D/M, which provides architectural and design services, sued
The Brook and Practical Engineers for copyright infringement, violation of the
Lanham Act, and civil conspiracy, based on the allegations that Practical
Engineers performed architectural and engineering services for The Brook and
produced a design for an assisted living facility project that was allegedly
substantially similar to the product D/M furnished to a nonparty that has the
same officers and directors as The Brook.
D/M provided a design for The Brook of Houghton Lake, the
nonparty, for a project in Houghton Lake, Michigan. Its design contained a
copyright notice and was registered.
Defendant The Brook decided to build an assisted living facility in
Cheboygan. D/M alleged that it told The
Brook that use or reuse of its work product from the Houghton Lake project was
prohibited. Though The Brook’s VP told
D/M that its design product would only be used to show the exterior appearance
of the facility, D/M alleged that Practical Engineering had access to the
copyrighted work and copied it, evidenced by the substantial similarity of the completed
project.
The court found that the complaint was deficient in pleading
actionable infringement. “Copyright
infringement lends itself readily to abusive litigation, since the high cost of
trying such a case can force a defendant who might otherwise be successful in
trial to settle in order to avoid the time and expenditure of a resource
intensive case.” Thus, greater particularity
was required to allege “plausible grounds” for relief.
Defendants argued that D/M failed to identify original
material in its architectural work, which was identified as the “overall form as
well as the arrangement and composition of spaces and elements in the design,
but does not include individual standard features.” However, defendants didn’t explain what
features might be unprotectable based on functionality, merger, or the like,
and consideration of those arguments would require the court to go outside the
pleadings.
However, the court agreed that, without a description of the
manner in which the defendants’ work infringed, it was not required to accept
bare legal conclusions of infringement/substantial similarity. D/M was allowed leave to remedy this
deficiency by providing more factual details.
The Lanham Act claim, however, was fatally flawed because of
Dastar. “[T]aking
tangible goods and reselling them as your own constitutes a Lanham Act
violation; taking the intellectual property contained in those goods and
incorporating it into your own goods does not.”
D/M fruitlessly argued that Dastar only dealt with
works in the public domain, and that whether its work product constituted “tangible
goods” was a factual question that couldn’t be decided on a motion to dismiss. The court distinguished an earlier decision
involving architectural plans where the defendant “removed” the plaintiff’s name
and seal (this seems to mean traced the plans without tracing the name and
seal; that really should’ve been barred by Dastar too
unless it counted as false advertising).
There was no allegation that defendants used D/M’s materials as their
own; instead D/M alleged that defendants copied or had access to D/M’s
materials resulting in a substantially similar design. This camouflaged copyright claim couldn’t
survive.
Defendants also argued that the civil conspiracy claim was
preempted by §301 of the Copyright Act.
The court agreed, on these alleged facts.
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