T.S. ELLIS, III, District Judge.
This is an architectural works copyright infringement action. Plaintiff claims that defendants' design and construction of the high-rise apartment building known as "Two Park Crest" in McLean, Virginia, infringes plaintiff's architectural works copyright embodied in a high-rise condominium building in Minneapolis, Minnesota, known as Grant Park. Defendants deny infringement, contending that they did not copy the Grant Park design and that the Two Park Crest design is not substantially similar to, and hence does not infringe the Grant Park design. Defendants also assert various counterclaims and defenses, including a challenge to the validity of the copyright and to its enforceability. Following full discovery, the parties filed numerous motions, cross-motions, and partial motions for summary judgment, all of which have been fully briefed and are now ripe for disposition.
Plaintiff Humphreys & Partners Architects, L.P. ("Humphreys") is a limited partnership organized under the laws of Texas with its principal place of business in Dallas, Texas. Humphreys claims to be the author and sole owner of the copyright in the Grant Park design, which is registered as an architectural work with the United States Copyright Office as Number VAu 579-008, with an effective date of February 19, 2003. Mark Humphreys ("Mr. Humphreys") is the founder, president, and CEO of Humphreys.
The nine defendants currently in this case fall into four groups: (1) the Lessard defendants, (2) the Penrose defendants, (3) the Northwestern defendants, and (4) Clark Builders Group.
Defendant Lessard Design, Inc. ("Lessard Design") is a corporation organized under the laws of Virginia with its principal place of business in Vienna, Virginia. After the dissolution of Lessard Urban Inc. ("Lessard Urban")—the entity originally hired to design the Two Park Crest project—the dissolved company's revenues flowed into Lessard Design. Thus, Lessard Design is the successor to Lessard Urban as the designer of Two Park Crest. Lessard Design is a subsidiary of co-defendant Lessard Group Inc. ("Lessard Group"), a corporation organized under the laws of Virginia with its principal place of business in Vienna, Virginia. Lessard Group is the parent corporation of co-defendant Lessard Design.
Defendant Christian J. Lessard ("Mr. Lessard"), an architect who resides in Virginia, is the sole shareholder of Lessard
Defendant The Penrose Group, which has its principal place of business in Vienna, Virginia, is an ongoing enterprise of individuals who have joined together by mutual consent for the purpose of creating and promoting various real estate and other development projects. Once development activities for a particular project have proceeded to a certain point, The Penrose Group forms one or more project-specific companies to manage the development project. Individuals who are members of The Penrose Group include Mark Gregg, Olav Kollevoll, Tim McDonald, and Ron Testa. The Penrose Group was involved in the development of Two Park Crest as early as 2008. In 2010, The Penrose Group was responsible for soliciting design services proposals for Two Park Crest and for eventually hiring Lessard Urban as the architect for the project.
Defendant Sixth Penrose Investing Company LLC ("Sixth Penrose") is a limited liability investment company organized under the laws of Virginia with its principal place of business in Vienna, Virginia. The Penrose Group created Sixth Penrose in early 2011 as a single-purpose entity to enter into a joint venture with an unrelated company—The Donohoe Companies, Inc. ("Donohoe")—to create PDT Builders LLC ("PDT"), a limited liability company organized under the laws of Virginia with its principal place of business in Vienna, Virginia, for the purpose of managing the development of the Two Park Crest project.
In the parlance of the real estate development industry, PDT was the "fee developer" for the Two Park Crest project. As a majority investing member, Sixth Penrose has a 70% stake in PDT and Donohoe has a 30% stake in PDT. The Penrose Group, Sixth Penrose, and PDT are collectively referred to as the "Penrose defendants."
Defendant The Northwestern Mutual Life Insurance Company ("Northwestern Mutual") is a corporation organized under the laws of Wisconsin with its principal place of business in Milwaukee, Wisconsin. In January 2011, Northwestern Mutual purchased the Two Park Crest property from The Penrose Group and hired PDT to facilitate the development of the Two Park Crest project and to coordinate the efforts of the contractor, the architect, and other entities hired to perform work for the development project on Northwestern Mutual's behalf.
Defendant Northwestern Investment Management Company, LLC ("Northwestern Investment") is a limited liability company organized under the laws of Wisconsin with its principal place of business in Milwaukee, Wisconsin. Northwestern Investment is a subsidiary of Northwestern Mutual and is responsible for Northwestern Mutual's real estate management functions. Northwestern Mutual and Northwestern Investment are collectively referred to as the "Northwestern defendants."
Defendant Clark Builders Group, LLC ("Clark") is a limited liability company organized under the laws of Maryland with its principal place of business in Bethesda, Maryland. Northwestern Mutual contracted with Clark to construct the Two Park Crest project. Clark obtained the building permit for the project on March 22, 2012.
The following table summarizes the nine co-defendants and their relationship to Two Park Crest:
Defendant Group Defendant (if any) Relationship to Two Park Crest (1) Lessard Design, Inc. "Lessard When Lessard Urban Inc. ("Lessard Design") defendants" ("Lessard Urban")—the entity originally hired to design the Two Park Crest project—was dissolved, its revenues flowed into Lessard Design. (2) Lessard Group Inc. ("Lessard Group") Parent corporation of Lessard Design. (3) Christian J. Lessard ("Mr. Sole shareholder of Lessard Design; Majority Lessard") shareholder (90%) of Lessard Urban. (4) The Penrose Group "Penrose Fee developer for Two Park Crest; Solicited defendants" design services proposals for Two Park Crest; Hired Lessard Urban as the architect for Two Park Crest. (5) Sixth Penrose Investing Single-purpose entity created by The Penrose Company LLC ("Sixth Penrose") Group; Majority investing member and joint venture partner in PDT. (6) PDT Builders, LLC ("PDT") Single-purpose entity formed as joint venture between Sixth Penrose and an unrelated company; Hired by Northwestern Mutual to facilitate development of Two Park Crest and to coordinate the contractor, architect, etc. on behalf of Northwestern Mutual, for a fee. (7) The Northwestern Mutual Life Owner of Two Park Crest property since January Insurance Company 2011. ("Northwestern Mutual") "Northwestern defendants"
(8) Northwestern Investment Subsidiary of Northwestern Mutual responsible Management Company, LLC for the entity's real estate management ("Northwestern Investment") functions. (9) Clark Builders Group, LLC N/A Responsible for construction of ("Clark") Two Park Crest.
The allegedly protected Grant Park design originally appeared in architectural plans and drawings, and thereafter was embodied in a building constructed in 2004 in Minneapolis, Minnesota known as the Grant Park Condominium building. Grant Park is a 27-story condominium building with an average of 11 condominium units per floor. The Grant Park design features two elevator shafts that offer direct access from residential units to elevator lobbies.
The allegedly infringing Two Park Crest building, which is currently being developed in McLean, Virginia, is a 19-story apartment building with an average of 17 rental units per floor. Two Park Crest also features two elevator shafts that offer direct access from residential units to elevator lobbies.
In developing the Two Park Crest apartment project, The Penrose Group considered three architects: (i) Lessard Urban/Design,
Subsequently, on November 2, 2010, The Penrose Group selected Lessard Urban/Design to design the Two Park Crest project. According to The Penrose Group, Lessard Urban/Design was selected for three reasons:
Tim McDonald of The Penrose Group informed Humphreys of the decision to hire Lessard Urban/Design on November 17, 2010. Following Northwestern Mutual's purchase of Two Park Crest from the Penrose Group in January 2011, the Northwestern defendants entered into a contract with Lessard Urban/Design, which gave Northwestern Mutual control over the design throughout the design process. Lessard Urban/Design architect John Jenkins ("Mr. Jenkins") served as principal architect on the Two Park Crest project until he left Lessard Urban/Design,
In early 2011, The Penrose Group created Sixth Penrose as a single-purpose entity to form a joint venture with Donohoe, and this joint venture in turn created PDT for the purpose of managing the development of the Two Park Crest project. Under PDT's operating agreement, Sixth Penrose has a 70% stake and Donohoe has a 30% stake in PDT. PDT and Northwestern Mutual entered into a Development Agreement in January 2011, pursuant to which Northwestern Mutual hired PDT as a fee developer to facilitate the development of the Two Park Crest project and to coordinate the efforts of the contractor, the architect, and other entities hired to perform work for the development project on Northwestern Mutual's behalf.
In mid-2010, Northwestern Investment began examining the possibility of purchasing the Two Park Crest property from The Penrose Group, with The Penrose Group staying involved as a fee developer. Thereafter, in October 2010, Northwestern Mutual sent a non-binding letter of intent to The Penrose Group. Then, in December 2010, the parties executed a binding contract, and Northwestern Mutual's acquisition of Two Park Crest closed in January 2011. The purchase included the architectural plans prepared by Lessard Urban/Design. Thus, the Northwestern defendants were engaged in negotiations to purchase Two Park Crest during the same time period—October 2010 through January 2011—that The Penrose Group was soliciting design bids and ultimately selecting Lessard Urban/Design as the architect for Two Park Crest. And in January 2011, both (i) Northwestern Mutual's acquisition of Two Park Crest and (ii) Northwestern Investment's contract with Lessard Urban/Design were finalized.
In the fall of 2011, PDT representatives requested proposals for the construction of Two Park Crest. To permit potential builders to submit accurate bids, PDT distributed to bidders a "Construction Set" of the building documents for Two Park Crest prepared by Lessard Urban/Design. This Construction Set of building documents sets forth detailed requirements for the construction of the building project, including illustrative drawings and written requirements relating to building materials
Humphreys' claim of copying is premised on two undisputed facts. First, in January 2005, Mr. Lessard attended a conference in Orlando, Florida, at which Mr. Humphreys gave a presentation titled "What's Hot in Multifamily Design." The presentation included images of the Grant Park design. Second, on November 3, 2010, during the Two Park Crest architect bidding and selection process, Tim McDonald sent Mr. Lessard and Mr. Jenkins an email containing the Grant Park design. Humphreys alleges that, after seeing the Grant Park design on those two instances, the Lessard defendants copied the Grant Park design and used that copied design for the Two Park Crest project.
On April 9, 2013, Humphreys filed an action alleging one count of copyright infringement of the Grant Park design against all defendants, pursuant to 17 U.S.C. § 101 et seq. A series of motions to dismiss and amended complaints ensued, finally resulting in the filing, on October 4, 2013, of the Third Amended Complaint, which also alleges one count of copyright infringement against all defendants.
Defendants, in response, each denied copying and infringement and asserted various counterclaims against Humphreys. Specifically, defendants brought counterclaims for: (i) declaratory judgment of non-infringement (brought by the Lessard defendants, the Penrose defendants, and Clark); (ii) declaratory judgment of unenforceability (brought by the Lessard defendants, the Penrose defendants, and Clark); (iii) declaratory judgment of invalidity (brought by the Lessard defendants, the Penrose defendants, and Clark); (iv) false advertising pursuant to 15 U.S.C. § 1125(a)(1)(B) (brought by the Lessard defendants); and (v) copyright violation pursuant to 17 U.S.C. § 101 et seq., arguing that Humphreys copied the Grant Park design from Lessard Design's Harbor Towers design, which is the subject of two pending copyright applications (brought by Lessard Design).
After full discovery, the parties filed the following seven motions, cross motions, and partial motions for summary judgment:
The summary judgment standard, which the parties do not dispute, is too well-settled to merit extended discussion. Summary judgment is appropriate where "the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Rule 56, Fed.R.Civ.P. It is settled that "the burden on the moving party may be discharged by `showing'—that is, pointing out to the district court—that there is an absence of evidence to support the non-moving party's case." Celotex Corp. v. Catrett, 477 U.S. 317, 325, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). And all evidence and reasonable inferences that may be drawn from that evidence must be construed in the light most favorable to the nonmoving party. Dash v. Mayweather, 731 F.3d 303, 311 (4th Cir.2013). Yet, it is clear that "[t]he mere existence of a scintilla of evidence in support of the plaintiff's
Prior to 1990, United States copyright law did not afford protection to architectural works. See 1 Nimmer on Copyright § 2.20(A). This changed in 1990 when Congress, in response to the requirements of the Berne Convention, enacted the Architectural Works Copyright Protection Act ("AWCPA"), which amended the Copyright Act to provide that "[c]opyright protection subsists . . . in original works of authorship fixed in any tangible medium of expression, . . . [including] architectural works." 17 U.S.C. § 102(a). The AWCPA defines an "architectural work" as "the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings." 17 U.S.C. § 101. Thus, architectural works are protectable either as three-dimensional buildings or as two-dimensional plans or drawings. See 1 Nimmer on Copyright § 2.20(A). The AWCPA also makes clear that the protected work "includes the overall form as well as the arrangement and composition of spaces and elements in the design." 17 U.S.C. § 101. But importantly, this copyright protection does not extend to "individual standard features." Id. Examples of such individual standard features include "windows, doors, and other staple building components." Charles W. Ross Builder, Inc. v. Olsen Fine Home Bldg., LLC, 496 Fed.Appx. 314, 317 (4th Cir.2012) (citing 37 C.F.R. § 202.11(d)(2)) [hereinafter Ross II]. In addition to these standard features, "standard configurations of spaces"
Copyright infringement requires proof of two elements: "a plaintiff must prove [i] that it owned a valid copyright and [ii] that the defendant copied the original elements of that copyright." Bldg. Graphics, Inc. v. Lennar Corp., 708 F.3d 573, 578 (4th Cir.2013) (quoting Lyons P'ship, L.P. v. Morris Costumes, Inc., 243 F.3d 789, 801 (4th Cir.2001) (emphasis added)). With respect to the first step of the inquiry, a certificate of copyright registration "constitutes[s] prima facie evidence of the validity of the copyright and of the facts stated in the certificate." 17 U.S.C. § 410(c). Yet, "this presumption is fairly easy to rebut because the Copyright Office tends toward cursory issuance of registrations." Universal Furniture Int'l, Inc. v. Collezione Europa USA, Inc., 618 F.3d 417, 430 (4th Cir.2010).
The second step of the inquiry requires not only a showing that a defendant
Copyright infringement may be proven through either direct evidence of copying or, as is more common, circumstantial evidence of copying. Bldg. Graphics, 708 F.3d at 578. Where, as here, direct evidence of copying does not exist, a plaintiff "may create a presumption of copying by indirect evidence, establishing that the defendant had access to the copyrighted work and that the defendant's work is `substantially similar' to the protected material." Id. (internal citations omitted). The substantial similarity inquiry "asks whether a defendant copied the `original elements' of a copyright." Universal Furniture, 618 F.3d at 436 (quoting Lyons, 243 F.3d at 801). In 1977, the Ninth Circuit articulated a test for substantial similarity that bifurcates the inquiry into: (i) a test for similarity of ideas, labeled as the "extrinsic test," and (ii) a test for similarity in the expression of those ideas, labeled as the "intrinsic test." Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157, 1164 (9th Cir.1977), superseded on other grounds by 17 U.S.C. § 504(b).
Extrinsic similarity, the first prong of the analysis, "is an objective inquiry, which requires consideration of `external criteria of substantial similarities in both ideas and expression.'" Ross II, 496 Fed.Appx. at 318 (quoting Universal Furniture, 618 F.3d at 435-36). Because extrinsic similarity is an objective inquiry, it
Whereas extrinsic similarity is an objective inquiry, intrinsic similarity is a subjective inquiry that turns on the "total concept and feel of the works, but only as seen through the eyes of the . . . intended audience of the plaintiffs work." Universal Furniture, 618 F.3d at 436 (emphasis in original). The intrinsic similarity test asks whether "the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same." Id. (quoting Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir.1960)). Importantly, "analytic dissection of protected and unprotected elements is inappropriate under the intrinsic prong, given that the ordinary observer does not make this distinction." Id. at 437. And because the intrinsic similarity prong is a subjective inquiry, it generally does not involve the use of expert testimony. See Ross II, 496 Fed.Appx. at 319.
Thus, the two elements required to prove copyright infringement are (i) a valid copyright, and (ii) copying of the protectable original elements of that copyright. Lyons, 243 F.3d at 801. And where, as here, direct evidence of copying is lacking, a plaintiff may create a presumption of copying by showing that (i) "defendant had access to the copyrighted work," and (ii) "that the defendant's work is `substantially similar' to the protected material." Id. (internal citations omitted). Therefore, analysis of whether the Two Park Crest design infringes the Grant Park copyright consists of the following inquiries: (1) whether Humphreys holds a valid copyright in the Grant Park design, (2) whether Humphreys has established that defendants had access to the Grant Park design, and (3) finally, whether the Grant Park design and the Two Park Crest design, viewed through the lens of the extrinsic/intrinsic test, are substantially similar. Each of these inquiries is separately addressed.
Humphreys seeks partial summary judgment on the issue of the validity of the Grant Park design copyright. See Rule 56(a), Fed.R.Civ.P. ("A party may move for summary judgment, identifying each claim or defense—or the part of each claim or defense—on which summary judgment is sought."). In response, defendants argue that summary judgment on this issue is inappropriate as genuinely disputed material facts exist bearing on the copyright's validity.
In support of its request for partial summary judgment on validity, Humphreys relies chiefly and essentially on its Certificate of Registration for the Grant Park design copyright. To be sure, Humphreys is correct that its Certificate establishes a "presumption of a valid copyright." See Innovative Legal Mktg., LLC v. Market Masters-Legal, 852 F.Supp.2d 688, 698 (E.D.Va.2012). Yet, the Certificate, by itself, does not carry the day for Humphreys, for as the Fourth Circuit has explained, "this presumption is fairly easy to rebut because the Copyright Office tends toward cursory issuance of registrations." Universal Furniture, 618 F.3d at 430. To rebut the presumption created by the Certificate,
It is true that Humphreys' copyright is not invalid merely because the nine Grant Park design features on which Humphreys relies are not individually protectable; the AWCPA also protects "the overall form as well as the arrangement and composition of spaces and elements in the design." 17 U.S.C. § 101. But notably, AWCPA protection does not extend to "standard configurations of spaces" and design elements that are functionally required. See 37 C.F.R. § 202.11(d)(2); Ross III, 977 F.Supp.2d at 593. Therefore, if Humphreys' arrangement is not purely utilitarian, mandated by building code requirements or standard architectural practices, that arrangement may warrant protection under the AWCPA. In this respect, it is settled that Humphreys is "obliged to show" that the features of its design are "conceptually separable" from the design's "utilitarian aspects" in order to demonstrate the validity of its copyright. See Universal Furniture, 618 F.3d at 429-32.
Yet, no such showing appears in the summary judgment record. Instead, this record reflects that the arrangement of certain building features Humphreys claims warrant copyright protection-such as exit stairwells adjacent to the elevators and a service corridor connecting a mechanical/electrical room and trash chute—are attributable to building code requirements, not aesthetic considerations. Thus, the arrangement of these features in the Grant Park design is a standard configuration not protectable under the AWCPA. 37 C.F.R. § 202.11(d)(2). Indeed, Humphreys' expert acknowledged the influence of building code regulations on the Grant Park design. See Oral and Videotaped Deposition of Daniel Figert at 142: 4-7 ("Q. Is there any state in which an exit stairway would not be mandated by building code in a high-rise residential building? A. Not that I'm aware of. No sir."). Similarly, Humphreys' expert conceded that the Lessard defendants' placement of service corridors in the Two Park Crest design was required by Fairfax building code. Id. at 108: 9-12 ("Q. So Lessard really didn't have any choice; it was required to put a fire or service corridor between the two lobbies, wasn't it? A. It is a requirement of the codes."). The summary judgment record also demonstrates that Humphreys' placement of the service corridors in the Grant Park design was functionally required. See 30(b)(6) Videotaped Deposition of Mark E. Humphreys at 187: 14-22 ("Q. Okay. Is that a yes or a no that a service corridor connecting the staircases is a code requirement? A. If I took my design to Fairfax County, it would be the same as Minneapolis. It has to be connected. Q. Because it's required by code, right? A. Well I'm doing it as a fire corridor. Yes."). This evidence confirms that Humphreys has failed to carry its burden as the movant to adduce evidence that the arrangement of features in the Grant Park design was not utilitarian in nature; indeed, Humphreys does not address defendants' argument that Humphreys' arrangement is functional in any of its supporting summary judgment materials.
Thus, Humphreys is not entitled to summary judgment on the validity of its copyright. Yet, no final ruling on the validity of Humphreys' copyright is reached here,
It is settled in the Fourth Circuit that "[a]ccess may be shown by demonstrating that the infringer had an opportunity to view or to copy the protected material." Bldg. Graphics, 708 F.3d at 578. But importantly, "this showing must establish more than a mere possibility that such an opportunity could have arisen; it must be reasonably possible that the paths of the infringer and the infringed work crossed." Id. (quoting Ale House Mgmt., 205 F.3d at 143). And access may be inferred if there is a reasonable possibility that the alleged infringer had access through "a third party intermediary who has a close relationship with the infringer." Towler, 76 F.3d at 583.
For the purposes of summary judgment, the Lessard defendants and the Penrose defendants do not dispute that they had access to the Grant Park design. Although Lessard Design and the Lessard Group do not dispute access in their motion for summary judgment, Mr. Lessard, in his separate motion for summary judgment, argues that summary judgment is appropriate for him because he did not perform any of the acts alleged to constitute copyright infringement in his individual capacity. Similarly, although the Penrose defendants do not dispute access in their collective motion for summary judgment, Sixth Penrose, in a separate motion for summary judgment, argues that, as an investment company that played no role in the design or construction of the allegedly infringing design, it cannot be found liable for infringement. In addition, the Northwestern defendants and Clark argue that they are entitled to summary judgment on the issue of access (and hence infringement) because the record reflects that they were not involved in the Two Park Crest project at the time that the allegedly infringing plans were developed. Each of these issues is addressed separately.
Mr. Lessard, in a separate motion for summary judgment, argues that summary judgment is appropriate with regard to him because he individually had no access to the Grant Park design. Yet, Humphreys has proffered evidence that Mr. Lessard had an opportunity to view or copy the protected material, including: (i) the 2005 conference in Orlando, and (ii) the 2010 email from McDonald containing the Grant Park design. See Part I.B.5, supra. Although Mr. Lessard was not the lead architect on the Two Park Crest project, it is undisputed (i) that he was a majority shareholder in Lessard Urban/Design, (ii) that he worked on the project as a consultant,
Sixth Penrose, in a separate motion for summary judgment based on lack of access, argues that as an investment company that played no role in the design or construction of the allegedly infringing design, it cannot be found liable for infringement. Humphreys responds that there is a genuine issue of material fact on whether Sixth Penrose may be held vicariously liable for copyright infringement.
Although there is no Fourth Circuit authority on when a parent company may be held vicariously liable for copyright infringement by a subsidiary, persuasive authority from other circuits holds that a parent company is vicariously liable for the infringing acts of a subsidiary where there is "a substantial and continuing connection between the two with respect to the infringing acts." Frank Music Corp. v. Metro-Goldwyn-Mayer Inc., 886 F.2d 1545, 1553 (9th Cir. 1989); see also Howard Johnson Co., Inc. v. Khimani, 892 F.2d 1512, 1518 (11th Cir.1990). In other words, for vicarious liability to attach, the parent must supervise and have a financial interest specifically in the infringing activity. Humphreys has proffered sufficient evidence to create a triable issue of fact on this issue.
It is undisputed that Sixth Penrose is a single purpose entity formed solely as an investment vehicle for Two Park Crest. As the 70% investor and Manager of PDT, Sixth Penrose was able to supervise and control PDT, and Sixth Penrose's corporate representative testified accordingly. See Plaintiff's Opposition to Defendant Sixth Penrose Investing Company LLC's Motion for Summary Judgment, Doc. 254, Ex. A. at 183:18-184:10 ("[I]n PDT Sixth Penrose is a manager. . . [i]f you read the PDT Operating Agreement or when you read it, you will see that we are the manager. . . ."). Thus, Sixth Penrose has an obvious supervisory role over and financial interest in the Two Park Crest project. Accordingly, Sixth Penrose's separate motion for summary judgment must be denied.
The Northwestern defendants argue that they are entitled to summary judgment because they executed a binding contract to purchase Two Park Crest in December 2010, a month after The Penrose Group had hired Lessard Urban/Design on November 17, 2010, and that the purchase included the architectural plans prepared by Lessard Urban/Design. Humphreys responds that there is adequate evidence that the Northwestern defendants had access to the Grant Park design through its third-party intermediary The Penrose Group.
The summary judgment record reflects that the Northwestern defendants were engaged in negotiations to purchase Two Park Crest during the same time period—October 2010 through January 2011—that The Penrose Group was soliciting design bids and ultimately selecting Lessard Urban/Design as the architect for Two Park Crest. And in January 2011, both (i) Northwestern Mutual's acquisition of Two Park Crest and (ii) Northwestern Investment's contract with Lessard Urban/Design were finalized. These events and the close business relationship between the Northwestern defendants and the Penrose defendants is sufficient to create a triable issue of fact on whether the Northwestern defendants had access to the Grant Park design through its third-party intermediary, The Penrose Group. See Bouchat v. Baltimore Ravens, Inc., 241 F.3d 350, 354 (4th Cir.2001) (finding sufficient evidence for a finding of intermediary access where the alleged infringer shared office space with someone with access to the protected design).
In its separate motion for summary judgment, Clark argues that because it was hired to construct Two Park Crest months after the architectural designs for the project were finalized, there is no evidence that Clark had access to the Grant Park design and thus Clark cannot be liable for infringement. Humphreys responds that, as with the Northwestern defendants, there is adequate evidence that Clark had access to the Grant Park design through its third-party intermediary The Penrose Group, and that even without access, Clark could be held liable for direct infringement for constructing an infringing
As the Fourth Circuit noted in Towler, the record must show that "it must be reasonably possible that the paths of [the alleged infringer-here Clark] and the [allegedly infringed design-here Grant Park] crossed." Towler, 76 F.3d at 582. That evidence is absent from this record. Nor do the cases cited by Humphreys—which Humphreys contends show that courts routinely hold contractors liable for copyright infringement—compel a contrary conclusion. These cases are neither apposite nor controlling.
A further access issue exists not with regard to defendants' motion for summary judgment, but in connection with Humphreys' motion for partial summary judgment with respect to the Lessard defendants' counterclaim that Humphreys' Grant Park design infringes the Lessard defendants' copyrighted Harbor Towers design. More specifically, the Lessard defendants claim that the Grant Park design is substantially similar to the Harbor Towers design and that Humphreys had the requisite access to the Harbor Towers plans. For access, the Lessard defendants rely on the fact that Mark Humphreys attended a September 6, 2001 Architectural Design Trends conference which featured as a speaker Robert Swedroe, the architect who created the Harbor Towers design. In response, Humphreys argues that the summary judgment record makes clear that the Harbor Towers design was not disclosed at the September 6, 2001 conference, and hence, the record falls far short of showing that the Lessard defendants can establish by a preponderance of the evidence, as required by the Supreme
To begin with, the summary judgment record makes clear that the Harbor Towers plans were not exhibited or disclosed at the September 6, 2001 conference. Thus, Robert Swedroe testified that not a single photograph of the Harbor Towers design was included in the slides he presented, nor was a floor plan of the Harbor Towers design included. See Memorandum in Support of Plaintiff's Motion for Partial Summary Judgment, Doc. 215, Ex. H at 70:10-11 ("There's no floor plan from Harbor Tower II if that's your question."); 69:18-21 (conceding that there was not a "single photograph" of the Harbor Towers design in the slides presented at the conference.) Indeed, Mr. Swedroe testified that he was not even sure that he mentioned the Harbor Towers design at the September 6, 2001 conference. See id. at 59:3-4 ("Well, I don't know that I mentioned buildings by name . . ."). Instead, the uncontradicted summary judgment record reflects that Mr. Swedroe simply addressed the audience about design concepts at a high level of generality; he did not specifically discuss the Harbor Towers design. For example, when Mr. Swedroe discussed connecting two core elevators with a fire or service corridor, his remarks were limited to the benefits of the concept in the abstract, noting that "The objective is to maximize the salable area and minimize the gross area." Id. at 61:1-5. Importantly, Mr. Swedroe admitted that it was "possible" he did not even mention the Harbor Towers design in connection with his presentation at the conference. Lessard Defendants' Opposition to Plaintiffs Motion for Partial Summary Judgment, Doc. 260, Ex. E at 71:8-14. Moreover, Mr. Swedroe commented that the purpose of his presentation was not to analyze or disclose a specific building design, but only to mention creative ideas broadly to help developers. Id. at 63:17-20.
Thus, the summary judgment record makes clear that the Lessard defendants have fallen short of adducing evidence from which a reasonable trier of fact could find, by a preponderance of the evidence, that Humphreys had "an opportunity to view or copy" the Harbor Towers design. Bldg. Graphics, 708 F.3d at 577.
Humphreys asserts that the Grant Park and Two Park Crest designs are substantially
The parties dispute whether the Grant Park and Two Park Crest designs are substantially similar. And it is this dispute that must now be addressed.
To begin with, the parties disagree over how to conduct the extrinsic similarity inquiry. Humphreys argues that courts should not examine whether specific features of a work are protectable, but rather should ask only whether the work in its entirety—here, the building design—is protectable. Otherwise, Humphreys argues, "it would be hard to find any valid copyright, because most works are made up of individual elements that are not protected by copyright." Plaintiff's Opposition to Lessard Defendants' Motion for Summary Judgment that the Park Crest Two Design was Not Copied and There is No Basis for Recovery of Defendants' Profits, Doc. 263 at 25. To support its argument, Humphreys opines that architecture is like poetry or a musical composition and as such, although individual words or musical notes are not copyrightable, the arrangement of those words or musical notes is. Id. at 25-26. Defendants disagree, arguing that Fourth Circuit authority requires that courts determine whether the individual features of an architectural work are protectable because copyright infringement can only be found where a defendant copied protectable elements of a plaintiff's work. See Ross II, 496 Fed. Appx. at 318. Defendants also contend that where, as defendants contend is true here, the Grant Park design is comprised solely of nonprotectable features, plaintiff must meet a higher "supersubstantial similarity" standard.
Neither party has it quite right. Although there is some support for defendants' "supersubstantial similarity" standard in other circuits, there is no warrant for the application of this principle in the Fourth Circuit.
Congress crafted the AWCPA and its implementing regulations to protect "the overall form as well as the arrangement and composition of spaces and elements in the design,"
The Supreme Court has made this point clear, noting that "[t]he mere fact that a work is copyrighted does not mean that every element of the work may be protected," and that "copyright protection may extend only to those components of a work that are original to the author." Feist, 499 U.S. at 348, 111 S.Ct. 1282. Fourth Circuit precedent has similarly emphasized these points. In Ross II, 496 Fed.Appx. at 318, the Fourth Circuit made clear that: "In conducting this objective [extrinsic similarity] inquiry, a court must consider whether the two works contain substantially similar ideas that are subject to copyright protection." See also Universal Furniture, 618 F.3d at 436 (noting that the extrinsic test pertains only to the "copyrightable aspects" of a work); Lyons, 243 F.3d at 801 ("First, the court must determine whether the two works are extrinsically similar because they contain
Thus, it is clear that in making an extrinsic similarity determination at the summary judgment stage, the individual elements of an architectural design must first be disaggregated to determine whether each of those elements, viewed in isolation, is protectable under the AWCPA. Then it must be determined whether a reasonable jury could find those disaggregated elements to be extrinsically similar in the protected and allegedly infringing designs. Indeed, Humphreys itself disaggregates the designs, asserting that the Two Park Crest design infringes its Grant Park design because the designs share nine individual features. Of course, it is possible that an architectural work that contains solely standard design features is nonetheless protectable because those standard design features are arranged in an original and nonstandard manner.
First, there is no dispute that a high-rise residential building is a "standard" feature under the AWCPA. 17 U.S.C. § 101. Numerous high-rise residential buildings are found all across the United States. To grant copyright protection
Moreover, the Grant Park design and Two Park Crest design execute the high-rise concept differently. Humphreys' sole evidence to the contrary on this point is that "[b]oth building designs are approximately twenty stories tall, and both are designed as multi-family residential projects." Figert Report at 6.
Accordingly, the concept of a high-rise residential building, by itself, is not protectable under the AWCPA because it is a "standard" feature under the AWCPA. Further, based on the summary judgment record, no reasonable jury could conclude that in this respect-high-rise residential buildings-the Grant Park and Two Park Crest high rise designs are extrinsically similar.
Humphreys next claims that Grant Park and Two Park Crest have in common the feature of a building with two elevator cores that are connected by a fire or service corridor, rather than a hallway designed for use by residents. This feature, by itself, does not warrant copyright protection and Humphreys does not contend otherwise. Indeed, the uncontroverted record establishes that the use of multiple elevator cores that provide units with direct access to elevator lobbies "is a well-known design idea or concept," and thus standard. Expert Report of Lessard Defendants' Expert Douglas N. Carter [hereinafter "Carter Report"] at 10. At least one housing design textbook expressly states that "[i]n extremely long buildings, it is not unusual to have two independent elevator cores." Gresham Report at 9.
Even if the two elevator core concept merited copyright protection, Humphreys has not proffered evidence that would permit a reasonable jury to conclude that the dual elevator core concept is extrinsically similar in the Grant Park design and the Two Park Crest design. Humphreys' sole evidence in this respect is a conclusory statement that both designs contain the dual elevator core element, with no substantive comparison of each design's elevator cores. Figert Report at 6. Indeed, such a comparison is instructive. The Two Park Crest design actually has three elevator cores, not two, as a service elevator is included that can be accessed from the fire corridor, making this feature in the Two Park Crest design significantly different from the feature in the Grant Park design. Gresham Report at 15. On this record, therefore, a reasonable jury could not conclude that the elevator core feature in the Grant Park design is extrinsically similar to the feature in the Two Park Crest design.
The undisputed summary judgment record similarly shows that the concept of direct access from residential units to an elevator lobby, as opposed to residential units that are accessed from a hallway, is a well-established standard feature not protectable under the AWCPA. It is uncontradicted in this record that, as one of defendants' expert's reports (unrebutted) notes, in buildings where developers seek to provide a greater level of intimacy for residents, "providing direct access to the lobby from the residential units is a well-known and standard feature." Carter Report at 13. In addition to the fact that direct access is a standard architectural feature undeserving of copyright protection, it is also true that no reasonable jury could find, based on the summary judgment record, that the direct access featured in the Two Park Crest design is extrinsically similar to the direct access in the Grant Park design. Once again, Humphreys' expert merely conclusorily states that both designs have this feature, but provides no concrete comparison of the feature as implemented in the two designs. See Figert Report at 6. Yet, here again, the record contains an undisputed and instructive comparison. The respective floor plans in the summary judgment record, coupled with defendants' unrebutted expert reports, make clear that the direct access concept in Grant Park consists of open lobbies clustered around a central public lobby, rather than a corridor. Gresham Report at 16. By contrast, at Two Park
In sum, not only is direct access a standard feature ineligible, by itself, for copyright coverage under the AWCPA, but additionally, no reasonable jury could find, based on the record, that the Grant Park and Two Park Crest designs implement direct access in an extrinsically similar manner.
There is no dispute that a barbell-shaped floor plan, by itself, is a standard unprotectable feature under the AWCPA. A floor plan that is thicker on the ends and thinner in the middle is standard and driven by functional considerations. As one of defendants' experts states:
Gresham Report at 7. Indeed, this influence of building code requirements on the Grant Park design is one of the reasons for the denial of Humphreys' motion for partial summary judgment on the validity of its copyright. See Part IV. A, supra.
Additionally, a comparison of the two buildings' respective layouts make clear that no reasonable jury could find that the floor plans of the Grant Park design and the Two Park Crest design are extrinsically similar. In fact, it is the Two Park Crest design which is "more legitimately described as a `barbell,'" as it is more symmetrical along both axes, while the Grant Park design is less noticeably barbell-shaped. Gresham Report at 15. In addition, the center section of the Two Park Crest building, as the uncontradicted record shows, is substantially narrower than the center of the Grant Park building. Id. Although in a broad sense both designs may be said to have barbell-shaped floor plans, this is not the end of the inquiry. As one expert noted, a more discerning examination of the Grant Park design's floor plan shows that it is "substantially rectangular," differentiating it from the Two Park Crest design, which is more clearly barbell-shaped. Carter Report at 9. In sum, a barbell-shaped floor plan is a standard feature under the AWCPA and hence, by itself, is not protectable, given that it is a necessary layout based on building code requirements. Moreover, even assuming the Grant Park design utilizes a barbell-shaped design, no reasonable jury could find that the floor plans of the Grant Park design and Two Park Crest design are extrinsically similar.
Similarly, there is no dispute that locating exit stairwells adjacent to elevators is a standard feature not protectable under the AWCPA. The record reflects that building codes require that all high-rise buildings have at least two means of egress via stairways, making exit stairwells yet another functional element not protectable under the AWCPA. Gresham Report at 9.
Furthermore, the exit stairwells in the Two Park Crest and Grant Park designs are implemented differently. In the Grant Park design, the exit stairwells are located behind the elevator lobbies and are on the same side of the lobbies as the elevators. By contrast, in the Two Park Crest design, the exit stairwells are opposite the elevators in the elevator lobbies, and are enclosed in a separate fire-rated enclosure. Carter Report at 14; Gresham Report at 23. Consequently, not only is the arrangement of the exit stairwells itself not protectable, as it is dictated by building code requirements, but additionally, no reasonable jury could find that the exit stairwells in the Two Park Crest and Grant Park designs are extrinsically similar,
Humphreys' next claim is that the Two Park Crest and Grant Park designs
Even if diagonal entry hallways were a protectable feature under the AWCPA, no reasonable jury could find that the unit entry hallways in Grant Park and Two Park Crest are extrinsically similar. Most entry hallways in Two Park Crest are not in fact diagonal; they are orthogonal (parallel to the front and back of the building), making the entrance halls more defined and maximizing unit privacy. Gresham Report at 23. The entrances and entry doors in the Grant Park design, by contrast, are positioned into individual units on a diagonal, making each unit feel larger. The divergent entrance placements in the Grant Park and Two Park Crest designs in their respective diagonal corridors have a significant impact on making the look and feel of the units in each design "very different." Id. Thus, corner units with diagonal entry access are standard unprotectable features under the AWCPA, and no reasonable jury could find that the diagonal entry access in the Grant Park design and Two Park Crest design are extrinsically similar.
Humphreys does not argue that the idea of alternating vertical elements—i.e. various vertical features, such as columns, stacks of windows, bays, or stacked balconies, that are arranged to give a building the appearance of vertical stripes—is a protectable individual feature. Indeed, undisputed record evidence from defendants' experts makes clear that alternating vertical elements are a standard feature, "inherent [in] all but a small number of high-rise buildings." Carter Report at 11, 15; see also Greenstreet Report at 14 ("Tall, multi-unit buildings are likely to have a vertical emphasis, which can be expressed in various materials and will be punctuated by windows and possibly balconies."). It follows that the alternating vertical elements feature does not warrant protection under the AWCPA.
Nor could a jury find that the two designs' vertical elements are extrinsically similar. It is uncontradicted on this record that the Grant Park design's vertical bays are closely spaced, emphasizing the center of the building, while the Two Park Crest design has vertical bays that are more widely spaced, placing emphasis on separated vertical masses. Gresham Report at 19. Also uncontradicted is that the two designs express their respective vertical elements differently, because the Grant Park design has a decidedly postmodern influence, in contrast to the Two Park Crest design, which is detailed in a much
Humphreys next points to a feature described as a "projected, cantilevered element in the cornice at the roof line." See Amended Complaint, Doc. 21 ¶ 25. This element, by itself, is not protectable under the AWCPA because the undisputed summary judgment record shows that it is a standard feature that has been used at the cornice of roof lines since the time of the Greeks. Carter Report at 11 ("The Greeks should have claimed that copyright 3,000 years ago"), 15; Greenstreet Report at 14; Gresham Report at 22. The cantilevered cornice element in the Grant Park design is virtually identical to those used in classical architecture, but simplified and exaggerated to reflect the postmodern influence on the design. Gresham Report at 22. These elements have been used by architects for "millennia." Carter Report at 15.
Even assuming cantilevered overhangs are a protectable feature, defendants' experts' reports, which Humphreys does not contest, show that the Two Park Crest building's overhang is not substantially similar to the Grant Park building's overhang, as the Two Park Crest building's overhang does not qualify as "cantilevered." Gresham Report at 22. In any event, as the uncontroverted Gresham Report notes:
Id. Thus, no reasonable jury could find that the elements at the cornice of the roof line in the Grant Park design and the Two Park Crest design are extrinsically similar, even if they were protectable under the AWCPA.
In sum, viewed individually none of the nine asserted features Humphreys relies on for copyright protection is individually protectable, nor are any of the claimed features, when viewed in isolation, extrinsically similar in the Grant Park and Two Park Crest designs. This does not end the extrinsic prong of the substantial similarity analysis; the question remains
Humphreys' argument in this regard, distilled to its essence, is that through combining nine unprotectable features and arranging those features in an original manner, the arrangement of those features is protectable, and the arrangement of those features is substantially similar in the Grant Park and Two Park Crest designs. This argument, closely examined, is unpersuasive. To be sure, it is true that the AWCPA protects "the overall form as well as the arrangement and composition of spaces and elements in the design." 17 U.S.C. § 101. But importantly, "standard configurations of spaces"
Id. For example, building codes require at least two stairways per floor, separated by some minimum distance. Id. Accordingly, the record points persuasively to the conclusion that utility, not creativity, dictated Humphreys' decision to locate the two stairways in the Grant Park design at opposite ends of the building and adjacent to the elevators. See Part IV.A, supra. A contrary conclusion would seem to "impede, rather than promote, the progress of architectural innovation." H.R.Rep. No. 101-735 (1990), reprinted in 1990 U.S.C.C.A.N. 6935, 6952.
It follows from this conclusion that summary judgment must be granted in favor of the defendants. Indeed, defendants are entitled to summary judgment only based on the results of the extrinsic similarity analysis. Although the Fourth Circuit has not specifically addressed whether a defendant who prevails only on the extrinsic similarity analysis prong of a copyright infringement claim should be granted summary judgment on that claim, the Ninth Circuit, which was the originator of the two-pronged extrinsic/intrinsic test, has addressed this issue. In Funky Films, Inc. v. Time Warner Entertainment, Co., L.P., 462 F.3d 1072, 1077 (9th Cir.2006), plaintiff sued defendant, claiming defendant's screenplay infringed plaintiff's screenplay. The Ninth Circuit affirmed summary judgment for the defendant based on the extrinsic prong of the substantial similarity analysis and in the course of doing so, commented that: "[A] plaintiff who cannot satisfy the extrinsic test necessarily loses on summary judgment, because a jury may not find substantial similarity without evidence on both the extrinsic and intrinsic tests." See also Kouf v. Walt Disney Pictures & Television, 16 F.3d 1042, 1045 (9th Cir.1994) ("For summary judgment, only the extrinsic test is important.");
The intrinsic similarity inquiry requires examining the total concept and feel of the works, but only as seen through the eyes of the intended audience of plaintiff's work. Universal Furniture, 618 F.3d at 436. Judge Learned Hand described the intrinsic test as whether "the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same." Id. (citing Peter Pan, 274 F.2d at 489) (internal quotations omitted).
Thus, a threshold question in the intrinsic similarity inquiry is the identity of the intended audience. Humphreys argues that intrinsic similarity should be evaluated from the perspective of the lay public. Defendants disagree, contending that, because architects design high-rise residential buildings pursuant to contracts with real estate developers, those developers with expertise in the field are the intended audience.
In determining the intended audience of a copyrighted work, "the relevant question that courts must ask . . . is whether the works are so similar that the introduction of the alleged copy into the market will have an adverse effect on the demand for the protected work." Lyons, 243 F.3d at 802. Thus, the intended audience has to be that audience to whom the building is marketed. And "a court should be hesitant to find that the lay public does not fairly represent a work's intended audience," and should only do so where the intended audience possesses "specialized expertise" that "go[es] beyond mere differences in taste and instead must rise to the level of the possession of knowledge that the lay public lacks." Dawson, 905 F.2d at 737.
Both parties present substantial arguments as to the identity of the intended audience in the present case. On the one hand, it is important to be mindful that the default intended audience, as Dawson indicates, is the lay public, absent compelling evidence to the contrary, and that it is members of the public that have the ability to purchase condominiums in the Grant Park building or lease units in the Two Park Crest building. On the other hand, defendants have proffered evidence that the intended audience of high-rise multi-family residential buildings do possess specialized knowledge. Defendants' expert Gresham notes that "my market is and has been experienced developers and institutional real estate investors. These developers and investors are typically specialists, themselves in multifamily housing. . ." Gresham Report at 25 (emphasis added). Indeed, the Lyons court itself found that the district court had erred in its analysis of the intended audience inquiry by failing to consider evidence that the intended audience possessed "specialized expertise, relevant to the purchasing decision, that lay people would lack." Lyons, 243 F.3d at 802.
In any event, the identity of the intended audience for the Grant Park and Two Park Crest designs need not be resolved here for two reasons. First, as noted above, because summary judgment is appropriate for defendants on whether the two designs are extrinsically similar, the intrinsic similarity analysis is unnecessary in the present case.
In sum, because no reasonable jury could conclude that the Grant Park design and the Two Park Crest design are extrinsically similar, there can be no inference that defendants copied the Grant Park design. Thus, summary judgment must be granted for defendants on the issue of infringement.
An appropriate Order will issue.
Id. at 321. Nor has the Fourth Circuit since Ross II addressed whether the supersubstantial similarity requirement applies in this circuit.