Barefoot Architect, Inc. v. Bunge
54 V.I. 948
| 3rd Cir. | 2011Background
- Barefoot, an architecture firm formed by Milne, sought to replace Village Vernacular, Inc. for a Virgin Islands project after Village began exiting active practice.
- Owners Bunge and Friedberg hired Barefoot under an August 31, 2000 AIA contract for basic and additional services; Barefoot later demanded substantial contingent fees.
- Milne, while at Village, prepared drawings bearing Village's imprint; owner deposits and subsequent drawings bore Village’s legend.
- In 2001 Barefoot suspended services; owners hired Tracy Roberts of Springline Architects to complete the project.
- Barefoot filed suit July 27, 2004, alleging copyright in the home design, plus breach of contract and other claims; defendants counterclaimed for breach of contract, fraud, fiduciary duty, Lanham Act, and tortious interference.
- District Court granted summary judgment on copyright and Lanham Act claims, dismissed remaining territorial claims; Barefoot appeals to reinstate copyright; defendants appeal on remaining counterclaims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Barefoot owned the copyright at the infringement time | Barefoot asserts 1999 oral transfer by Village to Barefoot | Village/Barefoot transfer not proven in writing; no valid transfer | No triable issue as to transfer occurrence; writing not shown to validate transfer |
| Whether a later writing can validate an earlier oral transfer under §204(a) | Statute allows a post-hoc note to validate a prior transfer | Konigsberg requires contemporaneity; writing too late invalidates | A later writing can validate if the transfer occurred; here no proof the transfer occurred, so validation fails |
| Whether §204(a) requires contemporaneity in cases with no dispute over ownership | Occurence-based transfer may be validated by later writing; no dispute favors validation | Without contemporaneous writing, assignment invalid; third parties cannot be liable | When no dispute on ownership, later writing may validate; but here no evidence of an actual transfer |
| Whether the tortious interference with contract counterclaim is actionable under §766A | Barefoot allegedly interfered with permitting, delaying project and increasing costs | Counts fit §766A as intentional interference causing delays and added expense | §766A viable; the district court’s Rule 12(b)(6) dismissal should be vacated and counterclaim considered on merits |
Key Cases Cited
- Konigsberg Int'l v. Rice, 16 F.3d 355 (9th Cir. 1994) (statute of frauds writing contemporaneity not strictly required for copyright transfers)
- Magnuson v. Video Yesteryear, 85 F.3d 1424 (9th Cir. 1996) (later writing can validate an earlier transfer when no dispute exists)
- Eden Toys, Inc. v. Florelee Undergarment Co., 697 F.2d 27 (2d Cir. 1982) (note or memorandum may validate an earlier transfer; purpose to protect against unauthorized claims)
- Imperial Residential Design v. Palms Development Group, 70 F.3d 96 (11th Cir. 1995) (writing validating an oral transfer acceptable in non-disputed cases)
- Rutenberg v. Heise, 29 F.3d 1529 (4th Cir. 1994) (accepts oral transfer later memorialized by writing in certain contexts)