HARRISBURG – Counsel for the City of Harrisburg and a Maryland law firm counter that an architect who sued them for alleged copyright infringement over using his draft chapters for developing a new comprehensive land plan has failed to state a proper claim.
The Office for Planning and Architecture, Inc. and Bret Peters of Harrisburg filed suit in the U.S. District Court for the Middle District of Pennsylvania on June 5, versus the City of Harrisburg and Wallace Montgomery & Associates, of Hunt Valley, Md.
“On or about May 1, 2015, OPA and the City entered into a written agreement for the provision of professional land use and planning services...the City in the agreement agreed to pay OPA for its services in developing a new comprehensive land plan for the City. OPA rendered services under the Agreement by coordinating and facilitating a public planning process,” the suit states.
“Based on the public engagement information, OPA prepared draft chapters for a municipal comprehensive plan in accordance with the scope of work set forth in the City’s request for proposal and consistent with the chapters required for a municipal comprehensive plan under the state municipal code, specifically preparing, editing, formatting and illustrating Chapters for Land Use; Natural & Historic Resources; Parks, Civic & Open Space; Housing; Mobility and Access; Utilities; Economic Development; and Integration (work product).”
Peters authored the work product for the City with a non-exclusive license granted to OPA, but Peters says the City did not pay for the product in 2016 – leading to a deficit in payment for services of $109,754.84, as of Nov. 15, 2019.
Subsequently, in 2019, the City publicly issued Request for Proposal 2019-3, which solicited services to do the work Peters authored the plan for, referencing the work Peters performed. It eventually selected Wallace Montgomery & Associates for the job.
“Because the City has failed to pay for OPA’s work product, the City does not hold the rights to its use, and Wallace Montgomery has no right to use the same, whether originally or in derivative work. In issuing RFP 2019-3, the City infringed on OPA’s copyright by employing OPA’s work product under the Agreement for which it has not made payment,” the suit states.
“At all times, OPA has used the work product as Peters’ licensee and is authorized to enforce Peters’ copyright thereto. OPA is entitled to compensation for defendants’ past infringement of OPA’s work product. Current and ongoing infringement of OPA’s Work Product by the City and Wallace, Montgomery must be enjoined.”
UPDATE
The defendants filed a motion to dismiss the case on July 8, arguing the OPA lacks standing to assert claims on behalf of Peters.
“The first element a plaintiff must prove in order to establish a copyright claim is ‘ownership of a valid copyright.’ Nowhere on the Certificate of Registration is OPA listed as an owner of the copyright. A non-exclusive licensee does not have standing to pursue a copyright claim on behalf of the owner of the copyright,” per the defense’s dismissal motion.
Further, defense counsel asserted the plaintiffs have failed to state a proper copyright infringement claim, being that the City possessed a non-exclusive license to use the work product.
“Plaintiffs cannot establish a copyright infringement claim because it is undisputed that 1) The City was granted an implied non-exclusive license to use the Work Product for the drafting and completion of a comprehensive plan and 2) The City and Wallace Montgomery’s use of the Work Product fell within the scope of the City’s implied non-exclusive license. At best, only OPA can pursue a cause of action for breach of the agreement against the City in the Dauphin County Court of Common Pleas,” the dismissal motion stated.
Lastly, the defense argued the plaintiffs’ claims for statutory damages and attorney’s fees should be thrown out.
“A plaintiff cannot recover statutory damages, and more importantly, attorney’s fees, for ‘any infringement’ a defendant commences before the plaintiff registered the copyright. Plaintiffs’ complaint does not identify the date on which the Request for Proposal was published nor the date on which Wallace Montgomery was selected,” the motion read, in part.
“However, the Request for Proposal, identifies June 28, 2019 as the date for submission of bids. From the documents attached to the complaint, it is clear that the effective date of Peters’ registration with the United States Copyright Office purportedly securing copyright protection of the work product is Nov. 18, 2019. Peters waited five months after learning of the alleged infringement created by the Request for Proposal, before, purportedly securing registration.”
On July 20, U.S. District Court for the Middle District of Pennsylvania Judge John E. Jones III stayed the deadlines for all cases and filings for 60 days, in order for the defendants to obtain new counsel. Once new counsel is secured, Jones further ordered the parties would collaborate on a stipulation setting forth a new briefing schedule, as to the defendants’ motion to dismiss.
For a count of violating the Copyright Act, the plaintiffs are seeking to permanently enjoin the City of Harrisburg and Wallace Montgomery & Associates, from further infringing its copyrighted work product and award damages for historical infringement, including attorney’s fees and costs of suit.
The plaintiffs are represented by Aaron D. Martin and Kathryn L. Simpson of Mette Evans & Woodside, in Harrisburg.
The defendants are in the process of seeking new counsel.
U.S. District Court for the Middle District of Pennsylvania case 1:20-cv-00920
From the Pennsylvania Record: Reach Courts Reporter Nicholas Malfitano at nick.malfitano@therecordinc.com