Second Circuit Clarifies Scope Of Architectural Copyrights
The United States Court of Appeals for the Second Circuit in Zalewski v. Cicero Builder Dev. Inc., et al., Case No. 12-3448-cv (decided June 5, 2014) has finally provided some definitive guidance to copyright holders and litigants, not to mention architects, construction companies, developers and real estate agents, on the elusive concepts involved in copyright infringement cases involving architectural works. The decision is available here.
The copyrightability of architectural works is only a few decades old. Such works were not specifically copyrightable under the Copyright Act of 1976 until the enactment of The Architectural Works Protection Act of 1990, which became law in the wake of the United States becoming a signatory to the international copyright treaty, the Berne Convention, in 1989. Among other things, the Berne Convention required signatories to protect architectural works. As a result of this relatively recent change in the law, there have been limited decisions interpreting the scope of protection for architectural works, and only recently, appellate court guidance on the subject.
The Zalewski panel provides a contextual, historical and logical primer on copyrights in general, an overview on the protection of architectural works, and guidance on how a court should assess architectural works in the infringement context. Instead of trying to fit architectural works into the three “buckets” of “creative, derivative or compiled” works as the Eleventh Circuit suggested in Intervest Construction Inc. v. Canterbury Estate Homes, Inc., 554 F.3d 914, 919 n.3 (11th Cir. 2008), the Second Circuit simplifies the analysis by opining that “[a]rchitecture . . . is like every art form.” Thus rejecting the notion that “works always fall neatly into one of the categories” defined by the Intervest Court, the Zalewski Court instead says that architectural works should be treated the same way as any other copyrightable work, and that the challenge, as with all copyright cases, is “not to determine whether a work is a creative work, a derivative work, or a compilation, but to determine what in it originated with the author and what did not.”1 (Emphasis added.)
Thus, to make out a claim of copyright infringement for an architectural work, or indeed, any work, a plaintiff must establish 1) that his work is protected by a valid copyright; 2) that the defendant copied his work; and 3) that the copying was wrongful. See, e.g., Arnstein v. Porter, 154 F.2d 464, 468, 472-73 (2d Cir. 1946); Laureyssens v. Idea Grp., Inc., 964 F.2d 131, 139-41 (2d Cir. 1992). The distinctions between elements two and three are critical in determining infringement, as not every portion or aspect of a work is entitled to copyright law protection. Copying unprotectable aspects of a work is not wrongful. Thus, not all copying is infringing (and thus, actionable).
The Court cautioned that the mere similarity between the work and a copy is not dispositive. When “an original work contains many unprotected elements, however, a close similarity between it and a copy may prove only copying, not wrongful copying.” (Emphasis in original.) The similarity may derive from the unprotected elements. Thus, the term “substantial similarity” is “properly reserved for similarity that exists between the protected elements of a work and another work.” If two works are “substantially similar,” any copying must be of protectable elements of the work and thus “wrongful.” See Laureyssens, 964 F.2d at 140. In contrast, “similarity that relates to unprotected elements is probative only of copying – not wrongful copying – and is referred to as ‘probative similarity.’” Id.
As the Second Circuit also noted, “[d]etermining the boundaries of copyright protection in non-traditional areas of creative expression, like architecture, is nothing new.” Citing the Court’s prior decision in Computer Associates Int’l, Inc. v. Altai, Inc., 92 F.2d 693 (2d Cir. 1992) which addressed the scope of copyright infringement in the computer program context, Judge Wesley reiterated that historical limits on copyrightablility, such as the doctrines of merger, public domain, and scènes-à-faire, are just as applicable in determining whether copying and wrongful copying have occurred in the architectural works context. See e.g., Sparaco v. Lawler, Mutusky, Skelly, Engineers LLP, 303 F.3d 460, 467(2d Cir. 2002) (holding “there can be no copyright in a plan insofar as it merely represents the topography of a building site”); Attia v. Society of the New York Hospital, 201 F.3d 50, 55 (2d Cir. 1999) (holding that “‘generalized notions of where to place functional elements, how to route the flow of traffic, and . . . methods of construction’ are unprotectable”); Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57, 68 (2d Cir. 2010) (holding “there is no copyright in a building plan’s design parameters . . . Constraints placed on an architect by the way her client plans to use the building do not originate with the architect”).
Ultimately, the Zalewski Court was unpersuaded by the plaintiff’s allegations that his colonial home designs were infringed because only the unprotected elements of his designs were copied. Although the Court found that the designs were “in many respects, quite close . . . this [was] not enough. It prove[d] at most copying, not wrongful copying.” For instance, many of the similarities were a “function of consumer expectations and standard housing design generally.”
The Court remained unconvinced that the plaintiff should get “credit for putting a closet in every bedroom, a fireplace in the middle of an exterior wall, and kitchen counters against the kitchen walls.” The “overall footprint of the house and the size of the rooms” were “‘design parameters’ dictated by consumer preferences . . . not the architect.” Additionally, the designs contained “features of all colonial homes, or houses generally.” The Court emphasized that as long as the plaintiff “was seeking to design a colonial house, he was bound to certain conventions. He cannot claim copyright in those conventions.” For instance “[t]here are only so many ways to arrange four bedrooms upstairs and a kitchen, dining room, living room, and study downstairs.” Characterizing the plaintiff’s copyright as “very thin[,]” the Court held the defendants’ “houses shared [p]laintiff’s general style, but took nothing from his original expression.”
The Court also provided some guidance on the fee shifting provisions of the Copyright Act, and the lower court’s award of attorneys fees to the prevailing defendants, but remanded the issue for further assessment under the proper rubric for the copyrightability of architectural works.
1 In fact, the Zalewski Court also noted that this approach is consistent with the legislative history. “When Congress added architectural works to the list of copyrightable subject matter, it made clear that it wanted architectural works analyzed no differently than other works . . . Intervest contravenes Congress’ intent by treating architectural works differently than other works and failing to determine what in architecture – beyond mere arrangement – is copyrightable.”
Hiscock & Barclay has extensive experience in establishing, protecting, commercializing, and enforcing brands, trademarks, and copyrights, both domestically and internationally. Should you have any questions regarding the issues raised in this Legal Alert, please contact Michael A. Oropallo, Bella S. Satra or any member of the Branding, Trademarks & Copyrights Practice Area.