Design Basics, LLC v. Signature Construction, Inc.

In the
United States Court of Appeals
For the Seventh Circuit
____________________
No. 19-2716
DESIGN BASICS, LLC, and
CARMICHAEL & DAME DESIGNS, INC.,
Plaintiffs-Appellants,
v.
SIGNATURE CONSTRUCTION, INC., et al.,
Defendants-Appellees.
____________________
Appeal from the United States District Court
for the Central District of Illinois.
No. 1:16-CV-1275 — Colin S. Bruce, Judge.
____________________
ARGUED JANUARY 22, 2020 — DECIDED APRIL 23, 2021
____________________
Before SYKES, Chief Judge, and WOOD and HAMILTON,
Circuit Judges.
SYKES, Chief Judge. Copyright law strikes a practical
balance between the intellectual-property rights of authors
and the public interest in preserving the free flow of ideas
and information and encouraging creative expression, all in
furtherance of the constitutional purpose to “promote the
Progress of Science and useful Arts.” U.S. CONST. art. 1, § 8,
cl. 8; see generally Google LLC v. Oracle Am., Inc., 141 S. Ct.
2 No. 19-2716
1183, 1195 (2021). Copyright trolls—opportunistic holders of
registered copyrights whose business models center on
litigation rather than creative expression—disrupt this
balance by inhibiting future creativity with negligible socie-
tal benefit. “Like the proverbial troll under the bridge, these
firms try to extract rents from market participants who must
choose between the cost of settlement and the costs and risks
of litigation.” Design Basics, LLC v. Lexington Homes, Inc.,
858 F.3d 1093, 1097 (7th Cir. 2017).
Plaintiff Design Basics, LLC, is a copyright troll. Id. at
1096–97. The firm holds registered copyrights in thousands
of floor plans for suburban, single-family tract homes, and
its employees trawl the Internet in search of targets for
strategic infringement suits of questionable merit. The goal
is to secure “prompt settlements with defendants who
would prefer to pay modest or nuisance settlements rather
than be tied up in expensive litigation.” Id. at 1097. As we
explained in Lexington Homes, “[t]his business strategy is far
removed from the goals of the Constitution’s intellectual
property clause.” Id. Instead, it amounts to an “intellectual
property shakedown.” Id. at 1096.
This appeal involves yet another Design Basics infringe-
ment action, one of more than 100 such suits in the last
decade or so. Id. at 1097. When Design Basics was last before
this court in Lexington Homes, we were guided by two well-
established copyright doctrines—scènes à faire and merger—
that constrain the ability of infringement plaintiffs to claim
expansive intellectual-property rights in a manner that
impedes future creativity. Applying these doctrines, we held
that Design Basics’ copyright in its floor plans is thin. Id. at
1101–05. The designs consist mainly of unprotectable stock
elements—a few bedrooms, a kitchen, a great room, etc.—
No. 19-2716 3
and much of their content is dictated by functional consider-
ations and existing design conventions for affordable, sub-
urban, single-family homes. When copyright in an
architectural work is thin, only a “strikingly similar” work
will give rise to a possible infringement claim. Id. at 1105.
Applying this standard, we held that no reasonable jury
could find for Design Basics and affirmed a summary judg-
ment against it. Id.
This latest appeal meets the same fate. Design Basics
sued Signature Construction, Inc., and related companies,
accusing them of copying ten of its registered floor plans for
suburban, single-family homes. The district court entered
summary judgment for the defendants based largely on the
reasoning of Lexington Homes.
Design Basics asks us to overrule Lexington Homes. We
decline to do so. And we take this opportunity to restate and
clarify the elements of a prima facie case of infringement,
both as a general matter and more particularly in cases
involving works of this type in which copyright protection is
thin. For this category of claims, only extremely close copy-
ing is actionable as unlawful infringement. Put more precise-
ly, this type of claim may move forward only if the plaintiff’s
copyrighted design and the allegedly infringing design are
virtually identical. That standard is not satisfied here, so we
affirm.
I. Background
We described Design Basics’ business strategy in
Lexington Homes; a brief summary will suffice for present
purposes. Design Basics holds registered copyrights in
thousands of floor plans for suburban, single-family homes.
Lexington Homes, 858 F.3d at 1096. The plans are not technical
4 No. 19-2716
construction drawings. Rather, they are basic schematic
designs, largely conceptual in nature, and depict layouts for
one- and two-story single-family homes that include the
typical rooms: a kitchen, a dining area, a great room, a few
bedrooms, bathrooms, a laundry area, a garage, stairs,
assorted closets, etc.
More than a decade ago, Patrick Carmichael and Myles
Sherman bought Design Basics “as an investment opportuni-
ty.” 1 Id. at 1096. Since then, litigation proceeds have become
“a principal revenue stream” for the firm. Id. at 1097. Indeed,
Design Basics incentivizes its employees to search the Inter-
net for litigation targets by paying a finder’s fee—a percent-
age of net recovery—if they locate a prospective
infringement defendant. This is the core of the firm’s busi-
ness model. Id.
The firm maintains an easily accessible website display-
ing 2,847 floor plans. It also regularly sends mass mailings of
its designs to members of the National Association of Home
Builders. Over the years the firm has sent millions of publi-
cations containing its floor plans to home builders. When it
initiates litigation, it hopes—indeed, expects—to find these
designs in the defendant’s files.
This case has its genesis in that business model. In 2014
Paul Foresman, Director of Business Development at Design
Basics, emailed Carmichael with the subject line: “A gift for
you.” Foresman told Carmichael that by using the Internet
Archive’s Wayback Machine, he discovered that a firm
called “Signature Homes” may have copied some of Design
Basics’ home designs. Carmichael was initially confused
1Carmichael & Dame Designs, Inc., is named as an additional plaintiff. It
has no independent role in this litigation, so we mention it no further.
No. 19-2716 5
because Design Basics was already asserting infringement
claims against a firm by that name, but Foresman clarified
that this Signature Homes—based in Illinois—was a different
company. Pleased with Foresman’s discovery, Carmichael
wrote back: “Wow very nice gift my friend.”
This infringement suit followed. In 2016 Design Basics
sued Signature Construction and related companies, 2 alleg-
ing that they infringed ten of its floor plans. During discov-
ery, Design Basics learned that Signature’s files contained
photocopies of four of its plans: “Ainsley,” “2461 Shawnee,”
“2963 Columbus,” and “9169 Kempton Court.” The photo-
copies were found in Signature’s files for homes labeled
“Carlisle,” “Lot 119 Lake Falls,” “Lot 63 Sommer Place,” and
“Lot 309 Stonegate,” respectively. The photocopy of Design
Basics’ 2461 Shawnee floor plan had red markings on it,
indicating modifications to the plan. John Tanner, a drafts-
man at Signature, testified that he received the marked-up
image from Steve Meid, a Signature partner, and understood
that the markings were modifications that Meid wanted him
to make.
At the end of lengthy discovery, Signature moved for
summary judgment, relying heavily on our ruling against
Design Basics in Lexington Homes. As we explained in that
opinion, under the scènes à faire and merger doctrines,
Design Basics’ copyright protection in its floor plans is thin,
id. at 1101–05, and therefore only a “strikingly similar” plan
would give rise to an infringement claim, id. at 1105. Using
2 The other corporate defendants are Signature Homebuilders, LLC;
Signature Development of Peoria, Inc.; Signature Homes of Bloomington,
LLC; Ironwood Homes, Inc.; and Ironwood Homes of Peoria, LLC.
Randy Peifer, an investor in some of the Signature companies, is also a
defendant. We refer to the defendants collectively as “Signature.”
6 No. 19-2716
this standard, we held that no reasonable jury could find
infringement. Id. Along the way to this conclusion, we noted
that Design Basics had not submitted expert testimony to
support its claim, relying instead on a conclusory declaration
from one of its draftsmen. Id. at 1104.
Design Basics tried to avoid that same criticism here by
submitting an affidavit from a third-party expert in opposi-
tion to Signature’s summary-judgment motion. The witness,
Matthew McNicholas, is an architect and has served as an
outside expert for Design Basics in at least 13 lawsuits.
McNicholas asserted that Signature “unquestionably in-
fringed” Design Basics’ home plans.
To support that opinion, McNicholas produced a
103-page report. The first 30 pages cover his qualifications
and explain his general views on architectural copyright
law. Pages 32–85 are descriptions of the ten copyrighted
floor plans at issue in this case. This section of his report
contains narrative descriptions of the features of each Design
Basics floor plan, but the descriptions are remarkably similar
to one another. Indeed, some parts are almost word-for-
word identical.
A few examples will illustrate. For the Design Basics
floor plan called “The Linden,” McNicholas wrote: “The idea
behind the plan of The Linden focuses on creating a home
for entertaining guests, and whose spaces are flexible
enough to meet the needs of a broad range of potential
homeowner[s].” One of the features he analyzed is the front
door:
From the perspective of a guest, the sheltered
front door is a welcome area, not just with the
covered stoop, but also composed with walls to
No. 19-2716 7
either side of the entry, which shelter against
wind and driving rain. This consideration for
waiting guests reinforces the entertainment
value of this design decision.
His description of the floor plan called “The Manning” is
similarly generic: “The concept driving the plan of the
Manning centers around creating a home focused on enter-
tainment, but with enough flexibility to evolve into multiple
solutions as the homeowner needs, while maximizing
privacy.” Again, McNicholas described the front door:
From the perspective of a guest, the sheltered
front door is a welcome area, not just with the
covered stoop, but also arranged with the long
wall of the Living Room as a shelter against
driving wind and rain, while waiting for the
door to open. This consideration for waiting
guests reinforces the entertainment value of
this design decision.
His analysis of “The Paterson” is likewise almost identi-
cal: “The idea behind the plan of The Paterson focuses on
creating a home for entertaining guests, and whose spaces
are flexible enough to meet the needs of a broad range of
potential homeowner[s].” Regarding the front door,
McNicholas wrote:
From the perspective of a guest, the sheltered
front door is not just a welcome area, but with
walls to either side of the entry—which shelter
against wind and driving rain—it is a consid-
erate space. Further, the sidelight at the door
allows for transparency between the interior
and exterior, and this thoughtfulness for wait-
8 No. 19-2716
ing guests reinforces the entertainment value
of this design decision.
In short, the McNicholas report purports to separately
analyze the distinguishing features of each of the copyright-
ed plans at issue here, but the descriptions are so ordinary
and interchangeable as to be virtually meaningless.
The McNicholas report ends with a visual section con-
taining side-by-side comparisons of the Signature floor plans
and the Design Basics plans they are alleged to infringe. As
the district judge described this section of the report, the
expert “employed extensive color-filling” to depict parallel
rooms in the copyrighted and accused plans in matching
colors in an effort “to make the plans seem more similar.”
The judge rejected this technique as an attempt “to manipu-
late and enhance the appearance of similarity.” To control
for this problem, the judge extracted the line drawings from
the plans without the color-filling enhancements and con-
fined his analysis accordingly.
Comparing the unenhanced drawings, the judge deter-
mined as a matter of law that no unlawful copying occurred.
He noted multiple categories of dissimilarity between the
copyrighted and accused plans:
Room dimensions are different. Some plans
have more rooms than the plans they are al-
leged to infringe. Ceilings are of different
heights, and/or are of different styles (i.e., ca-
thedral versus flat versus tray). Exterior di-
mensions are different. Bathrooms are in
different locations. Sinks, tubs, toilets, and
showers are in different locations within bath-
rooms. Garages are of different sizes and/or are
No. 19-2716 9
in a different orientation to the rest of the
house.
Based on these observations and applying Lexington Homes,
the judge had no difficulty concluding that Signature’s plans
“are dissimilar enough to avoid infringing the thin copy-
right” in the Design Basics plans. The judge entered final
judgment for Signature, and Design Basics appealed.
II. Discussion
A. Proving Copyright Infringement
“Copyright and patents, the Constitution says, are to
‘promote the Progress of Science and useful Arts, by secur-
ing for limited Times to Authors and Inventors the exclusive
Right to their respective Writings and Discoveries.’” Google,
141 S. Ct. at 1195 (quoting U.S. CONST. art. I, § 8, cl. 8). To
that end, the Copyright Act, 17 U.S.C. §§ 101 et seq., estab-
lishes the prerequisites for copyright and sets limits on its
scope. Google, 141 S. Ct. at 1195–96 (explaining that Congress
weighs “the advantages and disadvantages” of copyright
protection and establishes “its boundaries and conditions,
the existence of exceptions and exemptions, all by exercising
its own constitutional power to write a copyright statute”).
The basic prerequisites are these: “Copyright protection
subsists … in original works of authorship fixed in any
tangible medium of expression … .” 17 U.S.C. § 102(a).
“Originality is a constitutional requirement” arising by
implication from the Constitution’s reference to “authors”
and “writings.” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co.,
499 U.S. 340, 346 (1991). The threshold for originality is low:
“Original, as the term is used in copyright, means only that
the work was independently created by the author (as
opposed to copied from other works), and that it possesses
10 No. 19-2716
at least some minimal degree of creativity.” Id. at 345 (citing
1 MELVILLE B. NIMMER AND DAVID NIMMER, NIMMER ON
COPYRIGHT § 2.01[A], [B] (1990)).
The Act lists categories of works that qualify for copy-
right protection, including “literary works,” “musical
works,” “dramatic works,” and “pictorial, graphic, and
sculptural works,” among others. § 102(a)(1), (2), (3), (5).
“Architectural plans” and “technical drawings” are included
in the statutory definition of “pictorial, graphic, and sculp-
tural works” and can be copyrighted in this category. § 101.
Until 1990, however, architectural works were not included
in § 102(a) as a stand-alone category of protected works.
That left some uncertainty about the status of constructed
designs—i.e., the buildings themselves—among other
complexities in this corner of copyright law. 1 NIMMER ON
COPYRIGHT § 2A.09[A] (Rev. ed. 2020); 2 WILLIAM F. PATRY,
PATRY ON COPYRIGHT § 3:101–3:107, Westlaw (database
updated March 2021).
In 1990 Congress amended the Act to create a separate
category of “architectural works” in the § 102(a) list, imple-
menting our nation’s obligations under the Berne Conven-
tion for the Protection of Literary and Artistic Works. See
Architectural Works Copyright Protection Act, Pub. L. No.
101-650, §§ 701–706, 104 Stat. 5133 (1990) (codified at
17 U.S.C. § 102(a)(8)). The 1990 legislation added the follow-
ing definition for the new statutory term “architectural
work”:
An “architectural work” is the design of a
building as embodied in any tangible medium
of expression, including a building, architec-
tural plans, or drawings. The work includes
the overall form as well as the arrangement
No. 19-2716 11
and composition of spaces and elements in the
design, but does not include individual stand-
ard features.
Id. § 702 (codified at 17 U.S.C. § 101).
Importantly, the Act limits the scope of copyright protec-
tion even for “works that the definitional provisions might
otherwise include.” Google, 141 S. Ct. at 1196. One prominent
limitation captures the traditional copyright principle
known as the “idea/expression dichotomy”—the line that
separates copyrightable expression from noncopyrightable
ideas and facts. Golan v. Holder, 565 U.S. 302, 328 (2012).
Section 102(b) codifies this principle: “In no case does copy-
right protection for an original work of authorship 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 embodied in
such work.”
The Act creates a cause of action for infringement and
provides as a general matter that “[a]nyone who violates any
of the exclusive [statutory] rights of the copyright owner …
is an infringer.” 17 U.S.C. § 501(a); see also id. § 501(b)
(providing a cause of action). This generalization doesn’t
shed much light on what it takes to prove a claim, but the
courts have developed and explained the plaintiff’s burden
of proof. The doctrine begins with this statement from the
Supreme Court: “To establish infringement, two elements
must be proven: (1) ownership of a valid copyright, and
(2) copying of constituent elements of the work that are
original.” Feist, 499 U.S. at 361. This concise formulation
obscures a good deal of complexity beneath the surface, but
it provides a basic framework for the claim.
12 No. 19-2716
The first element—ownership of a valid copyright—is
not contested here. Design Basics registered its floor plans
with the United States Copyright Office, and Signature does
not dispute its ownership or the validity of the copyrights.
We therefore assume, as we did in Lexington Homes, “that
Design Basics owns the plans and that the plans are entitled
to some copyright protection, i.e., they were created inde-
pendently and possess a modicum of creativity” to satisfy
the minimal originality requirement. 858 F.3d at 1099.
This litigation turns on the second element, as many in-
fringement cases do. At this step of the general framework,
the plaintiff must prove that the defendant “cop[ied] …
constituent elements of the [copyrighted] work that are
original.” Feist, 499 U.S. at 361. This element actually en-
compasses two distinct questions, although our caselaw
hasn’t always neatly separated them. The first question is
whether, as a factual matter, the defendant copied the
plaintiff’s protected work (as opposed to independently
creating a similar work); the second question is whether the
copying “went so far as to constitute an improper appropria-
tion.” Atari, Inc. v. N. Am. Philips Consumer Elecs. Corp.,
672 F.2d 607, 614 (7th Cir. 1982); see also 4 NIMMER ON
COPYRIGHT § 13.01[B] (Rev. ed. 2020) (explaining the two
components of the second element in the Feist framework).
The Ninth Circuit refers to these distinct subsidiary ele-
ments as “copying” and “unlawful appropriation.”
Rentmeester v. Nike, Inc., 883 F.3d 1111, 1117 (9th Cir. 2018).
The Second Circuit uses the terms “copying” and “wrongful
copying.” Zalewski v. Cicero Builder Dev., Inc., 754 F.3d 95, 100
(2d Cir. 2014). Whatever the nomenclature, the point is to
capture the important differences between the two.
No. 19-2716 13
In all infringement cases, the plaintiff must prove, as a
factual matter, that the defendant actually copied his work.
Lexington Homes, 858 F.3d at 1099. “Proof of copying by the
defendant is necessary because independent creation is a
complete defense to copyright infringement.” Rentmeester,
883 F.3d at 1117. For “[n]o matter how similar the plaintiff’s
and the defendant’s works are, if the defendant created his
independently, without knowledge of or exposure to the
plaintiff’s work, the defendant is not liable for infringe-
ment.” Id.
Importantly, proof of actual copying is necessary but not
sufficient to establish liability for infringement. “Not all
copying … is copyright infringement,” Feist, 499 U.S. at 361,
so the plaintiff must also prove that the defendant’s copying
was wrongful—i.e., that the defendant took enough of his
protected expression (as opposed to unprotectable ideas,
concepts, facts, etc.) to constitute unlawful appropriation of
his expressive work. Rentmeester, 883 F.3d at 1117; Zalewski,
754 F.3d at 100–01.
The first of these subsidiary elements—let’s call it “actual
copying” or “copying in fact”—can be proved either directly
or indirectly. Direct evidence is rare, so many cases turn on
inferences to be drawn from circumstantial evidence. A
circumstantial case of actual copying requires: (1) evidence
that the defendant had access to the plaintiff’s copyrighted
work (enough to support a reasonable inference that the
defendant had an opportunity to copy); and (2) evidence of a
substantial similarity between the plaintiff’s work and the
defendant’s work (enough to support a reasonable inference
that copying in fact occurred). Lexington Homes, 858 F.3d at
1099; see also Rentmeester, 883 F.3d at 1117; Zalewski, 754 F.3d
at 100–01.
14 No. 19-2716
We have acknowledged the possibility that an accused
work may bear such “an uncanny resemblance” to a copy-
righted work that copying is “the only plausible explana-
tion” for the similarity. Lexington Homes, 858 F.3d at 1100. In
such a case, “further proof of access may not be required.”
Id. But the exception is “rare” and reserved for “unusual
cases.” Id. Ordinarily, “to prove a circumstantial case of
copyright infringement, the plaintiff must separately prove
both access and similarity.” Id.
Confusion sometimes arises because the test for unlawful
appropriation—a distinct inquiry—also looks for substantial
similarity between the defendant’s work and the plaintiff’s
work. As the Second Circuit has explained, “a close similari-
ty between two works is often relevant to proving both actual
copying and wrongful copying.” Zalewski, 754 F.3d at 101
(emphasis added). Accordingly, the cases often use “the
same term—‘substantial similarity’—to describe both the
degree of similarity relevant to proof of copying and the
degree of similarity necessary to establish unlawful appro-
priation.” Rentmeester, 883 F.3d at 1117. But “[t]he term
means different things in those two contexts.” Id.
The difference hinges on the distinction between the pro-
tected and unprotected elements in the plaintiff’s work. Id.;
see also Zalewski, 754 F.3d at 101. When used as a test for
actual copying in a circumstantial case, the requirement of
“substantial similarity” is not limited to the protected ele-
ments of the plaintiff’s work. Similarities that relate to either
the protected or unprotected elements of the plaintiff’s work
may be probative of actual copying; the inquiry simply looks
for the kind and degree of similarity that “one would not
expect to arise if the two works had been created inde-
pendently.” Rentmeester, 883 F.3d at 1117. Put somewhat
No. 19-2716 15
differently, in a circumstantial case, the plaintiff has the
burden to show that the two works are so similar that copy-
ing is a better explanation for the similarities than pure
coincidence.
But “similarity that relates to unprotected elements is pro-
bative only of [actual] copying—not wrongful copying.”
Zalewski, 754 F.3d at 101 (emphasis added). Wrongful copy-
ing—unlawful appropriation—requires substantial similari-
ties between the defendant’s work and protected elements in
the plaintiff’s copyrighted work. Rentmeester, 883 F.3d at
1117. “When an original work contains many unprotected
elements, … a close similarity between it and a copy may
prove only copying, not wrongful copying.” Zalewski,
754 F.3d at 101.
To preserve the distinction between these two concepts,
we will follow the Second Circuit’s lead and use the term
“probative similarity” to refer to the degree of similarity
necessary to support an inference of actual copying and the
term “substantial similarity” to refer to the test for wrongful
copying or unlawful appropriation. Id.
Our circuit, like most others, uses the “ordinary observ-
er” test for unlawful appropriation: “whether 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 protect[a]ble expres-
sion by taking material of substance and value.” Wildlife
Express Corp. v. Carol Wright Sales, Inc., 18 F.3d 502, 508–09
(7th Cir. 1994) (quoting Atari, 672 F.2d at 614). 3
3 See also Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 33–34
(1st Cir. 2001); Leigh v. Warner Bros., Inc., 212 F.3d 1210, 1214 (11th Cir.
2000); Hartman v. Hallmark Cards, Inc., 833 F.2d 117, 120 (8th Cir. 1987);
16 No. 19-2716
B. Scènes à Faire and Merger
In Lexington Homes we explained at length that under the
scènes à faire and merger doctrines, Design Basics holds only
thin copyright protection in its floor plans. Just a brief recap
is needed here.
Standard elements in a genre—called scènes à faire 4 in
copyright law—get no copyright protection. Scènes à faire are
“so rudimentary, commonplace, standard, or unavoidable
that they do not serve to distinguish one work within a class
of works from another.” Bucklew v. Hawkins, Ash, Baptie &
Co., 329 F.3d 923, 929 (7th Cir. 2003). If standard elements
received copyright protection, then the creation of a single
work in a genre would prevent others from contributing to
that genre because the copyright owner would have exclu-
sive rights in all of the genre’s basic elements.
We explained in Lexington Homes that Design Basics’
floor plans largely consist of scènes à faire. 858 F.3d at 1102–
03. Every plan has a kitchen, a great room or living room, a
dining room, bedrooms, bathrooms, and so forth. The ar-
rangements of the rooms are also largely scènes à faire. The
kitchen is always close to the dining room; the bedrooms
will usually be clumped together and near a bathroom; the
door from the garage into the house usually leads to the
kitchen rather than the great room or living room.
What accounts for these familiar arrangements? Conven-
tion in this genre, certainly, which brings this particular type
Universal Athletic Sales Co. v. Salkeld, 511 F.2d 904, 907 (3d Cir. 1975);
Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946).
4 French for “scenes for action.” Scènes à faire, BLACK’S LAW DICTIONARY
(11th ed. 2019).
No. 19-2716 17
of architectural work within the scènes à faire doctrine. 5 But
the arrangements are also dictated by functionality. The
kitchen is near the dining room so that food can easily be
moved between the two rooms. The bedrooms aren’t near
the front hall because guests don’t venture into the bed-
rooms.
The functionality of the room arrangements is where the
doctrine of merger comes in. Merger arises from § 102(b),
which, as we’ve explained, codifies the idea–expression
dichotomy and specifies that copyright never extends to an
idea, procedure, principle, or concept. Copyright protects
only expression; patent law is the proper instrument for
protecting functionality. See Eldred v. Ashcroft, 537 U.S. 186,
217 (2003).
Merger doctrine prevents the use of copyright to protect
an idea or procedure. If an idea or procedure can be ex-
pressed in only a few ways, it is easy to copyright every
form in which the idea can be expressed, indirectly protect-
ing the idea itself. 4 NIMMER ON COPYRIGHT § 13.03[B][3]; see
also Morrissey v. Procter & Gamble Co., 379 F.2d 675, 678–79
(1st Cir. 1967). To guard against this kind of overprotection,
when an idea can be expressed in only limited ways, courts
say that the expression “merges” into the idea and cannot
receive copyright protection. Lexington Homes, 858 F.3d at
1102. For example, the forms used to implement a particular
method of accounting are an expression of the accounting
method and cannot be copyrighted. Baker v. Selden, 101 U.S.
99 (1879). The same is true for the rules of a sweepstakes
competition: because there are a limited number of ways to
5 Recall as well that under the definition of an architectural work,
“individual standard features” are not protected. 17 U.S.C. § 101.
18 No. 19-2716
explain the rules, the expression of the rules receives little, if
any, copyright protection. Morrissey, 379 F.2d at 678–79.
Merger also applies to the Design Basics home plans. The
functional requirements of living spaces dictate that particu-
lar rooms be placed close together. And the general concept
of the affordable, multipurpose, suburban, single-family
home also contributes to the design. This isn’t to say that
there is only one way to arrange the rooms in this home-
design genre. But there are only a limited number of possible
floor plans, and by creating more than 2,800 of these plans,
Design Basics has attempted to occupy the entire field. We
wondered in Lexington Homes if “there is any blueprint for a
single-family home anywhere in the country that Design
Basics could not match to one of its own designs.” 858 F.3d
at 1103. If Design Basics held any more than thin copyright
protection in its floor plans, it would own nearly the entire
field of suburban, single-family home design.
The McNicholas report reinforces our holding in
Lexington Homes that the copyright in the Design Basics floor
plans is thin. Although McNicholas set out to demonstrate
the unique nature of the ten plans at issue here, his report
demonstrates just the opposite. As we’ve explained, the
report describes each floor plan in generic and often nearly
identical language. The report shows that each floor plan
uses the same design features to accomplish the same ends.
Accordingly, although Design Basics asks us to revisit
our decision in Lexington Homes, we see no reason to do so.6
6 Design Basics urges us to instead adopt the First Circuit’s approach in
T-Peg, Inc. v. Vermont Timber Works, Inc., 459 F.3d 97 (1st Cir. 2006), which
looked to similarities in the “overall form” of the buildings to assess
architectural copyright infringement. Id. at 113–14. Design Basics is
wrong to suggest that our approach differs from the First Circuit’s.
No. 19-2716 19
To the contrary, we reiterate our conclusion that Design
Basics holds only thin copyright in its floor plans. Id. at
1101–02. And in this particular architectural genre in which
copyright protection is thin, proving unlawful appropriation
takes more than a substantial similarity between the plain-
tiff’s work and the defendant’s work. Instead, only a virtual-
ly identical plan infringes the plaintiff’s copyrighted plan.
Incredible Techs., Inc. v. Virtual Techs., Inc., 400 F.3d 1007,
1013–14 (7th Cir. 2005).
C. Application
We can make short work of applying these principles to
this record. Except for the 2461 Shawnee plan, Design Basics
has no direct evidence of actual copying. For the remaining
nine plans, it must rely on circumstantial proof of actual
copying, which requires evidence of both access and proba-
tive similarity.
We can safely skip the issue of access. The district judge
aptly observed that the Signature plans are dissimilar in
material respects from the plans they are alleged to infringe.
They have different room dimensions, ceiling heights and
styles, and exterior dimensions. Some have a different
number of rooms, and the garages are sometimes placed at
T-Peg, like Lexington Homes, applied well-established principles of
copyright law to the facts at hand. But the facts in T-Peg were materially
different from this case and from Lexington Homes. The architectural
plans at issue there were for a timber-frame home, a design driven as
much by aesthetics as by functionality. Id. at 101. The First Circuit thus
reasonably refrained from holding that the scènes à faire and merger
doctrines meant that the timber-frame home plans received limited
protection. There is no reason to think that the First Circuit would
analyze plans for suburban, single-family tract homes any differently
than we did in Lexington Homes.
20 No. 19-2716
different angles to the homes. These differences are enough
as a matter of law to preclude an inference of actual copying.
For the same reason, even if we assume that actual copy-
ing occurred in the case of the 2461 Shawnee floor plan, no
reasonable jury could find unlawful appropriation.
Signature’s Lot 119 Lake Falls floor plan is not virtually
identical to the 2461 Shawnee. Though both designs depict a
one-story ranch with a kitchen, breakfast room, great room,
dining room, three bedrooms, and two bathrooms in the
same general locations, see Appendix, the Signature plan is
different from the 2461 Shawnee in some notable ways. It
has greater square footage, and the room dimensions are
subtly different. The ceilings have different heights, and the
two homes have different aspect ratios. The 2461 Shawnee
has a two-car garage and its walls are parallel to the home,
while the Lot 119 Lake Falls plan features a three-car garage
placed at an angle to the rest of the home. Although most of
the rooms are located in the same relative positions, some
are not: where the 2461 Shawnee plan places a bathroom, the
Lot 119 Lake Falls plan has a walk-in closet.
In a field unconstrained by convention and functionality,
the similarity of the overall layouts of the two floor plans
would be noticeable. But suburban, single-family housing is
a field with many standard elements and limited possibili-
ties for creativity, so the Lot 119 Lake Falls plan must be
virtually identical to the 2461 Shawnee to infringe Design
Basics’ thin copyright. Under this standard, Signature’s plan
is noninfringing as a matter of law.
Finally, we note for completeness that we find no flaw in
the district judge’s conclusion that Signature’s plans are
dissimilar enough to preclude liability even under ordinary
substantial-similarity analysis. As we explained when
No. 19-2716 21
discussing probative similarity, each Signature plan features
different room dimensions, ceiling styles and heights, and
exterior dimensions than the Design Basics plan it is alleged
to infringe. The number and placement of rooms is some-
times different, as is the size and (in some cases) the location
of the garage. Accordingly, the judge correctly concluded
that the Signature plans are noninfringing under conven-
tional substantial-similarity analysis; the plans are certainly
not virtually identical to the Design Basics plans they are
alleged to infringe. Summary judgment for Signature was
proper.
AFFIRMED
22 No. 19-2716
Appendix
Design Basics’ 2461 Shawnee Plan
Signature Construction’s Lot 119 Lake Falls Plan