HARRISBURG – The City of Harrisburg and a Maryland law firm have won dismissal of a case brought by an architect who sued them for alleged copyright infringement, over allegedly using his draft chapters for developing a new comprehensive land plan.
The Office for Planning and Architecture, Inc. and Bret Peters of Harrisburg first 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 stated.
“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 stated.
The defendants filed a motion to dismiss the case on July 8, arguing the OPA lacked standing to assert claims on behalf of Peters. 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.
UPDATE
U.S. District Court for the Middle District of Pennsylvania Judge John E. Jones III granted the defendants’ dismissal motion on Nov. 24, terming the plaintiffs’ argument “fatally flawed.”
“We hesitate to sustain a claim for copyright infringement where the allegedly unauthorized use clearly fell within the scope of the original license and the only alleged impropriety was merely the continued use of the work product following a fee dispute,” Jones said.
“This conclusion is even more fitting where there is not a single allegation that plaintiffs ever terminated the agreement or rescinded the grant of the non-exclusive license. And even if plaintiffs had terminated the agreement and/or rescinded the license, we would not be legally foreclosed from finding an implied license to continue using the work product following termination.”
Jones added that it was “sufficient for present purposes to simply conclude that plaintiffs have not stated a claim for copyright infringement under the facts”, before dismissing the case.
Prior to dismissal and for violating the Copyright Act, the plaintiffs were 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 were represented by Aaron D. Martin and Kathryn L. Simpson of Mette Evans & Woodside, in Harrisburg.
The defendants were represented by Brian D. Boreman of Unruh Turner Burke & Frees, in West Chester.
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