Opinion
No. 02 C 0725
December 11, 2002
MEMORANDUM OPINION AND ORDER
Reinke + Associates Architects Inc. and Stembridge Builders have sued various defendants for copyright infringement under the Copyright Act and unfair competition under the Illinois Consumer Fraud and Deceptive Business Practice Act. Defendants Bieritz and JB Architecture Group have moved to dismiss under Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim. Defendants argue that: (1) both claims are precluded by their respective statutes of limitations, (2) plaintiffs have failed to state a copyright infringement claim under the Copyright Act, and (3) the Copyright Act precludes the unfair competition claim. Before I address the unfair competition issue, I must address whether plaintiffs have a valid claim for copyright infringement. But before I address either of these issues, I must first address the statute of limitations issues, which may render the former issues moot.
Statute of Limitations
Defendants argue that respective statutes of limitations preclude both counts because the claims arose more than three years prior to the filing of the complaint on January 29, 2002. The Copyright Act mandates the commencement of an infringement action within three years following the accrual of a cause of action. 17 U.S.C. § 507(b). Similarly, the applicable statute of limitations of a claim of unfair competition in Illinois is three years. Kitchen Connection, Inc. v. The Pampered Chef, Ltd., No 98C4321, 1999 WL 1101231, *5 (N.D.Ill. Dec. 1, 1999).
Although it may be true that the last possible infringing act by either Bieritz or JB occurred more than three years before the filing date of this suit, the question is whether the plaintiffs could have reasonably discovered the infringement prior to January 29, 1999. Although defendants are correct that the facts of Taylor v. Meirick are quite different from the present case, I hold that the case stands for the general equitable estoppel proposition that "it should be enough [and thus is enough] to toll the statute of limitations that a reasonable man would not have discovered the infringement." 712 F.2d 1112, 1118 (7th Cir. 1983); see also Forster Music Publisher, Inc. v. Price Stern Sloan, Inc., No. 93C4487, 1995 WL 239093, *2 (N.D.Ill. April 21, 1995) (finding the same proposition in Taylor). Here, I must accept as true the plaintiffs' allegation that they did not discover the infringement until September of 1999, thus tolling the statute of limitations until this date. Based on the limited factual development of this case to this point, there is nothing in the record that suggests I am straining to find that a reasonable person in the plaintiffs' shoes would not have discovered the infringement prior to when they claim to have discovered it.
Therefore, I hold that the respective statutes of limitations do not preclude both counts.
Count I: Copyright Infringement
Defendants argue that plaintiffs have failed to state a copyright claim because they have failed to identify the infringed works, have failed to allege copying and access, and have failed to allege publication. In order to state a claim of copyright infringement, a complaint need allege only ownership, registration, and infringement. Sweet v. City of Chicago, 953 F. Supp. 225, 227 (N.D.Ill. 1996). Other details of the claim may be obtained by discovery. Id.
It appears that the legal standard set forth in Sweet for surviving a motion to dismiss a charge of copyright infringement is slightly different than the standard set forth in Harris Custom Builders, Inc. v. Hoffmeyer, 92 F.3d 517 (7th Cir. 1996), and Lee v. Deck the Walls, Inc., 925 F. Supp. 576 (N.D.Ill. 1996), for surviving a motion for summary judgment. Whereas a plaintiff need only allege ownership, registration, and infringement of a copyright in order to avoid dismissal, he needs to show ownership and copying of the constituent elements of the copyrighted work in order to avoid summary judgment. Compare Sweet, 953 F. Supp. at 227 with Harris, 92 F.3d at 519 and Lee, 925 F. Supp. at 578.
Here, regardless of whether plaintiffs have sufficiently alleged ownership or registration, there is a serious problem regarding their allegation of infringement. In response to the defendants' motion, plaintiffs admitted that their Complaint contained a misnomer identifying the infringing work as being located at 2729 Gateshead Drive rather than its actual address at 3520 White Eagle Drive. Plaintiffs claim that this misnomer is not sufficient to establish grounds for dismissal, but they are mistaken because "submissions in a response brief are not enough to cure the defects in a deficient complaint." Id. at 230. By their own admission, plaintiffs have thus conceded that their Complaint identifies as an infringement something that is not an infringement.
Sweet, a case to which both sides refer repeatedly, has a solution to this dilemma. Faced with a similar situation of a complaint not setting forth facts showing that the copyright was infringed, the court noted that the "dismissal with respect to [the alleged copyright infringement claim] would normally be without prejudice to allow the plaintiff to plead sufficient facts." Id. at 230. I choose to follow this suggested course.
The court in Sweet did not follow its own suggested course because copies of the copyrighted material and alleged infringing material at issue demonstrated that the plaintiffs "could not in good faith allege infringement" of the copyrighted material. Id. That is not the situation here because there has not been enough factual development to make a finding on this matter.
Defendants' Motion to Dismiss is GRANTED. Plaintiffs' complaint is dismissed without prejudice but they are free to file an amended complaint correcting the aforementioned defect by January 2, 2003. Defendants will then have until January 23, 2002 to file a revised motion to dismiss or refile their old motion declaring that they are no longer relying on the misnomer as to the location of the infringing work. Plaintiffs will then have until February 6, 2003 to file a revised response or refile their old response. Defendants will then have until February 13, 2003 to file a revised reply or refile their old response. Because plaintiffs are free to file an amended complaint which may or may not sufficiently allege a copyright infringement claim, I refrain from addressing at this point whether the claim for unfair competition is preempted by the Copyright Act.