Design Basics, LLC v. Forrester Wehrle Homes, Inc. et al

Filing 113

Order: On or before 12/15/17, FWH must file a supplemental brief as outlined in this order. On or before 1/16/18, DB must file a supplemental brief as outlined in this order. On or before 2/1/18, 2018, FWH must submit a reply brief that addres ses the arguments and statements of fact that DB made in its supplemental brief and that defendants did not adequately address in their opening supplemental brief. The parties' principal briefs may not exceed fifty double-spaced pages. The defendants' reply brief may not exceed twenty double-spaced pages. SEE FULL ORDER FOR SPECIFIC DIRECTIONS regarding supplemental briefs. Judge James G. Carr on 11/14/17. (C,D)

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF OHIO
WESTERN DIVISION

Design Basics, LLC,

Case No. 3:15CV666
Plaintiff

v.

ORDER

Forrester Wehrle Homes, Inc., et al.,
Defendants

This is a copyright-infringement case.
Plaintiff Design Basics, LLC (DB), creates, markets, and licenses architectural plans for
single-family homes. (Doc. 58 at ¶1). It contends that defendants – Forrester Wehrle Homes, Inc.;
Wehrle Development, Ltd.; and their principals Jeffrey, Richard, and Joseph Wehrle (collectively,
FWH) – infringed its copyrights in twenty-three architectural plans. (Id. at ¶¶35–36). The defendants
allegedly did so by copying DB’s plans, marketing the copied plans, creating unauthorized derivative
works, and using DB’s plans to build homes. (Id. at ¶¶44–59).
Pending is, inter alia, the defendants’ motion for summary judgment on the issue of
substantial similarity. (Doc. 82).
Because the parties disagree on the applicable legal standard, and because the parties’ briefs
are insufficient to permit me to determine whether there is a triable issue on the question of the
works’ substantial similarity, I issue this order: 1) setting forth the controlling law; and 2) directing
the parties to file supplemental briefs.

Discussion
To prevail on an infringement claim, a copyright holder must establish that: 1) it owns a valid
copyright in the work at issue; 2) the defendant copied its work; and 3) the copying was wrongful.
Kohus v. Mariol, 328 F.3d 848, 853 (6th Cir. 2003); accord Zalewski v. Cicero Builder Dev., Inc.,
754 F.3d 95, 100 (2d Cir. 2014).
The plaintiff can prove copying “with either direct evidence of copying,” or, as DB attempts
to do here, “through an inference of copying.” Robert L. Stark Enterprises, Inc. v. Neptune Designs
Grp., LLC, 2017 WL 1345195, *5 (N.D. Ohio) (Gaughan, J.).
To generate an inference of copying, the copyright owner must show “(1) access to the
allegedly-infringed work by the [infringer] and (2) a substantial similarity between the two works
at issue.’” Id. (quoting Kohus, supra, 328 F.3d at 853–54).
Because “[n]ot all copying . . . is copyright infringement,” Feist Publ’ns, Inc. v. Rural Tel.
Serv. Co., 499 U.S. 340, 348 (1991), the plaintiff must establish that “the defendant’s work is
‘substantially similar’ to protectible elements of the plaintiff’s work,” Sturdza v. United Arab
Emirates, 281 F.3d 1287, 1295 (D.C. Cir. 2002). Thus “the term substantial similarity is properly
reserved for similarity that exists between the protected elements of a work and another work.”
Zalewski, supra, 754 F.3d at 101.
“To determine whether an instance of copying is legally actionable, a side-by-side
comparison must be made between the original and the copy to determine whether a layman would
view the two works as substantially similar.” Lennar Homes of Tex. Sales & Marketing, Ltd. v. Perry
Homes, LLC, 117 F. Supp. 3d 913, 933 (S.D. Tex. 2015); see Kohus, supra, 328 F.3d at 857 (“the

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inquiry in the second prong of the substantial similarity test should focus on the intended audience,”
which “will ordinarily be the lay public”) (internal emphasis omitted).
A. Substantial Similarity, Architectural Works, and the Sixth Circuit
In Kohus, supra, 328 F.3d at 855, the Circuit adopted a two-step test to determine whether
an original work and an alleged copy are substantially similar:
[T]he first step requires identifying which aspects of the artist’s work, if any, are
protectible by copyright; the second involves determining whether the allegedly
infringing work is substantially similar to protectible elements of the artist’s work.
We approve this method and adopt it.
The essence of the first step is to filter out the unoriginal, unprotectible elements –
elements that were not independently created by the inventor, and that possess no
minimal degree of creativity – through a variety of analyses.
(Internal citations and quotation marks omitted).
The issue in Tiseo Architects, Inc. v. B & B Pools Serv. & Supply Co., 495 F.3d 344, 345
(6th Cir. 2007), was whether the district court had “applied the wrong legal standard in reaching its
conclusion that [the defendant’s] design and construction drawings were not substantially similar
to [the plaintiff’s] design and site plan drawings.”
After holding a bench trial, the district court in Tiseo found that the plaintiff failed to prove
that “the architectural drawings at issue” were substantially similar. Id. at 346–47. According to the
Sixth Circuit, the district court had, in setting forth its verdict:
identifie[d] those unoriginal and uncreative parts of Tiseo Architects’ work that are
not protectable by copyright. Then, after extracting those unprotectable aspects of
Tiseo Architects’ drawings, the district court compared the remaining protectable
elements to Olson’s work, and found that they were not substantially similar.
Id. at 348.

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In other words, the district court applied the two-step analysis from Kohus, supra, and the
Sixth Circuit held that the court was correct to apply that test. Id. at 345 (“Because the district court
properly analyzed the similarity of the works after filtering out the unprotectable elements of Tiseo
Architects’ drawings, the district court’s judgment of the district court is affirmed.”); id. at 348
(quoting from Kohus, supra, 328 F.3d at 855, at length).1
Contrary to DB’s representation, the Sixth Circuit has “a clear and unequivocal method of
analyzing substantial similarity for architectural works”: the two-step filtration test that the court
adopted in Kohus for infringement claims generally, and that the court applied in Tiseo Architects
to architectural works specifically.2
B. Supplemental Briefing
I conclude, for two reasons, that it is necessary and desirable to have the parties submit
supplemental briefs on the issue of substantial similarity.
First, I have now resolved the parties’ dispute as to what standard of substantial similarity
controls this dispute, but I do not have briefing from DB explaining why, under the Kohus/Tiseo
Architects test, I should allow its claims to go to the jury. (DB did argue that its claims would survive

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I am disappointed that the parties neither cited nor, much less, and more importantly,
discussed Tiseo Architects. Thus, I disregard, and need not discuss, their conflicting contentions as
to the test for determining substantial similarity. There is case law in our Circuit on this issue, and
it is, of course, controlling.
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District courts throughout the Sixth Circuit, moreover, have applied the Kohus test in
copyright cases involving architectural works. Design Basics, L.L.C. v. Petros Homes, Inc., 2017 WL
2842783, *2 (N.D. Ohio) (Parker, J.) (in which DB made, and Magistrate Judge Parker rejected –
forty-five days before DB filed its opposition brief in this case – the same arguments vis-a-vis the
absence of a controlling Sixth Circuit case re. substantial similarity); Stark Enterprises, supra, 2017
WL 1345195 at *5–7; Dorchen/Martin Assocs., Inc. v. Brook of Boyne City, Inc., 2013 WL 5348627,
*5 (E.D. Mich.); Bruemmer v. Reardon, 2012 WL 5989355, *4–7 (W.D. Mich.); Frank Betz Assocs.,
Inc. v. Signature Homes, Inc., 2010 WL 1373268 (M.D. Tenn.)
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summary judgment under Kohus, but its argument was perfunctory and conclusory. The firm
contends that twenty-nine FWH designs or homes infringe twenty-three of its own designs, yet its
argument in support of that position is barely two pages long.).
Second, the parties’ original briefs do not, at least according to my understanding of the law,
adequately home in on the protected level of expression, if any, in DB’s architectural works.
For example, much of the report of defendants’ expert, Richard Kraly, focuses on why certain
constituent elements of DB’s plans – “entry foyer two stories high,” “gutters and downspouts at
lower roof edges to collect and direct exterior water,” and “breakfast area adjacent to the kitchen”
– are not themselves original or copyrightable. (Doc. 109–1 at 29–30).
But I do not understand DB to be claiming a copyright in these kinds of standard features or
elements, which the Copyright Act in any event excludes from protection. See 17 U.S.C. § 101.
Rather, DB seems to claim copyright protection in the allegedly unique way in which it has arranged
these kinds of elements in each of its home designs. Yet the defendants’ briefs and supporting
materials devote less attention to that question.
Furthermore, given the underdeveloped nature of DB’s substantial similarity argument, its
brief is of little assistance in gauging whether a reasonable jury could find that the defendants
infringed its works.
Accordingly, the parties must file supplemental briefs on the question whether, viewing the
evidence in the light most favorable to DB, a reasonable jury could find that FWH’s design plans are
substantially similar to DB’s plans at the protected level of expression. The briefs must address the
specific issues flagged at the end of this order. And in addressing those issues, the parties must apply
the legal principles I set out below.
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1. Protected Level of Expression in Architectural Works
According to the Copyright Act, an “architectural work” is “the design of a building as
embodied in any tangible medium of expression, including a building, architectural plans, or
drawings.” 17 U.S.C. § 101.
Copyright protection can extend to “the overall form as well as the arrangement and
composition of spaces and elements in the design, but does not include individual standard features.”
Id. Nor does protection extend to the “standard configurations of spaces as well as common
windows, doors, and other staple building components.” Lennar Homes, supra, 117 F. Supp. 3d at
934 (internal quotation marks and citation omitted).
In this way, “the Copyright Act restricts which elements of architectural floor plans are
protectable through its definition of a copyrightable ‘architectural work.’” Home Design Servs., Inc.
v. Turner Heritage Homes, Inc., 825 F.3d 1314, 1321 (11th Cir. 2016).
Accordingly, to resolve the defendants’ motion on substantial similarity, I must identify the
protected level of expression in DB’s works by determining what elements of the works, if any, are
entitled to copyright protection.
In trying to do so, I have found the most useful guidance in Design Basics, LLC v. Lexington
Homes, Inc., 858 F.3d 1093 (7th Cir. 2017); Home Design Servs., supra, 825 F.3d 1314; Zalewski,
supra, 754 F.3d 95; Architects Collective v. Puciano & English, Inc., 247 F. Supp. 3d 1322 (N.D.
Ga. 2017); and Lennar Homes, supra, 117 F. Supp. 3d 913.
These cases are useful and persuasive because they discuss, with specific reference to
architectural works, the ways in which a court should filter out the unprotected elements of

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expression and identify the protected level of expression. And though none of these cases comes
from the Sixth Circuit, each applied a roughly analogous version of the Kohus test that controls here.
2. Scenes a Faire and Merger
First, these cases endorse the use of both the scenes a faire doctrine (i.e., a scene that must
be included in a work) and the doctrine of merger to “filter out” unprotected elements. As the Second
Circuit explained in Zalewski, supra, 754 F.3d at 102:
[T]he doctrine of scenes-a-faire teaches that elements of work that are indispensable,
or at least standard, in the treatment of a given topic – like cowboys, bank robbers,
and shootouts in stories of the American West – get no protection. Similarly, the
merger doctrine instructs that some ideas can only be expressed in a limited number
of ways – single words or colors for example. When expression is so limited, idea
and expression “merge.” Expressions merged with ideas cannot be protected, lest one
author own the idea itself.
Accordingly, the parties should discuss how, if at all, these doctrines affect the amount of
protected expression in DB’s architectural works.
3. External Considerations
Second, the courts have also recognized that external considerations – that is, industry
standards, consumer expectations, zoning requirements, and the like – can limit the amount of
protected expression within architectural works. Zalewski, supra, 754 F.3d at 105. This is the case
because, when an architect lets these considerations guide his or her work, the resulting design is a
function of those requirements, rather than something original to the architect. Cf. Tiseo Architects,
supra, 495 F.3d at 348 (many elements of architectural drawings were based on client’s original
sketches and were thus “unoriginal” and not copyrightable).

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Therefore, the parties should discuss, with specific reference to the evidence in the record,
the extent to which external considerations limit the amount of protected expression in the works
at issue.
4. Overall Look and Feel, Plan Layouts, and Design Choices
The cases also recognize that, “while individual standard features and architectural elements
classifiable as ideas are not themselves copyrightable, an architect’s original combination or
arrangement of such features may be.” Architects Collective, supra, 247 F. Supp. 3d at 1342
(emphasis supplied).
But such combinations and arrangements are not always protected. For example, the court
in Lennar Homes, supra, 117 F. Supp. 3d at 939–40, considered and ultimately accepted such an
argument:
Lennar’s overall arrangement of spaces is itself an element Perry challenges as being
unprotectable. Put another way, even considering the overall look and feel of
Lennar’s plans – the “protectable whole” – that overall look and feel is primarily a
function of design choices Perry contends are unprotectable. As in Zalewski, the
court can filter out those aspects of Lennar’s overall designs that were influenced by
external factors and determine the scope of protection in Lennar’s plans.
See also Architects Collective, supra, 247 F. Supp. 3d at 1344 (recognizing that, in the Eleventh
Circuit, “a general layout” for a so-called “four-three split” single-family home may not be
copyrightable).
Accordingly, the parties should discuss the extent to which the overall look and feel of DB’s
plans, the layouts of the homes, or its selection, combination, or arrangement of standard,
unprotected elements, constitutes protected expression.

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5. The “Thin” Nature of Protection for Architectural Works
Finally, the three circuit court cases have concluded, for slightly different reasons, that
creators of architectural designs for single-family homes have only “thin” protection in their
copyrights. According to the Seventh Circuit in Design Basics, supra, 858 F.3d at 1101:
The market for affordable home designs is crowded because 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 satisfy.
*

*

*

The challenge of proving substantial similarity is heightened where the field is
crowded or where aesthetic choices may be secondary to consumer demands or
functional requirements. 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 DB 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.
See also Home Design Servs., supra, 825 F.3d at 1321 (“not every nook and cranny of an
architectural floor plan enjoys copyright protection”).
I make no finding in this regard, and I do not intend to work backwards from the idea that
copyright protection for DB’s work is “thin” by asking whether its plans fit within that thin zone of
protection. I simply flag this issue so that the parties will be aware of my view that, given the many
unprotected elements of architectural works generally, and the ways in which external considerations
can dictate plan designs and layouts for single-family homes in particular, it may or may not be that
the amount of protected expressions in any given design is rather slight.

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Conclusion
It is, therefore,
ORDERED THAT:
1.

On or before December 15, 2017, FWH must file a supplemental brief on the question

whether the evidence, viewed in the light most favorable to DB, would permit a reasonable jury to
find that its works are substantially similar to DB’s works at the protected level of expression.
With regard to each and every design at issue, the defendants’ brief must: 1) identify what
parts of DB’s architectural work – the overall look and feel, the selection, composition, and
arrangement of standard or unprotected elements, or other design choices and elements – amount to
unprotected expression and to protected expression; 2) support such claims by citing to the record
(all citations must comply with Fed. R. Civ. P. 56(c)(1)) and relevant case law; and 3) include a
narrative, side-by-side comparison of each DB plan and FWH’s allegedly infringing counterpart that
explains why no ordinary observer (or no reasonable finder of fact) would find the works to be
substantially similar at the protected level of expression.
2.

On or before January 16, 2018, DB must file a supplemental brief on the question

whether the evidence, viewed in its favor, would permit a reasonable jury to find that FWH’s works
are substantially similar to DB’s works at the protected level of expression.
With regard to each and every design at issue, DB’s brief must: 1) identify, with as much
specificity as the record permits – and by citing to the record in accordance with Fed. R. Civ. P.
56(c)(1) – what parts of its architectural works amount to protected expression; 2) respond to the
defendants’ arguments that its architectural works, or parts or components thereof, are not protected
expression; and 3) include a narrative, side-by-side comparison of each DB plan and FWH’s
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allegedly infringing counterpart that explains why an ordinary observer (or a reasonable finder of
fact) could conclude that the works are substantially similar at the protected level of expression;
3.

On or before February 1, 2018, FWH must submit a reply brief that addresses the

arguments and statements of fact that DB made in its supplemental brief and that defendants did not
adequately address in their opening supplemental brief;
4.

Each side has offered opinion evidence (Kraly’s report for FWH and Carl Cuozzo’s

declaration for DB) to establish that any copying did or did not involve protected expression. In
preparing their submissions per this Order, the parties may not simply cut and paste, or incorporate
by reference, the contents of Kraly’s and Cuozzo’s (very lengthy) reports into their supplemental
briefs.
5.

The parties’ principal briefs may not exceed fifty double-spaced pages. The

defendants’ reply brief may not exceed twenty double-spaced pages.
So ordered.
/s/ James G. Carr
Sr. U.S. District Judge

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