MARCH/APRIL 2016
VOLUME 22
NUMBER 2
DEVOTED TO
INT ELLECTUAL
P RO PERTY
LIT IGATION &
ENFORCEMENT
Edited by Gregory J. Battersby
and Charles W. Grimes
Litigator
Copyright Protection for Architectural
Works and the Effect on Infringement
Claims
Ray K. Harris and Blake Atkinson
Ray K. Harris practices at Fennemore Craig in
Phoenix, AZ, in the area of commercial litigation,
which includes patent, trade secret, trademark, trade
dress, and copyright disputes. His representation
also includes enforcement of licensing provisions
related to intellectual property.
Blake Atkinson practices a broad spectrum of
intellectual property law at Fennemore Craig,
including patent prosecution and litigation,
trademark registration and litigation, and copyrights.
His experience also includes corporation contract
drafting, Digital Millennium Copyright Act and
Online Copyright Infringement Liability Limitation
Act compliance, and consumer rights litigation.
Copyright infringement claims arise with increasing
frequency for architectural services. While determining whether infringement has occurred is case specific,
two broad issues regularly recur: (1) what copyright law
protects; and (2) the scope of copyright protection.1 The
legal principles applied to resolve these issues are not
unique to cases involving architectural work, but the
decided cases demonstrate both issues tend to resolve
against a finding of infringement in architectural cases.
While exceptions exist, after examining floor plans and
elevations, most cases find limited copyright protection
and no infringement of protected material. This article
examines the rationale for limited copyright protection
of architectural works.
Copyright Only Protects
the Author’s Expression
1.
2.
The plaintiff must identify the source(s) of the
alleged similarity between his work and the defendant’s work.
Using analytic dissection, and, if necessary, expert
testimony, the court must determine whether any
of the allegedly similar features are protected by
copyright … [U]nprotectable ideas must be separated
from potentially protectable expression; to that
expression, the court must then apply the relevant
limiting doctrines in the context of the particular
medium involved, through the eyes of the ordinary
consumer of that product.5
Analytic dissection is intended to ensure copyright
protection extends only to the expression employed,
not the ideas of the work.6 Elements dictated by
efficiency or functionality also may be beyond the
scope of copyright protection.7 “Similarly, expressions
that are standard, stock, or common to a particular
subject matter or medium are not protectable under
copyright law.”8
What Is Protected in Architectural
Works
Others May Freely Copy a Work’s
Ideas and other Unprotected
Elements
Plans Are Protected As Technical
Drawings
Copyright protection cannot extend to “any idea,
procedure, process, system, method of operation,
concept, principle or discovery regardless of the form
in which it is described, explained, illustrated, or
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embodied …. ”2 Ideas cannot be protected; “otherwise,
the first to come up with an idea will corner the market.”3 When the idea only can be expressed in one or
a few ways, the merger doctrine prevents protecting
the expression at all (the expression is merged with
the idea).4
In the Ninth Circuit, a copyright dispute proceeds in
steps. This process helps identify the expression protected by copyright law.
Prior to 1990, copyright generally was understood to
protect an author’s expression as fixed in written architectural plans.9 Plans protected as technical drawings
under § 102(a)(5) do not require sufficient detail from
which a building could be constructed.10
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The Design of a Building—“The Overall
Form As Well As the Arrangement and
Composition of Spaces and Elements
in the Design”—Is Protected As an
Architectural Work
cloverleafs, dams, walkways, tents, recreational vehicles,
mobile homes and boats.”19
Architects could protect “technical drawings,” under
the Copyright Act of 1976, but a building with an
“intrinsically utilitarian function” was subject to only
limited protection as a “useful article.”11
Functional Requirements and
“Individual Standard Features”
Are Not Protected by the Copyright
in an Architectural Work
The rule which emerges from these cases is that one
may construct a house which is identical to a house
depicted in copyrighted architectural plans, but
one may not directly copy those plans and then use
the infringing copy to construct the house.12
Legislation changed this rule. Now structures, as well as
plans, are subject to copyright protection.13
However, the protection afforded by the 1990 amendment is directed primarily at protecting the intellectual property existing in the design of a physical
building. For example, prior to the 1990 Amendment,
a person could go to a building, take measurements,
make sketches, or otherwise record the building, and
replicate the building without obtaining permission
from the original designer of the building. The 1990
Amendment was meant to prevent such use of intellectual property without permission.
The Court interprets the 1990 Amendment primarily as providing previously lacking copyright
protection to physical architectural works, not
drawings of such works. Indeed, drawings, whether
of architectural works, or otherwise, have long
enjoyed copyright protection.14
Under the Architectural Works Copyright Protection
Act (1990), “the design of a building as embodied in
any tangible medium of expression, including a building, architectural plans, or drawings” is protected by
copyright law.15 Protection extends to “the overall form
as well as the arrangement and composition of spaces
and elements in the design,” but does not extend to “individual standard features” such as windows and doors.16
Construction of a building may not involve copying the plans, and may not infringe the copyright in
the plans, but construction does infringe the copyright
in the architectural work.17 The Architectural Works
Copyright Protection Act, however, only protects “buildings,” “humanly habitable structures that are intended to
be both permanent and stationary.”18 The definition of
a building excludes other structures, “such as bridges,
2
What Is Not Protected
by Copyright
“The problem of distinguishing an idea from its expression is particularly acute when the work of ‘authorship’
is of a functional nature, as is a plan for the accomplishment of an architectural or engineering project.”20 Thus
a site plan that “sets forth the existing physical characteristics of the site” cannot protect those facts.21 Nor does
protection extend to features mandated by residential
restrictions in the community.22
Functional requirements are not protected by the
copyright in an architectural work. Copyright protection for architectural works applies only when “the
design elements are not functionally required.”23
First, an architectural work should be examined
to determine whether there are original design elements present, including overall shape and interior
architecture. If such design elements are present, a second step is reached to examine whether
the design elements are functionally required. …
Protection would be denied for the functionally
determined elements, but would be available for the
nonfunctional determined elements.24
Generalized Notions of Where
to Place Functional Elements Are
Ideas or Concepts Not Protected
from Copying
As discussed above, copyright protects only the expression of an idea, not the idea itself.
[G]eneralized notions of where to place functional
elements, how to route the flow of traffic, and what
methods of construction and principles of engineering to rely on, these are “ideas” that may be
taken and utilized by a successor without violating
the copyright of the original “author” or designer.25
Similarities to the copyrighted plans or building must
relate to protected expression.
Not all copying from copyrighted material is necessarily an infringement of copyright. There are
elements of a copyrighted work that are not protected even against intentional copying. It is a
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MARCH/APRIL 2016
fundamental principle of our copyright doctrine
that ideas, concepts, and processes are not protected
from copying.26
Placing a bathroom adjacent to a bedroom or a walkin closet in a master bedroom in a house are ideas not
capable of copyright protection. An open-concept floor
plan with three bedrooms running along one side of the
home has been characterized as “a standard architectural style used by architects and builders throughout
the country.”27 An “open floor plan with the master on
one side of the house and two bedrooms on the opposite
side” is also “common and functional” and not protected
by copyright.28
Similar limitations on copyright protection apply to all
architectural designs.29 “Indeed, were we to permit plaintiffs to seek recovery for the alleged infringement of, for
instance, “architecture that was light, airy, transparent,
made of glass with hints of traditional materials,” we
would directly contravene the underlying goal of copyright to “encourage[ ] others to build freely upon the
ideas and information conveyed by a work.”30
The Scope of Copyright
Protection
How Copyright Infringement
Is Determined
A copyright infringement claim requires proof of:
(1) ownership of a valid copyright; and (2) copying of
protected expression (“constituent elements of the work
that are original.”).31 The “ownership” element usually
is established by proving Copyright registration.32 The
“copying” element is satisfied by unauthorized exercise
of any of the author’s exclusive rights to copy, distribute
Exhibit 1
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IP Litigator
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sufficiently extensive to constitute an unlawful appropriation (the intrinsic test). Analytic dissection is used to
determine if the works are substantially similar in ideas
and expression under the extrinsic test.35
Whether the similarities are sufficiently extensive to
constitute an unlawful appropriation depends on the
possible choices in expression available to the author:
Exhibit 2
If there’s a wide range of expression (for example,
there are gazillions of ways to make an aliensattack movie), then copyright protection is “broad”
and a work will infringe if it’s ‘substantially similar’
to the copyrighted work.36
If there’s only a narrow range of expression (for
example, there are only so many ways to paint a
red bouncy ball on blank canvas), then copyright
protection is “thin” and a work must be “virtually
identical” to infringe.37
The Required Similarity
in Expression
Copying a work may be proven indirectly by showing
that the defendant had access to the plaintiff’s work and
that there is substantial similarity between plaintiff’s
work and the defendant’s work. Similarity must be based
on original design elements that express the designer’s
creativity. Modest dissimilarities are significant when the
design options are limited.
The Substantial Similarity Standard
and display the copyrighted work and create derivative
works.33
In the Ninth Circuit, after identifying the expression protected by copyright law, a third step determines the scope
of protection in terms of the degree of copying required:
(3) Having dissected the alleged similarities and considered the range of possible expression, the court
must define the scope of the plaintiff’s copyright—
that is, decide whether the work is entitled to ‘broad’
or ‘thin’ protection. Depending on the degree of protection, the court must set the appropriate standard
for a subjective comparison of the works to determine whether, as a whole, they are sufficiently similar
to support a finding of illicit copying.34
In the Ninth Circuit, substantial similarity requires two
levels of inquiry: (1) whether the similarities in the two
works are sufficient to permit an inference of copying
(the extrinsic test); and (2) whether the similarities are
4
Defining Substantial Similarity. “Determinations of
infringement of architectural works are to be made
according to the same standard applicable to all other
forms of protected subject matter.”38 Copying can be
inferred through circumstantial evidence of access, if
the copyrighted and allegedly infringing materials are
“substantially similar.”39 “Substantial similarity” means
“the accused work is so similar to the plaintiff’s work
that an ordinary reasonable person would conclude that
the defendant unlawfully appropriated the plaintiff’s
protectable expression by taking material of substance
and value.”40 Substantial similarity exists if, after comparing the “total concept and feel” of the structures, an
ordinary observer would regard the aesthetic appeal as
the same.41
Similarity must be evaluated “on the basis of the
original design elements that are expressive of the
[designer’s] creativity.”42 The similarity must relate to
the protected expression, not ideas.43 “The aspect of
architectural design that is protected is the gestalt of the
plans including things like an architect’s choices regarding shape, arrangement, and location of buildings, the
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MARCH/APRIL 2016
Exhibit 3
design of open space, the location of parking and sidewalks, and the combination of individual design elements.”44 Infringement of the exterior façade may arise,
however, even if the building interiors are different.45
Determining Substantial Similarity. Similarities arising
from use of features common to a style of architecture
(e.g., Georgian, Colonial, Mission) cannot be protected.46
“In the case of more mundane residential designs, it is
obvious that the use of porches, porticos, dormers and
bay windows, for example, is [sic] not protected, but the
particular expression of those ideas and their combination in one house, may be protected.”47
A recent Florida District Court case attempted to
provide guidance for determining substantial similarity
by looking for expression in: (1) “the manner in which a
design is achieved” (including exterior façade and interior floor plan—e.g., the shape and number of rooms);
(2) “use of [ornamental] structures and details;” (3) “how
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an individual interacts with the space;” and (4) location.48 That the defendant “was inspired by Plaintiff’s
work, drew upon similar concepts and even modeled
its own unique structure after Plaintiff’s design” is not
enough to establish infringement.49
In general, design differences are more important when
the design choices are limited.
The variety of ways a two-story rectangle can be
divided into three bedrooms, two baths, a kitchen,
a great room or living room, closets, porches, etc.
is finite. In architectural plans of this type, modest
dissimilarities are more significant than they may be
in other types of art works.50
Consequently, “significant dissimilarities between the
plans at the level of protected expression” may warrant
judgment as a matter of law.51
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Exhibit 4
In Humphreys & Partners Architects LP v. Lessard Design,
Inc.,52 the Fourth Circuit found no substantial similarity
after evaluating both floor plans and exterior elevations of
two residential towers (Grant Park and Two Park Crest).
(See Exhibit 1 and Exhibit 2.) First, the design elements
“must be disaggregated to determine whether each individual element or feature is protectable.”53 Then the protectable features are compared for substantial similarity.54
Humphreys & Partners claimed nine features the court
found unprotected were a protectable arrangement.55
The court found the arrangement of the claimed features was “wholly utilitarian in nature.”56 The allegedly
infringing design was eight stories shorter, had six more
units per floor, had the units access the elevators differently, and had a third elevator core (for service). While
the two designs shared concepts, the overall form and
the arrangement or composition of space was different.
In Logan Developers, Inc. v. Heritage Buildings, Inc.,57
a North Carolina District Court also found no substantial similarity after evaluating the SOUTHPORT
6
and OCRACOKE residential floor plans and exteriors. (See Exhibit 3, Exhibit 4, and Exhibit 5.) The
homes “employ a relatively standard modern home
design consisting of an open floor plan with three
bedrooms on the right side of the home … .”58 The differences include location of the master bedroom and
bath.59 “Substantial portions of the plans are in the
public domain.”60 No “stand-alone features entitled
to copyright protection” were identified.61 Modest
differences in the arrangement and composition of
space were important, including rooms of different
dimensions and master baths arranged and located
differently.
In contrast a recent Wisconsin case denied summary
judgment because “the placement of rooms” and “the
placement of countertops, wet bars, and closets appears
identical.”62 The court found a genuine issue of material
fact requiring a trial existed even though the defendant’s
expert testified there were differences in “room dimensions and overall square footage,” building massing,
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MARCH/APRIL 2016
Exhibit 5
building materials, and building details.63 Of course, the
jury might find no infringement.
The Virtual Identity Standard
Defining Thin Protection. A compilation is “a work
formed by the collection and assembling of preexisting
materials or of data that are selected, coordinated, or
arranged” to constitute “an original work of authorship.”64 A compilation of standard features, creatively
arranged, is entitled only to “thin” copyright protection. Likewise a derivative work65 is only entitled to thin
protection.66 When “almost all the similarities spring …
from basic ideas and their obvious expression” then
“illicit copying could occur only if the works as a whole
are virtually identical.”67
A Compilation of Standard Features Is Entitled Only
to “Thin” Copyright Protection. An architectural work
can be an arrangement of unprotected standard features, so some courts have treated architectural works as
compilations.68
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In Intervest Construction Inc. v. Canterbury Estate
Homes Inc.,69 the Court held the Kensington &
Westminster floor plans were not infringing as compilations. Even when floor plans and layout are visually
similar, modest dissimilarities are significant when the
design options are limited and the scope of protection is
“thin.” Comparing “the narrow arrangement and coordination of otherwise standard architectural features”
the court found “many dissimilarities or differences in
the two floor plans.”70 Differences included: the square
footage of the rooms, location of the entrance to the
garage, a “bonus room” above the garage, bedroom
entrances and closets, and the arrangement of the
hall bath.71 “The nooks in the two plans are markedly
different.”72 Consequently there was no infringement.
(See Exhibit 6 and Exhibit 7.)
Thin Protection for Architectural Works. The Second
Circuit Court of Appeals recently declined to treat
architectural works as compilations, but agreed that the
protection accorded architectural works is “thin.”73
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construction site, or engineering necessity should
therefore get no protection.
Exhibit 6
There are scenes-à-faire in architecture. Neoclassical
government buildings, colonial houses, and modern
high-rise office buildings are all recognized styles
from which architects draw. Elements taken from
these styles should get no protection. Likewise,
there are certain market expectations for homes or
commercial buildings. Design features used by all
architects, because of consumer demand, also get
no protection.75
…
Plaintiff can get no credit for putting a closet in
every bedroom, a fireplace in the middle of an exterior wall, and kitchen counters against the kitchen
walls.
…
So long as Plaintiff was seeking to design a colonial
house, he was bound to certain conventions. He
cannot claim copyright in those conventions.76
Exhibit 7
The court found the allegedly infringing house “shared
plaintiff’s general style,” but not protected expression.
There are only so many ways to arrange four bedrooms upstairs and a kitchen, dining room, living
room, and study downstairs. Beyond these similarities, Plaintiff’s and Defendants’ layouts are different
in many ways … .
Although he undoubtedly spent many hours on his
designs, and although there is certainly something
of Plaintiff’s own expression in his work, as long as
Plaintiff adhered to a pre-existing style his original
contribution was slight—his copyright very thin.
Only very close copying would have taken whatever
actually belonged to Plaintiff.77
Conclusion
In Zalewski v. Cicero Builder Developer, Inc.,74 the
Court listed various considerations that limit the scope
of copyright protection.
Efficiency is an important architectural concern.
Any design elements attributable to building codes,
topography, structures that already exist on the
8
Most reported cases considering copyright infringement
for architectural plans do not find liability. The similarity
in architectural works must relate to the protected expression, not ideas, concepts, or functional elements. When
copyright infringement does occur, however, the liability
can be substantial.78 The prevailing party also may be entitled to attorney fees.79 These incentives have contributed
to the increase in litigation over architectural copyrights
despite the thin protection applied in many cases.
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1. Issues of damages, attorney fees, and insurance are outside the scope of this
article.
2. 17 U.S.C. § 102(b). A tower structure is an unprotected idea. Wickham v.
Knoxville Int’l Energy Exposition, Inc. 739 F.2d 1094, 1097 (6th Cir. 1984).
A peninsula shaped bar with booths on one side and stools on the other “is
nothing more than a concept”. Ale House Mgmt., Inc. v. Raleigh Ale House,
Inc., 205 F.3d 137, 143 (4th Cir. 2000).
3. Apple Computer Inc. v. Microsoft Corp., 35 F.3d 1435, 1443 (9th Cir. 1994)
(quoting Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742
(9th Cir. 1971)).
4. CDN, Inc. v. Kapes, 197 F.3d 1256, 1261 (9th Cir. 1999).
5. Apple, 35 F.3d at 1443 (emphasis added).
6. Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1477 (9th Cir. 1992).
7. Sony Computer Entertainment, Inc. v. Connectix Corp., 203 F.3d 596, 599, 605
(9th Cir. 2000); Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 708 (2d
Cir. 1992) (discussing potentially infringing computer software programs).
8. Savata v. Lowry, 323 F.3d 805, 811-812 & n.3 (9th Cir. 2003) (“scenes a faire”
meaning “scenes which must be done”)
9. The author “can prevent anyone from deliberately copying the originality of
[his or her] plans.” Value Group, Inc. v. Mendham Lake Estates, L.P., 800
F. Supp. 1228, 1232 (D.N.J. 1992). Accord Richmond Homes Mgmt., Inc. v.
Raintree, Inc., 862 F. Supp. 1517, 1523 (W.D. Va. 1994) (“architectural structures and plans are subject to copyright protection … where the author has
independently created the works and the works reflect creativity…”), aff’d in
part, 66 F.3d 316 (4th Cir. 1995) (unpublished opinion).
10. Scholz Design Inc. v. Sard Custom Homes, 691 F.3d 182, 192 (2d Cir 2012).
11. See, e.g., Robert R. Jones Assocs. Inc. v. Nino Homes, 858 F.2d 274, 278 (6th
Cir. 1988).
12. Id. at 280. Accord Scholz Design, 691 F.3d at 189; Nat’l Med. Care Inc. v.
Espiritu, 284 F. Supp. 2d 424, 435 (S.D. W.Va. 2003).
13. Scholz Design, 691 F.3d at 189-190; T-Peg Inc. v. Vermont Timber Works
Inc., 459 F.3d 97, 109-10 (1st Cir. 2006) (plans must have features separable
from utilitarian aspects); Hunt v. Pasternack, 192 F.3d 877 (9th Cir. 1999);
Richmond Homes, 862 F. Supp. at 1525, aff’d in part, 66 F.3d 316 (4th Cir.
1995) (unpublished opinion).
14. Guillot-Vogt Assocs., Inc. v. Holly & Smith, 848 F. Supp. 682, 686 (E.D.
La. 1994).
15. 17 USC § 101, 102(a)(8). See, e.g., Oravec v. Sunny Isles Luxury Ventures LC,
527 F.3d 1218 (11th Cir. 2008); Hunt v. Pasternack, 192 F3d 877 (9th Cir.
1999); Attia v. Society of the New York Hosp., 201 F.3d 50 (2d Cir. 1999).
16. 17 USC § 101; H.R.Rep., No.101-735 (1990), as reprinted in 1990 US Code &
Cong. Admin. News at 6935, 6949. See 37 CFC § 202.11 (individual standard
features include “windows, doors and other staple building components”).
17. Beckwith Builders, Inc. v. Depietri, 81 U.S.P.Q.2d 1302, 2006 WL 2645188
*11 (Not reported in F.Supp.2d) (D. N.H. 2006). See Oravec v. Sunny Isles
Luxury Ventures LC, 527 F.3d 1218 (11th Cir. 2008)
18. 37 CFR § 202.11(b)(2) (including houses, office buildings, churches, museums, gazebos, and garden pavilions).
19. Id. § 202.11(d)(1). See Gaylord v. United States, 595 F.3d 1364 (Fed.
Cir. 2010). A modular home, as distinguished from a mobile home, may
qualify as a building. Patriot Homes, Inc. v. Forest River Housing Inc., 85
U.S.P.Q.2d 1922 (N.D. Ill. 2008).
20. Attia, 201 F.3d at 55, cert. denied, 531 U.S. 843 (2000). See Copyright Office
Circular 41 (protection does not extend to functional elements whose design
or placement is dictated by utilitarian concerns); 1 Nimmer, Copyright § 2.20
at 2-215 n. 21 (2002).
21. Sporaco v. Lawler, Matusky, Skelly Engineers, LLP, 303 F3d 460, 467 (2d Cir.
2002).
22. Charles W. Ross Builder Inc. v. Olsen Fine Home Building LLC., 977 F.
Supp. 2d 567, 593 (E.D. Va. 2013).
23. 1 Nimmer, Copyright § 2.20[A] at 2-218.
24. H.R. Report No. 101-735, reprinted in 1990 U.S. Code and Cong. Admin. News,
at 6951-52. Accord 1 Nimmer, Copyright, § 2.20, at 217 n. 29, (2014).
25. Attia, 201 F.3d at 55, cert. denied, 531 U.S. 843 (2000).
26. Id. at 54.
27. Logan Developers, Inc. v. Heritage Buildings, Inc., 2014 WL 2547085 *7-8
(E.D. N.C. June 5, 2014).
28. Savant Homes, Inc. v. Collins, 2015 US Dist. Lexis 24084 (D. Colo. Feb. 27,
2015), aff’d. 809 F.3d 1133 (10th Cir. 2016).
29. Cases involving nonresidential plans include Nat’l Medical Care, Inc. v.
Espiritu, 284 F. Supp.2d 424 (S.D. W.Va. 2003) (dialysis clinic); Interplan
Architects, Inc. v. CL Thomas, Inc., 2010 WL 4366990 (S.D. Tex. Oct. 27,
2010) (convenience stores); Jedson Eng., Inc. v. Spirit Const. Services, Inc., 720
F.Supp.2d 904 (S.D. Ohio 2010) (tissue manufacturing plant); Walter Sedovic
Architect P.C. v. Alesandro, 53 U.S.P.Q.2d 1059, 1060 (S.D. NY 1999) (church).
30. Peter F. Gaito Architecture LLC v. Simone Dev. Corp., 602 F.3d 57, 69 (2d
Cir. 2010), quoting Feist, 499 U.S. at 350 (mixed use 178 acre development).
31. Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340,
361, 111 S. Ct. 1282, 1296 (1991); Apple Computer, Inc. v. Microsoft Corp.,
35 F.3d 1435, 1442 (9th Cir. 1994); Johnson Controls, Inc. v. Phoenix Control
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32.
33.
34.
35.
36.
37.
38.
39.
40.
41.
42.
43.
44.
45.
46.
47.
48.
49.
50.
51.
Systems, Inc., 886 F.2d 1173, 1175 (9th Cir. 1989). “Copying” in this context
refers to any of the author’s exclusive rights.
Johnson Controls, 886 F.2d at 1175. Registration is a precondition to filing a
claim for infringement. 17 U.S.C. § 411(a); Reed Elsevier, Inc. v. Muchnick,
559 U.S. 154, 157, 158, 166, 130 S. Ct. 1237 (2010). B. Nimmer & D. Nimmer,
Copyright § 7.16(B)(2)(c)(2011).
17 U.S.C. § 106.
Apple, 35 F.3d at 1443 (emphasis added).
Brown Bag Software, 960 F.2d at 1477. Accord Humphreys & Partners
Architects LP v. Lessard Design, Inc., 790 F.3d 532 (4th Cir 2015); Universal
Furniture Int’l Inc. v. Collezione Europa USA, Inc., 618 F3d 417, 435-436
(4th Cir. 2010).
Mattel v. MGA Entertainment, 616 F.3d 904, 913-914 (9th Cir. 2010).
Id. at 914.
1990 US Code & Cong. Admin. News at 6952; Design Basics, LLC v.
Deshano Companies, Inc., 2012 WL 4321313 *12 (Not reported in F.
Supp. 2d) (E.D. Mich. 2012); Frank Betz Assoc., Inc. v. JO Clark Const.,
LLC, 2010 WL 4628203 *6 n. 5(M. D. Tenn. Nov. 5, 2010); T-Peg Inc. v.
Vermont Timbers Works, Inc. 459 F.2d 97, 113-114 (1st Cir. 2006); Sturdza v.
UAE, 281 F.3d 1287, 1299 (D.C. Cir. 2001); 1 M. Nimmer and D. Nimmer,
Copyright, § 2.20.
Apple, 35 F.3d at 1442. Without access, substantial similarity alone cannot
support an inference of copying; instead “striking similarity” must be shown.
La Resolana Architects P.A. v. Reno Inc., 555 F.3d 1171, 1180 (10th Cir 2009)
(similarities derived from the owner’s “detailed list of his requirements including a sketch of the floor plan” are not proof of copying); see Building Graphics
Inc. v. Lennar Corp., 708 F3d 573 (4th Cir. 2013) (availability of plans on the
Internet is not enough to prove access); Charles W. Ross Builder Inc. v. Olsen
Fine Home Building LLC., 977 F. Supp. 2d 567, 580 (E.D. Va. 2013).
LZT/Filliung Partnership LLP v. Cody/Braun & Associates, Inc., 117 F.
Supp. 2d 745, 752 (N.D. Ill. 2000).
Peter F. Gaito Architecture LLC v. Simone Dev. Corp., 602 F.3d 57 (2d Cir.
2010); Lombardi v. Whitehall XII/Hubert Street LLC, 2010 WL 742615 *15
(Not reported in F. Supp. 2d) (S.D.N.Y. March 3, 2010); Shine v. Childs, 382
F. Supp. 2d 602, 612 (S.D.N.Y. 2005).
J.R. Lazaro Building, Inc. v. R.E. Ripberger Builders, Inc., 883 F. Supp. 336,
345 (S.D. Ind. 1995) quoting Raphael Winick, Note, “Copyright Protection
for Architecture After the Architectural Works Copyright Protection Act
of 1990,” 41 Duke L.J. 1598, 1633 (1992). See Howard v. Sterchi, 974 F.2d
1272, 1276 (11th Cir. 1992); TB Proprietary Corp. v. Sposato Builders, Inc.,
37 U.S.P.Q.2d 1095 (E.D. Pa. 1995); John Alden Homes, Inc. v. Kangas, 142
F. Supp. 2d 1338, 1345 (M.D. Fla. 2001).
Trek Leasing v. United States, 66 Fed. Cl. 8, 12 (Fed. Cl. 2005).
Axelrod & Cherveny Architects, P.C. v. Winmar Homes, 2007 WL 708798,
at *11 (E.D.N.Y. 2007).
Axelrod & Cherveny Architects P.C. v. T & S Builders, Inc., 943 F. Supp. 2d
357 (E.D. N.Y. 2013); see Bonner v. Dawson, 2003 WL 22432941 *5 (W.D.
Va. Oct. 14, 2003) (infringement of architectural design if a “substantial
part” was copied, floor plans, exterior structure or both).
Zalewski v. Cicero Builder Developer, Inc., 2014 WL 2521388 (2d Cir.
June 5, 2014); Trek Leasing v. United States, 66 Fed. Cl. 8, 12 (Fed. Cl. 2005).
See Tiseo Architects v. B&B Pools Serv. & Supply, 495 F.3d 344 (6th Cir. 2007)
(substantial similarity explained by factors other than copying); Charles W. Ross
Builders Inc. v. Olsen Fine Home Building LLC., 977 F. Supp. 2d 567, 594-595
(E.D. Va. 2013).
Frank Betz Assocs., Inc. v. J.O. Clark Const., L.L.C., 2010 WL 4628203 at
*5 (M. D. Tenn. May 30, 2010); Bruemmer v. Reardon, 2012 WL 5989355 *5
(Not reported in F. Supp. 2d) (W.D. Mich., Nov. 29, 2012).
The Sieger Suarez Architectural Partnership, Inc. v. Arquitectonica Int’l
Corp., 2014 WL 585883 *6 (S. D. Fla. Feb. 14, 2014).
Id.
Howard v. Sterchi, 974 F.2d 1272, 1276 (11th Cir. 1992). Accord TB
Proprietary Corp. v. Sposato Builders, Inc., 37 U.S.P.Q. 2d 1095, (E.D.
Pa 1995). (“The fact that houses somewhat resemble each other in configuration is hardly a sign that one builder misappropriated the plans of
another”). See, e.g., Kootenia Homes, Inc. v. Reliable Homes, Inc., 2002
WL 15594 (D. Minn. Jan. 3, 2002) (“efficiency concerns and the need for
functional living in the home invariably constrain the number of variations
in the configuration of the rooms and spaces”); LaJoie v. Pavcon, Inc., 146
F. Supp. 2d 1240 (M.D. Fla. 2000); see also Jeff Benton Homes v. Alabama
Heritage Homes, Inc., 929 F. Supp. 2d 1231, 1254 (N.D. Ala 2013) (“It
would be unduly restrictive—and would cut against the policy favoring the
free flow of ideas and information—to grant plaintiff a monopoly on the
design of a roughly 3,000 square-foot home plan using a square box design
[and] open floor plan . … ”).
Home Design Services, Inc. v. Turner Heritage Homes, Inc., 2015 US Dist.
Lexis 41837 (N. D. Fla. March 31, 2015); see Sari v. America’s Home Place
Inc., 2015 US Dist. Lexis 51661318 *12 (ED Va. Sept 2, 2015) (summary
judgment of no substantial similarity where 7 of 10 asserted similarities are
not present or dissimilar and all 10 are unprotected )
IP Litigator
9
52. Humphreys & Partners Architects LP v. Lessard Design, Inc., 790 F.3d 532
(4th Cir. 2015),
53. Humphreys & Partners Architects LP v. Lessard Design, Inc., 43 F. Supp. 3d
644, 668 (E. D. Va. 2014), aff’d, 790 F.3d 532 (4th Cir 2015).
54. Id. at 669. Accord Sari v. America’s Home Place Inc., 2015 US Dist. Lexis
5166131 *8 (ED Va. Sept 2, 2015).
55. Humphreys, 43 F. Supp. 3d at 676. The claimed features were: a high-rise
residential building; two elevator cores connected by a fire or service corridor; direct access from the residential units to an elevator or lobby; a
barbell-shaped floor plan; a mechanical/electrical room space at one end of
the service corridor and a trash chute at the other end; exit stairwells adjacent
to the elevators; corner units with diagonal entry access; alternating vertical
elements and projecting elements at the cornice of the roof line.
56. Id.
57. Logan Developers, Inc. v. Heritage Buildings, Inc., 2014 WL 2547085 (E.D.
N.C. June 5, 2014)
58. Id. at *2, *7.
59. Id.
60. Id. at *4.
61. Id. at *8.
62. Design Basics LLC v. J&V Roberts Investments, Inc., 2015 US Dist. Lexis
121372 (E.D. Wis. Sept.11, 2015).
63. Plaintiff’s expert testified there were similarities in “overall flow and location
of rooms, hallways, bathrooms, access points and closets.” See also Sturdza v.
United Arab Emirates, 281 F.3d 1287 (DC Cir. 2002) (reversing summary
judgment because embassy exterior designs could be substantially similar).
64. 17 U.S.C. § 101. “[C]opyright in a compilation … extends only to the material
contributed by the author of such work, as distinguished from the preexisting materials employed in the work, and does not imply any exclusive right
in the preexisting material.” 17 U.S.C. § 103(a).
65. A “derivative work” is “a work based upon one or more preexisting works.”
17 U.S.C. § 101. The copyright in a derivative work “extends only to the
66.
67.
68.
69.
70.
71.
72.
73.
74.
75.
76.
77.
78.
79.
material contributed by the author of such work, as distinguished from the
preexisting material employed in the work, and does not imply any exclusive
right in the preexisting material.” 17 U.S.C. § 103(b).
If an architectural work is analyzed as a derivative work, “the copyright in
a derivative work is thin.” Schrock v. Learning Curve Int’l, Inc., 586 F.3d
513, 521 (7th Cir. 2009) (emphasis added); The Harvester, Inc. v. Role Joy
Trammell Rubio, LLC, 716 F. Supp. 2d 428, 439 (E.D. Va. 2010).
Apple, 35 F.3d at 1447. Accord Frybarger v. IBM Corp., 812 F.2d 525, 530
(9th Cir. 1987) (virtually identical copying required where the expression is
“as a practical matter indispensable or at least standard in the treatment” of
a given idea). But see 1990 U.S. Code & Cong. Admin. News at 6952 (the
language of the Act is not intended to require “that the scope of protection
of architectural works is limited to verbatim and near-verbatim copying”).
Intervest Constr. Inc. v. Canterbury Estate Homes Inc., 554 F.3d 914, 919
(11th Cir. 2008); Millers Ale House Inc. v. Boynton Carolina Ale House,
LLC, 745 F. Supp. 2d 1359, 1379 (S.D. Fla. 2010), aff’d, 702 F.2d 1312 (11th
Cir. 2012).
Intervest Constr., 554 F.3d 914.
Id. at 921.
Id. at 917.
Id. at 918.
Zalewski v. Cicero Builder Developer, Inc., 754 F.3d 95, 107 (2d Cir. 2014).
Zalewski, 754 F.3d 95.
Id. at 105
Id. at 106.
Id. at 107. The Court noted “the features of prominent architectural styles,
particularly of home designs, are matters with which we are familiar and of
which we can take judicial notice.” Id. at 107 n.20.
See, e.g., Home Design Services, Inc. v. Turner Heritage Homes, Inc., 2015
US Dist. Lexis 41837 (N. D. Fla. March 31, 2015) (plaintiff sought over
2.6 million in damages, but jury awarded only $127,760).
17 USC § 505.
Copyright © 2016 CCH Incorporated. All Rights Reserved.
Reprinted from IP Litigator, March/April 2016, Volume 22, Number 2, pages 9–18,
with permission from Wolters Kluwer, New York, NY,
1-800-638-8437, www.wklawbusiness.com