The opinion of the court was delivered by: McLAUGHLIN, District Judge.
The plaintiff, Richard K. Bieg, is suing the defendant,
Hovnanian Enterprises, for copyright infringement relating to
architectural drawings prepared by Bieg. The history of the
relationship between the two parties and the procedural history
of this case are lengthy and complicated. Bieg first began
creating architectural drawings for the Hovnanian Corporation in
1991, while working as an employee of the Triad Corporation.
During this time he completed technical drawings for numerous
Hovnanian projects in New Jersey. In 1993, Bieg decided to begin
working as an independent architect, rather than for Triad. He
continued to work for Hovnanian in this capacity, making minor
revisions on existing drawings.
Presently before the Court are cross-motions for summary
judgment. The defendant has filed a motion for summary judgment
as well as a motion for partial summary judgment. The plaintiff
has filed seven motions for partial summary judgment. The Court
grants the defendant's motion for summary judgment, because the
Court finds that Bieg is not the owner of the copyrights at issue
in this suit and therefore lacks standing to sue under
17 U.S.C. § 501(b).
A. The Parties and the Drawings
The defendant, Hovnanian Enterprises, is engaged in the
construction and sale of homes. Plaintiff, Richard Bieg, first
began working on Hovnanian Projects in 1991 as an employee of
Triad Associates, a Pennsylvania corporation. Bieg, the
Secretary/Treasurer of Triad, and Mark Tocanita, the President of
Triad, each owned and still own 50% of the shares in Triad
Associates. (Def. Ex. 4; Pl.Ex. A)*fn1.
In 1993, Bieg and Tocanita decided to cease practicing
architecture under the Triad name and to begin practicing
independently. As part of this separation, Bieg and Tocanita
agreed that each architect would continue to work for certain
Triad clients. Bieg, who had been the architect responsible for
Hovnanian projects under Triad, continued to work on Hovnanian
projects as an independent architect (Def.Ex. 4). His post-Triad
work for Hovnanian consisted of revising and modifying existing
technical drawings. Bieg applied for and received certificates of
registration — dated July 29, July 30, August 4, and September
28, 1998 — for the technical drawings he had prepared for
Hovnanian. (Pl.Ex. B).
Triad Associates has not been dissolved, but has been inactive
since the end of 1994. (Def.Ex. 7) Tocanita is currently working
as the Chief Corporate Architect for Hovnanian enterprises.
(Def.Ex. 4). On August 22, 2000, Tocanita signed an agreement
with Hovnanian Enterprises in his capacity as President of Triad,
stating that Triad "hereby irrevocably transfers, assigns and
conveys to Hovnanian the exclusive copyrights in all drawings,
plans, elevations, specifications, and other architectural work
product of any kind that Triad ever provided to Hovnanian . . ."
Pursuant to the settlement, Hovnanian was to pay Bieg $70,000
in return for a written release. Subsequently, the parties
disagreed over the terms of the release. On October 12, 1998, the
plaintiff's attorney sent a letter to the Court, stating that
there had been no meeting of the minds regarding settlement and
requesting a trial date. (Def.Ex. 25). On October 13, 1998, the
Court held a conference in this matter. (Def.Ex. 19). On October
19, 1998, the plaintiff filed an amended complaint asserting
copyright infringement claims, as well as a memorandum in support
of the motion to amend. In this memorandum, the plaintiff argued
that the amendment should relate back to the original Complaint,
because it was based on the same conduct or transactions.
On the same date as the filing of the Amended Complaint, the
plaintiff also filed a second lawsuit, the current copyright
infringement suit. On December 30, 1998, the plaintiff filed a
"motion to enforce settlement" in the 1997 case, seeking an order
vacating the August 31 dismissal and the reentry of an order of
dismissal expressly limited to the contract claims asserted in
the 1997 complaint. On January 21, 1999, the plaintiff withdrew
both his motion to amend and his motion to enforce settlement.
(Def.Ex. 31). Due to the withdrawal of these motions, the 1997
case remained closed. The plaintiff then proceeded with the
C. The Summary Judgment Motions
The defendant raised the following arguments in its motion for
(1) This lawsuit is barred by res judicata, because
the claims should have been brought in the 1997
(2) Bieg cannot sue for infringement, because he does
not own the copyrights in question;
(3) Bieg made knowing misrepresentations to the
Copyright Office, thereby invalidating his
registration certificates, which are a prerequisite
(4) Certain of Bieg's claims are barred by the
statute of limitations;
(5) Certain of Bieg's claims must fail, because they
pertain to construction details which are not
In addition, the defendant submitted a motion for partial
summary judgment on its counterclaims on the grounds of res
judicata and fraudulent ...