Scholz Design, Inc. v. Sard Custom Homes, LLC et al

Filing 70

ORDER: Defendant Sard Custom Homes' Motion 46 to Dismiss is GRANTED. Defendant Prudential Connecticut Realty's Motion 48 to Dismiss is GRANTED. Defendant Coldwell Banker Residential Real Estate's Motion 50 to Dismiss is GRANTED. The Clerk is directed to close this case. Signed by Judge Janet Bond Arterton on 07/15/2011. (Budris, K.)

UNITED STATES DISTRICT COURT
DISTRICT OF CONNECTICUT
Scholz Design, Inc.,
Plaintiff,

Civil No. 3:10cv1681 (JBA)

v.
Sard Custom Homes, LLC, et al.,
Defendants.

July 15, 2011

RULING ON MOTIONS TO DISMISS
On February 1, 2011, Plaintiff Scholz Design, Inc. (“Scholz”) filed an Amended
Complaint against Defendants Sard Custom Homes, LLC (“Sard”), Prudential Connecticut
Realty (“Prudential”), and Coldwell Banker Residential Real Estate, Inc. (“Coldwell Banker”),
alleging copyright infringement, violations of the Lanham Act, breach of contract, and
violations of the Digital Millennium Copyright Act arising from Defendants’ use of
architectural drawings created by Scholz. Sard moves [Doc. # 46] to dismiss the Amended
Complaint in its entirety, Coldwell Banker moves [Doc. # 50] to dismiss Counts II and IV
of the Amended Complaint, and Prudential moves [Doc. # 49] to dismiss Count III of the
Amended Complaint. For the reasons stated below, the motions to dismiss will be granted.
I.

Factual Allegations
Scholz alleges in Count I of its Amended Complaint that it authored and holds the

copyrights for architectural drawings and designs of homes known as “Springvalley A” and
“Wethersfield B” (Am. Compl. [Doc. # 43] ¶¶ 10–14.) According to Scholz, without its
knowledge or permission, Sard, which had access to these designs as a former Scholz
“registered builder,” “prepared, or induced, caused, or materially contributed to the
preparation of certain architectural drawings by copying the Springfield and Wethersfield

Designs” and marketed its ability to build these designs by displaying thumbnail exterior
images of the home designs on Prudential websites. (Id. ¶¶ 15–19.) In Count II, Scholz
alleges that it also authored and holds the copyrights for architectural drawings and designs
known as “Breckinridge A” and that Sard and Coldwell Banker similarly “prepared, or
induced, caused, or materially contributed to the preparation of certain architectural
drawings by copying the Breckinridge Design” and placed an exterior image of this home
design on Coldwell Banker websites. (Id. ¶¶ 25–36.) Scholz attaches to its Amended
Complaint copies of the Prudential and Coldwell Banker web pages that it claims display the
copied images, which show front elevation drawings of the homes described in the
Springvalley, Wethersfield, and Breckinridge designs. (Id. Ex. E, F, I.)
Scholz also claims in Counts III and IV that the use of these images violates the
Lanham Act’s prohibition on “reverse passing off.” (Id. ¶¶ 39–59.) It alleges that Sard,
Prudential, and Coldwell Banker “used, reproduced, displayed, distributed, marketed,
offered for sale and advertised” Scholz’s designs by copying and cropping the design cover
sheets and using them to market Sard’s ability to build those designs. (Id. ¶¶ 41–42, 52.)
Scholz further alleges that Sard, Prudential, and Coldwell Banker falsely designated the
origin of the Springvalley, Wethersfield, and Breckinridge designs by removing Scholz’s
name from the designs and representing that the designs are their own. (Id. ¶¶ 43–45,
53–54.)
In Count V, Scholz claims that Sard breached its Builder Agreement with Scholz—in
which Sard agreed “not to duplicate or copy any Scholz designs without first obtaining
Scholz’s approval”—by copying the Springvalley, Wethersfield, and Breckinridge designs and
marketing the designs on the above–mentioned websites after the Builder Agreement
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expired. (Id. ¶¶ 60–63.) In Count VI, Scholz claims that Sard also violated the Digital
Millennium Copyright Act, 17 U.S.C. § 1202, by “purposefully remov[ing] the Scholz name
and notice of copyright from the Scholz Designs.” (Id. ¶¶ 69–72.)
II.

Discussion1
A.

Counts One and Two: Copyright Infringement

Sard and Coldwell Banker move to dismiss Counts One and Two of the Amended
Complaint on the ground that Scholz does not hold valid copyrights in the images depicted
in Exhibits E, F, and I to the Amended Complaint that Scholz alleges constitute the
violations of its copyrights. They argue that these thumbnail depictions of drawings are not
architectural or technical plans and thus are not protectable by copyright.
Copyright protection extends to “original works of authorship fixed in any tangible
medium of expression” including “architectural works.” 17 U.S.C. § 102(a). The owner of
a copyright “has the exclusive rights . . . to reproduce the copyrighted work.” Id. § 106. “An
‘architectural work’ is 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

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The Federal Rules of Civil Procedure require a complaint to contain “a short and
plain statement of the claim showing that the pleader is entitled to relief,” Fed. R. Civ. P.
8(a)(2), and a defendant may move to dismiss a complaint that fails “to state a claim upon
which relief can be granted.” Fed R. Civ. P. 12(b)(6). “To survive a motion to dismiss, a
complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to relief
that is plausible on its face.’” Ashcroft v. Iqbal, 129 S. Ct. 1937, 1949 (2009) (quoting Bell Atl.
Corp. v. Twombly, 550 U.S. 544, 570 (2007)); accord Kuck v. Danaher, 600 F.3d 159, 162–63
(2d Cir. 2010). A complaint will not survive a motion to dismiss if it relies on “[t]hreadbare
recitals of the elements of a cause of action, supported by mere conclusory statements,” or
if “the well–pleaded facts do not permit the court to infer more than the mere possibility of
misconduct.” Iqbal, 129 S. Ct. at 1949–50.
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design, but does not include individual standard features.” Id. § 101. “The Architectural
Works Copyright Protection Act (“AWCPA”), Pub.L. No. 101-650, tit. VII (1990), extended
copyright protection to architectural works that are not otherwise works of art.” Richard J.
Zitz, Inc. v. Dos Santos Pereira, 232 F.3d 290, 292 (2d Cir. 2000). “[U]nder 37 C.F.R. §
202.11(d)(3), architectural works that “were constructed or otherwise published before
December 1, 1990” are ineligible for protection under the AWCPA.” Id.
Sard and Coldwell Banker argue that the depictions in Exhibits E, F, and I could not
have been copyrighted as architectural works because, the copyrights having been granted
in 1988 and 1989, they predate the AWCPA and that the conceptual nature of these
depictions means that they are not protected by Scholz’s copyright because they contain
insufficient detail from which a building could be constructed. The Second Circuit, in Attia
v. Society of the New York Hospital, 201 F.3d 50, 56–57 (2d Cir. 1999) distinguished between
viable copyright infringement claims in which the copied drawing contained sufficient detail
to enable construction and drawings of a “preliminary, conceptual nature” from which a
copyrighted structural design could not be constructed and which did not constitute
“protected expression.” The court held that the defendants’ use of “highly preliminary and
generalized” drawings, which described a “proposed design at a very general level of
abstraction” depicting “creative ideas on how to extend New York Hospital over the F.D.R.
Drive” copied only non–protectable “ideas and concepts” because they did not contain a
level of detail sufficient to enable construction. Id. at 55–57.
Pre–AWCPA cases cited by Plaintiffs draw a similar distinction. In Robert R. Jones
Assocs. v. Nino Homes, 858 F.2d 274, 280 (6th Cir. 1988), the Sixth Circuit held that the
defendant infringed the plaintiff’s copyright by obtaining a promotional brochure containing
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“abridged floor plans” of the plaintiff’s home design and using that copy to construct a house
based on that design. In summarizing case law on infringing use of such design materials,
including the Southern District of New York’s decision in Demetriades v. Kaufmann, 680 F.
Supp. 658 (S.D.N.Y. 1988), the court held: “The rule which emerges from these cases is that
one may construct a house which is identical to a house depicted in copyrighted architectural
plans, but one may not directly copy those plans and then use the infringing copy to construct
the house.” Jones, 858 F.2d at 280 (emphasis added). The Fifth Circuit similarly addressed
in Imperial Homes Corp. v. Lamont, 458 F.2d 895, 899–900 (5th Cir. 1972) a factual scenario
in which the defendants visited a home designed by the plaintiffs at which brochures
containing a floor plan were available and then constructed a house “intended to be
substantially similar” and held that “if copyrighted architectural drawings of the originator
of such plans are imitated or transcribed in whole or in part, infringement occurs.”
Scholz does not allege in its Amended Complaint that Sard has or would be able to
construct homes to the specifications of the Springvalley, Wethersfield, and Breckinridge
designs using the copied thumbnail images, and Scholz’s counsel acknowledged at oral
argument that Sard has not built the houses depicted in those images. Under Attia, 201 F.3d
at 56–57, as well as Jones, 858 F.2d at 280, and Lamont, 458 F.2d at 899–900, copyright
protection extends to the component images of architectural designs to the extent that those
images allow a copier to construct the protected design. “The intrinsic function of an
architectural plan is to convey the information necessary to enable the reader to construct
a building.” Eales v. Envtl. Lifestyles, Inc., 958 F.2d 876, 879–80 (9th Cir. 1992), abrogated
on other grounds by Hunt v. Pasternack, 179 F.3d 683 (9th Cir. 1999). Scholz alleges in its
Amended Complaint that Sard copied and placed on Prudential and Coldwell Banker web
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pages thumbnail images depicting front elevation views of the homes in the Springvalley,
Wethersfield, and Breckinridge designs. (Am. Compl. ¶¶ 15, 30, Ex. E, F, I.) These images
do not convey sufficient information with respect to these designs to allow construction of
these homes. See Jones, 858 F.2d at 280. Without the necessary level of detail to allow
construction, the copied images do not fulfill the intrinsic function of an architectural plan
and thus the act of copying them does not violate any right protected by a copyright for
architectural technical drawings. Scholz has accordingly failed to state claims for copyright
infringement that are plausible on their face. Counts One and Two of Scholz’s Amended
Complaint are therefore dismissed.2
B.

Counts Three and Four: The Lanham Act

Prudential moves to dismiss Count Three of the Amended Complaint, Coldwell
Banker moves to dismiss Count Four, and Sard moves to dismiss Counts Three and Four,
alleging violations of the Lanham Act, for failure to state a claim upon which relief can be
granted.
In Counts Three and Four of the Amended Complaint, Scholz claims “reverse
passing off” under the Lanham Act, 15 U.S.C. § 1125, which occurs when a defendant falsely
designates the origin of a plaintiff’s work, or “misappropriat[es] . . . credit properly
belonging to the original creator of the work.” Waldman Publ’g Corp. v. Landoll, Inc., 43
F.3d 775, 780–81 (2d Cir. 1994). “A claim of reverse passing off is separate and distinct from
a claim of copyright infringement.” Id. at 781–82. Copying a work without attribution

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Sard and Coldwell Banker also both argue that Scholz’s copyright infringement
claims should be dismissed because their use of the images is “fair use” under 17 U.S.C.
§ 107. Because Scholz’s has failed to state valid copyright infringement claims, the Court will
not address the “fair use” arguments.
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constitutes copyright infringement, whereas the misattribution of credit for copied work
constitutes reverse passing off under the Lanham Act. See Dastar Corp. v. Twentieth Century
Fox Film Corp., 539 U.S. 23, 33–34 (2003). “The failure to credit the true author of a
copyrighted work is not a false designation of origin, but a violation of copyright.” Freeplay
Music, Inc. v. Cox Radio, Inc., 409 F. Supp. 2d 259, 263 (S.D.N.Y. 2005); see also Williams v.
UMG Recordings, Inc., 281 F. Supp. 2d 1177, 1184 (C.D. Cal. 2003) (“Dastar makes clear that
a claim that a defendant's failure to credit the plaintiff on the defendant's goods is actionable
only where the defendant literally repackages the plaintiff's goods and sells them as the
defendant's own–not where, as here, Defendants are accused only of failing to identify
someone who contributed not goods, but ideas or communications (or, for that matter,
‘services’) to Defendants’ product.”)
Although Scholz claims in Counts Three and Four that Sard, Prudential, and
Coldwell Banker “have perpetrated a reverse passing off by removing Scholz’s name” from
the designs and representing that those designs are their own, (Am. Compl. ¶¶ 45, 54), the
web pages attached to the Amended Complaint do not reflect that Defendants
misappropriated credit for the designs or the elevation drawings or in some way held those
designs or drawings out as their own (See Am. Compl. Exs. E, F, I.) The websites do not
attribute credit for the drawings to anyone. Sard advertised on Prudential and Coldwell
Banker websites the ability to build homes on the advertised lots; it did not advertise that it
had designed the homes represented in the thumbnails. Thus Defendants did not
“repackage” these designs as their own, but instead failed to identify someone who
contributed to the depictions in the thumbnails, and therefore have not misappropriated
credit properly belonging to Scholz. See Williams, 282 F. Supp. 2d at 1184. Because,
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according to Scholz’s Amended Complaint and the attached exhibits, Sard, Prudential, and
Coldwell Banker did not attribute authorship of the designs or images to themselves, rather
they failed to attribute credit for the designs altogether, they have not falsely designated the
origin of those designs and thus cannot have committed reverse passing off.3 See Freeplay,
409 F. Supp. 2d at 263. Scholz has therefore failed to state a facially plausible claim under
the Lanham Act and Counts Three and Four of the Amended Complaint are dismissed.
C.

Counts Five and Six: Breach of Contract and Millennium Copyright Act

In Counts Five and Six, respectively, Scholz claims that Sard breached its contract
with Scholz and violated the Digital Millennium Copyright Act, 17 U.S.C. § 1202. Sard
argues that these Counts should be dismissed because Scholz has not stated a valid copyright
infringement claim. Scholz does not dispute that it must have a valid copyright claim in
order for Counts Five and Six to survive. Accordingly, because the Court has concluded that
Scholz has failed to state a copyright infringement claim upon which relief can be granted,
as discussed above, Counts Five and Six are dismissed.

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Scholz also argues that by posting the thumbnail images in Exhibits E, F, and I,
Defendants have misappropriated Scholz’s “reputation” by copying these designs. The
Lanham Act, however, “covers only ‘the producer of the tangible goods that are offered for
sale, and not . . . the author of any idea, concept, or communication embodied in those
goods.’” Moser Pilon Nelson Architects, LLC v. HNTB Corp., No. 05 CV 422(MRK), 2006 WL
2331013, *10 (D. Conn. Aug. 8, 2006) (quoting Dastar, 539 U.S. at 37). Although Scholz’s
counsel asserted at oral argument that Scholz’s elevation drawings were indeed a tangible
good, as discussed above, Defendants did not misattribute credit to themselves for those
drawings. To the extent that Scholz argues that its reputation has been misappropriated
through use of its ideas, rather than credit for the drawings themselves being
misappropriated, it has failed to state a claim under the Lanham Act. See id.
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III.

Conclusion
For the reasons stated above, Defendants Motions to Dismiss [Doc. ## 46, 49, 50] are

GRANTED. The Clerk is directed to close this case.

IT IS SO ORDERED.

/s/
Janet Bond Arterton, U.S.D.J.
Dated at New Haven, Connecticut this 15th day of July, 2011.

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