JOHN R. BROWN, Senior Circuit Judge:
MGB Homes, Inc. (MGB), in its initial complaint, alleged that Ameron Homes, Inc. and its President Daniel J. Brognano (Ameron) copied the floorplan of MGB's "Islander II" home from a copyrighted advertising flyer. MGB alleged copyright infringement in violation of the Copyright Act of 1976, 17 U.S.C. § 501, et seq., and violations of the Florida common law of unfair competition and the Florida Deceptive and Unfair Trade Practices Act (DTPA), Fla.Stat.Annot. § 501.201, et seq. (1973). The trial court found in favor of MGB on all counts and awarded actual damages under the Copyright Act of $1,206.99. It also awarded $5,000.00 in punitive damages and $15,000.00 in attorneys' fees for "unfair competition" and violations of the Florida DTPA.
We reverse the trial court on each of these claims leading to reversal of all of the monetary awards.
The House that Ameron Built
With one important exception, we find that the trial court was not clearly erroneous in its findings of facts below and thus adopt those findings for purposes of this appeal.
MGB and Ameron are competing home builders in the town of Sebastian, Florida. The principals of both MGB and Ameron, Ballough and Brognano respectively, were once shareholders and controllers of Ameron.
MGB claims that the floor plan depicted on that advertising brochure and the measurements given thereon were used by Ameron's draftsman to make the architectural drawings of a home Ameron built for Mr. and Mrs. Mark Stern.
In light of this testimony, the trial court found that Brognano attempted to mislead the court by fabricating a story about sketching and measuring an actual home. It found that "Ameron Homes, Inc. did appropriate and use the copyrighted floor plan of plaintiff [MGB]." (R. 96).
MGB admitted that the actual architectural plans for the "Islander II" were never registered with the Copyright Office although they do bear a copyright notice. Only the advertising flyers were registered.
Ameron had access to the advertising flyers for the "Islander II" which were available in the model home for prospective customers. Ameron constructed a home for the Sterns which has a floor plan substantially similar to the "Islander II." The differences are insignificant. The Sterns' floor plan was copied from the advertising flyer for the "Islander II" home.
A Well-Built Plan?
The Copyright Act provides that:
17 U.S.C. § 411(a) (West Supp.1990). The registration requirement is a jurisdictional prerequisite to an infringement suit.
The existence of federal jurisdiction was strongly debated in this case. MGB filed its original application for copyright
When the trial court initially dismissed MGB's complaint, it was without prejudice to "file a new complaint for copyright infringement" once the registration was obtained. (R. 20). In light of this order, the filing of a new lawsuit would ordinarily have been the proper way for MGB to proceed once it received the registration certificate. Because the trial court had dismissed the suit for lack of jurisdiction, it was, at most, technically without jurisdiction to entertain MGB's motion to amend its complaint. However, "[i]t is too late in the day and entirely contrary to the spirit of the Federal Rules of Civil Procedure for decisions on the merits to be avoided on the basis of such mere technicalities." Foman v. Davis, 371 U.S. 178, 181, 83 S.Ct. 227, 230, 9 L.Ed.2d 222, 225 (1962).
F.R.Civ.P. 61 strongly supports our decision to proceed.
Congress has also commanded that on the hearing of any appeal, "... the court shall give judgment ... without regard to errors or defects which do not affect the substantial rights of the parties." 28 U.S.C. § 2111.
The amended complaint submitted by MGB contained all of the required allegations. On its face it asserted that the trial court had jurisdiction over the new infringement action. Except for the technical distinction between filing a new complaint and filing an amended complaint, the case would have been properly filed.
A Blueprint of Copyright Law
The primary question raised by this appeal is whether MGB is an "owner" of the
17 U.S.C. § 201 (West 1977). Section 101 defines a work made for hire as:
In its copyright application, MGB identified itself as a "work-for-hire" author of the advertising flyer depicting the "Islander II" floor plan. Ameron asserted, as a complete defense to the infringement claim against it, that MGB is not a valid copyright owner under this doctrine.
First, we hold that Ameron does have the right to assert this defense. It is not unheard of, as MGB asserts, for the "work-for-hire" issue to arise "as a defensive tactic adopted by a third-party infringer to dispute the validity of the plaintiff's copyright." Easter Seal Society for Crippled Children and Adults of Louisiana, Inc. v. Playboy Enterprises, 815 F.2d 323, 333 (5th Cir.1987), cert. denied, 485 U.S. 981, 108 S.Ct. 1280, 99 L.Ed.2d 491 (1988).
Under the Copyright Act of 1909, the "work-for-hire" doctrine created a rebuttable presumption of authorship in the employer. See Murray v. Gelderman, 566 F.2d 1307, 1309 (5th Cir.1978) (citations omitted).
Prior to CCNV, three approaches for determining when a work was made for hire under the 1976 Act had developed.
All of this debate was recently ended when the Supreme Court in CCNV held that the "literal" approach to the "work-for-hire" doctrine was correct under the 1976 Act.
490 U.S. at ___, 109 S.Ct. at 2178, 104 L.Ed.2d at 831. According to the Supreme Court, under the general law of agency, we look to the hiring party's right to control the way in which the product — here the architectural plans and house drawings that made up the advertising flyer — is made in order to determine if the hired party is an employee or an independent contractor. Some of the factors relevant to this determination are:
490 U.S. at ___, 109 S.Ct. at 2178-79, 104 L.Ed.2d at 831-32 (citations omitted).
Our case is much the same. Although Ballough exercised control and direction over the finished product that Unlimited Drafting Services produced, all the other circumstances militate against finding the drawings were done as a work for hire. Unlimited provided skilled drafting services. It provided its own office space, tools and supplies. Unlimited was retained for a comparatively short period of time — a few weeks. MGB did not have the ability to assign new projects to Unlimited during that time (other than by entering a new contract). Unlimited was free to determine the days and hours on which its employees worked. Unlimited had total discretion in hiring and firing its own employees without interference by MGB. Unlimited paid its own taxes and withholding for its employees. Drafting was not a part of the regular business of MGB which always used an outside drafting firm. In short, Unlimited was an independent contractor, not an employee.
Once this decision has been made, under the mandate of CCNV we look to the language of § 101(2) to determine if the advertising flyer was a work for hire. The language of the statute was not complied with in two regards: (i) architectural drafting does not fall within the nine enumerated categories of activities which may be done by independent contractors "for hire" and (ii) there is no evidence that MGB and Unlimited had a contract stating that the drawings would be considered a work for hire. We therefore conclude that MGB was not the author of the house drawings under the "work-for-hire" doctrine.
A question remains, however, as to whether MGB is a co-author of the plans because of the control and discretion it exercised over the content of the final product. Ballough testified that he reviewed the drawings in progress, made suggestions and corrections, and had final approval authority over the work of Unlimited.
The Copyright Act does not define joint authorship per se. It does state, however, that "[t]he authors of a joint work are coowners of copyright in the work." 17 U.S.C. § 201(a) (West 1977) (emphasis added). A "joint work" is defined as "a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent
1 M. Nimmer and D. Nimmer, Nimmer on Copyright § 6.04 at 6-11 (1989). Co-owners are, of course, equally entitled to claim a copyright in the undivided whole of the protected work. See 1 Nimmer § 6.03 at 6-6.
The situation of coownership is not presented by the facts of this case. Ballough's contribution to the final drawings produced by Unlimited was a thumbnail sketch of the floor plan he desired for the "Islander II" and approval authority thereafter. "Such involvement by a client in the preparation of architectural plans is normally expected.... Such involvement does not, however, ordinarily render the client an `author' of the architectural plans." Aitken, Hazen, et al. v. Empire Construction Co., 542 F.Supp. 252, 259 (D.Neb.1982). There is no evidence that it was the intent of either Ballough or Unlimited that this concept (the sketch) become part of the finished expression (the architectural plans and drawings). In fact, the sketch did not form an "inseparable or interdependent" part of the final house drawings.
It is clear that Ballough was not a "creator"
We therefore hold that MGB did not have a valid copyright in the advertising brochure that was copied. Ameron's actions consequently were not an infringement. The trial court was in error in so holding.
A House of Cards
No attorneys' fees or statutory damages were available to MGB under the Copyright Act because the advertising materials were not registered with the Copyright Office at the time the alleged infringement occurred. 17 U.S.C. § 412 (West 1977). Nonetheless, the trial court awarded both attorneys' fees and punitive damages to MGB under Florida law. The precise source of these awards is unclear in the district court's order. They arose under some combination of the Florida common law of unfair competition and the Florida Deceptive and Unfair Trade Practices Act, Fla.Stat.Annot. § 501.201, et seq.
The cause of action for common law unfair competition must fail. In order "to prevail on its unfair competition claim under Florida common law, ... [plaintiff] must prove elements other than those mandated in an action under the Copyright Act. Florida law requires that [plaintiff] establish deceptive or fraudulent conduct of a competitor and likelihood of consumer confusion."
What the trial court did find was that MGB's right to relief for unfair competition arose,
In other words, the trial court found that Ameron competed unfairly because it planned to copy MGB's work. It held that this was not pre-empted by the Copyright Act, but arose collaterally. We disagree.
The Copyright Act provides that "all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright ... are governed exclusively by this title." 17 U.S.C. § 301(a) (West 1977). A claim for unfair competition based upon allegations of copying, and in the absence of proof of any element of unfair competition other than copying, is clearly pre-empted by the Act.
Likewise we hold that the trial court erred in applying the Florida Deceptive Trade Practices Act, Fla.Stat.Annot. § 501.201, et seq. (1973). That Act does not apply to suits between competitors. There is no question that MGB and Ameron — home builders in the same small Florida town with model homes on the same street — were competitors. See §§ 501.202 and 501.203(1).
Because neither the common law unfair competition claim nor the Florida DTPA claim can stand, it was error for the trial court to award punitive damages and attorneys' fees. Those awards are hereby reversed.
The Best-Laid Plans ...
All of the substantive determinations of the trial court are hereby reversed. MGB loses on its copyright infringement claim because it does not own a valid copyright. Thus the actual damage award of $1,206.99 is reversed. MGB also failed to state claims for common law unfair competition and violation of the Florida DTPA. Thus the awards of attorneys' fees and punitive damages are reversed.
REVERSED AND RENDERED.
Further, the Eleventh Circuit has allowed injunctive relief to be sought prior to registration. Pacific & Southern Co. v. Duncan, 744 F.2d 1490, 1499 n. 17 (11th Cir.1984), cert. denied, 471 U.S. 1004, 105 S.Ct. 1867, 85 L.Ed.2d 161 (1985). This authority does not solve our jurisdictional problem, however, because the trial court held that all of MGB's claims for relief were premature and dismissed the case in toto. Although Pacific & Southern indicates that the trial court had the ability to retain jurisdiction over the equitable claims after dismissing the infringement claim had it desired to do so, we are faced with a situation where it did not.
Donald Frederick Evans and Assoc. v. Continental Homes, Inc., 785 F.2d 897, 903 (11th Cir.1986) (emphasis added), citing Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 824 (11th Cir.1982).
Restatement (Second) of Agency § 220(2) (1958).