 41 N.Y.2d 397, 399,
`
`361 N.E..2d 999 (1977)). “‘Generally, courts look to the basic elements of the offer and
`
`acceptance to determine whether there is an objective meeting of the minds.’” Id.
`
`(quoting Matter of Express Indus. & Term. Corp. v. New York State Dept. of Transp., 93
`
`NY2d 584, 589, 715 N.E.2d 1040 (1999)).
`
`New York applies a six-year statute of limitations to contract claims. NY CPLR §
`
`213(2). The six-year period “begins to run when a cause of action accrues[.]” Ely-
`
`Cruikshank Co., Inc. v Bank of Montreal, 81 N.Y.2d 399, 402, 615 N.E.2d 986, 986
`
`(N.Y. 1993). A contract claim in New York accrues “‘from the time of the breach though
`
`no damage occurs until later.’” Id. quoting 6 Williston, CONTRACTS § 2004, at 5641
`
`(rev. ed. 1938)). “It is well settled law that a contract is not breached until the time set
`
`for performance has expired.” Rahmani Corp v. 9 East 96th Street Apartment Corp.,
`
`211 A.D.2d 262, 265, 692 N.Y.S.2d 382, 384 (1st Dept. 1995). At the same time, if
`
`“‘there has been an anticipatory breach of a contract by one party, the other party may
`
`treat the entire contract as broken and may sue immediately for the breach.’” Id.
`
`(quoting 22 NYJur2d, Contracts §§ 387-393, at 295). Still, a party need not be aware of
`
`the breach for the claim to accrue. T & N PLC v. Fred S. James & Co. of New York,
`
`13
`
`
`
`Case 1:15-cv-01105-TJM-DJS Document 70 Filed 09/08/16 Page 14 of 30
`
`Inc., 29 F.3d 57, 60 (2d Cir. 1994).
`
`The Amended Complaint alleges that “Plaintiff and Defendants FGR and VLG
`
`contracted for Plaintiff to create and provide designs for the project Captain’s Lookout,
`
`in consideration totaling $383,775, of which $281,175 was due upon completion of
`
`design development and construction document creation, the rest to be paid in
`
`installments.” Amended Complt. at ¶ 107. Though Plaintiff “performed under the
`
`contract,” Defendants did not pay the entire amount due. Id. at ¶ 108. Plaintiff
`
`“substantially completed the tasks under the contract” and gave the Gush Defendants
`
`drawings and designs in March or April of 2009. Id. at ¶ 28. Plaintiff filed its initial
`
`Complaint in this action on September 11, 2015.
`
`Plaintiff’s brief points to two documents attached to the Amended Complaint
`
`which allegedly raise questions of fact as to whether the statute of limitations has run.
`
`The first document is titled “Authorization and Agreement to Proceed.” See Exh. H to
`
`Amended Complaint, dkt. # 41-8. That document provides that:
`
`Mackenzie Architects, P.C. (MAPC) is hereby requested and authorized by FGR
`Associates, LLC (Owner), to provide professional architectural and/or
`engineering services for Captain’s Lookout Apartments (Project) as described
`below:
`Initial Architectural and Engineering Services for a 138 unit four level housing
`development with parking below, based on design documents dated December
`12, 2007. Services to be in accordance with proposed letter dated December 3,
`2007. This agreement is intended to allow A/E to continue provision of services
`while finalizing terms of overall agreement, and supersedes and absorbs prior
`agreement dated June 8, 2007. This interim agreement is likewise to be
`absorbed and superseded by the overall AIA B141 Agreement once that
`Agreement is in place.
`
`Id. The work was to be performed on a lump sum basis for a fee of $180,000 and
`
`costs. Id. The agreement further provided that “[t]he term of this authorization
`
`14
`
`
`
`Case 1:15-cv-01105-TJM-DJS Document 70 Filed 09/08/16 Page 15 of 30
`
`commences on the date of Owner’s signed acceptance of this agreement through
`
`January 1, 2009.” Id. The agreement also states that “[b]illings for the above will be
`
`monthly and are due and payable 30 days from the date of the invoice.” Id. A service
`
`is added for unpaid invoices after 90 days. Id. The agreement is dated December 31,
`
`2007 and signed by Stephen P. Mackenzie for Mackenzie Architects, P.C. Id. No one
`
`signed the agreement for FGR Associates, the “Owner” in the agreement. Id.
`
`The second document is titled “AIA Document B151–1997 Part 1: Standard
`
`Form of Agreement Between Owner and Architect with Standard Form of Architect’s
`
`Services. Exh. A to Amended Complaint, dkt. # 41-1. The agreement is stamped
`
`“draft,” and contains as parties Mackenzie Architects and FGR Associates. Id. The
`
`agreement contains detailed terms concerning the parties’ obligations, the cost of the
`
`work, the ownership of the drawings, resolution of disputes, payments, expenses, and
`
`compensation. Id. Included in the terms is a provision providing that “[t]he
`
`Authorization and Agreement to Proceed dated June 8, 2007 is hereby absorbed and
`
`superseded by this Agreement.” Id. at § 1.4.1.3. The agreement provided for
`
`compensation of a “[l]ump sum of $383,775 through completion of Construction
`
`Documents for all 140 units.” Id. at § 1.5.1. “Schematic design” was to be “completed
`
`initially for all phases.” “Fees for schematic design of all phases and balance of Phase
`
`One and Phase Two services . . . shall be $281,175.” Id. “Compensation of $34,200
`
`per phase of each subsequent phase shall be paid as that phase is initiated and
`
`services completed on that phase.” Id. Payment would be “based on monthly
`
`progress.” Id. The version of the agreement provided by Plaintiff is signed only by the
`
`Plaintiff. Id.
`
`15
`
`
`
`Case 1:15-cv-01105-TJM-DJS Document 70 Filed 09/08/16 Page 16 of 30
`
`As the Court finds the statute-of-limitations issue dispositive, the Court will
`
`decline to address whether Plaintiff has actually pled a breach. With reference to the
`
`statute of limitations, Plaintiff argues that there is an issue of fact as to which of these
`
`two contracts represents the agreement between the parties. Moreover, the two
`
`agreements have different explanations for the statute of limitations. The second
`
`agreement provides that:
`
`Causes of action between the parties to this Agreement pertaining to acts or
`failures to act shall be deemed to have accrued and the applicable statutes of
`limitations shall commence to run not later than either the date of Substantial
`Completion for acts or failures to act occurring after Substantial Completion. In
`no event shall such statutes of limitations commence to run any later than the
`date when the Architect’s services are substantially completed.
`
`Id. at § 1.3.7.3. Plaintiff contends that the date on which any claims accrued is unclear,
`
`since Plaintiff received no final certificate of payment and thus cannot know when the
`
`breach of contract actually occurred: “because Defendants dispute which agreement
`
`the parties operated under and because the date of breach under either contract is an
`
`open question of fact, the timeliness of the claim cannot be decided at this stage.”
`
`The Court here applies the Rule 12(b)(6) standard, taking notice of the
`
`agreements referenced in and incorporated by the Amended Complaint. The question,
`
`therefore, is not whether there is a question of fact about whether the statute of
`
`limitations ran before Plaintiff filed the Complaint, but whether the Plaintiff has alleged
`
`facts sufficient plausibly to allege that the Amended Complaint was timely filed. As
`
`explained above, Plaintiff alleges that the breach of contract came when Mackenzie
`
`Architects performed under the contract and Defendants refused to pay. As dates for
`
`these events, Plaintiff provides only that Mackenzie completed its performance in March
`
`16
`
`
`
`Case 1:15-cv-01105-TJM-DJS Document 70 Filed 09/08/16 Page 17 of 30
`
`or April 2009, and that Defendants refused to pay the amount agreed to. Plaintiff
`
`provides no date for this event, but did not file a Complaint until September 2015, well
`
`more than six years after Defendants’ obligation to pay supposedly arose. Plaintiff
`
`argues that the agreement was more complicated than stated in the Complaint, and
`
`cites to the two agreements as proof. According to the Plaintiff, Defendants had a
`
`series of obligations to pay and failed to do so. Plaintiff does not, however, allege when
`
`those obligations arose. Without such allegations, the Court cannot find that Plaintiff
`
`has plausibly alleged facts sufficient to establish that Plaintiff timely filed the breach-of-
`
`contract action. The Court will therefore grant the Defendants’ motion with respect to
`
`this claim.
`
`The Court will grant the motion without prejudice. The Plaintiff has not alleged
`
`facts sufficient to establish that the claim was timely filed. At the same time, Plaintiff
`
`points to facts which could, if alleged, establish that the statute of limitations had not run
`
`when Plaintiff filed the Complaint. Assuming that Plaintiff can allege dates on which
`
`Defendants failed in their obligation to pay under the alleged contract, the Court could
`
`find that Plaintiff has sufficiently pled a contract claim. The Court will provide Plaintiff
`
`with an opportunity to raise that claim.
`
`iii. Damages Pursuant to 17 U.S.C. § 412
`
`Defendants contend that Plaintiffs are precluded from obtaining statutory
`
`damages or attorney’s fees under the Copyright Act. They cite to 17 U.S.C. § 412,
`
`which provides in relevant part that:
`
`In any action under this title, other than an action brought for a violation of the
`rights of the author under section 106A(a), an action for infringement of the
`copyright of a work that has been preregistered under section 408(f) before the
`
`17
`
`
`
`Case 1:15-cv-01105-TJM-DJS