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`Case 3:O9—cv—OO358—HEH Document 79 Filed 06/03/10 Page 1 of 30 Page|D# 1876
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE EASTERN DISTRICT OF VIRGINIA
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`Richmond Division
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`THE HARVESTER, INC., d/b/a Commonwealth
`Architects,
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`Plaintiff,
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`V
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`Civil Action Number 3 :09cv358
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`RULE JOY TRAMMELL + RUBIO, LLC,
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`Defendant.
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`MEMORANDUM OPINION
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`(Denying Defendant's Motion for Summary Judgment)
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`This is an action brought under the Copyright Act, 17 U.S.C. § 101, et seq. Plaintiff,
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`Commonwealth Architects (“Commonwealth”), alleges that Defendant, Rule Joy Trammell + Rubio,
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`LLC (“Rule Joy”), infringed its copyright held in a set of several architectural drawings. The matter
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`is before the Court on a Motion for Summary Judgment by Rule Joy. Both parties submitted initial
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`memoranda, and, pursuant to the Court's Order of March 5, 2010, additional memoranda in support
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`oftheir respective positions. The Court will dispense with oral argument because the facts and legal
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`contentions are adequately presented in the materials presently before the Court and argument would
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`not aid in the decisional process. For the reasons stated herein, Rule Joy's motion is denied.
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`1. Introduction
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`A. Factual Background
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`The John Marshall Hotel (“the Hotel”), located in Richmond, Virginia, was designed in 1928
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`by Marcellus Wright. Over time, various changes and additions were made to the original design
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`of the Hotel, most notably in 1955, 1962, and 1978. In 2004, John Marshall Residence, LLC (“JM
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`Residence”) proposed renovating the Hotel into condominium units and entered into an agreement
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`with Commonwealth to provide architectural services for the project.
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`JM Residence, however,
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`abandoned the project and did not pay Commonwealth for most of its services.‘
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`A separate entity, John Marshall Building, LLC (“JM Building”), initiated a new project for
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`the Hotel and contracted with Commonwealth in March 2008 for architectural services to include
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`preparation of as-built documents, schematic design, and design development to adapt the Hotel to
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`apartment living and street level retail space. These services are known as “Phase l” services.
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`Commonwealth issued design development drawings termed “Instruments of Service” on June 30,
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`2008 and applied for copyright registration of these drawings on the same day. Commonwealth was
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`issued a copyright registration effective May 4, 2009 for the architectural drawings. The copyright
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`registration indicates that the drawings were registered as “architectural work[s],”2 and it notes that
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`the “[p]reexisting architectural work” — the existing Hotel, as designed by Marcellus Wright and the
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`subsequent renovating architects — was “[m]aterial excluded” from Commonwealth's copyright,
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`while the “[n]ew and revised architectural work” created by Commonwealth is “included” in
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`Commonwealth's copyright.
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`‘Commonwealth's dispute with JM Residence and others over unpaid fees for architectural
`services rendered was the subject of a law suit filed in March 2009 by Commonwealth in Richmond
`City Circuit Court (Case No. CLO900l 036-00). The suit settled by an Agreed Order entered on May
`1, 2009. Rule Joy was never a party to that suit. JM Residence is not, and never has been, a party
`to the case at bar.
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`2As Commonwealth's architectural drawings were registered as an “architectural work,” the
`Court and the parties agree that the drawings were registered under 17 U.S.C. § l02(a)(8). The Court
`and the parties also agree that Commonwealth did not register its architectural drawings as “technical
`drawings” under 17 U.S.C. § 102(a)(5).
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`

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`Due to unexpected economic conditions in 2008, financing for JM Building's project
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`changed, requiring a reduction in costs for the project to proceed, particularly with respect to “Phase
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`2” services that would include the creation of construction documents, as well as construction
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`contract administration services. IM Building also became delinquent in certain payments owed to
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`Commonwealth. As aresult, Commonwealth refused to negotiate a reduction ofits fees and revoked
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`the non-exclusive license to use and reproduce Commonwealth's Instruments of Service that it had
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`allowed JM Building. Accordingly, JM Building did not contract with Commonwealth to provide
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`Phase 2 services; instead, JM Building sought out the services of Rule Joy.
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`In November 2008, JM Building delivered to Rule Joy the historic drawings of the Hotel
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`from the 1928 original design, as well as drawings from the three major renovations in 1955, 1962,
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`and 1978.
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`In addition to these historic drawings, JM Building delivered Rule Joy the design
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`development drawings issued by Commonwealth.’ Based on the combination ofdrawings provided,
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`Rule Joy performed an initial assessment of the proposed project, JM Building's program
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`requirements,‘ and JM Building's budget in order to prepare a proposal for architectural services.
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`Rule Joy’s initial proposal to JM Building was for Phase 2 services contingent upon the ability of
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`3Rule Joy admits that it did in fact receive Commonwealth's design development documents
`from JM Building, and, at the request of Commonwealth, Rule Joy and JM Building both returned
`the documents to Commonwealth in March 2009.
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`‘Commonwealth argues that it created what Rule Joy refers to as JM Building's “program.”
`JM Building's “program” is nothing more than JM Building's specifications as to their desired
`number and type ofapartment units and retail space intended for inclusion in Rule Joy's renovation
`designs. As indicated in the Court's Order of March 5, 2010, the Court, having to draw all
`reasonable inferences in favor ofCommonwealth for the purposes of Rule Joy's summaryjudgment
`motion, must assume, as Commonwealth has alleged, that the ideas contained in JM Building's
`program — to include a certain number of apartment units and a certain-sized retail area — were
`originally Commonwealth's. Of course, in making this assumption, the Court must also note that
`“[i]n no case does copyright protection .
`.
`. extend to any idea.” 17 U.S.C. § 102(b) (West 2010).
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`3
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`Rule Joy to use Commonwealth’s design development drawings to prepare construction drawings
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`under a license from Commonwealth. This initial proposal was rejected by JM Building, however,
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`and JM Building advised Rule Joy that it likely could not obtain a license from Commonwealth.
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`Rule Joy then submitted a revised proposal to JM Building that was accepted in an agreement dated
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`December 5, 2008, whereby JM Building retained Rule Joy to provide architectural, interior design,
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`and engineering services for the Hotel project.
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`The agreement required Rule Joy to create demolition documents, schematic design, design
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`development and construction documents while complying with applicable regulations for historic
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`preservation and building codes. As was Commonwealth, Rule Joy was tasked by JM Building with
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`returning the Hotel to the look and feel of the original 1928 Marcellus Wright design, while also
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`adapting it for the modern use of apartment living and retail services. JM Building specified the
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`number, size and type ofapartment units and approximate size ofretail space that it wanted Rule Joy
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`to include in its design? JM Building further charged Rule Joy with preparing a design to increase
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`
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`5Rule Joy asserts that the U.S. Department ofHousing and Urban Development's (“HUD”)
`requirements also demanded a certain number, size and type ofapartment units and approximate size
`of retail space. Commonwealth argues, however,
`that what Rule Joy refers to as HUD's
`requirements were merely a reflection of HUD's “understanding of the scope of the Project.” Pl.'s
`Mem. in Opp'n. to Mot. for Summ. J. at 8. The letter from HUD attached as Exhibit 7 to Rule Joy's
`motion for summary judgment suggests that both positions are partially correct, as HUD appears
`both (1) to confirm “that the project will have [certain previously-enumerated] characteristics” and
`(2) to require certain “special conditions” that “must be met or resolved to HUD's satisfaction.”
`Def.'s Mot. for Summ. J. Ex. 7 at 2. The portion ofthe letter related to number and size ofapartment
`units and retail space appears to be more a confirmation of the existing scope of the project, rather
`than an independent requirement or mandate. Relatedly, Commonwealth also alleges that its designs
`predated HUD's so-called “requirements,” and, for the purposes of Rule Joy's summary judgment
`motion, the Court must assume as much. Thus, the Court must assume that, while the HUD
`requirements may have constrained Rule Joy's designs in certain ways, they did not constrain
`Commonwealth's designs in any way.
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`

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`the rentable space from that designed by Commonwealth and reduce the construction costs by
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`approximately $3,000,000.00.
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`JM Building was under a compressed schedule to produce completed drawings in compliance
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`with the financing requirements of HUD and, therefore, demanded an accelerated schedule for Rule
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`Joy to prepare its design documents. Due to the compressed schedule, Rule Joy formed two teams
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`of architects, one to document, measure, record and draw existing conditions at the Hotel, and
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`another to prepare a schematic design for the project.
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`In preparing their own drawings, Rule Joy
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`admits to having occasionally referred back to Commonwealth's drawings (1) as a “benchmark” and
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`(2) to avoid infringing on any of Commonwealth's “protectable design items.” To allow for
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`electronic access to Commonwealth's Drawings, Rule Joy commissioned a professional scanning
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`service, Diazo Printing, to scan Commonwealth's architectural drawings into “.PDF” files and then
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`upload the electronic copies to Rule Joy's “File Transfer Protocol” website. After spending some
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`6,000 hours developing its set of drawings, Rule Joy made its schematic design presentation to JM
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`Building, including the proposed layout of all residential and public spaces, on January 29, 2009.
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`Rule Joy then produced its design development set ofdrawings, or first pricing set, on March
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`4, 2009, a pricing set of drawings on April 1, 2009, demolition and building permit sets on May 15,
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`2009, an issue for HUD review on June 30, 2009, and an issue for construction on August 24, 2009,
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`in addition to other intermediate issuances. The layout proposed by Rule Joy provides more rental
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`units (238 vs. 232), more rentable apartment space (an additional 5,000 square feet), and more
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`street-front retail square footage than Commonwea1th’s layout. Rule Joy’s design is also estimated
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`by the general contractor to cost approximately $2,000,000.00 less to build than Commonwealth’s
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`design.
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`

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`B. Procedural Background
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`Commonwealth filed its initial Complaint on June 5, 2009 naming only Rule Joy as a
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`defendant and seeking damages and inj unctive relief under the Copyright Act and the Lanham Act
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`(Docket No. 1). On August 11, 2009, Commonwealth filed a motion for preliminary injunction
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`(Docket No. 9), and on October 9, 2009, JM Building filed a motion to intervene as a defendant
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`(Docket No. 20). The Court held a hearing on these two motions on October 15, 2009 to address
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`concerns overjurisdiction and principles offederalism and comity, and the Court allowed the parties
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`twenty days to make proper amendments to their pleadings. See Order ofOctober 16, 2009 (Docket
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`No. 25). On October 29, 2009, Commonwealth filed its Amended Complaint against Rule Joy in
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`which it sought damages and injunctive relief under only the Copyright Act (Docket No. 29). JM
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`Building filed an Amended Motion to Intervene on November 5, 2009 (Docket No. 33), and the
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`Court granted JM Building's amended motion to intervene on November 19, 2009 (Docket No. 38).
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`Rule Joy then filed the instant motion for summary judgment on December 22, 2009 (Docket No.
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`39). Commonwealth responded (Docket No. 46), and Rule Joy replied (Docket No. 50), but the
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`Court believed additional briefing was necessary and ordered the parties to file supplemental briefs
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`on the relevant legal issues (Docket No. 51). The appropriate supplemental briefs were filed timely
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`(Docket Nos. 57, 58, 64, and 65).
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`Just prior to the close of the additional briefing period, Commonwealth moved to withdraw
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`its motion for preliminary injunction (Docket No. 6 l ), and the Court granted the withdrawal motion,
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`terminating Commonwealth's motion for preliminary injunction as withdrawn on March 31, 2010
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`(Docket No. 63). Additionally, Commonwealth voluntarily withdrew both its temporary and final
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`injunction requests by way of an Agreed Order entered April 27, 2010 (Docket No. 75), and JM
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`Building was dismissed as a defendant from this litigation in a separate Agreed Order also entered
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`on April 27, 2010 (Docket No. 76). Accordingly, all that remains of this suit is Commonwealth's
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`copyright infringement claim against Rule Joy seeking exclusively monetary damages. Rule Joy has
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`moved the Court for summary judgment as to this claim pursuant to Rule 56 of the Federal Rules
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`of Civil Procedure, seeking full costs and reasonable attorney's fees pursuant to 17 U.S.C. § 505.
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`This matter, initially before the Honorable United States District Judge Richard L. Williams, but
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`reassigned to the undersigned on April 26, 2010 (Docket No. 74), is ripe for decision following the
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`undersigned's review and consideration of the parties‘ filings and the hearing of oral argument.
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`II. Standard of Review
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`When evaluating a motion for summary judgment under Rule 56, the Court must construe
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`all “facts and inferences to be drawn from the facts .
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`.
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`. in the light most favorable to the non-moving
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`party .
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`.
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`. .” Miller v. Leathers, 913 F.2d 1085, 1087 (4th Cir. 1990). A court will grant summary
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`judgment only “if the pleadings, the discovery and disclosure materials on file, and any affidavits
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`show that there is no genuine issue as to any material fact and that the movant is entitled to a
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`judgment as a matter of law.” Fed. R. Civ. P. 56(c). A genuine issue of material fact exists under
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`Rule 56 “if the evidence is such that a reasonable jury could return a verdict for the nonmoving
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`party.” Anderson v. Liberty Lobby, Inc ., 477 U.S. 242, 248 (1986). The “party seeking summary
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`judgment always bears the initial responsibility of informing the district court of the basis for its
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`motion” and “demonstrat[ing] the absence of a genuine issue of material fact.” Celotex Corp. v.
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`Catrett, 477 U.S. 317, 323 (1986). Nevertheless, where the record taken as a whole cannot lead a
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`rational trier of fact to find for the nonmoving party, no genuine issue exists for trial and summary
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`judgment is appropriate. Matsushita Elec. Indus. Co. v. Zenith Radio Corp, 475 U.S. 574, 587
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`(1986).
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`III. Analysis
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`“[T]l1e Copyright Act grants the copyright holder ‘exclusive’ rights to use and to authorize
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`the use of his work in five qualified ways,” namely, (1) to reproduce the work, (2) to prepare
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`derivative works, (3) to distribute copies ofthe work to the public, (4) to perform the work publicly,
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`and (5) to display the work publicly. Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417,
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`432-33 (1984) (citing 17 U.S.C. § 106). The Act further provides that “[a]nyone who violates any
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`of the exclusive rights ofthe copyright owner .
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`.
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`. is an infringer ofthe copyright.” 17 U.S.C. § 501.
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`In its Amended Complaint, Commonwealth alleges that Rule Joy infringed a copyright
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`Commonwealth holds in its Instruments of Service (hereinafter “the Architectural Drawings”).
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`Specifically, Commonwealth alleges that Rule Joy (1) made wholesale copies of the Architectural
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`Drawings by scanning them into “.PDF” files‘ and (2) incorporated particular protected aspects of
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`the Architectural Drawings into Rule Joy's own architectural drawings prepared for JM Building.
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`“In order to prove copyright infringement, a plaintiff must show that it owns a valid copyright, and
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`. of
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`that, “[u]sing originals .
`‘Commonwealth alleged in its Amended Complaint
`C[ommonwealth's Architectural Drawings], R[ule Joy] infringed on C[ommonwealth]'s copyright
`by copying C[ommonwealth]'s protected designs rendered for the Project .
`.
`.
`.” Pl.'s Amended
`Comp]. 1] 24. While the Amended Complaint does not specify that the unauthorized copying of
`Commonwealth's originals occurred when Rule Joy had Commonwealth's Architectural Drawings
`scanned and converted into electronic “.PDF” files, Commonwealth ultimately made this
`clarification in subsequent filings with the Court. See Pl.'s Resp. to Add'l Br. Order at 19.
`Commonwealth's allegation in its Amended Complaint
`that Rule Joy used originals of
`Commonwealth's
`drawings
`and infringed on Commonwealth's
`copyright
`by copying
`Commonwealth's designs is broad enough to include the ultimate allegation, as fleshed out more
`specifically after discovery, that Rule Joy used originals ofCommonwealth's drawings and infringed
`on Commonwealth's copyright by copying the designs with an electronic scanner.
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`8
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`

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`it must establish that the defendant engaged in unauthorized copying of the work protected by the
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`copyright.” Nelson-Salabes, Inc. v. Morningside Dev., LLC, 284 F.3d 505, 513 (4th Cir. 2002)
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`(citing Towler v. Sayles, 76 F.3d 579, 581 (4th Cir. 1996)). In its motion for summaryjudgment and
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`supporting memoranda, Rule Joy argues that (1) Commonwealth does not own any valid copyright
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`in the Architectural Drawings and (2) Rule Joy did not copy any protected elements of
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`Commonwealth's Architectural Drawings.
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`A. Commonwealth Owns :1 Thin, but Valid, Copyright
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`(1) Registration's Burden-Shifting Effect
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`The plaintiffin a copyright infringement action bears the initial burden ofproving ownership
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`of a valid copyright. Montgomery v. Noga, 168 F.3d 1282, 1289 (1 1th Cir. 1999). “In order to meet
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`this burden, the plaintiff must show that the work is original and that the applicable statutory
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`formalities were followed.” Id. (citing Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1541 (1 1th Cir.
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`1996)); see also Lotus Dev. Corp. v. BorlandInt’l, Inc. , 49 F.3d 807, 813 (1st Cir. 1995). In judicial
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`proceedings, however, a certificate of copyright registration “made before or within five years after
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`first publication ofthe work shall constitute prima facie evidence ofthe validity ofthe copyright and
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`ofthe facts stated in the certificate.” 17 U.S.C. § 410(c); see also Bateman, supra, 79 F.3d at 1541;
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`Lotus Dev. Corp. , supra, 49 F.3d at 813; Bibbero Sys., Inc. v. Colwell Sys., Inc. , 893 F.2d 1 104, 1 106
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`(9th Cir. 1990). Nevertheless, “[t]he presumption flowing from § 41 0(c) is not an insurmountable
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`one, and merely shifts to the defendant the burden to prove the invalidity of the plaintiffs
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`copyrights.” Masquerade Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663, 668 (3d Cir. 1990)
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`(citing Hasbro Bradley, Inc. v. Sparkle Toys, Inc., 780 F.2d 189, 192 (2d Cir. 1985)); see also
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`

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`Silver Ring Splint Co. v. Digisplint, lnc., 543 F. Supp. 2d 509, 513 (W.D. Va. 2008) (citing Serv. &
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`Training, Inc. v. Data Gen. Corp. , 963 F.2d 680, 688 (4th Cir. 1992)). “The burden on the defendant
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`to rebut the presumption varies depending on the issue bearing on the validity of the copyright.”
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`Masquerade Novelty, Supra, 912 F .2d at 668. “Where, for example, the issue is whether the
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`copyrighted article is ‘original,’ the presumption will not be overcome unless the defendant offers
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`proof that the plaintiffs product was copied from other works or similarly probative evidence as to
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`originality.” Id. at 668-69 (citing M. Nimmer & D. Nimmer, Nimmer on Copyright, § 12.1 1 [A], at
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`12-83-85 (1990)). On the other hand, where “the issue is whether particular articles with certain
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`undisputed characteristics are copyrightable, the defendant need not introduce evidence but instead
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`must show that the Copyright Office erroneously applied the copyright laws in registering plaintiffs
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`articles.” Id. at 669 (citing Williams Elecs. v. Artic Int'l, lnc., 685 F.2d 870, 871-72 (3d Cir. 1982)).
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`Thus, as Commonwealth received a proper certificate of copyright registration for the Architectural
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`Drawings, it benefits from the rebuttable presumption that the copyright is valid, and the burden
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`shifts to Rule Joy, who is required to demonstrate that “the work in which copyright is claimed is
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`unprotectable (for lack of originality) or, more specifically, to prove that .
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`.
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`. the copyrighted work
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`actually taken is unworthy ofcopyright protection.” Montgomery, supra, 168 F.3d at 1289 (quoting
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`Bateman, supra, 79 F.3d at 1541). Rule Joy argues that Commonwealth's Architectural Drawings
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`are unworthy of copyright protection because (1) the Architectural Drawings are not sufficiently
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`original to warrant copyright protection, and (2) the Architectural Drawings fail to meet the statutory
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`definition of “architectural work.”7
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`7Rule Joy also argues that its own drawings were independently created, not copied from
`Commonwealth's drawings. This argument is relevant only for purposes of determining whether
`Rule Joy unlawfully incorporated protected elements ofCommonwealth's design into Rule Joy's own
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`10
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`

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`(2) Copyright Protection Generally
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`“Copyright protection subsists .
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`.
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`. in original works of authorship fixed in any tangible
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`medium of expression .
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`.
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`. .” 17 U.S.C. § 102(a) (emphasis added). A work is “original” when it
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`“possesses at least some minimal degree ofcreativity” and was “independently created by the author
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`(as opposed to copied from other works).” Feist PubI'ns, Inc. v. Rural Tel. Serv. Co., Inc. , 499 U.S.
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`340, 346 (1991). “[T]he requisite level of creativity is extremely low; even a slight amount will
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`suffice. The vast majority ofworks make the grade quite easily, as they possess some creative spark,
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`‘no matter how crude, humble or obvious’ it might be.” Id (quoting 1 Nimmer on Copyright §
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`1.08[C][1] (1990)).
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`Indeed, “[o]riginality does not signify novelty; a work may be original even
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`though it closely resembles other works so long as the similarity is fortuitous, not the result of
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`copying.” ld.
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`Protected “works of authorship” include, among other things, “pictorial, graphic, and
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`sculptural works” under 17 U.S.C. § 102(a)(5), as well as “architectural works” under 17 U.S.C. §
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`l02(a)(8), “Pictorial, graphic, and sculptural works” under § 102(a)(5) include “two-dimensional
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`and three-dimensional works of fine, graphic, and applied art, photographs, prints and art
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`reproductions, maps, globes, charts, diagrams, models, and technical drawings,
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`including
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`architectural plans.” 17 U.S.C. § 101 (emphasis added). These types of works receive copyright
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`protection “insofar as their form but not their mechanical or utilitarian aspects.”
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`Id. An
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`“architectural work” under § l02(a)(8), on the other hand, is “the design of a building as embodied
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`in any tangible medium of expression, including a building, architectural plans, or drawings.” Id.
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`architectural drawings. As explained in more detail herein, the Court need not reach this issue, so
`the Court will not address Rule Joy's independent creation argument.
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`1]
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`Such a work “includes the overall form as well as the arrangement and composition of spaces and
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`elements in the design, but does not include individual standard features.” Ia’.
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`It is well-settled that architectural drawings receive copyright protection under both 17 U.S.C.
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`§ 102(a)(5) and § 102(a)(8). See Leicester v. Warner Bros, 232 F.3d 1212, 1219 (9th Cir. 2000);
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`Atria v. Socjz ofN. Y. Hosp. , 201 F .3d 50, 52 n.3 (2d Cir. 1999); Morgan v. Hawthorne Homes, Inc. ,
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`No. 04-1809, 2009 WL 1010476, at *13 (W.D. Pa. April 14, 2009); see also H.R. Rep. No. 101-735,
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`at 17 (1 990), as reprinted in 1990 U. S.C.C.A.N. 693 5, 6950 (“An individual creating an architectural
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`work by depicting that work in plans or drawing[s] will have two separate copyrights, one in the
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`architectural work (section 102(a)(8)), the other in the plans or drawings (section 102(a)(5)).”).
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`However, “[r]egistration is a prerequisite for a copyright infringement action.” Darden v. Peters,
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`488 F.3d 277, 285 n.l (4th Cir. 2007); see also 17 U.S.C. § 41 1(a). Therefore, as Commonwealth
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`only registered its work as an “architectural work” under § 102(a)(8),
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`in the instant action,
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`Commonwealth cannot seek to recover for any alleged infringement ofany copyright it may own in
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`its Architectural Drawings as “technical drawings” under § 102(a)(5). Accordingly, the Court will
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`address only the question of whether Commonwealth owns a valid copyright in its Architectural
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`Drawings as “architectural works” under § 102(a)(8).
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`(3) Copyright Protection in “Architectural Works”
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`The Fourth Circuit does not appear ever to have analyzed squarely the copyright interest held
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`in architectural drawings as “architectural works” under § 102(a)(8).“ The best-reasoned sister
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`“Judge Williams discussed in detail the five known Fourth Circuit cases to have even
`tangentially touched on “architectural works” under § 102(a)(8) in his Order of March 5, 2010, and
`the parties agree that the Fourth Circuit's treatment of the copyright interests at stake in those cases
`is not directly controlling on the issues in the case at bar. The cases compiled and analyzed in the
`March 5, 2010 Order were: Nelson-Salabes, supra, 284 F.3d 505, Ale House Mgmt, Inc. v. Raleigh
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`circuit to have done so is the Eleventh Circuit in Intervest Consrr., Inc. v. Canterbury Estate Homes,
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`Inc, 554 F.3d 914 (11th Cir. 2008),° and the Court adopts the Eleventh Circuit's reasoning and
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`analysis as detailed herein.”
`
`Ale House, Inc., 205 F.3d 137 (4th Cir. 2000), Christopher Phelps &Assocs., LLC v. Galloway, 492
`F.3d 532 (4th Cir. 2007), Banner v. Dawson, 404 F.3d 290 (4th Cir. 2005), and Richmond Homes
`Mgmt, Inc. v. Raintree, Inc., 66 F.3d 316 table op. (4th Cir. 1995).
`
`9Rule Joy has championed Intervest as persuasive authority since the filing of its motion for
`summary judgment on December 22, 2009. Def.'s Mem. in Supp. of Mot. for Summ. J. at 17.
`Commonwealth ultimately conceded in its response to the Court's Order of March 5, 2010 for
`additional briefing that “Intervest is persuasive authority .
`.
`. .” Pl.'s Resp. to Add'l Br. Order at 4.
`In Intervest, the Eleventh Circuit examined the “architectural works” copyright interest held in two
`different home floor-plans under § 102(a)(8). Intervest, supra, 554 F.3d at 916. Both floor-plans
`“depict[ed] a four-bedroom house, with one bedroom being denominated as a ‘master’ bedroom or
`suite” and “include[d] a: two-car garage; living room; dining room; ‘family’ room; foyer; ‘master’
`bathroom; kitchen; second bathroom; nook; and porch/patio.” Id. Both floor-plans also “reflect[ed]
`certain ‘elements’ common to most houses: doors; windows; walls; bathroom fixtures (toilet, tub,
`shower, and sink); kitchen fixtures (sink, counter, refrigerator, stovetop, and pantry/cabinets); utility
`rooms and fixtures (washer, dryer, and sink); and closets.” Id. The two floor-plans were also
`approximately equivalent in square footage.
`Id. Despite these general similarities, the Eleventh
`Circuit upheld the district court's granting of summaryjudgment to the alleged infringer defendant
`because, “[a]t the level of protected expression, the differences between the designs [we]re so
`significant that no reasonable, properly instructed jury could find the works substantially similar.”
`Id. at 921.
`
`'°The Court notes that the Eleventh Circuit's approach, though not articulated precisely as
`such, comports with the analysis envisioned by Congress and adopted by the Middle District of
`Tennessee wherein the Court “determine[s] whether there are original design elements present,
`including overall shape and interior architecture,” and then “examine[s] whether the design elements
`are functionally required.” Frank Betz Assocs., Inc. v. Signature Homes, Inc., No. 3:06-091 l, 2010
`WL 1373268, slip op. at 3 (M.D. Tenn. April 6, 2010) (citing H.R. Rep. No. 101-735, as reprinted
`in 1990 U.S.C.C.A.N. 6935, 6951). The two-step Congressional and Frank Betz approach does
`nothing more than stress that functionally-required design components do not receive copyright
`protection, while “[n]on-functionally[-]required elements will be protected without considering
`physical or conceptual separability,” as would be required under § l02(a)(5).
`Id. The Court will
`consider these same issues under the Eleventh Circuit's approach, just not in the same strict two-step
`structure, as the originality inquiry is in large part intertwined with the functionality inquiry such that
`a rigid two-step approach, in many architectural works cases, including the case at bar, would
`effectively require the unnecessary adoption and application of a legal fiction.
`In other words,
`analyzing and considering thoroughly the originality of a design choice will often require the
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`As the Architectural Drawings before the Court deal with a specific type ofcopyright — that
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`of an “architectural work” — the Court's analysis “begin[s] by examining the statutory definition of
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`an ‘architectural work,‘ to wit: ‘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 overall form
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`as well as the arrangement and composition of spaces and elements in the design, but does not
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`include individual standard features.'” Intervest, supra, 554 F.3d at 919 (quoting 17 U.S.C. § 101
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`(2008)). A review of the relevant legislative history “discloses that such ‘individual standard
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`features‘ include 'common windows, doors, and other staple building components.'” Id. (quoting
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`H.R. Rep. No. 101-735, as reprinted in 1990 U.S.C.C.A.N. 6935, 6949). In addition to individual
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`standard features, “'[s]tandard configurations ofspaces’ .
`
`.
`
`. are not copyrightable[.]” Zitz v. Pereira,
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`119 F. Supp. 2d 133, 147 (E.D.N.Y. 1999) (quoting 37 C.F.R. § 202.11(d)(2)). Congress’ decision
`
`to include in the definition of “architectural work” the phrase “’the arrangement and composition of
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`spaces and elements in the design‘ demonstrates Congress‘ appreciation that ‘creativity in architecture
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`frequently takes the form ofa selection, coordination, or arrangement ofunprotectible elements into
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`an original, protectible whole."’ Intervest, supra, 554 F.3d at 919 (quoting H.R. Rep. No. 101-735,
`
`as reprinted in 1990 U.S.C.C.A.N. 6935, 6949). Thus, “while individual standard features and
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`architectural elements classifiable as ideas or concepts are not themselves copyrightable, an
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`architect's original combination or arrangement ofs