Charles W. Ross Builder, Inc. v. Olsen Fine Home Building, LLC

UNPUBLISHED
UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT
No. 11-2206
CHARLES W. ROSS BUILDER, INCORPORATED, d/b/a Charles Ross
Homes,
Plaintiff - Appellant,
v.
OLSEN FINE HOME BUILDING, LLC; BEVERLY OLSON; BOATHOUSE
CREEK GRAPHICS, INCORPORATED; RICK J. RUBIN; JENNIFER L.
RUBIN,
Defendants - Appellees.
Appeal from the United States District Court for the Eastern
District of Virginia, at Newport News. Robert G. Doumar, Senior
District Judge. (4:10-cv-00129-RGD-DEM)
Argued: September 19, 2012 Decided: November 8, 2012
Before KEENAN and FLOYD, Circuit Judges, and Timothy M. CAIN,
United States District Judge for the District of South Carolina,
sitting by designation.
Vacated and remanded by unpublished opinion. Judge Keenan wrote
the opinion, in which Judge Floyd and Judge Cain joined.
ARGUED: Megan Burns, TROUTMAN SANDERS, LLP, Virginia Beach,
Virginia, for Appellant. Brian Nelson Casey, TAYLOR & WALKER,
PC, Norfolk, Virginia; Jeffrey Hamilton Geiger, SANDS ANDERSON,
PC, Richmond, Virginia; Linda M. Quigley, QUIGLEY & ASSOCIATE,
PLLC, Richmond, Virginia, for Appellees. ON BRIEF: John
Franklin, III, TAYLOR & WALKER, PC, Norfolk, Virginia, for
Appellee Boathouse Creek Graphics, Inc.; Mark D. Matthews, THE
MATTHEWS LAW GROUP, PLLC, Richmond, Virginia, for Rick J. Rubin
and Jennifer L. Rubin.
Unpublished opinions are not binding precedent in this circuit.
2
BARBARA MILANO KEENAN, Circuit Judge:
In this case brought under the Architectural Works
Copyright Protection Act (Architectural Copyright Act), Pub. L.
No. 101-650, §§ 701-706, 104 Stat. 5089 (1990) (codified in
various sections of 17 U.S.C.), we consider whether the district
court erred in awarding summary judgment to the defendants. The
plaintiff’s complaint alleged that the defendants infringed the
plaintiff’s copyrighted architectural work, consisting of a home
design and related technical drawings. The district court
awarded summary judgment upon finding that the defendants’
allegedly infringing home design and the plaintiff’s copyrighted
home design were not “substantially similar.” Because we
conclude that the district court did not apply the correct test
for determining whether the allegedly infringing material was
substantially similar to the copyrighted home design, we vacate
and remand for further proceedings.
I.
The plaintiff, Charles Ross Homes, Inc. (Charles Ross),
designs and builds custom homes and proprietary model homes in
the Williamsburg area of Virginia. In 2001, an architect hired
by Charles Ross designed “the Bainbridge,” a home design in the
Georgian style (the Bainbridge model), for which Charles Ross
3
obtained copyright protection. 1 Using the Bainbridge model,
Charles Ross built a home on a lot in the Ford’s Colony
community in Williamsburg (the home).
In May 2009, potential buyers, Rick and Jennifer Rubin,
toured the home and took with them marketing brochures for the
Bainbridge model. The Rubins later scheduled a meeting with a
Charles Ross representative to discuss designing and building a
custom home on property that the Rubins owned in Ford’s Colony.
Before the meeting took place, the Charles Ross representative
sent the Rubins an unsolicited copy of “Places to Call Home,” a
portfolio of the company’s proprietary model homes, which
included plans and an artist’s rendering for a home based on the
Bainbridge model. The portfolio indicated that the Bainbridge
model was protected by copyright. The Rubins later cancelled
their meeting and did not have any further contact with Charles
Ross.
The Rubins ultimately hired Boathouse Creek Graphics, Inc.
(BC Graphics) to design their new home, and employed Olsen Fine
Home Building, LLC (Olsen) as the builder. Lisa Moberg, the
President of BC Graphics, designed the Rubins’ home (the Rubin
residence).
1
Charles Ross received copyright protection for the
Bainbridge model as an “architectural work,” and for Charles
Ross’ technical drawings of the Bainbridge model.
4
While the Rubin residence was under construction, one of
the owners of Charles Ross visited a contractor on that job site
concerning an unrelated project. There, the owner from Charles
Ross saw the plans for the Rubin residence. After looking at
those plans, the Charles Ross owner concluded that the plans
were “substantially similar” to the Bainbridge model.
Both the Bainbridge model and the Rubin residence are
representative of the Georgian architectural style, which is
popular among the colonial-style homes found throughout the
Williamsburg area. In fact, only five architectural styles are
permitted for homes built in Ford’s Colony, one of which is the
Georgian style. The Bainbridge model and the Rubin residence
both were designed in accordance with the numerous restrictions
placed on all homes built in Ford’s Colony, as described in the
development’s Purchaser’s Handbook.
The exteriors of the Bainbridge model and the Rubin
residence share many similarities, including a two-story
rectangular main body, a “walk-out” basement, a gabled roof
featuring dormers, single-story wings flanking the main body of
the residence, and a detached, three-car garage connected to the
main body of the residence by a covered breezeway. The interior
floor plans of the two designs also share several similarities,
including a foyer flanked symmetrically by a dining room and a
library, and a separate “friends” entryway. In addition, both
5
interior plans have a dining room, a kitchen, and a “keeping
room,” all configured in the same width.
Charles Ross filed a complaint against the Rubins, Olsen, 2
and BC Graphics (collectively, the defendants), asserting
copyright infringement and other claims under the Architectural
Copyright Act. After the defendants filed motions to dismiss
and the district court heard argument on those motions, the
court directed the defendants to file motions for summary
judgment. Thereafter, the district court awarded summary
judgment to the defendants, holding that Charles Ross had failed
to show that the Bainbridge model and the Rubin residence were
substantially similar in design. See Charles W. Ross Builder,
Inc. v. Olsen Fine Home Bldg., LLC., 827 F. Supp. 2d 607, 624
(E.D. Va. 2011). Charles Ross filed a timely notice of appeal.
II.
We exercise de novo review of a district court’s award of
summary judgment. Higgins v. E.I. DuPont de Nemours & Co., 863
F.2d 1162, 1167 (4th Cir. 1988). Summary judgment is only
appropriate if, viewing the evidence in the light most favorable
to the nonmoving party, there is no genuine dispute of material
2
Charles Ross named Olsen, the corporate entity, as well as
Beverly Olsen, its member and manager, as defendants.
6
fact. Fed. R. Civ. P. 56(a); Pueschel v. Peters, 577 F.3d 558,
563 (4th Cir. 2009).
III.
Charles Ross contends that the district court reached an
incorrect result in this case by failing to apply this Circuit’s
test for determining substantial similarity. Charles Ross
argues that the central failure in the district court’s analysis
was the district court’s use of the Second Circuit’s “more
discerning observer” test for determining substantial
similarity, rather than the two-part test used by this Court in
Universal Furniture International, Inc. v. Collezione Europa
USA, Inc., 618 F.3d 417 (4th Cir. 2010).
In response, the defendants argue that the district court
did not err in employing the Second Circuit’s “more discerning
observer” test, because the Bainbridge model incorporated both
original and unoriginal elements. Alternatively, the defendants
contend that even upon application of this Court’s two-part
test, the Bainbridge model and the Rubin residence do not
qualify as being substantially similar. We disagree with the
defendants’ arguments.
7
In recent decades, copyright protection has been extended
to “architectural work” under the Architectural Copyright Act, 3
which defines such work as “the design of a building as embodied
in any tangible medium of expression, including a building,
architectural plans, or drawings. The protected work includes
the overall form as well as the arrangement and composition of
spaces and elements in the design, but does not include
individual standard features.” 17 U.S.C. §§ 101, 102(a)(8).
In enacting the Architectural Copyright Act, Congress
intended to extend protection to the “arrangement and
composition of spaces and elements” in architectural works, in
recognition of the fact that “creativity in architecture
frequently takes the form of a selection, coordination, or
arrangement of [non-protected] elements into an original,
protectable whole.” H.R. Rep. No. 101-735 (1990), reprinted in
1990 U.S.C.C.A.N. 6935, 6949. However, the protections of the
Architectural Copyright Act were not intended by Congress to
afford copyright protection to “individual standard features,”
such as “common windows, doors, and other staple building
components.” Id.3
Before the Architectural Copyright Act was enacted,
architectural plans could receive copyright protection as
“pictorial, graphic, and sculptural works,” but the
architectural structures themselves were not protected. Scholz
Design, Inc. v. Sard Custom Homes, LLC, 691 F.3d 182, 188 (2d
Cir. 2012).
8
To establish copyright infringement, a plaintiff must prove
ownership of a valid copyright, and must show that the defendant
copied the original elements of that copyrighted material.
Lyons P’ship, L.P. v. Morris Costumes, Inc., 243 F.3d 789, 801
(4th Cir. 2001)(citing Feist Publ’ns, Inc. v. Rural Tel. Serv.
Co., 499 U.S. 340, 361 (1991)). In the absence of direct
evidence of copying, a plaintiff may create a presumption of
copying by showing that the defendant had access to the
copyrighted work, and that “the defendant’s work is
‘substantially similar’ to the protected material.” Id. (citing
Towler v. Sayles, 76 F.3d 579, 581-82 (4th Cir. 1996)). In the
present case, the plaintiff did not produce direct evidence of
copying, and the district court assumed, without deciding, that
the defendants had access to the Bainbridge model plans.
We have not previously considered a copyright claim brought
under the Architectural Copyright Act. However, in Universal
Furniture, a case involving alleged copyright infringement in
the design of furniture, we applied our established two-part
test requiring that a court consider both the “extrinsic” and
“intrinsic” similarity of the works in question. Under this
two-part test, to prove substantial similarity, a plaintiff must
show that the works are (1) “extrinsically similar because they
contain substantially similar ideas that are subject to
copyright protection,” and (2) “intrinsically similar in the
9
sense that they express those ideas in a substantially similar
manner from the perspective of the intended audience of the
work.” Universal Furniture, 618 F.3d at 435 (quoting Lyons, 243
F.3d at 801); see also Dawson v. Hinshaw Music Inc., 905 F.2d
731, 732-33 (4th Cir. 1990) (the two-part substantial similarity
test).
We applied this two-part test in Universal Furniture in a
context that is not analytically distinguishable from the case
presently before us. The copyrighted furniture at issue in
Universal Furniture had incorporated design elements of certain
historical styles from English furniture of the 18th and 19th
centuries. Id. at 425, 436. The process of designing these
copyrighted lines of furniture involved “consulting public
domain sources such as furniture books and antiques magazines,”
and then “combin[ing] elements from the public domain to create
a different look,” rather than merely replicating the style from
an historical period. Id. at 425 (internal quotation marks
omitted).
The plaintiff alleging infringement in Universal Furniture
had received copyright protection for the original decorative
designs appearing on the furniture at issue, as well for the
designer’s original compilations of decorative designs. Id.
When a competitor began designing furniture that imitated the
copyrighted lines, the copyright owner brought a claim against
10
the competitor for copyright infringement. Id. at 425-26. The
district court held that the competitor produced furniture that
was substantially similar to the copyrighted pieces. Id. at
426-27. We affirmed the district court’s judgment, after
applying our established two-part test for determining
substantial similarity. Id. at 435-37.
We explained that under this test, extrinsic similarity is
an objective inquiry, which requires consideration of “external
criteria of substantial similarities in both ideas and
expression.” Id. at 435-36 (citation and internal quotation
marks omitted). In conducting this objective inquiry, a court
must consider whether the two works “contain substantially
similar ideas that are subject to copyright protection.” Lyons,
243 F.3d at 801 (citation omitted).
By contrast, intrinsic similarity is a subjective inquiry,
Towler, 76 F.3d at 583-84, in which the court “looks to the
‘total concept and feel of the works, but only as seen through
the eyes of the . . . intended audience of the plaintiff’s
work.’” Universal Furniture, 618 F.3d at 436 (quoting Lyons,
243 F.3d at 801) (emphasis removed). As stated by Judge Learned
Hand, the intrinsic similarity test asks whether “the ordinary
observer, unless he set out to detect the disparities, would be
disposed to overlook them, and regard their aesthetic appeal as
11
the same.” Id. (quoting Peter Pan Fabrics, Inc. v. Martin
Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960)).
We have stated that expert testimony often may be helpful
to a court’s determination of extrinsic similarity. See, e.g.,
Universal Furniture, 618 F.3d at 435-36 (“expert testimony may
be relevant” to extrinsic similarity); Towler, 76 F.3d at 583(extrinsic similarity is shown “typically with the aid of expert
testimony”). The intrinsic similarity prong of the analysis,
however, generally does not require the aid of expert testimony.
Towler, 76 F.3d at 583-84.
As noted above, the district court did not apply this
Court’s test for determining substantial similarity. Instead,
the district court elected to apply the Second Circuit’s “more
discerning observer” test, as well as a similar test articulated
by the Eleventh Circuit in Intervest Construction, Inc. v.
Canterbury Estate Homes, Inc., 554 F.3d 914 (11th Cir. 2008), a
case involving an architectural copyright claim.
The district court stated that, under the “more discerning
observer” test, courts distinguish between protectable and non-
protectable elements, remove the non-protectable elements from
consideration, and determine whether the remaining portions of
each work, taken together, are conceptually similar. 827 F.
Supp. 2d at 621 (citing Trek Leasing, Inc. v. United States, 66
Fed. Cl. 8, 19 (Ct. Fed. Cl. 2005)); see also Tufenkian
12
Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d
127, 131-35 (2d Cir. 2003) (describing test for substantial
similarity regarding copyright infringement claim involving a
rug design, which included both protectable and non-protectable
elements); Boisson v. Banian, Ltd., 273 F.3d 262, 272 (2d Cir.
2001) (describing test, in context of quilt design). Here, the
district court explained that it applied the “more discerning
observer” test, because the Bainbridge model “incorporates
sources other than its original expression,” particularly in
that its design “borrows many of its central features from the
traditional Georgian style.” 827 F. Supp. 2d at 621.
We conclude that the district court erred in failing to
apply this Court’s test for determining substantial similarity.
Our two-part test, described above, has not been limited in
application to infringement claims involving furniture design.
We also have employed that test in several other copyright
contexts. 4 See Lyons, 243 F.3d at 801-03 (costume that allegedly
4
We note that two of our sister circuits, namely, the
Eighth Circuit and the Ninth Circuits, have employed the same,
or a similar, articulation of the substantial similarity test
used in this Circuit. See, e.g., Frye v. YMCA Camp Kitaki, 617
F.3d 1005, 1008 (8th Cir. 2010) (employing two-step analysis,
first applying the “extrinsic test,” which “focus[es] on
objective similarities in the details of the works,” and,
second, the “intrinsic test,” which “depend[s] on the response
of the ordinary, reasonable person to the forms of expression”)
(citation omitted); L.A. Printex Indus., Inc. v. Aeropostale,
Inc., 676 F.3d 841, 848 (9th Cir. 2012) (employing two-step
(Continued)
13
infringed copyright of “Barney,” the purple dinosaur children’s
character); Towler, 76 F.3d at 583-84 (screenplay that allegedly
infringed a copyrighted screenplay); Dawson, 905 F.2d at 732-33(musical composition that allegedly infringed a copyrighted
arrangement of spiritual music).
In the present case, the circumstances identified by the
district court do not support its deviation from this Court’s
test for determining substantial similarity. Like the protected
work in Universal Furniture, the Bainbridge model incorporated
design elements from an historical style, in this case, the
Georgian style of architecture. See 618 F.3d at 425, 436.
Moreover, architectural works such as the Bainbridge model, like
the furniture designs at issue in Universal Furniture, include a
combination of original, protected elements, as well as
unoriginal, non-protected elements. Architectural works include
the unoriginal, and thus non-protectable, elements like windows,
doors, and other individual standard features, see 17 U.S.C. §
101, while furniture pieces include unoriginal, non-protectable
elements like “shape and color.” 618 F.3d at 435-37. Therefore,
analysis, comprised of the “extrinsic test,” which is an
“objective comparison of specific expressive elements,” and the
“intrinsic test,” a “subjective comparison that focuses on
whether the ordinary, reasonable audience would find the works
substantially similar in the total concept and feel of the
works”) (citation and internal quotation marks omitted).
14
neither type of work only incorporates elements that are wholly
original and protected.
Analytical similarity also is found in courts’ treatment of
architectural works and the design of furniture as
“compilations.” The design of furniture has received copyright
protection as a “compilation.” Id. at 425, 431. Likewise,
several courts have analogized architectural works to
“compilations” in the copyright context, because originality in
architectural works frequently comes from the “arrangement and
composition” of spaces and other design elements, which are not
otherwise protectable. See, e.g., Intervest, 554 F.3d at 919;
Harvester, Inc. v. Rule Joy Trammell + Rubio, LLC, 716 F. Supp.
2d 428, 438 (E.D. Va. 2010).
For these reasons, we conclude that the two-part test for
determining substantial similarity, as employed in Universal
Furniture and in our earlier precedent, is applicable to a
copyright infringement claim involving architectural works such
as the Bainbridge model. See Lyons, 243 F.3d at 801; Towler, 76
F.3d at 583-84; Dawson, 905 F.2d at 732-33. Although the
district court conducted a lengthy comparative analysis of the
Bainbridge model and the Rubin residence, we are unable to
determine whether the district court would have reached the same
conclusion had the court applied this Court’s two-part test for
determining substantial similarity.
15
As stated above, the intrinsic similarity prong of this
Court’s two-part test asks whether “the ordinary observer [or
member of the intended audience of plaintiff’s work], unless he
set out to detect the disparities, would be disposed to overlook
them, and regard their aesthetic appeal as the same,” Universal
Furniture, 618 F.3d at 436 (quoting Peter Pan Fabrics, 274 F.2d
at 489). The district court improperly disregarded this
principle in conducting its substantial similarity analysis.
See 827 F. Supp. 2d at 621-22 (rejecting as “inapplicable” a
similar variation of our “intrinsic” similarity inquiry).
The effect of the district court’s failure to apply this
Court’s test for determining substantial similarity is that
throughout its analysis, the district court relied on its
finding that many of the similarities between the Bainbridge
model and the Rubin residence related to non-protected elements
of those works. Thus, in segregating these non-protected
similarities, the district court deviated from the essential
principle of the intrinsic component of our two-part test,
namely, that a court is not to “set out to detect the
disparities,” or engage in “analytic dissection of protected and
unprotected elements.” Universal Furniture, 618 F.3d at 436,
437 (citations omitted).
For these reasons, we vacate the district court’s judgment.
We remand the case to the district court for application of this
16
Court’s two-part test for determining substantial similarity,
and for further proceedings consistent with the principles
expressed in this opinion. 5
VACATED AND REMANDED
5
Based on our holding, we express no view on the merits of
the parties’ arguments concerning the district court’s decision
to assume, without deciding, that Charles Ross had access to the
Bainbridge model. 827 F. Supp. 2d at 617-18. Nothing in our
decision prevents the parties or the district court from
revisiting this issue on remand.
Additionally, in view of our holding, we need not consider
Charles Ross’ argument that the district court erred in
concluding that the Bainbridge model was entitled to only a
lesser, “thin” degree of copyright protection because the design
was constrained by the elements of Georgian architecture, and by
the requirements of the Ford’s Colony Purchaser’s Handbook.
These factors should be considered by the district court in the
first instance within the framework of this Court’s two-part
test for determining substantial similarity.
17