The opinion
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF OHIO
WESTERN DIVISION
ARTISAN ESTATE HOMES, LLC, : Case No. 1:19-cv-566
:
Plaintiff, : Judge Timothy S. Black
:
vs. :
:
HENSLEY CUSTOM BUILDING :
GROUP, LLC, et al., :
:
Defendants. :
ORDER: (1) GRANTING PLAINTIFF’S MOTION FOR LEAVE TO AMEND
(Doc. 36); (2) DENYING WITHOUT PREJUDICE PLAINTIFF’S MOTION TO
DISMISS COUNTERCLAIMS (Doc. 20); and, (3) DENYING AS MOOT
PLAINTIFF’S MOTIONS TO STRIKE (Docs. 22, 23)
This civil case is before the Court on four motions filed by Plaintiff Artisan Estate
Homes, LLC (“Artisan”): Artisan’s motion to dismiss Defendant Studer Residential
Designs, Inc. (“Studer”)’s counterclaims (Doc. 20), and the parties responsive
memoranda (Docs. 24, 32); Artisan’s motion to strike Defendant Hensley Custom
Building Group, LLC (“Hensley”)’s affirmative defenses (Doc. 22), and the parties
responsive memoranda (Docs. 27, 29); Artisan’s motion to strike Studer’s affirmative
defenses (Doc. 23), and the parties responsive memoranda (Docs. 28, 23); and, Artisan’s
motion for leave to amend the complaint (Doc. 36), to which no party responded.
I. BACKGROUND
Artisan initiated the instant action on July 11, 2019, alleging copyright
infringement against Defendants Studer, Hensley, and now-dismissed Defendants
Bradford and Wendy Osborne.1 (Doc. 1) According to Artisan, the Defendants infringed
upon Artisan’s original, copyrighted architectural work, “Villa De Wendy.” (Id.)
Artisan’s certificates of registration for Villa De Wendy were attached to Artisan’s
complaint. (Doc. 1-2). In sum, Artisan contends that it provided plans for Villa De
Wendy to the Osbornes, and then the Osbornes hired Studer and Hensley to modify and
construct the Villa De Wendy plans. (Id.)
Studer and Hensley answered Artisan’s complaint. (Docs. 11, 14). Artisan then
moved to strike the affirmative defenses asserted by Studer and Hensley in their answers,
contending that the affirmative defenses were legally insufficient, redundant, and/or
procedurally improper. (Docs. 22, 23).
When answering, Studer also asserted counterclaims against Artisan for
conversion and copyright infringement. (Doc. 11). According to Studer, Studer designed
and Hensley constructed a residence for the Osbornes in 2009. (Doc. 11 at ¶ 3). Then, in
2014, the Osbornes met with Artisan about designing another home based on Studer’s
2009 plans. (Id. at ¶ 4). Artisan created two design plans for the Osbornes, but neither
plan was approved by the architectural review board of the Osborne’s neighborhood.
(Id. at ¶¶ 4–5).
Thus, in 2015, the Osbornes approached Studer and Hensley about designing and
building their new home. (Id. at ¶ 8). Studer and Hensley used the 2009 plans, combined
with a French turrets design feature the Osbornes first sent to Artisan to incorporate in the
1 The Osbornes were dismissed by Court Order (Doc. 37) following a joint motion to dismiss all
claims between Artisan and the Osbornes (Doc. 35).
Artisan design, to create their new plans for the Osbornes. (Id. at ¶ 9). The
Studer/Hensley plan was approved. (Id.) The plan included copyright protection
language, but the counterclaim does not allege a registration number or include
certificates of registration. (Id. at ¶ 11). Hensley started construction on the new home in
September 2016, and completed construction in May 2018. (Id. at ¶ 10).
Artisan moved to dismiss Studer’s conversion and copyright infringement
counterclaims, arguing the conversion claim was preempted by federal copyright law and
the copyright claim lacked plausible allegations. (Doc. 20).
A. Motion for Leave to Amend
The Court first resolves Artisan’s motion for leave to amend. (Doc. 36). Artisan
seeks leave to amend its complaint to add additional defendants and two additional
claims which Artisan contends will allow it to pursue indirect and vicarious theories of
liability. (Doc. 36 at ¶¶ 2, 5). The additional defendants Artisan seeks to add are
officers, directors, and/or owners of Defendants Studer and Hensley. (Id. at ¶ 3). No
party responded to the motion for leave to amend.
The Federal Rules of Civil Procedural provide that: “a party may amend its
pleading only with the opposing party’s written consent or the court’s leave. The court
should freely give leave when justice so requires.” Fed. R. Civ. P. 15(a)(2). Moreover,
Local Rule 7.2 provides that “[f]ailure to file a memorandum in opposition may result in
the granting of any motion that would not result directly in entry of final judgment or an
award of attorney fees.”
Pursuant to these rules and considering that no party has responded in opposition,
Plaintiff’s motion for leave to amend the complaint (Doc. 36) is GRANTED.
B. Other Pending Motions
The Court next resolves the remaining motions pending. (Docs. 20, 22, 23).
Because Artisan will be filing an amended complaint – an amended complaint which will
require new responses from the Defendants – Artisan’s motions to strike the affirmative
defenses of Defendant Studer and Hensley (Docs. 22 and 23) are DENIED as moot.
The Court last resolves Artisan’s motion to dismiss Studer’s counterclaims (Doc.
20). Artisan’s motion to dismiss raises various issues with Studer’s counterclaims,
including some deficiencies that may be curable with an amendment. For example,
Artisan argues that Studer fails to provide allegations – such as a copyright registration
number or a certificate of registration – that plausibly demonstrate that the copyright
Studer alleges Artisan infringed upon was a valid copyright at the time Studer asserted its
counterclaim. (Doc. 20 at 6). To move forward on a copyright infringement claim, the
claimant must have obtained copyright registration prior to bringing suit pursuant to 17
U.S.C. § 411(a). Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct.
881, 886 (2019).
Moreover, courts are divided on whether the Federal Rules of Civil Procedure
require a party to replead a counterclaim to an amended complaint, or the counterclaim is
otherwise abandoned. Mathews v. Ohio Pub. Emps. Ret. Sys., No. 2:12-CV-1033, 2014
WL 4748472, at *4 (S.D. Ohio Sept. 23, 2014) (collecting cases). Courts are also split on
whether a defendant must seek leave to amend its answer and/or counterclaims when
responding to an amended complaint. See Raymond James & Assocs., Inc. v. 50 N. Front
St. TN, LLC, No. 18-CV-2104-JTF-TMP, 2020 WL 7332846, at *3 (W.D. Tenn. June 23,
2020), report and recommendation adopted, No. 218CV02104JTFTMP, 2020 WL
6694299 (W.D. Tenn. Nov. 13, 2020) (collecting cases). Thus, Studer may be required to
replead its counterclaim, and may also be required to seek leave to amend its
counterclaim, when responding to the amended complaint. And, when repleading its
counterclaim, Studer may be able to cure certain issues raised by Artisan when arguing
its motion to dismiss.
Accordingly, considering the foregoing, Artisan’s motion to dismiss Studer’s
counterclaims is DENIED without prejudice.
Pursuant to Fed. R. Civ. P. 15(a)(2), the Court sua sponte GRANTS Studer leave
to file an amended counterclaim when responding to Artisan’s amended complaint. In
the event Studer does not assert its copyright infringement and/or conversion
counterclaims when responding to the amended complaint, the Court will consider any
counterclaim not asserted as abandoned.
IV. CONCLUSION
Based upon the foregoing:
1. Plaintiff’s motion for leave to file an amended complaint (Doc. 36) is
GRANTED. Plaintiff shall file an amended complaint within 14 days of
this Order;
2. Plaintiff’s motion to strike the affirmative defenses of Hensley Custom
Building Group (Doc. 22) and motion to strike the affirmative defenses of
Studer Residential Designs (Doc. 23) are DENIED as moot;
3. Plaintiff’s motion to dismiss Defendant Studer’s counterclaims (Doc. 20) is
DENIED without prejudice; and,
4. Defendant Studer Residential Designs, Inc. is GRANTED leave to file
amended counterclaim(s) when responding to Artisan’s amended
complaint.
IT IS SO ORDERED.
Date: 5/17/2021 s/Timothy S. Black
Timothy S. Black
United States District Judge