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Architectural Design, Though Very Similar to Plaintiff’s, Does Not Infringe on Copyright, U.S. Court Holds
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July 27, 2009
Howrey LLP
Because two architectural designs contained unprotected common design elements attributable to owner input, zoning requirements and physical restrictions, the two works were not “substantially similar,” and no copyright infringement occurred, the U.S. Court of Appeals for the 6th Circuit held.
Defendant Gary Olson, an architect, prepared a sketch for renovation and expansion of a commercial building of defendant B&B Pools Service and Supply Co. After doing so, Olson concluded that he was unable to work further on the project at that time. B&B then contracted with plaintiff Tiseo Architects, Inc. to prepare preliminary design plans and site plans for the project. B&B left open the possibility that it might retain Tiseo for the construction documents phase of the project.
Throughout the design, B&B supplied Tiseo with its design preferences. It also informed Tiseo of zoning and physical restrictions to which the project was subject. Tiseo modified its design several times to reflect B&B’s preferences.
B&B used Tiseo’s site plan to obtain approval from the Livonia (Michigan) zoning board and paid Tiseo in full under their contract for the preliminary design and site plan. But, B&B did not retain Tiseo to prepare construction plans. Rather, B&B hired Olson to do so. B&B provided Olson with photographs of the existing building, sketches of the existing layout and ideas about what it wanted to accomplish with the addition. Olson had access to Tiseo’s drawings but testified that he did not copy Tiseo’s design. As with Tiseo’s design, B&B requested multiple revisions of the plans prepared by Olson.
Upon discovering that B&B had completed its addition, Tiseo filed its site plan drawings with the Copyright Office and filed suit against B&B and Olson, alleging that the construction plans for the addition infringed Tiseo’s copyright in the site plan drawings. Tiseo’s complaint also alleged violations of the Lanham Act (trademarks) and civil conspiracy.
The U.S. District Court, after conducting a bench trial, ruled for B&B and Olson on the claims of copyright infringement. It held that Tiseo “did not carry the burden of proving substantial similarity by a preponderance of the evidence.” The court also ruled for the defendants on the Lanham Act and civil conspiracy counts because “no proof” was presented to support those claims.
Because direct evidence of copying is rarely available, a copyright plaintiff may establish an inference of copying by showing: 1) access to the allegedly-infringed work by the defendants and 2) a substantial similarity between the two works at issue. The District Court observed that because access to the alleged copyrighted work was admitted, the only issue in dispute was whether the two plans were substantially similar.
While the District Court noted in beginning its analysis that the two plans were “very, very similar,” it found that explanations existed for the similarities and balanced the similarity of the two works. Both works were based on B&B’s original sketches, incorporated B&B’s suggestions and preferences, and had to accommodate the same zoning restrictions and load-bearing wall. The District Court concluded that “there weren’t a lot of ways to lay out” the addition. It also held that the floor plan was as much B&B’s design as it was Tiseo’s. B&B’s suggestions and the restrictions imposed on the project balanced, if not outweighed, the substantial similarity between the plans. The District Court also noted that there were differences in the plans – in the roof line, windows and materials used.
Based on this analysis, the District Court concluded that the plaintiff had failed to prove that the drawings were substantially similar. Plaintiff appealed, and the 6th Circuit affirmed. Tiseo Architects, Inc. v. B&B Pools Service and Supply Co., 495 F.3d 344 (6th Cir. 2007).
On appeal, the plaintiff argued that the District Court’s analysis was improper because it first made a factual finding of substantial similarity and then engaged in a balancing test that explored how the substantial similarity came to be. Because the copyright law provides for no such balancing, the plaintiff argued, the District Court applied the wrong legal standard.
The appeals court explained that substantial similarity analysis is divided into two steps: 1) identifying which aspects, if any, of the work are protectable by copyright and 2) determining whether the allegedly infringing work is substantially similar to the protectable elements of the work.
The essence of the first step, it wrote, is to filter out the unoriginal, unprotectable elements -- the elements that were not independently created and that possess no minimal degree of creativity.
The appeals court held that the District Court’s explanation of the similarities between the plans was an attempt to identify the unoriginal and uncreative parts of Tiseo’s work that are not protected by copyright. Thus, the District Court filtered out may elements of Tiseo’s plans because they were unoriginal, having been based on B&B’s own sketches and on controlling project parameters, such as zoning requirements and physical constraints. Then, after filtering out those unprotectable elements of Tiseo’s plans, the appeals court wrote, the District Court compared the remaining protectable elements and found that Olson’s design was not substantially similar to them. Rather, it found “a lot of differences.”
The appeals court concluded that the District Court applied the proper legal standard and method of analysis. Accordingly, it affirmed the judgment in favor of the defendants. Because the Lanham Act claim paralleled the copyright infringement claim, the finding of no substantial similarity on the copyright claims precluded recovery on the trademark claim.
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For more information about the issues covered in this report, please contact Paul Berning in our San Francisco office at 415-848-4996 or at paulberning@howrey.com or contact your Howrey attorney. For more information about Howrey’s Construction Practice Group, click here.
©2009 Howrey LLP
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