Court Rules Williamsburg House Does Not Infringe Architectural Copyright
Litigating Intellectual Property Cases in the Rocket Docket
Court Rules Williamsburg House Does Not Infringe Architectural Copyright
In a rare case construing the copyrightability of architectural works, the United States District Court for the Eastern District of Virginia granted the defendants’ motions for summary judgment that a custom Colonial-style house built in Williamsburg, Virginia, did not infringe the plaintiff’s copyright in plans for similar houses. Charles W. Ross Builder, Inc. v. Olsen Fine Home Building, LLC, __F. Supp. 2d__, 2011 WL 4590003 (E.D. Va. Sept. 29, 2011).
In 2009 defendants Rick and Jennifer Rubin toured the plaintiff’s "Bainbridge" model house in the exclusive Ford’s Colony section of Williamsburg and left with a "For Sale" brochure containing photographs and sale prices of the model. The plaintiff subsequently sent to the Rubins its copyrighted "Places to Call Home" portfolio. The portfolio included an artist’s rendering of the "Bainbridge" house as it might be seen from the street and a floor plan outlining the rooms on the first and second floors. But instead of contracting with the plaintiff, the Rubins commissioned the other defendants to design and build the Rubin’s Ford Colony house, which the plaintiff alleged violated its copyright in the design of the "Bainbridge."
Prior to 1990 architectural plans received copyright protection only as "technical drawings" within the statutory class of "pictorial, graphic, and sculptural works," and buildings themselves were not subject to copyright protection. The Architectural Works Copyright Protection Act of 1990 expressly extended copyright protection to the design of buildings as embodied in any tangible medium of expression, whether in plans, drawings, or in the buildings as constructed. Under that act, an architectural work is deemed to include the overall form or shape of a building as well as the arrangement and composition of spaces and elements in the building, but not standard features such as doors, windows, and the like.
A copyright plaintiff must prove that it owns and had registered its copyright and that the defendant, without authorization by the plaintiff, exercised one of the exclusive rights of the copyright owner—for example, by copying the protected work. In this case the court found that the plaintiff owned and had registered copyrights in the "Bainbridge" design. The court also found that because the act of copying is often difficult to prove, the plaintiff could establish copying indirectly by showing that the defendants had access to the "Bainbridge" design, and that the design of the Rubin’s house was substantially similar to the "Bainbridge" design. The court said that because the defendants had seen the plaintiff’s portfolio, the court presumed the defendants had access to the "Bainbridge" design.
The crux of the decision was the issue of substantial similarity. The court said that although the "Bainbridge" design has enough originality to qualify for copyright protection, "the scope and degree of that protection is quite limited for two distinct, but related reasons."
First, architectural works, like compilations as such databases, directories, or lists, typically receive only "thin," or limited, copyright protection. The court said that proving infringement of a work subject to thin copyright protection requires a showing of "supersubstantial" similarity. Second, because the "Bainbridge" design is based on a traditional Colonial design and "heavily borrows from the public domain," the design is entitled to narrower copyright protection than a wholly original work.
The plaintiff’s amended complaint listed 32 features common to both houses that the plaintiff claimed made the Rubin’s house "substantially similar" to the "Bainbridge" house. However, the court held that a number of those features—basement foundations, ceiling heights, etc.—are so standard or common that they are unprotectable. The court also said that because both houses were in a Colonial style, certain architectural features in which the plaintiff claimed copyright, were either indispensable to that style or so common in that style as to be unprotectable.
The court held that nearly all of the similarities between the Bainbridge and Rubin houses resulted from being based on a Colonial style or from complying with the building restrictions of Ford’s Colony. Thus, the court held that "the two homes are not substantially similar, let alone supersubstantially similar." The court also found no merit in the plaintiff’s claims that the defendants had removed the plaintiff’s name and copyright notice from the plaintiff’s plans or that the defendants had attempted to pass off the plaintiff’s plans as their own. Accordingly, the court granted the defendants’ motions for summary judgment. An appeal to the United States Court of Appeals for the Fourth Circuit is now pending.
Litigating Intellectual Property Cases in the Rocket Docket
The United States District Court for the Eastern District of Virginia is a highly advantageous forum for bringing an intellectual property (IP) lawsuit. Unlike most other federal courts, which can take several years to bring a case to trial, the Eastern District usually schedules trials to begin approximately eight months after the filing of the complaint. According to the United States Courts’ Judicial Caseload Profile Report, between 2006 and 2011 the Eastern District was the fastest - from filing to trial - out of all 94 federal district courts.
A recent study published in the Quarterly Journal of the American Intellectual Property Law Association found that, with respect to results, the Eastern District is statistically no more plaintiff or defendant-friendly than other courts. For example, between 2000 and 2010, claimants in the Eastern District were victorious 30.4 percent of the time as compared to an average claimant victory percentage of 32.5 percent in all federal district courts.
Although the Eastern District does not provide an IP plaintiff an advantage with respect to likelihood of success, the court nonetheless provides two very substantial advantages compared to other federal districts. First, defendants find it far more difficult to conduct an expensive "scorched-earth" defense. The per-month cost of discovery is higher, but because the number of months of discovery is far shorter, the final total cost is usually considerably less. For example, only so many depositions can be taken and so many hearings held in a discovery window of just three to five months. For an IP plaintiff on a limited budget, that cost-effectiveness is a rare advantage.
Second, an IP plaintiff has the ability to stop an infringing use far more quickly. When a competitor is unfairly using one’s IP in the marketplace, every month that the situation is not corrected can add to lost sales. If the case drags on for years, the defendant’s unfair competitive advantage may become irreversible—even if the plaintiff ultimately wins.
The "Rocket Docket" also fosters quicker settlements. When a defendant knows that it will not be able to outspend an IP plaintiff, and that within eight months it will be forced to defend its actions in front of a judge or jury, negotiating a reasonable settlement immediately becomes a much more rational business decision. That fact obviously alters the dynamics of settlement negotiations. Accordingly, an IP plaintiff in the Eastern District may be able to obtain a more reasonable licensing fee or better terms for discontinuance of the infringement.
Although the Rocket Docket affords an IP plaintiff a more even playing field, it is important to remember that speed can cut both ways. A plaintiff that files a case before being prepared, or one that retains counsel unfamiliar with the court’s local rules, may find itself at a disadvantage.
Thus, we strongly recommend that anyone planning to file a complaint in the Eastern District of Virginia first think through the case, identify what discovery and experts will be necessary, identify which issues will be in dispute (including, for a patent case, issues in a potential Markman hearing), and have a game plan tailored to the fast-track schedule that will result. Then, when ready, file the complaint and get ready to ride the Rocket!