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Lack of Detail No Reason to Deny Copyright Protection to Architectural Works

Tuesday, August 21, 2012

There is no requirement that architectural drawings contain sufficient detail to support actual construction in order to warrant copyright protection under Section 102(a)(5) of the Copyright Act, the U.S. Court of Appeals for the Second Circuit held Aug. 15 (Scholz Design v. Sard Custom Homes LLC, 2d Cir., No. 11-3298, 8/15/12).

Accordingly, the appeals court reinstated copyright infringement claims that a district court had dismissed after determining that architectural drawings must contain a requisite amount of detail and specificity in order to command copyright protection under the Architectural Works Copyright Protection Act, Pub. L. No. 101-650.

Rather than looking to the AWCPA, the district court instead should have confined its determination to whether the drawings were sufficiently creative to warrant copyright protection as a “pictorial” work under Section 102(a)(5) of the Copyright Act, the appeals court said. Under such analysis, “[W]e think this to be a straightforward case of infringement,” the court said, reversing the lower court's dismissal of the plaintiff's copyright infringement, breach of contract, and Digital Millennium Copyright Act claims.

Former Associate's Drawings Used Without Permission.

Scholz Design Co. holds a copyright for architectural drawings and designs of homes known as “Springvalley A,” “Wethersfield B,” and “Breckinridge A.”

Sard Custom Homes was a former Scholz registered builder and had access to these designs. It posted thumbnail images of the drawings without the original credit line on Prudential Connecticut Realty and Coldwell Banker Residential Real Estate Inc. websites and also advertised on those sites the ability to build homes on the advertised lots.

Scholz sued Sard, Prudential, and Coldwell Banker for copyright infringement.

Sard moved to dismiss the claims, arguing that Scholz does not hold valid copyrights in the images depicted. Sard said the thumbnail depictions of drawings are not architectural or technical plans and thus are not protectable by copyright.

Judge Janet Bond Arterton agreed, ruling that in order to command copyright protection a drawing must contain sufficient detail to enable construction. The court's ruling relied heavily on Attia v. Society of the New York Hospital, 201 F.3d 50, 53 USPQ2d 1253 (2d Cir. 1999), which it said stood for the proposition that conceptual drawings do not constitute protected expressions.

Scholz appealed.

Only Issue is Whether Drawings Protected By Copyright.

The district court below assumed that the thumbnails that appeared on the defendants' website were carbon copies of the Scholz drawings, and thus Judge Robert D. Sack said that the only issue on appeal was whether those drawings were entitled to copyright protection.


“Copyright protection of a pictorial work, whether depicting a house, or a flower, or a donkey, or an abstract design, does not depend on any degree of detail.”
Judge Robert D. Sack, Second Circuit Court of Appeals

While a certificate of copyright registration is prima facie evidence of a valid copyright, that presumption may be rebutted, the court said. In fact, that presumption was rebutted by Sard below because although the drawings were registered, the district court concluded that the works lacked sufficient detail to qualify for copyright protection. That conclusion was in error, the appeals court said.

“Copyright protection of a pictorial work, whether depicting a house, or a flower, or a donkey, or an abstract design, does not depend on any degree of detail,” the court said. “The rights Scholz claims in this suit derive from the general copyright law and not from the AWCPA, which has no relevance to the suit.”

AWCPA not Relevant.

Even before the AWCPA was enacted in 1990, architectural plans were protectable as a “pictorial, graphic, and sculptural work” under Section 102(a)(5), the court noted. The court further noted that the AWCPA's extension of protection to constructed buildings, under Section 102(8), was done in order to bring the United States into compliance with the Berne Convention. Quoting T-Peg Inc. v. Vermont Timber Works Inc., 459 F.2d 97, 79 USPQ2d 1919 (1st Cir. 2006) (170 PTD, 9/1/06), the court said:

[After the AWCPA,] the holder of a copyright in an architectural plan … has two forms of protection, one under the provision for an “architectural work” under 17 U.S.C. § 13 102(a)(8), and another under the provision for a “pictorial, graphical, or sculptural work” under 17 U.S.C. § 102(a)(5).  

 

Moreover, quoting the Eleventh Circuit's opinion in Oravec v. Sunny Isles Luxury Ventures LC, 527 F.3d 1218, 86 USPQ2d 1661 (11th Cir. 2008) (97 PTD, 5/20/08), the court said, “[T]he scope of copyright protection for architectural plans registered under § 102(a)(5) was unaffected by the AWCPA.”

“Thus, prior to passage of the AWCPA courts had held that use of copyrighted architectural plans to construct a building would not constitute infringement, but then as now, copying those plans would,” the court said.

In fact, the court said the district court accurately described the case law when it said, “The rule which emerges from [the pre-AWCPA] 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.” What the district court failed to understand, however, was that sketches and drawings, such as the ones Scholz claims were infringed here, were protected prior to the enactment of the AWCPA, though the buildings they depicted were not. The court added:

The district court seems to have misunderstood the import and relevance of this distinction in concluding that under section 102(a)(5), architectural sketches or drawings are required to include a certain level of detail to receive protection. Where the complaint alleges unlawful copying of a pictorial work registered under section 102(a)(5), there is no requirement of any level of detail.  

 

Works Protection Under Section 102(a)(5).

Indeed, the court criticized the district court for requiring a heightened level of creativity simply because the works were related to architecture. “It is black-letter law … that courts accept as protected 'any work which by the most generous standard may arguably be said to evince creativity,' ” the court said, quoting 1-2 Melville B. Nimmer & David Nimmer, Nimmer on 9 Copyright § 2.08 (2012).

It added:

We see no reason why Scholz's drawings depicting the appearance of houses it had designed should be treated differently from any other pictorial work for copyright purposes. Andrew Wyeth and Edward Hopper were famous for their paintings of houses, and Claude Monet for paintings of the Houses of Parliament and of Rouen Cathedral. None of these depictions of buildings were sufficiently detailed to guide construction of the buildings depicted, but that would surely not justify denying them copyright protection.  

 

Accordingly, the court said pictorial works, such as the ones created by Scholz, can be entitled to copyright protection. The court next turned its attention to the lower court's reliance on case law.

District Court Misapplied Case Law.

The court noted that the district court “principally relied on three other cases” in making its determination. The appeals court analyzed each case, ultimately concluding that all three were misconstrued.

The district court relied on Attia v. Society of the New York Hospital, 201 F.3d 50, 53 USPQ2d 1253 (2d Cir. 1999), for the proposition that in order to be entitled to copyright protection, drawings must contain sufficient detail to enable construction. But the appeals court said Attia in fact made no such sweeping proclamations.

In that case, Eli Attia was retained by defendant Society of New York Hospital to devise a plan for the renovation of New York Hospital. Attia developed the concept of a new building to be constructed on a platform over F.D.R. Drive, and presented the concept in a series of booklets containing architectural drawings and sketches.

However, the project ultimately went to defendants Hellmuth Obata & Kassabaum Inc. and another firm (the architects), which prepared “schematic design drawings” for a building over F.D.R. Drive. Attia sued the hospital and the architects for copyright infringement and reverse passing off under the Lanham Act's Section 43(a), 15 U.S.C. §1125(a), arguing that the hospital's schematic drawings were copies of his protected materials.

Affirming a summary judgment of noninfringement, the Second Circuit explained that the similarities in the drawings did not go beyond generalized ideas and concepts in the plaintiff's drawings pertaining to the placement of elements, traffic flow and engineering strategies.

In the instant case, the district court determined that Attia's reference to generalized ideas and concepts meant that non-detailed drawings could not be copyrighted. That is a fallacy, the appeals court said.

But Attia never alleged that his sketches themselves were unlawfully copied. Instead he contended that certain elements of his sketches were incorporated into the allegedly infringing plans, such as placement of the hospital expansion above the FDR Drive. We in no way suggested that the plaintiff's drawings in Attia did not enjoy copyright protection. Our ruling was merely that, assuming the defendant copied something from the plaintiff's drawings, what was copied was only unprotected ideas, and not the plaintiff's protected expression of those ideas. That ruling simply does not support the district court's analysis here.  

 

In this case, Scholz alleged that the entire sketch was copied and not just that certain elements of the design were misappropriated. “Attia therefore has little relevance to the case before us,” the court said.

Similarly, the court dismissed the lower court's reliance on both Robert R. Jones Associates Inc. v. Nino Homes, 858 F.2d 274, 8 USPQ2d 1224 (6th Cir. 1988), and Imperial Homes Corp. v. Lamont, 458 F.2d 895, 899, 173 USPQ 519 (5th Cir. 1972).

The district court erroneously read Robert R. Jones to stand for the proposition that there can be no infringement if the alleged copying of architectural drawings does not result in construction. “What the court seems to have meant was that, while the construction of the home based on copyrighted plans is not an infringement (under the pre-AWCPA law), the copying of the plans is an infringement,” the appeals court said of Robert R. Jones.

Likewise, Lamont's determination that a floor plan was sufficiently detailed to warrant copyright protection is irrelevant to this case, the court said. “That court, however, like the court in Robert S. Jones, did not indicate that a less-detailed plan or drawing would not be entitled to copyright protection.”

Thus, the court said the case law simply did not support the district court's dismissal of the copyright infringement claims.

Issue of First Impression, But 'Straightforward Case.'

“Although we have not directly addressed the question with which the district court grappled here, we have twice explained that architectural technical drawings might be subject to copyright protection even if they are not sufficiently detailed to allow for construction,” the court said.

The first such instance was in Attia, where the Second Circuit noted that final copyright protection could extend to unfinished construction drawings. Two years later Sparaco v. Lawler, Matusky, Skelly, Engineers LLP, 303 F. 3d 460, 64 USPQ2d 1363 (2d Cir. 2002) (186 PTD, 9/25/02), stated “We do not mean to imply that technical drawings cannot achieve protected status unless they are sufficiently complete and detailed to support actual construction.”

Given this relevant case law, the court here deemed this “a straightforward case of infringement.” Accordingly, the court reversed the district court's dismissal of the copyright infringement claims.

Judges Peter W. Hall and Pierre N. Leval joined the opinion.

Scholz was represented by Louis K. Bonham of Osha Liang, Austin Texas. Sard was represented by John J. Robacynski of Rome, Clifford, Katz & Koerner, Hartford, Conn. Caldwell Banker was represented by Thomas J. Finn of McCarter & English, Hartford, Conn.

By Tamlin H. Bason  


Opinion at http://pub.bna.com/ptcj/113298Aug1512.pdf

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