Case: 1:10-cv-00187-SJD Doc #: 39 Filed: 12/14/10 Page: 1 of 9 PAGEID #: 287
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF OHIO
`WESTERN DIVISION
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`Case No. 1:10-cv-187
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`Chief Judge Susan J. Dlott
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`ORDER DENYING MOTION TO
`DISMISS
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`Richard Goettle, Inc.,
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`Plaintiff,
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`v.
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`Burgess & Niple, Inc.,
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`::
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`:
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`Defendant.
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`This matter is before the Court on Defendant Burgess & Niple, Inc.’s Motion to Dismiss
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`Under Rule 12(b)(6) of the Federal Rules of Civil Procedure (doc. 29). For the reasons that
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`follow, the Court will DENY the Motion to Dismiss.
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`I.
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`A.
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`BACKGROUND
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`Factual Allegations
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`Plaintiff Richard Goettle, Inc. (“Goettle”) states the following relevant factual allegations
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`against Defendant Burgess & Niple, Inc. (“B&N”) in the First Amended Complaint (doc. 13) and
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`the proposed Second Amended Complaint (doc. 37-1):1 Goettle is corporation engaged in the
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`business of earth retention, marine construction, deep foundation construction, and related
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`services. In 2008, Goettle submitted a subcontract bid proposal for the development project in
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`1 The Court granted Goettle leave to file a Second Amended Complaint on August 4,
`2010. The proposed Second Amended Complaint is substantively similar to the First Amended
`Complaint in regard to the allegations against B&N, but Goettle has withdrawn a claim for
`“Violation of Use Restrictions” against B&N and its prayer for injunctive relief. Goettle also
`has omitted its claims against the now-dismissed former defendants. Despite having leave to do
`so, Goettle has not filed the Second Amended Complaint as of the date of this Order.
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`1
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`Case: 1:10-cv-00187-SJD Doc #: 39 Filed: 12/14/10 Page: 2 of 9 PAGEID #: 288
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`Hamilton County, Ohio called The Banks Development Project (“the Project”). Goettle included
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`in the bid proposal a design called Goettle’s Alternate Phase 1 Design. Goettle has a copyright
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`— federal registration number VAu001013351 — in the Alternate Phase 1 Design.
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`B&N is a civil engineering company. B&N was retained to serve as the project engineer
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`for the first phase of the Project. B&N opposed Goettle’s Alternate Phase 1 Design, but Goettle
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`was awarded a subcontract to perform earth retention work for the first phase of the Project.
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`Goettle installed a permanent earth retention system for the first phase.
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`Bid proposals were solicited for the second phase of the Project in 2009. B&N again
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`served as the project engineer for the second phase. B&N submitted a design for the permanent
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`earth retention work for the second phase of the Project (“B&N Phase 2 Design”) and stamped
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`its design as prepared by B&N. Goettle alleges that the B&N Phase 2 Design is “virtually a
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`verbatim copy of [Goettle’s] copyrighted Alternate Phase 1 Design . . . down to the smallest
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`design detail.” (Doc. 13 at 4; Doc. 37-1 at 4.) Goettle alleges that B&N willfully infringed upon
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`its copyright in the Alternate Phase 1 Design.
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`B.
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`Procedural Posture
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`On March 25, 2010, Goettle initiated this suit against multiple defendants, including
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`Defendant B&N. On April 15, 2010, Goettle filed a First Amended Complaint asserting two
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`claims: (1) copyright infringement and (2) violation of use restrictions. Goettle asserts only the
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`copyright infringement claim in the proposed Second Amended Complaint. B&N filed the
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`pending Motion to Dismiss on June 14, 2010. All of the defendants except for B&N were
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`dismissed pursuant to an Agreed Partial Entry of Dismissal (doc. 32) entered on June 29, 2010.
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`2
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`Case: 1:10-cv-00187-SJD Doc #: 39 Filed: 12/14/10 Page: 3 of 9 PAGEID #: 289
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`II.
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`STANDARDS GOVERNING MOTION TO DISMISS
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`Federal Rule of Civil Procedure 12(b)(6) allows a party to move to dismiss a complaint
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`for failure to state a claim upon which relief can be granted. Fed. R. Civ. P. 12(b)(6). A district
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`court “must read all well-pleaded allegations of the complaint as true.” Weiner v. Klais and Co.,
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`Inc., 108 F.3d 86, 88 (6th Cir. 1997). However, this tenet is inapplicable to legal conclusions,
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`including legal conclusions couched as factual allegations. Ashcroft v. Iqbal, 129 S. Ct. 1937,
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`1949-50 (2009).
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`To withstand a dismissal motion, a complaint “does not need detailed factual
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`allegations,” but it must contain “more than labels and conclusions [or] a formulaic recitation of
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`the elements of a cause of action.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007).
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`“Factual allegations must be enough to raise a right to relief above the speculative level.” Id.
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`The Court does not require “heightened fact pleading of specifics, but only enough facts to state
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`a claim for relief that is plausible on its face.” Id. at 570. “A claim has facial plausibility when
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`the plaintiff pleads factual content that allows the court to draw the reasonable inference that the
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`defendant is liable for the misconduct alleged.” Iqbal, 129 S. Ct. at 1949. “[O]nce a claim has
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`been stated adequately, it may be supported by showing any set of facts consistent with the
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`allegations in the complaint.” Twombly, 550 U.S. at 563.
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`The Supreme Court gave the following additional guidance in Iqbal:
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`In keeping with these principles a court considering a motion to dismiss can
`choose to begin by identifying pleadings that, because they are no more than
`[legal] conclusions, are not entitled to the assumption of truth. While legal
`conclusions can provide the framework of a complaint, they must be supported by
`factual allegations. When there are well-pleaded factual allegations, a court
`should assume their veracity and then determine whether they plausibly give rise
`to an entitlement to relief.
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`129 S. Ct. at 1950.
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`III.
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`A.
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`ANALYSIS
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`Count One: Copyright Infringement
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`The Copyright Act protects “original works of authorship fixed in any tangible medium
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`of expression, now known or later developed, from which they can be perceived, reproduced, or
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`otherwise communicated, either directly or with the aid of a machine or device.” 17 U.S.C.
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`§ 102(a). A plaintiff seeking to establish copyright infringement must prove “(1) ownership of a
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`valid copyright, and (2) copying of constituent elements of the work that are original.” Feist
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`Publ’ns, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 361 (1991); see also Stromback v. New
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`Line Cinema, 384 F.3d 283, 293 (6th Cir. 2004); Kohus v. Mariol, 328 F.3d 848, 853 (6th Cir.
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`2003). Copying can be proven with indirect evidence that the defendant had access to the
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`allegedly-infringed work and there was a substantial similarity between the two works. Kohus,
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`328 F.3d at 854.
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`The Sixth Circuit has adopted a two-part test to determine substantial similarity. “[T]he
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`first step is to filter out the unoriginal, unprotectible elements-elements that were not
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`independently created by the inventor, and that possess no minimal degree of
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`creativity . . . through a variety of analyses.” Id. at 855 (internal citation omitted). In cases “that
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`involve a functional object rather than a creative work, it is necessary to eliminate those elements
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`dictated by efficiency.” Id. at 856. The second step requires a determination of “whether the
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`allegedly infringing work is substantially similar to the protectible elements of the original”
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`based on the “judgment of the ordinarily reasonable person” in the class of the “intended
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`audience.” Id. at 856-57. Courts have dismissed copyright infringement cases at the pleading
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`Case: 1:10-cv-00187-SJD Doc #: 39 Filed: 12/14/10 Page: 5 of 9 PAGEID #: 291
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`stage on Rule 12(b)(6) motions, including for lack of substantial similarity as a matter of law.
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`See, e.g., Peter F. Gaito Arch., LLC v. Simone Dev. Corp., 602 F.3d 57, 63-65 (2d Cir. 2010)
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`(stating that a court can resolve substantial similarity where either the similarity between the
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`works “concerns only the non-copyrightable elements of the plaintiff’s work” or because no
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`reasonable jury could find the works to be substantially similar); Taylor v. IBM, 54 F. App’x
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`794, 794 (5th Cir. 2002) (dismissing where plaintiff failed to allege copying of copyrightable
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`text); Nelson v. PRN Prods., Inc., 873 F.2d 1141, 1143-44 (8th Cir. 1989) (finding no substantial
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`similarity between song lyrics).
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`B&N moves to dismiss the First Amended Complaint on the grounds that Goettle failed
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`to identify in the First Amended Complaint those aspects of the Alternate Phase 1 Design that
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`were copyrightable. Goettle’s Alternate Phase 1 Design is a design for the creation of an earth
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`retention system. B&N contends that an earth retention system is a “useful article,” a term of art
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`defined in the Copyright Act as “an article having an intrinsic utilitarian function that is not
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`merely to portray the appearance of the article or to convey information.” 17 U.S.C. § 101. The
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`design of a useful article is protected under the Copyright Act “only if, and only to the extent
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`that, such design incorporates pictorial, graphic, or sculptural features that can be identified
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`separately from, and are capable of existing independently of, the utilitarian aspects of the
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`article.” Id. (defining “pictorial, graphic, and sculptural works”). B&N contends that allegations
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`that a defendant infringed upon a design for a useful object do not rise to the level of plausibility
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`under Twombly and Iqbal unless the plaintiff specifically identifies the elements of the design
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`that are protectible under the Copyright Act.
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`In response, Goettle points out that a registered copyright is entitled to a presumption of
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`Case: 1:10-cv-00187-SJD Doc #: 39 Filed: 12/14/10 Page: 6 of 9 PAGEID #: 292
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`validity. Under copyright law, generally no suit can be brought for infringement of a copyright
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`until the copyright has been registered in accordance with law. 17 U.S.C. § 411(a). “In any
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`judicial proceedings the certificate of a registration made before or within five years after first
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`publication of the work shall constitute prima facie evidence of the validity of the copyright and
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`of the facts stated in the certificate.” 17 U.S.C. § 410(c). However, it does not necessarily
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`follow from the fact that a valid copyright exists that copying of the copyrighted work is
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`actionable. Copyright infringement exists only in regards to the “copying of constituent
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`elements of the work that are original.” Feist Publ’ns, 499 U.S. at 361. The burden is on the
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`defendant to rebut the presumption that a copyright is invalid. Hi-Tech Video Prods., Inc. v.
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`Capital Cities/ABC, Inc., 58 F.3d 1093, 1095 (6th Cir. 1995).
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`Post-Feist Publications, but pre-Twombly and Iqbal, at least two federal courts held that a
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`plaintiff need not specifically allege which elements of a copyrighted work are original and,
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`therefore, protected. Mid America Title Co. v. Kirk, 991 F.2d 417, 422 (7th Cir. 1993) (stating
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`that Feist Publications does not require a determination of originality at the pleading stage);
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`Kindergartners Count, Inc. v. Demoulin, 171 F. Supp. 2d 1183, 1189-90 (D. Kan. 2001) (stating
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`that originality need not be pleaded to survive Rule 12(b)(6), but rather is only an issue for
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`summary judgment). On the other hand, post-Twombly and Iqbal, a court in the Southern
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`District of Ohio dismissed a claim where the plaintiff failed to allege that the defendant’s design
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`of a useful article copied the ornamental or artistic elements of the plaintiff’s design for the
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`useful article. Johnson v. Marc Ecko UN LTD., No. 3:09cv00048, 2009 WL 3739001, at *6-8
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`(S.D. Ohio Nov. 5, 2009).
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`Neither party identifies any decision by the Sixth Circuit Court of Appeals which has
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`addressed the post-Twombly and Iqbal pleading requirements for a copyright infringement claim
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`in a manner relevant to the instant case. B&N’s contention that the non-utilitarian aspects of a
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`design for a useful article must be specifically identified in the complaint in order to state a claim
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`for copyright infringement would impose a heightened pleading requirement for one category of
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`copyright claims. The heightened standard likely would be inapplicable to claims for
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`infringement of a literary or musical work.
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`The standard suggested by B&N also would require a plaintiff and the Court to make at
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`the pleading stage the factual determination that the work alleged to be infringed is the design of
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`a useful article. That type of factual determination ordinarily is appropriate only at summary
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`judgment or trial. See Lanard Toys Ltd. v. Novelty, Inc., 375 F. App’x 705, 710 (9th Cir. 2010)
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`(“The determination whether a toy is . . . an uncopyrightable “useful article” is a fact-intensive
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`one that must be decided on a case-by-case basis, and is properly submitted to the jury for
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`resolution when there is a genuine factual dispute.”); Warren Sign Co., Inc. v. Piros Signs, Inc.,
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`No. 4:10-cv-15, 2010 WL 3034637, at *5 (E.D. Mo. Aug. 3, 2010) (denying motion to dismiss
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`because the court could not determine based on the complaint allegations and documents
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`whether the drawing of a sign depicted a “useful article”); Boyds Collection, Ltd. v. Bearington
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`Collection, Inc., 365 F. Supp. 2d 612, 617 (M.D. Pa. 2005) (stating that the classification of a
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`design “as a ‘useful article’ is not an all-or-nothing proposition; the issue must be addressed on a
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`case-by-case basis.”); The Tactical Tailor, Inc. v. Hirayama, No. C05-5463FDB, 2005 WL
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`2206808, at *1 (W.D. Wash. Sept. 8, 2005) (“Defendant’s argument that the actual articles are
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`ineligible for copyright protection because they are useful articles is an issue of fact, which
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`cannot be determined on a motion to dismiss for failure to state a claim.”). The Court will not
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`Case: 1:10-cv-00187-SJD Doc #: 39 Filed: 12/14/10 Page: 8 of 9 PAGEID #: 294
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`impose the heightened pleading standard suggested by B&N for a particular category of
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`copyright claims under the auspices of Twombly and Iqbal without direct guidance from the
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`Sixth Circuit Court of Appeals or the Supreme Court.
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`Having determined that a heightened pleading standard is inapplicable, the Court now
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`must determine if Goettle adequately has pleaded its copyright infringement claim. Goettle has
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`pleaded ownership of a copyrighted work, the Alternate Phase 1 Design, and provided a copy of
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`the copyright Certificate of Registration. (Doc. 13 at 2 & Ex. A.) It also has pleaded that B&N
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`copied the copyrighted work and attached comparison sheets with examples to illustrate the
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`manner by which the designs are substantially similar. (Id. at 4 & Ex. B.) The Court holds that
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`Goettle’s allegations are sufficient to state a claim for copyright infringement. See Basevi, Inc.
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`v. Acorn Co., No. CV 08-7145, 2009 WL 764532, at *4 (C.D. Cal. Mar. 19, 2009) (holding that a
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`plaintiff adequately pleaded copyright infringement where it “identified the copyrighted
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`artworks; attached exhibits showing the copyright registration numbers of the works and noting
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`that the restored copyrights were granted under the URAA; alleged that Defendant has sold
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`prayer cards with the copyrighted artwork; and attached images of five of the allegedly
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`infringing cards”).
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`B.
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`Count Two: Violation of Use Restrictions
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`In Count Two of the First Amended Complaint, Goettle alleges that B&N copied its
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`design “virtually verbatim down to the smallest design detail” without Goettle’s authorization.
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`(Doc. 13 at 6.) B&N moves to dismiss this claim on the grounds that no such claim exists under
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`Ohio law and that any such claim would be preempted by Section 301 of the Copyright Act, 17
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`U.S.C. § 301. Goettle does not contest B&N’s Motion to Dismiss as to this claim. Moreover,
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`Case: 1:10-cv-00187-SJD Doc #: 39 Filed: 12/14/10 Page: 9 of 9 PAGEID #: 295
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`Goettle omits this claim from its proposed Second Amended Complaint. (Doc. 37-1.) The Court
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`considers Goettle to have withdrawn this claim. B&N’s Motion to Dismiss is moot as to Count
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`Two of the First Amended Complaint.
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`IV.
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`CONCLUSION
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`For the foregoing reasons, B&N’s Motion to Dismiss (doc. 29) is DENIED as to the
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`copyright infringement claim stated in the First Amended Complaint and the proposed Second
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`Amended Complaint. Goettle has withdrawn Count Two of the First Amended Complaint.
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`IT IS SO ORDERED.
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`___s/Susan J. Dlott____________
`Chief Judge Susan J. Dlott
`United States District Court
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