District court grants summary judgment for defendants in copyright infringement action involving architectural drawings; court holds that while a writing memorializing an oral agreement to transfer a copyright interest does not need to be contemporaneous with the oral agreement to satisfy the Section 204(a) writing requirement, here there was no evidence that an underlying oral agreement ever occurredDefendant homeowners hired architect A. Michael Milne to design a home for them in the U.S. Virgin Islands. Milne created the architectural plans while an employee of Village Vernacular. During the project, Milne left Village and became an employee of plaintiff, Barefoot Architect. Plaintiff and the homeowner defendants disputed some of Barefoot’s invoices and the homeowners eventually hired other architects to finish the project. Plaintiff sued defendant homeowners and the architects they hired to finish the project for copyright infringement, violation of the Lanham Act, and breach of contract, based on defendants’ alleged use of copyrighted architectural drawings Defendants moved for summary judgment, arguing that plaintiff lacked standing to bring a copyright infringement claim because it did not own the copyright to the architectural drawings that defendants allegedly copied.
One issue before the court was whether a September 2008 written agreement between plaintiff and Village, which was purportedly intended to memorialize an oral transfer of copyright from Village to plaintiff nine years earlier, satisfied section 204(a) of the Copyright Act, which requires that a transfer of copyright ownership be in writing and signed by the owner of the rights being conveyed. The defendants argued that such a writing must be contemporaneous with the oral agreement to be valid.
The court, citing Second and Ninth Circuit decisions, held that written memorializations of oral agreements to transfer a copyright interest do not have to be contemporaneous with the oral agreement to be valid. However, in this case, the court held that the plaintiff failed to establish that the alleged “oral agreement” ever occurred, because plaintiff and Village erroneously believed that Milne, who was an employee, owned the copyright to the drawings. Without such oral agreement, the 2008 writing could only validate the transfer on a going-forward basis. It could not “reach backward and validate any transfer of rights or interests because there is no such prior transfer.” Accordingly, the court dismissed the copyright infringement claim due to plaintiff’s failure to establish ownership of the copyrights in question.
The court also granted summary judgment to the defendants on the Lanham Act claim based on Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003), in which the U.S. Supreme Court held that a plaintiff cannot use the Lanham Act to allege a false designation of origin claim that is really a copyright infringement claim. And the court dismissed the state breach of contract claim because it declined to exert supplemental jurisdiction over the state claim after dismissing the federal claims.