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Case 4:10-cv-04837 Document 97 Filed in TXSD on 03/21/13 Page 1 of 15
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
`HEWLETT CUSTOM HOME DESIGN, §
`INC., §
`§
`Plaintiff,
`§
` §
` § CIVIL ACTION NO. H-10-04837
` §
`§
`
`v.
`FRONTIER CUSTOM BUILDERS, INC.
`and RONALD W. BOPP,
`Defendants.
`
`§§
`
`§
`
`MEMORANDUM AND ORDER
`
`Pending are Defendants Frontier Custom Builders, Inc. and
`Ronald W. Bopp’s Motion to Exclude Plaintiff’s Expert Shane Hewlett
`(Document No. 55), Defendants’ Motion for Summary Judgment
`(Document No. 56), Plaintiff’s Motion for Partial Summary Judgment
`(Document No. 58), Plaintiff’s Objections to and Motion to Strike
`Portions of Declaration of John McGinty (Document No. 64), and
`Defendants’ Objections and Motion to Strike Evidence Filed with
`Plaintiff’s Response to Motion for Summary Judgment (Document No.
`81). After carefully considering the motions, responses, replies,
`and applicable law, the Court concludes as follows.
`
`I. Background
`
`Plaintiff Hewlett Custom Home Design, Inc. (“Plaintiff”)
`alleges that it is the author and owner of certain architectural
`works, namely its Plan 4348, Plan 4210, Plan 4540, Plan 4187, Plan
`
`

`
`Case 4:10-cv-04837 Document 97 Filed in TXSD on 03/21/13 Page 2 of 15
`
`4721, Plan 5449, and Plan 5092, all of which it has registered with
`the United States Copyright Office. Plaintiff alleges that
`1
`Defendant Frontier Custom Builders, Inc. (“Frontier”) infringed on
`Plaintiff’s copyrights in its design of certain homes in the
`Houston area and in its creation of plans that it advertises on its
`website, which Plaintiff claims are copies or derivatives of one or
`more of Plaintiff’s designs. Plaintiff claims copyright
`2
`infringement under the Copyright Act, 17 U.S.C. §§ 101 et seq.
`Defendant Ronald W. Bopp (“Bopp,” and collectively with Frontier,
`“Defendants”) is the principal of Frontier, who Plaintiff seeks to
`hold vicariously liable for the infringement. Defendants move for
`summary judgment, and Plaintiff moves for partial summary judgment.
`Both parties have filed objections to the opposing parties’
`experts, and Defendants further object to Plaintiff’s inclusion of
`certain exhibits in its summary judgment evidence.
`
`II. Evidentiary Matters
`
`A.
`
`Shane Hewlett
`
`Defendants seek to exclude the testimony of Plaintiff’s non-
`retained expert, Shane Hewlett (“Hewlett”), because of Plaintiff’s
`
`1
`
`2
`
` Document No. 30 at 3-4 (1st Am. Cmplt.).
` Id. at 5-6.
`
`2
`
`

`
`Case 4:10-cv-04837 Document 97 Filed in TXSD on 03/21/13 Page 3 of 15
`
`failure to comply with the disclosure requirements of Rule
`26(a)(2)(C). Rule 26(a)(2)(C) states that:
`3
`
`Unless otherwise stipulated or ordered by the court, if
`the witness is not required to provide a written report,
`this disclosure [of the identity of the expert under Rule
`26(a)(2)] must state:
`(i) the subject matter on which the witness is expected
`to present evidence under Federal Rule of Evidence 702,
`703, or 705; and
`(ii) a summary of the facts and opinions to which the
`witness is expected to testify.
`
`FED. R. CIV. P. 26(a)(2)(C). 4
`Plaintiff timely designated Hewlett, who is Plaintiff’s
`principal and owner and the creator of the designs, as a rebuttal
`expert witness to address the similarity between the copyrighted
`works and the allegedly infringing works if Defendants chose to
`designate an expert on this topic. In the designation, Plaintiff
`states that if Defendants designate such an expert, “[Plaintiff]
`will serve the disclosures required by Rule 26(a)(2)(C) within the
`time periods required for rebuttal experts under the Federal Rules
`of Civil Procedure.” The disclosure further states that:
`5
`
`3
`
` Document No. 55.
` A witness who is “retained or specially employed to provide
`4
`expert testimony in the case or one whose duties as the party’s
`employee regularly involve giving expert testimony” must submit an
`expert report. FED. R. CIV. P. 26(a)(2)(B).
` Document No. 55, ex. 1 at 1-2.
`5
`3
`
`

`
`Case 4:10-cv-04837 Document 97 Filed in TXSD on 03/21/13 Page 4 of 15
`
`Mr. Hewlett will also offer testimony regarding his
`creation of the works at issue and may also explain
`aspects of the works at issue and the practices of the
`building design industry. To the extent that such
`testimony is considered to be expert testimony rather
`than fact testimony, HCHD similarly designates Mr.
`Hewlett as an expert witness pursuant to Rule
`26(a)(2)(6). Mr. Hewlett’s testimony would be based on
`his knowledge of the works at issue and experience in the
`building design industry, and would explain what the
`works are and how they were created.6
`
`Defendants designated and produced the report of retained expert
`John McGinty to offer opinions on the originality of aspects of
`Plaintiff’s works and to compare Plaintiff’s works with Defendants’
`allegedly infringing works, but Plaintiff produced no further Rule
`7
`26 disclosures regarding Hewlett’s opinions and the bases for them
`in response to Defendants’ disclosure. Plaintiff states that
`Hewlett’s opinions and the bases for them were disclosed in
`responses to interrogatories propounded by Defendants, and that
`Defendants were able fully to explore Hewlett’s opinions and their
`bases in his deposition on November 13, 2012. However, Rule 26
`8
`states that a party must disclose a rebuttal expert’s opinions and
`the bases for them within thirty days after the other party’s
`disclosure. FED. R. CIV. P. 26(a)(2)(C). Plaintiff has made no
`
`6
`
`7
`
`8
`
` Id., ex. 1 at 2.
` Id., ex. 2 at 1-2.
` Document No. 75 at 2.
`
`4
`
`

`
`Case 4:10-cv-04837 Document 97 Filed in TXSD on 03/21/13 Page 5 of 15
`
`showing that it complied with Rule 26 in its disclosure of
`Hewlett’s opinions.
`However, Plaintiff’s failure to comply with the requirements
`of Rule 26 does not result automatically in the exclusion of
`Hewlett’s testimony. The Fifth Circuit considers four factors when
`deciding whether a district judge abuses his discretion by
`excluding an expert that was not properly disclosed: (1) the
`explanation for the failure to identify the witness; (2) the
`importance of the testimony; (3) the potential prejudice in
`allowing the testimony; and (4) the availability of a continuance
`to cure such prejudice. Brumfield v. Hollins, 551 F.3d 322, 330
`(5th Cir. 2008) (citing Geiserman v. MacDonald, 893 F.2d 787, 791
`(5th Cir. 1990)).
`Plaintiff provides no explanation to justify its failure to
`comply with Rule 26, other than to state that no further
`information was required by Rule 26, despite its own statement to
`the contrary in its initial disclosure of Hewlett. Nonetheless,
`the testimony of Hewlett on the originality of Plaintiff’s works
`and a comparison of his works with the alleged infringing works is
`central to the claims alleged here. Defendants conclusorily state
`9
`that, “allowing such evidence long after the discovery date has
`
` To the extent that Defendants are seeking to exclude
`9
`Hewlett’s testimony explaining aspects of his own works, such is
`fact testimony rather than expert testimony, and thus not subject
`to the Rule 26(a)(2)(c) requirements.
`5
`
`

`
`Case 4:10-cv-04837 Document 97 Filed in TXSD on 03/21/13 Page 6 of 15
`
`passed under the scheduling order and after this case has been on
`file for two years, would clearly prejudice Defendants.”10
`Plaintiff asserts that it has fully informed Defendants of
`Hewlett’s opinions and the bases for them in its responses to
`interrogatories. It should therefore be quite easy for Plaintiff
`promptly to comply with Rule 26(a)(2)(C), albeit late.
`Accordingly, it is ORDERED that within seven (7) days after the
`date of this Order Plaintiff shall serve on Defendants its Rule
`26(a)(2)(C)(i) and (ii) disclosures pertaining to Hewlett’s
`expected testimony. If Defendants in good faith contend that the
`disclosures add new matters not previously disclosed in Plaintiff’s
`responses to interrogatories, Hewlett’s deposition, and Hewlett’s
`declaration opposing summary judgment, and which unfairly prejudice
`Defendants, then the Court will consider a promptly filed motion to
`strike such new matter(s) or consider granting a continuance to
`cure any unfair prejudice. The Motion to Exclude Hewlett’s
`Testimony (Document No. 55) is DENIED, without prejudice to being
`reconsidered if Plaintiff does not serve the Rule 26(a)(2)(C)
`disclosures as above required.
`
`11
`
`10
`
` Document No. 55 at 4.
` Defendants’ Objections and Motion to Strike Evidence Filed
`11
`with Plaintiff’s Response to Motion for Summary Judgment (Document
`No. 81) is DENIED as to their requests to strike paragraphs 11-96
`of Hewlett’s declaration because of Plaintiff’s failure to comply
`with Rule 26.
`
`6
`
`

`
`Case 4:10-cv-04837 Document 97 Filed in TXSD on 03/21/13 Page 7 of 15
`
`B.
`
`John McGinty
`
`Plaintiff moves to strike portions of the declaration
`of Defendants’ expert, John McGinty (Document No. 64). Expert
`witnesses are not allowed to “render conclusions of law.” Snap-
`Drape, Inc. v. C.I.R., 98 F.3d 194, 198 (5th Cir. 1996) (citing
`Aldread v. City of Grenada, 988 F.2d 1425, 1436-37 (5th Cir.
`1993)); Owen v. Kerr-McGee Corp., 698 F.2d 236, 240 (5th Cir.
`1983)). However, “testimony in the form of an opinion or inference
`otherwise admissible is not objectionable because it embraces an
`ultimate issue to be decided by the trier of fact.” FED. R. EVID.
`704. It is not clear that McGinty is attempting to use legal
`definitions of “original” and “derivative” to state impermissible
`conclusions of law, as suggested by Plaintiff, rather than merely
`using these terms in their common usage to describe the historical
`roots of architectural features and/or the process of creating an
`architectural design. The Court will assume the terms as used in
`paragraphs 3, 5, and 14 are being used in the permissible manner,
`and therefore denies Plaintiff’s motion to strike these sentences.
`Plaintiff also moves to strike the sentence in paragraphs 7,
`9, 11, 13, and 15, that “The similarities are based on functional
`relationships between rooms required to meet the demands of the
`market and client.” Because McGinty provides no analysis or basis
`for these conclusory opinions and does not explain what is meant by
`the functional relationship between the rooms, etc., this sentence
`
`7
`
`

`
`Case 4:10-cv-04837 Document 97 Filed in TXSD on 03/21/13 Page 8 of 15
`
`is STRICKEN from each of paragraphs 7, 9, 11, 13, and 15.
`Plaintiff’s motion to strike portions of McGinty’s Declaration
`(Document No. 64) is otherwise DENIED.
`
`C.
`
`Plaintiff’s Exhibits
`
`Defendants object to Plaintiff’s Exhibit 35 and Exhibits 37
`through 66 on the grounds that they were not timely produced.12
`These exhibits simply contain side-by-side comparisons of
`Plaintiff’s and Defendants’ designs that were previously produced
`on separate pages by both sides. Defendants’ motion to strike
`Exhibit 35 and Exhibits 37 through 66 is DENIED.
`
`III. Motions for Summary Judgment
`
`A.
`
`Summary Judgment Standard
`
`Rule 56(a) provides that “[t]he court shall grant summary
`judgment if the movant shows that there is no genuine dispute as to
`any material fact and the movant is entitled to judgment as a
`matter of law.” FED. R. CIV. P. 56(a). Once the movant carries
`this burden, the burden shifts to the nonmovant to show that
`summary judgment should not be granted. Morris v. Covan World Wide
`Moving, Inc., 144 F.3d 377, 380 (5th Cir. 1998). A party opposing
`a properly supported motion for summary judgment may not rest upon
`
`12
`
` Document No. 81 at 2-3.
`
`8
`
`

`
`Case 4:10-cv-04837 Document 97 Filed in TXSD on 03/21/13 Page 9 of 15
`
`mere allegations or denials in a pleading, and unsubstantiated
`assertions that a fact issue exists will not suffice. Id. “[T]he
`nonmoving party must set forth specific facts showing the existence
`of a ‘genuine’ issue concerning every essential component of its
`case.” Id. “A party asserting that a fact cannot be or is
`genuinely disputed must support the assertion by: (A) citing to
`particular parts of materials in the record . . .; or (B) showing
`that the materials cited do not establish the absence or presence
`of a genuine dispute, or that an adverse party cannot produce
`admissible evidence to support the fact.” FED. R. CIV. P. 56(c)(1).
`“The court need consider only the cited materials, but it may
`consider other materials in the record.” Id. 56(c)(3).
`In considering a motion for summary judgment, the district
`court must view the evidence “through the prism of the substantive
`evidentiary burden.” Anderson v. Liberty Lobby, Inc., 106 S. Ct.
`2505, 2513 (1986). All justifiable inferences to be drawn from the
`underlying facts must be viewed in the light most favorable to the
`nonmoving party. Matsushita Elec. Indus. Co. v. Zenith Radio
`Corp., 106 S. Ct. 1348, 1356 (1986). “If the record, viewed in
`this light, could not lead a rational trier of fact to find” for
`the nonmovant, then summary judgment is proper. Kelley v. Price-
`Macemon, Inc., 992 F.2d 1408, 1413 (5th Cir. 1993). On the other
`hand, if “the factfinder could reasonably find in [the nonmovant’s]
`favor, then summary judgment is improper.” Id. Even if the
`
`9
`
`

`
`Case 4:10-cv-04837 Document 97 Filed in TXSD on 03/21/13 Page 10 of 15
`
`standards of Rule 56 are met, a court has discretion to deny a
`motion for summary judgment if it believes that “the better course
`would be to proceed to a full trial.” Anderson, 106 S. Ct. at
`2513.
`
`B.
`
`Defendants’ Motion for Summary Judgment
`
`Defendants move for summary judgment on Plaintiff’s copyright
`infringement claim because (1) Plaintiff does not own a valid
`copyright in the portion of its designs that Defendants allegedly
`infringed upon, (2) Defendants did not have access to Plaintiff’s
`designs, (3) the designs are not substantially similar, and (4)
`Plaintiff cannot establish that any of Frontier’s revenues are
`attributable to the alleged infringement.
`In order to make a prima facie case of copyright infringement,
`Plaintiff must prove (1) ownership of a valid copyright, and (2)
`copying by defendant of constituent elements of the work that are
`original. Gen. Universal Sys., Inc., v. Lee, 379 F.3d 131, 141
`(5th Cir. 2004) (quoting Feist Publ’ns, Inc. v. Rural Tel. Serv.
`Co., 111 S. Ct. 1282, 1296 (1991)).
`Plaintiff in the voluminous summary judgment evidence has
`raised genuine issues of material fact on each of the essential
`elements of its copyright infringement claims against Defendants as
`to Plaintiff’s Plans 4187 and 4210. As to these two Plans,
`Defendants’ Motion for Summary Judgment will be DENIED. Plaintiff
`
`10
`
`

`
`Case 4:10-cv-04837 Document 97 Filed in TXSD on 03/21/13 Page 11 of 15
`
`has made no showing, however, that Defendants ever had access to
`Plans 4348, 4540, 4721, 5449, or 5092, or that Defendants ever used
`such Plans in Frontier’s works. Accordingly, as to these latter
`five Plans, Defendants are entitled to summary judgment denying
`Plaintiff’s copyright infringement claims.
`
`C.
`
`Plaintiff’s Motion for Partial Summary Judgment
`
`1.
`
`Plaintiff is the Owner of Valid Copyrights in the Works
`
`Plaintiff’s uncontroverted summary judgment evidence shows
`that Plaintiff’s principal Shane Hewlett independently created
`Plans 4210, 4187, 4348, 4540, 4721, 5449, and 5092, the creation of
`these plans required at least a minimal degree of creativity, and
`that Plaintiff registered all of its works with the United States
`Copyright Office. Defendants have offered no evidence to
`13
`contradict that proof; and Plaintiff has therefore established as
`a matter of law that it is the owner of valid copyrights in these
`works.
`
`2.
`
`Affirmative Defenses
`
`Plaintiff moves for summary judgment to dismiss several of
`Defendants’ affirmative defenses. A plaintiff moving for summary
`14
`
`13
`
` Document No. 62, ex. A at 1-14.
` In response to Plaintiff’s motion, Defendants withdrew their
`14
`defense that this Court lacks jurisdiction. They further withdrew
`11
`
`

`
`Case 4:10-cv-04837 Document 97 Filed in TXSD on 03/21/13 Page 12 of 15
`
`judgment on an affirmative defense, where defendant bears the
`ultimate burden of proving the defense, may satisfy its burden by
`showing the absence of evidence for an essential element of the
`defense. See Soto v. William’s Truck Serv., Inc., Civ. A. No.
`3:11-CV-3242-B, 2013 WL 487070, at *3 (N.D. Tex. Feb. 8, 2013)
`(citing F.D.I.C. v. Giammettei, 34 F.3d 51, 54 (2d Cir. 1994);
`Celotex Corp., 477 U.S. at 323-24).
`Defendants plead as an affirmative defense the bar of the
`statute of limitations, which for copyright is three years.
`17 U.S.C. § 507. “In this Circuit a copyright claim accrues ‘when
`[the party] knew or had reason to know of the injury upon which the
`claim is based.’” Jordan v. Sony BMG Music Entm’t Inc., 354 F.
`App’x 942, 945 (5th Cir. 2009) (unpublished op.) (quoting Pritchett
`v. Pound, 473 F.3d 217, 220 (5th Cir. 2006)); see also Interplan
`Architects, Inc. v. C.L. Thomas, Inc., Civ. A. No. 4:08-CV-03181,
`2010 WL 4366990, at *24 (S.D. Tex. Oct. 27, 2010) (Ellison, J.).
`Shane Hewlett stated in his declaration that he first became
`aware of the alleged infringement in December 2007 when he saw one
`of the alleged infringing houses at 13723 Vinery Street while
`driving around a neighborhood called Lakewood Oaks Estates looking
`
`their affirmative defense of “substantial similarity,” recognizing
`that this is not an affirmative defense but rather an element of
`Plaintiff’s claim on which Plaintiff bears the burden of proof.
`Document No. 63 at 7.
`
`12
`
`

`
`Case 4:10-cv-04837 Document 97 Filed in TXSD on 03/21/13 Page 13 of 15
`
`at Christmas lights displays. Plaintiff filed suit on December
`15
`3, 2010. Defendants contend that Hewlett should have known of the
`16
`injury before 2007, relying on summary judgment evidence that in
`17
`1997 Frontier was building houses in a subdivision adjacent to the
`subdivision where Plaintiff’s Plan 4210 was being used to construct
`a house on Kodes Clay Court. They contend that “Plaintiff should
`18
`have known these allegedly infringing houses were being built in
`the Terranova subdivision as far back as 1997.” Defendants
`19
`produce no evidence, however, that any of the alleged infringing
`houses was located in the Terranova subdivision, and Plaintiff
`avers that there were no infringing houses being built there.20
`Defendants’ unsupported allegation that Plaintiff “should have
`known” of the injury giving rise to its cause of action more than
`three years before filing suit--without proof of any facts--is
`insufficient to raise a genuine issue of material fact on
`their statute of limitations defense. Plaintiff’s proof is
`uncontroverted, and Plaintiff is entitled to summary judgment on
`the limitations defense.
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
` Document No. 62, ex. A ¶ 20.
` Document No. 1 (Orig. Cmplt.).
` Document No. 63 at 3-5.
` Document No. 63, ex. 17, App. 155-157.
` Document No. 63 at 4.
` Document No. 78 at 2.
`
`13
`
`

`
`Case 4:10-cv-04837 Document 97 Filed in TXSD on 03/21/13 Page 14 of 15
`
`Defendants in their Answers allege numerous other defenses
`under the caption “Affirmative Defenses.” Plaintiff also moves for
`summary judgment on some of these that actually are not
`“affirmative defenses,” upon which Defendants bear the burden to
`raise a fact issue, but are simply the converse of facts that
`Plaintiff must prove to establish its case. Apart from what has
`already been discussed, and because genuine issues of material fact
`remain for trial on the core controversy, the better course is to
`await a full development of the case at trial before ruling on
`shades or phases of Defendants’ alleged defenses. See Anderson,
`106 S. Ct. at 2513.
`
`IV. Order
`
`For the foregoing reasons, it is
`ORDERED that Defendants Frontier Custom Builders, Inc. and
`Ronald W. Bopp’s Motion to Exclude Plaintiff’s Expert Shane Hewlett
`(Document No. 55) is DENIED without prejudice to being reconsidered
`if Plaintiff does not within seven (7) days after the date of this
`Order serve on Defendants the Rule 26(a)(2)(C) disclosures required
`above at page 6; Plaintiff’s Objections to and Motion to Strike
`Portions of Declaration of John McGinty (Document No. 64) is
`GRANTED in part, as set forth above at pages 7 and 8, and is
`otherwise DENIED; and Defendants’ Objections and Motion to Strike
`
`14
`
`

`
`Case 4:10-cv-04837 Document 97 Filed in TXSD on 03/21/13 Page 15 of 15
`
`Evidence Filed with Plaintiff’s Response to Motion for Summary
`Judgment (Document No. 81) is DENIED. It is further
`ORDERED that Defendants’ Motion for Summary Judgment (Document
`No. 56) is GRANTED as to Plaintiff’s copyright infringement claim
`based on Plan 4348, Plan 4540, Plan 4721, Plan 5449, and Plan 5092.
`The motion is otherwise DENIED, and Plaintiff’s Motion for Partial
`Summary Judgment (Document No. 58) is GRANTED with regard to
`Plaintiff’s ownership of valid copyrights in Plans 4187, 4210,
`4348, 4540, 4721, 5449, and 5092, of which Plans 4187 and 4210
`remain the subject of Plaintiff’s infringement case, and is further
`GRANTED with regard to Defendants’ statute of limitations defense,
`which defense is DISMISSSED. Plaintiff’s motion is otherwise
`DENIED.
`The Clerk shall notify all parties and provide them with a
`signed copy of this Order.
`SIGNED at Houston, Texas, on this 21st day of March, 2013.
`
`
`
`____________________________________
`EWING WERLEIN, JR.
`UNITED STATES DISTRICT JUDGE
`
`15

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