United States District Court, N.D. Illinois, Eastern Division
KAY BROTHERS ENTERPRISES, INC., an Illinois Corporation, Plaintiff,
JOSEPH PARENTE, DAWN PARENTE, PROVENCAL CONSTRUCTION COMPANY, an ILLINOIS CORPORATION, RON VARI, R. VARI & ASSOCIATES, LLC, HAROLD LIESENFELT, and MICHAEL CANDELA, Defendants. JOSEPH PARENTE and DAWN PARENTE, Third-Party Plaintiffs,
ROBERT MIFFLIN, d/b/a R.A. MIFFLIN ARCHITECTS, Third-Party Defendant.
OPINION AND ORDER
L. ELLIS UNITED STATES DISTRICT JUDGE.
case arises out of a negotiation to build a stately home in
Burr Ridge, Illinois, gone awry. Plaintiff Kay Brothers
Enterprises, Inc. (“KBEI”), alleges that
Defendants Joseph and Dawn Parente misappropriated
architectural plans for which KBEI owns the copyright and
distributed them to Defendants Provencal Construction Company
(“Provencal”), Harold Liesenfelt, Michael
Candela, Ron Vari, and R. Vari & Associates, LLC, to be
used in the construction of a custom home for the Parentes.
KBEI brings claims for copyright infringement against all
defendants and a claim for Quantum Meruit against the
Parentes. The Parentes answered KBEI's Second Amended
Complaint (“SAC”) and filed a third-party
complaint naming KBEI's architect Robert Mifflin d/b/a
R.A. Mifflin Architects, alleging that Mifflin breached his
contract with the Parentes to modify architectural drawings
for the Parentes to use in the construction of their home by
purporting to transfer ownership of the copyright in those
drawings to KBEI. The Parentes also allege that Mifflin
violated the Illinois Consumer Fraud and Deceptive Business
Practices Act (“ICFA”), 815 Ill. Comp. Stat.
505/1 et seq., by failing to disclose to the
Parentes that he had assigned his ownership interest in the
Plans to KBEI and that he therefore lacked authority to enter
into the agreement with the Parentes to modify those plans
for use in construction of their home.
has closed and the Parentes and KBEI now cross move for
summary judgment on the copyright claim. KBEI moves for
partial summary judgment as to the Parentes' liability
and the Parentes move for summary judgment arguing that they
had an implied non-exclusive license to use the revised Plans
to build their home. Provencal and its principles Liesenfelt
and Candela also move for summary judgment on the copyright
claim against them, arguing that if the Court grants summary
judgment in favor of the Parentes, their liability by
extension is also extinguished. Finally, Mifflin moves for
the second time to dismiss the claims against him, arguing
that the ICFA claim is inadequately pleaded under Federal
Rule of Civil Procedure 9(b), that the Parentes have not
adequately alleged standing to bring their ICFA claim, that
the Parentes do not allege that Mifflin engaged in a
deceptive or unfair practice necessary to state an ICFA
claim, and that the Parentes do not allege damages sufficient
to support their breach of contract claim.
there is a genuine dispute as to whether KBEI's objective
conduct demonstrated intent to provide the Parentes with a
non-exclusive license to use the Plans to build their home,
the Court denies all three motions for summary judgment. And,
because the Court previously found the Parentes' ICFA
claim adequately pleaded and they are not required to amend
their complaint after discovery, and because the Parentes
otherwise adequately pleaded their ICFA claim, the Court
denies Mifflin's motion to dismiss the ICFA claim.
Additionally, the Court denies Mifflin's motion to
dismiss the breach of contract claim because the Parentes
adequately alleged damages.
the Parentes also bring a motion to strike various portions
of the declarations KBEI submits in support of its Statement
of Additional Disputed Facts (“SADF”). The Court
denies this motion because the challenged statements are not
hearsay and are consistent with prior deposition testimony.
Joseph and Dawn Parente, husband and wife, are residents of
Burr Ridge, Illinois. The Parentes are the owners of a home
located at 8734 Johnston Road, Burr Ridge, Illinois (the
“Johnston Residence”). Defendant Provencal
Construction Company (“Provencal”) is a
construction company that built the Johnston Residence for
the Parentes. Defendants Candela and Liesenfelt are the sole
shareholders of Provencal. Defendant Vari is a friend of
Joseph Parente and an architect. Vari is the principal of
Defendant R. Vari & Associates, LLC.
KBEI is an Illinois corporation that constructs single-family
homes, including both custom and speculative homes. John
Kajmowicz and Robert Kajmowicz are the sole owners of KBEI.
Third Party Defendant Mifflin is an architect. Mifflin owned
R.A. Mifflin Architects.
The Original Plans
2002, at KBEI's request, Mifflin prepared a set of
architectural drawings for a single-family home to be
constructed on a KBEI-owned lot at 6679 Lee Court, Burr
Ridge, Illinois (the “Original Plans”). On June
13, 2002, Mifflin executed an assignment of rights in the
Original Plans to KBEI. KBEI never constructed the residence
depicted in the Original Plans.
2008, the Parentes acquired a vacant lot at 8734 Johnston
Road adjacent to their existing residence in Burr Ridge,
Illinois. Sometime prior to 2009, the Parentes met with Bob
Kajmowicz, who showed the Parentes the Original Plans
prepared by Mifflin. The Parentes elected not to build a new
residence at that time and their discussions with KBEI ceased
without any agreement to do business together.
Modification of the Plans
2014, the Parentes elected to move forward with building a
new residence on their vacant lot on Johnston Road. In
November 2014, KBEI and the Parentes met to review the
Original Plans and discuss modifications to conform the
drawings to the 8734 Johnston Road lot and to the
Parentes' personal taste. At Bob Kajmowicz's
invitation, Mifflin attended a November 2014 meeting to
discuss Mifflin making the Parentes' requested
modifications to the Original Plans. This was the first time
the Parentes met Mifflin. KBEI consented to Mifflin making
modifications to the Original Plans at the direction of the
Parentes and did not require that the Parentes sign a
build-to-suit contract prior to Mifflin modifying the
prepared a letter agreement dated November 13, 2014 (the
“Letter Agreement”), proposing terms for the
revisions of the Original Plans for the Parentes'
Johnston Residence. The Letter Agreement required the
Parentes to pay Mifflin $10, 000 and provided for additional
services to be billed at an hourly rate. Mifflin sent a draft
of the Letter Agreement to John Kajmowicz for KBEI's
review and approval before transmitting the Letter Agreement
to the Parentes. John Kajmowicz instructed Mifflin to revise
the Letter Agreement to denote that the Original Plans were
“owned by” KBEI. Mifflin did not make this
Letter Agreement did not condition the Parentes' use of
the modified version of the Original Plans (the
“Modified Plans”) upon KBEI serving as their
builder. The Letter Agreement stated that “[t]he
original plans were prepared for [KBEI] and designed for
their lot at 6679 Lee Court, Burr Ridge.” Doc. 142-15.
The Letter Agreement proposed that in consideration of a
“fixed fee” of $10, 000, “[r]evisions will
be completed, based on this existing set of drawings in order
for the proposed home to be constructed on a walk out lot
(#69) in the Highland Fields subdivision, Burr Ridge, owned
by Mr. and Mrs. Joseph Parente.” Id.
December 10, 2014, John Kajmowicz emailed the unsigned Letter
Agreement to the Parentes; this version also did not state
that KBEI owned the Original Plans. Joseph Parente believes
he signed the Letter Agreement on December 9, 2014. Mifflin
received a signed copy of the Letter Agreement sometime in
December 2014. The Parentes paid Mifflin $11, 700 by March 1,
2015, and made an additional, final payment of $500 in August
2015, completing payment for Mifflin's services pursuant
to the terms of the Letter Agreement.
point, Bob Kajmowicz, on behalf of KBEI, delivered the
Modified Plans to the Parentes. KBEI never told Mifflin not
to deliver copies of the Modified Plans to the Parentes. On
February 20, 2015, KBEI submitted the architectural plans, a
building permit application, and $1, 000.00 to the Village of
Burr Ridge for the construction of the Johnston Residence.
The Parentes have never reimbursed KBEI the $1, 000.00.
Build-to-Suit Contract Negotiations
February 2015 to July 2015, the Parentes and KBEI negotiated
a build-to-suit contract for the Johnston Resident. The
negotiations produced at least five iterations of the
build-to-suit contract. On June 5, 2015, Joseph Parente's
attorney e-mailed an iteration of the build-to-suit contract
to Joseph Parente and John Kajmowicz, asking KBEI to sign and
return the contract. But KBEI did not sign because the
parties were unable to agree upon a penalty clause in the
event of KBEI's delayed performance, and negotiations
7, 2015, John Kajmowicz e-mailed Joseph Parente stating,
“Joe please be advised that after emails and phone
calls with no response. Kay Bros Ent. is no longer involved
in any of your current or future building efforts. Also be
advised that the current plans you have in your possession
for 8734 Johnston Road, Burr Ridge, IL are the sole property
of Kay Bros Ent. and any use, alteration or reproduction of
the (sic) these drawings and plans without consent from Kay
Bros Ent. is strictly prohibitive (sic) and will be strongly
enforced. Feel free to call and discuss.” Doc. 142-31.
7, 2015, Joseph Parente responded to John Kajmowicz's
e-mail stating “Ok.” On July 7, 2015, Joseph
Parente responded to John Kajmowicz's e-mail again
stating “E-mail got caught (sic) off . . . Ok, will
call to discuss.” Doc. 142-31. Joseph Parente never
called John Kajmowicz or Bob Kajmowicz to discuss the issues
raised in John Kajmowicz's July 7, 2015 email.
Village Approval and Construction with Another
negotiations between KBEI and the Parentes formally
collapsed, the Village of Burr Ridge (the
“Village”) approved the Modified Plans for the
Johnston Residence, and on June 16, 2015, Joseph Parente paid
the Village $17, 019.20 for the building permit and
performance bond for the construction of the Johnston
Residence. The Village provided the Parentes copies of the
Modified Plans on file at the Village.
26, 2015, Vari, on behalf of Joseph Parente, e-mailed Mifflin
requesting that he forward copies of the Modified Plans for
the Johnston Residence to him. On June 27, 2015, Mifflin
responded that he would not send copies of the plans to Vari
because the Parentes were not using KBEI to construct the
7, 2015, Vari e-mailed Joseph Parente inquiring whether he
should reach out to Mifflin for an “engineers's
(sic) grading plan.” On July 7, 2015, Joseph Parente
forwarded John Kajmowicz's July 7, 2015 e-mail to Vari.
On July 7, 2015, Joseph Parente responded to Vari's
e-mail regarding reaching out to Mifflin by saying
“No.” Doc. 142-32.
August 16, 2015, Mifflin e-mailed a copy of his invoice for
modifications to the Original Plans to Vari and asked,
“Is anybody going to pay this?” Doc. 142-34. Vari
forwarded Mifflin's e-mail to Joseph Parente. Joseph
Parente responded to Vari by e-mail stating, “Sure if I
get release of ownership of prints . . . If not, no.”
Id. On August 17, 2015, Vari e-mailed Mifflin
stating, “Hi Bob spoke to Joe he indicated that he
would like a release from the Kay brothers (sic) indicating
that Joe now has ownership of the prints and he would be
happy to pay the balance.” Id. On August 19,
2015, Mifflin responded to Vari's e-mail stating
“The $500.00 is the balance remaining for revisions as
requested by Joseph Parente to existing Kay builder plans.
The changes are complete and a permit was issued. The final
payment is due. As far as Joseph's request for a release
of the plans from the [KBEI], they are the property of
[KBEI], I have nothing to say about that. You should contact
them regarding the rights to the plans.” Id.
and Dawn Parente never requested that KBEI grant them consent
to freely copy, distribute, or otherwise use the Original
Plans or the Modified Plans. Joseph and Dawn Parente took no
action to obtain KBEI's consent to use the Modified Plans
in the construction of their home with a homebuilder other
than KBEI. Joseph and Dawn Parente never inquired whether
KBEI would object to their use of either set of plans with a
homebuilder other than KBEI.
Parentes eventually contracted with Provencal on September
11, 2015, to construct the Johnston Residence using the
Modified Plans. Provencal completed construction of the
Johnston Residence in June 2017. KBEI never received payment
of any kind from Joseph and Dawn Parente.
judgment obviates the need for a trial where there is no
genuine issue as to any material fact and the moving party is
entitled to judgment as a matter of law. Fed.R.Civ.P. 56. To
determine whether a genuine issue of fact exists, the Court
must pierce the pleadings and assess the proof as presented
in depositions, answers to interrogatories, admissions, and
affidavits that are part of the record. Fed.R.Civ.P. 56 &
advisory committee's notes. The party seeking summary
judgment bears the initial burden of proving that no genuine
issue of material fact exists. Celotex Corp. v.
Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d
265 (1986). In response, the non-moving party cannot rest on
mere pleadings alone but must use the evidentiary tools
listed above to identify specific material facts that
demonstrate a genuine issue for trial. Id. at 324;
Insolia v. Philip Morris Inc., 216 F.3d 596, 598
(7th Cir. 2000). Although a bare contention that an issue of
fact exists is insufficient to create a factual dispute,
Bellaver v. Quanex Corp., 200 F.3d 485, 492 (7th
Cir. 2000), the Court must construe all facts in a light most
favorable to the non-moving party and draw all reasonable
inferences in that party's favor. Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91
L.Ed.2d 202 (1986).
motion to dismiss under Rule 12(b)(6) challenges the
sufficiency of the complaint, not its merits. Fed.R.Civ.P.
12(b)(6); Gibson v. City of Chicago, 910 F.2d 1510,
1520 (7th Cir. 1990). In considering a Rule 12(b)(6) motion
to dismiss, the Court accepts as true all well-pleaded facts
in the plaintiff's complaint and draws all reasonable
inferences from those facts in the plaintiff's favor.
AnchorBank, FSB v. Hofer, 649 F.3d 610, 614 (7th
Cir. 2011). To survive a Rule 12(b)(6) motion, the complaint
must not only provide the defendant with fair notice of a
claim's basis but must also be facially plausible.
Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct.
1937, 173 L.Ed.2d 868 (2009); see also Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d
929 (2007). “A claim has facial plausibility when the
plaintiff pleads factual content that allows the court to
draw the reasonable inference that the defendant is liable
for the misconduct alleged.” Iqbal, 556 U.S.
9(b) requires a party alleging fraud to “state with
particularity the circumstances constituting fraud.”
Fed.R.Civ.P. 9(b). This “ordinarily requires describing
the ‘who, what, when, where, and how' of the fraud,
although the exact level of particularity that is required
will necessarily differ based on the facts of the case.
AnchorBank, 649 F.3d at 615 (citation omitted). Rule
9(b) applies to “all averments of fraud, not claims of
fraud.” Borsellino v. Goldman Sachs Grp.,
Inc., 477 F.3d 502, 507 (7th Cir. 2007). “A claim
that ‘sounds in ...