Case: 1:14-cv-01966-TMP Doc #: 87 Filed: 03/07/17 1 of 18. PageID #: 3419
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`IN THE UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF OHIO
`EASTERN DIVISION
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`Case No. 1:14-CV-01966
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`MAGISTRATE JUDGE
`THOMAS M. PARKER
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`MEMORANDUM OPINION &
`ORDER
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`))))))))))
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`DESIGN BASICS, LLC,
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`Plaintiff,
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`v.
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`PETROS HOMES, INC., et al.,
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`Defendants.
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`Plaintiff, Design Basics, LLC, holds United States Copyright Office-issued certificates of
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`copyrights on plans for residential homes. It instituted this action for damages contending that
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`defendants used the designs without permission. Plaintiff has moved for partial summary
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`judgment (ECF Doc. No. 61), claiming that there is no genuine dispute of material fact that it is
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`the owner of a valid copyrights on the home plans at issue. If the court so finds, plaintiff will
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`have established one of the elements of its copyright infringement claim. Plaintiff also seeks
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`summary judgment on several of defendant’s affirmative defenses. The parties have consented
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`to my jurisdiction.1
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`The court will GRANT, in part, and DENY, in part, plaintiff’s motion for partial
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`summary judgment.
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`1 ECF Doc. No. 57, Page ID# 280.
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`I.
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`Undisputed Facts and Case Posture
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`The undisputed record evidence before the court establishes that Plaintiff Design Basics,
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`LLC, is a building design firm that creates, markets, publishes, and sells licenses for the use of
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`architectural designs. It also is not disputed that plaintiff holds certificates of copyright
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`registration issued by the United States Copyright Office for the designs at issue here: (1) Plan
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`No. 2408 – Crawford; (2) Plan No. 2326 – Greensboro; (3) Plan No. 2355 – Waverly; (4) Plan
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`No. 4998 – Holden; (5) Plan No. 7614 – Southwick; (6) Plan No. 8108 – Rose Hollow; and (7)
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`Plain No. 2377 – Leighton. Plaintiff asserts a single cause of action in its amended complaint:
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`copyright infringement. Plaintiff alleges that several of the drawings, plans and/or houses
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`constructed by defendants were derived from the copyrighted works of plaintiff. Plaintiff argues
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`that several of defendants’ affirmative defenses should be dismissed because they are either not
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`true affirmative defenses or that there is no evidence to support them.
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`Defendants argue2 that plaintiff is not entitled to summary judgment on the validity of its
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`copyrights because it failed to produce evidence establishing the originality of its designs.
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`Defendants also question whether the elements of plaintiff’s designs are even protectable under
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`copyright law or if they are standard features not entitled to protection.
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`Regarding their affirmative defenses, defendants withdraw the defenses of: 1) failure to
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`state a prima facie case; 2) copyrights are invalid; 3) ownership of valid
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`copyrights/originality/copyrightability; 4) actions do not constitute infringement; 5) no access to
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`copyrighted works prior to independent creation; 6) no substantial similarity; 7) independently
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`created plans and/or houses; and 8) no direct infringement.3 Defendants oppose summary
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`2 ECF Doc. No. 65, Page ID# 938.
`3 ECF Doc. No. 65, Page ID# 951.
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`2
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`judgment on the affirmative defenses of innocent infringement, copyright misuse, fair use, laches
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`and license.
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`II.
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`Standard of Review
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`Under Fed. R. Civ. P. 56, summary judgment is warranted if “the movant shows that
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`there is no genuine dispute as to any material fact and that the movant is entitled to judgment as a
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`matter of law.” Fed. R. Civ. P. 56(a). A dispute of fact is “genuine” if “the [record] evidence is
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`such that a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty
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`Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct.2505, 91 L.Ed. 2d 202 (1986). As a result,
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`“[c]onclusory allegations, conjecture and speculation . . . are insufficient to create a genuine
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`issue of fact.” Kerzer v. Kingly Mfg., 156 F.3d 396, 400 (2d Cir. 1998) (citation omitted); see
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`also Fed. R. Civ. P. 56 (e)(2). As the Supreme Court has explained, “[the non-moving party]
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`must do more than simply show that there is metaphysical doubt as to the material facts.”
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`Matsushita Elec., Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 585-86, 106 S.Ct. 1348,
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`89 L.Ed.2d 538 (1986). As for the materiality requirement, a dispute of fact is “material” if it
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`“might affect the outcome of the suit under the governing law.” Anderson, 477 U.S. at 248.
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`“Factual disputes that are irrelevant or unnecessary will not be counted.” Id.
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`In determining whether genuine issues of material fact exist, the court must resolve all
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`ambiguities and draw all reasonable inferences against the moving party. Anderson, 477 U.S. at
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`255. In addition, “[the moving party] bears the initial responsibility of informing the district
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`court of the basis for its motion, and identifying those portions of the [record] which it believes
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`demonstrate the absence of any genuine issue of material fact.” Celotex v. Catrett, 477 U.S. 317,
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`323-24, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); see also Fed. R. Civ. P. 56(c), (e). However,
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`when the moving party has met this initial burden of establishing the absence of any genuine
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`3
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`issue of material fact, the nonmoving party must come forward with specific facts showing a
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`genuine dispute of material fact for trial. Fed R. Civ. P. 56(c), (e).
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`III.
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`Law & Analysis
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`A.
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`Whether Plaintiff’s Designs are Protected by a Valid Copyright
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`There are two elements of an architectural copyright infringement claim: (1) the work
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`must be shown to be protected by a valid copyright; and (2) it must be proven that the defendant
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`copied original or protectable aspects of the copyrighted work. Feist Publ’ns, Inc. V. Rural Tel.
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`Serv. Co., 449 U.S. 340, 348, 111 S.Ct. 1282, 113 L.Ed.2d 358. The first prong tests the
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`originality and non-functionality of the work. See M.M. Bus Forms Corp. v. Uarco, Inc., 472
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`F.2d 1137, 1139 (6th Cir. 1973). A fundamental rule of copyright law is that it protects only
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`“original works of authorship,” those aspects of the work that originate with the author himself.
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`17 U.S.C. § 102(b); Zalewski v. Cicero Builder Dev. Inc., 754 F.3d 95, 100, 2014 U.S.
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`App.LEXIS 10609 (2nd Cir. June 5, 2014).
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`Establishing proof of the first element of the claim can be straightforward. The
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`ownership of certificates of registration of copyrighted material constitutes prima facie evidence
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`of the copyright’s validity. Lexmark Int’l, Inc. v. Static Control Components, Inc., 387 F.3d 522,
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`2004 U.S. App. LEXIS 22250 (6th Cir. 2004). And, while originality is required for copyright
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`protection, courts have not required an “especially elevated” level of originality in the
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`architectural realm. Ranieri v. Adirondacck Dev. Group, 164 F.Supp.3d 305, 329, 2016 U.S.
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`Dist. LEXIS 20884 (N.D.N.Y. Feb. 22, 2016); see also Axelrod & Cherveny Architects, P.C. v.
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`Winmar Homes, 2007 U.S. Dist. LEXIS 15788 (E.D.N.Y. Mar. 6, 2007). In Feist, supra, the
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`Supreme Court indicated that
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`The requisite level of creativity is extremely low; even a slight amount will
`suffice. The vast majority of works make the grade quite easily, as they possess
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`4
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`some creative spark, “no matter how crude, humble or obvious” it might be …
`Originality does not signify novelty; a work may be original even though it
`closely resembles other works so long as the similarity is fortuitous, not the result
`of copying.
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`Feist Publ’ns, Inc., 449 U.S. at 345. Nonetheless, standard features “such as windows, doors,
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`and other stable building components” are not copyrightable. 37 C.F.R. §202.11(d)(2); Zitz v.
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`Pereira, 119 F. Supp.2d 133, 147 (E.D.N.Y. 1999). “In the case of more mundane residential
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`designs, it is obvious that the use of porches, porticos, dormers, and bay windows, for example,
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`is not protected, but the particular expression of those ideas and their combination in one house,
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`may be protected.” Frank Betz Assoc, Inc. v. J.O. Clark Constr., LLC, 2010 U.S. Dist. LEXIS
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`117961 (M.D. Tenn. Nov. 5, 2010).
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`Plaintiff moves for partial summary judgment on the first element of its copyright
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`infringement claim – an element that is presumptively satisfied by a certificate of registration and
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`a minimal showing of creativity in assembling even standard elements of architectural design.
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`Plaintiff contends, and defendants do not dispute, that plaintiff is the owner of certificates of
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`registration for the house design plans involved in this lawsuit. Plaintiff submits the affidavit of
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`Carl Cuozzo, a senior designer, who has worked for plaintiff for thirty years.4 Mr. Cuozzo
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`attests that Design Basics is the sole author and owner of plaintiff’s design plans.5 Paragraph 7
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`of his affidavit states:
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`Design Basics independently created all seven of these plans “from scratch,”
`in a collaborative process used by Design Basics since the mid-1980s. In
`other words, Plaintiff’s employee-design professionals would brainstorm new
`designs, which would be created internally, beginning with floor plans and
`elevation drawings, and proceeded to the creation of construction drawings.
`At no time would Design Basic’s personnel use third-party designs or
`drawings as a basis for creating its new designs.
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`4 ECF Doc. No. 61-5, Page ID# 402.
`5 ECF Doc. No. 61-5, Page ID# 403.
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`5
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`Defendants complain that they cannot fully investigate the origin of the house design
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`plans due the destruction of plaintiff’s files following a roof collapse at plaintiff’s facility in
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`January 2010. Although this accident may appear suspicious to defendants, the fact that records
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`were lost is not evidence that contradicts that plaintiff is the original author of its design plans.
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`Defendants have not presented any admissible evidence to rebut the presumption that the
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`copyrighted plans were independently created by plaintiff and that they possess the requisite
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`minimal decree of creativity. As a result, plaintiff is entitled to partial summary judgment on
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`the first element of its copyright infringement claim – that the plans involved in this lawsuit are
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`generally protected by valid copyrights.
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`Genuine disputes of material fact exist on the second element of the plaintiff’s
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`claim. The second element of a copyright infringement claim tests whether any copying
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`occurred, whether the two designs are substantially similar, and whether the portions of the work
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`copied were entitled to copyright protection. Lexmark Int’l, Inc. v. Static Control Components,
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`Inc., 387 F.3d 522, 534, 2004 U.S. App. LEXIS 22250 (6th Cir. 2004). Defendants complain
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`that many of the elements of plaintiff’s design plans are not entitled to copyright protection
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`because they were standard features or features dictated by building codes and other practical
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`concerns. These arguments go to the second prong of plaintiff’s copyright infringement claim.
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`The court has not been presented with the issues of whether defendant’s allegedly infringing
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`conduct involved the actual copying of plaintiff’s copyrighted designs, whether the allegedly
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`infringing conduct copied portions of plaintiff’s work that were original or merely standard
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`elements that may not be protected by the copyright law, or whether the allegedly infringing
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`conduct created copies that were substantially similar to plaintiff’s designs. Neither side has
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`moved for summary judgment on these issues. Because of this, much of defendants’ argument is
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`not relevant to the issue presented in the current motion and need not be further considered at
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`this time.
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`B.
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`Affirmative Defenses
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`Plaintiff also moves for summary judgment on several of the affirmative defenses
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`asserted by defendants in this case. Defendants concede that some of their “affirmative
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`defenses” are not truly affirmative defenses and are being abandoned or withdrawn.
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`Specifically, defendants acknowledge that the following defenses are not affirmative defenses:
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`1) failure to state a prima facie case; 2) copyrights are invalid; 3) ownership of valid
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`copyrights/originality/copyrightability; 4) actions do not constitute infringement; 5) no access to
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`copyrighted works prior to independent creation; 6) no substantial similarity; 7) independently
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`created plans and/or houses; and 8) no direct infringement.6 Defendants agree that these may be
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`dismissed as affirmative defenses but reserve the ability to argue these defenses to disprove the
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`elements of plaintiff’s claim. Defendants argue that the “affirmative defenses” of 1) innocent
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`infringement; 2) misuse of copyright; 3) fair use; 4) laches; and 5) license should not be
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`dismissed.
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`1.
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`Innocent Infringement
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`There is no innocent infringer defense that completely negates liability for copyright
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`infringement. Frank Betz Assocs. v. Signature Homes, Inc., 2009 U.S. Dist. LEXIS 59354, 92
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`U.S.P.Q.2D (BNA) 1507, 2009 WL 2151304 (M.D. Tenn. July 13, 2009); See 4-13 Nimmer §
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`13.08. However, innocent intent can affect how the court exercises its discretion in awarding
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`damages. Id.; 17 U.S.C. § 504(c)(2) (2004). As a result, defendants may be permitted to
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`introduce evidence regarding their intent if it is determined that they copied protected portions of
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`6 ECF Doc. No. 65, Page ID# 951.
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`7
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`plaintiff’s design plans. Defendants should have withdrawn this defense along with the others
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`because it is not an affirmative defense. “Innocent infringement” will be dismissed as an
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`affirmative defense but defendants will be permitted to present evidence of innocent intent at
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`trial if necessary.
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`2.
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`Copyright Misuse
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`The doctrine of copyright misuse prohibits a copyright holder from using a copyright “to
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`secure an exclusive right or limited monopoly not granted by the [Copyright] Office and which is
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`contrary to public policy to grant. Alcaltel USA, Inc. v. DGI Techs, Inc., 166 F.3d 772, 792 (5th
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`Cir. 1999). This defense functions as an absolute bar on recovery for copyright plaintiffs who
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`have attempted to extend their limited rights to “property not covered by the … copyright.”
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`Lasercomb Am., Inc. v. Reynolds, 911 F.2d 970, 972 (4th Cir. 1990).
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`Plaintiff correctly argues that the Sixth Circuit has not recognized the defense of
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`copyright misuse. In fact, the Sixth Circuit has not addressed the topic. As described in detail,
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`in a case cited by defendants, Home Design Servs. v. Park Square Enters., 2005 U.S. Dist.
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`LEXIS 33627 (M.D. Fla., 2005), several other circuit courts have recognized the copyright
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`misuse defense:
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`The trend toward recognizing the copyright misuse defense, moreover, is well-
`grounded in the basic objectives of copyright. At its core, copyright law seeks “to
`promote the dissemination of creative expression, and provide incentives for
`copyright owners to produce . . . original works.” CBS Broad., Inc. v. EchoStar
`Communications Corp., 265 F.3d 1193, 1211 (11th Cir. 2001). While these goals
`are furthered by granting copyright holders limited monopolies over the original
`elements of their creative works, the very same goals may be severely
`undermined when copyright holders leverage their monopolies to control “areas
`outside of the monopolies.” A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004,
`1026 (9th Cir. 2001). More to the point, where a copyright holder asserts rights in
`non-copyrightable materials, other individuals may be discouraged from
`integrating those non-copyrightable materials into their own original creative
`works. See generally, William F. Patry & Richard A. Posner, Fair Use and
`Statutory Reform in the Wake of Eldred, 92 Calif. L. Rev. 1639, 1654-59 (2004).
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`8
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`The reward for the copyright holder is unduly inflated while the creativity of other
`individuals is potentially stifled. In short, the basic goals of copyright are
`undermined.
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`Against this background, it is clear that the function of the copyright misuse
`defense amounts to more than merely penalizing “overclaiming” by copyright
`holders. Id. at 1658. Rather, the defense also encourages (or at least diminishes a
`deterrent for) other members of the public to engage in creative expression. For
`this reason, and in accordance with nearly all of the courts which have had
`occasion to address the issue, the Court recognizes copyright misuse as a viable
`defense to copyright infringement.
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`Home Design Servs., 2005 U.S. Dist at *37-39.
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`Plaintiff also argues that defendants have failed to offer specific evidence to support the
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`misuse defense. The court disagrees. Defendants contend that plaintiff’s design plans contain
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`many standard elements that are not protected by the copyrights held by plaintiff. They argue it
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`is a misuse of copyright law to obtain protection over things not able to be copyrighted.
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`Defendants further assert that the very business “model” utilized by plaintiff – to financially
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`incentivize employees to find alleged copyright infringements, to sue alleged infringers and to
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`force settlements of cases by leveraging the onerous burden placed on the alleged infringers to
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`disprove plaintiff’s presumptive damages – is evidence of a “misuse of copyrights” that
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`“completely undermines the purpose behind the protection afforded under copyright law.”7
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`Defendants have shown how this business “model” has manifested itself by plaintiff’s filing of
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`over 80 similar lawsuits in 12 states (most of which were filed after plaintiff’s original design
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`files were irretrievably damaged and lost). Defendants have produced specific information that,
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`if true, could be construed by a jury to support the misuse of copyright defense.
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`In Home Design Servs., the court reasoned that, if many of the elements of the plaintiff’s
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`design plans were later determined to be generic or unprotected, “the logical next step would be
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`to determine whether [plaintiff] has used its limited rights to ‘obtain settlement or . . . even to
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`7 ECF Doc. No. 65, Page ID# 946.
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`9
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`achieve an outright victory over’ defendants.” Id. at 39. Here, there are genuine disputes of
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`material fact on the asserted affirmative defense of copyright misuse and, absent controlling case
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`law holding that such a defense has been rejected, summary judgment on this defense is
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`inappropriate.
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`3.
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`Fair Use
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`The "fair use" defense has been codified by statute and provides, in relevant part:
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`[T]he fair use of a copyrighted work, including such use by reproduction in copies . . .,
`for purposes such as criticism, comment, news reporting, teaching . . ., scholarship, or
`research, is not an infringement of copyright. In determining whether the use made of a
`work in any particular case is a fair use the factors to be considered shall include—
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`(1) the purpose and character of the use, including whether such use is of a
`commercial nature or is for nonprofit educational purposes;
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`(2) the nature of the copyrighted work;
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`(3) the amount and substantiality of the portion used in relation to the copyrighted
`work as a whole; and
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`(4) the effect of the use upon the potential market for or value of the copyrighted
`work.
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`17 U.S.C. § 107.
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`These four factors guide courts in deciding cases within the purpose of the fair-use
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`doctrine, which "is to ensure that courts 'avoid rigid application of the copyright statute when, on
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`occasion, it would stifle the very creativity which that law is designed to foster.'" Zomba Enters.,
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`491 F.3d at 581 (quoting Princeton Univ. Press v. Mich. Doc. Servs., Inc., 99 F.3d 1381, 1385
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`(6th Cir. 1996) (en banc), cert. denied, 520 U.S. 1156, 117 S. Ct. 1336, 137 L. Ed. 2d 495,
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`(1997)). However, the four factors are non-exclusive. Swatch Grp. Mgmt. Servs., Ltd. v.
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`Bloomberg L.P., 756 F.3d 73, 81 (2nd Cir. 2014). Defendants bear the burden of proving that
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`their use was fair, but they need not establish that each of the factors weighs in their favor. N.
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`Jersey Media Grp. Inc. v. Pirro, 74 F.Supp.3d 605, 614 (S.D.N.Y. 2015). “[T]he factors are to
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`be explored, and the results weighed together, in light of the purposes of copyright.” Campbell
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`v. Acuff-Rose Music, Inc., 510 U.S. 569, 578, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994). The
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`court must consider these factors to determine whether, on the evidence identified by defendants,
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`a reasonable jury could come to the conclusion that defendant’s alleged use of plaintiff’s design
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`plans was fair. Balsley v. LFP, Inc., 691 F.3d 747, 2012 U.S. App. LEXIS 17187 (6th Cir. Ohio
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`2012).
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`a)
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`Factor One: the Purpose and Character of the Use
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`The first factor concerns the manner in which the copied work was used. An important
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`focus of the first factor is whether the use is “transformative.” Authors Guild, Inc. v. HathiTrust,
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`755 F.3d 87, 96 (2nd Cir. 2014). “A use is transformative if it does something more than
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`repackage or republish the original copyrighted work.” Id. “[T]he more transformative the new
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`work, the less will be the significance of the other factors… that may weigh against a finding of
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`fair use.” Campbell, 510 U.S. at 579. As part of the first factor, the court must also consider
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`whether, and to what extent, defendants alleged use of plaintiff’s design plans was for a
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`commercial purpose. Pirro, 74 F.Supp.3d at 617-618.
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`Plaintiff contends that this factor weighs against the fair use defense because the
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`defendants used plaintiff’s plan designs for commercial purposes. There is little doubt that, if the
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`defendants used protected elements of plaintiff’s designs, they used them for commercial
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`purposes. An argument could be made that defendants’ use of the plans was transformative, but
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`defendants have not so argued. The commercial purpose has been established and factor one
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`weighs against the fair use defense.
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`b)
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`Factor Two: the Nature of the Work
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`The second statutory consideration recognizes that “some works are closer to the core of
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`intended protection than others, with the consequence that fair use is more difficult to establish
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`when the former works are copied.” Campbell, 510 U.S. at 586. As pointed out by plaintiff,
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`“creative expression for public dissemination falls within the core of the copyright’s protective
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`purposes,” Id., and architectural works are generally considered creative. Rainieri v.
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`Adirondack Dev. Group, 164 F.Supp.3d 305, 353, 2016 U.S. Dist. LEXIS 20884 (N.D.N.Y.
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`2016). Again, defendants have not argued that this factor weighs in favor of the fair use defense
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`and the court finds that it weighs against its use in this case.
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`c)
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`Factor Three: the Amount and
`Substantiality of the Portion Used
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`The third factor is “the amount and substantiality of the portion used in relation to the
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`copyrighted work as a whole.” 17 U.S.C. § 107(3). “The question is whether the quantity and
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`value of the materials used are reasonable in relation to the purpose of the copying.” Pirro, 74
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`Supp.3d at 620. “In general, ‘the more of a copyrighted work that is taken, the less likely the use
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`is to be fair.’” Swatch, 756 F.3d at 89. The basic inquiry is whether “no more was taken than
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`necessary.” Campbell, 510 U.S. at 589.
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`As to the third factor, it is the plaintiff who has not presented any argument in its motion
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`for summary judgment.8 Defendants argue that this factor weighs in favor of the fair use defense
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`because they did not use any of plaintiff’s work in creating their own designs. Alternatively, if it
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`is later determined that they did copy some of the protected elements of plaintiff’s designs,
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`defendants contend that they copied very little. They point to the deposition testimony of Gary
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`Naim and Carl Cuozzo stating that the alleged similarities between the parties’ plans involved
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`8 ECF Doc. No. 61-2, Page ID# 338-339.
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`standard elements found in homes such as the placement of stairways, entryways, rooms,
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`porches, and ratio of bedrooms to bathrooms.9 This factor weighs in favor of the fair use
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`defense.
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`d)
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`Factor Four: the Effect of the Use Upon the
`Market or the Value of the Original
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`The fourth factor relates to the copyright owner’s ability to “capture the fruit of his labor
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`and hence his incentive to create.” Bond v. Blum, 317 F.3d 385, 396 (4th Cir. 2003). This factor
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`“requires courts to consider not only the extent of market harm caused by the particular actions
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`of the alleged infringer, but also ‘whether unrestricted and widespread conduct of the sort
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`engaged in by the defendant would result in substantially adverse impact on the potential market’
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`for the original.” Campbell, 510 U.S. at 590.
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`Defendants contend that, even if they had used portions of plaintiff’s design plans,
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`plaintiff’s plans “were still viable and could be used for other projects.” Ranieri, 164 F.Supp.3d
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`at 354. Defendants argue that the parties do not share the same client base. Plaintiff does not
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`use its plans to construct homes but creates plans to be sold or licensed to homebuilders
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`nationwide. The majority of plaintiff’s income comes from the sale of its plans. Defendant
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`Petros, on the other hand, does not copyright any of its plans. It builds homes in Northeast Ohio
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`and sells directly to prospective homeowners. Petros claims that it has a reputation for
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`customizing its homes to the specifications of its customers. Building specifications of the
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`residential developments, counties and municipalities also dictate elements of defendants’ design
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`plans. Defendants contend that Petros has not usurped any of plaintiff’s market or taken over its
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`customer base. Defendants argue that the fourth factor weighs in favor of the fair use defense.
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`9 While this evidence does not relate to the first element of plaintiff’s copyright infringement claim, it
`contains both facts and opinions related to whether the parties’ designs are substantially similar. In the
`event that plaintiff establishes the second element of its copyright infringement claim, this evidence may
`become relevant to defendants’ fair use defense.
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`Plaintiff asserts that defendants bear the burden of proving the ‘market effect’ factor.
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`Plaintiff cites Zomba Enterprises, Inc., v. Panorama Records, Inc., 491 F.3d 574, 2007
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`U.S.App.LEXIS 15180 (6th Cir. 2007) in support of this proposition. Although Zomba does
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`place the burden proof of this factor on the alleged infringer, it is of little precedential value here.
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`In Zomba, it was undisputed that defendants copied songs owned by plaintiff and there was
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`evidence illustrating that the parties were operating in the same market. Zomba, 491 F.3d at 583-
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`84.
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`The non-controlling Ranieri decision is more applicable to the facts of this case. Ranieri
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`involved the alleged use of copyrighted architectural plans. The district judge who denied
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`summary judgment on the fair use defense reasoned that, while defendant had competed in the
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`same market as plaintiff, it had not usurped the market for plaintiff’s design. Ranieiri, 164
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`F.Supp.3d at 353-54. The court reasoned that plaintiff could license or sell his designs to another
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`developer. His plans were still viable and could be marketed for other projects. Id.
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`Here, the facts are even more favorable to recognizing the fair use defense. Plaintiff and
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`defendant are not competing in the same market. And, unlike the apparent effect on the potential
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`market in Zomba, the alleged harm to plaintiff in this case is not so straightforward. There is no
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`evidence before the court to show that defendants’ alleged use of plaintiff’s design plans would
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`have any impact on plaintiff’s nationwide market or whether an outsider would even be aware of
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`the substantial similarity between the two designs. This is a question of fact which has not been
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`decided. The fourth factor weighs in favor of the fair use defense.
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`Defendants claim that they did not copy any protected portions of plaintiff’s designs.
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`They have asserted the fair use defense as an alternate means of defending this case, in the event
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`it is determined that they did, in fact, copy protected elements of plaintiff’s designs. After
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`weighing the four factors together, the court cannot conclude, as a matter of law, that the alleged
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`use of plaintiff’s designs was unfair. Reasonable minds could differ as to whether fair use
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`applies to the facts of this case, and summary judgment is inappropriate on this affirmative
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`defense.
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`4.
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`Laches
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`To prevail on a laches defense, defendants must demonstrate two elements: (1) undue
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`delay and lack of diligence on the part of plaintiff, and (2) prejudice to defendants as a result of
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`the delay. See Herman Miller Inc.v . Palazetti Imports & Exports, Inc., 270 F.3d 298, 320 (6th
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`Cir. 2001). If the statute of limitations has not elapsed, there is a strong presumption that
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`plaintiff’s delay in bringing the suit is not unreasonable. Only rarely should laches bar a case
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`before the statute of limitations has run. Chirco v. Crosswinds Cmtys, Inc., 474 F.3d 227, 233,
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`2007 U.S. App. LEXIS 427 (6th Cir. 2007).
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`Defendants contend that “Petros has been on [plaintiff’s] radar since the 1980s.”10
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`Defendants point to the fact that plaintiff was sending its publications to Petros as early as 1987.
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`Defendants also argue that plaintiff routinely encourages employees to seek out potential
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`copyright infringement lawsuits. However, defendants have not presented any Rule 56 evidence
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`showing that plaintiff was aware of any alleged copyright infringement by Petros in the 1980s or
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`at any appreciable time before it filed this lawsuit. In analyzing the first element of the laches
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`defense – lack of diligence – a plaintiff is chargeable with such knowledge as he might have
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`obtained upon inquiry, provided the facts already known by him were such as to put upon a man
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`of ordinary intelligence the duty of inquiry. Johnston v. Standard Min. Co., 148 U.S. 360, 370,
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`13 S.Ct. 585, 37 L.Ed. 480 (1893). But architects have no general ongoing duty to comb through
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`public records or to visit sites in order to police their copyrights. Warren Freedenfeld
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`10 ECF Doc. No. 65, Page ID# 959.
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`Associates, Inc. v. McTigue, 531 F.3d 38, 46 (1st Cir. 2008). That plaintiff was sending
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`publications to defendant and has sued numerous other entities for copyright infringement does
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`not amount to constructive notice that defendants were potential infringers. There are no genuine
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`disputes of material fact on the first element of defendants’ laches defense and plaintiff is
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`entitled to summary judgment on the same.
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`5.
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`License
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`Plaintiff moves for summary judgment on the affirmative defense of license.11 Plaintiff
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`complains that defendants have not produced sufficient evidence showing that they purchased a
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`license from plaintiff. Plaintiff characterizes Gary Naim’s testimony on this subject as
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`“evasive.” Plaintiff argues that defendants must produce an actual licensing agreement to prevail
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`on this affirmative defense.
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`Defendant Petros represents that it purchased at least one of plaintiff’s designs, “the
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`Leighton.”12 As evidence, defendants point to an order detail listing produced by plaintiff
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`showing that Defendant Petros made a purchase from plaintiff on October 2, 1995.
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`The court notes that, at this time, discovery is ongoing in this case.13 Some evidence
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`exists to show that Defen