Thumbnails Lack Detail for Copyright Shield; Byline Removal No Basis for DMCA Liability

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 Case Summary: An architectural firm fails to convince a district court that thumbnail images of its copyrighted architectural drawings are specific enough to command copyright protection, or that a builder's reposting of the images on real estate websites constitutes reverse passing off.

• Key Takeaway: These thumbnail images did not fall within the Copyright Act's protection for architectural plans because they were not specific enough to facilitate replication of the structure. As a result, a related DMCA claim involving the removal of a photo credit was not viable.

A builder that posted thumbnail images of a former associate's architectural drawings on a pair of real estate company websites, without the original photo credit, would have been liable under a copyright infringement theory rather than reverse passing off, if it had been liable at all, the U.S. District Court for the District of Connecticut ruled July 15 (Scholz Design Inc. v. Sard Custom Homes LLC, D. Conn., No. 10-1681, 7/15/11).

Dismissing the charges against the builder, the court ruled that the drawings did not have the specificity required to command copyright protection under the Architectural Works Copyright Protection Act, Pub. L. No. 101-650, so the claim could not proceed. Further, it ruled that the builder merely failed to attribute credit for the designs, and thus did not falsely designate the origin of the designs and commit reverse passing off.

Designs Used on Real Estate Websites

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, violations of the Lanham Act, breach of contract, and violations of the Digital Millenium Copyright Act. Specifically, the Lanham Act claim was that the use of the images violated the prohibition on reverse passing off.

Sard moved to dismiss the claims.

No Copyright for Thumbnails

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

The AWCPA extended copyright protection to architectural works that are not otherwise works of art, the court noted. However, to command copyright protection, drawings must contain sufficient detail to enable construction, the court said, citing Attia v. Society of the New York Hospital, 201 F.3d 50, 53 USPQ2d 1253 (2d Cir. 1999) (13 PTD, 01/20/00). Under Attia, preliminary, conceptual drawings do not constitute protected expressions, the court said.

In this case, Scholz did not allege that Sard had or would be able to construct homes to the specifications of its copyrighted architectural plans using the copied thumbnail images. So, under Attia, the alleged copying of these images did not form the foundation for a viable infringement claim, Judge Janet B. Arterton ruled.

“Without the necessary level of detail to allow construction, the copied images do not fulfill the intrinsic function of an architectural plan and thus the act of copying them does not violate any right protected by a copyright for architectural technical drawings,” the court said. Thus, it said that Scholz failed to state claims for copyright infringement that were plausible on their face.

No Reverse Passing Off

A claim alleging reverse passing off under the Lanham Act, 15 U.S.C. §1125, arises when credit for a copied work is misattributed, not when a work is copied without attribution, the court said.

“Although Scholz claims … that Sard, Prudential, and Coldwell Banker ‘have perpetrated a reverse passing off by removing Scholz's name' from the designs and representing that those designs are their own …, the web pages attached to the Amended Complaint do not reflect that Defendants misappropriated credit for the designs or the elevation drawings or in some way held those designs or drawings out as their own,” the court said. “Thus Defendants did not ‘repackage' these designs as their own, but instead failed to identify someone who contributed to the depictions in the thumbnails, and therefore have not misappropriated credit properly belonging to Scholz.”

The court accordingly held that Sard did not falsely designate the origin of the designs and did not commit reverse passing off.

DMCA Claims Dismissed as Well

The court also dismissed Scholz's related claim under the Digital Millennium Copyright Act, 17 U.S.C. §1202, as a party alleging the unauthorized removal of copyright management information must, as a threshold requirement, state a valid copyright claim, the court noted.

Scholz was represented by Tiffany E. Cavanaugh of Eastman & Smith, Toledo, Ohio. Sard was represented by John Joseph Robacynski of Katz & Koerner, Hartford, Conn.

By Amy E. Bivins and Nathan Pollard

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