Searching for Substantial Similarity Between Architectural Works in the Fourth Circuit

12/17/2014 by Attorney Sean M. Golden

Authored by attorneys Sean M. Golden & J. Brandon Sieg

To succeed in a claim of copyright infringement, a plaintiff must prove that “the defendant copied the original elements” of the plaintiff’s copyrighted work.[i]  In most cases, a plaintiff who suspects his copyrighted work has been infringed does not have direct evidence of copying.  In the absence of direct evidence that the defendant actually copied the plaintiff’s work, a plaintiff can create a presumption of copying, by presentingindirect evidence of copying.  This is done by establishing that (1) the defendant had access to the copyrighted work, and (2) that the defendant’s work is “substantially similar” to plaintiff’s protected material.[ii]

This substantial similarity inquiry has proven difficult for many courts, particularly in the context of claims for the infringement of architectural works.  The difficulties include determining what test to apply in analyzing whether there is substantial similarity, and determining what portions of the plaintiff’s work to consider when evaluating similarity.  After all, the plaintiff must prove that the defendant copied original elements of his copyrighted architectural work,[iii] meaning that not all elements of an architectural design are entitled to copyright protection (and, so, some elements can be copied without infringing).

Some courts have found the scope of protection for architectural works to be limited, or “thin,” and have set the bar high for what constitutes substantial similarity.  These courts perform an “analytical dissection” of non-protected elements from protected ones, and “filter” the nonprotectable elements from the plaintiff’s work.  Ultimately, these courts reach the conclusion that there is not much left deserving of copyright protection.  Other courts put less emphasis on “filtering out” unprotectable elements, and have addressed the substantial similarity question by considering the “total concept and feel” of the two works as wholes.  As a result, there is a split among courts regarding how much protection is provided to an architect by the copyright in its designs.

There was not a great deal of clarity for architects and their attorneys practicing within the Fourth Circuit, but a group of recent district court decisions appeared to set the trend toward more limited protection.  Then a ruling by the Fourth Circuit specified a different test, but this test leaves several questions regarding the substantial similarity inquiry unanswered, and it even raises some new ones.

This Article addresses the conflict between the opposing views on the substantial similarity inquiry with regard to architectural works and how some recent decisions from courts within the Fourth Circuit have addressed the inquiry.  It also evaluates how the Fourth Circuit’s most recent decision regarding substantial similarity might affect copyright protection of architectural works in the future.

Copyright Protection for Architectural Works
The United States Copyright Act identifies several categories of “works of authorship” that may be afforded copyright protection.[iv]  In 1990, Congress passed the Architectural Works Copyright Protection Act (“AWCPA”), which added “architectural works” to the list.[v]  “Architectural works” are defined as:

the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings.  The work includes the overall form as well as the arrangement and composition of spaces and elements in the design, but does not include individual standard features.[vi]

Unfortunately, this definition of “architectural works,” as well as the legislative history of the AWCPA, lends itself to multiple interpretations of what should and should not be considered when evaluating substantial similarity.

For example, the definition specifically excludes “individual standard features,” which the AWCPA’s legislative history suggests include “common windows, doors, and other staple building components.”[vii]But, Congress also clarified that “[t]he phrase ‘arrangement and composition of spaces and elements’ recognizes that … creativity in architecture frequently takes the form of a selection, coordination, or arrangement of [unprotectable] elements into an original, [protectable] whole.”[viii]  Because the substantial similarity inquiry only contemplates whether the defendant’s work is substantially similar to the “protected material” in the plaintiff’s work,[ix] the question arises whether and to what extent “individual standard features” are to be considered in the substantial similarity analysis.  Are “individual standard features” to be totally excluded, resulting in a substantial similarity inquiry focused solely on the plaintiff’s “non-standard” expressions in the work?  Or should “individual standard features” be considered as part of the inquiry, because “creativity in architecture frequently takes the form of a selection, coordination, or arrangement of [unprotectable] elements into an original, [protectable] whole”?[x]  The text arguably lends itself to either interpretation.[xi]

Elements of a work may be unprotectable for reasons besides being “individual standard features.”  Courts have also grappled with the same conflict when considering how to treat elements of an architectural design that are functionally required,[xii] that represent established architectural styles,[xiii] or that are driven by efficiency,[xiv] market demands,[xv] or building codes.[xvi]

Two Ends of the Spectrum
Generally speaking, courts tend to gravitate to one of two ends of a spectrum on this issue.  On one end, some courts emphasize the “dissection” and “filtering out” of unprotectable elements from the work.  Those courts consider similarity only with regard to the elements remaining after the filtration process, and tend to require a higher level of similarity between two works to find infringement.[xvii]

On the other end, some courts place more focus on the directive that “creativity in architecture frequently takes the form of a selection, coordination, or arrangement of [unprotectable] elements into an original, [protectable] whole.”[xviii]  These courts generally avoid “dissection” of protectable versus non-protectable elements, and consider whether there is substantial similarity between two works based on their “total concept and feel.”[xix]

An example of the first approach is the Eleventh Circuit’s decision in Intervest Construction, Inc. v. Canterbury Estate Homes, Inc.,[xx] which involved the design of a residential home.  The Eleventh Circuit reasoned that because the protection afforded to architectural works relies on arrangement and composition of unprotectable elements (such as staple building components), architectural works are analogous to “compilations.”[xxi]  A “compilation” is defined under the Copyright Act as “a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.”[xxii]  Compilations are only entitled to a “thin” level of copyright protection.[xxiii]

The Intervest court held that the substantial similarity inquiry “must be accomplished at the level of protected expression,”[xxiv] meaning the court was required “to separate original expression from the non-original elements.”[xxv]  The Court explained that because copyright protection in compilations is “thin,” the substantial similarity inquiry must be “narrowed.”[xxvi]  The Eleventh Circuit endorsed the district court’s dissection of the plaintiff’s work to compare only the protectable elements of its design, and affirmed summary judgment for the defendant.

The second approach was applied by the U.S. District Court for the Southern District of New York in Shine v. Childs.[xxvii]  The plaintiff in Shine designed a skyscraper as part of his architecture school coursework, and he presented this design to a jury of professionals that included the defendant.[xxviii]  Several years later, the defendant unveiled a skyscraper design for the “Freedom Tower” at the site of the World Trade Center in New York City that was “strikingly similar” to the plaintiff’s earlier design.[xxix]

The court rejected the “dissection” approach advocated by the defendant, stating “[i]f the court followed defendants’ suggestion and analyzed the elements of plaintiff’s works separately, comparing only those elements that are copyrightable to those present in the designs of the Freedom Tower, … ‘we might have to decide that there can be no originality in a painting because all colors of paint have been used somewhere in the past.’”[xxx]  In comparing the works, the court applied the “total concept and feel test,”[xxxi] which involves comparison of the works side by side from a layperson’s perspective.[xxxii]

The distinction between the two ends of the spectrum can be summed up by how unprotectable elements are treated in the substantial similarity inquiry.  The Intervest end of the spectrum excludes those elements completely from the analysis.  The Shine end of the spectrum acknowledges that those elements alone do not warrant protection, but considers those unprotectable elements when examining the works as a whole.

AWCPA Cases in the Fourth Circuit
Until the past few years, there had been little analysis of substantial similarity in the context of the AWCPA within the Fourth Circuit, and it was unclear which way on the spectrum courts within this Circuit would lean.

In 2010, the U.S. District Court for the Eastern District of Virginia began a trend toward more limited protection for copyrights in architectural works.  Harvester, Inc. v. Rule Joy Trammell + Rubio, LLC was a copyright infringement action concerning the renovation and adaptive reuse of the John Marshall Hotel in Richmond.  The suit was brought by the project’s initial architect against the architect who completed the renovation/adaptive-reuse design.[xxxiii]

In ruling on the defendant’s motion for summary judgment, the court did not get to the substantial similarity analysis.[xxxiv]  But, the court did specifically endorse the Eleventh Circuit’s analogy of architectural works to compilations from Intervest.  The court also agreed that architectural works were only to be afforded “thin” copyright protection.[xxxv]  The opinion noted that the protection afforded by the plaintiff’s copyright was limited because the design was constrained by “(1) market demands, (2) building codes …, (3) functional demands, (4) the existing building’s physical characteristics, and (5) the goal of ‘restoring’ the Hotel to the old … design.”[xxxvi]

The following year, the Western District of North Carolina considered an AWCPA infringement claim.  InBuilding Graphics, Inc. v. Lennar Corp., an architect sued a builder and another architect for allegedly copying the plaintiff’s single-family home designs.[xxxvii]  The court initially appeared to straddle the line between both ends of the substantial similarity spectrum: the court stated that unprotectable elements must be “filter[ed] out,” but it also indicated that the “substantial similarity determination requires comparison not only of the works’ individual elements in isolation, but also their ‘overall look and feel.’”[xxxviii]  Ultimately, the court agreed that the plaintiff’s architectural works should be treated as “compilations,” and their copyrights “thin.”[xxxix]  This lead the court to conclude that no reasonable jury could find the defendants’ works to be substantially similar to the plaintiff’s works.[xl]

The Eastern District of Virginia again tackled substantial similarity in the architectural context in Charles W. Ross Builder, Inc. v. Olsen Fine Homes Building, LLC (Ross Builder I) in 2011.[xli] Ross Builder I concerned a single-family residence in the Ford’s Colony subdivision of Williamsburg.[xlii]  The court described at length the myriad of influences that “dictat[ed] nearly every design element of the two houses at issue in the litigation,” including the fact that both houses were designed in the traditional Georgian architecture style, and that both were located within Ford’s Colony and subject to its many building restrictions.[xliii]

As in Harvester and Building Graphics, the court concluded that architectural works are entitled to only “thin” copyright protection.[xliv]  The court went even further, though, and found that because plaintiff’s design was modeled after a traditional style and borrowed “heavily … from the public domain,” the design lacked significant originality.[xlv]  Therefore, a heightened showing of substantial similarity was required.[xlvi]

In performing the substantial similarity analysis, the court applied the “more discerning observer” test, which requires the court to “distinguish between protectable and unprotectable elements, put the unprotectable elements out of mind, and determine whether the remainders of each work” are substantially similar.[xlvii]  The court ultimately concluded that, “once the non-protectable features of [the plaintiff’s design] are removed from consideration, there are few similarities left to be considered and thus little original work that Defendant could have impermissibly copied.”[xlviii]  This holding shows the court leaning heavily toward the “dissection” and “filtration” side of the spectrum.[xlix]  The court granted the defendants’ motions for summary judgment.

Until Ross Builder I,[l] the Fourth Circuit had not squarely addressed the substantial similarity inquiry in the context of the AWCPA.[li]  That changed in November 2012, when the Fourth Circuit decided the plaintiff’s appeal of the Ross Builder I decision.

The Fourth Circuit rejected the district court’s application of a heightened substantial similarity standard.[lii]  Instead, the Court instructed that the two-part substantial similarity test it had previously prescribed in other contexts should also be applied in AWCPA cases[liii]:

under this two-part test, to prove substantial similarity, a plaintiff must show that the works are (1) “extrinsically similar because they contain substantially similar ideas that are subject to copyright protection,” and (2) “intrinsically similar in the sense that they express those ideas in a substantially similar manner from the perspective of the intended audience of the work.”[liv]

The Court explained that “extrinsic similarity” is an objective inquiry, which requires consideration of “external criteria of substantial similarities in both ideas and expression.”[lv]  In contrast, “intrinsic similarity” is a subjective inquiry, requiring consideration of the “total concept and feel of the works.”[lvi]  The intrinsic similarity prong asks whether the “ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard [the] aesthetic appeal [of the two works] as the same.”[lvii]

According to the Fourth Circuit, the district court had erred by applying the “more discerning observer” test instead of this two-pronged test.[lviii]  The court found that the district court had deviated from an essential principle of the “intrinsic” prong by engaging in “analytic dissection” of protected and unprotected elements.[lix]  In this sense, the Fourth Circuit seemed to reject (at least, in part) the Intervest side of the substantial similarity spectrum, which focused on the “filtration” of unprotectable elements.  This is confirmed by the Court’s endorsement of the “total concept and feel” approach, applied in decisions on the other end of the spectrum, such as Shine.

But the Fourth Circuit did not reject the Intervest approach entirely.  After all, the court’s test also has the “extrinsic” prong.  “Extrinsic similarity” requires an objective analysis, which, by implication at least, involves segregating protected elements from non-protected elements.[lx]  In addition, although the Fourth Circuit did not decide whether the plaintiff’s work should only be entitled to “thin” protection, the Court did instruct the district court to consider the design constraints imposed by the elements of Georgian architecture and the requirements of the Ford’s Colony restrictive covenants within the framework of the two-prong test.[lxi]   And, the Court did reference with approval the analogy of architectural works to compilations, an analogy championed by Intervest and similar decisions.[lxii]

The Substantial Similarity Inquiry in AWCPA Cases Post-Ross Builder
The Fourth Circuit’s two-prong test can best be understood as a hybrid of Intervest’s dissection approach and Shine’s “total concept and feel” approach.  Instead of pushing in one direction or the other along theIntervest/Shine spectrum, the Fourth Circuit’s test requires courts to consider substantial similarity from both approaches.  But the Fourth Circuit’s opinion in Ross Builder also presents new questions.

The Fourth Circuit refused to discuss whether architectural works are afforded only “thin” protection.[lxiii]  This issue is further muddied by uncertainty as to what “thin” copyright actually means: is it merely shorthand for the uncontroversial principle that copyright does not extend to “data,” but only the selection and arrangement of that “data”?  Or does it mean, as some courts have suggested, that a plaintiff must demonstrate a higher level of similarity?[lxiv]  On one hand, the Fourth Circuit seemed to reject the application of a higher standard for substantial similarity by prescribing an alternate test.  On the other hand, the court did approve of the analogy comparing architectural works to compilations,[lxv] and the Supreme Court has held that the copyright protection for compilations is “thin.”[lxvi]

Another question is whether a plaintiff must establish both extrinsic and intrinsic similarity to prove infringement.  The immediate answer would appear to be “yes,” because the Fourth Circuit articulated its test in the conjunctive.[lxvii]  If the plaintiff is truly required to prove both, though, the intrinsic similarity test would have little practical significance because lack of extrinsic similarity (shown through dissection of the work) would defeat a claim for infringement.[lxviii]  Furthermore, the Fourth Circuit’s opinion does not mention any failure by the district court to perform the extrinsic similarity analysis correctly.  Indeed, the district court’s substantial similarity inquiry in Ross Builder I was essentially nothing but an extrinsic similarity analysis.[lxix]  And if the plaintiff in Ross Builder I had been required to prove both extrinsic andintrinsic similarity, wouldn’t the district court’s error in not applying the two-part test have been harmless, because the plaintiff had not proven extrinsic similarity?[lxx]

After appeal, the Eastern District of Virginia heard the defendants’ renewed motion for summary judgment and rendered its decision last year (Ross Builder II).[lxxi]  On remand, much of the Ross Builder I analysis was preserved, but the substantial similarity standards were revised to reflect the instruction from the Fourth Circuit.  The court again dissected the works to distinguish protectable from non-protectable elements under the extrinsic similarity analysis, and after a lengthy discussion, held that “no reasonable juror could conclude that the two designs are, extrinsically speaking, ‘substantially similar.’”[lxxii]

The district court’s intrinsic similarity discussion was much shorter.[lxxiii]  In assessing the “total concept and feel” of the two homes, the court held that there were certainly similarities between the two, “[b]ut, of course, there are similarities among most modern homes.”[lxxiv]  After discussing the similarities that are common to most all houses – doors, windows, foyers, kitchens, etc. – the court concluded that “even a lay person would have enough sense to know that they should not find that two homes are substantially similar in ‘total concept and feel’ based on such superficial commonalities.”[lxxv] The court once again granted summary judgment to the defendants.

Ross Builder II (which was not appealed) indicates that the trends established by Harvester, Building Graphics, and Ross Builder I are likely to continue, even after the Fourth Circuit articulated its two-part test.  Even though it considered both “extrinsic” and “intrinsic” similarity, the Ross Builder II court seemed to place a greater emphasis on the extrinsic analysis and the filtration of unprotectable elements.  And while it did not again describe the plaintiff’s copyright as “thin,” the district court did indicate that the measure of protection in the plaintiff’s work was “very limited.”[lxxvi]  Ross Builder II did not provide any resolution regarding the other questions posed above.  It will likely take another decision by the Fourth Circuit to clarify those issues.

[i] Universal Furniture Int’l, Inc. v. Collezione Europa USA, Inc., 618 F.3d 417, 435 (4th Cir. 2010) (quoting Lyons P’ship v. Morris Costumes, Inc., 243 F.3d 789, 801 (4th Cir. 2001)).
[ii] Id.
[iii] Id.
[iv] 17 U.S.C. § 102.
[v] Architectural Works Copyright Protection Act, Pub. L. No. 101-650, 104 Stat. 5089 (1990) (contained within the Judicial Improvements Act of 1990).
Prior to 1990, architects enjoyed copyright protection only for their drawings as “pictorial, graphic, and sculptural works.”  17 U.S.C. § 102(a)(5).  See also T-Peg, Inc. v. Vermont Timber Works, Inc., 459 F.3d 97, 109 (1st Cir. 2006).  As “pictorial, graphic, and sculptural works,” architectural structures themselves were afforded very little protection under the Copyright Act. T-Peg, 459 F.3d at 109.
The AWCPA was passed in 1990, in conjunction with the United States’ accession to the Berne Convention for the Protection of Literary and Artistic Works.  The passage of the AWCPA was necessary to ensure the United States’ compliance with the requirements of the Berne Convention, including protection for works of architecture as distinct from illustrations, plans, or sketches of architecture. See id.  In fact, in the legislative history of the AWCPA, Congress made clear that “[t]he sole purpose for legislating at this time is to place the United States unequivocally in compliance with its Berne Convention obligations.”  Rep. No. 101-735, at 20 (1990), reprinted in 1990 U.S.C.C.A.N. 6935, 6951.  Much of the judicial resistance to protecting architectural works through copyright may be explained by the rather unusual way the AWCPA came to be law.
[vi] 17 U.S.C. § 101.
[vii] H.R. Rep. No. 101-735, at 18 (1990), reprinted in 1990 U.S.C.C.A.N. 6935, 6949.   Congress explained that a “grant of exclusive rights in such features would impede, rather than promote, the progress of architectural innovation.” Id.
[viii] H.R. Rep. No. 101-735, at 18 (1990), reprinted in 1990 U.S.C.C.A.N. 6935, 6949.
[ix] Universal Furniture, 618 F.3d at 435.
[x] H.R. Rep. No. 101-735, at 18 (1990), reprinted in 1990 U.S.C.C.A.N. 6935, 6949.
[xi] See Xiyin Tang, Narrativizing the Architectural Copyright Act: Another View of the Cathedral, 21 Tex. Intell. Prop. L.J. 33, 45 (2013) (discussing as two plausible interpretations, either “filtering out the standard features and evaluating the remaining whole with a very thin copyright that subsists mostly in the exact arrangement of elements in space,” or “acknowledging that while individual standard features may not be copyrightable by themselves, they can nonetheless coalesce to form a copyrightable whole”).
[xii] See Design Basics LLC v. DeShano Co., Inc., 2012 WL 4321313, *3-4 (E.D. Mich., Sept. 21, 2012) (considering whether “design elements of a house are functionally required, and therefore not protected”).
[xiii]  See Trek Leasing, Inc. v. United States, 66 Fed. Cl. 8, 13 (2005) (evaluating two architectural designs in the “Pueblo Revival” style, holding that “the hallmarks of a popular architectural style … are not protectable”).  Some courts have also identified particular architectural styles or motifs as scènes à faire. See, e.g., Sturdza v. United Arab Emirates, 281 F.3d 1287, 1297 (D.C. Cir. 2002).
[xiv] See Trek Leasing, 66 Fed. Cl. at 16 (“elements dictated by efficiency, necessity, or external factors must also be filtered out of the court’s infringement analysis”).
[xv] See Zalewski v. Cicero Builder Dev., Inc., 754 F.3d 95, 106 (2d Cir. 2014) (refusing to consider similarities between plaintiff’s work and defendants work that were “a function of consumer expectations,” or a result of ‘certain conventions” of colonial style homes.)
[xvi] See Harvester, Inc. v. Rule Joy Trammell + Rubio, LLC, 716 F. Supp. 2d 428, 441 (E.D. Va. 2010) (discussing how “building codes [can] constrain the ultimate design of a building.”)
[xvii] See, e.g., Zalewski, 754 F.3d at 106-07 (affirming dismissal of claims against defendants where “even if Defendants copied [the plaintiff’s] plans, they copied only the unprotectable elements of his designs.”); Trek Leasing, 66 Fed. Cl. at 18-23 (finding the more exacting “supersubstantial similarity” standard was not met after “filter[ing] out” the non-protectable portions of Plaintiff’s work).
[xviii] H.R. Rep. No. 101-735, at 18 (1990), reprinted in 1990 U.S.C.C.A.N. 6935, 6949.
[xix] See, e.g., T-Peg, 459 F.3d at 114 (reversing award of summary judgment for defendant, holding that “[t]he district court erred in failing to consider those similarities that went to the ‘overall form’ of the building as well as the ‘arrangement and composition of spaces and elements.”) Sturdza, 281 F.3d at 1296 (“Considering the works as a whole is particularly important because [protectable] expression may arise through the ways in which [architects] combine even [unprotectable] elements.”); DeShano, 2012 WL 4321313 at *3-4 (“Just as someone using a kaleidoscope mixes standard colors into a new pattern, there are certain common features that go into a house design—a kitchen, bathroom, bedrooms—and the designer moves each of these elements into an original, potentially [protectable] arrangement. … [T]here is no need to conduct a test of separability when considering the copyrightable nature of an architectural house plan as a whole.”); Frank Betz Assocs., Inc. v. J.O. Clark Constr., L.L.C., 2010 WL 4628203, *6 (M.D. Tenn. Nov. 5, 2010) (“identifying or ‘filtering out’ elements of the Plaintiff’s designs that represent [unprotectable elements] would not mean that the jury would not still consider those elements in comparing the [Plaintiff’s] designs to Defendant’s allegedly infringing works.”)
[xx] 554 F.3d 914 (11th Cir. 2008).
[xxi] Id. at 919.
[xxii] 17 U.S.C. § 101.
[xxiii] The seminal case discussing compilations is Feist Publications, Inc. v. Rural Telephone Service Co, 499 U.S. 340, 111 S.Ct. 1282 (1991).  In Feist, the compilation at issue was a phone book, and the preexisting data were names and phone numbers.  The Supreme Court held that creative arrangement and coordination of unprotectable elements is entitled to only a “thin” level of copyright protection.  The Court reasoned that “the 1976 revisions to the Copyright Act leave no doubt that originality, not “sweat of the brow,” is the touchstone of copyright protection in directories and other fact-based works.”  499 U.S. at 359-60, 111 S. Ct. at 1295.
[xxiv] Intervest, 554 F.3d 914 at 919.
[xxv] Id. at 920. Copyright protection extends to “original works of authorship fixed in any tangible medium of expression….” 17 U.S.C. § 102.  Courts have noted that the standard for “originality” is “a very low threshold.”  See Charles W. Ross Builder, Inc. v. Olsen Fine Home Bldg., LLC, 827 F.Supp.2d 607, 619 (E.D.Va. 2011) (citing Alfred Bell & Co. v. Catalda Fine Arts, 191 F.2d 99, 103 (2d. Cir. 1951)).  “It has been noted that the concept of ‘originality’ under the Copyright Act does not take its ordinary meaning, but rather ‘means only that the work was independently created by its author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity.” Id. (quoting Axelrod & Cherveny Architects, P.C. v. Minmar Homes, 2007 WL 708798 at *9 (E.D.N.Y. Mar. 6, 2007)).
The term “original” has not always been used consistently by courts, however.  Some courts have used the term “original” according to its more “ordinary meaning,” describing elements of an architectural work that were deemed standard, or dictated by some external force and thus unprotectable, to not be “original.”  See Intervest, 554 F.3d at 919-20; Charles W. Ross Builder, Inc. v. Olsen Fine Home Bldg., LLC, 827 at 624.
[xxvi] Intervest, 554 F.3d 914, 919 (11th Cir. 2008).
[xxvii] 382 F. Supp. 2d 602 (S.D.N.Y. 2005).
[xxviii] The defendant was an architect with the firm Skidmore, Owings & Merrill, LLP.
[xxix] Shine, 382 F. Supp. 2d at 606.
[xxx] Id. at 610 (quoting Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir. 1995)).  Later in the opinion: “[i]f the court were to follow the [filtration approach] and separate out only those ‘kernals’ of expression that would qualify as original, that … ‘would result in almost nothing being copyrightable because original works broken down into their component parts would usually be little more than basic unprotectable elements like letters, colors, and symbols.’” Id. at 613 (quoting Boisson v. Banian, Ltd., 273 F.3d 262, 268 (2d Cir. 2001)).
[xxxi] Shine, 382 F. Supp. 2d at 612.
[xxxii] Id. at 612-615.  Although the court quoted authority for the proposition that the total concept and feel test must also involve dissection to segregate the protectable elements of a work, the court’s own analysis of the similarities between the designs did not distinguish protectable elements from non-protectable elements.
[xxxiii] 716 F. Supp. 2d 428 (E.D. Va. 2010).
[xxxiv] The Plaintiff had alleged that the defendant architecture firm had infringed on its architectural copyright (1) by making wholesale copies of the drawings when its employees scanned them into .PDF files, and (2) by incorporating protected aspects of the plaintiff’s drawings into its own drawings prepared for the John Marshall Hotel renovation/adaptive reuse.  Id. at 434.  The Court found that there was direct evidence that the defendant had infringed on the plaintiff’s copyright by scanning the drawings and converting them into .PDF files, which was enough to defeat the defendant’s motion for summary judgment.  As such, the court did not reach the issue of whether the defendant incorporated any of the plaintiff’s protected expression into its own drawings, an issue that would have necessitated the substantial similarity inquiry.  See id. at 446-47.
[xxxv] Id. at 436-38.
[xxxvi] Id. at 440.  Harvester is relatively unique among AWCPA cases in that it deals with the adaptive reuse of an existing building, and not the design of a new building.
[xxxvii] 866 F.Supp.2d 530 (W.D.N.C. 2011).
[xxxviii] Id. at 539 (quoting Boisson, 273 F.3d at 265). The court even cited the D.C. Circuit, a court that had reasoned against “filtering out” of unprotectable elements. 866 F.Supp.2d at 543 (citing Sturdza, 281 F.3d at 1296).
[xxxix] Building Graphics, 866 F.Supp.2d at 544.  The court even a identifies a different standard for similarity to be used when dealing with thin works – “supersubstantial similarity.”  Id.
[xl] Id. at 544-45 (granting defendants’ motion for summary judgment).  Note also that the plaintiff was unable to prove access, which is an additional element required of a plaintiff trying to establish copyright infringement through indirect evidence of copying. Id. at 539-43.
[xli] 827 F. Supp. 2d 607 (E.D. Va. 2011).  Ross Builder I opinion was issued on September 29, 2011.  The Building Graphics opinion was issued by the Western District of North Carolina the following day.
[xlii] The court describes Ford’s Colony as “one of the largest, if not the largest, gated communities in Virginia”, comprising “3,000 lots, 2,238 individual residences, three golf courses, swimming pools, tennis courts, several recreational facilities, and a Marriott Resort Area.”  827 F. Supp. at 612.
[xliii] Id. at 612-616.  For example, only five architectural styles were permitted in Ford’s Colony: Colonial, Georgian, Classical Revival, Federal/Adam, and Greek Revival.  Id. at 612.  The opinion goes into great detail regarding the history of colonial architecture in the area generally, and the Georgian style specifically, including its typical features and characteristics. Id. at 612-14.
[xliv] Id. at 619-20 (citing, inter alia, Intervest, 554 F.3d at 919).
[xlv] See, note 25, supra, for discussion of the use of the term “original” in AWCPA cases.
[xlvi] Ross Builder I, 827 F. Supp. 2d at 620.
[xlvii] Id. at 621 (citing Boisson, 273 F.3d at 268).
[xlviii] Id. at 624.
[xlix] This is not to say that the court did not acknowledge the other end of the spectrum as well.  The court even cites an unpublished Eastern District of New York case for the propositions that “the fact finder must look at the work as a whole without dissection” and that the works must be judged by their “total concept and feel.”  Id. at 620 (citing Axelrod, 2007 WL 708798 at *13).  But ultimately, theRoss Builder I holding revealed that, like many courts in the Intervest camp, the elements deemed non-protectable were not given much (if any) consideration by the court when comparing the works as a whole.
[l] The Building Graphics decision was appealed to the Fourth Circuit.  On appeal, the court affirmed summary judgment in favor of the defendants, but only on the grounds that the plaintiff had not marshaled sufficient evidence in support of a finding that the defendants had access to the plaintiff’s architectural plans.  Building Graphics, Inc. v. Lennar Corp., 708 F.3d 573, 580 (4th Cir. 2013).  The court opted to steer clear of the substantial similarity issue, stating that it did not need to address that inquiry since the plaintiff had not established the first element, access.  Id. at 580 n.3.
[li] See Charles W. Ross Builder, Inc. v. Olsen Fine Home Bldg, LLC, 496 Fed. Appx. 314, 318 (4th Cir. 2012) (unpublished decision).
[lii] 496 Fed. Appx. 319 (4th Cir. 2012).
[liii] Id. at 318.  Specifically, the court likened the inquiry presented in architectural works cases to that in Universal Furniture, Inc. v. Collezione Europa USA, Inc., supra note 1, a case in which the court considered a copyright infringement claim regarding cosmetic decorations incorporated into furniture design.
[liv] Id. at 318 (quoting Universal Furniture, 618 F.3d at 435).
[lv] Id. at 318 (quoting Universal Furniture, 618 F.3d at 435).
[lvi] Id. at 318 (quoting Universal Furniture, 618 F.3d at 436).
[lvii] Id. at 318 (quoting Universal Furniture, 618 F.3d at 436).
[lviii] Id. at 319.
[lix] Id. at 320.
[lx] See id. at 318-320 (explaining that the district court’s segregation of non-protected similarities violated the intrinsic prong of the test, but making no finding that the district court had not properly performed the extrinsic prong of the test).
lxi] Id. at 321, n.5.
[lxii] Id. at 320 (citing Intervest, 554 F.3d at 919 & Harvester, 716 F.Supp.2d at 438).
[lxiii] Id. at 321, n.5.  As discussed, supra, the copyright protection in the architectural works in Harvester, Building Graphics, and Ross Builder I were each described as “thin.”
[lxiv] See, e.g., Ross Builder I, 827 F.Supp.2d at 620 (citing Transwestern Publ’g. Co. LP v. Multimedia Mktg. Assoc., Inc., 133 F.3d 773, 776 (10th Cir. 1998)) (stating that where copyright protection for a particular work is ‘thin,’ the plaintiff must make a showing of ‘supersubstantial similarity’).
[lxv] See 496 Fed. Appx. at 320.
[lxvi] See Feist Publications, 499 U.S. at 349, 111 S.Ct. at 1289.
[lxvii] See Ross Builder, 496 Fed. Appx. at 318 (“Under this two-part test, to prove substantial similarity, a plaintiff must show that the works are (1) extrinsically similar …, and (2) intrinsically similar….” (emphasis added)).
[lxviii] A claim proven by indirect evidence, at least.  As discussed, supra, in note 2 and accompanying text, the substantial similarity inquiry only arises when the plaintiff cannot prove unlawful copying through direct evidence, but must establish copying through indirect evidence.
[lxix] But see, note 49, supra.
[lxx] The Fourth Circuit’s use of the term “idea” in its substantial similarity test also raises questions.  Specifically, the Court’s explanation that extrinsic similarity is shown when works contain “substantially similar ideas that are subject to copyright protection” is, on its face, contrary to the fundamental principle that copyright protection extends only to the expression of ideas—not to ideas themselves. 17 U.S.C. § 102(b).  See also, Ale House Management, Inc. v. Raleigh Ale House, Inc., 205 F.3d 137, 142 (2000) (“Copyright protection does not extend to ideas.”).  Is this merely imprecise language used by the Court, or is the Fourth Circuit’s articulation of the substantial similarity inquiry actually at odds with this fundamental principle?  If the latter, will this formulation of the test require courts to resolve existential questions about design, such as whether designs that appear similar in their expression may be distinguished by their different underlying architectural concepts?
For an example of this challenge, compare Mies van der Rohe’s Farnsworth House with Philip Johnson’s Glass House.  Although both of these works were completed decades before the enactment of the AWCPA, they present a useful case study for distinguishing architectural works through their underlying concepts.  Both houses are distinguished works of architecture, yet Johnson’s design intentionally referenced the Farnsworth House to challenge contemporary ideas about architecture.  Because both buildings were essentially glass boxes, they are more readily distinguished by their underlying concepts than by their physical appearance.  SeeFarnsworth House, (last visited Sept. 19, 2014); Paul Goldberger, [behind the glass], Preservation, January/February 2007, at 37.
[lxxi] Charles W. Ross Builder, Inc. v. Olsen Fine Home Building, LLC (Ross Builder II), 977 F. Supp. 2d 567 (2013).
[lxxii] Id. at 592-97.
[lxxiii] The court’s “extrinsic similarity” analysis spans five pages. Id. at 592-97.  Its “intrinsic similarity” analysis is only three paragraphs.
[lxxiv] Ross Builder II, 977 F. Supp. 2d at 597.
[lxxv] Id. at 597.
[lxxvi] Id. at 593.

This article was published in the December 2014 issue of Virginia Lawyer. 
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