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by Julia Bishop
In this architectural work copyright infringement action, Humphreys & Partners Architects, L.P. claimed defendants’ design and construction of a high-rise apartment building in McLean, Virginia, “Two Park Crest” (currently under construction), infringed upon Humphreys’ high-rise condominium building in Minneapolis, Minnesota, “Grant Park.” The court granted summary judgment for the defendants, ultimately concluding that no reasonable jury could find the Two Park Crest and the Grant Park designs extrinsically similar. Humphreys & Partners Architects, L.P. v. Lessard Design, Inc. et al., No. 1:13-cv-433, 2014 U.S. Dist. LEXIS 124305 (E.D. Va. Sept. 2, 2014) [an enhanced version of this opinion is available to lexis.com subscribers].
The Architectural Works Copyright Protection Act (“AWCPA”), enacted in 1990, amended the Copyright Act to provide protection for original and fixed architectural works. An architectural work, as defined by the Copyright Act, is the design of a building as embodied in any tangible medium, including architectural drawings and plans as well as a three-dimensional building itself. Copyright protection includes the overall form as well as the arrangement and composition of spaces and elements within the architectural design. Individual standard features or standard configurations of spaces or functionally required elements, however, are not protected. The AWCPA does recognize that creativity within architecture takes the form of selecting and arranging such non-protected elements into a creative original design. That is, while the individual elements such as doors, windows, kitchen sinks, code-required exit stairs, and so on, are not themselves protected by copyright, the choices made in the arrangement and placement of those features may be protected.
To establish a claim for copyright infringement, the plaintiff must show (1) that it owned a valid copyright and (2) that the defendant copied the original elements of that copyright. To establish the second prong, a plaintiff must show not only that the defendant copied plaintiff’s work but that the defendant copied the protected elements of the work, those that are original to the author.
Plaintiff’s Grant Park design appeared in architectural plans and drawings and was thereafter embodied in a building constructed in 2004 in Minneapolis. Humphreys obtained a Copyright Registration for the Grant Park design. A copyright registration creates a presumption of validity, but noting that this is easily rebuttable (the Copyright Office tends toward cursory issuance of registrations) the court denied Humphreys motion for partial summary judgment on the validity of its copyright.
Copying of Original Elements
Direct copying is often difficult to establish. However, a plaintiff may create a presumption of copying by indirect evidence by showing (1) that the defendant had access to the work and (2) that the defendant’s work is substantially similar to the protected material. The Fourth Circuit follows the two-pronged extrinsic/intrinsic test for substantial similarity and has applied this test specifically in the context of architectural works. A plaintiff must show that the two works are extrinsically similar because they contain substantially similar ideas that are subject to copyright protection. The plaintiff must also show that the works are intrinsically similar in the sense that they express those ideas in a substantially similar manner from the perspective of the intended audience.
Humphreys’ claim of copying of its design was premised on two undisputed facts: first, the architect Mr. Lessard attended a conference at which Mr. Humphreys gave a presentation titled “What’s Hot in Multifamily Design,” which included images of the Grant Park design, and second, during the Two Park Crest architect bidding and selection process, the defendant architects received an email containing the Grant Park design. The architect and development company defendants did not dispute access. The court moved on to the second part of the copying analysis: the substantial similarity inquiry. Are the two designs both extrinsically and intrinsically similar?
2. Extrinsic Similarity
The extrinsic similarity test is an objective inquiry. In conducting this inquiry, a court considers whether the two works contain substantially similar ideas that are subject to copyright protection.
Humphreys’ claimed that the two designs were substantially similar because both contained the same nine features. Among these features were that they were high-rise residential buildings with barbell-shaped floor plans, both featured stairwells adjacent to elevators, both contained alternating exterior vertical elements, and both featured projecting elements at the cornice of the rooflines.
[T]o conduct the extrinsic prong of the substantial similarity inquiry properly, the elements or features of a given design must first be disaggregated to determine whether each individual element or feature is protectable. And then, if necessary, it must be determined whether the overall arrangement of those elements warrants copyright protection under the AWCPA. Op. at 30.
The court first addressed Humphreys’ cited elements one by one, finding not only that each on its own was an unprotected, standard feature, but also that even if any element was protectable, that no reasonable jury could find that use within the Two Park Crest design was extrinsically similar to that within the Grant Park design.
This does not end the inquiry, however. The question remains whether the arrangement and composition of the spaces and elements within the Grant Park design is protectable and whether that arrangement within the Two Park Crest design was extrinsically similar. Humphreys argued that through combining the nine unprotectable features and arranging them in an original manner, the arrangement of those features is protectable and that this arrangement is substantially similar in the Grant Park and the Two Park Crest designs.
Although the AWCPA protects the overall arrangement and composition of spaces and elements, standard configurations of spaces and design elements that are functionally required are not protectable. The court found Humphreys’ design predictable and conventional and to be largely attributable to building code requirements. Even assuming that Humphreys’ overall arrangement of features in the Grant Park design waseligible for copyright protection, the Court found that the two designs at issue were “not any more extrinsically similar than any two randomly selected high-rise multifamily projects would be based on building code regulations and industry standard practices.” Op. at 46. The court awarded summary judgment to defendants.
Although the court noted that the Fourth Circuit has not specifically addressed whether a defendant who prevails on the extrinsic similarity prong of an infringement claim should be granted summary judgment, it nonetheless concluded that “defendants are entitled to summary judgment only based on the results of the extrinsic similarity analysis,” Op. at 47-48, citing the Ninth Circuit, Funky Films, Inc. v. Time Warner Entertainment, Co., L.P., 462 F.3d 1072, 1077 (9th Cir. 2006) (affirming summary judgment for defendant based on the extrinsic similarity prong of the substantial similarity analysis) [enhanced version].
Read more at Virginia IP Law by Troutman Sanders LLP.
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