Charles W. Ross Builder, Inc. v. Olsen Fine Home Bldg. LLC

CHARLES W. ROSS BUILDER, INCORPORATED, d/b/a Charles Ross Homes, Plaintiff - Appellant,

v. OLSEN FINE HOME BUILDING, LLC; BEVERLY OLSON;BOATHOUSE CREEK GRAPHICS, INCORPORATED; RICK J. RUBIN; JENNIFER L. RUBIN, Defendants - Appellees.

No. 11-2206

UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT

Argued: September 19, 2012

Decided: November 8, 2012

UNPUBLISHED

Appeal from the United States District Court for the Eastern District of Virginia, at Newport News. Robert G. Doumar, Senior District Judge. (4:10-cv-00129-RGD-DEM)

Before KEENAN and FLOYD, Circuit Judges, and Timothy M. CAIN, United States District Judge for the District of South Carolina, sitting by designation.

Vacated and remanded by unpublished opinion. Judge Keenan wrote the opinion, in which Judge Floyd and Judge Cain joined.

ARGUED: Megan Burns, TROUTMAN SANDERS, LLP, Virginia Beach, Virginia, for Appellant. Brian Nelson Casey, TAYLOR & WALKER, PC, Norfolk, Virginia; Jeffrey Hamilton Geiger, SANDS ANDERSON, PC, Richmond, Virginia; Linda M. Quigley, QUIGLEY & ASSOCIATE, PLLC, Richmond, Virginia, for Appellees. ON BRIEF: John Franklin, III, TAYLOR & WALKER, PC, Norfolk, Virginia, for

Appellee Boathouse Creek Graphics, Inc.; Mark D. Matthews, THE MATTHEWS LAW GROUP, PLLC, Richmond, Virginia, for Rick J. Rubin and Jennifer L. Rubin.

Unpublished opinions are not binding precedent in this circuit.

BARBARA MILANO KEENAN, Circuit Judge:

In this case brought under the Architectural Works Copyright Protection Act (Architectural Copyright Act), Pub. L. No. 101-650, §§ 701-706, 104 Stat. 5089 (1990) (codified in various sections of 17 U.S.C.), we consider whether the district court erred in awarding summary judgment to the defendants. The plaintiff's complaint alleged that the defendants infringed the plaintiff's copyrighted architectural work, consisting of a home design and related technical drawings. The district court awarded summary judgment upon finding that the defendants' allegedly infringing home design and the plaintiff's copyrighted home design were not "substantially similar." Because we conclude that the district court did not apply the correct test for determining whether the allegedly infringing material was substantially similar to the copyrighted home design, we vacate and remand for further proceedings.

I.

The plaintiff, Charles Ross Homes, Inc. (Charles Ross), designs and builds custom homes and proprietary model homes in the Williamsburg area of Virginia. In 2001, an architect hired by Charles Ross designed "the Bainbridge," a home design in the Georgian style (the Bainbridge model), for which Charles Rossobtained copyright protection.¹ Using the Bainbridge model, Charles Ross built a home on a lot in the Ford's Colony community in Williamsburg (the home).

In May 2009, potential buyers, Rick and Jennifer Rubin, toured the home and took with them marketing brochures for the Bainbridge model. The Rubins later scheduled a meeting with a Charles Ross representative to discuss designing and building a custom home on property that the Rubins owned in Ford's Colony. Before the meeting took place, the Charles Ross representative sent the Rubins an unsolicited copy of "Places to Call Home," a portfolio of the company's proprietary model homes, which included plans and an artist's rendering for a home based on the Bainbridge model. The portfolio indicated that the Bainbridge model was protected by copyright. The Rubins later cancelled their meeting and did not have any further contact with Charles Ross.

The Rubins ultimately hired Boathouse Creek Graphics, Inc. (BC Graphics) to design their new home, and employed Olsen Fine Home Building, LLC (Olsen) as the builder. Lisa Moberg, the President of BC Graphics, designed the Rubins' home (the Rubin residence).

While the Rubin residence was under construction, one of the owners of Charles Ross visited a contractor on that job site concerning an unrelated project. There, the owner from Charles Ross saw the plans for the Rubin residence. After looking at those plans, the Charles Ross owner concluded that the plans were "substantially similar" to the Bainbridge model.

Both the Bainbridge model and the Rubin residence are representative of the Georgian architectural style, which is popular among the colonial-style homes found throughout the Williamsburg area. In fact, only five architectural styles are permitted for homes built in Ford's Colony, one of which is the Georgian style. The Bainbridge model and the Rubin residence both were designed in accordance with the numerous restrictions placed on all homes built in Ford's Colony, as described in the development's Purchaser's Handbook.

The exteriors of the Bainbridge model and the Rubin residence share many similarities, including a two-story rectangular main body, a "walk-out" basement, a gabled roof featuring dormers, single-story wings flanking the main body of the residence, and a detached, three-car garage connected to the main body of the residence by a covered breezeway. The interior floor plans of the two designs also share several similarities, including a foyer flanked symmetrically by a dining room and a library, and a separate "friends" entryway. In addition, bothinterior plans have a dining room, a kitchen, and a "keeping room," all configured in the same width.

Charles Ross filed a complaint against the Rubins, Olsen,² and BC Graphics (collectively, the defendants), asserting copyright infringement and other claims under the Architectural Copyright Act. After the defendants filed motions to dismiss and the district court heard argument on those motions, the court directed the defendants to file motions for summary judgment. Thereafter, the district court awarded summary judgment to the defendants, holding that Charles Ross had failed to show that the Bainbridge model and the Rubin residence were substantially similar in design. See Charles W. Ross Builder, Inc. v. Olsen Fine Home Bldg., LLC., 827 F. Supp. 2d 607, 624 (E.D. Va. 2011). Charles Ross filed a timely notice of appeal.

II.

We exercise de novo review of a district court's award of summary judgment. Higgins v. E.I. DuPont de Nemours & Co., 863 F.2d 1162, 1167 (4th Cir. 1988). Summary judgment is only appropriate if, viewing the evidence in the light most favorable to the nonmoving party, there is no genuine dispute of materialfact. Fed. R. Civ. P. 56(a); Pueschel v. Peters, 577 F.3d 558, 563 (4th Cir. 2009).

III.

Charles Ross contends that the district court reached an incorrect result in this case by failing to apply this Circuit's test for determining substantial similarity. Charles Ross argues that the central failure in the district court's analysis was the district court's use of the Second Circuit's "more discerning observer" test for determining substantial similarity, rather than the two-part test used by this Court in Universal Furniture International, Inc. v. Collezione Europa USA, Inc., 618 F.3d 417 (4th Cir. 2010).

In response, the defendants argue that the district court did not err in employing the Second Circuit's "more discerning observer" test, because the Bainbridge model incorporated both original and unoriginal elements. Alternatively, the defendants contend that even upon application of this Court's two-part test, the Bainbridge model and the Rubin residence do not qualify as being substantially similar. We disagree with the defendants' arguments.

In recent decades, copyright protection has been extended to "architectural work" under the Architectural Copyright Act,³ which defines such work as "the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings. The protected work includes the overall form as well as the arrangement and composition of spaces and elements in the design, but does not include individual standard features." 17 U.S.C. §§ 101, 102(a)(8).

In enacting the Architectural Copyright Act, Congress intended to extend protection to the "arrangement and composition of spaces and elements" in architectural works, in recognition of the fact that "creativity in architecture frequently takes the form of a selection, coordination, or arrangement of [non-protected] elements into an original, protectable whole." H.R. Rep. No. 101-735 (1990), reprinted in 1990 U.S.C.C.A.N. 6935, 6949. However, the protections of the Architectural Copyright Act were not intended by Congress to afford copyright protection to "individual standard features," such as "common windows, doors, and other staple building components." Id.

To establish copyright infringement, a plaintiff must prove ownership of a valid copyright, and must show that the defendant copied the original elements of that copyrighted material. Lyons P'ship, L.P. v. Morris Costumes, Inc., 243 F.3d 789, 801 (4th Cir. 2001)(citing Feist Publ'ns, Inc. v. Rural Tel. Serv. Co. , 499 U.S. 340, 361 (1991)). In the absence of direct evidence of copying, a plaintiff may create a presumption of copying by showing that the defendant had access to the copyrighted work, and that "the defendant's work is 'substantially similar' to the protected material." Id. (citing Towler v. Sayles, 76 F.3d 579, 581-82 (4th Cir. 1996)). In the present case, the plaintiff did not produce direct evidence of copying, and the district court assumed, without deciding, that the defendants had access to the Bainbridge model plans.

We have not previously considered a copyright claim brought under the Architectural Copyright Act. However, in Universal Furniture, a case involving alleged copyright infringement in the design of furniture, we applied our established two-part test requiring that a court consider both the "extrinsic" and "intrinsic" similarity of the works in question. Under this two-part test, to prove substantial similarity, a plaintiff must show that the works are (1) "extrinsically similar because they contain substantially similar ideas that are subject to copyright...