United States District Court, E.D. Missouri, Eastern Division
October 2, 2014
ROLWES COMPANY, Plaintiff,
LARRY G. BARNES, et al., Defendants.
MEMORANDUM AND ORDER
JOHN A. ROSS, District Judge.
This matter is before the Court on Defendants' Motion to Modify Preliminary Injunction (ECF No. 49) and Plaintiff Rolwes Company's Motion to Modify Preliminary Injunction Order (ECF No. 56). These matters are fully briefed and ready for disposition.
On July 25, 2014, the Court entered a Memorandum and Order (ECF No. 43), granting in part and denying in part the Plaintiffs Motion for Preliminary Injunction.The Preliminary Injunction Order prohibited Defendants "[f]rom marketing for sale, contracting to sell, or constructing any three bedroom, one story, two bath house with a design that would infringe on Plaintiffs copyrighted Rockport' architectural work."
I. Defendants' Motion to Modify
In Defendants' Motion to Modify, they seek to amend the Preliminary Injunction Order to allow Defendants to meet with customers and potential customers at the model home located at 1317 Durham Drive in Herculaneum Missouri ("1317 Durham"). Defendants contend that K.A.B. has developed plans to remove the Rockport Design's copyright protectable hallway configuration from the 1317 Durham property. See ECF No. 50-2. In response, Plaintiff argues that Defendants' proposed remodel of 1317 Durham would continue to infringe on Plaintiffs copyrighted Rockport Design because "it is a protected derivative work of the Rockport Design, and because allowing the proposed remodel would not alleviate the unfair competition and irreparable harm to Plaintiff as a result of Defendants' use of Plaintiffs Rockport Design[.]" (ECF No. 55 at 1-2).
The Court will not modify the Preliminary Injunction Order based upon plans alone. However, if Defendants modify the house at 1317 Durham according to the plans submitted, the Court will consider modifying the Preliminary Injunction Order to allow K.A.B. to utilize 1317 Durham as an office for meeting with customers and potential customers. The Court previously held that Plaintiff had presented evidence that the design feature of separate hallways for the ancillary bedrooms and the master bedrooms was unique to the Rockport Design. The Court, however, held that Plaintiff had not provided evidence that any other feature was unique to the Rockport Design. Thus, the Court found that the only protectable element of the Rockport Design was the dual hallway configuration. See Feist Publications, Inc. v. Rural Tel. Serv. Co. , 499 U.S. 340, 348 (1991)("The mere fact that a work is copyrighted does not mean that every element of the work may be protected. Originality remains the sine qua non of copyright; accordingly, copyright protection may extend only to those components of a work that are original to the author."). The Court believes that if Defendants remodel 1317 Durham according to the plans provided, then the building will not infringe on Plaintiffs copyright in the Rockport Design. For the same reason, the Court also holds that the revised 1317 Durham plan would not constitute an unauthorized derivative work because the house would no longer contain protectable interests. See Gates Rubber Co. v. Bando Chem. Indus., Ltd. , 9 F.3d 823, 833 (10th Cir. 1993)("in order to impose liability for copyright infringement, the court must find that the defendant copied protectable elements of the plaintiffs program and that those protectable elements comprise a substantial part of the plaintiffs program when it is considered as a whole"). The Court denies Defendants' Motion, in part, as it relates to 1317 Durham, but it will reconsider this position after Defendants complete construction on that site.
II. Plaintiff's Motion to Modify
Plaintiff seeks to modify the Preliminary Injunction Order to (1) include a general directive that Defendants not infringe on Plaintiffs copyright in the Rockport architectural work; (2) enjoin Defendants from creating and using derivative works of the Rockport Design; and (3) enjoin Defendants from continuing construction of the Rockport Design-based homes now under construction on Lot 628 and Lot 639 in the Providence Park residential development. Plaintiff wants the Court to provide a "general prohibition against infringement and a prohibition against creating or using derivative works[.]" (ECF No. 57 at 3) see also ECF No. 57 at 4 ("Plaintiff... requests that this Court modify the Preliminary Injunction Order to include a general directive that Defendants not infringe upon Plaintiffs copyright in the Rockport Design."). Plaintiff asserts that "[i]t would be impossible to create a list of every potential home design that could infringe upon Rolwes Company's copyrighted Rockport Design." (ECF No. 57 at 5). Plaintiff again argues that the placement of the stairs, as well as the kitchen access and layout, are unique features. Plaintiff asserts that Lot 628 and Lot 639 are derivative works because Defendants merely "tacked an additional bedroom onto an existing [copyrighted] design[.]" (ECF No. 57 at 10-11).
In response, Defendants note that Plaintiff previously argued at the hearing on the Motion for Preliminary Injunction that the stairs and kitchen design were not protectable features. (ECF No. 61 at 1-2). Defendants also point out that the architectural plans for Lots 628 and 639, which were under contract at the time this litigation was initiated, do not contain any prohibited elements under the Preliminary Injunction Order. The plans for Lots 628 and 639 show a fourth bedroom and, instead of dual hallways, the master bedroom is accessible from the great room. (ECF No. 61 at 5; ECF No. 56-4). Defendants emphasize that the construction on Lot 628 is nearly complete and the customers are scheduled to close on the home, and Lot 639 is fully framed. (ECF No. 61 at 5).
In the Preliminary Injunction Order, the Court previously outlined Plaintiffs protectable interest in the Rockport Design based upon the facts and evidence that had been presented by the parties. The Court found that the dual hallway was the only unique feature of the Rockport Design. The Court also considered Plaintiffs argument regarding the placement of the stairs and the layout out of the kitchen, but the Court did not find the evidence supported copyright protection for those areas. Plaintiff essentially asks the Court to reconsider its prior order, which was based upon the evidence presented at the hearing. The Court finds no reasons to amend its order based upon Plaintiffs argument, which was largely duplicative of its prior argument. In addition, the Court believes that the language proposed by Plaintiff is overbroad and ambiguous and provides no guidance to Defendants, or any other party, regarding what would be considered infringing conduct. The Court denies Plaintiffs Motion.
IT IS HEREBY ORDERED that Defendants' Motion to Modify Preliminary Injunction  is GRANTED, in part, and DENIED, in part. The Preliminary Injunction Order is amended to change "1015 Stonewick, Arnold, Missouri" and "1024 Stonewick Court, Arnold Missouri" to the correct addresses of "1005 Stonewick Court, Herculaneum, Missouri" and "1024 Stonewick Court, Herculaneum, Missouri". Defendants' Motion to Modify Preliminary Injunction is denied, without prejudice, in all other respects.
IT IS HEREBY ORDERED that Plaintiff Rolwes Company's Motion to Modify Preliminary Injunction Order  is DENIED.