Gunther v. Town of Ogden

UNITED STATES DISTRICT COURT

WESTERN DISTRICT OF NEW YORK

__________________________________________

FREDERICK GUNTHER

and NEW YORK ELECTRICAL

INSPECTION AGENCY,

Plaintiffs,

v.

DECISION AND ORDER

TOWN OF OGDEN, GAY LENHARD, 6:19-CV-06199-MAT

THOMAS COLE, MALCOLM PERRY,

THOMAS USCHOLD, DAVID FEENEY,

and PATRICK SMITH,

Defendants.

__________________________________________

INTRODUCTION

Plaintiffs Frederick Gunther and New York Electrical

Inspection Agency (hereinafter, “Plaintiffs”) bring this action

against defendants Town of Ogden, Gay Lenhard, Thomas Cole, Malcolm

Perry, Thomas Uschold, David Feeney, and Patrick Smith

(collectively, the “Defendants”), alleging violations of the

Copyright Act, 17 U.S.C. § 101, et seq. Docket No. 1.

Presently before the Court is Defendants’ motion to dismiss

Plaintiffs’ complaint for failure to state a claim upon which

relief can be granted, pursuant to Rule 12(b)(6) of the Federal

Rules of Civil Procedure. Docket No. 8. For the reasons set forth

below, Defendants’ motion is denied.

BACKGROUND

Unless otherwise noted, the following facts are taken from

Plaintiffs’ complaint (Docket No. 1). Mr. Gunther is the President

and Chief Electrical Inspector of New York Electrical Inspection

Agency (“NYEIA”). Docket No. 1 at ¶ 1. Plaintiffs perform

residential and commercial electrical inspections, with their

principal place of business in Rochester, New York. Id. at ¶ 2.

Mr. Gunther is a licensed New York State home inspector and

certified New York State home inspector trainer, as well as a

New York State certified Code Enforcement Officer and certified

Electrical Inspector from the International Association of

Electrical Inspectors. Id. at ¶¶ 9, 10. NYEIA is approved to

conduct residential and commercial electrical inspections in

New York State. Id. at ¶ 11.

Over the past eight years, NYEIA has applied for authorization

to conduct residential electrical inspections in the Town of Ogden,

New York. Id. at ¶ 12. Each application was denied via letter by

defendant Smith, the Town of Ogden Building Inspector/Code

Enforcement Officer. Id. at ¶ 13. Defendant Smith’s denial of

NYEIA’s application was approved by resolution of the Town Board

and its members, which includes defendants Cole, Perry, Uschold,

and Feeney. Id. at ¶¶ 5-8, 14. The most recent denial letter is

dated January 8, 2019. Id. at ¶ 14. As a result of these repeated

denials, Plaintiffs filed an Article 78 proceeding in Monroe County

Supreme Court, on the ground that the denials were “without sound

basis in reason, arbitrary and capricious and an abuse of

discretion.” Id. at ¶ 16.

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In connection with their operations, Plaintiffs utilized the

2014 National Electrical Code (“NEC”). Id. at ¶ 17. In an effort

to simplify the guidelines contained in the NEC, Plaintiffs created

“Helpful Electrical Requirements Sheets” (hereinafter, the “summary

sheets”), which are summaries of NEC electrical wiring requirements

for storable swimming pools, as well as for hot tubs and spas. Id.

at ¶ 18. Plaintiffs’ summary sheets “were drafted in plain

language for ease of understanding based on Gunther’s own personal

knowledge and 20-plus years in the electrical industry.” Id. at

¶ 20. Plaintiffs hold a valid copyright in the summary sheets,

which was registered with the United States Copyright Office on

November 7, 2016, Registration Number TXu 2-032-173. Id. at ¶ 21.

Copies of the relevant NEC Guidelines, Plaintiffs’ summary sheets,

and the Certificate of Registration of the United States Copyright

Office are attached to the complaint. Id. at ¶¶ 18, 19, 21.

Defendant Town of Ogden, through its Supervisor defendant

Lenhard, defendant Smith, and the Town Board, presents on its

website this same information “in substantially the same manner as

Plaintiffs’ Sheets.” Id. at ¶ 22. Copies of the “Town of Ogden

Electrical Requirements for Storable Swimming Pools,” and “Town of

Ogden Electrical Requirements for Hot Tubs & Spas,” are also

attached to the complaint. Id.

On September 22, 2017, Mr. Gunther notified Defendants, via

letter, that the Town of Ogden was improperly publishing

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Plaintiffs’ summary sheets on its website, in violation of

Plaintiffs’ copyright. Id. at ¶ 23. In response, the Town of

Ogden removed Plaintiffs’ name and address from the bottom of the

summary sheets, but continued to publish the summary sheets on its

website. Id. at ¶ 24. On October 13, 2017, Plaintiffs again,

through counsel, notified defendant Lenhard that the Town of Ogden

was improperly utilizing Plaintiffs’ summary sheets without their

permission, and demanded their removal from the Town’s website.

Id. at ¶ 25. Defendant Town of Ogden, through counsel, responded

on October 17, 2017, stating that the summary sheets had initially

been removed, but that the Town webmaster had inadvertently

reinstalled them. Id. at ¶ 26. Counsel also stated that the Town

of Ogden would remove the summary sheets from its website, and

would not use the summary sheets in the future. Id. Copies of the

above-mentioned correspondence are attached to the complaint. See

Docket Nos. 1-6, 1-7, and 1-8. However, the Town of Ogden did not

remove the summary sheets from its website. Docket No. 1 at ¶ 27.

On January 31, 2019, Plaintiffs again, through counsel,

notified the Town of Ogden that it was improperly utilizing

Plaintiffs’ summary sheets without their permission, demanded

removal of the sheets from its website, and demanded that the Town

of Ogden pay damages for its willful copyright infringement. Id.

at ¶ 28. The Town of Ogden responded through its attorney on

February 4, 2019, noting that the information on its website was

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taken directly from the 2014 NEC. Id. at ¶ 29. Enclosed with the

Town’s response were documents counsel thought contained the

relevant provisions of the 2014 NEC; however, “the documents

provided which were the same as those that appeared on Defendant

Town’s website were, in fact, Plaintiffs’ copyrighted Sheets, with

references and contact information of the Plaintiffs removed.” Id.

at ¶ 30. Copies of the above-mentioned correspondence are attached

to the complaint. See Docket Nos. 1-9 and 1-10.

Plaintiffs further allege that “the materials published on

Defendant’s websites are verbatim to Plaintiffs’ Sheets, minus the

diagrams and reference to Plaintiff, and are Plaintiffs’

copyrighted summaries of the 2014 NEC,” and “[t]o date, Plaintiffs’

Sheets are still published on Defendant Town of Ogden’s website.”

Docket No. 1 at ¶¶ 31, 32.

PROCEDURAL HISTORY

Plaintiffs Frederick Gunther and New York Electrical

Inspection Agency filed their complaint on March 18, 2019, alleging

violations of the Copyright Act, 17 U.S.C. § 101, et seq. against

defendants Town of Ogden, Gay Lenhard, Thomas Cole, Malcolm Perry,

Thomas Uschold, David Feeney, and Patrick Smith. Docket No. 1. On

June 5, 2019, Defendants filed a motion to dismiss the complaint.

Docket No. 8. Plaintiffs filed their response on July 9, 2019.

Docket Nos. 12, 13.

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DISCUSSION

I. Standard

To withstand a Rule 12(b)(6) motion to dismiss, the complaint

must plead facts sufficient “to state a claim for relief that is

plausible on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544,

570 (2007). “A claim has facial plausibility when the plaintiff

pleads factual content that allows the court to draw the reasonable

inference that the defendant is liable for the misconduct alleged.”

Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). “The plausibility

standard is not akin to a ‘probability requirement,’ but it asks

for more than a sheer possibility that a defendant has acted

unlawfully.” Id. Thus, “[w]here a complaint pleads facts that are

merely consistent with a defendant’s liability, it stops short of

the line between possibility and plausibility of entitlement to

relief.” Id. (internal citations and quotation marks omitted).

Determining whether a complaint meets the plausibility standard is

“context-specific” and requires that the court “draw on its

judicial experience and common sense.” Id. at 679.

II. Plaintiffs’ Have Stated a Claim for Copyright Infringement.

“A properly plead copyright infringement claim must allege

1) which specific original works are the subject of the copyright

claim, 2) that plaintiff owns the copyrights in those works, 3)

that the copyrights have been registered in accordance with the

statute, and 4) by what acts during what time the defendant

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infringed the copyright.” Kelly v. L.L. Cool J., 145 F.R.D. 32, 36

(S.D.N.Y. 1992), aff’d, 23 F.3d 398 (2d Cir. 1994); MacDonald v. K-

2 Industries, Inc., 108 F. Supp. 3d 135, 139 (W.D.N.Y. 2015)

(same); see also Lumetrics, Inc. v. Blalock, 23 F. Supp. 3d 138,

142 (W.D.N.Y. 2014) (“A plaintiff must allege the following

elements in order to state a valid claim for copyright

infringement: ‘(1) ownership of a valid copyright, and (2) copying

of constituent elements of the work that are original.’”) (quoting

Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S.

340, 361 (1991)). “There is no heightened pleading requirement

applied to copyright infringement claims . . . a claim of copyright

infringement need only meet the pleading requirements of Rule 8 of

the Federal Rules of Civil Procedure.” Levine v. Landy, 860 F.

Supp. 2d 184, 191 (N.D.N.Y. 2012) (internal citation omitted); see

also McDonald, 108 F. Supp. 3d at 139 (“In short, a copyright

plaintiff need not plead detailed evidence, but she must allege

facts — not just legal conclusions — demonstrating the existence of

a facially plausible claim, i.e., that she owns one or more valid

copyrights that have been infringed by defendants).

Plaintiffs have adequately plead a copyright infringement

claim. The complaint contains allegations identifying the specific

original works, i.e., the summary sheets (see Docket No. 1 at

¶¶ 18-20); Plaintiffs’ ownership of copyrights in the summary

sheets (id. at ¶ 21); that the copyrights are registered (id.); and

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how and when Defendants’ allegedly infringed the copyright (id. at

¶¶ 22-32). The summary sheets, Certificate of Registration, and

Defendants’ alleged infringing works are attached to the complaint.

See Docket Nos. 1-2, 1-4, 1-5.

Defendants argue that “Plaintiffs’ allegations of an essential

element of copyright infringement - that the entries found on the

Town of Ogden’s website were substantially similar to the

protectable elements of Plaintiffs’ ‘Sheets’ - is simply not

supported.” Docket No. 8-1 at 9. Specifically, Defendants contend

that Plaintiffs’ summary sheets contain schematics and diagrams,

while the documents on the Town of Ogden website do not contain

this information. Id. at 10. Defendants also state that the

summary sheets and the Town documents are in a different typeface

and list the Town’s contact information. Id. However, Defendants’

argument ignores the allegation that the text contained in the

summary sheets and the text contained in the alleged infringing

works is identical.

“Substantial similarity does not require literally identical

copying of every detail.” Rogers v. Koons, 960 F.2d 301, 307

(2d Cir. 1992). Rather, “[s]uch similarity is determined by the

ordinary observer test: the inquiry is ‘whether an average lay

observer would recognize the alleged copy as having been

appropriated from the copyrighted work.’ Or, stated another way,

whether ‘the ordinary observer, unless he set out to detect the

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disparities, would be disposed to overlook them, and regard their

aesthetic appeal as the same.’” Id. at 307-08 (quoting Ideal Toy

Corp. v. Fab–Lu Ltd., 360 F.2d 1021, 1022 (2d Cir. 1966) and Peter

Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489

(2d Cir. 1960)).

However, where certain aspects of a copyrighted work are taken

directly from the public domain, the court applies the “more

discerning observer test.” This test “requires ‘substantial

similarity between those elements, and only those elements, that

provide copyrightability to the allegedly infringed work.’ That

is, ‘where the allegedly infringed work contains both protectible

and unprotectible elements, the test must be more discerning,

excluding the unprotectible elements from consideration.’” Logical

Operations Inc. v. 30 Bird Media, LLC, 354 F. Supp. 3d 286, 294

(W.D.N.Y. 2018) (quoting Belair v. MGA Entertainment, Inc., 503 F.

App’x 65, 66 (2d Cir. 2012) and Lynx Ventures, LLC v. Miller, 45 F.

App’x 68, 69 (2d Cir. 2002)). “However, this ‘more discerning’

ordinary observer test must be applied in conjunction with the

‘total concept and feel’ test, so as not to deny protection to

works that have combined unoriginal elements in a unique and

copyrightable fashion[.]” Shine v. Childs, 382 F. Supp. 2d 602,

615 (S.D.N.Y. 2005); see also Logical Operations Inc., 354 F. Supp.

3d at 295 (“Any analysis of substantial similarity must therefore

account for the fact that copyright infringement may result not

only through literal copying of a portion of [a work], but also by

parroting properties that are apparent only when numerous aesthetic

decisions embodied in the plaintiff’s work of art — the excerpting,

modifying, and arranging of public domain compositions, if any,

together with the development and representation of wholly new

motifs and the use of texture and color, etc. — are considered in

relation to one another.”) (internal quotations and citation

omitted) (alteration in original). “[W]ith all of the above

concepts in mind, the court’s substantial similarity analysis

ultimately should be guided by ‘common sense.’” Shine, 382 F. Supp.

2d at 615 (quoting Boisson v. Banian, Ltd., 273 F.3d 262, 273

(2d Cir. 2001)).

As noted above, both the summary sheets and the alleged

infringing works are attached to Plaintiffs’ complaint. See Docket

No. 1-2 at 5-6; Docket No. 1-5 at 2-3. Plaintiffs’ summary sheets

are entitled “Storable Swimming Pools, Electrical Wiring

Requirements,” and “Hot Tubs & Spas - Electrical Wiring

Requirements.” Docket No. 1-2 at 5-6. Defendants’ works are

entitled “Town of Ogden, Electrical Requirements for Storable

Swimming Pools,” and “Town of Ogden, Electrical Requirements for

Hot Tubs & Spas.” Docket No. 1-5 at 2-3.

For the works addressing the electrical requirements for

storable swimming pools, the substantive text of each work, i.e.,

the “definition” of a storable pool, as well as the information

contained in items one through four of each document, are mostly

identical. Compare Docket No. 1-2 at 5 with Docket No. 1-5 at 2.

In other words, as Plaintiffs allege in their complaint, it appears

that Defendants simply copied the text from Plaintiffs’ summary

sheet, made some adjustments to the font, and placed it into their

own document. The layout of the documents into subparts “1"

through “4" is also the same. The Court notes that information

contained in the header and footer of each document, i.e., the

wording of the titles and contact information, is different.

Defendants’ work also contains instructions for submitting an

application for a storable pool, while Plaintiffs’ summary sheet

contains a diagram.

For the works addressing the electrical requirements for hot

tubs and spas, the substantive text of each work, i.e., the

information contained in items one through four of each document,

is mostly identical. Compare Docket No. 1-2 at 6 with Docket

No. 1-5 at 3. Again, as Plaintiffs allege in their complaint, it

appears that Defendants simply copied the text from Plaintiffs’

summary sheet, made some adjustments to the font, and placed it

into their own document. The layout of the documents into subparts

“1"through “4" is also the same. The Court notes that information

contained in the header and footer of each document, i.e., the

wording of the titles and the contact information, is different.

Defendants’ work also does not define the term “spa or hot tub,” as

Plaintiffs’ summary sheet does, and it also contains instructions

for submitting an application for a hot tub or spa. Plaintiffs’

summary sheet also contains a diagram.

Defendants appear to rely on the differences between the

summary sheets and their own documents as defeating any claim of

substantial similarity. However, “no plagiarist can excuse the

wrong by showing how much of his work he did not pirate.” Sheldon

v. Metro–Goldwyn Pictures Corp., 81 F.2d 49, 56 (2d Cir. 1936).

“Thus, where substantial similarity is found, small changes here

and there made by the copier are unavailing. ‘It is only where the

points of dissimilarity exceed those that are similar and those

similar are — when compared to the original work — of small import

quantitatively or qualitatively that a finding of no infringement

is appropriate.’” LEGO A/S v. Best-Lock Construction Toys, Inc.,

No. 3:11-cv-01586(CSH), 2019 WL 3387330, at *22 (D. Conn. July 25,

2019) (quoting Rodgers v. Koons, 960 F.2d at 308). Plaintiffs

allege that they created the summary sheets based on information

contained in the NEC guidelines, as well as their personal

knowledge and experience. Docket No. 1 at ¶¶ 17-20. Although

Defendants did not copy every aspect of Plaintiffs’ summary sheets,

Plaintiffs allege that Defendants did copy the portion of the

sheets meant to simplify the electrical wiring requirements for

storable swimming pools, hot tubs, and spas. See id. at ¶¶ 18, 20,

22, 24, 31.

Based on the materials submitted by the parties, the Court

will not decide, at this stage of the litigation, whether

Plaintiffs’ have established copyright infringement. See Peter F.

Gaito Architecture, LLC v. Simone Development Corp., 602 F.3d 57,

63 (2d Cir. 2010) (“because the question of substantial similarity

typically presents an extremely close question of fact . . .

questions of non-infringement have traditionally been reserved for

the trier of fact.”) (citation omitted); see also Hoehling v.

Universal City Studios, Inc., 618 F.2d 972, 977 (2d Cir. 1980)

(“summary judgment has traditionally been frowned upon in copyright

litigation.”). However, Plaintiffs have adequately alleged

substantial similarity. Plaintiffs allege that “[d]espite the fact

that there are countless ways to organize and express information

contained in the 2014 NEC, Defendant, Town of Ogden, through its

Supervisor, Town Board and Building Inspector/Code Enforcement

Officer, presents the information on Defendant Town’s website in

substantially the same manner as Plaintiffs’ Sheets,” and that the

“Town of Ogden . . . only . . . remove[d] Plaintiffs’ name and

address from the bottom of the Sheets and continued to publish

Plaintiffs’ copyrighted Sheets on its website.” Docket No. 1 at

¶¶ 22, 24. Plaintiffs further allege that “[u]pon review, the

materials published on Defendant’s websites are verbatim to

Plaintiffs’ Sheets, minus the diagrams and reference to Plaintiff,

and are Plaintiffs’ copyrighted summaries of the 2014 NEC.” Id. at

¶ 31. Taking the allegations in the complaint as true, as the

Court is required to do on a motion to dismiss, Plaintiffs have

adequately alleged substantial similarity between the summary

sheets and the materials posted on Defendants’ website.

Accordingly, Defendants’ motion to dismiss on this ground is

denied.

Defendants further contend that Plaintiffs’ summary sheets

were “culled, entirely, from the 2014 NEC,” and that “there is

nothing ‘protectable’ in Plaintiffs’ actions of gathering

information from the NEC, creating a document with such information

and placing its name on the top.” Id. at 10. Contrary to

Defendants’ contention, Plaintiffs’ complaint contains allegations

indicating that the summary sheets were not “culled entirely” from

the NEC. Specifically, the complaint alleges that the summary

sheets “were drafted in plain language for ease of understanding

based on Gunther’s own personal knowledge and 20-plus years in the

electrical industry.” Docket No. 1 at ¶ 20.1 Plaintiffs also

allege that they hold a valid registered copyright in the summary

sheets, and a copy of the Certificate of Registration issued by the

United States Copyright Office for Plaintiff’s “Helpful Electrical

Requirement Sheets” is attached to the complaint. See Docket No. 1

at ¶ 21, Docket No. 1-4. These two allegations speak to the

alleged original, protectable nature of Plaintiffs’ summary sheets.

Indeed, Defendants’ argument ignores that a certificate of

copyright registration “raises a rebuttable presumption that the

work in question is copyrightable, as well as original.” Van Cleef

& Arpels Logistics, S.A. v. Jewelry, 547 F. Supp. 2d 356, 362

(S.D.N.Y. 2008); see also Nicholls v. Tufenkian Import/Export

Ventures, Inc., 367 F. Supp. 2d 514, 520 (S.D.N.Y. 2005)

(“Registration creates a presumption not only that a copyright is

valid, but also that the work is original.”).

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Attached to Plaintiffs’ response papers is an Affirmation by Mr. Gunther,

which also contains information relevant to the original nature of the summary

sheets. See Docket No. 12 at ¶¶ 15, 16 (Gunther “carefully prepared the Sheets

in plain language for ease of understanding so that they could be effectively

utilized by readers, laypeople and professionals alike,” and “[t]he Sheets

consist of [Gunther’s] independent collection and interpretation of the relevant

NEC provisions, [his] independent selection and inclusion of what [he] believed

was pertinent information from the NEC provisions, and [his] independent

Defendants’ own belief that “[c]learly, Plaintiffs cannot

claim copyright protection for the information, requirements,

standards, and recommendations contained in the NEC” (see Docket

No. 8-1 at 10), is not sufficient to rebut this presumption of

validity. Plaintiffs do not claim copyright protection in the

information contained in the NEC; rather, they claim protection in

the summary sheets, which is a compilation of information from the

NEC, as well as Plaintiffs’ own knowledge and experience. Taking

the allegations contained in the complaint as true, as the Court is

required to do on a motion to dismiss, Plaintiffs have adequately

alleged that their summary sheets are protectable under the

Copyright Act.

CONCLUSION

For the foregoing reasons, Defendants’ motion to dismiss for

failure to state a claim (Docket No. 8) is denied. Defendants are

directed to file an answer to the complaint within twenty days of

the date of this Decision and Order.

ALL OF THE ABOVE IS SO ORDERED.

S/Michael A. Telesca

MICHAEL A. TELESCA

United States District Judge

Dated: November 19, 2019

Rochester, New York