Lennar Homes of Texas Sales and Marketing LTD v. Perry Homes, LLC
Filing
87
MEMORANDUM OPINION AND ORDER granting 22 MOTION for Summary Judgment , granting 84 Motion for Leave and Response to Perry's Supplemental Brief, denying as moot 30 MOTION to Strike Attorneys' Fees Experts, denying as moot 40 MOTION to Exclude Testimony of Plaintiff's Designated Expert Leonard R. Bachman. (Signed by Judge Sim Lake) Parties notified. (aboyd, 4)
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
LENNAR HOMES OF TEXAS SALES
AND MARKETING, LTD.,
§
§
§
§
§
§
§
§
§
§
Plaintiff,
v.
PERRY HOMES, LLC,
Defendant.
CIVIL ACTION NO. H-14-1094
MEMORANDUM OPINION AND ORDER
Plaintiff Lennar Homes of Texas Sales and Marketing,
Ltd.
("Lennar") brought this copyright action against Perry Homes, LLC
("Perry") alleging that two of Perry's townhome designs infringe on
Lennar's
copyrighted
works.
Pending
before
the
court
Defendant's Motion for Summary Judgment (Docket Entry No. 22).
is
For
the reasons stated below, Defendant's Motion for Summary Judgment
will be granted, and this action will be dismissed.
I .
Background
Lennar and Perry are competing homebuilders.
contracted to build townhomes
in Phase I
development in the Woodlands, Texas. 1
In 2013 Lennar
of Creekside Park,
a
Lennar built two models of
townhomes in Phase I, the Burgundy and the Bordeaux. 2
Each model
IDeclaration of Sam Teuton, Exhibit 4 to Plaintiff's Response
to
Defendant's
Motion
for
Summary
Judgment
("Plaintiff's
Response"), Docket Entry No. 34-1, p. 131 • 6.
was a modified version of an earlier Lennar design.3
In July of
2013 The Woodlands put lots in Phase II of Creekside Park up for
bid. 4
Homebuilders had two weeks to submit their bids, including
proposed
floor
plans
and
elevations. 5
Perry
did
not
have
preexisting townhome designs that fit the developer's criteria. 6
Perry therefore prepared new designs, including the Perry 2249 and
the Perry 2255, to submit with its bid. 7
were
due,
Perry's
architect
visited
Five days before the bids
Lennar's
townhomes
under
construction in Phase I and reviewed floor plans of the Burgundy
and Bordeaux obtained from Lennar's salespeople. s
its plans, won the bid, and began construction.
Perry submitted
Lennar claims that
Perry's 2249 and 2255 are infringing copies of the Burgundy and
Bordeaux.
Lennar registered its designs with the Copyright Office,
and this litigation ensued.
3S ee id. at 129-131
~~ 3-5.
4See e-mail from Sue Dornbos, The Woodlands (July 9, 2013),
Exhibit 5 to Plaintiff's Response, Docket Entry No.
34-1,
pp. 133-34; The Woodlands Lot Opportunity, Exhibit 6 to Plaintiff's
Response, Docket Entry No. 34-1, p. 136; Deposition of William
Robert "Billy" Shirley ("Shirley Deposition"), Exhibit 1 to
Plaintiff's Response, Docket Entry No. 34-1, pp. 18-19.
5Shirley Deposition, Exhibit 1 to Plaintiff's Response, Docket
Entry No. 34-1, pp. 18-19.
6Id. at 21.
7Id.
SId. at 39-40; Perry's Answers to Lennar's First Set of
Interrogatories ("Perry's Answers to Interrogatories"), Exhibit 18
to Plaintiff's Response, Docket Entry No. 34-2, pp. 22-23.
-2-
II.
Motion for Summary Judgment
Perry has moved for summary judgment on mUltiple grounds.
Primarily, Perry argues that Lennar's copyrights in the Burgundy
and Bordeaux designs
are
invalid,
that
any
similarity between
Lennar's designs and Perry's is the fortuitous result of market
conditions and developer's requirements, and that the elements of
Lennar's designs
that
Perry is alleged to have copied are not
protectable as a matter of law.
Perry's invalidity arguments lack
merit, and there is sufficient evidence in the record to raise a
fact issue as to whether Perry copied Lennar's plans.
even assuming that Perry copied Lennar's plans,
However,
any elements it
copied were unprotectable as a matter of law, and Perry is entitled
to summary judgment on Lennar's infringement claims.
A.
Standard of Review
Summary judgment is appropriate if the movant establishes that
there is no genuine dispute about any material fact and the movant
is entitled to judgment as a matter of law.
Fed. R. Civ. P. 56(a).
Disputes about material facts are genuine "if the evidence is such
that a reasonable jury could return a verdict for the nonmoving
party."
Anderson v.
Liberty Lobby,
Inc.,
106 S. Ct. 2505,
2510
(1986) .
The moving party is entitled to judgment as a matter of
law if "the nonmoving party has failed to make a sufficient showing
on an essential element of her case with respect to which she has
-3-
the burden of proof."
Celotex Corp. v. Catrett, 106 S. Ct. 2548,
2552 (1986).
A party moving for summary judgment "must
'demonstrate the
absence of a genuine issue of material fact,' but need not negate
the elements of the nonmovant' s case."
37 F.3d 1069, 1075 (5th Cir. 1994)
Little v. Liquid Air Corp. ,
(en banc)
(per curiam)
(quoting
"If the moving party fails to meet
Celotex, 106 S. Ct. at 2553).
this initial burden, the motion must be denied, regardless of the
nonmovant's response."
this burden,
rd.
If, however, the moving party meets
"the nonmovant must go beyond the pleadings"
and
produce evidence that specific facts exist over which there is a
genuine
issue
2553-54).
for
trial.
Id.
(citing Celotex,
106 S.
Ct.
at
The nonmovant "must do more than simply show that there
is some metaphysical doubt as to the material facts."
Matsushita
Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 106 S. Ct. 1348, 1356
(1986) .
"In
order
to
avoid
summary
judgment,
the
nonmovant
must
identify specific facts within the record that demonstrate the
existence of a genuine issue of material fact."Ca,
Min. Co., L.P., 565 F.3d 268, 273 (5th Cir. 2009)
also
articulate
the precise manner
in which
Inc. v. TXU
"The party must
the
identified evidence supports his or her claim. . . .
submitted or
When evidence
exists in the summary judgment record but the nonmovant fails even
to refer to it in the response to the motion for summary judgment,
-4-
that evidence is not properly before the district court."
Id.
(internal quotation marks and citation omitted) .
In reviewing the evidence "the court must draw all reasonable
inferences in favor of the nonmoving party, and it may not make
credibility determinations
or weigh the
Sanderson Plumbing Prods.,
Inc.,
120 S.
evidence."
Ct.
2097,
Reeves v.
2110
(2000).
Factual controversies are to be resolved in favor of the nonmovant,
"but only when there is an actual controversy, that is, when both
parties have submitted evidence of contradictory facts."
Little,
37 F.3d at 1075.
B.
Analysis
Under the Copyright Act,
"original works
of authorship fixed
17 U.S.C.
expression."
copyright protection subsists in
§
102 (a) .
in any tangible medium of
An architectural work is an
original work of authorship,
§
various
building,
media
drawings."
§
including
101.
"a
102(a) (8), and may be embodied in
architectural
plans,
or
The holder of a copyright in an architectural
work has the exclusive right to reproduce the work.
§
106.
Anyone
who violates that exclusive right is an infringer of the copyright
of the author, and the legal or beneficial owner of the exclusive
right is entitled to sue for infringement.
§
501 (a) - (b) .
"To establish copyright infringement, a plaintiff must prove
[1] ownership of a valid copyright and [2] copying of constituent
elements
of
the
work
that
are
-5-
copyrightable.
II
Engineering
Dynamics,
Inc. v.
(5th Cir. 1994)
first
supplemented,
element,
"compliance
26 F.3d 1335, 1340
(5th Cir.
is shown by
1995).
(a)
The
"proof of
copyrightability in the work as a whole"
with
applicable
statutory
"To establish actionable copying
plaintiff must prove:
similarity.
Inc.,
46 F.3d 408
copyright ownership,
originality and
(b)
Structural Software,
[a]
(i. e.,
factual
formalities."
and
Id.
the second element),
copying
and
[b]
a
substantial
Positive Black Talk Inc. v. Cash Money Records, Inc.,
394 F.3d 357, 367 (5th Cir. 2004), abrogated on other grounds by
Reed Elsevier, Inc. v. Muchnick, 130 S. Ct. 1237 (2010).
Factual
copying may be established by direct evidence of copying, or it may
be
inferred
"probative
from proof
similarity"
of
access
between
to
the
the
two
copyrighted work and
works.
Id.
at
368.
Substantial similarity is established by proof that the defendant's
copying was legally actionable, i.e., that the defendant's work is
substantially similar to protectable aspects of the original.
Nola Spice Designs, L.L.C. v. Haydel Enterprises,
See
Inc., 783 F.3d
527, 550 (5th Cir. 2015).
1.
Ownership of Valid Copyright
"'To establish "ownership," the plaintiff must prove that the
material is original, that it can be copyrighted, and that he has
complied with statutory formalities.'"
M3
Technology,
(unpublished)
Inc.,
(quoting
569
F.
App'x
Lakedreams
-6-
Aspen Technology, Inc. v.
259,
v.
268
Taylor,
(5th
Cir.
2014)
932
F. 2d
1103,
1107-0B (5th Cir. 1991)).
I
In order to bring an infringement action
a party must first register its work with the Copyright Office.
17 U.S.C.
§
"A certificate of registration,
411(a)
if timely
obtained, is prima facie evidence both that a copyright is valid
and that the registrant owns the copyright."
General Universal
Systems,
(5th
see
§
Inc.
v.
410(c).9
that
a
Lee,
379
F.3d
131,
141
Cir.
2004)
i
"However, the presumption of validity and ownership
certificate
of
Interplan Architects,
2010 WL 4366990
1
registration
Inc. v.
creates
C.L. Thomas,
is
rebuttable."
Inc.,
No. H-OB-31B11
at *24 (S.D. Tex. Oct. 27, 2010).
"The effect of
such a certificate is to place the burden of proof on the alleged
infringer
to
disprove
the
validity
of
the
copyright."
(internal quotation marks and citation omitted).
argues
that
Id.
Because Perry
Lennar's non-compliance with statutory formalities
invalidates Lennar1s copyright certificates, the court will first
address that issue and then turn to the issues of originality and
copyrightability.
(a)
Compliance with Statutory Formalities
Perry argues that Lennar's copyright is invalid because the
Burgundy and Bordeaux are derivative works -- based on preexisting
Lennar designs -- and that Lennar failed to disclose that fact to
90 nce registered
"the certificate
before or within five years after first
shall constitute prima facie evidence
copyright and of the facts stated in the
l
-7-
of a registration made
publication of the work
of the validity of the
certificate." § 410(c).
"Accordingly," Perry contends,
the Copyright Office.
"the Court
should decline to enforce the copyright without even looking to the
disputed
plans. ,,10
disentangle,
Perry's
threshold issues:
nature
of
Although
Motion
its
for
arguments
Summary
are
Judgment
difficult
raises
three
(i) whether failure to disclose the derivative
the Burgundy and Bordeaux designs
invalidates
registrations; (ii) whether the court is required under
§
obtain an
as
opinion
to
from
the
Register
of
Copyrights
materiality of Lennar's failure to disclosei ll and
their
411(2) to
(iii)
to
the
whether
registration of a derivative work is sufficient to bring suit on
the entire design, or only those elements that are new and unique
to the derivative work.
(i)
Lennar's registrations appear valid.
"A plaintiff complies with statutory formalities of copyright
registration by submitting a complete application for registration,
fee,
and
deposit
to
the
Copyright
Office."
Interplan,
2010
WL 4366990, at *24 (citing Geoscan, Inc. v. Geotrace Technologies,
Inc., 226 F.3d 387, 393 (5th Cir. 2000)).
However, "[c]ourts may
find a registration invalid if the copyright claimant willfully
10Defendant's Motion for Summary Judgment, Docket Entry No. 22,
p. 16 ~ 27.
llperry has not argued this issue, but as discussed in Section
B(l) (a) (ii) below, courts are required to obtain an opinion from
the Copyright Office when a defendant alleges a failure to disclose
information in a copyright application.
-8-
misstated or failed to state a fact that,
if known,
might have
caused the Copyright Office to reject the copyright application."
Berg v. Symons, 393 F. Supp. 2d 525, 542 (S.D. Tex. 2005)
i
see also
Lenert v. Duck Head Apparel Co. Inc., 99 F.3d 1136 (5th Cir. 1996)
(unpublished).
"There must be a showing of 'scienter' in order to
invalidate a copyright registration."
at
*24
(citing
Sanderson,
573
St.
Luke'S
F.3d 1186,
Interplan, 2010 WL 4366990,
& Laser
Cataract
1201
(11th Cir.
Inst.,
2009)).
P.A.
"[A]
seeking to prove fraud on the Copyright Office bears a
burden' in this regard."
on
Copyright,
Nimmer).
§
Melville B. Nimmer
7.20 [B] [1],
at
&
7-212.4 (5)
v.
party
'heavy
David Nimmer, Nimmer
(2015)
(hereinafter
Even if the inaccuracy was known, "plaintiff's failure to
inform the Copyright Office of given facts is without substance[]
to the extent that the Office would have registered the subject
work even had it known those facts."
Id.
Congress codified this court-made standard as part of the
Prioritizing Resources and Organization for Intellectual Property
Act of 2008
2 0 08 ,
Pub.
(the "PRO IP Act amendments").
L.
11 0 - 4 03 ,
revised statute,
bring suit
Sec.
1 (a),
12 2
See Act of Oct. 13,
S t at .
42 5 6 .
Under the
a certificate of registration is sufficient to
"regardless of whether
information," unless
(1)
[it]
contains any inaccurate
the registrant included the inaccurate
information "with knowledge that it was inaccurate" and (2)
inaccuracy of the information,
if known,
-9-
"the
would have caused the
Register
§
of
Copyrights
to
refuse
registration."
17
U.S.C.
411 (b) (1) . 12
Perry argues that the Burgundy and Bordeaux are derivative
works as defined in
§
101 and that Lennar failed to disclose this
Section 409 prescribes the
information to the Copyright Office.
information that must be included in an application for copyright
registration.
In the case of a derivative work, the applicant must
include Uan identification of any preexisting work or works that
[the derivative work]
general
statement
copyright
of
claim being
is based on or incorporates,
the
additional
registered."
material
§
and a brief,
covered
by
Section
409(9).
the
6
of
copyright application Form VA requires applicants to identify any
preexisting works upon which the derivative work is based and to
describe the material that has been added.13
The Copyright Act defines uderivative work" as Ua work based
upon one or more preexisting works,
[including any] form in which
a work may be recast, transformed, or adapted."
consisting of editorial revisions,
annotations,
§
101.
UA work
elaborations, or
12An en banc maj ori ty of the Federal Circuit has construed
§ 411 (b) (1), albeit in dicta, as requiring U'but-for' materiality"
to invalidate a federal registration of copyright. See Therasense!
Inc. v. Becton, Dickinson and Co., 649 F.3d 1276, 1295 (Fed. Cir.
2011) .
l3S ee Form VA, Supplemental Exhibit B to Perry's Supplement to
its Motion for Summary Judgment ("Perry's Supplement"), Docket
Entry No. 28-2, pp. 3, 5.
-10-
other modifications which, as a whole, represent an original work
of authorship, is a 'derivative work'."
According
to
Lennar,
Id.
Burgundy
the
Bordeaux
and
are
substantially modified versions of pre-existing Lennar designs used
The Burgundy and Bordeaux would
in various forms since 1998. l4
therefore
appear
to be
derivative works
as
defined
In
§
101.
Lennar argues that because it owns the preexisting designs on which
the Burgundy and Bordeaux are based,
the Burgundy and Bordeaux
"are not derivative works under the Copyright Act.
not
persuaded.
The
fact
that
Lennar
may
"IS
own
The court is
the
underlying
material is important to the scope of Lennar's copyright in the
Burgundy and Bordeaux designs .16
However, it does not mean that the
Burgundy and Bordeaux are not
"derivative works"
§
101.
as defined in
Lennar points to no provision of the Copyright Act that
creates such an exception.
Lennar cites a Fourth Circuit case that
is factually analogous and appears, at first glance, to support its
position.
See Christopher Phelps
&
Assocs.
I
LLC v.
Galloway,
14See Plaintiff's Response, Docket Entry No. 34, pp. 8-11.
15Id. at 17.
16See § 103 (b) ("The copyright in a compilation or derivative
work extends only to the material contributed by the author of such
work, as distinguished from the preexisting material employed in
the work, and does not imply any exclusive right in the preexisting
material. The copyright in such work is independent of, and does
not affect or enlarge the scope,
duration,
ownership,
or
subsistence of, any copyright protection in the preexisting
material.") .
-11-
492 F.3d 532, 538 (4th Cir. 2007)
("The Bridgeford Residence [based
on plaintiff's preexisting designs]
defined in the Copyright Act").
Galloway
is
broader
than
was not a derivative work as
However, the quoted language from
the
actual
holding
in
that
case.
Specifically, the court in Galloway held that because the plaintiff
owned the underlying work,
its copyright extended to the entire
design, not just the newly added material.
See id. at 539.
would therefore appear that the quoted language refers to
103,
§
which defines the scope of protection in a derivative work,
§
101, which defines the term "derivative work."
(citing
§
not
See id. at 538
103 and stating that its limitations do not apply "when
the author of the derivative work also has a
underlying
It
work"
(emphasis
added)).
Lennar
copyright on the
cites
no
other
authority for the proposition that the Burgundy and Bordeaux are
not derivative works as defined in
§
101,
and the court is not
aware of any. 17
Lennar also points to cases concluding that the disclosure
requirement in
§
409(9)
does not apply where the registrant owns
both the underlying work and the derivative work. 18
See Frank Betz
Associates, Inc. v. J.O. Clark Const.! L.L.C., No. 3:08-CV-00159,
17Furthermore, the substantial case law addressing registration
requirements when the owner of a derivative work also owns the
underlying material would be nonsensical if such works were not in
fact "derivative works." See infra section II (B) (1) (a) (iii)
18Plaintiff's Response, Docket Entry No. 34, p. 17.
-12-
2010 WL 2253541,
raised by
design
§
409(9)
(M.D.
Tenn.
May 30,
2010)
("The issue
is whether and to what extent the derivative
incorporates
Dorchen/Martin
No.
at *11
elements
Associates,
designed
Inc.
v.
11-10561, 2012 WL 4867608, at *5
by
Brook
someone
of
else. ")
Cheboygan,
i
Inc.,
(E.D. Mich. Oct. 15, 2012)
("Where the evidence indicates that Plaintiff created derivative
designs based on its own original designs,
§
409 (9)
raises
are
not
\ the concerns that
(quoting
implicated. '"
Frank
Betz
Associates, 2010 WL 2253541, at *11)).
However, as one commentator has observed, "courts confuse the
disclosure requirements of Space 6 with originality or infringement
issues,
or worse,
Copyright
§
with both.
17:112 (2015).
II
5 William F.
Patry,
Patry on
Even if the registrant owns both the
derivative work and the underlying work,
§
409(9)
still requires
disclosure:
The Copyright Office forms and instructions contain no
such exception, and such an exception would make no sense
from a policy standpoint. The purpose of disclosure on
Space 6 is twofold: to permit the Copyright Office to
determine whether the new material is sufficient to
support the derivative registration, and to place on the
public record a clean separation of the original,
preexisting work from the derivative work so that
copyright in the original work is not impermissibly
extended through successive registrations for undisclosed
variations.
In fact, contrary to [cases holding that a
common owner need not disclose prior works], this latter
policy is particularly undermined by a common owner.
Accordingly, [such cases] should not be followed.
-13-
The court concludes that the Burgundy and Bordeaux designs are
derivative works as defined in
§
101 and that
required disclosure of that fact.
and
Bordeaux
designs
before
§
409 and Space 6
Lennar registered the Burgundy
bringing
this
action. 19
It
is
undisputed that Lennar did not identify the Burgundy and Bordeaux
as derivative works in its applications to the Copyright Office. 20
These applications therefore contained inaccurate information.
Nevertheless,
even if Lennar was required to disclose the
derivative nature of its designs -- and even assuming its failure
to do so was knowing - immaterial.
any such failure appears to have been
"In general, failure to disclose that the registered
work is derivative of an earlier, underlying work should occasion
rejection of the registration certificate only if the claimant was
for
some
Ni mme r
§
reason
ineligible
7. 2 0 [B) [1],
at
to
register
7 - 2 12 . 4 (8) (a) . 21
the
As
derivative
work.
discussed
in the
/I
19See Certificate of Registration No. VA 1-893-104, Burgundy
Townhome Design, Exhibit A to Second Amended Complaint, Docket
Entry No. 17-1, pp. 1-2; Supplementary Certificate of Registration
No. VA 1-433-693, Burgundy Townhome Design, Exhibit B to Second
Amended Complaint, Docket Entry No. 17-1, pp. 3-4; Certificate of
Registration No. VA 1-893-105, Bordeaux Townhome Design, Exhibit C
to Second Amended Complaint, Docket Entry No. 17-1, pp .5-6;
Supplementary Certificate of Registration No. VA 1-433-694,
Bordeaux Townhome Design, Exhibit D to Second Amended Complaint,
Docket Entry No. 17-1, pp. 7-8.
20See Plaintiff's Response, Docket Entry No. 34, pp. 17-20;
Applications, Supplemental Exhibit F to Perry's Supplement, Docket
Entry No. 28-6, pp. 4-7.
210ther authority Lennar cites for the proposition that its
(continued ... )
-14-
following subsection, there is sufficient evidence to raise a fact
question as to whether Lennar owned the pre-existing works on which
the Burgundy and Bordeaux designs were based.
Perry offers no
evidence that Lennar did not author the underlying works and no
authority to suggest that the Copyright Office would have refused
to register the Burgundy and Bordeaux designs had it known that
they were based in part on Lennar's own preexisting material. 22
21 ( ... continued)
works are not
derivative
in fact
supports
this narrower
proposition.
See Cannon Group, Inc. v. Better Bags, Inc., 250
F. Supp. 2d 893, 899 (S.D. Ohio 2003) ("[B]ecause the copyright in
a derivative work is independent from the copyright for preexisting
work, the copyright office would have nevertheless granted BBI's
registration.") .
22Because Perry's cited authorities all involve works that
incorporated preexisting material owned by someone other than the
registrant, they address originality concerns not raised in this
case. See Lenert, 99 F.3d at *3-*4 ("[T]he omission of the work's
derivative nature deprives the Copyright Office of the opportunity
fully to evaluate the application; and the derivative work is
protected only to the extent of the new material contained in the
derivative work."); GB Mktg. USA Inc. v. Gerolsteiner Brunnen
GmbH & Co., 782 F. Supp. 763, 774 (W.D.N.Y. 1991) ("The rationale
behind this rule is simple: although the court would ordinarily
defer to the judgment of the Copyright Office when the question of
originality is a close one, that is impossible to do when the
Copyright Office has not had a fair opportunity to pass on the
question .
.
Russ Berrie & Co., Inc. v. Jerry Elsner Co.,
Inc., 482 F. Supp. 980, 988 (S. D.N. Y. 1980) ("Where as here the
question of originality is a close one, a decision to grant or deny
protection made in the first instance by the [Copyright Office]
would have been highly persuasive .
, however the Copyright
Office had no opportunity to pass on plaintiff's claim accurately
presented./I) .
/I ) ;
-15-
Therefore, Perry's fraud on the Copyright Office argument appears
to lack merit. 23
(ii)
Section 411 (b) (2) mandates referral of the
materiality question to the Register of
Copyrights; however, the issue is moot.
When Congress amended the Copyright Act in 2008 to include
specific grounds for invalidation of a registration in
it also added
§
§
411 (b) (1) ,
411 (b) (2), which states:
In any case in which inaccurate information described
under paragraph (1) is alleged, the court shall request
the Register of Copyrights to advise the court whether
the inaccurate information, if known, would have caused
the Register of Copyrights to refuse registration.
Perry has not identified -- and the court is not aware of -any reason that the Copyright Office would decline to register
Lennar's
designs
Nevertheless,
had
referral
it
of
known
of
the
issue
their
does
derivative
not
appear
nature.
to
be
23The knowledge and but-for causation requirements codified in
411 (b) apply only to invalidation with respect to "institution of
and remedies in infringement actions under [section 411] and
section 412." See § 411 (b) (3) i id. (" [A] certificate of registration satisfies the requirements of [section 411] and section 412,
regardless of whether the certificate contains any inaccurate
information . . . "). Accordingly, a "tight reading" of the revised
§ 411 preserves prior case law applying a more liberal standard to
section 410 (c), which governs the prima facie presumption of
validity accorded a
certificate of registration.
Nimmer,
§ 7.20[B] [1], at 7-212.4(5) nn.25.2, 25.3; Therasense, 649 F.3d at
1316 n.4 (Bryson, J., dissenting). Therefore, with respect to the
presumption of validity, Perry could argue that it need only show
that Lennar's omission "might" have caused the Copyright Office to
reject Lennar's application. The court need not address the issue
in detail, however, as Perry has failed to satisfy even this more
liberal standard.
§
-16-
discretionary.
§
In the only appellate decision that has addressed
411(b) (2) in depth, the Seventh Circuit held that a court "must
request a response from the Register before coming to a conclusion
as
to
the
materiality
DeliverMed Holdings,
(7th Cir. 2013).
however.
LLC
of
a
particular
v.
Schaltenbrand,
misrepresentation."
734
F.3d
616,
624
The court's holding was not without reservation,
"Given its obvious potential for abuse, we must strongly
caution both courts and litigants to be wary of using this device
in the future."
ld. at 625.
Before a court refers a case to the
Copyright Office, the party seeking invalidation should demonstrate
that
"(1)
information;
the
registration
and
(2)
the
application
registrant
included
knowingly
inaccurate
included
inaccuracy in his submission to the Copyright Office."
the
ld.
Because the court ultimately concludes that summary judgment
should be granted on the issue of substantial similarity, it need
not further address the referral issue.
Nevertheless, it would be
prudent for Lennar to file supplemental registrations, identifying
the Burgundy and Bordeaux designs as derivative works and providing
all other information required under
§
409(9) and the application
form.
(iii)
Registration of the Burgundy and Bordeaux
designs is sufficient to bring suit on
elements shared with underlying works.
Although copyright registration is a prerequisite to suit for
infringement, copyright ownership inheres automatically at the time
-17-
of creation.
v.
§§
Nation
See
§§
102(a), 408(a); Harper & Row Publishers, Inc.
Enterprises,
716 [A] [1],
105
S.
Ct.
2218,
2223
(1985);
Nimmer
Where the owner of a derivative work also
[B] [1]
owns the underlying work on which the derivative work is based,
registration of the derivative work alone is sufficient to bring
sui t
for
Galloway,
registered
infringement
492
F.3d
the
of
at
elements
539
Bridgeford
contained
("While
Residence
Phelps
design,
in
& Associates
that
satisfied the prerequisite for suit under 17 U.S.C.
entire design,
~,
both.
only
registration
411 for the
§
even though some of it was created earlier in the
form of the Bell and Brown Residence design."); Aspen Tech., 569
F. App'x at 269
("This position has been recognized by at least
five circuits and by district courts in two others."
omitted) );
also
id.
accord
at
n.332
Patry
§
17: 89;
(" [However,]
Nimmer
[t] he
§
(citations
7.16 [B] [5] [c];
assumption
is
that
see
the
derivative work that is registered embodies all the features of the
underlying work on which suit is premised.") . 24
24Some case law suggests that disclosure of the preexisting
works may be required to proceed based on a single registration.
See, e.g., Oravec v. Sunny Isles Luxury Ventures, L.C., 527 F.3d
1218, 1230 (11th Cir. 2008). Because Perry argues that registration of a derivative work is never sufficient to sue on the
underlying material, it has not raised this more nuanced argument.
Nevertheless, it is not clear that such a rule should apply in this
case, and if Lennar were to file supplemental registrations, that
could resolve the matter.
-18-
Perry refers to this as a
~bizarre
'register all the plans at
once' theory,,,25 but cites no genuinely contrary authority.
argues that Lennar should
Perry
be able to bring suit upon the
~only
protected elements of the derivatives; i.e., those few new elements
that are original to the Burgundy and Bordeaux designs and not
contained in the prior works.
Perry provides quotes that appear
,,26
to support its position,27 but the quotes are either taken out of
context, see 1 Howard B. Abrams, The Law of Copyright
§
10:18, or
dicta from a distinguishable unpublished Fourth Circuit per curiam
opinion issued twenty years ago, see Cramer v. Crestar Financial
Corp., 67 F.3d 294, at *4 (4th Cir. 1995).
The one Fifth Circuit
case Perry cites is entirely reconcilable with the established
rule.
(5th
See Creations Unlimited, Inc. v. McCain, 112 F.3d 814, 816
Cir.
1997)
(holding
that
district
court
did
not
err
in
comparing infringing work to plaintiff's registered line drawings
because
plaintiff's
registered
line
"Copyright
Act
separately
from
t-shirts
drawings
requires
the
presumably
were
authors
originals, ,,28
not
to
derivative
registered).
register
does
not
of
the
That
the
derivative
bar
a
works
common-owner
25Perry's Reply in Support of Its Motion for Summary Judgment
Reply"), Docket Entry No. 41, p. 11 • 19.
(~Perry's
26Id. at 8 • 13.
27See id . •• 12-13.
28Id.
at 7 n.10.
-19-
plaintiff
from
contained in a
suing
on
elements
of
unregistered
registered derivative work.
~,
originals
Murray Hill
Publications, Inc. v. ABC Communications, Inc., 264 F.3d 622, 632
(6th Cir. 2001), abrogated on other grounds by Reed Elsevier, Inc.
v. Muchnick, 130 S. Ct. 1237 (2010)
("Because a derivative work is
cumulative of the earlier work, it is logical that the registration
of the derivative work would relate back to include the original
work, while registration of the original material would not carry
forward to new, derivative material.") .29
Though unpublished, the
Fifth Circuit's opinion in Aspen Tech., 569 F. App'x at 269, which
Perry fails
to cite,
is on point and directly refutes Perry's
posi tion. 30
The president of Lennar's Houston Division, Donald A. Luke,
testified that the Burgundy and Bordeaux designs are the fourth
iteration of a townhouse Lennar independently designed and has been
building for approximately fifteen years. 31
Lennar did not register
29Compare Nimmer §
7.16 [BJ [5J [bJ,
Registration Only of
Underlying Work, with id. § 7.16 [B] [5J [cJ, Registration Only of
Derivative or Collective Work.
30After expending substantial effort reviewing the relevant
authorities and finding that they overwhelmingly support Lennar's
position, the court views Perry's argument as bordering on
frivolous.
310ral and Videotaped Deposition of Donald A. Luke ("Luke
Deposition"), Exhibit H to Defendant's Motion for Summary Judgment,
Docket Entry No 22-1, pp. 176-82.
-20-
any of the preexisting design iterations. 32
However,
register the Burgundy and Bordeaux designs. 33
Lennar therefore has
satisfied
§
Lennar did
411(a) 's registration requirement with respect to the
entire Burgundy and Bordeaux designs,
including those elements
derived from Lennar's own preexisting works.
Independent of the registration-as-precondition-to-suit issue,
Perry argues that Lennar is barred from enforcing its copyrights in
the preexisting material simply because Lennar incorporated that
material into derivative works. 34
See Galloway,
Perry is wrong.
492 F.3d at 538-39 (holding that trial court erred in instructing
jury that scope of common owner's copyright consisted only of the
minimal
difference
between underlying and deri vati ve
Perry cites no authority that would support
such a
designs).
rule,
and,
absent evidence of invalid copyright in the underlying work, such
a rule would be nonsensical as a policy matter.
32Declaration of Robert P. Nicks, Exhibit B to Plaintiff's
Motion for Protective Order, Docket Entry No. 26-1, p. 8 , 8.
33Id. at 7 , 6.
34See Defendant's Motion for Summary Judgment
Docket Entry
No. 22, p. 16 ("What remains of Lennar's copyrights to the Burgundy
and Bordeaux are trivial, unprotectable chanqes in design."
(emphasis added) ) ; Defendant's Additional Briefing on Non- Protected
Elements, Docket Entry No. 72, p. 9 n. 13 ("Of course, Perry
contends that only those changes made to the derivative work are
even possibly protected by copyright
. ") .
The court's
analysis of this argument overlaps significantly with the
registration issue, so much so that it may be superfluous, but
given implications for the substantial similarity analysis below,
the court will address it explicitly.
I
-21-
It is true that the copyright in a derivative work "extends
only to the material contributed by the author of such work,
as
distinguished from the preexisting material employed in the work,"
§
103 (b) .
This limitation stems from the "fundamental principal
that only that which is original with the copyright proprietor or
his assignor may be protected by his copyright."
at 3 - 2 2 . 10
"does
not
(1)
.35
However,
affect"
the
Nimmer, 3.04[A],
the copyright in the derivative work
ownership
or
subsistence
protection in the preexisting material.
§
of
103 (b)
copyright
Therefore,
" [a] ny elements that the author of the derivative work borrowed
. remain protected by the copyrights
from the underlying work
in the underlying work."
11 F.3d 1106,
3-34.30 n.2.1.
1112
Gamma Audio & Video,
(1st Cir.
Thus,
1993);
even if the
Inc. v. Ean-Chea,
accord Nimmer,
§
3.05,
at
infringer copies underlying
material only from the derivative work, the copyright owner of the
underlying material has a cause of action against the infringer.
Montgomery v. Noga, 168 F.3d 1282, 1292-93 (11th Cir. 1999); accord
Nimmer
§
3.05,
at
3-34.31;
cf.
Richmond Homes Mgmt.,
Inc.
v.
35Thus, copyright in a deri vati ve work "does not imply any
exclusive right in the preexisting material," § 103(b). That is to
say, the owner of a derivative-work copyright does not by virtue of
that copyright alone acquire rights in the underlying works.
Likewise, the copyright in a derivative work does not "enlarge the
scope, duration, ownership, or subsistence of, any copyright
protection in the preexisting material." Id. "Thus, the copyright
owner of the underlying work does not as such become the copyright
owner of the material added in a [derivative] work incorporating
such underlying work." Nimmer, § 3.04 [A], at 3-22.9 n.4.
-22-
Raintree, Inc., 66 F.3d 316
assert
the
solely
on
[underlying]
the
preexisting
(quoting
purposes
§
103(b))).
of
copyright,
aspects
material
of
it
Louisa
in
the
may
("Because RHMI cannot
claim damages
\ distinguished
work.'"
based
from
(emphasis
the
added)
A contrary rule would frustrate the central
intellectual
or
the
employed
innovation and the arts,
creating
(4th Cir. 1995)
licensing
property law,
i. e.,
the
promotion of
because authors would be deterred from
derivative
works
protection in their existing material.
for
fear
of
losing
Assuming Lennar is the
copyright owner of the underlying material incorporated into the
Burgundy and Bordeaux designs, Lennar may enforce its copyright in
that underlying material against a party that copies it from the
derivative designs.
In a last ditch effort, Perry argues that even if Lennar is
also entitled to sue on elements of the underlying works,
"Lennar
has not produced any tangible evidence that it actually owns the
original
[designs]
.,,36
Even though Donald Luke testified that he
was personally involved in the design process over the course of
fifteen years
and
that
each
iteration of
the
design was
done
entirely in-house, 37 Perry argues that "Lennar must provide more
36Perry's Reply, Docket Entry No. 41, pp. 9-10.
37See, e.g. Luke Deposition, Exhibit H to Defendant's Motion
for Summary Judgment, Docket Entry No 22-1, p. 182 ("Q: We're on
the fourth [iteration]. A: Sure. Q: I was just making sure I have
all the iterations. A: They are, but they all come from -- from my
(continued ... )
-23-
than the word of one of its employees to create a jury question. ,,38
The
court
is
not
persuaded.
Perry's
cited
authority
is
distinguishable,39 and determining whether or not Luke's testimony
is to be credited is the role of a jury.
(b)
Originality and Copyrightability
Perry appears to concede that if registration of the Burgundy
and Bordeaux designs alone is sufficient to bring suit, the only
remaining validity issues are whether Lennar
in fact
owns the
underlying works, i.e., whether the prior iterations were original
to Lennar,4o and whether the works as a whole are copyrightable. 41
37 ( ... continued)
from my brain.") i id. ("Q: Okay. Were any
architects or designers involved in any of them?
the original one? A: Even the original.").
38Perry's Reply, Docket Entry No. 41, p. 9
~
any outside
A: No. Q: Even
15.
39See Psihoyos v. Pearson Educ., Inc., 855 F. Supp. 2d 103,
117-18 (S. D.N. Y. 2012) (granting summary judgment over non-movant' s
obj ections because "stray testimony" inconsistent with movant's
argument was merely "speculative evidence" insufficient to create
a genuine fact issue) i
Corwin v. Quinonez, 858 F. Supp. 2d 903,
911 (N.D. Ohio 2012)
(holding that conclusory allegations in
plaintiff's affidavit were insufficient to create fact issue where
allegations lent no support to factual assertions in the complaint
that were directly refuted by defendant's evidence).
40Perry's Reply, Docket Entry No. 41, pp. 9-10
~~
IS, 18-19.
41See generally Defendant's Motion for Summary Judgment, Docket
Entry No. 22, pp. 17-25 ("Lennar Cannot Own Layouts Dictated by
Functional Necessity"). Perry's originality arguments are intertwined with its arguments about the scope of Lennar's protection in
the Burgundy and Bordeaux designs.
The court will address
(continued ... )
-24-
"To qualify for copyright protection, a work must be original
to
the
author."
Feist
Publications,
Inc.
v.
Service Co., Inc., 111 S. Ct. 1282, 1287 (1991).
originality
is
low.
It
requires
independently created by the author
only
Rural
Telephone
The threshold for
"that
the
work
was
(as opposed to copied from
other works), and that it possesses at least some minimal degree of
creativity."
Id.
Novelty is not required.
Id.
"[T]he requisite
level of creativitiy is extremely low; even a slight amount will
suffice."
"Practically speaking,
because
the
degree
of
creativity required is so low, the originality requirement amounts
to 'little more than a prohibition of actual copying.'"
Axelrod &
ChervenyArchitects, P.C. v. Winmar Homes, No. 2:05-CV-711-ENV-ETB,
2007 WL 708798,
at *9
(E.D.N.Y.
March 6,2007)
(quoting Alfred
Bell & Co. v. Catalda Fine Arts, 191 F.2d 99, 103 (2d Cir. 1951)).
Nevertheless, "[t]here remains a narrow category of works in
which the creative spark is utterly lacking or so trivial as to be
virtually nonexistent."
Feist, 111 S. Ct. at 1294.
For example,
the Supreme Court in Feist held that the alphabetical arrangement
of names in a telephone directory was not sufficiently original
because arranging names alphabetically is an "age-old practice,
firmly rooted in tradition and so commonplace that it has come to
be expected as a matter of course."
Id. at 1297.
41 ( • • • continued)
originality for validity purposes separately
protection for substantial similarity purposes.
-25-
from
scope
of
Where the defendant challenges the originality of copyrighted
material, the presumption of validity will not be overcome unless
the defendant offers either (1) proof that the product was copied
from
other
works
originality."
or
(2)
"similarly
probative
evidence
as
to
Masquerade Novelty, Inc. v. Unique Industries, Inc.,
912 F.2d 663, 668-69 (3d Cir. 1990).
Perry presents no evidence that Lennar copied the Burgundy or
Bordeaux designs -- or the underlying material -- from other works
not owned by Lennar.
And Lennar presents unrebutted evidence that
all of the design work was done in-house by Lennar employees.
Even
if due to the unresolved registration issues in this case Lennar
were
not
entitled to
a
presumption of
validity regarding
the
underlying works, Lennar has presented sufficient evidence to raise
a fact issue as to whether it authored them.
Furthermore, apart
from the derivative work issues addressed above,
Office
had
an
opportunity to
pass
on
the
the Copyright
copyrightability of
Lennar's designs as a whole, and it issued registrations.
Although intertwined with the issue of substantial similarity
addressed below,
Perry's other arguments against originality and
copyrightability
raise
two
distinct
issues:
(i)
whether
the
changes embodied in the Burgundy and Bordeaux are sufficient to
copyright those designs, and (ii) whether the designs as a whole
are sufficiently original to copyright.
-26-
!
(i)
Originality is not limited to differences
between the derivative and underlying works.
Perry argues that the Burgundy and Bordeaux designs are not
sufficiently original because U[tlrivial changes to a derivative
work are not copyrightable. 1142
This argument is a red herring.
Perry persists in relying on the entirely unsupported proposition
that Lennar's enforceable copyright in the Burgundy and Bordeaux is
limited
to
the
differences
immediate predecessors.
those
designs
and
their
For the reasons discussed at length above,
Furthermore,
this is incorrect.
sense.
between
Perry's argument defies common
If, as Perry argues, the changes embodied in the Burgundy
and Bordeaux designs are too insignificant to distinguish those
designs
from
copyrighted
the
are
underlying
the
works,43
underlying
works
then
what
themselves.
Lennar
has
Making
all
reasonable inferences in favor of Lennar, the court assumes that
Lennar authored the underlying works on which the Burgundy and
Bordeaux designs are based, and the proper inquiry is whether the
designs
as
a
whole
are
sufficiently
original
to
be
accorded
copyright protection.
42Defendant's Motion for Summary Judgment, Docket Entry No. 22,
p. 6 ~ 3.
43See id. at 16-17.
-27-
!
(ii)
Despite any limitations imposed by market
demands or development criteria, there is
sufficient evidence to raise a fact question
on originality and copyrightabili ty of the
works as a whole.
Apart from its derivative-work related arguments, Perry raises
no
other
objections
explicit
copyrightability
of
Lennar's
to
plans
the
for
originality
validity
and
purposes. 44
Nevertheless, Perry argues obliquely that "the designs represented
the
only
way
to
design
a
townhouse
that
both
met
market
expectations and complied with the Creekside and The Woodlands'
rules governing the construction process. ,,45
" [s] ince
those
elements
cannot
be
Perry argues that
copyrighted,
Lennar
has
copyright on its designs for the Burgundy and Bordeaux. ,,46
no
The
substance of Perry's arguments on this point, however, addresses
only the scope of Lennar's copyright for substantial similarity
purposes. 47
To the
extent
Perry argues
that
the
Burgundy and
Bordeaux designs are not original or copyrightable because the
layouts were dictated by functional demands, Perry does not cite a
single case finding a copyright invalid on these grounds.
44See, e.g., id. at 17 ~ 31 ("Putting aside Lennar's copyright
problems . . . . "); Perry's Reply, Docket Entry No. 41, p. 10 ~ 16
("Based on the above, Lennar has not and cannot make out the prima
facie case of copyright ownership.
.") .
45Defendant's Motion for Summary Judgment, Docket Entry No. 22,
pp. 17-18 ~ 31.
46Id. at 25
~
48.
47See id. at 18-25.
-28-
Furthermore, Perry stresses elsewhere that there are "no fewer than
65 substantive differences" between Lennar's design and Perry's,
rendering them "profoundly different"
states
that
"[w)hile
the
designers
Perry
from one another. 48
of
Perry's
and
Lennar's
townhouses had almost no flexibility when it came [to] the layout
of the major features, they did have discretion with regard to the
details."49
If
that
is
the
case,
then
the
65
highlighted
differences are 65 ways in which Lennar's designs are original
despite the constraints imposed.
Perry has failed to rebut the
presumption of validity of Lennar1s designs.
Even if Lennar were
not entitled to a presumption of validitYI Perry has failed to make
a
sufficient
showing
on
summary
judgment
evidence in the record to create a
fact
1
as
there
is
ample
issue on originality.
Cf. Danze & Davis Architects, Inc. v. Legend Classic Homes, Ltd. 1
No. H-10-0216,
2011 WL 2940671
1
at *5
(S.D. Tex. July 19
1
2011)
(granting partial summary judgment to plaintiff on validity despite
similar arguments from defendant)
KB Home v. Antares Homes, Ltd. 1
i
No. 3-04-CV-1031-LI 2007 WL 1893370
1
at *7 (N.D. Tex. June 28, 2007)
(same); Axelrod & Cherveny, 2007 WL 708798, at *11 (same).
48 I d . at 7 ,
6
1
10 , 13.
49Id. at 10 , 13.
-29-
I
2.
To
Copying
prove
actionable
copying
a
plaintiff
must
make
two
"First, the plaintiff must, as a factual matter, prove
showings.
that the defendant actually used the copyrighted material to create
his own work."
131,
141
omitted).
General Universal Systems, Inc. v. Lee, 379 F.3d
(5th Cir.
2004)
(internal quotation marks and citation
"If the plaintiff demonstrates factual copying, he must
next demonstrate that the copying is legally actionable by showing
that the allegedly infringing work is substantially similar to
protectable
elements
comparison must
determine
of
be made
whether
a
the
between the
layman
'substantially similar.'"
(a)
infringed work. 50
would
original
view
the
A side-by-side
and the
two
copy to
works
as
Id.
Factual Copying
Factual copying is generally established by proof of (1) the
defendant's access to the plaintiff's work before creation of the
infringing work and (2) probative similarity between the two works.
Gen.
Universal,
379
F.3d
at
141-42.
"The
access
element
is
satisfied if the person who created the allegedly infringing work
had a reasonable opportunity to view the copyrighted work.
The
second element -- probative similarity -- requires a showing that
i
!
I
ii
SOAs between "protectable" and "protectible," the court prefers
the former, and it uses the latter only to maintain accurate
quotations.
-30-
the works,
when compared as a whole,
establish appropriation."
are adequately similar to
Id.
When comparing works "as a whole," the question is not whether
"the whole of the defendant's work largely replicates the allegedly
copied work," but rather "the jury must consider the whole of the
first
work
(including both copyrightable
and non-copyrightable
parts) and the whole of the second work and then compare the two
works,
looking
parts."
for
any
apart
argument. 51
from
explicitly address
factual
copying
a
in
summary of
single
sentence
the
in its
its
It is undisputed that Perry's employees had access
to Lennar's designs.
of
constituent
There is sufficient evidence to create a fact issue on
this element.
II
between their
Positive Black Talk, 394 F.3d at 370-71.
Perry does not
briefing
similarities
Creekside
While Perry was preparing its bid for Phase
Park,
a
Perry
employee
contacted
Lennar's
salespeople and obtained floor plans of the Burgundy and Bordeaux. 52
Those plans were circulated to Perry's architect,
day,
also
visited
and
photographed
Lennar's
who,
the same
townhomes
under
51See Defendant's Motion for Summary Judgment, Docket Entry No.
22, p. 12 , 16 (" [T] he evidence unequivocally demonstrates that
[Perry's architect] drew (by hand) Perry's allegedly infringing
designs onto 'butter paper' using an architect's scale before he
ever laid eyes on the designs of the Burgundy and Bordeaux
townhouses."). Perry does not cite any record evidence in support
of this proposition, and the remainder of its briefing addresses
only substantial similarity and validity-related arguments.
52~,
Shirley Deposition, Exhibit 1 to Plaintiff's Response,
Docket Entry No. 34-1, pp. 68-71.
-31-
construction. 53
During discovery Perry averred that its architect
completed a draft of the Perry designs on paper prior to reviewing
Lennar' s plans. 54
At his deposition Perry's architect could not
recall when he finished his paper drawings, but he believed it was
the
same
afternoon he visited Lennar's
Lennar's plans bye-mail. 55
a jury a question.
As to
townhomes
and
received
The credibility of Perry's evidence is
~probative
similarity," a cursory review
of the Lennar and Perry floor plans reveals numerous similarities
in layout and arrangement. 56
There is sufficient evidence in the
record to create a triable issue on factual copying.
(b)
~Not
Substantial Similarity
all copying, however, is copyright infringement."
III S. Ct. at 1289.
is
~To
legally actionable,
Feist,
determine whether an instance of copying
a
side-by-side
comparison must
be made
between the original and the copy to determine whether a layman
53~, Deposition of Charles Dickson (~Dickson Deposition"),
Exhibit 7 to Plaintiff's Response, Docket Entry No.
34-1,
pp. 67-68 i Perry's Answers to Interrogatories, Exhibit 18 to
Plaintiff's Response, Docket Entry No. 34-2, pp. 22-23.
54Perry's Answers to Interrogatories, Exhibit 18 to Plaintiff's
Response, Docket Entry No. 34-2, pp. 24-25.
55See Dickson Deposition, Exhibit 7 to Plaintiff's Response,
Docket Entry No. 34-1, pp. 154-55.
56Copies of the relevant plans are attached to this Memorandum
Opinion and Order as an appendix.
See also Dickson Deposition,
Exhibit 7 to Plaintiff's Response, Docket Entry No. 34-1, pp.
182-84 (reviewing similarities between the plans) .
-32j
L
11
II
Positive
would view the two works as 'substantially similar.'"
Black Talk, 394 F.3d at 374 (internal quotation marks and citation
omitted).
"To support a claim of copyright infringement, the copy
must bear a substantial similarity to the protected aspects of the
Peel & Co., Inc. v. The Rug Market, 238 F.3d 391, 398
original."
(5th Cir.
2001)
(emphasis added)
see also Zalewski v.
i
Builder Dev., Inc., 754 F.3d 95, 101 (2d Cir. 2014)
the
term
'substantial
similarity'
is
Cicero
("For clarity,
properly
reserved
for
similarity that exists between the protected elements of a work and
Therefore,
another work.") .
aspect
of
the
"[t]he inquiry focuses not on every
copyrighted work,
plaintiff's work [that]
but
on
those
aspects
of
the
are protectible under copyright laws and
whether whatever copying took place appropriated those [protected]
elements."
112
(1st
T-Peg, Inc. v. Vermont Timber Works, Inc., 459 F.3d 97,
Cir.
omitted) .
2006)
" [A] nyone
copyrighted work."
limitations,
(internal
quotation
may
uncopyrightable
copy
marks
and
citations
elements
Eng'g Dynamics, 26 F.3d at 1347.
in
a
Given these
"where the copyrighted work contains unprotectable
elements, the first step is to distinguish between protectable and
unprotectable elements of the copyrighted work."
F.3d at 550. 57
Nola Spice, 783
Once unprotectable elements are excluded, "the next
57See also Peel & Co., 238 F.3d at 398 (reversing summary
judgment where evidence raised fact issues on, inter alia,
protectability of constituent elements of plaintiff's work) i
Kepner-Tregoe, Inc. v. Leadership Software, Inc., 12 F. 3d 527,
(continued ... )
-33-
inquiry
is
whether
the
allegedly
infringing
work
bears
a
substantial similarity to the protectable aspects of the original
work."
rd.
This second inquiry is performed from the perspective
of a layman or ordinary observer.
rd.
"Typically, the question whether two works are substantially
similar should be left to the ultimate factfinder,
judgment
viewing
may be
the
appropriate
evidence
if
the
and drawing
court
can
inferences
but summary
conclude,
in a
after
manner most
favorable to the nonmoving party, that no reasonable juror could
find
substantial
similarity
of
ideas
and
expression."
Universal, 379 F.3d at 142 (internal quotation marks and citation
omitted).
Summary judgment is also appropriate where "similarity
between two works concerns only non-copyrightable elements of the
plaintiff's work."
1247
(11th Cir.
Herzog v. Castle Rock Entm't, 193 F.3d 1241,
1999)
(quoted with approval by Gen.
Universal,
379 F.3d at 142 n.142) i see Kepner-Tregoe, 12 F.3d at 533 ("Thus,
if we conclude that [defendant] only copied unprotectable elements
of
[plaintiff's] materials, we must reverse the district court's
judgment [in favor of plaintiff] .") .
continued)
533 -34 (5th Cir. 1994) ("To determine the scope of copyright
protection in a close case, a court may have to filter out ideas,
processes, facts, idea/expression mergers, and other unprotectable
elements of plaintiff's copyrighted materials to ascertain whether
the defendant infringed protectable elements of those materials.") .
57 ( • • •
-34-
Summary
filtering
judgment
out
therefore
unprotectable
is
appropriate
elements
of
after
if
Lennar's
designs
(1) no reasonable jury could find substantial similarity between
the remaining protectable elements of Lennar's designs and Perry's
designs,
or
(2)
there are no remaining similarities between the
designs.
Not all aspects of a copyrighted work are
protectable; copyright only protects the
constituent elements of a work that are
original to the author.
(i)
"The mere fact that a work is copyrighted does not mean that
every element of the work may be protected."
Feist, I I I S. Ct. at
1289.
"'The copyright is limited to those aspects of the work
termed
"expression"
originality. '"
that display the stamp of
Kepner-Tregoe,
Row, 105 S. Ct. at 2224).
12 F.3d at 533
the author's
(quoting Harper &
Infringement therefore requires "copying
of constituent elements of the work that are original."
Feist, I I I
S. Ct. at 1296.
Under the Copyright Act, an architectural work "includes the
overall form as well as the arrangement and composition of spaces
and
elements
standard
the
features.
protection
§ 202.11
in
design,
17
II
"[s]tandard
but
U.S.C.
does
§
not
101.
configurations
of
include
This
individual
excludes
spaces,"
37
from
C.F.R.
(d) (2), as well as "common windows, doors, and other staple
building components,"
H.R.
Rep.
No.
-35-
101-735,
reprinted in 1990
U.S.C.C.A.N.
6935,
However,
6949.
individual
features
"reflect the architect's creativity" are not excluded.
that
Id.
More generally, limitations imposed by traditional copyright
such as idea/expression dichotomy and scenes-a-faire
doctrines
Zalewski,
-- apply to architectural works as well.
105.
of
754 F.3d at
No author may copyright facts or ideas, only the expression
those
facts
17 U.S.C.
§
and
Feist,
ideas.
102 (b) .58
111
S.
Ct.
at
1290;
see
Such expression is protectable, "as long as
that expression is original and not dictated by the underlying
idea."
drawing
Nola Spice, 783 F.3d at 551.
the
line
between
an
idea
"The guiding consideration in
and
its
expression
is
the
preservation of the balance between competition and protection
reflected in the patent
and copyright
Kern River Gas
laws."
Transmission Co. v. Coastal Corp., 899 F.2d 1458, 1463
(5th Cir.
1990) (internal quotation marks, alteration, and citation omitted) .
Therefore,
"when an
idea
can be
expressed
in very
few
ways,
copyright law does not protect that expression, because doing so
would confer a de facto monopoly over the idea.
and expression are said to be merged."
533.
Similarly,
the
scenes-a-faire
In such cases idea
Kepner-Tregoe, 12 F.3d at
doctrine
protection "expressions that are standard,
excludes
from
stock or common to a
58Section 102(b) states: "In no case does copyright protection
for an original work of authorship extend to any idea, procedure,
process, system, method of operation, concept, principle, or
discovery, regardless of the form in which it is described,
explained, illustrated, or embodied in such work."
-36-
particular subject matter or are dictated by external factors,"
including "industry demand and practice."
Eng'g Dynamics, 26 F.3d
at 1344, 1347. 59
(ii)
The degree of similarity required to infringe
depends on the amount of the author's
original contribution to a particular work.
Although a work may be copyrightable as a whole, the scope of
protection afforded that work varies in proportion to the amount of
the author's original contribution.
"Many copyrights represent
significant creative effort, and are therefore reasonably robust,
whereas
§
others
reflect
13.03 [A] [4], at 13 - 66.2.
protectible
matter
is
at
copyright protection [is]
only
scant
creativity."
"More similarity is required when less
issue."
Thus,
"the
scope
of
a sliding scale that changes with the
availability of expressions for a given idea."
26 F.3d at 1348
Nimmer,
Eng' 9 Dynamics,
(citing Lotus Dev. Corp. v. Borland Int'l,
Inc.,
831 F. Supp. 202, 209 (D. Mass. 1993)).
If there's a wide range of expression (for example, there
are gazillions of ways to make an aliens-attack movie),
then copyright protection is "broad" and a work will
infringe
if
it's
"substantially
similar"
to
the
copyrighted work. If there's only a narrow range of
expression (for example, there are only so many ways to
paint a red bouncy ball on blank canvas), then copyright
protection is "thin" and a work must be "virtually
identical" to infringe.
59The specific application of these doctrines to architectural
works is discussed in subsection iii, below.
-37-
Mattel, Inc. v. MGA Entmlt, Inc.,
2010).
616 F.3d 904, 913-14
(9th Cir.
"This heightened showing is necessary because, as idea and
expression merge, fewer and fewer aspects of a work embody a unique
and creative expression of the idea; a copyright holder must then
prove substantial similarity to those few aspects of the work that
are expression not required by the idea."
v. Bridgewater Candle Co.,
LLC,
Yankee Candle Co., Inc.
259 F.3d 25,
36
(1st Cir.
2001)
(internal quotation marks and citation omitted) .
Similarly,
"[t]he law is more protective of highly original
and highly expressive works than it is of functional and nonfiction
works."
Englg Dynamics,
26 F.3d at 1348.
To the extent that a
work is "highly functional" or comprised of "highly standardized"
elements it "may lie very near the line of uncopyrightability."
See id.
Copyright protection in such works is thin.
"Where the quantum of originality is
slight
See id. n.15.
and the
reSUlting
copyright is 'thin,' infringement will be established only by very
close copying because the majority of the work is unprotectable."
Beaudin v.
Ben & Jerry's Homemade,
Inc.,
95 F.3d 1,
2
(2d Cir.
1996) .
The same range of originality is present
in architectural
works:
"Some architectural designs, like that of a single-room log
cabin,
will
consist
solely
of
standard
features
arranged
in
standard ways; others, like the Guggenheim, will include standard
features, but also present something entirely new.
-38-
Architecture,
in this regard,
Zalewski,
is like every art form."
754 F.3d at
103-04.
Perry argues that a heightened standard of similarity should
apply .in
Circuit's
all
architectural
decision
"architectural works
in
Perry
cases.
Intervest
for
are entitled to
cites
the
\ the
the
Eleventh
proposition
least,
that
narrowest
or
\ thinnest' protection.' ,,60 See Intervest Const., Inc. v. Canterbury
Estate Homes,
554 F.3d 914,
921
(11th Cir. 2008).
The court in
Intervest reached this conclusion by likening architectural works
to compilations,
see id.,
which,
following the Supreme Court' s
opinion in Feist, are entitled to only thin protection, III S. Ct.
at
1289.
However,
Congress anticipated this argument when it
amended the Copyright Act to include architectural works, and it
rejected any heightened standard of similarity:
[D]eterminations of infringement of architectural works
are to be made according to the same standard applicable
to all other forms of protected subject matter.
The
references in the definition of "architectural work" to
"overall
form,"
and
to
the
nonprotectibility of
"individual standard features" are not intended to
indicate that a higher standard of similarity is required
to prove infringement of an architectural work, or that
the scope of protection of architectural works is limited
to verbatim or near-verbatim copying. These definitional
provisions are intended merely to give the courts some
guidance regarding the nature of the protected matter.
The extent of protection is to be made on an ad hoc
basis.
6°Defendant's Motion for Summary Judgment, Docket Entry No. 22,
p. 26 ~ 52.
-39-
H.R. Rep. No. 101-735, reprinted in 1990 U.S.C.C.A.N. 6935, 6952
(emphasis
"Intervest
added).
contravenes
treating architectural
works
differently
failing
what
in
to
determine
Congress'
than
other works
beyond
architecture
arrangement -- is copyrightable."
intent
by
and
mere
Zalewski, 754 F.3d at 104.
The
"real issue" is "to determine what in [the work] originated with
Id.
the author and what did not."
contribution
is
id.
but
at
107,
"slight,"
this
is
his
a
Where the author's original
copyright
function
of
may
be
"very
the
author's
thin,"
minimal
contributions to the design at issue, not of architectural works in
general,
see
This
id.
approach
is
consistent
with
general
copyright principles and Fifth Circuit precedent.
The scope of protection for Lennar's works, and the level of
similarity required for infringement, will depend on the amount of
Lennar's original contribution to those works.
After applying
"standard 'copyrightability filters,' such as scemes-a-faire," the
"court will determine whether the
[Lennar]
may
enj oy has
been
[potentially]
infringed.
II
thin copyright
See Eng'g Dynamics,
26 F.3d at 1348 n.15.
(iii)
Lennar
infringed,
argues
Filtration is compatible with architectural
works being protectable "as a whole."
that
what
is
protectable,
and
is "the layout of its floor plans as a
what
Perry
'protectible
whole,' including as to the selection, arrangement, and integration
-40-
of
elements and spaces,
concept, and feel."61
are
protectable
as
as
well
as
their overall
form,
look,
Lennar argues that "[b]ecause [its] layouts
a
whole
and
in
overall
concept
regardless of the protectability of the components,
and
feel,
the Court's
substantial similarity analysis does not require the
'filtering
out' of purportedly unprotectable elements. ,,62
That
architectural works
are protectable
"as
a
whole"
is
supported by the text of the Copyright Act and the legislative
history.
See
§
101 ("[An architectural work] includes the overall
form as well as the arrangement and composition of spaces and
elements in the design.")
U.S.C.C.A.N.
6935,
6949
H.R. Rep. No. 101-735, reprinted in 1990
i
("[Creativity in architecture frequently
takes the form of a selection,
coordination,
or arrangement of
unprotectible elements into an original, protectible whole.") .
Lennar cites several district court cases finding substantial
similarity in architectural works based solely on a comparison of
the
plans
as
a
whole. 63
However,
the
courts'
finding
of
61Plaintiff's Supplemental Brief on Substantial Similarity,
Docket Entry No. 75, p. 8.
62rd. at 6.
Specifically, "Lennar does not seek protection,
nor allege infringement, of any individual standard features,
elements, or spaces within its designs." Id. at 8.
63See Cornerstone Home Builders, Inc. v. McAllister, 303
F. Supp. 2d 1317, 1321
(M.D. Fla. 2004)
(concluding that
Defendant's home infringed the look and feel of plaintiff's design
despite several notable changes) i Wood v. B L Bldg. Co.,
No. H-03-713, 2004 WL 5866352, at *9 (S.D. Tex. June 22,2004)
(continued ... )
-41-
"substantial similarity" in those cases is conclusory, and in some
instances collapses probative similarity and substantial similarity
into a single analysis.
That is not the law in this circuit.
More
importantly, however, there is no indication in those cases that
the courts considered scope of protection or protectability of
particular elements.
Therefore, those cases are not particularly
useful in addressing Perry's arguments.
Lennar also points to some district court cases that have
eschewed a
works. 64
filtration analysis when dealing with architectural
However, the procedural posture and/or issues addressed
63 ( • • • continued)
("Although the plans have minor differences-such as the size of
certain rooms and the configuration of the breakfast nook area
the rest of the plans are essentially identical.") i Richmond Homes
Mgmt., Inc. v. Raintree, Inc., 862 F. Supp. 1517, 1527 (W.D. Va.
1994), aff'd in part, rev'd in part on other grounds, 66 F.3d 316
(4th Cir. 1995) (finding substantial similarity where "interior
layouts [were] nearly identical except for minor differences in
dimension") i Ronald Mayotte & Associates v. MGC Bldg. Co., 885 F.
Supp. 148 (E.D. Mich. 1994) (same). Notably, Mayotte implies that
were the plans at issue more constrained, the similarities might
not be actionable: "Unlike the log-cabin houses in Howard, supra,
whose unavoidable 90-degree angles severely limited how they could
be designed, the large suburban houses at issue here share striking
but avoidable resemblances."
Id. (emphasis added).
The court's
emphasis on "avoidable" resemblances, however, might signal a focus
on factual copying.
64See Frank Betz Assocs., Inc. v. J. o. Clark Const., L. L. C. ,
No. 3:08-CV-159, 2010 WL 4628203, at *1 (M.D. Tenn. Nov. 5, 2010)
(denying defendant's motion for separate trials on protectability
of individual elements (bench trial) and infringement (jury trial)
because
jury would still
consider overall
arrangement of
unprotectable
elements
as
protectable
whole) i
Frank
Betz
Associates, Inc. v. Signature Homes, Inc., No. 3:06-0911, 2010
WL 1373268, at *5 (M.D. Tenn. Mar. 29, 2010) (denying defendant's
(continued ... )
-42-
in
those
cases
differ
from
the
motion
under
consideration.
Furthermore, as with Lennar's other authorities, it does not appear
that those courts considered the types of constraints at issue in
this case.
What Lennar's argument highlights,
however,
is the tension
between "filtration- on the one hand, and two related concepts on
the other:
(1)
some courts' consideration of "total concept and
64 ( • • • continued)
motion for summary judgment on "functionality" because" [a] lthough
comprised of functional elements, the Betz designs [as a whole] do
not rise to the level of functionality such that copyright
protection cannot be extended to them") ; Dorchen/Martin Associates,
Inc. v. Brook of Boyne City, Inc., No. 13-CV-10588, 2013 WL
5348627, at *7 (E.D. Mich. Sept. 24, 2013) (holding that, in
response to interrogatories, plaintiff "is not required to state
each and every original element because it is asserting that the
overall arrangement of the functional spaces is protected") ; Design
Basics,
L.L.C.
v.
DeShano Companies,
Inc.,
10-14419,
2012
WL 4321313, at *6 (E.D. Mich. Sept. 21, 2012) (denying defendant's
motion for summary judgment on originality because "architectural
plans, as a whole, can constitute an original work")
-43-
feel"
in
their
substantial
similarity analysis,65
and
(2)
the
protectability of architectural works "as a whole."
The D.C. Circuit's opinion in Sturdza v. United Arab Emirates
highlights this
tension.
See 281 F.3d 1287
Sturdza involved a design competition for a
(D.C.
Cir.
2002).
"multi-use facility
expressing the richness and variety of traditional Arab motifs."
Id. at 1292.
submission;
defendant.
The plaintiff accused the defendant of copying her
the district court granted summary judgment for the
The district court first "filtered out" those elements
of the plaintiff's design it viewed as unprotectable ideas: domes,
wind-towers,
1297.
parapets,
arches,
and decorative patterns.
Id.
at
Then, proceeding item by item, the court compared how the
concepts of domes,
wind-towers,
etc., were expressed in the two
65The Second Circuit provides a detailed description in
Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc.,
338 F. 3d 127, 134 (2d Cir. 2003).
Essentially,
the
total-concept-and-feel
locution
functions as a reminder that, while the infringement
analysis must begin by dissecting the copyrighted work
into its component parts in order to clarify precisely
what is not original, infringement analysis is not simply
a matter of ascertaining similarity between components
viewed in isolation. For the defendant may infringe on
the plaintiff's work not only through literal copying of
a portion of it, but also by parroting properties that
are apparent only when numerous aesthetic decisions
embodied in the plaintiff's work of art
are
considered in relation to one another.
Courts sometimes also refer to this as "overall look and feel."
See, e.g., Stromback v. New Line Cinema, 384 F.3d 283, 297 (6th
Cir. 2004).
-44-
designs.
At the level of protectable expression, it concluded, the
designs were decidedly different.
the
general
use
of
domes,
rd. at 1297.
wind-towers,
That is to say,
etc.,
was
not
itself
protectable, and the specific domes, wind-towers, etc., that were
used differed between the two designs.
On appeal, the D.C. Circuit reversed.
The court agreed that
the first step in the analysis is to exclude unprotectable elements
such as ideas and scenes-a-faire.
substantial
"[t]he
that
comparison not
only of
rd. at 1296.
similarity
the
two works'
However, it stated
determination
individual
isolation, but also of their 'overall look and feel. '"
Boisson
v.
Banian,
Ltd,
273
F.3d
262,
272
(2d
requires
elements
rd.
Cir.
in
(citing
2001)).
"Considering the works as a whole is particularly important because
protectible expression may arise through the ways in which artists
combine even unprotectible elements."
at issue, the court found that
rd.
Turning to the designs
"[t]he size, shape, and placement
of [the defendant's] wind-towers, parapets, and pointed domes.
give
his
plaintiff's,]
feel."
building
a
contour
identical
to
[the
[c]ontributing to the similarity in overall look and
rd. at 1299.
A jury might therefore find that the designs
were substantially similar.
Notably,
virtually
however,
this
rd.
court
Sturdza opinion that the D. C.
finds
no
indication
in
the
Circuit considered any arguments
similar to Perry's in this case.
The designs at issue in Sturdza
-45-
were large multi-use complexes, and the only restraints identified
pertained to individual features typical in Arab architecture, not
the overall arrangement of those features.
The Second Circuit's opinion in Zalewski is more on point, and
it demonstrates how filtration is compatible with consideration of
the overall layout of an architectural work.
Zalewski alleged that the defendants
The plaintiff in
"copied the overall size,
shape, and silhouette of his designs as well as the placement of
rooms,
windows,
features."
doors,
closets,
754 F.3d at 99.
stairs,
and other architectural
The district court granted summary
judgment for the defendants, and the plaintiff appealed.
In affirming the district court's ruling, the Second Circuit
explained how the merger and scenes-a-faire doctrines should apply
to architectural works.
First,
regulations and other external
factors may narrow the range of design options such that only a
limited
number
of
designs
are
workable.
See
id.
at
105.
Therefore, "[a]ny design elements attributable to building codes,
topography, structures that already exist on the construction site,
or engineering necessity .
. get no protection."
Id.
Second,
scenes-a-faire in architecture includes standard house designs and
market expectations.
See id.
at 105-06.
Therefore,
"[d]esign
features used by all architects, because of consumer demand, also
get no protection."
Id. at 105.
-46-
The court then applied these principles to the layout and
arrangement of the plaintiff's house and made several relevant
determinations:
(a)
"[T]he overall footprint of the house and the
size of the rooms are
'design parameters'
dictated by consumer
preferences and the lot the house will occupy, not the architect";
(b)
the
"general
layout"
and the
"location,
size,
and general
design" of individual elements were attributable to the house's
"colonial archetype"; and
(c)
"[t] here are only so many ways to
arrange four bedrooms upstairs and a kitchen, dining room, living
room, and study downstairs."
The
court
concluded
See id. at 107.
that
"although
there
is
something of Plaintiff's own expression in his work,
certainly
as long as
Plaintiff adhered to a pre-existing style his original contribution
was slight -- his copyright very thin."
rd.
That is, by applying
the scenes-a-faire and merger doctrines to the plaintiff's overall
design, the court in Zalewski identified those aspects that were
determined by external factors
the house's "general layout" --
the amount of the author's original contribution -- "slight" -- and
the
corresponding
scope
of
Because that scope was thin,
taken
whatever
actually
protection
in
his
work
"thin. "
"only very close copying would have
belonged
to
Plaintiff."
The
defendants' designs, which shared the plaintiff's "general layout"
but differed in the "exact" placement,
size,
and arrangement of
individual elements, "copied only the unprotected elements of [the
-47-
plaintiff's] designs."
Id. at 106-07.
Therefore the defendants'
designs did not infringe, and summary judgment was appropriate. 66
The court is not persuaded that it should -- or, in light of
Nola Spice, can -- forego some form of filtration analysis in this
case.
Nevertheless,
the
court
is
mindful
that
because
an
archi tectural work may consist of a protectable arrangement of
unprotectable elements,
filtration in architectural cases cannot
involve the mere elimination of individual elements. 67
However,
unlike in Sturdza, where the court found potential infringement of
the
overall
arrangement
individual elements,
despite
the
defendant's
challenge
Lennar's overall arrangement of
spaces
itself an element Perry challenges as being unprotectable.
to
is
Put
another way, even considering the overall look and feel of Lennar's
plans -- the "protectable whole"
that overall look and feel is
primarily
choices
a
function
of
design
Perry
contends
are
66The plans at issue in Zalewski were not published with the
opinion.
Notably, however, the court in Zalewski stated that it
agreed with the outcome in Intervest -- no infringement -- just not
the reasoning. See Zalewski, 745 F.3d at 103. A cursory glance at
the plans at issue in Intervest reveals just how similar a copy may
be without infringing a thin copyright. See 554 F.3d at 922.
67The Fifth Circuit has not expressly adopted the totalconcept-and-feel test.
But see Positive Black Talk, 394 F.3d at
'373-74. Nevertheless, in light of statutory text and legislative
history, consideration of works "as a whole" is clearly appropriate
in architectural cases.
See also Eng'g Dynamics, 46 F.3d at 410
("[S]ubstantial similarity may be measured by comparing the
products as a whole."); Eng I 9 Dynamics, 26 F. 3d at 1348 n. 15
("After applying other more standard 'copyrightability filters,'
such as scenes a faire, the district court will determine whether
the thin copyright EDI may enjoy has been infringed.") .
-48-
unprotectable.
aspects
of
As in Zalewski,
Lennar's
overall
the court can filter out those
designs
that
were
influenced
by
external factors and determine the scope of protection in Lennar's
plans.
Therefore, a filtration analysis is not only required, it
is also entirely compatible with an analysis of Lennar's designs as
a "protectable whole.
(iv)
Perry
has
H
Application to the plans at issue. 68
conducted
an
and
exhaustive
persuasive
analysis of each of the individual elements of Lennar's designs
that it contends are not protected. 69
does
not
seek
protection,
nor
allege
Lennar only claims protection for and infringement of
the
plans
as
a
spaces
within
any
designs. 1/70
of
or
of,
standard
layout
elements,
infringement
individual
"the overall
features,
Ultimately, however, "Lennar
its
'protectible whole.'
1/71
68Copies of the relevant plans are attached to this opinion as
an appendix.
69See Defendant's Additional
Briefing
Elements, Docket Entry No. 72, pp. 9-18.
on
Non-Protected
7°Plaintiff's Supplemental Brief on Substantial Similarity,
Docket Entry No. 75, p. 3.
71Id.; see also id. at 5 ("Because Lennar does not allege
infringement of any individual components of its designs, but
rather its floor plan layouts as a 'protectible whole,' the Court
need not consider the protectibility of any individual elements via
a filtration analysis.I/); Lennar's Motion for Leave and Response to
Perry's Supplemental Brief, Docket Entry No. 84, pp. 10-11 ("In the
present case, even if individual elements of the plans (e.g., the
doors, windows, bedrooms, stairs) are
not individually
(continued ... )
-49-
~
II
11
II
ii,
ii
Therefore,
Lennar's
the court's analysis will
overall
arrangement
that
focus on those aspects of
are
properly
excluded
from
consideration. 72
Before proceeding further, however, a key distinction between
Perry's and Lennar's arguments is relevant.
because of
the
tight
constraints
of
Perry argues that
the Woodlands
Development
Criteria and market demands, there were a limited number of ways to
arrange the plans at issue in this case.
Therefore, Perry argues,
Lennar's overall arrangement should get no protection.
Lennar
would
Woodlands.
have
a
monopoly
on
marketable
Otherwise,
designs
in
the
Lennar argues in its briefing, and its expert opines in
his report, that there were numerous ways to arrange these elements
and still comply with the Development Criteria and market demands.
The primary conclusion Lennar and its expert appear to draw from
this
premise,
however,
is
that
Perry's
architect
was
not
so
continued)
protectible, the manner in which they are selected, arranged, and
expressed as a whole is protectible and must be compared.") .
71 ( • • •
72Relevant or not, however, the Court is persuaded by Perry's
arguments
as
to
the
individual
elements
it
claims
are
unprotectable. Further, in its late-filed brief, Lennar appears to
argue that even if the elements are individually unprotected, the
"expression or expressive combination" of those elements is itself
protected.
See Docket Entry No. 84, p. 10 & n.25.
As discussed
below, notwithstanding Perry's incorporation of many of the same
individual elements in the same general layout, the expression of
those individual elements, and the precise details of their layout,
differ significantly between Lennar's and Perry's designs.
Whatever copyright protection Lennar has in the expression or
expressive combination of those individual elements has not been
infringed.
-50-
constrained that the similarity of the designs was inevitable,
i.e.,
this was no accident.
Compelling as that argument may be
with respect to factual copying, that is not the issue here. 73
At
issue is whether Lennar's designer was sufficiently constrained
that aspects of Lennar's plans are unprotectable for purposes of
establishing substantial similarity.
not be absolute.
The relevant constraints need
They need only narrow the range of available
expression such that protecting certain aspects of Lennar's works
would grant Lennar an impermissible monopoly on designs that meet
those
constraints.~
The
Woodlands
Development
Criteria
contain
the
following
provisions relevant to the layout of the Burgundy and Bordeaux: 75
73To the extent that alternative design options are relevant
to the substantial similarity inquiry as well, the court considers
them below.
74See, e.g., Kepner-Tregoe, 12 F.3d at 533 (" [W]hen an idea can
be expressed in very few ways, copyright law does not protect that
expression, because doing so would confer a de facto monopoly over
the idea.") i Kern River Gas, 899 F.2d at 1463 ("The guiding
consideration in drawing the line between an idea and its
expression is the preservation of the balance between competition
and protection reflected in the patent and copyright laws."
(internal quotation marks, alteration, and citation omitted)).
75Development Criteria, Exhibit C to Defendant's Additional
Briefing on Non-Protected Elements, Docket Entry No. 72-3.
-51-
•
Houses shall be a duplex product, 76 between 1800 and
2200 square feet, 77 not to exceed two stories. 78
•
Typical lot sizes for single family attached duplex
units are 35' x 90', with minimum setbacks of 20'
in the front, 5' on the side, and 15' in the rear.79
The sum total of all hard surfaces -i.e., the
building pad, driveway, garage, and patios -- shall
not exceed 70% of the total lot.sO
•
The front elevation of each residence must face the
street,81 and it must include a garage for at least
two cars, also facing the street. 82
In its response to Perry's interrogatories, Lennar stated that
" [m] arket demands and consumer preferences that may have influenced
Plaintiff's design include spacious master suite; numerous windows
in the master suite; large master bathroom; and separate shower and
tub in the master bathroom."83
76Id. at 2.
77Id. at 4.
78Id.
79Id. at 1, 3.
8°Id. at 3.
81Id. at 4 .
82Id. at 7.
83Plaintiff's
Response
to
Defendant's
Second
Set
of
Interrogatories, Exhibit F to Defendant's Additional Briefing on
Non-Protected Elements, Docket Entry No. 72-6, p. 3.
-52-
Most
Lennar's
relevant,
designer,
however,
who
is
conceded
the
each
deposition
of
the
testimony
following
of
points
regarding constraints on designs like the Burgundy and Bordeaux: 84
•
A lot of the layout of a home is dictated by the
lot size. 8s The size of a lot influences the total
number of bedrooms, how large the den is, whether
there is a separate sitting room, whether there is
a separate kitchen, and features can be constrained
as the lot size gets smaller. 86
•
An average double garage door is 16-feet wide,
meaning the garage as a whole is about 20-feet
wide. On a 35-foot wide lot with a 5-foot setback
that leaves 10 feet,
laterally,
in which to
position the front door to the house. 87
•
Behind the front door is going to be a hallway.
Inside, there has to be a kitchen somewhere. 88 In
a
two-story
townhome,
there
is
a
consumer
preference to have the kitchen as well as the
primary living area on the first floor.
If the
kitchen is on the first floor, any breakfast area
has to be on the first floor as well. 89
The
breakfast area is typically adjacent to the
kitchen. 90
84See Oral and Videotaped Deposition of Sam Teuton ("Teuton
Deposition"), Exhibit B to Defendant's Additional Briefing on NonProtected Elements, Docket Entry No 72 -2.
Nearly all of these
propositions were offered to Mr. Teuton by Perry's attorney. Mr.
Teuton's agreement with each, however, was clear and unequivocal.
8SId. at 12-13.
86Id. at 6.
87Id. at 9-10.
88Id. at 10.
89Id. at 18.
90Id. at 1I.
-53-
•
It is uncommon that the downstairs bathroom opens
into the kitchen. 91
Most people don't want the
bathroom in the kitchen or the den, so it really
has to go in the hallway.~
•
Buyers of new construction homes today demand a
fairly luxurious and large master bathroom. Buyers
expect the master bath to be physically connected
to the master bedroom.
The master bedroom must
have master closets. 93
•
Bedrooms need windows. Because duplex plans have a
common wall on which there can be no windows,
bedrooms must be positioned along one of the three
exterior walls. 94 Secondary bedrooms therefore can
only go in the front left, front right, back left,
or back right side the plan. No bedroom can go in
the middle of the shared wall. 95
•
If the plan has a secondary bathroom servicing the
secondary bedrooms, the secondary bathroom needs to
be in reasonable proximity to the secondary
bedrooms. 96
Despite
Perry's
deposition testimony,
heavy
reliance
on
Lennar's
designer's
Lennar does not address that testimony in
either its Brief on Substantial
Perry's Supplemental Brief.
Similarity or its Response
to
Lennar instead relies on the report of
its expert, and on numerous plans by Lennar, Perry, and third-party
9lId.
~Id.
at 11-12.
93Id. at 4.
94Id. at 5.
95Id. at 16-17.
96Id. at 4.
-54-
builders, that either (a) do not conform to the market constraints
alleged by Perry or (b) employ different layouts despite having lot
sizes and square footage roughly equivalent to the plans at issue
in this case. 97
Lennar's
expert
opines
that
"there
is
no
basis
for
the
contention that development guidelines or market preferences would
necessarily
lead
to
constricted
design
possibilities."98
As
discussed above, however, the thrust of Lennar's expert report is
that Perry's architect was not so constrained in his design that he
inadvertently
drew
the
same
plans
as
Lennar. 99
This
is
distinguishable from the key issue here, whether Lennar's designer
was so constrained in his general layout that either (a) it was not
original to him, or (b) what choices he did have were so limited
that they cannot be protected by copyright.
Lennar's designer
conceded in his deposition that the general layouts of the Burgundy
and Bordeaux were significantly constrained by the lot size and
market
demands.
While
the
court
does
not
agree
with Perry's
97See Plaintiff's Supplemental Brief on Substantial Similarity,
Docket Entry No. 75, pp. 11-17.
98Report on Design Originality and Similarity, Exhibit 39-B to
Plaintiff's Response, Docket Entry No. 34-9, p. 13.
99S ee . e.g., id. at 14 (" [G] iven the existence of several other
home designs and their illustrated congruence with the Creekside
home parameters, there is no compelling support or credence to the
suggestion that the works in question here are similar due to
development guidelines or market preferences." (emphasis added)) i
id. at 13 (" [S] uch market preferences could have easily been
adopted post hoc after the copyright issue arose.").
-55-
contention that Lennar's layouts were "the only way" to comply with
external
constraints,lOO Lennar's
options were
limited,
and its
layouts represent some of only a few that would be both marketable
and compliant with the Development Criteria. 101
Lennar's evidence
of design alternatives, while relevant to factual copying, is not
dispositive of the protectability issue for purposes of substantial
similarity.
In response to Perry's interrogatories, Lennar claimed that
the
following elements of
the Burgundy and Bordeaux plans
and
dimensions,"
lOOSee Defendant's Motion for Summary Judgment,
No. 22, pp. 17-18 ~ 31.
Docket Entry
protected
by
copyright:
(1)
"[t]he
size
are
lOlThe Director of Lennar' s Houston division, Donald A. Luke,
testified that the Woodlands designed the home sites in Phase I
based on the immediate predecessors of the Burgundy and Bordeaux,
the Village Builder Villas.
Luke Deposition, Docket Entry
No. 34-1, pp. 116-18.
The Villas appear to have had the same
footprint and general layout as the Burgundy and Bordeaux. Docket
Entry No. 17, p. 4 ~ 17.
Neither party has addressed the legal
implications of this fact. If true, however, it would suggest that
Lennar's designs were not constrained by the Development Criteria
per se, but instead by the footprint and square footage Lennar
itself chose to use. In the end, whether the Development Criteria
are based on Lennar's plans or Lennar's plans are based on the
Development Criteria is a distinction without a difference.
The
constraints of building an 1800-2200 square foot, 30-foot wide,
two-story duplex with an attached two-car garage are the same
whether they are externally mandated or self-imposed.
See
Zalewski, 754 F.3d at 107 ("SO long as Plaintiff adhered to a
pre-existing style his original contribution was slight - - his
copyright very thin. ") ; id. at 6 (" [T]he overall footprint of the
house and the size of the rooms are 'design parameters' dictated by
consumer preferences and the lot the house will occupy, not the
architect. ") .
-56-
(2)
"[t] he arrangement and composition of spaces and elements," and
(3)
"[t]he overall form, look and feel."I02
As demonstrated by the evidence above, the size and dimensions
of Lennar's plans were primarily determined by the lot size and
market conditions.
Whether size and dimensions are copyrightable
at all is unclear, but they certainly are not protectable in this
case.
Similarly,
the evidence shows that the general layout of
i. e.,
Lennar's
plans
relative
the
to one another
unprotectable.
positioning
was
of
rooms
and
spaces
sufficiently constrained to be
Nevertheless, the evidence does not suggest that
the precise arrangement and composition of spaces and elements -i. e.,
the exact placement,
size,
and arrangement of individual
features -- was significantly pre-determined.
protectable. 103
It may therefore be
However, to the extent that the "overall form, look
I02Plaintiff's
Response
to
Defendant's
First
Set
of
Interrogatories, Exhibit A to Defendant's Additional Briefing on
Non-Protected Elements, Docket Entry No. 72-1, pp. 3-4.
103However, the "selection" of individual elements - - at least
those visible in the floor plans and discussed in the briefs -- is
unprotectable in this case.
Lennar argues that Perry takes the
inclusion of a breakfast nook, patio, two-storyentryway, etc., as
a given, but that Perry and other builders often forgo these
features.
Plaintiff's
Supplemental
Brief
on
Substantial
Similarity, Docket Entry No. 75, pp. 12-13, 14-15. This argument
is a non-starter. While it might be relevant to factual copying,
it is irrelevant to whether Lennar's inclusion of these features is
protectable. Lennar does not argue that patios, breakfast nooks,
or two-story entries are elements original to Lennar, or even that
the combination of those elements is original to Lennar. None of
these elements is particularly unique, and Lennar cannot have a
monopoly on their use, even in combination with one another.
-57-
and feel" of Lennar's plans is a function of the general layout, it
too is unprotectable.
Because the available arrangements for Lennar's designs were
so limited, Lennar's original contributions were slight, and its
copyright is thin.
Because Lennar's copyright is thin, only nearNevertheless, such an
verbatim copying by Perry would infringe.
analysis can be hard to apply,
since even verbatim copying must
still appropriate protected elements to be legally actionable. 104
A more precise formulation is to say that for Perry's plans to
infringe,
they
must
be
substantially
similar
protectable elements remain after Lennar' s
excluded.
Under
either
formulation,
similari ties between the parties'
general
however,
to
whatever
layouts are
if
the
only
plans pertain to unprotected
elements -- i.e., the general layout -- then Perry has not copied
any protectable material, its plans do not infringe, and summary
judgment is appropriate.
Comparing Lennar's Burgundy to Perry's 2249 -- Beginning with
the first floor, both designs share the following: a two car garage
with a porte-cochere; a front porch and front door; a front foyer
and hallway with stairs and a half bath; an open-plan family room,
104An extreme example: If 95% of a work is unprotectable, then
verbatim copying of that 95% would not infringe, even if it
constitutes near-verbatim copying of the entire work.
-58-
kitchen, and breakfast/morning area; and a covered patio .105
Each
of these elements is in the same general location in each plan.
However,
beyond the general
differ significantly:
First,
layout of
none
these
spaces,
of the dimensions
the plans
of
these
spaces -- where identified -- are the same, and the overall square
footage of each plan is different.
Second, the configuration of
elements within these spaces differs between the plans.
Starting
with the entryway, Lennar's door is on the right side of the porch,
and upon entering one encounters a five-foot wide hallway running
along the side of the staircase, which ascends from the rear of the
house toward the front.
Perry's 2249 has the door in the middle of
the porch, and upon entering one encounters an open area at the
105In support of its Supplemental Brief on Substantial
Similarity, Docket Entry No. 75, Lennar has attached as exhibits
comparisons of the Lennar and Perry plans -- one for the Burgundy
and one for the Bordeaux
excerpted from Lennar's expert's
report.
See Exhibits A and B (filed under seal); see also Docket
Entry No. 34-9, pp. 21, 34 (filed with expert's report). However,
there appear to be at least four distinct versions of the Lennar
Burgundy: the 2291A, 2291C, 2291E, and 2291G.
See Exhibits to
Second Amended Complaint, Docket Entry No. 17-1, pp. 10-13
(providing floor plans of each model).
The first floor of each
Burgundy plan appears identical, with minor variations in the
listed dimensions of the kitchen, garage, and porch.
The only
notable differences between the second floors of each Burgundy plan
appear to be in the precise shape and dimensions of the master
bedroom, whether it has a balcony, and whether the windows extend
out from the front of the room or are flush with the exterior wall.
Lennar's briefing and infringement allegations do not distinguish
between the different versions of the Burgundy.
The comparison
provided in Lennar's expert report appears to be between the Perry
2249 and the Burgundy 2291G.
See Docket Entry No. 34-9, p. 21.
Even comparing Perry's 2249 to the three other Burgundy plans in
Lennar's Second Amended Complaint, the court's conclusions are the
same.
-59-
base of the stairway,
toward the rear.
which ascends from the front of the house
The entryway in each plan contains an area that
is two stories tall, but because the stairways are reversed, the
location and shape of the area open to the second floor differs in
each plan.
Both plans have a half bath under the stairs, but in
different locations.
Lennar's plan has no door from the front hall
into the garage; Perry's does.
The open-plan area at the rear of each model is L-shaped, with
the family room, kitchen, and breakfast/morning area in the same
location.
different,
However,
the
not only are the dimensions of these spaces
configuration
differs as well.
of
elements
within
these
spaces
Lennar's kitchen has a doorway to the garage at
the front and a single counter along the right-side wall.
Perry's
plan has a larger L-shaped counter, no door to the garage, and a
closet, pantry,
range,
and
(what appears to be)
refrigerator in
different locations from those in the Lennar plan.
The breakfast
or morning area in each plan is an open box with windows and a door
to the covered patio, but the doorways are different, and Lennar's
patio is flush with the rear of the house while Perry's extends out
into the yard.
Moving to the second floor, each plan has a "library" or "game
room," master bedroom, master bath, walk-in closet, utility room,
two secondary bedrooms,
general location.
and a
However,
secondary bath,
all
in the same
beyond the general layout of these
-60-
spaces, the plans again differ significantly:
to a wrap-around hallway over the foyer,
Lennar's stairs lead
whereas Perry's stairs
face the other direction and lead directly into the library.
The
entrance to the master bedroom is in a different place in each
plan,
and while each master bedroom is connected to the master
bath, the layouts of the master baths differ, and Perry's master
bath has an extra closet.
The utility rooms and walk-in closets
are in the same place, but they are configured differently,
Perry's are interconnected,
door.
and
whereas Lennar's each have only one
The closets in the secondary bedrooms are different, as is
the placement of the doors.
The secondary baths are configured the
same, but they are in different places.
anything from Lennar's Burgundy,
If Perry's 2249 copies
it is the unprotected general
layout.
Comparing Lennar's Bordeaux to Perry's 2255 -- Most notably,
Perry's 2255 is at least 400 square feet larger than either version
of the Bordeaux. 106
Nevertheless, the two plans contain most of the
106The comparison of the Bordeaux and 2255 plans provided with
Lennar's supplemental briefing, and attached to its expert report,
see Docket Entry No.
34-9,
p.
34,
has thick-lined boxes
superimposed over individual areas. These boxes do not appear in
the plans attached to Lennar's Second Amended Complaint, Docket
Entry No. 17-1, pp. 14-16, and they obscure the precise layouts of
the two plans.
The court has relied on the plans in Lennar's
Second Amended Complaint. As with the Burgundy, there are at least
two versions of the Bordeaux, the 2271H and 2271F. The first floor
of each appears identical, with minor variations in the dimensions
of the garage. The only notable differences in the second floors
are that the 2271F has a balcony over the front porch and the
(continued ... )
-61-
same rooms and spaces in similar locations.
Beyond that, however,
even aspects of the general layouts differ:
Beginning on the first
floor, Lennar's front porch and entryway are recessed about ten or
fifteen feet toward the middle of the plan; Perry's porch is nearly
flush with the front of the garage.
Because of this,
Lennar's
entryway is shallow, with only a bathroom along the inside wall;
Perry's is deeper, and in addition to a bathroom has a closet and
a doorway into the garage.
Lennar's entryway is one floor tall;
Perry's is open to the floor above.
Both plans have the stairway
behind the garage, but otherwise the configuration of the family
room, kitchen, morning area, and covered patio are the same as they
were in the Burgundy and 2249, discussed above,
including nearly
all of the differences highlighted between those plans.
Moving to the second floor,
Perry's does.
rear
of
the
Lennar's plan has no library;
Lennar's master bedroom has a balcony flush with the
building;
Perry's
master bedroom has
no
balcony,
protrudes from the rear of the building, and is a different shape
overall.
The master baths are both in the top right corner, but
they are arranged differently.
an L-shaped walk-in closet,
Both master baths are connected to
but Perry's L-shaped closet is more
elongated, and it connects to the utility room.
Lennar's utility
106 ( • • • continued)
second and third bedrooms are smaller, front to back, by two feet
and one foot, respectively.
The court's conclusions are the same
regardless of which Bordeaux model is compared to Perry's 2255.
-62-
room abuts the staircase;
location.
Perry has the secondary bath in that
Both plans have two secondary bedrooms over the garage,
but the closets are different, with Lennar's protruding into the
room and Perry's flush with the wall.
even the general
layouts of
these
It is questionable whether
two plans are substantially
The Perry 2255 design does not contain any protected
similar.
elements of the Lennar Bordeaux.
(v)
Summary judgment is appropriate.
Perry argues that
matter
of
law
that
"(i] t
is Lennar's burden to prove as a
specific
elements
of
its
townhouses
are
protected by copyright," and that factual determinations in this
regard
are
to
be
made
by
the
court. 107
Lennar
argues
that
scenes-a-faire and merger are affirmative defenses on which Perry
bares the burden of proof, and that in this case the application of
each doctrine raises fact questions for the jury.108
With respect to Perry's arguments, the law is less than clear.
Copyrightability
of
particular
subject
matter
is,
instances" a matter for the judge.
Nimmer
see Pivot
Charlene Products,
Point
F. Supp. 220,
Intern.,
225
(N.D.
Inc.
Ill.
v.
1996)
§
"in
all
12.10[B], at 12-192;
(Easterbrook,
J.,
Inc.,
932
sitting by
l07Defendant's Additional Briefing on Non-Protected Elements,
Docket Entry No. 72, pp. 7-8.
l08Plaintiff's Supplemental Brief on Substantial Similarity,
Docket Entry NO. 75, p. 10.
-63-
designation)
("Whether
mannequin
heads
in
general,
or
these
mannequin heads in particular, are copyrightable is a question of
law,
which
the
court
will
decide
(perhaps
this
However,
subj ect . ") .
"the
question
usually is viewed as an issue of fact."
n.14; accord Nimmer
at 1297
§
response
to
A jury has nothing to do
dispositive motions soon to be filed)
wi th
in
Noga,
of
originality
168 F. 3d at 1291
12.12, at 12-217; but see Feist, III S. Ct.
(concluding that alphabetical organization of telephone
listings is "an age-old practice, firmly rooted in tradition" and
therefore unoriginal as a matter of law).
Not surprisingly, there
is some split of authority on whether copyrightability "when it
depends
the
(as it usually does)
jury.
2004) .109
Gaiman v.
on originality" is for the judge or
McFarlane,
360
Nevertheless, "authority
F.3d
644,
648
(7th Cir.
supports the view that to
the extent that the defendant challenges the quantum of plaintiff's
originality or creativity as a matter of law, or urges other such
legal challenges to copyright subsistence, these matters should be
resolved solely by the judge."
Nimmer,
§
12.10 [B] [2], at 12 -194.
"But threshold factual determinations in this regard, of course,
are for the jury."
Id.
l09Compare Matthew Bender & Co., Inc. v. West Pub. Co., 158
F.3d 674, 681 (2d Cir. 1998) ("[W]e treat the question of whether
particular elements of a work demonstrate sufficient originality
and creativity to warrant copyright protection as a question for
the
factfinder.") ,
with
Gaiman,
360
F. 3d
at
648
("[C]opyrightability is always an issue of law.").
-64-
As to Lennar's argument,
the
law is also unsettled.
See
Oracle America. Inc. v. Google Inc., 750 F.3d 1339, 1358 (Fed. Cir.
2014) i see generally Nimmer § § 13.03 [B] [3],
Nevertheless,
[B] [4].
as Nola Spice, Zalewski, and other appellate opinions cited above
demonstrate, regardless of which party bears the burden, it would
appear
proper
at
the
summary
judgment
stage
for
courts
to
determine, based on an application of merger and scenes-a-faire to
the evidence in the record, what aspects of a plaintiff's designs
are protectable, and whether a defendant's designs infringe.
If
Perry copied anything,
Lennar's designs.
it
was
the
general
layouts
of
Even if protectability of those layouts is an
issue on which Perry has the burden, and even assuming that it is
a factual matter for the jury to decide,
and taking as correct
Lennar's expert's opinion that there were numerous ways to layout
those
plans
testimony of
that
complied with
Lennar's
the
designer
Development
along with
Criteria,
the
holdings
the
in
analogous cases -- is sufficient to show that Lennar's designs were
so constrained by the lot size, duplex plan, and market demands,
that Lennar's general layouts are unprotectable as a matter of law.
Lennar cannot prove that Perry copied any protectable aspects of
its plans, and summary judgment on Lennar's claims is appropriate.
III.
Other Pending Motions
Although Lennar filed its Motion for Leave and Response to
Perry's Supplemental Brief (Docket Entry No. 84)
-65-
two weeks after
the deadline for supplemental briefing, the court will grant that
motion.
brief,
While this opinion does not thoroughly reference Lennar's
the court has considered it,
and it does not change the
court's conclusions.
Because
the
court
will
grant
Perry's
Motion
for
Summary
Judgment, Perry's pending Motion to Strike Attorneys' Fees Experts
(Docket Entry No. 30) is moot and will be denied.
Perry's pending
Motion to Exclude the Testimony of Plaintiff's Designated Expert
Leonard R. Bachman (Docket Entry No.
generally
reserves
judgment
testimony until trial.
Bachman's
testimony,
on
40)
the
is also moot.
admissibility
The court
of
expert
Without ruling on the admissibility of Mr.
the
court
concludes
that
even
if
that
testimony were admissible, it would not change the outcome in this
case.
IV.
Attorney's Fees
The Copyright Act gives courts discretion to award reasonable
attorney's fees to a prevailing party.
See
§
505.
Although Perry
has not moved to recover attorney's fees, it has sought them in its
answer. 110
The court will therefore address the issue now so as to
avoid any unnecessary motion practice.
110See Defendant's Original Answer to
Amended Complaint, Docket Entry No. 18, p. 7.
-66-
Plaintiff's
Second
Generally, an award of attorney's fees to the prevailing party
in a copyright action "is the rule rather than the exception."
Virgin Records Am., Inc. v. Thompson, 512 F.3d 724, 726 (5th Cir.
2008)
(internal
quotation
marks
and
citation
omitted).
"Nevertheless, recovery of attorney's fees is not automatic."
Id.
" [A]ttorney's fees are to be awarded to prevailing parties only as
a matter of the court's discretion."
114 S. Ct. 1023, 1033 (1994).
Fogerty v.
Fantasy,
Inc.,
There is no precise rule or formula
that a district court must apply in determining whether to award
attorney's fees.
Id.
at 1034.
However,
the Supreme Court has
identified a non-exclusive list of factors that may be considered:
"frivolousness, motivation, objective unreasonableness (both in the
factual and in the legal components of a case)
and the need in
particular circumstances to advance considerations of compensation
and
deterrence."
citation
omitted)
consideration
of
Id.
at
n. 19
Fifth
whether
an
(internal
Circuit
award
quotation
precedent
of
marks
also
attorney's
suggests
fees
generally "promote[] the purposes of the Copyright Act."
and
would
See Hunn
v. Dan Wilson Homes, Inc., No. 13-11297, 2015 WL 3687674, at *12-13
(5th Cir. June 15, 2015).
Two points should be abundantly clear from the length and
complexity of this opinion and the court's request for additional
briefing from the parties:
(1)
Lennar's claims involve multiple
-67-
areas
of
unsettled
law,
determinable ex ante.
lacked merit.
and
(2)
the
outcome
was
by
no
means
Many of Perry's arguments ultimately
Lennar's claims and its attorneys' legal positions
were neither frivolous nor objectively unreasonable, and the court
sees
no
compelling reason
to
parties in Lennar's position.
compensate
Perry or deter other
Furthermore, given the close nature
of the factual and legal questions at issue in this case and the
substantial evidence of factual copying by Perry, penalizing Lennar
would not promote the purposes of the copyright act.
will
therefore
be
responsible
for
its
own
Each party
costs,
including
attorney's fees.
v.
Conclusions and Order
The court concludes that any similarities between Lennar's
copyrighted
designs
and
Perry's
allegedly
infringing
pertain to unprotectable elements of Lennar's designs.
Motion for Summary Judgment
(Docket Entry No.
22)
(Docket Entry No. 84)
Perry's Motion to Strike Attorneys'
30)
and
Motion
For the
Lennar's Motion for Leave and Response to
Perry's Supplemental Brief
No.
Perry's
is therefore
GRANTED, and this action will be dismissed with prejudice.
reasons stated above,
designs
to
Exclude
-68-
the
is GRANTED, and
Fees Experts
Testimony
(Docket Entry
of
Plaintiff's
Designated Expert Leonard R.
Bachman
(Docket Entry No.
40)
are
DENIED AS MOOT.lll
SIGNED at Houston, Texas, this 24th day of July, 2015.
7 S i M LAKE
UNITED STATES DISTRICT JUDGE
lllThe court has allowed the parties extraordinary leeway in
submitting lengthy briefs and other written materials in connection
with the pending motion. As the length of this Memorandum Opinion
and Order indicates, the court has expended considerable time
reading these papers and performing a significant amount of
independent research to be as fully informed as possible when
addressing the parties' arguments.
While, because of the sheer
volume of information presented, it is not impossible that some
arguments were overlooked, the parties should assume that failure
to expressly address a particular argument in this Memorandum
Opinion and Order reflects the court's judgment that the argument
lacked sufficient merit to warrant discussion.
Accordingly, the
court strongly discourages the parties from seeking reconsideration
based on arguments they have previously raised or that they could
have raised.
-69-
APPENDIX
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