Opinion
Case No. 2:02CV923
October 27, 2003
Mr. Thomas J. Rossa, Esq., HOLME ROBERTS OWEN LLP, SALT LAKE CITY, UT
Mr. Lynn G. Foster, Esq., SALT LAKE CITY, UT
Mr. J. Angus Edwards, Esq., JONES WALDO HOLBROOK MCDONOUGH, SALT LAKE CITY, UT
ORDER
This matter is before the court on Defendants Architectural Concepts, Inc. and Claron Perry's ("ACI/Perry Defendants" or "Defendants") motions (1) to enforce an alleged settlement agreement between ACI/Perry and TGS; (2) to grant corporate immunity to Perry; (3) to declare TGS's causes of action to be barred by the statute of limitations; (4) to declare TGS's causes of action to be precluded by estoppel; (5) to dismiss with prejudice the unfair competition cause of action as to ACI and Perry; (6) to disqualify Thomas Rossa and the law firms with which he has been associated pursuant to the Attorney Advocate Rule; (7) to stay discovery pending resolution of these motions; (8) to give no weight to the benefit of TGS of certain portions of the affidavit of Wendell J. Lunt and corresponding portions of and attachments to TGS's memorandum in opposition to the motions of the ACI/Perry Defendants; (9) to dismiss for lack of subject matter jurisdiction; (10) for summary judgment as to copyright infringement; and (11) to strike or disregard portions of the Second Declaration of Wendell J. Lunt. Plaintiff Techni-Graphic Services, Inc. ("TGS") has also filed a motion to compel responses to interrogatories and document requests and a Cross-Motion for Summary Judgment as to copyright ownership and the affirmative defenses of copyright misuse and fraud on the Copyright Office. A hearing on the motions was held on October 7, 2003. At the hearing, Defendants were represented by Lynn G, Foster and Plaintiff was represented by Thomas J. Rossa and Catherine L. Brabson. The parties acknowledged that they had resolved a motion by TGS to compel responses to interrogatories and document requests. Therefore, that motion is moot. The court took the remaining matters under advisement. The court has considered carefully the memoranda and other materials submitted by the parties, as well as law and facts relating to the motions. Now being fully advised, the court renders the following Memorandum Decision and Order.
BACKGROUND
Plaintiff Techni-Graphic Services, Inc. ("TGS") has asserted copyright infringement, unfair competition, and false advertising claims against Defendants Majestic Homes, Inc., David Larsen, Architectural Concepts, Inc., and Claron Perry (collectively "Defendants") for infringing TGS's copyrights in architectural plans for single family homes.
TGS has registered copyrights in three architectural plans for single family homes: TGS Plan 2196, TGS Plan 1885, and TGS Plan 1725. TGS Plans 1885 and 1725 are derivative of TGS Plan 2196. TGS markets and distributes a "Residential Designs" booklet to potential customers in the Salt Lake Valley, and Utah and Davis Counties. The booklet contains abbreviated architectural plans that show the layout of floor plans, rooms, and dimensions including TGS Plans 1885 and 1725. In the summer of 1999, TGS discovered that ACI was selling an architectural plan designated as ACI Plan 1801. TGS alleges that ACI Plan 1801 is substantially similar to both TGS Plans 1885 and 1725. Thus, TGS, through counsel, sent two letters dated August 11, 1999 and August 30, 1999 to Mr. Perry, President of ACI, demanding that ACI cease offering ACI Plan 1801 or consequently TGS would take legal action to enforce its intellectual property rights. On September 23, 1999, ACI, through counsel, responded to TGS's allegations and claimed that ACI independently generated Plan 1801 through sketches provided by their client. ACI stated that they withdrew Plan 1801 from the market for economical reasons and would cease selling it to any customers. However, ACI claimed that there was no substantial similarity between TGS Plans 1885 and 1725, and ACI Plan 1801 in that there are a number of differences between the plans. On October 7, 1999, TGS responded to
According to the ACI/Perry Defendants, Plan 1801 was originally designated as Plan 1760. Upon recalculation of the square footage of Plan 1760 it was found to be 1801 square feet, not 1760 as originally thought. Thus, ACI Plan 1760 was redesignated as Plan 1801, Additionally, in response to ACI/Perry Defendants requests for admission, Defendant Majestic Homes stated that they designated ACI Plan 1760 as Majestic Plan 1860. Thus, Plans 1760, 1801, and 1860 appear to be the same plans.
TGS was represented by Paul C. Oestreich and Thomas Rossa of Trask Britt Rossa during this period of time.
In spring 2001, Wendell J. Lunt ("Mr. Lunt"), President of TGS, was contacted by a builder wanting to purchase a particular architectural plan that he believed to be from TGS because of his previous experience with TGS Plan 1885. The builder faxed Mr. Lunt the sales brochure of the plan that he wished to purchase, The plan was marketed by Majestic Homes and designated as Plan 1560. Shortly thereafter, Mr. Lunt discovered that Majestic Homes had obtained the plan from ACL
ACI/Perry Defendants state that in response to their requests for admission, Defendants Majestic Homes and David Larsen admit that neither ACI nor Perry sold to them house plans identified as Plan 1560 but that Majestic built homes using a plan designated by ACI as "Main Floor Plan 1500 Sq Ft" and that Plan 1560 was a plan designation of Majestic Homes. Thus, it appears that Plans 1560 and 1500 are the same plans.
On May 14, 2001, TGS, through counsel, sent a letter to Mr. Perry alleging that ACI Plan 1500 infringes on the copyrights of TGS Plans 1885 and 1725 in that ACI Plans 1801 and 1500 are nearly identical On June 1, 2001, counsel for ACI responded to TGS's letter and requested information as to how aspects of TGS Plans 1885 and 1725 are unique in their design. TGS's counsel responded on June 14, 2001 and stated that TGS Plans 1885 and 1725 and ACI Plans 1801 and 1500 are nearly identical with regard to the dimensions and placement of windows, closets, bathroom fixtures, kitchen elements, fireplace, and so on. On June 19, 2001, ACI's counsel replied asserting that TGS's letter of June 14 did not address many of the requests made in ACI's June 1 letter. In response, TGS's counsel stated in an August 3, 2001 letter that all information requested had been provided and that TGS would take appropriate legal action if ACI did not respond to TGS's initial May 14, 2001 demand letter. ACI did not respond, and TGS filed their complaint against Defendants on August 13, 2002.
TGS was (and currently is) represented by Thomas J. Rossa, Catherine L. Brabson, and Christine T. Greenwood of Holme Roberts Owen.
During the course of this litigation, on July 16, 2003, TGS filed an Affidavit by Lunt that included as an exhibit a written assignment of the plans' copyrights from Lunt to TGS, Although the assignment itself is undated, TGS asserts that this written assignment confirms an oral assignment made at the time of TGS' incorporation-July 1, 1993.
DISCUSSION
I. Statute of Limitations
ACI/Perry Defendants argue that TGS's copyright cause of action is barred by the statute of limitations under 17 U.S.C, § 507(b), which provides that "[n]o civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued." ACI/Perry Defendants argue that the cause of action accrued prior to 1999 because AC1 Plan 1760 was last sold before 1995 and ACI Plan 1801 was last sold before 1999, TGS argues that its copyright claims against ACI/Perry Defendants are not barred by the three-year statute of limitations because the statute of limitations was tolled on September 23, 1999 when ACI/Perry Defendants misled TGS into believing that they would cease selling infringing plans including ACI Plan 1801/1760 and the statute of limitations should not have started to run until TGS discovered additional violations in the spring of 2001,
The statute of limitations was not tolled by the September 23, 1999 letter in which ACI/Perry Defendants stated they would stop selling ACI Plan 1801 for economic reasons alone. ACI/Perry Defendants only agreed to discontinue the sale of ACI Plan 1801; therefore, Mr. Lunt's assertion that he assumed that ACI and Mr. Perry would cease selling any plans similar to ACI Plan 1801 is not sufficient to toll the statute of limitations. TGS was capable of monitoring ACI/Perry Defendants' activities to protect its intellectual property rights. With due diligence TGS could have discovered the sales of other house plans available from ACI in 1999 as easily as they were able to in 2001 and 2002. Additionally, TGS's assertion that ACI/Perry Defendants fraudulently concealed their house plans is without merit in that information regarding ACI's plans was publically available in 1999 from ACI, Majestic Homes, various construction sites, and public records of local governmental agencies where ACI submitted plans for building permits. Thus, the court concludes that the statute of limitations was not tolled.
ACI/Perry Defendants further state that TGS has only claimed infringement against ACI Plans 1760, 1560, and 1860 and that Plans 1801 and 1500 are not alleged to be an infringement. However, ACI/Perry Defendants and TGS both agree that Plans 1760 and 1801 are the same plans. Additionally, ACI/Perry Defendants state that in response to their requests for admission, Defendants Majestic Homes and David Larsen admit that neither ACI or Mr. Perry sold to them house plans identified as Plan 1560 but that Majestic built homes using a plan designated by ACI as "Main Floor Plan 1500 Sq Ft" and that Plan 1560 was a plan designation of Majestic Homes, Thus, it appears that Plans 1560 and 1500 are the same plans.
However, TGS asserts that even if the statute of limitations is not tolled, ACI/Perry Defendants committed infringing acts after that date. Specifically, TGS maintains that ACI/Perry Defendants sold infringing plans to Defendant Majestic Homes on at least three occasions after August 11, 1999. Although any infringing activities accruing prior to August 13, 1999 are outside the limitations period, "[a] party does not waive the right to sue for infringements that accrue within three years by not asserting related claims that accrued beyond three years." Hotaling v. Church of Jesus Christ of Latter-Day Saints, 118 F.3d 199, 202 (4th Cir. 1997). Each act of infringement constitutes a separate harm for which relief may be sought. Id. at 204 (citing Stone v. Williams, 970 F.2d 1043, 1049 (2d Cir. 1992)).
ACI sold at least three plans to Majestic Homes after August 13, 1999: (1) August 17, 1999, Lot 401 Ascott Downs, $300,00; (2) October 17, 1999, Lots 427-433 Ascott Downs, $4600.00; and (3) Lot 433 Ascott Downs, $300.00. In their responses to requests for admission, Defendant Majestic Homes identified these plans as ACI or Majestic Plans 1801, 1760, 1860, and 1560 but did not distinguish them individually. While ACI/Perry Defendants argue that it is unnecessary to analyze the statute of limitations as to Plans 1560 and 1860 because these plans do not exist, Defendant Majestic Homes admitted that these plans exist as ACI Plans 1500 and 1760 and were merely redesignated by Majestic Homes as Plans 1560 and 1860 respectively. Therefore, TGS may recover for these sales even if other acts of infringement occurred prior to August 12, 1999. Thus, as to any plans sold prior to August 13, 1999, this court grants ACI/Perry Defendants' motion, and as to the three above-mentioned plans, this court denies ACI/Perry Defendants' motion.
2. Settlement
ACI/Perry Defendants also assert that TGS and ACI/Perry entered into a settlement agreement in 1999 and that this agreement should be enforced by the court. ACI/Perry Defendants state that the law favors settlement even in the absence of a writing memorializing the settlement. Zions First National Bank v. Barbara Jensen Interiors, Inc., 781 P.2d 478, 479 (Utah Ct.App. 1989) (citing Mascaro v. Davis, 741 P.2d 938, 942 (Utah 1987)).
The Utah Court of Appeals has held that a settlement agreement described in letters exchanged between parties or parties' counsel may be enforced as a binding settlement agreement. See John Deere Co. v. A H Equip. Inc., 876 F.2d 880, 889 (Utah Ct.App. 1994) (holding that an enforceable settlement agreement exists through letters exchanged and subsequent conduct by the parties); Goodmansen v. Liberty Vending Systems, Inc., 866 P.2d 581, 585 (Utah Ct.App. 1993) (finding that a binding settlement agreement exists through the exchange of letters by parties' counsel). ACI/Perry Defendants assert that the exchange of letters between counsel in 1999 regarding ACI Plan 1801 constitutes a binding settlement agreement and that because TGS remained silent for three years during which time TGS did not contest the settlement, all copyright issues were addressed in mid-1999. Further, ACI/Perry Defendants maintain that because TGS did not specifically assert in their complaint that ACI Plan 1801 infringes on the copyrights TGS holds in Plans 1885 and 1725, TGS obviously regards this matter as settled. Thus, ACI/Perry Defendants conclude that the settlement agreement is binding and should be enforced.
Even though the contents of exchanged letters can constitute a settlement, the basic contract law requirements-offer, acceptance, consideration, and a meeting of the minds-are necessary for a valid agreement to exist. See Pierce v. Pierce, 994 P.2d 193, 199 (Utah 1994); Cove View Excavating Constr. Co. v. Flynn, 758 P.2d 474, 476 (Utah Ct.App. 1988).
The letters between the parties in this case do not constitute an offer, acceptance, or a meeting of the minds. ACI/Perry Defendants stated in the letters exchanged that they did not withdraw ACI Plan 1801 in exchange for TGS's forbearance of litigation but that they were simply withdrawing it for purely economical reasons. This demonstrates that ACI/Perry Defendants did not intend to enter into a settlement agreement with TGS. ACI/Perry Defendants' letter of June 1, 2001 also belies the existence of a settlement agreement:
While you state on page 2 of your letter that I "assured [TGS] that you [ACI] would withdraw Plan 1801 from the market, as well as similar plans including your Plan 1760, and would thereafter not sell the plan to any customer," I fail to find support for that assertion in my letter of 23 September 1999. Instead, my letter states: "[n]ot on the merits but for economical reasons alone, my clients have withdrawn Plan 1801 from the market and will hereafter not sell the same to any customer."
This exchange demonstrates that there was no binding settlement agreement, and thus, no settlement can be enforced. See John Deere Co., 876 P.2d at 883-84 (holding that a court may only enforce a settlement agreement where an enforceable agreement exists); Goodmansen, 866 P.2d at 584 (same); Zions First Nat 7 Bank, 781 P.2d at 479 (stating that settlement will be enforced "if the record establishes a binding agreement"). Thus, the court denies ACI/Perry Defendants' motion to enforce settlement on the ground that no binding agreement exists.
3. Laches/Estoppe
ACI/Perry Defendants also argue that the principle of estoppel negates the claims of TGS because of (1) the alleged settlement in 1999 of claims pertaining to ACI Plans 1760 and 1801, (2) the three-year delay in bringing a claim, (3) the nonexistence of ACI Plans 1560 and 1860, and (4) prejudice to ACI of withdrawing Plans 1801 and 1500 from the market, ACI/Perry Defendants argue that both laches and estoppel defeat TGS's claims in that TGS's lack of diligence in 1999 and silence thereafter left ACI/Perry Defendants with the understanding that the issue of alleged infringement had been resolved.
The Tenth Circuit has held that "[r]ather than deciding copyright cases on the issues of laches, courts should generally defer to the three-year statute of limitations, 17 U.S.C. § 507(b), provided by the Copyright Act," Jacobsen v. Deseret Book Company, 287 F.3d 936, 950 (10th Cir. 2002). As to the three plans sold within the limitations period, estoppel and/or laches do not bar TGS's claims. Moreover, any reliance on the alleged settlement agreement is unreasonable as a matter of law because ACI/Perry Defendants asserted that they withdrew ACI Plan 1801 from the market for purely economical reasons and not because of any actions taken by TGS. Therefore, TGS's cause of action is not barred by estoppel. Accordingly, ACI/Perry Defendants' motion based on laches and estoppel is denied.
4. Disqualification of Counse
ACI/Perry Defendants assert that because TGS's counsel, Thomas Rossa, is a fact witness to the 1999 settlement, he, and the firms with which he has been associated, should he disqualified under the witness-advocate rule. TGS asserts that ACI/Perry Defendants' argument that counsel for TGS must be disqualified because they are critical fact witnesses to the settlement agreement fails because (1) the letters demonstrate unequivocally that there was no settlement agreement and (2) both TGS's and ACI/Perry's counsel participated in the exchange of letters, therefore, both would have to be disqualified as critical fact witnesses.
Based on the court's rulings on the issues before the court on these motions, the court does not find a basis for disqualifying counsel for TGS. Therefore, ACI/Perry Defendants' motion to disqualify counsel for TGS is denied.
5. Corporate Immunit
Perry argues that he should be granted corporate immunity because at all times he acted as an agent for ACI, in good faith, and within the scope of his authority. Corporate officers may be held personally liable for the infringing activities of the corporation where the officer personally participated in the infringement or derives financial benefit from the infringement. See Famous Music Corp. v. Bay State Harness Horse Racing and Breeding Ass `n., Inc., 423 F. Supp. 341, 344 (D. Mass. 1976). A corporate officer may be held liable for infringement even though there was no direct involvement by the officer. Boz Scaggs Music v. KND Corp., 491 F. Supp. 908, 913 (D. Conn. 1980) ("[0]ne may be vicariously liable if he has the right and ability to supervise the infringing activity and also has a direct financial interest in such activities.").
In this case, Perry is the president and owner of ACI, and he admits that he draws and sells the architectural plans at issue. Perry has the direct participation and a financial interest potentially subjecting him to personal liability. Therefore, the court concludes that Mr. Perry is not immune from liability and his motion on this issue is denied.
6. Unfair Competitio
ACI/Perry Defendants assert that the complaint fails to state a cause of action for unfair competition against both Perry and ACL Specifically, ACI/Perry Defendants argue that because the complaint is silent as to Perry on this issue, he may be excluded from this cause of action. Further, ACI/Perry Defendants maintain that the complaint fails to state a claim for unfair competition against ACI because the federal copyright statute 17 U.S.C. § 101 et seq. relied upon by TGS in its first cause of action preempts the purported common law unfair competition claim in that "there is no material additional element of proof associated with the asserted unfair competition claim/' ACI/Perry Defendants cite two cases in which the trial court found that federal copyright law preempted state unfair competition claims for support that the federal copyright statute relied upon by TGS preempts its common law unfair competition claim. Gemel Precision Tool Inc. v. Pharma Tool Corp., 35 U.S.P.Q.2d 1019 (E.D. Pa. 1995); Fairway Constructors, Inc. v. Ahern, 970 P.2d 954 (Ariz.Ct.App. 1999).
However, TGS asserts that ACI/Perry Defendants have misunderstood its second cause of action by interpreting it as a common law claim of unfair competition when in actuality it is a federal statutory claim of false designation of origin under 15 U.S.C § 1125(a) of the Lanham Act. Because TGS has not asserted any state law claims, federal preemption is inappropriate in this case.
In addition, while ACI/Perry Defendants argue that the only alleged unfair competition ACI engaged in was the production of ACI Plans 1560, 1760, and 1860, and that Plans 1560 and 1860 do not exist and Plan 1760 (a.k.a. 1801) was the subject of the 1999 "settlement," there appears to be a genuine issue of material fact as to which plans actually infringe upon TGS's copyrights and which plans were sold after August 13, 1999. Thus, ACI/Perry Defendants' motion on this issue is denied,
7. Stay of Discover
ACI/Perry Defendants maintain that the financial burden of discovery will be excessive and beyond the capacity of ACI and Mr. Perry. Thus, ACI/Perry Defendants argue that TGS's discovery should be stayed pending the outcome of these motions. The parties have agreed on the resolution of a motion to compel and resolution of the remaining motions at this time, renders this portion of Defendants' motion moot.
8. Motion to Give No Weigh
ACI/Perry Defendants ask this court to give no weight to certain portions of the Wendell Lunt Affidavit and TGS's memorandum in opposition to ACI/Perry Defendants' motions. Although Defendants find several facts, opinions, and allegations made by Lunt and TGS to be objectionable, the court finds nothing objectionable in these submissions such that they should be given no weight in the court's determination of the pending motions. Accordingly, ACI/Perry Defendants motion is denied.
9. Motion to Dismiss for Lack of Jurisdictio
ACI/Perry Defendants argue that the present dispute is a state contract law dispute that does not arise under the Copyright Act and, thus, this court lacks jurisdiction. ACI/Perry Defendants contend that this case is based on a failure to pay under a long standing license between Majestic Homes and TGS. However, this court has jurisdiction of TGS's claims against ACI/Perry Defendant for the alleged infringement of TGS's copyrights by marketing and selling substantially similar architectural plans under 28 U.S.C. § 1338. Therefore, ACI/Perry Defendants' motion to dismiss for lack of jurisdiction is denied.
9. Copyright Infringemen
ACI/Perry Defendants move for summary judgment on TGS' copyright infringement claim on the grounds that TGS is not the owner of the 1885 plan copyright registration, the 1725 plan is not copyrightable as a derivative of the 1885 plan, Perry did not have access to the plans and did not copy the plans, and the 1885 and 1725 copyright registrations are unenforceable because of copyright misuse and fraud on the Copyright Office. TGS has filed a cross-motion for summary judgment seeking to be declared the valid owner of the copyrights in Plans 2196, 1885, and 1725, and asking the court to strike ACI/Perry Defendants' affirmative defenses of copyright misuse and fraud on the Copyright Office.
(A) Ownership of Copyright Registration
ACI/Perry Defendants argue that an undated assignment of the copyright registrations in Plans 2196 and 1885, which was attached to the Second Declaration of Lunt, signed July 16, 2003, TGS did not become the owner of the 2196 and 1885 copyrights until after this case was filed. Because TGS was not the copyright owner when the complaint in this action was filed, ACI/Perry Defendants ask this court to dismiss the case,
Under 17 U.S.C. § 204(a) a copyright assignment must be in writing. TGS contends that the written assignment from Lunt confirms the oral assignment made at the time of TGS' incorporation, July 1, 1993. In any event, under the assignment, TGS is now the owner of the copyright. To the extent that TGS may not have had valid ownership in August 2002 when the present complaint was filed, such ownership issues have been cured by the assignment. Even if this court were to find that TGS was not the rightful owner of the copyright at the time the present action was filed, the court would afford TGS the opportunity to amend the complaint to add Lunt as the proper plaintiff.
Therefore, the court concludes that given the assignment between TGS and Lunt, the issues as to ownership are not a basis for dismissing TGS's infringement claims on summary judgment. Accordingly, TGS's cross-motion for summary judgment seeking a declaration that it is the owner of the copyrights in Plans 2196, 1885, and 1725 is granted.
(B) Plan 172
ACI/Perry Defendants assert that Plan 1725 does not contain enough new material to justify a copyright as a derivative of Plan 1885. ACI/Perry Defendants claim that an observation and comparison of Plan 1885 to Plan 1725 shows that the differences between the plans are too minimal to justify a derivative copyright registration by a party not the owner of the underlying 1885 copyright registration,
The court has concluded that the assignment of the copyright registration in Plan 1885 from Lunt to TGS is sufficient, Therefore, TGS is the owner of the underlying copyright registration. Whether the differences between the two plans are substantial enough for 1725 to be copyrightable as a derivative work is a factual matter that should be decided by a jury rather than resolved on summary judgment. Moreover, even if Plan 1725 was not copyrightable, TGS would have a cause of action for infringement as a result of alleged copying of material in Plan 1725 that originally appeared in the underlying plans 1885 and 2196, Gamma-Audio Video, Inc, v. Ean-Chea, 11 F.3d 1106, 1112 (1st Cir. 1993).
(C) Access Copyin
ACI/Perry Defendants argue that Perry never saw any of TGS's plans and could not have copied them. TGS contends that there is adequate circumstantial evidence to deny summary judgment. Copying of constituent elements of the work that are original can be shown by direct evidence of by demonstrating that "(1) the defendant had access to the plaintiff's copyrighted work, and (2) defendant's work is substantially similar to the plaintiff's copyrighted material" Autoskill, Inc. v. National Educ. Support Sys. Inc., 994 F.2d 1476, 1489 (10th Cir. 1993).
In this case, TGS asserts that its marketing booklet was widely available throughout the area and the allegedly infringing plans are nearly identical to TGS's plans. Substantial similarity is a question of fact that in this case the court concludes must go to the jury. Because of the amount of similarities between the plans and TGS's argument that the plans were widely available, the court concludes there is enough in dispute for the issue of copying to go to a jury. Therefore, summary judgment on this issue would be inappropriate and ACI/Perry Defendants' motion is denied.
(D) Copyright Misuse and Fraud on the Copyright Offic
ACI/Perry Defendants move for summary judgment on TGS's copyright infringement cause of action claiming that the copyright registrations are invalid based on copyright misuse and fraud on the Copyright Office. ACI/Perry Defendants have asserted this claim as an affirmative defense, TGS has filed a cross-motion for summary judgment to strike ACI/Perry Defendants' affirmative defense of copyright misuse and fraud on the Copyright Office,
Copyright misuse requires proof of a knowing failure to advise the Copyright Office of facts which might have resulted in rejection of the application. Garner v. Sawgrass Mills Ltd. Partnership, 35 U.S.P.Q.2d 1396 (D, Minn. 1994), A claim of fraud on the Copyright Office requires a showing that (1) the registrant intentionally and deliberately omitted information from the copyright application in question; and (2) the Copyright Office probably would have rejected the application had the omitted information been disclosed.
Although TGS has cited cases finding that the copyright was not invalidated where the work was not identified as derivative because the original work was the subject of a separate copyright of the plaintiff, the court finds that there is enough of a factual dispute in this case regarding whether the subsequent plans would have been copyrightable that the affirmative defense should not be stricken, However, because of the fact that the plans in this case had the same creator, the creator was not represented by counsel when he submitted his copyright registrations, the creator claims that he was confused by the process and has subsequently sought to amend the copyright registrations, the court also concludes that there are enough factual disputes to preclude a finding by the court that copyright misuse or fraud on the copyright office occurred. Therefore, both parties' motions for summary judgment on this issue are denied. 10. Motion to Strike or Disregard Portions of the [Second] Declaration of Wendell J. Lun
As with ACI/Perry Defendants previous evidentiary objections, the court finds nothing in the Declaration of Wendell Lunt is objectionable such that the court need strike it or wholly disregard it for purposes of determining the pending motions. Therefore, ACI/Perry Defendants motion is denied.
CONCLUSION
For the reasons stated above, ACI/Perry Defendants motion (1) to enforce an alleged settlement agreement between ACI/Perry and TGS [Docket Entry 24-1] is DENIED; (2) to grant corporate immunity to Perry [Docket Entry 24-2] is DENIED; (3) to declare TGS's causes of action to be barred by the statute of limitations [Docket Entry 24-3] is GRANTED IN PART AND DENIED IN PART; (4) to declare TGS's causes of action to be precluded by estoppel [Docket Entry 24-4] is DENIED; (5) to dismiss with prejudice the unfair competition cause of action as to ACI and Perry [Docket Entry 24-5] is DENIED; (6) to disqualify Thomas Rossa and the law firms with which he has been associated pursuant to the Attorney Advocate Rule [Docket Entry 24-6] is DENIED; (7) to stay discovery pending resolution of these motions [Docket Entry 24-7] is MOOT; (8) to give no weight to certain portions of Lunt's affidavit and TGS's memorandum in opposition [Docket Entry 44-1]; (9) to dismiss for lack of subject matter jurisdiction [Docket Entry 50-1] is DENIED; (9) for summary judgment as to copyright infringement [Docket Entry 50-2] is DENIED; and (10) to strike or disregard portions of the Lunt declaration [Docket Entry 66-1] is DENIED. TGS's Cross-Motion for Summary Judgment [Docket Entry 59-1] is GRANTED as to copyright ownership and DENIED as to copyright misuse and fraud on the Copyright Office. TGS's motion to compel responses to interrogatories and documents requests [Docket Entry 53] was resolved by the parties and is MOOT.