Design Basics, LLC, et al v. Lexington Homes, Inc., et al
Filing
Filed opinion of the court by Judge Hamilton. AFFIRMED. Diane P. Wood, Chief Judge; Joel M. Flaum, Circuit Judge and David F. Hamilton, Circuit Judge. [6845912-1] [6845912] [16-3817]
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In the
United States Court of Appeals
For the Seventh Circuit
____________________
No. 16‐3817
DESIGN BASICS, LLC, et al.,
Plaintiffs‐Appellants,
v.
LEXINGTON HOMES, INC., et al.,
Defendants‐Appellees.
____________________
Appeal from the United States District Court for the
Eastern District of Wisconsin.
No. 14‐CV‐1102 — William C. Griesbach, Chief Judge.
____________________
ARGUED APRIL 5, 2017 — DECIDED JUNE 6, 2017
____________________
Before WOOD, Chief Judge, and FLAUM and HAMILTON, Cir‐
cuit Judges.
HAMILTON, Circuit Judge. This copyright suit shows the dif‐
ficulty in finding protected creative expression in a crowded
field, in this case, architectural design of single‐family homes.
The case also shows the challenge in administering intellec‐
tual property law to discourage so‐called intellectual property
“trolls” while protecting genuine creativity.
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Plaintiffs Design Basics, LLC; Prime Designs, Inc.; and
Plan Pro, Inc. (collectively, “Design Basics”) and their affili‐
ates claim rights to some 2700 home designs. They sued de‐
fendants Lexington Homes, Inc. and related parties (collec‐
tively, “Lexington”) for copyright infringement, contending
that Lexington built homes that infringed four of Design Ba‐
sics’ designs.
The district court granted summary judgment to Lexing‐
ton, finding no evidence that Lexington ever had access to De‐
sign Basics’ home plans. Without access, the court reasoned,
there could be no copying and no copyright infringement. We
affirm. We agree with the district court that Design Basics has
no evidence of access. We also conclude that no reasonable
jury could find that Lexington’s accused plans bear substan‐
tial similarities to any original material in Design Basics’
plans.
I. Factual and Procedural Background
A. Design Basics and the Art of the Intellectual Property Shake‐
down
Design Basics has been in the business of producing mar‐
ket‐ready designs for modest single‐family homes for several
decades. In 2009, Patrick Carmichael and Myles Sherman pur‐
chased Design Basics as an investment opportunity. Carmi‐
chael acknowledged in his deposition that “potential copy‐
right infringement cases influence[d his] decision to become
an owner of Design Basics.” He testified that proceeds from
litigation have become a principal revenue stream for Design
Basics.
A search of the Public Access to Court Electronic Records
(PACER) system reveals that Design Basics has been party to
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over 100 federal lawsuits, the vast majority of which have
been filed since the 2009 change in ownership. Nearly all
involve copyright claims asserted by Design Basics. Design
Basics offers its employees incentives to scout out potential
copyright infringement cases, paying its employees a finder’s
fee in the form of a percentage of the net recovery relating to
any home plans that they located. Design Basics filed this
lawsuit after employee Carl Cuozzo discovered Lexington’s
website and its supposedly infringing plans while
investigating other Design Basics cases on the Internet.
Design Basics’ business model of trawling the Internet for
intellectual property treasures is not unique. In recent years,
opportunistic holders of copyrights, patents, and other intel‐
lectual property have developed unsavory reputations for
“trolling,” bringing strategic infringement claims of dubious
merit in the hope of arranging prompt settlements with de‐
fendants who would prefer to pay modest or nuisance settle‐
ments rather than be tied up in expensive litigation. Like the
proverbial troll under the bridge, these firms try to extract
rents from market participants who must choose between the
cost of settlement and the costs and risks of litigation.
This business strategy is far removed from the goals of the
Constitution’s intellectual property clause to “promote the
Progress of Science and useful Arts.” U.S. Const. art. I, § 8, cl.
8. Intellectual property trolls have attracted much attention
and derision in scholarly literature and the mainstream me‐
dia. See, e.g., Matthew Sag, Copyright Trolling, An Empirical
Study, 100 Iowa L. Rev. 1105, 1108 (2015) (“The essence of
trolling is that the plaintiff is more focused on the business of
litigation than on selling a product or service or licensing their
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IP to third parties to sell a product or a service. The paradig‐
matic troll plays a numbers game in which it targets hundreds
or thousands of defendants, seeking quick settlements priced
just low enough that it is less expensive for the defendant to
pay the troll rather than defend the claim.”); see also David
Segal, Has Patent, Will Sue: An Alert to Corporate America, N.Y.
Times (July 13, 2013), http://www.ny‐
times.com/2013/07/14/business/has‐patent‐will‐sue‐an‐alert‐
to‐corporate‐america.html; 441: When Patents Attack!, This
American Life (July 22, 2011), https://www.thisamerican‐
life.org/radio‐archives/episode/441/when‐patents‐attack.
Courts are aware of these developments. See eBay Inc. v.
MercExchange, LLC, 547 U.S. 388, 396 (2006) (Kennedy, J., con‐
curring) (“An industry has developed in which firms use pa‐
tents not as a basis for producing and selling goods but, in‐
stead, primarily for obtaining licensing fees.”); Malibu Media,
LLC v. Doe, No. 15 Civ. 4369(AKH), 2015 WL 4092417, at *2
(S.D.N.Y. July 6, 2015) (“Recent empirical studies show that
the field of copyright litigation is increasingly being over‐
taken by ‘copyright trolls’ … .”); cf. Renaissance Learning, Inc.
v. Doe No. 1, No. 11‐cv‐166‐slc, 2011 WL 5983299, at *4 (W.D.
Wis. Nov. 29, 2011) (“Remember Mark Antony’s funeral ora‐
tion in Julius Caesar? That’s how an experienced business ex‐
ecutive or lawyer would view [a patent holder’s] assertions
that ‘we are focused on addressing … issues without the need
for costly and protracted litigation’ and ‘our client’s preferred
approach is to conclude licensing discussions without resort‐
ing to litigation. We hope you share this objective.’ The im‐
plied ‘or else!’ oozes from this letter like lye from lutefisk.”).1
1 Counsel for Design Basics asserted in oral argument that, in addition
to generating substantial revenue through litigation, the firm licenses
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B. The Claims Against Lexington
According to its federal complaint, Design Basics first
learned of a possible copyright infringement claim against
Lexington on September 11, 2011. Design Basics waited until
September 10, 2014—one day before the three‐year limitations
period would certainly have expired—to bring suit. See 17
U.S.C. § 507(b); Gaiman v. McFarlane, 360 F.3d 644, 653 (7th Cir.
2004) (copyright statute of limitations starts to run “when the
plaintiff learns, or should as a reasonable person have
learned, that the defendant was violating his rights”).
Design Basics filed a complaint alleging that four Lexing‐
ton home plans—the Carlisle, Oakridge, Ashwood, and
Easton—infringed four Design Basics plans: the Aspen,
Kendrick, Taylor, and Womack, respectively. Lexington chose
not to settle. After discovery, Lexington moved for summary
judgment. In response, Design Basics offered little evidence to
try to show that Lexington’s agents and employees had ever
seen its plans, let alone copied them. Instead, Design Basics
offered a declaration by its draftsman, Carl Cuozzo. He
opined in conclusory terms that Lexington’s four accused
plans are “substantially similar” to the four Design Basics
plans “in too many ways to have been the product of inde‐
pendent creation.” Cuozzo added that Design Basics’ plans
have been “widely disseminated” via the firm’s website,
www.designbasics.com, since 1996, though he admitted in his
home designs for consumer use. By counsel’s estimate, the firm sold
around 600 licenses in the past year. It is unclear how much revenue these
licenses generated, though for the four plans at issue, construction licenses
start at around $450.
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deposition that he had no idea when the particular plans at
issue in this case were first uploaded to the website.
Lexington, by contrast, offered a detailed report by Dr.
Robert Greenstreet, Dean of the School of Architecture and
Urban Planning at the University of Wisconsin–Milwaukee.
Dr. Greenstreet compared the accused plans with Design Ba‐
sics’ plans, identifying dozens of differences between the
paired designs and ultimately finding “no evidence … of sub‐
stantial similarity between the designs claimed by Design Ba‐
sics and those created by Lexington.” Lexington also relied on
its shareholders’ and employees’ unrebutted declarations that
they had never seen the plans at issue prior to this litigation.
In granting summary judgment for Lexington, the district
court focused on the question of access. The court observed
that there was no evidence Lexington or its agents received or
reviewed any of the plans at issue. See Design Basics, LLC v.
Lexington Homes, Inc., No. 14‐CV‐1102, 2016 WL 8116897, at *2
(E.D. Wis. Sept. 30, 2016). Also, the accused plans and Design
Basics’ plans were not so strikingly similar as to permit an in‐
ference of copying without separate proof of access. Id. at *4.
There was evidence that Lexington’s employees were gener‐
ally familiar with Design Basics and may have seen some of
its other designs. But the court found the evidence of access
to other designs was not sufficient to infer access to the de‐
signs claimed in this case. Id. at *5. The court entered judg‐
ment for Lexington. Design Basics appeals.
II. Analysis
We review de novo the district court’s grant of summary
judgment, viewing the evidence in the light most favorable to
Design Basics. See Arlington Specialties, Inc. v. Urban Aid, Inc.,
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847 F.3d 415, 418 (7th Cir. 2017). A non‐moving party is enti‐
tled to all reasonable inferences in its favor, but “inferences
that are supported by only speculation or conjecture will not
defeat a summary judgment motion.” Herzog v. Graphic Pack‐
aging Int’l, Inc., 742 F.3d 802, 806 (7th Cir. 2014), quoting Tu‐
bergen v. St. Vincent Hospital & Health Care Center, Inc., 517 F.3d
470, 473 (7th Cir. 2008).
A. Copyright Protection and Infringement
The Copyright Act of 1976, as amended by the Architec‐
tural Works Copyright Protection Act, extends copyright pro‐
tection to “architectural works,” defined as building designs
“embodied in any tangible medium of expression, including
a building, architectural plans, or drawings.” 17 U.S.C. § 101.
A protected architectural work “includes the overall form as
well as the arrangement and composition of spaces and ele‐
ments in the design, but does not include individual standard
features.” Id.; see also 37 C.F.R. § 202.11(d) (“The following
structures, features, or works cannot be registered: … (2)
Standard features. Standard configurations of spaces, and in‐
dividual standard features, such as windows, doors, and
other staple building components.”).2
To establish copyright infringement, a plaintiff must prove
two elements: “(1) ownership of a valid copyright, and (2)
copying of constituent elements of the work that are original.”
2 The Architectural Works Copyright Protection Act was enacted to
bring the United States into compliance with the Berne Convention for the
Protection of Literary and Artistic Works. See H.R. Rep. No. 101‐735, re‐
printed in 1990 U.S.C.C.A.N. 6935, 6936–37; see also 7 Patry on Copyright
§ 23:45 (discussing history of United States participation in Berne Conven‐
tion).
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JCW Investments, Inc. v. Novelty, Inc., 482 F.3d 910, 914 (7th Cir.
2007), quoting Feist Publications, Inc. v. Rural Telephone Serv.
Co., 499 U.S. 340, 361 (1991). Design Basics’ plans are regis‐
tered with the United States Copyright Office. We assume
without deciding that Design Basics owns the plans and that
the plans are entitled to some copyright protection, i.e., they
were created independently and possess a modicum of crea‐
tivity. See Feist Publications, 499 U.S. at 346. We focus on the
second element of Design Basics’ infringement claim: proof of
copying.
The Copyright Act affords no protection against the inde‐
pendent creation of a work that happens to resemble some
prior creation. A plaintiff must prove that the defendant actu‐
ally copied its original work. See Selle v. Gibb, 741 F.2d 896, 901
(7th Cir. 1984) (“Proof of copying is crucial to any claim of
copyright infringement because no matter how similar the
two works may be (even to the point of identity), if the de‐
fendant did not copy the accused work, there is no infringe‐
ment.”). Direct evidence of copying is only rarely available. A
plaintiff may also “prove copying by showing that the de‐
fendant had the opportunity to copy the original (often called
‘access’) and that the two works are ‘substantially similar,’
thus permitting an inference that the defendant actually did
copy the original.” Peters v. West, 692 F.3d 629, 633 (7th Cir.
2012).
The access requirement is not onerous. For example, a
plaintiff may satisfy the requirement by showing that the
copyrighted work was “sent directly to the defendant … or a
close associate of the defendant.” Selle, 741 F.2d at 901; see
also, e.g., Peters, 692 F.3d at 634 (defendant closely
collaborated with music producer who had copy of plaintiff’s
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recording); JCW Investments, 482 F.3d at 913, 915 (officer of
corporate defendant admitted that he saw and perhaps
photographed plaintiff’s doll and that doll gave him idea for
accused work). A plaintiff may also satisfy the requirement by
showing that the copyrighted work was so widely
disseminated that the defendant can be presumed to have
seen or heard it. E.g., Cholvin v. B. & F. Music Co., 253 F.2d 102,
103–04 (7th Cir. 1958) (access shown where plaintiffs
distributed 2000 copies of sheet music and sold more than
200,000 records, and song was broadcast nationwide for
years).
“Once a plaintiff establishes that a defendant could have
copied her work, she must separately prove … that the alleg‐
edly infringing work is indeed a copy of her original,” by
“pointing to similarities between the two works.” Peters, 692
F.3d at 635. In other words, access cannot serve as a proxy for
substantial similarity. “[W]e have never endorsed … the idea
that a ‘high degree of access’ justifies a ‘lower standard of
proof’ for similarity.” Id. (citation omitted). In unusual cases,
however, evidence of truly striking similarity may function as
a proxy for access. As we observed in Selle, an inference of
access may arise from “proof of similarity which is so striking
that the possibilities of independent creation, coincidence and
prior common source are, as a practical matter, precluded.”
741 F.2d at 901; see also Ty, Inc. v. GMA Accessories, Inc., 132
F.3d 1167, 1171 (7th Cir. 1997) (“Access (and copying) may be
inferred when two works are so similar to each other and not
to anything in the public domain that it is likely that the crea‐
tor of the second work copied the first, but the inference can
be rebutted by disproving access or otherwise showing inde‐
pendent creation … .”). In Selle and Ty, Inc., we took care to
point out that a prior common source for both plaintiff’s and
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defendant’s work could undermine an inference of copying.
The possibility of a prior common source is especially im‐
portant in crowded fields such as popular music in Selle and
designs for single‐family homes in this case.3
So in the rare case involving an uncanny resemblance for
which copying the plaintiff’s work is the only plausible expla‐
nation, further proof of access may not be required. But in
general, to prove a circumstantial case of copyright infringe‐
ment, the plaintiff must separately prove both access and sim‐
ilarity. In this case, Design Basics’ proof falls short in both
ways.
B. Design Basics’ Infringement Claims
1. Similarity
The market for affordable home designs is crowded be‐
cause opportunities for originality are tightly constrained by
functional requirements, consumer demands, and the vast
body of similar designs already available. In this field, the
substantial similarity requirement is particularly hard to sat‐
isfy. We agree with Zalewski v. Cicero Builder Dev., Inc., 754 F.3d
95 (2d Cir. 2014), which described the designer’s or architect’s
3 In Ty, Inc., we found striking similarity between the parties’ beanbag
animal dolls. They bore a remarkable resemblance to one another yet bore
no particular resemblance either to real animals or to fictional animals in
the public domain. 132 F.3d at 1170–71. In Bucklew v. Hawkins, Ash, Bap‐
tie & Co., we found striking similarity between plaintiff’s and defendant’s
electronic forms, which contained identical patterns of bolding, identical
headings, the same font, and (most damning) an identical “output range”
that served no purpose. 329 F.3d 923, 926–27 (7th Cir. 2003). We observed
that mapmakers sometimes include a fictitious geographical feature—a
“copyright trap”—in their maps. Id. at 926. If that trap is duplicated in
another map, “the inference of copying is compelling.” Id.
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copyright as thin, so that only very close copying of protected
elements is actionable.
Like most circuits, we gauge substantial similarity
through a framework described by Judge Learned Hand in
Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d
Cir. 1960). We consider “whether the accused work is so sim‐
ilar to the plaintiff’s work that an ordinary reasonable person
would conclude that the defendant unlawfully appropriated
the plaintiff’s protectible expression by taking material of sub‐
stance and value.” Wildlife Express Corp. v. Carol Wright Sales,
Inc., 18 F.3d 502, 509 (7th Cir. 1994) (citation omitted); see also
Peter Pan Fabrics, 274 F.2d at 489 (two works are substantially
similar where an “ordinary observer, unless he set out to de‐
tect the disparities, would be disposed to overlook them, and
regard their aesthetic appeal as the same”). “The test for sub‐
stantial similarity is an objective one.” JCW Investments, 482
F.3d at 916.
When considering substantial similarity, it is essential to
focus on protectable expression. Similarity by itself—even
close similarity—should not automatically spark an inference
of unlawful copying. Countless ideas, themes, images, and
even home designs crowd the public domain. They are avail‐
able to all: no one can claim a copyright in an expression in
the public domain. As we explained in Ty, Inc., “two works
may be strikingly similar—may in fact be identical—not be‐
cause one is copied from the other but because both are copies
of the same thing in the public domain. … A similarity may
be striking without being suspicious.” 132 F.3d at 1170; see
also Peters, 692 F.3d at 633–34 (“Fundamentally, proving the
basic tort of infringement … requires the plaintiff to show that
the defendant had an actual opportunity to copy the original
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… and that the two works share enough unique features to give
rise to a breach of the duty not to copy another’s work.”) (em‐
phasis added); Incredible Technologies, Inc. v. Virtual Technolo‐
gies, Inc., 400 F.3d 1007, 1011 (7th Cir. 2005) (“The test for sub‐
stantial similarity may itself be expressed in two parts:
whether the defendant copied from the plaintiff’s work and
whether the ‘copying, if proven, went so far as to constitute
an improper appropriation.’”) (citation omitted).
The challenge of proving substantial similarity is height‐
ened where the field is crowded or where aesthetic choices
may be secondary to consumer demands or functional re‐
quirements. The challenge is particularly acute in the market
for affordable designs for single‐family homes, where form
follows function so closely. Blueprints drafted by companies
like Design Basics and Lexington are meant to appeal to home
builders and buyers who want to build, sell, and buy homes
that will hold their value. While it is possible to design a home
that is a one‐of‐a‐kind work of art, the home designs here do
not fit that description. They comprise familiar configurations
of spaces and features, having less in common with the work
of Frank Gehry or Frank Lloyd Wright and more with that of
William Levitt.
We have not previously considered the intersection be‐
tween our cases on substantial similarity and copyright
claims involving home designs. Cf. Nova Design Build, Inc. v.
Grace Hotels, LLC, 652 F.3d 814, 818 (7th Cir. 2011) (architect’s
hotel design, based largely on Holiday Inn Express prototype,
was devoid of originality and not entitled to copyright protec‐
tion). We find helpful guidance from other courts.
In Zalewski, the plaintiff was a designer of colonial‐style
homes. The Second Circuit acknowledged that the plaintiff’s
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copyright was valid and that substantial evidence showed
that the defendants copied his designs. 754 F.3d at 101. The
court concluded, though, that the defendants “took only the
unprotected elements” of the plaintiff’s work and thus did not
infringe the plaintiff’s copyright. Id. at 102.
The Zalewski court relied on two related and important
doctrines that help distinguish protected expression from ma‐
terial in the public domain. The doctrine of scènes à faire
“teaches that elements of a work that are ‘indispensable, or at
least standard, in the treatment of a given topic’ … get no pro‐
tection.” Id. at 102 (citation omitted); see also Bucklew v. Haw‐
kins, Ash, Baptie & Co., 329 F.3d 923, 929 (7th Cir. 2003) (“[A]
copyright owner can’t prove infringement by pointing to fea‐
tures of his work that are … so rudimentary, commonplace,
standard, or unavoidable that they do not serve to distinguish
one work within a class of works from another.”). The related
doctrine of merger “instructs that some ideas can only be ex‐
pressed in a limited number of ways” such that “idea and ex‐
pression ‘merge,’” with the resulting amalgam receiving no
copyright protection. Zalewski, 754 F.3d at 102–03; see also
Bucklew, 329 F.3d at 928 (merger “refers to the situation in
which there is only one feasible way of expressing an idea, so
that if the expression were copyrightable it would mean that
the idea was copyrightable, and ideas are not copyrightable”).
Zalewski recognized that there are scènes à faire in architec‐
ture just as in literature or music. Colonial‐style homes—or,
as relevant here, a wider variety of suburban homes—share
many design elements and characteristics to which no indi‐
vidual designer can lay claim. Design Basics’ designs also
share many attributes driven by “consumer expectations and
standard house design generally,” and designers can “get no
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credit for putting a closet in every bedroom, a fireplace in the
middle of an exterior wall, [or] kitchen counters against the
kitchen walls.” Zalewski, 754 F.3d at 106. These features may
appear similar across plans and models, but “the term ‘sub‐
stantial similarity’ is properly reserved for similarity that ex‐
ists between the protected elements of a work and another
work.” Id. at 101 (emphasis added). When an architect hews
closely to existing convention, the architect’s “original contri‐
bution [is] slight—his copyright very thin,” so that only “very
close copying” could take whatever truly belongs to the archi‐
tect. Id. at 107.4
Design Basics’ infringement claim fails for essentially the
same reason that the plaintiff’s claim failed in Zalewski. Lex‐
ington’s accused plans resemble Design Basics’ plans, but only
because both sets resemble common home designs one might
observe throughout the suburbs of Milwaukee, Chicago, Indi‐
anapolis, or many other communities. There are only so many
ways to arrange a few bedrooms, a kitchen, some common ar‐
eas, and an attached garage, so “not every nook and cranny
of an architectural floor plan enjoys copyright protection.”
See Home Design Services, Inc. v. Turner Heritage Homes Inc., 825
F.3d 1314, 1321 (11th Cir. 2016).
4 Courts have applied similar reasoning in other contexts where op‐
portunities for creative expression are narrow. See Feist Publications, 499
U.S. at 349 (explaining that the “copyright in a factual compilation is
thin”); Schrock v. Learning Curve Int’l, Inc., 586 F.3d 513, 521 (7th Cir. 2009)
(explaining that the “copyright in a derivative work is thin”); Satava v.
Lowry, 323 F.3d 805, 812 (9th Cir. 2003) (plaintiff who created glass jellyfish
sculpture enjoyed only thin copyright protection to the extent his artistic
choices were “not governed by jellyfish physiology or the glass‐in‐glass
medium”).
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Design Basics advertises over 2700 home plans at
www.designbasics.com. We wonder whether there is any
blueprint for a single‐family home anywhere in the country
that Design Basics could not match to one of its own designs
by applying the loose standard of similarity it relies upon
here. An infringement doctrine that would enable an aggres‐
sive designer to sue all of its competitors and bring those
claims before a jury would turn the law of copyright on its
head. Far from promoting the “Progress of Science and useful
Arts,” U.S. Const. art. I, § 8, cl. 8, such a doctrine would chill
the market.
As noted, a close study of Design Basics’ and Lexington’s
plans reveals many aesthetic distinctions, further undercut‐
ting Design Basics’ claim that Lexington took anything that
belonged to it. Dr. Greenstreet, Lexington’s expert, identified
46 differences between Design Basics’ Aspen and Lexington’s
Carlisle; 54 differences between Design Basics’ Kendrick and
Lexington’s Oakridge; 49 differences between Design Basics’
Taylor and Lexington’s Ashwood; and 62 differences between
Design Basics’ Womack and Lexington’s Easton. Dr. Green‐
street spotted differences in dimensions and spatial relation‐
ships, in roofing configurations and building materials, and
in carpentry and decor.5
5
For example, among the 62 differences between Design Basics’
Womack and Lexington’s Easton, Dr. Greenstreet observed: the Easton
had a double gable on its left roof while the Womack had a single gable;
the Easton had a low stone wall along the front elevation while the Wom‐
ack had none; and the Easton had no window feature in its garage gable
while the Womack’s garage gable had a shuttered window feature. The
Easton’s front door was tri‐paneled with no glass, while the Womack’s
front door had six panels and a vertical glass feature. The Easton’s garage
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Given the economic and functional constraints on the de‐
signers and the vast body of similar designs in the public do‐
main, these many differences are not trivial. See Home Design
Servs., 825 F.3d at 1324 (“[W]hen floor plans are drawn in a
customary style and to industry standards, even ‘subtle dif‐
ferences’ … can indicate that there is no copyright infringe‐
ment.”).
In response to Dr. Greenstreet’s detailed report, Design Ba‐
sics offered essentially nothing.6 On summary judgment and
was almost square, while the Womack’s garage was oblong, and the inter‐
nal garage doors were configured differently. The Easton’s pantry had
double cabinet doors while the Womack’s pantry had a single walk‐in
door, and the dining areas differed with respect to shape, dimension, size,
and use of doors. The Easton’s master bedroom had two windows, while
the Womack had a single window. The Easton had a tray ceiling and a
walk‐in closet, but the Womack had neither. The toilet and washbasin in
the Easton’s master bathroom were positioned differently than in the
Womack. The Easton bathroom also featured a closet. Perhaps most strik‐
ing, the Easton had a full basement accessible by a stairwell to the right of
the family room, while the Womack was built on a slab. We could go on.
The point simply is that these two designs, like the other pairs at issue in
this case, differ in many respects, casting further doubt on Design Basics’
already tenuous claim of copyright infringement.
6 Design Basics included in its appellate brief images that it calls
“demonstrative aids.” These are side‐by‐side renderings of each accused
plan and its Design Basics counterpart. But Design Basics modified these
images by, in its words, “re‐sizing, flipping, and juxtaposing” them. We
have not used these manipulated images to assess the claim of substantial
similarity. Design Basics did not even present its manipulations to the dis‐
trict court. See Fed. R. App. P. 10(a) (“The following items constitute the
record on appeal: (1) the original papers and exhibits filed in the district
court … .”); Midwest Fence Corp. v. U.S. Dep’t of Transportation, 840 F.3d
932, 946 (7th Cir. 2016) (“As a general rule, we will not consider evidence
on appeal that was not before the district court when it rendered its deci‐
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on appeal, Design Basics relied on a conclusory six‐page dec‐
laration by its draftsman, Carl Cuozzo, that does not reflect
any effort at side‐by‐side comparison of the plans. Cuozzo
said only generally that the accused plans are “substantially
similar to Plaintiffs’ Copyrighted Works in too many ways to
have been the product of independent creation” and that it
was “obvious” to him that the accused plans were copies of
Design Basics’ plans.
Cuozzo has offered remarkably similar opinions in other
Design Basics cases. E.g., Design Basics LLC v. J & V Roberts
Investments, Inc., 130 F. Supp. 3d 1266, 1279 (E.D. Wis. 2015)
(“The plaintiffs … submit evidence from an employee, Carl
Cuozzo, opining that the works at issue are substantially sim‐
ilar in too many ways to have been the product of independ‐
ent creation.”) (citation omitted); Design Basics, LLC v.
DeShano Cos., No. 10‐14419, 2012 WL 4321313, at *15 (E.D.
Mich. Sept. 21, 2012) (“Carl Cuozzo … testified that each of
[defendant’s] plans were ‘substantially similar to the Design
Basics plan.’ Further, Mr. Cuozzo testified that ‘[t]he overlays
show enough similarities … that it’s unimaginable that it’s a
coincidence.’”) (citations omitted). Design Basics’ repeated re‐
liance on its in‐house draftsman’s conclusory testimony in
lieu of third‐party expert testimony, where the draftsman
stands to profit directly if his firm prevails in litigation, strikes
us as a questionable workaround to the general prohibition
on contingency payments for expert witnesses. See United
States v. Dawson, 425 F.3d 389, 394 (7th Cir. 2005) (“[A]n expert
sion. Adding new evidence would essentially convert an appeal into a col‐
lateral attack on the district court’s decision.”). The manipulated images
are also too small and grainy to be of any use. We rely instead on the im‐
ages filed in the district court, which are an appendix to this opinion.
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witness … may not be paid more if the party for whom he is
testifying wins the case.”), supplemented on reh’g, 434 F.3d 956
(7th Cir. 2006); Tagatz v. Marquette University, 861 F.2d 1040,
1042 (7th Cir. 1988) (“There is a rule against employing expert
witnesses on a contingent‐fee basis … .”); Milfam II LP v. Amer‐
ican Commercial Lines, LLC, No. 4:05‐CV‐0030‐DFH‐WGH,
2006 WL 3247149, at *2 (S.D. Ind. Mar. 30, 2006) (“[A] highly
unusual contingent fee for an expert witness raises obvious
questions of credibility.”); Model Rule of Prof’l Conduct 3.4
cmt. [3] (Am. Bar Ass’n 1983) (“The common law rule in most
jurisdictions is that it is improper to … pay an expert witness
a contingent fee.”); cf. Accrued Financial Servs., Inc. v. Prime Re‐
tail, Inc., Civ. No. JFM‐99‐2573, 2000 WL 976800, at *3 (D. Md.
June 19, 2000) (“Financial arrangements that provide incen‐
tives for the falsification or exaggeration of testimony
threaten the very integrity of the judicial process which de‐
pends upon the truthfulness of the witnesses.”), aff’d, 298 F.3d
291 (4th Cir. 2002).
Along with his conclusory statements, Cuozzo included a
list of nine factors he deems important in comparing architec‐
tural designs, but he failed to apply, or at least failed to ex‐
plain how he applied, those factors to the plans in this case.
Assuming for the sake of argument that this portion of
Cuozzo’s declaration has any evidentiary value at all, his
broad assertion does not present a genuine issue of fact with
respect to Dr. Greenstreet’s detailed comparisons. See Hum‐
phreys & Partners Architects, L.P. v. Lessard Design, Inc., 790 F.3d
532, 541 (4th Cir. 2015) (plaintiff failed to establish substantial
similarity where plaintiff’s witnesses made conclusory asser‐
tions that designs had a “very similar appearance” and that
the “arrangement and composition of spaces and elements …
represent[ed] substantially similar features”).
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Design Basics argues that Dr. Greenstreet and the district
court improperly “dissected” the plans instead of considering
their overall concept and feel. As Design Basics points out, we
noted in Atari, Inc. v. North American Philips Consumer Electron‐
ics Corp. that the substantial similarity test “does not involve
‘analytic dissection and expert testimony,’ but depends on
whether the accused work has captured the ‘total concept and
feel’ of the copyrighted work.” 672 F.2d 607, 614 (7th Cir. 1982)
(citations omitted), superseded in part by statute on other
grounds. But that is not all we said in Atari. We added: “While
dissection is generally disfavored, the ordinary observer test,
in application, must take into account that the copyright laws
preclude appropriation of only those elements of the work that
are protected by the copyright.” Id. (emphasis added); see also
Peters, 692 F.3d at 632 (“If the copied parts [of a work] are not,
on their own, protectable expression, then there can be no
claim for infringement … .”).
Because so much of the content of the house plans at issue
is dictated by functional requirements and industry norms,
the district court would have erred if it had surveyed the
plans from 30,000 feet, or even 500 feet. The court had to take
a close look, and it did so using Dr. Greenstreet’s report as an
analytic tool. Design Basics chides the district court for failing
to chronicle its side‐by‐side review of the plans to Design Ba‐
sics’ satisfaction, but our focus is not on the brevity or length
of district court opinions. The judge understood the standard
for assessing an infringement claim at summary judgment
and applied that standard correctly to the facts before him.
Design Basics also criticizes Dr. Greenstreet’s description
of the law of architectural copyright. We need not decide
whether Dr. Greenstreet’s legal discussion was accurate in all
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respects, as the district court did not rely on it. Rather, the dis‐
trict court used Dr. Greenstreet’s factual analysis to decide
whether there was a genuine issue of fact on striking similar‐
ity. That was an appropriate use of this essentially unrebutted
evidence.
Design Basics has not offered evidence from which a rea‐
sonable jury could conclude that Lexington’s accused plans
are substantially similar to protectable expression in Design
Basics’ plans, let alone strikingly similar. To whatever extent
the parties’ plans resemble one another, they likewise resem‐
ble countless other home designs in a crowded market. See
Zalewski, 754 F.3d at 107 (“Defendants’ houses shared Plain‐
tiff’s general style, but took nothing from his original expres‐
sion.”). For that reason alone, Lexington was entitled to judg‐
ment as a matter of law.
2. Access
Design Basics’ claim fails for another reason. It has not of‐
fered evidence that Lexington or its agents had a reasonable
possibility of access to the plans at issue. See Selle, 741 F.2d at
901 (“The plaintiff must always present sufficient evidence to
support a reasonable possibility of access because the jury
cannot draw an inference of access based upon speculation
and conjecture alone.”). Without access, there can be no copy‐
ing and no viable claim for copyright infringement.
To prove access, Design Basics relies on two categories of
evidence: (1) weak circumstantial evidence that Lexington’s
agents may have been aware of some of Design Basics’ other
plans; and (2) the existence of www.designbasics.com, a web‐
site that Design Basics hails as prominent and user‐friendly.
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This evidence does not raise a genuine issue of material fact
as to access.
For the first category of evidence, Design Basics cites
Cuozzo’s declaration that the firm disseminates its plans to
homebuilders’ associations and home improvement stores, as
well as Patrick Carmichael’s declaration that Design Basics
“regularly and systematically” mailed publications to mem‐
bers of the Brown County Homebuilders Association in Wis‐
consin. Lexington was a member of that association from 2004
until around 2012 or 2013. But Design Basics’ own records
show that it last shipped an order to the association in 1994—
a decade before Lexington joined the association and years
before three of Design Basics’ plans at issue were even created.
The association’s executive officer swore in an affidavit that
(1) the association does not disseminate plans or plan books
to its members; and (2) if the association had received any
plan materials from Design Basics, it would have discarded
those materials at the time of receipt.
There is no evidence that Design Basics ever sent any plans
or plan catalogs directly to Lexington. During discovery, Lex‐
ington tracked down four old plan books in its office, two of
which contained plans created by Design Basics. But the plans
at issue do not appear in these old books. Lexington’s presi‐
dent and part‐owner swore that he never saw the plans at is‐
sue prior to this lawsuit and was unaware of the books in his
office. A minority shareholder at Lexington, the corporate
controller, and Lexington’s residential drafter gave similar
testimony. These statements are unrebutted. Design Basics’
Cuozzo had no idea whether Lexington ever possessed any of
the plans at issue. Design Basics employees Paul Foresman
and Greg Dodge likewise did not know whether Lexington
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ever had access to the plans. Design Basics has no direct proof
of access and no probative circumstantial evidence that Lex‐
ington may have viewed the plans at issue.7
Design Basics also relies on its website, www.designba‐
sics.com. Cuozzo praised the website as “user‐friendly and
easily accessible,” and he said that Design Basics “advertises
and markets all of its copyrighted works” on the website.
Simply having posted its designs on its website cannot spare
Design Basics from summary judgment.
Cuozzo did not know when any of the plans at issue were
uploaded to the site, nor did he know whether Lexington or
its agents ever accessed the site. Design Basics has introduced
no evidence concerning its web traffic, its web search rank‐
ings, or the number of times (if any) that the plans at issue
have been viewed or downloaded. Design Basics argues in es‐
sence that the mere existence of the website establishes a rea‐
sonable possibility that Lexington accessed its plans.
We have not previously considered whether an Internet
presence, without more, can satisfy the access element of a
copyright infringement claim. The Fourth Circuit rejected a
similar argument in Building Graphics, Inc. v. Lennar Corp., 708
7 Lexington’s draftsman, Shane DuPuis, worked at Hoida Lumber
from 1995 to 1997. The record reflects that Hoida received many Design
Basics catalogs between 1992 and 2001. But three of the four plans at is‐
sue—the Kendrick, Taylor, and Womack plans—were not even created
until the early‐to‐mid 2000s, years after DuPuis left Hoida. Even if Hoida
did receive one or more plan books containing the fourth plan—the As‐
pen—there is no evidence that DuPuis reviewed this plan. He testified that
he could not remember whether he ever viewed any plan books while em‐
ployed at Hoida and that he had never seen any of the plans at issue until
this litigation commenced.
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F.3d 573 (4th Cir. 2013). Plaintiff Building Graphics argued
that because two of its home plans were available on the In‐
ternet, “a reasonable possibility of access can be inferred.” Id.
at 580. The defendant admitted that it surveyed online plans
as “part of due diligence,” but it limited its diligence to its
competitors’ current offerings, and Building Graphics’ plans
were no longer being built in the region. Id. In affirming sum‐
mary judgment for the defendant, the Fourth Circuit said that
it was “at best a mere possibility” that Building Graphics’
plans “would be considered as part of the due diligence pro‐
cess.” Id. The court added that Building Graphics made no
showing that the plans were “prominently featured” on its
website such that the plaintiff would “easily find them or
stumble across them.” Id.
The Fourth Circuit’s analysis is persuasive. Design Basics
attempts to distinguish Building Graphics on the ground that
Lexington was ostensibly familiar with Design Basics,
whereas there was apparently no evidence in Building
Graphics that defendant was familiar with plaintiff or its work.
But merely because Lexington knew there is such a firm as
Design Basics, a jury could not reasonably infer that Lexing‐
ton accessed its website and discovered—among the many
hundreds of plans catalogued—the four plans at issue here.
Design Basics cites a handful of district court opinions
suggesting that an Internet presence may satisfy the access re‐
quirement for an infringement claim.8 The weight of author‐
ity, and in our view the more persuasive analysis, rejects this
8 See Conference Archives, Inc. v. Sound Images, Inc., Civ. No. 3:2006‐76,
2010 WL 1626072, at *10 (W.D. Pa. Mar. 31, 2010); Green Bullion Financial
Servs., LLC v. Money4Gold Holdings, Inc., 639 F. Supp. 2d 1356, 1361 (S.D.
Fla. 2009); Allen v. Ghoulish Gallery, Civ. No. 06cv371 NLS, 2007 WL
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argument. See, e.g., Cain v. Hallmark Cards, Inc., Civ. No. 3:15‐
00351‐JWD‐EWD, 2016 WL 3189231, at *5 (M.D. La. June 6,
2016) (“[E]stablishing a bare possibility of access is not
enough, and a plaintiff must prove that … a defendant had a
reasonable possibility of viewing the work. Applying this
doctrine, courts have consistently refused to treat internet
publication alone as sufficient to engender this requisite pos‐
sibility.”) (alterations, internal quotation marks, and citations
omitted); Stabile v. Paul Smith Ltd., 137 F. Supp. 3d 1173, 1187
(C.D. Cal. 2015) (“Even if an inference can be drawn that
[Plaintiff’s painting] appeared at one time on Plaintiff’s web‐
site, simply displaying an image on a website for an undeter‐
minable period of time is insufficient to demonstrate that it
was widely disseminated.”); Loomis v. Cornish, No. CV 12‐5525
RSWL (JEMx), 2013 WL 6044345, at *12 (C.D. Cal. Nov. 13,
2013) (“The availability of a copyrighted work on the Internet,
in and of itself, is insufficient to show access through wide‐
spread dissemination.”), aff’d, 836 F.3d 991 (9th Cir. 2016);
4207923, at *20 (S.D. Cal. Nov. 20, 2007). However, several of the cases that
Design Basics relies upon are readily distinguishable either factually or
procedurally and are thus of limited persuasive value in this case. See Live
Face on Web, LLC v. AZ Metroway, Inc., No. 5:15‐cv‐01701‐CAS(KKx), 2016
WL 4402796, at *1 (C.D. Cal. Aug. 15, 2016) (defendant failed to appear or
defend in suit, and plaintiff moved for default judgment); Schenck v. Orosz,
No. 3:13‐cv‐00294, 2016 WL 912281, at *6 (M.D. Tenn. Mar. 10, 2016) (plain‐
tiffs and defendants both marketed goods via Amazon.com); Nat’l Board
of Medical Examiners v. Optima University LLC, No. 1:09‐cv‐01043‐JDB‐cgc,
2011 WL 7615071, at *6 (W.D. Tenn. Sept. 29, 2011) (defendants sat for ex‐
ams to gain access to copyrighted questions and were found in possession
of notes and screenshots); Frank Betz Assocs. v. J.O. Clark Construction, LLC,
Civ. No. 3:08‐cv‐00159, 2010 WL 2253541, at *14 (M.D. Tenn. May 30, 2010)
(defendants did not dispute that they actually received copies of magazine
containing home plans at issue, though they denied reading magazine).
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Hayes v. Minaj, No. 2:12‐cv‐07972‐SVW‐SH, 2012 WL
12887393, at *3 (C.D. Cal. Dec. 18, 2012) (same); O’Keefe v.
Ogilvy & Mather Worldwide, Inc., 590 F. Supp. 2d 500, 515
(S.D.N.Y. 2008) (same). On this issue, we agree with the rea‐
soning in these decisions and with Building Graphics.
We do not draw here a bright line as to the quantity or
quality of evidence, in addition to a web presence, a plaintiff
must offer to raise a genuine issue of fact concerning access.
We decide only that the existence of the plaintiff’s copyrighted
materials on the Internet, even on a public and “user‐
friendly” site, cannot by itself justify an inference that the de‐
fendant accessed those materials. It follows that a plaintiff
who cannot show striking similarity and whose evidence of
access reduces to the mere existence of a website cannot sur‐
vive summary judgment on a copyright infringement claim.
The district court correctly granted summary judgment to
Lexington.
The judgment of the district court is AFFIRMED.
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Appendix
Design Basics’ “Aspen”
Lexington’s “Carlisle”
Design Basics’ “Taylor”
(first floor)
Lexington’s “Ashwood”
(first floor)
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27
Design Basics’ “Womack” Lexington’s “Easton”
(first floor)
(first floor)
Design Basics’ “Kendrick”
Lexington’s “Oakridge”
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