UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF INDIANA

DESIGN BASICS, LLC, )

)

Plaintiff, )

)

v. ) CAUSE NO.: 3:16-CV-195-TLS

)

W R BIRKEY & ASSOCIATES, INC., )

et al., )

)

Defendants. )

OPINION AND ORDER

This matter comes before the Court on the Motion for Partial Summary Judgment [ECF 

No. 25] filed by the Defendants, W R Birkey & Associates, Inc. and Wayne Birkey, d.b.a. Birkey 

Homes and W.R. Birkey Realty, on November 18, 2016. In that Motion, the Defendants argue

that the statute of limitations provision in the Copyright Act bars Plaintiff Design Basics, LLC’s

claims based on infringing acts that occurred prior to March 31, 2013 (the “Look-Back Date”). 

This matter is fully briefed and ripe for review.

BACKGROUND

The Plaintiff is a Nebraska company that creates, markets, publishes and licenses the use 

of architectural works and technical drawings. The Defendants are an Indiana company that 

builds homes, and the owner of that company. On May 31, 2016, the Plaintiff filed a Complaint 

[ECF No. 1] against the Defendants for “publish[ing], distribut[ing], market[ing], and 

advertis[ing] certain architectural designs for single family residential homes” that infringe the 

Plaintiff’s copyrighted works. (Compl. ¶¶ 13–24, ECF No. 1.) The Defendants “built homes 

based on floor plans named in Plaintiff’s Complaint for twenty years prior to March 31, 2016” 

lawsuit, spanning both before and after the Look-Back Date. (Def.’s Br. in Supp. of Mot. Summ. 
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J. 4, ECF No. 26.) The Defendants filed its Answer [ECF Nos. 10–11] on June 6, 2016. On 

November 18, 2016, the Defendants moved for Partial Summary Judgment. The Plaintiff filed its 

Response to the Defendants’ Motion [ECF No. 33] on December 16, 2016, and the Defendants’

Reply [ECF No. 37] was filed on December 27, 2016. 

STANDARD OF REVIEW

Summary judgment is warranted when “the movant shows that there is no genuine 

dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. 

Civ. P. 56(a). Summary judgment is the moment in litigation where the nonmoving party is 

required to marshal and present the court with evidence on which a reasonable jury could rely to 

find in that party’s favor. Goodman v. Nat’l Sec. Agency, Inc., 621 F.3d 651, 654 (7th Cir. 2010). 

A court should only deny a motion for summary judgment when the nonmoving party presents 

admissible evidence that creates a genuine issue of material fact. Luster v. Ill. Dep’t of Corrs., 

652 F.3d 726, 731 (7th Cir. 2011) (first citing United States v. 5443 Suffield Terrace, 607 F.3d 

504, 510 (7th Cir. 2010); then citing Swearnigen-El v. Cook Cty. Sheriff’s Dep’t, 602 F.3d 852, 

859 (7th Cir. 2010)). A court’s role in deciding a motion for summary judgment “is not to sift 

through the evidence, pondering the nuances and inconsistencies, and decide whom to believe. 

[A] court has one task and one task only: to decide, based on the evidence of record, whether 

there is any material dispute of fact that requires a trial.” Waldridge v. Am. Heochst Corp., 24 

F.3d 918, 920 (7th Cir. 1994). Material facts are those that are outcome determinative under the 

applicable law. Smith v. Severn, 129 F.3d 419, 427 (7th Cir. 1997). Although a bare contention 

that an issue of material fact exists is insufficient to create a factual dispute, a court must 

construe all facts in a light most favorable to the nonmoving party, view all reasonable inferences 

in that party’s favor, see Bellaver v. Quanex Corp., 200 F.3d 485, 491–92 (7th Cir. 2000), and 
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avoid “the temptation to decide which party’s version of the facts is more likely true,” Payne v. 

Pauley, 337 F.3d 767, 770 (7th Cir. 2003).

DISCUSSION

This Court has original jurisdiction over copyright claims pursuant to 28 U.S.C. 

§ 1338(a). The Copyright Act states that “[n]o civil action shall be maintained under [its] 

provisions . . . unless it is commenced within three years after the claim accrued.” 17 U.S.C. 

§ 507(b) (emphasis added). The Defendants argue that the recent Supreme Court decision in 

Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014), determined that a copyright 

claim “accrue[s]” at the time of the infringing act. The Plaintiff argues that Petrella did not 

change the Seventh Circuit “discovery rule” that a claim accrues when the injured party 

discovers or should have discovered with due diligence that an infringing act occurred. The 

Court must decide which party’s interpretation of the law is correct.

Petrella concerned the classic film Raging Bull, the copyright to which the plaintiff 

possessed and which she claimed MGM infringed by marketing and distributing it for roughly 

three decades. 134 S. Ct. at 1970–71. The question before the Supreme Court was limited to the 

“application of the equitable defense of laches to copyright infringement claims brought within 

the three-year look-back period.” Id. at 1972. In discussing the Copyright statute as a whole, the 

Supreme Court stated that in an infringement suit “the limitations period generally begins to run 

at the point when ‘the plaintiff can file suit and obtain relief.’” Id. at 1969. “A copyright claim 

thus arises or ‘accrue[s]’ when an infringing act occurs.” Id. But in a footnote, the Supreme 

Court noted that “nine Court of Appeals have adopted, as an alternative to the incident of injury 

rule, a ‘discovery rule,’ which starts the limitations period when ‘the plaintiff discovers, or with 

due diligence should have discovered, the injury that forms the basis for the claim,” and that it 
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would “not pass[] on the question” of which one was correct. Id. at 1969 n.4. Accordingly, the 

Supreme Court did not purport to change any accrual laws in its Petrella opinion. 

A recent Supreme Court decision confirms this reading of Petrella. See SCA Hygiene 

Prods. Aktiebolag v. First Quality Baby Prods., LLC, 137 S. Ct. 954 (2017). SCA Hygiene 

presented the same question—whether the equitable defense of laches brought within a statute’s 

limitations period—but in the similar context of the Patent Act. Id. at 959. The respondent

argued that “the accrual of a claim, the event that triggers the running of a statute of limitations, 

occurs when a plaintiff knows of a cause of action. Id. at 961. The Supreme Court noted that 

such a statement

is not ordinarily true. As we wrote in Petrella, “[a] claim ordinarily accrues ‘when [a] 

plaintiff has a complete and present cause of action. . . .’ ” While some claims are subject 

to a “discovery rule” under which the limitations period begins when the plaintiff 

discovers or should have discovered the injury giving rise to the claim, that is not a 

universal feature of statutes of limitations. . . . And in Petrella, we specifically noted that 

“we have not passed on the question” whether the Copyright Act’s statute of limitations 

is governed by such a rule. 

Id. at 962 (citations omitted). SCA Hygiene confirms that the Supreme Court has not weighed in, 

one way or another, on when a cause of action accrues for purposes of a copyright claim. 

The Seventh Circuit follows the “discovery rule” for accrual purposes. Gaiman v. 

McFarlane, 360 F.3d 644, 653 (7th Cir. 2004). Two Seventh Circuit opinions since Petrella

confirm that the Supreme Court’s decision did not abrogate the discovery rule within this Circuit. 

Like Petrella, Chicago Building Design, P.C. v. Mongolian House, Inc., 770 F.3d 610 (7th Cir. 

2014), involved a defendant’s infringing acts that occurred within the “three-year lookback 

period.” Id. at 616. To determine if the plaintiff’s complaint was time barred, “the right question 

to ask . . . [wa]s whether the complaint contain[ed] allegations of infringing acts that occurred 

within the three-year lookback period from the date on which the suit was filed.” Id. However, 
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the court “express[ed] no opinion” as to whether “Petrella abrogate[d] the discovery rule in 

copyright cases,” id. at 618, and thus it was not central to its holding.1 In Consumer Health 

Information Corp. v. Amylin Pharmaceuticals, Inc., 819 F.3d 992 (7th Cir. 2016), the Seventh 

Circuit considered a “dispute over copyright ownership.” Id. at 995. The Seventh Circuit stated 

that “when the gravamen of a copyright suit is a contest over copyright ownership, the claim 

accrues when the claimant has express notice of a competing claim of ownership.” Id. at 996. 

This rule for a copyright ownership claim was distinguished from an infringement claim, the 

latter of which accrued “at the time the wrong occur[ed].” Id. (citing Petrella, 134 S. Ct. at 

1969). The Court did not discuss Petrella further or its impact upon the discovery rule. 

Although the discovery rule may be abrogated within this Circuit someday, this Court is 

“bound to follow Seventh Circuit precedent.” Frerck v. Pearson Educ., Inc., 63 F. Supp. 3d 882, 

887 n.3 (N.D. Ill. 2014) (holding same). As that precedent stands today, the discovery rule 

controls the determination of when a copyright infringement claim accrues, and Petrella does not 

instruct otherwise. Accordingly, the Plaintiff’s claims regarding infringing acts that occurred 

more than three-years before this action commenced are not barred as a matter of law. The 

Defendants’ Motion for Partial Summary Judgment is denied.

 1 In remanding the case, the Seventh Circuit allowed for the possibility that the plaintiff could 

seek “a right to recover for infringing acts that occurred . . . outside the three-year lookback period,” 

which was not an issue properly before the court. Id. Assuming Petrella abrogated the discovery rule, 

such a suggestion would have been impossible because any infringing act that occurred greater than threeyears prior would necessarily have fallen outside the three-year lookback period and thus been time 

barred. The Seventh Circuit’s suggestion makes more sense if the discovery rule remained unchanged 

after Petrella, as the plaintiff could seek recovery for infringing acts that occurred outside the three-year 

lookback period so long as the plaintiff did not have actual or constructive knowledge.
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CONCLUSION

For the foregoing reasons, the Defendants’ Motion for Partial Summary Judgment [ECF 

No. 25] is DENIED.

SO ORDERED on April 12, 2017. 

s/ Theresa L. Springmann

CHIEF JUDGE THERESA L. SPRINGMANN

UNITED STATES DISTRICT COURT

FORT WAYNE DIVISION