warnock federal amended complaint

8/18/2019 Warnock Federal Amended Complaint

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IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF MISSISSIPPI

NORTHERN DIVISION

WARNOCK AND ASSOCIATES, LLC,

and RUDOLPH M. WARNOCK, JR., anindividual,

Plaintiffs,

v.

MADISON COUNTY, MISSISSIPPI,

DANIEL B. GUILLET, P.E., individually

and in his official capacity as Madison

County Engineer, TREY BAXTER,

individually and in his official capacity asMadison County Supervisor, SHEILA

JONES, individually and in her official

capacity as Madison County Supervisor,

DAVID BISHOP, individually and in his

official capacity as Madison County

Supervisor, GERALD STEEN,

individually and in his official capacity as

Madison County Supervisor, and PAUL

GRIFFIN, individually and in his official

capacity as Madison County Supervisor.

Defendants.

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CAUSE NO.: 3:16-cv-00068-CWR-

FKB

FIRST AMENDED COMPLAINT

(INJUNCTIVE RELIEF DEMANDED)(JURY TRIAL DEMANDED)

COME NOW the Plaintiffs Warnock & Associates, LLC, and Rudolph M. Warnock, Jr.,

and file this their First Amended Complaint against Defendants Madison County, Mississippi

(“Madison County” or the “County”), Dan Guillet, P.E., and Madison County Supervisors Trey

Baxter, Sheila Jones, David Bishop, Gerald Steen, and Paul Griffin, and in support thereof state as

follows:

Case 3:16-cv-00068-CWR-FKB Document 3 Filed 03/24/16 Page 1 of 28


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I. NATURE OF THE ACTION, PARTIES, JURISDICTION AND VENUE

1. This is an action for infringement of copyright in violation of the Copyright Act, 17 U.S.C.

§ 101 et seq., and for injunctive, declaratory and equitable relief, and for breach of contract

and bad faith.

2. Plaintiff Warnock & Associates, LLC, is a Mississippi limited liability company with its

principal place of business in Hinds County, Mississippi.

3. Plaintiff Rudolph “Rudy” M. Warnock, Jr., P.E., is an individual adult resident of Madison

County, Mississippi.

4.

Defendant Madison County, Mississippi, is a political entity created by the constitution

and laws of the State of Mississippi.

5. Defendant Daniel “Dan” B. Guillet is an individual adult resident of Madison County,

Mississippi, and County Engineer of Madison County.

6. Defendant Trey Baxter is an individual adult resident of Madison County, Mississippi and

member of the Madison County Board of Supervisors.

7.

Defendant Sheila Jones is an individual adult resident of Madison County, Mississippi and


8.

Defendant David Bishop is an individual adult resident of Madison County, Mississippi

and member of the Madison County Board of Supervisors.

9. Defendant Gerald Steen is an individual adult resident of Madison County, Mississippi and


10. Defendant Paul Griffin is an individual adult resident of Madison County, Mississippi and




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11. This Court has federal question jurisdiction pursuant to 28 U.S.C. §§ 1331, 1338(a), and

1367.

12. This Court is the proper venue for the instant dispute pursuant to 28 U.S.C. § 1391 and

1400(b) because Defendants reside within this judicial district and division and/or have

committed acts of infringement within this judicial district and division.

13. Defendants do not have sovereign immunity and are amenable to suit in this Court. The

materials here in issue fall within the “national protection” provided by the Copyright Act

and do not implicate the Mississippi Tort Claims Act. 17 U.S.C. § 511; 17 U.S.C. § 301;

28 U.S.C. § 2201; see also U.S. Const. Art. VI cl. 2 (the Supremacy Clause); Richard

Anderson Photography v. Brown, 852 F.2d 114 (4th Cir. 1989). Furthermore, suits for

injunctive and declaratory relief and for breach of an express contract do not implicate the

Mississippi Tort Claims Act.

14. Defendants do not have sovereign immunity under the Eleventh Amendment and are

amenable to suit in this Court, as counties are not considered arms of the state for purposes

of the Eleventh Amendment and Defendants can satisfy any monetary judgment without

burdening the State of Mississippi’s treasury. See, e.g., Black v. N. Panola Sch. Dist., 461

F.3d 584 (5th Cir. 2006).

II. FACTUAL ALLEGATIONS

15. The allegations of the foregoing paragraphs are incorporated as if fully set forth herein.

16. Plaintiff Warnock and Associates, LLC (“W&A”) is a Mississippi engineering firm owned

by Plaintiff Rudy Warnock (“Warnock”). Warnock has a civil engineering degree from

Mississippi State University.



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17. Plaintiffs have worked on numerous construction projects for Defendant Madison County,

Mississippi, including serving as County Engineer for over a decade.

18. As part of providing these engineering services, W&A and/or Warnock entered into several

different contracts with Madison County, covering all the work performed by W&A and/or

Warnock on construction projects throughout the county.

19. All work performed by Plaintiffs was authorized by the Madison County Board of

Supervisors, and properly entered in the Minutes.

20. Plaintiffs are owed monies on an estimated thirty-five (35) construction projects.

21.

A total balance in the principal amount of approximately $1,448,481.28

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is currently due

to Plaintiffs from Madison County for work performed under these contracts, which can

be broadly grouped into three (3) categories: (i) Project-Specific contracts (principal

balance of approximately $1,041,284.082; seven (7) projects); (ii) General Engineering

Services contract projects (principal balance of $163,013.20; fifteen (15) projects); and (iii)

State Aid contracts (principal balance of approximately $244,184.00; thirteen (13)

projects).3

1 Excluding pre-judgment and post-judgment interest, attorneys’ fees, costs, and other damages.

2 Bozeman Road is one of these seven projects. Plaintiffs’ engineering fee for the original plan on BozemanRoad was approximately $840,000 based on roughly $12,000,000 estimated construction cost. The re-design of the project to widen the road and add a median pursuant to federal and state requirementsincreased the estimated construction cost to $20,405,000, resulting in an engineering fee totaling

approximately $1,428,350. Plaintiffs completed 98% of that work prior to their termination, and thereforeMadison County owes Plaintiffs a total of $1,399,783 for the Bozeman Road work. Madison County has paid $670,000 for the work, leaving a remaining balance due Plaintiffs in the amount of $729,783, of which$151,200 has been invoiced. Accordingly, this amount of $1,041,284.08 includes the additional $578,583on Bozeman Road project that was not invoiced prior to litigation.

3 Inasmuch as the amounts owed on these State Aid projects are based on cost of construction, the exactamounts owed on these State Aid projects will be determined at trial, after final construction costs areknown. The contracts provide for 4.8% of construction cost to be paid for design, and 7.2% for construction



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22. The General Engineering Services contract, and some of these Project-Specific contracts

were recently terminated by the County, thereby also terminating any license or right to

use the copyrighted plans, or any other intellectual property belonging to Plaintiffs.

23. For the State Aid contracts, and for the remaining Project-Specific contracts, the County

breached the contract by its failure and refusal to pay the contractual amounts owed,

thereby also terminating any license or right to use the copyrighted plans, or any other

intellectual property belonging to Plaintiffs.

24. Defendants have given Plaintiffs no assurances of payment for their work on any of these

thirty-five (35) construction projects.

25. To the contrary, Defendants have refused to pay Plaintiffs for their work.

PROJECT-SPECIFIC CONTRACTS

26.

Some projects were assigned their own separate, project-specific contracts.

27. Relevant to this lawsuit, since April 2011, Warnock and Madison County have entered into

at least seven (7) project-specific contracts for work in Madison County: the North

Highland Colony Parkway (Exhibit A), Yandell Road Reconstruction (Exhibit B),

Bozeman Road (Exhibit C), Reunion Phase III-A (Exhibit D), Calhoun Station (Exhibit

E), Reunion Parkway II (Exhibit F), and Gluckstadt Road projects (Exhibit G).4

28. The language of these seven (7) Project-Specific contracts are nearly identical. The

following language found in each Project-Specific contract is relevant to Plaintiffs’ claims:

administration, for a total of 12% of final construction costs. Under the Project-Specific contracts betweenPlaintiffs and Madison County, Plaintiffs are paid 7% for design, and 7% for contract administration.

4 Page 2 of the Project Specific Agreements represents that the Agreement is made by and between theMadison County Board of Supervisors and “Rudy Warnock, P.E, Warnock & Associates.” On informationand belief, in following with industry rule and custom, a specific individual (in this case, Rudy Warnock)is listed as the engineer of record on project-specific contracts, though the engineering firm with which heis associated does the work as a whole.



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a. “Article 2.01(B): Owner shall pay Engineer as set forth in Exhibit C.”

b. “Article 3.02(C): If Owner authorizes changes in the scope, extent, orcharacter of the Project, then the time for completion of Engineer’s services, andthe rates and amounts of Engineer’s compensation, shall be adjusted equitably.”

c. “Article 6.03(A). All Documents are instruments of service in respect tothis Project, and Engineer shall retain an ownership and property interest therein(including the copyright and the right of reuse at the discretion of the Engineer)whether or not the Project is completed…”

d. “Article 6.03, Use of Documents (D). …Engineer grants Owner a license touse the [construction documents] on the Project….”

e. “Article 6.05(D) Payments Upon Termination. In the event of anytermination under paragraph 6.05, Engineer will be entitled to invoice Owner and

to receive full payment for all services performed or furnished and all ReimbursableExpenses incurred through the effective date of termination. Upon making such payment, Owner shall have the limited right to the use of Documents, at Owner’ssole risk, subject to the provisions of paragraph 6.03.E.”

29. Madison County has now terminated and/or breached all of Plaintiffs’ Project-Specific

contracts by its failure and refusal to pay same.

30. Plaintiffs have not received full payment for all services performed or furnished through

the effective date of termination.

31. Plaintiffs have not received full payment for all Reimbursable Expenses through the

effective date of termination.

32. Nevertheless, despite receiving cease and desist letters, Madison County continues to use

the copyrighted plans and other intellectual property belonging to Plaintiffs.

North Highland Colony Parkway Engineering Work

33.

Plaintiffs are the creators of a work of engineering entitled “North Highland Colony

Parkway.” Plans for “North Highland Colony Parkway” hereinafter will be referred to as

the “North Highland Colony Parkway Engineering Work.”



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34. Pursuant to Article 6.03(A) of the North Highland Colony Parkway contract (Exhibit A),

“All Documents are instruments of service in respect to this Project, and Engineer shall

retain an ownership and property interest therein (including the copyright and the right of

reuse at the discretion of the Engineer) whether or not the Project is completed…”

35. The North Highland Colony Parkway Engineering Work is an original work of authorship

of Plaintiffs.

36. The North Highland Colony Parkway Engineering Work is protected by copyright, and

Plaintiffs own copyrights in the North Highland Colony Parkway Engineering Work.

37.

Plaintiffs have applied for registration of the North Highland Colony Parkway Engineering

Work with the Register of Copyrights, paid the required fee, deposited the work in

question, and the Copyright Office has received the registration application. Plaintiffs are

awaiting issuance of a certificate of registration which, upon receipt, will be filed with the

Court.

Yandell Road Reconstruction Engineering Work

38.

Plaintiffs are the creators of a work of engineering entitled “Yandell Road

Reconstruction.” Plans for “Yandell Road Reconstruction” hereinafter will be referred to

as the “Yandell Road Reconstruction Engineering Work.”

39. Pursuant to Article 6.03(A) of the Yandell Road Reconstruction contract (Exhibit B),

“All Documents are instruments of service in respect to this Project, and Engineer shall

retain an ownership and property interest therein (including the copyright and the right of

reuse at the discretion of the Engineer) whether or not the Project is completed…”

40. The Yandell Road Reconstruction Engineering Work is an original work of authorship of

Plaintiffs.



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41. The Yandell Road Reconstruction Engineering Work is protected by copyright, and

Plaintiffs own copyrights in the Yandell Road Reconstruction Engineering Work.

42. Plaintiffs have applied for registration of the Yandell Road Reconstruction Engineering

Work with the Register of Copyrights, paid the required fee, deposited the work in

question, and the Copyright Office has received the registration application. Plaintiffs are

awaiting issuance of a certificate of registration which, upon receipt, will be filed with the

Court.

Bozeman Road Engineering Work

43.

Plaintiffs are the creators of a work of engineering entitled “Bozeman Road.” Plans for

“Bozeman Road” hereinafter will be referred to as the “Bozeman Road Engineering

Work.”

44.

Pursuant to Article 6.03(A) of the Bozeman Road Engineering Work contract (Exhibit

C), “All Documents are instruments of service in respect to this Project, and Engineer

shall retain an ownership and property interest therein (including the copyright and the

right of reuse at the discretion of the Engineer) whether or not the Project is

completed…”

45.

The Bozeman Road Engineering Work is an original work of authorship of Plaintiffs.

46. The Bozeman Road Engineering Work is protected by copyright, and Plaintiffs own

copyrights in the Bozeman Road Engineering Work.

47. Plaintiffs have applied for registration of the Work with the Register of Copyrights, paid

the required fee, deposited the work in question, and the Copyright Office has received the

registration application. Plaintiffs are awaiting issuance of a certificate of registration

which, upon receipt, will be filed with the Court.



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Reunion Parkway III-A Engineering Work

48. Plaintiffs are the creators of a work of engineering entitled “Reunion Parkway III-A.”

Plans for “Reunion Parkway III-A” hereinafter will be referred to as the “Reunion

Parkway III-A Engineering Work.”

49. Pursuant to Article 6.03(A) of the Reunion Parkway III-A contract (Exhibit D), “All

Documents are instruments of service in respect to this Project, and Engineer shall retain

an ownership and property interest therein (including the copyright and the right of reuse

at the discretion of the Engineer) whether or not the Project is completed…”

50.

The Reunion Parkway III-A Engineering Work is an original work of authorship of

Plaintiffs.

51. The Reunion Parkway III-A Engineering Work is protected by copyright, and Plaintiffs

own copyrights in the Reunion Parkway III-A Engineering Work.

52. Plaintiffs plan to apply for registration of the Reunion Parkway III-A Engineering Work

with the Register of Copyrights, pay the required fee, and deposit the Reunion Parkway

III-A Engineering Work. Once the application is completed, Plaintiffs anticipate seeking

leave to amend this lawsuit to include a copyright infringement claim on the Reunion

Parkway III-A Engineering Work.

Calhoun Station Engineering Work

53. Plaintiffs are the creators of a work of engineering entitled “Calhoun Station.” Plans for

“Calhoun Station” hereinafter will be referred to as the “Calhoun Station Engineering

Work.”

54. Pursuant to Article 6.03(A) of the Calhoun Station contract (Exhibit E), “All Documents

are instruments of service in respect to this Project, and Engineer shall retain an



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ownership and property interest therein (including the copyright and the right of reuse at

the discretion of the Engineer) whether or not the Project is completed…”

55. The Calhoun Station Engineering Work is an original work of authorship of Plaintiffs.

56. The Calhoun Station Engineering Work is protected by copyright, and Plaintiffs own

copyrights in the Calhoun Station Engineering Work.

57. Plaintiffs plan to apply for registration of the Calhoun Station Engineering Work with the

Register of Copyrights, pay the required fee, and deposit the Calhoun Station Engineering

Work. Once the application is completed, Plaintiffs anticipate seeking leave to amend this

lawsuit to include a copyright infringement claim on the Calhoun Station Engineering

Work.

Reunion Parkway II Engineering Work

58.

Plaintiffs are the creators of a work of engineering entitled “Reunion Parkway II.” Plans

for “Reunion Parkway II” hereinafter will be referred to as the “Reunion Parkway II

Engineering Work.”

59.

Pursuant to Article 6.03(A) of the Reunion Parkway II contract (Exhibit F), “All




60. The Reunion Parkway II Engineering Work is an original work of authorship of Plaintiffs.

61. The Reunion Parkway II Engineering Work is protected by copyright, and Plaintiffs own

copyrights in the Reunion Parkway II Engineering Work.

62. Plaintiffs plan to apply for registration of the Reunion Parkway II Engineering Work with

the Register of Copyrights, pay the required fee, and deposit the Reunion Parkway II



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Engineering Work. Once the application is completed, Plaintiffs anticipate seeking leave

to amend this lawsuit to include a copyright infringement claim on the Reunion Parkway

II Engineering Work.

Gluckstadt Road Engineering Work

63. Plaintiffs are the creators of a work of engineering entitled “Gluckstadt Road.” Plans for

“Gluckstadt Road” hereinafter will be referred to as the “Gluckstadt Road Engineering

Work.”

64. Pursuant to Article 6.03(A) of the Gluckstadt Road contract (Exhibit G), “All




65.

The Gluckstadt Road Engineering Work is an original work of authorship of Plaintiffs.

66. The Gluckstadt Road Engineering Work is protected by copyright, and Plaintiffs own

copyrights in the Gluckstadt Road Engineering Work.

67.

Plaintiffs plan to apply for registration of the Gluckstadt Road Engineering Work with the

Register of Copyrights, pay the required fee, and deposit the Gluckstadt Road Engineering

Work. Once the application is completed, Plaintiffs anticipate seeking leave to amend this

lawsuit to include a copyright infringement claim on the Gluckstadt Road Engineering

Work.

Defendants’ Infringement of the Project-Specific Contract Work

68. W&A and/or Warnock have properly performed all of their work for Madison County

under the seven (7) subject Project-Specific contracts.



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69. As of the filing of the instant Complaint, Madison County has not filed any complaint or

taken any issue with any of W&A and/or Warnock’s performance under the subject

Project-Specific contracts.

70. However, despite demands for payment, Madison County has refused to remit full payment

under the Project-Specific contracts. See Exhibit H, a compiled listing of Plaintiffs’

outstanding invoices to Madison County; see also Exhibit I, December 7, 2015 Letter to

Madison County; Exhibit J, December 21, 2015 Letter to Madison County; Exhibit K,

January 29, 2016 Letter to Madison County.

71.

At all times, including after Madison County’s termination of Plaintiffs from the position

of County Engineer in December 2015, W&A and Warnock own the drawings,

specifications, etc., created by them under the Project-Specific contracts.

72.

Also, at termination, W&A became entitled to full payment of all amounts due W&A for

services performed under the Project-Specific contracts, and, until such full payment,

Madison County has no right or license to possess or use the drawings, specifications, etc.,

created by W&A under the Project-Specific contracts.

73. Specifically, unless and until the County “mak[es] such [final] payment,” the County does

not have “the limited right to the use of Documents, at Owner’s sole risk...”

74. Nevertheless, without final payment, the County has used and is currently using some of

these copyrighted works owned by W&A and Warnock.

GENERAL ENGINEERING SERVICES CONTRACT

75. In January 2012, W&A entered into a General Engineering Services contract with Madison

County to cover additional, smaller-value work performed by W&A for Madison County.

See Exhibit L, a true and correct copy of the General Engineering Services contract.



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76. This General Engineering Services contract was a four-year continuation of the prior

general engineering services contract, which was identical in all material aspects.

77. As County Engineer, Plaintiffs billed Madison County under an open account.

78. At least some of the projects governed by the General Engineering Services contract and/or

Project-Specific contracts received federal funding.

79. W&A and/or Warnock have properly performed all of their work under the subject

contracts.

80. As of the filing of the instant Complaint, Madison County has not filed any complaint or

taken any issue with any of W&A and/or Warnock’s performance under the General

Engineering Services contracts.

81. However, despite demands for payment, Madison County has failed to remit full payment

under the General Engineering Services contract after terminating same on January 4,

2016, and receiving W&A’s final invoice. See Ex. H, Ex. I, Ex. J, and Ex. K.

STATE AID CONTRACTS

82.

In addition to contracts with Madison County, W&A also contracted with the State of

Mississippi on thirteen (13) projects in Madison County known as State Aid projects.

83.

Plaintiffs are currently owed approximately $244,184.00 for work completed on thirteen

(13) State Aid projects.

84. Inasmuch as the amounts owed on these State Aid projects are based on cost of

construction, the exact amounts owed on these projects cannot yet be finally determined.

85. The State Aid Project contract language indicates that, for this work, the County is to pay

the engineers (i.e., Plaintiffs) from its own funds and then receive reimbursement from the

state.



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93. Although Plaintiffs have not received written termination letters on the other projects,

Madison County has taken the position that Plaintiffs are terminated on all Madison County

work, including project-specific work, general services, and from the State Aid projects.5

94. At the January 19, 2016, meeting of the Madison County Board of Supervisors, Supervisor

David Bishop made a motion, seconded by Supervisor Paul Griffin, to approve a payment

of some W&A invoices totaling $91,330.006. See Excerpt of Minutes of January 19, 2016,

Board of Supervisors meeting attached hereto as Exhibit M.

95. The Madison County Journal, a newspaper of record, reported that following the meeting,

Board President Trey Baxter told its reporter that at least $91,000.00 in invoices “was legal

and ‘we have to pay what the law says.’” See January 20, 2016, article attached hereto as

Exhibit N.

96.

Despite that admission that the Board owes Plaintiffs payment and, therefore, has not

fulfilled its obligation of “full payment” required before it assumes ownership of plans

prepared by W&A and/or Warnock, on information and belief, at the January 19, 2016,

meeting of the Madison County Board of Supervisors, Board President Trey Baxter stated

during public discussion that the Board could and/or would direct the Madison County

Sheriff to enter Plaintiffs’ offices and take plans for Madison County projects.

97. At the same time it has refused to pay W&A and/or Warnock monies indisputably earned,

Madison County also is attempting to compel Plaintiffs to give Madison County ownership

5 When a new board of supervisors is elected for a county and they wish to replace the engineers on StateAid projects, typically the State of Mississippi, the county, and the county engineer will enter into atransition agreement whereby the engineers complete the phase that they are working on—whether in thedesign or contract administration phase. Here, Madison County has refused to enter into any suchstandard transition agreement. Therefore, the status of these projects is in limbo.

6 Plaintiffs do not concede, and expressly dispute, that $91,330.00 represents the total amount owed them.



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of their drawings in contravention to the clear language of the contracts. See, e.g., Exhibit

O, January 27, 2016, letter to Rudy Warnock demanding delivery of Yandell Road project

plans.

98. As demonstrated by Ex. O, Madison County seeks to compel Plaintiffs to submit their

“outstanding invoices, project plans, and files,” in direct defiance of both the express

language of the project-specific contract and the copyright protection afforded Plaintiffs’

plans by statute and the General Engineering Services contract. See Ex. B, Section 6.03;

Ex. L, Section 5.1.

99.

Furthermore, this demand to submit plans for the Yandell Road project was made with the

intent to use Warnock & Associates’ project plans, without the permission or authority of

Plaintiffs, and without compensation.

100.

On February 1, 2016, Plaintiffs made a formal, written demand for mediation of the dispute

regarding unsettled claims, as provided under Paragraph 6.08 of the Project Specific

Agreements. See Exhibit P, February 1, 2016, Letter of Demand for Mediation.

101.

On February 8, 2016, Plaintiffs responded to Madison County’s request for Warnock to

submit outstanding invoices, project plans, and files by a letter in which it made a written

demand for assurances that Madison County and its contractors, subcontractors, suppliers,

and other architecture and engineering design professionals, would immediately cease and

desist use of Plaintiffs’ plans, drawings, specifications, or any other work product to close

out the Yandell Road or other projects. See Exhibit Q, February 8, 2016 letter re:

Infringement of Copyrights.



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102. The February 8 letter requested such written assurances by return of the letter, with a

signature of a Madison County representative, within five (5) days. To date, the letter has

not been returned.

103. On February 12, 2016, Plaintiffs informed Mr. Guillet that they had submitted a Copyright

Registration Application for the engineering drawings on the North Highland Colony

Parkway Project. See Exhibit R, February 12, 2016 letter Re: Infringement of Copyrights.

104. In that letter, Plaintiffs renewed their prior request that Madison County cease and desist

use of their work product. Id.

105.

Despite Plaintiffs’ multiple demands that Madison County cease and desist unauthorized

and improper use of its protected work product, the Madison County Board of Supervisors

Agenda for February 16, 2016, included the possible closeout of the North Highland Colony

Parkway Project through payment of two claims to Dickerson & Bowen, Inc. (“D&B”) for

pay applications D&B submitted after Plaintiffs had been terminated by the County. See

Exhibit S, Madison County Claims Docket excerpt.

106.

Plaintiffs did not certify the D&B pay applications listed on the February 16, 2016, Board

of Supervisors Agenda, because they were no longer the engineers for the Project.

107.

Indeed, Plaintiffs had previously rejected the subject D&B pay applications.

108. However, D&B’s pay applications were certified by Defendant Dan Guillet, using

Plaintiffs’ copyrighted work. Pay applications can only properly be paid if certified by an

architect or engineer who has the lawful right to use the copyrighted plans.

109. Similarly, on the Yandell Road project, Defendant Dan Guillet signed the general

contractor’s pay applications although neither he nor any other Defendant had any lawful



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right to use Plaintiffs’ copyrighted plans. See Exhibit T, Yandell Road Payment

Application.

110. Under both the terms of the Project Specific Contract and federal copyright law, Plaintiffs

are the only engineer with right to use its work product at this time.

111. In addition to Madison County’s breach of its obligations to pay W&A balances due under

the contracts discussed above, Plaintiffs are entitled to relief for past and future copyright

infringement arising from the unauthorized use of Plaintiffs’ copyrighted work product. The

relief available for such infringements includes:

•

Injunctive relief. 17 U.S.C § 502.

• Actual damages and profits, or statutory damages in an amount up to $150,000 per each

infringed work. 17 U.S.C. § 504(b) and (c), and

• Impounding and destruction of infringing copies of protected work. 17 U.S.C. § 503.

CAUSES OF ACTION

I. COPYRIGHT INFRINGEMENT

112. Plaintiffs incorporate and reallege each of the preceeding paragraphs.

113. Plaintiffs own a valid copyright in the project plans for, among other projects, the Yandell

Road Project, the North Highland Colony Parkway Project, and the Bozeman Road Project

(collectively, the “Copyrighted Work”).

114. Plaintiffs have applied for registration of the Copyrighted Work, paid the required fee,

deposited the work in question, and the Copyright Office has received the registration

application pursuant to 17 U.S.C. § 411(a). See Exhibit U, Applications for the Work.

115. On or about January 27, 2016, 2016, Dan Gaillet, on behalf of the County of Madison,

demanded that Plaintiff Rudy Warnock submit “any and all…project plans, and files [for



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the Yandell Road project] in order that we may complete and close out this project.” See

Ex. O.

116. This demand was made with the intent to copy and/or use Plaintiffs’ project plans, without

the permission or authority of Plaintiffs, and without compensating them for the plans and

in violation of Plaintiffs’ rights under 17 U.S.C. § 106.

117. Plaintiffs granted Madison County a non-exclusive license to utilize its copyrights in

connection with past and ongoing projects, but such license was specifically contingent

upon full payment to Plaintiffs.

118.

Given that the County has admittedly failed to remit full payment for the use of Plaintiffs’

Copyrighted Work, all licenses are accordingly void.

119. Additionally, the Madison County Board of Supervisors Agenda for February 16, 2016,

indicates additional use of Plaintiffs’ project plans without permission or authority,

inasmuch as it includes the possible closeout of the Highland Colony Parkway Project

through payment of two claims to D&B for pay applications submitted after Plaintiffs had

been terminated by the County.

120. These pay applications can only properly be paid if certified by an architect or engineer

who has the lawful right to use the work product.

121. Yet, under both the terms of the Project Specific Contract and federal copyright law,

Plaintiffs are the only engineer with right to use its work product at this time.

122. Upon information and belief, Madison County continues to utilize Plaintiffs’ plans on

several ongoing projects without right or permission, including the use and/or dissemination

of Plaintiffs’ Copyrighted Plans by Dan Gaillet and other contractors, subcontractors, and

engineers, and the creation of unauthorized derivative works.



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123. The infringement committed by Madison County is willful and in disregard of Plaintiffs’

rights under the Copyright Act.

124. Plaintiffs have been damaged by Madison County and will continue to be damaged if

Madison County’s infringement continues.

125. The harm caused to Plaintiffs is irreparable.

126. Accordingly, Plaintiffs seek relief under the Copyright Act as follows:

a. Injunctive relief prohibiting current or future use of Plaintiffs’ Copyrighted Plans

pursuant to 17 U.S.C. § 502;

b.

Impounding and disposition of all unauthorized copies or derivate works pursuant

to 17 U.S.C. § 503;

c. Actual damages or statutory damages up to $30,000, and up to $150,000 for willful

infringement, pursuant to 17 U.S.C. § 504; and

d. Costs and attorney’s fees pursuant to 17 U.S.C. § 505.

II. CONTRIBUTORY INFRINGEMENT

127.

The allegations of the foregoing paragraphs are incorporated as if fully set forth herein.

128. The individual Defendants named herein all had or have knowledge of the infringing

activity of Madison County.

129. The individual Defendants named herein induced, caused or materially contributed to the

infringing conduct of Madison County through their actions as members of the Madison

County Board of Supervisors and County Engineer by causing Madison County to infringe

upon Plaintiffs’ copyrighted plans and using those plans without Plaintiffs’ consent after

voluntarily terminating W&A’s contracts, without payment.



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130. As a result of this contributory infringement, Plaintiffs have been damaged, and face

continued and irreparable harm if the individual Defendants continue to infringe their

copyrights, and continue to induce Madison County to do so as well.


e. Injunctive relief prohibiting current or future use of Plaintiffs’ Copyrighted Plans


f. Impounding and disposition of all unauthorized copies or derivate works pursuant

to 17 U.S.C. § 503;

g.

Actual damages or statutory damages up to $30,000, and up to $150,000 for willful


h. Costs and attorney’s fees pursuant to 17 U.S.C. § 505.

III. VICARIOUS INFRINGEMENT


133. Defendant Dan Gaillet currently serves as County Engineer for Madison County.

134.

Upon information and belief, Gaillet has and continues to seek to infringe upon Plaintiffs’

Copyrighted Plans to Plaintiffs’ detriment.

135.

Furthermore, as County Engineer replacing Plaintiffs with the aid of the individual

members of the Board of Supervisors, he has the right and ability to supervise the infringing

activity, and also has a direct financial interest in the activities.

136.

As a result of this vicarious infringement, Plaintiffs have been damaged, and face continued

and irreparable harm if Dan Gaillet continues to infringe their copyrights and oversee

Madison County’s infringement to his own financial benefit.




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i. Injunctive relief prohibiting current or future use of Plaintiffs’ Copyrighted Plans


j. Impounding and disposition of all unauthorized copies or derivate works pursuant

to 17 U.S.C. § 503;

k. Actual damages or statutory damages up to $30,000, and up to $150,000 for willful


l. Costs and attorney’s fees pursuant to 17 U.S.C. § 505.

IV. DECLARATORY JUDGMENT—28 U.S.C. § 2201


139. Pursuant to United States copyright law, 17 U.S.C. § 101 et seq., Plaintiffs’ engineering

drawings and schematics are entitled to copyright protection in favor of Plaintiffs, including

the right to exclusive use and reproduction, from the moment they are created.

140. Pursuant to their contracts with Madison County, W&A and Warnock granted Madison

County a limited license to use their engineering drawings and other documents in

connection with the relevant contractual projects.

141.

However, as the contracts make clear, “Engineer shall retain an ownership and property

interest [in the project documents] (including the copyright and the right of reuse at the

discretion of the Engineer) whether or not the Project is completed.” See Exs. A-G, Section

6.03; see also Ex. L, Section 5.1 (“All Drawings, Specifications and other work product of

the ENGINEER for this Project are instruments of service for this Project only and shall

become the property of the OWNER upon full payment for services as agreed upon.”).



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142. After terminating Plaintiffs’ contracts and refusing to remit full payment for Plaintiffs’

performed and accepted work, Madison County threatened legal action against Plaintiffs

and/or otherwise seeking use and ownership of Plaintiffs’ engineering drawings and

specifications in contravention of the parties’ contracts.

143. As set forth above, the threats are not only of litigation in the courts, but also wrongful

entry of Plaintiffs’ offices by Madison County law enforcement to seize the plans in direct

violation of the express contractual terms to which Madison County agreed (namely, that it

owns the plans only upon full payment and that Warnock retains copyright protection in the

documents).

144. By simultaneously admitting it owes Plaintiffs payment for invoices while threatening to

wrongfully and forcibly confiscate Plaintiffs’ protected plans, Madison County has created

a dispute that is properly decided by this Court.

145. Accordingly, Plaintiffs seek a declaratory judgment that (i) until full and final payment is

made, Plaintiffs are entitled to the full protection and ownership of their engineering

drawings under United States copyright law, 17 U.S.C. § 101 et seq., and (ii) to the extent

Plaintiffs have licensed any such drawings to Madison County, such licenses have

terminated and expired because of Madison County’s failure to comply with their payment

terms.

V. BREACH OF CONTRACT

146. Plaintiffs incorporate and reallege each of the preceding paragraphs.

147. Madison County entered into a contract with Plaintiffs for engineering services related to

planning, zoning, and construction, including, but not limited to, those related to

construction, re-construction, modification and/or improvement of Madison County



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infrastructure systems, streets, roads, facilities, and other matters that are the responsibility

of Madison County. See Ex. L.

148. The terms of this contract are set forth in the General Engineering Services contract signed

by Gerald Steen on behalf of the Madison County Board of Supervisors and Rudy M.

Warnock on behalf of Warnock. Id.

149. In addition to the General Engineering Services contract, Madison County entered at least

seven (7) project-specific agreements. Exs. A-G.

150. Plaintiffs performed all of their obligations under the General Engineering Services

contract and the Project-Specific agreements.

151. Plaintiffs have submitted invoices for services rendered.

152. The General Engineering Services contract requires Madison County to fulfill certain

obligations, including:

Article 2, Owner’s [Madison County’s] Responsibilities: The OWNER shall: 2.11:Compensate the ENGINEER [W&A] for services rendered under this Agreement.Article 4, Payments to the Engineer: 4.1: Progress payments shall be made on anhourly basis for the services rendered and as indicated within this Agreement andshall be due and owing within thirty days of the ENGINEER’s submittal of hismonthly statement. Past due amounts owed shall include a charge at the maximumlegal rate of interest from the thirtieth day. (Emphasis added.)

Article 5, General Provisions

5.1: Ownership of Documents: All Drawings, Specifications and other work product of the ENGINEER for this Project are instruments of service for this Projectonly and shall become the property of the OWNER upon full payment for servicesas agreed upon. (Emphasis added.)

5.6.1: Should litigation or arbitration occur between the two parties relating to the provisions of this Agreement, all litigation or arbitration expenses, collectionexpenses, witness fees, court costs and attorneys’ fees incurred by the prevailing party shall be paid by the non-prevailing party to the prevailing party.

153. Additionally, the Project-Specific agreements provide:



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Article 2—Owner’s Responsibilities, 2.01(B): Owner shall pay Engineer as setforth in Exhibit C.

Article 4—Invoices and Payments, 4.01 Invoices….Invoices are due and payablewithin thirty (30) days of receipt.

Article 6.03, Use of Documents (A). All Documents are instruments of service inrespect to this Project, and Engineer shall retain an ownership and property interesttherein (including the copyright and the right of reuse at the discretion of theEngineer) whether or not the Project is completed… (Emphasis added.)

6.05(D) Payments Upon Termination. In the event of any termination under paragraph 6.05, Engineer will be entitled to invoice Owner and to receive full payment for all services performed or furnished and all Reimbursable Expensesincurred through the effective date of termination. Upon making such payment,Owner shall have the limited right to the use of Documents, at Owner’s sole risk,

subject to the provisions of paragraph 6.03.E. (Emphasis added.)

154. The General Engineering Services contract was terminated by the Madison County Board

of Supervisors on January 4, 2016, as memorialized by a letter from the Madison County

Board Attorney dated January 22, 2016. See Exhibit V, a true and correct copy of the

January 22, 2016 letter from Madison County.

155. The last invoice submitted by Plaintiffs is dated January 6, 2016.7

156.

By and through Madison County’s conduct, as set forth herein, and as will be shown at

trial of this matter, Madison County breached these contracts by failing to provide payment

for services provided.

157. Prior to filing the instant suit, counsel for Plaintiffs sent Madison County correspondences

on December 7, 2015, and December 21, 2015 that relate to some of the past-due invoices.

158. On January 29, 2016, Plaintiffs made a written demand for payment owed for past due

invoices. After receipt of this demand, Madison County still failed and refused to agree that

the invoices were valid.

7 At least one more invoice will be sent by Plaintiffs covering the increased Engineer’s Estimate on theBozeman Road project.



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159. As a result of these acts and omissions by Madison County, Plaintiffs have suffered

damages as set forth herein.

PRAYER FOR RELIEF

WHEREFORE, PREMISES CONSIDERED, Plaintiffs Warnock & Associates, LLC and

Rudy Warnock, pray for judgment against Defendants Madison County, Mississippi, Dan Guillet,

P.E., and Madison County Supervisors Trey Baxter, Sheila Jones, David Bishop, Gerald Steen,

and Paul Griffin as follows:

a. Injunctive relief pursuant to 17 U.S.C. § 502 prohibiting current or future use of

Plaintiffs’ copyrighted plans;

b. Defendants and their officers, agents, servants, employees, affiliated entities, and

all of those in active concert with them, be preliminarily and permanently enjoined

from committing the acts alleged herein in violation of 17 U.S.C. § 501;

c. During the pendency of this lawsuit, Defendants be required to account to the

Plaintiffs for the extent of the infringements;

d.

Defendants to deliver to the Plaintiffs all copies of the copyrighted plans;

e. Impounding and disposition of all unauthorized copies or derivate works pursuant

to 17 U.S.C. § 503;

f. Defendant Dan Guillet, P.E. be required to pay Plaintiffs all profits earned by him

and his officers, agents, servants, employees, affiliated entities, and all of those in

active concert with him;

g. Each of Defendants Madison County, Mississippi, and Supervisors Trey Baxter,

Sheila Jones, David Bishop, Gerald Steen, and Paul Griffin be required to pay



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Plaintiffs actual damages or statutory damages up to $30,000 per unintentional

infringement, and $150,000 per willful infringement, pursuant to 17 U.S.C. § 504;

h. A declaratory judgment that (i) Plaintiffs are entitled to the full protection and

ownership of their engineering drawings under United States copyright law, 17

U.S.C. § 101 et seq., on all Project-Specific, General Engineering Services, and

State Aid projects and (ii) to the extent Plaintiffs have licensed any such drawings

to Madison County, such licenses have terminated and expired because of Madison

County’s failure to comply with their payment terms;

i.

Actual damages in the principal amount of no less than $1,448,481.28

($1,041,284.08 under project-specific contracts; $163,013.20 under General

Engineering Services contract; and $244,184.00 under State Aid contracts);

j.

Pre-judgment interest in the maximum amount allowed by law from the date

services were last provided to the date of entry of the judgment;

k. Post-judgment interest in the maximum amount allowed by law from the date of

entry of the judgment until paid;

l. Costs and reasonable attorney’s fees incurred herein pursuant to 17 U.S.C. § 505,

and pursuant to the parties’ contract, the exact amount to be shown at the trial of

this cause; and,

Such other and further relief as this Court may deem just and proper.

Respectfully submitted,

s/Dorsey R. Carson, Jr.___________ Dorsey R. Carson, Jr., MSB #10493David S. Humphreys, MSB #100085Julie C. Skipper, MSB #101591



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S. Anna Powers, MSB #103201Attorneys for Plaintiffs Rudy Warnock and Warnock & Associates,

LLC

OF COUNSEL:

THE CARSON LAW GROUPCapital Towers125 South Congress Street, Suite 1336Jackson, Mississippi 39201Telephone: (601) 351-9831Facsimile: (601) [email protected]@thecarsonlawgroup.com [email protected]

[email protected]

mailto:[email protected]:[email protected]:[email protected]:[email protected]