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`UNITED STATES DISTRICT COURT
`DISTRICT OF CONNECTICUT
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`Civil No. 3:10cv1681 (JBA)
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`Scholz Design, Inc.,
`Plaintiff,
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`v.
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`Sard Custom Homes, LLC, et al.,
`Defendants.
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`July 15, 2011
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`RULING ON MOTIONS TO DISMISS
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`On February 1, 2011, Plaintiff Scholz Design, Inc. (“Scholz”) filed an Amended
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`Complaint against Defendants Sard Custom Homes, LLC (“Sard”), Prudential Connecticut
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`Realty (“Prudential”), and Coldwell Banker Residential Real Estate, Inc. (“Coldwell Banker”),
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`alleging copyright infringement, violations of the Lanham Act, breach of contract, and
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`violations of the Digital Millennium Copyright Act arising from Defendants’ use of
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`architectural drawings created by Scholz. Sard moves [Doc. # 46] to dismiss the Amended
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`Complaint in its entirety, Coldwell Banker moves [Doc. # 50] to dismiss Counts II and IV
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`of the Amended Complaint, and Prudential moves [Doc. # 49] to dismiss Count III of the
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`Amended Complaint. For the reasons stated below, the motions to dismiss will be granted.
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`I.
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`Factual Allegations
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`Scholz alleges in Count I of its Amended Complaint that it authored and holds the
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`copyrights for architectural drawings and designs of homes known as “Springvalley A” and
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`“Wethersfield B” (Am. Compl. [Doc. # 43] ¶¶ 10–14.) According to Scholz, without its
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`knowledge or permission, Sard, which had access to these designs as a former Scholz
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`“registered builder,” “prepared, or induced, caused, or materially contributed to the
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`preparation of certain architectural drawings by copying the Springfield and Wethersfield
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`Designs” and marketed its ability to build these designs by displaying thumbnail exterior
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`images of the home designs on Prudential websites. (Id. ¶¶ 15–19.) In Count II, Scholz
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`alleges that it also authored and holds the copyrights for architectural drawings and designs
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`known as “Breckinridge A” and that Sard and Coldwell Banker similarly “prepared, or
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`induced, caused, or materially contributed to the preparation of certain architectural
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`drawings by copying the Breckinridge Design” and placed an exterior image of this home
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`design on Coldwell Banker websites. (Id. ¶¶ 25–36.) Scholz attaches to its Amended
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`Complaint copies of the Prudential and Coldwell Banker web pages that it claims display the
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`copied images, which show front elevation drawings of the homes described in the
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`Springvalley, Wethersfield, and Breckinridge designs. (Id. Ex. E, F, I.)
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`Scholz also claims in Counts III and IV that the use of these images violates the
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`Lanham Act’s prohibition on “reverse passing off.” (Id. ¶¶ 39–59.) It alleges that Sard,
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`Prudential, and Coldwell Banker “used, reproduced, displayed, distributed, marketed,
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`offered for sale and advertised” Scholz’s designs by copying and cropping the design cover
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`sheets and using them to market Sard’s ability to build those designs. (Id. ¶¶ 41–42, 52.)
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`Scholz further alleges that Sard, Prudential, and Coldwell Banker falsely designated the
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`origin of the Springvalley, Wethersfield, and Breckinridge designs by removing Scholz’s
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`name from the designs and representing that the designs are their own. (Id. ¶¶ 43–45,
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`53–54.)
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`In Count V, Scholz claims that Sard breached its Builder Agreement with Scholz—in
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`which Sard agreed “not to duplicate or copy any Scholz designs without first obtaining
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`Scholz’s approval”—by copying the Springvalley, Wethersfield, and Breckinridge designs and
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`marketing the designs on the above–mentioned websites after the Builder Agreement
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`2
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`Case 3:10-cv-01681-JBA Document 70 Filed 07/15/11 Page 3 of 9
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`expired. (Id. ¶¶ 60–63.) In Count VI, Scholz claims that Sard also violated the Digital
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`Millennium Copyright Act, 17 U.S.C. § 1202, by “purposefully remov[ing] the Scholz name
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`and notice of copyright from the Scholz Designs.” (Id. ¶¶ 69–72.)
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`II.
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`Discussion1
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`A.
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`Counts One and Two: Copyright Infringement
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`Sard and Coldwell Banker move to dismiss Counts One and Two of the Amended
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`Complaint on the ground that Scholz does not hold valid copyrights in the images depicted
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`in Exhibits E, F, and I to the Amended Complaint that Scholz alleges constitute the
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`violations of its copyrights. They argue that these thumbnail depictions of drawings are not
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`architectural or technical plans and thus are not protectable by copyright.
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`Copyright protection extends to “original works of authorship fixed in any tangible
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`medium of expression” including “architectural works.” 17 U.S.C. § 102(a). The owner of
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`a copyright “has the exclusive rights . . . to reproduce the copyrighted work.” Id. § 106. “An
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`‘architectural work’ is the design of a building as embodied in any tangible medium of
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`expression, including a building, architectural plans, or drawings. The work includes the
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`overall form as well as the arrangement and composition of spaces and elements in the
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` The Federal Rules of Civil Procedure require a complaint to contain “a short and
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`plain statement of the claim showing that the pleader is entitled to relief,” Fed. R. Civ. P.
`8(a)(2), and a defendant may move to dismiss a complaint that fails “to state a claim upon
`which relief can be granted.” Fed R. Civ. P. 12(b)(6). “To survive a motion to dismiss, a
`complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to relief
`that is plausible on its face.’” Ashcroft v. Iqbal, 129 S. Ct. 1937, 1949 (2009) (quoting Bell Atl.
`Corp. v. Twombly, 550 U.S. 544, 570 (2007)); accord Kuck v. Danaher, 600 F.3d 159, 162–63
`(2d Cir. 2010). A complaint will not survive a motion to dismiss if it relies on “[t]hreadbare
`recitals of the elements of a cause of action, supported by mere conclusory statements,” or
`if “the well–pleaded facts do not permit the court to infer more than the mere possibility of
`misconduct.” Iqbal, 129 S. Ct. at 1949–50.
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`3
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`Case 3:10-cv-01681-JBA Document 70 Filed 07/15/11 Page 4 of 9
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`design, but does not include individual standard features.” Id. § 101. “The Architectural
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`Works Copyright Protection Act (“AWCPA”), Pub.L. No. 101-650, tit. VII (1990), extended
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`copyright protection to architectural works that are not otherwise works of art.” Richard J.
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`Zitz, Inc. v. Dos Santos Pereira, 232 F.3d 290, 292 (2d Cir. 2000). “[U]nder 37 C.F.R. §
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`202.11(d)(3), architectural works that “were constructed or otherwise published before
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`December 1, 1990” are ineligible for protection under the AWCPA.” Id.
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`Sard and Coldwell Banker argue that the depictions in Exhibits E, F, and I could not
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`have been copyrighted as architectural works because, the copyrights having been granted
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`in 1988 and 1989, they predate the AWCPA and that the conceptual nature of these
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`depictions means that they are not protected by Scholz’s copyright because they contain
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`insufficient detail from which a building could be constructed. The Second Circuit, in Attia
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`v. Society of the New York Hospital, 201 F.3d 50, 56–57 (2d Cir. 1999) distinguished between
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`viable copyright infringement claims in which the copied drawing contained sufficient detail
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`to enable construction and drawings of a “preliminary, conceptual nature” from which a
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`copyrighted structural design could not be constructed and which did not constitute
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`“protected expression.” The court held that the defendants’ use of “highly preliminary and
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`generalized” drawings, which described a “proposed design at a very general level of
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`abstraction” depicting “creative ideas on how to extend New York Hospital over the F.D.R.
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`Drive” copied only non–protectable “ideas and concepts” because they did not contain a
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`level of detail sufficient to enable construction. Id. at 55–57.
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`Pre–AWCPA cases cited by Plaintiffs draw a similar distinction. In Robert R. Jones
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`Assocs. v. Nino Homes, 858 F.2d 274, 280 (6th Cir. 1988), the Sixth Circuit held that the
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`defendant infringed the plaintiff’s copyright by obtaining a promotional brochure containing
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`4
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`“abridged floor plans” of the plaintiff’s home design and using that copy to construct a house
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`based on that design. In summarizing case law on infringing use of such design materials,
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`including the Southern District of New York’s decision in Demetriades v. Kaufmann, 680 F.
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`Supp. 658 (S.D.N.Y. 1988), the court held: “The rule which emerges from these cases is that
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`one may construct a house which is identical to a house depicted in copyrighted architectural
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`plans, but one may not directly copy those plans and then use the infringing copy to construct
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`the house.” Jones, 858 F.2d at 280 (emphasis added). The Fifth Circuit similarly addressed
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`in Imperial Homes Corp. v. Lamont, 458 F.2d 895, 899–900 (5th Cir. 1972) a factual scenario
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`in which the defendants visited a home designed by the plaintiffs at which brochures
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`containing a floor plan were available and then constructed a house “intended to be
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`substantially similar” and held that “if copyrighted architectural drawings of the originator
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`of such plans are imitated or transcribed in whole or in part, infringement occurs.”
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`Scholz does not allege in its Amended Complaint that Sard has or would be able to
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`construct homes to the specifications of the Springvalley, Wethersfield, and Breckinridge
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`designs using the copied thumbnail images, and Scholz’s counsel acknowledged at oral
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`argument that Sard has not built the houses depicted in those images. Under Attia, 201 F.3d
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`at 56–57, as well as Jones, 858 F.2d at 280, and Lamont, 458 F.2d at 899–900, copyright
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`protection extends to the component images of architectural designs to the extent that those
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`images allow a copier to construct the protected design. “The intrinsic function of an
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`architectural plan is to convey the information necessary to enable the reader to construct
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`a building.” Eales v. Envtl. Lifestyles, Inc., 958 F.2d 876, 879–80 (9th Cir. 1992), abrogated
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`on other grounds by Hunt v. Pasternack, 179 F.3d 683 (9th Cir. 1999). Scholz alleges in its
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`Amended Complaint that Sard copied and placed on Prudential and Coldwell Banker web
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`5
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`Case 3:10-cv-01681-JBA Document 70 Filed 07/15/11 Page 6 of 9
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`pages thumbnail images depicting front elevation views of the homes in the Springvalley,
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`Wethersfield, and Breckinridge designs. (Am. Compl. ¶¶ 15, 30, Ex. E, F, I.) These images
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`do not convey sufficient information with respect to these designs to allow construction of
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`these homes. See Jones, 858 F.2d at 280. Without the necessary level of detail to allow
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`construction, the copied images do not fulfill the intrinsic function of an architectural plan
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`and thus the act of copying them does not violate any right protected by a copyright for
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`architectural technical drawings. Scholz has accordingly failed to state claims for copyright
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`infringement that are plausible on their face. Counts One and Two of Scholz’s Amended
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`Complaint are therefore dismissed.2
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`B.
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`Counts Three and Four: The Lanham Act
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`Prudential moves to dismiss Count Three of the Amended Complaint, Coldwell
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`Banker moves to dismiss Count Four, and Sard moves to dismiss Counts Three and Four,
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`alleging violations of the Lanham Act, for failure to state a claim upon which relief can be
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`granted.
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`In Counts Three and Four of the Amended Complaint, Scholz claims “reverse
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`passing off” under the Lanham Act, 15 U.S.C. § 1125, which occurs when a defendant falsely
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`designates the origin of a plaintiff’s work, or “misappropriat[es] . . . credit properly
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`belonging to the original creator of the work.” Waldman Publ’g Corp. v. Landoll, Inc., 43
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`F.3d 775, 780–81 (2d Cir. 1994). “A claim of reverse passing off is separate and distinct from
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`a claim of copyright infringement.” Id. at 781–82. Copying a work without attribution
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` Sard and Coldwell Banker also both argue that Scholz’s copyright infringement
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`claims should be dismissed because their use of the images is “fair use” under 17 U.S.C.
`§ 107. Because Scholz’s has failed to state valid copyright infringement claims, the Court will
`not address the “fair use” arguments.
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`6
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`constitutes copyright infringement, whereas the misattribution of credit for copied work
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`constitutes reverse passing off under the Lanham Act. See Dastar Corp. v. Twentieth Century
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`Fox Film Corp., 539 U.S. 23, 33–34 (2003). “The failure to credit the true author of a
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`copyrighted work is not a false designation of origin, but a violation of copyright.” Freeplay
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`Music, Inc. v. Cox Radio, Inc., 409 F. Supp. 2d 259, 263 (S.D.N.Y. 2005); see also Williams v.
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`UMG Recordings, Inc., 281 F. Supp. 2d 1177, 1184 (C.D. Cal. 2003) (“Dastar makes clear that
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`a claim that a defendant's failure to credit the plaintiff on the defendant's goods is actionable
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`only where the defendant literally repackages the plaintiff's goods and sells them as the
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`defendant's own–not where, as here, Defendants are accused only of failing to identify
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`someone who contributed not goods, but ideas or communications (or, for that matter,
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`‘services’) to Defendants’ product.”)
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`Although Scholz claims in Counts Three and Four that Sard, Prudential, and
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`Coldwell Banker “have perpetrated a reverse passing off by removing Scholz’s name” from
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`the designs and representing that those designs are their own, (Am. Compl. ¶¶ 45, 54), the
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`web pages attached to the Amended Complaint do not reflect that Defendants
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`misappropriated credit for the designs or the elevation drawings or in some way held those
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`designs or drawings out as their own (See Am. Compl. Exs. E, F, I.) The websites do not
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`attribute credit for the drawings to anyone. Sard advertised on Prudential and Coldwell
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`Banker websites the ability to build homes on the advertised lots; it did not advertise that it
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`had designed the homes represented in the thumbnails. Thus Defendants did not
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`“repackage” these designs as their own, but instead failed to identify someone who
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`contributed to the depictions in the thumbnails, and therefore have not misappropriated
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`credit properly belonging to Scholz. See Williams, 282 F. Supp. 2d at 1184. Because,
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`7
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`Case 3:10-cv-01681-JBA Document 70 Filed 07/15/11 Page 8 of 9
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`according to Scholz’s Amended Complaint and the attached exhibits, Sard, Prudential, and
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`Coldwell Banker did not attribute authorship of the designs or images to themselves, rather
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`they failed to attribute credit for the designs altogether, they have not falsely designated the
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`origin of those designs and thus cannot have committed reverse passing off. See Freeplay,
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`409 F. Supp. 2d at 263. Scholz has therefore failed to state a facially plausible claim under
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`the Lanham Act and Counts Three and Four of the Amended Complaint are dismissed.
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`C.
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`Counts Five and Six: Breach of Contract and Millennium Copyright Act
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`In Counts Five and Six, respectively, Scholz claims that Sard breached its contract
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`with Scholz and violated the Digital Millennium Copyright Act, 17 U.S.C. § 1202. Sard
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`argues that these Counts should be dismissed because Scholz has not stated a valid copyright
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`infringement claim. Scholz does not dispute that it must have a valid copyright claim in
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`order for Counts Five and Six to survive. Accordingly, because the Court has concluded that
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`Scholz has failed to state a copyright infringement claim upon which relief can be granted,
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`as discussed above, Counts Five and Six are dismissed.
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` Scholz also argues that by posting the thumbnail images in Exhibits E, F, and I,
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`Defendants have misappropriated Scholz’s “reputation” by copying these designs. The
`Lanham Act, however, “covers only ‘the producer of the tangible goods that are offered for
`sale, and not . . . the author of any idea, concept, or communication embodied in those
`goods.’” Moser Pilon Nelson Architects, LLC v. HNTB Corp., No. 05 CV 422(MRK), 2006 WL
`2331013, *10 (D. Conn. Aug. 8, 2006) (quoting Dastar, 539 U.S. at 37). Although Scholz’s
`counsel asserted at oral argument that Scholz’s elevation drawings were indeed a tangible
`good, as discussed above, Defendants did not misattribute credit to themselves for those
`drawings. To the extent that Scholz argues that its reputation has been misappropriated
`through use of its ideas, rather than credit for the drawings themselves being
`misappropriated, it has failed to state a claim under the Lanham Act. See id.
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`Case 3:10-cv-01681-JBA Document 70 Filed 07/15/11 Page 9 of 9
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`III.
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`Conclusion
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`For the reasons stated above, Defendants Motions to Dismiss [Doc. ## 46, 49, 50] are
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`GRANTED. The Clerk is directed to close this case.
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`IT IS SO ORDERED.
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`/s/
`Janet Bond Arterton, U.S.D.J.
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`Dated at New Haven, Connecticut this 15th day of July, 2011.
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