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The 11th Circuit's new copyright standard for architectural works.

The 11th Circuit decided only a few copyright cases in 2008, but two of them, Oravec v. Sunny Isles Luxury Ventures, L.C., 527 F.3d 1218 (11th Cir. 2008), and Intervest Constr., Inc. v. Canterbury Estate Homes, Inc., 554 F.3d 914 (11th Cir. 2008), (1) are particularly worthy of note for the copyright practitioner. Both cases arise from Florida district court proceedings, each contributing to the developing law concerning the protection of architectural works, each applying an especial rigor to the issue of substantial similarity, and each suggesting that the 11th Circuit has adopted a new posture toward summary judgment on the issue of noninfringement--one far less favorable to the plaintiff than the standard traditionally employed in such cases.

Oravec and Intervest both concern the extent of protection for works of architecture. In 1990, Congress created a new category of copyrightable subject matter: "architectural works," a term defined by 17 U.S.C. [section] 102(a)(8). (2) Before this amendment was adopted, the Copyright Act provided little protection to the creator of expressive architectural structures, leaving the creator with no remedy for even direct copying of original designs unless the copier could be shown to have actually copied the creator's copyrighted drawings. Such drawings were protectable as "pictorial, graphic, and sculptural works" under 17 U.S.C. [section] 102(a)(5). But after the law changed, an architect or other designer could seek protection of architectural designs in two ways: through registration of the creator's drawings in the usual way as "pictorial, graphic, and sculptural works," sometimes (and hereafter) called PGS for short, or through registration of the building designs, in the form of three-dimensional models, for example, as an "architectural work," under the new [section] 102(a)(8), or by pursuing both forms of registration.

The new "architectural work" path to protection enables the creator to claim protection for the "design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings" and encompasses the "overall form as well as the arrangement and composition of spaces and elements in the design, but does not include standard features." (3)

As the 11th Circuit makes clear in Oravec, however, choosing between the two modes of protection, even in light of the new statutory protection, can still be a case-dispositive decision. A PGS copyright "does not protect against the construction of a building based on copyrighted architectural plans; it only prohibits copying of the plans themselves." (4) Hence if the creator's attorney chooses to pursue registration under only one of the available options, electing not to pursue the other, the client might later be without an effective remedy.

Oravec and the Trump Buildings

Mr. Oravec, a designer for architectural firms, developed a series of designs for a high-rise building, featuring the use of alternating concave and convex segments, with elevator cores "protruding through the building's roofline." (5) These designs were the subject of Mr. Oravec's first series of copyrights, all registered as architectural works under 17 U.S.C. [section] 102(a)(8). Mr. Oravec widely promoted these designs in South Florida among developers and designers, but met with no success. He later applied for another architectural work copyright for a group of three-dimensional models and photographs based on his earlier designs, claiming that the models and photographs were derived from his earlier works. The copyright office took exception to his application, however, suggesting somewhat ambiguously that Oravec's application should have been cast as a PGS work if he had created only "original sculptures, artwork, and photographs that were based on previously registered architectural work claims." (6) In response, Oravec refiled his application as a PGS application, abandoning his architectural work application.

Mr. Oravec later became convinced that the Trump Palace and a series of Trump buildings infringed his building designs, so he filed suit in the Southern District of Florida. The district court granted summary judgment for the defendants, holding, first, that Oravec could not prove that the designs of the Trump buildings, though similar, were so substantially similar at the level of protected expression as to infringe his architectural works, and, next, that the construction of a building could not, as a matter of law, infringe the copyright in a PGS work, and, thus, that Oravec could not prevail on this claim against the defendants--even if there had been substantial similarities between the designs depicted in Oravec's PGS work and the Trump buildings. The 11th Circuit affirmed. (7)

Concerning Mr. Oravec's architectural work copyrights, the 11th Circuit conceded that some "have viewed summary judgment as inappropriate in the copyright infringement context because of the inherently subjective nature of the inquiry." (8) Nevertheless, the court concluded summary judgment was proper in this particular case because the similarities between the Trump buildings and Oravec's architectural designs exist "only at a conceptual level," and, thus, no reasonable jury "could find the competing works substantially similar without implicitly finding that Oravec owns a copyright in an idea." (9) Elaborating on this point, the court reasoned that Mr. Oravec's broad ideas of employing alternating convex and concave segments in a building along with elevator cores protruding through the roofline may have been incorporated into the Trump building designs, but the similarity existed at only the "broadest level of generality"--at the level of the idea or concept only--whereas the differences between the two designs at the fine level of "protected expression" were so substantial that no reasonable jury could find in Oravec's favor. (10) To rule otherwise would, in the court's view, amount to saying that Oravec, and Oravec alone, could own this general design; it would "effectively bar all other architects from incorporating these concepts into new and original designs"--a result that would "lead to a 'diminished store of ideas' available for future works." (11)

The court also affirmed the judgment dismissing Oravec's PGS copyright claim, noting that it has long been the law that a PGS copyright, which is necessarily limited to the designer's plans alone, confers no protection over the construction of a building based on those plans; it protects only against copying the plans themselves. (12) Hence Oravec's failure to seek timely registration of his three-dimensional models and photographs as architectural works, in addition to registering them as PGS works--though perhaps influenced by the copyright office itself--precluded any claim for infringement on these designs. (13) The obvious lesson here is that registration should, where possible, be simultaneously pursued for both the architect's architectural plans and the architectural work that would emerge from them.

Oravec's Application of the Effective Registration Doctrine

In an effort to rescue his infringement claim, Oravec made a novel argument: That his PGS registration, which, as already noted, claimed copyright in a series of three-dimensional models and photographs, was broad enough to protect a series of pre-existing and unregistered architectural works, from which those models and photographs had allegedly been derived. Oravec argued that the underlying and preexisting architectural works had been effectively registered when he obtained his PGS registration. To support this assertion, Oravec invoked the "effective registration doctrine," a doctrine which had not previously been adopted in the 11th Circuit but which has been embraced in a handful of other circuit court decisions. The Oravec court in effect affirmed the existence of the doctrine, but rejected Oravec's argument all the same.

The effective registration doctrine holds, in substance, that if you own both a pre-existing work and a derivative work that incorporates elements of your original work, registration of the derivative work will, in certain circumstances, be deemed sufficient to permit an infringement suit "based on the underlying work, even if that work was not registered." (14) What must first be shown, however, is that the registration certificate for the derivative work, the certificate on which the theory relies, actually refers to the preexisting work as a work from which the registered work is derived. If such information is lacking, if the court has only the "current protestations" of the plaintiff that the certificate in fact is based on the underlying work in question, then the doctrine is unavailable to the plaintiff. (15) The court concluded that this was a fatal defect in Oravec's argument, because the PGS certificate on which he relied "gives no indication that Oravec was attempting to claim separate protection for his three-dimensional models as preexisting architectural works." (16) Even more fundamentally, the effective registration doctrine could not be employed to protect, through a PGS registration, a series of underlying architectural works, for such works can be protected only by an architectural works copyright; a PGS registration will not suffice. As the court remarked: "Oravec seeks to sue on an aspect of an unregistered underlying work that is not incorporated into the derivative work he did register. The effective registration doctrine cannot be stretched that far." (17)

What the Oravec opinion does seem to acknowledge, however, is that the effective registration doctrine might well be available where a copyright registration does explicitly cover a disclosed underlying, but unregistered work. This is often the case, for example, in computer software, where the work registered (e.g., version 2.5) may be based upon one or more disclosed underlying versions of the software (e.g., version 2.0). In that event, Oravec could prove to be a useful precedent for addressing the infringement of earlier underlying works that the author did not register.

Intervest and the New Summary Judgment Standard for Deciding Substantial Similarity

If the resolution of the Oravec decision seems, on the facts stated, to be appropriate, it nevertheless represents, along with a pattern of similar cases in the 11th Circuit, a departure from the traditional received wisdom that granting summary judgment on the issue of substantial similarity in a copyright case, except in the most obvious of circumstances, is "peculiarly inappropriate"--a result of the "inherent subjectivity" involved in deciding whether the defendant's work and the registered work are substantially similar. (18)

The Oravec opinion takes note of this precedent and even illustrates why such a judgment is in fact subjective--a matter of individual choice based on the totality of the circumstances. As the court observed, in deciding whether a work infringes the protected expression of the copyright owner, a judge (or jury) must necessarily draw a line, applicable to the particular case, between that which is protected expression and that which is so abstract as to represent only an idea or a concept ineligible for copyright protection. (19) If this line is drawn too narrowly, the incentive to innovate, to create, and to protect creativity can be extinguished, a result at odds with the central aim of the Copyright Act, which seeks to promote the "progress of science" by encouraging "individual effort" for the "personal gain" of the creator. (20) On the other hand, if the line is drawn too broadly, there is the opposite danger of creating areas of monopoly in ideas themselves, thereby diminishing the "store of ideas" on which others should be free to build. (21) What the Oravec court did not say, however, is why a federal court should be deemed more competent than a jury in drawing the appropriate line in all but the most dubious of cases. The Seventh Amendment was intended to reserve such decisions to juries, as the arbiters of genuinely disputed facts. (22)

If Oravec is somewhat vague in explaining what appears to be a trend toward deciding debatable substantial similarity issues by summary judgment rather than trial, the court's more recent decision in Intervest is decidedly explicit, even remarkable, in advocating that judges not only should make such decisions, but that they are better equipped to do so than juries. (23) Intervest, like Oravec, arose from an order granting summary judgment to a defendant in a case involving architectural works, this time in the form of floor plans for residential homes. The plaintiff's argument was that the copyrighted floor plans protected an original selection, coordination, and arrangement of common elements and that these elements had been copied by the defendant. On appeal from a summary judgment order which evaluated the elements in question in detail and which focused largely on the differences between the two works, the court, citing Oravec, concluded that the differences between the copyrighted plans and the defendant's plans were so significant that "no reasonable, properly instructed jury of lay observers could find the works substantially similar." (24) This focus on differences rather than similarities is itself unorthodox. (25)

But what is of particular interest in Intervest is the court's explanation for deciding the issue of substantial similarity by summary judgment. Speaking for a unanimous panel, Judge Birch, an influential voice in copyright matters, proclaimed:

a judge is better able to separate original expression from the non-original elements.... Because a judge will more readily understand that all copying is not infringement, particularly in the context of works that are compilations, the "substantial-similarity" test is more often correctly administered by a judge rather than a jury.... The reason for this is plain--the ability to separate protectable expression from non-protectable expression is, in reality, a question of law or, at the very least, a mixed question of law and fact. (26)

Judge Birch cited no authority for this position; nor does any other 11th Circuit case appear to support it. Taken literally, this rationale comes close to adopting a de novo process for determining the substantial similarity issue, akin to the process for adjudging the meaning of disputed patent claims. (27) If adopted by the full 11th Circuit, this approach would represent a radical departure from existing copyright practice, and one that would likely implicate the Seventh Amendment. (28) Just last year, an 11th Circuit panel took care to note, as if it were challenging Judge Birch's earlier similar pronouncements in MiTek Holdings, Inc. v. Arce Eng'g Co., 89 F.3d 1548, 1558 (11th Cir. 1996), that the substantial similarity standard--which has always been viewed as involving a question of fact rather than law--is, by en banc precedent, the "default mode of analysis" even for "compilation copyright claims." (29) It seems doubtful, therefore, that Judge Birch's dicta, and its implicit distrust of juries as reliable finders of the facts, will soon command the allegiance of the full court. Nevertheless, the Intervest opinion must be viewed as a powerful new precedent for deciding substantial similarity issues on summary judgment, particularly in cases involving compilations or other works, like those at issue in Oravec, in which the level of originality is "thin." For such works, if the similarities between the works in question cannot be clearly linked to protectable expression, if the similarities call for a subjective choice between classifying them either as generic ideas or concrete expression, if the similarities are of the type formerly thought to be "peculiarly" within the province of the jury to assess. (30) Intervest, like Oravec, suggests that the court may now decide the issue itself. To this extent, these cases represent a significant, and perhaps troubling, new trend.

(1) Concepts: copyright infringement, architectural works, summary judgment practice, and effective registration theory.

(2) See generally T-Peg, Inc. v. Vt. Timber Works, Inc., 459 F.3d 97 (1st Cir. 2006) (discussing the legislative history of the Architectural Works Copyright Protection Act).

(3) 17 U.S.C. [section] 102(a)(8).

(4) Oravec, 527 F.3d at 1228.

(5) Id. at 1221.

(6) Id. at 1222.

(7) Id. at 1223.

(8) Id. at 527.

(9) Id. at 1226.

(10) Id. at 1227.

(11) Id. at 1228 (quoting Meade v. United States, 27 Fed. Cl. 367, 372 (1992)).

(12) Id. at 1228.

(13) Id.

(14) Id. at 1229.

(15) Id.

(16) Id. at 1230.

(17) Id. at 1231.

(18) Beal v. Paramount Pictures Corp., 20 F.3d 454, 459 (11th Cir. 1994).

(19) Oravec, 527 F.3d at 1225-1226.

(20) Eldred v. Ashcroft, 537 U.S. 186, 214 (2003).

(21) Oravec, 527 F.3d at 1228.

(22) E.g., Baltimore & Carolina Line, Inc. v. Redman, 295 U.S. 654, 657 (1935).

(23) Intervest, 554 F.3d at 920.

(24) Intervest, 554 F.3d at 921 (quoting Oravec, 527 F.3d at 1227).

(25) See, e.g., Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 829-30 (11th Cir. 1982) (differences between the works are unimportant if the ordinary observer would recognize that the copy was appropriated from the protectable expression of plaintiff).

(26) Intervest, 554 F.3d at 920.

(27) E.g., Markman v. Westview Instruments, 517 U.S. 370 (1996).

(28) Original Appalachian Artworks, 684 F.2d at 825.

(29) Buc Int'l Corp. v. Int'l Yacht Council Ltd., 489 F.3d 1129, 1149 (11th Cir. 2007), citing, BellSouth Advertising & Publishing Corp. v. Donnelley Info. Publishing, 999 F.2d 1436 (11th Cir. 1993) (en banc).

(30) Beal, 20 F.3d at 459.

Stephen D. Milbrath is a shareholder in Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A. He is board certified by The Florida Bar in business litigation and concentrates his practice in intellectual property and complex litigation.

This column is submitted on behalf of the Business Law Section, Louis T. M. Conti, chair, and Melanie E. Damian and Peter F. Valori, editors.
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Author:Milbrath, Stephen D.
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